ANHEUSER-BUSCH, INC., a Missouri
corporation, Plaintiff, vs. ANDY'S SPORTSWEAR, INC., a California Corporation,
DISPOSITION: [*1] Plaintiff's
request for a Temporary Restraining Order GRANTED.
PROCEDURAL POSTURE: Plaintiff sought
a temporary restraining order under the Federal Trademark Dilution Act, 15
U.S.C.S. § 1125(c), to prevent defendant from distributing T-shirts that
allegedly diluted plaintiff's famous mark.
OVERVIEW: Plaintiff brewing company
sought a temporary restraining order under the Federal Trademark Dilution Act,
15 U.S.C.S. § 1125(c), to prevent defendant, a sportswear manufacturer, from
distributing T-shirts that allegedly harmed plaintiff's famous mark. The court
recognized, and defendant apparently conceded, that plaintiff's mark was
unquestionably famous. The court also concluded that plaintiff raised serious
questions about the harmful effect of defendant's T-shirts on plaintiff's mark,
and the court determined that the balance of hardships tipped in plaintiff's
favor. The court therefore, pending the preliminary injunction hearing,
enjoined defendants from distributing their T-shirts that purportedly diluted
plaintiff's mark, and also ordered defendants to recall T-shirts or related
products that had already been distributed.
OUTCOME: Temporary restraining order
granted because plaintiff's mark was found to be unquestionably famous,
plaintiff raised serious issues regarding dilution of its mark by defendant's
T-shirts, and balance of hardships tipped in plaintiff's favor.
CORE TERMS: t-shirts, trademark,
preliminary injunction, dilution, famous, registered trademarks, trade dress,
manufacturing, distributing, unauthorized, designations, putative, artwork,
slogans, labels, logos
JUDGES: THELTON E. HENDERSON, CHIEF
JUDGE, UNITED STATES DISTRICT COURT
OPINION BY: THELTON E. HENDERSON
This matter came on for hearing on
August 26, 1996, on plaintiff's application for a Temporary Restraining Order
("TRO"). Plaintiff Anheuser-Busch, Inc., asks the Court to (1) enjoin
Defendant Andy's Sportswear, Inc. ("Andy's") from manufacturing and
distributing its "Buttwiser" t-shirts and (2) order Andy's to recall
those t-shirts currently being offered for sale. Having carefully considered
the oral and written arguments of the parties, and the record in this case, the
Court hereby GRANTS plaintiff's request, for the reasons discussed below.
Plaintiff bases its motion on
several federal and state trademark causes of action. For the purposes of the
instant TRO, however, the Court only addresses plaintiff's claim under the
recently enacted Federal Trademark Dilution [*2] Act, 15 U.S.C. § 1125(c).
[HN1] Under the Act, an injunction may issue if (1) the mark is famous; and (2)
the defendant's use "causes dilution of the distinctive quality of the
mark." Id. Based on the record and authorities currently before the it,
the Court concludes that plaintiff is entitled to a TRO under this test.
The Court finds that Plaintiff's
marks are unquestionably famous, as defendant appears to concede. In addition,
the Court finds that plaintiff has, at the very least, raised serious questions
with respect to whether defendant's t-shirts will "dilute" these
marks, as that term is defined under 15 U.S.C. § 1127. Plaintiff has also
established that the balance of hardships tips sharply in its favor.
Accordingly, under, EEOC v. Recruit U.S.A., Inc., 939 F.2d 746, 752 (9th Cir.
1991), plaintiff is entitled to injunctive relief.
Pending the hearing on the
preliminary injunction, Andy's, its successors, officers, agents, employees,
and anyone acting in concert with them or at their behest, are enjoined from
manufacturing, screening, distributing, marketing, displaying, or selling the "Buttwiser"
t-shirts, or any other t-shirts or goods bearing any unauthorized
designs, [*3] slogans, labels, designations, logos, artwork, or putative
trademarks similar to Anheuser-Busch's state and federal registered trademarks,
or the Budweiser(R) trade dress.
The Court further orders that,
pending the preliminary injunction hearing, the above designated parties shall
recall and/or remove from all locations to which they sold or distributed any
and all Buttwiser t-shirts and any other t-shirts or other goods bearing any
unauthorized designs, slogans, labels, designations, logos, artwork, or
putative trademarks similar to Anheuser-Busch's state and federal registered
trademarks, or the Budweiser(R) trade dress, and to maintain such goods and
materials until further order from the Court.
The above TRO is effective on
Plaintiff's filing an undertaking in the sum of $ 15,000. The Court will hold a
hearing on the preliminary injunction on Tuesday, September 10, at 3:00 p.m.
Defendant's opposition shall be filed and served no later than September 3.
Plaintiff's reply shall be filed and served no later than September 6.
IT IS SO ORDERED. DATED 8/28/96,
THELTON E. HENDERSON, CHIEF JUDGE, UNITED STATES DISTRICT COURT