Life After Hate, Inc. a/k/a Exit USA v. Free Radicals Proj., Inc., No. 18 C 6967, Slip Op. (N.D. Ill. Sep. 30, 2019) (Kendall, J.).
Judge Kendall granted plaintiff Life After Hate a/k/a Exit USA’s (“LAH”) motion for preliminary injunction preventing defendants (collectively “Free Radicals”) from using LAH’s LIFE AFTER HATE, NO JUDGMENT. JUST HELP., and EXIT USA marks in this Lanham Act trademark infringement and cybersquatting dispute. The injunction also prevented use of LAH’s website, twitter handle, YouTube channels and videos.
As an initial matter, the Court noted that both plaintiff and defendants provide “critical” services helping people disengage from violence-based extremism, but “find themselves in an ugly trademark dispute that can only distract them from the important work they perform.”
Validity of the Marks
LAH’s LIFE AFTER HATE and EXIT USA marks were presumed valid because they were federally registered. Defendants argued that LIFE AFTER HATE was descriptive of helping people move on with their lives after leaving what are commonly referred to as hate groups. The Court held that the lack of evidence of similar organizations using the LIFE AFTER HATE mark was indicative that it was suggestive, not descriptive. The Court did note that the line between descriptiveness and suggestiveness was “difficult to draw.” The Court also employed the “degree-of-imagination” test holding that LIFE AFTER HATE required a leap of imagination to understand what services LAH offered and was, therefore, suggestion, not descriptive.
Applying the same pair of tests, EXIT USA was a closer call, but defendants were still not able to overcome the presumption of validity. A number of groups use the EXIT [country] naming internationally, including Exit Germany, Norway, U.K. and Slovakia. But even still, the use was not so widespread as to be proof of descriptiveness or genericness.
Ownership of the Marks
While the parties disputed ownership, the evidence was clear that the parties intended to create two entities using the LIFE AFTER HATE and EXIT USA marks. The parties did not intend that the marks would be used for the individual defendant’s services apart from the entities. Defendants’ claims that LAH procured its trademarks by fraud were not supported by evidence sufficient to overcome the evidence of LAH’s ownership.
Likelihood of Confusion
Regarding likelihood, the Court held as follows:
- The parties largely did not dispute the similarity of the marks, nor did they dispute the similarity of the services. That weighs in LAH’s favor;
- LAH and defendants primarily advertise online. That suggested direct competition, to the extent non-profits seeking to help individuals exit extremist hate groups can be said to compete. That weighed in LAH’s favor;
- The evidence suggested that consumers exercised a high degree of care in selecting the parties’ services. That weighed in defendants’ favor;
- The evidence suggested that the public associates the marks with LAH, weighing in LAH’s favor;
- Weighing in its favor, LAH offered three undisputed examples of actual confusion; and
- There was strong evidence that defendants intentionally copied LAH’s marks.
As a whole, the factors weigh in favor of an injunction.
Lanham Act violations have a rebuttable presumption of causing irreparable harm. Defendants argued that LAH’s fourteen month delay in filing suit and seeking injunctive relief precluded a finding of irreparable harm. While it was a close call, the Court held that the delay was not sufficient to overcome the presumption because LAH presented evidence that it quickly hired counsel to look into how to handle the trademark issues at the Trademark Office and other lawyers to send cease and desist letters to defendants. Those actions overcame the delay.
Because LAH had a strong likelihood of success, it was not critical that the balance of harm be in LAH’s favor. Regardless, defendants did not offer any evidence that they would be harmed by an injunction. Defendants argued that they would lose goodwill and reputation, but defendants did not sufficiently explain how such damage would result from the injunction itself.
The public interests were served by enforcing trademarks and reducing consumer confusion. Furthermore, the injunction would not prevent defendants from performing their important work.
Because neither party addressed the issue of a bond for the preliminary injunction, the Court ordered defendants to submit a bond request within seven days of the preliminary injunction order.