Wright v. New Moda, L.L.C.

Background

Alex Wright, identified in the opinion’s body as Alex B. Wright, originally brought the case through counsel and was representing himself when the court ruled. He sued New Moda, LLC, alleging trademark infringement under the Lanham Act, unfair competition and false designation of origin under the Lanham Act, common-law trademark infringement and unfair competition under New York law, and unjust enrichment. The claims arose from New Moda’s use of its “Defend Paris Rifle Mark,” which Wright alleged infringed his “Defend Brooklyn” trademarks.

New Moda moved for summary judgment, a procedure that allows judgment without a trial when there is no genuine dispute over a fact that could affect the result and the moving party is entitled to judgment under the law. The motion was not opposed. The court had previously directed New Moda to provide Wright with the required notice and documents explaining how to respond. After New Moda filed proof that it had served those materials, Wright still did not respond. The court therefore decided the motion using New Moda’s submissions, while separately examining whether New Moda had met its legal burden.

Trademark priority

The court held that New Moda’s Defend Paris Rifle Mark had a priority date of November 26, 2013. Wright’s applications for the Defend Brooklyn Rifle Mark, the Defend Brooklyn Shield Mark, and the Defend Paris Character Mark were filed after that date, and Wright did not allege that he had filed foreign applications for those marks. He therefore needed evidence that he had used those marks in commerce before November 26, 2013.

The court found that Wright had not produced evidence of the required deliberate and continuous commercial use. The opinion states that Wright could not identify his current sales, provide documents verifying sales, report sales during the first year of claimed use, or provide evidence of sales, advertising, or purchase orders for relevant later years. The court concluded that Wright had not raised a genuine factual dispute showing that those three marks had priority over New Moda’s mark or were entitled to protection against it. The court granted summary judgment dismissing the infringement claims concerning those marks.

The court found that Wright’s Defend Brooklyn Character Mark, registered in 2005, had priority over New Moda’s mark. However, the court still considered whether customers were likely to be confused by the marks.

Likelihood of confusion

The court applied the eight factors commonly used to evaluate likely customer confusion: the strength of the marks, similarity of the marks, proximity and competition between the products, whether the senior user might expand into the other market, actual confusion, the defendant’s good faith, product quality, and customer sophistication.

The court found that the strength factor was neutral. Although the marks were inherently distinctive for clothing, Wright supplied no evidence of consumer recognition, fame, or sales showing acquired distinctiveness. Competitive proximity favored New Moda because, although both parties sold clothing, Wright sold through an online business and a New York clothing boutique while New Moda sold clothing online and limited its products to clothing of French origin or made in France. The expansion factor did not apply because both parties were already in the clothing business. The absence of evidence of actual confusion favored New Moda, as did the lack of evidence that New Moda acted in bad faith or sought to exploit Wright’s goodwill. The parties provided no evidence about product quality or customer sophistication, making those factors neutral.

The similarity factor also favored New Moda for each mark. The words “Defend Brooklyn” and “Defend Paris” shared the word “Defend,” but the court found that customers would likely focus on the different place names and that the marks otherwise had different designs and arrangements. The Shield Mark differed substantially in its shape, design, and word placement. The Rifle Mark presented the closest comparison because both marks included rifles and stylized “Defend” text, but the court found important differences in the rifle images, rifle direction, fonts, text size, and the words “Brooklyn” and “Paris.”

Considering the factors as a whole, the court concluded that there was no likelihood of confusion between Wright’s marks and New Moda’s mark. It therefore granted New Moda summary judgment dismissing Wright’s Lanham Act trademark-infringement claim as to all of Wright’s marks, including the Defend Brooklyn Character Mark that had priority.

Other claims and disposition

The court applied the same reasoning to Wright’s Lanham Act false-designation and unfair-competition claims and to his New York common-law trademark-infringement and unfair-competition claims. It granted New Moda summary judgment dismissing those claims.

The court also granted summary judgment dismissing Wright’s unjust-enrichment claim. Wright had provided no evidence concerning New Moda’s sales or showing that New Moda’s gains came at Wright’s expense. The court further stated that, without a viable underlying claim of illegality, the unjust-enrichment claim had to be dismissed.

Judge John G. Koeltl granted New Moda’s motion for summary judgment, directed the Clerk to enter judgment for New Moda and against Wright, closed all pending motions, and closed the case.