Titaness Light Shop v. Sunlight Supply, Inc., 3:12-CV-0620-LRH-VPC, 2014 WL 358406 (D. Nev. Jan. 31, 2014)

In a lawsuit between hydroponics grow-light manufacturers, the plaintiff sought a declaratory judgment that its TITANESS mark did not infringe the defendant’s TITAN CONTROLS mark. In turn, the defendant claimed infringement and sought a preliminary injunction. The court granted defendant’s motion for a preliminary injunction, and the plaintiff moved for reconsideration and to stay the injunction pending appeal.

The court denied the motion for reconsideration. It explained that the defendant would suffer irreparable harm because its goodwill would be eroded as a result of confusion with the plaintiff’s mark. Specifically, the court held that because the plaintiff marketed to growers of illegal plants, i.e., marijuana, whereas the defendant marked its products as not being for the production of illegal substances, an association with the plaintiff would impair the defendant’s goodwill.

As for likelihood of confusion, the court held that it properly found a likelihood of confusion in issuing the injunction. It did not find persuasive the defendant’s evidence that following the issuance of the injunction, the U.S. Patent & Trademark Office (USPTO) had granted the plaintiff registration of its mark over the defendant’s objection. The court reasoned that the trademark examiner’s determinations were not binding on the court, the USPTO uses a different evidentiary standard for determining likelihood of confusion, and the plaintiff did not register its mark in the same industry as the goods covered by the defendant’s mark.

While the court upheld its preliminary injunction, it nevertheless stayed the injunction pending appeal, reasoning that because it would take time for the defendant to change its marketing materials and the defendant had quickly filed its appeal, it was proper to stay the injunction.