Motion-Secondary: Jmb Apparel Designer Group, Inc. v. Robert S Arochas, D-Nach, Ltd., Fab Mill, Inc.

On October 29, 2010 a Motion-Secondary was filed involving a dispute between Jmb Apparel Designer Group, Inc., and D-Nach, Ltd., Fab Mill, Inc., Robert S Arochas, for Commercial Division in the District Court of New York County.

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(FILED: NEW YORK COUNTY CLERK 1271372010) INDEX NO. 651885/2010
NYSCEF DOC. NO. 25 RECEIVED NYSCEF 12/13/2010

SUPREME COURT OF THE STATE OF NEW YORK
COUNTY OF NEW YORK
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JMB APPAREL DESIGNER GROUP, INC., Motion #1

Plaintiff, Index No. 651885/10

ROBERT S. AROCHAS, D-NACH, LTD., and
FAB MILL, INC.,

Defendants.
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DEFENDANTS’ MEMORANDUM OF LAW IN
OPPOSITION TO PLAINTIFF'S ORDER TO SHOW
CAUSE SEEKING, INTER ALIA, A PRELIMINARY
INJUNCTION, THE APPOINTMENT OF A RECEIVER,
AND FURTHER PROVISIONAL EQUITABLE RELIEF

Murray L. Skala, Esq.
Bruce Robins, Esq.
FEDER KASZOVITZ LLP
845 Third Avenue
New York, NY 10022-6601
(212) 888-8200

Attorneys for Defendants
ROBERT S. AROCHAS, D-NACH, LTD., and
FAB MILL, INC.

Dated: New York, New York
December 10, 2010
Table of Contents

Page

INTRODUCTION

PLAINTIFF CANNOT SHOW A LIKELIHOOD
OF SUCCESS ON THE MERITS

A Plaintiff Has No Common Law
Trademark in the Name “Atelier”

Plaintiff Has No croprietary Rights
in the Apparel It Sells... 12

Plaintiff's Remaining Claims and
Complaints Are Equally Meritless 17

PLAINTIFF ALSO CANNOT SHOW THAT IT
WILL SUFFER IRREPARABLE HARM
ABSENT AN INJUNCTION, OR THAT THE
BALANCE OF THE EQUITIES TIPS IN ITS FAVOR 21

PLAINTIFF HAS NOT MADE ANY SHOWING JUSTIFYING
23
THE APPOINTMENT OF A TEMPORARY RECEIVER.

CONCLUSION 25
Table of Authorities

Cases Page

Allied Maintenance Corp. v. Allied Mechanical Trades, Inc.,
9, 10
42. N.Y.2d 538, 399 N.Y.S.2d 628, 369 N.E.2d 1162 (1977)

Buffalo Packaging Corp. v. Buff-Pac, Inc.,
155 A.D.2d 877, 547 N.Y.S.2d 714 (4 Dept. 1989)... 10

Camelot Assocs. v. Camelot Design & Dev. LLC,
298 A.D.2d 799, 750 N.Y.S.2d 155 (3d Dept. 2002) 10

Citibank, N.A. v. Citytrust,
756 F.2d 273 (2d Cir. 1985)... 22

Credit Agricole Indosuez v. Rossiyskiy Kredit Bank,
94.N.Y.2d 541, 708 N.Y.S.2d 26 (2000) 21

Elements/Jill Schwartz, Inc. v. Gloriosa Co.,
2002 U.S. Dist. LEXIS 12669 (S.D.N.Y. 2002). 14, 15

Ergotron, Inc. v. Hergo Ergonomic Support Systems, Inc.,
13
1996 WL 143903 (S.D.N.Y. 1996)

Faberge Int'l, Inc. v. Di Pino,
109 A.D.2d 235, 491 N.Y.S.2d 345 (Ist Dept. 1985)

Gidatex S.R.L. v. Campaniello Imports Lid.,
13 F. Supp. 2d 417 (S.D.N.Y. 1998)....:s0s0000 22

Girard Holding Corp. v. Hollander,
195 Misc. 878, 91 N.Y.S.2d 188 (Sup.Queens 1949) 22

Groh v. Halloran,
24
86 A.D.2d 30, 448 N.Y.S.2d 680 (Ist Dept. 1982).......

Hansen Beverage Co. v. Cytosport, Inc.,
2004 WL 5104260 (C.D.Cal. 2009). 23

Headquarters Buick-Nissan, Inc. v. Michael Oldsmobile,
149 A.D.2d 302, 539 N.Y.S.2d 355 (1* Dept. 1989)... 20

Jack Schwartz Shoes, Inc. v. Skechers U.S.A., Inc.,
233 F. Supp. 2d 512 (S.D.N.Y. 2002) 9,13

u
Jack Schwartz Shoes, Inc. v. Skechers U.S.A., Inc.,
2002 U.S. Dist. LEXIS 25699 (Mag. Recommendation).
adopted by the Court at 233 F.Supp.2d 512 (S.D.N.Y. 2002)

Judith Ripka Designs, Ltd. v. Preville
935 F. Supp. 237 (S.D.N.Y. 1996) 15

Little India Stores, Inc. v. Singh,
101 A.D.2d 727, 475 N.Y.S.2d 38 (Ist Dept. 1984) 22

Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co.,
292 F. Supp. 2d 535 (S.D.N.Y. 2003) 13, 14, 15, 16

Mal Dunn Associates, Inc. v. Kraniac.
145 A.D.2d 472, 535 N.Y.S.2d 430 (2d Dept. 1988) 20

Mayo, Lynch & Associates, Inc. v. Fine
148 A.D.2d 425, 538 N.Y.S.2d 579 (2d Dept. 1989) 20

New York City Off-Track Betting Corp. v. New York Racing Ass'n, Inc.,
250 A.D.2d 437, 673 N.Y.S.2d 387 (Ist Dept. 1998) : 21

People v. Rosenthal,
6 Misc.3d 1004(A), 800 N.Y.S.2d 354, 2003 WL 23962174
(N.Y.City Crim.Ct. 2003)... 13

Quick v. Quick,
69 A.D.3d 828, 893 N.Y.S.2d 583 (2d Dept. 2010) 23

SW. Scott & Co. v. Scott.
186 A.D. 518, 174 N.Y.S. 583 (Ist Dept.1919) 19

Sally Gee, Inc. v. Myra Hogan, Inc.,
699 F.2d 621 (2d Cir. 1983). 11

Sanofi-Syntholabo v. Apotex, Inc.
470 F.3d 1368 (Fed. Cir. 2006) 23

Shear Contractors, Inc. v. Shear Enterprises & Gen. Contracting,
2010 U.S. Dist. LEXIS 122173 (N.D.N.Y. November 16, 2010). 8,9,11

SportsChannel America Associates v. National Hockey League:
186 A.D.2d 417, 589 N.Y.S.2 2d (Ist Dept. 1992) 21,22

iu
Temple Judea of Manhasset, Inc. v. A & B Roofing, Inc.,
s 24
11 Misc.3d 1078(A), 819 N.Y.S.2d 852, 2006 WL 948125 (Sup.Nass. 2006) ..essseereeer

The Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc.,
478 F. Supp. 2d 340 (E.D.N.Y. 2007) «ees .

Thomas & Betts Corp. v. Ponduit Corp.,
13
65 F.3d 654 (7th Cir. 1995)

Tough Traveler, Lid. v. Outbound Products,
22
60 F.3d 964 (2d Cir. 1995)...

TrafFix Devices, Inc. v. Marketing Displays, Inc.,
eee 13
532 U.S. 23 (U.S. 2001).

Uciechowski v. Ehrlich,
22
221 A.D.2d 866, 634 N.Y.S.2d 251 (3d Dept. 1995)

Vardaris Tech, Inc. v. Paleros, Inc.,
24
49 A.D.3d 631, 853 N.Y.S.2d 601 (2d Dept. 2008) .......+++

Villardi v. Sinclair Refining Co.,
21
147 N.Y.S.2d 269 (Sup. N.Y. 1955)

V.S. Distribs. y. Emkay Trading Corp.,
10
1 A.D.3d 350 (2d Dept. 2003) «0...

Walter Karl, Inc. v. Wood,
19, 20
137 A.D.2d 22, 528 N.Y.S.2d 94 (2d Dept. 1988)

Yurman Design, Inc. v. PAJ, Inc.,
262 F.3d 101 (2d Cir. 2001) 11

Zandman vy. Nissenbaum,
21
53 A.D.2d 837, 385 NYS24 562 (1st Dept. 1976)

Statutes

15 U.S.C. §1056

lv
INTRODUCTION
ts
Plaintiff's application seeking, inter alia, a preliminary injunction restricting defendan

goods from
from doing business, the appointment of a receiver, and recalling defendants’

customers, is meritless as a matter of fact and law. Plaintiff's claims are founded on deceptive

about legal
and flawed arguments which are easily refuted, and exaggerated pronouncements

rights which plaintiff simply does not have. Other than how voluminous plaintiffs papers are,

the only thing remarkable about them is just how groundless are plaintiff's application for

provisional relief and its underlying claims.

At the core of this case is a disgruntled employer desperately trying to bar its former

ignores
employee and his associates from competing against it. Plaintiff, for obvious reasons,

critical facts including that the employee (Bob Arochas) was employed on an at-will basis,
or
without any restrictive covenant, by a garment company which has no proprietary designs

well
styles, no proprietary name, no trade secrets and that does business with retailers that are

known to all.

The decline in business that plaintiff is facing is simply the result of buyers wanting to do
confused
business with “Bob’s company” rather than with plaintiff. They admittedly are not

styles and
about whose goods they are buying; goods that plaintiff concedes are “traditional”

designs in the public domain that can be copied by anyone. In fact, plaintiff's garments

of others.
(principally women’s pants and jackets) are themselves copies of designs and styles

And, how is this known? Because it was Arochas himself, while employed by plaintiff, who

copied these designs and styles from garments sold by others. Plaintiff does not have any

“fair game”
protectable interest in these styles and designs and, as demonstrated below, they are

for anyone in the business -- just as defendants’ garments are!
attributable to plaintiff not
The fact that plaintiff's sales may have diminished is simply

with the same skill,
having replac ed Arochas with any one employee or a team of employees
g prevents plaintiff from hiring
experi ence and relationships with customers that he has. Nothin

at better prices or otherwise
equal or better replacements or delivering a better product

plaintiff's apparent difficulties in
recapturing its customers; its failure to do so is the reason for

selling its products -- not anything that defendants have done.

simply has no protectable
As demonstrated below and in the opposing affidavit, plaintiff

interest that warrants injunctive relief. The loss of business
which it claims to be suffering is of

a protectable trademark or original
its own doing and could readily have been avoided by using

h a long term employment contract)
designs or by having kept Arochas in its employ (e.g., throug

yment setting conducive to
by subjecting him to a restrictive covenant, or by creating an emplo
out of profits and to
his remaining (which would have required plaintiff not to cheat Arochas

to do, thus placing the
oper: ate a legitimate business enterprise) - none of which plaintiff elected
feet.
blame for any losses it allegedly is suffering squarely at its own

why neither the relief
As more fully demonstrated below, there are a host of reasons

are warranted.
sought in the underlying action nor in this interim application

er”. It has no common
First, plaintiff does not have an exclusive right to the name “Ateli
ff offers no proof to support its
law trademark right in that name and for obvious reasons, plainti

claim that the name has secondary meaning. As the United States Patent and Trademark Office

which simply means “al
(“USPTO”) has found on several occasions the word “Atelier”,
arked or
workshop or studio *! is a generic or descriptive term which cannot be tradem

| The American Heritage Dictionary (3d Ed. 1994).
entities listed in the directory
appropriated to the exclusion of others. 2 Thus, there are countless

er” in their name. See printout
of the New York Department of State which have the word “Ateli
Aff. Plaintiff's conclusory
from N.Y. Department of State website, Exhibit F to the Arochas
annually, its use of the
assertion that, in a brief four years, selling a mere $6 million of goods
ary meaning as longtime titans of
word “Atelier” has somehow acquired the same sort of second

industry such as “Gucci” or “Tiffany
1g
Ss is patently absurd. Plaintiff offers absolutely no evidence

- no evidence of moneys spent
to support its exaggerated assertion of secondary meaning

the word has acquired secondary
advertising its “brand”, no consumer surveys showing that

meaning, no media coverage. Nothing! For this reason alone the motion for provisional relief

ark infringement and unfair
should be denied and the underlying causes of action for tradem

acquired secondary meaning
competition based on plaintiff's use of the word “Atelier” having

should be dismissed sua sponte.

the line of clothing
Second, Arochas did not use any proprietary information to create

There is nothing unique or
sold by his new employer, defendant D-Nach Ltd. (“D-Nach”).

they were “create d” by Arochas
original about their styles or designs. In fact, it is significant that
copied from styles of
in exactly the same way he “created” plaintiff's product line: they were
any confidential information
garments sold by others. Suffice it to say that Arochas did not use
nothing proprietary about
or trade secrets to help create D-Nach’s product line and there is simply
outlets, and which were copied
solid colored two-legged pants, which are being sold in retail

g a trademark application for the mark
2 As one examining attorney for the USPTO has held in rejectin
attached definition, is a ‘studio’ or
“Atelier »”. “ATELIER, as translated by the applicant and defined in the
from a designer studio or workshop. It is
‘workshop. > It is aterm that describes the source of the goods as coming
ive. Attached are six (6) registrations with a
widely used in the clothing field and r ‘outinely disclaimed as descript
E to the accompanying Affidavit of Robert
disclaimer of ATELIER used in connection with clothing. » See Exhibit
Arochas (“Arochas Aff.”) (emphasis added).
forth in the email about which
from other manufacturers in the first place! Even the “specs” set
ts of JMB garments, but
plaintiff tries to “make such a big deal” are not even measuremen
to “knock off”. (Arochas Aff.,
rather of garments of a retailer which JMB was itself seeking

available on websites
419). These measurements, which are readily ascertainable and readily
line they related to, and
(Arochas Aff., 19), are not “proprietary” to the owner of the clothing

certainly not proprietary at all to the plaintiff.

have gotten their
Third, plaintiff's unsupported conjecture that defendants could not

begun competing with it
products to market for the fall season unless Arochas had improperly

while still employed is absolute nonsense. Again, as shown in the accompanying Arochas Aff.

g defendants’ clothing line
and the documentary evidence annexed, the process of manufacturin

began after Arochas left plaintiff's employ. Plaintiffs speculation that this production could not

have occurred in such a short time frame is flatly wrong.

ood of success on the
Plaintiff cannot and has not come close to demonstrating a likelih

nary injunctive relief.
merits of any of its claims, one of the mandatory prerequisites for prelimi
contrary, the equities tip
Nor can plaintiff show that the equities tip in its favor since, to the

decisively in defendants’ favor".

competitive
In essence, plaintiff is attempting, through baseless assertions, to obtain a
marketplace, due to defendants’
advantage from this Court that it knows it cannot achieve in the

s. As set forth in his
superior skill and experience and the superior fit and value of its garment

t”.)
3 Exhibit C to the Affidavit of Marcella Law (the “Law Affidavi
of likelihood of ultimate
4 “Preliminary injunctions are .. ‘drastic’ remedies which require a clear showing
is granted and that the
success on the merits, that the movant will s uffer irreparable injury unless the relief sought
v. Di P’ ino, 109 A.D.2d 235, 240, 491
balance of the equities lies in favor of the movant.” Faberge Int'l, Inc.
N.Y.S.2d 345, 349 (Ist Dept. 1985) (citations omitted).
d of his rightful share of
affidavit, Arochas is the wronged party here, having been cheate

ss practices that made its profits
plaintiff's profits by plaintiff's fraudulent accounting and busine

It is ironic for plaintiff to now claim that defendants’ lawful activit
y is
conveniently disappear.

profits during its six years
endangering pl aintiff’s profits when plaintiff has never shown any real
share of profits. It
of existence! Plaintiff's misconduct goes beyond cheating Arochas out of his

improprieties whi ch Arochas
extends to business practices involving immigration and tax

In addition to showing a balance
discovered and complained about while in plaintiff's employ.

it from securing any equitable
of equities in defendants’ favor, plaintiff's “unclean hands” bars

relief.

opposition to plaintiff's
As demonstrated below and in the accompanying affidavits in

the facts to attempt to gain an unfair
motion, plaintiff here has gone beyond playing “loose” with

and unwarr: anted competitive advantage. Plaintiff has completely misportrayed its business, its

it is not entitled both as a
name and its garments in a desperate attempt to secure relief to which

patently meritless that not only
matter of fact and law. As shown below, plaintiff's claims are so
dismissed by the court, sua
must plaintiff's motion be denied but the underlying claims should be

sponte.

PLAINTIFF CANNOT SHOW A
LIKELIHOOD OF SUCCESS ON THE MERITS

Plaintiff Has No Common Law
Trademark in the Name “Atelier”
e proposition,
Plaintiff's case is largely premised on a preposterous and unsupportabl
meaning. What makes this
namely, that plaintiff's “Atelier” mark has acquired secondary

hstanding the volume of
contention even more outrageous and preposterous is that notwit
ted
plaintiffs submission, there is not one iota of evidence to support this patently exaggera

contention!

plaintiff has
All that is presented is the conclusory statement, repeated many times, that

secondary
the right to the “Atelier” mark which it claims (without any support) has acquired

anyone else.
meaning such that the name belongs exclusively to it and cannot be used by

word
While plaintiff seeks to elevate the name “Atelier”, a merely descriptive or generic

“Levi's”, “Versace” or
(it means salon or artist’s studio in French) to the likes of “Gucci”,

“Tiffany
3
Ss , there is simply no basis to even think that this common word has achieved that

protected status with respect to plaintiff's goods.

To even suggest this proposition is absurd, given that:

tions database
there are 186 entities on the NYS Department of State, Division of Corpora

that use the name “Atelier” as part of their name, 97 of which begin with the word

“Atelier”.

Trademark
there are 16 federal registrations registered with the United States Patent and

Office (“USPTO”) for marks in which the word ATELIER forms a part.

twelve of those registrations disclaim the exclusive right to use the word “ATELIER”
ated to
apart from the trademark, recognizing that the word by itself cannot be appropri

the exclusion of others since it is merely a descriptive or generic word.’

(“Disclaimer of
5 See 15 U.S.C. §1056; Trademark Manual of Examining Procedure §1213.03
is comprised in part of matter that, as applied to the
unregistrable components of marks” at 1213.03(b)* If a mark
be disclaime d to permit registration on the
goods/services, is generic or doe: s. not function as a mark, th e matter must
of the Act) or on the Supplemen tal Register.”) . See Miller
Principal Register (including regi: stration under §2(f)
Aff, 45.
applied to the USPTO for
«plaintiff's affiliate, BMJ International Co. Inc. (“BMJ”), in fact
, women's dresses, trousers,
the “Atelier” mark in class 25 for “Wearing apparel namely

on the grounds, inter
skirt, and sportswear”; the application was rejected by the USPTO

alia, that it was confusingly similar to the registered mark
ATELIER BY B. THOMAS

793, a result that
for “Women’s outerwear, namely, jackets and coats ”°, Reg. No. 3,491,
g with respect to
would not have occurred if the word “Atelier” had secondary meanin

plaintiff's goods.’

See accompanying affidavit of L. Miller.
by plaintiff to the
It is thus obvious that the “Atelier” mark is not subject to appropriation
ants) has a right to use the
exclusion of others. No person, including plaintiff (as well as defend
y means “designer studio or
word “atelier” by itself as a trademark because the word literall

, e.g. “Atelier Versace”,
workshop” and connotes designer goods of a very high quality
AIMEE.’
“Classiques Entier Atelier Bella” (used by Nordstrom!), Atelier

proposition that the
And plaintiff, more than anyone, knows that its self-aggrandizing

“Atelier” mark belongs exclusively to it has no merit because:

for less than five
* plaintiff has, by its own admissions, only been using the mark

years;®

e defendant Arochas’s mark “ATELIER LUXE” for “Ladies’ apparel, namely,
blouses, jackets and
ladies’ suits, sportswear, outerwear, tops, bottoms, pants,

“However, the
© Atelier File Wrapper Ser. No. 78760364, Final Office Action sent January 31, 2007:
applied to applicant’s goods, would be likely
examining attorney remains of the opinion that ap| plicant’s mark, when
Trademark Act with the mark in Reg. No. 2,474,842
to cause confusion within the meaning of Section 2(d) of the
B. THOMAS) as to Class 25. This refusal is maintaine
d and made FINAL.” Miller Aff., Exh. D.
(ATELIER BY
7 Miller Aff., see Exhs. G and H.
USPTO for
jeans” went unopposed by plaintiff and has been approved by the

registration on the Principal Register for trademarks;?

there is no proof that plaintiff has spent a “nickel” on advertising;
by its sales
the limited revenues which plaintiff claims have been generated

;
(currently, six million dollars a year with little or no profit)

purchasers (or
there is no survey or comparable evidence to support the claim that

ively with
anyone else for that matter) associate the mark “Atelier” exclus

plaintiff;

Atelier”, and in
plaintiff recently applied to the USPTO to register the mark “Bask

a position completely
its application disclaimed any rights to the word “Atelier” --

contrary to the position it now takes in this litigation!

stinctive mark was
Recently, a claim of secondary meaning for a similarly non-di

used by numero’ us business entities.
summarily rejected, where as here, the name was commonly
2010 U.S. Dist. LEXIS
Shear Contractors, Inc. v. Shear Enterprises & Gen. Contracting,

that mere “conclusory
122173, *21 (N.D.N.Y. November 16, 2010). The court found

me the “heavy burden” and
statements” to support such a claim are insufficient to overco

of secondary meaning:
“rigorous evidentiary requirements” necessary to support a claim

Plaintiff] has offered no tangible evidence to establish secondary
meaning. Aside from the fact that [plaintiff] has been in existence
for twenty-five years, during which time it has continuously used
the “Shear” mark, [plaintiff] offers only conclusory statements and
generalities . .. without providing any evidence of advertising

8 See Plaintiff's Memorandum of Law at 2.
2010. It will register in due course.
® Ser, No. 85002685 approved for registration on November 13,
Miller Aff., 94 fn.1.
expenditures or success, consumer studies, sales number, or other
probative information or data.” (Citations omitted)

Shear, supra, 2010 U.S. Dist. LEXIS 122173 at *10."°
The same result is compelled by New York common law.'' Absent a showing that a

name has distinctive quality or is one which has acquired secondary meaning in the public’s

mind, an unregistered mark is not legally protectable. Allied Maintenance Corp. v. Allied

Mechanical Trades, Inc., 42 N.Y.2d 538, 543, 399 N.Y.S.2d 628, 369 N.E.2d 1162 (1977). As

the New York Court of Appeals explained in Allied Maintenance, supra, merely descriptive

words or generic names are not protectable absent a showing of secondary meaning. Its

explanation of why the word “allied” is merely descriptive and cannot function as a trademark is

onall “fours” with why plaintiff has no protectable right in the word “atelier”:

[I]t is quite apparent that the name "Allied" is a weak trade name.
Rather than being distinctive, arbitrary, fanciful or coined, it is, in
essence, generic or descriptive. Although the name "Allied"

evidentiary
10 “Secondary meaning is an inherently fact-bound determination entailing vigorous
requirements, and the bur: den of proof rests on the party asserting exclusive rights in the mark ... .”. The Jewish
Sephardic Yellow Pages, Ltd. vy. DAG Media, Inc., 478 F.Supp.2d 340, 344 (E.D.N.Y. 2007) (citations, internal
quotations, omitted) (granting summary judgment dismissing trademark in: fringement action where plaintiff failed to
demonstrate that its registered trademark had acquired secondary meaning). Accord Ergotron, Inc. v. Hergo
Ergonomic Support Systems, Ind., 1996 WL 143903, *7 (S.D.N.Y. 1996)(“A party attempting to show that its
ons omitted); Jack
product has acquired secondary meaning has a heavy burden”, which plaintiff did not meet)(citati
2002 U.S. Dist. Lexis 2569! 9, *68 (Mag. Recommendation), adopted
Schwartz Shoes, Inc. v. Skechers U.S.A., Inc.,
2002)(“The burden of proving secondary meaning rests with Plaintiff
by the Court at 233 F.Supp.2d 512 (S.D.N.Y.
requirements .”)(citation s, internal quotations, omitted). The factors to be
and entails vigorous evidentiary
advertising expenditures; (2)
considered in determining whether a mark has acquired secondary meaning include “(1)
the mark; and (6)
consumer studies; (3) sales success; (4) unsolicited media coverage; (5) attempts to plagiarize
Accord Ergotron,
length and exclusivity of the mark’s use.” Jewish Sephardic, supra, 478 F.Supp.2d at 344.
ng secondary
supra, 1996 WL 143903 at *7. “A consumer survey is the most important element in demonstrati
meaning, because such a survey provides direct evidence.” Ergotron, supra, 1996 WL 143903 at *8 (citations
omitted).
Here, plaintiff has not only failed to proffer this “most important” evidence, it has failed to proffer any
evidence of secondary meaning.

4! «qplaintiff’s] claims of trademark infringement and unfair competition under New York State common
law must fail since there is "no difference in the relevant principles under either [state or federal] law.” Shear, supra,
2010 U.S. Dist. LEXIS 122173 at *20 citing Safeway Stores, Inc. v. Safeway Props., Inc., 307 F.2d 495, 497 0.1 (2d
Cir. 1962).
bespeaks of more originality than " maintenance", it is nevertheless
acommon word in English usage today. There is nothing in the
name "Allied Maintenance" itself which indicates that it is an
inherently strong trade name susceptible to dilution. Nor can it be
said that the name Allied Maintenance has acquired a secondary
meaning. Plaintiff seeks to prevent the defendant from using the
word "allied" in any connection with its business.

To establish secondary meaning it must be shown that
through exclusive use and advertising by one entity, a name or
mark has become so associated in the mind of the public with
that entity or its product that it identifies the goods sold by
that entity and distinguishes them from goods sold by others.
A quick glance at the New York City phone directories will reveal
the existence of at least 300 business entities in the metropolitan
area incorporating the word "allied" in their trade name. In light of
the large number of business entities using the generic term allied
in their trade name, it cannot be said that the name "allied" has
acquired a secondary meaning. We remain unconvinced that the
public associates the word "allied" with the plaintiff's cleaning and
maintenance service.

l citations
Allied Maintenance, supra, 42 N.Y.2d at 545-546 (emphasis supplied) (interna

omitted)'?.
including
Similarly, “atelier” is a common word in use by others in the clothing business

owners of federally registered trademarks. It is a name included in the corporate names of almost

said, by itself, to have
two hundred businesses in New York State alone, and cannot possibly be
's
acquired secondary meaning such as to associate that word only with plaintiff or plaintiff

(3d
2 See Camelot Assocs. v. Camelot Design & Dev. LLC, 298 A.D.2d 799, 800 750 N.Y.S.2d 155, 156
“plaintiff did not
Dep’t 2002) (affirming summary judgment t rejecting claim of trademark infringement where
has developed a secondary meaning associated with plaintiff in
produce any evidence that the trade name ‘Camelot’
715
547 N.Y.S.2d 714,
the public's mind”); Buffalo Packaging C ‘orp. v. Buff-Pac, Inc., 155 A.D.2d 877, 878,
establish either that its name was
(N.Y.A.D. 4 Dept.,1989) (affirming dismissal whe re“[p]laintiff's proof failed to
distinctive or had acquired a secondary meaning in the marketplace”); see
also V.S. Distribs. v. Emkay Trading
“the generic
Corp., 1 A.D.3d 35 (0, 350-351 (2d Dep't 2003) (rejecting plai intiff’s claim of unfair competitionlackwhere
any special
Russian word ‘Tvorog’ and the descriptive terms attached t 10 it, ‘Soft Cheese Russian
Style,”
f not have the exclusive right to appropriate these words).
qualities and, therefore, the plaintifdid

10
pervasive
goods. Indeed, plaintiff has not provided an iota of evidence to show that through its

use and advertising, the word has come to be associated with it and it alone."

f assumed the
By choosing a mark that is neither fanciful, unique nor distinctive, plaintif

it did not
risk that others would use the same name. And, certainly, plaintiff very well knew that
application to
have exclusive rights to use of the word “Atelier” since the USPTO rejected its
actually had
trademark that very name — a rejection that would not have occurred had plaintiff

Aff., (8. That the
any cognizable claim to the exclusive use of the word “Atelier”. See Miller

highlighted by
word “Atelier” as used by plaintiff does not have secondary meaning, is further

“Bask Atelier”. In
plaintiff's disclaimer of the same word in its recent application for the mark

to the exclusive use of
connection with that trademark application, plaintiff disclaimed any right
it professes
the word “Atelier” less than a month before it instituted the instant action in which

the exact opposite! See Miller Aff, 419. Plaintiff's disclaimer to the USPTO would not have

contends)!
occurred had its use of the mark “Atelier” acquired secondary meaning (as it now

about any
Since plaintiff has no rights to the name “Atelier” it has no basis to complain

k. Thus,
confusion with defendant’s use of its (soon to be registered) ATELIER LUXE trademar
trademark
not only is there no basis for a preliminary injunction, but plaintiff's claims for
Inc. v.
infringement and unfair competition must be dismissed. Shear, supra. See Sally Gee,

Myra Hogan, Inc., 699 F.2d 621, 624 (2d Cir. 1983) (citing Allied, supra).

or
In sum, plaintiff's conclusory contentions about the mark having secondary meaning
the mark “Atelier
that its “good will” in the mark is being damaged by defendants’ use of

— are patently
Luxe”—a mark which in fact had been approved by the USPTO for registration

have
Nor has plaintiff identified any unique or distinctive non-functional aspects of its trade dress that

11
od of
baseless. Plaintiff has not demonstrated, nor can it, that it has a substantial likeliho

will” in the name
succeeding on its claims based on secondary meaning or damage to its “good

law. As such, the
“Atelier”. In fact, the exact opposite has been established here as a matter of

lawsuit, comes
“house of cards” which plaintiff has attempted to construct, in the form of this

protectable
tumbling down with the demolition of its fundamental premise — that it has a

interest, good will, or exclusive rights to the name “Atelier”.

B. Plaintiff Has No Proprietary Rights in the Apparel It Sells
designs and
Plaintiff's contention that it has proprietary rights in non-distinctive, copied

s as its claim
styles that are in the public domain is as factually and legally flawed and meritles

about the name “atelier” having secondary meaning.

The moving papers make clear that plaintiff's products which are the subject of this

apparel'*.
action, pants and jackets, are unremarkable, non-distinctive, garden variety, everyday

is anything
Plaintiff itself characterizes them as “traditional” and there is no showing that there

unique or proprietary about them. Plaintiff makes no claim that its garments are copyrighted or

putting
copyrightable. In fact, it was Defendant Arochas, who was the one responsible for

for plaintiff,
together the plaintiff's line of clothes. As he explains in his affidavit, while working
he
Arochas simply copied designs and styles of other pants and jackets sold in the stores—t

typical modus operandi for th

Case Info

Judge

Charles Edward Ramos Track Judge’s New Case

Case No.

(Subscribe to View)

Document Filed Date

December 13, 2010

Case Filing Date

October 29, 2010

County

Parties

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