Roberts v. Puma N. Am., Inc.

CHRISTOPHE ROBERTS, Plaintiff, v. PUMA NORTH AMERICA, INC., Defendants.

21-cv-2559 (JSR)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

May 27, 2021

MEMORANDUM

JED S. RAKOFF, U.S.D.J.

Plaintiff Christophe Roberts brings this action against defendant Puma North America, Inc. ("Puma"). Roberts brings claims of trademark infringement and unfair competition under both federal law and state law, and a claim of dilution under state law. Roberts alleges that Puma willfully infringed his signature mark -- the "Roar Mark" -- by selling apparel bearing certain designs that, according to Roberts, are confusingly similar to the Roar Mark. On May 5, 2021, the Court, by bottom-line order, denied Roberts' motion for a temporary restraining order ("TRO") and preliminary injunction to prevent Puma from, among other things, using these designs in connection with the promotion, marketing, advertising, and sale of products and services. Dkt. No. 37. This memorandum explains the reasons for that ruling.

Background

Roberts is an artist with a following in the basketball, hip-hop, and sneaker communities. He began using the Roar Mark as his "signature" around 2013. Roberts Decl., Dkt. No. 13, ¶ 19-22. The Roar Mark is a hand-drawn outline of sharp teeth. See Figure 1.

Image materials not available for display.

Figure 1: The Roar Mark

Roberts began selling apparel bearing the Roar Mark in 2014. Id. ¶¶ 23-26. He applied to the Trademark Office to register the mark in 2018, and it was registered in 2019 for t-shirts, hoodies, and jackets. Id. ¶¶ 32-33.

Puma is a large sportwear brand. In mid-2018, Puma began selling apparel bearing certain designs that, according to Roberts, are confusingly similar to the Roar Mark. Id. ¶ 40-47; see also Figure 2.

Image materials not available for display.

Figure 2: Examples of Puma's designs In June 2019, Jay-Z, an influential hip-hop artist who serves as a brand ambassador for Puma, appeared at an NBA Finals game wearing Puma apparel bearing one of these teeth designs. Compl., Dkt. No. 1, ¶ 96. Apparently believing that Jay-Z was sporting the Roar Mark, friends and colleagues of Roberts began to congratulate him on social media for having designed a shirt worn by Jay-Z. Roberts Decl. ¶¶ 63-71.

In August 2019, Roberts retained counsel who issued a cease-and-desist letter to Puma. Id. ¶¶ 48-50. Roberts and Puma engaged in "discussions" through November 2019. Roberts Reply Decl., Dkt. No. 27, ¶ 17. Roberts understood from these discussions that "Puma did not have plans to sell merchandise using" the teeth design. Id. Around October 2020, however, Roberts encountered other teeth designs used by Puma in advertising campaigns. In March 2021, Roberts brought this lawsuit and sought a TRO and preliminary injunction soon thereafter.

Legal Standard

"In the Second Circuit, the same legal standard governs the issuance of preliminary injunctions and [TROs]." Mahmood v. Nielsen, 312 F. Supp. 3d 417, 421 (S.D.N.Y. 2018).¹ To obtaineither, a party must ordinarily show "that he is likely to succeed on the merits; that he is likely to suffer irreparable harm in the absence of preliminary relief; that the balance of equities tips in his favor; and that an injunction is in the public interest." Am. Civil Liberties Union v. Clapper, 785 F.3d 787, 825 (2d Cir. 2015). Alternatively, a party may show "irreparable harm and either a likelihood of success on the merits or sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief." Id.

Discussion

The parties dispute each of the necessary elements of a preliminary injunction. The Court finds that Roberts has not established sufficiently serious questions going to the merits to make them a fair ground for litigation, let alone a likelihood of success. The Court denies the motion on that basis.²

I. Likelihood of Success on the Merits

A. Trademark Infringement Claims

Roberts brings claims under § 32(1) of the Lanham Act, 15 U.S.C. § 1114, and § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Although § 32(1) concerns registered marks, whereas § 43(a) concerns unregistered, common law marks, see Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003), the same analysis applies to both provisions, Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 114-15 (2d Cir. 2006). That is, "[t]o prevail on a trademark infringement claim under §§ 32 and 43(a) of the Lanham Act, a plaintiff must demonstrate (1) that it has a valid mark entitled to protection and (2) that the defendant's use of it is likely to cause confusion." Chloe v. Queen Bee of Beverly Hills, LLC, No. 06-CV-3140 (RJH), 2011 WL 3678802, at *3, (S.D.N.Y. Aug. 19, 2011).

Registration of a trademark constitutes prima facie evidence of its validity. 15 U.S.C. § 1115(a). Roberts owns a registered trademark for the use of the Roar Mark on t-shirts, hoodies, and jackets. Dkt. No. 13-2. The first element is therefore satisfied.

The Court uses a multi-factor test set out in Polaroid Corp. v. Polard Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961), to evaluate the likelihood of consumer confusion. This test requires analysis of eight factors: (1) the strength of the mark; (2) the similarity of the marks; (3) the competitive proximity of the products; (4) the likelihood that the senior user will "bridge thegap"; (5) evidence of actual confusion; (6) the junior user's bad faith in adopting the mark; (7) the respective quality of the products; and (8) the sophistication of the consumers in the relevant market. Id. "No single factor is dispositive, nor is a court limited to consideration of only these factors." Brennan's, Inc. v. Brennan's Rest., L.L.C., 360 F.3d 125, 130 (2d Cir. 2004). As a threshold matter, however, the Court must determine what types of confusion are at issue in this case.

1. Types of Confusion under the Lanham Act

This Circuit recognizes two basic forms of cognizable confusion under the Lanham Act: direct (or forward) and reverse confusion. Direct confusion can occur, for example, where a customer sees the defendant's goods and believes it was made by the plaintiff. Reverse confusion can occur, by contrast, where a customer sees the plaintiff's goods and believes it was made by the defendant. See Lang v. Retirement Living Pub. Co., Inc., 949 F.2d 576, 583 (2d Cir. 1981) (discussing reverse confusion).

Where direct or reverse confusion occurs, that confusion can be confusion as to source or confusion as to affiliation. Source confusion occurs where a customer is confused as to a good's source or origination. Affiliative confusion occurs where a customer is confused as to a good's affiliation or sponsorship. See Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC, 823F.3d 153, 160 (2d Cir. 2016) ("[O]ur case law demonstrates that consumer confusion is plainly not limited to source confusion."); Dall. Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979) (discussing affiliative confusion). The following table provides examples of these four types of confusion, as applied to the facts of this case.

   Direct  Reverse  Source  Customer believes Pumaapparel was produced byRoberts  Customer believes Robertsapparel was produced byPuma  Affiliative  Customer believes Pumaapparel is affiliatedwith Roberts  Customer believes Robertsapparel is affiliatedwith Puma 

Any of these four types of confusion are cognizable under the Lanham Act. Roberts brings claims for both direct source confusion and direct affiliative confusion. He contends that the use of the teeth designs on the Puma apparel is likely to confuse consumers into believing that the Puma apparel was actually sold by Roberts -- an instance of direct source confusion. He also argues, to the extent that Puma's name is clearly visible on these goods, that the use of the teeth designs on the Puma apparel is likely to confuse consumers into believing that Roberts had endorsed Puma's products or that he was otherwise affiliated with Puma -- that is, direct affiliative confusion.

Roberts also suggests, less persuasively, that his claim involves reverse confusion. But Roberts does not present any evidence that Puma's use of the teeth designs is likely to confuse consumers into believing that Roberts' apparel is sold by, or otherwise affiliated with, Puma. At most, the evidence suggests that some consumers might be confused into believing that Puma's apparel is sold by, or is otherwise affiliated with, Roberts. But reverse confusion does not exist "where the consumers erroneously believe the senior user [i.e., Roberts] is the source of the junior user's product [i.e., Puma]." See Sunenblick v. Harrel, 895 F. Supp. 616, 631 (S.D.N.Y. 1995); see also Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 742 (2d Cir. 1994) (explaining that reverse confusion occurs where consumers mistake a plaintiff's products as originating with the defendant).

Accordingly, the Court will analyze whether Roberts has shown a likelihood of either or both of direct source and direct affiliative confusion.³

2. The Polaroid Factors

Review of the Polaroid factors indicates that Puma's use of the various teeth designs is unlikely to cause either direct source confusion or direct affiliative confusion.

a. Strength of the Mark

A mark's "strength" is "crucial to the likelihood of confusion analysis" because a plaintiff's well-known association with the claimed mark "makes it much more likely that consumers will assume wrongly that [the plaintiff] is somehow associated with [the defendant's product] or has authorized the use of its mark." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 873 (2d Cir. 1986). Such strength depends on a mark's "inherent distinctiveness" and its "acquired distinctiveness." Virgin Enters., 335 F.3d at 147. There are four categories of marks for purposes of inherent...