IN THE UNITED STATES DISTRICT COURT,
IN AND FOR THE NORTHERN DISTRICT OF THE STATE OF OHIO
ADIDAQ,
Plaintiff
Case No. 09-C-07-123456
v.
Judge Karin Mika
QADIDA,
PLAINTIFF ADIDAQ’S MOTION
FOR PRELIMINARY
INJUNCTION
Defendant
Now comes Plaintiff, ADIDAQ, by and through undersigned counsel, and respectfully moves this
Honorable Court for a Preliminary Injunction under Rule 65 of the Federal Rules of Civil Procedure.
This request is based on the reasons set forth in the attached argument and incorporated herein.
Respectfully Submitted,
5926
#7654321
Attorney for the Plaintiff
12550 Lisbon Street
Paris, Ohio 44115
(624) 222-5009
STATEMENT OF FACTS
This case involves the inappropriate use by the defendant of the plaintiff’s logo. In 1966,
Bill Parker and Michael Scarm built a small store in San Francisco where they designed and sold
running shoes and apparel. They named the store ADIDAQ® and designed a unique logo that
manifested their love for the sport. The ADIDAQ logo is an illustrated black and white
silhouette depicting Stone Mountain, North Carolina, a popular running destination. The
ADIDAQ logo is a registered U.S. trademark that has become a famous, world-wide trademark
unique to ADIDAQ and its quality goods. Over the past 44 years, ADIDAQ has grown to
become a respected, world-renowned source of exceptional running shoes and apparel.
In 2009, Ray Finkle began a company, QADIDA, LLC, also specializing in the sale of
running equipment and apparel. Currently, QADIDA engages in extensive business in the
Indiana, Michigan, and Ohio tri-state area and is expanding nationwide in the spring of 2011.
QADIDA’s logo contains the same silhouette as that of ADIDAQ’s. The only difference
between the two marks is that QADIDA’s mark contains two additional red lines bordering the
logo and there is a slight variation in color within a portion of the logo. QADIDA has applied
for, and has been denied, U.S. trademark registration twice. The company’s third attempt for
trademark registration is currently pending. ADIDAQ has requested that QADIDA withdraw its
bid for trademark registration and cease the sales of its products. Finkle recently offered to sell
QADIDA to ADIDAQ, but withdrew the proposal in light of his company’s increasing publicity
and sales.
ADIDAQ filed suit against QADIDA, claiming they were entitled to relief for Trademark
Infringement pursuant 15 U.S.C. § 1114. In light of the abovementioned facts, ADIDAQ
respectfully requests that this Honorable Court grant its Motion for Preliminary Injunction
pursuant to Rule 65 to enjoin QADIDA from further infringement of its trademark.
STATEMENT OF POSITION
THIS HONORABLE COURT SHOULD GRANT ADIDAQ’S MOTION FOR
PRELIMINARY INJUNCTION PURSUANT TO RULE 65 ON ITS CLAIM FOR
TRADEMARK INFRINGEMENT UNDER 15 USC § 1114 BECAUSE THE
STRENGTH OF ADIDAQ’S MARK, COMBINED WITH THE SIMILARITY OF
DEFENDANT’S LOGO, CREATES SUBSTANTIAL CONSUMER CONFUSION AS
TO THE SOURCE OF PRODUCTS THAT EACH MARK IDENTIFIES.
DISCUSSION
Under 15 U.S.C.A § 1114 (West 2010), trademark infringement occurs when: [1] the
mark is a valid, protectable trademark; [2] the defendant used that mark without the plaintiff’s
consent; and [3] there is a likelihood of consumer confusion. Beer Nuts, Inc. v. Clover Foods
Co., 711 F.2d 934, 940 (10th Cir. 1983). Consumer confusion occurs when customers viewing a
mark would become mistaken as to the true source of the product because the mark represents a
different product with a similar mark. Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1243 (9th
Cir.1984). In determining the likelihood of consumer confusion, courts balance eight elements.
AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). No single element is
dispositive, but courts weigh heavily the similarity between the marks and the strength of the
senior mark. Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492, 495 (2d Cir 1961). In this
case, the similarity between the marks of ADIDAQ and QADIDA, combined with the strength of
ADIDAQ’s mark, is sufficient to justify equitable relief by this court.
First, this court should enjoin QADIDA from further use of its logo because the deceptive
similarity between ADIDAQ’s and QADIDA’s marks creates a substantial risk of consumer
confusion. The controlling issue in a trademark infringement case is whether the similarity
between two marks causes confusion or deception in the marketplace. Checker Food Products
Co. v. Ralston Purina Co., 232 F.2d 477, 478 (8th Cir. 1956). Courts generally examine the
total impression of the marks to determine whether relevant consumers are likely to believe that
the parties’ products are affiliated in some way. Exxon Corp. v. Texas Motor Exch., Inc., 628
F.2d 500, 505 (5th Cir.1980). The greater the similarity between the two marks at issue, the
greater the likelihood of consumer confusion. adidas-Am., Inc. v. Payless Shoesource, Inc., 546
F. Supp. 2d. 1029, 1052 (D. Or. 2008). Courts have developed three axioms to gage this degree
of similarity: [1] marks should be examined in their entirety and as they appear in the
marketplace; [2] similarity is best adjudged by appearance, sound, and meaning; [3] similarities
between the marks weigh more heavily than differences. GoTo.com, Inc. v. Walt Disney Co.,
202 F.3d 1199, 1206 (9th Cir. 2000).
Various cases that exemplify the degree of similarity that is sufficient to cause consumer
confusion between a senior mark and a junior mark supports ADIDAQ’s request for equitable
relief. As an initial matter, the negligible difference in the companies’ names, in and of itself, is
likely to cause consumer confusion. In LaTouraine Coffee Co., Inc. v. Lorraine Coffee Co., Inc.,
the court found that there was a likelihood of consumer confusion where the initial letters and the
last syllables of the company’s names were identical, and thus gave the same general impression
to consumers in the marketplace. 157 F.2d at 115, 116 (2d Cir 1946). Similarly, the term
QADIDA is merely ADIDAQ spelled in reverse. On face, consumers are likely to be confused
due to the nearly identical nature of the company’s names. This is further exacerbated by the
fact that both company’s names use the same font.
Further, the logos at issue here are also nearly identical in form. In CytoSport, Inc. v.
Vital Pharmaceuticals, Inc., the court held that there was a high similarity between two marks
which caused consumer confusion where the only difference in the defendant's logo was a red
outline around its brand name. 617 F. Supp. 2d 1051, 1067 (E.D. Cal. 2009); aff'd, Cytosport,
Inc. v. Vital Pharmaceuticals, Inc., 348 F. Appx. 288 (9th Cir. 2009). The court acknowledged
that these minor differences were “trivial distinctions” especially when viewing the products in
their entirety as they appear in the marketplace. Id. Likewise, the logo at issue here is also
identical in form, with the only difference being a variation in color and the two additional bars
within the QADIDA mark.
In addition, the similarity between ADIDAQ’s and QADIDA’s logos makes it difficult
for consumers to differentiate between the products of the two companies. In Moroccanoil, Inc.,
the court found striking similarities based on appearance between the marks “MOROCCANOIL”
and “MOROCCAN GOLD” when the marks appeared on similar amber-colored bottles and were
similarly printed in white lettering. Moroccanoil, Inc. v. Moroccan Gold, LLC, 590 F. Supp. 2d
1271, 1278 (C.D. Cal. 2008). Likewise, in this case, both logos are placed on running equipment
and apparel, making it challenging for consumers to differentiate which logo represents which
company in the marketplace. 590 F. Supp. 2d at 1278.
Finally, the similarities of the logos at issue should be given greater weight by the court
than any small differences. In GoTo.com, the court found that quibbles over trivial distinctions
between two logos was not necessary where marks were glaringly similar. 202 F.3d at 1206.
There, the likelihood of confusion was great when both parties’ logos consisted of white capital
letters in an almost identical font on a yellow square background. Id. The court noted that
similarities between marks should be weighted more heavily than differences when determining
the likelihood of confusion. Id. Thus, the variation of color and the two additional bars within
the QADIDA mark does not discount the similarity between the two logos. As such, this court
should have no difficulty in finding that the small differences between the marks in this case are
likely to cause consumer confusion.
This Court should also grant ADIDAQ’s motion for preliminary injunction because the
strength of its mark significantly increases the likelihood of consumer confusion in the
marketplace. The strength of a mark is a determination of the marks distinctiveness in the
marketplace. W.W.W. Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993). The
more distinct a mark, the greater likelihood consumer confusion will result from its infringement.
AutoZone, Inc. v. Tandy Corp., 373 F.3d 786, 793 (6th Cir. 2004). Courts apply three factors to
determine distinctiveness: [1] the length of time the mark has been used, [2] the plaintiff's
relative renown in its field, and [3] the strength of the mark in plaintiff's field of business. Tanel
Corp. v. Reebok Int’l., Ltd., 774 F. Supp. 49, 55 (D. Mass. 1990). Courts considering the
strength of a mark in a particular field of business find a trademark strong and distinct if the
mark is unique, has received intensive advertisement, or both. Daddy’s Junky Music Stores Inc.
v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997).
The ADIDAQ trademark is particularly strong because it is recognized internationally as a
quality source of running apparel and has been advertised in connection with the company’s
sales for forty-four years. In Copy Cop, Inc. v. Task Printing, Inc., the court found that the
strength of the plaintiff’s mark was essential in a finding a likelihood of consumer confusion
where the plaintiff spent significant amounts of money over twenty-three years to promote its
logo. 908 F. Supp. 37, 46 (D. Mass. 1995). Additionally, in Tanel Corp, the court found that a
logo was strong when a shoe and clothing manufacturer placed the mark on all of its shoes and
used it extensively in its advertising. 774 F. Supp. at 55-56. Similarly, ADIDAQ’s has
advertised its logo in connection with its goods for nearly twice the amount of time as in Copy
Cop. Further, like in Tanel Corp., ADIDAQ’s logo is uniquely associated with its goods.
QADIDA’s assertion that ADIDAQ’s portrayal of Stone Mountain, North Carolina in
their mark does not carry the strength to direct consumers to think of only ADIDAQ is untenable
because QADIDA uses the mark in connection with the sale of same products. In Quality Inns
Int'l, Inc., the court reasoned that two similar marks that serve to identify products in two
unrelated markets may coexist without consumer confusion; however, the likelihood of
confusion is high when a mark coexists with a similar mark in related fields or neighboring
markets. Quality Inns Int'l, Inc. v. McDonald's Corp., 695 F. Supp. 198, 210 (D. Md. 1988.)
Finally, in Century 21 Real Estate Corp. v. Century Resorts Int'l, Inc., the court found
that the mark “Century 21” was unique because the logo incorporated neither descriptive nor
generic words. No. 80-C-1690, 1981 WL 40544 at*4 (N.D. Ill. Aug. 21, 1981). Likewise, this
court should not hesitate to find that the ADIDAQ logo is unique, considering it is a self-stylized
silhouette of a mountain range that does not describe Stone Mountain, North Carolina or use a
generic representation of the mountain. Thus, ADIDAQ has met the distinctiveness to
demonstrate that their mark is strong.
CONCLUSION
For these reasons, ADIDAQ respectfully requests that this Court grant its Motion for
Preliminary Injunction and enjoin QADIDA from further infringement of its trademark.
Respectfully Submitted,
5926
#7654321
Attorney for the Plaintiff
12550 Lisbon Street
Paris, Ohio 44115
(624) 222-5009
CERTIFICATE OF SERVICE
The foregoing Plaintiff’s Motion for Preliminary Injunction and attached argument was served on
opposing counsel by both ordinary and electronic mail this 14th day of February, 2010.
Respectfully Submitted,
5926
#7654321
Attorney for the Plaintiff
12550 Lisbon Street
Paris, Ohio 44115
(624) 222-5009