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Peter Birmingham; and Birmingham Softhands Infield Trainer Co., Inc v. Mizuno Usa

March 31, 2011

PETER BIRMINGHAM; AND BIRMINGHAM SOFTHANDS INFIELD TRAINER CO., INC., PLAINTIFFS,
v.
MIZUNO USA, INC., DEFENDANT.



The opinion of the court was delivered by: Hon. Glenn T. Suddaby, United States District Judge

566

MEMORANDUM-DECISION and ORDER

Currently before the Court, in this trademark infringement action filed by Peter Birmingham and Birmingham Softhands Infield Trainer Co. ("Plaintiffs") against Mizuno USA, Inc. ("Defendant"), are Plaintiffs' motion for partial summary judgment (Dkt. No. 22), and Defendant's motion for summary judgment (Dkt. No. 23). For the reasons set forth below, both motions are granted in part and denied in part.

TABLE OF CONTENTS

I. RELEVANT BACKGROUND...............................................................................................3

A. Plaintiffs' Claims.........................................................................................................3

B. Plaintiffs' Motion...................................................................................................4

C. Defendant's Motion.....................................................................................................5

D. Undisputed Material Facts.........................................................................................6

II. RELEVANT LEGAL STANDARDS .................................................................................10

III. ANALYSIS.............................................................................................................................10

A. Plaintiffs' Claims Under the Lanham Act..............................................................10

1. The Mark's Validity and Entitlement to Protection.................................11

2. Likelihood of Confusion...............................................................................16

a. Whether Defendant's Use of the Mark Was Counterfeit Use........16

b. Polaroid Analysis..............................................................................18

i. Strength of Plaintiffs' Mark...............................................19

ii. Similarity of the Marks.......................................................22

iii. Proximity of Parties' Products in Marketplace................23

iv. Likelihood that Plaintiffs Will "Bridge the Gap" Between the Products..........................................................25

v. Actual Consumer Confusion Between the Two Marks....26

vi. Defendant's Intent in Adopting the Mark.........................27

vii. Quality of Defendant's Product..........................................31

viii. Sophistication of Relevant Consumer Group...................31

3. Balance of Equities.......................................................................................33

B. Plaintiffs' Claim Under Federal Trademark Counterfeiting Act........................34

C. Plaintiffs' Claim Under New York Trademark Dilution Law..............................35

D. Plaintiffs' Claim Under New York Deceptive Trade Practices Act.....................37

E. Plaintiffs' New York Common Law Claims of Unfair Competition and Trademark Infringement..................................................................................38

IV. PLAINTIFFS' REQUEST FOR EQUITABLE RELIEF..................................................39

V. PLAINTIFFS' REQUEST FOR MONETARY RELIEF AND FEES.............................40

I. RELEVANT BACKGROUND

A. Plaintiffs' Claims

On May 13, 2009, Plaintiffs filed this trademark infringement action pursuant to 15 U.S.C. § 1051, et seq. (hereinafter "Lanham Act") and related New York State laws. Generally, Plaintiffs' Complaint alleges that Defendant's adoption and use of the phrase "Softhands" infringes on Plaintiffs' rights as registrants of that mark because (1) it has caused, and is likely to continue to cause, confusion in the marketplace, and (2) it has caused, and will continue to cause, substantial injury and financial loss to Plaintiffs. (Dkt. No. 1.) Based on these factual allegations, Plaintiffs assert the following seven counts against Defendant: (1) trademark infringement under the Lanham Act, 15 U.S.C. § 1114 ("Count One"); (2) false designation of origin under the Lanham Act, 15 U.S.C. § 1125 ("Count Two"); (3) manufacture, distribution and sale of counterfeit goods under the Lanham Act, 15 U.S.C. §§ 1114 and 1116 ("Count Three"); (4) violation of 18 U.S.C. § 2320, the federal Trademark Counterfeiting Act of 1984 ("Count Four"); (5) trademark dilution under N.Y. Gen. Bus. Law § 360, et seq. ("Count Five"); (6) violation of N.Y. Gen. Bus. Law § 133, the New York Deceptive Trade Practices Act ("Count Six"); and (7) unfair competition and trademark infringement under New York common law ("Count Seven"). (Id.)

As relief for their injuries, Plaintiffs request the following: (1) a preliminary and permanent injunction; (2) a recall, seizure and destruction of all goods manufactured, distributed, offered for sale and sold by Defendant using the "Softhands" mark; (3) an accounting of the profits and actual damages suffered by Plaintiffs as a result of Defendant's actions of infringement, false designation of origin, unfair competition, and unfair and deceptive trade practices, as well as treble damages and interest; (4) the surrender for destruction of all materials incorporating or reproducing the "Softhands" mark; (5) attorney's fees; (6) a one-million-dollar fine levied against Defendant for violations of the Federal Trademark Counterfeiting Act of 1984; (7) punitive damages pursuant to the common law causes of action in the amount of ten million dollars; and (8) any other relief deemed just and equitable by this Court. (Id.)

B. Plaintiffs' Motion

On May 4, 2010, Plaintiffs filed a motion for partial summary judgment. (Dkt. No. 22.) In their motion, Plaintiffs request summary judgment on Counts One, Two and Three of their Complaint. (Id.) Generally, in support of their motion, Plaintiffs argue as follows: (1) the registered mark "Softhands" is not "generic"; (2) as the owners of a valid mark, they are entitled to protection; (3) the Polaroid balancing test demonstrates a likelihood of confusion; and (4) Defendant's actions constitute trademark infringement. (See generally Dkt. No. 22, Attach. 10 [Plfs.' Memo. of Law].) Plaintiffs further argue that, upon granting summary judgment, the Court should do the following: (1) permanently enjoin Defendant from further unauthorized use of Plaintiffs' Registered Mark; (2) recall and destroy all products of Defendant bearing Plaintiffs' registered mark (i.e., "Softhands"); (3) ban all further imports of such products; (4) order an accounting of Defendant's sales of infringing goods; (5) award Plaintiffs treble the amount of Defendant's profits resulting from their use of Plaintiffs' registered mark; and (6) compel Defendant to pay Plaintiffs' attorney fees together with the costs of this action, and any other relief the Court deems just and equitable. (Id.)

C. Defendant's Motion

Later on May 4, 2010, Defendant filed a motion for summary judgment on all of Plaintiffs' claims. (Dkt. No. 23.) Generally, in support of its motion, Defendant argues as follows: (1) Plaintiffs' Lanham Act claims should be dismissed because Plaintiffs have failed to adduce admissible record evidence from which a rational factfinder could conclude that Defendant's use of the words "Softhands Construction" creates a likelihood of confusion; (2) Plaintiffs' counterfeiting claims should be dismissed because Plaintiffs have failed to adduce admissible record evidence from which a rational factfinder could conclude that Defendant's use of the words "Softhands Construction" resulted in the counterfeit use of Plaintiffs' mark; (3) Plaintiffs' New York dilution claim should be dismissed because Plaintiffs have failed to adduce admissible record evidence from which a rational factfinder could conclude that (a) Plaintiffs' mark is truly distinctive or well-known, (b) Defendant's use of the words "Softhands Construction" creates a likelihood of dilution by blurring or consumer tarnishing, or (c) Defendant had the requisite predatory intent in adopting the mark; (4) Plaintiffs' deceptive trade practices claim should be dismissed because Plaintiffs have failed to adduce admissible record evidence from which a rational factfinder could conclude that Defendant's use of the words "Softhands Construction" was intended to deceive or mislead the public; (5) Plaintiffs' state common law claims for trademark infringement and unfair competition should be dismissed because Plaintiffs have failed to adduce admissible record evidence from which a rational factfinder could conclude that (a) Defendant's use of the words "Softhands Construction" creates a likelihood of confusion, or (b) Defendant used the words "Softhands Construction" in bad faith; and (6) Plaintiffs' requests for other relief should be denied because Plaintiffs have failed to adduce admissible record evidence that there is any threat of repetition or plan to reuse the mark to describe any of Defendant's products. (Dkt. No. 25 [Def.'s Memo. of Law].)*fn1

D. Undisputed Material Facts

In 1988, Peter Birmingham (hereafter "Mr. Birmingham") founded Birmingham Softhands Infield Trainer Co., Inc. (hereafter "Birmingham Softhands") in New York. (Compare Dkt. No. 24, at ¶ 1 [Def.'s Rule 7.1 Stmt.] with Dkt. No. 52, Attach. 1, at ¶ 1 [Plfs.' Rule 7.1 Response].) Birmingham Softhands is a company wholly owned by Mr. Birmingham and his wife. (Compare Dkt. No. 22, Attach. 1, at ¶ 9 [Plfs.' Rule 7.1 Stmt.] with Dkt. No. 49, at ¶ 9 [Def.'s Rule 7.1 Response].)

On December 19, 1995, Mr. Birmingham became the owner of the trademark "Softhands" (United States Trademark Registration No. 1942544, registered December 19, 1995), which described "a hand-held catching device used for improving baseball skills and for playing baseball related games." (Compare Dkt. No. 22, Attach. 1, at ¶ 7 [Plfs.' Rule 7.1 Stmt.] with Dkt. No. 49, at ¶ 7 [Def.'s Rule 7.1 Response].) After registration of the mark and five consecutive years of continuous use of the mark, Mr. Birmingham's rights in the Softhands trademark became incontestable, pursuant to the provisions of Section 15 of the Lanham Act (15 U.S.C. § 1065). (Compare Dkt. No. 22, Attach. 1, at ¶ 8 [Plfs.' Rule 7.1 Stmt.] with Dkt. No. 49, at ¶ 8 [Def.'s Rule 7.1 Response].)

Defendant is a sporting goods manufacturer whose products and apparel are used byprofessional and amateur sports teams and athletes. (Compare Dkt. No. 24, at ¶ 39 [Def.'s Rule 7.1 Stmt.] with Dkt. No. 52, Attach. 1 [Plfs.' Rule 7.1 Response].) In 2002, Defendant chose the term "Softhands Construction" to describe a new technology used in leather playing baseball gloves that featured a softer, thinner steer hide and "reverse welting" (i.e., welting in which the "stitching" has been moved from the interior to the exterior of the finger stalls) in order to stabilize the fingers and remove excess material from the finger stalls, and provide superior comfort, fit and performance. (Compare Dkt. No. 24, at ¶ 42 [Def.'s Rule 7.1 Stmt.] with Dkt. No. 52, Attach. 1, at ¶ 42 [Plfs.' Rule 7.1 Response].) Defendant thought that the term "Softhands Construction" was appropriate for its new technology because good baseball fielders are commonly referred to as having "soft hands." (Compare Dkt. No. 24, at ¶ 46 [Def.'s Rule 7.1 Stmt.] with Dkt. No. 52, Attach. 1, at ¶ 46 [Plfs.' Rule 7.1 Response].) Prior to use, Defendant did not consult an attorney, conduct a trademark search of the name "Softhands Construction," or apply for a trademark registration. (Compare Dkt. No. 24, at ¶¶ 47-49 [Def.'s Rule 7.1 Stmt.] with Dkt. No. 52, Attach. 1, at ¶¶ 47-49 [Plfs.' Rule 7.1 Response].) Nonetheless, Defendant used the common law "TM" symbol in the design and descriptive text as "SofthandsTM Construction," "SofthandsTM construction," and "SofthandsTM Technology." (Compare Dkt. No. 24, at ¶ 69 [Def.'s Rule 7.1 Stmt.] with Dkt. No. 52, Attach. 1, at ¶ 69 [Plfs.' Rule 7.1 Response].)

From 2003 to 2006, Defendant sold baseball gloves featuring "Softhands Construction" to indicate a feature in its Legacy series, Classic series and Mizuno Pro series gloves. (Compare Dkt. No. 22, Attach. 1, at ¶¶ 12-13 [Plfs.' Rule 7.1 Stmt.] with Dkt. No. 49, at ¶¶ 12-13 [Def.'s Rule 7.1 Response].) By July of 2006, Defendant stopped selling, and temporarily stopped distributing, gloves that physically contained the "Softhands Construction" technology because, among other things, the gloves were not selling well. (Compare Dkt. No. 24, at ¶¶ 71-72 [Def.'s Rule 7.1 Stmt.] with Dkt. No. 52, Attach. 1, at ¶¶ 71-72 [Plfs.' Rule 7.1 Response].)

In December of 2006, Mr. Birmingham wrote a letter to Defendant demanding that it cease and desist its use of the word "Softhands" on all sporting goods. (Compare Dkt. No. 22, Attach. 1, at ¶ 18 [Plfs.' Rule 7.1 Stmt.] and Dkt. No. 1, Ex. D [Plfs.' Compl.] with Dkt. No. 49, at ¶ 18 [Def.'s Rule 7.1 Response].) In a response letter dated January 18, 2007, Defendant acknowledged receipt of Mr. Birmingham's letter and stated, in part, "Without waiver of any rights, remedies or defenses, which are expressly reserved, and without addressing substantively the claims set forth in your letter, for business reasons Defendant had already ceased use of the term 'soft hands construction' and does not have plans for use of the term in the future." (Compare Dkt. No. 22, Attach. 1, at ¶ 19 [Plfs.' Rule 7.1 Stmt.] and Dkt. No. 1, Ex. E [Plfs.' Compl.] with Dkt. No. 49, at ¶ 19 [Def.'s Rule 7.1 Response].) Relying on this representation, Plaintiffs did not bring a legal action against Defendant in 2007. (Compare Dkt. No. 22, Attach. 1, at ¶ 20 [Plfs.' Rule 7.1 Stmt.] with Dkt. No. 49, at ¶ 20 [Def.'s Rule 7.1 Response].)

Nonetheless, in January of 2008, Defendant filled an "internal (non-revenue) order"*fn2 of six remaining gloves bearing the "Softhands Construction" technology feature to "clear up inventory." (Compare Dkt. No. 24, at ¶ 76 [Def.'s Rule 7.1 Stmt.] with Dkt. No. 52, Attach. 1, at ¶ 76 [Plfs.' Rule 7.1 Response].) Later, in August of 2008, Defendant received a "special make up" order placed by one of its retail customers, Sports Diamond, for twelve lime green baseball gloves, identified as model GCS 1150D. (Compare Dkt. No. 22, Attach. 1, at ¶ 21 [Plfs.' Rule 7.1 Stmt.] with Dkt. No. 49, at ¶ 21 [Def.'s Rule 7.1 Response].)*fn3 Some of Defendant's employees approved and filled the order. (Compare Dkt. No. 22, at ¶ 22 [Plfs.' Rule 7.1 Stmt.] with Dkt. No. 49, at ¶ 22 [Def.'s Rule 7.1 Response].) Although the gloves did not physically contain the "Softhands Construction" technology, or bear the "Softhands Construction" design on the glove's finger stall, a hang tag was attached to each glove ...


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