EXHIBIT R - Amazon S3 · * * Associate at the firm of Townley & Updike, Associate Member of USTA;...

EXHIBIT R

Case 2:12-cv-01514-LRH-GWF Document 19-7 Filed 11/30/12 of 135

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DELAY IN FILING PRELIMINARYINJUNCTION MOTIONS: HOW LONG IS TOO

LONG?

By Robert Lloyd Raskopf* and Sandra Edelman**

The preparation of a preliminary injunction motion typ-ically requires an enormous expenditure of time and re-sources. Plaintiffs counsel must gather the facts relevant tothe alleged infringement, obtain and assemble the necessaryexhibits and interview knowledgeable witnesses in order topresent the case. This effort may be wasted if the court findsthat the plaintiff has waited too long before taking action.

Responding to a preliminary injunction motion can beequally daunting. While plaintiffs counsel may be able toprepare and time the motion with surgical precision, thedefendant is often caught off-guard, and is usually hamperedby time constraints in fashioning an opposition. Given anappropriate factual context, however, a defendant can neu-tralize the plaintiffs momentum if plaintiff has delayed inseeking preliminary relief. Particularly where the questionof infringement is debatable, inexcusable delay by the plain-tiff can tip the scales from success to failure on the motion.

This article will explore the subject of delay in the con-text of the preliminary injunction motion. Part I of the articlewill explain how the concept of delay fits into the analyticalframework used by the federal courts in ruling on prelimi-nary injunction motions. Part II will discuss how delay ismeasured and offer some general guidelines about excessivedelay. Part III will examine what constitutes excusable delay,with particular emphasis on settlement negotiations andchanges in the scope of the alleged infringement. In an Ap-pendix, we present a survey of cases, arranged by federal

* Partner in the firm of Townley & Updike, New York, N.Y., Associate

Member of USTA; Domestic Articles Editor of The Trademark Reporter®.* * Associate at the firm of Townley & Updike, Associate Member of USTA;

member of the Editorial Board of The Trademark Reporter®.

HeinOnline -- 80 Trademark Rep. 36 1990


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circuit, showing the periods of time which have been held toconstitute excusable and excessive delay in moving for apreliminary injunction.

I. DELAY AS A FACTOR IN DETERMININGPRELIMINARY INJUNCTION MOTIONS IN

TRADEMARK AND UNFAIR COMPETITIONCASES

A preliminary injunction is an extraordinary and drasticremedy,' designed to preserve the status quo pending a finaldetermination of the claims at trial.2 While such relief maybe sought in any federal action,3 it is a frequently-usedweapon in trademark infringement litigation because of theunique function and fragility of a trademark in representingthe intangible assets of good will and reputation.4 In orderto prevent irreparable damage to this good will and repu-tation pending the final outcome of litigation, trademarkowners often seek expedited relief in the form of a prelimi-nary injunction.

Although preliminary injunctions are temporary in na-ture, many trademark infringement actions are resolved bythe court's decision at the preliminary injunction hearing."As a practical matter, a defendant forced to change hisnewly adopted mark will rarely want to re-introduce it ayear or two later if he succeeds at trial or on appeal, espe-

1. Calvin Klein Cosmetics Corp. v. Parfums de Coeur, Ltd., 824 F2d 665,667, 3 USPQ2d 1498, 1500 (CA 8 1987); Citibank, N.A. v. Citytrust, 756 F2d 273,275, 225 USPQ 708, 710 (CA 2 1985); GTE Corp. v. Williams, 731 F2d 676, 678,222 USPQ 803, 804 (CA 10 1984); Dymo Industries Inc. v. Tapeprinter, Inc., 326F2d 141, 143, 140 USPQ 154, 155 (CA 9 1964).

2. Penn v. San Juan Hospital, Inc., 528 F2d 1181, 1185 (CA 10 1975);Hamilton Watch Co. v. Benrus Watch Co., 206 F2d 738, 742 (CA 2 1953); seegenerally 11 C. Wright and A. Miller, Federal Practice & Procedure §2947 (1973).

3. Federal Rules of Civil Procedure (FRCP) 65.

4. Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F Supp414, 429, 206 USPQ 70, 83 (SDNY 1980); see also Salt Water Sportsman Inc. v.B.A.S.S. Inc., 685 F Supp 12, 4 USPQ2d 1407, 1411 (D Mass 1987), as amended5 USPQ2d 1620 (D Mass 1987).



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cially if an alternate mark used during this period hasachieved consumer recognition."' In addition to the financialexpense of changing a product's name, packaging and ad-vertising materials, a defendant's business and good will maybe damaged by perceived instability in a product's trademarkor trade dress.' On the other hand, a plaintiff that fails toobtain a preliminary injunction will usually reassess thestrength of its case and may choose to settle for less than itoriginally contemplated.

Because of the drastic and summary nature of the pre-liminary injunction remedy and its potential destructive im-pact on the defendant's business, the federal courts apply astringent standard to determine whether a preliminary in-junction is appropriate. In the Second Circuit, for example,the movant must demonstrate (1) irreparable harm and (2)either (a) a probability of success on the merits or (b) suffi-ciently serious questions going to the merits to make thema fair ground for litigation and a balance of the hardshipstipping decidedly in the moving party's favor.7 Similar stan-dards have been enunciated in other jurisdictions,8 withmany of the federal circuits specifically requiring the addi-tional showing that preliminary injunctive relief will be inthe public interest.9

The movant's haste in seeking relief is one of the factorsconsidered by the federal courts in determining whether the

5. la J. Gilson, Trademark Protection and Practice §8.0711] at 8-134(1989).

6. Ibid.

7. Church of Scientology International v. Elmira Mission of the Churchof Scientology, 794 F2d 38, 41, 230 USPQ 325, 327 (CA 2 1986); Joseph Scott Co.v. Scott Swimming Pools, Inc., 764 F2d 62, 66, 226 USPQ 496, 500 (CA 2 1985).

8. See, eg, Miss World (UK), Ltd. v. Mrs. America Pageants, Inc., 856F2d 1445, 1448, 8 USPQ2d 1237, 1239 (CA 9 1988); Frisch's Restaurants, Inc. v.Elby's Big Boy of Steubenville Inc., 670 F2d 642, 651, 214 USPQ 15, 22 (CA 61982), affg in part and revg in part 514 F Supp 704, 213 USPQ 559 (SD Ohio1981), cert denied 459 US 916 (1982).

9. See, eg, Mutual of Omaha Insurance Co. v. Novak, 775 F2d 247, 248,227 USPQ 801, 802 (CA 8 1985); SI Handling Systems, Inc. v. Heisley, 753 F2d1244, 1254, 225 USPQ 441, 446 (CA 3 1985); GTE Corp. v. Williams, supra note1 at 677, 222 USPQ at 803; Wesley-Jessen Division of Schering Corp. v. Bausch& Lomb, Inc., 698 F2d 862, 864, 217 USPQ 153, 154 (CA 7 1983).



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"irreparable harm" element of the preliminary injunctionstandard has been satisfied. Delay "undercuts the sense ofurgency that ordinarily accompanies a motion for prelimi-nary relief and suggests that there is, in fact, no irreparableinjury."' ° The movant's delay, however, is only one factor inthe irreparable harm analysis. Because of the immeasurablevalue of trademark rights, most courts have held that ashowing of a likelihood of success on the merits (usuallyconsisting of proof of likely confusion) gives rise to a pre-sumption of irreparable injury." A defendant can rebut thispresumption by demonstrating that a plaintiff has unrea-sonably delayed in seeking preliminary injunctive relief.'2 In

10. Le Sportsac, Inc. v. Dockside Research, Inc., 478 F Supp 602, 609, 205

USPQ 1055, 1062 (SDNY 1979); see also GTE Corp. v. Williams, supra note 1 at678, 222 USPQ at 804; Kusan, Inc. v. Alpha Distributors, Inc., 693 F Supp 1372,1374, 7 USPQ2d 1211, 1213 (D Conn 1988) ("[I]f an aggrieved party rests on his

rights, it is incongruous for him to ask a court to act swiftly and issue an injunctionwithout which irreparable harm will result"); Gear, Inc. v. L.A. Gear California,Inc., 637 F Supp 1323, 1332, 229 USPQ 980, 987 (SDNY 1986) (where plaintiffsare dilatory in seeking preliminary relief, courts have "looked askance at theirassertion that the claimed injury is irreparable").

11. See General Mills, Inc. v. Kellogg Co., 824 F2d 622, 625, 3 USPQ2d1442, 1444 (CA 8 1987); Rodeo Collection, Ltd. v. West Seventh, 812 F2d 1215,1220, 2 USPQ2d 1204, 1208 (CA 9 1987); Camel Hair & Cashmere Institute of

America, Inc. v. Associated Dry Goods Corp., 799 F2d 6, 14, 231 USPQ 39, 44(CA 1 1986); Joseph Scott C. v. Scott Swimming Pools, Inc., supra note 7 at 66,226 USPQ at 500; Wesley-Jessen Division of Schering Corp. v. Bausch & LombInc., supra note 9 at 867, 217 USPQ at 156; Horizon Financial, F.A. v. HorizonBancorp., 2 USPQ2d 1696, 1704 (ED Pa 1987); National Yellow Pages ServiceAssn. v. O'Connor Agency, Inc., 9 USPQ2d 1516, 1521 (CD Calif 1988); TootsieRoll Industries, Inc. v. Sathers, Inc., 666 F Supp 655, 660, 2 USPQ2d 1520, 1522(D Del 1987); Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc.,642 F Supp 1031, 1033, 231 USPQ 850, 851 (ND Ga 1986); American Rice, Inc.v. Arkansas Rice Growers Cooperative Assn., 532 F Supp 1376, 1389, 214 USPQ936, 945 (SD Tex 1982), affd 701 F2d 408, 218 USPQ 489 (CA 5 1983).

12. Citibank, N.A. v. Citytrust, supra note 1 at 276, 225 USPQ at 711

("[s]ignificant delay in applying for injunctive relief in a trademark case tendsto neutralize any presumption that infringement alone will cause irreparableharm pending trial"); see also Majorica, S.A. v. R.H. Macy & Co., 762 F2d 7, 8,226 USPQ 624, 624 (CA 2 1985); GTE Corp. v. Williams, supra note 1 at 678, 222

USPQ at 804; Kusan, Inc. v. Alpha Distributors, Inc., supra note 10 at 1374, 7USPQ2d at 1212; Great Lakes Mink Assn. v. Furrari, Inc., No. 86-6038, slip op(SDNY 12/21/87) (available on LEXIS®); cf Church of Scientology Internationalv. Elmira Mission of the Church of Scientology, supra note 7 at 43, 230 USPQat 328 (emphasis omitted) (in an infringement action between a trademark li-



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some cases, the court may find that the plaintiffs delay,alone, is a sufficient ground for denying a motion for a pre-liminary injunction. 3

A. Delay and Laches-Are They the Same?

The equitable doctrine of laches, which may be raisedas an affirmative defense in trademark and unfair compe-tition actions, is often confused with the issue of delay onpreliminary injunction motions. Correctly applied, laches isa defense which bars permanent injunctive relief upon ashowing of three elements: (1) plaintiffs knowledge of thedefendant's use of the allegedly infringing mark; (2) inex-cusable delay by the plaintiff in taking action; and (3) prej-udice to the defendant if the plaintiff is permitted to assertits rights at the time. 4 Laches thus differs from delay in thatit involves the added factor of prejudice to the defendant.

In Majorica, S.A. v. R.H. Macy & Co.,' 5 the Second Circuitproperly distinguished laches from delay and held that aplaintiffs delay in seeking a preliminary injunction maypreclude a finding of irreparable injury, irrespective ofwhether the defendant is prejudiced by the delay:

Lack of diligence, standing alone is insufficient tosupport a claim of laches; the party asserting the claim

censor and a former licensee, "irreparable harm always flows from unlawful useand confusion").

13. Citibank, N.A. v. Citytrust, ibid; Kusan, Inc. v. Alpha Distributors,Inc., supra note 10 at 1374, 7 USPQ2d at 1213 ("where the delay is significanta court is justified in denying a motion for a preliminary injunction on that basisalone"); Allen Organ Co. v. CBS, Inc., 230 USPQ 479, 480 (SDNY 1986) (movant'seight month delay in seeking relief held fatal to its request for a preliminaryinjunction); see also Helena Rubenstein, Inc. v. Frances Denney, Inc., 286 F Supp132, 134, 159 USPQ 346, 348 (SDNY 1968) ("Delays in seeking preliminary in-junctions have, without more, been held grounds for barring that relief').

14. Olay Co. Inc. v. Cococare Products, Inc., 218 USPQ 1028, 1043 (SDNY1983); see also University of Pittsburgh v. Champion Products Inc., 686 F2d 1040,1044, 215 USPQ 921, 924 (CA 3 1982), cert denied 459 US 1087 (1982); CubanCigar Brands, N.V. v. Upmann International, Inc., 457 F Supp 1090, 1096, 199USPQ 193, 198 (SDNY 1978), affd mem 607 F2d 995 (CA 2 1979).

15. Supra note 12.



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must also establish that it was prejudiced by the delay.Costello v. United States, 365 US 265, 282 (1961). Lackof diligence, standing alone, may, however, preclude thegranting of preliminary injunctive relief, because it goesprimarily to the issue of irreparable harm rather thanoccasioned prejudice. 6

Quoting its earlier opinion in Citibank, N.A. v. Citytrust,"7

the Second Circuit in Majorica also emphasized that a par-ticular period of delay may not be long enough to constitutelaches but may still indicate the absence of irreparable harmrequired to support a preliminary injunction. 8

Although the Second Circuit has drawn a clear line be-tween laches and delay on a preliminary injunction motion,confusion of the two concepts is evident elsewhere. The Sev-enth Circuit, for example, has characterized the issue ofplaintiff's delay in moving for preliminary injunctive reliefas a "laches" defense and has held that the defense maysucceed only if the defendant has been "lulled into a falsesense of security or . . . acted in reliance on the plaintiff'sdelay."' 9 Obviously, in jurisdictions requiring a showing of

16. Id at 8, 226 USPQ at 624.

17. Supra note 1.

18. Majorica S.A. v. R.H. Macy & Co., supra note 12 at 8, 226 USPQ at624; see also Stokely-Van Camp Inc. v. Coca-Cola Co., 2 USPQ2d 1225, 1227 (NDIll 1987) (although three months is "too short of a time for the equitable doctrineof laches to apply, the fact that Stokely waited three months indicated a lack ofa need for the extraordinary remedy of a preliminary injunction").

19. Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F2d 1018, 1025, 204USPQ 177, 184 (CA 7 1979), cert denied 447 US 924 (1980); Helene Curtis In-dustries, Inc. v. Church & Dwight Co. Inc., 560 F2d 1325, 1334, 195 USPQ 218,224 (CA 7 1977), cert denied 434 US 1070, 197 USPQ 592 (1978); see also EarthTechnology Corp. v. Environmental Research Technology, Inc., 222 USPQ 585,587 (CD Calif 1983); Reedco, Inc. v. Hoffmann-La Roche, Inc., 667 F Supp 1072,1082, 2 USPQ2d 1994, 2002 (D NJ 1987) (laches is a defense to a preliminaryinjunction motion when "it appears that a plaintiff has unreasonably delayedapplication for relief and prejudice to opposing parties has thereby resulted");Jordan K. Rand, Ltd. v. Lazoff Bros., Inc., 537 F Supp 587, 594, 217 USPQ 795,801 (D PR 1982) (the defense of laches on a preliminary injunction motion is"reserved for those rare cases where a protracted acquiescence by plaintiff in-duces a defendant to undertake substantial activities in reliance on the acqui-escence"); American Rice, Inc. v. Arkansas Rice Growers Cooperative Assn., supra



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prejudice to the defendant, the issue of plaintiffs delay inseeking relief tends to be less significant in the preliminaryinjunction analysis.

Even in jurisdictions which do not consider the prejudiceto the defendant arising from plaintiffs delay as part of theirreparable harm analysis, the effect of plaintiffs delay maybe factored into a court's evaluation of the balance of hard-ships. In Mego Corp. v. Mattel, Inc.,2 ° the court found thatthe plaintiff had waited until the proverbial "Eleventh Hour"to seek preliminary injunctive relief against defendant'sBATTLESTAR GALACTICA line of toys, by which time de-fendant had committed over seven million dollars to theproduct introduction and was anticipating twenty milliondollars in sales during the imminent pre-Christmas sellingseason." The court denied plaintiffs motion for a prelimi-nary injunction, holding that the failure of the plaintiff toact in timely fashion had caused the balance of hardships totip decidedly in defendant's favor.22

Where a plaintiffs delay has caused substantial hard-ship to the defendant, a court may also strike a compromiseby granting a preliminary injunction which is limited in its

note 11 at 1390, 214 USPQ at 946; Frisch's Restaurants, Inc. v. Elby's Big Boyof Steubenville Inc., supra note 8, 514 F Supp at 711, 213 USPQ at 564.

20. 203 USPQ 377 (SDNY 1978).

21. Id at 382-83.

22. Id at 383; see also Stokely-Van Camp Inc. v. Coca-Cola Co., supra note18 at 1227 (court denied plaintiff's motion for a preliminary injunction wherethe plaintiff waited three months before filing suit while the defendant wasspending substantial amounts to market its product); Racemark International,Inc. v. Speciality Products, Inc., 217 USPQ 772, 781 (NDNY 1982) (during theperiod of the plaintiffs one year delay, the defendant spent over $500,000 on thechallenged mark); Le Cordon Bleu S.a.r.l. v. BPC Publishing Ltd., 327 F Supp267, 270-71, 170 USPQ 477, 479 (SDNY 1971) (preliminary injunction deniedwhere plaintiff, after learning of defendant's alleged infringing cooking courseperiodical, took no action until almost thirteen weeks after defendant's initialannouncement and eight weeks after the appearance of the first issue, duringwhich time defendant had spent in excess of one million dollars in advertisingand initial production costs); Colgate-Palmolive Co. v. North American ChemicalCorp., 238 F Supp 81, 87, 144 USPQ 266, 267 (SDNY 1964) (a defendant veryoften has invested substantial amounts before plaintiff takes final action).



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scope or application .2 3 For example, in Harlequin EnterprisesLtd. v. Gulf & Western Corp.,24 Harlequin's delay in seekingpreliminary relief against the defendant's infringing bookcovers was taken into consideration by the court, which is-sued an injunction that did not prohibit the defendant's con-tinued sale of books already published with the infringingcovers.

25

B. Intentional Copying May Overcome the Effect of Delay

Some courts have held that a plaintiffs delay in movingfor a preliminary injunction will not bar a finding of irrep-arable harm where there is evidence of intentional copyingby the defendant. The genesis of this principle is the opinionwritten over fifty years ago by Judge Learned Hand in My-T Fine Corp. v. Samuels,26 in which the defendant arguedthat plaintiff's two year delay warranted the denial of plain-tiffs preliminary injunction motion.27 Judge Hand held thatthe defense of delay was not available because the defendanthad deliberately copied the plaintiff's trade dress:

[A]dvantages built upon a deliberately plagiarized make-up do not seem to us to give the borrower any standingto complain that his vested interests will be disturbed.Concededly nothing short of abandonment would be adefence at final hearing. . . . No doubt less is necessaryto defeat a preliminary injunction; delay alone may beenough, at least if the original use was innocent. . .But considering the origin of the wrong here, we do notthink that a delay of two years is a defence.2"

23. See, eg, I. Peiser Floors, Inc. v. I.J. Peiser's Sons, Inc., No. 81-3359,slip op (SDNY 10/4/82) (available on LEXIS®) (the court held that plaintiffsdelay would not preclude the grant of a preliminary injunction given the "severelylimited scope and prospective nature of the relief' sought in the motion).

24. 644 F2d 946, 210 USPQ 1 (CA 2 1981).

25. Id at 950, 210 USPQ at 3.

26. 69 F2d 76, 21 USPQ 94 (CA 2 1934).

27. Id at 77, 21 USPQ 94.

28. Id at 78, 21 USPQ at 96 (citations omitted).



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Half a century later, Judge Hand's opinion in My-T Fineremains vital. Indeed, in 1986, the district court in VenturaTravelware Inc. v. A to Z Luggage Co.29 held that My-T Finehad not been superseded by the Second Circuit's 1985 decisionin Citibank, N.A. v. Citytrust, holding that significant delayalone may justify the denial of a preliminary injunction."According to the Ventura court, "[a]lthough in cases of ac-cidental copying, delay in seeking a preliminary injunctionmay negate a finding of irreparable harm, . . . where, ashere, there is sufficient evidence indicating deliberate copy-ing a preliminary injunction may still be warranted."'"

C. Delay: How Significant a Role Does It Play inPreliminary Injunction Motions?

From the foregoing discussion, it should be apparent thatthe plaintiff's delay in filing for relief may play only a minorrole in the court's overall preliminary injunction analysis,particularly where evidence of a likelihood of confusion iscompelling and the defendant has intentionally traded onthe plaintiff's good will and reputation. It is equally apparent,however, that delay can be an important and sometimespivotal factor in a court's decision on a preliminary injunc-tion motion. In some instances, the plaintiffs delay in a casewhich is weak on the merits may provide the court with aclear and convenient reason for denying the relief requested.This somewhat indefinite state of affairs is probably as itshould be-a preliminary injunction is essentially an equi-table device designed to preserve the court's ability to renderjustice after a full trial on the merits. Many factors, all ofvarying degrees of importance depending on the circum-stances, are properly weighed in the balance.

29. 1 USPQ2d 1552 (EDNY 1986) (vacating the magistrate's decision).

30. Id at 1553.

31. Ibid; see also Harlequin Enterprises Ltd. v. Gulf & Western Corp.,supra note 24 at 950, 210 USPQ at 3 (laches not a defense to a preliminaryinjunction motion where defendant intended the infringement); Jordan K. Rand,Ltd. v. Lazoff Bros., Inc., supra note 19 at 594, 217 USPQ at 799 (laches as adefense to a preliminary injunction motion is not available where defendant'sown actions were calculated to trade upon plaintiff's reputation).



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Having generally described the role of delay in the pre-liminary injunction process, we will now attempt to describehow the courts have treated delay as an issue distinct fromthe merits of the infringement analysis.

II. DELAY AS A SEPARATE ISSUE

An Appendix to this article presents a survey of cases,organized by federal circuit, showing the lengths of timewhich have been held to be acceptable and unacceptable onmotions for a preliminary injunction. The period of delay ismeasured from the date of the movant's notice of the de-fendant's alleged infringement to the date the motion forpreliminary relief is filed. While the filing date is readilyascertainable and is never the subject of debate, the date ofplaintiff's "cknowledge" can be controversial.

A. Notice of Infringement

A court may accept the plaintiffs claim of recent notice,even where the defendant has actually been using the markat issue for a year or longer prior to the filing of the prelim-inary injunction motion." A plaintiff will be charged withearlier notice, however, if the court finds that the plaintiffshould have known of the defendant's infringement. In onesuch case, Calvin Klein Co. v. Farah Mfg. Co. Inc.,33 plaintiffCalvin Klein moved in June 1985 for a preliminary injunc-tion against Farah's use of an inverted omega loop pocketstitching design on blue jeans.34 Although Farah had soldover 1.5 million pairs of the jeans at issue beginning October

32. See Cartier, Inc. v. Three Sheaves Co. Inc., 465 F Supp 123, 129, 204USPQ 377, 382 (SDNY 1979) ("[A] party can be accused of laches only if it failsto act after notice. Plaintiffs sought relief as soon as they became aware ofdefendant's existence"); Universal City Studios, Inc. v. Mueller Chemical Co., No.81-5737, slip op (ND Ill 11/24/82) (available on LEXIS®) (preliminary injunctiongranted where the motion was filed two years after defendant's allegedly infring-ing use began but three months after notice by plaintiff).

33. 229 USPQ 795 (SDNY 1985).

34. Id at 795-96.



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1978 to a variety of major department stores, Calvin Kleinclaimed that it did not discover Farah's use of the invertedomega design until 1985, even though it had a security forcecharged with investigating infringements of the Calvin Kleintrademarks. 5 The court denied preliminary injunctive relief,holding:

The Court does not credit the plaintiffs evidencethat Calvin Klein first became aware of Farah's use ofthe inverted omega stitching in 1985. Calvin Klein ischargeable with years of dilatoriness in enforcing itsallegedly protectible mark. In addition, Calvin Klein con-tinued to delay almost seven weeks after filing the com-plaint, to move for a preliminary injunction.3

The failure of a company with significant resources tolearn of an alleged infringement also contributed to the Sec-ond Circuit's denial of a preliminary injunction in Citibank,N.A. v. Citytrust 7 As the court found, "It strains one's cre-dulity to argue that a major financial institution such asCitibank, with all its resources and information sources,could not establish before mid-September 1984 that a poten-tial competitor had opened a branch more than ten weeksearlier near the heart of Citibank territory."3

35. Id at 797-98. Moreover, between 1979 and 1981, Farah actually man-

ufactured jeans for Calvin Klein. Ibid.

36. Id at 801.

37. Supra note 1.

38. Id at 277, 225 USPQ 711; see also Warner Lambert Co. v. McCrory'sCorp., 718 F Supp 389, 12 USPQ2d 1884, 1888 (D NJ 1989) (Warner-Lambert'scontention that it was unaware of McCrory's private label mouthwash found tobe "somewhat doubtful" in light of Warner-Lambert's practice of sending per-sonnel to conduct field checks of retail stores and the unlikelihood that "industryleader Warner-Lambert could have no knowledge that its own customer andmajor retailer, McCrory, was selling a product that Warner-Lambert now con-tends poses the danger of irreparable harm"); Reedco, Inc. v. Hoffmann-La Roche,Inc., supra note 19 at 1081, 2 USPQ2d at 2002 (significant publicity regardingdefendant's application for registration of the name TEGISON and the natureand side effects of the TEGISON drug "establishes the strong possibility thatplaintiffs knew about TEGISON, its uses, and its dangers long before July 1985");Mego Corp. v. Mattel, Inc., supra note 20 at 383 (even if plaintiff did not knowby late spring that BATTLESTAR GALACTICA was the title of defendant's



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Another question to consider with respect to the issueof notice is whether a plaintiff can be charged with delay intaking action against infringers other than the named de-fendant. In one recently decided case, Warner-Lambert Co.v. McCrory's Corp.,39 the New Jersey district court denied amotion for a preliminary injunction against the sale of analleged imitation of LISTERINE mouthwash where Warner-Lambert had not only delayed taking action against Mc-Crory's, but had also known about other private label brandsin "substantially similar" trade dress for years.4" In an earliercase in the same district, however, the court rejected theargument that preliminary relief was barred by plaintiff'sknowledge for a number of years of generic substitutes of itspharmaceutical products in imitative trade dress.41

B. The Length of the Delay-How Long Is Too Long?

Not surprisingly, a review of the cases involving the issueof delay in the preliminary injunction context demonstratesthat the courts do not apply a uniform "cut-off" point todetermine whether a plaintiff has waited too long to seekrelief. A delay of thirteen weeks was held to be too long inLe Cordon Bleu S.a.r.l. v. BPC Publishing Ltd.,42 where thedefendant had already published eleven issues of the weeklycooking periodical at issue and had invested over one milliondollars in start-up costs.43 On the other hand, a delay ofapproximately two years was held to be acceptable in EarthTechnology Corp. v. Environmental Research & Technology,Inc.,44 where most of the movant's delay was found to beattributable to attempts to settle the dispute and the de-

television series, "they should have known this and could have known this,"especially in view of publicity in a "plethora" of trade journals).

39. Supra note 38.

40. Ibid.

41. American Home Products Corp. v. Chelsea Laboratories, Inc., 572 FSupp 278, 283, 219 USPQ 1192, 1197 (D NJ 1982), affd 722 F2d 730 (CA 3 1983).

42. Supra note 22.

43. Id at 270-71, 170 USPQ at 479.

44. Supra note 19.



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fendant could not demonstrate detrimental reliance on thedelay.45

In the Second Circuit, where many of the cases involvingthe issue of delay originate, there are a number of decisionsdenying preliminary injunctive relief in which the plaintiffdelayed filing its motion for periods of time ranging fromthree to ten months.46 Although the decision in Citibank N.A.v. Citytrust has been cited as a denial of preliminary reliefbased on a ten week delay by Citibank,47 the Second Circuitopinion indicates that Citibank had received notice throughthe press of defendant's expansion activities nine monthsprior to the filing of the preliminary injunction motion, afterknowing of defendant's existence in other geographic areasfor decades." Even properly classified as a case involving anine-month delay, Citibank is illustrative of the tendency inthe Second Circuit to excuse only short periods of delay.Nonetheless, there have been exceptions to the general rulein the Second Circuit where preliminary injunctions haveissued despite delays of a year and a half or more.49

45. Id at 587.

46. See, eg, Mathematica Policy Research, Inc. v. Addison-Wesley Pub-lishing Co., Inc., 11 USPQ2d 1391 (SDNY 1989) (ten month delay); Comic Strip,Inc. v. Fox Television Stations, Inc., 710 F Supp 976,981, 10 USPQ2d 1608 (SDNY1989) (seven month delay); Allen Organ Co. v. CBS, Inc., supra note 13 (eightmonths after indirect notice; seven months after direct notice); Le Sportsac, Inc.v. Dockside Research, Inc., supra note 10 (ten month delay); Mego Corp. v. Mattel,Inc., supra note 20 (seven month delay); Gianni Cereda Fabrics, Inc. v. BazaarFabrics, Inc., 335 F Supp 278, 173 USPQ 188 (SDNY 1971) (seven and one-halfmonth delay).

47. Supra note 1; Country Floors, Inc. v. Gepner, 11 USPQ2d 1401, 1405(ED Pa 1989); Mathematica Policy Research, Inc. v. Addison-Wesley PublishingCo., supra note 46; Delmatoff, Gerow, Morris, Langhans, Inc., 12 USPQ2d 1136(DC DC 1989).

48. Citibank, id at 276, 225 USPQ at 711.

49. See, eg, Ventura Travelware Inc. v. A to Z Luggage Co., supra note29 (eighteen month delay did not bar plaintiffs entitlement to a preliminaryinjunction because of defendant's intentional infringement); Colgate PalmoliveCo. v. North American Chemical Corp., supra note 22 at 86 (twenty month delayexcused where defendant intentionally infringed plaintiffs mark); I. PeiserFloors, Inc. v. I.J. Peiser's Sons, Inc., supra note 23 (limited relief granted onpreliminary injunction motion despite two-year delay).



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Although the greatest number of cases denying a pre-liminary injunction with delays of ten months or less are inthe Second Circuit, cases in the Third, Fourth and SeventhCircuits fit within this category as well. For example, inStokely-Van Camp Inc. v. Coca-Cola Co.,5" the federal districtcourt for the Northern District of Illinois declined to granta preliminary injunction where the plaintiff had been awareof Coca-Cola's introduction of REFRESH iced tea for threemonths and knew that large amounts of money were beingspent in connection with the product launch. 1 A seven monthdelay was also deemed too long by the New Jersey districtcourt in Mars, Inc. v. H.P. Mayer Corp.,52 and an eight monthdelay resulted in the denial of preliminary relief by a NorthCarolina federal district court in John Lemmon Films, Inc.v. Atlantic Releasing Corp.53

While it is impossible to harmonize and reconcile all ofthe decisions involving the issue of delay on preliminaryinjunction motions, some general conclusions can be drawn.Three months or less is usually considered acceptable. 4 Be-tween three and six months, the cases begin to diverge.5 Aplaintiff runs a significant risk that a preliminary injunctionmotion will be denied where the delay in seeking relief is

50. Supra note 18.

51. Id at 1226.

52. No. 88-2252 (D NJ 8/19/88) (designated not for publication) (availableon LEXIS®).

53. 617 F Supp 992, 227 USPQ 386 (WD NC 1985).

54. See, eg, Universal City Studios, Inc. v. Mueller Chemical Co. Inc., supranote 32; Louis Rich, Inc. v. Horace W. Longacre, Inc., 423 F Supp 1327, 195 USPQ308 (ED Pa 1976); but see Stokely-Van Camp Inc. v. Coca-Cola Co., supra note18; see also Appendix at the end of this article.

55. Granting a preliminary injunction: Quaker Oats Co. v. Mel AppelEnterprises, Inc., 703 F Supp 1054, 9 USPQ2d 2057 (SDNY 1988) (six monthdelay); Salt Water Sportsman Inc. v. B.A.S.S. Inc., supra note 4 (approximatelya six month delay); C.B. Sports Inc. v. Gaechter-Haber & Associates, Inc., 210USPQ 597 (D Vt 1981) (six month delay); Cyclonaire Corp. v. United StatesSystems, Inc., 209 USPQ 310 (D Kan 1980) (six month delay). Denying a prelim-inary injunction: Nina Ricci S.A.R.L. v. Gemcraft Ltd., 612 F Supp 1520, 226USPQ 575 (SDNY 1985) (five-six month delay); Programmed Tax Systems, Inc.v. Raytheon Co., 419 F Supp 1251, 193 USPQ 435 (SDNY 1976) (four-five monthdelay); see also Appendix.



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between six months and a year,56 and most cases involvinga delay of a year or longer deny preliminary injunctive re-lief," except in jurisdictions which require a showing of prej-udicial delay or in cases where the defendant's intentionalinfringement defeats the defense of delay. 8

III. EXCUSABLE DELAY

In considering the circumstances under which a plain-tiffs delay will bar the issuance of a preliminary injunction,the reasons why the plaintiff waited to seek relief may beas important as how long the plaintiff waited. Put anotherway, a particular period of delay will not necessarily precludea finding of irreparable injury if the court finds the delay tobe excusable.

The two most frequently accepted excuses are (1) ongoingsettlement negotiations and (2) a material escalation in thedefendant's infringing activity. To rely on these excuses, how-ever, a plaintiff must move promptly after settlement dis-cussions reach an impasse or after the plaintiff discovers theincrease in the scope of the defendant's infringement.

A. Settlement Negotiations

Courts encourage the extra-judicial resolution of legaldisputes to spare the resources of the courts and the litigants

56. Denying a preliminary injunction: Citibank, N.A. v. Citytrust, supranote 1 (nine month delay); Mathematica Policy Research, Inc. v. Addison-WesleyPublishing Co., supra note 46 (ten month delay); Mars, Inc. v. H.P. Mayer Corp.,supra note 52 (seven month delay); Allen Organ Co. v. CBS, Inc., supra note 13(seven-eight month delay); see also Appendix.

57. See, eg, GTE Corp. v. Williams, supra note 1 (three year delay); Na-tional Yellow Pages Service Assn. v. O'Connor Agency, Inc., supra note 11 (threeyear delay); Kusan, Inc. v. Alpha Distributors, Inc., supra note 10 (seventeen-eighteen month delay); Gear, Inc. v. L.A. Gear California, Inc., supra note 10(fifteen-sixteen month delay); see also Appendix.

58. See supra notes 19 and 26-31.



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and to ease the burden of overcrowded dockets. 9 Consistentwith this public policy, many courts have issued preliminaryinjunctions despite a delay occurring during the conduct ofsettlement negotiations, 0 even where the settlement nego-tiations were concededly characterized as t desultory." 61 Inone recent case, the court found that the movant had notunreasonably delayed in seeking relief even though seven-teen months had elapsed between the mailing of a protestletter and the filing of a preliminary injunction motion.62 Incontrast, other courts, while acknowledging the need to en-courage the extrajudicial resolution of trademark disputes,have nonetheless held that the delay occurring during set-tlement discussions indicates a lack of irreparable harm."

59. Clark, Inc. v. Resnick, 219 USPQ 619, 624-25 (D RI 1982) ("AlthoughPlaintiff somewhat belatedly seeks a preliminary injunction, the delay is attrib-utable to efforts to resolve this controversy, a practice which certainly shouldnot be discouraged, much less used to defeat a meritorious claim.").

60. See, eg, Central Benefits Mutual Insurance Co. v. Blue Cross & Blue

Shield Assn., 711 F Supp 1423, 11 USPQ2d 1103 (SD Ohio 1989); Earth TechnologyCorp. v. Environmental Research & Technology, Inc., supra note 19 at 587 ("[A]party will not be charged with delay attributable to efforts to settle the dispute");CBS, Inc. v. Springboard International Records, 429 F Supp 563, 569 fn 1, 199USPQ 422, 428 (SDNY 1976) ("It is clear to the Court that the delay in this casewas occasioned by the settlement negotiation which was in progress and not byany unreasonable delay on the part of plaintiffs."); Jon Devlin Dancercise, Inc.v. Dancersize, Inc., 525 F Supp 973, 975, 217 USPQ 748, 749 (SDNY 1981) (theplaintiff is not equitably or legally estopped from asserting its claims againstdefendants where plaintiff consistently asserted its trademark rights againstdefendants during settlement negotiations); Cyclonaire Corp. v. United StatesSystems, Inc., supra note 55 at 312, 316 (delay of six months excused whereplaintiff sent cease and desist letter seven weeks after discovering the infringe-ment and negotiated with defendant for several more months).

61. Clark, Inc. v. Resnick, supra note 59 at 620.

62. Central Benefits Mutual Insurance Co. v. Blue Cross & Blue ShieldAssn., supra note 60; see also Earth Technology Corp. v. Environmental Research& Technology, Inc., supra note 19 at 586 (movant for preliminary injunctive relieffirst contacted the defendant to express concern in February 1981, called thedefendant in December 1981 to advise of its intention to oppose the defendant'sapplication for registration and moved for a preliminary injunction in December1982); Steinway & Sons v. Robert Demars & Friends, 210 USPQ 954, 960-61 (CDCalif 1981) (plaintiff consistently asserted its rights against defendant betweenlate 1978, when plaintiff filed an opposition proceeding in the Patent and Trade-mark Office, and October 1980, when the civil infringement action was filed).

63. See, eg, Mars, Inc. v. H.P. Mayer Corp., supra note 52 ("While this



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A number of courts have denied preliminary injunctiverelief where the plaintiff has either unreasonably delayedfiling a motion after settlement negotiations have brokendown or the plaintiff has simply allowed the discussions togo on too long. For example, the failure to move quickly aftersettlement discussions reached an impasse was largely re-sponsible for the denial of plaintiff's preliminary injunctionmotion in Gear, Inc. v. L.A. Gear California, Inc.' The plain-tiff, owner of the GEAR trademark for luggage, householdproducts and children's clothing, first learned in May 1984that defendant had licensed the L.A. GEAR mark for chil-dren's clothing and wrote a protest letter to defendant inJune 1984. In an exchange of correspondence between Juneand September 1984, defendant disputed plaintiff's claim ofinfringement, refused to discontinue use of L.A. GEAR as atrademark and trade name and indicated its intention topursue registration of the L.A. GEAR mark.65 As the courtobserved, "The battle lines were drawn by the summer of1984; yet plaintiff did not even file suit until the followingJuly, and did not seek preliminary relief until three and one-half months later."'66 Accordingly, the court concluded that"plaintiff's long period of inaction, after defendants indicatedtheir full intention to continue using 'L.A. GEAR,' under-mines its contention that the claimed injuries are irrepa-rable."67

court views settlement negotiations with favor and does not wish to impose anyprejudice upon plaintiff for attempting to amicably resolve this matter withoutjudicial intervention, plaintiffs delay in bringing this application does somewhatundermine its argument of irreparable harm."); cf Nina Ricci S.A.R.L. v. Gem-craft Ltd., supra note 55 at 1530-31, 226 USPQ at 583 (plaintiffs' "inexplicabledelay" in moving for preliminary injunctive relief until six weeks after settlementtalks broke down, coupled with their lack of interest in defendant's product duringthe Christmas selling season "is evidence that little harm is present").

64. Supra note 10.

65. Id at 1332, 229 USPQ at 987.

66. Ibid.

67. Id at 1333, 229 USPQ at 987; see also Delmatoff, Gerow, Morris, Lan-ghans, Inc. v. Children's Hospital National Medical Center, supra note 47 (wherethe parties had been discussing settlement for a year and it was clear after fivemonths that negotiations were likely to fail, plaintiffs' delay in filing a motionfor a preliminary injunction undermines the claim that irreparable harm willresult if such relief is denied); Comic Strip, Inc. v. Fox Television Studios, Inc.,



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In contrast, a preliminary injunction issued in Nature'sBounty, Inc. v. SuperX Drugs Corp.6" where the plaintiff filedsuit on September 14, 1979, entered into settlement negoti-ations with defendant after initiating the action, and thenmoved for a preliminary injunction in January 1980 afterthe negotiations resulted in only partial agreement. 9 Thecourt concluded that the plaintiff had not inexcusably de-layed in presenting its application for preliminary relief sinceit had moved quickly after the negotiations reached an im-passe. °

Even absent a clear and irreconcilable conflict betweenthe parties' settlement positions, it is reasonable to expectthat a party allegedly suffering irreparable injury will movefor expedited relief after the exploration of settlement failsto culminate in an accord after several months.7' As onedistrict court pointed out in denying a preliminary injunc-tion, "It is within the Plaintiffs prerogative to bring the suitwhenever it decides and settlement negotiations could havecontinued after the suit had been filed. 72

B. Escalation in the Scope of Infringement

A plaintiffs delay in moving for a preliminary injunction

supra note 46 at 981, 10 USPQ2d at 1614 (preliminary injunction denied whereplaintiff waited seven months to seek preliminary relief, including three monthsafter its last communications with defendant to settle the dispute); NationalYellow Pages Service Assn. v. O'Connor Agency, Inc., supra note 11 at 1521(plaintiffs three year delay in filing suit and moving for a preliminary injunctionwas not excused by protracted settlement negotiations); John Lemmon Films,Inc. v. Atlantic Releasing Corp., supra note 53 at 996, 227 USPQ at 389 (prelim-inary injunction denied where plaintiff waited seven weeks after learning of thealleged infringement to send a protest letter and then waited another sevenmonths after receiving an unsatisfactory response to the letter before filing suit).

68. 490 F Supp 50, 207 USPQ 263 (EDNY 1980).

69. Id at 55-56, 207 USPQ at 268-69.

70. Id at 56, 207 USPQ at 269.

71. See Louis Rich, Inc. v. Horace W. Longacre, Inc., supra note 54 at1335, 195 USPQ at 314 (plaintiff's eight week effort to amicably resolve thetrademark dispute with defendant, insisting at all times that defendant ceaseusing its mark held to be "'not an inordinate amount of time to delay takingdrastic legal action under such circumstances").

72. National Yellow Pages Service Assn. v. O'Connor Agency, Inc., supranote 11 at 1521.



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may be excused where (1) the evidence shows a history ofslow or modest encroachment followed by an expansion ofthe defendant's activities; and (2) the plaintiff moves quicklyafter learning of the escalation in the level of infringement.For example, in Parrot Jungle, Inc. v. Parrot Jungle, Inc.,73

the defendant opened a PARROT JUNGLE store in Brook-lyn, New York in 1977 and three additional stores in theNew York metropolitan area in 1978. The plaintiff, ownerof a nationally-known tourist attraction in Florida namedPARROT JUNGLE, conceded that it was aware of "perhapsthree stores" by early 1979, but took no action against whatit regarded as a few pet stores.74 However, after learning inlate 1980 that the defendant was embarking on a nationalfranchising program, 5 the plaintiff promptly brought suitand moved for a preliminary injunction. Rejecting the de-fendant's argument that plaintiff had inexcusably delayedin bringing the action, the district court granted plaintiffsmotion, holding:

[T]here is a substantial difference between plaintiff'sawareness of a pet store or stores in New York and itsawareness of a national franchising effort. It was thelatter which triggered plaintiffs prompt assertion of itsrights. A modest encroachment is one thing, a suddenproposed national exploitation of plaintiff's name is quiteanother, and plaintiff's failure to challenge the formerwill not entirely disable plaintiffs from preventing thelatter.

6

The significant expansion of a defendant's business wasalso held to excuse the plaintiffs delay where the defendantannounced a change in activities from operating as a retailflorist to offering a nationwide telemarketing and credit card

73. 512 F Supp 266, 213 USPQ 49 (SDNY 1981).

74. Id at 267-68, 213 USPQ at 50.

75. Id at 268, 270, 213 USPQ at 50, 52.

76. Id at 270, 213 USPQ at 52-53 (citing Miss Universe v. Patricelli, 271F Supp 104, 110, 154 USPQ 334, 337-38 (D Conn 1967), affd 386 F2d 997, 155USPQ 289 (CA 2 1967)).



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program for florists.7 Likewise, where a defendant openedup a new branch of a restaurant in the same part of the cityas plaintiff's restaurant, leading to a significant increase inincidents of actual confusion, plaintiff's failure to move priorto the increased level of confusion did not prevent the is-suance of a preliminary injunction." In both of these cases,the court specifically found that the plaintiff had movedpromptly after discovering the escalation of the alleged in-fringement." In contrast, preliminary injunctive relief wasdenied in Citibank, N.A. v. Citytrust,s ° where Citibank knewin the summer of 1983 of Citytrust's intention to expand itsbanking facilities outside of Connecticut into Citibank's hometerritory of New York, had direct knowledge of Citytrust'sNew York area branch in June 1984, and yet did not movefor a preliminary injunction until ten weeks later.8

A modest encroachment followed by an increased levelof infringing activity can occur not only where a defendantexpands the scope of its business geographically, but alsowhere it initially imitates plaintiff's trademark or trade dressto a limited degree and then increases the level of infringe-ment by more brazen copying of the plaintiff's product. InAmerican Rice, Inc. v. Arkansas Rice Growers Cooperative

77. Floralife, Inc. v. Floraline International, Inc., 633 F Supp 108, 112-13(ND Ill 1985); later proceeding 807 F2d 518, 1 USPQ2d 1132 (CA 7 1986).

78. Calamari Fisheries, Inc. v. Village Catch Inc., 698 F Supp 994, 1014,8 USPQ2d 1953, 1969 (D Mass 1988); see also Horizon Financial, F.A. v. HorizonBancorp., supra note 11 at 1705 (the court granted preliminary injunctive reliefwhere plaintiff, the operator of a Pennsylvania savings association named Ho-rizon Financial, filed a motion for preliminary injunction after defendant, a NewJersey financial institution, moved into Pennsylvania and began heavily pro-moting its name); cf University of Pittsburgh v. Champion Products, Inc., supranote 14 at 1046, 215 USPQ at 926 (in an action for permanent injunctive relief,the court excused the plaintiffs extensive delay where "the character and scopeof the alleged infringement changed substantially over the years from a modestprogram of sales to students and local adherents of the university to a programof national sales aimed at servicing and capitalizing upon Pitt's emergence as anational college football power").

79. Id at 1014, 8 USPQ2d at 1969; Floralife Inc. v. Floraline International,Inc., supra note 77 at 113.

80. Supra note 1.

81. Id at 276, 225 USPQ at 711.



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Assn., 2 the plaintiff ARI sold rice products to the SaudiArabian market under the name Abu Bint (girl brand) in ayellow, red and black box bearing a design of an Orientalgirl.83 The plaintiff took no action when defendant first in-troduced a competitive rice product under the name "Bintal-Arab" in a green and yellow color scheme." Three yearslater, however, the defendant modified its "Bint al-Arab"label to change the color scheme to yellow, red and black.'The court rejected the defendant's argument that plaintiff'sdelay barred its entitlement to a preliminary injunction,finding that ARI filed suit within three weeks of defendant'sintroduction of the modified trade dress.8 6

An escalation in the scope of infringement can also occurwhere defendant expands its product line to include goodsmore closely related to plaintiff's products. The court mustfind, however, that the defendant has in fact made a signif-icant change in the nature of its infringment, thus excusingthe movant's previous inaction. In Gear, Inc. v. L.A. GearCalifornia, Inc.," the court held that the defendant's expan-sion into fabric bags and accessories could not be consideredta qualitative change" in the scope of alleged infringementwhere the plaintiff was previously on notice of the use of theL.A. GEAR mark on children's clothing-a product line di-rectly competitive with plaintiff's line of children's clothing."

C. The Need to Investigate

Courts have excused periods of delay ranging from sevenweeks 9 to six months9 ° where the plaintiff asserted the need

82. Supra note 11.

83. 532 F Supp at 1380-81, 214 USPQ at 938-39.

84. Id at 1382, 1390, 214 USPQ at 940, 946.

85. Id at 1382, 214 USPQ at 940.

86. Id at 1390, 214 USPQ at 946.

87. Supra note 10.

88. Id at 1332-33, 229 USPQ at 987.

89. Quaker Oats Co. v. Mel Appel Enterprises, Inc., supra note 55 at 1062,9 USPQ2d at 2062.

90. C.B. Sports Inc. v. Gaechter-Haber & Associates, Inc., supra note 55



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to investigate the facts and legal theories underlying theclaim of infringement. As one court pointed out, "[p]artiesshould not be encouraged to sue before a practical need todo so has clearly been demonstrated."'" In one recent case,however, the district court declined to excuse a ten monthdelay in moving for a preliminary injunction (including aseven month gap between sending a cease and desist letterand filing suit) where the plaintiff contended it was prudentlywaiting until it could establish a case of infringement.9 2

The need to fully investigate the facts has taken on addedimportance with the emergence of Rule 11 of the FederalRules of Civil Procedure,9 3 and a party which runs too hastilyinto court based on an incomplete understanding of the de-fendant's activities may find itself not only the loser of thepreliminary injunction motion but also the recipient of Rule11 sanctions.94 In one case involving a novel argument underRule 11, a defendant which successfully opposed a prelimi-nary injunction motion asked the court to impose Rule 11

at 599. Although the court in C.B. Sports excused plaintiffs six month delay andgranted plaintiff's motion for a preliminary injunction, the court observed thatthe delay indicated that plaintiff did not consider the ongoing harm caused bydefendant's activities to be very serious. Id at 604 fn 8.

91. Quaker Oats Co. v. Mel Appel Enterprises, Inc., supra note 55 at 1062,9 USPQ2d at 2063 (quoting Horgan v. MacMillan, Inc., 789 F2d 157, 164 (CA 21986)); see also Central Benefits Mutual Insurance Co. v. Blue Cross & BlueShield Assn., supra note 60 at 1434, 11 USPQ2d at 1112 (movant's delay excusedwhere it was conducting settlement negotiations and waiting until it had gatheredsufficient evidence of actual confusion to support injunctive relief); Nintendo ofAmerica, Inc. v. Bay Coin Distributors, Inc., Copyright L Rep (CCH) 25,409(EDNY 1982).

92. Mathematica Policy Research, Inc. v. Addison-Wesley Publishing Co.,Inc., supra note 46; cf Warner-Lambert Co. v. McCrory's Corp., 718 F Supp 389,395, 12 USPQ2d 1884, 1888 (D NJ 1989) (the court denied plaintiffs motion fora preliminary injunction but held that plaintiff should not be penalized for delayspecifically attributable to the conduct of a confusion survey, since "[t]his typeof good faith preparation for litigation should not be used to subsequently barplaintiff from obtaining injunctive relief').

93. FRCP 11

94. In one recent copyright case involving a request for expedited relief,plaintiff's counsel was ordered to pay defendant $1100 in costs and damages,although there was no finding that the plaintiffs misconduct, as perceived bythe court, was the result of haste in seeking preliminary relief. See Warner Bros.,Inc. v. Dae Rim Trading Inc., 877 F2d 1120, 11 USPQ2d 1272 (CA 2 1989).



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sanctions on the plaintiff on the ground that the plaintiffmust have known that a nine month delay would "doom itsapplication for preliminary relief."95 The district court forthe Southern District of New York denied defendant's re-quest, holding that there is no "per se" rule in the SecondCircuit barring an injunction in circumstances involving sub-stantial delay.96

D. Pendency of Proceedings in the Patent and TrademarkOffice

In jurisdictions in which the courts examine not onlythe plaintiff's delay in moving for a preliminary injunctionbut also whether the defendant has relied to its detrimenton plaintiff's inaction,97 the fact that the plaintiff has pre-viously instituted an opposition or cancellation proceedingin the United States Patent and Trademark Office may pre-clude a finding of detrimental reliance.9" As the district courtexplained in Floralife, Inc. v. Floraline International, Inc.:

While a "Notice of Opposition to Registration is not aclaim of infringement," it is "an assertion by the ownerof a trademark that the applicant's proposed mark islikely to confuse the public as to the source of the productor service." Thus, a notice of opposition sufficiently in-forms the registrant of the trademark holder's objectionsand renders unreasonable any detriment the registrantmay suffer in reliance on the plaintiffs delay in filingsuit."°

95. Jewelers of America, Inc. v. Norayr Amirghanyan, No. 86-4371 (SDNY

4/2/87) (available on LEXIS®).

96. Ibid.

97. See supra note 19 and accompanying text.

98. Horizon Financial, F.A. v. Horizon Bancorp., supra note 11 at 1705;Earth Technology Corp. v. Environmental Research & Technology, Inc., supranote 19 at 587; Steinway & Sons v. Robert Demars & Friends, supra note 62 at960-61.

99. Supra note 77,

100. Id at 113 (quoting James Burrough Ltd. v. Sign of the Beefeater, Inc.,572 F2d 574, 578 fn 5, 197 USPQ 277, 279 (CA 7 1978)).



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While the pendency of adversarial proceedings in thePatent and Trademark Office may excuse a plaintiff's delayin moving for a preliminary injunction in some jurisdictions,at least one court has rejected a plaintiff's excuse that itdeferred filing suit until its mark was registered in order toobtain the benefits accompanying federal registration.'01 Asthe court observed, "[b]y waiting for its certificate of regis-tration to issue, the [P]laintiff may have improved its chancesfor a permanent injunction. In so waiting, however, it alsobelied its claim that there is an urgent need for speedy actionto protect its rights.' 10 2

E. Docket Crowding

A plaintiffs inability to obtain an early trial date in along-pending trademark infringement action has also beenheld to excuse a delay in moving for preliminary injunctiverelief.'0 3 In one case, Frisch's Restaurants, Inc. v. Elby's BigBoy of Steubenville Inc.," 4 plaintiff filed suit in November1978 and moved for a preliminary injunction in October 1980when it "became apparent that docket constraints in thedistrict court would preclude a plenary hearing for an ex-tended period of time."'0 5 The Court of Appeals for the SixthCircuit observed that "[]nstead of slumbering on its rights,Frisch's sought to draw the court's attention to its dilemmaas soon as practicable by applying for a preliminary injunc-tion."' 6

101. John Lemmon Films, Inc. v. Atlantic Releasing Corp., supra note 53.

102. Id at 996, 227 USPQ at 389.

103. Volkswagenwerk, G.m.b.H. v. Frank, supra note 103 at 917, 131 USPQat 237 (plaintiff filed suit in May 1960 and moved for preliminary injunctiverelief in October 1961; the court granted plaintiffs motion, holding that "[tihedelay in seeking injunctive relief is explained in terms of belief by plaintiffs thatthe cause would be tried at an earlier date than February 5, 1962, on which dateit is now set for trial on the merits . .

104. Supra note 8.

105. 670 F2d at 652 fn 6, 214 USPQ at 23.

106. Ibid.



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CONCLUSION

The decision to file a motion for a preliminary injunctionin a trademark infringement action usually implicates a va-riety of tactical considerations. In this article we have iso-lated one issue-delay-which can be overlooked or de-emphasized by the plaintiff because it has little bearing onthe substantive merits of the infringement claim itself. Be-cause a presumption of irreparable harm flows from proofof a likelihood of success on the merits, the practitioner'sevaluation of the probability of success of a preliminary in-junction motion tends to be focused on the merits of theinfringement claim. Where there has been delay in movingfor the preliminary injunction, however, a separate evalua-tion of the impact of the delay on the likelihood of successon the motion is in order.

No per se rule can or should govern this issue. Inexcus-able delay in moving for preliminary relief after the initialor escalated infringement has been discovered, or after set-tlement negotiations have irretrievably broken down, clearlycuts against the plaintiff's plea of irreparable harm requiringextraordinary judicial intervention. On the other hand, aplaintiff which explores the possibility of an extra-judicialsettlement of a dispute in an expeditious manner or whichdefers filing the motion until the facts of the defendant'sinfringement are clearly understood should not have to fearthe court's hostility for having waited until the appropriatetime to seek relief.

We have analyzed the factors that courts have addressedin determining whether plaintiff's delay is excusable or ex-cessive. An evaluation of these factors, and any others whichmay bear on the issue of delay in a particular case, shouldbe made in determining whether, under all the circum-stances, plaintiff's delay in seeking a preliminary injunctionwas reasonable.



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APPENDIX

FIRST CIRCUIT

Delay LengthHolding

on Motion

Jordan K. Rand, Ltd.v. Lazoff Bros., Inc.,537 F Supp 587, 217USPQ 795 (D PR1982)

Salt WaterSportsman, Inc. v.B.A.S.S. Inc., 685 FSupp 12, 4 USPQ2d1407 (D Mass 1987),as amended 5USPQ2d 1620 (DMass 1987)

Calamari Fisheries,Inc. v. The VillageCatch, Inc., 698 FSupp 994, 8 USPQ2d1953 (D Mass 1988)

3 months

less than 6 months

21 months after firstuse; 1 month afterexpansion causedincreased level ofconfusion

SECOND CIRCUIT

Majorica, S.A. v. R.H.Macy & Co., 762 F2d7, 226 USPQ 624 (CA2 1985)

Citibank, N.A. v.Citytrust, 756 F2d273, 225 USPQ 708(CA 2 1985)

several years

10 weeks after directnotice of actual use; 9months after notice ofintended use in press;years after notice ofuse in another state

Case

granted

granted

granted

denied

denied



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Case

Harlequin EnterprisesLtd. v. Gulf &Western Corp., 644F2d 946, 210 USPQ 1(CA 2 1981)

Mathematica PolicyResearch, Inc. v.Addison-WesleyPublishing Co. Inc.,11 USPQ2d 1391(SDNY 1989)

Comic Strip, Inc. v.Fox TelevisionStations, Inc., 710 FSupp 976, 10 USPQ2d1608 (SDNY 1989)

Kusan, Inc. V. AlphaDistributors, Inc., 693F Supp 1372, 7USPQ2d 1211 (DConn 1988)

Artemide Spa v.Grandlite Design &Mfg. Co. Inc., 672 FSupp 698, 4 USPQ2d1915 (SDNY 1987)

Great Lakes MinkAssn. v. Furrari, Inc.,No. 86-6038 (SDNY12/21/87) (availableon LEXIS®)

Ventura TravelwareInc. v. A to Z LuggageCo., 1 USPQ2d 1552(EDNY 1986)

Delay Length

6 months after noticeof intended use; 3months after notice ofactual use

10 months

7 months

17-18 months

7 months

20 months

approximately 18months

Holdingon Motion

granted

denied

denied

denied

grantedin part

denied

granted



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Case

Allen Organ Co. v.CBS, Inc., 230 USPQ479 (SDNY 1986)

Gear, Inc. v. L.A.Gear California, Inc.,637 F Supp 1323, 227USPQ 980 (SDNY1986)

Nina Ricci S.A.R.L. v.Gemcraft Ltd., 612 FSupp 1520, 226 USPQ575 (SDNY 1985)Calvin Klein Co. v.Farah Mfg. Co. Inc.,229 USPQ 795 (SDNY1985)

I. Peiser Floors, Inc.v. I.J. Peiser's Sons,Inc., No. 81-3359(SDNY 10/4/82)(available onLEXIS®)

Exxon Corp. v. XoilEnergy Resources,Inc., 552 F Supp 1008,216 USPQ 634 (SDNY1981)

Nike, Inc. v. RubberMfgrs. Assn., 509 FSupp 919, 212 USPQ225 (SDNY 1981)

C.B. Sports Inc. v.Gaechter-Haber &Associates, Inc., 210USPQ 597 (D Vt1981)

Delay Length

7-8 months

17-18 months

4 months from notice,including 6 weeksfrom breakdown ofsettlement talks

7 years of use;plaintiffs claim ofless than 6 monthsnotice rejected

2 years


several months

6 months

Holdingon Motion

denied

denied

denied

denied

granted

denied

granted

granted



Case

Le Sportsac, Inc. v.Dockside Research,Inc., 478 F Supp 602,205 USPQ 1055(SDNY 1979)

Mego Corp. v. Mattel,Inc., 203 USPQ 377(SDNY 1978)

Programmed TaxSystem, Inc. v.Raytheon Co., 419 FSupp 1251, 193 USPQ435 (SDNY 1976)

Le Cordon BleuS.a.r.l. v. BPCPublishing Ltd., 327 FSupp 267, 170 USPQ477 (SDNY 1971)

Gianni CeredaFabrics, Inc. v. BazaarFabrics, Inc., 173USPQ 188 (SDNY1971) (copyright andtrademark claims)

Helena Rubenstein,Inc. v. FrancesDenney, Inc., 286 FSupp 132, 159 USPQ346 (SDNY 1968)

Stix Products, Inc. v.United Merchants &Mfgrs., Inc., 273 FSupp 250, 154 USPQ477 (SDNY 1967)

Delay Length

10 months

7 months after noticeof intended use

4-5 months afteractual notice; 3 yearsafter first use

13 weeks

7-1/2 months

20 months

preliminaryinjunction motionfiled 5 years after suit

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Holdingon Motion

denied

denied

denied

denied

denied

denied

denied



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Case

Goodyear Tire &Rubber Co. v. Toppsof Hartford, Inc., 247F Supp 899, 147USPQ 240 (D Conn1965)

Colgate-Palmolive Co.v. North AmericanChemical Corp., 238 FSupp 81, 144 USPQ266 (SDNY 1964)

Gillette Co. v. EdPinaud, Inc., 178 FSupp 618, 123 USPQ531 (SDNY 1959)

My-T Fine Corp. v.Samuels, 69 F2d 76,21 USPQ 94 (CA 21934)

Delay Length

8-9 years

Holdingon Motion

denied

granted20 months

4-5 years

2 years

denied

granted

THIRD CIRCUIT

Warner Lambert Co.v. McCrory's Corp.,718 F Supp 389, 12USPQ2d 1884 (D NJ1989)

Country Floors, Inc. v.Gepner, 11 USPQ2d1401 (ED Pa 1989)

Mars, Inc. v. H.P.Mayer Corp., No. 88-2252 (D NJ 8/19/88)(available onLEXIS®) (not forpublication)

12 months after firstuse; 5 months afterclaimed actual notice

at least 2 years actualnotice; up to 6 yearsconstructive notice


denied

denied

denied



Case

Reedco, Inc. v.Hoffmann-La Roche,Inc., 667 F Supp 1072,2 USPQ2d 1994 (D NJ1987)

Horizon Financial,F.A. v. HorizonBancorp., 2 USPQ2d1696 (ED Pa 1987)

Louis Rich, Inc. v.Horace W. Longacre,Inc., 423 F Supp 1327,195 USPQ 308 (ED Pa1976)

Delay Length

17 months afteractual notice; yearsafter notice in thepress

13 years use; 8months aftergeographic expansionof defendant's use

2 months

Vol. 80 TMR

Holdingon Motion

denied

granted

granted

FOURTH CIRCUIT

John Lemmon Films, 8 monthsInc. v. AtlanticReleasing Corp., 617F Supp 992, 227USPQ 386 (WD NC1985)

FIFTH CIRCUIT

American Rice, Inc. v.Arkansas RiceGrowers CooperativeAssn., 532 F Supp1376, 214 USPQ 936(SD Tex 1982), affd701 F2d 408, 218USPQ 489 (CA 51983)

3 weeks afterincreased level ofinfringement; 4 yearsafter lessobjectionable use

denied

granted



Vol. 80 TMR

Delay Length

SIXTH CIRCUIT

Holdingon Motion

Frisch's Restaurants,Inc. v. Elby's Big Boyof Steubenville Inc.,514 F Supp 704, 213USPQ 559 (SD Ohio1981), affd 670 F2d642, 214 USPQ 15(CA 6 1982), certdenied 459 US 916(1982)

Central BenefitsMutual Insurance Co.v. Blue Cross & BlueShield Assn., 711 FSupp 1423, 11USPQ2d 1103 (SDOhio 1989)

at least 2 years

18 months

SEVENTH CIRCUIT

Helene CurtisIndustries, Inc. v.Church & Dwight Co.Inc., 560 F2d 1325,195 USPQ 218 (CA 71977), cert denied 434US 1070, 197 USPQ592 (1978)

Ideal Industries, Inc.v. Gardner Bender,Inc., 612 F2d 1018,204 USPQ 177 (CA 71979), cert denied 447US 924, 206 USPQ864 (1980)

suit filed withinweeks of notice;preliminaryinjunction filed 13months later

suit filed 7 monthsafter notice;preliminaryinjunction motionfiled 8 months later

Case

granted

granted

granted

granted



Case

Vaughan Mfg. Co. v.Brikam InternationalInc., 814 F2d 346, 1USPQ2d 2067 (CA 71987)

American AirlinesInc. v. A 1-800-A-M-E-R-I-C-A-N Corp., 622F Supp 673, 228USPQ 225 (ND Ill1985)

Universal CityStudios, Inc. v.Mueller Chemical Co.,No. 81-5737 (ND Ill11/24/82) (availableon LEXIS®)

Floralife, Inc. v.FloralineInternational, Inc.,633 F Supp 108 (NDIll 1985); laterproceeding 807 F2d518, 1 USPQ2d 1132(CA 7 1986)

Stokely-Van CampInc. v. Coca-Cola Co.,2 USPQ2d 1225 (NDIll 1987)

Delay Length

10 months

a few months noticeby high levelemployee; earliernotice by salespersonnel

3 months

at least 3 years noticeof limited use; lessthan 3 weeks afterknowledge ofexpansion of use

3 months

Vol. 80 TMR

Holdingon Motion

granted

granted

granted

granted

denied

EIGHTH CIRCUIT

Mutual of OmahaInsurance Co. v.Novak, 775 F2d 247,227 USPQ 801 (CA 81985)

12 months granted



Vol. 80 TMR

Case Delay Length

NINTH CIRCUIT

National YellowPages Service Assn. v.O'Connor Agency,Inc., 9 USPQ2d 1516(CD Calif 1988)

Earth TechnologyCorp. v.EnvironmentalResearch &Technology, Inc., 222USPQ 585 (CD Calif1983)

Steinway & Sons v.Robert Demars &Friends, 210 USPQ954 (CD Calif 1981)

3 years

Holdingon Motion

denied

2 years granted

2 years granted

TENTH CIRCUIT

GTE Corp. v.Williams, 731 F2d676, 222 USPQ 803(CA 10 1984)

Volkswagenwerk,G.m.b.H. v. Frank,198 F Supp 916, 131USPQ 236 (D Colo1961)

Cyclonaire Corp. v.United StatesSystems, Inc., 209USPQ 310 (D Kan1980)

3 years

17 months afterlawsuit

6 months

denied

granted

granted



Case Delay Length

ELEVENTH CIRCUIT

Original Appalachian 5-10 monthsArtworks, Inc. v.Topps Chewing Gum,Inc., 642 F Supp 1031,231 USPQ 850 (NDGa 1986)

Vol. 80 TMR

Holdingon Motion

granted

D.C. CIRCUIT

Delmatoff, Gerow,Morris, Langhans,Inc. v. Children'sHospital NationalMedical Center, 12USPQ2d 1136 (DC DC1989)

12 months denied



Citation: 85 Trademark Rep. 1 1995

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DELAY IN FILINGPRELIMINARY INJUNCTION MOTIONS:

A FIVE YEAR UPDATEBy Sandra Edelman*

I. INTRODUCTION

Five years ago, The Trademark Reporter® published an articleexamining the subject of delay in the context of a preliminaryinjunction motion.1 The article offered general guidelines fordetermining the length of time that constitutes inexcusable andexcusable delay and analyzed the principal reasons accepted bycourts for the delay. An Appendix to the article presented asurvey of cases, arranged by federal circuit, showing the periodsof time found to be excusable or excessive in moving for apreliminary injunction.

With the passage of time, and the addition of several dozenmore cases to the analysis, the article's basic conclusions remainessentially the same:

(1) A delay of three months or less is usually consideredacceptable.2

(2) Between four and twelve months, the cases diverge.'

* Partner in the firm of Townley & Updike, New York, New York, Associate Memberof the International Trademark Association; member of the Editorial Board of TheTrademark Reporter®.

1. Robert Lloyd Raskopf and Sandra Edelman, Delay in Filing Preliminary InjunctionMotions: How Long Is TIbo Long?, 80 TMR 36 (1990).

2. See, eg, S&R Corp. v. Jiffy Lube International, Inc., 968 F2d 371, 23 USPQ2d 1201(CA 3 1993) (3 month delay); Bausch & Lomb, Inc. v. Nevitt Sales Corp., 810 F Supp 466,26 USPQ2d 1275 (WDNY 1993) (1 month after increased scope of infringement); NationalRural Electric Cooperative Assn. v. National Agricultural Chemical Assn., 26 USPQ2d1294 (DC DC 1992) (several weeks after expansion of infringement); Universal Motor OilsCo. v. Amoco Oil Co., 15 USPQ2d 1613 (D Kan 1990) (3 month delay); see also Appendixat the end of this article ("Appendix").

3. See, eg, Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F Supp 123, 31USPQ2d 1094 (SDNY 1993) (7 month delay; motion granted); Chase Manhattan Corp. v.Northwestern Mutual Life, 1993 WL 60602 (SDNY 1993) (11 month delay; motion denied);W.L. Gore & Associates, Inc. v. btes, Inc., 23 USPQ2d 1091 (D Del 1992) (4 month delay;motion granted); Studio 1712, Inc. v. Etna Products Co., 777 F Supp 844, 22 USPQ2d 1280(D Colo 1991) (10 month delay; motion granted); Lanvin Inc. v. Colonia, 739 F Supp 182(SDNY 1990) (in an action involving breach of a licensing agreement, the court denied a

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(3) In most cases involving a delay of a year or longer,preliminary injunctive relief is denied,4 except whereintentional infringement by the defendant overcomes theadverse effect of the movant's delay.5

(4) Ongoing settlement negotiations6 and changes in the scopeof infringement7 are the reasons most frequently cited bycourts in finding a period of delay to be excusable.

An Updated Appendix to this article includes all of the casesfrom the earlier Appendix, supplemented by cases decided since1989. First, however, it is worth reviewing some recent decisionsthat provide additional insight into how delay is measured,whether preliminary injunction motions may be used as a tacticalmaneuver in ongoing litigation, and what constitutes excusabledelay.

preliminary injunction motion brought over seven months after plaintiff confirmed, by anaudit, its awareness of a violation of the agreement); Century Time Ltd. v. Interchron,729 F Supp 366, 14 USPQ2d 1765 (SDNY 1990) (6 month delay; motion denied); Supercuts,Inc. v. Super Clips, 18 USPQ2d 1378 (D Mass 1990) (10 month delay; motion granted); seealso Appendix.

4. See, eg, TLbmmy Hilfiger U.S.S., Inc. v. Siegfried & Parzifal, Inc., 1994 WL 86398(SDNY 1994) (as much as 2-3 year delay); Jordache Enterprises, Inc. v. Levi Strauss & Co.,841 F Supp 506 (SDNY 1993) (4 year delay); H.G.I. Marketing Services, Inc. v. Pepsico, Inc.,1992 WL 349675 (NDNY 1992) (2-4 year delay); L.G.B., Inc. v. Gitano Group, Inc., 769 FSupp 1236 (SDNY 1991) (18 month delay); American International Group, Inc. v. AmericanInternational Airways, Inc., 726 F Supp 1470, 14 USPQ2d 1933 (ED Pa 1989) (3 yeardelay); see also Appendix.

5. Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F Supp 1339(EDNY 1994) (although plaintiff waited over 3 years to file a preliminary injunction motion,the court granted the motion, citing the defendant's bad faith, fraudulent conduct andintentional misappropriation of plaintiffs good will); see also Grand Lodge Fraternal Orderof Police v. Labor Council Michigan FOP, Inc., 1994 US App LEXIS® 30788 (CA 6 1994)(not for publication) (notwithstanding plaintiffs knowledge for more than two years ofdefendant's infringing use, preliminary injunction granted where defendant had engagedin misleading and possibly fraudulent solicitation of funds),

6. See, eg, Ocean Garden, Inc. v. Marktrade Company, Inc., 953 F2d 500, 21 USPQ2d1493 (CA 9 1991); Rockland Mortgage Corp. v. Shareholder's Funding Inc., 835 F Supp 182,30 USPQ2d 1270 (D Del 1993) (the court held that plaintiffs six month delay was excusablebecause the time was spent, in part, in attempting to resolve the matter without resortingto litigation); American Direct Marketing v. Azad International, Inc., 783 F Supp 84, 22USPQ2d 1108 (EDNY 1992) (concluding that the plaintiff was not likely to succeed on themerits of its claims, the court denied the motion for preliminary injunctive relief, butspecifically found that plaintiffs 3-6 month delay, arising out of reasonable attempts tosettle the matter out of court, did not otherwise undercut plaintiffs entitlement toexpedited relief); Redmond Products, Inc. v. Body Shop, Inc., 20 USPQ2d 1233 (D Minn1991).

7. See, eg, National Rural Electric Cooperative Assn. v. National AgriculturalChemical Assn., supra note 2 at 1298 (although 3 years had elapsed since defendant'sinfringing conduct commenced, the court granted the motion for a preliminary injunctionwhere plaintiff had moved within several weeks of learning that defendant haddramatically expanded its operations); W.L. Gore & Associates, Inc. v. 'Ibtes, Inc, supranote 3 (court found that defendant's false advertising had "inched up" over a 2Y2 yearperiod).



Vol. 85 TMR

A. Measuring the Period of Delay

Delay is generally measured from the date the movant knewor should have known of the defendant's infringement.8 Thisstandard of actual or constructive notice is sometimes difficult toapply. For example, what if the plaintiff learns that the defendantintends to introduce an infringing product but many months passbefore the product is actually introduced to the market? Or, incases of gradual encroachment occurring over a period of monthsor years, what is the triggering event from which the movant'sdelay should be measured?

King v. Innovation Books,9 a suit between the author StephenKing and the producers of the film "The Lawnmower Man,"illustrates the problem that arises when a temporal gap existsbetween the announcement of a defendant's plans and the actualsale of the allegedly infringing product or service. King firstlearned in October 1991, from reading a film magazine, thatdefendant intended to distribute a motion picture using the titleof one of his stories. He promptly wrote a letter objecting to any"possessory credit" for the film.1° A few weeks later, Kingmanaged to secure a copy of the screenplay. The screenplaycontained the objectionable possessory credit, but King was unableto view the film and screen credits until March 1992. Threemonths later, he brought suit and a motion for a preliminaryinjunction under Section 43(a) of the Lanham Act.1"

The Court of Appeals for the Second Circuit affirmed thegrant of a preliminary injunction enjoining the use of possessorycredit, rejecting defendant's contention that King's delay rebuttedthe presumption of irreparable injury. 2 As the court explained,the actions taken by King between October 1991 and June 1992to apprise defendants of his objections and to obtain a copy of thefilm preserved the presumption of irreparable harm."

8. See Paramount Pictures Corp. v. Video Broadcasting Systems Inc, 724 F Supp 808,822, 12 USPQ2d 1862 (D Kan 1989); see also Raskopf and Edelman, supra note 1 at 45-47.

9. 976 F2d 824, 24 USPQ2d 1435 (CA 2 1992).10. Id at 827, 24 USPQ2d 1435.11. Id at 828, 24 USPQ2d 1435.12. Id at 831, 24 USPQ2d 1435.13. Ibid. The court also found that defendants contributed to King's delay in seeking

preliminary injunctive relief by refusing to make the final film version available to him atan earlier point in time. Hoping to stave off a dispute, the defendants declined to assistKing's efforts to view the film before the opening date. Id at 833, 24 USPQ2d 1435;Thomas & Betts Corp. v. Panduit Corp., 1994 US Dist LEXIS® 18113 (ND Ill 1994) (9-10months before moving for preliminary relief, plaintiff heard rumors about defendant'sproduction introduction and brought the motion 3 months after seeing actual productspecimens); see also Mastercard International, Inc. v. Sprint Communications Co., 30USPQ2d 1963, 1966-67 (SDNY 1994) (in dicta, the court found that Mastercard did not haveto take immediate action in mid-1993 when it learned that Sprint planned to promote a



Vol. 85 TMR

The problem of measuring delay in a case of gradualencroachment was addressed in Nabisco Brands, Inc. v. CanusaCorp. 4 Nabisco first contemplated bringing an infringement suitin late 1987, when it learned that Canusa was selling an imitationLIFESAVERS product in the United States. 5 Canusa's sales thendropped off sharply, and Nabisco decided not to pursue thematter.16 Between July and October 1988, Nabisco became awarethat sales had increased and that Canusa had offered to sell theinfringing product to a large LIFESAVERS customer, K-Mart. 7

At that point, Nabisco reconsidered litigation, but did not file suitor seek preliminary injunctive relief until March 1989."

The Nabisco court rejected the proposition that delay mustnecessarily be measured from the date on which the defendantfirst uses the contested mark. Rather, the triggering event is the"date that the defendant's acts first significantly impacted on theplaintiffs goodwill and business reputation."' 19 In this instance,the court concluded that Nabisco was justified in waiting to bringsuit until the defendants' sales had become a competitive threat. °

B. The Preliminary Injunction Motionas a Tactical Maneuver in Ongoing Litigation

In a surprising number of recent cases, the plaintiff com-menced a lawsuit reasonably promptly after learning of aninfringement, but then delayed a significant period of time beforeseeking preliminary injunctive relief. In most cases, the courtgranted the motion, notwithstanding delays ranging from five toseventeen months between actual notice of the infringing act andthe motion for expedited relief.2' In some instances, however, this

calling card at the 1994 World Cup games-allegedly a violation of an exclusive licensegiven to Mastercard-since the games were not set to begin until June 1994).

14. 722 F Supp 1287, 11 USPQ2d 1788 (MD NC), affd mem 892 F2d 74, 14 USPQ2d1324 (CA 4 1989).

15. Nabisco had first learned of defendant's product in 1984 when it was in limiteddistribution in Puerto Rico. At that time, Nabisco initiated an opposition proceedingagainst registration of the product label, but withdrew the proceeding based on defendants'representation that the foray into Puerto Rico was only a test and that they did notanticipate any future endeavor. Id 722 F Supp at 1289, 11 USPQ2d 1788.

16. Id at 1290, 11 USPQ2d 1788.

17. Ibid.

18. Ibid.

19. Id at 1292, 11 USPQ2d at 1792 (quoting 2 J. Thomas McCarthy, Trademarks andUnfair Competition, §31:6 at 570 (2d ed 1984)).

20. Id at 1292, 11 USPQ2d 1788.21. See, eg, Ocean Garden, Inc. v. Marktrade Co. Inc, supra note 6 (complaint filed 4

months after plaintiff learned of defendant's plans to introduce an infringing product;preliminary injunction brought 6 months later: motion granted); Sega Enterprises Ltd. v.Accolade Inc., 785 F Supp 1392, 23 USPQ2d 1440 (ND Calif 1992) (lawsuit brought 1



Vol. 85 TMR 5

litigation strategy led to the denial of the motion.22 In cases wherethe intervening time between complaint and motion was devotedto efforts to negotiate a settlement,23 or where the plaintiffsdiscovery efforts uncovered new circumstances justifying expeditedrelief, the court's decision to excuse the delay is perhaps under-standable. Often, however, the court does not cite any reason forthe plaintiffs failure to seek preliminary injunctive relief at theoutset of litigation, nor does it explain how "irreparable injury"could exist so long after the plaintiff first learned of the defend-ant's infringement.24

Courts in the Second Circuit have taken a dim view of thispractice, particularly when the delayed filing of the preliminaryinjunction motion smacks of tactical maneuvering. For example,in Century Time Ltd. v. Interchron,25 the plaintiff became awareof defendant's allegedly infringing watch products in July 1989; itfiled suit in September 1989, but waited until January 30, 1990 tofile a preliminary injunction motion, four days before an importanttrade show at which plaintiff knew defendant intended to displaythe products at issue.26 In denying the motion, the court chastisedthe plaintiff: "We simply cannot tolerate tactical maneuvering, ininjunction matters, whereby parties sit back and wait for whatthey believe to be timing most injurious to the procedural fairnessfor their adversaries.

27

A stiff rebuke was likewise delivered in a case involving alicensing dispute between the National Football League Player'sAssociation and National Football League Properties, Inc.2" The

months after notice of infringement; preliminary injunction motion brought 3 4 monthslater: motion granted); Transfer Print Foils, Inc. v. Transfer Print America Inc., 720 FSupp 425, 12 USPQ2d 1753 (D NJ 1989) (plaintiff commenced action 5 months after itlearned of defendant's infringing conduct; preliminary injunction motion filed 11 monthslater: motion granted).

22. See, eg, Century Time Ltd. v. Interchron, supra note 3.23. See, eg, Supercuts Inc. v. Super Clips, supra note 3 (delay between commencement

of suit and filing of preliminary injunction motion excused because of settlementnegotiations); P.T.C. Brands, Inc. v. Conwood Co. L.P., 28 USPQ3d 1895 (WD Ky 1993)(preliminary injunction motion filed after expedited discovery).

24. P.T.C. Brands, Inc. v. Conwood Co. L.P., supra note 23 (suit filed 2 months afterplaintiff learned of expansion in infringement; preliminary injunction motion filed 6 monthslater: motion granted); Transfer Print Foils, Inc. v. Transfer Print America Inc, supra note21.

25. Supra note 3.26. Id at 368, 14 USPQ2d 1765.

27. Id at 368, 14 USPQ2d at 1766; see also Wilson-Cook Medical, Inc. v. Wiltex, Inc.,18 USPQ2d 1642, 1644 (CA 4 1991) (Fourth Circuit affirmed the denial of preliminaryinjunctive relief and made note of defendant's argument that plaintiff had "strategically"waited to file suit on the eve of an important medical conference at which defendantplanned to promote its business).

28. 1991 WL 79325 (SDNY 1991).



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Player's Association initially filed and withdrew a motion forpreliminary relief, then later re-filed the motion and twicevoluntarily extended the return date of the later motion.29 Thecourt denied the motion, stating: "[A] motion for a preliminaryinjunction is a request for extraordinary and urgent relief, not acasual entry on the list of litigation strategies to be postponed orrenewed as a carrot or stick depending on the progress of litiga-tion.""

In sum, a mid-litigation preliminary injunction motion can besuccessful, but the plaintiff should have a good reason for nothaving moved at the outset-especially in the Second Circuit.

C. Excusable and Inexcusable Delay

Settlement negotiations and an expansion in the scope ofinfringement continue to lead the list of acceptable excuses fordelay in seeking preliminary injunctive relief. As previouslyindicated,31 however, a plaintiff must move promptly aftersettlement negotiations break down or after it learns of a sig-nificant increase in the defendant's infringing conduct.

For example, in L.G.B., Inc. v. Gitano Group, Inc., 2 thedefendant waited more than a year and a half after the plaintiffinstituted a declaratory judgment action to file a preliminaryinjunction motion. Although part of the eighteen month period ofdelay was occupied by settlement discussions, the court denied themotion, holding that it was doubtful that the settlement negotia-tion period, exceeding a year after the action was commenced,should be subtracted from the period of delay.3 The plaintiff wasalso faulted for waiting an additional four months after advisingthe court that settlement efforts had been exhausted.'

In contrast, a preliminary injunction was granted in NationalRural Electric Cooperative Association v. National AgriculturalChemical Association35 where, notwithstanding plaintiffs threeyears' knowledge of infringing conduct by the defendant on alimited scale, the preliminary injunction motion was brought

29. Id at 3.

30. Ibid.

31. Raskopf and Edelman, supra note 1 at 50-56.

32. Supra note 4.

33. Id at 1242.

34. Ibid; see also Museum Boutique Intercontinental, Ltd. v. Picasso, 1995 US DistLEXIS® 1085 (SDNY 1995) (preliminary injunction denied where parties had been engagedin settlement negotiations for many years).

35. Supra note 2.



Vol. 85 TMR

within a few weeks after plaintiff learned of a dramatic expansionof defendant's operations. 6

The District Court of Colorado was particularly forgiving ofa ten month delay in Studio 1712, Inc. v. Etna Products Co.,37 inwhich the plaintiff pleaded "dire financial circumstances" andplaintiffs counsel stated that he needed to acquaint himself withthe area of law so that he could, consistent with Rule 11, file themotion for preliminary injunctive relief.38 The Southern Districtof New York was considerably less lenient in Chase ManhattanCorp. v. Northwestern Mutual Life,39 in which the plaintiffsexcuses included the need to conduct a survey and its inability tofind out when defendant's allegedly infringing commercials wouldbe broadcast.4 ° Not surprisingly, a plaintiff who claimed he was"too busy to commence a lawsuit,"41 did not obtain emergencyrelief from the court.

II. CONCLUSION

Delay by a plaintiff in moving for a preliminary injunction ina trademark or unfair competition action is only one of manyfactors a court considers in determining whether expedited reliefis appropriate. Nevertheless, it is an important factor, and courtshave consistently required applicants for the extraordinary remedyof a preliminary injunction to demonstrate that relief has beenurgently and quickly sought. Five years since publication of theoriginal article on this subject, the lessons remain the same: adelay of three months or less is generally acceptable, but itbehooves the movant to offer an adequate explanation to justifydelays in the six to twelve month range. Good faith settlementefforts will not be penalized and gradual encroachment on themovant's rights will excuse a delay in seeking expedited relief, butthe plaintiff must move promptly after settlement efforts come to

36. Id at 1298.37. Supra note 3.38. Id at 853, 22 USPQ2d 1280.39. Supra note 3.40. Id at 3-4 (the plaintiff in Chase also sought to justify its delay on the ground that

it was attempting to settle the matter, but the court rejected this excuse as well, observingthat defendant had made it clear to plaintiff at the outset of settlement negotiations thatdefendant did not intend to stop the conduct challenged by plaintiff); cf Lisa Frank, Inc. v.Impact International, Inc., 799 F Supp 980 (D Ariz 1992) (court excused plaintiffs delay inmoving for a preliminary injunction for 3 months after learning of an increase in the scopeof infringement, noting that plaintiff had been busy responding to 453 document requestsand several motions served by defendants).

41. Cuddle Wit, Inc. v. Chan, 14 USPQ2d 1572 (SDNY 1989) (7 month delay in acopyright infringement action).



8 Vol. 85 TMR

naught or after the plaintiff has learned of a qualitative change inthe scope of infringement.



Vol. 85 TMR

UPDATED APPENDIX

First Circuit

Case

Supercuts, Inc. v. Super Clips, 18USPQ2d 1378 (D Mass 1990)

Calamari Fisheries, Inc v. VillageCatch, Inc, 698 F Supp 994, 8USPQ2d 1953 (D Mass 1988)

Salt Water Sportsman, Inc. v.B.A.S.S. Inc., 685 F Supp 12, 4USPQ2d 1407 (D Mass 1987), asamended 5 USPQ2d 1620 (D Mass1987)

Jordan K. Rand, Ltd. v. LazoffBros., Inc., 537 F Supp 587, 217USPQ 795 (D PR 1982)

Delay Length

10 months: suit broughtafter 1 month; motion filed9 months later

21 months after first use; 1month after expansioncaused increased level ofconfusion

less than 6 months

3 months

Second Circuit

King v. Innovation Books, 976 F2d824, 24 USPQ2d 1435 (CA 2 1992)

Majorica, S.A. v. R.H. Macy & Co.,762 F2d 7, 226 USPQ 624 (CA 21985)

Citibank, N.A. v. Citytrust, 756F2d 273, 225 USPQ 708 (CA 21985)

Harlequin Enterprises Ltd. v. Gulf& Western Corp., 644 F2d 946, 210USPQ 1 (CA 2 1981)

My-T Fine Corp. v. Samuels, 69F2d 76, 21 USPQ 94 (CA 2 1934)

11 months from knowledgeof intended use, including3 months from knowledgeof actual use

several years

10 weeks after directnotice of actual use; 9months after notice ofintended use in press;years after notice of use inanother state

6 months after notice ofintended use; 3 monthsafter notice of actual use

2 years

Holdingon Motion

granted

granted

granted

granted

granted

denied

denied

granted

granted



Vol. 85 TMR

Case

Museum Boutique Intercontinental,Ltd. v. Picasso, 1995 US DistLEXIS® 1085 (SDNY 1995)

CBS Inc. v. Liederman, 866 F Supp763, 33 USPQ2d 1333 (SDNY1994), affd 1995 US App LEXIS®1532 (CA 2 1995)

Mastercard International, Inc. v.Sprint Communications Co., 30USPQ2d 1963 (SDNY 1994)

Tommy Hilfiger U.S.S., Inc. v.Siegfried & Parzifal, Inc., 1994 WL86398 (SDNY 1994)

Dial-A-Mattress Operating Corp. v.Mattress Madness, Inc., 841 F Supp1339 (EDNY 1994)

Jordache Enterprises, Inc. v. LeviStrauss & Co., 841 F Supp 506(SDNY 1993)

Kraft General Foods, Inc. v. AlliedOld English, Inc., 831 F Supp 123,31 USPQ2d 1094 (SDNY 1993)

Chase Manhattan Corp. v.Northwestern Mutual Life, 1993WL 60602 (SDNY 1993)

Bausch & Lomb, Inc. v. NevittSales Corp., 810 F Supp 466, 26USPQ2d 1275 (WDNY 1993)

H.G.I. Marketing Services, Inc. v.Pepsico, Inc., 1992 WL 349675(NDNY 1992)

American Direct Marketing v. AzadInternational, Inc., 783 F Supp 84,22 USPQ2d 1108 (EDNY 1992)

MGM Pathe Communications Co. v.Pink Panther Patrol, 774 F Supp869, 21 USPQ2d 1208 (SDNY 1991)

Delay Length

14 years of coexistence,allegedly infringing neweruses found not qualita-tively different from prioruses

11 months from firstknowledge of infringinguse; 3 months afterresponsible parties located

6-9 months fromknowledge of intended use

2-3 years from notice ofinitial elements ofinfringement

3-4 years

4 years

7 months from publicationof defendant's mark

11 months: suit broughtafter 5 months; motionfiled 6 months later

1 month after increasedscope of infringement

2-4 years

3-6 months

6 months

Holdingon Motion

denied

denied (butdelay foundreasonable)

granted(dicta)

denied

granted

denied

granted

denied

granted

denied

denied (butdelay foundexcusable)

granted



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Case

L.G.B., Inc. v. Gitano Group, Inc.,769 F Supp 1236 (SDNY 1991)

National Football League Player'sAssn. v. National Football LeagueProperties, Inc-, 1991 WL 79325(SDNY 1991) (licensing dispute)

Century Time Ltd. v. Interchron,729 F Supp 366, 14 USPQ2d 1765(SDNY 1990)

Lanvin Inc. v. Colonia, 739 F Supp182 (SDNY 1990) (licensing dispute)

Mathematica Policy Research, Inc.v. Addison-Wesley Publishing Co.Inc., 11 USPQ2d 1391 (SDNY 1989)

Comic Strip, Inc. v. Fox TlevisionStations, Inc, 710 F Supp 976, 10USPQ2d 1608 (SDNY 1989)

Kusan, Inc v. Alpha Distributors,Inc, 693 F Supp 1372, 7 USPQ2d1211 (D Conn 1988)

Artemide Spa v. Grandlite Design& Mfg. Co. Ltd., 672 F Supp 698, 4USPQ2d 1915 (SDNY 1987)

Great Lakes Mink Assn. v. Furrari,Inc, No. 86-6038 (SDNY 12/21/87)(available on LEXIS ®)

Ventura Travelware Inc. v. A to ZLuggage Co., 1 USPQ2d 1552(EDNY 1986)

Allen Organ Co. v. CBS, Inc., 230USPQ 479 (SDNY 1986)

Gear, Inc v. L.A. Gear California,Inc., 637 F Supp 1323, 229 USPQ980 (SDNY 1986)

Nina Ricci S.A.R.L. v. GemcraftLtd., 612 F Supp 1520, 226 USPQ575 (SDNY 1985)

Delay Length

18 months

9 months


7 months

10 months

7 months

17-18 months

7 months

20 months

approximately 18 months

7-8 months

17-18 months

4 months from notice,including 6 weeks frombreakdown of settlementtalks

Holdingon Motion

denied

denied

denied

denied

denied

denied

denied

granted inpart

denied

granted

denied

denied

denied



Vol. 85 TMR

Delay LengthHolding

on Motion

Calvin Klein Co. v. Farah Mfg. Co.Ina, 229 USPQ 795 (SDNY 1985)

I. Peiser Floors, Inc. v. I.J. Peiser'sSons, Inc., No. 81-3359 (SDNY10/4/82) (available on LEXIS ®)

Exxon Corp. v. Xoil EnergyResources, Inc., 552 F Supp 1008,216 USPQ 634 (SDNY 1981)

Nike, Inc. v. Rubber Mfrs. Assn.,509 F Supp 919, 212 USPQ 225(SDNY 1981)

C.B. Sports Inc v. Gaechter-Haber& Associates, Inc., 210 USPQ 597(D Vt 1981)

Le Sportsac, Inc. v. DocksideResearch, Inc., 478 F Supp 602, 205USPQ 1055 (SDNY 1979)

Mego Corp. v. Mattel, Inc., 203USPQ 377 (SDNY 1978)

Programmed Tax System, Inc. v.Raytheon Co., 419 F Supp 1251,193 USPQ 435 (SDNY 1976)

Le Cordon Bleu S.a.r.l. v. BPCPublishing Ltd., 327 F Supp 267,170 USPQ 477 (SDNY 1971)

Gianni Cereda Fabrics, Inc v.Bazaar Fabrics, Inc., 173 USPQ 188(SDNY 1971) (copyright andtrademark claims)

Helena Rubenstein, Inc. v. FrancesDenney, Inc., 286 F Supp 132, 159USPQ 346 (SDNY 1968)

Stix Products, Inc. v. UnitedMerchants & Mfrs., Inc., 273 FSupp 250, 154 USPQ 477 (SDNY1967)

Goodyear Tire & Rubber Co. v.Topps of Hartford, Inc., 247 F Supp899, 147 USPQ 240 (D Conn 1965)

7 years of use; plaintiffsclaim of less than 6months notice rejected

2 years


several months

6 months

10 months

7 months after notice ofintended use

4-5 months after actualnotice; 3 years after firstuse

13 weeks

7 1/2 months

20 months

preliminary injunctionmotion filed 5 years aftersuit

8-9 years

Case

denied

granted

denied

granted

granted

denied

denied

denied

denied

denied

denied

denied

denied



Vol. 85 TMR

Case

Colgate-Palmolive Co. v. NorthAmerican Chemical Corp., 238 FSupp 81, 144 USPQ 266 (SDNY1964)

Gillette Co. v. Ed Pinaud, Inc., 178F Supp 618, 123 USPQ 531 (SDNY1959)

Delay Length

20 months

4-5 years

Third Circuit

S&R Corp. v. Jiffy LubeInternational, Inc., 968 F2d 371, 23USPQ2d 1201 (CA 3 1993)

Rockland Mortgage Corp. v.Shareholder's Funding Inc., 835 FSupp 182, 30 USPQ2d 1270 (D Del1993)

Accu Personnel, Inc. v. AccuStaffInc., 823 F Supp 1161, 27 USPQ2d1801 (D Del 1993)

W.L. Gore & Associates, Inc. v.Tbtes, Inc., 23 USPQ2d 1091 (D Del1992)

Warner Lambert Co. v. McCrory'sCorp., 718 F Supp 389, 12 USPQ2d1884 (D NJ 1989)

American International Group, Inc.v. American International Airways,Inc., 726 F Supp 1470, 14 USPQ2d1933 (ED Pa 1989)

Transfer Print Foils, Inc. v.Transfer Print America, 720 FSupp 425, 12 USPQ2d 1753 (D NJ1989)

Country Floors, Inc. v. Gepner, 11USPQ2d 1401 (ED Pa 1989)

Mars, Inc. v. H.P. Mayer Corp.,1988 US Dist LEXIS® 9069 (D NJ1988) (not for publication)

3 1/2 months


9 months after knowledgeof intended use, including2 months after knowledgeof expanded activity

4 months after increasedscope of activity

12 months after first use; 5months after claimedactual notice

3 years


at least 2 years actualnotice; up to 6 yearsconstructive notice


Holdingon Motion

granted

denied

granted

granted

granted

granted

denied

denied

granted

denied

denied



Vol. 85 TMR

Delay Length

Reedco, Ina v. Hoffmann-La Roche,Inc., 667 F Supp 1072, 2 USPQ2d1994 (D NJ 1987)

Horizon Financial, F.A. v. HorizonBancorp., 2 USPQ2d 1696 (ED Pa1987)

Louis Rich, Inc. v. Horace W.Longacre, Inc., 423 F Supp 1327,195 USPQ 308 (ED Pa 1976)

17 months after actualnotice; years after notice inthe press

13 years use; 8 monthsafter geographic expansionof defendant's use

2 months

Fourth Circuit

Wilson-Cook Medical, Ina v.Wiltex, Inc., 18 USPQ2d 1642 (CA4 1991)

Rubbermaid Commercial Products,Inc. v. Contico International, Inc.,836 F Supp 1247, 29 USPQ2d 1574(WD Va 1993) (design patent andtrade dress case)

Nabisco Brands, Inc. v. ConusaCorp., 722 F Supp 1287, 11USPQ2d 1788 (MD NC 1989), affdmem 892 F2d 74, 14 USPQ2d 1324(CA 4 1989)

John Lemmon Films, Inc. v.Atlantic Releasing Corp., 617 FSupp 992, 227 USPQ 386 (WD NC1985)

1 year

almost 2 years, including 8months after issuance ofdesign patent

denied

granted

5-8 months from increase grantedin scope of infringement

8 months denied

Fifth Circuit

TJM Corp. v. Xerox Corp., 25USPQ2d 1067 (ED La 1992)

American Rice, Inc. v. ArkansasRice Growers Cooperative Assn.,532 F Supp 1376, 214 USPQ 936(SD Tex 1982), affd 701 F2d 408,218 USPQ 489 (CA 5 1983)


3 weeks after increasedlevel of infringement; 4years after lessobjectionable use

denied

granted

CaseHolding

on Motion

denied

granted

granted



Delay Length

Sixth Circuit

Grand Lodge Fraternal Order ofPolice v. Labor Council MichiganFOP, Inc., 1994 US App LEXISO30788 (CA 6 1994) (not forpublication)

P.T.C. Brands, Inc. v. Conwood Co.L.P., 28 USPQ2d 1895 (WD Ky1993)

Blockbuster Entertainment Groupv. Laylco, Inc., 869 F Supp 505 (EDMich 1994)

Central Benefits Mutual InsuranceCo. v. Blue Cross & Blue ShieldAssn., 711 F Supp 1423, 11USPQ2d 1103 (SD Ohio 1989)

Frisch's Restaurants, Inc. v. Elby'sBig Boy of Steubenville Inc., 514 FSupp 704, 213 USPQ 559 (SD Ohio1981), affd 670 F2d 642, 214 USPQ15 (CA 6 1982), cert denied 459 US916 (1982)

more than 2 years afteractual notice of infringinguse


approximately 10 monthsafter actual notice; usecommenced 4 years earlier

18 months

at least 2 years

Seventh Circuit

Helene Curtis Industries, Inc. v.Church & Dwight Co. Inc., 560 F2d1325, 195 USPQ 218 (CA 7 1977),cert denied 434 US 1070, 197USPQ 592 (1978)

Ideal Industries, Inc. v. GardnerBender, Inc., 612 F2d 1018, 204USPQ 177 (CA 7 1979), cert denied447 US 924, 206 USPQ 864 (1980)

Vaughan Mfg. Co. v. BrikamInternational Inc., 814 F2d 346, 1USPQ2d 2067 (CA 7 1987)

Thomas & Betts Corp. v. PanduitCorp., 1994 US Dist LEXIS® 18113(ND Ill 1994)

suit filed within weeks ofnotice; preliminaryinjunction filed 13 monthslater

suit filed 7 months afternotice; preliminaryinjunction motion filed 8months later

10 months

10 months after rumor ofinfringing product; 3months after seeingproduct sample

Vol. 85 TMR

CaseHoldingon Motion

granted

granted

granted

granted

granted

granted

granted

granted

granted



Vol. 85 TMR

Delay Length

Eldon Industries, Inc. v.Rubbermaid, Inc., 735 F Supp 786,17 USPQ2d 1280 (ND 111 1990)

Stokely-Van Camp Inc. v. Coca-Cola Co., 2 USPQ2d 1225 (ND Ill1987)

American Airlines Inc. v. A 1-800-A-M-E-R-I-C-A-N Corp., 622 F Supp673, 228 USPQ 225 (ND Ill 1985)

Floralife, Inc. v. FloralineInternational, Inc, 633 F Supp 108(ND Ill 1985); later proceeding 807F2d 518, 1 USPQ2d 1132 (CA 71986)

Universal City Studios, Inc v.Mueller Chemical Co., No. 81-5737(ND Ill 11/24/82) (available onLEXIS®)

4 1/2 years: suit broughtafter 4 years; motion filed6 1/2 months later

3 months

a few months notice byhigh level employee;earlier notice by salespersonnel

at least 3 years notice oflimited use; less than 3weeks after knowledge ofexpansion of use

3 months

Eighth Circuit

Mutual of Omaha Insurance Co. v. 12 monthsNovak, 775 F2d 247, 227 USPQ801 (CA 8 1985)

Ninth Circuit

Ocean Garden, Inc. v. MarktradeCo. Inc, 953 F2d 500, 21 USPQ2d1493 (CA 9 1991)

Creative 'Ibchnology Ltd. v. SRTInn, 29 USPQ2d 1474 (ND Calif1993)

Sega Enterprises Ltd. v. AccoladeInc., 785 F Supp 1392, 23 USPQ2d1440 (ND Calif 1992)

Lisa Frank, Inc. v. ImpactInternational, Inc., 799 F Supp 980(D Ariz 1992)

11 months from notice ofintended sale, including 2-3 months from notice ofactual sale

6 months after notice andsending of protest letter

5 months: suit broughtafter 1 1/2 months; motionfiled 3 1/2 months later

7 months after filingcomplaint; 3 months afterknowledge of expandedline of infringing products

CaseHolding

on Motion

denied

denied

granted

granted

granted

granted

granted

granted

granted

granted



Vol. 85 TMR

Case

National Yellow Pages ServiceAssn. v. O'Connor Agency, Inc., 9USPQ2d 1516 (CD Calif 1988)

Earth Technology Corp. v.Environmental Research &Technology, Inc., 222 USPQ 585(CD Calif 1983)

Steinway & Sons v. Robert Demars& Friends, 210 USPQ 954 (CDCalif 1981)

Delay Length

3 years

2 years

2 years

Tenth Circuit

GTE Corp. v. Williams, 731 F2d676, 222 USPQ 803 (CA 10 1984)

Studio 1712, Inc. v. Etna ProductsCo., 777 F Supp 844, 22 USPQ2d1280 (D Colo 1991)

Universal Motor Oils Co. v. AmocoOil Co., 15 USPQ2d 1613 (D Kan1990)

Paramount Pictures Corp. v. VideoBroadcasting Systems, 724 F Supp808, 12 USPQ2d 1862 (D Kan 1989)

Cyclonaire Corp. v. United StatesSystems, Inc., 209 USPQ 310 (DKan 1980)

Volkswagenwerk, G.m.b.H. v.Frank, 198 F Supp 916, 131 USPQ236 (D Colo 1961)

3 years


3 months

15 months

6 months

17 months after lawsuit

Eleventh Circuit

Glen Raven Mills, Inc. v. RamadaInternational, Inc., 1994 WL230365 (MD Fla 1994)

16 months from notice ofintended use, including 11months after notice ofactual use

Bellsouth Advertising & Publishing 7-8 monthsCorp. v. Real Color Pages, Inc., 792F Supp 775 (MD Fla 1991)

Holdingon Motion

granted

granted

granted

denied

granted

granted

denied

granted

granted

denied, butcourt foundthatplaintiffhad actedpromptly

granted



Case

Original Appalachian Artworks,Inc. v. Topps Chewing Gum, Inc,642 F Supp 1031, 231 USPQ 850(ND Ga 1986)

Delay Length

5-10 months

Vol. 85 TMR

Holdingon Motion

granted

D.C. Circuit

National Rural ElectricCooperative Assn. v. NationalAgricultural Chemical Assn., 26USPQ2d 1294 (DC DC 1992)

Delmatoff, Gerow, Morris,Langhans, Inc. v. Children'sHospital National Medical Center,12 USPQ2d 1136 (DC DC 1989)

several weeks afterknowledge of increasedscope of infringement

12 months

granted

denied



Official Journal of the International Trademark Association

Dilution Redefined for the Year 2002

Jerre B. Swann, Sr.

The Incorporeal Curtain:The EEA Is Closed to

Extra-Market Gray Goods

Thomas Hays

Delay in Filing PreliminaryInjunction Motions: Update 2002

Sandra Edelman

The Shape of Things to Come—Emerging Theories of Design Protection

Jonathan E. Moskin

Brief of Amicus CuriaeThe International Trademark Association

in Partial Support of Appellees/Cross-Appellants inTaylor Corporation v. Sigma Chi Fraternity

and Sigma Chi Corporation

Vol. 92 May-June, 2002 No. 3

®


Vol. 92 TMR 647

DELAY IN FILING PRELIMINARYINJUNCTION MOTIONS:

UPDATE 2002

By Sandra Edelman*

I. INTRODUCTION

The pace of life has noticeably quickened since 1995, when TheTrademark Reporter® last published an update on the issue ofdelay in filing preliminary injunction motions.1 In the interveningseven years, the Internet has exploded as a medium of personalcommunication and business transactions, with brand names suchas eSpeed and features such as Instant Messenger aptly conveyingthe near-instantaneous nature of interactions on the World WideWeb. As James Gleick observed in his book entitled Faster, “Wehave reached the epoch of the nanosecond. This is the heyday ofspeed.”2

In light of technological and cultural changes that haveincreasingly led to an “ASAP” business culture, it was interestingto investigate whether courts now apply a more stringent standardin determining whether a movant waited too long before seekingexpedited injunctive relief.3 A review of the cases decided since1995 reveals that standards have not materially changed, except inthe Second Circuit, home of the proverbial “New York minute.”4

While the two previous articles on this subject expressed generalrules for evaluating delay on a nationwide basis, this article willarticulate two sets of general rules, one for cases within the Second

* Partner in the firm of Dorsey & Whitney LLP, New York, New York, Associate

Member of the International Trademark Association; Original Articles Editor of TheTrademark Reporter® and member INTA/CPR Panel of Neutrals. The author would like tothank Adam Sherman, associate at Dorsey & Whitney, for his assistance in preparing thisarticle.

1. S. Edelman, “Delay in Filing Preliminary Injunction Motions: A Five Year Update,”85 TMR 1 (1995) (updating R.L. Raskopf & S. Edelman, “Delay in Filing PreliminaryInjunction Motions: How Long Is Too Long?” 80 TMR 36 (1990)).

2. J. Gleick, Faster—The Acceleration of Just About Everything (Pantheon Books1999).

3. A plaintiff’s delay is one of the factors courts consider in deciding whether the“irreparable injury” element of the legal standard for obtaining a preliminary injunction hasbeen met. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 967, 35U.S.P.Q.2d 1617, 1620 (2d Cir. 1995); GTE Corp. v. Williams, 731 F.2d 676, 678, 222U.S.P.Q. 803, 805 (10th Cir. 1984).

4. Definitions of the expression “New York minute” include “the time it takes for thelight in front of you to turn green and the guy behind you to honk his horn.” See W. Safire,N.Y. Times Section 6, p. 12, col. 3 (Oct. 19, 1986).


648 Vol. 92 TMR

Circuit5 and the other for cases in the rest of the federal circuits inthe country.

The article will also discuss the differences that continue toexist among the various federal circuits as to whether prejudice tothe defendant should be considered part of the delay analysis. Thevarious explanations for delay that are deemed excusable by thecourts will be examined, including: ongoing settlementnegotiations; the need to investigate the alleged infringement; andchanges in the scope or nature of the defendant’s infringement.Interestingly, a number of cases reported in the last seven yearscite the litigation conduct of the plaintiff after commencement ofthe lawsuit as indicating a less than urgent need for relief, andthese cases will be discussed as well.

An updated Appendix to this article includes all of the casesfrom the earlier two articles, supplemented by cases decided since1995. The cases are arranged by federal circuit, with the appellatecases in each circuit, if any, preceding the district court decisions.The Appendix includes trademark and unfair competition cases,and a few cases involving licensing disputes. Copyright decisionsand cases involving both trademark and copyright issues that weredecided based on the copyright claim are not included in thisreview.

The periods of delay set forth in the Appendix have beenmeasured from the date of plaintiff’s first actual notice of thedefendant’s infringement (or a date of constructive noticedetermined by the court), to the date when the preliminaryinjunction motion was filed. This method of measurement reflectsthe legal standard that “[a]ny delay attributable to a plaintiff mustbe measured from the time the plaintiff knew or should haveknown that infringement had ripened into a provable claim.”6

Some reported decisions incorrectly focus only on the delay thatoccurred between the time the plaintiff first filed suit and the time

5. Although the Second Circuit encompasses New York, Connecticut and Vermont,

virtually all of the cases in this Circuit involving the issue of delay emanate from one of thefour judicial districts in New York, with the greatest concentration of cases arising in theSouthern District of New York.

6. See Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216, 1229 (D. Colo. 2001)(citing Kason Co. v. Exxon Corp., 209 F.3d 562, 570, 54 U.S.P.Q.2d 1413, 1419 (6th Cir.2000); Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 777, 34 U.S.P.Q.2d 1822,1825 (Fed. Cir. 1995); Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 116 U.S.P.Q. 176(10th Cir. 1958)). Whether a plaintiff “should have known” earlier about an infringement isgenerally a question of whether a plaintiff was reasonably vigilant in monitoring themarketplace. In a case reported in 2000, the court observed somewhat quaintly (in light ofthe active enforcement of trademark owners’ rights on the Internet since the mid-1990s)that “The owner of a registered mark would not necessarily expect that it was likely to beinfringed on the Internet and so police the Internet.” First Jewellery Company of Canada,Inc. v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838, 1845 (S.D.N.Y. 2000).


Vol. 92 TMR 649

it moved for preliminary injunctive relief,7 thus ignoring theequally relevant period of time that elapsed between the plaintiff’sfirst notice of the infringement and its decision to institutelitigation. In this type of case, when the motion was filed muchlater than the complaint, both dates, where available, are used inthe Appendix. It should also be noted that some cases involving theissue of delay in filing a preliminary injunction motion have beenomitted because the period of delay was too difficult to measurebased on the court’s recitation of facts.8

Finally, in reviewing the decisions listed in the Appendix, it isimportant to bear in mind that the delay by the plaintiff wasusually only one of many issues considered by the court in decidingwhether to grant or deny the motion for a preliminary injunction,although in a few cases the plaintiff’s delay was an influentialfactor in the denial of relief.9 Moreover, as noted in the first articlein this series, when a case is weak on the merits, the court is morelikely to find the plaintiff’s delay to be inexcusable, providing aclear and convenient reason for denying the relief requested.10

Conversely, when a defendant has acted intentionally or engagedin other egregious conduct, the court is likely to de-emphasize theissue of delay and be more tolerant of a plaintiff’s failure to movepromptly.11

II. GENERAL STANDARDS FOREVALUATING DELAY

In cases outside of the Second Circuit, the following generalrules apply:

7. See, e.g., GoTo.com v. Walt Disney Co., 202 F.3d 1199, 53 U.S.P.Q.2d 1652 (9th Cir.

2000).

8. E.g., Westchester Media v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935 (S.D. Tex.1998), aff’d in part and vacated and remanded in part, 214 F.3d 658, 55 U.S.P.Q.2d 1255(5th Cir. 2000).

9. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 968, 35U.S.P.Q.2d 1617, 1621 (2d Cir. 1995); Krueger International, Inc. v. Nightingale, Inc., 915F. Supp. 595, 613, 40 U.S.P.Q.2d 1334, 1348 (S.D.N.Y. 1996); Del-Rain Corp. v. Pelonis USALtd., 1995 WL 116043 *6 (W.D.N.Y. 1995).

10. Raskopf & Edelman, supra n. 1, 80 TMR at 44; Magnet Communications, LLC v.Magnet Communications, Inc., 2001 WL 1097965, *1 (S.D.N.Y. 2001); ImOn, Inc. v.ImaginOn, Inc., 90 F. Supp. 2d 345, 350 (S.D.N.Y. 2000).

11. Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d680, 697 (W.D. Pa. 2000); Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F.Supp. 1128, 1132-33, 43 U.S.P.Q.2d 1475, 1479 (N.D. Ill. 1997); Bulova Corp. v. Bulova DoBrasil Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 1332, 59 U.S.P.Q.2d 1077, 1079(S.D. Fla. 2001).


650 Vol. 92 TMR

(1) A delay of less than six months is usually consideredacceptable,12 unless there is a strong showing of prejudice to thedefendant;13

(2) Between six and twelve months, the decisions vary,although it is not uncommon to see preliminary injunction motionsgranted notwithstanding delays of eight to twelve months;14 and

(3) In most cases involving a delay of a year or longer,preliminary injunctive relief is denied,15 except where intentionalinfringement or other objectionable conduct by the defendantovercomes the adverse effect of the movant’s extended delay.16

In cases within the Second Circuit, the followinggeneralizations apply:

(1) A delay of less than three months is usually acceptable;17

(2) Between three and six months, the decisions vary;18

12. See, e.g., Montblanc-Simplo GMBH v. Staples, Inc., 172 F. Supp. 2d 231 (D. Mass.

2001); Avent America, Inc. v. Playtex Products, Inc., 68 F. Supp. 2d 920 (N.D. Ill. 1999);Philip Morris, Inc. v. Allen Distributors, Inc., 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D.Ind. 1999); Anheuser-Busch, Inc. v. Customer Co., 947 F. Supp. 422, 39 U.S.P.Q.2d 1850(N.D. Cal. 1996).

13. See, e.g., Packerware Corp. v. Corning Consumer Products Co., 895 F. Supp. 1438(D. Kan. 1995).

14. Granting relief: Novartis Consumer Health, Inc. v. Johnson & Johnson-MerckConsumer Pharmaceuticals Co., 129 F. Supp. 2d 351, 57 U.S.P.Q.2d 1522 (D.N.J. 2000); Ty,Inc. v. Jones Group, Inc., 237 F.3d 891, 57 U.S.P.Q.2d 1617 (7th Cir. 2001); Ty, Inc. v.Softbelly’s, Inc., 2001 WL 125321 (N.D. Ill. 2001); Guess?, Inc. v. Tres Hermanos Inc., 993 F.Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997); GoTo.com, Inc. v. Walt Disney Co., 202F.3d 1199, 53 U.S.P.Q.2d 1652 (9th Cir. 2000). Denying relief: Media3 Technologies, LLC v.Mail Abuse Prevention System, LLC, 2001 WL 92389 (D. Mass. 2001); McDonald’s Corp. v.Burger King Corp., 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999); Reins of Life,Inc. v. Vanity Fair Corp., 5 F. Supp. 2d 629, 45 U.S.P.Q.2d 1854 (N.D. Ind. 1997); RWTCorp. v. Wonderware Corp., 931 F. Supp. 583 (N.D. Ill. 1996); Golden Bear International,Inc. v. Bear U.S.A., Inc., 969 F. Supp. 742, 42 U.S.P.Q.2d 1283 (N.D. Ga. 1996).

15. Fritz v. Arthur D. Little, Inc., 944 F. Supp. 95, 41 U.S.P.Q.2d 1352 (D. Mass. 1996);Amicus Communications, L.P. v. Hewlett-Packard Co., 1999 WL 495921 (W.D. Tex. 1999);Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373(8th Cir. 1999); Fogerty v. Poor Boy Productions, Inc., 124 F.3d 211 (9th Cir. 1997)(unpublished); but see Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071, 121 S. Ct. 760(2001); Ty, Inc. v. Publications Intern., Ltd., 81 F. Supp. 2d 899 (N.D. Ill. 2000).

16. Porsche Cars North America, Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128, 43U.S.P.Q.2d 1475 (N.D. Ill. 1997); Bulova Corp. v. Bulova Do Brasil Com. Rep. Imp. & Exp.Ltda., 144 F. Supp. 2d 1329, 59 U.S.P.Q.2d 1077 (S.D. Fla. 2001).

17. See, e.g., First Jewellery Co. of Canada, Inc. v. Internet Shopping Network LLC, 53U.S.P.Q.2d 1838 (S.D.N.Y. 2000); Marshak v. Thomas, 1998 WL 476192 (E.D.N.Y. 1998);Ryan v. Vulpine Stamp Co., 107 F. Supp. 2d 369 (S.D.N.Y. 2000); Tactica International, Inc.v. Atlantic Horizon International, Inc., 154 F. Supp. 2d 586 (S.D.N.Y. 2001).

18. Granting relief: see, e.g., Lexington Management Corp. v. Lexington CapitalPartners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998); Firma Melodiya v. ZYX Music GmbH, 882 F.Supp. 1306 (S.D.N.Y. 1995); Yurman Design Inc. v. Diamonds and Time, 169 F. Supp. 2d181 (S.D.N.Y. 2001). Denying relief: see, e.g., Magnet Communications, LLC v. MagnetCommunications, Inc., 2001 WL 1097965 (S.D.N.Y. 2001); Greenpoint Financial Corp. v.Sperry & Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000); ImOn, Inc. v. ImaginOn,Inc., 90 F. Supp. 2d 345 (S.D.N.Y. 2000); Bear U.S.A., Inc. v. A.J. Sheepskin & Leather


Vol. 92 TMR 651

(3) For cases in which the delay is between six and twelvemonths, there is a significant risk that the motion will be denied;19

and(4) In light of the above, any plaintiff should carefully

consider the high risks and attendant extra fees and costs ofseeking preliminary injunctive relief from a New York federalcourt when the delay is greater than one year.20

III. THE SECOND CIRCUIT’SSTRICTER STANDARD

It is now quite risky to file a preliminary injunction motion inthe Second Circuit if the plaintiff has delayed more than threemonths from the date it first had notice of the defendant’sinfringement. Before 1995, there were a few cases in whichpreliminary injunctive relief was denied when the delay was fouror five months,21 and one or two cases denying relief when thedelay was three months or less.22 But it was also not unusual tohave a motion for injunctive relief granted by a court in the SecondCircuit when the plaintiff delayed in taking action for periodsranging from six to nine months.23

Since 1995, a number of cases in the Second Circuit haveapplied a very strict standard in evaluating the plaintiff’s delay, Outerwear, Inc., 909 F. Supp. 896, 38 U.S.P.Q.2d 1640 (S.D.N.Y. 1995); Cheng v. Dispeker,35 U.S.P.Q.2d 1493 (S.D.N.Y. 1995).

19. Since 1995, all of the cases in the Second Circuit involving delays ranging from sixto twelve months have denied preliminary injunctive relief. See, e.g., Media Group, Inc. v.Ontel Products Corp., 2001 WL 169776 (D. Conn. 2001); Marcy Playground, Inc. v. CapitolRecords, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998); Krueger International, Inc. v. NightingaleInc., 915 F. Supp. 595, 40 U.S.P.Q.2d 1334 (S.D.N.Y. 1996); Swanson v. GeorgetownCollection, Inc., 1995 WL 72717 (N.D.N.Y. 1995). Prior to 1995, however, there are cases inwhich preliminary injunctive relief was granted notwithstanding delays of six to ninemonths. See infra n. 23.

20. See, e.g., Ushodaya Enterprises, Ltd. v. V.R.S. Intern., Inc., 47 U.S.P.Q.2d 1223(S.D.N.Y. 1998); Museum Boutique Intercontinental, Ltd. v. Picasso, 880 F. Supp. 153(S.D.N.Y. 1995).

21. Nina Ricci S.A.R.L. v. Gemcraft Ltd., 612 F. Supp. 1520, 226 U.S.P.Q. 575(S.D.N.Y. 1985); Programmed Tax System, Inc. Raytheon Co., 419 F. Supp. 1251, 193U.S.P.Q. 435 (S.D.N.Y. 1976).

22. See Le Cordon Bleu S.a.r.l. v. BPC Publishing Ltd., 327 F. Supp. 267, 170 U.S.P.Q.477 (S.D.N.Y. 1971) (denying relief when there was a 13 week delay). As previously noted inthe first article on this subject, the decision in Citibank N.A. v. Citytrust, 756 F.2d 273, 275,225 U.S.P.Q. 708, 710 (2d Cir. 1985), has often been cited as a case involving a ten weekdelay; in fact, Citibank had at least nine months notice of the defendant’s allegedlyinfringing activities. See Raskopf & Edelman, supra n. 1, 80 TMR at 48.

23. 6 to 9 months: Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946,210 U.S.P.Q. 1 (2d Cir. 1981); Mastercard International, Inc. v. Sprint Communications Co.,30 U.S.P.Q.2d 1963 (S.D.N.Y. 1994); Kraft General Foods, Inc. v. Allied Old English, Inc.,831 F. Supp. 123, 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993); MGM Pathe Communications Co. v.Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991); C.B. Sports Inc.v. Gaechter-Haber & Associates, Inc., 210 U.S.P.Q. 597 (D. Vt. 1981).


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denying relief when the delay was three to six months in length.24

The stringency of the New York approach is starkly demonstratedin Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc.,25

a 1995 decision by Judge Lewis Kaplan of the Southern District ofNew York, involving the plaintiff’s efforts to protect its BEARtrademark for outerwear, jeans and boots from infringing use bythe defendant on a variety of apparel products.26 The factsconcerning the plaintiff’s alleged delay in this case are quitecomplicated: the defendant introduced various infringing productsat different times and the parties vigorously disputed what theplaintiff knew about each of the defendant’s products and when itknew it. Ultimately, however, Judge Kaplan determined that (1)the plaintiff knew in June and July 1995 that defendant was thesource of BEAR jeans and shirts that plaintiff had previously seenon the market; (2) plaintiff confirmed that defendant was thesource of BEAR light jackets in August 1995; and (3) plaintiffbecame aware of defendant’s BEAR boots in September 1995.27

The plaintiff filed a complaint in late September 1995 and movedfor preliminary injunctive relief in mid-October 1995.28

Based on this factual record, the court found that plaintiff hadnot unreasonably delayed with respect to defendant’s sale of boots(one month delay) and jackets (two month delay), and thus grantedpreliminary injunctive relief as to these products.29 However, thecourt held that because the plaintiff had been aware of defendant’sinfringing jeans for nearly four months and the shirts forapproximately three months, the “plaintiff’s lack of diligencemilitates against enjoining defendants from selling those itemspending a prompt trial.”30 The court reached this conclusionnotwithstanding a specific finding that the defendant’s pants andshirts were likely to cause confusion with plaintiff’s products,31 sothere is no question that the plaintiff’s delay of three to fourmonths as to these two products was the determining factor in thedenial of relief.

Three years later in Gidatex, S.R.L. v. Campaniello Imports,Ltd.,32 the court cited Judge Kaplan’s opinion in Bear U.S.A. andheld that “courts typically decline to grant preliminary injunctions

24. See supra n. 18.

25. 909 F. Supp. 896 (S.D.N.Y. 1995).

26. Id. at 902.

27. Id.

28. Id.

29. Id. at 910.

30. Id.

31. Id.

32. 13 F. Supp. 2d 417 (S.D.N.Y. 1998).


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in the face of unexplained delays of more than two months.”33 Asan initial matter, it was not even necessary for the court toenunciate such a rigid standard because the plaintiff’s delay inGidatex exceeded two years.34 Moreover, even assuming theGidatex court was taking into account cases only within theSecond Circuit,35 the observation that it is “typical” for courts todeny motions when the delay is more than two months is still notaccurate because there were, at the time Gidatex was decided, anumber of cases within the Second Circuit that had grantedpreliminary injunction motions when the plaintiff’s delay exceededthree months.36 In addition, while the Gidatex court cited CenturyTime Ltd. v. Interchron Ltd.37 as an example of a case in whichrelief was denied when the delay was “over two months,”38

Interchron involved a total delay of six months. The plaintiff inInterchron brought suit two months after learning of thedefendant’s infringement but did not file its preliminary injunctionmotion until four months later.39 Similarly, the Gidatex court citedComic Strip, Inc. v. Fox Television Stations, Inc.40 as havinginvolved a three month delay,41 when in fact the plaintiff in thatcase delayed a total of seven months between its first notice of theinfringement and the motion for a preliminary injunction.42

Since Bear and Gidatex were decided, a number of cases inNew York’s federal district courts have denied relief when theplaintiff’s delay was only three to four months,43 a standard much

33. Id. at 419 (emphasis added).

34. Id. at 419-20.

35. Note, however, that the Gidatex opinion included a “But see” cite to a Ninth Circuitappellate decision, Gilder v. PGA Tour, Inc., 936 F.2d 417, 423 (9th Cir. 1991), in which afour month delay was upheld as reasonable.

36. Harlequin Enterprises Ltd. v. Gulf & Western Corp., 644 F.2d 946, 210 U.S.P.Q. 1(2d Cir. 1981); Mastercard International, Inc. v. Sprint Communications Co., 30 U.S.P.Q.2d1963 (S.D.N.Y. 1994); Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F.Supp. 1339, 33 U.S.P.Q.2d 1961 (E.D.N.Y. 1994); Kraft General Foods, Inc. v. Allied OldEnglish, Inc., 831 F. Supp. 123, 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993); MGM PatheCommunications Co. v. Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208(S.D.N.Y. 1991); Ventura Travelware, Inc. v. A to Z Luggage Co., 1 U.S.P.Q.2d 1552(E.D.N.Y. 1986).

37. 729 F. Supp. 366, 14 U.S.P.Q.2d 1765 (S.D.N.Y. 1990).

38. 13 F. Supp. 2d at 419.

39. 729 F. Supp.at 367-68, 14 U.S.P.Q.2d at 1766-67.

40. 710 F. Supp. 976, 10 U.S.P.Q.2d 1608 (S.D.N.Y. 1989).

41. 13 F. Supp. 2d at 419.

42. 710 F. Supp. at 981, 10 U.S.P.Q.2d at 1613; 13 F. Supp. 2d at 419 (the three monthperiod cited by the Gidatex court referred only to the time between the last settlementcorrespondence between the parties and the initiation of the legal action).

43. See, e.g., Magnet Communications, LLC v. Magnet Communications, Inc., 2001 WL1097965 (S.D.N.Y. 2001); Greenpoint Financial Corp. v. Sperry & Hutchinson Co., 116 F.Supp. 2d 405 (S.D.N.Y. 2000); ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345 (S.D.N.Y.2000).


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more demanding than that applied in other circuits.44 Remarkably,as well, given the much longer periods of delay that have beendeemed acceptable in other circuits, the courts in New Yorkfrequently expect a plaintiff who has delayed only two to threemonths to have a good excuse as to why it did not move for reliefsooner.

For example, in Marshak v. Thomas,45 a case involving thedefendant’s unauthorized performances using the name “TheDrifters,” the court initially found that a “nearly two-month delayin seeking preliminary injunctive relief militates against thefinding of irreparable harm,”46 but then held that the delay wasexcusable because the plaintiff had, during the two-month period,sent a demand letter to the defendant and had contacted thevenues where the defendant was scheduled to perform in order toobtain relief there.47 Likewise, in Ryan v. Volpone Stamp Co.,48 acase involving a dispute over a license granted by pitcher NolanRyan to a merchandising company, the plaintiff delayed a mereten weeks in moving for a preliminary injunction.49 Given thebrevity of the delay, the court could have merely rejected out ofhand the defendant’s argument that Ryan’s claim of irreparableharm was undermined by the ten-week delay in seeking relief.Instead, the court unnecessarily justified its decision by recitingthat Ryan had sent two cease and desist letters during this periodand, at the defendant’s request, postponed filing the motion onlyafter the defendant signed a stipulation providing that the deferralof the motion would not be cited by the defendant against Ryan.50

IV. PREJUDICIAL RELIANCE AS A FACTORIN THE DELAY ANALYSIS

For many years, the various federal circuits have differed as towhether prejudicial reliance by the defendant is an element of thedelay analysis.51 In a 1985 decision, Majorica, S.A. v. R.H. Macy &

44. See supra n. 12.

45. 1998 WL 476192 (E.D.N.Y. 1998).

46. Id. at *12.

47. Id.

48. 107 F. Supp. 2d 369 (S.D.N.Y. 2000).

49. Id. at 404.

50. Id. at 404-05; see also General Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 662-63(S.D.N.Y. 1997) (noting plaintiff’s exchange of correspondence with the defendant andreceipt of additional information about the defendant’s activities); Les Ballets Trockadero deMonte Carlo, Inc. v. Trevino, 945 F. Supp. 563, 574 (S.D.N.Y. 1996) (plaintiff sent a ceaseand desist letter and awaited the return of its dance troupe from Japan before taking anyaction against the defendants that would compromise the Japan engagement).

51. See Raskopf & Edelman, supra n. 1, 80 TMR at 40-42.


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Co.,52 the Second Circuit held that lack of diligence in moving forpreliminary relief, even absent any prejudicial reliance by thedefendant, may “preclude the granting of preliminary injunctiverelief, because it goes primarily to the issue of irreparable harmrather than occasioned prejudice.”53 In contrast, the Seventh andthe Third Circuits have considered the prejudicial reliance by thedefendant to be an essential part of the delay analysis.54

The lack of uniformity among the various circuit courts as tothe relevance of the defendant’s prejudicial reliance continues to beshown in cases reported during the past seven years. Indeed, a1997 district court decision in the Seventh Circuit, Philip Morris,Inc. v. Allen Distributors, Inc.,55 explicitly acknowledged that itwas not following the Second Circuit’s position, holding insteadthat a plaintiff’s delay would undercut the showing of irreparableinjury only if the delay “lulled [the defendant] into a false sense ofsecurity or ... [the defendant] acted in reliance on the plaintiff’sdelay.”56 Cases in the Third57 and Tenth58 Circuits as well evaluateprejudice to the defendant as part of the delay analysis. Cases inthe Second Circuit continue to hold that in assessing a plaintiff’sdelay in filing a preliminary injunction motion, prejudice to thedefendant is not a required element of the analysis.59

V. EXCUSABLE AND INEXCUSABLE DELAY

As set forth in the initial article on preliminary injunction anddelay in 1990, the reasons why a plaintiff has waited to seek reliefmay be as important as the length of the delay, and if the plaintiffhas a good explanation for waiting, the delay will be deemedexcusable. 60

52. 762 F.2d 7, 8, 226 U.S.P.Q. 624, 624 (2d Cir. 1985).

53. Id.

54. Raskopf & Edelman, supra n. 1, 80 TMR at 41 n. 19.

55. 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1997).

56. Id. at 854, 51 U.S.P.Q.2d at 1020 (quoting Vaughan Manufacturing Co. v. BrikamInternational, Inc., 814 F.2d 346, 351 (7th Cir. 1987)); see also Ty, Inc. v. Jones Group Inc.,237 F.2d 891, 903, 57 U.S.P.Q.2d 1617 (7th Cir. 2001).

57. See Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp.2d 680, 697 (W.D. Pa. 2000).

58. See Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216, 1228 (D. Colo.2001).

59. See, e.g., Del-Rain Corp. v. Pelonis USA Ltd., 1995 WL 116043, *6 (S.D.N.Y. 1995);Swanson v. Georgetown Collection, Inc., 1995 WL 72717, *9 (S.D.N.Y. 1995); cf. Gidatex,S.R.L. v. Campaniello Imports, Ltd., 13 F. Supp. 2d 417, 419 n. 1 (S.D.N.Y. 1998) (While afinding of prejudice is not required before a request for a preliminary injunction can bedenied on grounds of inexcusable delay, “the existence of prejudice to the non-movantcaused by the movant’s delay is also a relevant factor.”).

60. Raskopf & Edelman, supra n. 1, 80 TMR at 50-60.


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A. Settlement Negotiations

Consistently over the past twelve years, courts have acceptedthe explanation that a plaintiff delayed because it was attemptingto negotiate a settlement of the matter.61 The court recentlyobserved in Big O Tires, Inc. v. Bigfoot 4x4, Inc.,62 “As a matter ofpublic policy, the law favors and encourages settlements. Thesettlement of actions should be fostered to avoid protracted,wasteful and expensive litigation. Particularly in complex cases,the litigants should be encouraged to determine their respectiverights between themselves.”63 Accordingly, the court held thatdelays resulting from good faith attempts to negotiate a settlementwould not undercut the showing of irreparable harm.

Consistent with this judicial philosophy, many casesthroughout the different judicial circuits have held that the goodfaith conduct of settlement negotiations will excuse a delay inseeking preliminary injunctive relief,64 even when the negotiationsare protracted in length or conducted at a leisurely pace. Oncesettlement talks break down, however, the plaintiff is expected toseek relief promptly.

The “leisurely” approach to settlement negotiations isillustrated by the plaintiff’s conduct in Times Mirror Magazines,Inc. v. Las Vegas Sports News, LLC,65 a case in which the ThirdCircuit held that the plaintiff’s fifteen-month delay “attributable tonegotiations between the parties” was acceptable and did not rebutthe plaintiff’s showing of irreparable injury.66 While the appellatedecision in this case is short of the details of exactly what theplaintiff was doing during these fifteen months, according to thelower court opinion in Times Mirror,67 the plaintiff learned of thedefendant’s infringement in August 1997, sent a cease and desistletter one month later, attempted to negotiate a settlement for thenext thirteen months until October 1998, and then continued to

61. Edelman, supra n. 1, 85 TMR at 6-7.

62. 167 F. Supp. 2d 1216 (D. Colo. 2001).

63. Id. at 1229 (citations omitted).

64. Lexington Management Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271,277 n. 3 (S.D.N.Y. 1998); Avent America, Inc. v. Playtex Products, Inc., 68 F. Supp. 2d 920,933 (N.D. Ill. 1999); Marshak v. Thomas, 1998 WL 476192, *12 (E.D.N.Y. 1998); eBay, Inc.v. Bidder’s Edge, Inc., 100 F. Supp. 2d 1058, 56 U.S.P.Q.2d 1856 (N.D. Cal. 2000); Guess?,Inc. v. Tres Hermanos, Inc., 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997); cf.Mobilificio San Giacomo S.p.A. v. Stoffi, 1997 WL 699299 (D. Del. 1997) (finding that theplaintiff’s delay was in good faith because it allowed defendants time to discontinue use ofthe “San Giacomo” mark.).

65. 212 F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000).

66. Id. at 169, 54 U.S.P.Q.2d at 1584.

67. 50 U.S.P.Q.2d 1454 (E.D. Pa. 1999).


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investigate the matter for another several weeks before filingsuit.68

Similarly, the Illinois district court in Ty, Inc. v. PublicationsInternational, Ltd.69 held that the conduct of settlementnegotiations over a fourteen-month period “does not impinge onthe showing of irreparable injury.”70 Lesser, but still extendedperiods of settlement negotiations of nine months and eightmonths, respectively, were permitted by the California districtcourt in Guess?, Inc. v. Tres Hermanos, Inc.71 and by theMassachusetts district court in Boustany v. Boston Dental Group,Inc.72

As noted, once it becomes apparent that a settlement is notachievable or the talks break down, a plaintiff may be faulted if itdelays further in filing a preliminary injunction motion. Forexample, in New Dana Perfumes Corp. v. New Tinkerbell, Inc.,73

the court criticized the plaintiff, among other reasons, for lettingfive months lapse after the end of “active negotiations” beforemoving for relief.74 Lesser delays of two months from the cessationof settlement negotiations were cited by the courts in MarcyPlayground, Inc. v. Capital Records, Inc.75 and Swanson v.Georgetown Collection, Inc.76 as a ground for denying preliminaryinjunctive relief.

B. Investigation of the Infringement

As the Second Circuit has held, “a delay caused by theplaintiff’s good faith efforts to investigate an infringement does notrebut the presumption of irreparable harm.”77 Of course, theremust be some material unknown facts that need to beinvestigated.78 If such a factual showing can be made, a court will

68. Id. at 1456-57.

69. 81 F. Supp. 2d 899 (N.D. Ill. 2000).

70. Id. at 903-04.

71. 993 F. Supp. 1277, 1286, 45 U.S.P.Q.2d 1179, 1187 (C.D. Cal. 1997).

72. 42 F. Supp. 2d 100, 112 (D. Mass. 1999).

73. 131 F. Supp. 2d 616 (M.D. Pa. 2001).

74. Id. at 625.

75. 6 F. Supp. 2d 277, 281 (S.D.N.Y. 1998).

76. 1995 WL 27717 at *8 (N.D.N.Y. 1995).

77. Tom Doherty Associates, Inc. v. Saban Entertainment, Inc., 60 F.3d 27, 39, 35U.S.P.Q.2d 1537, 1546 (2d Cir. 1995); see also Novartis Consumer Health, Inc. v. Johnson &Johnson-Merck Consumer Pharmaceuticals Co., 129 F. Supp. 2d 351, 368, 57 U.S.P.Q.2d1522, 1535 (D.N.J. 2000); Philip Morris, Inc. v. Allen Distributors, Inc., 48 F. Supp. 2d 844,854, 51 U.S.P.Q.2d 1013, 1023 (S.D. Ind. 1999).

78. See, e.g., Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964, 968, 35U.S.P.Q.2d 1617, 1619 (2d Cir. 1995) (court noted that the evidence did not show thatplaintiff’s delay was attributable to the pursuit of further investigation); Cheng v. Dispeker,


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commend a plaintiff for acting “as a responsible litigant should”79

by investigating the necessary facts and hiring a lawyer to adviseon the viability of potential claims.80 Similarly, time taken todevelop survey evidence in support of a motion for a preliminaryinjunction has also been recognized as a legitimate reason for adelay in seeking relief.81

C. Assessing the Severity of the Infringement

The district court in Sunquest Information Systems, Inc. v.Park City Solutions, Inc.82 declined to “punish” a plaintiff for“failing to sue at a time when it had no idea about the scope orseverity” of an alleged infringement.83 Likewise, the district courtin Novartis Consumer Health84 did not penalize the plaintiff forwaiting until the infringement had a “measurable impact” on theplaintiff’s market.85 Waiting to assess the commercial impact of theinfringement can be risky, however. As the Second Circuit held inTom Doherty Associates,86 a delay in seeking preliminary reliefwill rebut the presumption of irreparable injury when the “fairinference” can be drawn that the trademark owner initially“concluded that there was no infringement but later brought anaction because of the strength of the commercial competition.”87

D. Change in the Scope or Nature of the Infringement

A material change in the scope or nature of the defendant’sinfringement can excuse a plaintiff’s decision not to move for apreliminary injunction when it first learned of the defendant’s use

35 U.S.P.Q.2d 1493, 1497 (S.D.N.Y. 1995) (plaintiffs “were aware of the extent of theinfringement and did not need to investigate further before filing suit”).

79. Sunquest Information Systems, Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d680, 698 (W.D. Pa. 2000).

80. Id.

81. Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck ConsumerPharmaceuticals, Inc. 129 F. Supp. 2d 351, 368, 57 U.S.P.Q.2d 1522, 1534 (D.N.J. 2000).

82. 130 F. Supp. 2d 680 (W.D. Pa. 2000).

83. Id. at 698 (citing Playboy Enterprises v. Chuckleberry Publishing, 486 F. Supp.414, 434-35, 206 U.S.P.Q. 70, 87-88 (S.D.N.Y. 1980) (“[P]arties should not be encouraged tosue before a practical need to do so has been clearly demonstrated.”)).

84. 129 F. Supp. 2d 351, 57 U.S.P.Q.2d 1522 (D.N.J. 2000).

85. Id. at 368, 57 U.S.P.Q.2d at 1534.

86. 60 F.3d 27, 35 U.S.P.Q.2d 1537 (2d Cir. 1995); see also Krueger International, Inc.v. Nightingale Inc., 915 F. Supp. 595, 612-13, 40 U.S.P.Q.2d 1334 (S.D.N.Y. 1996) (the courtcriticized the plaintiff’s “nonchalance” in seeking relief and noted that the evidencesuggested that “plaintiff did not begin to think about a trade dress infringement claim untilit ... lost [a] contract [to the defendant and the defendant’s product began] appearing attrade shows—ie until [it] decided to take the competitive threat seriously.”)

87. 60 F.3d at 39, 35 U.S.P.Q.2d at 1546.


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of an infringing mark.88 In the past seven years, however, anumber of cases have rejected this argument because the plaintifffailed to prove that the defendant’s alleged infringement had infact materially changed.89 In Amicus Communications, L.P. v.Hewlett-Packard Co.,90 the plaintiff sought to enjoin thedefendant’s use of the mark PAVILION in connection with a line ofcomputers that featured software to facilitate Internet access. Inresponse to the defendant’s argument that plaintiff had known ofits computers for more than three years before seeking apreliminary injunction, the plaintiff contended that thedefendant’s product had initially been promoted as amultimedia/game computer and that the defendant had onlyrecently begun expanding its market by promoting the Internetaccess features of the product.91 The court found that while thedefendant’s product had in fact been marketed initially as amultimedia computer, it was unrebutted that the product couldalways access the Internet, and thus the delay was not excusable.92

E. The Preliminary Injunction Motionas a Tactical Maneuver

Timing a preliminary injunction motion to place one’sadversary at the maximum competitive disadvantage continues tobe disfavored by the courts,93 as illustrated by the facts in TheMedia Group v. Ontel Products Corp.94 The plaintiff in this caselearned of the defendant’s alleged infringement in May or June of2000, filed the lawsuit in October 2000, and then waited untilJanuary 10, 2001, just days before the defendant intended tomarket its products at a major trade show, to file the motion for a

88. Edelman, supra n. 1, 85 TMR at 6-7.

89. See, e.g., New Dana Perfumes Corp. v. New Tinkerbell, Inc., 131 F. Supp. 2d 616,630 (M.D. Pa. 2001) (“the evidence of this case does not support a finding of progressiveencroachment in the context of plaintiff’s broad claims”); Del-Rain Corp. v. Pelonis USALtd., 1995 WL 116043 at *6 (plaintiff’s claim that the defendant “dramatically changed itspackaging and advertising ... finds no support in the record”); Museum BoutiqueIntercontinental Ltd. v. Picasso, 880 F. Supp. 153, 165 (S.D.N.Y. 1995) (the previousobjectionable uses of the Picasso trademarks and images was found “not qualitativelydifferent” from the more recent uses that gave rise to the motion for a preliminaryinjunction).

90. 1999 WL 495921 (W.D. Tex. 1999).

91. Id. at *18.

92. Id. The plaintiff in Amicus also argued that its delay was excusable because it hadsent the defendant a protest letter early on and had commenced opposition proceedingsagainst the defendant’s mark in the United States Patent and Trademark Office. The courtrejected this argument, holding that “opposing a claim for registration is not the same asfiling a federal lawsuit to enjoin use.” Id.

93. See Edelman, supra n. 1, 85 TMR at 4-6.

94. 2001 WL 169776 (S.D.N.Y. 2001).


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preliminary injunction.95 The court denied the motion andcriticized what “appears to be tactical maneuvering by [plaintiff] tosit back and wait for what they believe to be timing most injuriousto the procedural fairness for their adversaries.”96

VI. PLAINTIFF’S LITIGATION CONDUCTAS A FACTOR IN THE DENIAL OF RELIEF

In a number of cases reported since 1995, the courts havedenied motions for preliminary injunctive relief based on actionstaken (or not taken) by the plaintiff once the suit was brought. Thegeneral lesson to be learned by these cases is that if a party asksthe court for relief on an expedited basis, it must conduct itself inthe litigation as if the need for judicial action is truly urgent.

For example, in Federal Express Corp. v. Federal Espresso,Inc.,97 the plaintiff moved for a preliminary injunction against thedefendant’s use of the name FEDERAL ESPRESSO for a coffeeshop. The district court denied the motion and the plaintiffappealed.98 The Second Circuit affirmed the denial of preliminaryinjunctive relief, relying, in part, on the plaintiff’s post-motionconduct. As the court stated, “[A]lthough there apparently was nodelay by Federal Express in bringing the present action, this Courtmay take into account whether or not a plaintiff has beenassiduous in pursuing the litigation once started. At the oralargument of this appeal, which took place nearly a year after thedistrict court denied the preliminary injunction motion, FederalExpress informed us that nothing had been done in the districtcourt to speed the proceedings toward an ultimate resolution of themerits. This seeming lack of urgency on the part of a plaintiff whohas been denied interim relief tends to confirm the view thatirreparable harm was not imminent.”99

Post-motion conduct was cited by the district court in OriginsNatural Resources, Inc. v. Kotler.100 In this case, the plaintiffinitially filed its complaint and moved for preliminary injunctive

95. Id. at *3 (quoting Century Time Ltd. v. Interchron Ltd., 729 F. Supp. 366, 368, 14U.S.P.Q.2d 1765, 1767 (S.D.N.Y. 1990)).

96. 2001 WL 169776 at *1.

97. 201 F.3d 168, 53 U.S.P.Q.2d 1345 (2d Cir. 2000).

98. 201 F.3d at 170, 53 U.S.P.Q.2d at 1347.

99. Id. at 178, 53 U.S.P.Q.2d at 1353; see also Fabrication Enterprises, Inc. v. HygenicCorp., 64 F.3d 53, 62, 35 U.S.P.Q.2d 1753, 1759 (2d Cir. 1995) (the plaintiff appealed both agrant of summary judgment to the defendant and the denial of its motion for a preliminaryinjunction; in remanding the matter back to the district court for reconsideration of theplaintiff’s motion for preliminary injunctive relief, the Second Circuit stated that the districtcourt was entitled to consider whether the movant’s “failure to take an interlocutory appealor to seek expedited handling of, or a stay pending, this appeal has a bearing on anycontention that a preliminary injunction should be issued at this late date.”).

100. 2001 WL 492429 (S.D.N.Y. 2001).


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relief in federal court in New Mexico in October 2000.101 Thedefendant then moved to dismiss for lack of personal jurisdiction,and the New Mexico court stayed the motion for a preliminaryinjunction, set a briefing schedule on the jurisdictional motion andordered the parties to conduct discovery.102 In March 2001, theNew Mexico court granted the defendant’s motion to dismiss andplaintiff immediately re-filed its complaint and preliminaryinjunction motion in federal court in New York.103 The New Yorkdistrict court denied the re-filed motion, holding that “plaintiff’sdelay in filing its complaint, particularly combined with the factthat it was content to wait for the New Mexico court’s ruling ondefendant’s motion, hardly supports a claim that its harm isimminent and irreparable.”104 Indeed, as the court observed,“Although plaintiff may not have been able to speed up the [NewMexico] court’s timetable, plaintiff was free to re-file its action inthe Southern District of New York, thereby ensuring personaljurisdiction over the defendant and prompt attention to itscomplaints.”105

In another case, Magnet Communications, LLC v. MagnetCommunications, Inc.,106 the movant for preliminary injunctiverelief did not even initiate the litigation after it learned of theinfringing mark but rather waited for the other party to bring anaction for declaratory relief.107 The movant then delayed in filingthe motion until twelve weeks after the declaratory judgment suitwas brought and then, due to apparent discovery and schedulingdifficulties, did not appear before the court for oral argument untilseven months later.108 Based on this apparent lack of urgency afterthe declaratory action was filed, the court held that the“cumulative time delay certainly renders inoperative anypresumption of irreparable injury.”109

101. Id. at *2.

102. Id.

103. Id.

104. Id.

105. Id. at n. 3.

106. 2001 WL 1097965 (S.D.N.Y. 2001).

107. Id. at *1.

108. Id.; see also The Media Group, Inc. v. Ontel Products Corp., 2001 WL 169776 at *3(D. Conn. 2001) (among a variety of reasons for holding that the plaintiff inexcusablydelayed in moving for preliminary relief, the court noted that the plaintiff initiallycontended that it needed the court to rule before a trade show took place, but then waswilling to delay the hearing on the motion until after the trade show was over).

109. 2001 WL 1097965 at *1; see also Swanson v. Georgetown Collection, Inc., 1995 WL72717, at *9 (N.D.N.Y. 1995) (the court held that the fact that plaintiff had no plausibleexcuse for filing the preliminary injunction motion until 2 1/2 months after filing thecomplaint undercut the showing of irreparable harm).


662 Vol. 92 TMR

An interesting reason for denying relief on the ground of delaywas offered by the district court in McDonald’s Corp. v. BurgerKing Corp.,110 a case involving McDonald’s effort to enjoin BurgerKing’s use of the designation “Big Kid’s Meal.”111 At the timeMcDonald’s filed its motion for a preliminary injunction on July 8,1999, it had an application pending in the United States Patentand Trademark Office (“USPTO”) to register “Big Kid’s Meal.” Anoffice action rejecting the mark had been issued by the USPTO inMarch 1999. In support of its holding that McDonald’s hadinexcusably delayed in asserting its rights, the court cited the factthat McDonald’s had waited until the end of the six-month windowfor responding to the office action (and one week before thepreliminary injunction hearing in the case) to file its response inthe USPTO. Thus, as in the cases discussed above, the court inMcDonald’s focused not only on the length of time between thenotice of infringement and the motion for preliminary relief, it alsoexamined other actions by the movant after the suit was filed toassess whether expedited relief was truly warranted.

These cases show that not only does a plaintiff have to actpromptly in filing a preliminary injunction motion after it learns ofan infringement, it must conduct itself thereafter in a fashionconsistent with the request for expedited relief. If a plaintiff actsas if the matter is not particularly urgent, the court may tend toagree.

VII. CONCLUSION

A plaintiff seeking preliminary injunctive relief must movepromptly after becoming aware of acts of alleged infringement orunfair competition, or risk a finding that it has not established athreat of irreparable harm. No uniform standard exists, however,as to whether the plaintiff has moved promptly enough. Certainlyin the Second Circuit, and particularly within the New Yorkfederal judicial districts, “promptly” means three months or less.Outside of the Second Circuit, delays up to six months will likelybe considered acceptable, and even longer delays of six to twelvemonths may not necessarily disqualify the plaintiff from obtainingexpedited relief.

A court is more likely to excuse a plaintiff’s delay if it isattributable to settlement negotiations conducted actively anddiligently, or if the plaintiff has a legitimate need to investigatethe defendant’s infringement or develop evidence in support of themotion for a preliminary injunction. Finally, even after a plaintiffhas commenced suit or filed a motion for preliminary relief, it must

110. 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999).

111. 87 F. Supp. 2d at 724, 54 U.S.P.Q.2d at 1508.


Vol. 92 TMR 663

still conduct itself in the litigation as if the need for an injunctionis truly urgent.


664 Vol. 92 TMR

UPDATED APPENDIX 2002FIRST CIRCUIT

CASEDELAY

LENGTH

HOLDINGON

MOTION

Montblanc-Simplo GMBH v.Staples, Inc., 172 F. Supp. 2d 231(D. Mass. 2001)

2 months granted

Media3 Technologies, LLC v. MailAbuse Prevention System, LLC,2001 WL 92389 (D. Mass. 2001)

6 months denied

Boustany v. Boston Dental Group,Inc., 42 F. Supp. 2d 100 (D. Mass.1999)

8 months granted

Fritz v. Arthur D. Little, Inc., 944F. Supp. 95, 41 U.S.P.Q.2d 1352 (D.Mass. 1996)

At least 2yearsconstructivenotice

denied

Supercuts, Inc. v. Super Clips, 18U.S.P.Q.2d 1378 (D. Mass. 1990)

10 months:suit broughtafter 1 month;motion filed 9months later

granted

Calamari Fisheries, Inc. v. TheVillage Catch, Inc., 698 F. Supp.994, 8 U.S.P.Q.2d 1953 (D. Mass.1988)

21 monthsafter first use;1 month afterexpansioncausedincreased levelof confusion

granted

Salt Water Sportsman, Inc. v.B.A.S.S. Inc., 685 F. Supp. 12, 4U.S.P.Q.2d 1407 (D. Mass. 1987), asamended 5 U.S.P.Q.2d 1620 (D.Mass. 1987)

less than 6months

granted

Jordan K. Rand, Ltd. v. LazoffBros., Inc., 537 F. Supp. 587, 217U.S.P.Q. 795 (D.P.R. 1982)

3 months granted

SECOND CIRCUIT

Tough Traveler, Ltd. v. OutboundProducts, 60 F.3d 964, 35U.S.P.Q.2d 1617 (2d Cir. 1995)

13 months(complaintfiled after 9months)

vacatingdistrictcourt’s grant


Vol. 92 TMR 665

CASEDELAY

LENGTH

HOLDINGON

MOTION

Tom Doherty Associates, Inc. v.Saban Entertainment, Inc., 60 F.3d27, 35 U.S.P.Q.2d 1537 (2d Cir.1995)

4 months affirmingdistrictcourt’s grant

King v. Innovation Books, 976 F.2d824, 24 U.S.P.Q.2d 1435 (2d Cir.1992)

11 monthsfromknowledge ofintended use,including 3months fromknowledge ofactual use

granted

Majorica, S.A. v. R.H. Macy & Co.,762 F.2d 7, 226 U.S.P.Q. 624 (2dCir. 1985)

several years denied

Citibank, N.A. v. Citytrust, 756F.2d 273, 225 U.S.P.Q. 708 (2d Cir.1985)

10 weeks afterdirect notice ofactual use; 9months afternotice ofintended usein press; yearsafter notice ofuse in anotherstate

denied

Harlequin Enterprises Ltd. v. Gulf& Western Corp., 644 F.2d 946, 210U.S.P.Q. 1 (2d Cir. 1981)

6 months afternotice ofintended use;3 months afternotice ofactual use

granted

My-T-Fine Corp. v. Samuels, 69F.2d 76, 21 U.S.P.Q. 94 (2d Cir.1934)

2 years granted

Yurman Design Inc. v. Diamondsand Time, 169 F. Supp. 2d 181(S.D.N.Y. 2001)

4 months granted

Tactica Intern., Inc. v. AtlanticHorizon Intern., Inc., 154 F. Supp.2d 586 (S.D.N.Y. 2001)

1 month granted

Magnet Communications, LLC v.Magnet Communications, Inc., 2001WL 1097965 (S.D.N.Y. 2001)

3 months denied


666 Vol. 92 TMR

CASEDELAY

LENGTH

HOLDINGON

MOTION

Media Group, Inc. v. Ontel ProductsCorp., 2001 WL 169776 (D. Conn.2001)

7-8 months(complaintfiled after 4-5months)

denied

Origins Natural Resources, Inc. v.Kotler, 2001 WL 492429 (S.D.N.Y.2001)

4-6 months denied

Greenpoint Financial Corp. v.Sperry & Hutchinson Co., 116 F.Supp. 2d 405 (S.D.N.Y. 2000)

4 months denied

Ryan v. Vulpine Stamp Co., 107 F.Supp. 2d 369 (S.D.N.Y. 2000)

2 months granted

ImOn, Inc. v. ImaginOn, Inc., 90 F.Supp. 2d 345 (S.D.N.Y. 2000)

4 months denied

First Jewellery Co. of Canada, Inc.v. Internet Shopping Network LLC,53 U.S.P.Q.2d 1838 (S.D.N.Y. 2000)

2 months granted

Gidatex, S.r.L. v. CampanielloImports, Ltd., 13 F. Supp. 2d 417,47 U.S.P.Q.2d 1701 (S.D.N.Y. 1998)

more than 2years (5-8months aftertermination ofrelatedlitigationbetweenparties)

denied

Lexington Management Corp. v.Lexington Capital Partners, 10 F.Supp. 2d 271 (S.D.N.Y. 1998)

5-6 months granted

Marcy Playground, Inc. v. CapitolRecords, Inc., 6 F. Supp. 2d 277(S.D.N.Y. 1998)

9 months denied

Marshak v. Thomas, 1998 WL476192 (E.D.N.Y. 1998)

2 months granted

Ushodaya Enterprises, Ltd. v.V.R.S. Intern., Inc., 47 U.S.P.Q.2d1223 (S.D.N.Y. 1998)

almost 3 yearsat minimum

denied

General Cigar Co., Inc. v. G.D.M.Inc., 988 F. Supp. 647, 45U.S.P.Q.2d 1481 (S.D.N.Y. 1997)

3 months granted


Vol. 92 TMR 667

CASEDELAY

LENGTH

HOLDINGON

MOTION

Les Ballets Trockadero de MonteCarlo, Inc. v. Trevino, 945 F. Supp.563, 41 U.S.P.Q.2d 1109 (S.D.N.Y.1996)

2 months granted

Krueger International, Inc. v.Nightingale Inc., 915 F. Supp. 595(S.D.N.Y. 1996)

6-9 months denied

Bear U.S.A., Inc. v. A.J. Sheepskin& Leather Outerwear, Inc., 909 F.Supp. 896, 38 U.S.P.Q.2d 1640(S.D.N.Y. 1995)

1-2 months forsomeinfringingproducts; 3-4months forotherinfringingproducts

granted as to1-2 monthdelay; deniedas to 3-4month delay

Trustco Bank, Nat. Ass’n v. GlensFalls National Bank and Trust Co.,N.A., 903 F. Supp. 335 (N.D.N.Y.1995)

3 months denied (butdelay foundexcusable)

Firma Melodiya v. ZYX MusicGmbH, 882 F. Supp. 1306 (S.D.N.Y.1995)

3-4 months granted

Museum Boutique Intercontinental,Ltd. v. Picasso, 880 F. Supp. 153(S.D.N.Y. 1995)

14 years (15months fromalleged changein scope ofinfringementwhilestandstillagreement ineffect)

denied

Cheng v. Dispeker, 35 U.S.P.Q.2d1493 (S.D.N.Y. 1995)

5 months denied

Del-Rain Corp. v. Pelonis USA Ltd.,1995 WL 116043 (W.D.N.Y. 1995)

23 months denied

Swanson v. Georgetown Collection,Inc., 1995 WL 72717 (N.D.N.Y.1995)


denied

Mastercard International, Inc. v.Sprint Communications Co., 30U.S.P.Q.2d 1963 (S.D.N.Y. 1994)

6-9 monthsfromknowledge ofintended use

granted(dicta)


668 Vol. 92 TMR

CASEDELAY

LENGTH

HOLDINGON

MOTION

Tommy Hilfiger U.S.A., Inc. v.Siegfried & Parzifal, Inc., 31U.S.P.Q.2d 1222 (S.D.N.Y. 1994)

2-3 years fromnotice ofinitialelements ofinfringement

denied

Dial-A-Mattress Operating Corp. v.Mattress Madness, Inc., 841 F.Supp. 1339 (E.D.N.Y. 1994)

3-4 years granted

Jordache Enterprises, Inc. v. LeviStrauss & Co., 841 F. Supp. 506(S.D.N.Y. 1993)

4 years denied

Kraft General Foods, Inc. v. AlliedOld English, Inc., 831 F. Supp. 123,31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993)

7 months frompublication ofdefendant’smark

granted

Chase Manhattan Corp. v.Northwestern Mutual Life, 1993WL 60602 (S.D.N.Y. 1993)

11 months:suit broughtafter 5months;motion filed 6months later

denied

Bausch & Lomb, Inc. v. Nevitt SalesCorp., 810 F. Supp. 466, 26U.S.P.Q.2d 1275 (W.D.N.Y. 1993)

1 month afterincreasedscope ofinfringement

granted

H.G.I. Marketing Services, Inc. v.Pepsico, Inc., 1992 WL 349675(N.D.N.Y. 1992)

2-4 years denied

American Direct Marketing v. AzadInternational, Inc., 783 F. Supp. 84,22 U.S.P.Q.2d 1108 (E.D.N.Y. 1992)

3-6 months denied (butdelay foundexcusable)

MGM Pathe Communications Co. v.Pink Panther Patrol, 774 F. Supp.869, 21 U.S.P.Q.2d 1208 (S.D.N.Y.1991)

6 months granted

National Football League PlayersAssociation v. National FootballLeague Properties, Inc., 1991 WL79325 (S.D.N.Y. 1991) (licensingdispute)

9 months denied


Vol. 92 TMR 669

CASEDELAY

LENGTH

HOLDINGON

MOTION

Century Time Ltd. v. Interchron,729 F. Supp. 366, 14 U.S.P.Q.2d1765 (S.D.N.Y. 1990)

6 months: suitbrought after2 months;motion filed 4months later

denied

Lanvin, Inc. v. Colonia, 739 F.Supp. 182 (S.D.N.Y. 1990)(licensing dispute)

7 months denied

Mathematica Policy Research, Inc.v. Addison-Wesley Publishing Co.Inc., 11 U.S.P.Q.2d 1391 (S.D.N.Y.1989)

10 months denied

Comic Strip, Inc. v. Fox TelevisionStations, Inc., 710 F. Supp. 976, 10U.S.P.Q.2d 1608 (S.D.N.Y. 1989)

7 months denied

Kusan, Inc. v. Alpha Distributors,Inc., 693 F. Supp. 1372, 7U.S.P.Q.2d 1211 (D. Conn. 1988)

17-18 months denied

Artemide Spa v. Grandlite Design &Mfg. Co., Inc., 672 F. Supp. 698, 4U.S.P.Q.2d 1915 (S.D.N.Y. 1987)

7 months granted inpart

Great Lakes Mink Assn. v. Furrari,Inc., No. 86-6038 (S.D.N.Y.12/21/87), 1987 U.S. Dist. LEXIS11800

20 months denied

Ventura Travelware, Inc. v. A to ZLuggage Co., 1 U.S.P.Q.2d 1552(E.D.N.Y. 1986)

approximately18 months

granted

Allen Organ Co. v. CBS, Inc., 230U.S.P.Q. 479 (S.D.N.Y. 1986)

7-8 months denied

Gear, Inc. v. L.A. Gear California,Inc., 637 F. Supp. 1323, 227U.S.P.Q. 980 (S.D.N.Y. 1986)

17-18 months denied

Nina Ricci S.A.R.L. v. GemcraftLtd., 612 F. Supp. 1520, 226U.S.P.Q. 575 (S.D.N.Y. 1985)

4 months fromnotice,including 6weeks frombreakdown ofsettlementtalks

denied


670 Vol. 92 TMR

CASEDELAY

LENGTH

HOLDINGON

MOTION

Calvin Klein Co. v. Farah Mfg. Co.,Inc., 229 U.S.P.Q. 795 (S.D.N.Y.1985)

7 years of use;plaintiff’sclaim of lessthan 6months’ noticerejected

denied

I. Peiser Floors, Inc. v. I.J. Peiser’sSons, Inc., No. 81-3359 (S.D.N.Y.10/4/82), 1982 U.S. Dist. LEXIS15465

2 years granted

Exxon Corp. v. Xoil EnergyResources, Inc., 552 F. Supp. 1008,216 U.S.P.Q. 634 (S.D.N.Y. 1981)


denied

Nike, Inc. v. Rubber Mfrs. Assn.,509 F. Supp. 919, 212 U.S.P.Q. 225(S.D.N.Y. 1981)

severalmonths

granted

C.B. Sports, Inc. v. Gaechter-Haber& Associates, Inc., 210 U.S.P.Q. 597(D. Vt. 1981)

6 months granted

Le Sportsac, Inc. v. DocksideResearch, Inc., 478 F. Supp. 602,205 U.S.P.Q. 1055 (S.D.N.Y. 1979)

10 months denied

Mego Corp. v. Mattel, Inc., 203U.S.P.Q. 377 (S.D.N.Y. 1978)

7 months afternotice ofintended use

denied

Programmed Tax System, Inc.Raytheon Co., 419 F. Supp. 1251,193 U.S.P.Q. 435 (S.D.N.Y. 1976)

4-5 monthsafter actualnotice; 3 yearsafter first use

denied

Le Cordon Bleu S.a.r.l. v. BPCPublishing Ltd., 327 F. Supp. 267,170 U.S.P.Q. 477 (S.D.N.Y. 1971)

13 weeks denied

Gianni Cereda Fabrics, Inc. v.Bazaar Fabrics, Inc., 173 U.S.P.Q.188 (S.D.N.Y. 1971) (copyright andtrademark claims)

7 1/2 months denied

Helena Rubenstein, Inc. v. FrancesDenney, Inc., 286 F. Supp. 132, 159U.S.P.Q. 346 (S.D.N.Y. 1968)

20 months denied


Vol. 92 TMR 671

CASEDELAY

LENGTH

HOLDINGON

MOTION

Stix Products, Inc. v. UnitedMerchants & Mfrs., Inc., 273 F.Supp. 250, 154 U.S.P.Q. 477(S.D.N.Y. 1967)

preliminaryinjunctionmotion filed 5years aftersuit

denied

Goodyear Tire & Rubber Co. v.Topps of Hartford, Inc. 247 F. Supp.899, 147 U.S.P.Q. 240 (D. Conn.1965)

8-9 years denied

Colgate-Palmolive Co. v. NorthAmerican Chemical Corp. 238 F.Supp. 81, 144 U.S.P.Q. 266(S.D.N.Y. 1964)

20 months granted

Gillette Co. v. Ed Pinaud, Inc., 178F. Supp. 618, 123 U.S.P.Q. 531(S.D.N.Y. 1959)

4-5 years denied

THIRD CIRCUIT

Times Mirror Magazines, Inc. v. LasVegas Sports News, L.L.C., 212F.3d 157, 54 U.S.P.Q.2d 1577 (3dCir. 2000), cert. denied, 531 U.S.1071, 121 S. Ct. 760 (2001)

14-15 months grantaffirmed

Pappan Enterprises, Inc. v.Hardee’s Food Systems, Inc., 143F.3d 800, 46 U.S.P.Q.2d 1769 (3dCir. 1998)

5 weeks reverseddistrictcourt’s denial

S&R Corp. v. Jiffy LubeInternational, Inc., 968 F.2d 371, 23U.S.P.Q.2d 1201 (3d Cir. 1993)

3 1/2 months granted

J & J Snack Foods, Corp v. NestleUSA, Inc., 149 F. Supp. 2d 136(D.N.J. 2001)


denied

New Dana Perfumes Corp. v. TheDisney Store, Inc., 131 F. Supp. 2d616 (M.D. Pa. 2001)

50 years (as toone claim); 9-10 months (asto anotherclaim)

denied

Sunquest Information Systems, Inc.v. Park City Solutions, Inc., 130 F.Supp. 2d 680 (W.D. Pa. 2000)

15 months granted


672 Vol. 92 TMR

CASEDELAY

LENGTH

HOLDINGON

MOTION

Novartis Consumer Health, Inc. v.Johnson & Johnson-MerckConsumer Pharmaceuticals Co., 129F. Supp. 2d 351, 57 U.S.P.Q.2d1522 (D.N.J. 2000)

9 months (asto claimagainstproductname); 4months (as toadvertisingclaim)

granted

Mobilificio San Giacomo S.p.A. v.Stoffi, 1997 WL 699299 (D. Del.1997)

6 months afterfiling suit (but1 month afteruse of markbecameunauthorized)

granted

Rockland Mortgage Corp. v.Shareholder’s Funding Inc., 835 F.Supp. 182, 30 U.S.P.Q.2d 1270 (D.Del. 1993)


granted

Accu Personnel, Inc. v. AccuStaffInc., 823 F. Supp. 1161, 27U.S.P.Q.2d 1801 (D. Del. 1993)

9 months afterknowledge ofintended use,including 2months afterknowledge ofexpandedactivity

granted

W.L. Gore & Associates, Inc. v.Totes, Inc., 23 U.S.P.Q.2d 1091 (D.Del. 1992)

4 months afterincreasedscope ofactivity

granted

Warner Lambert Co. v. McCrory’sCorp., 718 F. Supp. 389, 12U.S.P.Q.2d 1884 (D.N.J. 1989)

12 monthsafter first use;5 months afterclaimed actualnotice

denied

American International Group, Inc.v. American International Airways,Inc., 726 F. Supp. 1470, 14U.S.P.Q.2d 1933 (E.D. Pa. 1989)

3 years denied


Vol. 92 TMR 673

CASEDELAY

LENGTH

HOLDINGON

MOTION

Transfer Print Foils, Inc. v.Transfer Print America, 720 F.Supp. 425, 12 U.S.P.Q.2d 1753(D.N.J. 1989)

16 months:suit broughtafter 5months;motion filed11 monthslater

granted

Country Floors, Inc. v. Gepner, 11U.S.P.Q.2d 1401 (E.D. Pa. 1989)

at least 2years’ actualnotice; up to 6years’constructivenotice

denied

Mars, Inc. v. H.P. Mayer Corp.,1988 U.S. Dist. LEXIS 9069 (D.N.J.1988) (not for publication)


denied

Reedco, Inc. v. Hoffmann-La Roche,Inc., 667 F. Supp. 1072, 2U.S.P.Q.2d 1994 (D.N.J. 1987)

17 monthsafter actualnotice; yearsafter notice inthe press

denied

Horizon Financial, F.A. v. HorizonBancorp., 2 U.S.P.Q.2d 1696 (E.D.Pa. 1987)

13 years use; 8months aftergeographicexpansion ofdefendant’suse

granted

Louis Rich, Inc. v. Horace W.Longacre, Inc., 423 F. Supp. 1327,195 U.S.P.Q. 308 (E.D. Pa. 1976)

2 months granted

FOURTH CIRCUIT

Wilson-Cook Medical, Inc. v. Wiltex,Inc., 18 U.S.P.Q.2d 1642 (4th Cir.1991)

1 year denied

Nabisco Brands, Inc. v. ConusaCorp., 722 F. Supp. 1287, 11U.S.P.Q.2d 1788 (M.D.N.C.) aff’dmem., 892 F.2d 74, 14 U.S.P.Q.2d1324 (4th Cir. 1989)

5-8 monthsfrom increasein scope ofinfringement

granted


674 Vol. 92 TMR

CASEDELAY

LENGTH

HOLDINGON

MOTION

Rubbermaid Commercial Products,Inc. v. Contico International, Inc.,836 F. Supp. 1247, 29 U.S.P.Q.2d1574 (W.D. Va. 1993) (design patentand trade dress case)

almost 2years,including 8months afterissuance ofdesign patent

granted

John Lemmon Films, Inc. v.Atlantic Releasing Corp., 617 F.Supp. 992, 227 U.S.P.Q. 386(W.D.N.C. 1985)

8 months denied

FIFTH CIRCUIT

Amicus Communications, L.P. v.Hewlett-Packard Co., 1999 WL495921 (W.D. Tex. 1999)

2-3 years denied

TJM Corp. v. Xerox Corp., 25U.S.P.Q.2d 1067 (E.D. La. 1992)


denied

American Rice, Inc. v. ArkansasRice Growers Cooperative Assn.,532 F. Supp. 1376, 214 U.S.P.Q. 936(S.D. Tex. 1982), aff’d, 701 F.2d 408,218 U.S.P.Q. 489 (5th Cir. 1983)

3 weeks afterincreased levelofinfringement;4 years afterlessobjectionableuse

granted

SIXTH CIRCUIT

McDonald’s Corp. v. Burger KingCorp., 87 F. Supp. 2d 722, 54U.S.P.Q.2d 1507 (E.D. Mich. 1999)

8-9 months denied

P.T.C. Brands, Inc. v. Conwood Co.L.P., 28 U.S.P.Q.2d 1895 (W.D. Ky.1993)


granted

Central Benefits Mutual InsuranceCo. v. Blue Cross & Blue ShieldAssn., 711 F. Supp. 1423, 11U.S.P.Q.2d 1103 (S.D. Ohio. 1989)

18 months granted


Vol. 92 TMR 675

CASEDELAY

LENGTH

HOLDINGON

MOTION

Frisch’s Restaurants, Inc. v. Elby’sBig Boy of Steubenville Inc., 514 F.Supp. 704, 213 U.S.P.Q. 559 (S.D.Ohio 1981), aff’d, 670 F.2d 642, 214U.S.P.Q. 15 (6th Cir. 1982), cert.denied, 459 U.S. 916 (1982)

at least 2years

granted

SEVENTH CIRCUIT

Ty, Inc. v. Jones Group, Inc., 237F.3d 891, 57 U.S.P.Q.2d 1617 (7thCir. 2001)

at least 8months(motion filed 8months aftercomplaint wasfiled)

grantaffirmed

Ideal Industries, Inc. v. GardnerBender, Inc., 612 F.2d 1018, 204U.S.P.Q. 177 (7th Cir. 1979), cert.denied, 447 U.S. 924, 206 U.S.P.Q.864 (1980)

suit filed 7months afternotice;preliminaryinjunctionmotion filed 8months later

granted

Helene Curtis Industries, Inc. v.Church & Dwight Co., Inc., 560F.2d 1325, 195 U.S.P.Q. 218 (7thCir. 1977), cert. denied, 434 U.S.1070, 197 U.S.P.Q. 592 (1978)

suit filedwithin weeksof notice;preliminaryinjunctionfiled 13months later

granted

Vaughan Mfg. Co. v. BrikamInternational, Inc., 814 F.2d 346, 1U.S.P.Q.2d 2067 (7th Cir. 1987)

10 months granted

Floralife, Inc. v. FloralineInternational, Inc., 633 F. Supp.108 (N.D. Ill. 1985); laterproceeding 807 F.2d 518, 1U.S.P.Q.2d 1132 (7th Cir. 1986)

at least 3years notice oflimited use;less than 3weeks afterknowledge ofexpanison ofuse

granted

Ty, Inc. v. Softbelly’s, Inc., 2001 WL125321 (N.D. Ill. 2001)

10 months granted


676 Vol. 92 TMR

CASEDELAY

LENGTH

HOLDINGON

MOTION

Ty, Inc. v. Publications Intern.,Ltd., 81 F. Supp. 2d 899 (N.D. Ill.2000)

14 months granted

Avent America, Inc. v. PlaytexProducts, Inc., 68 F. Supp. 2d 920(N.D. Ill. 1999)

2-3 months granted

Philip Morris, Inc. v. AllenDistributors, Inc., 48 F. Supp. 2d844, 51 U.S.P.Q.2d 1013 (S.D. Ind.1999)

5 months granted

Reins of Life, Inc. v. Vanity FairCorp., 5 F. Supp. 2d 629, 45U.S.P.Q.2d 1854 (N.D. Ind. 1997)

8-9 months denied

Porsche Cars North America, Inc. v.Manny’s Porshop, Inc., 972 F. Supp.1128, 43 U.S.P.Q.2d 1475 (N.D. Ill.1997)

4 years (10years fromfirstinfringementdispute)

granted

RWT Corp. v. Wonderware Corp.,931 F. Supp. 583 (N.D. Ill. 1996)

9 months denied

Eldon Industries, Inc. v.Rubbermaid, Inc., 735 F. Supp. 786,17 U.S.P.Q.2d 1280 (N.D. Ill. 1990)

4 1/2 years:suit broughtafter 4 years;motion filed 61/2 monthslater

denied

Stokely-Van Camp, Inc. v. Coca-Cola Co., 2 U.S.P.Q.2d 1225 (N.D.Ill. 1987)

3 months denied

American Airlines, Inc. v. A 1-800-A-M-E-R-I-C-A-N Corp., 622 F.Supp. 673, 228 U.S.P.Q. 225 (N.D.Ill. 1985)

a few monthsnotice by highlevelemployee;earlier noticeby salespersonnel

granted

Universal City Studios, Inc. v.Mueller Chemical Co., 223 U.S.P.Q.798 (N.D. Ill. 1983)

3 months granted


Vol. 92 TMR 677

CASEDELAY

LENGTH

HOLDINGON

MOTION

EIGHTH CIRCUIT

Hubbard Feeds, Inc. v. Animal FeedSupplement, Inc., 182 F.3d 598, 51U.S.P.Q.2d 1373 (8th Cir. 1999)

4 years denied

Mutual of Omaha Insurance Co. v.Novak, 775 F.2d 247, 227 U.S.P.Q.801 (8th Cir. 1985)

12 months granted

NINTH CIRCUIT

GoTo.com, Inc. v. Walt Disney Co.,202 F.3d 1199, 53 U.S.P.Q.2d 1652(9th Cir. 2000)

at least 5months(additionaldelay prior tofiling ofcomplaint)

grantaffirmed

Fogerty v. Poor Boy Productions,Inc., 124 F.3d 211 (9th Cir. 1997)(unpublished)

more than 1year

reversingdistrict courtgrant

Ocean Garden, Inc. v. MarktradeCo., 953 F.2d 500, 21 U.S.P.Q.2d1493 (9th Cir. 1991)

11 monthsfrom notice ofintended sale,including 2-3months fromnotice ofactual sale

granted

eBay, Inc. v. Bidder’s Edge, Inc.,100 F. Supp. 2d 1058 (N.D. Cal.2000) (trespass and trademarkcase)

2 years granted

Playboy Enterprises, Inc. v.Netscape Communications Corp., 55F. Supp. 2d 1070, 52 U.S.P.Q.2d1162 (C.D. Cal. 1999)

11 months denied

Sun Microsystems, Inc. v. MicrosoftCorp., 999 F. Supp. 1301, 46U.S.P.Q.2d 1531 (N.D. Cal. 1998)

6 weeks granted

Guess?, Inc. v. Tres Hermanos, Inc.,993 F. Supp. 1277, 45 U.S.P.Q.2d1179 (C.D. Cal. 1997)

9 months granted

Anheuser-Busch, Inc. v. CustomerCo., 947 F. Supp. 422 (N.D. Cal.1996)

2-3 months granted


678 Vol. 92 TMR

CASEDELAY

LENGTH

HOLDINGON

MOTION

Creative Technology Ltd. v. SRT,Inc., 29 U.S.P.Q.2d 1474 (N.D. Cal.1993)

6 months afternotice andsending ofprotest letter

granted

Sega Enterprises Ltd. v. Accolade,Inc., 785 F. Supp. 1392, 23U.S.P.Q.2d 1440 (N.D. Cal. 1992)

5 months: suitbrought after1 1/2 months;motion filed 31/2 monthslater

granted

Lisa Frank, Inc. v. ImpactInternational, Inc., 799 F. Supp.980 (D. Ariz. 1992)

7 months afterfilingComplaint; 3months afterknowledge ofexpanded lineof infringingproducts

granted

National Yellow Pages ServiceAssn. v. O’Connor Agency, Inc., 9U.S.P.Q.2d 1516 (C.D. Cal. 1988)

3 years granted

Earth Technology Corp. v.Environmental Research &Technology, Inc., 222 U.S.P.Q. 585(C.D. Cal. 1983)

2 years granted

Steinway & Sons v. Robert Demars& Friends, 210 U.S.P.Q. 954 (C.D.Cal. 1981)

2 years granted

TENTH CIRCUIT

GTE Corp. v. Williams, 731 F.2d676, 222 U.S.P.Q. 803 (10th Cir.1984)

3 years denied

Big O Tires, Inc. v. Bigfoot 4x4, Inc.,167 F. Supp. 2d 1216 (D. Colo.2001)

more than 2years

granted

Packerware Corp. v. CorningConsumer Products Co., 895 F.Supp. 1438 (D. Kan. 1995)

3-4 months denied


Vol. 92 TMR 679

CASEDELAY

LENGTH

HOLDINGON

MOTION

Studio 1712, Inc. v. Etna ProductsCo., 777 F. Supp. 844, 22U.S.P.Q.2d 1280 (D. Colo. 1991)


granted

Universal Motor Oils Co. v. AmocoOil Co., 15 U.S.P.Q.2d 1613 (D.Kan. 1990)

3 months granted

Paramount Pictures Corp. v. VideoBroadcasting Systems, 724 F. Supp.808, 12 U.S.P.Q.2d 1862 (D. Kan.1989)

15 months denied

Cyclonaire Corp. v. United StatesSystems, Inc. 209 U.S.P.Q. 310 (D.Kan. 1980)

6 months granted

Volkswagenwerk, G.m.b.H. v.Frank, 198 F. Supp. 916, 131U.S.P.Q. 236 (D. Colo. 1961)

17 monthsafter lawsuit

granted

ELEVENTH CIRCUIT

Bulova Corp. v. Bulova Do BrasilCom. Rep. Imp. & Exp. Ltda., 144F. Supp. 2d 1329, 59 U.S.P.Q.2d1077 (S.D. Fla. 2001)

4 1/2 years granted

Golden Bear International, Inc. v.Bear U.S.A., Inc., 969 F. Supp. 742,42 U.S.P.Q.2d 1283 (N.D. Ga. 1996)

8 months (firstuse was morethan a yearprior toplaintiff’s firstactual noticeof use)

denied

Glen Raven Mills, Inc. v. RamadaInternational, Inc., 1994 WL230365 (M.D. Fla. 1994)

16 monthsfrom notice ofintended use,including 11months afternotice ofactual use

denied, butcourt foundthat plaintiffhad actedpromptly

Bellsouth Advertising & PublishingCorp. v. Real Color Pages, Inc., 792F. Supp. 775 (M.D. Fla. 1991)

7-8 months granted


680 Vol. 92 TMR

CASEDELAY

LENGTH

HOLDINGON

MOTION

Original Appalachian Artworks,Inc. v. Topps Chewing Gum, Inc.,642 F. Supp. 1031, 231 U.S.P.Q. 850(N.D. Ga. 1986)

5-10 months granted

D.C. CIRCUIT

National Rural Electric CooperativeAssociation v. National AgriculturalChemical Association, 26U.S.P.Q.2d 1294 (D.D.C. 1992)

several weeksafterknowledge ofincreasedscope ofinfringement

granted

Delmatoff, Gerow, Morris,Langhans, Inc. v. Children’sHospital National Medical Center,12 U.S.P.Q.2d 1136 (D.D.C. 1989)

12 months denied


The Law Journal of the International Trademark Association

No Trolls Barred: Trademark Injunctions After eBay

David H. Bernstein and Andrew Gilden

Delay in Filing Preliminary Injunction Motions: 2009 Edition

Sandra Edelman

Genericness Surveys in Trademark Disputes: Evolution of Species

E. Deborah Jay

Space Pirates, Hitchhikers, Guides, and the Public Interest:

Transformational Trademark Law in Cyberspace

Thomas C. Folsom

The Identification of Trademark Filing Strategies: Creating, Hedging, Modernizing,

and Extending Brands

Philipp G. Sandner

Vol. 99 September-October, 2009 No. 5

®


1074 Vol. 99 TMR

DELAY IN FILING PRELIMINARY INJUNCTION MOTIONS: 2009 EDITION

By Sandra Edelman∗

I. INTRODUCTION This is the fourth article in a series that has addressed the

effect of a delay in filing a motion for preliminary injunction in a trademark lawsuit pending in a United States district court.1 The last article in the series in 2002 examined whether the advent of Internet communications in the business world had led to a more demanding requirement for speed in filing a motion for preliminary injunction than had been previously applied by the courts. The answer in 2002 was, not so much, except in the courts within the Second Circuit, which diverged from courts in other circuits by applying a more stringent standard to periods of delay in the three-to-six-month range.2

This article will provide an overview of the trademark cases that have been decided since 2002 that have devoted attention to the issue of delay in moving for a preliminary injunction, and will focus specifically on the applicable legal standards for evaluating delay, and the two primary reasons offered for excusable delay: (1) settlement and enforcement efforts by the plaintiff; and (2) an alleged expansion in the scope or nature of the defendant’s infringement. The 2009 Appendix includes all of the cases cited in the three prior articles in this series, supplemented by the cases that have been decided since 2002. As was done in prior appendices in the series, the cases are arranged by U.S. Circuit, with appellate court decisions preceding district court cases. The 2009 Appendix includes trademark and unfair competition cases as well as a few decisions involving both trademark and other intellectual property issues in which the delay issue was adjudicated with respect to the trademark claims involved. ∗ Partner, Dorsey & Whitney LLP, New York, NY; Associate Member, International Trademark Association. The author would like to thank David Cheng and Jonathan Montcalm, summer associates at Dorsey & Whitney, for their assistance with the research for this article. 1. See Sandra Edelman, Delay in Filing Preliminary Injunction Motions: Update 2002, 92 TMR 647 (2002); Sandra Edelman, Delay in Filing Preliminary Injunction Motions: A Five Year Update, 85 TMR 1 (1995); Robert L. Raskopf & Sandra Edelman, Delay in Filing Preliminary Injunction Motions: How Long Is Too Long? 80 TMR 36 (1990). 2. 92 TMR at 649-54.


Vol. 99 TMR 1075

II. CURRENT STANDARDS FOR EXCUSABLE DELAY Since 2002, it seems as if the speed of business decisions and

communications has continued to accelerate, perhaps exemplified by the best-selling book entitled Blink by Malcolm Gladwell, which is about instantaneous intuitive decision-making;3 and the emergence of Twitter, a real-time, 140-character limited Internet messaging service. Has the faster pace of life since 2002 (real or imagined) led to greater expectations of speed in moving for expedited injunctive relief? Not really, but plaintiffs in the Second Circuit are still being held to a more demanding standard.

A. Generally Acceptable Periods of Delay in the Second Circuit

Based on a review of the trademark cases that were decided between 2002 and 2009 in which the courts measured and evaluated delay as a factor in deciding whether to issue a preliminary injunction, trademark litigants in the Second Circuit—and especially those in the Southern and Eastern Districts of New York—have been expected to move more quickly than litigants in other circuits in seeking preliminary injunctive relief. Most of the motions for preliminary injunctive relief were denied in the Second Circuit, with delays ranging there from four months4 to 24 years.5 With a notable exception discussed below,6 in which the Court of Appeals for the Second Circuit vacated the district court’s denial of preliminary injunctive relief where there was a delay of approximately four to six months,7 the handful of cases in the Second Circuit in which the court granted a motion for preliminary injunction generally involved very short periods of delay,8 ranging from just two days9 to four months.10 Thus, as of 3. M. Gladwell, Blink: The Power of Thinking Without Thinking (Little, Brown & Co. 2005). See also T. Hayes & M.S. Malone, The Ten Year Century, Wall St. J., Aug. 11, 2009, at A17 (observing that faster computation technology and quicker online access has led to shorter decision cycles for business enterprises). 4. The Deal, LLC v. Korangy Publ’g, Inc., 309 F. Supp. 2d 512 (S.D.N.Y. 2004). 5. Air Cargo News, Inc. v. Tabmag Publ’g, Ltd., 2007 WL 1101183 (E.D.N.Y. Apr. 11, 2007). 6. See infra Part II.C. 7. Weight Watchers Int’l, Inc. v. Luigino’s Inc., 423 F.3d 137 (2d Cir. 2005). 8. A delay of up to 20 months was also excused in Kuklachev v. Gelfman, 2008 WL 5411641 (E.D.N.Y. Dec. 22, 2008), but the circumstances were quite atypical. The plaintiff, the Russian owner of the trademark MOSCOW CATS THEATER, first learned of the defendant’s infringing use in the United States in early 2007, but he was then in Russia, did not speak English, and it therefore took time to investigate and secure appropriate counsel, who sent several protest letters. The infringing activity then ceased by early 2008, and when the plaintiff learned of further threatened infringing performances in the fall of 2008,


1076 Vol. 99 TMR 2009, plaintiffs litigating in the Second Circuit should move for preliminary injunctive relief within three months of actual or constructive notice of the infringement (or actionable expansion of infringement) in order to be confident of establishing the element of irreparable harm.

B. Generally Acceptable Periods of Delay Outside the Second Circuit

Outside of the Second Circuit, the cases decided since 2002 indicate that plaintiffs who delay three months or less in seeking preliminary injunctive relief can also be confident they can show irreparable harm.11 However, it is not at all unusual for courts in other circuits to grant motions for a preliminary injunction where the period of delay has been six to seven months;12 nine to ten months;13 or even a year or more.14 On the other hand, it is also not unusual for courts outside of the Second Circuit to deny motions for preliminary injunction where the delay in seeking relief ranges from four to nine months.15 Overall, as of 2009, a plaintiff litigating outside of the Second Circuit who has delayed six months or more has a fighting chance of obtaining preliminary he took “immediate” steps to file a motion for a preliminary injunction. Id. at ** 10-11. The court found that the delay was excusable because the “plaintiffs have diligently pursued their rights, to the extent practical, given that they are foreign nationals who do not speak English and are regularly on tour, making it difficult for them to determine the extent of harm as it occurred.” Id. 9. Virgin Enters. v. Nawab, 335 F.3d 141 (2d Cir. 2003). 10. Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003). In another case in the Western District of New York (and thus, like Kadant, not in the Southern or Eastern Districts of New York), the court found an almost one year delay from first knowledge of anticipated infringement to be reasonable, but denied the plaintiff’s motion on other grounds. See Dudley, D.C. v. Healthsource Chiropractic, Inc., 585 F. Supp. 2d 433 (W.D.N.Y. 2008). 11. See, e.g., Clam Corp. v. Innovative Outdoor Solution, Inc., 89 U.S.P.Q.2d 1314 (D. Minn. 2008); Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N.D. Cal. 2006); Lazzaroni USA Corp. v. Steiner Foods, 2006 U.S. Dist. LEXIS 74614 (D.N.J. 2006). 12. See, e.g., Oliva v. Ramirez, 2007 U.S. Dist. LEXIS 62011 (D.P.R. 2007); Keystone Consol. Indus. Inc. v. Mid-States Distrib. Co., 235 F. Supp. 2d 901 (C.D. Ill. 2002). 13. See, e.g., Jonathan Neil & Assocs., Inc. v. JNA Seattle, Inc., 2007 WL 788354 (W.D. Wash. Mar. 14, 2007); Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 14. See, e.g., Nat’l Council of Young Men’s Christian Assocs. of U.S. v. Human Kinetics Publishers, Inc., 2006 WL 752950 (N.D. Ill. Nov. 21, 2003); Conversive, Inc. v. Conversagent, Inc., 433 F. Supp. 2d 1079 (C.D. Cal. 2006). 15. See, e.g., Cascade Fin. Corp. v. Issaquah Cmty. Bank, 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007); J.D. Williams & Co. v. Am. Home Mortgage Inv. Corp., 2005 WL 1429271 (W.D. Okla. June 13, 2005); MB Fin. Bank, N.A. v. MB Real Estate Serv., LLC, 2003 WL 752950 (N.D. Ill. Nov. 21, 2003).


Vol. 99 TMR 1077 injunctive relief, while that would not likely be the case within the Second Circuit. Even if the delay outside the Second Circuit is more than a year, there is still a chance of obtaining expedited preliminary injunctive relief, but the case must be strong on the merits and the equities, and the plaintiff better have a good excuse for the delay.

C. Outliers: Two Recent Examples of Appellate Court Leniency

Interestingly, two appellate court decisions since 2002 in Circuits particularly active in the trademark field—the Second and the Third—were relatively lenient in evaluating both the length of the delay and the excuses offered by plaintiffs for their delay in seeking expedited injunctive relief.

The Second Circuit’s decision in Weight Watchers International, Inc. v. Luigino’s, Inc.16 involved a motion by Weight Watchers to modify a preliminary injunction order that had been entered on June 30, 2003, against the use of packaging by Luigino’s that made certain references in a confusing manner to Weight Watchers’ POINTS trademark. That same month, Luigino’s introduced new packaging that Weight Watchers learned about “some time over the summer,” or the latest by September 2003.17 Weight Watchers then conducted informal testing to evaluate whether the Luigino’s packaging was confusing consumers; objected to the packaging for the first time on September 23, 2003; commissioned a formal consumer survey that was completed by the end of November 2003; and moved for a modification of the preliminary injunction order on January 16, 2004—almost seven months after first use of the new packaging by Luigino’s, and likely four to six months after Weight Watchers first had actual notice of the new packaging.18

The Second Circuit vacated the district court’s substantial denial of the Weight Watcher motion for preliminary injunction and remanded the case for further proceedings consistent with the opinion. The Second Circuit specifically addressed the argument by Luigino’s that Weight Watchers had unduly delayed in bringing the motion. The court acknowledged that it had previously found “delays of as little as ten weeks sufficient to defeat the presumption of irreparable harm,”19 but that it had also held that 16. 423 F.3d 137 (2d Cir. 2005). The author’s law firm was counsel to defendant Luigino’s in this action. 17. Id. at 140, 144. 18. Id. 19. Id. at 144 (citing Citibank, N.A. v. Citytrust, 756 F.2d 273, 276-77 (2d Cir. 1985)).


1078 Vol. 99 TMR “a short delay does not rebut the presumption where there is good reason for it, as when a plaintiff is not certain of the infringing activity or has taken additional time to examine the infringing product.”20 After considering the facts concerning Weight Watchers’ delay, the court held, “While Weight Watchers did not act as promptly as it could have, the delay here, in all the circumstances, does not require denial of the modification it seeks.”21

Although it is not unusual for courts in other circuits to excuse a four- to six-month delay,22 the Weight Watchers case is a bit of an outlier in the Second Circuit, which the Weight Watchers court tacitly acknowledged by referring to its prior decision denying preliminary injunctive relief in a case involving a ten-week delay.23 Perhaps the court was inclined to be more forgiving of a delay where a preliminary injunction was already in place.

The Third Circuit’s decision in Kos Pharmaceuticals, Inc. v. Andrx Corp.24 was also somewhat unusual in excusing a plaintiff’s delay of more than one year in moving for preliminary injunctive relief. The case involved an action by plaintiff Kos, the owner of the mark ADVICOR for a cholesterol medication, to enjoin the use of the mark ALTOCOR by defendant Andrx for its own cholesterol drug.25 A month after Kos began marketing the ADVICOR drug in December 2001, it learned that Andrx had received preliminary FDA (U.S. Food and Drug Administration) marketing approval to sell the same type of medication under the name ALTOCOR. In February 2002, Andrx’s trademark application to register ALTOCOR, which it filed in December 2000, was published for opposition by the U.S. Trademark Office.26

Kos contacted the FDA Division of Medication Errors in March 2002 to express its concerns about the Andrx mark, and sent two letters to Andrx in April 2002 objecting to its use of ALTOCOR. A month later in May 2002, Kos filed an opposition proceeding in the U.S. Trademark Office against Andrx’s trademark registration application. Andrx began marketing ALTOCOR in July 2002, and in January and February 2003, Kos sent Andrx information concerning multiple instances of alleged actual consumer confusion 20. 423 F.3d at 144-45. 21. Id. at 145. 22. See, e.g., PDL, Inc. v. All Star Driving School, 2007 WL 1515739 (E.D. Cal. May 22, 2007); Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003). 23. 423 F.3d at 144. 24. 369 F.3d 700 (3d Cir. 2004). 25. Id. at 703-04. 26. Id. at 704-05.


Vol. 99 TMR 1079 between the parties’ marks.27 It was not until August 2003 that Kos filed in a U.S district court a complaint against Andrx for trademark infringement and a motion for a preliminary injunction. The district court denied the Kos motion for preliminary injunctive relief, holding that Kos had failed to show a likelihood of success on the merits of its trademark infringement claims, but the Third Circuit reversed and remanded the case for the entry of preliminary injunctive relief.28

The Third Circuit addressed the issue of whether Kos’s delay had undercut its showing of irreparable harm, and initially disagreed with the district court’s finding that Kos had not generated sufficient goodwill to suffer irreparable harm in light of the relatively short period of time in which Kos’s ADVICOR drug had been on the market. As the Third Circuit pointed out, this finding was inconsistent with the district court’s further holding that Kos had developed a “high level of commercial strength” in its mark, evidenced by $70 million in sales.29 Moreover, as the Third Circuit observed,

[W]e do not agree that a company’s goodwill is less likely to be irreparably harmed if it has used its mark for only a short time. Indeed, it could be argued that irreparable harm is more likely when a “young” mark, rather than an old and well-established mark, is infringed.30 Moving from its factual findings to the appropriate legal

standard, the Third Circuit rejected the argument that Kos’s delay of more than 13 months after Andrx’s product was first marketed was sufficient to rebut the presumption of irreparable harm.31 Rather, the court clarified that under Third Circuit precedent,32 only “inexcusable” delay could defeat the presumption of irreparable harm in an appropriate case.33 As the court found, “Kos sought relief directly and through administrative proceedings from the time it learned of the proposed use of the ALTOCOR mark through the time it filed this suit.”34 In addition, Andrx was found to have contributed to Kos’s delay when it submitted alternate 27. Id. at 705. 28. Id. 29. Id. at 726. 30. Id. 31. Id. at 727. Note that the plaintiff’s total delay was much longer if measured from the date of its first notice of the defendant’s mark. 32. Times Mirror Magazines, Inc. v. Las Vegas Sports News, LLC, 212 F.3d 157 (3d Cir. 2000). 33. 369 F.3d at 727 (emphasis in original). 34. Id. at 721.


1080 Vol. 99 TMR names to the FDA, and stated in its annual report that Kos had opposed its application for trademark registration and that Andrx might “seek to change the name of Altocor.”35 The court concluded, “Under these circumstances, no reasonable fact finder could find that Kos had waived its rights or conceded that it was not irreparably harmed by filing when it did.”36

Although the Third Circuit has generally been more tolerant of delay than has the Second Circuit, excusing a delay of at least 13 months is noteworthy. Of course, the involvement of pharmaceuticals with the possibility of medication error may have tipped the scales for the court37 in determining that preliminary injunctive relief was appropriate.

III. THE ROLE OF DELAY IN ADJUDICATING PRELIMINARY INJUNCTION MOTIONS

An alleged delay in filing a motion for preliminary injunction is just one of many factors a court will consider in determining whether to grant or deny the motion. Most decisions involve a thorough examination of the plaintiff’s likelihood of success on the merits of its substantive trademark claims, for that is one of the pillars of the legal standard for granting a motion for preliminary injunction.38 Occasionally, the delay will be sufficiently long that a court will deny the motion on that basis alone, without even providing a written analysis of the merits of the plaintiff’s claims. For example, in Adventure Plus Enterprises, Inc. v. Gold Suit, Inc.,39 the court denied a motion for a preliminary injunction where the plaintiff waited nearly 15 months after discovering the alleged infringement to file its lawsuit, and then almost three more months before seeking a preliminary injunction, all without

35. Id. 36. Id. 37. The appellate court mentioned the district court’s finding that Kos had not established a “serious health risk” due to medication error, but nonetheless found that the public interest favored the issuance of injunctive relief. Id. at 730. 38. A plaintiff generally has to demonstrate a probability of success on the merits of its claims at trial; that it will suffer irreparable injury absent a preliminary injunction that will preserve the status quo pending trial; and that the balance of hardships tips in favor of the plaintiff. Courts in some circuits also examine whether the public interest favors granting preliminary injunctive relief. See generally 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 30:31; 30:32 (4th ed. 2009) [hereinafter McCarthy]. 39. 2008 U.S. Dist. LEXIS (N.D. Tex. April 2, 2008).


Vol. 99 TMR 1081 offering any explanation for the delay.40 The court’s Memorandum Order in this case focused solely on the issue of delay.41

In other cases, the issue of delay played a supporting role, but was not case-determinative. In The Deal, LLC v. Korangy Publishing, Inc.,42 the plaintiff was aware of the defendant’s magazine in April 2003, but did not bring suit until October 2003, and then waited another four weeks to file a motion for preliminary injunctive relief. After addressing the issue of delay in a few brief paragraphs, the court stated, “While plaintiff’s delay in seeking relief informs the question of whether The Deal has suffered irreparable harm, the delay is not so lengthy as to require denial of the motion.”43 The court then proceeded to engage in an extended analysis as to why the plaintiff had failed to demonstrate a likelihood of success on its trademark infringement claims, resulting in a denial of the requested relief.44

The issue of delay in filing a motion for preliminary injunction received extensive treatment in a few cases, such as in Pharmacia Corp. v. Alcon Laboratories, Inc.45 Several pages of the court’s opinion denying the motion are devoted to the delay issue, even though the court also concluded that plaintiff Pharmacia had not made a showing of a likelihood of success on its trademark claims. Thus, the court could have addressed more briefly the issue of the plaintiff’s delay of more than one year in seeking expedited injunctive relief. The court rejected multiple reasons given by the plaintiff as to why it had waited so long to bring the motion, including patent negotiations, the possibility (deemed “remote” by the court) that the FDA would not approve the defendant’s product, the need to investigate the defendant’s product, and the defendant’s alleged bad faith in adopting the mark at issue.46 The court held that the plaintiff’s delay “was a separate but equally dispositive basis, apart from the weakness of Pharmacia’s case on

40. Id. at **3-4; see also n.56 for discrepancies in the court’s stated calculations in this case. 41. Id.; cf. Brockmeyer v. Hearst Corp., 2002 U.S. Dist. LEXIS 11725, at **10-13 (S.D.N.Y. June 27, 2002) (the court held that the delay of more than 15 months was a “sufficient ground” for the denial of the plaintiff’s preliminary injunction motion, but then also proceeded to analyze and determine that the plaintiff had not demonstrated a likelihood of success on the merits or the other substantive requirements for obtaining expedited relief). 42. 309 F. Supp. 2d 512 (S.D.N.Y. 2004). 43. Id. at 521 (emphasis in original). 44. Id. at 521, 530 (emphasis in original). 45. 201 F. Supp. 2d 335 (D.N.J. 2002). 46. Id. at 384-85.


1082 Vol. 99 TMR the merits, for denying Pharmacia’s motion for a preliminary injunction.”47

Whether or not the issue of delay receives brief or thorough treatment, it often appears that a court will assess the reasonableness of the alleged delay in light of its overall views of the merits of the plaintiff’s case. If the plaintiff’s claims are perceived as weak, the court will not likely be tolerant of a delay in seeking relief.48 Conversely, when the merits are strong and/or the equities strongly disfavor the defendant, the court will more likely be forgiving of a plaintiff’s delay.49

IV. MEASURING THE PERIOD OF DELAY The court in Pharmacia Corp. v. Alcon Laboratories, Inc.,50

confirmed, Actual or constructive notice is the governing standard for measuring delay in moving for preliminary injunctive relief. Thus, courts consider both a trademark plaintiff’s actual knowledge of infringement and its constructive knowledge.51 The court explained that a trademark plaintiff has a duty to

police the market for infringing uses. Thus, the “should have known” standard is “satisfied by contrasting the full scope of a party’s monitoring practices and the way it addressed marks it truly regarded as violating its rights, with its inactivity with respect to the mark it belatedly seeks to enjoin.”52

Although some judicial opinions make it easier to calculate the period of delay by providing a detailed chronology that reveals what happened and when, other courts address the issue of delay 47. Id. at 382. 48. See, e.g., Ultimate Trading Corp. v. Daus, 2007 WL 302 5681 (D.N.J. Oct. 15, 2007); Lapham v. Porach, 2007 WL 1224924 (S.D.N.Y. Apr. 25, 2007) (the plaintiff failed to establish likelihood of success on the merits); Richard A. Leslie Co. v. Birdie, LLC, 2007 WL 4245847 (S.D.N.Y. Nov. 26, 2007) (weak ownership rights demonstrated by the plaintiff); MJM Prods. v. Kelley Prods., Inc., 68 U.S.P.Q.2d 1131 (D.N.H. 2003) (the plaintiff’s unregistered mark lacked secondary meaning). 49. See, e.g., SMC Promotions, Inc. v. SMC Promotions, 355 F. Supp. 2d 1127 (C.D. Cal. 2005); Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003); Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 50. 201 F. Supp. 2d 335 (D.N.J. 2002). Where possible to discern from the recited facts, the calculation of time periods set out in the Appendix is based on this alternative standard of actual or constructive notice. 51. Id. at 382. 52. Id. at 382-83; see also Jonathan Neil & Assocs., Inc. v. JNA Seattle, Inc., 2007 WL 788354, at *6 (W.D. Wash. Mar. 14, 2007) (the relevant delay on a motion for a preliminary injunction “is the period from when the plaintiff knew or should have known of the allegedly infringing conduct until the initiation of the lawsuit.”).


Vol. 99 TMR 1083 more generally, without providing the specific information necessary to calculate or even roughly estimate the period of delay.53 Sometimes a court will highlight how long the plaintiff waited to move for preliminary injunctive relief after filing the lawsuit, which obviously leaves unaddressed how long the plaintiff knew about the defendant’s mark before commencing the litigation in the first place.54 In other cases, the court will quantify the period of delay and mention the exact dates of acquisition of knowledge and the filing of the motion for preliminary injunction, but the calculation is somewhat mystifying. For example, in Nature’s Life, Inc. v. Renew Life Formulas Inc.,55 the court stated that the plaintiff learned of the defendant’s design in January 2005, but did not file the motion for a preliminary injunction until August 2005. The court characterized this time period as a “nine month” delay,56 when it appears to be only seven months.

V. LACHES VERSUS DELAY Some courts continue to refer to the issue of delay in filing a

motion for preliminary injunction as a “laches” defense,57 while other courts have drawn a clear distinction between the legal standard for finding laches at a full trial, and the more limited inquiry involved in evaluating whether a plaintiff has demonstrated irreparable injury for purposes of obtaining a

53. See, e.g., Novartis Animal Health U.S. Inc. v. Abbeyvet Export Ltd., 409 F. Supp. 2d 264, 268 (S.D.N.Y. 2005). The court in Novartis expressly declined “to calculate the degree of urgency” with any precision, holding that while Novartis had “not acted in a way that bespeaks the urgency usually connoted by ‘irreparable harm,’” it had acted sufficiently promptly that its attempts to resolve the dispute informally “should not be held against it.” Id. at 267-68. See also Verizon Cal. Inc. v. Navigation Catalyst Sys., Inc., 568 F. Supp. 2d 1088, 1097 (C.D. Cal. 2008) (court mentions only that there was “no significant delay”); Playmakers, LLC v. ESPN, Inc., 297 F. Supp. 2d 1277 (W.D. Wash. 2003) (providing only a vague description of the relevant dates). 54. See, e.g., Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146, 1190 (C.D. Cal. 2002) (the court addressed the nine month delay between commencement of the action and the filing of the preliminary injunction motion, rather than focusing on the plaintiff’s first notice of the infringing conduct). 55. 2006 WL 62829 (D. Utah Jan. 11, 2006). 56. Id. at *7. In another instance of curious calculation, the court in Adventure Plus Enters., Inc. v. Gold Suit, Inc., 2008 U.S. Dist. LEXIS (N.D. Tex. Apr. 2, 2008), appears to calculate the time lapse between August 2005 and November 2006 as “nearly 18 months” when it in fact appears to be 15 months. In addition, the court in this case mentions that the plaintiff filed suit in November 2006, and then “waited another four months, until January 26, 2007 before seeking a preliminary injunction,” when the time lapse between the two filings appears to be only 2 ½ months. Id. at **3-4. 57. See, e.g., Oliva v. Ramirez, 2007 U.S. Dist. LEXIS (D.P.R. Aug. 21, 2007; SMC Promotions, Inc. v. SMC Promotions, 355 F. Supp. 2d 1127 (C.D. Cal. 2005).


1084 Vol. 99 TMR preliminary injunction.58 Because laches generally involves the added factor of demonstrating prejudice to the defendant, the cases that characterize the issue of delay on a motion for preliminary injunction as a laches defense also require a showing that the defendant has been prejudiced by the plaintiff’s delay in seeking expedited injunctive relief. For example, in Jonathan Neil Associates, Inc. v. JNA Seattle, Inc.,59 the court characterized the issue of delay in filing a motion for preliminary injunction as one of laches, and then set out a two-part test for establishing the laches defense: “[A] party must show (1) that the claimant unreasonably delayed in filing suit; and (2) as a result of the delay, the party suffered prejudice.”60

VI. EXCUSABLE DELAY While defendants often argue that an extended period of delay

is sufficient in itself to warrant denial of a motion for a preliminary injunction, it is important to bear in mind that only inexcusable delay will defeat the presumption of irreparable harm.61 The two reasons most commonly cited to justify a plaintiff’s delay in moving for a preliminary injunction continue to be: (1) investigative, enforcement and settlement efforts; and (2) an alleged expansion in the nature or scope of the defendant’s infringement that excuses the plaintiff’s past inaction.

A. Investigative, Enforcement and Settlement Efforts The federal courts appreciate that a plaintiff might need to

investigate the relevant facts before running into court for a preliminary injunction, and courts value extrajudicial efforts to resolve disputes in order to avoid the time, expense and resources involved in litigation. Accordingly, investigative, enforcement and settlement efforts will generally excuse a delay in moving for a preliminary injunction, so long as the efforts are pursued diligently and credibly.62 58. See generally 5 McCarthy, supra note 38, § 31:32. 59. 2007 WL 788354 (W.D. Wash. Mar. 14, 2007). 60. Id. at *6; see also Oliva v. Ramirez, 2007 U.S. Dist. LEXIS 62011 at *5; cf. Keystone Consol. Indus. Inc. v. Mid-States Distrib. Co., 235 F. Supp. 2d 901, 915 (C.D. Ill. 2002) (“to prove the defense of delay in filing a motion for a preliminary injunction, the defendant must have been ‘lulled into a false sense of security or . . . acted in reliance on the plaintiff’s delay.’”) (citation omitted). 61. See Kos Pharms., Inc. v. Andrx Corp., 369 F.3d 700, 726-27 (3d Cir. 2004). 62. See Christian v. Alloy, Inc., 72 U.S.P.Q. 2d 1697, 1699 (S.D.N.Y. 2004) (“Settlement is highly favored by the courts and [the plaintiff’s] efforts to amicably resolve the matter are to be applauded, but the mere fact that [the plaintiff] attempted to negotiate a settlement


Vol. 99 TMR 1085

In Christopher Norman Chocolates, Ltd. v. Schokinag Chocolates North America, Inc.,63 the court rejected the plaintiff’s excuse for its delay attributed to the pursuit of settlement discussions because the correspondence between the parties only occupied three months, “leaving unaccounted” a further period of delay of four months.64 Likewise, in Richard A. Leslie Co. v. Birdie LLC,65 the plaintiff sought to negotiate a settlement resolution with the defendant for two months, and when no settlement was reached, the plaintiff filed suit a few weeks later. However, the plaintiff did not move for a preliminary injunction for another three months after commencing the action. The court held that the initial two-month delay was excusable, but the later three-month period “is sufficiently long, in and of itself, to warrant denial of preliminary relief, as [the plaintiff’s] conclusory and unsubstantiated implication that he could not have moved more quickly is unpersuasive.”66

Plaintiffs are also expected to move promptly once it becomes clear to the plaintiff that the defendant will not discontinue the allegedly offending conduct. In Cascade Financial Corp. v. Issaquah Community Bank,67 the plaintiff became aware of the defendant’s allegedly infringing trademark for banking in January 2007 and promptly sent a cease and desist letter. When the defendants refused to comply, the plaintiffs sent a second letter with a deadline for a response of March 12, 2007. According to the court, when no response was received by the March 12 deadline, the plaintiffs were “on notice” that the defendants were not going to change the offending trademark. By waiting to sue until the defendant’s bank opened on July 16, 2007, and then waiting until August 1, 2007, two weeks later, to file a motion for a preliminary

does not relieve her of her burden to demonstrate irreparable harm. Settlement negotiations and a motion for preliminary relief are in no way mutually exclusive . . . .”). 63. 270 F. Supp. 2d 432 (S.D.N.Y. 2003). 64. Id. at 438-39. 65. 2007 WL 4245847 (S.D.N.Y. Nov. 26, 2007). 66. Id. at *2; see also GoNannies, Inc. v. GoAuPair.com, Inc., 464 F. Supp. 2d 603, 609 & n.5 (N.D. Tex. 2006) (“[A]lthough settlement discussions might entail some delay in seeking injunctive relief, it is difficult to see how they would support Plaintiff’s delay of over six (6) months from the time of learning of the alleged infringing conduct and seeking injunctive relief from the Court.”); J.D. Williams & Co. v. Am. Home Mortgage Inv. Corp., 2005 WL 1429271 (W.D. Okla. June 13, 2005) (finding that the plaintiff did not act diligently when it waited approximately six months to send a protest letter to the defendant and then did not file the suit or seek injunctive relief until an additional month later). 67. 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007).


1086 Vol. 99 TMR injunction, the plaintiff undercut the assertion of irreparable harm.68

The need to conduct a pre-litigation investigation received favorable treatment in Weight Watchers International, Inc. v. Luigino’s, Inc.,69 in which the court held that “a short delay” does not rebut the presumption of irreparable harm “where there is good need for it, as when a plaintiff is not certain of the infringing activity or has taken additional time to examine the infringing product.”70 In that case, as noted above,71 the court found that the plaintiff had not acted as promptly as it could have, but nonetheless excused a delay attributable in part to consumer testing of the defendant’s allegedly infringing products.72 Similarly, in MetLife, Inc. v. Metropolitan National Bank,73 the court excused a 3-1/2-month delay in taking action after the defendant’s alleged expansion of infringement, during which time the plaintiff investigated the likelihood of consumer confusion, including the commission of a market research study. As the court stated, “There is no evidence that this passage of time amounted to dilatory conduct on the plaintiffs’ part, or that it was due to anything more than an effort to investigate facts relevant to this motion.”74

On the other hand, in Pharmacia Corp. v. Alcon,75 the court rejected the plaintiff’s excuse based on the alleged need to investigate whether it had a valid trademark claim, holding,

68. Id. at *17; see also eAcceleration Corp. v. Trend Micro, Inc., 408 F. Supp. 2d 1110, 1122 & n. 4 (W.D. Wash. 2006) (the court acknowledged that some portion of the plaintiff’s delay was likely the result of attempts to resolve the matter without litigation, but by waiting to file suit until six months after the defendant made it clear it was unwilling to cease the allegedly infringing conduct, and then waiting over two additional months before moving for preliminary relief, the plaintiffs were unable to demonstrate the possibility of irreparable harm.) 69. 423 F.2d 137 (2d Cir. 2005). 70. Id. at 144-45. 71. See supra Part II.C. 72. Id. at 144. 73. 388 F. Supp. 2d 223 (S.D.N.Y. 2005). The author was counsel to the defendant in this action. 74. Id. at 237-38; see also Kuklachev v. Gelfman, 2008 WL 5411641 at *10 (E.D.N.Y. Dec. 22, 2008) (in excusing the plaintiff’s delay, the court cited a number of reasons, including “the need to investigate the nature of the infringement and to explore what legal recourse was possible”); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415 (S.D.N.Y 2004) (the court denied the plaintiff’s motion for a preliminary injunction but found that a six-month delay in seeking preliminary relief was excusable where it was attributable to the plaintiff’s efforts to “conduct an investigation and weigh the costs and benefits of pursuing a lawsuit.”) 75. 201 F. Supp. 2d 335 (D.N.J. 2002).


Vol. 99 TMR 1087 “Investigation is no excuse when the plaintiff is in possession of all of the necessary facts constituting the alleged infringement.”76

B. Expansion of the Scope or Nature of Infringement A change in the nature, extent or geographic reach of

infringing conduct can excuse a delay in filing a motion for preliminary injunction, but courts will scrutinize whether the alleged change was material and will evaluate whether the plaintiff moved promptly after the material change became apparent. The court accepted this explanation for delay in Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc.,77 where defendant Anheuser-Bush initially conducted a test market of the “Red Label from Budweiser” brand in approximately 20 to 30 bars and restaurants in New York City in September 2001, and then decided in April 2002 to expand its test marketing to three other cities beginning in July 2002. Plaintiff Guinness brought suit in February 2002, but did not move for a preliminary injunction until June 2002. The court rejected Anheuser-Busch’s argument that a nine-month delay precluded preliminary injunctive relief, holding that Guinness was not required to have taken action earlier against “the limited distribution and media penetration of ‘Red Label from Budweiser’ to date . . . .”78

The geographic expansion of the defendant’s services into the plaintiff’s market in Boston Duck Tours, LP v. Super Duck Tours, LLC,79 likewise excused the plaintiff’s six years of prior knowledge and inaction against the defendant’s services in another city, notwithstanding the fact that the plaintiff had known about the defendant’s intent to expand into the plaintiff’s market for almost two years.80 The court in this case appeared to be persuaded by the fact that the plaintiff took legal action five weeks after the defendant’s actual geographic expansion, and that 30 reported instances of actual confusion had occurred in that brief time period.81

In contrast, in EMSL Analytical, Inc. v. Testamerica Analytical Testing Corp.,82 the court rejected the plaintiff’s attempt to excuse a six-year delay in filing suit and in seeking preliminary

76. Id. at 384. 77. 2002 WL 1543817 (S.D.N.Y. July 12, 2002). 78. Id. at ** 1, 2, 6. 79. 514 F. Supp. 2d 119 (D. Mass. 2007). 80. Id. at **2-3. 81. Id. at **15-16. 82. 2006 U.S. Dist. LEXIS 16672 (D.N.J. Apr. 4, 2006).


1088 Vol. 99 TMR injunctive relief on the ground that it had only recently become aware that the defendant was offering a particular type of service. The court concluded that the nature of the infringement was apparent to the plaintiff long before it filed suit, and that the plaintiff even delayed six months in seeking injunctive relief after the plaintiff conceded it became aware of the full scope of the infringement.83 Similarly, in Air Cargo News, Inc. v. Tabmag Publishing, Ltd.,84 the court declined to excuse the plaintiff’s delay of more than 20 years in taking action against an allegedly infringing trade journal title, because it “failed to offer a tenable explanation as to why it made no objection, either formal or informal,” as the defendants systematically increased the number of copies it circulated over the past 24 years.85

C. Litigation Tactics Resulting in Delay Courts will occasionally examine the litigation conduct of the

parties in evaluating whether a delay in filing a motion for a preliminary injunction is excusable.

The excuse of alleged settlement efforts was rejected as a pretext for sharp litigation tactics in MJM Productions v. Kelley Productions, Inc.,86 a case involving the name of the defendant’s television series The Brotherhood of Poland, New Hampshire. Although the plaintiff admitted to knowing about the television series for more than six months, it waited until just sixteen days before the scheduled premiere of the television series to bring a motion for preliminary injunction. The court concluded that “the timing of the plaintiff’s request for injunctive relief was primarily the product of tactical, rather than practical considerations.”87

In Hodgdon Powder Co. v. Alliant Techsytems, Inc,88 the court denied the plaintiff’s motion for a preliminary injunction where the plaintiff had delayed seven months after becoming aware of the defendant’s allegedly infringing products. The court specifically pointed to the plaintiff’s chosen method of service of process on the defendant in explaining its decision:

83. Id. at **38-41; see also Christian v. Alloy, Inc., 72 U.S.P.Q.2d 1697 (S.D.N.Y. 2004) (the court rejected the plaintiff’s explanation as to why it did not take action against the defendant’s book series but then sought to enjoin a film bearing the same mark). 84. 2007 WL 1101183 (E.D.N.Y. Apr. 11, 2007). 85. Id. at *11. 86. 68 U.S.P.Q.2d 1131 (D.N.H. 2003). 87. Id. at 1135. 88. 2006 WL 2092391 (D. Kan. July 26, 2006).


Vol. 99 TMR 1089

After filing its Complaint, plaintiff chose to request a waiver of service under Federal Rule of Civil Procedure 4(d) instead of promptly serving defendant, which allowed defendant additional time to answer the complaint. Plaintiff’s tardiness in instigating this lawsuit is inconsistent with its current request for immediate temporary relief.89 This court apparently felt that if the plaintiff was asking the

court for the urgent and extraordinary relief of a preliminary injunction, it should have acted as if the need for relief was in fact urgent by using the most expeditious form of service of process available.

Litigation conduct by the defendant had the effect of undermining its defense of delay to a motion for preliminary injunction in Perfect 10, Inc. v. Cybernet Ventures, Inc.,90 a case involving both copyright and trademark claims. The court rejected the defendant’s argument that a nine-month period of delay between the date the action was commenced and the date the motion for a preliminary injunction was filed defeated the inference of irreparable harm.91 Citing the defendant’s dilatory tactics during the litigation, which the plaintiff characterized as “stonewalling,” the court pointed to “the constant stream of motions in the case, including three motions to dismiss and the multiplicity of theories presented in the case, which may have reasonably delayed the proceedings.”92

VII. CONCLUSION Inexcusable delay in filing a motion for preliminary injunction

in a trademark case can have an adverse effect on the success of the motion, as it will undercut the showing of irreparable harm necessary to obtain expedited injunctive relief. While appropriate investigative efforts and settlement negotiations will provide a cushion of excusable delay, the asserted need to obtain additional information must not be pretextual, and the settlement efforts must be pursued diligently.

In many cases, a plaintiff will attempt to account for years of knowledge of the defendant’s activities by pointing to new and

89. Id. at *3; see also Scientific Weight Loss, LLC v. U.S. Med. Care Holdings, LLC, 2008 WL 4533918 (C.D. Cal. Oct. 6, 2008) (in denying preliminary injunctive relief, in part based on the plaintiff’s delay, the court noted that the plaintiffs had twice stipulated to continue the preliminary injunction motion over a period of several months). 90. 213 F. Supp. 2d 1146 (C.D. Cal. 2002). 91. Id. at 1190. 92. Id.


1090 Vol. 99 TMR different conduct that allegedly expands the nature, scope or geographic reach of the defendant’s infringement. Unless there has been a real, material change in the defendant’s actions that renders infringing what reasonably could have been deemed non-actionable in the past, courts will be reluctant to overlook a long prior history of coexistence between the parties when evaluating expedited injunctive relief.

While each case has its own unique set of facts and equities, it is still possible to see broad patterns in the body of judicial opinions on delay in filing motions for preliminary injunction. The standards have stayed fairly consistent since 2002. A plaintiff in the Second Circuit should bring its motion for preliminary injunction within three months of notice of the defendant’s infringing conduct, or risk the significant likelihood that the motion will be denied. Greater latitude exists outside of the Second Circuit, where motions are frequently granted even when the delay ranges from four months up to one year. Of course, when filing a motion for preliminary injunction in any circuit, the sooner you file the better.


Vol. 99 TMR 1091

UPDATED APPENDIX 2009 FIRST CIRCUIT

CASE DELAY

LENGTH

HOLDING ON

MOTION

Operation Able of Greater Boston, Inc., 2009 WL 2407753 (D. Mass. Aug. 3, 2009)

6 weeks from alleged expansion of infringement

granted in part

Oliva v. Ramirez, 2007 U.S. Dist. LEXIS 62011 (D.P.R. Aug. 21, 2007)

6 months granted

Boston Duck Tours, LP v. Super Duck Tours, LLC, 514 F. Supp. 2d 119 (D. Mass. 2007)

6 years after knowledge of use in other geographic market

2 years after knowledge of intent to expand into plaintiff’s market

5 weeks after alleged expansion of infringement

granted (as to trademark claims)

MJM Prods. v. Kelley Prods., Inc., 68 U.S.P.Q.2d 1131 (D.N.H. 2003)

6-7 months denied

Montblanc-Simplo GMBH v. Staples, Inc., 172 F. Supp. 2d 231 (D. Mass. 2001)

2 months granted

Media3 Tech., LLC v. Mail Abuse Prevention Sys., LLC, 2001 WL 92389 (D. Mass. 2001)

6 months denied

Boustany v. Boston Dental Group, Inc., 42 F. Supp. 2d 100 (D. Mass. 1999)

8 months granted


1092 Vol. 99 TMR

CASE DELAY

LENGTH

HOLDING ON

MOTION

Fritz v. Arthur D. Little, Inc., 944 F. Supp. 95, 41 U.S.P.Q.2d 1352 (D. Mass. 1996)

At least 2 years constructive notice

denied

Supercuts, Inc. v. Super Clips, 18 U.S.P.Q.2d 1378 (D. Mass. 1990)

10 months: suit brought after 1 month; motion filed 9 months later

granted

Calamari Fisheries, Inc. v. The Village Catch, Inc., 698 F. Supp. 994, 8 U.S.P.Q.2d 1953 (D. Mass. 1988)

21 months after first use; 1 month after expansion caused increased level of confusion

granted

Salt Water Sportsman, Inc. v. B.A.S.S. Inc., 685 F. Supp. 12, 4 U.S.P.Q.2d 1407 (D. Mass. 1987), as amended, 5 U.S.P.Q.2d 1620 (D. Mass. 1987)

less than 6 months

granted

Jordan K. Rand, Ltd. v. Lazoff Bros., Inc., 537 F. Supp. 587, 217 U.S.P.Q. 795 (D.P.R. 1982)

3 months granted

SECOND CIRCUIT

Weight Watchers Int'l, Inc. v. Luigino’s, Inc., 423 F.3d 137 (2d Cir. 2005)

4-6 months denial vacated, with remand for entry of modified injunction

Virgin Enters. Ltd. v. Nawab, 335 F.3d 141 (2d Cir. 2003)

19 months after knowledge of ITU applications

2 days after knowledge of actual infringement

denial reversed


Vol. 99 TMR 1093

CASE DELAY

LENGTH

HOLDING ON

MOTION

W.B. Marvin Mfg. Co. v. Howard Berger Co., 33 Fed. Appx. 588 (2d Cir. 2002)

6 months

(motion filed 3 months after lawsuit commenced)

denial affirmed

Tough Traveler, Ltd. v. Outbound Prods., 60 F.3d 964, 35 U.S.P.Q.2d 1617 (2d Cir. 1995)

13 months (complaint filed after 9 months)

vacating district court’s grant

Tom Doherty Assoc., Inc. v. Saban Entm’t, Inc., 60 F.3d 27, 35 U.S.P.Q.2d 1537 (2d Cir. 1995)

4 months affirming district court’s grant

King v. Innovation Books, 976 F.2d 824, 24 U.S.P.Q.2d 1435 (2d Cir. 1992)

11 months from knowledge of intended use, including 3 months from knowledge of actual use

granted

Majorica, S.A. v. R.H. Macy & Co., 762 F.2d 7, 226 U.S.P.Q. 624 (2d Cir. 1985)

several years denied

Citibank, N.A. v. Citytrust, 756 F.2d 273, 225 U.S.P.Q. 708 (2d Cir. 1985)

10 weeks after direct notice of actual use; 9 months after notice of intended use in press; years after notice of use in another state

denied

Harlequin Enters. Ltd. v. Gulf & Western Corp., 644 F.2d 946, 210 U.S.P.Q. 1 (2d Cir. 1981)

6 months after notice of intended use; 3 months after notice of actual use

granted

My-T-Fine Corp. v. Samuels, 69 F.2d 76, 21 U.S.P.Q. 94 (2d Cir. 1934)

2 years granted


1094 Vol. 99 TMR

CASE DELAY

LENGTH

HOLDING ON

MOTION

Kuklachev v. Gelfman, 2008 WL 5411641 (E.D.N.Y. Dec. 22, 2008)

15-20 months from first acts of infringing performance name that later ceased

within 1 month of resumed infringement

granted

Dudley, D.C. v. Healthsource Chiropractic, Inc., 585 F. Supp. 2d 433 (W.D.N.Y. 2008)

almost 1 year from knowledge of anticipated infringement

6 months from knowledge of actual infringing use

denied (but note that delay was found reasonable)

Lapham v. Porach, 2007 WL 1224924 (S.D.N.Y. Apr. 25, 2007)

Approximately 2 years since first use (actual knowledge unclear)

denied

Richard A. Leslie Co., Inc. v. Birdie, LLC, 2007 WL 4245847 (S.D.N.Y. Nov. 26, 2007)

More than a year after first use

5 months after knowledge of infringement


denied


Vol. 99 TMR 1095

CASE DELAY

LENGTH

HOLDING ON

MOTION

Air Cargo News, Inc. v. Tabmag Publ’g, Ltd., 2007 WL 1101183 (E.D.N.Y. Apr. 11, 2007)

Approximately 24 years after initial use of infringing mark

Several months after knowledge of alleged expansion of infringement

denied

Total Control Apparel, Inc. v. DMD Int’l Imports, LLC, 409 F. Supp. 2d 403 (S.D.N.Y. 2006)

More than 19 months

denied

Metlife, Inc. v. Metro. Nat’l Bank, 388 F. Supp. 2d 223 (S.D.N.Y. 2005)

3.5 years after first knowledge of defendant’s mark

3.5 months after knowledge of alleged expansion of infringement

granted

The Deal, LLC v. Korangy Publ’g, Inc., 309 F. Supp. 2d 512 (S.D.N.Y. 2004)

4 months after first knowledge of infringement

(7 months after first use)

denied

Louis Vuitton Malletier v. Dooney & Bourke, Inc., 340 F. Supp. 2d 415 (S.D.N.Y. 2004), aff’d in part and vacated in part on other grounds, 454 F.3d 408 (2d Cir. 2006)

9-10 months after knowledge of intended use

A few weeks after sending protest letter

denied


1096 Vol. 99 TMR

CASE DELAY

LENGTH

HOLDING ON

MOTION

Christian v. Alloy, Inc., 72 U.S.P.Q.2d 1697 (S.D.N.Y. 2004)

Almost 2 years denied

Christopher Norman Chocolates, Ltd. v. Schokinag Chocolates N. Am., Inc., 270 F. Supp. 2d 432 (S.D.N.Y. 2003)

8-9 months denied

Kadant, Inc. v. Seeley Mach., Inc., 244 F. Supp. 2d 19 (N.D.N.Y. 2003)

4 months granted in part

M&G Elecs. Sales Corp. v. Sony Kabushiki Kaisha, 250 F. Supp. 2d 91 (E.D.N.Y. 2003)

6-7 months


denied

Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc., 64 U.S.P.Q.2d 1039 (S.D.N.Y. 2002)

9 months after first use in limited market

2 months after alleged expansion of infringement


granted

Brockmeyer v. Hearst Corp., 2002 U.S. Dist. LEXIS 11725 (S.D.N.Y. 2002)

More than 16 months after first knowledge of infringement


denied

Yurman Design Inc. v. Diamonds and Time, 169 F. Supp. 2d 181 (S.D.N.Y. 2001)

4 months granted


Vol. 99 TMR 1097

CASE DELAY

LENGTH

HOLDING ON

MOTION

Tactica Int’l, Inc. v. Atlantic Horizon Int’l, Inc., 154 F. Supp. 2d 586 (S.D.N.Y. 2001)

1 month granted

Magnet Commc’ns, LLC v. Magnet Commc’ns, Inc., 2001 WL 1097965 (S.D.N.Y. 2001)

3 months denied

Media Group, Inc. v. Ontel Prods. Corp., 2001 WL 169776 (D. Conn. 2001)

7-8 months (complaint filed after 4-5 months)

denied

Origins Nat’l Res., Inc. v. Kotler, 2001 WL 492429 (S.D.N.Y. 2001)

4-6 months denied

Greenpoint Fin. Corp. v. Sperry & Hutchinson Co., 116 F. Supp. 2d 405 (S.D.N.Y. 2000)

4 months denied

Ryan v. Vulpine Stamp Co., 107 F. Supp. 2d 369 (S.D.N.Y. 2000)

2 months granted

ImOn, Inc. v. ImaginOn, Inc., 90 F. Supp. 2d 345 (S.D.N.Y. 2000)

4 months denied

First Jewellery Co. of Canada, Inc. v. Internet Shopping Network LLC, 53 U.S.P.Q.2d 1838 (S.D.N.Y. 2000)

2 months granted

Gidatex, S.r.L. v. Campaniello Imports, Ltd., 13 F. Supp. 2d 417, 47 U.S.P.Q.2d 1701 (S.D.N.Y. 1998)

more than 2 years (5-8 months after termination of related litigation between parties)

denied

Lexington Mgmt. Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998)

5-6 months granted

Marcy Playground, Inc. v. Capitol Records, Inc., 6 F. Supp. 2d 277 (S.D.N.Y. 1998)

9 months denied

Marshak v. Thomas, 1998 WL 476192 (E.D.N.Y. 1998)

2 months granted

Ushodaya Enters., Ltd. v. V.R.S. Int’l, Inc., 47 U.S.P.Q.2d 1223 (S.D.N.Y. 1998)

almost 3 years at minimum

denied


1098 Vol. 99 TMR

CASE DELAY

LENGTH

HOLDING ON

MOTION

Gen. Cigar Co., Inc. v. G.D.M. Inc., 988 F. Supp. 647, 45 U.S.P.Q.2d 1481 (S.D.N.Y. 1997)

3 months granted

Les Ballets Trockadero de Monte Carlo, Inc. v. Trevino, 945 F. Supp. 563, 41 U.S.P.Q.2d 1109 (S.D.N.Y. 1996)

2 months granted

Krueger Int’l, Inc. v. Nightingale Inc., 915 F. Supp. 595 (S.D.N.Y. 1996)

6-9 months denied

Bear U.S.A., Inc. v. A.J. Sheepskin & Leather Outerwear, Inc., 909 F. Supp. 896, 38 U.S.P.Q.2d 1640 (S.D.N.Y. 1995)

1-2 months for some infringing products; 3-4 months for other infringing products

granted as to 1-2 month delay; denied as to 3-4 month delay

Trustco Bank, Nat. Ass’n v. Glens Falls Nat’l Bank & Trust Co., N.A., 903 F. Supp. 335 (N.D.N.Y. 1995)

3 months denied (but delay found excusable)

Firma Melodiya v. ZYX Music GmbH, 882 F. Supp. 1306 (S.D.N.Y. 1995)

3-4 months granted

Museum Boutique Intercontinental, Ltd. v. Picasso, 880 F. Supp. 153 (S.D.N.Y. 1995)

14 years (15 months from alleged change in scope of infringement while standstill agreement in effect)

denied

Cheng v. Dispeker, 35 U.S.P.Q.2d 1493 (S.D.N.Y. 1995)

5 months denied

Del-Rain Corp. v. Pelonis USA Ltd., 1995 WL 116043 (W.D.N.Y. 1995)

23 months denied

Swanson v. Georgetown Collection, Inc., 1995 WL 72717 (N.D.N.Y. 1995)


denied


Vol. 99 TMR 1099

CASE DELAY

LENGTH

HOLDING ON

MOTION

Mastercard Int’l, Inc. v. Sprint Commc’ns Co., 30 U.S.P.Q.2d 1963 (S.D.N.Y. 1994)

6-9 months from knowledge of intended use

granted (dicta)

Tommy Hilfiger U.S.A., Inc. v. Siegfried & Parzifal, Inc., 31 U.S.P.Q.2d 1222 (S.D.N.Y. 1994)

2-3 years from notice of initial elements of infringement

denied

Dial-A-Mattress Operating Corp. v. Mattress Madness, Inc., 841 F. Supp. 1339 (E.D.N.Y. 1994)

3-4 years granted

Jordache Enters., Inc. v. Levi Strauss & Co., 841 F. Supp. 506 (S.D.N.Y. 1993)

4 years denied

Kraft General Foods, Inc. v. Allied Old English, Inc., 831 F. Supp. 123, 31 U.S.P.Q.2d 1094 (S.D.N.Y. 1993)

7 months from publication of defendant’s mark

granted

Chase Manhattan Corp. v. Nw. Mutual Life, 1993 WL 60602 (S.D.N.Y. 1993)

11 months: suit brought after 5 months; motion filed 6 months later

denied

Bausch & Lomb, Inc. v. Nevitt Sales Corp., 810 F. Supp. 466, 26 U.S.P.Q.2d 1275 (W.D.N.Y. 1993)

1 month after increased scope of infringement

granted

H.G.I. Mktg. Serv., Inc. v. Pepsico, Inc., 1992 WL 349675 (N.D.N.Y. 1992)

2-4 years denied

Am. Direct Mktg. v. Azad Int’l, Inc., 783 F. Supp. 84, 22 U.S.P.Q.2d 1108 (E.D.N.Y. 1992)

3-6 months denied (but delay found excusable)

MGM Pathe Commc’ns Co. v. Pink Panther Patrol, 774 F. Supp. 869, 21 U.S.P.Q.2d 1208 (S.D.N.Y. 1991)

6 months granted

Nat’l Football League Players Ass’n v. Nat’l Football League Props., Inc., 1991 WL 79325 (S.D.N.Y. 1991) (licensing dispute)

9 months denied


1100 Vol. 99 TMR

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Century Time Ltd. v. Interchron, 729 F. Supp. 366, 14 U.S.P.Q.2d 1765 (S.D.N.Y. 1990)


denied

Lanvin, Inc. v. Colonia, 739 F. Supp. 182 (S.D.N.Y. 1990) (licensing dispute)

7 months denied

Mathematica Policy Research, Inc. v. Addison-Wesley Publ’g Co. Inc., 11 U.S.P.Q.2d 1391 (S.D.N.Y. 1989)

10 months denied

Comic Strip, Inc. v. Fox Television Stations, Inc., 710 F. Supp. 976, 10 U.S.P.Q.2d 1608 (S.D.N.Y. 1989)

7 months denied

Kusan, Inc. v. Alpha Distribs., Inc., 693 F. Supp. 1372, 7 U.S.P.Q.2d 1211 (D. Conn. 1988)

17-18 months denied

Artemide Spa v. Grandlite Design & Mfg. Co., Inc., 672 F. Supp. 698, 4 U.S.P.Q.2d 1915 (S.D.N.Y. 1987)

7 months granted in part

Great Lakes Mink Ass’n v. Furrari, Inc., No. 86-6038 (S.D.N.Y. 12/21/87), 1987 U.S. Dist. LEXIS 11800

20 months denied

Ventura Travelware, Inc. v. A to Z Luggage Co., 1 U.S.P.Q.2d 1552 (E.D.N.Y. 1986)


granted

Allen Organ Co. v. CBS, Inc., 230 U.S.P.Q. 479 (S.D.N.Y. 1986)

7-8 months denied

Gear, Inc. v. L.A. Gear Cal., Inc., 637 F. Supp. 1323, 227 U.S.P.Q. 980 (S.D.N.Y. 1986)

17-18 months denied

Nina Ricci S.A.R.L. v. Gemcraft Ltd., 612 F. Supp. 1520, 226 U.S.P.Q. 575 (S.D.N.Y. 1985)

4 months from notice, including 6 weeks from breakdown of settlement talks

denied


Vol. 99 TMR 1101

CASE DELAY

LENGTH

HOLDING ON

MOTION

Calvin Klein Co. v. Farah Mfg. Co., Inc., 229 U.S.P.Q. 795 (S.D.N.Y. 1985)

7 years of use; plaintiff’s claim of less than 6 months’ notice rejected

denied

I. Peiser Floors, Inc. v. I.J. Peiser’s Sons, Inc., No. 81-3359 (S.D.N.Y. 10/4/82), 1982 U.S. Dist. LEXIS 15465

2 years granted

Exxon Corp. v. Xoil Energy Res., Inc., 552 F. Supp. 1008, 216 U.S.P.Q. 634 (S.D.N.Y. 1981)


denied

Nike, Inc. v. Rubber Mfrs. Ass’n, 509 F. Supp. 919, 212 U.S.P.Q. 225 (S.D.N.Y. 1981)

several months

granted

C.B. Sports, Inc. v. Gaechter-Haber & Assoc., Inc., 210 U.S.P.Q. 597 (D. Vt. 1981)

6 months granted

Le Sportsac, Inc. v. Dockside Research, Inc., 478 F. Supp. 602, 205 U.S.P.Q. 1055 (S.D.N.Y. 1979)

10 months denied

Mego Corp. v. Mattel, Inc., 203 U.S.P.Q. 377 (S.D.N.Y. 1978)

7 months after notice of intended use

denied

Programmed Tax Sys., Inc. Raytheon Co., 419 F. Supp. 1251, 193 U.S.P.Q. 435 (S.D.N.Y. 1976)

4-5 months after actual notice; 3 years after first use

denied

Le Cordon Bleu S.a.r.l. v. BPC Publ’g Ltd., 327 F. Supp. 267, 170 U.S.P.Q. 477 (S.D.N.Y. 1971)

13 weeks denied

Gianni Cereda Fabrics, Inc. v. Bazaar Fabrics, Inc., 173 U.S.P.Q. 188 (S.D.N.Y. 1971) (copyright and trademark claims)

7 1/2 months denied

Helena Rubenstein, Inc. v. Frances Denney, Inc., 286 F. Supp. 132, 159 U.S.P.Q. 346 (S.D.N.Y. 1968)

20 months denied


1102 Vol. 99 TMR

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Stix Prods., Inc. v. United Merchants & Mfrs., Inc., 273 F. Supp. 250, 154 U.S.P.Q. 477 (S.D.N.Y. 1967)

preliminary injunction motion filed 5 years after suit

denied

Goodyear Tire & Rubber Co. v. Topps of Hartford, Inc. 247 F. Supp. 899, 147 U.S.P.Q. 240 (D. Conn. 1965)

8-9 years denied

Colgate-Palmolive Co. v. N. Am. Chem. Corp. 238 F. Supp. 81, 144 U.S.P.Q. 266 (S.D.N.Y. 1964)

20 months granted

Gillette Co. v. Ed Pinaud, Inc., 178 F. Supp. 618, 123 U.S.P.Q. 531 (S.D.N.Y. 1959)

4-5 years denied

THIRD CIRCUIT

Kos Pharms., Inc. v. Andrx Corp., 369 F. 3d 700 (3d Cir. 2004)

Approximately 18 months since first knowledge of intended use of infringing mark

At least 13 months since knowledge of sale of infringing products

reversal of denial and remand for entry

Times Mirror Magazines, Inc. v. Las Vegas Sports News, L.L.C., 212 F.3d 157, 54 U.S.P.Q.2d 1577 (3d Cir. 2000), cert. denied, 531 U.S. 1071, 121 S. Ct. 760 (2001)

14-15 months grant affirmed

Pappan Enters., Inc. v. Hardee’s Food Sys., Inc., 143 F.3d 800, 46 U.S.P.Q.2d 1769 (3d Cir. 1998)

5 weeks reversed district court’s denial

S&R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 23 U.S.P.Q.2d 1201 (3d Cir. 1993)

3 1/2 months granted


Vol. 99 TMR 1103

CASE DELAY

LENGTH

HOLDING ON

MOTION

Ultimate Trading Corp. v. Daus, 2007 WL 3025681 (D.N.J. Oct. 15, 2007)

5 months denied

Medavante, Inc. v. Proxymed, Inc., 2006 U.S. Dist. LEXIS 74614 (D.N.J. Oct. 12, 2006)

4 months granted

Lazzaroni USA Corp. v. Steiner Foods, 2006 U.S. Dist. LEXIS 20962 (D.N.J. Apr. 10, 2006)

2 months granted

EMSL Analytical, Inc. v. Testamerica Analytical Testing Corp., 2006 WL 892718 (D.N.J. Apr. 4, 2006)

4-6 years after first knowledge of infringing uses

6 months after knowledge of alleged expansion of infringement

Pharmacia Corp. v. Alcon Labs., Inc., 201 F. Supp. 2d 335 (D.N.J. 2002)

Approximately 2 years since constructive knowledge

Approximately 1 year since actual knowledge

denied

J & J Snack Foods Corp. v. Nestlé USA, Inc., 149 F. Supp. 2d 136 (D.N.J. 2001)


denied

New Dana Perfumes Corp. v. The Disney Store, Inc., 131 F. Supp. 2d 616 (M.D. Pa. 2001)

50 years (as to one claim); 9-10 months (as to another claim)

denied

Sunquest Info. Sys., Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 680 (W.D. Pa. 2000)

15 months granted


1104 Vol. 99 TMR

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Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharms. Co., 129 F. Supp. 2d 351, 57 U.S.P.Q.2d 1522 (D.N.J. 2000)

9 months (as to claim against product name); 4 months (as to advertising claim)

granted

Mobilificio San Giacomo S.p.A. v. Stoffi, 1997 WL 699299 (D. Del. 1997)

6 months after filing suit (but 1 month after use of mark became unauthorized)

granted

Rockland Mortgage Corp. v. Shareholder’s Funding Inc., 835 F. Supp. 182, 30 U.S.P.Q.2d 1270 (D. Del. 1993)


granted

Accu Personnel, Inc. v. AccuStaff Inc., 823 F. Supp. 1161, 27 U.S.P.Q.2d 1801 (D. Del. 1993)

9 months after knowledge of intended use, including 2 months after knowledge of expanded activity

granted

W.L. Gore & Assoc., Inc. v. Totes, Inc., 23 U.S.P.Q.2d 1091 (D. Del. 1992)

4 months after increased scope of activity

granted

Warner Lambert Co. v. McCrory’s Corp., 718 F. Supp. 389, 12 U.S.P.Q.2d 1884 (D.N.J. 1989)

12 months after first use; 5 months after claimed actual notice

denied

Am. Int’l Group, Inc. v. Am. Int’l Airways, Inc., 726 F. Supp. 1470, 14 U.S.P.Q.2d 1933 (E.D. Pa. 1989)

3 years denied


Vol. 99 TMR 1105

CASE DELAY

LENGTH

HOLDING ON

MOTION

Transfer Print Foils, Inc. v. Transfer Print Am., 720 F. Supp. 425, 12 U.S.P.Q.2d 1753 (D.N.J. 1989)


granted

Country Floors, Inc. v. Gepner, 11 U.S.P.Q.2d 1401 (E.D. Pa. 1989)

at least 2 years’ actual notice; up to 6 years’ constructive notice

denied

Mars, Inc. v. H.P. Mayer Corp., 1988 U.S. Dist. LEXIS 9069 (D.N.J. 1988) (not for publication)


denied

Reedco, Inc. v. Hoffmann-La Roche, Inc., 667 F. Supp. 1072, 2 U.S.P.Q.2d 1994 (D.N.J. 1987)

17 months after actual notice; years after notice in the press

denied

Horizon Fin., F.A. v. Horizon Bancorp., 2 U.S.P.Q.2d 1696 (E.D. Pa. 1987)

13 years use; 8 months after geographic expansion of defendant’s use

granted

Louis Rich, Inc. v. Horace W. Longacre, Inc., 423 F. Supp. 1327, 195 U.S.P.Q. 308 (E.D. Pa. 1976)

2 months granted

FOURTH CIRCUIT

Wilson-Cook Med., Inc. v. Wiltex, Inc., 18 U.S.P.Q.2d 1642 (4th Cir. 1991)

1 year denied

Nabisco Brands, Inc. v. Conusa Corp., 722 F. Supp. 1287, 11 U.S.P.Q.2d 1788 (M.D.N.C.), aff’d mem., 892 F.2d 74, 14 U.S.P.Q.2d 1324 (4th Cir. 1989)

5-8 months from increase in scope of infringement

granted


1106 Vol. 99 TMR

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Garden & Gun, LLC v. Twodalgals, LLC, 2008 WL 3925276 (W.D.N.C. Aug. 21, 2008)

5-6 weeks granted in part

Fairbanks Capital Corp. v. Kenney, 303 F. Supp. 2d 583 (D. Md. 2003)

More than 10 months; potentially up to 2 years

granted in part

Great Eastern Resort Corp. v. Virtual Resort Solutions, LLC, 189 F. Supp. 2d 469 (W.D. Va. 2002)

Several years since knowledge of initial use

7 months after knowledge of alleged expansion of infringement

granted

Rubbermaid Comm’l Prods., Inc. v. Contico Int’l, Inc., 836 F. Supp. 1247, 29 U.S.P.Q.2d 1574 (W.D. Va. 1993) (design patent and trade dress case)

almost 2 years, including 8 months after issuance of design patent

granted

John Lemmon Films, Inc. v. Atlantic Releasing Corp., 617 F. Supp. 992, 227 U.S.P.Q. 386 (W.D.N.C. 1985)

8 months denied

FIFTH CIRCUIT

H.D. Vest, Inc. v. H.D. Vest Mgmt. & Servs., LLC, 2009 WL 1766095 (N.D. Tex. June 23, 2009)

at least 5 and up to 11 months

denied

Innovation Ventures, LLC v. Ultimate Lifestyles, LLC, 2009 WL 1490588 (E.D. Tex. May 27, 2009)

9 months denied

Ellipse Commc’ns, Inc. v. Caven, 2009 WL 497268 (N.D. Tex Feb. 26, 2009)

more than 7 months

denied


Vol. 99 TMR 1107

CASE DELAY

LENGTH

HOLDING ON

MOTION

Adventure Plus Enters., Inc. v. Gold Suit, Inc., 2008 U.S. Dist. LEXIS 27220 (N.D. Tex. Apr. 2, 2008)

17 months

(motion filed almost 3 months after lawsuit commenced)

denied

GoNannies, Inc. v. GoAuPair.com, Inc., 464 F. Supp. 2d 603 (N.D. Tex. 2006)

7 years after initial use


denied

Amicus Commc’ns, L.P. v. Hewlett-Packard Co., 1999 WL 495921 (W.D. Tex. 1999)

2-3 years denied

TJM Corp. v. Xerox Corp., 25 U.S.P.Q.2d 1067 (E.D. La. 1992)


denied

Am. Rice, Inc. v. Arkansas Rice Growers Coop. Ass’n, 532 F. Supp. 1376, 214 U.S.P.Q. 936 (S.D. Tex. 1982), aff’d, 701 F.2d 408, 218 U.S.P.Q. 489 (5th Cir. 1983)

3 weeks after increased level of infringement; 4 years after less objectionable use

granted

SIXTH CIRCUIT

Guar. Residential Lending, Inc. v. Homestead Mortg. Co., 2005 U.S. Dist. LEXIS 43640 (E.D. Mich. Dec. 13, 2005), later proceeding, 291 Fed. Appx. 734 (6th Cir. 2008)

6 years after initial use

(motion by counterclaim plaintiff filed 9 months after lawsuit commenced)

denied


1108 Vol. 99 TMR

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MOTION

Wells Fargo v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003)

9 months denied

R.L. Polk & Co. v. Infousa, Inc., 230 F. Supp. 2d 780 (E.D. Mich. 2002)

3 months dranted

McDonald’s Corp. v. Burger King Corp., 87 F. Supp. 2d 722, 54 U.S.P.Q.2d 1507 (E.D. Mich. 1999)

8-9 months denied

P.T.C. Brands, Inc. v. Conwood Co. L.P., 28 U.S.P.Q.2d 1895 (W.D. Ky. 1993)


granted

Central Benefits Mutual Insurance Co. v. Blue Cross & Blue Shield Ass’n, 711 F. Supp. 1423, 11 U.S.P.Q.2d 1103 (S.D. Ohio. 1989)

18 months granted

Frisch’s Rests., Inc. v. Elby’s Big Boy of Steubenville Inc., 514 F. Supp. 704, 213 U.S.P.Q. 559 (S.D. Ohio 1981), aff’d, 670 F.2d 642, 214 U.S.P.Q. 15 (6th Cir. 1982), cert. denied, 459 U.S. 916 (1982)

at least 2 years

granted

SEVENTH CIRCUIT

AM Gen. Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir. 2002)

Years after knowledge of initial use

At least 6 months after knowledge of alleged expansion of infringement

denial affirmed

Ty, Inc. v. Jones Group, Inc., 237 F.3d 891, 57 U.S.P.Q.2d 1617 (7th Cir. 2001)

at least 8 months (motion filed 8 months after complaint was filed)

grant affirmed


Vol. 99 TMR 1109

CASE DELAY

LENGTH

HOLDING ON

MOTION

Ideal Indus., Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 204 U.S.P.Q. 177 (7th Cir. 1979), cert. denied, 447 U.S. 924, 206 U.S.P.Q. 864 (1980)

suit filed 7 months after notice; preliminary injunction motion filed 8 months later

granted

Helene Curtis Indus., Inc. v. Church & Dwight Co., Inc., 560 F.2d 1325, 195 U.S.P.Q. 218 (7th Cir. 1977), cert. denied, 434 U.S. 1070, 197 U.S.P.Q. 592 (1978)

suit filed within weeks of notice; preliminary injunction filed 13 months later

granted

Vaughan Mfg. Co. v. Brikam Int’l, Inc., 814 F.2d 346, 1 U.S.P.Q.2d 2067 (7th Cir. 1987)

10 months granted

Country Inns & Suites by Carlson, Inc. v. Nayan, LLC, 2008 WL 4735267 (S.D. Ind. Oct. 28, 2008)

less than 1 month

granted

Miyano Mach. USA, Inc. v. Miyanohitec Mach., Inc., 576 F. Supp. 2d 868 (N.D. Ill. 2008)

approximately 1 year

granted

Nat’l Council of Young Men’s Christian Assocs. of U.S. v. Human Kinetics Publishers, Inc., 2006 WL 752950 (N.D. Ill. Mar. 15, 2006)

One year granted

MB Fin. Bank, N.A. v. MB Real Estate Servs., L.L.C., 2003 WL 22765022 (N.D. Ill. Nov. 21, 2003)

9 months denied

Keystone Consol. Indus. Inc. v. Mid-States Distrib. Co., 235 F. Supp. 2d 901 (C.D. Ill. 2002)

7 months granted


1110 Vol. 99 TMR

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MOTION

Floralife, Inc. v. Floraline Int’l, Inc., 633 F. Supp. 108 (N.D. Ill. 1985), later proceeding, 807 F.2d 518, 1 U.S.P.Q.2d 1132 (7th Cir. 1986)

at least 3 years notice of limited use; less than 3 weeks after knowledge of expanison of use

granted

Ty, Inc. v. Softbelly’s, Inc., 2001 WL 125321 (N.D. Ill. Feb. 9, 2001)

10 months granted

Ty, Inc. v. Publications Int’l, Ltd., 81 F. Supp. 2d 899 (N.D. Ill. 2000)

14 months granted

Avent Am., Inc. v. Playtex Prods., Inc., 68 F. Supp. 2d 920 (N.D. Ill. 1999)

2-3 months granted

Philip Morris, Inc. v. Allen Distribs., Inc., 48 F. Supp. 2d 844, 51 U.S.P.Q.2d 1013 (S.D. Ind. 1999)

5 months granted

Reins of Life, Inc. v. Vanity Fair Corp., 5 F. Supp. 2d 629, 45 U.S.P.Q.2d 1854 (N.D. Ind. 1997)

8-9 months denied

Porsche Cars N. Am., Inc. v. Manny’s Porshop, Inc., 972 F. Supp. 1128, 43 U.S.P.Q.2d 1475 (N.D. Ill. 1997)

4 years (10 years from first infringement dispute)

granted

RWT Corp. v. Wonderware Corp., 931 F. Supp. 583 (N.D. Ill. 1996)

9 months denied

Eldon Indus., Inc. v. Rubbermaid, Inc., 735 F. Supp. 786, 17 U.S.P.Q.2d 1280 (N.D. Ill. 1990)

4 1/2 years: suit brought after 4 years; motion filed 6 1/2 months later

denied

Stokely-Van Camp, Inc. v. Coca-Cola Co., 2 U.S.P.Q.2d 1225 (N.D. Ill. 1987)

3 months denied


Vol. 99 TMR 1111

CASE DELAY

LENGTH

HOLDING ON

MOTION

Am. Airlines, Inc. v. A 1-800-A-M-E-R-I-C-A-N Corp., 622 F. Supp. 673, 228 U.S.P.Q. 225 (N.D. Ill. 1985)

a few months notice by high level employee; earlier notice by sales personnel

granted

Universal City Studios, Inc. v. Mueller Chem. Co., 223 U.S.P.Q. 798 (N.D. Ill. 1983)

3 months granted

EIGHTH CIRCUIT

Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc., 182 F.3d 598, 51 U.S.P.Q.2d 1373 (8th Cir. 1999)

4 years denied

Mutual of Omaha Ins. Co. v. Novak, 775 F.2d 247, 227 U.S.P.Q. 801 (8th Cir. 1985)

12 months granted

Cmty. of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ’s Church, 613 F. Supp. 2d 1140 (W.D. Mo. 2009)

approximately 1 year

granted

Clam Corp. v. Innovative Outdoor Solutions, Inc., 89 U.S.P.Q. 2d 1314 (D. Minn. 2008)

1 year after initial use


denied

Gander Mountain Co. v. Cabela’s, Inc., 2006 WL 2788184 (D. Minn. Sept. 26, 2006)

3 months after objectionable conduct by defendant

More than 2 years after litigation between parties began

denied


1112 Vol. 99 TMR

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MOTION

NINTH CIRCUIT

GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 53 U.S.P.Q.2d 1652 (9th Cir. 2000)

at least 5 months (additional delay prior to filing of complaint)

grant affirmed

Fogerty v. Poor Boy Prods., Inc., 124 F.3d 211 (9th Cir. 1997) (unpublished)

more than 1 year

reversing district court grant

Ocean Garden, Inc. v. Marktrade Co., 953 F.2d 500, 21 U.S.P.Q.2d 1493 (9th Cir. 1991)

11 months from notice of intended sale, including 2-3 months from notice of actual sale

granted

Protech Diamond Tools, Inc. v. Liao, 2009 WL 1626587 (N.D. Cal. June 8, 2009)

almost 3 years denied

Volkswagen AG v. Verdier Microbus and Camper, Inc., 2009 WL 928130 (N.D. Cal. Apr. 3, 2009)

Approximately 2 months

granted

Cascade Fin. Corp. v. Issaquah Cmty. Bank, 2007 WL 2871981 (W.D. Wash. Sept. 27, 2007)

6-7 months denied

Topline Corp. v. 4273371 Can., Inc., 2007 WL 2332471 (W.D. Wash. Aug. 13, 2007)

10 months granted

PDL, Inc. v. All Star Driving School, 2007 WL 1515139 (E.D. Cal. May 22, 2007)

More than 3 years after initial use

4-6 months after knowledge of alleged expansion of infringement

granted


Vol. 99 TMR 1113

CASE DELAY

LENGTH

HOLDING ON

MOTION

Studio Red Inc. v. Rockwell Architecture Planning and Design, P.C., 2007 WL 1462458 (N.D. Cal. May 18, 2007)

8 months denied

Jonathan Neil & Assoc., Inc. v. JNA Seattle, Inc., 2007 WL 788354 (W.D. Wash. Mar. 14, 2007)

At least 9 months

granted

Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N.D. Cal. 2006)

1-3 months granted

Conversive, Inc. v. Conversagent, Inc., 433 F. Supp. 2d 1079 (C.D. Cal. 2006)

More than 1 year

granted

eAcceleration Corp. v. Trend Micro, Inc., 408 F. Supp. 2d 1110 (W.D. Wash. 2006)

More than 1 year

denied

First Franklin Fin. Corp. v. Franklin First Fin., Ltd., 356 F. Supp. 2d 1048 (N.D. Cal. 2005)

11 years after first use

At least 2 and up to 7 months after claimed first knowledge

denied

SMC Promotions, Inc. v. SMC Promotions, 355 F. Supp. 2d 1127 (C.D. Cal. 2005)

4 months after suit commenced

First notice by plaintiff unclear

granted

Rain Bird Corp. v. Hit Prods. Corp., 72 U.S.P.Q.2d 1105 (C.D. Cal. 2004)

At least 17 months

granted

Nautilus Group, Inc. v. Icon Health and Fitness, Inc., 308 F. Supp. 2d 1208 (W.D. Wash. 2003)

Several months

granted


1114 Vol. 99 TMR

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MOTION

Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146 (C.D. Cal. 2002)

9 months after suit commenced

First notice by plaintiff unclear

granted

H.O. Sports, Inc. v. Earth & Ocean Sports, Inc., 57 U.S.P.Q.2d 1927 (W.D. Wash. 2001)

1-2 months granted

eBay, Inc. v. Bidder’s Edge, Inc., 100 F. Supp. 2d 1058 (N.D. Cal. 2000) (trespass and trademark case)

2 years granted

Playboy Enters., Inc. v. Netscape Commc’ns Corp., 55 F. Supp. 2d 1070, 52 U.S.P.Q.2d 1162 (C.D. Cal. 1999)

11 months denied

Sun Microsystems, Inc. v. Microsoft Corp., 999 F. Supp. 1301, 46 U.S.P.Q.2d 1531 (N.D. Cal. 1998)

6 weeks granted

Guess?, Inc. v. Tres Hermanos, Inc., 993 F. Supp. 1277, 45 U.S.P.Q.2d 1179 (C.D. Cal. 1997)

9 months granted

Anheuser-Busch, Inc. v. Customer Co., 947 F. Supp. 422 (N.D. Cal. 1996)

2-3 months granted

Creative Tech. Ltd. v. SRT, Inc., 29 U.S.P.Q.2d 1474 (N.D. Cal. 1993)

6 months after notice and sending of protest letter

granted

Sega Enters. Ltd. v. Accolade, Inc., 785 F. Supp. 1392, 23 U.S.P.Q.2d 1440 (N.D. Cal. 1992)

5 months: suit brought after 1 1/2 months; motion filed 3 1/2 months later

granted


Vol. 99 TMR 1115

CASE DELAY

LENGTH

HOLDING ON

MOTION

Lisa Frank, Inc. v. Impact Int’l, Inc., 799 F. Supp. 980 (D. Ariz. 1992)

7 months after filing Complaint; 3 months after knowledge of expanded line of infringing products

granted

Nat’l Yellow Pages Serv. Ass’n v. O’Connor Agency, Inc., 9 U.S.P.Q.2d 1516 (C.D. Cal. 1988)

3 years granted

Earth Tech. Corp. v. Envtl. Research & Technology, Inc., 222 U.S.P.Q. 585 (C.D. Cal. 1983)

2 years granted

Steinway & Sons v. Robert Demars & Friends, 210 U.S.P.Q. 954 (C.D. Cal. 1981)

2 years granted

TENTH CIRCUIT

GTE Corp. v. Williams, 731 F.2d 676, 222 U.S.P.Q. 803 (10th Cir. 1984)

3 years denied

Close to My Heart, Inc. v. Enthusiast Media LLC, 508 F. Supp. 2d 963 (D. Utah 2007)

Up to 2 years after initial use

Several months after alleged expansion of infringement

denied

Hodgdon Powder Co., Inc. v. Alliant Techsystems, Inc., 2006 WL 2092391 (D. Kan. July 26, 2006)

7 months denied

Nature's Life, Inc. v. Renew Life Formulas, Inc., 2006 WL 62829 (D. Utah Jan. 11, 2006)

7 months denied

Pimentel & Sons Guitar Makers, Inc. v. Pimentel, 2005 WL 3664269 (D.N.M. Oct. 12, 2005)

More than 2 and up to 10 months

granted


1116 Vol. 99 TMR

CASE DELAY

LENGTH

HOLDING ON

MOTION

J.D. Williams & Co., Inc. v. Am. Home Mortgage Invest. Corp., 2005 WL 1429271 (W.D. Okla. June 13, 2005)

Approximately 6 months

denied

Simmons, Inc. v. Bombardier Inc., 2002 WL 31956160 (D. Utah Sept. 16, 2002), later proceeding, 73 Fed. Appx. 421 (Fed. Cir. 2003)

More than 4 years

denied

Big O Tires, Inc. v. Bigfoot 4x4, Inc., 167 F. Supp. 2d 1216 (D. Colo. 2001)

more than 2 years

granted

Packerware Corp. v. Corning Consumer Prods. Co., 895 F. Supp. 1438 (D. Kan. 1995)

3-4 months denied

Studio 1712, Inc. v. Etna Prods. Co., 777 F. Supp. 844, 22 U.S.P.Q.2d 1280 (D. Colo. 1991)


granted

Universal Motor Oils Co. v. Amoco Oil Co., 15 U.S.P.Q.2d 1613 (D. Kan. 1990)

3 months granted

Paramount Pictures Corp. v. Video Broad. Sys., 724 F. Supp. 808, 12 U.S.P.Q.2d 1862 (D. Kan. 1989)

15 months denied

Cyclonaire Corp. v. U.S. Sys., Inc., 209 U.S.P.Q. 310 (D. Kan. 1980)

6 months granted

Volkswagenwerk, G.m.b.H. v. Frank, 198 F. Supp. 916, 131 U.S.P.Q. 236 (D. Colo. 1961)

17 months after lawsuit

granted

ELEVENTH CIRCUIT

AT & T Mobility LLC v. Nat’l Ass'n for Stock Car Auto Racing, Inc., 487 F. Supp. 2d 1370 (N.D. Ga. 2007), vacated and dismissed on other grounds, 494 F.3d 1356 (11th Cir. 2007)

2-3 months granted

Hi-Tech Pharms., Inc. v. Herbal Health Prods., Inc., 311 F. Supp. 2d 1353 (N.D. Ga. 2004)

7 months denied


Vol. 99 TMR 1117

CASE DELAY

LENGTH

HOLDING ON

MOTION

Seiko Kabushiki Kaisha v. Swiss Watch Int’l, Inc., 188 F. Supp. 2d 1350 (S.D. Fla. 2002)

10 months denied

Bulova Corp. v. Bulova Do Brasil Com. Rep. Imp. & Exp. Ltda., 144 F. Supp. 2d 1329, 59 U.S.P.Q.2d 1077 (S.D. Fla. 2001)

4 1/2 years granted

Golden Bear Int’l, Inc. v. Bear U.S.A., Inc., 969 F. Supp. 742, 42 U.S.P.Q.2d 1283 (N.D. Ga. 1996)

8 months (first use was more than a year prior to plaintiff’s first actual notice of use)

denied

Glen Raven Mills, Inc. v. Ramada Int’l, Inc., 1994 WL 230365 (M.D. Fla. 1994)

16 months from notice of intended use, including 11 months after notice of actual use

denied, but court found that plaintiff had acted promptly

Bellsouth Adver. & Publ’g Corp. v. Real Color Pages, Inc., 792 F. Supp. 775 (M.D. Fla. 1991)

7-8 months granted

Original Appalachian Artworks, Inc. v. Topps Chewing Gum, Inc., 642 F. Supp. 1031, 231 U.S.P.Q. 850 (N.D. Ga. 1986)

5-10 months granted

D.C. CIRCUIT

Nat’l Rural Elec. Coop. Assoc. v. Nat’l Agric. Chem. Assoc., 26 U.S.P.Q.2d 1294 (D.D.C. 1992)

several weeks after knowledge of increased scope of infringement

granted

Delmatoff, Gerow, Morris, Langhans, Inc. v. Children’s Hosp. Nat’l Med. Ctr., 12 U.S.P.Q.2d 1136 (D.D.C. 1989)

12 months denied


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