Western District Denies Preliminary Injunction Against Amazon
March 14, 2019
Michael Atkins in Keyword Advertising, Trademark Infringement, preliminary injunction

Last summer, The Comphy Co. sued Amazon.com, Inc., for using its trademarks on Amazon’s store platform even though company doesn’t do business with Amazon.

Comphy alleged that Amazon’s search engine makes it look like the luxury bedding maker offers products through Amazon and then diverts potential customers to bedding providers that do.

Comphy filed a motion for preliminary injunction in the U.S. District Court for the Western District of Washington seeking to put a stop to that practice. Among other things, it sought to enjoin Amazon from “[p]romoting, supporting or allowing third parties’ unauthorized use of the COMPHY trademark (or highly similar marks such as COMFY) to promote bedding, sheets, pillows and related products not made by or under the authority of The Comphy Co.”; and “[a]utomatically suggesting searches for “Comphy”, “Comphy Sheets”, “Comphy Company” and “Comfy Sheets” when users begin to type a first few letters of those marks.”

On March 12, the court denied Comphy’s motion. In doing so, it wrote: “This is not an easy decision. Many of Defendant’s actions toe exceedingly narrow legal and equitable lines. But, on the record presented by Plaintiff, there are simply too many pitfalls for the Court to map an equitable course.”

At the outset, the court noted that Amazon had stopped doing the things that Comphy had complained about. But since Amazon did not stipulate to a preliminary injunction, the court considered the motion on the merits.

Comphy persuaded the court with its evidence of actual consumer confusion:

“There is no question that Plaintiff presents evidence of actual confusion that is often compelling, including written reviews by verified purchasers,” the court wrote. “Defendant has little retort for the fact other than to point out that the evidence is only that a small percentage of purchasers indicate they were confused.”

However, based on the limited record presented, the court found it was not clear that Comphy had a protectable trademark in its name; that Amazon had been using a confusingly similar mark; and that irreparable harm was likely. Therefore, it concluded that preliminary relief was not appropriate.

The case cite is The Comphy Company v. Amazon.com, Inc., No. 18-1460 (W.D. Wash. March 12, 2019) (Martinez, J.).

Article originally appeared on Michael Atkins (http://seattletrademarklawyer.com/).
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