New Look Party Ltd. v. Louise Paris Ltd.
| Decision Date | 11 January 2012 |
| Docket Number | 11 Civ. 6433 (NRB) |
| Parties | NEW LOOK PARTY LIMITED, Plaintiff, v. LOUISE PARIS LTD., SEARS BRANDS LLC, and JOHN DOES 1-10, Defendants. |
| Court | U.S. District Court — Southern District of New York |
Plaintiff New Look Party Limited has moved for a preliminary injunction against defendants Louise Paris Ltd. ("LPL"), Sears Brands LLC ("Sears"), and unidentified individuals involved in selling clothing produced by LPL, enjoining them from selling clothing or accessories bearing the "NEW LOOK" standard character mark or the Image materials not available for display. design mark.
For the reasons stated below, plaintiff's motion is denied.
The relevant facts are not in dispute. Plaintiff is a fashion brand headquartered in England. Its first store opened in 1969, and it now has over 1000 outlets across Europe and Asia, though none in the United States. LPL also produces clothing, and at least one of its lines is distributed through Sears.
Plaintiff began using the "NEW LOOK" name in association with clothing sales in the United Kingdom in 1969. The stylized logo was developed in 2002, and its use in connection with plaintiff's clothing commenced in 2003.
LPL filed an intent-to-use application for the "NEW LOOK" standard character mark with the United States Patent and Trademark Office (the "USPTO") on May 22, 2009, and the USPTO granted the application on September 21, 2010. While the application was pending, LPL began using not just the standard character mark but also the design mark in connection with its clothing sales in U.S. commerce. LPL has submitted a sworn declaration to the USPTO identifying August 21, 2009 as the first date of such use. LPL's clothing bearing these marks is available for sale through Sears.
Plaintiff became aware of LPL's use of the marks and their sale through Sears on July 1, 2010. Prior to learning of the competing use, plaintiff had begun selling and shipping its merchandise directly to customers in the United States via its website in July of 2009, having previously sold its goods exclusively abroad. Americans' exposure to plaintiff's brand has thus been limited, though not entirely nonexistent. Over 1000 Americans purchased merchandise from plaintiff's international stores in each of 2007, 2008, and 2009, and plaintiff's websitewas viewed from U.S. IP addresses approximately 224,000 times in 2008 and 215,000 times from January to June of 2009.
On October 8, 2010, LPL filed for registration of the stylized mark, which was published for opposition on March 1, 2011 and has not yet been approved. Plaintiff has opposed that registration and moved to cancel LPL's registration of the "NEW LOOK" standard character mark.1 Plaintiff also filed its own application for registration of the design-mark on March 2, 2011, having not previously attempted to register either the standard character mark or the design mark.
Plaintiff filed a complaint against LPL in the Eastern District of Virginia on June 21, 2011, alleging inter alia trademark and copyright infringement. Defendants moved to transfer venue to this Court on August 16, 2011, and plaintiff moved for a preliminary injunction on September 8, 2011. Defendants' motion was granted and the case was transferred to this Court on September 15, 2011. Plaintiff was directed to rebrief the motion under the now-applicable Second Circuit law. The motion was fully briefed on December 15, 2011, and the Court held oral argument on December 20, 2011. The parties were thengiven an additional opportunity to resolve their dispute. This decision follows their inability to reach an agreement.
A party seeking a preliminary injunction must show (1) a likelihood of success on the merits;2 (2) a likelihood of irreparable harm in the absence of the injunction; (3) a balance of hardships tipping in the movant's favor; and (4) the public interest is not disserved by the issuance of the injunction. Salinger v. Colting, 607 F.3d 68, 79-80 (2d Cir. 2010). The injury underlying an injunction Tucker Anthony Realty Corp. v. Schlesinger, 888 F.2d 969, 975 (2d Cir. 1989). Despite long-held circuit precedent, such harm will no longer be presumed in copyright or trademark cases. See Salinger, 607 F.3d at 80; Tecnimed SRL v. Kidz-Med, Inc., 763 F. Supp. 2d 395, 402 (S.D.N.Y. 2011) ().
A preliminary injunction is an "extraordinary remedy that should not be routinely granted." Procter & Gamble Co. v.Ultreo, Inc., 574 F. Supp. 2d 339, 344 (S.D.N.Y. 2008) (internal quotation marks omitted). Indeed, when the movant seeks a mandatory injunction -- one that will alter the status quo -- it must show a "clear" or "substantial" likelihood of success on the merits. See Mastrovincenzo v. City of New York, 435 F.3d 78, 89-90 (2d Cir. 2006); Jolly v. Coughlin, 76 F.3d 468, 473 (2d Cir. 1996).
Plaintiff seeks to enjoin defendants' sale of clothing branded with the "NEW LOOK" word and design marks under theories of both trademark and copyright infringement. Each is addressed in turn.
Plaintiff alleges trademark infringement pursuant to 15 U.S.C. § 1125(a)(1)(A), which creates liability when the use of a mark "is likely to cause confusion . . . as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods." To succeed on a claim for infringement of an unregistered trademark, plaintiff must show that "(1) it has a valid mark that is entitled to protection under the Lanham Act; and that (2) the defendant used the mark, (3) in commerce, (4) in connection with the sale or advertising of goods orservices, (5) without the plaintiff's consent," and (6) defendants' use of the mark is likely to cause confusion as to the connection between defendants' goods and plaintiff. 1-800 Contacts, Inc. v. WhenU.com, 414 F.3d 400, 407 (2d Cir. 2005) (internal quotation marks, alteration, and citation omitted).
The parties do not contest that defendants have sold clothing in U.S. commerce bearing the "NEW LOOK" word and design marks without having received plaintiff's consent. The only issues before the Court are therefore whether plaintiff has valid marks deserving of protection under the Lanham Act and whether defendants' use of their marks is likely to cause confusion in the marketplace.
LPL's completed registration of the standard character mark is prima facie evidence that the mark is valid, that LPL owns the mark, and that LPL has the exclusive right to use the mark in commerce. See Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999). These rights, however, are not incontestable, see 15 U.S.C. § 1064, and, if challenged within five years of becoming effective, the registration may be canceled3 based on any ground "that would have preventedregistration in the first place." Cunningham v. Laser Golf Corp., 222 F.3d 943, 945-46 (Fed. Cir. 2000); see also 15 U.S.C. § 1115(a). Plaintiff must show that LPL's registration should be canceled before it can establish its own claim to the standard character mark.
Plaintiff asserts that its use of the mark prior to LPL's registration is a ground upon which to base cancellation. Typically, prior use is demonstrated by a showing that the senior user has made use of the mark -- in U.S. commerce -- prior to the junior user. As plaintiff concedes, however, plaintiff's use of the mark in U.S. commerce after defendant had filed for registration, but prior to defendant's use and before defendant's certificate of registration was issued, is insufficient for cancellation because, upon perfection of the registration, the earlier registration filing "constitute[s] constructive use of the mark, conferring a right of priority" as against all others except, among others not relevant here, those who have used the mark "prior to such filing." 15 U.S.C. § 1057(c); see also De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate, Inc., 440 F. Supp. 2d 249, 266 (S.D.N.Y. 2006). Plaintiff must therefore demonstrate use before LPL applied for registration.
Acknowledging that it did not use the "NEW LOOK" standard character mark in U.S. commerce -- as would be required for plaintiff to actually register the mark -- before LPL filed its intent-to-use application, plaintiff argues that the use it did make of the mark prior to May 2009 is sufficient for cancellation, even if not for registration. Compare 15 U.S.C. § 1051(a)(1) , with id. § 1052(d) (); see also Patsy's Italian Rest., Inc. v. Banas, 658 F.3d 254, 267 (2d Cir. 2011) (); First Niagara Ins. Brokers, Inc. v. First Niagara Fin. Grp., Inc., 476 F.3d 867, 870-71 (Fed. Cir. 2007) ().
Such "use analogous to trademark use" is sufficient to stand in the stead of actual trademark use only if it is "of such a nature and extent that the mark has become popularized in the public mind so that the relevant segment of the public identifies the marked goods with the mark's...
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