58 F.4th 939
8th Cir.2023Background
- H&R Block, a long-established tax-preparation company, uses the word “Block” and a green square logo across services and owns federal trademark registrations for related marks.
- Square, Inc. rebranded to Block, Inc. in Dec. 2021 and integrated Credit Karma Tax into Cash App as “Cash App Taxes” (accessible only via the Cash App mobile app); Cash App’s logo is a white dollar sign in a rounded green square.
- Fifteen days after the rebrand, H&R Block sued for trademark infringement under the Lanham Act and Missouri law and moved for a preliminary injunction to stop Block, Inc. from using “Block” (and variants) or a green-square mark in connection with Cash App Taxes.
- The district court granted a partial preliminary injunction prohibiting Block, Inc. from using “Block” (or close variants) in connection with Cash App Taxes and from publicly stating an association between Block and Cash App Taxes.
- The Eighth Circuit reversed and vacated the injunction, holding H&R Block failed to show a likelihood of confusion by an appreciable number of ordinary consumers and failed to demonstrate irreparable harm; a dissent would have affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion over use of “Block”/green square with Cash App Taxes | H&R Block: its strong marks and green-square branding create probable consumer confusion with Block, Inc.’s use (overlapping tax services) | Block, Inc.: Cash App Taxes is branded and accessed as Cash App (not corporate Block); differences in access, logos, and disclosures reduce confusion | Reversed: No clear likelihood of confusion — only strength and competitive proximity strongly favored H&R Block; similarity and actual confusion not shown to the degree required |
| Evidence of actual consumer confusion | H&R Block: social media and press showed confusion linking Cash App/Block to H&R Block | Block, Inc.: submitted posts and market evidence showing consumers distinguish the brands; H&R Block produced no identified consumer who used Cash App thinking it was H&R Block | Held: district court clearly erred in finding actual confusion; record showed at most isolated/dubious incidents |
| Irreparable harm (need for injunction) | H&R Block: brand dilution, loss of goodwill and control over public image justify immediate relief | Block, Inc.: harm to its business (would be prevented from operating Cash App Taxes) and monetary remedies can compensate | Reversed: Without a probability of success on the merits, irreparable harm was speculative and not shown |
| Balance/scope of preliminary injunction (stopping use of “Block” with tax services) | H&R Block: limited injunction necessary to prevent imminent consumer confusion and harm | Block, Inc.: injunction would cripple operation of Cash App Taxes and impose disproportionate harm | Reversed: equities and public interest did not support the injunction; injunction vacated (dissent would have upheld it) |
Key Cases Cited
- Dataphase Sys., Inc. v. C L Sys., Inc., 640 F.2d 109 (8th Cir. 1981) (sets the preliminary injunction framework used by the court)
- SquirtCo. v. Seven-Up Co., 628 F.2d 1086 (8th Cir. 1980) (establishes multi-factor likelihood-of-confusion test)
- KP Permanent Make‑Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004) (plaintiff bears burden to show likelihood of confusion)
- Lovely Skin, Inc. v. Ishtar Skin Care Prods., LLC, 745 F.3d 877 (8th Cir. 2014) (plaintiff must show probability, not mere possibility, of success on merits for injunction)
- Gen. Mills, Inc. v. Kellogg Co., 824 F.2d 622 (8th Cir. 1987) (requires confusion among an appreciable number of ordinary consumers)
- Vitek Sys., Inc. v. Abbott Laboratories, 675 F.2d 190 (8th Cir. 1982) (explains substantial-likelihood-of-confusion standard)
- Phyllis Schlafly Revocable Trust v. Cori, 924 F.3d 1004 (8th Cir. 2019) (failure to show irreparable harm warrants denial of preliminary injunction)
- MPAY Inc. v. Erie Custom Comput. Applications, Inc., 970 F.3d 1010 (8th Cir. 2020) (balance of harms analysis when injunction would disable core business)