946 F. Supp. 2d 324
S.D.N.Y.2013Background
- Akiro LLC owns the MISS JESSIE’S trademark in the natural/curly hair market and has marketed it since 2003 with extensive promotion including trade shows, ads, and public relations.
- HOC owns the AUNT JACKIE’S mark in the same market and conducted market research 2010–2012, determining a brand between premium and value tiers.
- HOC sought to register Miss Jackie’s variants but ultimately pursued Aunt Jackie’s after trademark counsel advised avoiding Miss Jessie’s conflicts; White forwarded proposed marks and packaging to Belzer for clearance.
- HOC obtained registration for AUNT JACKIE’S in March–May 2012 after examiner found no conflicting marks, and began selling Aunt Jackie’s products in late June 2012.
- Two HOC experts evaluated brand similarity; Wallace’s report was excluded on Daubert/FRE grounds, while Isaacson’s Eveready-format consumer confusion survey found minimal confusion.
- The court denied both parties’ summary judgment motions on Lanham Act claims, NY unfair competition, and diluted the claim; it granted summary judgment to HOC on the NY trademark dilution claim and set trial for May 20, 2013.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion under Lanham Act | Akiro argues MISS JESSIE’S and AUNT JACKIE’S are similar in marks and trade dress and thus likely to confuse. | HOC contends marks are distinct overall and that any similarities do not create a likelihood of confusion. | Issues of fact; denial of both motions on infringement/false designation. |
| Strength and distinctiveness of MISS JESSIE’S | MISS JESSIE’S is inherently distinctive and has acquired secondary meaning. | MISS JESSIE’S strength acknowledged but not dispositive against confusion given other factors. | MISS JESSIE’S is a strong mark; not alone controlling for outcome. |
| Polaroid factors analysis for proximity and potential bridge | Factors such as strength, similarity, proximity, and bridging the gap favor Akiro. | Factors weighed in favor HOC on some elements; conflicts exist. | Material differences create triable issues; not entitled to summary judgment for either side. |
| NY trademark dilution viability | Marks are substantially similar; likely to dilute the MISS JESSIE’S brand. | Marks are not substantially similar; dilution not proven. | Akiro’s NY dilution claim denied; HOC granted summary judgment on this count. |
| New York unfair competition standard | Unfair competition by misappropriation/palming off due to confusing source. | Confusion and bad faith disputed; genuine issues of material fact exist. | Denied summary judgment; issues of fact preclude dismissal. |
Key Cases Cited
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.1961) (eight-factor test for likelihood of confusion; strength/similarity/proximity emphasized)
- Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir.2009) (reaffirmed Polaroid factors; consumer sophistication considerations)
- Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112 (2d Cir.1984) (proper test is holistic; not a fragment-by-fragment comparison)
- Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 (2d Cir.1986) (recognizes likelihood of confusion considerations; consumer familiarity matters)
- Clinique Laboratories, Inc. v. Dep Corp., 945 F. Supp. 547 (S.D.N.Y.1996) (tests for likelihood of confusion; marketplace conditions matter)
- Miss Universe, L.P., LLLP v. Villegas, 672 F. Supp. 2d 575 (S.D.N.Y.2009) (dilution standard; substantial similarity required)