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DEAL, LLC v. KORANGY PUBLISHING

United States District Court, S.D. New York


January 20, 2004.

THE DEAL, LLC, Plaintiff, -against- KORANGY PUBLISHING, INC., Defendant

The opinion of the court was delivered by: SHIRA SCHEINDLIN, District Judge

OPINION AND ORDER

The Deal, LLC ("The Deal") brings this action alleging unfair competition and infringement of its registered trademarks, THE DAILY DEAL and THE DEAL (collectively THE DEAL MARKS) through Korangy Publishing, Inc.'s ("Korangy Publishing") publication of The Real Deal.*fn1 The Deal now moves to preliminarily enjoin Korangy Publishing's use of the phrase "The Real Deal" or any other reproduction or colorable imitation of THE DEAL MARKS in connection with print or online publications. The Deal also seeks to recall informational, promotional, and other materials bearing the words `The Real Deal." For the reasons set forth below, plaintiff's motion is denied in its entirety.

 1. BACKGROUND

  A. Procedural Background

  On October 14, 2003, The Deal filed a Complaint alleging trademark infringement Page 2 and unfair competition under the Lanham Act. One month later, The Deal moved for a preliminary injunction.*fn2 The motion was fully briefed on January 5, 2004, and an evidentiary hearing was held on January 9 and January 12, 2004.*fn3

  B. The Parties

  The Deal is a national, "diversified media company" established in March 2000 to provide "financial news, commentary, data, and services to corporate and financial dealmakers, their advisors and investors worldwide"*fn4 through print and on-line media, e.g., The Deal (a newsweekly), The Daily Deal (a daily financial newspaper), and TheDeal.com (containing information taken from The Deal's print publications).*fn5 Korangy Publishing is a publishing company established in April 2003. Its principal business is the publication of a monthly magazine, The Real Deal, which contains information about the New York City real estate market and is available on newsstands and by subscription.*fn6 Korangy Publishing also maintains an Internet site containing information drawn from The Real Deal.*fn7 Page 3

  C. The Dispute

  The Deal has several trademarks, including THE DAILY DEAL and THE DEAL, which it alleges Korangy Publishing infringed by its publication of The Real Deal.*fn8 The Deal registered the trademarks THE DAILY DEAL and THE DEAL on January 23, 2001 and May 13, 2003, respectively.*fn9

  The Deal uses these trademarks in connection with its two primary publications — The Deal and The Daily Deal. The Deal is a tabloid-size glossy, color magazine with the word "Deal" in bright red lettering. Spanning the cover of each edition is a single image, such as a color photograph or illustration relating to the lead story.*fn10 The cover page of The Daily Deal is primarily black and white, featuring numerous text stories and small black-and-white photographs on the front cover.*fn11 The Deal primarily circulates its publications through Page 4 subscriptions and online sales, rather than newsstands.*fn12 The Deal has approximately 40,000 subscribers and The Daily Deal has approximately 5,000 subscribers.*fn13 The so-called "Deal Community" of consumers includes corporate executives, deal advisors (e.g., bankers, corporate lawyers, mortgage brokers), and institutional investors.*fn14 The Deal alleges that its publications "regularly contain articles concerning the real estate market."*fn15

  The Deal claims that on December 16, 2002, Korangy Publishing's principal and publisher, Amir Korangy, visited The Deal's New York City headquarters and spoke with Richard Siler, an advertising salesperson with The Deal.*fn16 The parties characterize Korangy's conduct differently. According to The Deal, Korangy posed as a potential advertiser — an agent from The Corcoran Group — to hoodwink Siler, thereby obtaining valuable marketing information about The Deal.*fn17 Korangy, by contrast, asserts that he was simply trying to "see Page 5 how other trade magazines promote[] advertising for placement within their publications and to ensure that The Deal did not have a real estate angle and would be an inappropriate forum for Real Estate Advertisers."*fn18 Neither party denies that Korangy was given a media kit containing "Various information on The Deal's publications, including samples of the publications themselves, advertising rates, and other pertinent information."*fn19 When Siler contacted Korangy two weeks later, Korangy allegedly informed him that he had opted to advertise in smaller real estate publications.*fn20

  In April 2003, Korangy Publishing began to distribute a monthly magazine entitled The Real Deal. The Real Deal is a tabloid-size glossy, color magazine. The word "Real" in the title appears in italics and the words "New York Real Estate" appear in red lettering below the title. The cover page depicts a combination of text stories and photographs.*fn21 The Real Deal is sold on newsstands and includes among its primary audience "brokers, attorneys, agents, developers, accountants, financiers and real estate executives."*fn22 Page 6

  The Deal's employees first became aware of The Real Deal in July 2003.*fn23 The Deal then sent three letters to Korangy Publishing asking it to "reconsider" its use of allegedly similar marks. Because Korangy Publishing declined to stop using that name, The Deal commenced the instant action in October.*fn24 The Deal contends that Korangy Publishing misappropriated elements of THE DEAL MARKS and that the "overall presentation of Korangy's The Real Deal' mark and the masthead for its publication incorporates elements long used by The Deal, including prominent use of a particular shade of red in its publications and website content."*fn25 The Deal also submits that the topics addressed in The Real Deal are "substantially similar" to those topics covered in The Daily Deal and The Deal.*fn26 Finally, The Deal alleges that the publications share the same readership.*fn27

 II. ANALYSIS

  A. Legal Standard

  A preliminary injunction is "one of the most drastic tools in the arsenal of judicial Page 7 remedies"*fn28 and should not be routinely granted.*fn29 To obtain a preliminary injunction, a party must demonstrate (1) probability of irreparable harm in the absence of injunctive relief and (2) either a likelihood of success on the merits of the claim, or a "serious question going to the merits and a balance of hardships tipping decidedly in [plaintiff's] favor."*fn30

  "In an action for trademark infringement, where a mark merits protection, a showing that a significant number of consumers are likely to be confused about the source of the goods identified by the allegedly infringing mark is generally sufficient to demonstrate both irreparable harm and a likelihood of success on the merits."*fn31 Thus, in deciding whether to issue a preliminary injunction in a trademark infringement action, the central questions before the court are (1) whether the plaintiff has a valid mark entitled to protection and (2) whether the defendant's alleged infringement is likely to cause confusion among consumers.*fn32

  B. Delay

  As an initial matter, any "presumption of irreparable harm is inoperative if the plaintiff has delayed either in bringing suit or in moving for preliminary injunctive relief."*fn33 Page 8 "Though such delay may not warrant the denial of ultimate relief, it may, standing alone, . . . preclude the granting of preliminary injunctive relief, because the failure to act sooner undercuts the sense of urgency that ordinarily accompanies a motion for preliminary relief and suggests that there is, in fact, no irreparable injury."*fn34

  Korangy Publishing argues that The Deal delayed filing its lawsuit: "Defendant published their magazine in April of 2003, yet the Plaintiff failed to bring the instant action until October 14, 2003."*fn35 The Deal offers a reasonable explanation for the delay, suggesting that it did not learn of The Real Deal until July, and during the ensuing months sent letters in an attempt to avoid litigation. But The Deal acknowledges that it failed to seek injunctive relief when it filed the Complaint, instead filing that motion approximately four weeks later (on November 14, 2003).*fn36 While plaintiff's delay in seeking relief informs the question of whether The Deal has suffered irreparable harm, the delay is not so lengthy as to require denial of the motion.

  C. Trademark Infringement Page 9

  The Deal brings this action under sections 32(1) and 43(a) of the Lanham Act.*fn37 Section 32(1) governs claims for infringement of a registered trademark, prohibiting the use in commerce of "any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive."*fn38 Section 43(a) "guards against infringement of unregistered marks and other indicia of origin, including trade dress and trade names."*fn39 "A claim of trademark infringement whether brought under 15 U.S.C. § 1114(1) . . . or 15 U.S.C. § 1125(a) . . ., is analyzed under the familiar two-prong test. . . ."*fn40 First, courts consider whether the plaintiff has a valid mark entitled to protection. Second, courts query whether the defendant's alleged infringement is likely to cause confusion among consumers.*fn41

  1. Validity

  "To be valid and protectible, a mark must be capable of distinguishing the products it marks from those of others."*fn42 For purposes of trademark protection, marks are Page 10 classified in five categories: generic, descriptive, suggestive, arbitrary, and fanciful.*fn43 As the Second Circuit has explained:

A mark is generic if it is a common description of products and refers to the genus of which the particular product is a species. A mark is descriptive if it describes the product's features, qualities, or ingredients in ordinary language or describes the use to which the product is put. A mark is suggestive if it merely suggests the features of the product, requiring the purchaser to use imagination, thought, and perception to reach a conclusion as to the nature of the goods. An arbitrary mark applies a common word in an unfamiliar way. A fanciful mark is not a real word at all, but is invented for its use as a mark.*fn44
"A mark is entitled to protection when it is inherently distinctive," that is, arbitrary, fanciful, or suggestive.*fn45 On the other hand, if the mark is `"merely descriptive,' 15 U.S.C. § 1052(e), it qualifies for protection only if it has acquired secondary meaning. . . ."*fn46 Generic marks are not entitled to trademark protection.*fn47 The classification of a mark requires the fact-finder to determine "how the purchasing public views the mark."*fn48

  Registration of a mark with the United States Patent and Trade Office ("PTO") is "prima facie evidence that the mark is . . . valid (i.e., protectible), that the registrant owns the Page 11 mark, and that the registrant has the exclusive right to use the mark in commerce."*fn49 While not dispositive evidence of validity, the registration of a trademark "confers a procedural advantage on the registrant in an infringement action: the opposing party must overcome the presumption that the purchasing public perceives the mark to be inherently distinctive."*fn50 Thus, "when a plaintiff sues for infringement of its registered mark, the defendant bears the burden to rebut the presumption of [the] mark's protectibility by a preponderance of the evidence."*fn51

  Korangy Publishing contends that The Deal's marks are "generic and are therefore unenforceable or, in the alternative, descriptive and unenforceable because there is insufficient proof to substantiate secondary meaning within the marketplace."*fn52 The Deal counters that its marks are not generic because they (1) are federally registered and (2) "suggest a double meaning [requring consumers to] make multiple inferential steps from the marks themselves before Page 12 arriving at a conclusion about the nature of the publications."*fn53 Specifically, Plaintiff argues that "The Deal" refers both to a financial transaction or "the commonly used phrase here's the deal, or what's the deal with that, meaning the inside scoop, or the inside story."*fn54

  Because THE DEAL MARKS are federally registered marks, they are entitled to a presumption of validity,*fn55 but Korangy Publishing can rebut this presumption by demonstrating that the purchasing public fails to view the mark as inherently distinctive. Neither party argues that THE DEAL MARKS are arbitrary or fanciful. Accordingly, the question before the court is whether the marks are generic, descriptive (and if so, whether secondary meaning has attached), or suggestive. Korangy Publishing's argument that the terms THE DEAL and THE DAILY DEAL are generic lacks merit for rather obvious reasons. A generic term is a "common name, like automobile or aspirin, that describes a kind of product,"*fn56 but THE DEAL and THE DAILY DEAL are not common names used synonymously with the word "newspaper," "magazine," or even "publication." Nor are THE DEAL MARKS "descriptive" of the product. A descriptive mark "may point to a product's intended purpose, its function or intended use, its size, or its merit."*fn57 For instance, the mark "1-800-PLUMBING" was found to be descriptive "as Page 13 immediately conveying the impression that a particular plumbing service is available by calling the telephone number."*fn58 But the words THE DEAL and THE DAILY DEAL do not immediately convey to the purchaser that the product is a news publication dedicated to the coverage of financial and legal news in the same way that descriptive marks such as CHAPSTICK and HOLIDAY INN "directly suggest the relevant products."*fn59 Although THE DEAL MARKS tread the line between "descriptive" and "suggestive," I conclude that these are suggestive, meaning that they suggest the product, but may require some imagination to "grasp the nature of the product."*fn60 Accordingly, because Korangy Publishing has failed to rebut the presumption of validity created by registration, THE DEAL MARKS are valid marks, entitled to protection.

  2. Likelihood of Confusion

  "In determining a likelihood of confusion, it has long been the practice of this Circuit to apply the multi-factor balancing test articulated by Judge Friendly in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961)."*fn61 Polaroid identified eight nonexclusive factors that are pertinent in addressing likelihood of confusion:*fn62 (1) the strength of the plaintiff's mark; (2) the similarity of defendant's mark to plaintiff's; (3) the proximity of the Page 14 products sold under defendant's mark to those sold under plaintiff's; (4) where the products are different, the likelihood that plaintiff will "bridge the gap" by selling the products being sold by defendant; (5) the existence of actual confusion among consumers; (6) the sophistication of consumers; (7) whether defendant acted in bad faith in adopting the mark; and (8) quality of the defendant's product.*fn63 The first six factors deal directly with the likelihood of consumer confusion, whereas the last two factors — quality of defendant's product and defendant's bad faith in adopting the mark — address the issues of harm to plaintiff's reputation and remedy.*fn64 "No single Polaroid factor is pre-eminent, nor can the presence or absence of one without analysis of the others, determine the outcome of an infringement suit."*fn65

  Although application of the Polaroid test is not "rigid, it is nevertheless `incumbent upon the district judge to engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to explain why.'"*fn66 However, the Polaroid factors are "merely tools `designed to help grapple with the `vexing' problem of resolving the likelihood of confusion issue,' and [] `the ultimate conclusion as to whether a likelihood of confusion exists is not to be determined in accordance with some rigid formula.'"*fn67

  a. Strength of Plaintiff's Marks Page 15

  "The strength of a trademark encompasses two different concepts, both of which relate significantly to likelihood of consumer confusion."*fn68 The first is the trademark's inherent strength, or "inherent distinctiveness," the second is its "acquired distinctiveness," or the "fame, or the extent to which prominent use of the mark in commerce has resulted in a high degree of consumer recognition."*fn69

  As to the first measure of strength — inherent distinctiveness — the law provides "broad, muscular protection" to arbitrary or fanciful marks and "lesser protection, or no protection at all to marks consisting of words that identify or describe the goods or their attributes."*fn70 The second measure of strength, that of source identification, is assessed by "the extent to which prominent use of the mark in commerce has resulted in a high degree of consumer recognition."*fn71 Acquired distinctiveness generally relates to the fame of a mark that has been prominently used in connection with a particular area of commerce for a long time. Of course, "[t]he use of part or all of the mark by third parties [, which] weakens its overall strength."*fn72 Page 16

  THE DEAL MARKS are not particularly strong. While THE DEAL MARKS are suggestive marks, The Deal has failed to demonstrate that its marks have acquired a high degree of consumer recognition. Notably, the marks have not been in use for a long time — THE DEAL mark was filed on July 21, 2000 and THE DAILY DEAL mark was filed on March 25, 1999.*fn73 Moreover, it is indisputable that the words "the" and "deal" are not particularly distinctive in the marketplace and, contrary to The Deal's protestations, there is evidence that the words "the" and "deal" are used in connection with both online and print publications and with other unrelated products.*fn74 Accordingly, this factor tips slightly in favor of Korangy Publishing. Page 17

  b. Similarity Between THE DEAL MARKS and The Real Deal

  "When the secondary user's mark is not identical but merely similar to the plaintiff's mark, it is important to assess the degree of similarity between them in assessing the likelihood that consumers will be confused."*fn75 In evaluating this factor, a court must consider `"all factors that could reasonably be expected to be perceived by and remembered by potential purchasers . . . [including the] context in which the respective marks are generally presented.'"*fn76

  The Deal argues that THE DEAL, THE DAILY DEAL, and the phrase "The Real Deal" represent "nearly identical marks" and that "Korangy has misappropriated [] `The Deal' mark in its entirety and has misappropriated two of the three terms in The Deal's `The Daily Deal' mark."*fn77 The Deal further contends that "what defendant has done is appropriated a shade of red used in Us publication [that is] strikingly similar to that used by plaintiff and the slight differences in stylization have little relevance because the publications are not sold side by side. So these minimal differences in logo stylization would not likely remain with readers. . . ."*fn78 Korangy Publishing counters by pointing out the differences between the publications, noting that the title of The Real Deal "is in Impact font, `Real' is italicized, letters of the title are in Page 18 black, all capitals, and also has `New York Real Estate' written in capitals*fn79 right below the title."*fn80 On the other hand, the title of The Deal publications are "written in Times New Roman font, letters are in bright red and are not capitals."*fn81

  A visual comparison of the publications makes clear that The Daily Deal, printed on newsprint, lacks the same look and feel of The Deal and The Real Deal, although the word "Deal" is presented in large red letters. Thus, I will focus on the similarities between The Deal and The Real Deal. These publications are unlikely to appear similar to the purchasing public. The titles are printed in different fonts, sizes, and colors. Moreover, the layouts of the publications' covers are significantly different. While The Deal prints a single thematic image spanning the cover page, The Real Deal combines colorful images and text stories in a more cluttered display. Finally, although both publications appear to be printed on glossy, colored paper of similar weight, this is not uncommon for news magazine publications.*fn82 Moreover, The Deal presents no evidence tending to show that the purchasers of The Deal — primarily professionals who subscribe to the magazine — are likely to experience confusion due to the slight Page 19 similarities. For the foregoing reasons, this factor tips slightly in favor of Korangy Publishing.

  c. Proximity of the Products and Likelihood the Plaintiff Will "Bridge the Gap"

  "Th[ese] factor[s] [are] concerned with the competitive distance between the products."*fn83 "When the two users of a mark are operating in completely different areas of commerce, consumers are less likely to assume that their similarly branded products come from the same source. In contrast, the closer the secondary user's goods are to those the consumer has seen marketed under the prior user's brand, the more likely that the consumer will mistakenly assume a common source."*fn84 "In examining [the proximity] factor a court should compare all aspects of the products, including price, style, intended uses, target clientele, typical distribution channels, and others."*fn85 "Bridging the gap" refers to the likelihood that The Deal will enter Korangy Publishing's market — namely focusing on New York real estate news.

  The Deal has shown that there is considerable overlap between The Deal and The Real Deal in terms of target audience. There is also some overlap in content between the two publications, as The Deal occasionally prints stories about and runs ads relating to real estate.*fn86 However, there are clearly content-based differences between the two news magazines — The Real Deal is almost exclusively focused on real estate news relevant to the New York Page 20 metropolitan area and The Deal broadly covers national financial and legal news, at times to the exclusion of real estate items. Moreover, on a per issue basis, The Deal costs nearly twice as much as The Real Deal*fn87 and the publications are distributed through entirely different channels. In light of the evidence, the proximity factor tips only slightly in The Deal's favor.

  The Deal has effectively demonstrated that it is likely to "bridge the gap." The Deal employs a journalist whose focus is real estate.*fn88 Additionally, The Deal actively pursues real estate marketing accounts with real estate companies such as Cushman & Wakefield and Grubb & Ellis.*fn89 The Deal also pursues accounts with residential, as well as commercial, real estate clients.*fn90 Thus, it is likely that The Deal will enter the market for real estate publication market. Accordingly, this factor tips decidedly in The Deal's favor.

  d. The Existence of Actual Confusion

  "It is self-evident that the existence of actual consumer confusion indicates a likelihood of consumer confusion."*fn91 The Deal concedes that it has presented no evidence of actual confusion, having opted not to submit any survey evidence or testimony of customers Page 21 tending to show actual confusion.*fn92 Accordingly, this factor is neutral.

  e. The Sophistication of Consumers

  "This [] factor recognizes that the likelihood of confusion between the products at issue depends in part on the sophistication of the relevant purchasers."*fn93 "Where the purchasers of a products are highly trained professionals, they know the market and are less likely than untrained consumers to be misled or confused by the similarity of different marks."*fn94

  Members of the so-called "Deal Community" are highly sophisticated Page 22 purchasers.*fn95 The Deal's CEO specifically described members of the "Deal Community" as "corporate executives, [such as] CFOs, CEOs, senior VP[s] of corporate development . . . [,] [a]dvisors, everyone from investment bankers to corporate lawyers, to mortgage brokers . . . [,] [a]nd institutional investors."*fn96 Similarly, The Real Deal targets real estate professionals, boasting a demographic profile consisting of individuals who have earned graduate degrees and make annual salaries in excess of $140,000.*fn97 Additionally, by not making its publications available to the general public through newsstands, The Deal limits its readership to those in the "Deal Community." The sophistication of consumers decreases the likelihood of confusion because The Deal's publications differ from The Real Deal and THE DEAL MARKS are not identical to the title "The Real Deal". Accordingly, this factor militates in favor of Korangy Publishing.

  f. Bad Faith and Quality of the Defendant's Products

  These factors are not of "high relevance to the issue of likelihood of confusion. A finding that a party acted in bad faith can affect the court's choice of remedy or can tip the balance where questions are close."*fn98

  i. Bad Faith Page 23

  "This factor examines whether defendants `adopted [their] mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between [their] and [plaintiff's] product.'"*fn99 In arguing that Korangy acted in bad faith, The Deal makes much of Korangy's visit to its offices, concluding that Korangy's actions "unambiguously demonstrate [his] purposeful and knowing violation of The Deal's trademark rights[;] [his] actions have no plausible innocent justification."*fn100 Korangy, however, does offer a plausible "innocent" justification — he testified that he contacted many magazines, including Crain Communications, Inc. and Newsweek, from whom he also received media kits.*fn101 He further explained that he went to these publications in order to "gain knowledge [] about how to do market research, about how to pitch advertising to potential advertisers for [his] magazines," and that he did not reveal that he was starting his own publication because he wanted to "get a genuine pitch" from Siler.*fn102

  The Deal also points out Korangy's failure to properly conduct a trademark search. While the failure to conduct a proper trademark search may be evidence of bad faith, it is not conclusive.*fn103 Although he was aware of THE DEAL MARKS, Korangy provides a reasonable explanation of how he "created" the title "The Real Deal" — he found it a catchy play Page 24 on words descriptive of a real estate magazine.*fn104 Korangy Publishing further argues that "Korangy did his research and . . . even went to the offices of The Deal to ensure that The Deal would not be an appropriate forum for Real Estate Advertising and confirmed what he believed to be true."*fn105 Because I find Korangy's testimony credible and the burden is on plaintiff to demonstrate Korangy's bad faith, this factor tips slightly in Korangy Publishing's favor.

  ii. Quality of Defendant's Products

  "This factor is primarily concerned with whether the inferior quality of a junior user's goods could jeopardize the senior user's reputation. . . . However, `[p]roducts of equal quality may [also] create confusion as to source.'"*fn106 The Deal concedes that it has presented no evidence tending to show that The Real Deal is an inferior publication as compared to The Deal and The Daily Deal.*fn107 Rather, relying on Lois Sportswear, The Deal argues that because the Page 25 publications are of equal quality, there is an enhanced likelihood of confusion.*fn108 But Lois Sportswear presented a much easier case. At issue in Lois Sportswear were similarities in back-pocket stitching on jeans. There, the court found that similarities in quality could enhance the post-sale likelihood of confusion, when passers-by would see similar stitching on precisely the same products-jeans.*fn109 The instant action is easily distinguishable. Whereas two pairs of jeans may be interchangable to passers-by, it is far less likely that these two publications are so similar that their relatively equal quality would confuse the purchasing public. Accordingly, this factor weighs in favor of Korangy Publishing.

  f. Balancing of the Polaroid Factors

  As noted above, the grant of injunctive relief is an extraordinary remedy. The Polaroid factors are intended to guide the court in its evaluation of whether there is a likelihood that a significant number of consumers will be confused by the use of an allegedly infringing mark. At this early stage in the proceedings, most of the Polaroid factors favor Korangy Publishing. Accordingly, while The Deal may ultimately prevail on its claims, it has failed to demonstrate that a preliminary injunction should issue because it has not provided sufficient evidence that a significant number of consumers are likely to be misled as to the true source of The Real Deal.

  D. Irreparable Harm and Balance of Hardships

  Because The Deal has not shown that a likelihood of confusion exists, "it cannot obtain a preliminary injunction without making an independent showing of likely irreparable Page 26 harm."*fn110 The Deal has not presented any evidence that it will be irreparably harmed should a preliminary injunction fail to issue. To the contrary, The Deal did not immediately move for injunctive relief, suggesting that it is unlikely to suffer irreparable harm in the absence of injunctive relief. Accordingly, it is unnecessary for this Court to consider whether The Deal has demonstrated a balance of hardships tipping in its favor, or a sufficiently serious question going to the merits.*fn111

  E. Recall

  As part of an injunctive order, courts may require a defendant in a trademark action to "withdraw the offending materials from all customers, retailers and other persons."*fn112 The Deal asks this Court for an order recalling all "objectionable" materials, withdrawing any advertisements bearing the mark, and distributing notices to subscribers disclaiming an affiliation between The Deal's publications and The Real Deal.*fn113 Because The Deal has failed to demonstrate the need for a preliminary injunction, The Deal's request for a recall order is also denied. Page 27

 III. CONCLUSION

  For the foregoing reasons, plaintiff's motion for a preliminary injunction is denied in its entirety. The Clerk of the Court is directed to close this motion. A conference is scheduled for January 29, 2004, at 4:00 p.m.

  SO ORDERED.


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