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Chicago Tribune Co. v. Fox News Network

April 4, 2007

CHICAGO TRIBUNE COMPANY, AN ILLINOIS CORPORATION, PLAINTIFF,
v.
FOX NEWS NETWORK, LLC, A DELAWARE LIMITED LIABILITY COMPANY, D/B/A FOX NEWS CHANNEL, DEFENDANT.



MEMORANDUM OPINION AND ORDER

In 2002, plaintiff Chicago Tribune Company ("Tribune") began publishing a free, tabloid-style daily newspaper called the REDEYE. Tribune has two United States federal trademark registrations for the REDEYE mark for "newspapers for general circulation." One is a word mark for REDEYE and the other is for a design consisting of the mark REDEYE appearing inside the letter "I". In early 2007, Fox News Network, LLC d/b/a/ Fox News Channel ("Fox News") introduced a late-night (1:00 a.m. in the Chicago area) show called "Redeye with Greg Gutfeld."*fn1 Tribune promptly brought this trademark suit under section 32 and 43(a) of the Lanham Act, 15 U.S.C. secs. 1114 and 1125 (a) (2006). The Tribune trademarks do not extend to television, although the day after Fox's late night show began, Tribune filed applications for new redeye marks for both television and the internet. Tribune seeks a preliminary injunction requiring Fox to change the name of its show. The motion for a preliminary injunction is denied but the case will be set for an expedited trial.

I.

To obtain its desired preliminary injunction, Tribune must show that it (1) is likely to succeed on the merits; (2) has no adequate remedy at law; (3) will suffer irreparable harm which, absent injunctive relief, outweighs the irreparable harm Fox News will suffer if the injunction is granted; and (4) the injunction will not harm the public interest. Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 811 (7th Cir. 2002) (citations omitted). Tribune has the burden of proof to make a clear showing that it is entitled to the relief it seeks. See Goodman v. Illinois Dep't of Fin. and Prof'l Regulation, 430 F.3d 432, 437 (7th Cir. 2005) (citations omitted).

To prevail in an action for trademark infringement, a plaintiff must establish: "(1) that it has a protectible trademark, and (2) a likelihood of confusion as to the origin of the defendant's product." Ty, Inc., v. Jones Group, Inc., 237 F.3d 891, 897 (7th Cir. 2001) (quoting Int'l Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1084 (7th Cir. 1988)).

II.

Defendant first challenges the protectability of plaintiff's registered marks. The five categories of trademarks, in descending order of distinctiveness, are: fanciful, arbitrary, suggestive, descriptive, and generic. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976) (Friendly, J.). The degree of protection available to a mark depends on its classification: a mark that is fanciful, arbitrary or suggestive is protected; a descriptive mark is protected only if it has acquired secondary meaning; and a generic mark is not protected. Id. Arbitrary and suggestive marks are automatically entitled to trademark protection because they are inherently distinctive. Two Pesos, 505 U.S. at 767-68; Platinum Home Mortgage Corp. v. Platinum Fin. Group, Inc., 149 F.3d 722, 727 (7th Cir. 1998). A mark is classified as arbitrary when it neither suggests nor describes any ingredient, quality, or characteristic of the good or service with which it is associated. See Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481, 486 (7th Cir. 1997) ("Apple Computer" is an arbitrary mark "because a computer has nothing to do with an apple"); Sullivan v. CBS Corp., 385 F.3d 772, 776 (7th Cir. 2004) ("The word 'survivor' when used as a band name is arbitrary; there is nothing about the word which is necessary to the description of a band."). A suggestive mark is one "which requires some operation of the imagination to connect it with the goods." G. Heileman Brewing Co. Inc., v. Anheuser-Busch, Inc., 873 F.2d 985, 998 (7th Cir. 1989) (quoting Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d 366, 379 (7th Cir. 1976)); see also Sands, Taylor & Wood Co. v. Quaker Oats, Co., 978 F.2d 947, 953 (7th Cir. 1992) ("mental process [is] required to connect a name that is incongruous or figurative with the product.").

In contrast to arbitrary and suggestive marks, "[d]escriptive [marks] are usually not entitled to protection 'because they are a poor means of distinguishing one source of services from another and because they are often necessary to the description of all goods or services of a similar nature.'" Sullivan, 385 F.3d at 776 (quoting Liquid Controls Corp. v. Liquid Control Corp., 802 F.2d 934, 936 (7th Cir. 1986)); Blau Plumbing, Inc., v. S.O.S. Fix-It, Inc., 781 F.2d 604, 609 (7th Cir. 1986) ("To allow a firm to use as a trademark a . . . descriptive word still understood by the consuming public to describe, would make it difficult for competitors to market their own brands of the same product."). "A descriptive mark is not a complete description [of the good], but it picks out a product characteristic that figures prominently in the consumer's decision whether to buy the product or service in question." Custom Vehicles, 476 F.3d at 483. These marks may receive trademark protection, however, if they acquire secondary meaning. Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 907 (7th Cir. 1983). "Secondary meaning refers to the manner in which a consumer identifies a specific business or a business's reputation by a particular trademark." Platinum Home Mortgage, 149 F.3d at 728 (citation omitted).

Under the Lanham Act, "a mark registered on the principal register . . . shall be prima facie evidence of the validity of the registered mark." 15 U.S.C. § 1115(a). Accordingly, registered marks are presumed not to be descriptive or generic; or, if descriptive, then the mark is presumed to have secondary meaning. Liquid Controls, 802 F.2d at 936. These presumptions can be overcome with evidence that the mark is descriptive or generic, or that it lacks secondary meaning. See Door Sys., Inc. v. Pro-Line Door Sys., Inc., 83 F.3d 169, 172 (7th Cir. 1996).*fn2 Classification of a trademark is a factual question. See, e.g., Sands, 978 F.2d at 953; RWT Corp. v. Wonderware Corp., 931 F. Supp. 583, 586 (N.D. Ill. 1996).

Defendant argues plaintiff's mark is descriptive. In doing so, it relies primarily on plaintiff's representation to the United States Patent and Trademark Office ("USPTO") in response to the USPTO initial rejection of plaintiff's applications because of a prior registration of the mark REDEYE in connection with "newspaper cartoons." Plaintiff responded that there was no likelihood of confusion between the two marks because:

"RED EYE," according to the 2003 Cambridge Dictionary of Idioms, means "a flight that leaves late at night and arrives early in the next morning" and "cheap whisky strong alcoholic drink." . . . Hyperdictionary.com defines it as a verb, rather than a noun: "(v) travel on an overnight flight; 'The candidate red-eyed from California to the East Coast the night before the election to give a last stump speech.'" . . . Used for a general circulation newspaper, "RED EYE" suggests current, up-all-night, highly-caffeinated news reporting and that is the connotation with which applicant uses the mark." (Def. Op. Brief. Exh. F.) According to defendant, "the adjectives 'current, up-all-night, highly-caffeinated news reporting' are descriptive of the service provided by the REDEYE and demonstrate that the mark is [] descriptive." (Def. Resp. to Supp. Mem. at 14.) Defendant also argues plaintiff's representation to the USPTO estops it from arguing the mark is arbitrary. Plaintiff argues the mark is not descriptive, but arbitrary or suggestive and therefore entitled to protection.

I agree that the mark is not descriptive. Redeye is not "a product characteristic that figures prominently in the consumer's decision whether to buy the product or service in question." Custom Vehicles, 476 F.3d at 483. The late-night nature of any news reporting is not a prominent or defining characteristic of this publication. The mark, therefore, is not descriptive. Whether plaintiff's mark is most properly classified as suggestive or arbitrary is a closer question, but it appears to have been intended to be suggestive of wakefulness during the late evening or very early morning hours. At the least, "some operation of the imagination" is necessary to connect the word redeye with the newspaper. For purposes of this decision it makes no difference whether the mark is denoted arbitrary or suggestive. Plaintiff's mark is entitled to trademark protection.

III.

Plaintiff must next establish a likelihood of confusion. "In assessing the likelihood of confusion, courts have identified seven relevant factors that help in deciding the ultimate question: (1) the similarity of the marks; (2) the similarity of the products; (3) the area and manner of concurrent use; (4) the degree of care likely to be used by consumers; (5) the strength of the plaintiff's mark; (6) whether any actual confusion exists; and (7) the defendant's intent to palm off its goods as those of the plaintiff." Sullivan, 385 F.3d at 776 (citations omitted).

A. Similarity of the Marks

The comparison among marks must be made "in light of what happens in the marketplace and not merely by looking at the two marks side-by-side." Id. at 777 (quoting Ty, 237 F.3d at 898). The Seventh Circuit warns "[i]t is 'inappropriate to focus on minor stylistic differences to determine if confusion is likely' if the public does not usually encounter the two marks together." Id. (quoting Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc., 128 F.3d 1111, 1115 (7th Cir. 1997)). The Seventh Circuit also instructs that "if one word or feature of a composite trademark is the salient portion of the mark, it may be given greater weight than ...


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