Over the weekend I was shopping for a full-length gown to wear to a charity event in August. I found a beautiful green Badgley Mischka gown. It was even on sale, much to my delight. So I may have been feeling like a beauty pageant contestant when I chose my blog post topic for today. In Mrs. United States National Pageant, Inc. v. Miss United States of America, et al., 12-CV-6137, venued in federal court in the Western District of New York, the plaintiff was able to secure a preliminary injunction against a former contestant and her company. No easy feat. Basically, the pageant was seeking to shut down use of the mark by the other pageant right away without having to wait until a trial which could be years down the road. Plaintiff was able to show a likelihood of success on the merits of its trademark infringement claim.
Specifically, Plaintiff owned eight trademarks, including “Mrs. United States,” and seven other variations with the terms “United States” along with the prefixes “Mrs.,” “Ms.” or “Miss.” Defendants used the marks “Miss United States of America,” “Mrs. United States of America,” “Miss Junior Teen United States,” “Miss Teen United States of America,” and “Mrs. United States of America Pageant.” (collectively “Defendants’ Pageant Trademarks”)
In its decision, the Court stated “[t]he maxim that ‘imitation is the sincerest form of flattery may well be true, but in matters of intellectual property, efforts of imitation are not always taken as a compliment, as they often lead to a violation of property rights.” Indeed, much of intellectual property law is based on shutting down copy cats.
The Court began by noting that the beauty pageant industry was a “crowded field.” This means that many pageants use marks with a combination of “Miss” or “Mrs.” and “United States” or a similar designation. Although each mark in a crowded field is relatively weak, the mark is still entitled to protection. The Court found no distinguishable major element (e.g., “Miss World-U.S.A,” because “World” broke up the words). With “United States” often used as a short form for “United States of America,” the Court found that beauty pageant fans could confuse the parties’ marks and believe that the pageants were the same or at least related.
Another factor supporting the Court’s decision was that the products sold under the marks were the same—both pageants. The Court also noted that the owner of the defendant pageant tried unsuccessfully to purchase at least some of plaintiff’s trademarks shortly before establishing her company. This could suggest bad faith on the part of the former beauty queen in using the same trademark.
Irreparable harm must be shown before a preliminary injunction to stop the use of the trademark will be issued. The Court discussed the eBay decision and its rejection of a presumption of irreparable harm with respect to patent or copyright infringement claims. Although not needing to rely solely upon a presumption because of evidence of actual confusion (including the plaintiff’s own attorney who had mixed up the trademarks in a brief to the Court), the Court explained that “it will often be the case that a party’s demonstration of a likelihood of success on a trademark claim will also show a threat of irreparable harm” or “a loss of control over one’s reputation” that is difficult to calculate or recompense. Accordingly, the Court enjoined the use of the Defendants’ Pageant Trademarks set forth above.
Are there any other crowded fields where you have seen a preliminary injunction issue to prevent use of a trademark?