Nikon Inc. v. Ikon Corp. (1993)

We review a district court’s entry of a permanent injunction in a trademark case for abuse of discretion, see Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993), and we review de novo questions of law concerning the district court’s authority to grant the injunction, see County of Seneca v. Cheney, 12 F.3d 8, 11 (2d Cir.1993). 1.

The anti-dilution statute applies to competitors as well as noncompetitors, see Nikon Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir. 1993), and explicitly does not require a plaintiff to demonstrate a likelihood of consumer confusion, see Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 624 (2d Cir.1983).

But, although the proportion of a defendant’s product line that allegedly infringes the plaintiffs products may be relevant to a court’s proximity analysis, see, e.g., Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.1993), the fact that Opalesque’s allegedly infringing products are not its “principal service” cannot, on its own, establish a lack of proximity.

But, although the proportion of a defendant’s 5 product line that allegedly infringes the plaintiff’s products may be relevant to a court’s proximity analysis, see, e.g., Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir. 1993), the fact that Opalesque’s allegedly infringing products are not its “principal service” cannot, on its own, establish a lack of proximity.

See, e.g., Nabisco II, 220 F.3d at 45 ; Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993); Thompson Med.

Moreover, failure to construe the antidilution statutes as reaching competing products may lead to a gap in coverage; the products might be found too far apart to support a finding of likelihood of confusion-(and therefore an infringement action)-yet too close together to permit a finding of dilution. 63 We have already held that New York's antidilution statute applies to "competitors as well as noncompetitors," Nikon Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir. 1993), and w…

We have already held that New York’s antidilution statute applies to “competitors as well as noncompetitors,” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir.1993), and we now so hold under the FTDA. 3.

Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993); Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 825 (Fed.Cir.1992); Esercizio v. Roberts, 944 F.2d 1235, 1242 (6th Cir.1991). 6 .

The Lanham Act 15g Soft Balance Beam CF321-303 5 Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir. 1993); Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 825 (Fed.

See The Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 962 (2d Cir.1996) (considering the appearance of the mark in advertising in determining similarity of marks); Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94-95 (2d Cir.1993) (same); Oreck Corp., 803 F.2d at 171 (considering the presentation of the marks in advertising in determining the similarity of the marks and the defendant’s intent); Sun Banks of Fla., Inc. v. Sun Fed.

See The Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 962 (2d Cir.1996) (considering the appearance of the mark in advertising in determining similarity of marks); Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94-95 (2d Cir.1993) (same); Oreck Corp., 803 F.2d at 171 (considering the presentation of the marks in advertising in determining the similarity of the marks and the defendant's intent); Sun Banks of Fla., Inc. v. Sun Fed.

DISCUSSION A Forced Care ‘We review the scope of a district court’s injunction for abuse of discretion,” Ragin v. Harry Macklowe Real Estate Co., 6 F.3d 898, 909 (2d Cir.1993), which “can be found if the district court relied upon a clearly erroneous finding of fact or incorrectly applied the law.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

DISCUSSION A. Forced Care 13 "We review the scope of a district court's injunction for abuse of discretion," Ragin v. Harry Macklowe Real Estate Co., 6 F.3d 898, 909 (2d Cir.1993), which "can be found if the district court relied upon a clearly erroneous finding of fact or incorrectly applied the law." Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

Bambu Sales, Inc. v. Ozak Trading Inc., 58 F.3d 849, 854 (2d Cir.1995); Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

"Abuse of discretion can be found if the district court relied upon a clearly erroneous finding of fact or incorrectly applied the law." Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993) (citing Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1038 (2d Cir.1992)).

“Abuse of discretion can be found if the district court relied upon a clearly erroneous finding of fact or incorrectly applied the law.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993) (citing Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1038 (2d Cir.1992)).

Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir.1993).

As to the waiver issue, while we have recognized some discretion on the part of district courts to determine whether a waiver of FSIA immunity has occurred in a particular case, see Canadian Overseas Ores Ltd. v. Compania de Acero del Pacifico S.A., 727 F.2d 274, 278 (2d Cir.1984), a review for abuse of discretion yields the same outcome in this case, because "[a]buse of discretion can be found if the district court incorrectly applied the law." Nikon Inc. v. Ikon Corp., 987…

As to the waiver issue, while we have recognized some discretion on the part of district courts to determine whether a waiver of FSIA immunity has occurred in a particular case, see Canadian Overseas Ores Ltd. v. Compania de Acero del Pacifico S.A., 727 F.2d 274, 278 (2d Cir.1984), a review for abuse of discretion yields the same outcome in this case, because “[a]buse of discretion can be found if the district court incorrectly applied the law.” Nikon Inc. v. Ikon Corp., 987…

These eight factors are not exhaustive, nor is any single factor disposi-tive, see Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993). “[T]he evaluation of the Polaroid factors is not a mechanical process where the party with the greatest number of factors weighing in its favor wins.

Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993); Lang v. Retirement Living Publ’g Co., 949 F.2d 576, 580 (2d Cir.1991). 1.

Although “[n]o evidence of actual confusion is required in order to prove a likelihood of confusion,” a factfinder may “infer from the absence of actual confusion that there was also no likelihood of confusion.” Inc. Publishing Corp. v. Manhattan Magazine, Inc., 616 F.Supp. 370, 386 (S.D.N.Y. 1985) (citation and internal quotation marks omitted), ajfd 788 F.2d 3 (2d Cir.1986); accord Nikon, 987 F.2d at 95 (“ ‘Although [evidence of actual confusion] is not necessary to show l…

Although “[n]o evidence of actual confusion is required in order to prove a likelihood of confusion,” a factfinder may “infer from the absence of actual confusion that there was also no likelihood of confusion.” Inc. Publishing Corp. v. Manhattan Magazine, Inc., 616 F.Supp. 370, 386 (S.D.N.Y.1985) (citation and internal quotation marks omitted), aff'd 788 F.2d 3 (2d Cir.1986); accord Nikon, 987 F.2d at 95 (“ ‘Although [evidence of actual confusion] is not necessary to show l…

Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir.1993).

Weighing the factors is more than just counting noses, see Nikon 987 F.2d at 96 (factors are “not a rigid formula”), but the fact that the majority of factors weigh against an injunction is significant.

Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir. 1993). i. Strength of the Mark “[T]he strength of a mark depends ultimately on its distinctiveness, or its origin- indicating quality, in the eyes of the purchasing public.” Savin Corp., 391 F.3d at 457 (alteration in original) (quotation marks omitted).

This factor “turns on the likelihood of whether the senior user will enter the market of the junior user.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.1993).

“The district court has broad discretion as to recall orders which are part of permanent injunctions.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 97 (2d Cir.1993).

State Nat’l Org. for Women v. Terry, 886 F.2d 1339 , 1362 (2d Cir.1989)). 25 A Court has discretion in granting injunctive relief under the Lanham Act, provided that it is not based upon “clearly erroneous finding[s] of fact or incorrectly applied ... law.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993). 121 .

The Court finds that if competing users of “Shamir” and “Shamir Salads” marks were allowed to sell comparable vegetable salads in the same product market United States, “an appreciable number of consumers are likely to be misled or confused about the source of the product in question.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

See, Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489 (2d Cir.2000), cert. denied, 530 U.S. 1262 , 120 S.Ct. 2719 , 147 L.Ed.2d 984 (2000); .Viacom Inc. v. Ingram Enters., 141 F.3d 886 , 891 (8th Cir. 1998); Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir.1993); Mony Life Ins.

New Kayak Pool, 246 F.3d at 185; see also Virgin Enters., 335 F.3d at 146; Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993). 62 .

CONCLUSIONS OF LAW A. Lanharn Act (First cause of action) RFS claims in its First cause of action that “defendants violated the Lanham Act by virtue of their unauthorized use of registered marks (Section 32), their false designation as to the origin of their hotel services (Section 43(a)), and the consequent dilution of the Ramada marks (Section 43(c)).” (Docket No. 27, p. 27; Docket No. 1, ¶¶ 45-55.) “The key issue in [claims under Sections 32 and 43(a)] is whether an appre…

"The key issue in these types of [claims] is whether an appreciable number of consumers are likely to be misled or confused as to the source of the product in question.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993); see also Pl.

Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.1993) (citation omitted).

Indeed, the “key issue in [trademark infringement and false designation of origin] cases is whether an appreciable number of consumers are likely to be misled or confused about the source of the product in question.” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993); see also Rosenthal A.G. v. Ritelite, Ltd., 986 F.Supp. 133, 139 (E.D.N.Y.1997) (“[b]oth [claims of trademark infringement under 15 U.S.C. § 1114 (1) and false desig *412 nation of origin under 15 U.S.C. § …

Nov. 26, 1996) (citing Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993) and Sally Gee, Inc. v. Myra Hogan Inc., 699 F.2d 621, 625-26 (2d Cir.1983)).

Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

A defendant is liable for trademark infringement under the Lanham Act if its mark is likely to confuse the relevant public into believing that its goods or services emanate from the plaintiff, or “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of [defendant] with [plaintiff], or as to the ... sponsorship[ ] or approval of [defendant’s] goods, services, or commercial activities by [plaintiff].” 15 U.S.C. § 11…

Nikon v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.1993).

Co., Inc., 984 F.2d at 575 ) (quotation omitted). “ ‘[T]he more sophisticated and careful the average consumer of a product is, the less likely that similarities in ... trademarks will result in confusion concerning the source of sponsorship of the product.’ ” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.1993) (citation omitted).

Nikon Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

See Versa, 50 F.3d at 200; Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993); General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626 (8th Cir.1987); see also Avrick v. Rockmont Envelope Co., 155 F.2d 568, 572 (10th Cir.1946) (“It is the generally accepted rule that a designation is confusingly similar to a trade-mark if an ordinary prospective purchaser, exercising due care in the circumstances, is likely to regard it as coming from the same source as the trademarked a…

See 15 U.S.C. § 1125 (a); Nikon Inc. v. Ikon Corp., 987 F.2d 91, 93-96 (2d Cir.1993).

Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993).

Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir.1993) (citation omitted). *1346 I shall adhere to the rationale set forth in Nikon and conclude that “unless the junior’s product is inferior, the quality factor does not weigh in favor of the senior user.” Id.

Settling what had been a matter of some dispute, the Second Circuit recently held that Section 368-d “is applicable to competitors as well as non-competitors,” Nikon Inc. v. Ikon Corp., 987 F.2d 91, 96 (2d Cir.1993). 9 III.

Eventually in October of 1991, the FDA approved TO-PROL XL, a trademark search was done, an opinion of counsel was received, a trademark application was filed and the product was launched in January of 1992. (g) Quality of Defendant’s Product Courts have taken two approaches with respect to the quality of the junior user’s product: “(1) an inferior quality product injures the senior user’s reputation because people may think they come from the same source; or (2) a product o…

Nikon, Inc. v. Ikon, Corp., 987 F.2d 91, 95 (2d Cir.1993). “[I]t is certainly proper for the trial judge to infer from the absence of actu *269 al confusion that there was also no likelihood of confusion.” McGregor-Doniger, 599 F.2d at 1136 ; see E.S.