Antitrust Law Daily Wrap Up, FRANCHISING & DISTRIBUTION—D.N.J.: Former franchisees barred from using franchisor’s trademarks, trade name, (Feb 10, 2015)

By Dan Selcke, J.D.

The federal district court in Newark, New Jersey granted a preliminary injunction, barring several former Coldwell Banker Real Estate franchisees, from using the franchisor’s trademarks, trade names, and service marks (Coldwell Banker Real Estate LLC v. The Bellmarc Group LLC, February 9, 2015, Hochberg, F).

Infringement. Coldwell filed suit against The Bellmarc Group LLC, together with several of its affiliated companies, for infringing Coldwell’s trademarks, trade names, and service marks (the marks) by displaying them inside stores and on websites, among other places. The Bellmarc companies’ use of these marks gave the impression that they were still Coldwell franchisees, even though the parties’ franchisor-franchisee relationship had ended.

No opposition. Coldwell filed a motion for a preliminary injunction that would stop the Bellmarc companies from using its marks, and the court entered an order to show cause why such an injunction should not issue. The Bellmarc companies’ submission in response to the order contained no legal arguments in opposition to Coldwell’s request for injunctive relief, so the court assumed that the defendant companies consented to that relief.

Preliminary injunction issues. Although it did not provide many details, the court engaged in a summary analysis of whether it could issue a preliminary injunction and concluded that it could. Coldwell demonstrated a likelihood of success on the merits and that it would be irreparably harmed if a preliminary injunction did not issue. In light of the fact that the Bellmarc companies had not demonstrated any right to use Coldwell’s marks, they were not going to be substantially harmed by a preliminary injunction. Also, the public interest supported the issuance of a preliminary injunction in this case.

Terms of order. Accordingly, the court granted Coldwell’s preliminary injunction, and ordered the Bellmarc companies to: (1) stop using Coldwell’s marks in connection with their businesses; (2) de-identify their offices so that they did not look like Coldwell-affiliated brokerage firms; (3) refrain from any representations to the public that they were Coldwell franchisees; (4) advise all of their current clients that they were no longer associated with Coldwell; (5) cause the local phone company and any business phone publisher to remove the Bellmarc companies from their listings as a Coldwell franchisee in their next edition; (6) remove the marks from their websites; (7) stop using the marks in any advertising, printed materials, or electronically distributed material; and (8) satisfy Coldwell’s non-monetary, post-termination obligations under the parties’ franchise agreement.

The case number is: 14-7926

Attorneys: Daniel M. Eliades (Forman Holt Eliades & Youngman LLC) for Coldwell Banker Real Estate LLC. Homas Gerard Russomano (Schiller & Pittenger PC) for The Bellmarc Group LLC, AC Lawrence Real Estate LLC, Bellmarc Downtown LLC, Bellmarc Brokerage Midtown Inc., and Bellmarc West LLC

Companies: Coldwell Banker Real Estate LLC; The Bellmarc Group LLC; AC Lawrence Real Estate LLC; Bellmarc Downtown LLC; Bellmarc Brokerage Midtown Inc.; Bellmarc West LLC

Cases: FranchisingDistribution NewJerseyNews