This claim is not convincing. It is not unusual for a
company that markets a product and owns a magazine to reject
a competitor's ads. See, e.g., Twin Laboratories, Inc. v.
Weider Health & Fitness, 720 F. Supp. 31 (S.D.N.Y. 1989), aff'd,
900 F.2d 566 (2d Cir. 1990). Stouffer has not explained how the
magazine's rejection of the ads constitutes unfair competition.
Stouffer's sales figures demonstrate that the magazine is not
essential to Stouffer's ability to compete. Whether or not
Weight Watchers is abusing its second class mailing privileges
does not relate to an unfair competition claim, and should be
dealt with by the Postal Service and not by this court.
Finally, Stouffer asserts numerous affirmative defenses,
including laches and estoppel and acquiescence. As to the
laches, estoppel and acquiescence claims, Stouffer argues that
plaintiff did not complain or take any action with regard to
the ads for a long time, and that Stouffer in fact had been
publishing "Weight Watchers Exchanges" since 1981. Stouffer
claims that plaintiff's delay harmed Stouffer because it
expanded and developed its advertising program thinking there
was no opposition. (Def.Mem. at 22) To prove a laches defense
in a trademark case, defendant must show that "plaintiff had
knowledge of defendant's use of its marks, that plaintiff
inexcusably delayed in taking action with respect thereto, and
that defendant will be prejudiced by permitting plaintiff
inequitably to assert its rights at this time." See Cuban Cigar
Brands N.V. v. Upmann International, Inc., 457 F. Supp. 1090,
1096 (S.D.N.Y. 1978) (Weinfeld, J.), aff'd mem., 607 F.2d 995
(2d Cir. 1979). That defendant continued to spend money on
advertising which exploited the Weight Watchers mark is not
prejudicial reliance. Defendant has offered no evidence that it
was harmed more than it was helped by Weight Watcher's
insignificant delay in bringing this action. Therefore, it
cannot prevail on its laches defense.
Further, plaintiff's prior knowledge that Stouffer had been
providing Weight Watchers exchanges to consumers who sent away
for them does not bar it from suing on the advertisements. The
potential impact of the advertisements obviously was much
greater than the impact of pamphlets sent in response to
individual requests; plaintiff's judgment that the
publications available by mail were not worth the hassle of a
lawsuit does not constitute estoppel or acquiescence.
For the above reasons, defendant's counterclaims and
affirmative defenses are dismissed.
Plaintiff requests both injunctive and monetary relief; it
asks for a broad injunction against any use of the Weight
Watchers mark in connection with any dietary exchange
information, and against representing that defendants'
products are equivalent to or fit into or are interchangeable
with Weight Watchers exchanges or diet program. It asks also
for a judgment ordering defendants to destroy all infringing
advertising material, to account for and pay all profits from
the allegedly infringing acts and to pay costs and attorneys'
fees. I have found trademark infringement only as to the first
two advertisements, on the basis of these advertisements'
confusing use of the mark "Weight Watchers." Further, I have
found false advertising in the 1989 ad only as to certain
exchange information, and not as to claims of "fit" in the ad
copy. Accordingly there is no basis to enjoin defendants from
ever using the "Weight Watchers" mark, nor from stating that
Stouffer's Lean Cuisine products fit into the Weight Watchers
program, for reasons discussed extensively in this opinion. As
discussed above, Weight Watchers is entitled only to the
limited remedy of an injunction against Stouffer ads that do
not include optional calories in the exchange data.
Defendants are enjoined, however, from publishing the 1987
and 1988 advertisements. Under the Lanham Act, the issuance of
an injunction requires neither demonstration of actual
consumer confusion stemming from the infringement, nor actual
injury to plaintiff. Vuitton et Fils, S.A. v. Crown Handbags,
492 F. Supp. 1071,
1077 (S.D.N.Y. 1979), aff'd mem., 622 F.2d 577 (2d Cir.
1980). The mere likelihood of such injury is sufficient to
warrant an injunction. Monsanto Chemical Co. v. Perfect Fit
Mfg. Co., Inc., 349 F.2d 389, 392 (2d Cir. 1965), cert. denied,
383 U.S. 942, 86 S.Ct. 1195, 16 L.Ed.2d 206 (1966), quoted in
Vuitton et Fils, 492 F. Supp. at 1077. As discussed at length
above, the two earlier advertisements use the "Weight Watchers"
mark in a potentially confusing manner, and are misleading
because of their errors in accurately presenting the dietary
exchanges for Lean Cuisine entrees.
Although this constitutes a finding of likelihood of
confusion, it is important to consider the well-settled
doctrine that the "grant of injunctive relief depends upon
whether such relief is necessary as a matter of equity to
relieve against threatened further violations." Menendez v.
Saks and Co., 485 F.2d 1355, 1375 (2d Cir. 1973), rev'd on
other grounds, 425 U.S. 682, 96 S.Ct. 1854, 48 L.Ed.2d 301
(1976). Thus, a permanent injunction is proper only when there
is a likelihood not only that consumers could have been misled
in the past, but that consumers will be misled in the future.
See Burndy Corp. v. Teledyne Industries, Inc., 748 F.2d 767,
772 (2d Cir. 1984). That these ads were published two years
ago, and have been replaced by a non-deceptive, non-infringing
advertisement would suggest that defendants do not intend to
publish these ads in the future, and that injunctive relief is
therefore unnecessary. Nonetheless, defendants have not
promised to refrain from publishing the infringing 1987 and
1988 ads, or any substantially similar ad*fn17; indeed, their
position throughout this suit has been that the ads were not
infringing or misleading. There is thus a small possibility of
future harm, and plaintiffs are entitled to an injunction
prohibiting publication of the two infringing advertisements.
See, e.g., National Geographic Society v. Conde Nast
Publications, Inc., 687 F. Supp. 106, 110 (S.D.N.Y. 1988).
Plaintiff asks also for an accounting and payment of any
profits to defendants from their infringing acts. Such relief
is denied, because as discussed below, the circumstances of
this case do not merit an accounting under 15 U.S.C. § 1117(a).
Further, plaintiff has not adequately shown actual confusion —
and thus actual damages — caused by the first two
advertisements. Consequently, the only remedy for trademark
infringement and false advertising in the 1987 and 1988
advertisements will be injunctive.
Section 1117(a) of the Lanham Act governs damage awards for
infringement of a registered trademark. It provides, in part,
that when a violation has been shown,
"plaintiff shall be entitled . . . subject to the
principles of equity, to recover (1) defendant's
profits, (2) any damages sustained by the
plaintiff, and (3) the costs of the action. The
court shall assess such profits and damages or
cause the same to be assessed under its
direction. In assessing profits the plaintiff
shall be required to prove defendant's sales
only; defendant must prove all elements of cost
or deduction claimed. In assessing damages the
court may enter judgment, according to the
circumstances of the case, for any sum above the
amount found as actual damages, not exceeding
three times such amount. If the court shall find
that the amount of the recovery based on profits
is either inadequate or excessive the court may
in its discretion enter judgment for such sum as
the court shall find to be just, according to the
circumstances of the case. Such sum in either of
the above circumstances shall constitute
compensation and not a penalty. The court in
exceptional cases may award reasonable attorney
fees to the prevailing party."
15 U.S.C. § 1117(a).