IP Law Daily, TRADEMARK—D.N.J.: Korean American business group can’t get trademark injunction over past convention, (Oct 31, 2023)

By Steven Melendez

A New Jersey federal court ruled a preliminary injunction request “moot,” since the convention already took place.

A Korean American business association can’t get a preliminary injunction to block alleged trademark infringement related to another group’s October convention, since the convention already happened, a New Jersey federal court ruled (Korean American Chamber Of Commerce U.S.A. LLC v. Overseas Korean Agency, October 30, 2023, Martinotti, B.).

Korean American Chamber of Commerce U.S.A. LLC (KACCUSA) and its chairman sued Overseas Korean Agency (OKA) and other parties for trademark infringement in August, saying OKA was infringing its “HANSANG” mark and a mark on a related logo. KACCUSA alleged it has been holding “World Korean Business (HANSANG) Conventions” since 1982, using related trademarks that have been registered with the U.S. Patent and Trademark Office since 2015, according to the court ruling.

OKA, on the other hand, claims that it is in fact the organization that “has been hosting such conventions” and argues that KACCUSA’s chair is running a “splinter” organization. OKA alleges KACCUSA was established in 2015 and is distinct from an “original” KACCUSA, which is actually affiliated with OKA, according to the ruling.

On September 24, KACCUSA filed for a preliminary injunction, claiming that OKA was using materials with its trademark to promote its 2023 World Korean Business Convention and that this would cause long-term harm to its reputation if not blocked by the court. OKA replied that its own HANSANG mark has “no similarity in design” to KACCUSA’s, caused no actual confusion, and has been in use longer than KACCUSA’s mark without any confusion, according to the ruling.

OKA also argued that it hadn’t been adequately served and that the court lacks personal jurisdiction “due to insufficient contacts with New Jersey,” which KACCUSA contests.

The World Korean Business Convention was held at the Anaheim Convention Center in Anaheim, California, from October 11 through October 14, and the court found the fact that it already took place renders the request for an injunction moot.

“A U.S. federal court can only adjudicate live cases and controversies,” the judge wrote in denying the injunction. While the ruling acknowledged an exception for resolving situations that are “capable of repetition,” that is reserved for “exceptional situations” where “the challenged action is, in its duration, too short to be fully litigated prior to cessation or expiration” and “there is a reasonable expectation that the same complaining party will be subject to the same action again.”

That exception doesn’t apply in this case, the court found, since KACCUSA will have “ample time” to file a new request for an injunction before any future convention.

The court also dismissed as moot a request for an injunction related to OKA’s websites, saying KACCUSA’s brief only “focuses on, and only requests relief through the date of, the Convention,” which has passed.

“Given that the Convention has now occurred, and the time limitation for Plaintiffs’ proposed relief has now passed, the request to take down the websites is not adequately supported and is dismissed as moot,” according to the ruling.

The Case is No. 2:23-cv-04387-BRM-JSA.

Attorneys: Jungsup Kim (Law Office of Jungsup Kim) for Korean American Chamber of Commerce U.S.A., LLC a/k/a Hansang Kaccusa. Sean Seokchan Kwak (Kim, Lim & Partners) for Overseas Korean Agency.

Companies: Korean American Chamber of Commerce U.S.A., LLC a/k/a Hansang Kaccusa; Overseas Korean Agency

Cases: Trademark NewJerseyNews