plaintiffs' lack of a registered trademark precludes their success on the merits under 15 U.S.C. § 1114(1). Plaintiffs' failure to resolve this concern squarely casts some doubt on their likelihood of success on the merits.
More significantly, plaintiffs have failed to show that their trademark has seniority over defendants' mark, a requirement implicit in all three prongs of the Hearst test. Defendant represents without contradiction that its predecessor, Fapezal, used its COMEXPO trademark for trade shows in Mexico since 1987, four years before plaintiffs first used their "EXPO COMM" mark in Mexico in 1991. Plaintiffs contend that their shows were larger and thus different in type from Fapezal's shows; defendant claims its shows were larger and featured the same class of exhibitors as do plaintiffs' shows. Plaintiffs contend that they had been using the "EXPO COMM" trademark worldwide since 1986, and that this use establishes the priority of their trademark worldwide, including in Mexico. Their theory is that, regardless of the country where the show takes place, the relevant market is the United States, where both parties solicit exhibitors for all of their shows worldwide.
At the July 14 hearing plaintiffs cited several cases to support their contention that trademark seniority should be determined by examining worldwide use rather than only use in Mexico. They rely most heavily on Foxtrap, Inc. v. Foxtrap, Inc., 217 U.S. App. D.C. 130, 671 F.2d 636 (D.C. Cir. 1982), which is representative of their other authorities. In Foxtrap, the Court of Appeals for this circuit upheld an injunction in favor of the operator of a social club in the District of Columbia against the operator of a disco in Philadelphia. Plaintiffs rely on that holding to argue that a trademark's seniority extends beyond the geographic location of the product and, thus, that plaintiffs' trademark is senior to defendant's in Mexico because plaintiffs were the first to use it somewhere in the world.
But Foxtrap is distinguishable. First, and most important, plaintiffs here, unlike in Foxtrap, used their trademark to advertise several different products -- trade shows in different countries. Under Foxtrap, plaintiffs' use of their trademark to advertise their Chinese trade show arguably establishes the worldwide seniority of their trademark to denote their Chinese show; it does not establish seniority anywhere to denote an entirely different product, such as their Mexican show. Second, the distance between Philadelphia and Washington, D.C. suggests more obviously that products are in competition than does the distance between China and Mexico. Finally, Foxtrap did not present the situation here in which defendant had used its trademark in the locale at issue for several years before plaintiffs attempted to use their competing mark in the same locale. These distinctions render plaintiffs' proffered precedents inapposite. Without the support of those precedents, plaintiffs have failed to meet their burden of showing a substantial likelihood of success on the merits.
As to irreparable injury, plaintiffs contend that a showing of likelihood of success on the merits automatically establishes irreparable harm in a trademark infringement action. "Trademark infringement and unfair competition are, by their very nature, activities that cause irreparable harm." Sears, Roebuck & Co. v. Sears Financial Network, 576 F. Supp. 857, 864 (D.D.C. 1983). Because plaintiffs have failed to establish a likelihood of success on the merits, however, inquiry into this prong of the preliminary injunction standard is unnecessary.
When considering the balance of hardships between the parties in infringement cases, courts generally favor the trademark owner. See, e.g., Polo Fashions, Inc. v. Extra Special Products, Inc., 451 F. Supp. 555, 564 (S.D.N.Y. 1978). However, as discussed above, plaintiffs are not likely to establish that they are the senior trademark owner here. In addition, plaintiffs contend that defendant has sufficient time to market a new name for its 1995 Mexican show. Defendant replies that the requested injunction would greatly hamper its ability to market and conduct its 1995 Mexican show. Defendant represented at the July 14 hearing that it has already advertised and has sold a substantial amount of space for that show. Ultimately, plaintiffs have failed to show why defendant's inability to use its trademark would cause it only negligible harm, while defendant's alleged infringement of plaintiffs' use of their trademark for the same purpose would cause irreparable injury.
Defendant also raises the significant point that granting injunctive relief for plaintiffs would alter rather than maintain the status quo. This is contrary to the ordinary function of preliminary injunctive relief. Preliminary injunctive relief ordinarily preserves "the last uncontested status which preceded the pending controversy." Westinghouse Electric Corp. v. Free Sewing Machine Co., 256 F.2d 806, 808 (7th Cir. 1958). In this case, the last uncontested status was both parties' uses of their competing trademarks for their Mexican trade shows between 1991 and 1994.
Defendant's application for the trademark at issue is currently pending before the Trademark Trial and Appeal Board, and plaintiffs have opposed that application. Testimony in the opposition proceeding is scheduled to be complete by November 13, 1994. Defendant concedes that the Board's determination on its application will neither bind this Court nor dispose of all the issues this action presents. However, defendant invokes the doctrine of primary jurisdiction to move for a stay on grounds of judicial efficiency because the Board's decision will "materially aid" a judicial determination. See Ricci v. Chicago Mercantile Exchange, 409 U.S. 289, 305, 34 L. Ed. 2d 525, 93 S. Ct. 573 (1973).
Defendant has made no showing that the Board's determination will be of the highly technical type that makes administrative adjudication more desirable than a judicial decision. Moreover, defendant has not demonstrated that a stay would yield concrete gains to judicial efficiency. In Ricci, "the adjudication of the Commission . . . [was] subject to judicial review and would obviate any necessity for the . . . court to relitigate the issues actually disposed of by the agency decision." Id. A similar circumstance does not exist here. In addition, defendant has not demonstrated that the issues to be determined by the Board bear so heavily on the substance of this action as to require a stay.
Date: August 23, 1994
Louis F. Oberdorfer
UNITED STATES DISTRICT JUDGE