The opinion of the court was delivered by: Gabriel W. Gorenstein, United States Magistrate Judge
Defendants Vietnam National Milk Company and Tsai's International
Trading Co. (collectively, "Vinamilk") move for summary judgment
dismissing all but one of the claims of plaintiff Friesland Brands, B.V.
Friesland cross-moves for a finding that the defendants have acted in
"bad faith" under trademark law. The parties have consented to this case
being adjudicated by a United States Magistrate Judge pursuant to
28 U.S.C. § 636(c). For the reasons set forth below, the defendants'
motion is granted in part and denied in part. The plaintiffs motion is
Except as otherwise noted, the following facts are not in dispute.
Friesland is a Netherlands corporation and the owner of United States
Trademark number 1,320,968, the design mark LONGEVITY (the "Longevity
mark"). See Trademark Registration Certificate (reproduced as Ex. B to
Declaration of Charles Knull In Support of Plaintiff's Motion and
Opposing Defendants' Motion, dated March 15, 2002 ("Knull Dec.")). This
mark is used on Friesland's labels for condensed milk (the "Longevity
Brand Label"). See Declaration of Jeffrey A. Schwab in Support of
Defendants'/Counterclaim Plaintiffs' Motion for Summary Judgment, dated
February 15, 2002 ("Schwab Dec."), Ex. A. Vietnam Milk Company, a
Vietnamese corporation, is the manufacturer of a condensed milk product
sold in 14 ounce cans, which Tsai's International Trading Company, a
United States corporation, distributes in this country. These cans bear
several different labels. See Schwab Dec., Ex. B, C.
The Longevity mark consists of the words "Longevity Brand" in block
letters above a drawing of an old man with white hair and beard wearing a
robe. Chinese ideograms appear vertically to the left of the old man.
Below the man in block letters are written the Vietnamese words "SUA ONG
THO." The trademark registration asserts that the Chinese characters
translate to "longevity sweetened condensed milk." See Knull Dec., Ex.
B. Friesland contends that the Vietnamese word "Sua" means milk and "Ong
Tho" means "longevity." Knull Dec., Ex. H at 18. Friesland also claims
that the old man is an "extremely popular" Chinese god of Longevity who
is immediately recognizable to anyone raised in China or in a Chinese
community overseas, or for that matter any East Asian country." Report by
Elizabeth Brotherton, dated December 13, 2001 ("Brotherton Report")
(reproduced as Ex. Y to Knull Dec.), at 1.
On the Longevity Brand Label, the Longevity mark has a white background
and blue borders. See Longevity Brand Label (reproduced as Ex. A to
Schwab Dec.). The words "Longevity Brand" are printed in large blue
capital letters. Below these words, the words "Full Cream" are printed in
smaller blue capital letters. Immediately under these words is the phrase
"Sweetened Condensed Milk," also in blue capital letters (larger than the
words "Full Cream," but smaller than the words "Longevity Brand"). The
Chinese characters are in red and the Vietnamese words "SUA ONG THO"
below the old man are in red block letters.
The Longevity Brand Label is used on a 14-ounce condensed milk can. The
top of the can is stamped with concentric circles in relief around a
stamp of the old man. Embossed on the top of the can is the word
"Longevity" and five Chinese characters. See Knull Dec., Ex. O.
There are two basic Vinamilk labels that are at issue in this case.*fn1
One bears the words "Sua Ong Tien" and features a drawing of an old man
with children and a deer in the background (the "Old Man with Children"
label). Schwab Dec., Ex. B. The other bears the words "Sua Phuc Loc Tho"
and features a drawing of three men (the "Three Gods" labels). Id. Ex C.
Plaintiff contends these men represent three Chinese gods, including the
God of Longevity. Brotherton Report at 2. Both of these labels have a
white background; the word "Vinamilk" in large blue capital letters
across the top; the words "condensed dairy product" in blue capital
letters below that; and Chinese characters along one side of the
drawing. The Chinese characters are in red and the Vietnamese words below
the old man are in red block letters. The top of the Old Man with
Children can is stamped with concentric circles in relief.
A. Summary Judgment Standard
A district court may grant summary judgment only if "the pleadings,
depositions, answers to interrogatories, and admissions on file, together
with affidavits, if any, show that there is no genuine issue as to any
material fact and that the moving party is entitled to a judgment as a
matter of law." Fed.R.Civ.P. 56(c); see also Celotex Corp. v. Catrett,
477 U.S. 317, 322 (1986); New York Stock Exchange, Inc. v. New York
Hotel, LLC, 293 F.3d 550, 554 (2d Cir. 2002). A genuine issue is one that
"may reasonably be resolved in favor of either party." Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 250 (1986); McPherson v. Coombe,
174 F.3d 276, 280 (2d Cir. 1999). A material issue is a "dispute over
facts that might affect the outcome of the suit under the governing law."
Anderson, 477 U.S. at 248. Thus, "`[a] reasonably disputed, legally
essential issue is both genuine and material'" and precludes a finding of
summary judgment. McPherson, 174 F.3d at 280 (quoting Graham v.
Henderson, 89 F.3d 75, 79 (2d Cir. 1996)).
When determining whether a genuine issue of material fact exists,
courts must resolve all ambiguities and draw all factual inferences in
favor of the non-moving party. McPherson, 174 F.3d at 280. Nonetheless,
"mere speculation and conjecture is insufficient to preclude the granting
of the motion." Harlen Assocs. v. Incorporated Village of Mineola,
273 F.3d 494, 499 (2d Cir. 2001). While trademark infringement and unfair
competition cases are often fact intensive, summary judgment may
nevertheless be appropriate in such cases. See, e.g., Lois Sportswear,
U.S.A. Inc. v. Levi Strauss & Co., 799 F.2d 867, 876 (2d Cir. 1986);
Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 2001 WL 170672, at *14
(S.D.N.Y. Feb. 21, 2001); Lane Capital Mgmt., Inc. v. Lane Capital
Mgmt., Inc., 15 F. Supp.2d 389, 400 (S.D.N.Y. 1998).
B. Trademark Infringement Claim
Friesland claims that Vinamilk has infringed its Longevity mark in
violation of 15 U.S.C. § 1114(1). Section 1114(1) prohibits, among
other things, the unauthorized use in commerce of any "reproduction,
counterfeit, copy, or colorable imitation of a registered mark in
connection with the sale, offering for sale, distribution, or advertising
of any goods or services on or in connection with which such use is
likely to cause confusion." New York Stock Exchange, Inc., 293 F.3d at
554. "Confusion exists where there is a likelihood that an appreciable
number of ordinarily prudent purchasers are likely to be misled, or
indeed simply confused, as to the source of the goods in question" Id.;
accord Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d 168, 174
(2d Cir. 2000); Gruner Jahr USA Publishing v. Meredith Corp.,
991 F.2d 1072, 1075 (2d Cir. 1993); Lang v. Retirement Living Publishing
Co., Inc., 949 F.2d 576, 579-80 (2d Cir. 1991).
To determine whether there is a likelihood of confusion between two or
more marks, courts in this Circuit apply the eight factors set forth in
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.), cert.
denied, 368 U.S. 820
(1961): (i) the strength of the plaintiff's
trademark; (ii) the degree of similarity between the parties' marks;
(iii) the proximity of the products; (iv) the likelihood that the
plaintiff will "bridge the gap" between the products; (v) the existence of
actual confusion; (vi) the defendant's good faith; (vii) the quality of
the defendant's product; and (viii) the sophistication of the consumers.
Id. at 495; see, e.g., New York Stock Exchange, Inc., 293 F.3d at 555
(citing Polaroid, 287 F.2d at 495). The "evaluation of the Polaroid
factors is not a mechanical process where the party with the greatest
number of factors weighing in its favor wins. Rather a court should focus
on the ultimate question of whether consumers are likely to be confused."
Nabisco, Inc. v. Warner Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000)
(citation and internal quotation marks omitted). In addition, these eight
factors are not dispositive and other circumstances may be relevant to
the likelihood of confusion analysis, depending on the particular case.
See Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743 (2d Cir.
The Court examines each factor in turn.
The strength of the mark "refers to a mark's "tendency to identify the
goods sold under the mark as emanating from a particular . . . source.'"
Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 391 (2d Cir.
1995) (quoting McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126,
1131 (2d Cir. 1979)). The strength of a trademark consists of its
inherent and acquired capacity to identify the source of a product. See
Time, Inc. v. Petersen Publishing Co. LLC, 173 F.3d 113, 117 (2d Cir.
1999). Thus, courts assess a mark's strength by considering two factors:
"(1) the degree to which it is inherently distinctive; and (2) the degree
to which it is distinctive in the marketplace." W.W.W. Pharm. Co., Inc.
v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993).
To gauge the inherent distinctiveness of a mark, courts use four
categories of distinctiveness ranging from the least distinctive to the
most: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or
fanciful. Id. "A generic mark is generally a common description of goods
[—] one that refers, or has come to be understood as referring, to
the genus of which the particular product is a species." Genesee Brewing
Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 143 (2d Cir. 1997)
(internal quotation marks and citations omitted). A descriptive mark
describes a product's features, qualities, ingredients or the use to
which a product is put in ordinary language. Id. A suggestive mark, on
the other hand, "employs terms which do not describe but merely suggest
the features of the product, requiring the purchaser to use imagination,
thought and perception to reach a conclusion as to the nature of goods."
Id. (citation and internal quotation marks omitted). Finally, the term
fanciful applies to words invented solely for their use as a trademark.
Id. (citation omitted). "When the same legal consequences [that attach to
a fanciful mark] attach to a common word, i.e., when it is applied in an
unfamiliar way, the use is called "arbitrary.'" Abercrombie & Fitch
Co. v. Hunting World, Inc., 537 F.2d 4, 11 n. 12 (2d Cir. 1976).
Friesland contends that the Longevity mark is "at least . . .
suggestive with fanciful elements." Memorandum of Law In Support of
Plaintiff's Cross-Motion for Finding Defendants Action in Bad Faith and
In Opposition to Defendants' Motion for Summary Judgment, dated March
15, 2002 ("Pl. Mem."), at 11. The defendants argue that the mark is "at
best suggestive, if not descriptive." Memorandum of
Defendants/Counterclaim Plaintiff's In
Support of Their Motion for
Summary Judgment, dated February 15, 2002 ("Defs. Mem."), at 15.
Construing the evidence most favorably to Friesland on this motion for
summary judgment, the Court concludes that a reasonable jury could find
that the Longevity mark is at least suggestive with some fanciful
elements. The mark features the word "longevity" along with a picture of
an old man whom Friesland contends is the God of Longevity. See
Brotherton Report at 1. The mark certainly does not describe the
features, ingredients or uses of the condensed milk product. Rather, at
most it might be thought to "suggest features of the product" —
that is, that by drinking the product one can achieve a long life.
Generally, a suggestive term is entitled to protection and recognition as
a strong mark. Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70, 77 (2d
Cir. 1988). In addition, because the Longevity mark features an original
drawing of an old man, this adds to its distinctiveness. Moreover,
Friesland also filed an affidavit under 15 U.S.C. § 1065 that
rendered its registration of the mark incontestable as of 1990, Knull
Dec., Ex. D, which entitles Friesland "to a presumption that its
registered trademark is inherently distinctive." Sporty's Farm L.L.C. v.
Sportsman's Market, Inc., 202 F.3d 489, 497 (2d Cir.) (quoting Equine
Technologies, Inc. v. Equitechnology, Inc., 68 F.3d 542, 545 (1st Cir.
1995)), cert. denied, 530 U.S. 1262 (2000).
The fact that the mark is "inherently distinctive" does not answer the
question of strength of the mark because a finding of inherent
distinctiveness "does not guarantee . . . that the mark is a strong one."
Streetwise Maps, 159 F.3d at 744 (quoting Gillette, 984 F.2d at 572);
Lang, 949 F.2d at 581 (suggestiveness is not necessarily dispositive on
the issue of a mark's strength). Rather, "the strength of the mark turns
on its origin-indicating quality, in the eyes of the purchasing public."
Lang, 949 F.2d at 581 (internal quotation marks and citation omitted).
"The factors relevant to the inquiry of secondary meaning include
advertising expenditures, consumer studies, sales, competitors' attempts
to plagiarize the mark, and length and exclusivity of the mark's use."
Arrow Fastener, 59 F.3d at 393. Friesland has put forth virtually no
admissible evidence in support of these factors. While they state that
they have used the mark in the United States for over twenty years, Pl.
Mem. at 13, they cite no record evidence for this proposition.
Nonetheless, based on the mark's incontestability and its inherent
distinctiveness (and in the absence of additional evidence to suggest
that the mark has a strong secondary meaning), a jury could at a minimum
reasonably conclude that the Longevity ...