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. e du/thir dc ir c uit_2000/88Filed 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 . . .") s hould be deleted in its entirety and replaced with the follo wing 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 en titled The Sporting News. The mark is now owned by its publisher, Times Mirror Magazines, Inc. This appealrequires us to decide if Times Mirror was entitled to a

preliminary injunction enjoining a publisher from u sing the name Las Vegas Sporting News.

Applying the relatively new Federal Trademark Dilut ion Act of 1995, 15 U.S.C. S 1125(c) ("FTDA" or "Act"), the district court issued the injunction against Las Ve gas 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 cla im against LVSN, because the mark was "famous" in its niche ma rket and LVSN's use of the title on its publication dilu ted 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 emp hasizes 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. 197 8). We have already demonstrated in Part III.B.1, supra , that "The Sporting News" has acquired secondary meaning and"h as 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 th e 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 "distincti veness," 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 "distinctivene ss" is

2regarded 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 designat ion has to be "distinctive" either inherently or throug h 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 199 6 federal Act, said that the dual mention of both "dis tinctive and
famous" in the introduction to the list of f actors was inserted to emphasize the policy goal that t o be protected, a mark had to be truly prominent and renowned. The double-barreled language "dist inctive and famous" reflected the goal that protecti on should
be confined to marks "which are both distinc tive, as established by federal registration at a min imum, and famous, as established by separate evidence. " The
Commission inserted the term "distinctive" a s hyperbole to emphasize the requirement that the mark be registered, for without inherent or acqui red distinctiveness, the designation would not h ave been a mark that should have federally registered i n thefirst place. The Trademark Review Commission Repor t
reveals that the Commission saw distinctiven ess and fame as two sides of the same evidentiary co in which requires widespread and extensive customer recognition of the plaintiff 's mark. Howeve r, when in the 1995 House amendment, the requirement of federal registration was dropped from the Bill, Cong ress neglected to also drop the mention of "disti nctive"

___________________________________________________ ______________

1. The Trademark Review Commission Report, the impe tus behind the FTDA, stated: "The same type of evidence which is t raditionally used to prove distinctiveness can be used to prove fame. Al though the registrant is not required to prove distinctiveness apart from the import of registration, any additional evidence of distinctiv eness will ordinarily

be entitled to substantial weight." Report of the Trad emark Review Commission, 77 Trademark Rep. 375, 459-460 (1987).

3introducing the list of factors. Thus, the w ord

"distinctive" was left floating in the statu te, unmoored to either any statutory requirement or under lying policy goal.

Id. (footnotes omitted).

Accordingly, we are not persuaded that a mark be su bject to separate tests for fame and distinctiveness. In any event, we have already addressed in separate contexts the famousness and distinctiveness of "The Sporting New s." 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 necessit y 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 sentenc e 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 replace ment.

(5) Page 18, Section V, first full para. on the pag e ("Actual confusion has been shown . . .") should be deleted without replacement.

(6) Page 18, Section V, second full para. on the pa ge ("Finally, Times Mirror did not . . .") should be d eleted without replacement.

By the Court:

/s/ Ruggero J. Aldisert

Circuit Judge

Dated: May 3, 2000

4A True Copy:

Teste:

Clerk of the United States Court of Appeals
for the Third Circuit

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