Lavatec Laundry Technology GmbH v. Voss Laundry Solutions, Inc., et al

Filing 144

MEMORANDUM OF DECISION AND AMENDED INJUNCTION ORDER Signed by Judge Stefan R. Underhill on 11/21/2014.(Pollack, R.)

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT

LAVATEC LAUNDRY TECHNOLOGY,
GmbH,
Plaintiff,

No. 3:13-cv-56 (SRU)

v.
LAVATEC, INC.,
Defendant.
MEMORANDUM OF DECISION AND AMENDED INJUNCTION ORDER
Plaintiff Lavatec Laundry Technology, GmbH (“LLT”) is a German company that
manufactures commercial laundry equipment under the Lavatec mark 1 and distributes its
products in the United States through a distributor under the same ownership. Defendant
Lavatec, Inc. (“New Lavatec”) is a United States company that manufactures and distributes
laundry-folding machines bearing the Lavatec mark in the United States, and also services
laundry equipment and sells refurbished equipment and parts. At the start of this litigation, LLT
and New Lavatec both claimed to hold the exclusive right to use the Lavatec mark in the United
States, which they claimed to have acquired through their respective purchases of the assets of
former Lavatec entities. After a bench trial, I held that the plaintiff, LLT, is the owner of the
Lavatec trademark (doc. # 113). The status of the trade name, however, was not resolved, and
New Lavatec continues using the trade name for what it contends are non-trademark uses. LLT
seeks to permanently enjoin those uses. I have considered the evidence and the arguments in
connection with the briefing for a preliminary injunction, the trial, and the briefing for the
present motion, and I grant the modified relief of a preliminary injunction.

1

The Lavatec mark consists of the word “Lavatec,” particularly in the design shown in Exhibit A, attached hereto.

To obtain a permanent injunction in a trademark action, a party who has otherwise
succeeded on the merits must establish: “(1) that it has suffered an irreparable injury; (2) that
remedies available at law, such as monetary damages, are inadequate to compensate for that
injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a
remedy in equity is warranted; and (4) that the public interest would not be disserved by a
permanent injunction.” Salinger v. Colting, 607 F.3d 68, 77 (2d Cir. 2010) (quoting eBay Inc. v.
MercExchange, LLC, 547 U.S. 388, 391 (2006)); see also U.S. Polo Ass'n, Inc. v. PRL USA
Holdings, Inc., 800 F. Supp. 2d 515, 539 (S.D.N.Y. 2011) (noting that “Salinger suggest[s] that
[trademark infringement] cases should be analyzed under the standards for injunctive relief
articulated by the Supreme Court in eBay”).
In a trademark action, irreparable injury can be shown by likelihood of confusion, see
Brennan’s, Inc. v. Brennan’s Rest., L.L.C., 360 F.3d 125, 129 (2d Cir. 2004) (“[I]n a trademark
infringement case, proof of a likelihood of confusion establishes both a likelihood of success on
the merits and irreparable harm.”), which is evaluated by the eight Polaroid factors. See Savin
Corp. v. Savin Grp., 391 F.3d 439, 456 (2d Cir. 2004) (citing Polaroid Corp. v. Polarad Elecs.
Corp., 287 F.2d 492, 495 (2d Cir. 1961)). LLT argues that all of the Polaroid factors weigh
heavily in its favor, and I agree, but likelihood of confusion is moreover clear simply because
New Lavatec persists in using a mark and logo that are not merely similar but in fact identical to
LLT’s, and because New Lavatec persists in using them on the same class of goods and services
as LLT’s. It can hardly be doubted that confusion will result when a consumer is faced with New
Lavatec’s laundry-folding machines bearing a name and mark identical to LLT’s, or with
materials related to New Lavatec’s laundry-machine servicing business bearing that same name
and mark.

2

LLT has established that it has no adequate remedy at law, because consumer confusion
may result in harm to its reputation and goodwill, which harm is not precisely quantifiable, and
because assurances are necessary against New Lavatec’s continued infringement. The balance of
the equities favors LLT, because LLT owns the mark, and confusion will result from New
Lavatec’s ongoing use of the name and mark in connection with laundry products and services.
There might be some limited use of the trade name that theoretically would not result in
confusion and which would alter the weight of the equities, but New Lavatec has not proposed
such a limited usage. Finally, the public interest is served by the protection of property interests
in trademarks, and no circumstances exist in the present case to suggest that the public interest
would be disserved by an injunction. In sum, the standard for the issuance of an injunction is
easily met.
However, I do not take lightly the equities of enjoining a trade name that has been in use
for some time, and though New Lavatec has not proposed a sufficiently-limited use of the name
that would not cause confusion or infringe on LLT’s mark, this litigation is not yet at its
conclusion. Further discovery may allow opportunities to defend limited and non-infringing uses
of the name, and I am exercising discretion to allow those arguments, if they arise, to proceed.
Accordingly, for all of those reasons and those set forth in the memorandum of decision
and order holding that plaintiff LLT holds exclusive ownership of the Lavatec mark in the
United States (doc. # 113), and pursuant to Federal Rule of Civil Procedure 65, it is hereby
ORDERED that defendant Lavatec, Inc., its officers, agents, servants, employees, and attorneys,
and other persons who are in active concert or participation with any of the above, are, until the
final determination of the merits of the action, preliminarily enjoined from:

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1. using the Lavatec name or the Lavatec logo, or any variation thereof, as part of
any corporate or trade name, trademark, or domain name;
2. using the Lavatec name or logo, or any variation thereof, in the manufacture or
sale of any products, or in any advertising, promotion, or offer to sell;
3. using the Lavatec name or logo, or any confusingly similar trademarks, within
any domain name, extensions, metatags, or other markers within website source
code; or on any webpage, in the title of any web page, within any advertising
links, or in any other way that either is visible to computer users or serves to
direct computer searches to websites registered, owned, or operated by the
defendant or Lapauw International, Inc.;
4. using a website or any other online service located at lavatec.com, lavatec.biz, or
any other variation thereof.
Nothing in this order shall be interpreted as precluding the defendant, when using
trademarks and trade names not confusingly similar to the Lavatec trademark, from advertising
the fact that it services and sells parts for the plaintiff’s trademarked products.
So ordered.
Dated at Bridgeport, Connecticut, this 21st day of November 2014.
/s/ STEFAN R. UNDERHILL
Stefan R. Underhill
United States District Judge

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