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October 18, 1994

CBS INC., Plaintiff,


The opinion of the court was delivered by: KEVIN THOMAS DUFFY


 CBS Inc. ("CBS") commenced this action against David and William Liederman ("defendants") alleging trademark infringement, unfair competition, and trademark dilution under the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a), and New York statutory *fn1" and common law. CBS moved for a preliminary injunction and a temporary restraining order preventing the defendants from opening their proposed restaurant, named "Television City."

 Since 1952, CBS has owned and operated "Television City," a facility located in Los Angeles, California designed for the production of television shows. On January 26, 1988, the service mark "Television City" was registered on the Principal Register in the United States Patent and Trademark Office in the name of CBS Inc., as U.S. Service Mark Registration No. 1,474,506. The mark was granted for the following categories: "for television production services" and "for entertainment services, namely the production and distribution of television programs, rental of television production facilities and the providing of tours of production facilities to the public." The facility has a somewhat storied past within American popular culture, having been the home to many of CBS' best television series. Today, many soap operas and game shows are produced at Television City, and hundreds of people descend upon the facility each day in order to be a member of a studio audience. The name "Television City" is shown numerous times each week in connection with these television shows, and can often be heard in the voice-over accompanying each show's introduction. In addition, there is a small retail operation at the facility which sells such memorabilia as T-shirts, pins, watches and the like, each bearing the name "CBS Television City."

 The defendants are restaurateurs, who are in the process of opening a restaurant in New York City using the identical mark, "Television City." The proposed restaurant, which is to be a "theme" restaurant celebrating "the world of television" would be located at Sixth Avenue and 50th Street in Manhattan, directly across the street from Radio City Music Hall. The restaurant would not only serve food, but would have an entire section devoted to the sale of television memorabilia, such as T-shirts, sweatshirts, posters, and the like.

 CBS asserts that the continued promotion and eventual opening of the proposed restaurant will mislead the general public and convey a false impression as to the restaurant's affiliation with CBS. Thus, CBS seeks to preliminarily enjoin defendants' use of the "Television City" mark in connection with their restaurant.


 I Lanham Act Section 32 and Common Law Infringement Claims

 Plaintiff claims trademark infringement under both the Lanham Act and the state common law. Infringement of a registered trademark is prohibited by § 32(1) of the Lanham Act. 15 U.S.C. 1114 (1988). Section 32(1) prohibits the use of a registered trademark without permission, in connection with the sale or advertising of goods or services, in a manner that is likely to cause confusion or mistake or to deceive the purchaser as to the source or sponsorship of the goods. 15 U.S.C. § 1114(1). See Gruner Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993).

 There can be no disputing that CBS is the owner of an incontestable, registered service mark -- at least with regard to television production services. The strength of the mark within the television production field is not questioned. The central issue is whether this mark extends from the television production arena to the restaurant arena. The Second Circuit has held that "the strength of an incontestible registered trademark could be overcome by the use of a descriptive or weak portion of the mark." Gruner Jahr, 991 F.2d at 1077. See also W.W.W. Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 576 (2d Cir. 1993) (incontestable registered trademark for "Sportstick" lip balm was not infringed by Gillette's "Sport Stick" deodorant); Western Pub. Co. v. Rose Art Indus. Inc., 910 F.2d 57, 60 (2d Cir. 1990); Pirone v. MacMillan, Inc., 894 F.2d 579 (2d Cir. 1990) (observing that registration does not remove proper noun from general language or reduce it to exclusive possession of registrant for all purposes). Additionally, "a term that is in one category for a particular product may be in quite a different one for another." Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).

 The standard for granting preliminary injunctive relief in this circuit is well settled. CBS must show "(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 the preliminary relief." Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979) (per curiam). See Hasbro Bradley, Inc. v. Sparkle Toys, Inc., 780 F.2d 189, 192 (2d Cir. 1985).

 (A) Irreparable Harm

 Plaintiff asserts it will suffer irreparable harm from the public confusion it claims will result from defendants' use of their mark. This confusion will be heightened by the fact that other "theme" restaurants in the area are using marks under licensing agreements, and that the public may assume that defendants' restaurant is operated under a similar agreement with plaintiff.

 Defendants argue that there is no possibility of irreparable harm for two reasons. First, they claim that CBS unreasonably delayed in bringing this action, thereby proving that there is no risk of irreparable harm. Second, they claim that CBS attempted to work out a licensing agreement whereby defendants would pay a sum of money in exchange for use of CBS' mark. Defendants argue that such an attempt at settlement is proof that legal remedies are adequate and therefore CBS cannot prove irreparable harm.

 Generally, irreparable harm is assumed in trademark infringement cases, but when the plaintiff unreasonably delays in bringing suit, it can be seen as proof that there was no irreparable harm. See Comic Strip, Inc. v. Fox Television Stations, Inc., 710 F. Supp. 976, 980 (S.D.N.Y. 1989); Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir 1985); MGM-Pathe Communications v. Pink Panther Patrol, 774 F. Supp. 869, 873 (S.D.N.Y. 1991) (citations omitted).

 Defendants' claim of unreasonable delay appears to be without merit. The facts show that CBS first became aware of a plan to use their mark in April, 1993; that at that time they explained to defendants' architect that CBS would protest the use of its mark; and that CBS made attempts to discover the backers of the restaurant plan in order to take action against them. In July 1993, CBS learned from the New York Times that the proposed backers of the restaurant were the defendants, and set about attempting to locate them in order to bring the trademark matter to their attention. After pursuing what amounted to a false lead, CBS' agent finally contacted defendants in December 1993. The two sides exchanged communications regarding a possible settlement, but such discussions were not fruitful. CBS filed suit in March, 1994. This does not appear to be an unreasonable delay that might preclude a showing of unreasonable harm.

 As to the settlement claim, it appears that the fact that CBS was willing to settle the dispute does not mean that no equitable remedy exists. To rule otherwise would result in punishing a party for attempting ...

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