Duluth News-Tribune, a Div. of Northwest Publications, Inc. v. Mesabi Pub. Co.

• Decision Date: 03 June 1996
• Docket Number: NEWS-TRIBUN,A,No. 95-2912,95-2912
• Citation: 84 F.3d 1093
• Parties: , 24 Media L. Rep. 1904 DULUTHDIVISION OF NORTHWEST PUBLICATIONS, INC., a Delaware corporation, Appellant, v. MESABI PUBLISHING COMPANY, a Minnesota corporation; Hibbing Tribune Company, Inc., a Minnesota corporation, Appellees.
• Court: U.S. Court of Appeals — Eighth Circuit

Page 1093

84 F.3d 1093

38 U.S.P.Q.2d 1937, 24 Media L. Rep. 1904

DULUTH NEWS-TRIBUNE, A DIVISION OF NORTHWEST PUBLICATIONS INC., a Delaware corporation, Appellant, v. MESABI PUBLISHING COMPANY, a Minnesota corporation; Hibbing Tribune Company, Inc., a Minnesota corporation, Appellees.

No. 95-2912.

United States Court of Appeals Eighth Circuit.

Submitted March 11, 1996.

Decided June 3, 1996.

Kenneth R. Hartman, Miami, Florida, argued (Gail A. McQuilkin, on the brief), for Appellant.

Tim A. Strom, Duluth, Minnesota, argued (R. Thomas Torgerson, on the brief), for Appellees.

Before FAGG, BRIGHT, and WOLLMAN, Circuit Judges.

WOLLMAN, Circuit Judge.

Duluth News-Tribune, a division of Northwest Publications, Inc., filed this trademark infringement action against Mesabi Publishing Company (Mesabi) and Hibbing Tribune Company, Inc., (Hibbing) under section 43(a) of the Lanham Trademark Act, 15 U.S.C. § 1125(a) (1995) and under Minnesota Stat. § 325D.165 (1995). After considering cross-motions for summary judgment, the district court ¹ granted judgment in favor of defendants on all claims. We affirm.

I. Background

For more than 100 years plaintiff has circulated a daily newspaper, the Duluth News-Tribune, in the Northeast region of Minnesota, which includes the distinct geographic area known as the Iron Range. Although the paper has always provided both national and regional news coverage, in 1992 plaintiff expanded the Iron Range edition to provide more local coverage.

From 1946 to the present, defendant Mesabi has published a daily newspaper, the "Mesabi Daily News," in Virginia, Minnesota, which is located in the eastern region of the Iron Range. Since 1899 defendant Hibbing has published a paper Sunday through Friday in Hibbing, Minnesota, in the western Iron Range. That paper, previously entitled the "Hibbing Daily Tribune," is now entitled simply the "Daily Tribune."

This controversy began when Mesabi and Hibbing, both subsidiaries of the Murphy Publishing Company, began a joint publication of a Saturday newspaper entitled the "Saturday Daily News Tribune," which they distributed throughout the Iron Range. On July 9, 1994, in response to plaintiff's complaints about the similarity in names between plaintiff's paper and the new Saturday paper, defendants added an ampersand between the words "News" and "Tribune."

Duluth News-Tribune, unsatisfied with this change, filed suit claiming trademark infringement under the Lanham Act and trademark dilution under Minnesota law. The district court denied plaintiff's motion for a preliminary injunction and granted summary judgment in defendants favor on all counts.

II. The Summary Judgment Standard

Summary judgment is proper when, after reviewing the facts in the light most favorable to the nonmovant and giving that party the benefit of all reasonable inferences to be drawn from the facts, the court finds that no genuine issue of material fact exists and that the moving party is entitled to judgment as a matter of law. Barry v. Barry, 78 F.3d 375, 379 (8th Cir.1996). A factual dispute is material if it might affect the outcome of the suit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-248, 106 S.Ct. 2505, 2509-2510, 91 L.Ed.2d 202 (1986). On appeal we apply this standard de novo. Barry, 78 F.3d at 379.

III. The Lanham Act: Likelihood of Confusion

To prevail under the Lanham Act, plaintiff must prove that defendants' use of the name "Saturday Daily News & Tribune" creates a likelihood of confusion, deception, or mistake among an appreciable number of ordinary buyers as to the source of or association between the two papers. See 15 U.S.C. § 1114(1) and General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626 (8th Cir.1987).

In determining whether a likelihood of confusion exists, we consider the following factors: 1) the strength of the trademark; 2) the similarity between the parties' marks; 3) the competitive proximity of the parties' products; 4) the alleged infringer's intent to confuse; 5) evidence of actual confusion; and 6) the degree of care reasonably expected of potential customers. Anheuser-Busch, Inc. v. Balducci Publications, 28 F.3d 769, 774 (8th Cir.1994), cert. denied, --- U.S. ----, 115 S.Ct. 903, 130 L.Ed.2d 787 (1995). These factors do not operate in a mathematically precise formula; rather, we use them at the summary judgment stage as a guide to determine whether a reasonable jury could find a likelihood of confusion. Factual disputes regarding a single factor are insufficient to support the reversal of summary judgment unless they tilt the entire balance in favor of such a finding. See SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir.1980) ("Resolution of [the likelihood of confusion] issue does not hinge on a single factor"). Accordingly, we will separately examine each factor with its corresponding relevant facts.

A. The Strength of the Trademark

As a preliminary matter, we must determine whether plaintiff's mark is strong enough to merit trademark protection. To do this, we must classify the mark, "Duluth News-Tribune," into one of four categories: 1) arbitrary or fanciful, 2) suggestive, 3) descriptive, or 4) generic. Cellular Sales, Inc. v. Mackay, 942 F.2d 483, 485 (8th Cir.1991). An arbitrary or fanciful trademark is the strongest type of mark and is afforded the highest level of protection. Id. at 486. At the other end of the spectrum, a generic term is one that is used by the general public to identify a category of goods, and as such merits no trademark protection. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 79-81 (7th Cir.1977) (holding "Lite Beer" to be generic), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978). Suggestive and descriptive marks fall somewhere in between. A suggestive mark is one that requires some measure of imagination to reach a conclusion regarding the nature of the product. See American Home Products Corp. v. Johnson Chemical Co. Inc., 589 F.2d 103, 106 (2d Cir.1978) (holding the mark "Roach Motel" to be suggestive because "[w]hile roaches may live in some motels against the will of the owners, motels are surely not built for roaches to live in"). A descriptive mark, on the other hand, immediately conveys the nature or function of the product and is entitled to protection only if it has become distinctive by acquiring a secondary meaning. See 20th Century Wear, Inc. v. Sanmark-Stardust Inc., 747 F.2d 81, 87-88 (2d Cir.1984) (finding "Cozy Warm ENERGY-SAVERS" to be descriptive), cert. denied, 470 U.S. 1052, 105 S.Ct. 1755, 84 L.Ed.2d 818 (1985).

We find that the district court properly classified plaintiff's mark, "Duluth News-Tribune," as descriptive. The words convey meaning too directly to be suggestive, yet are too specific to be generic. The name "Duluth News-Tribune" notifies the reader that the product is a Duluth newspaper, but is too specific to describe all newspapers, or even all Duluth newspapers. Viewing the facts in plaintiff's favor, we will also assume that the mark "Duluth News-Tribune" has acquired secondary meaning meriting trademark protection. ²

Plaintiff attempts, however, to extend this protection beyond "Duluth News-Tribune," to the term "News-Tribune," on the theory that customers in the Iron Range refer to plaintiff's paper in shorthand form as the "News-Tribune." Plaintiff has offered no evidence sufficient to substantiate this claim. The only direct evidence of a customer's shorthand reference to the Duluth News-Tribune is from a customer who refers to the paper as "Duluth News." Moreover, the widespread use of the words "news" and "tribune" throughout the newspaper industry precludes plaintiff from claiming exclusive privilege to use these words. Thus, although the mark "Duluth News-Tribune" merits some level of protection, the shorthand "News-Tribune" merits none.

B. The Similarity Between the Parties' Marks

Having determined that the relevant protected mark is "Duluth News-Tribune," we must consider the similarity between that mark and defendants' mark, "Saturday Daily News & Tribune." The use of dominant identical words in common does not mean that two marks are similar. General Mills, 824 F.2d at 627. Rather than consider the similarities between the component parts of the marks, we must evaluate the impression that each mark in its entirety is likely to have on a purchaser exercising the attention usually given by purchasers of such products. Id.

Although the marks are aurally similar, when pronounced in their entirety the word "Saturday" and the ampersand in defendants' paper make the two distinguishable. Moreover, several significant visual distinctions distinguish the two marks. First, in defendants' paper the words "news" and "tribune" appear on different lines; in plaintiff's paper the words "news" and "tribune" appear on the same line. Second, defendants' title appears in two colors, i.e., red and black; plaintiff's title appears all in black. In addition, the size and style of type used by the two papers differs. Cf. Esquire, Inc. v. Esquire Slipper Manuf. Co., Inc., 243 F.2d 540, 542 (1st Cir.1957) (giving weight to distinctive script in avoiding likelihood of confusion).

The most significant distinction, however, is the defendants' placement of a blue banner reading, "Publication of the Mesabi Daily News, Virginia and Daily Tribune, Hibbing" beneath the title. Cf. Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir.1981) (otherwise similar marks are not likely to be confused when used in conjunction with clearly displayed name of manufacturer). These distinctions appear to be sufficient to notify an ordinary customer that the papers originate from two different publishers.

C. The Competitive Proximity of the Parties' Products

Neither party contests that both papers provide regional and local news coverage and that they directly compete in the Iron Range; thus we need not further examine...