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IP/Entertainment Case Law Updates

Roberts v. Puma North America, Inc

District court denies motion for TRO and preliminary injunction sought by artist, designer and creator of “Roar Mark” (design featuring hand-drawn outlines of sharp teeth) against Puma in trademark and unfair competition action based on Puma’s use of “teeth designs” on apparel, finding plaintiff was unlikely to succeed on his claims because he did not demonstrate likelihood of consumer confusion.

In March 2021, Brooklyn-based artist Christophe Roberts, a designer with a following in the basketball, hip-hop and sneaker communities, filed suit against athletic apparel company Puma North America, Inc., asserting federal and state law trademark and unfair competition claims and a state law dilution claim. Roberts claims that Puma infringed on his “Roar Mark,” a design featuring hand-drawn outlines of sharp, animal-like teeth, by selling apparel with designs he alleges are confusingly similar to the Roar Mark. Roberts sought a temporary restraining order and preliminary injunction to prevent Puma from using his designs in the promotion, marketing, advertising and sale of its products and services. Finding that Roberts failed to establish sufficiently serious questions going to the merits of his claims or a likelihood of success on the merits, the district court denied the motion.

Roberts alleged that he began using the Roar Mark in 2013 and that it was registered in 2019 for use on T-shirts, hoodies, and jackets. According to Roberts, Puma began selling clothing bearing hand-drawn teeth designs confusingly similar to the Roar Mark in mid-2018, and in 2019, hip-hop mogul Jay-Z—a brand ambassador for Puma—was seen at an NBA Finals game wearing Puma apparel featuring one of the teeth designs. Roberts retained an attorney who sent a cease-and-desist letter. Roberts noticed Puma advertising campaigns using teeth designs in October 2020, prompting him to bring claims for trademark infringement and unfair competition under federal and New York law and a claim for trademark dilution under New York law. 

The district court observed that to prevail on his motion, Roberts must show either a likelihood of success on the merits of his claims or sufficiently serious questions going to the merits. Recognizing that registration of the Roar Mark constituted prima facie evidence of its validity, the court’s analysis turned to whether Roberts could demonstrate that Puma’s alleged use of the Roar Mark was likely to cause consumer confusion under the Second Circuit’s multi-factor Polaroid test.

As a threshold matter, the court determined that Roberts alleged two of the types of consumer confusion that are cognizable under the Lanham Act: (i) direct source confusion (that a consumer would believe Puma’s apparel was produced by Roberts) and (ii) direct affiliative confusion (that a consumer would believe Puma’s apparel was endorsed by or affiliated with Roberts). The court rejected Roberts’ argument that Puma’s acts were likely to cause reverse confusion, i.e., confusion that Roberts’ apparel is sold by or affiliated with Puma, for lack of evidence.

The district court applied the eight Polaroid factors. Starting with the strength of the Roar Mark, the court held that it was an “arbitrary mark”—a mark that applies a common word or symbol in an unfamiliar way—with respect to apparel and basketball, thus making it “robust[ly]” inherently distinctive. Thus, the strength of the mark factor weighed in favor of Roberts.

The court’s analysis of the similarity of the marks was complicated by the fact that Puma’s use of teeth designs varied across its products and advertising, “some of which more closely resemble the Roar Mark than others.” Noting that Roberts was seeking a preliminary injunction as to all of Puma’s teeth designs—not just those that most closely resemble the Roar Mark—the court concluded that due to the variety of Puma’s teeth designs, it was unlikely that a consumer would believe that they were produced by or affiliated with Roberts, who uses a single, consistent design. Thus, the court held, the second Polaroid factor weighed against Roberts.

The third Polaroid factor “concerns whether and to what extent the two products compete with each other.” Recognizing that both Roberts and Puma sell clothing, the court nevertheless distinguished between the channels in which their respective goods are sold, with Puma selling goods through Puma-branded stores, on its website and through retail partners, and Roberts selling goods only on his own website and occasionally at art installations and events. Accordingly, the competitive proximity factor weighed against Roberts.

The fourth Polaroid factor evaluates the likelihood that the senior user (here, Roberts) will “bridge the gap” by expanding into related fields that compete with the junior user. Roberts argued that he was part of a “national brand spotlight” for a water bottle brand and that he was working with Nike to use the Roar Mark on a line of consumer electronics, but the court deemed these to be speculative and outside of the relevant field—apparel. The fourth factor therefore weighed against Roberts.

On the fifth Polaroid factor, evidence of actual confusion, Roberts submitted evidence that some of his social media followers and two of his customers had believed that Jay-Z’s Puma attire at the NBA Finals was made by or affiliated with Roberts. However, the court held, actual confusion must be assessed by looking to the consuming public as a whole—not individuals already familiar with plaintiff’s marks. Moreover, the court found no evidence of actual confusion as to the majority of Puma’s teeth designs, ultimately holding that this factor weighed against Roberts.

The sixth Polaroid factor examines whether defendant adopted its mark in bad faith, i.e., “with the intention of capitalizing on plaintiff’s reputation and goodwill and any confusion between his and the senior user’s product.” Roberts claimed that an artist who had previously worked with him on an art installation was later hired by Puma and that Puma continued to use the teeth designs after receiving Roberts’ cease-and-desist letter, demonstrating Puma’s bad faith. The court was not persuaded and held that the bad faith factor weighed against Roberts because Puma had conducted a trademark search, its teeth designs were consistent with its general feline theme, and it would have had little to gain by attempting to capitalize on Roberts’ “minimal commercial reputation.”

Looking to the comparative quality of the products, the court found that the seventh Polaroid factor weighed against Roberts, concluding that, even assuming Puma’s products were of a lower quality than Roberts’ “high-end street wear brand,” as Roberts urged, consumers would be less likely to assume that Puma’s “mass-produced” products were created by or affiliated with a high-end artist like Roberts—not more likely.

Finally, the eighth Polaroid factor, the “sophistication of the consumer,” turns on the general rule that “the more sophisticated the purchaser, the less likely he or she will be confused by the presence of similar marks in the marketplace.” Finding Puma’s apparel to be relatively inexpensive and its consumers to be unsophisticated while noting the lack of evidence presented on the issue, the court held that this factor weighed slightly in favor of Roberts.

Balancing the Polaroid factors, all but two of which either favored Puma or were neutral, the court concluded that Puma’s use of the teeth designs was not likely to cause consumer confusion with the Roar Mark. The court’s analysis of Roberts’ federal claims informed its analysis of Roberts’ state law claims, and the court held that Roberts failed to establish a likelihood of success on, or substantial questions going to, the merits of those claims. It further held that Roberts was unlikely to prevail on his state law dilution claim because Puma’s teeth marks were not “substantially similar” to—and thus insufficiently similar to dilute—the Roar Mark. Accordingly, the court denied Roberts’ motion for a TRO and preliminary injunction.

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