PRIME MEDIA, INCORPORATED, Plaintiff vs. PRIMEDIA, INCORPORATED fka K-III Communications Corporation, and PRIMEDIA INTERTEC fka Intertec Publishing Corporation, Defendants, 33 F. Supp. 2d 932

Summary

The holder of a trademarked name, a publisher, filed suit against the user of the name, another publisher, and sought a preliminary injunction for trademark infringement, false designations, and dilution of famous marks pursuant to the Lanham Act, specifically 15 U.S.C.S. §§ 1114(1), 1125(a), and 1125(c). The court held that the holder's claims involved "reverse confusion," which occurred when a junior user's advertising so swamped the senior user's reputation in the market that customers were likely to be confused and think the senior user's goods or services were those of the junior user. The court found that the holder's mark was duly registered, but the holder did not prove that the user's use of the name created a likelihood of confusion on the part of an appreciable number of ordinary purchasers. The trademark was weak because it was used by a number of other companies. Also, the user published well-known magazines, but the holder's market base consisted of businesses seeking ...