486 F.Supp.3d 657
S.D.N.Y.2020Background
- Vortic LLC converted restored antique Hamilton pocket-watch movements, dials, and hands into wristwatches sold as “The Lancaster,” with visible Hamilton trademarks on the restored components.
- Vortic produced and assembled the wristwatch cases (engraved with “Vortic,” “The Lancaster,” and a serial number) and marketed the product emphasizing its use of restored vintage movements; 58 Lancasters were sold or gifted.
- Hamilton sued for trademark infringement, counterfeiting, dilution, and unfair competition; a one-day bench trial was held and the only disputed trademark element was likelihood of confusion.
- The court found Vortic’s website, ads, Kickstarter and product presentation disclosed that Vortic restored and incorporated genuine vintage Hamilton movements and parts into new watches.
- The Lancaster’s physical appearance (large size, crown at 12 o’clock, patina) and case engravings signaled a restored antique movement and identified Vortic as the maker, supporting “full disclosure.”
- The judge credited Vortic’s good faith intent to preserve antique movements, found the customer base highly sophisticated, and concluded no likelihood of confusion; judgment entered for defendants on all claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement (likelihood of confusion) | Hamilton: display of Hamilton mark on Lancaster would confuse purchasers and imply affiliation | Vortic: ads and product give full disclosure that movements are restored genuine Hamilton parts and identify Vortic as maker | No likelihood of confusion; full disclosure dispositive; judgment for defendants |
| Federal counterfeiting (15 U.S.C. §1114) | Hamilton: use of trademark on product constitutes counterfeiting | Vortic: no likely deception because of full disclosure and product presentation | Dismissed—no counterfeiting because no likelihood of confusion |
| NY dilution by blurring (N.Y. Gen. Bus. Law §360‑l) | Hamilton: use of mark on Lancaster blurs distinctiveness | Vortic: lack of confusion, informed buyers, and disclosure defeat dilution claim | Denied—dilution not shown |
| Unfair competition (federal and NY) | Hamilton: Vortic’s use of mark amounts to unfair competition | Vortic: same defenses as to infringement; acted in good faith | Denied—claims rise and fall with likelihood-of-confusion analysis; no bad-faith finding |
Key Cases Cited
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (multifactor likelihood-of-confusion test)
- Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947) (‘‘full disclosure’’ permits use of original maker’s mark on restored goods)
- Prestonettes, Inc. v. Coty, 264 U.S. 359 (1924) (reaffirming principles governing use of marks on modified genuine goods)
- Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005) (burden on plaintiff to prove likelihood of confusion)
- Int’l Info. Sys. Sec. Certification Consortium v. Sec. Univ., LLC, 823 F.3d 153 (2d Cir. 2016) (Polaroid factors applied flexibly; some factors may be inapplicable)
- H.L. Hayden Co. v. Siemens Med. Sys., Inc., 879 F.2d 1005 (2d Cir. 1989) (applying Champion in modified-genuine-product context)
- McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir. 1979) (strength of mark assessed by marketplace distinctiveness)