Can you trademark a letter? NEW BALANCE v. NAUTICA

A trademark is something a manufacturer brands its products with to distinguish its products with competitors products. In the United States the ownership of a trademark is based on the use of the trademark in commerce. A trademark can be registered with the United States Patent and Trademark Office to strength the rights associated with a trademark but the claim to a trademark is based on use in commerce. The first person to use a trademark is referred to as the senior user, later users of a trademark are referred to as junior uses. If a junior user brands products with a trademark in a way that is likely to cause consumer confusion with respect to the identity of the producer of a product, that can be considered trademark infringement.

When a court is presented with a trademark infringement case, the court will weigh several factors to determine whether there is a likelihood of confusion between the two trademark. These factors can vary slightly between the different circuits within the federal court system, however most courts follow the principles set out in the Polaroid factors, named for the case Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). The Polaroid factors are: (1) Strength of the senior user’s mark; (2) Similarity of the marks; (3) Similarity of the products or services; (4) Likelihood that the senior user will bridge the gap; (5) The junior user’s intent in adopting the mark; (6) Evidence of actual confusion; (7) Sophistication of the buyers; (8) Quality of the junior user’s products or services; (9) related products and services. No single factor is determines whether trademark infringement has occurred, rather the court will evaluate the factors as a whole to see whether there is a likelihood consumers will be confuse two trademarks.

NEW BALANCE ATHLETICS, INC., v. AUTHENTIC BRANDS GROUP, 19-cv-11792 (S.D.NY 2019) is a good example of a senior user using the polaroid . The plaintiff in this case is an apparel manufacturer. The plaintiff owns federally-registered and incontestable trademark registrations for a block capital letter “N” on footwear and apparel. The plaintiff has exclusively used the Block N Footwear Marks in commerce since the 1970s and the Block N Apparel Mark since at least as early as 1996. It has sold hundreds of millions of pairs of shoes and pieces of apparel bearing the marks worldwide, which represent many billions of dollars in sales. The Block N Marks are famous and embody an enormous amount of goodwill. An example of the plaintiff’s products is reproduced above on the left.

Nautica is a subsidiary of the defendant. Recently Nautica began branding its products with a prominent N logo. An example of the defendant’s product is reproduced above. The plaintiff feels that the defendant’s trademark is likely to cause consumer confusion. The plaintiff filed a lawsuit claiming that the Defendant’s use of a block letter “N” on footwear and apparel: (i) is likely to cause confusion among consumers and/or suggest an affiliation, connection, or association between New Balance and Nautica; (ii) dilutes the distinctive quality of New Balance’s famous Block N Marks; and (iii) constitutes unfair competition.

Assuming the case does not settle quickly, the Polaroid factors will be applied to determine whether the defendant’s trademark is confusion similar to the plaintiff’s trademark.

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