751 F. Supp. 2d 1132
C.D. Cal.2010Background
- Interplay sues TopWare for trademark infringement under the Lanham Act and unfair competition under Cal. Bus. & Prof. Code § 17200; alleges likelihood of confusion between Battle Chess and TopWare's Battle v. Chess.
- Interplay owns the Battle Chess mark (registration No. 3,519,455) and has marketed Battle Chess for decades, selling thousands of copies and developing an updated version for 2011.
- TopWare launched a website promoting Battle v. Chess (www.battlevschess.com) and has distributed/promoted the game through major retailers, with conflicting release dates and distribution strategies.
- Interplay sent a cease-and-desist letter and engaged in negotiations; TopWare did not oppose at the preliminary hearing and a TRO was issued after posting a $15,000 bond.
- Court granted a preliminary injunction to prevent TopWare from advertising, manufacturing, selling, or distributing Battle v. Chess and from registering confusingly similar marks while the case proceeds.
- Court relied on Sleekcraft factors, finding substantial likelihood of confusion, irreparable harm, and public interest in trademark protection; balance of hardships favored Interplay.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of success on the merits (trademark infringement) | Battle Chess and Battle v. Chess are identical in overall impression and related in source. | TopWare did not oppose and contested arguments were not developed; no credible defense shown at hearing. | Yes; likelihood of confusion established. |
| Irreparable harm without injunctive relief | Injury to Interplay's public image and market position, especially with a new Battle Chess release approaching. | — | Irreparable harm shown; presumption available upon likelihood of success. |
| Balance of hardships | Injury to Interplay outweighs distant potential delay to TopWare; bond mitigates harm to TopWare. | — | Favors Interplay; injunction appropriate. |
| Public interest in enforcing trademark protections | Protects consumers from confusion and protects goodwill in Battle Chess. | — | Public interest favors injunction. |
Key Cases Cited
- Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (core inquiry is likelihood of confusion)
- Sleekcraft Boats, Inc. v. V.I.M. Corp., 599 F.2d 341 (9th Cir. 1979) (eight-factor test for likelihood of confusion)
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (subsets of Sleekcraft factors may suffice)
- Alliance for the Wild Rockies v. Cottrell, 622 F.3d 1045 (9th Cir. 2010) (serious questions on merits can support relief when balance tips)
- Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (9th Cir. 2010) (proximity of factors and strength of mark weigh in likelihood of confusion)
- In re U.S. Philips Corp. v. KBC Bank N.V., 590 F.3d 1091 (9th Cir. 2010) (injunction standards guiding provisional relief)
- Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (U.S. 2008) (establishes standard for preliminary injunctions)
- Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394 (9th Cir. 1997) (First Amendment considerations do not bar trademark relief in this context)