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ADVANCE MAGAZINE PUBLISHERS INC. v. VOGUE INTER.

December 12, 2000

ADVANCE MAGAZINE PUBLISHERS INC., D/B/A THE CONDÉ NAST PUBLICATIONS INC., PLAINTIFF,
V.
VOGUE INTERNATIONAL AND FRED J. ZITO, DEFENDANTS.



The opinion of the court was delivered by: Hochberg, District Judge.

OPINION

This matter comes before the Court on a motion filed by plaintiff, Advance Magazine Publishers Inc. d/b/a The Condé Nast Publications Inc. ("AMP") for a preliminary injunction restraining and enjoining defendants Vogue International and Fred J. Zito from maintaining, using or transferring the domain names teenvogue.com, teenvogue.net and vogue-international.com, and the company name Vogue International.

AMP is the owner/ publisher of the magazine Vogue and the recently released magazine Teen Vogue. Defendants use the domain names teenvogue.com, teenvogue.net and vogue-international.com, and the company name Vogue International in connection with a web-based retail business that offers clothing, cosmetics and fashion accessories for sale. AMP alleges that this use infringes and dilutes AMP's trademarks in violation of the Lanham Act and unfairly competes with AMP's trademarks in violation of the Lanham Act, New Jersey law and the common law. AMP also argues that defendants' registration and maintenance of the domain names teenvogue.com, teenvogue.net and vogue-international.com constitutes cyberpiracy in violation of the federal Anticybersquatting Consumer Protection Act (the "ACPA").

For the reasons that follow, plaintiffs request for a preliminary injunction is hereby granted and defendants are enjoined from maintaining, transferring or using the domain names teenvogue.com, teenvogue.net and vogue-international.com, and the company name Vogue International.

I. FACTUAL AND PROCEDURAL HISTORY*fn1

AMP is the owner of numerous trademark registrations for the Vogue trademark, both in the United States and throughout the world. Some of AMP's United States Vogue trademark registrations include Registration Nos. 1,336,659; 1,666,656; 69,530; 103,770; 504,006; and 1,659,761. These registrations date back as far as 1908, and each is "incontestible" under 15 U.S.C. § 1065. In addition, AMP is the owner of numerous United States trademarks incorporating the term "Vogue," including "As Seen in Vogue", "Vogue Sposa", "Vogue Gioielle", and "Vogue Bambini". The trademarks referred to in this paragraph are hereinafter referred to collectively as the "Vogue Trademarks".

AMP registered the domain name vogue.com with the registrar Network Solutions, Inc. in 1994. Since that time, AMP and its licensees and affiliates have developed and maintained Internet sites where consumers throughout the world can access information about U.S. and international editions of Vogue. The vogue.com website provides coverage of fashion collections, celebrities and celebrity events, offers subscriptions to Vogue magazine, and provides links enabling visitors to the site to purchase clothing and fashion accessories on-line. In addition, advertising by third parties on the website has been considerable, particularly among cosmetics companies.

The Managing Editor of Vogue magazine testified that AMP decided in 1999 to launch a version of Vogue magazine for teenagers. A "dummy" magazine was created in the summer of 1999 and circulated to advertising representatives beginning in approximately September, 1999 to evaluate the level of interest in the magazine. AMP filed an intent-to-use application for registration of the trademark "Teen Vogue" with the U.S. Patent and Trademark Office on May 1, 2000. Unsolicited newspaper reports of AMP's intention to launch a version of Vogue magazine for teenagers were published in the U.S. in early 2000. In September, 2000, AMP distributed approximately 1.4 million copies of the first issue of Teen Vogue via mail and to newsstands. Since its introduction, there has been widespread media coverage of Teen Vogue and the events surrounding its creation.

Plaintiff filed the instant action in late September. After being served with the Verified Complaint, Defendants filed an Answer with the Court on or about October 17, 2000. Attached to Defendants' Answer are three consumer letters sent via e-mail from three different readers of Teen Vogue commenting on the new magazine. Although these letters appear to be intended for Teen Vogue magazine, they were sent to the e-mail addresses provided on defendants' web site (webmaster@vogue-international.com and support@vogue-international.com).*fn3

II. STANDARD OF REVIEW: PRELIMINARY INJUNCTION

[1] An injunction is an extraordinary remedy which should only be granted in limited circumstances. AT&T v. Winback & Conserve Program, Inc., 42 F.3d 1421, 1426-27 (3d Cir. 1994). However, a preliminary injunction is appropriate where the moving party produces evidence to establish the following four factors: (1) the likelihood plaintiff will prevail on the merits; (2) the extent to which plaintiff is being irreparably harmed by the conduct at issue; (3) the extent to which the non-moving party will suffer harm if the injunction is granted and whether the balance of equities favors the plaintiff; and (4) the public interest. Id. at 1427; Opticians Ass'n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 191 (3d Cir. 1990).*fn4

III. DISCUSSION

A. Likelihood of Success on the Merits

AMP alleges that defendants use of the domain names teenvogue.com, teenvogue.net and vogue-international.com, and the company name Vogue International constitutes trademark infringement, trademark dilution and unfair competition under the Lanham Act, 15 U.S.C. § 1114(1), § 1125(a), (b) and (c), a violation of the ACPA, 15 U.S.C. § 1125(d), and unfair competition under New Jersey statutory law, N.J.S.A. 56:4-1 and common law. This Court has determined that defendants' actions constitute trademark infringement and unfair competition under the Lanham Act and a violation of the ACPA; it is unnecessary to reach plaintiff's other claims at this time.

1. The Lanham Act

"The law of trademark protects trademark owners in the exclusive use of their marks when use by another would be likely to cause confusion." Interpace Corp. v. Lapp, Inc. 721 F.2d 460, 462 (3d Cir. 1983); see also Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466 (3d Cir. 1994); Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir. 1978). Trademark infringement claims under the Lanham Act, 15 U.S.C. § 1114(1)*fn5 and federal unfair competition claims under the Lanham Act, 15 U.S.C. § 1125(a)*fn6 are measured by identical standards. A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198, —, 2000 WL 1763334, *11 (3d Cir. 2000). To prevail on a claim under either 15 U.S.C. § 1114(1) or § 1125(a), a plaintiff must establish that: "(1) the mark is valid and legally protectable; (2) the mark is owned by the plaintiff; and (3) the defendant's use of the mark to identify goods or services is likely to create confusion concerning the origin of the goods or services." Fisons Horticulture, 30 F.3d at 472 (citing Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 291 (3d Cir. 1991)); Express Services, Inc. v. Careers Express Staffing Services, 176 F.3d 183, 185 (3d Cir. 1999); A&H Sportswear, 237 F.3d at ___, 2000 WL 1763334 at *11.

The first two requirements, validity/ legal protectability and ownership, are automatically proven when a mark is federally registered and has become "incontestible" under the Lanham Act, 15 U.S.C. § 1058 and 1065. Fisons Horticulture, 30 F.3d at 472 (citations omitted). The Vogue Trademarks are federally registered,*fn7 owned by AMP and are "incontestible" under 15 U.S.C. § 1065. (See Cmpl., Ex. 2). Although certain defenses exist to the validity of an incontestible mark, none have been raised here. In addition, this Court finds that the Vogue Trademarks are widely recognized by the purchasing public and are "inherently distinctive" and therefore valid and legally protectable. See Fisons Horticulture, 30 F.3d at 472 (citing Ford Motor, 930 F.2d. at 291).*fn8

[2] The use of a precisely similar name is not required for a finding of trademark infringement under Sections 32 and 43(a) of the Lanham Act. Fisons Horticulture, 30 F.3d at 477; Jews for Jesus v. Brodsky, 993 F. Supp. 282, 296 (D.N.J. 1998). A name which is "confusingly similar" or a "colorable imitation" of the trademark is sufficient. "Marks are confusingly similar if ordinary consumers are likely to conclude that they share a `common source, affiliation, connection or sponsorship.'" Jews for Jesus, 993 F. Supp. at 296 (citing Fisons Horticulture, 30 F.3d at 477). In this instance, since the names used by defendants actually incorporate the term "Vogue" which is a registered trademark of AMP, plaintiff has demonstrated a likelihood of success on the merits that such terms are both colorable imitations of, and confusingly similar to, the Vogue Trademarks.

[3, 4] The third requirement of trademark infringement under Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. § 1114(1), 1125(a), is that the plaintiff demonstrate a "likelihood of confusion" by consumers. The Third Circuit in Scott Paper Co., 589 F.2d at 1229, set forth ten factors to be considered in evaluating the likelihood of confusion by consumers:

(1) the degree of similarity between the owner's mark and the allegedly infringing mark;

(2) the strength of the owner's mark;

(3) the price of the goods and other factors indicative of the care and attention expected of ...

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