`
`IN THE UNITED STATES COURT FOR THE DISTRICT OF UTAH
`NORTHERN DIVISION
`
`HARRIS RESEARCH, INC.,
`Plaintiff,
`
`vs.
`
`MEMORANDUM DECISION AND
`ORDER GRANTING PLAINTIFF’S
`MOTION FOR PRELIMINARY
`INJUNCTION AND PRELIMINARY
`INJUNCTION
`
`JEFF LYDON; LISA SMITH; and JOHN
`DOES I - X,
`Defendants.
`
`Case No. 1:06-CV-136 TS
`
`I. INTRODUCTION
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`This matter came before this court upon Plaintiff’s Motion for Preliminary Injunction.
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` Plaintiff brings this action alleging trademark infringement and trademark dilution pursuant
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`to 15 U.S.C. § 1114 and §1125. Plaintiff now seeks to enjoin Defendant’s use of their
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`mark pending resolution on the merits.
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`The Court finds that Plaintiff has shown all elements necessary to the issuance of
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`a preliminary injunction and will issue the preliminary injunction as follows.
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`1
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 2 of 13
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`II. FINDINGS OF FACT
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`Defendants were personally served with the Complaint on November 5, 2006.1
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`They have not filed an answer. Plaintiff served its Motion for Preliminary Injunction to
`2
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`Defendants at the same address where they were personally served with the Complaint.3
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`Defendants have failed to file any response to Plaintiff’s Motion for Preliminary Injunction.
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`Plaintiff supports its Motion for a Preliminary Injunction with affidavits and exhibits
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`that show the following:
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`Plaintiff is the owner of the word mark “Chem-Dry,” Registration Nos. 1119887 and
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`1357192 (the “Trademark”). There are currently over 4,000 Chem-Dry franchises
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`throughout the world, with 2,600 locations throughout the United States.
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`According to brand research conducted by Brand Force Inc. and Dan Jones &
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`Associates, Inc. in 2001, "Chem-Dry is perceived to be a professional, well-respected
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`person in whom one can place a great deal of confidence and trust." According to the
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`brand research, aided awareness of the Chem-Dry brand among current customers is
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`100%, with total unaided awareness of the Chem-Dry brand being the highest in the
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`industry.
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`1
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`See Docket Nos. 4, 5 (returns of service).
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`2
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`Plaintiff has not yet moved for a default.
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`3
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`See Docket No. 6, at 2, and No. 7, at 11 (certificates of service).
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`2
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 3 of 13
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`The Plaintiff and its licensees and franchisees spent more than an estimated
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`$22,000,000 during 2006 in advertising and promoting the Chem-Dry brand and related
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`products and services.
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`In addition to the carpet-cleaning franchises, the Chem-Dry brand is used on,
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`among other things, the following products and services: (a) national accounts for carpet
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`and upholstery cleaning services; (b) carpet protection products; (c) odor removers,
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`disinfectants and stain removers; (d) commercial carpet cleaning equipment and
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`accessories; and (e) a wide variety of home care products.
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`Millions of customers have used Chem-Dry carpet cleaning services and purchased
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`Chem-Dry products.
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`The Defendants have offered for sale and/or distribution t-shirts and stickers
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`containing a “Chem-Who?” logo (the “Infringing Mark”). Distribution of the Infringing Mark
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`has occurred by distributing t-shirts at an industry trade show.
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`
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`The color and stylized design of the Infringing Mark are virtually identical to the
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`Trademark; the font of the letters is identical, the colors are the same, and the use of the
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`“swoosh” is identical.
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`III. CONCLUSIONS OF LAW
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`A. Standard for Injunction
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`Under the Lanham Act, a court may grant an injunction “according to the
`principles of equity and upon such terms as the court may deem
`reasonable.” 15 U.S.C. § 1116(a). A party seeking injunctive relief must
`establish four factors:
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`(1) it will suffer irreparable harm if the injunction is not granted,
`(2) its threatened injury outweighs the harm caused to the
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`3
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 4 of 13
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`opposing party as a result of the injunction, (3) the injunction
`is not adverse to the public interest, and (4) it has a substantial
`likelihood of success on the merits of the case.
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`“[B]ecause a preliminary injunction is an extraordinary remedy, the right to
`relief must be clear and unequivocal.”
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`* * *
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`“In defining the contours of irreparable harm, case law indicates that the
`injury must be both certain and great, and that it must not be merely serious
`or substantial.”4
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`B. Likelihood of Success on Merits
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`1.
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`Trademark Dilution by Tarnishment
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`In addition to seeking an injunction for the alleged trademark violation, Plaintiff
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`seeks an injunction under the Federal Trademark Dilution Act (FTDA).5
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`“Tarnishment occurs when the plaintiff's trademark is likened to products of low
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`quality, or is portrayed in a negative context. When the association is made through
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`harmless or clean puns and parodies, however, tarnishment is unlikely.6
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`A claim for an injunction based on trademark dilution by tarnishment is brought
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`under section 1125, which provides:
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`Lorillard Tobacco Co. v. Engida, 2007 WL 39207, *2 (10th Cir. 2007) (quoting
`4
`Dominion Video Satellite, Inc. v. Echostar Satellite Corp., 356 F.3d 1256, 1260-63 (10th
`Cir. 2004)).
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`5
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`15 U.S.C. § 1125(c).
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`Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F.Supp.2d 495, 503
`6
`(E.D. Va. 2006) (quoting Jordache Enters. v. Hogg Wyld, Ltd., 625 F.Supp. 48, 57 (D.
`N.M.1985), aff'd, 828 F.2d 1482 (10th Cir.1987)). The Court notes that Jordache, also
`involved a claim for dilution by tarnishment under New Mexico law.
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`4
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`
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 5 of 13
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`Subject to the principles of equity, the owner of a famous mark that is
`distinctive, inherently or through acquired distinctiveness, shall be entitled to
`an injunction against another person who, at any time after the owner’s mark
`has become famous, commences use of a mark or trade name in commerce
`that is likely to cause dilution by blurring or dilution by tarnishment of the
`famous mark, regardless of the presence or absence of actual or likely
`confusion, of competition, or of actual economic injury.7
`
`The term “dilution” means the lessening of the capacity of a famous mark to
`identify and distinguish goods or services, regardless of the presence or
`absence of-
`(1) competition between the owner of the famous mark and
`other parties, or
`(2) likelihood of confusion, mistake, or deception.8
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`“[A]ctual dilution must be established . . . “9
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` A claim of trademark dilution rests on four factors: (1) famousness of the mark, (2)
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`use of the mark in commerce, (3) use of the mark after it became famous, and (4) dilution
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`of the quality of the mark.
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`10
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` “Tarnishment results when one party uses another’s mark in
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`a manner that tarnishes or appropriates the goodwill and reputation associated with the
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`mark.”11
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`a.
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`Famousness of the Trademark
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`As set forth in 15 U.S.C. § 1125(c)(2)(A):
`a mark is famous if it is widely recognized by the general consuming public
`of the United States as a designation of source of the goods or services of
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`7
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`15 U.S.C.A. § 1125(c)(1).
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`8
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`15 U.S.C. § 1127.
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`9
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` Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 433 (2003).
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`10
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`15 U.S.C. § 1125(c)(1).
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`11
`
`Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 670 (5th Cir.
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`2000).
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`5
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`
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 6 of 13
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`the mark's owner. In determining whether a mark possesses the requisite
`degree of recognition, the court may consider all relevant factors, including
`the following:
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`(i) The duration, extent, and geographic reach of advertising and publicity of
`the mark, whether advertised or publicized by the owner or third parties.
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`(ii) The amount, volume, and geographic extent of sales of goods or services
`offered under the mark.
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`(iii) The extent of actual recognition of the mark.
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`(iv) Whether the mark was registered . . .
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`Plaintiff has shown that the Trademark is widely recognized by the general public
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`in connection with carpet cleaning services. The Plaintiff has been using the Trademark
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`since 1977, and it has been registered since June 12, 1979. The Trademark is used in
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`advertising throughout the world, and there are currently nearly 4,150 Chem-Dry
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`franchisees. Plaintiff has shown that it is a famous mark.
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`b.
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`Use of the Mark in Commerce
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`Plaintiff has shown that the Defendants have used the Infringing Mark in connection
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`with the sale and distribution of t-shirts at an industry trade show. Accordingly, the
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`Infringing Mark has been used in commerce.
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`c.
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`Use of the Mark After It Became Famous
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`The Trademark was first used in 1977 and was registered in 1979. The Defendants'
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`conduct commenced in 2006, by which time the Trademark was in use worldwide.
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`d.
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`Dilution by tarnishment
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`6
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 7 of 13
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`“‘[D]ilution by tarnishment’ is association arising from the similarity between a mark
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`or trade name and a famous mark that harms the reputation of the famous mark.” In this
`12
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`case the Infringing Mark of Chem-Who? harms the reputation of the Trademark by creating
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`a negative association that constitutes tarnishment. Furthermore, the Infringing Mark
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`contains the words, “Stickin It To The Little Guy,” which, by use of the words “Chem-Who?”
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`and a style, font and trade dress that are identical to the Trademark, are attributed to
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`Chem-Dry. Unlike cases involving permissible parodies, this case involves products and
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`services that are similar and are in competition.
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`Plaintiffs have shown that they are likely to prevail on the merits of their trademark
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`dilution by tarnishment claim.
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`2.
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`Trademark Infringement
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`“The unauthorized use of ‘any reproduction, counterfeit, copy, or colorable
`imitation’ of a registered trademark in a way that ‘is likely to cause confusion’
`in the marketplace concerning the source of the different products
`constitutes trademark infringement under the Lanham Act.” The party
`alleging infringement has the burden of proving likelihood of confusion.
` 13
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`The central inquiry in a trademark infringement case is the likelihood of
`confusion between a defendant and plaintiff's marks. The Tenth Circuit
`Court of Appeals has identified a list of factors to consider in making this
`determination:
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`(a) the degree of similarity between the marks;
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`12
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`15 U.S.C. § 1125(c)(2)(C).
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`Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1238 (10th Cir. 2006) (quoting
`13
`Universal Money Ctrs., Inc. v. AT & T Co., 22 F.3d 1527, 1529 (10th Cir.1994) and
`citing 15 U.S.C. § 1114(1)(a)-(b)).
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`7
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 8 of 13
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`(b) the intent of the alleged infringer in adopting its mark;
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`(c) evidence of actual confusion;
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`(d) the relation in use and the manner of marketing between
`the goods or services marketed by the competing parties;
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`(e) the degree of care likely to be exercised by purchasers; and
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`(f) the strength or weakness of the marks.14
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`“[E]ven if . . . one factor does weigh in favor of Defendants, one factor alone is not
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`dispositive of the likelihood of confusion.”15
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`a.
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`Similarity of the Marks
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`The marks at issue in this case are virtually identical in design, the stylized lettering
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`in the words are the same, there are only three letters that are different in the marks, and
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`the graphics are virtually identical. This high degree of similarity weighs heavily in favor
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`of infringement.
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`b.
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`Intent of the Alleged Infringer
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`Evidence on the Defendants’ intent is the negative connotation of their use.
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`Substitution of the word “who” for “dry” and the use of the phrase “sticking it to the little
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`guy.” This indicates that Defendants chose to use the very similar mark based on a desire
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`Low Book Sales and Leasing, Inc. v. Below Book Motors, Inc., 2007 WL
`14
`389229, *1 (D. Utah 2007) (quoting Team Tires Plus, LTD. v. Tires Plus, Inc., 394 F.3d
`831, 832 (10th Cir. 2005)).
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`15
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`Australian Gold, 436 F.3d at 1240.
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`8
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 9 of 13
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`to associate themselves with the famousness of Plaintiff’s mark. This factor weighs in favor
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`of infringement.
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`c.
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`Evidence of Actual Confusion
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`Plaintiff has presented no evidence of actual confusion. However, such evidence
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`
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`is not necessary to establish infringement. 16
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`d.
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`Relation in Use and Manner of Marketing
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`“The greater the similarity between the products and services, the greater the
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`likelihood of confusion.” Plaintiff’s evidence shows a similarity of products—carpet
`17
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`cleaning tools and products and services. The products and services offered by
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`Defendants are carpet cleaning-related. This factor weighs in favor of infringement.
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`e.
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`Degree of Care Likely to be Exercised by Purchasers
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`There is no evidence on the degree of care with which the public will choose the
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`parties’ respective products in the marketplace.
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`
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`f.
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`Strength of the Infringed Mark
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`To determine the relative strength of plaintiff's trademark, we place the mark
`in one of five categories of increasing distinctiveness and strength: (1)
`generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.
`We have defined these terms as follows:
`A generic term is a term used to describe the relevant type or
`class of goods. It is the weakest mark and cannot become a
`trademark under any circumstances. A descriptive term
`describes a characteristic of a product or service.... The third,
`and stronger, mark is the suggestive mark, which suggests
`rather than describes a characteristic of the product and
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`16
`
`Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550, 556 (10th Cir. 1998).
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`17
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`Id. at 557.
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`9
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 10 of 13
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`requires the consumer to use imagination and perception to
`determine the product's nature. Finally, the arbitrary or fanciful
`mark is the strongest mark. 18
`It appears that the Trademark is suggestive. Plaintiff’s evidence shows that the
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`Trademark is recognized worldwide, not only within the carpet cleaning industry, but also
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`among consumers.
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`19
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` For the purposes of this injunction proceeding, Plaintiff has shown
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`that it is strong. Therefore this factor weighs heavily in favor of a finding of infringement.
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`g.
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`Degree to Which the Products or Services Compete
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`There is direct competition between the Plaintiff and the Defendants in the carpet
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`cleaning industry. Both the Plaintiff and the Defendants manufacture and distribute carpet
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`cleaning tools. The companies operate in the same sphere and both appeared at the
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`same industry trade show in September of 2006.20
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`h.
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`Existence of an Intent to Trade on the Trademark’s Goodwill
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`The Defendants’ use of the Trademark at an industry trade show establishes their
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`intent to trade upon its famousness and goodwill for their own commercial purposes.
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`i.
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`Evidence of Actual Confusion
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`“Although evidence of actual confusion is useful and persuasive in typical
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`infringement cases, it is important to remember ‘it is the likelihood of confusion that serves
`
`Id. at 556 (quoting First Sav. Bank v. First Bank System, Inc., 101 F.3d 645,
`18
`654-55 (10th Cir. 1996)) (other citations omitted).
`
`19
`
`See Jensen Aff.at ¶¶ 5-10.
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`20
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`Rodeback Aff. at ¶ 2.
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`10
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 11 of 13
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`as a test for infringement, not actual confusion.’” The likelihood of confusion can be
`21
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`ascertained from the Infringing Mark itself; the stylized components of the mark are
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`identical, and the only difference is in three letters of the word portion of the mark.22
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`Plaintiff has shown the likelihood of confusion and therefore, has shown it is likely to prevail
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`on the merits of its infringement claim.
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`C. Irreparable Harm.
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`The “Supreme Court recently disapproved the use of categorical rules in
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`connection with injunctive relief in intellectual property actions”
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`23
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` and Plaintiff must show
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`irreparable injury to support a preliminary injunction. The Court finds Plaintiff has met
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`its burden of showing irreparable injury by showing likelihood of confusion and that its
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`trademark is being diluted and that the reputation of its mark is being harmed. Plaintiff
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`has expended substantial amounts of time, money, and resources in establishing the
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`fame and quality of the Trademark. It is recognized nationwide and represents goodwill
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`American Dairy Queen Corp. v. New Line Productions, 35 F.Supp.2d 727, 732
`21
`(D. Minn. 1998) (quoting Aveda Corp. v. Evita Marketing, Inc., 706 F.Supp. 1419, 1430
`(D. Minn. 1989)) (emphasis in original).
`
`See Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 973 (10th Cir.
`22
`2002) (“One who adopts a mark similar to another already established in the
`marketplace does so at his peril, because the court presumes that he can accomplish
`his purpose: that is, that the public will be deceived. All doubts must be resolved
`against him.”(quoting Beer Nuts Inc. v. Clover Club Foods Co., 711 F.2d 934, 941 (10th
`Cir. 1983)).
`
`Lorillard Tobacco, 2007 WL 39207, at *2 (citing eBay, Inc. v. MercExchange,
`23
`L.L.C., 126 S. Ct. 1837, 1840-41 (2006)).
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`11
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 12 of 13
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`acquired over thirty years of continuous use. In light of the foregoing, the Defendants'
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`use of the Trademark creates a substantial risk of irreparable harm.
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`D. Balance of Harm
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`There is no evidence of any damages that the Defendants might suffer if enjoined
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`from continuing to use the “Chem-Who?” mark. There is evidence that Plaintiff’s
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`considerable investment in its trademark will be harmed if an injunction is not issued.
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`The Court finds that the threatened injury to Plaintiff outweighs the harm caused to
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`Defendants as a result of the injunction.
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`E. Public Interest
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`Infringement and dilution of trademarks are inherently contrary to the public
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`interest.
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`24
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` The Court finds that issuance of the requested injunction would not be
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`adverse to the public interest.
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`F. Bond
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`The Court will impose a bond of $5,000 for the issuance of the injunction.
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`IV. ORDER AND PRELIMINARY INJUNCTION
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`Based upon the foregoing it is therefore
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`ORDERED that Plaintiff’s Motion for a Preliminary Injunction (Docket No. 6) is
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`GRANTED and will be effective upon the filing of a bond in the amount of $5,000. It is
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`further
`
`See Autoskill Inc. v. National Educ. Support Syst., 994 F.2d 1476, 1499 (10th
`24
`Cir. 1993) (“In copyright cases, we think [the public interest] factor normally weighs in
`favor of the issuance of an injunction because the public interest is the interest in
`upholding copyrights protections.”).
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`12
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`Case 1:06-cv-00136-DAK Document 8 Filed 04/05/07 Page 13 of 13
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`ORDERED AND ADJUDGED that Defendants Jeff Lydon and Lisa Smith, their
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`officers, agents, servants, employees and attorneys and all other persons in active
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`concert or participation with them, are restrained from reproducing, copying, colorably
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`imitating, or otherwise using Plaintiff’s “Chem-Dry” trademark, or any other term or mark
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`confusingly similar thereto, specifically including the name “Chem-Who?”
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`DATED this 5th day of April, 2007.
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`BY THE COURT:
`
`__________________________
`Ted Stewart
`U.S. District Court Judge
`
`13