CES Pub. Corp. v. St. Regis Publications, Inc., s. 179

Citation188 USPQ 612,531 F.2d 11
Decision Date31 December 1975
Docket NumberD,211,Nos. 179,s. 179
PartiesCES PUBLISHING CORP., Plaintiff-Appellant-Cross-Appellee, v. ST. REGIS PUBLICATIONS, INC. Defendant-Appellee-Cross-Appellant. ockets 75--7269, 75--7276.
CourtUnited States Courts of Appeals. United States Court of Appeals (2nd Circuit)

Michael H. Rosenbloom, Washington, D.C. (Arthur Scheiner, Paul M. Ruden and Wilner & Scheiner, Washington, D.C., of counsel), for plaintiff-appellant-cross-appellee.

Patricia Hatry, New York City (Davis, Gilbert, Levine & Schwartz, New York City, of counsel), for defendant-appellee-cross-appellant.

Before LUMBARD, FRIENDLY and MULLIGAN, Circuit Judges.

FRIENDLY, Circuit Judge:

In this action between two New York corporations in the District Court for the Southern District of New York, plaintiff CES Publishing Corp. (CES) alleged that since December, 1972, it had published a magazine entitled 'Consumer Electronics Monthly,' which was distributed free of charge to manufacturers, distributors and dealers in the consumer electronics trade and which had generated substantial advertising revenues; that CES was privileged to use that title for its magazine by virtue of the registration of the trademark 'Consumer Electronics' on the Supplemental Register of the Patent Office in 1967 by TV Digest, Inc., which had granted an exclusive license, now held by CES, to use the mark for a trade magazine to be entitled 'Consumer Electronics Monthly'; that during the latter part of 1974 defendant announced its intention to publish a magazine, 'Consumer Electronics Product News,' also to be distributed free to the trade; and that this would violate CES' rights under the Lanham Act, 15 U.S.C. § 1051 et seq., and § 368--d of the New York General Business Law and the New York law of unfair competition. Later CES moved for a preliminary injunction.

Defendant filed an opposing affidavit. It recounted the following history: Defendant's interest in providing daily coverage to the semi-annual Consumer Electronics Show (a trade fair known to the industry as the 'C.E.S.' 1) had been whetted by the discovery in 1971 that only one publication was doing this. This periodical, entitled 'Consumer Electronics Show Daily,' claimed trademark protection under the TV Digest registration. At first, therefore, defendant titled its publication simply 'Trade News Daily,' but this proved insufficient to identify the publication with the show. This impasse was bridged by defendant's coming to believe that the TV Digest trademark was invalid; thus defendant began in 1973 to cover the Show with a publication entitled 'CES Trade News Daily,' and was promptly met with a claim of trademark infringement by plaintiff and a change of the name of plaintiff's publication to 'CES Daily.' After the Consumer Electronics Show in June, 1974, defendant decided to expand its efforts by publishing a monthly magazine devoted to consumer electronics products. It settled on the title for this magazine as 'Consumer Electronics Product News.' Again there was a sole competitor in the field, namely, the plaintiff CES Publishing which, pursuant to its trademark, had been publishing a magazine entitled 'Consumer Electronics Monthly.' When defendant refused to honor plaintiff's demands that it cease using the words 'Consumer Electronics,' this suit followed.

Defendant's affidavit went on to call attention to a number of instances in which competing trade publications use the name of the industry, followed by another word identifying the particular journal. 2 It alleged further that other publications had used 'Consumer Electronics' in their titles, that many companies had adopted these words in their corporate names or as titles for divisions, and that 'The generic nature of 'consumer electronics' is further manifested in advertisements, personnel listings, news articles and other articles written about the industry . . .' Defendant also moved to dismiss under F.R.Civ.P. 12(b)(7) for failure to join TV Digest and Audio Times 3 as parties and under F.R.Civ.P. 12(b)(6) for failure to state a claim on which relief can be granted. The basis of the latter branch of the motion was the generic nature of the words 'Consumer Electronics.' Plaintiff filed a reply affidavit alleging that the term had acquired a 'secondary significance'; it also attached a letter showing TV Digest's approval of CES' bringing the action.

Judge Duffy found it unnecessary to pass upon the motion under Rule 12(b)(7) or another motion by defendant to delay decision pending determination of a proceeding it had brought in the Patent Office to cancel the plaintiff's trademark, since he found that the term 'is not and cannot be such a distinctive term as to become a trademark nor does the proof at this point show that there has been a secondary meaning built up by the term to identify the plaintiff's publication with the words 'Consumer Electronics." He thought it clear that the term 'as applied to a trade publication is merely a generic name and that as such it is not the subject of a valid trademark excluding others from the use of the words 'consumer electronics." Accordingly, he denied plaintiff's motion for a temporary injunction. However, he also denied defendant's motion 'since the record is not clear as to the open questions of proof.' Both parties have appealed.

The district court was right in holding the term 'Consumer Electronics' to be generic and therefore in denying a temporary injunction, but wrong in believing that proof of secondary meaning might nevertheless entitle plaintiff to prevail under the Lanham Act. Although the Act does not explicitly say that a generic word cannot be validly registered even if there is proof of secondary meaning, this is the necessary implication from the contrast between § 14(c) and § 15(4) on the one hand, which provide that a registered mark may be cancelled at any time if it becomes 'the common descriptive name of an article or substance,' and that 'No incontestable right shall be acquired in a mark which is the common descriptive name of any article or substance, patented or otherwise,' and §§ 2(e), (f) and § 15 on the other, which permit registration of 'merely descriptive' marks if they have 'become distinctive of the applicant's goods in commerce' and allow such marks to achieve incontestability. The reason is plain enough. To allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are. See J. Kohnstam, Ltd. v. Louis Marx and Co., 280 F.2d 437, 440, 47 CCPA 1080 (1960); Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 48 CCPA 1004 (1961); Application of Preformed Line Products Co.,323 F.2d 1007, 51 CCPA 775 (1963); Application of G. D. Searle & Co., 360 F.2d 650, 53 CCPA 1192 (1966); Application of Deister Concentrator Co., 289 F.2d 496, 503, 48 CCPA 952 (1961). All this is in accord with the common law. See discussion in Delaware & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872). The record makes plain that 'consumer electronics' is a generic term describing electronic equipment 4 which consumers buy for installation by themselves. It is therefore clear that if plaintiff had applied the term to such goods, he could not successfully maintain a trademark action, see In re Space-General Corp.,136 U.S.P.Q. 77 (T.T.A.B. 1962), even if he were the first in the field and consumers had come to identify his products with him.

It is equally clear that in determining whether the title of a periodical is a valid trademark, the same tests must be met as in the case of goods. Application of Wings Pub. Co., Inc., 148 F.2d 214, 32 CCPA 926 (1945); McGraw-Hill Pub. Co. v. American Aviation Assoc., 73 App.D.C. 131, 117 F.2d 293 (1940). Thus, to take a familiar example, before a satirical magazine whose title incorporates the word 'lampoon' may assert trademark rights in that title, a court must ask whether, to that public to whom the magazine is directed, the word 'lampoon' means a 'satirical magazine.' National Lampoon, Inc. v. American Broadcasting Cos., Inc., 376 F.Supp. 733, 748--49 (S.D.N.Y.), aff'd mem. 497 F.2d 1343 (2 Cir. 1974). But although the same analysis of trademark terms applies to the titles of periodicals as to goods, our view may be obscured when the disputed title names a class...

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