In this trade name infringement case, under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1988), Doe Lang appeals from an opinion and order of, and a judgment entered pursuant thereto in, the United States District Court for the Southern District of New York, Louis L. Stanton, Judge, granting defendant Retirement Living Publishing Co. Inc.’s (Retirement Living) motion for summary judgment. Because we agree with the district court that Lang failed to raise a genuine issue of fact on the likelihood of confusion, we affirm.
I
This dispute turns on who holds the right to use the words “New Choices” in a trade name as that term is used in the Lanham Act, 15 U.S.C. § 1127 (1988). In 1985, author and educator Doe Lang formed New Choices Press, which to date has published one book entitled The Secret of Charisma: What It Is and How To Get It, and has issued cassettes similarly dealing with the development of charisma. In 1988, Retirement Living (a subsidiary of Reader’s Digest Association) purchased 50 Plus, a magazine designed, not surprisingly, for readers over fifty. As part of an effort to revamp the publication, Retirement Living decided to change the magazine’s name and ultimately selected New Choices For The Best Years.
Lang runs New Choices Press out of her apartment in New York City. Her apartment is also home to her image consulting firm, Charismedia, of which she is the pres *579 ident. Lang has advertised her charisma-building products and services and has also received considerable media attention. Only a few of the advertisements and articles, however, mention New Choices Press. Despite this advertising and publicity, New Choices Press remains a modest-sized business. Through late 1989, New Choices Press’s sales have totaled approximately $85,000. One-half of these sales were made through a distributor. The remainder, direct sales, have consistently amounted to less than $2,000 a year. New Choices Press has never published a magazine, nor does it have any plans to do so. Lang has considered publishing several self-help guides but at present these plans have not crystallized. The name “New Choices Press” appears in small block letters, above a sun and pedestal design, on the spine of the charisma book.
The name of Retirement Living’s magazine, New Choices For The Best Years, figures prominently at the top of the cover, with “New Choices” in larger hollow slanted letters on top, and “For The Best Years” in smaller block letters below. The magazine has over 580,000 subscribers. Like its predecessor, the magazine focuses primarily on the interests of readers between the ages of 45 and 65.
Retirement Living selected the name New Choices For The Best Years after considering other similar names and directing its outside trademark counsel to conduct a trademark search. The search did reveal New Choices Press and, in response, the law firm sent an associate to the premises to investigate. The associate determined, of course, that the address was that of an apartment house. The associate also determined that New Choices Press published one book and several tapes, but furnished no product or services entitled “New Choices.”
Beginning in late 1988, Lang’s office received a number of phone calls from persons trying to reach New Choices For The Best Years, whose number was not yet in the telephone directory. The calls ceased from September 1989 to May 1990 after both the Manhattan Yellow and White Pages listed New Choices For The Best Years in the summer of 1989. In late May 1990, however, the magazine changed its phone number and once more Lang received misdirected calls. Retirement Living elaims that this new series of calls resulted from the phone company’s failure to give out the correct number, and the remedying of this error caused the misdirected calls to cease. Lang, on the other hand, maintains that the calls persisted at least up to December 1990.
Meanwhile, the first set of phone calls prompted Lang, in May 1989, to bring suit in state court to enjoin Retirement Living from using the name “New Choices”, under New York General Business Law, N.Y. Gen.Bus.Law § 133 (McKinney 1988). Retirement Living removed the suit to federal district court, where Lang’s motions for preliminary injunctive relief were denied. No. 89 Civ. 3868 (S.D.N.Y. Nov. 6, 1989),
aff'd,
II
The central issue in trade name infringement cases such as this one is the same as it is in trademark cases, namely, whether there is a likelihood of confusion.
1
See Restatement (Third) of Unfair Competition
§ 20 (Tent. Draft No. 2,1990);
see also Accuride Int’l, Inc. v. Accuride Corp.,
Federal Rules of Civil Procedure 56(c) provides, of course, that the court shall grant summary judgment when the pleadings, evidence obtained through discovery, and affidavits show that there is no genuine issue of material fact, and the moving party is entitled to judgment as a matter of law. As the Supreme Court explained in
Anderson v. Liberty Lobby, Inc.,
Although appellant does not dispute these general standards, she asserts that they require greater justification for a grant of summary judgment in a trademark case, since the existence of a likelihood of confusion may involve a series of inferences. Our cases, however, show that summary judgment may be appropriate in certain trademark actions. For example, in
Universal City Studios, Inc. v. Nintendo Co., Ltd.,
The
Polaroid
test looks to the following factors: the strength of the prior owner’s mark, the similarity between the two marks, the competitive proximity of the products, the likelihood that the prior user will bridge the gap, actual confusion, the defendant’s good faith, the quality of defendant’s product, and the sophistication of the buyers.
Polaroid
at 495. In applying this test, the list of factors “does not exhaust the possibilities,”
id.
(citing
Restatement of Torts
§§ 729, 730, 731), and “[n]o single
Polaroid
factor is determinative.”
Plus Products v. Plus Discount Foods, Inc.,
*581 1. Strength of the Mark
Here, the inquiry focuses on “the distinctiveness of the mark, or more precisely, its tendency to identify the goods” as coming from a particular source.
McGregor-Doniger,
The parties agree, although the court is not so confident, that Lang’s trade name is suggestive.
2
Lang argues that as a suggestive name, her name is entitled to protection and is strong without evidence of secondary meaning. Although a suggestive mark is
entitled to registration
without evidence of secondary meaning,
Abercrombie & Fitch Co. v. Hunting World, Inc.,
As we have suggested, extensive third party use of the words “Choice” and “Choices” weighs against a finding that Lang’s trade name is strong.
Plus Products,
Lang also invites this court to adopt the doctrine of secondary meaning in the making.
See Cicena Ltd. v. Columbia Telecommunications Group,
2. Similarity of the Marks
This factor looks to whether the similarity of the marks is likely to provoke confusion among prospective purchasers.
McGregor-Doniger,
Both designations include as their focal point the words “New Choices.” However, Lang’s name always includes the word *582 “Press,” whereas Retirement Living’s mark always includes the words “For The Best Years.” The typeface also serves to distinguish the two designations, as does the location of the designations on the products. See Restatement, supra, § 21 comment c at 192. As such, the general impression conveyed to the public by these designations differs significantly, and therefore we agree with the district court that the similarities do not create an issue of fact on the likelihood of consumer confusion.
3.Proximity of the Products
This factor focuses on whether the two products compete with each other. To the extent goods (or trade names) serve the same purpose, fall within the same general class, or are used together, the use of similar designations is more likely to cause confusion. See Restatement, supra, § 21 comment j at 197-99. The district court found that the products were not proximate.
Because Retirement Living’s magazine caters to the interests of older adults generally, whereas Lang’s publishing house markets her book and tapes to all people who seek specifically to enhance their charisma, the products neither compete nor serve the same purpose. Lang’s book and tapes are best classified as image-building products; Retirement Living’s magazine addresses diverse topics of interest to mature consumers, including travel, finance, health, and nutrition. The two companies’ products are not used together. Although both Lang’s publishing house and Retirement Living’s magazine are in the field of publishing, this does not render them proximate.
See, e.g., Inc. Publishing Corp. v. Manhattan Magazine, Inc.,
4. Bridging the Gap
This factor turns on the likelihood that Lang will enter Retirement Living’s market. The district court correctly found that Lang’s expansion plans remained “wholly speculative.”
The district court did not draw a favorable inference from Lang’s evidence regarding her expansion plans, and it is argued that as the nonmovant, the court should have drawn all inferences in her favor and thus should not have dismissed her plans so summarily. Even if there were such an error, however, there is no genuine issue of fact as to the likelihood of confusion for two reasons. First, even if Lang does effectuate her expansion plans, she will not have “bridged the gap” because the plans do not include the publication of either a magazine or any other publication directed specifically to the interests of older adults. Second, “the intent of the prior user to expand or its activities in preparation to do so,
unless known by prospective purchasers,
does not affect the likelihood of confusion.”
Restatement, supra,
§ 21 reporter’s note at 210 (emphasis added);
see also McGregor-Doniger, Inc.,
5. Actual Confusion
The approximately four hundred phone calls and several letters received by Lang from people attempting to reach Retirement Living’s magazine obviously reflect some sort of confusion. At issue is whether this is the type of confusion against which the Lanham Act was designed to protect.
The Lanham Act seeks to prevent consumer confusion that enables a seller to pass “off his goods as the goods of another.”
Programmed Tax Systems, Inc. v. Raytheon Co.,
It is not clear what prompted the error on the part of each caller. The evidence shows that the calls ceased following the listing of New Choices For The Best Years in local phone books, likely indicating that the confusion resulted from the absence of any listing for New Choices For The Best Years. The evidence also shows, however, that several callers did have some question about whether the two entities were affiliated. At any rate, no evidence links the confusion evinced by the calls to any potential or actual effect on consumers’ purchasing decisions.
Moreover, a closer look at Lang’s claim shows that her reliance on the phone calls as evidence of actual confusion is misplaced. Appellant emphasizes that because this case involves reverse confusion, the commercial injury she has suffered is an erosion of goodwill and a loss of control over her reputation, and as such is a more subtle injury than the customary diversion of trade engendered by direct confusion. Reverse confusion exists when a subsequent user selects a trademark that is likely to cause consumers to believe, erroneously, that the goods marketed by the prior user are produced by the subsequent user.
Restatement
§ 20(l)(c) & comment f at 174;
see also Banff, Ltd. v. Federated Dept. Stores, Inc.,
6. Good Faith
This factor “looks to whether the defendant adopted its mark with the intention of capitalizing on plaintiff’s reputation and goodwill and any confusion between his and the senior user’s product.”
Edison Brothers Stores, Inc. v. Cosmair, Inc.,
Selection of a mark that reflects the product’s characteristics, request for a trademark search and reliance on the advice of counsel are factors that support a finding of good faith.
E.S. Originals Inc. v. Stride Rite Corp.,
At bottom, Lang relies, as evidence of bad faith, on Retirement Living’s attorneys’ inability to recall conversations leading up to Retirement Living’s selection of the magazine’s name. However, in light of the facts leading up to Retirement Living’s choice of the mark and the improbability that Retirement Living would choose this mark in the hope of capitalizing on New Choices Press’ reputation, the attorneys’ forgetfulness fails to raise a genuine issue of fact.
In sum, our consideration of the relevant Polaroid factors 3 compels the legal conclusion that Lang failed to raise a genuine issue of material fact on the existence of a likelihood that Retirement Living’s use of its mark will confuse reasonably prudent purchasers. Accordingly, the district court properly granted summary judgment for Retirement Living on Lang’s Lanham Act claim.
Ill
Our review of Lang’s remaining claims indicate that they also lack merit. First, because the district court properly held that, as a matter of law, there was no likelihood of confusion, Lang’s damage claim must fail. Turning next to Lang’s New York anti-dilution claims, to prevail under N.Y.Gen.Bus.L. § 368-d (McKinney 1988), Lang must show that her trade name has a truly
“distinctive
quality” or has “acquired a secondary meaning in the mind of the public.”
Allied Maintenance Corp. v. Allied Mechanical Trades, Inc.,
IV
Accordingly, the judgment of the district court is affirmed.