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WARNERVISION ENTERTAINMENT INC. v. EMPIRE OF CAROL

March 26, 1996

WARNERVISION ENTERTAINMENT INC., Plaintiff, against EMPIRE OF CAROLINA INC., EMPIRE INDUSTRIES INC. and EMPIRE MANUFACTURING INC. (formerly BUDDY L INC.) and THOMAS LOWE VENTURES, d/b/a PLAYING MANTIS, Defendants.


The opinion of the court was delivered by: BAER

 HAROLD BAER, JR., District Judge:

 Defendants Empire of Carolina, Inc., Empire Industries Inc., Empire Manufacturing Inc. and Thomas Lowe Ventures, Inc. (collectively "Empire") move for reconsideration of this Court's Opinion and Order dated February 12, 1996 granting plaintiff's motion for preliminary injunction and denying defendants' motion for preliminary injunction, or, in the alternative, for a stay of the preliminary injunction pending appeal. See 1996 U.S. Dist. LEXIS 1716, 1996 WL 67932 (S.D.N.Y. Feb. 12, 1996). Plaintiff WarnerVision Entertainment Inc. ("WarnerVision") cross moves for modification of the injunction Order dated February 16, 1996 as modified by Order dated February 22, 1996. I have considered the parties' papers as well as the very helpful and articulate arguments by both sides made at a hearing on March 11, 1996. For the reasons that follow, these motions are DENIED.

 Discussion

 I. Empire's Motion for Reconsideration

 As discussed more fully in the Opinion and Order dated February 12, 1996 this action involves a dispute over the use of the REAL WHEELS trademark and related trade dress. Empire raises several arguments that it claims justify reconsideration. Most of them, however, were raised originally and rejected. I have considered these points and conclude they do not warrant a different result now. The only argument that gives me pause is Empire's claim that it is entitled to rely on a pending intent-to-use trademark application in defending against WarnerVision's motion for a preliminary injunction. Although I find the argument fails as a matter of law, it is worthy of more extended consideration.

 Empire has obtained by assignment the rights to an intent-to-use application for the REAL WHEELS mark filed on September 23, 1994 by defendant Thomas Lowe Ventures, Inc. ("TLV"). At the time I issued my initial opinion, it appeared from the record that the Patent and Trademark Office ("PTO") had objected to this application. In fact, unbeknownst to the Court, the PTO withdrew its objections on February 7, 1996, just days before I issued my opinion. In my February 12 Opinion and Order I held that "as TLV's application has been rejected and thus no registration has issued, Empire may not rely on it here." 1996 U.S. Dist. LEXIS 1716, at 88, 1996 WL 67932, at *3 Implicit in this result is a finding that Empire could not rely on the application offensively as part of its motion for a preliminary injunction or defensively in opposition to WarnerVision's motion. In essence, I found that the intent-to-use application was irrelevant. Despite the recent PTO action, I maintain that view.

 Section 7(c) of the Lanham Act provides in pertinent part:

 
Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration . . . .

 15 U.S.C. § 1057(c). Empire argues in its motion for reconsideration that to allow WarnerVision, who made first actual use of the REAL WHEELS mark no later than January 18, 1995, and thus well after the TLV application date, to obtain an injunction would defeat the purpose of the intent-to-use provision. *fn1"

 In interpreting the meaning of § 7(c), my analysis must begin with the statutory text. Where the language is unambiguous, that is generally the end of the matter. As the Supreme Court wrote in Connecticut National Bank v. Germain:

 
We have stated time and again that courts must presume that a legislature says in a statute what it means and means in a statute what it says there. When the words of a statute are unambiguous, then, the first canon is also the last: "judicial inquiry is complete."

 503 U.S. 249, 253-54 (1992) (citations omitted). See also United States v. James, 478 U.S. 597, 606, 92 L. Ed. 2d 483, 106 S. Ct. 3116 (1986); Wetzler v. FDIC, 38 F.3d 69, 73 (2d Cir. 1994). Legislative history may be considered, but "in the absence of clearly expressed legislative intention to the contrary,' the language of the statute itself 'must ordinarily be regarded as conclusive.'" James, 478 U.S. at 606 (quoting Consumer Product Safety Comm'n v. GTE Sylvania, Inc., 447 U.S. 102, 108, 64 L. Ed. 2d 766, 100 S. Ct. 2051 (1980)); see also Roy v. Teachers Ins. and Annuity Assoc., 878 F.2d 47, 49 (2d Cir. 1989).

 The text of § 7(c) is unambiguous. It states clearly that the priority rights of constructive use are "contingent on the registration of the mark." Here, Empire does not claim that it has obtained a registration. Rather, it contends that it should be allowed to bring the product to market so that it can make actual use of the mark in commerce and obtain a registration. However, this claimed right to use the intent-to-use application ...


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