Pretty Girl, Inc. v. Pretty Girl Fashions, Inc.
2011 U.S. Dist. LEXIS 25755
| E.D.N.Y | 2011Background
- Plaintiff Pretty Girl, Inc. operates 33 retail clothing stores in the NYC area and has used the name Pretty Girl since 1985.
- Plaintiff registered the trademark Pretty Girl with the USPTO in November 2010; a service mark application is pending.
- Defendants opened a Queens store in December 2010 under the name Pretty Girl Fashions, Inc. and use the mark Pretty Girl Fashions on signage, materials, and products.
- Plaintiff sent a cease-and-desist on December 30, 2010; Defendants did not comply.
- Plaintiff filed suit on February 10, 2011 asserting Lanham Act § 43(a) infringement and several NY state law claims; Defendants did not respond.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Pretty Girl is protectable under § 43(a). | Pretty Girl is distinctive (descriptive/suggestive) and, as a registered mark, is protectible. | Not provided in record; implied challenge to protectability due to similarity; court resolved in plaintiff's favor. | Yes; mark is distinctive and protectible. |
| Whether Defendants' use of Pretty Girl Fashions is likely to cause consumer confusion with Plaintiff's mark. | Identical core mark with only a generic add-on; direct competition in same market increases confusion. | Not addressed; court found likelihood of confusion. | Likely to cause consumer confusion. |
| Whether Plaintiff demonstrates irreparable harm and inadequacy of damages absent injunction. | Loss of goodwill and reputation is irreparable; ongoing infringement warrants relief. | Not addressed; court concluded irreparable harm exists. | Irreparable harm shown; remedies at law inadequate. |
| Whether balance of hardships and public interest favor relief. | Harm to brand and customers outweighs Defendants' inconvenience. | Harm to Defendants if forced to change name; court weighed against. | Equities favor Plaintiff; public interest supports injunction. |
Key Cases Cited
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir.2009) (protectible marks and credibility considerations under § 43(a))
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (Supreme Court 1992) (distinctiveness governs protection without secondary meaning for registered marks)
- Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337 (2d Cir.1999) (descriptive vs. distinctive marks and secondary meaning considerations)
- Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072 (2d Cir.1993) (two-prong test for likelihood of confusion in § 43(a) claims)
- Virgin Enterprises, Ltd. v. Nawab, 335 F.3d 141 (2d Cir.2003) (initial framework for likelihood of confusion and irreparable harm)
- Salinger v. Colting, 607 F.3d 68 (2d Cir.2010) (adopts five-factor approach for preliminary injunction post-eBay)
- eBay, Inc. v. MercExchange, 547 U.S. 388 (Supreme Court 2006) (establishes five-factor test for injunctions in equity)
- Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976) (classification of marks on spectrum from generic to fanciful)
- Zino Davidoff S.A. v. CVS Corp., 571 F.3d 238 (2d Cir.2009) (strength of mark includes inherent and acquired distinctiveness)
- Virgin Enterprises, Ltd. v. Nawab, 335 F.3d 141 (2d Cir.2003) (discussion of Polaroid factors and confusion standards)
- Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739 (2d Cir.1998) (consumer sophistication and confusion considerations)
- Weight Watchers Int'l, Inc. v. Luigino's, Inc., 423 F.3d 137 (2d Cir.2005) (presumption of irreparable injury in trademark cases with likelihood of confusion)
- Time, Inc. v. Petersen Publ'g Co. L.L.C., 173 F.3d 113 (2d Cir.1999) (copyright/injunction framework in circuit courts)
- BrO, 473 F.2d 1062 (2d Cir.1973) (placeholder to avoid empty entries)