- Court: Intellectual Property Archives
- Area(s) of Law: Trademarks
- Date Filed: 09-29-2014
- Case #: 4:11-cv-04092-SLD-JEH
- Judge(s)/Court Below: United States District Court for the Central District of Illinois, Rock Island Division
- LexisNexis Citation: 2014 U.S. Dist. LEXIS 136933
- Westlaw Citation: 2014 WL 4901683
- Full Text Opinion
Opinion (DARROW): Plaintiff Coach, Inc. (“Coach”) manufacturers and sells handbags, wallets, and accessories. Coach owns several trademarks that are widely recognized as “famous marks.” Defendant Mazhar Nadeem of 3D Designers Inspirations (“3D”) sells accessories such as purses, wallets, and satchels out of a store in South Park Mall in Moline, Illinois. An investigator hired by Coach entered the 3D location and noted that 3D had products depicting Coach trademarks. After analysis, Coach determined that the items were counterfeit. Coach brought suit, claiming that 3D counterfeited and infringed on its trademarks. Coach sought statutory damages and injunctive relief.
The Lanham Act prohibits the use, without the registrant’s consent, of a copy, counterfeit, or imitation of a registered trademark in connection with the advertising or sale of goods or services where such use “is likely to cause confusion, or cause mistake, or to deceive.” To prove trademark infringement, a plaintiff must show that (1) its marks are distinctive enough to be worthy of protection and (2) the defendant’s use of those marks is likely to cause consumers to be confused as to the source of the product.
Where the Lanham Act violation is use of a counterfeit mark, a plaintiff may elect to seek statutory damages. The amount of statutory damages is “not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just.” The Lanham Act also authorizes injunctive relief if a plaintiff demonstrates: (1) it suffered an irreparable injury, (2) remedies available at law are inadequate, (3) the balance of hardships between the plaintiff and defendant warrants equitable relief, and (4) an injunction would not disserve the public interest.
According to the court, Coach’s allegations successfully established that 3D used counterfeit Coach marks in the sale of goods, and that its trademarks are registered and highly distinctive. Therefore, 3D’s use of them was likely to confuse or deceive consumers into believing 3D was selling authentic Coach goods.While Coach argued for $200,000 per each of the two counterfeit marks on the infringing products, for a total award of $800,000, the court concluded that valuing each counterfeit Coach mark at $20,000 was appropriate, and accordingly awarded a total of $80,000 in statutory damages. The court also granted injunctive relief, preventing 3D from continuing its infringing behavior.