H-D U.S.A., LLC v. The Partnerships and Unincorporated Assocs. Identified on Schedule “A,” No. 21 C 3581, Slip Op. (N.D. Ill. Sep. 24, 2021) (Alonso, J.).

Judge Alonso granted plaintiff Harley-Davidson’s motion for preliminary injunction against defendant Amarzon-Automotive Parts (“AAP”) for allegedly selling counterfeit aftermarket chrome LED fog light projectors using Harley-Davidson’s HARLEY-DAVIDSON and DAYMAKER marks.

As an initial matter, the Court explained that the Seventh Circuit recently detailed how likely plaintiff’s success must be in Illinois Republican Party v. Pritzker, 973 F.3d 760, 762 (7th Cir. 2020):

It explained that a “possibility of success is not enough” and “[n]either is a better than negligible chance[,]” but the moving party “need not show that it definitely will win the case.” Id. at 762-763. “A strong showing” of a likelihood of success on the merits “normally includes a demonstration of how the applicant proposes to prove the key elements of its case.” Id. (internal citations and quotations omitted).

The parties agreed that Harley-Davidson proved the first element of both its Lanham Act claims — trademark infringement / counterfeiting and false designation of origin — because Harley-Davidson has federally registered trademarks for HARLEY-DAVIDSON and DAYMAKER.

Harley-Davidson made a sufficient showing of likelihood of success as to confusion. AAP called its product a Harley-Davidson Daymaker fog lamp. AAP’s claim that it was simply describing a generic motorcycle light was not credible. Additionally, AAP’s own name — including a slight misspelling of retailer Amazon — was suggestive of AAP’s intent to confuse.

The Court noted some disagreement as to whether the Seventh Circuit’s presumption of irreparable harm for trademark infringement claims survived the Supreme Court’s eBay decision. But whether that presumption survived or not, Harley-Davidson showed irreparable harm here in the form of risk to Harley-Davidson’s reputation from the sale of counterfeit product. The Court also noted that Harley-Davidson had spent considerable sums marketing and promoting its products using its trademarks.

The balance of harms also weighed in Harley-Davidson’s favor because of the public interest in avoiding consumer confusion. Finally, AAP did not show with sufficient particularity that freezing all of its assets was unwarranted. Despite AAP having the burden of showing that some of its assets were not related to the accused fog lamps, all AAP provided was a graph — not written in English or translated — which purportedly showed sales of different products. That was not sufficient to meet AAP’s burden.