The opinion of the court was delivered by: LOUIS L. STANTON
Plaintiff Richard Bell moves pursuant to Fed. R. Civ. P. 65 for a preliminary injunction enjoining defendants from using, advertising or promoting a telephone number mnemonic which Bell asserts is confusingly similar to his trademarked number.
Richard Bell is an attorney who specializes in personal injury law in the New York area. Mr. Bell's offices can be reached by telephone by dialing, in the (718), (201), or (516) area codes the number 225-5529. Defendant Adam Kidan is a partner in defendant Duncan & Associates, a law firm which also specializes in personal injury law, and practices in the New York area. Duncan & Associates may be reached by dialing its toll-free number, 1-(800) 529-2255.
Bell's number, 225-5529, may be reached by dialing the letters CALL-LAW within the appropriate area codes. Bell has promoted and advertised his services, predominantly in print media, using the CALL-LAW mnemonic for at least eight years. Bell's CALL-LAW mnemonic was registered with the United States Patent and Trademark Office in 1989.
Duncan & Associates' number may be reached by dialing 1-(800) LAW-CALL. Duncan & Associates has advertised its services on radio using the LAW-CALL mnemonic for approximately six months. Kidan filed an application with the United States Patent and Trademark Office to register 1-800 LAW CALL as a trademark. Examination of the application has been completed and the mark was approved for publication and published. Bell commenced this action promptly after learning of the LAW-CALL number.
When a customer reaches Bell's offices by dialing the CALL-LAW number, a receptionist answers by saying "CALL-LAW." When a customer reaches Duncan & Associates by dialing 1-(800) LAW-CALL, a receptionist answers "Duncan & Associates." Both Duncan & Associates and Mr. Bell include the firm name in advertisements featuring the LAW-CALL and CALL-LAW numbers.
Duncan & Associates keeps records of cases obtained by calls from 1-(800) LAW-CALL, and documents how the caller learned of the firm.
"[A] preliminary injunction may be granted only upon a showing of '(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting relief.'" Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985) (quoting Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979)).
Bell has not established a likelihood of success on the merits. While the similarity of CALL-LAW and LAW-CALL is apparent, they must be confusingly similar to warrant an injunction. Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 678 (2d Cir. 1989).
Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961), sets forth the test for likelihood of confusion between two trademarks. The factors are as follows:
1) Strength of the mark. Despite the Patent and Trademark Office's registration of CALL-LAW, it is not a very strong mark, falling in either the "suggestive" or "descriptive" categories. It is easily identifiable as a telephone number which can be used to obtain legal services, but is hardly distinguishable from other similar mnemonic devices, such as L-A-W-Y-E-R-S.
2) Similarity of the marks. CALL-LAW is a toll call, while 1-(800) LAW-CALL is not. That difference is likely to be of significance to potential callers, and serves to differentiate the numbers in a customer's memory. Further, an ordinary customer would expect even slight ...