Miss Universe, Inc. v. Patricelli

• Decision Date: 20 March 1969
• Docket Number: No. 298,Docket 32861.,298
• Citation: 408 F.2d 506
• Parties: MISS UNIVERSE, INC., Appellee, v. Alfred PATRICELLI, Appellant.
• Court: U.S. Court of Appeals — Second Circuit

408 F.2d 506 (1969)

MISS UNIVERSE, INC., Appellee, v. Alfred PATRICELLI, Appellant.

No. 298, Docket 32861.

United States Court of Appeals Second Circuit.

Argued January 13, 1969.

Decided March 20, 1969.

Mr. Alfred Patricelli, pro se.

Fred A. Freund, New York City (Sidney A. Diamond, Elizabeth Head, Kaye, Scholer, Fierman, Hays & Handler, New York City, on the brief and Morris Tyler, Lawrence W. Iannotti, Tyler, Cooper, Grant, Bowerman & Keefe, New Haven, Conn., on the brief), for plaintiff-appellee.

Before WATERMAN, KAUFMAN and ANDERSON, Circuit Judges.

ANDERSON, Circuit Judge:

Since 1952 Miss Universe, Inc., the appellee, has annually conducted the Miss Universe Beauty Pageant. Until 1964, the week-long exhibition of feminine pulchritude consisted of two contests for the selection of two beauty queens: first, "Miss United States of America", interchangeably known as "Miss United States" or "Miss U.S.A.", selected from among entrants from the several states and the District of Columbia; and "Miss Universe", selected from the entrant from the United States and entrants from a large number of foreign countries. In 1965, and continuously thereafter, the "Miss U.S.A." contest was itself made a separate week-long pageant, preceding the Miss Universe Beauty Pageant by six to eight weeks. From 1955 to 1959, the "Miss U.S.A." contest was regionally televised in California; and, while there was no extensive television coverage from 1960 through 1964, the pageant was nationally broadcast on the CBS television network in 1965 and thereafter. In addition, it has enjoyed wide publicity and extensive coverage in newspapers throughout the country.

The appellee has, since 1952, been engaged in numerous promotional activities under the service marks "Miss U.S. A." and "Miss United States of America" and derives considerable economic benefit from these services, which include appearances by "Miss U.S.A." as a model, hostess, and representative and promoter of sponsors' products. The appellee registered the two above mentioned service marks in the United States Patent Office on May 24, 1966 under Registration Nos. 808,974 and 808,975 pursuant to applications filed in 1960.

From 1952 to 1961, appellant Patricelli was appellee's franchisee for the New England States. In this capacity, he conducted state beauty contests to select entrants to appellee's "Miss U.S.A." contest, and he regularly utilized the service marks "Miss U.S.A." and "Miss United States of America" in connection with the selection of such entrants.

In 1959, while still appellee's franchisee, appellant organized a national beauty contest to select an American entrant to the World Beauty Pageant in London, England. Although the appellant contends that he attempted to differentiate his contest from appellee's by use of such designations as "Miss U.S.A.-World" and "Miss U.S.A.-World Beauty Pageant", the qualifying words "World" and "World Beauty Pageant" came to be omitted regularly in the programs and brochures announcing the annual contest. Similarly, the Frostie Company, with which appellant had his principal sponsorship contract after 1962, used the mark "Miss U.S.A." without the word "World" in its advertising.

In 1960, appellant's contest achieved widespread and unfavorable publicity when the contest winner was disqualified for being only 15 years old. As soon as the appellee learned of this, it promptly warned the appellant to cease using its service marks in connection with his own beauty contests. Nevertheless, between 1960 and 1966 appellant continued to use or permitted use of the mark "Miss U.S.A." in beauty contests but apparently "on a small scale and in only a few localities." Although there is evidence of at least two national television broadcasts in which appellant's winner made individual appearances under this title, the district court was justified in finding that appellee lacked knowledge of appellant's alleged infringing activities during that period.

In 1967, appellant announced plans for the first nationally televised broadcast of his beauty contest. To prevent any infringement of its registered service marks, appellee brought suit in the district court where, after a hearing, the court issued a temporary injunction prohibiting appellant from using "Miss U.S. A.", "Miss United States", "Miss U.S.A.-World", "Miss U.S.A.-World Beauty Pageant", or any other confusingly similar word or terms. Miss Universe, Inc. v. Patricelli, 271 F.Supp. 104 (D.Conn. 1967). On appeal, this court affirmed the issuance of the temporary injunction only ten days before appellant's scheduled telecast and remanded for trial; we specifically noted that our decision did not preclude the use of a "title descriptive of his contest to select a representative from the United States of America for the World Beauty Pageant in London, England, such as Miss World-U.S. A." Miss Universe, Inc. v. Patricelli, 386 F.2d 997 (2 Cir. 1967). Following the trial on the merits, findings of fact and conclusions of law were filed on July 27, 1968, but final judgment was withheld until September to permit appellant to conduct his 1968 contest in the intervening period. In its opinion, the district court upheld the validity of the appellee's two registered service marks; it found that they identify and distinguish the source and origin of appellee's services, that they have become symbols of its good will, and that they have acquired a secondary meaning. In addition, the court stated:

"34. The widespread confusion which has already taken place and is continuing to occur indicates that the press and the public will unavoidably confuse defendant\'s beauty contests and contest winners with plaintiff\'s `Miss U.S.A.\' so long as defendant uses a name for his contest and a title for his winner containing the words `Miss\' and `U.S.A.,\' or `United States of America\' or `United States,\' regardless of whatever additional words or terms may be added to them or inserted between them. Events occurring since the Court of Appeals decision have demonstrated that defendant\'s use of `Miss World-U.S.A.\' is likely to result in confusion with plaintiff\'s service marks and that such confusion has actually occurred. The tendency of the press and others to drop the word `World\' out of defendant\'s title appears inescapable and is inferably attributable in part to defendant\'s consistent failure to control and police the use of his title so as to avoid it being reduced simply to `Miss U.S.A.,\' which is the exact wording of one of plaintiff\'s marks."

Miss Universe, Inc. v. Patricelli, F.Supp. (D.Conn.1968). Accordingly, the court concluded that appellant's use of any terms confusingly similar to appellee's marks, including "Miss U.S.A.-World" and "Miss World-U.S.A." constituted an infringement of appellee's service marks and unfair competition with appellee. It therefore enjoined appellant's continued use of such terms.

The registration of appellee's service marks entitled it to the full scope of statutory protection afforded trademarks, including the provision of § 7(b) of the Lanham Act, 15 U.S.C.A. § 1057(b), that a "certificate of registration * * * shall be prima facie evidence of the validity of the registration * * * and of registrant's exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate * * *." This court has often acknowledged the "strong presumption of validity" created by registration. Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 542 (2 Cir. 1956). On the other hand, a mark which is "merely descriptive" of the product is entitled to no protection, unless it has acquired a "secondary" or distinctive meaning. 15 U. S.C.A. § 1052(e); W. E. Bassett Company v. Revlon, Inc., 354 F.2d 868, 871 (2 Cir. 1966); Safeway Stores, Inc. v. Safeway Properties, Inc., 307 F.2d 495, 498-499 (2 Cir. 1962). Of course, the same considerations apply to marks which utilize geographical names. See 3 Callman, Unfair Competition and Trademarks § 72 at 1121 (2d ed. 1950). In this case, the record contains substantial evidence of extensive advertising, publicity and use in support of the district court's finding that appellee's mark has acquired a "secondary" meaning, and consequently it is unnecessary to discuss appellant's argument that the marks are merely descriptive. It is clear that appellant has not carried his burden of overcoming the presumption of validity attached to registration.

The more difficult question in this case concerns the extent to which appellee's marks are entitled to protection, that is, the determination of the outer boundary of the monopoly granted by the Lanham Act. Infringement occurs only where the use of a colorable imitation of valid marks is "likely to cause confusion, or to cause mistake, or to deceive." 15 U.S.C.A. § 1114(1) (a). Several factors enter the calculation of "likelihood of confusion": the degree of similarity between the marks in appearance and suggestion; the similarity of the products for which the name is used; the area and manner of concurrent use; the degree of care likely to be exercised by consumers; the strength of the complainant's mark; actual confusion; and an intent on the part of the alleged infringer to palm off his...