The opinion of the court was delivered by: KEENAN
JOHN F. KEENAN, United States District Judge:
Plaintiff, whose primary business is operation of the familiar motion picture rating system,
moves the Court for a preliminary injunction against defendants, sellers of women's dresses. Plaintiff asserts that by naming its company "Rated R Clothing, Inc.," and using this name on dress labels and other public advertising, defendants are engaging in trademark infringement, false designation of origin, unfair competition, and dilution, in violation of federal and state statutory and common law.
Plaintiff alleges it is being irreparably harmed by the claimed infringement and needs a preliminary injunction to prevent defendants from using its company name, which it asserts infringes plaintiff's registered certification marks. Defendants assert that there is no likelihood of confusion between plaintiff's business and defendants' clothing, because the two products are so dissimilar. Defendants also argue that while plaintiff has two registered marks, neither of the registrations incorporates the word "rated" or uses the letter "R" in combination with that word. Therefore, defendants claim, the dilution argument is unpersuasive.
Plaintiff is a non-profit company called Motion Picture Association of America, Inc. (MPAA), which rates movies G, PG, PG-13, R and X. An arm of MPAA called Classification and Rating Administration (CARA) is responsible for the viewing and rating process. In his affidavit, the Chairman of CARA states that while MPAA has advised on morals in the motion picture industry since the 1920's, CARA was established on November 1, 1968 to administer the newly-invented rating system. (Heffner Aff., P 6). Since that time, CARA has reviewed and rated over 7000 films, of which approximately 45% have been rated R. Plaintiff holds registrations for the certification marks of rating symbols at issue in two forms, "R in a rectangle,"
and "R in a box."
It does not have any registration for the letter "R" used in conjunction with the word "rated", as employed by defendant in its company name. However, plaintiff asserts, and it is not denied, that it is required to use the word "rated", followed immediately by the appropriate rating symbol, when rated movies are advertised orally on television. (Heffner Aff., Ex. C).
Opinion surveys have shown that 80% of the public aged twelve and over is aware of CARA's symbols. In 1985, adults between 18 and 49 had a greater than 90% awareness of the symbols. (Heffner Aff., P 9).
Over the years since 1968 MPAA has been approached many times by parties interested in using the rating symbols in licensing agreements in connection with sundry items including clothing, bathroom accessories, T-Shirts and promotional materials. (Heffner Aff., Ex. E through H). All of the requests have been denied without resort to litigation. In denying licenses, CARA has stated its belief that it would harm the registrations if CARA allowed the symbols to be used for unrelated purposes, so as to make the symbols "generic". In effect, this appears to be a dilution argument.
On the occasions when parties have used the symbols for commercial advantage without permission to license in advance, they have been requested to cease and desist, and have complied with this request in every case. Exhibits I through M to the Heffner affidavit consist of correspondence relating to unauthorized use in the area of children's toys, hamburger ads, pornographic cakes,
Defendants have started a clothing line named Rated R Clothing, Inc.,
the president of which is Biya Katz. The founder, vice president and Chief Executive Officer of Rated R Clothing is Chaim Ramar, an Israeli national. He is engaged to Biya Katz. Ramar states that he was "not specifically aware" of plaintiff's roman letter "R", drawn in a box, and sometimes used with the word "rated", until after my company was solidly in business." (Ramar Aff., P 7). Ramar claims that the "R" as used in defendant company's name stands for Ramar, and "rated" was chosen because, "it was our intention that the women's fashion marketplace would come to regard our ladies apparel as the standard of excellence by which other similar items were "rated;" i.e. if a dress was rated Ramar - Rated R - it was of fine quality in design, workmanship and value." (Ramar Aff., P 5).
The Court is unconvinced that defendant was not aware of plaintiff's use of the name, principally because, given the high percentage of recognition for plaintiff's symbols, it is too coincidental to be credible that Ramar would have stumbled upon the phrase "rated R" without discovery of its common usage.
In late February 1985 Ramar retained a law firm to clear the trade name "Rated R." The search led to discovery of more than one usage of the letter "R" used in conjunction with other words, including the word "rated." Plaintiff's two registrations did not come to light. Among the marks discovered was Charles Pfizer & Co.'s trademark number 911,694 obtained May 18, 1971, for the phrase "Rated R". Ramar obtained Pfizer's permission to use the phrase.
Other companies have registered the mark of "R" inside a box, or in some other configuration. (Ramar Aff., Ex. A).
Ramar says that he and fiancee Katz have invested their entire lives savings of over $500,000 and a year of work in the clothing company. (Ramar Aff., PP 14-17). They have already used the logo in ads, neon signs at the company showroom, promotional brochures for tradeshows, labels, postcards, hangtags, leaflets, invoices and stationery. This coverage, they claim, has already given meaning to the company's name. They have already obtained purchase orders for $750,000 worth of clothes. (Ramar Aff., P 18). Ramar claims, at the risk of "sounding immodest", that the response to the new line is exceptional for the ...