## Facts

- Centaur Communications, Ltd., a British publisher, produced a weekly marketing magazine titled “Marketing Week,” distributed in the United States for about ten years with approximately 110 U.S. subscribers.
- A/S/M Communications, Inc., a U.S. publisher of the advertising trade journal ADWEEK, launched a weekly publication titled “ADWEEK’s Marketing Week.”
- Both publications were weekly and covered marketing-related news, targeted to marketing and advertising professionals.
- Centaur alleged that A/S/M’s use of “Marketing Week” in its title infringed Centaur’s rights and would confuse readers as to source, sponsorship, or affiliation.
- A/S/M argued “Marketing Week” was generic or merely descriptive without secondary meaning in the U.S. market and denied a likelihood of confusion.
- The district court found the mark protectable and infringed, and issued an injunction; A/S/M appealed.

## Issues

1. Whether “Marketing Week” was a protectable mark for a periodical in the United States, including whether it had acquired secondary meaning in the relevant market.
2. Whether “ADWEEK’s Marketing Week” was likely to cause consumer confusion as to source, sponsorship, or affiliation.
3. Whether injunctive relief was proper based on the infringement finding.

## Decision

- The Second Circuit affirmed the judgment for Centaur.
- The court held that “Marketing Week,” though descriptive, had acquired secondary meaning within the relevant professional audience and was protectable under federal and New York law.
- The court held that A/S/M’s use of “ADWEEK’s Marketing Week” created a likelihood of confusion and therefore infringed and constituted unfair competition.
- The court upheld injunctive relief barring A/S/M’s use of the infringing title.

## Legal Principles

- A descriptive title of a periodical can function as a protectable trademark upon proof of secondary meaning in the relevant consuming public.
- Secondary meaning may be established in a specialized or niche professional market even with modest circulation, if the designation identifies source within that community.
- Likelihood of confusion is determined by a multi-factor analysis considering, among other things, similarity of the marks, proximity of the products, strength of the mark in the relevant market, evidence of actual confusion, defendant’s intent, and buyer sophistication.
- In comparing composite titles, the shared dominant wording may control the similarity analysis; adding a house mark or modifier may not dispel confusion where the common element is source-identifying and the goods are closely related.
- Injunctive relief is an appropriate remedy where trademark infringement is shown and continued use would likely cause ongoing public confusion and harm to goodwill.

## Conclusion

The Second Circuit held that “Marketing Week” had acquired secondary meaning among marketing and advertising professionals in the United States and that “ADWEEK’s Marketing Week” was sufficiently similar and competitively proximate to create a likelihood of confusion, warranting an injunction against A/S/M’s use of the challenged title.


Centaur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217 (2d Cir. 1987)