with the sale and advertising of its Arabic language programming. "The Arabic Channel" provides approximately thirteen hours a day of cable television programming in Arabic.
On April 22, 1992, plaintiff filed an application with the U.S. Department of Commerce, Patent and Trademark Office ("PTO") for registration of a service mark in connection with its cable television programming. In its application, plaintiff sought to register the mark "TAC The Arabic Channel (stylized with design)." The mark combines a graphic design or logo resembling a television camera, upon which is superimposed the letters "TAC," followed by the words, "THE ARABIC CHANNEL," written in upper case letters. The PTO granted plaintiff registration of the mark, but required plaintiff to include in its application the following disclaimer: "No claim is made to the exclusive right to use the words 'The Arabic Channel' apart from the mark as shown." See Plaintiff's "Memorandum of Law in Opposition to Motion to Dismiss" (Plaintiff's "Memorandum of Law"), Jan. 29, 1993, Ex. A.
Plaintiff maintains that despite this disclaimer, people have come to identify the mark "The Arabic Channel" with the plaintiff.
This consumer identification, plaintiff states, has accorded "The Arabic Channel" a secondary meaning that makes the mark protectable under the Lanham Act.
The defendant, Cablevision, is a New York corporation in the business of selling cable television services. Since November 15, 1991, Cablevision has offered for sale a cable television service known as "The International Channel." The International Channel features television programming in at least sixteen different foreign languages. The Arabic language programming represents only a brief segment, approximately one to one and a half hours per day, of the International Channel's foreign language programming.
Plaintiff alleges that Cablevision has used plaintiff's mark, "The Arabic Channel," in connection with the sale and advertising of defendant's cable services. As a result of this use, plaintiff asserts, the defendant has mislead and deceived viewers into thinking that "The Arabic Channel" is available on defendant's cable system.
Plaintiff asserts three causes of action arising out of defendant's alleged misuse of its mark. Plaintiff asserts its first cause of action under the Lanham Act, 15 U.S.C. § 1125(a), for false designation of origin, a second cause of action for common law trademark infringement and unfair competition, and a third cause of action for dilution and injury to business reputation under § 368-d of the New York General Business Law.
On August 28, 1992, the defendant moved this Court to dismiss the complaint, or, in the alternative, for summary judgment. The defendant makes two arguments in support of its motion. First, defendant maintains that plaintiff has no trademark rights in, nor any claim for infringement of, the mark "The Arabic Channel," since neither plaintiff nor defendant has ever used that mark. Cablevision claims that neither it nor its employees have ever used the words or mark "The Arabic Channel" or "TAC The Arabic Channel" in any form whatsoever in relation to the International Channel or otherwise, and that no employee of Cablevision has ever represented that Cablevision carried "The Arabic Channel" or "TAC The Arabic Channel." Second, defendant argues that plaintiff has no claim for infringement of the mark "The Arabic Channel," since that mark is not protectable as a matter of law.
In a motion for summary judgment, the Court must give full weight to the non-moving party's evidence and draw every reasonable inference in its favor. Ambook Enterprises v. Time, Inc., 612 F.2d 604, 611 (2d Cir. 1979); Merritt Forbes & Co. v. Newman Inv. Securities, 604 F. Supp. 943, 952 (S.D.N.Y. 1985). For the purposes of this motion, then, the Court will assume that the factual allegations of the plaintiff, as set forth in the complaint and subsequent affidavits, are true.
Thus, the Court will assume: that GMT has, in fact, used the mark "The Arabic Channel" continuously since early 1991 in connection with cable television programming and services sold in interstate commerce; that GMT has advertised extensively to promote the channel; and that the defendant Cablevision has also used the mark "The Arabic Channel" in an attempt to sell its own cable programming.
These assumptions dispose of the defendant's first argument that neither it nor the plaintiff have used the mark "The Arabic Channel." In the face of the plaintiff's allegations to the contrary, the Court will not grant the defendant summary judgment on the ground that it and/or the plaintiff have not used the mark in question.
In its second argument in support of its motion, the defendant maintains that the mark "The Arabic Channel" is not protectable as a matter of law, and, thus, even if defendant had used the mark, it would not be violating the law. The defendant argues that "The Arabic Channel" is a generic term, and, as such, not eligible for common law or statutory protection.
Phrases used to designate goods or services are entitled to varying degrees of protection depending upon whether they are classified as 1) generic, 2) descriptive, 3) suggestive, or 4) arbitrary or fanciful. Girls Clubs of America v. Boys Clubs of America, 683 F. Supp. 50, 52 (S.D.N.Y.), aff'd, 859 F.2d 148 (2d Cir. 1988). A generic term refers to the genus of which a particular product is a species (815 Tonawanda Street Corp. v. Fay's Drug Co., Inc., 842 F.2d 643, 647 (2d Cir. 1988)); it is a common description of goods or services and is ineligible for trademark protection under any circumstances. Banff, Ltd. v. Federated Department Stores, Inc., 841 F.2d 486, 489 (2d Cir. 1988). A generic term is unprotectable, because appropriation of such generally descriptive terms would grant the owner of the mark a monopoly and prevent a competitor from adequately describing his goods or services. American Diabetes Ass'n v. National Diabetes Ass'n, 533 F. Supp. 16, 19 (E.D.Pa. 1981), aff'd, 681 F.2d 804 (3rd Cir. 1982). A descriptive term describes a characteristic of the goods or services and is entitled to protection only if the plaintiff can prove that the term has acquired a "secondary meaning." Girls Clubs of America v. Boys Clubs of America, 683 F. Supp. at 52. A mark is suggestive if "it requires imagination, thought and perception to reach a conclusion as to the nature of the goods." Eastern Air Lines v. New York Air Lines, Inc., 559 F. Supp. 1270, 1274 (S.D.N.Y. 1983), citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11 (2d. Cir. 1976). Fanciful terms are "coined" terms, which have no independent meaning, while arbitrary terms have a meaning, but one that is not usually associated with the particular product. 815 Tonawanda Street Corp. v. Fay's Drug Co., Inc., 842 F.2d at 647. Suggestive, fanciful and arbitrary terms are entitled to trademark protection without proof of secondary meaning. Id., citing Abraham Zion Corp. v. Lebow, 761 F.2d 93, 104 (2d Cir. 1985).
The defendant maintains that "The Arabic Channel" is a generic term and, therefore, unprotectable. In response, the plaintiff argues that "The Arabic Channel" is a descriptive term, and, thus, entitled to trademark protection if plaintiff can provide evidence that the term has developed a "secondary meaning" for the consuming public.
The Court notes that the owner of an unregistered trademark has the burden of proving the validity of the mark, and that burden includes establishing that the mark is protectable. Reese Pub. Co. v. Hampton Intern. Communications, 620 F.2d 7, 11 (2d Cir. 1980). A generic mark is never protectable, and, therefore, to establish protectability, plaintiff must prove that its mark is not generic. Id. at 11.
The plaintiff has not carried its burden. The Court finds that "The Arabic Channel" is a generic term, not subject to trademark protection. The mark "The Arabic Channel" describes a general category of services, namely, channels that broadcast in the Arabic language. See 3 R. Callman, Unfair Competition Trademarks and Monopolies § 18.03, at 11 (4rth ed. 1983) ("A generic term categorizes; it conveys information with respect to the nature or class of an article."). The mark is essentially the actual name of the product. See Merritt Forbes & Co. v. Newman Inv. Securities, 604 F. Supp. at 954. It defines itself, such that members of the public understand the nature of the product from the mark (See Loctite Corp. v. National Starch & Chemical, 516 F. Supp. 190, 201 (S.D.N.Y. 1981)); "The Arabic Channel" is a channel that broadcasts in the Arabic language.
The general category of "Arabic Channels" may at present consist of only one channel but in the future may include others. To allow one company the exclusive right to call itself "The Arabic Channel" would prevent potential competitors from adequately describing their services. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d at 9. In order not to severely weaken the ability of competitors to enter the market, the Court believes the mark "The Arabic Channel" must remain in the public domain.
The Court observes that the fact that there may be an alternative term that describes the product accurately, for example, in this case, "the Arabic language channel," does not change the generic nature of the mark in question. As the Court wrote in Loctite Corp. v. National Starch & Chemical, in finding the term "Super Glue" to be generic, "the existence of synonyms for a term does not mean the term is not generic. There may be more than one term which the consuming public understands as designating a category of goods." 516 F. Supp. at 201.
The Court further notes that use of the word "the" before an unprotectable mark does not convert an otherwise generic term into a descriptive one. See In re Computer Store, Inc., 211 U.S.P.Q. 72, 74 (1981). Use of the article "the" and of quotation marks cannot transform a generic term of ordinary words used in their ordinary sense into a registrable trademark. In re G.D. Searle & Co., 143 U.S.P.Q. 220, 223 (1964).
In this decision, the Court recognizes the difficulty involved in choosing between the generic and descriptive categories. As the Court acknowledged in Abercrombie & Fitch Co. v. Hunting World, Inc., "the lines of demarcation . . . are not always bright." 537 F. Supp. at 9.
Indeed, in defining the meaning of "generic," Courts in this Circuit have even used the term "descriptive." See E.R. Squibb & Sons, Inc. v. Cooper Laboratories, 536 F. Supp. 523 (S.D.N.Y. 1982) ("a 'generic term' is a 'common descriptive name'" Id. at 527); Banff, Ltd. v. Federated Department Stores, Inc., 841 F.2d 486 (2d Cir. 1988) (a generic term is "a common description of goods . . ." Id. at 489).
Nevertheless, the Court is satisfied that the mark "The Arabic Channel" is within the confines of the generic category, as delineated by a long line of cases in this Circuit. These confines were described in CES Pub. Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 15 (1975), in which the Court declined to grant trademark protection to a magazine entitled "Consumer Electronics Monthly." The CES Court observed:
. . . it is hard to think of a name for a magazine, directed deliberately and effectively to industry personnel, which more accurately names the class of trade magazines within that industry than one which simply gives itself the name of the trade plus the word "Monthly."
Id. at 14. Indeed, in similar fashion, it would be hard to think of a name for a channel that broadcast in the Arabic language that more accurately described its services than the name of the language, "Arabic," plus the word "Channel." See also Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976) (finding the term "Safari" generic in relation to sporting apparel); Johnson & Johnson v. Carter-Wallace, Inc., 487 F. Supp. 740 (S.D.N.Y. 1979), rev. on other grounds, 631 F.2d 186 (2d Cir. 1980) (finding the term "Baby Oil" generic in relation to mineral oil); Reese Pub. Co. v. Hampton Intern. Communications, 620 F.2d 7 (2d Cir. 1980) (finding the term "Video Buyer's Guide" generic in relation to a magazine promoting the sale of video products); Eastern Air Lines v. New York Air Lines, Inc., 559 F. Supp. 1270 (S.D.N.Y. 1983) (finding the term "air-shuttle" generic in relation to airplane service between New York and Washington, D.C. and New York and Boston).
The Court further observes that two recent decisions of the Trademark Trial and Appeal Board ("TTAB") addressed the legal issues involved in describing television channels with generic terms. In In re Weather Channel, Inc., 229 U.S.P.Q. 854 (1986), the TTAB affirmed the decision of the U.S. Patent and Trademark Office ("PTO") denying trademark protection to the "The Weather Channel." The TTAB explained its decision:
As the evidence . . . clearly demonstrates, the term "weather channel" is the generic (apt descriptive) name of a television transmission, the subject matter of which exclusively concerns weather (principally the reporting of existing weather conditions and of weather forecasts).