C.L.A.S.S. Promotions, Inc. v. D.S. Magazines, Inc.

• Decision Date: 18 January 1985
• Docket Number: D,84,Nos. 57,s. 57
• Citation: 753 F.2d 14
• Parties: C.L.A.S.S. PROMOTIONS, INC., Plaintiff-Appellant, Cross-Appellee, v. D.S. MAGAZINES, INC., Defendant-Appellee, Cross-Appellant. Cal.ockets 84-7253, 84-7255.
• Court: U.S. Court of Appeals — Second Circuit

Page 14

753 F.2d 14

225 U.S.P.Q. 275

C.L.A.S.S. PROMOTIONS, INC., Plaintiff-Appellant, Cross-Appellee, v. D.S. MAGAZINES, INC., Defendant-Appellee, Cross-Appellant.

Cal. Nos. 57, 84, Dockets 84-7253, 84-7255.

United States Court of Appeals Second Circuit.

Argued Sept. 21, 1984.

Decided Jan. 18, 1985.

Allison C. Collard, Roslyn, N.Y. (Collard, Roe & Galgano, P.C., Roslyn, N.Y., of counsel), for plaintiff-appellant, cross-appellee.

Robert L. Sherman, Mineola, N.Y. (Michael F. Dennis, Mineola, N.Y., of counsel), for defendant-appellee, cross-appellant.

Before VAN GRAAFEILAND and CARDAMONE, Circuit Judges, and MacMAHON, District Judge. ^*

MacMAHON, District Judge:

C.L.A.S.S. Promotions, Inc. ("Class Promotions") appeals from that part of a judgment of the United States District Court for the Southern District of New York, Charles L. Brieant, Judge, entered February 17, 1984, dismissing its claims for damages and forfeiture predicated upon alleged trademark infringement and unfair competition arising from the use of similar titles by two magazine publishers. D.S. Magazines We affirm the partial dismissal of the action, but remand that part of the judgment granting an injunction in order that the district court may revise it in accordance with this opinion.

Inc. ("D.S. Magazines") cross appeals from that part of the judgment which prohibits D.S. Magazines from using the word "Class" in the title of its magazine in any form other than the one appearing on the cover of the January 1984 edition and from using any format on its magazine cover in which the words "Right On! Presents" are smaller or located differently from those appearing in its January 1984 edition.

PROCEEDINGS IN THE DISTRICT COURT

On September 12, 1983, Class Promotions moved for a preliminary injunction against D.S. Magazines' continued publication of its magazine, "RIGHT ON! PRESENTS CLASS," asserting that D.S. Magazines had infringed its trademark "CLASS." Following an evidentiary hearing, Judge Brieant, in a well-reasoned memorandum and order dated January 10, 1984, denied the motion, finding that there was no infringement by D.S. Magazines' later use of the mark because (1) the mark "CLASS" was a very weak mark; (2) there was only a slight overlap in the respective markets of the magazines; (3) D.S. Magazines did not adopt the mark in bad faith; (4) instances of actual confusion were de minimis; and (5) there was no likelihood that a reasonable buyer would confuse the marks. Later, D.S. Magazines stretched its preliminary victory by changing the design of its title. It magnified the word "Class" by shrinking the size of the words "Right On. Presents." Apparently finding that this made the word "Class" the identifying title, the court entered final judgment dismissing the claim for existing infringement but granting the limited injunction described above.

THE APPEAL

On this appeal, Class Promotions argues that the district court erred in finding that its mark was weak, that there was no likelihood of confusion, and that there was no trademark infringement. After carefully considering the record, we cannot say that any of the challenged findings are clearly erroneous and therefore reject the argument.

VALIDITY OF THE MARK

There is no question that, as between the parties, Class Promotions was the first user of the mark "CLASS." In August 1979, it began publication of a bi-monthly, pocket-size, magazine, "CLASS," which it distributed throughout New York City and the Caribbean. The magazine is directed to black Americans and readers interested in black culture, as well as West Indian ethnic culture and third world countries. In 1983, 150,000 copies of the magazine were distributed.

D.S. Magazines publishes a number of magazines, including one called "RIGHT ON!," directed to black teenagers. "RIGHT ON!" has been in existence for twelve years and has reached a national monthly circulation of approximately 180,000 copies. Realizing that, since its initial publication, "RIGHT ON!'s" subscribers had grown to adults, D.S. Magazines decided to capitalize on this audience by publishing an adult magazine entitled "RIGHT ON! PRESENTS CLASS." The first issue was published in December 1982 and distributed in every major city in the United States. The magazine is full size, and its editorial emphasis is directed to black Americans, with little or no emphasis on third world countries or Caribbean culture. Slightly less than one year after its initial issue, monthly publication reached 370,000 copies, with monthly newsstand sales of approximately $235,000.

A protectable trademark is established when the mark is adopted and used to identify a product. A generic mark or a descriptive mark which has no secondary meaning cannot be a valid trademark. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976). See 15 U.S.C. Sec. 1052(e)(1) (1976). The district court suggested that the mark "CLASS" was merely descriptive and therefore not protectable. It is clear, however, that Class Promotions had adopted and used the mark "CLASS" as the title of its magazine. The mark is not descriptive of the publisher's product, magazines, or of any specific product offered for sale. ¹ Instead, the mark is suggestive because "it requires imagination, thought and perception to reach a conclusion as to the nature of [its] goods." Abercrombie & Fitch Co. v. Hunting World, Inc., supra, 537 F.2d at 11, citing Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F.Supp. 479, 488 (S.D.N.Y.1968). In Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F.Supp. 414, 420 (S.D.N.Y.1980), aff'd, 687 F.2d 563 (2d Cir.1982), the court held that "the word 'playboy', evoking the aspirations, if not the life-style, of certain men, suggests to the imagination the nature of the magazine's content" and therefore is a suggestive mark. Analogously, the word "Class" is a suggestive mark and thus a valid trademark without proof of secondary meaning.

NON-INFRINGEMENT

Given a valid trademark, the critical issue in an action for trademark infringement is whether there is any likelihood that an appreciable number of reasonable consumers would be misled, or simply confused, as to the source of the goods in question. Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 542 (2d Cir.1956). The court, in making this determination and fashioning equitable relief, must look not merely to the similarity of the conflicting marks but to a number of other factors. 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 also Buitoni Foods Corp. v. Gio. Buton & C. S.p.A., 680 F.2d 290 (2d Cir.1982); McGregor-Doniger, Inc. v. Drizzle Inc., 599 F.2d 1126 (2d Cir.1979); Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44 (2d Cir.1978), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979). The so-called "Polaroid formula" is:

Where the products are different, the prior owner's chance of success is a function of many variables: the strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.

Polaroid Corp. v. Polarad Electronics Corp., supra, 287 F.2d at 495.

1. Strength of the Mark

Although the word "Class" is capable of functioning as a trademark, the district court found that it was a very weak mark. The strength of a mark refers to its distinctiveness, "or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous, source." McGregor-Doniger, Inc. v. Drizzle Inc., supra, 599 F.2d at 1131. Applying this test, the mark "CLASS" is a weak mark. "CLASS" magazine has only been in circulation since 1979, and, although it claims to have a broad geographical scope, ² its actual distribution is narrow--150,000 copies in 1983. More importantly, there is no evidence that the mark "CLASS" is associated in the public's mind with the magazine "CLASS" or with its publisher, Class Promotions.

2. Similarity of Marks

D.S. Magazines' mark consists of the totality of the words "RIGHT ON! PRESENTS CLASS." However, throughout the magazine and on some letterheads and business cards, the word "Class" is used to refer to the publication. In assessing the importance of the similarity of the marks, the district court properly focused on the general impression conveyed to the purchasing public by the respective marks. The court carefully contrasted the size, layout, design, and logotype of the two titles and found that the differing presentations of the marks reduced the potential for confusion. ³ McGregor-Doniger, Inc. v. Drizzle Inc., supra, 599 F.2d at 1133.

3. Product Proximity and Quality of Defendant's Product

The district court contrasted the differences in appearance, size, content, geographical distribution, and audience appeal and concluded that the competitive distance between the respective magazines militated against a finding of likelihood of confusion. The physical attributes and layouts of the magazines are clearly distinguishable. Although both magazines are...