Opinion
99 Civ. 4129 (AGS).
August 31, 2000
OPINION AND ORDER
Plaintiff La Cibeles, Inc. commenced this action on June 8, 1999, alleging infringement of its mark "Petit Cheri". Plaintiff asserts claims for (i) trademark infringement pursuant to section 32(a) of the Lanham Act, 15 U.S.C. § 1114 (1); (ii) false designation of origin pursuant to section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (a); (iii) unfair competition pursuant to New York common law; (iv) dilution pursuant to New York General Business Law ("N.Y. Gen. Bus. Law") § 368-d; and (v) deceptive trade practices pursuant to N.Y. Gen. Bus. Law § 349. Before the Court is defendants' motion to dismiss the complaint in its entirety pursuant to Federal Rule of Civil Procedure ("Fed.R.Civ.P.") 12(b)(6). For the reasons stated below, defendants' motion is GRANTED.
BACKGROUND
The following facts are undisputed unless otherwise indicated.
A. The Parties
Plaintiff is a manufacturer and distributor of personal care products, including perfumes, colognes, skin creams, body gels, soaps, and shampoos. (Affidavit of Joaquin Cores, dated December 14, 1998, ("Cores Aff.") ¶ 2.) Defendants are: (i) Adipar, Ltd. ("Adipar"), a New York corporation engaged in the distribution of fragrances, (Complaint ¶ 2), and acting as agent for defendant Annick Goutal ("Goutal"), (Complaint ¶ 3); (ii) Goutal, a French manufacturer and distributor of fragrances, (Complaint ¶ 3); (iii) Federated Department Stores, Inc. ("FDS"), a New York corporation, (Complaint ¶ 4); (iv) Saks Fifth Avenue ("Saks"), a New York corporation, (Complaint ¶ 5); and (v) Bergdorf Goodman ("Bergdorf"), a New York corporation, (Complaint ¶ 6) (collectively: "defendants").
B. Plaintiff's and Goutal's Products
Plaintiff manufactures and distributes a baby cologne called "Petit Cheri". The baby cologne is sold in 16 and 32 ounce plastic bottles with no secondary packaging. (Exh. A to Affidavit of Susan M. Peterson, dated November 1, 1999 ("Peterson Aff.").) The 16 ounce bottle bears a design of a baby seated in a bed of flowers sucking a pacifier. (Exh. A to Peterson Aff.) The 32 ounce bottle bears a design of a house, a stream, a few trees, and a sun wearing a "smiley face." (Exh. A to Peterson Aff.) The bottles are transparent and the labels are blue on the baby cologne for male infants and pink or violet on that for female infants. (Peterson Aff. ¶ 5; Exh. A to Peterson Aff.) On all of the bottles, the words "Petit Cheri" are underscored by a heavy underline. (Exh. A to Peterson Aff.) The baby cologne is sold in discount drug stores such as Alps Drug Company located on the corner of 42 street and Ninth Avenue, New York, New York and Chocolate Discount on the corner of Broadway and 172 Street, New York, New York. (Peterson Aff. ¶¶ 3, 4.) An investigative agency hired by Goutal found no evidence of sales in department stores, regional chain stores, or "small, local baby stores." (Peterson Aff. ¶ 4.) The 16 ounce bottle of Petit Cheri baby cologne sells for approximately $8.00 and the larger one is less than twice as costly. (Peterson Aff. ¶ 5.)
Goutal produces a women's fragrance called "Petite Cherie." The Petite Cherie Eau de Toilette Spray sells for $35 an ounce and the Petite Cherie Eau de Parfum sells for $53 an ounce. (Affidavit of Nicholas Ratut, dated November 8, 1999 ("Ratut Aff.") ¶ 7.) The fragrance is sold in 1.67 ounce or 3.33 ounce glass bottles, which are then packaged in boxes. (Ratut Aff. ¶¶ 4, 7.) Attached to the Petite Cherie fragrance bottles is an ivory tag on which appears a gold wreath framing the name of the fragrance, "Petite Cherie", which is in gold script lettering. (Ratut Aff. ¶ 3; Exh. A to Ratut Aff.) The words "Annick Goutal" and "Paris," also in gold script lettering, are prominently displayed beneath the wreath. (Ratut Aff. ¶ 3.) The packaging contains the same information as the tags on the bottles, adding either "Eau de Toilette" or "Eau de Parfum" inside the wreath, also in gold script lettering. (Ratut Aff. ¶ 4; Exh. B to Ratut Aff.) The color of both the packaging and the tags on the bottles is ivory, accented with gold. (Exh. B to Ratut Aff.) Petite Cherie Eau de Toilette and Eau de Parfum are sold only in Bloomingdale's, Saks Fifth Avenue, Bergdorf-Goodman, and similar "first-tier stores". (Ratut Aff. ¶ 6.) Petite Cherie is not sold in discount or drug stores. (Ratut Aff. ¶ 6.)
C. Background to the Dispute Between the Parties
Since 1980, plaintiff has allegedly manufactured and distributed baby cologne in the United States under the trademark "Petit Cheri". (Cores Aff. ¶ 3.) Natural Fragrances, Inc. was formed in 1990 to sell Petit Cheri cologne products. Natural Fragrances, Inc. allegedly continuously used the mark Petit Cheri to identify and distinguish baby cologne beginning in April 3, 1991. (Complaint ¶¶ 10, 15.) The company became inactive in the first half of 1992. (Cores Aff. ¶¶ 4, 5.) Thereafter, plaintiff allegedly adopted and continuously used the mark on baby cologne. (Complaint ¶¶ 10, 15.)
Natural Fragrances, Inc. continues to receive mail at an address in Miami, Florida. (Cores Aff. ¶ 6.)
On May 12, 1992, U.S. Registration No. 1, 685, 932 issued to Natural Fragrances, Inc. for the mark "Petit Cheri" as used on cologne. (Exh. A to Complaint; Complaint ¶¶ 10-12.) "Petit Cheri" means "my little dear one." (Exh. A to Complaint.) Natural Fragrances, Inc. allegedly assigned the trademark registration to plaintiff in 1992. (Cores Aff. ¶ 5.) However, no assignment was recorded. (Exh. A to Affidavit of David A. Cutner, Esq. dated November 5, 1999; Affidavit of Pascal Malbequi, Esq. dated November 9, 1999 ("Malbequi Aff.") ¶ 2.)
In early 1997, Goutal conducted a trademark search which revealed the trademark registered to Natural Fragrances, Inc. (Malbequi Aff. ¶ 2.) However, further investigation revealed the dissolution of that company in October 1992, and Goutal's general counsel states in an affidavit dated November 9, 1999 that no trace of the company's existence could be found. (Malbequi Aff. ¶ 2.) Believing itself free to use the name "Petite Cherie", Goutal proceeded with plans for a product launch in 1998. (Malbequi Aff. ¶ 3.) In February 1998, Goutal filed an application with the Patent and Trademark Office ("PTO") for registration of the "Petite Cherie" mark. On March 28, 1998, Adipar received a cease and desist letter from counsel purporting to represent Natural Fragrances, Inc. (Exh. A to Malbequi Aff.) Goutal replied on March 30, 1998, questioning the basis for the cease and desist letter given that Natural Fragrances, Inc. had been formally dissolved six years earlier. (Exh. B to Malbequi Aff.) On April 16, 1998, plaintiff responded by explaining that it was an entity related to Natural Fragrances, Inc. and by sending cease and desist letters to Goutal's customers. (Exhs. D, F to Malbequi Aff.) On April 27, 1998, Goutal proposed a co-existence agreement. (Malbequi Aff. ¶ 5; Exh. E to Malbequi Aff.) On May 6, 1998, a "Confirmation of Assignment" of the mark to plaintiff was recorded at the PTO. (Exh. A to Complaint; Complaint ¶ 12.) Plaintiff did not respond to Goutal's letter, dated April 27, 1998. (Malbequi Aff. ¶ 5.) A year later, plaintiff filed the instant action.
D. Procedural History
Plaintiff filed this action on June 8, 1999, asserting claims for (i) trademark infringement pursuant to section 32(a) of the Lanham Act, 15 U.S.C. § 1114 (1); (ii) false designation of origin pursuant to section 43(a) of the Lanham Act, 15 U.S.C. § 1125 (a); (iii) unfair competition pursuant to New York common law; (iv) dilution pursuant to N.Y. Gen. Bus. Law § 368-d; and (v) deceptive trade practices pursuant to N.Y. Gen. Bus. Law § 349. Plaintiff seeks injunctive relief, disposal of certain materials in defendants' possession pursuant to 15 U.S.C. § 1118, and treble damages and other monetary relief pursuant to 15 U.S.C. § 1117.
Section 368-d of the N.Y. Gen. Bus. Law was repealed in 1997 and is now codified at N Y Gen. Bus. Law § 360-1. Accordingly, the Court will refer hereinafter to § 368-d as § 360-1.
Defendants filed the instant motion to dismiss on January 3, 2000 and requested that the motion be converted to a motion for summary judgment. Both plaintiff and defendants submitted materials outside the pleadings. The Court, having notified the parties of the pending conversion and having offered the parties an opportunity to submit additional materials, converts defendants' motion to dismiss, as it relates to plaintiff's first, second, third, and fourth claims, to a motion for partial summary judgment. See Cantor v. NYP Holdings, Inc., 51 F. Supp.2d 309, 310 (S.D.N.Y. 1999) ("Under Fed.R.Civ.P. 12 (b)(6), if matters outside the pleadings are presented to and not excluded by the Court, the Court converts the motion to dismiss in to a Rule 56 motion for summary judgment [and] . . . need not provide formal notice of conversion . . . [if] it has already accepted from both sides materials other than pleadings.") (citations and internal quotation marks omitted).
Defendants' motion papers fail to address the question of whether material issues of fact exist with regard to plaintiff's fifth claim, addressing instead the adequacy of the allegations in the pleadings. Consequently, the Court does not convert defendants' motion as relates to the fifth claim to one for summary judgment and decides the motion with regard to that claim based on the complaint alone. See Amaker v. Weiner, 179 F.3d 48, 50 (2d Cir. 1999) (holding that "[a]ttachment of an affidavit or an exhibit to a Rule 12(b)(6) motion, however, does not without more establish that conversion is required" and "reversal for lack of conversion is not required unless there is reason to believe the extrinsic evidence actually affected the district court's decision");Velazquez v. City of New York, No. 99 Civ. 3594, 2000 WL 325683, *2 (S.D.N.Y. Mar. 28, 2000) (stating that "Rule 12(b)(6) gives district courts two options when matters outside the pleadings are presented in response to a 12(b)(6) motion: (1) the court may exclude the additional material and decide the motion on the complaint alone; or (2) it may convert the motion to dismiss to a motion for summary judgment . . .").
DISCUSSION
I. MOTION FOR SUMMARY JUDGMENT
A. Legal Standard
A court may grant summary judgment under Fed.R.Civ.P. 56 only if it is satisfied that "there is no genuine issue as to any material fact and . . . the moving party is entitled to a judgment as a matter of law."Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); see also Mitchell v. Washingtonville Central School District, 190 F.3d 1, 5 (2d Cir. 1999). The initial burden rests on the moving party to demonstrate the absence of a genuine issue of material fact, and all inferences and ambiguities must be resolved in favor of the party against whom summary judgment is sought. See Gallo v. Prudential Residential Servs., Ltd. Partnership, 22 F.3d 1219, 1223 (2d Cir. 1994) (citations omitted).
If this burden is met, the burden then shifts to the non-moving party to come forward with evidence to defeat the motion for summary judgment.See Anderson, 477 U.S. at 248. The non-moving party must set forth "specific facts showing that there is a genuine issue for trial" and the evidence cannot consist of "mere allegations or denials of the adverse party's pleading." Fed.R.Civ.P. 56(e); see also Delaware Hudson Ry. v. Consolidated Rail Corp., 902 F.2d 174, 178 (2d Cir. 1990) ("Conclusory allegations will not suffice to create a genuine issue.").
B. Plaintiff's First Two Claims
Defendant seeks summary judgment on plaintiff's first and second claims, which are asserted pursuant to the Lanham Act, 15 U.S.C. § 1114 (1) and 1125(a). A plaintiff must prove the same elements in order to prevail on either claim. See Sports Authority Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960 (2d Cir. 1996); Rosenthal A.G. v. Ritelite, Ltd., 986 F. Supp. 133, 139 (E.D.N.Y. 1997) ("Both [claims of trademark infringement under 15 U.S.C. § 1114 (1) and false designation of origin under 15 U.S.C. § 1125 (a)] require proof of essentially the same elements"). The "central inquiry" is whether there is a "likelihood of confusion" either because (i) "an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused as to the source of the goods in question"; or (ii) there exists "confusion as to [the] plaintiff's sponsorship or endorsement of the junior mark."Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 502 (2d Cir. 1996). In evaluating whether a plaintiff has established the existence of a likelihood of confusion, the law of this Circuit requires that courts balance the eight factors elaborated in Polaroid Corp. v. Polaroid, 387 F.2d 492, 495-96 (2d Cir. 1961) (Friendly, J.). See Hormel, 73 F.3d at 502. "The Court of Appeals for the Second Circuit has instructed that no single factor is dispositive and cases may certainly arise where a factor is irrelevant . . . but it is incumbent upon the district judge to engage in a deliberate review of each factor. . . ."Trustees of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F. Supp. 733, 743 (S.D.N.Y. 1997) (Koeltl, J.) (citations and internal quotation marks omitted).
In order to prevail on its Lanham Act claims, a plaintiff must also demonstrate that it has a valid trademark. See Cadbury, 73 F.3d at 477. However, registration is prima facie evidence of validity under 15 U.S.C. § 1057 (b). Here, it is undisputed that plaintiff's trademark is valid, registered, and incontestible. Therefore, the inquiry will turn solely on the likelihood of confusion stemming from similarities between that mark and that of defendants. See Cadbury, 73 F.3d at 477 (finding that where defendant did not dispute the validity of plaintiff's trademark, the inquiry turned on the likelihood of confusion alone).
"In trademark infringement cases, the district court's findings with regard to each of the Polaroid factors are `entitled to considerable deference,' even on appeals from summary judgment." Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 478 (2d Cir. 1996) (citation omitted). Summary judgment in a trademark action is appropriate "where the undisputed evidence would lead only to one conclusion as to whether confusion is likely". Cadbury, 73 F.3d at 478. Accordingly, the Court considers whether a reasonable trier of fact could conclude that the eight Polaroid factors support a likelihood of confusion.
Plaintiff contends that the fact the PTO rejected Goutal's trademark registration forecloses defendants' motion for summary judgment without reference to the Polaroid balancing test. However, the outcome of a PTO registration proceeding does "not affect the legal standard applied in the infringement claim or the scope of the required fact finding."Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 743 (2d Cir. 1994) (citingGoya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848, 854 (2d Cir. 1988)). "The District Court [must] still independently determine . . . the likelihood of consumer confusion as to the source of the goods," which must "be resolved not by reference to a registration determination by the PTO but by application of the multi-factor balancing test set forth in Polaroid." Sterling Drug, 14 F.3d at 743-44 (collecting cases.) Consequently, the Court dismisses as meritless plaintiff's contention that the PTO's refusal to register defendant's mark has bearing on whether there is likelihood of confusion. See Sterling Drug, 14 F.3d at 743 (finding that district court judge did not err in conducting an independent examination of the likelihood of confusion without regard to registration proceeding at PTO).
1. Strength of the Mark
The first Polaroid factor is the "strength of the mark." The strength of plaintiff's mark is a measure of "its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous source." Trustees, 964 F. Supp. at 743 (citation omitted). There are four categories of marks. Judge Friendly stated in the seminal case of Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 9 (2d Cir. 1976), that, "arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, [the four categories] are: (i) generic; (ii) descriptive; (iii) suggestive; and (iv) arbitrary or fanciful". Abercrombie, 537 F.2d at 9;see Trustees, 964 F. Supp. at 743 (citations omitted). The latter two categories are eligible for protection under the Lanham Act without proof of secondary meaning. See Trustees, 964 F. Supp. at 743 (citation omitted).
A trademark acquires secondary meaning when "the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the term in favor of its meaning as a word identifying that business." Cadbury, 73 F.3d at 479 n. 3 (citation omitted).
Here, plaintiff's mark "Petit Cheri" falls within the ambit of the "suggestive" category. "A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods." BigStar Entertainment, Inc. v. Next Big Star, Inc., 105 F. Supp.2d 185, 197 (S.D.N.Y. 2000); see Elizabeth Taylor Cosmetics Co., Inc. v. Annick Goutal, S.A.R.L., 673 F. Supp. 1238, 1243 (S.D.N.Y. 1987). To be "suggestive", a term must require "subtlety or intimation," a "mental detour or thought gymnastics . . . to span by creative leap the small space evident here between the product and name and its source."BigStar, 105 F. Supp.2d at 199. Connecting the mark "Petit Cheri", and the product, a baby cologne, requires imagination because the mark suggests the rationale for purchasing, the outcome of wearing, or even the intended wearer of the baby cologne. See Giorgio Beverly Hills, Inc. v. Revlon Consumer Products Corp., 869 F. Supp. 176, 181 (S.D.N.Y. 1994) ("The color red traditionally evokes romance, passion, love and other strong emotions . . . [and the] mark "RED" invites the consumer to employ a bit of perception, thought, and imagination, to reach the conclusion that [plaintiff's] fragrance is romantic, passionate, and sexy, and/or that the consumer will elicit the corresponding emotions from others when wearing the fragrance [and b]ecause it implies the characteristics of [plaintiff's] product, "RED" is a suggestive mark."); Elizabeth Taylor Cosmetics, 673 F. Supp. at 1243-44 (concluding that the `Passion' mark identifying plaintiff's perfume "is most aptly described as suggestive and deserving of protection in the absence of secondary meaning", reasoning that, although the word `passion' may be used frequently in fragrance advertising copy, `passion' does not describe the product but rather "an emotion the fragrance seeks to induce" and "[c]onnecting the emotion to the fragrance requires an effort of the imagination"); See Jean Patou, Inc. v. Jacqueline Cochran, Inc., 201 F. Supp. 861, 864 (S.D.N.Y. 1962) (stating that the term "Joy" for perfume "could be said to be descriptive of the product's end effect upon the user" and falls somewhere in between the descriptive and the arbitrary because it demands "an effort of the imagination to be understood as descriptive"), aff'd, 312 F.2d 125 (2d Cir. 1963).
Contrary to plaintiff's contention, plaintiff's mark is ineligible for the strongest protection. "Arbitrary marks consist of words that neither suggest nor describe any characteristic of the particular good or service with which it is used." See Jordache Enters., Inc. v. Levi Strauss Co., 841 F. Supp. 506, 515 (S.D.N.Y. 1993) (cited by Trustees, 964 F. Supp. at 743). The term "petit cheri", which means "little dear one", does suggest the intended wearer of the cologne or the rationale for utilizing baby cologne. See Jean Patou, 201 F. Supp. at 864 (stating that the term "Joy" for perfume "is not one which is fanciful or arbitrary in relation to the type of product on which it is used," but instead "could be said to be descriptive of the product's end effect upon the user"), aff'd, 312 F.2d 125 (2d Cir. 1963); cf. Giorgio, 869 F. Supp. at 180 ("Because of its connotative meanings, `red' has developed a certain traditional significance which has proven particularly adaptable to fragrance products and . . . as a result, Giorgio's mark "RED" is not arbitrary or fanciful."). Having concluded that plaintiff's mark is suggestive, the Court finds that this Polaroid factor favors plaintiff, although not as strongly as it might were plaintiff's mark arbitrary.
Plaintiff further contends that regardless of the category of mark, the fact that its mark has achieved incontestable status pursuant to 15 U.S.C. § 1065 means that the mark is of the strongest kind. However, a registered and incontestable mark may be entitled only to "significant protection" not "the most protection the Lanham Act can provide". See Lois Sportswear, USA, Inc. v. Levi Strauss Co., 799 F.2d 867, 871 (2d Cir. 1986); see also Conopco, Inc. v. Cosmair, Inc., 49 F. Supp.2d 242, 248 (S.D.N.Y. 1999) (concluding that an incontestible trademark, ETERNITY, was protected under the Lanham Act, but was not a strong mark). Further, incontestability chiefly affects thefirst inquiry in a Lanham Act claim, "truncating" the inquiry as to the validity of the trademark. Conopco, 49 F. Supp.2d at 247. The validity of plaintiff's mark is not disputed here, as discussed in footnote 3, supra. The Second Circuit has clearly stated that, under 15 U.S.C. § 1115, "incontestability does not relieve the trademark owner from the [second inquiry, the] requirement of proving likelihood of confusion" Gruner + Jahr USA Pub'g, v. Meredith Corp., 991 F.2 1072, 1076-77 (2d Cir. 1993).
2. Degree of Similarity Between the Two Marks
The second Polaroid factor is the similarity between the marks "Petit Cheri" and "Petite Cherie". The Court finds that, although the two marks do bear a resemblance, the addition of the `e' in both words and the pronunciation of the `t' engendered by defendant's use of the feminine conjugation create a significant difference between the marks. See Hormel, 73 F.3d at 503 (finding that although plaintiff's mark "SPAM" and defendant's mark "Spa'am" bore "more than a passing resemblance," defendant's addition of an apostrophe and an `a' to SPAM and the resultant change in pronunciation established "some significant differences").
"Moreover, an inquiry into the degree of similarity between two marks does not end with a comparison of the marks themselves . . . the setting in which a designation is used affects its appearance and colors the impression conveyed by it." Hormel, 73 F.3d at 503 (collecting cases) (internal quotation marks omitted). In deciding whether the marks are similar as used, "a court does not look just at the typewritten and aural similarity of the marks, but how they are presented in the marketplace."Sports Authority, 89 F.3d at 962; see also Gruner + Jahr, 991 F.2d at 1078 ("[C]ourts look to the overall impression created by the logos. . . ."); Rosenthal, 986 F. Supp. at 142 ("Differences in the presentation of trademarks can reduce the impact of any initial similarity.") (collecting cases); Jim Beam Brands Co., Inc. v. Beamish Crawford Ltd., 852 F. Supp. 196, 199 (S.D.N.Y. 1994) ("In assessing similarity, the court must consider the general impression created by the marks, i.e., its packaging, labels, logos, and color.") (citation omitted). The likelihood of confusion between the plaintiff's and the defendant's marks decreases the more that they are used in conjunction with different words, colors, designs, labels, or distinctive logos. See Conopco, 49 F. Supp.2d at 250.
Here, the general impression conveyed by the setting in which Petit Cheri and Petite Cherie are used is quite different. On the one hand, plaintiff's "Petit Cheri" product is sold in 16 and 32 ounce plastic bottles with no secondary packaging. The labels are blue for the baby cologne meant for infant boys and pink or violet for the baby cologne meant for infant girls, and bear simple artwork such as a house, a sun with a "smiley face", a baby. The name Petit Cheri appears on all the bottles with a slash underneath the words. On the other hand, Goutal's "Petite Cherie" women's fragrance is sold in 1.67 ounce or 3.33 ounce glass bottles, which are then packaged in ivory colored boxes bearing gold print. Attached to the glass bottles is an ivory colored tag on which appears a gold wreath framing the name of the fragrance, "Petite Cherie", which is lettered in gold script. The words "Annick Goutal" and "Paris", also in gold script lettering, are prominently displayed beneath the wreath. The packaging contains the same information as the tags on the bottles, adding either "Eau de Toilette" or "Eau de Parfum" inside the wreath, also in gold script lettering. Consequently, the packaging, labels, logos and colors of the Petit Cheri and Petite Cherie products are entirely dissimilar. See Jim Beam, 852 F. Supp. at 199 (finding "similarity" factor failed to favor plaintiff where (i) defendant's beverages were sold only in "12 ounce bottles" associated with beer instead of "liquor bottles of varying sizes", (ii) the bottle labels had different arrangements and colors and (iii) the labels identified the brewer as "PLC" or "LTD," incorporation designations "that signal a foreign maker to all but the least astute consumer"); see also Hormel, 73 F.3d 503 (finding that where the words "Muppet Treasure Island" was "prominently displayed wherever the name Spa'am appears", the mark "Spa'am" "appears in strikingly different contexts and projects wholly different visual displays" from plaintiff's mark "Spam" on luncheon meat); Conopco, 49 F. Supp.2d at 251 ("Finally, the presence of the Ralph Lauren Romance label . . . on the ROMANCE [perfume] box, and on the collar of the ROMANCE bottle top itself, significantly reduces the possibility that consumers will erroneously conclude that ROMANCE is somehow sponsored by or associated with the ETERNITY [perfume]."). No reasonable trier of fact could conclude otherwise.
The Court rejects plaintiff's contention that the marks are similar because there will be "post sales confusion". Plaintiff reasons that the products will appear similar after they are sold because the viewer will not know from which retail outlet the product was purchased. However, the identity of the retail outlet is entirely irrelevant. The Court has found that it is the bottles themselves that bear the labels and designs that give the overall impression of dissimilarity.
3. Proximity of the Products
The third Polaroid factor, "the proximity of the products", concerns "whether the two products compete with each other." Trustees, 964 F. Supp. at 746. In determining whether products directly compete, courts should consider "whether the products serve the same purpose and whether they share similar geographic distribution, market position and audience appeal". Rosenthal, 986 F. Supp. at 143 (citation omitted); see Cadbury, 73 F.3d at 479 (finding that proximity may be gauged by "the class of customers to whom the goods are sold, the manner in which products are advertised, and the channels through which the goods are sold").
Here, the products do not share similar audience appeal. Evidence of a different class of customer and channel of trade is provided by the undisputed fact that plaintiff's baby cologne is sold mainly at drugstores and Goutal's fragrance is sold in "exclusive" stores like Saks Fifth Avenue and Bloomingdales. See Giorgio, 869 F. Supp. at 183-84 ("Although RED and Charlie RED are both fragrances, they are sold in different channels of trade . . . Giorgio RED is sold in the more exclusive department stores [whereas] Charlie RED is more of a "mass market" fragrance which is sold in corresponding outlets."); cf. Elizabeth Taylor Cosmetics, 673 F. Supp. at 1246 (finding "no close proximity" where one fragrance was sold mainly in the mass department store outlets while the other fragrance was sold only in more exclusive stores). Plaintiff has failed to identify even one shop where both plaintiff's Petit Cheri and Goutal's Petite Cherie products are being sold. See Plus Products v. Plus Discount Foods, Inc., 722 F.2d at 1008 (discounting danger from proximity where two products could both be found in supermarkets, because the products did not appear in the same stores). Further, the purchase prices are considerably different. See Computer Assoc. Int'l v. AJV Computerized Data Mgm't, 889 F. Supp. 630, 636 (S.D.N.Y. 1995) (finding lack of proximity where, inter alia, "the purchase prices are considerably different"); Giorgio, 869 F. Supp. at 183-84 ("Although RED and Charlie RED are both fragrances, they are sold in different channels of trade . . . RED seems to sell to a consumer who is willing to spend more money for a fragrance than is the consumer of Charlie RED . . . six times the price."). Although plaintiff contends that it already produces certain personal care products associated with scent and grooming and may be seen as competing in the large market of personal care products, the contention does not change the fact that plaintiff is not actually presently producing women's fragrances. See Trustees, 964 F. Supp. at 746 (distinguishing, for purposes of proximity, (i) defendant, an institution that actually provides healthcare services; from (ii) plaintiff, an institution that provides medical training and merely has a teaching staff that engages in healthcare). No reasonable trier of fact could conclude that the goods are in close "proximity".
Additionally, the products appear to have different "geographic distribution". Rosenthal, 986 F. Supp. at 143. Plaintiff does not deny that, unlike defendants, (i) many of its customers are Hispanic, (ii) its television advertisements are on Spanish-speaking channels, (iii) its label is translated into Spanish, and (iii) many of the sales of baby cologne occur in Puerto Rico and predominantly Hispanic neighborhoods in the United States. (Exh. C to Nitida Cores Aff. at 14, 47-48, 120; Exh. A to Reply Affidavit, signed by Debra I. Resnick, Esq. dated December 29, 1999.)
4. Likelihood that the Prior Owner will Bridge the Gap
The fourth Polaroid factor, "bridging the gap", "refers to the senior user's interest in preserving avenues of expansion and entering into related fields." Trustees, 964 F. Supp. at 746 (citing Hormel, 73 F.3d at 504). This factor "involves a determination of the likelihood that the plaintiff will enter the defendant's business or of the average customer's perception that the plaintiff would enter the defendant's business."Trustees, 964 F. Supp. at 746 (emphasis added); see Cadbury, 73 F.3d at 482.
Here, plaintiff, who has been producing the baby cologne for 20 years, has not displayed any intent of entering the upscale fragrance market. Plaintiff's chief executive officer stated in her deposition that she was unaware of any plans to develop a women's fragrance and had not even engaged in market research concerning the feasibility thereof. (Exh. C to Affidavit of Nitida C. Cores, dated December 15, 1999, at 110, 124-25.) Further, plaintiff sets forth no facts in support of its contention that consumers familiar with plaintiff's inexpensive baby cologne would assume that plaintiff had also entered the upscale women's fragrance market.Cf. Cadbury, 73 F.3d at 482 (finding that consumers would assume that plaintiff, a manufacturer of branded beverages, was intending to enter the private label market where evidence was adduced showing that manufacturers of branded goods ordinarily so expand their lines). Instead, plaintiff merely states in conclusory fashion that "consumers will assume" that plaintiff also produces women's fragrances. Plaintiff cannot demonstrate the existence of a genuine issue of fact by setting forth conclusory allegations. See Delaware Hudson Ry., 902 F.2d at 178 ("Conclusory allegations will not suffice to create a genuine issue."). Plaintiff contends that it does have evidence of "bridging the gap" because, although it does not now manufacture or distribute women's fragrances of any kind, it does produce sundry other personal care products in addition to the Petit Cheri cologne. However, the fact that plaintiff produces items that may be related to women's fragrances does not alter the fact that plaintiff has failed to allege facts establishing a likelihood that it will become a producer of women's fragrances specifically. See Trustees, 964 F. Supp. at 746 (concluding that "bridging the gap" factor did not favor plaintiff because "plaintiff's present and future alliances and affiliations with medical and healthcare providers does not change the fact that the plaintiff has not demonstrated a likelihood that it will become a provider of medical or healthcare services"). Consequently, no reasonable trier of fact could conclude that plaintiff is likely to "bridge the gap".
5. Actual Confusion
The fifth Polaroid factor addresses the existence of "actual confusion." "For purposes of the Lanham Act, actual confusion means `consumer confusion that enables a seller to pass off his goods as the goods of another.'" Trustees, 964 F. Supp. at 746 (citation omitted). To show actual confusion, the plaintiff must demonstrate that the defendant's use "could inflict commercial injury in the form of either a diversion of sales, damage to goodwill, or loss of control over reputation." Trustees, 964 F. Supp. at 746 (citation omitted).
Here, plaintiff has proffered de minimis evidence of actual confusion. Plaintiff's director of sales, Alberto Ibanez, states that on a visit to one of plaintiff's customers, a gift and clothing store, (i) he was informed by a salesperson that the salesperson allegedly had been queried by a woman concerning plaintiff's Petit Cheri line of fragrances for adult women, (Affidavit of Alberto Ibanez, dated December 13, 1999 ("Ibanez Aff.") ¶¶ 1-3); (ii) based on the alleged query that had been directed to the salesperson, the salesperson was also under the impression that plaintiff had a line of Petit Cheri fragrances for adult women. (Ibanez Aff. ¶ 3.) However, the relevance of this evidence of actual confusion is negligible given the small number of people who allegedly expressed confusion and the absence of a valid statistical sample. See Trustees, 964 F. Supp. at 747 (finding that (i) defendant's testimony that third parties had confused defendant's advertisements with those of plaintiff was inadequate evidence of "actual confusion" because "the relevance of this type of evidence is lessened by the small number of people who allegedly expressed confusion and the absence of a valid statistical sample"; and (ii) an Internet survey was "entitled to little if any weight both because of the extremely small numbers involved and because there was no showing that supported the trustworthiness of the survey methodology"); cf. Elizabeth Taylor Cosmetics, 673 F. Supp. at 1246 (finding that the "evidence of actual confusion presented . . . is scant" where it "consist[ed] mostly of anecdotal testimony of . . . saleswomen who are employed at Bergdorf-Goodman").
The relevance of Ibanez' statements is minimal also because they do not evidence actual purchases made by confused consumers as a result of their confusion. See Trustees, 964 F. Supp. at 747 ("Moreover, there is a difference between isolated expressions of momentary confusion and confusion that leads to actual purchasing decisions."). Plaintiff has introduced no evidence of any instance in which a customer actually purchased Goutal's product based on the erroneous assumption that it was one of plaintiff's Petit Cheri products. See Trustees, 964 F. Supp. at 747 (finding no evidence of actual confusion where "[t]he plaintiff introduced no evidence of any instance in which a patient mistakenly went to one of the defendant's facilities in the erroneous belief that the defendant was associated with the plaintiff" or "patients or doctors . . . made decisions about which hospital to select based upon confusion between the plaintiff and the defendant"); Computer Assoc., 889 F. Supp. at 637 (finding no actual confusion where no evidence was proffered "of a single consumer, retail or wholesale, who intended to buy AJV's software but mistakenly bought CAI's" due to confusion regarding plaintiff's and defendant's marks). Consequently, no reasonable trier of fact could conclude that there is evidence of actual confusion.
6. Defendant's Good Faith
The sixth Polaroid factor is defendant's "good faith." In considering whether a defendant has acted in good faith, courts examine whether "defendant adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between his and the senior user's product." Trustees, 964 F. Supp. at 747-48 (citing Arrow Fastener Co. Inc. v. Stanley Works, 59 F.3d 384, 397 (2d Cir. 1995). "Good faith can be found if a defendant has requested a trademark searchor has relied on the advice of counsel." Sports Authority, 89 F.3d at 694 (emphasis added). It is undisputed that, prior to launching the Petite Cherie fragrance, Goutal requested a trademark search, and sought the advice of counsel. See Computer Assoc., 889 F. Supp. at 638 (finding good faith where "CAI requested a trademark search"); Pfizer, Inc. v. Astra Pharmaceutical Prods., Inc., 858 F. Supp. 1305, 1327 (S.D.N.Y. 1994) (Schwartz, J.) (finding good faith on a motion for summary judgment where "[p]rior to adopting the TOPROL XL mark, Astra followed its uniform and standard practice of having outside counsel search the mark").
Although plaintiff contends that Goutal was aware of plaintiff's mark before Petite Cherie was launched, the Second Circuit has clearly stated that "[f]ull knowledge of a prior use of a protected mark is not necessarily inconsistent with a finding of good faith, particularly where the alleged infringer is unsure as to the scope of protection." Cadbury, 73 F.3d at 483. It is undisputed that, although the trademark search revealed that Natural Fragrances, Inc. had registered the mark "Petit Cheri," (i) Natural Fragrances, Inc. had been dissolved and inactive for many years; and (ii) the alleged assignment to plaintiff of Natural Fragrance, Inc.'s mark had not been registered with the PTO. It is also undisputed that it was before defendants received the letter apprizing them that a potential conflict existed that Goutal had conducted the trademark search, filed an application for the registration of its Petite Cherie mark, and began the launch of Petite Cherie by acquiring customers like FDS, Saks Fifth Avenue, and Bergdorf Goodman. Cf. Trustees, 964 F. Supp. at 748 (finding no bad faith where defendant "was not aware of any potential conflicts with any entities in the healthcare business using the name"). Consequently, no reasonable trier of fact could conclude that the selection and use of the mark Petite Cherie was made with the intent of capitalizing on Petit Cheri's existing reputation.
It is also undisputed that, upon finally being apprized of the potential conflict by letter, Goutal immediately responded.
7. Quality of Defendant's Product
The seventh Polaroid factor, the "quality of defendant's product", "is primarily concerned with whether the senior user's reputation could be jeopardized by virtue of the fact that the junior user's product is of inferior quality." Trustees, 964 F. Supp. at 747 (citation omitted). Petite Cherie fragrance has not been shown to be of inferior quality. First, it is undisputed that Goutal's fragrance, unlike plaintiff's cologne, is sold in stores such as Saks Fifth Avenue and costs 100 times more per ounce than plaintiff's cologne. See Conopco, 49 F. Supp.2d at 255 (finding evidence of the "good quality" of defendant's perfume where defendant presented evidence "that [defendant's perfume entitled] ROMANCE is a relatively high-priced . . . prestige fragrance that is sold in upscale department and specialty stores throughout the country"). Further, plaintiff has not only failed to present adequate evidence showing that Goutal's product is of inferior quality or has caused plaintiff to lose revenue, plaintiff fails even to suggest that this is the case. See Conopco, 49 F. Supp.2d at 255 ("[Plaintiff] neither alleges that ROMANCE [defendant's perfume] is an inferior product, nor offered any evidence . . . about the quality of defendant's ROMANCE product line [and] . . . in the absence of evidence, or even the allegation that ROMANCE is of inferior quality . . . the Court finds that this factor favors [defendant]."); Trustees, 964 F. Supp. at 748 (finding that seventh Polaroid factor did not favor plaintiff where plaintiff had failed "to introduce concrete evidence" either that (i) defendant's services would "taint" those of plaintiff; or (ii) defendant's use of the mark "has caused plaintiff to lose . . . revenue"); Giorgio, 869 F. Supp. at 185 (finding that quality of product favored defendant where "there is no independent indication that [defendant's perfume] will be anything but of adequate quality"). Finally, plaintiff's chief executive officer expressly stated in her deposition that she does not believe that Goutal's fragrance was inferior. (Exh. C. att. to Nitida Cores Aff. at 124, 114.) See Giorgio, 869 F. Supp. at 185 (finding that seventhPolaroid factor favors defendant where plaintiff "expressly disavows any claim that [defendant's perfume] will be of poor quality"). Consequently, no reasonable trier of fact could conclude that Petite Cherie fragrance is of inferior quality.
8. Sophistication of the Buyers
The eighth Polaroid factor, the "sophistication of the consumers", recognizes that consumer sophistication is key to the likelihood of confusion. Rosenthal, 986 F. Supp. at 145. In considering the sophistication of the consumers, a court must evaluate "the general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods . . . ." Trustees, 964 F. Supp. at 749 (citation omitted).
Here, purchasers of both products would likely exercise a degree of care adequate to avoid confusion. Individuals purchasing products meant for infants are likely to exercise significant care. Plaintiff's chief executive officer herself stated in her deposition that "people who are buying products for newborns and infants are careful about what they purchase." (See Exh. C to Nitida Cores Aff. at 124, 131.)
Further, even if purchasers of baby products were not careful consumers, it is undisputed that Goutal's fragrance is about 100 times more expensive, ounce for ounce, than plaintiff's cologne. Individuals purchasing costly products are likely to exercise a high degree of care.See Trustees, 964 F. Supp. at 749 n. 7 (citing Board of Trustees of the Univ. of Ark. v. Professional Therapy Servs., 873 F. Supp. 1280, 1292 (W.D. Ark. 1995)) (noting that those purchasing services that are, inter alia, costly, are likely to exercise a "high degree of care"); Computer Assoc., 889 F. Supp. at 638 (finding that where one tax preparation program was 10 times as expensive as the other, "no tax preparer . . . is apt to accidentally purchase CAI's software instead of AJV's because of confusion in the marks"); cf. Rosenthal, 986 F. Supp at 145 (finding that low cost of both parties' goods increases the likelihood that consumers will use little care in selecting products and may become confused).
Additionally, "it has been acknowledged that women tend to be sophisticated purchasers of perfume." Giorgio, 869 F. Supp. at 185;accord Conopco, 49 F. Supp.2d at 257; see also Edison Bros. Stores v. Cosmair, Inc., 651 F. Supp. 1547, 1651-52 (S.D.N.Y. 1987) (holding that the purchasers of expensive perfumes "are likely to devote a high degree of care and attention to their selection"); Nina Ricci, SARL v. Gemcraft, Ltd., 612 F. Supp. 1520, 1529 (S.D.N.Y. 1985) ("Women who use expensive perfumes are sophisticated and discriminating customers");P.F. Cosmetique SA v. Minnetonka, Inc., 605 F. Supp. 662, 671 (S.D.N.Y. 1985) (concluding that purchasers of top-of-the-line beauty products in roughly similar product packaging often distinguish between products that share a number of common elements). Consequently, no reasonable trier of fact would conclude that the ordinary consumer of the products at issue would be inattentive enough to confuse plaintiff's and Goutal's marks.
9. Outcome of the Polaroid Test
Balancing the Polaroid factors, it is apparent that the majority of the factors strongly support the conclusion that no confusion is likely. ThePolaroid factors supporting this conclusion include the dissimilarity of the marks, the absence of "proximity", the absence of evidence that plaintiff will "bridge the gap", the absence of "actual confusion", the good faith shown by defendants, the fact that the Petite Cherie fragrance is not of inferior quality, and the sophistication of the relevant consumers. Accordingly, although one of the eight Polaroid factors, the first, favors plaintiff because plaintiff's mark is in the "suggestive" category, no reasonable trier of fact could find that a likelihood of confusion exists. See Computer Assoc., 889 F. Supp. at 638 (finding no likelihood of confusion where not only was the strength of plaintiff's mark of the suggestive category, but also the second Polaroid factor likewise favored plaintiff). Accordingly, the Court awards defendants summary judgment on plaintiff's first two claims.
C. Plaintiff's Third Claim
Defendants move for summary judgment on plaintiff's third claim, which asserts unfair competition under New York law. "[T]he essence of unfair competition is the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods." Trustees, 964 F. Supp. at 750-51. (collecting cases). Because both bad faith and a likelihood of confusion must be shown and the Court has already concluded, for purposes of plaintiff's Lanham Act claims, that there exists neither bad faith nor likelihood of confusion, plaintiff's claim for unfair competition necessarily fails. See Trustees, 964 F. Supp. at 751 (concluding that where there had been no showing of bad faith under plaintiff's Lanham Act claim, there was likewise no showing that defendant had acted in bad faith for purposes of a common law claim for unfair competition);Horn's, Inc. v. Sanofi Beaute, Inc., 963 F. Supp. 318, 328 (S.D.N.Y. 1997) (finding that where there was no likelihood of confusion for purposes of Lanham Act claims, there was likewise no likelihood of confusion for purposes of a claim of unfair competition). Consequently, the Court awards defendants summary judgment on plaintiff's third claim.
D. Plaintiff's Fourth Claim
Defendants move for summary judgment on plaintiff's fourth claim, which asserts dilution under N.Y. Gen. Bus. Law § 360-1. Dilution is the "gradual whittling away of a firm's distinctive trade mark or name."Hormel, 73 F.3d at 506 (citing Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 399 N.Y.S.2d 628, 369 N.E.2d 1162 (1977)). A dilution claim under state law is distinct from a Lanham Act claim because it requires injury to a recognized trade name, not consumer confusion and, therefore, may be asserted even in "the absence of competition between the parties or the absence of confusion as to the source of goods or services." N.Y. Gen. Bus. L. § 360-1; see Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624 (2d Cir. 1983). The elements of a claim for dilution under § 360-1 are: (i) ownership of a distinctive mark; and (ii) a likelihood of dilution. See Hormel, 73 F.3d at 506. Here, because no triable issue exists regarding the absence of a likelihood of dilution, the Court need not reach a determination as to whether the first element is satisfied. The likelihood of dilution may be established "by a showing of either blurring or tarnishment." Hormel, 73 F.3d at 506. Defendant sets forth facts establishing that there has been neither blurring nor tarnishment.
The Second Circuit has made no "clear-cut prediction" as to whether there exists a third element, "predatory intent" or whether predatory intent is merely a relevant consideration. Deere Co. v. MTD Prods. Inc., 41 F.3d 39, 45 (2d Cir. 1994). However, because no predatory intent exists here it is irrelevant whether predatory intent is an element or merely a consideration. Establishing predatory intent requires a showing of bad faith. See Stern's Miracle Gro 823 F. Supp. at 1092. The Court has already concluded, in analyzing the Lanham Act claims, that there has been no bad faith.
Although the Court need not reach the question of proof of the first element, the Court notes that plaintiff's mark may not be sufficiently distinctive to satisfy the first element. In order to establish the distinctiveness of the mark, the first element, the plaintiff must satisfy a rigorous standard. See Sally Gee, 699 F.2d at 625 (finding that New York's anti-dilution statute protects only very strong marks); Jim Beam, 852 F. Supp. at 201 (same). Distinctiveness of the mark for dilution purposes may be shown where "a mark has acquired secondary meaning" and has often "been equated with the strength of a mark for infringement purposes". Stern's Miracle Gro Prods. Inc. v. Shark Prods. Inc., 823 F. Supp. 1077, 1090 (S.D.N.Y. 1993) (citation omitted); see Revlon Consumer Prods v. Jennifer Leather Broadway, Inc., 858 F. Supp. 1268, 1277 (S.D.N Y 1994) ("Distinctiveness under § 368-d is analogous to the strength of a mark for trademark infringement purposes"), aff'd, 57 F.3d 1062 (2d Cir. 1995). The Second Circuit has noted that a mark that is sufficiently "strong" under the Lanham Act to qualify for protection may be insufficiently "strong" for the purposes of protection under the New York anti-dilution statute. See Sally Gee, 699 F.2d at 625 (noting that the standards of strength required for Lanham Act purposes "were not established with the concerns of the New York anti-dilution statute in mind", which protects only "extremely strong" marks). Here, in analyzing the "strength of the mark" under the Lanham Act, the Court found that plaintiff's mark does not qualify for the highest level of protection by the Lanham Act. Consequently, plaintiff's mark is sufficiently strong to qualify for some protection under the Lanham Act, but may be inadequate for the purpose of the anti-dilution statute.
1. Blurring
Dilution by blurring "need not involve any confusion as to source."Hormel, 73 F.3d at 506. Dilution by blurring occurs when "customers or prospective customers . . . see the plaintiff's mark used on a plethora of different goods and services" and examples of hypothetical violations in the legislative history of the anti-dilution statute include "Dupont shoes," Buick aspirin tablets," and "Kodak pianos". Hormel, 73 F.3d at 506 (citations and internal quotation marks omitted). "[I]n order to establish dilution by blurring, the two marks must not only be similar, they must be `very' or `substantially' similar." Hormel, 73 F.3d at 506 (citations and internal quotation marks omitted). Here, it is undisputed that Goutal's mark "Petite Cherie" always appears next to the house mark and company name "Annick Goutal", and is scripted on an ivory background in gold lettering within a gold wreath. It is also undisputed that plaintiff's mark "Petite Cherie" always appears with a slash underline in purple or pink or blue, together with simple illustrations of babies, butterflies, or clouds. This establishes a dissimilarity in appearance that defeats plaintiff's contention of blurring. See Hormel, 73 F.3d at 506 (finding that the fact that the name "`Spa'am' will always appear next to the character likeness and the words `Muppet Treasure Island'" created a "dissimilarity" that "alone" could defeat plaintiff's contention that its mark "Spam" was being blurred); Jim Beam, 852 F. Supp. at 199 ("The products are sufficiently distinct — an Irish stout and a Kentucky bourbon — [and the] heritage of both products clearly portrayed in their respective trade dresses — that there will be no blurring."). This lack of blurring is particularly certain where Goutal's product is, ounce for ounce, 100 times more expensive, which prevents "blurred vision" among discerning consumers. See Sally Gee, 699 F.2d at 626 (concluding that "[t]he record is barren of any proof" that that defendant's use of the Sally Lee name "for higher priced" women's clothing is likely to blur plaintiff, Sally Gee's, product identification, reasoning that "discerning consumers of women's apparel are unlikely to have blurred vision causing them to see `Sally Gee' upon viewing a `Sally Lee' label.").
Plaintiff contends that its mark will become "blurred" because "the mark will no longer have the singular effect it previously had". (Pl's. Mem. Law Opp.) It is true that a mark may become blurred when it appears on numerous products. However, it is well settled that "blurring" does not exist where, as here, there is dissimilarity in the presentation of the marks and the allegedly infringing mark identifies a high quality product. Because plaintiff fails to set forth facts supporting the existence of genuine issue of fact as to dissimilarity and quality, plaintiff's contention that blurring exists is conclusory. Plaintiff cannot demonstrate the existence of a genuine issue of fact by setting forth conclusory allegations. See Delaware Hudson Ry., 902 F.2d at 178 ("Conclusory allegations will not suffice to create a genuine issue.").
2. Tarnishment
Dilution may also occur by tarnishment. "The sine qua non of tarnishment is a finding that plaintiff's mark will suffer negative associations through defendant's use." Hormel, 73 F.3d at 507. Here, defendant notes that, in distinction to Petit Cheri, Petite Cherie is retailed by "first tier" stores such as Saks Fifth Avenue. Cf. Sally Gee, 699 F.2d at 625 (finding that tarnishing could not be proved where defendant's garments were handmade and much higher priced than plaintiff's garments). Additionally, plaintiff fails to dispute that Petite Cherie fragrance is a product whose quality is, at the least, equal to that of plaintiff's product. Cf. Hormel, 73 F.3d at 507 ("Absent any showing that [defendant]'s use will create negative associations with the SPAM mark, there was little likelihood of dilution."). Consequently, plaintiff has failed to establish the existence of a triable issue of fact as to the absence of likelihood of dilution, the second element of a dilution claim. Accordingly, the Court awards defendants summary judgment on plaintiff's claim fourth claim.
I. MOTION TO DISMISS PURSUANT TO FED. R. CIV. P. 12(b)(6)
A. Legal Standard
Defendants move to dismiss the complaint for failure to state a claim upon which relief can be granted pursuant to Fed.R.Civ.P. 12(b)(6). On such a motion, the court is required to accept the material facts alleged in the complaint as true and to construe all reasonable inferences in plaintiff's favor. See Grandon v. Merril Lynch Co., 147 F.3d 184, 188 (2d Cir. 1998); Caspar v. Lew Lieberbaum Co., Inc., No. 97 Civ. 3016 (JGK), 1998 WL 150993, *1 (S.D.N.Y. Mar. 31, 1998). Further, the court's function on a motion to dismiss "is not to weigh the evidence that might be presented at trial but merely to determine whether the complaint itself is legally sufficient." Caspar, 1998 WL 150993, *1 (citation omitted). Therefore, a defendant's motion should be granted only if the court determines that "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Automated Salvage, 155 F.3d at 67 (quoting Conley v. Gibson, 355 U.S. 41, 45-46 (1957)).
In deciding the motion under 12(b)(6), the court may consider "facts stated on the face of the complaint and in documents appended to the complaint or incorporated in the complaint by reference, as well as matters of which judicial notice may be taken." Automated Salvage Transport, Inc. v. Wheelabrator Environmental Systems, Inc., 155 F.3d 59, 67 (2d Cir. 1998) (citation omitted).
However, "while Conley permits a pleader to enjoy all favorable inferences from facts that have been pleaded, it does not permit conclusory statements to substitute for minimally sufficient factual allegations". Electronics Communications Corp. v. Toshiba America Consumer Prods., Inc., 129 F.3d 240, 243 (2d Cir. 1997) (citation omitted). The Court is not required to uphold the validity of a claim supported only by conclusory allegations. See Gant, 69 F.3d at 673 ("It is well settled in this Circuit that a complaint consisting of nothing more than naked assertions, and setting forth no facts upon which a court could find a violation . . . fails to state a claim under Rule 12 (b)(6).").
B. Plaintiff's Fifth Claim
Defendants move to dismiss plaintiff's fifth claim, which is asserted pursuant to N Y Gen. Bus. L. § 349 ("section 349"). Because the statute is a "consumer protection device," a corporate competitor may state a claim under the statute only if it asserts "consumer injury or harm to the public interest." Securitron Magnalock Corp. v. Schnabolk, 65 F.3d 256, 264-65 (2d Cir. 1995); accord Sports Traveler, Inc. v. Advance Magazine Publishers, Inc., 96 Civ. 5159, 1997 WL 137443, *2 (S.D.N.Y. Mar. 24, 1997). Injury or harm that satisfy this standard include "potential danger to the public health or safety." Sports Traveler, 1997 WL 137443, *2-3 (collecting cases).
Here, the primary focus of the complaint is the consumer confusion resulting from the alleged infringement. Indeed, plaintiff expressly contends that it has asserted "potential danger to public health or safety" by alleging that the public is likely to be harmed "as a result of deceptive trade practices . . . engaged in by defendants." (Complaint ¶ 30; Pl's. Mem. Law Opp. at 22.) However, "[t]he Courts of this Circuit have held that trademark infringement actions alleging only general consumer confusion do not threaten the direct harm to consumers that is required to state a claim under section 349." Sports Traveler, 1997 WL 137443, *2-3 (collecting cases). Consequently, the complaint is devoid of allegations showing the "consumer injury or harm to the public interest" that is required in order to state a claim under section 349.
Accordingly, plaintiff's claim under section 349 must be dismissed. See Sports Traveler, 1997 WL. 137443, *3 (dismissing section 349 claim where the complaint merely alleged consumer confusion resulting from trademark infringement and was "devoid of allegations supporting an inference that the public's health or safety was at stake as a result of the alleged infringement").
CONCLUSION
For the foregoing reasons, defendants' motion for partial summary judgment as to claims one, two, three, and four is GRANTED and defendant's motion to dismiss claim five pursuant to Fed.R.Civ.P. 12 (b)(6) is GRANTED. The Clerk of the Court is directed to close the file in this action.
SO ORDERED.