MARC P. OSSINSKY ATTORNEY AT LAW WRITING SAMPLE 5

MEMORANDUM IN SUPPORT OF EX PARTE MOTION FOR
PRELIMINARY INJUNCTION AND TEMPORARY RESTRAINING ORDER

I. Preliminary Statement

Plaintiff, MAGNOLIA COLOR, INC. [hereinafter "MC"], is moving for injunctive relief to enjoin the Defendant, MAGNOLIA COLOR PRODUCTIONS, INC.'s (hereinafter MCP), from infringing upon the Plaintiff's common law trademark in the "MAGNOLIA COLOR" and "eye" logo marks pursuant to the Lanham Act, 1946 (15 U.S.C. §1051 et. seq.) and Florida's common law.

II. Background

MC, on its own, has operated "MAGNOLIA COLOR, INC." since 1994, in Altamonte Springs, Florida. See Declaration of Robert J. Wasman (President of MAGNOLIA COLOR, INC.).

The main clientele of the MC is the hospitality and hotel industry. MC produces color printing, brochures, postcards and the like for the hotel and resort industry. Id. Since commencement of operations, MC has included the colorful "eye" logo in its trade dress. Id.

The above services and goods, quality and quantity thereof have at all times been under the control of MC Id.

In an effort to foster, promote and market the "MAGNOLIA COLOR" name, MC has undertaken extensive direct mail advertising to its market of hotels and resorts (see Declaration of Robert J. Wasman ¶3).

MCP has attempted to market its goods and services to MC’s same clientele via the same methods of solicitation (see Declaration and Exhibits attached to Complaint).

As a result of the promotion and advertisement of MC’s goods and services, MC sold over $550,000.00 in color printing to its customers since April 1996 and through 1997 (see Declaration of Robert J. Wasman).

In July 1997, Thomas J. Wasman, while an employee of Plaintiff, had his attorney, Gorham Rutter incorporate MCP (see attached certified copy of Articles of Incorporation). In July 1997, MCP adopted a colorful "eye" logo which is essentially identical to that of Plaintiff (see exhibits attached to Complaint).

In September 1997 MC learned of the infringing practice and trade dress of the Defendant as a result of a circular that was given to Robert J. Wasman, the president of MC by a customer. A copy of such circulars are attached to the Complaint. Thereafter, several other customers approached Mr. Wasman and asked whether MC was related to MCP or what MC’s relationship was to MCP (see Declaration of Robert J. Wasman).

In September 1997, a letter on behalf of MC was sent to MCP by mail demanding that it cease and desist in the further use of the "MAGNOLIA COLOR" or "eye" logo marks in conjunction with its operations in color printing (see Exhibit "D" attached to Complaint). MCP ignored this letter (Declaration of Wasman ¶9).

MCP’s conduct in advertising and marketing color printing services under the name "MAGNOLIA COLOR PRODUCTIONS" is clearly intended to capitalize on the goodwill built up in MC’s name "MAGNOLIA COLOR" and "eye" logo mark, or otherwise confuse the public into believing that MCP is connected, sponsored or authorized to due business by MC.

III. Plaintiff's Request for a Preliminary Injunction

There are four prerequisites for the issuance of a preliminary injunction:

(1) A substantial likelihood that Plaintiff will prevail on the merits;

(2) A substantial threat the Plaintiff will suffer irreparable injury if the injunction is not granted;

(3) The threatened injury to Plaintiff must outweigh the threatened harm the injunction may do to Defendant; and

(4) Granting the preliminary injunction must not disserve the public interest.

Church v. City of Huntsville, 30 F.3d 1332, 1342 (11th Cir. 1994); Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200 (ND Ga. 1995). A party is entitled to a preliminary injunction in a trademark infringement or unfair competition action upon showing of same. Levi Strauss & Co. v. Sunrise International Trading, Inc., 51 F.3d 982, 985 (11th Cir. 1995); National Car Rental System, Inc. v. National Car Sales, Inc., 17 U.S.P.Q. 2d 1959 (M.D. Fla. 1990).

A. Probability of Success

MC makes three claims for trade mark/service mark infringement and dilution against MCP. First, that MCP has committed acts of unfair competition against MC in violation of the Lanham Act, 15 U.S.C. §1125(a). And second, that MCP has infringed upon MC’s common law trademarks in the "MAGNOLIA COLOR" and "eye" logo marks in violation of Florida's common law. Lastly, violation of Fla. Stat. §495.151, Florida’s own anti-dilution statute. Because these claims deal with substantially the same elements, they can be treated together here under the framework of MC’s Lanham Act claim against MCP for unfair competition. La Dove, Inc. v. Playtex Jhirmack, Inc., 1991 U.S. Dist. Lexis 11337; 19 U.S.P.Q 2d 1149 (S.D. Fla. 1991); and Breakers of Palm Beach, Inc. v. International Beach Hotel Development, Inc., 824 F. Supp. 1576 (S.D. Fla. 1993).

The requirements for a claim of unfair competition under the Lanham Act are laid out at 15 U.S.C. §1125(a).

(a) Civil action.

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact,

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, . . .

shall be liable in a civil action by any person who believes that he or she is likely to be damages by such act.

Further, the law is well established that an action for infringement of an unregistered mark may be brought under 15 U.S.C. §1125(a). Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833 (11th Cir. 1983); La Dove, Inc., supra.

To prevail,

under section 1125(a), a plaintiff must demonstrate (1) that it is the prior owner of the trademark, and (2) that the defendant adopted a trademark that is the same or confusingly similar, so that customers likely will be confused about the proper origin of the goods or services, such that a consumer is likely to believe that the defendant's goods or services are being sold with the consent or authorization of the plaintiff, or that the defendant is affiliated with or connected to the plaintiff. Ocean Bio-Chem, Inc. v. Turner Network Television, Inc., 741 F. Supp. 1546 (S.D. Fla. 1990).

There is no question that MC is the prior user of the "MAGNOLIA COLOR" and "eye" logo marks. As shown in the Declaration of Robert J. Wasman, MC has utilized the "MAGNOLIA COLOR" and "eye" logo marks on a variety of goods and services since 1994. In 1996 and 1997 combined, MC sold in excess of $550,000.00 of color printing services, and has undertaken extensive direct mail advertising and salesmen direct solicitation in the marketing of its products and services within the State of Florida and nationwide. In gaining rights to a common law trademark, the Plaintiff is entitled to priority in that area where there has been actual use. "The first to use the mark on a product or service in a particular geographic market, the senior user, acquires rights in the mark in that market." Tally-Ho, Inc., at 1023 [citing Junior Food Stores of West Florida v. Junior Food Stores, Inc., 226 So.2d 393, 396 (Fla 1969)]. As such, there is no question that MC has priority in the "MAGNOLIA COLOR" mark and "eye" logo in Central Florida and in its market nationwide.

The real issue before this Court is whether MCP's use of the mark "Magnolia Color Productions" will cause confusion among the relevant market. See Ocean Bio-Chem, supra.

The Eleventh Circuit has identified which factors should be considered when reviewing whether there exists a likelihood of confusion:

(1) the strength of the plaintiff's mark; (2) the similarity between the plaintiff's mark and the allegedly infringing mark; (3) the similarity between the products and services offered by the plaintiff and defendant; (4) the similarity of the sales methods, i.e., retail outlets or customers; (5) the similarity of advertising methods; (6) the defendant's intent, e.g., does the defendant hope to gain competitive advantage by associating his product with the plaintiff's established mark; and (7) the most persuasive factor on likely confusion is proof of actual confusion.

Conagra, Inc. v. Singleton, 843 F.2d 1508, 1514 (11th Cir. 1984); Jellibeans, Inc. v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 840 (11th Cir. 1983).

The first question to be addressed is the strength of MC’s mark and logo. As noted by the court in Ocean Bio-Chem, trademarks are separated into four categories, in descending order of strength: "arbitrary or fanciful marks, suggestive marks, descriptive marks, and generic marks." Ocean Bio-Chem, at 1554. The operative part of the "MAGNOLIA COLOR" mark are the words MAGNOLIA COLOR.

MC does not sell magnolias or any products relating to paints. Instead, MC is engaged in the business of providing color printing services under the "MAGNOLIA COLOR" name. The market for these goods and services is, however, almost solely the hospitality/hotel/resort industry. As such, the "MAGNOLIA COLOR" mark and "eye" logo are either arbitrary marks or, at the very least, suggestive marks, bringing to mind the market for MC’s products and services.

Arbitrary marks are presumed to be strong marks and inherently distinctive. Jellibeans at 874. Consequently, secondary meaning need not be shown. "A suggestive mark [also] ... does not require a showing of secondary meaning in order to be a valid trademark." Schmidt v. Honeysweet Hams, Inc., 656 F. Supp. 92, (ND Ga. 1986). Whether this Court considers the "MAGNOLIA COLOR" and "eye" logo marks arbitrary or suggestive marks, it should be given wide protection within related markets. See Ocean Bio-Chem, at 1555. Because "MAGNOLIA COLOR" and "eye" logo are strong marks, this factor weighs in MC’s favor.

The next consideration is similarity of the marks. MC’s mark is "MAGNOLIA COLOR". MCP's mark is "MAGNOLIA COLOR PRODUCTIONS". These marks are nearly identical. The fact that the Secretary of State gave MCP a charter under this name provides no rights to the "MAGNOLIA COLOR" name. Davidoff Extension, S.A. v. Davidoff International, Inc., 1983 WL 203 (S.D. Fla. 1983); and Shatterproof Glass Corporation v. R. P. Buckmaster, 256 So. 2d 531 (Fla. 2d DCA 1972). When marks are identical, there is a presumption that confusion will result. In Conagra, Inc. v. Singleton, 743 F.2d 1508, 1514 (1984), the Eleventh Circuit held that it had no problem in finding that the mark "Singleton Packing" was essentially identical to "Singleton Shrimp Boats." See also Safeway Stores, Inc. v. Safeway Discount Drugs, Inc., 675 F.2d 1160, 1165-66 (11th Cir. 1982) (the business name "Safeway Discount Center" or "Drugs" was found to infringe the name "Safeway"; the words "Discount Center" or "Discount Drugs" were found merely descriptive). Sun-Fun Products, Inc. v. Suntan Research & Development, Inc., 656 F. 2d 186 (5^th Cir. 1981) (The competing "Sunbursts" found to be closely similar and infringing). The addition of one word ("Productions") is insufficient as a matter of law to distinguish the marks. Because the marks are nearly identical, this factor also favors MC.

The next three elements, (3) the similarity between the products and services offered by the plaintiff and defendant; (4) similarity in the sales methods; (5) similarity in advertising methods; shall be considered together. MC markets its color printing products and services through various direct mail and direct sales cold calls by its salesmen. All advertising is focused on the hotel and hospitality industry nationwide. Similarly, MCP is offering the same services via direct mail and direct sales cold call by its salesmen to the same market and market areas. Taken as a whole, MCP is offering the same products and services, through identical sales methods to exactly the same audience -- hotels, resorts and the hospitality industry. This is additionally evident from the market materials attached to the Complaint. Because of these similarities, MC’s claim that confusion will result from MCP’s operation of a color printing business under the trademark "Magnolia Color Productions" is substantially strengthened.

The sixth factor is intent. MCP continues to utilize the mark "Magnolia Color Productions" mark and "eye" logo in conjunction with its goods and services. MCP‘s conduct is intentional. As stated in the Declaration of Robert J. Wasman, the Defendant’s principal, Thomas J. Wasman, was a former President of Plaintiff. He was fully aware of the name and logo of Plaintiff before forming the trade dress of the Defendant and its name. Where a party's acts are intentional, the courts have found a presumption that the public is likely to be confused. Nailtiques Cosmetic Corp. v. Salon Sciences, Corp.,1997 W.L. 244746 (S.D. Fla. 1997); Chips 'N Twigs, Inc. v. Chip-Chip, LTD., 414 F. Supp. 1003, 1015 fn. 8 (E.D. PA 1976); Processed Plastic v. Warner Communications, 675 F.2d 852, 857 (7th Cir. 1982). Accord Sun-Fun at 190, where the logo designer had been told to "copy" the bottle. See also National Car Rental, supra.

The final consideration is actual confusion. As noted in Robert J. Wasman’s Declaration, MC has already received several inquires concerning whether MCP was an MC operation.

In consideration of the above, MC should succeed on the merits that "MAGNOLIA COLOR" and "eye" logo are strong marks; that the mark "Magnolia Color Productions" and its "eye" logo are substantially identical to "MAGNOLIA COLOR" and the colorful "eye" logo mark are being utilized on substantially the same services; that the color printing services are being marketed to the same market -- hotels and hospitality industry; and that it appears that MCP has intentionally traded off the "MAGNOLIA COLOR" name and "eye" logo.

B. Inadequacy of Legal Remedy and Irreparable Harm

It is well established that injury arising our of a trademark infringement and public confusion causes irreparable harm. "Courts of this circuit subscribe to the rule that infringement of a trademark is, by its very nature, an activity which causes irreparable harm - irreparable in the sense that no final decree of a court can adequately compensate a plaintiff for the confusion which has already occurred." Council of Better Business Bureau, Inc. v. Better Business Bureau of South Florida, 200 U.S.P.Q. 282 (S.D. Fla. 1978); Tally-Ho, Inc. v. Coast Community College District, 889 F.2d at 1029 (11th Cir. 1989); and National Car Rental, supra.

MC has invested four years (4) in time, money and effort to build up the reputation and good will connected with the "MAGNOLIA COLOR" mark and "eye" logo mark. MC’s good reputation is now subject to the whiles of an interloper who seeks to trade off MC’s name. Clearly this will cause injury and irreparable harm to the Plaintiff.

C. Balance of Hardship

The Plaintiff has requested this Court to enjoin MCP’s operation of a color printing business under the name "Magnolia Color Productions". Should the Court enter an injunction against MCP’s use of the "Magnolia Color" trademark and "eye" logo, MCP can still continue business under another, non-infringing trademark and logo, which will not cause confusion. This hardship is small in comparison to the injury caused to MC by another trading off its name and reputation. Accordingly, the balance of equities weighs heavily in MC’s favor.

D. Public Interest

The trademark law insures protection of the consumer as well as the producer of the products or services. Park N' Fly, Inc. v. Dollar Park and Fly, Inc., 409 U.S. 189, 83 L.Ed.2d 582, 105 S.Ct. 658 (1989). In the present case the hospitality and hotel markets have the right to know with whom they are dealing. Further, MC rather then MCP, is the sole entity with the right to provide color printing services under the name "MAGNOLIA COLOR" and "eye" logo or any substantially similar marks. To prevent MCP from inequitably trading off the "MAGNOLIA COLOR" mark and "eye" logo mark, and further, to prevent further confusion in the market as to who is "MAGNOLIA COLOR", the interests of the public are best served by entry of an injunction.

CONCLUSION

All of the standards for preliminary injunction are satisfied in the instant case. Accordingly, Plaintiff respectfully requests this Court to enter an order and show cause order for preliminary injunction.

Dated this ____ day of May, 1999.

________________________________
Marc P. Ossinsky, Esquire
Florida Bar No. 438588
MARC P. OSSINSKY, P.A.
210 North Wymore Road
Winter Park, FL 32789
(407) 629-2484
Attorney for Plaintiff