Hanger Inc et al v. Original Bending Brace LLC et al

Filing 35

ORDER adopting Report and Recommendations re 29 Report and Recommendation.; denying 8 Motion for Preliminary Injunction; denying 13 Motion for Preliminary Injunction Signed by Honorable David C Norton on February 13, 2017.(span, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
CHARLESTON DIVISION
HANGER, INC. and HANGER
NATIONAL LABORATORIES, LLC,
Plaintiffs,
v.
ORIGINAL BENDING BRACE, LLC
and CLARENCE RALPH HOOPER, JR.,
Defendants.

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No. 2:16-cv-01519-DCN
ORDER

This matter is before the court on United States Magistrate Judge Bristow
Marchant’s report and recommendation (“R&R”), ECF No. 29, that the court deny
plaintiffs Hanger, Inc. and Hanger National Laboratories, LLC’s (collectively, “Hanger”)
motion for a preliminary injunction and deny defendants Original Bending Brace, LLC
and Clarence Ralph Hooper, Jr.’s (collectively, “Hooper”) motion for a preliminary
injunction. For the reasons set forth below, the court adopts the R&R and denies
Hanger’s motion for a preliminary injunction and denies Hooper’s motion for a
preliminary injunction. Additionally, the court adopts those portions of the R&R which
are not inconsistent with this Order.
I. BACKGROUND
The instant cross-motions for preliminary injunction arise out of a business
dispute over the Charleston Bending Brace, an orthotic device used to treat children with
scoliosis. Pls.’ Mot. 1. Hooper and Dr. Frederick Reed (“Reed”), a physician colleague,
invented the Charleston Bending Brace in 1979. Defs.’ Resp. 5. Shortly thereafter,
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Hooper and Reed entered into an agreement (“the Agreement”) with Dobi-Simplex, Inc.
(“Dobi-Simplex”) under which Dobi-Simplex was given the exclusive license to
manufacture, use, and sell the orthotic device. Id. at 5–7. Hooper founded the Charleston
Bending Brace Research and Education Foundation (“CRB”) in 1991. Id. at 6. In
conjunction with his work at the foundation, Hooper acquired the domain rights for
www.CBB.org in 1996. Id. During the course of the business relationship, both parties
used the website to advertise and market the Charleston Bending Brace. Id.; Pls.’ Mot. 9.
Through a series of corporate acquisitions, Dobi-Simplex became DOBI Assets
Acquisition Corporation in 1992 and changed its name back to Dobi-Simplex, Inc.
(“Dobi 2”). Pls.’ Mot. 2–3. Dobi 2, Hanger’s predecessor in interest, filed an application
with the U.S. Patent and Trade Office (“USPTO”) to register the trademark Charleston
Bending Brace on March 6, 1995. Id. at 8. The USPTO granted Registration No.
2,101,865 for the Charleston Bending Brace on September 30, 1997.1 Id., Ex. C. Dobi 2
then merged with Hanger, and Hanger was assigned the trademark. Id. at 8, Ex. C.
Hanger and Hooper attempted to renegotiate the terms of the Agreement, which had
previously expired, in early 2016 but were unsuccessful. Defs.’ Resp. 8. On April 27,
2016, Hanger was informed that Hooper had solicited business from one of its referring
physicians and was using a similar designation of the “Original Bending Brace of
Charleston.” Pls.’ Mot. 9.
Hanger filed the instant lawsuit against Hooper on May 10, 2016, seeking
damages and injunctive relief for Hooper’s alleged trademark infringement of the

Hooper claims he was never made aware of Dobi 2’s trademark registration.
Defs.’ Resp. 7–8.
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Charleston Bending Brace mark. Compl. ¶ 1. Hanger then filed a motion for preliminary
injunction on June 10, 2016, to enjoin Hooper from using the Charleston Bending Brace
mark as well as what it considered to be a “confusingly similar designation.” ECF No. 8.
Hooper filed a response in opposition on July 8, 2016, and likewise sought to enjoin
Hanger from using the Charleston Bending Brace mark until the instant litigation is
resolved. ECF No. 13.
The magistrate judge issued the R&R on August 26, 2016, recommending the
court deny both motions, with Hanger’s motion being denied without prejudice. ECF No.
29. Hooper did not file any objection to the R&R within the deadline. Hanger, however,
filed timely objections to the R&R on September 12, 2016 arguing that its motion for
preliminary injunction should be granted. ECF No. 30. Hooper filed a reply on
September 21, 2016. ECF No. 31. The matter is now ripe for the court’s review.
II. STANDARD
A.

De Novo Review

This court is charged with conducting a de novo review of any portion of the
magistrate judge’s report to which specific, written objections are made, and may accept,
reject, or modify, in whole or in part, the recommendations contained in that report. 28
U.S.C. § 636(b)(1). The magistrate judge’s recommendation does not carry presumptive
weight, and it is the responsibility of this court to make a final determination. Mathews
v. Weber, 423 U.S. 261, 270–71 (1976). A party’s failure to object may be treated as
agreement with the conclusions of the magistrate judge. See Thomas v. Arn, 474 U.S.
140, 150 (1985).
B.

Preliminary Injunction
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“The purpose of a preliminary injunction is merely to preserve the relative
positions of the parties until a trial on the merits can be held.” United States v. South
Carolina, 840 F. Supp. 2d 898, 914 (D.S.C. 2011) (quoting Univ. of Tex. v. Camenisch,
451 U.S. 390, 395 (1981)). “A plaintiff seeking a preliminary injunction must establish
that he is likely to succeed on the merits, that he is likely to suffer irreparable harm in the
absence of preliminary relief, that the balance of the equities tips in his favor, and that an
injunction is in the public interest.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7,
20 (2008). The Supreme Court has noted that a preliminary injunction is “an
extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is
entitled to such relief.” Id. at 22.
III. DISCUSSION
A.

Hanger’s Objection

Hanger lists two objections to the R&R, arguing that the magistrate judge
improperly: (1) presumes that Hooper’s “bald assertion” that it has ceased the infringing
acts renders the requested preliminary injunction unnecessary; and (2) fails to consider
whether Hooper has met its heavy burden of showing that there is no reasonable
expectation that any wrong will be repeated, rendering the requested preliminary
injunction unnecessary. ECF No. 30-3. The court finds that both of these objections
center on mootness concerns and Hanger uses mootness cases in support of its argument.
However, the reasoning in the R&R denying Hanger a preliminary injunction rested not
on mootness but on the irreparable harm factor of Winter. As there is no dispute between
the parties as to whether the request for a preliminary injunction is moot, the court need
not address this threshold justiciability doctrine. The court finds that the Winter factors,
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especially that of “likelihood of success on the merits,” are not fulfilled such that a
preliminary injunction should issue. Even if irreparable harm exists, Hanger has not
shown that the remaining Winter factors have been fulfilled, because as explained below
it has not made a clear showing that it is likely to succeed on the merits.
1.

Likelihood of Succeeding on the Merits

For a preliminary injunction to issue, Hanger must first make a clear showing that
it is likely to succeed on the merits. See Winter, 555 U.S. at 20. Hanger argues it is
likely to succeed on the merits in this action because it can prove each element of its
trademark infringement claim. Pl.’s Mot. 6.
“To establish trademark infringement under the Lanham
Act, a plaintiff must prove: (1) that it owns a valid mark;
(2) that the defendant used the mark ‘in commerce’ and
without plaintiff’s authorization; (3) that the defendant used
the mark (or an imitation of it) ‘in connection with the sale,
offering for sale, distribution, or advertising’ of goods or
services; and (4) that the defendant’s use of the mark is
likely to confuse customers.”
Rosetta Stone, Ltd. v. Google, Inc., 676 F.3d 144, 152 (4th Cir. 2012); see also 15 U.S.C.
§ 1114(1)(a). The court addresses each element in turn.
a.

Valid Trademark

Hanger argues it has a valid and protectable trademark because the USPTO
granted registration for the Charleston Bending Brace trademark to Dobi 2—its
predecessor in interest—on September 30, 1997. Pls.’ Mot. 7. Hooper argues the mark
was obtained fraudulently, stating he has filed a petition with the USPTO to have the
registration cancelled. Defs.’ Resp. 10.

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Generally, “the party claiming ownership of a mark must be the first to use the
mark in the sale of goods. The party claiming ownership must also use the mark as a
trademark, that is, the mark must be used to identify the source of the goods to potential
customers.” George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 400 (4th Cir.
2009) (internal citation omitted). As long as the party claiming ownership of a mark “is
the first to use a particular mark to identify his goods in a given market, and so long as
that owner continues to make use of the mark, he is ‘entitled to prevent others from using
the mark to describe their own goods’ in that market.” Id. (quoting Defiance Button
Mach. Co. v. C & C Metal Prods. Corp., 759 F.2d 1053, 1059 (2d Cir. 1985)). The
Fourth Circuit has held that “federal registration” of a trademark “is prima facie evidence
that the registrant is the owner of the mark.” Id. at 400 n.15 (emphasis omitted); see also
15 U.S.C. § 1115(a) (providing that “a mark registered on the principal register provided
by this chapter and owned by a party to an action shall be . . . prima facie evidence of the
validity of the registered mark and of the registration of the mark, of the registrant’s
ownership of the mark, and of the registrant’s exclusive right to use the registered mark
in commerce”). “Registration grants a presumption of ownership, dating ownership to
the filing date of the federal registration application, and the party challenging the
registrant’s ownership must overcome this presumption by a preponderance of the
evidence.” George & Co., 575 F.3d at 400 n.15.
In this case, Hanger enjoys a presumption of ownership dating back to March 6,
1995, the date on which its predecessor in interest filed its application with the USPTO to
register the Charleston Bending Brace. See id. (noting “[r]egistration grants a
presumption of ownership, dating ownership to the filing date of the federal registration
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application”). Hanger asserts that, along with its predecessors, it has marketed the
Charleston Bending Brace under the trademark at issue for over thirty years. Although
Hooper contends the mark was fraudulently obtained, resolution of its petition to cancel
Hanger’s registration is still pending in the USPTO. Hooper does, however, make a
strong argument that he invented the Charleston Bending Brace and has used it
continuously since 1979—well before the May 7, 1997 date that Hanger’s predecessor in
interest indicated was the mark’s date of first use when it registered the trademark with
the USPTO. Nevertheless, Hanger maintains a federally registered trademark for the
Charleston Bending Brace. Hooper has several strong arguments, but the court finds that
he cannot meet his burden of overcoming the presumption—by a preponderance of the
evidence—that Hanger has ownership over a valid, protectable mark.
Therefore, the court finds that Hanger maintained a valid, protectable mark for the
Charleston Bending Brace. The court also denies Hooper’s motion for preliminary
injunction because—absent some showing that he successfully cancelled the registration
of Hanger’s mark with the USPTO—he is not likely to succeed on the merits.
b.

Used in Commerce Without Consent

Hanger next argues Hooper used the mark—as well as another confusingly
similar designation—in commerce without their consent. See Rosetta Stone, 676 F.3d at
152; Pls.’ Mot. 7. Hooper admits to using the mark, contending his use was lawful
because he “invented it and used it since long before the fraudulent registration with the
USPTO” but he stopped using the Charleston Bending Brace mark, as well as the
Original Bending Brace of Charleston mark, “when it became clear that the issue would
be disputed in litigation.” Defs.’ Resp. 13.
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15 U.S.C. § 1127 provides that, “unless the contrary is plainly apparent from the
context[,] . . . [t]he word ‘commerce’ means all commerce which may lawfully be
regulated by Congress.” Accordingly, “commerce” under the Lanham Act “is
coterminous with that commerce that Congress may regulate under the Commerce
Clause.” Int’l Bancorp, LLC v. Societe des Bains Mer et du Cercle des Estangers a
Monaco, 329 F.3d 359, 364 (4th Cir. 2003); see also U.S. Const. art. I, § 8, cl. 3
(providing, in relevant part, that “[t]he Congress shall have Power . . . to regulate
Commerce with foreign nations, and among the several States”). Section 1127 defines
“use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and
not merely to reserve a right in a mark.” 15 U.S.C. § 1127. A mark on goods is deemed
to be used in commerce when (1) the mark “is placed in any manner on the goods or their
containers or the displays associated therewith or on the tags or labels affixed thereto, or
if the nature of the goods makes such placement impracticable, then on documents
associated with the goods or their sale”; and (2) “the goods are sold or transported in
commerce.” Id. With regard to services, a mark is in use in commerce when the mark
“is used or displayed in the sale or advertising of services and the services are rendered in
commerce, or the services are rendered in more than one State or in the United
States . . . and the person rendering the services is engaged in commerce in connection
with the services.” Id.
Here, it is clear that Hooper did not have Hanger’s permission to use the
Charleston Bending Brace mark, or the similar Original Bending Brace of Charleston
mark, in the ordinary course of trade. After the parties were unable to reach agreeable
terms to facilitate the renewal of the Agreement, Hooper unilaterally decided to create a
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“confusingly similar” designation and enter it into commerce. Hanger included a
screenshot of the CBB website, Pls.’ Mot., Ex. F, as well as Hooper’s other marketing
materials, to demonstrate Hooper has used the mark in commerce, id., Exs. G, H, I, J.
The CBB website stated that “[a]ll responsibilities for designs by C. Ralph Hooper, Jr.,
CPO will be done under the name Original Bending Brace, LLC. Manufacturing and
design will be coordinated by the Charleston Bending Brace Foundation.” Id., Ex. F.
Moreover, the CBB website offered a training course, taught by Hooper, for the Original
Bending Brace of Charleston. Id., Ex. F. Hanger further alleges that Hooper has
marketed the orthotic device to referring physicians by soliciting customers using the
name “Charleston Bending Brace Foundation” and making reference to the “Original
Bending Brace (formerly Charleston Bending Brace)” in email solicitations. Id., Ex. J.
The emails likewise promote a “Charleston Bending Brace Certification Course” and
contain a flyer titled “Re-introducing the Original Bending Brace of Charleston.” Id. In
addition, Hooper has advertised the orthotic device in trade publications. Specifically,
Hanger included a copy of an advertisement that appeared in the April 2016 issue of
Orthotics and Prosthetics Almanac, “a publication disseminated widely within the
orthotics and prosthetics industry, for a ‘Charleston Bending Brace Certification
Course.’” Id. at 13, Ex. G.
Although Hooper maintains that he only used the Original Bending Brace of
Charleston mark temporarily—for less than a week—and stopped using both marks when
litigation ensued and that he “has no intention of using either mark until this dispute is
resolved, and instead is using the mark Original Bending Brace,” the court is persuaded
by Hooper’s use of the “confusingly similar” Original Bending Brace of Charleston
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designation and references to Charleston Bending Brace in email solicitations to referring
physicians. Thus, the court finds that Hanger has met its burden of showing Hooper sold
the goods in commerce without its consent.
c.

Used in Offering for Sale or Advertising of Goods and Services

For the same reasons outlined in Part III.A.3, the court finds that Hooper “used
the mark (or an imitation of it) ‘in connection with the sale, offering for sale, distribution,
or advertising’ of goods or services.” Rosetta Stone, 676 F.3d at 152. The court finds
that Hanger made a clear showing that Hooper used the Charleston Bending Brace
mark—as well as the Original Bending Brace of Charleston mark, an imitation of it—in
connection with the sale, offering for sale, distribution, or advertising of the orthotic
device. See id.
d.

Likelihood of Confusion

Hanger next contends that Hooper’s use of the Charleston Bending Brace mark,
as well as the “confusingly similar designation” Original Bending Brace of Charleston, is
likely to cause confusion. See Rosetta Stone, 676 F.3d at 152; Pls.’ Mot. 14. Hooper
counters that Hanger failed to demonstrate a likelihood of confusion because its “primary
evidence for ‘confusion in the marketplace’ is incorrect.” Defs.’ Resp. 15.
“A likelihood of confusion exists ‘if the defendant’s actual practice is likely to
produce confusion in the minds of consumers about the origin of the goods or services in
question.’” George & Co., 575 F.3d at 393 (quoting CareFirst of Md., Inc v. First Care,
P.C., 434 F.3d 263, 267 (4th Cir. 2006)). In analyzing the likelihood of confusion, the
Fourth Circuit generally considers the following nine factors relevant:

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(1) the strength and distinctiveness of the plaintiff’s mark
as actually used in the marketplace; (2) the similarity of the
two marks to consumers; (3) the similarity of the goods or
services that the marks identify; (4) the similarity of the
facilities used by the markholders; (5) the similarity of
advertising used by the markholders; (6) the defendant’s
intent; (7) actual confusion; (8) the quality of the
defendant’s product; and (9) the sophistication of the
consuming public.
Rosetta Stone, 676 F.3d at 153. “Not all of these factors are of equal importance, ‘nor are
they always relevant in any given case.’” George & Co., 575 F.3d at 393 (quoting
Anhueser-Busch, Inc. v. L&L Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992)); see also
Lyons P’ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 804 (4th Cir. 2001) (“The
importance and relevance of each factor will, of course, vary from case to case.”).
However, the Fourth Circuit has indicated that actual confusion “is often paramount.”
Lyons, 243 F.3d at 804. When a “defendant in an infringement case has elected to use a
mark similar to that of a competitor’s distinctive mark, and, as a result, has actually
confused the public, our inquiry ends almost as soon as it begins.” Sara Lee Corp. v.
Kayser-Roth Corp., 81 F.3d 455, 467 (4th Cir. 1996).
Hanger first contends that its mark is commercially strong. “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.” First Care, 434 F.3d at 269. In
assessing the commercial strength, a court “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 business enterprise.”
Id. “A strong trademark is one that is rarely used by parties other than the owner of the
trademark, while a weak trademark is one that is often used by other parties.” Id.
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(quoting Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1533 (10th
Cir. 1994)). Hooper argues that the mark has been closely associated with him from the
very beginning, pointing to a 1992 journal article that outlined the history of the
Charleston Bending Brace and noting his name and picture have appeared with the mark
“countless times.” ECF No. 13 at 17. Hooper was, in fact, the inventor of the orthotic
device, which was named after his hometown, and the “scientific literature on such
braces universally associates Hooper with the Charleston Bending Brace.” Id. Given
that “customers understand the designation when used in connection with a business to
refer to a particular person,” Hooper, this factor actually weighs against Hanger. U.S.
Conference of Catholic Bishops v. Media Research Ctr., 432 F. Supp. 2d 616, 624 (E.D.
Va. 2006).
Second, Hanger contends the similarity of the Charleston Bending Brace mark
and the Original Bending Brace of Charleston is undeniable. In determining whether
marks are similar, courts “must examine the allegedly infringing use in the context in
which it is seen by the ordinary customer.” Id. (quoting Anheuser-Busch, Inc., 962 F.2d
at 319). Because both marks include “Charleston” and “Bending Brace” in this case, and
both employ the same purple color scheme, similarity cannot be disputed and this factor
weighs in favor of Hanger.
Third, the goods and services that the marks identify are undeniably similar. Both
marks identify bending braces that are used for nonsurgical nighttime scoliosis
management, and they are marketed toward the same consumers. Therefore, this factor
favors Hanger.

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Neither party submitted evidence of the fourth factor regarding the similarity of
the facilities. Thus, this factor is irrelevant to the court’s analysis.
With regard to the fifth factor, both parties appear to use similar advertising
methods and target the same set of consumers. Hooper uses the CBB website, which was
long used to advertise the Charleston Bending Brace mark. Additionally, the CBB
website employs a purple color scheme that is virtually indistinguishable from Hanger’s
website. Although neither party submitted much support for this factor—and it is unclear
which website came first—based upon the limited information before the court, the court
finds that the fifth factor tips in favor of Hanger.
Sixth, Hanger contends Hooper is intentionally infringing upon its trademark for
the Charleston Bending Brace. “If there is intent to confuse the buying public, this is
strong evidence establishing the likelihood of confusion, since one intending to profit
from another’s reputation generally attempts to make his signs, advertisements, etc., to
resemble the other’s so as deliberately to induce confusion.” George & Co., LLC, 575
F.3d at 397 (quoting Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.
1984)). The court finds that Hanger has made an ample showing that Hooper intended to
create a similar mark and confuse the public into believing it was the same one he has
been using all along. This is evidenced by the fact that Hooper called his orthotic device
the “Original Bending Brace of Charleston” and advertised it as “Re-introducing the
Original Bending Brace of Charleston.” Therefore, the court finds that Hooper’s actions
demonstrate an intent to deceive the consuming public into believing the Original
Bending Brace of Charleston is the same as the Charleston Bending Brace.

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As indicated above, “actual confusion” is one of the most important factors in the
likelihood of confusion analysis. See Sara Lee Corp., 81 F.3d at 467 (noting when a
“defendant in an infringement case has elected to use a mark similar to that of a
competitor’s distinctive mark, and, as a result, has actually confused the public, our
inquiry ends almost as soon as it begins”). Hanger contends that Hooper’s “conduct is
emerging and, absent discovery on the precise issue, there is not yet a developed
evidentiary record regarding consumers’ actual confusion.” Pls.’ Mot. 17. Hanger filed
the affidavit of Jeffrey D. Rosen, the director of Hanger, in an attempt to establish that its
customers were actually confused about the difference between the two marks. In his
affidavit, Rosen stated that one doctor, Dr. Steve Taylor (“Dr. Taylor”), an existing
Hanger customer, intended to fax his request for an orthotic device on a Hanger order
form to Original Bending Brace. Rosen Aff. at 2. When Hanger representatives
contacted Dr. Taylor, “[h]e explained that Mr. Hooper had called his office and stated
that OBB was now marketing and selling the orthotic device.” Id. at 3. Hooper,
however, countered this assertion with an affidavit from Dr. Taylor himself, in which he
states that no confusion exists in the marketplace. To the contrary, in his affidavit, Dr.
Taylor indicates that he “deliberately ordered an Original Bending Brace from Original
Bending Brace” and “was aware he was not ordering the brace from Hanger.” ECF No.
15-6 at 2. Taylor states he was “not confused or mistaken” about what he was ordering
or from whom he was ordering it. Id. at 3. He then went on to state that “[b]ased on [his]
experience, there is no ‘confusion in the marketplace’ regarding the Original Bending
Brace, as incorrectly stated in Mr. Rosen’s affidavit,” and “[t]he series of events referred

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to in Mr. Rosen’s affidavit is simply the transition from an old order form to a new order
form.” Id.
The court finds significant Hanger’s weak showing of actual confusion in the
marketplace, coupled with Hooper’s introduction of an affidavit from the actual customer
that directly refutes Hanger’s only evidence as to this issue. As the Fourth Circuit has
indicated in several decisions, actual confusion is “often paramount” in trademark
infringement cases. See e.g., George & Co. LLC v. Imagination Entm’t Ltd., 575 F.3d
383, 393 (4th Cir. 2009); see also Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va.,
Inc., 43 F.3d 922, 937 (4th Cir. 1995) (noting that the actual confusion factor is “entitled
to substantial weight as it provides the most compelling evidence of likelihood of
confusion”). Hanger’s failure to show actual confusion is fatal because its inability to
demonstrate the likelihood of confusion element of its trademark infringement claim
means it is not likely to succeed on the merits.
With respect to the eighth element, Hanger cannot argue that Hooper’s product is
of poor quality. Hooper, as noted several times above, invented the Charleston Bending
Brace and is “recognized as ‘one of the foremost experts on Orthotic Scoliosis Treatment
nationally.’” Defs.’ Resp. 17, Ex. 12. Indeed, Hooper raises serious concerns that,
without him, Hanger’s product will deteriorate and confuse the consuming public into
believing the Charleston Bending Brace is still associated with him. Although Hanger
contends this factor has little relevance, the court disagrees and finds that this factor
weighs against Hanger.
Finally, although Hanger contends “consumers are unlikely to distinguish” the
marks, the court finds this argument is without merit. As the Fourth Circuit has stated,
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“[b]arring 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 464. Here, the
consuming public consists of physicians who prescribe the subject orthotic devices to
treat children with scoliosis. Hanger grossly underestimates the ability of these
physicians to distinguish among products, arguing that “[w]hile medical training equips
these physicians with a certain level of professional sophistication in the medical field, it
does not prepare them to adequately distinguish” the marks. Pls.’ Mot. 17–18. The court
would certainly hope that physicians are capable of distinguishing among products they
use to treat patients in their specialized fields, a conclusion only further supported by the
Taylor affidavit. Therefore, the court finds this factor weighs in favor of Hooper.
Based on the foregoing, the court finds that Hanger has failed to demonstrate a
likelihood of confusion in this case. Given that Hanger must prove this element to
prevail on its trademark infringement claim, Hanger failed to make a clear showing that it
is likely to succeed on the merits of its trademark infringement claim.
2.

Irreparable Harm

In the next element of the preliminary injunction analysis, Hanger must make a
clear showing it will be irreparably harmed in the absence of preliminary injunctive
relief. See Winter, 555 U.S. at 20.
“In Lanham cases involving trademark infringement, a presumption of irreparable
injury is generally applied once the plaintiff has demonstrated a likelihood of confusion.”
Scotts Co. v. United Indus. Corp., 315 F.3d 264, 273 (4th Cir. 2002). “A finding of
irreparable harm usually follows a finding of unlawful use of a trademark and a
likelihood of confusion.” Ledo Pizza Sys., Inc. v. Singh, 2013 WL 5604339, at *3 (D.
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Md. Oct. 10, 2013). In Merry Maids Ltd. P’ship v. Kamara, 33 F. Supp. 2d 443, 445 (D.
Md. 1998) (quoting Long John Silver’s, Inc. v. Wash. Franchise, Inc., 1980 WL 30249, at
*12 (E.D. Va. June 24, 1980)), the court concluded that the defendants’ unauthorized use
of the plaintiff’s trademark gave rise to irreparable harm because the plaintiff “lost
control of its business reputation,” “a substantial likelihood of confusion of the
purchasing public” was shown, “no meaningful monetary recovery [was] available,” and
“an inherent injury to the good will and reputation of the plaintiff” resulted from the
infringement.
Because Hanger failed to demonstrate a likelihood of confusion, the court finds
that it cannot prove irreparable harm in this case. See Singh, 2013 WL 5604339, at *3
(“A finding of irreparable harm usually follows a finding of unlawful use of a trademark
and a likelihood of confusion.”); See also Scotts Co., 315 F.3d at 273 (“In Lanham cases
involving trademark infringement, a presumption of irreparable injury is generally
applied once the plaintiff has demonstrated a likelihood of confusion.”).
A.

Balance of Equities

Next, Hanger must make a clear showing that the balance of the equities tips in its
favor. See Winter, 555 U.S. at 20. Hanger argues it can do so here because “[w]hatever
harm [Hooper] might claim as a result of a preliminary injunction would be self-inflicted
as it would stem from [his] infringement of [Hanger’s] trademark rights.” Pls.’ Mot. 16.
As the court finds that Hanger failed to make a sufficient showing that it is likely
to succeed on the merits of its trademark infringement claim, Hanger has also failed to
make a clear showing that the balance of equities tips in its favor. Hanger claims it has
“invested thirty years of time, money, and resources to grow and protect the Charleston
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Bending Brace brand, to federally register and maintain a registration for the Trademark,
and to acquire strong consumer recognition and goodwill.” Pls.’ Mot. 21. Nevertheless,
Hooper counters that he is the one who has established the recognition and goodwill.
Further, he contends Hanger’s conduct is inequitable because it went behind his back to
“fraudulently register” the trademark it purports to own for Charleston Bending Brace.
The court finds that Hanger has not made a “clear showing” that the balance of equities
tips in its favor. Further, because several outstanding issues need to be resolved prior to
any party being able to succeed on the merits in this case, the court finds that a
preliminary injunction is not equitable here.
B.

Public Interest

Finally, Hanger must make a clear showing that an injunction is in the public
interest in this case. See Winter, 555 U.S. at 20. Hanger argues the public will be
harmed if Hooper is permitted to continue “misleading consumers into the belief that
OBB’s orthotic device is of the same quality they have come to expect under the
Charleston Bending Brace trademark.” Pls.’ Mot. 17.
Protecting trademark rights and preventing trademark infringement is in the
public interest. See Rebel Debutante, LLC v. Forsythe Cosmetic Grp., Ltd., 799 F. Supp.
2d 558, 581 (M.D.N.C. 2011); Merry Maids Ltd. P’ship v. Kamara, 33 F. Supp. 2d 443,
446 (D. Md. 1998). “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, Inc. v. Trainor, 634 F. Supp. 2d 586, 594 (E.D. Va. 2008) (quoting AMP Inc.
v. Foy, 540 F.2d 1181, 1186–86 (4th Cir. 1976)). “Preventing consumers from being
confused serves the public interest, as does preventing trademarks from being used
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deceptively, protecting the interests of trademark owners, and enforcing valid contracts.”
Id. (internal citations omitted).
While it is certainly true that protecting trademark rights and preventing
trademark infringement is in the public interest, in this case, the court finds that a
preliminary injunction would not serve the public interest. The consuming public—the
physicians who prescribe bending braces—is fully capable of distinguishing between the
two competing products, as evidenced by Dr. Taylor’s affidavit. At this point in time,
Hanger is unable to demonstrate public confusion as to the identity of the competing
trademarks in this case. Accordingly, the court finds that a preliminary injunction is not
in the public interest in the instant case.
B.

Plaintiff’s Reply

Hooper filed a reply on September 21st, 2016 that partially raised new objections
against the R&R. ECF No. 31. While it is not determinative that Hooper filed objections
under the label of a reply, 28 U.S.C. § 636(b)(1) and Fed. R. Civ. P. 72(b) require
specific written objections to be filed within fourteen days of the date of service of the
R&R. The Notice of Right to File Objection to Report and Recommendation, which was
filed alongside the R&R, specifically provides that “specific written objections must be
filed within fourteen [ ] days of the date of service of [the R&R].” ECF No. 29 at 4. The
R&R was filed on August 29, 2016, giving both parties until September 15, 2016 to file
objections. Hooper never filed any objections and filed his reply on September 21, 2016.
Thus, if any portion of Hooper’s reply was meant to be construed as an objection to the
R&R, it was untimely and the court finds that those portions of the reply cannot be
construed as objections to the magistrate’s R&R. To the extent that any arguments in
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Hooper’s reply are meant to challenge the conclusions in the R&R, the court reviews
those arguments under the clear error doctrine.
Hooper includes a number of arguments that challenge the denial of Hooper’s
motion for preliminary injunction. See ECF No. 31 at 5 (“[a]ny preliminary injunction
order that the Court enters should enjoin Hanger from using the mark during this
litigation.”). Hooper also reasserts that Hanger fraudulently registered the trademark.
Although Hooper contends the mark was fraudulently obtained, resolution of its petition
to cancel Hanger’s registration is still pending in the USPTO. As explained above,
Hanger maintains a federally registered trademark for the Charleston Bending Brace, and
Hooper has not met his burden of overcoming the presumption—by a preponderance of
the evidence—that Hanger has ownership over a valid, protectable mark. Absent some
showing that Hooper has successfully cancelled the registration of Hanger’s mark with
the USPTO, any use of the mark by Hooper constitutes “infringing activity.” Ultimately,
these arguments are untimely because the reply was filed past the September 15, 2016
deadline to file an objection. Since any argument that the R&R inappropriately denied
Hooper’s motion for preliminary injunction is time-barred, the court reviews it under the
clear error doctrine. The court finds no such error, and denies Hooper’s motion for a
preliminary injunction.

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IV. CONCLUSION
For the reasons set forth above, the court ADOPTS the magistrate judge’s R&R, ECF
No. 29, DENIES plaintiff’s motion for a preliminary injunction, ECF No. 8, and
DENIES defendant’s motion for a preliminary injunction, ECF No. 13.
AND IT IS SO ORDERED.

DAVID C. NORTON
UNITED STATES DISTRICT JUDGE
February 13, 2017
Charleston, South Carolina

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