Iowa Paint Mfg. Co. v. Hirshfield's Paint Mfg.

Decision Date04 December 2003
Docket NumberNo. 4:03-CV-40451.,4:03-CV-40451.
Citation296 F.Supp.2d 983
PartiesIOWA PAINT MANUFACTURING COMPANY, INC., Plaintiff, v. HIRSHFIELD'S PAINT MANUFACTURING, INC., Defendant.
CourtU.S. District Court — Southern District of Iowa

Donald H Zarley, Zarley Law Firm PLC, Des Moines, IA, for plaintiff.

Edmund J Sease, Jeffrey D Harty, McKee Voorhees & Sease P.L.C., Des Moines, IA, Richard A Kempf, Justin H Perl, Maslon Edelman Borman & Brand LLP, Minneapolis, MN, for defendant.

ORDER DENYING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION

GRITZNER, District Judge.

This matter is before the Court on Plaintiff's Motion for Preliminary Injunction. Oral argument on the motion was heard by the Court on November 6, 2003. Attorneys for the Plaintiff are Donald H. Zarley, Timothy J. Zarley, James J. Lynch, Scott. R. Kaspar, and Josef L. Hoffmann, with Mr. Timothy Zarley presenting oral argument in support of the motion; attorneys for the Defendant are Edmund J. Sease, Christine Lebron-Dykeman, Jeffrey D. Harty, Justin H. Perl, and Richard A. Kempf, with Mr. Perl presenting oral argument against the motion. For the following reasons, the Court finds a preliminary injunction is not warranted under the present circumstances. Therefore, Plaintiff's Motion for Preliminary Injunction will be denied.

PROCEDURAL HISTORY

The Plaintiff, Iowa Paint Manufacturing Company, Inc. ("Iowa Paint"), commenced this action against the Defendant, Hirshfield's Paint Manufacturing, Inc. ("Hirshfield's"), on August 15, 2003. Jurisdiction is proper pursuant to 28 U.S.C. § 1332, as there is complete diversity of citizenship and the amount in controversy exceeds $75,000, and under 15 U.S.C. § 1121 and 28 U.S.C. § 1338(a) and (b), as this case arises under the Trademark Laws of the United States, 15 U.S.C. §§ 1051 et seq.

The lawsuit contains two claims arising out of Hirshfield's alleged infringement of a trademark owned by the Plaintiff. The purported trademark at issue is "Pro-Wall". On September 11, 2003, Iowa Paint filed a Motion for Preliminary Injunction pursuant to Federal Rule of Civil Procedure 65. The grounds for this motion are that Defendant's use of the name "Prowall" constitutes unfair competition under 15 U.S.C. § 1125(a), that Plaintiff is likely to succeed on the merits, that Plaintiff has been and will continue to be irreparably injured by Defendant's acts, and the balance of hardships and public interest favor a preliminary injunction. This Motion has been resisted by the Defendant and was the subject of the hearing held on November 6, 2003.

BACKGROUND FACTS

Iowa Paint has manufactured and sold paint products throughout Iowa and surrounding areas since 1933. The company's products are directed toward professional painting contractors and facilities for maintenance. The company sells its products through a direct sales force supported by 43 company-operated warehouse stores.

Since 1894, Hirshfield's has manufactured and sold paint products and paint-related goods. Hirshfield's has, until recently, operated approximately twenty-one stores in and around the Minneapolis, Minnesota, area. On July 10, 2003, Hirshfield's opened a store in Urbandale, Iowa.

On or before September 30, 1995, Iowa Paint began using the term "ProWall" in conjunction with its line of paints. Iowa Paint asserts it adopted the "ProWall" name in good faith and without knowledge of any prior use by anyone in the paint industry. Since its adoption, Iowa Paint has used the "ProWall" name in association with paint products throughout the state of Iowa, as well as in parts of Missouri, Kansas, Nebraska, South Dakota, and Illinois.

Meanwhile, in March 1995, Hirshfield's began using the term "Pro-wall" and variants thereof in connection with various paint goods. The use of this term was limited to Minnesota until Hirshfield's opened a store earlier this year in Urbandale, Iowa.1 Since opening the Urbandale location, Hirshfield's has been in direct competition with Iowa Paint in the paint goods market.2

In its motion for preliminary injunction, Iowa Paint moves that the Court grant an order for the following relief:

1. Preliminarily enjoining Defendant, its officers, agents, servants, employees, and attorneys, and any and all persons in active concert or participation with them who receive actual notice of this Order by personal service or otherwise, from using the name "PRO-WALL" or any other name confusingly or deceptively similar to Plaintiff's name PROWALL for paint goods.

2. Requiring Defendant to immediately cancel and withdraw all advertisements, literature, promotional material, publications, packaging, and displays which have the mark or designation "PRO-WALL" visible on any part thereof used in connection with paint goods.

3. Requiring Defendant to immediately cease and desist from making public statements, presentations, announcements, or declarations referring to the name "PRO-WALL" used in connection with paint goods.

Hirshfield's has asserted numerous reasons why Plaintiff's motion should fail. Hirshfield's argues there is "utterly no likelihood of confusion between the parties' respective paint products and certainly no likelihood of success on the merits of the case at this early stage of the proceedings." These arguments and the requirements for a preliminary injunction, specifically one in a trademark infringement and unfair competition action, are discussed below.

ANALYSIS

Both parties have submitted briefs with accompanying exhibits and affidavits to support their positions. The Court considered all of these items, along with the arguments presented during the hearing, in making its determination of the propriety of granting Plaintiff's motion.

A. Standard for Preliminary Injunction

Iowa Paint has moved for a preliminary injunction pursuant to Federal Rule of Civil Procedure 65. "A preliminary injunction is extraordinary relief and must be carefully considered." Books, Inc. v. Pottawattamie County, Iowa, 978 F.Supp. 1247, 1253 (S.D.Iowa 1997). In deciding a motion for preliminary injunction, the Court considers the following factors:

(1) The probability of success on the merits;

(2) The threat of irreparable harm to the movant;

(3) The balance between this harm and the injury that granting the injunction will inflict on the other interested parties; and

(4) Whether the issuance of an injunction is in the public interest.

United Indus. Corp. v. Clorox Co., 140 F.3d 1175, 1178-79 (8th Cir.1998) (citations omitted); see Dataphase Sys. Inc. v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir.1981); Microware Sys. Corp. v. Apple Computer, Inc., 126 F.Supp.2d 1207, 1211 (S.D.Iowa 2000). These four factors have come to be known as the Dataphase factors. See United Indus. Corp., 140 F.3d at 1178-79.

None of these factors is dispositive in itself in determining whether to issue a preliminary injunction. Id. at 1179; see also Calvin Klein Cosmetics v. Parfums de Coeur, Ltd., 824 F.2d 665, 667 (8th Cir. 1987). Instead, each factor must be considered in determining "whether the balance of equities weighs toward granting the injunction." United Indus. Corp., 140 F.3d at 1179; see also Dakota Indus. Inc. v. Dakota Sportswear, Inc., 988 F.2d 61, 64 (8th Cir.1993). Moreover, these factors are not to be applied with mathematical precision. Dataphase Sys., Inc., 640 F.2d at 113. Each case is unique and should be determined on its own facts. Therefore, the court's approach needs to "be flexible enough to encompass the particular circumstances of each case." Id.; see also Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 601 (8th Cir. 1999) ("When applying the Dataphase factors, ... `a court should flexibly weigh the case's particular circumstances ....'") (quoting United Indus. Corp., 140 F.3d at 1179 (citations omitted)).

The burden is on the movant to show that a motion for preliminary injunction should be granted. See Sports Design & Dev., Inc. v. Schoneboom, 871 F.Supp. 1158, 1163 (N.D.Iowa 1995) (finding "`plaintiff bears the burden of proof concerning the four factors.'") (quoting Gelco Corp. v. Coniston Partners, 811 F.2d 414, 418 (8th Cir.1987)). This is a heavy burden, United Indus. Corp., 140 F.3d at 1179, especially where "`granting the preliminary injunction will give [the movant] substantially the relief it would obtain after a trial on the merits.'" Sanborn Mfg. Co. v. Campbell Hausfeld/Scott Fetzer Co., 997 F.2d 484, 486 (8th Cir.1993) (quoting Dakota Indus., Inc. v. Ever Best Ltd., 944 F.2d 438, 440 (8th Cir.1991)). "Caution must therefore be exercised in a court's deliberation, and `the essential inquiry in weighing the propriety of issuing a preliminary injunction is whether the balance of other factors tips decidedly toward the movant and the movant has also raised questions so serious and difficult as to call for more deliberate investigation.'" United Indus. Corp., 140 F.3d at 1179 (quoting General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 624-25 (8th Cir.1987)); see Dataphase Sys., Inc., 640 F.2d at 113 ("At base, the question is whether the balance of equities so favors the movant that justice requires the court to intervene to preserve the status quo until the merits are determined.").

B. Likelihood of Success

The first factor a court considers in determining whether to issue a preliminary injunction is the movant's probability of success on the merits. The Lanham Act3 serves in part to protect persons engaged in commerce from unfair competition. United Indus. Corp., 140 F.3d at 1179. To prevail under this Act, the plaintiff must prove the defendant's use of a name or mark "creates a likelihood of confusion, deception, or mistake among an appreciable number of ordinary buyers as to source" of the product or the association between the parties. Duluth News-Tribune v. Mesabi Publ'g Co., 84 F.3d 1093, 1096 (8th Cir.1996) (citing 15 U.S.C. § 1114(1) and ...

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