United States District Court, M.D. Tennessee, Nashville Division
RICHARDSON UNITED STATES DISTRICT JUDGE
before the Court is Plaintiff Tailgate Beer, LLC
(“TailGate”)'s Motion for Preliminary
Injunction (the “Motion”), filed on June 19,
2018. (Doc. No. 3). Defendant Boulevard Brewing Company
(“Boulevard”) responded (Doc. No. 41), and
Tailgate replied. (Doc. No. 47). TailGate also filed a
supplemental brief in support of its Motion. (Doc. No. 88).
The Court held a hearing on the Motion on September 20, 2019,
and the Court permitted additional post-hearing briefing on
any matters not addressed during the hearing. (Doc. Nos. 113,
114). For the reasons discussed below, TailGate's Motion
for Preliminary Injunction with be denied.
Gate is a local Nashville brewery and distributor of small
batch craft beer. (Doc. No. 4 at 1). TailGate originally
opened as a brewery and beer distributor in San Diego,
California in 2007. (Id. at 2). In 2014, TailGate
moved its operation to Nashville, Tennessee. (Doc. No. 4 at
6). In 2016, TailGate opened a second taproom in Nashville,
Tennessee. (Id.). Currently, TailGate operates three
locations in the Nashville area. At this time, except for
limited sales in the United Kingdom and Sweden, TailGate does
not sell or distribute its beer outside of Tennessee. (Doc.
No. 41 at 7).
March 5, 2013, the U.S. Patent and Trademark Office
("USPTO") issued TailGate U.S. Trademark
Registration No. 4298625 for its TailGate Logo (the
No. 4-1, Ex. A). The TailGate Mark features a pickup truck
parked at a particular angle, featuring, among other things,
a lowered tailgate and a beer keg in the bed of the truck.
(Doc. No. 4-1, Ex. D). When marketing specific beers,
TailGate often imposes other images into the bed of the
truck. (Id.). For example, at the Preliminary
Injunction Hearing, Wesley Keegan, TailGate's founder and
owner, testified that a can of TailGate's Peanut Butter
Milk Stout displays in the truck bed a cow with its hoof in a
jar of peanut butter. The TailGate Mark is printed on various
items including, but not limited to, TailGate's beer
cans, taps, glassware, and merchandise available for sale on
TailGate's online store. (Id.). The TailGate
Mark is also displayed on the TailGate website and used in
promotions, marketing, and advertising. (Doc. No. 1-4).
2013, the USPTO issued TailGate U.S. Trademark Registration
No. 4280254 for the stylized mark "TailGate Beer"
(the "TailGate Wordmark"):
No. 4-1, Ex. B).
addition, in 2010, TailGate obtained U.S. Copyright
Registration No. VA0001751100 for the work it calls the
TailGate Beer Logo ("Copyrighted TailGate Logo"):
No. 4-1, Exhibit C). The Copyrighted TailGate Logo appears to
be a colored version of the TailGate Mark. TailGate also
obtained U.S. Copyright Registration No. TXU001734540 for
certain text, artwork, and photographs appearing on the
TailGate Beer Website. (Id.).
was founded in 1989 and is a beer distributor and brewery
that sells craft beer. (Doc. No. 4 at 7). Relatively
recently, Boulevard rebranded its Pale Ale Beer and replaced
the label with a new label featuring the image with which
Tailgate takes issue here (the "Pale Ale Image"):
No. 4 at 4). The Pale Ale Image is owned by IPack S.A.R.L.
("IPack"), a company related to Boulevard.
also takes issue with Boulevard's "Palegate"
advertising campaign (the "Palegate
No. 4 at 9). The Palegate Advertisement promoted a
sweepstakes awarding tickets to a Kansas City Royals home
baseball game and was directed only to residents of Missouri,
Kansas, Iowa, and Nebraska (Doc. No. 41 at 17).
Boulevard sells its beer in Tennessee, including in 47
locations within 10 miles of TailGate's original taproom
and 74 locations within 10 miles of TailGate's second
location (Doc. No. 4 at 7), Boulevard does not sell its Pale
Ale in Tennessee (Doc. No. 41 at 8).
became aware of the Pale Ale Image through a customer who,
during a trip to Kansas City, saw the Pale Ale Image and
believed it to be the TailGate Mark. (Doc. No. 4-1, Ex. D).
When TailGate discovered the Pale Ale Image, TailGate
contacted Boulevard and demanded that Boulevard stop using
the image, which they deemed to be “unmistakably
similar to the [TailGate] Mark.” (Doc. No. 4 at 4). On
March 12, 2018, IPack filed a petition with the USPTO to
cancel TailGate's trademark, alleging the trademark has
been abandoned (the “Cancellation Proceeding”).
(Doc. 97-4 at 2). That petition is currently pending before
the Trademark Trial and Appeal Board (“TTAB”).
Also before the TTAB is a proceeding filed by TailGate
opposing IPack's application for the registration of the
Pale Ale Image (“Opposition Proceeding”). The
TTAB issued an order staying both proceedings pending final
disposition of this action. (Doc. No. 97-7).
19, 2018, Trademark filed its Complaint, setting forth the
claims described below. (Doc. No. 1). That same day, it also
filed a Motion for Preliminary Injunction. (Doc. No. 3).
Boulevard responded to the Motion on September 19, 2018.
(Doc. No. 41). TailGate replied to Boulevard's response
on September 26, 2018. (Doc. No. 47). On June 5, 2019, a
hearing on Plaintiff's Motion for Preliminary Injunction
was scheduled for August 23, 2019. (Doc. No. 77). On June 19,
2019, the parties filed a joint motion to continue the
Preliminary Injunction Hearing due to previously scheduled
and unmovable commitments for Boulevard. (Doc. No. 78). On
August 16, 2019, the Hearing was rescheduled to September 20,
2019. (Doc. No. 16).
Preliminary Injunction Hearing was held, and concluded, on
September 20, 2019 as scheduled. During the Hearing, the
parties informed the Court that within a few weeks thereafter
they would submit possible trial dates. The Parties suggested
that they would likely propose a date roughly nine months
from the date of the Hearing. They later proposed to the
Court a target trial date no earlier than roughly nine and a
half months from the date of this Memorandum Opinion. (Doc.
No. 116 at 8).
Sixth Circuit has held that the district court must balance
four factors when considering a motion for preliminary
injunction under Federal Rule of Civil Procedure 65: (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 the issuance of
the injunction would cause substantial harm to the opposing
party or others; and (4) whether the public interest would be
served by the issuance of the injunction. Bays v. City of
Fairborn, 668 F.3d 814, 818-19 (6th Cir. 2012).
“The party seeking a preliminary injunction bears a
burden of justifying such relief, including showing
irreparable harm and likelihood of success.”
Kentucky v. U.S. ex rel. Hagel, 759 F.3d 588, 600
(6th Cir. 2014) (quoting Michigan Catholic Conf. &
Catholic Family Servs. v. Burwell, 755 F.3d 372, 382
(6th Cir. 2014)). “No single factor is a prerequisite
to the issuance of a preliminary injunction; rather the Court
must balance all four factors.” Young v. Giles
Cnty. Bd. of Edu., 181 F.Supp.3d 459, 463 (M.D. Tenn.
2015) (citing Neveux v. Webcraft Tech., Inc., 921
F.Supp. 1568, 1570-71 (E.D. Mich. 1996)). However, a
plaintiff must always demonstrate an irreparable injury
before a preliminary injunction may issue. Id.
(citing Neveux, 921 F.Supp.3d at
Complaint, TailGate claims that Boulevard's use of the
Pale Ale Image on the label of its pale ale craft beer and in
the Palegate Advertisement violates federal and common law.
Specifically, TailGate asserts federal claims for trademark
infringement, 15 U.S.C. § 1141, false designation of
origin, 15 U.S.C. § 1125(a), and copyright infringement,
17 U.S.C. §§ 106 et seq., 501, and common law
claims for trademark infringement and false designation of
origin. (Doc. No. 1).
juncture, the Court is not deciding the ultimate merits of
TailGate's case against Boulevard. Rather, the Court is
called upon to determine whether TailGate has presented
evidence sufficient to show that a preliminary injunction is
warranted at this time. As discussed below, the Courts
answers that question in the negative; TailGate has failed to
show that the extraordinary remedy of a preliminary
injunction is warranted in this case. TailGate's
evidentiary showing and argument collectively fall short on
two critical factors: (1) strong likelihood of success on the
merits and (2) irreparable harm.
Likelihood of Success on the Merits
the Lanham Act, trademark infringement occurs when “any
person...without the consent of the registrant[, ] use[s] in
commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale,
offering for sale, distribution, or advertising of any goods
or services on or in connection with which such use is likely
to cause confusion, or to cause mistake, or to
deceive[.]” 15 U.S.C. § 1114(1). “To state a
claim for trademark infringement under the Lanham Act, a
plaintiff must allege facts establishing that: (1) it owns
the registered trademark; (2) the defendant used the
[allegedly infringing] mark in commerce; and (3) the use was
likely to cause confusion.” Hensley Mfg. v.
ProPride, Inc., 579 F.3d 603, 609 (6th Cir. 2009)
(citing 15 U.S.C. § 1114(1)). The second element is not
at issue here since the parties do not dispute that Boulevard
used the allegedly infringing mark in commerce.
claims that it has established the first element-that it owns
the trademark- because the TailGate Mark is registered to
TailGate by the USPTO, bearing registration number 4298625.
(Doc. No. 4 at 14; Doc. No. 114 at 2). Boulevard disagrees,
arguing that this element is not satisfied because
TailGate's trademark is not valid. (Doc. No. 41 at 3).
According to Boulevard, the TailGate Mark is not valid
because TailGate has abandoned the federal registration and
because this trademark has not been and is not currently used
in interstate commerce. (Id. at 3-9). Under the
Trademark Manual of Examining Procedure, “[i]f a mark
has not been in use for three consecutive years and the
holder has done nothing to try to resume use of the mark, the
USPTO may presume that the holder has abandoned the
mark.” TMEP § 1613.11 (quoting 15 U.S.C. §
1127). The validity of TailGate's trademark due to
abandonment and use in interstate commerce is at issue in the
proceedings before the TTAB, which, as discussed above, are
currently stayed pending final disposition of this action.
(Doc. No. 97-7). TailGate argues that the issues before the
TTAB are irrelevant to the proceedings before this Court.
(Doc. No. 47 at 4). Although the Court believes that the
abandonment and cancellation issues are relevant to whether
TailGate owns the registered trademark, because the Court
finds that there is no likelihood of confusion, it need not
address the abandonment and cancellation issues at this time.
the third element, TailGate asserts that it is likely to
succeed on the merits because Boulevard's use of the Pale
Ale Image is likely to cause confusion with TailGate's
federally registered trademark. The Sixth Circuit has
developed an eight-factor test to evaluate, based on the
circumstances of each case, whether confusion is likely.
Frisch's Rests., Inc. v. Elby's Big Boy of
Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982).
The eight factors this Court considers are: “(1)
strength of the plaintiff's mark; (2) relatedness of the
goods; (3) similarity of the marks; (4) evidence of actual
confusion; (5) marketing channels used; (6) likely degree of
purchaser care; (7) defendant's intent in selecting the
mark; [and] (8) likelihood of expansion of the product
lines.” Id. Although all relevant factors must
be considered, ...