Saeilo Enters., Inc. v. Alphonse Capone Enters., Inc., No. 13 C 2306, Slip Op. (N.D. Ill. Dec. 5, 2014) (Dow, J. as emergency judge for Aspen, Sen. J.).
Judge Dow, sitting as emergency judge for Judge Aspen, granted plaintiff Saeilo’s motion for a temporary restraining order prohibiting defendant from selling Tommy Guns’ alcohol in this Lanham Act dispute involving Saeilo’s TOMMY GUN trademarks associated with the well-known machine gun and sued on various promotional items, as well.
In 2003, defendant obtained trademarks similar to the TOMMY GUN marks and began selling alcohol in Tommy Gun-shaped bottles. Saeilo alleged that defendant abandoned its marks by failing to use its marks for at least two years beginning in 2011 and that any use after that period infringed Saeilo’s marks. During discovery, defendant testified that it had been two years since they received a shipment and had no pending orders. But they sought to start up sales in 2014, after discovery closed.
At the hearing on the motion, defendant’s counsel admitted that defendant’s marks were substantially similar and that defendant created its product to replicate the Tommy Gun firearm. And while there would be little likelihood of confusion if Saeilo only sold Tommy Guns and defendant sold alcohol, that is not the case here. Saeilo sells various promotional products. As a result, there is a more than negligible chance that Saeilo’s argument could prevail on its claim.
And while defendant did offer some evidence of intent to sell product using the marks, there was still a better than negligible chance that Saeilo could prevail on its abandonment claim.
As is often the case in trademark cases, the Court presumed irreparable harm to Saeilo’s goodwill from the use of its marks.
Finally, the balance of harms weighed in favor of granting the TRO. Alcohol is not perishable or seasonal, so there would be little impact upon defendant’s inventory in the short term. And defendant offered no evidence or detail quantifying its claimed harm.
Although neither party addressed the Fed. R. Civ. P. 65(c) bond requirement, the Court took a “conservative approach” setting the bond at $50,000, well in excess of the value of product known to have reached the market.