335 F.Supp.3d 566
S.D.N.Y.2018Background
- Hypnotic Hats, Ltd. (Hyp) owns an incontestable federal registration for the word mark HYP for clothing (including socks) and has used HYP in commerce since ~2002; Defendants (Wintermantel Enter., Hype Socks, Hype Cheer) sell socks and later athletic bras under HYPE SOCKS / HYPE CHEER.
- Hyp sent a cease-and-desist in April 2015 after learning of Defendants’ HYPE SOCKS solicitations; Defendants continued using HYPE in catalogs, emails, and a website.
- Defendants primarily sell customized team socks via sales reps to coaches; Hyp primarily sells off-the-shelf socks through large retailers and e-commerce, with limited team or promotional sales.
- Hyp submitted a consumer-survey (Pittaoulis) purporting to show confusion; Defendants moved to exclude the survey and sought summary judgment on all claims.
- The Court considered (1) trademark validity (including fraud allegations), (2) likelihood-of-confusion under the Polaroid factors for both socks and bras, (3) Section 43(a) and common-law unfair competition, and (4) admissibility/weight of the survey.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity / Ownership of HYP mark | HYP is a registered, incontestable mark used continuously; registration creates a presumption of ownership | Defendants allege fraud in applications (misstated first-use or goods) so mark is invalid | Court: HYP is incontestable; defendants failed to prove fraud by clear and convincing evidence, so mark stands |
| Likelihood of confusion (socks) | HYP is strong and visually/aurally similar to HYPE; survey shows non-trivial confusion among coaches | Marks differ in marketplace presentation; different channels/customers (coaches vs. retail consumers) reduce confusion; minimal actual confusion; no bad faith | Court: Balancing Polaroid factors — strength favors Hyp but overall no likelihood of confusion; summary judgment for Defendants on infringement |
| Likelihood of confusion (bras) | Hyp asserts HYP covers "clothing" including bras; thus HYPE CHEER could infringe | Defendants argue HYP not used on bras (no point-of-sale use); even if covered, no likelihood of confusion | Court: Assumed without deciding that "clothing" could cover bras but found no use of HYP on Hyp’s bras and no likelihood of confusion; summary judgment for Defendants |
| Admissibility/weight of survey evidence | Survey (two-room/Squirt) shows net confusion (12% overall; 21.6% for coaches) supporting actual confusion | Survey methodology flawed: improper universe/proximity for Squirt, poor distractors, unequal exposures, high control noise, leading/ambiguous questions | Court: Denied Daubert exclusion but afforded the survey only limited weight because of multiple methodological flaws; survey not outcome-determinative |
Key Cases Cited
- Tiffany (NJ) Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) (two-step test: mark protection and likelihood of consumer confusion)
- Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir. 1961) (Polaroid factors for likelihood of confusion)
- Savin Corp. v. Savin Group, 391 F.3d 439 (2d Cir. 2004) (application of Polaroid factors and discussion of actual confusion burden)
- In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (standard for fraud on the PTO: knowing, material misrepresentation; clear-and-convincing proof required)
- Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114 (2d Cir. 2001) (anecdotal inquiries of affiliation do not constitute actual confusion)
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment burden-shifting principles)