Rockland Exposition, Inc. v. Alliance of Automotive Service Providers (894 F. Supp. 2d 288, 2012)

OPINION AND ORDER

KENNETH M. KARAS, District Judge.

Plaintiff Rockland Exposition, Inc. (“Plaintiff’ or “REI”) brings this action against Defendants Alliance of Automotive Service Providers of New Jersey (“AASP”), Tom Elder, Thomas Greco, Thomas Greco Publishing, Inc., and Glenn Villacari (collectively, “Defendants”). Plaintiff alleges federal claims for copyright protection, trademark infringement, and trade libel and false advertising, and New York state law claims for trademark infringement, unfair competition, dilution, trade libel, misappropriation of trade secrets, tortious interference with contract, tortious interference with business relations, and breach of contract. Defendants now move for partial summary judgment to dismiss Counts Four through Eleven of Plaintiffs Amended Complaint. For the forgoing reasons, Defendants’ motion is granted in part and denied in part.

J. Background

This Court has extensively described the factual background and procedural history of this case in two prior opinions. See Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of N.J. (“Rockland I”), Nos. 08-CV-7069, 08-CV-11107, 2009 WL 1154094, at *1-4 (S.D.N.Y. Mar. 19, 2009); Rockland Exposition, Inc. v. Alliance of Auto. Serv. Providers of N.J. (“Rockland II ”), 706 F.Supp.2d 350, 352-53 (S.D.N.Y.2009). Here, it will only highlight those facts which are relevant to the pending motion.

A. Factual Background

AASP is a non-profit organization of independent automotive collision and repair businesses (Defs.’ R. 56.1 Statement of Material Facts (“Defs.’ 56.1”) ¶ 1), and claims that for over thirty years, it has presented an annual trade show at which various exhibitors showcase their goods and services to AASP members and to others in the automotive collision and repair business, (id. ¶ 3). AASP claims that it first began referring to its annual trade show as the “Northeast” Autobody Congress and Trade Show as early as 1985 (id. ¶ 8), and since then has promoted its annual “Northeast” trade show through advertising and other means, (id. ¶ 10). REI is in the business of running trade shows, and claims that it and its predecessor and related companies have been in the business of running trade shows, mostly with an automotive theme, since 1974. (Counter Statement Under R. 56.1, Pl.’s Contentions (“Pl.’s 56.1”) ¶ 2.) Since its inception in 1983, REI has identified many of its trade shows with the mark “Northeast.” (Dep. of David McCarey (“McCarey Dep.”) 7, May 8, 2009; Pl.’s 56.1 ¶¶ 3-4); see also Rockland I, 2009 WL 1154094, at *1.

In or around 1989, AASP entered into an agreement with REI, whereby REI agreed to manage and promote an annual automotive/autobody trade show with AASP (the “Northeast Automotive Trade Show”). Rockland I, 2009 WL 1154094, at *1. Prior to its agreement with REI — from 1978 through 1989 — AASP’s executive director and volunteers had managed AASP’s annual automotive trade show. (Aff. of Thomas R. Greco (“Greco Aff.”) ¶ 17.) The 1990 show was referred to in promotional literature as “Automotive Association of New Jersey Presents the 13th Annual ACTS '90” (Defs.’ Ex. O), and in 1991, the promotional literature referred to the show as “Automotive Service Association of New Jersey Presents the 14th Annual Northeast '91 Autobody/Automotive Trade Show,” (Defs.’ Ex. P). Between 1990 and 2008, REI managed the annual Northeast Automotive Trade Show, which was held in Suffern, New York. Id.

Until 2004, REI and AASP continued to enter into written agreements governing the terms of the trade show, with a two-year period on the same terms. Rockland I, 2009 WL 1154094, at *2. In 2004, REI and AASP entered into a contract covering the 2005 and 2006 Northeast Automotive Trade Shows. (Am. Compl. Ex. C (the “Contract”).) The Parties did not execute a new agreement in 2005 or 2006, but AASP provided REI with a $2000 deposit for each of the 2007 and 2008 Northeast Automotive Trade Shows. See Rockland I, 2009 WL 1154094, at *2. The 2004 Contract contained an automatic two-year renewal provision, which was the subject of the Court’s previous rulings of March 19, 2009 and November 5, 2009. Following the March 2007 show, relations between REI and AASP began to deteriorate, largely because of AASP’s concern about REI’s management of the show. See Rockland I, 2009 WL 1154094, at *2. At a July 2007 meeting to discuss AASP’s concern, REI gave AASP a memorandum containing suggestions for improvement for the 2009 show, and requesting a “written decision” from AASP about its willingness to participate in the 2009 and 2010 shows by March 31, 2008. (Defs.’ Ex. 190); see also Rockland I, 2009 WL 1154094, at *2. AASP provided REI with the $2,000 deposit for the 2009 show and did not notify REI within 45 days of the 2007 show that it wished to terminate the agreement for the 2009 show. (PL’s 56.1 ¶¶ 22-23); see also Rockland I, 2009 WL 1154094, at *2 & n. 3. At a March 3, 2008 meeting, REI proposed a new arrangement to AASP for future shows, which provided for a higher deposit from AASP and contained different payment terms. Rockland I, 2009 WL 1154094, at *2. Following this meeting, REI sent a follow-up letter to AASP asking AASP to confirm (by fax or email) its willingness to participate in shows after the March 2008 show — even though the Contract bound AASP for the 2009 show— by March 31, 2008. (Defs.’ Ex. 107); see also Rockland I, 2009 WL 1154094, at *2-3. The March 3, 2008 letter also stated that if “AASP/NJ decides to participate [in the Northeast Regional Autobody/Automotive Trade Show] in future years[,] they will have the first option to do so with Rockland Exposition, Inc.” (Defs.’ Ex. 107.)

AASP notified REI on March 18, 2008 via telephone that it had decided not to proceed with REI on presenting a 2009 show. (Defs.’ 56.1 ¶ 31.) In response, REI sent AASP a letter on March 25, 2008, informing AASP that REI “will continue to promote and manage a 2009 Northeast Regional Autobody/Automotive Trade Show (on the March 27, 28, 29, 2009 dates) ... even with the loss of the AASP/NJ sponsorship.” (Defs.’ Ex. 164 (emphasis in original).) On March 27, 2008, just prior to the 2008 show, AASP, through its attorney, sent a letter to REI, notifying it in writing that “the contract has expired” and that “[y]ou have been notified that the upcoming event will be the last one held through your company for the present and foreseeable future.” (Defs.’ Ex. 195); see also Rockland I, 2009 WL 1154094, at *3. Responding to REI’s contention that it would hold a 2009 Northeast show without AASP, the letter stated that REI “agreed to promote, manage and operate the Northeast Regional Auto Body/Automotive Trade show [and] [t]his does not include ownership of [the] show or the name, which is clearly owned by AASP-NJ.” (Defs.’ Ex. 195.) On March 31, 2008, the day after the 2008 show ended, AASP sent REI another letter, again through an attorney, this time stating that “AASP[ ] has elected to sever its business relationship with Rockland Exposition, Inc., and will not be entering into any agreements with you involving its planned 2009 Trade Show.” (Defs.’ Ex. 196.) AASP also wrote that “[t]he mark Northeast Regional Autobody/Automotive Trade Show is clearly and unequivocally the property of AASP/NJ” and may not be used by REI “for any purpose.” (Id.)

On March 26, 2008, two days before the start of the 2008 Northeast Automotive Trade Show, AASP sent a letter to the 2008 exhibitors, announcing its intent to move its 2009 Northeast Automotive Trade Show to the Meadowlands, to be held on March 20-22, 2009. (Defs.’ 56.1 ¶35; Defs.’ Ex. 21.) On April 10, 2008 REI issued a press release announcing that REI would hold a “Northeast Regional 2009 Trade Show” at Rockland Community College- in March 2009. (Defs.’ Ex. 197.) In small print at the bottom of the press release, REI noted that “AASP/NJ has elected to end its 20 year business relationship with Rockland Exposition/David McCarey.” (Id.) On April 24, 2008, REI sent a deposit to Rockland Community College for its “Northeast Regional 2009 Trade Show,” listing its show dates as March 20-22, 2009. (Defs.’ Ex. 106.) David McCarey (“McCarey”), REI’s President, testified at his deposition that REI changed its show dates from March 27-29, 2009 to March 20-22, 2009, because he thought that having REFs show on the same dates as AASP’s would help REFs show “retain exhibitors.” (McCarey Dep. 411-12, Oct. 14, 2010 (Defs.’ Ex. E).)

The 2008 Northeast Automotive Trade Show had been presented by REI and AASP as the “31st Annual AASP Northeast 2008 Regional Autobody/Automotive Trade Show.” (Defs.’ Ex. 170.) AASP promoted its 2009 show as the “32nd annual” Northeast 2009 Automotive Trade Show (Defs/ Ex. 167), and also held its 33rd and 34th “Annual Northeast” shows in 2010 and 2011 at the Meadowlands, (Defs.’ 56.1 ¶ 46). REI promoted its 2009 Northeast show as the “20th Annual Event” and called it the “Northeast Regional Trade Show.” (Defs/ Ex. 166.) REI solicited exhibitors for its 2009 show from approximately April 2008 to February 2009. On February 19, 2009, REI announced that it would postpone its 2009 Northeast show pending the outcome of this litigation. (McCarey Dep. 763-65, Oct. 15, 2010 (Defs/ Ex. F); Defs.’ Ex. 198.) In its press release, REI stated that the decision to postpone the show was “based on the uncontrollable widespread damage and ongoing confusion in the Automotive Auto-body Repair Marketplace,” based on the litigation between REI and AASP. (Defs/ Ex. 198.)

Both REI and AASP have applied to the United States Patent and Trademark Office (“USPTO”) to federally register the term “Northeast” as a service mark. REI submitted a Trademark/Serviee Mark Application to the USPTO on June 28, 2008, and submitted an amendment to its application on July 3, 2008. (Defs.’ Exs. 41, 42.) The amended application states that REI first used the mark “Northeast” to promote and conduct automotive trade shows as early as September 15, 1982. (Defs.’ Ex. 42.) AASP submitted its own application to the USPTO on December 12, 2008 for the service mark “Northeast,” as used to promote and conduct trade shows for the automotive collision and repair industry, and claims that its first use was in 1985. See U.S. Trademark Application Serial No. 77631779 (filed Dec. 12, 2008). AASP initiated a proceeding against REI before the Trademark Trial and Appeal Board regarding the disputed “Northeast” mark, and that case is suspended pending the disposition of this action. See Assoc. of Auto. Serv. Providers of N.J. v. Rockland Exposition, Inc., No. 91188273 (T.T.A.B.).

B. Procedural History

On June 28, 2008, AASP filed suit in the District of New Jersey against REI and David McCarey, REI’s President, before the Honorable Mary L. Cooper (the “New Jersey Action”). AASP alleged that REI and McCarey used AASP’s trademark without authorization and asserted claims against REI and McCarey for, inter alia, (1) false designation of origin; (2) dilution; (3) unfair competition; (4) trademark violation; (5) tortious interference; (6) misappropriation of confidential business information; and (7) an accounting. (AASP Am. Compl. ¶¶ 33-62.) REI brought the instant action on August 8, 2008, setting forth claims arising out of the same operative facts as the New Jersey Action, with additional copyright and contract claims. Both AASP and REI filed motions for prehminary injunctions, which were denied, and on December 22, 2008, Judge Cooper granted REI’s motion to transfer the New Jersey Action to the Southern District of New York, and the two cases were consolidated before this Court on December 24, 2008. (Nos. 08-CV-7069, 08-CV-11107.)

As noted, the Court has already decided two motions for partial summary judgment in this case, on March 19, 2009 and November 5, 2009. In response to REI’s first motion for partial summary judgment on its breach of contract claim, Defendants argued that AASP’s March 2008 letters, which had been requested by REI, relieved it from any obligation to participate in the 2009 show. See Rockland I, 2009 WL 1154094, at *12. This Court disagreed, finding that “the 2004 Agreement would automatically renew and that advance, written notice of termination would be required to terminate the agreement and, thereby, suspend automatic renewal.” Id. at *7. The Court then ruled that, because AASP’s notice was not given within forty-five days of the 2007 show, “it was contractually obligated to sponsor the 2009 trade show under REI’s management.” Id. at *9. The Court also held that AASP breached the Contract’s non-compete clause by promoting its own 2009 show while still under contract with REI. Id. at *9. But, the Court denied REI’s request for specific performance, refusing to order AASP to participate in REI’s 2009 show or to comply with the non-compete clause. Id. at *15. Instead, the Court decided that damages were sufficient to right those wrongs, particularly because AASP had relied on REI’s representations that it could opt-out of any post-2008 contractual obligations if it did so by March 31, 2008. Id. at *11-15. The Court decided REI’s second motion for partial summary judgment, and AASP’s cross motion for partial summary judgment on November 5, 2009, holding that AASP’s March 2008 notice of termination, though ineffective to terminate the contract prior to the March 2009 show, was effective to terminate the contract for the March 2010 show and beyond. See Rockland II, 706 F.Supp.2d at 357.

Defendants served Plaintiff with the instant Motion for Partial Summary Judgment on October 6, 2011, and the motion was fully submitted on April 2, 2012. Defendants move for summary judgment in relation to Counts Four through Eleven of REI’s Amended Complaint. REI voluntarily dismisses Count Nine, for common law trade libel, and Count Eleven, for misappropriation of trade secrets. (Pl.’s Opp’n to Defs.’ Mot. for Partial Summ. J. (“PL’s Opp’n”) 2 n. 1.) The Court held oral argument on June 20, 2012.

II. Discussion

A. Standard of Review

Summary judgment may be granted where it is shown that there is “no genuine dispute as to any material fact and that the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). “When ruling on a summary judgment motion, the district court must construe the facts in the light most favorable to the non-moving party and must resolve all ambiguities and draw all reasonable inferences against the movant.” Dallas Aerospace, Inc. v. CIS Air Corp., 352 F.3d 775, 780 (2d Cir.2003); see also Tufariello v. Long Island R.R. Co., 458 F.3d 80, 85 (2d Cir.2006) (noting that a court must draw all reasonable inferences in the nonmovant’s favor).

A party seeking summary judgment bears the burden of establishing that no genuine issue of material fact exists. See Atl. Mut. Ins. Co. v. CSX Lines, L.L.C., 432 F.3d 428, 433 (2d Cir.2005). “When the burden of proof at trial would fall on the nonmoving party, it ordinarily is sufficient for the movant to point to a lack of evidence to go to the trier of fact on an essential element of the nonmovant’s claim. In that event, the nonmoving party must come forward with admissible evidence sufficient to raise a genuine issue of fact for trial in order to avoid summary judgment.” Jaramillo v. Weyerhaeuser Co., 536 F.3d 140, 145 (2d Cir.2008) (internal citations omitted). “When the moving party has carried its burden under Rule 56(c), its opponent must do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986) (footnote omitted); see also McPherson v. N.Y. City Dep’t of Educ., 457 F.3d 211, 215 n. 4 (2d Cir.2006) (“[Speculation alone is insufficient to defeat a motion for summary judgment.”). A fact is material when “it might affect the outcome of the suit under governing law.” McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 202 (2d Cir.2007) (internal quotation marks omitted). At summary judgment, a court is not charged with weighing the evidence and determining its truth, but with determining whether there is a genuine issue for trial. See Westinghouse Elec. Corp. v. N.Y. City Transit Auth., 735 F.Supp. 1205, 1212 (S.D.N.Y.1990). A court’s goal should be to “isolate and dispose of factually unsupported claims.” Celotex, 477 U.S. at 323-24, 106 S.Ct. 2548.

B. Analysis

1. Federal Trademark Infringement

In Count Four of its Amended Complaint, REI claims that AASP’s use of “Northeast” in the name of its trade shows constitutes trademark infringement in violation of section 43(a) of the Trademark Act of 1946 (the “Lanham Act”), codified as 15 U.S.C. § 1125(a). (Am. Compl. ¶¶ 125-35; Pl.’s Opp’n 7-8.) In particular, REI argues that its use of “Northeast” qualifies as a “service mark” under 15 U.S.C. § 1127, and that AASP’s continued use of “Northeast” in connection with its automotive trade shows infringes on REI’s rights in violation of § 1125(a). Under 15 U.S.C. § 1125(a), “[a]ny person who, on or in connection with any goods or services ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, ... which 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 ... 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)(1); see also ESPN, Inc. v. Quiksilver, Inc., 586 F.Supp.2d 219, 225 (S.D.N.Y.2008) (same).

To state a claim for trademark or service mark infringement under section 43(a) of the Lanham Act, a plaintiff must demonstrate that “(1) it has a valid trademark or [service mark] entitled to protection, and (2) the defendant’s use of a similar [mark] is likely to cause confusion among consumers as to the origin of the goods or services.” Morgans Grp. LLC v. John Doe Co., No. 10-CV-5225, 2012 WL 1098276, at *4 (S.D.N.Y. Mar. 31, 2012) (citing Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir.2006)); see also Thoip v. Walt Disney Co., 736 F.Supp.2d 689, 702-03 (S.D.N.Y.2010) (“ ‘A claim of trademark infringement ... is analyzed under [a] familiar two-prong test ... [which] looks first to whether the plaintiffs mark is entitled to protection, and second to whether defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods.’ ” (footnote omitted) (quoting Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir.2003))). Both registered and unregistered trademarks/serviee marks are entitled to protection, and section 43(a), under which REI proceeds, “creates a cause of action for infringement of unregistered []marks.” Silberstein v. Fox Entm’t Grp., Inc., 424 F.Supp.2d 616, 632 (S.D.N.Y.2004); see also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) (noting that it “is common ground that § 43(a) protects qualifying unregistered trademarks”). “[W]here a plaintiff cannot establish that its mark is entitled to protection, a court need not consider whether a defendant’s use of a similar mark is likely to cause confusion.” Morgans Group, 2012 WL 1098276, at *4. Therefore, as a threshold matter, the Court will address whether REI used the term “Northeast” as a service mark, and if so, whether a reasonable jury could conclude that the mark is entitled to protection. See EMI Catalogue P’ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 62 (2d Cir.2000) (noting that to state a claim under section 43(a), a plaintiff “must show that it owns a valid trademark eligible for protection.”).

a. Whether REI used “Northeast” as a “service mark”

Under the Lanham Act, a “trademark or service mark is any combination of words, names, symbols or devices that are used to identify and distinguish goods or services and to indicate their source.” Am. Express Co. v. Goetz, 515 F.3d 156, 159 (2d Cir.2008) (citing 15 U.S.C. § 1127). Section 1127 of the Lanham Act provides that a service mark can indicate the source of a particular service, “even if that source is unknown.” 15 U.S.C. § 1127. A service mark is “identical to a trademark in all respects,” except that it is used to identify the source of services, rather than goods. Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 933 n. 4 (11th Cir.2010) (citation omitted); see also Murphy v. Provident Mut. Life Ins. Co. of Phila., 923 F.2d 923, 927 (2d Cir.1990) (“A servicemark differs from a trademark only in that a servicemark identifies services rather than goods ... [and] the standards for determining infringement are essentially the same.” (citations omitted)). As used in the Lanham Act, the term “services” has been defined as “ ‘the performance of labor for the benefit of another.’ ” Morningside Grp. Ltd. v. Morningside Capital Grp., L.L.C., 182 F.3d 133, 137 (2d Cir.1999) (quoting In re Adver. & Mktg. Dev., Inc., 821 F.2d 614, 619 (Fed.Cir.1987)). “Those services must not be ‘solely for the benefit of the performer; the services must be rendered to others.’ ” Id. at 138 (quoting Murphy, 923 F.2d at 927).

Defendants do not contest that REI provides a “service,” as understood by the Lanham Act, as REI provides the service of organizing and managing trade shows. Defendants argue, however, that REI has never used the “Northeast” mark to identify the services that it provides, and in fact has only used “Northeast” to identify the trade shows, the subject of its services. (Mem. of Law in Supp. of Defs.’ Mot. for Summ. J (“Defs.’ Mem.”) 6-9.) For a party to claim a valid service mark, “[i]t is not enough for the applicant to be a provider of services; the applicant must also have used the mark to identify the named services for which registration is sought.” Advertising & Marketing, 821 F.2d at 620-21 (holding that advertising firm showed that it used slogan THE NOW GENERATION as a service mark for its promotional services where the company’s letterhead contained the mark and a byline naming the firm the “creators, producers, and suppliers of THE NOW GENERATION sales promotion service”)', see also Caliber, 605 F.3d at 933 (noting that plaintiff held a federal registration for the service mark “Slash it! Sales Event,” to describe its “advertising agency services, namely, promoting the services of automobile dealerships through the distribution of printed and audio promotional materials and by rendering sales promotion advice”); St. Luke’s Cataract and Laser Inst., P.A. v. Sanderson, 573 F.3d 1186, 1207 (11th Cir.2009) (holding that plaintiff established that its use of “LaserSpecialist.com” was a service mark where it used the name on its website and advertising to “identify St. Luke’s as a source of oculoplastic surgery”); cf. In re Moody’s Investors Serv. Inc., 13 U.S.P.Q.2d 2043, 1989 WL 274418, at *4-5 (T.T.A.B. Nov. 17, 1989) (noting that a service mark must “be used in such a manner that it would be readily perceived as identifying [the named] services,” and holding that the term “Aaa” as used by Moody’s was not used “as a mark identifying applicant’s service of providing ratings of fixed interest rate obligations,” but was the rating symbol itself and not protectable as a service mark); In re British Caledonian Airways Ltd., 218 U.S.P.Q. 737, 737 (T.T.A.B.1983) (refusing registration of a service mark where “the term sought to be registered is not used as a service mark to identify and distinguish applicant’s services but instead identifies a type of seat used in the rendering of applicant’s services”).

Following this line of cases, the Second Circuit has held that “a mark that does not perform the role of identifying a source is not a trademark [or a service mark].” American Express, 515 F.3d at 159. Therefore, to be considered a service mark under the Lanham Act, the mark must have been used “to differentiate or identify the origin of [the party’s] goods or services,” as distinct from the subject or product of those services. Id. at 161. In American Express, for example, a marketer had sought to sell the slogan “My Life, My Card” to credit card companies, and had distributed promotional material using this tagline to several credit card companies. Id. at 160-61. In holding that the slogan was not used by the marketer to identify his services, but rather as a component of his business proposal to the credit card companies — and therefore not protectable as a service mark — -the Second Circuit analogized his slogan to the services offered by advertising agencies. Id. at 160. The Patent and Trademark Office’s Trademark Trial and Appeal Board (“T.T.A.B.”) has long held that such “slogans cannot be registered as [a] mark[ ] by the advertising agency ... because the slogan does not identify and distinguish the services of the advertising agency, but rather is the creative work itself.” Id. at 160 (citing In re Admark, Inc., 214 U.S.P.Q. 302, 303 (T.T.A.B.1982); Advertising and Marketing, 821 F.2d at 620). The Second Circuit in American Express found dispositive that the marketer never displayed the slogan to consumers and never followed the phrase with a reference to himself or his company. Id. Therefore, the marketer never intended that the slogan would identify his services, “but instead [intended it] to interest [credit card] companies in a slogan that would identify personalized cards with whichever company elected to make this product available to its customers.” Id.

Relying on American Express, Defendants argue that REI has never used the claimed “Northeast” mark to identify its services (of organizing and promoting automotive trade shows), and instead has only used the mark to describe the shows themselves, and that as a result, REI’s use of “Northeast” is not entitled to service mark protection. (Defs.’ Mem. 8-9.) “Unlike trademarks, service marks usually cannot be ‘affixed’ or displayed in close connection with the services, so advertisements and solicitations are often used as evidence of use.” American Express, 515 F.3d at 161; see also Moody’s, 1989 WL 274418 at *4 (noting that the T.T.A.B. makes the determination of “[w]hether a designation sought to be registered has been used as a mark for the goods or services recited in an application ... by examining the specimens of record in the application”).

REI has included in its exhibits several advertising flyers and promotional materials for the “Northeast” shows it has managed. (See PL’s Exs. A, B, C, D, E, F, G, K, L.) Each of these flyers displays the “Northeast” mark prominently and in bold capital letters, identifying “Northeast” as the name of the show. (See, e.g., Pi’s. Exs. A (“1983 GREATER NORTHEAST 4x4 Truck-Van and Accessories Show”); B (“9th Annual 1983 Greater Northeast Recreation Vehicle Camping Equipment Show”); C (“NORTHEAST R.V. Caper”); E (“NORTHEAST 88 Tow Truck Expo”).) However, several of the flyers do not identify REI anywhere as the entity responsible for the organization and management of the shows. (PL’s Exs. A, B, C, D.) While these flyers list Dave McCarey, REI’s president, as the point of contact, they do not name REI as the show producer or coordinator. Defendants argue that these exhibits (A through D) do not demonstrate REI’s use of “Northeast,” especially because REI contends that this use was by “related companies.” (Surreply Mem. of Law in Further Supp. of Defs.’ Mot. for Summ. J (“Defs.’ Sur-reply”) 4-5.) Several other flyers, (PL’s Exs. E, F, G, J, K), however, list Dave McCarey as the show coordinator, and demonstrate his affiliation with Rockland Exposition, implying that REI is responsible for the management and coordination of the shows. Plaintiffs Exhibit E is a flyer for the “NORTHEAST 88 Tow Truck Expo,” and includes Rockland Exposition, Inc. on the front page. Plaintiffs Exhibit F is a flyer for the 1991 “Cruzin the Northeast Custom Car Show,” and in small print underneath the title, the flyer states “Produced by: Rockland Exposition Inc. The same people who organize the Northeast Truck Show.” Plaintiffs Exhibits G, J, and K are flyers for the 1990, 1991 and 1992 Northeast shows which REI produced with AASP.

Defendants do not directly address the promotional material in Plaintiffs exhibits, but assert generally that REI has conflated the promotion of its services with the name of its shows, and in fact has only used “Northeast” as the name for some of its trade shows, and never to promote its services in organizing those shows. (Defs.’ Mem. 8-9.) Defendants also focus on REI’s letterhead and argue that unlike in Advertising & Marketing, where A & M in its letterhead clearly identified itself as the “creators, producers and suppliers of the NOW GENERATION sales promotion services,” 821 F.2d at 621, REI’s letterhead (Defs.’ Ex. 106), makes no mention whatsoever of the “Northeast” mark, (Defs.’ Mem. 8). However, unlike the marketer in American Express, REI, through its use of “Northeast” on its show promotional materials did “display[] the slogan to [ Jconsumers,” an element of use that the Second Circuit in American Express found lacking. 515 F.3d at 160. Furthermore, Plaintiffs Exhibit F can be analogized to the letterhead in Advertising & Marketing, in that it identifies REI as the show’s producer, and also states that REI is the organizer of the Northeast Truck Show. See 821 F.2d at 621; cf. American Express, 515 F.3d at 160 (noting that the fact that the phrase “My Life, My Card” was never followed by a reference to the defendant or his company was relevant in determining that he had not used phrase as a service mark). REI therefore has provided some evidence to demonstrate that it used the “Northeast” mark “in connection with services [it] rendered” in organizing and promoting automotive themed trade shows. American Express, 515 F.3d at 161 (internal quotation marks and emphasis omitted); see also Home Builders Ass’n of Greater St. Louis v. L & L Exhibition Mgmt., Inc., 226 F.3d 944, 949 (8th Cir.2000) (holding that the names that the plaintiff gave its trade shows “are, without question, unregistered service marks ... [because] they are names used by [plaintiff] to identify and distinguish its home show services”). Furthermore, REI’s use of “Northeast” in large font and all capital letters is a factor weighing in favor of its use of the term as a service mark. See In re Post Props., Inc., 227 U.S.P.Q. 334, 335 (T.T.A.B.1985) (holding that applicant’s use of QUALITY SHOWS was a service mark because it was set off from the text of the advertising in extremely large font, and used in a way that made a commercial impression separate from the other elements of the advertising material); U.S. Patent & Trademark Office, Trademark Manual of Examining Procedure (TMEP) § 1301.02 (8th ed. 2011) (noting that factors to be considered in determining whether a term functions as a service mark include “whether the wording claimed as a mark is physically separate from textual matter, whether a term is displayed in capital letters or enclosed in quotation marks, and the manner in which a term is used in relation to other material on the specimen”). Therefore, a disputed issue of material fact exists as to whether REI’s use of “Northeast” constitutes a service mark.

b. Whether REI’s use of “Northeast” is entitled to protection

Even if REI’s use of “Northeast” may arguably constitute a service mark, REI must still show that its use of the mark is entitled to protection. Morgans Group, 2012 WL 1098276, at *4. There are two inquiries here. As a threshold matter, REI must demonstrate “first use” of “Northeast” in conjunction with its trade shows. If REI can show first use, it then bears the burden of demonstrating that its mark is a valid service mark entitled to protection.

i. First Use

It is a “well-established principle that trademark rights are acquired and maintained through use of a particular mark.” ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 146 (2d Cir.2007). To claim any right in a particular mark, therefore, the party asserting the right must be “the first to use [the] mark to identify his goods or services in a given market.” Id. at 147; Hawaii-Pac. Apparel Grp., Inc. v. Cleveland Browns Football Co., 418 F.Supp.2d 501, 506 (S.D.N.Y.2006) (“It is therefore only the senior user of a mark that can bring a claim for trademark infringement ....” (citing Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 150 (2d Cir.1997))); see also Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996) (“It is axiomatic in trademark law that the standard test of ownership is priority of use.”).

Defendants argue that REI cannot demonstrate first use of the “Northeast” mark in relation to automotive themed trade shows. (Defs.’ Mem. 9; Reply Mem. of Law in Further Supp. of Defs.’ Mot. for Summ. J. (“Defs.’ Reply”) 6-7; Defs.’ Surreply 3-4.) REI claims to have first used “Northeast” in relation to its trade shows in 1983 (McCarey Affirmation ¶¶ 3-4). However, the advertising flyers which REI has provided to demonstrate use of “Northeast” between 1983 and 1988 do not identify REI as the promoter or organizer of the trade shows. (PL’s Exs. A-D.) REI claims that its use of “Northeast” from 1983 to 1988 was through a “related company,” and thus that it can claim first use of “Northeast.” (Pl.’s 56.1 Counter-Statement ¶ 51; Pl.’s Sur-reply 5.) To rebut this point, Defendants have provided evidence demonstrating that AASP used the term “Northeast” to refer to its automotive trade show as early as 1985. (Defs.’ Ex. 146.)

“[T]he Lanham Act permits an applicant to establish ownership [of a mark] under the ‘related companies’ doctrine by showing that it controlled the first user of the mark.” Estate of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341, 1347 (D.C.Cir.2008). Section 5 of the Lanham Act provides:

Where ... a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the ... applicant for registration, and such use shall not affeet the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person is controlled by the ... applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the ... applicant....

15 U.S.C. § 1055; see also Carpenteri v. Marini, No. 05-CV-00766, 2006 WL 2349586, at *5 (D.Conn. July 11, 2006) (“The related companies doctrine permits trademark ownership by a licensor who exercises substantial control over the mark’s use by a licensee, based upon use by the licensee.”). The Trademark Manual of Examining Procedure (“TMEP”) also provides that an applicant may base its claim of ownership in a service mark on use of the mark both by the applicant and by a related company, the use of which inures to the applicant’s benefit. TMEP § 1201.01 (8th ed. 2011). Related eompanies are defined in the Lanham Act to mean “any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.” 15 U.S.C. § 1127.

The hallmark of related companies is control over use of the mark, and one court has noted that “[t]he related companies doctrine requires a showing of a substantial relationship between” the companies claiming to be related. Secular Orgs. for Sobriety, Inc. v. Ullrich, 213 F.3d 1125, 1131 (9th Cir.2000). However, “the statute does not expressly require formal corporate control” for companies to be considered related, but instead the inquiry focuses on control over “‘use of a mark ... with respect to the nature and quality of the goods or services.’ ” Estate of Coll-Monge, 524 F.3d at 1348 (alteration in original) (quoting 15 U.S.C. § 1127); see also 3 McCarthy on Trademarks and Unfair Competition § 18:51 (4th ed. 2012) (“A superficial reading of the Lanham Act ‘related company’ provisions might lead one to the conclusion that the ‘companies’ (meaning ‘any person’) must be ‘related’ by some form of stock ownership, such as are parent and subsidiary corporations. This is incorrect. In fact, during the legislative hearings, the Department of Justice wanted to limit the language to 100 percent controlled subsidiaries, and this was rejected.”). Therefore, the fact that REI and Northeast RV Shows are not subsidiaries or related through their corporate structures is not fatal to REI’s claim.

However, it is also “established that corporations do not become ‘related companies’ under the Trademark Act merely by virtue of having the same stockholders, directors or officers, or by virtue of occupying the same premises....” In re Raven Marine, Inc., 217 U.S.P.Q. 68, 69 (T.T.A.B.1983). REI therefore cannot rely solely on McCarey’s position as President and shareholder of both companies, or his father’s previous involvement in both companies (McCarey Dep. 8, 10, 12, May 8, 2009), to establish that REI and Northeast RV are related companies. REI instead must present evidence that it controlled Northeast RV’s use of the “Northeast” mark and exercised quality control over that mark. See, e.g., Starsurgical, Inc. v. Aperta, LLC, 832 F.Supp.2d 1000, 1003 (E.D.Wis.2011) (noting that to establish ownership of the mark through the related company doctrine, applicant claiming ownership “must have actually controlled [the] use of the mark with respect to the quality of the [product]”); Carpenteri, 2006 WL 2349586, at *6 & n. 8 (granting summary judgment against individual claiming ownership of mark through related company doctrine where he did “not proffer[] evidence that he had any authority ... to control the nature and quality of products offered under the marks at issue”).

In his deposition, McCarey testified that his father, the former president of REI, was involved with another entity, Northeast RV Shows, Inc. (“Northeast RV”), that was in the business of putting on trade shows. (McCarey Dep. 12-13, May 8, 2009.) He testified that Northeast RV had been in business under another name since 1974, and changed its name in 1983, coinciding with the formation of REI. (Id.) According to McCarey, REI does not have an ownership interest in Northeast RV, although McCarey is now the president and shareholder of both companies. (Id. at 14.) In 1983, the two individuals involved in Northeast RV were Dave McCarey Sr. (REI’s president) and Robert Maxwell. (Id. at 12-13.)

According to McCarey, REI began running the RV shows for Northeast RV in 1983. (Id. at 15-16.) McCarey also testified that REI ran the Northeast Truck Show from 1983 to 1993, and also ran the Northeast Tow Truck Expo from 1988 to 1992. (Id. at 37-38.) However, later in his deposition, McCarey testified that he believes that REI first used the “Northeast” mark in 1989 in relation to the “Northeast RV Show.” (Id. at 172.) He further stated that Northeast RV used the “Northeast” mark in connection with several shows prior to 1989, including the “Northeast RV Show, the Northeast Fall RV Marketplace, the Northeast RV 4x4 Truck Show, the Northeast Tow Truck Expo and Cruising the Northeast Custom Car Show.” (Id. at 175-76.) He clarified, however, that in 1983, REI began servicing these trade shows for Northeast RV. (Id. at 184-85.) Furthermore, in his Affirmation, McCarey states that “[s]ince 1974, REI, and its predecessor and related companies, ha[ve] been in the business of running trade shows,” and states that since 1983, REI has provided automotive trade show services under the “Northeast” mark. (McCarey Affirmation ¶¶ 2-4.) McCarey also testified that Northeast RV entity continues to present the “Northeast RV Trade Show” as well as the “Northeast RV Shows’ Fall Marketplace,” even though REI runs the shows (id. at 30, 174), and claims to control use of the “Northeast” mark. He also claims in his Affirmation that REI has “at all times ... maintained] exclusive control of the quality of the services identified by its NORTHEAST [ ]mark.” (McCarey Affirmation ¶ 6.) Based on this testimony, REI asserts that any use of “Northeast” by Northeast RV Shows from 1983 to 1989 should be attributed to REI because the use was by a related company, and all of the uses of “Northeast” were by and under the control of REI. (Pl.’s Sur-reply 5; McCarey Affirmation ¶ 6.) The Court agrees that this testimony provides at least some evidence that REI may have exercised control over Northeast RV’s use of the “Northeast” mark beginning in 1983. (See Pis.’ Ex. A.)

Defendants counter that REI must provide more detail of its affiliation with any related companies to claim that it began using the “Northeast” mark as early as 1983, and argue that “the facts necessary to establish that two companies are related must be shown in detail.” (Defs.’ Surreply 5.) Defendants rely on two cases decided by the T.T.A.B. which involved the standard that an applicant must meet to show that companies are related after an inconsistency has been found in the application for registration of the mark. See Great Seats, Ltd. v. Great Seats, Inc., 84 U.S.P.Q.2d 1235, 1242-43 (T.T.A.B.2007) (finding trademark application void ab initio where company that filed the trademark application had never used the mark (and was not even in existence when the mark was first used) and there was no evidence that the company that filed the application controlled the entity that in fact had used the mark); Beech Aircraft Corp. v. Lightning Aircraft Co., 1 U.S.P.Q.2d 1290, 1294 (T.T.A.B.1986) (considering application where registrant claimed, after filing its application, that the mark was used by a related company prior to the date of first use indicated in the trademark application; the board required proof of relatedness “by evidence which is clear and convincing and not characterized by contradictions, inconsistencies and indefiniteness” (internal quotation marks omitted)). Unlike in these cases, REI has claimed use by related companies since it filed its trademark application. (Defs.’ Exs. 41^12.) In the third case cited by Defendants, In re Raven Marine, Inc., 217 U.S.P.Q. at 70, the board denied registration because the applicant'did not provide any evidence of the control it exercised over the marks at issue. Contrary to Defendants’ assertions, the Trademark Manual of Examining Procedure provides, in the section titled “Claim of Ownership May Be Based on Use By Related Companies” that

[t]he examining attorney should accept the applicant’s statement regarding ownership of the mark unless it is clearly contradicted by information in the record. The USPTO does not inquire about the relationship between the applicant and other parties named on the specimen or elsewhere in the record, except when the reference to another party clearly contradicts the applicant’s verified statement that it is the owner of the mark or entitled to use the mark. Moreover, where the application states that use of the mark is by a related company or companies, the examining attorney should not require any explanation of how the applicant controls such use.

TMEP § 1201.01 (8th ed. 2011) (citation omitted).

Furthermore, in this motion for summary judgment, the Court must draw all inferences in favor of Plaintiff as the non-moving party. Here, REI has provided some evidence, through MeCare/s testimony, that it controlled the use of the “Northeast” mark as early as 1983. Though this evidence admittedly is minimal, the Court need not find that REI will prevail on its claim, but merely that it has presented a disputed issue of material fact. See Jaramillo, 536 F.3d at 145 (“[T]he nonmoving party must come forward with admissible evidence sufficient to raise a genuine issue of fact for trial in order to avoid summary judgment.”). Because there is a disputed issue of material fact as to whether REI can claim first use of the “Northeast” mark in 1983, Defendants’ summary judgment motion falters on this point. See Estate of Coll-Monge, 524 F.3d at 1349 (holding that documents showing that plaintiff exercised control over claimed related company’s use of mark “put into dispute whether or not Coll controlled the use of the Non-Profits’ marks from the marks’ first use and therefore preclude summary judgment on the ownership issue”); I.H.T. Corp. v. News World Commc’ns, Inc., No. 83-CV-3862, 1984 WL 604, at *6-7 (S.D.N.Y. July 3, 1984) (denying summary judgment where plaintiff sought to establish its bona fide prior use of a mark through use by a related company and showed that it had an ownership interest in the company as well as four seats on the board).

ii. Distinctiveness and Secondary Meaning

Even if REI can demonstrate first use of the mark, it still must demonstrate that its use of “Northeast” constitutes a valid service mark that is entitled to protection. Where (as here) a mark is unregistered, the plaintiff “has the burden of proving that its mark is a valid [service mark].” Cache, Inc. v. M.Z. Berger & Co., No. 99-CV-12320, 2001 WL 38283, at *4 (S.D.N.Y. Jan. 16, 2001) (citing Reese Publ’g Co. v. Hampton Int’l Commc’ns, Inc., 620 F.2d 7, 11 (2d Cir.1980)). To be a valid and protectable service mark, “a mark must be capable of distinguishing the [service] it marks from those of others.” Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 344 (2d Cir.1999) (citing Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753); see also Louis Vuitton Malletier, 454 F.3d at 116 (“[T]o establish protectability under § 43(a), ‘a mark must be sufficiently ‘distinctive’ to distinguish the registrant’s goods [or services] from those of others.’ ” (quoting Star Indus. v. Bacardi & Co., 412 F.3d 373, 381 (2d Cir.2005))); Morgans Group, 2012 WL 1098276, at *4 (noting that to be entitled to protection, a mark “must be sufficiently distinctive to link a product or service to its source”). A plaintiff can demonstrate distinctiveness of a mark one of two ways: it can demonstrate that the mark is “inherently distinctive, i.e., intrinsically capable of identifying its source,” or it can show that through its use of the mark that “the mark has acquired secondary meaning.” Louis Vuitton Malletier, 454 F.3d at 116 (internal quotation marks omitted).

a) Distinctiveness

To gauge a mark’s distinctiveness, the Second Circuit has created a framework that divides marks into four broad categories. “Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.” Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976); see also Two Pesos, 505 U.S. at 768, 112 S.Ct. 2753 (noting that “[m]arks are often classified in categories of generally increasing distinctivenessf,] following the classic formulation set out by Judge Friendly [in Abercrombie ]”); Morgans Group, 2012 WL 1098276, at *4 (same). Suggestive, arbitrary, or fanciful marks are “deemed inherently distinctive ‘because their intrinsic nature serves to identify a particular source of a product.’ ” Morgans Group, 2012 WL 1098276, at *4 (quoting Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1039 (2d Cir.1992)). Generic marks, on the other hand, are deemed not to be distinctive and are not afforded trademark or service mark protection, because they merely identify the class of goods or services offered, rather than a particular characteristic of those goods or services. Id.; see also Abercrombie & Fitch, 537 F.2d at 9 (“[N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product of the right to call an article by its name.”). Descriptive marks lie in the middle of this spectrum and generally “[a] term is considered descriptive if it conveys an immediate idea of the ingredients, qualities, or characteristics of the goods.” Lapham v. Porach, No. 06-CV-6861, 2007 WL 1224924, at *11 (S.D.N.Y. Apr. 25, 2007) (internal quotation marks omitted); see also PaperCutter, Inc. v. Fay’s Drug Co., 900 F.2d 558, 563 (2d Cir.1990) (“Examples of descriptive terms are terms conveying the characteristics of the goods, services, or business, or indicating the purpose, functions, size, quantity, capacity, or merits of a product, the effects of its use or the class of intended purchasers.” (internal quotation marks omitted)).

The Second Circuit has held that “the initial classification of a mark to determine its eligibility for protection is a question of fact left to the determination of the district court.” Bristol-Myers, 973 F.2d at 1039-40. Therefore, the classification of a mark can be determined on summary judgment as a matter of law where there are no material disputed facts relating to the issue. Kensington Publ’g Corp. v. Gutierrez, No. 05-CV-10529, 2009 WL 4277080, at *3 (S.D.N.Y. Nov. 10, 2009); see also Hi-Tech Parmacal Co. v. Hi-Tech Pharm., Inc., No. 05-CV2674, 2007 WL 1988737, at *7 (E.D.N.Y. July 5, 2007) (“[A] court may classify a mark for purposes of a summary judgment motion only if the evidence would lead a reasonable factfinder to only one conclusion about the purchasing public’s perception of the mark’s distinctiveness.”). Here, the Parties agree that the term “Northeast” as used to identify automotive trade shows is descriptive. (Defs.’ Mem. 10; Pis.’ Opp’n 11.) The term describes the geographic region in which the shows are occurring, and a mark that is “ ‘descriptive of the geographic origin of a product [or service]’ ” is generally considered descriptive. Greenpoint Fin. Corp. v. Sperry & Hutchinson Co., 116 F.Supp.2d 405, 409 (S.D.N.Y.2000) (quoting Forschner Grp., Inc. v. Arrow Trading Co., 30 F.3d 348, 348 (2d Cir.1994)); see also Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1522-23 (11th Cir.1991) (noting that “[m]arks which are descriptive of geographic location of the source of the service are” considered descriptive); Morgans Group, 2012 WL 1098276, at *6 (determining at summary judgment that the terms “Hudson Sky Terrace,” “Sky Terrace at Hudson,” and “Hudson Terrace” are all geographically descriptive). Therefore, there is no disputed issue of material fact as to the term’s classification, and the Court finds that “Northeast” as used by the Parties is a descriptive mark.

b) Secondary Meaning-General Principles

Descriptive marks are not inherently distinctive, and therefore use alone is insufficient to confer a protectable interest in a descriptive mark. See TCPIP Holding Co. v. Haar Commc’ns, Inc., 244 F.3d 88, 93 (2d Cir.2001) (“Descriptive marks are marks that describe a product or its attributes. Because they are descriptions, they also lack distinctive quality as marks.”); PaperCutter, 900 F.2d at 562 (“As to descriptive terms, a person cannot by mere adoption and use, obtain exclusive rights in words that describe the attributes of the goods, services, or business to which the words are applied .... ” (internal quotation marks omitted)). The Second Circuit has explained that policy considerations generally “disfavor[] the grant of protection to descriptive marks,” because “[a]ccording trademark exclusivity to a descriptive mark would inhibit competitors from using descriptions of their competing products.” TCPIP Holding Co., 244 F.3d at 93-94. A descriptive mark therefore qualifies for trademark protection only when it has acquired “secondary meaning.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-13, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000). “Secondary meaning attaches when the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the term in favor of its meaning as a word identifying that business.” Time, Inc. v. Petersen Publ’g Co. L.L.C., 173 F.3d 113, 117 (2d Cir.1999) (internal quotation marks omitted). In other words, a mark has established “secondary meaning” when “in the minds of the public, the primary significance of a [mark] is to identify the source of the [service] rather than the [service] itself.” Wal-Mart, 529 U.S. at 211, 120 S.Ct. 1339. A party seeking to establish secondary meaning need not demonstrate that the consuming public knows the name of the producer, but must “show that the purchasing public associates goods [or services] designated by a particular mark with but a single — although [potentially] anonymous — source.” Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217, 1221 (2d Cir.1987), abrogated on other grounds by Bristol-Myers, 973 F.2d 1033; see also Erchonia Corp. v. Bissoon, 410 Fed.Appx. 416, 418 (2d Cir.2011) (“[Secondary meaning is established only in cases where an ordinary buyer associates the mark in question with a single source, though that source may be anonymous.”); Grout Shield Distribs., LLC v. Elio E. Salvo, Inc., 824 F.Supp.2d 389, 406 (E.D.N.Y.2011) (“Descriptive marks are only protectable if they acquire secondary meaning, i.e., that despite describing the nature of the goods in question, such marks have come to be associated by the purchasing public over time with a single, albeit anonymous, source.” (internal quotation marks omitted)).

Courts within the Second Circuit look at six factors to establish whether a mark has acquired secondary meaning. These include “(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.” Marshall v. Marshall, No. 08-CV-1420, 2012 WL 1079550, at *16 (E.D.N.Y. Mar. 30, 2012) (quoting Genesee Brewing, 124 F.3d at 143 n. 4); see also Bristol-Myers, 973 F.2d at 1041 (same); Morgans Group, 2012 WL 1098276, at *5 (same). However, “[n]o precise guidelines are applicable and no single factor is determinative,” Murphy, 923 F.2d at 928 (internal quotation marks omitted), and the Second Circuit has emphasized that taking all the factors into consideration, “the fundamental question [] is whether ‘the primary significance of the term in the minds of the consuming public is not the product [or service] but the producer [or provider],’ ” Bristol-Myers Squibb, 973 F.2d at 1041(quoting Centaur Communications, 830 F.2d at 1221). Furthermore, the analysis focuses not on the general public, but on the consumer group relevant to the product or services at issue, and the party claiming rights in the mark must demonstrate that “a substantial segment of the relevant consumer group makes the requisite association between the product [or service] and the producer [or provider].” Morgans Group, 2012 WL 1098276, at *5 (internal quotation marks omitted).

Whether a mark has acquired secondary meaning is a “factual determination, proof of which entails vigorous evidentiary requirements.” Marshall, 2012 WL 1079550, at *16 (internal quotation marks omitted); see also Greenpoint Financial, 116 F.Supp.2d at 409 (noting that a plaintiff must satisfy a “heavy burden because proof of secondary meaning entails vigorous evidentiary requirements” (internal quotation marks and alterations omitted)). The burden of proof rests on the “party asserting rights in the mark,” here REI. Hi-Tech Pharmacal, 2007 WL 1988737, at *10; see also Investacorp, 931 F.2d at 1525 (“This requisite high degree of proof [which plaintiff must meet] must be considered by the court when ruling on a motion for summary judgment.”). “Moreover, [P]laintiff s burden is to establish that its mark acquired secondary meaning before Defendant began using its allegedly infringing mark.” Hi-Tech Pharmacal, 2007 WL 1988737, at *10; see also PaperCutter, 900 F.2d at 564 (“To qualify for trademark protection, an owner of a descriptive mark must demonstrate that the mark had acquired secondary meaning before its competitor commenced use of the mark.”); Morgans Group, 2012 WL 1098276, at *5 (“A plaintiff bears the vigorous evidentiary burden of proving by a preponderance of the evidence that his mark had acquired secondary meaning at the time defendant began his allegedly infringing activities.” (internal quotation marks omitted)); Marshall, 2012 WL 1079550, at * (“Plaintiff has the burden to establish that his mark acquired secondary meaning before defendant began using his allegedly infringing mark.” (alterations and internal quotation marks omitted)); Greenpoint Financial, 116 F.Supp.2d at 409 (“The critical question is whether [plaintiffs use of the mark] had gained secondary meaning by the time [defendant] entered the market.”). If the senior user cannot demonstrate that its use of the term acquired secondary meaning before the junior user commenced its use, there can be no infringement, “for if there was no secondary meaning, there was no likelihood of confusion when the junior user arrived on the scene.” 2 McCarthy on Trademarks and Unfair Competition § 16:34 (4th ed.2012); accord Knights Armament Co. v. Optical Sys. Tech., Inc., 654 F.3d 1179, 1189 (11th Cir.2011) (holding that where senior user’s descriptive mark did not acquire secondary meaning prior to junior user’s first use, senior user “has no protectable rights in the mark” and junior user “cannot be liable for trademark infringement based on rights to a mark that [the senior user] cannot enforce”); Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928 (9th Cir.2005) (“A necessary concomitant to proving infringement is, of course, having a valid trademark; there can be no infringement of an invalid mark.” (internal quotation marks omitted)). The question, therefore, is whether REI has provided evidence from which a reasonable jury could conclude that its use of “Northeast” in relation to its trade shows acquired secondary meaning — meaning that it became synonymous with a single source among the relevant consumers of automotive-themed trade shows, and that it did so before AASP’s first use of “Northeast” to describe its trade shows.

c) Abandonment

Instead of focusing on secondary meaning, REI argues that AASP abandoned any claim it may have had to the “Northeast” mark by failing to use the mark in relation to its trade shows between 1988 and 1991; and then by resuming use of the mark in 1991 “as a sponsor” of REI’s show. (PL’s Opp’n 16-17.) “The abandonment doctrine derives from the well-established principle that trademark rights are acquired and maintained through use of a particular mark.” ITC Ltd., 482 F.3d at 146. If a user of a mark discontinues use with the intent not to resume such use in the foreseeable future, then the mark may be deemed “abandoned.” 15 U.S.C. § 1127; see also Marks Org., Inc. v. Joles, 784 F.Supp.2d 322, 328 (S.D.N.Y.2011) (“ ‘A mark shall be deemed to be abandoned ... [w]hen its use has been discontinued with intent not to resume such use.’ ” (quoting 15 U.S.C. § 1127)). “Intent not to resume may be inferred from [the] circumstances.” Marks Organization, 784 F.Supp.2d at 328 (quoting 15 U.S.C. § 1127); see also Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1043 (2d Cir.1980) (same). Once abandoned, “a mark returns to the public domain and may, in principle, be appropriated for use by other actors in the marketplace, in accordance with the basic rules of trademark priority.” ITC Ltd., 482 F.3d at 147 (citation omitted).

The party claiming that a mark has been abandoned bears the burden