Similarly-named newspaper does not violate competitor’s trademark
MINNESOTA–In early June, a unanimous three-judge panel of the U.S. Court of Appeals in St. Paul (8th Cir.) dismissed a trademark infringement suit filed by the Duluth News-Tribune against rival Saturday Daily News & Tribune. The appeals court agreed with a lower federal court that the News-Tribune had failed to show that the publication of a similarly-named newspaper violated the Lanham Trademark Act.
The Mesabi Daily News and the Hibbing Daily Tribune, local Iron Range, Minn. papers, launched the joint Saturday Daily News & Tribune in 1994 to compete with the Iron Range edition of the News-Tribune, which had been enlarged two years earlier. The News-Tribune filed suit under the Lanham Act, but the federal District Court in St. Paul dismissed the case in June 1995.
To prevail, the appeals court said, the News-Tribune would have to show that an appreciable number of ordinary buyers were confused, deceived, or mistaken about the association between or source of the two papers. Among the relevant factors are the strength of the trademark, the similarity of the papers, evidence of actual confusion, and the care to be expected of customers.
The mark “Duluth News-Tribune,” the court decided, is not a highly-valuable “fanciful” mark nor an unsecurable “generic” term. As a “descriptive” mark, the phrase merits trademark protection, but the plaintiffs cannot claim an exclusive privilege to use as a shorthand the commonly-employed words “News” and “Tribune,” according to the court. The court further noted that the designs of the papers are distinguishable.
The News-Tribune failed to produce sufficient evidence of confusion, according to the court. Occasional misdirected mail and phone calls are unreliable evidence, it ruled, and readers’ questions about a possible connection between the two papers demonstrate that the public has not been deceived but is trying to make distinctions. (Duluth News-Tribune v. Mesabi Publishing Co.; Defendant’s Counsel: R. Thomas Torgerson, Duluth)