Polaroid Corporation v. Polarad Electronics Corporation (1961)

Corp., 287 F.2d 492 (2d Cir. 1961) (“Polaroid”), which balances the following eight factors: (1) the strength of the trademark; (2) the degree of similarity between the plaintiff’s mark and the defendant’s allegedly imitative use; 5 (3) the proximity of the products and their competitiveness with each other; (4) the likelihood that the plaintiff will “bridge the gap” by developing a product for sale in the defendant’s market; 6 (5) 4 The Lanham Act treats trademark registrat…

Corp., 287 F.2d 492, 495 (2d Cir. 1961). 3 Adidas asserts that the emails were admissions that 3 Those factors, per the district court’s jury instructions, were: (1) “the strength of adidas’ Three Stripe Mark”; (2) “the degree of similarity between adidas’ Three Stripe Mark and Thom Browne’s use of the Four Bar and/or Grosgrain designs on the Accused products”; (3) “whether the Accused Products and adidas[’] products compete for the same consumers”; (4) “whether or not there…

Corp., 287 F.2d 492, 495 (2d Cir. 1961). 3 Adidas asserts that the emails were admissions that 3 Those factors, per the district court’s jury instructions, were: (1) “the strength of adidas’ Three Stripe Mark”; (2) “the degree of similarity between adidas’ Three Stripe Mark and Thom Browne’s use of the Four Bar and/or Grosgrain designs on the Accused products”; (3) “whether the Accused Products and adidas[’] products compete for the same consumers”; (4) “whether or not there…

Corp., 287 F.2d 492, 495 (2d Cir. 1961). 3 Adidas asserts that the emails were admissions that 3 Those factors, per the district court’s jury instructions, were: (1) “the strength of adidas’ Three Stripe Mark”; (2) “the degree of similarity between adidas’ Three Stripe Mark and Thom Browne’s use of the Four Bar and/or Grosgrain designs on the Accused products”; (3) “whether the Accused Products and adidas[’] products compete for the same consumers”; (4) “whether or not there…

Corp., 287 F.2d 492, 495 (2d Cir. 1961)).

Corp., 287 F.2d 492 (2d Cir.1961).

Corp., 287 F.2d 492 (2d Cir.1961).

Corp., 287 F.2d 492, 495 (2d Cir. 1961)).

The Second Circuit has instructed courts analyzing the second prong of the test to apply the non-exclusive multi-factor test developed by Judge Friendly in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), and consider: (1) the strength of the mark, (2) the similarity of the two marks, (3) the proximity of the products, (4) actual confusion, (5) the likelihood of plaintiff's bridging the gap, (6) defendant's good faith in adopting its mark, (7) t…

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Corp., 287 F.2d 492 (2d Cir. 1961) (“the Polaroid factors”) and consider: (1) the strength of Plaintiff’s mark; (2) the similarity of the parties’ marks; (3) the proximity of the parties’ areas of commerce; (4) the likelihood that Plaintiff will bridge the gap separating their areas of activity; (5) the existence of actual customer confusion; (6) whether Defendant acted in bad faith or was otherwise reprehensible in adopting the mark; (7) the quality of Defendants’ product; …

Corp., 287 F.2d 492 (2d Cir. 1961) (“the Polaroid factors”) and consider: (1) the strength of Plaintiff’s mark; (2) the similarity of the parties’ marks; (3) the proximity of the parties’ areas of commerce; (4) the likelihood that Plaintiff will bridge the gap separating their areas of activity; (5) the existence of actual customer confusion; (6) whether Defendant acted in bad faith or was otherwise reprehensible in adopting the mark; (7) the quality of Defendants’ product; …

Corp., 287 F.2d 492 (2d Cir. 1961) (“the Polaroid factors”) and consider: (1) the strength of Plaintiff’s mark; (2) the similarity of the parties’ marks; (3) the proximity of the parties’ areas of commerce; (4) the likelihood that Plaintiff will bridge the gap separating their areas of activity; (5) the existence of actual customer confusion; (6) whether Defendant acted in bad faith or was otherwise reprehensible in adopting the mark; (7) the quality of Defendants’ product; …

See Polar *1525 oid, 287 F.2d at 495 (“Even this extensive catalogue does not exhaust the possibilities—the court may have to take still other variables into account.”).

See, e. g., King Research, Inc. v. Shulton, Inc., supra, 454 F.2d at 68 (on the issue of strength, the court remarked only that “[t]he strength of the mark ... is only moderate”); Polaroid Corporation v. Polarad Electronics Corporation, supra, 287 F.2d at 495 (“Here plaintiff’s mark is a strong one . . . ”).

Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961); see also Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1043 (2d Cir. 1992) (stating that “these factors are appropriately considered when examining the likelihood of confusion between two competing products.”). 13 The court accepts on faith that there ever were two such t-shirts, as the links provided (neither of which is a permalink) only lead to an “authentication page” for POIZON, whi…

See SAC ¶¶ 2-3, 19, 21; [ECF Nos. 36-1, -2].2 With respect to the second element, courts in this Circuit consider eight factors originally identified by the Second Circuit in Polaroid v. Polarad Electronics, 287 F.2d 492, 497 (2d Cir. 1961): (i) the strength of the senior user’s marks; (ii) the similarity of the parties’ marks; (iii) the market proximity of their products; (iv) the likelihood that the senior user will bridge any gap separating the parties’ current markets; (…

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Plaintiff maintains that it need not conduct an analysis of likelihood of confusion under the factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), the reason being that “declaratory judgment plaintiffs do not have the burden of proving non-infringement.” For this proposition, plaintiff relies on Sam Bernstein L. Firm, PLLC v. Sam, No. 25-cv-0252, 2026 WL 61261 (W.D.N.Y.

Corp., 287 F.2d 492, 495-96 (2d Cir. 1961).

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Corp., 287 F.2d 492, 495 (2d Cir. 1961), which balances a nonexclusive list of eight factors.

With respect to the second element, courts in the Second Circuit consider the factors articulated in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), to determine whether a defendant’s use of plaintiff’s valid mark is likely to cause confusion.

Ltd. v. Nawab, 335 F.3d 141 , 146 (2d Cir. 2003)).11 “The key element of a trademark infringement suit . . . is that there is a likelihood of confusion or, in other words, that numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant’s mark.” Two Hands IP, 563 F. Supp. 3d at 299 (citation and internal quotation marks omitted). “[C]ourts evaluate the likelihood …

Corp., 287 F.2d 492, 495 (2d Cir. 1961) (quoting Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987)).

Corp., 287 F.2d 492, 495 (2d Cir. 1961)).

Courts in the Second Circuit “apply the eight-factor Polaroid test to assess whether a plaintiff has sufficiently pleaded ‘likelihood of confusion.’”16 “The eight factors are: (1) strength of the trademark; (2) similarity between the two marks; (3) proximity of the products and their competitiveness with one another; (4) likelihood the prior owner may ‘bridge the gap’ in the markets for their products; (5) evidence of actual consumer confusion; (6) the defendant's good faith…

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Corp., 287 F.2d 492, 495 (2d Cir. 1961)) (internal citations omitted). “[T]he list of Polaroid factors is not exclusive and the analysis of the factors is not a mechanical process.” Merriam-Webster, Inc. v. Random House, Inc., 35 F.3d 65, 70 (2d Cir. 1994) (internal citations and quotation marks omitted). “[E]ach factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product.” Brennan’s, Inc. v. Bre…

“In considering the likelihood of confusion, courts in this Circuit generally look to the factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961).” Mattel, 2021 WL 765766 , at *6.

Corp., 287 F.2d 492, 495 (2d Cir. 1961)).

Corp., 287 F.2d 492, 495 (2d Cir. 1961); see also Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867 , 871-72 (2d Cir. 1986).

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

The likelihood of confusion between Plaintiff’s and Defendants’ marks can be determined by applying the test in Polaroid which weighs the: “(1) strength of [Plaintiff’s] trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence t…

Corp., 287 F.2d 492, 496 (2d Cir. 1961), and provides factual allegations relevant to these factors, including that: (1) the “Tinifiber” trademark is descriptive of Certicable’s product and thus generic; (2) Certicable disclaimed the “Tinifiber” trademark in its prior registration by seeking to register “Tinifiber by Certicable” (emphasis added); (3) there is no evidence that any consumers have been confused between Certicable’s “Tinifiber” and P2P’s “Nanofiber”; (4) P2P off…

Corp., 287 F.2d 492, 495 (2d Cir. 1961)).

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Corp.: (1) the strength of the plaintiff’s mark; (2) the degree of similarity between the marks; (3) the competitive proximity of the parties’ products in the marketplace; (4) the likelihood that the plaintiff will “bridge the gap” between the products; (5) evidence of actual consumer confusion; (6) whether the defendant acted with bad faith; (7) the quality of defendant’s product; and (8) consumer sophistication ( 287 F.2d 492, 495 (2d Cir. 1961)).

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Corp., 287 F.2d 492, 496 (2d Cir. 1961)).

Corp., 287 F.2d 492, 495 (2d Cir. 1961).

Studio, Inc., 88 F.4th 125 , 135- 36 (2d Cir. 2023), which is analyzed using the factors enumerated by the Second Circuit in Polaroid Co. v. Polarad Electronics Co., 287 F.2d 492, 495 (2d Cir. 1961).

At this second step of the analysis, courts consider the “Polaroid factors” first set forth by Judge Friendly in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), including: “(1) the strength of the mark, (2) the similarity of the two marks, (3) the proximity of the products, (4) actual confusion, (5) the likelihood of plaintiff’s bridging the gap, (6) defendant’s good faith in adopting its mark, (7) the quality of defendant’s products, and (8) t…

Corp., 287 F.2d 492, 495 (2d Cir. 1961); see Monbo v. Nathan, 623 F. Supp. 3d 56 , 119 (E.D.N.Y. 2022) (“a court should focus on the ultimate question of whether consumers are likely to be confused.”).

Likelihood of Confusion from Litvack’s Use of the J/SLIDES Mark “Plaintiff may establish […] likelihood of confusion […] through the eight factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961): the strength of plaintiff’s mark, the degree of similarity between the two marks, the proximity of the parties’ areas of commerce, the likelihood that plaintiff will bridge the gap separating their areas of activity, actual consumer confusi…

Corp., 287 F.2d 492, 495 (2d Cir. 1961), such an examination is unnecessary in counterfeit cases, “because counterfeits, by their very nature, cause confusion.” Coach, Inc. v. Horizon Trading USA Inc., 908 F.Supp. 2d 426, 433 (S.D.N.Y. 2012).

As to the second prong, courts evaluate consumer confusion by balancing the eight factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (“Polaroid”): “(1) the strength of the mark, (2) the degree of similarity between the marks, (3) the competitive proximity of the products, (4) actual confusion, (5) the likelihood plaintiff will bridge the gap, (6) the defendant’s good faith in adopting the mark, (7) the quality of the defendant’s pro…

Corp., 287 F.2d 492 (2d Cir. 1961) (“Polaroid”).