Hunter S. Thompson once said, “Beware of looking for goals: look for a way of life. Decide how you want to live and then see what you can do to make a living WITHIN that way of life.”
Applying this to your intellectual property portfolio, you need a strategy wherein consumers won’t be confused by a competitor’s similar material, and competitors will be stopped and discouraged from building their own marketing based on the success of your own.
Clients and potential clients often ring my phone with news of a competitor using trademarks and copyrighted material, so similar to their own, that it cannot be a coincidence. At this point, there is a decision to make: do you want to be passive and hope that your competitor’s infringing material dies off as part of its own lifecycle? Do you mind relinquishing exclusive use of your mark after so much investment? Or do you want to rid yourself of these pests that feed recklessly off the fruits of your labor? If you want to rid yourself of these pests, the first step is to obtain a preliminary injunction, a complex motion that requires showing a court your likelihood of success on the merits in the overall suit, irreparable harm in the absence of an injunction, and a balance of the equities between the parties.
A recent Third Circuit case, Nichino America, Inc. v. Valent U.S.A. LLC, 44 F.4th 180 (3dCir. 2022) is instructive on many levels.
Not only does this case, involving competitor pesticide companies, analyze the contours of the newly passed Trademark Modernization Act, meant to make injunctions easier to obtain, but it also accentuates details in the court’s analysis that, upon study, can help you protect your IP harvest from infringing slugs.
In that case, plaintiff Nichino owned the mark CENTAUR for pesticides sold in 622-pound cases of pellets, priced at about $24 per pound. It sought an injunction against Valent, which owned a mark in SENSTAR. Both marks are displayed in similar colors, fonts, and arrow artwork, both are sold in the same geographic areas to fight the same insects, and both are sold to farmers through distributors. SENSTAR’s pesticides, however, were sold in liquid form at the price of $425 per gallon. Despite the court’s acknowledgment that the marks were visually similar, and sold through the same channels of distribution to the same consumer base, it declined to enjoin Valent from further sales (pending the outcome of the overall lawsuit) because Nichino didn’t prove irreparable harm.
Specifically, the court found that Valent rebutted the presumption of irreparable harm by submitting evidence of a sophisticated consumer class: the differing prices, his expense of seasonable treatment, regular reliance on expert recommendations, and the drastic consequences of misapplication (including crop destruction). These realities required sufficient sophistication for the purchaser that confusion between CENTAUR and SENSTAR was unlikely. Nichino could have bolstered its chances for a preliminary injunction by submitting certain evidence to the court. If you ever desire a preliminary injunction against an infringing competitor then you should investigate the cost and practicality of consumer surveys, both consumer perception and confusion. These can be costly. Essential evidence for the court, though, would be evidence of actual confusion between your mark and your adversary’s and any lost customers (loss in income since the infringement began). Such evidence bolsters your chances of success to enjoin. To paraphrase another Thompson quote (with a nod to Joseph Conrad), exterminate all the pests!