262 F. Supp. 3d 621
N.D. Ill.2017Background
- Checker Car Club of America (plaintiff) is a hobby club formed in 1982 that used marks including CHECKER CAR CLUB, CHECKER CAR CLUB OF AMERICA, and CHECKERBOARD NEWS in connection with newsletters, events, and online activities.
- Joseph Fay (defendant) was a former member and past president who created a Facebook group in 2008 with plaintiff’s permission and later was expelled in July 2015.
- Plaintiff launched a new website and Facebook Page (“Checker World”) in June 2015. In July 2015 Fay registered the domain checkercabclub.org and later obtained a federal registration for CHECKER CAB CLUB.
- Plaintiff alleges Fay made false statements to the USPTO to procure the registration, has used the registration and other tactics to disrupt plaintiff’s website/Facebook page, and has posted plaintiff’s newsletters for free.
- Plaintiff moved for a temporary restraining order (TRO) and preliminary injunction seeking to enjoin Fay’s use of marks, disable his domain/Facebook pages, stop trademark/copyright complaints, and stop distribution of plaintiff’s newsletters.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of success on Lanham Act unfair competition (infringement) | Plaintiff: its CHECKER CAR CLUB marks are protectable by long use and consumers will likely be confused by CHECKER CAB CLUB. | Fay: challenges plaintiff’s protectable rights and emphasizes distinctions/ disclaimers and efforts to differentiate his group. | Court: Plaintiff showed a better-than-negligible chance of success on infringement for CHECKER CAR CLUB and CHECKER CAR CLUB OF AMERICA (secondary meaning), but not for CHECKER WORLD. Overall likelihood of confusion found sufficient. |
| Fraudulent procurement of federal trademark registration | Plaintiff: Fay made false material statements to the USPTO (e.g., false date of first use; falsely claimed no prior users) to obtain registration. | Fay: argues Count II fails if plaintiff’s marks are not protectable. | Court: Because plaintiff showed protectable marks, plaintiff has a non-negligible chance of proving fraudulent procurement. |
| Irreparable harm (necessary for TRO) | Plaintiff: harm to goodwill and reputation from infringement and distribution of newsletters; such harm is presumptively irreparable. | Fay: points to plaintiff’s long delay in seeking relief and offers a stipulation temporarily refraining from takedown actions; contends no immediate irreparable harm. | Court: Denied the TRO because plaintiff’s significant delay and Fay’s voluntary cessation undermined the presumption of irreparable harm; insufficient showing as to newsletters. |
| Immediate injunctive relief (TRO vs. preliminary injunction) | Plaintiff: seeks immediate relief to stop ongoing harm and preserve rights pending full adjudication. | Fay: opposes TRO; has made limited stipulations and disputes merits. | Court: TRO denied as an extraordinary remedy; motion for preliminary injunction referred to magistrate judge for fuller record and briefing. |
Key Cases Cited
- Recycled Paper Greetings, Inc. v. Davis, 533 F. Supp. 2d 798 (N.D. Ill. 2008) (TRO is an extraordinary remedy requiring clear showing)
- Goodman v. Illinois Dep’t of Fin. & Prof’l Regulation, 430 F.3d 432 (7th Cir. 2005) (standard for preliminary equitable relief)
- Girl Scouts of Manitou Council, Inc. v. Girl Scouts of U.S. of Am., Inc., 549 F.3d 1079 (7th Cir. 2008) ("better-than-negligible" chance standard for likelihood of success)
- H-D Michigan, Inc. v. Top Quality Serv., Inc., 496 F.3d 755 (7th Cir. 2007) (elements of § 1125(a) claim)
- Platinum Home Mortg. Corp. v. Platinum Fin. Grp. Inc., 149 F.3d 722 (7th Cir. 1998) (secondary meaning factors and protection for unregistered marks)
- Sorensen v. WD-40 Co., 792 F.3d 712 (7th Cir. 2015) (likelihood-of-confusion multi-factor test)
- Slep-Tone Entm’t Corp. v. Elwood Enterprises, Inc., 165 F. Supp. 3d 705 (N.D. Ill. 2015) (elements of fraudulent trademark procurement claim)
- Miyano Mach. USA, Inc. v. Miyano Hitec Mach., Inc., 576 F. Supp. 2d 868 (N.D. Ill. 2008) (presumption of irreparable harm in trademark cases can be rebutted by delay)
- Left Field Media LLC v. City of Chicago, 137 F. Supp. 3d 1127 (N.D. Ill. 2015) (illustrates analysis of preliminary relief prongs)
- Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008) (plaintiffs seeking preliminary relief must show likely irreparable injury)