REBEL DEBUTANTE LLC, et al v. FORSYTHE COSMETIC GROUP, LTD.
Filing
53
MEMORANDUM OPINION AND ORDER signed by JUDGE THOMAS D. SCHROEDER on 7/1/2011. Motion to Transfer Case 21 is DENIED; Motion for Preliminary and Permanent Injunction 7 is GRANTED IN PART AND DENIED IN PART; Defendant enjoined preliminarily as set out until further order of the court, and Preliminary Injunction shall become effective upon posting by Plaintiffs of $2,500.00 security with Clerk of Court. (Powell, Gloria)
IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF NORTH CAROLINA
REBEL DEBUTANTE LLC, a North
Carolina limited liability
Company, and ANNA
STUBBLEFIELD, a/k/a Anna
Fields,
)
)
)
)
)
)
Plaintiff,
)
)
v.
)
)
FORSYTHE COSMETIC GROUP,
)
LTD., a New York corporation, )
)
Defendant.
)
Civil Action No. 1:11cv00113
MEMORANDUM OPINION AND ORDER
ON MOTION TO TRANSFER AND PRELIMINARY INJUNCTION
THOMAS D. SCHROEDER, District Judge.
Before
the
court
is
the
motion
of
Plaintiffs
Rebel
Debutante LLC (“Rebel Debutante”) and Anna Stubblefield, a/k/a
Anna Fields (“Stubblefield”) to preliminarily and permanently
enjoin Defendant Forsythe Cosmetic Group, Ltd. (“Forsythe”) from
using
or
Forsythe
displaying
to
recall,
the
mark
destroy
“Rebel
or
Debutante,”
deliver
to
the
to
require
court
the
allegedly offending goods using that mark or similar mark, and
for other relief (“Motion”).
(Doc. 7.)
Defendant Forsythe
moves to transfer this case to the Southern District of New York
(“Motion to Transfer”) (Doc. 21), which Plaintiffs oppose (Doc.
24).
Following
briefing
by
the
parties
and
an
evidentiary
hearing, the matter is ripe for resolution.
I.
BACKGROUND
Stubblefield,
a
performer,
screenwriter,
playwright
and
author, began publishing her writing on the Internet in 2006 at
www.rebeldebutante.com
and
later
www.rebeldebutante.blogspot.com
8-1,
Stubblefield
beginning
moniker
in
Decl.
2006
“Rebel
on
¶¶
and
on
the
www.annafields.net.
2-5.)
This
writing,
www.rebeldebutante.com,
Debutante.”
blogs
Stubblefield,
(Doc.
presumably
introduced
in
her
her
briefing,
describes herself as “the eponymous Rebel Debutante, a woman
with a traditional Southern background who was born and raised
in North Carolina before moving to Los Angeles to begin a career
in the entertainment industry.”
(Doc. 8 at 2.)
She claims to
have “coined” the term “Rebel Debutante” “to refer to a personal
style and approach to fashion, society and life flowing out of
her experiences growing up in, and rebelling against, Southern
society.”
(Id.)
In March 2008, Stubblefield contracted with G.P. Putnam’s
Sons
to
author
Debutante.”
a
(Doc.
book
8-1,
entitled
“Confessions
Stubblefield
Decl.
¶
of
5.)
a
Rebel
The
book
appeared in hardcover on April 15, 2010, and as of the date of
Stubblefield’s declaration sold over 25,000 copies.
version
was
released
in
February
2
2011.
A paperback
Stubblefield
toured
nationwide
books.
to
promote
the
book
and
is
at
work
on
follow-on
(Id. ¶¶ 6-8.)
On October 16, 2008, Stubblefield filed a Trademark/Service
Mark Application with the United States Patent and Trademark
Office
(“USPTO”)
for
the
mark
“REBEL
DEBUTANTE.”
Her
application and “Trademark/Service Mark Statement of Use” listed
“use information” as “clothing, namely, t-shirts, shirts, tank
tops, pants, shorts, underwear, hooded sweat shirts, [and] tube
tops,” and the Statement of Use stated that the mark “is in use
in
commerce
listed
in
on
the
or
in
connection
application
or
with
all
Notice
goods
of
The
USPTO
issued
U.S.
Trademark
services
Allowance
subsequently modified for this specific class.”
46-3.)
or
or
as
(Docs. 46-2,
Registration
No.
3,703,222 for the trademark “REBEL DEBUTANTE” on October 27,
2009, listing the same “use information” as in the Application.
(Doc. 8-5.)
In
December
2008,
formed Rebel Debutante.
Stubblefield
company
oriented
shirts,
offers,
products
as
for
long-sleeved
a
business
(Doc. 8-1, Stubblefield Decl. ¶ 9.)
described
young
by
women,
shirts,
Stubblefield,
including
jackets,
intimate
tank
Stubblefield’s
declaration,
over
3
$10,000
“fashiontops,
apparel,
jewelry,” all sold under the “Rebel Debutante” mark.
to
partner
Rebel Debutante is the sole licensee of
the “Rebel Debutante” mark.
The
and
worth
Tand
According
of
“Rebel
Debutante” clothing and merchandise has been sold through the
website www.rebeldebutante.com.1
(Id. ¶¶ 10-11.)
Stubblefield
states that she intends to expand product sales to retail stores
and to offer additional products such as makeup and cosmetics,
including nail polish, lipstick, and lip gloss.
(Id. ¶¶ 12-14.)
Forsythe is a New York corporation that has manufactured
nail
polishes
since
1979;
it
sells
its
products
through
distributors and “does not typically sell directly to either
customers or retailers.”
Forsythe
contends
that
(Doc. 20-2, Rose Decl. ¶¶ 3, 11, 14.)
it
first
considered
using
the
phrase
“Rebel Debutante” in November 2009, and actually began using the
name on products “at least as early as January 2010” as part of
its
Spring
2010
collections
of
registered mark “Color Club.”
¶ 3;
see
Doc.
46-1.)
The
nail
polish
sold
under
its
(Id. ¶¶ 6-7; Doc. 45, Rose Decl.
“Color
Club”
collection
name
is
displayed in advertising, including on the Internet, point-ofsale displays, and packaging.
(describing
“Rebel
(See Doc. 20-1, Rose Decl. ¶¶ 5-7
Debutante”
marketing
under
“Color
Club”);
Doc. 8-12 (Internet advertisement); 4/29/11 Hearing, Plaintiff’s
Ex. 2 (point-of-sale display).)
Forsythe represents that its
“Rebel Debutante” collection was not intended to be a permanent
1
Forsythe challenges the figure of approximately $10,000 in sales,
citing documents produced, or the lack of documents produced, by
Stubblefield as of the time of Forsythe’s response to the Motion
“despite Forsythe’s request for same.” (Doc. 44 at 9 n.4.)
4
collection, has been discontinued, and is no longer offered for
sale or advertised.
“Rebel
References to the collection or color name
Debutante”
no
cosmeticgroup.com website.
longer
appear
on
Forsythe’s
(Doc. 45, Rose Decl. ¶ 4.)
Although
the collection was known as “Rebel Debutante” and every bottle
bore the “Color Club” trademark, only one of the colors in the
collection
bore
the
“Rebel
Debutante”
mark.
(Id.
¶
6.)
Forsythe represents it derived $46,745 in profits from sales of
the “Color Club” product bearing the “Rebel Debutante” mark.
(Id.)
Stubblefield demanded that Forsythe cease and desist from
further use of the phrase “Rebel Debutante” by letter dated
September 1, 2010.
(Doc. 8-16.)
Forsythe responded, promising
to investigate and “respond shortly.”
(Doc. 8-17.)
However,
Forsythe did not respond, and Stubblefield contacted Forsythe
again
on
December
3,
2010.
(Doc.
8-18.)
Forsythe
finally
responded on December 13, 2010, and denied any wrongdoing.
Doc. 8-19.)
(See
The last of this correspondence, from Forsythe,
appears to have occurred on January 7, 2010, in a letter in
which Forsythe’s counsel discounted any likelihood of confusion
because the goods sold by Forsythe and those in Stubblefield’s
trademark
registration
“are
not
related
and
they
are
characterized by the USPTO in different international classes.”
(Doc. 8-20.)
5
Stubblefield
claiming
that
brought
this
Forsythe
action
infringes
on
February
dilutes2
and
Debutante” mark through its use on nail polish.
10,
her
2011,
“Rebel
(Doc. 1.)
The
complaint asserts causes of action under the Lanham Act, North
Carolina common law, and North Carolina’s Unfair and Deceptive
Trade Practices Act, N.C. Gen. Stat. § 75-1 et seq. (“UDTPA”).
(Doc. 1.)
Stubblefield seeks to enjoin Forsythe from any use or
display of the “Rebel Debutante” mark, to require Forsythe to
recall from the retail market any infringing goods not yet sold
to
consumers,
to
mandate
that
Forysthe
destroy
all
of
its
materials using the mark and take corrective measures (including
notifying Forsythe’s distributors of any injunction) to minimize
alleged
confusion,
and
to
direct
Forsythe
to
file
a
report
setting out actions taken to comply with any injunction.
(Doc.
7 at 5-6; Doc. 51 at 3.)
Prior to considering Stubblefield’s Motion for injunctive
relief, the court turns first to Forsythe’s Motion to Transfer
the case to the Southern District of New York.
II.
MOTION TO TRANSFER
Forsythe
moves
to
transfer
this
case
to
the
Southern
District of New York pursuant to 28 U.S.C. § 1404(a), arguing
that
the
case
is
a
dispute
between
2
two
New
York
parties
Stubblefield’s briefing before the court focuses on her claim for
infringement. Thus, this court will do the same.
6
involving New York evidence and New York witnesses.
4.)
(Doc. 21 at
Stubblefield disputes this characterization, noting that
Rebel
Debutante
Winston-Salem,
is
and
a
she
North
Carolina
testified
corporation
that
she
moved
based
to
in
North
Carolina in August 2009 and is a full-time law student at Wake
Forest Law School in Winston-Salem.
Stubblefield Aff., Ex. 5.)
(Doc. 24 at 1; Doc. 24-1,
Forsythe, in turn, points to media
reports quoting Stubblefield as “maintain[ing] significant ties
to New York” and to her trademark application listing a New York
City address for Rebel Debutante’s office to contend that this
dispute involves significant contacts in New York.
(Doc. 25 at
1.)
Section
1404(a)
provides
that
“[f]or
the
convenience
of
parties and witnesses, in the interest of justice, a district
court may transfer any civil action to any other district or
division
where
it
might
§ 1404(a).
The
court
determining
whether
to
1404(a).
have
been
undertakes
transfer
a
brought.”
a
case
two-step
pursuant
28
U.S.C.
process
to
in
section
First, section 1404(a) requires that the lawsuit could
have been brought in the district or division to which transfer
is sought.
Because Stubblefield asserts causes of action under
the
Act,
Lanham
which
would
establish
federal
jurisdiction
generally, and Forsythe is organized under the laws of the State
of New York with its offices and manufacturing facilities based
7
there (Doc. 20-2, Rose Decl. ¶ 3), this action could have been
brought in the Southern District of New York.
Second, the court determines whether transfer is warranted.
In considering a motion to transfer, a court should weigh the
following discretionary factors:
(1) the plaintiff’s initial choice of forum; (2)
relative ease of access to sources of proof; (3)
availability of compulsory process for attendance of
unwilling witnesses, and the cost of obtaining
attendance of willing and unwilling witnesses; (4)
possibility of a view of the premises, if appropriate;
(5) enforceability of a judgment, if one is obtained;
(6) relative advantage and obstacles to a fair trial;
(7) other practical problems that make a trial easy,
expeditious,
and
inexpensive;
(8)
administrative
difficulties of court congestion; (9) local interest
in having localized controversies settled at home;
(10) appropriateness in having a trial of a diversity
case in a forum that is at home with the state law
that must govern the action; and (11) avoidance of
unnecessary problems with conflicts of law.
Speed Trac Techs., Inc. v. Estes Express Lines, Inc., 567 F.
Supp.
2d
799,
802
(M.D.N.C.
2008).
The
party
moving
to
transfer, in this case Forsythe, bears the burden of proving
that the balance favors transfer.
Id. at 803.
A plaintiff’s
choice of forum is given considerable weight and, “unless the
balance is strongly in favor of the defendant, the plaintiff’s
choice
of
forum
should
rarely
be
disturbed.”3
Collins
v.
Straight, Inc., 748 F.2d 916, 921 (4th Cir. 1984) (quoting Gulf
3
A plaintiff’s choice of forum, however, receives less weight when
(1) the plaintiff chooses a foreign forum, or (2) the cause of action
bears little or no relation to the chosen forum. Speed Trac, 567 F.
Supp. 2d at 803.
8
Oil
Corp.
Flowers,
v.
297
Gilbert,
F.
Supp.
330
U.S.
501,
2d
846,
850
508
(1946));
(M.D.N.C.
Brown
2003)
Collins), aff’d, 196 F. App’x 178 (4th Cir. 2006).
v.
(citing
Transfer is
inappropriate if it simply shifts the inconvenience from one
party to the other.
Speed Trac, 567 F. Supp. 2d at 803; Brown,
297 F. Supp. 2d at 850.
The court’s discretion under section
1404(a) with respect to a showing of inconvenience, however, is
broader than that available under “the old doctrine of forum non
conveniens.”
Norwood v. Kirkpatrick, 349 U.S. 29, 32 (1955).
Each applicable factor will be addressed in turn.4
Plaintiff’s
Debutante
is
Stubblefield
initial
a
North
grew
up
forum
Carolina
in
choice.
limited
Alamance
Plaintiff
liability
County,
North
Rebel
company.
Carolina,
attended high school in Winston-Salem, moved back to WinstonSalem in August 2009, registered to vote in North Carolina on
June 23, 2010, and pays taxes in North Carolina.
Stubblefield Aff. ¶¶ 3-4, 6-7, 9-12.)
agreement
for
property
in
(Doc. 24-1,
She has produced a rental
Winston-Salem
beginning
August
1,
2009, a schedule of full-time law school classes for Spring
2011, and a copy of a North Carolina driver’s license issued to
her in 2006.
(Id., Exs. 1-4.)
4
The parties agree that the Speed Trac factors of jury view and court
congestion favor neither venue. (Doc. 22 at 7-8; Doc. 24 at 3-4.)
9
Forsythe points to Stubblefield’s listing of a New York
address on her August 26, 2009, trademark statement of use and
to
evidence
that
including
rental
Forsythe
also
she
of
maintained
a
New
produced
York
March
a
presence
apartment,
2011
in
printouts
York,
into
well
New
2010.
of
websites
maintained by Stubblefield that listed her as a “New York based”
television writer, author, comedienne and Reluctant (as well as
Rebel) Debutante.
(Doc. 22-1, Exs. A-B.)
Finally, Forsythe
relies on transcripts of April 2010 interviews of Stubblefield
in which she stated she spent half the year in New York City and
half
the
4/29/11
year
in
Hearing),
Winston-Salem
(Doc.
as
a
well
as
25-1,
Exs.
September
2010
A-C,
E-G;
interview
transcript in which she is reported to have said that “I’m in
Carolina right now but I do go back and forth to New York and LA
because I’m writing a movie for the book.”
(Doc. 25-1, Ex. D.)
At the April 29, 2011 hearing, Stubblefield testified that
after moving to North Carolina in 2009, she divided her time
between the state and New York primarily to spend weekends with
her boyfriend, until he moved to North Carolina in April 2010.
She also testified that she had given “hundreds” of interviews
and
characterized
“hyperbole.”
her
statements
of
New
York
ties
as
Finally, she stated that the information on her
website blog was simply outdated and, although the New York
10
lease was in her name, her boyfriend lived there and paid the
rent.
While Stubblefield’s attempt to dismiss her inconsistent
statements as hyperbole does little to enhance her credibility,
the materials noted by Forsythe do not fundamentally undermine
the
fact
that
claims.
North
Carolina
has
a
real
connection
to
her
Rebel Debutante is a North Carolina company and the
licensee of the “Rebel Debutante” mark, and Stubblefield, who
owns the mark, has demonstrated a significant connection to the
state.
Plaintiffs’ choice of forum is therefore entitled to
considerable weight.
Relative ease of access to proof sources; availability of
compulsory
process
for
attendance
of
unwilling
witnesses
and
cost of obtaining attendance of willing and unwilling witnesses;
relative
practical
advantage
obstacles
and
local
problems;
controversies
factors
and
settled
favor
at
transfer,
to
a
interest
home.
fair
in
Forsythe
primarily
on
the
trial;
having
argues
grounds
other
localized
that
these
that
the
dispute is a “localized controversy” in New York where witnesses
reside and discovery will largely take place.
(Doc. 22 at 7-8;
Doc. 25 at 7-9; Doc. 20-2, Rose Decl. ¶ 3.)
Forsythe contends
that
if
forced
to
litigate
outside
New
York,
it
will
incur
significant fees, including retention of local counsel, shipping
11
fees, and costs of travelling with lead counsel.
(Doc. 20-2,
Rose Decl. ¶ 17.)
It
is
not
apparent
that
Plaintiffs’
reflect a localized New York controversy.
Lanham
Act
Forsythe’s products
are sold nationwide, primarily through distributors.
Forsythe
claims
that
only
a
handful
claims
of
its
Moreover,
employees
were
involved in any relevant way in the matters at issue, and the
record
indicates
that
Forsythe
relied
principally
on
two
consultants in California to identify the “Rebel Debutante” name
for its use and to undertake related commercial artwork.
Doc. 34-5, Rose Decl. ¶¶ 9-10.)
(See
Thus, it is not apparent that
Forsythe would bear an unfair burden in responding to discovery
or that all significant discovery would be limited to New York.
Indeed,
that
Forsythe’s
employees
are
located
in
New
burdens Plaintiffs, who appear willing to accept it.
Rebel
Debutante
is
North
Carolina,
and
closely
has
tied
few,
to
if
Stubblefield,
any,
employees,
York
Insofar as
located
any
in
travel
burden imposed on Forsythe by the venue appears minimal.
As
to
the
counsel
argument,
under
the
oft-applicable
“goose/gander” rule, it bears noting that moving the case to New
York would cause Plaintiffs to retain local counsel and thereby
simply reverse the burden of most of the alleged counsel and
discovery
costs
of
which
Forsythe
factors are neutral.
12
complains.
The
remaining
Enforceability
of
judgment.
Forsythe
argues
that
this
factor favors transfer because Forsythe is located in New York.
(Doc. 22 at 7.)
Even assuming for argument’s sake any risk of
collection
attends
any
possible
voluntarily
assumed
that
risk.
judgment,
This
Plaintiffs
factor
favors
have
neither
party.
Appropriateness of litigating a diversity case in a forum
at
home
with
governing
state
law.
Forsythe
argues
that
Stubblefield’s two North Carolina state law claims favor neither
party because they should be dismissed for failing to satisfy
the
amount
in
controversy
requirement
absent
the
court’s
supplemental jurisdiction (Doc. 25 at 10.).
At this point, the
driving
to
force
of
this
litigation
appears
be
Plaintiffs’
Lanham Act claim, and there is no need to address any claim that
a New York court is any less-equipped to apply North Carolina
law in this case if such claims proceed.
This factor therefore
favors neither party.
Avoidance of conflicts of laws problems.
Forsythe argues
that this factor favors transfer because New York state law of
unfair competition is substantially similar to that of North
Carolina.
(Doc. 22 at 8.)
Plaintiffs respond that they need
not address the factor because “there is no anticipated conflict
of law issue, and thus the factor does not favor transfer.”
(Doc. 24 at 5 n.1.)
The court agrees with Plaintiffs.
13
In summary, in balancing all the relevant factors the court
concludes
that
Forsythe
has
not
demonstrated
that
the
convenience of the parties and witnesses and the interests of
justice
weigh
in
favor
of
transferring
Southern District of New York.
this
action
to
the
Consequently, Forsythe’s Motion
to Transfer (Doc. 21) will be denied.
III. MOTION FOR PRELIMINARY AND PERMANENT INJUNCTION
A.
Mootness
Forsythe asserts as a preliminary matter that the need for
an injunction, preliminary or permanent, is moot because it has
discontinued
its
Rebel
Debutante
line,
no
longer
markets
or
sells the product, and does not intend to use the mark in the
future.
(Doc. 44 at 2-3, 5; Doc. 50 at 2-3; see Doc. 45, Rose
Decl. ¶ 4.)
Plaintiffs argue that Forsythe’s assertions should
not be accepted, particularly since it is capable of resuming
production.
5
5
Plaintiffs also argue that Forsythe has “a pattern and practice of
willfully or recklessly violating the trademark laws.”
(Doc. 8 at
28.)
Plaintiffs include the dockets relating to two prior cases in
which judgments including injunctions against Forsythe were entered.
(Docs. 8-8, 8-9.)
Forsythe replies that the judgment reflected in
Doc. 8-9 was entered into by stipulation and dismissed all damages
claims against it.
(Doc. 44 at 19-20.)
The stipulated judgment
itself, submitted by Forsythe, appears to have addressed product
packaging while dismissing plaintiff’s damages claim and leaving each
party to bear its own attorneys’ fees and costs of litigation. (See
Doc. 46-12.) It is not clear that Forsythe addressed the other case,
brought in 2000; the docket reflects that the plaintiff was a
cosmetics company and that a settlement appears to have been reached
before entry of judgment. (Doc. 8-8.)
14
Once
a
defendant
has
stopped
marketing
a
product
that
allegedly infringes on a protected mark, an injunction may be
unnecessary when “there is no reasonable expectation that the
wrong will be repeated.”
Lyons P’ship, L.P. v. Morris Costumes,
Inc., 243 F.3d 789, 800 (4th Cir. 2001) (quoting United States
v. W.T. Grant Co., 345 U.S. 629, 633 (1953)).
A defendant,
however, “face[s] a heavy burden to establish mootness in such
cases because otherwise they would simply be free to ‘return to
[their] old ways’ after the threat of a lawsuit has passed.”
Id. (quoting Iron Arrow Honor Soc’y v. Heckler, 464 U.S. 67, 72
(1983)).
Bald assertions by a defendant that it will not start
up again are not enough to carry this heavy burden.
context
of
an
infringement
action,
such
assertions,
“In the
standing
alone, cannot eliminate the plaintiff’s ‘reasonable expectation
that the alleged violation will recur’ in the absence of a court
order.”
Id.
at
800-01
(remanding
with
instructions
that
district court enter an injunction).
Even when a defendant has ceased production, it has not met
its “heavy burden” unless it shows that it would be unable to
resume production in the future.
Lance Mfg., LLC v. Voortman
Cookies Ltd., 617 F. Supp. 2d 424 (W.D.N.C. 2009) (granting
preliminary injunction; also expressing concern about products
still in the marketplace); cf. Lorillard Tobacco Co. v. S & M
Brands, Inc., 616 F. Supp. 2d 581, 586 (E.D. Va. 2009) (noting
15
that
defendant
infringed
and
continued
to
challenge
granting
preliminary
whether
the
injunction
mark
on
was
initial
advertisements).
The court concludes that Forsythe’s mere assurance that the
case
is
moot
expectation
of
does
a
not
further
eliminate
violation.
Plaintiffs’
This
is
reasonable
buttressed
by
Forsythe’s assertion throughout that its use does not infringe
the mark.
The court finds, therefore, that Forsythe has not met
its “heavy burden,” and neither the case nor the motion for
injunctive relief is moot.
B.
Standard for Injunctive Relief
A preliminary injunction is “an extraordinary remedy . . .
which is to be applied only in [the] limited circumstances which
clearly demand it.”
Direx Israel, Ltd. v. Breakthrough Med.
Corp., 952 F.2d 802, 811 (4th Cir. 1991) (internal quotation
marks omitted) (citation omitted).
The traditional purpose of a
preliminary injunction is to “protect the status quo and to
prevent
irreparable
ultimately
meaningful
to
harm
preserve
judgment
on
during
the
pendency
of
court’s
the
the
ability
to
merits.”
In
re
may
enter
a
preliminary
injunction,
a
lawsuit
render
Microsoft
Antitrust Litig., 333 F.3d 517, 525 (4th Cir. 2003).
court
a
a
Corp.
Before a
plaintiff
“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
16
preliminary relief, [3] that the balance of equities tips in his
favor, and [4] that an injunction is in the public interest.”
WV Ass’n of Club Owners & Fraternal Servs., Inc. v. Musgrave,
553 F.3d 292, 298 (4th Cir. 2009) (quoting Winter v. Natural
Res. Def. Council, Inc., 555 U.S. 7 (2008)).
The burden is on
the party seeking a preliminary injunction to demonstrate by a
“clear showing” that she is entitled to such relief.
See, e.g.,
The Real Truth About Obama, Inc. v. Fed. Election Comm’n, 575
F.3d 342, 345-46 (4th Cir. 2009) (citing Winter, 555 U.S. 7, 129
S. Ct. at 375-76, with respect to likelihood of success on the
merits
at
trial
and
irreparable
injury),
vacated
on
other
grounds, 130 S. Ct. 2371 (2010), restated in relevant part on
remand,
607
F.3d
355
(4th
Cir.
2010)
(per
curiam).
Each
requirement will be examined in turn.
1.
To
prove
Likelihood of Success on the Merits
trademark
infringement,
Stubblefield
must
show
that she owns a valid and protectable mark, Forsythe used a “reproduction, counterfeit, copy, or colorable imitation” of that
mark in commerce and without Stubblefield’s consent, and use of
the mark is likely to cause confusion.
Louis Vuitton Malletier
S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 259 (4th Cir.
2007).
show
a
To obtain a preliminary injunction, Stubblefield must
likelihood
elements.
of
success
with
respect
to
See Lorillard, 616 F. Supp. 2d at 590.
17
each
of
these
a.
Stubblefield
“Rebel
Ownership of a Valid and Protectable Mark
applied
Debutante”
on
with
the
October
USPTO
16,
for
2008.
registration
USPTO
issued
of
a
registration certificate on October 27, 2009.
To ascertain whether a trademark is protected, the court
must determine whether the mark is (1) generic, (2) descriptive,
(3) suggestive, or (4) arbitrary or fanciful.
v.
US
Search.com
Inc.,
300
F.3d
517,
523
U.S. Search, LLC
(4th
Cir.
2002).
Suggestive as well as arbitrary and fanciful marks are deemed
inherently
distinctive
protection.
Id.
A
and
receive
suggestive
the
mark
greatest
consists
of
amount
words
of
that
connote, rather than describe, some quality or characteristic of
a product or service.
A descriptive mark may be eligible for
protection but only if it has acquired a “secondary meaning” in
the minds of the public.
for protection.
Terms that are generic are ineligible
Id.6
A certificate of registration is prima facie evidence of
the
validity
proper
of
the
registration
mark,
under
ownership
the
Lanham
by
the
Act.
registrant,
Brittingham
and
v.
Jenkins, 914 F.2d 447, 452 (4th Cir. 1990) (citing 15 U.S.C.
6
Examples of suggestive marks (which conjure images of associated
products) include Coppertone®, Orange Crush®, and Playboy®. Sara Lee
Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).
Examples of fanciful marks (made-up words expressly coined to serve as
a mark) include Clorox®, Kodak®, Polaroid®, and Exxon®.
Arbitrary
marks (common words applied in unfamiliar ways) include Camel®
cigarettes and Apple® computers. Id.; U.S. Search, 300 F.3d at 523 &
n.6.
18
§ 1057(b)); see 15 U.S.C. § 1115(a).
Because the USPTO did not
require Stubblefield to establish a “secondary meaning” before
it granted registration, the USPTO did not consider the mark
either
generic
protected.
or
merely
descriptive,
which
would
not
be
Rather, in this case, the grant of the registration
is prima facie evidence that the mark is suggestive (or fanciful
or arbitrary).
See Synergistic Int’l, LLC v. Korman, 470 F.3d
162, 172 (4th Cir. 2006); Lone Star Steakhouse & Saloon, Inc. v.
Alpha of Va., Inc., 43 F.3d 922, 934 (4th Cir. 1995).
the
“Rebel
Debutante”
mark
is
entitled
to
validity and Stubblefield of ownership.
a
Further,
presumption
of
15 U.S.C. § 1115(a);
see Brittingham, 914 F.2d at 452 (citing 15 U.S.C. § 1115(a)).
Because “Rebel Debutante” has not been in continuous use for
five consecutive years following registration, registration is
not
“conclusive”
Forsythe
under
evidence
the
and
Lanham
therefore
Act.
See
not
15
incontestable
U.S.C.
§§
by
1115(b)
(“Incontestability”), 1065 (“Incontestability of right to sue
mark under certain conditions”); cf. Korman, 470 F.3d at 166
(citing
15
U.S.C.
§
1065
in
context
of
mark
satisfying
incontestability requirements).
Forsythe
contests
the
validity
of
Stubblefield’s
registration in its counterclaims and by affirmative defense.
(Doc. 40 at 10, 13-17; see Docs. 44 at 3 n.1, 46-3, 46-4, 46-5,
46-6.)
The
presumption
of
validity
19
does
not
preclude
one
charged
with
infringement
from
collaterally
attacking
the
trademark either by way of an affirmative defense or by way of a
counterclaim
seeking
cancellation
of
the
registration
mark has not become incontestable under § 1065.
if
the
Pizzeria Uno
Corp. v. Temple, 747 F.2d 1522, 1529 (4th Cir. 1984) (citing 15
U.S.C. § 1115(a)).
In challenging the presumption, Forsythe
must introduce sufficient evidence, by a preponderance, to rebut
the presumption of Stubblefield’s right to exclusive use.
Id.
at 1529 & n.4.
Forsythe, which has produced little evidence in support of
its
challenge
introducing
Further,
at
this
sufficient
the
term
time,
has
evidence
“Rebel
not
carried
to
rebut
Debutante”
its
the
on
its
burden
of
presumption.
face
appears
suggestive, juxtaposing two words not typically associated with
one
another,
that
rebelliousness.
is,
the
formal,
Therefore,
the
reserved
court
debutante
concludes
with
that
Stubblefield has demonstrated a likelihood of success on this
element.
b.
Use of Mark in Commerce and Without Consent
Stubblefield presented evidence of Forsythe’s use of the
mark
“Rebel
Forsythe’s
term
own
“Rebel
polish.
Debutante”
in
commerce,
advertisements
Debutante”
in
and
consisting
product
connection
with
primarily
displays
the
using
sale
of
of
the
nail
(E.g., Doc. 8-12; 4/29/11 Hearing, Plaintiff’s Exs. 120
2.)
Stubblefield
between
the
also
parties
presented
prior
to
evidence,
litigation,
including
letters
demonstrating
that
Stubblefield did not consent to use of the mark by Forsythe.
(E.g., Docs. 8-16 through 8-20.)
Therefore, Stubblefield has
demonstrated a likelihood of success on this element.
c.
Stubblefield
occurred
in
preliminary
a
Defendant’s Use of Mark in a Manner Likely
to Cause Confusion
must
show
manner
injunction
that
likely
Forsythe’s
to
stage,
cause
however,
a
use
of
the
confusion.
plaintiff
mark
At
need
the
only
show he or she is likely to show a likelihood of confusion with
respect to this element.
926
F.2d
convince
42,
a
44
(1st
district
See WCVB-TV v. Boston Athletic Ass’n,
Cir.
court
1991)
that
(“Unless
it
will
a
likely
plaintiff
show
can
such
a
‘likelihood of confusion’ on the merits of its trademark claim .
. . it is not entitled to a preliminary injunction.”).
“The
test is likelihood of confusion; evidence of actual confusion is
unnecessary.”
Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455,
463 (4th Cir. 1996); see Louis Vuitton, 507 F.3d at 263 (noting
that
it
is
“well
established
that
no
actual
confusion
is
required to prove a case of trademark infringement”).
To
ascertain
the
likelihood
of
confusion
between
two
trademarks, courts consider a number of factors, including the
following: (1) the strength or distinctiveness of plaintiff’s
21
mark; (2) the similarity of the two marks; (3) the similarity of
the
goods
or
services
that
the
marks
identify;
(4)
the
similarity of the facilities used by the parties in conducting
their businesses; (5) the similarity of the advertising used by
the parties; (6) the defendant’s intent in using the same or
similar mark; (7) actual confusion; (8) the proximity of the
products as they are actually sold; (9) the probability that the
senior
mark
owner
will
“bridge
the
gap”
by
entering
the
defendant’s market; (10) the quality of the defendant’s product
in
relation
to
the
mark
owner’s
sophistication
of
the
consuming
Silstar
of
Am.,
Inc.,
Corp.
110
product;
and
(11)
public.
Shakespeare
F.3d
241-42
234,
the
Co.
(4th
v.
Cir.
1997); Sara Lee, 81 F.3d at 463-64; Pizzeria Uno, 747 F.2d at
1527.
This list “is neither exhaustive nor exclusive, and some
of the factors may not always be relevant or equally emphasized
in each case.”
Shakespeare, 110 F.3d at 242; see Sara Lee, 81
F.3d
(noting
at
463
that
“though
several
factors
are
simultaneously present, some factors may, depending on the case,
be more important than others”).
Each factor will be considered
in turn.
Strength
or
Distinctiveness
of
Plaintiff’s
Mark.
“The
first and paramount factor” is the distinctiveness or strength
of the mark.
Pizzeria Uno, 747 F.2d at 1527.
Forsythe asserts
that Stubblefield’s mark is neither strong nor distinctive, its
22
use in the marketplace being allegedly weak (generating less
than
$10,000
contrary).
in
sales
despite
Stubblefield’s
claim
(E.g. Doc. 44 at 9 n.4; see Doc. 50 at 5.)
to
the
Forsythe
also asserts that the mark is descriptive and, therefore, not
entitled to protection.
(Doc. 44 at 10.)
In assessing this factor, the court examines “the strength
or distinctiveness of the plaintiff’s mark as actually used in
the marketplace.”
CareFirst of Md., Inc. v. First Care, P.C.,
434 F.3d 263, 269, 271 (4th Cir. 2006); accord Ga. Pac. Consumer
Prods., LP v. Von Drehle Corp., 618 F.3d 441, 454 (4th Cir.
2010)
(citing
Imagination
George
Entm’t
&
Ltd.,
(citing Pizzeria Uno).
Co.,
573
infra);
F.3d
George
383,
&
393
(4th
Co.
LLC
Cir.
v.
2009)
As the Fourth Circuit has observed,
“[i]n conducting the likelihood-of-confusion analysis, a court
does not ‘indulge in a prolonged and minute comparison of the
conflicting marks in the peace and quiet of judicial chambers,
for this is not the context in which purchasers are faced with
the marks.’
their
marks
Rather, we look to how the two parties actually use
in
the
marketplace
to
determine
defendant’s use is likely to cause confusion.”
whether
the
CareFirst, 434
F.3d at 267 (citation omitted) (quoting 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 23:58 (4th ed.
2005)).
23
The “strength” of a mark is the “degree to which a consumer
in the relevant population, upon encountering the mark, would
associate the mark with a unique source.”
strength
is
evaluated
in
terms
strength and commercial strength.”
of
Id. at 269.
the
Id.
mark’s
The
“conceptual
Measuring the mark’s
conceptual (or inherent) strength focuses on the linguistic or
graphical peculiarity of the mark.
Id.
classified
in
marks
into
four
groups
As noted, courts have
an
ascending
order
of
strength or distinctiveness: (1) generic; (2) descriptive; (3)
suggestive; and (4) arbitrary or fanciful.
F.2d at 1527.
Pizzeria Uno, 747
This factor obviously relates to validity of the
trademark itself as well.
As this court concluded, the term “Rebel Debutante” is more
aptly
classified
as
suggestive
than
descriptive.
The
juxtaposition of the words implies a distinctive concept of a
woman both a part of, and rebelling against, the establishment.
The
term,
therefore,
appears
to
have
significant
linguistic
strength.
The commercial-strength inquiry “looks at the marketplace
and
asks
‘if
in
fact
a
substantial
number
of
present
or
prospective customers understand the designation when used in
connection with a business to refer to a particular person or
enterprise.’”
CareFirst, 434 F.3d at 269.
Stubblefield, at the
time of the commencement of this lawsuit, claims to have sold
24
over $10,000 in merchandise related to the “Rebel Debutante”
mark through a website.
25,000
consumers
have
The record also indicates that over
purchased
“Confessions
of
a
Rebel
Debutante” (after the appearance of Forsythe’s “Rebel Debutante”
collection) and that the publication contract for the book arose
as a result of Stubblefield’s website.
Although her book was
placed on the market after introduction of the collection, those
sales and an earlier book contract suggest that in some measure
the
term
“Rebel
Debutante”
associated
with
Stubblefield
public.
Accordingly,
this
would
by
a
be
segment
factor
considered
of
weighs
the
in
closely
consuming
favor
of
Stubblefield.
Similarity of the Two Marks to Consumers.
Forsythe argues
that the combined use of its Color Club “house mark” (which it
asserts has been a recognized brand name since 2003 (Doc. 45,
Rose Decl. ¶ 3; Doc. 46-1 (Certificate of U.S. Trademark Reg.
for “Color Club”)) with the term “Rebel Debutante” negates any
likelihood
of
confusion.
Forsythe
relies
principally
on
CareFirst, 434 F.3d at 271, which Forsythe describes as finding
that “‘CareFirst BlueCross BlueShield’ [is] not likely to be
confused with ‘FirstCare’ [sic],” and Four Seasons Hotels Ltd.
v. Koury Corp., 776 F. Supp. 240, 247 (E.D.N.C. 1991), which
Forsythe describes as holding that “‘Holiday-Inn Four Seasons’
for [a] Greensboro hotel [is] not likely to cause confusion with
25
the ‘Four Seasons’ national hotel brand.”
Doc. 50 at 4-5.)
(Doc. 44 at 11-12;
Forsythe also argues that “Color Club” is
displayed prominently in connection with its use of the phrase
“Rebel
Debutante”
and
that
it
is
impossible
to
confuse
Forsythe’s “stylistic, classy script” on Color Club nail polish
collections
clothing.
with
Stubblefield’s
block-printed,
angled
use
on
(Doc. 44 at 12 (comparing Doc. 8-12 with Doc. 8-21).)
Stubblefield
contends
that
the
two
marks
are
identical
(because they contain “Rebel Debutante”) and that customers are
unlikely
to
believe
that
the
pairing
is
associated
with
different companies’ products, citing United States Jaycees v.
Philadelphia Jaycees, 639 F.2d 134, 142 (3d Cir. 1981) (“great
likelihood
trademark”).
of
confusion
when
In
words,
other
an
infringer
Stubblefield
uses
the
argues,
exact
pairing
“Rebel Debutante” with “Color Club” aggravates the likelihood of
confusion because it could lead consumers to believe that the
“Rebel Debutante” mark belonged to Forsythe, not Stubblefield.
Neither CareFirst nor Four Seasons suffices to carry the
day for Forsythe.
In CareFirst, the court determined on summary
judgment that a Virginia primary care physician group’s use of
the name “First Care” was not likely to cause confusion with
plaintiff’s “CareFirst” mark used predominantly as “CareFirst
Blue Cross Blue Shield.”
After noting that plaintiff was aware
of defendant’s use for over eight years before suing, the court
26
conducted
its
likelihood
of
confusion
analysis
and
found
it
important that no actual confusion could be shown over that
extended period.
Noting (which Forsythe emphasizes here) that
“[i]f one of two similar marks is commonly paired with other
material, that pairing will serve to lessen any confusion that
might otherwise be caused by the textual similarity between the
two marks,” the court stated that this “is most significant when
. . . the allegedly infringed mark . . . has little independent
strength.”
434 F.3d at 271.
The court found the “CareFirst”
mark weak with little conceptual strength upon evidence that
“dozens” of healthcare-related businesses used “CareFirst” or
“First
Care.”
“[b]ecause
Id.
at
The
court
registered
CareFirst’s
269-70.
mark
is
concluded
weak,
that
consumers
encountering ‘CareFirst BlueCross BlueShield,’ on the one hand,
and ‘First Care’ on the other, are more likely to focus on the
differences
between
the
two”
particularly
in
prominence of the “Blue Cross Blue Shield” mark.
light
of
the
Id. at 271.
Any support CareFirst might provide Forsythe is not welldeveloped on this record.
The mark “Rebel Debutante,” unlike
the weak CareFirst mark, is peculiar and possesses independent
conceptual
strength.
No
one
is
shown
to
use
the
“Rebel
Debutante” mark other than Stubblefield, who appears to have
coined
the
phrase,
and,
for
a
time,
Forsythe.
Moreover,
“CareFirst” and “First Care” are only similar, whereas “Rebel
27
Debutante” is identical.
say
on
this
record
Unlike in CareFirst, the court cannot
that
the
parties’
use
of
the
mark
is
sufficiently different to reduce the likelihood of confusion.
It
is
also
important
that
CareFirst
was
decided
on
a
full
factual record on summary judgment, yet in this case discovery
has only just begun.
Four Seasons involved a challenge by the owner of the “Four
Seasons” hotel mark against the operator of a “Holiday Inn”
hotel in Greensboro, North Carolina.
The defendant used the
“Four Seasons” name in advertising because the hotel was located
at Four Seasons Town Centre Mall.
The court found that the
defendant’s use of “Four Seasons” by itself infringed on the
plaintiff’s protected marks.
776 F. Supp. at 248.
Most of the
remainder of the court’s discussion concerned the defendant’s
attempt
to
establish
a
prior
use
defense.
It
was
in
that
context that the court recognized that “[u]se of a strong, wellknown mark as part of a composite name reduces the likelihood
that
the
remainder
of
that
composite
name
will
create
commercial impression distinct from the well-known mark.”
at 247.
a
Id.
The court quickly noted, however, that “Holiday Inn” is
“one of the strongest, most well-known service marks in the
American hotel industry.”
showing
as
ultimately
to
“Color
permitted
Id.
Club.”
the
Here, Forsythe has not made this
More
defendant
28
to
to
the
use
point,
“Four
the
court
Seasons”
in
conjunction with “Holiday Inn” as a location modifier and in
conjunction with other specific “nationally recognized hotelchain names” specifically because the mark owner conceded such
use,
thus
the
Id. at 248.7
question.
peculiar
relieving
lifestyle
court
of
the
need
to
decide
the
In contrast, “Rebel Debutante” invokes a
unlike
the
geographic
descriptor
in
Four
Seasons, and Plaintiffs do not concede Forsythe’s use.
And
here, too, Four Seasons was decided after a full trial, whereas
the
matter
before
the
court
is
merely
at
the
preliminary
injunction stage.
Although pairings may decrease or eliminate the likelihood
of
confusion
in
some
cases,
simply
pairing
a
registered
trademark with another mark cannot alone avoid a finding of a
likelihood of confusion.
See Super Duper, Inc. v. Mattel, Inc.,
382 F. App’x 308, 316 (4th Cir. 2010) (unpublished per curiam)
(approving
jury
instruction
that
placement
of
house
mark
on
packaging did not ipso facto foreclose the possibility that a
likelihood
of
confusion
existed;
7
citing
CareFirst),
cert.
A leading treatise on trademarks, in citing CareFirst, Four Seasons,
and other cases, observed that “the most that can be said as a
generalization is that a junior user’s addition of a house mark to a
possibly infringing mark of the senior user has the potential to
reduce or eliminate likelihood of confusion.”
4 Thomas J. McCarthy,
McCarthy on Trademarks and Unfair Competition § 23:43 (4th ed.)
(emphases added) (but noting examples of a likelihood of confusion
created when a junior user added its house mark to the senior user’s
mark, including NU-LOOK laundry detergent versus KNIGHT’S NU-LOOK on
floor polish; SPARKS for shoes versus SPARKS BY SASSAFRAS for women’s
apparel; and GOLF CLASSIC men’s hats versus HATHAWAY GOLF CLASSIC
sports shirts).
29
denied, 131 S. Ct. 1003 (2011).8
The court finds that pairing of
the “Rebel Debutante” mark with “Color Club” does not avoid but
may
increase
potential
confusion.
For
example,
Plaintiff’s
Exhibit 1 presented at the April 29, 2011, hearing presents a
Forsythe
advertisement
in
which
the
term
“Rebel
Debutante”
appears above, centered, and in much larger type than “Color
Club.”
This advertisement could lead to confusion by making it
appear
that
“Color
Debutante.”
Co.,
Inc.,
Club”
was
being
paired
with
“Rebel
Cf. Frank Brunckhorst Co. v. G. Heileman Brewing
875
F.
Supp.
966,
978
(E.D.N.Y.
1994)
(finding
likelihood of confusion with “Boar’s Head” mark of meat producer
where “Boar’s Head Beer” was paired with the latter’s “Weinhard”
trade name); Express Welding, Inc. v. Superior Trailers, LLC,
700 F. Supp. 2d 789, 798-99 (E.D. Mich. 2010) (finding that
defendant’s
use
of
its
trade
name
“Superior
Trailers”
in
connection with plaintiff’s “Nitro Stinger” and “Nitro Spreader”
marks did not reduce the likelihood of confusion).
And while
Forsythe argues that it employs cursive script in part (e.g.,
“Rebel Debutante” (4/29/11 Hearing, Plaintiff’s Exs. 1, 2; Doc.
8-12)),
potential
this
slight
confusion.
variation
is
not
Therefore,
sufficient
this
factor
to
avoid
favors
Stubblefield.
8
Unpublished decisions are not precedential but are cited for their
persuasive authority.
30
Similarity of the Goods or Services.
that
her
market
consists
of
young
Stubblefield argues
women
who
are
fashion-
conscious and are heavy consumers of apparel and accessories
(such as nail polish).
She contends that both parties sell
components
in
image.
of
an
image,
(Doc. 8 at 22-24.)
are completely different.
this
case
the
“Rebel
Debutante”
Forsythe argues that the products
(Doc. 44 at 13.)
A mark holder is not limited to protection of only the
products listed in its application to USPTO or by the resulting
certificate of registration.
Suggestive marks are entitled to
more
those
protection
than
just
products
sold,
and
the
appropriate reading “is not limited to the text of the mark’s
registered purpose.”
Synergistic, 470 F.3d at 172-73.
question is whether the goods or services are related.
The
See id.
at 173 (citing Pizzeria Uno, 747 F.2d at 1527).
Cosmetics are, to some degree, related to women’s apparel.
Apparel
has
been
identified
as
related
to
other
products,
including cosmetics, generally in cases involving a well-known
mark or involving identical marks.
In re Jacques Bernier Inc.,
1 U.S.P.Q.2d 1924, 1925, 1987 WL 123809 (T.T.A.B. 1987)9; see In
9
The Fourth Circuit has noted that Trademark Trial and Appeal Board
(“TTAB”) decisions are due “great weight” when they bear on an issue
but that great weight “does not mean obeisance, and it does not even
mean deference, particularly in the face of overwhelmingly clear
statutory language that leads to a contrary conclusion.”
Int’l
Bancorp, LLC v. Societe des Bains de Mer et du Cercle des Etrangers a
Monaco, 329 F.3d 359, 379 (4th Cir. 2003).
In the present context,
31
re Barbizon Int’l, Inc., 217 U.S.P.Q. 735, 737, 1983 WL 51785
(T.T.A.B. 1983) (noting “a substantial body of case precedent
holding, . . . by virtue of a perceived intimate relationship
between cosmetics and clothing in the women’s fashion arena . .
. that such goods are highly related and would, when sold under
identical or highly similar marks, evoke impressions of common
origin
(or
at
least
confusion
with
respect
thereto),”
and
finding such judgments as to relatedness to be “sound” (citing
cases)); In re Arthur Holland, Inc., 192 U.S.P.Q. 494, 1976 WL
21149 (T.T.A.B. 1976) (“It has been held repeatedly that the use
of
the
identical
trademarks
for
clothing
and
for
a
toilet
preparation or cosmetic is likely to cause confusion, mistake or
deception.”).
a
likelihood
There is, however, “no per se rule that there is
of
confusion
when
the
same
or
similar
mark
is
applied to clothing and to toiletry or cosmetic products; each
case must be resolved on its own facts.”
Fruit of the Loom,
Inc. v. Fruit of the Earth, Inc., 846 F.2d 78, 1988 WL 26058, at
*1 (Fed. Cir. 1988) (unpublished table opinion) (citing In re
Jacques
Bernier
identical
marks,
Inc.)
that
(observing,
the
TTAB
in
noted
a
case
that
not
the
involving
link
between
cosmetics and clothing marketing is important mainly for high-
however, published
guidance.
opinions
of
the
32
TTAB
certainly
can
provide
fashion
marks
that
usually
involve
the
names
of
well-known
designers).
The
court
finds
that,
on
balance,
this
factor
favors
Stubblefield.
Similarity of Facilities Employed, and Advertising Used, by
Mark Holders.
Because of the overlap of factual considerations
with respect to the similarity of facilities and advertising in
this case, the court will consider these factors together.
Stubblefield argues that she advertises over the Internet
and that an Internet search using the term “Rebel Debutante”
produces a search result in which advertisements for Forsythe’s
“Rebel Debutante” collection appear immediately before and after
her advertisements.
(Doc. 8 at 8; see Doc. 8-13.)
She also
has an Internet blog and argues that Forsythe’s Internet blog
devoted to its nail polish products targets the same demographic
market as hers.
Forsythe,
(Doc. 8 at 8, 26-27; see Docs. 8-14, 8-15.)
however,
asserts
that
its
products
are
sold
in
a
completely different manner and to different types of women than
Stubblefield’s current products.
(Doc. 44 at 16.)
That both the Plaintiffs (nearly exclusively) and Forsythe
(as part of a larger advertising approach) employ the Internet
to market their products, as do probably the majority of sellers
today, does not resolve whether the products are targeted to the
same market.
For those customers desiring a “Rebel Debutante”
33
product because of the mark, it is relevant that an Internet
search for “Rebel Debutante” calls up Forsythe’s as well as
Plaintiffs’ products and websites (Doc. 8 at 8; see Doc. 8-13),
but
it
employ
otherwise
the
same
Stubblefield
facilities
and
and
does
little
to
Forsythe
appear
advertising
whether
Apart
advertising.
answer
from
the
Internet,
employ
very
different
to
approaches.
Thus,
the
these
parties
factors
favor Forsythe.
Defendant’s Intent.
This factor looks to the intent of a
defendant in adopting the mark.
The intent factor sometimes is
a “major” factor because “[i]f there is intent to confuse the
buying public, this is strong evidence establishing likelihood
of
confusion,
since
one
intending
to
profit
from
another’s
reputation generally attempts to make his signs, advertisements,
etc.,
to
resemble
confusion.”
the
other’s
so
as
deliberately
to
induce
George & Co., 575 F.3d at 397 (quoting Pizzeria
Uno, 747 F.2d at 1535).
Stubblefield asserts that infringement was deliberate,10 as
Forsythe used “the exact same mark to sell its products to the
exact same customers months after it was constructively notified
of Plaintiff’s registration; facts which suggest intent.”
8 at 27.)
(Doc.
Stubblefield argues that Forsythe’s failure to check
10
Stubblefield also points to the two prior actions against Forsythe
for trademark infringement. See note 5 supra.
34
registered
trademarks
appropriate.
makes
injunctive
relief
all
the
more
(Id. at 27-28; see also Doc. 43 at 2-6.)
Forsythe’s President asserts that she had never heard of
Stubblefield, her book, her company or the Rebel Debutante mark
prior
to
Forsythe
receiving
contends,
Plaintiffs’
and
the
cease
evidence
and
tends
desist
to
letter.
show,
that
it
contracted with an independent creative consultant, who created
a list of potential product names, including “Rebel Debutante,”
from which Forsythe made selections.
Debutante,”
Forsythe
states,
The Color Club line “Rebel
came
out
included one specific color of polish.
in
January
2010
and
(Doc. 20-2, Rose Decl.
¶¶ 6-7, 10; Doc. 34-5, Rose Decl. ¶¶ 3, 9-10.)
At this early
stage, there has been no indication whether Forsythe was made
aware of either the source of the consultant’s “Rebel Debutante”
recommendation or whether the consultant conducted a trademark
search.
Though
Stubblefield’s
use
of
the
“Rebel
Debutante”
mark
predated Forsythe’s use by a few years, by late 2008 her use of
it on clothing appears to have been quite limited.
While the
uniqueness of the mark would make it highly coincidental that it
was
originated
Motion
there
independently,
is
no
evidence
for
that
purposes
Forsythe
of
Stubblefield’s
knew
of
it
or
Stubblefield or intended to use the mark to confuse the public.
35
Moreover, Forsythe’s failure to undertake a search of the mark11
“shows carelessness at most.”
see
Renaissance
Greeting
George & Co., 575 F.3d at 398;
Cards,
Inc.
v.
Dollar
Tree
Stores,
Inc., 405 F. Supp. 2d 680, 697 (E.D. Va. 2005); 4 J. Thomas
McCarthy,
McCarthy
on
Trademarks
and
Unfair
Competition
(4th
ed.) (noting that every trademark registration is constructive
notice to all of the registrant’s rights but “the existence of
constructive
notice
is
not
evidence
that
a
later
user
necessarily intended to confuse”).
On this record, therefore, the court will make no finding
of what Stubblefield may later show regarding Forsythe’s intent.
At present, this factor is neutral.
Actual Confusion.
Stubblefield does not present evidence
of actual confusion but argues that the importance of actual
confusion is greatly reduced when a defendant uses a plaintiff’s
identical mark.
She represents that she intends to show actual
confusion as the case proceeds but reminds that the purpose of a
preliminary
injunction
is
to
occurring in the first place.
5.)
preclude
actual
confusion
from
(Doc. 8 at 28-29; Doc. 49 at 4-
Forsythe asserts that this factor weighs heavily against a
preliminary injunction because Stubblefield has offered “zero
11
The records of the USPTO may be searched electronically, at least
in part. See Music Makers Holdings, LLC v. Sarro, No. 09cv1836, 2010
WL 2807805, at *2 n. 1 (D. Md. July 15, 2010) (courts may take
judicial notice of matters of public record from sources such as the
USPTO electronic search system).
36
evidence” of confusion, by survey or otherwise.
(Doc. 44 at
17.)
Forsythe’s President states that, based on her discussions
with
her
Forsythe
office
in
the
workers,
“no
customer
mistaken
belief
has
that
ever
Forsythe
contacted
was
either
affiliated with, related to, or sponsored by Plaintiffs.”
(Doc.
34-5, Rose Decl. ¶ 3.)
Stubblefield
is
not
likelihood of, confusion.
required
to
show
actual,
but
only
Sara Lee, 81 F.3d at 463 (“[E]vidence
of actual confusion is unnecessary.”); Lone Star, 43 F.3d at
933.
To
be
sure,
though
“evidence
of
actual
actual
confusion
confusion
is
likelihood of confusion analysis.”
393 & 398.
among
the
‘often
is
not
required,
paramount’
in
the
George & Co., 575 F.3d at
However, there is no evidence of actual confusion
consuming
public
here,
and
this
factor
favors
Forsythe.
Proximity
while
of
acknowledging
outlets,
Products
“some
advertising,
and
as
Actually
differences”
trade
Sold.
in
Stubblefield,
the
channels,
parties’
asserts
sales
there
is
significant overlap as both parties advertise and sell online
and
“promote
their
fashion-conscious
products
young
in
magazines
women.”
targeting
(Doc.
8
at
the
same
29-30.)
Stubblefield is careful to use the phrase “promote” rather than
“advertise,” as she has offered only interviews she gave that
appeared in magazines rather than actual advertisements.
37
(See
Doc. 8 at 3 (referencing interviews “published in magazines and
newspapers nationwide,” citing Ex. 3 as an example); Doc. 8-3
(Ex. 3 to Doc. 8 (online article)).)
Forsythe argues that the
vast majority of Stubblefield’s direct sales appear to have been
conducted by her personally at The Heavy Rebel Weekender, a
music festival that included mud wrestling, the “Most Beer in 60
Seconds” drinking contest, and the “Wet Wife-Beater” wet t-shirt
contest.
(Doc. 44 at 4, 14-15; Docs. 46-7, 46-10.)
concludes
that
“one
can
hardly
imagine
a
more
Forsythe
dissimilar
environment where the parties’ goods are sold” and that there
would be no chance that consumers would believe that viewing
Stubblefield’s
mark
on
t-shirts
and
other
items
of
clothing
“sold at raunchy events would be associated with Defendant’s
nail polish sold in professional nail salons.”
(Doc. 44 at 15.)
This factor looks to the proximity of products as actually
sold.
through
The products do not appear in proximity except as sold
Internet
advertising.12
This
factor
therefore
favors
Forsythe.
12
Forsythe does not specifically challenge the geographic scope of
Plaintiffs’ use of the mark or argue how, if at all, this factor
should affect the entry of any injunction. (Cf. Doc. 50 at 5 (arguing
only that the parties use “drastically different trade channels”).)
Under the Lanham Act, registration constitutes constructive notice of
use and confers a right of priority “nationwide in effect.”
See 15
U.S.C. §§ 1057(c), 1072. In Dawn Donut Company v. Hart’s Food Stores,
Inc., 267 F.2d 358 (2d Cir. 1959), however, the court set forth a per
se rule that there could never be any likelihood of confusion (and
thus any injunction would be inappropriate) so long as the parties
operate in separate and distinct geographic markets.
The Fourth
38
Likelihood that the Senior Mark Holder will “Bridge the
Gap” by Entering Defendant’s Market.
for
registration,
and
the
related
Stubblefield’s application
registration,
of
her
covers items of clothing but does not list nail polish.
8-5, 46-2; see Doc. 8 at 30-32.)
mark
(Docs.
She asserts, however, that she
intends to expand product sales to retail stores and to offer
additional products such as makeup and cosmetics, including nail
polish, lipstick, and lip gloss.
(Doc. 8-1, Stubblefield Decl.
¶¶ 12-14.)
The “gap” between apparel and cosmetics is not great.
The
parties disagree as to the ease in which an entity can enter the
nail polish market as well as the veracity of Stubblefield’s
claimed intent to do so.
Stubblefield asserts that there is a
high probability that she will bridge the gap into the nail
polish
business,
citing
current
negotiations
with
a
Winston-
Salem store to sell items including nail polish as well as her
Circuit has applied this “Dawn Donut Rule.” See Lone Star, 43 F.3d at
932 (noting that under the Lanham Act a competing user may use the
mark in territories not served by the mark holder until the holder
expands its business there). However, the rule has been questioned as
based on outdated factors, see Circuit City Stores, Inc. v. CarMax,
Inc., 165 F.3d 1047, 1056-57 (6th Cir. 1999) (Jones, J. concurring)
(questioning whether the Dawn Donut Rule has outlived its usefulness
given recent technology, including the Internet), and in some cases
deemed inappropriate where the businesses transcend local boundaries
such as through use of the Internet, see A.Z. Johnson, Jr., Inc. v.
Sosebee, 397 F. Supp. 2d 706, 710 n.1 (D.S.C. 2005) (dicta).
Here,
Plaintiffs registered and used the “Rebel Debutante” mark first, have
publicized it nationwide, and have used the Internet to seek and
obtain sales nationwide.
On these facts at this very preliminary
stage, the court finds this showing sufficient for entry of the
injunction.
To be sure, any permanent relief will require a more
detailed showing.
39
receipt of an e-mail inquiry from a potential customer whether
she
manufactured
the
nail
connection with her mark.
polish
worn
by
a
model
shown
in
(Id. ¶¶ 12-14 (Stubblefield’s stated
intent); Doc. 8-22 (e-mail).)
Stubblefield also asserts that
market entry is relatively inexpensive because the product is
available from manufacturers and is inexpensive to brand.
(Doc.
8 at 31.)
Forsythe counters by pointing out that Stubblefield is a
full-time law student (see Doc. 24-1, Stubblefield Aff. ¶ 3 &
Ex. 2) who would have a difficult time expanding into the nail
polish business while “studying to pass the bar.”
observes
that
Stubblefield
has
offered
no
Forsythe also
business
plan
or
documentary evidence demonstrating the alleged planned expansion
into nail products, which Forsythe says has a high barrier to
entry (including compliance with Food and Drug Administration
and Environmental Protection Agency regulations).
15.)
Therefore,
it
contends,
it
is
highly
(Doc. 44 at
unlikely
that
Stubblefield, who offers non-brand name apparel items such as
“t-shirts, thongs, and shorts,” would be expected to expand into
cosmetics products, including nail care.
(Id. at 15; Doc. 45,
Rose Decl. ¶ 8.)
“This factor inquires into whether a plaintiff is likely to
enter defendant’s market, or ‘bridge the gap.’
It recognizes
the senior user’s interest in preserving avenues of expansion
40
and entering into related fields.”
Morningside Grp. Ltd. v.
Morningside Capital Grp., L.L.C., 182 F.3d 133, 141 (2d Cir.
1999) (internal quotation marks omitted).
particularly
relevant
when
the
goods
This factor may be
are
dissimilar,
and
a
plaintiff who is likely to bridge the gap may be able to assert
its
trademark
rights
over
another
unrelated to the plaintiff’s product.
as
to
a
product
that
is
U.S. Hosiery Corp. v. The
Gap, Inc., 707 F. Supp. 800, 813 (W.D.N.C. 1989) (stating on
summary judgment that “when the goods are dissimilar, courts
will often also consider whether plaintiff is likely to ‘bridge
the gap’ between the plaintiff’s type of product and the type of
product offered by defendant”).
Forsythe
difficulty
of
has
not
entering
presented
the
nail
evidence
polish
of
the
market,
claimed
nor
has
Stubblefield presented evidence of the claimed ease of doing so.
At this stage, Stubblefield appears to contemplate at best a
minor or modest presence in the nail polish market by offering
“Rebel Debutante” nail polish in connection with a number of
related apparel products.
Stubblefield’s use of the mark is
relatively new, and thus it cannot be said that she will be
unable to “bridge the gap” into the nail polish market.
proponent,
however,
must
show
realistic, not merely wishful.
that
its
intent
to
expand
The
is
See U.S. Hosiery, 707 F. Supp.
at 813 (characterizing party’s likelihood to bridge the gap in
41
case before it as a wish rather than a reality).
hand,
if
Stubblefield
was
already
entering
the
On the other
nail
polish
market in which Forsythe competes, this factor would not be
relevant except as to indicate a greater likelihood of confusion
as there would be no gap to be bridged.
v.
Haar
Commc’ns,
244
F.3d
E.g., TCPIP Holding Co.
88,
102
(2d
Cir.
2001).
Consequently, insofar as this factor seeks to preserve “likely”
avenues of expansion for a mark holder and Stubblefield has
demonstrated an intent to enter (though no present means to do
so) the market, this factor slightly favors Stubblefield.
The
limited geographic market of Stubblefield’s intent (discussions
with a Winston-Salem retailer) further reduces the importance of
this factor.
Quality of Defendant’s Product.
This factor is typically
important in cases involving cheap copies and “knockoffs” of a
competitor’s trademark-protected goods.
467.
Sara Lee, 81 F.3d at
There is no evidence that Forsythe’s nail polish products
are of this nature, a point conceded by Stubblefield.
8 at 32.)
(See Doc.
This factor is neutral or slightly favors Forsythe.
Sophistication
of
the
Consuming
Public.
“Barring
an
unusual case, buyer sophistication will only be a key factor
when the relevant market is not the public at-large.”
Sara Lee,
81 F.3d at 467 (emphasis added); see Sara Lee Corp. v. KayserRoth
Corp.,
Case
No.
6:92CV00460,
42
1992
WL
436279,
at
*20
(M.D.N.C. Dec. 1, 1992) (noting buyers of pantyhose do not have
any special sophistication).
Although both parties allege that
their products are aimed at sophisticated women, consumers of
the products in question do not appear to have or need the
sophistication contemplated by this factor.
Thus, this factor
is neutral.
Conclusion.
concludes
that
Weighing
Plaintiffs
all
have
these
crossed
factors,
the
the
threshold
court
(though
barely) at this preliminary stage of demonstrating a likelihood
of success with respect to showing a likelihood of confusion.
Stubblefield
owns,
and
Rebel
Debutante
licenses,
distinctive, and conceptually-strong mark.
that mark was on similar goods.
weakness
are
tempered
by
the
a
peculiar,
Forsythe’s use of
Forsythe’s claims of commercial
fact
that
Forsythe
itself
has
modest sales of its “Color Club” product bearing the Plaintiffs’
mark.
Moreover, Forsythe’s claim of different markets is also
tempered by the fact that it only sells to independent retailers
yet advertises on the Internet, as do Plaintiffs, and it chose
the suggestive mark “Rebel Debutante” to appeal to its customer
base.
As to the nail polish market in particular, Plaintiffs
have also demonstrated an intent to enter that market, and it is
not clear on this record that “bridging the gap” to that market
would
be
unduly
difficult.
At
this
preliminary
stage,
therefore, these factors are sufficient to forecast a likelihood
43
of
confusion
at
this
stage.
However,
Plaintiffs
will
be
required to demonstrate a stronger case, of course, once the
merits are reached.
2.
Likelihood
Harm
of
Plaintiff
Suffering
Irreparable
Stubblefield argues that an infringement itself gives rise
to an irreparable injury and that the Fourth Circuit regularly
grants
preliminary
injunctions
in
infringement
specifically addressing irreparable injury.
cases
without
(Doc. 8 at 34.)
Forsythe objects to any presumption of irreparable harm on the
grounds
that
it
no
longer
exists
after
the
Supreme
Court’s
decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388
(2006).
Moreover,
even
if
the
presumption
were
available,
Forsythe contends, it has been rebutted by Stubblefield’s sixmonth delay in bringing this action once she became aware of
Forsythe’s use of the term “Rebel Debutante” in its “Color Club”
collection, as well as by her inability to demonstrate actual
harm.
The Fourth Circuit has recognized, in the context of a
Lanham Act trademark infringement case, that “a presumption of
irreparable injury is generally applied once the plaintiff has
demonstrated a likelihood of confusion, the key element in an
infringement case.”
Scotts Co. v. United Indus. Corp., 315 F.3d
264, 273 (4th Cir. 2002); see Lone Star, 43 F.3d at 938-39.
44
The
Fourth Circuit in Scotts, however, did not expressly adopt that
presumption but noted that district courts in the Fourth Circuit
had applied the test, 315 F.3d at 273 & n.3, and, since Scotts,
those
courts
have
continued
to
do
so.
The
court
is
not
persuaded that eBay alters the current law in this regard.
In eBay, the Supreme Court held in an action seeking a
permanent injunction pursuant to the Patent Act, the traditional
four-factor permanent injunction test applies.
The Court stated
that its decision was consistent with its prior rejection, under
the
Copyright
equitable
Act,
of
invitations
considerations
with
a
“to
rule
replace
that
an
traditional
injunction
automatically follows a determination that a copyright has been
547 U.S. at 391-94.13
infringed.”
eBay
is
distinguishable
on
several
grounds.
First,
it
involved a permanent, rather than preliminary, injunction.
A
preliminary injunction preserves the status quo at an early and
incomplete stage of the litigation in anticipation of a decision
on the merits.
and
patent
Second, there are distinctions between copyright
infringement
actions,
where
monetary
damages
are
often central, and trademark infringement, where confusion may
have long-lasting effects.
Third, several district courts in
13
The Supreme Court has held, of course, that a plaintiff seeking a
preliminary injunction must show more than a mere “possibility” of
irreparable harm by “demonstrat[ing] that irreparable injury is likely
in the absence of an injunction.” Winter, 555 U.S. 7, 129 S. Ct. at
375.
45
the
Fourth
Circuit
continue
to
recognize
the
presumption
in
trademark cases after eBay, although often without citing the
opinion.
See, e.g., Meineke Car Care Ctrs., Inc. v. Catton, No.
3:10-CV-000234-RLV-DSC, 2010 WL 2572875, at *2 (W.D.N.C. June
24, 2010) (noting court in Lone Star “acknowledged that the
‘irreparable injury necessary for injunctive relief regularly
follows from trademark infringement’”); Lorillard Tobacco, 616
F. Supp. 2d at 587 (presumption of injury “generally applied”
once plaintiff has shown a likelihood of confusion); Toolchex,
Inc. v. Trainor, 634 F. Supp. 2d 586, 591 n.2 (E.D. Va. 2008).
Indeed,
in
an
opinion
issued
the
year
after
eBay,
National
League of Junior Cotillions, Inc. v. Porter, No. 3:06-cv-508,
2007 WL 2316823, at *6 (W.D.N.C. Aug. 9, 2007), aff’d, 280 F.
App’x
322
(4th
Cir.
2008),
the
district
court
noted,
with
respect to trademark infringement, that “[b]ecause neither the
Supreme Court nor the Fourth Circuit has explicitly extended
eBay’s
reasoning
to
slight
record
this
in
preliminary
case,
the
injunctions,
Court
will
and
not
given
the
attempt
to
resolve eBay’s impact at the preliminary injunction stage.”
At this stage and in the absence of any indication from the
Fourth Circuit to the contrary, the court will not discard the
commonly-applied presumption of irreparable harm in preliminary
injunction
proceedings
involving
46
a
trademark
infringement
claim.14
As Stubblefield has forecast a likelihood of confusion,
the presumption applies.
Nor is the court persuaded that Stubblefield’s six-month
delay in bringing this action prevents a finding of a likelihood
of irreparable harm.
It is true that “[s]ince an application
for preliminary injunction is based upon an urgent need for the
protection of [a] Plaintiff’s rights, a long delay in seeking
relief indicates that speedy action is not required.”
Quince
Orchard Valley Citizens Ass’n, Inc. v. Hodel, 872 F.2d 75, 80
(4th Cir. 1989).
Balanced against a delay in seeking injunctive
relief, however, is the goal of voluntary resolution of disputes
without the need for litigation.
E.g., Splitfish AG v. Bannco
Corp., 727 F. Supp. 2d 461, 468 (E.D. Va. 2010) (concluding
eight-month delay in case before court not unreasonable and, “to
the
contrary,
[plaintiffs]
sought
an
efficient
out-of-court
resolution”) (copyright claim).
Here, the correspondence between the parties (e.g., Docs.
8-16
through
Stubblefield’s
8-20)
cannot
complaint
be
said
alleges
14
to
that
be
her
unduly
protracted.
attorney
wrote
to
See, e.g., Jennifer L. Kovalcik, “Preliminary Injunctions in
Trademark Cases-Did eBay Change the Presumption of Irreparable Harm?”,
Advanced
Seminar
on
Trademark
Law
2011,
Patents,
Copyrights,
Trademarks & Literary Property Course Handbook Series 1044 PLI/Pat 259
(May 2011) (available on Westlaw); Theodore H. Davis, Jr. & Jordan S.
Weinstein, United States Annual Review, 100 Trademark Rep. 88 (Jan.Feb. 2010); see also Thomas M. Williams, “Winter v. NRDC: A Stricter
Standard for Irreparable Harm in Trademark Cases?”, 91 J. Pat. &
Trademark Off. Soc’y 571 (Oct./Nov./Dec. 2009).
47
Forsythe “[i]mmediately after Plaintiffs learned that Forsythe
was infringing Plaintiffs’ REBEL DEBUTANTE mark.”15
Compl. ¶ 33.)
(Doc. 1,
The delay, if any, was in Forsythe’s failure to
respond promptly.
The law encourages conciliation efforts to
avoid the expense and time of litigation, and Plaintiffs’ delay
is not unreasonable on the facts of this case.
Trademark infringement cases are concerned in large measure
with the reputation of and goodwill toward the mark holder.
In
this case, Stubblefield’s use of the “Rebel Debutante” mark in
the
commercial
business
setting
activity
longer history.
is
is
relatively
relatively
small
recent,
and
compared
to
Plaintiffs’
Forsythe’s
There is a danger, however, that Forsythe’s use
of Stubblefield’s peculiar mark may decrease her opportunity to
develop goodwill and reputation if the public is confused as to
the mark’s ownership.
Cf. Buzz Off Insect Shield, LLC v. S.C.
Johnson & Son, Inc., 606 F. Supp. 2d 571, 585 (M.D.N.C. 2009)
(discussing “reverse confusion” when defendant uses greater size
and strength to overwhelm plaintiff’s senior mark).
The
court
concludes
that,
based
on
this
record,
Stubblefield has demonstrated a likelihood of irreparable harm
absent a preliminary injunction.
15
The allegation is repeated in Stubblefield’s brief (Doc. 8 at 9),
but citing only the September 1, 2010, letter of Stubblefield’s
counsel to Forsythe (Doc. 8-16.).
48
3.
Balancing of Equities
Forsythe contends that it would suffer substantial harm if
an injunction is entered against it, particularly with respect
to any mandatory preliminary relief.
It also asserts that it
has stopped selling the nail polish bearing Plaintiffs’ mark and
has removed all references to it from its website.16
at 2-3; Doc. 45, Rose Decl. ¶ 4.)
any
harm
Forsythe
might
suffer
should be given little weight.
It
is
hard
for
Forsythe
(Doc. 44
Stubblefield counters that
would
be
self-inflicted
and
(Doc. 8 at 35.)
to
contend
it
will
suffer
any
appreciable harm if it is prohibited from marketing a product it
contends it no longer intends to sell.
On the other hand,
Plaintiffs risk a likelihood of irreparable harm if Forsythe
were to continue using their mark, as noted above.
Therefore,
Plaintiffs have demonstrated that the balance of equities tips
in their favor as to prohibitory relief.
Because the court will
deny Plaintiffs’ request for a mandatory injunction, as noted
infra, any balance of equities as to the award of mandatory
relief is moot.
16
It has been said that “[a] classical response to a defendant who
argues that it has ceased the actions that plaintiff seeks to enjoin
is: ‘If you have irreversibly stopped those acts, then how can you be
harmed by an injunction to not do what you say you promise you will
not do again.’”
3 Thomas J. McCarthy, McCarthy on Trademarks and
Unfair Competition § 30:11 (4th ed.) (citing Chisum LLC. v. Chief
Auto. Sys., Inc., No. 01-816, 2001 WL 1640106 (D. Minn. 2001)).
Of
course, no party should be preliminarily enjoined unless the
requirements mandated by Winter v. Natural Resources Defense Council,
Inc., 555 U.S. 7 (2008), have been satisfied.
49
4.
Public Interest
Stubblefield argues that the public interest is served by
protecting her registered mark and preventing consumer confusion
in
the
marketplace.
contrast,
Forsythe
(Doc.
argues
8
that
at
34
the
(citing
public
cases)).
interest
In
favors
denying the Motion, principally because a mandatory injunction
would put a financial hardship on its continued operations and
constitute “drastic relief” under the circumstances.
(Doc. 44
at 19.)
There is a strong public interest in preventing trademark
infringement.
Indeed, the “purpose of a trademark is to protect
the public from confusion about ‘the identity of the enterprise
from which goods and services are purchased.’”
Toolchex, 634 F.
Supp. 2d at 594 (quoting AMP Inc. v. Foy, 540 F.2d 1181, 1185-86
(4th Cir. 1976)); see Merry Maids Ltd. P’ship v. Kamara, 33 F.
Supp. 2d 443, 446 (D. Md. 1998) (“Preventing infringement . . .
serves the public interest in preventing consumer confusion.”).
In light of the court’s finding of a likelihood of success on
the merits, including a likelihood of confusion if Forsythe reengages in marketing its product using Plaintiffs’ mark, the
court concludes that a preliminary prohibitory injunction is in
the public interest.
50
C.
Request for Mandatory Preliminary Injunction
Plaintiffs
seek
a
mandatory
injunction
that
requires
Forsythe to collect all product and marketing materials in the
field that bear the “Rebel Debutante” mark.
Plaintiffs
argued
that
because
At the hearing,
independent
distributors
may
still have inventory, the court should also require Forsythe to
notify them of the court’s preliminary finding of the likelihood
of
success.
As
noted
above,
Forsythe
opposes
a
mandatory
injunction as a “drastic remedy” and states that it has ceased
production of its “Rebel Debutante” line of nail polish.
“Mandatory
preliminary
injunctions
[generally]
do
not
preserve the status quo and normally should be granted only in
those circumstances when the exigencies of the situation demand
such relief.
That is to say, a mandatory preliminary injunction
must be necessary both to protect against irreparable harm in a
deteriorating
circumstance
created
by
the
defendant
and
to
preserve the court’s ability to enter ultimate relief on the
merits of the same kind.”
In re Microsoft Litig., 333 F.3d at
525 (quotation marks omitted) (citation omitted).
run
of
“Rebel
duration,
Debutante”
Debutante”
primarily
nail
over
polish
nail
a
may
year
polish
ago.
remain
was
of
a
Although
available
equities do not tip in Stubblefield’s favor.
at
Forsythe’s
few
months
some
“Rebel
retail,
the
The situation is
stable, not deteriorating, and the court will retain the ability
51
to enter ultimate relief on the merits without the assistance of
a mandatory preliminary injunction.
Stubblefield’s request for
a mandatory preliminary injunction is therefore denied.
D.
Security
Neither party has addressed the issue of an adequate bond
in the event preliminary prohibitory relief is awarded.
Because
the court will enter only a prohibitory injunction, and because
Forsythe
represents
that
it
does
not
intend
to
market
any
product bearing Plaintiffs’ mark in the future, a nominal bond
in the amount of $2,500 will be required at this stage.
IV.
CONCLUSION
For the foregoing reasons, the court finds that the action
may continue in this forum and that Plaintiffs have made a clear
showing for the entry of a prohibitory preliminary injunction to
preserve the status quo.
IT IS THEREFORE ORDERED as follows:
1.
The
Motion
to
Transfer
by
Forsythe
Cosmetic
Group,
Ltd. (Doc. 21) is DENIED;
2.
Plaintiffs’
Motion
for
Preliminary
and
Permanent
Injunction (Doc. 7) is GRANTED IN PART AND DENIED IN PART;
3.
Defendant Forsythe Cosmetic Group, Ltd., its officers,
agents, servants, and employees, and any other person who is in
active
concert
or
participation
with
them,
are
enjoined
preliminarily, pursuant to Federal Rule of Civil Procedure 65,
52
from any advertising, distribution, offering for sale, sale, or
shipping of products using or associated with the mark “Rebel
Debutante” until further order of the court; and
4.
this
Pursuant
Preliminary
posting
by
to
Federal
Injunction
Plaintiffs
of
Rule
shall
Two
of
Civil
become
Thousand
Procedure
effective
Five
Hundred
65(c),
upon
the
Dollars
($2,500) security with the Clerk of Court.
/s/ Thomas D. Schroeder
United States District Judge
July 1, 2011
Greensboro, North Carolina
4:20 p.m.
53
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