Perfect Pearl Co. v. Majestic Pearl & Stone, Inc.
887 F. Supp. 2d 519
S.D.N.Y.2012Background
- Perfect Pearl uses the MAJESTIC marks on pearl jewelry; Majestic Pearl uses MAJESTIC on pearl beads and some jewelry.
- The parties historically sold to retailers/designers; Perfect began direct-to-consumer sales via QVC and QVC.com.
- The dispute centers on exclusive rights to the MAJESTIC marks and potential consumer confusion.
- Majestic first used MAJESTIC in commerce in 1996; Perfect’s earlier, continuous usage predates Majestic’s use.
- Majestic’s registrations for MAJESTIC lapsed; Perfect seeks relief based on senior priority and protectability.
- The court ultimately grants partial summary judgment for Perfect, enjoins Majestic only in the pearl jewelry context, and denies other claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Priority of use of the MAJESTIC marks | Perfect used marks in commerce before Majestic (pre-1996) | Majestic asserts its later adoption/WIPO registration entitles it to use | Perfect priority established; senior user; protection limited to pearl jewelry |
| Protectability of the MAJESTIC marks (distinctiveness) | Marks are inherently distinctive (suggestive) | Marks are descriptive (need secondary meaning) | Marks are suggestive and inherently distinctive; entitled to protection |
| Likelihood of confusion in pearl jewelry | Confusion exists due to similar marks and overlap in market | Confusion limited to pearl jewelry; broader use not necessarily confusing | Likelihood of confusion for pearl jewelry; not for loose pearls/beads |
| False advertising under Lanham Act § 1125(a) | Majestic’s use of the ® after lapse was false advertising | Use of ® after lapse was inadvertent; not material to purchases | Promotional use of ® after lapse is literally false; injunctive relief granted |
| New York dilution/unfair competition claims | Perfect’s senior rights can support NY claims | Lack of bad faith; not enough to support dilution/unfair competition | Deny Majestic's dilution claim; grant NY unfair competition judgment on other grounds; but issues on bad faith unresolved |
Key Cases Cited
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (define distinctiveness categories (generic, descriptive, suggestive, arbitrary))
- Time, Inc. v. Petersen Pub. Co., 173 F.3d 113 (2d Cir.1999) (test for likelihood of confusion; Polaroid framework)
- La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265 (2d Cir.1974) (priority via first use; acquired rights considered)
- Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492 (2d Cir.1961) (Polaroid factors for likelihood of confusion)
- Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir.2005) (strength/diminished protection for medium-strong marks)
- Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209 (2d Cir.2003) (clarifies strength of marks and descriptiveness)
- Estee Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503 (2d Cir.1997) (laudatory marks and suggestionary vs descriptive)
- Menashe v. V Secret Catalogue, Inc., 409 F.Supp.2d 412 (S.D.N.Y.2006) (priority by use; descriptiveness considerations)