Don’t Delay, Act Today: Showing of Irreparable Harm Damaged by Delay in Filing Complaint

In a recent court order out of the Eastern District of Washington, a judge denied the Plaintiff’s request for a preliminary injunction against Defendant’s use of the mark LEAVENWORTH OKTOBERFEST, based in part on Plaintiff’s 10-month delay in filing its complaint, which negated a finding of irreparable harm.

The City of Leavenworth, Washington (“City”) sued Project Bayern Association (“Association”) in a conflict arising out of the parties’ respective Oktoberfest celebrations. The parties had entered into a lease agreement that started in 2012; under that agreement, the Association leased a warehouse from the City for its annual Oktoberfest celebration. The City terminated the lease in 2021, and the Association last used the City’s warehouse for its 2021 event.

However, unbeknownst to the City, the Association applied to register the mark LEAVENWORTH OKTOBERFEST in 2016 and received a registration from the USPTO in 2017. After terminating the Association’s lease, the City then went on to plan its own Oktoberfest celebration for 2022 using a different vendor.

The Association sent cease-and-desist letters to both the new vendor and the City, demanding that they cease use of its registered mark. The Association also published a Facebook post advertising its own event, to be held in Wenatchee, Washington, and noted that there “is no Oktoberfest in Leavenworth this year.” The City then sued and asked for a preliminary injunction, alleging false advertising and false association/designation claims under the Lanham Act and a claim of unfair or deceptive practices under state law.

To obtain a preliminary injunction, a plaintiff must demonstrate four factors under Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008), including a likelihood of irreparable injury in the absence of an injunction. In deciding against a preliminary injunction, the judge found that the City’s 10-month delay between when the Association posted on Facebook advertising its own event in Wenatchee and when the City actually sued implied a lack of urgency with respect to the irreparable harm. This case is still ongoing, but this order denying the preliminary injunction demonstrates the high burden that a plaintiff is required to meet to prove irreparable harm and serves a lesson to those involved in trademark disputes to act quickly to enforce their rights.

This article appeared in the October 2022 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.