Filing 16

MEMORANDUM and ORDER Denying Plaintiff's Motion for a Preliminary Injunction without Prejudice. Signed by Judge Anne E. Thompson on 2/24/2017. (km)

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RECEIVED I NOT FOR PUBLICATION UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY - FEB 24 20f7 ATB:3o_ I WILLJ;--:-AM-i-ir.-WA-.L-SH-M CLERK I WATCH YO MOUTH, LLC, Plaintiff, Civ. No. 17-00717 v. MEMORANDUM ORDER DENBIGH AND ASSOCIATES, LLC d/b/a SKYLER INNOVATIONS and PETER DENBIGH, I I Defendants. THOMPSON, U.S.D.J. 1 I This matter comes before the Court on the motion for preliminary injunctibn brought by PlaintiffWatch Yo Mouth, LLC ("Plaintiff') (ECF No. 1-11). Defendants Denbi~ and Associates, LLC d/b/a Skyler Innovations and Peter Denbigh ("Defendants") oppose. (ECF No. I I 12). Ii This case concerns the alleged infringement of Plaintiff's trademark by Defendants. Plaintiff filed the instant complaint along with a proposed order to show cause wh~ a preliminary injunction should not issue against Defendants on February 2, 2017. (ECF No. . 1)~ The Court I issued an Order to Show Cause on February 8, 2017, and held a hearing on F ebruĀ„Y 24, 2017. I The grant or denial of a preliminary injunction is within the discretion of ~e Court. See I I I American Exp. Travel Related Services, Inc. v. Sidamon-Eristoff, 669 F.3d 359, 366 (3d Cir. 2012). The primary purpose of preliminary injunctive relief is ''maintenance of thb status quo until a decision on the merits of a case is rendered." Acierno v. New Castle Count)', 40 F.3d 645, a 647 (3d Cir. 1994). The decision to issue preliminary injunction order is governed by a fourfactor test, wherein Plaintiff must demonstrate: 1 I (1) that [it is] reasonably likely to prevail eventually in the litigation anq (2) that [it is] likely to suffer irreparable injury without relief. If these two threshold showings are made the District Court then considers,. to the extent relefant, (3) whether an injunction would harm the [defendants] more than denying relief would harm the plaintiff[] and (4) whether granting relief would serve tlie public interest. K.A. ex rel. Ayers v. Pocono Mountain Sch. Dist., 710 F.3d 99, 105 (3d Cir. 2013) (quoting Tenafly Eruv Ass 'n v. Borough of Tenafly, 309 F.3d 144, 157 (3d Cir. 2002)). A preliminary I injunction is an "extraordinary remedy, which should be granted only in limited c~rcumstances," i I 1989~, Instant Air Freight Co. v. C. F. Air Freight, Inc., 882 F .2d 797, 800 (3d Cir. and is "never awarded as of right." Groupe SEB USA, Inc. v. Euro-Pro Operating, UC, 774 Fj3d 192, 197 . I- (3d Cir. 2014) (quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 24 (2008)). I In this case, the Court is not persuaded that Plaintiff has adequately satisfi~d the first factor, a likelihood of success on the merits, at this time. To prevail on an unfair competition i claim under the Lanham Act, the plaintiff must show that: (1) the mark is.valid and legally I protectable; (2) the plaintiff owns the mark; and (3) the defendant's use of a simil~ mark is likely to create confusion concerning the origin of goods or services. See Kos Ph~rm., Inc. v. Andrx Corp., 368 F.3d 700, 708 (3d Cir. 2004); Freedom Card, Inc. v. JPMorgaJChase & Co., 432 F.3d 463, 470 (3d Cir. 2005). "When determining ownership of an unregistered trademark, the Court considers (1) priority of use, and (2) market penetration." MN! Mgmt., {nc. v. Wine King, LLC, 542 F. Supp. 2d 389, 405 (D.N.J. 2008) (citations omitted). Market pbetration requires a multi-factor analysis: ( 1) the volume of sales of the trademarked produdt; (2) the I l growth trends (both positive and negative) in the area; (3) the number of persons actually purchasing the product in relation to the potential number of customers; and (4) th~ amount of product advertising in the area." Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 1S6 F.3d 311, !j 317 (3d Cir. 1999) (citations omitted). 2 i .I: ~ ~ Here, Plaintiff has not met its burden of demonstrating either priority of Je or market penetration sufficient to establish a likelihood of success on the merits of its cljs. It appears l that both Plaintiff and Defendants began using their respective claimed trademar~s in May or ' June 2016. These dates are so close in time that the Court is not yet satisfied that Plaintiff has demonstrated that it has priority of use over Defendants. Additionally, Plaintiff has not I ! adequately demonstrated market penetration in its briefs or at the hearing on the tiiotion. As a I i result, the Court is not persuaded that Plaintiff has demonstrated ownership of th~ claimed I .. trademark sufficient to establish a likelihood of success on the merits of its claims. ! Therefore, the Court does not reach the remaining factors in a preliminary:!injunction I analysis, and Plaintiff's motion for a preliminary injunction will be denied withoJt prejudice. Plaintiff may apply to the Court for a preliminary injunction and request a hearinJ to attempt to demonstrate that it can satisfy all of the factors required for the issuance of a prelLarr - I injunction. For the reasons stated above, IT IS on this 24th day of February, 2017, ORDERED that Plaintiff's motion for a preliminary injunction (ECF No. -11) is DENIED WITHOUT PREJUDICE. Isl Anne E. ThtJmpson ANNE E. THOMPSON, U.S.D.J. 3

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