Professional Documents
Culture Documents
Multi-Vet Opinion
Multi-Vet Opinion
Multi-Vet Opinion
McKENNA, D.J.
1.
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competition through its sale of the “Gentle Spray” anti-bark
2.
2001 and 2006. On April 30, 2001, Premier acquired the assets
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majority shareholder. (Brief in Support of Defendant’s Motion
Mem. p. 7.)
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license, but not the obligation, to use the marks
in relation with the marketing, promotion, sale
and distribution of Products in the Territory.
After the initial term of the Agreement, or any
subsequent term, in the event the Agreement is
terminated for any reason other than breach by
Premier, then the new trademarks developed by
Premier and registered by Multi-Vet will be sold
to Premier by Multi-Vet for one (1) dollar each.
Ex. 7.) Neither party alleges that this 2003 agreement altered
note dated July 1st. The capital due as of the date hereof is
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inducements, promises, undertakings,
understandings, agreements or otherwise, whether
oral, in writing or otherwise, between the
parties with respect to such subject matter
including our agreement dated October 30, 2003
between the parties .... This Agreement may be
altered, modified or amended only by a written
document signed by the parties.
Mem. p. 10.)
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exclusive right to use the trademark ‘Gentle Spray’ free of any
¶ 30.)
its use of the “Gentle Spray” name in October of 2007 and began
selling its collars using the name “Spray Sense.” (Garon Decl.
3.
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denied.” Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d
3(a).
Brennan’s Restaurant, L.L.C., 260 F.3d 125, 128 (2d Cir. 2004)
registrant owns the mark, and that the registrant has the
Mgmt., Inc. v. Lane Capital Mgmt., Inc. 192 F.3d 337, 345 (2d
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“[T]he crucial issue in an action for trademark
Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), cert.
Elec. Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S.
F.2d 254, 256 (2d Cir. 1987). These factors include “(1) the
the likelihood that the plaintiff will ‘bridge the gap’ between
the two markets; (6) the defendant's good faith in adopting its
mark; (7) the quality of the defendant's product; and (8) the
3(a)(1).
its trademarks with respect to the “Gentle Spray” mark, the “No
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marketing the Gentle Spray product, featuring a purple
under the terms of the parties’ agreement. (Def.’s Mem. pp. 17-
18.) The terms of the 2001 Agreement, quoted above (pp. 3-4),
the event the Agreement is terminated for any reason other than
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However, before the end of the “initial term” of the
the 2001 Agreement, and also explicitly states that by its terms
& 10.)
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2001, stating that Multivet had “no interest in the name ‘Gentle
September 2006 from Doug Belknap stating that the Gentle Spray
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Spray mark created by its registration of the mark with the
3(a)(2).
Pain” and design (the “No Shock/No Pain mark”), and that Multi-
the No Shock/No Pain trademark, and that even if Premier did own
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confusion tied to this particular mark sufficient to justify
and admits that any ... trade mark, trade name or other
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evidence to rebut this presumption. On balance, the Court finds
that the use of the No Shock/No Pain mark, as distinct from the
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Premier submitted two supplemental declarations on July 31, 2008, which
allegedly provide two additional instances of consumer confusion with respect
to the Gentle Spray mark. The instances of consumer confusion alleged in
these declarations do not affect the Court’s analysis of Premier’s trademark
infringement claims for purposes of the instant motion, so the Court finds it
unnecessary at the present time to respond to Multi-Vet’s objections to
Premier’s submission of these supplemental declarations.
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Absent evidence of actual confusion, the Court finds it
implausible that the use of the No Shock/No Pain mark has the
small size of the mark on the product packaging and its near
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3(a)(3).
Answer that it owns the design and that the design has been
design as a claim that may form the basis for relief. (Pl.’s
Mem. p. 21.)
may be demonstrated.
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The Court finds that with respect to its claims for
3(b).
(S.D.N.Y. 1987)), aff'd, 923 F.2d 845 (2d Cir. 1990). “In a
common law unfair competition claim under New York law, the
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Additionally, there must be some showing of bad faith.” Jeffrey
Co., 984 F.2d 567, 576 (2d Cir. 1993) (citation omitted);
Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d
Cir. 1980).
3(b)(1).
3(b)(2).
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existence of any relationship between the two parties, and
“any ... trade mark, trade name or other identifying mark ... is
pp. 13-14.)
3(b)(3).
497 F.3d at 153. The Court therefore does not need to reach the
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