Pan Albanian Federation of America, VATRA, INC. v. Mirakaj

Background

VATRA sued Augustin Mirakaj and Valentine Lumaj for trademark infringement, defamation, and conspiracy. VATRA alleged that the defendants used VATRA’s mark, including a seal associated with the VATRA Manhattan Branch, and worked to undermine VATRA’s legitimacy. VATRA sought a preliminary injunction—an order requiring or prohibiting conduct before the case reaches a final judgment.

VATRA claimed that the Manhattan Branch had been excluded from the organization for failing to sign a branch agreement, pay dues, and meet membership requirements. Mirakaj disputed that the branch’s license had been revoked and argued that it remained a sanctioned VATRA branch with permission to use the mark. He also disputed the validity of his removal from VATRA. Lumaj stated that he was a former officer of the VATRA Michigan Branch and had no control over the Manhattan Branch’s website.

VATRA asked the court to prohibit both defendants from using or transmitting the VATRA mark, claiming affiliation with VATRA, holding meetings under a VATRA branch name, and making false statements about VATRA or its members. It also asked for orders concerning VATRA property and the Manhattan Branch’s Facebook page. The court had previously denied VATRA’s request for a temporary restraining order and ordered briefing on the preliminary-injunction request.

Legal Standard

To obtain a preliminary injunction, VATRA had to show irreparable harm, a likelihood of success on the merits or serious questions favoring it combined with a strongly favorable balance of hardships, and that an injunction would serve the public interest. Because some requested relief would require Mirakaj to take affirmative action and change the existing situation, the court applied a heightened standard requiring a clear or substantial likelihood of success and a strong showing of irreparable harm.

Trademark Analysis

The court applied the Lanham Act’s trademark-infringement framework, which requires a valid mark entitled to protection and a likelihood that the defendant’s use will cause confusion. It also considered the eight factors commonly used in the Second Circuit to assess likely confusion.

The court found that VATRA’s mark was strong and sufficiently distinctive to receive protection. It also found that VATRA’s seal and the Manhattan Branch seal were naturally similar and that the parties’ services were sufficiently close in the marketplace. Those three factors favored VATRA.

The court found the remaining factors neutral. The parties offered no evidence about a possible expansion into related markets, actual consumer confusion, bad faith in adopting the mark, the relative quality of the services, or the sophistication of relevant consumers. The court also noted that the parties had not adequately briefed bad faith and quality in the context of the confusion analysis.

The court considered whether the Manhattan Branch and Mirakaj had authority to use VATRA’s mark. VATRA presented evidence that its 2022 bylaws required branches to sign an agreement containing a limited, revocable, nonexclusive license to use the mark. VATRA argued that the Manhattan Branch had been excluded for failing to sign that agreement. Mirakaj argued that VATRA had not followed its own procedures for removing the branch or Mirakaj.

The court found some evidence that the mark was being used without a license, but concluded that the evidence was not strong enough to change its assessment of VATRA’s likelihood of success. The court therefore held that VATRA had not shown the clear or substantial likelihood of success required for the requested preliminary injunction. The court did not identify evidence that Lumaj used the mark and considered the infringement and irreparable-harm analysis only as to Mirakaj.

Irreparable Harm and Other Factors

The court also held that VATRA had not made a strong showing of irreparable harm. VATRA relied mainly on the possibility that Mirakaj’s conduct would damage its reputation, including by holding himself out as president of the Manhattan Branch, announcing meetings at VATRA’s main office, interrupting VATRA’s business, and inviting media to an annual conference. The court found VATRA’s assertions about reputational harm conclusory and noted evidence that a VATRA meeting held after the litigation began had strong attendance.

Because VATRA had not shown a clear or substantial likelihood of success or strong irreparable harm, the court found that the balance of hardships did not favor VATRA. It also found that the requested relief primarily affected VATRA, the defendants, and other VATRA members and branches, so VATRA had not shown that an injunction would serve the public interest.

Disposition

The court DENIES Plaintiff’s request for a preliminary injunction. The opinion did not enter a final ruling on VATRA’s trademark, defamation, or conspiracy claims.