NES Baseball & Softball Facility, Inc. v. Northeast Angels Softball, LLC

Background

NES Baseball & Softball Facility, Inc., doing business as Northeast Supreme, operated a baseball and softball training facility and a softball program. Alexandra Yoffee worked with NES as its Head of Softball Operations, although the parties disputed whether she was an employee or an independent contractor. The softball teams were rebranded as the “Northeast Angels,” and the parties disputed whether NES or Alexandra owned that name and its logos.

After negotiations concerning a new softball facility, Alexandra and Joel Yoffee formed Northeast Angels Softball, LLC. The defendants promoted their softball enterprise using the “Northeast Angels” name and logo and provided players with uniforms bearing the “NES” logo. NES alleged that the defendants also accessed and used confidential customer and player information from NES’s password-protected eSoft Planner system. The defendants disputed NES’s description of that information, characterizing the system primarily as a booking and scheduling system.

NES sought a preliminary injunction, which is a court order issued before trial to prevent conduct that may cause harm while the case continues. Its requests covered the alleged trademark infringement and alleged misappropriation of trade secrets.

Trademark claims

The court concluded that NES owned the “NES” and “Northeast Supreme” marks because NES had used them first and continuously in connection with its baseball and softball operations. Although the parties disputed ownership of the “Northeast Angels” marks, the court found that the evidence showed those marks were first created and used to identify and promote NES’s softball division. The court therefore found that NES owned those marks as well.

The court further held that the marks were protectable even though they were unregistered. It determined that the marks were suggestive and inherently distinctive. The court then applied the eight-factor test used to assess whether competing marks are likely to confuse consumers. Similarity of the marks, proximity of the parties’ services, and alleged bad faith favored NES. Strength of the marks, the possibility of expanding into the other party’s market, evidence of actual confusion, and quality were neutral; consumer sophistication favored the defendants.

Overall, the court found that confusion was likely because the defendants used NES’s marks for the same types of youth softball teams and training services. The court therefore concluded that NES was likely to succeed on its trademark infringement claim. That finding created a presumption that NES would suffer harm that could not be adequately repaired later. The defendants did not overcome that presumption. The court also found that the balance of hardships and the public interest favored an injunction against use of the marks.

Trade-secret claims

The court found that NES was unlikely to succeed on its claims under New York law and the federal Defend Trade Secrets Act. To obtain preliminary relief on those claims, NES had to show that the information was a trade secret and that the defendants improperly acquired, used, or disclosed it.

The court assumed for purposes of its analysis that the database contained the information NES described. It nevertheless found that NES had not shown that the information qualified as a trade secret. The players’ names and addresses were readily ascertainable through sources such as team rosters and were known to Alexandra after she coached the players for two years. The pricing information was also not shown to involve a proprietary formula or other distinctive method. NES’s references to detailed service information and other commercially valuable details were too vague. Because NES had not shown a likelihood of success on the trade-secret claim, the court did not address irreparable harm, the balance of hardships, or the public interest for that claim.

Disposition

The court’s conclusion states that NES’s application for a preliminary injunction was “DENIED in Part and GRANTED in part.” The court granted the requests concerning NES’s marks and ordered the defendants to stop using reproductions, counterfeits, copies, or colorable imitations of the marks to identify unauthorized goods or services; stop using the marks or confusingly similar marks in advertising, marketing, sales, services, or sporting events; and stop applying such copies or imitations to materials used in commerce. The court denied the requests concerning the defendants’ alleged misappropriation of trade secrets.