Opinion
01 Civ. 2629 (DLC)
August 21, 2002
Louis S. Ederer, Joseph H. Lessem, Gursky Ederer, New York, NY, for Plaintiffs.
Mark L. Sutton, Benjamin Jesudasson, Los Angeles, CA, for Defendant.
OPINION
Plaintiffs GTFM, Inc. and GTFM, LLC (collectively "GTFM") move for reconsideration of the Court's Opinion and Order dated July 11, 2002 (the "July 11 Opinion"), GTFM, Inc. and GTFM, LLC v. Solid Clothing Inc., No. 01 Civ. 2629 (DLC), 2002 WL 1477821 (S.D.N.Y. July 11, 2002), in which the Court held that defendant Solid Clothing Inc. ("Solid") engaged in intentional trademark infringement in violation of Section 32 of the Lanham Act (the "Act"), 15 U.S.C. § 1114, false designation of origin in violation of Section 43(a) of the Act, 15 U.S.C. § 1125(a), common law trademark infringement and unfair competition, and the violation of New York General Business Law Sections 360-1 and 349. For the reasons stated, GTFM's motion for reconsideration is denied.
GTFM filed its motion for reconsideration before the Court ordered the entry of judgment. While Solid argues that GTFM's motion is premature, it has nevertheless addressed the merits of the motion.
Discussion
Local Rule 6.3 requires a party moving for reconsideration to "set forth concisely the matters or controlling decisions which counsel believes the court has overlooked." Thus, to be successful on a motion for reconsideration, the movant must demonstrate that the Court has overlooked controlling decisions or factual matters that were presented to it on the underlying motion. See Local Rule 6.3; Eisemann v. Greene, 204 F.3d 393, 395 n. 2 (2d Cir. 2000); Shrader v. CSX Transp., Inc., 70 F.3d 255, 257 (2d Cir. 1995); Int'l Top Snorts S.A. v. Pan American Sports Network Int'l, No. 01 Civ. 9668 (HB), 2002 WL 226657, at *1 (S.D.N.Y. Feb. 14, 2002). The decision to grant or deny the motion is within the sound discretion of the district court. Devlin v. Transp. Communications Int'l Union, 175 F.3d 121, 132 (2d Cir. 1999) (citing McCarthy v. Manson, 714 F.2d 234, 237 (2d Cir. 1983) )
I. Plaintiffs' "05" Mark is not Inherently Distinctive
GTFM argues that the July 11 Opinion wrongly found that the "05" mark is not inherently distinctive as it is used by GTFM on its sportswear. Specifically, GTFM asserts that a trademark's "distinctiveness does not depend on the particular manner in which it is applied to the goods. . . . Rather, the determination is made by looking at the mark itself and determining whether, as applied to the class of goods on which it is used," the mark is inherently distinctive. GTFM further argues that the July 11 Opinion wrongly confused the issues of "ornamentality" and "distinctiveness."
As noted in the July 11 Opinion, GTFM, 2002 WL 1477821, at *17, the Supreme Court has recently offered guidance on the meaning of inherent distinctiveness. "[A] mark is inherently distinctive if its intrinsic nature serves to identify a particular source." Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 210 (2000). Inherently distinctive marks "almost automatically tell a customer that they refer to a brand," Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 162-63 (1995) (emphasis in original), and "immediately . . . signal a brand or a product `source,'" id. at 163.
Remarkably, GTFM makes no mention of these recent Supreme Court cases and does not dispute the application of their standards in the July 11 Opinion. The July 11 Opinion found that the number "05" on a sports jersey does not "automatically" or "immediately" signal to a consumer that it refers to a brand, nor does the "intrinsic nature" of the number "05" on sports apparel serve to identify a particular source. This was especially the case with respect to GTFM's sports jerseys, where the "05" number is deliberately given the appearance, both in its placement and font, of a baseball or football player's identifying number. GTFM, 2002 WL 1477821, at *17. GTFM did not show at trial and has not shown in its motion for reconsideration that upon seeing the number "05" on a GTFM sports jersey, a consumer unfamiliar with the mark will recognize it as a source designation rather than simply as a number on an athletic jersey. Whether the number "05" is "descriptive" or "ornamental" has little impact on the finding that GTFM's "05" mark is not inherently distinctive and that secondary meaning must be shown if the mark is to receive trademark protection.
GTFM cites Paddington Corp. v. Attiki Importers Distribs., Inc., 996 F.2d 577 (2d Cir. 1993), for the proposition that an inherent distinctiveness inquiry must be conducted in the abstract, that is, by considering the mark as it is applied to a class of goods rather than as it is actually used by GTFM. In Paddington, the Second Circuit held that the trademark "NO. 12 OUZO" was arbitrary because it "was selected from among an endless variety of names that could be given to an ouzo product." Id. at 588. The Second Circuit also noted, however, that the use of number designations on ouzo "grew out of the former practice of ouzo producers in Greece to stamp barrels of ouzo with a number to distinguish their brand from another." Id. There is no such tradition in the sportswear industry. On the contrary, numbers have long been used not as designations of source, but to identify the individual players wearing the apparel. Even considered in the abstract, as applied to the sportswear class of goods, the use of a number will not immediately signal to a consumer that the number is a designation of source. At any rate, the Supreme Court has made clear in Qualitex, 514 U.S. at 163, that the determination of whether a mark is inherently distinctive is based on how consumers actually perceive the mark in the marketplace, and in this respect, GTFM has not shown that consumers will be compelled by the intrinsic nature of the GTFM's "05" mark to perceive it as a designation of source.
II. GTFM's Claim for Trademark Counterfeiting
GTFM argues that the July 11 Opinion wrongly considered the appearance of the goods on which GTFM and Solid used the "05" designation in determining whether Solid's use of "05" constituted trademark counterfeiting in violation of Section 32 of the Act, 15 U.S.C. § 1114. There is nothing in the Act, however, which states that to determine whether a defendant is engaged in counterfeiting, one compares plaintiff's and defendant's marks in the abstract, without considering how they appear to consumers in the marketplace. Rather, Section 45 of the Act, 15 U.S.C. § 1127, defines a "counterfeit" mark as "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." The July 11 Opinion found that the appearance of the number "05" as used by Solid, both in itself and in how it appeared on Solid's shirts, is not identical with or substantially indistinguishable from GTFM's use of the number "05." GTFM, 2002 WL 1477821, at *24. Thus, there was no counterfeiting.
GTFM cites United States v. Gonzalez, 630 F. Supp. 894 (S.D. Fla. 1986), a criminal trademark counterfeiting case, in support of its argument. The Gonzalez court granted the defendants' motion to dismiss the indictment on the ground that their watches were of such obvious inferior quality that they could not be considered counterfeits under 18 U.S.C. § 2320(d)(1). Upon a motion to reconsider, the court then denied the motion, finding that a "difference in price between products is simply not dispositive in itself [of whether two marks are identical or substantially indistinguishable]. Rather, difference in price between the products is one factor to be considered in assessing product proximity and likelihood of confusion." Id. at 896. Unlike in Gonzalez, this Court did not consider only difference in price in conducting its counterfeiting inquiry. Rather, it considered a variety of factors, including the similarity of the marks as used by GTFM and Solid and whether they would appear to be identical or substantially indistinguishable to consumers in the marketplace. GTFM, 2002 WL 1477821, at *24. If Gonzalez is any guide to the conduct of a counterfeit mark inquiry, then this Court did not conduct its inquiry in error.
III. GTFM's Failure to Provide Notice of Registration
GTFM argues that the July 11 Opinion wrongly found that GTFM's failure to display statutory notice of the registration of the "05" mark after the date of its registration deprived GTFM of the right to any award of damages or profits pursuant to Section 1117(a) of the Act unless Solid had actual notice of that registration. GTFM, 2002 WL 1477821, at *3031. Citing decisions issued before the revision of the Lanham Act in 1988, GTFM argues that while its failure to provide statutory notice may bar it from recovering profits or damages arising out of Solid's infringement of its registered mark under Section 1114(1), it may still recover profits and damages arising out of Solid's violation of Section 1125(a) of the Act, which prohibits the use of false designations of origin, or the common law of unfair competition.
It may be noted that McCarthy agrees with the analysis in the July 11 Opinion of the obligation imposed by Sections 1117(a) and 1111 to provide actual notice or to display statutory notice. See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 19:144 (4th ed. 2002).
The parties disputed at trial whether Solid had actual notice of GTFM's registration of the "05" mark between December 26, 2000, and March 7, 2001. This dispute affects Solid's sale of approximately 19, 800 garments and the award of $236,590 in damages to GTFM. Since the July 11 Opinion included this amount in its award of damages to GTFM, GTFM, 2002 WL 1477821, at *29 30, and found that Solid's trademark counsel did have actual notice of GTFM's registration of the "05" mark beginning on March 7, 2001, GTFM, 2002 WL 1477821, at *31, it is unnecessary to reconsider this issue.
Conclusion
For the reasons stated, plaintiffs' motion for reconsideration is denied.
SO ORDERED: