During discovery Dr. Lang produced about 33 advertisements
and articles referring to her and her products. Only about 11
of those refer to New Choices Press. Many mention Charismedia,
Inc., which is Dr. Lang's other company.
2. Retirement Living's Magazine
In January 1988 Retirement Living, a subsidiary of The
Reader's Digest Association, purchased 50 PLUS, a magazine for
mature readers. Management decided to change 50 PLUS' name
and, after some discussion, tentatively selected NEW CHOICES
FOR THE BEST YEARS.
Retirement Living's search for other users of "New Choices"
revealed Dr. Lang's company. One of Retirement Living's
lawyers visited and telephoned Dr. Lang's business in July
1989 and reported that New Choices Press was one of two
businesses located in an apartment owned by Dr. Lang, a
teacher of public speaking and effective self-presentation.
The lawyer reported that New Choices Press published a book
and a tape set, neither of which was entitled NEW CHOICES.
Since Dr. Lang did not publish a magazine and it seemed
unlikely that her small business, run from her apartment, had
developed sufficient source identification to preempt all uses
of the words "New Choices," Retirement Living decided it could
use NEW CHOICES FOR THE BEST YEARS. It was advised by counsel
that there was no likelihood of confusion between its magazine
and New Choices Press.
The magazine NEW CHOICES FOR THE BEST YEARS has over 580,000
subscribers, and it claims hundreds of letters each month from
satisfied customers. It aims at mature readers, primarily
those between the ages of 45 and 65.
An October 1990 trademark search revealed 168 federal
applications*fn* for trademarks of publications using the
words CHOICE or CHOICES. It also showed a number of state
registrations and common-law uses of the words in
In late 1988 Dr. Lang's office began to receive telephone
calls intended for NEW CHOICES FOR THE BEST YEARS. Ms. Lang
contacted the telephone company in an attempt to straighten
out the apparent confusion, but the calls continued.
NEW CHOICES FOR THE BEST YEARS' telephone number was first
listed in August 1989. From September 11, 1989 to May 31, 1990
Dr. Lang and her staff received no calls intended for NEW
CHOICES FOR THE BEST YEARS, according to notes they kept.
In late May 1990, Retirement Living changed its telephone
number, and Dr. Lang again received misdirected telephone
calls. Retirement Living attributes those calls to a telephone
company failure to direct callers to its new number, and
claims that the failure has been remedied. However, Dr. Lang
asserts that she has continued (at least up until late
December 1990, shortly before her papers opposing this motion
were filed) to receive calls for Retirement Living.
Dr. Lang has also received a few letters intended for
Retirement Living, including complaints about a Retirement
Living advertisement and a subscriber's failure to receive a
A. Summary Judgment
Under Fed.R.Civ.P. 56(c), summary judgment shall be granted
"if the pleadings, depositions, answers to interrogatories,
and admissions on file, together with the affidavits, if any,
show that there is no genuine issue as to any material fact
and that the moving party is entitled to a judgment as a
matter of law." "Summary judgment is appropriate when, after
drawing all reasonable inferences in favor of the party
against whom summary judgment is sought, no reasonable trier
of fact could find in favor of the nonmoving party."
Lund's, Inc. v. Chemical Bank, 870 F.2d 840, 844 (2d Cir.
If a motion for summary judgment is properly supported, "the
adverse party `must set forth specific facts showing that
there is a genuine issue for trial.'" Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 2511, 91
L.Ed.2d 202 (1986) (quoting Fed.R.Civ.P. 56(e)).
B. The Polaroid factors
The issue in a trademark infringement case is whether there
is "any likelihood that an appreciable number of ordinarily
prudent purchasers are likely to be misled, or indeed simply
confused, as to the source of the goods in question."
Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d
Cir. 1978) (per curiam), cert. denied, 439 U.S. 1116, 99 S.Ct.
1022, 59 L.Ed.2d 75 (1979). That determination requires a
review of the factors (discussed below) set forth in Polaroid
Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir.), cert.
denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). In a
trademark case, summary judgment is appropriate where there is
no genuine dispute about the facts material to the
Polaroid analysis, and those facts could lead to only one
reasonable conclusion. See Lois Sportswear, U.S.A., Inc. v.
Levi Strauss & Co., 799 F.2d 867, 876-77 (2d Cir. 1986). See
also Brown v. Quiniou, 744 F. Supp. 463, 467 (S.D.N.Y. 1990).
1. Strength of the mark
The strength of a mark is "its tendency to identify the
goods sold under the mark as emanating from a particular,
although possibly anonymous, source." McGregor-Doniger Inc. v.
Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir. 1979). Although the
parties agree that the mark NEW CHOICES is suggestive and thus
entitled to protection, a suggestive mark's strength must be
analyzed in its commercial context. Hasbro, Inc. v. Lanard
Toys, Ltd., 858 F.2d 70, 76 (2d Cir. 1988). Here, the
indisputable evidence shows that Dr. Lang's mark is weak.
The extensive third-party use of the words "Choice" or
"Choices" in the titles of publications, together with the
prosaic wording and arrangement of Dr. Lang's mark, shows its
weakness. See Plus Products v. Plus Discount Foods, Inc.,
722 F.2d 999, 1005-06 (2d Cir. 1983). It "is extremely unlikely
that prudent consumers will confuse it with similar marks on
noncompetitive goods." Id. at 1006.
In addition, Dr. Lang's business is limited, with only about
$85,000 in sales since 1985. The title of Dr. Lang's book,
which does not contain those words, appears in about 33
advertisements and articles, only third of which mention New
Choices Press. Such limited media coverage and marketing does
not raise a genuine issue of material fact about whether Dr.
Lang's mark has acquired any secondary meaning. There is
simply no evidence from which a factfinder could conclude that
the public at large associates the term "New Choices" with Dr.
Lang's business or her products, particularly when used as NEW
CHOICES FOR THE BEST YEARS.
2. Similarity of the Marks
This factor focuses on whether the two marks convey the same
general impression when viewed separately, and whether the
similarity is likely to confuse the public. Hasbro, 858 F.2d at
77; Banff, Ltd. v. Federated Dep't Stores, Inc., 841 F.2d 486,
492 (2d Cir. 1988).
The parties have agreed to the following description of
Retirement Living's mark NEW CHOICES FOR THE
BEST YEARS is placed prominently at the top of
the magazine cover, set in two sizes of typeface
with NEW CHOICES in large hollow slanted letters
and FOR THE BEST YEARS in smaller block print set
off by lines above and below and with a small
square between each of the words.
Lang's mark NEW CHOICES PRESS is set in small
plain block letters, all of the same size, above
a sun and pedestal design and placed on the spine
of her book, "The Secret of Charisma."
(Consent Pretrial Order Agreed Findings of Fact ¶¶ 11-12).
As stated in the Opinion, "There is some similarity of these
two marks, but considering differences in `"size, layout,
design, and logotype of the two titles"', there seems to be
little chance that consumers will confuse them. [Centaur
Communications, Ltd. v. A/S/M Communications, Inc.,
830 F.2d 1217, 1226 (2d Cir. 1987) (quoting C.L.A.S.S. Promotions Inc.
v. D.S. Magazines, Inc., 753 F.2d 14, 18 (2d Cir. 1985)).]"
Opinion at 7.
3. Proximity of the products
Retirement Living publishes a magazine aimed at mature
adults, and Dr. Lang produces a book and tapes on charisma.
While the parties are both in the general field of publishing,
it is undisputed that they publish different products and
target distinct audiences. Therefore, their products are not
proximate. See ibid. (magazines aimed at black Americans not
proximate where one was directed at West Indians and where
"physical attributes and layouts of the magazines are clearly
distinguishable."). See also McGregor, 599 F.2d at 1134-35
(district court did not err in determining that inexpensive
golf jackets and expensive coats are not proximate); Buitoni
Foods Corp. v. Gio. Buton & C.S. P.A., 680 F.2d 290, 292-93 (2d
Cir. 1982) (different alcoholic beverages are only slightly
proximate); Inc. Publishing Corp. v. Manhattan Magazine, Inc.,
616 F. Supp. 370, 381-85 (S.D.N.Y. 1985) (noting different
"editorial content, style, geographical distribution and
audience appeal" between two business magazines), aff'd,
788 F.2d 3 (2d Cir. 1986), (table).
4. Bridging the gap
This factor "looks to whether the senior user of the mark is
likely to enter the market in which the junior user is
operating." Centaur, 830 F.2d at 1227.
At the time of the Opinion, Dr. Lang asserted that she was
seeking investors for an expansion of her publishing
activities to include a series of guides and a newsletter.
Neither plans nor investors have materialized. She has not
produced any other evidence of expansion. Her plans to bridge
the gap remain wholly speculative, and do not present a
genuine issue of material fact on this aspect.
5. Actual confusion
Dr. Lang contends that the misdirected telephone calls and
letters she has received show that the public is confused as
to the origins of the parties' products.
However, the callers were not seeking New Choices Press, but
rather the publisher of NEW CHOICES FOR THE BEST YEARS. The
misdirected calls, standing alone, do not indicate consumer
confusion about the source of products, but only that when
individuals sought Retirement Living's telephone number they
erroneously found and used Dr. Lang's. See Inc. Publishing, 616
F. Supp. at 388-89; Cinnabar Traders Ltd. v. Cinnabar Lane,
Ltd., 223 U.S.P.Q. 726, 728, 1983 WL 687 (S.D.N.Y. 1983);
Programmed Tax Sys., Inc. v. Raytheon Co., 439 F. Supp. 1128,
1131 (S.D.N.Y. 1977) (inquiry regarding relationship between
plaintiff and defendant is not evidence of actual confusion).
That conclusion is supported by the fact that the calls
stopped from the time Retirement Living's telephone listing
was published until it changed its telephone number.
Significantly, there is no evidence that Retirement Living
receives calls for New Choices Press.
The few letters for Retirement Living that Dr. Lang received
do not raise a material issue whether there is a likelihood of
confusion. As with the misdirected telephone calls, those
letters show only that their writers used an incorrect address
when trying to reach Retirement Living. See Scott Paper Co. v.
Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231 (3d Cir. 1978)
(nineteen misdirected letters between 1976 and 1979 are
"extremely minimal evidence" of consumer confusion). See also
Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112,
118-19 n. 8 (2d Cir. 1984) ("the fact that there may be a few
confused consumers does not create a sufficiently disputed
issue of fact regarding the
likelihood of confusion so as to make summary judgment
improper."). But cf. Transamerica Corp. v. Trans America
Abstract Serv., Inc., 698 F. Supp. 1067, 1075 (E.D.N.Y. 1988)
(letter to plaintiff characterizing defendant as its subsidiary
was instance of actual confusion).
Accordingly, the evidence does not raise a genuine fact
question on the issues of actual confusion or, more
fundamentally, likelihood of consumer confusion.
6. Good faith
Retirement Living made an extensive search of uses of the
words NEW CHOICES and their variants. It investigated marks
that it thought might be confusingly similar, and consulted
with some companies using like marks; then, in reliance on
advice of counsel, decided to use its mark. That process shows
reasonable and good-faith action in adopting the mark. See E.S.
Originals Inc. v. Stride Rite Corp., 656 F. Supp. 484, 490
(S.D.N.Y. 1987) (trademark search and reliance on advice of
counsel shows good faith); Cuisinarts, Inc. v. Robot-Coupe
Int'l Corp., 580 F. Supp. 634, 638 (S.D.N.Y. 1984).
Against that showing, Dr. Lang asserts that Retirement
Living's representatives have had suspicious memory lapses
about the events surrounding its decision that Retirement
Living's mark does not infringe Dr. Lang's. At most, this
raises suspicion and conjecture.
Issues of good faith are generally ill-suited for
disposition on summary judgment, Leberman v. John Blair & Co.,
880 F.2d 1555, 1559-60 (2d Cir. 1989), but here the undisputed
evidence shows that Retirement Living acted in good faith in
deciding to use its mark. Thus summary judgment is appropriate.
See Pittston Warehouse Corp. v. American Motorists Ins. Co.,
715 F. Supp. 1221, 1224 (S.D.N.Y. 1989) ("Where a question of
good faith is involved, summary judgment should be granted
where the facts do not demonstrate any evidence of such bad
faith."); see also Lapir v. Maimonides Medical Center,
750 F. Supp. 1171, 1177 (E.D.N.Y. 1990).
7. Quality of plaintiff's product and sophistication of
There is no dispute that the quality of Retirement Living's
product is high, and no evidence concerning the sophistication
of the buyers of the parties' products.
In sum, a reasonable factfinder could not determine that
there is a likelihood of confusion in this case. While Dr.
Lang asserts that trademark infringement is a question of
fact, the undisputed evidence shows that each of the
Polaroid factors weighs against a finding there is such
confusion, some of them heavily. Accordingly, Retirement
Living's motion for summary judgment is granted. See Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106
S.Ct. 1348, 1355, 89 L.Ed.2d 538 (1986) (party opposing summary
judgment motion "must do more than simply show that there is
some metaphysical doubt as to the material facts.").
C. State Law Claims
Dr. Lang asserts claims under state law, for violation of
New York's anti-dilution statute, N.Y.Gen.Bus.L. § 368-d
(McKinney 1984) and for use of a trade name with intent to
deceive the public, id. § 133.
Retirement Living's motion for summary judgment on those
claims is granted. Section 368-d protects only strong marks,
and as stated above there is no evidence that New Choices
Press has attained a secondary meaning capable of dilution.
See Allied Maintenance Corp. v. Allied Mechanical Trades, Inc.,
42 N.Y.2d 538, 399 N.Y.S.2d 628, 632, 369 N.E.2d 1162, 1166
Section 133 is procedurally inapposite. It provides for a
summary proceeding for an injunction, not a plenary action.
Lincoln Restaurant Corp. v. Wolfies Rest., Inc., 291 F.2d 302,
304 (2d Cir.) (construing section 133's predecessor), cert.
denied, 368 U.S. 889, 82 S.Ct. 143, 7 L.Ed.2d 88 (1961).
Retirement Living's motion for summary judgment is granted.
It is to submit a proposed form of judgment within thirty days
from the date hereof, on notice and on consent as to form, if