Judge: Richard Schell/Don Bush
Holding: Application for Temporary Restraining Order and Preliminary Injunction Granted
ED Bench/bar attendees will recognize this name. Yeah, this is the band that plays when Judge Rader isn't available.
Emerald City brought this action as a result of the defendant's alleged use of the mark Downtown Fever. It's a long story, but one of the defendants was an employee of the plaintiff who, along with the plaintiff, expanded plaintiff's musical enterprise by forming a band called Downtown Fever. Complicating things was that this defendant had a band called Downtown Fever in Boston prior to type teaming up with Emerald City, and after leaving Emerald City formed his own band called Downtown Fever. Recall that Emerald City is still operating its own Downtown Fever (show shown at right) operating in same geographical area isn't this fun?
The defendant claimed the right to use the name because he had a common-law right to the trademark name and was senior user of the mark. On the other hand, Emerald City claimed that even if the mark is superior, it had registered the mark and the defendant's actions were causing confusion in the marketplace.
After reviewing the applicable standards for preliminary injunctions, Judge Bush made findings of fact and conclusions of law as to the request for injunctive relief, and concluded that the Downtown Fever mark was in fact distinctive and qualified for trademark protection, and had acquired secondary meaning in the Texas area. Likelihood of confusion was presumed, and Emerald City had demonstrated a substantial likelihood of success on the merits of its claims. Accordingly, Judge Bush recommended that the plaintiffs application for a temporary restraining order and preliminary injunction be granted. Judge Schell added some additional findings to Judge Bush's and granted the application.