Sterling Drug, Incorporated v. Bayer Ag (1994)

But cf. Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 746 (2d Cir.1994) (remanding case, despite absence of first two Vanity Fair factors, for consideration of effect on United States commerce because plaintiff sought to enjoin foreign uses of mark only insofar as they were likely to reach American consumers rather than seeking to enjoin all foreign uses of mark).

But cf. Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 746 (2d Cir.1994) (remanding case, despite absence of first two Vanity Fair factors, for consideration of effect on United States commerce because plaintiff sought to enjoin foreign uses of mark only insofar as they were likely to reach American consumers rather than seeking to enjoin all foreign uses of mark).

Thus, “[i]n fashioning the injunction, the Court should balanc[e] ... the equities to reach an appropriate result protective of the interests of both parties.” Sterling Drug, 14 F.3d at 747 (internal quotation marks omitted).

See McCarthy § 32:174; see also Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (“Where, as here, the relevant issue is whether consumers mistakenly believe that the senior user’s products actually originate with the junior user, it is appropriate to survey the senior user’s customers.”).

Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 984-85 (11th Cir. 1983) (where district court had entered an injunction ordering defendant not to use trade dress which was “confusingly similar to the trade dress or overall appearance of plaintiff’s Memory Stub check products or is likely to cause confusion therewith…”, remand for “entry of an order which specifically described the acts which are prohibited by the permanent injunction”); Sterling Drug, Inc. v. Bayer AG, 14 …

TRC has not 2 submitted an application for its rabbinical college, and the Village has not taken any 3 action suggesting it would fail to follow the law in processing its application.286 The 4 injunction goes much further than is needed to remedy the injuries that Tartikov 5 actually suffered and that are the subject of this lawsuit. 6 We affirm insofar as the district court enjoined Tartikov from enforcing 7 the 2007 Wetlands and Dormitory Laws,287 but we vacate the majorit…

He contends that because both he and EarthGrains have concurrent rights to the mark, the injunction should be refashioned so as “to reach an appropriate result protective of the interests of both parties.” Id. (quoting Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 747 (2d Cir. 1994)).

This finding was not clearly erroneous. ʺTo be probative, a survey must ʹhave been fairly prepared and its results directed to the relevant issues.ʹʺ Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (quoting Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 118 (2d Cir. 1984)).

“To ,be probative, a survey must ’have been fairly prepared and its results directed to the relevant issues.’” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (quoting Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 118 (2d Cir. 1984)).

We review the scope of the injunction for abuse of discretion.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 744 (2d Cir.1994).

See id. (“While the stringent Vanity Fair test is appropriate when the plaintiff seeks an absolute bar against a corporation’s use of its mark outside our borders, that test is unnecessarily demanding when the plaintiff seeks the more modest goal of limiting foreign uses that reach the United States.”).

The Sterling Drug district court entered a broad injunction against Bayer AG that prohibited it from using the Bayer marks in a wide variety of contexts, even going so far as to enjoin it from using any name with the word “Bayer” even though the German company’s U.S. subsidiary was named “Bayer USA.” See 14 F.3d at 744-45, 748-50 .

We cannot issue a general injunction against all possible breaches of the law.”); Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 748 (2d Cir.1994) (holding that injunction tracing language of antitrust statute unfairly required plaintiff to “guess—on pain of contempt— at what conduct the [statute] proscribes” and thus imposed “too onerous a burden”); Burton v. City of Belle Glade, 178 F.3d 1175, 1201 (11th Cir.1999) (“As this injunction would do no more than instruct the City…

“Reverse confusion exists when a subsequent user selects a trademark that is likely to cause consumers to believe, erroneously, that the goods marketed by the prior user are produced by the subsequent user.” Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 583 (2d Cir.1991); see also Sterling Drug, 14 F.3d at 741 (“Allowing such confusion claims comports with the dual purposes of the Act — namely, to protect the public from confusion as to the source of goods, a…

Such an injunction would not be “narrowly tailored,” Omega SA v. 375 Canal, LLC, 984 F.3d 244, 259 (2d Cir. 2021) (quoting Guthrie Healthcare System v. ContextMedia, Inc., 826 F.3d 27, 46 (2d Cir. 2016)), as it would “exceed[ ] the . . . infringement upon [Plaintiff’s] rights,” Starter Corp. v. Converse, Inc., 170 F.3d 286, 300 (2d Cir. 1999), and “prohibit generally all unlawful activity,” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 749 (2d Cir. 1994).

Corp. v. Gaze U.S.A., Inc., 295 F.R.D. 18, 24 (E.D.N.Y. 2013) (“‘A prior user may [] obtain cancellation of a second user’s registration of a mark on any ground that would have prevented registration of the trademark in the first instance.’ See, e.g., 15 U.S.C. § 1052 (d) (listing confusion with a previously used mark as one such ground for refusal”)); Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 743 (2d Cir. 1994) (same).

Johnson & Son, Inc., 241 F.3d at 241 (citing Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 748 (2d Cir. 1994)).

“In a reverse confusion case, ‘the consumers relevant to [this] inquiry are those who purchase [the plaintiff’s] products.’” Id. (quoting Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 742 (2d Cir. 1994) (alterations in original)).

Such an injunction would not be “narrowly tailored,” Omega SA v. 375 Canal, LLC, 984 F.3d 244, 259 (2d Cir. 2021) (quoting Guthrie Healthcare Sys. v. ContextMedia, Inc., 826 F.3d 27, 46 (2d Cir. 2016)), as it would “exceed[] the . . . infringement upon [Plaintiff’s] rights,” Starter Corp. v. Converse, Inc., 170 F.3d 286, 300 (2d Cir. 1999), and “prohibit generally all unlawful activity,” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 749 (2d Cir. 1994).

Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 , 984–85 (11th Cir. 1983); Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 748 (2d Cir. 1994); Boost Oxygen, LLC v. Oxygen Plus, Inc., 477 F. Supp. 3d 871 , 885 (D.

Such an injunction would not be “narrowly tailored,” Omega SA v. 375 Canal, LLC, 984 F.3d 244 , 259 (2d Cir. 2021) (quoting Guthrie Healthcare System v. ContextMedia, Inc., 826 F.3d 27, 46 (2d Cir. 2016)), as it would “exceed[] the . . . infringement upon [Plaintiff’s] rights,” Starter Corp. v. Converse, Inc., 170 F.3d 286, 300 (2d Cir. 1999), and “prohibit generally all unlawful activity,” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 749 (2d Cir. 1994).

Therefore, “[a] motion to dismiss will be granted for failure to plead likelihood of confusion only if no reasonable factfinder could find a likelihood of confusion on any set of facts that plaintiff could prove.” LBF Travel, Inc., 2014 WL 5671853 , at *8 (internal quotation marks and citation omitted). “[A] district court must resolve the issue of likelihood of confusion ‘not by reference to a registration determination by the [US]PTO but by application of the multi-factor …

To be sure, “Congress did not intend the Lanham Act to be used as a sword to eviscerate completely a foreign corporation’s foreign trademark.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 746 (2d Cir. 1994), “In today's economy, some ‘spill-over’ advertising from one nation to another is inevitable.” AdeCarthy on Trademarks § 29:7.

A survey is probative and may be admitted into evidence to establish actual confusion if it is “fairly prepared and its results directed to relevant issues.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (quoting Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112, 118 (2d Cir. 1984)).

Forward confusion occurs where the junior user uses the mark to sell goods or services “based on the misperception that they originate with the senior user.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 740 (2d Cir. 1994).

Inc. v. Bayer AG, 14 F.3d 733, 746 (2d Cir. 1994).

A permanent injunction should be “no broader than necessary to cure the effects of the harm caused.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 750 (2d Cir. 1994) (internal quotation marks omitted).

It explained that the comity analysis must be particularly robust when a defendant’s foreign exploitation of its own trademark rights is at issue because “it is quite a different thing for the holder of rights in a mark under [another country’s] law to be ordered to refrain from uses of that mark protected by [that country’s] law.” Id. (quoting Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 746-47 (2d Cir. 1994)).

In determining whether a plaintiff has proved reverse confusion, courts look to the familiar “Polaroid factors.” See, e.g., Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 740 (2d Cir. 1994); J.T.

In a reverse-confusion case, “the consumers relevant to [this] inquiry are those who purchase [the plaintiff’s] products.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 742 (2d Cir. 1994).

“In fashioning the injunction, the 19 Court should balance . . . the equities to reach an appropriate result protective of the interests of both parties.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 747 (2d Cir. 1994) (quotations and alteration omitted).

Where, as here! a junior user is alleged to be selling its products as if they came from the senior user, “the relevant market consists of the consumers of the junior user’s products.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994).

Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 750 (2d Cir. 1994) (quoting George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1542 (2d Cir. 1992)).

In a reverse confusion case, “the consumers relevant to [this] inquiry are those who purchase [the plaintiffs] products.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 742 (2d Cir.1994); accord Denimafia, 2014 WL 814532 , at *24.

Realty, Inc., 317 F.3d 209 , 220 (2d Cir.2003) (same); Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 750 (2d Cir.1994) (“[T]he Lanham Act demands that injunctive relief be no broader than necessary to cure the effects of the harm caused.”) (citation omitted).

“In fashioning the injunction, the Court should balanc[e] ... the equities to reach an appropriate result protective of the interests of both parties.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 747 (2d Cir.1994) (alterations in original) (internal quotation marks omitted).

See, e.g., 15 U.S.C. § 1052 (d) (listing confusion with a previously used mark as one such ground for initial refusal); Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 743 (2d Cir.1994) (“If a second user’s use of the mark creates a likelihood of confusion, a prior user can obtain a cancellation of the second user’s registration.”).

Inc. v. Bayer AG, 14 F.3d 733, 746 (2d Cir.1994) (instructing district court, on remand, to craft injunction that prohibits only those uses of mark abroad that have substantial effect on U.S. commerce).

Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 747 (2d Cir.1994) (quoting Soltex Polymer Corp. v. Fortex Indus., Inc., 832 F.2d 1325, 1330 (2d Cir.1987)) (emphasis omitted). .

Realty, Inc., 317 F.3d 209 , 218 (2d Cir.2003) (upholding district court's “weighing the actual confusion factor in favor of [the senior user's] [b]rand” where “[a]lthough no customer bought ajar of the Defendants’ sauce thinking it was made by the Plaintiff (normal confusion), in a few instances, a customer of the Defendants' restaurant bought, or at least saw, a jar of the Plaintiff's sauce, thinking it came from the Defendants (reverse confusion)”); Sterling Drug, Inc. v.…

As one court noted, Hartford Fire’s holding is not necessarily that expansive. [See ] In re Maxwell Commc’n Corp. plc, 93 F.3d 1036, 1050 (2d Cir.1996) (“As we have previously noted, Hartford Fire recognized that ‘other concerns’ might be implicated if the context were different”) (citing Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 747 (2d Cir.1994)). [Hence, courts] decline[] to construe Hartford Fire’s conflict analysis as a prerequisite to the application of comity prin…

See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 750 (2d Cir. 1994) ("But because Bayer AG is a German corporation with a valid trademark in the 'Bayer' mark under German law, its legitimate interests in normal corporate activities such as raising capital and communicating with subsidiaries deserve some accommodation in the United States.").

Id. at 738 (finding that “defendants began to make extensive use of the ‘Bayer’ name and mark”).

Id. at 738 (finding that “defendants began to make extensive use of the ‘Bayer’ name and mark”).

In re Maxwell Commc’n Corp. plc, 93 F.3d 1036, 1050 (2d Cir.1996) (“As we have previously noted, Hartford Fire recognized that ‘other concerns’ might be implicated if the context were different.” (citing Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 747 (2d Cir.1994))).

In order to be probative of the issue of actual confusion, the Simonson consumer survey, must “have been fairly prepared and its results directed to the relevant issues.” See Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir.1994).

(See Docket Entry 218 at 12-15.) The Court has already entered two preliminary injunctions against the Syosset Defendants: First, that they are enjoined from using the words “Trattoria Impazzire” in relation to the Staten Island Location; and Second, that they place a sign in the door of the Syosset Location reading: “WE ARE NOT AFFILIATED WITH PATSY’S ITALIAN RESTAURANT LOCATED AT 236 WEST 56TH STREET, NEW YORK, NY.” The Court is persuaded that these steps will sufficiently…

If the second user’s use of the mark creates a likelihood of confusion, a prior user can obtain a cancellation of the second user’s registration.” Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 743 (2d Cir.1994) (citing Ford Motor Co. v. Ford, 59 C.C.P.A. 1124 , 462 F.2d 1405 (1972), cert. denied, 409 U.S. 1109 , 93 S.Ct. 910 , 34 L.Ed.2d 690 (1973) (canceling “Ford Records” registration because of likelihood of confusion with Ford Motor Company’s trademark “Ford”); Southern …

While it is appropriate to “accord weight” to an initial determination of a PTO examiner, see Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 , 148 n. 11 (2d Cir.1997), Arrow Fastener Co. v. Stanley Works, 59 F.3d 384, 392 (2d Cir.1995), a district court must resolve the issue of likelihood of confusion "not by reference to a registration determination by the PTO but by application of the multi-factor balancing test set forth in Polaroid." Sterling Drug, Inc. v. Bayer…

See, e.g., Allard Enters., Inc. v. Advanced Programming Resources, Inc., 249 F.3d 564, 575 (6th Cir.2001) (“In a more straightforward case in which a senior user holds a federal registration subject to limited concurrent rights of a junior user, permitting some form of internet use seems necessary; otherwise, if two parties have concurrent rights to the same mark in distinct geographical areas, neither party would ever be allowed any use of the internet”) (emphases added); S…