Colors+ v. Colors+ Counseling, LLC, 782 F.Supp.3d 579

Background

Colors+ is an Ohio 501(c)(3) youth center; Kameron and Lennon Pepera co‑founded Colors+ and later formed for‑profit Colors+ Counseling, LLC (Counseling). The two entities shared offices and branding until a July 2024 split.
Lennon created an original logo in Jan 2018; the Colors+ Board approved an updated logo in Jan 2021 that added a Progress Flag element (the disputed “Mark”).
Kameron (on behalf of Counseling) filed a USPTO application on March 24, 2021 and received federal registration (issued Feb 22, 2022) listing Counseling as owner; Colors+ contends it first used the updated Mark in commerce on Jan 11, 2021 and therefore is the senior user.
After Kameron’s termination in July 2024, Lennon filed online complaints (including a Wix trademark complaint) that temporarily disabled Colors+’s site; Counseling expanded services using the Mark, and Colors+ alleges community and donor confusion.
Colors+ sued and moved for a preliminary injunction seeking, inter alia, to enjoin Counseling from using the registered Mark, to cancel Counseling’s registration, and to bar use of the name “Colors+” by Counseling.
After an evidentiary hearing, the court found Colors+ more credible on key factual disputes, concluded Colors+ likely is the senior user of the specific designed Mark, found a likelihood of consumer confusion, and granted limited preliminary injunctive relief.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Who owns the updated, designed Colors+ Mark (ownership/prior use)?	Colors+ says it first used the updated Mark in commerce (Jan 11, 2021) and Board understood nonprofit owned it.	Counseling relies on federal registration (prima facie ownership) and contends related‑company control makes any prior use inure to Counseling.	Court found Colors+ more credible on Jan 2021 Board events, held Colors+ showed strong likelihood of prior use and ownership of the specific designed Mark.
Whether Counseling’s continued use of the Mark is likely to cause confusion under Lanham Act	Colors+ points to overlapping services, identical/similar marks, social media and partner confusion, and direct competition after the split.	Counseling says historical shared use and organizational overlap explain any confusion; argues acquiescence/laches defenses.	Court applied Frisch factors, found strength, relatedness, similarity, evidence of confusion, and expansion favor Colors+; likelihood of confusion established.
Whether equitable defenses (laches, acquiescence, related‑companies) bar injunctive relief	Colors+ asserts laches doesn't bar injunction and denies acquiescence; related‑companies doctrine doesn't apply because Board controlled use.	Defendants argue laches/acquiescence and related‑companies should preclude relief or give Counseling rights.	Court rejected laches as defense to injunction, found acquiescence inapplicable (and barred by unclean‑hands), and held related‑companies doctrine inapplicable on these facts.
Scope of relief: may court enjoin use of the registered Mark, the name “Colors+,” require social media reinstatement, and bar accepting donations?	Colors+ seeks broad relief including enjoining use of the registration, any use of “Colors+” by Counseling, withdrawal of complaints, and assistance restoring web/social accounts.	Defendants opposed broad prohibitions and said social complaints largely withdrawn.	Court invalidated Counseling’s federal registration for the specific designed Mark and preliminarily enjoined Counseling from using that Mark (and close variations) and from filing social‑media trademark complaints; court declined to enjoin use of the bare name “Colors+” or bar pursuit of “Colors+ Counseling” name at this stage and denied other overbroad remedies.

Key Cases Cited

National Credit Union Administration Board v. Jurcevic, 867 F.3d 616 (6th Cir.) (standard for preliminary injunction factors)
Certified Restoration Dry Cleaning Network, L.L.C. v. Tenke Corp., 511 F.3d 535 (6th Cir.) (preliminary injunction framework in Sixth Circuit)
Audi AG v. D’Amato, 469 F.3d 534 (6th Cir.) (injunctive relief as preferred remedy in trademark cases)
Allard Enterprises, Inc. v. Advanced Programming Resources, Inc., 146 F.3d 350 (6th Cir.) (ownership determined by first use in commerce)
Estate of Coll‑Monge v. Inner Peace Movement, 524 F.3d 1341 (D.C. Cir.) (related‑companies doctrine analysis)
CFE Racing Products, Inc. v. BMF Wheels, Inc., 793 F.3d 571 (6th Cir.) (tailoring injunctions to restore control of mark and prevent circumvention)
Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275 (6th Cir.) (value of actual confusion evidence)