Centaur Communications, Ltd. v. A/S/M Communications, Inc.

• Decision Date: 09 October 1987
• Docket Number: D,No. 923,923
• Citation: 830 F.2d 1217,4 USPQ2d 1541
• Parties: CENTAUR COMMUNICATIONS, LIMITED, Plaintiff-Appellee, v. A/S/M COMMUNICATIONS, INC., Defendant-Appellant. ocket 87-7008.
• Court: U.S. Court of Appeals — Second Circuit

Page 1217

830 F.2d 1217

4 U.S.P.Q.2d 1541

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

No. 923, Docket 87-7008.

United States Court of Appeals Second Circuit.

Argued Feb. 23, 1987.

Decided Oct. 9, 1987.

James F. Rittinger, New York City (Mark A. Fowler, Satterlee & Stephens, New York City, of counsel) for defendant-appellant A/S/M Communications, Inc.

John J. Kirby, Jr., New York City (Shelley B. O'Neill, Martin L. Feinberg, Robert J. Gunther, Jr., Mudge Rose Guthrie Alexander & Ferdon, New York City, of counsel) for plaintiff-appellee Centaur Communications, Ltd.

Before CARDAMONE and MINER, Circuit Judges, and SPRIZZO, District Judge. ^*

CARDAMONE, Circuit Judge:

This appeal, from a finding of trademark infringement, necessarily implicates the legal concepts of secondary meaning and likelihood of confusion, for which our precedents establish a long list of factors that must be considered before a determination may be reached. Unfortunately, there is no shortcut. To reach a principled conclusion in a trademark case, it is just as essential to recite the right formulas as it was for Ali Baba to say "Open Sesame" in order to open the door to the treasure cave of the Forty Thieves.

In a judgment of the United States District Court for the Southern District of New York (Pollack, J.) entered on January 20, 1987, the district court judge found that the plaintiff-appellee Centaur Communications, Ltd. (Centaur or appellee) had established that the phrase, "Marketing Week," the title of a Centaur publication, was a protectible trademark under both federal and state law. The trial judge also ruled that the defendant-appellant A/S/M Communications, Inc. (A/S/M or appellant) had infringed upon the mark because the title of its publication, "ADWEEK's Marketing Week," would be likely to create confusion among consumers as to the source or origin of A/S/M's magazine. Based on these findings, it granted injunctive relief. We subsequently stayed a portion of the injunction pending appeal. We now affirm.

BACKGROUND

This appeal involves two weekly publications with similar titles, both of which focus on marketing news. For purposes of clarity, we will refer to Centaur's publication as Marketing Week and A/S/M's as ADWEEK's Marketing Week. ¹ Although both magazines are concerned with marketing, the emphasis of each is different. Marketing Week concentrates on the British market, though it does have a page devoted to marketing news in the United States, and ADWEEK's Marketing Week is geared towards the American market.

The orbits of these two magazines recently converged. Marketing Week has been distributed in the United States for about ten years, garnering only a slim circulation of 110 current subscribers. In contrast, its subscriber-base in the United Kingdom numbers 36,000. The genesis of ADWEEK's Marketing Week is somewhat complicated. A/S/M was formed in 1978. At that time it acquired three regional publications dealing with advertising, and changed their names to ADWEEK. Over the next several years, A/S/M acquired other publishing companies in different regions that also published advertising magazines. By 1986 it was publishing six regional editions of ADWEEK, all aimed towards advertising agency executives. In mid-1985, A/S/M began publishing a national marketing edition of ADWEEK. The national publication differed from the regional editions in that it emphasized attracting marketing executives in so-called "client" companies. The national marketing edition of ADWEEK had a subscription base of 10,000. The title of this new publication was ADWEEK National Marketing Edition. Beginning with the September 6, 1986 edition, A/S/M changed the title to ADWEEK's Marketing Week. This new publication came to Centaur's attention shortly thereafter, and the present litigation ensued.

This case commenced when Centaur sued A/S/M for declaratory and injunctive relief on December 15, 1986. The complaint alleged, inter alia, infringement of Centaur's unregistered trademark and a violation of New York's unfair competition law. After a December 23, 1986 hearing before the district court, the request for preliminary injunctive relief was denied. Centaur Communications, Ltd. v. A/S/M Communications, Inc., 649 F.Supp. 74 (S.D.N.Y.1986).

Waiving damages, Centaur then sought permanent injunctive relief. After a bench trial on the merits, the district court found both a Lanham Act and an unfair competition violation. Centaur Communications, Ltd. v. A/S/M Communications, Inc., 652 F.Supp. 1105 (S.D.N.Y.1987). As a consequence, it restrained A/S/M from displaying on its cover or in any promotional material, the mark "Marketing Week" either alone or with the word "ADWEEK's" "occupying a significantly and materially lesser percentage of the entire logo." Id. at 1125. It further enjoined A/S/M from using the title "Marketing Week" without a license from Centaur. Id. at 1124. Appellant was also required to publish a prominent notice in its next three issues explaining why it had stopped using the title Marketing Week" and stating that its publication was not connected to Centaur's. Id. at 1126. Finally, the district court awarded appellee attorneys' fees. Id.

On January 27, 1987, A/S/M moved in this Court for an order expediting the appeal and for a stay pending appeal. We expedited the appeal and stayed that portion of the decree which required that "Adweek" appear in comparable size lettering to and in conjunction with "Marketing Week" on its cover. Subject to certain conditions, A/S/M was permitted to utilize advertising and promotional materials without the word "Adweek" appearing in comparable size to and in connection with "Marketing Week." We also stayed the requirement that appellant give notice to its subscribers. Finally, the sum of $10,000 was set as liquidated damages should the finding of infringement be affirmed on appeal.

The main issue raised is the correctness of the district court's determination that by its use of the term "Marketing Week" A/S/M violated Sec. 43(a) of the Lanham Act.

DISCUSSION

I The Lanham Act Claim

Section 43(a) of the Lanham Act proscribes "false designation of origin" in relation to goods or services. 15 U.S.C. Sec. 1125(a) (1982). This section is the only provision in the Lanham Act that protects an unregistered mark like Centaur's. Its purpose is to prevent consumer confusion regarding a product's source, see Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir.1986), and to enable those that fashion a product to differentiate it from others on the market. International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 918 (9th Cir.1980), cert. denied, 452 U.S. 941, 101 S.Ct. 3086, 69 L.Ed.2d 956 (1981). In that way producers create goodwill with consumers. The device used to protect both groups is a trademark.

Not all trademarks are entitled to the same degree of legal protection. See, e.g., Lois Sportswear, 799 F.2d at 871; 20th Century Wear, Inc. v. Sanmark-Stardust Inc., 747 F.2d 81, 87 (2d Cir.1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1755, 84 L.Ed.2d 818 (1985) (20th Century I). As Judge Friendly's opinion in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir.1976), observes, there are four shifting levels of trademark protection which, beginning with the least protected, are (1) generic, (2) descriptive, (3) suggestive, and (4) fanciful or arbitrary. Id. at 9.

The two categories implicated on this appeal are generic and descriptive marks. A generic mark "refers, or has come to be understood as referring, to the genus of which the particular product is a species." Id. at 9. For example, "aspirin" is a generic term. A descriptive mark "describes the qualities or characteristics of a good or service." Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 662, 83 L.Ed.2d 582 (1985). A term can be descriptive in two ways: "[i]t can literally describe the product, or it can describe the purpose or utility of the product." 20th Century I, 747 F.2d at 88. The district court ruled without objection that the mark, "Marketing Week," was descriptive. 652 F.Supp. at 1108.

Appellant now suggests that "Marketing Week" is a generic mark. Since this argument was not raised in the trial court, we decline to consider it. See Air et Chaleur, S.A. v. Janeway, 757 F.2d 489, 493 (2d Cir.1985); Schmidt v. Polish People's Republic, 742 F.2d 67, 70 (2d Cir.1984). Moreover, neither party has addressed the issue of whether "marketing" is the name of a trade or industry, which were that the case, would cause the mark to be generic. Cf. Reese Publishing Co. v. Hampton Int'l Communications, 620 F.2d 7, 10 (2d Cir.1980) (the title, "Consumer Electronics Monthly" was a generic trademark because "consumer electronics" was the name of a trade). We consider therefore what protection, if any, should be accorded appellee's descriptive mark.

Because the title, "Marketing Week," is not registered, Centaur may only succeed in this infringement suit if it proves that (1) the mark has acquired secondary meaning and (2) there is a likelihood of confusion as to the source of the publication. See Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 213, 216 (2d Cir.1985); 20th Century I, 747 F.2d at 90. This two-step analysis reflects two different questions. The inquiry into the existence of secondary meaning examines whether the proponent of the mark has acquired a protectible interest in it. See American Television & Communications Corp. v. American Communications & Television, Inc., 810 F.2d 1546, 1548 (11th Cir.1987); Security Center, Ltd. v. First Nat'l Sec. Centers, 750 F.2d 1295, 1298 (5th Cir.1985). An examination into the likelihood of confusion considers whether that interest has been infringed. See Lois Sportswear, 799 F.2d at 871. We discuss each of these questions.

A. ...