DULUTH NEWS-TRIBUNE, A DIVISION OF NORTHWEST PUBLICATIONS,
INC., a Delaware corporation, Appellant,
v.
MESABI PUBLISHING COMPANY, а Minnesota corporation; Hibbing
Tribune Company, Inc., a Minnesota corporation, Appellees.
No. 95-2912.
United States Court of Appeals,
Eighth Circuit.
Submitted March 11, 1996.
Decided June 3, 1996.
Kenneth R. Hartman, Miami, Florida, argued (Gail A. McQuilkin, on the brief), for Appellant.
Tim A. Strom, Duluth, Minnesota, argued (R. Thomas Torgerson, on the brief), for Appellees.
Before FAGG, BRIGHT, and WOLLMAN, Circuit Judges.
WOLLMAN, Circuit Judge.
Duluth News-Tribune, a division of Northwest Publications, Inc., filed this trademark infringement action against Mesabi Publishing Company (Mesabi) and Hibbing Tribune Company, Inc., (Hibbing) under section 43(a) of the Lanham Trademark Act, 15 U.S.C. § 1125(a) (1995) and under Minnesota Stat. § 325D.165 (1995). After considering cross-motions for summary judgment, the district court1 granted judgment in favor of defendants on all claims. We affirm.
I. Background
For more than 100 years plaintiff has circulated a daily newspaper, the Duluth News-Tribune, in the Northeast region of Minnesota, which includes the distinct geographic area known as the Iron Range. Although the paper has always provided both national and regional news coverage, in 1992 plaintiff expanded the Iron Range edition to provide more local coverage.
From 1946 to the present, defendant Mesabi has published a daily newspaper, the "Mesabi Daily News," in Virginia, Minnesota, which is located in the eastern region of the Iron Range. Since 1899 defendant Hibbing has published a paper Sunday through Friday in Hibbing, Minnesota, in the western Iron Range. That paper, previously entitled the "Hibbing Daily Tribune," is now entitled simply the "Daily Tribune."
This controversy began when Mesabi and Hibbing, both subsidiaries of the Murphy Publishing Company, began a joint publication of a Saturday newspaper entitled the "Saturday Daily News Tribune," which they distributed throughout the Iron Range. On July 9, 1994, in response to plaintiff's complaints about the similarity in names between plaintiff's paper and the new Saturday paper, defendants added an ampersand between the words "News" and "Tribune."
Duluth News-Tribune, unsatisfied with this change, filed suit claiming trademark infringement under the Lanham Act and trademark dilution under Minnesota law. The district court denied plaintiff's motion for a preliminary injunction and granted summary judgment in defendants favor on all counts.
II. The Summary Judgment Standard
Summary judgment is proper when, after reviewing the facts in the light most favorable to the nonmovant and giving that party the benefit of all reasonable inferences to be drawn from the facts, the court finds that no genuine issue of material fact exists and that the moving party is entitled to judgment as a matter of law. Barry v. Barry,
III. The Lanham Act: Likelihood of Confusion
To prevail under the Lanham Act, plaintiff must prove that defendants' use of the name "Saturday Daily News & Tribune" creates a likelihood of confusion, deception, or mistake among an appreciable number of ordinary buyers as to the source of or association between the two papers. See 15 U.S.C. § 1114(1) and General Mills, Inс. v. Kellogg Co.,
In determining whether a likelihood of confusion exists, we consider the following factors: 1) the strength of the trademark; 2) the similarity between the parties' marks; 3) the competitive proximity of the parties' products; 4) the alleged infringer's intent to confuse; 5) evidence of actual confusion; and 6) the degree of care reasonably expected оf potential customers. Anheuser-Busch, Inc. v. Balducci Publications,
A. The Strength of the Trademark
As a preliminary matter, we must determine whether plaintiff's mark is strong enough to merit tradеmark protection. To do this, we must classify the mark, "Duluth News-Tribune," into one of four categories: 1) arbitrary or fanciful, 2) suggestive, 3) descriptive, or 4) generic. Cellular Sales, Inc. v. Mackay,
We find that the district court properly classified plaintiff's mark, "Duluth News-Tribune," as descriptive. The words convey meaning too directly to be suggestive, yet are too specific to be generic. The name "Duluth Nеws-Tribune" notifies the reader that the product is a Duluth newspaper, but is too specific to describe all newspapers, or even all Duluth newspapers. Viewing the facts in plaintiff's favor, we will also assume that the mark "Duluth News-Tribune" has acquired secondary meaning meriting trademark protection.2
Plaintiff attempts, however, to extend this protection beyond "Duluth News-Tribunе," to the term "News-Tribune," on the theory that customers in the Iron Range refer to plaintiff's paper in shorthand form as the "News-Tribune." Plaintiff has offered no evidence sufficient to substantiate this claim. The only direct evidence of a customer's shorthand reference to the Duluth News-Tribune is from a customer who refers to the paper as "Duluth News." Moreover, the widesprеad use of the words "news" and "tribune" throughout the newspaper industry precludes plaintiff from claiming exclusive privilege to use these words. Thus, although the mark "Duluth News-Tribune" merits some level of protection, the shorthand "News-Tribune" merits none.
B. The Similarity Between the Parties' Marks
Having determined that the relevant protected mark is "Duluth News-Tribune," we must consider the similarity between that mark and defendants' mark, "Saturday Daily News & Tribunе." The use of dominant identical words in common does not mean that two marks are similar. General Mills,
Although the marks are аurally similar, when pronounced in their entirety the word "Saturday" and the ampersand in defendants' paper make the two distinguishable. Moreover, several significant visual distinctions distinguish the two marks. First, in defendants' paper the words "news" and "tribune" appear on different lines; in plaintiff's paper the words "news" and "tribune" appear on the same line. Second, defendants' title аppears in two colors, i.e., red and black; plaintiff's title appears all in black. In addition, the size and style of type used by the two papers differs. Cf. Esquire, Inc. v. Esquire Slipper Manuf. Co., Inc.,
The most significant distinction, however, is the defendants' placement of a blue banner reading, "Publication of the Mesabi Daily Nеws, Virginia and Daily Tribune, Hibbing" beneath the title. Cf. Pignons S.A. de Mecanique v. Polaroid Corp.,
C. The Competitive Proximity of the Parties' Products
Neither party contests that both papers provide regional and local news coverage and that they directly compete in the Iron Range; thus we need not further examine this factor.
D. The Alleged Infringer's Intent to Confuse
Plaintiff alleges bad faith on the part of defendants, pointing specifically to defendants' adoption of the mark "Saturday Daily News & Tribune" and simultaneous decision to expand the Saturday edition to рrovide regional news coverage shortly after plaintiff's paper extended regional coverage in its Iron Range edition. Plaintiff also points to the absence of a written agreement between Hibbing and Mesabi as evidence that defendants' "joint venture" explanation for the use of the words "Daily News & Tribune" is simply an excuse to infringe on plaintiff's mark.
We find thеse bare allegations to be unsupported by the record. The name "Saturday Daily News & Tribune" is a logical merger of the names "Daily News" and "Daily Tribune." The identification of defendants' paper as a joint publication appears on each individual paper. The paper's sales extend to cover both the area served by the Mesabi pаper and that served by the Hibbing paper. The paper is sold in newsstands identified as belonging to either Hibbing or Mesabi, and through subscriptions to the Mesabi or Hibbing paper. Likewise, defendants announced the formation of the joint Saturday edition in each of their respective papers, clearly identifying the source of the Saturday edition. Moreover, after plaintiff's initial letter protesting the paper's name, defendants contacted the Minnesota Newspaper Association and accepted the Association's recommendation that defendants add an ampersand between the words "news" and "tribune." The record, then, reveals no evidence of bad faith on the part of defendants, leaving no gеnuine factual dispute regarding defendants' intent.
E. Evidence of Actual Confusion
"[W]hen determining whether there exists a likelihood of confusion, weight is given to the number and extent of instances of actual confusion." Life Technologies, Inc. v. Gibbco Scientific, Inc.,
In evaluating the evidence at the summary judgment stage, we consider only those responses that are supported by admissible evidence. Postscript Enterprises v. City of Bridgeton,
The question to the reporter who wаs asked to specify which News-Tribune he worked for indicates a distinction in the mind of the questioner, rather than confusion. See Fisher Stoves, Inc. v. All Nighter Stove Works,
Plaintiff next points to its receipt of a subscription form for defendants' paper. This evidence is of little value to plaintiff, as upоn defendants' inquiry the sender clarified that she subscribed to both papers and had inadvertently placed the subscription forms in the wrong envelopes. Moreover, the fact that her check was made out to "Duluth News" cuts against plaintiff's claim of actual confusion.
Plaintiff offers one incident of actual confusion--a letter from a reader offering plaintiff еditorial suggestions regarding an article that appeared in defendants' paper. Although this incident provides some support for plaintiff's claim of likelihood of confusion, even several isolated incidents of actual confusion that occur initially upon the creation of a potentially confusing mark are insufficient to establish a genuine issue of material fact as to the likelihood of confusion. See Astra Pharmaceutical Prod. Inc. v. Beckman Instruments Inc.,
F. The Degree of Care Reasonably Expected of Potential Customers
In evaluating this factor, we loоk to the degree of care expected of an ordinary purchaser. Plaintiff argues that because of the low cost of newspapers, ordinary buyers will exercise only minimal care in selecting one. Although plaintiff's argument is not without some force when applied to the customer who makes a quick stop at a convenience store to buy а paper, plaintiff ignores the reality of defendants' distribution methods. Approximately ninety-two percent of defendants' papers are sold through home subscriptions. Customers who spend the money and effort to subscribe to a newspaper are likely to know which paper they are buying, and to complain if they get the wrong one. Moreover, an additiоnal two percent are sold through newspaper racks that clearly identify defendants as the paper's publication source. This leaves only six percent of papers sold as potential candidates for buyer confusion, a number too small to create a genuine issue of fact regarding the likelihood that an appreciable numbеr of customers will be confused.
IV. The Appropriateness of Summary Judgment in this Case
When, as in this case, a trademark dispute centers on the proper interpretation to be given to the facts, rather than on the facts themselves, summary disposition is appropriate. Woodsmith Pub. Co. v. Meredith Corp.,
Our evaluation of the foregoing six factors leads us to conclude that no factual dispute exists the resolution of which would allow a reasonable jury to find a likelihood of confusion. Plaintiff's trademark, though deserving of some protection, is relatively weak. Although the newspapers themselves compete directly and provide similar news coverage, the titles, as they appear on the two papers, are sufficiently distinct to allow an ordinary purchaser to distinguish between them. Moreover, the remaining factors balance in defendants' favor. We find no evidence that defendants chose their mark with the intent to infringe on plaintiff's goodwill. The evidence of actual confusion is de minimis and insufficient to establish a genuine issue of material fact. Finally, and most decisive, defendants' distribution methods ensure that the vast majority of ordinаry purchasers will not be confused. Thus we affirm the district court's grant of summary judgment on the Lanham Act claims.
V. State Claim: Dilution
The Minnesota anti-dilution statute protects trademark owners from dilution of the distinctive quality of their marks notwithstanding the likelihood of confusion. The statute defines "distinctive quality" as meaning that "the mark is inherently distinctive or has acquired distinctiveness, and the mark is well known or famous." Minn.Stat. § 325D.165 (1995).
Thе Minnesota statute, which is similar to other state dilution statutes, appears to codify the common law, which has functioned to protect well-known, distinctive marks from uses that are likely to tarnish or erode the distinctive nature of the mark. See DeRosier v. 5931 Business Trust,
The gravamen of a dilution claim is that the plaintiff's mark be particularly distinсtive and well-known or famous. We conclude that the mark "Duluth News-Tribune" is not sufficiently distinctive to merit protection under this statute. Plaintiff cannot expect to acquire exclusive use, even in a limited area, of the common words "news" and "tribune." Plaintiff's claim of extensive advertising does not change this fact. See Esquire,
The judgment is affirmed.