The opinion of the court was delivered by: John Gleeson, United States District Judge
FOR ONLINE PUBLICATION ONLY
Shevy Custom Wigs, Inc. ("Shevy") brings this trademark and unfair competition action against Aggie Wigs and Aggie Grossman (collectively "Aggie"), pursuant to, inter alia, the Trademark Act of 1946 (the Lanham Act), 15 U.S.C. § 1051 et seq., and the common law and various statutes of the State of New York. Before me is a motion to dismiss Shevy's amended complaint under Fed. R. Civ. P. 12(b)(6) for failure to state a claim upon which relief may be granted. For the reasons discussed below, the motion is granted in part and denied in part.
Shevy alleges the following relevant facts, which I accept as true for the purposes of this motion.
Shevy is a successful business that designs and sells wigs and falls made out of human hair. (A "fall" supplements a head of hair, rather than replacing it.) Shevy owns a registered trademark -- SHEVY -- to identify its product. It claims the mark has acquired recognition by wholesale and retail consumers. In addition, Shevy's wigs and falls are alleged to have "certain distinctive features" of design, which "include, but are not limited to": the specific lace band at the hairline of the wig or fall; the particular multi-directional part, including the specific size and shape of the multi-directional part; the wefted stretch net; the layered style; the distribution of the hair and the weight of the piece; and the size and shape of the net. Am. Compl. ¶ 19. Shevy claims that consumers and trade-members "have come to associate such distinctive features of Plaintiff's products with Plaintiff." Id. ¶ 20.
Defendant Aggie Grossman, who once worked for Shevy, now has a competing business (defendant Aggie Wigs) selling wigs and falls in the same market. Shevy alleges that the competing wigs and falls sell for lower prices and are of lower quality.
The gravamen of Shevy's complaint is that the "[d]efendants made a decision to produce and sell identical copies of Plaintiff's wigs and falls." Id. ¶ 29. Shevy found that out when Federal Express (not a party to this action) mistakenly delivered to Shevy a package that Aggie's overseas supplier*fn1 had addressed to Aggie. Id. ¶¶ 30-31. A Shevy employee opened the package and found it to contain "SHEVY wigs and SHEVY falls."*fn2 Id. ¶ 32.
In addition to being "identical in appearance" to Shevy's design, the offending falls had labels attached that "bore the Plaintiff's identical SHEVY trademark." Id. ¶ 33. Shevy includes one such label in an exhibit. It contains two lines for specification of "Color No." and "Style No.," and typed in black capital letters on the "Style No." line are the words: "SHEVY FALL (16")." Id. Ex. B. At first, Shevy refused to turn the "knock-off products" over to Aggie, claiming that "Defendants would place them into interstate commerce, namely [sic] the marketplace, and customers who receive them are likely to mistakenly assume that Defendants [sic] inferior wigs and falls originated from, were sponsored by or otherwise approved by [sic] Plaintiff when they were not." Id. ¶ 43. The falls were eventually turned over on consent of the parties, however, with Aggie's counsel maintaining possession of some of the allegedly infringing products pending the resolution of this litigation.
As mentioned above, for the purposes of Aggie's motion to dismiss I assume the truth of the material factual allegations in Shevy's amended complaint. See Jackson v. Birmingham Bd. of Educ., 544 U.S. 167, 171 (2005). Moreover, the complaint is entitled to all reasonable inferences in its favor and shall not be dismissed for want of additional facts supporting an alleged fact, however unlikely it may appear that the alleged fact will be proved. Phelps v. Kapnolas, 308 F.3d 180, 186-87 (2d Cir. 2002) (per curiam). The complaint will be dismissed only if "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46 (1957).
B. The Trademark Infringement Claim
Shevy's amended complaint seeks relief under § 32 of the Lanham Act, 15 U.S.C. § 1114, for Aggie's alleged infringement of the SHEVY mark.*fn3 To prevail on a trademark infringement claim, a plaintiff must prove (1) a valid mark entitled to Lanham Act protection and (2) the likelihood that the defendant's "use" of the mark will cause confusion. See Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 477 (2d Cir. 1996). There is no dispute about the validity of ...