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BIGSTAR ENTERTAINMENT, INC. v. NEXT BIG STAR

April 17, 2000

BIGSTAR ENTERTAINMENT, INC., PLAINTIFF,
V.
NEXT BIG STAR, INC., NEXT BIG STAR L.L.C., VICTORY ENTERTAINMENT CORPORATION AND MICHAEL H. GERBER, DEFENDANTS.



The opinion of the court was delivered by: Marrero, District Judge.

    DECISION AND ORDER

BigStar Entertainment, Inc. ("BigStar"), plaintiff in this action for a preliminary injunction, seeks to restrain Next Big Star, Inc. and related defendants (collectively, "Next Big Star") from using a name that plaintiff contends infringes on BigStar's prior trademark rights. BigStar's business for over two years has been principally the sale of videos, offered along with free information about the film industry, chat rooms and interviews with movie celebrities, all conducted online through the World Wide Web at "www.bigstar.com". Next Big Star was launched recently to conduct an entertainment talent search. For this purpose, defendants established a website at "www.nextbigstar.com" through which they plan to conduct their talent contest and offer related information, chat rooms and interviews with celebrities.

The case, typical of many trademark disputes, reaches to the fringes of the subtleties that very often enter into what is in a name and manifests the weighty consequences associated with the choice. The parties' legal quarrels here, and the issues they raise, are familiar. But the controversy adds the dimension of cyberspace. It joins the ranks of the exponential number of legal struggles arising out of the use of the Internet — as a mass medium of communication and commerce, and, more and more prolific as consumers and markets expand and competing users clash, as an incubator of lawsuits. Many among this rapidly growing variety of cases raise knotty issues, some of them novel. Do these online collisions pose new, unique difficulties to the law? To what extent do the distinct dimensions of the World Wide Web challenge the established concepts and methods developed to resolve legal conflicts arising from other media? Do the familiar approaches suffice to accommodate analysis of unaccustomed aspects of the new disputes? The case before the Court prompts some of these questions, aspects of which have not been fully addressed in this Circuit.

The Court, having reviewed the parties' papers raising some of these issues, and having heard oral argument, sets forth its findings of fact and conclusions of law in accordance with Rule 52(a) of the Federal Rules of Civil Procedure. For the reasons described below, this Court has concluded that BigStar, though first in time as between these parties to stake out its name, trademark and web domain, has not met the legal burden to establish it is entitled to enjoin Next Big Star at this stage of these proceedings.

I. FINDINGS OF FACT*fn1

The facts before this Court are undisputed. The parties' disagreement is limited to the application of relevant legal standards to these facts.

BigStar, a Delaware corporation with an office in New York, has its principal address in cyberspace at "www.bigstar.com". There it operates as an online retailer dedicated exclusively to filmed entertainment products such as videocassettes, digital video discs ("DVDs") and related movie merchandise. Plaintiff's website also provides its visitors with movie industry news, interviews with celebrities, movie previews and periodic online chats in real time with film celebrities.

Plaintiff has used variations of its name as trademarks and in a logo to identify its "Movie Superstore" on the Internet since its incorporation in March 1998 and has used and advertised its name and domain address since the launching of its website in May of 1998. Its website logo contains the words "bigstar.com" and appears in black ("bigstar") and red (".com"). A five-pointed red star is used to dot the "i", and a light bluish-grey trail evinces that the star has streaked across the top of the logo to the left from the right.

Plaintiff filed applications for trademark registration protection with the Patent and Trademark Office ("PTO") in October 1998 for "BIGSTAR" and in May 1999 for "BIGSTAR.COM". These applications remain pending. While no opposition to them has been filed to date, at least two parties, including defendants herein, have requested additional time from the PTO within which to consider whether to file a Notice of Opposition to plaintiff's marks. Plaintiff states it has spent over $12 million to date on marketing BigStar's name and products, by virtue of which it contends its trademarks have become well known and established in the market in which they operate. According to plaintiff, it received over 3 million unique visits to its website in January 2000.

In December 1999, BigStar formed an alliance with Value Vision International Inc. ("Value Vision") and announced a venture into the offline world, where it hopes to produce a weekly television program for Value Vision's cable network. BigStar's show, to be called "THE BIGSTAR SHOW" will consist of human interest stories about film celebrities and their movies and will offer plaintiff's merchandise for sale. Plaintiff has also filed with the PTO an application to register "THE BIGSTAR SHOW" in connection with its television production.

Defendants Next Big Star, Inc. and Next Big Star L.L.C. are corporations organized in December 1999 and January 2000, respectively, under the laws of the state of Delaware. Both entities are involved with defendant Victory Entertainment Corporation, a multimedia company incorporated in Florida, in the development, sponsorship and production of an online talent competition to be conducted and judged on the Internet and of a related network television program to be produced quarterly in order to introduce the competition winners. Defendant Michael H. Gerber is a New York resident who serves as president and chief executive officer of Victory Entertainment Corporation, and as senior executive of the other corporate defendants. Mr. Gerber assisted with the creation of the "Next Big Star" mark*fn2 and the implementation of the talent search venture.

The defendants, in or about October 1999, approached Ed McMahon, a television personality who was previously associated with The Tonight Show and who had hosted a talent competition on national television called Star Search, in an attempt to enlist him in their enterprise. Mr. McMahon joined forces with the defendants and, from November 1999 through January 2000, helped them design the contest, television show and website.

On January 25, 2000, defendants issued a press release promoting their new online talent competition and related television program and the launching of "www.nextbigstar.com" as the site for the competition. Defendants claim that their website received 4.75 million "hits" in the weeks immediately following the announcement of their venture.

Defendants' logo, which was revised shortly after this litigation commenced as a direct result of plaintiff's instant application, now contains the words "ED McMAHON'S nextbigstar.com", the first half of which appears in white or red ("ED McMAHON'S"), with the other words in yellow ("nextbigstar" and "com"). It, too, has a five point red star, but here the star replaces the period in ".com", above which there is a long triangular red mark designed to resemble the upward beam of a searchlight.

Defendants' website celebrity interviews, along with the information there provided, are intended primarily to promote the talent search and encourage participation. Defendants are also sponsoring a national bus tour to search for talent and, to this end, were scheduled to start visiting some 40 cities in March 2000. Persons interested in entering the competition, whether enlisted by promotion online or through the bus tour, may select the category that best fits their skills from the many choices offered by defendants, such as music, comedy, dance and modeling. The aspiring performer is invited to complete and sign an entry form which may be copied from the website and submitted to defendants, along with a registration fee of $19.95 and a self-produced videotaped performance.

Performances are to be displayed on the Internet for judging by individuals at home who may download, view and vote on them. Under defendants' plan, the online contest winners are to appear on a nationally televised competition to be broadcast four times a year on a major network. The television contest, which is to be called "The Next Big Star Show", is to be hosted by Mr. McMahon and will be simulcast on the World Wide Web. Performers who reach the television competition are eligible to win cash awards up to $10,000.00 and other prizes.

Plaintiff, upon learning of defendants' plans as announced on January 25, 2000, moved on February 7, 2000 for a preliminary injunction under Rule 65 of the Federal Rules of Civil Procedure to restrain defendants from (a) using "Next Big Star" or "nextbigstar.com" as a trademark, trade name, Internet domain name or as part of a logo in connection with their new online talent competition or related television program and (b) taking any other actions designed or intended to infringe and dilute the value of plaintiff's trademarks, logo and domain name. This Court heard oral argument on February 22, 2000.

II. CONCLUSIONS OF LAW

A preliminary injunction is an extraordinary equitable remedy which places on the movant the burden of proving each element requisite for such relief. The decision to grant a preliminary injunction rests within the sound discretion of the Court. To obtain a preliminary injunction in this Circuit, the moving party must show (1) irreparable harm and (2) either (a) a likelihood of success on the merits, or (b) 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. See Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir. 1979). We now consider whether plaintiff has met its burden, addressing the second requirement first for reasons later explained.

A. Likelihood Of Plaintiffs Success On The Merits

A preliminary injunction may issue only if the Court finds that the movant is likely to prevail on the merits of the underlying controversy. The movant need not show that success is certain, only that the probability of prevailing is "better than fifty percent." Wali v. Coughlin, 754 F.2d 1015, 1025 (2d Cir. 1985). Plaintiffs complaint sets forth five claims, each of which we address in turn.

(1) Trademark Infringement Claim Under § 43(a) of the Lanham Act

Neither plaintiff's "BIGSTAR" nor "BIGSTAR.COM" is a registered trademark. Although plaintiff has filed for registration, its applications are still pending. Nonetheless, unregistered marks may qualify for protection under section 43(a) of the Lanham Act, which provides in pertinent part:

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 . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive . . . as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a)(1).

The Second Circuit has noted that "eligibility for and scope of protection under section 43(a) . . . is dependent on the nature of the mark allegedly infringed. . . ." Western Publ'g Co., Inc. v. Rose Art Indus., Inc., 910 F.2d 57, 60 (2d Cir. 1990). As in any case under section 43(a), once the strength of plaintiffs marks is identified, the focus turns to whether defendants' commercial name or symbol is likely to cause confusion among consumers as to the source, origin or sponsorship of plaintiffs goods due to any similarity between the respective marks.

The likelihood of confusion as to a product's source is evaluated by balancing the eight factors set forth in Judge Friendly's seminal opinion in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). In considering plaintiffs claim here, this Court thus must examine the

function of many variables: the strength of [its] mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant[s'] good faith in adopting its own mark, the quality of defendant[s'] product, and the sophistication of the buyers.

Id. at 495. No single one of these factors is determinative, and this Court may consider additional factors if appropriate. Id.

(1) Strength of Plaintiff's Marks

Plaintiff must establish that its trademarks fall within one of the classes of marks recognized as eligible for protection under section 43(a) of the Lanham Act. In order to determine whether plaintiff's marks are entitled to protection, the Court must initially classify the marks by looking to their strength, bearing in mind that the purpose of trademark law is to establish the rights of the creators and users of commercial names, while also protecting the general public from confusion, mistake or deception that may flow from the copying of a mark which, through distinctiveness, identifies the origin of the products so branded. See W.E. Bassett Co. v. Revlon, Inc., 354 F.2d 868, 871 (2d Cir. 1966).

A mark's strength is measured by two factors: "(1) the degree to which it is inherently distinctive; and (2) the degree to which it is distinctive in the marketplace." W.W.W. Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993) (citing McGregor-Doniger, Inc. v. Drizzle Inc., 599 F.2d 1126, 1131-33 (2d Cir. 1979)). And this is where the word battles here begin. The parties sharply disagree on the strength of plaintiffs trademarks. BigStar contends that its marks are inherently distinctive and should be classified as arbitrary or fanciful, or at least as suggestive. Memorandum in Support of Plaintiff's Motion for a Preliminary Injunction ("Plaintiff's Memorandum") at 11. Next Big Star argues that BigStar's marks are generic or descriptive, or perhaps "at most" suggestive. Defendants' Memorandum at 6-8. Each of these designations carries distinct rank with legal implications on which the case may turn. What label the law pins on the marks can make all the difference.

What goes into a product name or symbol is often charged with nuances. Precisely for this reason, trademark law abounds with elaborate semantics and fine distinctions that test the limits of parsing the language, rendering judgments among competing claimants in disputes about commercial marks always an exacting and perplexing challenge. "Razor-thin judgment calls are indigenous to the law of trademark protection." Thompson Med. Co., Inc. v. Pfizer Inc., 753 F.2d 208, 212 (2d Cir. 1985). Through the rambles and tangles of words, and through the niceties and bewilderment peculiar to this area of the law, however, certain order and logic and purposes do emerge, even if at times only impressionistically. These points of light help illuminate the ends that the law strives to achieve, as well as the priorities it recognizes and protects. The challenge entailed in resolving the conflicting claims at issue in this case may be eased somewhat if the analysis of the decision to be made is formulated against a backdrop of the theory and intent of the law in this area, on the conceptual framework and accompanying legal principles upon which trademark and unfair competition rules are founded.

A close reading of pertinent cases, statutes and commentary suggests some of the basic ends trademark law seeks to achieve and the values it strives to promote and protect. Most prominent among these are to encourage honest business competition and to recognize and reward commercial creativity, investment, diligence, initiative and good faith, weighed against certain interests of the public, when making purchasing choices, to be protected from confusion, mistake and deception. As the discussion below indicates, the rank the law assigns to a name or mark chosen for use in trade, along with the accompanying level of protection, varies in direct proportion to the presence of these equities. Implicitly, if not expressly articulated, the probability of inherent distinctiveness injected into a choice of a commercial name and the foreseeability of its exclusivity also bear significantly in establishing the scope of recognition and protection to which a trademark is eligible.

Language is rich, and English more bountiful than most in this regard. The wealth of our tongue consists of an almost limitless number of words, alone or in combination, placed at our disposal to name persons, places and things. And when the known nomenclature falls short, when the existing or familiar vocabulary just will not do to serve a purpose calling for a special term, only the frontiers of human ingenuity contain the possibilities to adapt a common word to an uncommon use, to borrow one from a foreign language or to invent one altogether for the given need perceived. Moreover, together with the name, the graphic logos designed to identify products and link them to their source further enlarge the range of signature possibilities to still more expansive dimensions.

And yet, the law abounds with conflicts about names given to things. For, from among the abundance of opportunities available, the selection of a term or symbol used to describe an article in trade is fraught with legal meaning, often also with potentially fateful consequences. To this end, the options that language aided by imagination offers are vast, ranging from the mundane to the sublime, from the known, clear and familiar to the abstract, the allusive, the symbolic, the figurative, the fancied or entirely improvised. Within that broad compass, trademark choices generally follow patterns that fall within a spectrum of two extremes.

At a far end, one approach strives deliberately for uniqueness and inherent distinction. It does so by purposefully employing rare or coined terms or using ordinary words in unusual ways. This choice may be grounded on several objectives. It recognizes that the more effort, creativity and resources invested to produce and establish the name or mark, the greater the probabilities are that another person, honestly and truly, genuinely by happenstance, will not chance upon identical or similar words to brand a comparable product in the same or near market. That farther reach extended to tap imagination works to extract what is farther out of range and to protect against the odds of duplication. It thus may not only serve the purpose of diminishing the likelihood of infringement, but may also guard against the prospect that the public may confuse the item or its source with another one. And, should the name sufficiently stir the fancy of customers for which the product is intended, the considered choice of the unconventional way, like the propitious tide in human affairs, may lead on to fortune. It could reap rewards for the rightful holder of the mark. If the trademark catches on, if by its ingenuity or singularity it captures the imagination and embeds in the mind of the public, it could firmly establish the distinctiveness of the article and others similarly named by the same producer, thereby advancing the identity and markets of the source. In this manner, the originality summoned to give the product its name may generate its own recompense.

Uniqueness and distinctive identity, however, have their limitations. Inventiveness does not spontaneously spawn recognition. Nor does it necessarily create a following for any given goods. Public acceptance and allegiance must be purchased, at a price generally proportionate to the degree of novelty of the trademark and product and the unfamiliarity of their origin. Accordingly, however inspired and felicitous the mark may be, it takes a greater investment of capital, energy and time, as well as higher-stake risk, to establish a market in a product sold under a brand that identifies neither the article, the market nor the source. And, once achieved, success inevitably invites parasitic imitation or outright copying. Good fortune attracts piracy to the fruits of creativity.

The course at the other end of the spectrum lessens some of these obstacles and risks. It offers the somewhat easier and quicker way to product recognition and source identity. This shortcut entails a choice of the road most taken by entrepreneurs searching for trademarks and names. It is that of using names that rely on common terms, on marks that display little linguistic flair or frills, nothing fancy that demands stirring an associational flight into imagination either on the part of the creator or the purchaser of the goods so named. By sticking with the familiar and employing self-advertising, ordinary description, these marks readily identify the item sold or its market and maker. A product whose name hawks what it is sells itself. Because the trademark rides on the coattails of the product itself, or easily identifies the seller and what is being sold, relatively less time and investment generally may be necessary to create a loyal market for the goods.

But the commonplace, too, has its inherent deficiencies. And here the laws of probability and foreseeability come into play to yield reverse results. Where the distinctive trademark route might lead to fortune, remarkably the beaten path more often taken may end at the intersection with the law's equivalent of the road to the poorhouse — potential litigation. Reliance on conventional, pervasive terms to label a product reduces the likelihood that consumers would be confused by products similarly named in a competing market. This result obtains in part because the undistinguished name raises the probability of chance duplication, rendering it both more likely and foreseeable that another person, acting entirely independently and in good faith, may strike upon the same word or notion to brand a potentially competing product in a potentially competing market. As the chances of foreseeable, honest trademark duplication rises, the element of surprise to consumers and to merchants, as well as their realistic expectation about the singularity and distinctiveness of the trademark in question, should lessen. In this manner, therefore, the business judgment to settle on the familiar term entails its own risk-benefit calculus. The easy mark may offer the less costly, more rapid course to name recognition and identification of source. At the same time, the name selection entails an assumption of risk in two ways. First, in settling upon ordinary words the likelihood of duplication is greater. Second, the law places a heavier burden on trade reliance on the common term by extending less recognition and protection to inherently indistinctive marks precisely because of the probability that the public is less likely to be confused by them.

Trademark law, as it has evolved in the cases and as codified in statutes, recognizes the whole spectrum of these distinctions, not only at the lines demarcating the two extremes, but in the very subtle shades of differences that blend faintly in between. The law distinguishes among these bands and their ends, applies corresponding legal concepts and assigns varying consequences. Thus, it confers degrees of recognition, and it bestows differing levels of protection — thereby fostering competition, initiative, investment and diligence — in a hierarchical scale that weighs these considerations in the mix. And, for the reasons indicated, it rates the trademark, and ranks the order of protection to which it is entitled, in proportion to the inherent qualities the mark reflects in minimizing the likelihood of confusion, mistake and deception in the marketplace. In this respect, the law tilts decidedly in favor of the distinctive term over the unremarkable, the rare over the commonplace.

These concepts were concisely articulated by the Second Circuit in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976). There the Court identified and examined four classes of marks generally recognized in commercial use, "[a]rrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded. . . ." Id. at 9. The categories are (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. Id. But, as Abercrombie & Fitch Co. recognized, much ambiguity and complexity inhere in these classifications "because a term that is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product." Id. The word puzzles and legal quandaries these amorphous intricacies pose are concretely illustrated by the example cited by a leading trademark commentator who, declaring that the proper designation of a mark will vary with the relationship between the term and the product or service, opined that "the word `apple' would be arbitrary when used on personal computers, suggestive when used in `Apple-A-Day' on vitamin tablets, descriptive when used in `Tomapple' for combination tomato-apple juice and generic when used on apples." 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:71, at 11-120 (4th ed. 1999).

The generic label attaches to words that comprise the ordinary language. It embraces terms which derive from nomenclature that has become the public domain and which are employed to identify a particular thing by its given name. Such terms cannot be appropriated or monopolized. Generic words and their usage belong to all who wish to speak the language. No single user may corner the market on application of particular terms of everyday speech to serve private purposes, to the exclusion of other persons who may seek, at the risk of potential liability to one who laid claim to words of common currency, to avail themselves of ordinary language to refer to an article by its publicly accepted name. See American Cyanamid Corp. v. Connaught Lab., Inc., 800 F.2d 306 (2d Cir. 1986). For these reasons, the common law did not extend validity or protection to trademarks based on generic terms, regardless of how far the use of the name may have prospered in marketing a particular product and publicly associating it with its maker. Indeed, if an invented word becomes too successful over time, it may very well be deemed generic and lose its protection. See, e.g., King-Seeley Thermos Co. v. Aladdin Indus., Inc., 321 F.2d 577 (2d Cir. 1963) ("THERMOS"); Dupont Cellophane Co. v. Waxed Products Co., Inc., 85 F.2d 75 (2d Cir.), cert. denied, 299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443 (1936) ("CELLOPHANE"); Bayer Co., Inc. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) ("ASPIRIN"); Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. 80 (1950) ("ESCALATOR"). Thus, Kentucky Fried Chicken could not usurp the words marking its product and thereby deprive "Kansas Fried Chicken" of the use of common language to describe its own brand of the same thing, compelling the later entrant into strained construction of language for generic reference to the identical product, such as "Kansas Fowl Cooked in Deep Fat".

Could BigDeal Investments, having commenced trade under that mark, foreclose Next Big Deal Prospectors from using the words their names have in common? The answer, approaching closer to the merits of the dispute at hand, turns on the status accorded to marks filling the next ring in the order: those labeled as descriptive. Names in this grouping also rely on generic words that contain literal descriptions. These terms, with minor shades and twists, readily identify the qualities or content of the item and signal the market in which the product may be found. See, e.g., PaperCutter, Inc. v. Fay's Drug Co., Inc., 900 F.2d 558 (2d Cir. 1990) ("PAPER CUTTER" paper ornaments); W.E. Bassett Co., 354 F.2d 868 ("TRIM" cuticle trimmer); Ideal World Mktg., Inc. v. Duracell, Inc., 15 F. Supp.2d 239, 244 (E.D.N.Y. 1998), aff'd, 182 F.3d 900, 1999 WL 464978 (2d Cir. 1999) ("POWERCHECK" battery). Because the mark, by incorporating familiar words that manifestly refer to the goods or market, piggybacks on the product itself, a merely descriptive term is considered a weak mark.

The protection threshold of the descriptive name is placed above that of the generic, to which neither the common law nor the Lanham Act affords trademark protection, but the range is restricted. First, the scope of protection may be narrowly limited to similar goods and markets in close competitive proximity. See 3A Rudolf Callmann, The Law of Unfair Competition, Trademarks and Monopolies § 20.43, at 472 (4th ed. 1999); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 350 (9th Cir. 1979). Second, to be eligible for legal recognition and enforcement, the descriptive name must satisfy a standard particular to this classification. While section 2(f) of the Lanham Act (see 15 U.S.C. § 1052(f)) permits registration of merely descriptive terms, the corresponding protection it accords demands, as a precondition, proof that the mark has acquired secondary meaning in its market. This test refers to demonstrable evidence that the mark, by means of sufficient marketing, sales, usage and passage of time, has established distinctiveness in commerce, measured by the extent to which it has become identified in the public mind with the particular source of the goods.

Suggestive marks occupy the next gradation on the scale of trademark status and protection. This variety is perhaps the most elusive, the hardest to conceptualize and define. Like generic and descriptive names, this category relies on terms derived from ordinary language. But the words chosen for a suggestive name are not just any words, but specially select words, the mot juste appointed for the particular trade purpose. Such terms generally do not, unlike the merely descriptive phrase, direct the consumer immediately to the producer by way of road signs that prominently advertise the goods. Instead, the journey to the market source leads there through an intermediate loop at a cloverleaf in thought. Where the descriptive common word leads the buyer by the hand, the rarer suggestive mark ushers through the mind. From the commercial name to the product or its market to its source, the suggestive term transports both through purposefully evocative words laden with intimation and through the contemplated imagery and associations the name conjures. That passage is neither linear nor strait. It demands a mental exercise, multiple bounds in a dual act of perception and imagination. A first stage is associated with the creative energy exerted by the maker of the mark. When choosing what to call the article, the creator of the suggestive name meaningfully fixes upon associational terms that will identify the product figuratively and will appeal to the consumer by allusion and metaphor. The second mental act closes that loop. It is that which occurs in the mind of the consumer allured to the product, and who may accept it in part on the strength of the purposeful imagery summoned by its name.

Among the prominent qualities the courts have found most compelling for a mark to qualify as suggestive are the extent to which the mark demands or reflects creativity; abstract thought and intuition; allegorical reference; metaphorical resemblance; figurative imagery; associational reasoning; and sheer incongruity — in short, the ingenuity that inspired the following graphically apt word-product associations declared suggestive: "ROACH MOTEL" (insect trap);*fn3 "GUNG-HO" (military toy figure);*fn4 "COPPERTONE" (suntan lotion);*fn5 "PLAYBOY" (magazine);*fn6 "POPCORN" (small silver anodes used in electroplating);*fn7 and "SHEER ELEGANCE" (pantyhose).*fn8 By these standards, suggestiveness is an artful quality of inherent imagery and obliqueness infused into a fine turn of a word or phrase which, at the moment of perception when it all clicks and the association intended becomes apparent, stirs the response, often with admiration: "That's it." It is, for example, the roundabout recognition evoked by calling a computer clicker a "mouse", or conceiving of the name "Big Star" to mark a small inn in Bethlehem.

One court in this District defined the difference: "A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods." Stix Products, Inc. v. United Merchants & Manufacturers, Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968). Qualitatively, the distinction may be illustrated by the difference in the creativity which must be summoned to devise, as well as the sequential thought necessary to catch the linkage meant by, a name such as "PASSION" for a fragrance on the one hand (see Elizabeth Taylor Cosmetics Co., Inc. v. Annick Goutal, S.A.R.L., 673 F. Supp. 1238 (S.D.N Y 1987)) and, on the other, "LITTLE TAVERN" for a restaurant. See Little Tavern Shops v. Davis 116 F.2d 903 (4th Cir. 1941). Correspondingly, it is likely to demand greater effort and larger financial investment in order to create the public recognition associating the suggestive mark with its product and establishing a market linking the item to its source. Recognizing the larger commitment of both resourcefulness and resources that must be spent to procure market success with a given ...


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