Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd.

OPINION

FINDINGS OF FACT AND CONCLUSIONS OF LAW

I. INTRODUCTION

Plaintiffs, Major League Baseball Properties, Inc. (“Properties”) and Los Angeles Dodgers, Inc. (“Los Angeles”), allege in their Amended Complaint 1 that the conduct of the three corporate defendants, Sed Non Olet Denarius, Ltd., d/b/a The Brooklyn Dodger Sports Bar and Restaurant (“SNOD”), BUMS, Inc., d/b/a The Brooklyn Dodger Sports Bar and Restaurant (“BUMS”), and 9506, Inc., d/b/a The Brooklyn Dodger (“9506”) (hereinafter collectively “The Brooklyn Dodger”), and the conduct of the three individual defendants, David Senatore, Richard Picardi and Kevin Boyle, constitute: a) an infringement upon the rights of plaintiffs’ trademarks in violation of 15 U.S.C. §§ 1114 and 1117; b) a wrongful appropriation of plaintiffs’ trademarks in violation of 15 U.S.C. § 1125 c) a violation of plaintiffs’ common law trademark and property rights; d) a ■violation of plaintiffs’ rights under the New York General Business Law § 368-d; e) unfair competition; and f) the intentional use by defendants of a counterfeit mark in violation of 15 U.S.C. § 1117(b).

Each of these six causes of action is alleged to flow from defendants’ use of the words “The Brooklyn Dodger” as the name and servicemark of the restaurants which defendants have operated in Brooklyn, New York, beginning in March 1988. Plaintiffs initially sought permanent injunctive relief, an accounting of profits, the destruction of physical items containing the allegedly infringing marks, monetary damages, and attorneys’ fees.

By their Answer and Amended Answer defendants denied any infringement of plaintiffs’ alleged right to use a “Brooklyn Dodger” trademark. Defendants also pleaded the defenses of abandonment by plaintiffs of any *1109 “Brooklyn Dodgers” mark which plaintiffs may have owned at one time, as well as laches. The abandonment defense was premised upon the plaintiffs’ failure to make any commercial or trademark use of the “Brooklyn Dodgers” name for at least 25 years after Los Angeles left Brooklyn in 1958. The laches defense was premised upon the fact that plaintiffs waited for more than a year and a half after learning of defendants’ use of the allegedly infringing trademark before advising defendants of any alleged infringement. During this period defendants expended substantial resources and monies in establishing their restaurants in Brooklyn, New York. Defendants further pleaded the defense of unclean hands.

Finally, in their Amended Answer, defendants counterclaimed for the cancellation of various trademark registrations for “Brooklyn Dodgers” filed by plaintiffs after defendants’ application to register the “Brooklyn Dodger” servicemark was filed on April 28, 1988. 2 These cancellations are sought on the ground that plaintiffs’ registrations: a) falsely and deceptively suggest and imply a connection between plaintiffs and the Borough of Brooklyn which has not existed since 1958; b) inherently and directly misrepresent the origin of plaintiffs’ goods and services as Brooklyn, New York when in fact this is untrue, in violation of 15 U.S.C. § 1052; and c) plaintiffs’ use of a “Brooklyn Dodgers” mark suggests an association with defendants which does not exist, in violation of 15 U.S.C. § 1125(a).

On July 29, 1991, plaintiffs filed a motion for a preliminary injunction seeking to enjoin the use of the “Dodger” and “Brooklyn Dodger” name and defendants’ logo in connection with the Canarsie establishment. (Tr. of 3/31/92 Hearing at 72; Tr. 707)

On March 31, 1992, the Honorable Kimba M. Wood of this court, to whom this case was then assigned, conducted a hearing. The parties submitted memoranda of law and affidavits in connection with the motion for a preliminary injunction. The court granted plaintiffs’ motion for a preliminary injunction and enjoined defendants from using the mark the “Brooklyn Dodger” and the word “Dodger” written in standard athletic script as now used by defendants in connection with their third restaurant. (Tr. of 3/31/92 Hearing 69)

However, the court denied plaintiffs’ application for summary judgment. Plaintiffs withdrew all claims for legal damages set forth in paragraph 4 of their Prayer for Relief, leaving only their equitable claims for injunctive relief (Prayer for Relief ¶ 1) and the destruction of all physical objects which make use of the “Brooklyn Dodger” mark (Prayer for Relief ¶ 3) and an accounting on their Lanham Act and common law claims. (See correspondence between counsel dated April 14, 16 and 17, 1992) (Tr. 2) Plaintiffs also seek an award of their attorneys’ fees under the Lanham Act and common law. Following a preliminary hearing, a bench trial commenced on May 18,1992 and continued until May 21, 1992. At the close of the trial the court reserved decision on all issues presented and requested that the parties submit proposed Findings of Fact and Conclusions of Law not later than July 17, 1992.

II. FINDINGS OF FACTS

After hearing the evidence and weighing the testimony and exhibits received in evidence, as well as the credibility of the witnesses, the court makes the following findings of fact:

A The Parties

Plaintiff Properties is a corporation with offices and its principal place of business in New York, New York. It is the official trademark licensing, publishing, and marketing arm of the 26 Major League Baseball Clubs (the “Major League Clubs”). Properties is also charged with the responsibility of protecting the trademarks of these teams. (Trial Transcript “Tr.” at 41)

Plaintiff Los Angeles is a corporation with offices and its principal place of business in Los Angeles, California. It is the owner of the Los Angeles Dodgers, a professional *1110 baseball team which, since 1958, has played baseball in Los Angeles, California under the name the “Los Angeles Dodgers.” (Plaintiffs’ Exhibit “PX” 17) Prior to 1958 the same professional baseball team played baseball in Brooklyn, New York and were known as the “Brooklyn Dodgers” or the “Dodgers.”

In 1958, the team moved the site of its home games from Brooklyn to Los Angeles. (Tr. 252-53) At that time, the corporation was known as the Brooklyn National League Baseball Club, Inc. which owned the Brooklyn Dodgers or the Dodgers. It pointedly changed its name to Los Angeles Dodgers, Inc. (Tr. 259-60) Since then the team known as the “Los Angeles Dodgers” has never played baseball in Brooklyn, New York. (Tr. 332).

By agreement with the Major League Clubs, Properties has been granted the exclusive right to market, license, publish, publicize, promote nationally, and protect the trademarks owned by the Major League Clubs, including those owned by the Los Angeles Dodgers. (Tr. 41, 52-53, 116-17)

Properties’ licensing activities on behalf of the Major League Clubs have evolved and expanded over time. In the early 1980s, the Major League Clubs were responsible for licensing on their own, with some additional baseball-wide licensing provided by Properties. In the mid-1980s, by agreement with the Major League Clubs, all of the retail licensing activities of the Major League Clubs were consolidated within Properties. (Tr. 41-42)

Over 400 licensed manufacturers sell more than 2,500 different Major League Baseball licensed products. (Tr. 57) The range of products includes apparel, such as caps and T-shirts, trading cards, games, electronic items, novelties and accessories, and youth “Little League” merchandise.

In 1986, retail sales of licensed Major League Baseball merchandise were approximately $200 million. (PX 16 at 11) By 1991, retail sales of licensed Major League Baseball merchandise were in excess of $2 billion. (Tr. 55-56) Properties, however, receives only a royalty payment on the wholesale price of these products. (Tr. 55) After trial, in response to the court’s request for information concerning the amount of sales attributable to commercial use of the “Brooklyn Dodgers” mark after 1981, plaintiffs responded that precise figures could not be provided. Specifically, plaintiffs stated:

... Properties’ records from the 1980s regrettably do not permit a precise breakdown of sales of goods bearing a specific trademark. As a result, figures representing sales of goods bearing the Dodgers’ marks incorporating the word Brooklyn were, in most instances, subsumed within overall sales figures of merchandise bearing the Dodgers’ marks, and not separately itemized. Recently, however, we have been accumulating more accurate records regarding sales of goods bearing individual Club trademarks. Based on this information and our general knowledge of our products, it is our best estimate that approximately $9 million worth of goods bearing the Dodgers’ marks incorporating the word Brooklyn were sold in 1991.... we have contacted many of Properties’ licensees, but unfortunately their records also do not permit us to obtain a more precise determination of annual retail sales during the 1980s of good bearing specifically the mark “Brooklyn Dodgers,” separate and apart from retail sales of goods bearing the Dodgers’ trademarks as a group.

(See Affidavit of Richard E. White, sworn Sept. 11, 1992 at 5-6)

In addition to its licensing and marketing efforts, Properties seeks to prevent infringement of the trademarks of the Major League Clubs. (Tr. 71-72)

Properties seeks to protect the Major League Clubs and retailers from unfair competition by counterfeiters, to ensure that consumers are not confused as to which products are authorized by the Major League Clubs, and to ensure that only safe, quality products reach consumers. (Tr. 73-74)

To enforce the trademark rights of the Major League Clubs, Properties relies on counsel, relies on the Clubs, polices and investigates the market itself, and relies on licensees. (Tr. 75) At times, Properties com- *1111 menees litigation to prevent infringement at substantial expense. (Tr. 75-76)

Defendant SNOD is a corporation organized and existing under the laws of the State of New York and has its office and principal place of business at 7509 Third Avenue, Brooklyn, New York. (Tr. 480) On March 17, 1988 SNOD began doing business as a restaurant under the name “The Brooklyn Dodger Sports Bar and Restaurant.” (Tr. 480)

Defendant BUMS was a corporation organized and existing under the laws of the State of New York and had an office and principal place of business at 360 Coney Island Avenue, Brooklyn, New York. On February 6,1989 BUMS began doing business as a restaurant under the name “The Brooklyn Dodger Sports Bar and Restaurant.” (Tr. 646) In November 1990, for reasons wholly unrelated to this litigation, BUMS ceased doing business as “The Brooklyn Dodger Sports Bar and Restaurant.”

Defendant 9506 is a corporation organized and existing under the laws of the State of New York and has its office and principal place of business at 9505 Avenue L, Brooklyn, New York. (Tr. 384) On July 1, 1991, to replace the restaurant previously operated by BUMS, 9506 began doing business as a restaurant under the name “The Brooklyn Dodger Sports Bar and Restaurant.”

All three corporate defendants, at various times during this litigation, have been engaged in providing restaurant and tavern services to the consuming public in Brooklyn, New York. This is the only business in which the defendants are engaged. (Tr. 383)

Defendant David Senatore is an owner of all three corporate defendants and assisted in forming the businesses. (Tr. 383) Defendant Richard Picardi is a resident of New York, New York, an owner of all three corporate defendants and assisted in forming the businesses. (Tr. 383) Defendant Kevin Boyle is a resident of Brooklyn, New York, an owner of BUMS and 9506 and assisted in forming all three businesses. (Tr. 383) These businesses were to be the livelihood of Senatore, Picardi, and Boyle. (Tr. 521, 623, 706)

B. The Brooklyn Dodger Restaurants

In 1987, the individual defendants, together with Brian Boyle, defendant Kevin Boyle’s brother, decided to open a restaurant in Brooklyn, New York. (Tr. 483, 516-517, 599-600, 740).

It was the individual defendants’ decision that their restaurants would emphasize the multiple themes of fun, sports aiid Brooklyn. Their intention was to create a nostalgic setting where Brooklynites could relax and reminisce about times gone by. (Tr. 526, 534, 607, 742; DX C)

They initially chose to’ name their establishment “Ebbets Field” after the former baseball park located in Brooklyn, New York in which a baseball team know as the “Brooklyn Dodgers” played baseball until October, 1957. (Tr. 499, 518, 601, 740-41)

To assure themselves that the use of this name would not conflict with any other person’s use of it, the individual defendants commissioned a trademark search for the name “Ebbets Field” in April, 1987. (Tr. 518, 522, 602, 741; DX U) Although this search established that no trademark registration for “Ebbets Field” had been filed, the individual defendants learned that a small restaurant, not unlike the one they hoped to open in Brooklyn, was operating in Hicksville, New York. (Tr. 524, 604-605, 741-64)

In light of this fact, and in an attempt to avoid any possible legal entanglements, the individual defendants chose not to use the name “Ebbets Field” and continued their search for another name. (Tr. 520, 525-26, 561, 607, 646^47, 765)

The individual defendants were aware that there once was a baseball team known as the “Brooklyn Dodgers” which had once played in Brooklyn, New York. Defendants also knew that in 1958 that team left Brooklyn and relocated to Los Angeles, California.

The defendants knew that the departure of the “Brooklyn Dodgers” in 1958 had been accompanied by monumental hard feelings in the Borough of Brooklyn. In fact the relocation was one of the most notorious abandon-ments in the history of sports. (Tr. 527, 563) At the time defendants selected their logo, they were aware that Los Angeles owned *1112 federal trademark registrations for the word “Dodgers.” (Tr. 492, 562, 659, 735-36) However, at no time during their consideration of the “Brooklyn Dodger” name did the individual defendants have any reason to believe that “The Brooklyn Dodger” mark was being used by Los Angeles, and certainly not for restaurant or tavern services. (Tr. 526-27) When considering the use of the “Brooklyn Dodger” mark, at no time was there any discussion among the individual defendants and Brian Boyle about trading on the goodwill of Los Angeles in Brooklyn. (Tr. 528) Indeed, non-party witness Brian Boyle, a lifelong Brooklyn resident, testified that, given the acrimonious abandonment of Brooklyn by Los Angeles, the idea of trading on Los Angeles’ “goodwill” in Brooklyn is almost “laughable.” (Tr. 529)

Nevertheless, acting in good faith, the individual defendants, again desirous of avoiding any legal entanglements, commissioned yet a second trademark search, this one for the name “Brooklyn Dodger” in October, 1987. (Tr. 489, 609-11, 621-22, 744; PX 28) While defendants were aware at the time they selected their logo that Los Angeles owned federal trademark registrations for the word “Dodgers,” 3 their second trademark search established that no registration of any “Brooklyn Dodger” mark had ever been filed. (Tr. 492, 532, 562, 659, 735-36; PX 28)

Accordingly, in October, 1987 the individual defendants formed the corporate defendant SNOD for the purpose of operating a restaurant. SNOD began doing business with the public on March 17, 1988 as “The Brooklyn Dodger Sports Bar and Restaurant.” (Tr. 480)

Having invested the time, money, and effort in founding this restaurant and having exercised all reasonable diligence to satisfy themselves that no one was using a “Brooklyn Dodger” trademark for restaurant and tavern services, and that no one had filed a registration for this trademark for use in any other field, the principals of SNOD sought to protect their interests in their new name. (Tr. 571) Accordingly, on April 28, 1988, an application to register a composite design mark incorporating the term “The Brooklyn Dodger” as a servicemark for restaurant and tavern services was filed with the United States Patent and Trademark Office in Washington, D.C. (Tr. 571, 630, 637, 728; PX 37)

C. Defendants’ Use of the Trademark

In connection with each of defendants’ “The Brooklyn Dodger” restaurants, defendants make and/or made prominent use of the “Dodger” name and the “Brooklyn Dodger” name, with the word “Dodger” in stylized script, in the color blue, and in blue script. (PX 40 at 1, 27, 31-37, 41-44)

The defendants’ composite design mark consisted of three words: “The,” “Brooklyn” and “Dodger” are entwined with one another and with an impish character, designed by Lincoln Peirce, which was styled after the Charles Dickens’ character, the “Artful Dodger” from the novel Oliver Twist, leaning against the “r” in “Dodger.” (Tr. 165; PX 37, 38) Defendants, however, make significant use of their logo without the cartoon character to promote their business, including on merchandise such as apparel, in advertisements, on their letterhead and as part of their servicemark. (PX 32, 33 at 1, 34, 35; DX V; Tr. 674-79)

Defendants’ logo is similar to Los Angeles’ trademarks. The name “Brooklyn Dodgers” is similar to the name “Brooklyn Dodgers” as *1113 used by plaintiffs. The script used by the defendants in their logo is similar to that used in Los Angeles’ trademarks. The color blue used by defendants is similar to the color blue used by and associated with Los Angeles’ sports club in Brooklyn. The swash or tail of the word “Dodger” used by defendants is similar to that used in Los Angeles’ trademarks in terms of style and length. (PX 2, 3, 58 at 2, 53 at 69; Tr. 227, 319, 430, 673-74, 682, 759)

The similarity of the parties’ marks is further evidenced and emphasized by the fact that defendants use their logo in a sports-oriented atmosphere containing numerous references to baseball and the Brooklyn Dodgers. (See PX 40)

The similarity of defendants’ logo to Los Angeles’ trademarks as used prior to 1958 is further evidenced and emphasized by the fact that defendants, in selecting their name and creating their logo, intended to allude to the Brooklyn Dodgers baseball club and to track the script used by the Brooklyn Dodgers. (Tr. 486-89) Indeed, virtually every witness at trial, including the artist who designed defendants’ logo and defendants’ expert witness, testified to the similarity of the marks. (Tr. 115, 148-58, 167, 319, 430-31, 486-87, 569, 667-68, 684, 759; PX 53 at 69)

In selecting their logo, defendants intentionally sought to reproduce the Brooklyn Dodgers’ trademarks. Indeed, the script for the defendants’ logo was intentionally chosen by defendants to track the script used by the Brooklyn Dodgers. As one of defendants’ former principals testified:

Q: ... The script for the Dodger restaurant, the Brooklyn Dodger restaurant, the script, that tracks that of the Brooklyn Dodger baseball team, doesn’t it?

A: Yes.

Q: And that was intentional, wasn’t it?

A: I imagine so ... We wanted a reference to the Brooklyn Dodgers baseball team, yes. (Tr. 569)

Defendants’ cartoon character was intentionally selected to allude in part to the famous “Brooklyn Bum” character associated with the Brooklyn Dodgers. (Tr. 487-89; compare PX 40 at 6 (The Brooklyn Dodger bum) with PX 11 at 6 (the Brooklyn Dodgers bum)) In selecting their name, logo and cartoon character, defendants were intentionally alluding to the Brooklyn Dodgers. (Tr. 486-89, 569, 688) However, rather than tracing the allegedly infringing mark “Dodger” from any exemplar, Peirce testified quite clearly that “I drew it freehand. I drew it, I outlined it in a pen, a felt-tipped pen, and I think I colored it in.” (Tr. 165) Peirce was paid $100.00 for his services. (Tr. 165, 684-86; DX J)

The exteriors of defendants’ bars have signs and awnings bearing the Brooklyn Dodger logo. The “Dodger” portion of the sign outside of the Bay Ridge Brooklyn restaurant is in blue script with the “r” in the word “Dodger” continuing in a “swash” or tail which underlines the word “Dodger.” (PX 40 at 1; Tr. 384)

Defendants and their employees wear or have worn shirts with defendants’ “Brooklyn Dodger” logo or with “Dodger Staff’ printed on them, the “Dodger” portion being in stylized script similar to Los Angeles’ trademark for the mark Dodgers in cursive script. Defendants had these shirts designed and manufactured for their restaurants. (PX 31, 53 at 87, 54 at 94; Tr. 384-85) Defendants’ sell and have sold or distributed apparel, including T-shirts and caps, bearing the name “Brooklyn Dodger.” (PX 40 at 9; Tr. 386) Defendants have also sold or given to patrons bumper stickers and gift certificates bearing the “Brooklyn Dodger” logo. (Tr. 387)

Defendants have used the word “Dodger” alone without the word “Brooklyn” on merchandise, such as apparel bearing the logo “Dodger Staff,” and on food products to promote their business, such as “Dodger Blue” Cheese, “Deep Dish Dodger” pizza, “Dodger Seafood Chowder,” ribs with “Dodger Sauce,” “Dodger Pee-Wee” pasta, and “The Duke” and “The Furillo” hamburgers (references to former Dodgers Pee Wee Reese, Duke Snider, and Carl Furillo). (PX 14, 31, 53 at 87, 54 at 94; Tr. 311, 385, 482, 654) Defendants also sell food products referring to the “bum” character associated with the Brooklyn Dodgers, such as “Bum’s House Salad.” (PX 14)

*1114 There is a replica of a Brooklyn Dodgers jersey and cap displayed inside defendants’ restaurant. (PX 40 at 4) A baseball bat used by Brooklyn Dodgers player Jackie Robinson and baseballs autographed by Brooklyn Dodgers players are also displayed in defendants’ restaurant. (PX 40 at 5; Tr. 386) A wall-sized mural of Ebbets Field, the Brooklyn ballpark of the Brooklyn Dodgers, dominates one wall in defendants’ restaurant. (PX 40 at 5; Tr. 386) Photographs of Los Angeles and Brooklyn Dodgers players and newspaper articles referring to the Brooklyn Dodgers are displayed throughout defendants’ restaurant. (PX 40) Defendants decorate their restaurant with cartoons depicting the “bum” character associated with the Brooklyn Dodgers. (PX 40 at 4, 6)

Defendants’ menus and placemats reference the names of Brooklyn Dodgers players and the word “Dodger.” (PX 14; Tr. 311, 386, 482, 654) Defendants have disseminated to the public corporate checks identifying the drawer as “The Brooklyn Dodgers” (with the “s”). (PX 45 at 4; Tr. 387, 389, 652-53)

Defendants have caused to be published a newspaper advertisement referring to their establishments as “The Brooklyn Dodgers” (with the “s”). (PX 34)

In February 1989, the individual defendants, through a second corporate defendant, BUMS, Inc., opened a second “The Brooklyn Dodger Sports Bar and Restaurant” on Coney Island Avenue, not far from defendants’ initial establishment. The same logo and servicemark were used with respect to this restaurant. 4

D. Plaintiffs’ Use of the Trademark

Upon relocating its franchise to Los Ange-les, California, plaintiff Los Angeles changed its corporate name from the “Brooklyn National Baseball Club, Inc.” to “Los Angeles Dodgers, Inc.” and began playing baseball under the same name. Of the 26 baseball teams currently playing baseball, no team plays under the name the “Brooklyn Dodgers.” The only Dodger team currently playing baseball is the “Los Angeles Dodgers” (PX 17) which is the name the team has played under since its departure from Brooklyn in 1958. (Tr. 563)

Plaintiffs’ use of the “Brooklyn Dodgers” mark was based upon its physical location, until October 1957, in Brooklyn, New York. However, in 1959, Los Angeles made prominent commercial use and reference to their Brooklyn heritage and trademarks in connection with the promotion of Roy Campanella Night, honoring the former Brooklyn Dodgers player and present employee. (Tr. 94-96, 266-67; PX 1 at 2, 22) Los Angeles made prominent use of their trademarks incorporating the word “Brooklyn” at their annual oldtimers games. (PX 1 at 37, 40; Tr. 270) Oldtimers games are commercial baseball exhibitions at which former players are honored and perform so that older fans can recall the past and younger fans can learn about the history of the Club. (Tr. 267-68)

In 1966, Los Angeles sent a cease and desist letter to a member of the Continental Football League to prevent it from infringing Los Angeles’ trademark by calling itself the Brooklyn Dodgers. (PX 8; Tr. 287-89)

Since approximately 1967, Los Angeles has licensed manufacturers of hot dogs to sell a hot dog known as the Dodger Dog using the Los Angeles’ trademarks (without the “s”). (PX 12,13; Tr. 305-08) The wrapper for the Dodger Dog bears the word “Dodger” in blue script and is underlined. (PX 13A; Tr. 308) Other uses of the “Dodger” trademark by Los Angeles include the authorization of Alo-ma, Inc. to use Los Angeles’ trademarks in the operation of the Dodger Pines Golf and Country Club, including its restaurant facilities. (PX 10, 11; Tr. 298) Displayed in that restaurant are an array of sports photographs and memorabilia referring to the Los Angeles Dodgers, including their Brooklyn *1115 history, such as a photograph of Ebbets Field and a pennant depicting the “bum” associated with the Brooklyn Dodgers. (Tr. 302-03; PX 11)

Los Angeles authorizes the Dodgertown Conference Center, located at the Los Ange-les Dodgers’ Spring training facility in Vero Beach, Florida, to use Los Angeles’ trademarks to decorate a cafeteria and lounge. (PX 11; Tr. 298) Displayed in those facilities are sports photographs and memorabilia referring to the Los Angeles Dodgers, including their Brooklyn history. (PX 11; Tr. 302-03) Los Angeles has authorized the concessionaire at Dodger Stadium to decorate a restaurant, bar, and meeting facility called The Stadium Club at Dodger Stadium with photographs and/or paintings of Brooklyn Dodgers players. (Tr. 297) A restaurant owned by Bobby Valentine, manager of the Texas Rangers baseball club, is also authorized to use the trademarks of certain Major League Clubs. (Tr. 108)

One document which covered calendar year 1977, established that there was a licensing agreement between Major League Baseball Promotion Company, the predecessor to Properties, and a third party which was licensed to use the names, symbols, and logos of all major league baseball teams including “Los Angeles Dodgers.” (DX F) No reference to the “Brooklyn Dodgers” is made in this agreement. However, on April 6, 1981, this licensing agreement was amended to include the name, symbols, logos, etc. of The “Brooklyn Dodgers” as well. (PX 19) Despite voluminous discovery in this case, at trial this document was the earliest licensing use of the “Brooklyn Dodger” name, following Los Angeles’ departure from Brooklyn.

While plaintiffs have from time to time made use of their former “Brooklyn Dodgers” mark occasionally and sporadically for historical retrospective such as “Old Timer’s Day” festivities, the documentary proof establishes that, following its departure from Brooklyn, Los Angeles’ earliest licensing of the “Brooklyn Dodgers” mark occurred on April 6, 1981. (PX 19)

Between 1981 and March 17, 1988, the date of defendants’ first use of their mark for restaurant and tavern services, plaintiffs used their “Brooklyn Dodgers” mark for a variety of purposes. Those uses were almost exclusively in the context of T-shirts, jackets, sportswear, sports paraphernalia and on various types of novelty items (i.e. on drinking mugs, cigarette lighters, pens, Christmas tree ornaments, wristbands, etc.). (PX 2,16) However, none of these uses competes with defendants’ use of the mark for restaurant and tavern services.

In 1981, plaintiffs licensed Eastport manufacturing Co. to merchandise T-shirts bearing, inter alia, the Brooklyn Dodger named and logo. (PX 19; Tr. 79-81)

In 1984, Los Angeles agreed to permit Martin Dorf to use photographs of the Brooklyn Dodgers as wall decorations in a restaurant in New Jersey called Burger Boys of Brooklyn. (PX 4; Tr. 78-79)

In 1985, Los Angeles authorized United Airlines to broadcast radio commercials which referred to the Brooklyn Dodgers. (PX 6; Tr. 282)

In 1986, Los Angeles agreed to license the Bank of New England to run an advertisement using the Los Angeles’ trademarks incorporating the word “Brooklyn.” (PX 5; Tr. 281) In 1986, Los Angeles entered into an agreement with Oxford University Press to permit them to use Los Angeles’ trademarks incorporating the word “Brooklyn” in connection with a book. (PX 7; Tr. 283) In 1986, plaintiffs authorized Trench Manufacturing Co. to sell various items of merchandise bearing, inter alia, the Los Angeles’ trademarks incorporating the word “Brooklyn.” (PX 20; Tr. 82)

In March 1987, plaintiffs and Roman Art Embroidery Corp. entered into a licensing agreement to manufacture and sell caps bearing, inter alia, Los Angeles’ trademarks incorporating the word “Brooklyn.” (PX 21; Tr. 83-84)

In approximately 1986, Properties began promoting Los Angeles’ trademarks incorporating the word “Brooklyn” together with other “oldtimer” trademarks of Major League Clubs (that is, trademarks that had not been worn on the playing field for at least five years) under the name “the Coo *1116 perstown Collection.” (Tr. 83-86; see also PX 18)

Los Angeles licensed the use of their marks incorporating the word “Brooklyn” in connection with the television series “Brooklyn Bridge.” (Tr. 296-97) Los Angeles licensed the Brooklyn Dodgers Hall of Fame, located in Brooklyn, to use Los Angeles’ trademarks incorporating the word “Brooklyn.” (Tr. 296-97)

Defendants did not select the name “The Brooklyn Dodger” for their restaurant until sometime after October 14, 1987, and did not open their first bar and restaurant using their “Brooklyn Dodger” logo until March 1988. (Tr. 383, 480, 490-91, 541, 621)

While plaintiffs placed in evidence various uses of the “Brooklyn Dodgers” mark, such as photo permissions in 1984 (PX 4, 5), a permission for use on United Airlines Radio Commercials (PX 6) and a permission to use the Brooklyn “B” in conjunction with a written history of the Brooklyn Dodgers baseball team (PX 7), such uses, granted, for minimal or no compensation, do not constitute trademark uses as is discussed more fully in the court’s Conclusions of Law. Similarly plaintiffs attempt to prevent a third party from using the “Brooklyn Dodgers” mark in 1966 (PX 8) is not a trademark use; neither did these uses involve restaurant and tavern services.

With respect to restaurant and tavern services, the evidence established that while the “Brooklyn Dodgers” were playing baseball in Brooklyn, there existed, also in Brooklyn, a restaurant and tavern which used the name “Dodgers Cafe.” (DX K) The logo of this establishment was the word “Dodgers,” in script, with the figure of a swinging baseball batter. (DX L) The evidence shows that the “Dodgers Cafe” began operating with a State Liquor Authority license in 1942 and continued to operate until 1968, long after Los Angeles had left Brooklyn. Plaintiffs conceded that they took no step whatsoever while they were playing baseball in Brooklyn, or after they had relocated to Los Angeles, to cause the “Dodgers Cafe” to cease using the name as its servicemark for its restaurant.

E. Timing of the Litigation

In September, 1987 at approximately the same time that the trademark search for the name “The Brooklyn Dodger” was being conducted, defendant Boyle wrote a letter to Peter O’Malley, the President and part owner of Los Angeles, seeking O’Malley’s best wishes “for the new business” which Boyle advised O’Malley he was about to open in Brooklyn. (Tr. 609-11)

In July 1988, plaintiff Los Angeles discovered defendants’ use of the Brooklyn Dodger logo when plaintiff received a copy of the menu of defendant SNOD bearing the allegedly infringing mark. (Tr. 310; PX 14) This menu was sent to Los Angeles by defendant Boyle. (Tr. 631-32, 643) Although finding the allegedly infringing mark to be “a serious concern” (Tr. 345 — 46), on July 20, 1988 Los Angeles sent the menu bearing the allegedly infringing mark to Properties for further action, asking Properties to investigate the potential infringement of Los Angeles’ trademarks but asking Properties to consider, before taking any enforcement action, the potential for negative publicity to the Los An-geles Dodgers. (Tr. 115-16, 346; PX 55; see Tr. 114, 319) Los Angeles took this action pursuant to the agreement between the Major League Clubs and Properties. Neither plaintiff Los Angeles nor plaintiff Properties chose to do anything further about the alleged infringement until April 24, 1989. (Tr. 361; PX 15)

As defendants’ success in their new venture grew, they sought to take additional legal steps to protect their mark. Accordingly, on August 9,1988 the composite design mark at issue, containing the term “The Brooklyn Dodger” was registered as a ser-vicemark with the Secretary of State of the State of New York, yet again giving notice of defendants’ interest in the name. (Tr. 555-56, 643; DX V)

In approximately February 1989, notice of defendants’ attempt to register their logo with the United States Patent and Trademark Office was first officially published. (Tr. 494)

On April 24, 1989, fully nine (9) months after receipt by plaintiff Los Angeles of the *1117 menu sent by Boyle, plaintiffs wrote to defendants and claimed for the first time that the defendants’ conduct was allegedly infringing their trademark and demanding that they cease and desist from any acts of infringement. (Tr. 318, 383, 646; PX 15 at 1-2)

From April 1989 to March 1990, there were periodic conversations during which the parties attempted unsuccessfully to resolve the dispute. (Tr. 319) When those efforts failed, plaintiffs filed their complaint in March 1990.

In June 1991, while this litigation was pending, counsel for plaintiffs learned during discovery that defendants had formed 9506 to open yet another establishment calling itself “The Brooklyn Dodger Sports Bar and Restaurant” in a new neighborhood in Brooklyn. Within days of that discovery, counsel for plaintiffs delivered to counsel for defendants a letter demanding that defendant cease and desist. (PX 15 at 3; Tr. 383) Defendants nevertheless chose to open another establishment in the Canarsie section of Brooklyn. (Tr. 704-06)

In July 1991 plaintiffs field their amended complaint. In March 1992 Judge Wood granted plaintiffs’ motion for preliminary injunction concerning the Canarsie establishment but denied plaintiffs application for summary judgment. This court concluded trial of this matter in May 1992.

III. CONCLUSIONS OF LAW

A. Jurisdiction

This court has jurisdiction over the subject matter of each of the plaintiffs’ causes action pursuant to 28 U.S.C. §§ 1331, 1338 and 15 U.S.C. § 1121 and principles of pendant jurisdiction, and consequently also has jurisdiction over the parties and over defendants’ pleaded defenses and counterclaims.

B. Plaintiffs’ Federal and Common Law Causes of Action

In order to obtain relief for common law trademark infringement or violations of the Federal Trademark Act (“the Lanham Act”) for trademark infringement, 5 or for false representation of goods, or false designation of origin, and wrongful appropriation of plaintiffs’ trademarks, 6 plaintiffs were required to prove by a fair preponderance of the credible evidence either actual confusion or a likelihood of confusion. 7 *1118 W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 571 (2d Cir.1993). In order to secure injunctive relief or other equitable relief, plaintiffs were required to prove a likelihood of confusion. Had plaintiffs sought to secure damages, they would have been required to prove actual confusion. See W.W.W. Pharmaceutical Co., Inc. v. Gillette Co., 808 F.Supp. 1013, 1020-21 (S.D.N.Y.1992), aff 'd, 984 F.2d 567 (2d Cir.1993). Thus, as to the likelihood of confusion, Los Angeles and Properties must show that “an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source” of the services provided by the defendants because of their use of the words “The Brooklyn Dodger” in conjunction with their restaurants in Brooklyn. W.W.W. Pharmaceutical, 984 F.2d at 571 (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir.1978) (per curiam), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979) quoted in McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979)).

This court finds and concludes that plaintiffs have failed to prove either actual confusion or likelihood of confusion stemming from defendants’ trademark “The Brooklyn Dodger” even though it is similar to the “Brooklyn Dodgers” trademark that plaintiffs held as a sports club in Brooklyn.

In determining whether a plaintiff has proven likelihood of confusion, the courts of this Circuit follow and apply to the evidence the factors set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.1961), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). “The [Polaroid ] factors are designed to help grapple with the ‘vexing’ problem of resolving the likelihood of confusion issue.” W.W.W. Pharmaceutical, 984 F.2d at 572 (quoting Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir.1986) (citation omitted)). These factors are:

a)strength of plaintiffs trademark,

b) similarity between the trademark used by the parties,

c) proximity of the products,

d) the likelihood that plaintiffs will “bridge the gap,”

e) actual confusion,

f) good faith or intent of the defendant,

g) quality of defendants’ services,

h) sophistication of purchasers.

This court finds only factors a) and b) in favor of plaintiffs. However, “[tjhis list of factors does not exhaust the possibilities— the court may have to take still other variables into account. American Law Institute, Restatement of Torts §§ 729, 730, 731.” W.W.W. Pharmaceutical, 984 F.2d at 572 (quoting Polaroid Corp., 287 F.2d at 495).

1. Strength of the Mark

The strength of the mark is determined by “the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous source.” W.W.W. Pharmaceutical, 984 F.2d at 572 (quoting McGregor-Doniger, 599 F.2d at 1131). A mark’s strength, which turns on its “ ‘origin-indicating’ quality in the eyes of the purchasing public,” W.W.W. Pharmaceutical, 984 F.2d at 572 (quoting McGregor-Doniger, 599 F.2d at 1131), is determined by two factors: “(1) the degree to which it is inherently distinctive; and (2) the degree to which it is distinctive in the marketplace.” W.W.W. Pharmaceutical, 984 F.2d at 572 (quoting McGregor-Doniger, 599 F.2d at 1131-33).

Courts have used four categories in measuring the distinctiveness of a mark: generic, descriptive, suggestive, and arbitrary or fanciful. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). “A generic mark is generally a common description of goods and is ineligible for trademark protection. A descriptive mark describes a product’s features, qualities or ingredients in ordinary language, and may be protected only if secondary meaning is established. A *1119 suggestive mark employs terms which do not describe but merely suggest the features of the product, requiring the purchaser to use ‘imagination, thought and perception to reach a conclusion as to the nature of the goods.... ’ Fanciful or arbitrary marks are eligible for protection without proof of secondary meaning and ‘with ease of establishing infringement.’ ” W.W.W. Pharmaceutical, 984 F.2d at 572 (citations omitted).

In assessing the strength of a mark outside its field, “coined” marks, such