It's a 10, Inc. v. Beauty Elite Group, Inc.
932 F. Supp. 2d 1325
S.D. Fla.2013Background
- It’s a 10, Inc. sued Beauty Elite Group, Inc. and Basim Shami for multiple trademark, trade dress, dilution, false designation of origin, unfair competition, and related state-law claims.
- Plaintiff alleges Defendants sold infringing product labeled and designed to mimic Plaintiff’s marks and trade dress.
- Plaintiff seeks a four-part preliminary injunction: halt manufacture/sale of the infringing product, stop using certain labels including Miracle and TO’, preserve evidence, and produce records.
- Defendants contend certain issues are moot as BEG redesigned its product and removed infringing elements, and that there is no personal jurisdiction over Mr. Shami.
- The Court preliminarily analyzes the likelihood of confusion, irreparable harm, balance of harms, and public interest, and addresses both old and new label designs.
- The Court ultimately grants relief only as to BEG’s old-label product and denies relief as to the new label, spoliation, and most production-related requests.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion for old label | Plaintiff’s marks are strong/suggestive and infringing label confuses customers | BEG’s old label does not create confusion and is distinct | Substantial likelihood of confusion found for old label |
| Irreparable harm for old label | Continued confusion causes irreparable harm to Plaintiff’s brand | Harm mitigated since old label destroyed | Irreparable harm established for old label |
| Balance of harms/public interest for old label | Injunctive relief protects public from confusion | Granting injunction imposes hardship on BEG | Balance tips in Plaintiff’s favor; public interest served by preventing confusion |
| New label likelihood of confusion and irreparable harm | New label continues risk of confusion | New label design avoids confusion | No irreparable harm shown for new label; injunction denied as to new label |
| Personal jurisdiction over Shami | Court has jurisdiction over all defendants | No evidence of Shami’s personal presence or actions in Florida | Motion denied as to Shami for lack of personal jurisdiction |
Key Cases Cited
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S. 1992) (strength of mark and likelihood of confusion factors; protectable marks)
- Frehling Enters. v. Int’l Select Group, Inc., 192 F.3d 1330 (11th Cir. 1999) (seven-factor test for likelihood of confusion; overall balance governs)
- John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983) (duty to avoid confusion by second user of a mark)
- E. Remy Martin & Co. v. Shaw-Ross Int’l Imports, 756 F.2d 1525 (11th Cir. 1985) (strong likelihood of confusion can show irreparable harm)
- Angel Flight of Ga. v. Angel Flight Am., Inc., 522 F.3d 1200 (11th Cir. 2008) (public interest in avoiding consumer confusion)
- Davidoff & Cie, S.A. v. PLD Int’l Corp., 263 F.3d 1297 (11th Cir. 2001) (injunction not adverse to public unless confusion persists)
- Lone Star Steakhouse & Saloon v. Longhorn Steaks, 106 F.3d 355 (11th Cir. 1997) (trademark rights and confusion standards)