Summary
finding no threat of irreparable harm where defendant voluntarily ceased the challenged conduct and represented that the conduct would not resume
Summary of this case from Stokely-Van Camp, Inc. v. Coca-Cola Co.Opinion
00 Civ. 4897 (LAK)
September 7, 2000
ORDER
Plaintiff ("IGI") and defendant ("IGL") are geographically proximate competitors in the business of diamond grading and appraisal, a business the nature of which is discussed at length in the Court's recent opinion in another case. E.G.L. Gem Lab Ltd. v. Gem Quality Institute, Inc., 90 F. Supp.2d 277 (S.D.N Y 2000). IGI seeks a preliminary injunction barring IGL from alleged infringement of its claimed IGI trademark and the format of its card sized appraisal form. IGL cross-moves to dismiss the complaint.
IGL has altered the presentation of its name to the public. It has redesigned its mark to meet plaintiff's objections and categorically represented that it will not use the initials "IGL" in any form on any of its materials whatsoever.
While the voluntary cessation of challenged conduct does not of itself moot an action for injunctive relief, and thus does not require dismissal of the complaint, such a cessation surely is relevant to a claim for a preliminary injunction. Given IGL's actions and representations, plaintiff is not threatened with irreparable harm through infringement of its claimed IGI trademark.
The objection to IGL's use of the appraisal form, even as modified by IGL, is not so readily disposed of because IGL's form, even after alteration, still is a summary of essentially the same types of data concerning the subject stone on a wallet sized form and thus bears some resemblance to plaintiff's form. Nevertheless, there are substantial obstacles in plaintiff's path. It is far from clear that plaintiff's mode of presenting its appraisal summaries is protectible as trade dress because it is not clear that it is inherently distinctive or that it has acquired secondary meaning. Even if it is protectible, consideration of the Polaroid factors leaves considerable doubt, notwithstanding superficial similarities between the cards and the competitive proximity of the parties, that there is significant likelihood of confusion, especially in view of the change in IGL's mark. Moreover, plaintiff surely cannot have a monopoly on the presentation of appraisal results on wallet-sized cards. Thus, plaintiff has established no better than the existence of questions giving fair ground for litigation, and it has not demonstrated that the balance of hardships tips decidedly in its favor.
For all of the foregoing reasons, plaintiff's motion for a preliminary injunction and defendant's cross-motion to dismiss the complaint are denied. The parties would be best advised to settle whatever differences remain between them.
SO ORDERED.