Trademark Used to Obtain Preliminary Injunction

Narrow injunction required retailer to clearly associate its online marketing with its brand

A dispute between the SoClean company and one of its former distributors, Sunset, led to a preliminary injunction requiring “Sunset to clearly associate its online marketing and sales . . . with the Sunset brand.” The Federal Circuit affirmed the preliminary injunction.

The products at issue were replacement filters for SoClean devices, which Sunset was selling in competition with SoClean. SoClean alleged that Sunset’s replacement filters infringed SoClean’s patents and a trademark it held on the appearance of its original filters.

SoClean sought a broad injunction to prevent sales of Sunset’s replacement filters. The district court instead crafted a narrow “injunction that prohibits Sunset from engaging in those practices that result in consumer confusion” and enjoined Sunset from marketing its filters “using images of the filter cartridge alone”; “[a]ny image, drawings, or other depictions of Sunset’s filter cartridge used for the purposes of promotion, marketing and/or sales shall prominently display the Sunset brand name in a manner that leaves no reasonable confusion that what is being sold is a Sunset brand filter.”

In challenging the preliminary injunction, Sunset argued that SoClean should not have been awarded a trademark for the configuration of its filter because the configuration lacked a “secondary meaning.” The Federal Circuit faulted Sunset for only attacking the examination of the trademark and not providing sufficient evidence of a lack of a “secondary meaning” to rebut the “prima facie evidence of the validity of the registered mark and of the registration of the mark.” The Federal Circuit also rejected the notion that the district court improperly looked to alternate designs of the filter to conclude that the filter contained non-functional elements, in addition to unprotectable-by-trademark functional elements.

This case shows the benefits and limitations of different types of intellectual property protection. A preliminary injunction based on patents could have resulted in the relief SoClean initially sought, a sales ban. But such injunctions are hard to obtain because of the required showing of likelihood of success on the merits and irreparable harm. A preliminary injunction based on a trademark for a product’s configuration can be easier to obtain. Under the Trademark Modernization Act of 2020, a rebuttable presumption of irreparable harm exists once a trademark holder establishes a likelihood of success on the merits. But such a trademark is limited by looking to the non-functional and functional aspects of the product and the secondary meaning of the appearance of the product. And, in this case, a narrow preliminary injunction directed to eliminating consumer confusion would still allow the sales of competing products. By obtaining alternate types of intellectual property protection, SoClean was able to seek broader relief based on its patents and obtain some preliminary relief based on its trademarks as it presses its patent infringement case against Sunset.