SW Legal studies in Business

No Infringement of Trademark Despite Identical Names
Description Court dismissed a suit brought by an online magazine called SLY that claimed a print magazine also called SLY infringed on its mark. The court held that there was no trademark violation as the marks were weak, and the products were in distinct markets.
Topic Intellectual Property
Key Words Trademark; Infringement; Confusion
C A S E   S U M M A R Y
Facts Plaintiff SLY Magazine runs a website www.slymagazine.com which provides an online magazine called “Sly.” Its intent was to target “the quintessential woman—independent and charming.” It registered the trademark for “printed publications.” Sylvester Stallone has had the nickname “Sly” since about 1976. He worked with defendant Weider Publications to produce a print magazine to be called “SLY” that would focus on “fit men over 40, with an interest in physical fitness and an active lifestyle.” Sly Magazine (online), which had nothing to do with Stallone or his image, and did not have the same intent in content, sued Weider when it learned of the new print SLY magazine. Both products were being developed about the same time. SLY contended that Weider infringed on its trademark and caused confusion in the market, injuring its ability to attract advertisers and customers. Weider moved for summary judgment.

Motion granted. SLY Magazine, the online version, is the senior mark as it was registered and created before the print SLY. It is a weak mark since it was not established. The marks were not similar for purposes of customer confusion analysis. One was a print men’s magazine; the other an online women’s magazine focusing on fashion. The products were unrelated and not in the same market. Customer confusion would be necessary to find infringement, but there is no evidence of actual customer confusion between the marks. The mere possibility that there could be confusion is not enough to establish a case. Weider’s print magazine was not acting in bad faith when printed using the name SLY.

Citation SLY Magazine, LLC v. Weider Publications, LLC, ---F.Supp.2d--- (2008 WL 4577389, S.D.N.Y., 2008)

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