Technical Pub. Co., Div. of Dun-Donnelley Pub. Corp. v. Lebhar-Friedman, Inc.

• Decision Date: 20 March 1984
• Docket Number: DUN-DONNELLEY,INC,No. 83-2012,LEBHAR-FRIEDMA,83-2012
• Citation: 222 USPQ 839,729 F.2d 1136
• Parties: TECHNICAL PUBLISHING COMPANY, DIVISION OFPUBLISHING CORPORATION, Plaintiff-Appellant, v., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 1136

729 F.2d 1136

222 U.S.P.Q. 839

TECHNICAL PUBLISHING COMPANY, DIVISION OF DUN-DONNELLEY PUBLISHING CORPORATION, Plaintiff-Appellant, v. LEBHAR-FRIEDMAN, INC., Defendant-Appellee.

No. 83-2012.

United States Court of Appeals, Seventh Circuit.

Argued Nov. 2, 1983.

Decided March 20, 1984.

James D. Zalewa, Alexander & Zalewa, Ltd., Chicago, Ill., for plaintiff-appellant.

Charles A. Laff, Laff, Whitesel, Conte & Saret, Chicago, Ill., for defendant-appellee.

Before PELL and COFFEY, Circuit Judges, and CAMPBELL, Senior District Judge. ^*

PELL, Circuit Judge.

Plaintiff, Technical Publishing Company (Technical), in an attempt to prevent defendant, Lebhar-Friedman, Inc. (Lebhar), from using the appellation "Computer + Software News" to identify its trade journal, brought suit under the Lanham Act, 15 U.S.C. Sec. 1125, also alleging pendent state law claims. In addition to permanent relief, plaintiff requested a preliminary injunction preventing defendant from using the phrase "Software News" in its title. The district court considered affidavits and deposition testimony and then found that "the word 'software' is apparently a generic one which cannot be trademarked or otherwise protected under the Lanham Act." The court accordingly found that plaintiff was unlikely to prevail on its claim and denied the preliminary injunction. In a decision not directly involved in this appeal, the court subsequently denied defendant's motion for summary judgment on the basis that plaintiff should be allowed to prove that "Software News" had acquired secondary meaning.

I. Facts

Plaintiff began publishing "Software News" in May of 1981. "Software News" is a monthly magazine that carries editorials, news articles, and advertisements related to the computer software industry. Plaintiff's publication was originally subtitled "The Computer Software Products Newspaper." In 1982 plaintiff changed this to: "The Newspaper for Software Decision Makers," and then to "Serving Software Decision Makers" in 1983. These changes were intended to reflect the audience to which "Software News" was directed.

"Software News" currently has a national circulation that exceeds 55,000. Most of these copies are given to qualified readers at no charge. The magazine derives most of its revenue from advertisements and the sale of mailing lists and survey results. Plaintiff has never attempted to obtain federal registration for the name "Software News."

Defendant began circulation of "Computer + Software News" in January 1983. "Computer + Software News" is a controlled circulation publication given to retailers of computers and software. As indicated by the subtitle "The Newsweekly For Computer and Software Marketing," defendant's publication appears weekly. Unlike "Software News," which does not carry plaintiff's name on the cover, "Computer + Software News" indicates on its cover that it is published by defendant. Other than the use of the words "Software News" there is no similarity between the appearance of the two publications.

There are numerous publications in the computer field, many of them using "software" in their titles and some are in competition with plaintiff and defendant. Applied Data Research published a newsletter titled "Software News" prior to plaintiff's entrance into the field. Although ADR's "Software News" was not in competition with plaintiff, "Datapro Software News," published by McGraw-Hill since 1974, is read by the same type of audience as plaintiff's magazine. Other titles in this crowded field include "Software Times," "Software Digest," "Software Magazine," "Software," "Software Plus," "Software Business Review," "Software Age," "Software Review," "Software Retailing," "Software Journal," and "Systems & Software." We can scarcely characterize "Software News" as an oriflamme.

II. Standard of Review

The decision to grant or deny a preliminary injunction is vested in the sound discretion of the district court, and our review of that decision is necessarily limited. Dos Santos v. Columbus-Cuneo-Cabrini Medical Center, 684 F.2d 1346, 1349 (7th Cir.1982); American Hospital Association v. Harris, 625 F.2d 1328 (7th Cir.1980). In determining whether a preliminary injunction is appropriate the district court must consider four factors: (1) whether the plaintiff has an adequate remedy at law or will be irreparably harmed if the injunction is not granted; (2) whether the injury threatened to plaintiff outweighs the harm defendant will suffer if the injunction is granted; (3) whether plaintiff has a reasonable likelihood of success on the merits; and (4) whether granting the injunction will disserve the public interest. Dos Santos, 684 F.2d at 1349; American Hospital Association, 625 F.2d at 1330-31; Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir.1979). Plaintiff bears the burden of establishing that each of these factors supports granting the injunction. Dos Santos, 684 F.2d at 1349.

The district court here found that plaintiff was not entitled to trademark protection because "software" is "apparently" generic. The court concluded that plaintiff failed to demonstrate a likelihood of success on the merits, and in fact that plaintiff had failed even to address the issue of whether the mark was generic. The court's finding, based upon procedures that are less formal and evidence that is less complete than in a full trial, is not equivalent to a judgment on the merits. A factual finding made in connection with a preliminary injunction is not binding on the court in the trial on the merits, University of Texas v. Camenisch, 451 U.S. 390, 101 S.Ct. 1830, 68 L.Ed.2d 175 (1981), and the seeming inconsistency in this case between the denial of the injunction and the denial of defendant's motion for summary judgment does not by itself indicate any error in the denial of the preliminary injunction request. Accordingly, we will concern ourselves here with the question whether the court's finding that plaintiff failed to prove a likelihood of success was an abuse of discretion.

III. Genericness

The purpose of a trademark is to designate the source of a product. Traditionally, trademark law has categorized marks by their effectiveness in accomplishing this goal. Miller Brewing Company v. G. Heileman Brewing Co., 561 F.2d 75, 79 (7th Cir.1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). At one end of the spectrum are marks that are fanciful or arbitrary, and which are accorded full trademark protection. Marks that merely suggest a quality of the product, but which require some imagination to determine the nature of the product, are also fully protected, but are subject to the claim that they are merely descriptive of the goods. A mark that is merely descriptive of the goods will only serve as a protectable trademark if the proponent of the mark can establish that the mark has developed a secondary meaning linking the product with its source in the mind of the consuming public. Last, and least, is the generic mark, which is no more than the common descriptive term for the goods. A generic term, by definition, is incapable of designating the source of a product and may never be protected as a trademark. Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901 (7th Cir.1983); CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 15 (2d Cir.1975). To allow a producer of goods to usurp a generic term as a protectable trademark would prevent competitors from describing their own goods adequately. Thus, even when a generic term has developed a secondary meaning it is unprotectable as a trademark. Miller Brewing Co. v. Falstaff Corp., 655 F.2d 5, 8 (1st Cir.1981); CES Publishing Corp., 531 F.2d at 13.

Plaintiff, as claimant to protection for an unregistered mark, bears the burden of proving that "Software News" is not generic. National Conference of Bar Examiners v. Multistate Legal Studies, Inc., 692 F.2d 478, 488 (7th Cir.1982); Reese Publishing Co. v. Hampton International Communications, Inc., 620 F.2d 7, 11 (2d Cir.1980). Plaintiff is not aided in this task by defendant's attempt to register "Computer + Software News" as a federal trademark. Gimix, Inc., 699 F.2d at 905 n. 3.

The district court in denying the preliminary injunction determined only that the word "software," in and of itself, is generic, presumably because it is the common descriptive term for programs, procedures, and related documentation associated with a computer system. See Webster's Collegiate Dictionary, 1104 (1975). As plaintiff correctly points out, this analysis was in error. Plaintiff's mark is "Software News," not "Software." The proper analysis considers plaintiff's mark as a whole. Reese Publishing Co., 620 F.2d at 11. The issue, when properly framed, is whether "Software News" is generic when applied to a magazine dealing with the software industry.

A generic term is one that serves as the common descriptive name of the product. The test in determining whether a magazine title is generic is no different than that applied in determining whether any other mark is generic. Magazines differ from other goods, however, in that their title is a primary means of conveying their content. The result is that many magazine titles fall near the line between generic and descriptive marks. In recognition of this "[c]ourts have been reluctant to find a magazine title generic, perhaps in part because the magazines in such cases were not literally the class title designated but were about that class." CES Publishing Corp., 531 F.2d at 14 (emphasis in original). An example of this was presented in American Association for Advancement of Science v. Hearst Corp., 498 F.Supp. 244 (D.D.C.1980), in which the publisher of "Science" magazine sought to prevent defendant from publishing "Science Digest" with a cover design that made defendant...