The opinion of the court was delivered by: KEVIN THOMAS DUFFY
KEVIN THOMAS DUFFY, D.J.:
Plaintiff International Data Group, Inc. ("IDG"), commenced this action against defendant J&R Electronics, Inc. ("J&R") alleging: (1) federal trademark infringement, 15 U.S.C. §§ 1058 & 1065; (2) false designation of origin, 15 U.S.C. § 1125(a); (3) unfair competition, 15 U.S.C. § 1125(a); (4) trademark dilution under § 386(d) of New York General Business Law; (5) false advertising under New York General Business Law § 350; and (6) common law trademark infringement and unfair competition.
J&R now moves for summary judgment, pursuant to Fed. R. Civ. P. 56, on each of IDG's claims. IDG cross-moves for summary judgment on its claim of trademark dilution.
The following facts are undisputed except where indicated.
IDG, a Massachusetts corporation, publishes a weekly trade newspaper, "Computerworld", through its wholly-owned subsidiary, C.W. Publishing, Inc. Since September 17, 1968, IDG has been the owner of the registered trademark "Computerworld".
IDG's uses the mark for the sale and marketing of its newspaper, and direct-response card advertising for subscription orders and advertising.
Since 1981, the number of weekly subscribers in New York to the Computerworld newspaper has ranged from 10,000 to 12,000. It reaches approximately 135,000 persons in the United States. The newspaper is made up of several sections, some of which are used, in part, to advertise computer products and services. Compl. at P9.
Advertising for the J&R stores consists of full-page advertisements in the New York Times twice a week. On Sunday the ad's heading reads J&R Music World and, on Tuesday, it contains the J&R Computer World logo. Other means of advertising include flyers, in-store signs, employee's jackets, and advertisements in more than ten trade and general magazines. Finally, the company mails about one million catalogues every six weeks. The catalogs advertise all of J&R's products, including stereos, computers, and office equipment. Approximately 42 percent of J&R's sales involve computer products.
On or about June 12, 1989, J&R filed a trademark application to register the J&R Computer World mark. Following written objection by IDG, J&R withdrew its application. Subsequently, IDG requested that J&R cease using the name J&R Computer World in its business. J&R continued its use of the name, and IDG commenced this litigation by a complaint dated March 19, 1991.
Summary judgment is proper only where the movant shows that there is no genuine issue of material fact, and that he is entitled to summary judgment as a matter of law. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986). In determining whether there is a genuine issue of material fact, the court must construe the evidence and draw all inferences in favor of the nonmovant. See United States v. Diebold, Inc., 369 U.S. 654, 655, 8 L. Ed. 2d 176, 82 S. Ct. 993 (1962). To defeat a properly asserted summary judgment motion, however, the nonmovant must demonstrate the existence of material issues of fact to be resolved at trial on the merits. Williams v. Smith, 781 F.2d 319, 323 (2d Cir. 1986). In meeting this burden of proof, the nonmovant "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Electric Industrial Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 89 L. Ed. 2d 538, 106 S. Ct. 1348 (1986).
To prevail on claims of federal trademark infringement, false designation of origin, unfair competition and common law trademark infringement, a party must prove by a preponderance of the credible evidence the likelihood that an appreciable number of ordinary prudent consumers may be confused as to the source of the goods in question. Francis S. Denney, Inc. v. I.S. Laboratories, 758 F. Supp. 140, 143 (S.D.N.Y. 1990).
In deciding whether there is a likelihood of confusion, the Second Circuit considers the following seven factors: (a) the strength of the mark at issue; (b) the relatedness or proximity of the services; (c) the similarity of the marks; (d) the likelihood that the prior owner will "bridge the gap;" (e) the quality of the defendant's product; (f) actual confusion; and (g) defendant's good faith in adopting its own mark. Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 580 (2nd Cir. 1991) (relying on Polaroid Corp. v. Polarad ...