City of New York v. Lopez

Background

The City of New York sued Robert G. Lopez and moved for a preliminary injunction, which is a temporary court order intended to prevent harm while a case is pending. The City alleged that Lopez used “NYC NEW YORK CANNABIS” marks that infringed or diluted several of the City’s federally registered trademarks and violated federal and New York law.

Lopez appeared without a lawyer. After being personally served, he requested and received additional time to respond. He later filed a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), which argues that a complaint does not adequately state a legal claim. He did not file written opposition to the City’s preliminary-injunction motion. The court held a telephone hearing on that motion and then issued this order.

Court’s analysis

The court found that it had jurisdiction over the City’s claims under federal-question and trademark statutes, that it had personal jurisdiction over Lopez, and that venue was proper. It also found that the complaint stated claims for federal trademark infringement, false designation of origin, and unfair competition; New York trademark dilution; and New York common-law trademark infringement and unfair competition.

The court applied the preliminary-injunction factors: likelihood of success on the merits, likelihood of irreparable harm without an injunction, the balance of hardships, and the public interest. It found that the City had shown ownership of valid registered trademarks through registration certificates. The court also found that Lopez used the accused marks in commerce through a retail store, websites, and social-media accounts.

For likelihood of confusion, the court considered the eight factors used in trademark cases. It found that the City’s marks were strong, that Lopez’s marks were virtually identical or substantially indistinguishable, and that both parties sold similar apparel through online and retail channels in the same local market. The court also found that consumer inquiries, the alleged copying, the parties’ products, and the relative sophistication of consumers supported the City’s position. It concluded that the City had demonstrated a likelihood of success and a likelihood of consumer confusion.

The court further found likely irreparable injury. It relied on the City’s showing of likely success and the Trademark Modernization Act’s rebuttable presumption of irreparable harm in this setting. It also concluded that protecting consumers from confusion and protecting federally registered trademarks served the public interest. The court exercised its discretion to require no bond from the City.

Order

The court granted the City’s motion for a preliminary injunction. Pending the final hearing and determination of the action, the order restrained Lopez, his agents, employees, and persons acting with him from using the “NYC NEW YORK CANNABIS” marks or copies and confusingly similar versions of the City’s marks. It also prohibited unauthorized sales, marketing, advertising, packaging, or distribution using those marks; false statements suggesting that Lopez’s goods or services were associated with, approved by, or sponsored by the City; destruction or concealment of relevant products and records; efforts to evade the order; and creation or use of domain names or social-media accounts incorporating the City’s marks or confusingly similar variations.

The order stated that violations could be prosecuted as contempt of court. The Clerk was directed to close the City’s preliminary-injunction motion at Docket 11 and send the order to Lopez by mail and email. The opinion does not state a disposition of Lopez’s separate Rule 12(b)(6) motion.