United States District Court, S.D. New York
August 24, 2005.
TINY TOT SPORTS, INC., Plaintiff,
SPORTY BABY, LLC and SMALL FRY PRODUCTIONS, Defendants.
The opinion of the court was delivered by: DENISE COTE, District Judge
OPINION & ORDER
Plaintiff Tiny Tot Sports, Inc. ("Tiny Tot") sells videos
intended to introduce toddlers to sports under the marks BABY
BASEBALL, BABY SOCCER, BABY GOLF, BABY FOOTBALL, BABY HOCKEY, and
BABY BASKETBALL (collectively, the "Baby Marks"). Defendants
Sporty Baby LLC ("Sporty Baby") and Small Fry Productions ("Small
Fry") have prepared to market their own videos using the Baby
Marks, and Sporty Baby filed trademark registration applications
for five of the six marks. This Opinion considers defendants, motion for summary judgment and to vacate the Temporary
Restraining Order (the "TRO") issued by this Court on February
17, 2005. In addition, it considers plaintiff's motion for
sanctions and an order of civil contempt, damages, and attorney's
For the reasons described below, defendants, motion for summary
judgment is granted. Plaintiff's motion for sanctions is granted
The following facts are undisputed or are as shown by
plaintiff, unless otherwise indicated.*fn2 Tiny Tot sells
and markets athletic-themed videos for children using the Baby
Marks. According to a March 1, 2005 press release (the "March
2005 Press Release") submitted by Tiny Tot,
[the] 30-minute videos . . . introduce toddlers to
the respective sports by using whimsical sports
characters and bouncy music, as well as images of
colorful equipment and the Tiny Tot Sports Team of 30
young children doing their best to score, punt, pass,
shoot, bat, putt, kick and just have fun. All of the
videos stress and reinforce the importance of
teamwork, Sharing, friendship, and the benefits of sports.
According to the same press release, more than 1300
retail outlets have agreed to carry Tiny Tot's
On February 20, 2004, Sporty Baby filed "intent to use"
trademark applications with the U.S. Patent and Trademark Office
("PTO") for BABY BASEBALL, BABY SOCCER, BABY GOLF, BABY FOOTBALL,
and BABY BASKETBALL, five of the six Baby Marks. Neither party
presents evidence that Sporty Baby ever sold videos using these
marks, and counsel for Sporty Baby represented to the Court in a
May 25, 2005 conference that no sales have occurred. Sporty Baby
received adverse preliminary determinations by the PTO examiner
on the basis that the marks were merely descriptive. It now
claims to have abandoned those applications, although plaintiff
disputes that the applications have indeed been officially
Tiny Tot filed its own trademark applications for all six Baby
Marks on March 25, 2004.*fn3 Tiny Tot's trademark
applications appear to contain stylized design logos, not
standard word marks. The preliminary determinations issued to
Tiny Tot by the PTO examiners were similarly adverse, also on the
basis that the marks were descriptive. The BABY SOCCER mark,
however, was given reconsideration at plaintiff's behest and was
granted conditional preliminary approval on April 7, 2005,
although action was suspended pending resolution of the potential
conflict presented by Sporty Baby's prior application for the same mark.*fn4
Tiny Tot filed this action against Sporty Baby and Small Fry on
June 15, 2004, alleging unfair competition under Lanham Act
Section 43(a), 15 U.S.C. § 1125(a)(1)(A); fraudulent trademark
registration under 15 U.S.C. § 1120; and unfair or deceptive
trade practices under N.Y. Gen. Bus. L. § 349(a). Tiny Tot seeks
a permanent injunction barring defendants from using the Baby
Marks, as well as compensatory and punitive damages. Following a
conference with the parties, on August 27, 2004, this Court
issued a Pretrial Scheduling Order specifying that fact discovery
was to close on February 25, 2005. On February 17, 2005, Tiny Tot
requested and was granted a TRO barring defendants and parties
affiliated with them from using the Baby Marks and, specifically,
from distributing, promoting, or selling videos using the Baby
Marks at the American International Toy Fair (the "Toy Fair") on
February 20 to 23, 2005, which a Tiny Tot representative
described in his declaration as "the biggest marketing event of
the year in [the toy] industry."*fn5 On the date the TRO was issued, the parties jointly agreed to a schedule,
issued in an Order of February 18, 2005, setting a preliminary
injunction hearing for May 20, 2005.
Defendants filed a summary judgment motion on March 25, 2005;
Tiny Tot filed motions for leave to amend the complaint and for
sanctions, an order of civil contempt, damages, and attorneys'
fees on April 1, 2005. Tiny Tot agreed in early May to withdraw
its motion for a preliminary injunction so that the matter could
proceed more swiftly toward a final determination on the merits.
On May 7, 2005, Tiny Tot filed a motion to reopen discovery,
which was denied, subject to rulings the Court made at a May 24,
I. Defendants' Summary Judgment Motion
In their motion for summary judgment, defendants argue that the
Baby Marks are not protectable under Lanham Act Section 43(a)
because they are merely descriptive and lack the secondary
meaning necessary to render descriptive marks protectable. They
also argue that plaintiff's claim under 15 U.S.C. § 1120 is
unripe and moot because the statute applies only to defendants that have actually obtained trademark registration. Finally,
defendants argue that no claim can be sustained under N.Y. Gen.
Bus. L. § 349 because plaintiff has not made a showing of harm to
consumers at large.
A court cannot grant summary judgment unless all of the
submissions taken together "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." Rule 56(c), Fed.R.Civ.P. In
making its determination, the court must view all facts in the
light most favorable to the non-moving party. Celotex Corp. v.
Catrett, 477 U.S. 317, 323 (1986). When the moving party has
asserted facts showing that it is entitled to summary judgment,
the opposing party must "set forth specific facts showing that
there is a genuine issue for trial." Rule 56(e), Fed.R.Civ.P.
A. Distinctiveness of the Baby Marks under 15 U.S.C. § 1125(a)
Defendants argue that the Baby Marks are not protectable under
Lanham Act Section 43(a) because they are descriptive rather than
suggestive and the plaintiffs have not shown that the marks have
acquired secondary meaning. Section 43(a) imposes civil liability
[a]ny person who, on or in connection with any goods
or services . . . uses in commerce any word, term,
name, symbol, or device, or any combination thereof,
or any false designation of origin, false or
misleading description of fact, or false or
misleading representation of fact, which
(A) 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)(1)(A). To succeed on a Section 43(a) claim
for trademark infringement,*fn6
a plaintiff must establish
both (1) that its trademark is entitled to protection and (2)
that the defendant's mark is likely to confuse consumers as to
the origin or sponsorship of its product. Virgin Enters., Inc.
v. Nawab, 335 F.3d 141
, 146 (2d Cir. 2003).
To establish trademark infringement under Section 43(a), a
trademark need not be registered, but it need be registrable.
See Wal-Mart Stores, Inc. v. Samara Bros., Inc.,
529 U.S. 205, 210 (2000) ("[T]he general principles qualifying a mark for
registration under § 2 of the Lanham Act [governing trademark
registration] are for the most part applicable in determining whether an unregistered mark is entitled to protection under §
43(a)." (citation omitted)). "The strength of a trademark in the
marketplace and the degree of protection it is entitled to are
categorized by the degree of the mark's distinctiveness in the
following ascending order: generic, descriptive, suggestive, and
arbitrary or fanciful." Gruner Jahr USA Publishing v. Meredith
Corp., 991 F.2d 1072, 1075 (2d Cir. 1993) (citing Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976)).
Generic marks, which consist of words "that identify the type or
species of goods or services to which they apply" are not
entitled to any protection against infringement. TCPIP Holding
Co., Inc. v. Haar Communications, Inc., 244 F.3d 88, 93 (2d Cir.
2001). With respect to the remaining categories, "trademark law
accords broader protection to marks that serve exclusively as
identifiers and lesser protection where a grant of exclusiveness
would tend to diminish the access of others to the full range of
discourse relating to their goods." Virgin, 335 F.3d at 147-48.
A suggestive mark, "as might be expected, suggests the product,
though it may take imagination to grasp the nature of the
product," Gruner, 991 F.2d at 1076, whereas a descriptive mark
"forthwith conveys an immediate idea of the ingredients,
qualities, or characteristics of the goods," Bernard v. Commerce
Drug Co., 964 F.2d 1338, 1341 (2d Cir. 1992) (quoting
Abercrombie, 537 F.2d at 11). Similarly, a mark may be
descriptive "if it describes the purpose or utility of the
product." Id. A mark must be considered in relation to the goods it identifies when the category determination is made. For
example, "[t]he word `apple' would be . . . suggestive when used
in `Apple-A-Day' on vitamin tablets, [and] descriptive when used
in `Tomapple' for combination tomato-apple juice." Bristol-Myers
Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1041 (2d Cir.
1992) (quoting 1 J.T. McCarthy, Trademarks and Unfair
Competition § 11:22, at 498-99 (2d ed. 1984)).
A descriptive mark may be protected only if it has acquired
secondary meaning, while a suggestive mark is considered
inherently distinctive and may; be protected without a showing of
secondary meaning. Gruner, 991 F.2d at 1076. Secondary meaning
is also known as "acquired distinctiveness." Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 769 (1992). It "attaches when
the name and the business have become synonymous in the mind of
the public, submerging the primary meaning of the term in favor
of its meaning as a word identifying that business." Time, Inc.
v. Petersen Publishing Co., 173 F.3d 113, 117 (2d Cir. 1999)
(citation omitted). Tiny Tot does argue that its Baby Marks have
acquired secondary meaning. Whether the Baby Marks are
protectable, then, depends entirely on whether they are
descriptive or suggestive.
The Baby Marks are descriptive as a matter of law. Plaintiff's
"Baby Golf" video, for example, is a video that introduces babies
to the sport of golf. See March 2005 Press Release ("Baby
Baseball, Baby Basketball, Baby Football, Baby Soccer, and
Baby Golf . . . introduce toddlers to the respective sports by using whimsical sports characters and bouncy
music. . . ."). Contrary to plaintiff's arguments, no leap of
imagination is necessary to discern the general contents or
purpose of the videos identified by the Baby Marks. Each Baby
Mark is in essence a concise description of the contents or
purpose of the corresponding video.
Even though the fact that: the videos "contain characters,
scenes, stories, words and music" is not apparent from the Baby
Marks, as the U.S. Court of Appeals for the Second Circuit noted
in a case where the mark in question described "the general use . . .
to which the product or service is put," Bernard,
964 F.2d at 1341, "it is not necessary . . . that the term also describe
the specific . . . characteristics of the product . . . in order
for the term to be descriptive." The Bernard court held that
"Arthriticare" was a descriptive mark for a topical arthritis
gel. See id. In another Second Circuit case, which involved
the mark "Children's Place" for a clothing store, the court noted
that "[a] store that specializes in children's merchandise is a
children's place a place that sells children's merchandise, a
place to buy what children need. The use of the words "children's
place" as a mark for such a store is thus highly descriptive."
TCPIP, 244 F.3d at 93. In Papercutter, Inc. v. Fay's Drug
Co., Inc., 900 F.2d 558, 563 (2d Cir. 1990), the court held
"Papercutter" to be a descriptive mark for a corporation selling
paper designs and ornaments. As these examples indicate, it is
not necessary that a mark evoke in a customer's mind a precise vision of the product it identifies, but simply that the
mark convey "an immediate idea of some characteristic or
attribute" of the product. Bernard, 964 F.2d at 1341 (citation
omitted). The defendants' motion for summary judgment on the
Lanham Act Section 43(a) claim is accordingly granted.*fn7
B. The Fraudulent Registration Claim Under 15 U.S.C. § 1120
Defendants argue that plaintiff's claim under the fraudulent
trademark registration provision is unripe and moot. The statute
provides: Any person who shall procure registration in the
Patent and Trademark Office of a mark by a false or
fraudulent declaration or representation, oral or in
writing, or by any false means, shall be liable in a
civil action by any person injured thereby for any
damages sustained in consequence thereof.
15 U.S.C. § 1120. Defendants are correct that to "procure"
registration means to obtain registration, not merely to apply
for registration. See County Mut. Ins. Co. v. Am. Farm
Bureau, 876 F.2d 599, 600-01 (7th Cir. 1989) (dismissing claim
as unripe); Dun Computer Corp. v. Loudcloud, Inc.,
133 F. Supp. 2d 823, 831 (N.D. Va. 2003) (dismissing for failure to state a
claim); Bernard v. Commerce Drug Co., 774 F. Supp. 103, 109
(E.D.N.Y. 1991) (granting judgment on pleadings). This reading of
the statute makes good sense from a policy perspective, as it
interprets the Lanham Act as "send[ing] disputants to an agency
that may resolve the problem or provide valuable information"
prior to the initiation of a lawsuit. Country Mutual,
876 F.2d at 601.
Plaintiff cites no law stating a contrary view. The one case it
does cite, Citigroup, Inc. v. City Holding Co., No. 99 Civ.
10115 (RWS), 2003 WL 282202 (S.D.N.Y. Feb. 10, 2003), merely
notes that the pending applications at issue have been abandoned
and that plaintiff's fraudulent registration claim is therefore
moot. Id. at *16. Because plaintiff's fraudulent registration
claim was unripe when brought and is now likely moot, considering
defendants, representation that they have withdrawn their
applications for trademark registration, summary judgment is
granted for defendants. C. The State Law Deceptive Business Practices Claim
Defendants argue that Tiny Tot has made no showing that
defendants, conduct has harmed consumers at large and that Tiny
Tot's claim under Section 349 of the New York General Business
Law must be dismissed. Section 349 provides, in relevant part:
"Deceptive acts or practices in the conduct of any business,
trade or commerce or in the furnishing of any service in this
state are hereby declared unlawful." N.Y. Gen. Bus. L. § 349 (a).
A party bringing a claim under Section 349 must show that: "(1)
defendant engaged in a consumer-oriented act, (2) that the
consumer-oriented act was misleading in a material way, and (3)
that plaintiff consequently suffered injury." GTFM, Inc. v.
Solid Clothing, Inc., 215 F. Supp. 2d 273, 301-02 (S.D.N.Y.
2002) (citing Stutman v. Chem. Bank, 95 N.Y.2d 24, 29 (2000)).
"Whether a representation or an omission, the deceptive
practice must be likely to mislead a reasonable consumer acting
reasonably under the circumstances." Stutman, 95 N.Y.2d at 29
(citation omitted). "[A] plaintiff must prove `actual' injury to
recover under the statute, though not necessarily pecuniary
harm." Id. So long as there is harm to the "public at large," a
competitor may recover under the statute. Boule v. Hutton,
328 F.3d 84, 94 (2d Cir. 2003); see also GTFM,
215 F. Supp. 2d at 302 (finding in favor of a plaintiff who had sued a competitor
for trademark infringement and other violations).
Defendants are correct that plaintiff must establish that there
has been harm to consumers in order to state a claim under Section 349. Here, Tiny Tot has presented no evidence of harm to
the "public at large." It has presented no evidence that
defendants sold videos using the Baby Marks, or that defendants
even took actual orders from retailers for videos using the Baby
Marks. The cases cited by plaintiff, including GTFM,
215 F. Supp. 2d 273; Vitabiotics, Ltd. v. Krupka, 606 F. Supp 779, 785
(S.D.N.Y. 2004); Capitol Records, Inc. v. Wings Digital Corp.,
218 F. Supp. 2d 280, 286 (E.D.N.Y. 2002); and Francis S. Denney,
Inc. v. I.S. Labs., 737 F. Supp. 247 (S.D.N.Y. 1990), all
involve actual sales by defendants of similar products. Summary
judgment is accordingly granted for defendants.
D. Plaintiff's Rule 56(f) Argument
Tiny Tot argues that consideration of defendants, motion should
be denied on the basis that "very little discovery has been
conducted." It complains that defendants, as of the date Tiny
Tot's opposition was filed, had produced only twenty-three
documents. While this argument has no impact on plaintiff's
Lanham Act Section 43(a) and fraudulent registration claims, it
could have implications for its state-law unfair competition
As noted above, discovery in this case closed on February 25,
2005, as per the original scheduling order. Plaintiff's motion to
reopen discovery, filed on May 7, 2005, was denied, subject to rulings made by the Court at the May 24, 2005
conference. A party facing a motion for summary judgment may make
a showing under Rule 56(f), Fed.R.Civ.P., that more discovery
is needed for it to have an adequate opportunity to present facts
that could defeat the motion. See Miller v. Wolpoff &
Abramson, L.L.P., 321 F.3d 292, 303 (2d Cir. 2003). party's
failure to conduct adequate discovery during the discovery
period, or to seek the court's assistance during the discovery
period in the event an opponent fails to comply with timely
discovery requests, is not an adequate basis for granting further
discovery under Rule 56(f). Plaintiff's request for deferral of
decision on defendants, summary judgment motion is denied.
II. Motion for Sanctions and an Order of Civil Contempt,
Damages, and Attorneys' Fees
As noted above, on February 17, 2005, a TRO was issued barring
defendants and a third party named Brainy Baby*fn9 from
using the Baby Marks. The marks nevertheless appeared on Sporty
Baby's website until the following evening; in a press release
promoting "Sporty Baby Golf," "Sporty Baby Baseball," and "Sporty
Baby Soccer" distributed to a handful of people at the Toy Fair
before noon on February 20, 2005, the first day of the event, at
which point defendants replaced it with a non-offending press release; on Brainy Baby's website until February 28, 2005; and on
a third-party website, www.bigkids.com, until March 28, 2005.
Tiny Tot has moved for sanctions, an order of civil contempt,
damages, and attorneys' fees against defendants.
In addition to coercing future compliance, a goal not
applicable here, civil contempt sanctions may be used "to remedy
any harm past noncompliance caused the other party." Weitzman v.
Stein, 98 F.3d 717, 719 (2d Cir. 1996). This "compensatory" goal
of civil contempt "can only be met by awarding to the plaintiff
any proven damages," in addition to attorneys' fees and costs.
Id. "[W]hile willfulness may not necessarily be a prerequisite
to an award of fees and costs, a finding of willfulness strongly
supports granting them." Id. (footnote omitted). That summary
judgment has been rendered for defendants on plaintiff's claims
is of no consequence to this determination, as the terms of the
TRO were clear and definite and bound the defendants while the
TRO was in effect.
Defendants corrected each violation promptly once it was
reported to them. Plaintiff is correct, however, that defendants
bore the burden of compliance and should have actively worked to
assure full compliance with the Order. An award of damages, if
any can be proven, and reasonable attorneys, fees and costs shall
therefore be granted to compensate plaintiff for its efforts to
halt the use of the marks in the toy Fair press release and on
the Brainy Baby website. Defendants were well aware that the
order was issued in contemplation of the upcoming Toy Fair and should have vetted all the materials to be distributed at the
event. Moreover, there is no explanation for the Baby Marks'
presence on the Brainy Baby website more than a week after the
Order was issued, as Brainy Baby should have searched the site
promptly; that Brainy Baby claims to have been unaware of the
marks' presence on its site is of no consequence.
No sanctions shall be awarded, however, for the lingering
presence of the marks on Sporty Baby's website less than
twenty-four hours after the TRO was issued, as the Court is
satisfied that the defendants were diligent in attempting to
achieve compliance by contacting the third-party web host. Nor
will damages, fees, or costs be awarded for plaintiff's attempts
to enforce the TRO against a third party, the website of which
was not under the control of any of the parties under the TRO.
Summary judgment is granted for defendants on all claims, and
the Temporary Restraining Order is lifted. Tiny Tot's motion for
contempt sanctions is granted in part. Tiny Tot's motion to amend
the complaint is denied.
© 1992-2005 VersusLaw Inc.