SMALL'S INJUNCTION POSITION
have previously noted that Small started out advocating that a declaratory
judgment was the proper remedy in this case, but reversed course after
discovery. Two memorandums elaborate the reasons for this change of course.
We've already seen the
first of the two memoranda, which accompanied Small's motion for preliminary
injunction. We will
take a side trip to the second memo next, which was prepared for the
hearing on the preliminary injunction itself. There is repetition between
the two memoranda, but this is in accordance with the normal practice
by litigants of limiting their case to several key points, then emphasizing
and reemphasizing those key points whenever there is the opportunity to
In the first memorandum, the newly discovered material is italicized and underlined. The emphasis is on these key points: Big's TaxHQ trademark for the newsletter was allegedly invalid in the first place, the use of TaxHQ in connection with the newsletter was allegedly expressly abandoned by Big, there was no likelihood of confusion between the marks used by Big and by Small, there would be a likelihood of confusion between Small and NewBiz if entrepreuneurs were shepherded to NewBiz by Big off Big's use of the marks, and there are numerous instances of behavior by Big which Small asserts calls Big's credibility into question (including Big's continued assertion that it knew nothing of substance about Small until June, 2007, and Big's registration of the domain name abouttax.net (in cooperation with NewBiz) concurrently with the commencement of this lawsuit).
The memorandum then analyzes the factors bearing on a likelihood of conclusion as set forth in the Sleekcraft case (we will go there after this page) and asserts that those factors make it clear that Small is entitled to a preliminary injunction.
In the second memorandum, Small acknowledges that Big used TaxHQ as the name of a newsletter before Small used TaxHQ as a service mark for its services. Small attempts to denigrate that use as far less significant than claimed by Big and immaterial in any event, since there was allegedly no likelihood of confusion between Big's newsletter and Small's services. Furthermore, and as previously mentioned with respect to the first memorandum, the registration was supposedly invalid and the use of TaxHQ with respect to the newsletter was allegedly abandoned.
Small asserts that (and the following three links are side trips - look at them and return) the doctrine of natural expansion is inapplicable, that tacking is not allowed (either on the theory that the doctrine of natural expansion is applicable or that a change in usage justifies tacking), and that Big should not be permitted to claim the benefits of the TaxHQ mark with respect to the entrepreneur clients of NewBiz when it makes every effort to conceal the relationship between Big and NewBiz.
Finally, the second memorandum goes into the Sleekcraft factors (we will go there after this page) in greater detail and once again urges that those factors justify the grant of a preliminary injunction to Small, and do not justify the grant of a preliminary injunction to Big. Let's look at Sleekcraft and this question in a bit more depth next.
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