author: ASPEN, District Judge:

text:
    Jonah OXMAN, on Behalf of Himself and Numerous Others Who Are Similarly Situated, Plaintiff, v. WLS-TV, Defendant.
    No. 84 C 4699.
    United States District Court, N.D. Illinois, E.D.
    May 10, 1985.

      Daniel J. King, Jenner & Block, Chicago, 111., for plaintiff.
    Gilbert Feldman, Cornfield & Feldman, Chicago, 111., for defendant.
   MEMORANDUM OPINION AND ORDER

ASPEN, District Judge:

Plaintiff Jonah Oxman’s (“Oxman”) complaint alleges that defendant WLS-TV fired him from his employment at WLS-TV because of his age. Before the court now is Oxman’s motion for summary judgment on Count II of that complaint, brought under the Age Discrimination in Employment Act, 29 U.S.C. §§ 621, et seq. (1976) (“ADEA”), and WLS’s cross motion for summary judgment. For the reasonsd stated below, both motions are denied.

FACTS

Oxman, 61, worked for WLS-TV for about sixteen years. He joined WLS-TV as a newswriter on July 24, 1967, following thirteen years as a newswriter-producer at WBBM-TV and nine months at WMAQTV. After four months in the newswriter position,' Oxman became a management employee in the newsroom at WLS-TV. The duties of this position included supervision of the newsroom in the absence of the News Director and the supervision of the station’s four film crews. In 1968 with the hiring of William Fyffe as News Director, Oxman’s title was changed to Business Manager. His duties expanded to include budgeting, scheduling, purchasing, personnel, labor relations and legal affairs. For six months in 1978, Oxman held an Executive Producer position, but his job duties remained the same. During a twenty week strike in 1977, Oxman worked as a newswriter and Associate Producer, producing two shows daily.

The circumstances leading to Oxman’s termination occurred as follows. In 1981, WLS-TV created the “Northwest Bureau,” primarily for the purpose of covering news stories in the northwest suburbs. This was the only suburban Bureau WLS-TV had. Oxman was named as manager of the Bureau. The Bureau staff also included two camera crew members and a reporter. Ox-man’s position as Bureau Manager afforded him the opportunity to have more journalistic responsibilities than the administrative responsibilities he had in his former position. As Bureau Manager, Oxman worked with the assignment desk developing stories and assuring their coverage.

In mid-1983, rumors began to circulate that then General Manager Dennis Swanson (“Swanson”) and then News Director William Applegate (“Applegate”) wanted to close the Northwest Bureau as part of their plan to cut expenses and improve efficiency at WLS-TV. After Oxman heard these rumors he asked if they were true. Oxman was reassured that no decision to close the Bureau had been made, and that the station was happy with the quality of his job performance at the Bureau. In September, 1983, Kim Peterson, a Bureau reporter, was reassigned by Apple-gate to do morning news inserts on “Good Morning America”, a network broadcast. Peterson no longer reported to the Bureau, and her position as Bureau reporter was not filled. Because of Peterson’s reassignment, the Bureau started covering fewer stories. In late December, 1983, Swanson made the final decision to close the Bureau as of January 27,1984. The crew assigned to the Bureau began to work out of WLS-TV’s downtown offices from where they continued covering news stories in the Chicago area. At about the same time, certain personnel and news directors at WLS-TV began to discuss the possibility of offering Oxman an early retirement package. The package was essentially a year’s salary as an incentive for retiring. Oxman stated that he was not ready to retire and wanted to continue at WLS-TV in another capacity.

On January 5, 1984, Oxman learned that he was going to be fired. At a meeting on January 10, 1984 with Applegate, Oxman again stated his desire to continue working for WLS-TV. Applegate denied that there were any positions available for Oxman. Oxman says that Applegate told him that the news business had grown very complex in recent years and that if Oxman took a job as a producer that he knew that within a week they would discover that Oxman could not do the job. Applegate stated that there was a job freeze and that age was not a factor in Oxman’s termination. Ox-man was terminated on January 27, 1984, the day the Bureau closed.

LEGAL BACKGROUND

Both plaintiff and defendant have filed motions for summary judgment on the issue of whether WLS-TV violated the ADEA by discharging and failing to transfer Oxman to another position at the station. Summary judgment is generally inappropriate in employment discrimination cases because so much often depends on an employer’s credibility and his or her hidden or unconscious motives. See Selsor v. Callaghan, 609 F.Supp. 1003, 1006-1007 (N.D.Ill.1985) (Aspen, J.). Yet summary judgment has been affirmed in the less common cases where no evidence suggests that motive or intent is involved. Parker v. Fed’l. National Mtg. Assn., 741 F.2d 975, 979-81 (7th Cir.1984); Huhn v. Koehring Co., 718 F.2d 239, 243-45 (7th Cir.1983). As in any case, summary judgment will be granted only if “no genuine issue as to any material fact” exists. Fed.R.Civ.P. 56(c). The moving party bears the burden of proving that there is no genuine factual issue, Korf v. Ball State University, 726 F.2d 1222, 1226 (7th Cir.1984), and the Court must view the evidence, as well as the reasonable inferences drawn from the evidence, in the light most favorable to the party opposing the motion. Big O Tire Dealers, Inc. v. Big O Warehouse, 741 F.2d 160,163 (7th Cir.1984).

Section 623 of the ADEA makes it unlawful for an employer “to fail or refuse to hire or to discharge any individual ... because of such individual’s age.” 29 U.S.C. § 623(a). The plaintiff bears the ultimate burden of proving that he was discharged because of his age. LaMontagne v. American Convenience Products, Inc., 750 F.2d 1405,1409 (7th Cir.1984). To meet this burden the plaintiff must prove that age was a “determining factor” in the sense that he would not have been discharged “but for” his employer’s motive to discriminate against him on the basis of his age. LaMontagne, 750 F.2d at 1409. The plaintiff may use one of two methods of proof. The plaintiff can meet the burden directly by presenting direct or circumstantial evidence that age was a determining factor in the decision to discharge. Id. Alternatively, the plaintiff can prove his case indirectly by following the more common burden shifting approach set forth in McDonnell Douglas Corp. v. Green, 411 U.S. 792, 93 S.Ct. 1817, 36 L.Ed.2d 668 (1973). E.g., LaMontagne, 750 F.2d at 1409.

Under the usual McDonnell Douglas approach, the plaintiff is required to make out a prima facie case of discrimination by showing (1) that he was in the protected class, (2) that he was doing his job well enough to meet his employer’s legitimate expectations, (3) that he was discharged despite the adequacy of his job performance, and (4) that the employer sought a replacement for him. LaMontagne, 750 F.2d at 1409 (footnote omitted). If the plaintiff successfully meets this burden, he will have established a rebuttable presumption that he was discharged because of his age. However, the employer may rebut this presumption if he can articulate a lawful reason for the discharge. The defendant’s, burden is only one of production; the burden of persuasion remains with the plaintiff at all times. Id. If the defendant is successful in rebutting the presumption, the burden falls on the plaintiff to prove that the articulated reasons are merely pretextual, by showing either that the defendant was more likely motivated by a discriminatory reason, or that the defendant’s proffered explanation is unworthy of credence. Id.

In the present case Oxman has relied on the McDonnell Douglas indirect method of proof. It is undisputed that at the age of 61, Oxman was within the protected age group at the time of discharge, that he was performing his job to the satisfaction of WLS, that he was discharged despite the adequacy of his performance. The parties dispute, however, the existence and relevance of the fourth element, that is, whether WLS sought a replacement for Oxman.

This is not the typical termination case in which an older employee has been fired and replaced. Oxman was fired as part of á structural re-organization. WLS-TV correctly points out that Oxman cannot meet element number four as currently defined because his position no longer existed; thus, WLS-TV could not “replace” him. But WLS-TV concludes simply from this fact that Oxman thereby cannot prove his prima facie case. It asserts that we should deny his termination case and treat Oxman as a new applicant, for other positions which opened up when he was fired, applying the “applicant” version of the McDonnell Douglas formula. In contrast, Oxman reformulates the fourth element in a way which, in effect, collapses the two-step approach taken by WLS-TV. He retains the first three elements, and argues that he meets a fourth element which he defines as “at or near the time of termination WLS-TV had vacancies in positions that Oxman was qualified for.” He cites no cases prescribing his exact formulation. Both parties’ approaches are a bit confused, which is not surprising, since this case simply does not fit the usual McDonnell Douglas formula. To arrive at a sensible approach, we must review the origin and purposes of the McDonnell Douglas formula, and then tailor that formula to fit the unusual facts of this case.

The McDonnell Douglas indirect method of proof deals with the practical problem that many discrimination cases will yield no direct evidence of discrimination. The formula was created as a means of ruling out typical non-discriminatory reasons for hiring or firing, which thereby produces a common-sense inference of unlawful age discrimination, even where the plaintiff presents no evidence that age motivated the employer. See, e.g., LaMontagne, 750 F.2d at 1409-10. But as we recognized in our earlier opinion in this case, Oxman, 595 F.Supp. at 563, the formula is neither “rigid, mechanized or ritualistic.” Furnco Construction Corp. v. Waters, 438 U.S. 567, 577, 98 S.Ct. 2943, 2949, 57 L.Ed.2d 957 (1978). In creating the test, the Supreme Court wrote that the test will sometimes have to be changed to adapt to varying fact situations. McDonnell Douglas, 411 U.S. at 802 n. 13, 93 S.Ct. at 1824 n. 13; see Williams v. General Motors Corp., 656 F.2d 120, 129 n. 12 (5th Cir.1981) (modifying test in ADEA “reduction-in-force” case), cert, denied, 455 U.S. 943, 102 S.Ct. 1439, 71 L.Ed.2d 655 (1982).

It is clear that the usual test as stated in LaMontagne cannot be applied to a case like this, where the job position was eliminated. The fourth element is inapplicable in such a case because by definition it can never be met. We therefore reject WLS-TV’s wooden argument that Oxman cannot prove his prima facie case because he cannot prove the fourth element. WLS-TV’s approach creates an impossible hurdle for plaintiffs in job-elimination eases, an impossibility which could encourage devious employers to fabricate “job eliminations” in order to evade the fourth element of the usual approach.

This case is most akin to the so-called “reduction-in-force cases,” in which plaintiffs usually allege that employers discriminate on the basis of age in reducing or restructuring their work forces. These cases have approached the issue in two different ways. One line of cases, beginning with Williams v. General Motors Corp., 656 F.2d 120 (5th Cir.1981), cert, denied, 455 U.S. 943, 102 S.Ct. 1439, 71 L.Ed.2d 655 (1982), injected an element of intent into the McDonnell Douglas formula. Dealing with massive lay-offs at an auto plant, the Fifth Circuit recognized, as we do above, that the traditional approach is unworkable because the fired, older employee is never “replaced.” 656 F.2d at 128. But the Court reasoned that a mere refusal to place the employee in a different position is not enough by itself to create an inference of discrimination. Id. at 129; accord Matthews v. Allis Chalmers, — F.Supp. —, 35 F.E.P. Cases 1404, 1405 (N.D.Ill.1984) (Decker, J) (employer who fires qualified older employee as part of reduction-in-force “does nothing inherently suspicious”). The Court held that some evidence of intent was necessary. Besides requiring a plaintiff to prove that he was (1) in the protected age group, (2) fired or demoted, and (3) qualified to assume an available position at the time of discharge or demotion, the Court required that he produce

evidence, circumstantial or direct, from which a factfinder might reasonably conclude that the employer intended to discriminate in reaching the decision at issue. While the first [three] requirements have appeared with frequency in age discrimination cases, the [fourth] one is tailored to the reduction-in-force facts such as those before us and requires some amplification.

656 F.2d at 129 (footnote omitted). The Court “amplified” that this last requirement

simply insists that a plaintiff produce some evidence that an employer has not treated age neutrally, but has instead discriminated based upon it. Specifically, the evidence must lead the factfinder reasonably to conclude either (1) that defendant consciously refused to consider retaining or relocating a plaintiff because of his age, or (2) defendant regarded age as a negative factor in such consideration.

Id. at 129-30. Several other reduction-in-force cases have used or cited the Williams approach, most doing so without much elaboration. See E.E.O.C. v. Western Elec. Co., Inc., 713 F.2d 1011, 1014-15 (4th Cir.1983); Allison v. Western Union Telegraph Co., 680 F.2d 1318, 1321 (11th Cir.1982); Matthews v. Allis-Chalmers, — F.Supp. at — , 35 F.E.P. Cases at 1405 (adopting test similar to that in Williams without citing or discussing that case); E.E.O.C. v. Trans World Airlines, Inc., 544 F.Supp. 1187, 1218 (S.D.N.Y.1982); Franci v. Avco Corp., 538 F.Supp. 250, 256 (D.Conn.1982); Deutsch v. Carl Zeiss, Inc., 529 F.Supp. 215, 218 (S.D.N.Y.1981).

Another line of cases has used a different .fourth element, without even discussing the first line of cases. One case, Coburn v. Pan American World Airways, Inc., 711 F.2d 339, 342-43 (D.C.Cir.1983), cert, denied, — U.S. —, 104 S.Ct. 488, 78 L.Ed.2d 683 (1983), merely retained the fourth element normally used in the D.C. Circuit: the plaintiff must show that he was “disadvantaged in favor of a younger person.” Id. at 342. The Court rejected the employer’s argument (adopted in Williams) that the reduction-in-force prima facie case requires some direct evidence that age was a factor in the decision:

Cuddy [v. Carmen, 694 F.2d 853 (D.C. Cir.1982) ] makes it clear that direct evidence of discrimination is not required to prove a prima facie case and create an inference of discrimination. Id. at 856-57. We believe the exigencies of a reduction-in-force can best be analyzed at the stage where the employer puts on evidence of a nondiscriminatory reason for the firing. In this manner the employee always retains the burden of proving discrimination while the employer’s situation is analyzed on a case-by-case basis.

Id. at 343. The Third Circuit has adopted a similar test, requiring only that the plaintiff “easily” show that “others not in the protected class were treated more favorably.” Massarsky v. General Motors Corp., 706 F.2d 111, 118 & n. 13 (3d Cir. 1983), cert, denied, — U.S. —, 104 S.Ct. 348, 78 L.Ed.2d 314 (1983); see also Kneisley v. Hercules Inc., 577 F.Supp. 726, 730-31 (D.Del.1983) (following Massarsky test).

So far as we know the Seventh Circuit has never directly addressed the issue of the proper standard to apply in reduction-in-force cases. The case which comes closest to doing so, Parker v. Federal National Mtg. Ass’n., 741 F.2d 975 (7th Cir.1984), appears more like the second line of cases than the first. The case involved job cutbacks in a business which bought and serviced mortgages. Through a two-step reorganization, Parker, at 62 the oldest employee in his unit, was first demoted and then fired, while other, younger employees received better treatment. The Seventh Circuit did not spell out the four McDonnell Douglas factors, perhaps because the ease focussed on the issue of pretext, and the Court affirmed the granting of summary judgment to the employer on that issue. Nevertheless, the Court held that Parker would “have had little difficulty establishing a prima facie case” at trial. 741 F.2d at 979. The Court pointed out that Parker was well-qualified (thus satisfying element number 3) and, significantly, he “was not given the positions which Monico [age 31], Wright [age 55], Bromann [age 31], and Harén [age 57] filled, and ... was not allowed to ‘bump’ a Loan Representative.” Id. The Court did not explicitly require any direct or indirect evidence of age discrimination, as the Williams court had done, in order to prove the prima facie case. Instead, the opinion is silently consistent with the Cobum and Massarsky test of requiring that the plaintiff be “disadvantaged in favor of a younger person.”

We think the test used in Coburn and Massarsky, and sub silentio in Parker, is preferable to the Williams approach. The Williams test is internally inconsistent. By requiring a plaintiff to introduce direct evidence of intent in his prima facie case, the Williams test defeats one of the purposes of the McDonnell Douglas formula — allowing plaintiff to prove a prima facie case objectively, without having to exhume the direct evidence of intent buried in the mind of the employer. The Williams test also collapses the prima facie case with the third, or “pretext,” step in the burden-shifting game. And it collapses the supposedly “indirect,” objective McDonnell Douglas method of proof with the more subjective direct method. In sum, we wonder what purpose the already formalistic McDonnell Douglas doctrinal structure retains in the Williams approach.

In contrast, the second approach retains the “special virtue of the [McDon nell Douglas ] indirect method of proof,” that is, allowing “victims of age discrimination to prevail without presenting any evidence that age was a determining factor in the employer’s motivation.” LaMontagne, 750 F.2d at 1409-10. True, the prima facie case becomes fairly easy to prove in this context, see Coburn, 711 F.2d at 343, but it is also easily rebutted by the employer in the reduction-in-force context. In the final analysis, it might be said that the approaches in the two lines of cases are not very different, since proof in the second line that an older worker was “disadvantaged in favor of a younger one” really amounts to a piece of evidence required by the first line that “defendant regarded age as a negative factor” in his consideration. But to the extent, if at all, Williams requires more evidence of discrimination in the prima facie case, we reject it in favor of the more straightforward second approach. Thus, the McDonnell Douglas formula as tailored to this reduction-in-force case is as follows: the plaintiff must prove that (1) he was in the protected class; (2) he was doing his job well enough to meet his employer’s legitimate expectations; (3) he was discharged despite the adequacy of his job performance; and (4) he was treated less favorably than younger persons as part of the reduction-in-force. See Coburn, 711 F.2d at 342-43; Massarsky, 706 F.2d at 118; cf. Parker, 741 F.2d at 979 (appearing to require only these four elements in plaintiff’s prima facie case). Implicit in this fourth element is a requirement (which Oxman himself recognized in his formulation) that some other positions be available at the time of the discharge for which plaintiff is qualified. Although none of the three cases cited above mentioned such a requirement, it was present in each of those cases. Williams does create such a requirement, 656 F.2d at 129, and we agree with that Court to that extent.

PRIMA FACIE CASE

Turning to the facts of this case, we observe at the outset that even this renovated formula does not apply easily here. Just as this is not a typical termination case, it is not a “reduction-in-force” case in the same sense as the ones cited above. There a group of jobs, sometimes quite large, was reduced at once, and the unlucky employees scrambled for the remaining positions. Employers were charged with age discrimination in choosing which employees would fill the remaining positions. In contrast, Oxman’s position was the only one eliminated at that one point in time. As we will detail below, WLS-TV did eliminate other positions over time in different ways, but this case is still, in one sense, a “reduction-in-force of one.” As such, it is not quite as easy here as in the other cases to determine whether Oxman was treated less favorably than younger employees. We must approach the situation as a whole with common sense, and not be tripped by any verbal traps set by too rigid a reading of the McDonnell Douglas formula:

WLS-TV adopts such a rigid approach. It argues that since Oxman’s was the only job eliminated from the Northwest Bureau, he cannot prove he was treated less favorably than other similarly situated employees. This focus is too narrow. By WLS-TV’s restrictive definition, there are no similarly situated employees. The reduction-in-force happened elsewhere in the newsroom over time, as WLS-TV itself acknowledges. There is, therefore, a wider frame of reference for us to determine whether Oxman was relatively disadvantaged.

The most striking fact supporting Ox-man with respect to the fourth element is that he, the oldest newsroom employee, was fired when his job was eliminated, while many whose jobs were to be eliminated were not. By Swanson’s own admission, his usual way to eliminate jobs was to use a hiring freeze and not fill vacancies as they arose. “In this manner, seventeen positions ... were eliminated from WLS-TV’s 1984 budget.” Swanson Affidavit, ¶ 4. Viewing the whole reduction-in-force scheme in the light most favorable to Ox-man, this evidence supports his claim that he was treated less favorably than younger employees. That WLS-TV had some purported reasons for treating Oxman differently does not diminish his prima facie case, but rather supports its burden of rebutting this case.

WLS-TV also argues that Oxman cannot prove the fourth element because no positions were available at the time of his discharge for which he was qualified. Oxman lists ten vacancies which existed near the time of his discharge, which he claims he was qualified to fill and for which WLS-TV hired people outside the station. He lists five other positions which were filled with station veterans. These fifteen positions opened up at various times ranging from September, 1983 through September, 1984. WLS-TV argues that we should consider only positions open on the date of Oxman’s discharge in January, 1984. While we agree with WLS-TV that Ox-man’s focus may be too broad, as we have observed WLS-TV’s is too narrow. A focus on the precise date of discharge would allow for easy manipulation of an official firing date to mask liability. We need not decide now exactly what range of dates is proper to consider in this case. Even if we eliminate positions which were filled before Oxman was officially fired, and consider only those positions vacant at or shortly after the time of Oxman’s discharge, a factfinder could reasonably find that several positions existed: two newswriter vacancies and a “Manager of Scheduling” job. WLS-TV admits that Oxman was qualified to be considered for the Manager job. As for the two newswriter jobs, although Ox-man had not written news in many years, his 13¥2 years of writing experience at WBBM-TV preceding his sojourn at WLS-TV, as well as his masters degree in Journalism from the Medill School of Journalism at Northwestern University, might allow a factfinder to find him sufficiently qualified to write TV news. To prove his prima facie case Oxman need only show that he was qualified, not the most qualified. See, e.g., Herman v. National Broadcasting Co., 744 F.2d 604, 608 (7th Cir.1984), cert, denied. — U.S. —, 105 S.Ct. 1393, 84 L.Ed.2d 782 (1985). Relative qualifications and other exigencies should be dealt with in the employer’s rebuttal of the prima facie case.

While WLS-TV has been unable to sustain its burden of proving that no factual issues exist with respect to Oxman’s prima facie case, neither has Oxman shown that he deserves summary judgment. While strong enough to survive WLS-TV’s summary judgment motion, the evidence showing he was less favorably treated than other, younger employees is not compelling and does not satisfy the standards of Rule 56. We disagree with Oxman’s repeated contention that age discrimination is the “only” reasonable inference to be drawn from all the evidence. As such, we must deny his cross-motion for summary judgment.

REBUTTAL OF THE PRIMA FACIE CASE

Assuming Oxman can prove his prima facie case, WLS-TV has easily articulated several legitimate reasons for its discharge of Oxman, thus satisfying its shifted burden of production. We need only mention a few. Much credible evidence supports its assertion that it closed the Northwest Bureau to cut costs. While the news crew was still needed, a separate manager was not. Thus, while some of Oxman’s responsibilities must have shifted to others, his full job position had become superfluous. Since the Northwest Bureau was the only one of its kind, its closing arguably explains why Oxman alone was fired: the Bureau was unique, his position was unique, and so his firing was unique and legitimate when the Bureau was closed. Also WLS-TV has presented evidence that in October, 1983 two other employees — aged 26 and 32 — of WLS-TV’s “Satellite News Channel” were fired after the sale of that Channel terminated their positions. This analogous firing of younger employees also shows that Oxman’s firing was not unique, argues WLS-TV. As for WLS-TV’s failure to place Oxman in other vacant positions, it has articulated several plausible reasons for not doing so. Several vacancies were filled before Oxman was fired. Other evidence suggests either that Oxman was not the best “applicant” for the other positions, or that other legitimate reasons existed for not placing Ox-man. Given these articulations, the burden shifts back to Oxman to prove that WLS-TV’s purported reasons are pretextual.

PRETEXT

Even though Oxman has created a triable prima facie case, WLS-TV’s successful rebuttal means that summary judgment in its favor can be appropriate unless Oxman produces some credible evidence on the issue of pretext. See, e.g., Parker v. Federal National Mortgage Ass’n., 741 F.2d at 980; Selsor v. Callaghan, 609 F.Supp. 1003 (N.D.Ill.1985) (Aspen, J.) (granting summary judgment to employer in ADEA suit). As noted above, Oxman must produce evidence that discriminatory reasons more likely motivated WLS-TV or that its proffered explanations are unworthy of credence. LaMontagne, 750 F.2d at 1409. Oxman has produced both types of evidence. We therefore conclude that WLS-TV has not carried its burden under Rule 56 of showing that Oxman cannot satisfy his burden of proving pretext.

Oxman’s most direct and strongest evidence is the statement he says Applegate made to him on January 10, 1984. Apple-gate has not to our knowledge denied making this statement, although such a denial would not be important for summary judgment purposes. Oxman recalls Applegate saying that:

the business had grown very complex in recent years and that producers were under great pressure. He said that if he made me a producer on one of the shows, they’d know within a week that they’d find me unable to do the job and that I would then still be out of a job. Apple-gate denied my suggestion that age was a factor in the decision.

Although speaking about a producer rather than newswriter position (the latter of which was then available), Applegate’s statement creates a reasonable inference that he believed that Oxman could no longer handle the fast paced TV news business in general because Oxman was old. The ADEA was passed to combat this sort of attitude that older employees are slower-witted, behind the times, or otherwise not “with it.” Where, as here, an employer’s motive and intent are reasonably brought in issue by a piece of credible evidence, summary judgment is improper. See Kefhart v. Institute of Gas Technology, 630 F.2d 1217, 1218 (7th Cir.1980) (per curiam) (summary judgment not proper in discrimination case involving conflicting indications of motive and intent). Oxman need not prove that age “was the only factor motivating the discharge; it need only be a determining factor among others.” LaMontagne, 750 F.2d at 1414. Viewing Applegate's statement in the light most favorable to Oxman, we conclude that it reasonably implies that age was “a determining factor among others” in Oxman’s discharge. It is true, as WLS-TV argues, that this inference is not inevitable and Applegate’s statement could have been benign. For that reason, among others, we also deny Oxman’s motion for summary judgment. But the inference is reasonable and should be left for the trier of fact to consider in light of all of the evidence, which includes Oxman’s long and admittedly capable journalistic past.

While Applegate’s statement creates a triable issue of pretext, we observe that other pieces of circumstantial evidence, each benign in isolation, when considered together and with the Applegate statement may undermine the credibility of WLS-TV's articulated reasons for Oxman’s discharge. First, Swanson’s “hiring freeze” was not absolute, but rather was subject to considerable discretion. While he eliminated seventeen positions after they became vacant, he also hired some fifteen people— aged 24 to 44 — including several from within WLS-TV, to fill other vacancies between September, 1983 and September, 1984. Thus, Swanson’s cost-cutting was highly selective and seems to have hit Oxman harder than other, younger employees. Second, as for WLS-TV’s argument that two other employees were not rehired when their positions were eliminated, see p. 18 above, those employees were not newsroom employees. WLS-TV has admitted that since January 1, 1981 Oxman has . been the only employee among reporters, writer-producers or newsroom management fired because of station reorganization or the closing of a department, bureau or other subdivision. Thus, despite WLS-TV’s admitted four million dollar deficit and its desire to cut costs, Oxman stands alone as the only qualified newsroom employee terminated because of reorganization. This might be because Oxman’s position was unique, as WLS-TV claims, rather than because of his age, as Oxman argues.

These and other facts in the record satisfy the court that a genuine issue of fact exists as to pretext, thus precluding summary judgment for WLS-TV. Although WLS-TV has presented its case quite well and forcefully, at this stage we are constrained to look at the case in the light most favorable to Oxman. From such a perspective, we cannot now say that WLS-TV has satisfied its burden under Rule 56, since in the final analysis the case will turn on the motives and credibility of its main actors.

      . As an earlier opinion in this case noted, see Oxman v. WLS-TV, 595 F.Supp. 557 (N.D.Ill.1984), the complaint as originally written also alleged race and religious discrimination on behalf of a class. All that is left now is Oxman’s individual age discrimination claim.

      . Although McDonnell Douglas was a Title VII case, the lower courts have modified its formula for use in ADEA cases. See LaMontagne, 750 F.2d at 1409 nn. 1 & 2.

      . That version requires that the plaintiff prove: (i) that he belongs to [the protected age group]; (ii) that he applied and was qualified for a job for which the employer was seeking applicants; (iii) that, despite his qualifications, he was rejected; and (iv) that, after his rejection, the position remained open and the employer continued to seek applicants from persons of complainant’s qualifications.

        McDonnell Douglas, 411 U.S. at 802, 93 S.Ct. at 1824 (modified to age context).

      . WLS-TV’s approach is also too formalistic and rigid in another way. It combines its impossible prima facie case with the "applicant” version of the formula. While logical in an abstract sense, this approach ignores Oxman’s long employment experience at the station, and the evidence (which we discuss later) of how WLS-TV has treated other employees during its reorganization. His relationship with WLS-TV should not be viewed as that of an applicant and stranger. WLS-TV’s reliance on our decision in Smith v. World Book Childcraft Intern, Inc., 502 F.Supp. 96 (N.D.Ill.1980) is misplaced. Smith was not a reduction-in-force case and the employer sought a replacement for the fired employee. Thus, the usual prima facie case for termination was not absurd there, as it is here.

      . This fourth element differs from that normally used in the Seventh Circuit, where relative disadvantage does not enter into the usual prima facie case. See LaMontagne, 750 F.2d at 1409; see also Smith, supra at n. 4, 502 F.Supp. at 101-02.

      . The Court in LaMontagne went on to emphasize that the purpose of the McDonnell Douglas method is to help the plaintiff overcome the formidable evidentiary difficulties of proving discrimination:
      Even an employer who knowingly discriminates on the basis of age may leave no written records revealing the forbidden motive and may communicate it orally to no one. When evidence is in existence, it is likely to be under the control of the employer, and the plaintiff may not succeed in turning it up. The indirect method compensates for these evidentiary difficulties by permitting the plaintiff to prove his case by eliminating all lawful motivations, instead of proving directly an unlawful motivation.

        Id. at 1410.

      . In creating such a requirement, we caution that it must not be applied mechanically. Employers might be tempted to dress up an unlawful termination as a “job elimination.” Common sense rather than rigidity must always inform a Court’s application of the McDonnell Douglas formula.

      . WLS-TV’s emphasis on Oxman's unique position hurts its case at least as much as it helps it. While WLS-TV might very well have had good reason "for eliminating Oxman's position, see p. 1393 below, one wonders why Oxman alone was fired while others whose jobs were eliminated were not. This fact might or might not be significant, but we leave that weighing process to the factfinder.

      . See Smith v. World Book Childcraft Intern, Inc., 502 F.Supp. 96, 99 (N.D.Ill.1980) (Aspen, J.) (granting summary judgment to employer where relevant job position was filled before employee requested transfer). We need not decide whether the Smith situation applies here. Oxman argues that it is proper to consider the earlier dates because WLS-TV surely knew before January that it was going to close the Northwest Bureau and that Oxman would want to continue working in another position. He also underscores the potential for employer abuse by manipulation of official termination dates.

      . WLS-TV argues, however, that the position was not really “available" at the time of discharge. We disagree that no genuine issue exists about that fact. WLS-TV admits that it proposed the position to ABC on February 14, 1984, only two weeks after Oxman's termination, and it had considered creating the position before his termination. The finder of fact could reasonably infer that WLS-TV’s decision to request the position did not spontaneously erupt on February 14, but was made by the time of Oxman's termination. Although it was not "available” until later in the sense that it required network approval, it was "available” in the sense that it could have been filled pending approval.

      . Even if Oxman had more conclusively established his prima facie case, he would not be entitled to summary judgment. As discussed below, WLS-TV has rebutted that prima facie case. And while we hold below that Oxman has created a factual issue on "pretext,” he has by no means shown that there is no genuine issue of fact running in his favor on pretext.

      . For example, one of the two newswriter positions we mentioned was specifically held for new anchor John Drury’s personal writer.

      . Oxman also states that Applegate spontaneously mentioned that he would not be bound by past practice in his treatment of Oxman. Supplemental Affidavit of Jonah Oxman, If 4. This buttresses evidence introduced by Oxman that he was treated differently than other, younger employees, especially since Beverly Kennedy was allowed to transfer into a newswriter position. While WLS-TV plausibly argues that she is a “special circumstance," we think that there is enough evidence on this issue to get to the factfinder.

      . For example, after hearing all of the evidence, the trier of fact might find unpersuasive WLS-TV’s articulated reasons for not placing Oxman in the newswriter position formerly occupied by Bill Berra. The person ultimately hired, Edward Epstein, was transferring from a newspaper. Thus, WLS-TV’s claim that he was "uniquely qualified and clearly superior to Ox-man” arguably sounds phony in light of Ox-man’s long experience in electronic media. Before hiring Epstein, WLS-TV had filled the position with 24 year old Mark LaMet, a vacation relief newswriter. This, it claims, is in accordance with station policy. Yet there is evidence that LaMet had little newswriting experience, certainly far less than Oxman.


source: Caselaw Access Project

author: MOTLEY, Chief Judge.

license: Public Domain

text:
    LEVER BROTHERS COMPANY, Plaintiff, v. MATTEL, INC. and Flair Licensing, Inc., Defendants.
    No. 85 Civ. 1657 (CBM).
    United States District Court, S.D. New York.
    May 20, 1985.

      Fish & Neave by Robert C. Morgan, New York City, for plaintiff.
    Reavis & McGrath by Joseph P. Zammit and Ralph C. Dawson, New York City, Reagin & King by Ronald W. Reagin, Los Angeles, Cal., for defendants.
   FINDINGS OF FACT AND CONCLUSIONS OF LAW

MOTLEY, Chief Judge.

This is an action for trademark infringement and unfair competition brought pursuant to the Lanham Act, 15 U.S.C. section 1051, et seq., and common law. Plaintiff Lever Brothers Company (Lever) seeks to enjoin sale and distribution of a plush toy product known as “Snuggles the Seal,” designed by defendant Flair Licensing Inc. (Flair) and produced by defendant Mattel, Inc. (Mattel). Plaintiff alleges that defendant’s product infringes on plaintiff’s putative trademark, a teddy bear named “Snuggle” which it created to promote its “Snuggle” fabric softener. Plaintiff asserts that it has invested millions of dollars in its lovable “spokesbear” and urges that there is a likelihood of consumer confusion between “Snuggle” and “Snuggles the Seal.”

The court heard oral argument on March 7, 1985 on plaintiff’s motion for a temporary restraining order and denied the application at that time. An evidentiary hearing on plaintiff’s motion for a preliminary injunction was held on March 11 and 12, 1985. In denying the motion for a preliminary injunction, the court makes the following findings of fact and conclusions of law. FINDINGS OF FACT

Plaintiff Lever is a manufacturer and distributor of fabric softeners and other household products. (Transcript of Preliminary Injunction Hearing at 7). In 1982, Lever introduced a new brand of fabric softener distributed under the registered trademark “Snuggle.” (Tr. 13; Exh. 19). Defendant Mattel, the world’s largest toy company, distributes plush toys through its “Emotions” division. (Tr. 183). Emotions has, since February 1985, marketed a plush toy baby seal known as “Snuggles the Seal.” (Tr. 176, 222). Defendant Flair, an independent licensing contractor, created “Snuggles the Seal” and licensed it to Mattel. (Tr. 187).

Background on “Snuggle”

Following the success of a similar marketing plan by affiliated European companies, Lever decided to market a new fabric softener called “Snuggle” with a teddy-bear character of the same name. The bear was designed as the centerpiece of the promotion campaign and was intended to have a distinct public identity. The bear character and the “Snuggle” name were chosen because of their universal associations with softness and emotional warmth. (Tr. 8-12). Lever retained Kermit Love, a puppet designer known for his work on television’s “Sesame Street,” to create the “Snuggle” character. (Tr. 8-12).

Following its introduction in the Milwaukee area in September, 1982, “Snuggle” liquid fabric softener has been marketed in areas comprising approximately 37 percent of United States households. (Tr. 84). Although it has yet to be offered in New York City, “Snuggle” has made significant inroads in the national fabric softener market. (Tr. 12-35). In addition, Lever has marketed “Snuggle” in sheet form in limited markets. (Tr. 32-34).

“Snuggle” bear has appeared on every bottle and box of “Snuggle” sold, and has been featured in extensive television and print advertising for the product. In the television commercials, “Snuggle” bear is the sole speaking character. (Tr. 13-15, 22, 28, 33, 38, 54, Exh. 1-3, 9, 9A). In all, Lever has spent $30 million in promoting, “Snuggle” fabric softener. (Exh. 7). Lever has also registered the term “Snuggle” with the Patent and Trademark Office for use in connection with fabric softeners, but has not sought trademark registration for the term in connection with any other product. (Tr. 64-65, Exh. 19).

In connection with its marketing of “Snuggle” fabric softener in each new area, Lever has distributed several different versions of a plush toy bear to capitalize on positive public reaction to the “Snuggle” bear character. In November 1982, Lever sold through direct mail in the Milwaukee area approximately 1000 to 2000 12-inch plush toy bears. These were generic teddy bears manufactured by the Dakin Company to which Lever affixed a plastic “Snuggle” name tag. (Tr. 18-20, Exh. 11). Lever also distributed 49,600 three inch bears as a promotional gift shrink-wrapped to 96-ounce bottles in the same test market area. (Tr. 20-21, Exh. 5).

Lever then had created for it a six and one half inch version of “Snuggle” bear, which it has offered by mail for cash or for multiple proofs of purchase in each subsequent new market area. (Tr. 24-25, Exh. 4). A total of approximately 311,550 such bears have been distributed to consumers, and Lever has continued to ship the bears to satisfy additional offers. (Tr. 35-36, Exh. 7). An additional 40,000 of this version of the bear have been distributed through children’s programs and other channels. In all, Lever has distributed approximately 450,000 bears. (Tr. 38-39).

The “Snuggle” bear character has achieved a significant degree of public recognition in the areas where the fabric softener has been marketed. In August, 1984, after the product had been offered for one year in the Midwest, Lever ran a ten-second commercial and a one-time print advertisement inviting “happy birthday” calls to “Snuggle,” costing fifty cents each, at a special number. More than 125,000 people called to wish “Snuggle” bear happy birthday. (Tr. 25-28). In addition, Lever has received approximately 1,000 letters praising “Snuggle” fabric softener and “Snuggle” bear, many of which inquire as to whether “Snuggle” bears are available for purchase. (Exh. 17A-C).

Lever has also marketed a “Snuggle” bear calendar, beach towel, and t-shirt in some areas. Although no reference to any product is made on these items, they were produced in conjunction with the fabric softener marketing campaigns. (Tr. 29-30, 71-73). In addition, “Snuggle” bear has made public appearances at Reading Is Fundamental programs and zoos in several cities, and Lever has produced a public service commercial featuring “Snuggle” bear urging children not to consume household products found under the sink. (Tr. 40-43).

In order further to capitalize on the public affection for the “Snuggle” bear character, Lever has been exploring for several months the possibility of licensing a “Snuggle” bear for retail sale. (Tr. 108-09, 133). In this connection, Lever, which has no experience in the toy licensing field, has had preliminary discussions with several licensing consultants (Tr. 110) and has arranged for the Russ Berrie Company to produce several proposed versions of “Snuggle” bear. Although the company has produced 11 prototypes of a bear, none was considered close enough to the Kermit Love original to be considered the true “Snuggle” bear. (Tr. 109-112). Lever’s licensing program has not progressed beyond this exploratory stage and will not be in place for several months. (Tr. 127, 133-34).

Background on “Snuggles the Seal”

Defendant Mattel purveys plush toys and other upscale gift items through its “Emotions” division. (Tr. 182-83). In February 1984, defendant Flair approached Mattel with the concept of marketing a plush toy seal to capitalize on the publicity surrounding public opposition to the annual slaughter of baby seals. A portion of the proceeds from the seal’s sales would be donated to a non-profit organization working to eliminate the annual hunt, which humanitarian gesture would in turn generate publicity for Mattel’s product. (Tr. 188-89). Mattel ultimately entered into an agreement with the Humane Society of the United States whereby “Snuggles the Seal” has been adopted as the official mascot of the “Save the Seals” campaign, and Mattel donates a dollar to the Society for every purchaser of “Snuggles the Seal” who sends in a prepaid postcard provided with the toy. (Tr. 221).

The name chosen for the seal was one of several ideas, including Sniffles, Snuffles, and Snuggles, developed to alliterate with the word Seal. (Tr. 224). Mattel abandoned Sniffles and Snuffles to avoid conflict with the names of other plush toys on the market. (Tr. 227, 241-43). Although Benjamin Cohen, President of Mattel’s Emotions division, saw a “Snuggle” fabric softener commercial featuring “Snuggle” bear in January 1985, (Tr. 228-29), at no time prior to the original conception, design, or naming of “Snuggles the Seal” was anyone connected with the project aware of Lever’s “Snuggle” fabric softener or its bear. (Tr. 228, 277-78).

Mattel began to sell “Snuggles the Seal” in February 1985. (Tr. 218). It has promoted the product through popular and trade advertisements, trade shows, and press conferences. All of the promotion has been tied into the “Save the Seals” campaign (Tr. 211-20). The product is displayed in many gift and department stores in a cardboard display (Exh. B) containing copy which reads: “Snuggle up — and help save the seals.” As of the date of the hearing, Mattel had sold 48,000 seals and was shipping between 2,000 and 2,500 a day. (Tr. 222).

Nature of the Marks and Likelihood of Confusion

The word “Snuggle” means “to cuddle.” American Heritage Dictionary (2d ed. 1982). Plaintiff’s own marketing manager for fabric softener, David Sharp, testified that the term conjures up images of softness and comfort. (Tr. 67-68). In plaintiff’s advertisements, the phrase “snuggly softness” is used to suggest that the fabric softener will make the consumer’s clothing soft and comfortable (Exh. 14). Defendant’s uncontroverted expert witness, Jay Miller, testified that the term “Snuggle” is used frequently to describe soft or cuddly toys. (Tr. 326, 331-333). Used in this sense, the term is not associated with a single source of origin. (Tr. 333).

Moreover, the term has been used widely in the toy industry as a name or part of a name or designation for various plush toys, dolls, and other products. (Tr. 326). There are currently on the market, inter alia, a family of toys known as “Snuggle Bumms Family,” (Exh. BA-BG), a series of plush toys named “Snuggables,” (Exh. BH-BN), a “Cuddly Snuggable Plush AM Radio,” (Exh. BP), and a “Snuggle Up Unicorn,” (Exh. BQ). Mattel itself has used the word or variants on it to describe toys in every one of its catalogues since 1971. (Tr. 290, Exh. AK-AZ). Among Mattel’s current products are “Snuggle Baby,” a doll (Tr. 307), and “Angel Bunny/Snuggle Bunny,” a stuffed rabbit. (Tr. 308). Although defendant Mattel did not offer evidence on the amount of promotion afforded these products, the parties stipulated that the many products produced in court by defendant were all purchased at toy stores in the New York area in the days prior to the preliminary injunction hearing. (Tr. 283).

There are several similarities but also some significant differences between the marks of plaintiff and defendants. The greatest similarity is, quite obviously, in the names, which are quite similar. In addition, both “Snuggle” bear and “Snuggles the Seal” are cute, whimsical plush toy animals. The physical similarities, however, end there.

The parties have stipulated that “Snuggle” bear and “Snuggles the Seal” do not look alike. (Tr. 59-60). In fact, no two versions of “Snuggle” bear himself even look alike. The three versions distributed to the public (Exh. 4, 5, 11) differ in size, color, and facial features, and all three differ from the Kermit Love original which Lever has spent millions of dollars promoting in print and broadcast advertisements. (Exh. 3, 8, 10). Furthermore, the eleven prototypes developed at Lever’s request (Exh. 20-30) are each different versions of the classic teddy bear. Neither any of these, nor any of the three already distributed, has won Lever’s approval as the true “Snuggle.” (Tr. 115).

“Snuggles the Seal,” moreover, is plainly different from all the many would-be “Snuggle” bears. Unlike the bears, which are brown, the seal is white. It has distinctive blue eyes, whiskers, no ears, a blue shirt and cap, webbed feet, and a bold “Snuggles the Seal” insignia on its chest, all of which distinguish it from the bears. (Exh. 6). In short, “Snuggles the Seal” is a baby seal, not a teddy bear.

The entire marketing of “Snuggles the Seal” has also been geared to its identity as a seal, particularly through the association with the “Save the Seals” campaign. If “Snuggles the Seal” were perceived as a teddy bear, the entire marketing scheme would be a failure. (Tr. 220-21). The marketing of “Snuggles the Seal,” which at $20 is a relatively expensive toy item (Exh. 34), has to date been primarily through upscale gift shops and department stores, where purchasers are likely to be relatively sophisticated. (Tr. 183). Lever’s bears, by contrast, have been offered as free or inexpensive premiums in connection with the marketing of fabric softener. (Tr. 17-24). Lever’s inchoate marketing plans for “Snuggle” bear may eventually include marketing through similar channels as “Snuggles the Seal” (Tr. 52-54), but there is no evidence that Lever plans to market a toy seal. There is no evidence of any bad faith on the part of defendants or of any actual confusion between “Snuggles the Seal” and “Snuggle Bear.”

Potential Impact of a Preliminary Injunction

There is little or no evidence that the continued sale of “Snuggles the Seal” would harm Lever by interfering with fabric softener sales, promotional uses of the “Snuggle” character, or the licensing plan for “Snuggle.” Only Lever’s own product manager, Eric Kessler, offered testimony on the harm which “Snuggles the Seal” might inflict on the licensing scheme. (Tr. 113). Mr. Kessler, however, has no expertise in licensing and his conclusory and speculative testimony carries little weight. Lever’s licensing plans are still embryonic (Tr. 108-12, 133-34), and there is no evidence of Lever’s dollar investment to date in the licensing project.

On the other hand, a preliminary injunction would create a substantial burden for Mattel. Requiring Mattel to change the name of the seal would make existing inventory worthless, since the name is printed on a shirt that is sewn to the' body of each seal. (Tr. 245). Moreover, even if Mattel has already sold the $1.5 million worth of inventory that was on hand as of the preliminary injunction hearing (Tr. 246), an injunction now would interfere with pending orders to customers and substantially damage Mattel’s customer good will. (Tr. 244-45). In addition, Mattel’s promotional efforts with regard to the “Snuggles the Seal” name would be rendered worthless. (Tr. 246).

CONCLUSIONS OF LAW

Plaintiff Lever asserts that Mattel’s marketing of “Snuggles the Seal” infringes on its trademark “Snuggle” under both Section 32(1) of the Lanham Act, 15 U.S.C. section 1114(1) and common law. Moreover, Lever argues that Mattel’s conduct violates the unfair competition provisions of Section 43(a) of the Act, 15 U.S.C. section 1125(a). Lever has moved for a preliminary injunction against the further sale of “Snuggles the Seal” pending trial on the merits of a permanent injunction.

The standard to be applied in evaluating a claim for preliminary injunction is well settled. Plaintiff must demonstrate likely irreparable harm and either probable success on the merits or serious questions going to the merits coupled with a balance of hardships tilting decidedly in plaintiff’s favor. See Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 78 (2d Cir.1981). The burden of persuasion is on plaintiff. Haider v. Avis Rent-a-Car System, Inc., 541 F.2d 130, 131 (2d Cir.1976).

In trademark and unfair competition cases, the preliminary injunction standard generally boils down to the question of success on the merits: Is plaintiff likely to demonstrate a valid trademark and a likelihood of confusion between defendant’s product and that of plaintiff? If a likelihood of confusion is demonstrated, irreparable harm is presumed. Matter of Vuitton Et Fils S.A., 606 F.2d 1, 4 (2d Cir. 1979).

Validity and Strength of Plaintiffs Mark

At the outset, the court notes that plaintiff’s trademark registration of “Snuggle” raises a presumption of validity only as to the goods or services for which it is registered. Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 48 (2d Cir.1978), cert, denied, 439 U.S. 1116, 99 S. Ct. 1022, 59 L.Ed.2d 75 (1979). Since Lever registered “Snuggle” only as a trademark for fabric softener, the mark enjoys no presumption of validity when applied to plush toys, and plaintiff must therefore establish independently that it holds a valid trademark in “Snuggle” as applied to any product other than a fabric softener.

Trademarks are classified into four categories: arbitrary, suggestive, descriptive, or generic. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir.1976). Unlike arbitrary or suggestive marks, which are inherently distinctive and entitled to automatic protection, Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 687 F.2d 563, 566 (2d Cir.1982), a descriptive mark can only achieve protection if it is shown to have secondary meaning. McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1131 (2d Cir.1979); Abercrombie & Fitch, 537 F.2d at 9. A trademark can be classified in different categories for different uses. Id.

Plaintiff has made a strong case that “Snuggle” is a suggestive trademark as applied to fabric softener. The “Snuggle” advertising campaign conveys the message that “Snuggle” will make the consumer’s clothing “snuggly soft” and comfortable; thus the name suggests indirectly a result from using the product, but does not describe the product directly. The mark is unique in its field, and Lever has demonstrated persuasively that its brand of fabric softener and its cuddly “Snuggle” bear have achieved significant consumer recognition.

The question before the court, however, is different: Does Lever also possess a strong trademark in the “Snuggle” bear apart from its role as “spokesbear” for fabric softener? Secondary meaning in a trademark as applied to one product does not automatically establish secondary meaning in an unrelated field. Scott Pa per Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225 (3d Cir.1978); Abercrombie & Fitch, 537 F.2d at 9. Lever has not made a persuasive showing on this more difficult question, and the court finds that plaintiffs trademark in “Snuggle” in the plush toy field is weak, if it is protectable at all.

In comparing the two uses of plaintiffs “Snuggle” mark, the court notes an important distinction: As applied to a fabric softener, Lever’s mark consists of a bear plus the name “Snuggle” — a unique combination in the fabric softener field. When seeking trademark status for its plush toy, however, plaintiff must rely on the distinctiveness of the name “Snuggle” alone, since the teddy bear itself is a fixture in the stuffed animal field. There has been no showing that any of the bears distributed by Lever are uniquely recognizable as “Snuggle” bear; Lever claims not yet to have produced the “true” version of “Snuggle,” and the court has found that the various generic teddy bears distributed and developed by Lever each look different from each other and from the Kermit Love design that has appeared in “Snuggle” fabric softener advertising. Plaintiff, therefore, must demonstrate that the name “Snuggle,” by itself, is a valid trademark as applied to teddy bears.

Moreover, the court finds that “Snuggle” as a trademark for a teddy bear is merely descriptive and cannot be protected without a showing of secondary meaning. The word “snuggle,” which means “to cuddle” and which conjures up images of softness and warmth, is directly descriptive of the classic teddy bear. Since the product itself is “snuggly,” the term must be regarded as descriptive. In contrast, fabric softener is not itself “snuggly,” so the term is merely suggestive in that context.

Plaintiff has failed to demonstrate strong secondary meaning in “Snuggle” as a trademark for plush toys. Although Lever has expended great sums to promote its fabric softener, it has made only a tentative entry into the plush toy field. Most of its bear distribution to date has been in direct connection with promoting its fabric softener. Plaintiff’s inchoate private plans to license a toy bear do not give it any trademark rights beyond those created by its actual public use of the trademark to date. Lever did offer evidence of “Snuggle” bear’s independent identity as reflected in the character’s personal appearances and the many letters and birthday phone calls. Therefore, arguably, “Snuggle” has begun to take on some secondary meaning as applied to a teddy bear. The court is not persuaded, however, that such secondary meaning is strong enough to give Lever an automatic trademark right to the term as applied to all plush toys.

This conclusion is strengthened by reference to the many uses of “snuggle” variants to describe plush toys, dolls, and other children’s products. Secondary meaning is negated by evidence that others are using a term descriptively on related goods. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (C.C.P.A.1976). Specific variants of “snuggle” — such as “Snuggle Baby” and “Snuggle Bunny” — or for that matter “Snuggles the Seal” — may acquire secondary meaning and achieve trademark protection. The court doubts, however, whether “Snuggle” alone could ever gain this status, since the term in and of itself is virtually generic. Even if Lever could protect its use of “Snuggle” as applied to a bear —protection that would be easier to justify if the trademark were “Snuggle Bear” rather than simply “Snuggle” — it cannot thereby claim a trademark in the term as applied to all plush toys.

Likelihood of Confusion

Even assuming, arguendo, that plaintiff holds some rights in the trademark “Snuggle” as applied to a plush toy bear, Lever must show infringement of that trademark in order to gain relief against Mattel. The test of trademark infringement is whether there is a likelihood of consumer confusion between the marks of plaintiff and defendant. Standard & Poors Corp. v. Commodity Exchange, Inc., 683 F.2d 704, 708 (2d Cir.1982). In the absence of a likelihood of confusion, plaintiff can demonstrate neither a likelihood of success on the merits nor irreparable harm, and therefore cannot obtain an order enjoining distribution of “Snuggles the Seal.”

Likelihood of confusion is measured under several factors, including strength of the senior mark, similarity of the marks, proximity of the products, actual confusion, good faith of the junior user, and sophistication of the expected consumers. See, e.g., Standard & Poors, 683 F.2d at 708; McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2d Cir.1979); Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert, denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). Application of these factors to the facts of this case shows that plaintiff has failed to establish a likelihood of confusion.

The first factor, the strength of plaintiffs mark, has been addressed above, and the court has concluded that Lever possesses, at best, a weak mark in “Snuggle” as applied to plush toys. Plaintiff argues that the court should not rely upon evidence that variations on “Snuggle” are frequently used to describe toys. Although evidence of similar third party marks does not by itself reduce the strength of Lever’s trademark, see Scarves by Vera, Inc. v. Todo Inports Ltd. (Inc.), 544 F.2d 1167 (2d Cir.1976), defendants here submitted uncontroverted evidence that the third party “Snuggle” variants were actually used to describe toys available in New York stores and advertised in Mattel’s national catelogues for the last 15 years. Moreover, unlike the third party marks held not to weaken the senior mark in Scarves by Vera, 544 F.2d at 1173, the evidence showed that “Snuggle” variants are commonly used in the same or closely related fields: plush toys and dolls. In the absence of more persuasive evidence that the mark “Snuggle,” by itself, is uniquely identified in the public mind with plaintiff’s plush toy bear, rather than plaintiff’s fabric softener, the court finds that plaintiff possesses only a weak mark in “Snuggle” as applied to a bear.

The second factor, the similarity of the marks, also weighs in Mattel’s favor. Although “Snuggle” and “Snuggles the Seal” are similar names, they are no more so than “Snuggle” and “Snuggle Baby” or “Snuggle Bunny” — both of which Lever concedes to be non-infringing marks. Moreover, the court has already found that “Snuggle” bear, so far as he has been marketed to date as a plush toy, lacks a clear physical identity, and in any event is remarkably different in appearance from “Snuggles the Seal.” Mattel’s seal-oriented promotional campaign underscores the differences between the products and correspondingly reduces the accompanying likelihood of confusion. The overall impression created by these products and their accompanying trademarks is, therefore, quite dissimilar. See McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1134 (2d Cir.1979).

The proximity of plaintiff’s and defendant’s products has been marginal to date. Plaintiff’s bears have been distributed as promotional gifts or inexpensive premiums, while defendant’s seal has been sold in upscale gift shops and department stores. Plaintiff argues, however, that it retains the right to change its marketing channels. Russell Chemical Co. v. Wyandotte Chemicals Corp., 337 F.2d 660, 662 (C.C.P.A. 1964). Nevertheless, even if “Snuggle” bear were sold in the same stores as “Snuggles the Seal,” the court doubts whether this would significantly augment the likelihood of consumer confusion.

Moreover, while a trademark holder may enjoin infringements by products even in totally unrelated fields where a likelihood of confusion as to sponsorship exists, Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir.1981), Lever, as holder of at best a weak mark, can wield no such far-ranging control. Plaintiff therefore must otherwise bridge the gap between defendant’s product and its own. Even assuming that plaintiff can demonstrate that it and defendant are in the same business, i.e. plush toys, plaintiff’s weak mark still fails to bridge the gap between plush toy bears and plush toy seals.

As the court has concluded, there is no evidence of bad faith on the part of Mattel. “Snuggles the Seal” was conceived, developed, and named without knowledge of “Snuggle” bear, and Mattel’s consistent intention to exploit public concern about the killing of baby seals in its marketing of “Snuggles the Seal” belies any desire to confuse the public by riding on “Snuggle” bear’s coattails.

In addition, there is no evidence of actual confusion. Although such evidence would be highly probative of likelihood of confusion, its absence does not necessarily bar injunctive relief, where, as here, defendants have only been marketing their product for a short time. Scarves by Vera, 544 F.2d at 1175. In the absence of positive evidence, however, this factor is a “wash.”

Finally, the relatively high price of “Snuggles the Seal” and its marketing through upscale outlets suggests that it will be purchased by relatively sophisticated consumers, particularly in view of its promotion in connection with the “Save the Seals” campaign. Were plaintiff’s mark stronger, or plaintiff’s and defendant’s products more similar, this factor alone might be insufficient to negate the likelihood of confusion. In view of the foregoing discussion, however, the comparative sophistication of defendant’s customers militates against a finding of likelihood of confusion.

Application of the foregoing factors leads the court to the inescapable conclusion that plaintiff has failed to demonstrate a likelihood of consumer confusion between “Snuggles the Seal” and “Snuggle” bear. Lever possesses a strong trademark in a bear named “Snuggle” used for fabric softener, but only a weak mark in “Snuggle” as a name for a plush toy teddy bear. In view of significant differences in the names, physical appearances, and marketing of Lever’s and Mattel’s products, defendant is guilty of no infringement of plaintiff’s weak mark.

Plaintiff’s failure to show a likelihood of confusion means that he also lacks a likelihood of success on the merits and has failed to demonstrate irreparable harm. Moreover, while there are arguably serious litigable issues going to the merits, the balance of hardships does not tilt decidedly in Lever’s favor. Any direct competition between the parties’ products is primarily in the future and the harm to plaintiff’s intended licensing program has been suggested only by the most speculative and conclusory testimony. In contrast, a preliminary injunction would do severe damage to Mattel’s relationship with its customers and would render Mattel’s investment in promoting the “Snuggles the Seal” name virtually worthless. Therefore, under all the relevant standards, plaintiff has failed to meet its burden in justifying a preliminary injunction.

For the foregoing reasons, plaintiff’s motion for a preliminary injunction is denied.