Full opinion text
OPINION COTE, District Judge. This case involves a dispute over the rights to use the name DE BEERS in connection with gemstones, jewelry, and other luxury goods in the United States market. DE BEERS, of course, is one of the most famous brands in the world and — in the minds of American consumers, who were exposed to the “A Diamond Is Forever” advertising campaign featuring the name DE BEERS — is inextricably linked to diamonds. Oddly, however, the entities that made DE BEERS so famous are not parties to this litigation. Indeed, for reasons discussed below, very little evidence has been submitted regarding who these entities are and what role they play in the diamond trade. De Beers LV Limited (“DBLV”) and De Beers LV Trademark Limited (“DBLV TM”), the plaintiffs in this matter, are two British companies that claim to have received rights from the De Beers Group (“DBG”) — which apparently is a consortium of companies that includes De Beers Consolidated Mines Limited (“Consolidated”) of South Africa and De Beers Centenary AG (“Centenary”) of Switzerland — to exploit the DE BEERS mark in the United States. One of the plaintiffs has registered DE BEERS with the United States Patent and Trademark Office (“PTO”) in connection with luxury retail store services. Plaintiffs have opened two such stores in America which, at present, sell diamond jewelry and watches under the DE BEERS name. More such stores are on the way. These companies have sued Marvin Ro-senblatt (“Rosenblatt”) and his company DeBeers Diamond Syndicate Inc. (“Syndicate”) under the Lanham Act and New York law for infringement both of the registered mark and of what they assert is the famous mark DE BEERS. The defendants have applied to register DeBeers Diamond Syndicate as a trademark in order to sell diamonds under that name over the Internet, where they have paved the way by registering dozens of domain names with the name DeBeers. Following a bench trial conducted on May 30-31, 2006, this Opinion presents the Court’s findings of fact and concludes that the defendants’ activities will create confusion with plaintiffs’ registered mark DE BEERS. The plaintiffs have not shown, however, that they are entitled to relief under the famous marks doctrine. Procedural History Plaintiffs filed this action on June 1, 2004, alleging trademark infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); unfair competition under New York common law; and trademark dilution in violation of New York General Business Law § 360-i. In their answer, defendants raised the affirmative defenses of failure to join necessary parties, unclean hands, priority of use of the mark, and lack of standing. Defendants moved to join Consolidated, Centenary, and De Beers Trademarks Ltd. (“Trademarks”) as counterclaim defendants. They alleged Sherman Antitrust Act violations and requested a declaratory judgment against plaintiffs and the counterclaim defendants. Plaintiffs moved to strike defendants’ affirmative defenses of unclean hands and lack of standing. They also moved to dismiss the counterclaims. In an Opinion of May 18, 2005, the motion to dismiss the declaratory judgment counterclaim was denied; the motion to dismiss the Sherman Antitrust Act counterclaim was granted; the motion for joinder was denied; the motion to strike the affirmative defense of unclean hands was granted; and the motion to strike the affirmative defense of lack of standing was denied. De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate Inc., No. 04 Civ. 4099(DLC), 2005 WL 1164073 (S.D.N.Y. May 18, 2005). Plaintiffs filed an amended complaint on December 30, 2005, adding a claim for violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114, based on DBLV TM’s ownership of a registered mark in DE BEERS for use in “retail store services featuring luxury consumer products.” Trial Procedure The trial was conducted without objection in accordance with the Court’s customary practices for the conduct of non-jury proceedings. The parties filed a Joint Pretrial Order and proposed findings of fact and conclusions of law on March 15. The parties also served affidavits containing the direct testimony of most of their witnesses, as well as copies of all the exhibits and deposition testimony which they intended to offer as evidence in chief at trial. With its Pretrial Order submissions, plaintiffs presented declarations constituting the direct testimony of Pierre Malle-vays (“Mallevays”), former director of acquisitions for LVMH-Moet Hennessy Louis Vuitton (“LVMH”) and its chief negotiator during the creation of plaintiffs through a venture with DBG; Guy Ley-marie (“Leymarie”), chief executive officer of DBLV; Amanda Fogg (“Fogg”), legal counsel and secretary for DBLV and DBLV TM; Alyce Alston, chief executive officer of DBLV US, Inc., a wholly owned subsidiary of plaintiff DBLV; Lynn Diamond (“Diamond”), executive director of the Diamond Promotion Service, a unit of J. Walter Thompson U.S.A., Inc. (“JWT”), an advertising firm; Joan Parker (“Parker”), consultant to DBLV; Benedict Bird, a partner in the law firm LinHaters; Stuart Jennison (“Jennison”), a legal assistant at the law firm Jennison & Schultz, P.C.; Merida Lopez (“Lopez”), Mario Ortiz (“Ortiz”), and David Vanegas (“Vane-gas”), paralegals at the law firm Fross Zelnick Lehrman & Zissu, P.C.; and Philip Johnson (“Johnson”), chief executive officer of Leo J. Shapiro Associates, Inc., a market research and consulting firm. With the exceptions of Jennison, Ortiz, and Vanegas, who defendants chose not to cross-examine, and Bird, whose testimony was rendered irrelevant by a ruling before trial, each of these witnesses appeared at trial and was cross-examined. Defendants offered the testimony of defendant Rosenblatt; and Thomas Scheer (“Scheer”), a friend of Rosenblatt and an owner of Jarai & Scheer, a diamond dealer. Both witnesses appeared at trial and were cross-examined. Defendants also subpoenaed Caroline Amand (“Amand”), client director for Landor Associates, a branding firm. Amand testified at trial and was cross-examined. Excerpts from the deposition testimony of the following individuals were offered and received into evidence at trial. Plaintiffs offered excerpts from the depositions of Caryl Capeci-Cossart (“Capeci-Cos-sart”), former employee of advertising agencies JWT and N.W. Ayer (“Ayer”); Christine M. Herring, a budget and accounts executive at the Diamond Trading Company, the sales and marketing arm of DBG; Carl Marcus (“Marcus”), chairman and founder of Capetown Diamond Corp.; and Rosenblatt. Defendants offered excerpts from the depositions of Stephen C. Butcher (“Butcher”), president of website design company VickeryHill.com; Capes-ci-Cossart; Leymarie; and Fogg. FINDINGS OF FACT The following constitutes many of the Court’s findings of fact. Additional fact finding appears during the presentation of the Conclusions of Law. Plaintiffs Plaintiffs DBLV and DBLV TM were formed as limited companies under the laws of the United Kingdom on November 30, 2000. DBLV is owned in equal parts by an affiliate of DBG and by a subsidiary of luxury goods purveyor LVMH. DBLV TM is wholly owned by DBLV. Pursuant to the joint shareholder agreement signed by DBG and LVMH on January 16, 2001, DBLV was created to engage in the “production and marketing of diamond jewellery and associated products under the De Beers brand name.” These “associated products” were to include “goods usually sold by luxury goods retailers.” In the shareholder agreement, DBG agreed that neither it nor its affiliated companies would compete with DBLV in the manufacture or sale of diamond jewelry or other luxury goods to consumers. DBG and LVMH are equal shareholders in DBLV, and each appoints half of its directors. The company is run and managed by officers who are independent of DBG, LVMH, and their affiliates. DBG and LVMH are entitled to share in the revenue stream of DBLV. They have committed to make equal financial contributions to the company, but since DBG also contributed the rights in the DE BEERS mark described below, it is entitled to a greater share of the profits in excess of a set amount until another designated amount of profits is achieved, at which point they again split the profits equally. The Transfer of Rights in DE BEERS Plaintiffs trace their claim to the DE BEERS name to DBG members Consolidated and Centenary. On January 12, 2001, Consolidated and Centenary assigned the rights in DE BEERS worldwide (except in Southern Africa) to De Beers Intangibles Limited (“Intangibles”), which is also a part of DBG. On January 15 — the day before the shareholder agreement was executed — Intangibles assigned all of its rights to use DE BEERS in the United States to its wholly owned subsidiary Trademarks. The agreement stated that Trademarks would hold the rights “subject to any license granted to third parties.” The parties intended that Intangibles and DBLV would enter into a global brand license agreement (the “GBL”) that would provide DBLV with the right to exploit the DE BEERS name in connection with gemstones and jewelry, among other products, throughout the world (except in Southern Africa). A draft of the GBL was attached to the shareholder agreement. Because DBG had already registered its mark in most parts of the world, there was no need also to assign the rights necessary to apply for trademark registration in most jurisdictions. Since, as explained below, DBG does not operate in the United States, it had not obtained any trademark registrations in the name DE BEERS in this country, and it was necessary to assign DBLV TM intellectual property rights so that that entity could apply for registration. DBG did not wish to assign those rights in connection with either gemstones or jewelry, however, explaining to its joint venture partner that these rights were just too close to its core business. Therefore, to prepare for the registration applications in the United States, on January 16, Trademarks signed an agreement assigning to DBLV TM all rights to use the DE BEERS mark within the United States except in connection with gemstones and jewelry (the “Assignment”). The GBL was not signed until approximately six months later, on July 27, 2001. According to its terms, Intangibles granted DBLV a license to use DE BEERS worldwide (except in Southern Africa) in connection with jewelry, watches, writing instruments, leather goods, perfumes, cosmetics, glassware, cutlery, clothing, foot-ware, and certain other specified products. The GBL stated that Intangibles’ “primary purpose” in licensing the rights was “to build the DE BEERS brand for diamonds and diamond jewellery.” As part of the GBL, Intangibles warranted that “neither it nor any of its Affiliates own rights in the [DE BEERS] Trade Marks or any goodwill attaching thereto ... which are not being licensed under this Agreement.” These documents, which should be read together as part of an integrated transaction among related entities, conveyed to plaintiffs any rights Intangibles possessed to exploit the DE BEERS mark in connection with luxury goods, including gemstones and jewelry. The creation of this enterprise was widely reported. A page-one story in the Business Section of New York Times on January 17, 2001, trumpeted, De Beers, the South African diamond mining powerhouse that has made its name an international emblem of elegance and extravagance, and LVMH-Moet Hennessy Louis Vuitton, the French luxury retailer that has harnessed the brand power of some of the world’s finest goods, are joining forces.... [Tjhey were creating a new company that would open stores in the world’s most fashionable cities to sell diamond jewelry branded with the De Beers name already so widely associated with the precious stones. Two days earlier, the International Herald Tribune had also run a lengthy article about the partnership of these two giants and them intention “to set up De Beers stores across the world that would make the ... company the Dior of the diamond business.” In September 2002, Intangibles transferred to DBLV the ownership of various Internet domain names, including de-beers.com, debeers.biz, and debeersdia-monds.com. In 2005, these sites cumulatively received an average of 8.6 million hits each month, with approximately 60% coming from within the United States. Registration of the DE BEERS Mark Under the shareholder agreement, DBLV was required to register DE BEERS as a trademark in the United States “as soon as practicable” after the agreement was signed. On January 16, 2001, DBLV TM filed eleven intent-to-use applications with the PTO for “retail store services,” as well as for a variety of goods such as flatware, watches, clocks, perfumes, cosmetics, toiletries, luggage, purses, clothing, eyewear, stationery, glassware, and smokers’ articles. Having only a license but not an assignment of the name DE BEERS for use in connection with gemstones and jewelry, however, DBLV TM did not submit an application to register DE BEERS in connection with gemstones and jewelry. On June 18, 2001, the PTO determined that “retail store services” was “unacceptable as indefinite” and requested that DBLV TM specify the goods that would be sold. On December 14, 2001, DBLV TM refined its application to identify “[rjetail store services featuring luxury consumer products.” The PTO again objected that the description was insufficiently specific: “[Ajpplicant must specify the type of luxury goods, such as clothing, jewelry, fragrances, stationery, smoking articles, luggage, and china.” On September 16, 2002, counsel for DBLV TM made a written request to the PTO that the agency reconsider its objection on the ground that the products offered in the retail stores “will be of a wide range and will change from time to time.” Counsel for DBLV TM noted that DBLV TM would be competing with luxury retailers such as Cartier, which had been allowed to register its mark for “retail consumer goods and mail order services” without further specifying the goods to be offered. On October 12, 2004, the PTO published the mark DE BEERS for “retail store services featuring luxury consumer products.” Meanwhile, the plaintiffs chose a location for their first store in the United States, worked on the construction of the store, and opened it on Fifth Avenue in Manhattan on June 23, 2005. With that opening, DBLV TM filed an allegation of use with the PTO. On September 23, 2005, the trademark registration for luxury retail store services issued. Fame of the DE BEERS Mark The DE BEERS name has been used in advertising in the United States from the 1930s to promote the purchase of diamond jewelry generally. Ayer, who designed the ad campaigns for DBG until 1995, began placing ads on television in the 1970s, featuring the DE BEERS name and diamond jewelry. As of 1980 and 1981, when defendant Rosenblatt incorporated Syndicate, advertising prominently displaying the name DE BEERS in connection with diamonds was also appearing in major magazines such as Time, Vogue, and The New Yorker. During the 1980s, advertisements featuring the DE BEERS name and diamond jewelry appeared in about 85 magazines per year. The Ayer advertisements — which often featured the tagline “A Diamond Is Forever” and, in later years, silhouettes of women and men with diamond jewelry — are now widely regarded as some of the most successful marketing efforts of the 20th Century. In 1995, DBG switched its account from Ayer to JWT. JWT continued to advertise the DE BEERS name and diamond jewelry on television and in magazines and newspapers. Ayer and then JWT also worked through an in-house unit called the Diamond Promotion Service to help members of the diamond trade, including retailers, develop promotions to sell diamonds. DBG also engaged in an advertising campaign around the turn of the millennium in 1999 and 2000 (the “Millennium Campaign”). The advertisements pictured diamond jewelry and prominently featured the DE BEERS name and the “A Diamond Is Forever” slogan. In addition to its paid advertising campaigns, DBG received a substantial amount of unsolicited press coverage. Between 1996 and 2000, such coverage steadily increased. In 1996, approximately 237 articles about DE BEERS appeared in United States newspapers and magazines; by 2000, this number had grown to approximately 644. On occasion, the press referred to DBG and various of the De Beers Group companies as part of a “syndicate.” Sixty such mentions appeared in United States publications between 1973 and 2004. Eleven of these articles contained the phrase “De Beers diamond syndicate.” This decades-long and expensive advertising campaign achieved strong public awareness for the name DE BEERS and its association with diamonds. In early 2000, about a year before the execution of the joint venture enterprise documents, DBG hired Leo J. Shapiro & Associates (“Shapiro”) to survey consumers’ awareness of the DE BEERS name in this country. Shapiro carries out a wide-ranging monthly survey of consumer behavior that also includes inquiries on behalf of a single corporate client. Questions about DE BEERS were incorporated into the April and May 2000 surveys. The survey uses a probability sample of the continental United States population. It is administered by telephone, and interviewers ask to speak with heads of household over 18 years of age. Half of the respondents are male, and half are female. The survey results introduced by plaintiffs are based on the answers given by 900 respondents over the two-month period. Although the survey data was gathered in 2000, the report submitted by plaintiffs was compiled by Johnson, Shapiro’s CEO, in January 2006. The Shapiro survey showed that, unprompted, over 50% of respondents were familiar with the DE BEERS name, and that over one-quarter associated DE BEERS with diamonds. Awareness was even higher among consumers with household incomes of over $70,000 annually. Among those respondents who, through prompting or not, were familiar with DE BEERS and associated it with diamonds, about 60% believed that DE BEERS diamonds were of a higher quality. The brand DE BEERS has been identified by Brandweek and Adiveek magazines as one of America’s “superbrands.” In the 2001 survey, DE BEERS diamonds was ranked 144th on the list of America’s su-perbrands, above Campbell’s soup and Hallmark greeting cards. During 2005, the plaintiffs spent close to $4 million on advertising promoting the name DE BEERS. In November 2005, DBLV arranged for Vogue, W, and Vanity Fair, magazines in which it regularly advertised, to send an e-mail survey to their readers in the New York City area. Very few readers responded to the survey, but a sizeable majority of those who did respond were aware of DE BEERS as a company. The Success of the Plaintiffs’ Business Before opening their Manhattan store, the plaintiffs had previously launched stores in London, Paris, and Tokyo. They now have a second store in the United States, a branch in Beverly Hills, California. DBLV intends to open as many as 18 additional DE BEERS stores in the United States in the next few years. The Manhattan store’s current product offering consists of diamond jewelry and watches, but DBLV plans to begin selling other luxury goods as well. None of the DBLV stores purchase their diamonds exclusively from DBG affiliates. Instead, they purchase their gemstones on the open market, competing with other retailers for higher quality diamonds. DBLV’s stores do not offer loose diamonds for sale, although they sell them when asked. They do allow customers to select a diamond and match it with a setting of their choice, however, and that happens not infrequently- In its first week alone, thousands of people visited the New York store each day. In the half year in which they were open in 2005, the two American stores had total sales of close to $5 million. Defendants Defendant Rosenblatt is the president, sole shareholder, and sole employee of defendant Syndicate. His family has been connected with the diamond trade for three generations, always using some variation of the family name as its business name. Rosenblatt began working for his family’s diamond business, located at 580 Fifth Avenue in Manhattan, in the mid-1950s. As a family business, it bought and sold diamond jewelry and loose diamonds, principally providing consignment merchandise to New York dealers and retailers. It did not sell to the public. Indeed, the public did not even have access to the floor on which its office was located. In September 1981, after his father had died and when he was about 40 years of age, Rosenblatt formed DeBeers Diamond Syndicate, a Delaware corporation. He decided that he wanted to reorient the family business toward the consignment of higher quality diamonds, and expected that his choice of the company’s name would help to convey that intention. Ro-senblatt asserts that he chose the name DeBeers because of what he describes as its “mythological association with diamonds.” No one in his family, nor anyone associated with Syndicate, has the surname DeBeers or any other connection with the name DE BEERS. He testified that he added syndicate to the name because of its “cheeky” evocation of “a shadowy cartel that controlled the industry.” Rosenblatt understood that the name DE BEERS had powerful connotations. He and his fellow members of the New York City diamond trade used the name DE BEERS and the word syndicate to refer interchangeably to the cartel that they believed controlled the world’s supply of rough diamonds. Rosenblatt’s family in fact knew at least two “sightholders,” that is, individuals who bought rough diamonds from the DE BEERS syndicate during the “sights” that were held in London for a week at a time, roughly ten times a year. Syndicate was incorporated in Delaware, but had no other business address than the family business office at 580 Fifth Avenue in Manhattan. Rosenblatt added the name of his new company to his office door, where it appeared along with his family name. A family friend who worked in the diamond trade testified that Rosen-blatt’s use of the DeBeers name provoked laughter in the industry because “it was a gutsy thing to do.” Although Rosenblatt asserts that Syndicate bought, consigned, and sold loose diamonds, he has not offered any documents confirming even a single commercial transaction under the corporate name. He has not shown that the corporation had business cards, filed tax returns, had a separate telephone listing, or conducted any business whatsoever. Indeed, he has not shown how a customer would have understood that any single transaction was being conducted through Syndicate as opposed to the Rosenblatt family business. What is clear is that Rosenblatt soon abandoned any interest in the corporation. In 1986, Rosenblatt’s mother died and he moved to Europe. By 1986, the corporation had become inoperative as a matter of law for its failure to file annual reports and non-payment of taxes. By the early 1990s, Rosenblatt had even given up the lease on his offices at 580 Fifth Avenue. Learning that DBG and LVMH intended to launch a line of jewelry and open luxury retail stores employing the name DE BEERS in the United States, in late 2001, Rosenblatt decided to resurrect his corporation, but this time to use it to sell polished, certificated diamonds over the Internet at “very competitive prices.” He believed that the use of the name DeBeers would allow his company to succeed where other internet diamond businesses had failed because the name “always had a special cachet as well as wide public recognition and acceptance.” As a first step, on January 15, 2002, Rosenblatt reactivated Syndicate as a Delaware corporation. The business address of the company is now the same as Rosen-blatt’s home address in Manhattan. It has no separate telephone number and has done no advertising. Syndicate has not contacted potential customers or dealers to advise them that it is going into business again. It is essentially dormant, awaiting the outcome of this litigation. Rosenblatt has proceeded cautiously, well aware that he has no legitimate claim to the use of the name DeBeers. He decided that he would test the waters by filing for a trademark. In preparation for the filing of a trademark application, Ro-senblatt’s attorneys performed a Thomson & Thomson trademark search on January 17. The search found no active or pending registration of DE BEERS for diamonds, diamond jewelry, or the purchase and sale of diamonds and diamond jewelry. The first eleven references in the search, however, reflected filings in January 2001 by DBLV TM to use the mark DE BEERS in connection with a variety of items, including retail store services, watches and clocks, flatware, and porcelain. The search also revealed several marks for fine jewelry or diamonds that had been abandoned in the face of opposition by the Jewelers Vigilance Committee, Inc., including attempts to register Debeerson-line.com, Debeersonsale.com, Debeersu-sa.com, and Forever Yours Debeers Dia. Ltd. The lengthy search report also noted that DeBeers Consolidated Mines had run a print advertising campaign under the slogan “A Diamond Is Forever. De-Beers.” Undeterred by results of the search, on January 29, 2002, Syndicate filed two trademark applications with the PTO for the mark “DEBEERS DIAMOND SYNDICATE” for “diamonds,” and for “purchasing diamonds for others, wholesale ordering services and distributorship of diamonds.” The applications identified a first use date of June 1981, and a first use in commerce date of January 2002. This latter reference was to a single sale arranged by Rosenblatt to create the appearance of a use in commerce. On January 20, 2002, Rosenblatt made a sale of a 1.51-carat diamond from his personal stock of gems to East Continental Gems, Inc. for $9,750. East Continental Gems is located at 580 Fifth Avenue. This is the only sale of a diamond that Syndicate contends that it has made since its reactivation. In addition to submitting misleading evidence about the use of the mark in commerce, Rosenblatt made other misrepresentations to the PTO about the nature of his business enterprise, specifically, the extent to which the mark had been used in connection with any sale of goods or the provision of services. For example, despite Syndicate’s representation to the PTO that the mark “is used on or in connection with the above-identified services, by applying the mark to advertising and promotional materials for the services, and in other ways customary to the trade,” Syndicate did not have any advertising or promotional materials. Rosenblatt, as president of Syndicate, also represented to the PTO that he believed that he was the “owner” of the mark, and that to the best of his knowledge, no other person, firm, corporation or association has the right to use the above-identified mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods or services of such other person, to cause confusion, or to cause mistake, or to deceive. Contrary to this representation, Rosen-blatt understood that his use of the mark would likely cause confusion. The PTO required Syndicate to disclaim the words diamond and syndicate. After Syndicate agreed to do so, and after an examining PTO attorney found that his search of PTO records had uncovered “no similar registered or pending mark which would bar registration,” the PTO published Syndicate’s applications to register the mark in the Official Gazette for opposition on September 17 and October 1, 2002. Plaintiffs filed a timely opposition and eventually commenced this action in June 2004. As a result, proceedings in the PTO over the Syndicate applications are stayed. Meanwhile, in April 2002, Rosenblatt contacted Vickery Hill, a website development firm, which created a proposal for an Internet site to allow Syndicate to both “advertise” its business and “sell diamonds online”. Vickery Hill added to its proposal the representation that Syndicate “currently owns the domain name: de-beersdiamondsyndicate.com and will be responsible for any trademark or copyright issues associated with it,” because it was concerned about liability that might attach to Rosenblatt’s use of the name DeBeers. Vickery Hill had never added such language to any other client proposal. At approximately the same time, Rosen-blatt’s son prepared a preliminary design for a Syndicate website. The most prominent word on the site’s opening page is the word “De Beers,” that is, the identical name and spacing used in plaintiffs’ mark. The first page is entitled “De Beers Luxury Diamond Search,” and introduces a stylized logo “Simple Luxury De Beers,” with an interlocking d and b for the name De Beers. Syndicate’s corporate name does not appear on the proposal for the site. Rosenblatt testified that he will include a disclaimer on the site that will “disclaim any association with any foreign ‘De Beers’ entity that might or might not exist.” In May 2002, Rosenblatt began looking for investors in what he described as a project to “exploit[] the brand ‘DeBeers’ in the United States by means of e-commerce.” He put together a document describing the enterprise, which he sent to at least one potential investor. The document notes that DeBeers was originally associated with a South African mining company beginning in the late 19th century. Although, according to the document, Syndicate had “no connection with the South African company,” Rosenblatt hoped to use the “brand recognition” and “cachet” of the DeBeers name to build Syndicate’s business. In late 2002, Rosenblatt applied for and obtained approximately 35 Internet domain names involving variations on the name DeBeers. Many of these registrations do not use the word syndicate, but are for names such as debeersdia-monds.biz, debeersdiamondswholesale.biz, debeersdiamondsdirect.com, and debeers-diamondsretail.net. Rosenblatt plans to launch the Syndicate website and begin making sales once the registrations have issued. Actual Confusion Although the defendants have not begun to operate a website, their application to register a trademark with the DeBeers name has already generated confusion. Capetown Diamond Corporation, a retail jeweler, placed an ad in the New York Times in July 2005 for a diamond ring and used the phrase “En Garde DeBeers” to communicate that his jewelry was less expensive than what could be purchased in plaintiffs’ United States stores. He added a footnote to the advertisement, stating that DeBeers is “a registered trademark of DeBeers Diamond Syndicate Inc.,” wrongly believing that the plaintiffs were responsible for the defendants’ trademark application. Syndicate has also been named as a defendant in one lawsuit and contacted by plaintiffs’ counsel in another litigation based on the mistaken belief that it was associated with DBG. CONCLUSIONS OF LAW DBLV TM brings a claim for trademark infringement of its registered mark under Section 32 of the Lanham Act, 15 U.S.C. § 1114, and both plaintiffs bring a claim for infringement of their unregistered and common law mark under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). They also bring a claim of unfair competition under New York common law, and a claim of dilution under New York Gen. Bus. L. § 360 — Z. I. Lanham Act Claims To sustain a claim for trademark infringement under Sections 32 or 43(a), a plaintiff must first show that its mark is entitled to protection, and then that the defendant’s use of the mark is likely to cause confusion. Time, Inc. v. Petersen Publ’g. Co. LLC, 173 F.3d 113, 117 (2d Cir.1999). Here, DBLV TM’s Section 32 claim is based on its registration of DE BEERS in connection with luxury retail stores, which, plaintiff argues, gives it a protectable mark as of the filing of its application in January 2001. Plaintiffs’ Section 43(a) claim is based on the argument that, pursuant to the famous marks doctrine, DBG obtained protectable rights in the DE BEERS mark, which it later transferred to plaintiffs. Regardless of how plaintiffs’ rights are construed, they argue, defendants’ use of DE BEERS in connection with the sale of loose polished diamonds is likely to cause customers to be confused about the relationship between plaintiffs’ and defendants’ products. A. Plaintiffs’ Rights in DE BEERS 1. Section 32 Section 32 provides, in relevant part: Any person who shall, without the consent of the registrant— (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or (b) reproduce, counterfeit, copy, or col-orably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action by the registrant for the remedies hereinafter provided. 15 U.S.C. § 1114(1). As noted above, plaintiff DBLV TM owns a federal registration for DE BEERS in connection with “retail store services featuring luxury consumer products.” Registration of a trademark allows the owner to sue an infringer under Section 32 and creates a presumption that the mark is valid. See 15 U.S.C. § 1057; see also Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). Once a registration has issued, a registrant will be deemed to have priority as of the filing of the registration — here, January 16, 2001 (the “priority date”). 15 U.S.C. § 1057(c). In other words, the rights of the mark’s owner will trump those of anyone who, prior to filing, had not (1) used the mark, (2) filed an application with the PTO to register the mark, which is pending or has resulted in registration, or (3) filed a foreign application to register the mark and filed an application under Section 44(d) to register the mark in the United States, which is pending or has resulted in registration. Id. Even if a party shows that it obtained such rights before the claimed priority date, it may still be liable to the registrant if it is found to have abandoned the rights through lack of use. See 15 U.S.C. § 1127. Defendants do not claim to have filed an application with the PTO or any foreign trademark agency prior to January 16, 2001. Moreover, as discussed more fully below, even if they had been able to show that they used DeBeers in commerce before the priority date, it is clear that they abandoned the rights. Their only remaining argument against recognition of plaintiffs’ priority date of January 16, 2001, is that plaintiffs perpetrated fraud on the PTO in the process of applying for the registration. In particular, defendants allege that plaintiffs made a false statement and failed to disclose to the PTO that their product offering would sell diamond gemstones and jewelry, and that they lacked the rights necessary to trademark DE BEERS in connection with that category of products. Fraud in procuring a trademark occurs when “an applicant knowingly makes false, material representations of fact in connection with an application.” L.D. Kichler Co. v. Davoil, Inc., 192 F.3d 1349, 1351 (Fed.Cir.1999) (citation omitted). A party seeking cancellation of a registered trademark on grounds of fraud must demonstrate the alleged fraud by “clear and convincing evidence.” Orient Exp. Trading Co., Ltd. v. Federated Dept. Stores, Inc., 842 F.2d 650, 653 (2d Cir.1988). The Trademark Trial and Appeal Board of the PTO has held that this is a “heavy burden” that requires the opposing party to present proof that leaves “nothing to speculation, conjecture, or surmise. Should there be any doubt, it must be resolved against the party making the claim.” Marshall Field and Co. v. Mrs. Fields Cookies, 1992 WL 421449, 25 U.S.P.Q.2d 1321, 1328 (Trademark Tr. & App. Bd.1992). “Merely making a false statement is not sufficient to cancel a mark.” L.D. Kichler, 192 F.3d at 1351. Here, defendants have fallen short of meeting this heavy burden. Defendants first contend that DBLV TM falsely represented its intended product offering to the PTO by stating that “the products will be of a wide range and will change from time to time.” Defendants note that the plaintiffs’ core product is and always will be diamond jewelry. Therefore, they argue, the above statement was false to the extent it suggested that DBLV TM could not identify any products that would always be offered at plaintiffs’ stores. This argument is frivolous. As a simple linguistic matter, the claim is not that every product will change, but that the product offering as a ivhole will change. Defendants have not contested plaintiffs’ suggestion that they already do offer at least one product other than diamond jewelry, nor their stated intention to increase their non-jewelry offerings. The statement, therefore, is not false. Defendants also rely on the alleged omissions described above. In other contexts, the Second Circuit has repeatedly held that fraud can be committed by omission, not just misrepresentation. See, e.g., Crigger v. Fahnestock and Co., Inc., 443 F.3d 230, 234 (2d Cir.2006) (common law fraud); Lentell v. Merrill Lynch & Co., Inc., 396 F.3d 161, 173-74 (2d Cir.2005) (securities fraud). In the absence of a fiduciary duty (which defendants do not allege here), an omission is typically found to confer liability only where it is necessary to clarify an ambiguous or partial statement, or it causes another party to act on the basis of mistaken knowledge. See, e.g., Banque Arabe et Internationale D’Investissement v. Maryland National Bank, 57 F.3d 146, 155 (2d Cir.1995). That is not the case here. Defendants claim that plaintiffs failed to state explicitly that their core product would be diamond jewelry and suggest that DBLV TM should have described its mark as covering “retail store services featuring diamond jewelry and other luxury products.” The PTO’s own Trademark Manual of Examining Procedure, however, deems the use of the terms “including,” “comprising,” “such as,” “and the like,” “and similar goods,” and “like services” too indefinite to use in a trademark application. As a result, they “are almost always unacceptable.” United. States Patent and Trademark Office, Trademark Manual of Examination Procedures § 1402.03 (4th ed. April 2005). Defendants’ argument, therefore, amounts to a suggestion that DBLV TM committed fraud by failing to submit an application that would almost certainly have violated the PTO’s guidelines. This contention is rejected. Finally, defendants claim that DBLV TM failed to disclose to the PTO that it could not register DE BEERS in connection with gemstones and jewelry because, to the extent it possessed any such rights in the mark, it did so pursuant to a license, rather than an assignment. This argument fails for a number of reasons. First, the PTO did not request such information. Second, the omission of this material did not make any of the plaintiffs other statements ambiguous or misleading, much less false. The shareholders’ agreement that governs the scope and conduct of plaintiffs’ business provides that their product line “will be consistent with the types of products sold by luxury goods retailers.” Plaintiffs’ representations to the PTO regarding their product offerings is entirely consistent with the agreement: They told the PTO that the product line would change from time to time, and they likened their application to one filed by Cartier, a well-known luxury goods retailer whose primary product offering is jewelry. Third, plaintiffs have not shown that the omission materially affected the PTO’s actions. It is clear from the shareholders’ agreement and the GBL that, regardless of whether Intangibles or Trademarks currently owns the rights to use DE BEERS in connection with gemstones and jewelry, the owner intends for plaintiffs to be able to exploit these rights in the United States. Plaintiffs were not trying to fool the PTO into allowing them to profit from a mark that the rightful owner was hoping to exploit. Rather, they were attempting to carry out the owner’s wishes. Therefore, it seems unlikely that the PTO would have looked less favorably on plaintiffs application had it known that it was unable to register a mark for diamond jewelry. In sum, defendants have not shown that DBLV TM perpetrated a fraud on the PTO when it filed for registration of the DE BEERS mark in connection with luxury retail store services. Plaintiffs are entitled to rely on a priority date of January 16, 2001 in connection with the Section 32 claim. 2. Section 43(a) Section 43(a) provides in relevant part: Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ... shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 15 U.S.C. § 1125(a). To establish that a mark is covered by Section 43(a), a plaintiff must demonstrate that it is protecta-ble, and that plaintiff has engaged in “pri- or use and ownership.” Virgin Enters., Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir.2003). Although the language of Section 43(a) imposes a requirement of “use[ ] in commerce” only on the party who is alleged to have infringed an unregistered mark, courts impose the same requirement on plaintiffs who claim such infringement. De Beers, 2005 WL 1164073, at *7. Here, plaintiffs have offered no competent evidence that either they or DBG used DE BEERS as a mark in the United States prior to 2005. They seek to circumvent the requirement, however, by invoking the “famous mark” doctrine. Under this doctrine, plaintiffs argue, DBG acquired trademark rights in the DE BEERS name by conducting business abroad under the mark. The famous marks doctrine is a “controversial common-law exception” to the principle that the use of a mark overseas cannot form the basis for a holding of priority trademark use. Id. Under the doctrine, a foreign mark is protectable despite its lack of use in the United States “where the mark is so well known or famous as to give rise to a risk of consumer confusion if the mark is used subsequently by someone else in the domestic marketplace.” Id. (quoting ITC Ltd. v. Punchgini, Inc., 373 F.Supp.2d 275, 286 (S.D.N.Y.2005)]. The Second Circuit has expressly declined to reach the issue of whether to recognize the famous marks doctrine. See Empresa Cubana Del Tabaco v. Culbro Corp., 399 F.3d 462, 475 (2d Cir.2005). As the Court has previously discussed in more detail, see De Beers, 2005 WL 1164073, at *8-9, significant prudential considerations augur in favor of recognizing the doctrine. As a result, it would be applied here “if appropriate.” Id. Defendants offer two reasons for the Court to find that the famous marks doctrine is inappropriate here. First, defendants urge that the plaintiffs should not be allowed to “take advantage of’ the doctrine, contending that the Second Circuit’s Empresa decision stands for the proposition that an entity that does not do business in the United States “for legal reasons” cannot avail itself of the famous marks doctrine. The holding, however, is not so broad. In Empresa, the Circuit declined to allow a Cuban company to obtain trademark rights via the famous marks doctrine because such a result would have amounted to a “transfer of property rights ... in violation of the [federal] embargo.” Empresa, 399 F.3d at 476. Here, defendants do not allege that DBG was subject to such an absolute bar to conducting business in the United States. Instead, they argue that DBG avoided United States jurisdiction because it feared it would face a variety of legal actions if it did business in the country. Defendants do not, however, point to any cases indicating that an entity’s motivation for not using a mark in the United States is relevant to the applicability of the famous marks doctrine. Therefore, DBG’s choice to avoid doing business in the United States — whatever its reasons for making it — does not preclude it from obtaining American rights to a mark it used overseas. Defendants’ second argument, however, poses a more serious challenge to DBG’s claimed rights. They claim that, regardless of the fame of DE BEERS, DBG never used it as a mark. The Act defines a “trademark” to include “any word, name, symbol, or device, or any combination thereof used by a person ... to identify and distinguish his or her goods ... from those manufactured or sold by others and to indicate the source of the goods.” 15 U.S.C. § 1127. A mark is considered to be used in connection with goods when “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto ...” Id. It is deemed to be used in connection with services “when it is used or displayed in the sale or advertising of services and the services are rendered in commerce ...” Id. Fundamentally, then, rights in a mark do not arise through “mere adoption,” but only out of actual use. Buti v. Perosa, S.R.L., 139 F.3d 98, 103 (2d Cir.1998) quoting United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141 (1918)). Here, plaintiffs have put themselves in the awkward position of trying to prove that DBG used the DE BEERS mark in foreign commerce without actually submitting any testimony from De Beers Group employees. Indeed, they have consistently fought to keep virtually all evidence of DBG’s activities from coming into evidence at trial. Whatever other advantages plaintiffs may have seen in this strategic choice at the time, it now makes it exceedingly difficult for them to rely on a doctrine that turns entirely on the activities of DBG. The evidence plaintiffs have submitted regarding DBG’s business is scattered and piecemeal. It has been possible, however, to piece together a picture of the DBG enterprise, based largely on press clippings presented by plaintiffs as evidence of the fame of the mark. It appears that for much of the 20th century, DBG dominated the global diamond trade, controlling mines that produced as much as 85 percent of the world’s “rough” uncut diamonds. They sold these stones to a small group of dealers, cutters, and polishers, through the Central Selling Organization (“CSO”) in London. These sales, or “sights,” allowed DBG to exert enormous influence over the global price of diamonds by controlling the quality and quantity of gems released for sale each year. DBG companies have apparently registered DE BEERS for use in connection with gemstones and jewelry in dozens of countries. They have not done so in the United States. DBG has been the subject of multiple lawsuits in the United States, including at least one antitrust action brought by the Government. As a result, DBG has avoided doing business directly in the American market, and its executives avoid travel to the United States. As already noted, some press reports speculate that the structure of DBLV — in particular, its independence from DBG — was driven by DBG’s desire to circumvent the legal obstacles to its operating in the United States. DBG’s control over the diamond market has apparently fallen in recent years. This decline has been linked to the discovery of new mines, political turmoil in various African countries, and the enormous expense of DBG’s efforts to keep prices high by “soaking up” excess diamonds on the world market. In part because of its loss of control over the diamond market, DBG began looking for new avenues of business, eventually deciding to enter and leverage the power of the DE BEERS name in the retail market. This led to the formation of the companies that are plaintiffs in this action. Plaintiffs have consistently opposed the defendants’ efforts to submit evidence of DBG’s turbulent past, as well as its alleged bad acts, including its purported anticom-petitive practices and its claimed connection to the so-called “conflict diamond” trade. For instance, prior to trial, the Court granted plaintiffs’ motion in limine preventing defendants from introducing a DBG annual report. Similarly, during discovery, plaintiffs succeeded in quashing defendants’ efforts to depose Gary Ralfe, a director of DBLV and chairman of the board of DBLV TM, about his activities as a managing director of DBG. Further, plaintiffs seem to have acceded to the apparent desire of DBG executives to avoid depositions and American discovery. As a result, the evidence that DBG used DE BEERS as a mark is fragmented. Diamond testified that she attended trade shows where DBG operated booths marked with the DE BEERS name, and visited the company’s offices and mines in England and Africa, which also displayed the DE BEERS name; Parker observed DBG’s sale of rough diamonds in London at sights, although she was not sure whether they were made under the DE BEERS name; Leymarie testified that while he worked at Cartier, DBG approached him about supplying the company with diamonds; Scheer admitted that on his company website, he describes the firm as being “sightholders of De Beers’ for finished products”; and Rosenblatt himself admitted in his presentation to a potential investor that “DeBeers [was] synonymous with both diamonds and a monolithic international cartel that controlled the worldwide distribution of ‘rough’ (uncut) diamonds.” Plaintiffs also introduced a 1981 article from Business Week that states that De Beers controlled 85% of the world’s uncut diamonds. Although such evidence is both admissible and probative of DBG’s use of DE BEERS as a mark, it is insufficient to establish such use for the purposes of the famous marks doctrine in this case. As noted above, the doctrine is controversial and has not yet been recognized by the Second Circuit. Furthermore, because the doctrine is an abrogation of the territoriality principle, a fundamental element of trademark law, courts must be extremely cautious when applying it. See, e.g., Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1097 (9th Cir.2004) (expressing concern about the potential of the famous marks doctrine to eliminate the territoriality principle altogether by encouraging courts to treat “foreign uses of the mark just as we treat domestic uses”). Here, there are undoubtedly dozens of officers and executives of DBG who could have testified about the companies’ activities based on first-hand knowledge. Plaintiffs, however, decided not to call any of them as witnesses, and chose actively to oppose defendants’ efforts to bring other competent evidence about DBG into the case. An added wrinkle here is that, to the extent plaintiffs have shown that DBG used the DE BEERS mark, the evidence was largely associated with the sale of raw, unpolished diamonds. In the United States, however, the mark’s fame among consumers derives principally from its association with diamond jewelry — a product that DBG has apparently never sold. Under these circumstances, and given the potential of this controversial doctrine to alter substantially the landscape of trademark law, defendants have not proffered enough evidence to find that any rights in DE BEERS accrued to DBG under the famous marks doctrine. B. Defendants’ Rights in DE BEERS Defendants do not own a registered mark in DE BEERS. Therefore, their rights in the mark, if any, must derive from “prior use and ownership.” Virgin Enters., 335 F.3d at 146. “To prove bona fide usage, the proponent of the trademark must demonstrate that his use of the mark has been deliberate and continuous, not sporadic, casual or transitory.” La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271-72 (2d Cir.1974). In other words the proponent must show “a trade in the goods sold under the mark or at least an active and public attempt to establish such a trade. Absent these elements, no trademark can be created or exist.” Id. at 1274. The user who first appropriates the mark may prevent others from using it, “as long as the initial appropriation and use are accompanied by an intention to continue exploiting the mark commercially.” Id. “Determining what constitutes sufficient use for trademark ownership purposes is obviously a case-by-case task.... [T]he balance of the equities plays an important role in deciding whether defendant’s use is sufficient to warrant trademark protection.” Id. at 1274 n. 11. 1. The Early 1980s Defendants claim that during the early 1980s, Syndicate bought and sold Gemological Institute of America (“GIA”) stones under the name “DeBeers Diamond Syndicate.” Other than showing that Rosen-blatt put the company name on the door of his family business, an action which apparently caused some amusement among occupants of the building, the defendants have not shown through credible evidence that Syndicate engaged in commercial activity during this period. For instance, defendants have not produced any documents that evidence a single purchase or sale under the Syndicate name. Moreover, even if Syndicate had established rights in DE BEERS during this period, it abandoned them through disuse of the name between 1986 and 2002. Abandonment occurs when a mark “has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127, Because intent is difficult to prove directly, it “may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.” M “A proprietor who temporarily suspends use of a mark can rebut the presumption of abandonment by showing reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate.” Silverman v. CBS Inc., 870 F.2d 40, 47 (2d Cir.1989). A bare assertion of possible future use is not enough. Id. It is uncontested that defendants did not use the Syndicate name for more than 15 years — indeed, they admit that the corporate entity was inactive between 1986 and 2002. This period far exceeds the length of time specified by the Act as prima facie evidence of abandonment. Defendants cannot rebut that presumption. They claim that “poor economic conditions” in the mid-1980s prevented Rosenblatt from continuing the business, and that he “always intended to continue the business when conditions were right.” Apart from this bare assertion, however, defendants have offered no support for their claim of an ongoing plan to resume use. Conversely, there is ample evidence indicating that Rosenblatt simply abandoned not just the corporate vehicle but the family diamond business altogether. He moved to Europe, opened a gallery, and, though he maintained a residence in New York, he gave up the lease on the offices at 580 Fifth Avenue. 2. Recent Use Rosenblatt revived Syndicate on January 15, 2002. Five days later, he sold a single diamond to East Continental Gems, Inc. for $9,750. Defendants have not presented any evidence of other purchases or sales by Syndicate since the revival. Courts typically do not deem usage sufficient “when it is obviously contrived solely for trademark maintenance purposes.” La Societe, 495 F.2d at 1273. This is clearly the case here. The sale was not a bona fide use of the mark in commerce. In any event, defendants’ recent use of the mark comes too late to defend against plaintiffs’ Section 32 claim. Plaintiffs have established a first use date of January 16, 2001. Therefore, plaintiffs have shown priority over defendants with respect to their use of the mark in connection with luxury retail stores. C. Likelihood of Confusion In order to succeed on the Section 32 claim, plaintiffs must show that defendants’ use of “DeBeers Diamond Syndicate” is “likely to cause confusion in the marketplace.” Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576, 578 (2d Cir.2005); accord 15 U.S.C. § 1115(1). Plaintiffs claim infringement of their registered mark for luxury retail stores, despite the fact that it does not explicitly cover jewelry. The various protections that are created by a registered trademark are generally limited to the use of the mark “in connection with the goods or services specified in the certificate____” 15 U.S.C. § 1057(b). Nonetheless, a trademark owner has “rights against use on related, noncompeting products ... in accord with the realities of mass media salesmanship and the purchasing behavior of consumers.” Scarves by Vera, Inc. v. Todo Imps. Ltd. (Inc.), 544 F.2d 1167, 1172 (2d Cir.1976). The extension of trademark protection to related products guards against improper restraints on the “possible expansion of the senior user’s market, including consumer confusion, tarnishment of the senior user’s reputation, and unjust enrichment of the infringer.” Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259 (2d Cir.1987). The market for luxury goods is sufficiently related to the market for gem-grade polished diamonds to justify an inquiry into whether defendants’ products are likely to cause confusion with plaintiffs retail stores. See Scarves by Vera, 544 F.2d at 1174. To establish that defendants’ sale of diamonds under the Syndicate name is likely to cause confusion with plaintiffs’ products and services, plaintiffs must show that “numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant’s mark.” Playtex Products, Inc. v. Georgia-Pacific Corp., 390 F.3d 158, 161 (2d Cir.2004) (citation omitted). Confusion giving rise to a claim of trademark infringement includes confusion as to “source, sponsorship, affiliation, connection, or identification.” Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 383 (2d Cir.2005) (citation omitted). “The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.” Id. at 384 (citation omitted). Affiliation confusion exists where use of a “unique and recognizable identifier” could lead consumers to “infer a relationship” between the trademark owner and the new product. Id. (citation omitted).. To determine whether confusion is likely to arise, courts in the Second Circuit apply the eight-factor test set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961). These factors are: (1) the strength of the plaintiffs’ mark; (2) the similarity between the marks; (3) the proximity of the products or services; (4) the likelihood that the plaintiffs will “bridge the gap” between their offerings and those of the defendants; (5) evidence of actual confusion; (6) evidence of bad faith on the part of the defendants; (7) the quality of the defendants’ product; and (8) the sophistication of the relevant customers. Id. In balancing the Polaroid factors, courts generally should not treat any s