IP Law Daily, TRADEMARK—W.D. Wash.: Continued use of unregistered mark not established, preliminary injunction denied, (Oct 6, 2022)

By Patricia K. Ruiz, J.D.

Unregistered marks may gain Lanham Act protection if the user demonstrates that he or she used the mark first and that such use has continued to the present.

A company purporting to have a protectable interest in a non-registered mark failed to provide evidence of continued use of the mark, the U.S. District Court for the Western District of Washington held, denying the company’s motion for preliminary injunction as to its trademark infringement claim. The court further found that the company failed to show irreparable harm warranting a preliminary injunction (Aesthetic Eye Associates, P.S. v. Alderwood Surgical Center, LLC, October 4, 2022, Lin, T.).

Use of mark by AEA. Aesthetic Eye Associates, P.S. (AEA) sought to enjoin Alderwood Surgical Center, LLC, and Northwest Nasal Sinus Center P.S. from continuing to use the trademark ALLURE in connection with the offering of cosmetic and plastic surgery services at the defendants’ Kirkland, Washington, clinic only. AEA claims to own the ALLURE trademark “because it was the first to use ALLURE for cosmetic surgery services but has not registered the trademark with the U.S. Patent and Trademark Office (PTO), though it did register the trade name “Allure Facial Laser Center and Medispa” with the Washington Department of Licensing in October 2002. AEA claims to have used the ALLURE trademark in commerce since November 2022 and to have thus “gained common law rights and developed extensive goodwill in ALLURE, such that consumers have come to associate it with [AEA] as a source of superior cosmetic surgery products and services.” AEA operates four clinics in Washington, including one in Kirkland.

Alleged infringement. The owner of the defendant companies alleged he has used ALLURE ESTHETIC and ALLURE ESTHETIC PLASTIC SURGERY in connection with his medical practice since 2014 and owns the following federal trademarks: (1) “Allure Esthetic” using standard characters, Reg. No. 5,695,124 (’124) in International Class 44 for “Cosmetic surgery services”; and (2) “A ALLURE ESTHETIC” stylized and/or with design, Reg. No. 5,987,267 (’267) in International Class 44 for “Cosmetic surgery services” and “Online cosmetic skincare consultation services.” The owner stated he was not aware of any competitors using the same or similar mark or of AEA when he applied to register the marks in 2018. The owner acquired the Kirkland clinic in 2020. AEA first learned the defendants were using “Allure Esthetic” and “Allure Esthetic and Design” to market similar procedures within two miles of its Kirkland location around December 2020 and sent a letter requesting they cease use of “the ALLURE name and trademark.”

Lanham Act claim; preliminary injunction. AEA brought a claim under the Lanham Act and sought a preliminary injunction. To establish a claim for trademark infringement under the Lanham Act, a plaintiff must prove (1) an enforceable interest in the mark at issue, and (2) that the defendant’s use of the mark is likely to cause consumer confusion. The Ninth Circuit applies an eight-factor test in assessing whether consumer confusion is likely. Even when these elements are not met, where the balance of hardships tips sharply in favor of a plaintiff, a court may issue a preliminary injunction so long as the plaintiff demonstrates that serious questions going to the merits were raised.

Likelihood of success on the merits. The court first analyzed whether AEA is likely to succeed on the merits of its Lanham Act claim. Registration of a trademark does not create a mark or confer ownership; only use in the marketplace can establish a mark. A qualifying trademark that is not federally registered must still be enforced under Section 43(a) of the Lanham Act, and a non-registrant can rebut the presumption that a registrant owns a mark by demonstrating that he or she used the mark before the mark was registered and that such use has continued to the present. Then, the senior (first) user may enjoin junior users from using confusingly similar marks in the same industry or market or within the senior user’s natural zone of expansion.

AEA alleges it has a valid, protectable interest in the mark as a senior user of ALLURE in connection with cosmetic surgery goods and services, while the defendants contend AEA abandoned its common law rights to the mark through over a decade of nonuse between 2008 and 2021. As the unregistered user, AEA has the burden of establishing continuous use but, in pleadings and motion papers, it provided no evidence of commercial use of any ALLURE-related mark between at least 2011 and 2021. Thus, the court found AEA failed to carry its burden of showing a likelihood of success on its trademark infringement claim.

Irreparable harms. The injuries AEA complained of are harms (1) to its reputation and goodwill and (2) related to having to retain and protect inadvertently disclosed patient health information from defendants’ customers. The court found that AEA failed to demonstrate either of the alleged harms are irreparable. First, AEA made no argument to support a finding of irreparable harm regarding alleged reputational harms or damage to goodwill, instead incorrectly claiming it is statutorily entitled to a rebuttable presumption of harm on its trademark infringement claim. The court was unpersuaded by evidence provided by AEA of two negative online reviews and 55 instances of purported customer or provided confusion, finding that AEA did not prove that the reviews were mistakenly left by the defendants’ customers or that the inconvenience of redirecting confused customers or providers constitutes irreparable non-economic harm. The court further found that AEA failed to establish irreparable harm to the parties’ patients or that such harm satisfies the requirements for a preliminary injunction. Finally, the court found that the balance of hardships did not tip sharply in AEA’s favor. Thus, the court denied AEA’s motion for preliminary injunction.

The case is No. 2:22-cv-00773-TL.

Attorneys: Pam Kohli Jacobson (K&L Gates LLP) for Aesthetic Eye Associates PS. Caleb Bacos (Perkins Coie LLP) for Alderwood Surgical Center LLC and Northwest Nasal Sinus Center P.S.

Companies: Aesthetic Eye Associates PS; Alderwood Surgical Center LLC; Northwest Nasal Sinus Center P.S.

Cases: Trademark WashingtonNews