In the united states district court for the northern district of ohio

FOR THE NORTHERN DISTRICT OF OHIO

ADIDAQ®, Case No. 987-654-321

Judge Karin Mika

PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION

QADIDA,

Now comes Plaintiff ADIDAQ®, by and through undersigned counsel, and requests this Honorable Court to grant Plaintiff’s Motion for Preliminary Injunction, under Federal Rule of Civil Procedure 65. This request is based on the reasons set forth in the attached argument and incorporated herein.

Respectfully Submitted,

1125

1000 Euclid Avenue

Cleveland, Ohio 44114

(555) 555-5555

Attorney Reg No. 1125

STATEMENT OF FACTS

Bill Packer and Michael Scarn (plaintiffs) are running enthusiasts who wished to turn their passion for fitness into successful careers. In 1966, plaintiffs co-founded ADIDAQ® (AD®); an athletic store and small-scale manufacturer of running shoes and apparel. Originally, the company was managed solely by plaintiffs and confined to a localized market, but with hard work, AD® has gained worldwide recognition as a supplier of quality athletic equipment.

AD® has used the same logo to distinguish its products for over four decades. The logo is a uniquely stylized design of Stone Mountain (a popular destination for runners). Plaintiffs recognized that AD®’s success could entice others to fraudulently replicate their logo, so they obtained a trademark soon after the company’s inception.

QADIDA (QA) is the type of opportunistic company plaintiffs need protection from. As recently as 2009, QA began selling the same type of goods as AD® and using a logo that is nearly identical to AD®’s protected logo. QA’s mark is not only new, it is also unregistered, as they have failed multiple times to obtain a trademark. Given these attempts and the logos’ striking similarity, plaintiffs grew increasingly concerned about QA’s continuing trademark infringement and the damage it was doing to their company.

It was not plaintiff’s intent to pursue litigation. Instead, they formally requested AQ stop using the logo and cease sales of its products. QA’s owner considered selling his company to AD®, but no longer intends to sell his company or change the logo. In fact, he announced QA’s intention to move beyond their current market, based in Michigan, Ohio, and Indiana, and to complete a nationwide expansion by spring 2011.

It is on these facts that plaintiffs move this Honorable Court to grant Motion for Preliminary Injunction to enjoin QA from infringing on AD®’s registered mark.

THIS HONORABLE COURT SHOULD GRANT PLAINTIFF’S MOTION FOR PRELIMINARY INJUNCTION BECAUSE A LOGO THAT IS TRADEMARKED AND USED BY A WELL-KNOWN COMPANY FOR 45 YEARS IS A STRONG MARK AND THE USE OF A NEARLY IDENTICAL LOGO BY A LESSER-KNOWN COMPANY IS LIKELY TO CAUSE CUSTOMER CONFUSION, AND THEREFORE ESTABLISHES A CLAIM FOR TRADEMARK INFRINGEMENT UNDER 15 U.S.C. §1114.

District courts are empowered under Federal Rule 65 to grant injunctive relief for civil wrongs, including trademark infringement. 15 U.S.C. §1116 (West 2004). The general rule is that a company is liable for trademark infringement if it imitates a different company’s registered mark in connection with the sale of goods, when such use of that mark is likely to confuse customers. 15 U.S.C. §1114 (West 2004). Confusion is therefore the basis for proving a trademark infringement claim. See, e.g., AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 347 (7^th Cir. 1979). To determine the likelihood of confusion, courts in this jurisdiction consider the (1) similarity of the marks and the (2) strength of the marks. Frisch’s Rest. Inc. v. Elby’s Big Boy, Inc., 670 F.2d 642, 648 (6^th Cir. 1982). In the case at bar, QA uses a logo that is nearly identical to AD®’s well-known logo, and as a result, customers will likely be confused as to the source of goods. Therefore, this court should enjoin QA from using its logo. See Lopes v. Int’l Rubber Distrib., 309 F. Supp. 2d 927, 981 (N.D. Ohio 2004).

First, the logos at issue are undoubtedly similar. Obviously, the closer marks are in appearance, the more likely consumers will confuse one for the other. Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 279 (6^th Cir. 1997). In finding whether similarity exists, courts determine consumers’ general impression of a mark by viewing it in its entirety. Id. Accord Restatement of Torts §728 cmt. b (1938). Here, when viewed in their entirety, the logos appear strikingly similar. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9^th Cir. 2000). This is due to two features – general design and spatial positioning – which substantially influence consumer perception. Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 631 F. Supp. 735, 740 (S.D.N.Y. 1985). Here, AQ uses the exact image of Stone Mountain trademarked by AD®, rendering the general design of each logo virtually identical. See Appendix A. Moreover, the Stone Mountain image is also centrally-located in each logo, making them identical in terms of spatial coverage as well. Id. Thus, when viewed in their entirety, the general effect of each logo is the same, and as a result, there is a high likelihood of confusion.

Further, the differences within the logos do not reduce potential confusion. In general, similarities weigh more heavily than differences. See, e.g., Wynn Oil v. Am. Way Serv. Corp., 61 F.3d 904, 910 (6^th Cir. 1991). Here, the only differences are color and the inclusion of two bars on the periphery of AQ’s logo. These differences are not significant enough for the court to find the logos dissimilar. Cf. Appendix B. Companies alter the color of their logos at will (for example, Nike “swooshes” are not uniformly colored on all Nike products), so changes in color will not reduce confusion. See, e.g., Cadberry Beverages, Inc. v. Cott Corp., 73 F.3d 474, 478 (2^nd Cir. 1996) (holding marks to be similar despite differences in color). The court should also find AQ’s bars of little consequence. For example, in holding that two marks were similar, the Mutual court reasoned that peripheral differences should be mitigated where the main portion of two marks is substantially the same. Mutual of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 909 (D. Neb. 1986), aff’d, 836 F.2d 397, 402 (8^th Cir. 1987).

Here, AQ uses perpendicular bars on the outer portion of its logo to frame the main design, which is the same stylistic device used by the defendant in Mutual. See Appendix C. Therefore, similar to Mutual, this difference should be regarded as immaterial, and, because it is the only true difference between the logos, the court cannot find they are similar. As a result, the general impression will be that the logos are confusingly similar despite this difference. See Communications Satellite Corp. v. Comsat, Inc., 429 F.2d 1245, 49 (11^th Cir. 1970).

Confusion is even more likely when similar-looking marks are attached to similar products. Int’l Kennel Club, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 90 (7^th Cir. 1988). With this in mind, the court should recognize the resulting consumer tendency to attribute similar products as originating with the trademark holder. See E Remy Martin & Co., S.A. v. Shaw-Russ Int’l Imports Inc.,756 F.2d 1525, 30 (11^th Cir. 1985). Here, both companies deal exclusively in athletic merchandise and market similar products; so, this tendency, paired with AD®’s registered status and predominance in the marketplace, will result in consumers thinking AD® is the source for all products. See, e.g., Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 410 (2^nd Cir. 1917) (stating that consumers are likely to view similar products as originating with the trademark holder). Thus, the use of the replicated logo will, in effect, allow AQ to steal money that would otherwise go to AD® and trick the public into purchasing inferior products. Additionally, the damage is bound to increase due to AQ’s planned expansion into the national marketplace, which will increase the competition between these similar products, thereby also increasing confusion as to their true source. C.L.A.S.S Promotions, Inc. v. D.S. Magazines, Inc., 753 F.2d 14, 14 (2^nd Cir. 1985).

II. STRENGTH

The court should find AD®’s mark strong and grant the full protection of the law. The strength of a mark is its ability to identify the source of goods sold under it. McGregor, 599 F.2d 1131. It is measured according to its (1) conceptual strength and (2) consumer recognition. A&H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 221 (3^rd Cir. 2000). Conceptual strength deals with the inherent features of a mark, and consumer recognition refers to real life conditions affecting consumers’ association between a company and its products. Id.

First, the conceptual strength of the logo is undeniable. In general, courts assign marks to one of four categories, each of which designates the mark as having more or less strength. Daddy’s, 109 F.3d at 280. Only two can apply here: A suggestive mark brings a product to mind and must obtain a secondary meaning to be protected, and a fanciful mark is created solely for the purpose of being trademarked and is given the law’s full protection. Id. Pursuant to U.S.C. 15 §1065 (West 2004), AD®’s long-term use of its logo makes it incontestable. This is prima facie evidence of strength and qualifies AD® as a fanciful mark. Wynn Oil Co. v. Thomas, 839 F.2d 1183, 87 (6^th Cir. 1988). The court should find this classification proper because AD®’s logo was invented for the purpose of being a trademark and serves no other function. For Example, the court in Lois held that the plaintiff’s mark was fanciful because it served only as a source indicator. 799 F.2d 867, 869 (S.D.N.Y. 1986). Thus, AD®’s mark, being created for its use as a trademark and functioning only to label products, should similarly be classified as fanciful.

Second, consumers easily recognize the AD® logo. Courts gauge recognition by viewing a company’s size, profitability, and popularity. Satellite, 429 F.2d at 1248. For instance, in McDonalds Corp. v. McBagels, Inc., the court held the trademark “Mc” was strong because consumers generally associated it with McDonald’s food products. 649 F. Supp. 1268, 74 (S.D.N.Y 1986). The court based its conclusion on McDonald’s international presence and its annual revenue of $2.5 billion. Id. Here, AD® is similar to McDonalds in that it is a huge company, operates on a global scale, and generates a high annual return. Its products are also undoubtedly familiar to consumers and widely used, which further strengthens consumer recognition. Satellite, 429 F.2d at 1248. By comparison, AQ is less profitable and geographically confined to Michigan, Ohio and Indiana, so its mark is far less familiar to consumers and relatively unrecognizable. As a result, the court should find the AD® logo to be a strong mark that is likely to confuse consumers.

For all these reasons, Plaintiff ADIDAQ® respectfully requests this court to grant Plaintiff’s Motion for Preliminary Injunction, as the facts of this case establish a likelihood of trademark infringement.

Respectfully Submitted,

1125

1000 Euclid Avenue

Cleveland, Ohio 44114

(555) 555-5555

Attorney Reg No. 1125


CERTIFICATE OF SERVICE

A copy of the foregoing was served upon QADIDA, 1234 Main Street, Cleveland, Ohio, 44114, by regular U.S. Mail this the 14^th day of February, 2011.

Respectfully Submitted,

1125

1000 Euclid Avenue

Cleveland, Ohio 44114

(555) 555-5555