GoNannies, Inc. v. GoAupair.com, Inc., 464 F.Supp.2d 603 (N.D. Tex. 2006) (full-text).
Factual Background Edit
Both parties offered "domestic personnel staffing" services, matching nannies and au pairs with families needing their services. In July 2003, plaintiffs commenced use of "GoNannies," registered the "gonannies.com" domain name, and applied for federal registration of the GO NANNIES mark. Plaintiff received registration of the GO NANNIES mark in August 2005. In 2005, defendants bought a company that operated under the marks "goAUPAIR" and "goNANI" since 1999 and that operated a website at "gonani.com" since 2000. Plaintiffs discovered defendants' use of "goNANI" in March 2006 and sued defendants in April 2006 for trademark infringement and cybersquatting, among other claims.
Trial Court Proceedings Edit
Six months later, plaintiff filed an emergency motion for a TRO and preliminary injunction to bar defendants from using the term "goNANI" and using the trademark registration symbol "®" in connection with its unregistered "goNANI" mark. A few days later, the court denied plaintiff's request for a TRO due to the "extensive delay" between filing suit and seeking the TRO. The court then examined whether plaintiffs satisfied the requirements for a preliminary injunction.
Regarding the likelihood of success on the merits, plaintiffs argued that its registration of the "GO NANNIES" mark controlled. Defendants countered that they were the first to use the mark nationwide such that they would likely prevail on their counterclaim for cancellation of plaintiffs' registration of the "GO NANNIES" mark. Based on defendants' evidence of "extensive prior use" of the "goNANI" mark before plaintiffs' registration, the court held that plaintiffs were not likely succeed on the merits of their claims.
Next, regarding the requirement that plaintiff would suffer a substantial threat of immediate and irreparable harm, the court held that even if plaintiffs established the likelihood of success on the merits required to invoke a presumption of irreparable harm, the court would not presume a "substantial" threat of irreparable harm.
In addition, plaintiffs failed to show that their injuries could not be adequately compensated monetarily or that defendants' improper use of the trademark registration symbol caused plaintiffs irreparable harm. Finally, plaintiffs' substantial delay demonstrated "that there is no apparent urgency to the request for injunctive relief" such that plaintiffs' unexplained delay was not "sufficient to rebut any possible presumption of irreparable harm." The court thus denied plaintiffs' motion for preliminary injunction.
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