United States District Court, S.D. New York
For Plaintiff: David H. Bernstein, Esq., Megan K. Bannigan, Esq., Rayna S. Feldman, Esq., DEBEVOISE & PLIMPTON LLP, New York, New York.
For Defendant: Robert S. Weisbein, Esq., Andrew Baum, Esq., Adam G. Pence, Esq., Rachel Kramer, Esq., Casey Pearlman, Esq., FOLEY & LARDNER LLP, New York, New York.
MIRIAM GOLDMAN CEDARBAUM, United States District Judge.
This action is a trademark dispute between Kate Spade LLC and Saturdays Surf LLC. Kate Spade sues Saturdays Surf for a declaratory judgment that the name of Kate Spade's new brand, " Kate Spade Saturday," does not infringe Saturdays Surf's mark, " Saturdays Surf NYC," or any other " Saturday" -related mark claimed by Saturdays Surf. Saturdays Surf counterclaims for trademark infringement.
First, Saturdays Surf claims violation of the Lanham Act, 15 U.S.C. § 1114(1)(a), for infringement of its federally registered trademark " Saturdays Surf NYC." Second, Saturdays Surf claims violation of the Lanham Act, 15 U.S.C. § 1125(a), for trademark infringement, false designation of origin, and unfair competition related to its marks, including the unregistered marks " Saturdays Surf" and " Saturdays." In counts three and four, Saturdays Surf asserts claims under New York State law for unfair competition and misappropriation of intellectual property rights, and for common law trademark infringement.
With the consent of the parties, I held a five-day bench trial that consolidated a hearing on defendant's application for a preliminary injunction with a trial on the merits, pursuant to Fed.R.Civ.P. 65(a)(2). Seven witnesses testified at trial: Morgan Collett, Kyle Andrew, Kevin Parks, Theresa Canning Zast, Robert Klein, Craig
Leavitt, and Gerald Ford. The parties also designated portions of Kate Schrader's deposition. After considering all of the evidence, including the credibility of the witnesses, I make the following findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52(a).
To prevail on its federal claims, Saturdays Surf must establish (1) that its marks are entitled to protection under the Lanham Act and (2) that Kate Spade's use of " Kate Spade Saturday" is likely to cause consumer confusion.
Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003). To address the issue of consumer confusion, courts routinely consider and balance the factors discussed in
Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
Both sides agree that Saturdays Surf -- the declaratory judgment defendant and trademark infringement counterclaimant -- bears the burden of proving infringement by a preponderance of the credible evidence. See
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 120, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004).
A. PROTECTION OF THE MARKS
Saturdays Surf claims that three marks are entitled to protection. Determining whether a mark is protectable relates closely to the confusion analysis, because a trademark's distinctiveness is both the key consideration in assessing its protectability and a factor in determining the likelihood of confusion.
Playtex Prods. Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 161 (2d Cir. 2004).
1. " Saturdays Surf NYC"
There is no dispute that the mark " Saturdays Surf NYC" warrants protection. It is federally registered in both name and logo form. Saturdays Surf NYC is a suggestive mark in the context of apparel. It requires some imagination to reach a conclusion about the product. See
Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 743-44 (2d Cir. 1998). The evidence shows that it is this mark that serves as a source identifier in the marketplace, with the mark appearing on all of the company's products and its storefront signs. The scope of the mark's protection, however, will be discussed below in the context of the strength of the mark, particularly the strength of the word " Saturdays."
2. " Saturdays"
Saturdays Surf NYC also claims a common law trademark in its unregistered use of the word " Saturdays" alone.
A trademark's strength and the degree of protection to which it is entitled are measured in part by the mark's inherent distinctiveness. Id. The use of the word " Saturday" or " Saturdays," whether alone or as part of a longer trademark, is best described as suggestive. It requires imagination and perception to reach a conclusion about the nature of the product. See id. at 744. Both parties agree that their use of that word is suggestive. Testimony shows that both parties' choice of the word " Saturday" or " Saturdays" for their casualwear was intended to evoke feelings about what many consider the best day of the week.
Any common name or word can become a trademark if it is arbitrary or suggestive. That " Saturday" is a day of the week does not necessarily make it ineligible for trademark protection. However, a mark's protection and strength is also measured by what courts have called " acquired distinctiveness," meaning the recognition the mark has earned in the ...