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TINY TOT SPORTS, INC. v. SPORTY BABY

August 24, 2005.

TINY TOT SPORTS, INC., Plaintiff,
v.
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 fees.

  For the reasons described below, defendants, motion for summary judgment is granted. Plaintiff's motion for sanctions is granted in part.*fn1

  Background

  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 videos.
  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 abandoned.

  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, 2005 conference.

  Discussion

  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 ...


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