2000 Decisions

Opinions of the United

States Court of Appeals

for the Third Circuit

5-3-2000

Times Mirror Magazines v. Las Vegas Sports News

Precedential or Non-Precedential:

Docket 99-1299

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Recommended Citation

"Times Mirror Magazines v. Las Vegas Sports News" (2000). 2000 Decisions. Paper 88.

http://digitalcommons.law.villanova.edu/thirdcircuit_2000/88
Filed May 3, 2000 

UNITED STATES COURT OF APPEALS 

FOR THE THIRD CIRCUIT 

No. 99-1299 

TIMES MIRROR MAGAZINES, INC. 

v. 

LAS VEGAS SPORTS NEWS, L.L.C., 

d/b/a LAS VEGAS SPORTING NEWS, 

 Appellant. 

On Appeal from the United States District Court 

for the Eastern District of Pennsylvania 

(D.C. No. 98-cv-05768) 

District Judge: Honorable Bruce W. Kauffman 

Argued: January 13, 2000 

Before: Alito, Barry and Aldisert, Circuit Judges. 

(Opinion Filed: April 28, 2000) 

ORDER AMENDING SLIP OPINION 

It is HEREBY ORDERED that the Slip Opinion filed in

this case on April 28, 2000, be amended as follows:

(1) Page 2, para. 1 ("The issue on appeal . . .") should be 

deleted in its entirety and replaced with the following two 

paragraphs: 

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 entitled 

The Sporting News. The mark is now owned by its 

publisher, Times Mirror Magazines, Inc. This appeal
requires us to decide if Times Mirror was entitled to a 

preliminary injunction enjoining a publisher from using the 

name Las Vegas Sporting News. 

Applying the relatively new Federal Trademark Dilution 

Act of 1995, 15 U.S.C. S 1125(c) ("FTDA" or "Act"), the 

district court issued the injunction against Las Vegas 

Sports News, L.L.C., d/b/a Las Vegas Sporting News 

("LVSN"), from using the name on its weekly sports-betting 

publication. The court concluded that Times Mirror was 

likely to succeed on the merits of its dilution claim against 

LVSN, because the mark was "famous" in its niche market 

and LVSN's use of the title on its publication diluted the 

Times Mirror's mark by blurring its distinctiveness. 

(2) Page 3, Section I, first para. ("In 1886. . .") should be 

deleted without replacement. 

(3) Page 14, Section IV, second para. ("To be sure,

S 1125(c)(1) . . .") should be deleted and replaced with the 

following four paragraphs: 

The federal dilution statute must not be considered in 

vacuo, especially where as here the senior mark is 

registered in the U.S. Patent and Trademark Office. The 

trademark registration statute 15 U.S.C. S 1052 emphasizes 

that a mark that is "merely descriptive" shall not be entitled 

to federal registration, see S 1052(e), unless the mark 

acquires secondary meaning. See Scott Paper Co. v. Scott's 

Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). We 

have already demonstrated in Part III.B.1, supra , that "The 

Sporting News" has acquired secondary meaning and"has 

become distinctive" in its market. SeeS 1052(f) ("[N]othing 

in this chapter shall prevent the registration of a mark used 

by the applicant which has become distinctive of the 

applicant's goods in commerce."). 

J. Thomas McCarthy, the leading commentator on the 

subject, states: 

 In the author's view, there is in [S 1125(c)(1)] no 

 separate statutory requirement of "distinctiveness," 

 apart from a finding that the designation be a"mark" 

 that is "famous." "Distinctiveness" is used here only as 

 a synonym for "fame." Even if "distinctiveness" is 

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 regarded as a separate requirement, it would, in the 

 author's view, be redundant. To be a "mark" eligible in 

 the first place for protection under [S 1125(c)(1)], basic 

 trademark principles dictate that a designation has to 

 be "distinctive" either inherently or through acquisition 

 of secondary meaning. 

4 McCarthy, supra, S 24:91 (footnotes omitted).1 

McCarthy explains the legislative history behind 

S 1125(c)(1)'s "distinctive and famous" language: 

 The 1987 Trademark Review Commission Report, the 

 genesis of the language contained in the 1996 federal 

 Act, said that the dual mention of both "distinctive and 

 famous" in the introduction to the list of factors was 

 inserted to emphasize the policy goal that to be 

 protected, a mark had to be truly prominent and 

 renowned. The double-barreled language "distinctive 

 and famous" reflected the goal that protection should 

 be confined to marks "which are both distinctive, as 

 established by federal registration at a minimum, and 

 famous, as established by separate evidence." The 

 Commission inserted the term "distinctive" as 

 hyperbole to emphasize the requirement that the mark 

 be registered, for without inherent or acquired 

 distinctiveness, the designation would not have been a 

 mark that should have federally registered in thefirst 

 place. The Trademark Review Commission Report 

 reveals that the Commission saw distinctiveness and 

 fame as two sides of the same evidentiary coin which 

 requires widespread and extensive customer 

 recognition of the plaintiff 's mark. However, when in 

 the 1995 House amendment, the requirement of federal 

 registration was dropped from the Bill, Congress 

 neglected to also drop the mention of "distinctive" 

_________________________________________________________________ 

1. The Trademark Review Commission Report, the impetus behind the 

FTDA, stated: "The same type of evidence which is traditionally used to 

prove distinctiveness can be used to prove fame. Although the registrant 

is not required to prove distinctiveness apart from the import of 

registration, any additional evidence of distinctiveness will ordinarily 

be 

entitled to substantial weight." Report of the Trademark Review 

Commission, 77 Trademark Rep. 375, 459-460 (1987). 

 3 
 introducing the list of factors. Thus, the word 

 "distinctive" was left floating in the statute, unmoored 

 to either any statutory requirement or underlying 

 policy goal. 

Id. (footnotes omitted). 

Accordingly, we are not persuaded that a mark be subject 

to separate tests for fame and distinctiveness. In any event, 

we have already addressed in separate contexts the 

famousness and distinctiveness of "The Sporting News." See 

supra Part III.A (fame in niche market); supra Part III.B.I 

(distinctiveness acquired from secondary meaning). Having 

decided that Times Mirror has proved that its mark had 

gained secondary meaning and a high degree of 

distinctiveness in the market, there is no necessity for 

proving an additional test of distinctiveness. See Viacom, 

Inc. v. Ingram Enterprises, Inc., 141 F.3d 886, 890 n.6 (8th 

Cir. 1998). 

(4) Page 15, Section V, para. 2 ("Before discussing . . ."), 

delete the first three sentences of this paragraph without 

replacement; and on Page 18, Section V, one sentence after 

the citation to the District Court Opinion (D. Ct. Op.), delete 

the sentence "Although the district court applied. . . by 

blurring its distinctive qualities" without replacement. 

(5) Page 18, Section V, first full para. on the page ("Actual 

confusion has been shown . . .") should be deleted without 

replacement. 

(6) Page 18, Section V, second full para. on the page 

("Finally, Times Mirror did not . . .") should be deleted 

without replacement. 

 By the Court: 

 /s/ Ruggero J. Aldisert 

 Circuit Judge 

Dated: May 3, 2000 

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A True Copy: 

Teste: 

 Clerk of the United States Court of Appeals 

 for the Third Circuit 

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