The opinion of the court was delivered by: Stanton, District Judge.
This case arises over the use of the words "New Choices" in
both the name of a publishing company owned by Doe Lang and a
magazine published by Retirement Living Publishing Co., Inc.,
In May 1989, Dr. Lang, who owns New Choices Press, sought an
injunction pursuant to New York General Business Law section
133 against Retirement Living using the name NEW CHOICES for
its magazine, NEW CHOICES FOR THE BEST YEARS. Retirement
Living removed that action from the state court to this court,
and filed a countersuit under the Lanham Act, 15 U.S.C. § 1051-1128
(1988), for a declaration that it was entitled to use
its name. Dr. Lang's motions for a preliminary and permanent
injunction and for summary judgment were denied. No. 89 Civ.
3868 (S.D.N.Y. Nov. 6, 1989) (the "Opinion"), aff'd, No.
89-9206 (2d Cir. Feb. 16, 1990) (unpublished summary order).
Discovery is now complete, and Retirement Living moves for
summary judgment pursuant to Fed.R.Civ.P. 56.
The material facts in this action are not in dispute
(although the parties dispute their significance) and they are
substantially as they were at the time of the Opinion.
In 1985 Dr. Lang started a publishing company called New
Choices Press to publish materials in what can be broadly
described as the "self-help" field. Its main asset was Dr.
Lang's already-published book The Secret of Charisma: What It
Is and How to Get It, in which she explains how to develop
Dr. Lang had planned to expand New Choices Press to include
publications on other subjects. Those plans have not
materialized, and since 1985 it has sold Dr. Lang's book and
several cassette tapes on charisma. Those products are not
aimed at any specific age group, and she does not consider
them to compete against magazines.
The Press' sales through late 1989 total approximately
$85,000. About half the sales were through Publisher's Group
West, and they have steadily declined since the first year Dr.
Lang's book was issued, to $4,400 in 1988. Sales made directly
by New Choices Press in response to orders it receives have
consistently been less than $2,000 a year.
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