call letters or frequencies. Testimony of Mr. Nelson and Mr. Watson, who listen to WZSR, suggests the mark is a strong one in the northwest suburban market. Under these circumstances, an ordinary consumer or listener is likely to be confused by Defendants' use of "Star 107.9."
13. Defendants, as the second user of the "Star" name, bear the burden of choosing a mark that will avoid confusion. Forum Corp., 903 F.2d at 440-41 (reversing denial of injunctive relief where trial court placed burden on plaintiff, which was first in marketplace); Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366 (7th Cir. 1976), cert. denied, 429 U.S. 830, 50 L. Ed. 2d 94, 97 S. Ct. 91 (1976). Even absent any fraudulent intent, under Illinois law a latecomer to the market has a duty to take affirmative precautions sufficient to make confusion in the use of similar service marks improbable. Thompson v. Spring-Green Lawn Care Corp., 126 Ill. App. 3d 99, 111, 466 N.E.2d 1004, 1014, 81 Ill. Dec. 202 (1st Dist. 1984) (citing Jewel Tea Co. v. Kraus, 187 F.2d 278 (7th Cir. 1950). The fact that Defendants here had no knowledge of Plaintiff's existence until after it had begun operations or had no intention of harming Plaintiff is not controlling. Thompson, 126 Ill. App. 3d 99, 112, 466 N.E.2d 1004, 1015, 81 Ill. Dec. 202 (citing Koebel v. Chicago Landlords' Protective Bureau, 210 Ill. 176, 71 N.E. 362 (1904)).
14. Plaintiff's common law unfair competition claim and its claim under the Illinois Trademark Act are "absorbed in a finding" in its favor on the Lanham Act trademark infringement claim. James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274-75 n.16 (7th Cir. 1976). Plaintiff has shown that it is likely to prevail on the merits of these claims, as well.
15. In trademark infringement cases, the court may presume that irreparable injury will result where there is a likelihood of proving consumer confusion. Helene Curtis Industries, Inc. v. Church and Dwight Co., 560 F.2d 1325, 1330 (7th Cir. 1977); Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 505 (8th Cir. 1987) (citation omitted); Bonner v. Westbound Records, Inc., 49 Ill. App. 3d 543, 551, 364 N.E.2d 570, 576, 7 Ill. Dec. 409 (1st Dist. 1977). Here, Plaintiff contends that confusion on the part of listeners who complete Arbitron "diaries" may result in Plaintiff's failure to receive credit for its listenership. Because of the importance of Arbitron ratings in selling advertising time, Plaintiff urges that this evidence itself demonstrates that irreparable injury may result from customer confusion.
16. Defendants have not shown that they will suffer irreparable harm if preliminary relief is granted. Although they urge that they have incurred significant expense in gearing up to promote the "Star" mark, the record indicates that at least a significant portion of that expense -- including, for example, the expense of a consumer survey -- was incurred after Defendants were on notice of Plaintiff's claim. The record suggests, further, that Defendants' inability to use its chosen mark need not impair Defendants' competitive strength. Defendants remain free to choose from the lexicon of terms that may function as descriptive or suggestive marks. Moreover, Mr. Disney testified that, in spite of having been barred by this court's temporary restraining order from use of the name "Star," Defendants have already been able to command higher prices for advertising time than did WYSY's previous owners.
17. A balance of the equities favors Plaintiff. For more than two years, Plaintiff has made a substantial investment in establishing and promoting its mark. At least some authority suggests that enjoining further use of an infringing mark, before that mark has attained success, may be a "kindness" in that the enjoined party is spared potential further challenges to its mark. See Bertolli USA, Inc. v. Filippo Bertolli Fine Foods, Ltd., 662 F. Supp. 203, 206 (S.D. N.Y. 1987) (quoting George Washington Mint, Inc. v. Washington Mint, Inc., 349 F. Supp. 255, 263 (S.D. N.Y. 1972)). In any event, as Plaintiffs urge, Defendants should have known at the time they began using the "Star" mark of Plaintiff's competing use; they therefore acted at their peril that their own use would be enjoined. See Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 620 (7th Cir.), cert. denied, 459 U.S. 880, 74 L. Ed. 2d 145, 103 S. Ct. 176 (1982); Helene Curtis Indus., Inc. v. Church & Dwight Co., 560 F.2d 1325, 1333-34 (7th Cir. 1977), cert. denied, 434 U.S. 1070, 55 L. Ed. 2d 772, 98 S. Ct. 1252 (1978).
18. The public interest will not be disserved by entry of a preliminary injunction. Depriving Defendants of the use of "STAR" name need not limit listener access to Defendants' programming. Defendants remain free to broadcast under any desired name that does not infringe.
As more fully described in the findings and conclusions set out above, Plaintiff has demonstrated that it has a substantial likelihood of prevailing on the merits of its claims under the Lanham Act and under its related state law claims. Irreparable harm may be presumed here; in addition, Plaintiff has presented evidence that consumer confusion may result in inaccurate crediting of its station by Arbitron, the rating service that plays a significant role in determining a radio station's appeal for advertisers. Defendants are poised to make a significant and costly entry into the market using the "Star" name. They have not, however, demonstrated that the harm they will suffer from being preliminarily enjoined from use of that name exceeds the harm of denial of an injunction for Plaintiff, whose use of the name is established and whose mark is registered.
In light of the parties' need for prompt resolution of this motion, time does not permit a complete and thorough discussion of each argument raised. Two significant issues should be addressed, however. First, Defendants argue that others in the marketplace are using the "Star" name and that Plaintiff's use is, therefore, not exclusive. There is no evidence, however, that any other broadcaster in the Chicago area is using the word "Star," followed by its frequency, as a "name" or "tag." Significantly, the relief recommended here would not, as Defendants warn, deprive any broadcaster in the Chicago area of the use of the word "star." Plaintiff's counsel candidly suggested that uses of the word other than as a name or "tag" for Defendants' radio station might not be objectionable.
Second, Defendants urge that the Seventh Circuit's holding in M.B.H. Enterprises, Inc. v. WOKY, Inc., 633 F.2d 50 (7th Cir. 1980) requires that Plaintiff's petition be denied. In M.B.H., the court considered plaintiff's federally registered radio service mark, "I LOVE YOU," which plaintiff had licensed to a Milwaukee radio station for broadcast as "I LOVE YOU MILWAUKEE." When defendant WOKY began a similar promotional campaign, broadcasting such expressions as "WOKY LOVES MILWAUKEE" and "ROBB EDWARDS (a WOKY disk jockey] LOVES MILWAUKEE," plaintiff sought an injunction under the Lanham Act. The court concluded that defendant's use of the "love" expression was descriptive. It noted that WOKY's call letters, and not the slogan, were used by defendant to identify itself to the public. 633 F.2d at 52. WOKY quite properly used the "love" slogan as a description of its affection for the community and its responsibility "to care for and serve its community well." Id. at 55.
In contrast to the situation before the court in M.B.H., the issue here is not a description, but a name. Plaintiff has used the "STAR 105.5" mark over many months, has registered the mark, and has made substantial efforts to promote an identification among the listening public of its radio station with "STAR." Defendants adopted a confusingly similar mark and proceeded to broadcast that mark even after being notified of Plaintiff's objection. This court should enter a preliminary injunction on the same terms as the temporary restraining order and should require Plaintiff to post appropriate security.
REBECCA R. PALLMEYER
United States Magistrate Judge
Date: January 26, 1994