The opinion of the court was delivered by: ROBERT L. CARTER
Plaintiff is a limited partnership involved in all aspects of creating and developing cable television networks. Plaintiff has recently developed a home shopping television channel focusing on lifestyles, fashion, home life and beauty, and related materials such as motion pictures, video discs, cassettes, a magazine and a line of clothing under the service marks "Catalogue TV" and "Catalogue Channel." For an unspecified period of time, plaintiff has been using these marks in the promotion and development of its business, and has brought its programming and business ideas to the attention of investors, cable operators, vendors, individuals and organizations in various industries, including retailing and television. Plaintiff plans to begin broadcasting its network on February 28, 1994.
On June 12, 1992 plaintiff filed an application with the U.S. Patent and Trademark Office ("PTO") to register the name "Catalogue TV" in Classes 38 and 41 for use in connection with broadcasting, producing and distributing television programs. Plaintiff also filed on that date applications to register the mark "Catalogue TV" in classes 9, 16 and 25 for related goods described above. In June, 1993, plaintiff filed applications to register the service mark "Catalogue Channel" in classes 9, 38 and 41 also for broadcasting, producing and distributing television programs. By documents dated October 27, 1993 and November 11, 1993,
the PTO refused plaintiff's application to register "Catalogue TV" and "Catalogue Channel" as service marks because they were merely descriptive. (Def's Memorandum of Law, Exhibits A and B.) However in a later document dated February 3, 1994, which followed plaintiff's amendments to its application, the PTO withdrew its rejection of plaintiff's application to register the "Catalogue TV" mark.
Notwithstanding plaintiff's plans to create its home shopping network, newspaper articles appearing in the September 28, 1993 editions of The New York Times and USA Today reported defendants' intention of creating a home shopping cable television network to be called "Catalog Channel."
Upon learning of defendants' plans, plaintiff demanded that defendants not use the "Catalog Channel" mark because of its confusing similarity to plaintiff's mark "Catalogue Channel" and the resulting harm its use would cause. Defendants, however, rejected this demand, claiming that they are free to use the mark "Catalog Channel." In fact, in the past month defendants have announced that they have entered into a joint venture to create a home shopping television cable channel to be called "Catalog 1," which will begin airing in a limited four market test beginning on March 1, 1994.
In order to obtain injunctive relief, a party must demonstrate irreparable harm and "either (1) a 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 in the movant's favor." Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 74 (2d Cir. 1985). While plaintiff focuses primarily on the irreparable harm that it will suffer unless defendants are enjoined from using the "Catalog 1" mark, the court need not address this issue as it finds that the plaintiff is unable to demonstrate either a likelihood of success on the merits or that the balance of hardships tips decidedly in its favor.
Plaintiff's contention that there is a likelihood that it will succeed on the merits is based primarily on its assertion that it has priority interest in the mark because it adopted and used the names "Catalogue Channel" and "Catalogue TV" before the defendants, and that it has continuously used these names in developing, promoting and advertising a home shopping cable television channel. Defendants, however, argue that plaintiff has never made use of its purported service marks,
and therefore has no basis for asserting claims for false designation of origin under the Section 43(a) of the Lanham Act or common law trademark infringement and unfair competition.
To recover for a violation of Section 43(a) of the Lanham Act,
a party need not establish that a mark is registered; however it must demonstrate that it has a reasonable interest to be protected against false advertising. A party may establish such a reasonable interest by a showing of an intent to adopt the mark as a trademark and first "bona fide" use of the mark in commerce. Windows User, Inc. v. Reed Business Pub. Ltd., 795 F. Supp. 103, 106-107. (S.D.N.Y. 1992) (Knapp, J.) See also New England Duplicating Co. v. Mendes, 190 F.2d 415, 417 (1st Cir. 1951) ("the exclusive right to the use of a mark . . . claimed as a trademark is founded on priority of appropriation; that is to say, the claimant of the trade-mark must have been the first to employ or use the same . . .") (quoting Columbia Mill Co. v. Alcorn, 150 U.S. 460, 463, 37 L. Ed. 1144, 14 S. Ct. 151 (1893)). The question of use adequate to establish appropriation is one to be decided on the facts of each case, Windows User, 795 F. Supp. at 109 (citing Mendes, 190 F.2d at 418), and the court must look to the totality of a party's actions to determine if it has established priority rights in the use of a trademark. New West Corp. v. NYM Co. of California, 595 F.2d 1194, 1200 (9th Cir. 1979).
While it is true that plaintiff's applications to register the mark demonstrates its intention to adopt the "Catalogue" mark as a trademark, plaintiff's promotional efforts are not adequate to establish use of the mark in commerce, which requires the use to be "sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark." Windows User, 795 F. Supp. at 108 (quoting Mendes, 190 F.2d at 417). There is no evidence on the record that the viewing public, the segment of the population presumably targeted by the television channel, has ever had a chance to become acquainted with the "Catalogue" mark because the network has not yet begun broadcasting. As such, plaintiff could not have created a sufficient association in the public mind between the mark and its source. See, e.g., Windows User, 795 F. Supp. at 108-109 (magazine publisher not entitled to preliminary injunction where plaintiff failed to show it was likely to establish first bona fide use of the mark despite its advertisements and promotional activities); Future Domain Corp. v. Trantor Syst. Ltd., 1993 U.S. Dist. LEXIS 9177, 27 U.S.P.Q.2D (BNA) 1289 (N.D. Cal. 1993) (computer software manufacturer's promotion of a mark at a trade show where at most 7,000 persons actually received or requested information about the mark and where no orders were taken not sufficient to create an association between the manufacturer and the mark in the public mind).