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.

On Friday, June 3, 2022 from 12:00 p.m. to 1:00 p.m. CT, the Diversity, Equity, and Inclusion Committee of the Intellectual Property Law Association of Chicago (IPLAC) will hold a panel discussion on Contemporary Issues in Indigenous Intellectual Property.

The program will cover the use of trademarks by Indigenous nations for economic development, the protection of cultural heritage via copyrights, and the ongoing efforts to protect genetic and traditional knowledge in the pharmaceutical industry.  The panel is moderated by Kiana Baharloo, Quarles & Brady LLP and Caleb Norris, Hobbs, Straus, Dean & Walker LLP.  Panel members include:

  • Trevor Reed, Associate Professor of Law, Arizona State University Sandra Day O’Connor College of Law
  • Victoria Sutton, Associate Dean for Digital Learning & Graduate Education; Paul Whitfield Horn Distinguished Professor, Texas Tech University School of Law
  • Katherine Belzowski, Acting Assistant Attorney General, Economic & Community Development Unit – Navajo Nation Department of Justice

The event is free for IPLAC Members and $25.00 for Non-Members.  Click here to register.

On Tuesday, June 7, 2022 from 1:00 p.m. to 4:00 p.m. CT, the P. Michael Mahoney Chapter of the Federal Bar Association and the United States District Court for the Northern District of Illinois will present People Who Care After 20 Years: Looking Back at the Landmark Rockford School Desegregation Case.

The program promises a lively panel discussion of this important school desegregation case.  Chief Judge Rebecca Pallmeyer will deliver the opening remarks and the panel members include:

  • Judge P. Michael Mahoney
  • Justino Petrarca
  • Matthew Piers
  • Tom Lester
  • Robert Fagan

In-person registration is limited to the first 70 people who register.  For those who wish to attend virtually, the event will also be available via Zoom.  Registration is required – click here to register.

Lunch will be provided from 12:00 P.M. – 1:00 P.M. courtesy of the FBA.

Pending approval, 3 hours of continued legal education are being offered.

On Thursday, April 28, 2022 from 12:00 p.m. to 1:15 p.m. CT, the IPLAC’s Copyright Committee is hosting a presentation by musicologist Judith Finell on navigating the relationship between technology, music and copyright law.

This virtual event is $15 for members and $45 for non-members.  Please register by clicking here.

On Tuesday, April 26, 2022 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (“IPLAC”) and the Illinois Intellectual Property Alliance (“ILIPA”) will host World IP Day 2022.  This year’s theme: IP and Youth: Innovating for a Better Future focuses on how young inventors, creators and entrepreneurs can use IP rights to drive action for innovation and change.

All are welcome.  Please register by clicking here.

Northern District of Illinois Moving to NextGen CM/ECF System

On May 2, 2022, the Northern District is slated to update its CM/ECF system to the NextGen CM/ECF. The Northern District’s Clerk, Thomas G. Bruton, sent ECF filers an email outlining the procedure change. Essentially, every filer is now required to have a personal Pacer account – not a single account for a firm, as an example – and you link your existing Northern District CM/ECF credentials to that Pacer account. Districts across the country are all moving to this system which, conveniently, allows for access to each court’s system using just one set of Pacer credentials.

The following are instructions for complying with the NextGen CM/ECF requirements from the Clerk’s office:

  1. Do you have a unique login to PACER or do you share your PACER account? Note that each NextGen user must have their own individual PACER account.  Specifically, this means that a firm with one shared PACER login account must register each user with their own unique individual PACER account and password.  If you currently share a PACER login within your firm, you must register for your own PACER login*.

    To register for your own PACER Account, visit this website: https://pacer.uscourts.gov/register-account/attorney-filers-cmecf

    *A law firm can create a PACER Administrative Account (PAA) to manage the billing for all their individual accounts. Staff members who share a PACER account only for research can continue to share. For more information on group billing accounts visit this website: https://www.pacer.gov/reg_firm.html.

  1. Do you have a PACER login with only 6 characters? If you still have a PACER account that was created prior to August 2014 (Legacy PACER Account) and has not been upgraded—that is, if you are using a PACER id that is only 6 characters long—you will need to first upgrade your legacy PACER account. You can use this instruction to guide you through the steps on how to upgrade your PACER account:


  1. Do you remember your password to the Current CM/ECF system? If you do not remember your current password, visit:


  1. Do you remember your login to the current CM/ECF system? If you do not remember your current login, please send an email to:


  1. On or after May 2, 2022, all users must link their individual PACER account to your existing individual CM/ECF account. This is a one-time only procedure and links your personal PACER account to your personal CM/ECF account going forward. Please note, this step will not work until May 2, 2022.


On Tuesday, March 8, 2022 from 12:00 p.m. to 1:00 p.m. CT, the Intellectual Property Law Association of Chicago (IPLAC) Agents Committee is hosting a virtual event focusing on a new professional role which has emerged to address the problems that require both legal subject matter and technical expertise: Legal Engineers.  Eric DeChant, founder of American Society of Legal Engineers (ASLE) will discuss different paths to becoming a Legal Engineer and how Legal Engineering can improve legal functions.

This event is free for Members and $25 for Non-Members.  Please register by clicking here.

The Intellectual Property Law Association of Chicago (IPLAC) Creator of the Year Committee is seeking nominations for its 2022 Creator of the Year Award.  The Award honors those who have made a significant creative contribution in one or more of the following substantive areas of intellectual property law:

  • Patent Law: An invention or group of inventions having technological significance and an important social and economic impact, resulting in one or more U.S. patents.
  • Trademark Law: A powerful branding program that combines a strong trademark or service mark and a memorable advertising and marketing campaign.
  • Copyright Law: An important and original work of authorship, in the literary, musical, visual, dramatic or other arts.

Nominees can be individuals, groups or corporations. Most or all of the creative activity must have occurred in the Chicago metropolitan area. The winner or winners will be honored at IPLAC’s May 17, 2022 annual meeting and presented a plaque recognizing their achievements.

Nominations are due March 15, 2022.  Nomination form is available HERE.  For more information, please contact Rathna Koka.

On February 9, 2022 from 12-1pm CT, the IPLAC U.S. Patents Committee is hosting a virtual discussion on how to protect new software technologies using web and desktop interfaces.  The event featured speakers include:

  • Jason Skinder, Chief Intellectual Property Counsel in Connected Enterprise at Honeywell;
  • Tracy-Gene G. Durkin, Partner and Practice Leader of Sterne Kessler Goldstein, & Fox’s Mechanical & Design Practice Group; and
  • Dunstan Barnes Ph.D., Partner with McAndrews, Held & Malloy.

The event is free for Members, $25 for Non-Members and free for Start-Up Companies (please contact Yoni Torchman).

Please click here to register for the event.

The federal district courts in Illinois will host two remote continuing legal education seminars on representing prisoners.  The first seminar “Introduction to Prisoner Civil Rights Litigation” will be held on January 27, 2022 and the second seminar “Representing Prisoners in Medical Cases” will be held on February 3, 2022.  Both seminars will be held from 9:30 a.m. to 12:30 p.m. CT.

The seminars are free and 3.0 hours of MCLE credit has been requested (including 0.5 hours for professionalism) per seminar.

The facilitator for this program is Alan Mills, Executive Director of the Uptown People’s Law Center.  To register, e-mail registration@uplcchicago.org with (1) the seminar you want to attend or both, (2) your ARDC number as it appears on the Illinois Supreme Court rolls if you want CLE credit, and (3) your current e-mail address.  Alan will confirm your registration and send you the link(s) and materials via e-mail.

If you have any questions, please contact Alan Mills, alan@uplcchicago.org