The NEW WEST CORPORATION, a California Corporation, d/b/a New West, Plaintiff-Appellant, v. NYM COMPANY OF CALIFORNIA, INC., a California Limited Partnership, d/b/a NewWest Magazine, Defendant-Appellee. NYM COMPANY OF CALIFORNIA, a California Limited Partnership, d/b/a New WestMagazine, Counterclaimant, v. The NEW WEST CORPORATION, a California Corporation, Counterdefendant.
No. 76-3234.
United States Court of Appeals, Ninth Circuit.
May 1, 1979.
595 F.2d 1194 | 202 U.S.P.Q. 643 | 5 Media L. Rep. 1053
Kenneth E. Kulzick, Lawrence W. Dam, Los Angeles, Cal., for defendant-appellee.
Appeal from the United States District Court, Central District of California.
Before KILKENNY and ANDERSON, Circuit Judges, and SOLOMON, District Judge.*
KILKENNY, Circuit Judge:
This is an appeal from a judgment in a trade-mark case in favor of appellee NYM Company of California, Inc. (NYM) on cross-motions for summary judgment. After finding that there was no genuine issue of material fact, the district court concluded that NYM had established its ownership rights in the trade name and trade-mark “New West” as the title of its magazine and that appellant, The New West Corporation‘s (NWC) use of the name “New West” on its magazine was likely to cause public confusion. The court further concluded that NWC‘s use of the name “New West” as the title оf its magazine infringed upon NYM‘s ownership rights in the “New West” trade name and trade-mark and unfairly competed with NYM in violation of
Each party alleges a use of its mark in interstate commerce. These allegations are not disputed by the parties and are supported by the record.
FACTS
We summarize the material facts as follows: On June 5, 1975, appellee adopted the name “New West” as the title of a new West Coast magazine which it intended to pattern after its existing New York magazine. On June 25, 1975, appellee‘s trade-mark counsel, after investigation, confirmed to appellee that the trade-mark and trade name “New West” was available for the new magazine. A logo for appellee‘s New West magazine was prepared on or about September 18, 1975, and was adopted by appellee on September 25, 1975. During the period September 1, 1975, through January 20, 1976, appellee proceeded with the activities prerequisite to launching the new publication. Discussions were held with potential advertisers, distributors and public relations concerns. On December 9, 1975, a dummy issue of appellee‘s New West magazine was shown to the board of directors of appellee‘s promoting cоmpany, New York Magazine, which authorized the funds required for a direct mailing solicitation to over 400,000 potential subscribers. Other copies of the dummy issue were transported in December, 1975, to trade-mark counsel in Washington, D. C. and to advertising agencies in Connecticut and California. Appellee‘s dummy issue was a mockup of its eventual magazine. It contained sample advertising and editorial copy and was bound in a four-color cover bearing the New West logo as it actually appeared in regular issues.
Appеllee filed a trade-mark application for the “New West” mark on December 23, 1975, which application was later opposed by appellant. On January 20, 1976, appellee publicly announced by way of a press release that the publishers of New York magazine intended to publish a West Coast periodical entitled “New West.” On January 24, 1976, a 430,000 piece direct mail solicitation using the “New West” logo on exemplar covers was mailed by appellee to metropolitan areas in California. The first subscription orders for appellee‘s New West magazine were received on January 27, 1976. By February 5, 1976, a total of 13,883 subscriptions had been received. On February 9, 1976, appellee‘s promoting corporation, New York Magazine, published its February 23, 1976, issue which contained a special New West supplement prominently displaying the “New West” logo and containing features of the type eventually carried in New West magazine. Appellee, on February 9, 1976, published 10,000 copies of its inaugural edition which were circulated and sold in various West Coast markets during the ensuing month. Appellee‘s inaugural edition is substantially similar to appellee‘s later regular editions. It is identical in size, use of color, features, advertising and style to current issues of New West magazine.
During the period from December 1, 1975, through April 1, 1976, appellee spent approximately $1,300,000.00 to advertise and promote its New West magazine. The magazine is sold primarily through subscriptions and is distributed primarily through the mails. At the time of trial, appellee had in excess of 150,000 subscribers, which subscribers accounted for 75% Of the total sales for each issue of the magazine.
The promoters of appellant corporation met on October 19, 1975, and decided upon the format for a feature news magazine which they intended to publish. They adopted the name “New West” for the proposed magazine during the first week of December, 1975, and incorporated in California under the name “The New West Corporation” on December 15, 1976. Prior to January 26, 1976, appellant had not publicly disclosed its intent to publish a magazine entitlеd “New West“, nor had appellant prior to that date sold advertising, solicited subscriptions from the public, contacted distributors, or conducted any promotion for its proposed New West magazine. Prior to January 20, 1976, appellant had not even prepared a logo for its proposed magazine.
In June, 1976, appellant announced its intent tо suspend the publication of further issues. At that date appellant had less than 500 paid subscribers to its New West magazine.
Based upon these undisputed facts, the district court concluded that appellee had established its ownership right in the trade name and trade-mark “New West” as the title of its news magazine. Additionally, the court concluded that appellee had not infringed upon any rights of the appellant, nor had appellee unfairly competed with the appellant.
The court further concluded that the aрpellant‘s use and threatened use of the name “New West” as the title of its magazine was likely to cause public confusion with appellee‘s trade-mark, “New West“, and appellee‘s trade name, “New West Magazine“, and that appellant‘s use of the name “New West” as the title to its magazine infringed upon and misappropriated the ownership rights of the appellee in the “New West” trade-mark and trade name as owned by the appellee. Additionally, the district court concluded, among other things, that the appellant‘s use of the name “New West” as the title of its magazine unfairly competed with the appellee in violation of
ISSUES
I. Did the district court err in granting summary judgment to appellee on the ground that the undisputed facts established its ownership of the trade name and trade-mark “New West?”
II. Did the district court err in holding on summary judgment that appellant‘s use of the trade name and trade-mark “New West” was likely to cause public confusion and, therefore, infringed upon and unfairly competed with appellee‘s rights in the mark in violation of the Lanham Act?
III. Did thе district court err in awarding attorney fees to appellee?
I.
Jurisdiction of the district court was based upon
(a) Any person who shall affix, apply, or annex, or Use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall with knowledge of the falsity of such designation of origin or description or representation cause or procure the same to be transported or Used in commerce or deliver the same to any carrier to be transported or used, shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation. (Emphasis supplied.)
Section 1125(a) uses thе term “goods.” The term covers, among other things: “Paper and paper articles, cardboard and cardboard articles; Printed matter, newspaper and periodicals, books; bookbinding material; . . .”
In construing this section the courts have uniformly held that it fashioned a new federal remedy against a particular kind of unfair competition that common law had effectively protected. American Hеritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3, 14 (CA5 1974); Norman M. Morris Corp. v. Weinstein, 466 F.2d 137, 141 (CA5 1972).
The purpose underlying the enactment of the section was to make actionable the deceptive use of false designations of origin. Scotch Whisky Assn. v. Barton Distilling Co., 489 F.2d 809, 813 (CA7 1973).
To recover for a violation of this section it is not necessary that a mark or trade-mark be registered. National Lampoon, Inc. v. American Broadcasting Co., Inc., 376 F.Supp. 733, 747 (S.D.N.Y.1974), aff‘d. 2 Cir., 497 F.2d 1343. The dispositive question is whether the party has a reasonable interest to be protected against false аdvertising. Quabaug Rubber Co. v. Fabiano Shoe Co., Inc., 567 F.2d 154, 160 (CA1 1977).
The term “mark” is defined in
The term “mark” includes any trade-mark, service mark, collective mark, or certification mark entitled to registration under this chapter Whether registered or not. (Emphasis supplied.)
The terms “trade-mark” and “trade name” are defined in
The term “trade-mark” includes any word, name, symbol, or device or any combination thereof Adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others. (Emphasis supplied.)
The terms “trade name” and “commercial name” include individual names and surnames, firm names and trade names Used by manufacturers, industrialists, merchants, agriculturists, and others to identify their businesses, vocations, or occupations; . . . (Emphasis supplied.)
Section 1127 defines the term “use”
For the purposes of this chapter a mark shall be deemed to be Used in commerce (a) on goods when it is placed in any manner on the goods or their containers or The displays associated therewith or on the tags or labels affixed thereto and the goods are sold Or transported in commerce and (b) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in this and a foreign country and the person rendering the services is engaged in commerce in connection therewith. (Emphasis supplied.)
Also expressed in
The intent of this chapter is to regulate commerce within the control of Congress By making actionable the deceptive and misleading use of marks in such commerce ; to protect registered marks used in such commerce from interference by State, or territorial legislation; To protect persons engaged in such commerce against unfair competition ; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies . . . (Emphasis supplied.)
The recent New York district court decision, George Washington Mint, Inc. v. Washington Mint, Inc., 349 F.Supp. 255 (S.D.N.Y.1972), is highly supportive of our holding that appellee established a prior use of the mark without an actual sale of the magazine with the mark affixed thereto. In Washington Mint, the defendant was found to have first shipped goods with its “Washington Mint” mark affixed on March 1, 1972. Plaintiff was found to have first shipped goods with its “Geo. Washington Mint” mark affixed on March 29, 1972. Despite prior affixation by defendant, plaintiff was held to have made out a prior “trademark use” of its mark by reason of its earlier sales efforts. The court there stated:
The plaintiff has established that its first use of the trademark on its goods was on March 29, 1972. Its first use of “The Geo. Washington Mint” in both interstate and intrastate commerce was on December 20, 1971. The initial sales effort began in September 1971. Two hundred plates were ordered from the plaintiff through its sales agent on December 22, 1971. At that time the plaintiff had twenty sample plates on hand which it used for display purposеs. By January 31, 1972 the plaintiff had received orders for approximately 18,000 Whistler plates and orders for 14,000 Wyeth plates. The orders came from 192 dealers.
All this makes out a use by the plaintiff of its mark for the purpose of determining priority. 3 Callman, Unfair Competition, § 76.1 (3d ed. 1968). Actual sale is not necessary. New England Duplicating Co. Inc. v. Mendes, 190 F.2d 415, 417 (1 Cir. 1951); 3 Callman, Supra § 76.2(d) at 288. Here the taking of orders made contracts of sale and the use of “The Geo. Washington Mint” was an integral part of the process of sale. (Emphasis supplied.) 349 F.Supp. at 260.
The First Circuit in Mendes, supra, interpreted the definition of “used in commerce” under § 1127 and held:
It seems to us that although evidence of sales is highly persuasive, the question of use adequate to establish appropriation remains one to be decided on the facts of each case, and that evidence showing, first, adoption, and, second, Use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidence of actual sales. (Emphasis supplied.) 190 F.2d 415 at 418.
Similarly, in Hotel Corp. of America v. Inn America, Inc., Supra, fn. 2, the court held that a party may acquire rights in a designation which may be superior to any rights that a subsequent user may acquire in a confusingly similar term through use thereof in advertising or promotional material connected with the publicizing and/or offering for sale of goods or services, providing that this use has been of such nature and extent as to create an association of the goods or services and the mark with the user thereof.
Appellant has produced no factual dispute relevant to this issue. It merely argues that the district court erred as a matter of law in finding appellee‘s actions to have constituted a prior use of the mark and consequently entitled to protection. We hold that no material factual issue was presented and that the district court properly found that the right to use the trade-mark and trade name “New West” was with the appellee due to its prior “use” of the mark in interstate commerce.
II.
Appellant does not challenge the district court‘s conclusions that it infringed upon and unfairly competed with appellee in connection with the use of the mark. It challenges only appellee‘s ownership of the mark. However, having now decided that appellee had the ownership of and legal right to use the trade-mark and trade name “New West“, it is appropriate that we outline our reasons for supporting the district court on these conclusions.
The courts have uniformly held that common law and statutory trade-mark infringements are merely specific aspects of unfair competition. Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., 395 F.2d 457, 461 (CA3 1968), cert. denied 393 U.S. 934, 89 S.Ct. 293, 21 L.Ed.2d 270; Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627, 632 (CA7 1968), cert. denied 392 U.S. 927, 88 S.Ct. 2286, 20 L.Ed.2d 1386; Heaton Distributing Co. v. Union Tank Car Co., 387 F.2d 477, 483 (CA8 1967).
Trade name infringement also is part of the larger tort of unfair competition and it is based on considerations similar to trade-mark infringement. Waples-Platter Companies v. General Foods Corp., 439 F.Supp. 551, 584 (N.D.Tex.1977). A trade name is descriptive of the manufacturer or dealer himself and applies tо a business and its good will, whereas a trade-mark, in a technical sense, is applicable to the vendible commodities.
Trade-mark and trade name infringement, or unfair competition, preclude one from using another‘s distinctive mark or name if it will cause a likelihood of confusion or deception as to the origin of the goods. James Burrough, Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (CA7 1976); Dresser Industries, Inc. v. Heraeus Engelhard Vacuum, Inc., supra, at 463; Franchised Stores of New York, Inc. v. Winter, 394 F.2d 664, 668 (CA2 1968).
Similarly, under the Lanham Act,
. . . (T)he court must consider numerous factors, including Inter alia the strength or weakness of the marks, similarity in appearance, sound, and meaning, the class of goods in questiоn, the marketing channels, evidence of actual confusion, and evidence of the intention of defendant in selecting and using the alleged infringing name. 523 F.2d at 191.
Neither actual confusion nor intent are necessary to a finding of Likelihood of confusion under the Lanham Act. J. B. Williams Co., Inc. v. LeConte Cosmetics, Inc., supra, at 191, fns. 5, 6; Doran v. Sunset House Distributing Corp., 197 F.Supp. 940, 948 (S.D.Cal.1961), aff‘d. 304 F.2d 251 (CA9 1962); McCarthy, Trademarks and Unfair Competition, § 23:30(B) (1973).
The court in J. B. Williams, supra, also defined the words “strong” and “weak.”
A “strong” mark is one which is used only in a “fictitious, arbitrary and fanciful manner“, See National Lead Co. v. Wolfe, 223 F.2d 195, 199 (9th Cir. 1955), whereas a “weak” mark is a mark that is a meaningful word in common usage, See Sunbeam Lighting Co. v. Sunbeam Corp., 183 F.2d 969, 972-973 (9th Cir. 1950), or is merely a suggestive or descriptive trademark, See Majestic Mfg. Co. v. Majestic Electric Appliance Co., Inc., 172 F.2d 862 (6th Cir. 1949). A “strong” mark is entitled to a greater degree of protection than is a “weak” one because of its unique usage, See Stork Restaurant v. Sahati, 166 F.2d 348, 355 (9th Cir. 1948). 523 F.2d at 192.
The name “New West” does not describe the contents of the magazine nor does the name suggest the type of product involved. See Modular Cinemas of America, Inc. v. Mini Cinemas Corp., 348 F.Supp. 578 (S.D.N.Y.1972); Stix Products, Inc. v. United Merchants & Mfrs., Inc., 295 F.Supp. 479 (S.D.N.Y.1968). Nor is the name “primarily geographically descriptive” as defined by the cases interpreting § 2 of the Lanham Act,
However, even if “New West” is found to be a “weak” mark, this is only one factor to be considered along with several others in determining “likelihood of confusion.” McCarthy, supra at § 11:24, analyzed the various protections courts have given “strong” and “weak” marks and stated: “Strong marks are given ‘strong’ protection protection over a wide range of related products and variations on appearanсe of the mark. Weak marks are given a narrow range of protection both as to products and as to visual variations.” See Family Circle, Inc. v. Family Circle Associates, Inc., 332 F.2d 534 (CA3 1964). Therefore, under the facts presented here, appellee is entitled to protection even if its mark is “weak” due to the obvious similarities of the marks in appearance (See Appendix A) and sound, along with the virtually identical product and market distribution area. In light of the strength of these factors, it is clear that a reasonable consumer of average intelligence and experience would be confused as to the source of these magazines. Identical names, products and area of distribution compel such a conclusion.
Therefore, in weighing all of the elements necessary to a determination of “likelihood of confusion“, appellee is entitled to protection of its mark since appellant‘s use under the undisputed facts presented here creates a false designation of origin and, therefore, unfairly сompetes with appellee in violation of § 1125. The district court did not err in concluding that appellant‘s acts were likely to cause confusion, infringed upon appellee‘s trade-mark and trade name “New West“, and unfairly competed with appellee in violation of § 43(a) of the Lanham Act,
III.
California state law allows recovery of attorney‘s fеes in unfair competition areas.
CONCLUSION
We hold the viewing the undisputed evidence and the inferences which may be drawn therefrom in the light most favorable to the appellant, the appellee was clearly entitled to prevail as a matter of law. British Airways Board v. Boeing Co., 585 F.2d 946, 950-951 (CA9 1978). The judgment of the district court is affirmed as modified by elimination of attorney fees. The cause is returned to the district court for such further proceedings as may seem meet and proper in the premises.
IT IS SO ORDERED.
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
KILKENNY
Circuit Judge