Guru Teg Holding, Inc. v. Maharaja Farmers Market, Inc.
2:22-cv-01375
E.D.N.YAug 2, 2022Background
- Guru Teg Holding, Inc. (plaintiff) acquired federal trademarks for MAHARAJA and a crown design (assignments recorded Jan. 20, 2022, effective nunc pro tunc July 15, 2015) and operates multiple Maharaja grocery stores in the NYC area.
- Defendants (Sajid Sohail and Statewide) opened a nearby store in Jan. 2022 using the name "Maharaja Farmers Market," filed related trademark applications, and used signage with a nine‑point crown similar to plaintiff’s Crown Mark.
- Plaintiff sent cease‑and‑desist letters, attempted negotiations, then sued on March 12, 2022 under the Lanham Act and New York law and moved for a preliminary injunction.
- Evidence at the PI hearing showed actual consumer confusion and similar/infringing trade dress (nearly identical crown, fonts, banner), plus negative reviews about defendants’ quality.
- The court found plaintiff pursued its rights promptly, the marks are not generic, the assignments conferred standing, and multiple Polaroid factors supported a likelihood of confusion.
- The court granted a preliminary injunction requiring defendants to stop using the Marks within one week, conditioned on plaintiff posting a $10,000 bond within three days.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Delay / irreparable‑harm presumption | Acted promptly: cease‑and‑desist, recorded assignments, sued within weeks of store opening | Plaintiff delayed; no urgency | Court: plaintiff acted diligently; delay did not negate presumption of irreparable harm |
| Validity / genericism of "maharaja" | Registered marks presumptively valid and arbitrary for grocery use | "Maharaja" is a common Indian term and thus generic | Court: not generic; mark is arbitrary/distinctive and PTO registration stands |
| Assignment validity / standing | Written assignments (nunc pro tunc) transferred rights pre‑suit; recorded with USPTO | Assignment timing/scope suspect; possible abandonment | Court: assignment valid, no evidence of abandonment; plaintiff has standing |
| Likelihood of confusion (Polaroid) | Strength, near‑identical crown and word, same trade/services, actual confusion, bad faith favor plaintiff | Term common; no evidence of confusion; acted in good faith | Court: likelihood of confusion found; multiple Polaroid factors (similarity, proximity, actual confusion, bad faith) weigh for plaintiff |
| Public interest / balance of hardships | Injunction prevents public confusion and protects goodwill | Injunction imposes signage and advertising costs on defendants | Court: public interest favors preventing confusion; hardships tip to plaintiff; bond set at $10,000 |
Key Cases Cited
- Red Earth LLC v. United States, 657 F.3d 138 (2d Cir. 2011) (preliminary injunction standard)
- Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003) (Lanham Act: protectability and likelihood of confusion)
- Am. Cyanamid Co. v. Campagna Per Le Farmacie in Italia, S.p.A., 847 F.2d 53 (2d Cir. 1988) (irreparable harm in trademark context)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (likelihood‑of‑confusion factors)
- Tough Traveler, Ltd. v. Outbound Prods., 60 F.3d 964 (2d Cir. 1995) (delay can defeat PI relief)
- Otokoyama Co. v. Wine of Japan Imp., Inc., 175 F.3d 266 (2d Cir. 1999) (foreign‑equivalents/genericism analysis)
- E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (9th Cir. 1992) (validity of assignment with license‑back arrangement)