MEMORANDUM OPINION AND ORDER
HAIGHT, District Judge:
This dispute between these young, highly successful business enterprises focuses this Court's attention on the commercial value of the simple English word "gear."
Plaintiff Gear, Inc. sues to enjoin defendants from using the mark "L.A. Gear" on its goods or in its corporate names, for cancellation of defendants' trademark registration, and for an accounting. It brings causes of action under sections 32(1) and 43(a) of the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a) ("section 32(1)" and "section 43(a)" respectively), and under New York State law of unfair competition and dilution, N.Y.Gen.Bus.Law § 368-d. Defendants counterclaim for cancellation of plaintiff's registered trademarks, 15 U.S.C. § 1119, and for tortious interference with its business, and seek attorney's fees under 15 U.S.C. § 1117.
Much of the factual background is set forth in this Court's previous Memorandum Opinion and Order dated March 26, 1986, reported at 637 F.Supp. 1323 (S.D.N.Y. 1986), denying plaintiff's motion for a preliminary injunction. Familiarity with that opinion is assumed.
I. The Marks and Goods in Suit
It is useful at the outset to be precise about what marks are at issue and the goods to which they pertain.
Plaintiff has registered the mark GEAR for luggage, garment bags, tote bags, and gym bags;
Plaintiff has also used the mark GEAR on children's clothing. Supplemental Decl. of Charles Gilman ¶ 2; May 5, 1987 Letter of Robert A. Horowitz at 1. To date it has failed to persuade the Patent and Trademark Office to register GEAR for this use. See Def.Ex. 100-6 (final rejection by examiner of plaintiff's registration application). It is pursuing administrative appeals from the denial of registration. Gear has not relied on its common law rights in this unregistered mark in its papers filed in support of this motion; indeed, it was mentioned only in the defendants' papers.
All examples in the record of plaintiff's marks are printed in a type style called "Avant Garde Bold," modified to give a stenciled look. See Saemann Decl. ¶ 20; Def.Ex. 17, 18; Ex. B to Verified Amended Complaint. This sample, a reduction of Defendants' Exhibit 17, is representative:
Defendants' only mark is "L.A. Gear." Their primary product line is "athleisure" and casual footwear, but they also licence the mark for use on clothing. A licensing agreement was also concluded for fabric bags and totes, but defendants' licensee terminated that agreement after it was joined as a defendant in this lawsuit. See 637 F.Supp. at 1332.
For their line of shoes and clothing, defendants have obtained registration for their mark, "L.A. Gear."
Def.Ex. 54. A block letter version using a modified "Tera" type style is also often used:
Def.Ex. 9. See Saemann Aff. ¶ 19; Def.'s Rule 3(g) Statement ¶ 1.
II. Cancellation of Plaintiff's Registrations
Section 37 of the Lanham Act, 15 U.S.C. § 1119, empowers the court to order the cancellation of registrations in any civil action in which the validity of the mark is placed in issue. Dymo Industries v. Tapeprinter, Inc., 326 F.2d 141, 143 (9th Cir. 1964) (per curiam). Thus, in an infringement action by a holder of a registered mark, the defendant may counterclaim for cancellation. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 7, 13-14 (2d Cir.1976) (Friendly, J.); 2 J.T. McCarthy, Trademarks and Unfair Competition § 30:32 (2d ed. 1984). Defendants contend plaintiff's registrations should be cancelled because the registration applications contained fraudulent misstatements.
Trademark registrations obtained by fraud are subject to cancellation. Edison Brothers Stores, Inc. v. Cosmair, Inc., 651 F.Supp. 1547, 1563 (S.D.N.Y.1987). However, misstatements in registrations applications will cause cancellation only if
Defendants point to a number of alleged falsehoods in several of Gear's registration applications. First, they note that Bettye Martin Musham, plaintiff's president, founder and chief executive officer, testified at her deposition that the mark GEAR was designed in 1978,
Next, defendants note that plaintiff falsely identified footwear as goods covered by its GEARWEAR mark, registration number '409. Def.Ex. 51. Plaintiff's amended application to register "GEAR" for children's clothing also included footwear. Def.Ex. 100. In fact, plaintiff has never used any of its marks on footwear. Plaintiff's Response to Request for Admissions 3 and 4, Def.Ex. 99. However, defendant has not even attempted to argue that this conceded falsehood was material.
Finally, defendants assert that Musham swore falsely that certain substitute specimens submitted to the Patent and Trademark Office of the use of "GEARWEAR" had been used in commerce prior to the filing date of March 31, 1980. In fact, the substitute specimens were prepared after May 12, 1982, the date the examiner requested the substitute specimens.
I agree with plaintiff, however, that it substantially complied with the examiner's request if it provided specimens representative of use before March 31, 1980. A successful business would not ordinarily be expected to have on hand a inventory of two-year old goods. Even if the defendants' reading comports with the examiner's intent, I cannot assume the plaintiff knew that was the examiner's intent when it filed the substitute specimens.
The question, then, is whether the substitute specimens were truly representative of the use of the mark before the filing date. Put this question at her deposition, Musham's memory failed her. See Plaintiff's Reply Mem. at 4. Defendants have provided no other proof of fraud. Despite Musham's startling lapse, I hold defendants have failed to show the absence of a genuine issue of fact on this material issue.
Accordingly, defendants' motion for summary judgment on the issue of cancellation is denied. F.R.Civ.P. 56(c).
III. Plaintiff's Lanham Act Claims 16
A. "L.A. Gear" as a Trademark on Clothing and Shoes
1. Eligibility of "Gear" for Protection
Trademark law recognizes the commercial drawing power of congenial symbols — particularly, words and their presentation. Mishawaka Manufacturing Co. v. S.S. Kresge Co., 316 U.S. 203, 205, 62 S.Ct. 1022, 1024, 86 L.Ed. 1381 (1942). However, the eligibility of a word or phrase for trademark protection and the scope of any such protection vary. Four familiar categories of terms have been identified. In ascending order of protection, they are: generic, descriptive, suggestive, and arbitrary or fanciful. Abercrombie & Fitch, supra, 537 F.2d at 9.
A term is generic if it "refers, or has come to be understood as referring, to the genus of which the particular product is a species." Ibid. A generic term "implies reference to every member of a genus and the exclusion of individuating characteristics." Eastern Air Lines, Inc. v. New York Air Lines, Inc., 559 F.Supp. 1270, 1274 (S.D.N.Y.1983). The question is whether the principal significance of the word to the consuming public is as an indication of the nature or class of the article rather than as an indication that it emanated from a particular (possibly anonymous) source. Feathercombs, Inc. v. Solo Products Corp., 306 F.2d 251, 256 (2d Cir.), cert. denied, 371 U.S. 910, 83 S.Ct. 253, 9 L.Ed.2d 170 (1962); see McGregor-Doniger Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir.1979). A generic term is not eligible for trademark protection, and a trademark infringement action cannot be predicated on its use. American Cyanamid v. Connaught Laboratories, Inc., 800 F.2d 306, 308 (2d Cir.1986).
A term is descriptive if it "forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods." Stix Products, Inc. v. United Merchants & Manufacturers Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968) (quoted in Abercrombie & Fitch, supra, 537 F.2d at 11). Because a descriptive term is "`generally useful in approximately [the same] form to all merchants marketing such goods,'" ibid. (quoting 3 Restatement, Torts, § 721 comment a (1938)), it can receive protection only if it has "become distinctive of the applicant's goods in commerce," 15 U.S.C. § 1052(f) — if it has acquired "secondary meaning." McGregor-Doniger, supra, 599 F.2d at 1131. The distinction between descriptive and generic terms is one of degree. "`[A] generic name conveys information with respect to the nature or class of an article, whereas a descriptive term supplies the characteristics and qualities of the article, its color, order, functions, dimensions, and ingredients.'" Stix Products, supra, 295 F.Supp. at 490 n. 36 (quoting 3 R. Callman, The Law of Unfair Competition and Trade-Marks § 70.4 at 1057 (2d ed. 1950)).
Suggestive terms require "imagination, thought and perception to reach a conclusion as to the nature of goods." Abercrombie & Fitch, supra, 537 F.2d at 11 (quoting id. at 488). Fanciful and arbitrary terms are those employing common words in uncommon ways. Ibid. Suggestive and arbitrary or fanciful terms receive trademark protection without proof of secondary meaning. Ibid.
Defining these categories barely suggests the difficulty courts have found applying them. The difficulty of the inquiry is compounded by the fact that the category applied to a term may vary with the commercial context in which the term is used. A term may, for example, be generic when applied to one product and descriptive or suggestive for another. Id. at 9, 10.
In this case, defendants contend that the term "gear" is generic as applied to clothing. Finding no genuine issue of material fact on this question, I hold defendants are correct as a matter of law. F.R.Civ.P. 56(c).
Preliminarily, I note that the statutory presumption that registered marks are not generic, see McGregor-Doniger Inc., supra, 599 F.2d at 1132; 15 U.S. C. § 1115, does not assist plaintiff on this issue. The presumption applies only to "the goods or services specified in the registration." § 1115(a).
I turn, then, to the evidence on this issue.
Evidence of the public's understanding of a term may be found in consumer surveys, dictionary definitions, newspapers and other publications. Northland Aluminum Products, supra, 777 F.2d at 1559. Also probative is generic use by competitors, unchallenged by plaintiff, 1 McCarthy, supra, § 12:2 at 529; see Abercrombie & Fitch, supra, 537 F.2d at 12; testimony of lexicographers, Eastern Air Lines, supra, 559 F.Supp. at 1274-75; generic use of the term by plaintiff, 1 McCarthy, supra, § 12:2 at 529; and use of the term by third parties in trademark registrations. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 916-17 (C.C.P.A.1976).
First, some dictionary definitions. Widely used dictionaries of the English language offer the following as definitions of "gear":
That these definitions are an accurate reflection of one way the word "gear" is commonly used is confirmed by the existence of a number of third-party registrations for trademarks on apparel that include the word "gear." Def.Ex. 56-1, 56-2; Lerner Decl. ¶¶ 53-55. Some are used in connection with words that explicitly suggest a specific use of the apparel ("FIELDGEAR;" "GYM-GEAR"); others are less suggestive ("FIFTHGEAR;" "BODYGEAR;" "REDIGEAR;" "MULTIGEAR") Plaintiff concedes that many of these registered marks are being actively used. Plaintiff's Reply Mem. at 16. And even if there was no evidence of actual use, the registrations would still be evidence of the meaning to the public of the term at issue. See Tektronics, supra, 534 F.2d at 917 (even absent evidence of actual use of registered third-party marks, third party registrations "may be given some weight to show the meaning of a mark in the same way dictionaries are used").
Use of "gear" in periodicals also supports defendants' position. Common use of "gear" to mean wearing apparel is demonstrated by the computer word search by L. Kenneth Rosenthal, whose declaration is part of defendants' moving papers. Representative uses include:
That not all the uses cited by Rosenthal prove his point, see Plaintiff's Reply Mem. at 11-14, does not diminish the evidentiary value of those that do.
The evidence plaintiff offers to prove "gear" is not a generic term for clothing does not save it from summary judgment. The word search by plaintiff's attorney, Judith D. Cohen, demonstrates only that the word "gear" is more frequently used in its several other meanings than as a term for wearing apparel. A word may have more than one generic use, and it is protected in each of its generic uses from appropriation by any one merchant. Abercrombie & Fitch, supra, 537 F.2d at 11. Even if there are other more common synonyms for the same concept, the term at issue is still generic if its principal meaning in the relevant market is generic. S.S. Kresge Co. v. United Factory Outlet, Inc., 598 F.2d 694, 696 (1st Cir. 1979); Eastern Air Lines, supra, 559 F.Supp. at 1275; Loctite Corp. v. National Starch & Chemical, 516 F.Supp. 190, 201 (S.D.N.Y.1981). A merchant may not "impoverish the language of commerce" by appropriating one of several synonyms for its exclusive use. Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir.), cert. denied, 400 U.S. 916, 91 S.Ct. 174, 27 L.Ed. 2d 155 (1970), quoted in American Cyanamid, supra, 800 F.2d at 308.
Plaintiff argues that "gear" is so indefinite that standing alone it does not identify a particular "genus" of goods. Plaintiff's Mem. at 10. Its use by itself, Gear asserts, is arbitrary.
But a term need not "`precisely describe and define the goods'" to be generic. Loctite
Plaintiff makes a point of the publicity and advertising its products have received. That may be evidence of the strength of its mark. McGregor-Doniger Inc., supra, 599 F.2d at 1132; Inc. Publishing Corp., supra, 616 F.Supp. at 379. It does not speak to validity. Id. at 378.
Abercrombie & Fitch, supra, 537 F.2d at 9.
Plaintiff having failed to raise a genuine issue of material fact, I grant defendants' motion for summary judgment on this issue.
2. Equitable Considerations
In infringement cases equitable factors may also play a decisive role. See generally Chandon Champagne Corp. v. San Marino Wine Corp., 335 F.2d 531 (2d Cir.1964) (Friendly, J.). "The nature of the senior user's priority, the senior user's delay in asserting its claim, and the harm to the junior user as compared to the benefit to the senior user that would result from the requested injunctions" are all appropriate considerations. Thompson Medical Co. v. Pfizer, Inc., 753 F.2d 208, 214 (2d Cir.1985).
This Court's Opinion dated March 26, 1986 recounted in detail plaintiff's lethargy in prosecution of its claims. See 637 F.Supp. at 1329-33. For present purposes it is sufficient to say that Gear knew "L.A. Gear" was being licensed for clothing fourteen months before it filed suit and was explicitly told ten months before it brought this action that defendants intended to continue its licensing efforts. Undisputedly, defendants undertook a substantial expansion of their footwear line during this period of silence. Greenberg Decl. ¶ 35; Defendants' Rule 3(g) Statement ¶ 27. See Chandon Champagne Corp., supra, 335 F.2d at 535 ("[an] owner's delay in asserting his rights may lead the defendant to build up innocently an important reliance on the publicity of his mark, so that its loss would cost dearly").
Furthermore, plaintiff knew at least as early as December 11, 1980 that the apparel field was crowded with competitors using the word "gear." On that date, a trademark examiner issued an Office Action citing a pending application to register "LE GEAR" against plaintiff's application to register "GEARWEAR" for the same product line. In an amendment to plaintiff's registration application dated June 11, 1980, plaintiff's counsel — also its present counsel — distinguished "LE GEAR" based on its commercial impression and convinced the Office to register plaintiff's mark. Plaintiff knew it was squeezing its mark into an already dense crowd. See Lerner Decl. ¶¶ 9, 21-26. Cf. 1 McCarthy, supra, § 11:26 at 511 ("a mark which is hemmed in on all sides by similar marks on similar goods cannot be very `distinctive'").
To compel defendants to change their corporate names and completely forego use of their well-publicized mark would be devastating to their business. In contrast, even if plaintiff loses some sales or potential licensees because "L.A. Gear" continues to be used on clothing and footwear, the harm to plaintiff from denial of the sought-after injunction in these product lines would surely be less severe.
In contrast, evidence of bad faith on defendants' part is entirely lacking. Defendants removed an improper statutory notice when its impropriety was called to its attention. Plaintiff's claim that "L.A. Gear" is so close to "GEAR" that only bad faith accounts for its adoption is unpersuasive. Those involved in the choice of defendants' mark each swear they had never heard "GEAR," and plaintiff does not suggest it has even tried to cross-examine them at depositions on this question. The abundance of other marks using the word "gear" makes plaintiff's self-aggrandizing argument untenable.
In my view, plaintiff does not come before the Court with clean hands, and, at least combined with the tardiness of its suit, this bars the sought-after relief as to clothing and shoes. See L.F. Gaubert & Co. v. Institute of Electrical and Electronics Engineers, 563 F.Supp. 122, 128 (E.D.La.1983); 1 McCarthy, supra, § 19:53 at 1004 ("Use of § 29 statutory notice such as the ["R" in a circle] adjacent a mark not federally registered is a misuse of the federal notice ... [which] may constitute a form of inequitable `unclean hands' so as to bar ... the maintenance of an infringement case ...").
For equitable reasons as well as the generic nature of the word "gear" as applied to apparel, I grant defendants summary judgment under the Lanham Act as to clothing and shoes.
B. "L.A. Gear" on Handbags and Soft Luggage
Plaintiff's claim as to the defendants' use of "L.A. Gear" on bags and luggage stands in a different stead. That is so first because, although I view the question as close, I cannot hold there is no genuine issue of fact whether "gear" is generic as applied to bags and soft luggage.
Plaintiff owns a federally registered trademark on "GEAR" for bags and luggage. The registration affords plaintiff a strong presumption of validity for that mark. Aluminum Fabricating Co. v. Season-All Window Corp., 259 F.2d 314, 316 (2d Cir.1958). Although bags and luggage fall within some of the dictionary definitions quoted at page 515, supra, and although the record includes substantial evidence that "gear" is used generically to refer to bags as well as clothing, see Def.Ex. 83, 102-1,
Having found a genuine issue of fact on validity, I turn to the second branch of a trademark case: infringement. "Given a valid trademark, the critical issue is whether there is any likelihood that an appreciable number of reasonable consumers would be misled, or simply confused, as to the source of the goods in question." C.L.A. S.S. Promotions v. D.S. Magazines, Inc., 753 F.2d 14, 17 (2d Cir.1985). This is a question of fact. Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 115 (2d Cir.1984).
A number of factors bear on this issue. Judge Friendly's well-known "Polaroid formula," so named for Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961), sets forth these factors for consideration: (1) the strength of plaintiff's mark, (2) the degree of similarity between the two marks, (3) the proximity of the products, (4) the likelihood that the prior owner will bridge the gap, (5) actual confusion, (6) defendants' good or bad faith in adopting its mark, (7) the quality of defendant's product, and (8) the sophistication of the buyers.
The Polaroid formula was not meant to be exclusive, and no single factor was meant to be determinative. Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1004 (2d Cir.1983); Polaroid, supra, 287 F.2d at 495. The equitable factors discussed earlier, see pages 17-20 supra, are also appropriate considerations. See generally Edison Brothers, supra, 651 F.Supp. at 1553; Inc. Publishing Corp., supra, 616 F.Supp. at 378.
Applying these factors to the case at bar, I hold summary judgment appropriate for neither plaintiff nor defendants.
Strength: The "strength" of a mark refers to its distinctiveness — "its tendency to identify the goods sold under the mark as emanating from a particular, possibly anonymous, source." McGregor-Doniger, supra, 599 F.2d at 1131. A registered mark is presumptively distinctive, id. at 1132; but that does not mean the mark is strong. See Edison Brothers, supra, 651 F.Supp. at 1555.
There is conflicting evidence on the strength of the mark "GEAR." Plaintiff has impressive sales figures, a substantial advertising budget, and has gained considerable publicity. See McGregor-Doniger, supra, 599 F.2d at 1132; Edison Brothers, supra, 651 F.Supp. at 1554; Inc. Publishing Corp., supra, 616 F.Supp. at 379. On the other hand, there is evidence of extensive third-party use of the word "gear" in other marks. See Edison Brothers, supra, 651 F.Supp at 1555.
Similarity: Close similarity between marks is not dispositive on likelihood of confusion; the question is whether the general impressions conveyed by the two marks are sufficiently alike that consumers are likely to be confused. McGregor-Doniger, supra, 599 F.2d at 1133-34. Even phonetically identical marks on different product lines, see Edison Brothers supra,
The typestyles used for "GEAR" and "L.A. Gear" are quite different, and defendants undisputedly seeks to portray a different image for their products than plaintiff. Indeed, plaintiff's president believes that the presentation of L.A. Gear products is "sleazy" and "in bad taste," Musham Dep. ¶¶ 192, 195, quoted in Plaintiff's Reply Mem. at 17, epithets she presumably would not direct at her own products. If true, the difference in appeal favors defendants. Plus Products, supra, 722 F.2d at 1006-07.
Product Proximity and "Bridging the Gap": Since I am here considering defendants' right to use "L.A. Gear" on bags that appear to be similar in composition and function to plaintiff's, I find the products very close and that there is little if any gap to bridge. On this product line, this factor favors plaintiff.
Actual Confusion: Plaintiff concedes there is no evidence of actual confusion. See Plaintiff's Response to Defendants' Interrogatory Number 14, Def.Ex. 101; Defendants' Rule 3(g) Statement ¶ 7. Proof of actual confusion is not mandatory, but its absence supports an inference of no likelihood of confusion. Inc. Publishing Corp., supra, 616 F.Supp. at 386.
Good Faith: As noted earlier, see page 518 supra, there is insufficient evidence in the record from which a finding of bad faith on defendants' part could be inferred.
Quality of Defendants' Products: Although plaintiff maligns the presentation of defendants' products, it does not contend the products themselves are inferior.
Sophistication of the Buyers: There is no evidence in the record as to the sophistication of each sides' consuming public. Assuming without deciding that potential licensees for whose business the parties are competing are also a relevant market, they may also be assumed a sophisticated lot likely to notice the different commercial impressions conveyed by the marks, to realize that a large number of concerns use "gear" in their trade names, and perhaps even to have noticed the publicity surrounding this lawsuit.
Other Evidence of Likelihood of Confusion: Plaintiff has also submitted a number of affidavits from present Gear licensees who all opine in identical language that use of the trademark L.A. Gear on goods related to their product line would be detrimental to Gear and the licensee's business. Whatever the probative value of these form affidavits, they are not sufficiently weighty to warrant summary judgment for plaintiff.
Plaintiff also points to this statement by defendants' president and chief executive officer Robert Y. Greenberg, quoted in Footwear News October 7, 1985: "[Gear] ha[s] licensed some companies in the same categories as we have and I guess they are getting some pressure from the licensees." Plaintiff says this is an "unequivocal acknowledgment" of likelihood of confusion. Plaintiff's Mem. at 4. I disagree. It acknowledges that some of plaintiff's licensees prefer that "L.A. Gear" not be used on competing products, but the licensees' opinions are not dispositive on the confusion issue. Greenberg conceded nothing on the scope of protection available to the word "gear."
Equitable Considerations: The same equitable considerations discussed in connection with L.A. Gear's clothing and shoes pertain generally to its the "bags" aspect of Gear's prayer for relief. However, I am not convinced they apply in the present context with sufficient force to warrant summary judgment for defendants.
First, defendants' showing of detrimental reliance on plaintiff's delay in bringing suit is weaker in respect of handbags. Since defendants do not appear to be licensing their mark for handbags and luggage at present, an injunction against future use could not be termed "devastating." Compare page 517 supra. There is no evidence of abuse of the statutory notice on handbags. Finally, plaintiff's registration of the "GEAR" mark, with its presumption
Because there is conflicting evidence on this aspect of plaintiff's claims, the parties' cross-motions for summary judgment under the Lanham Act as to use of "L.A. Gear" on bags and soft luggage are denied.
IV. Plaintiff's State Claims
Plaintiff also asserts causes of action under New York common law of unfair competition and under New York's anti-dilution statute, N.Y.Gen.Bus.Law § 368-d.
Essential to the common law unfair competition claim of misappropriation is a showing of bad faith. Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir.1980). Here, there has been no showing of bad faith other than the circumstance of later adoption by defendants; plaintiff has made no effort to challenge defendants' assertions that those who created "L.A. Gear" had never heard of plaintiff or its marks. See pages 517-18, supra. In my view, no reasonable juror could conclude from this evidence that "L.A. Gear" was adopted in bad faith, and I grant summary judgment to defendants on this cause of action. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986).
As to the statutory cause of action, my conclusion that "gear" is generic as applied to apparel disposes of the anti-dilution claim on this product line. See Universal City Studios, supra, 746 F.2d at 120 (to succeed on an anti-dilution claim, plaintiff "`must possess a strong mark — one which has a distinctive quality or has acquired a secondary meaning which is capable of dilution'") (quoting Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 545, 399 N.Y.S.2d 628, 369 N.E.2d 1162 (1977)); Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625 (2d Cir.1983) (section 368-d protects only "extremely strong marks" and may not even protect those that are arbitrary or fanciful).
For handbags and soft luggage, summary judgment is not appropriate for either party. Infringement under section 368-d does not turn on likelihood of confusion, but likelihood of dilution. Id. at 624. Dilution is a "nebulous concept" referring to acts that threaten two distinct aspects of advertising value: "`Junior uses may blur a mark's product identification or they may tarnish the affirmative associations a mark has come to convey.'" Id. at 625 (quoting 3 R. Callman, The Law of Unfair Competition, Trademarks, and Monopolies § 84.2 at 954-55 (footnote omitted)).
Neither party has bothered to apply this definition to the evidence in the present record. Indeed, neither party cited any case setting forth the test for infringement under the anti-dilution. For present purposes, it is sufficient to say that issues of fact remain on the strength of plaintiff's marks, see pages 519-20 supra, precluding summary judgment for plaintiff, and that defendant has not shown that the evidence in the record raises no genuine issue of fact regarding the two interests protected against dilution cited above.
V. Personal Jurisdiction Over L.A. Gear Ltd.
Since plaintiff concedes no in personam jurisdiction lies over L.A. Gear, Ltd., I grant that defendant's motion to dismiss.
VI. Motion to Dismiss by Additional Counterclaim Defendants
Defendants' second counterclaim charges plaintiff and the additional counterclaim defendants, Bettye Martin Musham and William Musham, with tortious interference with defendants' business. The Mushams move to dismiss this counterclaim.
The basis for the Mushams' motion to dismiss these counterclaims is something of a moving target. First, they note the apparently erroneous allegation, made upon information and belief, that the Mushams are residents of New York. In fact, they reside in Pennsylvania. June 24 Aff. of Bettye Martin Musham ¶ 3. Since the Mushams bring no challenge to venue or personal jurisdiction (and could not, having brought this lawsuit here), this error is of no significance.
Next, the Mushams complain that defendants have failed to offer "any reason to single out the Mushams" from the rest of the public "as objects of this Counterclaim." Since the Mushams are officers of plaintiff, their profession of bewilderment at having been "singled out" is frivolous.
The Mushams argue that the actions complained of — specifically, commencing and announcing this lawsuit — are not tortious. But they have cited no authority supporting this proposition and are not entitled to dismissal on this basis for that reason alone. Local Civil Rule 3(b).
Finally, the Mushams assert that the allegations of their personal involvement are insufficient. A simple reading of paragraph 53 demonstrates the falsity of their contention that the allegations are merely conclusory. At least two specific acts — commencement and announcement of this lawsuit — are set forth. Whether those acts state a cause of action has not been properly raised, but the allegations cannot be termed mere conclusions. Compare Harper v. United States, 423 F.Supp. 192, 196 (D.S.C.1976).
The Mushams' contention that the allegations are insufficient to establish their liability for acts they undertook on behalf of the corporation is also meritless.
The Mushams' effort to distinguish National Survival Game, supra, and the cases cited therein is unavailing. They cite no other cases in support of their contention
Because all of the Mushams' arguments are facially or demonstrably frivolous, I grant defendants' application for Rule 11 sanctions. Counsel for the Mushams should have known after reasonable inquiry that this motion, based on the arguments offered, was "destined to fail." Eastway Construction Corp. v. City of New York, 762 F.2d 243, 254 (2d Cir.1985). Prima facie responsibility for the violation in these circumstances falls upon counsel. Anschutz Petroleum Marketing Corp. v. E.W. Saybolt & Co., 112 F.R.D. 355, 358 (S.D.N.Y.1986). If counsel for the Mushams wishes to challenge that determination, I will follow the procedures outlined in Anschutz to resolve the dispute. See id. at 360. Counsel for the parties are directed to make good faith efforts to settle the amount of the sanction, failing which defendants may serve and file affidavits setting forth in detail their reasonable costs and fees of responding to this motion.
Defendants' motion for summary judgment as to its entitlement to use the mark "L.A. Gear" on clothing is granted. The remainder of defendants' motion for summary judgment is denied. Plaintiff's motion for summary judgment is denied in its entirety.
Defendant L.A. Gear Ltd.'s motion to dismiss for lack of personal jurisdiction is granted.
The motion to dismiss the second counterclaim by additional counterclaim defendants Bettye Martin Musham and William Musham is denied. Defendants' application for Rule 11 sanctions on this motion is granted.
Since there has already been considerable opportunity for discovery in this case, I will call this case for trial beginning September 28, 1987 at 10:00 a.m. in Room 307 of this Courthouse. Counsel for the parties are directed to serve and file a joint pre-trial order in accordance with the scheduling order entered concurrently herewith, and to appear for a settlement conference September 17, 1987 at 10:00 a.m. in Room 307 of this Courthouse.
It is SO ORDERED.
Exhibit 102-1 consists of part of the product of a "Nexis" search for uses of "gear" proximate to the word "bag." At least two of these examples involve use of "gear" to mean "bag":
Since I grant defendants' application for sanctions under Rule 11, I need not reach their application for sanctions under 28 U.S.C. § 1927.