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July 27, 1990


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 experts. Id.

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 Id.

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 ("Tri-Star").

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.

Plaintiff later learned about defendants' upcoming program through media announcements. Huttner Aff. at ¶ 13. Fearing defendant's use of the title BABY TALK would infringe on its registered mark and generate confusion about plaintiff's affiliation with the sitcom, plaintiff made several informal efforts to get the defendants to discontinue use of the title. Affidavit of Laura E. Goldbard at ¶¶ 2-5. Several letters were exchanged, but plaintiff's efforts were to no avail.*fn4 Id., Exhibits 1-4 and 6-7. Plaintiff thereafter commenced this action in early June, asserting federal statutory claims for trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), and for unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Plaintiff also seeks relief under three pendent state claims for trademark infringement and unfair competition under New York common law and for dilution of its trademark under Section 368-d of the New York General Business Law. On July 3, 1990, this Court held a formal hearing on plaintiff's application for a preliminary injunction.


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. ...

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