The opinion of the court was delivered by: WHITMAN KNAPP
Plaintiff alleges claims of trademark infringement, tradedress infringement, and unfair competition arising from the use of allegedly similar magazine titles. See Compl.; 15 U.S.C. § 1114; 15 U.S.C. § 1125(a). More particularly, plaintiff contends that defendant's publication of a magazine under the title "Ladies' Home Journal Parent's Digest" infringes rights plaintiff has to the mark "Parents". On February 26, 1992, plaintiff moved for a preliminary injunction. Upon consent of the parties, this motion was consolidated with the trial on the merits for permanent injunctive relief, see Fed. R. Civ. P. 65(a)(2); and on April 20 and 21, the matter was tried before the court. For the reasons that follow, we find that plaintiff is not entitled to injunctive relief.
Plaintiff is the publisher of a magazine entitled "Parents", which is devoted to the field of articles on child-rearing. This magazine is published on a monthly basis, sells for the newsstand price of $ 1.95, and is recognized as having the largest circulation and the greatest advertising revenues of any magazine in its field. Approximately ninety percent of "Parents" circulation is attributable to its subscription sales, however it also has the largest newsstand sales of any child-rearing magazine. In 1991 plaintiff yielded gross revenues of approximately $ 24,700,000, and charged $ 49,000 per page of advertising space.
Plaintiff had begun publication of its magazine in 1926.
In 1937 the magazine was published on a monthly basis, and on August 24 of that year plaintiff was granted trademark registration for the mark "Parents' Magazine"
, which it was then employing as the title of its publication. See Pl. Exh. 1. Throughout the course of the next forty-one years plaintiff published its magazine under that mark, and on August 24, 1977 its registration for that mark was renewed for the second time
This 1937 mark is here reproduced as it appears on the certificate of registration:
[SEE ILLUSTRATION IN ORIGINAL]
In 1978 plaintiff decided to "relaunch" its magazine to "give it a new life". Crow, Tr. at 211. To this end, it determined that the magazine's title should be shortened and printed in a new, different type face. Id. It then developed the "new logo" which is currently used on its magazine, and which is here reproduced:
[SEE ILLUSTRATION IN ORIGINAL]
As is evident, this mark utilizes only the word "Parents", without an apostrophe. In addition it is printed in a serif typeface which was custom-designed for plaintiff. Crow, Tr. at 212; Hahn, Tr. at 56.
In 1979 plaintiff applied for, and was granted, trademark registration for this new mark on the Principal Register. See Pl. Exh. 2. Its application for said registration displays the mark in the exact manner here reproduced. Id. Since 1979 plaintiff has employed this mark on a variety of other products which it sells, including a series of paperback books on child rearing, a series of toys, and several other magazine publications including two spanish language magazines and a quarterly magazine entitled "Expecting". Since 1979 plaintiff has not used its 1937 mark in any manner, and the record contains no indication that plaintiff will -- or reasonably could -- ever use it again.
With respect to the use of the new mark "Parents" as the title of its child-rearing magazine, the mark is distinctive in the following additional ways: it is written in letters which are approximately two inches in height; the letters appear in a single line across the face of the magazine (with the initial "P" appearing in the upper left hand corner of the cover, and the final "s" appearing flush against the upper right hand margin); and the word "magazine" is transcribed in smaller capitalized print above the final "s" of "Parents". The following is typical of the manner in which this mark is displayed on the cover of plaintiff's magazine.
See also Appendix 1. The tradedress of the magazine is distinctive in that plaintiff routinely displays a full-face color photograph of a baby on its cover, and the cover is printed on glossy paper. In addition, on its Table of Content's page, it utilizes the caption "As They Grow" to introduce a series of articles which contain information pertaining to children ranging in ages one through 18. See Crow, Tr. at 174-5.
Sometime in 1986 a company known as Time Publishing Ventures, Inc. ("TPV") placed advertisements concerning its intent to publish a child-rearing magazine entitled "Parenting". See Pl. Exh. 33; Def. Exh. B. Prior to the publication of the first issue of this magazine, plaintiff was inundated with calls and correspondence demonstrating consumer confusion between it and this TPV publication. See Crow, Tr. at 234-36; Def. Exh. B. Plaintiff informed TPV that it was considering bringing a trademark infringement action against it, and ultimately an informal settlement between plaintiff and TPV was reached. Crow, Tr. at 251. Defendant sought to introduce this settlement agreement into evidence, but plaintiff's objection was sustained. See Tr. at 3-14. To date consumer confusion between plaintiff and TPV's "Parenting" magazine appears to have diminished, with plaintiff receiving less than 100 letters or phone calls per month intended for TPV in early this year. See Crow, Tr. at 234; Cohen, Tr. at 94.
Defendant is the publisher the well-known monthly magazine, "Ladies' Home Journal", which is devoted to matters of general interest to women. During the past eight years, "Ladies' Home Journal" has dedicated certain sections of its magazine to topics on parenting, and routinely runs a column entitled "Parents' Journal". See Blyth, Tr. at 282.
In October 1991, defendant began publishing a separate magazine entitled "Ladies' Home Journal Parent's Digest", a collection of articles on child-rearing which have previously appeared in a variety of publications. This magazine is intended to be produced four times a year, and is sold on newsstands for $ 2.95. With the advent of this publication, the relevant field was expanded to five child-rearing magazines: plaintiff's, defendant's, "Parenting", "Child", and "Working Mother"; and another such publication entitled "Family Fun" has recently appeared. See Cohen, Tr. at 80.
Defendant testified that it decided to publish "Ladies' Home Journal Parent's Digest", which it terms a "satellite" publication, to provide incremental advertising pages to "Ladies' Home Journal". It explained that it charges $ 14,500/page for advertising space in this satellite publication, and offers a discount price of $ 7,500 per page to those who also purchase a $ 92,000/page ad in "Ladies Home Journal". Blyth, Tr. at 283, 292-3. It further testified that in deciding to create this magazine it believed it was offering the public a unique product, as no other known publication offered a compendium of the best available materials on child-rearing. Id., Tr. at 284. Defendant asserts that it does not ...