RANN PHARMACY, INC. v. SHREE NAVDURGA LLC et al

Filing 12

MEMORANDUM AND/OR OPINION. SIGNED BY HONORABLE BERLE M. SCHILLER ON 6/6/2017. 6/6/2017 ENTERED AND COPIES MAILED TO UNREP AND E-MAILED.(sg, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
RANN PHARMACY, INC.
Plaintiff,
v.
SHREE NAVDURGA LLC d/b/a
RAMSRX PHARMACY, et al.,
Defendants.

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CIVIL ACTION

No. 17-1893

MEMORANDUM
Schiller, J.

June 6, 2017

Last November, this Court enjoined Lakshmi Ramesh Kommineni and Shree Navdurga
LLC, d/b/a Rams Pharmacy from using the service mark RAMS PHARMACY because it was
likely to cause confusion with the service mark RANN PHARMACY. Kommineni responded by
changing the name of his pharmacy to RAMSRX PHARMACY. Believing this change
insufficient, Rann Pharmacy again sued Lakshmi Ramesh Kommineni and Shree Navdurga LLC,
d/b/a RamsRX Pharmacy (together, “Defendants” 1), again alleging service mark infringement.
Rann Pharmacy moves to preliminarily enjoin Defendants from using the mark RAMSRX
PHARMACY. Because Rann Pharmacy has failed to present evidence of irreparable harm, the
Court will deny the motion.

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Kommineni again proceeds pro se, while Shree Navdurga LLC d/b/a RamsRX Pharmacy is
again unrepresented. Because Kommineni is one of the owners of RamsRX Pharmacy, the Court
refers to Defendants jointly. Because Kommineni proceeds pro se, the Court has liberally
construed his pleadings and will apply the relevant law regardless of whether he has mentioned it
by name. See Dluhos v. Strasberg, 321 F.3d 365, 369 (3d Cir. 2003).

I.

BACKGROUND
A. Rann Pharmacy, Rams Pharmacy, and the 2016 Infringement Lawsuit
Rann Pharmacy is an independent pharmacy owed by Greg Segner and located at 377

Main Street in Harleysville, Pennsylvania. (Compl. ¶ 2.) The pharmacy has operated under the
name RANN PHARMACY since 1982. (Id. ¶ 8.) In June 2016, Rann Pharmacy applied for
service mark registration for RANN PHARMACY from the U.S. Patent and Trademark Office
(“PTO”), receiving application number 87,077,542. (Id. ¶ 10.)
In March 2016, Defendants opened Rams Pharmacy at 801 West Main Street in
Lansdale, Pennsylvania, approximately six miles away from Rann Pharmacy. (See id. ¶ 12.)
After several health care providers confused the two pharmacies, Rann Pharmacy sued
Defendants in September 2016, alleging infringement under the Trademark Act of 1946, as
amended, Pub. L. No. 79-489, 60 Stat. 427, otherwise known as the Lanham Act. Two months
later, the Court concluded that the mark RAMS PHARMACY violated the Lanham Act because
it is likely to cause confusion with the mark RANN PHARMACY, and enjoined Defendants
from using the mark RAMS PHARMACY at the pharmacy located in Lansdale, Pennsylvania.
B. The 2017 Infringement Lawsuit Against RamsRX Pharmacy
In late 2016, Defendants changed the name of their pharmacy to RAMSRX
PHARMACY. Defendants documented the name change with numerous records: an updated
license from the Pennsylvania Department of State Bureau of Professional and Occupational
Affairs; acknowledgement letters from the U.S. Internal Revenue Service and the Pennsylvania
Department of State Bureau of Corporations and Charitable Organizations; a billing statement
from Utica National Insurance Group for RamsRX Pharmacy; a rebate check from Surescripts
for RamsRX Pharmacy; Google search results for RamsRX Pharmacy; and Medicare.gov search
results showing RamsRX as one of sixteen pharmacies operating near Lansdale. (Answer Ex. A);
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see also Rann Pharmacy, Inc. v. Shree Navdurga LLC, Civ. A. No. 16-4908, 2017 WL 2423800,
at *2 (E.D. Pa. June 2, 2017) (listing other records documenting the name change).
In April 2017, Rann Pharmacy filed a new service mark infringement lawsuit against
RamsRX Pharmacy. Rann Pharmacy claimed that between December 22, 2016, and January 31,
2017, eight prescriptions meant for four different patients of RamsRX Pharmacy were
mistakenly sent to Rann Pharmacy. (Compl. ¶¶ 19, 21–24.) 2 The allegedly erroneous
prescriptions were all sent electronically from health care providers. (Id. ¶¶ 21–24.)
In their Answer, Defendants denied that the name RAMSRX is likely to cause, or has
actually caused, confusion among pharmacy consumers. (Answer ¶¶ 17–19, 25–27, 29–32.)
They specifically denied that any of the allegedly erroneous prescriptions were actually sent
erroneously. (Id. ¶¶ 21–24.) Instead, they asserted that all four patients chose to use Rann
Pharmacy as new patients, and supported their allegations with two patient affidavits and a
prescriber letter. (Id.; id. Exs. D & E.) Defendants also provided records showing that the doctors
in question had previously sent prescriptions to RamsRX Pharmacy, which indicated that they
had previously been able to distinguish between the two. (Id. ¶¶ 21–24; id. Exs. C, D, E, & F.)
C. Rann Pharmacy’s Motion for a Preliminary Injunction
Rann Pharmacy moves for a preliminary injunction against Defendants’ use of the mark
RAMSRX PHARMACY. (Pl.’s Mot. TRO/Prelim. Inj.) In support of its likelihood of success on
the merits, Rann Pharmacy claims to have an incontestable and registered mark. (Id. at 3.) Rann
Pharmacy also claims that trademark infringement amounts to irreparable injury as a matter of
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Rann Pharmacy filed a reply brief alleging that three additional prescriptions meant for
RamsRX Pharmacy were mistakenly sent to Rann Pharmacy. (Pl.’s Reply to Resp. to Mot.
TRO/Prelim. Inj.) Because Rann Pharmacy did not follow the Court’s local rules by first filing a
motion for permission to file the reply brief, the Court will not consider the reply brief in
deciding this motion. Judge Berle M. Schiller R. 7.

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law (Id. at 3–4.) Rann Pharmacy further argues that forcing Defendants to change their name will
not hurt Defendants because they are a new and unestablished business, and that the public
interest favors the imposition of a preliminary injunction. (Id. at 4–5.) Defendants object to these
arguments and conclusions in all respects. (Defs.’ Mot. in Opp’n.)
The Court held a hearing on the motion on May 31, 2017. Notable to the resolution of the
motion, Rann Pharmacy presented no evidence of any irreparable injury that would result if the
Court denied the motion for a preliminary injunction.

II.

STANDARD OF REVIEW
“Preliminary injunctive relief is an ‘extraordinary remedy, which should be granted only

in limited circumstances.’” Ferring Pharm., Inc. v. Watson Pharm., Inc., 765 F.3d 205, 210 (3d
Cir. 2014) (quoting Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer
Pharm. Co., 290 F.3d 578, 586 (3d Cir. 2002)). As recently clarified by the Third Circuit, a party
seeking a preliminary injunction must first demonstrate that: (1) “it can win on the merits (which
requires a showing significantly better than negligible but not necessarily more likely than not),”
and (2), “it is more likely than not to suffer irreparable harm in the absence of preliminary
relief.” Reilly v. City of Harrisburg, Civ. A. No. 16-3722, 2017 WL 2272114, at *4 (3d Cir. May
25, 2017); accord Del. River Port Auth. v. Transamerican Trailer Transport, Inc., 501 F.2d 917,
919–20 (3d Cir. 1974). “If these gateway factors are met, a court then considers the remaining
two factors and determines in its sound discretion if all four factors, taken together, balance in
favor of granting the requested preliminary relief.” Reilly, 2017 WL 2272114, at *4. The
remaining two factors are: (3) the “possibility of harm to other interested persons from the grant
or denial of the injunction,” and (4) the “public interest.” Del. River Port Auth., 501 F.2d at 920.

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III.

DISCUSSION
To receive a preliminary injunction, a plaintiff must show more than a “possibility of

irreparable harm.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 22 (2008). Instead, a
plaintiff must “demonstrate that irreparable injury is likely in the absence of an injunction.” Id;
accord Ferring Pharm., Inc., 765 F.3d at 217. A showing of irreparable harm is a “critical” and
“threshold” factor, without which a preliminary injunction cannot be granted. Reilly, 2017 WL
2272114, at *4.
Although the Third Circuit once allowed Lanham Act claims to carry a presumption of
irreparable harm upon a showing of a likelihood of success on the merits, the court reversed
course in 2014. The court concluded that in light of the Supreme Court’s decisions in Winter and
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), “a party bringing a claim under the
Lanham Act is not entitled to a presumption of irreparable harm when seeking a preliminary
injunction.” Ferring Pharm., Inc., 765 F.3d at 206. Instead, a party seeking a preliminary
injunction in a Lanham Act case must make a “‘clear showing’” that she is likely to suffer
irreparable harm if an injunction is not granted. Id. at 217 (quoting Winter, 555 U.S. at 22); see
also Arrowpoint Capital Corp. v. Arrowpoint Asset Mgmt., LLC, 793 F.3d 313, 327 n.15 (3d Cir.
2015) (declining to hold that a showing of actual confusion creates a presumption of irreparable
harm in a trademark infringement/unfair competition claim); cf. Groupe SEB USA, Inc. v. EuroPro Operating LLC, 774 F.3d 192, 204–05 (3d Cir. 2014) (upholding a preliminary injunction in
a false advertising case because the record contained specific evidence that made out a clear
showing of irreparable harm).
Although the presumption is gone, the logic that previously caused the court to adopt the
presumption “can, and does, inform” how the court exercises its equitable discretion. Groupe
SEB USA, Inc., 774 F.3d at 205 n.8. The Third Circuit explained in Ferring that its long-held
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presumption rested on the logic that an owner’s loss of control over her mark creates the
potential for damage to the product or brand’s reputation, a harm that is difficult to quantify. 765
F.3d at 212. These damages “include loss of control of reputation, loss of trade, and loss of good
will.” Opticians Ass’n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 195 (3d Cir. 1990). And
despite the elimination of the presumption, the Third Circuit has not imposed a requirement of
actual irreparable injury. Instead, “[p]otential damage to reputation” constitutes “irreparable
injury for the purpose of granting a preliminary injunction in a trademark case,” id. at 196
(emphasis added), “so long as the plaintiff makes a clear showing” of the damage, Groupe SEB
USA, Inc., 774 F.3d at 205.
Despite these clear pronouncements from the Third Circuit, Rann Pharmacy argues that
“trademark infringement amounts to irreparable injury as a matter of law,” citing outdated
precedent. (Pl.’s Mot. TRO/Prelim. Inj. 3.) To substantiate its claim, Rann Pharmacy puts
forward only perfunctory allegations of harm, stating that its “loss of control of reputation, loss
of reputation, loss of trade, and loss of goodwill—as demonstrated by the actual confusion that
has taken place—demonstrates irreparable harm.” (Id. at 3–4.) But this rote recitation of the
types of irreparable harm often suffered in trademark infringement lawsuits does not constitute a
“‘clear showing’” of actual, or even potential, damage. See Ferring Pharm., Inc., 765 F.3d at 217
(quoting Winter, 555 U.S. at 22). Nor do Rann Pharmacy’s allegations of actual confusion. See
Arrowpoint Capital Corp., 793 F.3d at 327 n.15. Instead, the law obligates Rann Pharmacy to
present actual evidence of irreparable harm, which it has not done.
Because Rann Pharmacy has failed to demonstrate that it is more likely than not to suffer
irreparable harm in the absence of a preliminary injunction, the Court need not address whether
Rann Pharmacy has demonstrated a likelihood of success on the merits. See Reilly, 2017 WL

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2272114, at *4. The Court cannot issue a preliminary injunction against Defendants without
evidence satisfying the “threshold” factor of irreparable harm. See id.

IV.

CONCLUSION
For the foregoing reasons, the Court denies Rann Pharmacy’s motion for preliminary

injunction. The Court anticipates that this case will now proceed through the regular scheduling
mechanism established by Federal Rule of Civil Procedure 16, and will culminate in a motion for
judgment on the pleadings, a motion for summary judgment, or a trial.
An Order consistent with this Memorandum will be docketed separately.

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