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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

TRO Partially Delayed for Impending Trade Show

Posted in Damages

Dental USA, Inc. v. McClellan, No. 13 C 260, Slip OP. (N.D. Ill. Aug. 16, 2013) (Zagel, J.).

Judge Zagel granted in part plaintiff Dental USA’s motion for a temporary restraining order and injunction in this trademark and design patent infringement case.  Dental USA had a trademark for DENTAL USA, as well as POWER ELEVATOR for a tooth extraction machine.  Dental USA also had a design patent for the tooth extraction machine.  Defendants are former employees of Dental USA who allegedly formed United Dental USA, which competed with Dental USA, including by selling a Misch Power Elevator that performs the same function as Dental USA’s Power Elevator.  Dental USA also alleged that defendants improperly used Dental USA’s copyrighted images on defendants’ website.  Dental USA sought an order enjoining defendants from:  1) using the United Dental USA name at upcoming trade shows; 2) selling Misch Power Elevators, along with any related tools; 3) selling infringing products on defendants’ website; and 4) using Dental USA’s copyrighted works on defendants’ website.  Dental USA also sough seizure of counterfeit goods. 

Defendants were barred from using the name United Dental USA at any future trade shows until the Court reached a decision on the merits.  Defendants had already agreed not to use the name at one, upcoming tradeshow in San Francisco.  Defendants were ordered to take down their uniteddentalusa.com website until at least a final judgment was issued in the case. 

The Court held that DENTAL USA and UNITED DENTAL USA were “self-evidently very similar marks.”  Adding “United” did little to change that analysis, particularly because the U in USA was an abbreviation for “united.”  Dental USA also had at least some evidence of actual confusion.  There was also evidence that Defendants were using Dental USA’s part numbers and product images, adding to the likelihood of confusion.  There was also at least some evidence of actual confusion.

The Court noted that Lanham Act violations are presumed to be irreparable harm, and the evidence in this case bolstered that — the similarity of the products and the fact that the parties compete at the same trade shows.

The balance of equities favored Dental USA.  In particular, defendants used two names — United Dental USA and Misch Instruments.  Because Misch Instruments was the dominant name, defendants were unlikely to be harmed by an injunction.

The public had a strong interest in enforcing intellectual property which was somewhat balanced by an interest in healthy competition.  If the Court felt that the injunction would put defendants out of business, it might have changed the analysis, but that was unlikely. 

The Court, however, denied Dental USA’s motion to enjoin sales of the Misch Power Elevator.  But the Court enjoined the use of the MISCH POWER ELEVATOR trademark or any other POWER ELEVATOR mark, for similar reasons.  The Court did, however, delay the injunction until after the San Francisco trade show.  Having enjoined the products so close to that trade show would have seriously harmed defendant’s business.