Checker Car Club of America, Inc. v. Fay

Filing 17

MEMORANDUM Opinion and OrderS Signed by the Honorable Elaine E. Bucklo on 3/22/2017. Mailed notice. (mgh, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

CHECKER CAR CLUB OF AMERICA,
INC., an Indiana corporation,
Plaintiff,
v.
JOSEPH FAY, an individual,
d/b/a CHECKER CAB CLUB,
Defendant.

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No. 17 C 1865

MEMORANDUM OPINION AND ORDER
Plaintiff Checker Car Club of America, Inc. (“Checker Car
Club” or “plaintiff”), has sued one of its former members,
Joseph Fay (“Fay” or “defendant”), asserting claims for: (1)
Unfair Competition under the Lanham Act, 15 U.S.C. § 1125(a);
(2) Fraudulent Registration of a Trademark, 15 U.S.C. § 1120;
(3) violation of the Anti-Cybersquatting Consumer Protection
Act, 15 U.S.C. § 1125(d); (4) violation of the Uniform Deceptive
Trade Practices Act, 815 ILCS § 510 et seq.; and (5) Tortious
Interference with a Business Expectancy under Illinois law.
Plaintiff has moved for a temporary restraining order (“TRO”)
and a preliminary injunction forbidding defendant’s use of its
trademarks. For the reasons below, plaintiff’s motion for a TRO
is denied. Plaintiff’s motion for a preliminary injunction is
referred to the assigned magistrate judge.

I.
The Checker Car Club was founded in 1982, after Checker
Motors Corporation discontinued production of its “Checker”
automobiles. The club’s purpose was to promote “the
preservation, enjoyment, and exchange of information about
Checker automobiles.” Compl. ¶ 9.1 Since 1984, plaintiff has
published a quarterly newsletter for its members. Plaintiff also
has provided services for its members, including administering
discount purchasing programs and facilitating car-part
information exchanges. Plaintiff also organizes social events,
including car shows and conventions. Plaintiff claims that it
has used the CHECKER CAR CLUB OF AMERICA and CHECKER CAR CLUB
marks in providing these services, and that it has used the
CHECKERBOARD NEWS mark in connection with its newsletters.
Defendant is a former member of the Checker Car Club. At
one point, he served as the club’s president and as one of its
directors. In 2008, he created a Facebook group called the
“Facebook Checker Cab Group.” Plaintiff acknowledges that it
gave defendant permission to create the page.

1

The current membership fee is $25 per year.

2

In 2014, plaintiff decided to create a new website and
Facebook Page.2 Initially, there was some talk of using the
Facebook Checker Cab Group page created by defendant. At some
point, however, relations with defendant soured, ultimately
leading to his expulsion from the Checker Car Club in July 2015.
On June 27, 2015, plaintiff launched its new website
<www.checkerworld.org> and a Facebook Page entitled “Checker
World.”
The following month, however, defendant registered the
domain name <www.checkercabclub.org>. In addition, defendant
later obtained a federal trademark registration for the mark
CHECKER CAB CLUB. According to plaintiff, defendant procured the
trademark by making false statements to the U.S. Patent and
Trademark Office (USPTO).
Since that time, plaintiff alleges that defendant has
embarked on a campaign to destroy it. According to the
complaint, in September 2015, defendant “fabricated copyright
claims” against plaintiff and succeeded in temporarily shutting
down plaintiff’s website. And in October 2016, defendant used
his registration for CHECKER CAB CLUB to temporarily shut down
plaintiff’s “Checker World” Facebook Page, which he subsequently
replaced with an virtually identical “Checker World” Facebook
2

Plaintiff created a first website in 2004 at the URL
<www.checkertaxistand.com>.

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group of his own. In addition, plaintiff alleges that, despite
its specific instructions not to do so, defendant downloaded
past versions of its newsletter, which he displayed and
distributed on his website for free.
Plaintiffs have moved for a TRO: (1) enjoining defendant
from using the CHECKER CAB CLUB, CHECKER WORLD, and the
CHECKERBOARD NEWS marks; (2) requiring defendant to shut down
his CHECKER WORLD Facebook Page, his Checker Cab Club Facebook
Page, and his <checkercabclub.org> domain name; (3) enjoining
defendant from undermining their website and social media
accounts by filing copyright or trademark-related complaints;
and (4) enjoining defendant from reproducing, publicly
displaying, and distributing plaintiff’s trademarked
newsletters.3 Defendant filed a brief in opposition to
plaintiff’s motion and a hearing on the motion was held the
following day.
II.

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I note that while the plaintiff requests that defendant’s
Checker Cab Club Facebook Page be disabled, plaintiff elsewhere
states that defendant “will be able to continue to operate his
Checker automobile organization using his original Facebook
group,” and that he “will just be enjoined only from engaging in
his recent unlawful conduct.” Pl.’s Br. at 13. In addition, in
the introduction to its brief, plaintiff asserts that it seeks
to enjoin defendant’s “false and disparaging comments about
Plaintiff and its members and officers.” Pl.’s Br. at 1.
However, that request is omitted from the formal statement of
the relief sought at the conclusion of the brief.

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A temporary restraining order “is an extraordinary and
drastic remedy, which should not be granted unless the movant
carries the burden of persuasion by a clear showing.” Recycled
Paper Greetings, Inc. v. Davis, 533 F. Supp. 2d 798, 803 (N.D.
Ill. 2008) (citing Goodman v. Illinois Dept. of Fin. & Prof’l
Regulation, 430 F.3d 432, 437 (7th Cir. 2005)). A TRO “is
warranted if the movant can make a threshold showing: (1) that
the movant has some likelihood of success on the merits of the
underlying litigation; (2) irreparable harm to the plaintiff;
and (3) no adequate remedy at law exists.” Illusions Too
Reality, LLC v. City of Harvey, No. 02 C 7272, 2003 WL 260335,
at *4 (N.D. Ill. Feb. 4, 2003). “If these three conditions are
met, then the Court must balance the harm to the movant if the
injunction is not issued against the harm to the defendant if it
is issued improvidently and consider the interest of the public
in whether the injunction is to be granted or denied.” Id.
A.

Likelihood of Success on the Merits
To show a likelihood of success on the merits, the moving

party must show a “‘better than negligible’ chance of success on
the merits of at least one of its claims.” Girl Scouts of
Manitou Council, Inc. v. Girl Scouts of U.S. of Am., Inc., 549
F.3d 1079, 1096 (7th Cir. 2008). The parties have focused
chiefly on plaintiff’s unfair competition claim under the Lanham
Act (Count I) and its fraudulent trademark registration claim

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(Count II). I conclude that plaintiff has established a betterthan-negligible chance of success on both claims.
1.

Infringement Under the Lanham Act

“[T]o prove a claim pursuant to 15 U.S.C. § 1125(a), a
plaintiff must show (1) that its trademark may be protected and
(2) that the relevant group of buyers is likely to confuse the
alleged infringer’s products or services with those of
plaintiff.” H-D Michigan, Inc. v. Top Quality Serv., Inc., 496
F.3d 755, 759–60 (7th Cir. 2007) (quotation marks omitted).
a.

Protection of the Marks

It is undisputed that the CHECKER CAR CLUB, CHECKER CAR
CLUB OF AMERICA, and CHECKER WORLD marks are not registered.4
“When the identifying word, term, name, symbol or device claimed
as a trade name or mark is not registered with the United States
Patent and Trademark Office, the burden is on the claimant ...
to establish that it is entitled to protection under § 43(a) of
the Lanham Act.” Platinum Home Mortg. Corp. v. Platinum Fin.
Grp., Inc., 149 F.3d 722, 727 (7th Cir. 1998). “In general, the
level of trademark protection available corresponds to the
distinctiveness of the mark.” Id. at 727. Plaintiff asserts that
the marks are either inherently distinctive or have become
4

In January, 2017, plaintiff applied for registrations for the
marks CHECKER CAR CLUB and CHECKER WORLD marks. In February
2017, the USPTO initially rejected the applications, Compl. ¶
52, apparently on the ground that the marks were merely
descriptive, see Tr. at 33-34.
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distinctive through use. However, plaintiff provides no argument
or evidence to support its claim of inherent distinctiveness.
Thus, plaintiff’s claim hinges on its ability to show that the
marks have become distinctive through use.
“To prove infringement of a trademark that is not
inherently distinctive, a plaintiff must establish that its mark
acquired secondary meaning before the alleged infringer first
began using the allegedly infringing mark.” WMH Tool Grp., Inc.
v. Woodstock Int’l, Inc., No. 07-CV-3885, 2009 WL 6825247, at *5
(N.D. Ill. Dec. 9, 2009). “A mark acquires secondary meaning
when it has been used so long and so exclusively by one company
in association with its products or services in that particular
industry that the word, term, name, symbol, or device has come
to mean that those products or services are the company’s
trademark.” Platinum Home Mortg. Corp. v. Platinum Fin. Grp.,
Inc., 149 F.3d 722, 728 (7th Cir. 1998). “To establish secondary
meaning, a court may consider several factors to decide whether
secondary meaning has been acquired or established: (1) the
amount and manner of advertising; (2) the sales volume; (3) the
length and manner of use; (4) consumer testimony; and (5)
consumer surveys.” Id.
Here, plaintiff bases its argument on the length and manner
of its use of the marks. It has offered the testimony and
affidavit of its president, Jim Garrison (“Garrison”), and the

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affidavit of Mark Lohsen (“Lohsen”), a current member of the
Checker Car Club’s board of directors. The testimony of these
witnesses, along with the accompanying exhibits, supports
plaintiff’s claim that it has used the CHECKER CAR CLUB and
CHECKER CAR CLUB OF AMERICA marks since 1984, and that the club
has been mentioned in the media over the years. As a result,
plaintiff has established a more-than-negligible chance of
showing that these marks have acquired secondary meaning and are
protected for purposes of its unfair competition claim. However,
plaintiff has not provided sufficient evidence to indicate that
it used the CHECKER WORLD mark with any regularity prior to
2015, when it launched its revamped website. For purposes of
this motion, therefore, plaintiff has not shown that the CHECKER
WORLD mark has acquired a secondary meaning and thus has failed
to show that the mark is protectable.
b.

Likelihood of Confusion

In determining whether there is a likelihood of confusion
between the marks, “a court must ask whether consumers, and
specifically consumers who would use either product, would be
likely to attribute them to a single source.” Sorensen v. WD-40
Co., 792 F.3d 712, 726 (7th Cir. 2015) (quotation marks
omitted). “Possible confusion is not enough; rather, confusion
must be ‘probable.’” Id. (quotation marks omitted). The Seventh
Circuit uses “seven factors to determine the likelihood of

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confusion: (1) the similarity between the marks in appearance
and suggestion; (2) the similarity of the products; (3) the area
and manner of concurrent use; (4) the degree of care likely to
be exercised by consumers; (5) the strength of the plaintiff’s
mark; (6) any evidence of actual confusion; and (7) the intent
of the defendant to ‘palm off’ his product as that of another.”
Id. While none of these factors is dispositive, the Seventh
Circuit has stated that the similarity of the marks, the intent
of the defendant, and evidence of actual confusion are the most
important. Id.
Many of these factors support a finding that confusion
between the marks is likely: the CHECKER CAR CLUB and CHECKER
CAB CLUB marks are highly similar; the marks are used in
connection with the same services (i.e., promotion of interest
in, and activities related to, Checker automobiles); and their
area and manner of use appears similar (e.g., both are used
primarily in connection with online activity). In addition,
based on the discussion in the previous section, the plaintiff’s
CHECKER CAR CLUB and CHECKER CAR CLUB of AMERICA marks can be
considered relatively strong.5
On the other hand, plaintiff has provided little evidence
of actual confusion. Garrison was questioned on this point
5

Neither party has made a compelling argument as to the degree
of care likely to be used by consumers.

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during the hearing, but his testimony was highly speculative. He
surmised that about a quarter of the plaintiff’s membership “has
not been able to decipher what’s different” between the two
groups. Hr’g Tr. at 46. But the basis for this estimate was not
clear. He cited only one example of actual confusion, involving
an individual named James Hoyt Wood (“Wood”) in March 2015.
According to Garrison, Wood contacted him and the Checker Car
Club’s treasurer after witnessing an unpleasant exchange
involving defendant on defendant’s Facebook Checker Cab Group
Page. Tr. at 60. Garrison testified that Wood was under the
incorrect impression that the two groups were the same and/or
affiliated. Id. In this instance, however, the confusion was
between Checker Car Club and defendant’s “Facebook Checker Cab
Group,” not defendant’s CHECKER CAB CLUB mark. Plaintiff does
not allege that “Facebook Checker Cab Group” is confusingly
similar to CHECKER CAR CLUB. Indeed, plaintiff’s decision to
allow defendant to use “Facebook Checker Cab Group” in 2008 was
based on its judgment that the “Group was sufficiently different
from the CHECKER CAR CLUB and CHECKER CAR CLUB OF AMERICA
marks.” Compl. ¶ 23. The incident may therefore be more
indicative of Wood’s susceptibility to confusion than of a
likelihood of confusion between the CHECKER CAR CLUB and CHECKER
CAB CLUB marks.

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Evidence as to defendant’s intent also does not suggest a
likelihood of confusion. Garrison’s testimony indicates that
defendant has in fact made considerable efforts to distinguish
his club from plaintiff’s. For example, he has included a
disclaimer on his website’s homepage stating: “We are not
associated with the Checker Car Club of America.” See http://
checkercabclub.org/.6 In addition, Garrison testified that
defendant has a policy of forbidding members of his club from
cross-posting on plaintiff’s website and/or Facebook Page. Thus,
anyone who posts on plaintiff’s website is banned from
defendant’s group.
While the evidence is mixed, I find that when all of the
factors are considered together, plaintiff has made a sufficient
showing that there is a likelihood of confusion between the
marks. Having also shown a protectable right in the CHECKER CAR
CLUB and CHECKER CAR CLUB OF AMERICA marks, I conclude that
plaintiff has shown a non-negligible chance of succeeding on the
merits of its infringement claim.
2.

Fraudulent Procurement

“A claim for fraudulent procurement of a trademark
requires: “(1) [a] false representation regarding a material
fact; (2) the registrant’s knowledge or belief that the

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The record does not indicate when defendant began displaying
the disclaimer.
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representation is false; (3) the intention to induce action or
refrain from action in reliance on the misrepresentation; (4)
reasonable reliance on the misrepresentation; and (5) damages
proximately resulting from such reliance.” Slep–Tone Entm’t
Corp. v. Elwood Enterprises, Inc., 165 F. Supp. 3d 705, 710
(N.D. Ill. 2015) (quotation marks omitted).
Plaintiff alleges that defendant made a number of false
representations to the USPTO in obtaining registration for his
CHECKER CAB CLUB mark.

For example, plaintiff alleges that

defendant falsely told the USPTO that he had used the CHECKER
CAB CLUB mark in interstate commerce since November 19, 2008.
According to plaintiffs, defendant began using the mark only in
2015 and did not begin using the mark commercially until late
2015 or early 2016, after launching his website. Plaintiff also
alleges that defendant falsely stated in his application to the
USPTO that “no other person, firm, corporation, or association,
had the right to use an identical or confusingly similar mark in
commerce.” According to plaintiff, this was false because
defendant was aware of plaintiff’s use of the CHECKER CAR CLUB
and CHECKER CAR CLUB OF AMERICA marks.
Defendant has not attempted to rebut these contentions.
Instead, he argues that Count II fails because, based on his
arguments in connection with Count I, plaintiff’s marks are not
legally protected. Having concluded that plaintiff has made a

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sufficient showing that its marks are legally protected, this
response fails. Based on the spare record before me, therefore,
plaintiff has shown a likelihood of success as to its fraudulent
registration claim.
B.

Irreparable Harm
A party seeking a TRO must show that, absent an injuction,

irreparable harm is not merely possible but likely. See, e.g.,
Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 22 (2008)
(“Our frequently reiterated standard requires plaintiffs seeking
preliminary relief to demonstrate that irreparable injury is
likely in the absence of an injunction.”) (citations omitted).
Plaintiff alleges that it will suffer irreparable harm of
various sorts, but its argument ultimately rests on alleged harm
to its goodwill.
As plaintiff correctly observes, such harm is considered
presumptively irreparable in trademark infringement actions.
See, e.g., Miyano Mach. USA, Inc. v. MiyanoHitec Mach., Inc.,
576 F. Supp. 2d 868, 887 (N.D. Ill. 2008). However, the
presumption of irreparability is negated where the plaintiff has
delayed in enforcing its rights. See, e.g., id. (“Damages
suffered as a result of trademark infringement are presumed to
be irreparable because it is nearly impossible to calculate the
precise economic harm caused by damage to goodwill and
reputation on account of such infringement. However, where a

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plaintiff inexcusably delays in moving for a preliminary
injunction, this presumption may cease to exist as a court may
infer from the delay that there is no actual threat of
irreparable harm.”) (citation omitted). Here, plaintiff has been
aware of defendant’s alleged infringing conduct for more than a
year. According to the complaint, defendant temporarily shut
down plaintiff’s website in September 2015 and its Facebook Page
in October 2016. The complaint also specifically alleges that
plaintiff contemplated taking legal measures against defendant
as far back as November 2015.
Given this delay in taking action, plaintiff’s claim of
irreparable harm is unpersuasive. See, e.g., MB Fin. Bank, N.A.
v. MB Real Estate Servs., L.L.C., No. 02 C 5925, 2003 WL
22765022, at *8 (N.D. Ill. Nov. 21, 2003) (presumption of
irreparable harm rebutted in light of ten-month delay in seeking
preliminary injunction); Borden, Inc. v. Kraft, Inc., No. 84 C
5295, 1984 WL 1458, at *16 (N.D. Ill. Sept. 28, 1984) (fivemonth delay defeated request for preliminary injunction).
During the hearing, plaintiff argued that it has decided to
seek injunctive relief at this time because the defendant’s
conduct has recently begun to escalate. See Tr. at 4 (“True,
that this dispute started in late 2015. But the activity has
escalated, particularly when it comes to defendant’s
registration of the mark, which happened just a few months ago.

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And defendant’s use of that registration just a few months ago
to shut down plaintiff’s Facebook page.”). However, defense
counsel has represented that defendant will not object to, or
threaten to take down, plaintiff’s website or Facebook page, and
that he will not represent to third parties that he has the
exclusive rights to the CHECKER CAR CLUB mark. See Tr. at 74;
see also Tr. at 29. (Although defense counsel did not specify a
timeframe, I understand defendant to have agreed to refrain from
engaging in these actions at least until the plaintiff’s motion
for a preliminary injunction is resolved).
Thus, even assuming that defendant’s conduct has indeed
escalated in recent weeks, defendant’s voluntary cessation
effectively addresses this concern. Indeed, during the hearing,
plaintiff’s counsel agreed that the defendant’s stipulation
addressed plaintiff’s concerns except those relating to
defendant’s alleged fraudulent procurement of the marks. Tr. at
75 (“It solves many of the issues of the -- the one issue it
doesn’t solve is the fact that they have this fraudulently
procured registration.”); see also Tr. at 75. The latter issue,
however, goes to the merits of plaintiff’s claims, not to the
question of irreparable harm, and cannot be appropriately
adjudicated in the context of a TRO.7

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Having concluded that Checker Car Club has failed to make a
showing of irreparable harm, I need not consider the other
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In addition to seeking to enjoin defendant’s use of the
disputed marks, plaintiff also seeks to enjoin defendant’s
reproduction and distribution of plaintiff’s newsletters. The
parties devoted comparatively little attention to this issue at
the hearing. Plaintiff’s counsel stated that defendant had
previously indicated a willingness to take the newsletters down.
See Tr. at 16. However, there was no representation from
defendant’s counsel on this point. In any case, plaintiff has
failed to make the necessary showing for the injunctive relief
it seeks with respect to the newsletters. There are factual
disputes over whether defendant was given permission to post the
newsletters and whether the newsletters are protected by
copyright. Plaintiff has also failed to show a likelihood of
irreparable harm based on defendant’s use of the newsletters.
Plaintiff has offered no concrete evidence of harm in connection
with the newsletters, and as with defendant’s use of the marks,
plaintiff has delayed in taking any action despite the fact that
defendant has been making the newsletters available on his site
since October 2015.
For these reasons, I conclude that plaintiff has failed to
show that it is likely to suffer irreparable harm in the absence
of a temporary restraining order. While I deny plaintiff’s

prongs of the standard. See, e.g., Left Field Media LLC v. City
of Chicago, 137 F. Supp. 3d 1127, 1142 (N.D. Ill. 2015).
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motion for a TRO, however, I emphasize that my ruling is based
on the limited factual record before me, and I express no
opinion as to whether, after the parties have had an opportunity
to provide additional evidence and briefing, plaintiff is likely
to succeed on its motion for a preliminary injunction.
C.

Plaintiff’s Motion to Supplement
Shortly before this opinion was issued, plaintiff filed a

motion to supplement the record for purposes of its TRO motion.
Attached to the motion are two messages received by plaintiff in
which consumers exhibit confusion between the Checker Car Club
and the Checker Cab Club. While this may further strengthen
plaintiff’s case, it does not affect my ruling, for I have
already concluded for purposes of this motion that plaintiff has
sufficiently shown a likelihood of confusion between the marks.
Another exhibit to the motion consists of a printout of
what appears to be a Facebook post by defendant containing a
Checker logo accompanied by text stating, “The Checker Logo, a
Sign of Quality by Joe Fay – Checker Cab Club.” The date of the
post is unclear. According to plaintiff, this shows that “as
Checker Car Club feared, Defendant Fay is broadcasting to third
parties that he has rights to his infringing trademarks.” Motion
to Supplement at 5. At this stage, however, the parties’ rights
with respect to the logo are unclear. The parties’ briefs do not
address this issue in depth. And at the hearing, Garrison

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testified that the logo in question was essentially the same as
the one used by Checker Motors Corporation.
Finally, plaintiff has submitted what appears to be a
Facebook post by the defendant dated March 3, 2017 in which he
“told consumers that they should go to his group for the
newsletter because he gives them away for free.” Id. at 5 [sic].
This, too, does not affect my ruling because the record already
contains evidence that defendant has made plaintiff’s
newsletters available for free.
Accordingly, I deny plaintiff’s motion to supplement as
moot. I reiterate, however, that even taking account of
plaintiff’s supplemental evidence, the record before me remains
limited, and that plaintiff may submit additional evidence in
support of its motion for a preliminary injunction, which I
refer to the assigned magistrate judge.
Conclusion
For the reasons discussed above, plaintiff’s motion for a
temporary restraining order is denied and plaintiff’s motion for
a preliminary injunction is referred to the assigned magistrate
judge.
ENTER ORDER:

Dated: March 22, 2017

Elaine E. Bucklo
United States District Judge

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