Dan-Foam a/S v. Brand Named Beds, LLC, 06 Civ. 6350(SAS).
| Decision Date | 04 May 2007 |
| Docket Number | No. 06 Civ. 6350(SAS).,06 Civ. 6350(SAS). |
| Citation | 500 F.Supp.2d 296 |
| Parties | DAN-FOAM A/S and Tempur-Pedic, Inc., Plaintiffs, v. BRAND NAMED BEDS, LLC d/b/a BrandNameBeds4Less, Defendant. |
| Court | U.S. District Court — Southern District of New York |
Edward F. Maluf, Esq., Philip L. Blum, Bingham McCutchen LLP, New York City, for Plaintiffs.
Bruce D. Katz, Esq., Bruce D. Katz & Associates, New York City, for Defendant.
Plaintiffs Dan-Foam A/S and Tempur-Pedic, Inc. (collectively, "Tempur-Pedic"), manufacturers and distributors of premium mattresses, pillows, and other foambased products, bring this action against defendant Brand Name Beds, LLC d/b/a brandnamebedsforless ("BNB"), alleging: (1) trademark infringement in violation of section 32 of the Lanham Act ("the Act");1 (2) "palming off' in violation of section 43 of the Act;2 (3) trademark dilution in violation of section 43 of the Act;3 (4) trademark dilution in violation of New York General Business Law section 360-1; (5) unfair competition in violation of New York General Business Law sections 349 and 350; and (6) tortious interference with existing contractual relations.4 BNB brings counter-claims seeking a declaratory judgment that it is not engaging in trademark infringement, palming off, tarnishment, or unfair competition,5 and alleging: (1) a per se violation of section 1 of the Sherman Act;6 (2) a rule of reason violation of Section 1 of the Sherman Act;7 and (3) common law unfair competition.8 BNB now moves for summary judgment on all of Tempur-Pedic's claims.9 The issues to be decided on this motion are (1) whether Tempur-Pedic's product warranty is available to consumers who purchase TEMPUR-PEDIC® mattresses from BNB; and (2) what effect the availability of a warranty (or lack thereof) for the TEMPUR-PEDIC® mattresses sold by BNB has on Tempur-Pedic's claims for trademark infringement and dilution.10 For the reasons stated below, BNB's motion is denied.
Dan-Foam is a Danish corporation that manufactures premium foam-based mattresses, pillows, cushions and "other comfort products" sold under the TEMPUR-PEDIC® trademark.12 Tempur-Pedic is a Kentucky corporation that manufactures, markets, licenses and distributes the above products, and is a licensee of the TEMPUR-PEDIC® trademark.13 BNB is a Louisiana limited liability company that sells viscoelastic foam bedding products, including TEMPUR-PEDIC® mattresses, over the internet.14
The TEMPUR-PEDIC® trademark was registered on the Principal Register of the United States Patent and Trademark Office as United States Trademark Registration No. 1,85:3,088 on September 6, 1994.15 The trademark is used in connection with Tempur-Pedic's mattresses, pillows, cushions and other comfort and bedding products.16 Tempur-Pedic claims that "[o]ver the last three years, Dan-Foam and Tempur-Pedic have spent in excess of $250 million in connection with their advertisement and promotion of products bearing the TEMPUR-PEDIC® trademark in order to establish this trademark in the minds of consumers as a source of highquality bedding products."17
TEMPUR-PEDIC® products are made from TEMPUR Material, a type of viscoelastic foam that is proprietary to Tempur-Pedic.18 TEMPUR Material
conforms to each user's personal body shape, weight and temperature .... [and] consists of microscopic cells that literally shift position and reorganize themselves to conform to the exact contours, weight and temperature of a user's body. As a person lies down on a Tempur-Pedic mattress, the heavier parts of the body, typically the hips, sink in further than the lighter parts, such as the feet. As the hips sink in, the material consisting of these cells then rises to meet the upper thighs and lower back, and eventually fills any gaps along the contour of the back of the body....
... As the material molds to the shape of the user's body, the body as a whole becomes supported in an anatomically correct position with the neck and spine in perfect alignment.
Thus, the pressure that a body normally applies to the back and neck muscles when lying down on a conventional mattress is evenly distributed throughout the body. Consequently, neck and back ailments can be considerably relieved.19
Tempur-Pedic currently sells the following mattress models, all of which carry the TEMPUR-PEDIC® trademark, and which are comprised of variously layered TEMPUR Material: The OriginalBed, The ClassicBed, The DeluxeBed, The RhapsodyBed, The CelebrityBed, and The GrandBed.20 Tempur-Pedic also sells foundations for its mattresses, as well as mattress toppers, pillows, and cushions made from TEMPUR Material.21 TEPUR-PEDIC® mattresses "can last much longer than conventional products if properly handled from the moment of manufacture, through delivery to and proper usage by the customer."22
Tempur-Pedic provides a twenty-year warranty that is "valid only to the original purchaser of the product."24 A critical dispute at the crux of this motion for summary judgment is the meaning of "original purchaser." The parties are in disagreement as to whether consumers who have purchased TEMPUR-PEDIC® mattresses from BNB hold "valid" warranties. BNB asserts that "[t]he Limited Warranty covering Plaintiffs Tempur-Pedic branded goods extends to consumers of these products regardless of whether the product was purchased directly from Tempur-Pedic, from an authorized dealer of Tempur-Pedic products, or from an unauthorized dealer."25 Tempur-Pedic, on the other hand, asserts that 26 The Warranty states that if the purchaser "did not purchase the mattress directly from Tempur-Pedic International Inc.," the purchaser "must provide proof of purchase for any warranty claim."27
According to Tempur-Pedic, the Warranty accompanying its authorized products is unique.28 For the first ten years of the warranty period, "Tempur — Pedic provides a complete warranty, followed by a declining pro rata recovery of the cost of a new mattress over the course of the next ten years."29 Specifically, during the first ten years of the warranty, "your Tempur-Pedic Swedish MattressTM will be replaced or repaired at our option, without cost to you, should it be deemed defective because of faulty workmanship or structural defects."30 During the final ten years of the warranty, Tempur-Pedic will "at our option, repair the mattress at a handling cost to you, or replace the mattress at a prorated charge to you;" this charge is fifty percent of the original purchase price during the first year of the pro-rated period, and increases by five percent each subsequent year until the expiration of the warranty period.31 According to the Warranty, its coverage is voided if "inappropriate manufacturers' foundations or box springs" are substituted for the "firm, wood, completely flat, non-spring foundations" that TEMPUR-PEDIC® mattresses have been "designed to work with," or if "the mattress, foundation, or cover has been physically abused, damaged, burned, cut or torn."32
Tempur-Pedic argues that "there are few, if any, other mattress and home product manufacturers that provide such extensive warranty protection for their products."33 As such, "[b]y providing a lengthy warranty period, Tempur-Pedic is communicating that its product is of extremely high quality," thus "enhancing the TEMPUR-PEDIC® brand itself.34
Tempur-Pedic maintains an "authorized network" of sellers for its TEMPUR-PEDIC® products.35 This network includes Tempur-Pedic itself, physicians and other health care professionals, general bedding retailers, and other retailers such as Brookstone.36 To ensure quality control throughout this network, Tempur-Pedic monitors these retailers and trains their staff on the proper use and care of Tempur-Pedic's products; the retailers are instructed to pass this information on to consumers.37 Territory Sales Managers visit authorized retailers' stores after initial retail training in order to "ensure that retailers in each sales territory incorporate the Tempur-Pedic training and are actually providing correct information to consumers."38
Authorized Tempur-Pedic retailers and shippers are also trained in the proper delivery and handling of TEMPUR-PEDIC® mattresses, as the TEMPUR Material is sensitive to heat and cold and can be damaged if not handled properly.39 Specifically, "the proper method for storing and delivering a Tempur-Pedic mattress is to lay it flat in its original product packaging."40 Because the TEMPUR material stiffens in temperatures below fifty degrees Fahrenheit, if Tempur-Pedic's mattresses are folded during cold weather delivery or installation, and then forced flat while still in the stiffened state, the TEMPUR Material becomes "permanently damaged" such that the mattress can no longer "be expected to function as intended for the life of the warranty."41 In order to prevent this permanent damage from occurring, "[a]uthorized delivery personnel know upon arriving to a customer's home, where the mattress needs to be folded in order to fit around a corner or up a staircase, that they should wait a few hours before finishing the delivery so that the mattress can soften and can thus be briefly folded with the top side of the mattress inwards."42 During winter deliveries in the Northern United States and Canada, authorized delivery personnel for Tempur-Pedic will first place...
To continue reading
Request your trial
-
Tiffany (Nj) Inc. v. Ebay, Inc.
...(PCD), 2007 U.S. Dist. LEXIS 58507, at *36-37, 2007 WL 2318819, at *12-13 (D.Conn.2007); Dan-Foam A/S & Tempur-Pedic, Inc. v. Brand Named Beds, LLC, 500 F.Supp.2d 296, 306 (S.D.N.Y.2007). ...
-
New World Solutions, Inc. v. NameMedia Inc.
...Starbucks Corp. , 736 F.3d at 202 (alteration omitted) (quoting 15 U.S.C. § 1125(c)(1) ); see also Dan – Foam A/S v. Brand Named Beds, LLC , 500 F.Supp.2d 296, 306–08 & n. 87 (S.D.N.Y.2007) (same). The TDRA applies to a claim filed before the statute went into effect “to the extent that [th......
-
The N.Y. City Triathlon LLC v. Nyc Triathlon Club Inc
...may be established in two ways: by blurring or tarnishment of the mark. See 15 U.S.C. § 1125(c)(1); Dan-Foam A/S v. Brand Named Beds, LLC, 500 F.Supp.2d 296, 307 (S.D.N.Y.2007). Blurring is defined as an “association arising from the similarity between a mark or trade name and a famous mark......
-
Schutte Bagclosures Inc. v. Kwik Lok Corp.
...to a particular channel of trade, segment of industry or service, or geographic region.' ") (quoting Dan–Foam A/S v. Brand Named Beds, LLC, 500 F.Supp.2d 296, 307 n. 90 (S.D.N.Y.2007) ). Under federal law, a higher degree of distinctiveness is required for dilution protection than to show a......
-
§ 4.03 Defenses to the Crime of Trademark Counterfeiting
...injunction to consider evidence that the repackaged goods were inferior or deceptive).[259] Dan-Foam v. Brand Named Beds, LLC, 500 F. Supp. 2d 296, 319-20 (S.D.N.Y. 2007) (quoting 15 U.S.C. §§ 1114(1), 1125(c)(1)).[260] Id., 500 F. Supp. 2d at 320.[261] Id., 500 F. Supp. 2d at 313, citing, ......
-
Cheaper Watches and Copyright Law: Navigating "gray Markets" After the Supreme Court's Split in Costco v. Omega, S.a
...2 Corporate Counsel's Guide to Distribution Counseling § 19:3 (2011). 34. Id. 35. See, e.g., Dan-Foam A/S v. Brand Named Beds, LLC, 500 F. Supp. 2d 296, (S.D.N.Y. 2007); Iberia Foods Corp. v. Romeo, 150 F.3d 298 (3d Cir. 1998). 36. See Saravia, supra note 17, at 394-95. 37. 4 Louis Altman a......