988 F.2d 61 (8th Cir. 1993), 92-1656, Dakota Industries, Inc. v. Dakota Sportswear, Inc.

Docket Nº:92-1656.
Citation:988 F.2d 61
Party Name:26 U.S.P.Q.2d 1074 DAKOTA INDUSTRIES, INC., Appellant, v. DAKOTA SPORTSWEAR, INC., Appellee.
Case Date:March 12, 1993
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit

Page 61

988 F.2d 61 (8th Cir. 1993)

26 U.S.P.Q.2d 1074




No. 92-1656.

United States Court of Appeals, Eighth Circuit

March 12, 1993

Submitted Dec. 15, 1992.

Page 62

Donald N. Srstka, Sioux Falls, SD, argued, for appellant.

Scott A. Hindman, Sioux City, IA, argued (F. Joseph Du Bray, on the brief), for appellee.

Before MAGILL and BEAM, Circuit Judges, and LARSON, [*] Senior District Judge.

BEAM, Circuit Judge.

Dakota Industries ("Industries") appeals the denial of its motion for a preliminary injunction in this trademark infringement action against Dakota Sportswear ("Sportswear"). We vacate and remand to the district court for reconsideration in light of new evidence.


In 1972, Industries became the holder of Federal Trademark Registration No. 941,497 for use of the trademark DAKOTA for snowmobile suits, jackets, coats, coveralls, ski pants and jackets, and jumpsuits in U.S. Class 39, International Class 25. In 1978, the trademark became an incontestable trademark under 15 U.S.C. § 1065. Industries manufactures apparel, primarily sportswear, insulated work clothing, and sporting-type outdoor clothing, at least some of which is sold under the DAKOTA mark. Industries has also licensed its trademark to M. Fine and Sons who use it primarily on men's and boys' discount jeans.

Sportswear manufactures a variety of women's clothing in regular and large sizes under the Dakota Sport label. Sportswear employs at least three different marks for its clothing, all of which include the word Dakota.

In January 1990, Industries filed a trademark infringement action against Sportswear under the Lanham Act, 15 U.S.C. §§ 1051-1127. The district court granted Sportswear's motion to dismiss for lack of personal jurisdiction and venue. On appeal, a panel of this circuit reversed, and remanded the case to the district court for a trial on the merits. Dakota Indus., Inc. v. Dakota Sportswear, Inc., 946 F.2d 1384 (8th Cir.1991). Industries then filed a motion for a preliminary injunction. After a hearing, the district court denied the motion. This decision was based on an analysis of one of Sportswear's Dakota marks. The district court did not know of the two other Dakota marks employed by Sportswear, and therefore did not consider or evaluate these other marks when ruling on Industries' motion for a preliminary injunction. Thus, the district court's decision to deny a preliminary injunction was based on

Page 63

an incomplete analysis of the situation between the parties.



To continue reading