MEMORANDUM OPINION AND ORDER
Plаintiff Miyano Machinery U.S.A., Inc. (“MMU”) brings suit against MiyanoHitec Machinery, Inc. (“MiyanoHitec”), Tom Mi-yano and Steven Miyano alleging trademark infringement in violation of the Lan-ham Act, 15 U.S.C. §§ 1114 and 1125(a) as well as cybersquatting, unfair competition, deceptive trade practices, and seeking a declaratory judgment. Soon after filing suit, MMU moved for a preliminary injunction barring MiyanoHitec from using any of MMU’s trademarks or tradenames, specifically the “Miyano” name, the Miya-no plain text mark, and the “winged M” mark. A hearing was held on July eighteenth and twenty-third, 2008. The Plaintiff seeks the injunction prior to the International Machine and Tool Show scheduled to begin September eighth, 2008 in Chicago. For the reasons stated below, this Court grants MMU’s Motion for a Preliminary Injunction.
STATEMENT OF FACTS
The Marks at Issue
The parties here dispute the use of the trade name “Miyano,” the “plain text” and “stylized text” Miyano marks, and the triangle “winged M” mark. MMU argues that they have exclusive rights to use these marks. The triangle “winged M” mark was registered as registration number 1,217,317 on November 23, 1982. Marchionne Testimony at 68:8-11; Pl.Ex. 3. That registration eventually lapsed, and MMU filed to re-register the mark on May 9, 2007, stating a first-use date of January 1, 1970. Pl.Ex. 4. MMU registered the plain text Miyano mark on November 6, 2007, Pl.Ex. 1. The word “Miyano” in the marks has undergone some changes, and the new version is referred to as “stylized.” Marchionne at 69:5-12; 23-25; see also Olczak 89:10-13. The M in the stylized version is a merger of the letter M and the infinity sign. Marchionne at 69:13-15. MMU registered the “stylized” Miyano text mark on March 7, 1989. PI. Ex. 2. Tom Miyano testified that the companies began using the stylized Miyano to differentiate the company name from his family name. T. Miyano 112:1-6.
Defendants have opposed MMU’s 2007 attempt to re-register the triangle “winged M” mark and have filed to cancel the original registration of the mark. Pl.Ex. 29, 33, 39. In addition, Defendants have petitioned the United States Patent and Trademark Office to cancel MMU’s trademark of the non-stylized text Miyano, arguing that Tom Miyano did not give consent to register the mark and that the registration was fraudulently obtained. Pl.Ex. 34.
The History of MMU
MMJ is a wholly-owned subsidiary of Miyano Machinery, Inc., a Japanese company. (“MMJ”). MMU manufactures and sells lathes, including multiaxis machines, and accessories for those machines.
See, e.g.,
Minemura Testimony at 13:20-14:3. The machines cut metal at a high degree of accuracy and can be used in a variety of trades including the orthopedic implant industry. In the 1960’s, prior to the existence of MMU, Dynamic Machine Company became the American national distributor for Miyano Machinery Japan. Marchionne at 36:4-5. At that time, the
Initially some problems occurred with the machines MMJ distributed through Dynamic Tools. Id. at 38:7-9. Specifically, in the 1960’s, the machines had difficulty making heavy cuts. Id. at 38: 8-9. However, over two years of adjustments, the machines became some of the best on the market. Id. at 38:11-39:10. MMU now distributes their lathes throughout the United States, Central and South America, and Canada. Id. at 39:12-16. MMU built a dealer network, good will, and a customer base over their many years’ of operation. Id at 37:25-38:4.
MMU and its products are known as “Miyano” in the machine tool industry. Id. at 50:14-19; Tom Miyano Declaration at ¶ 6. Indeed, they are referred to as such in various machining industry magazines (see Pl.Ex. 8, 11, and 12, such as in an October 2005 issue of TMW Machining World); Marchionne at 1-52:15 (news articles as recent as 2007); see Pl.Ex. 6, 10. MMU refers to themselves as Miyano on their own website and in their advertisements. See Pl.Ex. 13, 67-68. The Miyano brand name is still used on MMU products for sale in North America. Seito Testimony at 48:8-13.
Defendant Tom Miyano was the head of MMU and MMJ for many years in Japan prior to 2004. Marchionne at 62:20-25. Tom Miyano is well-known in the machine tool industry and some of MMU and MMJ’s good will is likely attributable to him. Id. at 63:1-16. Tom Miyano is the named inventor on approximately twenty-three patents in the Machine Tool industry. T. Miyano at 109:9-11.
Tom Miyano left MMJ in 2004 pursuant to an agreement with Japan’s Industrial Revitalization Corp. (“IRC”). Pl.Ex. 46, 63. Pursuant to their agreement, the IRC purchased Tom Miyano’s shares in MMJ, relieving him of approximately one-hundred-twenty million dollars in debt. As a condition of Japan’s relief of this debt, Tom Miyano was required to leave the company and abdicate his role with MMJ. Id.
MMU’s Use of the Triangle “Winged M” Mark
MMU argues that it has used the Miya-no name, text marks, and triangle “winged M” mark since its inception. MMU has used the name Miyano on machines, literature, stationary, checks, packing lists, service reports, warranties, shopping bags, on servicemen’s and distributors’ shirts, and binders and folders given to potential customers. Marchionne 39:20-40:7; Pl.Ex. 9, 16, 44-45, 49, 65, 67. For example, the triangle “winged M” mark is worn on the servicemen’s shirt that has been worn by employees of MMU since 1997 or 2000. Marchionne at 40:11-19; Olczak at 76:15-21. Individuals wearing those shirts with the mark travel to customer locations to repair machines throughout North and South America. Olczak at 77:10-20. Indeed, Derek Olczak (“Olczak”), MMU’s service manager, testified that he wears such a shirt when he performs installations, which are included in the sale of the product. Id. at 93:18-94:2.
The triangle “winged M” mark and the Miyano name also appear on a machine warranties (e.g. a machine warranty issued
The Miyano name and the triangle “winged M” mark also appear on MMU’s website. Minemura at 9:16-10:15. Only dealers and authorized customers have access to the website, which has been active for about three years. Id. at 10:16 — 18; 11:12-14.
As for the machines themselves, Henry Marchionne, corporate advisor to MMU and also a former president of MMU and MMU employee for at least 36 years, testified that MMU stopped putting the triangle “winged M” mark on most of its machines by 1999. Marchionne at 72: 7-14. Olczak confirmed, noting that the mark does not appear on most new machines and that he has not seen it on a new machine in at least seven years. Olczak at 87:11-17. However, Yoshiharu Seito (“Sei-to”), the president of MMJ, testified that the triangle “winged M” has been used on machines in the past five years, and noted that the machines last a long time; so machines displaying the mark are still in operation. ' Seito at 48: 14-23, 62:22-63:2. Indeed, it appears that the triangle “winged M” doеs not appear on machines in MMU’s 2007 product guide. Minemura 23:22-25:10. Similarly, it does not appear on MMU machines in MMU’s 2000, 2004 and 2006 IMTS pamphlets, Minemura at 29:16-30:11; 32:1-10, although the mark appears on a mechtron machine in the 2004 pamphlet. Id. at 30:12-18.
However, the triangle “winged M” mark still appears on at least two series of MMU machines: Ocean and Mectron machines. For example, the triangle “winged M” mark appears on Miyano’s Ocean line of machines and has for at least 10 years. Id. at 18:7-19:15, 19:23-20:2. Such machines have been sold in the United States for at least twenty years, and the last sale of such a machine took place in December of 2007. Id. at 19:19-24, 20:9-12. The mark on the Ocean machines is slightly different than the exact registered mark in that the text is stylized and the word “ocean” also appears. Id. at 22:10-23:6. The triangle “winged M” also appears on Mectron series machines. Id. at 40:12-41:6. Although they are not technically MMU machines, MMU distributed Mec-tron’s machines in the United States, and Akihiko Minemura (“Minemura”), the General Manager of MMU, believed that they had some responsibility for the quality. Id. at 31:8-12; 35:17-24.
Events Leading to this Lawsuit
The year after his father was required to leave MMJ, Defendant Steven Miyano, Tom Miyano’s 29 year-old son, formed Defendant MiyanoHitec in March of 2005, although it was originally incorporated as
Seito met with Tom Miyano and Steven Miyano on November 7, 2006 at Tom Mi-yano’s request. Seito at 43:17-44:7, 44:19-20. At that meeting Tom Miyano asked Seito to give him or sell to him the triangle “winged M” logo. Id. at 45:25-46:9. Tom Miyano gave Seito two business cards for his business then called Hitec Machinery Internаtional, Inc. Id. at 46:16^17:5. Tom and Steven Miyano did not mention the impending name change to MiyanoHitec Machinery. Id. at 47:6-8; S. Miyano 72:25-73:6. MMU rejected Mr. Miyano’s proposal. Seito 47:16-18.
Despite Seito’s lack of agreement, Tom and Steven Miyano began to use the name “MiyanoHitec” and have continued to use the almost identical version of the “winged M” logo on their business cards and web site. See PLEx. 20-27, 53. Their “winged M” logo appears identical to MMU’s “winged M” that appears inside a triangle in its logo. MMU’s counsel sent a cease and desist letter to MiyanoHitec, demanding that they stop using the Miyano name and the “winged M” mark. PLEx. 21. In return, Defendants offered to use a disclaimer, but MMU responded that this was not satisfactory. PLEx. 52. Defendants responded, indicating that they were now doing business as “Tom & Steven Miyano Machinery” and intended to use a disclaimer. Id.
In spite of the fruitless meeting with Seito and the letter from MMU’s counsel, MiyanoHitec began exhibiting at minority trade shows in 2007, attending four shows and using the name and the logo. S. Miyano at 80:11-18; PLEx. 53. MiyanoHi-tec has already attended the minority trade fair in Detroit. S. Miyano at 73:9-10. At that trade fair, they displayed a small piece of paper at their cubicle containing a “disclaimer” indicating that they were not affiliated with MMU. Id. at 73:17-21; PLEx. 53. Steven Miyano asserts that such a disclaimer was used at all the trade shows. S. Miyano at 81:24-82:3. He asserts that he does not want to be associated with MMU/MMJ because the quality of his machine (which is yet to be displayed or sold) is superior. Id. at 82:9-18.
MiyanoHitec has not yet sold any machines, but it plans to bring one for exhibition at the IMTS show. Id. at 75: 15-16, 85:6-11. Steven Miyano hopes to sell five to ten of his multiaxis machines at the IMTS show. Id. at 78:20-25. Each machine costs approximately fifty to seventy thousand dollars. Id. at 79:18. MiyanoHi-tec will also be showing a second single spindle turret machine, for which Steven Miyano hopes to receive 10 to 15 orders. Id. at 79:8-16. Steven Miyano plans to place the “winged M” mark on the machines, and he has already been using the name MiyanoHitec and the mark on the company’s folders, shirts, and website. Id. at 75:20-76:7.
MMU became aware of Tоm and Steven Miyano’s use of the name and mark due to specific instances of confusion between the MMU and the MiyanoHitec. Machine Tool Bearing, one of MMU’s vendors, having seen the MiyanoHitec website, called to ask if it was affiliated with MMU. Mar-chionne at 52:20-53:5. Also, Dunn & Bradstreet called MMU in 2008 to ask if they were affiliated with MiyanoHitec. Id. at 53:7-15. Lastly, the Association for Manufacturing Technology, the entity that manages the machine tool shows and regularly deals with machine tool builders, called MMU to inquire regarding the IMTS show. The caller was looking for MMU on the list of exhibitors and asked if they were MiyanoHitec. Id. at 53:16-54:2. Still, it is worthy of note that buyers of the relevant machines generally do extensive research before purchasing the machines because they are extremely expensive and will be used for a long period of time. Id. at 65:13-67:4; Minemura 27:11-14.
When questioned as to why he should be allowed to use the “winged M” mark, Steven Miyano asserted that it is his “family symbol.” S. Miyano at 81:6-12. Steven Miyano testified that if he cannot use the symbol and his family name, Miyano, his identity will be erased and he will be and forced to turn his back on his ancestors. Id. 84:3-13. When asked if he could sell the same machine under a different name, Steven Miyano, rather than directly responding, repeatedly asserted that he wanted “his name” on the machine, eventually stating that he could “possibly” do so. Id. at 87:9-23. Steven Miyano admitted that he knew MMU held a trademark for the triangle “winged M,” stylized Miya-no, and the name Miyano in the United States, but felt he should be able to use them anyway. Id. at 88:16-89:5, 90:11-91:4.
STANDARD
A party seeking a preliminary injunction must demonstrate: 1) some likelihood of success on the merits; 2) that it has no adequate remedy at law; and 3) that it will suffer .irreparable harm if a preliminary injunction is not granted.
Promatek Indus., Ltd. v. Equitrac Corp.,
DISCUSSION
Likelihood of Success on the Merits
MMU need only demonstrate that it has a “better than negligible” chance of succeeding on the merits for this Court to grant a preliminary injunction.
Id.
at 897
citing Int’l Kennel Club of Chicago, Inc. v. Mighty Star, Inc.,
MMU’s Text Miyano Trademark is Pro-tectible
MMU has registered the MIYANO plain text mark with the United States Patent and Trademark Office (“Trademark Office”), Reg. No. 3,328,718, and in its registration asserted that it has used the mark in commerce since 1975. Pl.Ex. 1. Such registration is prima facie evidence of the registrant’s “exclusive right to use the registered mark in commerce.” 15 U.S.C. § 1115(a). Defendants argue that MMU’s registration invalid, arguing in particular that the registration was fraudulently obtained and that Tom Miyano did not give the required consent for the registration.
Fraud and Abandonment
MiyanoHitec argues that MMU misrepresented its original date of use of the plain text Miyano to the Trademark Office in its application. Specifically, MiyanoHitec argues that MMU is not entitled to the 1975 priority date, its represented date of first use, becausе in 1995, the original registration of the mark was cancelled for failure to file a declaration of continued use. Hitec bears a heavy burden in proving fraud under these circumstances. Indeed, “fraud must be shown by clear and convincing evidence in order to provide a basis for either cancellation or damages,” and it may be found to exist “only where there is a deliberate attempt to mislead the Patent Office into registering the mark.”
Money Store v. Harriscorp Fin., Inc.,
An incorrect date of first use is not a material representation that serves as
In a related argument, Miyano-Hitec asserts that MMU abandoned the plain text mark because it failed to file a timely declaration stating that it continued to use the mark, resulting in the cancellation of its original registration. A mark may be deemed “abandoned” when its use has been discontinued with no intent to resume such use.
Sands, Taylor & Wood Co. v. Quaker Oats, Co.,
Consent
Defendants argue that the registration for the plain text Miyano mark is invalid because MMU failed to get Tom Miyano’s consent to trademark his last name. MiyanoHitec is correct that Section 1052(c) of the Lanham Act requires a registeree to receive “written consent” from an individual in order to register a “name, portrait, or signature identifying a particular living individual.” 15 U.S.C. § 1052(c). Here, however, MMU received Tom Miyano’s consent to register the text Miyano mark. Tom Miyano signed the original trademark applications for the stylized and plain text Miyano marks as well as the Miyano motto.
See
Pl.Ex. 36-38. When the person who’s name appears in the mark signs the application, his consent to registration is presumed. TMEP 5th 1206.03(b)
citing Alford Mfg. Co. v. Alfred Electronics,
MiyanoHitec also argues that MMU’s “Miyano” trade name is not protectible. In general, personal names are not protectible unless the have acquired a secondary meaning.
Peaceable Planet v. Ty, Inc.,
A term has secondary meaning if through its use, the public has come to associate the term with a product or service.
Int’l Kennel Club,
MMU asserts, and their recent trademark application indicates, that it has identified itself using the word “Miyano” since 1975. Pl.Ex. 1. The title appears in large letters on a wide range of materials, including the machines themselves, and also servicemen’s shirts, warranties, invoices, and various promotional items. See, e.g., Pl.Ex. 9. “Miyano” appears in large letters on MMU’s signage at trade shows. Pl.Ex. 67. More importantly, MMU also provided evidence of how consumers use the term, Miyano, indicating, for example, that machines are simply identified as “Miyanо” when they are sold on Ebay. Pl.Ex. 7. In addition, MMU and its products are referred to as “Miyano” advertisements, trade magazines, and articles from other news sources, including U.S. News and World Report. Pl.Ex. 6, 8, 10-12. Indeed, both Marchionne and Tom Miyano himself stated that MMU is known in the machine tool world as “Miyano.” Marchionne at 50:14-19; Tom Miyano Declaration at ¶ 6.
“Winged M” Mark
The “Winged M” Mark was not abandoned
MiyanoHitec next claims that it is entitled to use its “winged M” mark in part because MMU abandoned a similar triangle “winged M” mark. As noted above, a mark is deemed abandoned by its user if the user has discontinued use with the intent not to resume the use.
Sands, Taylor & Wood Co.,
MiyanoHitec argues that even if the marks are occasionally used, they have not been used “in commerce” as required by 15 U.S.C. § 1127. According to Section 1127, “use in commerce” means “bona fide use in the ordinary course of trade, and not made merely to reserve a right in the mark.” 15 U.S.C. § 1127. As such, a mark is used in commerce on goods when “it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale.”
Id.
A mark is used in conjunction with services “when it is used or displayed in the sale or advertising of services.”
Id.
Neither residual or token use nor mere promotional use on goods in a different course of trade constitute proper “use” under the Lanham Act.
Emergency
MMU provided adequate evidence showing that MMU used the triangle “winged M” both on its products and in conjunction with services within the past three years. As noted above, the Ocean and Mectron machines display the “winged M” mark, as do machines refurbished by Miyano. Minemura at 19:23-20:2, 40:12-41:6;
See Emergency One,
Tacking of the “Winged M” Mark
MiyanoHitec next contends that MMU may not “tack” its use of the “winged M” mark with block Miyano lettering to that of the “winged M” logo with stylized Miyano lettering.
3
Under the “tacking” doctrine, “minor changes in a mark which do not change the overall commercial impression created on buyers” do not lead to abandonment of the prior, similar mark.
Sands, Taylor & Wood Co.,
Here, the two marks are for all practical purposes identical except that one includes the word Miyano spelled out in block lettering, and the other included the word Miyano spelled out in stylized lettering. Modernization of a mark or changes in styling generally do not change the commercial impression of the mark.
PARIS GLOVE,
Fraud
MiyanoHitee next asserts that MMU’s trademark on the triangle “winged M” logo should be cancelled as fraudulently procured because MMU applied to renew the triangle “winged M” logo featuring the block lettering word Miyano when it was in fact using the triangle “winged M” logo featuring the stylized word Miyano.
See,
Pl.Ex. 4. In addition to being very difficult to prove, as MiyanoHitec’s own citation states, fraud only occurs when the applicant makes false “material representations of fact” in conjunction with the application.
Torres v. Cantine Torresella,
For the reasons stated above, MMU has presented evidence showing that it has a “better than negligible” chance of proving that it has protectible trademarks in the Miyano trade name, the text Miyano mark, and the triangle “winged M” mark. Therefore, this Court must next determine whether there is a likelihood of confusion between MMU and MiyanoHitee.
Likelihood of Confusion
In determining whether a likelihood of confusion exists between the marks at issue, this Court considers: 1) the similarity of the marks in appearance and suggestion; 2) the similarity of the products bearing the marks; 3) the area and manner of concurrent use; 3) the degree of care likely to be used by consumers; 5) the strength of the mark; 6) any evidence of actual confusion; and 7) the defendant’s intent.
Ty,
Similarity of the Marks
In determining whether two marks are similar, the Court considers what happens in the marketplace rather than simply looking at the two marks side-by-side.
Ty,
MiyanoHitee argues its marks are different from MMU’s largely because they are placed in a different context. That is, MMU places the “winged M” inside a triangle logo whereas MiyanoHitee uses it alone, and neither party is called just “Miyano” but rather they are Miyano Machinery and MiyanoHitec/Tom and Steven Miyano Machinery. This argument fails because “if one word or feature of a
MMU’s triangle “winged M” mark is similar to MiyanoHitec’s “winged M.” Indeed, the “winged M” itself appears to be identical-MiyanoHitee simply does not put it inside a triangle. This similarity of marks would lead the сonsumer to assume that the two companies are affiliated, as it seems incredibly unlikely that two companies operating in the same industry would mark items with identical “winged M’s”, whether inside a triangle or not, if they were not affiliated. More notably, the context surrounding the “winged M” in MMU’s mark does nothing to differentiate it. Indeed, it is merely surrounded by a triangle and the word “Miyano” — a word that, as discussed below, appears prominently in both of the relevant companies’ names.
Compare Sullivan v. CBS Corp.,
Defendant MiyanoHitee/Tom and Steven Miyano Machinery’s trade names are also similar to MMU’s trade name and text Miyano mark. Again, the salient portion of the mark should be given greater weight than surrounding elements.
Ty,
Defendants names are similar to MMU’s. They also contain the words “Miyano” and “Machinery,” merely adding either “Hitéc” or Tom and Steven Miyano’s first names. However, Miyano remains the salient portion of the names, and the addition of the other words surrounding the salient word does not undermine the similarity of the names.
Id.
at 899 (addition of surrounding marks to “Beanie Racers” mark including the word “racers” and NASCAR and corpоrate sponsor marks did not render it dissimilar to Ty’s Beanie Babies mark);
Eli Lilly & Co. v. Natural Answers, Inc.,
Similarity of Products
For the purposes of determining likelihood of confusion, “a closely related product is one which would reasonably be thought by the buying public to come from the same source, or thought to be affiliated with, connected with, or sponsored by the trademark owner.”
Ty,
Area and Manner of Concurrent Use
In assessing the area and manner of concurrent use, this Court considers whether “there is a relationship in use, promotion, distribution, or sales between the goods and services of the parties.
Ty,
Customer’s Degree of Care
Where customers are sophisticated and put a great deal of care into selecting and buying a product, confusion is less likely.
Rust Env’t & Infrastructure, Inc. v. Teunissen,
Although this factor would weigh more heavily in MMU’s favor if its machines were more subject to impulse buy, this Court agrees that initial interest confusion is likely to occur between MMU and MiyanoHitec, as both use the salient Miya-no name and the “winged M” and sell to the same consumers. Even if customers are sophisticated and generally buy only after extensive negotiations, technical sophistication in a particular industry does not amount to trademark sophistication.
CAE, Inc. v. Clean Air Engineering, Inc.,
A website is also a likely forum for initial interest confusion, and notably, MiyanoHitee also posts the allegedly infringing material on its website. It is irrelevant whether this initial confusion is brief or that the confusion is eventually cured if the trademark infringement has already occurred.
Id. citing Forum Corp.,
Strength of Marks
The strength of a mark is determined by its distinctiveness or its “tendency to identify the products sold under the mark as emanating from a particular ... source.”
Eli Lilly,
Arbitrary or fanciful marks are inherently strong and are thus entitled to full protection under trademark law.
Mil-Mar Shoe Co., Inc. v. Shonac Corp.,
Actual Confusion
MMU has cited three incidents of actual confusion: 1) one of MMU’s vendors, having seen the MiyanoHitee website, called to ask if MiyanoHitee was affiliated with MMU; 2) Dunn & Bradstreet called MMU in 2008 to ask whether they were affiliated with MiyanoHitee; and 3) the Association for Manufacturing Technology, a group that managing machine tool shows and as such, regularly deals in the machine tool industry, mistook MMU for MiyanoHitee when reviewing a list of exhibitors for the upcoming IMTS show. Marehionne at 52:20-54:2. Although this evidence of actual confusion is minimal, it weighs slightly in MMU’s favor, and regardless, likelihood of confusion may be proven even where there is no evidence of actual confusion.
CAE,
MiyanoHitec’s Intent
The intent factor looks to whether the defendant sought to “pass off’ its products as having come from the plaintiff.
Packman v. Chicago Tribune Co.,
Tom Miyano has shown a pattern of deceptive behavior toward MMU, and this behavior leads to the conclusion that he was attempting to benefit from passing off his new products as associated with MMU. Based on his agreement with the Japanese government, Tom Miyano was relieved of massive debt but was required to leave MMU. Pl.Ex. 46, 63. However, soon after his required departure, his inexperienced son started a company that intended to make basically the same products. Pl.Ex. 17, 19; S. Miyano at 70:12-16. Tom Miya-no appears to have put the company under his sons’ name to hide his own involvement. Indeed, this conclusion is supported by Steven Miyano’s testimony indicating that his education and experience in the machining industry amounted to a one week design course and general exposure to the industry during his childhood. See S. Miyano at 74:2-6; 77:8-22.
In addition, Tom Miyano also used MMU’s marks despite specifically being denied permission to use them by MMU. Seito 47:16-18. After receiving a cease and desist letter from MMU’s counsel, Mi-yanoHitec began putting a tiny disclaimer on their cubicle at trade shows. S. Miyano at 73:17-21. However, a disclaimer this tiny could only be intended to avoid litigation, not to prevent confusion. In addition, Steven Miyano’s testimony that he actively did not want MiyanoHitec to be associated with MMU and that he wanted to use the Miyano name and symbol only to show respect to his family heritage lacks credibility in light of his acquiescence to the line of questioning regarding his reasons for using the mark. In essence, he simply want to use it and believes he should be able to use it. His testimony actually supports the inference that MiyanoHitec fully intended to associate their products with MMU.
Irreparable Harm
Damages suffered as a result of trademark infringement are presumed to be irreparable because it is nearly impossible to calculate the precise economic harm caused by damage to goodwill and reputation on account of such infringement.
Ty,
MiyanoHitec asserts that here, MMU undercuts its claim of irreparable harm becausе it delayed in seeking a preliminary injunction, arguing that MMU knew that Tom and Steven Miyano planned to enter the machine tool business as early as late 2006 or early 2007. No such delay occurred. Once MMU became aware of Tom and Steven Miyano’s intent to enter the lathe market and use the Miyano name and the “winged M” mark, it began a good faith effort to resolve the matter with Tom and Steven Miyano. See, PI ex. 21, 52. This effort failed, however, and iiUearly 2007, MMU received notice that MiyanoHitec intended to attend the IMTS show and that their use of the name Miyano was causing confusion as to whether they were affiliated with MMU. See Seito at 48:24-25; Marchionne at 53:16-54:2. MMU filed suit on January 24, 2008 and requested a preliminary injunction on February 1, 2008, immediately after learning of the confusion.
Regardless, any conceivable delay is only relevant to the extent that MMU
Balance of Harms
This Court must next compare the harm that will be suffered by MMU if the preliminary injunction is denied to the harm that will be suffered by MiyanoHitec if the preliminary injunction is granted. As noted above, irreparable damage is presumed in cases of trademark infringement.
Ty,
Although he claims he had his experienced father’s help, Steven Miyano, a twenty-nine year old with almost no relevant work or educational experience, claims to have designed MiyanoHitec’s products himself. S. Miyano 74:7-75:12. The Court perceives this situation as reasonably likely to lead to quality problems in at least the early years of the machine’s production. Indeed, even absent Steven Miyano’s lack of experience, new machines produced from new designs are likely to be prone to problems until they are refined through complaints and resultant “tweek-ing.” Marchionne at 38:7-9.
To the contrary, MiyanoHitec will suffer little or no harm if it is enjoined from using the Miyano name and “winged M” symbol. It would simply need to go by a different name and refrain from putting a “winged M” design on its machines, a situation Steven Miyano admitted in his testimony. MiyanoHitec originally went by a differеnt name, Hitec Machinery International, Inc., and it can suffer no harm to its own goodwill as it is a fledgling company. Most notably, it has not sold or taken an order for a single machine. S. Miyano at 75:15-16.
Regardless, this Court discounts any potential harm that could be incurred by MiyanoHitec as a result of the grant of a preliminary injunction because it knew in advance that MMU asserted a right to the marks. In assessing any irreparable harm that MiyanoHitec may suffer, this Court “excludes any burden it voluntarily assumed by proceeding in the face of a known risk.”
Ty,
Although the public interest does not weigh particularly heavily in this case, the public interest is generally served by the enforcement of trademark laws as such laws prevent confusion among and deception of consumers.
Eli Lilly,
For the reasons stated above, this Court finds that MMU has shown an adequate likelihood of success on the merits and risk of irreparable harm, and the balance of harms favors the grant of preliminary injunction. As such, MMU’s Motion for a Preliminary Injunction preventing Miyano-Hitec from using any of MMU’s trademarks, servicemarks, or any other marks likely to cause confusion is granted.
So Ordered.
Exhibit 1 — Plain Text Miyano
[[Image here]]
Exhibit 2 — “Stylized” Miyano
[[Image here]]
Exhibit 3 — Triangle “Winged M” Mark
[[Image here]]
Notes
. MiyanoHitec may now actuаlly be doing business as Tom and Steven Miyano Machinery. S. Miyano at 87:2-5.
. The elements of state and federal law trademark and unfair competition claims are for the most part congruent.
TMT N. Am., Inc. v. Magic Touch GmbH,
. The concept of "tacking” is invoked both in determining the priority of use and and in determining whether a given mark has been abandoned.
See MB,
. MiyanoHitec argues that the "Miyano” mark is inherently weak because it is a surname. However, "names are treated as strong marks upon a showing of secondary meaning.”
E.J. Gallo Winery
v.
Gallo Cattle Co.,