New York City Triathlon v. Nyc Triathlon Club

Citations: 704 F. Supp. 2d 305; 2010 U.S. Dist. LEXIS 45081; 2010 WL 808885Docket: 10 Civ. 1464(CM)

Court: District Court, S.D. New York; May 4, 2010; Federal District Court

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Plaintiff The New York City Triathlon, LLC seeks a preliminary injunction against Defendant NYC Triathlon Club to prevent the use of names and trademarks that may cause confusion with Plaintiff's established marks, including "NYC Triathlon" and "NYC TRI." The NYC Triathlon is a summer Olympic distance event held annually since 2001, featuring a 1500-meter swim, 40-kilometer bike ride, and 10-kilometer run, attracting significant participation and media attention. In 2010, over 20,000 entrants vied for 5600 spots, which sold out rapidly, while around 250,000 spectators attended the race. The event has garnered extensive media coverage and is sanctioned by USA Triathlon, adhering to safety standards. Plaintiff engages 200 staff, numerous contractors, and 1000 volunteers to manage the race logistics and has received praise from participants. The event has been supported by major sponsors, including Nautica, Ford, and Marriott, and has a substantial international viewership.

Defendant SBR Multisports, Inc., owned by Christophe Vandaele, was a sponsor of the NYC Triathlon from 2005-2008 and participated in the race Expo in 2009. On January 25, 2010, SBR announced its name change from "SBR Triathlon Club" to "NYC Triathlon Club," effective January 1, 2010. Prior to this, Plaintiff sent a cease and desist letter on January 8, 2010, requesting a response by January 15, 2010, but Defendant did not reply. Consequently, Plaintiff initiated legal action on February 22, 2010, seeking injunctive relief to protect its trademark and goodwill under Section 43(a) of the Lanham Act and New York law.

To obtain a preliminary injunction, a plaintiff must demonstrate a likelihood of success on the merits, potential for irreparable harm without the injunction, a favorable balance of equities, and that the injunction serves the public interest. The standard for irreparable harm requires that harm be likely, not merely possible. Additionally, the Second Circuit allows for preliminary injunctions based on either a likelihood of success or serious questions regarding the merits, provided that the balance of hardships favors the movant.

Plaintiff's Verified Complaint includes seven claims against Defendant regarding the use of "NYC Triathlon Club," including trademark infringement and unfair competition under both the Lanham Act and New York law. The court finds that Plaintiff is likely to succeed on the merits of these claims. Under Section 43(a) of the Lanham Act, a plaintiff must prove it possesses a valid trademark and that the defendant's use is likely to cause confusion in the marketplace.

The Second Circuit established eight Polaroid factors to evaluate the likelihood of consumer confusion in trademark cases: (1) strength of the plaintiff's mark; (2) similarity of the marks; (3) competitive proximity of products/services; (4) likelihood of the plaintiff "bridging the gap" to similar products/services; (5) actual confusion; (6) good faith of the defendant; (7) quality of the defendant's offerings; and (8) buyer sophistication. These factors apply to both competing and non-competing goods, with no single factor being decisive. 

In the context of assessing the NYC TRIATHLON Marks, which are descriptive and thus require "secondary meaning" for protection, several factors are relevant: advertising expenditures, sales success, unsolicited media coverage, attempts at plagiarism, length and exclusivity of use, and consumer studies linking the mark to its source. The NYC TRIATHLON Marks have been used exclusively by the plaintiff for ten years, demonstrating secondary meaning through significant protective measures, including requiring sponsor approval for mark usage and filing trademark applications. The event has seen impressive sales performance, regularly selling out quickly and generating millions in revenue, outperforming other similar races significantly.

Plaintiff generates substantial revenue from prominent sponsors, including Ford, Nautica, Gatorade, JetBlue, Dasani, News Corp, and others, indicating the strength of the NYC TRIATHLON Marks. Sponsorship revenue is reported to be twenty times higher than the average for Olympic distance triathlons. The event garners extensive media coverage across national and local television, radio, print, and online platforms, enhancing its visibility and recognition. It has been featured on major networks like CNN, NBC, and CBS, along with coverage in leading newspapers such as The New York Times and USA Today.

The NYC Triathlon’s promotion by sponsors and the organizer's commitment to participant engagement, evidenced by personalized communications, contribute to the Marks’ consumer recognition. Positive feedback from participants highlights the event's reputation. The organizer's efforts to connect with triathlon clubs further reinforce this recognition. 

Defendant's actions, including discontinuing sponsorship and rebranding his club as "NYC Triathlon Club," suggest an attempt to exploit Plaintiff’s established goodwill. This misappropriation underscores the secondary meaning of Plaintiff’s Marks. The NYC TRIATHLON Marks, having achieved significant recognition and goodwill, are deemed strong trademarks deserving protection. This aligns with the first element of a claim under Section 43(a) of the Lanham Act and supports a finding of likely confusion under the Polaroid analysis.

In T. Anthony, Ltd. v. Malletier, the court evaluated the similarity between the defendant's mark "NYC Triathlon Club" and the plaintiff's NYC TRIATHLON Marks. The court emphasized that similarity is assessed based on the overall impression on consumers, considering factors such as appearance, sound, and meaning. The central part of both marks—variations of "NYC Triathlon"—is identical, and the addition of the term "Club" does not diminish the likelihood of confusion; it may imply an affiliation with the plaintiff's event. Legal precedents are cited where courts found that adding descriptive terms did not alleviate confusion. 

Furthermore, the court examined the competitive proximity between the services offered by both parties. They operate within the same market, targeting the same consumers interested in endurance sports, and share common sponsors. The overlap in advertising channels and consumer classes suggests a strong likelihood that consumers might mistakenly associate the two marks with a common source. Overall, both factors—similarity of marks and competitive proximity—support a finding of likely confusion.

The parties’ services target the same audience, specifically individuals and organizations interested in triathlon events. There is agreement that the services of a triathlon race and a training club for triathletes are complementary. Both parties primarily engage customers online. The NYC Triathlon's popularity and the prevalence of triathlon clubs suggest a high likelihood that triathletes and sponsors might mistakenly believe that the Plaintiff has authorized a triathlon club under its name, particularly in the New York City area, given the New York Road Runners' long-standing operation of the NYC Marathon. 

Additionally, the Plaintiff has begun to associate the NYC TRIATHLON Marks with a training club through its partnership with Reebok, further increasing the proximity of their offerings. The "bridging the gap" analysis indicates a likelihood that the Plaintiff could enter the market for triathlon clubs, which is already fulfilled since both parties operate in the same trade channel. The Plaintiff has contemplated establishing a USAT-registered triathlon club under the NYC TRIATHLON Marks, akin to the New York Road Runners’ relationship with the NYC Marathon, but this plan has been hindered by the Defendant's alleged misappropriation, which could lead to consumer confusion over multiple clubs using similar names.

The fifth factor of the Polaroid test, concerning evidence of actual confusion, also supports the Plaintiff's position. Although actual confusion is challenging to demonstrate, the Lanham Act only requires a likelihood of confusion regarding source. This is relevant given that the Defendant's service has been in the market for a short time. The absence of documented actual confusion does not negate the potential for confusion, especially since the Defendant's NYC Triathlon Club was announced on January 25, 2010, and confusion has already been reported. For instance, an email from the president of the Westchester Triathlon Club expressed confusion regarding the club's ownership, believing it was operated by the Plaintiff, which demonstrates the potential for consumer misunderstanding.

Confusion has arisen from Defendant's use of the NYC TRIATHLON Marks and Plaintiff's trade name, likely persisting as Defendant continues to promote under the NYC Triathlon Club name. Historical instances of confusion bolster the likelihood of future confusion, as recognized by the Second Circuit. The "actual confusion" factor favors finding a likelihood of confusion.

Regarding good faith, the analysis considers whether Defendant aimed to capitalize on Plaintiff's reputation. Defendant's awareness of Plaintiff's mark suggests bad faith, particularly given Defendant's lack of a credible explanation for adopting the mark. After years of operating as SBR and SBR Triathlon Club and sponsoring Plaintiff's event, Defendant opted to change its name to that of Plaintiff's without paying the sponsorship fee, demonstrating intent to exploit Plaintiff's goodwill. This is further evidenced by Defendant's failure to respond to Plaintiff's cease-and-desist letter and a history of bad faith actions, such as attempting to associate with the Ironman® trademark after receiving a cease-and-desist letter from its owner.

The quality of Defendant's services also raises concerns, as Plaintiff argues that Defendant has a pattern of substandard practices which could harm Plaintiff's reputation. Evidence includes unauthorized use of Plaintiff's brand for merchandise sales and failure to honor a raffle prize commitment during the 2009 NYC Triathlon. Overall, these factors indicate a strong likelihood of confusion due to Defendant's actions and intentions.

Repeated attempts by a raffle winner to collect his prize led to complaints about SBR's poor customer service, highlighting feelings of neglect when not purchasing high-ticket items. The winner expressed frustration over being disregarded for months. Additionally, concerns arose regarding Defendant's "Iron Race," which planned to proceed without necessary safety measures. Such practices could harm Plaintiff's longstanding reputation. 

The sophistication of consumers in the relevant market, which includes both elite and amateur triathletes, is critical. Even sophisticated consumers may experience confusion when faced with similar marks and services. Evidence shows that even experienced triathletes have been confused about the affiliation between Plaintiff and Defendant's clubs. The Polaroid factors indicate a likelihood of confusion, suggesting that Plaintiff is likely to succeed in its claim under Section 43(a) of the Lanham Act.

The Trademark Dilution Revision Act (TDRA) allows owners of famous marks to seek injunctions against uses likely to cause dilution, irrespective of confusion or competition. To prevail, a plaintiff must prove the fame of the senior mark, the defendant's use of a junior mark in commerce after the senior mark became famous, and a likelihood of dilution. Plaintiff meets these criteria, establishing that its NYC TRIATHLON Marks are widely recognized, thus fulfilling the TDRA's definition of a famous mark.

The statute provides four non-exclusive factors for determining the fame of a trademark: (i) the duration and scope of advertising and publicity, (ii) the volume and geographic extent of sales, (iii) actual recognition of the mark, and (iv) whether the mark is registered (15 U.S.C. 1125(c)(2)(A)(i-iv)). Although the Plaintiff's trademark registrations are pending, ten years of exclusive use, extensive publicity, and widespread recognition support a finding of fame. The NYC Triathlon, promoted nationally and internationally since 2001, has received extensive media coverage from major outlets, including ABC, NBC, CBS, and The New York Times. It has been televised globally, reaching over a billion viewers, and attracts significant international participation.

The event’s popularity is underscored by its quick sell-out of entry spots, with 20,000 applicants for 5,600 spots, and generating entry revenue significantly higher than other events. The Plaintiff's sponsors are well-known brands, and the event raises approximately $2 million annually for charities. With around 250,000 spectators and numerous positive accolades, the marks are clearly well recognized.

Regarding the timing of the use of the mark, the Defendant has been using the NYC Triathlon Club name since January 1, 2010, nearly ten years after the NYC Triathlon became famous, which supports a finding of likely dilution under 15 U.S.C. 1125(c)(1). Under the Trademark Dilution Revision Act (TDRA), a trademark claimant only needs to show a likelihood of dilution, which can occur through blurring or tarnishment (15 U.S.C. 1125(c)(1)).

Blurring is defined as the impairment of a famous mark's distinctiveness due to similarity with another mark, regardless of actual confusion or competition (15 U.S.C. 1125(c)). It occurs when a mark risks losing its unique identifier status because of another's use. The statute outlines six factors for courts to assess potential blurring: (i) similarity between marks, (ii) distinctiveness of the famous mark, (iii) exclusivity of use by the famous mark's owner, (iv) recognition of the famous mark, (v) intent to associate with the famous mark, and (vi) actual association with the famous mark.

In this case, the Defendant's name only slightly differs from the Plaintiff's established marks, indicating minimal differentiation. The Plaintiff's marks have achieved a high degree of distinctiveness due to secondary meaning and exclusive use over ten years, with the Plaintiff actively protecting its marks against unauthorized use. The Defendant's name change suggests an intent to associate with the well-known NYC Triathlon, and evidence indicates that members of the triathlon community associate the Defendant's club with the Plaintiff's operations. 

The likelihood of dilution by blurring is strong, as all factors favor the Plaintiff’s claim. Additionally, dilution by tarnishment occurs when a mark's reputation is harmed due to similarity with another mark. The Defendant’s negative reputation for poor customer service increases the risk of tarnishment for the NYC TRIATHLON Mark. Therefore, the Plaintiff is likely to succeed on both dilution claims. The document also references the Anticybersquatting Consumer Protection Act (ACPA), which addresses related issues.

Section 43(d) of the Lanham Act targets cybersquatting, defined as the bad faith registration and use of distinctive trademarks as domain names to profit from the associated goodwill. To establish a claim under the Anticybersquatting Consumer Protection Act (ACPA), a plaintiff must prove three elements: (1) the marks were distinctive when the domain name was registered, (2) the domain name is identical or confusingly similar to the plaintiff's mark, and (3) the defendant acted with bad faith intent to profit from the mark. The NYC TRIATHLON Marks, established since 2001, were distinctive at the time Vandaele registered the domain name www.nyctriclub.com in March 2009, which is nearly identical and confusingly similar to the NYC TRIATHLON Marks. The defendant lacks intellectual property rights to the domain, as they did not use it in commerce before registration, and the NYC Triathlon Club was formed nearly a year after. The defendant does not engage in fair or noncommercial use and instead uses the mark for profit, with the intent to mislead consumers and harm the plaintiff's goodwill. Thus, the plaintiff has demonstrated a likelihood of success on the cybersquatting claim.

Under New York common law, unfair competition involves bad faith misappropriation of another's efforts, leading to confusion about the origin of goods. To prove unfair competition, a plaintiff must show (1) a likelihood of confusion and (2) the defendant's bad faith. The standard for judging likelihood of confusion in unfair competition claims aligns with that of the Lanham Act.

Plaintiff has established a likelihood of success on its unfair competition claim due to Defendant's bad faith actions and the demonstrated confusion between the parties' marks. Plaintiff has invested significant resources into building the NYC Triathlon into a respected international event, garnering substantial goodwill and a positive reputation over ten years of operation. Defendant's appropriation of Plaintiff's trade name and marks undermines this goodwill and compromises Plaintiff's ability to control its reputation, resulting in irreparable harm that cannot be quantified. Legal precedent supports that a trademark owner's loss of goodwill constitutes irreparable harm sufficient to warrant a preliminary injunction. The Second Circuit's case law indicates that a finding of likely confusion inherently establishes irreparable harm. Additionally, Plaintiff is entitled to a presumption of irreparable harm due to the likelihood of success on both trademark infringement and dilution claims.

The balance of hardships favors Plaintiff, as the harm it suffers from Defendant's actions far outweighs any potential harm to Defendant from an injunction. Plaintiff has been the sole operator of the NYC Triathlon since 2001 and has invested considerable effort into developing its brand. In contrast, Defendant has only recently adopted the "NYC Triathlon Club" name, previously known as SBR Triathlon Club, and could easily choose a different, non-infringing name.

Enjoining the Defendant from using the Plaintiff's trademark will not prevent the Defendant from selling its products or services, as the Defendant has only recently adopted the disputed mark and has established little goodwill associated with it. The Plaintiff faces irreparable harm that significantly outweighs any potential harm to the Defendant from a preliminary injunction requiring a name change. In a relevant case, *Stern's Miracle-Gro Products, Inc. v. Shark Products, Inc.*, the court favored the plaintiff, noting the defendant's limited use of the mark and availability of alternative names. The Plaintiff invested approximately $100 million in establishing the goodwill of its mark, creating a strong secondary meaning. The hardships favor the Plaintiff due to its long-term and well-known use of the NYC TRIATHLON Marks, while the Defendant has not used the name "NYC Triathlon Club" for long and has little goodwill. The Plaintiff's motion for a preliminary injunction against the Defendant's trademark infringement, dilution, cybersquatting, and unfair competition was granted. The Defendant failed to appear in court, resulting in a default judgment on March 9, 2010, that preliminarily enjoined the Defendant from using any confusingly similar name or mark. Following this, the Plaintiff filed a motion to enforce the injunction, claiming the Defendant's new name "Triathlon Club NYC" still infringes on the Plaintiff's Marks due to its confusing similarity.

Plaintiff claims that Defendant has willfully ignored the Court's order by continuing to use infringing marks on social media platforms, particularly Twitter. Additionally, Defendant allegedly breached a prior injunction by promoting its club under the name "New York City Triathlon Club" at the Multisport World Conference and Expo, a name the Court prohibited on March 9, 2010. In response, Defendant, represented by counsel, opposes Plaintiff's motion and seeks to vacate the preliminary injunction. The Court grants Plaintiff's motion to enforce the injunction and denies Defendant's motion to vacate. 

The district court has comprehensive authority over its interlocutory orders, including preliminary injunctions, as outlined in Fed. R. Civ. P. 60(b). It retains the equitable discretion to alter or revoke these orders. In the Second Circuit, a party requesting a preliminary injunction traditionally must show that it will face irreparable harm without such relief and either demonstrate a likely success on the merits or present serious questions regarding the merits that justify litigation, provided the balance of hardships favors the moving party. However, recent case law, specifically eBay, Inc. v. MercExchange, L.L.C. and Salinger v. Colting, has refined this standard, mandating that a plaintiff must establish irreparable injury, inadequacy of monetary damages, a favorable balance of hardships, and no detriment to public interest for a preliminary injunction to be granted. The Court adopts the eBay and Salinger standards for assessing Plaintiff's claims related to trademark infringement.

A trademark, as defined by 15 U.S.C. § 1127, is any word, name, symbol, or device used to identify and distinguish goods, indicating their source. For registration, a mark must effectively distinguish the applicant's goods from others, per 15 U.S.C. § 1052. Marks are categorized by distinctiveness: 1) generic, 2) descriptive, 3) suggestive, 4) arbitrary, and 5) fanciful. Only the last three categories are inherently distinctive and thus entitled to protection, while generic marks cannot be registered. Descriptive marks require proof of "secondary meaning" to qualify for protection, established either through consumer perception or trademark registration.

To succeed in a trademark infringement claim under the Lanham Act, a plaintiff must demonstrate that their mark is protectable and that there is a likelihood of confusion among consumers regarding source or sponsorship. Confusion can occur even if consumers do not believe the mark's owner produced the goods, as long as they think the owner endorsed the use of the mark.

In this case, the Defendant challenges the validity of the Plaintiff's Marks on three grounds: claiming they are generic rather than descriptive, asserting they lack secondary meaning if considered descriptive, and arguing that there is no likelihood of confusion between the Marks. Each of these claims is countered, with the Plaintiff's Marks deemed descriptive and protectable, as geographic terms paired with generic terms are classified as descriptive, not generic.

The court case New York Stock Exchange, Inc. v. New York, New York Hotel, LLC establishes that the term "New York" combined with the generic phrase "stock exchange" is descriptive. The United States Patent and Trademark Office allows registration of descriptive terms like "LOS ANGELES TRIATHLON" and "CHICAGO TRIATHLON," which are not protectable if solely generic. The plaintiff's marks have acquired secondary meaning, countering the defendant's claims. To assess the secondary meaning of descriptive marks, the Second Circuit considers several factors: advertising expenditures, sales success, media coverage, attempts at plagiarism, exclusivity of use, and consumer studies linking the name to a source.

The court noted that substantial evidence supports the conclusion that the plaintiff's marks have acquired secondary meaning. This year marks the tenth anniversary of the New York City Triathlon, the only Olympic distance triathlon in New York City. Prior to the defendant's name change, the plaintiff was the exclusive user of the NYC TRIATHLON Marks throughout the event's decade-long history. The plaintiff has actively safeguarded its marks, requiring sponsor approval for any use and policing unauthorized use. Trademark applications for the NYC TRIATHLON Marks are pending with the PTO.

The race has received extensive media coverage across major networks and publications, and its principal, John Korff, has been frequently featured in the press. The plaintiff has executed a large-scale advertising campaign across various platforms, contributing to the event's commercial success, which includes selling out all 5,600 spots in a mere 6 minutes and 43 seconds, grossing approximately $2.3 million annually. The event's widespread appeal, with over 60 million viewers in the U.S. and over a billion worldwide, underscores the strength of the "New York City Triathlon" brand. The defendant's attempt to plagiarize the plaintiff's name further emphasizes the brand's value, supporting the argument for secondary meaning.

Plaintiff's extensive list of corporate sponsors, including Dasani, Delta Airlines, Visa, and others, supports the assertion that the New York City Triathlon is a leading global event with significant name recognition. The Defendant contends that this evidence fails to establish secondary meaning due to two reasons: (1) the Plaintiff's marks have not been exclusive due to coexistence with the New York Triathlon Club, and (2) the Plaintiff is not the sole sponsor of the race as other corporate sponsors have their marks associated with the event. The Court rejects these arguments, stating that establishing secondary meaning only requires the ordinary buyer to associate the mark with a single source, regardless of the source's anonymity. The existence of the New York City Triathlon LLC does not negate the finding of secondary meaning. Additionally, the race's various names do not dilute its origin, as it is predominantly referred to as the "New York City Triathlon." The Court cites precedents indicating that coexisting similar marks and private label sales do not undermine secondary meaning. The Plaintiff has promoted its marks exclusively for a decade, and substantial evidence of public and media recognition supports its claims. The coexistence with the New York Triathlon Club does not eliminate the Plaintiff's secondary meaning, as owners are not obligated to police all related uses to maintain their marks. This is exemplified by the Playboy case, where litigation was permitted against a similarly named publication despite the plaintiff's inaction against others.

New York City Triathlon LLC has not initiated legal action against the New York Triathlon Club (NYTC), which operates primarily in upstate New York and is not considered a competitor. The plaintiff asserts there is no confusion between the two organizations because NYTC hosts only one race in Central Park and does not promote its events extensively, unlike the plaintiff. The names of the organizations differ significantly, with consumers likely interpreting "New York Triathlon Club" as referring to a statewide entity rather than New York City. The court acknowledges that while the prefix "New York" could be ambiguous, NYTC's branding includes a distinctive graphic of New York State, making it clear that the two entities serve different markets.

The court further concludes that although similar marks can dilute brand strength, the existence of a single related mark like NYTC's is insufficient to challenge the secondary meaning of the plaintiff's mark, especially as there is no evidence that NYTC's mark is well-promoted or recognized. Therefore, the court finds no dilution of the plaintiff's marks and affirms that the marks are protectable. The only remaining issue is whether there is a likelihood of confusion between the marks of New York City Triathlon LLC and those of NYTC.

The Second Circuit identifies eight "Polaroid" factors essential for evaluating the likelihood of consumer confusion in trademark cases: 1) strength of the plaintiff's mark; 2) similarity between the plaintiff's and defendant's marks; 3) competitive proximity of the products or services; 4) likelihood of the plaintiff "bridging the gap" to offer similar products or services; 5) evidence of actual confusion; 6) the defendant's good faith; 7) quality of the defendant's products or services; and 8) buyer sophistication. No single factor is decisive, as emphasized by the court in Plus Prods. v. Plus Discount Foods, Inc.

The strength of a mark can be assessed by its inherent distinctiveness and the consumer recognition it has achieved. Descriptive marks, while eligible for registration under the Lanham Act upon demonstrating acquired secondary meaning, typically receive limited protection. The defendant contends that the plaintiff's descriptive mark warrants minimal protection, allowing them to use "New York City Triathlon Club" due to their distinct graphic design featuring the Statue of Liberty. The court rejects this argument, affirming that when comparing marks, the dominant elements should be weighted more heavily. In cases involving both words and designs, the textual component is generally deemed more significant, particularly if the design merely enhances the word's message.

The court found that the marks "GLISTEN" and the tear drop design were confusingly similar to the "GLISS'N" word mark due to phonetic and semantic similarities. While a fact finder may equate word and pictorial representations, the dominant features of the marks in this case were the word components. The Defendant's graphics did not sufficiently differentiate the marks, as the Statue of Liberty and cityscape merely emphasized geographical affiliation. Consequently, even though the marks might visually differ, the Court determined they were confusingly similar, primarily due to the prominent use of "New York City Triathlon" in both. 

The Defendant argued that the Plaintiff's frequent use of logos alongside its NYC TRIATHLON Marks would reduce confusion. However, while the Second Circuit has recognized that a distinct brand name can sometimes reduce confusion, it also noted that the addition of a trade name might not eliminate confusion and could even exacerbate it, leading consumers to believe there is a licensing agreement. In this case, the Plaintiff's logos were not the dominant elements of their Marks, and thus did not help distinguish them from the Defendant's marks. The similarity in the wording, color schemes, and the context in which the marks were presented suggested that consumers might infer a relationship between the Plaintiff and Defendant, increasing the likelihood of confusion.

House marks related to the Plaintiff's race are deemed irrelevant to the Court's inquiry, which focuses solely on the NYC TRIATHLON word marks involved in the complaint. The case references the precedent set in In re Microsoft Corp., where the assessment was limited to whether the applied-for mark "OFICE.NET" was confusingly similar to the registered mark "OFFICENET," ignoring Microsoft's house mark. The Plaintiff’s registered marks—NEW YORK CITY TRIATHLON, NYC TRIATHLON, and NYC TRI—do not include the corporate sponsors' house marks, highlighting that the relevant analysis centers on the similarity between the Defendant's Club Marks and the Plaintiff's applied-for marks, excluding any corporate logos. The Court concludes that "New York City Triathlon" and "New York City Triathlon Club" are confusingly similar. The Defendant's argument that adding "Club" is enough to prevent confusion is dismissed, as "Club" is deemed generic and given less weight in the likelihood of confusion analysis. The Court notes that consumers tend to focus on the non-generic portions of marks. A similar case, Villanova Univ. v. Villanova Alumni Educ. Foundation, reinforces this principle, where the addition of "Club" did not distinguish the defendant's mark from the university's. As a result, the first two factors of the Polaroid test favor the Plaintiff, suggesting that the NYC TRIATHLON Marks warrant limited protection under the Lanham Act, and the similarities with the Club Marks are significant enough to warrant consumer confusion, thus upholding the injunction.

To establish that goods or services are "related" under trademark law, it is not necessary for them to be in direct competition. The key criterion is whether a reasonable consumer might believe that the defendant's goods or services are associated with or endorsed by the plaintiff, due to similar trademarks. Even if the goods or services differ, they can still be considered related if consumers could confuse their origin or sponsorship. This principle is illustrated by case law, such as Herbko Int'l, Inc. v. Kappa Books, Inc., where confusion was found despite the goods not being identical.

The Federal Circuit has recognized confusion can arise even between complementary goods that serve different market needs. Examples include fast food and supermarkets, peat moss and fertilizer, wine and cheese, and various other product pairs.

In the current case, the defendant argues that its services (seminars and training for triathlons) are not similar to the plaintiff's primary offering (the New York City Triathlon). However, the plaintiff has evidence showing it also provides training services through a partnership with Reebok Sports Club, which includes triathlon-specific courses. Thus, there are similarities in the services offered by both parties. The defendant's claim that it does not plan to organize a triathlon but will only provide supporting services does not negate the potential for confusion, as it does not sufficiently distinguish its offerings from those of the plaintiff.

Mr. Vandaele asserts that training clubs do not sponsor races, claiming a fundamental difference between the two entities that would prevent consumer confusion over similar names. He supports this with affidavits from three triathlon organizations in different cities, which state that their races are unrelated to the training clubs sharing their names. However, the Court finds his arguments unconvincing. Notably, the New York City Marathon is organized by a training club, suggesting potential consumer expectations of affiliation. Additionally, a regional organization that identifies as a "club" also organizes multi-sport events, indicating that the term "club" does not inherently distinguish the services offered.

Moreover, Mr. Vandaele has a history of organizing and sponsoring triathlons through his retail store, SBR Multisports, Inc., including the Plaintiff's race. He has sponsored the New York City Triathlon and the NYC Triathlon Club Championships, revealing his active role in race organization. This inconsistent disclosure undermines his credibility as a witness, favoring the Plaintiff's position. The concept of "bridging the gap" is referenced, which pertains to a senior user's interest in maintaining opportunities for expansion into related fields, indicating that the Plaintiff may have intentions to compete directly with the Defendant.

Consumers may mistakenly believe that Lambda Elecs. Corp. and Lambda Tech. Inc. are related due to corporate diversification, despite no intention to bridge any gap between them. In the case of New York City Triathlon LLC and its affiliation with Reebok Sports Club, both parties offer similar services, eliminating any gap and favoring the Plaintiff. The "actual confusion" factor examines whether consumers confuse one seller's goods with another's, with evidence of confusion enabling a seller to misrepresent their goods. Here, the Defendant operated under the name "New York City Triathlon Club" for less than two months before the Plaintiff filed suit. After sending a cease and desist letter shortly after the Defendant's name change, a single instance of confusion was reported when Richard Izzo mistakenly inquired about the Defendant’s club, only to learn they were not affiliated. While courts generally require more than one instance of confusion to support a finding for the plaintiff, the standard for infringement focuses on the likelihood of confusion rather than proof of it. Given the brief overlap of both marks and the occurrence of confusion, the Court finds the "actual confusion" factor neutral and assigns it minimal weight. Additionally, the "good faith" factor considers the defendant's knowledge of the prior user's mark; evidence of knowledge and strong similarities can suggest bad faith.

A presumption of bad faith arises when a junior user intentionally copies a mark, as established in Paddington Corp. v. Attiki Imps. Distribs. Inc. Evidence such as conducting a trademark search or seeking legal advice can rebut this presumption; however, mere awareness of a plaintiff's mark does not negate good faith. In this case, Mr. Vandaele acknowledged being aware of the New York City Triathlon and its mark since 2004, during which time he sponsored the event and other related races. His sporting goods store attempted to capitalize on the New York City Triathlon name by producing unauthorized merchandise, which he later destroyed after the plaintiff objected. Mr. Vandaele provided several justifications for renaming his triathlon club to "New York City Triathlon Club," claiming local member representation and operational restructuring, but the court rejected these as pretextual. The court noted that there were numerous alternative names that could have been chosen, which would not have closely resembled the plaintiff's mark. Ultimately, the court did not accept Mr. Vandaele's reasons for the name change, indicating that the chosen name did not adequately reflect the club's purpose or distinguish it from the plaintiff's established mark.

Mr. Vandaele did not provide evidence of conducting a trademark search for "New York City Triathlon" or consulting a lawyer regarding potential infringement by "New York City Triathlon Club." The Court views it as unlikely that he selected this name without intending to exploit the plaintiff's reputation. His lack of credible justification for the name leads the Court to conclude that he has not overcome the presumption of bad faith, given his awareness of the plaintiff's goodwill and trademarks.

Regarding the quality of goods and services, the Court notes that this factor assesses whether the senior user's reputation could be harmed by inferior offerings from the junior user. While Mr. Vandaele's products may be of questionable quality—highlighted by instances of unauthorized merchandise and difficulties faced by customers—the Court finds insufficient evidence about the quality of services provided by his triathlon club, which operated briefly from January to March 2010. Consequently, this factor is deemed neutral and not particularly informative.

The final factor considers consumer sophistication, focusing on the general impression of ordinary purchasers in the market. The consumer base includes both elite professionals and amateurs, with many registrants for the 2010 NYC Triathlon being first-time participants.

Fifty-six percent of registrants for the triathlon are first-time participants, categorized as unsophisticated buyers, which increases the likelihood of confusion regarding the brands. Notably, Richard Izzo, an experienced triathlon organizer, experienced confusion between the NYC Triathlon and the NYC Triathlon Club, indicating that even knowledgeable consumers can be misled, thereby supporting the Plaintiff's position. 

The Court evaluates the Polaroid factors, noting that no single factor is decisive, but the first three—strength of the mark, similarity of the marks, and closeness of goods/services—are particularly significant. The absence of certain factors, such as actual confusion or inferior quality of goods, does not negate the possibility of confusion. The Court finds that the first three factors favor the Plaintiff, despite the descriptive nature of the Plaintiff's mark, which limits its protection under the Lanham Act. 

The similarity of the marks and the overlap in services strongly suggest likely confusion. The Defendant's intent to bridge the gap is clear due to the overlapping services, and factors regarding consumer sophistication and bad faith also favor the Plaintiff. Although only a single instance of confusion has been documented, this is attributed to the brief coexistence of the marks, limiting the weight of actual confusion as a factor. The lack of data on service quality also fails to aid in determining likelihood of confusion. Overall, the analysis of the Polaroid factors leads the Court to conclude that there is a likelihood of confusion between the Plaintiff's and Defendant's marks.

Courts in this Circuit typically presume irreparable harm when a plaintiff demonstrates a likelihood of success in trademark infringement cases. However, the Second Circuit's ruling in *Salinger v. Colting* has raised questions about this presumption, particularly as it applies to copyright cases, suggesting a need for a stronger showing of irreparable harm. The court in *Salinger* emphasized that its conclusions were specific to copyright law but implied that similar reasoning could apply to trademark cases. Thus, this court chooses to follow *Salinger*'s stricter standard for injunctive relief, requiring plaintiffs to provide independent evidence of irreparable harm.

In this case, the plaintiff has shown sufficient evidence of irreparable harm due to significant investment in the NYC Triathlon's reputation and goodwill over ten years. The potential for consumer confusion regarding the defendant’s club and the impact on sponsorships, particularly with Reebok (the authorized club partner), underscores the risk of losing goodwill. The court notes that the loss of goodwill alone can constitute irreparable harm. Furthermore, the defendant's use of the plaintiff's marks jeopardizes the plaintiff's control over its reputation and the associated services, indicating that such loss is not easily quantifiable or compensable.

Plaintiff presents evidence of operating in the same market as Defendant through its affiliation with Reebok, leading to potential consumer confusion between the two clubs. A sophisticated consumer reportedly mistook Defendant's club for the New York City Triathlon, and the organizer of the Los Angeles Triathlon noted similar confusion among vendors and sponsors. Defendant does not contest these facts but claims it will face irreparable harm if it cannot use the New York City Triathlon Club mark, citing member refund requests since the preliminary injunction. The Court, however, indicates that the harm to Defendant is irrelevant to assessing Plaintiff's potential irreparable harm, emphasizing the need to analyze the balance of hardships separately.

The Court finds that the balance of hardships favors Plaintiff, as it faces a credible threat of irreparable harm without injunctive relief. Defendant's argument of potential harm lacks supporting evidence, and its use of the name "New York City Triathlon Club" for only two months is insufficient to establish a significant market presence. While Defendant claims the timing is critical for marketing, this fact actually supports Plaintiff, who risks damage to its reputation and business. The injunction allows Defendant to operate a training club but prohibits the use of infringing marks. Defendant's assertion that the lawsuit has created uncertainty among its members, leading to a resignation from its Board, does not alter the balance in its favor.

Defendant's actions have allegedly fostered a negative perception of the Club, but it has not provided names or affidavits from concerned members to substantiate claims of harm. The Court clarified that its injunction does not prevent Defendant from operating a training club; it only restricts the use of the name that infringes on Plaintiffs' Marks. The Court found that the mere request for refunds from some members does not indicate that the preliminary injunction is harming Defendant, particularly since confusion may stem from Defendant's own actions. The balance of hardships favors Plaintiffs, and granting injunctive relief aligns with public interest by preventing consumer deception regarding the association of a mark with products of uncertain quality. 

Regarding Defendant's request for the Plaintiff to post a bond, the Court noted that it has discretion in such matters and found no proof that Defendant would suffer harm without a bond; therefore, the request was denied. Defendant also sought to modify the injunction to allow redirection of its old domain to a new one, but this was denied as it would enable Defendant to exploit Plaintiffs' goodwill, which the injunction aims to prevent. Finally, the Plaintiff has reported multiple violations of the injunction, including Defendant's change of name from "NYC Triathlon Club" to "Triathlon Club NYC" as a response to the injunction order.

Defendant continues to use a background graphic featuring the New York Cityscape and a stylized headshot of the Statue of Liberty. It argues that the "safe distance rule," which necessitates selecting a name distinct from Plaintiffs' NYC TRIATLON Marks, does not apply because it is only preliminarily enjoined. However, the Second Circuit has upheld the applicability of this rule in similar contexts. The standard for consumer confusion focuses not on side-by-side product differentiation but on the overall impression created by the marks. Previous cases illustrate that alterations such as reversing syllables can still result in confusingly similar marks. In this instance, Defendant's name "Triathlon Club NYC" does not maintain a safe distance from Plaintiffs' marks, particularly since it retains the same graphics, emphasizing the "NYC" element. This similarity is likely to cause confusion between the two organizations. Consequently, Defendant is ordered to cease using this name and any infringing marks on all platforms, including social media. Furthermore, Defendant's failure to fully deactivate its Twitter account, where it uses the handle "nyctriclub," is a violation of the court's order against using Plaintiffs' marks, despite efforts to limit visibility by restricting followers and protecting tweets.

Defendant is ordered to remove any mention of "nyctriclub" or any similar references to Plaintiffs' Marks from all electronic media. On April 20, 2010, Plaintiff informed the Court that Defendant attended the Multisport World Conference and Expo on April 18, 2010, as "New York City Triathlon Club," violating the injunction issued on March 9, 2010. Defendant claimed to have registered under that name prior to the injunction and attempted to change it to "Triathlon Club NYC," but the program had already been printed by the time the request was made. The Court found this excuse insufficient, noting that Defendant delayed over a month to inform the event organizers of the name change. Defendant further argued that it was unaware of a sign displaying "New York City Triathlon Club" at its booth and did not prepare the sign. The Court dismissed this rationale, emphasizing that Defendant made no effort to have the sign removed or altered, despite evidence that other organizations succeeded in replacing their signs. Consequently, the Court denied Defendant's motion to vacate the injunction and granted Plaintiff's request to enforce it. Defendant must rectify any violations by May 7, 2010, or face possible contempt charges. The decision also notes the protection of both registered and unregistered trademarks under Section 43(a).

The Second Circuit's Abercrombie continuum categorizes trademarks from fanciful and arbitrary marks, like KODAK and XEROX, to generic terms, such as MILK. Descriptive and suggestive marks fall in between. The plaintiff operates the NYC Triathlon Club Championship, which the defendant's affiliate, SBR, has sponsored, heightening the likelihood of consumer confusion. The plaintiff's New York common law infringement claims align with the Lanham Act, indicating a high probability of success. Additionally, the plaintiff is likely to succeed on its New York State law dilution claim since it only requires proof of acquired distinctiveness, which the NYC TRIATHLON Marks have achieved through secondary meaning. The blurring and tarnishment arguments are applicable under New York law as well. 

The excerpt further outlines the nine factors of the Anticybersquatting Consumer Protection Act (ACPA) relevant to domain name disputes, focusing on rights in the domain name, prior use, intent to divert consumers, and misleading representations, among others. The plaintiff also has a strong case under New York's deceptive business acts law (N.Y.G.B.L. 349), which requires proof of misleading consumer-oriented acts that cause injury. The defendant's actions, which misbrand themselves and suggest an affiliation with the plaintiff, meet the criteria for misleading conduct. The court finds the plaintiff likely to succeed on its Lanham Act infringement claim, thus not needing to reassess other related claims.