IP Law Daily, TRADEMARK—S.D. N.Y.: Publisher of Maxim magazine could not show irreparable harm over “Maxim” antiperspirant, (Nov 5, 2013)

By Peter Reap, J.D., LL.M.

Alpha Medical Group, Inc. (“AMG”), the publisher of Maxim magazine, was not entitled to a preliminary injunction enjoining Corad Healthcare, Inc. and Keith A. Roberts (collectively, “Corad”) from continuing to market its products using packaging AMG alleges violates its trademark rights, the federal district court in New York City has decided (Alpha Medical Group, Inc. v. Corad Healthcare, Inc., November 4, 2013, Pauley III, W.). AMG could not show that it would be irreparably harmed in the absence of injunctive relief.

Background. AMG is the publisher of Maxim magazine, a publication with a circulation of over two million. It describes Maxim magazine as a “lifestyle” brand focused on “relationships, sex, sports, cars, fashion, popular culture, health, grooming and appearance, and nightlife.” AMG has had a registered trademark in “Maxim” since 1997 and owns seven U.S. registrations in total.

Corad manufactures antiperspirants to treat hyperhidrosis, a condition causing excessive sweating. It has sold its antiperspirants under the “Maxim” trademark since 2001. In 2003, it obtained a registered trademark in the name “Maxim” for unscented antiperspirants. In the past, Corad has used packaging with a “clinical” look, featuring a medical caduceus and noting the product is “doctor recommended” and “prescription strength.”

Since 2003, it has sold two antiperspirant products for sensitive skin, an unscented roll-on and unscented antiperspirant wipes, in blue boxes with “MAXIM” in white, capital letters and a photo of a man and a woman, along with a caduceus and notes that it is “prescription strength” and “doctor recommended.” Since 2006, Corad has sold its unscented wipes for regular skin in a black box with “MAXIM” in red, capital letters. While that package still contains the caduceus, “prescription strength,” and “doctor recommended” markings, it also includes four pictograms denoting travel, golf, exercise, and gym. Corad has expanded into scented antiperspirant wipes, which it sells in a package with an ® marking, despite the fact scented wipes are outside Corad’s registered trademark for unscented antiperspirants. Corad has agreed to remove that marking from its scented antiperspirants.

Though it had long been aware of Corad’s use of the Maxim trademark, AMG only learned of Corad’s current packaging, which has been in use for years, when it canvassed the marketplace in preparation to launch its own line of scented products. It also only recently became aware that Corad was marketing a scented “Maxim” antiperspirant product. AMG claims Corad’s “new” packaging no longer reflects a medical product, but instead is impermissibly evocative of Maxim magazine’s lifestyle brand by using red letters on a black background, a photo of a couple, and the pictograms. It also alleges that the use of the ® symbol on the scented product constitutes false advertising. Approximately ten weeks after learning of Corad’s packaging and its scented product, it filed this action, alleging trademark and false advertising claims under federal and state law.

Irreparable harm. A party seeking a preliminary injunction must demonstrate: (1) either (a) a likelihood of success on the merits or (b) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in the movant’s favor, and (2) irreparable harm in the absence of the injunction, the court noted.

In Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010), the Second Circuit held that “a court deciding whether to issue an injunction must not adopt ‘categorical’ or ‘general’ rules or presume that a party has met an element of the injunction standard.” Salinger, 607 F.3d at 78 n.7.

AMG asserted that it would be irreparably harmed because Corad’s products would spawn consumer confusion and cause AMG to lose control of its reputation. But that bare bones and conclusory assertion was insufficient in light of Salinger, the court held. AMG put forth no reason to believe irreparable harm would in fact occur.

Moreover, there was good reason to believe AMG would not be harmed without an injunction, the court explained. Corad does very little marketing and directs its products at a small consumer segment. There could be no irreparable harm when very few consumers were likely to encounter Corad’s products, even assuming they did create a likelihood of confusion as to their origin. Indeed, AMG itself, which has a strong interest in surveying the use of the Maxim trademark, did not learn of the allegedly offending packaging for years after it was first used.

The only consumers likely to encounter Corad’s product were hyperhidrosis sufferers. As AMG argued to the Patent and Trademark Office while applying for a registered trademark for scented products, Corad’s product “is not a perfume but a product which is sold to a small group of people who have an excess sweating condition,” the court observed. AMG argued that there was irreparable harm because it now wanted to license a fragranced cosmetic product. But AMG’s own plans would not increase the visibility of Corad’s non-prescription medical products, marketed to a niche group of consumers.

Further, the fact that Corad has used the packaging AMG complains of for years also negated any presumption of an irreparable harm in another way: any harm caused by Corad’s packaging had likely already been inflicted, according to the court. Thus far they have not caused AMG to lose control of its reputation, and there was no reason to believe they have caused customer confusion. It was difficult to see how AMG would now suffer irreparable harm if they remained on the market for the comparatively short time it would take to resolve this case, in the court’s view.

The case is No. 13 Civ. 5438 (WHP).

Attorneys: Arthur J. Jacobs (Jacobs & Burleigh LLP) for Alpha Media Group, Inc. Thomas A. O’Rourke (Bodner & O’Rourke LLP) for Corad Healthcare, Inc.

Companies: Alpha Media Group, Inc.; Corad Healthcare, Inc.

Cases: Trademark NewYorkNews