Miss Universe, Inc. v. Patricelli
| Decision Date | 16 January 1985 |
| Docket Number | D,63,Nos. 62,s. 62 |
| Citation | 753 F.2d 235 |
| Parties | MISS UNIVERSE, INC., Plaintiff-Appellee-Cross-Appellant, v. Alfred PATRICELLI d/b/a Miss Venus U.S.A. Pageant, Defendant-Appellant-Cross-Appellee. ockets 84-7294, 84-7316. |
| Court | U.S. Court of Appeals — Second Circuit |
Edward A. Meilman, New York City, for defendant-appellant-cross-appellee.
Jay Topkis, New York City (Allan Blumstein, Steve Gey, Steven B. Pokotilow, Blum, Kaplan, Friedman, Silberman & Beran, Paul, Weiss, Rifkind, Wharton & Garrison, New York City, of counsel), for plaintiff-appellee-cross-appellant.
Before LUMBARD, MANSFIELD, and CARDAMONE, Circuit Judges.
Miss Universe, Inc. (Universe) appeals from a decision of the United States District Court for the Southern District of New York (Griesa, J.) dismissing its federal and state claims alleging an infringement of its federally registered trademark and dilution of the value of that mark. Alfred Patricelli, pro se, appeals from the dismissal of his counterclaims against Universe asserting malicious prosecution. In the continuing litigation between these beauty pageant promotors, it is clear that the competition is not confined to the contestants vying for fame and fortune. Universe and Patricelli have been before us on three previous occasions. Since the previous decisions are relevant to the present appeal, they are briefly described.
Universe has been conducting and promoting the "Miss Universe" and "Miss U.S.A." pageants since 1952. In 1966 Universe registered with the United States Patent Office the trademark "Miss U.S.A." and the service marks "Miss U.S.A." and "Miss United States of America." The trademark "Miss U.S.A. Beauty Pageant" was registered in 1968. Universe's gross revenues from conducting beauty pageants are approximately $5 million and its annual net income is approximately a million and a half dollars.
Patricelli was Universe's franchisee for the New England States from 1952 to 1961. In this role he conducted state beauty pageants to select contestants for the "Miss U.S.A." contest. In 1959, while still a franchisee for Universe, Patricelli organized a national beauty contest to select an American contestant to the World Beauty Pageant in London, England. Patricelli used the title "Miss U.S.A.-World Beauty Pageant" to identify his contest. Universe sued to prevent trademark infringement, Miss Universe, Inc. v. Patricelli, 271 F.Supp. 104 (D.Conn.1967), and obtained a temporary restraining order prohibiting Patricelli from using the term "Miss U.S.A.-World Beauty Pageant." On appeal, we affirmed but noted that Patricelli was not precluded from using a "title descriptive of his contest to select a representative from the United States of America for the World Beauty Pageant in London, England, such as Miss World-U.S.A." Miss Universe, Inc. v. Patricelli, 386 F.2d 997, 997 (2d Cir.1967).
Patricelli then commenced to use the mark "Miss World-U.S.A." At a later trial on the merits, the district court, after determining that Universe's service and trademarks were valid and had acquired secondary meaning, concluded that confusion had occurred as a result of Patricelli's use of the title "Miss World-U.S.A." Accordingly, it enjoined Patricelli's use of any terms confusingly similar to Universe's marks, including, "Miss U.S.A.-World" and "Miss World-U.S.A." Again, we affirmed the district court insofar as it upheld Universe's mark and agreed with the district court's finding that the mark had acquired secondary meaning. Miss Universe, Inc. v. Patricelli, 408 F.2d 506 (2d Cir.1969). Nonetheless, with respect to the likelihood of confusion, we concluded that the marks "Miss U.S.A." and "Miss World-U.S.A." do not share the same tendency for confusion. Id. at 511. Hence, we held that the injunction issued was too broad and reversed that part of the district court's order.
Thus armed with two decisions in his favor, Patricelli continued to use the mark "Miss World-U.S.A." until 1977 when Miss World decided not to continue him as its American franchisee. Patricelli then began his own beauty pageant using the title "Miss Venus World U.S.A." Started in 1978, the Miss Venus pageant is held in Bridgeport, Connecticut once a year, and is unaffiliated with any international contest. Its annual revenue is approximately $24,000. Patricelli was immediately sued by his former franchisor for using its registered trademark "Miss World" and enjoined from using the word "World" immediately preceding or following the word "Miss." This decision was affirmed on appeal, presumably because Patricelli was no longer the Miss World franchisee. Mecca Limited v. Patricelli, 595 F.2d 1209 (2d Cir.1979).
No longer using the word "World", Patricelli instead began using the title "Miss Venus-U.S.A." to describe his Connecticut contest. In December 1979 Universe filed the present, fourth action against Patricelli, alleging infringement of plaintiff's rights as defined by 15 U.S.C. Sec. 1114(1), infringement of trademark under the common law of New York, violation of Sec. 43 of the Lanham Act, 15 U.S.C. Sec. 1125(a), violation of the New York antidilution statute, section 368-b of the New York General Business Law, and violation of New York common law regarding unfair competition. Universe asserted that "Miss Venus-U.S.A." is an infringement of the "Miss U.S.A." trademark and sought injunctive relief against its use in connection with promotion of Patricelli's Bridgeport beauty pageant. Patricelli's answer to Universe's complaint asserted three counterclaims charging Universe with harassment and malicious prosecution.
At a pretrial conference, Judge Griesa determined that Patricelli's counterclaims could not survive a finding that Universe's claims were not frivolous. Therefore, he deferred consideration of the counterclaims until he heard plaintiff's claims. After a one-day bench trial the district judge dismissed the complaint and defendant's counterclaims, finding that there had been an insufficient showing of likelihood of confusion between the marks. Relying on our second decision in Miss Universe v. Patricelli, 408 F.2d 506, the trial judge held that "[t]he slogan 'Miss Venus U.S.A.' has a different distinguishable major element from the slogan 'Miss U.S.A.' " The evidence on actual likelihood of confusion was not persuasive since it was "fragmentary indeed and very minor." The trial court also noted that the "Miss U.S.A." contest has achieved a much higher degree of success than the "Miss Venus-U.S.A." pageant, which indicates that "there is no real confusion and no substantial likelihood of confusion between the two slogans," nor can it (for the same reasons) be shown that there is likely to be a dilution in the value of Universe's mark as a result of Patricelli's activities. Finally, Judge Griesa ruled that the malicious prosecution action alleged in Patricelli's counterclaims must be dismissed because plaintiff's suit had been brought in good faith. The counterclaims alleging harassment and interference with Patricelli's rights arising from plaintiff's contacting his sponsors and associates also fell.
To establish liability in a trademark and tradename infringement case, the crucial issue is "whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused as to the source of the goods in question." Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir.1978) (per curiam), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59, L.Ed.2d 75 (1979). In assessing the likelihood of confusion, a consideration of the facts and circumstances of each case is necessary. McGregor-Doniger, Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir.1979). See Buitoni Foods Corp. v. Gio. Buton & C. S.p.A., 680 F.2d 290, 292-94 (2d Cir.1982); Vitarroz Corp. v. Bordon, Inc., 644 F.2d 960, 965-67 (2d Cir.1981). To the extent that an assessment of likelihood of confusion is based upon a comparison of the titles of the beauty pageants, a reviewing court is in as good a position to decide as the trial court. Miss Universe, Inc. v. Patricelli, 408 F.2d at 509; see Spring Mills, Inc. v. Ultracashmere House, Ltd., 689 F.2d 1127, 1130 (2d Cir.1982). Subject to the clearly erroneous test, the credibility and the weight given the testimony of the witnesses is of course for the trial judge. RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1061 n. 1 (2d Cir.1979).
The only instances of confusion presented at this trial were minor, all easily...
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