Defendant-appellant General Footwear Company Limited (General) and intervening defendant-appellant Universal City Studios, Inc. (Universal) appeal from an interlocutory judgment entered in the United States District Court for the Southern District of New York, Carter, J., granting plaintiff-appellee American Footwear Corporation (American) an injunction against infringement of its trademark “Bionic” in connection with the promotion and sale of footwear. The judgment appealed from enjoins General and Universal from asserting exclusive rights to use of the term “Bionic” in connection with the promotion and sale of footwear, but in no way interferes with Universal’s trademark rights in its T.V. shows or its licensing operations in respect thereto.
The district court found that inasmuch as Universal had not registered or applied for registration of “Bionic” as a trademark pri- or to the time American selected the mark and applied for registration no statutory trademark issues were involved. Relying primarily upon American’s priority of use, the lower court concluded that American established its right to use “Bionic” in connection with the promotion and sale of its footwear, and therefore, as a result of Universal’s “Buyers Beware” advertisement, designed to create the impression that American was guilty of trademark infringement, American had suffered irreparable injury. Based upon the foregoing facts, the court determined that American had established its entitlement to an injunction against Universal for trademark infringement and unfair competition.
Universal and General argue that enjoining them from licensing or using the word “Bionic” in connection with the promotion and sale of footwear because of American’s prior use of the word constitutes an inequitable restriction upon a creator’s use of a fanciful term and contend that they are entitled to an injunction against American based on American’s unfair competition in attempting to capitalize upon the success of Universal’s T.V. shows by misappropriating an essential element thereof in the word “Bionic.” Defendants-appellants also contend that American failed under recognized principles of trademark law to establish any of the criteria necessary for the issuance of the injunction granted to it by the district court and urge the dissolution of that injunction.
We are in agreement with the defendants-appellants’ contention that American failed to establish the necessary elements for issuance of an injunction and hereby order its dissolution. As to the appellants’ contention that they are entitled to an injunction restraining American, we find that, because appellants failed to establish a likelihood of confusion such that a substantial number of ordinarily prudent purchasers might be misled into mistakenly purchasing American’s footwear, American’s usage of the trademark “Bionic,” although admittedly adopted to capitalize on public receptiveness to a word Universal was responsible for popularizing, does not establish a case of unfair competition or trademark infringement entitling them to enjoin American’s use of the word “Bionic” in connection with the promotion and sale of its hiking boot.
This action, a suit for declaratory relief brought in the New York Supreme Court, was initiated on July 30, 1976, by American against General, which, pursuant to license from Universal, was using “Bionic” in the manufacture and sale of inexpensive children’s sneakers. On August 13, 1976, General, however, removed that action to the United States District Court for the Southern District of New York and on September *659 20, 1976, commenced a separate action against American in the United States District Court. Universal was granted leave to intervene in both actions. Subsequently the two actions were consolidated for all purposes..
The consolidated action contains the claims by American as plaintiff in its suit against General and Universal for common law trademark infringement, unfair competition, and tortious interference with business relations, and also the claims Universal and General assert against American in their action for common law and statutory trademark infringement, unfair competition, false designation of origin, passing off, and dilution.
The events leading up to the present controversy are lengthy and involve numerous peripherally related facts which will not be discussed at length. Beginning in January 1974 Universal, a television and motion picture studio, began what became an immensely popular T.V. series entitled “The Six Million Dollar Man.” The story line of this series concerned the adventures of a “bionic” man who, after a catastrophic accident, had been restored by a team of doctors through the use of numerous artificial limbs and organs. As a result, the “bionic” man possessed great physical strength and powers. This series was followed by another with a similar theme featuring a “bionic” woman, first aired in J[anuary 1976 under the title of “The Bionic Woman.” Universal has applied for or registered numerous trademarks having reference to these two television shows in the fields of entertainment and of toys, and has begun a vigorous merchandising campaign exploiting the popularity of these two television programs. As of January 1976, however, its only registered mark was for “The Six Million Dollar Man” in the field of entertainment services.
In the fall of 1975 American, through its sister company An welt Corp., designed a multipurpose hiking boot. The trademark “Bionic Boot” was adopted for the hiking boot in January 1976, at a brainstorming session of the American staff. It is undisputed that the idea for the trademark was generated from the highly popular television series “The Six Million Dollar Man,” where the hero is sometimes referred to as the “Bionic” man.
American searched the records of the U. S. Patent and Trademark Office to ascertain whether “Bionic” had been registered as a federal trademark on footwear or whether there were any pending applications so to register. American was advised that the mark “Bionic” was available for registration and that while “Bionic” or other related terms had been used as trademarks for various goods, the mark “Bionic” had never been registered or applied for in connection with footwear. American, therefore, went ahead with its plans to use “Bionic” as a trademark and displayed the boot under that mark at the New York Shoe Fair in February 1976. The trademark “Bionic” by American was affixed to the heel pad of the boot and was prominently displayed on the box. 1 American’s application for federal registration of the trademark “Bionic” was filed on June 9, 1976. The first customer orders for the boot were dated February 1976, and the first shipment to customers was in July 1976. “Footwear News” also featured American’s “Bionic Boot” in its April 26, 1976 supplement.
Beginning in December 1975 Merchandising Corporation of America, Inc. (Merchandising), the commercial arm of Universal, began negotiations with General concerning commercial exploitation of its “The Six Million Dollar Man” series in the footwear field. Although some agreement was reached in March 1976, the district court found that the earliest date at which a license was effectuated was sometime subsequent to October 4, 1976. The court held *660 that “[t]he licensing agreement as proposed and as finally agreed upon always refer[s] to Six Million Dollar Man and Bionic Woman, and at no time is there any reference to a trademark Bionic or to licensing the use of Bionic alone or indeed licensing anything separate and apart from the TV shows mentioned.” (Joint Appendix at 15.)
As a result of the article in “Footwear News” featuring American’s “Bionic Boot,” Universal’s subsidiary, Merchandising, sent a letter dated June 25, 1976, to American charging trademark infringement. Thereafter on July 26, 1976, Merchandising published in “Footwear News” a “Buyers Beware” advertisement which stated that Universal alone had the right to use “Bionic” as a trademark and charged trademark infringement against all who used the mark without its permission.
At the outset of its opinion the district court found that Universal had not registered or applied for a registration of “Bionic” as a trademark for any goods prior to the time American selected the mark and applied for its registration and accordingly it held that no statutory trademark issues were involved. The district court recognized that:
It was entirely permissible for American to attempt to capitalize on public receptiveness to a concept, idea or word which Universal has been responsible for creating or popularizing. The only limitation is that the party who takes advantage of the atmosphere the other party has helped create may not achieve a competitive boost by confusing the public into mistakenly purchasing his articles believing it to be that of his competitor, (citation omitted). American has not been guilty of that fault. It has at all times made clear that the Bionic boot it was attempting to promote was an American product. No effort of any kind was made to associate the boot with Universal’s TV shows or with any of the characters in those shows. (Joint Appendix at 17 — 18.) 2
The court concluded, therefore, that the real issue in that controversy was whether Universal through its T.V. shows had foreclosed use in the marketplace of “Bionic” or “Bionics” by others. The court held that “Bionic” as used by American was an arbitrary mark, whereas its use by Universal was a descriptive term (/. e., bionic man, bionic woman, bionic boy, bionic dog),
3
and Universal had therefore failed to establish a right to be accorded use priority over American,
citing Polaroid Corp. v. Polarad Electronics Corp.,
Additionally, the court held that “[t]he word bionic has not been shown to have acquired a secondary meaning so that the public associates the term with Universal or its TV series” (Joint Appendix at 18). In so holding the court rejected survey evidence introduced by Universal that purported to demonstrate public association between the word bionic and the T.V. series. 4
*661 Universal and General concede that if the term, i. e., word, “bionic” had been used in its descriptive dictionary sense in relation to a product whose functional use would correspond to that descriptive sense, Universal has not foreclosed the use of such a term by others in the marketplace; but they argue that the court, in denying their application for an injunction, misapprehended the nature of their claim. First, Universal argues that it has foreclosed the use of the “television word Bionic” to others due to its efforts and skills in developing and popularizing the word through the television series in which the word is used as part of the title of one of the series and is used as an adjective describing both major characters. Universal contends that this issue before the court is not whether the product is identified as being made by American, but whether the public could confuse the source of the product’s sponsorship and purchase it because of a belief that it had some connection with Universal’s television series.
Secondly, appellants argue that Universal’s use of the terms “Bionic Man” and “Bionic Woman” on products marketed by its licensees was, contrary to the finding of the district court, arbitrary trademark use, so that Universal is entitled to protection against a subsequent user of an identical mark, citing
Triangle Publications v. Rohr-lich,
The essence of Universal’s and General’s claim of unfair competition and trademark
*662
infringement is the adoption by American of the “television word” bionic. In support of their alternative theories of recovery, appellants cite:
Triangle Publications v. Rohrlich, supra; Lone Ranger, Inc. v. Cox,
Although at one time the law of unfair competition was limited to claims that one party had attempted to pass off his goods as those of another party, unfair competition is now held to encompass a broader range of unfair practices which may be generally described as a misappropriation of the skill, expenditures, and labor of another.
Flexitized, Inc. v. National Flexitized Corp.,
Challenging the findings of the district court, appellants also contend that by virtue of Universal’s efforts in promoting its tele *663 vision programs the word “bionic” has come to be equated with the notion of enormous strength and superhuman ability as opposed to its dictionary definition (“The science of designing instruments or systems modeled after living organisms”) and has, therefore, acquired a secondary meaning.
We previously have discussed the district court’s disposition of this argument. Although we do not subscribe to the view, arguably implicit in the district court’s reasoning, that survey evidence gathered for later use in litigation invariably is suspect and not relevant to the issue of secondary meaning,
Union Carbide Corp. v. EverReady, Inc.,
The doctrine of secondary meaning requires not only that the mark have a subordinate meaning,' but also that the
primary
significance of the mark in the minds of the consumers is the identification of the producer, not a designation of the product.
See Kellogg Co. v. National Biscuit Co.,
Appellants’ trademark theory of recovery is no more persuasive than its misappropriation theory. It overlooks the well-established principle that trademark rights, unlike statutory copyrights or patents, are not rights in gross or at large. “There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed.”
United Drug Co. v. Theodore Rectanus Co.,
The question of whether a senior user is entitled to protection against a junior user on non-competitive goods was addressed by this court in Polaroid Corp. v. Polarad Electronics Corp., supra. The factors suggested in Polaroid include, but are not limited to:
[T]he strength of his 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.
Polaroid Corp. v. Polarad Electronics Corp., supra,
It has long been established in this circuit that the mere fact of seniority alone does not entitle the first user of a trademark to injunctive relief. The determination is to be made on the basis of the equities involved, and thereby requires an evaluation of the legitimate interests of the senior user, the junior user, and the consuming public.
Chandon Champagne Corp. v. San Marino Wine Corp.,
We find, after consideration of all pertinent factors under trademark principles and the law of unfair competition, that neither party has demonstrated entitlement to equitable protection of their respective marks and hereby order the dissolution of the injunction entered against appellants herein. In so holding, we do, however, adopt the suggestion made by appellants that inasmuch as Universal’s and General’s use of the word “Bionic” was clearly accompanied by references to the respective television series, and that all the footwear made by General contained the name of the television series elsewhere on the footwear, that American will be permitted to continue to market its “Bionic Boot” simultaneously with permitting Universal and General to exploit fully Universal’s creativity by marketing the “The Six Million Dollar Man” and the “Bionic Woman” “Bionic Sneakers.”
Inasmuch as the district court did not address the pendent state claims under section 368-d of the New York General Business Law (N.Y.Gen.Bus.Law § 368-d) and therefore made no findings of fact or conclusions of law with respect thereto, we deem it inappropriate to address those issues on appeal.
Opinion of district court reversed in part; affirmed in part.
Notes
. American affixes its trademark to its boots on a heel pad as follows:
BIONIC TM BY AMERICAN
The gummed label affixed to the box in which the “Bionic Boot” is sold reads as follows:
BIONIC TM BOOT BY AMERICAN
. Appellants dispute this finding by the district court. They contend that American’s intent to capitalize upon the popularity of Universal’s television shows was evidenced by a poster, showing a woman in a running pose similar to the running pose adopted by Universal’s theme characters in the opening segments of each episode of “The Six Million Dollar Man” and “The Bionic Woman,” which was employed by American as part of the advertising display promoting its “Bionic Boot” at the National Shoe Fair held in New York City in February 1976. On the other hand, conceding that American’s “Bionic Boots” were not designed to be the functional equivalent of track shoes, an advertisement for footwear does lend itself to a running pose. Moreover, the similarities between the poster and the scenes from the T.V. shows are not so marked that, when the poster is displayed together with numerous and prominent references to American and to no other entity, an ordinarily prudent purchaser would be likely to be misled into believing that any sponsorship arrangement existed between Universal’s T.V. shows and American’s product.
. That is to say, Universal’s usage of the adjective “bionic” was intended to correspond with that term’s dictionary meaning, “concerning the science of designing instruments or systems modeled after living organisms.”
. At trial Universal offered two surveys conducted under the supervision of Dr. Russell Haley, a telephone survey and a shopping center survey.
*661
The telephone study was conducted on a national probability sample of individuals 16 years of age or older. 802 individuals were asked a single question: “With whom or what do you associate a product labelled Bionic?” Of the 802 interviewees 34.7% gave no associational response whatsoever and 55% associated a product labeled Bionic with Universal’s television shows or their principal characters. Although the latter percentage may be significant, the form of the survey question was too self-serving, in that the more relevant inquiry should have been “With whom or what do you associate a ‘Bionic’ boot?”
See American Basketball Association v. AMF Voit, Inc.,
The second study, the on-site shopping center survey, involved 307 personal interviews in six shopping centers throughout the country. Each of the interviewees was shown an American promotional poster for the “Bionic Boot,” and was then asked: “With whom or what do you associate the term Bionic Boot?” Out of the 307 persons interviewed 74.3% identified the poster as being connected with Universal’s “The Six Million Dollar Man” or “The Bionic Woman” television series or with their principal characters. Assuming that this percentage is high enough to be significant, the critical defect in this survey was the failure to conduct it under actual marketing conditions. Whenever American had displayed this poster at various shoe fairs or industry trade shows, the poster always was shown in an environment replete with references to American as the seller of the boot. However, once removed from this environment, the poster differed from American’s other “Bionic Boot” advertisements in that the poster itself did not contain any references to American. This defect was pointed out by the district court during Dr. Haley’s testimony, the court stating:
. one of the issues in the case is the possibility of confusion on the part of the consumer, so it seems to me that using the advertisement in the form that the defendant finds objectionable would get a more accurate response as to whether or not there is the likelihood of confusion with the defendant’s product than leaving it off.
(Joint Appendix at 698-99);
see American Luggage Works, Inc. v. United States Trunk Co.,
Accordingly, in light of these methodological defects, the district court’s rejection of this survey evidence was not clearly erroneous.