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

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.

Continue Reading Close Balance of Harms Prevents TRO, but Expedited Discovery Granted

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.

Continue Reading Protest/Parody Use of Mark is Fair Use

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.

Continue Reading Blockshopper Stipulates to Temporary Restraining Order

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.

Continue Reading Court Enjoins Competition, Not Employment

Jones Day v. BlockShopper.com, No. 08 C 4572 (N.D. Ill.) (Darrah, J.).
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 allegedly discuss Chicago real estate transactions of plaintiff’s associates. Plaintiff claims service mark infringement, Lanham Act false designation of origin, Lanham Act dilution, and state law deceptive trade practices and unfair competition – click here for the complaint. Plaintiff also moved for a temporary restraining order (“TRO”) – click here for the TRO motion. In addition to the use of its service marks, plaintiff alleged that defendants used pictures of plaintiff’s associates that appear to be identical to pictures on plaintiff’s website.
A January 2007 Chicago Tribune article described defendants’ website as one that provides details surrounding Chicago-area real estate transactions using a Cook County list of home sales and internet research, noting that subjects of some posts do not like the stories:
But BlockShopper goes beyond the basic who-what-and-how-much, revealing tantalizing tidbits such as what the parties do for a living and what the sellers originally paid for the property, plus satellite maps and even photos of the property and the parties.
The TRO hearing was noticed for Tuesday, August 19. I will keep you updated as decisions are issued.

Continue Reading Law Firm Sues BlockShopper.com Seeking Temporary Restraining Order

Little Tikes Co. v. Kid Station Toys, Ltd., No. 08 C 1935, 2008 WL 1805379 (N.D. Ill. Apr. 18, 2008) (Gottschall, J.).
Judge Gottschall denied plaintiff Little Tikes’ Motion for Temporary Restraining Order (“TRO”) to prevent defendant Kid Station Toys, Ltd. (“Kid Station”) from selling Kid Station electric toys using Little Tikes’ trademarks. From 2003 until February 2008, the parties had a license agreement (“Agreement”) pursuant to which Kid Station sold its electric toys using the Little Tikes trademarks. In February 2008, Little Tikes canceled the Agreement pursuant to a provision allowing it to do so for, among other reasons, unsafe toys. Kids Station allegedly had a toy cellphone recalled because it was a potential choking hazard. Kids Station disputed the validity of the termination and continued selling its toys using the Little Tikes trademarks.
The Court held that Little Tikes had shown sufficient likelihood of success on the merits. Its trademarks ownership was undisputed and its success regarding the validity of its Agreement termination was “better than negligible.” Additionally, in the parties’ Agreement, Kids Station stipulated to Little Tikes’ irreparable harm.
But the Court held that Kid Station would be irreparably harmed by a TRO because it would not be able to meet its customer obligations, which would be a serious blow to its business. And, the Court held that Kid Station’s irreparable harm from a TRO outweighed Little Tikes’ irreparable harm without a TRO. While Kid Station may not be able to recover its customers, Little Tikes had already approved Kid Station’s existing toys and could recover royalties for any sales. The Court, therefore, denied the TRO.

Continue Reading TRO Denied: Defendant’s Harm More Irreparable Than Plaintiff’s

Abbott Labs. v. Sandoz, Inc., No. 05 C 5373, 2006 WL 1141635 (N.D. Ill. Apr. 16, 2007) (Coar, J.).

Judge Coar granted plaintiff Abbott’s motion for a preliminary injunction, after having previously denied it a TRO.*  The PI enjoined defendant Sandoz from selling a generic version of Abbott’s patented extended release antibiotic (clarithromycin, an erythromycin derivative which Abbott markets as Biaxin XL).  The Court held that Sandoz had shown a substantial likelihood of materiality and Abbott’s intent to deceive the PTO  based upon Abbott’s failure to disclose certain taste perversion data during prosecution.  But because Abbott abandoned the claims to which the taste perversion data was relevant of its own accord, the Court did not find the patent preliminarily unenforceable.  The Court explained its reasoning as follows:

Redemption is one of the core principles of the American ethos.  Thus in addition to being contrary to the spirit of Scribbs, Kimberly-Clark and the Code of Federal Regulation, it seems wholly inequitable to hold a patent to be invalid for fraudulent conduct in the prosecution of a claim that was withdrawn before actual prosecution had even begun.


Continue Reading Preliminary Injunction Granted Despite Likely Inequitable Conduct Because Likely-Tainted Claims Were Voluntarily Withdrawn From Prosecution

International Profit Assocs., Inc. v. Paisola, 461 F. Supp.2d 672 (N.D. Ill. Nov. 14, 2006) (Bucklo, J.).

Judge Bucklo held that plaintiff was likely to succeed on its Lanham Act and cyberpiracy or cybersquatter, 15 U.S.C. Section 1125(d), claims and issued a temporary restraining order ("TRO") preventing defendants from conduct that likely infringed plaintiff’s trademarks.  Based upon the cyberpiracy claim, Defendants were ordered to stop making content available through their website, www.ipaopinion.com, which was likely confusingly similar to plaintiff’s site, www.ipaopinions.com.  The Court also ordered defendants to stop using plaintiff’s trademarks as search terms in Google’s Adwords program. 


Continue Reading Using Trademarked Terms As Internet Advertising Keywords Violates the Lanham Act