Trademark; Alleged violations of the Lanham Act; 15 USC §§ 1114 & 1125; Motion for a preliminary injunction; Likelihood of success on the merits; Consumer confusion; Frisch’s Rests, Inc v Elby’s Big Boy of Steubenville, Inc; Effect of a plaintiff failing to analyze the Frisch factors in its briefing; Reliance on El Greco Leather Prods Co v Shoe Worlds, Inc (2nd Cir)

The court agreed with the district court that plaintiff-Sunless “forfeited its opportunity to show consumer confusion under the Frisch factors” by making no attempt to analyze them. Further, it held that the district court did not err in determining Sunless failed to show it was entitled to a preliminary injunction under El Greco. Thus, the court affirmed the denial of Sunless’s motion for a preliminary injunction in this action alleging violations of the Lanham Act. Sunless “sells tanning booths and accompanying spray tan solution under the ‘Mystic Tan’ mark.” Defendant-Palm Beach owned a number of the “booths, and it used to buy Mystic Tan-branded tanning solution to use in them. Indeed, it had no choice, because the Mystic Tan booths were designed to accept only Mystic Tan solution. But now Palm Beach has jury-rigged the booths so that they will operate with its own distinctly branded spray tan solution, unapproved by Sunless.” In seeking a preliminary injunction, Sunless asserted that “the jury-rigging is likely to confuse consumers into believing they are getting a genuine ‘Mystic Tan Experience’ when they are not.” The court noted that the usual way to prove consumer confusion in this circuit is to use “the Frisch factors, an eight-factor, totality-of-the-circumstances test.” To the extent Palm Beach suggested “the district court was ‘required’ to analyze the Frisch factors despite the parties’ failure to brief them,” this was mistaken. The court noted it had “never suggested that when the parties themselves have failed to offer any argument under Frisch, the district court must make the parties brief the factors or face reversal.” Sunless sought to show consumer confusion under El Greco, a Second Circuit case, casting “Palm Beach’s workaround (tricking the Mystic Tan-branded booths into accepting non-Mystic Tan solutions) as akin to what happened in” that case. However, the court concluded that it did not “do enough to show that it was entitled to relief under its proposed El Greco test.” It did not present enough evidence to show “that the ‘Mystic Tan Experience’ is an indivisible whole.” In the absence of “such a showing, Sunless could not show a likelihood of consumer confusion under El Greco.” Thus, it was unable to “establish a likelihood of success on the merits.”