The opinion of the court was delivered by: Harry S. Mattice, Jr. United States District Judge
Before the Court is Plaintiff's Motion for Temporary Restraining Order [Court Doc. No. 6]. By agreement of the parties, the Court will treat Plaintiff's motion as seeking a preliminary injunction pursuant to Federal Rule of Civil Procedure 65(a). For the reasons set forth below, the Court will DENY Plaintiff's motion.
I. PRELIMINARY INJUNCTION STANDARD
The standard by which the Court is bound has been described as follows: When considering a motion for a preliminary injunction, the district court should consider four factors: (1) whether the movant has a strong likelihood of success on the merits; (2) whether the movant would suffer irreparable injury without the injunction; (3) whether issuance of the injunction would cause substantial harm to others; and (4) whether the public interest would be served by issuance of the injunction.
Rock & Roll Hall of Fame & Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir. 1998) (citing Sandison v. Michigan High Sch. Athletic Ass'n, 64 F.3d 1026, 1030 (6th Cir. 1995)).
In 1990, Plaintiff Pride Publishing started an "African-American newspaper" identified by the trademark CHATTANOOGA COURIER. (Court Doc. 19, Prelim. Inj. Hrg. Tr. 21.) On June 24, 1992, Plaintiff contracted with Defendant John Edwards for "the operation of the newspaper to be called the COURIER." (Court Doc. 11-2, Contractual Agreement ("Agreement").) None of Plaintiff's owners or employees had worked with Defendant John Edwards before this date. (See Inj. Hrg. Tr. 23-24.)
At least by 1998 or 1999, Plaintiff and Defendant John Edwards began to depart from much of the Agreement. Defendant John Edwards was listed as editor and publisher on the paper's tombstone. (Id. 89.) He was responsible for funding every aspect of the paper except printing, and was compensated by advertising revenues flowing from accounts he started and maintained. (Id. 91.) In exchange, Plaintiffs were allowed advertising space in the paper. (Id. 97.) Defendant John Edwards held county business licenses and paid business taxes on the paper. (Id. 93.)
In 2005, Defendants took over the layout of the paper. (Id. 116.) From August of 2006 to September of 2007, Defendants took over printing (Id. 71, 85.) Plaintiff requested that Defendants send it a copy of each published paper for review. (Id. 85.) During this time, Plaintiff's state trademark registration lapsed. (Id. 57, 67.)
In September of 2007, Plaintiff revoked the agreement allowing Defendants to use the mark (id. 58-59). It filed the instant action on April 21, 2008.
A. Subject Matter Jurisdiction
Defendants contend that the Court lacks subject matter jurisdiction over the instant case because Plaintiff's mark is not registered with the United States Patent and Trademark Office. It is black letter law, however, that § 43(a) of the Lanham Act, 15 U.S.C. §1125(a), protects unregistered marks. See Tumblebus, Inc. v. Cranmer, 399 F.3d 754, 760 (6th Cir. 2005). ...