Mandell Menkes lawyers forced the voluntary dismissal of a suit for trademark infringement, dilution, unfair competition and palming off filed against a popular culture and entertainment magazine for parents in Chicago. Plaintiff, a free publication for Chicago parents, claimed that the magazine’s use of a phrase that included the publication’s title violated, among other things, the publication’s state trademark rights.
The free publication moved for a preliminary injunction, seeking to enjoin the magazine’s use of the subject phrase in connection with future magazine issues. In response, the magazine argued, among other points, that plaintiff failed to make a showing that it was likely to succeed on the merits of any of its claims because (1) plaintiffs did not own a protectable state trademark (2) there was no likelihood of confusion between the magazine’s phrase and the plaintiff’s publication title and (3) the fair use defense defeated plaintiff’s claims. Plaintiff opted to have the motion for preliminary injunction decided upon the briefing and oral arguments in lieu of responding to the magazine’s expedited discovery or presenting live witnesses at hearing. Following an extended oral argument, the court denied plaintiff’s motion for preliminary injunction, concluding that the evidence presented did not establish that plaintiff had a likelihood of success on the merits. Following the court’s denial of the motion for preliminary injunction, plaintiff voluntarily dismissed all claims against the magazine on December 22, 2010. Mandell Menkes partnerSteven Mandelland associateNatalie Harrisdrafted the preliminary injunction response briefs and argued the motion.