Savin Corp. v. Savin Group
| Decision Date | 10 December 2004 |
| Docket Number | Docket No. 03-9266. |
| Citation | 391 F.3d 439 |
| Parties | SAVIN CORPORATION, Plaintiff-Appellant, v. THE SAVIN GROUP, Savin Engineers, P.C., Savin Consultants, Inc. d/b/a Savin Engineers, P.C., and JMOA Engineering, P.C., Defendants-Appellees. |
| Court | U.S. Court of Appeals — Second Circuit |
Jeffrey L. Glatzer (David A. Einhorn, John H. Doyle, III, and James M. Andriola, on the briefs), Anderson, Kill & Olick, P.C., New York, N.Y., for Plaintiff-Appellant.
David A. Beke (Alfred L. D'Isernia and Sarah A. McKune, on the brief), Ford Marrin Esposito Witmeyer & Gleser, L.L.P., New York, N.Y., for Defendants-Appellees.
Before: MESKILL, MINER, and KATZMANN, Circuit Judges.
Plaintiff-appellant, Savin Corporation, appeals from a summary judgment entered in the United States District Court for the Southern District of New York (Scheindlin, J.) dismissing Savin Corporation's claims alleging: (1) trademark dilution, in violation of both the Federal Trademark Dilution Act ("FTDA"), 15 U.S.C. § 1125(c), and New York General Business Law § 360-1, and (2) trademark infringement, in violation of the Lanham Act, 15 U.S.C. § 1114. On appeal, Savin Corporation argues that the District Court erred in holding that (i) the FTDA requires a plaintiff to demonstrate evidence of actual dilution even where the court finds that the at-issue marks are identical; (ii) the standard for dilution under New York General Business Law § 360-1 is the same as the standard for dilution under the FTDA; and (iii) there is no genuine issue of material fact regarding whether the defendants-appellees' use of certain at-issue marks creates a likelihood of confusion with the plaintiff-appellant's marks.
We agree with the plaintiff-appellant that the District Court erred in its analysis and disposition of the FTDA and state-law dilution claims, but we find no error in the District Court's analysis of the trademark infringement claim. We therefore affirm the judgment of the District Court in part, vacate in part, and remand for further proceedings consistent with this opinion.
The following facts, which are essentially undisputed, are derived primarily from the District Court's presentation of background facts, which we discern no clear error. Plaintiff-appellant, Savin Corporation ("Plaintiff"), a Delaware corporation, was founded in 1959 and has its principal place of business in Stamford, Connecticut. Plaintiff is engaged in the business of marketing, selling, and distributing state-of-the-art business equipment for commercial, business, and home-office use. Plaintiff's products include color and digital-imaging technology for photocopying, printing, facsimile, and other systems. Plaintiff also offers consulting and support services related to information technology and office management. Plaintiff's products are sold through seventeen company-owned branches consisting of over sixty sales and service offices and over 250 trained dealers throughout the United States. Plaintiff realizes annual revenues of over $675 million from sales of its products and services in the United States. Plaintiff's largest customers are in the government, education, and military sectors.
Max Lowe, Savin Corporation's founder, named the company after his brother-in-law, Robert Savin. Since 1959, the company has used the trade name "Savin" or "SAVIN" in various forms in connection with various products and services. Plaintiff's ownership of the "Savin" mark is incontestable with respect to: (i) copy paper and developing liquid; (ii) photocopying machines and parts thereof; and (iii) maintenance and repair services for photocopiers and word processors. The company also owns the mark "SAVIN" for facsimile machines.
During 2002 alone, Plaintiff spent over $20 million in advertising its products and services, which are regularly featured in print and television advertisements, trade magazines, and tradeshow promotions worldwide. Plaintiff's advertisements have appeared in magazines such as Newsweek, Time, and Business Week. Plaintiff also maintains an active website — www.savin.com — through which Plaintiff markets and promotes its products and services. This website address is featured prominently in many of Plaintiff's advertisements.
Defendants-appellees are The Savin Group; Savin Engineers, P.C.; Savin Consultants, Inc. d/b/a Savin Engineers, P.C. ("Savin Consultants"); and JMOA Engineering, P.C. ("JMOA") (collectively, "Defendants" or "Savin Engineers"). JMOA and Savin Engineers, P.C. are New York-based professional engineering corporations with offices in Pleasantville, Syracuse, and Hauppauge, New York; together, the two corporations comprise The Savin Group. Savin Consultants is a New Jersey-based corporation that was incorporated in 1987 and that ceased to be actively engaged in business after Savin Engineers, P.C. was incorporated in 1988. Defendants provide professional engineering consulting services, in particular, civil-engineering consulting services to entities concerned with environmental waste management. Defendants also offer professional engineering services in connection with inspecting buildings and providing building-maintenance plans.
Dr. Rengachari Srinivasaragahavan, whose nickname since college has been "Nivas" (referred to in this opinion as "Dr. Nivas"), is the founder and sole shareholder of each of the defendant-appellee corporations. Dr. Nivas chose the name "Savin" by spelling "Nivas" backwards. Since 1987, Defendants have continually used the name "Savin" in commerce. Defendants did not perform a search or investigation prior to adopting and launching their trade names, and only became aware of Plaintiff's products and services about ten years ago.
Defendants have registered the Internet domain names www.thesavingroup.com and www.savinengineers.com. These websites, which became accessible after June 2001, provide information about the engineering services offered by Dr. Nivas' companies. Defendants did not perform a search or investigation prior to adopting and launching these websites, but were aware of Plaintiff's www.savin.com domain name prior to registering Defendants' domain names. Other than through these websites, Defendants have not advertised their services in any general interest media.
In July 2002, Plaintiff discovered Defendants' domain name registrations and proceeded promptly to send two successive cease-and-desist letters to Defendants, who elected to take no action in response to those letters.
In May 2003, one of Plaintiff's executives was attending a chamber of commerce meeting in Stamford, Connecticut, when another attendee, a vendor who had once sold products to Defendants, approached and asked the executive, who was wearing a name tag that displayed the name "Savin," if she was associated with Savin Engineers.
Presently, there are several hundred other businesses using the name "Savin" in various industries and capacities, including, for example, a general contractor in Newington, Connecticut (Savin Brothers, Inc.), a dry cleaner in Chesapeake, Virginia (Savin Cleaners), and a dentist in Glencoe, New York (Savin Dental Associates). Plaintiff has been aggressive in protecting its marks, with respect to both traditional media and the Internet.1
On November 25, 2002, Plaintiff filed a complaint (the "Complaint") in the United States District Court for the Southern District of New York, alleging, inter alia, violations of both the Federal Trademark Dilution Act ("FTDA"), 15 U.S.C. § 1125(c), and New York General Business Law § 360-1; and trademark infringement, in violation of the Lanham Act, 15 U.S.C. § 1114.2 Following discovery, both sides moved for summary judgment. On October 24, 2003, in a forty-four-page, unpublished opinion and order, the District Court denied Plaintiff's motion, granted Defendants' motion in its entirety, and dismissed all claims in the Complaint. See Savin Corp. v. Savin Group, 02 Civ. 9377, 2003 WL 22451731 (S.D.N.Y. Oct.24, 2003).
With respect to Plaintiff's infringement claim under the Lanham Act, the court found that while "one of the Polaroid factors weigh[ed] in [P]laintiff's favor,"3 the "overwhelming number of factors" as well as the "Internet initial interest confusion factor" weighed in Defendants' favor. Id. at * 13. Accordingly, the court concluded, Defendants were entitled to summary judgment on the infringement claim. Id.
The District Court concluded that Plaintiff's claim of a violation of the FTDA had to be dismissed as well, because, the court found, Plaintiff had "failed to raise a material issue of fact with regard to an essential prong of the dilution test." Id. at *15. The court found, in particular, that Plaintiff had failed to produce any evidence of actual dilution — an essential element of a claim of a violation of the FTDA — other than that Defendants had used a junior mark that was identical to Plaintiff's senior mark. Thus, the court held, Plaintiff had failed to produce sufficient evidence for a rational jury to find that actual dilution had occurred. Id. at *14. The court did find, however, that Plaintiff had produced sufficient evidence to create a triable issue of fact on the other contested elements of an FTDA claim — the distinctiveness and fame of the senior mark. Id.
Finally, with respect to the state-law dilution claim, the court found that "[t]he standards for dilution under Section 360-1 [were] essentially the same as that under [the FTDA]"; that Plaintiff had "failed to produce sufficient evidence to create a triable issue under the FTDA"; and, thus, that "the Section 360-1 claim also fail[ed]." Id. at *16 (internal quotation marks omitted). Final judgment was entered on October 31, 2003, dismissing the Complaint,...
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