Duluth News-Tribune, a Division of Northwest Publications, Inc. v. Mesabi Publishing Co. , 84 F.3d 1093 ( 1996 )

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No. 95-2912
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Duluth News-Tribune, a division *
of Northwest Publications, *
Inc., a Delaware corporation, *
*
Appellant, * Appeal from the United States
* District Court for the
v. * District of Minnesota.
*
Mesabi Publishing Company, a *
Minnesota corporation; Hibbing *
Tribune Company, Inc., a *
Minnesota corporation, *
*
Appellees. *
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Submitted: March 11, 1996
Filed: June 3, 1996
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Before FAGG, BRIGHT, and WOLLMAN, Circuit Judges.
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WOLLMAN, Circuit Judge.
Duluth News-Tribune, a division of Northwest Publications, Inc.,
filed this trademark infringement action against Mesabi Publishing Company
(Mesabi) and Hibbing Tribune Company, Inc., (Hibbing) under section 43(a)
of the Lanham Trademark Act, 15 U.S.C. § 1125(a) (1995) and under Minnesota
Stat. § 325.165 (1995). After considering cross-motions for summary
judgment, the district court1 granted judgment in favor of defendants on
all claims. We affirm.
1
The Honorable Michael J. Davis, United States District Judge
for the District of Minnesota.
I. Background
For more than 100 years plaintiff has circulated a daily newspaper,
the Duluth News-Tribune, in the Northeast region of Minnesota, which
includes the distinct geographic area known as the Iron Range. Although
the paper has always provided both national and regional news coverage, in
1992 plaintiff expanded the Iron Range edition to provide more local
coverage.
From 1946 to the present, defendant Mesabi has published a daily
newspaper, the "Mesabi Daily News," in Virginia, Minnesota, which is
located in the eastern region of the Iron Range. Since 1899 defendant
Hibbing has published a paper Sunday through Friday in Hibbing, Minnesota,
in the western Iron Range. That paper, previously entitled the "Hibbing
Daily Tribune," is now entitled simply the "Daily Tribune."
This controversy began when Mesabi and Hibbing, both subsidiaries of
the Murphy Publishing Company, began a joint publication of a Saturday
newspaper entitled the "Saturday Daily News Tribune," which they
distributed throughout the Iron Range. On July 9, 1994, in response to
plaintiff's complaints about the similarity in names between plaintiff's
paper and the new Saturday paper, defendants added an ampersand between the
words "News" and "Tribune."
Duluth News-Tribune, unsatisfied with this change, filed suit
claiming trademark infringement under the Lanham Act and trademark dilution
under Minnesota law. The district court denied plaintiff's motion for a
preliminary injunction and granted summary judgment in defendants favor on
all counts.
II. The Summary Judgment Standard
Summary judgment is proper when, after reviewing the facts in
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the light most favorable to the nonmovant and giving that party the benefit
of all reasonable inferences to be drawn from the facts, the court finds
that no genuine issue of material fact exists and that the moving party is
entitled to judgment as a matter of law. Barry v. Barry, 78 F.3d 375, 379
(8th Cir. 1996). A factual dispute is material if it might affect the
outcome of the suit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-
148 (1986). On appeal we apply this standard de novo. Barry, 78 F.3d at
379.
III. The Lanham Act: Likelihood of Confusion
To prevail under the Lanham Act, plaintiff must prove that
defendants' use of the name "Saturday Daily News & Tribune" creates a
likelihood of confusion, deception, or mistake among an appreciable number
of ordinary buyers as to the source of or association between the two
papers. See 15 U.S.C. § 1114(1) and General Mills, Inc. v. Kellogg Co.,
824 F.2d 622, 626 (8th Cir. 1987).
In determining whether a likelihood of confusion exists, we consider
the following factors: 1) the strength of the trademark; 2) the similarity
between the parties' marks; 3) the competitive proximity of the parties'
products; 4) the alleged infringer's intent to confuse; 5) evidence of
actual confusion; and 6) the degree of care reasonably expected of
potential customers. Anheuser-Busch, Inc. v. Balducci Publications, 28
F.3d 769, 774 (8th Cir. 1994), cert. denied, 115 S. Ct. 903 (1995). These
factors do not operate in a mathematically precise formula; rather, we use
them at the summary judgment stage as a guide to determine whether a
reasonable jury could find a likelihood of confusion. Factual disputes
regarding a single factor are insufficient to support the reversal of
summary judgment unless they tilt the entire balance in favor of such a
finding. See Squirtco v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980)
("Resolution of [the likelihood of confusion] issue does not hinge on a
single factor").
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Accordingly, we will separately examine each factor with its corresponding
relevant facts.
A. The Strength of the Trademark
As a preliminary matter, we must determine whether plaintiff's mark
is strong enough to merit trademark protection. To do this, we must
classify the mark, "Duluth News-Tribune," into one of four categories: 1)
arbitrary or fanciful, 2) suggestive, 3) descriptive, or 4) generic.
Cellular Sales, Inc. v. Mackay, 942 F.2d 483, 485 (8th Cir. 1991). An
arbitrary or fanciful trademark is the strongest type of mark and is
afforded the highest level of protection. Id. at 486. At the other end
of the spectrum, a generic term is one that is used by the general public
to identify a category of goods, and as such merits no trademark
protection. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d
75, 79-81 (7th Cir. 1977) (holding "Lite Beer" to be generic), cert.
denied, 434 U.S. 1025 (1978). Suggestive and descriptive marks fall
somewhere in between. A suggestive mark is one that requires some measure
of imagination to reach a conclusion regarding the nature of the product.
See American Home Products Corp. v. Johnson Chemical Co. Inc., 589 F.2d
103, 106 (2d Cir. 1978) (holding the mark "Roach Motel" to be suggestive
because "[w]hile roaches may live in some motels against the will of the
owners, motels are surely not built for roaches to live in"). A
descriptive mark, on the other hand, immediately conveys the nature or
function of the product and is entitled to protection only if it has become
distinctive by acquiring a secondary meaning. See 20th Century Wear, Inc.
v. Sanmark-Stardust Inc., 747 F.2d 81, 87-88 (2d Cir. 1984) (finding "Cozy
Warm ENERGY-SAVERS" to be descriptive), cert. denied, 470 U.S. 1052 (1985).
We find that the district court properly classified plaintiff's mark,
"Duluth News-Tribune," as descriptive. The words convey meaning too
directly to be suggestive, yet are too specific
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to be generic. The name "Duluth News-Tribune" notifies the reader that the
product is a Duluth newspaper, but is too specific to describe all
newspapers, or even all Duluth newspapers. Viewing the facts in
plaintiff's favor, we will also assume that the mark "Duluth News-Tribune"
has acquired secondary meaning meriting trademark protection.2
Plaintiff attempts, however, to extend this protection beyond "Duluth
News-Tribune," to the term "News-Tribune," on the theory that customers in
the Iron Range refer to plaintiff's paper in shorthand form as the "News-
Tribune." Plaintiff has offered no evidence sufficient to substantiate
this claim. The only direct evidence of a customer's shorthand reference
to the Duluth News-Tribune is from a customer who refers to the paper as
"Duluth News." Moreover, the widespread use of the words "news" and
"tribune" throughout the newspaper industry precludes plaintiff from
claiming exclusive privilege to use these words. Thus, although the mark
"Duluth News-Tribune" merits some level of protection, the shorthand "News-
Tribune" merits none.
B. The Similarity Between the Parties' Marks
Having determined that the relevant protected mark is "Duluth News-
Tribune," we must consider the similarity between that mark and defendants'
mark, "Saturday Daily News & Tribune." The use of dominant identical words
in common does not mean that two marks are similar. General Mills, 824
F.2d at 627. Rather than consider the similarities between the component
parts of the marks, we must evaluate the impression that each mark in its
entirety is likely to have on a purchaser exercising the attention usually
given by purchasers of such products. Id.2
We take judicial notice of plaintiff's recent registration of
the trademark "Duluth News-Tribune."
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Although the marks are aurally similar, when pronounced in their
entirety the word "Saturday" and the ampersand in defendants' paper make
the two distinguishable. Moreover, several significant visual distinctions
distinguish the two marks. First, in defendants' paper the words "news"
and "tribune" appear on different lines; in plaintiff's paper the words
"news" and "tribune" appear on the same line. Second, defendants' title
appears in two colors, i.e., red and black; plaintiff's title appears all
in black. In addition, the size and style of type used by the two papers
differs. Cf. Esquire, Inc. v. Esquire Slipper Manuf. Co., Inc., 243 F.2d
540, 542 (1st Cir. 1957) (giving weight to distinctive script in avoiding
likelihood of confusion).
The most significant distinction, however, is the defendants'
placement of a blue banner reading, "Publication of the Mesabi Daily News,
Virginia and Daily Tribune, Hibbing" beneath the title. Cf. Pignons S.A.
de Mecanique v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981)
(otherwise similar marks are not likely to be confused when used in
conjunction with clearly displayed name of manufacturer). These
distinctions appear to be sufficient to notify an ordinary customer that
the papers originate from two different publishers.
C. The Competitive Proximity of the Parties' Products
Neither party contests that both papers provide regional and local
news coverage and that they directly compete in the Iron Range; thus we
need not further examine this factor.
D. The Alleged Infringer's Intent to Confuse
Plaintiff alleges bad faith on the part of defendants, pointing
specifically to defendants' adoption of the mark "Saturday Daily News &
Tribune" and simultaneous decision to expand the Saturday edition to
provide regional news coverage shortly after
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plaintiff's paper extended regional coverage in its Iron Range edition.
Plaintiff also points to the absence of a written agreement between Hibbing
and Mesabi as evidence that defendants' "joint venture" explanation for the
use of the words "Daily News & Tribune" is simply an excuse to infringe on
plaintiff's mark.
We find these bare allegations to be unsupported by the record. The
name "Saturday Daily News & Tribune" is a logical merger of the names
"Daily News" and "Daily Tribune." The identification of defendants' paper
as a joint publication appears on each individual paper. The paper's sales
extend to cover both the area served by the Mesabi paper and that served
by the Hibbing paper. The paper is sold in newsstands identified as
belonging to either Hibbing or Mesabi, and through subscriptions to the
Mesabi or Hibbing paper. Likewise, defendants announced the formation of
the joint Saturday edition in each of their respective papers, clearly
identifying the source of the Saturday edition. Moreover, after
plaintiff's initial letter protesting the paper's name, defendants
contacted the Minnesota Newspaper Association and accepted the
Association's recommendation that defendants add an ampersand between the
words "news" and "tribune." The record, then, reveals no evidence of bad
faith on the part of defendants, leaving no genuine factual dispute
regarding defendants' intent.
E. Evidence of Actual Confusion
"[W]hen determining whether there exists a likelihood of confusion,
weight is given to the number and extent of instances of actual confusion."
Life Technologies, Inc. v. Gibbco Scientific, Inc., 826 F.2d 775, 777 (8th
Cir. 1987). Plaintiff points to the following incidents of actual
confusion: 1) plaintiff's receipt of defendants' mail and phone calls;
2) a reporter who alleges that he routinely identifies himself as working
for the News-Tribune, and that on a particular occasion he was asked,
"which News-Tribune?"; 3) plaintiff's receipt of phone calls asking whether
the
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two newspapers are associated; 4) plaintiff's receipt of a subscription
form for defendants' paper; and 5) plaintiff's receipt of a reader's letter
proposing corrections to an article that appeared in defendants' paper.
In evaluating the evidence at the summary judgment stage, we consider
only those responses that are supported by admissible evidence. Postscript
Enterprises v. City of Bridgeton, 905 F.2d 223, 226 (8th Cir. 1990).
Applying this standard, we find that plaintiff's claim of actual confusion
through misdirected mail and phone calls fails to raise a genuine factual
dispute for two reasons. First, the vague evidence of misdirected phone
calls and mail is hearsay of a particularly unreliable nature given the
lack of an opportunity for cross-examination of the caller or sender
regarding the reason for the "confusion." See Davidson & Schaff, Inc. v.
Liberty National Fire Insurance Co., 69 F.3d 868, 871 (8th Cir. 1996)
(refusing to consider hearsay evidence); Vitek Systems, Inc. v. Abbott
Labs., 675 F.2d 190, 193 (8th Cir. 1982) (affirming district court's
decision to discount this type of hearsay evidence). Second, we find such
evidence to be de minimis and to show inattentiveness on the part of the
caller or sender rather than actual confusion. See J. Thomas McCarthy,
Trademarks and Unfair Competition, § 23.2, p.52, n.1 (2d ed. 1984).
The question to the reporter who was asked to specify which News-
Tribune he worked for indicates a distinction in the mind of the
questioner, rather than confusion. See Fisher Stoves, Inc. v. All Nighter
Stove Works, 626 F.2d 193, 195 (1st Cir. 1980) (questions about
affiliations of two companies indicate that customers were aware of
different product sources). The nature of the question demonstrates an
understanding that at least two newspapers contain the words "news" and
"tribune." Likewise, the calls questioning whether the two papers were
associated demonstrate that potential customers do not automatically
associate the words "news" and "tribune" with "Duluth News-Tribune."
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Plaintiff next points to its receipt of a subscription form for
defendants' paper. This evidence is of little value to plaintiff, as upon
defendants' inquiry the sender clarified that she subscribed to both papers
and had inadvertently placed the subscription forms in the wrong envelopes.
Moreover, the fact that her check was made out to "Duluth News" cuts
against plaintiff's claim of actual confusion.
Plaintiff offers one incident of actual confusion -- a letter from
a reader offering plaintiff editorial suggestions regarding an article that
appeared in defendants' paper. Although this incident provides some
support for plaintiff's claim of likelihood of confusion, even several
isolated incidents of actual confusion that occur initially upon the
creation of a potentially confusing mark are insufficient to establish a
genuine issue of material fact as to the likelihood of confusion. See
Astra Pharmaceutical Prod. Inc. v. Beckman Instruments Inc., 718 F.2d 1201,
1207-08 (1st Cir. 1983) (holding that temporary confusion regarding the
association of salesmen from the plaintiff's company with the defendant was
insufficient to raise a genuine issue of material fact); Scott Paper Co.
v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231 (3rd Cir. 1978) (holding
that nineteen misdirected letters in four years were insufficient to
establish likelihood of confusion). Rather, we look to whether an
appreciable number of ordinary purchasers are likely to be so misled, and
here the record before us compels an answer in the negative.
F. The Degree of Care Reasonably Expected of Potential
Customers
In evaluating this factor, we look to the degree of care expected of
an ordinary purchaser. Plaintiff argues that because of the low cost of
newspapers, ordinary buyers will exercise only minimal care in selecting
one. Although plaintiff's argument is not without some force when applied
to the customer who makes a
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quick stop at a convenience store to buy a paper, plaintiff ignores the
reality of defendants' distribution methods. Approximately ninety-two
percent of defendants' papers are sold through home subscriptions.
Customers who spend the money and effort to subscribe to a newspaper are
likely to know which paper they are buying, and to complain if they get the
wrong one. Moreover, an additional two percent are sold through newspaper
racks that clearly identify defendants as the paper's publication source.
This leaves only six percent of papers sold as potential candidates for
buyer confusion, a number too small to create a genuine issue of fact
regarding the likelihood that an appreciable number of customers will be
confused.
IV. The Appropriateness of Summary Judgment in this Case
When, as in this case, a trademark dispute centers on the proper
interpretation to be given to the facts, rather than on the facts
themselves, summary disposition is appropriate. Woodsmith Pub. Co. v.
Meridith Corp., 904 F.2d 1244, 1247 (8th Cir. 1990).
Our evaluation of the foregoing six factors leads us to conclude that
no factual dispute exists the resolution of which would allow a reasonable
jury to find a likelihood of confusion. Plaintiff's trademark, though
deserving of some protection, is relatively weak. Although the newspapers
themselves compete directly and provide similar news coverage, the titles,
as they appear on the two papers, are sufficiently distinct to allow an
ordinary purchaser to distinguish between them. Moreover, the remaining
factors balance in defendants' favor. We find no evidence that defendants
chose their mark with the intent to infringe on plaintiff's goodwill. The
evidence of actual confusion is de minimis and insufficient to establish
a genuine issue of material fact. Finally, and most decisive, defendants'
distribution methods ensure that the vast majority of ordinary purchasers
will not be confused. Thus we affirm the district
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court's grant of summary judgment on the Lanham Act claims.
V. State Claim: Dilution
The Minnesota anti-dilution statute protects trademark owners from
dilution of the distinctive quality of their marks notwithstanding the
likelihood of confusion. The statute defines "distinctive quality" as
meaning that "the mark is inherently distinctive or has acquired
distinctiveness, and the mark is well known or famous." Minn. Stat. §
325D.165 (1995).
The Minnesota statute, which is similar to other state dilution
statutes, appears to codify the common law, which has functioned to protect
well-known, distinctive marks from uses that are likely to tarnish or erode
the distinctive nature of the mark. See DeRosier v. 5931 Business Trust,
870 F. Supp. 941, 948 (D. Minn 1994) (holding that the Minnesota statute
simply codifies common law); See also Anheuser-Busch, 28 F.3d at 777(interpreting Missouri anti-dilution statute, which is virtually the same
as Minnesota statute, to protect against uses that tend to weaken or
tarnish the unique nature of a mark). See, e.g., Polaroid Corp. v.
Polaroid, Inc., 319 F.2d 830 (7th Cir. 1963) ("Polaroid" as used in
connection with the installation of refrigeration and heating systems
constitutes a dilution of "Polaroid.").
The gravamen of a dilution claim is that the plaintiff's mark be
particularly distinctive and well-known or famous. We conclude that the
mark "Duluth News-Tribune" is not sufficiently distinctive to merit
protection under this statute. Plaintiff cannot expect to acquire
exclusive use, even in a limited area, of the common words "news" and
"tribune." Plaintiff's claim of extensive advertising does not change this
fact. See Esquire, 243 F.2d at 543 (1st Cir. 1957) ("We do not think a
trader can pluck a word . . . out of the general vocabulary and appropriate
it to his exclusive use no matter how much effort and money he may expend
in the attempt").
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Thus, we affirm the district court's grant of summary judgment for
defendants on the state claim.
The judgment is affirmed.
A true copy.
Attest:
CLERK, U. S. COURT OF APPEALS, EIGHTH CIRCUIT.
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