Preliminary Injunction a Slam Dunk in Shaq Trademark Infringement Suit

ABG-Shaq, LLC v. adilanaimaidi Store et al., Civil Action No. 1:22-cv-01855-AT (N.D. Ga. May 10, 2022)

Plaintiff ABG-Shaq, LLC filed suit against numerous foreign Defendants on May 10, 2022 in the Northern District of Georgia (Atlanta Division) asserting causes of action for federal trademark infringement, counterfeiting, and false designation of origin in violation of the Lanham Act and common law trademark infringement and unfair competition. The Complaint alleges that Defendants, known only to Plaintiff by their e-commerce marketplace name and ID number, are companies or individuals located in China or elsewhere that have knowingly and unlawfully sold counterfeit or infringing goods to customers in the United States bearing Plaintiff’s federally-registered and common law trademarks including SHAQUILLE O’NEAL, SHAQ, SHAQ ATTAQ, SHAQ FU, DUNKMAN, and many others. The Complaint further alleges that Defendants “hide their true identities by using aliases . . . or otherwise using false and deceptive means to avoid detection” and that Defendants’ sales of counterfeit goods are likely to cause confusion as to the source of the goods. The Complaint asserts causes of action for (a) trademark infringement in violation of 15 U.S.C. 1114, (b) unfair competition in violation of 15 U.S.C. 1125(a), and (c) common law trademark infringement and unfair competition. Plaintiff sought a preliminary and permanent injunction, an accounting of Defendants’ profits, treble damages pursuant to 15 U.S.C. 1051 and 15 U.S.C. 1117, or statutory damages, and attorney’s fees. The case was assigned to Judge Amy Totenberg.

That same day, Plaintiff moved for an ex parte temporary restraining order, asset freeze order, and order to show cause against Defendants. In its Motion, Plaintiff asserts that (1) it owns all asserted trademark rights, including 19 federally-registered trademarks, (2) Defendants’ counterfeit goods are likely to cause confusion as to the source of the goods and specifically to “confuse customers into believing the goods are authorized and genuine,” (3) Plaintiff is likely to suffer irreparable harm if Defendants are permitted to continue selling their unauthorized and counterfeit goods, (4) the balance of hardships weighs in Plaintiff’s favor, and (5) an injunction would serve the public interest. Plaintiff further argues that the temporary restraining order should be issued ex parte and without bond because, inter alia, “Defendants sell their counterfeit and/or infringing goods to customers in the United States exclusively online and accept payment only through on-line payment processors” and, as a result, “can easily remove all evidence of their counterfeit goods from their virtual storefronts and transfer any ill-gotten funds into foreign bank accounts” beyond the Court’s reach. Plaintiff also sought an order freezing Defendants’ assets “to assure the availability of permanent relief,” including Defendants’ profits and attorney’s fees, upon final resolution and to “serve as a deterrent against future acts of counterfeiting and piracy.” The Court held a hearing on Plaintiff’s Motion on May 11, 2022.

On May 12, 2022 the Court granted Plaintiff’s Motion for a temporary restraining order and seizure order, adopting Plaintiff’s arguments that it was the owner of valid, federally-registered trademarks and finding that “[e]ach Defendant is advertising and offering for sale goods using or bearing counterfeit copies of at least one of Plaintiff’s Marks, is using a counterfeit of at least one of Plaintiff’s Marks in its listings for unauthorized goods, or is using a confusingly similar trademark to one of Plaintiff’s Marks in the marketing and sale of its goods.” The Court further found that Plaintiff was likely to suffer irreparable harm if the injunction did not issue because the “Counterfeit Products are of inferior quality to Plaintiff’s genuine goods, misleading consumers as to the true quality of Plaintiff’s goods and causing consumer confusion ” and threatening “Plaintiff with the loss of control of its reputation and loss of the considerable goodwill it has established with customers.” The Court further granted Plaintiff’s request for an asset freeze, finding “Defendants are likely to destroy evidence of their counterfeiting activities . . . hide and/or transfer any ill-gotten proceeds from the sale of Counterfeit Products outside of the jurisdiction of this Court.” The Court ordered a hearing on Plaintiff’s motion for preliminary injunction on June 9, 2022. Defendants failed to appear at the hearing and, on June 10, 2022, the Court converted Plaintiff’s temporary restraining order and asset freeze order into a preliminary injunction.