Temporary Restraining Order

Venus Labs., Inc. d/b/a Earth Friendly Prods. v. Vlahakis, No. 15 C 1617, Slip Op. (N.D. Ill. Mar. 5, 2015) (Blakey, J.).

Judge Blakey granted plaintiff Venus Laboratories d/b/a Earth Friendly Products’ (“EFP”) motion for a temporary restraining order (“TRO”) and continued EFP’s request for a preliminary injunction (“PI”) in this Lanham Act dispute

Dental USA, Inc. v. McClellan, No. 13 C 260, Slip OP. (N.D. Ill. Aug. 16, 2013) (Zagel, J.).

Judge Zagel granted in part plaintiff Dental USA’s motion for a temporary restraining order and injunction in this trademark and design patent infringement case.  Dental USA had a trademark for DENTAL USA, as well as POWER

Algierz, Inc. v. The Source of Apparel, Inc., et al., No. 12 C 5361, Slip Op. (N.D. Ill. July 13, 2012) (Chang, J.).

Judge Chang ruled upon plaintiff Algierz’s motion to extend temporary restraining orders (“TROs”) and for preliminary injunctions (“PIs”) in this patent case as follows:

  • The Court denied to extend the TRO

Bernina of Am., Inc. v. Imageline, Inc., No. 10 C 44917, Slip Op. (N.D. Ill. Aug. 18, 2010) (Shadur, Sen. J.).
Judge Shadur sua sponte issued an order in response to defendant’s response to plaintiff’s motion for a temporary restraining order and a preliminary injunction. The Court cautioned that even though individual defendant Riddick was the sole officer and employee of each co-defendant, the corporate defendants required representation because a corporation cannot represent itself pro se.
The Court gave defendants time to identify whether Riddick was a lawyer and to find new counsel, if not. Until that time, the corporate defendants were treated as non-responding parties to plaintiff’s injunction motions.

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Scala’s Original Beef & Sausage Co., LLC v. Alvarez d/b/a Michaelangelo Foods, No. 09 C 7353 (N.D. Ill. Dec. 22, 2009 (Dow, J).
Judge Dow denied plaintiff Scala’s motion for a temporary restraining order (“TRO”) in this Lanham Act case regarding Scala’s and Scala’s Preferred marks for giardiniera.
Likelihood of Success
Scala’s made a “fairly strong showing” that defendants’ (collectively “Michaelangelo Foods”) labels using the marks were likely to cause consumer confusion. Scala’s also met its burden to show some likelihood of success that its trademark license to Michaelangelo Foods was terminable at will, even though the license lacked a termination provision. Finally, Scala’s showed some likelihood of success as to its argument that licensee estoppel barred Michaelangelo Foods’ challenges to Scala’s marks. The Court noted, however, that at the early stages of the litigation it appeared that Michaelangelo Foods might be able to overcome licensee estoppel upon equitable grounds.
Irreparable Harm
Irreparable harm is presumed in trademark cases, and Michaelangelo Foods did not challenge the presumption. Instead, Michaelangelo Foods argued that Scala’s harm was not sufficiently immediate because Scala’s was not selling competing products. But the fact that Scala’s did not make a product, did not eliminate the harm. Scala’s was harmed by not being able to control Michaelangelo Foods’ quality. Additionally, Scala’s was using the marks with other products.
But the Court noted that the facts of this case mitigated the strength of Scala’s irreparable harm. In particular, Scala’s licensed the marks at least in part because Scala’s was unable to consistently pay suppliers or deliver products to its customers. And Michaelangelo Foods took substantial steps to fix those relationships, thereby enhancing the marks’ value.
Balance of Harm
The Court held that Michaelangelo Foods would be harmed by a TRO. A TRO would allow the sale of existing inventory, but individual defendant invested a significant portion of his savings into the business and the business had relatively low profits. A TRO would, therefore, likely do substantial damage to Michaelangelo Foods’ finances. This financial harm combined with Michaelangelo Foods’ efforts to rebuild the marks and the business tipped the balance of harm in Michaelangelo Foods’ favor.
Conclusion
While it was a close call, the Court denied a TRO. In view of the importance of a decision to both parties, the Court set an expedited discovery, briefing and hearing schedule for Scala’s preliminary injunction motion.

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Lettuce Entertain You Enters., Inc. v. Leila Sophia AR, LLC d/b/a Lettuce Mix, No. 09 C 2582, Slip Op. (N.D. Ill. Jun. 8, 2009) (Lefkow, J.).
Judge Lefkow denied plaintiff Lettuce Entertain You Enterprises’ (“LEYE”) motion for a temporary restraining order against defendants’ use of a banner reading “Let us be!” flanked by images of lettuce heads (the “Banner”) on a building in which defendants plan to open a salad bar restaurant to be named “Lettuce mix.” LEYE filed this suit seeking the removal of a “Lettuce mix” sign (the “Sign”) defendants placed on the same building. As an effort at resolving the dispute, defendants replaced the Sign with the Banner. After the Banner appeared, LEYE made the instant motion for a temporary restraining order, arguing that the Banner infringes LEYE’s LETTUCE trademarks used in connection with LEYE’s operation of more than seventy restaurants throughout the Chicago area and nationwide. The Court held that LEYE did not meet its burden as to the first prong of the TRO analysis, LEYE’s likelihood of success on the merits, and, therefore, the Court did not consider the remaining two elements, whether an adequate remedy at law existed and whether LEYE would have been irreparably harmed if the injunction was not granted.
The Court held that defendants’ Banner was a fair use of LEYE’s trademarks and that, therefore, LEYE did not have a likelihood of success on the merits of its Lanham Act claims. Defendants were not using the Banner’s combination of the phrase “Let us be!” (which the parties agreed sounded like “Lettuce”) and the lettuce images as a service mark. “Lettuce mix” may have been a service mark, but “Let us be!” and the lettuce images were used to draw attention to this case and were meant to say “Hey, Lettuce Entertain You, leave us alone!” And the use of the “let us”/lettuce pun was intended to parody LEYE’s use of “lettuce” in place of “let us” throughout LEYE’s website and other materials. The Court explained that the Banner was not used to identify defendants’ services, but to make a statement of protest:
The [B]anner thus conveys a message from its authors, the proprietors of the unopened restaurant, to the owners of the LETTUCE marks, essentially saying, “Leave us alone!” Even if potential customers viewing the [B]anner do not know or learn of the dispute, it is clear at first glance that the banner is being used to communicate a message of protest.
The Court also noted that this decision had no bearing upon the question of whether defendants’ Lettuce mix restaurant name infringed LEYE’s LETTUCE marks.

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Jones Day v. BlockShopper.com, No. 08 C 4572, Order (N.D. Ill. Aug. 18, 2008) (Darrah, J.).*
Judge Darrah entered the parties stipulated temporary restraining order (“TRO”). Plaintiff Jones Day sued defendants, BlockShopper.com and two individuals allegedly associated with the website, for allegedly using plaintiff’s service marks and linking to plaintiff’s website in at least two articles that discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claimed service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition and sought a TRO – click here for the Blog’s earlier post on the case.
The Court entered the parties’ stipulated TRO, ordering defendants not to:
Use reproductions or imitations of plaintiff’s service mark;
Use any content from or link to plaintiff’s website; or
reference plaintiff in its headlines.
Defendants were also ordered to remove any website content already on the site that would violate the TRO if written after its entry.
As you would expect, other blogs and mainstream media have noticed the case. At Legal Blog Watch, Robert J. Ambrogi just wrote about the dispute (click here), noting my post and discussing an article by Lynne Marek that will appear in next week’s National Law Journal — click here (subscription required). According to the NLJ story, plaintiff asked only $10,000 to settle the case, but defendants rejected the offer, explaining:
Bending to the law firm’s demands to stop coverage of the firm’s lawyers would strangle the company’s business model of using public records and publicly available Internet information, he said. Blockshopper, founded by former newspaper industry professionals, considers itself a next generation media outlet entitled to First Amendment protections just like any other news organization, he said.
Ambrogi sums up the issue at the heart of the dispute well:
In this age of electronically enhanced transparency, this whole dust-up reflects a sentiment I encounter time and again: “We like our public records to be public — just not too public.
* Click here for the Order.

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Mintel Int’l. Group Ltd. v. Neergheen, No. 08 C 3939, 2008 WL 2782818 (N.D. Ill. Jul. 16, 2008) (Dow, J.).
Judge Dow granted plaintiff a limited temporary restraining order (“TRO”) in this trade secret and non-compete case. After defendant gave plaintiff his notice of resignation from plaintiff’s marketing department, plaintiff began monitoring defendant’s computer use. This monitoring allegedly showed that defendant copied, emailed or printed various pieces of confidential information, including plaintiff’s client and vendor lists. Defendant then allegedly used those documents, in violation of defendant’s employment agreements, with defendant’s new employer, plaintiff’s alleged competitor.
The Court held that plaintiff had shown at least some likelihood of success regarding its trade secret misappropriation and Computer Fraud and Abuse Act claims based upon the alleged copying, emailing or printing of plaintiff’s client lists and other strategic documents. The Court also held that plaintiff showed a strong likelihood of success on elements of its breach of the non-compete and employment agreement claims. But the Court noted that it appeared likely that some provisions of the agreements were not enforceable.
The Court determined that plaintiff’s alleged harm would be irreparable – the use of plaintiff’s trade secret documents would result in lost sales and clients. Because plaintiff had shown a likelihood of success on the merits and irreparable harm, the Court entered a TRO. The Court ordered defendant and his agents not to use, reference or copy any documents misappropriated from plaintiff, and to return any such documents to plaintiff. The Court also enjoined defendant from soliciting any of plaintiff’s customers or clients whom defendant had contact with during the previous twelve months. And the Court enjoined defendant from soliciting plaintiff’s employees. The Court also ordered defendant to produce forensic copies of any of his personal computers.
But the Court did not enjoin defendant from working for his new employer. The Court noted that a TRO was an extraordinary remedy. And based on the available evidence, the Court was unwilling to use a TRO to end defendant’s employment, even for a limited period.

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