Denimafia Inc. v. New Balance Ath. Shoe, Inc.

When determining the likelihood of confusion between trademarks courts apply an eight factor balancing test

Opinion (Peck): Denimafia, a New-York based company, began a 5EP denim clothing line in 2003. Christine Rucci, owner of Denimafia registered the 5EP word and mark in 2004 formed 5EP Studio Inc. in 2006. Rucci also registered the “<==“ design mark. In 2010, the 5EP venture dissolved and Denimafia was granted perpetual license to use the 5EP trademark. 5EP Studio then assigned the 5EP and "<==" marks to Parotex, Inc. Parotex, Inc. is owned by one of the former 5EP Studio joint venturers.

Denimafia uses the "<==" mark on its website, on the products themselves, labels sewn into products, hangtags, buttons, t-shirt designs, and in product displays.

New Balance, founded in 1906, is one of the largest distributors of athletic clothing and footwear in the world. New Balance’s labeled a new product line the “Minimuus” collection in 2010 for which the "<==" mark was desired. New Balance asked an advertising agency to stylize the "<==" design in order to distinguish it from Denimafia’s mark after learning that Denimafia registered the mark.

New Balance’s "<==" mark design used a different typeface and a more elongated presentation as well as solid printing.

On March 22, 2012 Denimafia learned of the New Balance Minimus line which contained their stylized "<==" mark. Denimafia brought suit alleging trademark infringement, trademark counterfeiting, and other related claims.

The Lanham Act protects against direct confusion and reverse confusion, where a consumer believes that the lesser-known trademark user is the source of the better-known trademark user. In order to determine the likelihood of confusion an eight-factor balancing test as set forth in Polaroid v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), is used. The eight-factors of the test are: "(1) the strength of the trademark, (2) the similarity of the trademarks, (3) proximity of the products with each other, (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 that the imitative mark was adopted in bad faith, (7) respective quality of the products, and (8) sophistication of the consumers in the relevant market."

Denimafia’s mark is weak and they admit they customarily use free advertising. The marks are similar but are almost always used in conjunction with the 5EP or Denimafia, or New Balance, NB, or N. Therefore the similarity between the two marks is lessened. There is little to no competitive proximity of the products because they appeal to different consumers and through different channels. Actual consumer confusion also does not exist. Denimafia failed to provide sufficient evidence of actual confusion in the market place. When balancing all of the factors, the Court concludes that no reasonable jury could find reverse confusion, confusion, or an overall balancing of the Polaroid factors in favor of Denimafia.

The Court, for the reasons above, GRANTED New Balance’s motion for summary judgment on all claims.