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Chicago IP Litigation Tracking Northern District of Illinois IP Cases

Tag Archives: Temporary Restraining Order

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.

Preliminary Injunction Entered Against Defendants Failing to Appear

Posted in Trial

Algierz, Inc. v. The Source of Apparel, Inc., et al., No. 12 C 5361, Slip Op. (N.D. Ill. July 13, 2012) (Chang, J.).

Judge Chang ruled upon plaintiff Algierz’s motion to extend temporary restraining orders (“TROs”) and for preliminary injunctions (“PIs”) in this patent case as follows:

  • The Court denied to extend the TRO and denied a PI as to defendant Source of Apparel and an individual defendant because there was insufficient evidence that those defendants knew of the asserted direct infringement.  The defendants therefore, could not be liable for contributory infringement.
  • As to defendant Selah USA and another individual defendant, the TRO was extended based upon evidence of direct infringement.  The Court deferred ruling upon the PI until expiration of the TRO to give the defendants time to defend against the PI and to finalize settlement.
  • Defendant Hip Hop Trading LLC and two other defendants, each of whom did not appear, had a PI entered.  They were given leave to file motions to dissolve the PIs upon their “prompt appearance.”
  • The Court ordered Algierz and defendant D&J International and another defendant to submit their agreed, proposed PI for the Court’s consideration.

Individual Defendant May Not Appear Pro Se on Behalf of His Related Party Co-Defendants

Posted in Pleading Requirements

Bernina of Am., Inc. v. Imageline, Inc., No. 10 C 44917, Slip Op. (N.D. Ill. Aug. 18, 2010) (Shadur, Sen. J.).

Judge Shadur sua sponte issued an order in response to defendant’s response to plaintiff’s motion for a temporary restraining order and a preliminary injunction. The Court cautioned that even though individual defendant Riddick was the sole officer and employee of each co-defendant, the corporate defendants required representation because a corporation cannot represent itself pro se.

The Court gave defendants time to identify whether Riddick was a lawyer and to find new counsel, if not. Until that time, the corporate defendants were treated as non-responding parties to plaintiff’s injunction motions.

Close Balance of Harms Prevents TRO, but Expedited Discovery Granted

Posted in Legal News

Scala’s Original Beef & Sausage Co., LLC v. Alvarez d/b/a Michaelangelo Foods, No. 09 C 7353 (N.D. Ill. Dec. 22, 2009 (Dow, J).

Judge Dow denied plaintiff Scala’s motion for a temporary restraining order ("TRO") in this Lanham Act case regarding Scala’s and Scala’s Preferred marks for giardiniera.

Likelihood of Success

Scala’s made a "fairly strong showing" that defendants’ (collectively "Michaelangelo Foods") labels using the marks were likely to cause consumer confusion. Scala’s also met its burden to show some likelihood of success that its trademark license to Michaelangelo Foods was terminable at will, even though the license lacked a termination provision. Finally, Scala’s showed some likelihood of success as to its argument that licensee estoppel barred Michaelangelo Foods’ challenges to Scala’s marks. The Court noted, however, that at the early stages of the litigation it appeared that Michaelangelo Foods might be able to overcome licensee estoppel upon equitable grounds.

Irreparable Harm

Irreparable harm is presumed in trademark cases, and Michaelangelo Foods did not challenge the presumption. Instead, Michaelangelo Foods argued that Scala’s harm was not sufficiently immediate because Scala’s was not selling competing products. But the fact that Scala’s did not make a product, did not eliminate the harm. Scala’s was harmed by not being able to control Michaelangelo Foods’ quality. Additionally, Scala’s was using the marks with other products.

But the Court noted that the facts of this case mitigated the strength of Scala’s irreparable harm. In particular, Scala’s licensed the marks at least in part because Scala’s was unable to consistently pay suppliers or deliver products to its customers. And Michaelangelo Foods took substantial steps to fix those relationships, thereby enhancing the marks’ value.

Balance of Harm

The Court held that Michaelangelo Foods would be harmed by a TRO. A TRO would allow the sale of existing inventory, but individual defendant invested a significant portion of his savings into the business and the business had relatively low profits. A TRO would, therefore, likely do substantial damage to Michaelangelo Foods’ finances. This financial harm combined with Michaelangelo Foods’ efforts to rebuild the marks and the business tipped the balance of harm in Michaelangelo Foods’ favor.

Conclusion

While it was a close call, the Court denied a TRO. In view of the importance of a decision to both parties, the Court set an expedited discovery, briefing and hearing schedule for Scala’s preliminary injunction motion.

Protest/Parody Use of Mark is Fair Use

Posted in Legal News

Lettuce Entertain You Enters., Inc. v. Leila Sophia AR, LLC d/b/a Lettuce Mix, No. 09 C 2582, Slip Op. (N.D. Ill. Jun. 8, 2009) (Lefkow, J.).

Judge Lefkow denied plaintiff Lettuce Entertain You Enterprises’ ("LEYE") motion for a temporary restraining order against defendants’ use of a banner reading "Let us be!" flanked by images of lettuce heads (the "Banner") on a building in which defendants plan to open a salad bar restaurant to be named "Lettuce mix."  LEYE filed this suit seeking the removal of a "Lettuce mix" sign (the "Sign") defendants placed on the same building.  As an effort at resolving the dispute, defendants replaced the Sign with the Banner.  After the Banner appeared, LEYE made the instant motion for a temporary restraining order, arguing that the Banner infringes LEYE’s LETTUCE trademarks used in connection with LEYE’s operation of more than seventy restaurants throughout the Chicago area and nationwide.  The Court held that LEYE did not meet its burden as to the first prong of the TRO analysis, LEYE’s likelihood of success on the merits, and, therefore, the Court did not consider the remaining two elements, whether an adequate remedy at law existed and whether LEYE would have been irreparably harmed if the injunction was not granted. 

The Court held that defendants’ Banner was a fair use of LEYE’s trademarks and that, therefore, LEYE did not have a likelihood of success on the merits of its Lanham Act claims.  Defendants were not using the Banner’s combination of the phrase "Let us be!" (which the parties agreed sounded like "Lettuce") and the lettuce images as a service mark.  "Lettuce mix" may have been a service mark, but "Let us be!" and the lettuce images were used to draw attention to this case and were meant to say "Hey, Lettuce Entertain You, leave us alone!"  And the use of the "let us"/lettuce pun was intended to parody LEYE’s use of "lettuce" in place of "let us" throughout LEYE’s website and other materials.  The Court explained that the Banner was not used to identify defendants’ services, but to make a statement of protest:

The [B]anner thus conveys a message from its authors, the proprietors of the unopened restaurant, to the owners of the LETTUCE marks, essentially saying, "Leave us alone!"  Even if potential customers viewing the [B]anner do not know or learn of the dispute, it is clear at first glance that the banner is being used to communicate a message of protest.

The Court also noted that this decision had no bearing upon the question of whether defendants’ Lettuce mix restaurant name infringed LEYE’s LETTUCE marks.

Blockshopper Stipulates to Temporary Restraining Order

Posted in Legal News

Jones Day v. BlockShopper.com, No. 08 C 4572, Order (N.D. Ill. Aug. 18, 2008) (Darrah, J.).*

Judge Darrah entered the parties stipulated temporary restraining order ("TRO").  Plaintiff Jones Day sued defendants, BlockShopper.com and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claimed service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition and sought a TRO – click here for the Blog’s earlier post on the case.

The Court entered the parties’ stipulated TRO, ordering defendants not to:

  1. Use reproductions or imitations of plaintiff’s service mark;
  2. Use any content from or link to plaintiff’s website; or
  3. reference plaintiff in its headlines.

Defendants were also ordered to remove any website content already on the site that would violate the TRO if written after its entry. 

As you would expect, other blogs and mainstream media have noticed the case.  At Legal Blog Watch, Robert J. Ambrogi just wrote about the dispute (click here), noting my post and discussing an article by Lynne Marek that will appear in next week’s National Law Journal – click here (subscription required).  According to the NLJ story, plaintiff asked only $10,000 to settle the case, but defendants rejected the offer, explaining:

Bending to the law firm’s demands to stop coverage of the firm’s lawyers would strangle the company’s business model of using public records and publicly available Internet information, he said. Blockshopper, founded by former newspaper industry professionals, considers itself a next generation media outlet entitled to First Amendment protections just like any other news organization, he said.

Ambrogi sums up the issue at the heart of the dispute well:

In this age of electronically enhanced transparency, this whole dust-up reflects a sentiment I encounter time and again: "We like our public records to be public — just not too public.

Click here for the Order.

 

Court Enjoins Competition, Not Employment

Posted in Legal News

Mintel Int’l. Group Ltd. v. Neergheen, No. 08 C 3939, 2008 WL 2782818 (N.D. Ill. Jul. 16, 2008) (Dow, J.).

 

Judge Dow granted plaintiff a limited temporary restraining order (“TRO”) in this trade secret and non-compete case. After defendant gave plaintiff his notice of resignation from plaintiff’s marketing department, plaintiff began monitoring defendant’s computer use. This monitoring allegedly showed that defendant copied, emailed or printed various pieces of confidential information, including plaintiff’s client and vendor lists. Defendant then allegedly used those documents, in violation of defendant’s employment agreements, with defendant’s new employer, plaintiff’s alleged competitor.

 

The Court held that plaintiff had shown at least some likelihood of success regarding its trade secret misappropriation and Computer Fraud and Abuse Act claims based upon the alleged copying, emailing or printing of plaintiff’s client lists and other strategic documents. The Court also held that plaintiff showed a strong likelihood of success on elements of its breach of the non-compete and employment agreement claims. But the Court noted that it appeared likely that some provisions of the agreements were not enforceable.

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Law Firm Sues BlockShopper.com Seeking Temporary Restraining Order

Posted in Legal News

Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).

Plaintiff Jones Day sued defendants, BlockShopper.com and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that allegedly discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition – click here for the complaint. Plaintiff also moved for a temporary restraining order (“TRO”) – click here for the TRO motion. In addition to the use of its service marks, plaintiff alleged that defendants used pictures of plaintiff’s associates that appear to be identical to pictures on plaintiff’s website.

 

A January 2007 Chicago Tribune article described defendants’ website as one that provides details surrounding Chicago-area real estate transactions using a Cook County list of home sales and internet research, noting that subjects of some posts do not like the stories:

 

But BlockShopper goes beyond the basic who-what-and-how-much, revealing tantalizing tidbits such as what the parties do for a living and what the sellers originally paid for the property, plus satellite maps and even photos of the property and the parties.

 

The TRO hearing was noticed for Tuesday, August 19. I will keep you updated as decisions are issued.

TRO Denied: Defendant’s Harm More Irreparable Than Plaintiff’s

Posted in Legal News

Little Tikes Co. v. Kid Station Toys, Ltd., No. 08 C 1935, 2008 WL 1805379 (N.D. Ill. Apr. 18, 2008) (Gottschall, J.).

Judge Gottschall denied plaintiff Little Tikes’ Motion for Temporary Restraining Order ("TRO") to prevent defendant Kid Station Toys, Ltd. ("Kid Station") from selling Kid Station electric toys using Little Tikes’ trademarks. From 2003 until February 2008, the parties had a license agreement ("Agreement") pursuant to which Kid Station sold its electric toys using the Little Tikes trademarks. In February 2008, Little Tikes canceled the Agreement pursuant to a provision allowing it to do so for, among other reasons, unsafe toys. Kids Station allegedly had a toy cellphone recalled because it was a potential choking hazard. Kids Station disputed the validity of the termination and continued selling its toys using the Little Tikes trademarks.

The Court held that Little Tikes had shown sufficient likelihood of success on the merits. Its trademarks ownership was undisputed and its success regarding the validity of its Agreement termination was "better than negligible." Additionally, in the parties’ Agreement, Kids Station stipulated to Little Tikes’ irreparable harm.

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No Temporary Restraining Order Without Live Witnesses

Posted in Legal News

Recycled Paper Greetings, Inc. v. Davis, No. 08 C 236, __ F. Supp.2d __, 2008 WL 282687 (N.D. Ill. Feb. 1, 2008) (Bucklo, J.).

Judge Bucklo denied plaintiff’s, Recycled Paper Greetings (“RPG”), motion for a temporary restraining order in this trade secret misappropriation action. RPG argued that it was either part of a joint venture or, at least, a confidential relationship with defendant Kathy Davis to develop a signature line of greeting cards. RPG contends that Davis took confidential information regarding the greeting card line to a competitor. Davis countered that she had terminated her contract with RPG pursuant to the contract’s termination provision before working with RPG’s competitor and there was, therefore, no breach or misappropriation. At an initial hearing, the Court suggested that live testimony might be required to fully resolve the motion for the TRO. But both parties told the Court that their respective witnesses would not be available during the necessary time frame to testify. Because no witnesses were available, the Court denied the TRO, holding that it lacked sufficient information to determine that RPG maintained its alleged trade secrets with sufficient secrecy or the nature of the relationship between RPG and Davis.

Practice tip: If you are seeking a TRO, line up commitments from your potential witnesses to be available both flexibly and quickly. Not many judges will grant TROs if plaintiff cannot present requested witnesses.

PI/TRO Governed by Their Terms

Posted in Legal News

American Fam. Mut. Ins., Co. v. Roth, No. 05 C 3839, 2007 W LL377335 (N.D. Ill. Aug. 16, 2007) (Cole, Mag. J.).

Judge Cole recommended that plaintiff’s motion be granted in part requiring defendants to comply with the Court’s preliminary injunction and holding defendants in contempt for failing to comply with the Counts TRO and PI. The Court first explained that no injunction could be a general prohibition against using trade secrets. Rather, an injunction – whether temporary, preliminary or permanent – must include specific recitals limiting defendants’ actions or requiring that actions be performed. The Court then analyzed whether defendants’ actions or inactions violated specific provisions of the TRO and the PI issued by the Court. The Court reported that defendants had retained possession of plaintiff’s customer list and defendants failed to provide a list of their customer contacts with sufficient detail. The Court, therefore, recommended that defendants be held in contempt for failing to comply with the TRO and the PI.

Preliminary Injunction Granted Despite Likely Inequitable Conduct Because Likely-Tainted Claims Were Voluntarily Withdrawn From Prosecution

Posted in Legal News

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 1141635 (N.D. Ill. Apr. 16, 2007) (Coar, J.).

Judge Coar granted plaintiff Abbott’s motion for a preliminary injunction, after having previously denied it a TRO.*  The PI enjoined defendant Sandoz from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  The Court held that Sandoz had shown a substantial likelihood of materiality and Abbott’s intent to deceive the PTO  based upon Abbott’s failure to disclose certain taste perversion data during prosecution.  But because Abbott abandoned the claims to which the taste perversion data was relevant of its own accord, the Court did not find the patent preliminarily unenforceable.  The Court explained its reasoning as follows:

Redemption is one of the core principles of the American ethos.  Thus in addition to being contrary to the spirit of Scribbs, Kimberly-Clark and the Code of Federal Regulation, it seems wholly inequitable to hold a patent to be invalid for fraudulent conduct in the prosecution of a claim that was withdrawn before actual prosecution had even begun.

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No Double-Dipping: Parties Cannot Seek Remedies From the District Court While Appeal is Pending

Posted in Legal News

American Fam. Mutual Insur. Co. v. Roth, No. 05 C 3839, 2007 WL 63983 (N.D. Ill. Jan. 10, 2007) (Cole, Mag. J.).

Judge Cole recommended denying defendants’ motion to modify Judge Guzman’s preliminary injunction for lack of jurisdiction.  Judge Guzman, following Judge Cole’s recommendation, issued a preliminary injunction to prevent defendants from using a list of confidential information regarding plaintiff’s policy holders.  Defendants ultimately appealed the preliminary injunction and then filed a motion to clarify seeking modifications to the injunction  equivalent to what they were asking to be overturned on appeal.  After an exhaustive analysis of the procedural rules, the Court recommended denying the motion to modify for lack of jurisdiction because once defendants appealed the injunction, the district court loses jurisdiction over the appealed issues.

Federal Circuit Agrees With the Northern District: Preliminary Injunction Holdings Are Not Preclusive

Posted in Legal News

Abbott Labs. v. Andrx Pharm., Inc., No. 06-1101, __ F.3d __ (Fed. Cir. 2007).

While this is not a Northern District case, it is relevant to the Blog because it is an appeal of a Northern District case and because it confirms Judge Coar’s ruling (discussed here) that a preliminary injunction holding lacked preclusive effect in the related case Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 3718025 (N.D. Ill. Dec. 15, 2006).  In this patent dispute plaintiff, Abbott Laboratories ("Abbott"), alleged that defendant’s, Andrx Pharmacueticals ("Andrx") sale of a generic form of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative) which Abbott markets as Biaxin XL.  The Northern District held that Abbott had established a likelihood of success on the merits of its infringement claim and that Andrx had not established a likelihood that the patent would be held invalid.  As a result of those holdings, the Northern District issued a preliminary injunction.  In its appeal, Andrx argued that Abbott was precluded from obtaining a preliminary injunction because the Federal Circuit overturned a previous Northern District preliminary injunction for Abbott against another generic antibiotic producer Teva Pharmaceuticals ("Teva").  In that case, the Federal Circuit held that Teva raised a substantial question as to the validity of the claims at issue, sufficient to call Abbott’s likelihood of success on the merits into question. 

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Federal Circuit’s Preliminary Injunction Ruling Is Not Preclusive

Posted in Legal News

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 3718025 (N.D. Ill. Dec. 15, 2006) (Coar, J.).

Judge Coar denied plaintiff’s, Abbott Laboratories ("Abbott"), motion for a temporary restraining order ("TRO") to prevent defendant, Sandoz, Inc. ("Sandoz"), from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  The Court had entered a TRO and, ultimately, a preliminary injunction preventing another party, Teva Pharmaceuticals ("Teva"), from selling a generic version of plaintiff’s patented extended release antibiotic, but the Federal Circuit vacated the preliminary injunction.  The Federal Circuit held that Teva raised a substantial question as to the validity of the claims at issue, sufficient to call Abbott’s likelihood of success on the merits into question. 

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