OTR Wheel Eng'g, Inc. v. W. Worldwide Servs., Inc., No. CV-14-085-LRS, 2014 WL 1922744 (E.D. Wash. May 14, 2014).
A Washington district court issued a preliminary injunction preventing the defendant tire manufacturer from using the plaintiffs’ tire tread trade dress.
Here, the plaintiffs owns a 2012 federal registration for the design of their “Outrigger” tire treads and claim that the defendants’ competing “Extremelift” tires infringe upon the plaintiffs’ registered trade dress. In addressing the plaintiffs’ motion for preliminary injunction, the court first noted that the critical issue is whether the trade dress at issue is functional and therefore not protectable. However the court did not address the merits of the functionality issue at this juncture.
Moving on to the likelihood of confusion factors, the court concluded that the plaintiffs proved a likelihood of success on their trade dress infringement claim, specifically because: 1) the defendants’ Extremelift tire is “a virtual carbon copy” of the Outrigger tire, 2) the defendants’ identical tires give rise to a reasonable inference of an intent to trade on the goodwill of the plaintiffs, and 3) the plaintiffs’ trade dress is strong because consumers in the relevant market associate the tire tread design with the Outrigger tire. Further, the court concluded there was a threat of immediate irreparable harm to the reputation and goodwill of the plaintiffs because there was a question of whether the defendants’ tires were of the same quality.
The court granted the preliminary injunction against the defendants. However, recognizing that about a quarter of the defendants’ business came from the Extremelift tires, the court set the injunction bond at $1.8 million, which represented the defendants’ projected revenue loss over the next year as the case awaits trial. For the injunction to go into effect, the plaintiffs had to first pay the bond, which certainly let some air out of the plaintiffs’ tires.