10/25/2012 02:08:00 PM EST
State Registration of "Diamonds Direct" Nets Preliminary Injunction
By Robert Angle
On October 2, 2102, Judge Hudson granted a preliminary injunction in favor of local Richmond, Virginia jeweler, BFJ Holdings, Inc. d/b/a Capri Jewelers, against growing national jeweler Diamonds Direct USA, Inc.'s continued use of the mark "Diamonds Direct" in the Richmond, Virginia market. What is most interesting about the case is the significance of Capri's state registration of the "Diamonds Direct" mark in January 19, 2012. Capri registered the mark upon learning that Diamonds Direct USA was planning to open a new store in the Richmond market, and Diamonds Direct USA sued Capri soon thereafter.
In a detailed sixteen page opinion (found here: Diamonds Direct [enhanced version available to Lexis.com subscribers]), Judge Hudson traced the history of the two jewelers' respective uses of the "Diamonds Direct" mark. While Diamonds Direct USA appears to have been using the mark earlier (since 1996) and more consistently than Capri, Diamonds Direct USA abandoned its 2001 effort to obtain federal registration of the mark and failed to present any evidence that consumers in Virginia associated the "Diamonds Direct" mark with Diamonds Direct USA. In contrast, Judge Hudson found that Capri's state registration of "Diamonds Direct" - even if just a few months earlier - gave Capri a presumption of ownership of the mark in Virginia. A presumption that Diamonds Direct USA failed to rebut.
Given this finding, Judge Hudson concluded that Capri was likely to succeed on the merits of the claim, would suffer irreparable harm if Diamonds Direct USA was allowed to enter the Richmond market with the "Diamonds Direct" mark, and that the balance of equities and public interest favored Capri. A hearing on the parties' respective motions for summary judgment is scheduled for October 15, 2012.
Copyright © 2012, Troutman Sanders LLP
Virginia IP Law
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