AFTERMARKET AUTO PARTS ALLIANCE INC v. BUMPER2BUMPER INC et al

Filing 32

ORDER granting 10 Amended Motion for TRO By JUDGE NANCY TORRESEN. (jgw)

UNITED STATES DISTRICT COURT
DISTRICT OF MAINE
AFTERMARKET AUTO PARTS
ALLIANCE, INC.,
Plaintiff,
v.
BUMPER2BUMPER, INC., and
BANGOR CAR CARE, INC.,
Defendants.

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ORDER ON PLAINTIFF’S MOTION
FOR TEMPORARY RESTRAINING ORDER
The Plaintiff, Aftermarket Auto Parts Alliance, Inc., has filed an Amended
Emergency Motion for Temporary Restraining Order (Doc. # 10) against the
Defendants, Bumper2Bumper, Inc., and Bangor Car Care, Inc. In its Complaint
(Doc. # 1), the Plaintiff claims that the Defendants are infringing the Plaintiff’s
trademark, “Bumper to Bumper” (Count I); engaging in unfair competition, false
designation of origin, passing off, and false advertising (Count II); diluting the
Plaintiff’s famous mark (Count III); and violating the Plaintiff’s rights by using the
Internet domain name Bumper2Bumper.com (Count IV). The Plaintiff is seeking a
temporary restraining order preventing the Defendants from continuing this
allegedly wrongful conduct pending hearings on preliminary and permanent
injunctive relief. For the following reasons, the Plaintiff’s Amended Emergency
Motion for Temporary Restraining Order is GRANTED.

FACTUAL AND PROCEDURAL BACKGROUND
“Bumper to Bumper” is a registered trademark owned and licensed by the
Plaintiff since 1983. There are currently more than 1,900 automotive service and
parts businesses authorized to use the trademark in 27 states. There is only one
such business in Maine, located in the town of Chelsea. On March 28, 2012, the
Plaintiff became aware of an automotive business in Bangor, Maine, using the name
Bumper2Bumper. The Plaintiff contacted Glenn Geiser, the owner of
Bumper2Bumper, and demanded that he change the business’s name. Geiser
refused, claiming that his business was limited to vehicle sales and did not offer
service. The Plaintiff was concerned about the significant number of customer
complaints against Bumper2Bumper and Geiser’s former business, Bangor Car
Care. Geiser later notified the Plaintiff that he planned to open a second location in
Lewiston, Maine, which is near the authorized “Bumper to Bumper” business in
Chelsea.
After the Plaintiff filed its Complaint and Amended Emergency Motion for
Temporary Restraining Order, the Defendants filed an Objection to the Plaintiff’s
Motion (Doc. # 18), and the Plaintiff filed a Reply (Doc. # 19). On September 12,
2012, the Court heard telephonic oral argument on the Plaintiff’s Motion and
invited the parties to consider whether they preferred to receive a ruling on the
Motion or to proceed with an expedited evidentiary hearing on a preliminary
injunction. (Doc. # 22) On September 17, 2012, the parties filed a status report
indicating that they could not agree on a stipulated order resolving the Motion

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because the Defendants had opened a location in Lewiston. (Doc. # 23) Pursuant to
the Court’s Order (Doc. # 24), the parties then briefed the issue of security under
Fed. R. Civ. P. 65(c) (Docs. # 27 & 31). Having reviewed all of the parties’ filings,
the Court proceeds to consider the Plaintiff’s Motion.
STANDARD OF REVIEW
In evaluating a motion for a temporary restraining order, the Court examines
the same four factors that apply to a motion for a preliminary injunction.
OfficeMax, Inc. v. County Qwick Print, Inc., 709 F. Supp. 2d 100, 106 (D. Me. 2010).
The movant “must establish (1) that he is likely to succeed on the merits, (2) that he
is likely to suffer irreparable harm in the absence of preliminary relief, (3) that the
balance of equities tips in his favor, and (4) that the injunction is in the public
interest.” Peoples Fed. Sav. Bank v. People’s United Bank, 672 F.3d 1, 9 (1st Cir.
2012) (citation omitted). “While all these factors must be weighed, the cynosure of
this four-part test is more often than not the movant’s likelihood of success on the
merits. . . . The importance of that inquiry is magnified in trademark cases because
the resolution of the other three factors will depend in large part on whether the
movant is likely to succeed in establishing infringement. . . . This emphasis on
likelihood of success is fully consistent with the tenet that, as a matter of public
policy, trademarks should be protected against infringing uses.” Borinquen Biscuit
Corp. v. M.V. Trading Corp., 443 F.3d 112, 115 (1st Cir. 2006) (citations omitted).

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DISCUSSION
I.

Likelihood of Success on the Merits
In order to establish a likelihood of success on the merits, the movant “must

demonstrate both that its mark merits protection and that the allegedly infringing
use is likely to result in consumer confusion.” Id. at 116.
A. Whether the Mark Merits Protection
As to the first element, “a mark must qualify as distinctive,” id., and as long
as the mark is registered, it is presumed to be distinctive. Id. at 117; see also 15
U.S.C. § 1115(a). This presumption is conclusive if the mark is incontestable
pursuant to 15 U.S.C. §§ 1065 & 1115(b). According to the Plaintiff, “Bumper to
Bumper” and five other similar registered marks are incontestable. Although the
Defendants suggested at oral argument that they might challenge the Plaintiff on
this issue, they have not briefed it. The Court concludes that, for purposes of
issuing a temporary restraining order, the Plaintiff has shown that its six
incontestable “Bumper to Bumper” marks merit protection.
B. Likelihood of Consumer Confusion
As to the second element, there are eight factors to consider in assessing the
likelihood of consumer confusion: “(1) the similarity of the marks; (2) the similarity
of the goods; (3) the relationship between the parties’ channels of trade; (4) the
relationship between the parties’ advertising; (5) the classes of prospective
purchasers; (6) evidence of actual confusion; (7) the defendant’s intent in adopting
its mark; and (8) the strength of the plaintiff’s mark.” Borinquen Biscuit, 443 F.3d

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at 120 (citations omitted). “A proper analysis takes cognizance of all eight factors
but assigns no single factor dispositive weight.” Id.
1. Factors Clearly Favoring the Plaintiff
The Court determines that, at a minimum, factors one and eight weigh
heavily in the Plaintiff’s favor. As to factor one, the “Bumper to Bumper” mark is
identical to “Bumper2Bumper” except for the use of the numeral 2 and the spacing
of the words. The Defendants argue that those differences render
“Bumper2Bumper” distinct, but the Court focuses on “sight, sound, and meaning”
and “the total effect of the designation, rather than a comparison of individual
features . . . .” Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 24 (1st
Cir. 2008) (citations omitted). “Bumper to Bumper” and “Bumper2Bumper” look
nearly alike and have the same sound and meaning. The total effect of
“Bumper2Bumper” is similar to “Bumper to Bumper,” and thus the Court concludes
that the marks are similar.
As to factor eight, the strength of a mark is measured by “the length of time
the mark has been used, the trademark holder’s renown in the industry, the
potency of the mark in the product field (as measured by the number of similar
registered marks), and the trademark holder’s efforts to promote and protect the
mark.” Borinquen Biscuit, 443 F.3d at 121. In this case, the Plaintiff has used its
mark since 1983, licenses it to more than 1,900 businesses in 27 states, has
registered several similar marks, and reports spending more than $76.7 million
over 30 years to promote and protect the mark. The Defendants argue that the

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mark is weak because, according to their research, well over 100 businesses in
North America use a name that includes a phrase similar to “Bumper to Bumper.”
According to the Plaintiff’s review of the Defendants’ research, only 18 of those
businesses may possibly be infringing the Plaintiff’s mark. The remainder are the
Plaintiff’s licensees, are not in the same type of business, or are located in
jurisdictions where the Plaintiff lacks trademark rights. The Court is unpersuaded
by the Defendants’ research and finds that the Plaintiff’s mark is strong.
2. Factors Potentially Favoring the Plaintiff
Factors two through five may ultimately weigh in the Plaintiff’s favor, but
there is insufficient evidence to reach that conclusion at this time. As to factor two
(similarity of the goods), the Plaintiff’s business is automotive service and parts,
while the Defendants claim that they engage only in the sale of vehicles. Although
the Plaintiff’s investigation of this case suggests that the Defendants may have
offered automotive service, the Court declines to make such a finding before a
hearing on a motion for a preliminary injunction. “Factors three (channels of
trade), four (advertising), and five (classes of prospective purchasers) are often
considered together because they tend to be interrelated.” Beacon Mut. Ins. Co. v.
OneBeacon Ins. Group, 376 F.3d 8, 19 (1st Cir. 2004). Findings as to these factors
will depend on whether automotive service and parts on the one hand and vehicle
sales on the other constitute a “single line of business activity,” as the Plaintiff
contends (Doc. # 19 at 4), and whether the Defendants engage in both.

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As to advertising, the Court notes that the Plaintiff and the Defendants all
advertise online, and the Defendants’ use of the domain name
Bumper2Bumper.com implicates the same analysis that applied to factor one
(similarity of the marks). The parties also use newspaper, radio, and television
advertising. The Court takes judicial notice that businesses in Lewiston and
Chelsea may advertise in the same newspapers and on the same radio and
television stations, and that there is some overlap in media markets between the
Lewiston-Chelsea and Bangor areas. However, the Court reserves decision on
factor four pending a hearing on a motion for a preliminary injunction.
3. Factors Favoring the Defendant
The Plaintiff admits that it lacks evidence as to factor six (actual confusion)
and has no “direct knowledge” as to factor seven (the Defendants’ intent in adopting
their mark) (Doc. # 10 at 15). Geiser, Bumper2Bumper’s owner, avers that he did
not know of the “Bumper to Bumper” mark until the Plaintiff contacted him. At
this juncture, factors six and seven appear to weigh in favor of the Defendants.
4. Analysis of the Factors
Having considered all eight factors relating to the likelihood of consumer
confusion, the Court concludes that the Plaintiff has met its burden. The parties’
marks are similar (factor one) and the Plaintiff’s mark is strong (factor eight). The
Plaintiff has presented some evidence that the parties offered similar services
(factor two), engaged in the same channels of trade (factor three), and targeted the
same classes of prospective purchasers (factor five). There also appears to be

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potential overlap in the parties’ advertising online, in newspapers, and on radio and
television (factor four). Although there is no evidence of actual confusion (factor six)
and the Defendants deny an intent to infringe the Plaintiff’s mark (factor seven),
the balance of the factors favors the Plaintiff at this time. The Plaintiff has shown
that its mark merits protection and that the Defendants’ use is likely to result in
consumer confusion. Therefore, the Court determines that the Plaintiff is likely to
succeed on the merits.
The Defendants rely heavily on Wild Willy’s Holding Co. v. Palladino, 463 F.
Supp. 2d 65 (D. Me. 2006), in which the court denied the plaintiff’s motion for a
preliminary injunction. The case pitted the owner of Wild Willy’s Burgers against
the owners of Wild Willy’s Ale Room. Although the parties’ marks were similar, the
plaintiff’s mark was strong, and the parties’ businesses were located in “close
physical proximity,” id. at 70, the court found little likelihood of confusion because
the plaintiff operated a family-style restaurant while the defendants operated a bar
or lounge. In the present case, the Plaintiff argues that the facts of Wild Willy’s are
distinct and that that case is not dispositive. The Court agrees that Wild Willy’s is
instructive but not controlling.
II.

Irreparable Harm
The Court turns to the remaining elements of the test governing a motion for

a temporary restraining order. When the movant has demonstrated a likelihood of
success on the merits, courts have assumed the second element of irreparable harm,
but the First Circuit has recently indicated that “there is a looming question”

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whether such a presumption is valid. See Peoples Fed. Sav. Bank, 672 F.3d at 9
n.11. Instead of relying on that presumption, the First Circuit notes that courts
must “exercise their discretion ‘consistent with traditional principles of equity’ . . . .”
Id. (quoting eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 394, (2006)). In the
present case, the Court concludes that the Plaintiff has shown a likelihood that it
will suffer irreparable harm if it does not obtain relief. The Plaintiff states that its
damages from the Defendants’ infringement will not be easily ascertainable because
the harm consists of “lost customers, loss of goodwill, injury to reputation in the
market, and source confusion.” (Doc. #10 at 17) “Because injuries to goodwill and
reputation are not easily quantifiable, courts often find this type of harm
irreparable.” Ross-Simons of Warwick, Inc. v. Baccarat, Inc., 217 F.3d 8, 13 (1st Cir.
2000). Particularly in light of Defendant’s concession that he operates a business
that is prone to customer complaints (i.e., used car sales to individuals who cannot
get credit from traditional lenders), the likelihood of damage to Plaintiff’s
reputation is heightened.
III.

Balance of Equities and the Public Interest

The Court also finds that the balance of equities favors the Plaintiff. As the
Plaintiff pointed out at oral argument, the Defendants’ previous change to the name
of their business, from Bangor Car Care to Bumper2Bumper, appeared not to
decrease their sales. In contrast, every day on which the Defendants continue to
use the name Bumper2Bumper presents another opportunity for substantial
consumer confusion and injury to the Plaintiff’s goodwill and reputation. As to the

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final element of the public interest, substantial consumer confusion is not in the
public interest. Mercado-Salinas v. Bart Enters. Int’l., Ltd., 671 F.3d 12, 24 (1st Cir.
2011). The Plaintiff has established all four elements needed to obtain a temporary
restraining order.
IV.

Security
Fed. R. Civ. P. 65(c) provides in relevant part that “[t]he court may issue a

preliminary injunction or a temporary restraining order only if the movant gives
security in an amount that the court considers proper to pay the costs and damages
sustained by any party found to have been wrongfully enjoined or restrained.” In
light of the costs that the Defendants will need to incur in order to change the name
of their business, the Court finds it appropriate to set the amount of security at
$15,000.
CONCLUSION
The Plaintiff’s Amended Emergency Motion for Temporary Restraining Order
(Doc. # 10) is GRANTED. The Temporary Restraining Order shall issue upon the
Plaintiff’s posting of bond in the amount of $15,000. The Order will provide that the
Defendants and their agents, representatives, servants, employees, and all those
acting in concert or participation with them shall not (1) use the Plaintiff’s mark or
“Bumper2Bumper” or any variation or permutation of “Bumper to Bumper,”
including a misspelling or alternative spelling, in connection with the promotion,
marketing, advertising, public relations, or operation of the Defendants’ business;
(2) dilute, blur, pass off, or falsely designate the origin of the Plaintiff’s mark; and

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(3) perform any act likely to injure the Plaintiff’s goodwill and reputation or induce
the belief that the Defendants’ business, services, or products are in any way
connected with, sponsored, affiliated, licensed, or endorsed by the Plaintiff. The
Court will schedule a preliminary injunction hearing forthwith.
SO ORDERED.
/s/ Nancy Torresen
NANCY TORRESEN
UNITED STATES DISTRICT JUDGE
Dated this 4th day of October, 2012.

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