The opinion of the court was delivered by: KENNETH CONBOY
KENNETH CONBOY, DISTRICT JUDGE:
The plaintiff, GMT Productions, L.P. ("GMT"), brought this action against the defendant, Cablevision of New York City, Inc. ("Cablevision"), seeking protection for an unregistered mark, "The Arabic Channel." The defendant has moved to dismiss the complaint on the ground that plaintiff has failed to state a claim upon which relief can be granted, or, in the alternative, to grant summary judgment on the ground that there is no genuine issue of material fact. For the reasons set forth below, the Court grants defendant's summary judgment motion as to Count I of the complaint and dismisses Counts II and III for lack of jurisdiction.
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 ...