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Go Smile, Inc. v. Levine

March 7, 2011

GO SMILE, INC., A DELAWARE CORPORATION, PLAINTIFF,
v.
DR. JONATHAN LEVINE, D.M.D.P.C., A NEW YORK CORPORATION, AND DR. JONATHAN B. LEVINE, AN INDIVIDUAL, DEFENDANTS.



The opinion of the court was delivered by: P. Kevin Castel, District Judge

MEMORANDUM AND ORDER

Plaintiff Go SMiLE, Inc. ("Go SMiLE") markets and sells tooth-whitening products. Dr. Jonathan B. Levine co-founded Go SMiLE in 2002, and, after he sold a majority interest to investors, remained affiliated with the company as an officer, director and spokesperson. His relationship with Go SMiLE ended in April 2008, after which he began to develop a new tooth-whitening product line that is being marketed under the mark "Glo." Go SMiLE alleges that Levine's "Glo" product line violates Go SMiLE's trademarks under the Lanham Act, 15 U.S.C. §§ 1114 and 1125(a), and New York state law.

Go SMiLE has filed a motion for a preliminary injunction, seeking to enjoin Levine personally and his dental practice, defendant Dr. Jonathan Levine, D.M.D.P.C. (the "Practice") from violating Go SMiLE's statutory and common law trademarks. (Docket # 28.) On January 20, February 16 and 17, 2011, the Court presided over an evidentiary hearing on the motion. For the reasons explained below, I find that Go SMiLE has failed to establish a likelihood of success in proving that a consumer would confuse the marks of Go SMiLE with those used by the defendants, and the motion for a preliminary injunction is denied.

BACKGROUND

Plaintiff Go SMiLE develops and markets teeth-whitening and oral-care products that are used in the home, and sells them directly to consumers via "high-end retail stores," "high-end hotels," a cable shopping channel, and other retailers. (Faust Dec. ¶ 2.) Defendant Jonathan Levine is a dentist who co-founded Go SMiLE in 2002. (Levine Dec. ¶ 3; Stip. ¶ 2.) In 2003, Levine sold his majority interest in Go SMiLE, but remained involved in its management and product development, and acted as its primary marketing spokesman. (Faust Dec. Ex. ¶ 3 & Ex. 1; Levine Dec. ¶¶ 4-5.) Levine's promotional work for Go SMiLE included personal appearances in print and on television, and for a time, his name and likeness appeared on Go SMiLE's product packaging. (Jan. 20 Tr. at 18.) His employment with Go SMiLE was terminated in July 2007, and he resigned from its board of directors in April 2008. (Stip. ¶ 3.) The Practice is a professional corporation with a place of business in New York, and is Levine's dental practice. (Compl. ¶ 8.)

The parties agree that Go SMiLE has registered numerous marks with the United States Patent and Trademark Office ("USPTO"), some of which have been abandoned. *fn1 (Stip. ¶¶ 7-8.) Go SMiLE's registered trademarks include "Go Smile," to be used for a tooth whitening system involving peroxide gels; a "Go Smile" dental floss; a "GO SMiLE" mark for breath fresheners, lip balms, mouthwash, teeth whitener and toothpastes; separate trademarks for the phrases "Go Within," "GOHEALTHY," "Go Travel," "GOSMILE," "GOSMILE AM," "GOSMILE AM/PM," "GOSMILE PM," "TOOTH WHITENING ON THE GO," "SMILECEUTICALS," "SMILE ON THE GO," "ON THE GO," "GOMAINTAIN," "GOPROTECT," "GO DISCOVER," "GO ALL OUT," "GO ON ... SMILE!" and "GO DAILY" as applied to certain oral products; and a mark that consists of the word "GO" in a smiley face logo. (Sloane Dec. Ex. 3.) In certain whitening kits, Go SMiLE employs a logo reading "GOSMiLE SMILE WHITENING SYSTEM," with the "GO" depicted in letters comprised of white, tile-like squares. (See, e.g., Sloane Dec. Ex. 4.) The word "GO" is similarly depicted using white, tile-like squares on other packaging. (Sloane Dec. Exs. 5, 6.) Certain of these marks were filed with the USPTO during Levine's affiliation with Go SMiLE. (Stip. ¶ 8.)

In 2010, the Practice registered the word "Glo" with the USPTO. (Stip. ¶ 10.) Its USPTO applications are pending for other marks, including G.L.O., GUIDED LIGHT OPTICS, G-VIAL, GLO SCIENCE and SMILE REVOLUTION. (Stip. ¶¶ 10.) Levine states that he founded GLO Science, LLC in 2009 "to develop and eventually sell teeth whitening products." (Levine Dec. ¶ 10.) He states that he chose the name GLO science "because 'GLO' is an acronym for 'Guided Light Optics,'" which he describes as "the teeth whitening technology I developed for use in GLO Science's products." (Levine Dec. ¶ 11.) Levine's product employs a mouthpiece to guide light to the teeth, and he states that "GLO" further evokes the word "glow" and a concept of "a glowing smile." (Levine Dec. ¶ 11.) He testified that a user applies a peroxide gel to his or her teeth, which then interacts with the light device to produce a whitening effect. (Feb. 17 Tr. at 211, 217.) At the hearing, Levine testified that he came upon the name "Glo" during a conversation "about how a great smile makes you glow on the inside," and about how his product "was all about reflecting light back into the mouth because nobody has ever built light and heat into a mouth piece that closes the system." (Feb. 16 Tr. at 65.) He also testified that "[w]e liked the acronym of Guided Light Optics and GLO, and when you put the mouth piece in your mouth, it glows . . . ." (Feb. 16 Tr. at 65.)

Levine's departure from Go SMiLE triggered a series of litigations with Go SMiLE and its parent entities. GoSMILE Inc. v. Levine, 09 Civ. 840 (LAK) (S.D.N.Y.); GoSMILE, Inc. v. Levine, 915 N.Y.S.2d 521 (N.Y. Sup. Ct. N.Y. Cty.).

On November 16, 2010, Go SMiLE commenced the present action by filing a complaint alleging that the defendants' use of a mark containing the word Glo was confusingly similar to Go SMiLE's trademarks. (Docket # 1.) At a pretrial conference of December 16, 2010, the Court set a discovery schedule in contemplation of the plaintiff's anticipated motion for a preliminary injunction, which was thereafter filed on December 21. (Docket # 27.)

On December 21, 2010, the plaintiff filed its motion for a preliminary injunction, seeking to enjoin the defendants "from marketing or distributing any oral hygiene or teeth whitening products that infringe upon Go SMiLE's statutory or common law trademarks . . . ." (Docket # 28.) A hearing on the plaintiff's motion took place on January 20, February 16 and 17, 2011. *fn2 The Court heard testimony from Leslie Faust, who is Go SMiLE's CEO and president; Levine; Hal Poret, an expert witness who testified on behalf of defendants as to a consumer survey testing for confusion; and Angela Brass, who identified herself as "the lead sales executive" for Go SMiLE for southern California and Hawaii. *fn3 The parties declined to consolidate the preliminary injunction hearing with a trial on the merits. (Feb. 16 Tr. at 108-09.)

While the motion was pending, and after the Court denied an application for a Temporary Restraining Order (the "TRO") (Docket # 61), the defendants launched their Glo product line on the Home Shopping Network. In denying the TRO application, the Court noted that the preliminary injunction hearing was "in its early stage" and that the plaintiff had "not yet shown a likelihood of success on the merits . . . ." (Docket # 61.) The Court also noted its authority to craft a remedy directed toward the defendants' sales in the event that the plaintiff ultimately succeeded in its motion for a preliminary injunction. (Docket # 61.)

PRELIMINARY INJUNCTION STANDARD

A court may issue a preliminary injunction only if the movant has demonstrated "'either (a) a likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the [plaintiff]'s favor.'" Salinger v. Colting, 607 F.3d 68, 79 (2d Cir. 2010) (alteration in original; quoting NXIVM Corp. v. Ross Inst., 364 F.3d 471, 476 (2d Cir. 2004)). The plaintiff also must establish irreparable injury in the absence of an injunction. Id. at 79-80.

DISCUSSION

I. THE PLAINTIFF HAS FAILED TO ESTABLISH A LIKELIHOOD OF SUCCESS ON THE MERITS.

To prevail on a trademark infringement and unfair competition claim, a plaintiff must establish that its mark is protected, and also "must prove that the defendant's use of the allegedly infringing mark would likely cause confusion as to the origin or sponsorship of the defendant's goods with plaintiff's goods." Starbucks Corp. v Wolfe's Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009). There is no dispute that the various Go SMiLE marks are registered with the USPTO and are therefore protected. (Stip. ¶¶ 7-8.)

"'The crucial issue in an action for trademark infringement'" is whether there is a "'likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled'" or "'confused'" as to a product source. Starbucks Corp., 588 F.3d at 114 (quoting Savin Corp. v. Savin Group, 391 F.3d 439, 456 (2d Cir. 2004)). "'The public's belief that the mark's owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.'" Id. (quoting Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 384 (2d Cir. 2005)). In Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), Judge Friendly, writing for the panel, set forth eight factors to be considered in determining the likelihood of confusion. They are: (1) the strength of the mark; (2) the similarity of the parties' marks; (3) the proximity of the parties' products in the marketplace; (4) the likelihood that the plaintiff will "bridge the gap" between the products; (5) evidence of actual consumer confusion; (6) whether the defendant acted with bad faith in adopting the mark; (7) the defendant's product quality; and (8) consumer sophistication. A court is not "limited to consideration of only these factors." Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 118 (2d Cir. 2006). No one Polaroid factor is dispositive. Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000).

I now turn to the Polaroid factors as they apply to this case.

1. GO SMiLE's Suggestive Marks are of Limited Strength.

In determining the strength of the mark, courts look to the mark's "tendency to uniquely identify the source of the product." Star Indus., 412 F.3d at 384. "Ultimately, the strength of the mark turns on its origin-indicating quality, in the eyes of the purchasing public, so that in a given case whether the mark has acquired secondary meaning is a matter which may be relevant and probative and hence useful in determining the likelihood of confusion." Lang v. Retirement Living Pub. Co., 949 F.2d 576, 581 (2d Cir. 1991) (quotation marks omitted). A mark's strength derives from an "inherent distinctiveness that would entitle it to protection in the absence of secondary meaning." Star Indus., 412 F.3d at 385. In an ascending order of strength, a mark's distinctiveness is classified as generic, descriptive, suggestive, or arbitrary and/or fanciful. Id. at 384-85.

The parties agree that the plaintiff's "Go" marks are suggestive. Suggestive marks "are not directly descriptive, but do suggest a quality or qualities of the product through the use of imagination, thought and perception." Id. (internal citation and quotation marks omitted); see also Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 744 (2d Cir. 1998) (to find a mark suggestive means that "the term 'suggested' the features of the product and required the purchaser to use his or her imagination to figure out the nature of the product."). A suggestive mark is entitled to less protection than an arbitrary or fanciful mark, and the strength of a suggestive mark varies based on surrounding factual context. "In the absence of any showing of secondary meaning, suggestive marks are at best moderately strong." Star Indus., 412 F.3d at 385; see also Lang, 949 F.2d at 581 ("suggestiveness is not necessarily dispositive of the issue of the strength of the mark," and the absence of secondary meaning may be relevant and probative).

In considering whether a suggestive mark has acquired secondary meaning, a court may consider third-party uses of relevant terms, the mark's layout and design, product sales and unpaid publicity surrounding the mark. Id.; accord Medici Classics Prods, LLC v. Medici Group, LLC, 683 F. Supp. 2d 304, 310 (S.D.N.Y. 2010) ("In evaluating secondary meaning, courts typically examine six factors: (1) the senior user's advertising and promotional expenses; (2) consumer studies linking the name to the source; (3) the senior user's sales success; (4) third-party uses and attempts to plagiarize the mark; (5) length and exclusivity of the mark's use; and (6) unsolicited media coverage of the products at issue.") (citing Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985)). In Lang, the Second Circuit concluded that common third-party use of the words "Choice" and "Choices," the "ordinary layout" of the words, total sales of $85,000 and limited marketing and publicity rendered as weak the suggestive mark "New Choices Press." Id.; see also Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481, 488-90 (S.D.N.Y. 2004) (plaintiff failed to submit probative evidence supporting a secondary meaning of its suggestive mark)

Go SMiLE has submitted some probative evidence going toward a secondary meaning to its suggestive mark. Faust testified that in 2008, Go SMiLE had an advertising budget of approximately $500,000, and that in 2010, its advertising budget was approximately $1 million. (Feb. 17 Tr. at 251-52.) In 2010, Go SMiLE had gross sales of approximately $13 million. (Feb. 17 Tr. at 252.) Go SMiLE retains a public relations firm that sends monthly reports as to Go SMiLE's advertising and marketing presence in print media, on television and online. (P1. Ex. 167 & 167A.) According to Faust, Go SMiLE's advertising and marketing placements have resulted in consumers being exposed to Go SMiLE hundreds of millions of times, including 150 million exposures to the product in 2010. *fn4 (Feb. 17 Tr. at 253-54; see also Pl. Ex. 167 & 167A.) Moreover, the company was founded in 2002, and, generously assuming that it has sold and marketed its products since formation, the Go SMiLE mark has been in use for approximately nine years. (Pl. Mem. at 17.) In addition, Go SMiLE has submitted evidence indicating that it has actively policed its mark. (Stip. ¶¶ 14-40.) Go SMiLE has disputed, opposed and/or reached settlements with entities attempting to use marks such as "Go White," "On the Go Essentials," "Glosmiles," "GloWhiteSmiles," "Smiles-2-Go," "ToGoSmile," "Go Touch," "Touch Up & Go," "Glo Whitening," "Go Relaxed" and "Go for Glow." (Stip. ¶¶ 14-40.) Go SMiLE also asserts that while Levine was affiliated with the company, he authorized Go SMiLE's legal counsel to oppose third-party uses of various go-themed marks, and that this is relevant to weighing the mark's strength. (Feb. 16 Tr. at 4-5, 22-23.)

Go SMiLE's most relevant evidence to the suggestive mark's secondary meaning is the length of time on the market, annual advertising budget and annual sales. See Lang, 949 F.2d at 581; Medici, 683 F. Supp. 2d at 310. Go SMiLE has provided the Court with no guidance as to the overall significance of these sums in relation to an oral care product line — and teeth whitener specifically — that is sold and marketed nationwide. It is unclear from the record whether, relative to the size of the overall market, its advertising budget and overall sales represent a significant, moderate or minimal figure. Nevertheless, Go SMiLE has demonstrated that it has expended a not-insubstantial sum of money in developing awareness among the consuming public. It supports the conclusion that the Go SMiLE brand could be linked to an origin-indicating quality in the minds of consumers. Go SMiLE's evidence concerning the policing of its mark has some probative value, to the extent that it reflects that some third parties have attempted to utilize various combinations of the words "go" and "smile" in reference to oral care products. *fn5

I find that Go SMiLE's advertising and promotional expenses of approximately $1 million per year, its $13 million in annual sales, its nine years on the market and its policing of marks using the words "go" and "smile" together entitle Go SMiLE's suggestive mark to moderate strength.

2. The Similarities of the Parties' Marks.

"In assessing similarity, courts look to the overall impression created by the logos and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers." Star Indus., 412 F.3d at 386 (quotation marks omitted). Marks are to be compared to one another as a whole, and not in fragments. Brennan's, Inc. v. Brennan's Restaurant, LLC, 360 F.3d 125, 133 (2d Cir. 2004). Although "a side-by-side comparison can be a useful" means of investigating marks' similarities and differences, "[c]ourts should keep in mind that in this context the law requires only confusing similarity, not identity," and that consumer confusion is the ultimate issue in weighing the marks' similarities. Louis Vuitton, 454 F.3d at 117; accord Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 539 (2d Cir. 2005) ("[C]ourts must evaluate the likely effect on consumers of the marks' similar and dissimilar features with a focus on market conditions, even if the products appear to be adequately different in a non-marketplace setting.") (emphasis in original).

I begin by reviewing the side-by-side similarities and differences between the Go SMiLE and Glo marks. I do so in part because this is a useful descriptive exercise, but I am also mindful that in most cases, there would be limited utility to such a comparison. See Louis Vuitton, 454 F.3d at 117. In this case, unlike Louis Vuitton, the plaintiff has contended that the Go SMiLE and Glo products will often be sold side by side. (Jan 20 Tr. at 5.) Thus, a side-by-side comparison also has relevance to the "market conditions" in which Go SMiLE and Glo are ...


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