Ringling Bros.-Barnum & Bailey v. Utah Div.

• Decision Date: 27 February 1997
• Docket Number: Civil Action No. 96-788-A.
• Citation: 955 F.Supp. 605
• Court: U.S. District Court — Eastern District of Virginia
• Parties: RINGLING BROS.-BARNUM & BAILEY COMBINED SHOWS, INC., Plaintiff, v. UTAH DIVISION OF TRAVEL DEVELOPMENT, Defendant.

955 F.Supp. 605

RINGLING BROS.-BARNUM & BAILEY COMBINED SHOWS, INC., Plaintiff, v. UTAH DIVISION OF TRAVEL DEVELOPMENT, Defendant.

Civil Action No. 96-788-A.

United States District Court, E.D. Virginia, Alexandria Division.

February 27, 1997.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Stephen M. Colangelo, John F. Anderson, McGuire Woods Battle & Boothe, LLP, McLean, VA (Steven B. Pokotilow, Laura E. Goldbard, Stroock & Stroock & Lavan, New York City, of counsel), for Plaintiff.

Jan Graham, Atty. Gen., Jerrold S. Jensen, Ralph L. Finlayson, Asst. Attys. Gen., Salt Lake City, UT, for Defendant.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

ELLIS, District Judge.

This is a trademark dilution suit in which plaintiff, Ringling Bros.-Barnum & Bailey Combined Shows, Inc. ("Ringling") contends that the use of the mark THE GREATEST SNOW ON EARTH by defendant, Utah Division of Travel Development ("Utah"), has diluted Ringling's famous mark, THE GREATEST SHOW ON EARTH, in violation of 15 U.S.C. § 1125(c).

After completion of discovery and pretrial proceedings, the matter came before the Court for a bench trial on February 10, 1997.¹ There, the parties stipulated various undisputed facts and presented additional testimonial and documentary evidence. Each party presented three witnesses. Testifying for Ringling were a marketing and survey expert, Michael Rappeport, and two Ringling executives, Jeff Meyer, a Ringling employee with co-promotion responsibilities, and Arthur Ricker, Ringling's vice-president in charge of marketing. In response, Utah also presented two executives, Dean Reeder, director of Utah's Division of Travel Development, and Mark Menlove, president of Ski Utah, and its own survey expert, William Weilbacher, who, because of illness, appeared by deposition. After hearing the evidence and counsel's oral arguments, the matter was taken under advisement. Set forth here, pursuant to Rule 52, Fed.R.Civ.P., are the Court's findings of fact and conclusions of law.

I. FINDINGS OF FACT

1. Ringling is a Delaware corporation, with its principal place of business in Vienna, Virginia.

2. Since the 1870's Ringling and its predecessors in interest have used and been associated with the mark THE GREATEST SHOW ON EARTH.

3. Ringling is the owner of the service mark THE GREATEST SHOW ON EARTH which bears United States Registration No. 724,946. This trademark issued on December 5, 1961, for entertainment services in the nature of a circus. It remains valid and in full force and effect. Ringling also owns other related registrations for the mark THE GREATEST SHOW ON EARTH and THE GREATEST SHOW ON EARTH & Globe Design for entertainment services as well as products.

4. P.T. Barnum's Circus began using the trademark THE GREATEST SHOW ON EARTH in connection with its circus in 1872. In 1919, Ringling Circus and Barnum & Bailey Circus merged to form Ringling Bros.-Barnum & Bailey Circus. Beginning in 1872 and continuing through the present, Ringling and its predecessors in interest have continuously offered the Circus to the public under the mark THE GREATEST SHOW ON EARTH.

5. Since its inception, Ringling has relied on promotional campaigns using the mark to advertise upcoming Circus performances at a particular location.

6. The tour itinerary of the Circus today, which is similar to the itinerary used in the early years of the Circus, is extensive, taking the Circus, advertised as THE GREATEST SHOW ON EARTH, by rail to cities throughout the United States.

7. Today, the Circus appears annually in major cities for weeks at a time and in smaller cities for two or more days at a time. Approximately 1,000 shows per year are presented to approximately 12 million people in 95 cities. As a result, more than 70 million people each year are exposed to the mark THE GREATEST SHOW ON EARTH in connection with the Circus.

8. Revenues derived from goods and services bearing or using the mark THE GREATEST SHOW ON EARTH, including Circus ticket sales and sales of concession items sold at the Circus are substantial; they exceeded $103 million for the single fiscal year ending January, 1997.

9. The Circus has two units — the Red Unit and the Blue Unit. Each Unit includes feature acts and runs for a two-year season. For example, the Red Unit currently features David Larible and celebrates the 127th edition of RINGLING BROS.-BARNUM & BAILEY's THE GREATEST SHOW ON EARTH, and the Blue Unit features Airiana, the Human Arrow.

10. The Circus has been an American entertainment event for more than 125 years.

11. Ringling expends substantial effort to ensure that the mark THE GREATEST SHOW ON EARTH is not used in any altered form. It is Ringling's policy that any promotional activities conducted with third parties are subject to Ringling's guidelines, including the requirement that the mark THE GREATEST SHOW ON EARTH may only be used to describe services and products provided by Ringling and may not be used to connote any other entity or event. Thus, Ringling's mark is used only in reference to the Circus.

12. Ringling also monitors the use of its mark or similar marks through an enforcement program, which notifies alleged diluters or infringers of Ringling's trademark rights.

13. Ringling uses a number of techniques for prominently advertising and promoting the Circus by using the mark THE GREATEST SHOW ON EARTH. This advertising and promotion includes print advertising, radio, television, videos, outdoor billboards, direct-mail pieces, press announcements, posters, program books, souvenirs and joint promotions with other companies. In the fiscal year ending January, 1997, expenditures on advertising using the mark THE GREATEST SHOW ON EARTH totaled approximately $19,000,000.

14. Prior to a Circus performance in a city, Ringling advertises in local media using the mark THE GREATEST SHOW ON EARTH. Typically, Ringling begins to advertise the Circus using the mark THE GREATEST SHOW ON EARTH in the print media and on television and radio for two months prior to the first Circus engagement in a particular city. In 1996 alone, there were 6.5 billion reproductions or impressions of the mark THE GREATEST SHOW ON EARTH in markets where the Circus performed.

15. Through its joint promotion program, Ringling provides Circus tickets to certain retailers for distribution to customers. In return, these retailers pay for print advertising and television and radio advertising of their services in association with Ringling's trademarks including, among others, THE GREATEST SHOW ON EARTH. Virtually all joint promotions include the prominent display of the mark THE GREATEST SHOW ON EARTH, resulting in significant additional exposure of the mark to the public. Ringling has engaged in joint campaigns with companies that provide a wide variety of services. By way of example, there have been joint promotions with restaurants, supermarkets, drug chains, department stores, electronics stores, and clothing stores.

16. The mark THE GREATEST SHOW ON EARTH is currently under a joint sponsorship arrangement with Sears, and under license agreements with the MBNA credit card, Cheeseborough-Ponds, and other parties who produce such diverse goods as calendars, food products, candy, bronze miniatures and Franklin Mint clocks.

17. Because of the Circus' renown, Ringling's mark, THE GREATEST SHOW ON EARTH, receives substantial free publicity, much of which is unsolicited. Such publicity includes newspaper and magazine articles. Moreover, the Circus has been the subject of books, radio and television features, and motion picture productions.

18. Through the advertising and promotion efforts of Ringling, the mark THE GREATEST SHOW ON EARTH is identified in the public mind with the Ringling Circus, and creates good will and publicity value for the mark THE GREATEST SHOW ON EARTH.

19. As a direct result of the promotion and protection of its mark, Ringling, over a period of several decades, has caused the mark THE GREATEST SHOW ON EARTH to be identified in the public mind solely with Ringling and its Circus, thereby creating publicity value for the mark.

20. Utah Division of Travel Development is an agency of the State of Utah, located and doing business in Salt Lake City.

21. At some time prior to the effective date of the Dilution Act, at a time when THE GREATEST SHOW ON EARTH was a famous trademark, Utah began using THE GREATEST SNOW ON EARTH in connection with Utah tourism services.

22. Utah used THE GREATEST SNOW ON EARTH as early as 1962 to advertise its winter skiing facilities.

23. Prior to the time that Utah adopted the mark THE GREATEST SNOW ON EARTH, Ringling advertised and promoted its mark in Utah in connection with the Circus.

24. The Utah Attorney General issued a legal opinion in 1965 concluding that the mark "Utah for the Greatest Snow on Earth" does not impair or violate Ringling's mark THE GREATEST SHOW ON EARTH.

25. Utah registered its mark with the State of Utah in 1975, renewed its registration in 1985 and 1995, and its registration is current.

26. Utah submitted an application to the U.S. Patent and Trademark Office to register its mark THE GREATEST SNOW ON EARTH in 1988. Ringling filed a formal opposition to Utah's right to register its mark. A three-member panel of the U.S. Trademark Trial and Appeal Board rendered a unanimous 16-page decision on December 13, 1995, granting Utah the right to register its mark and dismissing Ringling's opposition. This decision specifically states that dilution is not a valid basis for opposing a trademark application. Ringling filed a notice of appeal of the decision of the Trademark Trial and Appeal Board, but later voluntarily dismissed its appeal. Utah was granted federal registration for its mark THE GREATEST SNOW ON EARTH on January 21, 1997.

27. THE GREATEST SHOW ON EARTH was promoted by Ringling in Utah in connection with its performances and related merchandise on 37 different dates over...