                                                                                                                           Opinions of the United
2000 Decisions                                                                                                             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Precedential or Non-Precedential: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


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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

                               2
       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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