Preliminary Injunction Granted for Trademark Infringement

Monday, October 29, 2018

Characterizing the declaratory-judgment plaintiff’s use of its MAYSON-DIXON mark as “a classic example of blatant trademark infringement” of the defendant’s MASON-DIXON mark, Chief Judge James K. Bredar granted the defendant Mason-Dixon’s motion for preliminary injunction, thereby enjoining the plaintiff Mayson-Dixon from continuing use of its mark.  Addressing the issue of likelihood of success on the merits, Judge Bredar first found that despite the USPTO’s cancellation of the Mason-Dixon’s federal registration for failure to file a renewal and declaration of use application, Mason-Dixon was still able to establish itself as the senior user of the mark through prior and continuous use, thus giving Mason-Dixon ownership through use of the common law mark.  Next, Judge Bredar found that Mason-Dixon established likelihood of confusion by showing, among other factors, that its mark was “commercially strong,” that the parties’ respective marks were “virtually identical” and the marks were used by both parties to identify the same service of political consulting.  Mayson-Dixon Strategic Consulting, LLC v. Mason-Dixon Polling & Strategic Consulting, Inc., --- F.Supp.3d ---, Civ. No. JKB-18-875, 2018 WL 4112819 (D. Md. Aug. 28, 2018).