Likelihood of Success on the Merits
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).
On the facts of this case, it is clear that plaintiff has not established a likelihood that it will succeed on the merits because it has not demonstrated the requisite first bona fide use of the mark "Catalogue" in commerce.
The Balance of Hardships
Even if plaintiff could establish that sufficiently serious questions go to the merits of its case, the balance of the hardships does not decidedly weigh in favor of granting injunctive relief. Although plaintiff argues that it will suffer irreparable harm if the injunction is not granted, there is no basis on which it can claim such injury since plaintiff has not established that it has used the marks in commerce. In fact, as both plaintiff and defendants have presumably engaged in significant efforts in preparing their respective channels for broadcast, it would be unfair to deny defendants the right to use the "Catalog" mark since plaintiff has not established a priority interest in it. Indeed, even if plaintiff were somehow able to establish its mark at a later date, permitting defendants to use the "Catalog" mark at this time does not irreparably damage plaintiff's ability to present its own program. Although plaintiff might lose potential viewers to defendants' channel, nothing stops plaintiff from pursuing a marketing strategy aimed at distinguishing its channel from defendants'. See Windows User, 795 F. Supp. at 110. Therefore, considering the particular circumstances of this case, the balance of hardships does not warrant granting a preliminary injunction at this time. Accordingly, for all the above reasons, plaintiff's motion for a preliminary injunction is denied, and the court need not consider plaintiff's request for expedited discovery.
IT IS SO ORDERED.
Dated: New York, New York
February 18, 1994
Robert L. Carter