*1 here is reasons herein. vacate claims. issue stated We the de- CERCLA common claims nial of particular Companies’ whether the law relief on Oil com- pre- arose mon law Companies asserted the Oil claims remand for further post-petition. proceedings opinion. consistent with this Each party shall bear its own costs. A common law claim for dam ages property from contamination arises physical required events “[a]ll
when elements of ... such
to establish the Texaco, Inc. v.
claims occurred.” Sanders
(In Texaco, Inc.), B.R. re
(Bankr.S.D.N.Y.1995) (discussing when damage property
claims for caused arise). depends on contamination This MAGAZINES, MIRROR INC. TIMES whether there has been a release or threatened release of hazardous sub stances, NEWS, L.L.C., whether that release has caused LAS VEGAS SPORTS contamination, News, injury in the form of Vegas Sporting Las d/b/a capable whether the contamination is Appellant. (relying
detection. See id. at 951-52 No. 99-1299. II). matters Chateaugay These are dis case, require puted Appeals, this thus United States Court of bankruptcy findings court to make of fact. Third Circuit. Bankruptcy in this did Court case Argued: Jan. necessary findings make the fact. April Filed: motion, During hearing on Goldman’s Bankruptcy Court refused take
proffered evidence of when releases or Laga
threatened releases occurred facilities,
Facility and the Companies’ Oil Site,
when reached the Tutu PCE’s suscepti-
when the contamination became discovery. disputed
ble of These material preclude determining
facts this Court from Companies’
when the Oil common law therefore, they
claims arose and whether discharged. Accordingly, we vacate
the District affirmance of the Court’s
Bankruptcy Court’s denial of relief and proceedings.
remand for further
III. CONCLUSION reasons, foregoing
For the we affirm the it that the
District Court insofar as held Companies’
Oil CERCLA claims were not
discharged Duplan’s bankruptcy pro-
ceeding, denied the motion to enforce permanent injunction in the Final De- affirm
cree as to those claims. We of relief on the claims for the
denial RCRA *3 Gross, (Argued),
Malcolm Gross irreparable J. immediate harm. We must McGinley, Eaton, Allentown, LaBarre & decide whether the district court erred (a) PA, Appellee. holding that the mark “The Sporting sports periodi- was famous Dechert, (Argued), Diane S. Danoff (b) market; cals LVSN’s use diluted the Rhoads, PA, Philadelphia, Ap- Price & strength of Times Mirror’s mark blur- pellant. (c) ring its distinctiveness and Times Mir- Alito, Aldisert, delay ror’s 15-month suit Barry bringing Before: did preclude finding Judges. Circuit that LVSN’s use immediately irreparable would cause harm THE OPINION OF COURT Mirror. *4 ALDISERT, Judge. Circuit In reviewing grant or denial In 1886 phrase Sporting preliminary injunction, aof we consider granted was federal trademark following: and since that time it has been the banner 1. The law has power entrusted the headline of a weekly publication entitled grant injunction or dissolve an to the Sporting The News. The mark is now of the discretion trial court in the by publisher, owned Times Mirror instance, first and not appel- to the Magazines, Inc. appeal requires This us late court.
to decide if Times Mirror was entitled to a preliminary injunction enjoining publish- a 2. Unless the trial court abuses that er using Vegas from the name Las Sport- discretion, commits an obvious error ing News. in applying the law or makes a seri- ous mistake in considering proof, the Applying relatively new Federal appellate court must judg- take the 1995, Trademark Dilution Act of 15 U.S.C. ment of trial court as presump- (“FTDA” 1125(c) § “Act”), the district tively correct. court injunction against issued the Las News, L.L.C., Vegas Sports Las Ve- d/b/a 3. This limited review is necessitated gas (“LVSN”), using News from grant because the or denial is almost weekly the name on its sports-betting pub- always based on an abbreviated set lication. The court concluded that Times facts, requiring a delicate balanc- likely Mirror was to succeed on the merits ing probabilities of ultimate LVSN, against its dilution claim because success at final hearing with the con- the mark was “famous” its niche market sequences of irreparable immediate and LVSN’s use of publica- the title on its injury which possibly could flow tion diluted the Times Mirror’s mark from preliminary the denial of relief. blurring its distinctiveness. 4. In exercising its limited review of jurisdiction district court had over grant preliminary denial of the dilution pursuant claims to 15 U.S.C. relief, injunctive the appellate court 1121(a) § and 28 U.S.C. 1338. We have (a) asks: Did the movant make a jurisdiction pursuant 28 U.S.C. strong showing likely it is 1292(a)(1). appeal by This was LVSN (b) prevail on the merits? Did the timely filed under Rule Federal Rules of that, movant show without such re- Appellate Procedure. lief, injured? it would be irreparably (c) LVSN contends that the district court grant Would the a preliminary erred granting prelimi- Times Mirror injunction substantially have harmed nary injunctive relief because Times Mir- parties pro- interested (d) ror failed to a establish likelihood of suc- ceedings? Where public lies the cess on the merits of its dilution claim or interest? across the newsstands in- hundred several preliminary a applicant
5. n away in copies given country, most of estab- but the burden bears junction injunctive charge. re- free of such casinos right gambling lishing a will injury irreparable and that lief Atiyeh Dennis publisher LVSN granted. him if it is result publication of his changed the name Moreover, emphasized have we Vegas News to Las Vegas Sports Las prelimi- elementary principle says that he publisher Netvs. The ex- shall not issue nary injunction rea title for two changed publication’s showing irreparable under a cept (1) Las publisher of previous sons: injury. poor reputation, News had Vegas Sports FTC, 530 F.2d Corp. v. A.O. Smith gambling disrepute into having fallen Cir.1976); (3d Loretangeli v. Cri see (2) more “sporting” term casinos Cir.1988). (3d 186, 193 telli, F.2d publication’s con accurately reflected tent, “sports publication I. publication, and gaming” purely its read- provides Sporting News at Ati Op. D. “sports publication.” Ct. baseball, basket- information on ers with changed at the he yeh time admits has a ball, hockey, and week- football and *5 he was familiar publication, of his name 540,000 in approximately of ly circulation Sport The publication Mirror’s with Times The and Canada. States the United change to name ing Since News. in- any provide News does Sporting News, circulation of Vegas Sporting Las gambling, on formation increased, but not sub has publication portion a there is that “believe[s] Mirror stantially. adamantly op- is population of the they and would gambling to posed that LVSN first learned Times Mirror any of favorably prod- [its] not look on Vegas Sporting News Las publishing was magazine was] thought they [the if ucts 1997, September August in 1997. On D. any way.” Ct. in gambling promoting and de- a cease sent LVSN Times Mirror (alteration The original). in at 2 Op. letter, part: which read sist television, in on advertised is magazine solicitations, promotions my attention recently come to mail It direct has typi- sports radio. It is occasionally marketing on a your company $2.99, con- special nine Vegas Sporting sold for but cally entitled Las magazine year each are sold relatively $3.99. tent issues ais Apparently, -this News. Times Mirror years, several the last Over page masthead since the change, recent in The dollars invested millions has to makes reference your magazine attempt improve to in an News Sporting News, stating, part, Vegas Sports Las n in- magazine of its quality News ... that, Sports Vegas “Las readership. crease weeMy....” published Sporting Vegas Las publishes LVSN your com- appear .... It would articles, News, editorials contains unlawfully appro- attempting pany is sports wagering and advertisements is associated will that good priate or indi- gaming enthusiasts sports “for the trademark. federally registered with our App. at a risk.” that like to take viduals of consumer of the likelihood In view Dennis publisher; (Testimony of LVSN you confusion, hereby demand we pub- News is Vegas Sporting Atiyeh). Las (1) cease and desist immediately generally has year 45 times lished Vegas “Las of the use term any further edi- 42,000, special some but circulation (2) News,” a name select 100,- Sporting up to have had circulation tions con- that is not product identify your is sold publication $2.99 fusingly similar our “The Sporting handed the Times Mirror Sporting News” trademark. News when I asked for Las Vegas Sporting News. (citations omitted). App. at 263-264 App. had LVSN using ceased 24-25. phrase “Sporting News” in connection with its Two weeks after Hauze’s investigation, weekly publication. In October after Times Mirror a complaint filed in district negotiations settlement between Times court, charging LVSN with infringing Mirror and proved unsuccessful, LVSN Times Mirror’s registered mark in viola- Times Mirror Hauze, retained Glenn pri- tion of section Act, 32 of the Lanham investigator vate Pennsylvania, gain “to § 1114(1); U.S.C. with designation false as much information as possible regarding origin 43(a) in violation of section availability Vegas the Las Sporting Act, Lanham 1125(a); 15 U.S.C. News,” in anticipation litigation. App. trademark violation section at 31. Hauze began investigation his by 43(c) of Act, the Lanham 15 U.S.C. visiting three newsstands or around Le- 1125(c); and with common law unfair high Valley, Pennsylvania. The first news- competition and infringement. stand he visited in Plumsteadville, 3, 1998, On December both parties par- it both carried Sporting Neius and Las ticipated in an evidentiary hearing on Vegas Sporting News. Vegas Las Times Mirror’s motion for a preliminary News up “was on the shelf with the other injunction, in which sought it enjoin sporting magazines,” but LVSN from phrase using “Sporting News “was down amongst the tabloids.” publication. on its In its March Ct. atOp. D. 6. The day, following Hauze 1999 Order and Opinion, Memorandum found copies of Vegas Las Sporting News district court concluded that Times Mirror for sale at newsstands in Allentown and *6 was likely to succeed the merits of its Quakerville. At newsstand, the Allentown federal trademark dilution and claim con- Vegas Las Sporting News and The Sport- sequently granted Times request Mirror’s ing News were displayed within inches of for a preliminary injunction, thereby en- each in a bay window in front of the joining LVSN from using phrase store, along with large number of other “Sporting in connection with its sporting type publications. weekly publication. The district court John Kastberg, vice-president of Times granted the preliminary injunction solely News, Mirror’s The Sporting conducted his on trademark by dilution blurring grounds own investigation in December dur- and did not consider Times Mirror’s other ing which he visited three newsstands in claims. parties subsequently agreed New York City: inter alia that the preliminary injunction I went to a newsstand in Penn Station would stayed pending appeal this which is a train York, terminal in New I court. went to Barnes & Noble in New York and I went to a newsstand Grand II. Central Terminal is another train The Federal Trademark station Dilution Act New York.... [W]hen I provides: went Penn I Station asked the guy you “Do have the Las Vegas The owner of a famous mark shall News,” and he handed entitled, me the subject to the principles eq- Mirror SpoHing News.... I went uity upon and such terms as the court Noble, the Barnes & asked same reasonable, deems injunction to an question, got Times Mirror Sporting against another person’s commercial use and News thing same happened at name, commerce of mark or trade if Grand Central. All three times I was such use begins after the mark has be- (B) the and extent of use of the of the duration and causes dilution famous come mark, goods with the or mark in connection and to of the quality distinctive used; mark is services with which the provided relief as is such other obtain this subsection. (C) the duration and extent advertis- mark; ing publicity of the 1125(c)(1). 15 U.S.C. (D) extent of the trad- geographical action for trade- cause of federal used; a" in which the mark is ing are grants extra
mark dilution (E) goods of trade for the the channels marks even well-recognized strong, which the mark is and services with confu- a likelihood of consumer absence of used; in- for trademark classical test sion—the (F) of the degree recognition use dimin- the defendant’s fringement —if channels trading mark in the areas and strong identification ishes or dilutes used the marks’ owner of trade with the value associated injunction person against whom the McCarthy on Trademarks mark. ed.1997). sought; (4th § 24:70 Competition Unfair upon (G) is founded dilution doctrine extent of use of the the nature and attenuation gradual that a
premise parties; or similar marks third same trademark, resulting value of a famous use, consti- another’s unauthorized (H) registered the mark was whether prop- of the senior user’s tutes an invasion 3, 1881, Act of March under the an gives rise to erty rights in its mark and on the February Act tort for trade- commercial independent register. principal Id. mark dilution. 1125(c)(l)(A)-(H). 15U.S.C. Mirror The district court held Times facie claim for prima
To establish of success on the act, a likelihood established relief under the federal against claim of its federal dilution merits plead prove: plaintiff must (1) LVSN, Times Mirror’s of a mark plaintiff 1. The is the owner (2) famous; Sporting News” was as a “famous” mark qualifies in interstate commercial use LVSN made totality eight fac- of the light of Sport- Vegas name “Las commerce 1125(c)(1), §in *7 tors listed (3) News”; mark be- Times Mirror’s ing making commercial The defendant is began using LVSN came before famous commerce of a in interstate use News” and Vegas Sporting the name “Las name, mark trade (4) of that name diluted LVSN’s use after began use 3. Defendant’s mark. “The News” strength of famous, and mark became the first only challenges Appellant Because last, causes dilution 4. Defendant’s use prima of Times Mirror’s prongs plain- lessening capacity dilution, we focus our facie claim for atten- identify and distin- mark to tiffs findings court’s on the district tion guish goods or services. is a famous “The News” diluted Act and LVSN’s use under the 24:89; also McCarthy, supra, 4 see Mirror’s mark. strength of Times Mars, Inc., 998 Hershey Corp. Foods (M.D.Pa.1998) 500, (quoting F.Supp. III. may A court consider McCarthy, supra). factors following eight non-exclusive the district court argues that LVSN non of a the famousness vel determining prelimi- Mirror a granting erred mark: its mark “The injunction because nary is not famous
(A)the acquired Sporting inherent or degree finding separate a mark; not make the court did distinctiveness as to the distinctiveness of Times Mirror’s hand, On the other cases stating that trademark. niche-market renown is a factor indicat- ing fame address context ... in which
A. plaintiff and defendant using Appellant same or related contends markets. Sporting News” cannot be famous under Sales, Syndicate Inc. v. Hampshire Paper the Act because it is not famous to the Corp., (7th Cir.1999) 192 F.3d general public, and “substantial case law (internal omitted); footnotes see also Na indicates marks special bisco, Brands, Inc., Inc. v. PF 191 F.3d market, ized rather than well-known to the (2d Cir.1999) (“[D]ilution can oc general public, should not be considered cur where competes the[defendant’s] use ‘famous’ under the federal dilution stat directly the [plaintiffs] as well as ute.” Appellant Br. at 23 (citing Washing where the [defendant] is in a non-compet Bureau, ton Speakers Inc. v. Leading Au ing market. general, the closer the thorities, Inc., F.Supp.2d 503 products are to one another the mar [in (E.D.Va.1999)). However, in the case Ap ketplace], the greater the likelihood of pellant cites for its theory, court did dilution.”). both confusion and not specifically adopt reject a niche (Third) The Restatement of Unfair theory market for fame. See Washington Competition lends further support to the Speakers Bureau, Inc., 33 F.Supp.2d at theory that niche market fame is sufficient (“In case, the instant it is ultimately to protect a mark from dilution within that unnecessary to resolve this still-unsettled market: question, since if even a niche A mark highly that is distinctive only market were sufficient to establish fame to a select class or group purchasers Act, under the consideration of the statuto may protected from diluting uses di- ry factors reveals that plaintiff] [the has rected at that particular group. class or failed to make demonstration.”). even this For example, a mark may be Thus, highly this case is not particularly helpful distinctive purchasers among specif- to our analysis. ic product. type In such circum- recognize We that not all courts’ deci- stances, protection against a dilution of sions have been precise in addressing the the mark’s distinctiveness is ordinarily question whether a mark can be famous in appropriate only against specifical- uses a niche market. The Court Appeals ly particular directed at that class of the Seventh has Circuit addressed the purchasers.... niche market debate: (Third) Restatement of Unfair Competition At an initial glance, appears there (1995 § 25 cmt. e Vol.); Main 4see McCar- be wide variation on this [of issue thy, supra, 24:112. persuaded We are *8 whether a mark in famous a niche mar- that a mark not famous to general the ket is protection entitled to under the public is nevertheless protection entitled to FTDA]. Some cases apparently hold from dilution where both the plaintiff and that in fame a niche market is insuffi- defendant are operating in the same or cient claim, federal dilution while markets, related long so the some hold that such fame is sufficient. mark possesses high degree of fame in However, a closer look indicates that the its niche market. different lines authority are address- ing two different contexts. Cases hold- The district court determined that ing that niche-market fame insuffi- Times Mirror and LVSN competed the cient generally address same, the context in related, or least significantly mar- plaintiff which the and defendant are namely, sports periodicals mar- kets— using the in separate mark markets. ket. LVSN readers, that contends its who magazine’s used on the on News” has been wagering essentially are interested Third, The 1886. headline since banner the readers are distinct sports, on televi- Netos advertised News, Sporting interested who are Sporting sion, pro- in direct mail a distinc- solicitations We find such sports generally. and, radio. motions, occasionally, on the .Surely many, if merit. to be without tion spent has Mirror years, In recent those individuals majority, of the vast not maga- improving the also millions of dollars Vegas in Las sports gamble who finally, Times Mirror wager- Fourth and they are zine. on which sports follow trademark Sporting dis- “The News” therefore that the uses conclude ing. We and Cana- the United States by finding throughout not err court did trict the internet. shared a common da and on Times Mirror LVSN can be famous a mark market. Because (internal marks, quotation Op. at 8-9 D.Ct. high mark has a market where the a niche omitted). We now and citations footnotes within market of distinctiveness degree analysis of the the district court’s review op- and defendant plaintiff and where Sporting “The of the mark famousness market, we along or side erate within eight non- application its of the News” did not commit court district hold statutory for famousness factors exclusive holding that the mark obvious error an II, supra. in Part forth set in its News” famous Sporting “The niche and therefore entitled 1. use of a against FTDA LVSN’s under the first factor under U.S.C. Applying in the same market. mark similar 1125(c)(1), court determined the district § high had a de- Sporting “The News” B. peri- sports in the of distinctiveness gree Sport that “The argues LVSN also Although district market. odicals it is is not famous ing News” finding, its on this did not elaborate court not and does descriptive mark merely a was not erroneous. conclusion factual fame statutory factors for satisfy eight 1125(c)(l)(A)-(H). § in 15 U.S.C. listed acquired or inherent degree district disputes the Appellant Because directly of a bears mark distinctiveness findings regard factual court’s mark is the issue of whether upon 1125(c)(1) § of the application fame and 1125(c)(1)(A). . U.S.C. famous. factors, each factor we review News” is Sporting “The mark re analysis and will not court’s district creative, and thus inherently fanciful court committed unless the district verse high degree mark does have law or applying error an obvious must there distinctiveness. We inherent considering mistake a serious made to which the degree examine fore Smith, 530 See A.O. proof presented. by gaining acquired distinctiveness has F.2d mar in the meaning time secondary over “The concluded that The district -court a trade determine whether ketplace. To under News” mark was acquired has distinctiveness 1125(c)(1) following reasons: meaning, for the we ex secondary attachment (1) the following amine the considerations: First, is a federal- mark; exclusivity of use of length trademark. Because ly registered *9 (2) of the prominence the size or trade- for federal qualify mark does not (3) of substantial distinctive, enterprise; existence it registration unless mark (4) established plaintiff; advertising by the registra- § federal 15 U.S.C. see (5) proof of inten market in the place that long way proving goes tion toward Trading v. Koh I.P. Lund copying. acquired dis- tional inherent or mark has Cir.1998). (1st The Co., Second, 163 F.3d “The ler Sporting tinctiveness. Sporting supported finding district court concluded that “The evidence that the mark News,” although arbitrary not a fanciful or was famous and we will not disturb it. trademark, acquired secondary has mean- ing, sports and thus in distinctiveness 5. market, periodicals because it has been fifth sixth factors in used commerce since and because degrees recognition are the of mark has expended Times Mirror millions degree in its channels of trade and the promoting in advertising dollars their recognition of in trading the mark through mark various media outlets. areas, 1125(e)(l)(E)-(F), §see sev sup- Times Mirror presented evidence to enth factor is the nature and extent port several of the considerations ac- use of a same or similar mark third quired forth in distinctiveness set I.P. 1125(c)(1)(G). § parties, see district Lund. We therefore conclude that the dis- explicitly court did not these address fac trict court did not err finding that “The Nevertheless, in opinion. tors its Sporting gained secondary News” had FTDA not require does that strictly courts
meaning high and a degree distinctive- apply every factor in the statute. See ness its market. 1125(c)(1) § (providing that court may “a as, consider factors such but not limited 2. to”) added). (emphasis It was not an court district also found that abuse of its discretion for the court omit statutory second factor—extent and dura- explicit discussion of these factors tion of mark—weighed use of the in favor analysis, because the majority of the other famous, finding the because The weighed fame factors of finding favor Sporting continuously has pub- News been the mark famous. 1125(c)(1)(B). § lished since 1886. See findWe that the district court did err 6. respect. this
Finally, the district court determined that eighth factor—whether the mark 3. registered'—-favored Mirror, be- court The district found the third cause registered “The News” was statutory factor—extent and duration of 1125(c)(1)(H). § in 1886. See advertising—weighed in finding favor of Accordingly, we hold that the district famous, the mark because Times Mirror court did err by concluding “The presented proof of credible extensive ad- Sporting News” mark was famous in the vertising and publicity additional from the sports periodicals market. 1125(c)(1)(C). Here, too, § Internet. See the district court did not err.
IV. 4. argument a final As against the The fourth factor geographical is the district court’s finding trading famous, extent area which the News” mark was LVSN contends 1125(c)(1)(D). 1125(c)(1) used. See Since requires that a mark be 1886, The Sporting subject News has grown to a test separate to a for fame and a 540,000 circulation of over both Canada test for distinctiveness under the FTDA. States, and the United well as a Although recent agree some courts Appel internet contention,1 site. The district court found this lant’s persuaded arewe See, Nabisco, Brands, Inc., e.g., Inc. v. PF ute independent require- does not include an (2d Cir.1999) 191 F.3d 216 n. disagree.”) ment of distinctiveness.... We ("McCarthy's treatise contends that stat- *10 Review Com The 1987 Trademark the is inconsistent interpretation this genesis the of the lan Report, mission of the statute. and construction language Act, in the 1996 federal contained guage be must not dilution-statute The federal of both “dis that the dual mention said vacuo, where as especially in considered in the introduction tinctive and famous” in the registered mark is senior here the inserted to list of factors was to the Trademark Office. and U.S. Patent that to be policy goal the emphasize 15 U.S.C. registration statute trademark truly had to be protected, that mark § emphasizes The double- prominent and renowned. not be entitled descriptive” shall “merely fa and language “distinctive barreled 1052(e), un- registration, see to federal protection goal the mous” reflected secondary meaning. acquires the mark less to marks “which be confined should Gold, Liquid Paper Co. Scott’s See Scott distinctive, as established fed both Cir.1978). (3d Inc., F.2d minimum, fa at a registration eral in Part already demonstrated We have mous, by separate evi as established III.B.l, that “The swpra, inserted the The Commission dence.” and “has secondary meaning has acquired em hyperbole as term “distinctive” market. See distinctive” become that the mark phasize requirement the 1052(f) chapter shall (“[N]othing §. this without, for inherent registered, used of a mark registration prevent the distinctiveness, designation acquired distinctive has become applicant which been a mark that would not have commerce.”). goods in applicant’s in the federally registered have should leading com- McCarthy, Thomas J. place. The Trademark Review first subject, states: on the mentator Report reveals Commission view, there is In the author’s distinctiveness saw Commission 1125(c)(1)] statutory re separate no [§ of the same as two eviden fame sides “distinctiveness,” apart quirement widespread tiary requires coin which designation be a finding that the from a recognition customer extensive “Distinctive is “famous.” “mark” However, when mark. only synonym used here ness” is amendment, the re House the 1995 is re if Even “distinctiveness” “fame.” was registration quirement federal it requirement, separate as a garded Bill, ne Congress dropped from view, would, be redun in the author’s the mention drop also glected to in the eligible be a “mark” dant. To fac the list of introducing “distinctive” under place first Thus, “distinctive” the word tors. 1125(c)(1)], princi basic trademark [§ statute, unmoored to floating left designation has to that a ples dictate or un statutory requirement any either inherently either “distinctive” derlying policy goal. secondary mean acquisition through omitted). (footnotes Id. ing. (footnotes § 24:91 McCarthy, supra, persuaded Accordingly, we are omitted).2 tests for subject separate mark be event, any distinctiveness. legislative histo- McCarthy explains separate already addressed 1125(c)(l)’s have- “distinctive we ry behind and distinetive- the famousness contexts language: famous” any evi- registration, additional import of Report, The Trademark Review Commission FTDA, ordinarily will be'en- impetus stated: dence of distinctiveness behind traditionally weight.” Report type of evidence which same titled to substantial Commission, can be used prove distinctiveness used to 77 Trade- Review Trademark Although registrant is not prove (1987). fame. Rep. 459-460 apart prove required to distinctiveness *11 168 supra sophistication of “The News.” See
ness
3.
of consumers
(fame
market);
Part III.A
in niche
supra
predatory
4.
intent
(distinctiveness
III.B.l
acquired
Part
of
5.
renown
the senior mark
secondary meaning). Having decided that
junior
of
6.
renown
mark
Times
proved
Mirror has
that its mark had
Data,
(Sweet,
gained secondary meaning
high
J.,
de- Mead
To determine whether LVSN’s The district court concluded that blurred, diluted, use and therefore Judge [of criticism [t]his Sweet’s dilution News,” Mirror’s mark for test] notwithstanding, blurring sufficient the district court applied the dilution fac requires case-by- constitute dilution Judge set tors forth Sweet’s concur case, inquiry, case factual this rence in Mead Data-. Court finds the Sweet factors are similarity 1. of the marks useful evaluating the likelihood that similarity products covered LVSN’s Vegas Sporting use Las the marks News lessens the capacity Sport- identify distinguish VI. ing News *12 or services. goods Mirror’s Times also that dis LVSN contends the (internal quotation atOp. D. 11-12 Ct. prelimi by granting court erred the trict omitted). Applying marks and citations injunction, Mirror nary because Times factors, district court con- the the Sweet irrepa to show that it would failed suffer likely Mirror was that Times cluded injunction harm if not is rable the was claim the on its dilution based on prevail the court point, On this district sued. facts: following stated: First, Not two marks are similar. the context, irreparable In the trademark the marks use dominant only do two may shown even in the absence harm be words, i.e., “Sporting the words identical injury plaintiffs actual business News,” print words they but both those of a on demonstration based single a line that lettering in red on on likelihood success the merits publica- across the horizontally spans that in claim. The therefore finds Court cover, generally features which tion’s injunction, Mir- absence of an Times the Vegas sports figure. Las well-known irreparable ror will harm. suffer Sporting The News News and Sporting styles, and out- type (internal different LVSN use Op. quotation D. Ct. at 13-14 Times omitted). mark in black whereas lines its marks and citations error D. Ct. Sweet’s district white. both manner, the evidence showed whereas Third, marks and their tent. publication cover Mirror cation able, but similar nevertheless. nally, not. chase on ed that consumers of Las changed [these] The LVSN Op. at 12-13. We hold that factors. court did not cover Vegas Fourth, The applying outlines its publications “impulse,” largely based on the but tend to select their Las cover undisputed lettering name might Sporting Vegas Sporting placement Times Mirror use these facts to Ne%os rather of his News is weekly publication. mark in in a thus is similarity do not make testimony News coincidental, periodical. than the con- sophisticated on the well distinguish- an obvious was aware black publisher purchase News time he Second, indicat- known, Judge publi- their pur- but Fi- Independent Opticians, 920 F.2d will or irreparable purpose marks constitute tion). filed (3d immediate and ment publication and delay, beginning when Times on age mining that Times rably ations did not issue. 15-month We notice of the new name of to a mark holder’s Cir.1990) use of one’s own mark amounts the district court did not err Times Mirror’s suit harmed if have held that a does not between the LVSN likely against delay was attributable granting harm. [*] (stating confusion between argues ending persuade irreparable. irreparable injury for LVSN, Mirror parties. preliminary [*] injury, that lack when reputation preliminary Opticians necessarily shows would us, [*] of control potential if Times We Mirror Thiá any, is not injunction 15-month by deter- conclude Ass’n LVSN’s parties’ injunc- irrepa- Mirror negoti- good- argu- dam- over Appellant’s have considered from We After the dilution factors weighing also by erred the district court Data concurrence contentions that Judge Sweet’s Mead prelimi- determining we that the benefits by analysis, the Nabisco supplemented inju- injunctive outweighed the nary not err relief that the district court did conclude and that was.likely to relief would cause LVSN finding ry Mirror such public would be served prevail of its dilution claim. interest merits granting Times Mirror’s motion for pre- ory only provided protection when a liminary injunction. junior Neither contention user applied a deceptively similar has sufficient merit to warrant further goods dis- to similar to confuse a com- cussion. petitor’s consumers about the source of the goods. Schechter, See Frank I. judgment the district court will Rational Protection, Basis Trademark be affirmed. (1927). 40 Harv. L.Rev. In the *13 absence of a dilution action, cause of trade- BARRY, Circuit Judge, Dissenting. mark law was unable to protect mark own- How a famous mark must be before it ers from the unauthorized use of a decep- can protection be afforded under the Fed- tively similar placed upon dissimilar eral (“FTDA”) Trademark Act Dilution is or non-competing goods. passage Before question a impression first in this Cir- FTDA, state anti-dilution statutes cuit, a question which implicates the ex- attempted to fill this gap trademark pansion of trademark rights under the However, law. truly famous Lanham Act and one which has received marks —and “truly” will opera- become the judicial much attention elsewhere since the tive word ordinarily here —are used on a passage of the FTDA. The correct answer nationwide basis but only half of the states question to this is of importance critical in provided dilution, remedies for Congress order that an appropriate balance between recognized the need for a anti- federal free competition and property rights be dilution statute. See H.R.Rep. No. 104- maintained.1 The majority holds that the (1995), at 4 reprinted in 1995 District Court did not err finding that U.S.C.C.A.N. 1029. Accordingly, “The Sporting News” mark was sufficient- passed FTDA was to fill the gap and “to ly famous to merit protection under the bring uniformity and consistency to the FTDA. Because I conclude that Times protection of famous marks.” id. at Mirror has and, not shown in my view, Historically, the Lanham Act has at- cannot show that it likely to satisfy the tempted to balance the two competing threshold requirement, I respectfully goals of protecting consumers protect- and dissent. ing a trademark owner’s investment. The FTDA, however, is concerned only with I. the latter: Fame means FAME It does not have those twin public policy goals of
The FTDA laws of trademark infringe- offers guidance little as to ment[.] what is As a result required may to there find a a kind be mark famous. judicial Thus, restraint courts must rely on about the legislative new law. histo- and, perception ry may where be that it helpful, look does not dilution the- carry any ory compelling which has need protect developed years over public, judicial and that it interpretation only benefits of state coterie anti-dilution of American elite, statutes. business Dilution not theory gen- the United public. eral States emanated from a 1927 Harvard Law Review article posited that pro- Gilson, Jerome 2 Trademark Protection & tection against dilution would fill the gap (1999) § Practice 5.12[1][e] at 5-272 to 5- in trademark law left by infringement (hereinafter the- “Gilson”). Moreover, 1. Commentators ti, have warned expansion Dilution, Confusion, or Delusion? The of a dilution cause of action could harm com Need a Clear International Standard to petition. See, e.g., Mark A. Lemley, The Mod Dilution, Detennine Trademark 25 Brook. J. ern Lanham Act and the Death (1999); Common Int’l L. 659 Klieger, Robert N. Trade- Sense, 1999); 108 Yale L.J. (May Glynn mark Dilution: Whittling Away Jr., S. Lunney, Monopolies, 48 Em Trademark Protection, Rational Basis Trademark 58 U. ory 1999); L.J. (Spring (Summer William Marrolet- Pitt. 1997). L.Rev. where the trademarks registered famous Congress doubt be little there can others, on dissimi- use narrow unauthorized only a select sought protect the trademark for which well-recognized products lar truly famous class of distinctive- an dilutes requirement, registered, such “Without marks. work[.] rogue- law of the famous becomes ness statute anti-dilution trademark, how no matter every 43(c) applied turns Act is Section weapon.” 4 anti-competitive weak, an into provide is intended selectively and McCarthy on Trade- McCarthy, Thomas J. which are marks only to those (4th Competition, ed. marks and famous, and truly Unfair distinctive both (hereinafter 1999) at 24-210 § 24:108 be'adversely likely to most therefore doc- “To save “McCarthy”). protect these To by dilution. affected marks whose by plaintiffs from abuse trine marks, to ensure 'special distinctive, large are not pro- current supplant does bill adjacent wher- placed should sign neon like- on the based trademarks tection of *14 ‘The resides, reading: doctrine the ever committee the confusion, lihood of Need Strong Marks Only Rule: Dilution greater place legislation the amended ” 24r-209; 24:108 at McCarthy 4 Apply.’ must the courts on the emphasis factors at 5-260 § 5.12[l][b] 2 Gilson see also a mark whether determining weigh protected trademarks of (referring to class fame and level of sufficient a possesses “Supermarks”). by FTDA for federal qualify quality to distinctive crys- the Act history of legislative dilution. from protection courts to intended Congress tal clear in 6 (reproduced 100-515 No. S.Rep. determining which selective highly be 41-42), A5, at App. McCarthy those tru- and accorded are famous marks add- 5604(emphasis U.S.C.C.A.N. degree unprecedented an marks ly famous cit- marks truly famous ed). of Examples of Report A 1987 protection. includ- the FTDA Report on a House ed in Commission Review Trademark “Kodak”. See “Buick”, “Dupont”, ed Association Trademark States United (1995), reprint- 104-374, 4at H.R.Rep. No. this uni- (USTA) limited emphasized how U.S.C.C.A.N; 1029, In a 1031. in 1995 ed limit- a “We believe should be: verse sup- amply history nutshell, legislative trademarks, which those category of ed should FTDA the conclusion ports are registered, de- famous truly category narrow be restricted dilu- protection national serving swallow it does marks,' ensuring that adoption of urge the therefore We tion[.] owners allowing mark by law infringement stat- dilution federal selective highly analy- of confusion a likelihood to end-run Commission, Trademark Review ute[.]” indeed, or, know— they sis fear — Recommendations, Trade- & Report they cannot win. (1987).2 Report of Rep. intent Congressional Despite Judiciary Committee the Senate category narrow only a protect FTDA FTDA stated to the precursor early judicial marks, some truly famous 1988 bill granted Act of the interpretations cause selective highly creates federal cursory only a engaging after protection federally registered protect action to all) of the fame (or analysis analysis no from dilu- truly that are marks famous Newspa See, e.g., Gazette mark. of the quality distinctive tion of Inc., F.Supp. Paper, Inc. New pers, in- specifically provision mark. anal- separate (D.Md.1996)(no 688, 696-97 category of narrow to address tended Subsequently, the Commis- Representatives. Commis- on the legislation based 2. became, large part, proposal limited sion’s statute a dilution proposal for sion's McCarthy 24:87. approved FTDA. for the basis marks” only to "famous House of Senate, in not survive but did ysis fame); Hasbro, Inc. addresses, v. Internet alleging that defendant’s main- Ltd., Group, Entertainment 1996 WL tenance of the domain name registrations (W.D.Wash.1996)(entering preli and <dennison.net> Avery diluted Denni- mina injunction ry on dilution claim without son’s “Avery” trademarks. The mark had fame). discussing Little any analysis, if of been in continuous use since the 1930s and course, required would be to find marks had been registered since 1963. The “Buick”, such as “Dupont” or “Kodak” tru “Dennison” had been continuous ly or, in sports context of with use since the late 1800s registered here, which we deal that the mark “New since 1908. See Avery Dennison, 189 F.3d York Yankees” is so famous that even non- at Avery Dennison’s annual advertis- sports fans are well If, aware ing it. expenditures how million, exceeded $5 ever, marks which are not such (al- household annual sales reached billion $3 names can protected by and, no though evidence indicated per- what Act— my view, that is biga “if—those marks centage of these dollar figures applied ex- subjected must rigorous to a analysis. clusively to the “Avery” or “Dennison” As one commentator has noted with some opposed trademarks as company’s to the alarm:” marks). See id. Avery Dennison
[Cjourts also far thus maintained its own have shown website. little incli- nation to limit to the truly After reviewing dilution theory and the famous marks envisioned the drafters legislative intent FTDA, behind the *15 Instead, the courts, [FTDA]. the emphasized Court the role of the fame they when acknowledge the fame re- requirement in “reinstating the balance” in quirement all, at simply state a mark’s the Lanham Act to avoid “over-protecting fame in eonclusory terms without atten- trademarks, the at expense potential tion to the eight fame factors. Unless non-infringing uses.” Id. 875. Despite strictly courts adhere the admittedly the fact that the registered marks had vague dictates of the federal dilution acquired distinctiveness and that four of statute, federal protection will eight the statutory fame factors favored a surely give rise to a regime broad finding that the marks famous, were the rights trademark in gross. Ninth that, Circuit held law, as a matter of N. Klieger, Robert Trademark Dilution: Avery Dennison had failed to meet The Whittling Away the Rational Basis burden of proving fame for two reasons. Protection, Trademark 58 U. Pitt. for First, Id. at 876-77. while recognizing (Summer 1997). L.Rev. that fame in “specialized a seg market This concern has gone unnoticed, might ment” adequate be if the “diluting and courts are now taking pains to empha- uses are directed narrowly at the same rigor size the of the fame requirement. segment,” market the Court noted that example, For the Ninth Circuit recently Avery provided Dennison no evidence of set itself apart from expansive the inter- customer overlap or that defendant’s cus pretations of the FTDA other courts by possessed tomers any degree of recogni vacating permanent a injunction after find- tion of plaintiffs marks. Id. at 877-78. ing trademarks Second, were not widespread third-party use the sufficiently famous for FTDA protection names “Avery” and “Dennison” under and remanding with instructions to enter mined the famousness of the marks. Id. summary judgment for defendant. Thus, at 878. the Court held that the Avery Corp. Dennison v. Sumpton, 189 marks were not entitled protection un (9th Cir.1999). F.3d 868 There, Avery der the FTDA. See also I.P. Lund Trad Dennison, the seller of office supplies ing Co., ApS v. Kohler 163 F.3d 46 & industrial fasteners, (1st sued an Internet e- 49 Cir.1998)(finding mark not famous mail business which offered “vanity” e-mail and noting “mark be promi- [must] truly starters, the disagree. For I market”. renowned”; should be “courts nent much mention history does not legislative categorizing and selective discriminating “niche market” so-called Edwards, less embrace famous”); Kip G. mark as that, niche Beyond of fame.3 theory Law, 579 PLI/ in Dilution Developments for lowering bar theory risks market (Nov.-Dec.1999)(noting that 209, 217 Pat applied it is unless protection trademark interpretations judicial early many for clearly call which to cases prudently Congressional in to heed neglected FTDA For is not and this one. analysis, such an sparingly to applied Act be that the tent is directed Sporting News thing, one mistakenly grant marks and truly famous subscriptions via general public at the “famous” that were to marks protection ed ques- newsstands, thereby begging the (cit niche market specialized only within appro- general public is not the tion: noting that but Neivspapers), ing Gazette the fame assessing universe priate swinging back to may “pendulum exclusively if fame even But the mark? truly famous only of ward would market sports periodicals within Dennison)). Avery (citing marks” fame under enough to establish history, it is legislative If one heeds here FTDA, evidence does paltry Sport- find “The beyond pale simply Moreover, I take finding any such permit “Buick”, to be another News” ing discussion cursory the rather issue “Kodak”, which have names “Dupont”, or Court, of by the District majority, and eye public’s in the associated long been fame. statutory factors eight particular aor company particular awith one immediately strike product ma- with the problem fundamental somewhat Stated truly famous. being niche market application jority’s differently, to find “big fish known as sometimes theory, requirement, meets of this theory,” to the facts pond in small pro- extraordinary it to the entitling thus any conceive hard that it is case nationwide provides FTDA *16 tection or services goods —a consumer Congress’s delib- defeat injunction luxury type, be it some a narrow market —would design. erate cameras, publications. cars, sporting or fish in a small “big approving Courts II. fail theory of trademark pond” evidence to overrun it threatens offame recognize that to Insufficient Trade- law. infringement trademark to service lip paying after majority, similar, permits infringement law mark the Dis- holds that requirement, identical, to coexist marks or even concluding not err did trict Court locally If even a goods. non-competing famous is Sporting News” other all preclude mark can market, famous “niche sports periodicals Corp., Sales, Paper Hampshire Inc. v. history cate legislative in the only reference Cir.1999)(finding (7th niche a so- suggesting F.3d to comes even close in a under circumstances theory found is fame sufficient market called "niche-market” recogni- degree operated within parties of a mark's which both discussion tion, Commis- Review plastic baskets the Trademark where market wholesale narrow might occur with Avery that dilution Den bouquets); noted sion respect necessarily floral for funeral used nison, consumers, but not one universe (involving markets at 877-78 F.3d example, if a "For another. e fasteners products, industrial for office but not level the industrial at mark is famous addresses); Care Man Customer Teletech mail level, ap- may be consumer Co., v. Tele-Tech (California), Inc. agement Inc., at the but not level industrial propriate (C.D.Cal.1997)(involv F.Supp. 1407 Rep. at 461. 77 Trademark level.” consumer par industry” where both "teleservicing ing for the the basis may reasoning provide This ,corporate large services provided ties theory within market a niche application of clients). See, Syndi- e.g., niche. specialized industrial every marks in trade, channel of then nopoly by precluding all others from using conceivably every can trademark be the mark “regardless presence used create a monopoly in a word or absence of ... competition between the symbol proposition clearly contrary owner of the famous —a mark and par- to the practice intent and ties, trademark confusion,” likelihood of is itself It possible law. is find virtually any something federal trademark law had not mark to be “famous” within some seen, mar- surely before was not meant to ket, depending on how narrowly that be any accorded to marginally “famous” market is defined. mark. 15 U.S.C. 1127. It follows inex- orably that if a mark Courtland is Reiehman, L. famous in the State and Federal general public, it is also Dilution, Trademark famous in niche Franchise L.J. and, 1998). case, market in such a (Spring dilution and infringement theories need-not mutual- If marks can be “famous” within some ly Before, exclusive. however, a Court market, depending on how narrowly that categorically adopts the theory that a defined, market is then the FTDA will mark that is not generally renowned, but surely infringement devour Indeed, law. only market, its niche is entitled the unauthorized use of a to protection FTDA, under the the evi- same or a similar market is precisely what dence of fame should rigorously exam- good old-fashioned infringement principles ined. Had such an examination per- been traditionally have been there to remedy here, formed only one conclusion could actual once confusion or likelihood of con- have been reached: the evidence of fame is shown, fusion has been is there simply woefully lacking. no need for dilution principles. Can one imagine clearer case for application of (F) A. Factor those principles than if one were begin The FTDA eight lists non-exclusive stat- manufacturing automobiles and calling utory factors for fame which a may court those automobiles “Buick”? Similarly, if but is required to consider. The the parties operate here within the sports “may” important because it would periodicals make market, case, then this at least little sense to require that a mark my view, a garden variety infringe- immediately strikes one truly case, famous— ment and the complaint alleges just again, “Buick”, “Dupont”, or that. “Kodak”—be analyzed for fame in accordance with these Congress clear, quite however, that *17 factors, although certainly analysis such an the FTDA not designed was for situations would confirm the impression immediate of in which ordinary infringement provid- law fame. The truly less is, famous a mark ed a but, remedy rather, for those situa- however, the rigorous more analysis the of tions which a truly mark on the statutory factors must be in light of dissimilar products deserves, but cannot the evidence of record. receive, protection under infringement It (F), is Factor “the degree of recogni- law—those which, situations in for exam- tion of the mark in the trading ple, areas and no one would ever confuse that truly channels of trade used by the marks’ own- famous mark with the goods or services to er the person against whom in- which the it has been wrongly attached. Con- junction is sought,” which gives gress .the was explicit as to where protection FTDA’s requirement fame its “teeth.” was As shoes, warranted: “DUPONT BUICK the majority notes, however, the aspirin, District and KODAK pianos.” H.R.Rep. Court did not explicitly address this No. fac- 104-374, (1995), 4at reprinted in 1995 tor—and neither did the majority. U.S.C.C.A.N. at 1030. The extensive relief the authorizes, FTDA which gives the guidance The (F) which Factor affords owner of the famous mark a virtual mo- to courts is somewhat 'murky. Act, The at 461; McCarthy at Rep. of “channels not define does example, for phrase that presumably although trade,” the of (F) distribution of chain the
means of Factor any discussion of crux i.e. in question, mark featuring the likely prove to goods is Mirror Times whether is the travel goods the by which the route substantial a recognized is its mark that here, pub- the consumers. ultimate potential consumer — LVSN’s of portion al- Importantly, reader. to the the quantify lisher FTDA does the Again, analysis (F) the focuses Factor though Conse- recognition”. “degree of requisite parties the trade in of channels have called the commentators some quently, conclusion the dictate it does not consumer operate, cut-off for clear percentage for a of channels those solely within rec- example, fame that for McCarthy, recognition. under enough is be trade must mark a ommends FTDA. the defen- 50% of than more known to be in order customers potential dant’s history, a legislative According McCarthy “famous”. considered re “requires substantial finding of N. 24-164; Xuan-Thao see also § 24:92 at area trading both within or fame nown Measuring Wild West: New Nguyen, area trading of mark of Dilution Under Proving Fame S.Rep. suit.” to the party other Act, 63 Dilution Trademark the Federal McCarthy in 6 (reproduced 100-515 No. a (1999)(advocating 201, 233 Albany L.Rev. at 43), U.S.C.C.A.N. A5, App. defendant’s among recognition of 40% rate added); 77 Trade see also 5605(emphasis sur- nationwide in a customers potential (advocating at 461 Rep. any specific I not wed am While vey). substantial to a known well “should recog- for consumer percentage minimum of purchasers of the relevant portion fact with the issue nition, take I do added). services.”)(emphasis goods prelimi- granted been has Mirror Times than standard note, higher This, I evi- offering any injunction without nary standard persons” of number “appreciable recognition consumer whatsoever dence of in which action infringement in an applied of trade.4 channel in LVSN’s if shows it only may prevail plaintiff indicating of evidence absence pru ordinarily number appreciable an channel in LVSN’s consumers in that product type purchasers dent mark, it Mirror’s Times recognize trade confused likely to become question District view, my wrong, defen by the goods source to the to conclude majority Court Trademark See 77 mark. use of dant’s away given LVSN readership. Because what little gaze from its averts majority 4. The adver- casinos, primarily on it survives party’s relating either does exist evidence tend advertisers LVSN's cop- tising revenues. majority LVSN trade. channel handi- "casinos, companies, [and] 42,000 paging 22,000 out (approximately ies Mirror, WL charge cappers.” at no circulation) are made available hand, News, on the noat *2. The advertises, are available Many others Nevada. in charge *18 memorabilia, Louisiana, alia, col- sports Mississippi, inter casinos collections, Foxwood, apparel, lectibles, Con- Jersey and commemorative City, New Atlantic au- copies products is of percentage equipment, tobacco Only sporting small necticut. approximately competitors for advertis- the LVSN's Of. at newsstands. tomobiles. sold sports couple of 11,000 readership not 10,000 copies are sent to ing to dollars states, such publications, a handful gambling newsstands but magazines, hundred sold; 1,500 actually Magazine City approximately Today, Atlantic only Gaming By on publisher. reports the News are returned Player. rest Casino na- reports available contrast, is LVSN sports; News spectator major six news- gam- subscriptions through on roulette, also gambling, but sports only tionwide not racing, racing, car stands. bling on horse elec- presidential blackjack, slots—and craps, addition, evidence does record tions. advertising revenues overlap any if much 176
the publications share a common market
inary injunction may not be based on facts
and that the mark is famous within that
presented
at a hearing, or not present-
market.
News,
The Sporting
moreover, is
ed through affidavits, deposition testimo-
available at newsstands to members of the
ny, or
documents,
about
particu-
general public, just as Buick automobiles
lar situation [ ] of
moving
part[y].”
and Kodak film are available
the gener-
Adams v. Freedom Forge
Corp.,
F.3d
public.
al
Accordingly, to be
to a
entitled
475,
(3d Cir.2000).
Times Mirror has
preliminary injunction, it was incumbent
simply not come forward with
evi-
any
upon Times Mirror to demonstrate that it
dence
degree
“the
of recognition of the
likely
succeed
proving that
its mark in
trading
areas and channels of
mark is truly famous among members of
trade
by
used
the marks’ owner and the
the general public and, although this
person against whom
injunction
should follow almost automatically, that its
sought.” 1125(c)(1)(F).
U.S.C.
This
mark is recognized by a substantial por-
failure weighs formidably against any con-
tion of LVSN’s consumers—those
like
who
clusion that Times
likely
Mirror is
to suc-
to gamble, who read gambling publica-
ceed on its dilution claim.
tions, or who frequent casinos. Such a
showing is typically achieved through a
B. The remaining factors
properly-conducted recognition survey.5
Certainly, Times
had,
Mirror
ample time
Examination of the remaining statutory
(sixteen
and notice
passed
months
between
factors underscores the inadequacy of the
its
discovery
LVSN’s
pre-
title
evidence
by
offered
Times Mirror. Factor
liminary injunction hearing) to conduct a
(A),
degree
of inherent
acquired
recognition
survey
its mark
and/or
mark,
distinctiveness
encompasses
survey to determine
whether
mark more than simply whether “The Sporting
would be
by
affected
the presence of News” mark has inherent distinctiveness
LVSN’s
title
the marketplace.6
or has acquired distinctiveness through
Assuming, arguendo,
secondary
that a showing
meaning,
as it must to
eligi-
only
within the
ble
sports publication
under the Lanham Act.
market suffices for protection under
This factor suggests
degree
that the
FTDA, Congress’s intent to reserve
mark’s
dilu-
distinctiveness is relevant
to the
tion protection for a select and
fame inquiry.
narrow
As discussed below with
category of truly famous
regard
marks cannot be
(G),
Factor
degree
of a
glossed over, as the majority
done,
has
by mark’s distinctiveness is
weakened
an unsupported finding that “The Sporting
third party use of the mark and
News” mark is famous within its niche and
descriptive nature of the mark. There-
recognized by a significant portion
fore,
of Las
while this factor favors
Mirror,
Vegas Sporting News
prelim-
readers. “A
it does so only slightly.
See,
Markets,
5.
e.g.,
Texaco, Inc.,
Star
Ltd. v.
(1999);
L.Ed.2d 239
Hershey
Corp.
Foods
1030,
F.Supp.
1033 &
Mars,
Inc.,
998 F.Supp.
(M.D.Pa.
(D.Haw.1996)(secondary meaning
survey
1998)
(94%
respondents
recognized
found
of respondents
75%
associated mark
orange,
yellow
brown and
packaging of non-
plaintiff’s
“Star” with
stores;
grocery
recog
peanut
labeled
brand).
candy
butter
as Reese’s
nition survey found that over
respon
96%
plaintiff's
dents recalled
mark when asked to
any grocery store);
name
Ringling Bros.-Bar
Between 1997 and
The Sporting News
Bailey
num
Shows,
&
Combined
Inc. v. Utah
$500,000
spent
study
percep-
market's
Div.
Development,
Travel
F.Supp.
Of
*19
tion of its title.
More,
See "In Brief: The
612
4
The
(E.D.Va.1997)(40%
n.
respondents
of
Merrier,"
2,
Daily,
Media
Mar.
recognition
1998.
survey
The
phrase
associated
"Great
not,
results of
study
however,
this
est
were
Show
on
intro-
circus),
Earth” with
'd,
duced into
(4th
170
evidence.
Cir.1999),
F.3d 449
aff
cert. de
-
nied.
U.S. -.
177 4See the mark. familiarity with public’s of and extent (B), duration Factor present- Mirror Times 24:92. McCarthy than mark, more means use of primarily it advertises Sporting ed evidence length of time simply the and “oc- mail, television use, also the also on but but in direct been has mark n mar- Mirror in “selected the radio Times casionally” its distribution. of breadth Sporting however, evi- not, provide evidence introduce It did not kets”. did bro- or in toto advertising expenses,, either figures sales News’s of its annual dence newsstand, sub- source, when, i.e. where, or how ken down it detail nor did Internet, relying advertising, Moreover, or scription, advertised. has been mark half a weekly circulation only on has an Mirror that Times fact unadorned United and the in Canada copies noted, million website, majority a fact Internet seriously argued It cannot States. is no there significance little is of relative not small is circulation weekly this or of sales the extent regarding evidence including major publications, Internet, there nor advertising on period not small and magazines, sports example, for regarding, any evidence those countries.7 population given from visitors received of “hits” number years of hundred one Thus, over despite in deter- assist would the website which dis- product inexpensive of an publication recognition degree of consumer mining the is a which there in countries tributed mark.8 market in, concomitant and huge interest specify note, FTDA, I does the rela- sports, to do with for, anything (B) for Factors extent of measurements quantitative limited tively com- for certainly does sales (C), minimum as basic circulation such News’s and gen- however, has the evi- When, that the the conclusion pel advertising. con- among case association in this a mental these factors supporting erated dence finding of support sufficient in dilution cases sumers compared “fa- fame. has been deemed the mark of sales evidence mous”, Mirror’s widely (C) how addresses Factor falls advertising expenditures revenue advertised has a mark been frequently short.9 turn, which, suggests publicized famous; 2000)(findmg (S.D.Ind. "Prozac” Wallace, Base- Hits Becomes "Web See Bill
7. period year twelve over sales Statistic, $12 billion in Tribune Knight-Ridder New ball's rendering 2000, publicity 22, News”, unsolicited available "massive” Feb. Business lexicon”); Planet "popular (comparing part distribution WL 14920170 2000 IV), Hollywood Ca million v. publications (Region Inc. sports Hollywood rates —3.2 Illustrated, 815, 840 F.Supp.2d Sports Corp., 80 weekly distribution sino Hollywood” noting “second-tier” "Planet example (N.D.Ill.1999)(finding —and rate.) circulation” noting "static sales more half million annual News's mark famous bearing merchandise $195 million than appears analysis The District Court's 8. Rec mark); Properties v. Untertainment NBA eight to the factor additional added an to have 99-2933, L.L.C., ords, WL 1999 No. "Times emphasizing that statutory factors logo 26, 1999)(finding NBA (S.D.N.Y. May *7 improv- spent of dollars millions has Mirror famous; $1.6 mer appeared on billion logo Mirror, WL 1999 magazine.” Times ing the period and mark year three over chandise at re- expenditures aimed Large *5. Nabisco, v. PF Inc. widely promoted); to estab- not contribute tooling product do Cir.1999) (2d Inc., Brands, F.3d that those be shown it can unless lishing fame crackers Goldfish (finding Pepperidge Farm among relevant effective were efforts marketing famous; year three $120 million possible it is While group of consumers. sales); net annual $200 campaign million may product in its company's investment (finding Bros., F.Supp. Ringling mark, it is of its heightened fame in the result famous; on Earth” slogan Show "Greatest has occurred whether clear from far derived sales annual $103 million over here. mil $19 slogan and over bearing goods advertising expenditures); in annual lion See, Lilly v. Natural & Co. example: Eli CFK, Inc., F.Supp. Exp. Co. American Inc., Answers, F.Supp.2d *20 178 (G) Factor clearly favors LVSN. Factor for purposes of an infringement analysis,
(G) takes into account the possibility that
the mark’s strength was not necessarily
third party use of the mark or elements of
sufficient
sustain
for dilution-by-
claim
the mark has already diluted the mark’s
blurring due to the ordinariness of the
strength, thereby
rendering
mark less word “Blockbuster”. See
The words “sporting” and “news” are party Third use of the commonplace ele- commonplace in our words vocabulary ap- ments of Times Mirror’s mark weakens its pearing many items, only publica- fame. (G), Factor therefore, strongly fa- tions. The majority does acknowledge vors LVSN. that at six publications least other use the word “sporting” in their titles: Grays The legislative history indicates that the Journal, Southern Sporting eight . factors should weighed indepen- Journal, Sporting Thoughts, The Sporting dently “and it is the cumulative effect of Scene, The Sporting and Sporting these considerations Life which will determine Green. LVSN’s use the word “sport- whether a qualifies pro- federal ing” in its title describes magazine’s tection from dilution.” Rep. S. 100-515 content. “Sporting” defined, in this rec- (reproduced in 6 McCarthy App. A5, at ord, as “involving betting or gambling 42), 1988 U.S.C.C.A.N. at Moreover, 5605. sporting men. Involving or inducing the the factors be interpreted should flexibly taking of risk as a sporting proposition.” “so that their relative weight any given Viacom, Inc. Ingram v. Enters., 141 case can be balanced.” Hershey Foods (8th F.3d 886 Cir.1998), Eighth Corp. Mars, Circuit v. Inc., 500, 998 F.Supp. 504 held that while the trademark (M.D.Pa.1998). “Blockbus- In Hershey, for example, ter” for a chain of video stores was strong the District Court found that even though 310, 312 (E.D.Mich.1996)(finding Inc., slogan 925, 965 (E.D.Mich. F.Supp. 941 “Don’t famous; Leave Home Without It” over 1997)(third-party use of "authority,” whether $600 million in marketing expenditures 'over market, or not relevant any diminishes years). six distinctive aspects 'or famous of mark render ing it "not so famous as to protec deserve See, e.g., Avery Corp. Dennison v. Sumpton, FTDA); tion” under the Trustees Columbia (9th Cir.1999); 189 F.3d 868 Corp. Carnival v. University v. Corp., Columbia/HCAHealthcare SeaEscape Cruises, Inc., Casino 74 F.Supp.2d 733, 964 F.Supp. (S.D.N.Y. 744 & 750 (S.D.Fla.1999)("the 1271 word ‘fun’ is 1997)(fame of mark "Columbia” used many health travel, other businesses in the care services gaming, "has been seriously undermined entertainment industries ... cut[ting] party third against claim”); use Carnival’s same or similar Co., Michael marks” Caruso & both Inc. within the industry Enter health care Estefan Inc., prises, industries); 994 F.Supp. Markets, 1463 Star (S.D.Fla.1998)(extensive party F.Supp. third (noting use of multiple party third word "bongo” undermines inherent distinc uses of "Star” and "Star Markets” in food mark), tiveness of opinion, without industry industries); aff'd unrelated Golden (11th Cir.1998); F.3d 353 Hershey, Int’l, Bear U.S.A., Inc., Inc. v. Bear F.Supp. at (finding trade dress not suffi F.Supp. (N.D.Ga.1996)(third parties ciently noting famous and several examples of extensively used both the word "bear” and a third party’s trade dress in food industry simi design bear in connection with the sale of plaintiff's lar to color combination and letter sporting goods clothes). ing); Sports Authority Fitch, v. Abercrombie &
179
nonetheless,
require-
can,
meet
statutory fac-
eight
enumerated
of
six
it
FTDA,
I
believe
(inherent
and do not
distinctive- ment of
Hershey
favored
tors
can,
stage,
upon
based
recognition, du-
preliminary
at this
ness,
consumer
degree of
us,
use,
and
I
advertising
cannot
record before
inadequate
of
and extent
ration
trading
likely
extent
to suc-
geographical
Times
publicity,
Mirror
agree
chan-
widespread distribution
mark.11
and
fame of its
area
proving
ceed in
unlikely
nels),
trade dress
Hershey’s
III.
fame re-
stringent
meet the statute’s
to
use of
party
of third
quirement because
Conclusion
and
trade dress
of the
aspects
the same
broad discretion
grants
The FTDA
Here, Fac-
registered.
it was
because
and,
one
courts
as
commenta-
the federal
(H)
(D)
Mirror
(B),
favor Times
tors
remarked,
judiciary
up to the
“it is
tor has
regis-
is a
Sporting “The
care and
laws with
potent
such
apply
continuously for over 100
mark used
tered
com-
they damage the
lest
common sense
However,
little
there is
nationwide.
years
they
designed
en-
systems
petitive
(B)’s
extent
to Factor
going
evidence
24-222.
24:114 at
McCarthy
hance.”
little or
offered
has
Times Mirror
sales.
FTDA requirements
interpretation
Lax
(E)
(C),
going to factors
no evidence
trademark
easier lawsuits
(G)
forecasts
(F).
against
strongly
weighs
Factor
cause of
a dilution
who will use
par-
third
owners
Finally, because
Mirror.
Times
infringement
to an
as a “tack-on”
nature
action
descriptive
ty use and the
distinctiveness,
of confu-
its
that likelihood
to weaken
claim in the event
tend
mark
(A)
when,
shown,
Times Mir-
favors
as
only slightly
and even
cannot be
Factor
sion
here,
Klieger, Trade-
it
ror.
can. See
perhaps
Dilution,
at 64
U. Pitt. L.Rev.
mark
failed to
view,
Court
my
the District
(“It
before
a matter of time
may just be
did not
the mark —it
sufficiently evaluate
gravamen
as the
confusion
eclipses
factors,
statutory
several
consider
actions
federal
trademark
most
those
weigh
factors
qualitatively
it
nor did
con-
gross displace
rights in
trademark
not imme-
if a mark
Even
it
consider.
did
defining feature
as the
public
protection
sumer
general
recognizable
diately
critique
specific
has
articulated
majority
which
My disagreement with
rests
We
rejected
or all of the factors.
Mirror
some
my
Times
primarily
conclusion that
on
satisfying the threshold
do so as well.
should
not come close
has
qualify for
fame to
requirement of
District
that the
majority
holds
also
saying,
goes
It
without
the FTDA.
under
irreparable
finding that
not err
Court did
therefore,
disagree that
would
I
also
absence of
even in the
may be
injury
shown
its
likely
prevail on
dilu-
Mirror was
Times
harm,
siding
presumably
economic
actual
majority
observation:
claim. One
tion
rejecting the
with the Second Circuit
not err in
did
that the District Court
holds
position
Com
issue.
Circuit’s
Fourth
known
applying
have become
what
Bailey Com
&
pare Ringling Bros.-Barnum
whether
to determine
“Sweet
factors”
Shows,
Devel
Div.
Inc. v. Utah
Travel
bined
diluted,
therefore,
and,
use blurred
LVSN's
Cir.1999),
(4th
opment, 170 F.3d
mark for
Mirror’s
denied, - U.S. -,
120 S.Ct.
cert.
factors,
Sweet
to the
In addition
News”.
Nabisco,
(1999),
191 F.3d
with
L.Ed.2d
criticized, the
roundly
ma-
have been
only
it would
agree,
note
I
223-24.
multiple
adopted the
appears to have
jority
widely sold
impossible for a
well-nigh
Nabisco,
PF
Inc. v.
test articulated
factor
sales
to show
its
product such as Kodak
Cir.1999),
Inc.,
(2d
Brands,
Adams v. Forge Corp., Freedom 204 F.3d (98-1216), P. Benson, Benson Susan L. (3d 475, Cir.2000). surely This is Pro Se on Behalf of Herself in Her , such a situation. I would pre- vacate the Representative Capacity on Behalf of injunction. liminary Trust, SLB Charitable Futures Hold-
ing Company and (98-1217), JGS Trust Appellants 98-1215, 98-1216, Nos. 98-1217. United States Appeals, Court of UNITED STATES SECURITIES AND Third Circuit. COMMISSION, EXCHANGE Argued: March The INFINITY COMPANY; GROUP 4,May Filed: Geoffrey Benson; Geoffrey P. J. O’Connor; Holding Compa- Futures
ny; Trust; SLB Charitable Susan L.
Benson; Trust; Lindsey JGS Spring-
er; Bondage Breaker Ministries
12. A District Court's review of the merits of a
grounds,
(4th
on other