Pure Fishing Inc v. Redwing Tackle Ltd
Filing
86
ORDER granting 64 Motion for Summary Judgment as to Redwing's counterclaim; and granting 65 Motion for Summary Judgment as to the claims it asserts in the second amended complaint. The court intends to grant a permanent injunction and enjoin Defendant Redwing from using the mark SPIDER THREAD on fishing line or in connection with the marketing, sale or distribution of fishing line. The parties are directed to collaborate and submit input on the precise language of the injunction within seven (7) days from the date of this order. Signed by Honorable Joseph F Anderson, Jr on 8/16/12.(mflo, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
COLUMBIA DIVISION
Pure Fishing, Inc.,
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Plaintiff,
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v.
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Redwing Tackle, Ltd.,
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Defendant.
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_________________________________)
C/A No.: 3:10-cv-3117-JFA
ORDER
This matter comes before the court pursuant to plaintiff Pure Fishing, Inc.’s
motions for summary judgment (ECF Nos. 64 & 65). The court held a hearing on
August 9, 2012, and after considering the written materials submitted and the arguments
of counsel, the court grants Pure Fishing’s motions for summary judgment.
I.
Factual and Procedural History
Pure Fishing, Inc., (Pure Fishing) filed the present action alleging trademark
infringement and unfair competition against Redwing Tackle, Limited (Redwing). Pure
Fishing alleges that it owns various trademarks as a part of the SPIDER family of marks
for fishing products:
SPIDER, SPIDERWIRE, SPIDERLINE, SPIDERWEB,
SPIDERWIRE EZ MONO, SPIDERWIRE STEALTH, and the spider design mark. Pure
Fishing obtained the marks through assignment from its predecessors. Pure Fishing and
its predecessors have sold the SPIDER branded fishing products since 1993.
Pure
Fishing uses the SPIDERWIRE mark in connection with its fishing line products, while
the various SPIDER marks are used for other fishing equipment, including fishing rods
and reels. The SPIDERWIRE mark was registered on February 4, 1997. Pure Fishing’s
infringement claim is limited to the SPIDERWIRE mark. The SPIDER mark—subject of
Redwing’s counterclaim—was registered in 2004.
Redwing began using the SPIDER THREAD mark on its spawn tying thread 1 in
1983. In 2009, Redwing filed an application to use SPIDER THREAD on elastic thread
and fishing line. The United States Patent and Trade Office (USPTO) rejected that
application in April 2009.
Redwing then filed a petition to cancel Pure Fishing’s
SPIDER mark before the Trademark Trial and Appeal Board. Redwing used the SPIDER
THREAD mark in connection with the sale of its fishing line in September 2010.
Defendant Redwing has filed a counterclaim to cancel Pure Fishing’s SPIDER mark that
parallels the claim before the Trademark Trial and Appeal Board, and that proceeding is
now suspended pending the outcome of this litigation.
Pure Fishing filed the initial complaint in this trademark infringement case on
December 7, 2010. Pure Fishing now moves for summary judgment as to the claims it
asserts in the Second Amended Complaint (ECF No. 65) and for summary judgment as to
Redwing’s counterclaim (ECF No. 64).
II.
Legal Standard
Rule 56(a) of the Federal Rules of Civil Procedure provides that summary
judgment shall be granted when a moving party has shown that “there is no genuine
1
Spawn tying thread is a tacky, vinyl thread that adheres to itself and is used for tying spawn sacks
containing salmon or trout eggs.
2
dispute as to any material fact and the movant is entitled to judgment as a matter of law.”
The court must determine whether the evidence presents a sufficient disagreement to
require submission to a jury or whether it is so one-sided that one party must prevail as a
matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251–52 (1986). When
evaluating a motion under Rule 56, the Court must construe all “facts and inferences to
be drawn from the facts . . . in the light most favorable to the non-moving party,” Miller
v. Leathers, 913 F.2d 1085, 1087 (4th Cir. 1990) (internal quotations omitted), and
summary judgment should be granted in those cases where it is perfectly clear that there
remains no genuine dispute as to material fact and inquiry into the facts is unnecessary to
clarify the application of the law. McKinney v. Bd. of Trustees of Maryland Community
College, 955 F.2d 924, 928 (4th Cir. 1992). In deciding a motion for summary judgment,
“the judge’s function is not himself to weigh the evidence and determine the truth of the
matter but to determine whether there is a genuine issue for trial.” Anderson, 477 U.S. at
249.
III.
Discussion
a. Pure Fishing’s Claims in the Second Amended Complaint
Pure Fishing’s Second Amended Complaint (ECF No. 47) asserts claims for
trademark infringement and unfair trade practices under both federal law and state law.2
To prove trademark infringement and unfair competition, a plaintiff must show (1) that it
owns a valid and protectable mark and (2) that defendant’s use of a similar mark creates a
2
The law governing the claims is the same under federal and state law.
3
likelihood of confusion. George & Co. LLC v. Imagination Entm’t Ltd., 575 F.3d 383,
393 (4th Cir. 2009); Petro Stopping Centers, L.P. v. James River Petroleum, Inc., 130
F.3d 88, 91 (4th Cir. 1997). “[S]ummary judgment is appropriate when the material,
undisputed facts disclose a likelihood of confusion.”
Resorts of Pinehurst, Inc. v.
Pinehurst Nat. Corp., 148 F.3d 417, 422 (4th Cir. 1998). Plaintiff also asserts a claim for
unjust enrichment. See Myrtle Beach Hosp., Inc. v. City of Myrtle Beach, 532 S.E.2d
868, 872 (S.C. 2000) (requiring proof of a “(1) benefit conferred by plaintiff upon the
defendant; (2) realization of that benefit by the defendant; and (3) retention of the benefit
by the defendant under circumstances that make it inequitable for him to retain it without
paying its value”).
The first element of a trademark infringement claim requires Pure Fishing to own
a valid and protected mark. Pure Fishing provides a detailed recitation of the registration
and history of its various marks which constitutes prima facie evidence of their validity.
(Defendant specifically contests the SPIDER mark, which is the subject of the
counterclaim discussed below). In 2001, Fishing Spirit (a predecessor to Pure Fishing)
filed a Section 8 and Section 15 declaration stating that the SPIDERWIRE mark had been
in use for five consecutive years in connection with fishing line, that the mark was still in
use, and that there had been no final decision adverse to its claim of ownership. See 15
U.S.C. § 1058(a)(1). That filing rendered the mark incontestable. See 15 U.S.C. § 1065.
In 2006, Pure Fishing’s predecessor renewed the SPIDERWIRE registration by filing a
Combined Declaration of Use in Commerce and Application for Renewal of Registration
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under Sections 8 and 9 of the Lanham Act. See 15 U.S.C. §§ 1058(a)(3) & 1059. Thus,
Pure Fishing has demonstrated as a matter of law that it contains a valid and protected
mark.
The second element is whether there is a likelihood of confusion “in the minds of
consumers about the origins of the goods or services in question.” George, 575 F.3d at
393. In the Fourth Circuit, courts look at nine non-exclusive factors under this analysis:
(1) the strength or 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.
Id. (citations omitted). The factors are not of equal importance and a given factor may
not “always [be] relevant in any given case.” Id. (citations omitted). The parties agree
on five grounds: that the goods are similar, that the goods are distributed similarly, that
they are marketed to similar consumers, that the quality of the goods is not an issue, and
that the sophistication of the parties does not overcome the likelihood of confusion. The
parties disagree on the remaining grounds.
The strength of the mark is the “first and paramount factor.” Pizzeria Uno Corp.
v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984). In assessing the strength of a mark,
courts examine both the conceptual strength—“the placement of the mark along a
spectrum focusing on the inherent potential distinctiveness of the term”—and commercial
strength—the marketplace's recognition—of a mark. See Renaissance Greeting Cards,
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Inc. v. Dollar Tree Stores, Inc., 405 F. Supp. 2d 680, 690 (E.D. Va. 2005). “A mark's
conceptual strength is determined in part by its placement into one of four categories of
distinctiveness: (1) generic; (2) descriptive; (3) suggestive; or (4) arbitrary or fanciful.”
George & Co., 575 F.3d at 394–95.
“Arbitrary marks, which are also inherently
distinctive, typically involve common words that have no connection with the actual
product.” Id. at 395. Courts determine commercial strength by examining factors such
as advertising expenditures, consumer studies linking the mark to a source, sales success,
unsolicited media coverage, any attempts to plagiarize the mark, and the length and
exclusivity of the mark’s use. Id.
Pure Fishing asserts that its SPIDERWIRE mark possess both conceptual and
commercial strength. Pure Fishing argues that its mark has conceptual strength because a
spider and wire are not otherwise related to fishing, thus it should be considered an
arbitrary mark. The two aspects of the mark, spider and wire, form what Pure Fishing
calls an incongruous phrase. Moreover, no company besides the two in this case uses a
spider in relation to fishing products.
Pure Fishing next argues that the mark has considerable commercial strength.
Pure Fishing indicates that its entire brand of SPIDER marks has earned substantial
revenues (ten to eleven million dollars each year from 2005 until 2011), that Pure Fishing
expends approximately six and half million dollars each year marketing the SPIDER
brand products, and that their advertisements appear in national and regional magazines
as well as television shows. Pure Fishing also demonstrates that its products are or have
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been available through such well known retailers as Wal-Mart, K-Mart, Cabela’s, Bass
Pro Shops, and Dick’s Sporting Goods. Redwing contends that Pure Fishing has not
proved the strength of its mark because it has only offered evidence of the revenue
generated by the SPIDER marks generally, and not SPIDERWIRE specifically.
Any evidence of actual confusion, the next factor, “is entitled to substantial
weight.”
Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d 922, 937
(4th Cir. 1995) (citations omitted). Pure Fishing notes that Barry Westall, Redwing’s
President and owner, indicated that there have been instances of actual confusion by
customers at trade shows in Canada. Redwing argues that these are isolated incidents
occurring outside of this court’s jurisdiction.
The next factor is the similarity of the marks to the consumers. “[I]n evaluating
the similarity of two marks, . . . the marks need only be sufficiently similar in appearance,
with greater weight given to the dominant or salient portions of the marks.” Lone Star,
43 F.3d at 396. Pure Fishing includes a consumer survey to demonstrate that some
consumers would find the two marks similar. The survey indicates that approximately
three out of ten individuals surveyed would find the two marks similar. Redwing lodges
a number of complaints about the survey, many regarding whether or not it demonstrates
actual confusion, but Redwing does not offer a competing survey. Additionally, “a judge
is free to draw upon his own experience and observation to make an informed judgment
as to the likelihood of confusion apt to be spawned by strongly analogous symbols.”
Volkswagenwerk AG v. Hoffman, 489 F. Supp. 678, 682 (D.S.C. 1980) (citing Baker v.
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Simmons Co., 307 F.2d 458, 464 (1st Cir. 1962)). Both parties address this argument and
ask this court to review the marks in question, and they have provided examples in both
the briefs and at oral argument.
Pure Fishing next argues that Redwing intended to trade on Pure Fishing’s
goodwill in the SPIDERWIRE mark. Pure Fishing contends that because Redwing’s
application was rejected, and they subsequently marketed SPIDER THREAD, Redwing
knew of Pure Fishing’s product and, therefore, intended to trade on its goodwill. Pure
Fishing admits that Redwing has not expressly stated its intent to trade on Pure Fishing’s
goodwill. Redwing responds that it hoped to capitalize on the goodwill of its own
product, the spawn tying thread, as opposed to Pure Fishing’s products. Similarly, Pure
Fishing contends that Redwing’s actions allow recovery for unjust enrichment. Pure
Fishing contends that the substantial goodwill and name-recognition it established in the
fishing line market conferred a benefit on Redwing when it chose to enter that same
market.
The parties also addressed the applicability of affirmative defenses, including a
prior use defense.3 “To acquire ownership of a trademark it is not enough to have
invented the mark first or even to have registered it first; the party claiming ownership
must have been the first to actually use the mark in the sale of goods or services.”
Sengoku Works Ltd. v. RMC Intern., Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). Pure
Redwing informs the court that the “zone of expansion” argument addressed in Plaintiff’s argument is
irrelevant, and does not argue its applicability.
3
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Fishing argues that a prior use defense is not applicable because Redwing was using the
marks related to spawn tying thread, a different product than fishing line. Pure Fishing
contends that when it began using the SPIDER marks on fishing line in 1993, Redwing
was not a participant in—nor did it have plans to enter—the fishing line market.
Redwing contends that it was a prior user because spawn tying thread and fishing line are
similar products. Redwing argues by analogy that because use of a mark on fishing
hooks and fishing lines has been held to be likely to cause confusion, spawn tying thread
and fishing line should be considered similar products. In re Berkeley & Company, Inc.,
180 U.S.P.Q. 147, 147 (T.T.A.B. 1973).
Viewing the evidence in the light most favorable to Redwing, the evidence shows
that Pure Fishing has demonstrated its trademark claims as a matter of law and is entitled
to summary judgment on the claims asserted in the Second Amended Complaint.
Initially, Pure Fishing has provided ample evidence to demonstrate that it possesses a
valid mark in SPIDERWIRE acquired through its predecessors. On the second element,
the evidence shows a likelihood of confusion.
First, Pure Fishing has demonstrated that it possess a strong mark. The conceptual
strength of the mark is shown by the fact that two incongruous aspects have been joined
and are recognized within the market. As a result, the SPIDERWIRE mark is properly
considered an arbitrary mark that has attained conceptual strength.
In light of the
evidence of SPIDERWIRE’s commercial strength, Pure Fishing has demonstrated that
prospective customers would understand a reference to a spider in conjunction with
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fishing line “to refer to a particular . . . business enterprise,” namely Pure Fishing. See
CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 269 (4th Cir. 2006).
Moreover, Pure Fishing has demonstrated that it has enjoyed success with its use of
SPIDER marks as evidenced by their wide distribution and availability. The court is
aware that while all of the success is not directly attributable to the individual
SPIDERWIRE mark, the evidence demonstrates that mark possess considerable
commercial strength on its own.
Next, the evidence shows instances of actual confusion. Though the events in
question occurred in Canada, they are nonetheless relevant because there is no evidence
that Canadian consumers behave any differently than American consumers.
The
evidence is particularly relevant because the two products have only recently coexisted,
and Redwing has not marketed SPIDER THREAD fishing line extensively in the United
States. Rather, in the area where it has been marketed, Canada, confusion has occurred.
The court has also conducted its own review of the marks in question. The marks
are quite similar in that both employ a spider in relation to fishing line: both use a spider
image, a spider web image, a bolded typeface SPIDER word, and in some instances,
similar coloring. Pure Fishing’s survey is also relevant to this inquiry. While Redwing
lodges some technical complaints, many concern whether or not the survey indicates
actual confusion, which is not the purpose for which Pure Fishing has offered the survey.4
“[A] properly conducted survey of the relevant class of prospective consumers of the goods or services
at issue can be of use in deciding the likelihood of confusion.” IDV North America, Inc. v. S & M
Brands, Inc., 26 F.Supp.2d 815, 829 (E.D. Va.1998).
4
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Finally, Redwing has failed to offer a survey in rebuttal or any evidence to indicate that
the marks are not similar.
On the other hand, Pure Fishing has failed to provide evidence sufficient to
establish as a matter of law that Redwing intended to trade on Pure Fishing’s goodwill.
However, even “if there is good faith belief that a subsequently-adopted mark will not
lead to confusion . . . that intent is no defense if a court finds actual or likelihood of
confusion.” Pizzeria Uno, 747 F.3d at 1535. Because the factors are non-exclusive,
courts have granted summary judgment to a plaintiff in similar cases without the plaintiff
demonstrating that the defendant intended to capitalize on its goodwill. See Resorts of
Pinehurst, 148 F. 3d at 422.
The court also notes that the factors on which the parties agree weigh in favor of
Pure Fishing.
The parties offer similar goods, advertised in similar manners, and
marketed to the same consumers. Customers in these markets range from professional
anglers to novice weekend fishermen, such that the sophistication of the consumers does
not overcome any likelihood of confusion. Accordingly, these factors would contribute
to rather than detract from the likelihood of confusion.
Redwing has failed to establish the applicability of the prior use defense. The two
products, spawn tying thread and fishing line, although both fishing products, are not the
same product. While at least one court has determined that fishing line and hooks are
related such that use of the same mark on both could cause confusion, it does not follow
that the same can be said of spawn tying thread and fishing line. Spawn tying thread is a
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tacky, vinyl thread that adheres to itself and is used for a particular niche of fishing—
tying spawn sacks containing salmon or trout eggs. Fishing line does not share these
properties and is used for all types of fishing.
Considering all of the factors and defenses, and viewing the evidence in the light
most favorable to Redwing, the record shows that Pure Fishing is entitled to judgment as
a matter of law on the claims it asserts. While Pure Fishing has offered evidence to
support its claims, Redwing relies largely on argument and has failed to produce evidence
sufficient to create an issue of fact for trial. The evidence also shows that Pure Fishing is
entitled to judgment as a matter of law on the unjust enrichment claim. The use of
SPIDER THREAD by Redwing capitalizes on the extensive goodwill Pure Fishing has
established, and would confer a benefit on Redwing. Allowing Redwing to reap that
benefit would be inequitable, and accordingly, Redwing should not be permitted to retain
that benefit. However, because Pure Fishing has conceded the damages portion of their
claim, the court need not address that aspect of the unjust enrichment claim.
b. Redwing’s Counterclaim
Redwing counterclaimed for cancellation of Pure Fishing’s SPIDER trademark
registration. See 15 U.S.C. § 1119. Redwing claims that Pure Fishing abandoned the
SPIDER mark, that Pure Fishing made a fraudulent statement in a Declaration of Use
filed with the USPTO, and that Redwing is the senior user. Redwing contends that each
of these grounds supports cancellation of the mark.
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Redwing first argues that Pure Fishing has abandoned the mark. Redwing bears
the burden on this counterclaim.
See Dial-A-Mattress Operating Corp. v. Mattress
Madness, Inc., 33 U.S.P.Q.2d 1961, 1973 (E.D.N.Y. 1961). Pure Fishing has introduced
evidence to show its continued use of its SPIDER mark on fishing line, fishing rods and
fishing reels. Redwing argues that the testimony is conflicting because Pure Fishing’s
30(b)(6) deponent stated that its product line was limited to a product specification book,
which did not include fishing rods and reels, while other deponents stated such products
were available through alternate sources. Redwing also appears to question the reliability
of the computer records indicating Pure Fishing’s sales of rods and reels.
Redwing next argues that the SPIDER mark should be cancelled because it was
obtained by fraud. “[A] trademark is obtained fraudulently under the Lanham Act only if
the applicant or registrant knowingly makes a false, material representation with the
intent to deceive the PTO.” In re Bose, 580 F.3d 1240, 1244 (Fed. Cir. 2009). Pure
Fishing admits that in its Section 8 Declaration5 it deleted certain goods for which it had
not been using the SPIDER marks. Pure Fishing contends that it did not act fraudulently
in filing the Declaration of Use, and its motion for summary judgment on the
counterclaim includes affidavits from various officers within Pure Fishing along with
records indicating the use of the SPIDER mark in connection with fishing line, rods and
reels at the time the declaration was filed.
5
A Section 8 Declaration, 15 U.S.C. § 1058(a)(1), must be filed between the fifth and sixth year of a
trademark’s registration to state whether the mark is still in use and must set forth the goods for which the
mark remains in use as well as identify any goods for which the mark was originally registered but is no
longer used.
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Redwing contends that In re Bose leaves open the issue of whether fraud can be
proven by showing a reckless disregard for the truth. Redwing also attempted to take the
deposition of the attorney, Ms. VanDerZanden, and a paralegal responsible for filing the
declaration at issue, but this court denied that request by granting a protective order.
Defendant now asks the court to infer intent to deceive from Ms. VanDerZanden’s
actions because it alleges she did not consult with anyone at Pure Fishing to obtain the
information regarding the filing.
Redwing next contends that the SPIDER mark was void ab initio because it was
not in use in commerce at the time of the filing for all of the uses specified. Redwing
relies on cases where courts have held that a trademark was void where the applicant was
not using the trademark for any of the specified uses at the time of the filing. See Aycock
Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009) (holding that
applicant’s preparation to use the mark was insufficient to constitute use in commerce).
Several courts, however, have held that so long as the mark is used on some of the listed
goods as of the time of the filing, the application is not void in its entirety. Grand
Canyon West Ranch LLC v. Hualapai Tribe, 78 U.S.P.Q.2d 1696, 1697 (T.T.A.B. 2006);
ShutEmDown Sports, Inc. v. Lacy, 102U.S.P.Q.2d 1036, 1045 (T.T.A.B. 2012).
Finally, Redwing contends that it is the senior user, because it was using the
SPIDER THREAD mark on spawn typing thread. As noted above in the discussion of
the prior use defense, this argument is inapplicable because spawn tying thread and
fishing line are distinct products.
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Viewing the facts in the light most favorable to Redwing, the evidence shows that
Pure Fishing is entitled to judgment as a matter of law on Redwing’s counterclaim.
Redwing, who carries the burden on the abandonment claim, has failed to offer evidence
indicating that Pure Fishing has in fact abandoned the SPIDER mark. On the other hand,
Pure Fishing has offered evidence indicating that it was using the mark on fishing line,
fishing rods and fishing reels. Pure Fishing also supplemented its 30(b)(6) deponent list
to clarify that its first deponent did not possess knowledge about some aspects of Pure
Fishing’s business, namely the marketing of fishing rods and reels. Accordingly, there is
no evidence before the court to demonstrate that Pure Fishing abandoned the mark.
Redwing’s claim of fraud appears to be directed at the attorney who filed the
declaration. Redwing, however, has not offered any evidence to demonstrate that the
mark was not in use when the attorney filed the declaration, and therefore has failed to
meet the high burden of In re Bose. Similarly, the lack of evidence to show that the mark
was not in use undermines their claim the declaration was filed with a reckless disregard
for the truth.
Redwing also fails to establish that the mark should be held void ab initio. This
court will follow those courts that have held that so long as the mark is in use on some of
the specified items contained in the declaration, it is not void in its entirety. Because
Pure Fishing was using the SPIDER marks on fishing line, fishing rods, and fishing reels,
the mark is not void ab initio. Accordingly, the evidence shows that Pure Fishing is
entitled to summary judgment on Redwing’s counterclaim.
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IV.
Conclusion
For the reasons discussed above, the record before the court demonstrates that
Pure Fishing is entitled to judgment as a matter of law on the claims it asserts in the
Second Amended Complaint as well on the claims asserted against it in the counterclaim.
At oral argument, Pure Fishing represented that it would concede on the damages portion
of their claims, and seeks only a permanent injunction. Accordingly, the court need not
address the damages portion of the case.
Pure Fishing has demonstrated that a permanent injunction in this case is
appropriate given that it would suffer irreparable harm if Redwing continues to use
SPIDER THREAD on fishing line. The court intends to grant a permanent injunction
and enjoin Defendant Redwing from using the mark SPIDER THREAD on fishing line or
in connection with the marketing, sale or distribution of fishing line. The court desires
input from the parties as to the precise language to be used in the injunction.
Accordingly, the parties are directed to collaborate and submit input on the precise
language of the injunction within seven (7) days from the date of this order.
IT IS SO ORDERED.
August 16, 2012
Columbia, South Carolina
Joseph F. Anderson, Jr.
United States District Judge
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