upon plaintiffs' good will, and that Dove's adoption of a logo that is similar to the cover design of plaintiffs' The Book of Virtues is likely to contribute to public confusion between the competing works.
Plaintiffs assert claims for relief under Section 43(a) of the Lanham Act, common law trademark infringement and unfair competition, and Section 368-d of the New York General Business Law. Following the commencement of this action, Dove consented to being preliminarily enjoined and restrained from the manufacture, publication, advertisement, distribution and sale of any audio and/or print books under the title(s) The Children's Audiobook of Virtues and/or The Children's Book of Virtues, or any other title confusingly similar to plaintiffs' title and alleged trademark "The Book of Virtues", conditioned on plaintiffs' posting a $ 500,000 bond. Defendants, however, deny liability under plaintiffs' claims. Defendants have moved for judgment on the pleadings, pursuant to Federal Rule of Civil Procedure 12(c), on the grounds that (1) plaintiffs' mark is generic and therefore not entitled to protection under the Lanham Act, (2) alternatively, plaintiffs' mark is descriptive and lacks secondary meaning, and (3) the finding of a likelihood of confusion must be, and is not, particularly compelling to outweigh defendant's First Amendment interest in utilizing its chosen titles. Plaintiffs take the position that their alleged "The Book of Virtues" mark is suggestive, not generic, and that plaintiffs have sufficiently pleaded secondary meaning of the mark and a likelihood of confusion between the parties' titles.
On a Rule 12(c) motion, Dove is entitled to judgment on the pleadings "only if it has established that no material issue of fact remains to be resolved and that it is entitled to judgment as a matter of law." Juster Assocs. v. Rutland, 901 F.2d 266, 269 (2d Cir. 1990) (internal quotations and citations omitted). Moreover, the Court must view all facts and allegations in the Complaint in the light most favorable to plaintiffs. Id.
I. Protectability of the Mark
Section 43(a) of the Lanham Act proscribes "false designation of origin, or any false description or representation" in relation to goods or services. 15 U.S.C. § 1125(a). This section is the only provision in the Lanham Act that protects an unregistered mark. Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1220 (2d Cir. 1987). Its purpose is "to prevent consumer confusion regarding a product's source and to enable those that fashion a product to differentiate it from others on the market. In that way producers create goodwill with consumers." Id. (citations omitted).
Dove contends that plaintiffs cannot prevail on their Lanham Act claim because their alleged mark "The Book of Virtues" is generic. Plaintiffs take the position that their mark is suggestive, or at the very least descriptive and secondary meaning has been adequately alleged. Where, as here, the mark has not been registered, plaintiffs bear the burden of showing that the mark is not generic. Reese Publishing Co., Inc. v. Hampton Int'l Communications, Inc., 620 F.2d 7, 11 (2d Cir. 1980).
There are four different categories of terms with respect to trademark protection. "Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful." Abercrombie & Fitch Co. v. Hunting World. Inc., 537 F.2d 4, 9 (2d Cir. 1976). A generic term is "one that refers, or has come to be understood as referring, to the genus of which the particular product is a species," id., such as "soap", "cereal" or "automobile". See Gruner & Jahr U.S.A. Publishing v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993) ("A generic term is a common name, like automobile or aspirin, that describes a kind of product"). In Abercrombie & Fitch, the court gave the following example: "'Ivory' would be generic when used to describe a product made from the tusks of elephants but arbitrary as applied to soap." 537 F.2d at 9 at n. 6. A generic term is not subject to trademark protection for the logical reason that, if it were, "this in effect would confer a monopoly not only of the mark but of the product by rendering a competitor unable effectively to name what it was endeavoring to sell." Id. at 10; see also Girl Scouts v. Bantam Doubleday Dell Publishing Group, Inc., 808 F. Supp. 1112, 1124 n. 18 (S.D.N.Y. 1992), aff'd, 996 F.2d 1477 (2d Cir. 1993) ("It would be difficult to write about a children's youth organization engaged in activities like sports, crafts, and helping others, and to attain the reading audience's near-universal recognition of the book's subject, without using the term 'scout.'")
In contrast, a descriptive term conveys an immediate idea of the ingredients, qualities or characteristics of the goods, and is eligible for trademark protection if it has "become distinctive of the applicant's goods in commerce," 15 U.S.C. § 1052(f), or, in other words, if it has acquired secondary meaning. Girl Scouts, 808 F. Supp. at 1123. Whereas, "[a] term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods." Abercrombie & Fitch, 537 F.2d at 10. Ordinarily, a suggestive mark is entitled to trademark protection without any showing of secondary meaning because it is inherently distinctive; however, the Second Circuit has applied a more stringent rule to literary titles, requiring the trademark owner to demonstrate secondary meaning regardless of the suggestive nature of the title. Twin Peaks Productions, Inc. v. Publications Int'l, Ltd., 996 F.2d 1366, 1378 n. 4 (2d Cir. 1993). A showing of secondary meaning cannot, in any event, transform a generic term into a protectable trademark. Reese Publishing Co., 620 F.2d at 12.
Dove argues that books of virtues, of which plaintiffs' book is one, have been a literary convention since the days of St. Thomas Aquinas and his published work "Of Virtues." Included in this "genus", defendant suggests, are works such as Plato's "Apology", John Milton's "Areopagitica", Immanuel Kant's "Critique of Practical Reason" and "Metaphysical Elements" (chapter XIV of which is entitled "Of Virtues"), as well as the Bible and The Book of Mormon. Dove claims that plaintiffs' and defendant's titles--"The Book of Virtues", "The Children's Audiobook of Virtues" and "The Children's Book of Virtues"--precisely describe the contents of the works, as various species of the genus referred to above.
Dove refers the Court to the Second Circuit's decision in Reese Publishing Co. v. Hampton Int'l Communications, supra, in which the court found the title "Video Buyer's Guide" to be generic as applied to a publication that reported on and promoted the sale of video products. Similarly, in CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11 (2d Cir. 1975), the court determined that the title "Consumer Electronics Monthly" was not a protectable trademark because "consumer electronics" was a generic term describing consumer electronic products and was the name of a trade or industry. The CES court observed that
it is hard to think of a name for a magazine, directed deliberately and effectively to industry personnel which more accurately names the class of trade magazines within that industry than one which simply gives itself the name of the trade plus the word "Monthly."