GoSmile, Inc. v. Dr. Jonathan Levine, DMDPC
2011 U.S. Dist. LEXIS 23474
| S.D.N.Y. | 2011Background
- Go SMiLE markets and sells tooth-whitening products; Levine co-founded Go SMiLE, left in 2008, and later developed the Glo line.
- Go SMiLE alleges Levine’s Glo products infringe its registered marks under the Lanham Act and New York law.
- Go SMiLE has numerous registered marks, including GO SMiLE and related GO/GOSMILE marks; some marks were abandoned.
- Levine registered the word Glo in 2010 for his new line; he founded GLO Science, LLC in 2009 to develop whitening products.
- Plaintiff sought a preliminary injunction; evidentiary hearing held January–February 2011; court denied the injunction.
- Court also ruled on motions to strike and seal related exhibits, ultimately denying strike and granting seal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion under Lanham Act | Go SMiLE marks are strong and similar to Glo in consumer perception and branding. | Marks and packaging are different in word, design, and overall impression; market context reduces confusion. | No likelihood of confusion; injunction denied. |
| Strength of Go SMiLE marks | Go SMiLE marks have acquired secondary meaning through advertising and sales. | Marks are only suggestive with limited strength absent secondary meaning. | Go SMiLE marks are of moderate strength. |
| Polaroid factors balance for confusion | Factors show substantial similarity and proximity, supporting likelihood of confusion. | Factors show dissimilarity in marks, packaging, and market presentation. | Factors do not support likelihood of confusion; overall no infringement. |
| Evidence of actual confusion and bad faith | Surveys and anecdotes show confusion and bad faith adoption. | Survey data show zero or negligible confusion; no bad faith proven. | Actual confusion is weak; no bad-faith finding. |
| Trade-secret/related exhibits under seal | Seal granted for exhibits containing sensitive trade secrets. |
Key Cases Cited
- Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir.2005) (polarity of factors not dispositive; focus on likelihood of confusion)
- Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir.1961) (eight-factor test for likelihood of confusion)
- Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43 (2d Cir.2000) (comparison of overall mark impressions and packaging)
- Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir.2006) (look to overall impressions and market conditions for similarity)
- Lang v. Retirement Living Pub. Co., 949 F.2d 576 (2d Cir.1991) (secondary meaning and strength considerations for marks)
- Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir.2004) (consumer sophistication and product context in confusion analysis)
- Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir.2005) (polaroid eight-factor framework and context-specific analysis)
- Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir.2009) (core test for likelihood of confusion and source confusion)