The opinion of the court was delivered by: Gary L. Sharpe District Court Judge
MEMORANDUM-DECISION AND ORDER
Plaintiff Shear Contractors, Inc. commenced this action against defendants Shear Enterprises and Thomas Shear, alleging trademark infringement and cyberpiracy under the Lanham Act, 15 U.S.C. § 1125, and trademark infringement and unfair competition under New York State common law. (See Compl., Dkt. No. 1.) Pending are Shear Contractors' motion for a temporary restraining order, (Dkt. No. 25), and Shear Enterprises' motion for summary judgment, (Dkt. No. 29). For the reasons that follow, Shear Contractors' motion for injunctive relief is denied and Shear Enterprises' motion for summary judgment is granted.
Shear Contractors is a New York State corporation that was formed in May 1985 and is based in Schenectady, New York. (See Compl. ¶¶ 2, 21, Dkt. No. 1.) Kenneth Shear is the president of Shear Contractors. (See id. at ¶ 20.) Shear Enterprises is a "doing business as" entity that was registered in October 2006 by Thomas Shear and is based in Saratoga Springs, New York. (See Defs. SMF ¶¶ 2, 4-6, Dkt. No. 29:3.) Both Shear Contractors and Shear Enterprises provide residential and commercial roofing and other general contracting services, though the types and extent of other contracting services each entity performs is in dispute. (See id. at ¶¶ 1-2.)
On June 1, 2009, plaintiff Shear Contractors, Inc. filed suit against defendants Shear Enterprises and Thomas Shear for trademark infringement, cyberpiracy, and unfair competition. (See Compl. ¶¶ 54-106, Dkt. No. 1.) Shear Contractors alleges that the rights and interests it has in its unregistered trademark and logo have been infringed upon by Shear Enterprises. (See id. at ¶ 19.) Specifically, according to the complaint, Shear Enterprises' infringing activities include: the use of the name "Shear Enterprises" and "Shear Enterprises & General Contracting" in advertising, offering, and providing its services; the prominent manner in which the word "Shear" is displayed in its advertisements; and the use of "shearcontracting.com" as an internet domain name. (See id. at ¶¶ 31-45, 55-83, 91-94.) As a result of this alleged conduct, Shear Contractors contends that it suffered a drop in telephone calls and a consequent loss of new business, and that Shear Enterprises has caused confusion among consumers and is capitalizing on and harming Shear Contractors' goodwill and reputation. (See id. at ¶¶ 74-79, 85, 100-01; Pl. TRO Mem. of Law at 2-3, Dkt. No. 25:3*fn1 ; Pl. Resp. SMF ¶¶ 74-75, Dkt. No. 31.)
On April 8, 2010, Shear Contractors moved for a temporary restraining order, seeking to enjoin defendants from advertising under the Shear mark and logo on any internet-based mechanism; from using or advertising under the name "Shear Roofing Contractors"; and from posting to, advertising through, or utilizing "saratogaroofingcontractors.com" or any other website or domain name that might infringe on Shear Contractors' claimed trademarks. (See Pl. TRO Mot. at 4, Dkt. No. 25:1.) In addition to opposing Shear Contractors' motion for injunctive relief, (see Dkt. No. 26), Shear Enterprises thereafter moved for summary judgment on Shear Contractors' claims, (see Dkt. No. 29).
The standards for injunctive relief and summary judgment are well established and will not be repeated here. For a full discussion of the standards, the court refers the parties to its previous opinions in Phelan v. Hersh, 9:10-CV-011, 2010 WL 277064, at *5-6 (N.D.N.Y. Jan. 20, 2010) (injunctive relief), and Bain v. Town of Argyle,499 F. Supp. 2d 192, 194-95 (N.D.N.Y. 2007) (summary judgment).
A. Federal Trademark Infringement
Trademark infringement claims brought pursuant to the Lanham Act are analyzed under a two-pronged test. "The test looks first to whether the plaintiff's mark is entitled to protection, and second to whether the defendant's use of the mark is likely to cause confusion as to the origin or sponsorship of the defendant's goods." Savin Corp. v. Savin Grp., 391 F.3d 439, 456 (2d Cir. 2004) (internal quotation marks and citation omitted).
Under the first prong, where a mark is unregistered, the plaintiff must establish that its mark nonetheless qualifies for protection. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Eligibility to trademark status and the degree of protection to be accorded depends largely on the category into which a mark falls. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). These categories, from least distinctive to most, are: "(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful." Id. "[A] mark must be capable of distinguishing the [plaintiff's] goods from those of others." Two Pesos, Inc., 505 U.S. at 768 (citation omitted). Marks that are suggestive, arbitrary, or fanciful "are deemed inherently distinctive and are entitled to protection ... because their intrinsic nature serves to identify a particular source of a product." Id. In contrast, generic marks which "refer to the genus of which the particular product is a species" are not registrable. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985) (citing Abercrombie & Fitch Co., 537 F.2d at 9). Likewise, descriptive marks which are "not inherently distinctive" and "do not inherently identify a particular source" are not presumptively protected. Two Pesos, Inc., 505 U.S. at 769. But unlike generic marks, "descriptive marks may acquire the distinctiveness which will allow them to be protected." Id. To acquire sufficient distinctiveness, or "secondary meaning," a mark must "ha[ve] become distinctive of the [plaintiff's] goods in commerce." Id. (internal quotation marks and citations omitted).
To prove secondary meaning, a plaintiff must satisfy a "heavy burden" and "rigorous evidentiary requirements." 20th Century Wear, Inc. v. Sanmark-Stardust Inc., 815 F.2d 8, 10 (2d Cir. 1987) (internal quotation marks and citations omitted). The plaintiff must demonstrate consumer recognition, meaning "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." Abraham Zion Corp. v. Lebow, 761 F.2d 93, 104 (2d Cir. 1985) (citations omitted). For instance, the plaintiff may proffer evidence of advertising expenditures, successful advertising, consumer studies, sales success, unsolicited media coverage, length and exclusivity of use, or intentional copying by the defendant. See 20th Century Wear, Inc., 815 F.2d at 10; Thompson Medical Co. v. Pfizer, Inc., 753 F.2d 208, 217 (2d Cir. 1985). On the other hand, a court may consider the commonality of a name in the relevant ...