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lawsuitplaintiffattorneyinjunctionappealtrademarkcorporation
plaintiffinjunctionappealtrademarkcorporation

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Banff, Ltd. v. Federated Dept. Stores, Inc., 841 F.2d 486, 6 U.S.P.Q.2d 1187

Facts

Banff Ltd. is a New York corporation that has marketed a line of women's clothing under the unregistered trademark 'Bee Wear' since 1971. Bloomingdale's, a well-known department store, began using the mark 'B Wear' in 1986 for its own line of women's clothing, which led Banff to file a lawsuit for trademark infringement. The district court initially granted a preliminary injunction against Bloomingdale's use of 'B Wear,' but later excluded certain stylized versions of the mark from the injunction. Banff appealed, seeking to broaden the injunction and obtain attorney's fees.

Banff Ltd. (Banff) is a New York corporation engaged in the manufacturing, marketing, and sale of a wide range of quality women's clothing. Since 1971 Banff has marketed a successful line of apparel under the unregistered trademark 'Bee Wear' to retail stores that in turn sell 'Bee Wear' to retail consumers.

Issue

Whether the district court erred in refusing to broaden the scope of the permanent injunction against Bloomingdale's use of the marks 'b Wear' and 'B Wear' in connection with women's clothing.

Whether the district court erred in refusing to broaden the scope of the permanent injunction against Bloomingdale's use of the marks 'b Wear' and 'B Wear' in connection with women's clothing.

Rule

Analysis

The court analyzed the marks 'Bee Wear' and 'B Wear' as composites, finding that they create a similar overall impression. The district court's findings regarding the strength of Banff's mark and the likelihood of confusion were supported by the Polaroid factors, which weigh in favor of Banff. The court concluded that Bloomingdale's use of the stylized lower-case 'b Wear' and ribbon-style 'B Wear' would likely cause confusion among consumers, just as the standard typestyle 'B Wear' did.

To determine whether an unregistered mark has been infringed, we apply a two-step test. First, plaintiff must demonstrate that its mark merits protection under Judge Friendly's classic formulation in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976). Trademarks are divided into four categories with respect to protection. 'Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.' Id. at 9.

Conclusion

The court reversed the district court's decision to exclude the stylized lower-case 'b Wear' and ribbon-style 'B Wear' from the injunction, broadening the scope of the permanent injunction against Bloomingdale's.

The scope of the broadened injunction should be made clear. This holding does not affect Bloomingdale's use of a ribbon-style 'B' or stylized lower-case 'b' in any composite other than with the word 'Wear.'

Who won?

Banff Ltd. prevailed in part on appeal, as the court agreed to broaden the scope of the injunction against Bloomingdale's. The court found that the likelihood of confusion between Banff's 'Bee Wear' and Bloomingdale's various uses of 'B Wear' warranted a more comprehensive injunction. The court's analysis of the Polaroid factors supported Banff's claims, leading to a favorable outcome for the plaintiff.

Banff's appeal was successful in broadening the scope of the injunction against Bloomingdale's, as the court found that the likelihood of confusion warranted a more comprehensive injunction. The court's analysis of the Polaroid factors supported Banff's claims, leading to a favorable outcome for the plaintiff.

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