TIMES MIRROR MAGAZINES, INC. v. LAS VEGAS SPORTS NEWS, L.L.C., d/b/a Las Vegas Sporting News, Appellant, 212 F.3d 157

OPINION OF THE COURT ALDISERT, Circuit Judge. In 1886 the phrase “The Sporting News” was granted federal trademark protection and since that time it has been the banner headline of a weekly publication entitled The Sporting News. The mark is now owned by its publisher, Times Mirror Magazines, Inc. This appeal requires us to decide if Times Mirror was entitled to a preliminary injunction enjoining a publisher from using the name Las Vegas Sporting News.

Applying the relatively new Federal Trademark Dilution Act of 1995, 15 U.S.C. § 1125(c) (“FTDA” or “Act”), the district court issued the injunction against Las Vegas Sports News, L.L.C., d/b/a Las Vegas Sporting News (“LVSN”), from using the name on its weekly sports-betting publication. The court concluded that Times Mirror was likely to succeed on the merits of its dilution claim against LVSN, because the mark was “famous” in its niche market and LVSN’s use of the title on its publication diluted the Times Mirror’s mark by blurring its distinctiveness.

The district court had jurisdiction over the dilution claims pursuant to 15 U.S.C. § 1121(

a) and 28 U.S.C. § 1338. We have jurisdiction pursuant to 28 U.S.C. § 1292(a)(1). This appeal by LVSN was timely filed under Rule 4, Federal Rules of Appellate Procedure. LVSN contends that the district court erred by granting Times Mirror preliminary injunctive relief because Times Mirror failed to establish a likelihood of success on the merits of its dilution claim or immediate irreparable harm. We must decide whether the district court erred by holding that (

a) the mark “The Sporting News” was famous in the sports periodicals market; (

b) LVSN’s use diluted the strength of Times Mirror’s mark by blurring its distinctiveness and (

c) Times Mirror’s 15-month delay in bringing suit did not preclude a finding that LVSN’s use would immediately cause irreparable harm to Times Mirror. In reviewing the grant or denial of a preliminary injunction, we consider the following: 1. The law has entrusted the power to grant or dissolve an injunction to the discretion of the trial court in the first instance, and not to the appellate court. 2.

Unless the trial court abuses that discretion, commits an obvious error in applying the law or makes a serious mistake in considering proof, the appellate court must take the judgment of the trial court as presumptively correct. 3. This limited review is necessitated because the grant or denial is almost always based on an abbreviated set of facts, requiring a delicate balancing of the probabilities of ultimate success at final hearing with the consequences of immediate irreparable injury which could possibly flow from the denial of preliminary relief. 4.

In exercising its limited review of the grant or denial of preliminary injunctive relief, the appellate court asks: (

a) Did the movant make a strong showing that it is likely to prevail on the merits? (

b) Did the movant show that, without such relief, it would be irreparably injured? (

c) Would the grant of a preliminary injunction substantially have harmed other parties interested in the proceedings? (

d) Where lies the public interest? 5. The applicant for a preliminary in- ■ junction bears the burden of establishing a right to such injunctive relief and that irreparable injury will result to him if it is not granted. Moreover, we have emphasized the elementary principle that a preliminary injunction shall not issue except under a showing of irreparable injury. A.O. Smith Corp. v. FTC, 530 F.2d 515, 525 (3d Cir.1976); see Loretangeli v. Critelli, 853 F.2d 186, 193 (3d Cir.1988). I.

The Sporting News provides its readers with information on baseball, basketball, football and hockey, and has a weekly circulation of approximately 540,000 in the United States and Canada. The Sporting News does not provide any information on gambling, because Times Mirror “believe[s] that there is a portion of the population that is adamantly opposed to gambling and that they would not look favorably on any of [its] products if they thought [the magazine was] promoting gambling in any way.” D. Ct. Op. at 2 (alteration in original).

The magazine is advertised on television, in direct mail solicitations, in promotions and occasionally on the radio. It is typically sold for $2.99, but nine special content issues are sold each year for $3.99. Over the last several years, Times Mirror has invested millions of dollars in The Sporting News in an attempt to improve the quality of its magazine and to increase readership.

LVSN publishes Las Vegas Sporting News, which contains articles, editorials and advertisements on sports wagering “for the sports gaming enthusiasts or individuals that like to take a risk.” App. at 41 (Testimony of LVSN publisher; Dennis Atiyeh). Las Vegas Sporting News is published 45 times a year and generally has a circulation of 42,000, but some special editions have had a circulation of up to 100,-000. The publication is sold for $2.99 at several hundred newsstands across the country, but most copies are given away in gambling casinos free of charge.

In 1997, LVSN publisher Dennis Atiyeh changed the name of his publication from Las Vegas Sports News to Las Vegas Sporting Netvs. The publisher says that he changed the publication’s title for two reasons: (1) the previous publisher of Las Vegas Sports News had a poor reputation, having fallen into disrepute with gambling casinos and (2) the term “sporting” more accurately reflected the publication’s content, because the publication was a “sports gaming” publication, and not purely a “sports publication.” D. Ct. Op. at 3.

Atiyeh admits that at the time he changed the name of his publication, he was familiar with Times Mirror’s publication The Sporting News. Since the 1997 name change to Las Vegas Sporting News, circulation of the publication has increased, but not substantially. Times Mirror first learned that LVSN was publishing Las Vegas Sporting News in August 1997. On September 24, 1997, Times Mirror sent LVSN a cease and desist letter, which read in part: It has recently come to my attention that your company is marketing a sports magazine entitled Las Vegas Sporting News.

Apparently, -this is a relatively recent change, since the masthead page of your magazine makes reference to Las Vegas Sports News, stating, in part, that, “Las Vegas Sports ■ News ... is published weeMy....” .... It would appear that your company is attempting to unlawfully appropriate the good will that is associated with our federally registered trademark.

In view of the likelihood of consumer confusion, we hereby demand that you (1) immediately cease and desist from any further use of the term “Las Vegas Sporting News,” and (2) select a name to identify your product that is not confusingly similar to our “The Sporting News” trademark. App. at 263-264 (citations omitted). LVSN had not ceased using the phrase “Sporting News” in connection with its weekly publication.

In October 1998, after settlement negotiations between Times Mirror and LVSN proved unsuccessful, Times Mirror retained Glenn Hauze, a private investigator in Pennsylvania, “to gain as much information as possible regarding the availability of the Las Vegas Sporting News,” in anticipation of litigation. App. at 31. Hauze began his investigation by visiting three newsstands in or around Le-high Valley, Pennsylvania. The first newsstand he visited was in Plumsteadville, and it carried both The Sporting Neius and Las Vegas Sporting News.

Las Vegas Sporting News “was up on the shelf with the other sporting magazines,” but The Sporting News “was down amongst the tabloids.” D. Ct. Op. at 6. The following day, Hauze found copies of Las Vegas Sporting News for sale at newsstands in Allentown and Quakerville. At the Allentown newsstand, Las Vegas Sporting News and The Sporting News were displayed within inches of each other in a bay window in front of the store, along with a large number of other sporting type publications.

John Kastberg, vice-president of Times Mirror’s The Sporting News, conducted his own investigation in December 1998, during which he visited three newsstands in New York City: I went to a newsstand in Penn Station which is a train terminal in New York, I went to Barnes & Noble in New York and I went to a newsstand in Grand Central Terminal which is another train station in New York.... [W]hen I went to Penn Station I asked the guy “Do you have the Las Vegas Sporting News,” and he handed me the Times Mirror SpoHing News....

I went to the Barnes & Noble, asked the same question, got Times Mirror Sporting News and the same thing happened at Grand Central. All three times I was handed the Times Mirror Sporting News when I asked for Las Vegas Sporting News. App. at 24-25. Two weeks after Hauze’s investigation, Times Mirror filed a complaint in district court, charging LVSN with infringing Times Mirror’s registered mark in violation of

section 32 of the Lanham Act, 15 U.S.C. § 1114(1); with false designation of origin in violation of

section 43(

a) of the Lanham Act, 15 U.S.C. § 1125(a); with trademark dilution in violation of

section 43(

c) of the Lanham Act, 15 U.S.C. § 1125(c); and with common law unfair competition and infringement. On December 3, 1998, both parties participated in an evidentiary hearing on Times Mirror’s motion for a preliminary injunction, in which it sought to enjoin LVSN from using the phrase “Sporting News” on its publication.

In its March 4, 1999 Order and Memorandum Opinion, the district court concluded that Times Mirror was likely to succeed on the merits of its federal trademark dilution claim and consequently granted Times Mirror’s request for a preliminary injunction, thereby enjoining LVSN from using the phrase “Sporting News” in connection with its weekly publication. The district court granted the preliminary injunction solely on trademark dilution by blurring grounds and did not consider Times Mirror’s other claims.

The parties subsequently agreed inter alia that the preliminary injunction would be stayed pending appeal to this court. II. The Federal Trademark Dilution Act of 1995 provides: The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person’s commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection. 15 U.S.C. § 1125(c)(1).

The federal cause of action for trademark dilution grants extra protection to strong, well-recognized marks even in the absence of a likelihood of consumer confusion — the classical test for trademark infringement — if the defendant’s use diminishes or dilutes the strong identification value associated with the plaintiffs famous mark. 4 McCarthy on Trademarks and Unfair Competition § 24:70 (4th ed.1997).

The dilution doctrine is founded upon the premise that a gradual attenuation of the value of a famous trademark, resulting from another’s unauthorized use, constitutes an invasion of the senior user’s property rights in its mark and gives rise to an independent commercial tort for trademark dilution. Id. To establish a prima facie claim for relief under the federal dilution act, the plaintiff must plead and prove: 1. The plaintiff is the owner of a mark that qualifies as a “famous” mark in light of the totality of the eight factors listed in § 1125(c)(1), 2.

The defendant is making commercial use in interstate commerce of a mark or trade name, 3. Defendant’s use began after the plaintiffs mark became famous, and 4. Defendant’s use causes dilution by lessening the capacity of the plaintiffs mark to identify and distinguish goods or services. See 4 McCarthy, supra, § 24:89; see also Hershey Foods Corp. v. Mars, Inc., 998 F.Supp. 500, 504 (M.D.Pa.1998) (quoting 4 McCarthy, supra). A court may consider the following eight non-exclusive factors in determining the famousness vel non of a mark: (A)the degree of inherent or acquired distinctiveness of the mark; (

B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; (

C) the duration and extent of advertising and publicity of the mark; (

D) the geographical extent of the trading are a" in which the mark is used; (

E) the channels of trade for the goods and services with which the mark is used; (

F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought; (

G) the nature and extent of use of the same or similar marks by third parties; and (

H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. 15U.S.C. § 1125(c)(l)(A)-(H). The district court held Times Mirror established a likelihood of success on the merits of its federal dilution claim against LVSN, because

(1) Times Mirror’s mark “The Sporting News” was famous;

(2) LVSN made commercial use in interstate commerce of the name “Las Vegas Sporting News”;

(3) Times Mirror’s mark became famous before LVSN began using the name “Las Vegas Sporting News” and

(4) LVSN’s use of that name diluted the strength of “The Sporting News” mark. Because Appellant only challenges the first and last, prongs of Times Mirror’s prima facie claim for dilution, we focus our attention on the district court’s findings that “The Sporting News” is a famous mark under the Act and that LVSN’s use diluted the strength of Times Mirror’s mark. III.

LVSN argues that the district court erred in granting Times Mirror a preliminary injunction because its mark “The Sporting News” is not famous and because the court did not make a separate finding as to the distinctiveness of Times Mirror’s trademark. A.

Appellant contends that “The Sporting News” cannot be famous under the Act because it is not famous to the general public, and “substantial case law indicates that marks famous in a specialized market, rather than well-known to the general public, should not be considered ‘famous’ under the federal dilution statute.” Appellant Br. at 23 (citing Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F.Supp.2d 488, 503 (E.D.Va.1999)). However, in the case Appellant cites for its theory, the court did not specifically adopt or reject a niche market theory for fame.

See Washington Speakers Bureau, Inc., 33 F.Supp.2d at 503 (“In the instant case, it is ultimately unnecessary to resolve this still-unsettled question, since even if fame in a niche market were sufficient to establish fame under the Act, consideration of the statutory factors reveals that [the plaintiff] has failed to make even this demonstration.”). Thus, this case is not particularly helpful to our analysis. We recognize that not all courts’ decisions have been precise in addressing the question whether a mark can be famous in a niche market.

The Court of Appeals for the Seventh Circuit has addressed the niche market debate: At an initial glance, there appears to be a wide variation on this issue [of whether a mark famous in a niche market is entitled to protection under the FTDA]. Some cases apparently hold that fame in a niche market is insufficient for a federal dilution claim, while some hold that such fame is sufficient. However, a closer look indicates that the different lines of authority are addressing two different contexts.

Cases holding that niche-market fame is insufficient generally address the context in which the plaintiff and defendant are using the mark in separate markets. On the other hand, cases stating that niche-market renown is a factor indicating fame address a context ... in which the plaintiff and defendant are using the mark in the same or related markets. Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 640 (7th Cir.1999) (internal footnotes omitted); see also Nabisco, Inc. v.

PF Brands, Inc., 191 F.3d 208, 222 (2d Cir.1999) (“[D]ilution can occur where the[defendant’s] use competes directly with the [plaintiffs] as well as where the [defendant] is in a non-competing market. In general, the closer the products are to one another [in the marketplace], the greater the likelihood of both confusion and dilution.”).

The Restatement (Third) of Unfair Competition lends further support to the theory that niche market fame is sufficient to protect a mark from dilution within that market: A mark that is highly distinctive only to a select class or group of purchasers may be protected from diluting uses directed at that particular class or group. For example, a mark may be highly distinctive among purchasers of a specific type of product. In such circumstances, protection against a dilution of the mark’s distinctiveness is ordinarily appropriate only against uses specifically directed at that particular class of purchasers....

Restatement (Third) of Unfair Competition § 25 cmt. e (1995 Main Vol.); see 4 McCarthy, supra, § 24:112. We are persuaded that a mark not famous to the general public is nevertheless entitled to protection from dilution where both the plaintiff and defendant are operating in the same or related markets, so long as the plaintiffs mark possesses a high degree of fame in its niche market. The district court determined that Times Mirror and LVSN competed in the same, or at least significantly related, markets — namely, the sports periodicals market.

LVSN contends that its readers, who essentially are interested in wagering on sports, are distinct from the readers of The Sporting News, who are interested in sports generally. We find such a distinction to be without merit. .Surely many, if not the vast majority, of those individuals who gamble on sports in Las Vegas also follow the sports on which they are wagering. We conclude therefore that the district court did not err by finding that LVSN and Times Mirror shared a common market.

Because a mark can be famous in a niche market where the mark has a high degree of distinctiveness within the market and where the plaintiff and defendant operate within or along side that market, we hold that the district court did not commit an obvious error by holding that the mark “The Sporting News” was famous in its niche and therefore entitled to protection under the FTDA against LVSN’s use of a similar mark in the same market. B.

LVSN also argues that “The Sporting News” is not famous because it is merely a descriptive mark and does not satisfy the eight statutory factors for fame listed in 15 U.S.C. § 1125(c)(l)(A)-(H). Because Appellant disputes the district court’s factual findings with regard to fame and its application of the § 1125(c)(1) fame factors, we review each factor of the district court’s analysis and will not reverse unless the district court committed an obvious error in applying the law or made a serious mistake in considering the proof presented. See A.O. Smith, 530 F.2d at 525.

The district -court concluded that “The Sporting News” mark was famous under § 1125(c)(1) for the following reasons: First, “The Sporting News” is a federally registered trademark. Because a mark does not qualify for federal trademark registration unless it is distinctive, see 15 U.S.C. § 1052, federal registration goes a long way toward proving that the mark has inherent or acquired distinctiveness. Second, “The Sporting News” has been used on the magazine’s banner headline since 1886.

Third, The Sporting Netos is advertised on television, in direct mail solicitations and promotions, and, occasionally, on the radio. In recent years, Times Mirror has spent millions of dollars improving the magazine. Fourth and finally, Times Mirror uses “The Sporting News” trademark throughout the United States and Canada and on the internet. D.Ct. Op. at 8-9 (internal quotation marks, footnotes and citations omitted). We now review the district court’s analysis of the famousness of the mark “The Sporting News” and its application of the eight nonexclusive statutory factors for famousness set forth in

Part II, supra. 1. Applying the first factor under 15 U.S.C. § 1125(c)(1), the district court determined that “The Sporting News” had a high degree of distinctiveness in the sports periodicals market. Although the district court did not elaborate on this finding, its factual conclusion was not erroneous. The degree of acquired or inherent distinctiveness of a mark bears directly upon the issue of whether that mark is famous. See 15 . U.S.C. § 1125(c)(1)(A). The mark “The Sporting News” is not inherently fanciful or creative, and thus the mark does not have a high degree of inherent distinctiveness.

We must therefore examine the degree to which the mark has acquired distinctiveness by gaining secondary meaning over time in the marketplace. To determine whether a trademark has acquired distinctiveness by the attachment of secondary meaning, we examine the following considerations: (1) the length or exclusivity of use of the mark; (2) the size or prominence of the plaintiffs enterprise; (3) the existence of substantial advertising by the plaintiff; (4) established place in the market and (5) proof of intentional copying. I.P. Lund Trading v. Kohler Co., 163 F.3d 27, 42 (1st Cir.1998).

The district court concluded that “The Sporting News,” although not a fanciful or arbitrary trademark, has acquired secondary meaning, and thus distinctiveness in the sports periodicals market, because it has been used in commerce since 1886 and because Times Mirror has expended millions of dollars in advertising and promoting their mark through various media outlets. Times Mirror presented evidence to support several of the considerations for acquired distinctiveness set forth in I.P. Lund.

We therefore conclude that the district court did not err by finding that “The Sporting News” had gained secondary meaning and a high degree of distinctiveness in its market. 2. The district court also found that the second statutory factor—extent and duration of use of the mark—weighed in favor of finding the mark famous, because The Sporting News has been continuously published since 1886. See § 1125(c)(1)(B). We find that the district court did not err in this respect. 3.

The district court found that the third statutory factor—extent and duration of advertising—weighed in favor of finding the mark famous, because Times Mirror presented credible proof of extensive advertising and additional publicity from the Internet. See § 1125(c)(1)(C). Here, too, the district court did not err. 4. The fourth factor is the geographical extent of the trading area in which the mark is used. See § 1125(c)(1)(D). Since 1886, The Sporting News has grown to a circulation of over 540,000 in both Canada and the United States, as well as a recent internet site.

The district court found this evidence supported a finding that the mark was famous and we will not disturb it. 5. The fifth and sixth factors for fame are the degrees of recognition of the mark in its channels of trade and the degree of recognition of the mark in the trading areas, see § 1125(e)(l)(E)-(F), and the seventh factor is the nature and extent of the use of a same or similar mark by third parties, see § 1125(c)(1)(G). The district court did not explicitly address these factors in its opinion. Nevertheless, the FTDA does not require that courts strictly apply every factor in the statute.

See § 1125(c)(1) (providing that “a court may consider factors such as, but not limited to”) (emphasis added). It was not an abuse of its discretion for the court to omit explicit discussion of these factors in its analysis, because the majority of the other fame factors weighed in favor of finding the mark famous. 6. Finally, the district court determined that the eighth factor—whether the mark was registered'—-favored Times Mirror, because “The Sporting News” was registered in 1886. See § 1125(c)(1)(H).

Accordingly, we hold that the district court did not err by concluding that “The Sporting News” mark was famous in the sports periodicals market. IV. As a final argument against the district court’s finding that “The Sporting News” mark was famous, LVSN contends that § 1125(c)(1) requires that a mark be subject to a test for fame and a separate test for distinctiveness under the FTDA. Although some courts agree with Appellant’s contention, we are persuaded that this

interpretation is inconsistent with the language and construction of the statute. The federal dilution-statute must not be considered in vacuo, especially where as here the senior mark is registered in the U.S. Patent and Trademark Office. The trademark registration statute 15 U.S.C. § 1052 emphasizes that a mark that is “merely descriptive” shall not be entitled to federal registration, see § 1052(e), unless the mark acquires secondary meaning. See Scott Paper Co. v. Scott’s Liquid Gold, Inc., 589 F.2d 1225, 1228 (3d Cir.1978). We have already demonstrated in

Part III.B.l, swpra, that “The Sporting News” has acquired secondary meaning and “has become distinctive” in its market. See §. 1052(f) (“[N]othing in this

chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.”). J. Thomas McCarthy, the leading commentator on the subject, states: In the author’s view, there is in [§ 1125(c)(1)] no separate statutory requirement of “distinctiveness,” apart from a finding that the designation be a “mark” that is “famous.” “Distinctiveness” is used here only as a synonym for “fame.” Even if “distinctiveness” is regarded as a separate requirement, it would, in the author’s view, be redundant.

To be a “mark” eligible in the first place for protection under [§ 1125(c)(1)], basic trademark principles dictate that a designation has to be “distinctive” either inherently or through acquisition of secondary meaning. 4 McCarthy, supra, § 24:91 (footnotes omitted).

McCarthy explains the legislative history behind § 1125(c)(l)’s “distinctive and famous” language: The 1987 Trademark Review Commission Report, the genesis of the language contained in the 1996 federal Act, said that the dual mention of both “distinctive and famous” in the introduction to the list of factors was inserted to emphasize the policy goal that to be protected, a mark had to be truly prominent and renowned.

The double-barreled language “distinctive and famous” reflected the goal that protection should be confined to marks “which are both distinctive, as established by federal registration at a minimum, and famous, as established by separate evidence.” The Commission inserted the term “distinctive” as hyperbole to emphasize the requirement that the mark be registered, for without, inherent or acquired distinctiveness, the designation would not have been a mark that should have federally registered in the first place.

The Trademark Review Commission Report reveals that the Commission saw distinctiveness and fame as two sides of the same evidentiary coin which requires widespread and extensive customer recognition of the plaintiffs mark. However, when in the 1995 House amendment, the requirement of federal registration was dropped from the Bill, Congress neglected to also drop the mention of “distinctive” introducing the list of factors. Thus, the word “distinctive” was left floating in the statute, unmoored to either any statutory requirement or underlying policy goal. Id. (footnotes omitted).

Accordingly, we are not persuaded that a mark be subject to separate tests for fame and distinctiveness. In any event, we have- already addressed in separate contexts the famousness and distinetiveness of “The Sporting News.” See supra

Part III.A (fame in niche market); supra

Part III.B.l (distinctiveness acquired from secondary meaning). Having decided that Times Mirror has proved that its mark had gained secondary meaning and a high degree of distinctiveness in the market, there is no necessity for proving an additional test of distinctiveness. See Viacom, Inc. v. Ingram Enterprises, Inc., 141 F.3d 886, 890 n. 6 (8th Cir.1998). V. LVSN argues also it was obvious error for the district court to apply Judge Sweet’s test for “dilution by blurring” found in Mead Data Central, Inc. v.

Toyota Motor Sales, Inc., 875 F.2d 1026, 1035 (2d Cir.1989) (Sweet, J., concurring). “Blurring” in this context means “to . make dim, indistinct or indefinite.” Webster’s Third New International Dictionary 243 (1968). Blurring occurs when the defendant’s use of its mark causes the public to no longer associate the plaintiffs famous mark with its goods or services; the public instead begins associating both the plaintiff and the defendant with the famous mark. See I.P. Lund, 163 F.3d at 47-48; 4 McCarthy, supra, § 24:70.

Dilution by blurring takes place when the defendant’s use of its mark causes the identifying features of the plaintiffs famous mark to become vague and less distinctive. To prove dilution by blurring, the owner of a famous mark must prove that the capacity of its mark to continue to be strong and famous would be endangered by the defendant’s use of its mark. See 4 McCarthy, supra, § 29:94.

To determine whether LVSN’s use blurred, and therefore diluted, Times Mirror’s mark for “The Sporting News,” the district court applied the dilution factors set forth in Judge Sweet’s concurrence in Mead Data-. 1. similarity of the marks 2. similarity of the products covered by the marks 3. sophistication of consumers 4. predatory intent 5. renown of the senior mark 6. renown of the junior mark Mead Data, 875 F.2d at 1035 (Sweet, J., concurring); see D. Ct. Op. at 10-11.

Several courts and commentators have criticized Judge Sweet’s dilution test as the offspring of classical likelihood of confusion analysis and not particularly relevant or helpful in resolving issues of dilution by blurring. See, e.g., 4 McCarthy, supra, § 24:94.1; see also, e.g., I.P. Lund, 163 F.3d at 49-50 (reiterating the criticisms of Judge Sweet’s dilution by blurring test). Instead of outright rejection of the Sweet factors, most courts have improved upon the test’s shortcomings by supplementing the Sweet test with other considerations more pertinent to the issue of dilution.

See, e.g., Nabisco, 191 F.3d at 227 (“We think it would be a serious mistake at the outset of our consideration of the new federal antidilution statute to limit ourselves to these six factors or to any other putatively definitive list.”).

In Nabisco, the Court of Appeals for the Second Circuit articulated a more complete set of factors for dilution by blurring, including actual confusion and likelihood of confusion, shared customers and geographic isolation, the adjectival quality of the junior use, and the interrelated factors of duration of the junior use, harm to the junior user, and delay by the senior user in bringing the action. Id. at 228. Because we consider the dilution analysis in Nabisco helpful, we apply it to facts found by the district court.

The district court concluded that [t]his criticism [of Judge Sweet’s dilution test] notwithstanding, blurring sufficient to constitute dilution requires a case-by-case factual inquiry, and in this case, the Court finds that the Sweet factors are useful in evaluating the likelihood that LVSN’s use of Las Vegas Sporting News lessens the capacity of The Sport ing News to identify and distinguish Times Mirror’s goods or services. D. Ct. Op. at 11-12 (internal quotation marks and citations omitted).

Applying the Sweet factors, the district court concluded that Times Mirror was likely to prevail on its dilution claim based on the following facts: First, the two marks are similar. Not only do the two marks use dominant identical words, i.e., the words “Sporting News,” but they both print those words in red lettering on a single line that spans horizontally across the publication’s cover, which generally features a well-known sports figure. Las Vegas Sporting News and The Sporting News use different type styles, and LVSN outlines its mark in black whereas Times Mirror outlines its mark in black and white.

The lettering thus is distinguishable, but similar nevertheless. Second, both LVSN and Times Mirror use their mark to cover a weekly publication. Third, the undisputed testimony indicated that consumers do not purchase [these] publications in a sophisticated manner, but tend to select their purchase on “impulse,” largely based on the publication cover rather than the content.

Fourth, the similarity of the marks and their placement on the publication cover might be coincidental, but the evidence showed that the publisher of Las Vegas Sporting News was aware of The Sporting Ne%os at the time he changed the name of his periodical. Finally, The Sporting News is well known, whereas Las Vegas Sporting News is not. D. Ct. Op. at 12-13. We hold that the district court did not make an obvious error in applying these facts to Judge Sweet’s factors.

After weighing the dilution factors from Judge Sweet’s Mead Data concurrence as supplemented by the Nabisco analysis, we conclude that the district court did not err by finding that Times Mirror was.likely to prevail on the merits of its dilution claim. VI. LVSN contends also that the district court erred by granting the preliminary injunction, because Times Mirror failed to show that it would suffer irreparable harm if the injunction was not issued.

On this point, the district court stated: In the trademark context, irreparable harm may be shown even in the absence of actual injury to plaintiffs business based on plaintiffs demonstration of a likelihood of success on the merits of its claim. The Court therefore finds that in the absence of an injunction, Times Mirror will suffer irreparable harm. D. Ct. Op. at 13-14 (internal quotation marks and citations omitted). We have held that a lack of control over the use of one’s own mark amounts to irreparable harm. See Opticians Ass’n v.

Independent Opticians, 920 F.2d 187, 195 (3d Cir.1990) (stating that potential damage to a mark holder’s reputation or goodwill or likely confusion between parties’ marks constitute irreparable injury for the purpose of granting a preliminary injunction). LVSN argues that the 15-month delay, beginning when Times Mirror was on notice of the new name of LVSN’s publication and ending when Times Mirror filed suit against LVSN, necessarily shows that Times Mirror’s injury, if any, is not immediate and irreparable.

Thiá argument does not persuade us, because the 15-month delay was attributable to negotiations between the parties. We conclude that the district court did not err by determining that Times Mirror would be irreparably harmed if the preliminary injunction did not issue. * * * We have also considered Appellant’s contentions that the district court erred by determining that the benefits from preliminary injunctive relief outweighed the injury such relief would cause LVSN and that the public interest would be served by granting Times Mirror’s motion for a preliminary injunction.

Neither contention has sufficient merit to warrant further discussion. The judgment of the district court will be affirmed. . See, e.g., Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 216 n. 2 (2d Cir.1999) ("McCarthy's treatise contends that the statute does not include an independent requirement of distinctiveness.... We disagree.”) . The Trademark Review Commission Report, the impetus behind the FTDA, stated: “The same type of evidence which is traditionally used to prove distinctiveness can be used to prove fame.

Although the registrant is not required to prove distinctiveness apart from the import of registration, any additional evidence of distinctiveness will ordinarily be'entitled to substantial weight.” Report of the Trademark Review Commission, 77 Trademark Rep. 375, 459-460 (1987).