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HUTCHINSON v. ESSENCE COMM.
July 26, 1991
TAMARA LISA HUTCHINSON AND JOSEPH SADDLER, PLAINTIFFS,
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).
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.
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
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.
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
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).
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
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
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.
"Other variables" identified in subsequent cases reflect the
fact that the district court, in granting or withholding
injunctions in trademark infringement cases, acts as a court of
equity. Thus district courts
are directed to engage in a more general balancing of "the
conflicting interests of the parties involved,"
McGregor-Doniger, Inc., supra, at 1140, and such equitable
factors as "the nature of the senior user's priority, the
senior user's delay in asserting its claim, and the harm to the
junior user as compared to the benefit of the senior user that
would result from the requested injunction." Thompson Medical
Co., Inc., supra, at 214, citing Chandon Champagne Corp. v. San
Marino Wine Corp., 335 F.2d 531, 536 (2d Cir. 1964).
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.
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
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
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
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
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.
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.
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
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.
These factors, in counsel's submission, combine to produce a
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
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
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
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
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
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
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
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.
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.
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.
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