Gruner+ Jahr USA Pub. v. Meredith Corp.

• Decision Date: 28 April 1993
• Docket Number: Docket 92-7882.,No. 667,667
• Parties: GRUNER + JAHR USA PUBLISHING, A DIVISION OF GRUNER + JAHR PRINTING AND PUBLISHING CO., Plaintiff-Appellant, v. MEREDITH CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

991 F.2d 1072

GRUNER + JAHR USA PUBLISHING, A DIVISION OF GRUNER + JAHR PRINTING AND PUBLISHING CO., Plaintiff-Appellant, v. MEREDITH CORPORATION, Defendant-Appellee.

No. 667, Docket 92-7882.

United States Court of Appeals, Second Circuit.

Argued December 17, 1992.

Decided April 28, 1993.

COPYRIGHT MATERIAL OMITTED

David B. Wolf, New York City (Eric Stenshoel, Walter, Conston, Alexander & Green, P.C., of counsel), for plaintiff-appellant.

Robert M. Callagy, New York City (Jan Uhrbach, Satterlee Stephens Burke & Burke, of counsel), for defendant-appellee.

Before CARDAMONE, PIERCE and ALTIMARI, Circuit Judges.

CARDAMONE, Circuit Judge:

Before us on this appeal is a trademark infringement case. Review in this area of the law is similar to when those old-time radio comedians, Fibber McGee and Molly, opened their closet and out would pour a welter of miscellany from hub caps and baby carriages to broken umbrellas. The equivalent outpour in trademark law reveals complex statutory provisions, numerous factors that trial judges must consider and an appellate court review, definitions of the various kinds of marks, which overlap and shade into one another, and a jumble of adjectives describing the trademark review process.

Stripped to its essence — free from this assembled verbiage — the law makes clear that to succeed in a Lanham Act suit for trademark infringement, a plaintiff has two obstacles to overcome: the plaintiff must prove that its mark is entitled to protection and, even more important, that the defendant's use of its own mark will likely cause confusion with plaintiff's mark. The bottom line is if no such likelihood of confusion is found, a defendant will generally not be held to have infringed plaintiff's mark. Such is the fact here.

Plaintiff Gruner + Jahr USA Publishing appeals from a judgment entered on August 6, 1992 following a bench trial in the United States District Court for the Southern District of New York (Knapp, J.). 793 F.Supp. 1222. The judgment denied plaintiff injunctive relief and dismissed its complaint against the defendant Meredith Corporation for trademark infringement, trade dress infringement, and unfair competition.

FACTS

Gruner + Jahr has published since 1926 the well-established PARENTS magazine that appears monthly at newsstands where it sells for $1.95. It is also available by subscription. In 1937 plaintiff registered its first mark, which is no longer in use, while the current PARENTS logo presently appearing on the magazine was granted trademark registration in 1979 and has since been used on other Gruner products, including toys and books.

The defendant Meredith publishes the nationally known magazine Ladies' Home Journal. In 1991 it began publishing a separate magazine devoted solely to parenting issues entitled Ladies' Home Journal PARENT'S DIGEST. PARENT'S DIGEST, produced four times a year, contains articles that have appeared previously in print elsewhere. It retails for $2.95 at newsstands. The first publication of PARENT'S DIGEST was in September 1991, and two subsequent issues have been released for sale so far.

Gruner and Jahr brought suit against Meredith in the Southern District on account of the latter's publication of PARENT'S DIGEST. Plaintiff alleged trademark infringement under 15 U.S.C. § 1114 (1988), and unfair competition and trade dress infringement from the use of a similar magazine title under 15 U.S.C. § 1125(a) (1988). The trademark infringement cause of action alleged that Meredith's use of the title PARENT'S DIGEST would likely cause confusion with its magazine, PARENTS. The unfair competition claim centered on Meredith's use of the heading "How They Grow" in the table of contents and above certain articles in PARENT'S DIGEST. Plaintiff believes the "How They Grow" captions created unfair competition with an "As They Grow" heading used for many years in PARENTS magazine. PARENT'S DIGEST included "How They Grow" in its first issue. It was dropped when defendant learned the "As They Grow" heading was a fixture in PARENTS magazine. It has not appeared since. The trade dress infringement cause of action alleged that PARENT'S DIGEST's use of a baby's face on its cover and its use of the "How They Grow" heading would likely cause confusion with PARENTS' similar trade dress.

A bench trial was held before Judge Knapp on April 20 and 21, 1992. The only issue tried was trademark infringement. The trial resulted in a finding for defendant Meredith that there was no likelihood of confusion between plaintiff's and defendant's marks, following Judge Knapp's application of the factors for determining whether trademark infringement has occurred set forth by Judge Friendly in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). This appeal followed. We affirm.

DISCUSSION

A. Protectability of Mark

Under § 1114 of the Lanham Act, plaintiff in a trademark infringement action must show that defendant (1) without consent, (2) used in commerce, (3) a reproduction, copy or colorable imitation of plaintiff's registered mark, as part of the sale or distribution of goods or services, and (4) that such a use is likely to cause confusion. See 15 U.S.C. § 1114(1)(a). The first two factors are not seriously disputed in the instant case. Defendant's publication of PARENT'S DIGEST, the alleged infringing product, was concededly published without plaintiff's consent and has been sold commercially. What plaintiff needs to demonstrate is that it has a valid mark entitled to protection and that defendant's use of it is likely to cause confusion.

We begin analysis with the first step—whether plaintiff's mark merits protection, before proceeding to the second step, the likelihood of confusion. The strength of a trademark in the marketplace and the degree of protection it is entitled to are categorized by the degree of the mark's distinctiveness in the following ascending order: generic, descriptive, suggestive, and arbitrary or fanciful. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). A generic term is a common name, like automobile or aspirin, that describes a kind of product. See Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486, 489 (2d Cir.1988). A common name, available to anyone, is never entitled to trademark protection. At the opposite end of the distinctiveness array is an arbitrary or a fanciful term. Such may always claim trademark protection, is never a common name for a product, and bears little or no relationship to the kind of product represented. An arbitrary term is one that has a dictionary meaning — though not describing the product — like IVORY for soap. A fanciful mark is a name that is made-up to identify the trademark owner's product like EXXON for oil products and KODAK for photography products. See J. Thomas McCarthy, Trademarks and Unfair Competition, §§ 11:2, 11:3, 11:4A (2d ed. 1984) (McCarthy, Trademarks).

The remaining categories defining a trademark's strength are suggestive and descriptive terms. The distinction between a descriptive and suggestive mark is that the former may be protected only if it has acquired secondary meaning, while a suggestive mark is protected without a showing of secondary meaning. A suggestive mark, as might be expected, suggests the product, though it may take imagination to grasp the nature of the product. An example is ORANGE CRUSH, an orange-flavored beverage. See McCarthy, Trademarks, § 11:20 n. 13. We are not dealing in this case with a generic, fanciful or suggestive mark.

This appeal concerns a descriptive mark. Such a mark is one that tells something about a product, its qualities, ingredients or characteristics. It may point to a product's intended purpose, its function or intended use, its size, or its merit. See Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1220 (2d Cir.1987); McCarthy, Trademarks, § 11:5. A descriptive mark is entitled to protection upon proof that it has obtained a secondary meaning, that is to say, an identity that consumers associate with a single source, even though the source itself may be unknown. The reason for granting protection to a descriptive mark only upon its acquiring secondary meaning is because a descriptive mark by definition simply describes a product, it does not identify it like EXXON or ORANGE CRUSH identify the products they represent. But upon proof of secondary meaning, a product with a descriptive mark then has become identified—as well as being described — as originating from a single source.

Several cases finding a mark merely descriptive will help put the PARENTS mark in perspective. See, e.g., William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526, 44 S.Ct. 615, 68 L.Ed. 1161 (1924) (COCO-QUININE, chocolate flavored quinine); Franklin Knitting Mills, Inc. v. Fashionit Sweater Mills, Inc., 297 F. 247 (D.C.N.Y. 1923), aff'd, 4 F.2d 1018 (2d Cir.1925) (FASHIONKNIT, sweaters); Hiram Walker & Sons, Inc. v. Penn-Maryland Corp., 79 F.2d 836 (2d Cir.1935) (IMPERIAL, whiskey); W.E. Bassett Co. v. Revlon, Inc., 354 F.2d 868 (2d Cir.1966) (TRIM, fingernail clippers). Were it not a registered trademark, PARENTS might be found to be an extremely weak descriptive mark.

In urging reversal of the finding that its mark was not entitled to protection against defendant's use of the title PARENT'S DIGEST, plaintiff emphasizes two points: (1) that the finding that its mark had achieved a "high degree of secondary meaning" made it a strong, not a weak, mark; and (2) that its uncontestable trademark registration status precludes defendant's using the fact that plaintiff's mark was merely descriptive as a defense in this infringement suit. In analyzing both these propositions, we note that a descriptive mark may attain secondary meaning in two ways: it may be proved as a matter of fact that the mark connotes a...