Jewish Sephardic Yellow Pages, Ltd. v. Dag Media, 04-CV-747 (RJD).

Citation478 F.Supp.2d 340
Decision Date19 March 2007
Docket NumberNo. 04-CV-747 (RJD).,04-CV-747 (RJD).
PartiesThe JEWISH SEPHARDIC YELLOW PAGES, LTD., d/b/a Kosher Yellow Pages, Plaintiff, v. DAG MEDIA, INC. and Assaf Ran, Defendants. DAG Media, Inc. and Assaf Ran, Third-Party Plaintiffs, v. David Ben Hooren, Third-Party Defendant. The Jewish Sephardic Yellow Pages, Ltd. and David-Ben Hooren, Fourth-Party Plaintiffs, v. DAG-Jewish Directories, Inc., Fourth-Party Defendant.
CourtUnited States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)

Cathy E. Shore-Sirotin, Myron Greenspan, Lackenbach Siegel LLP, Scardale, NY, for Plaintiff.

James Francis Baxley, Hart, Baxley, Daniels & Holton, Carl M. Bornstein, Law Office of Carl M. Bornstein, New, York, NY, Mark F. Heinze, Ofeck & Heinze, LLP, Hackensack, NJ, for Defendant.

MEMORANDUM & ORDER

DEARIE, Chief Judge.

Plaintiff The Jewish Sephardic Yellow Pages, Ltd. ("JSYP") sues defendants DAG Media, Inc. ("DAG") and its president and CEO Assaf Ran under the Lanham Act and New York state law for infringement of the unregistered trademark "Kosher Yellow Pages." Defendants now seek summary judgment on plaintiff's federal infringement claim, alleging that the mark is ineligible for trademark protection. The Court referred the motion to Magistrate Judge Roanne L. Mann for a Report and Recommendation pursuant to 28 U.S.C. § 636(b)(1)(B). On August 31, 2006, Magistrate Judge Mann concluded that the mark is ineligible for protection and recommended that defendants' motion be granted. On September 25, 2006, plaintiff filed objections to the Report. The Court has reviewed the record de novo and considered plaintiffs objections and defendants' responses. Plaintiffs objections are meritless.

In her Report, Magistrate Judge Mann concluded that the term Kosher Yellow Pages was descriptive rather than generic or suggestive. Magistrate Judge Mann went on to find that the mark is ineligible for trademark protection because plaintiff had not proved secondary meaning. Although the mark may be more appropriately classified as generic, the Court without hesitation joins Magistrate Judge Mann's well-supported conclusion that the mark, if deemed descriptive in character, has not acquired secondary meaning. Accordingly, the Court adopts Magistrate Judge Mann's recommendation that defendants' summary judgment motion should be granted.

DISCUSSION

The material facts and procedural history are laid out in full in Magistrate Judge Mann's comprehensive Report.

A. Standard for Summary Judgment

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits ... show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). "Only when no reasonable trier of fact could find in favor of the nonmoving party should summary judgment be granted." White v. ABCO Eng'g Corp., 221 F.3d 293, 300 (2d Cir. 2000) (quoting Taggart v. Time, Inc., 924 F.2d 43, 46 (2d Cir.1991)). The Court's role in reviewing a motion for summary judgment is not "to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Although trademark disputes involve inherently factual determinations, the Second Circuit has indicated that summary judgment is as appropriate in trademark cases as in other cases where there are no triable issues of fact. See, e.g., Bernard v. TBG Mktg. Co., 964 F.2d 1338, 1343 (2d Cir.1992) (affirming district court's grant of summary judgment in trademark case).

B. Trademark Protection

Marks are classified in categories of increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. See Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir.1992). The latter two categories are deemed "inherently distinctive" and are accorded protection on this basis alone. Id. Generic marks are never protected, whereas descriptive marks are eligible for protection only when they have acquired distinctiveness or "secondary meaning." Id.

The Court agrees with Magistrate Judge Mann's determination that the mark is not suggestive because it does not "require[] imagination, thought and perception to reach a conclusion as to the nature of goods." Bernard, 964 F.2d at 1341. Whether the mark is descriptive rather than generic is a much closer question. Generic terms "refer to the genus or class of which the product is a species," while descriptive terms "convey an immediate idea of some characteristic or attribute of the product." PaperCutter, Inc. v. Fay's Drug Co., Inc., 900 F.2d 558, 561-62 (2d Cir.1990). The Second Circuit has noted that the line between these two categories is "chimerical" and "often illusory." See Thompson Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208, 213 n. 8, 215 (2d Cir.1985); see also 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:20, at 12-78 (4th ed.2006) (characterizing the boundary as "fuzzy and undefinable"). This line has proven especially elusive in the present case. As Judge Mann pointed out in her Report, plaintiff itself has used the Kosher Yellow Pages phrase in a generic sense. See Report and Recommendation at 363-65. At the same time, however, the composite term connotes more than one type of merchandise, and thus does not clearly "refer to the general class or category of the product" as is true of generic terms. PaperCutter, Inc., 900 F.2d at 562. At this juncture, the Court need not definitively classify Kosher Yellow Pages as a descriptive rather than a generic mark since plaintiffs failure to establish secondary meaning renders the mark ineligible for protection regardless. See Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1150-52 & n. 5 (9th Cir.1999) (declining to classify mark as generic or descriptive where plaintiff failed to show secondary meaning); Brandwynne v. Combe Int'l, Ltd., 74 F.Supp.2d 364, 382 (S.D.N.Y.1999) (classifying mark as generic in a close case but discussing plaintiffs failure to show secondary meaning as alternative ground for holding that the mark was not protected).

In determining whether a descriptive term has acquired secondary meaning, the Court looks to whether the term "comes through use to be uniquely associated with a single source." PaperCutter, Inc., 900 F.2d at 564. The critical question is whether "the primary significance of the term in the minds of the consuming public is not the product but the producer." Bristol-Myers Squibb Co., 973 F.2d at 1041 (quoting Centaur Commc'ns, Ltd. v. A/S/M Commc'ns, 830 F.2d 1217, 1221 (2d Cir.1987)). Secondary meaning is an inherently fact-bound determination entailing "vigorous evidentiary requirements," and the burden of proof rests on the party asserting exclusive rights in the mark — here, plaintiff JSYP. Id. at 1041 (quotations omitted). Moreover, the party asserting these rights must demonstrate that the mark acquired secondary meaning "before its competitor commenced use of the mark." PaperCutter, Inc., 900 F.2d at 564.

Among the factors that courts have found relevant to the question of secondary meaning are: (1) advertising expenditures; (2) consumer studies; (3) sales success; (4) unsolicited media coverage; (5) attempts to plagiarize the mark; and (6) length and exclusivity of the mark's use. See Bristol-Myers Squibb Co., 973 F.2d at 1041. "In assessing the existence of secondary meaning, no single factor is determinative, and every element need not be proved." Thompson Medical Co., 753 F.2d at 217 (quotation omitted). Although the Second Circuit has stated that district courts should be cautious in weighing these factors at the summary judgment stage, it has nonetheless supported summary judgment in cases where the proponent of the alleged trademark has failed to raise a material issue of fact on the question of secondary meaning. See, e.g., Mana Prods., Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1071 (2d Cir. 1995) (affirming district court's grant of summary judgment in trade dress case where plaintiff "failed to raise a material issue of fact as to whether [its product] had acquired secondary meaning in the marketplace"); Bernard, 964 F.2d at 1343 (affirming district court's grant of summary judgment in trademark case where plaintiff "produced no evidence that a significant number of prospective purchasers associate his [] trademark with his product").

Based upon the submissions before the Court and considering the six factors outlined above, no reasonable jury could find that consumers had come to identify the term Kosher Yellow Pages with plaintiff by the time DAG began marketing its competing product in 2003.1

First, plaintiff claims that it has spent "in excess of tens of thousands of dollars annually" to advertise its mark. Ben-Hooren Decl. ¶ 54.2 However, even after ample discovery, plaintiff has failed to show with any level of specificity the portion of this outlay that was devoted to its Kosher Yellow Pages mark. While plaintiff contends that it spent between $90,000 and $165,000 each year from 1999 to 2003 on telemarketing calls and over $320,000 in 1999 and 2000 on advertisements in newspapers, Ben-Hooren Supplemental Decl. ¶¶ 50-52, plaintiff has elsewhere admitted to presenting its Kosher Yellow Pages and Sephardic Yellow Pages directories to advertisers simultaneously. Ben-Hooren Decl. ¶ 16; Ben-Hooren Supplemental Decl. Ex. 17. Further, many of the marketing efforts undertaken by plaintiff — for example, the newspaper ads, billboards, door stickers, and promotional postcards — did not exclusively showcase the Kosher Yellow Pages mark. See Ben-Hooren Supplemental Decl. Exs. 16, 18, 22, 25. Rather, these materials display the Kosher Yellow Pages mark alongside and...

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