Intellectual Property

Second Circuit's Salinger/Preliminary Injunction Test Deemed Applicable to Trademark Cases: Pretty Girl Inc. Awarded Injunction against Pretty Girl Fashions

Plaintiff operated 33 "Pretty Girl" retail clothing stores in New York City and surrounding areas. When defendants opened a clothing store in Queens, New York, under the name "Pretty Girl Fashions," plaintiff filed a trademark infringement action.

In Pretty Girl, Inc. v. Pretty Girl Fashions, Inc., 2011 U.S. Dist. LEXIS 25755 (E.D.N.Y. Mar. 10, 2011) [enhanced version available to lexis.com subscribers], the court addressed plaintiff's motion for a preliminary injunction prohibiting defendants from using the "Pretty Girl" mark.

The court discussed the Second Circuit's five-part preliminary injunction standard in Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010) [enhanced version / unenhanced version available from lexisONE Free Case Law] (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (U.S. 2006) [enhanced version / unenhanced version]). That standard requires a showing: (1) of a likelihood of success on the merits, including an examination of the eight consumer confusion factors set out in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) [enhanced version]; (2) that the plaintiff is likely to suffer irreparable injury in the absence of an injunction; (3) that remedies at law, such as monetary damages, are inadequate to compensate for that injury; (4) that the balance of hardships tips in the plaintiff's favor; and (5) that the public interest will not be disserved by the issuance of a preliminary injunction. In addressing Salinger's applicability to trademark cases, the court held:

Although the panel in Salinger explicitly limited its holding "to preliminary injunctions in the context of copyright cases," it also saw "no reason that eBay would not apply with equal force to an injunction in any type of case." The Second Circuit has not yet spoken on this issue in the context of a trademark case; but the court agrees that there is no principled reason not to adopt the newly announced standard in the trademark context. The court concludes that the five-part preliminary injunction standard articulated in Salinger and eBay applies to this action, and Plaintiff has successfully demonstrated that a preliminary injunction is warranted in accordance with this standard. (emphasis added)

(citations and footnotes omitted)

For information on trademarks and preliminary injunctions, read:

3-14 Gilson on Trademarks § 14.02 Injunctive Relief (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)

The injunction is an enormously versatile equitable remedy. A court has broad discretion to fashion injunctive relief in a trademark infringement or unfair competition case 1 and may grant a temporary restraining order, a preliminary injunction or a permanent injunction. 2 It may award complete relief, ordering a defendant to cease all use of an infringing mark, 3 or ....

3-14 Gilson on Trademarks § 14.06 Cases Granting, Upholding, or Reversing the Denial of Preliminary Injunctions Since 1985 (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)

The determination of whether or not to grant a preliminary injunction involves a judicial balancing act. The court must weigh all the applicable factors, including the interests of the parties and of the public, and its determination is quite fact-based. The decisions themselves in the various jurisdictions are illustrative. The following are cases in which courts have ....

3-14 Gilson on Trademarks § 14.07 Cases Denying, Vacating, or Upholding the Denial of Preliminary Injunctions Since 1985 (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)

The determination of whether or not to grant a preliminary injunction involves a judicial balancing act. The court must weigh all the applicable factors, including the interests of the parties and of the public, and its determination is quite fact-based. The decisions themselves in the various jurisdictions are illustrative. The following are cases in which courts have ....

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