Use of “Tastemakers” in connection with GREY GOOSE® vodka advertising

In the face of accusations of trademark infringement over the use of the term “Tastemakers” in connection with a GREY GOOSE® vodka advertising campaign, plaintiffs and Fitzpatrick clients Advance Magazine Publishers, Inc., d/b/a The Condé Nast Publications, Bacardi & Co., Ltd., Sidney Frank Importing Company, Inc., and EventQuest, Inc., brought a declaratory judgment action under 28 U.S.C. § 2201, seeking to have the United States District Court for the Southern District of New York declare that their use of the term “Tastemakers” did not infringe any trademark rights that defendants Jay Norris, Norris/Nelson Entertainment, Inc., and Tastemakers Media, L.L.C., had in the term “Tastemakers.” On Plaintiff’s motion for summary judgment, the court agreed.

Plaintiff Advance Magazine Publishers, Inc., d/b/a The Condé Nast Publications (“Condé Nast”), is a well-known publisher of such famous magazines as Vogue, GQ, and The New Yorker. As part of its business, Condé Nast sells advertising space in its publications to companies such as Bacardi and Sidney Frank Importing, the companies responsible for importing and selling GREY GOOSE® vodka in the United States. In late 2003-early 2004, Condé Nast, in conjunction with Sidney Frank and Bacardi created a GREY GOOSE® advertising campaign called the “GREY GOOSE® Tastemakers” campaign. The campaign featured several elements including a bartender contest designed to identify new and exciting GREY GOOSE® cocktails, an “in-book” magazine insert celebrating the bartenders that had created the winning drinks; and a series of parties in the bars where the winning bartenders worked. The bartender contest was conducted in the spring of 2004, and thereafter, throughout the summer and fall of 2004, plaintiff EventQuest worked with Condé Nast to plan and execute about 50 invitation-only parties for the finalist bartenders and their guests. The campaign culminated with a “Gala” event in Miami in December, 2004.

In the fall of 2004, upon learning of the GREY GOOSE® Tastemakers campaign, Defendant Jay Norris in conjunction with his business entities, sent a cease and desist letter to Condé Nast alleging that the use of the term “Tastemakers” in conjunction with the GREY GOOSE® campaign infringed certain trademark rights allegedly owned by Mr. Norris. The Norris entities alleged that sporadically in the late- 1990’s, Mr. Norris had published a pamphlet designed to inform readers what, in his opinion, was “hot,” and to identify the bars where it was hip to “be seen.” In conjunction with his pamphlet Mr. Norris sometimes arranged parties at his recommended venues, which parties attracted what he claimed to be “A List” guests. Deposition testimony established that Mr. Norris chose the term “Tastemakers” to describe his readership and associated business, and that he chose this term because it signaled to his readership that he was offering “good taste”. Mr. Norris also filed a trademark application for the mark “Tastemakers NYC (stylized).” Although the application matured into a registration, the registration was later cancelled because Mr. Norris failed to file the necessary declaration of ongoing use.

Plaintiffs’ motion for summary judgment was based on two theories. First, that the Norris entities did not have any protectable trademark rights in the term “Tastemakers”; and second, that even if they did have some trademark rights, the use of the term “Tastemakers” by Plaintiffs in conjunction with the GREY GOOSE® Tastemakers advertising campaign was not likely to give rise to consumer confusion.

The court elected not to directly address Plaintiffs’ first theory because it found that there was no genuine issue of material fact with respect to the second. The court began its analysis by pointing out that the party claiming trademark rights – in this case the Defendants because of the declaratory nature of the action – bears the burden of demonstrating the probability of confusion by a preponderance of the evidence. The court then noted that in assessing likelihood of confusion, the applicable Polaroid factors must be reviewed, but explained that in the summary judgment context a triable issue of fact with respect to an individual Polaroid factor, while relevant, does not “preclude a finding that summary judgment is appropriate with respect to the existence of a likelihood of confusion.”

Turning to the Polaroid factors, the court concluded that Defendants’ “Tastemakers” mark was not inherently distinctive but rather merely descriptive and “decidedly weak” because “the term ‘Tastemaker’ was used to describe both Defendants’ target audience and the general lifestyle concept [Defendants] seek to market.” As to whether the term had acquired any “marketplace distinctiveness” or secondary meaning, in view of Defendants’ steadily decreasing use of the term over the years since it was first introduced, and in view of the lack of any substantive evidence of secondary meaning (e.g., consumer surveys or actual revenue derived from defendants’ advertising of the mark), the court concluded it did not.

With respect to the similarities between Defendants’ “Tastemakers” and Plaintiffs’ “GREY GOOSE® Tastemakers,” the court explained that the comparison had to be made in the context of their “‘overall impression’ including the context in which they are found and the totality of factors that could cause confusion among prospective purchasers.” In that light, the court found that in addition to the differences in the manner in which the parties actually used their respective terms, the prominent use by Plaintiffs of the well-known GREY GOOSE® brand name was enough to “render[ ] the and parties’ usages dissimilar such that consumer confusion was highly unlikely.”

Turning to the “proximity of the products” factor, the court was not persuaded that the parties’ products were competitive. While Defendants had in the past published a pamphlet under the name “Tastemakers NYC”, that pamphlet had not been printed for at least two years prior to Plaintiffs’ use of the term “Tastemakers” in connection with the bartender contest and in Condé Nast’s publications. The court found no basis for concluding “competitive proximity” for products not offered within two years of each other. Moreover, the court held that “the mere fact that both [parties’] products appear in print is far too broad a criterion to serve as a meaningful point of comparison.” While the court found some potential overlap between Defendants’ prior practice of organizing parties for “A List” guests in various “hot” venues on the one hand, and Plaintiffs’ parties designed to recognize the winning bartenders in the GREY GOOSE® Tastemakers contest on the other, the court ultimately concluded that “the strength of the GREY GOOSE® brand name made it unlikely that consumers would be confused by the use of ‘Tastemakers’ in connection with the campaign.”

Defendants’ tried, unsuccessfully, to argue that there had been actual confusion between the parties’ respective “Tastemakers” names and thus that confusion was likely. Specifically, Defendants put forth testimony from four witnesses whom Defendants’ argued were confused by Plaintiffs’ GREY GOOSE® Tastemakers campaign. As to two of these witnesses, the court found that their testimony was not evidence of confusion, but rather mere inquiry, explaining that “inquiries about the relationship between the owner of a mark and an alleged infringer do not amount to actual confusion. Indeed, such inquiries are arguably premised upon the lack of confusion between the products such as to inspire the inquiry itself.” As to the other witnesses, both of whom were long-time business and personal acquaintances of Norris, the court found that such evidence was “insufficient to suggest actual confusion.”

Finally, the court examined the key remaining applicable Polaroid factor and found no evidence of bad faith on the part of the Plaintiffs. In that regard, the court found that Plaintiffs had no prior knowledge of Defendants’ activities under the “Tastemakers” name, and that Plaintiffs had had a reasonable basis for choosing the term – GREY GOOSE® was known by the slogan “World’s Best Tasting Vodka”, and the term “Tastemakers” refers to one of Condé Nast’s key targets for the campaign, bartenders. Although Defendants attempted to argue that bad faith was evidenced by the fact that no one at Condé Nast (or any of the Plaintiffs) could remember exactly who came up with the idea to use “Tastemakers”, the court held that this fact alone could not establish bad faith.

After weighing the applicable Polaroid factors, the court found that the Defendants had “not presented evidence support a finding that any of the Polaroid factors favors them”, and went on to hold that there was “no disputed issue of material fact as to whether there was any probability of confusion . . ..”