The full case caption appears at the
end of this opinion.OPINION OF THE COURTALDISERT, Circuit Judge. The issue on appeal is whether the district court erred bypreliminarily enjoining Las Vegas Sports News, L.L.C.,d/b/a Las Vegas Sporting News (“LVSN”), from using thephrase “Sporting News” in connection with its weeklysports-betting publication under the Federal TrademarkDilution Act of 1995, 15 U.S.C. S 1125(c) (“FTDA” or “Act”).The district court concluded that Times Mirror MagazinesInc., owner of the federally registered mark “The SportingNews,” was likely to succeed on the merits of its dilutionclaim against LVSN, because the mark was “famous” in itsniche market and LVSN’s use of the title Las Vegas SportingNews on its publication diluted the Times Mirror’s mark byblurring its distinctiveness. The district court had jurisdiction over the dilutionclaims pursuant to 15 U.S.C. S 1121(a) and 28 U.S.C.S 1338. We have jurisdiction pursuant to 28 U.S.C.S 1292(a)(1). This appeal by LVSN was timelyfiled underRule 4, Federal Rules of Appellate Procedure. LVSN contends that the district court erred by grantingTimes Mirror preliminary injunctive relief because TimesMirror failed to establish a likelihood of success on themerits of its dilution claim or immediate irreparable harm.We must decide whether the district court erred by holdingthat (a) the mark “The Sporting News” was famous in thesports periodicals market; (b) LVSN’s use diluted thestrength of Times Mirror’s mark by blurring itsdistinctiveness and (c) Times Mirror’s 15-month delay inbringing suit did not preclude a finding that LVSN’s usewould immediately cause irreparable harm to Times Mirror. In reviewing the grant or denial of a preliminaryinjunction, we consider the following:
1. The law has entrusted the power to grant or dissolve an injunction to the discretion of the trial court in the first instance, and not to the appellate court.
2. Unless the trial court abuses that discretion, commits an obvious error in applying the law or makes a serious mistake in considering proof, the appellate court must take the judgment of the trial court as presumptively correct.
3. This limited review is necessitated because the grant or denial is almost always based on an abbreviated set of facts, requiring a delicate balancing of the probabilities of ultimate success at final hearing with the consequences of immediate irreparable injury which could possibly flow from the denial of preliminary relief.
4. In exercising its limited review of the grant or denial of preliminary injunctive relief, the appellate court asks: (a) Did the movant make a strong showing that it is likely to prevail on the merits? (b) Did the movant show that, without such relief, it would be irreparably injured? (c) Would the grant of a preliminary injunction substantially have harmed other parties interested in the proceedings? (d) Where lies the public interest?
5. The applicant for a preliminary injunction bears the burden of establishing that a right to such injunctive relief and that irreparable injury will result to him of it is not granted. Moreover, we have emphasized the elementary principle that a preliminary injunction shall not issue except under a showing of irreparable injury.
A.O. Smith Corp. v. FTC, 530 F.2d 515, 525 (3d Cir. 1976);see Loretangeli v. Critelli, 853 F.2d 186, 193 (3d Cir. 1988). I. In 1886, the phrase “The Sporting News” was grantedfederal trademark registration and since that time has beenthe banner headline on a weekly publication, entitled TheSporting News. The mark’s present owner, Times MirrorMagazines, Inc., publishes The Sporting News and operatesan internet website devoted to its publication athttp://www.sportingnews.com. The Sporting News provides its readers with informationon baseball, basketball, football and hockey, and has aweekly circulation of approximately 540,000 in the UnitedStates and Canada. The Sporting News does not provideany information on gambling, because Times Mirror”believe[s] that there is a portion of the population that isadamantly opposed to gambling and that they would notlook favorably on any of [its] products if they thought [themagazine was] promoting gambling in any way.” D. Ct. Op.at 2 (alteration in original). The magazine is advertised ontelevision, in direct mail solicitations, in promotions andoccasionally on the radio. It is typically sold for $2.99, butnine special content issues are sold each year for $3.99.Over the last several years, Times Mirror has investedmillions of dollars in The Sporting News in an attempt toimprove the quality of its magazine and to increasereadership. LVSN publishes Las Vegas Sporting News, whichcontains articles, editorials and advertisements on sportswagering “for the sports gaming enthusiasts or individualsthat like to take a risk.” App. at 41 (Testimony of LVSNpublisher, Dennis Atiyeh). Las Vegas Sporting News ispublished 45 times a year and generally has a circulationof 42,000, but some special editions have had a circulationof up to 100,000. The publication is sold for $2.99 atseveral hundred newsstands across the country, but mostcopies are given away in gambling casinos free of charge. In 1997, LVSN publisher Dennis Atiyeh changed thename of his publication from Las Vegas Sports News to LasVegas Sporting News. The publisher says that he changedthe publication’s title for two reasons: (1) the previouspublisher of Las Vegas Sports News had a poor reputation,having fallen into disrepute with gambling casinos and (2)the term “sporting” more accurately reflected thepublication’s content, because the publication was a”sportsgaming” publication, and not purely a “sports publication.”D. Ct. Op. at 3. Atiyeh admits that at the time he changedthe name of his publication, he was familiar with TimesMirror’s publication The Sporting News. Since the 1997name change to Las Vegas Sporting News, circulation of thepublication has increased, but not substantially. Times Mirror first learned that LVSN was publishing LasVegas Sporting News in August 1997. On September 24,1997, Times Mirror sent LVSN a cease and desist letter,which read in part:
It has recently come to my attention that your company is marketing a sports magazine entitled Las Vegas Sporting News. Apparently, this is a relatively recent change, since the masthead page of your magazine makes reference to Las Vegas Sports News, stating, in part, that, “Las Vegas Sports News . . . is published weekly . . . .”
. . . . It would appear that your company is attempting to unlawfully appropriate the good will that is associated with our federally registered trademark.
In view of the likelihood of consumer confusion, we hereby demand that you (1) immediately cease and desist from any further use of the term “Las Vegas Sporting News,” and (2) select a name to identify your product that is not confusingly similar to our “The Sporting News” trademark.
App. at 263-264 (citations omitted). LVSN had not ceased using the phrase “Sporting News”in connection with its weekly publication. In October 1998,after settlement negotiations between Times Mirror andLVSN proved unsuccessful, Times Mirror retained GlennHauze, a private investigator in Pennsylvania, “to gain asmuch information as possible regarding the availability ofthe Las Vegas Sporting News,” in anticipation of litigation.App. at 31. Hauze began his investigation by visiting threenewsstands in or around Lehigh Valley, Pennsylvania. Thefirst newsstand he visited was in Plumsteadville, and itcarried both The Sporting News and Las Vegas SportingNews. Las Vegas Sporting News “was up on the shelf withthe other sporting magazines,” but The Sporting News “wasdown amongst the tabloids.” D. Ct. Op. at 6. The followingday, Hauze found copies of Las Vegas Sporting News forsale at newsstands in Allentown and Quakerville. At theAllentown newsstand, Las Vegas Sporting News and TheSporting News were displayed within inches of each other in a bay window in front of the store, along with a largenumber of other sporting type publications. John Kastberg, vice-president of Times Mirror’s TheSporting News, conducted his own investigation inDecember 1998, during which he visited three newsstandsin New York City:
I went to a newsstand in Penn Station which is a train terminal in New York, I went to Barnes & Noble in New York and I went to a newsstand in Grand Central Terminal which is another train station in New York. . . . [W]hen I went to Penn Station I asked the guy “Do you have the Las Vegas Sporting News,” and he handed me the Times Mirror Sporting News. . . . I went to the Barnes & Noble, asked the same question, got Times Mirror Sporting News and the same thing happened at Grand Central. All three times I was handed the Times Mirror Sporting News when I asked for Las Vegas Sporting News.
App. at 24-25. Two weeks after Hauze’s investigation, Times Mirrorfileda complaint in district court, charging LVSN with infringingTimes Mirror’s registered mark in violation of section 32 ofthe Lanham Act, 15 U.S.C. S 1114(1); with false designationof origin in violation of section 43(a) of the Lanham Act, 15U.S.C. S 1125(a); with trademark dilution in violation ofsection 43(c) of the Lanham Act, 15 U.S.C. S 1125(c); andwith common law unfair competition and infringement. On December 3, 1998, both parties participated in anevidentiary hearing on Times Mirror’s motion for apreliminary injunction, in which it sought to enjoin LVSNfrom using the phrase “Sporting News” on its publication.In its March 4, 1999 Order and Memorandum Opinion, thedistrict court concluded that Times Mirror was likely tosucceed on the merits of its federal trademark dilutionclaim and consequently granted Times Mirror’s request fora preliminary injunction, thereby enjoining LVSN fromusing the phrase “Sporting News” in connection with itsweekly publication. The district court granted thepreliminary injunction solely on trademark dilution byblurring grounds and did not consider Times Mirror’s other claims. The parties subsequently agreed inter alia that thepreliminary injunction would be stayed pending appeal tothis court. II. The Federal Trademark Dilution Act of 1995 provides:
The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.
15 U.S.C. S 1125(c)(1). The federal cause of action for trademark dilution grantsextra protection to strong, well-recognized marks even inthe absence of a likelihood of consumer confusion–theclassical test for trademark infringement–if the defendant’suse diminishes or dilutes the strong identification valueassociated with the plaintiff ‘s famous mark. 4 McCarthy onTrademarks and Unfair Competition S 24:70 (4th ed. 1997).The dilution doctrine is founded upon the premise that agradual attenuation of the value of a famous trademark,resulting from another’s unauthorized use, constitutes aninvasion of the senior user’s property rights in its mark andgives rise to an independent commercial tort for trademarkdilution. Id. To establish a prima facie claim for relief under thefederal dilution act, the plaintiff must plead and prove:
1. The plaintiff is the owner of a mark that qualifies as a “famous” mark in light of the totality of the eight factors listed in S 1125(c)(a),
2. The defendant is making commercial use in interstate commerce of a mark or trade name,
3. Defendant’s use began after the plaintiff ‘s mark became famous, and
4. Defendant’s use causes dilution by lessening the capacity of the plaintiff ‘s mark to identify and distinguish goods or services.
See 4 McCarthy, supra, S 24:89; see also Hershey FoodsCorp. v. Mars, Inc., 998 F. Supp. 500, 504 (M.D. Pa. 1998)(quoting 4 McCarthy, supra). A court may consider thefollowing eight non-exclusive factors in determining thefamousness vel non of a mark:
(A) the degree of inherent or acquired distinc tiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading are a in which the mark is used;
(E) the channels of trade for the goods and se rvices with which the mark is used;
(F) the degree of recognition of the mark in t he trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought;
(G) the nature and extent of use of the same o r similar marks by third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.
15 U.S.C. S 1125(c)(1)(A)-(H). The district court held Times Mirror established alikelihood of success on the merits of its federal dilutionclaim against LVSN, because (1) Times Mirror’s mark”TheSporting News” was famous; (2) LVSN made commercial usein interstate commerce of the name “Las Vegas SportingNews”; (3) Times Mirror’s mark became famous before LVSNbegan using the name “Las Vegas Sporting News” and (4)LVSN’s use of that name diluted the strength of”The Sporting News” mark. Because Appellant only challengesthe first and last prongs of Times Mirror’s prima facie claimfor dilution, we focus our attention on the district court’sfindings that “The Sporting News” is a famous mark underthe Act and that LVSN’s use diluted the strength of TimesMirror’s mark. III. LVSN argues that the district court erred in grantingTimes Mirror a preliminary injunction because its mark”The Sporting News” is not famous and because the courtdid not make a separate finding as to the distinctiveness ofTimes Mirror’s trademark. A. Appellant contends that “The Sporting News” cannot befamous under the Act because it is not famous to thegeneral public, and “substantial case law indicates thatmarks famous in a specialized market, rather than well-known to the general public, should not be considered’famous’ under the federal dilution statute.” Appellant Br.at 23 (citing Washington Speakers Bureau, Inc. v. LeadingAuthorities, Inc., 33 F. Supp.2d 488, 503 (E.D. Va. 1999)).However, in the case Appellant cites for its theory, the courtdid not specifically adopt or reject a niche market theory forfame. See Washington Speakers Bureau, Inc., 33 F. Supp.2dat 503 (“In the instant case, it is ultimately unnecessary toresolve this still-unsettled question, since even if fame in aniche market were sufficient to establish fame under theAct, consideration of the statutory factors reveals that [theplaintiff] has failed to make even this demonstration.”).Thus, this case is not particularly helpful to our analysis. We recognize that not all courts’ decisions have beenprecise in addressing the question whether a mark can befamous in a niche market. The Court of Appeals for theSeventh Circuit has addressed the niche market debate:
At an initial glance, there appears to be a wide variation on this issue [of whether a mark famous in a niche market is entitled to protection under the FTDA]. Some cases apparently hold that fame in a niche market is insufficient for a federal dilution claim, while some hold that such fame is sufficient. However, a closer look indicates that the different lines of authority are addressing two different contexts. Cases holding that niche-market fame is insufficient generally address the context in which the plaintiff and defendant are using the mark in separate markets. On the other hand, cases stating that niche-market renown is a factor indicating fame address a context . . . in which the plaintiff and defendant are using the mark in the same or related markets.
Syndicate Sales, Inc. v. Hampshire Paper Corp. , 192 F.3d633, 640 (7th Cir. 1999) (internal footnotes omitted); seealso Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 222 (2dCir. 1999) (“[D]ilution can occur where the[defendant's] usecompetes directly with the [plaintiff 's] as well as where the[defendant] is in a non-competing market. In general, thecloser the products are to one another [in the marketplace],the greater the likelihood of both confusion and dilution.”). The Restatement (Third) of Unfair Competition lendsfurther support to the theory that niche market fame issufficient to protect a mark from dilution within thatmarket:
A mark that is highly distinctive only to a select class or group of purchasers may be protected from diluting uses directed at that particular class or group. For example, a mark may be highly distinctive among purchasers of a specific type of product. In such circumstances, protection against a dilution of the mark’s distinctiveness is ordinarily appropriate only against uses specifically directed at that particular class of purchasers . . . .
Restatement (Third) of Unfair Competition S 25 cmt. e (1995Main Vol.); see 4 McCarthy, supra,S 24:112. We arepersuaded that a mark not famous to the general public isnevertheless entitled to protection from dilution where boththe plaintiff and defendant are operating in the same orrelated markets, so long as the plaintiff ‘s mark possessesa high degree of fame in its niche market. The district court determined that Times Mirror andLVSN competed in the same, or at least significantlyrelated, markets–namely, the sports periodicals market.LVSN contends that its readers, who essentially areinterested in wagering on sports, are distinct from thereaders of The Sporting News, who are interested in sportsgenerally. We find such a distinction to be without merit.Surely many, if not the vast majority, of those individualswho gamble on sports in Las Vegas also follow the sportson which they are wagering. We conclude therefore that thedistrict court did not err by finding that LVSN and TimesMirror shared a common market. Because a mark can befamous in a niche market where the mark has a highdegree of distinctiveness within the market and where theplaintiff and defendant operate within or along side thatmarket, we hold that the district court did not commit anobvious error by holding that the mark “The Sporting News”was famous in its niche and therefore entitled to protectionunder the FTDA against LVSN’s use of a similar mark inthe same market. B. LVSN also argues that “The Sporting News” is not famousbecause it is merely a descriptive mark and does not satisfythe eight statutory factors for fame listed in 15 U.S.C.S 1125(c)(1)(A)-(H). Because Appellant disputes the districtcourt’s factual findings with regard to fame and itsapplication of the S 1125(c)(1) fame factors, we review eachfactor of the district court’s analysis and will not reverseunless the district court committed an obvious error inapplying the law or made a serious mistake in consideringthe proof presented. See A.O. Smith, 530 F.2d at 525. The district court concluded that “The Sporting News”mark was famous under S 1125(c)(1) for the followingreasons:
First, “The Sporting News” is a federally registered trademark. Because a mark does not qualify for federal trademark registration unless it is distinctive, see 15 U.S.C. S 1052, federal registration goes a long way toward proving that the mark has inherent or acquired distinctiveness. Second, “The Sporting News” has been used on the magazine’s banner headline since 1886. Third, The Sporting News is advertised on television, in direct mail solicitations and promotions, and, occasionally, on the radio. In recent years, Times Mirror has spent millions of dollars improving the magazine. Fourth and finally, Times Mirror uses”The Sporting News” trademark throughout the United States and Canada and on the internet.
D. Ct. Op. at 8-9 (internal quotation marks, footnotes andcitations omitted). We now review the district court’sanalysis of the famousness of the mark “The SportingNews” and its application of the eight non-exclusivestatutory factors for famousness set forth in Part II, supra. 1. Applying the first factor under 15 U.S.C. S 1125(c)(1), thedistrict court determined that “The Sporting News” had ahigh degree of distinctiveness in the sports periodicalsmarket. Although the district court did not elaborate onthis finding, its factual conclusion was not erroneous. The degree of acquired or inherent distinctiveness of amark bears directly upon the issue of whether that mark isfamous. See 15 U.S.C. S 1125(c)(1)(A). The mark “TheSporting News” is not inherently fanciful or creative, andthus the mark does not have a high degree of inherentdistinctiveness. We must therefore examine the degree towhich the mark has acquired distinctiveness by gainingsecondary meaning over time in the marketplace. Todetermine whether a trademark has acquireddistinctiveness by the attachment of secondary meaning,we examine the following considerations: (1) the length orexclusivity of use of the mark; (2) the size or prominence ofthe plaintiff ‘s enterprise; (3) the existence of substantialadvertising by the plaintiff; (4) established place in themarket and (5) proof of intentional copying. I.P. LundTrading v. Kohler Co., 163 F.3d 27, 42 (1st Cir. 1998). Thedistrict court concluded that “The Sporting News,” althoughnot a fanciful or arbitrary trademark, has acquiredsecondary meaning, and thus distinctiveness in the sports periodicals market, because it has been used in commercesince 1886 and because Times Mirror has expendedmillions of dollars in advertising and promoting their markthrough various media outlets. Times Mirror presentedevidence to support several of the considerations foracquired distinctiveness set forth in I.P. Lund . We thereforeconclude that the district court did not err byfinding that”The Sporting News” had gained secondary meaning and ahigh degree of distinctiveness in its market. 2. The district court also found that the second statutoryfactor–extent and duration of use of the mark–weighed infavor of finding the mark famous, because The SportingNews has been continuously published since 1886. SeeS 1125(c)(1)(B). We find that the district court did not err inthis respect. 3. The district court found that the third statutory factor–extent and duration of advertising–weighed in favor offinding the mark famous, because Times Mirror presentedcredible proof of extensive advertising and additionalpublicity from the Internet. See S 1125(c)(1)(C). Here, too,the district court did not err. 4. The fourth factor is the geographical extent of the tradingarea in which the mark is used. See S 1125(c)(1)(D). Since1886, The Sporting News has grown to a circulation of over540,000 in both Canada and the United States, as well asa recent internet site. The district court found this evidencesupported a finding that the mark was famous and we willnot disturb it. 5. The fifth and sixth factors for fame are the degrees ofrecognition of the mark in its channels of trade and the degree of recognition of the mark in the trading areas, seeS 1125(c)(1)(E)-(F), and the seventh factor is the nature andextent of the use of a same or similar mark by third parties,see S 1125(c)(1)(G). The district court did not explicitlyaddress these factors in its opinion. Nevertheless, the FTDAdoes not require that courts strictly apply every factor inthe statute. See S 1125(c)(1) (providing that “a court mayconsider factors such as, but not limited to”) (emphasisadded). It was not an abuse of its discretion for the courtto omit explicit discussion of these factors in its analysis,because the majority of the other fame factors weighed infavor of finding the mark famous. 6. Finally, the district court determined that the eighthfactor–whether the mark was registered–favored TimesMirror, because “The Sporting News” was registered in1886. See S 1125(c)(1)(H). Accordingly, we hold that the district court did not err byconcluding that “The Sporting News” mark was famous inthe sports periodicals market. IV. As a final argument against the district court’sfindingthat “The Sporting News” mark was famous, LVSN contendsthat S 1125(c)(1) requires that a mark be subject to a testfor fame and a separate test for distinctiveness under theFTDA. Although some courts agree with Appellant’s contention,[FOOTNOTE 1] we are persuaded that this interpretation isinconsistent with the language and construction of thestatute. To be sure, S 1125(c)(1) does state that a court mayconsider eight statutory factors, among others,”[i]ndetermining whether a mark is distinctive and famous.” U.S.C. S 1125(c)(1) (emphasis added). We believe, however,that “distinctiveness” as used in S 1125(c)(1) is only asynonym for “fame.” Any other reading of the statutorylanguage will result in the statute being redundant becausethe first statutory factor for fame is “the degree of inherentor acquired distinctiveness” of the mark. See S 1125(c)(1)(A);see also 4 McCarthy, supra, S 24:91 (“[T]here is . . . noseparate statutory requirement of ‘distinctiveness,’ apartfrom a finding that the designation be a ‘mark’ that is’famous.’ ‘Distinctiveness’ is used here only as a synonymfor ‘fame.’ “).[FOOTNOTE 2] If a mark is famous, then it is presumeddistinctive. See Viacom, Inc. v. Ingram Enterprises, Inc., 141F.3d 886, 890 n.6 (8th Cir. 1998). We conclude that thereis no separate statutory requirement of distinctivenessapart from a finding of fame. V. LVSN argues also it was obvious error for the districtcourt to apply Judge Sweet’s test for “dilution by blurring”found in Mead Data Central, Inc. v. Toyota Motor Sales, Inc.,875 F.2d 1026, 1035 (2d Cir. 1989) (Sweet, J., concurring). Before discussing the mechanics of Judge Sweet’s MeadData test for dilution, we first explain how trademarkdilution can occur. A trademark can be diluted twodifferent ways: by blurring or by tarnishment. Only dilutionby blurring is at issue in this appeal. “Blurring” in thiscontext means “to make dim, indistinct or indefinite.”Webster’s Third New International Dictionary 243 (1968).Blurring occurs when the defendant’s use of its markcauses the public to no longer associate the plaintiff ‘sfamous mark with its goods or services; the public insteadbegins associating both the plaintiff and the defendant withthe famous mark. See I.P. Lund, 163 F.3d at 47-48; 4 McCarthy, supra, S 24:70. Dilution by blurring takes placewhen the defendant’s use of its mark causes the identifyingfeatures of the plaintiff ‘s famous mark to become vagueand less distinctive. To prove dilution by blurring, theowner of a famous mark must prove that the capacity of itsmark to continue to be strong and famous would beendangered by the defendant’s use of its mark. See 4McCarthy, supra, S 29:94. To determine whether LVSN’s use blurred, and thereforediluted, Times Mirror’s mark for “The Sporting News,” thedistrict court applied the dilution factors set forth in JudgeSweet’s concurrence in Mead Data:
1. similarity of the marks
2. similarity of the products covered by the marks
3. sophistication of consumers
4. predatory intent
5. renown of the senior mark
6. renown of the junior mark
Mead Data, 875 F.2d at 1035 (Sweet, J., concurring); seeD. Ct. Op. at 10-11. Several courts and commentators have criticized JudgeSweet’s dilution test as the offspring of classical likelihoodof confusion analysis and not particularly relevant orhelpful in resolving issues of dilution by blurring. See, e.g.,4 McCarthy, supra, S 24:94.1; see also, e.g., I.P. Lund, 163F.3d at 49-50 (reiterating the criticisms of Judge Sweet’sdilution by blurring test). Instead of outright rejection of theSweet factors, most courts have improved upon the test’sshortcomings by supplementing the Sweet test with otherconsiderations more pertinent to the issue of dilution. See,e.g., Nabisco, 191 F.3d at 227 (“We think it would be aserious mistake at the outset of our consideration of thenew federal antidilution statute to limit ourselves to thesesix factors or to any other putatively definitive list.”). InNabisco, the Court of Appeals for the Second Circuitarticulated a more complete set of factors for dilution byblurring, including
actual confusion and likelihood of confusion, shared customers and geographic isolation, the adjectival quality of the junior use, and the interrelated factors of duration of the junior use, harm to the junior user, and delay by the senior user in bringing the action.
Id. at 228. Because we consider the dilution analysis inNabisco helpful, we apply it to facts found by the districtcourt. The district court concluded that
[t]his criticism [of Judge Sweet's dilution test] notwithstanding, blurring sufficient to constitute dilution requires a case-by-case factual inquiry, and in this case, the Court finds that the Sweet factors are useful in evaluating the likelihood that LVSN’s use of Las Vegas Sporting News lessens the capacity of The Sporting News to identify and distinguish Times Mirror’s goods or services.
D. Ct. Op. at 11-12 (internal quotation marks and citationsomitted). Applying the Sweet factors, the district courtconcluded that Times Mirror was likely to prevail on itsdilution claim based on the following facts:
First, the two marks are similar. Not only do the two marks use dominant identical words, i.e., the words “Sporting News,” but they both print those words in red lettering on a single line that spans horizontally across the publication’s cover, which generally features a well-known sports figure. Las Vegas Sporting News and The Sporting News use different type styles, and LVSN outlines its mark in black whereas Times Mirror outlines its mark in black and white. The lettering thus is distinguishable, but similar nevertheless. Second, both LVSN and Times Mirror use their mark to cover a weekly publication. Third, the undisputed testimony indicated that consumers do not purchase [these] publications in a sophisticated manner, but tend to select their purchase on “impulse,” largely based on the publication cover rather than the content. Fourth, the similarity of the marks and their placement on the publication cover might be coincidental, but the evidence showed that the publisher of Las Vegas Sporting News was aware of The Sporting News at the time he changed the name of his periodical. Finally, The Sporting News is well known, whereas Las Vegas Sporting News is not.
D. Ct. Op. at 12-13. We hold that the district court did notmake an obvious error in applying these facts to JudgeSweet’s factors. Although the district court applied JudgeSweet’s test and did not explicitly adopt the Nabisco factorsor any other supplemental dilution factors, our applicationof the Nabisco dilution factors to the facts supports thedistrict court’s conclusion that LVSN diluted “The SportingNews” mark by blurring its distinctive qualities. Actual confusion has been shown to exist among thoseselling the two publications, even though no consumersurveys were submitted to the district court during thepreliminary injunction hearing. The evidence presented atthe hearing supports the finding that a strong likelihood ofconfusion is present, because LVSN’s mark and publicationcover are very similar to Times Mirror’s mark and the coverof The Sporting News. Sufficient evidence supports a findingthat customers who purchase these sports publicationsare “unsophisticated consumers,” because they oftenbuy on impulse and because the publications arerelatively inexpensive. Unsophisticated buyers lack thediscrimination and “are more vulnerable to confusion,mistake and misassociations against which the trademarkprotects.” Nabisco, 191 F.3d at 220. Furthermore, LVSNhas a short duration of use because its first use of its newpublication name was in 1997. Finally, Times Mirror did not unreasonably delay inbrining an action against LVSN. Times Mirror firstdiscovered the publication Las Vegas Sporting News inAugust 1997. One month later, Times Mirror sent LVSN acease and desist letter, thereupon triggering a series ofcorrespondence and negotiations between the parties.Times Mirror’s delay was attributable to its belief that LVSNwould change the name of its publication. Oncenegotiations failed, Times Mirror filed suit. Thus, TimesMirror did not unduly delay filing an action against LVSN. After weighing the dilution factors from Judge Sweet’sMead Data concurrence as supplemented by the Nabisco analysis, we conclude that the district court did not err byfinding that Times Mirror was likely to prevail on the meritsof its dilution claim. VI. LVSN contends also that the district court erred bygranting the preliminary injunction, because Times Mirrorfailed to show that it would suffer irreparable harm if theinjunction was not issued. On this point, the district courtstated:
In the trademark context, irreparable harm may be shown even in the absence of actual injury to plaintiff ‘s business based on plaintiff ‘s demonstration of a likelihood of success on the merits of its claim. The Court therefore finds that in the absence of an injunction, Times Mirror will suffer irreparable harm.
D. Ct. Op. at 13-14 (internal quotation marks and citationsomitted). We have held that a lack of control over the use of one’sown mark amounts to irreparable harm. See OpticiansAss’n v. Independent Opticians, 920 F.2d 187, 195 (3d Cir.1990) (stating that potential damage to a mark holder’sreputation or goodwill or likely confusion between parties’marks constitute irreparable injury for the purpose ofgranting a preliminary injunction). LVSN argues that the15-month delay, beginning when Times Mirror was onnotice of the new name of LVSN’s publication and endingwhen Times Mirror filed suit against LVSN, necessarilyshows that Times Mirror’s injury, if any, is not immediateand irreparable. This argument does not persuade us,because the 15-month delay was attributable tonegotiations between the parties. We conclude that thedistrict court did not err by determining that Times Mirrorwould be irreparably harmed if the preliminary injunctiondid not issue. * * * We have also considered Appellant’s contentions that thedistrict court erred by determining that the benefits from preliminary injunctive relief outweighed the injury suchrelief would cause LVSN and that the public interest wouldbe served by granting Times Mirror’s motion for apreliminary injunction. Neither contention has sufficientmerit to warrant further discussion. The judgment of the district court will be affirmed. BARRY, Circuit Judge, Dissenting. How famous a mark must be before it can be affordedprotection under the Federal Trademark Dilution Act(“FTDA”) is a question of first impression in this Circuit, aquestion which implicates the expansion of trademarkrights under the Lanham Act and one which has receivedmuch judicial attention elsewhere since the passage of theFTDA. The correct answer to this question is of criticalimportance in order that an appropriate balance betweenfree competition and property rights be maintained. [FOOTNOTE 3] Themajority holds that the District Court did not err in findingthat “The Sporting News” mark was sufficiently famous tomerit protection under the FTDA. Because I conclude thatTimes Mirror has not shown and, in my view, cannot showthat it is likely to satisfy the threshold fame requirement, Irespectfully dissent. I. Fame means FAME The FTDA offers little guidance as to what is required tofind a mark famous. Thus, courts must rely on legislativehistory and, where helpful, look to dilution theory whichhas developed over years of judicial interpretation of stateanti-dilution statutes. Dilution theory in the United Statesemanated from a 1927 Harvard Law Review article whichposited that protection against dilution would fill the gap intrademark law left by infringement theory which onlyprovided protection when a junior user applied adeceptively similar mark to similar goods to confuse acompetitor’s consumers about the source of the goods. See Frank I. Schechter, The Rational Basis of TrademarkProtection, 40 Harv. L. Rev. 813, 825 (1927). In the absenceof a dilution cause of action, trademark law was unable toprotect mark owners from the unauthorized use of adeceptively similar mark placed upon dissimilar or non-competing goods. Before passage of the FTDA, state anti-dilution statutes attempted to fill this gap in trademarklaw. However, because truly famous marks — and”truly”will become the operative word here — are ordinarily usedon a nationwide basis but only half of the states providedremedies for dilution, Congress recognized the need for afederal anti-dilution statute. See H.R. Rep. No. 104-374, at4 (1995), reprinted in 1995 U.S.C.C.A.N. 1029. Accordingly,the FTDA was passed to fill the gap and “to bringuniformity and consistency to the protection of famousmarks.” See id. at 3. Historically, the Lanham Act has attempted to balancethe two competing goals of protecting consumers andprotecting a trademark owner’s investment. The FTDA,however, is concerned only with the latter:
It does not have those twin public policy goals of the laws of trademark infringement[.] As a result there may be a kind of judicial restraint about the new law. The perception may be that it does not carry any compelling need to protect the public, and that it benefits only a coterie of American business elite, not the general public.
Jerome Gilson, [FOOTNOTE 4] Trademark Protection & Practice (1999)S 5.12[1][e] at 5-272 to 5-273 (hereinafter “Gilson”).Moreover, there can be little doubt that Congress sought toprotect only a select and narrow class of truly famous andwell-recognized marks. “Without such a requirement, ananti-dilution statute becomes a rogue law that turns everytrademark, no matter how weak, into an anti-competitiveweapon.” 4 J. Thomas McCarthy, McCarthy on Trademarksand Unfair Competition, (4th ed. 1999) S 24:108 at 24-210(hereinafter “McCarthy”). “To save the dilution doctrine fromabuse by plaintiffs whose marks are not famous anddistinctive, a large neon sign should be placed adjacentwherever the doctrine resides, reading: ‘The Dilution Rule:Only Strong Marks Need Apply.’ ” 4 McCarthy S 24:108 at 24-209; see also 2 Gilson S 5.12[1][b] at 5-260 (referring toclass of trademarks protected by FTDA as “Supermarks”). The legislative history of the Act is crystal clear thatCongress intended courts to be highly selective indetermining which marks are famous and accorded thosetruly famous marks an unprecedented degree of protection.A 1987 Report of the Trademark Review Commission of theUnited States Trademark Association (USTA) emphasizedhow limited this universe should be: “We believe that alimited category of trademarks, those which are trulyfamous and registered, are deserving of national protectionfrom dilution[.] We therefore urge the adoption of a highlyselective federal dilution statute[.]” Trademark ReviewCommission, Report & Recommendations, 77 TrademarkRep. 375, 455 (1987).2 The Report of the Senate JudiciaryCommittee on the precursor to the FTDA stated that the1988 bill
creates a highly selective federal cause of action to protect federally registered marks that are truly famous from dilution of the distinctive quality of the mark. The provision is specifically intended to address a narrow category of famous registered trademarks where the unauthorized use by others, on dissimilar products for which the trademark is not registered, dilutes the distinctiveness of the famous work[.]
Section 43(c) of the Act is to be applied selectively and is intended to provide protection only to those marks which are both truly distinctive and famous, and therefore most likely to be adversely affected by dilution. To protect these special marks, and to ensure that the bill does not supplant the current protection of trademarks based on the likelihood of confusion, the committee amended the legislation to place greater emphasis on the factors the courts must weigh in determining whether a mark possesses a sufficient level of fame and distinctive quality to qualify for federal protection from dilution.
S. Rep. No. 100-515 (reproduced in 6 McCarthy App. A5, at41-42)(emphasis added). Examples of truly famous markscited in a House Report on the FTDA included “Buick”,”Dupont”, and “Kodak”. See H.R. Rep. No. 104-374, at 4(1995), reprinted in 1995 U.S.C.C.A.N. 1029, 1031. In anutshell, the legislative history amply supports theconclusion that the FTDA should be restricted to a narrowcategory of marks, ensuring that it does not swallowinfringement law by allowing mark owners to end-run alikelihood of confusion analysis which they fear– or,indeed, know — they cannot win. Despite Congressional intent that the FTDA protect onlya narrow category of truly famous marks, some earlyjudicial interpretations of the Act granted dilutionprotection after engaging in only a cursory analysis (or noanalysis at all) of the fame of the mark. See , e.g., GazetteNewspapers, Inc. v. New Paper, Inc., 934 F. Supp. 688,696-97 (D. Md. 1996)(no separate analysis of fame);Hasbro, Inc. v. Internet Entertainment Group, Ltd. , No. 96-130, 1996 WL 84853 (W.D. Wash. Feb. 9, 1996)(enteringpreliminary injunction on dilution claim without discussingfame). Little if any analysis, of course, would be required tofind marks such as “Buick”, “Dupont” or “Kodak” trulyfamous or, in the context of sports with which we deal here,that the mark “New York Yankees” is so famous that evennon-sports fans are well aware of it. If, however, markswhich are not such household names can be protected bythe Act — and, in my view, that is a big “if ” — those marksmust be subjected to a rigorous analysis. As onecommentator has noted with some alarm:
[C]ourts thus far have shown little inclination to limit protection to the truly famous marks envisioned by the drafters of the [FTDA]. Instead, the courts, when they acknowledge the fame requirement at all, simply state a mark’s fame in conclusory terms without attention to the eight fame factors. Unless courts strictly adhere to the admittedly vague dictates of the federal dilution statute, federal dilution protection will surely give rise to a broad regime of trademark rights in gross.
Robert N. Klieger, Trademark Dilution: The Whittling Awayof the Rational Basis for Trademark Protection, 58 U. Pitt. L.Rev. 789, 68 (Summer 1997). This concern has not gone unnoticed, and courts are nowtaking pains to emphasize the rigor of the famerequirement. For example, the Ninth Circuit recently setitself apart from the expansive interpretations of the FTDAby other courts by vacating a permanent injunction afterfinding that plaintiff ‘s trademarks were not sufficientlyfamous for FTDA protection and remanding withinstructions to enter summary judgment for defendant. SeeAvery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir.1999). There, Avery Dennison, the seller of office suppliesand industrial fasteners, sued an Internet e-mail businesswhich offered “vanity” e-mail addresses, alleging thatdefendant’s maintenance of the domain name registrations and diluted Avery Dennison’strademarks. The “Avery” mark had been in continuous usesince the 1930s and had been registered since 1963. The”Dennison” mark had been in continuous use since the late1800s and registered since 1908. See Avery Dennison, 189F.3d at 873. Avery Dennison’s annual advertisingexpenditures exceeded $5 million, and its annual salesreached $3 billion (although no evidence indicated whatpercentage of these dollar figures applied exclusively to the”Avery” or “Dennison” trademarks as opposed to thecompany’s other marks). See id. Avery Dennison alsomaintained its own website. After reviewing dilution theory and the legislative intentbehind the FTDA, the Court emphasized the role of thefame requirement in “reinstating the balance” in theLanham Act to avoid “over-protecting trademarks, at theexpense of potential non-infringing uses.” Id . at 875.Despite the fact that the registered marks had acquireddistinctiveness and that four of the eight statutory famefactors favored a finding that the marks were famous, theNinth Circuit held that, as a matter of law, Avery Dennisonhad failed to meet its burden of proving fame for tworeasons. Id. at 876-77. First, while recognizing that fame ina “specialized market segment” might be adequate if the”diluting uses are directed narrowly at the same market segment,” the Court noted that Avery Dennison provided noevidence of customer overlap or that defendant’s customerspossessed any degree of recognition of plaintiff ‘s marks. Id.at 877-78. Second, widespread third-party use of thenames “Avery” and “Dennison” undermined the famousnessof the marks. Id. at 878. Thus, the Court held that themarks were not entitled to protection under the FTDA. Seealso I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 46& 49 (1st Cir. 1998)(finding mark not famous and noting”mark [must] be truly prominent and renowned”; “courtsshould be discriminating and selective in categorizing amark as famous”); G. Kip Edwards, Developments inDilution Law, 579 PLI/Pat 209, 217 (Nov.-Dec. 1999)(notingthat many early judicial interpretations of the FTDAneglected to heed Congressional intent that the Act beapplied sparingly to truly famous marks and mistakenlygranted protection to marks that were “famous” only withina specialized market niche (citing Gazette Newspapers), butnoting that the “pendulum may be swinging back towardprotection only of truly famous marks” (citing AveryDennison)). If one heeds the legislative history, it is simply beyondthe pale to find “The Sporting News” mark to be another”Buick”, “Dupont”, or “Kodak”, names which have long beenassociated in the public’s eye with a particular company ora particular product and which immediately strike one asbeing truly famous. Stated somewhat differently, tofindthat “The Sporting News” mark meets the famerequirement, thus entitling it to the extraordinaryprotection the FTDA provides — a nationwide injunction –would defeat Congress’s deliberate design. II. Insufficient evidence of fame The majority, after paying lip service to the famerequirement, holds that the District Court did not err byconcluding that “The Sporting News” mark is famous in the sports periodicals market, a “niche market”. I disagree. Forstarters, the legislative history does not mention much less embrace a so-called “niche market” theory of fame.[FOOTNOTE 5] Beyondthat, the niche market theory risks lowering the bar fortrademark protection unless it is applied prudently to caseswhich clearly call for such an analysis, and this is not one.For one thing, The Sporting News is directed at the generalpublic via subscriptions and at newsstands, therebybegging the question: is not the general public theappropriate universe for assessing the fame of the mark?But even if fame exclusively within the sports periodicalsmarket would be enough to establish fame under the FTDA,the paltry evidence here does not permit any suchfinding.Moreover, I take issue with the rather cursory discussionby the majority, and by the District Court, of the eightstatutory factors for fame. The fundamental problem with the majority’s applicationof the niche market theory, sometimes known as the”bigfish in a small pond theory,” to the facts of this case is thatit is hard to conceive of any consumer goods or servicesthat are not in a narrow market of some type, be it luxurycars, cameras, or sporting publications.
Courts approving the “big fish in a small pond” theory of trademark dilution fail to recognize that it threatens to overrun trademark infringement law. Trademark infringement law permits similar, or even identical, marks to coexist on non-competing goods. If even a locally famous mark can preclude all other marks in every channel of trade, then conceivably every trademark can be used to create a monopoly in a word or symbol — a proposition clearly contrary to the intent and practice of trademark law. It is possible tofind virtually any mark to be “famous” within some market, depending on how narrowly that market is defined.
Courtland L. Reichman, State and Federal TrademarkDilution, 17 Franchise L. J. 111, 133 (Spring 1998). If marks can be “famous” within some market, dependingon how narrowly that market is defined, then the FTDA willsurely devour infringement law. Indeed, the unauthorizeduse of a mark in the same or a similar market is preciselywhat good old-fashioned infringement principles havetraditionally been there to remedy once actual confusion orlikelihood of confusion has been shown, and there is simplyno need for dilution principles. Can one imagine a clearercase for application of those principles than if one were tobegin manufacturing automobiles and calling thoseautomobiles “Buick”? Similarly, if the parties here operatewithin the sports periodicals market, then this case, atleast in my view, is a garden variety infringement case, andthe complaint alleges just that. Congress was quite clear, however, that the FTDA wasnot designed for situations in which ordinary infringementlaw provided a remedy but, rather, for those situations inwhich a truly famous mark on dissimilar products deserves,but cannot receive, protection under infringement law –those situations in which, for example, no one would everconfuse that truly famous mark with the goods or servicesto which it has been wrongly attached. Congress wasexplicit as to where protection was warranted: “DUPONTshoes, BUICK aspirin, and KODAK pianos.” H.R. Rep. No.104-374, at 4 (1995), reprinted in 1995 U.S.C.C.A.N. at1030. The extensive relief the FTDA authorizes, which givesthe owner of the famous mark a virtual monopoly byprecluding all others from using the mark “regardless of thepresence or absence of . . . competition between the ownerof the famous mark and other parties, or likelihood of confusion,” is itself something federal trademark law hadnot before seen, and surely was not meant to be accordedto any marginally “famous” mark. 15 U.S.C.S 1127. Itfollows inexorably that if a mark is famous in the generalpublic, it is also famous in its niche market and, in such acase, dilution and infringement theories need not bemutually exclusive. Before, however, a Court categoricallyadopts the theory that a mark that is not generallyrenowned, but famous only in its niche market, is entitledto protection under the FTDA, the evidence of fame shouldbe rigorously examined. Had such an examination beenperformed here, only one conclusion could have beenreached: the evidence of fame is woefully lacking. A. Factor (F) The FTDA lists eight non-exclusive statutory factors forfame which a court may but is not required to consider.The “may” is important because it would make little senseto require that a mark which immediately strikes one astruly famous — again, “Buick”, “Dupont”, or “Kodak” — beanalyzed for fame in accordance with these factors,although certainly such an analysis would confirm theimmediate impression of fame. The less truly famous amark is, however, the more rigorous the analysis of thestatutory factors must be in light of the evidence of record. It is Factor (F), “the degree of recognition of the mark inthe trading areas and channels of trade used by the marks’owner and the person against whom the injunction issought,” which gives the FTDA’s fame requirement its”teeth.” As the majority notes, however, the District Courtdid not explicitly address this factor — and neither did themajority. The guidance which Factor (F) affords to courts issomewhat murky. The Act, for example, does not define”channels of trade,” although presumably that phrasemeans the chain of distribution of the goods featuring themark in question, i.e. the route by which the goods travelto the ultimate consumer — here, from the publisher to thereader. Importantly, although Factor (F) focuses theanalysis on the channels of trade in which the parties operate, it does not dictate the conclusion that fame solelywithin those channels of trade is enough for protectionunder the FTDA. According to the legislative history, a finding of fame”requires substantial renown or fame within both thetrading area of the mark and the trading area of the otherparty to the dilution suit.” S. Rep. No. 100-515 (reproducedin 6 McCarthy App. A5, at 43)(emphasis added); see also 77Trademark Rep. at 461 (advocating that a mark”should bewell known to a substantial portion of the relevantpurchasers of the goods or services.”)(emphasis added).This, I note, is a higher standard than the”appreciablenumber of persons” standard applied in an infringementaction in which a plaintiff may prevail only if it shows thatan appreciable number of ordinarily prudent purchasers ofthe type of product in question are likely to becomeconfused as to the source of the goods by the defendant’suse of the mark. See 77 Trademark Rep . at 461; 4McCarthy S 24:92 at 24-163. The crux of any discussion of Factor (F) is whether TimesMirror is likely to prove that its mark is recognized by asubstantial portion of LVSN’s potential consumers. Again,the FTDA does not quantify the requisite “degree ofrecognition”. Consequently, some commentators have calledfor a clear percentage cut-off for consumer recognition.McCarthy, for example, recommends that a plaintiff ‘s markmust be known by more than 50% of the defendant’spotential customers in order to be considered “famous”. See4 McCarthy S 24:92 at 24-164; see also Xuan-Thao N.Nguyen, The New Wild West: Measuring and Proving Fameand Dilution Under the Federal Trademark Dilution Act, 63Albany L. Rev. 201, 233 (1999)(advocating a 40% rate ofrecognition among defendant’s potential customers in anationwide survey). While I am not wed to any specificminimum percentage for consumer recognition, I do takeissue with the fact that Times Mirror has been granted apreliminary injunction without offering any evidencewhatsoever of consumer recognition in LVSN’s channel oftrade.[FOOTNOTE 6] In the absence of evidence indicating that consumers inLVSN’s channel of trade recognize Times Mirror’s mark, itwas wrong, in my view, for the District Court and themajority to conclude that the publications share a commonmarket and that the mark is famous within that market.The Sporting News, moreover, is available at newsstands tomembers of the general public, just as Buick automobilesand Kodak film are available to the general public.Accordingly, to be entitled to a preliminary injunction, itwas incumbent upon Times Mirror to demonstrate that it islikely to succeed in proving that its mark is truly famousamong members of the general public and, although thisshould follow almost automatically, that its mark isrecognized by a substantial portion of LVSN’s consumers –those who like to gamble, who read gambling publications,or who frequent casinos. Such a showing is typicallyachieved through a properly-conducted recognition survey.[FOOTNOTE 7] Certainly, Times Mirror had ample time and notice (sixteenmonths passed between its discovery of LVSN’s title and thepreliminary injunction hearing) to conduct a recognitionsurvey of its mark and/or a survey to determine whether itsmark would be affected by the presence of LVSN’s title inthe marketplace.[FOOTNOTE 8] Assuming, arguendo, that a showing of fame only withinthe sports publication market suffices for protection underthe FTDA, Congress’s intent to reserve dilution protectionfor a select and narrow category of truly famous markscannot be glossed over, as the majority has done, by anunsupported finding that “The Sporting News” mark isfamous within its niche and recognized by a significantportion of Las Vegas Sporting News readers.”A preliminaryinjunction may not be based on facts not presented at ahearing, or not presented through affidavits, depositiontestimony, or other documents, about the particularsituation [ ] of the moving part[y].” Adams v. Freedom ForgeCorp., 204 F.3d 475, 487 (3d Cir. 2000). Times Mirror hassimply not come forward with any evidence of “the degreeof recognition of the mark in the trading areas andchannels of trade used by the marks’ owner and the personagainst whom the injunction is sought.” 15 U.S.C.S 1125(c)(1)(F). This failure weighs formidably against anyconclusion that Times Mirror is likely to succeed on itsdilution claim. B. The remaining factors Examination of the remaining statutory factorsunderscores the inadequacy of the evidence offered byTimes Mirror. Factor (A), the degree of inherent or acquireddistinctiveness of the mark, encompasses more than simplywhether “The Sporting News” mark has inherentdistinctiveness or has acquired distinctiveness throughsecondary meaning, as it must to be eligible for protectionunder the Lanham Act. This factor suggests that the degreeof the mark’s distinctiveness is relevant to the fame inquiry.As discussed below with regard to Factor (G), the degree ofa mark’s distinctiveness is weakened by third party use ofthe mark and by the descriptive nature of the mark.Therefore, while this factor favors Times Mirror, it does soonly slightly. Factor (B), the duration and extent of the use of themark, means more than simply the length of time”TheSporting News” mark has been in use, but also the breadthof its distribution. Times Mirror did not introduce evidenceof The Sporting News’s sales figures either in toto or brokendown by source, i.e. newsstand, subscription, advertising,or Internet, relying only on its weekly circulation of half amillion copies in Canada and the United States. It cannotbe seriously argued that this weekly circulation is not smallrelative to other major publications, including sportsmagazines, and not small period given the population ofthose countries.[FOOTNOTE 9] Thus, despite over one hundred years ofpublication of an inexpensive product distributed incountries in which there is a huge interest in, andconcomitant market for, anything to do with sports, therelatively limited extent of The Sporting News ‘s circulationcertainly does not compel the conclusion that the mark hasgenerated a mental association among consumers sufficientto support a finding of fame. Factor (C) addresses how widely and frequently a markhas been advertised or publicized which, in turn, suggeststhe public’s familiarity with the mark. See 4 McCarthyS 24:92. Times Mirror presented evidence that it advertisesprimarily by direct mail, but also on television and”occasionally” on the radio in “selected markets”. It did not,however, provide evidence of its annual advertisingexpenses, nor did it detail where, when, or how the markhas been advertised. Moreover, the unadorned fact thatTimes Mirror has an Internet website, a fact the majoritynoted, is of little significance because there is no evidenceregarding the extent of sales or advertising on the Internet,nor is there any evidence regarding, for example, thenumber of “hits” received from visitors to the website whichwould assist in determining the degree of consumerrecognition of the mark.[FOOTNOTE 10] The FTDA, I note, does not specify quantitativemeasurements for Factors (B) and (C), such as a basicminimum for sales or advertising. When, however, theevidence supporting these factors in this case is comparedto that in dilution cases in which the mark has beendeemed “famous”, Times Mirror’s evidence of sales revenueand advertising expenditures falls short.[FOOTNOTE 11] Factor (G) clearly favors LVSN. Factor (G) takes intoaccount the possibility that third party use of the mark orelements of the mark has already diluted the mark’sstrength, thereby rendering the mark less famous. See 77Trademark Rep. at 461 (“Third party uses of the same orsimilar marks are relevant in determining the fame anddistinctiveness of the mark, since the mark must be insubstantially exclusive use. If a mark is in widespread use,it may not be famous for the goods or services of onebusiness.”).[FOOTNOTE 12] The words “sporting” and “news” are commonplace wordsin our vocabulary appearing on many items, not onlypublications. The majority does not acknowledge that atleast six other publications use the word “sporting” in theirtitles: Grays Sporting Journal, Southern Sporting Journal,Sporting Thoughts, The Sporting Scene, The Sporting Lifeand Sporting Green. LVSN’s use of the word”sporting” in itstitle describes the magazine’s content. “Sporting” is defined,in this record, as “involving betting or gambling as sportingmen. Involving or inducing the taking of risk as a sportingproposition.” In Viacom, Inc. v. Ingram Enters., 141 F.3d886 (8th Cir. 1998), the Eighth Circuit held that while thetrademark “Blockbuster” for a chain of video stores wasstrong for purposes of an infringement analysis, the mark’sstrength was not necessarily sufficient to sustain a claimfor dilution-by-blurring due to the ordinariness of the word”Blockbuster”. See 141 F.3d at 891-92. The court notedthat “the fact that Viacom is seeking a complete monopolyon the use of a rather common word with multiplemeanings would make us hesitate to uphold summaryjudgment on its dilution-by-blurring claim.” Id. (citing 3McCarthy S 24:114 at 24-208) (dilution”is a potent legaltool, which must be carefully used as a scalpel, not asledgehammer.”). Third party use of the commonplaceelements of Times Mirror’s mark weakens its fame. Factor(G), therefore, strongly favors LVSN. The legislative history indicates that the eight factorsshould be weighed independently “and it is the cumulativeeffect of these considerations which will determine whethera mark qualifies for federal protection from dilution.” S.Rep. 100-515 (reproduced in 6 McCarthy App. A5, at 42).Moreover, the factors should be interpreted flexibly “so thattheir relative weight in any given case can be balanced.”Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 504(M.D. Pa. 1998). In Hershey, for example, the District Courtfound that even though six of the eight enumeratedstatutory factors favored Hershey (inherent distinctiveness,degree of consumer recognition, duration and extent of use,advertising and publicity, geographical extent of tradingarea and widespread distribution channels), Hershey’strade dress was unlikely to meet the statute’s stringentfame requirement because of third party use of the same aspects of the trade dress and because it was notregistered. Here, Factors (B), (D) and (H) favor Times Mirrorbecause “The Sporting News” is a registered mark usedcontinuously for over 100 years nationwide. However, thereis little evidence going to Factor (B)’s extent of sales. TimesMirror has offered little or no evidence going to factors (C),(E) and (F). Factor (G) weighs strongly against Times Mirror.Finally, because third party use and the descriptive natureof the mark tend to weaken its distinctiveness, Factor (A)only slightly favors Times Mirror. In my view, the District Court failed to sufficientlyevaluate the mark — it did not consider several of thestatutory factors, nor did it qualitatively weigh those factorsit did consider. Even if a mark not immediately recognizableby the general public can, nonetheless, meet the famerequirement of the FTDA, and I do not believe it can, at thispreliminary stage, based upon the inadequate record beforeus, I cannot agree that Times Mirror is likely to succeed inproving the fame of its mark.[FOOTNOTE 13] III. Conclusion The FTDA grants broad discretion to the federal courtsand, as one commentator has remarked, “it is up to thejudiciary to apply such potent laws with care and commonsense lest they damage the competitive systems they aredesigned to enhance.” 4 McCarthy S 24:114 at 24-222. Laxinterpretation of FTDA requirements forecasts easierlawsuits for trademark owners who will use a dilutioncause of action as a “tack-on” to an infringement claim inthe event that likelihood of confusion cannot be shown, andeven when, as perhaps here, it can. See Klieger, TrademarkDilution, 58 U. Pitt. L. Rev. at 64 (“It may just be a matterof time before dilution eclipses confusion as the gravamenof most federal trademark actions and trademark rights ingross displace consumer protection as the defining featureof United States Trademark law.”); I.P. Lund Trading ApS v.Kohler Co., 163 F.3d 27, 48 (1st Cir. 1998)(“Dilution lawsare intended to address specific harms; they are notintended to serve as mere fallback protection for trademarkowners unable to prove trademark infringement.”). Naturally, when a court rules on a motion for apreliminary injunction, it makes an initial judgment basedon an incomplete factual record; its findings of fact andconclusions of law are subject to revision based onadditional discovery. The stakes are, nonetheless, high;here, for example, had the injunction not been stayed withthe consent of the parties, lowering the bar for the fame requirement would have forced LVSN to alter its publicationat great cost or cease publishing altogether.[FOOTNOTE 14] Yet again, we have recently stressed our respect for theextraordinary nature of the preliminary injunction powerand the fact that “the use of judicial power to arrangerelationships prior to a full determination on the merits isa weighty matter” to be reserved for extraordinarysituations. Adams v. Freedom Forge Corp., 204 F.3d 475,487 (3d Cir. 2000). This is surely not such a situation. Iwould vacate the preliminary injunction. A True Copy: Teste: Clerk of the United States Court of Appeals for the Third Circuit :::FOOTNOTES::: FN1 See, e.g., Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216 n.2 (2dCir. 1999) (“McCarthy’s treatise contends that the statute does notinclude an independent requirement of distinctiveness. . . . Wedisagree.”) FN2 The Trademark Review Commission Report, the impetus behind theFTDA, stated: “The same type of evidence which is traditionally used toprove distinctiveness can be used to prove fame. Although the registrantis not required to prove distinctiveness apart from the import ofregistration, any additional evidence of distinctiveness will ordinarily beentitled to substantial weight.” Report of the Trademark ReviewCommission, 77 Trademark Rep. 375, 459-460 (1987). FN3 Commentators have warned that expansion of a dilution cause ofaction could harm competition. See, e.g. , Mark A. Lemley, The ModernLanham Act and the Death of Common Sense, 108 Yale L. J. 1687 (May1999); Glynn S. Lunney, Jr., Trademark Monopolies, 48 Emory L. J. 367(Spring 1999); William Marroletti, Dilution, Confusion, or Delusion? TheNeed for a Clear International Standard to Determine Trademark Dilution,25 Brook. J. Int’l L. 659 (1999); Robert N. Klieger, Trademark Dilution:The Whittling Away of the Rational Basis for Trademark Protection, 58 U.Pitt. L. Rev. 789 (Summer 1997). FN4 In 1988, legislation based on the Commission’s proposal for a dilutionstatute limited only to “famous marks” was approved by the Senate, butdid not survive in the House of Representatives. Subsequently, theCommission’s proposal became, in large part, the basis for the FTDA.See 4 McCarthy S 24:87. FN5 The only reference in the legislative history that even comes close tosuggesting a so-called “niche-market” theory is found in a discussion ofthe degree of a mark’s recognition, where the Trademark ReviewCommission noted that dilution might occur with respect to one universeof consumers, but not necessarily to another. “For example, if a mark isfamous at the industrial level but not at the consumer level, protectionmay be appropriate at the industrial level but not at the consumer level.”77 Trademark Rep. at 461. This reasoning may provide the basis for theapplication of a niche market theory within a specialized industrialniche. See, e.g., Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d633, 640 (7th Cir. 1999)(finding niche market fame sufficient undercircumstances in which both parties operated within the narrowwholesale market for plastic baskets used for funeral floral bouquets);Avery Dennison, 189 F.3d at 877-78 (involving markets for officeproducts, industrial fasteners and e-mail addresses); Teletech CustomerCare Management (California), Inc. v. Tele-Tech Co., Inc., 977 F. Supp.1407 (C.D. Cal. 1997)(involving “teleservicing industry” where bothparties provided services for large corporate clients). FN6 The majority averts its gaze from what little evidence does existrelating to either party’s channel of trade. The majority of LVSN copies (approximately 22,000 out of 42,000 in circulation) are made available atno charge in Nevada. Many others are available at no charge at casinosin Mississippi, Louisiana, Atlantic City, New Jersey and Foxwood,Connecticut. Only a small percentage of copies is sold at newsstands. Ofthe approximately 10,000 to 11,000 copies sent to a couple of hundrednewsstands in a handful of states, only approximately 1,500 are actuallysold; the rest are returned to the publisher. By contrast, The SportingNews is available nationwide through subscriptions and at newsstands. In addition, the record does not evidence much if any overlap inadvertising revenues or readership. Because LVSN is given away atcasinos, it survives primarily on its advertising revenues. LVSN’sadvertisers tend to be “casinos, paging companies, [and] handicappers.”Times Mirror, 1999 WL 124416, *2. The Sporting News, on the otherhand, advertises, inter alia, sports memorabilia, collectibles,commemorative collections, apparel, sporting equipment, tobaccoproducts and automobiles. LVSN’s competitors for advertising dollarsand readership are not sports magazines, but gambling publications,such as Gaming Today, Atlantic City Magazine and Casino Player. TheSporting News reports on the six major spectator sports; LVSN reportsnot only on sports gambling, but also on gambling on horse racing, carracing, roulette, craps, blackjack, slots — and presidential elections. FN7 See, e.g., Star Markets, Ltd. v. Texaco, Ltd., 950 F. Supp. 1030, 1033& 1035 (D. Haw. 1996)(secondary meaning survey found 75% ofrespondents associated mark “Star” with plaintiff ‘s grocery stores;recognition survey found that over 96% of respondents recalled plaintiff ‘s mark when asked to name any grocery store); Ringling Bros.- Barnum & Bailey Combined Shows, Inc. v. Utah Div. Of TravelDevelopment, 955 F. Supp. 605, 612 n.4 (E.D. Va. 1997)(40% ofrespondents to recognition survey associated phrase”Greatest Show onEarth” with plaintiff ‘s circus), aff ‘d, 170 F.3d 449 (4th Cir. 1999), cert.denied, 120 S. Ct. 286 (1999); Hershey Foods Corp. v. Mars, Inc., 998 F.Supp. 500, 517 (M.D. Pa. 1998) (94% of respondents recognized orange,brown and yellow packaging of non-labeled peanut butter candy asReese’s brand). FN8 Between 1997 and 1998, The Sporting News spent $500,000 to studythe market’s perception of its title. See”In Brief: The More, The Merrier,”Media Daily, Mar. 2, 1998. The results of this study were not, however,introduced into evidence. FN9 See Bill Wallace, “Web Hits Becomes Baseball’s New Statistic, Knight-Ridder Tribune Business News, Feb. 22, 2000, available at 2000 WL14920170 (comparing distribution rates of sports publications — 3.2million weekly distribution of Sports Illustrated, for example — andnoting “second-tier” Sporting News’s half million “static circulation” rate.) FN10 The District Court’s fame analysis appears to have added anadditional factor to the eight statutory factors in emphasizing that”Times Mirror has spent millions of dollars improving the magazine.”Times Mirror, 1999 WL 124416, *5. Large expenditures aimed atretooling a product do not contribute to establishing fame unless it canbe shown that those efforts were effective among the relevant group ofconsumers. While it is possible that a company’s investment in itsproduct may result in the heightened fame of its mark, it is far fromclear whether that has occurred here. FN11 See, for example: Eli Lilly & Co. v. Natural Answers, Inc., ___ F. Supp.2d ___, No. 99-1600, 2000 WL 223585, *2, 16 (S.D. Ind. Jan. 20,2000)(finding “Prozac” famous; $12 billion in sales over twelve yearperiod and “massive” unsolicited publicity rendering mark part of the”popular lexicon”); Planet Hollywood (Region IV), Inc. v. Hollywood CasinoCorp., 80 F. Supp. 2d 815, 840 (N.D. Ill. 1999)(finding “PlanetHollywood” mark famous and noting annual sales of more than $195million in merchandise bearing mark); NBA Properties v. UntertainmentRecords, L.L.C., No. 99-2933, 1999 WL 335147, *7 (S.D.N.Y. May 26, 1999)(finding NBA logo famous; logo appeared on $1.6 billion of merchandise over three year period and mark was widely promoted);Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999) (findingPepperidge Farm Goldfish crackers famous; $120 million three yearmarketing campaign and $200 million annual net sales); Ringling Bros.,955 F. Supp. at 609 (finding slogan “Greatest Show on Earth” famous;over $103 million in annual sales derived from goods bearing slogan andover $19 million in annual advertising expenditures); American Exp. Co.v. CFK, Inc., 947 F. Supp. 310, 312 (E.D. Mich. 1996)(finding slogan”Don’t Leave Home Without It” famous; over $600 million in marketingexpenditures over six years). FN12 See, e.g., Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir.1999); Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d1261, 1271 (S.D. Fla. 1999)(“the word ‘fun’ is used by many otherbusinesses in the travel, gaming, and entertainment industries . . .cut[ting] against Carnival’s dilution claim”); Michael Caruso & Co., Inc. v.Estefan Enterprises, Inc., 994 F. Supp. 1454, 1463 (S.D. Fla.1998)(extensive third party use of word “bongo” undermines inherentdistinctiveness of mark), aff ‘d without opinion, 166 F.3d 353 (11th Cir.1998); Hershey, 998 F. Supp. at 517 (finding trade dress not sufficientlyfamous and noting several examples of third party’s trade dress in foodindustry similar to plaintiff ‘s color combination and lettering); SportsAuthority v. Abercrombie & Fitch, Inc., 965 F. Supp. 925, 941 (E.D. Mich.1997)(third-party use of “authority,” whether or not in the relevantmarket, diminishes any distinctive or famous aspects of mark renderingit “not so famous as to deserve protection” under the FTDA); Trustees ofColumbia University v. Columbia/HCA Healthcare Corp. , 964 F. Supp.733, 744 & 750 (S.D.N.Y. 1997)(fame of mark “Columbia” for healthcareservices “has been seriously undermined by third party use of the sameor similar marks” both within the health care industry and in otherindustries); Star Markets, 950 F. Supp. at 1035 (noting multiple thirdparty uses of “Star” and “Star Markets” in food industry and unrelatedindustries); Golden Bear Int’l, Inc. v. Bear U.S.A., Inc., 969 F. Supp. 742,749 (N.D. Ga. 1996)(third parties extensively used both the word “bear”and a bear design in connection with the sale of sporting goods andclothes). FN13 My disagreement with the majority rests primarily on my conclusionthat Times Mirror has not come close to satisfying the thresholdrequirement of fame to qualify for protection under the FTDA. It goeswithout saying, therefore, that I would also disagree that Times Mirrorwas likely to prevail on its dilution claim. One observation: the majorityholds that the District Court did not err in applying what have becomeknown as the “Sweet factors” to determine whether LVSN’s use blurredand, therefore, diluted, Times Mirror’s mark for”The Sporting News”. Inaddition to the Sweet factors, which have been roundly criticized, themajority appears to have adopted the multiple factor test articulated inNabisco, Inc. v. PF Brands, Inc., 191 F.3d 208 (2d Cir. 1999), whichincludes the factor of likelihood of confusion, a factor which is requiredin a standard infringement analysis, but not in a dilution analysis. WhileI have no difficulty with adopting an appropriate list of factors forconsideration, I note that we are the only Circuit to have considered theapplicability of the Sweet factors — and the Nabisco factors — which hasnot articulated a specific critique or rejected some or all of the factors.We should do so as well. The majority also holds that the District Court did not err in findingthat irreparable injury may be shown even in the absence of actualeconomic harm, presumably siding with the Second Circuit and rejectingthe Fourth Circuit’s position on the issue. Compare Ringling Bros.- Barnum & Bailey Combined Shows, Inc. v. Utah Div. Of Travel Development, 170 F.3d 449, 461 (4th Cir. 1999), cert. denied, 120 S. Ct.286 (1999), with Nabisco, 191 F.3d at 223-24. I agree, and note only thatit would be well-nigh impossible for a widely sold product such as Kodakto show that its sales have been impacted by a diluting use of its mark.Indeed, Kodak’s sales might well be increasing even as thedistinctiveness of its truly famous mark is being whittled away by anunauthorized user. See S. Rep. No. 100-515, at 108 (noting thatdistinctive quality of a mark “could be materially reduced during a periodof rising sales”). FN14 A District Court’s review of the merits of a dilution claim at thepreliminary injunction stage may also be significant because, as at leastone court has held, the cause of action is essentially equitable in natureand may not provide a right to a jury trial. See Ringling Bros., 955 F.Supp. 598, 605 (E.D. Va. 1997), aff ‘d on other grounds, 170 F.3d 449(4th Cir. 1999)(reserving constitutional issue for another day), cert.denied, 120 S. Ct. 286 (1999); see also 25 U.S.C. SS 1116(a), 1117(a),1118; 2 Gilson S 5.12[1][c][vii].
Filed April 28, 2000 UNITED STATES COURT OF APPEALSFOR THE THIRD CIRCUIT No. 99-1299 TIMES MIRROR MAGAZINES, INC. v. LAS VEGAS SPORTS NEWS, L.L.C.,d/b/a LAS VEGAS SPORTING NEWS, Appellant. On Appeal from the United States District Courtfor the Eastern District of Pennsylvania (D.C. No. 98-cv-05768) District Judge: Honorable Bruce W. Kauffman Argued: January 13, 2000 Before: Alito, Barry and Aldisert, Circuit Judges. (Filed: April 28, 2000) Malcolm J. Gross (Argued) Gross, McGinley, LaBarre & Eaton Allentown, PA Attorney for Appellee Diane S. Danoff (Argued) Dechert, Price & Rhoads Philadelphia, PA Attorney for Appellant
