CBS complex in California, and is not open to the public. Defendants' proposed restaurant is in New York City. CBS' maintenance of an on-site cafeteria for its workers is not sufficient to entitle it to protection under its mark. The on-site facility differs dramatically from that of the proposed restaurant, and does not mean that plaintiff has entered the restaurant business. In fact, the cafeteria is not being operated by CBS at all. Rather, it is run by Marriott through a contract with CBS. Clearly, these two eating establishments would not in any way compete with each other, and this argument is without merit.
(5) Actual Confusion
This factor pertains to whether any consumers have actually been misled by the similarity of the two marks. In this case there has been no realistic opportunity for actual confusion because defendants' restaurant has not yet opened. While it was argued that reports of defendants' proposed restaurant have appeared numerous times in the media without mention of CBS' mark, this factor does not seem to favor either side. CBS acted before the restaurant opened and any actual confusion could arise, and it should not be penalized for so doing. Actual confusion is not an essential element in order to prevail under the Lanham Act, since actual confusion is very difficult to prove and the Act requires only a likelihood of confusion as to source. "It would be unfair to penalize appellee for acting to protect its trademark rights before serious damage has occurred." Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 875 (2d Cir. 1986) (citation omitted). Therefore, this factor favors neither party.
(6) Junior User's Bad Faith
This factor looks to whether the defendants "adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between [defendant's] and the senior user's product." W.W.W. Pharmaceutical, 984 F.2d at 575 (quoting Lang v. Retirement Living Pub. Co., 949 F.2d 576, 583 (2d Cir. 1991) (citation omitted)). In the present case, while CBS argues for bad faith to be inferred, it fails to put forth any evidence that defendants chose this particular mark with the intent of capitalizing on any goodwill which CBS had acquired. See W.W.W. Pharmaceutical Co., Inc., 984 F.2d at 575 ("[Plaintiff] has not put forth any evidence that [defendant] intended to promote confusion between the products or appropriate [plaintiff's] good will and therefore has not shown any bad faith on [defendant's] part."). Without more, it appears that defendants did not act in bad faith and this factor does not favor either side.
(7) Quality of Junior User's Product
While defendants' restaurant is not yet open, there is no evidence to suggest that it will be anything but top quality.
CBS acknowledges this fact, yet makes the point that "[A] senior user is entitled 'to protect its reputation even where the infringer's goods are of top quality.'" Berkshire Fashions, Inc. v. Sara Lee Corp., 725 F. Supp. 790, 799 (S.D.N.Y. 1989) (quoting Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 259-60 (2d Cir. 1987). However, because defendants' restaurant has not yet been opened, any discussion of the quality of the defendants' product would be speculative and the issue will not be addressed.
(8) Sophistication of the Consumers
"As a general rule, sophistication of the consumer is a factor that will weigh against a finding of likelihood of confusion." Comic Strip, Inc., 710 F. Supp. at 980 (citation omitted). Defendants' potential customers will be drawn from the general public and thus cannot be said to have unique qualities or sophistication. In fact, the only generalization which it would be possible to make regarding the restaurant's clientele is that many of them will undoubtedly be television watchers.
CBS claims the areas are related on a broader scope. It claims that CBS Television City is a tourist attraction, as is the defendants' proposed restaurant. This argument assumes the court is willing to broaden the scope of the fields to a point at which there will be a relationship. However, an analysis of the primary function of each party's business is more appropriate. The primary function of the studio is to produce television programs, and this is attractive to the public. On the other hand, the primary function of the restaurant is to attract the public by way of a theme into their restaurant to eat. In other words, the latter endeavor relies on public tourism for its livelihood while the former does not.
Applying the Polaroid factors to the instant case, the court finds that there is no showing of likelihood of confusion sufficient enough to warrant the issuance of a preliminary injunction. The plaintiff has not demonstrated a likelihood of success on the merits nor sufficiently serious questions warranting litigation. CBS's mark protects it in the field of television production services. The mark does not insure its exclusive use of the mark "Television City" in all markets and all products.
II. Lanham Act Section 43a and Common Law Unfair Competition Claims
As to plaintiff's claims under the Lanham Act, 15 U.S.C. 1125, and under common law, plaintiff failed to prove elements essential to recovery. In order to prevail on a claim for unfair competition, plaintiff must show actual public confusion of the defendants' product with the plaintiff's product to recover money damages. Alternatively, plaintiff must show a likelihood of success on the merits in order to get injunctive relief. See W.W.W. Pharmaceutical, 984 F.2d at 576. As discussed earlier, the plaintiff failed to sustain either showing. Plaintiff is not seeking money damages and, as discussed earlier, has failed to prove a likelihood of confusion of the two "Television Cities."
III. New York Anti-Dilution and Injury to Reputation Claims
Plaintiff also claims dilution of its mark under New York statutory authority. N.Y. Gen. Bus. L. § 368-d (McKinney 1984). Such a claim "rests on the allegation that a defendant is attempting to 'feed on the business reputation of an established distinctive trademark name.'" W.W.W. Pharmaceutical, 984 F.2d at 576 (quoting Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 545, 399 N.Y.S.2d 628, 632, 369 N.E.2d 1162, 1165 (1977)).
There are three elements to a dilution claim:
(1) distinctiveness of the mark, either that the mark is "truly of distinctive quality" or has acquired secondary meaning in the eyes of the public;
(2) likelihood of dilution, either as a result of blurring of product identification or the tarnishing of an affirmative association that a mark has come to convey; and