The opinion of the court was delivered by: JOHN G. KOELTL
John G. Koeltl, District Judge:
Russian Kurier, Inc., publisher of the newspaper Kurier, seeks a preliminary injunction enjoining Russian American Courier, Inc. and its principal owner, Jeffrey Kats,
publishers of the newspaper New York Kurier, from printing any newspaper using the word "Kurier" in its title or using any confusingly similar word.
For the reasons stated below, the motion for a preliminary injunction is granted.
After reviewing the parties' submissions including the affidavits submitted by both sides, the Court held a hearing and heard oral argument. None of the parties offered any additional evidence. The Court now makes the following findings of fact and conclusions of law pursuant to Fed. R. Civ. P. 52(a).
Both the plaintiff's newspaper, Kurier, and the defendants' newspaper, New York Kurier, are printed in Russian and cater to the Russian-American community in New York City. The plaintiff has published Kurier since 1992. The paper, which sells for fifty cents a copy, has achieved a circulation of 20,000 copies per week and monthly revenues from advertising and sales in excess of $ 40,000. The defendants have published New York Kurier since March 1995. It sells for twenty-five cents a copy and on several occasions has obtained a circulation of 10,000 copies per week. Authentic examples of the masthead of each paper have been submitted by the defendants. (Kats Aff. Ex. 1 (New York Kurier), Ex. 2 (Kurier).)
The plaintiff has submitted affidavits from five individuals who claim to have mistaken New York Kurier for Kurier. On the basis of these affidavits, the Court finds that there has been some actual confusion as to the origin of New York Kurier among consumers.
The defendants have submitted the masthead of another Russian language newspaper published in New York that uses the word "kurier" in its title. (Kats Aff. Ex. 4.) The plaintiff credibly affirms that it has granted this newspaper permission to use the mark.
To prevail on a motion for a preliminary injunction, the party requesting relief must show:
(1) the likelihood of irreparable injury, and (2) either (a) likelihood of success on the merits, or (b) sufficiently serious questions going to the merits and a balance of hardships tipping decidedly in the movant's favor.
Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 967 (2d Cir. 1995); Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 122 (2d Cir. 1994); Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979). For the reasons stated below, the Court finds that the plaintiff has shown a likelihood of success on the merits, irreparable harm, and that the balance of the hardships tips decidedly in its favor.
A. Likelihood of Success - Lanham Act § 43(a):
The plaintiff has shown a likelihood of success on its claim for trademark infringement pursuant to § 43(a)(1) of the Lanham Act. Section 43(a)(1) provides a means by which unregistered marks, names, and trade dress may be protected.
It states, in relevant part, that:
(a)(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of ...