Centaur Communications v. A/S/M COMMUNICATIONS

• Decision Date: 20 January 1987
• Docket Number: No. 86 Civ. 9587 (MP).,86 Civ. 9587 (MP).
• Parties: CENTAUR COMMUNICATIONS, LIMITED, Plaintiff, v. A/S/M COMMUNICATIONS, INC., Defendant.
• Court: U.S. District Court — Southern District of New York

652 F. Supp. 1105

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

No. 86 Civ. 9587 (MP).

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

January 20, 1987.

COPYRIGHT MATERIAL OMITTED

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 action sought an injunction for infringement of a trademark on plaintiff's magazine entitled "Marketing Week." The case was tried to the Court at a Bench trial. The claims arise under section 43(a) of the Lanham Trademark Act, 15 U.S.C. § 1125(a), the New York G.B.L. § 349 and the common law. Jurisdiction of the Court rests on 15 U.S.C. § 1121, 28 U.S.C. § 1338(b), and principles of pendent jurisdiction. Venue was appropriately placed pursuant to 28 U.S.C. § 1391(b) and (c). Plaintiff claims that the mark used on defendant's magazine since September 8, 1986 infringes upon the mark used continuously since 1978 on plaintiff's magazine. An injunction was demanded; damages were waived. Findings of fact have been made and the court has concluded that a permanent injunction should be granted herein. This Opinion accompanies that Decision.

I. Lanham Act Claim

Section 43(a) of the Lanham Act proscribes the use of a mark which creates confusion as to the origin or source of goods in commerce:

Any person who shall affix, apply, or annex, or use in connection with any goods and services ... a false designation of origin, or any false designation or representation ... and shall cause such goods or services to enter commerce ... shall be liable in a civil action ... by any person who believes that he is likely to be damaged by the use of any such false designation or representation.

15 U.S.C. § 1125(a)

It is undisputed that the mark at issue, "Marketing Week," is descriptive. Under section 43(a) of the Lanham Act, a senior user of an unregistered descriptive mark is entitled to relief if the senior user demonstrates (1) that its mark has obtained secondary meaning; and (2) the likelihood that an appreciable number of ordinarily prudent consumers will be misled or confused as to the source of the goods in question. Thompson Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208, 213, 216 (2d Cir.1985); Beneficial Corp. v. Beneficial Capital Corp., 529 F.Supp. 445, 451 (S.D. N.Y.1982); Parrot Jungle, Inc. v. Parrot Jungle, Inc., 512 F.Supp. 266, 268 (S.D.N. Y.1981).

A. Secondary Meaning

Secondary meaning is established when "the purchasing public has come to associate the name with goods from a particular source." Beneficial Corp. v. Beneficial Capital Corp., 529 F.Supp. 445, 447 (S.D.N.Y.1982), quoting RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1059 (2d Cir.1979).

"Whether or not a symbol has acquired secondary meaning is a question of fact." 1 J. McCarthy, Trademarks and Unfair Competition, § 15.10 at 683 (2d ed. 1984) (emphasis in original); 3 R. Callmann, The Law of Unfair Competition, Trademarks and Monopolies, § 19.27 at 89, 91-92 (4th ed. 1986). Plaintiff bears the vigorous evidentiary burden of proving by a preponderance of the evidence that his mark had acquired secondary meaning at the time defendant began his allegedly infringing activities. See Thompson Medical Co., 753 F.2d at 217; 20th Century Wear v. Sanmark-Stardust, Inc., 747 F.2d 81, 90 (2d Cir.1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1755, 84 L.Ed.2d 818 (1985).

"Since the existence of secondary meaning is a factual question, there can be no abstract test, quantitative or qualitative to determine what level of consumer association is sufficient." American Assn. For Adv. of Science v. Hearst Corp., 498 F.Supp. 244, 257 (D.D.C.1980). Instead of a monolithic litmus test, courts have considered several factors relevant to the determination of secondary meaning. Id. In the Second Circuit these factors include (1) advertising expenditures, (2) consumer studies linking the name to a source, (3) sales success, (4) unsolicited media coverage of the product, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark's use. Thompson Medical Co., 753 F.2d at 217.

"In assessing the existence of secondary meaning no `single factor is determinative,' and every element need not be proved. Each case, therefore, must be resolved by reference to the relevant factual calculus." Id., quoting in part American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 663 (2d Cir.1979), cert. denied, 445 U.S. 951, 100 S.Ct. 1601, 63 L.Ed.2d 787 (1980).

The calculus of facts in this case supports plaintiff's claim that its mark has attained secondary meaning.

Plaintiff has used the Marketing Week mark for its publication continuously since 1978, and exclusively until defendant first disseminated its re-titled magazine on September 8, 1986.

Since 1978 plaintiff has spent significant funds and energy advertising and promoting Marketing Week in the U.S. by regular sales trips to major U.S. advertising agencies and media owners. A senior director of plaintiff has made sales presentations in the U.S. at least twice annually for the last eight and one-half years. Plaintiff has also undertaken substantial direct mail marketing of the magazine in the U.S. In recent years Marketing Week has generated a minimum of $100,000 up to $250,000 annually in advertising revenues from U.S. advertisers.

Plaintiff also demonstrated significant unsolicited coverage of Marketing Week in the American press, including citations in The Wall Street Journal, Businessweek, and defendant's own Adweek magazine.

Significantly, plaintiff established that defendant deliberately selected the Marketing Week name in bad faith; with full knowledge of plaintiff's exclusive use of the mark on its magazine in the United States and in the U.K. and Europe, and clear awareness of plaintiff's plans for continued expansion in the United States. Not only was defendant a subscriber to Marketing Week, but defendant was a party to serious business negotiations regarding Centaur's further penetration into the U.S. market. Despite defendant's insight and knowledge, it chose to design its publication with plaintiff's "Marketing Week" mark prominently displayed on the front cover.

A deliberate attempt to plagiarize the first user's mark is evidence that the mark has acquired secondary meaning. Thompson Medical Co., 753 F.2d at 217. The Second Circuit has stated that "the second comer is under a duty to so name and dress his product as to avoid all likelihood of consumers confusing it with the product of the first comer." Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950, 953 (2d Cir.1980), cert. denied, 459 U.S. 832, 103 S.Ct. 73, 74 L.Ed.2d 71 (1982) (citations omitted). A/S/M's knowing and deliberate appropriation of plaintiff's name convincingly supports the inference that the "Marketing Week" mark was well-known and associated by consumers with a high quality magazine from a particular source. See Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946, 950 (2d Cir.1981) ("perhaps most significant evidence of secondary meaning" was deliberate attempt by defendant to capitalize on plaintiff's mark); Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602, 608 (S.D.N.Y.1979) ("Most persuasive, however, is the inference of secondary meaning that arises by virtue of defendant's own admission and the act of copying almost every detail of plaintiff's product.)¹

Plaintiff conceded at the start of trial that its success in attracting American subscribers has been limited in number. However, Marketing Week's very good reputation in top U.S. marketing and advertising circles was clearly established at trial. Many of those on Marketing Week's 1985-86 list of U.S. subscribers are advertising firm vice-presidents, and marketing directors of significant American corporations.

In determining the existence of secondary meaning, "the question is not whether the general public, but the relevant buyer class associates a name with a product or source." American Assn. For Adv. of Science, 498 F.Supp. at 257 (emphasis in original), see also Parrot Jungle, 512 F.Supp. at 268 (inquiry is whether mark attained secondary meaning "in its market".). Here, the "relevant buyer class" is consumers likely to purchase both magazines and thereby be confused as to the source of the products at issue: That is, members of the international marketing and advertising community, especially those with an interest or involvement in European and British markets.

Secondary meaning has been established when a mark has achieved substantial recognition within a distinct and relevant business community. See Fund of Funds, Ltd. v. First American Fund of Funds, 274 F.Supp. 517, 524 (S.D.N.Y.1967) (secondary meaning established where mark recognized among "members of the investment public or professional investment community."); see also President & Trustees of Colby Colege v. Colby College-N.H., 508 F.2d 804, 808 (1st Cir.1975) (name of college established secondary meaning where recognized by "an appreciable number of individuals broadly associated with other institutions of higher education in a given geographic area.") Merriam Co. v. Saalfield, 198 F. 369, 373 (6th Cir.1912), affd. 238 F. 1, cert. denied, 243 U.S. 651, 37 S.Ct. 478, 61 L.Ed. 947 (1917) (secondary meaning contemplates that name may have been used such that "in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product ...").²

The increasingly global nature of masscommunications as well as the multinational corporate and financial structure of the advertising industry make the international marketing and advertising community in America a highly cohesive and commercially relevant market. Marketing Week has established secondary...