United States District Court, N.D. New York
HARRIS, BEACH LAW FIRM, Attorneys for Plaintiff.
LOUIS SLIFKIN, ESQ., TED H. WILLIAMS, ESQ., TRISTAN D. HUJER,
MEMORANDUM-DECISION AND ORDER
D'Agostino U.S. District Judge.
20, 2017, Plaintiff Heartland Trademarks, Ltd., commenced
this action against Defendant Dr. Flax LLC alleging trademark
infringement, unfair competition, and deceptive business
practices. See Dkt. No. 1. Presently before the
Court is Plaintiff's motion for a temporary restraining
order, which was filed on July 24, 2017. See Dkt.
No. 8. Plaintiff's motion seeks injunctive relief
relating to alleged trademark infringement. See Id.
at 2. For the following reasons, Plaintiff's motion is
is the sole owner of the trademark, "FLAX, " for
use in connection with dresses skirts pants, jackets, shirts,
coats, and shoes ("FLAX Goods"). See Dkt.
No. 1 at ¶ 2. FLAX Goods are made of linen-linen is
manufactured from the flax plant, which is the source of the
FLAX name. See Dkt. No. 8-4 at ¶ 6. Clothing
and apparel under the FLAX name have been marketed and sold
since 1992. See Id. at ¶ 5. The FLAX trademark
was registered with United States Patent and Trademark Office
("PTO") on August 13, 1996, see Dkt. No.
1-1 at 2-3, and it was assigned to Plaintiff on September 17,
2001, see Dkt. No. 1-2 at 2-4.
has permanent showrooms in New York, Los Angeles, Dallas,
Chicago, and Atlanta, where it exhibits FLAX Goods; it also
exhibits FLAX Goods at fourteen national and regional trade
shows. See Dkt. No. 8-4 at ¶ 12. In total,
"the workforce supporting the FLAX Mark and the FLAX
Goods [includes] as many as 75 people." Id. at
¶ 13. Additionally, Plaintiff has invested approximately
$3 to $4 million per year "in the goodwill of the FLAX
Mark, " including more than $1 million each year in
marketing costs. Id. at ¶ 14. Plaintiff's
investment in the FLAX brand has paid off-sales of FLAX Goods
average $20 million per year, and enthusiastic FLAX consumers
created "an internet fan page and chat site devoted to
discussing the FLAX Goods, " which was called
"flaxista." Id. at ¶¶
16-17. FLAX Goods are sold on the FLAX website
and through six online retailers, but they are primarily sold
in retail stores. See id. at ¶ 20. Plaintiff
has sold FLAX Goods in forty-nine states, as well as in the
Caribbean, Europe, and Asia. See id.
2014, Plaintiff granted an exclusive license of the FLAX mark
and FLAX Goods to a third party licensee. See Id. at
¶ 18. While the licensee is currently responsible for
the sale and promotion of FLAX Goods, Plaintiff still owns
the FLAX mark and receives royalties on the sale of FLAX
Goods. See Id. Pursuant to the licensing agreement,
the licensee has the option to purchase the FLAX mark, and
Plaintiff claims that the licensee "is expected to
exercise its option to purchase the FLAX Mark at the end of
the term." Dkt. No. 8-1 at 18.
June 2017, Plaintiff was informed that Defendant was selling
goods that infringed on the FLAX mark. See Dkt. No.
8-4 at ¶ 28. Specifically, Defendant sells linen clothes
of a similar style to the FLAX Goods, and it sells them under
varying names, including Dr Flax, Dr. Flax, Doctor Flax,
DoctorFlax, dr.flax, and @dr.flax. See Id. at ¶
23. Defendant formed a limited liability company on October
15, 2015, and began promoting its products on Instagram on
January 20, 2017. See Id. at ¶¶ 27-28.
Plaintiff first discovered Defendant's products on the
Facebook page of a boutique clothing store that also sells
FLAX Goods. See Id. at ¶ 28. On June 30, 2017,
Plaintiff sent Defendant a cease and desist letter demanding
that Defendant stop using the word "flax" in
connection with the sale of its clothing. See Dkt.
No. 1-3 at 2. On July 13, 2017, Defendant responded by
refusing to comply with Plaintiff's demand. See
Dkt. No. 8-4 at ¶ 30.
sells the vast majority of its goods to retailers at national
and regional trade shows. See Id. at ¶ 34. Many
of the significant trade shows for spring and summer
clothing-the type of clothing sold by both parties-take place
throughout the month of August. See Id. at ¶
35. Therefore, Plaintiff claims that its sales and its
agreement with the licensee will be in jeopardy if Defendant
is not prevented from participating in the August trade
shows. See Id. at ¶ 33. According to Plaintiff,
at least one sales director of a regional trade show has
already confused the FLAX and Dr. Flax brands. See
Id. at ¶ 32. The sales director for the Dallas
regional trade show stated that she believed Dr. Flax was a
subsidiary of the FLAX brand. See Id. at ¶ 28.
24, 2017, Plaintiff filed an emergency motion for a temporary
restraining order seeking to enjoin Defendant from marketing
and selling clothing under labels that infringe on the FLAX
mark. See Dkt. No. 8-1 at 1. The following day, the
Court issued an order asking Defendant to show cause why a
temporary restraining order should not be granted.
See Dkt. No. 9. Plaintiff's counsel served a
copy of the motion for a temporary restraining order and the
Court's order to show cause on Defendant's counsel
and attempted to complete service on Defendant, but service
was refused. See Dkt. Nos. 11, 11-1, 11-2.
STANDARD OF REVIEW
restraining orders . . . and preliminary injunctions are
extraordinary and drastic remedies." Lawrence v.
Zee, No. 16-CV-1515, 2016 WL 1690669, *1 (E.D.N.Y. Apr.
26, 2016) (citation omitted). In order to obtain a temporary
restraining order, the moving party must demonstrate: (1) a
likelihood of success on the merits; (2) that absent an
injunction the moving party is likely to suffer irreparable
injury that cannot be remedied with monetary damages; (3)
that the balance of hardships tips in favor of the moving
party; and (4) that the public interest would not be
disserved by the issuance of an injunction. Salinger v.
Colting, 607 F.3d 68, 80 (2d Cir. 2010).
Success on the Merits
Lanham Act provides a right of action against "[a]ny
person who, on or in connection with any goods or services .
. . uses in commerce any word, term, name, symbol or
device" that "is likely to cause confusion . . . as
to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person."
15 U.S.C. § 1125(a)(1). There is a two-part test for
analyzing trademark infringement claims under the Lanham Act.
"The first prong looks to whether the senior user's
mark is entitled to protection; the second to whether the
junior user's use of its mark is likely to cause