IP Law Daily, TRADEMARK—S.D.N.Y.: Similar weather and traffic marks support trademark infringement claims against Hearst Corporation, (Sep 30, 2026)

By George Basharis, J.D.

Hearst’s FIRST WARNING WEATHER and TRAFFIC marks are sufficiently similar to Gray Local Media’s registered FIRST ALERT marks to support plausible allegations of consumer confusion.

The similarity between competing television stations’ weather and traffic marks, combined with their use for essentially the same services in the same markets, allows Gray Local Media to pursue trademark claims against Hearst, a media corporation, over its FIRST WARNING WEATHER and FIRST WARNING TRAFFIC branding. Although Gray did not allege actual consumer confusion, the marks’ similarity and direct market overlap were enough to plausibly show a likelihood of confusion under the Lanham Act (Gray Local Media, Inc. v. The Hearst Corp., No. 1:25-cv-05393-MKV (S.D.N.Y. Sep. 26, 2026)).

The U.S. District Court for the Southern District of New York rejected Hearst’s effort to dismiss Gray’s trademark infringement and unfair competition claims. The decision leaves Hearst to respond to allegations that its branding infringes Gray’s registered FIRST ALERT WEATHER and FIRST ALERT TRAFFIC marks. A related claim under New York General Business Law Section 349 was dismissed because Gray did not allege the additional public harm required under the statute.

From alert to warning. Gray provides local news, weather, and traffic reporting throughout the United States. It has used FIRST ALERT WEATHER for weather reporting since 2005 and FIRST ALERT TRAFFIC for traffic reporting since 2006. Both marks are registered and have become incontestable.

Hearst operates in similar local markets and previously entered licensing agreements allowing limited use of Gray’s marks in some of them. All but one of the agreements has expired. As the licenses ended, Hearst began using FIRST WARNING WEATHER and FIRST WARNING TRAFFIC in the same or similar contexts. Hearst later sought to register FIRST WARNING WEATHER, but the U.S. Patent and Trademark Office rejected its application.

Gray also challenged Hearst’s continued use of the FIRST WARNING marks, asking the company in October 2023 to stop using them. According to Gray, Hearst declined and expanded its use. Hearst also declined a similar request from Gray’s counsel in June 2025.

Gray then sued for trademark infringement and unfair competition under the Lanham Act, along with claims under Delaware and New York law. Hearst sought dismissal, primarily arguing that Gray had not plausibly alleged a likelihood of consumer confusion. Hearst also argued that Gray was attempting to monopolize ordinary English words.

Marks show similarity. Hearst’s challenge to the federal claims turned on whether Gray had plausibly alleged that the competing marks were likely to cause consumer confusion. Gray’s registered and incontestable marks satisfied the threshold requirement of valid marks entitled to protection, so the analysis focused on likelihood of confusion. The district court noted that the Second Circuit assesses the likelihood of confusion under the eight Polaroid factors, which include the strength and similarity of the marks, market proximity, actual confusion, bad faith, and consumer sophistication.

Gray’s marks were suggestive rather than merely descriptive because they do not immediately identify the precise services with which they are associated. FIRST ALERT WEATHER and FIRST ALERT TRAFFIC could describe several types of services beyond television weather and traffic reporting. At the same time, the marks suggest an important characteristic of Gray’s services: that they will provide weather or traffic information first and urgently.

The suggestive nature of the marks established their inherent distinctiveness, and their incontestable registrations carried a conclusive presumption of distinctiveness. However, neither point established that the marks had acquired significant recognition among consumers. Because Gray did not allege facts showing that kind of commercial strength, the strength factor was neutral.

By contrast, the similarity of the competing marks weighed in Gray’s favor. Although ALERT and WARNING neither look nor sound alike, the marks are otherwise identical. ALERT and WARNING also convey similar meanings, which could add to consumer confusion. That similarity was particularly significant because the court identified ALERT as the most distinctive single element of Gray’s marks.

Hearst argued that its accompanying station branding distinguished the marks despite those similarities. According to Hearst, using local station call signs alongside the FIRST WARNING marks significantly reduced or eliminated any likelihood of confusion. The district court found that argument premature because the complaint did not establish whether consumers recognize call signs such as NBC 5, WESH 2, ABC 25 WPBF, or WDSU 6 as house marks or associate them specifically with Hearst. Discovery was necessary to resolve that question. At the pleading stage, the call signs did not undermine Gray’s allegations involving marks the decision characterized as “almost synonymous.”

Same markets matter. Market proximity also favored Gray. The parties agreed that they operate in the same markets, making it unnecessary to consider whether Gray was likely to enter markets already occupied by Hearst. Because the companies provide essentially the same services to the same customer base, their offerings are directly related and proximate.

Hearst countered that Gray was effectively seeking a monopoly over the use of “first” together with any synonym for “alert.” The district court rejected that argument as a basis for disregarding the parties’ market proximity, concluding that the Polaroid analysis required the factor to favor Gray.

Actual confusion did not weigh in either party’s favor. Although Gray did not identify any instances of consumer confusion despite years of concurrent use, such evidence is not required at the pleading stage. Therefore, the court treated the factor as neutral.

Bad faith also was neutral. Gray alleged that Hearst adopted the FIRST WARNING marks as its licenses to use the FIRST ALERT marks expired, meaning Hearst already knew of Gray’s marks. That knowledge, coupled with the strong similarities between the marks, could support an inference of deliberate copying. However, prior knowledge can also indicate good faith if a company adopts a new mark believing it is sufficiently different to avoid confusion. Because Gray’s allegations supported either inference, the bad-faith factor favored neither side.

Consumer sophistication was neutral as well. Gray’s characterization of viewers as “low-consideration” consumers did not establish their level of sophistication, while Hearst had not shown that viewers would understand the source-identifying significance of local station call signs.

Confusion plausibly alleged. Balancing the factors, the similarity of the marks and the parties’ direct competition in the same markets carried particular weight. The remaining relevant factors were neutral. Together, those findings plausibly supported a likelihood of consumer confusion, allowing Gray’s Lanham Act claims to continue.

Gray’s New York consumer-protection claim did not survive alongside its trademark claims. Trademark infringement alone does not support a claim under General Business Law Section 349 without a specific and substantial injury to the public beyond ordinary trademark infringement, the court explained. Because Gray alleged no additional public harm, the district court dismissed that claim. Gray’s remaining claims survived.

The Case is No. 1:25-cv-05393-MKV.

Judge: Vyskocil, M.

Attorneys: Paramjeet S. Sammi (Latham & Watkins LLP) for Gray Local Media, Inc. Jonathan R. Donnellan, Hearst Corp., for The Hearst Corp.

Companies: Gray Local Media, Inc.; The Hearst Corp.

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