Judge Robinson Denies Motion for Preliminary Injunction in Trademark Case
August 18, 2016
Publication| Intellectual Property
In Healthbox Global Partners, LLC v. Under Armour, Inc., C.A. No. 16-146-SLR (D. Del. July 19, 2016), a reverse-confusion trademark infringement, unfair competition, and dilution case, Judge Robinson denied the motion for a preliminary injunction filed by the plaintiff, Healthbox Global Partners, LLC (“Healthbox Global”). Healthbox Global holds the “Healthbox” trademark for use in advisory and funding services in the healthcare industry. The defendant, Under Armour, Inc. (“Under Armour”), later began using the “UA Healthbox” mark for the marketing and sale of electronic fitness devices packaged in a box, prompting the litigation.
Weighing factors for reverse confusion established by the Third Circuit, and bearing in mind that the parties were not in direct competition, the Court found that there was no likelihood of confusion between Under Armour’s “UA Healthbox” product and Healthbox Global’s “Healthbox” mark (and thus no likelihood of success). The Court found that Under Armour uses the prefix “UA” and a house mark when it advertises its product, and the parties advertise and sell products through different channels in different markets targeting different consumers.
Judge Robinson also found that Healthbox Global had not shown irreparable harm, since the requested injunction would have forced Under Armour to recall over $12 million worth of its products and injured Under Armour’s reputation and goodwill, particularly in light of Healthbox Global’s failure to show damages. For the same reason, Judge Robinson found that the balance of hardships was neutral. Although the Court stated that the public has an interest in not being deceived, Judge Robinson concluded that no evidence of actual confusion had been shown. Accordingly, Judge Robinson denied Healthbox Global’s motion for preliminary injunction.
Key Points: The Court concluded that each of the factors for a preliminary injunction—likelihood of success, irreparable harm, balance of hardships, and public interest—was either neutral or favored the defendants, making this case a poor candidate for a preliminary injunction.