Alpha Media Grp., Inc. v. Corad Healthcare, Inc., No. 13 Civ. 5438(WHP), 2013 WL 5912227 (S.D.N.Y. Nov. 4, 2013).

A New York district court denied the plaintiff publisher of Maxim magazine’s motion for a preliminary injunction in its trademark infringement action against the defendant manufacturer of prescription strength antiperspirants.

Here, the plaintiff Alpha Media Group, Inc. (“AMG”) is the publisher of Maxim magazine and the owner of the MAXIM mark for various classes of goods and services. AMG describes the Maxim brand as focused on “relationships, sex, sports, popular culture, health, grooming and appearance, and nightlife.” AMG has licensed the Maxim mark to be used on “lifestyle goods” such as nightclubs, restaurants and bars, beer mugs, and beauty contests. The mark most commonly appears as “MAXIM” in red, capital letters.

A few years ago, AMG became aware of the defendant Corad Healthcare, Inc.’s (“Corad”) registration of the MAXIM mark used in connection with Corad’s sale of unscented antiperspirants that treat hyperhidrosis, a condition causing excessive sweating. Corad’s MAXIM mark initially appeared as white, capital letters in the context of clinical packaging (eg, the packaging had notes that said “prescription strength” and “doctor recommended”). However, eight years ago, Corad changed its packaging so that the MAXIM mark now appears in red, capital letters and the packaging also contained drawings denoting travel, golf, exercise, and the gym. Corad also expanded into the scented antiperspirant market.

Recently, AMG decided to license their MAXIM mark for use with a line of body sprays, perfumes, and colognes. After canvasing the marketplace, AMG became aware of Corad’s sale of scented antiperspirants and Corad’s updated packaging. AMG alleges that Corad’s current packaging, with the appearance of the MAXIM mark and the pictures, was confusingly similar to Maxim magazine’s lifestyle brand, and AMG moved the court to issue a preliminary injunction enjoining Corad’s further sales of its products under the current packaging.

AMG asserted, without more, that the updated packaging on Corad’s products would cause consumer confusion and AMG would be irreparably harmed without a preliminary injunction. The court held that this bare bones and conclusory assertion was not sufficient evidence of irreparable harm. Further, there was good reason to believe that AMG would not be harmed, given that very few consumers were aware of Corad’s products; only those suffering from an excess sweating condition would encounter Corad’s products. Moreover, the fact that AMG did not discover Corad’s use of the allegedly offending packaging for years, was additional evidence that AMG would not suffer irreparable harm if the preliminary injunction did not issue.

For the forgoing reasons, the court denied AMG’s motion for a preliminary injunction, giving new meaning to the phrase, “don’t sweat the small stuff!”

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