Covenant Radio Corp. v. Ten Eighty Corp., 211649

• Decision Date: 29 September 1977
• Docket Number: No. 211649,211649
• Citation: 35 Conn.Supp. 1,390 A.2d 949
• Court: Connecticut Superior Court
• Parties: , 203 U.S.P.Q. 451 COVENANT RADIO CORPORATION v. TEN EIGHTY CORPORATION.

Page 949

390 A.2d 949

35 Conn.Supp. 1, 203 U.S.P.Q. 451

COVENANT RADIO CORPORATION v. TEN EIGHTY CORPORATION.

No. 211649.

Superior Court of Connecticut, Hartford County.

Sept. 29, 1977.

Blume, Elbaum & Fischman, Hartford, for plaintiff.

Robinson, Robinson & Cole, Hartford, for defendant.

PARSKEY, Judge.

The plaintiff Covenant Radio Corporation, the owner, operator and licensee of radio station WKSS-FM, seeks to enjoin temporarily and permanently the defendant Ten Eighty Corporation, the owner, operator and licensee of radio station WTIC-FM, from using the number "96" in promoting the broadcast services of WTIC-FM. The plaintiff also seeks reasonable attorney's fees, punitive damages and additional equitable relief. Whether temporary injunctive relief should be afforded is the question presently before the court. ¹

In May, 1971, WKSS, licensed to broadcast by the federal communications commission at an assigned FM frequency of 95.7 megahertz, began using the number "96" in promoting its broadcast service. Testimonial evidence presented indicates that WKSS' use of the number "96" reflects an industry custom whereby FM stations round their assigned frequency designations up or down to whole numbers. No stations are actually assigned whole numbers as frequency designations. WKSS' program format primarily consists of so-called "beautiful music." WKSS has promoted this format over the years by using the number "96" in conjunction with such phrases as "kiss," "all music, all the time" and "a rose." The phrases "stereo 96," "FM stereo 96" and "stereo FM 96" have also been used by WKSS. The Covenant Radio Corporation acquired WKSS from Communico, Inc., in April, 1977.

In May, 1977, WTIC, licensed to broadcast at an assigned FM frequency of 96.5 megahertz, switched from classical and semiclassical programming to a "top forty" musical format. At that time WTIC began promoting and advertising itself as "WTIC-FM 96." The phrase "96 ticks" has also been used extensively by WTIC since that time. WTIC's use of "96" reflects the aforementioned industry custom of rounding off assigned frequency designations to whole numbers.

Neither the number "96" nor the phrases used in conjunction with the number "96" are registered with the Connecticut secretary of the state ² or with the United States patent and trademark office as service marks.

To obtain temporary injunctive relief WKSS must show clearly that protectable interests are at stake. It must also establish, to a reasonable certainty, that it will prevail subsequent to a final hearing on its application for a permanent injunction. Boesch v. Johnson Wholesale Perfume Co., 9 Conn.Sup. 110, 111. In that regard, WKSS must establish both irreparable injury and lack of an adequate remedy at law. Stocker v. Waterbury, 154 Conn. 446, 449, 226 A.2d 514; Weaver v. Ives, 152 Conn. 586, 590, 591, 210 A.2d 661. In any event, the granting of a temporary injunction in this matter lies within the sound discretion of the court. Boesch v. Johnson Wholesale Perfume Co., supra.

WKSS' claims for temporary injunctive relief are twofold: first, WKSS claims that WTIC's use of the number "96" constitutes the unlawful appropriation of a service mark in violation of General Statutes § 35-11i (c); second, WKSS claims that WTIC's use of the number "96" amounts to unfair competition and an unfair or deceptive trade practice in violation of General Statutes § 42-110b (a).

General Statutes § 35-11i (c) provides that "(l)ikelihood of injury to business reputation or of dilution of the distinctive quality of a mark registered under this chapter, or a mark valid at common law . . . shall be a ground for injunctive relief against unauthorized use of such mark . . .." Relying upon this statutory provision, WKSS claims, in effect, that the number "96" constitutes a service mark valid at common law and protectable by injunctive relief from WTIC's unauthorized use.

Contending that numbers such as "96" can be service marks, WKSS argues that its use of the number "96" has been for purposes of identifying the origin of its broadcast service and for distinguishing that service from other services. Accordingly, WKSS claims that WTIC's use of the number "96" constitutes an actionable dilution or infringement of a service mark. In the alternative, WKSS asserts that, even if it has used the number "96" for descriptive or functional purposes, a secondary meaning, upon which service mark status may be predicated, has attached.

WTIC responds to those contentions by pointing out that the number "96" adopted and used by WKSS pursuant to an industry custom, cannot be appropriated by WKSS as a service mark. In that regard, WTIC claims that WKSS' use of the number "96" is for purposes of notifying listeners of its "address" on the FM dial. WTIC contends that such a functional use of the number "96" precludes that number from attaining service mark status. Alternatively, WTIC asserts that, even if the number "96" could acquire a secondary meaning apart from its locational attributes, no evidence of secondary meaning has been presented by WKSS.

In determining whether the number "96" constitutes a common-law service mark protectable under § 35-11i (c), the court will be guided by the law of trademarks. Indeed, service marks are primarily trademarks relating to services. Younker v. Nationwide Mutual Ins. Co., 175 Ohio St. 1, 7, 191 N.E.2d 145.

A trademark is intended to designate distinctively the origin or ownership of the product to which it attaches. In other words, a trademark is designed to give the public notice of the identity of the producer. Canal Co. v. Clark, 80 U.S. 311, 322, 20 L.Ed. 581; Boardman v. Meriden Britannia Co., 35 Conn. 402, 413. Descriptive terms or symbols cannot ordinarily attain trademark status; Canal Co. v. Clark, supra, 323; and marks which are intended to denote the quality or nature of a product are generally incapable of exclusive appropriation. Thus, an individual or corporation "has no right to appropriate a sign or symbol, which from the nature of the fact it is used to signify, others may employ with equal truth, and therefore have an equal right to employ for the same purpose." Manufacturing Co. v. Trainer, 101 U.S. 51, 54, 25 L.Ed. 993.

Under the foregoing analysis, terms, symbols or features performing utilitarian functions are not normally entitled to protection as trademarks. See Schwinn Bicycle Co. v. Murray Ohio Manufacturing Co., 339 F.Supp. 973, 980 (M.D.Tenn.), affirmed, 470 F.2d 975 (6th Cir.). Likewise, geographical names cannot be appropriated as trademarks since they point to the place of production, not to the producer. Canal Co. v. Clark, supra, 324.

So long as they are adopted arbitrarily to indicate origin, numbers may be entitled to trademark protection. Shaw Stocking Co. v. Mack, 12 F. 707, 713 (Cir.Ct.N.D.N.Y.). See Beef & Brew, Inc. v. Beef & Brew, Inc., 389 F.Supp. 179, 184 (D.Or.). Numbers utilized for descriptive or utilitarian purposes, however, generally are not protected as trademarks. In Re Union Oil Co. of California, 88 F.2d 492, 494 (Court of Customs and Patent Appeals); Vacuum Oil Co. v. Climax Refining Co., 120 F. 254, 255 (6th Cir.), cert. denied, 191 U.S. 574, 24 S.Ct. 846, 48 L.Ed. 308. To constitute a service mark valid at common law, a number must have been adopted arbitrarily for nondescriptive purposes. A number which has meaning or descriptive quality with reference to a particular service is ordinarily not entitled to protection. Costas and Harris, "Patents, Trademarks and Copyrights The Legal Monopolies," 37 Conn.B.J. 420, 424-25.

Significance attaches to the fact that the number "96" was not adopted by WKSS arbitrarily, but pursuant to an industry custom. In accordance with that custom, WKSS' use of the number "96" is designed not to point to the ownership or origin of the broadcast service, but to facilitate listener access to that service by indicating the service's approximate frequency modulation.

WKSS' use of the number "96" is more connotative of the nature of WKSS' service than the origin or ownership of that service. When used in conjunction with phrases such as "FM stereo," the number "96" draws listener attention to the fact that WKSS' service is broadcast over the FM band. The number "96" is thereby given descriptive meaning in relation to WKSS' broadcast service. WKSS' use of the number "96" is both utilitarian and descriptive. Therefore, the number "96" as used by WKSS, has not attained service mark status.

As noted, WKSS alternatively contends that, even if the number " 96" has been used for descriptive or functional purposes, that number possesses a secondary meaning by which service mark status has been acquired. Under the doctrine of secondary meaning, a descriptive term, symbol or figure is protectable as a trademark or service mark when it "has been so used that the primary significance of the term (symbol or figure) in the minds of the consuming public is not the generic product (or service) but the particular product (or service) and its producer or supplier . . .." Beef & Brew, inc. v. Beef & Brew, Inc., 389 F.Supp. 179, 184 (D.Or.). The burden is upon the party claiming secondary meaning to establish that the primary significance of a descriptive term, symbol or figure in the minds of the consuming public is not the product or service but the producer or supplier. Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 83 L.Ed. 73.

To establish secondary meaning, it is incumbent upon WKSS to make an evidentiary showing that a significant number of Hartford-area listeners identify the number "96" with WKSS and its broadcast service. The record indicates that such a showing has not been made. WKSS' claim of secondary meaning therefore rests unsubstantiated.

WKSS has failed to show clearly that the number "96" has attained the status of a WKSS service mark valid at common law. Since...