product from Vietnamese farmers and
if these suppliers are insufficient to meet demand then he buys it from
"all over the world, everywhere that's cheap." Knull Dec., Ex. F at 14.
That Vinamilk seeks a cheap supply of milk, however, does not necessarily
mean that its product is of inferior quality.
Friesland also notes that its product is made from whole milk while
Vinamilk's is made from dried or powdered milk, though it provides no
evidence regarding the taste, nutrition value or any other aspects of the
differences between whole versus dried milk. While there may be some
inherent superiority in an undoctored foodstuff compared to its dried
version, the mere fact that dried milk is used in Vinamilk's product is
insufficient evidence to conclude that it is of inferior quality. As a
result, this factor does not favor Friesland.
8. Sophistication of the Consumers
In assessing this factor, the Court must consider "`[t]he general
impression of the ordinary purchaser, buying under the normally prevalent
conditions of the market and giving the attention such purchasers usually
give in buying that class of goods. . . .'" Gillette, 984 F.2d at 575
(citation omitted). While purchasers of expensive goods, like
automobiles, may be held to a high standard of purchasing care, see
McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1137 (2d Cir.
1979), "[p]urchasers of relatively inexpensive goods such as ordinary
grocery store foods are held to a lesser standard of purchasing care."
Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 220 (2d Cir. 1999)
(citation and internal quotation marks omitted). Friesland has asserted,
without contradiction, that both products sell for about one dollar
each. Defendants point out that Friesland's General Manager testified
that he "imagines" that the consumers use "some care" in purchasing
sweetened condensed milk. Def. Mem. at 23. This is insufficient
evidence, however, to show sophistication on the part of the relevant
consumers. Thus, this factor favors Friesland.
Upon consideration of each of the Polaroid factors, Vinamilk' s motion
for summary judgment as to the trademark claim must be denied. A
reasonable trier of fact could conclude that the Longevity mark is a
somewhat strong mark and that the Vinamilk labels have many similarities
to the Longevity mark. While this is more obviously true for the "Old Man
with Children" label than the "Three Gods" label, there are sufficient
similarities to present the case to a jury. In addition, the Longevity
mark and the defendants' labels are affixed to virtually the same
inexpensive food products competing in the same market (with
unsophisticated purchasers), thus increasing the likelihood of
confusion. Thus, a reasonable trier of fact could conclude that the
Vinamilk labels are likely to cause confusion with Friesland's mark.
C. Federal Unfair Competition
Friesland claims that the defendants' use of the labels constitutes a
false designation of origin under 15 U.S.C. § 1125(a). Vinamilk seeks
dismissal of this claim simply on the ground that it encompasses the same
elements as the trademark infringement claim. Def. Mem. at 14 n. 10.
Indeed, the "key issue in [trademark infringement and false designation
of origin] cases is whether an appreciable number of consumers are likely
to be misled or confused about the source of the product in question."
Nikon Inc. v. lkon Corp., 987 F.2d 91, 94 (2d Cir. 1993); see also
Rosenthal A.G. v. Ritelite, Ltd., 986 F. Supp. 133, 139 (E.D.N.Y. 1997)
("[b]oth [claims of trademark infringement under 15 U.S.C. § 1114(1)
and false designation
of origin under 15 U.S.C. § 1125(a)] require
proof of essentially the same elements"). Because the Court has already
determined that a reasonable trier of fact could find the necessary
confusion, summary judgment on this claim must be denied.
D. New York Unfair Competition Claim
To prevail on a claim of common law unfair competition under New York
law, a plaintiff must prove either (1) a likelihood of confusion or
actual confusion and (2) bad faith on the part of the defendant. Jeffrey
Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 35 (2d Cir.
1995); Trustees of Columbia University v. Columbia/HCA Healthcare Corp.,
964 F. Supp. 733, 750-51 (S.D.N.Y. 1997). Because the Court has already
concluded that a reasonable trier of fact could find bad faith, summary
judgment as to this claim must be denied.
E. Federal Dilution Claim
Under the Federal Trademark Dilution Act (the "FTDA"),
15 U.S.C. § 1125(c), a plaintiff must establish five elements to make
a viable claim of trademark dilution: "(1) the senior mark must be
famous; (2) it must be distinctive; (3) the junior use must be a
commercial use in commerce; (4) it must begin after the senior mark has
become famous; and (5) it must cause dilution of the distinctive quality
of the senior mark." PF Brands, 191 F.3d at 215. Vinamilk contends that
the Court must dismiss this claim because Friesland has not established
that the Longevity mark has achieved the requisite level of fame to
sustain a dilution claim.
Although the statute is unclear as to the degree of fame necessary to
be considered a "famous" mark under the FTDA, the Second Circuit has
It seems most unlikely that Congress intended to
confer on marks that have enjoyed only brief fame in a
small part of the country, or among a small segment of
the population, the power to enjoin all other users
throughout the nation in all realms of commerce. The
examples of eligible "famous marks" given in the House
Report — Dupont, Buick, and Kodak see H.R.Rep.
No. 104-374, at 3 (1995), reprinted in
1995 U.S.C.C.A.N. 1029, 1030 — are marks that for the
major part of the century have been household words
throughout the United States. They are representative
of the best known marks in commerce . . . Putting
together the extraordinary power the Act confers on a
"famous" mark and the improbability that Congress
intended to grant such outright exclusivity to marks
that are famous in only a small area or segment of the
nation, . . . we think Congress envisioned that marks
would qualify as "famous" only if they carried a
substantial degree of fame.
TCPIP Holding Co. v. Haar Communications, Inc., 244 F.3d 88, 99 (2d Cir.
Thus, only marks approaching household names may qualify as "famous."
A.B.C. Carpet Co. v. Naeini, 2002 WL 100604, at *5 (E.D.N.Y. Jan. 22,
2002) (citing TCPIP Holding Co., 244 F.3d at 99); see National Distillers
Products Co., LLC v. Refreshment Brands, Inc., 198 F. Supp.2d 474, 486
(S.D.N.Y. 2002) (the FTDA "is only intended to protect truly famous
marks, such as DUPONT, BUICK, and KODAK") (citing TCPIP Holding Co.);
accord Prime Publishers, Inc. v. American-Republican, Inc.,
160 F. Supp.2d 266, 277 (D. Conn. 2001) ("A mark is famous if it has
achieved a wide degree of recognition by the United States consumer
public as the designator of the plaintiffs goods.").
Fries land has not put forth evidence that would allow a reasonable
trier of fact to conclude that the Longevity mark is "famous" under the
FTDA. The Longevity mark is hardly a household name and even Friesland's
own survey expert has presumed that the mark is not famous. See
Memorandum from Harry O'Neill to Cynthia Fareed, dated January 2, 2002
(reproduced as Ex. N to Schwab Dec.), at 2. Defendants have stated
without contradiction that Friesland's sales of the Longevity brand
condensed milk in the United States have never exceeded $5 million
annually. See Defs. Mem. at 26. Numerous courts have found marks to fall
short of being "famous" despite sales and advertising figures many times
greater than that pertaining to the Longevity mark. See, e.g., TCPIP
Holding Co., 244 F.3d at 99-100 (annual sales of $280 million); Advantage
Rent-A-Car, Inc. v. Enterprise Rent-A-Car, Co., 238 F.3d 378, 381 (5th
Cir. 2001) (advertising expenditures over $130 million); Avery Dennison
Corp. v. Sumpton, 189 F.3d 868, 879 (9th Cir. 1999) (mark used for over
seventy years, annual sales of $3 billion and annual advertising costs of
over $5 million).
Friesland points to only one piece of evidence for its contention that
its mark is famous: a review of condensed milk products in the San
Francisco Chronicle that mentions the Longevity brand. See Knull Dec., Ex
C. A short review of a product in a single city's newspaper is hardly
enough to meet Friesland's burden of showing that the Longevity mark is
"famous." Friesland mentions other evidence that would be offered at
trial but was not included in its present submission because it is "too
bulky." Pl. Mem. at 28. In opposing the present motion, however,
Friesland cannot "rest upon . . . mere allegations or denials," but "must
set forth specific facts showing that there is a genuine issue for
trial." Fed.R.Civ.P. 56(e). Because it has not shown that there is a
genuine issue as to whether the Longevity mark is famous, the Court must
grant summary judgment in favor of the defendants with respect to this
F. State Dilution Claim
New York's General Business Law § 360-1 (codified prior to 1997 at
§ 368-d) provides in its entirety:
[l]ikelihood of injury to business reputation or of
dilution of the distinctive quality of a mark or trade
name shall be a ground for injunctive relief in cases
of infringement of a mark registered or not registered
or in cases of unfair competition, notwithstanding the
absence of competition between the parties or the
absence of confusion as to the source of goods or
The statute applies not only to trademarks but to trade dress. See
Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 73 (2d Cir.
1994) (citing 20th Century Wear, Inc. v. Sanmark-Stardust Inc., 815 F.2d 8,
10-11 (2d Cir. 1987)), cert. denied, 513 U.S. 1190 (1995). In a recent
discussion of this statute, the Second Circuit held that "New York law
accords protection against dilution to marks that are distinctive as a
result of acquired secondary meaning as well as to those that are
inherently distinctive." New York Stock Exchange, Inc., 293 F.3d at 557.
The Second Circuit has also held that the statute protects only
"extremely strong marks." Bristol-Myers Squibb Co., 973 F.2d at 1049. New
York Stock Exchange, Inc. is clear that no secondary meaning need be
shown to prevail under the anti-dilution statute and that the plaintiff
may rely solely on the "inherent" distinctiveness of the mark. 293 F.3d
Unlike the trademark infringement claim, see section II.B above, the
anti-dilution statute applies not merely to the
Longevity trademark but
also to the trade dress of the cans and labels. The Court has already
noted the many similarities in the Longevity mark and the Vinamilk
labels. The similarities are far greater when the Longevity label is
considered because many of the color elements are the same. The Second
Circuit has noted that a producer of a product has "almost unlimited"
choices among the possible ways it can present its product and thus
"typically a trade dress will be arbitrary or fanciful and thus
inherently distinctive . . . provided, of course, the trade dress is not
functional." Paddington, 996 F.2d at 583. The Vinamilk trade dress has
numerous non-functional and arbitrary elements, including its white label
with blue lettering and the positioning, size, color and contents of its
English, Vietnamese and Chinese phrases. For these reasons, and those
described in section II.B above, a reasonable trier of fact could
conclude that the Longevity trade dress has enough suggestive and
fanciful elements that it qualifies as "distinctive" or even "extremely
In addition, the plaintiff must show a "likelihood of dilution."
Merriam Webster, 35 F.3d at 73 (citation omitted). Vinamilk has not
contested this aspect of plaintiffs state dilution claim on this summary
judgment motion. Nonetheless, the Court notes that two of the factors
that may show dilution are the "similarity of the marks" and the
"sophistication of the consumer." New York Stock Exchange, Inc., 293 F.3d
at 558. As we have already concluded that a reasonable trier of fact
could find in favor of Friesland on these elements, summary judgment on
the state dilution claim is inappropriate.
G. Section 133 Claim
New York General Business Law § 133 provides in relevant part:
No person, firm or corporation shall, with intent to
deceive or mislead the public, assume, adopt or use
as, or as part of, a corporate, assumed or trade
name, for advertising purposes or for the purposes of
trade, or for any other purpose, any name, designation
or style, or any symbol or simulation thereof, or a
part of any name, designation or style, or any symbol
or simulation thereof, which may deceive or mislead
the public as to the identity of such person, firm or
corporation or as to the connection of such person,
firm or corporation with any other person, firm or
corporation; nor shall any person, firm or
corporation, with like intent, adopt or use as, or as
part of, a corporate, assumed or trade name, for
advertising purposes, or for the purposes of trade, or
for any other purpose, any address or designation of
location in the community which may deceive or mislead
the public as to the true address or location of such
person, firm or corporation.
Defendants argue only that the absence of "likelihood of confusion"
supports their motion for summary judgment with respect to this claim.
See Def. Mem. at 14 n. 10. Because there is enough evidence for a
reasonable trier of fact to find a likelihood of confusion, the motion
for summary judgment must be denied.
Defendants' motion is denied as to all claims except Count II of the
Amended Complaint, the claim arising under FTDA, 15 U.S.C. § 1125(c),
which is dismissed. See Amended Complaint, ¶¶ 33-37. Plaintiff's
cross-motion for partial summary judgment is also denied.