The Honorable Michael J. Davis, United States District Judge 1

for the District of Minnesota.

___________

No. 95-2912

___________

Duluth News-Tribune, a division *

of Northwest Publications, *

Inc., a Delaware corporation, *

*

Appellant, * Appeal from the United States

* District Court for the

v. * District of Minnesota.

*

Mesabi Publishing Company, a *

Minnesota corporation; Hibbing *

Tribune Company, Inc., a *

Minnesota corporation, *

*

Appellees. *

___________

 Submitted: March 11, 1996

 Filed: June 3, 1996

___________

Before FAGG, BRIGHT, and WOLLMAN, Circuit Judges.

___________

WOLLMAN, Circuit Judge.

Duluth News-Tribune, a division of Northwest Publications, Inc.,

filed this trademark infringement action against Mesabi Publishing Company

(Mesabi) and Hibbing Tribune Company, Inc., (Hibbing) under section 43(a)

of the Lanham Trademark Act, 15 U.S.C. § 1125(a) (1995) and under Minnesota

Stat. § 325.165 (1995). After considering cross-motions for summary

judgment, the district court granted judgment in favor of defendants on

1

all claims. We affirm.
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I. Background

For more than 100 years plaintiff has circulated a daily newspaper,

the Duluth News-Tribune, in the Northeast region of Minnesota, which

includes the distinct geographic area known as the Iron Range. Although

the paper has always provided both national and regional news coverage, in

1992 plaintiff expanded the Iron Range edition to provide more local

coverage. 

From 1946 to the present, defendant Mesabi has published a daily

newspaper, the "Mesabi Daily News," in Virginia, Minnesota, which is

located in the eastern region of the Iron Range. Since 1899 defendant

Hibbing has published a paper Sunday through Friday in Hibbing, Minnesota,

in the western Iron Range. That paper, previously entitled the "Hibbing

Daily Tribune," is now entitled simply the "Daily Tribune."

This controversy began when Mesabi and Hibbing, both subsidiaries of

the Murphy Publishing Company, began a joint publication of a Saturday

newspaper entitled the "Saturday Daily News Tribune," which they

distributed throughout the Iron Range. On July 9, 1994, in response to

plaintiff's complaints about the similarity in names between plaintiff's

paper and the new Saturday paper, defendants added an ampersand between the

words "News" and "Tribune." 

Duluth News-Tribune, unsatisfied with this change, filed suit

claiming trademark infringement under the Lanham Act and trademark dilution

under Minnesota law. The district court denied plaintiff's motion for a

preliminary injunction and granted summary judgment in defendants favor on

all counts. 

II. The Summary Judgment Standard

Summary judgment is proper when, after reviewing the facts in
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the light most favorable to the nonmovant and giving that party the benefit

of all reasonable inferences to be drawn from the facts, the court finds

that no genuine issue of material fact exists and that the moving party is

entitled to judgment as a matter of law. Barry v. Barry, 78 F.3d 375, 379

(8th Cir. 1996). A factual dispute is material if it might affect the

outcome of the suit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-

148 (1986). On appeal we apply this standard de novo. Barry, 78 F.3d at

379.

III. The Lanham Act: Likelihood of Confusion

To prevail under the Lanham Act, plaintiff must prove that

defendants' use of the name "Saturday Daily News & Tribune" creates a

likelihood of confusion, deception, or mistake among an appreciable number

of ordinary buyers as to the source of or association between the two

papers. See 15 U.S.C. § 1114(1) and General Mills, Inc. v. Kellogg Co.,

824 F.2d 622, 626 (8th Cir. 1987).

In determining whether a likelihood of confusion exists, we consider

the following factors: 1) the strength of the trademark; 2) the similarity

between the parties' marks; 3) the competitive proximity of the parties'

products; 4) the alleged infringer's intent to confuse; 5) evidence of

actual confusion; and 6) the degree of care reasonably expected of

potential customers. Anheuser-Busch, Inc. v. Balducci Publications, 28

F.3d 769, 774 (8th Cir. 1994), cert. denied, 115 S. Ct. 903 (1995). These

factors do not operate in a mathematically precise formula; rather, we use

them at the summary judgment stage as a guide to determine whether a

reasonable jury could find a likelihood of confusion. Factual disputes

regarding a single factor are insufficient to support the reversal of

summary judgment unless they tilt the entire balance in favor of such a

finding. See Squirtco v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980)

("Resolution of [the likelihood of confusion] issue does not hinge on a

single factor"). 
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Accordingly, we will separately examine each factor with its corresponding

relevant facts.

 

A. The Strength of the Trademark

As a preliminary matter, we must determine whether plaintiff's mark

is strong enough to merit trademark protection. To do this, we must

classify the mark, "Duluth News-Tribune," into one of four categories: 1)

arbitrary or fanciful, 2) suggestive, 3) descriptive, or 4) generic.

Cellular Sales, Inc. v. Mackay, 942 F.2d 483, 485 (8th Cir. 1991). An

arbitrary or fanciful trademark is the strongest type of mark and is

afforded the highest level of protection. Id. at 486. At the other end

of the spectrum, a generic term is one that is used by the general public

to identify a category of goods, and as such merits no trademark

protection. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d

75, 79-81 (7th Cir. 1977) (holding "Lite Beer" to be generic), cert.

denied, 434 U.S. 1025 (1978). Suggestive and descriptive marks fall

somewhere in between. A suggestive mark is one that requires some measure

of imagination to reach a conclusion regarding the nature of the product.

See American Home Products Corp. v. Johnson Chemical Co. Inc., 589 F.2d

103, 106 (2d Cir. 1978) (holding the mark "Roach Motel" to be suggestive

because "[w]hile roaches may live in some motels against the will of the

owners, motels are surely not built for roaches to live in"). A

descriptive mark, on the other hand, immediately conveys the nature or

function of the product and is entitled to protection only if it has become

distinctive by acquiring a secondary meaning. See 20th Century Wear, Inc.

v. Sanmark-Stardust Inc., 747 F.2d 81, 87-88 (2d Cir. 1984) (finding "Cozy

Warm ENERGY-SAVERS" to be descriptive), cert. denied, 470 U.S. 1052 (1985).

 

We find that the district court properly classified plaintiff's mark,

"Duluth News-Tribune," as descriptive. The words convey meaning too

directly to be suggestive, yet are too specific
 We take judicial notice of plaintiff's recent registration of 2

the trademark "Duluth News-Tribune."

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to be generic. The name "Duluth News-Tribune" notifies the reader that the

product is a Duluth newspaper, but is too specific to describe all

newspapers, or even all Duluth newspapers. Viewing the facts in

plaintiff's favor, we will also assume that the mark "Duluth News-Tribune"

has acquired secondary meaning meriting trademark protection.2

Plaintiff attempts, however, to extend this protection beyond "Duluth

News-Tribune," to the term "News-Tribune," on the theory that customers in

the Iron Range refer to plaintiff's paper in shorthand form as the "NewsTribune." Plaintiff has offered no evidence sufficient to substantiate

this claim. The only direct evidence of a customer's shorthand reference

to the Duluth News-Tribune is from a customer who refers to the paper as

"Duluth News." Moreover, the widespread use of the words "news" and

"tribune" throughout the newspaper industry precludes plaintiff from

claiming exclusive privilege to use these words. Thus, although the mark

"Duluth News-Tribune" merits some level of protection, the shorthand "NewsTribune" merits none.

B. The Similarity Between the Parties' Marks

Having determined that the relevant protected mark is "Duluth NewsTribune," we must consider the similarity between that mark and defendants'

mark, "Saturday Daily News & Tribune." The use of dominant identical words

in common does not mean that two marks are similar. General Mills, 824

F.2d at 627. Rather than consider the similarities between the component

parts of the marks, we must evaluate the impression that each mark in its

entirety is likely to have on a purchaser exercising the attention usually

given by purchasers of such products. Id.
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Although the marks are aurally similar, when pronounced in their

entirety the word "Saturday" and the ampersand in defendants' paper make

the two distinguishable. Moreover, several significant visual distinctions

distinguish the two marks. First, in defendants' paper the words "news"

and "tribune" appear on different lines; in plaintiff's paper the words

"news" and "tribune" appear on the same line. Second, defendants' title

appears in two colors, i.e., red and black; plaintiff's title appears all

in black. In addition, the size and style of type used by the two papers

differs. Cf. Esquire, Inc. v. Esquire Slipper Manuf. Co., Inc., 243 F.2d

540, 542 (1st Cir. 1957) (giving weight to distinctive script in avoiding

likelihood of confusion).

The most significant distinction, however, is the defendants'

placement of a blue banner reading, "Publication of the Mesabi Daily News,

Virginia and Daily Tribune, Hibbing" beneath the title. Cf. Pignons S.A.

de Mecanique v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981)

(otherwise similar marks are not likely to be confused when used in

conjunction with clearly displayed name of manufacturer). These

distinctions appear to be sufficient to notify an ordinary customer that

the papers originate from two different publishers. 

C. The Competitive Proximity of the Parties' Products

Neither party contests that both papers provide regional and local

news coverage and that they directly compete in the Iron Range; thus we

need not further examine this factor.

D. The Alleged Infringer's Intent to Confuse

Plaintiff alleges bad faith on the part of defendants, pointing

specifically to defendants' adoption of the mark "Saturday Daily News &

Tribune" and simultaneous decision to expand the Saturday edition to

provide regional news coverage shortly after
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plaintiff's paper extended regional coverage in its Iron Range edition.

Plaintiff also points to the absence of a written agreement between Hibbing

and Mesabi as evidence that defendants' "joint venture" explanation for the

use of the words "Daily News & Tribune" is simply an excuse to infringe on

plaintiff's mark.

We find these bare allegations to be unsupported by the record. The

name "Saturday Daily News & Tribune" is a logical merger of the names

"Daily News" and "Daily Tribune." The identification of defendants' paper

as a joint publication appears on each individual paper. The paper's sales

extend to cover both the area served by the Mesabi paper and that served

by the Hibbing paper. The paper is sold in newsstands identified as

belonging to either Hibbing or Mesabi, and through subscriptions to the

Mesabi or Hibbing paper. Likewise, defendants announced the formation of

the joint Saturday edition in each of their respective papers, clearly

identifying the source of the Saturday edition. Moreover, after

plaintiff's initial letter protesting the paper's name, defendants

contacted the Minnesota Newspaper Association and accepted the

Association's recommendation that defendants add an ampersand between the

words "news" and "tribune." The record, then, reveals no evidence of bad

faith on the part of defendants, leaving no genuine factual dispute

regarding defendants' intent.

E. Evidence of Actual Confusion

"[W]hen determining whether there exists a likelihood of confusion,

weight is given to the number and extent of instances of actual confusion."

Life Technologies, Inc. v. Gibbco Scientific, Inc., 826 F.2d 775, 777 (8th

Cir. 1987). Plaintiff points to the following incidents of actual

confusion: 1) plaintiff's receipt of defendants' mail and phone calls;

2) a reporter who alleges that he routinely identifies himself as working

for the News-Tribune, and that on a particular occasion he was asked,

"which News-Tribune?"; 3) plaintiff's receipt of phone calls asking whether

the
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two newspapers are associated; 4) plaintiff's receipt of a subscription

form for defendants' paper; and 5) plaintiff's receipt of a reader's letter

proposing corrections to an article that appeared in defendants' paper. 

In evaluating the evidence at the summary judgment stage, we consider

only those responses that are supported by admissible evidence. Postscript

Enterprises v. City of Bridgeton, 905 F.2d 223, 226 (8th Cir. 1990).

Applying this standard, we find that plaintiff's claim of actual confusion

through misdirected mail and phone calls fails to raise a genuine factual

dispute for two reasons. First, the vague evidence of misdirected phone

calls and mail is hearsay of a particularly unreliable nature given the

lack of an opportunity for cross-examination of the caller or sender

regarding the reason for the "confusion." See Davidson & Schaff, Inc. v.

Liberty National Fire Insurance Co., 69 F.3d 868, 871 (8th Cir. 1996)

(refusing to consider hearsay evidence); Vitek Systems, Inc. v. Abbott

Labs., 675 F.2d 190, 193 (8th Cir. 1982) (affirming district court's

decision to discount this type of hearsay evidence). Second, we find such

evidence to be de minimis and to show inattentiveness on the part of the

caller or sender rather than actual confusion. See J. Thomas McCarthy,

Trademarks and Unfair Competition, § 23.2, p.52, n.1 (2d ed. 1984). 

The question to the reporter who was asked to specify which NewsTribune he worked for indicates a distinction in the mind of the

questioner, rather than confusion. See Fisher Stoves, Inc. v. All Nighter

Stove Works, 626 F.2d 193, 195 (1st Cir. 1980) (questions about

affiliations of two companies indicate that customers were aware of

different product sources). The nature of the question demonstrates an

understanding that at least two newspapers contain the words "news" and

"tribune." Likewise, the calls questioning whether the two papers were

associated demonstrate that potential customers do not automatically

associate the words "news" and "tribune" with "Duluth News-Tribune."
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Plaintiff next points to its receipt of a subscription form for

defendants' paper. This evidence is of little value to plaintiff, as upon

defendants' inquiry the sender clarified that she subscribed to both papers

and had inadvertently placed the subscription forms in the wrong envelopes.

Moreover, the fact that her check was made out to "Duluth News" cuts

against plaintiff's claim of actual confusion.

Plaintiff offers one incident of actual confusion -- a letter from

a reader offering plaintiff editorial suggestions regarding an article that

appeared in defendants' paper. Although this incident provides some

support for plaintiff's claim of likelihood of confusion, even several

isolated incidents of actual confusion that occur initially upon the

creation of a potentially confusing mark are insufficient to establish a

genuine issue of material fact as to the likelihood of confusion. See

Astra Pharmaceutical Prod. Inc. v. Beckman Instruments Inc., 718 F.2d 1201,

1207-08 (1st Cir. 1983) (holding that temporary confusion regarding the

association of salesmen from the plaintiff's company with the defendant was

insufficient to raise a genuine issue of material fact); Scott Paper Co.

v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231 (3rd Cir. 1978) (holding

that nineteen misdirected letters in four years were insufficient to

establish likelihood of confusion). Rather, we look to whether an

appreciable number of ordinary purchasers are likely to be so misled, and

here the record before us compels an answer in the negative.

F. The Degree of Care Reasonably Expected of Potential

 Customers

In evaluating this factor, we look to the degree of care expected of

an ordinary purchaser. Plaintiff argues that because of the low cost of

newspapers, ordinary buyers will exercise only minimal care in selecting

one. Although plaintiff's argument is not without some force when applied

to the customer who makes a
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quick stop at a convenience store to buy a paper, plaintiff ignores the

reality of defendants' distribution methods. Approximately ninety-two

percent of defendants' papers are sold through home subscriptions.

Customers who spend the money and effort to subscribe to a newspaper are

likely to know which paper they are buying, and to complain if they get the

wrong one. Moreover, an additional two percent are sold through newspaper

racks that clearly identify defendants as the paper's publication source.

This leaves only six percent of papers sold as potential candidates for

buyer confusion, a number too small to create a genuine issue of fact

regarding the likelihood that an appreciable number of customers will be

confused.

IV. The Appropriateness of Summary Judgment in this Case

When, as in this case, a trademark dispute centers on the proper

interpretation to be given to the facts, rather than on the facts

themselves, summary disposition is appropriate. Woodsmith Pub. Co. v.

Meridith Corp., 904 F.2d 1244, 1247 (8th Cir. 1990).

Our evaluation of the foregoing six factors leads us to conclude that

no factual dispute exists the resolution of which would allow a reasonable

jury to find a likelihood of confusion. Plaintiff's trademark, though

deserving of some protection, is relatively weak. Although the newspapers

themselves compete directly and provide similar news coverage, the titles,

as they appear on the two papers, are sufficiently distinct to allow an

ordinary purchaser to distinguish between them. Moreover, the remaining

factors balance in defendants' favor. We find no evidence that defendants

chose their mark with the intent to infringe on plaintiff's goodwill. The

evidence of actual confusion is de minimis and insufficient to establish

a genuine issue of material fact. Finally, and most decisive, defendants'

distribution methods ensure that the vast majority of ordinary purchasers

will not be confused. Thus we affirm the district
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court's grant of summary judgment on the Lanham Act claims.

V. State Claim: Dilution

The Minnesota anti-dilution statute protects trademark owners from

dilution of the distinctive quality of their marks notwithstanding the

likelihood of confusion. The statute defines "distinctive quality" as

meaning that "the mark is inherently distinctive or has acquired

distinctiveness, and the mark is well known or famous." Minn. Stat. §

325D.165 (1995).

The Minnesota statute, which is similar to other state dilution

statutes, appears to codify the common law, which has functioned to protect

well-known, distinctive marks from uses that are likely to tarnish or erode

the distinctive nature of the mark. See DeRosier v. 5931 Business Trust,

870 F. Supp. 941, 948 (D. Minn 1994) (holding that the Minnesota statute

simply codifies common law); See also Anheuser-Busch, 28 F.3d at 777

(interpreting Missouri anti-dilution statute, which is virtually the same

as Minnesota statute, to protect against uses that tend to weaken or

tarnish the unique nature of a mark). See, e.g., Polaroid Corp. v.

Polaroid, Inc., 319 F.2d 830 (7th Cir. 1963) ("Polaroid" as used in

connection with the installation of refrigeration and heating systems

constitutes a dilution of "Polaroid."). 

The gravamen of a dilution claim is that the plaintiff's mark be

particularly distinctive and well-known or famous. We conclude that the

mark "Duluth News-Tribune" is not sufficiently distinctive to merit

protection under this statute. Plaintiff cannot expect to acquire

exclusive use, even in a limited area, of the common words "news" and

"tribune." Plaintiff's claim of extensive advertising does not change this

fact. See Esquire, 243 F.2d at 543 (1st Cir. 1957) ("We do not think a

trader can pluck a word . . . out of the general vocabulary and appropriate

it to his exclusive use no matter how much effort and money he may expend

in the attempt"). 
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Thus, we affirm the district court's grant of summary judgment for

defendants on the state claim.

The judgment is affirmed.

A true copy.

Attest:

CLERK, U. S. COURT OF APPEALS, EIGHTH CIRCUIT.