58 F. Supp. 3d 197
N.D.N.Y.2014Background
- Plaintiff Legends Are Forever, Inc. (LAF) operates a Cooperstown, NY baseball-themed souvenir shop selling autographed memorabilia and MLB apparel.
- LAF’s owner conceived the phrase Legends Are Forever; it registered U.S. trademark No. 3,731,889 for LEGENDS ARE FOREVER in December 2009.
- Nike, Inc. designs and sells athletic footwear and apparel and has widely recognized NIKE and swoosh marks; Nike pursued potential use of the phrase in Kobe Bryant marketing efforts.
- In 2011, Nike produced a six-minute Black Mamba promotional film; after viewing, LAF attempted to negotiate use of the phrase but Nike did not pursue the offer.
- Nike designed a Kobe Bryant line of apparel; initial designs included the phrase Legends are Forever on a non-sold shirt; Nike ultimately chose Legends live forever for the Black Mamba Shirt.
- LAF sued in September 2012 alleging federal trademark infringement, unfair competition, dilution, and NY GBL § 349 claims; Nike moved for summary judgment and is granted summary judgment as to all claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the Asserted Mark is protectable and likely to cause confusion | LAF’s mark is protectable and may cause confusion among consumers | The mark is at best only suggestive and lacks acquired secondary meaning; confusion unlikely | No confusion; mark weak and not protectable against infringement |
| Whether Nike’s use dilutes LAF’s mark | Mark is famous and subject to dilution protection | Mark is not famous; not entitled to dilution protection | No federal dilution claim; mark not famous |
| Whether NY GBL § 349 claim survives | Section 349 supports relief for deceptive acts harming consumers | Trademark dispute does not show direct consumer harm required by § 349 | Section 349 claim fails; no direct consumer harm shown |
| Whether Plaintiff’s Rule 56(d) request warrants additional discovery | Requests time to obtain expert evidence to oppose summary judgment | Plaintiff had ample time for discovery and failed to act | Rule 56(d) request denied |
Key Cases Cited
- Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) (two-prong test for infringement and confusion; strength and likelihood factors)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (eight-factor likelihood of confusion test)
- Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006) (multi-factor analysis of similarity and source confusion)
- Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739 (2d Cir. 1998) (strength and acquired distinctiveness framework for marks)
- Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005) (describes strength and secondary meaning considerations)
- Time, Inc. v. Petersen Publ’g Co. L.L.C., 173 F.3d 113 (2d Cir. 1999) (secondary meaning framework and protectiveness of marks)
- Morningside Grp. Ltd. v. Morningside Capital Grp., L.L.C., 182 F.3d 133 (2d Cir. 1999) (consumer sophistication and factor-based analysis guidance)
- Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (dilution analysis framework for famous marks)