Signeo USA, LLC v. SOL Republic, Inc., No. 5:11-CV-06370-PSG, 2012 WL 2050412 (N.D. Cal., June 06, 2012)
Plaintiff Signeo, Inc. moved for a preliminary injunction against Defendant SOL Republic seeking to prevent the defendant from selling and promoting its line of SOL-brand headphones which allegedly infringes their SOUL by Ludacris-brand headphones. The Plaintiff contends that because the brands are pronounced identically and because the two companies produce identical products at similar price points, a preliminary injunction was necessary to prevent damage to its SOUL headphone business.
A preliminary injunction may only be awarded if there is a “clear showing” that the plaintiff is entitled to such relief and requires the plaintiff to demonstrate that he is likely to succeed on the merits, that he is likely to suffer irreparable harm without the injunction, that the balance of equities tips in his favor, and that an injunction is in the public interest. The plaintiff here failed to make this showing.
To demonstrate whether a party in a trademark infringement claim is likely to succeed on the merits, the court must evaluate whether there is any likelihood of confusion between the marks. Based on its analysis of the Sleekcraft factors for assessing likelihood of confusion, the court was not persuaded that Signeo would be likely to demonstrate confusion sufficient to succeed on the merits of its claim. Although SOUL by Ludacris’ headphones enjoyed widespread recognition and market presence, based on its product placement in movies, music videos, and particularly with its well-publicized association with recording artist Christopher Bridges, aka Ludacris, the fact that so many registrations for electronic goods contained the term SOUL weakened the strength of the mark and the range of protection to which it is entitled. Signeo’s evidence of actual confusion was anecdotal and de minimis at best. Further, the court found that the marks are only vaguely visually similar. A reasonable consumer is not likely to confuse the stylized “S-O-L” with the styled “S” followed by “SOUL” of Signeo’s brand.
Although the two companies sell their products in identical channels and side-by-side, Signeo was unable to demonstrate that it would suffer irreparable harm for purposes of preliminary injunction relief. While there is strong public interest in enforcing intellectual property and preventing consumer confusion, the balance of hardships favored SOL Republic who had invested over $4.5 million in their sole product – SOL-branded headphones. A preliminary injunction would force their business to come to a halt. Therefore, because Signeo was unable to demonstrate that it was likely to succeed on the merits, that it would suffer irreparable harm, and the balance of equities tipped in the Defendant’s favor, the court denied Signeo’s motion for a preliminary injunction.