CENTAUR COMMUNICATIONS, LIMITED v. A/S/M COMMUNICATIONS, INC., 86 Civ. 9587 (MP).

• Decision Date: 23 December 1986
• Docket Number: No. 86 Civ. 9587 (MP).,86 Civ. 9587 (MP).
• Citation: 649 F. Supp. 74
• Parties: CENTAUR COMMUNICATIONS, LIMITED, Plaintiff, v. A/S/M COMMUNICATIONS, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

649 F. Supp. 74

CENTAUR COMMUNICATIONS, LIMITED, Plaintiff, v. A/S/M COMMUNICATIONS, INC., Defendant.

No. 86 Civ. 9587 (MP).

United States District Court, S.D. New York.

December 23, 1986.

Mudge Rose Guthrie Alexander & Ferdon, New York City by John J. Kirby, Jr., Shelley O'Neill, for plaintiff.

Satterlee & Stephens, New York City by James F. Rittinger, for defendant.

MILTON POLLACK, Senior District Judge.

This is a motion for a preliminary injunction by the plaintiff pursuant to Rule 65 of the Federal Rules of Civil Procedure. Plaintiff claims that defendant has infringed upon plaintiff's unregistered "Marketing Week" trademark.

Visual examination of defendant's magazine as distributed prior to September 1986 makes it clear beyond doubt that defendant switched completely from its own mark of "Adweek" in bold 1½ inch lettering to plaintiff's mark of "Marketing Week," printed in similarly sized lettering comparable to the format of plaintiff's mark.

Where, as here, the mark at issue is descriptive, one predicate for the issuance of a preliminary injunction is a demonstration by plaintiff of the secondary meaning of the mark or name. Thompson Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208, 216 (2d Cir.1985) (where Judge Kaufman remanded a preliminary injunction action for determination as to whether plaintiff's mark had acquired secondary meaning). Proof of secondary meaning "entails vigorous evidentiary requirements" and may be proved by advertising expenditures, consumer studies linking the name to a source, sales success, as well as other methodologies. Id. at 217 (citations omitted).

There is evidence in this record from which confusion might be inferred, namely, the knowing and deliberate copying of the tradename of the plaintiff's magazine. The requirements for preliminary injunctive relief necessitate that plaintiff demonstrate with reasonable certainty a clear showing of either probable success on the merits and irreparable injury or sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief. It is entirely evident that the defendant's magazine cannot claim that it has achieved a secondary meaning for the phrase "Marketing Week," whatever has been established for the description "Adweek." The plaintiff's distribution in America of the magazine entitled "Marketing Week" has clearly preceded any appropriation...