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HUTCHINSON v. ESSENCE COMM.

July 26, 1991

TAMARA LISA HUTCHINSON AND JOSEPH SADDLER, PLAINTIFFS,
v.
ESSENCE COMMUNICATIONS, INC., DEFENDANT.



The opinion of the court was delivered by: Haight, District Judge:

    MEMORANDUM OPINION AND ORDER

Plaintiff brought this action under the Declaratory Judgment Act, 28 U.S.C. § 2201, for a declaration of non-infringement of trademark, damages, and injunctive relief. Defendant counter-claimed for trademark infringement, damages, and injunctive relief. Subject matter jurisdiction is based on 28 U.S.C. § 1338 and 1332. Venue lies under § 1391(b). The Court directed expedited discovery and advanced the action on the trial calendar. Rule 57, Fed.R.Civ.P. A bench trial on the merits commenced on June 24, 1991 and was concluded on July 2. What follows constitutes the Court's findings of fact and conclusions of law. Rule 52(a).

Background

Plaintiff Tamara Lisa Hutchinson is a black female.*fn1 Hutchinson graduated from high school in New York City in January 1990. She also attended the Bernice Johnson School, a dance school in Queens. She is a performer of rap music. Rap performers sing. They may also dance. Rap singing may be defined as spoken or semi-sung rhyming verse recited over a powerful rhythm track. It is lyrics over an almost exclusively percussion-based melody. Hutchinson has taken the professional name of ESSENCE.

Plaintiff Joseph Saddler is a producer of popular records. He is also known as Grand Master Flash, from the days when he was a leading rap performer and founder of the group known as Grand Master Flash and the Furious Five.

Defendant Essence Communications, Inc. ("ECI") has as its "primary business"*fn2 the publication of ESSENCE Magazine (the "Magazine"). The first issue of the Magazine was published in April 1970 and monthly thereafter. In addition to publishing ESSENCE Magazine ECI engages in direct mail marketing of certain consumer goods, licensing of certain consumer goods, and investments. In 1979 ECI filed the trademark ESSENCE for the Magazine with the United States Patent and Trademark Offices, describing the goods as a "magazine concerning matters of general interest to women." In point of fact, ECI targets the Magazine particularly toward younger black women.

In February 1991 Hutchinson, performing under the stage ESSENCE and with the assistance of Saddler with whom she has entered into a production contract, recorded a rap song called "Lyrics 2 the Rhythm." Saddler introduced the song to the producers of a movie called "New Jack City." The song found favor with the movie producers. "Lyrics 2 the Rhythm" formed a part of the musical sound track for "New Jack City." In the credits for the movie, the singer of "Lyrics to the Rhythm" was identified as "ESSENCE." Edward Lewis, ECI's chairman and chief executive officer, attended a showing of the movie, observed that credit, and was displeased. He instructed counsel, who caused a "cease and desist letter" to be sent to Giant Records, Inc., with whom Hutchinson and Saddler had contracted for the production and distribution of Hutchinson's recordings. The cease and desist letter had its desired effect and Hutchinson's career under the stage name "ESSENCE" has been placed on hold. Plaintiffs thereupon brought this action for judicial declaration of non-infringement. ECI counterclaimed for infringement.

Discussion

Protectability of ECI's Mark

A magazine title may give rise to a protectable trademark. In C.L.A.S.S. Promotions, Inc. v. D.S. Magazines, Inc., 753 F.2d 14 (2d Cir. 1985), the Second Circuit found the magazine title CLASS to be suggestive, and accordingly protectable, because it requires imagination, thought and perception to reach a conclusion as to the nature of its goods. See also Inc. Publishing Corp. v. Manhattan Magazine, Inc., 616 F. Supp. 370 (S.D.N.Y. 1985), aff'd 788 F.2d 3 (2d Cir. 1986) ("Inc." as title of magazine suggestive and accordingly protectable.) Two district courts have held that ESSENCE as the Title of ECI's magazine is suggestive and accordingly entitled to trademark protection. Essence Communications, Inc. v. Singh Industries, Inc., 703 F. Supp. 261 (S.D.N.Y. 1988); Ithaca Industries v. Essence Communications, Inc., 706 F. Supp. 1195 (W.D.N.C. 1986).

I reach the same conclusion in the case at bar. It is also apparent that in respect of the name ESSENCE, ECI is the senior user and Hutchinson is the junior user.

Likelihood of Confusion

The central issue in a trademark infringement case is whether the junior user's use of the name gives rise to the likelihood of confusion among consumers of the junior user's goods or services.

Likelihood of confusion is the particular target of the governing federal statute, the Lanham Trade-Mark Act, 15 U.S.C. § 1051 et seq., which "protects against false designations of origin and false description or representation," Thompson Medical Company, Inc. v. Pfizer, Inc., 753 F.2d 208, 212 (2d Cir. 1985) (footnote omitted).

Given a valid trademark, the critical issue in an action for trademark infringement "is whether there is any likelihood that an appreciable number of reasonable consumers would be misled or simply confused as to the source of the goods in question." C.L.A.S.S. Promotions, Inc., supra, at 17.

In Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1229 (3rd Cir. 1978), the Third Circuit gave a more expanded version embracing both goods and services:

  Likelihood of confusion exists when consumers
  viewing the mark would probably assume that the
  product or service it represents is associated
  with the source of a different product or service
  identified by a similar mark.

In evaluating confusion in a trademark infringement case, it is important to remember that the courts are dealing with confusion as to source, and that the only "relevant population" is potential purchasers of the junior user's goods or services. Lobo Enterprises, Inc. v. Tunnel, Inc., 693 F. Supp. 71, 77 (S.D.N.Y. 1988). Where the senior and junior user's products are of the same kind, the population of consumers is the same. Thus in Inc., supra, where plaintiff charged that the title of defendant's magazine infringed the title of plaintiff's magazine, I identified the "consumers" of magazines as: "advertisers; readers by subscription; and readers who purchase single copies of newsstands." The question in that case therefore became whether such consumers of defendant's magazine "would be `misled, or simply confused' or `would probably assume,' that the plaintiff published defendant's magazine." 616 F. Supp. at 377.

In the case at bar, the senior user's mark is the title of a magazine, and the junior user's mark is the stage name for a rap performer. Accordingly I must focus upon the consumers of the junior user's services. I define them to be: individuals who listen to rap music at live performances or on recordings such as single records, compact discs, tape cassettes or video tapes; and individuals who purchase such recordings.

The question therefore becomes whether consumers of rap music, so defined, would be misled, or confused, or would probably assume that ECI, as publisher of ESSENCE Magazine was commercially associated with, promoted, or sponsored a rap performer called ESSENCE.

As Judge Mukasey observed in Lobo Enterprises, Inc. at 72, decisions in Lanham Act cases "usually are highly fact-specific" because such decisions require a "comprehensive analysis of all the relevant facts and circumstances," Vitarroz Corp. v. Borden, Inc., 644 F.2d 960, 968 (2d Cir. 1981), and require consideration of "all factors bearing on the likelihood of confusion," as well as "balancing the conflicting interests of the parties involved." McGregor Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1132, 1140 (2d Cir. 1979). See also, Thompson Medical Co. v. Pfizer, Inc., supra at 214 ("[E]ach trademark infringement case presents its own unique set of facts.")

In making its determination and fashioning equitable relief, the Court must look "not merely to the similarity of the conflicting marks but to a number of other factors." C.L.A.S.S. Promotions, Inc., supra, at 17. Those other factors have come to be known as the "Polaroid formula," in tribute to Judge Friendly's opinion in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.) cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). Judge Friendly there wrote:

  Where the products are different, the prior
  owner's chance of success is a function of many
  variables: the strength of his mark, the degree of
  similarity between the two marks, the proximity of
  the products, the likelihood that the prior owner
  will bridge the gap, actual confusion, and the
  reciprocal of defendant's good faith in adopting
  its own mark, the quality of defendant's product,
  and the sophistication of the buyers. Even this
  extensive catalogue does not exhaust the
  possibilities — the court may have to take still
  other variables into account.

It follows that "[n]o single Polaroid factor is pre-imminent, nor can the presence or absence of one without analysis of the others, determine the outcome of an infringement suit." Thompson Medical Co., Inc., at 214.

I will now consider each of the Polaroid factors in the light of the trial evidence.

Strength of ECI's Mark

Both district courts considering the matter have concluded that ECI's trademark ESSENCE is strong, distinctive and well-known name for the Magazine, and accordingly entitled to a high degree of protection in that field, but of limited and diluted strength in other fields. Ithaca, supra, at 706 F. Supp. 1209; Singh, supra, at 703 F. Supp. 266-67. These cases were decided in 1986 and 1988 respectively. It is necessary to consider to what degree the underlying facts may have changed during the succeeding years.

ECI's proof in the case at bar demonstrates that the strength of the trademark ESSENCE as a name for the Magazine derives from ECI's varied efforts to promote the Magazine and the publication's considerable success. Hundreds of trial transcript pages and dozens of exhibits (documentary and video tape) were devoted to demonstrating those facts. I need not recount the evidence in detail. It is sufficient to note that since its inception in 1970 ESSENCE Magazine has grown to a guaranteed circulation of 850,000, achieves a readership in excess of 4 million individuals per copy, in 1990 generated advertising revenues in excess of $20 million, and, as demonstrated by reliable trade studies, enjoys a high degree of loyalty and approval among its readers.

ECI has promoted the Magazine through advertisements, direct approaches to potential advertisers, and a variety of other marketing stratagems, in particular a near-annual series of evening presentations recognizing the achievements of black women in a number of fields of endeavor. These presentations, known as the ESSENCE Awards, began in 1987 and were repeated in 1988, 1989, and 1990. No awards presentation is scheduled for 1991. The next is planned for Spring of 1992. The history and nature of the ESSENCE Awards, to which ECI devoted considerable trial energy, are further considered infra. It is useful for present purposes to observe that, unlike industry-wide awards presentations such as those conferring the Oscars, the Grammies, and the Tonys, the ESSENCE Awards exist in large measure to promote a product: ESSENCE Magazine.*fn3 Indeed, the 1990 ESSENCE Awards, which attracted an audience of 6,000 to Radio City Music Hall in New York, was billed as marking the twentieth anniversary of the Magazine's founding.

ECI has used the name ESSENCE in other areas. Through its wholly owned subsidiary ESSENCE Direct Mail Marketing Corp., ECI issues a mail order catalogue called ESSENCE Style. In 1984, ESSENCE Direct Mail Marketing Corp. and Hanover House, a mail order company, formed a partnership for the purpose of producing a mail order catalogue called ESSENCE By Mail. The catalogue features clothing, fashion accessories, jewelry, and reproductions of works by black artists. Like the Magazine, the ESSENCE by Mail catalogue is aimed exclusively at black women.

In December 1984 ECI registered the name ESSENCE for "entertainment services in the nature of television programs."

In addition, ECI licenses the trademark ESSENCE to the manufacturers or distributors of a variety of products. Lewis testified that ECI first considered licensing the name of ESSENCE in 1978 because, in view of the "promotion and credibility of the magazine that we had created since we had been in business we felt that black women would be buyers of products with the name ESSENCE." Tr. 378. ECI has licensed the name ESSENCE to manufacturers of wearing apparel, hats, eyeglass frames, jewelry, and apparel related products such as sewing patterns. The most recent license revealed by the evidence, granted in May 1991 by ECI to a group of rock musicians called RARE ESSENCE, permits that group to use the name ESSENCE on T-shirts and other merchandise.

ECI has never used the name ESSENCE in connection with the creation, production or distribution of live, video taped or recorded musical performances. Nor has ECI ever used the name ESSENCE in entering into a commercial association with, promoting or sponsoring a musical performer or performers, with the sole exception of the rock group RARE ESSENCE, whose license from ECI, as noted, is limited to articles of clothing.*fn4

Nonetheless ECI contends that ESSENCE is a strong mark in the field of entertainment in general and musical entertainment in particular, as well as in the magazine field. Two questions arise: whether third party usage of the name ESSENCE dilutes the strength of ECI's trademark in the musical entertainment field; and whether ECI has proved that public awareness of its ESSENCE mark exists for musical entertainment or entertainers.

Third-party registration and use dilutes the strength of the trademark. Singh at 266, citing Plus Products v. Plus Discount Foods, Inc., 722 F.2d 999 (2d Cir. 1983); Lever Bros. Co. v. American Bakeries, Co., 693 F.2d 251, 256-57 (2d Cir. 1982), and Vitarroz Corp. v. Borden, 644 F.2d 960, 968 (2d Cir. 1981).

There has been a very considerable amount of third-party registration and usage of the name ESSENCE. This is not surprising since the word is in common English use. The district judge in Ithaca said, following trial, that "physical specimens of 103 ESSENCE branded products [not affiliated with ECI] were presented in evidence during the trial," and that Trademark office certificates of registration were entered in evidence "showing that there are at least 80 subsisting federal trademark registrations of marks incorporating the word ESSENCE or very slight variations thereof." 706 F. Supp. at 1203, 1204. The goods covered by those registrations included "clothing (lingerie, robes, blouses, dresses and pantyhose); personal toiletries (including moisture cream, soap, perfume, cologne, hair care products), foods and many others." Id. at 1204. ECI argues at bar that Ithaca describes conditions existing five years ago. That is true, but the passage of time does not support the inference that third parties have foresworn the use of so common a word. Indeed, plaintiffs at bar placed in evidence two bottles of shampoo currently on sale in New York drug stores: "Clairol Herbal Essence" and "Suave Strawberry Essence."

In Singh Judge Sweet said: "A trademark search conducted by defendants [ECI's adversaries] turned up pending applications or registrations of marks employing `Essence' for a variety of products including cosmetic and toilet preparations, skin care products, hair care products, body lotions, and jewelry and precious stones, among others." 703 F. Supp. at 266. Counsel for ECI in the case at bar, who successfully kept out of evidence a trademark search proffered by plaintiffs because it was not properly authenticated, contend that I cannot consider what Judge Sweet said in Singh because the trademark search to which the judge referred was equally inadmissible, untested by cross-examination, and should not have been considered by Judge Sweet. I do not find this protest persuasive. ECI took no appeal from Judge Sweet's opinion in Singh denying its motion for a preliminary injunction on the ground that the district court considered inadmissible evidence or on any other ground. Judge Sweet said what he said, and I may properly consider it.

ECI concedes that I am entitled to consider Exhibit 51 to the deposition of Carol Fenelon, head of business affairs at Giant Records. Fenelon requested a trademark research report for the name ESSENCE on August 31, 1990. The report reflects status information from the Official Gazette through September 4, 1990 and application information disseminated by the Patent and Trademark Office through July 6, 1990. The report appears to reflect a fewer number of registrations than the 80 noted by the district court in Ithaca during a trial held in April 1986; but ESSENCE is registered for a trademark for a number of goods and services, including "a feminine hygiene produced cleansing douche" and "artificial breast forms," products which presumably are targeted towards women.

I find that significant third-party registration and use of the name ESSENCE exists, which dilutes the strength of ECI's trademark in the field of musical entertainment.

As for the second question, there is no evidence of public awareness of ECI's ESSENCE mark for the creation, distribution, sponsorship or promotion of music, musical performances or performers.*fn5 In Singh ECI sought a preliminary injunction against a mail catalogue seller of jewelry using the trade name Diamond Essence. Judge Sweet said of the strength of ECI's ESSENCE marks:

  Because of third party usage, and because ECI has
  offered no evidence that public awareness of the
  ESSENCE mark exists for jewelry, which constitutes
  only a very small fraction of the items offered in
  ECI's catalogues, the factor of strength of mark
  favors ECI to the extent that it covers magazines;
  however, it favors Singh to the extent it covers
  jewelry.

703 F. Supp. at 266-67.

For the same two reasons, I conclude in the case at bar that the factor of strength of mark favors plaintiffs Hutchinson and Saddler in respect of the performance of rap music.

Similarity of the Marks

Hutchinson's mark and ECI's mark are the same: they consist of the single word ESSENCE. While plaintiffs suggest that at one point Hutchinson used the name "M.C. ESSENCE" or contemplated doing so*fn6, she was identified in the "New Jack City" soundtrack credits only as "ESSENCE" and used that name in executing contracts.

The factor of similarity of marks favors ECI.

Product Proximity

ECI's pre-eminent product with the ESSENCE name is a magazine. For five years ECI produced a television program, but has not done so since 1988. ECI also licenses third-party users, for the most part in the field of apparel or related products.

Hutchinson's product is her performance of rap songs, during which she sings and dances.

At first blush, indeed at second blush, these would appear to be different products. Nonetheless ECI argues that, through the Magazine and its television show, it is "in the musical entertainment business," Tr. 882, so that Hutchinson's performances constitute "related goods" vis-a-vis ECI, Tr. 885. Summarizing the factors he perceived as bearing on the factor of product proximity, counsel for ECI argued in summation:

  [F]irst we have the fact that Ms. Hutchinson is a
  young black female singer, we have the fact that
  Essence is a magazine directed to young black
  women that features strong and prominent coverage
  of entertainment both on its cover and on the
  inside pages, we have the fact that ECI has made
  extensive use of entertainment and music and
  musicians in the promotion of Essence magazine, we
  have the fact that ECI is itself in the musical
  entertainment business, through the Essence T.V.
  Show and the Essence Awards, and we have a
  substantial overlap in the markets for plaintiffs'
  rap music and for the market for Essence magazine.
  Tr. 899.

These factors, in counsel's submission, combine to produce a situation where

  musical entertainment in Essence magazine, in
  Essence Communications, in all the other Essence
  trademarks are very closely associated together in
  the minds of the public of the African-American
  public, with the result that it's likely that
  African-Americans would expect that a young black
  female musical artist that took the name Essence
  was somehow associated with Essence
  Communications.

Ibid.

Two preliminary observations may be made. First, while ESSENCE Magazine is targeted toward younger black women, and plaintiff Hutchinson is unquestionably a young black woman, those facts in isolation cannot support a finding of product proximity. Were it otherwise, no young black women could use the trade name ESSENCE for any trade. That is not a proper application of trademark law.

Second, ECI is not in the "musical entertainment business," in any realistic, entrepreneurial, market place sense of the word "business." To the extent that ECI hires musical performers to put on the ESSENCE Awards shows (or a personality like Bill Cosby, whose hosting of the 1990 Awards Program was made much of at trial), ECI is a consumer of entertainment, not a purveyor, no different from any corporation hiring entertainers for promotion purposes. Nor does the bestowing by ECI of awards upon musical entertainers (among others), or the coverage of musical entertainers (among others) in a magazine or its television equivalent put ECI directly into the musical entertainment business. In the business of musical entertainment, ECI sows not, neither does it reap.

The question therefore becomes whether ECI's coverage of music and musical performers has been so prominent as to qualify musical entertainment as a business sufficiently related to ECI's business to justify an action for trademark infringement.

The nature and extent of ECI's coverage of musical entertainers, in the Magazine throughout and on the television program when it was being aired, generated much trial evidence. Counsel for ECI maximize the amount of that coverage. Counsel for plaintiffs minimize it. These are the predictable excesses of advocacy. But ECI's vehement, occasionally shrill, emphasis at trial upon its coverage of music and musicians constitutes a significant exaggeration of the facts.

Lewis testified at trial that the original concept for ESSENCE Magazine "was to bring about a magazine of entertainment that dealt with fashion, beauty, what it is to be a black woman, to talk about her needs, aspirations and intelligence within the black experience." At present, the Magazine's concept is that "it remains a wealth of information, a lifetime magazine of entertainment. How it is in terms of black women in terms of dealing with jobs, housing, education, fashion, beauty, as well as entertainment." Tr. 361-62. Somewhat more succinctly, Taylor described ESSENCE Magazine as "a full-service magazine for African-American women." She defined "full-service" to mean

  that we deliver to our readers information about
  fashion and beauty, health, fitness, interviews
  with celebrities, including singers and actors and
  prominent African-Americans, primarily women.
  We also cover information having to do with health
  and food and parenting, fiction is included in the
  magazine as is poetry, and really anything that is
  of interest to black women. Tr. 471-72.

While Lewis said that "[f]rom the very first issue of the magazine we have always had a close association and highlighted many entertainers, many artists and the upcoming artists," and Taylor said that "entertainment is an important aspect of the magazine," Tr. 362, 372, their testimony viewed in context accurately described the far more broad reach and variety of the Magazine's subject matter, as does examination of the copies of the Magazine in evidence.

The breadth of that subject matter is also reflected in the flier which ECI displays at supermarkets and other retail outlets to promote subscriptions. That foldout, four color brochure (D.Ex. 55), which features reproductions of a number of covers from prior issues, is captioned:

  7 Ways ESSENCE Helps You To Do Everything Even
  Better.

That caption is followed by a paragraph of text which reads:

  Let ESSENCE Help You Use Your Own Special Talents
  And Unique Style To Make Everything You Do
  Something Special.

The flier then delineates the "7 Ways" the Magazine helps its readers "Do Everything Even Better." The seven areas of interest, each further amplified by its own descriptive paragraph, are: Fashion and Beauty; Contemporary Living; Health & Well-Being; Family & Relationships; Business & Finance; Personalities; and Fantastic Features. The only reference to "entertainment" appears in the text accompanying category 6, "Personalities." That text reads:

  Meet Brothers and Sisters who are reshaping our
  world and neighborhoods in politics, business and
  entertainment.

Thus, in a flier intended to tell perspective subscribers about the Magazine, ECI lists "entertainment" (which includes art forms other than musical entertainment) in a category captioned "personalities," where entertainment exists cheek by jowl with those other heavily populated worlds known as "politics" and "business."

The Magazine's present masthead lists Susan L. Taylor as Editor-In-Chief. The masthead identifies the following editorships in capital letters: EDITOR; ART DIRECTOR; MANAGING EDITOR; EXECUTIVE EDITOR; FASHION EDITOR; BEAUTY AND COVER EDITOR; and CONTEMPORARY LIVING EDITOR. The editor whose responsibilities include entertainment is listed on the masthead in upper and lower case, as "Senior Editor, Arts." There is no music editor or entertainment editor. The tables of contents in recent issues list articles appearing under five captions in red letters: Features, Beauty, Fashion, Contemporary Living, and Departments. The regular "Departments" in the Magazine which appear monthly are: Letters; Health; Interiors; Brothers; People; In the Spirit (editorial comment of an inspirational nature written by Ms. Taylor), Shop, Graffiti (brief paragraphs dealing with gift ideas, schedules of current events, and the like), Horoscope, and Back Talk (essays contributed by prominent black citizens on issues of current concern).

For trial purposes ECI culled from past issues of the Magazine articles about musical entertainers, and advertisements placed by companies in the entertainment business. For example, D.Ex. 72 is "a compilation of entertainment advertisements that have appeared in ESSENCE magazines for the years 1989, 1990 and 1991." Testimony of Clarence O. Smith, ECI's president and co-founder, at Tr. 706. The compilation was impressively thick; but cross-examination developed that the approximately 40 pages of entertainment business advertising appearing in the Magazine during those years, which comprised the exhibit, represented about 4.4 percent of the approximately 900 advertising pages which appeared during those years. Tr. 799-800.

I find, in summary, that ESSENCE Magazine gives considerable coverage to the world of entertainment in general and to black entertainers in particular, as did the ESSENCE television program when it was being shown. That coverage reflects the sound journalistic proposition that entertainers are entertaining. However, the Magazine, "full service" as it is, covers a broad range of personalities and subjects, and cannot by any objective measurement be regarded as predominantly concerned with entertainment, musical entertainment, or entertainers, or even emphasizing those subjects to the extent that others are slighted.

The trial evidence militates against a finding of proximity of product, even if I accept for present purposes ECI's contention, articulated by Taylor at Tr. 537, that "the primary audience for [Hutchinson's] music is the same audience that Essence Magazine targets and serves."*fn7 The Second Circuit has said that the factor of proximity of products is "perhaps more accurately described as `competitive proximity.'" Centaur Communications, Limited v. A/S/M Communications, Inc., 830 F.2d 1217, 1226 (2d Cir. 1987). In Centaur "competitive proximity" was held to exist between two magazines, one primarily concerned with marketing news in American and the other with marketing news in Britain, because "[b]oth magazines are high quality weekly publications concerned with marketing news," so that "consumers in the market interested in American marketing news might assume that Centaur had decided to launch a different magazine primarily concerned with that topic." Ibid. In those circumstances, the Second Circuit found that competitive proximity existed between the two magazines. Competitive proximity, which "should be measured, in part, with reference to the first two Polaroid factors," Centaur at 1226, is relevant "primarily insofar as it bears on the likelihood that customers may be confused as to the source of the products rather than as to the products themselves." McGregor-Doniger, supra, at 1134 (emphasis in original), cited and quoted in Centaur at 1226.

The close proximity of products increases the likelihood of confusion; Centaur is a good example. Conversely, where as here the "products" bear no resemblance to each other, the differences between them militate against likelihood of confusion. At least that is so in the case at bar, where ECI has not shown at trial that the editorial content and advertising in the Magazine predominantly relate to musical entertainment.

ECI argues correctly that while differences between the products or services of the senior and junior user may preclude a finding of technical infringement of the senior user's trademark, a claim for unfair competition may still lie if the senior user's use of its mark has acquired a secondary meaning indicative in the public mind of a relationship between its product or services and that of the junior user. ECI cites a number of cases in which the publishers of magazines have, under that theory of trademark infringement, obtained injunctions against defendants whose conduct did not involve magazine publishing. These cases stand for the proposition, ECI argues, that the owner of a magazine trademark may object "to the use of a similar mark for goods related to the editorial content and advertising of the magazine." Brief at 29. ECI places primary reliance upon Esquire, Inc. v. Maira, 101 F. Supp. 398 (E.D.Pa. 1951), and also cites, among other cases, the Second Circuit's opinion in Triangle Publications, Inc. v. Rorhlich, 167 F.2d 969 (2d Cir. 1948).

In this regard as in most others, trademark infringement cases are fact-specific. The plaintiff in Esquire published "Esquire" magazine. It sought to enjoin defendant from using the name "Esquire" in connection with a men's clothing store. The district court found that plaintiff published "Esquire," subtitled "The Magazine for Men," and also a trade magazine called "Esquire's Apparel Arts." 10 to 20% of the editorial content of the magazine was devoted to men's fashion. Wearing apparel advertising in the magazine ranged from a high of 47.42% in one year to a low of 30.49% in another. The magazine had acquired a reputation as "an authority on men's fashions." 101 F. Supp. at 400. As an adjunct to its magazines the publisher did promotional work in men's wearing apparel and accessories, which included supplying clothing manufacturers who advertised in "Esquire" with window display cards with their ads affixed to them which the manufacturers sent to retail customers for display in store windows ("You Saw It In Esquire"), accompanied by a reproduction "of the familiar dapper, bulbous-eyed little gentlemen called `Esky,' who appears on the cover of `Esquire' Magazine." The plaintiff publisher also prepared comparable tags for advertisers to place on their apparel products; window display material for retail stores; and mats for advertising for use in local newspapers. The tie-in of all this promotion work with "Esquire" magazine, the district court found, "has helped to introduce new fashions, styles, trends and ideas in the field of men's apparel." Ibid.

In these circumstances the court concluded, not surprisingly, that the use of the word "Esquire" in connection with a men's clothing store gave rise to the probability that a false belief that "defendant's store has been approved, endorsed or sponsored by the plaintiff" would be generated. Id. at 402.

In Triangle Publications, plaintiff published a girl's magazine entitled "Seventeen." Defendants adopted "Ms. Seventeen Foundations Co." as a partnership name under which to make and sell girdles and "Ms. Seventeen" as the trademark for those girdles. The Second Circuit affirmed the holding of the district court that "the public was likely to attribute the use of `Seventeen' in connection with sales of teen-age merchandise to the plaintiff as a source of sponsorship." 167 F.2d at 971. In reaching that conclusion, the court of appeals cited the following findings by the district court: "Seventeen" magazine had become "an important medium for advertising teen-age apparel and accessories;" by the time defendants formed their partnership "a large proportion of the user's of teen-age apparel had acquired a belief that articles, including girdles, advertised in or mentioned editorially by the magazine had an added desirability;" and the magazine

  had played an important part in the merchandising
  of teen-age apparel in various ways, such as by
  conferences with manufacturers, editorial fashion
  comments, sales to manufacturers and merchandisers
  of reprints, counter-cards and blow ups of its
  comments and of advertising, monthly bulletins
  advising merchandisers how to tie in with
  forthcoming issues of the magazine, and by aiding
  merchandisers in arranging window displays and
  departmental displays. Ibid.

In the case at bar, there is no evidence that ECI, directly or by promotional tie ins, has participated in the merchandising of music or musical entertainers. There is no evidence, for example, of ESSENCE or "ESSENCE Award" stickers or tags being placed on musical recordings or video tapes. As for the Esquire case, the editorial and advertising content of ESSENCE Magazine in respect of musical entertainers is minimal when contrasted with "Esquire" magazine and the world of men's apparel.

Cases such as these are pertinent, but chiefly to demonstrate the difference between their facts and those at bar.

The factor of product proximity favors plaintiff.

Bridging the Gap

The term "bridging the gap" reflects the senior user's interest "in preserving avenues of expansion and entering into related fields." C.L.A.S.S. Promotions, supra, at 18. The factor militates in favor of the likelihood of confusion "if, in a case where there are certain product differences, the senior user of a trademark proves an intent to expand its traditional activities and enter into a related field occupied by the junior user." Inc., supra, at 385.

Logically enough, "bridging the gap" by the junior user should also be considered. "Inasmuch as a trademark owner is afforded greater protection against competing goods, a `strong possibility' that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing." AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 354 (9th Cir. 1979).

There is no evidence that ECI intends to expand its business into the areas of performing rap music or sponsoring or promoting rap performers. ECI's only licensing agreement having anything to do with musical entertainment is the license extended to the rock music group, RARE ESSENCE; and that license ...


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