Vinyl Technologies, Inc. v. Laser Mechanisms, Inc.

Filing 46

District Judge Timothy S Hillman: ORDER entered granting 44 Motion for TRO. (Castles, Martin)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
_________________________________________
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v.
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LASER MECHANISMS, INC.,
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Defendant.
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_________________________________________ )
_________________________________________
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LASER MECHANISMS, INC.,
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Counterclaimant,
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v.
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VINYL TECHNOLOGIES, INC.,
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Counterclaim Defendant.
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and
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DIRK BURROWES,
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Third-Party Defendant.
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_________________________________________ )
VINYL TECHNOLOGIES, INC.,
Plaintiff,

CIVIL ACTION
No. 13-40017-TSH

ORDER ON DEFENDANT/COUNTERCLAIMANT LASER MECHANISMS, INC.’s
MOTION FOR TEMPORARY RESTRAINING ORDER (Docket No. 44)
MAY 9, 2013
HILLMAN, D.J.

Background
Vinyl Technologies, Inc. has filed a Complaint (Docket No. 1) against Laser
Mechanisms, Inc. (“Laser Mech”) seeking a declaratory judgment that its product(s) do not
infringe Laser Mech’s claimed trademark “FiberCUT.” Laser Mech has filed Counterclaims

against Vinyl Technologies, Inc. and a Third Party Complaint against Dirk Burrowes
(“Burrowes”)1 alleging claims for: Federal Unfair Competition and False Designation of Origin,
in violation of 15 U.S.C. §1125(a), Fraud on the United States Patent and Trademark Office, in
violation of the Federal Cyberpiracy Prevention Act , 15 U.S.C. §1125(d), Common Law
Trademark Infringement and Unfair Competition, and Unjust Enrichment. See Answer and
Counterclaims (Docket No. 11). The Court has previously held a hearing on
Defendant/Counterclaimant Laser Mechanisms, Inc.’s Motion For Preliminary Injunction
(Docket No. 16). That motion remains under advisement. This Order addresses Laser Mech’s
Motion For Temporary Restraining Order (Docket No. 44)(“TRO Motion”).
The Court will note that Laser Mech’s TRO Motion was served on Vytek, that is, the
request has not been made without notice to Vytek. Additionally, the hearing in conjunction
with Laser Mech’s motion for a preliminary injunction addressed all of the substantive issues
relative to the motion for temporary relief. Therefore, the Court does not find it necessary to
hold a further hearing prior to addressing the TRO Motion.
Discussion
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, that is, the likelihood the movant
will succeed on the merits, that the movant is likely to suffer irreparable harm in the absence
preliminary relief, that the balance of equities tips in the movant’s favor, and that an injunction is
in the public interest. Voice Of The Arab World, Inc. v. MDTV Medical News Now, Inc., 645
F.3d 26, 32 (1st Cir. 2011).
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While all four factors must be weighed, the moving party’s

For ease of reference, I will hereafter refer to Burrowes and Vinyl Technologies, Inc. collectively as

“Vytek.”

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likelihood of success on the merits is “the touchstone of the preliminary injunction inquiry.”
Philip Morris, Inc. v. Harshbarger, 159 F.3d 670, 674 (1st Cir.1998). “[I]f the moving party
cannot demonstrate that he is likely to succeed in his quest, the remaining factors become
matters of idle curiosity.” Maine Educ. Ass’n, 695 F.3d at 152 (quoting New Comm Wireless
Servs., Inc. v. SprintCom, Inc., 287 F.3d 1, 9 (1st Cir.2002)) (emphasis added). Furthermore, the
importance of whether the movant is likely to succeed on the merits “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.” Borinquen Biscuit Corp. v. M.V.
Trading Corp., 443 F.3d 112, 115 (1st Cir. 2006). The moving party bears the burden of proof
for each of these four factors. Nieves-Marquez v. Puerto Rico, 353 F.3d 108, 120 (1st Cir. 2003).
In order to demonstrate a likelihood of success on the merits, Laser Mech must establish
that it is likely to satisfy its burden on the two elements necessary to prove its underlying
infringement claim, i.e., “both that its mark merits protection and that the allegedly infringing
use is likely to result in consumer confusion.” Borinquen Biscuit Corp., 443 F.3d at 116.; see
also 15 U.S.C. § 1114(1) (a) (2006)( trademark plaintiff must demonstrate that the defendant
used an imitation of its protected mark in commerce in a way that is “likely to cause confusion,
or to cause mistake, or to deceive”).
In support of their relative positions regarding Laser Mech’s motion for a preliminary
injunction, the parties relied on affidavits, exhibits and argument/proffer of counsel. While the
Court intends to set up a further hearing to further flesh out certain issues relevant to the request
for a preliminary injunction, the Court finds that on the record before it, for purposes of its
request for temporary relief, Laser Mech has established a likelihood of success on the merits,

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irreparable harm, that the equities are in its favor and that public policy favors the issuance of
injunctive relief. Therefore, Laser Mech’s motion for a temporary restraining order is granted as
follows:
(1) Vytek and Vytek’s agents, employees and any other person in active
concert or participation with Vytek are enjoined from distributing or displaying
brochures or other marketing materials that display the FiberCUT mark or images
of Laser Mech’s FiberCUT/FiberMini laser processing head at the EASTEC trade
show, scheduled to take place on May 14-16, 2013, at the Eastern State
Exposition. West Springfield, Massachusetts; and
(2) Vytek is ordered to “take down” references appearing on the EASTEC
trade show website to “FIBERCUT”, as well as photographs showing Vytek’s
“FIBERCUT” branded equipment, and to contact EASTEC for purposes of such
removal if necessary.
Security
This Court’s rules of procedure provide 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.” Fed.R.Civ.P. 65(c). Therefore, Laser
Mech shall post a bond in the amount of $15,000 as security for the costs and damages, if any,
sustained by any Vytek defendant found to have been wrongfully enjoined or restrained.

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Conclusion
The Court will hold a further hearing on Monday, June 10, 2013 at 9:00 a.m. in
Courtroom Two, United States District Court, 595 Main Street, Worcester, Massachusetts 01608
at which the parties should be prepared to present witnesses relevant to all four preliminary
injunction factors2 and, in particular, in relation to the issues of confusion and irreparable harm.3
This Temporary Restraining Order, as set forth above, will remain in effect through the Court’s
ruling on Laser Mech’s motion for a preliminary injunction.

SO ORDERED

/s/ Timothy S. Hillman
TIMOTHY S. HILLMAN
DISTRICT JUDGE
May 9, 2013, 1:10 p.m.

2

The Court will leave it to the parties to determine whether they want to present witness testimony on some
or all of the four factors. The Court will note however, that in assessing a request for injunctive relief, it must make
determinations concerning credibility. That the parties have relied on written submission, including affidavits of
their principals and argument/proffer of counsel makes it difficult to access credibility. However, in light of the
hyperbole, splitting of hairs, and misdirection engaged in by Vytek, primarily in its written submissions, the Court
finds Vytek to be, at best, disingenuous. Therefore, based on the current record, issues of credibility have been
resolved in Laser Mech’s favor. Presentation of witness testimony may assist the Court in making further
credibility determinations.
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The First Circuit has historically held that when a trademark plaintiff seeking a preliminary injunction
establishes a likelihood of confusion, a presumption of irreparable harm arises because “the attendant loss of profits,
goodwill, and reputation cannot be satisfactorily quantified and, thus, the trademark owner cannot adequately be
compensated.” See Swarovski Aktiengesellschaft v. Building #19, Inc., 704 F.3d 44, 54 (1st Cir. 2013). However,
although not deciding the issue, the First Circuit has suggested that the presumption of irreparable harm may no
longer be viable in light of the Supreme Court’s ruling in eBay Inc. v. MercExchange, LLC, 547 US 388, 126 S.Ct.
1837 (2006). Id.

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