Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 1 of 17
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
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`Beyonce Giselle Knowles-Carter, et al.,
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`Plaintiff,
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`-v-
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`Feyonce, Inc. et al.,
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`Defendants.
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`ALISON J. NATHAN, District Judge:
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`-- -~-- -..-, ·--.. -- ---~---
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`... ...-... ............
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`.....--.. ,....,~~..-a -,.-.~~••n~-ro••
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`·(cid:173)
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`•----......-~"---"'•"""-----
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`16-CV-2532 (AJN)
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`MEMORANDUM OPINION
`AND ORDER
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`Plaintiffs Beyonce Giselle Knowles-Carter and BGK Trademark Holdings, LLC bring
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`this action against Feyonce Inc., Lee Lee, and individual Defendants Andre Maurice and Leanna
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`Lopez, alleging trademark infringement and dilution, unfair competition, and unjust enrichment
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`associated with the sale of merchandise using the brand name "Feyonce," which Defendants
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`market to the engaged to be married-i.e., fiances. Before the Court is Plaintiffs' motion for
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`partial summary judgment and entry of a permanent injunction against Defendants Andre
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`Maurice and Leana Lopez.
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`There can be no dispute that in marketing to fiance purchasers, defendants chose the
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`formation "FEYONCE" in order to capitalize off of the exceedingly famous BEYONCE mark.
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`But that alone does not establish likelihood of confusion. Rather, a critical question is whether a
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`rational consumer would mistakenly believe FEYONCE products are sponsored by or affiliated
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`with BEY ONCE products. A rational jury might or might not conclude that the pun here is
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`sufficient to dispel any confusion among the purchasing public. Thus, there is a genuine dispute
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`of material fact that requires denial of the motion for summary judgment.
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 2 of 17
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`I.
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`Background
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`A. Factual Background
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`The following facts are undisputed except where specifically noted. 1 Plaintiff Beyonce
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`Knowles-Carter ("Beyonce") is a world-renowned music artist who is among the best known
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`figures in entertainment. As such, the Court need not recount the details of her celebrity here.
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`Plaintiff BGK Trademark Holdings, LLC ("BGK"), is the owner of the federally registered
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`trademark BEY ONCE, which was entered on the Principal Register of the United States Patent
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`and Trademark office ("USPTO") on August 31, 2004, as Registration No. 2,879,852. Putnam
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`Deel., Ex. 2 at 12. 2 The registration includes Class 25: "Clothing: namely - shi1is, sweaters,
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`blouses,jackets, slacks, hats and caps." Id. Plaintiffs' mark was first used in commerce June 24,
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`2003, and it has remained in continuous use since its registration. Id., Ex. 1 at 3; Vargas Deel. ~
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`5. Products that feature the BEYONCE mark are sold on the website <shop.beyonceshop.com.>
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`Vargas Deel. ~ 5. Among these products are clothing items such as T-shirts and sweatshirts,
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`which retail for approximately $35.00 to $70.00. Id~ 9.
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`Defendants Andre Maurice and Leana Lopez operate a business that sells clothing and
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`apparel with the mark FEYONCE and certain phrases from Beyonce's well known songs.
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`Putnam Deel., Ex. 23 at 2. On November 25, 2015, Defendant Maurice applied to register the
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`FEYONCE mark with the USPTO. Id., Ex. 6. On November 30, 2015, Maurice applied to
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`1 Plaintiffs have duly submitted a Rule 56.1 Statement setting forth in numbered paragraphs the material facts they
`contend are undisputed. Dkt. No. 88. As Plaintiffs point out, Defendants have failed to submit a statement
`"responding to each numbered paragraph in the statement of the moving party," as required by Local Rule 56. l (b ).
`See Def. Reply at 2-3. As a result, the Court deems the contentions made in Plaintiffs' Rule 56.1 statement to be
`admitted to the extent they are otherwise supported by evidence in the record. See Wali v. One Source Co., 678 F.
`Supp. 2d 170, 178 (S.D.N.Y. 2009) ("Prose litigants are ... not excused from meeting the requirements of Local
`Rule 56.1."). Nonetheless, the Court exercises its discretion to scrutinize the evidence for any material, disputed
`issues of fact present in the record. See id.; Holtz v. Rockefeller & Co., Inc., 258 F.3d 62, 73 (2d Cir. 2001 ).
`2 The Court takes judicial notice of the trademark registrations and other publicly available USPTO record to the
`extent that they are relevant in deciding this motion. See Island Software and Computer Service, Inc. v. Microsoft
`Corp., 413 F.3d 257, 261 (2d Cir. 2005).
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`2
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 3 of 17
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`register an almost identical mark without the accent over the final E (FEYONCE). Id., Ex. 7.
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`Both applications included registration for use in clothing and apparel. Id., Ex 6, 7. Defendants
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`began using the FEYONCE mark in commerce in 2016. Id., Ex 22 at 5. On March 22, 2016, the
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`USPTO informed Defendants that it was refusing both applications for several reasons, including
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`because it determined that the marks were confusingly similar to the registered mark
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`BEYONCE. Id., Ex. 8, 9. On April 29, 2016, Defendants Maurice and Lopez incorporated their
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`business, Feyonce Inc., and on July 13, 2016, submitted an additional trademark application, this
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`time for the mark "Feyonce Inc." Id., Ex. 21. Defendant Maurice subsequently responded to the
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`USPTO's refusal to register FEYONCE, arguing that the mark is not confusingly similar to
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`BEY ONCE. Id., Ex. 10. On October 31, 2016, the USPTO again refused to register the mark,
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`finding Defendant Maurice's argument "unpersuasive," and suspending the application. Id., Ex.
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`11.
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`After beginning to use the mark FEYONCE in commerce in at least March of 2016,
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`Defendants sold clothing items on <feyonceshop.com> until at least October 26, 2016. Id., Ex.
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`25. From at least January 15, 2017 through May 15, 2017, Defendants sold similar items on
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`Etsy.com through a shop called "FeyonceShop." Id., Ex. 26. On November 17, 2017,
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`Defendants represented to the Court that they had stopped selling FEYONCE products, but that
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`they continued to own the domain name <feyonceshop.com> and the email address
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`feyonceinc@yahoo.com. Dkt. No. 96.
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`B. Procedural Background
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`On February 22, 2015, counsel for Plaintiffs' sent a cease and desist letter to Defendant
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`Maurice demanding that Defendants stop using the FEYONCE mark, abandon their trademark
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`applications, and transfer the domain name <feyonceshop.com> to Plaintiffs. Putnam Deel, Ex.
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 4 of 17
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`14. Not receiving a response, on April 5, 2016, Plaintiffs filed a complaint against Defendants
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`Maurice and Lopez, in addition to Lee Lee and Feyonce, Inc., asserting causes of action for
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`Federal Trademark Infringement, in violation of 15 U.S.C. § 1114; Federal Unfair Competition,
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`in violation of 15 U.S.C. § l 125(a); Federal Trademark Dilution, in violation of 15 U.S.C.
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`1125(c); Deceptive Acts and Practices, in violation of New York General Business Law§ 349;
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`Trademark Dilution, in violation of New York General Business Law§ 360-L; common law
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`unfair competition; and unjust enrichment. Dkt. No. 1. As relief, Plaintiffs request (1) an
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`injunction enjoining Defendants from using the FEYONCE mark and requiring the transfer of
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`the domain name <feyonceshop.com> to Plaintiffs; (2) compensatory, statutory, and exemplary
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`damages; (3) an accounting of Defendants' gains and profits; and ( 4) costs and attorneys' fees.
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`Id. at 23-25.
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`On July 14, 2016, Defendants Maurice and Lopez, who are representing themselves pro
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`se, filed an answer to the complaint. Dkt. No. 33. Corporate defendant Feyonce, Inc. failed to
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`secure counsel, and the Clerk of the Court issued a certificate of default against the corporation
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`for failing to appear. Dkt. No. 42. Plaintiffs thereafter moved for default judgment against
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`Feyonce, Inc. Dkt. No. 55. The Court denied the motion without prejudice while the case
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`against the individual defendants proceeds. Dkt. No. 84. The Court also denied Defendants'
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`motion to dismiss for lack of venue or, alternatively, to transfer the case to the Western District
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`of Texas. Id.
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`Now before the Court is Plaintiffs' motion for summary judgment on their claims for
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`federal trademark infringement, federal and New York unfair competition, and federal and New
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`York trademark dilution, and for the entry of a permanent injunction against individual
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`Defendants Maurice and Lopez. Plaintiffs filed the instant motion and accompanying exhibits on
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 5 of 17
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`November 3, 2017. Dkt. No. 87. Defendants Maurice and Lopez filed an opposition on
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`November 17, 2017, Dkt. No. 96, and Plaintiffs filed their reply on November 27, 2017, Dkt. No.
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`97.
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`II.
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`Legal Standard
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`A court may not grant a motion for summary judgment unless all of the submissions
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`taken together "show[ ] that there is no genuine dispute as to any material fact and the movant is
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`entitled to judgment as a matter oflaw." Fed. R. Civ. P. 56(a). A fact is "material" if it "might
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`affect the outcome of the suit under the governing law," and is genuinely in dispute if "the
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`evidence is such that a reasonable jury could return a verdict for the nonmoving party." Roe v.
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`City of Waterbury, 542 F.3d 31, 35 (2d Cir. 2008) (quoting Anderson v. Liberty Lobby, Inc., 477
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`U.S. 242,248 (1986)). "Summary judgment is appropriate when 'the record taken as a whole
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`could not lead a rational trier of fact to find for the non-moving party."' Smith v. County of
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`Suffolk, 776 F.3d 114, 121 (2d Cir. 2015) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio
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`Cmp., 475 U.S. 574,587 (1986)). "[I]n making that determination, the court is to draw all
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`factual inferences in favor of the party against whom summary judgment is sought, viewing the
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`factual asse1iions in materials such as affidavits, exhibits, and depositions in the light most
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`favorable to the party opposing the motion." Rodriguez v. City ofNevv York, 72 F.3d 1051, 1061
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`(2d Cir. 1995). However, "[w]hen opposing parties tell two different stories, one of which is
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`blatantly contradicted by the record, so that no reasonable jury could believe it, a court should
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`not adopt that version of the facts for purposes of ruling on a motion for summary judgment."
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`Scott v. Harris, 550 U.S. 372, 380 (2007).
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`In seeking summary judgment, the initial "burden is upon the moving party to
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`demonstrate that no genuine issue respecting any material fact exists." Gallo v. Prudential
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 6 of 17
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`Residential Servs., 22 F.3d 1219, 1223 (2d Cir. 1994). If the non-moving party would bear the
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`burden of proof at trial, "the burden on the moving party may be discharged by 'showing' - that
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`is, pointing out to the district court - that there is an absence of evidence to support the
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`nonmoving pmiy's case." Celotex Corp. v. Catrett, 477 U.S. 317,325 (1986). If the movant
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`"demonstrates 'the absence of a genuine issue of material fact,' the opposing party must come
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`forward with specific evidence demonstrating the existence of a genuine dispute of material fact"
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`to survive summary judgment. Brown v. Eli Lilly & Co., 654 F.3d 347, 358 (2d Cir. 2011)
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`(citation omitted) (quoting Celotex C01p., 477 U.S. at 323).
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`III.
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`Discussion
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`A. Federal Trademark Infringement
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`To prove trademark infringement under 15 U.S.C. § 1114, a plaintiff must satisfy a two(cid:173)
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`prong inquiry: first, the plaintiff must show that its mark is entitled to protection; and second, the
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`plaintiff must show that "defendant's use of the mark is likely to cause consumers confusion as
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`to the origin or sponsorship of the defendant's goods." Virgin Ente,prises Ltd. v. Nawab, 335
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`F.3d 141, 146 (2d Cir. 2003) (citing Gruner+ Jahr USA Publ'g v. Meredith C01p., 991 F.2d
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`1072, 1074 (2d Cir. 1993). With respect to the first prong, a certificate of registration with the
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`USPTO constitutes prima facie evidence that the mark is protectable. See Guthrie Healthcare
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`System v. ContextMedia, Inc., 826 F.3d 27, 37 (2d Cir. 2016). Fmihermore, when a registered
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`mark has been in continuous use for five consecutive years following the registration, the right to
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`that mark is considered "incontestable" so long as there are no ongoing proceedings, proper
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`filings have been made with the USPTO, and the mark is not generic. See 15 U.S.C. 1065. The
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`parties in this case do not dispute that Plaintiffs' BEYONCE mark is registered with the USPTO
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`and has been in continual use for over five consecutive years. Plaintiffs' mark is therefore
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 7 of 17
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`protectable as a matter of law.
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`Whether the Court may grant summary judgment in favor of the Plaintiffs for federal
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`trademark infringement thus turns on the second prong. In other words, summary judgment may
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`be appropriate if, considering the record as a whole, "the undisputed evidence would lead to only
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`one conclusion as to whether confusion is likely." See Cadbwy Beverages, Inc. v. Cott Corp., 73
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`F.3d 474,478 (2d Cir. 1996). "Normally, the likelihood of confusion is a factual question,
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`centering on the probable reactions of prospective purchasers of the parties' goods." Pirone v.
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`MacMillan, Inc., 894 F.2d 579, 584 (2d Cir. 1990). To assess the likelihood of confusion
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`between the two marks, the Court looks to the factors aiiiculated in Polaroid Corp. v. Polaroid
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`Elecs. Corp., 287 F.2d 492,495 (2d Cir. 1961) (considering the strength of the senior mark, the
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`similarity of the marks, the proximity of the products in the marketplace, the likelihood that the
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`owner of the senior mark will bridge the gap, actual confusion, the presence of bad faith on the
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`part of the defendant, the quality of the defendant's products, and consumer sophistication). "If a
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`factual inference must be drawn to arrive at a particular finding on a Polaroid factor, and if a
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`reasonable trier of fact could reach a different conclusion, the district court may not properly
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`resolve that issue on summary judgment." Patsy's Brand, Inc. v. IO.B. Realty, Inc., 317 F.3d
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`209, 215 (2d Cir. 2003 ). In weighing the factors, the Court must not lose sight of the inquiry's
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`touchstone: whether or not it is likely "that an appreciable number of ordinarily prudent
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`purchasers would be confused as to the source of the goods which they are purchasing or in
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`distinguishing one product from another." Miller Brewing Co. v. Carling O'Keefe Breweries of
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`Canada, Ltd., 452 F. Supp. 429,444 (W.D.N.Y. 1978) (citing Avon Shoe Co. v. David Crystal,
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`Inc., 279 F.2d 607, 612 (2d Cir. 1960)).
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`For the reasons that follow, the Court concludes that there is a triable issue of fact as to
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 8 of 17
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`whether the similarity between the marks is likely to cause confusion. 3 The degree of similarity
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`between the marks is "a key factor in determining likelihood of confusion." Louis Vuitton
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`Malle tier v. Dooney & Bourke, Inc., 454 F.3d 108, 117 (2d Cir. 2006). "The question is not
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`merely how many points of similarity the marks share, but whether they create the same general
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`overall impression." Am. Auto. Ass 'n v. AA Auto. Club of Queens, Inc., No. 97CV1 l 80, 1999
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`WL 97918, at *5 (E.D.N.Y. Feb. 8, 1999) (citing Bristol-Myers Sqidbb Co. v. McNeil-P.P.C.,
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`Inc., 973 F.2d 1033, 1046 (2d Cir. 1992)). Indeed, "even close similarity between two marks is
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`not dispositive of the issue of likelihood of confusion." Savin Corp. v. Savin Grp., 391 F.3d 439,
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`458 (2d Cir. 2004). Nor is the prong satisfied if the similarity merely results in an association
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`between the products in a consumer's mind, as opposed to confusion regarding the source,
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`sponsorship, or affiliation of the products. See Application of Ferrero, 479 F.2d 1395, 1397
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`(C.C.P.A. 1973) ("The fact that one mark may bring another mark to mind does not in itself
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`establish likelihood of confusion as to source. The very fact of calling to mind may indicate that
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`the mind is distinguishing, rather than being confused by, two marks.") (internal citation
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`omitted); see also Schieffelin & Co. v. Jack Co. of Boca, Inc., 850 F. Supp. 232, 248 (S.D.N.Y.
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`1994) ( noting that "to parody a mark, it is necessary to copy at least enough of the original to call
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`it to the mind of people viewing the parody").
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`Here, the marks are certainly extremely similar in text, font, and pronunciation. See
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`Pfizer v. Y2K Shipping & Trading, Inc., No. 00CV 5304, 2004 WL 896952, at *5 (E.D.N.Y.
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`2004) (In assessing similarity, "courts analyze the similarity in pronunciation and appearance of
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`3 The Comt acknowledges that the USPTO has refused to register the FEYONCE mark due to a likelihood of
`confusion with the BEYONCE mark. While such refusals are entitled to substantial weight in assessing likelihood
`of confusion for purposes of trademark infringement, they are "not conclusive." See Syntex Laboratories, Inc. v.
`Nonvich Pharmacal Co., 437 F.2d 566,569 (2d Cir. 1971).
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 9 of 17
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`each and the manner in which they are presented to consumers."). The difference between the
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`two is the first letter, which in other cases was not enough to save an allegedly infringing junior
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`mark from a finding of likelihood of confusion as a matter of law. See id. However, this does
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`not end the Court's inquiry. By replacing the "B" with an "F," Defendants have created a mark
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`that sounds like "fiance," i.e., a person who is engaged to be married. As a result, FEY ONCE is
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`a play on words,4 which could dispel consumer confusion that might otherwise arise due to its
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`facial similarity to the BEYONCE mark. See Tommy Hilfiger Licensing, Inc. v. Nature Labs,
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`LLC, 221 F. Supp. 2d 410,417 ("If the difference is ... such to convey to the ordinary viewer that
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`this is a joke, not the real thing, then confusion as to source, sponsorship, affiliation or
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`connection is unlikely.").
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`Plaintiffs rely on Pfizer, a case in which the court did find that there was a likelihood of
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`confusion between two similar marks as a matter of law. Pfizer, 2004 WL 896952, at *4 (The
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`similarity in sound and spelling between "VIAGRA" and "TRIAGRA" "is likely to lead
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`consumers to believe that Defendants' product is affiliated with that of Plaintiff."). However,
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`that case is distinguishable from the case at hand. In Pfizer, the substitution of the letters "TR"
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`for "V" did not result in a new word with a different connotation than "VIAGRA," since
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`"TRIAGRA" ( or another word with the same sound) has no dictionary definition. Instead, the
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`instant case is more readily analogized to Nike, 6 F.3d 1225. In Nike, the Seventh Circuit
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`4 The Court is unprepared to conclude that Feyonce rises to the level of parody, as there is no evidence in the record
`to suggest that Defendants intended their products to convey a message about or critique ofBeyonce. See Harley(cid:173)
`Davidson, Inc. v. Grottanelli, 164 F.3d 806, 813 (2d Cir. 1999) (requiring that a trademark parody make some
`comment on the original work to qualify as parody). However, "even without recourse to the First Amendment," a
`pun may still be "relevant to the extent that the joke is clear enough to result in no confusion under the statutory
`likelihood of confusion analysis." Tommy Hilfiger, 221 F. Supp. 2d at 416; see also Nike Inc. v. Just Did It
`Enterprises, 6. F.3d 1225, 1228 (7th Cir. 1993) (Under the Lanham Act, "parody is not an affirmative defense but an
`additional factor in the analysis."). Thus, even a pun on an existing mark that does not contain an expressive
`message may avoid infringing if it is adequately distinguishable from the existing mark by virtue of the pun. See
`Tommy Hilfiger, 221 F. Supp. 2d at 416.
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`reversed the lower court's entry of summary judgment for trademark infringement in favor of the
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`well-known brand. Id The allegedly infringing products were t-shirts and sweatshirts
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`displaying the word "MIKE" and a "swoosh" logo identical to the one made famous by Nike. Id
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`at 1227. The lower couii there "concluded as a matter of law that MIKE and NIKE were too
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`similar and likely to confuse consumers" because the marks were vitiually identical. Id In
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`reversing, the Seventh Circuit reasoned that a jury could find that consumers "making the
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`decision to purchase or not to purchase" MIKE products might not be "confused .. .into thinking
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`that they were a Nike product." Id at 1299-30. Defendant in that case went so far as to admit
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`that his products may be confused for Nike products "from across the room," but the couii found
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`that there was a triable issue as to whether "any initial confusion ends with a closer look, when
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`the observer 'gets it."' Id. Whether observers found the Nike/Mike pun amusing was also
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`irrelevant-the "ultimate question" was whether the pun was sufficient to dispel confusion
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`among the consuming public. Id at 1228.
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`Like in Nike, in this case, because of the additional connotation of "fiance," allowing all
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`inference in favor of the non-moving party, a reasonable jury may conclude that consumers
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`looking for BEYONCE products are unlikely to select a FEY ONCE product inadvertently. See
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`also Tommy Hilfiger, 221 F. Supp. 2d at 421 (granting alleged infringer's motion for summary
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`judgment because the junior mark was a readily perceived pun unlikely to cause confusion);
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`SchieffeUn, 850 F. Supp. at 235 ("[W]hether [a] parody would be sufficiently strong to overcome
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`the potential for consumer confusion was an issue of fact to be decided at trial."). Evidence in
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`the record indicates that many purchasers of FEY ONCE products are, in fact, engaged, just as
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`many MIKE product purchasers were named Mike. Nike, 6 F.3d at 1230. Viewed in the light
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`most favorable to Defendants, this evidence suggests that consumers are understanding the pun,
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 11 of 17
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`rather than confusing the brands. A rational trier of fact could nonetheless determine that
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`consumers might mistakenly believe FEY ONCE products are sponsored by or affiliated with
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`BEYONCE products, but the Court cannot conclude that the marks are confusingly similar as a
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`matter of law.
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`Because the Court is unconvinced as to similarity, it is also unprepared to conclude as a
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`matter of law that Defendants acted in bad faith. Cf Pfizer, 2004 WL 896952, at * 5 ("Bad
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`faith ... is established where there is evidence of actual knowledge of the senior user's mark and
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`the marks are so similar that it seems clear that deliberate copying has occmTed. ") ( internal
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`quotation marks omitted). While Defendants clearly selected their mark because of its
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`association with Plaintiffs' mark, it is not at all clear that they hoped to capitalize on "confusion
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`between" the products. See Flat Rate Movers v. FlatRate Moving & Storage, Inc., 104 F. Supp.
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`3d 371,380 (S.D.N.Y. 2015); see also Tommy Hilfiger, 221 F. Supp. 2d at 419 ("In one sense a
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`parody is an attempt to derive benefit from the reputation of the owner of the mark .... The benefit
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`to the one making the parody, however, arises from the humorous association, not from public
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`confusion as to the source ofthe marks.") (quotingJordache Enters., Inc. v. Hogg Wyld, Ltd.,
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`828 F.2d 1482, 1486 (10th Cir. 1987). Indeed, by choosing a mark that sounds identical to
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`fiance, Defendants may have purposefully differentiated their products by eliciting a mental
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`association with a word that has a dictionary definition unrelated to Beyonce. See id. ([I]n the
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`case of parody, the intent is not necessarily to confuse the public but rather to amuse.") (internal
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`quotation marks omitted).
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`Of course, several of the Polaroid factors weigh in favor of a finding of likelihood of
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`confusion. First, Plaintiffs mark is strong. See Cadbury, 73 F.3d at 479 ("[W]hen a mark is
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`registered and fanciful," meaning it lacks a dictionary definition, "the plaintiff has met its burden
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 12 of 17
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`on the question of strength.") (internal quotation marks omitted). Second, both lines of products
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`include apparel sold online, and are therefore in close proximity in commerce. See Lang v. Ref.
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`Living Publ'g Co., 949 F.2d 576,582 (2d Cir. 1991) ("To the extent goods ... serve the same
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`purpose [and] fall within the same general class ... the use of similar designations is more likely
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`to cause confusion."). Because the parties travel in the same channels of commerce, the bridging
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`the gap factor leans in the same direction. See Star Indus. v. Bacardi & Co. Ltd., 412 F .3d 3 73,
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`387 (2d Cir. 2005) (noting that where the parties' products "are already in competitive proximity,
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`there is really no gap to bridge"). Third, it is unlikely that consumers of the apparel, which is not
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`particularly expensive, are sophisticated. See Phillips-Van Heusen Corp. v. Calvin Clothing Co.,
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`Inc., 444 F. Supp. 2d 250, 257 (S.D.N.Y. 2006) ("[T]he average clothing customer is not
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`particularly sophisticated."). Nonetheless, the core of the inquiry is whether ordinary purchasers
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`would have difficulty distinguishing the products or ascertaining whether the junior product is
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`affiliated with or sponsored by the senior mark's owner, and the Court cannot conclude as a
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`matter of law that this type of confusion is likely.
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`B. Unfair Competition
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`To succeed on a claim for unfair competition under 15 U.S.C. 1125, a plaintiff must
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`prove both that it has a mark that is entitled to protection and that the defendant's mark would
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`likely cause confusion as to the origin of the defendant's goods or the sponsorship of those
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`goods. See Legends Are Forever, Inc. v. Nike, Inc., 58 F. Supp. 3d 197, 205-06 (N.D.N.Y.
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`2014). This two-pronged inquiry mirrors the test for trademark infringement under 15 U.S.C.
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`1114. Id. at 205. To establish unfair competition under New York common law, too, a plaintiff
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`must show that defendant's use results in a likelihood of confusion between the two marks at
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`issue. See ESPN, Inc. v. Quiksilver, Inc., 586 F. Supp. 2d 219,230 (S.D.N.Y. 2008). Because
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 13 of 17
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`the Court concludes that a triable issue of fact exists with regard to the likelihood of confusion,
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`as discussed supra, Plaintiffs' motion for summary judgment on their unfair competition claims
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`is denied.
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`C. Trademark Dilution
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`1. Federal Trademark Dilution
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`The owner of a famous mark can succeed on a claim of trademark dilution under federal
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`law against an individual or entity who "commences use of a mark or trade name in commerce
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`that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark,
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`regardless of the presence or absence of actual or likely confusion, of competition, or of actual
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`economic injury." 15 U.S.C. § 1125(c)(l). Dilution by blurring is defined as the "association
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`arising from the similarity between a mark or trade name and a famous mark that impairs the
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`distinctiveness of the famous mark." 15 U.S.C. § 1125(c)(2)(C). In evaluating whether a mark
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`is likely to cause dilution by blurring, courts may consider all relevant factors, including the
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`following: ( 1) the degree of similarity between the marks; (2) the degree of distinctiveness of the
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`famous mark; (3) the extent to which the owner of the famous mark is engaging in exclusive use
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`of the mark; ( 4) the degree ofrecognition of the famous mark; (5) whether the use of the junior
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`mark intended to create an association with the famous mark; (6) any actual association between
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`the mark and the famous mark. 15 U.S.C. § (c)(2)(B). The analysis "must ultimately focus on
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`whether an association, arising from the similarity between the subject marks, impairs the
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`distinctiveness of the famous mark-that is, the ability of the famous mark to serve as a unique
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`identifier." Louis Vuitton Jvlalletier, SA. v. My Other Bag, Inc., 156 F. Supp. 3d 425, 434
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`(S.D.N.Y. 2016) (citing Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 736 F.3d 198,204 (2d
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`Cir. 2013) (internal quotation marks omitted).
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`Case 1:16-cv-02532-AJN-JLC Document 101 Filed 09/30/18 Page 14 of 17
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`As previously discussed, Plaintiffs' mark is famous and distinctive. In addition, there is
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`no dispute that Defendants use the FEYONCE mark in commerce, and that the BEYONCE
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`mark's fame predates the Defendants' first sale of a FEY ONCE product. The question, then, is
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`whether Plaintiffs can establish likelihood of dilution as a matter of law. Several of the factors
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`certainly lean in this direction: Plaintiffs are engaging in exclusive use of the famous mark,
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`which is highly recognizable, it seems clear on the face of the record that Defendants sought to
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`associate their mark with Plaintiffs', and Plaintiffs' have presented evidence that consumers do
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`indeed associate the FEYONCE mark with BEYONCE. Even when such association was
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`intended, when a defendant does so "imperfectly, so as to convey the simultaneous message that
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`it was not in fact a source" of the famous mark's products, the risk of blurring may be minimal.
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`See Louis Vuitton Jvlalletier, S.A . v. HauteDiggity Dog, LLC, 507 F .3d 252, 268 ( 4th Cir. 2007).
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`The "operative question is whether the kind of association [Defendants] creat[ e] here is likely to
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`impair the distinctiveness of [Plaintiffs'] marks." My Other Bag, 156 F. Supp. 3d at 439.
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`Defendants' mark could be considered a pun-it is clearly a reference to Plaintiff Beyonce, but it
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`is just as clearly a signifier of a specific relationship status. A reasonable factfinder may
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`detennine that, given the similarity between the two marks, Defendants' use of FEY ONCE
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`impairs the distinctiveness and selling power of the BEY ONCE mark. However, because
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`Defendants' have not merely co-opted the BEYONCE mark, but rather repurposed it in a way
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`that can be distinguished from the original, a reasonable factfinder could also conclude that there
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`is little risk of dilution. Cf Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497,
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`506 (2d Cir. 1996) (noting that parody tends to increase rather than undermine the public
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`identification of a famous mark). Because the outcome is not compelled as a matter of law, the
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`Court denies Plaintiffs' motion for summary judgment on their federal trademark dilution claim.
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`2. New York Trademark Dilution
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`To prevail on a claim for trademark dilution under New York General Business Law §
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`360-1, a plaintiff "must prove (1) that the trademark is truly distinctive or has acquired secondary
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`meaning, and (2) a likelihood of dilution either as a result of 'blurring' or 'tarnishment."' U-
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`N eek, Inc. v. Wal-mart Stores, Inc., 147 F. Supp. 2d 158,175 (S.D.N.Y. 2001) (citing Deere &
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`Co. v. MTD Prods., Inc., 41 F.3d 39, 42 (2d Cir. 1994)). Plaintiffs' mark is registered and
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`incontestable, and Plaintiffs have therefore established a rebuttable presumption of
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`distinctiveness as a matter of law. See Johnson & Johnson Consumer Companies, Inc. v. Aini,
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`540 F. Supp. 2d 374, 301 ("[W]hen the USPTO registers a mark without requiring proof of a
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`secondary meaning, a presumption arises that the mark is more than merely descriptive but is,
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`rather, inherently distinctive."). Defendants point to nothing that would rebut this presumption.
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`However, summary judgment is inappropriate because there remain factual questions that
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`bear on the second prong: likeliness of dilution. As with federal law, under New York law
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`"[d]ilution by 'blurring' may occur where the defendant uses or modifies that plaintiffs
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`trademark to identify the defendants' goods and services, raising the possibility that the mark
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`will lose its ability to serve as a unique identifier of the plaintiffs product." U-Neek, 147 F.
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`Supp. 2d at 17 5. 5 New York courts consider six factors when determining if blurring is likely:
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`"(1) similarity of the marks, (2) similarity of the products covered by the marks, (3)
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`sophistication of consumers, (4) predatory intent, (5) renown of the senior mark, (6) renown of
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`the junior mark." Mead Data Cent., Inc. v. Toyota A1otor Sales, Inc.,