402 F.Supp.3d 427
N.D. Ill.2019Background
- USA-Halal Chamber of Commerce (USA Halal) is a halal certifier that registered a certification mark — an "H" semi-encircled by a crescent (Crescent Moon Mark) — used in commerce since 1999 and declared incontestable in 2018.
- Best Choice Meats became USA Halal–certified in 2016; its founder, Jihad El-Kareh, designed packaging incorporating a small crescent-with-"H" design.
- USA Halal terminated Best Choice’s certification in September 2018 and demanded cessation of use of USA Halal trademarks; Best Choice represented it was not using those marks but later continued to display a similar crescent‑H mark on packaging (removed from website after suit but remained on packaging).
- USA Halal moved for a temporary restraining order and preliminary injunction to stop Best Choice from using the Crescent Moon Mark or any confusingly similar mark.
- The court found USA Halal likely to succeed on the trademark infringement claim (mark protectable and likelihood of confusion), that USA Halal would suffer irreparable harm (loss of quality control and goodwill), and that the balance of harms and public interest favored an injunction.
- The court enjoined Best Choice from using USA Halal’s Crescent Moon Mark or similar crescent‑H marks on packaging, website, or promotional materials; limited shipping/recall relief was granted, and USA Halal was ordered to post a $95,000 bond.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Protectability of Crescent Moon Mark | Mark is registered, incontestable, and thus protectable | Mark is generic; crescents/H commonly used in halal marks | Held protectable — incontestable registration and examples didn't show genericness |
| Likelihood of consumer confusion | Best Choice’s mark is highly similar, used on same products for same purpose | Marks differ in font/angle; no evidence of actual confusion; innocent adoption | Held likely confusion — similarity, same products/use, registration notice weigh for plaintiff |
| Irreparable harm & adequacy of legal remedy | Loss of ability to assure product quality and damage to goodwill; damages inadequate | Harms speculative; products certified by another entity; delay by USA Halal | Held irreparable harm likely; inability to control quality and reputation is irreparable; plaintiff’s prompt action after discovery OK |
| Balance of harms & public interest | Harm to USA Halal outweighs brief repackaging/shipment burdens; public interest in avoiding consumer confusion | Injunction would cause packaging costs, recall, inventory/spoilage, customer harm | Held balance favors USA Halal; limited injunction terms mitigate burden; public interest supports enforcement of trademark law |
Key Cases Cited
- Goodman v. Ill. Dep’t of Fin. & Prof’l Regulation, 430 F.3d 432 (7th Cir.) (standard that preliminary injunction is an extraordinary remedy)
- Girl Scouts of Manitou Council, Inc. v. Girl Scouts of U.S. of Am., Inc., 549 F.3d 1079 (7th Cir.) (two-step preliminary injunction analysis)
- Packman v. Chi. Tribune Co., 267 F.3d 628 (7th Cir.) (registrations are prima facie evidence of mark validity)
- Iancu v. Brunetti, 139 S. Ct. 2294 (U.S.) (registration provides constructive notice of ownership)
- Re/Max N. Cent., Inc. v. Cook, 272 F.3d 424 (7th Cir.) (damage to goodwill and loss of quality control can be irreparable)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S.) (framework rejecting categorical presumptions in injunction analysis)