Hoop Culture, Inc. v. Gap, Inc.
122 F. Supp. 3d 1338
M.D. Fla.2015Background
- Hoop Culture owns the federally registered EAT ... SLEEP ... BALL® mark and targets boys aged 13–18; its clothing is sold online and through pop-ups/retailers, generating about 30% of its sales from this mark.
- Gap, Inc. (Old Navy) designed and sold t-shirts bearing the phrase EAT SLEEP BALL in April 2014; approximately 115,000 shirts were produced with about 36,000 remaining in inventory, with no current online restock planned.
- Hoop Culture alleges Gap’s shirts infringe its mark under §32(1) and falsely designate origin under §43(a); Hoop Culture claims potential consumer confusion.
- Evidence showed Hoop Culture’s shirts are higher quality and carry its brand name, while Gap’s shirts use a boomerang logo; there is some testimony of limited confusion but largely clear consumer attribution to Old Navy.
- An evidentiary hearing was held on August 10, 2015; the court denied Hoop Culture’s motion for a preliminary injunction and denied the motion for expedited discovery as moot.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of success on the merits | Hoop Culture owns a valid, protectable mark; Gap used the mark in commerce causing confusion. | Hoop Culture's mark lacks secondary meaning and Gap’s use does not confuse consumers. | Not substantially likely to succeed on the merits. |
| Irreparable injury | Infringement causes irreparable harm to reputation and goodwill. | Injuries are compensable by damages; no irreparable harm shown. | No irreparable injury shown; injunction denied on this basis. |
| Public interest/balance of equities (implied) | Preliminary relief would serve public interest in preventing consumer confusion. | Public interest weighed against restraining ordinary commerce and showing no substantial likelihood of confusion. | Not addressed as prongs 1 and 2 failed; injunction denied. |
Key Cases Cited
- N. Am. Med. Corp. v. Amom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008) (test for likelihood of confusion and infringement prerequisites)
- McDonald’s Corp. v. Robertson, 147 F.3d 1301 (11th Cir. 1998) (preliminary injunction framework with four-factor test)
- Vision Ctr. v. Opticks, Inc., 596 F.2d 111 (5th Cir. 1979) (definition and protection scope of trademarks, including secondary meaning)
- Bonner v. City of Prichard, Ala., 661 F.2d 1206 (11th Cir. 1981) (en banc adoption of pre-1981 Fifth Circuit decisions)