DR Distributors, LLC v. 21 Century Smoking, Inc., No. 12 C 50324, Slip Op. (N.D. Ill. Mar. 14) (Kapala, J.).
Judge Kapala granted the agreed portions of plaintiff’s motion for preliminary injunction in this trademark case involving plaintiff’s 21ST CENTURY SMOKE and defendant’s 21 CENTURY SMOKING marks, as follows:
- The parties agreed to a reciprocal preliminary injunction enjoining each party from using the other’s mark or making any statements that its products were affiliated with the other party.
- The Court refused to enter the portion of the agreed injunction in which both parties agreed not to use marks confusingly similar to its opponent’s mark because that definition could encompass each party’s mark.
- Defendant agreed not to attend the ASD Trade Show in Las Vegas.
- The Court denied the requested injunction as to any use by defendant of its 21 CENTURY SMOKING mark.
- At an early stage of the case, both parties strongly contested who first used the mark. As a result, plaintiff seemed as likely to lose its claim as to win it, but that was enough to clear the “low threshold” of showing more than a negligible chance of success.
- With respect to irreparable harm, there was no evidence of misconduct by defendant, and the agreed injunction would resolve any possibility of misconduct going forward.
- Finally, the balance of harms weighed in defendant’s favor and against a preliminary injunction.