whether there was a likelihood of reverse consumer confusion between
<<O>> Magazine and "O The Oprah Magazine." (Defs.'
Rule 56.1 Stmt. ¶ 67.) The survey, was conducted by Dr. Henry Ostberg, a
market researcher of the Admar Group, Inc., in shopping malls across the
United States, and revealed that only 7 out of 255 respondents, or 2.7%,
perceived any connection between the plaintiff's magazine and "O The Oprah
Magazine." (Defs.' Rule 56.1 Stmt. ¶¶ 68-69, 78.) Only 3 people, or
1.2%, of respondents believed that the <<O>> Magazine
produced by the plaintiff was actually produced by any of the defendants
or by Oprah Winfrey. (Defs.' Rule 56.1 Stmt. ¶ 74.) The survey was
conducted under double-blind conditions, where neither the interviewer or
the respondents were aware of the survey's sponsor and had no indication
concerning an expected outcome, and it conformed to generally-accepted
standards of professional market research. (Defs.' Rule 56.1 Stmt.
The plaintiff commenced this action on or about August 20, 2001.
The defendants first move to dismiss the plaintiff's claims under the
Lanham Act. Section 32(1) of the Lanham Act provides protection against
the use in commerce of a "reproduction, counterfeit, copy, or colorable
imitation of a registered mark" and its application to "labels, signs,
prints, packages, wrappers, receptacles or advertisements" where "such use
is likely to cause confusion, or to cause mistake, or to deceive."
15 U.S.C. § 1114 (1). Section 43(a) protects both registered and
unregistered marks against the use of any word, term, name, symbol or
device that "is likely to cause confusion, or to cause mistake, or to
deceive as to the affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship, or approval of his
or her goods, services, or commercial activities by another person. . . ."
15 U.S.C. § 1125(a). Thus, "[i]n order to succeed a plaintiff does
not have to show necessarily that consumers would believe that the
defendant's goods or services are from the same source as those of the
plaintiff." Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955,
960 (2d Cir. 1996).
To establish a trademark infringement claim under either of these
provisions, a plaintiff must show that it has a valid mark that is
entitled to protection and that the defendant's actions are likely to
cause confusion with the plaintiff's mark. See The Morningside Group
Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 137 (2d. Cir.
1999); Time, Inc. v. Petersen Publ'g Co., L.L.C., 173 F.3d 113, 117 (2d
Cir. 1999); Sports Auth., 89 F.3d at 960; Caché, Inc. v. M.Z.
Berger & Co., No. 99 Civ. 12320, 2001 WL 38283, at *3 (S.D.N.Y. Jan.
To survive a motion for summary judgment, the plaintiff must show that
"numerous ordinary prudent purchasers are likely to be misled or confused
as to the source of the product in question because of the entrance in
the marketplace of
the defendant's mark," Gruner Jahr USA Publ'g. v.
Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993); see also New York
Stock Exch. v. New York, New York Hotel, LLC, 293 F.3d 550, 554-55 (2d
Cir. 2002); Morningside Group, 182 F.3d at 138; Estee Lauder Inc. v.
Gap, Inc., 108 F.3d 1503, 1510 (2d Cir. 1997); Sports Auth., 89 F.3d at
960; Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 390-91 (2d
Cir. 1995), "or that there may be confusion as to [the] plaintiff's
sponsorship or endorsement of the junior mark." Hormel Foods Corp. v. Jim
Henson Prods., Inc., 73 F.3d 497, 502 (2d Cir. 1996); see also New York
Stock Exch., 293 F.3d at 555; Dallas Cowboys Cheerleaders, Inc. v.
Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979). Proof of
actual confusion is not necessary. See Centaur Communications, Ltd. v.
A/S/M Communications, Inc., 830 F.2d 1217, 1227 (2d Cir. 1987). However,
proof of actual confusion is probative of a likelihood of confusion. See
Morningside Group, 182 F.3d at 141. The ultimate question as to the
likelihood of confusion is a question of law for the Court. See, e.g.,
Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 743 (2d Cir. 1994).
The plaintiff alleged in his original complaint a likelihood of both
forward confusion and reverse confusion. Forward confusion is the
traditional form of confusion in which the junior user uses the mark to
sell goods or services based on the misperception that they originate
with the senior user. See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733,
740 (2d Cir. 1994); Sunenblick v. Harrell, 895 F. Supp. 616, 625
(S.D.N.Y. 1995), aff'd, 101 F.3d 684 (2d Cir. 1996). "Reverse confusion
exists when a subsequent user selects a trademark that is likely to cause
consumers to believe, erroneously, that the goods marketed by the prior
user are produced by the subsequent user." Lang v. Retirement Living
Publ'g Co., Inc., 949 F.2d 576, 583 (2d Cir. 1991); see also Sterling
Drug, 14 F.3d at 741; Trouble v. Wet Seal, Inc., 179 F. Supp.2d 291, 296
(S.D.N.Y. 2001); Trustees of Columbia Univ. v. Columbia/HCA Healthcare
Corp., 964 F. Supp. 733, 743 (S.D.N.Y. 1997). Reverse confusion also
"recognizes the danger that a junior user's products may tarnish the
image of the senior user's products, or that consumers may view the
senior user as an unauthorized infringer of the junior user's products,
thus injuring the senior user's reputation and impairing its good will."
Becoming, Inc. v. Avon Products, Inc., No. 01 Civ. 5863, 2001 WL 930794,
at *9 (S.D.N.Y. Aug. 15, 2001) (citations and punctuation omitted)
(citing Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 490
(2d Cir. 1988) and Plus Products v. Plus Discount Foods, Inc.,
722 F.2d 999, 1003-04 (2d Cir. 1983)); see W.W.W. Pharm. Co. v. Gillette
Co., 984 F.2d 567, 571 (2d Cir. 1993); Sunenblick, 895 F. Supp. at 625-26
In Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.
1961), the Court of Appeals for the Second Circuit set forth eight
non-exclusive factors that courts are to consider when determining
whether a likelihood of confusion exists. Those factors are: 1) the
strength of the plaintiff's mark; 2) the similarity of the plaintiff's
and the defendants' marks; 3) the competitive proximity of the products;
4) the likelihood that the plaintiff will "bridge the gap" and offer a
product like the defendants'; 5) actual confusion between products; 6)
good faith on the defendants' part; 7) the quality of the defendants'
product; and 8) the sophistication of buyers. See Polaroid Corp., 287 F.2d
at 495; see also New York Stock Exch., 293 F.3d at 555; Estee Lauder, 108
F.3d at 1510; Sports Auth., 89 F.3d at 960-65; Hormel Foods, 73 F.3d at
502-05. The decision as to whether a mark infringes requires a
"comprehensive analysis of all
the relevant facts and circumstances."
Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 968 (2d Cir. 1981). The
Court of Appeals for the Second Circuit has instructed that:
[T]he Polaroid factors are not, of course, "exclusive"
and should not be applied "mechanically." No single
factor is dispositive, and cases may certainly arise
where a factor is irrelevant to the facts at hand. But
it is incumbent upon the district judge to engage in a
deliberate review of each factor, and, if a factor is
inapplicable to a case, to explain why. The steady
application of Polaroid is critical to the proper
development of trademark law, for it is only when the
Polaroid factors are applied consistently and clearly
over time that the relevant distinctions between
different factual configurations can emerge.
Arrow Fastener, 59 F.3d at 400 (citations omitted); see also New York
Stock Exch., 293 F.3d at 555. When the likelihood of confusion is in
doubt, the question will be resolved in favor of the senior user. See
Telechron, Inc. v. Telicon Corp.,