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:
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
A. Can I see it?
Q. Do you remember giving that testimony?
Counsel for plaintiff turned to that subject at the beginning
of his re-direct examination:
This testimony, particularly that elicited during the
examination before trial, is not entirely clear: as, for
example, the response: "If I was ever introduced the first
time, yes." The most I can make of this testimony is that some
people, in conversations with Hutchinson, mentioned ESSENCE
Magazine. However, during Hutchinson's examination before trial
counsel for ECI apparently did not pursue any details about
these conversations: who the people conversing with Hutchinson
were, where, when, or in what circumstances. This lack of
detail dilutes the probative value of the evidence as
demonstrating actual confusion. Compare Lobo Enterprises, Inc.
v. Tunnel, Inc., supra at 74-75, 77 (in absence of detail
concerning declarants and in the circumstances of their
declarations, "only sheer speculation" would permit an
inference of actual confusion). On the other side of the
equation, Hutchinson testified that no one asked her whether
she worked with or was associated with ESSENCE Magazine in any
way. I found Hutchinson to be a credible witness and accept
The second anecdotal instance of actual confusion relied upon
by ECI is said to lie in Harris's deposition testimony at Tr.
70. Harris said that Saddler came to see him and played
Hutchinson's demonstration recordings, which Harris liked. He
Q. Did he tell you her name?
Q. Did he tell you her name was Essence?
ECI relies on laconic response.
A. Anyone like who?
A. I don't think so.
Q. I mean any member of the public?
A. I don't think so.
Q. Any member of the trade?
A. I don't think so.
While plaintiff's stage name ESSENCE caused Harris to "think
about" ESSENCE Magazine, the content or direction of that
thought were not further explored; and no member of the public
or trade asked Harris (who was promoting Hutchinson) whether
the singer was associated or connected with the Magazine. This
is not compelling evidence of actual confusion.
As for Johnson, the RARE ESSENCE singing group's executive,
he testified at deposition that in March 1991 he saw a copy of
Billboard Magazine containing an advertisement for "New Jack
City" which included the singer ESSENCE as a performer. Johnson
telephoned his attorney to inquire "if ESSENCE Magazine had
anything to do with the rap artist," because "they have the
exact same name, so I thought maybe that they sponsored them."
Tr. 73. That is some anecdotal evidence of actual confusion on
Johnson's part, but it significantly diluted by the fact that
he had been engaged in prolonged negotiations with ECI with
respect to the RARE ESSENCE license at the time he saw the
advertisement in question. Johnson testified that "to a certain
extent" his negotiation with the magazine was a factor in his
concluding that there might be a connection between the
magazine and the singer. Prior to entering into a license
agreement with RARE ESSENCE, ECI pursued the music group with
the threat of an infringement action. In those circumstances,
Johnson testified: "because by the name Essence being Essence,
I figured that you all had something to do with her when you
came after us for having RARE ESSENCE. We had to put
stipulations on, you know, using RARE ESSENCE, so I figured
ESSENCE was your rapper or your artist." Dep.Tr. 75.
Given this unique set of circumstances, Johnson cannot be
regarded as a typical consumer of Hutchinson's product.
At trial, plaintiffs objected strenuously to the admission of
defendant's survey, challenging it as unreliable on a number of
the above grounds. However, because the trial was not before a
jury, I followed the approach adopted by Judge Glasser in
Toys R Us, Inc., supra, and by myself in Inc. Publishing Corp.,
supra. I admitted the evidence, but will now determine how much
weight, if any, it merits.
Plaintiffs object to the survey on four grounds: they allege
that the universe was improperly defined, that the questions
were leading, that sound interviewing methods were not
followed, and that the data was inaccurately reported. As a
result, plaintiffs argue that the findings of the survey are
entitled to little or no weight. Before detailing these
objections, however, it is important to note how the survey was
According to defendant's expert, the survey was designed to
determine whether and how extensively blacks associated the
singer ESSENCE with the magazine. Neadle testified at trial
Tr. 9. Secondary goals of the survey were to measure the extent
of the name recognition of ESSENCE magazine among black
Americans and to ascertain the percentage of blacks who
actually purchase or listen to rap music.
(because the critical question in the survey was as leading as
the question in Universal Studios, the court concluded that it
"can have no such confidence in this survey" and found that it
had no probative value).
In the McDonald's v. McBagel's case, Judge Walker was faced
with a survey containing a question identical to this one. It
Though you may not have seen or heard of this
restaurant, who do you believe sponsors or
McDonald's, supra, 649 F. Supp. 1268. Judge Walker termed that
question "leading" but concluded that it did not "fatally
infect the survey." Id. at 1278.
The Seventh Circuit, in analyzing the same form of question
in the Burroughs case, concluded that it was not at all
leading. James Burrough Ltd. v. Sign of the Beefeater, Inc.,
supra, 540 F.2d at 278. That question, like this one, asked
"Who do you believe is sponsoring or promoting this
restaurant." Id. The Court concluded that the survey questions
"do not appear slanted or leading." Id. at 279.
To a certain extent, this case is distinguishable. First, the
author of the survey himself conceded that the question was not
drafted as well as it could have been. Tr. 99-100. Second,
restaurants are often franchises; singers rarely are. Thus, it
is more likely that the question did not plant an idea in the
minds of the interviewees in the restaurant context than in
this context, given the judicially noticeable prevalence of
restaurant chains. Third, the problem of the ill-defined
universe exacerbates the problem of the leading question. The
phenomenal name recognition of ESSENCE Magazine among blacks
makes it more likely that when told to associate the singer
with something else, the people chosen for interviews would
think of the magazine. Thus, while the question is not so
egregious as to render the survey worthless, it nonetheless
makes the survey's results less reliable.
Sound Interviewing Techniques
Plaintiffs contend that the survey departed from standard
interviewing techniques for two reasons. First, plaintiffs
argue that no steps were taken to ensure that people were not
interviewed in front of newsstands displaying ESSENCE Magazine.
Dexter Neadle conceded that it was "possible" that interviews
took place near newsstands and that he "did not believe"
instructions not to conduct interviews near newsstands were
given. Tr. 57. He also testified that if the interviewee could
see a copy of ESSENCE Magazine during the interview, "it could
have an influence if it was in their sight at the time they
were responding to the questions." Tr. 58. On the other hand,
plaintiffs proffered no evidence that the interviews were in
fact so tainted. Plaintiffs' allegations are not sufficient to
result in the survey being disregarded, but do cast further
doubt upon it.
Accurate Reporting of the Data
At trial, it became clear that certain errors were made when
the computer actually computed the statistics. None of those
errors had an impact upon the conclusions reached. The
defendants, during the course of the trial, performed the
calculations again and correctly. Plaintiffs have not cast
doubt upon that repeated calculation nor upon the accuracy of
the remaining computations.
As the survey indicates, some consumers of plaintiffs' music
will be confused. The number offered by defendants, however, is
not reliable. Plaintiffs have proved what the percentage is
not; it is defendant's burden to prove what that number is and
that it is statistically significant. They have not met that
burden. The survey, while evidence of some actual confusion, is
not entitled to significant weight. Coupled with the relative
paucity of anecdotal evidence of actual confusion, this factor
on balance favors plaintiffs.
In trademark infringement cases the concept of "good faith"
addresses the issue of
whether or not the junior user deliberately copied the senior
user's mark, in the illicit hope of "palming off" his product,
or in the case of services, creating the impression of an
association that does not exist.
The junior user's awareness of the senior user's mark "can
give rise to an inference of bad faith." Centaur at 1228. That
inference is bolstered if the junior user, with knowledge of
the senior user's mark, "proffered no credible innocent
explanation" for its choice of name. Ibid. Furthermore,
"evidence of intentional copying raises a presumption that a
second comer intended to create a confusing similarity of
appearance and succeeded. . . ." Centaur at 1228, citing and
quoting Warner Bros. v. American Broadcasting Co.,
720 F.2d 231, 246-47 (2d Cir. 1983). Warner Bros. also stands for the
proposition that if there is no likelihood of confusion, "then
intent to copy, even if found from the proffered evidence,
would not establish a Lanham Act violation." Ibid.
The only evidence of Hutchinson's awareness of ECI's use of
the mark ESSENCE appears in her direct examination at trial.
Q. Ms. Hutchinson, did you ever subscribe to
Q. About when did you do that?
A. Maybe a year and a half ago, close to.
Q. Do you still subscribe to Essence Magazine?
Q. What happened?
A. Well, I sent in a form that was inside of a
magazine that I was looking at in another
business and I filled it out, sent it in but I
never sent in the money for it, so they stopped
sending the magazines.
The subject was not pursued further on cross-examination.
There was no evidence that Hutchinson was aware of ESSENCE
Magazine prior to her discovery of the order form which she
found inside a different magazine "maybe a year and a half"
prior to her testimony on June 26, 1991. This takes us back in
time to December, 1989. The inference of bad faith arising from
the junior user's copying of the senior user's mark requires a
showing that the junior user's awareness of that mark antedated
her own use of it.
Dale Dykes, Hutchinson' manager, testified that while he was
hosting a show at the Castle Club in New York City, a rap
performer named Euna Benett "gave me a tape with her and Tamara
Hutchinson rapping on it as a duo." The duo comprised of Benett
and Hutchinson had a stage name: the single word
EUNIQUEESSENSE. Dykes received that tape in December, 1989.
Dykes listened to the tape, contacted Benett, and said he was
interested in managing them. Dykes thereafter came together
with Benett, Hutchinson, and Saddler at a recording studio,
where Benett and Hutchinson made a demonstration recording. The
name the duo used — EUNIQUEESSENSE — resulted from the fact
that Euna Benett went by the name "EUNIQUE," and Hutchinson
went by the name of "ESSENCE." After a month of recordings,
Dykes testified, Benett "had a personal problem and she wasn't
going to be in the group anymore." Tr. 108-09. After the duo of
EUNIQUEESSENSE broke up, Hutchinson continued as a solo artist,
using the name "ESSENCE," with Dykes as her manager. Tr.
Hutchinson testified that she and Benett started making
demonstration records under the name EUNIQUEESSENSE "close to
late '88 or beginning of '89 and broke up in the middle of
1990." Tr. 267. In giving that testimony, on the second day on
which she testified, Hutchinson corrected testimony given on
the first day, to the effect that she and Benett started the
duo EUNIQUEESSENSE in the beginning of 1990 and ended somewhere
in the middle or end of that year. I credit Hutchinson's
correction as to timing because it is corroborated by Dykes and
It follows that not later than the beginning of 1989,
Hutchinson was using the stage name ESSENCE as part of the
name for the duo she shared with Benett, who called herself
Eunique. This is well before the date of Hutchinson's awareness
of ESSENCE Magazine as established by the evidence. A finding
that Hutchinson was aware of ESSENCE Magazine before she
adopted the stage name ESSENCE would be based only on
speculation.*fn13 Accordingly there is no basis in the record
for an inference of bad faith on Hutchinson's part with respect
to her selection of that name. Hutchinson gave this explanation
of her choice of the stage name ESSENCE:
Well, once Eunique and I knew that we wanted to
become professionals, we knew we had to have a
title on me and we knew we wanted it to stand for
something so we chose Eunique to mean different,
because we were both different, and we chose the
name Essence because we are different but we are
still real, which means the basic nature of
anything or something, so we based that on our
I credit this testimony as well. It is not inherently
implausible. On the contrary, Hutchinson's explanation of her
choice of the word essence parallels the explanation given by
Taylor and Lewis with respect to the naming of ECI's magazine.
It is a concept inherent in the meaning of this familiar
English word. Indeed, I may judicially notice that the July 21,
1991 edition of the New York Sunday Times included an
advertising flier for that popular cosmetic product for men
called "Brut," which its manufacturer, Faberge, described in
the advertisement as "The Essence of Man."
I find that when Hutchinson chose the stage name "ESSENCE",
she did not copy the mark ECI used for its magazine.
The parties exchange accusations of bad faith with respect to
conduct relating to the litigation. ECI charges that
Hutchinson's counsel, and Hutchinson herself, sought to mislead
when they wrote in a letter and an affidavit respectively that
Hutchinson "used the stage name of M.C. ESSENCE," and that
Dykes altered names appearing on contracts and a photograph
from ESSENCE to "M.C. ESSENCE" in a similar effort. The charge
of false representation results from the fact that in her
limited actual performances, Hutchinson has only used the name
Plaintiffs, for their part, point out that ECI did not enter
into its license agreement with the rock music group RARE
ESSENCE until after plaintiff commenced this litigation.
Plaintiffs regard that timing as indicative of a transparent
tactical effort by ECI to preempt a stage name which Hutchinson
was legitimately using.
These counter-charges of post-litigation bad faith amount to
very little. The letter of plaintiffs' counsel and Hutchinson's
affidavit, clearly prepared by counsel, may fairly be
criticized in their inclusion of the word "used" in relation to
the stage name M.C. ESSENCE, although with Dyke's assistance
Hutchinson had registered that business name with New York
County authorities. The more basic point, however, is that
litigation steps cast no light whatsoever upon the more
significant question of whether Hutchinson acted in bad faith
at the time she chose the stage name ESSENCE. For the reasons
stated, I have answered that question in the negative.
As for ECI's dealings with the RARE ESSENCE musical group,
the evidence shows that ECI was engaged in serious licensing
negotiations before plaintiffs began this action. However, the
timing of the final agreement has about it a faint whiff of
My conclusions, however, are that Hutchinson acted in good
faith in selecting the stage name ESSENCE; and that no
bad faith on the part of either party is shown which would have
a material effect upon the litigation.
Quality of Plaintiffs' Product and Sophistication of the Buyers
These last two factors enumerated in Polaroid may be
considered together briefly. In a case such as this, where the
products are so different, they are of relatively minor
It appears clear enough that plaintiff Hutchinson's
performance as a rap singer is of impressive quality. That is
best attested to by the enthusiasm with which this completely
unknown performer was received by the experienced and
sophisticated producers of the movie "New Jack City."
Hutchinson has had no opportunity to demonstrate the quality of
her performances since, at least in the public eye, because of
the deadening effect of ECI's cease and desist letter.
"Sophistication of consumers usually militates against a
finding of likelihood of confusion." Centaur at 1228. Where the
products are not identical, sophistication of consumers
decreases the likelihood of confusion. Ibid.
In the case at bar, ECI asserts with justifiable pride that
its readers are sophisticated younger black women.
While there is no direct evidence on the point, it seems fair
to assume that the sophistication of consumers of rap music,
who are relatively young and of all racial groups, is high in
respect of the purchasing choices they make concerning such
product. The evidence shows that most new songs vanish into
obscurity, while a relative few achieve vast commercial
success. That bespeaks criteria of choice on the part of the
consuming public, although I would not presume to attempt to
define those criteria.
The quality of the junior user's product, and the
sophistication of the relevant buyers, to the extent
instructive in the case at bar, tend to favor plaintiffs
Hutchinson and Saddler.
The Polaroid factors are not exhaustive. In infringement
cases the district court sits as a court of equity. As the
cases cited hold, the court may have to take other variables
into account, including such equitable factors as the harm to
the junior user as compared to the benefit the senior user that
would result from the requested injunction.
That factor must be considered in the case at bar, where a
powerful and successful publisher, whose magazine is ostensibly
devoted to the betterment of young black women, seeks to
deprive a young black woman from using her chosen stage name:
an effort which, if successful, the evidence shows would
deprive Hutchinson of significant benefits and recognition
derived from her use of the stage name ESSENCE at the dawn of
her career. In contrast, there is no evidence that Hutchinson's
use of the name would cost ECI a single subscriber to its
magazine, deprive it of a single page of advertising, interfere
in any of the areas of ECI's present licensing activities, or
tarnish the reputation of ECI or its mark.
This is not to say that the relative positions of Hutchinson
and ECI in the commercial power structure entitle Hutchinson to
infringe ECI's trademark with impunity. On the contrary: the
trademark laws are intended to prevent a parvenu from feeding,
by means of the likelihood of confusion, upon the established
reputation of a senior user.
It is to say, however, that a court of equity may properly
contrast the harm suffered by Hutchinson if she cannot use the
stage name ESSENCE with the harm suffered by ECI if she can.
In this context, it is appropriate to note that ECI is an
aggressive litigator in protection of its ESSENCE trademark.
The district court in Ithaca observed:
Sometime after September, 1982, ECI began an
effort to stop the use of the word "essence" on
any product even in the fields where it had never
been involved. While it appears from its
contentions that it is concerned about products
at the black female market, the evidence indicates
that efforts are being made to stop the use of the
name on products aimed at the entire marketplace.
Nor is there necessarily any significant
relationship between the products and the
706 F. Supp. at 1204.
In Singh Judge Sweet described the same litigation phenomenon.
703 F. Supp. at 264 n. 2.
Of course, a trademark owner is entitled to engage in
aggressive litigation to protect its mark. What a trademark
owner is not entitled to do is to pursue a course of action
which, if successful, "would be tantamount to awarding it
exclusive dominion over a word in common usage," with the
consequent "right to impair other parties' possible entrance
into areas of endeavor far removed from its own. The trademark
laws were not designed to serve this purpose." These are Judge
Weinfeld's words in Information Clearing House, supra, at 163.
Judge Mukasey quoted those words in Lobo Enterprises, supra,
693 F. Supp. at 79; and then quoted, as Judge Weinfeld had in
Information Clearing House an excerpt from the Supreme Court's
opinion in United Drug Co. v. Theodore Rectanus Co.,
248 U.S. 90, 97, 39 S.Ct. 48, 50-51, 63 L.Ed. 141 (1918):
There is no such thing as property in a trademark
except as a right appurtenant to an established
business or trade in connection with which the
mark is employed. The law of trade-marks is but a
part of the broader law of unfair competition; the
right to a particular mark grows out of its use,
not its mere adoption; its function is simply to
designate the goods as the product of a particular
trader and to protect his good will against the
sale of another's product as his; and it is not
the subject of property except in connection with
an existing business.
"The owner of a trade-mark may not, like the
proprietor of a patented invention, make a
negative and merely prohibitive use of it as a
These cautionary notes are applicable to the case at bar.
ECI, which bore the burden of proof on the issue, has failed
to show the requisite likelihood of confusion arising out of
Hutchinson's use of the stage name ESSENCE.
Significant equitable considerations favor Hutchinson.
Accordingly plaintiffs are entitled to a declaration of
non-infringement. ECI's counterclaim for infringement will be
Plaintiffs' claim for money damages will also be dismissed.
As counsel for plaintiffs' conceded at oral argument, there is
no evidentiary basis for making an award.
While Hutchinson and Saddler have prevailed in this
litigation and ECI has lost, I do not find in the case those
exceptional circumstances which would justify an award of
attorneys' fees in favor of plaintiffs and against ECI. That is
so, notwithstanding the fact that I regard ECI's cease and
desist letter and later litigation position as inconsistent
with the purpose of the trademark laws. ECI's claim of
infringement was colorable. Each party will bear its own
attorney's fees and costs.
For the foregoing reasons, the Clerk of the Court is directed
to enter Judgment as follows:
(1) Declaring that the use by plaintiff Tamara Lisa
Hutchinson of the stage name ESSENCE does not infringe any
trademark owned by defendant Essence Communications, Inc.; and
(2) Dismissing with prejudice all other claims and
counterclaims asserted in the pleadings.
It is SO ORDERED.