compared to plaintiff's price of $ 49,000, and defendant approaches potential advertisers with the inducement that they can purchase a page of space at the discounted price of $ 7,500 if they also purchase space in defendant's well known monthly magazine, "Ladies' Home Journal", at $ 92,000 per page.
Second, we find that the term "parents" is unquestionably descriptive. Plaintiff makes much of the fact that the Patent and Trademark Office ("PTO") accepted registration of the mark "Parents Magazine" in 1937 and contends that this mandates the conclusion that that office found the term to be non-descriptive, descriptive marks not having been registrable under the Trademark Act of 1905 regardless of proof of secondary meaning. Similarly, it argues that if the PTO had determined that the mark "Parents" -- as displayed in plaintiff's 1979 registration -- was descriptive such registration would have stated on its face that the PTO relied on Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), which permits registration of descriptive marks only upon a showing of acquired distinctiveness. For present purposes we assume these statements to be true. However, fully realizing the deference which we are required to give to the determinations of the PTO, see Playboy Enterprises, 687 F.2d at 563; 20th Century Wear, Inc. v. Sanmark-Stardust Inc. (2d Cir. 1984) 747 F.2d 81, 88-89, n.8, we simply can not conclude that, as it is used as the title of a magazine dedicated to articles on child-rearing and addressed to persons having assumed responsibility therefor, the word "parents" is anything but descriptive.
So stated, we turn to discuss the Polaroid factors which we find to be determinative of the question of likelihood of confusion. See Thompson Medical Co., Inc. v. Pfizer Inc. (2d Cir. 1985) 753 F.2d 208, 214 (noting that "each trademark infringement case presents its own unique set of facts . . . No single Polaroid factor is pre-eminent, nor can the presence or absence of one without analysis of the others, determine the outcome of an infringement suit").
Strength of the Mark
The strength of a mark "refers to its distinctiveness, 'or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular . . . source'". McGregor-Doniger, Inc. v. Drizzle Inc. (2d Cir. 1979) 599 F.2d 1126, 1131. As such, courts have routinely held that marks which are descriptive are weak. See 20 th Century, 747 F.2d at 89; Inc., 616 F. Supp. at 378; National Information Corp. v. The Kiplinger Washington Editors, Inc. (D.D.C. 1991) 771 F. Supp. 460 (finding that the mark "Personal Finance" as employed as the title of a newsletter was weak, on the ground that it is a term used by various publications to describe a generic type of information). As above noted, we find the term "parents" to be descriptive. In addition, we take judicial notice of the fact that the number of synonyms for this word is limited, see supra n. 14, and that this word enjoys extensive third-party usage. Accordingly, to the extent that plaintiff here claims rights to the use of the mere word "parents", we find its mark to be extremely weak. See Lang, 949 F.2d at 581; Plus Products v. Plus Discount Foods, Inc. (2d Cir. 1983) 722 F.2d 999, 1005.
Before addressing the second Polaroid factor, we wish to make one clarification. We do not question that plaintiff has established a high degree of secondary meaning between itself, as a company, and any product -- including its magazine -- on which it displays the "Parents" logo. However, we agree with defendant that the distinctiveness or "'origin-indicating' quality in the eyes of the purchasing public" of this mark lies in the customized manner in which it is displayed, and not in the mere use of the word "parents".
See Plus Products, 722 F.2d at 1004. To the extent that plaintiff tries to rebut this conclusion by showing exclusive and continuous use of the non-stylized mark "Parent's Magazine" during the years 1937 through 1978, we note that it is undisputed that plaintiff has not used that mark since 1979, and it is inconceivable that any segment of the public -- after the passage of thirteen years -- maintains any association between plaintiff and that prior mark.
Similarity of Marks
In determining the similarity between the parties' marks, we must focus on the general impression conveyed to the purchasing public by the respective marks. C.L.A.S.S. Promotions, Inc. v. D.S. Magazines, Inc. (2d Cir. 1985) 753 F.2d 14, 18. In resolving this question, we find Plaintiff's Exhibit 31 to be dispositive.
First, we observe that there can be little doubt that the only significant similarity between plaintiff's and defendant's titles is the fact that they both employ some form of the word parent. As discussed above, plaintiff's magazine's title is printed in a distinctive, stylized manner, which includes the very distinctive trait that the letters of the word "parents" overlap each other. In addition its title is spread across the full cover of its magazine. In contrast, defendant's title is printed in smaller, more "block-like", shadowed print; it consists of several words, none of which run across the full width of the magazine's cover. Although both publishers capitalize the first letter of the word "parent", and both magazines' covers are printed in glossy paper, a review of magazine covers in general leads us to conclude that these two traits are far from distinctive. See Pl. Exh. 31.
Although plaintiff correctly observes that defendant's title employs significantly smaller type to display the source-distinguishing words "Ladies' Home Journal", and that defendant uses the photograph of a child on its cover in a manner similar to plaintiff's tradedress, our review of Plaintiff's Exhibit 31 leads us to conclude that neither of these characteristics are likely to cause consumer confusion between the two products. According to plaintiff's own expert's testimony, see supra pp. 10-11, the manner in which magazines are routinely displayed at newsstands denies the potential purchaser visual access to a large part of the cover, and causes such purchaser to focus attention either to the left hand side of the magazine's cover, or to its upper portion. Exhibit 31 unmistakenly demonstrates that in either case the words "Ladies' Home Journal" are clearly displayed as part of the title of defendant's magazine. Indeed Exhibit 31 reveals that the practice of blocking the lower half or the right-hand side of the magazine's cover actually serves to heighten the importance of the words "Ladies' Home Journal" in defendant's title by increasing the percentage of the displayed visual space which these words occupy. Moreover, in both cases the photograph of the child's face is generally not visible or, if visible, can not be directly compared with the picture on the other's product.
See Lang, 949 F.2d at 581 (in evaluating the similarity of the marks, "a court should look at the general impression created by the marks, taking into account all factors that potential purchasers will likely perceive and remember").
Proximity of the Products & Bridging the Gap
With respect to the proximity of the products, we agree with plaintiff that this factor weighs in its favor. Although defendant's publication costs more than plaintiff's and is a collection of previously published materials, it is undisputed that both parties' products are magazines of high quality dedicated to articles on child-rearing, and concomitantly, that both appeal to the same, specialized class of consumers, namely persons of similar economic profiles who have children. In these circumstances we find that both the content and the market of the two products are closely competitive.
On the other hand, it can not be said that the parties' products are identical. The primary distinction between the two magazines is that defendant's is a collection of previously published articles. Although plaintiff's post-trial memorandum implies that plaintiff occasionally includes previously published articles in its magazine, see Pl. Post-Trial Mem. at 21, it has produced no evidence to support the conclusion that it has planned -- or now plans -- to expand its business to include production of the type of "digest" publication sold by defendant. Accordingly, we find that it is unlikely plaintiff will "bridge" this particular "gap".
Assuming arguendo that the testimony by four of plaintiff's current employees concerning actual confusion was properly admitted at trial despite proscriptions against hearsay, we nonetheless find that on the whole said evidence demonstrates only that certain persons thought to inquire as to whether or not a relationship between plaintiff and defendant existed, and not that such persons assumed that plaintiff and defendant were in any manner related.
As such, we deem it not probative evidence of actual confusion. See Freedom Savings & Loan Asso. v. Way (11th Cir. 1985) 757 F.2d 1176, 1185; Pump, Inc. v. Collins Management, Inc. (D. Mass. 1990) 746 F. Supp. 1159, 1169; cf. Lang, 949 F.2d at 583 (trademark infringement protects only against mistaken purchasing decisions and not against confusion generally).
Although the absence of proof of actual confusion may be a neutral factor, that is one which "neither helps nor hurts" plaintiff's case, see Hasbro, Inc. v. Lanard Toys, Ltd. (2d Cir. 1988) 858 F.2d 70, 78, where, as here, both parties' publications have been simultaneously on sale in newsstands for over six months and these products constitute approximately forty percent of the relevant "child-rearing magazine" market, we find that the absence of evidence of actual confusion weighs heavily against a finding of likelihood of confusion. See Western, 910 F.2d at 63; McGregor-Doniger, 599 F.2d at 1136.
Although courts have routinely held that no single factor is determinative of whether or not there is likelihood of consumer confusion, see Thompson Medical, 753 F.2d at 214, any finding of bad faith on the part of a defendant would raise a presumption that its actions will indeed cause the confusion the defendant intended them to produce. See Harold F. Ritchie, Inc. v. Cheesebrough-Pond's, Inc. (2d Cir. 1960) 281 F.2d 755, 760, American Chicle Co. v. Topps Chewing Gum, Inc. (2d Cir. 1953) (Learned Hand, J.) 208 F.2d 560, 563. In urging us to make such a finding plaintiff cites, among other things, Judge Hand's famous observation in American Chicle, supra, 208 F.2d at 563:
Indeed, it is generally true that, as soon as we see that a second comer in a market has, for no reason that he can assign, plagiarized the "make-up" of an earlier comer, we need no more; for he at any rate thinks that any differentia he adds will not, or at least may not, prevent the diversion and we are content to accept his forecast that he is "likely" to succeed. (emphasis supplied)
Here the "reason" defendant can "assign" is obvious. Defendant's magazine is intended to address -- and discuss the concerns of -- men and women who, either by the necessity of nature or by choice, have assumed responsibility for nurturing young children. It would be difficult to find in the dictionary a word as appropriate for such a magazine as "parents". We therefore decline to draw any inference of bad faith from defendant's acknowledged effort to get as much mileage as possible from the descriptive word "parents" without impinging upon plaintiff's registered logo.
The cases cited by plaintiff do not suggest a contrary conclusion. In Playboy Enterprises the Court found that the mark "Playboy" as it was employed as the title of a male-entertainment magazine, was a suggestive, not descriptive, mark. In so holding, the Court expressly noted that "although the word may signify the aspirations of [the magazine's] readership, it does not describe the product or its contents". 687 F.2d at 566 (emphasis supplied). In like manner, in each A.T. Cross and Perfect Fit,19 the Court was addressing instances where the mark at issue was not descriptive. Accordingly, it is apparent that in not one of those cases did the defendant have available to him the justification for coming "close to" plaintiff's mark which defendant here proffers.
We therefore turn to plaintiff's contention that defendant's decision to utilize noticeably small print for the display of the words "Ladies' Home Journal" in its title evidences an intent to minimize the source-distinguishing impact of these words and to capitalize on plaintiff's good will. In light of the testimony of plaintiff's own experts as to the manner magazines are normally displayed and the visual evidence supplied by Plaintiff's Exhibit 31, see supra p. 11, which establishes that the smaller print does not in actuality minimize the impact of the words "Ladies' Home Journal", we cannot infer the intention to produce confusion from the mere use of small print.
Finally, we cannot fault plaintiff for seizing upon the circumstance that defendant initially employed the topic-heading "How They Grow" in a manner almost identical to plaintiff's use of "As They Grow" as indicative of the possibility of bad faith. However, we conclude that the indication is insufficient to support a finding, and find we have no basis for rejecting defendant's testimony that the use of the heading "How They Grow" was the mistake of an underling and not a management decision. See Resource Dev. v. Statue of Liberty-Ellis Island (2d Cir. 1991) 926 F.2d 134, 140-1 (noting that in determining bad faith defendant's state of mind is in issue); Lang, 949 F.2d at 583 (good faith "looks to whether the defendant adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill.."); cf. American Chicle, 208 F.2d at 563 (noting that one may "innocently" infringe another's trademark, the Court observed that the alleged infringer's purpose in adopting a confusingly similar designation is an important factor: "If he adopts his designation with the intent of deriving benefit from the reputation of the trademark . . . [of the plaintiff], his intent may be sufficient to justify the inference that there is confusing similarity").
On balance we find that all, except one, of the relevant Polaroid factors tip in defendant's favor. Accordingly, we are not persuaded that defendant's use of the title "Ladies' Home Journal Parent's Digest" in the form exhibited on its Summer 1992 edition of its magazine -- and set forth in Appendix 2 -- is likely to cause an appreciable number of ordinarily prudent purchasers to be confused, as that term is defined within the meaning of the trademark laws. We therefore deny plaintiff the injunctive relief it here seeks.
In addition to the claim of trademark infringement, the complaint asserts several other claims: unfair competition pursuant to 15 U.S.C. § 1125(a) and the common law of New York (Counts II and IV); and tradedress infringement pursuant to 15 U.S.C. § 1125(a) (Count III). It seems to us that the reasoning of this opinion disposes of all of these claims. However, since neither party has mentioned these matters in its brief, we direct the clerk to withhold entry of judgment for ten (10) days to allow plaintiff time to show cause why these claims should not be dismissed.
Dated: July 14, 1992
New York, New York
WHITMAN KNAPP, U.S.D.J.
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