lexington furniture trade account

2012) (Jones, J.) It continues to sell its products in the United States through its United States facing website. 56.1 1-2). 56.1 67; Pl. The Clerk is directed to terminate the motions. 56.1 24; Pl. 3d 305, 326 (S.D.N.Y. (Pl. CONCLUSION. of Gruner + Jahr Printing & Pub. Consumers can also purchase LFI's products through authorized, third-party retailers both at their physical locations and online. However, "[t]hese cases should not be read to suggest that 'a district court deciding a motion for summary judgment in a trademark infringement case has . 56.1 Resp. 1996)). 4). No. The Remaining Polaroid Factors and Balancing of Factors. 18). "[D]irect competition between the products is not a prerequisite to relief," but "products that share the same channel of trade are not necessarily proximate." 56.1 123-25; Def. (Pl. 56.1 4-8; Def. Ultimately, the TTAB ruled in LFI's favor and ordered LCC's mark to be cancelled. 16). 56.1 Resp. 2009). But even if LFI cannot establish actual damages with reasonable certainty, an injured party can still recover nominal damages. #212 Dallas, Texas 75209. See Lexington Mgmt. As a general matter, issue preclusion "applies when (1) the issues in both proceedings are identical, (2) the issue in the prior proceeding was actually litigated and actually decided, (3) there was a full and fair opportunity for litigation in the prior proceeding, and (4) the issues previously litigated were necessary to support a valid and final judgment on the merits." Make your practice more effective and efficient with Casetexts legal research suite. 2013); see Car-Freshner Corp., 980 F.3d at 334 ("With some factors favoring each side, we encounter a question as to which Polaroid provides no guidance: how are conclusions at to the eight factors to be considered in the aggregate when some favor each party?"). Their award-winning product line of wood and upholstered furniture encompasses a wide range of designs and styles, with recognized brands like Lexington, Tommy Bahama, Sligh, and Henry Link Trading Co. 2014) (Cote, J.) An additional factual dispute results from LFI selling its products using six different brands names and various collection names. This trademark infringement action is part of an almost fifteen-year dispute over defendant's use of the term "Lexington." On June 22, 2011, the TTAB issued a decision in favor of LFI and ordered the '226 Registration canceled. 123-25). We sell textiles, and they sell furniture." LFI subsequently filed a petition to cancel the '226 Registration with the TTAB. 56.1 48; Pl. 2000) (quoting Anderson, 477 U.S. at 248). 56.1 Resp. In addition, LCC's motion for summary judgment urges that LFI cannot prove damages as a matter of law. It is undisputed that LCC marketed goods on Perigold.com for only a month or two. See B&B Hardware, 575 U.S. at 154 ("[F]or a great many registration decisions issue preclusion obviously will not apply because the ordinary elements will not be met."). We don't sell the same things. (Def. (Def. We use cookies on our website to give you the most relevant experience by remembering your preferences and repeat visits. 121). a trier of fact may still conclude that actual confusion exists in the absence of such evidence, so long as there is other evidence of actual confusion."). In the context of trademark infringement actions, "[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply." " Id. (Def. Plaintiff Lexington Furniture Industries, Inc. ("LFI") describes itself as a "well-known and highly respected manufacturer, distributer and retailer of high-end furniture in the United States" who "offer[s] the most diverse range of styling within the industry." The record contains LCC's net sales from 2014 to 2018. 132-34). ." 56.1 Resp. "A dispute regarding a material fact is genuine 'if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.' These cookies will be stored in your browser only with your consent. (Def. (See, e.g., Pl. The term "Lexington" is similarly contained within LCC's Flag Logo. (Pl. Id. 56.1 Resp. When asked at his deposition, Mr. Stamper did not identify LCC as one of LFI's primary competitors. LFI sets forth evidence that from 2015 to 2019, it had $2.24 million in sales of "accent pillows" and $3.91 million in sales of cut yardage. 23). Rule 56(a), Fed. . Second, LFI argues that LCC breached the Settlement Agreement by advertising and selling products through third-party online retailer Perigold.com. It is undisputed that LFI and its authorized dealers display bedding, pillows and other accessories when marketing LFI's furniture products. Lexington Home Brands is a global manufacturer and marketer of distinctive home furnishings, and an industry leader in innovative design and lifestyle marketing. In that event, the nonmoving party must come forward with admissible evidence sufficient to raise a genuine issue of fact for trial in order to avoid summary judgment." 56.1 Resp. By clicking Accept, you consent to the use of ALL the cookies. With respect to the factor of similarity between the two marks, the Court considers the context in which the marks are used. (Compare Pl. . DISCUSSION. LCC further points to LFI's failure to submit consumer survey evidence on whether consumers associate the "Lexington" marks with LFI. 123; Doc 87 - Ex. 1995) (internal quotation marks omitted). Rather a belief that LFI "'sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.' Alarmed at the prospect of a competing "Lexington" mark, LFI filed a cancellation proceeding before the Trademark Trial and Appeal Board (the "TTAB"), and the parties engaged in discovery over the course of the next three years. (Doc 93). LCC contends that LFI failed to timely produce these exhibits during discovery and therefore they should not be considered on summary judgment. The Court concludes that issue preclusion does not apply to the TTAB's adjudication regarding the likelihood of consumer confusion between the parties' mark. (Pl. LCC has set forth evidence that it advertises certain of its products using the "Lexington Clothing Company" mark. The pieces created by this prestigious manufacturer are available directly from James Antony. Accordingly, an issue of material fact remains as to whether LCC has breached this provision. 56.1 Resp. (Id. AtJames Antony Home we dont just design beautiful things we furnish imagination. 56.1 Resp. Paragraph 10 of the Settlement Agreement provides that "[i]f either party believes that either has breached any of the above terms it shall give notice of breach and provide 60 days to cure.". It entered the United States market in 2012. Lexington has always been a designer-oriented line, so we are pleased to have a design showroom at the San Francisco Mart, said Brad Berlin, independent account manager for Lexington. 56.1 66; Pl. (Id. P. A fact is material if it "might affect the outcome of the suit under the governing law . 79-80). As to LCC's bad faith in adopting the mark, the Second Circuit has "consistently observed, 'subjective issues such as good faith are singularly inappropriate for determination on summary judgment.' For reasons to be explained, LFI's motion for summary judgment will be denied. See, e.g., OffWhite Prods., LLC v. Off-White LLC, 480 F. Supp. 56.1 27; Def. Corp., 287 F.2d 492, 495 (2d Cir. 4. It is mandatory to procure user consent prior to running these cookies on your website. The Second Circuit has "repeatedly found that the presence of a distinct brand [or company] name may weigh against a finding of confusing similarity." 56.1 112; Pl. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). at 86 (quoting Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 478 (2d Cir. On the present record, reasonable juries could reach different conclusions on "the ultimate issue of whether [LCC's] action generated a likelihood of customer confusion." 56.1 Resp. (Def. 56.1 126-27; Def. 2003), abrogated on other grounds by 4 Pillar Dynasty LLC v. N.Y. & Co., 933 F.3d 202 (2d Cir. (Doc 105 - Ex. Corp. v. Lexington Cap. Car-Freshner Corp, 980 F.3d at 330. Tiffany & Co., 971 F.3d at 86 (denying summary judgment where reasonable triers of fact could reach a different conclusion on three Polaroid factors: actual confusion, defendant's good faith and consumer sophistication); Car-Freshner Corp., 980 F.3d at 334 ("The balance of all the Polaroid factors favors CFC at least sufficiently to preclude summary judgment for Energizer as to infringement of the 'Black Ice' mark."). 148). See, e.g., Virgin Enterprises Ltd. v. Nawab, 335 F.3d 141, 150 (2d Cir. The evidence in the record appears to support LCC's assertion that it does not use the terms "Lexington" or "Lexington Company" standing alone. (giving preclusive effect to a TTAB opposition proceeding determination on the likelihood of confusion between two marks in an action for trademark infringement). LCC does not dispute that Lexington's registered marks are valid and have become incontestable. On February 19, 2019, LFI sent a cease-and-desist letter objecting to LCC's use of Perigold.com. 56.1 1, 3; Def. LCC was founded in 1997 in Stockholm, Sweden. . "); Alzheimer's Disease & Related Disorders Ass'n, Inc. v. Alzheimer's Found. 56.1 Resp. R. Civ. (Settlement Agreement 11). 56.1 Resp. 56.1 Resp. . (Stamper Tr. 2006). No. The Court denies LFI's motion for summary judgment. The evidence in the record shows that LFI uses its "Lexington" marks in conjunction with a brand or collection name. 55). This website uses cookies to improve your experience while you navigate through the website. 56.1 87-95, 105, 112-13, 117; Def 56.1 Resp. (Doc 96 - Ex. Lastly, the Court denies LCC's motion to strike as moot. BACKGROUND. Neither Party Is Entitled to Summary Judgment on LFI's Trademark Infringement Claims. googletag.enableServices(); See KT Group Ltd. v. NCR Corp., 412 F. Supp. }); var postSlot0, postSlot1, postSlot2, postSlot3, postSlot4, postSlot5, postSlot6, postSlot7; No. In response to LCC's motion, LFI has failed to come forward with evidence, which if believed, would permit a reasonable factfinder to conclude that LCC marketed it goods on Perigold.com beyond the 60-day cure period. of Am., Inc., 307 F. Supp. 1, 3; Def. LEXINGTON FURNITURE INDUSTRIES, INC. d/b/a LEXINGTON HOME BRANDS, Plaintiff, v. THE LEXINGTON COMPANY, AB d/b/a THE LEXINGTON CLOTHING COMPANY, Defendant. 56.1 87-95, 105, 112-13, 117; Def 56.1 Resp. But as discussed in connection with LFI's Lanham Act claims, there is also evidence that shows LCC used "Lexington" or "Lexington Company" in conjunction with the Flag Logo. Construing this provision in the context of the entire agreement, LCC is only required to use "Lexington Clothing Company" as its "primary identifier" when advertising home textile products in the United States. (Pl. 56.1 57; Pl. (quoting Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1174 (2d Cir. ; (3) U.S. Reg. In raising a triable issue of fact, the non-movant carries only "a limited burden of production," but nevertheless "must 'demonstrate more than some metaphysical doubt as to the material facts,' and come forward with 'specific facts showing that there is a genuine issue for trial.' A geographically descriptive term or phrase is one that "'designates geographical location and would tend to be regarded by buyers as descriptive of the geographic location of origin of the goods or services.' With respect to the second component of the "strength" analysis, acquired distinctiveness or secondary meaning, the Court is mindful that "'[t]he careful weighing of evidence necessary to determining secondary meaning renders it an unlikely candidate for summary judgment.' 56.1 67; Pl. To determine similarity, "'courts look to the overall impression created by the logos and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers.' 56.1 Resp. greater discretion than it would have in a non-trademark case to resolve disputed issues of fact or draw inferences against the non-moving party.' (See, e.g., Pl. LFI urges that since the "Lexington" marks are registered and have become incontestable, the Court need not further analyze their inherent distinctiveness. In opposition, LFI primarily argues that its marks are not geographically descriptive because there is no evidence that consumers associate LFI's furniture with the city of Lexington, North Carolina. (Pl. For its part, defendant The Lexington Company, AB ("LCC") identifies as "a renowned global brand offering fashion apparel and certain home textiles" whose "style is based on the New England heritage, and combined with the Scandinavian design twist." The TTAB Decision Does Not Give Rise to Issue Preclusion. . 56.1 16, 129; Def. 2003). Full title:LEXINGTON FURNITURE INDUSTRIES, INC. d/b/a LEXINGTON HOME BRANDS, Court:UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK. A court "may grant summary judgment only when no reasonable trier of fact could find in favor of the nonmoving party." UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK. Moreover, Mr. Stamper testified that North Carolina is "famous for furniture because initially there [was] a really abundant supply of good hardwood, and there [was] an abundant supply of good labor." 2022 BridgeTower Media. 87-95, 105, 112-13, 117). (Lindhe Tr. (Pl. 4468729 for (Image materials not available for display.) 56.1 Resp 15; Def 56.1 78; Pl. Summary judgment "shall" be granted "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." (Doc 108). 56.1 11; Def. (Stamper Decl. LCC's motion for summary judgment is otherwise denied. 87-92, 104-05, 112). ; and (5) U.S. Reg. 56.1 Resp. This includes the use of "Lexington" marks in print advertisements, product showrooms and on websites and social media accounts. The parties agree that New York law applies to LFI's claim for breach of the Settlement Agreement. In addition to furniture, LFI sells certain non-furniture products such as pillows, bedding and cut yardage for fabrics. In Tiffany & Co. v. Costco Wholesale Corp., the Second Circuit recently observed that "some of [its prior] cases have been purported to afford considerable deference" to a district court's "findings" at the summary judgment stage "with respect to predicate facts underlying each Polaroid factor, or even to its finding on each factor generally." 56.1 16; Pl. Covers, LLC, 980 F.3d 314, 327 (2d Cir. " Id. On March 20, 2007, LCC obtained a U.S. trademark registration for its Flag Logo, the '226 Registration, in connection with "bath linen; bed clothes, namely, pillow shams, bed covers, bed spreads, blankets, sheets, pillow cases, mattress covers; bed linen; handkerchiefs; household linen; table linen; cloth coasters; curtains; textile place mats; textile napkins; [and] towels." LCC sells clothing, but it does not sell furniture. 1976) ("[T]hird-party use has less effect where the third-party marks are used to promote 'entirely unrelated products.'"). Co. v. Meredith Corp., 991 F.2d 1072, 1076 (2d Cir. In determining whether there is consumer confusion, courts look to the familiar "Polaroid factors" first set forth in Polaroid Corp. v. Polarad Elecs. But opting out of some of these cookies may have an effect on your browsing experience. 34-37). (Doc 81). As discussed more fully in the next section, whether there is a likelihood of confusion in this action depends considerably on the actual marketplace usage of both LFI's and LCC's marks. (Def. All rights reserved. N). 2020) (citing Gruner + Jahr, 991 F.2d at 1078) ("Although Saxon's IONEX mark was granted incontestable status under 15 U.S.C. " Forschner Group, Inc. v. Arrow Trading Co. Inc., 30 F.3d 348, 353 (2d Cir. Any cookies that may not be particularly necessary for the website to function and is used specifically to collect user personal data via analytics, ads, other embedded contents are termed as non-necessary cookies. Neither of these factors materially influence the likelihood of confusion analysis on summary judgment. Sometimes the "Lexington" mark will be used with a collection name, such as "Avondale" or "Carlyle." Although LFI points to some instances of actual confusion, see generally Pl. googletag.pubads().enableSingleRequest(); As relevant to this action, LFI owns five federally registered trademarks that contain the word "Lexington" and cover certain types of furniture and furniture store services. Residential products are distributed through independent retailers, interior designers, design firms, and to-the-trade showrooms. (Stamper Tr. (internal quotation marks and alterations omitted) ("A claim of trademark infringement under New York law requires proof of the same elements and can be analyzed together with a Lanham Act claim. Lastly, a reasonable jury could find that the factor of actual confusion in the marketplace weighs in favor of LFI or LCC. "As in any other area of law, then, '[i]f a factual inference must be drawn to arrive at a particular finding on a Polaroid factor, and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment.' 56.1 59; Pl. It is undisputed that LFI was founded in Lexington, North Carolina. 971 F.3d at 85 (internal quotation marks and citation omitted). 1114, and for unfair competition and false designation of origin, 15 U.S.C. On a motion for summary judgment, the court must "construe the facts in the light most favorable to the non-moving party" and "resolve all ambiguities and draw all reasonable inferences against the movant." 56.1 132-147, it is not of a nature that would permit this Court to grant LFI judgment as a matter of law. It operates two "Tommy Bahama" branded retail stores, showrooms in Manhattan and Denver and participates in various furniture markets. No. (Pl. To determine secondary meaning, courts analyze six factors: "advertising expenditures, consumer studies linking the mark to a source, unsolicited media coverage of the product, sales success, attempts to plagiarize the mark, and the length and exclusivity of the mark's use." "A registered mark becomes incontestable if it has been in continuous use for five consecutive years subsequent to its registration and is still in use." The Sports Auth., 89 F.3d at 962. at 28). Corp., 390 F.3d 158, 164-65 (2d Cir. at 156-57 (quoting McCarthy on Trademarks and Unfair Competition 32:101). 1576409 for the word mark "Lexington Furniture Industries." Id. (Pl. Accordingly, a reasonable jury could reach different conclusions regarding the similarity of the marks. 31, 69). Citations to the parties' Rule 56.1 Statements are intended as a convenient reference to the evidence cited in those statements. 56.1 11; Pl. LCC cross-moves for partial summary judgment with respect to those same claims. (Doc 96 - Ex. Playtex Prods., Inc. v. Georgia-Pac. 12). 56.1 87-92, 104-05, 112; Def. v. Peju Province Winery L.P., 17-cv-873, 2017 WL 6509004, at *3-4 (S.D.N.Y. (Settlement Agreement 3). 56.1 3; Def. 15 U.S.C. The first two provisions at issue concern the "intent" of the Settlement Agreement: LFI urges that LCC breached these provisions by using "Lexington" marks other than the term "Lexington Clothing Company." ." LCC urges that the marks are not similar because it does not use the terms "Lexington" or "Lexington Company" alone but in conjunction with the Flag Logo. The Court concludes that there are triable questions as to several of the Polaroid factors. 3d 428, 445 (S.D.N.Y. 3220226 (the " '226 Registration") covering household linens. (quoting Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 169 (2d Cir.1991)). 1993)). They also produce contract and custom contract furnishings for hospitality and commercial use. On January 12, 2012, prior to a decision on the appeal, the parties entered into the Settlement Agreement. . 56.1 149; Pl. " Tiffany & Co., 971 F.3d at 88 (quoting Cadbury, 73 F.3d at 483). (Pl. Partners, 10 F. Supp. These portfolio brands are the "flagship" Lexington brand, Artistica Home, Sligh, Tommy Bahama Home, Tommy Bamaha Outdoor Living and Barclay Butera. (TTAB Order, at 1-2). Star Indus., 412 F.3d at 384-85. 56.1 12; Pl. 56.1 Resp. googletag.enableServices(); Compagnie Financiere de CIC et de L'Union Europeenne v. Merrill Lynch, Pierce, Fenner & Smith Inc., 232 F.3d 153, 157-58 (2d Cir. " Weinstock v. Columbia Univ., 224 F.3d 33, 41 (2d Cir. This category only includes cookies that ensures basic functionalities and security features of the website. 2684161 for the word mark "Lexington Home Brands"; (4) U.S. Reg. On July 8, 2019, LFI filed the current action. Necessary cookies are absolutely essential for the website to function properly. 2009) (quoting Star Indus., 412 F.3d at 384). 17-20). 1065). (Def. Allen v. Coughlin, 64 F.3d 77, 79 (2d Cir. The Sports Auth., 89 F.3d at 963 (internal quotation marks omitted).

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