Talk to Me Products, Inc. v. Larami Corp.

Second Circuit

Talk to Me Products, Inc. v. Larami Corp.

992 F.2d 469, 1993 WL 145842

Court of Appeals for the Second Circuit·Decided May 7, 1993·No. No. 1391, Docket 92-9279·Published·Cited by 3 cases

Opinion

PER CURIAM:

Plaintiff Talk to Me Products, Inc. (“TTMP”), appeals from a judgment of the United States District Court for the Southern District of New York, Charles S. Haight, Jr., Judge, dismissing its complaint on the motion of defendant Larami Corp. (“Lara-mi”) for summary judgment. On appeal, TTMP contends that the district court erred in ruling (1) that “Soaker” was a descriptive mark for a toy water gun, and (2) that TTMP had not established priority over Larami in the use of the “Soaker” mark. We affirm the district court’s dismissal of TTMP’s federal claims substantially for the reasons stated in [470] Judge Haight’s opinion reported at 804 F.Supp. 555 (1992).

A state-law claim of unfair competition is not always governed by the same standards as a federal trademark claim. Though a descriptive mark is not eligible for protection under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1988), absent a showing of secondary meaning, see, e.g., Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir.1992), such a showing may not be necessary to prove unfair competition under New York law, see Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 543 n. 2, 399 N.Y.S.2d 628, 631 n. 2, 369 N.E.2d 1162, 1164 n. 2 (1977). To prevail on the state-law claim, the plaintiff must, however, show that the “defendant has misappropriated the labors and expenditures of another.” Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir.1980). Since TTMP failed to show a triable issue as to its claimed priority of use of the “Soaker” mark, the dismissal of its New York unfair competition claim was proper.

We have considered all of plaintiffs contentions on this appeal and have found them to be without merit. The judgment of the district court is affirmed.

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PER CURIAM:

Plaintiff Talk to Me Products, Inc. (“TTMP”), appeals from a judgment of the United States District Court for the Southern District of New York, Charles S. Haight, Jr., Judge, dismissing its complaint on the motion of defendant Larami Corp. (“Lara-mi”) for summary judgment. On appeal, TTMP contends that the district court erred in ruling (1) that “Soaker” was a descriptive mark for a toy water gun, and (2) that TTMP had not established priority over Larami in the use of the “Soaker” mark. We affirm the district court’s dismissal of TTMP’s federal claims substantially for the reasons stated in [470] Judge Haight’s opinion reported at 804 F.Supp. 555 (1992).

A state-law claim of unfair competition is not always governed by the same standards as a federal trademark claim. Though a descriptive mark is not eligible for protection under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1988), absent a showing of secondary meaning, see, e.g., Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir.1992), such a showing may not be necessary to prove unfair competition under New York law, see Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 543 n. 2, 399 N.Y.S.2d 628, 631 n. 2, 369 N.E.2d 1162, 1164 n. 2 (1977). To prevail on the state-law claim, the plaintiff must, however, show that the “defendant has misappropriated the labors and expenditures of another.” Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1044 (2d Cir.1980). Since TTMP failed to show a triable issue as to its claimed priority of use of the “Soaker” mark, the dismissal of its New York unfair competition claim was proper.

We have considered all of plaintiffs contentions on this appeal and have found them to be without merit. The judgment of the district court is affirmed.

Talk to Me Products, Inc. v. Larami Corp., 992 F.2d 469, 1993 WL 145842 (2d Cir. 1993).

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