KIMBA M. WOOD, District Judge.
Plaintiffs Morgans Group LLC and Morgans Hotel Group Management LLC (collectively,'Morgans') are the owners of the Hudson Hotel (the "Hotel") in Manhattan Hell's Kitchen neighborhood, which is adjacent to the Hudson River. On the 15
Since 2000. Morgans has operated the Hotel on West 58
Until April 2009, Sky Terrace was advertised as open exclusively to hotel guests, Morgans Hotel Group Global Card Members, or select others to whom Morgans extended an invitation, (Id., Resp. to Assertion 12.) Beginning in April 2009, Morgans advised media outlets that it was open to the public. (Id.) Morgans states that although advertised as "invitation-only" prior to April 2009, Sky Terrace was in fact always open to the public. (Id.)
Notwithstanding its "public opening" announcement in April 2009, the overwhelming majority of Sky Terrace's patronage appears to consist of hotel guests, invited "tastemakers," and attendees of private events that occasionally include appearances by celebrities and wellknown New Yorkers. (See, e.g., Asher Deck, Exs. 3, 19, 37, 39.) Sky Terrace has also been used as a shooting location for nationally distributed television shows and photographs accompanying magazine articles. (See, e.g., Asher Deck, Exs. 24, 25, 26, 30, 71.) Print media coverage of Sky Terrace consists primarily, if not exclusively, of listings in New York City bar or "rooftop bar" guides.
Morgans refers to Sky Terrace interchangeably as either "Sky Terrace," "Sky Terrace at Hudson," or "Hudson's Sky Terrace." (Pl. 56.1 Stmt. ¶ 26.) On its website and on signage at the Hotel, Morgans uses the name "Sky Terrace" only, (Id., Resp. to Assertion 8.) Morgans does not use the marks "Hudson Sky Terrace" or "Hudson Terrace" to refer to Sky Terrace. (Pl. 56.1 Stmt., Resps. to Assertions 6, 7, 8; Pl. Mem. of Law in Supp. of Mot. for Summ. J. (hereinafter "Pl. Mem. in Supp.") at 8.) However, third party media coverage often refers to the venue as "Hudson Sky Terrace," in addition to using the names "Sky Terrace," "Hudson's Sky Terrace," "Sky Terrace at the Hudson," "Sky Terrace at the Hudson Hotel," "Sky Terrace @ Hudson Hotel," "Hudson Hotel's Sky Terrace," "Hudson Hotel Sky Terrace," "Hudson Sky Terrace (Hudson Hotel)," and "New York Sky Terrace." (Pl. 56.1 Stmt., Resp. to Assertion 9; see, e.g., Asher Deck, Exs. 31, 33-35, 37, 41-42, 44, 48, 51-52, 54-55, 58-59, 67-73, 80.)
Hudson Terrace is a 13,000 square foot, bi-level entertainment venue located on 46
Hudson Terrace has been the subject of national media coverage, where it is described as a crowded, popular nightlife "hotspot" often frequented by high-profile celebrities.
Morgans filed its Complaint on July 8, 2010, alleging: (1) false designation of origin and federal unfair competition pursuant to Section 43 of the Lanham Act, codified at 15 U.S.C § 1125(a); (2) trademark dilution pursuant to New York General Business Law ("N.Y.G.B.L.") § 360-1; (3) deceptive acts and practices pursuant to N.Y.G.B.L.§ 349; and (4) trademark infringement and unfair competition under New York common law, (Dkt. No. 1.) Morgans claims rights in the marks "Hudson Sky Terrace" and "Sky Terrace at Hudson," and seeks to enjoin Hudson Terrace's use of the name "Hudson Terrace" on the ground that it is confusingly similar to the names in which Morgans claims an interest. (Id.) On October 21, 2010, Hudson Terrace filed an Amended Answer to the Complaint, and alleged counterclaims almost identical to the claims asserted by Morgans. (Dkt. No. 17.) Hudson Terrace counterclaims a right in the name "Hudson Terrace" and seeks to enjoin Morgans' use of the name "Hudson Sky Terrace," which it claims is confusingly similar to "Hudson Terrace." (Id.)
On June 3, 2011, the parties cross-moved for summary judgment. Morgans moves for summary judgment on all of its claims, as well as dismissal of Hudson Terrace's counterclaims. (Dkt. No. 31.) Hudson Terrace moves for partial summary judgment only, seeking adjudication of Morgans' claims but not of its own counterclaims. (Dkt. No. 25.)
Summary judgment is appropriate where "the movant shows 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). The party seeking summary judgment bears the initial burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986); Miner v. Clinton Cty., N.Y., 541 F.3d 464, 471 (2d Cir. 2008). Summary judgment will be entered "against a party who fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex Corp., 477 U.S. at 322. Once the movant satisfies its burden, the onus shifts to the non-moving party to "set forth specific facts showing that there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). A genuine issue for trial exists if, based on the record as a whole, a reasonable jury could find in favor of the non-moving party. Anderson, 477 U.S. at 248; SCR Joint Venture L.P. v. Warshawsky, 559 F.3d 133, 137 (2d Cir. 2009). "If reasonable minds could differ as to the import of the evidence and if there is any evidence in the record from any source from which a reasonable inference in the nonmoving party's favor may be drawn, the moving party . . . cannot obtain a summary judgment." Brady v. Town of Colchester, 863 F.2d 205, 211 (2d Cir. 1988) (internal quotation omitted).
In reviewing the record, the Court construes all evidence "in the light most favorable to the non-moving party and draws all reasonable inferences in that party's favor." Cox v. Warwick Valley Cent. School Dist., 654 F.3d 267, 271 (2d Cir. 2011). Where, as here, both parties seek summary judgment, the Court must "evaluate each party's motion on its own merits, taking care in each instance to draw all reasonable inferences against the party whose motion is under consideration." Scwabenbauer v. Bd. of Educ, 667 F.2d 305, 314 (2d Cir. 1981).
Section 43(a) of the Lanham Act is a federal unfair competition statute which prohibits, inter alia, the "false designation of origin" in relation to goods and services. 15 U.S.C. § 1125(a). The statute is designed "to eliminate the confusion that is created in the marketplace by the sale of products [or services] bearing highly similar marks." Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 539 (2d Cir. 2005). To prevail on a claim under § 43(a), a plaintiff must show that; (1) it has a valid trademark or trade name
To be entitled to protection, a trademark or trade name must be sufficiently distinctive to link a product or service to its source. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69 (1992); Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir. 1999) (internal quotation omitted). The framework developed by the Second Circuit to gauge distinctiveness separates marks into four broad categories. "Arrayed in ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful." Bristol-Myers Squibb Co., v. McNeil-P.P.C, Inc., 973 F.2d 1033, 1039 (2d Cir. 1992). Suggestive, arbitrary, or fanciful marks are deemed inherently distinctive "because their intrinsic nature serves to identify a particular source of a product." Id. at 1039 (quoting Two Pesos, 505 U.S. at 768). By contrast, generic marks are not accorded any trademark status, because they merely identify the class or genus of goods or services to which a particular product or service belongs, rather than describe a particular characteristic of the product or service. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976). Positioned between these two extremes are descriptive marks, which "convey[] an immediate idea of the ingredients, qualities, or characteristics of the goods." Bernard v. Commerce Drug Co., 964 F.2d 1338, 1341 (2d Cir. 1992) (internal quotation omitted).
Although it is not inherently distinctive, a descriptive mark is afforded protection when it has acquired distinctiveness through "secondary meaning," such that "in the minds of the public, the primary significance of [the] mark is to identify the source of the product rather than the product itself." Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000) (internal quotation omitted). "The crux of the doctrine . . . is that the mark comes to identify not only the goods but the source of those goods, even though the relevant consuming public might not know the name of the producer." Centaur Commc'ns Ltd. v. A/S/M Commc'ns Inc., 830 F.2d 1217. 1221 (2d Cir. 1987) (internal quotation omitted), abrogated by Bristol-Myers Squibb Co., v. McNeil-P.P.C, Inc., 973 F.2d 1033 (2d Cir. 1992). Secondary meaning analysis centers not on the public at large, but rather the consumer group relevant to the product or service. Id. at 1222. A plaintiff must show that "a substantial segment" of the relevant consumer group makes the "requisite association between the product and the producer." Id. Whether a mark has acquired secondary meaning "is a question of fact with the burden of
proof on the party claiming exclusive rights in the designation." Bristol-Myers, 973 F.2d at 1041 (internal quotation omitted). A plaintiff "bears the vigorous evidentiary burden of proving by a preponderance of the evidence that his mark had acquired secondary meaning at the time defendant began his allegedly infringing activities." Centaur Commc'ns, Ltd. v. A/S/M Commc'ns, Inc., 652 F.Supp. 1105, 1108 (S.D.N.Y. 1987) (Pollack, J.) Courts have found the following factors most relevant in determining whether a plaintiff has met its evidentiary burden: (1) advertising and promotional efforts; (2) consumer surveys linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product or service; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark's use. Bristol-Myers, 973 F.2d at 1041. The factors are non-exclusive, and the presence or absence of any one factor is not dispositive. See Thompson Med. Co., 753 F.2d at 217.
Once a plaintiff proves that its descriptive mark has acquired a secondary meaning and is therefore entitled to protection, it must show that the defendant's use of a similar mark is likely to cause consumer confusion. In Polaroid Corp. v. Polaroid Elec. Corp., 287 F.2d 492, 495 (2d Cir. 1961), the Second Circuit identified eight non-exclusive factors relevant to this inquiry: (1) the strength of the plaintiffs mark; (2) the degree of similarity between the marks; (3) the proximity of the products; (4) the likelihood that the plaintiff will bridge the gap between the two products; (5) actual confusion of customers in the relevant market; (6) the defendant's good faith in adopting its mark; (7) the quality of the defendant's product; and (8) the sophistication of the buyers. The Polaroid test "is not a mechanical process where the party with the greatest number of factors weighing in its factor wins. Rather, a court should focus on the ultimate question of whether consumers are likely to be confused." Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000). Although no single factor is necessarily dispositive, "any one factor may prove to be so." Nora Beverages, Inc. v. Perrier Grp. of Amer., Inc., 269 F.3d 114, 119 (2d Cir, 2001).
The parties both agree,
As discussed in Part III.A.i, supra, secondary meaning is determined in relation to the "relevant buyer class," and not the public in general. Centaur Comma'ns, 652 F. Supp. at 1109. In this case, the relevant buyer class consists primarily of consumers who are likely to patronize both establishments, as well as local industry professionals (i.e., New York City bar, lounge, and nightlife promoters and press). To determine whether a trademark or trade name has acquired secondary meaning among this consumer group, the Court examines the following six factors: (1) advertising and promotional efforts; (2) consumer surveys linking the mark to a source; (3) sales success; (4) unsolicited media coverage of the product or service; (5) attempts to plagiarize the mark; and (6) the length and exclusivity of the mark's use. Bristol-Myers, 973 F.2d at 1041.
Advertising expenditures provide circumstantial evidence of the possible effect that advertising of the trademark or trade name may have on consumers' association of it with the source of a product or service. Centaur Commc'ns, 830 F.2d at 1222. Morgans has not produced any evidence of expenditures to promote the marks "Hudson Sky Terrace" or "Sky Terrace at Hudson." To the contrary, Morgans claims that it has gone to considerable lengths to discourage media references to Sky Terrace as "Hudson Sky Terrace." (See, e.g., Asher Deck, Ex. 89; see also Pl. Mem. in Supp. at 20.) As to the mark "Sky Terrace at Hudson," several emails do indicate that Morgans hired an outside public relations firm to promote Sky Terrace, but only along with all of the Hotel's other bar and lounge spaces, including "Private Park," "Hudson Bar," and "Good Units." (See, e.g., Weber Deck, Ex. B.) Morgans has submitted no evidence indicating how much it has spent on the promotion of Sky Terrace in particular.
Consumer surveys and consumer testimony are often the most persuasive evidence of secondary meaning, because they are direct evidence of consumers' association of a good or service with a particular source. See, e.g., Ergotron, Inc. v. Hergo Ergonomic Support Sys., Inc., No. 94 Civ. 2732, 1996 WL 143903, at *8 (S.D.N.Y. 1996) (Scheindlin, J.). Morgans has not offered any consumer surveys to demonstrate that either mark has acquired secondary meaning, although its failure to do so is not dispositive. Centaur Commc'ns, 830 P.2d at 1223 ("[T]hough surveys have become the usual way of demonstrating secondary meaning, they are not the only way."). However, it has failed to offer any consumer testimony in place of such a survey, Morgans cites to a single review of Hudson Terrace on the website "yelp.com" in which the reviewer recounts that, upon her friends' request to "Meet us at the Hudson Terrace!", she responded "Hudson Hotel Terrace got it!", assuming (erroneously) that her friends were at the Sky Terrace and not the Hudson Terrace. (Asher Deck, Ex. 6.) This anecdotal, unsworn statement of a single consumer is insufficient to establish that a "substantial segment" of the relevant consumer class equates the names "Hudson Sky Terrace" or "Sky Terrace at Hudson" with Sky Terrace. Centaur Commc'ns, 830 F.2d at 1222.
Sales success is another form of circumstantial evidence that may indicate a substantial segment of consumers identifies a trade name with its source. See Ergotron, Inc., 1196 WL 143903, at *8. Morgans asserts that Sky Terrace "receives a significant amount of solicited and unsolicited promotional press and is consistently ranked as one of New York's best rooftop bars, thus demonstrating its success." (Pl. Mem. in Reply in Supp. of Mot. for Summ. J. at 3.) However, Morgans has not submitted any sales figures, or data of any kind, to support this claim. Absent any "real evidence regarding the revenues generated" by Sky Terrace, Morgans' conclusory allegations of sales success cannot support a finding of secondary meaning. Chum Ltd. v. Lisowksi, 198 F.Supp.2d 530, 535 (S.D.N.Y. 2002) (Motley, J.).
The record reflects that Sky Terrace has been featured in a number of guides to New York City's bars, including guides to "rooftop bars" or "outdoor drinking." (See, e.g., Asher Deck, Exs. 35, 41, 48, 70, 79.) Sky Terrace has also garnered brief mentions in the New York Post and Vogue. (Asher Deck, Exs. 33, 59.) It has been used as a on-site location for the filming of television shows and the shooting of photographs for magazine articles (see, e.g., Asher Deck, Exs. 24, 25, 26, 30, 71), although it is not clear whether Sky Terrace received mention in the credits in every instance. Despite the quantity of references, they do not suffice to create secondary meaning in the marks "Hudson Sky Terrace" and "Sky Terrace at Hudson." First, Morgans has not shown how many of the listings for Sky Terrace were solicited and how many were unsolicited. Second, Sky Terrace has been listed under a variety of names in the press, and not just the names in which Morgans claims an interest. See Fraga v. Smithaven MRI, 866 F.Supp. 107. 112 (E.D.N.Y. 1994) (noting that "the fact that plaintiff infused the market with several names . . . decreases the likelihood that any one name acquired secondary meaning"). In many instances, the mark "Hudson Sky Terrace" is qualified, such as "Hudson Sky Terrace—Hudson Hotel" or "Hudson Sky Terrace at the Hudson Hotel." The smaller subset of listings that do refer to Sky Terrace as "Hudson Sky Terrace" and "Sky Terrace at Hudson" are simply insufficient to establish secondary meaning. Finally, Morgans has not offered any evidence to demonstrate that these listings have created the required association in the minds of the consumers who are likely to patronize Sky Terrace and Hudson Terrace. See Centaur Commc'ns, 830 F.2d at 1224 ("[N]to much significance may be ascribed to such citations because it is not clear what they indicate about the relevant group of consumers.").
"The intent to copy a mark may be inferred from the defendant's prior knowledge of the plaintiffs mark along with the similarity between the parties' marks." Star Indus, v. Bacardi & Co., No. 02 Civ. 4239, 2003 WL 23109750, at *6 (S.D.N.Y. Dec. 31, 2003) (Baer, J.). Morgans has neither demonstrated nor alleged that Hudson Terrace, or any third party, has attempted to plagiarize the marks. It has claimed, in the context of its argument that there is a likelihood of confusion between the parties' marks, that Hudson Terrace's adoption of the name "Hudson Terrace" was in bad faith because (1) it "should have known" that Morgans used similar marks and (2) Hudson Terrace has since sought to capitalize on instances of consumer confusion, such as when a consumer seeking a venue for a private event mistakenly visited Hudson Terrace instead of Sky Terrace, Hudson Terrace encouraged the consumer to hold its event at Hudson Terrace instead. (Pl. Mem. in Supp. at 17-18; Asher Deck, Ex. 16.) However, these barely supported allegations are insufficient to show that Hudson Terrace intentionally copied Morgans' marks.
"[T]he length and exclusivity of a mark's use is evaluated in light of the product and its consumers." Centaur Commc'ns, 830 F.2d at 1225. Morgans asserts that it has used the mark "Sky Terrace at Hudson" since it opened the Hotel in 2000, and that the media began using the mark "Hudson Sky Terrace" at least prior to when the Hudson Terrace venue opened in 2008. The bulk of the evidence Morgans has offered to show use of both marks dates between 2008 and 2010, although there are a few examples of media references to "Hudson Sky Terrace" as early as 2003 and 2004. (See Asher Deck, Exs. 33, 37, 38.) Even assuming that use of the mark "Sky Terrace at Hudson" dates from 2000 and use of the mark "Hudson Sky Terrace" dates from approximately 2003, the length of the marks' use is tempered by third-party uses of the marks' elements "sky" and "terrace" in similar markets. Examples include: the "Sky Room," a rooftop bar and restaurant in the Marriot hotel, located in the same neighborhood as the Hotel; the "Terrace in the Sky," a rooftop bar, restaurant and event space on Manhattan's Upper West Side; the "Terrace Club," an elevated, private indoor and outdoor bar, restaurant and event space in midtown Manhattan; and "the Terrace at Sutton Place Bar," a rooftop bar in midtown Manhattan. (Deck of Michael Sinensky in Supp. of Dels.' Mot. for Summ. J. ¶ 22.) Although Morgans may have exclusively used the specific combinations "Hudson Sky Terrace" or "Sky Terrace at Hudson," third-party uses of significant elements of these marks, both separately and in combination, to describe similar services weighs against a finding that the marks have acquired secondary meaning. See Lang v. Ret. Living Publ'g Co., 949 F.2d 576, 581 (2d Cir. 1991) (finding that third party use of the words "Choice" and "Choices" weakened plaintiffs claim that her mark "New Choices" had acquired secondary meaning).
In sum, Morgans has not presented enough evidence to allow a jury to find that either "Hudson Sky Terrace" or "Sky Terrace at Hudson" has acquired secondary meaning. Hudson Terrace is therefore entitled to summary judgment on Morgans' Lanham Act claim.
The Court has supplemental jurisdiction over Morgans' state law claims pursuant to 28 U.S.C. § 1367, and additionally has jurisdiction pursuant to 28 U.S.C. § 1338, which provides for jurisdiction over unfair competition claims when those claims are "joined with a substantial and related claim under the [federal] copyright, patent, plant variety protection or trademark laws."
Morgans has also moved the Court for summary judgment on Hudson Terrace's counterclaims, which, as previously noted, are almost identical to Morgans' claims except insofar as Hudson Terrace alleges an additional claim under § 43 of the Lanham Act for false advertising. However, both parties focused on the merits of Morgans' claims and did not adequately address the merits of Hudson Terrace's counterclaims. The Court therefore denies Morgans' motion for summary judgment on the counterclaims without prejudice.
For the foregoing reasons, the Court DENIES Morgans' motion for summary judgment, (Dkt. No. 31), and GRANTS Hudson Terrace's motion for partial summary judgment. (Dkt. No. 25.)
Morgans concedes that it does not itself use the mark, but contends that the media's use of the mark is sufficient to establish Morgans' ownership rights in it. Morgans cites to, inter alia, Nat'l Cable Television Assoc., Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1577-78 (Fed. Cir. 1991) for the proposition that public use of the mark — even absent use by the party claiming rights in the mark—may be considered use by the claimant itself. In that case, the Federal Circuit found that the claimant had actually used the mark, but noted in dicta that "even without use directly by the claimant . . . abbreviations and nicknames of trademarks or names used only by the public give rise to protectable rights in the owners of the trade name or mark which the public modified. Such public use by others inures to the claimant's benefit and, where this occurs, public use can reasonably be deemed use `by' that party in the sense of a use on its behalf." Id. (emphasis in original).
Although the Second Circuit has thus far declined to address the issue, see Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806, 812 (2d Cir. 1999), the Seventh Circuit, in Johnny Blastoff, Inc. v. LA. Rams Football Co., 188 F.3d 427, 434 (7th Cir. 1999), and two courts in this district, in Phillips-Van Heusen Corp. v. Calvin Clothing Co., 444 F.Supp.2d 250, 255 (S.D.N.Y. 2006) (Rakoff, J.) and Hawaii-Pacific Apparel Grp. v. Cleveland Browns Football Co., 418 F, Supp. 2d 501, 508 n.12 (S.D.N.Y. 2006) (Chin, J.), have cited with approval the principle enunciated in National Cable Television Assoc., Inc. In each of these cases the principle was approved in dicta only, because the claimants were found to have also used the marks themselves, such that their rights in the marks were not based on public use alone.
The Court declines to decide whether public use alone can confer trademark rights upon a claimant, because, even assuming that the media's use of the mark "Hudson Sky Terrace" could inure to Morgans' benefit, Morgans has failed to establish that the term has acquired secondary meaning.
