ROAD DAWGS MOTORCYCLE CLUB v. CUSE ROAD DAWGS, No. 5:05-CV-0966 (GTS/DEP).

• Court: United States District Courts. 2nd Circuit. United States District Court of Northern District of New York
• Writing for the Court: GLENN T. SUDDABY
• Citation: 679 F. Supp.2d 259
• Parties: The ROAD DAWGS MOTORCYCLE CLUB OF THE UNITED STATES, INC.; New York Road Dawgs Motorcycle Club, Inc.; Massachusetts Road Dawgs, Inc.; and Richard E. Downey, Plaintiffs, v. "CUSE" ROAD DAWGS, INC.; and John Does 1-XX, Defendants.
• Decision Date: 30 December 2009
• Docket Number: No. 5:05-CV-0966 (GTS/DEP).

679 F.Supp.2d 259

The ROAD DAWGS MOTORCYCLE CLUB OF THE UNITED STATES, INC.; New York Road Dawgs Motorcycle Club, Inc.; Massachusetts Road Dawgs, Inc.; and Richard E. Downey, Plaintiffs,
v.
"CUSE" ROAD DAWGS, INC.; and John Does 1-XX, Defendants.

No. 5:05-CV-0966 (GTS/DEP).

United States District Court, N.D. New York.

December 30, 2009.

679 F. Supp.2d 264

Marjama Muldoon Blasiak & Sullivan LLP, James R. Muldoon, Esq., Robert E. Rigby, Jr., Esq., of Counsel, Syracuse, NY, for Plaintiffs.

Carroll & Carroll Lawyers, P.C., Woodruff L. Carroll, Esq., of Counsel, Street Syracuse, NY, for Defendants.

SECOND AMENDED MEMORANDUM DECISION and ORDER

GLENN T. SUDDABY, District Judge.

On December 22, 2009, the Court issued an Amended Decision and Order in this trademark infringement action. (Dkt. No. 31.) In that Amended Decision and Order, the Court, inter alia, barred Defendant's continued use of a gold-colored stylized pit bull head in its logo. (Id. at 50, 54.) After sua sponte reconsidering governing legal

679 F. Supp.2d 265

standards, the Court has decided that such continued use, in and of itself, would not infringe on Plaintiffs trademark. In accordance with that decision, the Court issues the current Second Amended Decision and Order.

Currently pending before the Court in this trademark infringement action is a motion for summary judgment filed by The Road Dawgs Motorcycle Club of the United States, Inc., New York Road Dawgs Motorcycle Club, Inc., Massachusetts Road Dawgs, Inc., and Richard E. Downey ("Plaintiffs"), and a cross-motion for summary judgment filed by `Cuse Road Dawgs, Inc., and John Does 1-XX ("Defendants"). (Dkt. Nos. 13, 15.) For the reasons set forth below, Plaintiffs' motion is granted in part and denied in part, and Defendants' cross-motion is denied.

 TABLE OF CONTENTS
                 I. BACKGROUND ..................................................................... 266
                 A. Plaintiffs' Complaint ....................................................... 266
                 B. Plaintiffs' Motion .......................................................... 266
                 C. Defendants' Cross-Motion .................................................... 266
                 II. APPLICABLE LEGAL STANDARD ...................................................... 266
                III. UNDISPUTED MATERIAL FACTS ...................................................... 269
                 A. Facts Material to Road Dawgs Motorcycle Club ................................ 269
                 B. Facts Material to `Cuse Road Dawgs Motorcycle Club .......................... 270
                 C. Facts Material to Both Marks or Clubs ....................................... 272
                 IV. ANALYSIS OF PLAINTIFFS' MOTION ................................................. 273
                 A. Plaintiffs' Claim Under Sections 1114(1) of the Lanham Act .................. 273
                 1. Validity and Entitlement to Protection ................................... 273
                 a. Classification of Marks Generally ..................................... 274
                 i. Generic Marks .................................................... 274
                 ii. Descriptive Marks ................................................ 274
                 iii. Suggestive Marks ................................................. 274
                 iv. Arbitrary and Fanciful Marks ..................................... 275
                 b. Classification of Plaintiffs' Mark .................................... 275
                 i. Whether Plaintiffs' Mark Is Generic .............................. 275
                 ii. Whether Plaintiffs' Mark Is Descriptive or Suggestive ............ 275
                 c. Contestability ........................................................ 277
                 d. Equitable Defenses .................................................... 279
                 i. Defendants' First and Third Defenses ............................. 279
                 ii. Defendants' Second Defenses ...................................... 283
                 2. Likelihood of Confusion .................................................. 285
                 a. Strength of Plaintiffs' Mark .......................................... 285
                 b. Similarity Between Parties' Marks ..................................... 286
                 c. Proximity of Parties in Marketplace ................................... 287
                 d. Likelihood that Plaintiffs Will "Bridge-The-Gap" ...................... 288
                 e. Evidence of Actual Confusion .......................................... 288
                 f. Defendants' Intent in Adopting the Mark ............................... 289
                 g. Quality of Defendants' Services ....................................... 290
                 h. Sophistication of Consumers ........................................... 290
                 3. Balance of Equities ...................................................... 291
                 B. Plaintiffs' Request for Relief Under Section 1116 of the Lanham Act ......... 291
                 C. Plaintiffs' Other Requests for Relief ....................................... 292
                 D. Plaintiffs' Other Claims .................................................... 294
                

679 F. Supp.2d 266

I. BACKGROUND

A. Plaintiffs' Complaint

Plaintiffs filed this trademark infringement action, pursuant to 15 U.S.C. § 1114(1), 15 U.S.C. § 1116, 15 U.S.C. § 1125(a)(1), Common Law Trademark Infringement, and New York General Business Law §§ 349 and 350, against Defendants on August 2, 2005. (Dkt. No. 1.) Generally, Plaintiffs' Complaint alleges that Defendants' use of the name "`Cuse Road Dawgs" infringes on Plaintiffs' rights as registrants of the mark "ROAD DAWGS." (Id.) More specifically, liberally construed, Plaintiffs' Complaint alleges as follows: (1) Defendants' use of "`Cuse Road Dawgs" is likely to cause an appreciable number of consumers to be confused as to the origin and affiliation of Defendants; (2) Plaintiffs never authorized Defendants' use of the mark at issue; (3) Defendants engage in and are associated with criminal activity; and (4) Defendants' actions caused and continue to cause Plaintiffs irreparable harm. (Id.)

B. Plaintiffs' Motion

In their motion for summary judgment, Plaintiffs argue that they are entitled to summary judgment because, based on the current record, there is no genuine issue of material fact with respect to the protectability of the "ROAD DAWGS" mark, and the Polaroid balancing test demonstrates the existence of a likelihood of confusion between the name "ROAD DAWGS" and the name "`Cuse Road Dawgs." For the foregoing reasons, Plaintiffs argue that the Court should (1) grant judgment in their favor on the issues of liability and infringement, (2) permanently enjoin Defendants' use of the name "`Cuse Road Dawgs," and (3) hold a hearing on the issue of damages. (Dkt. No. 13, Part 13, at 1 Plfs.' Memo. of Law.)

C. Defendants' Cross-Motion

After Plaintiffs filed a motion for summary judgment, Defendants filed a cross-motion for summary judgment with this Court. (Dkt. No. 15.) Generally, in their motion, Defendants argue that they are entitled to summary judgment, based on the current record, because (1) Plaintiffs' mark is either generic or merely descriptive, and is therefore not entitled to protection, and (2) there is no likelihood of confusion between "`Cuse Road Dawgs" and "ROAD DAWGS" under the Polaroid balancing test as a matter of law. (Dkt. No. 15, at 29-33 Defs.' Memo. of Law.) In the alternative, Defendants argue that they are entitled to summary judgment because (1) Plaintiffs failed to allege any damages, (2) they were using their mark in commerce before Plaintiffs' publication of their mark, and/or (3) they are entitled to the equitable defenses of laches, estoppel and acquiescence, which would bar a finding in favor of Plaintiffs with respect to liability and infringement. (Dkt. No. 15, at 35 Defs.' Memo. of Law.)

II. APPLICABLE LEGAL STANDARD

Under Fed.R.Civ.P. 56, summary judgment is warranted if "the pleadings, the discovery and disclosure materials on file, and any 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). In determining whether a genuine issue of material fact exists, the Court must resolve all ambiguities and draw all reasonable inferences against the moving party. However, when the moving party has met its initial burden of establishing the absence of any genuine issue of material fact, the nonmoving party must

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come forward with "specific facts showing a genuine issue for trial." Fed.R.Civ.P. 56(e).

What this burden-shifting standard means when a non-movant has failed to respond to a movant's motion for summary judgment is that "the fact that there has been no such response ... does not ... by itself mean that the motion is to be granted automatically." Champion v. Artuz, 76 F.3d 483, 486 (2d Cir.1996). Rather, practically speaking, the Court must (1) determine what material facts, if any, are disputed in the record presented on the movant's motion, and (2) assure itself that, based on those undisputed material facts, the law indeed warrants judgment for the movant. Champion, 76 F.3d at 486; Allen v. Comprehensive Analytical Group, Inc., 140 F.Supp.2d 229, 232 (N.D.N.Y.2001) (Scullin, C.J.); N.D.N.Y. L.R. 7.1(b)(3). However, the non-movant's failure to respond to the movant's motion for summary judgment lightens the movant's burden on the motion.

More specifically, where a non-movant has failed to properly respond to a movant's factual assertions contained in its Statement of Material Facts (a/k/a its "Rule 7.1 Statement"), the factual assertions contained in that Rule 7.1 Statement will be accepted as true to the extent that those facts are supported by the evidence in the record. Vermont Teddy Bear Co., Inc. v. 1-800 Beargram Co., 373 F.3d 241, 243 (2d Cir.2004); Champion v. Artuz, 76 F.3d 483, 486 (2d Cir.1996); N.D.N.Y. L.R. 7.1(a)(3); N.D.N.Y. L.R. 56.2.¹

Similarly, where a non-movant has failed to respond to a movant's properly filed and facially meritorious memorandum of law (submitted in support of its motion for summary judgment), the non-movant is deemed to have "consented" to the legal...