and exhibits upon which they would rely at oral argument, which took place on February 11, 1993. Counsel argued the cause on that date, plaintiff seeking a preliminary injunction and defendant opposing that application. This opinion resolves plaintiff HSC's motion for preliminary injunctive relief.
HSC is a Delaware corporation with its principal place of business in St. Petersburg, Florida. HSC is a self-described national marketer of consumer goods through "interactive retail television," telephone marketing, and national catalogue, telephone and mail order sales.
Among other goods, HSC sells a wide variety of cosmetic products to customers in every state of the Union. For purposes of the definitions contained in 15 U.S.C. § 1127, HSC is a related company to and under common ownership with Home Shopping Network, Inc.; HSC Cosmetics, Inc.; HSC Lifeway Products, Inc.; and HSC Mail Order, Inc., all Florida corporations.
While HSC markets its products in various ways, its primary effort takes place on television. Television viewers who subscribe to a cable television service may obtain, as part of their cable package, the Home Shopping Club Channel. To purchase products advertised on the HSC channel, a consumer must become a member of the Home Shopping Club, but the criteria for membership are not onerous. A club member places an order by telephoning the number displayed on the television screen while the particular product is being touted by one or more members of the HSC sales staff, referred to on the program as "hosts."
On August 5, 1986, Lindow, Ltd., a Connecticut corporation, obtained United States Registration No. 1,403,688 from the United States Patent and Trademark Office for the trademark ESSENCE OF TIME. The ESSENCE OF TIME trademark is described in the registration as being for "cosmetics, namely, skin emollient, in Class 3 (U.S.C. 51)." It is undisputed that in 1991 HSC acquired by assignment from Lindow all rights to the ESSENCE OF TIME trademark and federal registration thereof, as well as the good will associated therewith.
ESSENCE OF TIME skin cream is sold in a 2-ounce jar. It is a light brown color, although that color disappears when the cream is applied to the skin and rubbed into it. According to HSC's televised presentations, the cream is brown because it contains peat, a substance which is said to hold moisture and consequently makes the skin cream a good moisturizer, thereby retarding or preventing the outward manifestations of age. The HSC "hosts" advise the television audience, usually in breathless tones, of the stranger-than-fiction but nonetheless true circumstances giving rise to the cream. Some years ago in England the body of a man was found in what the HSC presentations refer as the "Lindow Moss Peat Bog." At first it was thought that the man was a recent murder victim, but scientific tests demonstrated that he had died 2,500 years ago. His fingernails, skin and hair were remarkably well preserved for a specimen so ancient; and it is claimed that the man was preserved by the peat in the bog. Some entrepreneur, presumably the incorporator of Lindow, Ltd., decided to add what the television presentations refer to as "unblemished Lindow peat moss" to skin cream and market the cream on the theory, in substance, that if the peat could preserve the Lindow Moss Peat Bog Man for 2,500 years, think what it can do for you.
While the HSC television presentations claim that men also find ESSENCE OF TIME beneficial, the product's primary market is women who watch television and have reached that level of maturity when they begin to be concerned by the appearance of aging. HSC markets a number of products under the trademark ESSENCE OF TIME. There is the skin cream which has been described thus far. It is referred to in HSC printed advertisements as a "Night Creme" [sic] and is described as follows:
Proven effective in helping skin maintain a nourished, radiant glow. Smooth on at bedtime and feel the softness and smoothness of your skin after just one application.