TIMES MIRROR MAGAZINES, INC. v. LAS VEGAS SPORTS NEWS, L.L.C
212 F.3d 157 (3d Cir. 2000); 2000 U.S. App. LEXIS 8553; 54 U.S.P.Q.2D (BNA) 1577
Procedural History: Defendant appealed from an order of the United States District Court for the Eastern District of Pennsylvania, which preliminarily enjoining defendant from using the phrase "Sporting News" in connection with its weekly sports-betting publication under the Federal Trademark Dilution Act of 1995, 15 U.S.C.S. § 1125(c)
Facts: In 1886 the phrase "The Sporting News" was granted federal trademark protection and since that time it has been the banner headline of a weekly publication entitledThe Sporting News. The mark is now owned by its publisher, Times Mirror Magazines, Inc..
• The Sporting News provides its readers with information on baseball, basketball, football and hockey, and has a weekly circulation of approximately 540,000 in the United States and Canada. The Sporting News does not provide any information on gambling. Advertised on television, in direct mail solicitations, in promotions and on the radio. Sold for $ 2.99, but nine special content issues are sold each year for $ 3.99. Over the last several years, Times Mirror has invested millions of dollars in The Sporting News in an attempt to improve the quality of its magazine and to increase readership.
• LVSN publishes Las Vegas Sporting News, which contains articles, editorials and advertisements on sports wagering for the sports gaming enthusiasts or individuals that like to take a risk. it is published 45 times a year and generally has a circulation of 42,000, but some special editions have had a circulation of up to 100,000. Sold for $ 2.99 at several hundred newsstands across the country, but most copies are given away in gambling casinos free of charge. Defendant admits that at the time Defendnat changed the name of his publication, defendant was familiar with Times Mirror's publication The Sporting News. Since the 1997 name change to Las Vegas Sporting News, circulation of the publication has increased, but not substantially.
Issues: Whether (a) the mark "The Sporting News" was famous in the sports periodicals market and (b) LVSN's use diluted the strength of Times Mirror's mark by blurring its distinctiveness
Holding: (a) "The Sporting News" mark was famous in the sports periodicals market; (b) LVSN’s use diluted the strength of Times Mirror’s mark by blurring its distinctiveness.
Important Dicta
• A mark not famous to the general public is nevertheless entitled to protection from dilution where both the plaintiff and defendant are operating in the same or related markets, so long as the plaintiff ‘s mark possesses a high degree of fame in its niche market.
o Times Mirror and LVSN competed in the same, or at least significantly related, markets— namely, the sports periodicals market
o “The Sporting News†was famous in its niche and therefore entitled to protection under the FTDA against LVSN’s use of a similar mark in the same market
Analysis
• FAME factors
o Distinctiveness: “The Sporting News,†although not a fanciful or arbitrary trademark, has acquired secondary meaning, and thus distinctiveness in the sports periodicals market, because it has been used in commerce since 1886 and because Times Mirror has expended millions of dollars in advertising and promoting their mark through various media outlets
o Extent and duration of use of the mark: it weighed in favor of finding the mark famous, because The Sporting News has been continuously published since 1886.
o Extent and duration of advertising: it weighed in favor of finding the mark famous, because Times Mirror presented credible proof of extensive advertising and additional publicity from the Internet
o The geographical extent of the trading area: it weighed in favor of finding the mark famous, because The Sporting News has grown to a circulation of over 540,000 in both Canada and the United States, as well as a recent internet site
o The eighth factor—whether the mark was registered—favored Times Mirror, because “The Sporting News†was registered in 1886
• Dilution Factors
o Similarity of the marks: the two marks are similar. Not only do the two marks use dominant identical words; 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
o Similarity of the products covered by the marks: Both LVSN and Times Mirror use their mark to cover a weekly publication
o Sophistication of consumers: 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.
o Predatory intent: the publisher of Las Vegas Sporting News was aware of The Sporting News at the time he changed the name of his periodical
o Renown of the senior mark and Renown of the junior mark: The Sporting News is well known, whereas Las Vegas Sporting News is not.
Likely Future impact or unanswered questions: As the Court held, an original trademark holder can show dilution claim in a niche market even though the general public does not recognize its trademark as famous one.
212 F.3d 157 (3d Cir. 2000); 2000 U.S. App. LEXIS 8553; 54 U.S.P.Q.2D (BNA) 1577
Procedural History: Defendant appealed from an order of the United States District Court for the Eastern District of Pennsylvania, which preliminarily enjoining defendant from using the phrase "Sporting News" in connection with its weekly sports-betting publication under the Federal Trademark Dilution Act of 1995, 15 U.S.C.S. § 1125(c)
Facts: In 1886 the phrase "The Sporting News" was granted federal trademark protection and since that time it has been the banner headline of a weekly publication entitledThe Sporting News. The mark is now owned by its publisher, Times Mirror Magazines, Inc..
• The Sporting News provides its readers with information on baseball, basketball, football and hockey, and has a weekly circulation of approximately 540,000 in the United States and Canada. The Sporting News does not provide any information on gambling. Advertised on television, in direct mail solicitations, in promotions and on the radio. Sold for $ 2.99, but nine special content issues are sold each year for $ 3.99. Over the last several years, Times Mirror has invested millions of dollars in The Sporting News in an attempt to improve the quality of its magazine and to increase readership.
• LVSN publishes Las Vegas Sporting News, which contains articles, editorials and advertisements on sports wagering for the sports gaming enthusiasts or individuals that like to take a risk. it is published 45 times a year and generally has a circulation of 42,000, but some special editions have had a circulation of up to 100,000. Sold for $ 2.99 at several hundred newsstands across the country, but most copies are given away in gambling casinos free of charge. Defendant admits that at the time Defendnat changed the name of his publication, defendant was familiar with Times Mirror's publication The Sporting News. Since the 1997 name change to Las Vegas Sporting News, circulation of the publication has increased, but not substantially.
Issues: Whether (a) the mark "The Sporting News" was famous in the sports periodicals market and (b) LVSN's use diluted the strength of Times Mirror's mark by blurring its distinctiveness
Holding: (a) "The Sporting News" mark was famous in the sports periodicals market; (b) LVSN’s use diluted the strength of Times Mirror’s mark by blurring its distinctiveness.
Important Dicta
• A mark not famous to the general public is nevertheless entitled to protection from dilution where both the plaintiff and defendant are operating in the same or related markets, so long as the plaintiff ‘s mark possesses a high degree of fame in its niche market.
o Times Mirror and LVSN competed in the same, or at least significantly related, markets— namely, the sports periodicals market
o “The Sporting News†was famous in its niche and therefore entitled to protection under the FTDA against LVSN’s use of a similar mark in the same market
Analysis
• FAME factors
o Distinctiveness: “The Sporting News,†although not a fanciful or arbitrary trademark, has acquired secondary meaning, and thus distinctiveness in the sports periodicals market, because it has been used in commerce since 1886 and because Times Mirror has expended millions of dollars in advertising and promoting their mark through various media outlets
o Extent and duration of use of the mark: it weighed in favor of finding the mark famous, because The Sporting News has been continuously published since 1886.
o Extent and duration of advertising: it weighed in favor of finding the mark famous, because Times Mirror presented credible proof of extensive advertising and additional publicity from the Internet
o The geographical extent of the trading area: it weighed in favor of finding the mark famous, because The Sporting News has grown to a circulation of over 540,000 in both Canada and the United States, as well as a recent internet site
o The eighth factor—whether the mark was registered—favored Times Mirror, because “The Sporting News†was registered in 1886
• Dilution Factors
o Similarity of the marks: the two marks are similar. Not only do the two marks use dominant identical words; 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
o Similarity of the products covered by the marks: Both LVSN and Times Mirror use their mark to cover a weekly publication
o Sophistication of consumers: 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.
o Predatory intent: the publisher of Las Vegas Sporting News was aware of The Sporting News at the time he changed the name of his periodical
o Renown of the senior mark and Renown of the junior mark: The Sporting News is well known, whereas Las Vegas Sporting News is not.
Likely Future impact or unanswered questions: As the Court held, an original trademark holder can show dilution claim in a niche market even though the general public does not recognize its trademark as famous one.