ES Originals Inc. v. Stride Rite Corp., 82 Civ. 8014 (JES).
| Decision Date | 20 March 1987 |
| Docket Number | No. 82 Civ. 8014 (JES).,82 Civ. 8014 (JES). |
| Citation | 656 F. Supp. 484 |
| Parties | E.S. ORIGINALS INC., Plaintiff, v. The STRIDE RITE CORPORATION, Defendant. |
| Court | U.S. District Court — Southern District of New York |
Taggart & Colucci, New York City (Frank J. Colucci and Robert S. Weisbein, of counsel), for plaintiff.
Graham, Campaign & McCarthy, P.C., New York City (Keith E. Danish, of counsel), and Fish & Richardson, Boston, Mass. (Frank P. Porcelli, John M. Skenyon and Robert E. Hillman, of counsel), for defendant.
In this action for declaratory and injunctive relief, plaintiff E.S. Originals Incorporated ("ESO") seeks a declaration that its use of the trademark "ZIP 'N GO" for its zippered athletic shoes does not infringe the "ZIPS" trademark used by the Stride Rite Corporation ("Stride Rite") for its children's athletic shoes. See Complaint at 3-4. ESO also seeks an injunction barring Stride Rite from charging ESO or any of its customers with trademark infringement or unfair competition by reason of the distribution and sale of footwear bearing the trademark "ZIP 'N GO." See id. at 4. Stride Rite has counterclaimed, alleging that ESO's use of "ZIP 'N GO" constitutes trademark infringement and false designation of origin under the Lanham Act, see 15 U.S.C. §§ 1114(1) and 1125(a) (1982), and unfair competition and trademark infringement under common law. See Answer and Counterclaim at 5-7.1 The parties have agreed that because only Stride Rite is alleging trademark infringement, false designation of origin, and unfair competition, Stride Rite bears the burden of persuasion in this case. See Tr. at 16. Consequently, the Court has treated this case procedurally as if Stride Rite were the plaintiff in an action for trademark infringement, false designation of origin, and unfair competition.
A bench trial was held and both parties filed trial briefs and proposed findings of fact and conclusions of law. Upon considering all of the evidence presented at trial, as well as all of the arguments made by the parties' counsel at trial and in their papers filed with the Court, the Court concludes that Stride Rite is not entitled to judgment on any of its counterclaims. As a consequence, ESO is entitled to the declaratory judgment it seeks, although the Court denies ESO's request for injunctive relief. The following constitutes the Court's findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52.
Stride Rite is a Massachusetts corporation which has been engaged in the children's footwear business since 1919 and is well known for the quality of its children's footwear. See Tr. at 65, 393. Prior to 1976, Stride Rite marketed its children's athletic shoes under the trademark "STRIDE RITE," see id. at 184; however, in or about July, 1976, Stride Rite began marketing a line of children's athletic shoes under the combined name "ZIPS by Stride Rite," which was initially applied to a line of conventional lace-and-tie children's sneakers. See id.2 In 1982, however, Stride Rite added a zippered sneaker to the "ZIPS" line. See DX-J. Stride Rite began marketing its zippered sneaker to the general public in its Fall 1983 advertising campaign. See Tr. at 88-91; DX-J.
Combining "ZIPS" with "by Stride Rite" was the result of a marketing decision by Stride Rite to select a mark that would appeal to both children and their parents. See Tr. at 255, 303, 321, 337. The president of Stride Rite's footwear division testified that Stride Rite's goal was to establish "ZIPS" as a status symbol for children and, at the same time, inform parents that "ZIPS" are quality shoes by Stride Rite. See id. at 106-08, 149, 151. Thus, although "ZIPS" sneakers are targeted to appeal to children, see id. at 129, Stride Rite's promotional materials and television commercials clearly identify "ZIPS" as a Stride Rite shoe and in some instances indicate the availability of this shoe in Stride Rite stores. See Tr. at 151-57. In addition, all "ZIPS" sneakers are plainly marked as "ZIPS by Stride Rite" on the shoes themselves. See id. at 160.
Stride Rite emphasizes the exceptional fit of its "ZIPS," which come in three widths, see id. at 310, and the expertise of "ZIPS" sales personnel, which are specially trained by Stride Rite, see id. at 65. "ZIPS" routinely sell at retail for approximately $20, see id. at 192-94, and are sold almost exclusively at Stride Rite stores, booteries, family stores, and better department stores, see id. at 247-48.
ESO is a New York corporation engaged in the importation, sale, and marketing of footwear throughout the United States. Its products include athletic, work, casual, and dress shoes for all ages. See Tr. at 356.
In early 1982, ESO developed what was apparently the first zippered athletic shoe. See id. at 363-65. The zipper on this shoe runs parallel to the laces and enables the wearer to put on or take off the shoe without untying the laces. See id. at 365. To highlight this zipper feature on its shoes, ESO established "ZIP 'N GO" as its trademark.3 An ESO executive testified that he adopted "ZIP 'N GO" because it suggests that the shoes have a zipper and can be put on quickly. See id.
Prior to the adoption and first use of "ZIP 'N GO" by ESO in May of 1982, ESO's trademark counsel conducted a search to determine the availability of the "ZIP 'N GO" trademark. See Tr. at 365; see also PX-16(A)-(E). The search revealed a number of marks containing the word "zip," including Stride Rite's "ZIPS by Stride Rite," but ESO's counsel concluded that there was no likelihood of confusion between the two marks. See Tr. at 367; see also PX-13. Moreover, as noted supra, Stride Rite did not market a zippered shoe at the time ESO adopted the "ZIP 'N GO" mark; Stride Rite introduced its zippered shoe after ESO adopted the "ZIP 'N GO" mark. An application for registration of the ESO trademark was duly filed in the United States Patent and Trademark Office. See Tr. at 370; see also PX-17.
In contrast to "ZIPS by Stride Rite," ESO's "ZIP 'N GO" sneakers are available in only one width, see Tr. at 313, and are marketed for both children and adults, see id. at 361. Most of ESO's advertising of "ZIP 'N GO" sneakers has been directed to the trade, see id. at 358; however, retailers who purchase "ZIP 'N GO" sneakers from ESO also advertise, and these ads have been targeted to all age groups, id. at 362; see, e.g., DX-Y. "ZIP 'N GO" athletic shoes are not sold to department stores; instead, they are sold primarily to large mass merchandisers such as K-Mart, Zayre, and J.C. Penney. See Tr. at 357.4 Children's sizes of "ZIP 'N GO" sneakers sell at retail for approximately $12 to $15, or 25% to 40% less than "ZIPS by Stride Rite."5
On November 12, 1982, Stride Rite sent letters to ESO and to one of ESO's customers, Edison Brothers, Inc., claiming that the use of ESO's trademark "ZIP 'N GO" infringes Stride Rite's "ZIPS" trademark and demanding that all such use of the mark by ESO be discontinued. See PX-39. Thereafter, on December 2, 1982, ESO commenced this declaratory judgment action against Stride Rite. See Complaint at 1, 4. Stride Rite counterclaimed, seeking an injunction barring any further use by ESO of the "ZIP 'N GO" mark for sneakers and an order preventing the issuance by the United States Patent and Trademark Office of ESO's pending trademark application. See PTO at 3. Stride Rite also seeks recovery of ESO's profits from the sale of its sneakers under the "ZIP 'N GO" mark and treble damages under 15 U.S.C. § 1117. See id. Both parties seek costs and attorney fees.
Neither party disputes that to prevail on a claim of trademark infringement, false designation of origin, or unfair competition under either federal or New York law, the party making the claim must establish likelihood of confusion as to source. See Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624 (2d Cir.1983); Mushroom Makers, Inc. v. R.G. Barry Corp., 441 F.Supp. 1220, 1234 (S.D.N.Y.1977), aff'd, 580 F.2d 44 (2d Cir.1978), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979). In determining whether the requisite likelihood of confusion is present, the pivotal inquiry is "whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir.1978) (per curiam) (citation omitted), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979). As noted supra, the parties agree that since only Stride Rite is alleging trademark infringement, false designation of origin, and unfair competition, Stride Rite bears the burden of proof as to the likelihood of confusion in this case.
Assessing the likelihood of confusion between the two marks requires an examination of the now classic factors discussed in 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).6 These factors include (1) the strength of the senior user's mark; (2) the degree of similarity between the two marks; (3) the competitive proximity of the products; (4) the likelihood the senior user will "bridge the gap"; (5) evidence of actual confusion; (6) the junior user's good faith in adopting its mark; (7) the quality of the junior user's product; (8) and the sophistication of the buyers. See id.
At trial, Stride Rite introduced evidence of its relatively aggressive advertising of "ZIPS" and the significant share of the children's sneaker market held by "ZIPS." See Tr. at 189-90; DX-S. Although the Court concludes from this evidence that the "ZIPS" mark has acquired a sufficient degree of distinctiveness among consumers to entitle the mark to some protection, the strength of "ZIPS" alone does not bar ESO from using the "ZIP 'N GO" mark.7
To continue reading
Request your trial
-
G. Heileman Brewing Co. v. Anheuser-Busch Inc., 84-C-511
...it conveys the product's purpose or characteristics has been held to demonstrate good faith. See E.S. Originals, Inc. v. Stride Rite Corporation, 656 F.Supp. 484, 490 (S.D.N.Y. 1987). 43. The use of a strong house mark virtually precludes confusion between similar marks. See Vitarroz Corpor......
-
Mead Data Cent., Inc. v. Toyota Motor Sales, U.S.A., Inc.
...to that effect. See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1565 (Fed.Cir.1987); E.S. Originals Inc. v. Stride Rite Corp., 656 F.Supp. 484, 490 (S.D.N.Y.1987); Inc. Publishing Corp. v. Manhattan Magazine, Inc., 616 F.Supp. 370, 394-96 (S.D.N.Y.1985), affd, 788 F.2d 3 (......
-
ROAD DAWGS MOTORCYCLE CLUB v. CUSE ROAD DAWGS
...of confusion." McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1133 (2d Cir.1979); see also E.S. Originals Inc. v. Stride Rite Corp., 656 F.Supp. 484, 487 (S.D.N.Y.1987) ("The fact that the `ZIPS' and `ZIP `N GO' marks share a common word does not necessarily render them confusingly s......
-
In re Leslie Fay Companies, Inc., Bankruptcy No. 93 B 41724(TLB)
...on advice of counsel are" indicia to support a finding of good faith. See Lang, 949 F.2d at 583 (citing E.S. Originals Inc. v. Stride Rite Corp., 656 F.Supp. 484 (S.D.N.Y.1987)); Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 909 F.Supp. 896, 907 (S.D.N.Y.1995). However, I f......
-
Thomas R. Lee, Glenn L. Christensen & Eric D. Derosia, Trademarks, Consumer Psychology, and the Sophisticated Consumer
...ultimate consumers of children's clothing are children, who are presumed to be unsophisticated). 298 Id. 299 Id. 300 Id. 301 Id. 302 656 F. Supp. 484 (S.D.N.Y. 1987). 303 Id. at 492 n.14. 304 Id. (citing Toys „R‟ Us, Inc., 559 F. Supp. at 1193-94). 305 E.S. Originals Inc., 656 F. Supp. at 4......