UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

SYNTEL, INC., a Michigan

corporation

Plaintiff, 

v.

SYNTEL, LLC, an Arkansas

limited liability company,

Defendant.

Case No. 2:15-cv-10652

Hon. Nancy G. Edmunds

Mag. David R. Grand

PLAINTIFF’S MOTION FOR A 

PRELIMINARY INJUNCTION

Alan N. Harris (P56324)

Susan M. Kornfield (P41071)

Bodman PLC 

201 South Division, Suite 400

Ann Arbor, Michigan 48104

(734) 761-3780

aharris@bodmanlaw.com

skornfield@bodmanlaw.com

Attorneys for Plaintiff

PLAINTIFF’S MOTION FOR A PRELIMINARY INJUNCTION

Plaintiff Syntel, Inc. (“Syntel”), by its attorneys, Bodman PLC, under the 

Lanham Act, 15 U.S.C. § 1051, et seq., moves for a preliminary injunction against 

Defendant SynTel, LLC pursuant to Rule 65(a) of the Federal Rules of Civil 

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 1 of 26 Pg ID 28
2

Procedure. In support of this motion, Syntel relies on the accompanying brief and 

exhibits. 

WHEREFORE, for the reasons stated in the accompanying brief, Syntel

respectfully requests that this Honorable Court grant this motion and issue a 

preliminary injunction against Defendant SynTel, LLC.

February 20, 2015

Respectfully submitted,

/s/Alan N. Harris

Alan N. Harris (P56324)

Susan M. Kornfield (P41071)

Bodman PLC

201 South Division Street, Suite 400

Ann Arbor, Michigan 48104

(734) 761-3780

(734) 930-2494 - Fax

aharris@bodmanlaw.com

skornfield@bodmanlaw.com

Attorneys for Plaintiff Syntel, Inc.

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UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

SYNTEL, INC., a Michigan

corporation

Plaintiff, 

v.

SYNTEL, LLC, an Arkansas

limited liability company,

Defendant.

Case No. 2:15-cv-10652

Hon. Nancy G. Edmunds

Mag. David R. Grand

BRIEF IN SUPPORT OF 

PLAINTIFF’S 

MOTION FOR A PRELIMINARY 

INJUNCTION

Alan N. Harris (P56324)

Susan M. Kornfield (P41071)

Bodman PLC 

201 South Division, Suite 400

Ann Arbor, Michigan 48104

(734) 761-3780

aharris@bodmanlaw.com

skornfield@bodmanlaw.com

Attorneys for Plaintiff

BRIEF IN SUPPORT OF PLAINTIFF’S 

MOTION FOR A PRELIMINARY INJUNCTION

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TABLE OF CONTENTS

INTRODUCTION......................................................................................................1

STATEMENT OF FACTS ........................................................................................2

A. Plaintiff and Its Services. ....................................................................................2

B. Trade Channels and Use of the Mark..................................................................7

C. Industry Recognition...........................................................................................8

D. Defendant. ...........................................................................................................9

ARGUMENT...........................................................................................................11

A. Legal Standard. .................................................................................................11

B. Likelihood of Success. ......................................................................................11

1. Syntel’s Mark is Strong ............................................................................12

2. The Parties’ Services Overlap. ................................................................13

3. The Marks are Identical...........................................................................14

4. The Marketing Channels Overlap............................................................15

5. Defendant Knew of Syntel. .......................................................................15

C. Syntel Will be Irreparably Harmed by Defendant’s Continued Use of 

Defendant’s Mark..............................................................................................17

D. An Injunction Will Not Cause Harm To Others. ..............................................18

E. An Injunction Will Serve the Public Interest....................................................18

CONCLUSION........................................................................................................19

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INDEX OF AUTHORITIES

Cases

Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 263 (5th Cir. 1980), cert. 

denied, 449 U.S. 899, 101 S. Ctr. 268, 66 L.Ed.2d 129 (1980)...........................15

Blue Cross & Blue Shield Mut. of Ohio v. Blue Cross & Blue Shield Ass’n., 110 

F.3d 318, 322 (6th Cir. 1997)...............................................................................11

Champions Golf Club, Inc. v. Champions Golf Club, 78 F. 3d 1111, 1119 (6th Cir. 

1996).....................................................................................................................14

Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275 

(6th Cir. 1997) ............................................................................................... 12, 15

Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 

648 (6th Cir. 1982), cert denied, 459 U.S. 916, 103 S. Ct. 231, 74 L.Ed.2d 182 

(1982)....................................................................................................................15

Frisch's Restaurant, Inc. v. Shoney's Inc., 759 F. 2d 1261 (6th Cir. 1985).............12

Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 

1107 (6th Cir. 1991) ...................................................................................... 12, 16

Ignition Athletic Performance Group, LLC v. Hantz Soccer U.S.A., LLC, No. 06-

2308, 245 Fed.Appx. 456, 460 (6th Cir. 2007)....................................................17

Innovation Ventures, LLC v. Body Dynamics, Inc., No. 08-12711, 2009 WL 

877640 (E.D. Mich. March 30, 2009)..................................................................17

Kellogg Co. v. Exxon Corp., 209 F.3d 562, 568-575 (6th Cir. 2000) .....................14

Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377 (6th Cir. 

2006).............................................................................................................. 17, 19

Midwest Guaranty Bank v. Guaranty Bank, 270 F. Supp. 2d 900 (E.D. Mich. 2003)

14, 18, 19

Pita Delight, Inc. v. Salami, 24 F. Supp. 2d 795, 802 (ED Mich. 1998..................16

R.L. Polk & Co. v. InfoUSA, Inc., 230 F. Supp. 2d 780 (E.D. Mich. 2002).... 11, 13, 

14, 18

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Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 632-633 (6th Cir. 2002) ...13

Statutes

15 U.S.C. § 1065......................................................................................................13

15 U.S.C. § 1114 and § 1125...................................................................................11

15 U.S.C. § 1115(a) .................................................................................................13

15 USC §1072..........................................................................................................16

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 6 of 26 Pg ID 33
INTRODUCTION

Plaintiff Syntel, Inc. (“Syntel”) provides software development and 

information technology services in connection with the mark, SYNTEL (the 

“Mark”). Syntel has used the Mark for 30 years and its federal trademark 

registrations are incontestable. Despite actual knowledge of Syntel’s trademark 

rights, Defendant SynTel, LLC (“Defendant”) has recently commenced use of the 

identical mark to identify Defendant’s software development services 

(“Defendant’s Mark”), and has refused to cease use of Defendant’s Mark despite 

requests from Syntel.

Syntel is well known and has a reputation for providing technology services

of the highest quality. It has won numerous awards and recognition for the 

expertise of its people, its ability to help clients solve business problems, and the 

quality of its technology services. The Mark symbolizes this goodwill and 

represents years of Syntel’s investment in its brand.

Syntel has corporate and institutional clients in a diverse range of industries, 

including telecommunications, banking and financial services, healthcare, 

insurance, logistics, manufacturing, retail, and travel. The reach of its Mark is 

extensive, both geographically and by business sector. Use by Defendant of 

Defendant’s Mark is likely to cause confusion, to cause mistake, or to deceive the 

relevant purchaser and the public as to the affiliation, association, or connection 

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between the parties because: the marks of Syntel and Defendant are identical; the 

services and trade channels are identical; the target markets are identical; and

Syntel has prior use and nationwide rights. A “likelihood of confusion” is the 

touchstone of trademark infringement, and such confusion will cause irreparable 

injury to Syntel.

Defendant’s conduct is willful and intentional – its commencement of use of 

Defendant’s Mark was with prior knowledge of Syntel’s rights. Syntel seeks an 

order from this Court preliminarily enjoining Defendant’s intentional and 

infringing use of Defendant’s Mark.

STATEMENT OF FACTS

A. Plaintiff and Its Services.

Syntel is a leading global provider of business consultation services and 

information technology (“IT”) services, which include software development, 

outsourcing, and process management. Declaration of Daniel M. Moore attached 

as Exhibit 1, ¶ 4, 7. Founded in 1980, and headquartered in Troy, Michigan,

Syntel has grown into a worldwide company with more than 24,000 employees and

with subsidiaries and offices in over a dozen countries. Id. ¶ 5. Syntel is publicly 

traded on the NASDAQ index and had annual revenues of over $911 Million 

(USD) in the U.S. in 2014. Id. ¶ 5.

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The Mark is used in connection with a wide variety of business consultation 

and IT services, including software application development, application 

management, business analytics, cloud computing, mobility, and IT infrastructure 

management services. Id. ¶ 7. Its clients are in many business sectors, including 

banking and financial services, healthcare, life sciences, insurance, 

telecommunications, logistics, manufacturing, retail, and travel. Id. ¶ 6. Many of 

Syntel’s clients are among the top 2000 public companies ranked annually in the 

“Forbes Global 2000” list. Id. ¶ 6.

The Mark is an extremely valuable and important asset of Syntel. It is used 

in the delivery of all of its business consultation and IT services provided in the 

United States and throughout the world, and appears as service marks, trade names, 

and business names. Id. ¶ 13. Syntel protects the intellectual property rights in its 

marks through the filing and prosecution of national and international applications 

for registration, including the marks below:

Mark Services and Date of First Use

SYNTEL

(U.S. Reg. No. 

1,692,076)

“Custom designing of computer software and computer 

programming services” in International Class 42

FIRST USED IN 1984

SYNTEL

(U.S. Reg. No. 

2,875,965)

“Business consultation services, namely, consultation relating 

to business strategy, including assessing a company's existing 

operations, and advising on the development of technologyrelated methodologies in the field of project management; 

consultation relating to outsourcing of computerized business 

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 9 of 26 Pg ID 36
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Mark Services and Date of First Use

functions; business consultation relating to the fields of 

electronic commerce and electronic business; business 

consultation relating to the field of on-line business 

transactions, namely, marketing, order processing, and order 

fulfillment; customer relationship management; and employee 

leasing services, namely, providing information technology 

professionals to others” in International Class 35; and 

“Computer consultation services in the fields of web site 

design, web site development, web site maintenance, web site 

upgrading, web site hosting, web site privacy, web site 

security, database design, selection of operating environment, 

development of operating environment, development and 

integration of interactive content and design; and in the fields 

of computer software applications, computer software 

maintenance, and computer software development; technical 

support services via telephone, email, facsimile, pager, and in 

person; and enabling legacy applications for use on the world 

wide web” in International Class 42

FIRST USED IN 1999

(U.S. Reg. No.

2,932,357)

“Business consultation services, namely consultation relating 

to business strategy, namely, assessing a company’s existing 

operations, and advising on the development of technologyrelated methodologies in the field of project management; 

consultation relating to outsourcing of computerized business 

functions; business consultation relating to the fields of 

electronic commerce and electronic business; business 

consultation relating to the field of on-line business 

transactions, namely marketing, order processing, and order 

fulfillment; customer relationship management; and employee 

leasing services, namely, providing information technology 

professionals to others” in International Class 35; and 

“Computer consultation services in the fields of web site 

design, web site development, web site maintenance, web site 

upgrading, web site hosting, web site privacy, web site 

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Mark Services and Date of First Use

security, database design, selection of operating environment, 

development of operating environment, development and 

integration of interactive content and design; and in the fields 

of computer software applications, computer software 

maintenance, and computer software development; custom 

designing of computer software and computer programming 

services for others; custom computer software development, 

namely, enabling legacy applications for use on the world 

wide web; and technical support services, namely, 

troubleshooting of computer hardware and software 

problems” in International Class 42

FIRST USED IN 1999

SYNTEL 

SMALL 

ENOUGH TO 

LISTEN, BIG 

ENOUGH TO 

DELIVER

(U.S. Reg. No. 

3,664,282)

“Business consultation, namely, consultation relating to the 

outsourcing of business processes; business consultation 

services, namely, consultation relating to business strategy, 

including assessing a company's existing operations, and 

advising on the development of technology-related 

methodologies in the field of project management; 

consultation relating to outsourcing of computerized business 

functions; business consultation relating to the fields of 

electronic commerce and electronic business; business 

consultation relating to the field of on-line business 

transactions, namely, marketing, order processing, and order 

fulfillment; customer relationship management; and employee 

leasing services, namely, providing information technology 

professionals to others” in International Class 35; and

“Computer consultation services in the fields of web site 

design, web site development, web site maintenance, web site 

upgrading, web site hosting, web site privacy, web site 

security, database design, selection of operating environment, 

development of operating environment, development and 

integration of interactive content and design; and in the fields 

of computer software applications, computer software 

maintenance, and computer software development; technical 

support services, namely, computer troubleshooting via 

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 11 of 26 Pg ID 38
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Mark Services and Date of First Use

telephone, email, facsimile, pager, and in person,” in 

International Class 42

FIRST USED IN 2007

(U.S. Reg. No.

4,666,434)

“Computer consultation services, namely, consulting in the 

fields of mobile applications, big data analytics, public and 

private cloud computing solutions, social media, evaluation, 

Internet Of Things (IoT), and integration of IT 

environments,” in International Class 42

FIRST USED IN 2014

STAYAHEAD 

WITH 

SYNTEL

(U.S. Ser. No.

86/010346)

“Providing technology consultancy services, namely, 

computer consultation in connection with providing a welldefined computer technology engagement roadmap to 

customers with IT departments that are migrating to end-toend outsourcing software applications, where that roadmap 

assesses computer technology engagement maturity and 

connects with computer technology business needs in a 

phased approach with milestones and deliverables through a 

synergetic service model,” in International Class 42

FIRST USED IN 2014

Id. ¶ 11.

ADDITIONAL TRADEMARKS WORLDWIDE

Jurisdiction Trademark App. No. / 

Reg. No.

Filing Date / Reg. 

Date

Canada SYNTEL 789,746 February 4, 2011

Canada 1681420 June 16, 2014

Europe 

(CTM)

011676921 June 12, 2014

India SYNTEL 1285902 May 24, 2004

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Jurisdiction Trademark App. No. / 

Reg. No.

Filing Date / Reg. 

Date

India SYNTEL (Design) 1285904 May 24, 2004

Germany SYNTEL 30,460,119 January 11, 2005

Hong Kong SYNTEL 302565577 April 2, 2013

Hong Kong SYNTEL 302565568 April 2, 2013

Mexico 1,535,189 October 7, 2014

Singapore T1006756J May 27, 2010

South Africa SYNTEL 2012/22110 June 27, 2014

South Africa SYNTEL 2012/22111 June 27, 2014

U.K. SYNTEL 2,353,297 July 1, 2005

U.K. 2,448,237 April 4, 2008

Australia, 

Ireland, and 

Singapore 

(WIPO)

SYNTEL 1001164 April 3, 2009

Philippines 

(WIPO)

1221625 June 26, 2014

Id. ¶ 23.

B. Trade Channels and Use of the Mark.

Syntel uses the Mark in connection with its delivery of IT services and its 

promotion of such services through direct and online advertising, trade shows, 

exhibits, speaking engagements, industry conferences, custom corporate events, 

client meetings, and invitation-only conferences and events. Id. ¶ 17. Regarded as 

an expert in its industry, Syntel conducts research and prepares white papers, case 

studies, and other publications on topics of interest to clients, prospective clients, 

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strategic partners, and the industry. Id. ¶ 17. Since 2004, Syntel has spent in 

excess of $10 Million (USD) in connection with promotion of its products and 

services identified by the Mark. Id. ¶ 16.

In addition to the business sectors targeted by Syntel, the general public also 

encounters the Mark via Syntel’s website, social media (Facebook, YouTube, 

Twitter, LinkedIn and Google+), and mainstream publications (print and online).

Id. ¶ 16, 22. Syntel’s website, www.syntelinc.com, was launched in 1996 and has 

had millions of hits. In 2014, alone, there were over 76,000 unique U.S. visitors to 

the website. Id. ¶ 22a.

Since 2006, Syntel has generated revenue in excess of $4.7 Billion for 

services it delivered in connection with the Mark in the U.S. Id. ¶ 14. In 2014 

alone, its revenue was over $911 Million. Id. ¶ 5, 14.

C. Industry Recognition.

Syntel is well known and highly regarded for its expertise, client services 

delivery model, and client outcomes. It has received numerous awards and 

extensive recognition in its field. In 2013, the Harvard Business Review placed

Syntel among the top performing public companies. Id. ¶ 8. In 2012, Forbes 

ranked Syntel on the list of America’s Best Small Companies. Id. ¶ 8. The 

company was ranked in the top 20 in several categories by the International 

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 14 of 26 Pg ID 41
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Association of Outsourcing Professionals “The Global Outsourcing 100” in 2011.

Id. ¶ 8. In 2014, these awards, rankings and recognitions included:

• Ranking #62 on the IAOP “Global Outsourcing 100” list by 

International Association of Outsourcing Professionals (“IAOP”);

• Ranking #26 on the American Banker and BAI FinTech 100;

• Ranking #54 on the Healthcare Informatics 100;

• Ranking #40 on the Solution Provider 500 list by CRN, a division 

of the Channel Company; and

• Ranking #20 on the Crain’s Detroit Business list of Fastest 

Growing Companies.

Id. ¶ 8.

D. Defendant.

Defendant was organized in 1999. Syntel became aware of Defendant in 

2008 but noted that Defendant’s business was confined to software for mailroom 

operations. The trademarks used by Defendant to identify its products included 

“AutoMail,” “USA Automail,” “Mail Stream Manager,” and “Takes the Work Out 

of Workflow.” 

Because Defendant’s business name included the word “SynTel,” Syntel 

wrote to Defendant, advising it of Syntel’s rights in the Mark, the nature of 

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 15 of 26 Pg ID 42
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Syntel’s business, and Syntel’s commitment to defending its rights should 

Defendant expand its use of the name “SynTel” in a way that infringed Syntel’s 

rights. Id. ¶ 25.

Defendant's goods and services remained in the field of mailroom operations 

until, in a 2014 press release, Defendant described itself as a software development 

company. Id. ¶ 26. According to its website, 

www.syntelllc.com<http://www.syntelllc.com, Defendant provides “software and 

services” and “outsourcing services”, and targets companies in the fields of 

finance, utilities, healthcare, public sector, insurance, and telecommunications. Id.

¶ 26. Defendant's expansion of services conflicted with the trade channels, 

customers, and products of Syntel. In response to a written request, Defendant 

would not agree to cease the use of Defendant’s Mark in connection with its 

expanded services. Id. ¶ 27.

Syntel has never licensed Defendant to use the Mark. Id. ¶ 12. Defendant 

has no federal registration for Defendant’s Mark. Defendant is not, and has never

been, affiliated with Syntel.

Defendant does business in the state of Michigan. Id. ¶ 28.

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ARGUMENT

A. Legal Standard.

In determining whether to issue a preliminary injunction, a district court 

must consider and balance four factors: (1) whether the movant has a strong 

likelihood of success on the merits; (2) whether the movant would suffer 

irreparable injury without the injunction; (3) whether issuance of the injunction 

would cause substantial harm to others; and (4) whether the public interest would 

be served by issuance of the injunction. R.L. Polk & Co. v. InfoUSA, Inc., 230 F. 

Supp. 2d 780, 783 (ED Mich. 2002), quoting, Blue Cross & Blue Shield Mut. of 

Ohio v. Blue Cross & Blue Shield Ass’n., 110 F.3d 318, 322 (6th Cir. 1997).

B. Likelihood of Success.

Under the Lanham Act, the owner of a registered mark is entitled to an 

injunction against the use of a mark that is “likely to cause confusion, or to cause 

mistake, or to deceive.” 15 U.S.C. §§ 1114 and 1125.

In determining whether one mark is likely to cause confusion with another 

(and thus constitute trademark infringement), a court must examine various factors, 

not all of which will be relevant in each case:

(1) the strength of the plaintiff’s mark; 

(2) the relatedness of the parties’ goods and/or services; 

(3) the similarity of the marks; 

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(4) evidence of actual confusion; 

(5) the marketing channels used; 

(6) the likely degree of purchaser care; 

(7) defendant’s intent in selecting its mark; and 

(8) the likelihood of expansion of the parties’ respective product and service 

lines.

See Frisch's Restaurant, Inc. v. Shoney's Inc., 759 F.2d 1261, 1264 (6th Cir. 

1985).

Here, a review of these eight factors demonstrates that Syntel is entitled to a 

preliminary injunction against use by Defendant of Defendant’s Mark.

1. Syntel’s Mark is Strong

When assessing the strength of a mark, a court will place the mark into one 

of four categories: generic, descriptive, suggestive, and fanciful or arbitrary, with 

these categories constituting a spectrum of increasing strength. See Daddy's Junky 

Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 

1997). In this case, the Mark is coined and, therefore, constitutes an arbitrary mark 

that is entitled to broad protection against infringement. See Id. at 280-281.

The inherent strength of the Mark is reinforced by the recognition it has 

achieved in the marketplace. See Homeowners Group, Inc. v. Home Marketing 

Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991). Syntel has long-time, 

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 18 of 26 Pg ID 45
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widespread use of the Mark, has billions of dollars in revenue generated through 

the delivery of services provided in connection with the Mark, has achieved 

significant recognition throughout its industry, and has extensive investment in 

advertising, promotion, and public use of the Mark.

Further, it is not disputed that: Syntel used the Mark first; Syntel secured 

federal registrations of the Mark; the certificates of registration establish the 

validity of the Mark, Syntel’s ownership of the Mark, and Syntel’s exclusive right 

throughout the U.S. to use the Mark in connection with the stated services pursuant 

to 15 U.S.C. § 1115(a); and that U.S. Registration Nos. 1,692,076, 2,875,965, and 

2,932,357 are incontestable pursuant to 15 U.S.C. § 1065 and, thus, the 

registrations are conclusive evidence of Syntel’s rights in the Mark. An

incontestable mark is entitled to the presumption that it is a strong mark. See, e.g.,

R.L. Polk & Co., 230 F. Supp. 2d at 785-786.

2. The Parties’ Services Overlap.

The services of Syntel and Defendant are directly competitive, now that 

Defendant has moved from a provider of mailroom related technology products to 

the realm of software development and other IT services. Syntel has been engaged 

in software development for over 30 years. The likelihood of confusion is greatest 

where the parties’ goods and services are directly competitive. Therma-Scan, Inc. 

v. Thermoscan, Inc., 295 F.3d 623, 632-633 (6th Cir. 2002). Defendant’s 

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 19 of 26 Pg ID 46
14

mailroom products were previously marketed and sold under trademarks owned by 

Defendant, and Defendant was not providing software development services to the 

industry sectors where Syntel was providing its technology services. However, 

Defendant subsequently changed the nature of its use of Defendant’s Mark, thereby 

progressively encroaching into the realm of infringement. See Kellogg Co. v. 

Exxon Corp., 209 F.3d 562, 568-575 (6th Cir. 2000).

3. The Marks are Identical

The marks of Syntel and Defendant are identical. While similarity alone 

does not compel a determination that marks are likely to be confused, it is a factor 

entitled to considerable weight. Champions Golf Club, Inc. v. Champions Golf 

Club, 78 F.3d 1111, 1119 (6th Cir. 1996). Where the marks are identical, there is a 

higher likelihood that consumers will be confused. See, e.g. R.L. Polk & Co., 230 

F. Supp. 2d at 789 (“the word ‘Polk's’ as used on the cover of Defendant's 

catalogue is identical to the ‘Polk’ mark in terms of pronunciation, verbal 

translation, and appearance” and therefore “Defendant's use of the word ‘Polk's’ is 

likely to cause confusion”); Midwest Guaranty Bank v. Guaranty Bank, 270 F. 

Supp. 2d 900, 915 (ED Mich. 2003) (concluding that “current and potential 

consumers may mistakenly believe that the parties are the same entity upon seeing 

the term GUARANTY, the dominant feature of both parties’ marks”).

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4. The Marketing Channels Overlap.

Consideration of “the marketing channels” “requires a court to consider the 

similarities or differences between the predominant customers of the parties' 

respective goods or services,” as well as “whether the marketing approaches 

employed by each party resemble each other.” Daddy's Junky Music Stores, Inc.,

109 F.3d at 285. The likelihood of confusion is greatly increased if the parties’ 

products are distributed through similar channels of trade to the same ultimate 

consumers. Here, the industries where Syntel has existing clients and where it 

targets clients overlap with those identified by Defendant on its website. At least 

one Michigan bank has identified Defendant as its provider of technology services.

5. Defendant Knew of Syntel.

Defendant’s intent in adopting Defendant’s Mark is a “critical factor” 

because where there is evidence that “‘the mark was adopted with the intent of 

deriving benefit from the reputation of [the plaintiff], that fact alone may be 

sufficient to justify the inference that there is confusing similarity.’” Frisch’s 

Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th 

Cir. 1982), cert denied, 459 U.S. 916, 103 S. Ct. 231, 74 L.Ed.2d 182 (1982),

quoting Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 263 (5th Cir. 1980),

cert. denied, 449 U.S. 899, 101 S. Ct. 268, 66 L.Ed.2d 129 (1980). See, also, Pita 

Delight, Inc. v. Salami, 24 F. Supp. 2d 795, 802 (ED Mich. 1998 (“Intent is 

2:15-cv-10652-NGE-DRG Doc # 3 Filed 02/20/15 Pg 21 of 26 Pg ID 48
16

relevant because purposeful copying indicates that the alleged infringer, who has at 

least as much knowledge as the trier of fact regarding the likelihood of confusion, 

believes that his copying may divert some business from the senior user”). 

Syntel’s registrations provided constructive notice of Syntel’s rights, 15 

USC §1072, and Defendant had actual notice through direct communications 

between the parties prior to Defendant’s expansion of its use of Defendant’s Mark. 

Defendant disregarded Syntel’s rights, and willfully expanded its use of 

Defendant’s Mark to services that overlap with the types of services offered by 

Syntel. Defendant’s conduct also demonstrates that it will continue to expand into 

Syntel’s established lines of business – lines of business that are protected by 

federal trademark registrations. "Inasmuch as a trademark owner is afforded 

greater protection against services that directly compete or are in the same channels 

of trade, a ‘strong possibility’ that either party will expand his business to compete 

with the other or be marketed to the same consumers will weigh in favor of finding 

that the present use is infringing." Homeowners Group, Inc. v. Home Mktg. 

Specialists, Inc., 931 F.2d 1100, 1112 (6th Cir.1991) .

Most, if not all of, the relevant factors support the conclusion that 

Defendant’s use of Defendant’s Mark in connection with its software development 

services and other IT services will likely cause confusion, cause mistake, or 

deceive the marketplace into believing that Defendant and its products or services 

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17

are connected with Syntel. Thus, Syntel has a strong likelihood of success on the 

merits in its infringement action.

C. Syntel Will be Irreparably Harmed by Defendant’s Continued Use of

Defendant’s Mark.

In trademark infringement actions, the Sixth Circuit has recognized that 

“irreparable injury ‘ordinarily follows when a likelihood of confusion or possible 

risk to reputation appears’ from infringement or unfair competition.” Lorillard 

Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377, 381-382 (6th Cir. 

2006) (internal quotation marks and citation omitted); Innovation Ventures, LLC v. 

Body Dynamics, Inc., No. 08-12711, 2009 WL 877640 (ED Mich. March 30, 2009)

(the Sixth Circuit has continued to recognize a presumption of irreparable harm in 

trademark cases where infringement causes a likelihood of confusion or possible 

risk to reputation); see also Ignition Athletic Performance Group, LLC v. Hantz 

Soccer U.S.A., LLC, No. 06-2308, 245 Fed.Appx. 456, 460 (6th Cir. 2007) (“[i]f 

Plaintiff prevails on the likelihood of success on the merits factor, irreparable harm 

is presumed in a trademark infringement case”). Applying that general rule to this 

case shows that irreparable harm is established by the existing likelihood of 

confusion. As such, this case is similar to previous cases in the Sixth Circuit where 

courts have issued a preliminary injunction to prevent irreparable injury to a 

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18

trademark owners’ goodwill. See, e.g., R.L. Polk & Co., 230 F. Supp. 2d at 795-

796.

Unless an injunction issues, Defendant will be able to continue to operate 

under the identical Defendant’s Mark to offer competing services.

D. An Injunction Will Not Cause Harm To Others.

The issuance of an injunction will not cause substantial harm to others. In 

considering this factor, this Court should ignore Defendant’s self-inflicted harm 

created by its reckless acts of infringement. See Midwest Guaranty Bank, 270 F. 

Supp. 2d at 924 (finding that an apparent infringer “cannot place itself in harms 

way, and then later claim that an injunction should not issue because of costs 

which it must incur in order to remedy its own misconduct”). By selecting a mark 

that is identical to Syntel’s Mark, Defendant knowingly put itself at risk. 

Defendant, however, elected to expand its offerings in the face of Syntel’s stated 

concerns. The requested injunction will not prevent Defendant from selling its 

products that are branded by different names, or offering services under a mark that 

is not likely to cause confusion with Syntel’s Mark.

E. An Injunction Will Serve the Public Interest.

An injunction will serve the public interest because it will prevent consumer 

confusion and deception in the marketplace and protect the trademark owner’s 

property interest in its marks. See Lorillard Tobacco Co., 453 F.3d at 383. 

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19

Defendant’s customers can continue to receive Defendant’s mailroom related 

products under the names of those specific products. The public interest is also 

served where Syntel – the senior user of the Mark, the party that built up a national 

and global brand, the party that secured federal trademark registrations, the party 

whose registrations are incontestable and confer exclusive rights – is protected 

against a defendant that willfully chose to expand its technology services to 

Syntel’s market after previously being apprised of Syntel’s trademark rights. 

Without an injunction, Syntel’s goodwill will be diminished, it will lose the ability 

to control the quality of the goods and services provided in connection with the 

Mark, the Mark will no longer exclusively identify Syntel’s services, its brand will 

be diluted, and the marketplace will be confused. The public interest can be served 

only by granting an injunction. See Midwest Guaranty Bank, 270 F. Supp. 2d at 

924.

CONCLUSION

The Court should issue a preliminary injunction enjoining Defendant from 

using Defendant’s Mark in connection with software development services and all 

other services encompassed by Syntel’s federal registrations.

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February 20, 2015

Respectfully submitted,

/s/Alan N. Harris

Alan N. Harris (P56324)

Susan M. Kornfield (P41071)

Bodman PLC

201 South Division Street, Suite 400

Ann Arbor, Michigan 48104

(734) 761-3780

(734) 930-2494 - Fax

aharris@bodmanlaw.com

skornfield@bodmanlaw.com

Attorneys for Plaintiff Syntel, Inc.

PROOF OF SERVICE

I hereby certify that on February 20, 2015, I electronically filed the 

foregoing paper with the Clerk of the Court using the ECF system 

which will send notification of such filing to all counsel of record.

 

Signature: /s/ Mary Poupard

Mary Poupard

BODMAN PLC

201 S. Division Street, Suite 400

Ann Arbor, MI 48104

(734) 761-3780

mpoupard@bodmanlaw.com

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