Equibal, Inc. v. 365 Sun LLC

Background

Equibal, Inc. sells hair-removal and related personal-care products under the “NUFREE” and “NUFREE PROFESSIONAL” marks. Equibal has a federal registration for “NUFREE” and asserted common-law trademark rights in “NUFREE PROFESSIONAL.” It sued 365 Sun LLC doing business as Nutree Cosmetics, Lance Thompson, Natalia Y. Likhacheva, Bruno Borges Garcia, and Chromus Comercial Eirelli. The claims included trademark infringement, unfair competition, and false designation under the Lanham Act; common-law trademark infringement and unfair competition; and violations of New York General Business Law Sections 349 and 350.

The defendants used the “NUTREE Professional” mark on hair-care and hair-treatment products. 365 Sun advertised, sold, and distributed the products in the United States, while Chromus formulated and produced them. Equibal moved under Rule 65 of the Federal Rules of Civil Procedure for a preliminary injunction—a temporary order that would have prohibited the defendants from using the NUTREE mark in commerce while the case continued.

Preliminary-Injunction Standard

The court explained that Equibal had to show either a likelihood of success on the merits or sufficiently serious questions for litigation combined with a balance of hardships strongly favoring Equibal. It also had to show a likelihood of irreparable harm—harm that could not adequately be repaired with money damages—and that an injunction would not harm the public interest. In trademark cases, irreparable harm is generally presumed when the plaintiff shows likely consumer confusion, but that presumption can be rebutted, including by unreasonable delay.

Likelihood of Success and Consumer Confusion

The court accepted that Equibal’s marks were protected. It assumed for purposes of the motion that Equibal had common-law rights in “NUFREE PROFESSIONAL,” and the defendants did not dispute the validity of the federally registered “NUFREE” mark.

The court then applied the eight-factor test used to assess likely consumer confusion:

- Strength of the mark: Strongly favored Equibal. The court found “NUFREE” to be an invented, arbitrary, and fanciful term with no apparent connection to hair-removal products. Its long use, registrations, efforts to oppose competing marks, and Equibal’s estimated $9 million in development, advertising, and sales expenses supported substantial protection. - Similarity of the marks: Favored Equibal, but only weakly. “NUFREE” and “NUTREE” were nearly identical in writing and sound, but their marketplace presentations differed in fonts, colors, packaging, and accompanying words. - Competitive proximity: Favored the defendants weakly. Both product lines were beauty products sold online and to salons or beauty professionals, but Nufree products focused on hair removal and aftercare, while Nutree products focused on hair care and treatment. The products were therefore not in direct competition. - Actual confusion: Favored the defendants. Equibal offered customer inquiries about whether the companies were connected, but the court said those inquiries did not establish actual marketplace confusion affecting purchases. - Bridging the gap: Favored the defendants. Equibal had not shown an intention to expand from hair-removal products into the hair-treatment market. - Bad faith: Favored Equibal only weakly. The court found evidence suggesting the defendants may have known about the NUFREE mark and questioned whether the similar NUTREE mark was coincidental, but it found no more direct evidence of bad faith. - Quality: Neutral. The record did not permit a meaningful comparison of the quality of the products. - Purchaser sophistication: Neutral. The evidence was insufficient to determine how carefully ordinary buyers would select these products.

Overall, the court found a possibility of confusion but not the required probability of confusion. The strong NUFREE mark and striking similarity between the words were outweighed by the different product purposes, different marketplace presentations, and lack of meaningful evidence of actual confusion. Equibal therefore failed to show a likelihood of success on its trademark claims and was not entitled to a presumption of irreparable harm.

Irreparable Harm and Delay

The court separately held that Equibal had not demonstrated irreparable harm. Equibal learned of the NUTREE mark no later than 2021, sent a cease-and-desist letter in May 2021, and filed the lawsuit in July 2021. But it did not seek a preliminary injunction until September 2023.

The court excused much of the delay because difficulties serving the Brazil Defendants meant that all defendants did not appear until May 11, 2023. An injunction issued before then could not have bound parties over whom the court lacked personal jurisdiction. However, Equibal did not adequately explain why it waited more than four months after all defendants appeared to file the motion. The court also noted evidence that Equibal may have known about the defendants’ intended use of the NUTREE mark as early as 2016 through a trademark proceeding in Colombia. The delay rebutted any presumption of irreparable harm.

Disposition

Judge Briccetti denied Equibal’s motion for a preliminary injunction. Because Equibal had not shown likely success on the merits or irreparable harm, the court did not consider the balance of hardships or whether the injunction would serve the public interest. The court instructed the Clerk to terminate the motion. The opinion states that factual findings on a preliminary-injunction motion are not binding and may be changed after a trial on the merits.