Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA941702
`
`Filing date:
`
`12/17/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`94002720
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Applicant
`Hanscomb Consulting, Inc.
`
`H JAY SPIEGEL
`H JAY SPIEGEL & ASSOCIATES
`PO BOX 11
`MOUNT VERNON, VA 22121
`UNITED STATES
`jayspiegel@aol.com
`703-619-0101
`
`Plaintiff's Notice of Reliance
`
`H. Jay Spiegel
`
`jayspiegel@aol.com
`
`/H. Jay Spiegel/
`
`12/17/2018
`
`EvidencePartT.pdf(53649 bytes )
`HanscombConsultingReliance1.pdf(3404248 bytes )
`HanscombConsultingReliance2.pdf(1876145 bytes )
`HanscombConsultingReliance3.pdf(3428332 bytes )
`HanscombConsultingReliance4.pdf(3403305 bytes )
`HanscombConsultingReliance5.pdf(3905055 bytes )
`HanscombConsultingReliance6.pdf(941266 bytes )
`HanscombConsultingReliance7.pdf(972719 bytes )
`
`

`

` IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
` BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
` )
`HANSCOMB CONSULTING, INC.,
` )
` Plaintiff,
` ) Concurrent Use No. 94002720
` )
` v. ) Mark: HANSCOMB CONSULTING
` ) Serial No. 87/100,385
`HANSCOMB, LTD.,
` ) Filed: July 12, 2016
` ) Published: December 27, 2016
` Defendant.
` )
`______________________________________ )
`
`Commissioner for Trademarks
`PO Box 1451
`Alexandria, VA 22313-1451
`
`SUBMISSION OF EVIDENCE BY PLAINTIFF HANSCOMB CONSULTING, INC.:
`PART T
`
`Submitted herewith is Part T of Plaintiff’s Submission of Evidence during its rebuttal
`
`testimony period. The evidence submitted herewith consists of Notices of Reliance 1-7
`
`submitted in compliance with 37 C.F.R. 2.122. Each Notice of Reliance includes a submission
`
`that explains the relevance of the submission to the issues before the Trademark Trial and
`
`Appeal Board in this proceeding. For the Board’s convenience, the names of the files attached
`
`hereto are:
`
`HanscombConsultingReliance1
`
`HanscombConsultingReliance2
`
`HanscombConsultingReliance3
`
`HanscombConsultingReliance4
`
`HanscombConsultingReliance5
`
`HanscombConsultingReliance6
`
`1
`
`

`

`HanscombConsultingReliance7
`
`Date: December 17, 2018
`
`Respectfully submitted,
`
`HANSCOMB CONSULTING, INC.
`
` /s/ H. Jay Spiegel
`
`
`
`
`By H. Jay Spiegel
`Attorney for Plaintiff
`Registration No. 30,722
`
`
`
`H. JAY SPIEGEL & ASSOCIATES
`P.O. Box 11
`Mount Vernon, VA 22121
`(703) 619-0101 - Phone
`(703) 619-0110 - Facsimile
`jayspiegel@aol.com - e-mail
`
` CERTIFICATE OF SERVICE
`
`I hereby certify that a copy of the foregoing SUBMISSION OF EVIDENCE BY
`
`PLAINTIFF HANSCOMB CONSULTING, INC.: PART T was served on Defendant’s
`
`Counsel via e-mail this 17th day of December, 2018, addressed to:
`
`Thomas A. O’Rourke
`BODNER & O’ROURKE
`425 Broadhollow Road, Suite 120
`Melville, NY 11530
`torourke@bodnerorourke.com
`
`Date: December 17, 2018
`
`By: /s/ H. Jay Spiegel
`
`H. Jay Spiegel
`
`2
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Concurrent Use No. 94002720
`
`Mark: HANSCOMB CONSULTING
`Serial No. 87/100,385
`Filed:
`July 12, 2016
`Published: December 27, 2016
`
`)
`
`)
`)
`}
`)
`)
`)
`
`) )
`
`HANSCOMB CONSULTING,INC.,
`
`Plaintiff,
`
`Vv.
`
`HANSCOMB,LTD.,
`
`Defendant.
`
`
`PLAINTIFF’S NOTICE OF RELIANCE NO. 1 UNDER
`37 C.F.R. 2.122 AND TBMP§ 704.02 ET. SEQ.
`
`Submitted herewith are the following treatises downloaded from the Internet in December
`
`2018:
`
`Goodwin, Meaghan E.: Pricey Purchases and Classy Customers: Why Sophisticated
`
`Consumers Do Not Need the Protection of Trademark Laws, Journal of Intellectual Property
`
`Law, University of Georgia Law, Volume12, Issue 1, Article 9, October 2004.
`
`Weinberg, Justin P. et al.: Stop Letting Wine Crash the Wedding: Craft Beer Consumers
`
`__are Sophisticated Buyers, Volume8, Issue 1, Article 3, Mitchell Hamline School of Law, 2017.
`
`- Thetreatises submittedherewith concern the issue of sophistication of consumers, one of
`the factors the TTAB will considerin its likelihood ofconfusion analysis. See Ef. du Pont de
`
`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) and Polaroid Corp. v. Polarad
`
`Elees. Corp., 287 F2d 492, 495 (2d Cir. 1961).
`
`

`

`The evidence uncovered during this proceeding has demonstrated the high sophistication
`
`of consumersofthe services offered by Plaintiff and Defendant.
`
`Respectfully submitted,
`
`HANSCOMB CONSULTING,INC.
`
`Is/ LieJay Yoiegel
`
`By H. Jay Spiegel
`Attorney for Plaintiff
`Registration No. 30,722
`
`H. JAY SPIEGEL & ASSOCIATES
`P.O. Box 11
`Mount Vernon, VA 22121
`(703) 619-0101 - Phone
`(703) 619-0110 - Facsimile
`jayspiegel@aol.com - e-mail
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a copy ofthe foregoing PLAINTIFF’S NOTICE OF RELIANCE
`NO. 1 UNDER 37 C.F.R. 2.122 AND TBMP§ 704.02 ET. SEQ. was served on the
`Defendant’s Counsel via e-mail this 14" day of December, 2018, addressedto the following e-
`mail address of record:
`
`torourke@bodnerorourke.com
`
`Date:__ December 14, 2018
`
`
`
`By:
`
`/s/ Fh.
`
`d
`
`H. Jay Spiegel
`
`

`

`University of eo
`
`Geor 12.
`Luaw
`
`
`
`
`Volume 12|Issue 1 Article 9
`
`
`
`JournalofIntellectual Property Law
`
`October 2004
`
`Pricey Purchases and Classy Customers: Why
`Sophisticated Consumers Do Not Need the
`Protection ofTrademark Laws
`
`Meaghan E. Goodwin
`University of Georgia School ofLaw
`
`Follow this and additional worksat: https://digitalcommons.lawuga.edu/jipl
`CoPart ofthe American Popular Culture Commons, Fashion Design Commons, and the Intellectual
`Property Law Commons
`
`
`RecommendedCitation
`Meaghan E. Goodwin, Pricey Purchases and Classy Customers: Why Sophisticated Consumers Do NotNeedthe Protection ofTrademark
`Laws, 12J. INTELL. Prop, L, 255 (2004).
`Available at: https://digitalcommons.Jawuga.edu/jipl/voll2/iss1/9
`
`‘This Notes is broughtto youforfree and open access by Digital Commons @ Georgia Law, It has been acceptedforinclusion inJournalofIntellectual
`PropertyLawbyan authorized editor ofDigital Commons @ Georgia Law. Please share how youhave benefited fromthis access For more
`information, please contact tstriepe@uga.edu.
`
`

`

`Goodwin: Pricey Purchases and Classy Customers: Why Sophisticated Consumer
`
`PRICEY PURCHASES AND CLASSY CUSTOMERS:
`WHY SOPHISTICATED CONSUMERS DO NOT
`NEED THE PROTECTION OF TRADEMARK LAWS
`
`I, INTRODUCTION
`
`Knockoff handbags permeate our society. They line the streets of New York
`City’s Chinatown and have even entered the world of suburban shopping mall
`kiosks. Modern society is increasingly label conscious and seems to have an
`insatiable desire for the latest hot item, settling for a fake when the real is out of
`teach. The law, however, has not been modetnized to match the changed
`populus, resulting in unjust application of trademark law im certain unique
`situations.
`One of these unique situations presenteditself when Hermes International
`filed suit against Steven Stolman to enjoin his importation,distribution, sales and
`marketing of the popular “Jelly Kelly.”" TheJelly Kelly is a synthetic rebber copy
`of Hetmes’s famous Birkin bag that was the hotitem of the summerand fall of
`2003.
`The Eastern District ofNew York granted a permanentinjunction on October
`5, 2003 after the parties reached a confidential agreement,? This Note aims to
`establish that applying traditional trademark law to this case was unrealistic and
`unjustified and that, in unique situations where the goods at issue are very
`expensive and rare, the traditional test of consumer sophistication should trump
`the other factors in the likelihood of confusion analysis.
`Part LA identifies the history of handbags and their evolution in society over
`the past 1,500 years, Part LBillustrates the history of Hermes. Part I.c depicts
`the background oftrademarklaw principles applicable to this Note, including the
`likelihood of confusion test. Part II analyzes the different types of confusion
`applicable to Hermes’s claim, including point-of-sale and post-sale confusion.
`The analysis sections are further broken down into analyses of the elements of
`_each type of confusion, and detail what jurisdictions outside the Second Circuit
`and the Third Restatementon the Law ofUnfair Competition have said regarding
`the consumersophistication issue.
`In conclusion, this Note argues for a morerealistic standard in a unique area
`of trademark law. When the goodsat issue are very expensive andelusive, the
`consumer sophistication analysis should be given dispositive weight rather than
`the nominal mentionit receives from the Second Circuit generally, and as it was
`
`
`' HermesInt'l v. Steven Stolman, Ltd., No. 03 Civ. 3722 (E.D.N.Y.July 31, 2003).
`2 Id.
`
`Published by Digital Commons @ Georgia Law, 2004
`
`255
`
`

`

`
`
`JournalofIntellectual Property Law, Vol. 12, Iss. 1 [2004], Art. 9
`
`256
`
`j. INTELL. PROP. L.
`
`[Vol. 12:255
`
`assumedly given in the Séo/man case.’ Allowing above-average sophistication to
`trumptheotherlikelihood of confusion factors preserves the intent of Congress
`in passing federal trademark laws,in thatit does not thwart the goal ofprotecting
`consumers from being misled, butit also fosters free market competition by not
`repressing entrepreneurs who pose no harm to the goodwill of the trademark
`holder. Traditional application of the likelihood of confusion standard in these
`unique cases obviates therationale of the confusion standard, whereas a practical
`look at the real situation would produce a result consistent with congressional
`intent.
`
`A, HISTORY OF HANDBAGS
`
`A handbag is more than a collection of fabric sewn together and more than a
`place to hold a wallet and keys. A handbag is a reflection of the person who
`carries it, coming in different shapes, sizes, colors and textures. There are
`different bags for different outfits and different moods. They are an extension
`of a person,yet “unperturbed by the changes of the body or the heavy hand of
`age.’ It is no wonder that they have been revered as accessories over the past
`1,500 years.
`;
`Oneoftheearliest handbags was a pouch type bag from Scythia, which was
`worn dangling from the waist. Purses were worn by both men and women
`throughout the Middle Ages and Renaissance.’ In the Fourteenth Century, the
`bags were adornedwith jewels and embroidery for decoration and to showsocial
`status.’ Thatis, the wealthier the person, the more adornedhis or her bag.
`Bythe Seventeenth Century, men’s trousers were made with sewn-in pockets,
`and handbags becameprimarily a woman’s accessory.* In the Eighteenth Century,
`women started to wear more fitted clothing and needed more fashionable
`handbags to match their various outfits.” These handbags were called reticules
`and commonly cartied rouge, face powder, a fan,and smelling salts."°. The term
`“handbag” wasfirst used in the early 1900s in reference to men’s luggage bags.'!
`
`
`
`3 id.
`4 ANNA JOHNSON, HANDBAGS: THE POWER OF THE PURSE, at xviii (2002).
`5 Id. at xxiii,
`® Td. at xx-xxii,
`” HISTORY OFHANDBAGS,afhttp://www.henriettashandbags.com/a_histoty_of_handbags.
`hon(last visited Dec. 30, 2003).
`® JOHNSON,supra note 4, at xxii,
`° HISTORYOF HANDBAGS, athttp://www.henriettashandbags.com/a_history_.of_handbags.
`htral, sapre note 7.
`aU ld
`it Id
`
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`

`

`
`
`Goodwin: Pricey Purchases and Classy Customers: Why Sophisticated Consumer
`
`2004]
`
`HIGH CLASS CONSUMER SOPHISTICATION
`
`257
`
`In the 1920s, the women’s revolution altered attitudes about clothing and
`accessories, including reversing the belief that the handbag had to match the
`outfit.” The past eighty years have seen a transformation in fabrics and designs,
`as well as the rise of certain fashion houses, such as Prada, Gucci, Dior, and
`Hermes. Although handbags have evolved over time, one aspect has remained
`the same: the powerofthe purse to speak aboutits carrier without saying a word.
`
`B. HISTORY OF HERMES
`
`In Greek mythology, Hermes was the messenger ofthe gods, son of Zeus,
`brother of Apollo, and often depicted with winged sandals and a golden
`caduceus.'* Less commonly known is that Hermes was the god of commerce,
`protecting traders and herders.'* Thus,it is not surprising that the house known
`for luxury items and elegance now wants to invoke that same protection for the
`goods bearing his name.
`Hermes International originally captured the world’s attention with its equine
`harnesses in 1837.5 For the last 165 years Hermes has produced scarves,ties,
`homefurnishings, perfumes, and leather goods."® Based in the rue St. Honore’
`fashion district of Paris, Hermes first offered its products for sale in the United
`States in 1924.” These products are sold exclusively in Hermes boutiques and
`otherselect stores licensedto sell the goods.'* Two ofit’s most famous products
`ate the Kelly bag and the Birkin bag. ‘The Kelly bag gained fame after Grace Kelly
`was photographed with the handbag on the cover of LIFE magazinein 1956,”
`The Birkin bag was developed in the 1980s after Jane Birkin sat next to Jean-
`Louis Dumas onan airplane and complained to him aboutthe small size of the
`Kelly bag.” Each bag has the same trapezoidal shape, with a small, semi-circular
`
`
`
`® Td.
`° HERMES, af http://encarta.msn.com/encnet/refpages/RefArticle.aspx?refid=761 572158&
`pnti (last visited Nov. 1, 2004).
`4 Id.
`'S Complaint { 8, HermesInt'l v. Steven Stolman, Ltd., No. 03 Civ. 1782 E.DN.Y.July 31,
`2003) [hereinafter Complaint}.
`16 Id.
`"1449.
`8 10910.
`” Lynn Hirschberg, Im the Beginning, There was Leather .. .. N.Y. TIMES, Nov. 30, 2003, § 6
`(Magazine), at 114.
`* Complaint, supra note 15, J 13.
`
`Published by Digital Commons @ Georgia Law, 2004
`
`

`

`JournalofIntellectual Property Law, Vol. 12, Iss. 1 [2004], Art. 9
`
`258
`
`J. INTELL. PROP. L.
`
`[Vol. 12:255
`
`handle andflap design, with the Birkin bag being thelarger ofthe two.”' Sinceits
`creation, the bag has become a status symbolfor the well-to-do and wealthy.”
`Onereason for the bag’s prestige is the craftsmanship of the bag itself. Each
`Birkin bag is madeby onesenior craftsman who worksonit from start to finish.”
`Each craftsman has been trained exclusively by Hermes for five years before he
`or sheis allowed to make a bag on his own.” Furthermore,if the bag ever needs
`repair,it will be repaired by the same ctaftsman who made the bagor a craftsman
`whowas trained by the original creator.” The bags ate created with only absolute
`perfection in mind; thus, if there is any problem or defect in the bag,it is
`destroyed.”* The amountofdetail is unparalleled. The goat skin lining is always
`sewn first, then the base of the bag, then the sides, and then the handle.” The
`seams and handle ofthe bag are filed with sandpaper and dyed to match the bag,
`making the entire structure appear seamless and supple.” The bag is sealed with
`hot wax to protectit from moistute and then finally ironed gently to remove any
`remaining creases from the leather.” After breaking down this eighteen hour
`process, the starting price of $5,000 makes a little more sense, as does the
`extremely long waitinglist.” These bags are not mass produced items, and their
`craftsmanshipleads to their prestige.
`
`
`
`* HermesInt'l v. Lederer de Paris Fifth Ave., 50 FP. Supp. 2d 212, 215, 50 U.S.P.Q.2d (BNA)
`1257, 1259 (S.D.N.Y. 1999) fhereinafter Lederer de Panis I].
`® ‘The Birkin bag gained recent fame and press when the HBO hittelevision show Sex andthe
`City featured the handbag. In the episode, Samantha tried to get aroundthe five year waiting list by
`saying she was purchasing the bag for her public relations client, Lucy Liv. Undoubtedly, the
`devastation shown when her plan backfired has been felt by many women who can afford the bags
`yet must wait for one to be made. Sex and the City: Coulda, Woulda, Shoudda (HBO television
`broadcast, Aug. 5, 2001). Even morerecently, the Birkin bag received tremendouspress coverage
`when Martha Stewart carried her Birkin to court during her securities fraud trial. One journalist
`noted that the bag’s owners viewedit as 2 “talisman that should confer upon them a whispered,quiet
`verdict: classy.” Alex Kuczynski, On This Accessory, TheJury Isn't Out, N.Y. TIMES, Apr. 10, 2004,
`® JOHNSON,supra note 4, at 58-59.
`* Complaint, sapra note 15, J 14.
`2s Id.
`8 Id
`7 JOHNSON,sapra note 4, at 5B-61.
`8 Id.
`? Id
`* When questioned aboutthe waiting list for the Birkin and Kelly bags at the Hermes boutique
`in Lenox Square, Atlanta, Ga, the sales associate replied thatthe list was “closed.” She further stated
`that the waiting list ranges from oneto five years depending on what type ofmaterial the customer
`wants and how soonit is available,
`Interview with Hermes employee, Hermes boutique, Lenox
`Square, in Atlanta, Ga. (Dec, 30, 2603).
`
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`

`Goodwin: Pricey Purchases and Classy Customers: Why Sophisticated Consumer
`
`2004]
`
`HIGH CLASS CONSUMER SOPHISTICATION
`
`259
`
`The materials also add to the bags’ reputation and fame. Hermesonly selects
`five percent ofthe leather thatis sent to it from suppliers." Although the bags
`are most commonly seenin leather, they have been made out ofcrocodile, canvas,
`denim, ostrich and plastic.” The material is determined by the purchaser, again
`making the bag an expression of the individual.”
`Thefinal defining featute of the Kelly and Birkin bags is the unique lock and
`flap closure. The design consists of two thin, horizontal leather straps with metal
`plates at each end that fit over a circular turn lock, This lock can then be
`secured with a small padlock.*> Hermes’s trademark on this design is at the heart
`ofthe suit filed by Hermes International against Steven Stolman on July 30,
`2003.
`
`C. HISTORY AND BACKGROUND OF TRADEMARK LAW
`
`A trademarkis any word, name, symbol ot device, or any combination which
`is used to identify and distinguish goods or products from other goods and
`products.” Trademarks are also used to indicate the source of the goods, even
`if that source is unknown.” Furthermore, trademarks are linked to a company’s
`mostvaluable assets:
`its goodwill and identification ofits goods and services.”
`Trademarkrights are “not doctrinally intended to provide any right ofexclusivity”
`with respect to the products and services established by the marks. Trademarks
`are intended to “protect consumers from being confused, mistaken, or deceived
`in their purchasing decisions’*' because they can rely on marks with which they
`are familiar to serve as accurate source and quality indicators.”
`
`
`
`
`
`LSSSSpeedernrrarvseseTerontSSsilat
`
`
`
`
`
`* Complaint, spry note 15, 7 15.
`Bid 916,
`33 JOHNSON, supra note 4, at 58.
`* Ledererde Paris I, 50 F. Supp. 2d at 215,
`Id.
`8 Stolman, 03 Civ. 3722,
`* Lanham Act, § 45(@); 15 U.S.C. § 1127 (2000).
`qd
`* Scott Harvison, Comment, Two Wrongs Making a Right: Using the ThirdandNinth Cirnitsfor a
`Uniform Standard ofFame in Federal Dilution Law, 25 SEATTLE U. L. REV. 867, 869 (2002).
`® Ann Bartow, Likelihood ofConfusion, 41 SAN DIEGO L. RBV. 721, 725 (2004).
`Id. at 737; see also Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 375, 42
`U.S.P.Q,2d (BNA) 1641, 16414 (2d Cir. 1997) (stating that the “underlying purpose of the Lanham
`Act... is protecting consumers and manufacturers from deceptive representationsofaffiliation and
`origin’).
`® See Bartow, supra note 40, at 730.
`
`Published by Digital Commons @ Georgia Law, 2004
`
`

`

`JournalofIntellectual Property Law, Vol. 12, Iss. 1 [2004], Art. 9
`
`260
`
`}. INTELL. PROP. L.
`
`[Vol. 12:255
`
`Trademarks were governed by commonlaw until Congress passed the first
`trademark statute in 1870. The first federal
`trademark law allowed the
`trademark holder to seek an injunction against infringers to prevent the loss of
`customers and profits. Sincethis initial law, courts and Congress havetried to
`balance the goals of free markets and competition with those of protection and
`identity.** When the 1870 law was declared unconstitutional in 1879, trademark
`holders continued to press Congress for protection. Congress granted that
`protection by passing the Trademark Act of 1905, which contained more limited
`protections than theearlier act.” As the economy and markets became more
`complicated and intertwined, some people argued for stricter, more comprehen-
`sive trademark protection.*
`The Trademark Act of 1946, commonlyreferred to as the Lanham Act, was
`the protection for which many of those trademark holders were searching.”
`While the 1905 Act was based on direct competition and goodswith the “same
`descriptive properties,” the Lanham Actfocuses on the likelihood of consumer
`confusion.”° Thus,if a trademark holderis using a mark in commerceto identify
`its goods,
`the Lanham Act provides a civil cause of action for trademark
`infringementagainst those who use the mark in a waylikely to cause confusion.”'
`
`
`
`© See Act ofJuly 8, 1870, ch. 2 tit. 60, §§ 4937-4947, 16 Stat. 198 (declared unconstitutional in
`Trade-Mark Cases, 100 US. 82, 97-99 (1879)). Brendan Mahatfey-Dowd, Comment, Famous
`Trademarks: Ordinary Inquiry by the Courts ofMarks Entitled to an Extraordinary Remedy, 64 BROOK.L.
`REV. 423, 427 (1998).
`* Mahaffey-Dowd, supra note 43.
`Yd at 428.
`* Id
`“4 Trademark Act of 1905, c. 592, sec. 16, 33 Stat. 724, The 1905 Act only providedrelief for
`~~ the unauthorized use of a registered mark on “merchandise of substantially the same descriptive
`properties.” See Robert N, Klieger, Trademark Dilution: The Whittling Away of the Rational Basisfor
`Trademark Protection, 58 U. Pry. L. REV, 789, 802-04 (1997).
`* Mahaffey-Dowd,supra note 43, at 428.
`® 15 U.S.C. §§ 1051-1127 (2000).
`*” Mahaffey-Dowd, sapra note 43, at 429.
`15 U.S.C. § 1125(a). The text of the statute reads, in relevantpart, as follows:
`1) Any person who, on ot in connection with any goeds or services, or any
`container for goods, uses in commerce any word, term, name, symbol, or device,
`or any combinationthereof, or any false designation oforigin, false or misleading
`description offact, or false or misleading
`representation offact, which—
`(A)is likely to cause confusion, or to cause mistake, or to deceive as to the
`affiliation, connection, or association of such person with another person,or as
`to the origin, sponsorship, or approval of his or her goods, services, or
`commercial activities by another person.
`
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`

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`Goodwin: Pricey Purchases and Classy Customers: Why Sophisticated Consumer
`
`2004]
`
`HIGH CLASS CONS.UMER SOPHISTICATION
`
`261
`
`Courts have noted that “the Lanham Act must be construed in the light of a
`strong federal policy in favor of vigorously competitive markets.”
`Likewise, courts have held that likelihood of confusion is the “key element”
`of trademark infringement actions.” Under both trademark infringement and
`trade dress infringement,the “central inquiry” is whether there exists a likelihood
`that consumers will be confused.” Likelihood of confusion exists when either an
`“appreciable numberofordinarily prudent purchasersare likely to be misled, or
`indeed simply confused, as to the source of the goods in question””’ or when
`“consumers ate likely to believe that the challenged use of a trademark is
`somehow sponsored, endorsed, or authorized by its owner.”
`~
`In the Second Circuit, the judicially created “likelihood of confusion”testis
`based oneight different factors:
`(1) the strength ofthe plaintiff's trademark, (2)
`the degree of similarity between the parties’ marks, (3) the proximity of the
`products, (4) the likelihood that the plaintiff will “bridge the gap” between the
`products,(5) the existence of actual confusion,(6) the defendant’s goodfaith, (7)
`the quality of the defendant’s product, and (8)
`the sophistication of the
`consumers,” Although the courts have applied these factors in many cases, they
`have rately held that any one is dispositive on the issue of likelihood of
`
`
`
`° Landscape Forms, 113 F.3d at 379; see also Nora Beverages,Inc. v. Perrier Group ofAm., Inc.,
`269 F.3d 114, 119, 60 U.S.P.Q.2d (BNA) 1038, 1041 (2d Cir. 2001) (enunciating the purpose
`underlying trade dress protection, ie. to protect consumers and manufacturers from deceptive
`representations of origin or source).
`* Gruner & Jahr USA Publ’g v. Meredith Corp., 991 F.2d 1072, 1074, 26 U.S.P.Q.2d (BNA)
`1583, 1586 (2d Cir. 1993); see also Polymer Tech, Corp. v. Mimran, 37 F.3d 74, 80, 32 U.S.P.Q.2d
`(BNA) 1506, 1510 Gd Cir. 1994) (stating that likelihood of confusion is the “hallmark of any
`trademark infringement claim”).
`,
`4 See La Cibeles, Inc. v. Adipar, Ltd., No. 99 Civ, 4129, 2000 WL 1253240,at *4 (S.D.N_Y.Sepr.
`1, 2000) (quoting Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 960, 39 U.S.P.Q.2d
`(BNA) 1511, 1513 (2d Cis. 1996); see alse Two Pesos, Inc. v. Taco Cabana, Inc,, 505 U.S. 763, 773,
`23 U.S.P.Q.2d (BNA) 1081, 1085 (1992) (holding that the protection of trademarks and oftrade
`dress under§ 43(a) serve the same statutory purpose ofpreventing deception and unfair competition
`and thatthere js “no persuasive reason to apply different analysis to the two”); Rosenthal A.G.v.
`Ritelite, Lrd., 986 F. Supp. 133, 139, 44 U.S.P.Q.2d (BNA) 1249, 1253 (E.D.N.LY. 1997) (explaining
`that both claims of trademark and trade dress infringement require proof of essentially the same
`elements).
`** Mushroom Makers,Inc. v. R.G, Barry Corp., 580 F.2d 44, 47, 199 U.S.P.Q. (BNA)65, 66 (2d
`Cir. 1978) (per curiarn),
`%° N.Y. Stock Exch., Inc, v. N.Y., N.Y. Hotel, LLC, 293 F.3d 550, 555, 62 U.S.P.Q.2d (BNA)
`1260, 1263 (2d Cir. 2002}.
`* Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495, 128 U.S.P.Q. (BNA) 411, 413 (2d
`Cir. 1961),
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`confusion.Mostcourts analyze each factor and look at the balance.” Thus, one
`strong factor can tip the balance in favoroflikelihood of confusion,just as the
`absenceofa few factors can tip the balance away from a finding of infringement.
`Courts have made clear that confusion must exist in order for a trademark
`holder to prevail in an infringementclaim.” Specifically, a probability, and nota
`mere possibility, of confusion must exist to support a trademark or trade dress
`infringementclaim.“ Consumer confusion cannot exist over similarity “in the
`abstract,” rather confusion must stem from the similarity between the two
`trademarks.” Establishing probability of success on the merits of a confusion
`claim is therefore necessary to obtain an injunction in an infringementaction. In
`Stolman, the Eastern District of New York granted a permanent injunction,
`leading to the reasonableinference that something in Hermes’s claim would tip
`the balance on the merits in favor ofa likelihood of confusion.” This Notewill
`argue that this conclusion is erroneous given the dominance of the consumer
`sophistication factorin this particular situation.
`Aninteresting aspect of Stedman and similar cases is that the judges seem to
`make their evaluations of sophistication without any evidence.“ The court
`conducted a hearing in Stofvan on September 18, 2003 but held notrial where a
`teasonable fact finder would have had the opportunity to examine the sophistica-
`tion and cate usedby the relevantclass ofpurchasers.Thisis significant because
`likelihood of confusion is based on the “court’s estimation,” not proof.
`Courts have interpreted section 43(a) of the Lanham Act®’ to protect a
`product’s trade dress, covering the product’s “total image and overall appear-
`
`
`
`*8 See Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 48, 55 U.S.P.Q.2d (BNA) 1051, 1055
`(2d Cir, 2000) (holding that any one Podereid factor may proveto be dispositive).
`° See Bristol-Meyers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1042, 24 U.S.P.0.2d
`(BNA) 1160, 1167 (2d Cir. 1992) (holding that the Pelsroid analysis is“not a mechanical measure-
`~-ment” and that court should look “to the totality of the product” in making its likelihood of
`confusion determination).
`© Streetwise Maps,Inc. v. Vandam,Inc., 159 F.3d 739, 743, 48 U.S.P.Q.2d (BNA) 1503, 1506
`(2d Cir, 1998).
`*! Estee Lauder Inc. v. Gap, Inc., 108 F.3d 1503, 1511, 42 U.S.P.Q.2d (BNA) 1228, 1232 (2d
`Cir, 1997); Graner &>Jabr, 991 F.2d at 1077;accordElvis Presley Enters., Inc. v. Capece, 141 F.3d 188,
`193, 46 U.S.P.Q.2d (BNA) 1737, 1740 (5th Cir. 1998).
`* Merriam-Webster, Inc, v. Random House, Inc., 35 F.3d 65, 70, 32 U.S.P.Q.2d (BNA)1010,
`1013 (2¢ Cir. 1994).
`% Svelman, No. 03 Civ. 3722.
`“ Bartow, supra note 40, at 772.
`® Stolan, No. 03 Civ. 3722.
`See Bartow, supra note 40, at 763 (“[T]he test is not premised on proof that an appreciable
`number of typical consumers have been confused, only that they arelikely to be confused.”).
`7 15 U.S.C. § 11259fa).
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`Goodwin: Pricey Purchases and Classy Customers: Why Sophisticated Consumer
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`2004]
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`HIGH CLASS CONSUMER SOPHISTICATION
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`263
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`ance,”including “features such as size, shape, color or color combinations,
`texture, [or] graphics.” The United States Supreme Court recently commented
`on trade dress protection in 2001, recognizing the importance oflimiting trade
`dress protection so as notto chill competition.” Before a product’s trade dress
`can be afforded this protection, however, the trade dress must be “(1) either (a)
`inherently distinctive, or (b) has acquired distinctiveness through secondary
`‘meaning; (2) a likelihood of confusion exists between the trade dress of the
`original product and that of the knockoff product; and (3) the trade dress
`employed servesno utilitarian or aesthetic functionality.””' While the distinctive-
`ness and functionality aspects of trade dress are important in an overall analysis
`of a product,
`this Note will focus solely on the elernent of likelihood of
`confusion. Specifically, this Note will deal with point-of-sale confusion, post-sale
`confusion,andthe role that “consumer sophistication”plays in these analyses.”
`
`TI. ANALYSIS
`
`Likelihood of confusion exists where “an appreciable numberof ordinarily
`prudent purchasersarelikely to be misled, or indeed simply confused, as to the
`source of the goods in question.”* As stated earlier, the Second Circuit
`
`
`
`Two Pesos, 505 US. at 764.
`Wallace Int'l Silversmiths, Inc. v. Godinger Silver Art Co., 916 F.2d 76, 79, 16 U.S.P.Q.2d
`(BNA) 1555, 1557 (2d Cir, 1990); see afo Fun-Damental Too,Ltd.v. Gemmy Indus. Corp., 111 F.3d
`993, 999, 42 U.S.P.Q.2d (BNA) 1348, 1352 (2d Cir. 1997) (holding that trade dress “encompasses
`the design and appearance ofthe producttogether with all the elements making up the overall image
`that serves to identify the product presented to the consumer”); Erin S, Dufek, Comment, The Same
`Uniform, A Different Team: Copycats Suit upfor Competition, 60 ALB, L. REV. 1317 (1997).
`® ‘The Court stated:
`‘Trade dress protection must subsist with the recognition that in manyinstances
`there is no prohibition against copying goods and products. In general, unless
`an intellectual property right such as patent or copyright protects an irem,it will
`be subject to copying... . {C]opying is not always discouraged or disfavored by
`the laws which preserve our competitive economy.
`Traffix Devices, Inc. v. Mktg. Displays, Inc,, 532 U.S. 23, 28, 58 U.S.P.Q.2d (BNA) 1001, 1005
`(2001); see also Landseape Farms, 113 F.3d at 379 (noting that “the Lanham Act mustbe construed in
`light of a strong federal policy in favor of vigorously competitive markets”).
`7 Dufek, sapra at note 69, at 1321.
`® Point-of-sale confusionrelates to the confusion ofthe actual purchaser ofthe specific good.
`In contrast, post-sale confusion has been defined as confusion created when “the purchasers’ use
`of those goods [the knockoffs] is likely to cause others to be confused with respect to the marks.”
`Aan K. Wooster,‘Post-Sale Confusion’in Trademark or TradeDress InfringementActs Under§ 43 ofLanham
`Trade Mark Act, 145 ALR Fed. 407, 418 (1998).
`® Mushroom Makers, Inc. v. R.G, Barry Corp., 580 F.2d 44, 47, 199 U.S.P.Q. (BNA)65,66 (2d
`Cir, 1978) (per curium).
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