A federal judge in the Southern District of Ohio recently issued a temporary restraining order in a dispute between the National Association for the Advancement of Colored People (NAACP) and former members of the now-inactive NAACP, Cincinnati Branch (“the Cincinnati Branch”).NAACP, Nat’l Office v. NAACP, Cincinnati Branch, No. 1:15-cv-00433-SJD (S.D. Ohio July 9, 2015). Despite being placed on inactive status in 2014, former branch members continued to hold themselves out as members of an active NAACP affiliate and continued to use the NAACP’s trademarks and physical property. The court’s order prohibits the defendants from using the NAACP’s intellectual or physical property, or otherwise causing a likelihood of confusion with regard to its affiliation with the NAACP, pending resolution of the current lawsuit.
Chartered by the NAACP more than 60 years ago, the Cincinnati Branch was placed on inactive status in December 2014 for failing to maintain the necessary leadership to conduct business pursuant to the NAACP’s bylaws. The Cincinnati Branch’s troubles began earlier that year, when the election of its next president was postponed due to disputes over voting procedures and other matters. Numerous Cincinnati Branch officers were subsequently suspended by the NAACP for violating the organization’s bylaws, and other officers resigned or could not be located. In placing the branch on inactive status, the NAACP informed the branch members that they were no longer permitted to conduct any business on behalf of the NAACP or the former Cincinnati Branch until it regained active status.
The current dispute arose when three suspended Cincinnati Branch officials incorporated an entity that began referring to itself as “NAACP, Cincinnati Branch.” According to the NAACP, this entity began using the NAACP’s trademarks, appropriated personal property belonging to the former Cincinnati Branch, and generally held itself out as an active, authorized branch of the NAACP. After several demand letters failed to deter their conduct, the NAACP filed suit against the newly incorporated entity and its founding members in the Southern District of Ohio. The NAACP’s complaint alleged trademark infringement, trademark dilution, and unfair competition under the Lanham Act, as well as numerous Ohio state law claims, including tortious interference and conversion of property.
Soon thereafter, the NAACP moved for a temporary restraining order enjoining the defendants from using the NAACP’s intellectual property or physical property, or otherwise holding themselves out as an authorized affiliate of the NAACP. When deciding whether to grant preliminary injunctive relief under Federal Rule of Civil Procedure (FRCP) 65, courts must consider four factors: (1) the moving party’s likelihood of success on the merits, (2) whether the moving party would otherwise suffer irreparable harm, (3) whether the relief sought would cause substantial harm to others, and (4) whether the public interest would be served by the relief sought.
In applying these factors to the case at hand, the court concluded that all four weighed in the NAACP’s favor and granted the temporary restraining order. First, the judge held that the NAACP had a strong likelihood of success on its Lanham Act claims of trademark infringement and unfair competition, reasoning that consumer confusion—the touchstone of the NAACP’s Lanham Act claims—would inevitably result from the defendants’ continued use of the NAACP’s trademarks. In particular, the court cited testimony suggesting that such confusion had already occurred, noting that “[e]vidence of actual confusion is undoubtedly the best evidence of likelihood of confusion.” Next, the judge readily concluded that the NAACP would suffer irreparable harm absent preliminary injunctive relief, explaining that “[i]rreparable injury is presumed as a result of a finding of a likelihood of confusion for purposes of the Lanham Act,” and that the “[d]efendants’ actions confuse the community and compromise the NAACP's goodwill.” After finding that the remaining two factors also weighed in favor of the NAACP, the judge enjoined the defendants from using the NAACP’s trademarks and from taking any actions that would cause a likelihood of confusion between its products and services and those of the NAACP. The court also granted the NAACP’s requested relief as to its physical property, enjoining the defendants from using, dissipating, or destroying any property belonging to the former Cincinnati Branch.