District Judge Mae Avila D’Agostino


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Plaintiff Heartland owns the FLAX trademark. FLAX goods are made of linen, itself made from the flax plant. Clothing and linen apparel under the FLAX mark has been sold since 1992, The FLAX mark was registered with the U.S. Patent and Trademark Office on Aug. 13, 1996. Despite licensing the mark to a third party, Heartland still owned the FLAX mark and received royalties on the sale of FLAX goods. In July 2013, defendant Dr. Flax LLC refused to comply with Heartland’s June 30 letter that it cease and desist selling competing products infringing the FLAX mark. Discussing the four requirements set out in Salinger v. Colting, 697 F.3d 68, and balancing the eight non-exhaustive considerations set out in Polaroid Corp. v. Polarad Elec. Corp., 287 F.2d 492, the District Court granted Heartland a temporary restraining order barring Dr. Flax LLC from marketing and selling clothing under labels that infringed on the FLAX mark. Heartland showed a likelihood of confusion. The similarity between the FLAX mark and the different variations of Dr. Flax was “obvious” with “flax” remaining the dominant word. Heartland also provided sufficient evidence demonstrating defendant’s adoption of the Dr. Flax name in bad faith.