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UT Court Grants Injunctive Relief to Talisker Corp. in Row over "Talisman" Real Estate Mark
Talisker Corp. v. Jordanelle
No. 2:06-CV-1034 TC, U.S. District Court for the District of Utah, 09/12/2008
Companies Mentioned: Prime West Jordanelle II, LLC, Prime West Jordanelle, LLC, Talisker Corp., Talisker Deer Valley Corp.
Holding
The U.S. District Court for the District of Utah granted injunctive relief to plaintiffs Talisker Corp. and Talisker Deer Valley Corp. (collectively, "Talisker) in their trademark row with defendants Prime West. Both plaintiffs and defendants were engaged in real estate development, but the former sued the latter, claiming that Prime West's mark, "Talisman," infringed their own "Talisker" mark. The district court sided with plaintiffs because there was a strong and substantial likelihood that they would succeed in their infringement claim. Citing court precedents, the district court found that almost all factors used in determining likelihood of confusion, such as degree of similarity of the marks and intent of the alleged infringer, weighed in Talisker's favor. In this regard, an injunction would eliminate any confusion between the Talisman development and Talisker’s developments and facilities. Such an injunction would also enforce Talisker's marks. The district court therefore ruled that issuance of preliminary injunction to be effective immediately upon the posting of a bond.
Detailed Summary
This case involved a dispute involving the “Talisker Trademarks” and the “Talisman Trademark”. Talisker owned and used the Talisker Trademarks in connection with real estate marketing, recreational activities, and other purposes in the area around Park City, Utah. Opinion, p. 1.
On the other hand, defendants Prime West Jordanelle, LLC and Prime West Jordanelle II, LLC (collectively “Prime West”) use the Talisman Trademark in connection with real estate marketing in the same area: Park City, Utah. Id.
Talisker alleged that Prime West’s use of the Talisman Trademark infringed the Talisker Trademarks. Id. Talisker is a real estate developer. Talisker is developing and marketing three residential communities in the area around Park City. Prime West is also a real estate developer and is also developing and marketing a residential community named Talisman near Park City. Id., p. 2.
Presented before the court was Talisker’s motion for a preliminary injunction barring Prime West from continuing to use the Talisman Trademark in marketing its development. Id.
To obtain a preliminary injunction, Talisker must establish that: (1) it will suffer irreparable injury unless the injunction issues; (2) the threatened injury to it outweighs whatever damage the proposed injunction may cause Prime West; (3) its proposed injunction would not be adverse to the public interest if issued; and (4) it has a substantial likelihood of success on the merits of its claims. Id., p. 7, referring to Schrier v. University of Colo., 427 F.3d 1253, 1258 (10th Cir. 2005).
Here, the district court found that Talisker was substantially likely to succeed on the merits of its trademark infringement claim against Prime West. To prove its claim of trademark infringement, Talisker must show that Prime West’s use of the Talisman Trademark is “likely to cause confusion in the marketplace concerning the source of the different products.” Id., p. 8, citing Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 972 (10th Cir. 2002).
The Tenth Circuit uses a six factor test to determine the likelihood of confusion: (1) the degree of similarity between the marks; (2) the intent of the alleged infringer in adopting the mark; (3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks. Id., p. 9, citing Australian Gold, Inc. v. Hatfield, 436 F.3d 1228, 1239-40 (10th Cir. 2006)(citing Sally Beauty, 304 F.3d at 972).
Applying the foregoing test, the district court found that these six factors weighed in Talisker’s favor. Specifically, the first factor, the similarity prong, favored Talisker, because both the Talisker Trademarks and Talisman Trademark were used to market upper end real estate developments in the Park City area. Id., p. 13.
The second factor, evidence of actual confusion, also favored Talisker. In particular, Talisker was able pointed to several anecdotal instances of actual confusion of Talisker and Talisman by people in the Wasatch and Summit County areas. Those confused included acquaintances of people selling Talisman homes, potential Talisker clients, a Wasatch County planner and others.
The district court likewise found the third factor, similarity of products and manner of marketing, weighing in favor of Talisker. Both Talisker and Talisman were real estate developers, and there was strong evidence that Talisker regularly associated its marks with each of its development and facilities.
With regard to the fifth factor – degree of care, the district court found it to be neutral, even though this factor had little or no weight in the district court’s analysis.
The sixth factor – strength or weakness of the marks – likewise weighed in Talisker’s favor. The district court found the Talisker Trademark “quite strong.” Id., p. 15. On the other hand, the strength or weakness of the Talisman Trademark was “unclear to the court.” Id., p. 16.
In granting injunctive relief to Talisker, the district court likewise considered other factors, such as irreparable harm, balance of injuries, and public interest. Such factors also weighed in Talisker’s favor. Specifically, Talisker was able to show irreparable harm here in the form of potential loss of reputation and goodwill by being confused with the Talisman development. Id., pp. 16-17, referring to GTE Corp. v. Williams, 731 F.2d 676, 679 (10th Cir.1984 ). Talisker had the potential injury of losing interested customers to Prime West and would face a loss of good will and reputation by being associated with a competitor. Id.
In this regard, an injunction would eliminate any confusion between the Talisman development and Talisker’s developments and facilities. Consumers would accordingly be better informed about who is developing and marketing which communities in the Park City area. Such an injunction would also enforce the Talisker Trademarks. Id., pp. 17-18.
In view of the foregoing, the district court granted Talisker’s motion for preliminary inunction to be effective immediately upon the posting of a bond.
View a PDF of the judicial opinion.Service
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