trademark infringement or unfair competition.' However, “one who resells trademark goods is
obligated to do so in a manner that is not likely to cause confusion or imply that the seller is
associated with the manufacturer.” Quill, 1998 WL 295502, at *3.
As explained by the Quill court, in Bandag, Inc. v. Al Bolser’s Tire Stores, Inc., 750 F.2d
903, 911 (Fed. Cir. 1984), and Stormor, a Div. of Fuqua Inds., Inc. v. Johnson, 587 F. Supp. 275,
279 (W.D. Mich. 1984), cases in which the courts found that resellers had engaged in trademark
infringement, “the reseller’s conduct went beyond the mere resale of trademark goods. In each
case, the manufacturer had an authorized sales network in place, and the defendant’s actions
mislead consumers into believing that the defendant was part of that network.” Quill, 1998 WL
295502, at *3. As in Bandag and Stormor, in this case Bernina has its own sales network of
authorized dealers. Although AllBrands is not an authorized Bernina dealer, AllBrands
represents that it is knowledgeable of all of the latest developments regarding Bernina and
Bemnette sewing machines and Bernina’s manufacturing processes. Nowhere in AllBrands’
website does it say that AllBrands is not an authorized Bernina dealer or not affiliated with
Bernina. To the contrary, in its website, AllBrands states the following:
(1) “Bernina has introduced a whole new line of Swiss computer machines including
a new top of the line with their 1 embroidery hoop machine made in
Switzerland.”

(2) “Bernina now uses manufacturing plant in Thailand for 950 and 1008 and uses
Thai Parts and Labor for the Bernette Sewing Machines.”

‘Here, Bernina does not assert that AllBrands sells Bernina and Bernette branded items in
anything but a genuine, unchanged state.


CONCLUSION

For the forgoing reasons, the Court grants Bernina’s motion for a temporary restraining
order. The Court hereby enjoins AllBrands from using, in trade or advertising in any fashion,
the Bernina and Bernette trademarks on the AllBrands.com website. Further, the Court enjoins
AllBrands from using the Bernina and Bernette trademarks within the metatags for the
AllBrands.com website and, upon the removal of the Bernina and Bernette trademarks from its
metatags, orders that AllBrands re-register the AllBrands.com web site with all known Internet

search engines.

SO ORDERED ENTERED: a/ s/o (

LL,

Kish RONALD A. Ey
United States Judge

8



DISCUSSION

“The standards for a temporary restraining order and a preliminary injunction are
identical” Frederick Atkins, Inc. v. Carson Pirie Scott & Co., Inc., No. 99 C 7838, 1999 WL
1249342, at *1 (N.D. Ill. Dec. 13, 1999). “[P]laintiff bears the burden of showing: 1) some
likelihood of success on the merits; 2) no adequate remedy of law exists; 3) plaintiff will suffer
irreparable injury if the TRO is not issued: 4) the irreparable harm plaintiff will suffer if the TRO
is granted.” Victor Prods., Inc. v. Customs Accessories, Inc., No. 94 C 2125, 1994 WL 130769,
at *1 (NLD. Ill. Apr. 14, 1994)

First Bernina has some likelihood of success on its claims under 15 U.S.C. §§ 1114(1),
1125(a), and the ICFDBPA, 815 ILL. COMP. STAT. 505 et seq. “The law of trademark and
tradename infringement or unfair competition precludes one from using the distinctive mark of
name of another if it will deceive or cause a likelihood of confusion as to the origin of the goods
involved.” Bandag, Inc. v. Al Bolser’s Tire Stores, Inc., 750 F.2d 903, 911 (Fed. Cir. 1984).
“Liability under the Lanham Act, 15 U.S.C. §§ 1125(a), 1114(1) (1982), is premised on whether
the public is likely to be deceived or confused by a given practice.” Jd. “[U]nder Illinois law,
claims under the ICFDBPA . . . are to be resolved according to principles set forth under the
Lanham Act.” D 56 Inc. v. Berry’s Inc., 955 F. Supp. 908, 920 (N.D. Ill. 1997).

It is well-settled that under the “first sale doctrine,” an independent dealer may use a
manufacturer’s trademark to re-sell that brand of goods, see, e.g., Sebastian Int’l, Inc. v. Longs
Drug Stores Corp., 53 F.3d 1073, 1077 (9th Cir. 1995); Quill Corp. v. NADA Scientific Ltd., No.

97 C 7461, 1998 WL 295502, at *3-4 (N.D. Ill. 1998), and that such conduct does not constitute


(3) “Look for return of more mechanical from Thailand, where the flatbed industrial
Tacsew-Bernina 950 @ $1,099 and Home Mechanical 1008 @ $599 are now
being assembled using some Swiss parts but Taiwan motors.”

(id., Ex. D, at 2.) Because All!Brands holds itself out to the public to be abreast of the latest news
regarding Bernina, the Court finds that AllBrands’ representations go beyond the mere reselling
of Bernina’s trademark products and mislead consumers into believing that AllBrands is
affiliated or associated with Bernina. Thus, Bernina has established some likelihood of success
on the merits regarding the likelihood of confusion as to whether AllBrands is representing itself
as an authorized dealer of Bernina products under 15 U.S.C. §§ 1114(1), 1125(a) and 815 ILL.
Comp. STAT. 505 et seq.”

Further, it is only because the Court finds that AllBrand’s website itself is misleading that
it enjoins AllBrand’s use of the Bernini and Bernette trademarks as metatags. If AllBrands’
website was not confusing to customers, then an injunction of AllBrands’ use of the Bernina and
Bernette trademarks in its metatags would be improper because such use merely directs
customers to the location where they may purchase genuine branded goods from a reseller that
does not hold itself out to be anything but an independent retailer unaffiliated with Bernina.

Next, the Court must determine whether an adequate remedy at law exists and whether
Bernina will suffer irreparable injury if the TRO is not issued. “[D]amages occasioned by
trademark infringement are by their very nature irreparable and not susceptible of adequate

measurement for remedy at law.” International Kennel Club of Chicago, Inc. v. Mighty Star,

2Because the Court finds that Bernina has some likelihood of success on its claims under
15 U.S.C. §§ 1114(1), 1125(a) and 815 ILL. Comp. STAT. 505 et seq., the Court need not analyze
whether there is likelihood of success on its claims under 15 U.S.C. §§ 1125(c), (4).

5


Minute Oxder Form (0697)

United States District Court, Northern District of Mlinois

Name of Assigned Jud Sitting Judge
a Maghonete Jodge Ronald A. Guzman than aesited Susie
CASE NUMBER 01 C585 DATE 2/8/2001
CASE BERNINA OF AMERICA, INC. vs. FASHION FABRICS INTERNATIONAL, INC.
TITLE

[in the following box (a) indicate the party filing the motion, c.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the
nature of the motion being presented.]

MOTION:

DOCKET ENTRY:

qd) a Filed motion of [ use listing in “Motion” box above.]

(2) o Brief in support of motiondue____.

(3) o Answer brief to motion due___. Reply to answer brief due__.

(4) a Ruling/Hearing on__setfor___at

(5) Qa Status hearing[held/continued to] [set for/re-set for]on__—ssetfor___—at

6) QO Pretrial conference[held/continued to] [set for/re-set for]on___setfor__—at__
(7) im Trial[set for/re-set for] on __at

(8) Qo [Bench/Jury trial] [Hearing] held/continued to___at

(9) im} This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]

OFRCP4(m) OGeneral Rule21 OFRCP41{a)(i) OFRCP4i(a)(2).

(10) MM [Otherdocketentry] It is hereby ordered that the plaintiff's motion for a temporary restraining order
[2-1] is granted. Enter Memorandum Opinion and Order.

dl) oa {For further detail see order (on reverse side offattached to) the original minute order.]

No notices required, advised in open court.

No notices required,

Notices mailed by judge’s staff. F4
VY | Notified counsel by telephone.

Docketing to mail notices. wD

Mail AO 450 form.

Copy to judge/magistrate judge. a

courtroom ih OF oy date mailed notice

CG deputy’s
initials

Date/time received in
central Clerk's Office mailing depur



Inc., 846 F.2d 1079, 1092 (7th Cir. 1988). Further, “it is virtually impossible to ascertain the
precise economic consequences of intangible harms, such as damage to reputation and loss of
goodwill, caused by such violations.” Abbott Labs. v. Mead Johnson & Co., 971 F.2d 6, 16 (7th
Cir. 1992). Because Bernina alleges that AllBrands has taken improper advantage of Bernina’s
goodwill and reputation by misleading the public into believing that it is an authorized Bernina
dealer, the Court finds that there is no adequate remedy at law and that Bernina will suffer
irreparable diminution of its goodwill and reputation if the TRO is denied.

Lastly, the Court must determine whether the irreparable harm Bernina will suffer if the
TRO is denied outweighs any harm AllBrands will suffer if the TRO is granted. In balancing the
harms, the Court finds that AllBrands could have easily avoided this lawsuit by clearly stating
throughout its website wherever the Bernini and Bernette trademarks are used that AllBrands is
an independent retailer not affiliated with Bernina. See, e.g., Volkswagenwerk
Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir. 1969) (holding that repairman’s use of
word “Independent” whenever terms “Volkswagen” or “VW” appeared in advertising was
sufficient to distinguish his business from franchised repairmen). Although AllBrands surely
will suffer economic harm due to loss of sales in Bernina products if the TRO is granted, such
harm is outweighed by the irreparable harm to Bernina, discussed above, if the TRO is denied.
Thus, because Bernina has shown some likelihood of success on the merits, no adequate remedy
at law, irreparable injury if the TRO is denied and because the balance of the harm weighs in

Bernina’s favor, the Court grants Bernina’s motion for temporary restraining order.


IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

BERNINA OF AMERICA, INC.,
an Illinois corporation,

Plaintiff,
01 C585

Vv. Judge Ronald A. Guzman

FASHION FABRICS INTERNATIONAL,
INC., a Louisiana corporation, d/b/a

ALL BRANDS SEWING MACHINES

& SERGERS, also d/b/a ALL BRANDS
SEWING MACHINE SUPER STORE,

also d/b/a ALLBRANDS.COM,

also d/b/a SEWING MACHINE
SUPERSTORE, also d/b/a A ALL BRANDS
SEWING SUPER STORE, also d/b/a
SEWINGMACHINESTORE.COM,

DOCKETED

FEB 0 9 209)

wwerwrwverwwrvrvrwwrv wren

Defendant.

MEMORANDUM OPINION AND ORDER

This matter is before the Court on plaintiff Bernina of America, Inc.’s (“Bernina’s”)
motion for a temporary restraining order. Bernina seeks an order temporarily restraining
defendant Fashion Fabrics International, Inc., doing business in part as AllBrands (““AllBrands”),
from using the registered trademarks “Bemina”or “Bernette” on the AllBrands.com site and
within the metatags for the AllBrands.com site. Bernina claims that AllBrands use of the
trademarks violates the Lanham Act, 15 U.S.C. §§ 1114, 1125(c), 1125(d), the Mlinois Consumer
Fraud & Deceptive Business Practices Act (“ICFDBPA”), 815 ILL. Comp. STAT. 505 et seq., and
constitutes the misappropriation of name or likeness for commercial purposes. For the reason;

set forth in this Memorandum Opinion and Order, the Court grants the motion.


FACTS

Bernina is marketer of sewing machines and sewing machine technologies manufactured
by its corporate parent, Fritz Gegauf, A.G. (Compl. 2.) Bernina markets its products to a
nationwide network of authorized dealers throughout the United States. (Jd.) Bernina is the
United States licensee of the registered trademarks “Bernina” and “Bernette,” Bernina has
registered these trademarks, and Bernina has used the trademarks continuously for many years to
market Bernina’s sewing machines, products, and technologies. (Jd. | 14.)

AllBrands, as the name connotes, is a retailer of many brands of sewing machines and
sewing products, including those marketed by Bernina. (/d. 3.) AllBrands is an independent
retailer and not an authorized Bernina dealer. (Jd. 19.) AllBrands operates its principal
business by means of an established online presence on the World Wide Web, specifically at
“http://www.allbrands.com”. (Jd. { 15.) On its website, AllBrands uses the “Bernina” and
“Bernette” trademarks, by themselves and to describe certain products, such as “Bernina
Industrial Zigzag Sewing Machines,” “Bernina & Bernette Sewing Machines,” “Bernina
(Tacsew) 950 4.5mm Zigzag,” and “Bernina Artista 180.” (dd., Ex. C. at 4, Ex. D at 1-2.)
AllBrands also describes the Bernina line of sewing machines and informs consumers of the
latest developments in Bernina’s manufacturing processes. In addition, AllBrands uses the
“Bernina” and “Bernette” trademarks within the source code embedded within the
AllBrands.com site, which results in customers finding the AllBrands.com site and the
descriptions of the Bernina Line and developments in Bernina manufacturing processes when

entering either “Bernina” or “Bernette” as a search term while using a search engine. (Id. { 16.)