The opinion of the court was delivered by: Ackerman, Senior District Judge
This matter comes before the Court on Plaintiff Vista India's ("Vista") motion (Docket No. 3) for a preliminary injunction to enjoin Defendant Raaga, LLC ("Raaga") from utilizing the RAAGA mark, particularly in connection with Defendant's website raaga.com. On July 12, 2007, this Court held a hearing on the instant motion and reserved decision. For the following reasons, Plaintiff's motion is DENIED.
Plaintiff Vista is the owner of "Raaga Entertainment Superstores," which is purportedly the "largest retailer of Indian and other South Asian music within the United States."*fn1 (Compl. at ¶ 10.) Vista is also an "authorized distributor for Sony Music India, Tips, RPG, and Yashraj, major Indian music distributors." (Id. at ¶ 11.) The Complaint states that, "[a]t its height" there were "six locations throughout the United States--New Jersey, New York, Pennsylvania, Missouri and California."*fn2 (Id. at ¶ 15.)
Defendant Raaga owns and operates the Internet site "raaga.com" (hereinafter the "website"), through which it is engaged in the business of providing Indian music via downloads and "streaming" technology.*fn3 Raaga has been operating the website--accessed by customers and subscribers in the United States and worldwide--since 1998.*fn4 Raaga is licensed to stream music by "Broadcast Music, Inc., the South India Music Companies Association (with 40 plus member labels), Vel Records, Aditya Music, TriStar Music, and others."*fn5 (Raaga Br. at 3.) Raaga's founder, Senthil Venkataramani, asserts that he first became aware of Vista's stores "in or around 2000, while living in California. At that time, Mr. Venkataramani had been using the RAAGA mark for approximately 3 years or more." (Id. at 4.) At the hearing, however, he testified that the first time he became aware of a Vista store was in 2002. (Hearing Tr. 134:10-17.)
On January 11, 2005, Raaga filed two trademark applications with the United States Patent & Trademark Office ("USPTO"), one for the word mark RAAGA and one for the word mark RAAGA with stylized letters. Both applications sought protection of the mark in International Class 38, for "streaming of audio, music material on the Internet" and in International Class 41, for "entertainment services, namely providing prerecorded music, information in the field of music, videos and movies and commentary and articles about music, video, and movies all on-line via a global computer network."*fn6 The examining attorney at the USPTO has refused registration of the RAAGA mark on the grounds that the mark is "'merely descriptive' of the music-related services." (Raaga Br. at 5 (citing Venkataramani Decl. at ¶ 12, Exs. C, H).)
On July 14, 2006, more than 18 months after Raaga filed its trademark applications, Vista filed an application with the USPTO to register the RAAGA mark under International Class 41 for "entertainment in the nature of visual and audio performances, and musical, variety, news, and comedy shows, entertainment services namely providing pre-recorded music and movies for retail." (Venkataramani Decl., ¶ 16, Ex. L.) Vista's application has been suspended pending the applications filed by Raaga. (Id.) In November and December 2005, Vista contacted Raaga to discuss the possibility of Vista acquiring Raaga, with Vista allegedly offering $100,000, which Raaga refused. As Suri Gopalan, the owner and President of Vista, testified at the hearing, "we needed to go on the internet. The only way [Vista's] stores could exist was on the internet. People were downloading or stream[ing] on the internet. So selling CDs was becoming harder." (Hearing Tr. 69:24 to 70:2.) After these discussions in late 2005, Raaga had no communication with Vista until the commencement of this action. However, Raaga asserts that Vista has "threatened litigation against several of the entities with which Raaga has licenses . . . and provided them copies of the complaint in this case." (Raaga Br. at 7.) Notably, Vista does not own any copyrights over the works on Raaga's website. (See Hearing Tr. 81:7-12.)*fn7 Nevertheless, Raaga declares that Vista's threats have apparently had some effect because two companies "with whom Raaga has been negotiating for a license, have indicated that they will not issue a license to Raaga as a result of the statements and threats from Vista." (Id.)
On March 16, 2007, Vista filed a five-count Complaint alleging common-law trademark infringement and unfair competition, as well as federal unfair competition against Raaga.*fn8 On April 12, 2007, Vista filed a motion for a preliminary injunction seeking to enjoin Raaga from using the "Raaga" mark, particularly in connection with Raaga's Internet site "raaga.com." On April 24, 2007, this Court issued an Order to Show Cause directing Raaga to respond to Vista's motion for a preliminary injunction and scheduling a hearing on the matter for May 23, 2007. That hearing was postponed until July 12, 2007. On May 10, 2007, Raaga filed its Answer along with five counterclaims.*fn9
Four factors must be satisfied for a preliminary injunction to issue:
 the likelihood that the applicant will prevail on the merits at final hearing;  the extent to which the plaintiffs are being irreparably harmed by the conduct complained of;  the extent to which the defendants will suffer irreparable harm if the preliminary injunction is issued;  and the public interest.
Opticians Assoc. of Am. v. Indep. Opticians of Am., 920 F.2d 187, 191-92 (3d Cir. 1990) (citation omitted). "All four factors should favor preliminary relief before the injunction will issue." S & R Corp. v. Jiffy Lube Int'l., Inc., 968 F.2d 371, 374 (3d Cir. 1992). It has often been stated that a court considering a motion for a preliminary injunction must adhere faithfully to the aphorism that "to doubt is to deny." Madison Square Garden Corp. v. Braddock, 90 F.2d 924, 927 (3rd Cir. 1937); see also Campbell v. City of New Kensington, No. 05-0467, 2006 WL 3308362, at *1 (W.D. Pa. Oct 16, 2006); Bernstein v. Goldsmith, No. 05-4702, 2006 WL 1644849, at *4 (D.N.J. Jun 05, 2006).
1. Vista Does Not Have a Reasonable Probability of Success on the Merits for Its Lanham Act and Common Law Trademark Infringement and Unfair Competition Claims Because the RAAGA Mark Is Not Valid or Legally Protectable
"Both the common law and Congress have provided protection to the holders of recognized trademarks to prevent others from appropriating or copying them and taking advantage of the owner's good will for their own benefit." Coca-Cola Co. v. Purdy, 382 F.3d 774, 777 (8th Cir. 2004). "Congress enacted the Lanham Act over fifty years ago to protect the value of trademarks by encouraging their registration . . . and to provide a federal cause of action to prevent their misappropriation." Id. A primary purpose of the Lanham Act "was to ensure that 'where the owner of a trade-mark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats.'" Id. at 777-78 (internal citations omitted).
The Lanham Act provides a cause of action for trademark infringement, 15 U.S.C. § 1114, and unfair competition, 15 U.S.C. § 1125.*fn10 The analysis for both causes of action is the same, Freedom Card, Inc. v. JPMorgan Chase & Co., 432 F.3d 463, 470 (3d Cir. 2005), and requires the plaintiff to prove that (1) the marks are valid and legally protectable; (2) the marks are owned by the plaintiff; and (3) the defendant's use of the marks to identify goods or services is likely to create confusion concerning the origin of the goods or services. Opticians, 920 F.2d at 192; see also Freedom Card, 432 F.3d at 470.
Importantly, the analysis for New Jersey statutory and common law trademark claims is the same as that under the Lanham Act. See J & J Snack Foods, Corp. v. Earthgrains Co., 220 F. Supp. 2d 358, 374 (D.N.J. 2002) ("[T]he elements for a claim for trademark infringement under the Lanham Act are the same as the elements for a claim of unfair competition under the Lanham Act and for claims of trademark infringement and unfair competition under New Jersey statutory and common law"); Harlem Wizards Ent. Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084, 1091 (D.N.J. 1997) ("N.J.S.A. 56:4-1 is the statutory equivalent of Section 43(a)(1) of the Lanham Act and the analysis for trademark infringement under New Jersey common law is the same as under Section 43(a)(1)"). Therefore, this Court will analyze Vista's claims through caselaw that usually refers to the Lanham Act, but in so doing this Court's conclusions will apply to both the federal and state claims.
The terms "trademark" and "service mark" "include any word, name, symbol, or device, or any combination thereof" used by a person "to identify and distinguish" the marks from the goods or services of others. See 15 U.S.C. § 1127 (emphasis added). "The general rule regarding distinctiveness is clear: An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992) (citation omitted). In other words, "[i]f the mark at issue is federally registered and has become incontestible, then validity, legal protectability, and ownership are proved." Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 438 (3d Cir. 2000). Otherwise, "validity depends on proof of secondary meaning, unless the unregistered or contestable mark is inherently distinctive." Id. The RAAGA mark is not federally registered and therefore not inherently distinctive on that basis.
"Marks are often classified in categories of generally increasing distinctiveness; following the classic formulation set out by Judge Friendly, they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful."*fn11 Two Pesos, Inc., 505 U.S. at 768 (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976)). "A mark is inherently distinctive if it may be fairly characterized as arbitrary, fanciful, or suggestive." Commerce, 214 F.3d at 438 n.5 (emphases added). By contrast, a generic mark receives no protection whatsoever. A.J. Canfield Co. v. Honickman, 808 F.2d 291, 297 (3d Cir. 1986) ("[I]f we hold a designation generic, it is never protectable because even complete 'success . . . in securing public identification . . . cannot deprive competing manufacturers of the product of the right to call an article by its name.'") (citation omitted). If the mark is merely descriptive, then protection may be afforded if the mark acquires secondary meaning. Secondary meaning "is established through extensive advertising which creates in the minds of consumers an association between the mark and the provider of the services advertised under the mark." Commerce, 214 F.3d at 438. "A plaintiff must establish secondary meaning in a mark at the time and place that the defendant began use of the mark." Id. (emphases added).
Vista asserts that its RAAGA mark is "suggestive" such that it warrants the conclusion of being "inherently distinctive" and therefore valid and legally protectable. Raaga argues that the term is "merely descriptive." Thus, it would appear that the first question is whether the RAAGA mark is suggestive or descriptive. If the former, then validity and legal protectability are established. If the latter, then the question is whether the mark has acquired secondary meaning. However, Vista and Raaga both have a vested interest in not having the mark declared "generic" because such marks are not protectable and therefore neither party would have the right to exclude others from its usage. Considering Raaga's application to the USPTO for registration of the trademark and its counterclaims for trademark infringement and unfair competition, it is obvious that Raaga does not want this Court to determine that the mark is simply generic, even though such a declaration would clearly defeat Vista's preliminary injunction motion. Nevertheless, there is a reasonable basis for concluding that the mark is "generic."
a) Genericness - Foreign Words
"Underlying the genericness doctrine is the principle that some terms so directly signify the nature of the product that interests of competition demand that other producers be able to use them even if terms have or might become identified with a source and so acquire 'de facto' secondary meaning." A.J. Canfield Co., 808 F.2d at 304. "[T]o establish a trade name in the term . . . the plaintiff must show that the primary significance of the term in the minds of the consuming public is not the product but the producer." Kellogg Co. v. Nat'l Biscuit Co., 305 U.S. 111, 118 (1938); see also A.J. Canfield Co., 808 F.2d at 299. "[T]he primary significance test is generally satisfied if a term signifies a product that emanates from a single source, i.e., a product brand, but it is not satisfied if the product that emanates from a single source is not only a product brand but is also a product genus." A.J. Canfield Co., 808 F.2d at 301. "Marks that constitute a common descriptive name are referred to as generic. A generic term is one that refers to the genus of which the particular product is a species." Park 'N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194 (1985); see also A.J. Canfield Co., 808 F.2d at 298. "Courts refuse to protect a generic term because competitors need it more to describe their goods than the claimed markholder needs it to distinguish its goods from others." A.J. Canfield Co., 808 F.2d at 304.
"Only if a term's meaning to the relevant consuming public is discovered can regulation of that term properly influence purchasing decisions and comport with relevant precedent." Berner Intern. Corp. v. Mars Sales Co., 987 F.2d 975, 982 (3d Cir. 1993) (emphasis added); see also In re Merrill Lynch, 828 F.2d 1567, 1569-70 (Fed. Cir. 1987) ("It seems elementary that one must find out how people in the trade and the purchasers use the terms with respect to the involved goods in order to determine whether or not they are descriptive.").
"Because of the diversity of the population of the United States, coupled with temporary visitors, all of whom are part of the United States marketplace, commerce in the United States utilizes innumerable foreign languages." Otokoyama Co. Ltd. v. Wine of Japan Import, Inc., 175 F.3d 266, 270 (2d Cir. 1999). As a result, "[n]o merchant may obtain the exclusive right over a trademark designation if that exclusivity would prevent competitors from designating a product as what it is in the foreign language their customers know best." Id. at 271. Therefore, under this doctrine of foreign equivalents, generic foreign words are ineligible for protection. Id. Furthermore, "a foreign word is ordinarily translated into English" to determine whether that word is generic, descriptive, or suggestive. See Attrezzi, LLC v. Maytag Corp., 436 F.3d 32, 38 (1st Cir. 2006).
In the instant matter, Vista asserts that the term "raaga" "is the Hindi word for 'rhythmic patterns' and signifies certain melodic patterns in Hindi music."*fn12 (Pl.'s Br. at 6.) However, it appears that the word may have a broader, although not entirely different, meaning. For example, one source indicates that it means "hymn" or "incantation." http://www.wordanywhere.com. By contrast, a musical website teaches that the word literally "means color, mood or feeling. Raaga is so called because it creates a particular mood in the listeners. Raaga is a central concept in Indian music. A Raaga has many aspects to it. Only when all the aspects or characteristics of a Raaga are adhered to does the music sound like a Raaga." http://www.musicalnirvana.com/introduction/raaga_basics.html. Yet another source teaches the following:
The rag is the most important concept that any student of Indian music should understand. The Hindi/Urdu word 'rag' is derived from the Sanskrit 'raga' which means 'colour, or passion.' It is linked to the Sanskrit word 'ranj' which means 'to colour.' Therefore rag may be thought of as an acoustic method of colouring the mind of the listener with an emotion. This is fine as a general concept but what is it musically? It is not a tune, melody, scale, mode, or any concept for which an English word exists. It is instead a combination of different characteristics. It is these characteristics which define the rag.
http://www.chandrakantha.com/articles/indian_music/raga.html. Finally, an article in the February 5, 2000 edition of Billboard magazine, attached as an exhibit to the Complaint, focused on Vista's business and explains that "raaga" is a name that "derives from the Sanskrit word representing all kinds of Indian classical music." (Compl. Ex. B.)
In reviewing the websites of both parties--raaga.com and myraaga.com--there is nothing to indicate that "raaga" is a particular category, or sub-classification, of Indian music. That is, a visitor to both sites can search by category of Indian music, e.g., Hindustani, Carnatic, Classical, Fusion/New Age, or by geographical region of South Asian music, e.g., Tamil, Telugu, Malayalam. In other words, it would appear that "raaga" is understood by the relevant consuming public as a simple reference to Indian and/or South Asian music generally.
In Otokoyama, the Second Circuit reversed the district court's grant of a preliminary injunction against an importer of Japanese sake.*fn13 175 F.3d at 272. At issue in that case was the Japanese word "otokoyama." In Japanese, the term is comprised of the pictograms for "man" and "mountain," but the parties agreed that since at least the 17th century the term "otokoyama" has been used to refer to sake. Id. at 268. The Court noted that "between ten and twenty brewers" in Japan designate their respective sake as "otokoyama" and they often add a geographical modifier to distinguish their brand. Id. The district court found a likelihood of success on the merits and granted the preliminary injunction without allowing the defendant to introduce evidence of the meaning of the word "otokoyama" in Japanese. The Second Circuit reversed on this basis, concluding that "[t]he meaning of otokoyama in Japanese . . . was therefore highly relevant to whether plaintiff may assert the exclusive right to use that word as a mark applied to sake." Id. at 272. The Otokoyama court suggested that if "otokoyama" was commonly understood in Japanese to refer to sake, then the defendant had a strong argument that protection was not available because the mark was generic. Id.
Similarly, the Fifth Circuit, in Enrique Bernat F., S.A. v. Guadalajara, Inc., reversed the district court's grant of a preliminary injunction regarding competitive distributors of Spanish lollipops. 210 F.3d 439, 445 (5th Cir. 2000). The Enrique court addressed the proper interpretation of the word "chupa." While observing no abuse of discretion in the district court's finding that the word meant "to lick" or "to suck," the court of appeals concluded that "[t]he evidence in the record suggests that 'chupa' does generically designate 'lollipops.'" Id. at 444. Undergirding this conclusion was the fact that "other lollipops in Mexico use the term 'chupa' in their marks." Id. As a result, the Fifth Circuit held that there was no likelihood of success on the merits of plaintiff's trademark claim. Id. at 445.
Analogously, if "raaga" literally means color or passion or rhythmic patterns, but it is commonly understood to refer to Indian or South Asian music generally, then it follows that the RAAGA mark is not protectable because it is a generic term in Hindi and to the relevant public that purchases Indian and South Asian music. This is a crucial issue that the Court endeavored to explore at the hearing. The Court notes again that both parties have an incentive to avoid the "generic" issue, lest the Court rule that the mark is generic and then both parties have no protectable interest. Perhaps as a result of their somewhat parallel interests, the parties did not specifically address the issue of genericness in their briefing or at the hearing. Nevertheless, certain facts revealed at the hearing did provide some illumination on the issue.
For example, on cross-examination of Vista's owner Mr. Gopalan, testimony revealed the fact that there is another company in New York by the name of Raga Records, which has been in the business of producing Indian music since 1996.*fn14 (Hearing Tr. 89:4-6) Indeed, Vista even does business with Raga Records, but has not taken any action against that company's use of the arguably similar mark. (Id. at 89:17-18, 90:2-4.) At the hearing, Mr. Gopalan explained that Vista has not sued Raga Records because "[i]t is a bona fide company." (Id. at 90:7.) In that regard, it would appear that Vista would not be suing Raaga but for the fact that Vista believes Raaga's sale of music is done without proper copyrights. In other words, Vista ostensibly would drop its suit against Raaga if only Raaga was a "bona fide company" in Vista's eyes. But, as noted previously, this is a trademark ...