### The Honorab le 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.

Du luth 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 Minnesot a Stat. § 325.165 (1995). After considering cross-motions for summar y judgmen t, the district court granted judgment in favor of defendants o n 1 all claims. We affirm.

### -2- I. Background

For more than 100 years plaintiff has circulated a daily newspaper, the Du luth News-Tribune, in the Northeast region of Minnesota, whic h 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 loca l coverage.

Fr om1946 to the present, defendant Mesabi has published a dail y newspa per, the "Mesabi Daily News," in Virginia, Minnesota, which i s located in the eastern region of the Iron Range. Since 1899 defendan t Hibbing has published a paper Sunday through Fri day 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 a nd Hibbing, both subsidiaries of the Murphy Publishing Company, began a joint publication of a Saturda y newspa per entitled the "Saturday Daily News Tribune," which the y distribut ed throughout the Iron Range. On July 9, 1994, in response t o plaintiff's complaints about the similarity in names between plaintiff's paper and the new Saturday paper, defendants added an ampersand between th e words "News" and "Tribune."

Duluth News-Tribune, unsatisfied with this change, filed sui t claiming trademark infringement under the Lanham Act and trademark dilutio n under Minnesota law. The district court denied plaintiff's motion for a preliminary injunction and granted summary judgm ent 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 benefi t of all reasonable inferences to be drawn from the facts, the court finds that no genuine issue of material fact exists an d 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 th e outcome of the suit. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 247- 148 (1986). On appea l 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 tha t defendants ' use of the name "Saturday Daily News & Tribune" creates a likelihood of confusion, deception, or mistake a mong an appreciable number of ordinary buyers as to the source of or association between the tw o 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 similarit y between the parties' marks; 3) the competitive proximity of the parties' products; 4) the alleged infringer's intent to confuse; 5) evidence o f actual c onfusion; and 6) the degree of care reasonably expected o f potential customers. Anheuser-Busch, Inc. v. Balducci Publications , 2 8 F.3d 769, 774 (8th Cir. 1994), cert. denied , 115 S. Ct. 903 (1995). These factors do not operate in a mathematically preci se formula; rather, we use them a t the summary judgment stage as a guide to determine whether a
rea sonable jury could find a likelihood of confusion. Factual dispute s regardi ng a single factor are insufficient to support the reversal o f summary j udgment 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 fac tor with its corresponding relevant facts.

A. The Strength of the Trademark
As a prel iminary matter, we must determine whether plaintiff's mark is str ong enough to merit trademark protection. To do this, we mus t classify the mark, "Duluth News-Tribune," into o ne of four categories: 1) arbitr ary or fanciful, 2) suggestive, 3) descriptive, or 4) generic

. Cellular Sales, Inc. v. Mackay , 942 F.2d 483, 485 (8th Cir. 1991). A n arbi trary or fanciful trademark is the strongest type of mark and i s afforded the highest level of protection. Id. at 486. At the other end of the spectrum, a ge neric term is one that is used by the general public to identify a category of goods, and as such merits no trademar k 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
. deni ed , 434 U.S. 1025 (1978). Suggestive and descriptive marks fal l somewhere in between. A suggestive mark is one that requires some measure of imagination to rea ch a conclusion regarding the nature of the product. See American Home Products Corp. v. Johnson Chemical Co. Inc. , 589 F.2 d 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 o r function of the product and is entitled to protection only if it has becom e distinctive by acquiring a secondary meaning. S ee 20th Century Wear, Inc. v. Sanmark-Stardust Inc. , 747 F.2d 81, 87-88 (2dCir. 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, "Dulut h News-Tribune," as descriptive. The words convey meaning to o directly to be suggestive, yet are too specific

### We take judicial notice of plaintiff's re cent registration of 2 

### the trademark "Duluth News-Tribune."
-5- to be generic. The name "Duluth News-Tribune" notifies the reader that th e pro duct is a Duluth newspaper, but is too specific to describe al l
ne wspapers, or even all Duluth newspapers. Viewing the facts i n 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 th e theory that customers in the Iron Range refer to plaintiff's paper in shorthand form as the "NewsTribun e." Plaintiff has offered no evidence sufficient to substantiat e 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 "Dul uth News." Moreover, the widespread use of the words "news" an d "t ribune" throughout the newspaper industry precludes plaintiff fro m claiming exclusive pr ivilege to use these words. Thus, although the mark "Duluth News-Tribune" merits some level of protection, the shorthand "News

Tribune" merits none.
B. The Similarity Between the Parties' Marks
Having de termined 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 word s in comm on does not mean that two marks are similar. General Mills , 82 4 F.2d at 627. Rather than consider the similarities between the component parts of the marks, w e must evaluate the impression that each mark in its entirety is likely to have on a purchaser exerci sing the attention usually given by purchasers of such products. Id.

### -6- Although the marks are aurally similar, when pronounced in thei r entirety the word "Saturday" and the ampersand in defendants' paper make the two distinguishable. Moreover, several significant visual distinction s distinguish the two marks. First, in defendants' paper the words "news" and "tribune" appear on different lines; in plaintiff's paper the word s "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 additio n, 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. 19 57) (giving weight to distinctive script in avoiding likelihood of confusion).

The mo st significant distinction, however, is the defendants ' placement of a blue banner reading, "Publicationof the Mesabi Daily News, Virginia and Daily Tr ibune, Hibbing" beneath the title. Cf. Pignons S.A. de Mecan ique v. Polaroid Corp. , 657 F.2d 482, 487 (1st Cir. 1981 ) (otherwis e similar marks are not likely to be confused when used i n conjun ction with clearly displayed name of manufacturer). Thes e 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 loca l
news cove rage and that they directly compete in the Iron Range; thus w e need not further examine this factor.
D. The Alleged Infringer's Intent to Confuse

Plaintiff alleges bad faith on the part of defendants, pointin g spe cifically to defendants' adoption of the mark "Saturday Daily News & Tribun e" and simultaneous decision to expand the Saturday edition t o provide regional news coverage shortly after

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plaint iff's paper extended regional coverage in its Iron Range edition

. Plaintiff also points to the absence of a written agreement between Hibbin g and Mesabi as evidence that defendants' "joint venture" explanation for th e use of the words "Daily News & Tribune" is simpl y an excuse to infringe on plaintiff's mark.
We find these bare allegations to be unsupported by the record. The
nam e "Saturday Daily News & Tribune" is a logical merger of the name s "Daily News" and "Daily Tribune." The identific ation of defendants' paper
as a joint publication appears on each individual paper. The paper's sale s 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 a s bel onging to either Hibbing or Mesabi, and through subscriptions to th e Mesabi or Hibbing pap er. Likewise, defendants announced the formation of the joint Saturday edition in each of their respective papers, clearl y identi fying the source of the Saturday edition. Moreover, afte r plaintiff's initial letter protesting the paper's name, defendant s
con tacted the Minnesota Newspaper Association and accepted th e Association's recomme ndation that defendants add an ampersand between the words "news" and "tri bune." The record, then, reveals no evidence of bad faith on the part of defendants, leaving no genuine factual disput e regarding defendants' intent.

E. Evidence of Actual Confusion

"[W]hen d etermining 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, In c. , 826 F.2d 775, 777 (8th Cir. 198 7). Plaintiff points to the following incidents of actua l
con fusion: 1) plaintiff's receipt of defendants' mail and phone calls ; 2) a reporter who all eges that he routinely identifies himself as working for the Ne ws-Tribune, and that on a particular occasion he was asked , "which News-Tribune?"; 3) plaintiff's receipt of phone calls asking whethe r the

### -8-

two ne wspapers are associated; 4) plaintiff's receipt of a subscriptio n form for defendants' paper; and 5) plaintiff's receipt of a reader's lette r proposing corrections to an article that appeared in defendants' paper.
In evaluating the evidence at the summary judgment stage, we co nsider only those responses that are supported by admissible evidence. Postscrip t Ente rprises 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 m ail 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 th e lack of an opportunity for cross-examination of the caller or sende r regarding the reason for the "confusion." See Davidson & Schaff, Inc. v. Liberty Na tional Fire Insurance Co. , 69 F.3d 868, 871 (8th Cir. 1996 ) (refus ing to consider hearsay evidence); Vitek Systems, Inc. v. Abbot t Labs

. , 675 F.2d 190, 193 (8th Cir. 1982) (affirming district court' s decision to discount this type of hearsay eviden ce). 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 News

Tr ibune he worked for indicates a distinction in the mind of th e questioner, rather than confusion. See Fisher S toves, Inc. v. All Nighter Stove Wor ks , 626 F.2d 193, 195 (1st Cir. 1980) (questions abou t affili ations of two companies indicate that customers were aware o f dif ferent product sources). The nature of the question demonstrates a n und erstanding that at least two newspapers contain the words "news" an d "tr ibune." Likewise, the calls questioning whether the two papers wer e
as sociated demonstrate that potential customers do not automaticall y associate the words "news" and "tribune" with "Duluth News-Tribune."

### -9- Plaintiff next points to its receipt of a subscription form fo r defendants' paper. This evidence is of little v alue to plaintiff, as upon defendants' inquiry the sender clarified that she subscribed to both paper s and had inadvertently placed the subscription forms in the wrong envelopes

. Moreov er, the fact that her check was made out to "Duluth News" cut s against plaintiff's claim of actual confusion.

Plaintif f offers one incident of actual confusion -- a letter fro m
a reader offering plaintiff editorial suggestions regarding an article tha t appear ed in defendants' paper. Although this incident provides som e suppor t for plaintiff's claim of likelihood of confusion, even severa l isolat ed incidents of actual confusion that occur initially upon th e creation of a potentially confusing mark are insufficient to establish a genuine issue of material fact as to the likelihood of confusion. Se e Astra Pharmaceutical Prod. Inc. v. Beckman Instruments Inc. , 718 F.2d 1201 , 1207-0 8 (1st Cir. 1983) (holding that temporary confusion regarding th e association of salesmen from the plaintiff's company with the defendant wa s insufficient to raise a genuine issue of material fact); Scott Paper Co. v. Scott's Liquid Gold, Inc. , 589 F.2d 1225, 123 1 (3rd Cir. 1978) (holding that n ineteen misdirected letters in four years were insufficient t o establis h likelihood of confusion). Rather, we look to whether a n 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 t o 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 witho ut some force when applied to the customer who makes a

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quick sto p at a convenience store to buy a paper, plaintiff ignores th e real ity of defendants' distribution methods. Approximately ninety-tw o 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 th e wrong one. Moreover, an additional two percent are sold through newspaper racks that clearly id entify defendants as the paper's publication source. This leaves only six percent of papers sold as potential candidates fo r buy er confusion, a number too small to create a genuine issue of fac t 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 prope r interpre tation to be given to the facts, rather than on the fact s themse lves, 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 conclud e that no factual dispute exists the resolution of whic h would allow a reasonable jury to find a likelihood of confusion. Plaintiff's trademark, thoug h deserving of some protection, is relatively weak . Although the newspapers themselves compete directly and provide similar news coverage, the titles,
as they a ppear on the two papers, are sufficiently distinct to allow a n ordinary purchaser to distinguish between them. Moreover, the remaining factors balance in defendants' favor. We find n o 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 fro m diluti on of the distinctive quality of their marks notwithstanding th e likeli hood of confusion. The statute defines "distinctive quality" a s meanin g that "the mark is inherently distinctive or has acquire d distinctiveness, and the mark is well known or famous." Minn. Stat. § 325D.165 (1995).

The Minnesota statute, which is similar to other state dilutio n statutes, appears to codify the common law, which has functioned to protec t well-known, distinctive marks from uses that are likely to tarnish or erod e the distinctive natur e of the mark. See DeRosier v. 5931 Business Trust , 870 F. Supp. 941, 948 (D. Minn 1994) (holding that the Minnesota statute simp ly codifies common law); See also Anheuser-Busch , 28 F.3d at 77 7 (interpreting Missour i anti-dilution statute, which is virtually the same
as M innesota statute, to protect against uses that tend to weaken o r tarnish t he unique nature of a mark). See, e.g. , Polaroid Corp. v

. Polaroid, Inc. , 319 F.2d 830 (7th Cir. 1963) ("Polaroid" as used i n connect ion with the installation of refrigeration and heating system s constitutes a dilution of "Polaroid.").

The gr avamen of a dilution claim is that the plaintiff's mark b e particularly distinctive and well-known or famous. We conclude that the mark "Duluth News-Tribune" is not sufficiently distinctive to meri t protec tion under this statute. Plaintiff cannot expect to acquir e
exc lusive use, even in a limited area, of the common words "news" an d "tribune." Plaintiff's claim of extensive advertising does not change thi s fac t. 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 appropriat e it to his exclusive u se 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 fo r defendants on the state claim.
The judgment is affirmed.

A true copy.

Attest:

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