Opinion
Case No. 3:02 CV 7018
August 21, 2002
JUDGMENT ENTRY
For the reasons stated in the Memorandum Opinion filed contemporaneously with this entry, IT IS HEREBY ORDERED, ADJUDGED and DECREED that Plaintiff's Motion for TRO and Preliminary Injunction (Doc. No. 41) is denied.
MEMORANDUM OPINION
This matter is before the Court on Plaintiff's Emergency Motion for a TRO and Preliminary Injunction. Also before the Court is the Defendant's memorandum in opposition. This Court has jurisdiction pursuant to 28 U.S.C. § 1331. For the reasons that follow, Plaintiff's motion is not well taken.
Background
Dennis Ewald ("Ewald") is engaged in the manufacture, distribution and sale of cargo trailers. His trailers "are designed to be compatible and complimentary in appearance with Jeep vehicles manufactured and sold by DaimlerChrysler under the trade names for example, CJ Series and Wrangler Series ; and in addition employs and incorporates some original equipment parts of that Series manufactured by DaimlerChrysler into his RUBICON trailers." Compl. at ¶ 5. Ewald also owns the trademark RUBICON for this line of cargo trailers. U.S. Trademark Registration No. 2,282,128 (issued Sept. 28, 1999).
In December 2001, DaimlerChrysler announced that it was unveiling a new model for the 2003 year, the WRANGLER RUBICON. Plaintiff promptly filed suit against DaimlerChrysler alleging trademark infringement. On August 1, 2002, Plaintiff filed his emergency motion for TRO and preliminary injunction in order to prevent DaimlerChrysler from utilizing the RUBICON name with its 2003 JEEP WRANGLER vehicle. The Court conducted a two day hearing commencing on August 13, 2002 relative to Plaintiff's motion.
Motion for TRO and Preliminary Injunction
Under Fed.R.Civ.P. 65, injunctive relief is an extraordinary remedy whose purpose is to preserve the status quo. Injunctive relief may be granted to effect preventative or protective relief. The factors considered in granting a TRO or a preliminary injunction are similar in nature. In the Sixth Circuit it is well settled that the following factors are to be considered in making this determination:
(1) Whether the movant has shown a strong or substantial likelihood or probability of success on the merits; (2) Whether the movant has shown irreparable injury; (3) Whether the issuance of a preliminary injunction [TRO] would cause substantial harm to others; and (4) Whether the public interest would be served by granting injunctive relief.Mason County Med. Ass'n v. Knebel, 563 F.2d 256, 261 (6th Cir. 1977). The Sixth Circuit also advocates a balancing approach as to these factors:
It thus appears that the precise wording of the standard for the likelihood of success on the merits is not as important as a realistic appraisal of all of the traditional factors weighed by a court of equity. A balancing is required, and not the mechanical application of a certain form of words.Roth v. Bank of the Commonwealth, 583 F.2d 527, 537-38 (6th Cir. 1978), cert. dismissed, 442 U.S. 925 (1979). See also, In re DeLorean Motor Co., 755 F.2d 1223, 1229 (6th Cir. 1985). The degree of proof necessary for each factor used in determining whether to grant a preliminary injunction depends on the strength of plaintiff's case on other factors. Golden v. Kelsey-Hayes Co., 73 F.3d 648, 657 (6th Cir.), cert. denied, 519 U.S. 807 (1996). The party seeking the injunctive relief carries the burden of persuasion on the above stated factors. Stenberg v. Cheker Oil Co., 573 F.2d 921, 925 (6th Cir. 1978). With this legal framework in mind, the Court now turns to the relevant factors.
A. Likelihood of Success on the Merits
To prevail on his trademark infringement action the Plaintiff must establish that DaimlerChrysler's trademark creates a likelihood of confusion as between the parties' products. The Sixth Circuit recently reiterated the eight factors considered in making such a determination:
(1) the strength of the plaintiff's mark, (2) the relatedness of the goods or services offered by the plaintiff and the defendant, (3) the similarity of the marks, (4) any evidence of actual confusion, (5) the marketing channels used by the parties, (6) the probable degree of purchaser care and sophistication, (7) the defendant's intent in selecting its mark, and (8) the likelihood of either party expanding its product line using the marks.Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.2d 623, 630 (6th Cir. 2002), citing Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997); Frisch's Restaurants, Inc. v. Elby's Big boy, Inc., 670 F.2d 642, 648 (6th Cir. 1982). While actual confusion is the best evidence to support a likelihood of confusion, it is not necessary to demonstrate infringement. Therma-Scan, Inc., 295 F.2d at 634. Rather the test is whether a reasonably prudent purchaser is likely to be confused as to the source, endorsement, affiliation, or sponsorship between the plaintiff's and defendant's goods or services. Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991).
1. Strength of the Mark
This factor considers the distinctiveness of the mark and "its recognition among the public." Therma-Scan, Inc., 295 F.3d at 631. Distinctiveness of a mark is dependent upon whether it falls into the area of generic (least distinctive), descriptive, suggestive, or arbitrary (most distinctive). Although the Plaintiff argues the strength of its mark based upon its "arbitrariness," the mark is descriptive of at least two geographic locations, one in California and the other in Italy. In fact, at the hearing Plaintiff testified that he chose this name primarily based upon a historical event which occurred in Italy.
The Court further finds that there was no evidence that Plaintiff's trademark is widely recognized among the general public. While Plaintiff does advertise its product through its website, it does little else by way of advertising. Consideration of this factor, coupled with the finding that Plaintiff's mark is descriptive at best, finds that the Plaintiff's mark is not a strong mark.
2. Relatedness of the Goods
This case fits into the category of goods and services which "are somewhat related but not competitive, "thereby allowing the likelihood of confusion to turn on other factors." Daddy's Junky Music Stores, 109 F.3d at 282. In assessing relatedness, the more closely related the parties' goods are the more probable that the buyers will be confused. However, simply because goods or services coexist in the same broad industry doos not necessarily mean that they are related. Homeowner's Group, 931 F.3d at 1109.
The Plaintiff manufactures and sells cargo trailers. Prior to prosecution of the successful mark, he applied for registration under the name "WRANGLER" Cargo Trailers. In the WRANGLER application, Plaintiff stated that "cargo trailers are sufficiently different from automobiles, that there is not a likelihood of confusion when similar marks are used on respective goods." This statement is apparent from viewing the products themselves. The Defendant's product is a motorized vehicle and the Plaintiff's is not motorized and attaches to a motorized vehicle. While the parties' products may compliment each other, they are not sufficiently related so as to create a likelihood of confusion.
3. Similarity Between the Marks
In assessing similarity of the marks, the focus is on the appearance and overall commercial impression as well as the marks in their entireties and not their component parts. See Little Ceasar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 571 (6th Cir. 1987). The use of such a mark in conjunction with a subsidiary name has also been determined to eliminate the likelihood of confusion. See Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir. 2000).
In this instance, the marks are identical in spelling, thereby indicating a high degree of similarity as between the marks. However, the Defendant's use of its trademark WRANGLER in conjunction with the its model, RUBICON, lessens the confusion. Despite this association, this factor weighs in Plaintiff's favor.
4. Evidence of Actual Confusion
As conceded by Plaintiff in his motion, there is no claim nor was there evidence presented on the issue of actual confusion. Therefore, this factor does not weigh in the present analysis.
5. Marketing Channels
Where the marketing channels of the respective parties do not overlap, this factor weighs against a likelihood of success on the merits. Factors relevant to this consideration may include to whom and how the respective products are sold. See Homeowners Group, 931 F.2d at 1110. Here, the Plaintiff markets its product through its website. The Defendant markets its vehicles through its authorized dealerships and conducts a highly visible national campaign utilizing both television and print media to advertise its products. Since the marketing channels utilized are significantly differing in nature and because Plaintiff's primary marketing outlet is the internet, the Court finds that this factor weighs against a finding of likelihood of confusion.
6. Sophistication of the Buyer
It is generally well accepted that the more expensive the product the less there is for a likelihood of confusion with regard to the source of the goods. "[W]hen services are expensive or unusual, the buyer can be expected to exercise greater care in her purchases. When services are sold to such buyers, other things being equal, there is less likelihood of confusion." Homeowners Group, 931 F.3d at 1111.
Both parties' products are not inexpensive items. Plaintiff's cargo trailers retail for approximately $3,000.00. The Defendant's vehicles are even more expensive. Thus, this Court is led to conclude that prospective buyers of products ranging in price from $3,000.00 to over $20,000 would exercise a high degree of care prior in purchasing these items and this factor, therefore, weighs against a finding of likelihood of confusion.
7. Defendant's Intent
Where a mark is chosen and the choice of that mark is derived from the desire to create confusion between plaintiff and defendant's products, such a finding weighs heavily in favor of a likelihood of confusion. However, "[w]here there is no evidence that the defendant actually knew that a protected trademark existed, such knowledge can be presumed if evidence exists of the plaintiff's `extensive advertising and long-term use of a protected mark.'" Therma-Scan, Inc., 295 F.3d at 639 (citation omitted).
In this instance, there is was no evidence presented that the Defendant's choice of the name Rubicon was intended to create confusion among Plaintiff's prospective buyers. Rather, the testimony of Defendant's WRANGLER branch manager, Kim Adams-House, demonstrated that DaimlerChrysler considered the Rubicon name as early as 1989. Even discounting that testimony, the Plaintiff did not establish his own extensive advertising or long-term use of its mark so as to trigger presumption of such knowledge. An absence of evidence as to this factor does not tilt this balance in either parties' favor. Id. at 639.
8. Likelihood of Expansion of Product Lines
The last factor considers whether the plaintiff is likely to enter the market in which the defendant currently operates. Both at the hearing and in his motion, Plaintiff made clear that he intended expanding his product lines and his memoranda cites to several patent applications to support his contention. Although the Defendant disputes the value of Plaintiff's assertions, without additional information, the Court finds that this factor weighs slightly in favor of a likelihood of confusion.
B. Irreparable Harm
The Plaintiff did not present any evidence or argument of irreparable harm.
C. Harm to Others
While the Plaintiff did not present evidence of harm if the Court failed to enjoin the Defendant's use of the RUBICON name in conjunction with its 2003 vehicle, the harm to the Defendant is tangible. At the hearing, Adams-House testified that prior to beginning production on August 5, 2002, DaimlerChrysler secured 3,900 pre-orders for this vehicle. Apart from the pre-orders, the advertising monies expended thus far and potential new revised advertisements would run in the millions. The harm to the Defendant by such injunctive relief has been clearly demonstrated.
D. Whether the Public Interest is Served.
The Plaintiff did not address this issue and there is no evidence that the granting of such injunctive relief is in the public interest.
E. Conclusion
The Court is of the view that the Plaintiff has not established a likelihood of success on the merits. This is because Plaintiff's mark has not been demonstrated to be strong, the relatedness of the goods have not been shown to engender confusion between the two products, the marketing channels utilized by the respective parties are different, and the sophistication of the buyers is high. While the similarity between the marks weighs in Plaintiff's favor, such a finding alone is not dispositive, in this instance, of infringement.
There has also been no showing of irreparable harm to the Plaintiff, a necessary corollary to injunctive relief. Finally, the harm to others, namely the Defendant, is significant given the advertising dollars, pre-orders and initiation of production relative to its product. The request for injunctive relief, coming as it did only four (4) days prior to actual production, appears to have been delayed for no viable reason; its timing could be viewed to have placed the Defendant in an extremely difficult and expensive position. No acceptable reason was tendered for almost seven (7) months delay in seeking injunctive relief. Clearly, Plaintiff slept on his "rights" too long.
In sum, upon consideration of the arguments and evidence presented, the Court finds that Plaintiff's Emergency Motion for TRO and Preliminary Injunction (Doc. No. 41) is denied.