Full opinion text
MEMORANDUM OPINION AND ORDER THEODORE H. KATZ, United States Magistrate Judge. In this action, Plaintiff JA Apparel Corp. (“Plaintiff’ or “JA Apparel”) sues Defendants Joseph Abboud (“Abboud”), Houndstooth Corp. (“Houndstooth”), and Herringbone Creative Services, Inc. (“Herringbone”) (at times, collectively “Abboud”) for (1) breach of contract, (2) trademark infringement, false designation of origin, unfair competition, trademark dilution, false and deceptive trade practices, and (3) a declaratory judgment regarding the nature of its rights, stemming from a June 16, 2000 Purchase and Sale Agreement (the “Agreement”), and a related July 13, 2000 Side Letter Agreement (the “Side Letter”), between, on the one hand, JA Apparel, and on the other, Abboud and Houndstooth. Defendants assert counterclaims against JA Apparel and one of its principals, Martin Staff (“Staff’), for false endorsement, false advertising, violation of New York Civil Rights and General Business Laws, and common law unfair competition, stemming from activities in which JA Apparel and Staff allegedly engaged subsequent to the expiration of the Side Letter. The parties consented to trial before this Court, pursuant to 28 U.S.C. § 636(c) and Fed.R.Civ.P. 73. Following a bench trial, the Court issued a Memorandum Opinion and Order, concluding that the parties’ Agreement clearly included the sale to JA Apparel of all of Joseph Abboud’s trademarks, as well as his name for all commercial purposes. The Court, therefore, granted Plaintiff injunctive relief and dismissed all of Abboud’s counterclaims. See JA Apparel Corp. v. Abboud, 591 F.Supp.2d 306 (S.D.N.Y.2008) (“Abboud I”). On appeal, the Second Circuit concluded that the language of the Agreement was ambiguous, and vacated this Court’s decision and remanded for further proceedings. See JA Apparel Corp. v. Abboud, 568 F.3d 390, 403 (2d Cir.2009). Following remand, the parties submitted hefty briefs, containing their proposed findings of fact and conclusions of law with respect to those issues raised by the Second Circuit, namely, any extrinsic evidence of the parties’ intent regarding the sale of Abboud’s name, and whether Abboud’s proposed advertisements for his new clothing line, containing his name, constitute trademark fair use. {See Plaintiff and Counterclaim-Defendants’ Supplemental Proposed Findings of Fact and Conclusions of Law on Remand, dated Nov. 6, 2009 (“PL’s Post-Remand Mem.”); Defendants and Counterclaim-Plaintiffs’ Second Supplemental Findings of Fact, dated Nov. 6, 2009 (“Defs.’ PosWRemand Mem. I”); Defendants and Counterclaim-Plaintiffs’ Second Supplemental Proposed Rulings of Law, dated Nov. 6, 2009 (“Defs.’ Post-Remand Mem. II”); Plaintiff and Counterclaim-Defendants’ Reply Brief on Remand, dated Nov. 20, 2009 (“PL’s Post-Remand Reply Mem.”); Defendants and Counterclaim-Plaintiffs’ Reply Memorandum of Law, dated Nov. 20, 2009 (“Defs.’ PosNRemand Reply Mem.”).) What follows are the Court’s findings of fact and conclusions of law. FACTUAL BACKGROUND The facts underlying this action are set out in more complete detail in the Court’s initial Opinion. See Abboud I, 591 F.Supp.2d at 311-15. The Court assumes the reader’s familiarity with those facts, and, in this Opinion, includes only relevant background information, procedural history, and facts relating to any extrinsic evidence of the parties’ intent and Abboud’s proposed use of his name in promoting his new clothing line. 1. The Purchase and Sale Agreement At the heart of this litigation is the interpretation of the Purchase and Sale Agreement, executed on June 16, 2000, by and between JA Apparel, Abboud and Houndstooth. In exchange for a payment of $65.5 million, which was to be “allocated 100% to Abboud,” Abboud agreed to “sell, convey, transfer, assign and deliver” to JA Apparel “all of [his] right, title and interest in and to” the following: (A) The names, trademarks, trade names, service marks, logos, insignias and designations identified on Schedule l.l(a)(A), and all trademark registrations and applications therefor, and the goodwill related thereto (collectively, the “Trademarks”) ... and all other Intellectual Property (as hereinafter defined). (B) All licenses to use the Trademarks granted by Houndstooth or Abboud ... (collectively, the “License Agreements”). (C) All rights to use and apply for the registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words “Joseph Abboud,” “designed by Joseph Abboud,” “by Joseph Abboud,” “JOE” or “JA,” or anything similar to or derivative thereof, either alone or in conjunction with other words or symbols (collectively, the “New Trademarks”), for any and all products and services. (D) All books, financial records, invoices, and other documents, records and data files relating primarily to the Trademarks or the License Agreements. (E) The goodwill of or pertaining to the Trademarks. (The items referred to in clauses (A) through (E) of this Section 1.1(a) are collectively referred to as the “Assets”). (PX-1 ¶ l.l(a)(A)-(E).) The Schedule attached as an exhibit to the Agreement is labeled “Trademark Report by Mark,” and contains the name Joseph Abboud. The Agreement also has an integration clause, which states: 9.9. Entire Agreement. This Agreement, including the Exhibits and Schedules hereto and the documents, certificates and instruments referred to herein, embody [sic] the entire agreement and understanding of the parties hereto in respect of the transactions contemplated by this Agreement. There are no restrictions, promises, representations, warranties, covenants or undertakings, other than those expressly set forth or referred to herein. This Agreement supersedes all prior agreements and understandings between the parties with respect to such transactions. (Id. ¶ 9.9.) II. The Side Letter On July 13, 2000, the same parties entered into the Side Letter, pursuant to which Abboud agreed to serve as “Chairman Emeritus” of JA Apparel, and, for a period of five years, provide JA Apparel with, among other things, consulting services relating to fashion design and brand promotion of products sold under the Abboud marks. The Side Agreement, therefore, was to expire on July 13, 2005, but the terms provided that upon expiration, Abboud would not compete with JA Apparel for a period of two years — until July 13, 2007 (the “Restricted Period”). III. The Underlying Dispute Not long after the execution of the Agreement and the Side Letter, the parties’ relationship soured. They fought over Abboud’s role in the creative process at JA Apparel, and Abboud filed and later dismissed a lawsuit against JA Apparel. The parties temporarily resolved their differences in the summer of 2004 by way of a June 29, 2004 Letter Agreement, pursuant to which Abboud was given new responsibilities at JA Apparel. The following year, in the spring of 2005, Abboud informed JA Apparel that he would no longer continue in his position with JA Apparel. The Personal Services period terminated on July 13, 2005, thereby triggering the Restricted Period that was to run until July 13, 2007. In early 2007, Abboud began plans to start his new “jaz” clothing line, which would compete in certain respects with the clothing and accessories sold by JA Apparel under the Joseph Abboud trademark. But it was not until August 2007 that JA Apparel first learned of Abboud’s intentions to use his name in connection with the new venture through an article published in DNR, a leading magazine of the men’s fashion industry. (See PX-8.) The DNR article initially stated that “Abboud, the person, is prohibited from using the Joseph Abboud name on any product or marketing materials.” (PX-8.) The article’s author, however, notified JA Apparel that Defendants had requested a correction (see PX-9), and DNR later ran a “Clarification,” which stated that Abboud is “allowed to use his name on marketing and advertising materials for Jaz.” (PX-10.) In August 2007, the Wall Street Journal ran a similar article announcing the new “jaz” line, and which reported that Abboud “plans to promote his new label with the tagline ‘a new composition by designer Joseph Abboud.’ ” (PX-11.) Subsequently, Abboud created several “mock-ups” of proposed ads for the new “jaz” clothing line. (See, e.g., PX-42, PX-43, DX-187, and DX-188.) Each of these ads includes the words “Joseph Abboud” in addition to Abboud’s new trademark, “jaz.” While the ads are similar in many respects, the font, size, and placement of the words differ in each of the ads, and are discussed in greater detail in this Opinion’s fair use analysis. JA Apparel maintains that while Abboud is free to compete in the menswear market, he sold all rights to use his name in connection with goods and services, and that his proposed uses of his name in connection with the “jaz” line would violate the Agreement, infringe JA Apparel’s trademarks, and constitute unfair competition. Defendants, conversely, maintain that Abboud merely sold the use of his name as a trademark and did not sell the exclusive right to use his name for all commercial purposes. Thus, they argue, the proposed use of his name in advertising constitutes trademark fair use. In furtherance of that position, Defendants assert Counterclaims against JA Apparel and Staff for using the Joseph Abboud name in ways that they claim deceive consumers, trade on Abboud’s personal reputation, and constitute unfair competition. PROCEDURAL HISTORY I. Abboud I At trial, both Defendants and Plaintiff argued that the Agreement was unambiguous. Plaintiff contended that since the Agreement provided for the sale of the names — in addition to the trademarks, trade names, service marks, logos and designations — contained in the exhibit to the Agreement, and the name Joseph Abboud was in the exhibit, Abboud sold the right to the commercial use of his name. Defendants, in turn, argued that the word “names” was merely one of several ways of describing the trademarks in the Agreement’s exhibit, and, therefore, Abboud sold only trademarks containing his name. In Abboud I, after determining that the relevant provisions of the Agreement were unambiguous, this Court agreed with Plaintiff and concluded that Abboud “sold, conveyed, transferred, assigned, and delivered to JA Apparel all of his right, title and interest to the use of his personal name, in addition to the trademarks, trade names, and designations containing his name, for commercial purposes.” Abboud I, 591 F.Supp.2d at 326. Thus, Abboud’s proposed use of his name in connection with his new “jaz” clothing line would constitute a breach of the Agreement. See id. As a result, the Court permanently enjoined Abboud from, inter alia, using the name Joseph Abboud “to sell, market, or otherwise promote goods, products, and services to the consuming public.” Id. at 349. Notwithstanding this interpretation of the Agreement, and “in the interest of completeness,” the Court determined that “Abboud’s proposed use of his name in connection with the ‘jaz’ line would also constitute trademark infringement.” Id. at 327; see also id. at 328-32. In light of these findings, the Court dismissed Plaintiffs remaining claims as duplicative. See id. at 332. Finally, the Court dismissed all of Abboud’s counterclaims, based primarily on Abboud’s sale to Plaintiff of “the exclusive right to commercially use the Joseph Abboud name in connection with goods and services.” Id. at 345; see also id. at 345^8. II. The Second Circuit’s Decision On appeal, the Second Circuit disagreed with this Court’s conclusion that the word “names” in the Agreement unambiguously conveyed to Plaintiff the exclusive right to commercially use the Joseph Abboud name, and remanded for further consideration of any extrinsic evidence of the parties’ intent. See JA Apparel Corp., 568 F.3d at 399. The Second Circuit agreed that JA Apparel’s interpretation of the Agreement (as endorsed by this Court in Abboud I) was “a plausible reading of the word ‘names’ in ¶ l.l(a)(A),” but also found Abboud’s interpretation “reasonable in light of several aspects of the Agreement.” Id. at 398. Next, the Second Circuit stated that “[i]n the event that the district court does not rule in favor of JA [Apparel] on the contract claim on remand, it will be required to address the trademark issues.” Id. at 403. This was due, in part, to the fact that this Court’s analysis of trademark fair use relied on its findings with respect to the Agreement. Furthermore, the Second Circuit determined that “individualized consideration of the various proposed advertisements is needed” to address Abboud’s fair use defense. Id. at 402. The Court of Appeals declined to address any other issues decided by this Court, but noted that this Court “is free on remand to revisit” those issues. Id. at 403. DISCUSSION On remand from the Court of Appeals, this Court must first decide two narrow questions: (1) based on the Agreement’s language and any extrinsic evidence of the parties’ intent, did Abboud agree to sell his name, other than as a trademark or related intellectual property, to JA Apparel?; and (2) if Abboud sold his name only as a trademark or related intellectual property, do his proposed ads qualify as fair use under the Lanham Act? Answering the first question in the affirmative disposes of the need to address the second, as well as the parties’ other remaining claims and counterclaims. I. Contract Interpretation A. Legal Standard Under New York law, “the fundamental, neutral precept of contract interpretation is that agreements are construed in accordance with the parties’ intent, and that the best evidence of what parties to a written agreement intend is what they say in their writing.” Innophos, Inc. v. Rhodia, S.A., 10 N.Y.3d 25, 29, 852 N.Y.S.2d 820, 823, 882 N.E.2d 389 (2008) (internal citations omitted). Where, as here, a contract is negotiated by sophisticated parties at arm’s length: [C]ourts should be extremely reluctant to interpret an agreement as impliedly stating something which the parties have neglected to specifically include. Hence, courts may not by construction add or excise terms, nor distort the meaning of those used and thereby make a new contract for the parties under the guise of interpreting the writing. Vt. Teddy Bear Co., Inc. v. 538 Madison Realty Co., 1 N.Y.3d 470, 475, 775 N.Y.S.2d 765, 768, 807 N.E.2d 876 (2004) (internal citations omitted); see also Beth Isr. Med. Ctr. v. Horizon Blue Cross & Blue Shield of N.J., Inc., 448 F.3d 573, 580 (2d Cir.2006) (“Under New York law, [c]ourt[s] must enforce contract provisions clearly-expressing parties’ intent.”); Terwilliger v. Terwilliger, 206 F.3d 240, 245 (2d Cir.2000) (“A court may neither rewrite, under the guise of interpretation, a term of the contract when the term is clear and unambiguous, nor redraft a contract to accord with its instinct for the dispensation of equity upon the facts of a given case.”); Belle Harbor Wash. Hotel, Inc. v. Jefferson Omega Corp., 17 A.D.3d 612, 612, 795 N.Y.S.2d 597, 598 (2d Dep’t 2005) (“A written agreement that is complete, clear, and unambiguous on its face must be enforced in accordance with the plain meaning of its terms.”). The determination of “[w]hether or not a writing is ambiguous is a question of law to be resolved by the courts.” W.W.W. Assocs., Inc. v. Giancontieri, 77 N.Y.2d 157, 162, 565 N.Y.S.2d 440, 443, 566 N.E.2d 639 (1990). A writing is not ambiguous simply because the parties urge different interpretations in the litigation. See Hunt Ltd. v. Lifschultz Fast Freight, Inc., 889 F.2d 1274, 1277 (2d Cir.1989). If a court makes a determination that the contract is unambiguous, extrinsic evidence regarding the intent of the parties is inadmissible and cannot be considered. See W.W.W. Assocs., Inc., 77 N.Y.2d at 162, 565 N.Y.S.2d at 443, 566 N.E.2d 639; see also Terwilliger, 206 F.3d at 245 (“[M]atters extrinsic to the agreement may not be considered when the intent of the parties can fairly be gleaned from the face of the instrument.”). On the other hand, if the words of a contract are ambiguous, extrinsic evidence is properly considered. See Seiden Assocs., Inc. v. ANC Holdings, Inc., 959 F.2d 425, 429 (2d Cir.1992). If an ambiguity requires consideration of extrinsic evidence, a court must look to all “surrounding facts and circumstances” in order to ascertain the parties’ intended meaning of the contract. See U.S. Naval Inst. v. Charter Commc’ns, Inc., 875 F.2d 1044, 1048 (2d Cir.1989) (citing 67 Wall St. Co. v. Franklin Nat’l Bank, 37 N.Y.2d 245, 248, 371 N.Y.S.2d 915, 918, 333 N.E.2d 184 (1975)); see also Korff v. Corbett, 18 A.D.3d 248, 251, 794 N.Y.S.2d 374, 377 (1st Dep’t 2005) (“[W]here words used in a written contract are susceptible of more than one interpretation, the courts will look at the surrounding circumstances existing when the contract was entered into, the situation of the parties and the subject matter of the instrument.”) (internal quotation marks and citations omitted). This includes “any relevant course of performance, course of dealing, [and] usage of trade,” Restatement (Second) of Contracts § 202, as well as “a party’s own admissions, the party’s actions or statements from which knowledge or reason to know may be inferred, and the usages and meanings of third persons with which the party probably was familiar.” 5-24 Corbin on Contracts § 24.10. In resolving ambiguity, a court may also resort to “the common and legal meanings of the terms involved, where such meanings are clear, and, of paramount significance, to the manifest purpose sought to be accomplished.” Teig v. Suffolk Oral Surgery Assocs., 2 A.D.3d 836, 837, 769 N.Y.S.2d 599, 600 (2d Dep’t 2003). A court is prohibited, however, from considering the parties’ “[u]ncommunicated subjective intent.” Wells v. Shearson Lehman/Am. Express, Inc., 72 N.Y.2d 11, 24, 530 N.Y.S.2d 517, 524, 526 N.E.2d 8 (1988); see also First Montauk Secs. Corp. v. Menter, 26 F.Supp.2d 688, 689 (S.D.N.Y. 1998) (“[I]t is hornbook law that the uncommunicated subjective intent of a party is irrelevant in interpreting a contract.”); Padovano v. Vivian, 217 A.D.2d 868, 869, 629 N.Y.S.2d 844, 846 (3d Dep’t 1995) (same). B. Application Although the parties previously maintained that the Agreement is unambiguous, and this Court agreed, we are nonetheless bound by the Second Circuit’s conclusion that the Agreement is, in fact, ambiguous. Thus, the Court must consider both the plain language of the Agreement and any extrinsic evidence of intent in order to decide whether Abboud sold the exclusive right to use his name commercially to JA Apparel. Upon a careful review of the Agreement and all attendant circumstances to its execution, the Court concludes that he did not. On November 11, 1999, after preliminary discussions regarding the transaction that would ultimately result in the Agreement and the Side Letter, Abboud sent a “letter of understanding” to Mr. Roberto Jorio Fili, CEO of JA Apparel’s then-owner, GFT. (See DX-161.) Specifically, Abboud noted as one of three “Points of Agreement,” the sale of “all Joseph Abboud trademarks.” (Id.) The letter made no mention of the sale of Abboud’s personal name for commercial use, but concluded with Abboud’s self-proclaimed ultimate goal: “to build the Joseph Abboud name into the successful global brand I know it can be.” (Id.) On December 3, 1999, Mr. Paolo Vigitello of GFT, responded to Abboud, noting that “it must be defined that the acquisition target is represented by all Joseph Abboud trademarks personally owned by Mr. Abboud.” (DX-2.) On February 2, 2000, the parties met in Milan, Italy to discuss further details of the sale. In minutes from this meeting, Fili “stresses that GFT wants to buy only the trademarks and not the two companies currently owned by J[oseph] Abboud.” (DX-162.) A letter outlining the “key points” from the verbal agreement reached at this meeting makes clear that the “[o]bject of the operation” is the “acquisition of trademarks.” (DX-3.) Two days later, on February 4, 2000, Vigitello sent a letter to Abboud confirming that the “[tjarget of the deal” is the “purchase of all the trademarks existing and worldwide registered plus exclusive and perpetual right to the buyer to use and apply for registration of whatever new denomination in association with the name ‘Joseph Abboud’ and/or using ‘designed by Joseph Abboud’ or simply ‘by Joseph Abboud’ linked to automotive industries products, to clothing, casualwear, sportswear and furnishing products and/or accessories in the most wide meaning ... and home products.” (DX-4.) Vigitello continued, “[If JA Apparel intends to use] the name ‘Joseph Abboud’ in association with products different from the ones above mentioned^ it] must obtain the previous written consent [of Abboud] ..., which consent cannot be unreasonably withheld.” (Id.) The following week, on February 10, 2000, the parties entered into a letter of intent, specifying the “[a]ssets to be [p]urchased” as all “right, title and interest in and to all trade names, trademarks and service marks existing as of the Closing (as defined below) and registered or used in any country in the world (collectively, the ‘Trademarks’), together with all registrations and applications therefor, the goodwill related thereto and any and all claims for past infringement.” (DX-5.) The letter of intent also denoted that JA Apparel was purchasing “all licenses to use the Trademarks” and “all of the right, title and interest ... to use and apply for the registration of new trade names, trademarks and service marks containing the words ‘Joseph Abboud,’ ‘designed by Joseph Abboud,’ ‘by Joseph Abboud,’ ‘JOE’ or ‘JA,’ or anything similar thereto or derivative thereof, either alone or in conjunction with other words or symbols (collectively, the ‘New Trademarks’).” (Id.) The letter of intent did not include the sale of “names.” As discussions continued, the agreement not to compete became a point of contention for Abboud. In a February 23, 2000 letter, Abboud’s counsel, Mr. Theodore Dinsmoor, wrote to JA Apparel’s counsel, Mr. Jeffrey LaGueux, alerting him that: [Abboud] wants to have the opportunity to pursue his trade as a designer of apparel [after the expiration of the five-year Personal Services period.] In this regard, Mr. Abboud understands that any effort on his part to pursue his trade as a designer of apparel could not include his use of the name “Joseph Abboud” or any of the other trademarks conveyed to JA Apparel. (PX-347.) Concerned that the tension between the parties might derail the deal, Fili wrote directly to Abboud on February 25, 2000, and reiterated that “[r]ight from the initial steps of our negotiation I have always declared that our objective was and still is the acquisition of the trade marks.” (DX-8.) In response, Abboud wrote to Fili: If, for whatever reasons, the corporation does not want to continue with my services after five years, I want the option to practice my skills should I choose to continue working in the future. It goes without saying that at no time will I have any rights to any of the Joseph Abboud trademarks. Here is where you must separate Joseph Abboud personally from the Joseph Abboud trademarks. (DX-9.) In conclusion, Abboud wrote that his decision is “emotional, because I am relinquishing my name (albeit for a large sum) which I have worked toward building since I entered this industry full time in 1972, 28 years ago.” (Id.) On March 17, 2000, the parties entered into a letter agreement, whose language mirrored that of the February 10, 2000 letter of intent. (DX-165.) Again, the letter agreement made no mention of the sale of “names.” JA Apparel, as agreed upon by the parties, prepared the first draft of the Agreement. The draft Agreement, sent from LaGueux to Dinsmoor on May 3, 2000, described certain of the assets to be purchased as “[t]he names, trademarks, trade names, service marks, logos, insignias and designations identified on Schedule l.l(a)(i)(A).” (PX-318 (emphasis added).) This was the first time the word “names,” standing alone as an asset to be purchased, appeared in any of the parties’ correspondence. Dinsmoor wrote to LaGueux on May 19, 2000, proposing various changes to the draft Agreement, but did not comment on the newly inserted term, “names.” (DX-163.) As discussed by the parties, Dinsmoor compiled a listing of all trademarks owned by Abboud that was to be used as Schedule l.l(a)(A), and sent it to LaGueux on May 23, 2000. (DX-185.) The parties exchanged a second draft of the Agreement in June (see DX-166), which continued to include the word “names,” but Dinsmoor again did not address its inclusion or meaning. (See DX-167.) On June 16, 2000, the parties prepared a draft press release to accompany the acquisition. (See DX-178.) The release noted that “[o]n the basis of the signed contract, GFT Net will acquire the trademarks and licensing agreements registered in the name of Joseph Abboud.” (Id.) A subsequent revised release contained similar language, referencing the purchase of “all existing trademarks and licensing agreements and all future trademarks bearing the Joseph Abboud name.” (DX-14.) Neither version of the release indicated that the “name” Joseph Abboud, as anything other than a trademark, would be sold. At the closing of the sale, Abboud assigned “all rights, title and interest in and to the Marks and registrations or applications associated with them, together with the goodwill of the business symbolized by and associated with the Marks and their respective registrations or applications.” (DX-180.) Abboud did not assign any rights to his name, other than for use as a trademark. The final Agreement, as did the drafts, included the sale of “names,” in addition to “trade names, trademarks, service marks, logos, insignias and designations identified on Schedule 1.1(a) (A),” but there is no evidence of any negotiations or discussions of the sale of Abboud’s name as an asset distinct from the trademarks and related intellectual property. (PX-1.) Despite the “fairly extensive extrinsic evidence” submitted at trial, see Abboud I, 591 F.Supp.2d at 318, this evidence sheds little, if any, light on the parties’ intended meaning of the term “names.” That said, the parties’ communications indicated that from the outset of their negotiations they intended to buy or sell only trademarks and related intellectual property. (See, e.g., DX-161 (“letter of understanding” from Abboud to Fili denoting a “Point of Agreement” as the sale of “all Joseph Abboud trademarks”); DX-2 (letter from Vigitello to Abboud, noting that “the acquisition target is represented by all Joseph Abboud trademarks”); DX-162 (meeting minutes indicating that GFT “wants to buy only the trademarks”); DX-4 (letter from Vigitello to Abboud identifying the “[t]arget of the deal” as the “purchase of all the trademarks”); DX-5 (letter of intent specifying the “[a]ssets to be [p]urchased” as all “trade names, trademarks and service marks”); DX-8 (letter from Fili to Abboud reiterating that “our objective was and still is the acquisition of the trade marks”).) It was only at the drafting stage that the word “names” entered the picture as a term of the Agreement. (See PX-318 (May 3, 2000 draft of the Agreement including, for the first time, the word “names”).) In fact, the word “names” as an asset to be sold is included only in the drafts and final version of the Agreement, and in no other correspondence relating to the transaction. Indeed, neither party has been able to point the Court to any extrinsic evidence that evinces the reason for this word’s inclusion or meaning in the Agreement. JA Apparel focuses primarily on Abboud’s failure to object to the term “names” in the draft Agreement to support its proposed interpretation. The Court does not find such silence to constitute sufficient evidence of an intent to buy or sell an additional and distinct asset never discussed by the parties. JA Apparel does, however, emphasize two letters that it claims illustrate that “Abboud did not retain the right to use his name under the terms of the Agreement.” (See PL’s Post-Remand Mem. at 16.) The first is a letter written several months before the Agreement was executed, from Abboud’s attorney to JA Apparel’s attorney. (See PX-347.) In the letter, Dinsmoor writes, “Mr. Abboud understands that any effort on his part to pursue his trade as a designer of apparel could not include the use of the name Joseph Abboud or any of the other trademarks conveyed to JA Apparel.” (Id. (emphasis added).) Although at first glance this sentence appears to preclude “use of the name Joseph Abboud,” it is followed by the phrase “or any of the other trademarks.” (Id.) The inclusion of the word “other”- to qualify “trademarks” demonstrates that “Joseph Abboud” was also referenced as a trademark. But the Court need not rely on this academic exercise of sentence deconstruction, because in the same letter, Dinsmoor writes, “technically JA Apparel is only acquiring Mr. Abboud’s trademarks.” (Id.) JA Apparel also relies heavily on a letter from Abboud to Fili in March of 2000, in which he characterizes his decision to consummate the sale as “emotional, because I am relinquishing my name (albeit for a large sum) which I have worked toward building since I entered this industry full time in 1972, 28 years ago.” (DX-9.) JA Apparel argues that Abboud could not be referring to only trademarks in this sentence, because “Joseph Abboud” was not used as a trademark until 1987. (See Pl.’s Posh-Remand Mem. at 16-17.) At first blush, this document does lend some support to JA Apparel’s position. Nevertheless, in the same letter, Abboud writes, “It goes without saying that at no time will I have any rights to any of the Joseph Abboud trademarks.” (DX-9.) And then, in a sentence that perhaps underscores the essence of this entire dispute, Abboud writes, “Here is where you must separate Joseph Abboud personally from the Joseph Abboud trademarks.” (Id.) Although JA Apparel has offered both a reasonable and persuasive interpretation of the Agreement — and one that the Court previously adopted — Abboud has offered a competing interpretation that the Second Circuit has concluded is equally reasonable. See JA Apparel Corp., 568 F.3d at 398-99. This fact, coupled with the extrinsic evidence that explicitly discusses the sale of trademarks and related intellectual property, and the absence of any extrinsic evidence that addresses Abboud’s sale of his personal name for all other commercial purposes, compels the Court to conclude that section l.l(a)(A) did not convey to JA Apparel the exclusive right to use Abboud’s name for commercial purposes other than as a trademark, service mark, trade name, or brand name. The Court, however, is mindful that such an interpretation might be construed as rendering the word “names” mere surplus-age. See God’s Battalion of Prayer Pentecostal Church, Inc. v. Miele Assocs., LLP, 6 N.Y.3d 371, 374, 812 N.Y.S.2d 435, 437, 845 N.E.2d 1265 (2006) (“A contract ‘should be read to give effect to all its provisions.’ ”) (quoting Mastrobuono v. Shearson Lehman Hutton, Inc., 514 U.S. 52, 63, 115 S.Ct. 1212, 1219, 131 L.Ed.2d 76 (1995)); see also Two Guys from Harrison-N.Y., Inc. v. S.F.R. Realty Assocs., 63 N.Y.2d 396, 403, 482 N.Y.S.2d 465, 468, 472 N.E.2d 315 (1984) (“[0]ne of a court’s goals is to avoid an interpretation that would leave contractual clauses meaningless.”). Nevertheless, as Judge Sack noted in his concurring opinion in the Court of Appeals’ remand decision: [T]he rule [against surplusage] should nonetheless be applied with a grain or two of salt when examining a list of words having similar or even overlapping meaning in a commercial agreement. Such an itemization of terms may reflect an intent to occupy a field of meaning, not to separate it into differentiated parts. Indeed, this is a common — perhaps all-too-familiar— technique used in drafting agreements, commercial and otherwise. With this technique, words are used more like the brush strokes of a house painter than of those of a portrait painter — each intended principally to ensure that the surface is covered, not to convey a separate piece of information. JA Apparel Corp., 568 F.3d at 407 n. 4 (Sack, J., concurring). In memorializing their intent, the parties included what amounted to a laundry list of words that fell under the more general penumbra of “trademarks” and related intellectual property (which can include, e.g., brand names or commercial names). That the word “names” could bear a broader meaning, including one’s personal name, cannot overcome the dearth of extrinsic evidence in support of JA Apparel’s interpretation of the Agreement. Thus, it is more reasonable to conclude that the word names was intended to mean something similar to the other assets sold in section l.l(a)(A) of the Agreement — such as “brand names” or “commercial names” — and not the exclusive right to all commercial use of Abboud’s personal name. This is consistent with the language of section 1.1(a)(0), in which Abboud sold to JA Apparel the right to use and apply for new marks containing Abboud’s personal name. Because the Court concludes that Abboud did not sell the exclusive right to use his personal name commercially, the Court must continue with an analysis of JA Apparel’s trademark claims. II. Trademark Infringement Based upon Abboud’s proposed use of his name in advertising the “jaz” line of clothing, JA Apparel also asserts claims for trademark infringement under Section 32 of the Lanham Act, 15 U.S.C. § 1114(1), and New York common law. In response, Abboud relies on the defense of “fair use” pursuant to Section 33(b)(4) of the Lanham Act, 15 U.S.C. § 1115(b)(4). In addition, Abboud argues that his “proposed use is protected commercial speech under the First Amendment to the United States Constitution, and that JA Apparel is not entitled to equitable relief on its infringement claims because of its own unclean hands.” Abboud I, 591 F.Supp.2d at 327. Before addressing the merits of the trademark claims and defenses, it bears noting the inherent relationship between the trademark and contract claims. Despite the Court’s conclusion that Abboud did not sell the exclusive right to commercially use his name, there is no question that Abboud sold his trademarks to JA Apparel, which include the mark “Joseph Abboud.” Thus, if JA Apparel prevails on its trademark claims, Abboud is not only liable for infringement, but also for breach of contract. A. Legal Standard for Trademark Infringement In order to prevail on a claim for trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), a plaintiff is required to show that its marks are valid and entitled to protection and that a defendant’s use of those marks is likely to cause consumer confusion as to the origin or sponsorship of the defendant’s goods. See, e.g., Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir.2003); Time, Inc. v. Petersen Publ’g Co., 173 F.3d 113, 117 (2d Cir.1999). In evaluating the likelihood of confusion, courts in this Circuit regularly apply what have become known as the Polaroid factors: (1) strength of plaintiffs mark; (2) degree of similarity between the two marks; (3) proximity of the parties’ products or services; (4) likelihood that the prior owner will bridge the gap between the parties’ products or services; (5) actual confusion; (6) defendant’s bad faith in adopting its mark; (7) quality of defendant’s products or services; and (8) sophistication of the relevant consumers. Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961); see also Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576, 578 (2d Cir.2005). B. Application As determined by the Court in Abboud I: Plaintiff put on competent evidence at trial demonstrating, among other things: (a) the strength of the Abboud marks (see TT at 30-41, 246, 257, 540-41); (b) the close proximity of the goods and services at issue (see id. at 72-73, 76, 87-88, 95-96, 610-614; PX 8, 11, 38); and (c) at least some instances of actual confusion within the industry (see id., at 128-29, 276-280, 293-94, 300-03; PX 13, 187, 189), despite the fact that the “jaz” products have not even hit the market. Based on this evidence, the Court has no difficulty concluding that there exists a substantial likelihood of confusion between Abboud’s proposed uses and Plaintiffs trademarks. Abboud I, 591 F.Supp.2d at 328. Similarly, the Second Circuit concluded that, on appeal, “defendants effectively conceded that JA owned valid ‘Joseph Abboud’ trademarks and that it had made a prima facie showing under the Polaroid test, [and] that [Abboud’s] use of his name as a trademark would likely cause confusion.” JA Apparel Corp., 568 F.3d at 400 (internal citations omitted). Despite Abboud’s attempt to relitigate the likelihood of confusion on remand (see Defs.’ PosNRemand Mem. I at 80-81), the Court sees no reason to revisit this issue. Accordingly, the Court need only address Abboud’s fair use defense, and, if necessary, his First Amendment and unclean hands defenses. C. Legal Standard for Statutory Fair Use The fair use defense, which allows for some level of confusion, is an absolute defense to claims of trademark infringement, trademark dilution, and false designation of origin. To successfully assert the fair use defense, an alleged infringer must demonstrate that: [T]he use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, ... of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin. 15 U.S.C. § 1115(b)(4). Thus, in order to determine whether the use of a term is “fair” under this defense, courts endeavor to assess whether the term is used (1) descriptively, (2) other than as a mark, and (3) in good faith. See, e.g., Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (2d Cir.1995). Abboud argues that he is not seeking to use his name as a trademark. By the use of such phrases as “by the award-winning designer Joseph Abboud” and “a new composition by designer Joseph Abboud,” Abboud argues that he is merely seeking to use his name descriptively to convey information to the public about the products sold under his “jaz” trademark. A use of a mark is descriptive where “the name or term is used ‘to describe the goods.’ ” Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28, 30 (2d Cir.1997) (quoting 15 U.S.C. § 1115(b)(4)). The Second Circuit has not limited the phrase “to describe the goods” to the description of a characteristic of the goods, but rather, allows for the use of words or images “in their ‘descriptive sense.’ ” See id. (quoting CarFreshner Corp., 70 F.3d at 269). “Descriptive use is evident in such situations ‘[w]here a mark incorporates a term that is the only reasonably available means of describing a characteristic of another’s goods.’ ” Dessert Beauty, Inc. v. Fox, 568 F.Supp.2d 416, 426 (S.D.N.Y.2008) (quoting EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos, Inc., 228 F.3d 56, 65 (2d Cir.2000)). Confusion that may result from a defendant’s descriptive use of a plaintiffs mark is often viewed as “a risk entailed in the [plaintiffs] selection of a mark with descriptive attributes.” Car-Freshner Corp., 70 F.3d at 270; accord Cosmetically Sealed Indus., 125 F.3d at 30. To determine if a defendant is using the challenged term or phrase “as a trademark,” courts examine whether a defendant’s use is designed to “indicate[] the source or origin of consumer products.” Dessert Beauty, 568 F.Supp.2d at 424 (citing Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F.Supp.2d 410, 414 (S.D.N.Y.2002)). Put another way, “the use of [a] term as a symbol to attract public attention” is generally considered “use ... as a mark.” Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495, 499 (2d Cir.1962). When use of the challenged words or phrase is accompanied by a defendant’s own, conspicuously visible mark, this generally does not constitute trademark use. See Cosmetically Sealed Indus., 125 F.3d at 30-31 (concluding that non-trademark use is “evidenced by the fact that the source of the defendants’ product is clearly identified by the prominent display of the defendants’ own trademarks”); see also Car-Freshner Corp., 70 F.3d at 270 (finding defendant’s use did not constitute “use as a mark” when product was sold “in boxes prominently bearing [defendant’s] trademark [and] corporate logo”); but see E. Gluck Corp. v. Rothenhaus, 585 F.Supp.2d 505, 513 (S.D.N.Y. 2008) (stating that “multiple marks may be used together”); Quiksilver Inc. v. Kymsta Corp., 466 F.3d 749, 757 (9th Cir.2006) (“A product mark like ‘ROXY,’ even if always displayed with a house mark like ‘QUIKSILVER,’ may acquire independent trademark significance.”). Courts should also consider the “ ‘physical nature of the use in terms of size, location, and other characteristics in comparison with the appearance of other descriptive matter or other trademarks,’ as well as the ‘presence or absence of precautionary measures such as labeling or other devices designed to minimize the risk that the term will be understood in its trademark sense.’ ” See JA Apparel Corp., 568 F.3d at 401 (quoting Restatement (Third) of Unfair Competition § 28 cmt. c). With respect to the third factor, bad faith is often evinced by an “intent to confuse.” See id. A defendant who “in-ten[ds] to trade on the good will of the trademark holder by creating confusion as to source or sponsorship” cannot claim that his use is employed in good faith. See EMI Catalogue P’ship, 228 F.3d at 66. This analysis is similar to the sixth Polaroid factor, which examines whether a defendant “intended to capitalize on plaintiffs good will.” See id.; see also FunDamental Too, Ltd. v. Gemmy Indus., 111 F.3d 993, 1005 (2d Cir.1997); Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 964 (2d Cir.1996). In this step, a court may also consider any likelihood of confusion. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 123, 125 S.Ct. 542, 550, 160 L.Ed.2d 440 (2004) (noting that the fair use defense “does not foreclose the relevance of the extent of any likely consumer confusion”); Madrigal Audio Labs., Inc. v. Cello, Ltd., 799 F.2d 814, 823 (2d Cir.1986) (permitting defendant to advertise with his surname, provided he does so “in a not overly intrusive manner”); see also 2 McCarthy § 11:47 (“I think it clear that traditional evidence of likely confusion is indeed admissible and relevant on the issue of classic fair use.”). The fact that a defendant uses another’s mark with knowledge of a plaintiffs federal registration or without consulting counsel does not preclude the fair use defense. See Car-Freshner Corp., 70 F.3d at 270. Nevertheless, some courts have found that an inference of a lack of good faith may be drawn from a defendant’s breach of an agreement not to use the disputed trademark. See Inst. for Scientific Info. v. Gordon & Breach, Sci. Publishers, Inc., 931 F.2d 1002, 1009 (3d Cir.1991). In the context of surnames, additional circumstances may warrant consideration. While a surname may acquire secondary meaning and become a trademark, it will generally “continue[] to serve the important function to its bearer of acting as a symbol of that individual’s personality, reputation and accomplishments as distinguished from that of the business, corporation or otherwise, with which he has been associated.” Madrigal Audio Labs., 799 F.2d at 822. Historically, courts believed that “[e]very man has the absolute right to use his own name in his own business, even though he may interfere with or injure the business of another person bearing the same name.” Meneely v. Meneely, 62 N.Y. 427, 427 (1875). The more modern view, however, is that the “so-called ‘sacred right’ theory that every man may employ his own name in his business is not unlimited.” David B. Findlay v. Findlay, 18 N.Y.2d 12, 19, 271 N.Y.S.2d 652, 655, 218 N.E.2d 531 (1966). If an individual has previously sold “use of his name and its goodwill, to the plaintiff, ... courts will be especially alert to foreclose attempts by the seller to ‘keep for himself the essential thing he sold, and also keep the price he got for it.’ ” Levitt Corp. v. Levitt, 593 F.2d 463, 468 (2d Cir.1979) (quoting Guth v. Guth Chocolate Co., 224 F. 932, 934 (4th Cir.1915)); see also Equibrand Corp. v. Reinsman Equestrian Prods., Inc., No. 03-cv-0536, 2007 WL 1461393, at *13 (N.D.Tex. May 17, 2007) (finding that if an individual sells the right to use his name in connection with certain products, a subsequent attempt to use his name with different products “is not a ‘fair use’ ... even if it is an accurate description of the products”). If a court determines that an individual sold only the right to use his name as a trademark, as opposed to the exclusive right to use his name commercially, the seller may advertise his affiliation with a new company, but must do so “in a not overly intrusive manner.” Madrigal Audio Labs., 799 F.2d at 823. Finally, in addressing whether use of a surname is in bad faith, there is certainly a distinction to be made between a defendant who happens to have the same surname as the plaintiffs trademark, and a defendant who has previously sold his surname-trademark to the plaintiff. See 2 McCarthy § 13:15 (“If a person whose surname has been legally adopted by a senior user, then severs his ties with that company and goes into business for himself, he has no unqualified right to use his own name, if the result is likelihood of confusion.”). D. Application Throughout the trial, Abboud waffled as to the precise manner in which he believes he can use his name under the Agreement. At the outset of the trial, JA Apparel introduced as evidence several “mock-ups” of proposed ads created by Abboud. (See, e.g., PX-42, PX-43.) Abboud, however, testified that these were only “potential layouts for a concept for advertising,” and he had not yet “decided what he was going to do” with them. (See TT 575-78, 596-601.) Although Abboud is reluctant to commit to these earlier proposed ads, the Court will consider them as relevant to Abboud’s intentions and potential uses of the Joseph Abboud name in advertising. Towards the end of the trial, Abboud submitted two additional proposed ads that he believes will not infringe on JA Apparel’s trademark rights, and to which he was willing to commit for purposes of this Court’s fair use analysis. (See DX-187, DX-188.) The Court has included as exhibits to this Opinion one of the ads contained in Plaintiffs Exhibit 42, Plaintiffs Exhibit 43, and Defendants’ Exhibit 187. 1. Descriptive, Non-Trademark Use In the Court’s view, the two proposed ads that Abboud believes qualify under the fair use defense, Defendants’ Exhibits 187 and 188, do not use Abboud’s name as a trademark. A viewer of these ads is immediately drawn to the large, white scripted font, approximately four inches wide by two inches high, in which Abboud’s duly owned trademark, “jaz,” is displayed. The words “Joseph Abboud” in these two exhibits appear in the context of a complete sentence, “JAZ IS A NEW LUXURY COLLECTION CREATED BY THE AWARD-WINNING DESIGNER JOSEPH ABBOUD.” This sentence is in a significantly smaller font than “jaz,” roughly 3/16 of an inch high, and placed in the lower left-hand corner of the ad.' The ad also includes the words “FALL 2008” in the upper left-hand corner, and “NEW YORK” and “MONTREAL,” each followed by a telephone number, in the lower right-hand corner. All of these words are in the same font, color, and size as the tagline that includes Abboud’s name. As a result, Abboud’s name is no more the focal point of the ads than the company’s telephone number. Nor is it positioned in such a way as to attract significant public attention. Turning to the next factor in the fair use test, Abboud uses his name, at least in Defendants’ Exhibits 187 and 188, in its descriptive sense. The phrase “JAZ IS A NEW LUXURY COLLECTION CREATED BY THE AWARD-WINNING DESIGNER JOSEPH ABBOUD” alerts viewers that Abboud, the individual, is the designer behind the new “jaz” clothing line. And indeed, Abboud is an award-winning designer who has created “jaz.” Furthermore, Abboud’s use of his name is the only “reasonably available means” by which he can inform his potential customers that he is the designer of the “jaz” line. See Dessert Beauty, 568 F.Supp.2d at 426. Thus, the Court concludes that Abboud’s proposed use of his name in Defendants’ Exhibits 187 and 188 is a descriptive, non-trademark use. Certain of Abboud’s other proposed uses, however, may not be so easily characterized as descriptive, non-trademark uses. For example, in several of the mock-ups to which Abboud refused to commit, “Joseph Abboud” is displayed in block letters, either just below or to the side of the only slightly larger trademark, “jaz.” {See, e.g., PX-42.) Although Abboud’s name is always preceded by the phrase “a new composition by,” oftentimes that phrase is much smaller and/or in a different font than the words “Joseph Abboud.” In addition, the words “Joseph Abboud,” in some of these ads, are written in what appears to be the identical font as one of JA Apparel’s federal trademark registrations. {See Pl.’s Post-Trial Mem. at 16 (Registration No. 2690336).) And while Abboud’s trademark, “jaz,” certainly grabs the viewer’s attention, the words “Joseph Abboud,” in at least some of the mock-ups, are similarly eye-catching. In the Court’s view, such a use takes Abboud’s name outside of the realm of descriptive, non-trademark use, because, while perhaps technically describing the authorship of the “jaz” line, the name is used more as an attention-grabbing symbol. See Safeway Stores, 307 F.2d at 499. On the other hand, Plaintiffs Exhibit 43 is clearly a descriptive, non-trademark use. In that ad, Abboud’s trademark, “jaz,” is prominently displayed, in the same large, white scripted font used in Defendants’ Exhibit 187. Abboud’s name is used only within a block of very small text in the lower right-hand corner of the ad next to Abboud’s photo. It is practically a strain on the eyes to read the miniscule text (approximately 1/16 of an inch high), which simply identifies Abboud as the model in the ad’s photo and indicates he is the designer behind the “jaz” line: “DESIGNER JOSEPH ABBOUD IN A 2 BUTTON SUPER 120 S CHARCOAL CHALKSTRIPE FROM HIS FALL 2008 JAZ COLLECTION.” (Id.) Further, those words are followed by a disclaimer that “DESIGNER JOSEPH ABBOUD IS NO LONGER ASSOCIATED OR AFFILIATED WITH JA APPAREL CORP., THE OWNER OF THE TRADEMARK ‘JOSEPH ABBOUD.’tm” (id.) The disclaimer certainly assists in eliminating any confusion that might result. In fact, JA Apparel all but admits that this ad would be a permissible use by Abboud. (See PL’s PostARemand Mem. at 22-23.) 2. Good Faith Use The more difficult question posed by Abboud’s fair use defense, however, is whether Abboud intends to use his name in good faith. Abboud argues primai’ily that his use is in good faith due to the fact that he has refrained from running any ads, sought guidance from counsel, and requested declaratory relief from the Court on the permissible fair use of his personal name. (See Defs.’ PosWRemand Mem. I at 69-72.) While the Court appreciates Abboud’s deference to the legal process, this reasoning is misplaced. Because the Court is asked to consider Abboud’s proposed uses, the analysis must look to whether, if the ad ran, Abboud is using his name with an intent to confuse. See JA Apparel Corp., 568 F.3d at 401. If the Court concludes that Abboud, in fact, “in-ten[ds] to trade on the good will of [JA Apparel] by creating confusion as to source or sponsorship,” he cannot meet the third factor of the fair use test. See EMI Catalogue P’ship, 228 F.3d at 66. Any likelihood of confusion that results — even unintentionally — is also relevant. See KP Permanent Make-Up, 543 U.S. at 123, 125 S.Ct. at 551 (“[W]e do not rule out the pertinence of the degree of consumer confusion under the fair use defense.”). The Court is troubled by several of Abboud’s admissions with respect to his intent to use his name in advertising. First, Abboud testified that he intends to use “the slogan or tagline ‘a new composition by designer Joseph Abboud.’ ” (TT 579 (emphasis added).) Use of a “slogan” or “tagline” certainly suggests an intent to create an affiliation between “jaz” products and “Joseph Abboud.” And, although Abboud’s subjective intent might be “to inform the public that [Abboud the individual is] the creator of the product,” (id.) as opposed to JA Apparel, absent a disclaimer, this seems likely to create significant confusion in certain of the proposed ads. Further, Abboud testified that he wants his name to “[c]ertainly [be] large enough” for consumers to see and read. (TT 569.) This statement again suggests that Abboud, in effect, wants to promote his “jaz” line by using “Joseph Abboud” as a symbol to attract public attention. See Safeway Stores, 307 F.2d at 499. Perhaps most telling, is Abboud’s admission that he wants to inform the public that he is the “source” of the new “jaz” line. (See TT 580.) Trademarks are designed to identify the “source” of goods and services. See TCPIP Holding Inc. v. Hoar Commc’ns, Inc., 244 F.3d 88, 95 (2d Cir.2001) (noting that “trademarks functions [sic] as source-identifiers”). While Abboud admittedly used the term “source” as a layman (see Defs.’ Post-Remand Reply Mem. at 7 n. 9), the Court cannot ignore the significance of this statement when coupled with the other evidence regarding Abboud’s intentions. Abboud’s counsel has argued on remand that “Abboud’s identification by personal name enables consumers to assess his talent, skill, artistic ability and reputation and thereby discern the quality, proficiency, suitability and safety of his ‘jaz’ collection.” (Defs.’ Post-Remand Mem. I at 73.) This is, again, precisely what trademarks are designed to protect. See TCPIP Holding Co., 244 F.3d at 95 (noting that trademark law “ ‘helps assure a producer that it will reap the financial, reputation-related rewards associated with a desirable product’ ”) (quoting Qualitex Co. v. Jacobson Prods., Co., 514 U.S. 159, 164, 115 S.Ct. 1300, 1303, 131 L.Ed.2d 248 (1995)); see also Levitt Corp., 593 F.2d at 468 (“When a business purchases trademarks and goodwill, the essence of what it pays for is the right to inform the public that it is in possession of the special experience and skill symbolized by the name of the original concern, and the sole authority to market its products.”); 1 McCarthy § 3:1 (stating that trademarks “identify” and “distinguish” goods, alerting consumers that they come from a single “source” and are of a particular “quality”). As Abboud sold the goodwill of the Joseph Abboud trademark to JA Apparel— for $65.5 million — he cannot now claim fair use based on his desire to capitalize on that reputation. (See PX-1 ¶ l.l(a)(A) (selling the trademarks “and the goodwill related thereto”).) See also In re The Leslie Fay Cos., Inc. (“Nipón”), 216 B.R. 117, 124 (Bankr.S.D.N.Y.1997) (“The sale of a trademark includes the sale of the mark along with the goodwill and tangible business assets that go along with the trademark.”). Although it may seem unfair to Abboud, because he “worked toward building [his name] since ... entering] th[e] clothing industry full time in 1972” (see DX-9), New York law is clear that the seller cannot “attempt[ ] to arrogate to himself the trade reputation for which he received valuable consideration.” Levitt Corp., 593 F.2d at 468. In sum, Abboud may alert consumers that he is the designer behind the new “jaz” line, but he cannot do so in an “overly intrusive manner,” Madrigal Audio Labs., 799 F.2d at 823; nor can he do so in a way that is utterly confusing. See KP Permanent Make-Up, 543 U.S. at 123, 125 S.Ct. at 550. The Court is mindful that “[t]his is not a case where a first comer seeks to save himself a place in a new market he has not yet entered by denying to a man the use of his own name in exploiting that market.” Taylor Wine Co., Inc. v. Bully Hill Vineyards, 569 F.2d 731, 733 (2d Cir.1978). Rather, this is a case in which an individual elected to use his name for many years as a trademark, building up substantial goodwill; he then sold the same, but intends to continue to commercially exploit his name by designing clothes in competition with the purchaser of the trademark. This case therefore presents an inherently difficult scenario, because Abboud’s use of his name in the sale of clothing will inevitably lead to consumer confusion. Defendants’ Exhibits 187 and 188— while a close call — satisfy all of the elements of the fair use defense, provided that Abboud includes a disclaimer as discussed below. Abboud has used his name in its descriptive sense, embedded in a complete sentence that identifies Abboud the individual as the designer of the “jaz” line. Further, Abboud’s name is accompanied by the more prominently displayed “jaz” trademark. Nevertheless, in view of the fact that the average consumer would have great difficulty discerning a difference in sources between clothes marketed under the Joseph Abboud mark and clothes designed by Joseph Abboud the person, Abboud’s use of his name is not unlimited, and must yield to such consumer confusion. See Levitt Corp., 593 F.2d at 469-70 (upholding injunction of individual’s use of his name in advertising “to prevent confusion and to protect the value of plaintiffs goodwill”). Thus, Abboud may not use his name in Defendants’ Exhibits 187 and 188 or anything similar absent a disclaimer of his affiliation with JA Apparel and products sold under the Joseph Abboud trademarks. See Joseph Scott Co. v. Scott Swimming Pools. Inc., 764 F.2d 62, 69 (2d Cir.1985) (permitting defendant’s use of his surname, provided he “make perfectly clear that his firm is no longer associated with, and is not a successor to, [plaintiff]”); Taylor Wine Co., 569 F.2d at 736 (requiring similar disclaimer); but see Soltex Polymer Corp. v. Fortex Indus., Inc., 832 F.2d 1325, 1330 (2d Cir.1987) (noting that disclaimers “may not always provide an effective remedy against an infringing use”). Any disclaimer must be no smaller than the accompanying text in which Abboud uses his name. The decision of the Court would be easier if Abboud were to embrace the mock-up proposed in Plaintiffs Exhibit 43. In that ad, Abboud’s use of his name unquestionably qualifies under the fair use defense. In fact, the placement, size, and usage of Abboud’s name in Plaintiffs Exhibit 43, together with the disclaimer, arguably removes the likelihood of any confusion, and abrogates the need to even discuss the affirmative defense of fair use. The Court cannot conclude, however, that the ads in Plaintiffs Exhibit 42 constitute fair use. As noted above, the size and font of “Joseph Abboud” — virtually identical to the Joseph Abboud trademark— remove it from the realm of descriptive, non-trademark use. And by doing so, Abboud creates utterly confusing ads that cannot withstand scrutiny under the fair use test, even if a disclaimer were included. Although the “jaz” trademark is also displayed in each of these ads, consumers might be led to believe that “jaz” is simply a sub-line of clothing created by the rightful owner of the “Joseph Abboud” trademark' — JA Apparel. This is particularly so given the prominence of the name “Joseph Abboud” in each of these ads. Together with Abboud’s admis