ALISON J. NATHAN, United States District Judge.
Plaintiffs Beyoncé Giselle Knowles-Carter and BGK Trademark Holdings, LLC bring this action against Feyoncé Inc., Lee Lee, and individual Defendants Andre Maurice and Leanna Lopez, alleging trademark infringement and dilution, unfair competition, and unjust enrichment associated with the sale of merchandise using the brand name "Feyoncé," which Defendants market to the engaged to be married—i.e., fiancés. Before the Court is Plaintiffs' motion for partial summary judgment and entry of a permanent injunction against Defendants Andre Maurice and Leana Lopez.
There can be no dispute that in marketing to fiancé purchasers, defendants chose the formation "FEYONCÉ" in order to capitalize off of the exceedingly famous BEYONCÉ mark. But that alone does not establish likelihood of confusion. Rather, a critical question is whether a rational consumer would mistakenly believe FEYONCÉ products are sponsored by or affiliated with BEYONCÉ products. A rational jury might or might not conclude that the pun here is sufficient to dispel any confusion among the purchasing public. Thus, there is a genuine dispute of material fact that requires denial of the motion for summary judgment.
The following facts are undisputed except where specifically noted.
Defendants Andre Maurice and Leana Lopez operate a business that sells clothing and apparel with the mark FEYONCÉ and certain phrases from Beyoncé's well known songs. Putnam Decl., Ex. 23 at 2. On November 25, 2015, Defendant Maurice applied to register the FEYONCÉ mark with the USPTO. Id., Ex. 6. On November 30, 2015, Maurice applied to register an almost identical mark without the accent over the final E (FEYONCE). Id., Ex. 7. Both applications included registration for use in clothing and apparel. Id., Ex 6, 7. Defendants began using the FEYONCÉ mark in commerce in 2016. Id., Ex 22 at 5. On March 22, 2016, the USPTO informed Defendants that it was refusing both applications for several reasons, including because it determined that the marks were confusingly similar to the registered mark BEYONCÉ. Id., Ex. 8, 9. On April 29, 2016, Defendants Maurice and Lopez incorporated their business, Feyonce Inc., and on July 13, 2016, submitted an additional trademark application, this time for the mark "Feyonce Inc." Id., Ex. 21. Defendant Maurice subsequently responded to the USPTO's refusal to register FEYONCE, arguing that the mark is not confusingly similar to BEYONCÉ. Id., Ex. 10. On October 31, 2016, the USPTO again refused to register the mark, finding Defendant Maurice's argument "unpersuasive," and suspending the application. Id., Ex. 11.
After beginning to use the mark FEYONCÉ in commerce in at least March of 2016, Defendants sold clothing items on <feyonceshop.com> until at least October 26, 2016. Id., Ex. 25. From at least January 15, 2017 through May 15, 2017, Defendants sold similar items on Etsy.com through a shop called "FeyonceShop." Id., Ex. 26. On November 17, 2017, Defendants represented to the Court that they had stopped selling FEYONCÉ products, but that they continued to own the domain name <feyonceshop.com> and the email address feyonceinc@yahoo.com. Dkt. No. 96.
On February 22, 2015, counsel for Plaintiffs' sent a cease and desist letter to Defendant Maurice demanding that Defendants stop using the FEYONCÉ mark, abandon their trademark applications, and transfer the domain name <feyonceshop.com> to Plaintiffs. Putnam Decl, Ex. 14. Not receiving a response, on April 5, 2016, Plaintiffs filed a complaint against Defendants Maurice and Lopez, in addition to Lee Lee and Feyonce, Inc., asserting causes of action for Federal Trademark Infringement, in violation of 15 U.S.C. § 1114; Federal Unfair Competition, in violation of 15 U.S.C. § 1125(a); Federal Trademark Dilution, in violation of 15 U.S.C. 1125(c); Deceptive Acts and Practices, in violation of New York General Business Law § 349; Trademark Dilution, in violation of New York General Business Law § 360-L; common law unfair competition; and unjust enrichment. Dkt. No. 1. As relief, Plaintiffs request (1) an injunction enjoining Defendants from using the FEYONCÉ mark and requiring the transfer of the domain name <feyonceshop.com> to Plaintiffs; (2) compensatory, statutory, and
On July 14, 2016, Defendants Maurice and Lopez, who are representing themselves pro se, filed an answer to the complaint. Dkt. No. 33. Corporate defendant Feyonce, Inc. failed to secure counsel, and the Clerk of the Court issued a certificate of default against the corporation for failing to appear. Dkt. No. 42. Plaintiffs thereafter moved for default judgment against Feyonce, Inc. Dkt. No. 55. The Court denied the motion without prejudice while the case against the individual defendants proceeds. Dkt. No. 84. The Court also denied Defendants' motion to dismiss for lack of venue or, alternatively, to transfer the case to the Western District of Texas. Id.
Now before the Court is Plaintiffs' motion for summary judgment on their claims for federal trademark infringement, federal and New York unfair competition, and federal and New York trademark dilution, and for the entry of a permanent injunction against individual Defendants Maurice and Lopez. Plaintiffs filed the instant motion and accompanying exhibits on November 3, 2017. Dkt. No. 87. Defendants Maurice and Lopez filed an opposition on November 17, 2017, Dkt. No. 96, and Plaintiffs filed their reply on November 27, 2017, Dkt. No. 97.
A court may not grant a motion for summary judgment unless all of the submissions taken together "show[ ] that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). A fact is "material" if it "might affect the outcome of the suit under the governing law," and is genuinely in dispute if "the evidence is such that a reasonable jury could return a verdict for the non-moving party." Roe v. City of Waterbury, 542 F.3d 31, 35 (2d Cir. 2008) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). "Summary judgment is appropriate when `the record taken as a whole could not lead a rational trier of fact to find for the non-moving party.'" Smith v. County of Suffolk, 776 F.3d 114, 121 (2d Cir. 2015) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986)). "[I]n making that determination, the court is to draw all factual inferences in favor of the party against whom summary judgment is sought, viewing the factual assertions in materials such as affidavits, exhibits, and depositions in the light most favorable to the party opposing the motion." Rodriguez v. City of New York, 72 F.3d 1051, 1061 (2d Cir. 1995). However, "[w]hen opposing parties tell two different stories, one of which is blatantly contradicted by the record, so that no reasonable jury could believe it, a court should not adopt that version of the facts for purposes of ruling on a motion for summary judgment." Scott v. Harris, 550 U.S. 372, 380, 127 S.Ct. 1769, 167 L.Ed.2d 686 (2007).
In seeking summary judgment, the initial "burden is upon the moving party to demonstrate that no genuine issue respecting any material fact exists." Gallo v. Prudential Residential Servs., 22 F.3d 1219, 1223 (2d Cir. 1994). If the non-moving party would bear the burden of proof at trial, "the burden on the moving party may be discharged by `showing' — that is, pointing out to the district court — that there is an absence of evidence to support the non-moving party's case." Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). If the movant "demonstrates `the absence of a genuine issue of
To prove trademark infringement under 15 U.S.C. § 1114, a plaintiff must satisfy a two-prong inquiry: first, the plaintiff must show that its mark is entitled to protection; and second, the plaintiff must show that "defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant's goods." Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003) (citing Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1074 (2d Cir. 1993)). With respect to the first prong, a certificate of registration with the USPTO constitutes prima facie evidence that the mark is protectable. See Guthrie Healthcare System v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016). Furthermore, when a registered mark has been in continuous use for five consecutive years following the registration, the right to that mark is considered "incontestable" so long as there are no ongoing proceedings, proper filings have been made with the USPTO, and the mark is not generic. See 15 U.S.C. 1065. The parties in this case do not dispute that Plaintiffs' BEYONCÉ mark is registered with the USPTO and has been in continual use for over five consecutive years. Plaintiffs' mark is therefore protectable as a matter of law.
Whether the Court may grant summary judgment in favor of the Plaintiffs for federal trademark infringement thus turns on the second prong. In other words, summary judgment may be appropriate if, considering the record as a whole, "the undisputed evidence would lead to only one conclusion as to whether confusion is likely." See Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 478 (2d Cir. 1996). "Normally, the likelihood of confusion is a factual question, centering on the probable reactions of prospective purchasers of the parties' goods." Pirone v. MacMillan, Inc., 894 F.2d 579, 584 (2d Cir. 1990). To assess the likelihood of confusion between the two marks, the Court looks to the factors articulated in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961) (considering the strength of the senior mark, the similarity of the marks, the proximity of the products in the marketplace, the likelihood that the owner of the senior mark will bridge the gap, actual confusion, the presence of bad faith on the part of the defendant, the quality of the defendant's products, and consumer sophistication). "If a factual inference must be drawn to arrive at a particular finding on a Polaroid factor, and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment." Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 215 (2d Cir. 2003). In weighing the factors, the Court must not lose sight of the inquiry's touchstone: whether or not it is likely "that an appreciable number of ordinarily prudent purchasers would be confused as to the source of the goods which they are purchasing or in distinguishing one product from another." Miller Brewing Co. v. Carling O'Keefe Breweries of Canada, Ltd., 452 F.Supp. 429, 444 (W.D.N.Y. 1978) (citing Avon Shoe Co. v. David Crystal, Inc., 279 F.2d 607, 612 (2d Cir. 1960)).
For the reasons that follow, the Court concludes that there is a triable issue of fact as to whether the similarity
Here, the marks are certainly extremely similar in text, font, and pronunciation. See Pfizer v. Y2K Shipping & Trading, Inc., No. 00CV 5304, 2004 WL 896952, at *5 (E.D.N.Y. 2004) (In assessing similarity, "courts analyze the similarity in pronunciation and appearance of each and the manner in which they are presented to consumers."). The difference between the two is the first letter, which in other cases was not enough to save an allegedly infringing junior mark from a finding of likelihood of confusion as a matter of law. See id. However, this does not end the Court's inquiry. By replacing the "B" with an "F," Defendants have created a mark that sounds like "fiancé," i.e., a person who is engaged to be married. As a result, FEYONCÉ is a play on words,
Plaintiffs rely on Pfizer, a case in which the court did find that there was a likelihood of confusion between two similar marks as a matter of law. Pfizer, 2004 WL 896952, at *4 (The similarity in sound and spelling between "VIAGRA" and "TRIAGRA" "is likely to lead consumers to believe that Defendants' product is affiliated with that of Plaintiff"). However, that case is distinguishable from the case at hand. In Pfizer, the substitution of the letters "TR" for "V" did not result in a new word with a different connotation than "VIAGRA," since "TRIAGRA" (or another word with the same sound) has no dictionary definition. Instead, the instant case is more readily analogized to Nike, 6 F.3d 1225. In Nike, the Seventh Circuit reversed the lower court's entry of summary judgment for trademark infringement in favor of the well-known brand. Id. The allegedly infringing products were t-shirts and sweatshirts displaying the word "MIKE" and a "swoosh" logo identical to the one made famous by Nike. Id. at 1227. The lower court there "concluded as a matter of law that MIKE and NIKE were too similar and likely to confuse consumers" because the marks were virtually identical. Id. In reversing, the Seventh Circuit reasoned that a jury could find that consumers "making the decision to purchase or not to purchase" MIKE products might not be "confused ... into thinking that they were a Nike product." Id. at 1299-30. Defendant in that case went so far as to admit that his products may be confused for Nike products "from across the room," but the court found that there was a triable issue as to whether "any initial confusion ends with a closer look, when the observer `gets it.'" Id. Whether observers found the Nike/Mike pun amusing was also irrelevant—the "ultimate question" was whether the pun was sufficient to dispel confusion among the consuming public. Id. at 1228.
Like in Nike, in this case, because of the additional connotation of "fiancé," allowing all inference in favor of the non-moving party, a reasonable jury may conclude that consumers looking for BEYONCÉ products are unlikely to select a FEYONCÉ product inadvertently. See also Tommy Hilfiger, 221 F.Supp.2d at 421 (granting alleged infringer's motion for summary judgment because the junior mark was a readily perceived pun unlikely to cause confusion); Schieffelin, 850 F.Supp. at 235 ("[W]hether [a] parody would be sufficiently strong to overcome the potential for consumer confusion was an issue of fact to be decided at trial."). Evidence in the record indicates that many purchasers of FEYONCÉ products are, in fact, engaged, just as many MIKE product purchasers were named Mike. Nike, 6 F.3d at 1230. Viewed in the light most favorable to Defendants, this evidence suggests that consumers are understanding the pun, rather than confusing the brands. A rational trier of fact could nonetheless determine that consumers might mistakenly believe FEYONCÉ products are sponsored by or affiliated with BEYONCÉ products, but the Court cannot conclude that the marks are confusingly similar as a matter of law.
Because the Court is unconvinced as to similarity, it is also unprepared to conclude as a matter of law that Defendants acted in bad faith. Cf. Pfizer, 2004 WL 896952, at *5 ("Bad faith ... is established where there is evidence of actual knowledge of the senior user's mark and the marks are so similar that it seems clear that deliberate copying has occurred.") (internal quotation marks omitted). While Defendants clearly selected their mark because of its association with Plaintiffs' mark, it is not at all clear that they hoped to capitalize on "confusion between" the products. See Flat
Of course, several of the Polaroid factors weigh in favor of a finding of likelihood of confusion. First, Plaintiffs mark is strong. See Cadbury, 73 F.3d at 479 ("[W]hen a mark is registered and fanciful," meaning it lacks a dictionary definition, "the plaintiff has met its burden on the question of strength.") (internal quotation marks omitted). Second, both lines of products include apparel sold online, and are therefore in close proximity in commerce. See Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 582 (2d Cir. 1991) ("To the extent goods ... serve the same purpose [and] fall within the same general class ... the use of similar designations is more likely to cause confusion."). Because the parties travel in the same channels of commerce, the bridging the gap factor leans in the same direction. See Star Indus. v. Bacardi & Co. Ltd., 412 F.3d 373, 387 (2d Cir. 2005) (noting that where the parties' products "are already in competitive proximity, there is really no gap to bridge"). Third, it is unlikely that consumers of the apparel, which is not particularly expensive, are sophisticated. See Phillips-Van Heusen Corp. v. Calvin Clothing Co., Inc., 444 F.Supp.2d 250, 257 (S.D.N.Y. 2006) ("[T]he average clothing customer is not particularly sophisticated."). Nonetheless, the core of the inquiry is whether ordinary purchasers would have difficulty distinguishing the products or ascertaining whether the junior product is affiliated with or sponsored by the senior mark's owner, and the Court cannot conclude as a matter of law that this type of confusion is likely.
To succeed on a claim for unfair competition under 15 U.S.C. 1125, a plaintiff must prove both that it has a mark that is entitled to protection and that the defendant's mark would likely cause confusion as to the origin of the defendant's goods or the sponsorship of those goods. See Legends Are Forever, Inc. v. Nike, Inc., 58 F.Supp.3d 197, 205-06 (N.D.N.Y. 2014). This two-pronged inquiry mirrors the test for trademark infringement under 15 U.S.C. 1114. Id. at 205. To establish unfair competition under New York common law, too, a plaintiff must show that defendant's use results in a likelihood of confusion between the two marks at issue. See ESPN, Inc. v. Quiksilver, Inc., 586 F.Supp.2d 219, 230 (S.D.N.Y. 2008). Because the Court concludes that a triable issue of fact exists with regard to the likelihood of confusion, as discussed supra, Plaintiffs' motion for summary judgment on their unfair competition claims is denied.
The owner of a famous mark can succeed on a claim of trademark dilution under federal law against an individual or
As previously discussed, Plaintiffs' mark is famous and distinctive. In addition, there is no dispute that Defendants use the FEYONCÉ mark in commerce, and that the BEYONCÉ mark's fame predates the Defendants' first sale of a FEYONCÉ product. The question, then, is whether Plaintiffs can establish likelihood of dilution as a matter of law. Several of the factors certainly lean in this direction: Plaintiffs are engaging in exclusive use of the famous mark, which is highly recognizable, it seems clear on the face of the record that Defendants sought to associate their mark with Plaintiffs', and Plaintiffs' have presented evidence that consumers do indeed associate the FEYONCÉ mark with BEYONCÉ. Even when such association was intended, when a defendant does so "imperfectly, so as to convey the simultaneous message that it was not in fact a source" of the famous mark's products, the risk of blurring may be minimal. See Louis Vuitton Malletier, S.A. v. HauteDiggity Dog, LLC, 507 F.3d 252, 268 (4th Cir. 2007). The "operative question is whether the kind of association [Defendants] creat[e] here is likely to impair the distinctiveness of [Plaintiffs'] marks." My Other Bag, 156 F.Supp.3d at 439. Defendants' mark could be considered a pun—it is clearly a reference to Plaintiff Beyonce, but it is just as clearly a signifier of a specific relationship status. A reasonable factfinder may determine that, given the similarity between the two marks, Defendants' use of FEYONCÉ impairs the distinctiveness and selling power of the BEYONCÉ mark. However, because Defendants' have not merely co-opted the BEYONCÉ mark, but rather repurposed it in a way that can be distinguished from the original, a reasonable factfinder could also conclude that there is little risk of dilution. Cf. Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 506 (2d Cir. 1996) (noting that parody tends to increase rather than undermine the public identification of a famous mark). Because the outcome is not compelled as a matter of law, the Court denies Plaintiffs' motion for summary judgment on their federal trademark dilution claim.
To prevail on a claim for trademark dilution under New York General Business Law § 360-1, a plaintiff "must prove (1) that the trademark is truly distinctive or has acquired secondary meaning, and (2) a likelihood of dilution either as a result of `blurring' or `tarnishment.'" U-Neek, Inc. v. Wal-mart Stores, Inc., 147 F.Supp.2d 158, 175 (S.D.N.Y. 2001) (citing Deere & Co. v. MTD Prods., Inc., 41 F.3d 39, 42 (2d Cir. 1994)). Plaintiffs' mark is registered and incontestable, and Plaintiffs have therefore established a rebuttable presumption of distinctiveness as a matter of law. See Johnson & Johnson Consumer Companies, Inc. v. Aini, 540 F.Supp.2d 374, 390 (E.D.N.Y. 2008) ("[W]hen the USPTO registers a mark without requiring proof of a secondary meaning, a presumption arises that the mark is more than merely descriptive but is, rather, inherently distinctive."). Defendants point to nothing that would rebut this presumption.
However, summary judgment is inappropriate because there remain factual questions that bear on the second prong: likeliness of dilution. As with federal law, under New York law "[d]ilution by `blurring' may occur where the defendant uses or modifies that plaintiffs trademark to identify the defendants' goods and services, raising the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product." U-Neek, 147 F.Supp.2d at 175.
"A permanent injunction is appropriate where the party seeking the injunction has succeeded on the merits and shows the absence of an adequate remedy at law and irreparable harm if the relief is not granted." Patsy's Italian Restaurant, Inc. v. Banas, 658 F.3d 254, 272 (2d Cir. 2011) (internal quotation marks omitted). Because the Court has concluded that triable issues of fact remain on the merits, the motion for a permanent injunction is denied.
For the foregoing reasons, Plaintiffs' motion for partial summary judgment and entry of a permanent injunction against Defendants Andre Maurice and Leana Lopez is DENIED.
A status conference will be held on November 1, 2018, at 10:00 AM in Courtroom 906 of the Thurgood Marshall Courthouse. The parties shall meet and confer regarding
Chambers will mail copies of this Memorandum Opinion and Order to pro se Defendants and that mailing will be noted on the public docket. This resolves Dkt. No. 87.
SO ORDERED.
