United States District Court, M.D. Alabama, Eastern Division
MEMORANDUM OPINION AND ORDER
C. MARKS, CHIEF UNITED STATES DISTRICT JUDGE
September 13, 2018, the Plaintiffs, Lake Martin Realty, Inc.
and Lake Martin Realty, LLC, filed this trademark
infringement and unfair competition action against Defendant
The Lake Martin Real Estate Company, LLC. (Doc. 1). The
Plaintiffs also filed a motion for preliminary injunction
(doc. 2) seeking to prevent the Defendant from using the name
and mark “Lake Martin Realty.” (Docs. 2 &
Plaintiffs invoke the Court's federal question
jurisdiction pursuant to 28 U.S.C. § 1331 and 15 U.S.C.
§ 1121 stemming from their claims brought pursuant to
the Trademark Act of 1946, 15 U.S.C. § 1051 et seq. The
Court has supplemental jurisdiction of the state law claim
under 28 U.S.C. § 1367(a).
pending before the Court is the Plaintiffs' motion for a
preliminary injunction (doc. 2), and motion for leave to
amend the complaint (doc. 18). The proposed amended complaint
asserts no new causes of action or legal claims but rather
clarifies facts related to the name “Lake Martin
Realty.” (Id. at 2). After being given the
opportunity, the Defendant has not objected to the motion to
amend the complaint. Accordingly, the motion to amend the
complaint will be granted. Because the Court will grant the
motion to amend, the “amended complaint supersedes the
initial complaint and becomes the operative pleading in the
case.” Krinsk v. SunTrust Banks, Inc., 654
F.3d 1194, 1202 (11th Cir. 2011) (quoting Lowery v. Ala.
Power Co., 483 F.3d 1184, 1219 (11th Cir. 2007)).
Consequently, for the purpose of this opinion, the Court
refers to the amended complaint as the operative complaint.
December 19, 2018, the Court held an evidentiary hearing on
the motion for preliminary injunction. The motion is now
fully briefed and ripe for resolution. Upon consideration of
the evidence before the Court, and the arguments of counsel,
the Court concludes that the Plaintiffs' motion for a
preliminary injunction (doc. 2) is due to be denied.
Plaintiffs, Lake Martin Realty, Inc. and Lake Martin Realty,
LLC, seek a preliminary injunction to prevent the Defendant,
The Lake Martin Real Estate Company, LLC, from using the name
and mark “Lake Martin Realty.” (Docs. 2 &
27). The decision to grant or deny a preliminary injunction
“is within the sound discretion of the district
court.” Palmer v. Braun, 287 F.3d 1325, 1329
(11th Cir. 2002).
prevail on their motion for a preliminary injunction, the
Plaintiffs bear the burden of demonstrating the following:
(1) a substantial likelihood of success on the merits of the
underlying case, (2) the movant will suffer irreparable harm
in the absence of an injunction, (3) the harm suffered by the
movant in the absence of an injunction would exceed the harm
suffered by the opposing party if the injunction issued, and
(4) an injunction would not disserve the public interest.
North Am. Med. Corp. v. Axiom Worldwide, Inc., 522
F.3d 1211, 1217 (11th Cir. 2008) (quoting Johnson &
Johnson Vision Care, Inc. v. 1-800 Contacts, Inc., 299
F.3d 1242, 1246-47 (11th Cir. 2002)). See also Klay v.
United Healthgroup, Inc., 376 F.3d 1092, 1097 (11th Cir.
2004) (quoting Siegel v. Lepore, 234 F.3d 1163, 1176
(11th Cir. 2000) (en banc) (per curiam)). “In
this Circuit, [a] preliminary injunction is an extraordinary
and drastic remedy not be granted unless the movant clearly
established the ‘burden of persuasion' as to each
of the four prerequisites.” Siegel, 234 F.3d
their motion for preliminary injunction, the Plaintiffs
assert that they have a protectable interest in the name and
mark of Lake Martin Realty. The Plaintiffs concede that they
do not have a registered trademark, but they assert that
while the mark they are attempting to protect is
“descriptive, ” because the mark has established
a secondary meaning, they can protect it. (Doc. 23 at 6-7).
The Court pretermits discussion of whether the Plaintiffs can
establish a substantial likelihood of success on the merits
of the underlying case because the Court concludes that the
Plaintiffs have failed to demonstrate that they “will
suffer irreparable harm” if the Court does not grant a
preliminary injunction. Berber v. Wells Fargo Bank,
N.A., - -- Fed.Appx. ---, ---, 2019 WL 126749, *2 (11th
Cir., Jan. 8, 2019) (“A court need not examine all of
four prongs, because if, as here, no showing of irreparable
injury is made, the injunction cannot be issued.”).
showing of irreparable injury is the sine qua non of
injunctive relief.” Siegel, 234 F.3d at 1176
(internal quotations omitted).
Significantly, even if Plaintiffs establish a likelihood of
success on the merits, the absence of a substantial
likelihood of irreparable injury would, standing alone, make
preliminary injunctive relief improper. . .. As we have
emphasized on many occasions, the asserted irreparable injury
“must be neither remote nor speculative, but actual and
Id. at 1176-77.
essence, the Plaintiffs argued that because there was a
likelihood of confusion between Lake Martin Realty and The
Lake Martin Real Estate Company, that possibility of
confusion was sufficient to demonstrate irreparable harm. The
Court disagrees. The Plaintiffs presented no evidence of
actual or imminent injury to their reputation. At the hearing
on their motion for preliminary injunction, Steve Arnberg,
vice-president of real estate sales for Russell Lands, when
asked what damage Lake Martin Realty had suffered as a result
of The Lake Martin Real Estate Company's business,
A: That's a good question. But my concern is not what
I've lost. It's what I could lose.
(Doc. 23 at 43).
Martin Realty's marketing director testified that she was
not aware of any way in which The Lake Martin Real Estate
Company, through advertising, had hurt Lake Martin Realty.
(Id. at 87-88).
Q: When you did a search, a Google search, and googled Lake
Martin real estate, it was your company that ...