The opinion of the court was delivered by: Thomas J. McAvoy, Sr. U.S. District Judge
On December 9, 2005, this Court ordered a new trial on the anti-dilution claim due to the inconsistent jury verdict. See FiberMark, Inc., v. Brownville Specialty Paper Prods., Inc., 2005 WL 3359077 (N.D.N.Y. Dec. 9, 2005), familiarity with which is presumed. On January 4, 2006, upon Defendant's letter motion, this Court ruled that (1) Plaintiff is not entitled to a jury trial on the anti-dilution claim, (2) the Court will determine the anti-dilution claim without taking any additional testimony because the parties failed to identify any new, non-cumulative evidence that would be presented in a new trial, and (3) the parties shall submit proposed findings of fact and conclusions of law supported by citations to the official trial transcript on or before January 22, 2006.
Following the order, Plaintiff FiberMark ("FiberMark") filed two letter motions requesting that the Court reconsider its January 4, 2006 order and that the Court admit into the record for the retrial the registration of FiberMark's Mottled Trade Dress with the United States Patent and Trademark Office ("PTO") or alternatively take judicial notice of the registration.
FiberMark and Brownville are both in the business of producing paper for office and school supply manufacturers. One of FiberMark's paper products is pressboard. Pressboard is a dense, rigid form of paperboard, categorized based on density, rigidity, and finish. Three grades of pressboard are known as Type I, Type II, and Type III. Type I is the most dense and rigid grade of pressboard. Currently, FiberMark is the only manufacturer of Type I pressboard in the United States. FiberMark's Type I pressboard is known as Genuine PressboardTM. When a clear acrylic coating and leather grain embossing are added, it is known as PressGuard(r). Pressboard manufacturers sell their products to converters. Converters purchase the pressboard and then convert it into a finished good (such as file folders, three-ring binders, file folders, notebooks, report covers) for sale to retailers.
FiberMark Type I pressboard products have a mottled appearance. Mottle is a common characteristic of all paper products, including Type I, II, and III pressboards. However, the FiberMark Mottle differs from the mottle on other pressboards because it is more distinct, consistent, linear, and easy to see. FiberMark and its predecessors have been the only manufacturers and suppliers of Type I pressboard bearing the FiberMark Mottle. FiberMark produces the FiberMark Mottle on its Type I pressboard by controlling inputs and processes such as the selection of pulps, secondary fibers, and dyes, the monitoring of the wet end of the machine, and the control of the pressing, drying, surface sizing, lamination and moisturizing process, and the glazing operation. FiberMark uses a quality control standard to ensure that the resulting product has the unique and recognizable FiberMark Mottle. Indeed, there was testimony in the record that the converters recognized the mottle in FiberMark Type I pressboard as unique and distinctive. Tr. 224:16-23, 428:9-19, 435:9-13, 644:22-23, 654:20-655:1, 11. FiberMark has promoted the mottled appearance of its Type I pressboard products through advertising, other promotional materials, and a cooperative marketing program with its converters on which it spends over $100,000 per year. As a consequence, FiberMark's Mottle is well-known, recognized and accepted in the market for pressboard products (among the converters).
Brownville does not produce a Type I pressboard. Instead, it produces what it claims to be Type II 1/2 coated and embossed pressboard product with a marbled and mottled appearance printed thereon (the Mansfield Cover(r)). By definition, Brownville's product is an imitation pressboard. When Brownville was developing a pressboard product to compete with FiberMark's Type I pressboard, ACCO, one of the largest converters, told Brownville that the Mansfield(r) Cover should have a mottled appearance. Tr. 664:9-20. Subsequently, the now President and General Manager of Brownville, Eugene Rood, went to an office supply store and purchased several products with a mottled appearance.*fn1 Rood then sent those samples to a graphics company and asked the company to come up with a similar pattern or effect as the samples provided. The graphics company took a picture of the samples and used that picture to develop a print roll that would create the mottled appearance on the Mansfield Cover(r). Unlike FiberMark's Type I pressboard, the mottled appearance on the Mansfield Cover(r) is not a result of the manufacturing process, but is printed on the product after the manufacturing process is completed. Brownville's products do not have the same technical specifications as FiberMark's Type I products. All the companies to which Brownville marketed its Mansfield(r) Cover were customers or potential customers, i.e. converters, of FiberMark.
Only equitable relief is available under the New York anti-dilution statute. N.Y. Gen. Bus. L. § 360-l. Accordingly, Plaintiff is not entitled to a jury trial. Empress Cubana Del Tabaco v. Culbro Corp., 123 F. Supp. 2d 203, 210 (S.D.N.Y. 2000); see also S.E.C. v. Tome, 833 F.2d 1086, 1096 n. 7 (2d Cir. 1987).
As the trier of fact and law in this case, the Court must determine whether Plaintiff has met its burden by a preponderance of evidence. See Savin Corp. v. Savin Group, 391 F.3d 439, 449 (2d Cir. 2004). Under this standard, the party whose evidence is more convincing than the evidence in opposition to it, i.e. the party who proffers evidence which as a whole shows that the fact sought to be proved is more probable than not, prevails.
The sole issue upon retrial pertains to Plaintiff's anti-dilution claim pursuant to New York General Business Law § 360-l (formerly § 368-d). Section 360-l states:
Likelihood 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 services.
This section applies "with equal force to the protection of trade dress." Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 73 (2d Cir. 1994).
To prevail on this claim, Plaintiff must prove, first, that its trade dress is of truly distinctive quality or has acquired secondary meaning, and, second, that there is "likelihood of dilution." Id. (citing Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625 (2d Cir. 1983)). The likelihood of ...