Plаintiff-appellant Playtex Products, Inc. (“Playtex” or “plaintiff’) appeals from an order of the United States District Court for the Southern District of New York (Baer, J.) granting summary judgment for defendants Georgia-Pacific Corp. and Fort James Operating Corp. (collectively, “Georgia-Pacific” or “defendants”) and dismissing plaintiffs claims of trademark infringement under 15 U.S.C. § 1141, false designation of origin under 15 U.S.C. § 1125(a), dilution under 15 U.S.C. § 1125(c), dilution under N.Y. Gen. Bus. L. § 360-1, and unfair competition under common law.
See Playtex Prods. Inc. v. Georgia-Pacific Inc.,
BACKGROUND
Over twenty years ago, plaintiff Playtex Products Inc. registered “Wet Ones” as a mark for pre-moistened towelettes with the United States Patent and Trademark Office (“PTO”). “Wet Ones,” according to Playtex, is the market leader for pre-moistened bath tissue, and in the last six years the compаny has sold $170 million worth of these wipes.
Georgia-Pacific Corp. owns the Quilted Northern brand, which has been on the market for about 100 years 1 and has sold $3 billion worth of bath tissue — wet and dry — in the last five years. In 2001, Georgia-Pacific introduced its first generation pre-moistened wipes product, “Quilted Northern Fresh & Moist,” which did not fare well in the market. Shortly thereafter, Georgia-Pacific launched a second-generation product with a new name: “Quilted Northern Moist-Ones.” An intent-to-use aрplication for “Quilted Northern Moist-Ones,” as well as for “Moist-Ones,” was filed with the PTO in April of 2002, and Georgia-Pacific released the new product into the market in July of that year. Though Playtex claims that Georgia-Pacific continues to prosecute the application for “MoisWOnes” (without the “Quilted Northern” name attached), Georgia-Pacific claims to have now abandoned that application and disclaims any intent to use “Moist-Ones” alone. Photograрhs of *161 Georgia-Pacific’s trademark in the record confirm that its wipes are labeled as “Quilted Northern Moisb-Ones” on the packaging.
Playtex responded to Georgia-Pacific’s new product with a lawsuit for trademark infringement under 15 U.S.C. § 1141, for false designation of origin under 15 U.S.C. § 1125(a), for dilution under 15 U.S.C. § 1125(c), for dilution and unfair competition under N.Y. Gen. Bus. L. § 360-1, and for unfair competition under common law. Both parties moved for summary judgment before Judge Harold Baer, Jr. of the Southern District of New York, whо in August 2003 granted Georgia-Pacific’s motion and dismissed Playtex’s claims.
See Playtex Prods. Inc,
DISCUSSION
A. Trademark Infringement
Under 15 U.S.C. § 1114(l)(a), a plaintiff may prevail on a trademark claim upon showing that the defendant used in commerce, without plaintiff’s consent, a “reproduction, counterfeit, copy, or color-able imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive .... ” There are two key components of trademark infringement under this provision: the plaintiff must prove (1) that its trademark is prоtectable and (2) that the defendant’s mark is likely to confuse consumers as to the source or sponsorship of its product.
See Nabisco, Inc. v. Warner-Lambert Co.,
The likelihood-of-confusion inquiry turns on whether “ ‘numerous ordinary prudent purchasers are likely to be misled or confused as to thе source of the product in question because of the entrance in the marketplace of defendant’s mark.’ ”
Cadbury Beverages v. Cott Corp.,
In addressing the likelihood of confusion, courts in the Second Circuit apply the eight factors set forth in
Polaroid Corp.,
(1) the strength of plaintiffs mark;
(2) the similarity of the parties’ marks;
(3) the proximity of the parties’ products in the marketplace;
(4) the likelihood that the plaintiff will “bridge the gap” between the products;
(5) actual consumer confusion between the two marks;
(6) the defendant’s intent in adopting its mark;
(7) the quality of the defendant’s product; and
(8) the sophistication of the relevant consumer group.
See Nabisco II,
Where the predicate facts are beyond dispute, the proper balancing of these factors is considered a question of law.
Id.
When balancing the factors, district courts generally should not treat any single factor as dispositive; nor should a court treat the inquiry as a mechanical process by which the party with the greatest number of factors wins.
Id.
Instead, the court “should focus on the ultimate question of whether consumers are likely to be confused.”
Id.
(citing
Paddington Corp. v. Attiki Imps. & Distribs., Inc.,
On appeal from a grant of summary judgment, the findings with respect to predicate facts underlying each
Polaroid
factor are reviewed with “considerable deference” to the district court.
2
Patsy’s Brand, Inc. v. I.O.B. Realty, Inc.,
1. Applying the Polaroid Factors.
Before turning to the
Polaroid
issues that are central to this appeal, we briefly address those factors which are relatively insignificant here or that are not in serious dispute.
See
2. The Strength of the Mark
We turn next to the
Polaroid
factors discussed more extensively by the district court. The first of these, the strength of a trademark, encompasses two different concеpts: “inherent distinctiveness” and “acquired distinctiveness.”
Virgin,
Acquired distinctiveness, as opposed to inherent distinctiveness, refers to the “recognition plaintiffs mark has earned in the marketplace as a designator of plaintiffs goods or services.”
Brennan’s, Inc.,
Judge Baer concluded that the strength-of-the-mark factor favored Playtex because Wet Ones was a well-established, suggestive mark. 3 We agree with this finding, which Georgia-Pacific’s brief on appeal *164 does not seriously dispute. 4
Georgia-Pacific had previously claimed that Wet Ones was only descriptive. It is true that Wet Ones is descriptive in the sense that each of the words describes an attribute of the product — it is
wet
and it is dispensed
one by one.
As Judge Baer obsеrved, however, the term “Wet Ones,” without more, does not itself conjure up the image of a towelette.
See BIC Corps. v. Far Eastern Source Corp.,
As for the district court’s finding on acquired distinctiveness, there is likewise no error. Judge Baer noted that studies and surveys support Playtex’s claim that Wet Ones is a well-established — indeed, famous — mark.
3. Similarity of the Marks
The crux of Playtex’s appeal is its claim that, contrary to the district court’s finding, the similarity-of-the-marks factor of the
Polaroid
test weighs in favor оf Playtex. In so arguing, Playtex relies on its contention that the junior mark at issue is “MoisWOnes” standing alone, and not “Quilted Northern Moist-Ones.” Defendants, however, disclaim ever having used “Moist Ones” alone and disclaim any intent to use “MoisWOnes” alone. They also aver that they have withdrawn an application filed with the Patent and Trademark Office to use “Moist-Ones” alone. Photographs of the product’s packaging confirm that defendants include the “Quilted Northern” name in the mark. Moreover, plaintiff acknowledged at oral argument that it was not aware of any public use of the mark “Moist-Ones” without “Quilted Northern.” We therefore agree with the district court’s conclusion that defendants’ mark is “Quilted Northern Moist-Ones” and not “Moist-Ones” alone.
See Arrow Fastener Co. v. Stanley Works,
Turning to the question of whether “Quilted Northern Moist-Ones” is, when presented as a whole, confusingly similar to “Wet Ones,” we agree with the district court that it is not. Though “moist” and “wet” are almost synonymous, the words are dissimilar in sound and appearance. There are also differences in the way the products are “packaged and presented to consumers.”
Playtex Prods.,
In contrast to the above line of cases, this Court has also held that, in some circumstances, “the addition of a trade name does not necessarily alleviate the problem of confusion of marks, and indeed, can aggravate it, as ‘a purchaser could well think plaintiff had licensed defendant as a second user.’ ”
Arrow Fastener Co.,
Arrow relies on cases noting that the addition of a trade name does not necessarily alleviate the problem of confusion of marks, and indeed, can aggravate it
We might well have been receptive to Arrow’s argument that the Stanley housemark aggravated rather thаn mitigated the possibility of confusion, had we been concerned with Stanley’s initial use of T50 alone....
Inasmuch as Stanley has represented to this court that it will not use T50 standing alone, the inquiry has shifted. Now we are considering whether Stanley’s use of a six-digit model number that contains the symbol “T50” and appears on the same panel as the Stanley-Bostitch housemark is confusingly similar to Arrow’s use of “Model T-50,” accompanied by its housemark on the top and side panels of Arrow’s packaging.
... [If] multi-digit model numbers appear near Stanley’s housemark — a clear and familiar source of origin — it is unlikely that consumers will find these marks confusingly similar to Arrow’s two-digit mark.
*166 4. Actual Consumer Confusion
Plaintiff also contests the district court’s finding that there was no evidence of actual consumer confusion. Plaintiff makes much of the fact that the search function of the website www.drugstore.com associates “MoisNOnes” with “Wet Ones.” We agree with the district court, howеver, that “the fact that the computer associates ‘moist ones’ with Wet ones’ reflects little, if anything, about whether consumers are actually confused.”
5. Bad Faith
With regard to defendants’ intent, plaintiff argues that Georgia-Pacific was aware of the existence and success of “Wet Ones” and that a jury “could infer from this alone that” Georgia-Pacific acted in bad faith. This is incorrect. Prior knowledge of a senior user’s mark does not, without more,-create an inferеnce of bad faith.
See Arrow Fastener Co.,
6. Polaroid Balancing
Plaintiff complains that it was inappropriate to rule for defendants where five of the-eight
Polaroid
factors weighed in plaintiffs favor. The
Polaroid
inquiry, however, is not a “mechanical process where the pаrty with the greatest number of factors weighing in its favor wins.”
Nabisco II,
Here, the district court did consider all of the factors, and found that, on balance, they favored defendant. We agree with the district court’s Polaroid balancing. Particularly in light of the “dissimilarity in the mark[s] themselves, the differences in the way the products are presented to consumers, and Georgia-Pacific’s prominent use of its own house brand on the product’s package,” we agree with Judge Baer that Playtex has failed to demonstrate a genuine issue of material fact about the likelihood of consumer confusion. See Playtex Prods., 67 U.S.P.Q. 2d at 1929.
B. False Designation of Origin and Unfair Competition
Where marks are too dissimilar to support a claim for trademark infringement, they are likewise too dissimilar to support claims for unfair competition or false designation of origin.
See, e.g., Nabisco II,
C. Federal and State Dilution
We also affirm the district court’s dismissal of plaintiffs dilution claims, though we do not adopt the district court’s reasoning in its entirety.
A plaintiff cannot prevail on a state or federal dilution claim unless the marks at issue are “very” or “substantially similar.”
Fed. Express Corp. v. Fed. Espresso, Inc.,
Plaintiffs federal dilution claim fails also because no evidence of actual dilution exists. Contrary to what the district court stated, actual dilution is an indispensable component of a dilution claim under 15 U.S.C. § 1125(c).
See Moseley v. V Secret Catalogue, Inc.,
CONCLUSION
For the foregoing reasons, we affirm the judgment of the district court dismissing all of Playtex’s claims.
Notes
. For much of its existence, Quilted Northern was known simply as "Northern.”
. We аcknowledge the tension in our prior cases regarding the proper standard of review for predicate facts in an appeal of summary judgment. Language from some cases establishes a clearly-erroneous standard for reviewing the lower court's rulings on the predicate facts,
see, e.g., Nabisco II, 220
F.3d at 45, 46, while other cases state that the standard, while considerably deferential, stops short of the clearly-erroneous standard,
Patsy’s Brand, Inc. v. I.O.B. Realty, Inc.,
. Judge Baer did not expressly refer to "inherent distinctiveness” or "acquired distinctiveness”, but regardless of the terminology he used, it is evident that he engaged in the proper analysis.
. Georgia-Pacific’s brief does describe tire Wet Ones trademark as "descriptive” in the Statement of the Facts, but the brief fails to mention the issue at all in the Summary of the Argument оr Discussion sections.
. In
Sports Authority, Inc. v. Prime Hospitality Corp.,
. We note that New York state law may not require actual dilution, even after
Moseley. See Pfizer, Inc. v. Y2K Shipping & Trading, Inc.,