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Checker Car Club of America, Inc. v. Fay

United States District Court, N.D. Illinois, Eastern Division

March 22, 2017

CHECKER CAR CLUB OF AMERICA, INC., an Indiana corporation, Plaintiff,
v.
JOSEPH FAY, an individual, d/b/a CHECKER CAB CLUB, Defendant.

          MEMORANDUM OPINION AND ORDER

          Elaine E. Bucklo, United States District Judge

         Plaintiff Checker Car Club of America, Inc. (“Checker Car Club” or “plaintiff”), has sued one of its former members, Joseph Fay (“Fay” or “defendant”), asserting claims for: (1) Unfair Competition under the Lanham Act, 15 U.S.C. § 1125(a); (2) Fraudulent Registration of a Trademark, 15 U.S.C. § 1120; (3) violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d); (4) violation of the Uniform Deceptive Trade Practices Act, 815 ILCS § 510 et seq.; and (5) Tortious Interference with a Business Expectancy under Illinois law. Plaintiff has moved for a temporary restraining order (“TRO”) and a preliminary injunction forbidding defendant's use of its trademarks. For the reasons below, plaintiff's motion for a TRO is denied. Plaintiff's motion for a preliminary injunction is referred to the assigned magistrate judge.

         I.

         The Checker Car Club was founded in 1982, after Checker Motors Corporation discontinued production of its “Checker” automobiles. The club's purpose was to promote “the preservation, enjoyment, and exchange of information about Checker automobiles.” Compl. ¶ 9.[1] Since 1984, plaintiff has published a quarterly newsletter for its members. Plaintiff also has provided services for its members, including administering discount purchasing programs and facilitating car-part information exchanges. Plaintiff also organizes social events, including car shows and conventions. Plaintiff claims that it has used the CHECKER CAR CLUB OF AMERICA and CHECKER CAR CLUB marks in providing these services, and that it has used the CHECKERBOARD NEWS mark in connection with its newsletters.

         Defendant is a former member of the Checker Car Club. At one point, he served as the club's president and as one of its directors. In 2008, he created a Facebook group called the “Facebook Checker Cab Group.” Plaintiff acknowledges that it gave defendant permission to create the page.

         In 2014, plaintiff decided to create a new website and Facebook Page.[2] Initially, there was some talk of using the Facebook Checker Cab Group page created by defendant. At some point, however, relations with defendant soured, ultimately leading to his expulsion from the Checker Car Club in July 2015. On June 27, 2015, plaintiff launched its new website <www.checkerworld.org> and a Facebook Page entitled “Checker World.” The following month, however, defendant registered the domain name <www.checkercabclub.org>. In addition, defendant later obtained a federal trademark registration for the mark CHECKER CAB CLUB. According to plaintiff, defendant procured the trademark by making false statements to the U.S. Patent and Trademark Office (USPTO).

         Since that time, plaintiff alleges that defendant has embarked on a campaign to destroy it. According to the complaint, in September 2015, defendant “fabricated copyright claims” against plaintiff and succeeded in temporarily shutting down plaintiff's website. And in October 2016, defendant used his registration for CHECKER CAB CLUB to temporarily shut down plaintiff's “Checker World” Facebook Page, which he subsequently replaced with an virtually identical “Checker World” Facebook group of his own. In addition, plaintiff alleges that, despite its specific instructions not to do so, defendant downloaded past versions of its newsletter, which he displayed and distributed on his website for free.

         Plaintiffs have moved for a TRO: (1) enjoining defendant from using the CHECKER CAB CLUB, CHECKER WORLD, and the CHECKERBOARD NEWS marks; (2) requiring defendant to shut down his CHECKER WORLD Facebook Page, his Checker Cab Club Facebook Page, and his <checkercabclub.org> domain name; (3) enjoining defendant from undermining their website and social media accounts by filing copyright or trademark-related complaints; and (4) enjoining defendant from reproducing, publicly displaying, and distributing plaintiff's trademarked newsletters.[3] Defendant filed a brief in opposition to plaintiff's motion and a hearing on the motion was held the following day.

         II.

         A temporary restraining order “is an extraordinary and drastic remedy, which should not be granted unless the movant carries the burden of persuasion by a clear showing.” Recycled Paper Greetings, Inc. v. Davis, 533 F.Supp.2d 798, 803 (N.D. Ill. 2008) (citing Goodman v. Illinois Dept. of Fin. & Prof'l Regulation, 430 F.3d 432, 437 (7th Cir. 2005)). A TRO “is warranted if the movant can make a threshold showing: (1) that the movant has some likelihood of success on the merits of the underlying litigation; (2) irreparable harm to the plaintiff; and (3) no adequate remedy at law exists.” Illusions Too Reality, LLC v. City of Harvey, No. 02 C 7272, 2003 WL 260335, at *4 (N.D. Ill. Feb. 4, 2003). “If these three conditions are met, then the Court must balance the harm to the movant if the injunction is not issued against the harm to the defendant if it is issued improvidently and consider the interest of the public in whether the injunction is to be granted or denied.” Id.

         A. Likelihood of Success on the Merits

         To show a likelihood of success on the merits, the moving party must show a “‘better than negligible' chance of success on the merits of at least one of its claims.” Girl Scouts of Manitou Council, Inc. v. Girl Scouts of U.S. of Am., Inc., 549 F.3d 1079, 1096 (7th Cir. 2008). The parties have focused chiefly on plaintiff's unfair competition claim under the Lanham Act (Count I) and its fraudulent trademark registration claim (Count II). I conclude that plaintiff has established a better-than-negligible chance of success on both claims.

         1. Infringement Under the Lanham Act

         “[T]o prove a claim pursuant to 15 U.S.C. § 1125(a), a plaintiff must show (1) that its trademark may be protected and (2) that the relevant group of buyers is likely to confuse the alleged infringer's products or services with those of plaintiff.” H-D Michigan, Inc. v. Top Quality Serv., Inc., 496 F.3d 755, 759-60 (7th Cir. 2007) (quotation marks omitted).

         a. Protection of the Marks

&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;It is undisputed that the CHECKER CAR CLUB, CHECKER CAR CLUB OF AMERICA, and CHECKER WORLD marks are not registered.[4]&ldquo;When the identifying word, term, name, symbol or device claimed as a trade name or mark is not registered with the United States Patent and Trademark Office, the burden is on the claimant ... to establish that it is entitled to protection under &sect; 43(a) of the Lanham Act.&rdquo; Platinum Home Mortg. Corp. v. Platinum Fin. Grp., Inc., 149 F.3d 722, 727 (7th Cir. 1998). &ldquo;In general, the level of trademark protection available corresponds to the distinctiveness of the mark.&rdquo; Id. at 727. Plaintiff asserts that the marks are either inherently distinctive or have become distinctive through use. However, ...


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