JA APPAREL CORP., Plaintiff-Counterclaim-Defendant-Appellee, v. Joseph ABBOUD, Houndstooth Corp., Herringbone Creative Services, Inc., Defendants-Counterclaimants-Appellants, v. Martin Staff, Counterclaim-Defendant-Appellee, 568 F.3d 390

Judge SACK concurs, in a separate opinion. KEARSE, Circuit Judge: Defendants Joseph Abboud (“Abboud”) et ah appeal from so much of a final judgment entered in the United States District Court for the Southern District of New York following a bench trial before Theodore H.

Katz, Magistrate Judge, as permanently enjoined them from using, inter alia, the name “Joseph Abboud” to sell, market, or promote, goods, products, or services to the consuming public, and dismissed their counterclaims against plaintiff JA Apparel Corp. (“JA Apparel” or “JA”) and counterclaim-defendant Martin Staff alleging improper use of Joseph Abboud’s name.

The district court found that JA, Abboud, and defendant Houndstooth Corp. (“Houndstooth”) had entered into an unambiguous contract pursuant to which Abboud and Houndstooth sold to JA the exclusive rights to the commercial use of the name “Joseph Abboud” and trademarks containing that name, and that Abboud’s proposed use of his name in connection with a new line of clothing would breach the terms of that sale agreement and infringe trademarks sold to JA.

On appeal, defendants contend principally that the district court misinterpreted the sale agreement, erred in rejecting their defense of fair use, and fashioned an overly broad injunction. For the reasons that follow, we conclude that the district court erred in finding that the sale agreement is unambiguous and in declining therefore to consider extrinsic evidence as to the contracting parties’ intent. We also conclude that the judgment cannot be upheld on the basis of the court’s rulings on the trademark issues.

We thus vacate the judgment and remand for further proceedings on the contract issue and, if necessary, on the trademark issues. I. BACKGROUND The following facts are taken from the district court’s findings after trial, see JA Apparel Corp. v. Abboud, 591 F.Supp.2d 306 (S.D.N.Y.2008) (“JA Apparel”), and, unless otherwise indicated, are not disputed. A. The Parties Abboud is a world-famous fashion designer and philanthropist whose work in both capacities has garnered numerous honors and awards. Defendants Hounds-tooth and Herringbone Creative Services, Inc. (“Herringbone”), are companies wholly owned by Abboud.

Since 1987, Abboud’s personal name “Joseph Abboud” has been registered as a trademark with the United States Patent and Trademark Office. JA is a corporation engaged in the manufacture, marketing, and sale of products using “Joseph Abboud” trademarks; Martin Staff is JA’s chief executive officer. JA was formed in 1988 as a joint venture between Houndstooth and GFT International B.V. (“GFT”) and operated under a license from Abboud. In 1996, GFT purchased Houndstooth’s interest in JA, thereby becoming JA’s sole owner. The 1988 license was canceled and Abboud issued new licenses to JA. B.

The Sale Agreement In 2000, Abboud, Houndstooth, and JA entered into an Agreement of Purchase and Sale dated June 16, 2000, and executed on July 13, 2000 (“Sale Agreement” or “Agreement”), for the sale of certain assets to JA. The Sale Agreement provided in pertinent part that Abboud and Hounds-tooth would, in exchange for the payment to Abboud of $65.5 million, transfer to JA all of their right, title and interest in and to: (

A) The names, trademarks, trade names, service marks, logos, insignias, and designations identified on

Schedule 1.1(a)(A), and all trademark registrations and applications therefor, and the goodwill related thereto (collectively the “Trademarks”), together with all causes of action (and the proceeds thereof) in favor of [Abboud and Houndstooth] heretofore accrued or hereafter accruing with respect to any of 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 thereto or derivative thereof, either alone or in conjunction with other words or symbols (collectively, the “New Trademarks”), for any and all products or 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”). (Sale Agreement ¶ 1.1(a) (emphasis in original).) The Agreement defined “Intellectual Property,” referred to in ¶ 1.1(a)(A), as “all of the trademark registrations, service mark registrations and applications and copyright registrations and applications currently used by [Abboud and Hounds-tooth] in connection with the Trademarks” listed in “Schedule 1.1(a)(A).” (Id. ¶ 3.6(a) (emphasis in original).)

Schedule 1.1(a)(A), referred to in ¶¶ 1.1(a)(

A) and 3.6(a), bore the title “Joseph Abboud/J.A. Apparel,” with a subheading “Trademark Report by Mark.” It listed pending and completed trademark and service mark registrations in various countries, grouped largely by type of design, with headings such as “Diamond and Rectangle Design,” “Miscellaneous Diamond Design,” “Joseph Abboud,” “Joseph Abboud & Design,” and “Joseph Abboud and Miscellaneous Diamond Design.” In conjunction with their execution of the Sale Agreement on July 13, 2000, Abboud and JA also executed a Personal Services Agreement that was to span a total of seven years.

In the Personal Services Agreement, Abboud agreed that for the first five years he would provide personal services to JA (the “personal services period”) by, inter alia, becoming “Chairman Emeritus” and supplying ideas for the design and marketing of “Joseph Abboud” products. For two additional years, Abboud agreed not to compete with JA (the “non-compete period”). C.

The Present Action During the non-compete period of the Personal Services Agreement, which ended on July 13, 2007, Abboud undertook, in part through Herringbone, preparations for the design and launch of a new collection of high-end men’s clothing for sale under the label “jaz” in the fall of 2008. Abboud’s plans became public in two articles published on August 6, 2007, one in the Wall Street Journal-Ray A. Smith, What’s in a Name? Not Much, He Hopes, Wall Street Journal, Aug. 6, 2007, at B1-and the other in DNR, the leading magazine of the men’s fashion industry. The DNR

article initially stated that “Abboud, the person, is prohibited from using the Joseph Abboud name on any product or marketing materials.” David Lipke, All That Jaz: Abboud Unveils His New Label, DNR, Aug. 6, 2007, at 12. At Abboud’s request, however, DNR issued a “Clarification” that stated, “according to Abboud and his attorney, ... the designer ... is, in fact, allowed to use his name on marketing and advertising materials for Jaz.” DNR, Aug. 13, 2007, at 5. JA commenced the present action on September 4, 2007.

Its complaint alleged principally that Abboud’s proposed use of his personal name to sell the “jaz” brand breached the Sale Agreement and constituted trademark infringement in violation of § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), and New York common law. The complaint also contained claims of, inter alia, false designation of origin and trademark dilution in violation of §§ 43(

a) and (

c) of the Lanham Act, 15 U.S.C. §§ 1125(

a) and (c), and New York General Business Law (“N.Y.Gen.Bus.Law”) § 360-1, and false and deceptive trade practices in violation of N.Y. Gen. Bus. Law §§ 349-50. JA requested damages and permanent injunctive relief, and it moved for a preliminary injunction. Abboud, Houndstooth, and Herringbone denied wrongdoing and asserted defenses of, inter alia, trademark fair use and unclean hands. They also asserted counterclaims alleging that JA and Staff had improperly used Abboud’s name in connection with “Joseph Abboud” produets following the expiration of the Personal Services Agreement’s personal services period.

The counterclaims alleged that JA and Staff had thereby engaged in, inter alia, false endorsement, false advertising, and unfair competition, and had violated New York civil rights laws. The counterclaims requested injunctive relief and damages. The parties consented to have the proceedings conducted before a magistrate judge. They also agreed to have the magistrate judge conduct a hearing on JA’s preliminary injunction motion consolidated with trial on the merits. Prior to the trial, JA moved in limine to exclude parol evidence as to the meaning of the Sale Agreement.

However, as the parties’ submissions on that motion were not completed before the eve of trial, the magistrate judge reserved judgment on the motion, stating that he would allow the parties to present parol evidence but that he would not consider that evidence if he found the Sale Agreement to be unambiguous. At trial, therefore, the parties presented “fairly extensive extrinsic evidence” as to the meaning of the Sale Agreement, JA Apparel, 591 F.Supp.2d at 318, including correspondence, meeting minutes, testimony by the negotiating attorneys, and other documentation of the drafting process.

In addition, on the trademark issue, the court received, inter alia, testimony from Abboud about his proposed use of his name and “mock-ups” of proposed “jaz” advertisements displaying his name in various ways. (See

Part II.B. below.) In an opinion issued on June 5, 2008, the court found the Sale Agreement to be unambiguous, and it thus declined to consider the parties’ parol evidence. As discussed in

Part II.A. below, the court found that the Sale Agreement unambiguously conveyed to JA “all of Abboud’s rights to use his name for commercial purposes,” JA Apparel, 591 F.Supp.2d at 320. The court found that Abboud’s planned use of his name to market “jaz” would thus constitute a breach of contract. Id. at 326-27.

Athough finding that its decision on the contract claim made it largely unnecessary to rule on JA’s trademark infringement claims, see id. at 327 the court addressed the Lanham Act infringement claim in the interest of completeness and concluded that “Abboud’s proposed use of his name in connection with the ‘jaz’ line would also constitute trademark infringement....” Id. The court stated that JA had already established that it purchased the exclusive right to the Joseph Abboud name for commercial purposes, and, therefore, any proposed use by Abboud of his name commercially is improper.

Moreover, in this specific case, it is difficult to analyze the trademark claims in isolation from the Agreement because Abboud not only sold the rights to his name, he also sold the rights to use and apply for the registration of, among other things, new trademarks or designations containing the words “Joseph Abboud,” “by Joseph Abboud,” “designed by Joseph Abboud,” and “JOE,” or anything similar to or derivative of those phrases. Thus, what may have constituted a permissible use of Abboud’s name under the Lanham Act is largely foreclosed by the express terms of the Agreement. Id.

The court further explained that Abboud had not met his burden of establishing a trademark defense of fair use, stating, inter alia, that Abboud is attempting to use his name, and the goodwill associated with it, to identify and distinguish goods, and to advise consumers that he is the source of his new “jaz” line. Therefore, although there is a descriptive component to Abboud’s proposed uses, the Court concludes that he is also attempting to use his name, at least in part, as a trademark and that the confusion generated by his proposed uses would be far more than incidental.

It is patently obvious that consumers seeing JA Apparel’s products, marked or advertised as “Joseph Abboud” or “by Joseph Abboud,” would be utterly confused as to whether the “jaz” products advertised as “by designer Joseph Abboud,” were derived from the same source. Id. at 331. In addition, the court rejected defendants’ unclean-hands defense and counterclaims, which asserted that JA had used Abboud’s name unfairly, after the end of the personal services period, to indicate his personal endorsement of JA products.

The court concluded that JA had not acted in bad faith by creatively using the Joseph Abboud name and trademarks it had purchased to promote its brand. See id. at 348 & n. 41. The court entered judgment accordingly and permanently enjoined Abboud from “using his personal name to sell, market, or otherwise promote, goods, products, and services to the consuming public.” Judgment, decretal ¶ 3. II. DISCUSSION On appeal, defendants contend principally that the district court misinterpreted the Sale Agreement as evincing Abboud’s intent to convey to JA all of his rights to use his name for commercial purposes.

They argue that the transactional documents and the surrounding circumstances made it clear that Abboud did not intend to sell his name other than as a brand name, service mark, or trademark. They also contend that the district court erred in rejecting their trademark defense of fair use, in issuing an injunction that is unduly broad, and in rejecting their unclean-hands defense and counterclaims premised on JA’s alleged misuse of Joseph Abboud’s name and persona. For the reasons that follow, we conclude (

a) that the district court erred in ruling that the Sale Agreement unambiguously conveyed all of Abboud’s rights to use his name commercially, and (

b) that that error affected several of its other rulings, and we therefore remand for further proceedings. A. The Contract Claim Under New York law, which the parties agree governs their contract dispute, the question of whether a written contract is ambiguous is a question of law for the court. See, e.g., Seiden Associates, Inc. v. ANC Holdings, Inc., 959 F.2d 425, 429 (2d Cir.1992) (“Seiden”). “Ambiguity is determined by looking within the four corners of the document, not to outside sources.... ” Kass v. Kass, 91 N.Y.2d 554, 566, 673 N.Y.S.2d 350, 356, 696 N.E.2d 174 (1998).

Contract language is not ambiguous if it has “a definite and precise meaning, unattended by danger of misconception in the purport of the [contract] itself, and concerning which there is no reasonable basis for a difference of opinion.” Breed v. Insurance Company of North America, 46 N.Y.2d 351, 355, 413 N.Y.S.2d 352, 355, 385 N.E.2d 1280 (1978); see, e.g., Seiden, 959 F.2d at 428. “Language whose meaning is otherwise plain does not become ambiguous merely because the parties urge different

interpretations in the litigation.” Hunt Ltd. v. Lifschultz Fast Freight, Inc., 889 F.2d 1274, 1277 (2d Cir.1989). Rather, “[a]mbiguous language is language that is ‘capable of more than one meaning when viewed objectively by a reasonably intelligent person who has examined the context of the entire integrated agreement and who is cognizant of the customs, practices, usages and terminology as generally understood in the particular trade or business.’ ” Revson v.

Cinque & Cinque, P.C., 221 F.3d 59, 66 (2d Cir.2000) (“Revson”) (quoting Seiden, 959 F.2d at 428 (other internal quotation marks omitted)); see, e.g., Readco, Inc. v. Marine Midland Bank, 81 F.3d 295, 299 (2d Cir. 1996) (“contract is ambiguous where reasonable minds could differ on what a term means”). We review de novo the district court’s decision as to whether a contract is ambiguous. See, e.g., Revson, 221 F.3d at 66; Tourangeau v. Uniroyal, Inc., 101 F.3d 300, 306 (2d Cir.1996); Seiden, 959 F.2d at 429. If the contract is unambiguous, its meaning is likewise a question of law for the court to decide.

See, e.g., Revson, 221 F.3d at 66; K. Bell & Associates v. Lloyd’s Underwriters, 97 F.3d 632, 637 (2d Cir.1996). In interpreting an unambiguous contract, the court is to consider its “Particular words” not in isolation “but in the light of the obligation as a whole and the intention of the parties as manifested thereby,” Kass v. Kass, 91 N.Y.2d at 566, 673 N.Y.S.2d at 356-57, 696 N.E.2d 174, but the court is not to consider any extrinsic evidence as to the parties’ intentions, see, e.g., Seiden, 959 F.2d at 428; Metropolitan Life Insurance Co. v. RJR Nabisco, Inc., 906 F.2d 884, 889 (2d Cir.1990).

However, where the contract language creates ambiguity, extrinsic evidence as to the parties’ intent may properly be considered. See, e.g., Seiden, 959 F.2d at 426, 429; In re Consolidated Mutual Insurance Co., 77 N.Y.2d 144, 150, 565 N.Y.S.2d 434, 436, 566 N.E.2d 633 (1990); 67 Wall Street Co. v. Franklin National Bank, 37 N.Y.2d 245, 248, 371 N.Y.S.2d 915, 918, 333 N.E.2d 184 (1975). Where there is such extrinsic evidence, the meaning of the ambiguous contract is a question of fact for the factfinder. Revson, 221 F.3d at 66; Consarc Corp. v.

Marine Midland Bank, N.A., 996 F.2d 568, 574 (2d Cir.1993); Rothenberg v. Lincoln Farm Camp, Inc., 755 F.2d 1017, 1019 (2d Cir.1985). In the present case, addressing the threshold question of ambiguity, we conclude that the scope of the right to use Abboud’s name conveyed by the Sale Agreement is ambiguous. In ¶ 1.1(a)(

A) of the Agreement, set out in full in

Part I.B. above, Abboud and Houndstooth transferred to JA all their right, title, and interest to [t]he names, trademarks, trade names, service marks, logos, insignias and designations identified on

Schedule 1.1(a) (A), and all trademark registrations and applications therefor, and the goodwill related thereto (collectively the “Trademarks”). (Sale Agreement ¶ 1.1(a)(A) (emphasis in original).) JA contended, and the district court agreed, that this language unambiguously conveyed to JA all right to use Joseph Abboud’s name commercially. The court reached this conclusion based on the use of the phrase “[t]he names”: Abboud agreed to sell all rights to, among other things, the “names” on

Schedule 1.1(a)(A), and the name Joseph Abboud appears repeatedly on that schedule. Alternatively stated, if Abboud only intended to convey trademarks, then the Agreement could have and should have said: “Abboud agrees to sell ... all of [his] right, title and interest in and to the trademarks identified on

Schedule 1.1(a)(A).” But it said more than that, and in order to give the word “names” due meaning and effect, the Court must interpret the Agreement in a manner that provides JA Apparel with that which it expressly pur chased — all of Abboud’s rights to use his name for commercial purposes. JA Apparel, 591 F.Supp.2d at 320 (emphases added). We cannot agree that the Sale Agreement unambiguously so provided. Preliminarily, we note that although that court stated that JA “expressly” purchased “all of Abboud’s rights to use his name for commercial purposes,” id., there is in fact no such language in the Agreement.

The court may have been influenced by its apparent acceptance of JA’s contention that it would defy common sense to accept the premise that JA Apparel paid $65.5 million to acquire the ... right to use “Joseph Abboud” or “by Joseph Abboud” as a trademark, while agreeing to let Abboud use the exact same words with respect to a competing clothing line, but in a non-trademark sense, JA Apparel, 591 F.Supp.2d at 333.

However, the fact that JA paid a large price for the Joseph Abboud brand (and existing licensing agreements) does not necessarily mean that JA purchased the right to prohibit Abboud from using his name to refer to himself in a non-trademark sense. There is no provision in the Sale Agreement conveying “all of Abboud’s rights to use his name for commercial purposes,” JA Apparel, 591 F.Supp.2d at 320, and the district court was not entitled to supply such a provision in the name of common sense, much less to call it “express[ ],” id. Nonetheless, the court’s

interpretation of the Agreement as conveying to JA all commercial right to use Joseph Abboud’s name is a plausible reading of the word “names” in ¶ 1.1(a)(A), given that that word is unadorned and that the name “Joseph Abboud” is used many times in

Schedule 1.1(a)(A). Defendants contend, however, that the word “names” in ¶ 1.1(a)(

A) was intended to mean only brand names, and their

interpretation is reasonable in light of several aspects of the Agreement. First, such an

interpretation is reasonable given that brand names are similar to the items immediately following the word “names” in that paragraph, to wit “trade names, service marks, logos [and] insignias.” And, indeed, ¶ 1.1(a)(

A) itself defined all of these terms — along with the registrations, applications, and associated goodwill — as “(collectively the ‘Trademarks’),” a term that would seem to connote existing or pending uses. If JA intended to acquire “all of Abboud’s rights to use his name for commercial purposes,” JA Apparel, 591 F.Supp.2d at 320 (emphasis added), the Agreement could have said, instead of simply “names,” “the names ‘Abboud’ and ‘Joseph Abboud,’ ” and done so without the accompanying reference to the

schedule of existing and pending uses of the names. Second, given that ¶ 1.1(a)(

A) conveyed “[t]he names ... identified on

Schedule 1.1(a) (A) ” (emphasis in original), it is reasonable to read that paragraph as conveying those names in the context in which they were shown in that Schedule. That

Schedule listed foreign and domestic trademark and service mark registrations that had been completed or were pending. (See, e.g., Sale Agreement ¶ 3.6(a) (describing

Schedule 1.1(a)(

A) as a list of “registrations and applications currently used by [Abboud and Houndstooth]”).) Registrations and applications “currently used” plainly did not exhaust Abboud’s right to use his name in the future. Finally, ¶ 1.1(a)(

A) is not the only paragraph in which Abboud and Houndstooth conveyed rights. In subparagraph (

C) of ¶ 1.1 they also conveyed [a]ll 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 thereto or derivative thereof, either alone or in conjunction with other words or symbols (collectively, the “New Trademarks”), for any and all products or services. (Sale Agreement ¶ 1.1(a)(0).) If, as the district court concluded, the word “names” in ¶ 1.1(a)(

A) conveyed “all of Abboud’s rights to use his name for commercial purposes,” JA Apparel, 591 F.Supp.2d at 320 (emphasis added), there would have been no need for the parties to add sub-paragraph (

C) to give JA the right to use and apply for new registrations of marks “containing the words ‘Joseph Abboud.’ ” Under the district court’s

interpretation of the Agreement, subparagraph (

C) is redundant. Such redundancy itself makes the unadorned word “names” in ¶ 1.1(a)(

A) ambiguous. JA contends that “[sjection [sic] 1.1(a)(0) clearly conveyed the right to use ‘Joseph Abboud’ and ‘designed by Joseph Abboud’ ‘or anything similar thereto or derivative thereof,’ as designations regardless of whether used as a trademark.” (JA brief on appeal at 30.) This reading of ¶ 1.1(a)(0) would enhance, rather than eliminate, the redundancy of subparagraph (

C) if “names” in ¶ 1.1(a)(

A) is interpreted as all rights to use Abboud’s name. Further, although JA is correct that the language of subparagraph (

C) clearly gave JA the right to use Abboud’s name in more than trademarks — given that it conveyed “[a]ll rights to use and apply for registration of new trade names, trademarks, service marks, logos, insignias and designations containing the words ‘Joseph Abboud,’ ‘designed by Joseph Abboud,”’ etc. (Sale Agreement ¶ 1.1(a)(0)) — it did not clearly grant the right to “use” Abboud’s name other than as it would be “contain[ed]” in such new names, marks, and logos, etc. If, as defendants contend, the word “names” in ¶ 1.1(a)(

A) means brand names or those uses of the names “identified on”

Schedule 1.1(a)(

A) as existing or pending uses, subparagraph (

C) is not redundant. Interpreted in this way, ¶ 1.1(a)(

A) simply conveyed to JA the right to all existing brands and marks and all marks for which application had been made (referred to in ¶ 3.6(

a) as “current[ ]” “Trademarks”), while ¶ 1.1(a)(0) conveyed to JA the right to use Joseph Abboud’s name in applying for new marks (indeed, defined in ¶ 1.1(a)(0) as “(collectively, the ‘New Trademarks’)”). Nothing in these conveyances of the rights to use Abboud’s name in the current marks or in new marks, however, used any form of the word “exclusivity” or stated in words that Abboud could not make non-trademark use of his name in connection with his new creations following the end of the non-compete period. Given the above conflicting

interpretations of the Sale Agreement, we conclude that the intended meaning of the word “names” in ¶ 1.1(a)(A), on which the district court’s rulings turned, is ambiguous. Given the ambiguity, the parties were entitled to submit extrinsic evidence as to the intent with which they entered into the Agreement, and the court should have considered that evidence in determining whether JA had met its burden of proving that Abboud breached the Agreement. B.

The Lanham Act Trademark Claim The district court also ruled against defendants on the ground that Abboud’s proposed use of his name in conjunction with his new “jaz” line of clothing would constitute trademark infringement in violation of the Lanham Act. We note that the issues in the litigation had been limited, with the dispute centering on Abboud’s right to use his name in advertising.

As the district' court described the parties’ respective positions, defendants “conceded that they- [we]re not seeking to use the Joseph Abboud name on clothes, labels, or hang-tags for the ‘jaz’ line”; Abboud merely wanted “to be able to use his name in advertising materials ... to be able to identify himself in text as the designer of the ... jaz products that are at issue.” JA Apparel, 591 F.Supp.2d at 316 n.4 (internal quotation marks omitted).

JA, for its part, conceded that it was “not seeking to prevent Abboud from being in business and competing, or personally presenting his new ‘jaz’ line to prospective purchasers, such as Bloomingdale’s,” but it sought to prohibit Abboud from using his name in “advertising.” Id. (“ ‘[0]nce he starts advertising, then he’s trading on the same reputation that is, in fact, merged into the goodwill of the brand that he sold to us.’ ” (quoting counsel for JA)). Both sides introduced mock-ups of Abboud’s proposed advertisements.

In the district court, as here, defendants effectively conceded that JA owned valid “Joseph Abboud” trademarks and that it had made a prima facie showing under the Polaroid test, Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961); see, e.g., Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 742 (2d Cir.1998), that the use of his name as a trademark would likely cause confusion, see, e.g., Mattel, Inc. v.

Azrak-Hamway International, Inc., 724 F.2d 357, 360-61 (2d Cir.1983) (“Mattel”) (“confusion” means whether “consumers [have been] misled into believing that the two [products] came from the same source”). But defendants contended that they were entitled, under the Lanham Act, to the defense of fair use, which is not defeated by the existence of some confusion, see KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 121-22, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004).

Such a defense is available to a defendant who establishes, to the extent pertinent here, [t]hat the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or 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 .... 15 U.S.C. § 1115(b)(4).

Assessment of this defense thus requires analysis of whether a given use was “(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 64 (2d Cir.2000) (“EMI”). In making these assessments, the court focuses on the actual or proposed uses themselves. See, e.g., id. at 66-68 (evaluating both a mock-up and the final version of an allegedly infringing commercial); see also TCPIP Holding Co. v. Haar Communications, Inc., 244 F.3d 88, 104 (2d Cir.2001); Venetianaire Corp. of America v.

A & P Import Co., 429 F.2d 1079, 1082 (2d Cir. 1970). In addressing defendants’ fair-use defense, the district cited the above three elements of the defense, see JA Apparel, 591 F.Supp.2d at 329, but its analysis of the first and third elements, discussed below, gives us pause. With respect to the first element, we have equated “use ... as a mark” with “the use of [a] term as a symbol to attract public attention.” Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495, 499 (2d Cir.1962).

Compare id. (term was used as a mark where it was obviously employed “as a symbol to attract public attention”), with Mattel, 72A F.2d at 361 (phrase was used otherwise than as a mark where it “was located on the package in a place and manner that only the close reader would notice”).

See also Restatement (Third) of Unfair Competition § 28 comment c (noting the relevance of 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”).

With respect to the third element of the fair-use defense, the inquiry into the defendant’s good faith “concerns the question whether the user of a mark intended to create consumer confusion as to source or sponsorship.” EMI, 228 F.3d at 66-67; see also id. at 66 (noting that in “analyzing the proper scope of fair use good faith, precedents discussing good faith as the sixth Polaroid factor ... are relevant because the focus of the inquiry is the same”); Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v.

Steinway & Sons, 523 F.2d 1331, 1339 (2d Cir.1975) (analysis of the sixth Polaroid factor requires inquiry as to whether the alleged infringer had a “deliberate intent to infringe”). The district court in the present case indicated that defendants may have established the second element of their fair-use defense, as it noted that “such phrases as ‘by the award-winning designer Joseph Abboud’ ” have “a descriptive component.” JA Apparel, 591 F.Supp.2d at 330. But it found that defendants had not established the otherwise-than-as-a-mark and good-faith elements.

As to the latter, the court stated, inter alia, that “in the context of the good faith analysis under the ‘fair use’ doctrine, it must be noted that Abboud is attempting to use that which he expressly sold to [JA].” Id. at 331. As to the former, the court stated that Abboud is attempting to use his name, and the goodwill associated with it, to identify and distinguish goods, and to advise consumers that he is the source of his new “jaz” line.

Therefore, although there is a descriptive component to Abboud’s proposed uses, the Court concludes that he is also attempting to use his name, at least in part, as a trademark and that the confusion generated by his proposed uses would be far more than incidental. It is patently obvious that consumers seeing JA Apparel’s products, marked or advertised as “Joseph Abboud” or “by Joseph Abboud,” would be utterly confused as to whether the “jaz” products advertised as “by designer Joseph Abboud,” were derived from the same source. Id. at 331.

With respect to the good faith issue, we conclude that the district court applied a standard that was erroneous for at least two reasons. First, giving effect, respectively, to the end and the beginning of the above extended passage from page 331, we note that the district court found that consumers would be confused by Abboud’s proposed use of his name, but that Abboud was not attempting to confuse.

Rather than finding an attempt to confuse, the court found that Abboud was “attempting” to “distinguish” his clothing from that of JA and to “advise consumers that he is the source of his new ‘jaz’ line” (emphases added). Thus, the court’s finding of a lack of good faith could not be premised — as required by our fair-use precedents — on an intent to confuse. Second, the court’s actual premise for finding that Abboud’s proposed use of his name was not in good faith was its conclusion that the Sale Agreement unambiguously conveyed to JA all right to use Abboud’s name commercially.

See, e.g., JA Apparel, 591 F.Supp.2d at 330 (“in the context of the good faith analysis under the ‘fair use’ doctrine, it must be noted that Abboud is attempting to use that which he expressly sold to [JA]”); id. at 331 (finding it “very difficult, if not improper, to completely ignore the Agreement in the context of Abboud’s ‘fair use’ defense”); id. at 327 (“[as JA] established that it purchased the exclusive right to the Joseph Abboud name for commercial purposes, ... any proposed use by Abboud of his name commercially is improper” (emphases added)); id. (“what may have constituted a permissible use of Abboud’s name under the Lanham Act is largely foreclosed by the express terms of the Agreement”).

As the district court’s premise that the Sale Agreement was an unambiguous all-commercial-use-encompassing conveyance was erroneous (see

Part II.A. above), its rejection of the fair-use defense on the basis that there could be no good-faith use of what the court viewed as having been sold was likewise erroneous. In sum, given that the district court found that Abboud was attempting to distinguish the “jaz” line from JA products— which is inconsistent with an intent to confuse — and that its finding as to lack of good faith rested on its erroneous view of the Sale Agreement, the court’s finding that Abboud’s proposed advertising use of his name was not in good faith lacked any proper foundation.

With respect to whether Abboud sought to “use” his name “otherwise than as a mark,” 15 U.S.C. § 1115(b)(4), our principal difficulty with the district court’s conclusion is that the court appears to have resolved this question without considering the proposed uses themselves. Although there is a sentence in the background

section of the court’s opinion in which the court, in describing defendants’ contentions, mentions the presentation of advertisement mock-ups, see JA Apparel, 591 F.Supp.2d at 315, the mock-ups are not mentioned again, and the court gives no indication of having considered such matters as the size, location, or context of the “Joseph Abboud” name in comparison with the appearance of other descriptive matter in any given proposed advertisement, or the likely effect of any given proposed advertisement as a whole.

Our review of the record persuades us that individualized consideration of the various proposed advertisements is needed. For example, in some of the 8^-by-11-inch mock-ups, the “jaz” name is displayed prominently in script some three inches high; in others it is about one inch high.

In the latter mock-ups, beneath the “jaz” logo are the words — all in type smaller than “jaz” — “A New Composition by JOSEPH ABBOUD” in solid capitals, with the name “JOSEPH ABBOUD” in larger capitals than the rest. (JA Exhibits 41-42.) On the other hand, in several advertisements in which the “jaz” logo is some three inches high, the tagline below “jaz” does not mention Abboud but rather reads “An american Luxury collection” in letters about \ of an inch high. (JA Exhibit 43.) In these mock-ups, a picture of Abboud appears on the far right side, and in the bottom corner, below the image of Abboud, is the following text: Designer Joseph Abboud in a 2 Button Super 120 S Charcoal Chalkstripe from His Fall 2008 Jaz Collection Designer Joseph Abboud Is No Longer Associated or Affiliated with JA Apparel Corp., the Owner of the Trademark “Joseph Abboud”™. (Id.) This text is in letters approximately 1/16 of an inch high.

As indicated above, resolution of a fair-use defense requires the court to focus on the defendant’s (actual or proposed) use. We see no indication that the district court considered the advertisement mock-ups submitted by the parties here, where given mock-ups could lend themselves to divergent conclusions as to, inter alia, whether Abboud’s name was being used a trademark, whether consumers would likely be confused and believe the “jaz” line comes from JA, and whether a particular size and placement of Abboud’s name in a mock-up evinced an intent to confuse.

In the event that the district court does not rule in favor of JA on the contract claim on remand, it will be required to address the trademark issues. C. Other Issues Defendants have raised other issues on this appeal, including challenges to the dismissal of their defense of unclean hands, the dismissal of their counterclaims based on the same factual assertions, and the breadth of the permanent injunction issued by the district court.

In light of our decision vacating the judgment and remanding for further proceedings on the ground that the district court’s principal rationales were erroneous, we decline to address these additional contentions, except to note that an injunction of scope similar to that originally entered would seem to be inappropriately broad if based solely on trademark infringement rather than on breach of contract.

The district court is free on remand to revisit that matter, as well as the other appellate issues raised by defendants and the claims of JA that the court dismissed as duplicative of the claims on which JA originally prevailed. CONCLUSION We have considered all of the parties’ arguments in support of their respective positions on this appeal and, except to the extent indicated above, have found them to be without merit. The judgment of the district court is vacated, and the matter is remanded for further proceedings not inconsistent with this opinion.