324 F. Supp. 3d 569
D. Maryland2018Background
- Mason-Dixon Polling & Strategic Consulting, Inc. (registered MASON-DIXON mark) is a Maryland-origin polling/consulting firm using the mark since the 1980s; registered initially in 2005, registration lapsed, then re-registered in 2018.
- Mayson-Dixon Strategic Consulting, LLC (MAYSON-DIXON) was founded in Maryland in 2015 and uses a trade name/service mark nearly identical to MASON-DIXON for political consulting services.
- Mason-Dixon alleges senior common-law and registered rights; Mayson claims Mason-Dixon fraudulently obtained registration and abandoned the mark for consulting services.
- Mason-Dixon sued (counterclaim) for trademark infringement, unfair competition, and cyberpiracy; moved for a preliminary injunction to stop Mayson’s use of confusingly similar names/marks.
- The district court held a hearing and granted the preliminary injunction, enjoining Mayson from using confusingly similar names/marks and requiring a $10,000 bond.
Issues
| Issue | Plaintiff's Argument (Mayson) | Defendant's Argument (Mason-Dixon) | Held |
|---|---|---|---|
| Ownership/validity of MASON-DIXON mark | Registration is void for fraud; Mason-Dixon misrepresented first use and exclusivity | Mason-Dixon is senior user since 1983, re-registered in 2018; no fraudulent intent or material misstatement | Mason-Dixon owns a valid registered mark and senior common-law rights; no fraud found |
| Abandonment of mark | Mason-Dixon abandoned the mark by licensing/letting a spin-off use it and by inactivity in consulting | Use by related, controlled entities and continued use by Mason-Dixon negates abandonment | No abandonment; related-party use and continuous use preserve rights |
| Likelihood of confusion | Mayson implied no likelihood due to distinctiveness of parties/clients | Marks are virtually identical, identical services, similar advertising and domains, evidence of intent to cause confusion | Court found likelihood of confusion and trademark infringement on preliminary record |
| Irreparable harm / balance / public interest | Delay in seeking relief and election timing reduce irreparable harm; injunction would harm Mayson’s business | Trademark infringement harms Mason-Dixon’s reputation and goodwill; public interest favors protecting marks | Court applied presumption of irreparable harm, found balance and public interest favor Mason-Dixon; injunction granted |
Key Cases Cited
- Winter v. Natural Res. Def. Council, 555 U.S. 7 (2008) (standard for preliminary injunctions)
- Rosetta Stone Ltd. v. Google, 676 F.3d 144 (4th Cir. 2012) (elements of trademark infringement claim)
- Emergency One, Inc. v. American Fire Eagle Engine Co., 332 F.3d 264 (4th Cir. 2003) (priority by first actual commercial use governs common-law rights)
- George & Co. LLC v. Imagination Entm't Ltd., 575 F.3d 383 (4th Cir. 2009) (analysis of mark strength and likelihood-of-confusion factors)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (limits on automatic injunctions; relevance to irreparable-harm presumption)
- San Francisco Arts & Athletics, Inc. v. United States Olympic Comm., 483 U.S. 522 (1987) (public interest in enforcing trademark rights)