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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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Desknet Systems, Inc. v. Desknet Inc. and E. Michael Fitzsimons

1997 U.S. Dist. Lexis 6713 (S.D.N.Y. May 13, 1997)

Plaintiff Desknet Systems, Inc. ("DSI") was the owner of a federally registered trademark in the mark "Desknet." Plaintiff sought to enjoin defendants from continuing to use the "Desknet" mark, inter alia, in advertising and selling products on the Internet. Such use, plaintiff claimed, constituted trademark infringement in violation of the Lanham Act.

Notwithstanding the fact that defendants were indeed using the "Desknet" mark on the Internet, the Court denied plaintiff's request for a preliminary injunction for two reasons. First, plaintiff had waited over one year after it discovered that defendants were using the mark on the Internet to seek injunctive relief enjoining such use. In the Court's eyes, this delay, coupled with plaintiff's knowledge of defendants' use of the mark in other media for 3 and 1/2 years prior to the commencement of this suit, led the Court to conclude that plaintiff had failed to show the irreparable injury necessary for an award of injunctive relief. This conclusion was buttressed by the different businesses in which the parties were engaged.

The Court also held that plaintiff had not made the requisite showing of likelihood of success on the merits of its trademark infringement claim necessary to support the issuance of injunctive relief. While plaintiff had obtained federal trademark registration of the mark "Desknet," there was sharp dispute as to whether defendant had used the mark in commerce prior to plaintiff's first use thereof. (Defendant had used the mark prior to plaintiff's registration thereof). This factual dispute was an additional ground for the Court's decision.

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