Andrew M. Gold on Reverse Confusion, "Weak" Arbitrary Marks, and the Difference Between Actual Confusion and Likelihood of Confusion
Why would a start up on-line magazine focused on women’s shoes choose as a trademark the famous nickname of a male "tough guy" film star? Having made such an odd choice, why would the start-up seek to enjoin a company from using the film star's name (with his permission) in connection with a print magazine conceived to appeal to "fit men over 40, with an interest in physical fitness and an active lifestyle?" Discussing Sly Magazine, LLC v. Weider Publications LLC, Andrew M. Gold writes:
In 2003 Plaintiff purchased the domain name www.slymagazine.com. In early 2004 it began to make announcements on the internet about its on line magazine, to be known as “Sly.” The website was launched in November, 2004, and invitations for its launch party featured a “Designer Shoe Give Away.” The demographic for Plaintiff’s publication was single women thirty-five and under with a college degree. Among other things, the publication’s profile noted that it would cover “High-end shoe designs and accessories” and “Shoe shopping with celebrities and lifestyle trends.”
Sylvester Stallone has been known as “Sly” since approximately 1976, when the first Rocky movie was released. Stallone, together with defendants, developed a test magazine to appeal to his demographic: “fit men over 40, with an interest in physical fitness and an active lifestyle.” Stallone granted the Defendants a license to use his name, likeness and identity. Defendants began promoting their SLY Magazine in or about September, 2004. The first issue of SLY had an “on sale” date of February 2005. The final issue of SLY had an on sale date of December 2005, after which it ceased publication.
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As an initial matter, the Court had to determine whether Plaintiff was the senior user of the mark SLY with respect to the title of a magazine. While there was no question that Sylvester Stallone had used the nickname “Sly” since 1976, seven years before Plaintiff acquired the domain name www.slymagazine.com, Defendants acknowledged that Plaintiff used the name SLY in connection with its internet publication before Defendants used the name in connection with any publication. Since the Court determined that Plaintiff had a valid mark and was the senior user, its only remaining burden was to prove that Defendants’ use of its mark was likely to cause customer confusion. However, as the Court noted, Plaintiff must demonstrate “a probability of confusion, not a mere possibility.”