US Jaycees v. Commodities Magazine, Inc.

• Decision Date: 02 January 1987
• Docket Number: No. C 85-2018.,C 85-2018.
• Parties: The UNITED STATES JAYCEES, Plaintiff, v. COMMODITIES MAGAZINE, INC., now doing business as Oster Communications, Inc., Defendant.
• Court: U.S. District Court — Northern District of Iowa

661 F. Supp. 1360

The UNITED STATES JAYCEES, Plaintiff, v. COMMODITIES MAGAZINE, INC., now doing business as Oster Communications, Inc., Defendant.

No. C 85-2018.

United States District Court, N.D. Iowa, E.D.

January 2, 1987.

Thomas D. Hobart, Iowa City, Iowa, Carl D. Hall, Paul H. Johnson, Tulsa, Okl., for plaintiff.

Bruce McKee, Mark D. Hansing, Des Moines, Iowa, for defendant.

DECISION ON THE MERITS

HANSEN, District Judge.

This case is before the court on plaintiff's and defendant's cross-motions for summary judgment. Both sides have filed numerous briefs. The parties have agreed to defendant's statement of undisputed facts. Plaintiff's supplement to defendant's statement of undisputed facts is not contradicted by defendant. Although both sides have urged this court to grant summary judgment in their favor, it is clear that a genuine issue of material fact remains to be determined: likelihood of confusion. The court, having notified the parties of the inappropriateness of summary judgment, now enters the following decision on the merits of the case, having obtained the consent of the parties to do so without further hearing.

FINDINGS OF FACT

1. Plaintiff, the United States Jaycees, is a non-profit corporation of the State of Missouri, having its national headquarters in Tulsa, Oklahoma.

2. Since September, 1938, plaintiff has published its magazine under the trade name "FUTURE." The magazine has a bi-monthly distribution of approximately 270,350 copies and is distributed to Jaycees' members and non-members in every state of the United States.

3. Plaintiff is the owner of the trademark "FUTURE" and the registration thereof in the United States Patent and Trademark Office, Registration No. 750,911, registered June 11, 1963. That registration is valid and uncancelled.

4. Defendant Oster Communications, Inc. is an Iowa corporation with its office in Cedar Falls, Iowa. (Since this action was filed, defendant Commodity Magazine, Inc. has changed its name to Oster Communications, Inc.)

5. Defendant, in September, 1983, began to publish and distribute "FUTURES: the magazine of commodities and options" to subscribers and newsstands. Distribution of defendant's magazine is much smaller than that of plaintiff's, with approximately 56,102 copies distributed monthly.

6. Defendant's attorney received the results of a trademark search on the word "FUTURES" which revealed plaintiff's registration before the first issue of "FUTURES: the magazine of commodities and options" was published. Sensing no conflict between the titles, defendant's attorney did not inform defendant of the similarity with plaintiff's title. Defendant first learned of the plaintiff's title when plaintiff objected to defendant's use of the title a few months after the first publication run of defendant's magazine. Despite the similarity of the titles, defendant continues to distribute its publication.

7. The similarity of the plaintiff's and defendant's magazine titles has resulted in the commingling of the two publications in the postal processing of undeliverable return mail. The only other evidence of confusion is one phone call received by plaintiff from a woman who inquired about a subscription to "FUTURES" magazine. When asked for clarification, she responded that she wished to subscribe to the magazine that dealt with commodities. Plaintiff directed her to defendant's magazine.

8. The channels of trade and methods of marketing utilized by plaintiff are distinctly different than those utilized by defendant.¹ The vast majority of plaintiff's readership is composed of members of its organization who receive the magazine for a nominal fee of $1.00 per year. Defendant has no such "membership" other than subscribers who seek out defendant's publication. Plaintiff sells no magazines at newsstands as does defendant.

9. The court finds that, in this case, the possibility of confusion on the part of consumers is not sufficiently substantial to create a likelihood of confusion, even in light of plaintiff's evidence of actual confusion.

DISCUSSION

Plaintiff brings this action for trademark infringement, unfair competition and false designation of origin under Title 15, U.S.C. §§ 1051-1127 and for injury to business reputation and dilution of the distinctive quality of a trademark under section 548.11.2 of the Iowa Code. Jurisdiction is based on 28 U.S.C. § 1338(a) and (b), and 15 U.S.C. § 1121, with pendant jurisdiction of the state claim.

In short, plaintiff claims that defendant's use of the title "FUTURES: the magazine of commodities and options" creates a likelihood of confusion with plaintiff's registered title "FUTURE," and in doing so, violates plaintiff's rights as a registrant of a trademark. In addition, plaintiff claims that defendant's magazine title dilutes the distinctive quality of plaintiff's title.

Trademark Infringement

Plaintiff alleges that defendant has infringed upon its trademark in violation of 15 U.S.C. § 1114(1), which provides that:

(1) Any person who shall, without the consent of the registrant —

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive

shall be liable in a civil action by the registrant for the remedies hereinafter provided. Under subsection (b) of this section, the registrant shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.

In order to make out a claim of trademark infringement, plaintiff must demonstrate that defendant's use of a similar magazine title is likely to cause confusion as to the source of the product among an appreciable number of purchasers. 15 U.S.C. § 1114(1)(a); Vitek Systems, Inc. v. Abbott Laboratories, 675 F.2d 190, 192 (8th Cir. 1982); Squirtco v. Seven-Up Co., 628 F.2d 1086, 1090-91 (8th Cir.1980). Actual confusion is not essential to a finding of infringement. Squirtco v. Seven-Up Co., 628 F.2d at 1091, citing Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 74 (10th Cir. 1958). However, a mere possibility of confusion is not enough; "there must be a substantial likelihood that the public will be confused." Vitek Systems, Inc. v. Abbott Laboratories, 675 F.2d at 192, quoting Fisher Stoves, Inc. v. All Nighter Stove Works, Inc., 626 F.2d 193, 194 (1st Cir. 1980). The resolution of the issue requires the court to examine many factors to determine whether there is a likelihood of confusion. Vitek, 675 F.2d at 192. Those factors include the similarity of the publications' titles, the intention of Oster Publications, Inc. in choosing its title, the degree of care exercised by purchasers of the magazines at issue, and the existence of any actual confusion. See WSM, Inc. v. Hilton, 724 F.2d 1320, 1329 (8th Cir.1984); Squirtco v. Seven-Up Co., 628 F.2d at 1091.

In appearance, plaintiff's magazine title "FUTURE" is similar to defendant's main title "FUTURES." They are similar in lettering style, and are composed of an upper-case "F" and lower case letters "uture(s)." However, at this point, the similarities in appearance end. Defendant's title has an "s" which plaintiff's title does not. The plaintiff's letters are larger than defendant's. Defendant's title includes as a subtitle, "the magazine of commodities and options" in type that is one-fifth the size of the word "FUTURES." Plaintiff's title is accompanied by the statement "Official Publication of the United States Jaycees" in print that is one-tenth the size of the title "FUTURE."

On a practical level, the minutiae of print size similarities and differences lose their punch. In order for an appreciable likelihood of confusion to exist, there must be someone in a position to be confused. See Comidas Exquisitos v. Carlos McGee's Mex. Cafe, 602 F.Supp. 191, 195 (S.D. Iowa 1985). In comparing the titles, "the comparison should be made `in light of what occurs in the marketplace,' taking into account the `circumstances surrounding the purchase of the goods.'" Vitek Systems, Inc. v. Abbott Laboratories, 675 F.2d at 192, quoting Walt Disney Productions v. Air Pirates, 581 F.2d 751, 759 (9th Cir. 1978), cert. denied, 439 U.S. 1132, 99 S.Ct. 1054, 59 L.Ed.2d 94 (1979). In the case at hand, by scrutinizing the circumstances surrounding the purchase of the goods, it is clear that there is very little likelihood of confusion. Plaintiff's publication is the "Official Publication of the United States Jaycees." As such, it is not sold on newsstands, but is distributed to members of the Jaycees through the mail. (An incidental number of copies are distributed to advertisers, potential advertisers, subscribers who are no longer members of the Jaycees and "friends of the Jaycees.") Defendants' magazine, on the other hand, is distributed mainly to subscribers who request the magazine and pay the $34.00 per year subscription rate. (Some copies are also sold from newsstands.) These different marketing methods employed by defendant and plaintiff in the distribution of their publications substantially preclude the situation in which purchasers would be confused.

Courts within the Eighth Circuit have considered the target group of purchasers in determining whether confusion is...