R. G. Barry Corp. v. Mushroom Makers, Inc. , 85 A.D.2d 544 ( 1981 )

Order of the Supreme Court, New York County (Fingerhood, J.), entered March 13,1981, consolidating both actions on consent, granting the motion of defendant in Action No. 1 for summary judgment and denying the motion of defendants for summary judgment in Action No. 2, affirmed, without costs. We affirm for the reasons set forth by Fingerhood, J., in the opinion rendered by her at Special Term. We add the following comment: When the decision of the District Court in Mushroom Makers v Barry Corp. (441 F Supp 1220) was affirmed by the Court of Appeals for the Second Circuit (580 F2d 44) emphasis was laid upon equitable considerations. Special note was taken (pp 46-47) of the fact that shipments of “mushroom sportswear to retail outlets began in October of 1975 and have risen meteorically since then: in November of 1975, mushroom sales totaled $16,200; at the time of trial sales for 1977 were projected to reach the twenty million dollar level. In contrast to Barry’s sales experience, this dramatic rate of growth was achieved with a total expenditure of less than $200,000 for advertising”. The presentation made to us on the current appeals demonstrates a complete reversal of these facts. Barry’s net sales for 1980 approximated $24 million. Conversely, Mushroom is not, at the present time, utilizing the trade-mark to augment its sales. Thus the present action (Action No. 2), which is brought not under the Lanham Act but under the State antidilution statute (General Business Law, § 368-d; see, also, Allied Maintenance Corp. v Allied Mechanics Trades, 42 NY2d 538) represents not only a change in theory but a change in circumstances sufficient to bar invocation of the doctrine of collateral estoppel. Ordinarily, the fact the defendants are no longer using the trade-mark would be sufficient to bar relief to plaintiff since the nonuse would preclude dilution. However, defendants refuse to stipulate that they will not use the trade-mark in the future. Such refusal may entitle Barry to injunctive relief. That is a matter for the trier of the fact. We do no more than hold that the potential for use in the circumstances here indicated is sufficient to bar summary judgment. Concur — Ross, J. P., Markewich, Bloom and Fein, JJ.