Polo Fashions, Inc. v. Branded Apparel Merch.

• Decision Date: 12 September 1984
• Docket Number: Civ. A. No. 83-2252-MA.
• Citation: 592 F. Supp. 648
• Parties: POLO FASHIONS, INC., Plaintiff, v. BRANDED APPAREL MERCHANDISING, INC. and Larry Taylor, Defendants.
• Court: U.S. District Court — District of Massachusetts

592 F. Supp. 648

POLO FASHIONS, INC., Plaintiff, v. BRANDED APPAREL MERCHANDISING, INC. and Larry Taylor, Defendants.

Civ. A. No. 83-2252-MA.

United States District Court, D. Massachusetts.

September 12, 1984.

Thomas J. Dougherty, Lori Weiner Lander, Skadden, Arps, Slate, Meagher & Flom, Boston, Mass., for plaintiff.

Bernard A. Dwork, Enid Starr, Barron & Stadfeld, Boston, Mass., for defendants.

MEMORANDUM AND ORDER

MAZZONE, District Judge.

This is an action for trademark infringement and unfair competition. The plaintiff, Polo Fashions, Inc. (Polo) has moved for summary judgment as to liability against defendant Branded Apparel Merchandising, Inc. (Branded) and Larry Taylor (Taylor). This Court has jurisdiction of the claims pursuant to 15 U.S.C. § 1121 and 28 U.S.C. § 1338.

I.

Polo manufactures a wide line of designer clothing including short-sleeve knit shirts. Branded is a clothing wholesaler. Taylor, an individual, was the president of Branded prior to December, 1983.

Polo claims that on May 25, 1982, Taylor, on behalf of Branded, purchased 224 counterfeit short-sleeve knit shirts in New York. Taylor later sold the shirts to both Vermont Morgan Corporation (Vermont Morgan) and other distributors. One of the shirts sold to Vermont Morgan has been produced as an exhibit in this case. The shirt has a fabric neck label reading "Polo by Ralph Lauren" and an emblem embroidered in the chest area that depicts a mounted polo player. There is uncontroverted evidence that this shirt was sold to Vermont Morgan by the defendants and that it is indeed counterfeit. Neither defendant has produced any evidence to dispute Polo's claim that it holds valid trademark registrations for both the label and the distinctive emblem. Both defendants admit that all 224 shirts in question had similar neck labels and emblems. There is no direct evidence that any or all of the other shirts were counterfeit. The defendants maintain that there is a genuine dispute of fact as to whether those shirts were counterfeit, but have failed to produce any evidence that they were authentic.

Polo's three count complaint claims the following. First, the defendants infringed on its valid, registered trademark and Polo is entitled to relief under 15 U.S.C. § 1114(1) et seq. Second, the defendants' sale of the counterfeit shirts constituted the use in commerce of a false designation of origin and thus violated 15 U.S.C. § 1125(a). Third, the defendants' sale of counterfeit shirts constituted unfair competition under the common law. Polo has moved for summary judgment as to liability under Fed.R.Civ.P. 56(a).

II.

To defeat a motion for summary judgment under Rule 56(a), the opposing party must produce substantial evidence of a genuine dispute of a material fact. Hahn v. Sargent, 523 F.2d 461, 464 (1st Cir.1975), cert. denied, 425 U.S. 904, 96 S.Ct. 1495, 47 L.Ed.2d 754 (1976). A material issue is one that "affects the outcome of the litigation." Id. A genuine dispute is one that arises from evidence sufficient to require either a judge or a jury to resolve the various versions of the facts at trial. Id., (quoting First National Bank of Arizona v. Cities Service Co., Inc., 391 U.S. 253, 289, 88 S.Ct. 1575, 1592, 20 L.Ed.2d 569 (1968)). In deciding a motion for summary judgment, all doubts must be resolved in favor of the opposing party. Hahn v. Sargent, 523 F.2d at 464.

1. Polo's Claim of Trademark Infringement

Under 15 U.S.C. § 1114(1), any person who sells goods bearing a counterfeit registered trademark such that the sale is likely to cause confusion among potential customers is civilly liable to the registrant. Pignons S.A. de Mecanique, Inc. v. Polaroid Corp., 498 F.Supp. 805, 810 (D.Mass. 1980), aff'd, 657 F.2d 482 (1st Cir.1981). The registrant need not prove intent to deceive in order to recover. Id., 498 F.Supp. at 817.

As noted above, the defendants have produced no evidence rebutting Polo's claim that it holds registered trademarks in both the label and the emblem on the shirt in evidence. Although the Court is to view the evidence in the light most favorable to the non-moving party, the Court is "not required to ignore clear uncontradicted facts." Astra Pharmaceutical Products, Inc. v. Beckman Instruments, Inc., 718 F.2d 1201 (1st Cir.1983). Polo has submitted photocopies of its trademark registration papers clearly depicting a neck label and emblem indistinguishable from those on the shirt in evidence.

Polo has also submitted a sworn affidavit by its director of quality control stating that the shirt in question is undoubtedly counterfeit. The defendants have produced no evidence contradicting this nor have they produced any evidence showing that they did not sell the shirt to Vermont Morgan. Polo has submitted sales receipts and a sworn statement indicating that the shirt was sold by the defendants to Vermont Morgan.

To succeed on its motion, however, Polo bears the additional burden of submitting some evidence that sale of the shirts created a substantial likelihood of consumer confusion. Fisher Stoves, Inc. v. All Nighter Stove Works, 626 F.2d 193, 194 (1st Cir.1980). Polo need not prove actual confusion. Id. The following factors are among those usually considered in determining whether use of a mark similar to a registered mark is likely to create the degree of confusion required to violate the statute: the similarity of the marks; the similarity of the goods; the classes of prospective purchasers; and the strength of the plaintiff's mark. Pignons, 657 F.2d at 487.

As applied to this case, these factors demonstrate a clear and substantial likelihood that prospective consumers would be confused by the defendants' use of Polo's neck label and emblem on knit shirts. First, the marks on the shirt in evidence are indistinguishable from those depicted in Polo's trademark registration papers and those located on a second, genuine "Polo by Ralph Lauren" shirt that has also been submitted to this Court. The shirts themselves, while not identical, are also very similar. Both the counterfeit and genuine shirt in evidence are short-sleeved, made of inter-locking knit fabric, and have similar neck plackets. The major differences between the shirts were pointed out by Polo's director of quality control, and include such insignificant factors as the color of the thread securing the buttons, the weave of the tape covering the neck seam, and the stitching of the side vents. The defendants have not and probably could not introduce evidence that consumers would not be confused by the similarity of the shirts.

Additionally, there is no evidence of any difference in the classes of prospective purchasers. Polo's director of quality control has stated in a signed affidavit that the counterfeit shirt is "directly competitive with and commercially substitutable for genuine Polo goods." Polo's president signed a similar affidavit. Although this may be scant evidence on which to rely, the defendants have offered no evidence to rebut the statements that genuine and counterfeit Polo shirts compete in the same market.

Finally, "strong" trademarks are generally accorded broader protection against infringement than are "weak" marks. Pignons, 657 F.2d at 492. A strong mark is "one which is used only in a fictitious or fanciful manner; whereas a weak mark is one that has meaning in common usage, or one that is merely suggestive or descriptive." Id., 498 F.Supp. at 814 (citation omitted). The embroidered Polo logo is clearly a fanciful, rather than a descriptive mark. The label mark, "Polo by Ralph Lauren," is even more distinctive. Polo has submitted a sworn statement by its president detailing the volume of its extensive sales and stating that both marks have acquired a strong secondary meaning in the clothing market. The defendants have offered no evidence to rebut this assertion.

Even viewing the evidence in the light most favorable to the defendants, it is clear that Branded's sale of counterfeit shirts was highly likely to confuse consumers. Polo, therefore, is entitled to summary judgment as to liability at least for the one counterfeit shirt in evidence.

The more difficult question is whether the defendants are liable for the other 223 shirts that they sold to Vermont Morgan and other distributors. Polo has submitted evidence that the counterfeit shirt in evidence was "exemplary" of the other 223 shirts and that all the other shirts bore the same neck labels and embroidered emblems. The defendants have introduced no evidence tending to rebut the inference raised by this evidence, namely that all the shirts were counterfeit.¹ I therefore find for the plaintiff on its first count.

2. Polo's Claim of False Designation of Origin

Under 15 U.S.C. § 1125(a), the defendants are liable for appropriation of the "goodwill associated with a competitor's trademark by means of confusingly similar marking and packaging," if such marking creates the impression that the products of the defendants originated with the plaintiff. Purolator, Inc. v. EFRA Distributors, Inc., 687 F.2d 554, 561 (1st Cir.1982). Under the statute, the elements of such a violation consists of (1) using a symbol that falsely describes an article and (2) causing such article to enter into commerce. 15 U.S.C. §...