Harlem Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc.

*1086 AMENDED OPINION

Plaintiff, Harlem Wizards Entertainment Basketball, Inc. (“Harlem Wizards”) is a theatrical basketball organization that performs “show basketball” in the tradition established by the world famous Harlem Globetrotters. Defendant, the Capital Bullets Basketball Club, commonly known as the “Washington Bullets,” is a member team of the National Basketball Association (“NBA”), the world’s preeminent professional basketball league, also a named defendant in this action. The tliird defendant is NBA Properties, Irie. (“NBA Properties”), the entity which holds the licensing rights of the names of NBA member teams.

On Februaiy 22, 1996, the Washington Bullets publicly announced that beginning the 1997-1998 NBA season, the team would formally change its name to the ‘Washington Wizards.” Soon after, Harlem Wizards filed this lawsuit against the Washington Bullets and the other mentioned defendants, alleging that the proposed name change infringed its trademark in violation of Section 43 of the Lanham Act, The New Jersey Trademark Act, N.J.S.A. 56:4 — 1 and common law. Plaintiff seeks a permanent injunction enjoining these defendants from using the trademark WIZARDS and various damage awards. 1

At the outset, plaintiff acknowledges that the issues raised in this action do not conform to the traditional pattern of trademark infringement. Plaintiff, for example, does not allege that if the Washington Bullets team becomes the Washington Wizards a significant number of basketball fans will be confused into believing that the Washington team is actually the Harlem Wizards. Nor does plaintiff assert that it has already lost income as a result of the name change or that the Washington Bullets have, as of yet, earned any profits from their adoption and use of the mark WIZARDS. Instead, plaintiff frames this action as a classic case of “reverse confusion,” a theory of trademark infringement recently recognized by this circuit. See Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 31 U.S.P.Q.2d 1592 (3d Cir.1994). Reverse confusion occurs when a larger, more powerful junior user infringes on the trademark of a smaller, less powerful senior user causing confusion as to the source of the senior user’s goods and services. Id. Because the junior user saturates the market with promotion of the mark as its own, the senior user loses its trademark value and its ability to expand into new markets because consumers assume that the senior user’s goods or services are those of the junior user or that the senior user is the infringing party. Fisons, 30 F.3d at 474-75, 31 U.S.P.Q.2d at 1598 (citing Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960, 964 (6th Cir.1987)). This opinion analyzes the trademark infringement claims pressed by plaintiff in light of the reverse confusion doctrine, other applicable law and the evidence.

THE RECORD

At the bench trial, plaintiff offered seven fact witnesses and one expert witness: Todd Davis, president of the Harlem Wizards since 1980 and son of the team’s founder; Sam Worthen, assistant coach of the Harlem Wizards and a former NBA player; Dwion Brown, Jay Griffin, Claude Henderson, and Sean Tartt, all current members of the Harlem Wizards; Stephanie Ebron, executive director of the Perry School Community Center in Washington, D.C., who hired Plaintiff to perform at a fundraising event in Washington earlier this year; and Dr. Michael Rappeport, who conducted a consumer survey on behalf of plaintiff and gave expert testimony.

Defendants presented six fact witnesses and one expert witness: Stephen Board, manager of interactive events for the NBA; Paula Hanson, vice president of team services for the NBA; Susan O’Malley, president of the Washington Bullets’ franchise; George Mitchell, owner of the Harlem Rockets, a show basketball team; Glen Morrill, assistant director of customer service for Washington Sports and Entertainment, the organization which owns the Washington *1087 Bullets and the Washington Capitals hockey team; Wesley Unseld, general manager of the Washington Bullets; and an expert witness, Dr. Jacob Jacoby, who conducted a consumer survey.

The following are the relevant facts of this controversy. In this case, because such evidence is uneontroverted, its credibility and that of the witnesses from whom it was adduced is absent. However, the parties vigorously challenge the legal significance of this evidence, which the Court reviews together with its findings in the Discussion section of' this opinion.

From its founding in 1962, Harlem Wizards has promoted itself as a show basketball team. In its advertisements and promotional materials, Harlem Wizards frequently compares itself to the better known Harlem Globetrotters, which developed and popularized the show basketball genre. For example, Harlem Wizards bills itself as the “Avis of comedy basketball,” the Harlem Globetrotters clearly being Hertz, and also as the “grassroots version of the Harlem Globetrotters.” Although Harlem Wizards’ biggest market is in the Northeast, the team has traveled throughout the United States and, to some extent, internationally. For the past three years, Harlem Wizards has actually consisted of two teams: one team which actively tours the country and a local team which performs mostly in the New York City metropolitan area.

Harlem Wizards generally performs at high schools, colleges, summer camps, and charitable events. Plaintiff has no home arena where it regularly plays before fans who can regularly attend its games nor does it participate in any formalized basketball league competitions. Unlike a traditional professional competitive sports team, plaintiff does not advertise its services directly to consumers through the media, but instead promotes itself through direct mail solicitation to its typical customers — schools, camps and charities, at trade shows for performance acts, and in “amusement business” trade magazines such as the “Cavalcade of Acts and Attractions.” Schools and other organizations can purchase plaintiff’s services for a flat fee of $3,500.00 and travel expenses, although plaintiff will sometimes accept a smaller fee in exchange for a portion of game proceeds.

In a typical Harlem Wizards “game,” plaintiff plays against a “team” selected by the organization which purchased the team’s services. Opposing team members are not professional athletes but ordinary citizens such as plumbers, teachers, police officers, coaches, politicians and students. A resulting game combines competitive basketball, trick basketball and comedic basketball entertainment. During the first and third quarters of the game, the Harlem Wizards mostly play competitive basketball against their opponents, moderating its level of competitiveness to the opposing team’s athletic prowess. During the second and fourth quarters, the team players engage in comedie antics such as passing the ball between their legs, throwing water at their opponents, rolling down their opponents’ socks and befuddling the other team’s members by handing them the ball and then quickly snatching it away. In addition to these game performances, Harlem Wizards makes frequent paid appearances at fairs, festivals, parties, school assembly programs, pep rallies, and bar mitzvahs. Over the years, the Harlem Wizards team has on at least two occasions played during the half-time intermissions of NBA basketball games.

In connection with its games and appearances, plaintiff sells a variety of merchandise bearing the team’s name. There, spectators can purchase t-shirts, sweatshirts, caps, basketballs, posters, banners, and pictures as souvenirs but none of the merchandise is available in retail stores. Plaintiff has used both the marks HARLEM WIZARDS and WIZARDS as its logo on merchandise and team uniforms. During the mid-1980s, the team used WIZARDS on its uniforms and it plans to use WIZARDS as its mark during its 1996-1997 season. Plaintiff does not have specific color scheme or a design that it uses continuously as part of its logo.

At trial, plaintiff sought to emphasize that show basketball is only part of Harlem Wizards’ repertoire. The record, however, clearly demonstrates that over the last thirty-five years, the team has played few competitive *1088 basketball games without any comedic entertainment, and almost always during international tours. According to Todd Davis, the team has not played a competitive game on American soil since the late 1970s or early 1980s. Plaintiff’s witness Claude Henderson, who first joined the Harlem Wizards in 1967, testified that the team played its last fully competitive game in 1979.

Washington Bullets is a NBA member team owned and operated by Capital Bullets Basketball Club. Founded in 1961, the franchise originated in Chicago, where it was first known as the Chicago Packers and later, the Chicago Zephyrs. It then moved to Baltimore, Maryland in 1963 and became known as the Baltimore Bullets. In 1973, the team moved to Washington, D.C. and changed its name to the Capital Bullets. The following year, the team adopted the name the Washington Bullets.

The NBA, which celebrates its fiftieth anniversary this year, is made up of twenty-nine member teams that play annually against each other from November until June. The league is divided into two conferences, Eastern and'Western, and four divisions, Atlantic, Midwest, Central and Pacific. The NBA has strict rules governing the games as well as player conduct on and off the court. As an NBA franchise, the Bullets play eighty-two games — forty-one at “home” and forty-one “away” — against other NBA member teams from November until mid-April. Games are divided into four twelve minute quarters. Following regular season play, sixteen teams compete in the NBA championship playoffs.

Fans can regularly attend Washington Bullets 'games or watch them on television. NBA basketball is promoted directly to its fans through television advertisements, regular television programming such as “Inside Stuff” and “Inside NBA,” and other media sports coverage. The NBA also has a series of grants, licenses to manufacturers to produce various products bearing the NBA logo and those of its twenty-nine member teams. Specific labeling and tagging is used to identify all NBA and NBA team products; the NBA logo of a ball-dribbling player appears on all of its products. NBA merchandise is widely available for sale in retail outlets throughout the United States.

For the past few years, Abe Pollin, owner of the Washington Bullets, had been considering changing the name of the franchise out of concern that the term “Bullets” had a negative connotation. In January 1995, the Washington Bullets first informed the NBA that it was considering changing the team name, logo and uniform beginning the 1997-1998 season. In August 1995, Susan O’Malley, president of the Washington Bullets, sent the NBA’s Paula Hanson a letter which listed eight possible new names for the team, including the name WIZARDS. Hanson forwarded the letter to Kathryn Barrett, the NBA’s in-house trademark counsel, and requested that she arrange for a preliminary trademark search to determine if for any reason any of the names listed were not be available for use. A few days later Hanson forwarded the preliminary search results to O’Malley. The use of WIZARDS was not interdicted.

Along with its name change, the Washington Bullets unveiled a new anti-violence initiative that concentrated on Washington, D.C. junior high and middle schools. To publicize the name change and anti-violence initiative, the Washington Bullets staged a contest in conjunction with Boston Market Restaurants, “The Washington Post,” NBC4, the local NBC affiliate and other media sponsors, inviting fans to take part in the name-change process. The contest, called “Boston Market Renames the Bullets,” occurred in two phases. From November 1, 1995 until December 15, 1995, fans could suggest new names for the team by completing entry ballots at Boston Market restaurants. Then, from early February until February 22,1996, fans could vote on one of five names selected from the earlier submissions selected by a “Blue Ribbon Panel” by calling a 900 telephone number. The contest culminated with' a live network announcement of the winning name by Abe Pollin on February 22, 1996.

By January 1996, the Blue Ribbon Panel had selected five names out of approximately 3,000 to be included during the second phase of the contest: Washington Dragons, Washington Express, Washington Sea Dogs, *1089 Washington Stallions, and Washington Wizards. O’Malley forwarded these five names to Hanson. Hanson then sent these names to Barrett who arranged for full trademark searches to be conducted on every name except the Washington Dragons, a mark for which the NBA had previously filed a trademark application in anticipation that another NBA team might want to adopt it. Full trademark applications were filed for Washington Sea Dogs, Washington Stallions, Washington Express, and Washington Wizards. The firm of Thompson and Thompson conducted the trademark searches on January 29,1996 and mailed them to the NBA on February 2,1996. The trademark search for the mark WIZARDS retrieved 575 potential references and sixty-three were included for the NBA’s review. Harlem Wizards was among those entities listed and plaintiffs services were described as professional sports. None of the names submitted by defendants was discarded as the result of the trademark searches.

After the Washington Bullets announced that its new name would be the Washington Wizards on February 22, 1996, the NBA in-house creative services designed several different potential logos for the team. As of yet, no final decision has been made regarding a final logo but defendants claim that the final logo will be unique, and like all other NBA logos, have a distinct color scheme. On February 8 and February 29, 1996, Plaintiff filed trademark applications first for HARLEM WIZARDS and then WIZARDS.

Plaintiff elicited testimony that sought to prove that defendants adopted the name Washington Wizards in bad faith. For example, Stephen Board, Manager of Interactive Events for the NBA, hired Sean Tartt, a Harlem Wizards’ player, to participate in a slam dunk exhibition in San Antonio, Texas earlier this year. Tartt testified that he told Board that he played for the Harlem Wizards. Board acknowledged that he spoke with Todd Davis who identified himself as Tartt’s coach at the Harlem Wizards and who asked him whether he wanted to hire any other Harlem Wizards’ players. Plaintiff also introduced testimony that Davis had contacted Glenn Morrill in 1993 and 1994 to see if he would be interested in hiring Harlem Wizards to perform at NBA half-time programs and elicited testimony from Wesley Unseld, General Manager of the Washington Bullets, that he had first heard of the Harlem Wizards during the late 1960s or early 1970s.

Evidence of Actual Confusion and Likelihood of Confusion

1. Individual Testimony

At trial, plaintiff offered testimony by two current Harlem Wizards’ players regarding incidents that purportedly showed the existence of actual consumer confusion between the Harlem Wizards and Washington Wizards. Dwion Brown testified that while he was in Baltimore, Maryland and Washington, D.C. strangers approached him because they thought that the Harlem Wizards’ shirt that he was wearing was actually a Washington Wizards’ shirt. Claude Henderson testified regarding several incidents of actual confusion. First, he testified that in April 1996, four people told him that they thought he was a member of the Washington Wizards when he played at the Perry School Community Service Center fundraiser at Gonzaga High School in Washington, D.C. In July 1996, when he made an appearance at a children’s camp with Terry Harris, a Harlem Wizards’ player who happens to be seven feet and five inches tall, several young campers remarked to him that they did not realize that the Washington Bullets had two of the tallest players in the NBA. Henderson also testified that when he played at another community center several youngsters asked him whether the Wizards would be playing in the NBA in the coming year. Stephanie Ebron, Executive Director of the Perry School Community Service Center, an organization that hired plaintiff to perform at a fundraising event on April 29, 1996 in Washington, D.C., testified that more than twenty people who attended or expressed interest in attending the fundraiser had thought that the Washington Bullets were playing and not the Harlem Wizards. Before plaintiff performed, Ebron told Todd Davis about the confusion and he brought along questionnaires that were distributed at the game in order to document incidents of actual confusion.

*1090 2. Survey Evidence

Both parties commissioned consumer surveys and presented their results at trial. Plaintiff offered results from two related surveys conducted by Dr. Michael Rappeport of RL Associates in May 1996 to support its assertion that the Washington Bullets’ name change would result in the likelihood of confusion between the Harlem Wizards and the Washington Wizards. Dr. Rappeport conducted one survey in Northern New Jersey and the other in the Washington, D.C. area. Combined, the 309 respondents who participated in both studies were aged eighteen or older and had either attended a basketball event or watched a televised basketball event at least twice in the past year. The two surveys were a shirt study and a name study. The shirt study involved showing respondents a series of four shirts: (1) a red Chicago Bulls’ number 23 shirt, (2) a white “Champion” shirt, (3) a blue New York Knieks’ shirt and (4) a Harlem Wizards’ shirt. Upon showing a respondent each shirt, the interviewer asked the respondent whether she or he had ever seen or heard of the team before. If the respondent answered affirmatively, the interviewer then asked the respondent what, if anything, she or he knew about the team.

Six of the fifty-nine New Jersey respondents who participated in the shirt survey recognized the Harlem Wizards’ shirt as the new name of the Washington Bullets. Six or seven New Jersey respondents identified the shirt as belonging to the Harlem Wizards. Out of 100 Washington D.C. respondents to the shirt survey, fifty-nine identified the Harlem Wizards’ shirt as the new name of the Washington Bullets. None of the Washington, D.C. respondents identified the shirt as belonging to the Harlem Wizards.

For the name survey, seventy-five respondents were interviewed in Northern New Jersey and seventy-five respondents were interviewed in the Washington, D.C. area. During each interview, an interviewer showed each respondent one of five ■ cards marked with the following names printed in capital letters: Orlando Magic, Harlem Magic, Harlem Rockets, Harlem Wizards and Washington Wizards. The interviewer then asked the respondent whether he or she had heard of or ever seen this team and, if they had, what, if anything, did they know about it. If the respondent was unfamiliar with the team, the interviewer asked the respondent what he or she thought a team with such a name would be like. None of the respondents identified the cards marked Harlem Wizards.

In addition, Dr. Rappeport concluded, based on the survey results, that the service mark WIZARDS was not descriptive because the majority of people interviewed were unable to look at the mark and discern that it represented a basketball team. Dr. Rappeport also commented that defendants’ survey also supported a finding that the service mark WIZARDS is not descriptive since so few people were able to associate WIZARDS with basketball.

Defendants commissioned their own survey by Dr. Jacob Jacoby to prove that no likelihood of confusion exists between the two teams and that none is likely in the future. Defendants’ survey interviewed 365 respondents in sixteen cities across the country. All of the respondents were aged fourteen or older and had watched an NBA, college, high school or some other type of organized basketball game or exhibition during the last twelve months. Respondents were randomly separated into three groups and each group viewed nine t-shirts. Eight of the t-shirts were the same for each group. The only difference across the groups was that Group One saw a “Harlem Wizards” t-shirt, Group Two saw a ‘Wizards” t-shirt and Group Three saw a “Harlem” t-shirt. All respondents were then asked questions to determine to what extent, if any, they recognized these names. Those who recognized the names were asked follow-up questions to determine if they might be confused between the Harlem Wizards and the Washington Wizards.

Only three to five percent of all people questioned associated the mark WIZARDS with plaintiff. Survey results also established that less than two percent of the public were confused between the marks HARLEM WIZARDS and WASHINGTON WIZARDS and that less than three percent were con *1091 fused between the marks WIZARDS and WASHINGTON WIZARDS.

DISCUSSION

Standard for Injunctive Relief

The “grant of injunctive relief is an extraordinary remedy which should be granted only in limited circumstances.” FM 103.1, Inc. v. Universal Broadcasting of New York, Inc., 929 F.Supp. 187, 193 (D.N.J.1996) (quoting Frank’s GMC Truck Center, Inc. v. General Motors Corp., 847 F.2d 100, 102 (3d Cir.1988)); Church & Dwight Co., Inc. v. S.C. Johnson & Son, Inc., 873 F.Supp. 893, 903 (D.N.J.1994) (same). The standard for granting • a permanent injunction is nearly identical to that of a preliminary injunction except that the movant must show actual success on the merits rather than simply the likelihood of success on the merits. Church & Dwight Co., 873 F.Supp at 903. In determining whether to grant a permanent injunction, a court must consider (1) whether the moving party has demonstrated success on the merits, (2) the probability of irreparable injury to the moving party, (3) the potential for harm to the non-moving party; and (4) the public interest if applicable. See Church & Dwight Co., 873 F.Supp. at 903; Fechter v. HMW Indus., Inc., 879 F.2d 1111, 1116 (3d Cir.1989).

I

Trademark Infringement

Plaintiff claims trademark infringement under Section 43(a) of the Lanham Act, The New Jersey Trademark Act (N.J.S.A. 56:4-1) and common law. N.J.S.A. 56:4-1 is the statutory equivalent of Section 43(a)(1) of the Lanham Act and the analysis for trademark infringement under New Jersey common law is the same as under Section 43(a)(1). See, e.g., FM 103.1, Inc. v. Universal Broadcasting of New York, Inc., 929 F.Supp. 187, 198 (D.N.J.1996). Thus, the Court’s discussion with respect to plaintiff’s Section 43(a) claim addresses its state law claims as well.

Plaintiff relies on the reverse confusion theory of trademark infringement first recognized' by the Third Circuit Court of Appeals in Fisons Horticulture, Inc. v. Vigoro Industries, Inc., 30 F.3d 466, 474-75, 31 U.S.P.Q.2d 1592, 1598 (3d Cir.1994). In an ordinary trademark infringement ease, the alleged trademark infringer takes advantage of the reputation and good will of a senior trademark owner by adopting a similar or identical mark. Id. at 473-74, 31 U.S.P.Q.2d at 1597-1598. In contrast, reverse confusion arises when a larger, more powerful entity adopts the trademark of a smaller, less powerful trademark user and thereby causes confusion as to the origin of the senior trademark user’s goods or services. See, e.g., Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir.1992), cert. denied, 507 U.S. 1042, 113 S.Ct. 1879, 123 L.Ed.2d 497 (1993) (finding that Quaker Oats Co.’s use of “Thirst Aid” for its product Gatorade infringed on the registered “Thirst-Aid” trademark owned and formerly used by small Vermont beverage company); Banff, Ltd. v. Federated Dep’t Stores, Inc., 841 F.2d 486 (2d Cir.1988) (enjoining Bloomingdales Department stores from using mark “B-Wear” on clothing and in its stores because it infringed on the unregistered trademark “Bee-Wear” belonging to smaller women’s clothing marketer). Because the junior user is a larger company with greater financial ability and trademark recognition in the marketplace, it can. easily overwhelm the senior user by flooding the market with promotion of its similar trademark. Fisons, 30 F.3d at 474-75, 31 U.S.P.Q.2d at 1598. The strength of the junior user’s promotional campaigns leads consumers to believe that the senior user’s products derive from that of the junior user or that the senior user is actually the trademark infringer. Id. As a result, the senior user “loses the value of the trademark — its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets.” Id. (quoting Ameritech, Inc. v. American Information Technologies Corp., 811 F.2d 960, 964 (6th Cir.1987)). The federal courts and legal commentators have observed that failure to recognize reverse confusion would essentially immunize from unfair competition liability companies that have well established trade names and the financial ability to advertise a senior mark taken from smaller, less power *1092 ful competitors. See id; Big O Tire Dealers, Inc. v. Goodyear Tire & Rubber Co., 561 F.2d 1365, 1372 (10th Cir.1977).

The Lanham Act protects “an owner’s interest in its trademark by keeping the public free from confusion as to the source of goods and ensuring fair competition,” and extends to protect trademark owners against reverse confusion trademark infringement. Fisons, 30 F.3d at 474-75, 31 U.S.P.Q.2d at 1598 (internal quotations omitted). Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) provides that:

Any person who, on or in connection with any goods or services ... uses in commerce any word, term, name, symbol or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services or commercial activities — shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.

15 U.S.C. § 1125(a)(1).

Federal Courts have long recognized that Section 43(a)(1) “protects unregistered service marks in the same manner and to the same extent as registered marks” out of acknowledgement that trademark rights emanate from use and not only registration. FM 103.1, Inc., 929 F.Supp. at 194. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 2757, 120 L.Ed.2d 615, reh’g denied, 505 U.S. 1244, 113 S.Ct. 20, 120 L.Ed.2d 947 (1992); accord Time Mechanisms, Inc. v. Qonaar Corp., 422 F.Supp. 905, 911 (D.N.J.1976). To prevail on a trademark infringement claim under Section 43(a) of the Lanham Act, a plaintiff must establish that: (1) the mark is valid and legally protectable; (2) the plaintiff owns the mark; and (3) the defendant’s use of the mark to identify goods or services is likely to create confusion concerning the origin of such goods and services. Fisons, 30 F.3d at 472-73, 31 U.S.P.Q.2d at 1596. Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 291 (3d Cir.), cert. denied sub nom., Altran Corp. v. Ford Motor Co., 502 U.S. 939, 112 S.Ct. 373, 116 L.Ed.2d 324 (1991) (citing Opticians Ass’n of America v. Independent Opticians of America, 920 F.2d 187, 192 (3d Cir.1990)).

A plaintiff demonstrates that a mark is valid and legally protectable when a mark is federally registered and “has become ‘ineontestible’ under the Lanham Act.” 15 U.S.C. §§ 1058 and 1065. Fisons, 30 F.3d at 472-73, 31 U.S.P.Q.2d at 1596. However, if the mark has not been federally registered, or if a registered mark has not achieved incontestability, then the mark is valid and legally protectable “if the public recognizes it as identifying the claimant’s ‘goods or services and distinguishing them from those of others.’ ” A .J. Canfield Co. v. Honickman, 808 F.2d 291, 296 (3d Cir.1986) (quoting 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15.1 at 657 (2d ed. 1984)). Such identification first depends on whether a plaintiff can establish that an unregistered mark is inherently distinctive or has achieved secondary meaning — consumer recognition that the mark identifies the product as originating from a particular source. See Fisons, 30 F.3d at 472-73, 31 U.S.P.Q.2d at 1596; Ford Motor Co., 930 F.2d at 291.

Trademark law evaluates marks along a continuum of distinctiveness, from the nondistinetive to the inherently distinctive: Marks are (1) generic, (2) descriptive, (3) suggestive or (4) arbitrary, or fanciful. A generic term functions as the common descriptive name of a class of products and are generally not legally protectable. See, e.g., A .J. Canfield, 808 F.2d at 292 (“chocolate fudge” is generic when used in connection with chocolate fudge flavored soda); Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73, 29 U.S.P.Q.2d 296 (1938) (“shredded wheat” is generic term when used for a breakfast cereal). A descriptive mark immediately conveys a eharac *1093 teristic, ingredient or quality of the article or service it identifies and acquires protected status only if the plaintiff can demonstrate that the goods or services have achieved secondary meaning. See, e.g., Transfer Print Foils, Inc. v. Transfer Print America, Inc., 720 F.Supp. 425, 12 U.S.P.Q.2d 1753 (D.N.J.1989) (“Transfer Print” is descriptive for surface decorating machines, related technical machines, material and related technical services to distributors and manufacturers who require designs or words placed on their products). Suggestive, arbitrary and fanciful marks are afforded the highest level of trademark protection. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir.1979). A suggestive mark requires the consumer to use imagination, thought, or perception to determine the character of the goods or service. A.J. Canfield, 808 F.2d at 297. See, e.g., Taj Mahal Enterprises, Ltd. v. Trump, 745 F.Supp. 240 (D.N.J.1990) (“Taj Mahal” suggestive of an Indian restaurant). An arbitrary mark employs terms that do not describe or suggest any attribute of goods or services sold and a fanciful mark uses unfamiliar language coined expressly for the purpose of trademark protection. See Sunenblick v. Harrell, 895 F.Supp. 616, 624 (S.D.N.Y.1995), aff'd, 101 F.3d 684 (2d Cir.1996), cert. denied, — U.S. —, 117 S.Ct. 386, 136 L.Ed.2d 303 (1996).

As a threshold matter, this Court must determine whether the mark WIZARDS is inherently distinctive, that is, whether it can be defined as suggestive, arbitrary or fanciful. At the outset, the Court acknowledges that assessing a mark’s distinctiveness is not an “exact science” and that the subtle distinctions between these categories can be slippery and elusive. Banff Ltd, 841 F.2d at 489. Nonetheless, a mark elicits a particular and quantifiable consumer reaction. Plaintiff asserts that the mark WIZARDS is an arbitrary or fanciful term and thus subject to the highest level of trademark protection. According to plaintiff, the term WIZARDS has no specific meaning when used in connection with basketball services, apparel, or related merchandise. In opposition, defendants advance several arguments. First, defendants argue that plaintiffs mark, to the extent that it has acquired one, consists only of the term HARLEM WIZARDS in its entirety. Defendants stress that the term “Harlem” is an essential element of plaintiffs mark and identity as a show basketball team. In support of this argument, they note that, several show basketball teams have sought to capitalize on the genre established by the Harlem Globetrotters by adopting “Harlem” as part of their appellation. Defendants also argue that plaintiff, since its inception, has only sporadically used the term WIZARDS alone as a mark and then only in contexts where the consumer already knows that such materials pertain to the Harlem Wizards. Second, defendants claim that the mark WIZARDS is not inherently distinctive because it describes the nature of plaintiffs services, the “trickery,” “wizardry” and “magic” of its basketball performances. As a descriptive mark, plaintiff would have to demonstrate that it has achieved secondary meaning, an unlikely proposition because its consumer recognition level is virtually nonexistent as evidenced by the survey results presented by both parties.

This Court finds that although plaintiff has used the mark HARLEM WIZARDS more consistently than the mark WIZARDS over the years, its use of the mark WIZARDS has nevertheless been sufficient to establish trademark rights. The Court, however, finds that plaintiffs mark is suggestive rather than, as plaintiff asserts, arbitrary or fanciful. The term WIZARDS does not describe accurately plaintiffs services because regardless how talented plaintiffs team members may be, they do not perform magic or even magically. Rather, the mark WIZARDS is accurately defined as suggestive because it asks the consumer to fantasize, to use his or her imagination to connect the idea of magic and the supernatural with show basketball. Because the Court finds that the mark WIZARDS is inherently distinctive, it now turns to the question of whether a likelihood of confusion exists between both parties’ use of the mark.

II

Plaintiff bears the burden of establishing that defendants’ concurrent use of the *1094 mark WIZARDS will create a likelihood of confusion among basketbal