Defendant's Motion for Summary Judgment at 15. Conversely, IDG views the high quality of J&R's operation as a "reinforcement" of the likelihood of customer confusion. Memorandum of Law in Support of Plaintiff's Motion for Summary Judgment at 13. Either viewpoint, however, assumes that the products have something in common. I do not agree. Beyond the fact that both companies are involved in the computer industry to some degree, they appear to have little in common. A comparison of the quality of two unrelated products, then, offers little to this analysis.
IDG has been unable to report any instances of actual confusion. Although proof of instances of actual confusion is not necessary for a successful claim, such proof is convincing evidence of the likelihood of confusion. Francis Denney, 758 F. Supp. at 143. In the instant case, the absence of any evidence of actual confusion indicates that the likelihood is that the ordinary consumer is not likely to be misled or confused as to the source of the goods in question. McGregor, 599 F.2d at 1136 (holding that lack of proof of actual confusion may be used to infer that there is also no likelihood of confusion). As a result, I cannot find a genuine issue of material fact concerning actual confusion.
The final factor is defendant's good faith in adopting its own mark. This factor considers "whether the defendant adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between his and the senior user's product." Lang, 949 F.2d at 583 (quoting Edison Brothers Stores, Inc. v. Cosmair, Inc., 651 F. Supp. 1547, 1560 (S.D.N.Y. 1987)). In this case, the parties are involved in very different aspects of the computer industry. IDG and J&R have two distinct goals in mind: IDG seeks the sale of newspaper subscriptions while J&R promotes the sale of computers. J&R has denied any prior knowledge of the Computerworld newspaper. Aff. of Rachelle Friedman at 62. Most importantly, however, there is no basis for a finding that J&R intended to ride the coattails of the senior user. See, e.g., Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 48 (1978) (plaintiff's use of the trademark, "Mushroom", in connection with the sale of women's apparel not infringement of defendant's registered trademark used in defendant's marketing of women's shoes), cert. denied, 439 U.S. 1116, 59 L. Ed. 2d 75, 99 S. Ct. 1022 (1979). Thus, "even if a mark is registered, the presumption of an exclusive right to use it extends only so far as the goods or services noted in the registration certificate." Id. at 48. Here, the goods noted in the registration certificate are trade newspapers. In light of J&R's history of using various J&R World logos and the improbability that the company hoped to capitalize on IDG's reputation, there is no issue of material fact regarding J&R's good faith.
In sum, consideration of the Polaroid factors indicates no likelihood of confusion. Accordingly, J&R is entitled to summary judgment on counts one, two, three and six of the complaint.
Count four of IDG's complaint alleges a violation of New York's Anti-Dilution Statute, (General Business Law § 386(d)). Section 386(d) requires "likelihood of injury to business reputation or of dilution of the distinctive quality of a mark...." The gravamen of the wrong is injury to a recognized trade name rather than damage resulting from confusion. Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621 (2d Cir. 1983).
Under New York law, in order to prove a violation of Section 386(d), IDG must demonstrate that: (1) the Computerworld trademark is of a truly "distinctive quality," See Sally Gee, 699 F.2d at 625, and (2) there has been a "whittling down" of its business reputation by J&R's use of the mark. See Mortellito v. Nina of California, Inc., 335 F. Supp. 1288, 1296 (S.D.N.Y. 1972); Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 543, 399 N.Y.S.2d 628, 369 N.E.2d 1162 (N.Y. 1977).
J&R concedes that the Computerworld mark is distinct for newspapers. Memorandum of Law in Support of Defendant's Motion for Summary Judgment at 18. However, IDG offers no evidence to suggest that the distinctiveness extends to either retail sales or mail order catalogues. The mark, "Computerworld", therefore, is not sufficiently distinct to warrant protection.
Second, IDG has not submitted any evidence of actual injury to its trade name, reputation, or change in consumer perception as a result of the J&R Computer World logo. Consequently, there has been no "whittling down" of IDG's reputation. In sum, IDG has failed to demonstrate the existence of a genuine issue of material fact on its Section 386(d) claim.
Count five of IDG's complaint asserts that J&R has engaged in false advertising, in violation of § 350 of the New York General Business Law. To be entitled to relief under a false advertising claim, a plaintiff must not only demonstrate that the advertisement was misleading, but also that it has been injured. McDonald v. North Shore Yacht Sales,Inc., 134 Misc. 2d 910, 513 N.Y.S.2d 590 (N.Y. Sup. Ct. 1987).
Because IDG has failed to prove the existence of a likelihood of confusion, see discussion pages 5-11 supra, it cannot demonstrate either that J&R's advertisements are misleading or that it has been injured. Accordingly, J&R is entitled to summary judgment on count five of the complaint.
For the foregoing reasons, J&R's motion for summary judgment is granted in its entirety.
DATED: New York, New York, July 1, 1992
KEVIN THOMAS DUFFY, U.S.D.J.