OPINION AND ORDER
SCHWARTZ, District Judge.
This action, filed on March 24, 2000, arises out of defendant's use of the term "Slinky" to advertise women's apparel for home shopping customers. Plaintiff, the owner of the trademark in SLINKY for "fabrics used in clothing and household products," alleges claims for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and New York law and dilution under Section 360-1 of the New York General Business Law. Defendant moves for summary judgment as to each of plaintiff's claims on the ground that plaintiff's mark is generic. For the reasons set forth below, the motion is denied.
I. Factual Background
Plaintiff Horizon Mills Corp. ("Horizon")
Horizon alleges that its first use of the term "slinky" as a mark in connection with fabrics, specifically a combination of acetate and spandex, occurred on July 16, 1991. (Defendant QVC, Inc.'s Local Rule 56.1 Statement of Material Facts As to Which There is No Genuine Issue to be Tried ("Def.56.1") ¶ 1; Plaintiff's Local Rule 56.1 Statement of Material Facts As to Which There is A Genuine Issue to Be Tried ("Pl.56.1") ¶ 1; Schechter Decl. ¶ 4.) On September 16, 1993, Horizon filed an intent to use application for registration of the mark SLINKY in the United States Patent and Trademark Office ("PTO").
Since Horizon's first use in 1991, certain members of the media, trade, and consuming public have come to employ the term "slinky" to describe a stretchy, fluid or sinuous-looking fabric normally consisting of acetate or spandex, and used in dresses and women's sportswear. QVC states that it uses the terms "slinky," "slinky knit," and "slinky fabric" to describe such fabric and the apparel made therefrom. (Def. Mem. at 19-20.) Plaintiff filed this action to enjoin such use on the ground it is infringing, and to recover damages. Prior to discovery, QVC moved for summary judgment on the ground that the generic nature of the terms in question bar Horizon's claims. QVC's argument is twofold. First, it contends that the term "slinky" was generic to the relevant category of products prior to Horizon's use and registration. (Def. Mem. at 2-6, 21-23.) Second, it contends that the public has appropriated the term "slinky" for the stretchy, fluid, and sinuous fabric and women's apparel made from acetate, spandex and other man-made fibers, therefore precluding exclusive use of the term by any manufacturer. (Def. Mem. at 19.)
A. Summary Judgment Standard
A district court may grant summary judgment only if it is satisfied that "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The burden rests on the moving party to demonstrate the absence of a genuine issue of material fact, which may be satisfied if it can point to the absence of evidence necessary to support an essential element of the non-moving party's claim. Goenaga v. March of Dimes Birth Defects Found., 51 F.3d 14, 18 (2d Cir.1995); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). All inferences and ambiguities are resolved in favor of the party against whom summary judgment is sought. Gallo v. Prudential Residential Servs., L.P., 22 F.3d 1219, 1223 (2d Cir.1994) (citations omitted).
If the moving party meets its burden, the opposing party must set forth "specific facts showing there is a genuine issue for trial." Rule 56(e); see also Brady v. Town of Colchester, 863 F.2d 205, 210 (2d Cir. 1988) ("[W]here the moving party has attempted to demonstrate that the nonmoving party's evidence is insufficient as a matter of law to establish his claim, the burden shifts to the nonmoving party to come forward with persuasive evidence that his claim is not `implausible'.") (citation omitted). When reasonable minds could not differ as to the import of the proffered evidence, then summary judgment is proper. Anderson, 477 U.S. at 250-52, 106 S.Ct. 2505; Bryant v. Maffucci, 923 F.2d 979, 982 (2d Cir.1991). Moreover, "mere conclusory allegations, speculation or conjecture will not avail a party resisting summary judgment." Cifarelli v. Village of Babylon, 93 F.3d 47, 51 (2d Cir.1996). Further, although the determination of the genericness of a trademark is a question of fact, Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir.1992), such determination may be made on a motion for summary judgment. See, e.g., GMT Prods. v. Cablevision of New York City, 816 F.Supp. 207, 210 (S.D.N.Y.1993); Gear, Inc. v. L.A. Gear California, Inc., 670 F.Supp. 508, 514 (S.D.N.Y.1987), vacated in part pursuant to settlement, 13 U.S.P.Q.2d 1655 (S.D.N.Y.1989).
B. Generic Terms under Trademark Law
1. Generic versus Descriptive Terms
Terms are classified in four categories for the purposes of trademark protection. In increasing degrees of distinctiveness, and protectibility, the categories are: (i) generic, (ii) descriptive,
A term is generic when it refers to the genus or class of product, rather than a particular product; a generic term is one which is commonly used as the name for a type of goods. Murphy Door Bed Co. v.
Descriptive terms are those that describe a thing, or "how it is," rather than name that thing, or "what it is".
C. Testing Genericness
The test for genericness is based upon a term's "primary significance" to the buying public. As Judge Learned Hand stated: "The single question ... in all these cases, is merely one of fact: What do buyers understand by the word for whose use the parties are contending?" Bayer, 272 F. at 509; McCarthy § 12:9 at 12-19
Courts have determined terms to be generic, and hence unprotectible, under two principal circumstances. The first case is where a seller appropriates an existing generic term and claims exclusive rights in it as a "trademark" of that term. In such a case, because the term was generic before the seller used it,
Generic terms need not only be nouns that directly name a product, but also may be adjectives that designate a distinctive characteristic of a genus of products. One well-known example is the Seventh Circuit's decision finding "Light Beer" and "Lite Beer" to be generic names for a type of beer light in body or taste and low in alcoholic and caloric content. See Miller Brewing Co., 561 F.2d at 79-81. Other notable examples of adjectives held to be generic are "matchbox" for a type of toy car, "warehouse" in the context of its use as a shoe store, "safari" as applied to the specific types of clothing one would wear on a safari, and "super glue" for certain strong, rapid-setting adhesives. See J. Kohnstam, Ltd. v. Louis Marx & Co., 47 C.C.P.A. 1080, 280 F.2d 437 (Cust. & Pat. App.1960) (matchbox); Mil-Mar Shoe v. Shonac Corp., 75 F.3d 1153 (7th Cir.1996) (warehouse shoes); Abercrombie & Fitch Co., 537 F.2d 4 (safari clothing); Loctite Corp. v. Nat'l Starch and Chem. Corp., 516 F.Supp. 190 (S.D.N.Y.1981) (super glue).
The second case in which courts have determined a mark to be generic involves matters where a seller establishes trademark rights in a term which a majority of the relevant public then appropriates as
The evidence used to show a term's common usage and understanding by the relevant public is varied. Courts have relied upon evidence such as: (i) proof of widespread use by competitors that has not been contested by the seller; (ii) generic use by the seller himself; (iii) dictionary definitions; (iv) media usage, such as newspaper or magazine articles; and (v) consumer surveys. McCarthy's §§ 12-13, 12-14 at 12-28 to 31; Harley Davidson, 164 F.3d at 811 (quoting Murphy Door Bed, 874 F.2d at 101); In re Northland Aluminum Prods., Inc. 777 F.2d 1556, 1559 (Fed.Cir.1985). While none of such evidentiary sources are required for a finding of genericness, it is unlikely that any of them, standing alone, will constitute conclusive proof that the contested mark has been appropriated by the public. See Murphy Door Bed, 874 F.2d at 101 (stating that while both dictionary definitions and newspaper and magazine use of a term reflect the public's perception, neither was "proof positive" of such perception).
D. Burdens of Proof When Plaintiff Has a Registered Trademark
Under Section 14 of the Lanham Act, 15 U.S.C. § 1064, a registered mark may be cancelled at any time.
If a plaintiff has a federal trademark registration, it constitutes a strong presumption that the term is not generic, or, if merely descriptive, is accorded secondary meaning by the relevant public.
E. Validity of Horizon's Mark
On this summary judgment motion, QVC argues that Horizon's SLINKY mark is invalid because it is generic. The Court must presume the SLINKY mark to be valid because it has been federally registered since 1995. Such registration constitutes prima facie evidence of Horizon's exclusive right to use the term "Slinky" to refer to certain clothing and household products made of acetate and spandex. The burden of production therefore shifts to QVC to provide evidence that the mark is generic. Id. Here, the Court finds, QVC has not adequately met its burden of showing either that (i) that Horizon appropriated a previously generic term for use as a trademark, or that (ii) the term's principal significance among the buying public is a type of material rather than an indication of the source of such material.
1. "Slinky" before Horizon's First Use
Contrary to QVC's contention, (Def. Mem. at 2-6, 21-23), neither the current record nor generally accepted English usage enable the Court to conclude that "slinky" was a generic term when associated with women's apparel before Horizon's first use in 1991. Rather, the adjective "slinky" was, and still is, a descriptive term capable of trademark protection upon a showing of sufficient secondary meaning.
The Court agrees with QVC's analysis that "slinky" is a "common descriptive name," and that "the term `slinky' has long been used in connection with fabric to describe lush, fluid, and clinging fabrics that have a close fit on the figure." (Def. Mem. at 2-3; Reply Memorandum of Law In Support of Defendant QVC Inc.'s Motion for Summary Judgment at 1.) Evidence from dictionary sources supports this point. In particular, the unabridged Random House Dictionary of the English Language 1341 (1983), defined "slinky" especially in relation to women's clothing as "made of soft, often clinging material and fitting the figure closely so as to enhance or flatter one's appearance and movements." The unabridged Webster's Third New International Dictionary 2143 (1981) defined "slinky" as used in women's clothing to mean "following the lines of the figure in a graceful flowing manner." The American Heritage Dictionary 1697 (3d
However, the Court disagrees with QVC that such sources reflect that "slinky" was generic as to certain women's apparel before Horizon first used the term, as opposed to merely descriptive. As the above references demonstrate, the adjective "slinky" describes the characteristics or qualities of several classes of garments which have a sinuous, sleek texture that hugs the body, rather than identifying a specific material or garment. Cf. Gear, Inc., 670 F.Supp. at 514. The term does not identify what a product is, but rather how several products are. The critical distinction may be observed by comparing this case to the Seventh Circuit cases considering the protectibility of the adjectival terms in "light beer" and "tasty salad dressing." In the former case, Miller Brewing Co., 561 F.2d at 80-81, the court found that the term "light," when applied to "beer," had long referred to a class of beer with a light color, flavor, body, alcoholic content, or a combination of these elements. The court therefore found that the plaintiff's proposed trademark, "Light Beer" or "Lite Beer," was generic because such terms clearly identified a particularly genus of alcohol.
Like "tasty," "custom blended," or "softsoap," the term "slinky," as it existed before Horizon's use and registration, did not classify the garments to which it was attached, e.g. "slinky evening gown" or "slinky dress," but rather described the visual or textual characteristics of such garments. Horizon adopted the descriptive term in developing its new material consisting of acetate and spandex most likely because its material had similar qualities to garments that had historically been described as slinky. Horizon itself described its product as "a knit fabric using bright acetate and spandex ... [which] allows the fabric, and hence, garments to drape in a very natural manner which is highly flattering to the wearer." (Schechter Decl. ¶ 4.) Accordingly, the Court finds that Horizon's mark is not an historically generic term, but a descriptive one, and that with sufficient secondary meaning,
2. SLINKY After Horizon's First Use
Even if the term "slinky" were not generic prior to Horizon's first use, it would still be generic if the current public perception of the term supported such finding. While QVC has presented approximately 60 examples of the term's media usage from 1991 to the present—in magazine and newspaper articles, trade publications, and Internet advertisements (Guerriero Decl., Exs. 14-74)—the Court declines to find, on this evidence alone, that the primary significance of "slinky" to the buying public is merely a product, without association with Horizon as the source.
The media sources that QVC cites are frequently ambiguous as to the public perception of the products at issue. First, more than one half of the periodical articles originate from a trade publication, Women's Wear Daily. (Exs. 14-16, 18, 20, 22, 29, 32-40, 43-45, 47-48, 50-51, 53, 57, 63, 65 to Guerriero Decl.) The opinion of trade professionals or fashion experts is not the focus of a test of genericness for a mass consumed product such as the "slinky" garments at issue; rather, the test is the "common usage or understanding
Second, there is significant ambiguity in many of the sources as to the object of the "slinky" designation. In those articles which use "slinky" as an adjective, it is not clear whether the word is used to refer to apparel consisting of acetate and spandex, or merely to describe the sinuous, close-fitting, and flattering nature of such products. (See Ex. 16 to Guerriero Decl. ("slinky fabric of acetate and Lycra")); Id. Ex. 30 ("the slinky retro tops, typically made of lycra or spandex, that fit close to the body"); Id. Ex. 33 ("The fabric is `slinky' and gives the garment nice drape."); Id. Ex. 49 ("flattering to the heavy-set women is a slinky acetate-spandex fabric used for tunics"); Id. Ex. 54 ("While the DuPont slinky fabric is decidedly down market"); Id. Ex. 59 ("DKNY Kids looks that take advantage of Lycra's properties include ... slinky knit tank tops and apron dresses"). Further, although they do not refer directly to Horizon, several references to "slinky" are either in quotations or capitalized, which may indicate a reference to the trademarked product as opposed to a commonly descriptive usage. Several of the periodical references also demonstrate this ambiguity. (See id. Ex. 18 (the "acetate and Lycra rib with a distressed look the firm calls Slinky")); Id. Ex. 21 ("manufacturers are using innovative fabrics, such as the shiny spandex-like material "Sparkle Slinky"); Id. Ex. 41 ("a luxurious acetate spandex material aptly called "slinky fabric"); Id. Ex. 43 ("develop a line of large-size fashions featuring, for example `slinky', a stretch fabric"); Id. Ex. 45 ("There are plenty of `slinky' cardigans, shirts, and skirts in rayon and acetate."); Id. Ex. 62 ("she likes to wear jeans, paired with a `Slinky' T-shirt"); Id. Ex. 64 ("a new fabric simply known as `slinky' fabric"). Similar ambiguity pervades most of QVC's Internet references and the company's own use of the "Slinky" on its iQVC retail site. (See, e.g., id. Ex. 67) ("Slinky is an incredible fabric that looks great on all sizes and body types ... Dresses and sportswear made of Slinky are perfect for work, casual, or dressy occasions; Id. ("Detailed Index of Nylon Acetate `Slinky' Lycra")); Id. (SLINKY $13.95 yd ... Sewing with Slinky is quick and easy ... ); Id. Ex. 70 ("Slinky Knit and Stretch Lace
Third, contrary to QVC's suggestion, the absence of mention of the trademark holder and the absence of a trademark designation (e.g. ® or TM) in the media is not significant evidence of the generic nature of a mark. 15 U.S.C. § 1111 (stating mechanism by which "a registrant of a mark registered in the [PTO] may give notice that his mark is registered") (emphasis added). The two articles that do mention Horizon by name recognize it as the trademark holder and, apparently in deference to Horizon's rights, capitalize the term "Slinky." (Ex. 25 to Guerriero Decl.) ("The acetate/Lycra fabrics called Slinky Knit (a term trademarked by Horizon Fabrics but commonly used to describe similar fabrics from other manufacturers) has been taking the fashion world by storm, appearing in the lines of top designers and manufacturers and in all the clothing stores."); Id. Ex. 26 ("Although the name Slinky knit has been trademarked by Horizon Fabrics, it is also used to describe similar fabrics made by other mills.") While the authors' recognition that "slinky" is "commonly used to describe similar fabrics by other manufacturers" indicates that there may be substantial infringing activity, the acknowledgment of the trademark holder's rights reflects that the buying public is aware of such rights and suggests that "genericide" has not occurred.
Fourth, the characterization of the "slinky" fabric as "new" by sources published over the last five years also indicates that the public perception may not be uniform, and it is too early to tell whether the term has been so adopted by the public as to become generic. (Id. Ex. 27 (stating in Nov. 1998 article, What in the world is this new fabric called slinky knit?)); Id. Ex. 35 (stating in Oct. 1996 article that "[n]ovelties like chenille, velour, and slinkies in acetate, nylon and polyester-rayon blends have been doing very well"); Id. Ex. 46 (stating in Sept. 1997 article that "[n]early new is slinky, a clingy Lycra-like material"); Id. Ex. 64 (describing in Mar. 2000 article "a new fabric simply known as `slinky' fabric"); cf. King-Seeley, 321 F.2d at 579 (holding that "Thermos" mark had become part of the public domain because of several factors which occurred between 1907 and 1962); Murphy Door Bed, 874 F.2d at 101 (holding that "Murphy Bed" was a generic term and describing process by which the Murphy Bed became generic, which occurred over several decades).
Fifth, the media sources that QVC provides are the only evidence it presents to
The record reflects that Horizon's "Slinky" fabric has become a commercial success, both to Horizon and to other fabric manufacturers. (Schechter Decl. ¶¶ 5-8, Ex. 2; Guerriero Decl.) Several other mills are currently manufacturing similar fabrics and selling them on the market under the "slinky" designation. It also appears, from the evidence submitted by QVC, that Horizon's mark has been adopted by an undefined percentage of the buying public as a generic term for fabrics or women's apparel consisting of acetate and spandex, or like materials.
For the foregoing reasons, QVC's motion for summary judgment is denied.