Memorandum of Law in Opposition (Trademark)
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF [STATE] 
	
[Name of plaintiff],	Index No.: [Number]	
Plaintiff,		
-against-		
[Name of defendant],		
Defendant.	[Date]	
	
DEFENDANT'S MEMORANDUM IN OPPOSITION TO PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION 
INTRODUCTION
This memorandum is submitted in opposition to plaintiff's motion for a preliminary injunction. In an obvious attempt to "stretch" the facts to meet its needs, plaintiff's moving papers are misleading, if not inaccurate. As set forth below, the evidence adduced to date is simply insufficient to enjoin defendant from using "[Title]" as part of the name of its new [Type of product or service], [Description of product].
While plaintiff asserts ownership rights in [Title] which it claims will be infringed and diluted by defendant's use of [New product] on [Products or services], it is clear that plaintiff's rights in [Title] are limited to [Specific products] and do not extend to [Products or services] or to other distinguishable uses of [Title] marks. Plaintiff has not demonstrated a likelihood of success on the merits or that it will suffer irreparable harm. Plaintiff's motion for a preliminary injunction must, therefore, be denied.
THE FACTS
Plaintiff
Plaintiff is currently using [Title] almost exclusively on its line of [Products] with [Specific product] comprising an overwhelming majority of its sales. Plaintiff has not used [Title] on products other than [Specific items] and have not shipped any products under its purported [Title] trademark since fiscal year [Date], nor does it have any plans to resume such use. Moreover, use of [Title] was necessarily of short duration, since it did not commence until [Date] [Cite reference].
The moving papers are misleading in that they include [Title] and [Title] catalog pages [Cite reference and exhibits] even though they were published in [Year] and are not in current use and have not been used for some time. While the moving papers define "[Title]" as including [Title] and [Title], this definition is also misleading in that it combines a mark which is in current use with a mark that is not in use and has been practically, if not legally, abandoned. The moving papers also define [Title] to include "[Title]" phrases which plaintiff has from time to time used (and for which it has filed applications for trademark registration), but these purported trademarks do not augment plaintiff's rights. First, none were pleaded in the complaint, which was limited to [Title] and [Title]. Second, as is apparent to all but plaintiff, [Title] is used in a descriptive rather than a trademark sense. For example, in "[Title]," "[Title]" refers to [Title] while [Title] refers to the dictionary definition of the word. Similarly, in "[Title]" and "[Title]," "[Title]" refers not to [Title] but to the amazing, astonishing or surprising result achieved by the [Title] [Product or service].
There is no evidence that plaintiff's short-lived efforts to extend the [Title] franchise from [Products or services] and to [Title] "[Description of product or service]" ever left any impression in the minds of the trade, let alone consumers. There is no evidence of any advertising of, and no sales figures for, these items. Even then, it is a misnomer to refer to the [Description of product or service] depicted in [Cite exhibit] to [Name of person]'s declaration as "[Product or service]." 
Missing from plaintiff's facts is any survey, whether conducted in connection with this litigation or otherwise, which suggests that plaintiff's rights extend beyond the specific mark [Title] or beyond [Product or service], let alone a survey which evidences the likelihood of confusion and dilution which plaintiffs claim to exist.
Thus, the issue on this motion is whether [Title], when used on defendant’s [Product or service] made from [Description of product materials], so resembles [Title], as used on [Product or service], as to be likely to cause confusion or to dilute the mark’s alleged distinctiveness. Unless plaintiff is somehow entitled to monopolize the dictionary term “[Title]” which describes the [Title] produced by wearing the [Specified] products, the answer seems clearly to be “no.”

Defendant
The facts present a tale of good faith adoption of [Title] as a trademark for defendant’s new line of [Product or service]. [Name of person], defendant’s Chief Executive Officer, has been in the [Product or service] business since [Year], involved with both men’s and women’s [Product or service], particularly [Specific product or service]. Defendant is principally engaged in the marketing and sale of [Product or service], with offices located in [City] and [State]. Among its brands are [Name of brand], which it owns, and [Name of brand], which it licenses.
In [Date], [Name of person] was approached by [Name of person], a licensing agent, who offered defendant a patent license for a [Product or service], which the licensor called [Name of product or service]. In [Date], defendant entered into a license agreement with [Name of person] principal, [Name of licensing agent]. While the license agreement permitted defendant to use the [Name of product or service], that name did not seem appropriate. [Name of person] thought of the name [Title] after noticing a product called [Title] in a [City] drug store. The name [Title] seemed a natural because the effect which the [Product or service] produced upon the wearer was a “[Title].” While plaintiff accused [Name of person] of conveniently fabricating his explanation as to seeing a [Title] product in [Name of city], defendant has been able to obtain evidence confirming the existence of such a product [Cite reference and exhibit]. Thus, plaintiff's allegations of bad faith adoption of [Title] are as hollow as their claims of use of [Title] and [Title] for [Product or service].
While plaintiff hurls inappropriate accusations on the competence of defendant’s trademark counsel and the truthfulness of [Name of person], there is no proper basis for either. At the time [Name of person] conceived of [Title], he was familiar with [Title] [Product or service], although he was not and is not now aware of any [Title] products. He had neither the intention nor the desire to trade upon the good will of the [Title] mark. Nor did it occur to the defendant at the time [Title] was selected that there could be any confusion between [Title] and [Title], and no one at defendant now believes that there is any potential for confusion.
Before the final decision was made to use [Title], defendant’s trademark attorneys conducted a search that revealed numerous [Title] marks registered for [Products or services], including [Title] and the other marks registered by plaintiff. Copies of some of the registrations uncovered by this search are appended to the Affidavit of [Name of person]. Based upon this search, the attorneys advised that [Title] appeared available for defendant’s proposed use. Defendant has since obtained evidence of other third party uses of “[Title]” marks, which is submitted with the affidavit of [Name of person]. These third party uses and registrations of “[Title]” marks necessarily limit the scope of protection to which plaintiff's [Title] mark is entitled. 
After defendant decided upon the [Title] name, it issued a press release informing the trade of its new product. While a writer for the [Name of publication] referred to [Title] as “sort of a [Title] for [Product or service],” she did not interview the defendant. While defendant’s attorneys attributed such a reference to [Name of person], he was mistaken since [Name of person] stated in his deposition [List page numbers] and confirmed in his affidavit that he never referred to [Title] in connection with [Title]. The press reports on the [Title] product led to television coverage. Only one of these evidenced anything which could arguably be called confusion, namely, a statement by [Name of person] that “the people who make the [Title] are making [Title] for men.” In this statement, [Name of person] was mistaken both about the [Title] maker and about the sex of the people for whom it is being made. Defendant had nothing to do with [Name of person]’s statement. Unfortunately, it is not uncommon for the press and the media to make such mistakes, as illustrated by an article about defendant in the [Date] [Name of publication] referring to plaintiff's [Title] as [Title].
Defendant has not decided whether the [Title] product will be sold as part of the [Name of defendant] line or as a separate line, but it is defendant’s present expectation that it will be presented to the public as “[Name of defendant] With The [Title] System” or “[Title] by [Name of defendant].” This use of other marks with [Title] will further reduce any likelihood that purchasers will believe this product to be connected with [Title] [Product or service].
Defendant’s [Product or service] is typically shown to the trade at the semi-annual [Product or service] show in [City] and at the annual [Product or service] Week in [City]. The [Title] product was displayed this fall at the [Product or service] show and during [City] [Product or service] Week. No [Product or service] of any kind was shown at the [Product or service] Show or the annual [Product or service] Week. Defendant’s [Product or service], including the [Title] product, is sold by defendant’s sales force to [Product or service] buyers and is displayed in [Product or service] departments of the retailers which carry it. [Title] [Product or service], on the other hand, are sold to [Product or service] buyers and displayed in [Product or service] departments of retail stores. 
Even though the publicity for the [Title] product has been seen by many [Product or service] buyers and the product itself has been displayed at both a [Product or service] Show and at [City] [Product or service] Week, no buyer or retailer or anyone else in the trade or member of the public has ever asked if there was any connection between this product and [Title] [Product or service], let alone indicated they made any association between the two. If any appreciable number made such an association, it would have come to defendant’s attention. Such absence of actual confusion demonstrates the absence of a likelihood of confusion. The impact of this evidence is not overcome by the four e-mails submitted by plaintiff as evidence of confusion.
Based upon [Name of person]’s experience in the field, it is his opinion that women exercise care in the selection of [Product or service] and would exercise particular care in the selection of the [Title] product. Because women are discriminating in purchasing [Product or service], they are likely to pay closer attention to the purchasing transaction and to be able to distinguish between [Title] [Product or service] and [Title] [Product or service].
If defendant is preliminarily enjoined from using [Title], defendant will be damaged in three ways. First, it will have lost the benefit of the substantial efforts that it put into publicizing the brand. Second, a change of the name after it has been widely announced will cause the trade to question both the stability of the brand and the merits of the product upon which it is used. Third, since the result that the [Product or service] gives to the wearer is truly a “[Title],” “[Title]” is the best word to use to convey those results to the trade and to prospective purchasers.

ARGUMENT

POINT ONE

PLAINTIFF IS NOT ENTITLED TO A PRELIMINARY 
INJUNCTION UNDER THE CLAIM OF TRADEMARK 
INFRINGEMENT AND DILUTION
Plaintiff set forth in its memorandum the Second Circuit standard for obtaining a preliminary injunction. Defendant submits that plaintiff has not sustained its burden under this standard. Their motion for preliminary injunction should be denied.

A.	Plaintiff Has Not Shown a Likelihood of Success
on the Claim for Trademark Infringement
In order to prevail on its claim for trademark infringement, plaintiff must show that an appreciable segment of the public, upon seeing defendant’s [Title] [Product or service], is likely to believe those [Product or service] to come from the maker of [Title] [Product or service]. A probability, and not a mere possibility of confusion, must exist. Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d 739, 743 (2d Cir. 1998). This, in turn, requires an analysis of the eight factors set forth in Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492, 495 (2d Cir. 1961). Defendant submits that application of these factors to the record on this motion will demonstrate that plaintiff is not likely to succeed in establishing its claim of trademark infringement.

1.	The Strength of the [Title] Mark Is Limited to [Product or service]
Plaintiff's mark consists of a laudatory word [Title] combined with a generic product name [Product or service]. While plaintiff's ownership of federal registrations may render its marks strong and therefore entitled to protection, the same marks can be weak for purposes of assessing the scope of protection to which the marks are entitled. Thus, in Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993), the court found the mark PARENTS for magazines to be strong to the extent that it was the subject of an incontestable registration, yet not strong enough in the marketplace to preclude use of PARENTS DIGEST for a competing magazine. See, also, W.W.W. Pharmaceutical Co. v. The Gillette Co., 984 F.2d 567 (2d Cir. 1993) (incontestable registered trademark for SPORTSTICK lip balm not infringed by the defendant’s SPORT STICK deodorant).
Thus, even if the [Title] mark can be viewed as suggestive, the laudatory nature of this term bears on the strength of the mark and the scope of protection to which it is entitled. See, Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 581 (2d Cir. 1991) (although a suggestive mark is entitled to registration without evidence of secondary meaning, suggestiveness is not necessarily dispositive of the issue of the strength of the mark); Procter & Gamble Company v. Johnson & Johnson Incorporated, 485 F. Supp 1185, 1196 (S.D.N.Y. 1979) (in some respects, the SURE mark shares the features of laudatory marks like “best,” “outstanding” or “supreme,” which are entitled to little or no protection); E. S. Originals Inc v. The Stride Rite Corporation, 656 F. Supp. 484, 487-488 (S.D.N.Y. 1987) (Although the Court concludes that the "ZIPS" mark has acquired a sufficient degree of distinctiveness among consumers to entitle the mark to some protection, the strength of "ZIPS" alone does not bar ESO from using the "ZIP 'N GO" mark). Plaintiffs’ laudatory [Title] mark is in marked contrast to the mark HONEST DINER at issue in The Diner, Inc. v. Dream Kitchen, Inc., 37 USPQ2d 1029 (S.D.N.Y. 1995), cited throughout plaintiffs’ memorandum of law, where HONEST had no meaning as used in connection with a bakery.
Plaintiff seeks to broaden its rights in the [Title] mark by claiming ownership of a family of [Title] marks. This family of marks is more fictitious than real since two of the marks ([Title] for [Product or service] and [Title] for [Product or service]) have not been used for several years and the other marks ([Title] and [Title]) use the word [Title] in its dictionary sense and add little, if anything, to the association of [Title] as a trademark exclusively with plaintiff. In Pfizer Inc. v. Astra Pharmaceutical Products, Inc., 858 F. Supp. 1305, 1328 (S.D.N.Y. 1994), the court recognized the distinction between the “Mc” family of marks owned by McDonald’s (cases relied on by plaintiff) and attempts to claim a family of marks by other companies:

Judge Walker, in concluding that the McDonald's restaurant chain owned a family of marks using the formatives "Mc" and "Mac" followed by a generic food item, held that the existence of a family of marks turns "on the distinctiveness of the common formative component and other factors, including the extent of the family's use, advertising promotion, and its inclusion in a number of registered and unregistered marks owned by a single party."… Based on that standard, Pfizer does not have a family of XL marks.

Here, too, plaintiff has failed to present any evidence that the public is likely to perceive a “[Title]” family of marks associated with plaintiff's.
Third party uses and registrations of “[Title]” marks also have a bearing on the strength of the [Title]. In Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d at 744, the court relied on evidence of a trademark search revealing extensive use of the words "street" and "wise" in names registered by manufacturers of other products. Such third party use of the words "street" and "wise" were held to weaken the Streetwise mark. Here, defendant has submitted evidence of third party registrations that were disclosed in its initial search of [Title], as well as evidence of use of certain “[Title]” marks. In Essence Communications, Inc. v. Singh Industries, Inc., 703 F. Supp. 261, 266 (S.D.N.Y. 1988), the court relied on a trademark search conducted by the defendants showing pending applications or registrations of marks employing the word "essence" for a variety of products, including cosmetic and toilet preparations, skin care products, hair care products, perfumes, body lotions, and jewelry and precious stones, among others. Many of these products were the types of goods featured in the plaintiff’s [Name of publication]. The search also revealed many companies doing business under the name [Name of publication]. The court concluded that such third-party registrations and use diluted the strength of the trademark. 
See, also, Lang v. Retirement Living Publishing Co., Inc., 949 F.2d at 581 (extensive third party use of the words "Choice" and "Choices" weighs against a finding that the plaintiff’s trade name is strong); Western Publishing Company, Inc. v. Rose Art Industries, Inc., 910 F.2d 57, 61 (2d Cir. 1990) (the origin-indicating quality of the mark is undercut by other parties' registrations of trademarks incorporating the term "Golden"); Procter & Gamble Company v. Johnson & Johnson Incorporated, 485 F. Supp at 1197 (while third party registrations of marks containing the word SURE are not considered evidence of use of the marks in commerce, they do shed light on the degree of originality inherent in the mark).

2.	The Marks at Issue Share a Laudatory Term
The marks at issue share only the laudatory term [Title]. Consideration of trademark similarity does not end here. Rather, the court should consider how the marks are perceived within the context of the realities of the marketplace. Nabisco, Inc. v. Warner-Lambert Company, 220 F.3d 43, 47 (2d Cir. 1999) (inquiry does not end with a comparison of the marks themselves, but rather in appraising the overall impression created by the context in which they are found and considering the totality of factors that could cause confusion among prospective purchasers). Just as in Nabisco, where the presence of the defendant’s DENTYNE mark was able to dispel any likelihood of confusion resulting from common use of ICE in connection with breath-freshening chewing gums, here too defendant will likely be using its [Title] mark in combination with either the [Name of brand] or [Name of brand] mark. Such presentation of the [Title] mark in the marketplace will diminish any likelihood of confusion in the marketplace.
Moreover, where the only common element in the marks at issue is a laudatory term, this will narrow the scope of protection for plaintiff's mark. See, The Orb Factory, Ltd. v. Design Science Toys, Ltd., 1999 U.S. Dist. Lexis 4382 at 27 (S.D.N.Y. 1999) (where the only common element in two marks is descriptive, suggestive or laudatory, the scope of protection afforded the registered mark may be circumscribed); Procter & Gamble Company v. Johnson & Johnson Incorporated, 485 F. Supp. at 1197 (when common words are involved, the degree of difference rather than the degree of similarity is likely to be more noticeable); Exquisite Form Industries, Inc. v. Exquisite Fabrics of London, 378 F. Supp. 403, 410 (S.D.N.Y. 1974) (as a laudatory term, exquisite is not entitled to trademark protection, particularly in view of the extent to which it is used by third parties). 
Plaintiff asks the court to dissect the marks at issue and to concentrate on the common term [Title] as the dominant feature of the mark. They rely on The Morningside Group Limited v. Morningside Capital Group L.L.C., 182 F.3d 133, 140 n.4 (2d Cir. 1999), a case where the court found the word MORNINGSIDE to be arbitrary as used in connection with financial services and further found that the plaintiff and its affiliates were frequently referred to by the single word MORNINGSIDE. Here, the word [Title] is a laudatory term and there is no evidence that anyone refers to plaintiff or its products by the single word [Title]. Thus, the mere presence of the word [Title] in both marks does not establish confusing similarity. See, E. S. Originals Inc v. The Stride Rite Corporation, 656 F. Supp. at 489 (The fact that the "ZIPS" and "ZIP 'N GO" marks share a common word does not necessarily render them confusingly similar, as similarity in and of itself is not dispositive; the crucial inquiry is whether the similarity is likely to cause confusion, and, when assessing similarity, the court must look at the full name of each party's product, and may take into account the fact that the marks are visibly and audibly distinguishable); La Cibeles, Inc. v. Adipar, Ltd., 2000 U.S. Dist. Lexis 12676 at 20 (S.D.N.Y. 2000) (the marks "Petit Cheri" and "Petite Cherie" bore a resemblance, but the addition of the 'e' in both words and the pronunciation of the 't' engendered by defendant's use of the feminine conjugation created a significant difference between the marks). 
Thus, when the parties’ marks are viewed in their entireties within the context of the realities of the marketplace, there are meaningful differences that make this factor favor defendant.

3.	The Products at Issue Are Different
In assessing product similarity, the court should consider the nature of the products themselves and the structure of the relevant markets. Here, the record shows that the products do not compete with each other. They are sold to different store buyers, are used differently ([Product or service] vs. [Product or service] and [Product or service]) and are sold in different parts of stores. Such facts suggest that confusion is not likely to occur. See, Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 965 (2d Cir. 1981) (rejecting per se rule that likelihood of confusion must be found even where marks are identical (BRAVO vs. BRAVO) and the products proximate (crackers vs. chips) but sold in different parts of the same store); Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d at 745 (two laminated street maps were found to be different products because they were folded differently); E. S. Originals Inc v. The Stride Rite Corporation, 656 F. Supp. at 489 (where sneakers are distributed through dissimilar channels of trade, and the marketing approaches for the two products differ markedly, these factors tend to minimize any possibility of confusion).

4.	Plaintiff Is Not Likely to Bridge the Gap
Plaintiff contends that it has already bridged the gap with the sale of [Title] [Product or service] and [Title] [Product or service]. It should be noted, however, that plaintiff's purported bridging of the gap occurred several years ago. These products are no longer on sale and plaintiff has no plans to resume such use in the foreseeable future. Consequently, plaintiff is not again likely to bridge the gap between [Product or service] and [Product or service], and this factor therefore favors defendant.

5.	There Is No Probative or Admissible Evidence of Actual Confusion
Plaintiff filed this action in August of this year and have conducted expedited discovery for a number of months. They have submitted four e-mails that they characterize as evidence of actual confusion. These e-mails are not admissible evidence and have no probative value. Plaintiff's reliance on AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1544 (11th Cir. 1987) is yet another example of the misleading nature of their arguments. In AmBrit, the plaintiff had introduced the testimony of four witnesses who testified to actual confusion during a purchase transaction, coupled with a confusion survey. This differs markedly from the e-mails introduced on this motion.
Not only are these e-mails de minimis in quantity, their is also no way to determine their authenticity. See, ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345, 353 (S.D.N.Y. 2000) (two e-mails inquiring as to whether the plaintiff was associated with the defendant and offering no evidence that these individuals were the plaintiff's customers or potential customers for whom the Lanham Act was designed to protect did not constitute evidence of actual confusion); The Trustees for Columbia University of the City of New York v. Columbia/HCA Healthcare Corporation, 964 F. Supp. 733 (S.D.N.Y. 1997) (the relevance of this type of evidence is lessened by the small number of people who allegedly expressed confusion, while there is also a difference between isolated expressions of momentary confusion and confusion that leads to actual purchasing decisions); C.L.A.S.S. Promotions, Inc v. D.S. Magazines, Inc., 753 F.2d 14, 18 (2d Cir. 1985) (instances consisting of four isolated written communications, two from advertising agencies and two from magazine subscribers, were not probative evidence of actual confusion); Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999, 1006 (2d Cir. 1983) (the absence of confusion to date is a strong indicator that likelihood of confusion is minimal); La Cibeles, Inc. v. Adipar, Ltd., 2000 U.S. Dist. Lexis 12676 at 30 (the relevance of this evidence of actual confusion is negligible given the small number of people who allegedly expressed confusion and the absence of a valid statistical sample).
Given the absence of any probative evidence of actual confusion, plaintiff could have assisted the court by conducting a confusion survey during the months that it has been conducting expedited discovery. See, Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 117 (2d Cir. 1984) (plaintiff's failure to offer a survey showing the existence of confusion is evidence that the likelihood of confusion cannot be shown); Starter Corporation v. Converse, Inc., 1996 U.S. Dist. LEXIS 17892 (S.D.N.Y. 1996) (the defendant cannot claim insufficient time as an excuse not to conduct an effective survey); Mushroom Makers Inc. v. R.G. Barry Corporation, 441 F. Supp. 1220, 1231 (S.D.N.Y. 1977), affirmed 580 F.2d 44, 47 (2d Cir. 1978) (defendant is a substantial corporation with the means to have undertaken either a survey or an investigation to establish instances of actual consumer confusion); Information Clearinghouse, Inc. v. Find Magazine, 492 F. Supp. 147, 159 n.35 (S.D.N.Y. 1980) (even a survey prepared in anticipation of litigation could have been probative); E. S. Originals Inc v. The Stride Rite Corporation, 656 F. Supp. at 490 (it is significant that Stride Rite did not undertake a consumer survey, a failure which strongly suggests that a likelihood of confusion cannot be shown).
In contrast, defendant has already shown its [Title] [Product or service] to the public in a way that created an opportunity for confusion to arise with [Title] [Product or service], if such confusion were likely to occur. Even though the publicity for the [Title] product has been seen by many [Product or service] buyers and the product itself has been displayed at both a [Product or service] Show and at [City] [Product or service] Week, no buyer or retailer or anyone else in the trade or member of the public has ever asked if there was any connection between this product and [Title], let alone indicated they made any association between the two. If any appreciable number made such an association, it would have come to defendant’s attention. Such absence of actual confusion demonstrates the absence of a likelihood of confusion.

6.	There Is No Evidence that Defendant Acted in Bad Faith
Plaintiff has attempted to paint defendant’s principal as an intentional infringer seeking to exploit the popularity of the [Title] mark. While they questioned the testimony that the decision to select [Title] was prompted by a [Title] “[Product or service]” product (which was incorrectly recalled in the deposition as a [Title] product) that was seen in [City], plaintiff's skepticism at this explanation is belied by the existence of this product. Indeed, the conduct exhibited by defendant in this matter differs markedly from the decisions relied on by plaintiff. For example, in Mobil Oil Corporation v. Pegasus Petroleum Corporation, 818 F.2d 254 (2d Cir. 1987), the court criticized the testimony of the defendant’s owner that he had adopted a Pegasus design without having the plaintiff’s Flying Horse mark in mind. In Charles of the Ritz Group Ltd. v. Importers & Distributors, Inc., 832 F.2d 1317, 1322 (2d Cir. 1987) the defendant was found to have intentionally copied the overall image, style and appearance of the plaintiff’s Opium perfume. In Paddington Corp. v. Attiki Importers & Distributors, Inc., 996 F.2d 577, 586-587 (2d Cir. 1993) the court found bad faith where the defendant was a former distributor of the plaintiff’s liquor and intentionally copied the plaintiff’s trade dress on a competing liquor product. Thus, the finding of bad faith in those cases was based on a combination of prior knowledge of the plaintiff’s product and intentional copying of the trade dress of the plaintiff’s product.
Here, [Name of person] does not deny knowledge of plaintiff's [Title] mark. It never occurred to him that his use of [Title] as a trademark for [Product or service] would conflict with plaintiff's rights in [Title]. While defendant has admitted prior knowledge of [Title] foundation [Product or service], there is no evidence that defendant intentionally or unintentionally copied either plaintiff's mark or its trade dress.
Plaintiff also criticized defendant for not conducting a “full” trademark search prior to applying to register [Title], relying on International Class Yacht Racing Association v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749 (2d Cir. 1996). In Streetwise Maps, Inc. v. Vandam, Inc., 159 F.3d at 745-746, the court distinguished this decision, where the defendant adopted the mark STREETSMART for tour maps with knowledge of the plaintiff’s competing STREETWISE maps. The defendant’s belief that its mark was distinguishable from STREETWISE did not give rise to bad faith even without having performed a trademark search. Here too the defendant adopted its mark with the goal of selling and promoting its product and not to ride on the plaintiff's coattails, and both defendant and its attorneys were fully aware of plaintiff's trademarks. Defendant did not fail to disclose information to its attorney in order to obtain a “favorable” opinion as to availability.
Similarly, in Mushroom Makers Inc. v. R.G. Barry Corporation, 441 F. Supp. at 1229-1230, the court found that the junior user of the MUSHROOMS mark had acted in good faith even though it had knowledge of a prior registration of the mark by the senior user and its federal trademark application had been rejected on the basis of this prior registration. See, also, Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 483 (2d Cir. 1996) ("full knowledge of a prior use of a protected mark is not necessarily inconsistent with a finding of good faith, particularly where the alleged infringer is unsure as to the scope of protection"); ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d at 353 (because a junior user has prior knowledge of a senior user's trademark, an inference of bad faith does not necessarily arise, and such situation may be entirely consistent with good faith); E. S. Originals Inc v. The Stride Rite Corporation, 656 F. Supp. at 490 (ESO admitted that it was aware of Stride Rite's "ZIPS" mark at the time it selected "ZIP 'N GO," but knowledge of prior use alone does not in itself constitute a showing of bad faith, while selecting a mark because it conveys the product's purpose or characteristics has been held to demonstrate good faith). Here, too, defendant’s principal stated that he selected [Title] because of its positive claim for his new pants product.
Moreover, there is no reason why defendant should wish its [Title] [Product or service] to be associated with [Title] [Product or service], while there is every reason why defendant should wish its product to be associated with the “[Title]” of its result. This seems further evidence that defendant had no intent to trade on the reputation of [Name of plaintiff]. Procter & Gamble Company v. Johnson & Johnson Incorporated, 485 F. Supp. at 1201 (where the defendant expressed an interest in not associating its product with the plaintiff’s product, there was no suggestion that the defendant’s trademark choice was motivated by anything but legitimate competitive considerations unrelated to the existence of the plaintiff’s trademark).

7.	There Is No Evidence that Defendant’s Product Is Inferior
While plaintiff speculates as to the inferiority of defendant’s [Product or service], there is no evidence of record that defendant’s product is inferior to products sold by plaintiff. The facts on this motion are distinguishable from the cases cited by plaintiff. In Nikon Inc. v. Ikon Corp., 987 F.2d 91, 95 (2d Cir. 1993), the court found that, while the defendant’s product was good for its price, the product did not have the same quality controls as the plaintiff had over its products. In Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 339 (S.D.N.Y. 1998), the defendant deliberately attempted to capitalize on the plaintiff’s classic film The Bridge on the River Kwai by releasing a film titled Return to River Kwai. The court awarded injunctive relief in the face of poor critical reviews and extensive evidence of actual confusion viewing the defendant’s film as an authorized sequel to the classic film. Id. at 358. Here, there is no evidence that the defendant’s product is inferior or any probative evidence that anyone attributes defendant’s [Title] [Product or service] to plaintiff's.
Since there is no evidence as to any inferiority in defendant’s product, this factor does not favor plaintiff's claim of likelihood of confusion. Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d at 1080 (quality is weighed as a factor when there is an allegation that a low quality product is taking unfair advantage of the public good will earned by a well-established high quality product. Where such is not the case, this factor is neutral).

8.	The Parties’ Customers Should Be Able to Distinguish between Different “[Title]” Products
Those people purchasing [Products or services] are likely to be discriminating. While the products at issue are relatively inexpensive, the care exercised by those making [Product or service] purchases suggests that these products are not likely to be bought solely on impulse. Moreover, assuming that the [Title] mark is as famous as plaintiff claims, such fame should make it easier for purchasers to distinguish [Title] [Products or services] from [Title] [Products or services]. E. S. Originals Inc v. The Stride Rite Corporation, 656 F. Supp. at 492 (even if the sophistication of the child-parent team is considered, the value of "ZIPS" as a status symbol would increase rather than impair the level of sophistication of the purchaser).
Thus, this factor does not favor likelihood of confusion and is at best neutral. See, Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d at 1080 (Despite the plaintiff’s suggestion that newsstand magazine buyers are subject to impulse buying and are therefore relatively unsophisticated, sufficient evidence exists in the record to support a finding that the buyers and advertisers both magazines seek are reasonably sophisticated consumers. This factor is neutral too.).

B.	Plaintiff Has Not Show a Likelihood of Success on its Claim of Dilution
Dilution is defined as "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception." 15 U.S.C. § 1127. The dilution statute is intended to protect strong and famous marks. As the court stated in Greenpoint Financial Corp. v. The Sperry & Hutchinson Company, Inc., 116 F. Supp. 2d 405, 412 (S.D.N.Y. 2000): “To save the dilution doctrine from abuse by plaintiffs whose marks are not famous and distinctive, a large neon sign should be placed adjacent wherever the doctrine resides, reading: "The Dilution Rule: Only Strong Marks Need Apply." 4 McCarthy on Trademarks § 24:108 (2000).”
Dilution by tarnishment occurs where the defendant uses the plaintiff's mark in association with unwholesome or shoddy goods or services. The Trustees for Columbia University of the City of New York v. Columbia/HCA Healthcare Corporation, 964 F. Supp. 733 (S.D.N.Y. 1997) (cited at page 17 of Plaintiffs’ Memorandum of Law). The court in Columbia found that the plaintiff has failed to demonstrate how the defendant has used the COLUMBIA mark to tarnish, blur, or dilute the plaintiff's service, and that the plaintiff had introduced no evidence that the defendant's hospitals, medical services, doctors, or staff are unwholesome or shoddy. Id. at 750. Here, plaintiffs engage in pure speculation that defendant’s [Title] [Product or service] will be of an inferior nature likely to injure the reputation of its [Title] [Product or service]. Since there is no evidence that defendant’s [Products or services] are inferior, plaintiff is not likely to succeed in showing that defendant’s sale of [Title] [Product or service] will tarnish the reputation of the [Title] mark.
In Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d 168, 172 (2d Cir. 2000), the court set forth five factors when assessing dilution by blurring under Section 43(c) of the Lanham Act: (1) similarity of the trademarks and trade dress; (2) similarity of the products; (3) sophistication of consumers; (4) renown of the senior mark and trade dress; and (5) renown of the junior mark and trade dress.
As discussed above, the marks at issue are dissimilar when viewed in their entireties within the context of the marketplace. In considering the similarity of the marks, the court in Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d at 172 found the marks FEDERAL EXPRESS and FEDERAL ESPRESSO to be dissimilar for purposes of dilution:

With respect to the first, similarity of the trademarks, the court found, given the "inherent difference between 'Express' and 'Espresso,'" and "the context in which the parties use them," that "the marks 'FEDERAL EXPRESS' and 'FEDERAL ESPRESSO' are not 'very' or 'substantially' similar," and stated that this "'dissimilarity alone could defeat [plaintiff's] blurring claim,'…"

The dissimilarity of the parties’ products was also discussed above, as was the sophistication of the parties’ customers. To the extent that purchasers are likely to be able to distinguish between the parties’ products, defendant’s sale of [Title] [Product or service] is not likely to dilute the distinctive quality of the [Title] mark.
The determination whether a mark is famous and distinctive under Section 43(c) is similar to the analysis for strength of the mark for trademark infringement purposes. Mead Data Central, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1030 (2d Cir. 1989) ("Distinctiveness for dilution purposes often has been equated with the strength of a mark for infringement purposes."). In The Trustees for Columbia University of the City of New York v. Columbia/HCA Healthcare Corporation, 964 F. Supp. at 745, the court dismissed a claim for trademark infringement and dilution. Like the laudatory word [Title] at issue here, the court found the word COLUMBIA as used in connection with a university to be sufficiently non-distinctive to extend protection to healthcare services. The court relied on third party uses and registrations of “COLUMBIA” marks to conclude that the weakness of the mark weighed strongly against a finding of dilution. Here, too, the laudatory nature of the word [Title], coupled with the evidence of third party uses and registrations, make it unlikely that plaintiff will demonstrate sufficient fame to be diluted by use of [Title] in connection with [Product or service].
The [Title] mark is not the type of mark which would be likely to blur the distinctive quality of the [Title] mark. See, Federal Express Corp. v. Federal Espresso, Inc., 201 F.3d at 173, where the court stated:

FEDERAL ESPRESSO is not well-known or famous, save perhaps in Syracuse, New York. The name has no inherent distinctiveness, nor has it acquired secondary meaning. FEDERAL ESPRESSO is merely a descriptive phrase for a coffee business that aspires to "sound big." "Where the fame of the junior mark is non-existent, the likelihood of finding dilution by blurring is minimal."

Defendant’s intent to use [Title] in conjunction with its [Name of brand] marks also has a bearing on whether blurring will occur. Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506 (2d Cir. 1996) (finding that the fact that the name "'Spa'am' will always appear next to the character likeness and the words 'Muppet Treasure Island'" created a "dissimilarity" that "alone" could defeat plaintiff's contention that its mark "Spam" was being blurred). There is thus no evidence that defendant’s use of [Title] is likely to dilute the distinctive quality of [Title].

POINT TWO

DEFENDANT’S [Title] [Product or service]
MARK IS NOT LIKELY TO CAUSE
IRREPARABLE HARM TO PLAINTIFF AND THE [Title] MARK
Plaintiff asks the court to presume that it will be irreparably harmed due to the confusion it claims is likely to result from defendant’s sale of [Title] [Product or service]. The record on this motion, however, demonstrates that plaintiff is not likely to succeed on its claim of trademark infringement and dilution. As a result, plaintiff's claim of irreparable harm must also fall. See, e.g., ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 350 (since the court concluded that there was little likelihood of confusion, it also believed that the plaintiff would not be irreparably harmed in the legally-actionable sense); Conopco, Inc. v. Cosmair, Inc., 49 F. Supp.2d 242, 258 (S.D.N.Y. 1999) (since Conopco has failed to establish likelihood of confusion, it cannot establish irreparable harm by the denial of the injunction); Lever Brothers Company v. Mattel, Inc., 609 F. Supp. 1395, 1403 (S.D.N.Y. 1985) (plaintiff's failure to show a likelihood of confusion means that he also lacks a likelihood of success on the merits and has failed to demonstrate irreparable harm).

POINT THREE

THE BALANCE OF HARDSHIPS RESULTING FROM
ISSUANCE OF A PRELIMINARY INJUNCTION FAVORS DEFENDANT
Defendant acted in good faith in choosing a mark for its new product. There was a desire to capitalize on the laudatory connotation of the word “[Title].” Defendant did not perceive any conflict with plaintiff's “[Title]” mark or any other “[Title]” mark, a perception which was confirmed by the trademark counsel based upon the existence of such a number of “[Title]” marks in the [Products or service] field. Defendant has already announced its [Title] product, has showed it at trade shows and has garnered a good amount of publicity for the product. If defendant was now required suddenly to change the name of its product, it would: (1) lose the benefit of the efforts which it has expended in publicizing the brand; (2) the trade will be caused to question both the stability of the brand and the merits of the product; and (3) it will be unable to use the word best able to convey the results of the product to the trade and the public. 
In contrast, plaintiff has shown rights in [Title] associated with [Products or services]. They were disingenuous in attempting to expand the scope of their trademark rights to encompass other clothing products, given that use of [Title] for [Product or service] and [Title] for [Product or service] has been discontinued for a number of years. Having failed to establish rights in [Title] broad enough to encompass use of [Title] on [Product or service], there would seem to be little or no damage to plaintiff in permitting defendant to continue with its plans for [Title] pending ultimate resolution of this matter at trial.

CONCLUSION
In view of the foregoing, it is respectfully requested that plaintiff's motion for preliminary injunction be denied in all respects.

Dated: [Date]

						By:

						[Signature Block]