Payless Shoesource, Inc. v. Reebok Intern. Ltd., 92-4208-S.

• Decision Date: 02 October 1992
• Docket Number: No. 92-4208-S.,92-4208-S.
• Citation: 804 F. Supp. 206,25 USPQ 2d 1130
• Parties: PAYLESS SHOESOURCE, INC., a Missouri Corporation, Plaintiff and Counterclaim Defendant, v. REEBOK INTERNATIONAL LIMITED and Reebok International Ltd., Defendants and Counterclaim Plaintiffs.
• Court: U.S. District Court — District of Kansas

804 F. Supp. 206

25 USPQ 2d 1130

PAYLESS SHOESOURCE, INC., a Missouri Corporation, Plaintiff and Counterclaim Defendant, v. REEBOK INTERNATIONAL LIMITED and Reebok International Ltd., Defendants and Counterclaim Plaintiffs.

No. 92-4208-S.

United States District Court, D. Kansas.

October 2, 1992.

COPYRIGHT MATERIAL OMITTED

Don M. Bradley, Joe Rebein, Shook, Hardy & Bacon, Kansas City, Mo., Stephen J. Horace, St. Louis, Mo., for plaintiff.

Kenneth C. Jones, Steven B. Moore, Watson, Ess, Marshall & Enggas, Olathe, Kan., Harley I. Lewin, William M. Ried, Lewin & Laytin, P.C., New York City, for defendants.

MEMORANDUM AND ORDER

SAFFELS, Senior District Judge.

This matter is before the court on motion by Reebok International Limited and Reebok International Ltd. ("Reebok") for a preliminary injunction to prevent Payless Shoesource, Inc. ("Payless") from "purchasing, importing, distributing or selling shoes infringing Reebok's federally registered trademarks or trade dress or from making, using or selling shoes infringing Reebok's U.S. design patents" (Doc. 12). Reebok is basing its motion on three grounds involving five Payless shoe models, which Reebok refers to as the "Infringing Footwear." These models are the ProWings HK 48; ProWings 9620; XJ 900; Attack Force 9160; and ProWings 9153.¹

On August 25, 1992, Payless filed for a declaratory judgment seeking various declarations from the court including that Payless has not infringed Reebok's patents or trademarks, and has done no acts amounting to unfair competition. Reebok answered and counterclaimed for patent and trademark infringement, and state and federal unfair competition. Reebok also filed a motion for a preliminary injunction. On Friday, September 18, 1992, the court held an evidentiary hearing regarding the injunction, which it then took under advisement. After consideration of the evidence, the briefs and arguments of the parties, and the applicable law, the court finds the motion should be denied.² The court makes the following findings of fact and conclusions of law.

STANDARD FOR PRELIMINARY INJUNCTION

The granting of a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure is within the sound discretion of this court. Jurisdiction to grant an injunction in trademark infringement cases is also provided by statute, 15 U.S.C. § 1116, as is jurisdiction to grant an injunction in patent infringement cases, 35 U.S.C. § 283.

As a preliminary matter, the court notes that Tenth Circuit law governs the standard for granting a preliminary injunction on Reebok's trademark infringement claim, but the law of the Federal Circuit governs the standards on the patent infringement claim. Hybritech Inc. v. Abbott Laboratories, 849 F.2d 1446, 1451 (Fed.Cir.1988).

The standards which govern the granting of a preliminary injunction are well settled in the Tenth Circuit. The moving party must establish: (1) a showing that the movant will suffer irreparable injury unless the injunction issues; (2) a showing that the injunction, if issued, would not be adverse to the public interest; (3) proof that the threatened injury to the movant outweighs whatever damages the proposed injunction may cause the opposing parties; and (4) substantial likelihood that the movant will eventually prevail on the merits. Lundgrin v. Claytor, 619 F.2d 61, 63 (10th Cir. 1980). If the movant meets its burden of showing the first three elements, it need only show a fair ground for litigation to meet the substantial likelihood of success element. See Continental Oil Co. v. Frontier Refining Co., 338 F.2d 780, 781-82 (10th Cir.1964). This probability of success burden is met if the movant "raised questions going to the merits so serious, substantial, difficult and doubtful, as to make them a fair ground for litigation and thus for more deliberate investigation." 338 F.2d at 782.

The Tenth Circuit has also presumed the element of irreparable injury or harm when the movant has made a showing of trademark infringement, unless the trademark is weak. Amoco Oil Co. v. Rainbow Snow, Inc., 809 F.2d 656, 663 (10th Cir.1987); see Paramount Pictures Corp. v. Video Broadcasting Systems, Inc., 724 F.Supp. 808, 822 (D.Kan.1989). The presumption is undercut if the movant delays seeking the injunction.

The purpose of a preliminary injunction is to maintain the status quo pending a judgment on the merits of the case. Tri-State Generation and Transmission Ass'n, Inc. v. Shoshone River Power, Inc., 805 F.2d 351, 355 (10th Cir.1986). "In issuing a preliminary injunction, a court is primarily attempting to preserve the power to render a meaningful decision on the merits." Id. A preliminary injunction is an extraordinary remedy and is an exception rather than the rule. GTE Corp. v. Williams, 731 F.2d 676, 678 (10th Cir.1984).

For the purposes of Reebok's motion for a preliminary injunction with respect to alleged patent infringement by Payless, the Federal Circuit considers the same four factors. Hybritech Inc. v. Abbott Laboratories, 849 F.2d at 1451.

In determining the movant's likelihood of success on the merits, there must exist a reasonable likelihood of success on the merits with respect to the validity of the patent and with respect to infringement of the patent. 849 F.2d at 1451. Further, the court must make a finding of irreparable harm or injury, although the nature of the patent grant "weighs against holding that monetary damages will always suffice to make the patentee whole." Id. at 1456-57.

LIKELIHOOD OF SUCCESS ON THE MERITS

I. TRADEMARK INFRINGEMENT

A. Section 32 — Lanham Act

Reebok first alleges that both the Payless ProWings HK 48 and the ProWings 9620 infringe Reebok's STARCREST design, which is a registered trademark owned and controlled by Reebok and in continuous use for a number of years. The line of Reebok shoes allegedly infringed is called the "CLASSIC" and consists of aerobic type shoes. The visible portion of the STARCREST design is described by Reebok as "a semicircle of six geometric shapes radiating from a center, with the five shapes to the right in outline on the background color of the shoe and the one shape furthest to the left filled in red." This design appears on the tongue of the shoe. Reebok alleges that the two Payless models bear copies of the STARCREST design in the same location on the tongue of the shoes.

Reebok further alleges that the Payless ProWings HK 48 contains half of Reebok's STRIPECHECK design, which is also a registered trademark owned and controlled by Reebok and in continuous use for a number of years. This is equivalent to Reebok's Freestyle model. The STRIPECHECK design is a stitching stripe configuration with an overlay design on the side of the shoe. Reebok contends the Payless shoe exhibits the overlay half of its STRIPECHECK design.

Section 32 of the Lanham Act imposes liability for any person who:

uses in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.... 15 U.S.C. § 1114(1)(a).

A trademark is "a distinctive mark, symbol, or emblem used by a producer or manufacturer to identify and distinguish his goods from those of others." Educational Development Corp. v. Economy Co., 562 F.2d 26, 28 (10th Cir.1977). In determining whether a trademark has been infringed, besides determining whether the movant has a valid trademark, the court must evaluate whether "the use of a similar mark is likely to cause confusion in the marketplace concerning the source of the different products." Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 940 (10th Cir. 1983).

The Tenth Circuit has adopted factors to evaluate the likelihood of confusion, which originally were set forth in the Restatement of Torts § 729 (1938):

(a) the degree of similarity between the designation and the trade-mark or trade name in

(i) appearance;

(ii) pronunciation of the words used;

(iii) verbal translation of the pictures or designs involved;

(iv) suggestion;

(b) the intent of the actor in adopting the designation;

(c) the relation in use and manner of marketing between the goods or services marketed by the actor and those marketed by the other;

(d) the degree of care likely to be exercised by purchasers. Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d at 940.

These factors are not the only factors the court may consider and no single one is determinative. Id. In fact, the court in Coherent, Inc. v. Coherent Technologies, Inc., 736 F.Supp. 1055, 1064 (D.Colo.1990), also considered whether there was actual confusion and other courts have considered the proximity of the products.

In evaluating the degree of similarity between the marks, the test is not a side-by-side comparison and the similarities weigh more heavily than the differences. Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d at 940-41. As the court in Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 74 (10th Cir.1958), stated:

It is not necessary for similarity to go only to the eye or the ear for there to be infringement. The use of a designation which causes confusion because it conveys the same idea, or stimulates the same mental reaction, or has the same meaning is enjoined on the same basis as where the similarity goes to the eye or the ear. Confusion of origin of goods may be caused alone by confusing similarity in the meaning of the designations employed. The whole background of the case must be considered.

As a preliminary matter, the court finds that Reebok has introduced prima facie evidence that its trademarks, the Reebok name and the STRIPECHECK and STARCREST designs are valid. From the verification submitted, it owns and controls United States Trademark Registrations for those trademarks. Thus, the court will be...