MDK Law founder Mark D. Kimball and senior associate Alex T. Larkin recently prevailed in defeating a motion for preliminary injunction in the United States Federal Court for the Southern District of New York.  The case is primarily a trademark infringement case under the Federal Lanham Act as well as applicable New York state law, in which the Plaintiff had alleged that defendants represented by MDK Law infringed on the plaintiff’s trademark.


Specifically, the Plaintiff had filed a motion for preliminary injunction, seeking a court order restraining and enjoining the defendants from using their mark, or variations thereof, in connection with the sale or advertisement of certain hair care products, or selling products in packaging bearing the mark at issue.  MDK Law filed the Defendants’ opposition to the motion, arguing that the Defendants’ mark and Plaintiff’s mark are not confusingly similar, they are used for different types of products, and that they are used by consumers for different purposes.  Defendants’ branded products are essentially used for hair restoration, hydration, conditioning and treatment, while the Plaintiff-branded products are related to hair removal.


In a lengthy opinion and order issued by the Court on April 9, 2024, Plaintiff’s motion was denied.  The Court relied on well-established federal caselaw, in explaining that, to secure a preliminary injunction, the moving party must demonstrate: (1) a likelihood of success on the merits (meaning success at trial); (2) a likelihood of irreparable injury if a preliminary injunction is not granted; (3) that the balance of hardships weighs in favor of the moving party; and (4) that the public interest would not be disserved by granting the injunctive relief.  In denying the motion, the Court focused its analysis on the first two factors, explaining that it need not reach the third and fourth factor.


The primary focus of the Court’s analysis seems to have been on the “likelihood of success on the merits” element.  The Court applied the eight-factor balancing test set out by the United States Court of Appeals for the Second Circuit in 1961 in the case of Polaroid Corp. v. Polarad Electronics Corp.  Among other things, the Court appears to have held that the two product lines serve different cosmetic purposes, consumers would be unlikely to seek both product lines, there is no evidence of actual consumer confusion between the two, it is unlikely that Plaintiff would expand its product line and offer products that compete in the category as Defendants’ products, and also noted that there is no evidence of bad faith on the part of Defendants.


MDK Law has represented commercial clients in transactional and litigation matters in state (Washington, New York, Texas, and California) and federal courts in multiple jurisdictions and several Circuit Courts of Appeal for many years.  Areas of practice include intellectual property, civil litigation, transactions (including cross-border state and international transactions), commercial contract review and drafting, and arbitrations, among others.

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