The opinion of the court was delivered by: Lowe, District Judge.
Before this Court is plaintiff Parenting Unlimited Inc.'s
("Parenting Unlimited") motion, pursuant to Fed.R.Civ.P. 65,
for a preliminary injunction enjoining defendants Columbia
Pictures Television Inc. ("Columbia Pictures"), Capital Cities
/ ABC Inc. ("ABC") and The Weinberger Company ("Weinberger
Company") from using plaintiff's federally registered trademark
"BABY TALK" as the title of defendants' upcoming television
program and from using the trademark to advertise or promote
the television program. For the reasons set forth below,
plaintiff's motion is denied.
Plaintiff Parenting Unlimited and its predecessors have been
distributing a magazine under the title BABY TALK since 1935.
Complaint at ¶ 9. That title is also a registered trademark
belonging to Parenting Unlimited*fn1 which was issued in
1958 for use in the magazine field — Class 38.
BABY TALK Magazine is America's oldest baby magazine and
contains articles relating to diversified advice to parents
from experts, "how-to" information and product information.
Several distinguished organizations contribute regular features
to the magazine. Affidavit of Richard Huttner ("Huttner Aff.")
at ¶ 9. Indeed, the magazine's own Board of Professional
advisers includes several renown medical and psychological
BABY TALK Magazine's current circulation is 1,050,000 copies
per month. Id. at ¶ 5. Notwithstanding its broad circulation,
BABY TALK Magazine is not available, as most magazines are, at
newsstands or by subscription. Rather, the magazine is received
by mass merchandisers who, in turn, sell copies of the magazine
to diaper services, obstetricians' and pediatricians' offices,
childbirth education classes, and hospitals. Id. at ¶ 8. The
magazine is also distributed in the baby department of every
Sears' store and other selected department stores. By
plaintiff's own admission, BABY TALK
Magazine is read by a limited and specific segment of the
population: expectant parents and the parents of infant
children, to whom the magazine is available at no cost. Id.
at ¶ 10.
Because the magazine is distributed to potential readers at no
cost, BABY TALK Magazine relies substantially on advertising
revenues from some of the largest companies in the United
States, including Beech — Nut and Fisher Price. Id. at ¶ 11.
Plaintiff claims that these advertisers immediately recognize
the mark BABY TALK in connection with its magazine. Id.
Plaintiff has also entered into licensing agreements with third
parties for use of the mark BABY TALK. For example, it is
currently licensing the mark to a toy manufacturer which
markets a doll under the name BABY TALK doll. Complaint at ¶
12. In addition, plaintiff claims to have begun a very limited
expansion into the television market, where it has produced
several two to three minute informational television "spots"
for the weekday talk show "Everyday with Joan Lunden."*fn2
Defendant Weinberger Company, in cooperation with defendant
Columbia Pictures, is currently producing a new television
program entitled BABY TALK, which is to be broadcast by
defendant ABC in a Tuesday night prime time slot in the
upcoming Fall 1990 television season. The television program, a
thirty minute situational comedy ("sitcom"), is about — as its
title suggests — a talking baby who reveals his thoughts, to
the audience only, through a voice over technique. The program
is based upon the hugely successful theatrical movie entitled
"Look Who's Talking," which was produced by Tri-Star Pictures
According to Ed Weinberger, President of defendant Weinberger
Company, Tri-Star agreed to allow defendants to produce a
program based on the movie, but would not allow them to use the
title "Look Who's Talking." Affidavit of Ed Weinberger
("Weinberger Aff.") at ¶ 6. Weinberger claims to have
thereafter chosen "BABY TALK" as the title for his program
because it was descriptive of the program's theme and because
it was a short, common English expression and therefore easy
for the audience to remember. Id. at ¶ 7. A title search
conducted by the Legal Affairs department of Columbia Pictures
revealed that there was no prior registration of the title in
connection with television entertainment services — Class
41.*fn3 Affidavit of Gregory K. Boone at ¶ 3. Weinberger
further maintains that he was unaware of the existence of BABY
TALK magazine until the inception of this controversy and that
the magazine's title therefore played no part in his selection
of the name for his sitcom. Weinberger Aff. at ¶ 9.
In order to obtain a preliminary injunction in this Circuit,
plaintiff has the burden of showing:
(a) irreparable harm and (b) either (1) likelihood of success
on the merits or (2) sufficiently serious questions going to
the merits to make them fair ground for litigation and a
balance of hardships tipping decidedly toward the party
requesting preliminary relief.
American Cynamid Co. v. Campagna Per Le Farmacie In Italie
S.P.A., 847 F.2d 53, 54-55 (2d Cir. 1988). The award of a
preliminary injunction is an extraordinary remedy and will not
be granted absent a clear showing that the moving party has met
its burden of proof. See, e.g., Beech-Nut v. Warner Lambert
Co., 480 F.2d 801, 803 (2d Cir. ...