In trademark infringement action, court denies motion for preliminary injunction because plaintiff, licensee of the TOUGHLOVE trademark originally registered in connection with self-help books and seminars for parents of troubled teens, was not able to show likelihood of confusion between trademark owner’s products and services and defendants’ reality television dating show called Tough Love, and because plaintiff failed to establish priority of use of mark in connection with television programsPlaintiff, exclusive licensee of the trademark TOUGHLOVE, filed a trademark infringement action against producers and broadcasters of a reality television dating show called Tough Love broadcast on VH1. The TOUGHLOVE mark was originally registered in 1985 in connection with self-help books and seminars for parents of troubled teens, and an intent-to-use application was filed in December 2008 in connection with television programs, after the plaintiff had learned of defendants’ TV show.
The court denied plaintiff’s motion for a preliminary injunction. In the Ninth Circuit, a plaintiff in a trademark infringement action seeking a preliminary injunction must demonstrate either (1) a combination of probable success on the merits and the possibility of irreparable injury, or (2) the existence of serious questions going to the merits and that the balance of hardships tips sharply in its favor.
The court held that plaintiff failed to show the balance of hardships tipped in its favor. By the time plaintiff’s motion for a preliminary injunction was scheduled for a hearing, defendants’ show was in the middle of its first season. “This fact is significant because it not only increases the harm that defendants will suffer if the preliminary injunction is granted but it also decreases the harm plaintiff will suffer if the preliminary injunction is denied.” The court reasoned that any reputational harm to plaintiff’s mark caused by the program and its marketing would not substantially increase by allowing defendants to continue to use the TOUGHLOVE mark, but defendants would suffer “severe” harm in the form of lost advertising, lost investment in the program, and reputational harm if the court granted the motion. The court described how much defendants had spent on producing and advertising the show and that if forced to cancel the broadcast of the final episodes defendants would lose some of the financial investments they had made and suffer reputational harm with their viewers and their advertisers.
Because plaintiff failed to show the balance of hardships tipped in its favor, plaintiff needed to demonstrate probable success on the merits of its trademark infringement claim and the possibility of irreparable injury. The court separately addressed the TOUGHLOVE trademark used in connection with television programs, and the TOUGHLOVE trademark registered in connection with self-help books and seminars for parents of troubled teens.
Regarding the mark used in connection with television programs, the court noted that an intent-to-use application provides no presumption of validity of the mark. Because trademark rights are only established through prior use of the mark in the market place, plaintiff had to demonstrate that it had used the mark in the market place in connection with television programs, and that its use was prior to defendants’ use of the mark in connection with television programs. Plaintiff provided evidence showing he had tried since 2005 to develop a one-hour television talk show using the TOUGHLOVE mark, but the court held that plaintiff could not establish priority of use because plaintiff’s use of the mark was not public enough so that the public would associate the mark with television programs. “It is without question that plaintiff’s private meetings, emails, telephone conversations, and agreements with various businesses in the television industry and potential hosts of the proposed program are not ‘sufficiently public’ to allow the public to identify plaintiff with a television series under the TOUGHLOVE mark, as the public is unaware of any of these developments.” The court also questioned whether plaintiff’s use of the mark from 2005 to the present was continuous, as required to obtain trademark rights, as it seemed “sporadic”, but the court declined to make that determination because neither side provided evidence on the issue.
The court then turned to the TOUGHLOVE trademark registered in connection with self-help books and semtouinars for parents of troubled teens. Because a trademark registration provides prima facie evidence of validity, plaintiff did not need to establish priority of use. The court conducted the Sleekcraft analysis to determine if there was a likelihood of confusion between defendants’ reality television dating show and the trademark owner’s products and services. The Sleekcraft factors include (1) the strength of the plaintiff’s mark; (2) proximity of the plaintiff’s and defendant’s goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) the likelihood of expansion of the product lines. The court held that plaintiff’s and defendants’ marks are very similar and that plaintiff offered some evidence of consumer confusion (in the form of emails sent to him inquiring about defendants’ television show), two factors weighing in favor of plaintiff. However, the court also found that plaintiff’s mark is a weak mark entitled to a limited scope of protection, that plaintiff’s goods and services are distinct from defendants’ television program, that plaintiff and defendants use dissimilar marketing channels, that consumers of plaintiff’s goods and services are likely to exercise a high degree of care, and that defendants acted in good faith in selecting the TOUGH LOVE mark, and these factors weigh in favor of defendants. The court concluded that plaintiff did not show a probability of success in establishing a likelihood of confusion.