IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

PARK RIDGE SPORTS, INC., )

an Illinois Not For Profit Corporation, )

)

Plaintiff, ) No. 20 C 2244

)

v. ) Magistrate Judge Jeffrey Cole

)

PARK RIDGE TRAVEL FALCONS, )

an Illinois Not For Profit Corporation, )

et al., )

)

Defendants. )

REPORT AND RECOMMENDATION

Asthough a pandemic, looting, and civilunrest were not enough, battle has broken out among

the youth footballfathers of the Chicago suburb of Park Ridge. On one side ofthe line ofscrimmage,

is the plaintiff, Park Ridge Sports. On the other side, stand the defendants, the Park Ridge Travel

Falcons. The battle is, from review of the parties’ submissions, no doubt a personal rivalry. But for

our purposes, in federal district court, it takes the form of a dispute over the trademark rights to the

team name, “Falcons” and accompanying logo.

PREGAME

The name and logo are, of course, familiar to even a casual professional football fan, as the

plaintiff copied them exactly from the NFL’s Atlanta Falcons, which came on the scene about 50

years ago. Cf. 15 U.S.C. §. 1052(d)(“No trademark by which the goods of the applicant may be

distinguished from the goods of others shall be refused registration on the principal register on

account of its nature unless it– . . . Consists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark or trade name previously used in the United

States by another and not abandoned, as to be likely, when used on or in connection with the goods

of the applicant, to cause confusion, or to cause mistake, or to deceive . . . .”). Then, more recently,

no slouches in the lack of creativity and originality department, the defendants copied it from the

plaintiffs. The defendants went a step further than the plaintiff ever managed to in the fifty yearsthey

claim to have been using these marks and applied for trademarks with the USPTO on PARK RIDGE

FALCONS (word mark) – U.S. SerialNo. 88/850,739; PRIVILEGED TRAVEL FALCONS (word

mark) – U.S. Serial No. 88/850,719; and PARK RIDGE TRAVEL FALCONS and Design – U.S.

Serial No. 88/850,573, on March 27, 2020. The plaintiffsfiled suit a couple of weeks later, on April

9

th

, under Section 43(a) of the Lanham Act, and the Illinois Deceptive Trade Practices Act. The

plaintiffs filed a motion for a preliminary injunction on June 23, 2020 [Dkt. #42] and Judge Guzman

referred the motion to me for a report and recommendation the next day. [Dkt. #44].

The parties both declined to have a hearing when I had an initialstatus on this matter on July

2

nd

. Predictably, once those affidavits came in – and defendants’ shed doubt on the plaintiff’s – 

plaintiff had a change of heart and decided a hearing might be a good idea [Dkt. # 53, at 2], or not.

[Dkt. #53, at 3]. But, then on August 6

th

, over the telephone, both parties again eschewed a hearing,

preferring to leave the matter to the papers. [Dkt. #54]. All in all, it’s hard to tell where plaintiff

stands on this, as well as on more than just a couple of other points, as will be seen. There is a

vaguenessto plaintiff’s presentation that is either purposeful or sloppy. But in either case, it counsels

against disrupting the status quo at this late point and entering a preliminary injunction.

In any event, we are left with a battle of affidavits. It’s not uncommon for a preliminary

injunction to be resolved on the basis of affidavits. Affidavits are ordinarily inadmissible at trials but

2
they are fully admissible in summary proceedings, including preliminary-injunction proceedings.

Goodman v. Illinois Dep't of Fin. & Prof'l Regulation, 430 F.3d 432, 439 (7th Cir. 2005); Ty, Inc.

v. GMA Accessories, Inc., 132 F.3d 1167, 1171 (7th Cir. 1997). Ordinarily the party seeking a

preliminary injunction is in a hurry; they are claiming they will be irreparably harmed without one,

after all. And, of course, the hulking defensive tackle in the room is the coronavirus. Is it necessary

to have a hearing with multiple witnessesin the midst of a pandemic which, bylast reckoning, appears

to be getting worse in this area? All over the name and logo of a youth football program? A name

and logo that is not original to plaintiff or defendants? The clear answer is no, so this little squabble

among the football fathers will be taken care of in responsible fashion.

Because preliminary injunction proceedings are designed to move at a speed the bar and the

courts are neither comfortable nor familiar with, there is little time to collect evidence and conduct

discovery, which ordinarily moves at a glacial pace. Here, however, the plaintiff seemed in not so

much of a hurry. They filed their lawsuit back on April 9, 2020, and did not move for injunction relief

until three months later. In those three months, they managed to put together affidavits from James

Toulon, president of plaintiffs’ board of directors; Matt Colleran, a member of their board; and Mel

Thillens, another member of their board of directors. Now certainly, the coronavirus may have had

some dampening effect on the fire of plaintiff’s efforts, but plaintiff was certainly not short-staffed:

they have six attorneys assigned to this case. That’s effectively a “jailbreak,” an all-out blitz. It

inspires flash-backs to Dan Pastorini and the invention of the quarterback flackjacket. The type of

evidence one tends to find in Lanham Act cases – marketing reports, surveys, sales records, etc. –

is not the type of evidence that requires person-to-person contact.

In any event, once the plaintiffs did file their Motion for a Preliminary Injunction, Judge

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Guzman referred it to me for a Report and Recommendation the next day. [Dkt. #44]. That meant,

once the parties briefed the matter, and once I considered those filings and issued my Report and

Recommendation, there would be an automatic delay of at least another month and, most likely,

more. Under Fed.R.Civ.P. 72(b)(2), parties have 14 days to file objections to Reports and

Recommendations on matters like preliminary injunctions. The other party then gets and additional

14 days to respond. After that month has passed, the District Judge must then must consider the

objected-to portions of the report and recommendation de novo, and must review the remainder of

the Report and Recommendation for clear error. White v. Sloop, 772 F. App'x 334, 337 (7th Cir.

2019). It is a lengthy process. Thus, in making his referral, Judge Guzman may have considered

plaintiffs’ leisurely pace as some indication that there was not much of an emergency here. In effect,

Judge Guzman may well have weighed in on the issue of irreparable harm. But quite apart from that,

it is my recommendation that the Motion for Preliminary Injunction be denied.

FIRST HALF

That being said, we move to the facts ofthis dispute which, as already noted, are a bit murkier

than one might expect. Mr. Toulon is plaintiff’s central (paper) witness. He claims that plaintiff has

offered a variety of youth sports program to the Park Ridge community, including flag and tackle

football, and cheerleading, since 1967. (Touolon Dec., ¶ 3). He also claims that the youth tackle

football program has operated continuously all that time under the trade name and service mark Park

Ridge Falcons. (Id., ¶ 4). It’s not clear how he knows this, as he tells us he has only been associated

with the plaintiff’s program since only 2017. (Id., ¶ 2). Cf. Shaffer v. Lashbrook, 962 F.3d 313, 317

(7th Cir. 2020)(even a self serving affidavit has evidentiary value if it is based on personal

4
knowledge).

1 But, more confusingly, Mr. Toulon saysthat, in 2019, plaintiffs fielded thirteen teams

within two leagues, all under the name Park Ridge Falcons. (Id., ¶ 5). There’s no indication of how

that works. Thirteen teams all with the same name? Apparently whenever a young man looks at his

schedule his Park Ridge Falcons are playing . . . the Park Ridge Falcons. That’s a confusing

assertion, and there’s probably a reason for that, as it can’t possibly be accurate.

Plaintiff’s counsel has chosen to support Mr. Toulon’s Declaration with a Chicago Tribune

article about Park Ridge youth football. The article states that, prior to 2015, there were two

separate youth football programs: the traveling Park Ridge Falcons team and Park Ridge Youth

Football. [Dkt. #42-14 (“The two programs date back decades in the city. Both the Falcons and

Park Ridge Football merged earlier this year [2015] under the Park Ridge Sports, Inc. banner.”)].

Furthermore, the article the plaintiff submits gives every indication that plaintiffs run, and have run,

a house league, and the Park Ridge Falcons run – or ran – a separate more competitive traveling

team. [Dkt. #42-14 (“With the high school season kicking off, more than 500 members of

the traveling Park Ridge Falcons and the Park Ridge Football house leagues are gearing up for their

own season as well. . . . The youngest athletes play flag football in Park Ridge Football’s house

league before moving on to tackle football at around age 8. They also have the option of trying out

for the Falcons, who play teams from other communities.”)].

So if, as it appears from plaintiff’s own submissions, that the two programs, Park Ridge

Sports and the Park Ridge Falcons, merged only a couple years ago, what happened all of a sudden

1 This is not to say that “self-serving” is a valid objection. It is not. McKinney v. Office of the

Sheriff of Whitley County, 866 F.3d 803 (7th Cir. 2017)(self serving not a basis for rejecting affidavits

on summary judgment). See also Jeffrey Cole, The Seventh Circuit Inters “Self-Serving” as an Objection to

the Admissibility of Evidence, The Circuit Rider, 14 (November 2013).

5
this year? Mr. Toulon explains that interest in youth football has waned. In reaction, plaintiffs

decided to “combine two of its Park Ridge Falcons youth football program leagues into a single

league. As a result of this decision, the Park Ridge Falcons league previously directed by

defendant Kilburg was combined with a larger Park Ridge Falcons league.” (Toulon Dec., ¶¶

9-10). The vote on that went 8-4. (Id.). Mr. Toulon doesn’t tell us when this was, or what these

“two . . . youth football program leagues” were before. Was this a folding of a competitive traveling

team level with a less competitive participatory level? Was it due the lack of participation in the

traveling team? Or money? Was it perhaps Covid-19 related? Plaintiff, again, keeps the details

sketchy, which certainly detracts from believability. Sketchiness and obfuscation are not hallmarks

of credibility. See, e.g., First Union Rail Corp. v. Heller Performance Polymers, Inc., 2007 WL

4224341, at *3 (N.D. Ill. 2007); F.T.C. v. QT, Inc., 448 F. Supp. 2d 908, 917 (N.D. Ill. 2006);United

States v. Hampton, 2004 WL 2806337, at *2 (N.D. Ill. 2004).

In any event, three members of the plaintiffs’ board of directors – Purcell, Walbert, and

Karnezis – along with one of the coaches for one of plaintiff’s 2019 Park Ridge Falcons teams –

presumablythe traveling team– Kilburg, mutinied and formed defendant, Park Ridge TravelFalcons.

(Id., ¶ 10). They even went plaintiff several yards better, and purchased a website,

www.prtravelfalcons.com, and filed three federaltrademark applicationsfor registration ofthe marks

Park Ridge Falcons, Park Ridge Travel Falcons and PRIVILEGED Travel Falcons, United 

States Serial Nos. 88/850,739, 88/850,719, and 88/850,573. [Dkt. # 19, ¶¶ 27, 31-34].

We also know from plaintiff’s submissions that defendants have associated themselves with

Pop Warner, and play teams from all over the northern part of Illinois – and “the Region” in Indiana

– from Freeport in the west to Hammond in the east, and from Algonquin in the north to Kankakee

6
in the south. [Dkt. #42-8]. Pop Warner and a schedule that sweeps from the Wisconsin border into

Indiana is very different froma localPark Ridge house league. But, again, plaintiffstell uslittle about

how their league of thirteen “Falcons” teams is set up, where they play, who they play, etc. (Toulon

Dec., ¶. 4). Indeed, at this point, plaintiff will not be offering any type oftraveling or in-house tackle

football team, while defendants have gone so far as to set up practices in Crown Point, Indiana, in

order to avoid the State of Illinois’ Covid-19 restrictions.

Defendants, of course, offer their own set of affidavits and, in terms of allowing the court to

see the gridiron and learn the roster in this game, the affidavit from James Purcell isfar more detailed

than Mr. Toulon’s. Where Mr. Toulon’s story leaves one to scratch their head and wonder what

exactly is going on, Mr. Purcell’s provides the proverbial lightbulb and sheds some light on the

narrative plaintiff preferred to keep in the dark. Mr. Purcell tells usthat he has been involved in Park

Ridge football as a coach since 2014. He explainsthat, prior to 2015, the city of Park Ridge, Illinois

had two, separate youth football programs: 1) the "Division l" travel youth football program known

asthe "Falcons"; and 2) Plaintiff's "Division 2" house football program, which consisted of numerous

teams that played against one another. (Purcell Aff., ¶. 3).

Mr. Purcell continues, explaining that the Division 1 team– which he says was always known

as the Falcons – required a higher playing level. It was limited to older children from sixth to eighth

grade, who had to try out to make the team. Players could be cut from the team based on level of

play. Practices were longer and tougher. The officials and coaching staff were more experienced.

Participation cost the parents more money and more time. The Division 1 Falcons was a traveling

team that played against other, more competitive teams throughout the region. It was a prep team,

or feeder program, designed to hone the talents of skilled middle school football players in

7
preparation of competitive play in high school. (Purcell Aff., ¶. 4).

Mr. Purcell goes on the tell us that the Division 2 house league was for less competitive

players to allow everyone who wanted to play football an opportunity to participate. The Division

2 house league consisted of around four to eight teams that played against one another. Those

Division 2 teams used various team names, but the name "Falcons" was always associated with the

Division 1 travelteam, not the Division 2 house league. Division 2 house players did not have tryouts,

were not cut from teams, practiced less often, had less stringent officiating and coaching, required

less parental involvement, and required less of a financial commitment. (Purcell Aff., ¶. 5).

In or around 2015, the Division 1 travel team, the Falcons, and the Division 2 houseleague

decided to join forces. While the two programs were being operated side-by-side, the Division 1

travel team still continued to use the Falcons name, while the Division 2 house league continued to

use various different names, mostly from the NFL, and play against one another. Although the two

programs merged, it was always the intention of the parties that the Division 1 travel team would

continue to use the Falcons name. (Purcell Aff., ¶. 6).

That’s all replay; Mr. Purcell then gets us back to live action. In the Spring of 2020, plaintiff

decided to fold the Division 1 travel team into the Division 2 house team, effectively eliminating the

traveling team. While plaintiff sought to keep the Falcons name for the Division 2 house league –

it’sstill not clear how that would work – Mr. Purcell claims that when the Division 1 travel teamand

the Division 2 house team originally combined, it was always the intention that the Division l travel

team be known as the Falcons. (Purcell Aff., Par.7).

Defendants also submit an affidavit from James Brander, who tells us he has been involved

with Park Ridge youth football since 2010, and as a coach from 2010 through 2016. He explains

8
that, prior to 2015, the plaintiffs – Park Ridge Sports – offered no travel football team, only a house

league. (Brander Aff., Par. 7). The Park Ridge Falcons, on the other hand, were the community’s

youth travel team, operating independently since the 1970s until 2015. (Id., Par. 8). This was the

competitive, elite level. There were tryouts. The only concession to hurt feelings was a “minimum

plays” level; once a boy made the team, he got to play a minimum number of snaps in a game. (Id.,

Pars. 8-9). So Mr. Purcell’s version, and Mr. Brander’s version both track much more closely with

the Chicago Tribune article attached to Mr. Toulon’s declaration.

The affidavit scrimmage between Mr. Touolon and the double coverage of Mr. Purcell and

Mr. Brander is arm-tackling compared to the slobberknocker helmet-to-helmet hitting when we get

to the affidavits from Mel Thillens (on plaintiffs’ side of the line) and Mark Sroka (on defendants’

side). Mr. Thillens – on plaintiffs’ board of directors – relates a phone conversation he had with Mr.

Sroka in which Mr. Sroka asked about being more involved with plaintiffs’ flag football program.

Mr. Thillens, knowing that Mr. Sroka was involved with the Travel Falcons, asked whether it was

all right if Mr. Sroka had a foot in both camps. Mr. Thillens tells us that Mr. Sroka indicated to him

that the Travel Falcons were part of plaintiffs’ program. (Thillens Dec.. Pars. 3-5). But, Mr. Sroka

calls Mr. Thillens a liar. Mr. Sroka says he had no phone conversation with Mr. Thillens on June 22,

2020. (Sroka Aff., Par. 5). And, he submits that he was fully aware of the differences between the

Park Ridge Travel Falcons and the Park Ridge Football program. (Id., Pars. 6-7).

Mr. Thillens keeps hitting, though, right up to the echo of the whistle. He comes back in

plaintiff’sreplybriefsubmissionsto explain that the date he gave for the conversation – June 22, 2020

– was a “typographical error”, and the conversation he referenced actually took place on May 27,

2020. [Dkt. #53, at 5; #53-1]. So, plaintiff argues, when Mr. Sroka says he didn’t have a

9
conversation with Mr. Thillens on June 22nd

, that doesn’t mean he didn’t have one on May 27th, or

didn’t have one at all. [Dkt. #53, at 5]. That’s a good point, as Mr. Sroka is pretty specific that “as

of June 22, 2020, [he] was fully aware of the differences between the Park Ridge Travel Falcons

program, and the Park Ridge Football program . . . .” [Sroka Aff., Par. 6 (emphasis added)]. What

Mr. Sroka knew before June 22nd

, we don’t know. On the other hand, “June 22" is not a typical typo

for “May 27". Plaintiff piles on after the whistle, accusing defendants’ counsel of ethical violations

and threatening Rule 11 charges.

Then, there is Matt Colleran, also a member of plaintiff’s board. He comes up with a couple

of emails from his wife. Someone from the Maine Eagles – a youth wrestling program – sent her a

link to a Chicago Tribune article about this lawsuit and asked, “Are we promoting the right P[ark]

R[idge] team?” Mr. Colleran’s wife than forwarded it to him, tagging it with: “Another confusion.”

[Dkt. #42-17]. Another email to his wife from one of her friends, Kelli Harman, asked whether she

was supposed to be signing her son up on the Park Ridge Football site or the Park Ridge Travel

Falcons site. [Dkt. #42-18].

Finally, plaintiff added a few more emails, sent to the vice president of its board, Roy

Hoffman, along with its reply brief. [Dkt. #53-8]. The first isfrom a mom requesting a refund: “I am

writing to request a refund of the registration for my son, in the amount of $325.I mistakenly signed

up for the wrong league.” Another was from a dad who expressed some surprise that Park Ridge

Sportsfootball hadn’t been cancelled, and when Mr. Hoffman told him it would only be flag football,

he asked about the tackle football programhe heard about that was playing over the border inCrown

Point, Indiana. Another was from another mom who said: “I signed up my three kids for cheer, flag

football and tackle. I believe I signed up my son for the wrong Falcons teams. He was interested in

10
pop warner falcons(I’m confused) with this, it’s my first year.” Then from another dad: Wanted to

ask about his younger brother in 7

th

grade, I understand you are coaching the PRIVILEGED travel

team. Are you guys playing tackle inCrown Point this year?” Again, Mr. Hoffman had to explain that

plaintiff didn’t have tackle football this Fall, due to the Governor's coronavirus guidelines. Finally,

another dad wrote after taking his son to a preview session for plaintiff’s program; they had wanted

to play tackle football in the programcoached by defendant, Mr. Kliburg. [Dkt. ##53-2-53-8].When

distilled down to their essence, the emails plaintiff hassubmitted show that there is a group of parents

used to traveling teamtackle football, that they want their sonsin that program, and that plaintiff can

no lomger accommodate them. And, it is rather clear that those parents don’t care if the team is

called Falcons or Martians, and are not as concerned about Covid-19 as other parents.

SECOND HALF

Preliminary Injunction Standards

A partymoving for preliminary injunctive relief need not demonstrate a likelihood of absolute

success on the merits. Instead, he must only show that his chancesto succeed on his claims are ‘better

than negligible.’ HH-Indianapolis, LLC v. Consol. City of Indianapolis & Cty. of Marion, Indiana,

889 F.3d 432, 437 (7th Cir. 2018); Valencia v. City of Springfield, Illinois, 883 F.3d 959, 966 (7th

Cir. 2018). Although “[t]his is a low threshold,” id., it “does not mean ... that applicants for interim

injunctive reliefwith relativelyweak cases will always obtain injunctions.” Valencia, 883 F.3d at 966;

Sofinet v. INS, 188 F.3d 703, 707 (7th Cir. 1999). “A preliminary injunction is an ‘extraordinary and

drastic remedy.’ It should never be awarded as of right.” Munaf v. Geren, 553 U.S. 674, 689-90

(2008). It should only be granted when the movant, “by a clear showing, carries the burden of

persuasion.” Mazurek v. Armstrong, 520 U.S. 968, 972 (1997). “If it is plain that the party seeking

11
the preliminary injunction has no case on the merits, the injunction should be refused regardless of

the balance of harms.” Valencia, 883 F.3d at 966.

If the moving party gets past this initial threshold, it must then show that: (1) it will suffer

irreparable harm in the period before the resolution of its claim; and (2) traditional legalremedies are

inadequate. HH-Indianapolis, 889 F.3d at 437; Girl Scouts of Manitou Council, Inc. v. Girl Scouts

of U.S. of Am., Inc., 549 F.3d 1079, 1086 (7th Cir. 2008). If the partymakesthe necessary showings,

the court moves to the “balancing phase.” Id. At that phase, the court employs a sliding-scale

approach and “weighsthe factors against one another, assessing whether the balance of harmsfavors

the moving party or whether the harm to other parties or the public is sufficiently weighty that the

injunction should be denied.” BBL, Inc. v. City of Angola, 809 F.3d 317, 324 (7th Cir. 2015);

HH-Indianapolis, 889 F.3d at 437.

Like much of the law, this preliminary injunction analysis is inexact and hardly a science.

Motions for preliminary injunctions call upon courts to make judgments despite uncertainties.

Planned Parenthood of Indiana & Kentucky, Inc. v. Adams, 937 F.3d 973, 980 (7th Cir. 2019). As

the Seventh Circuit has conceded:

The weighing and balancing of these competing interests with any precision are not

feasible undertakingsin a preliminary-injunction proceeding, and probably not in a full

trial either. Imponderables are likely to dominate. About all that is feasible at the

preliminary-injunction stage isfor the judge to estimate the likelihood that the plaintiff

will prevail in a full trial and which of the parties is likely to be harmed more by a

ruling, granting or denying a preliminary injunction, in favor of the other party, and

combine these findingsin the manner suggested in such cases as Abbott Laboratories

v. Mead Johnson & Co., 971 F.2d 6, 12 (7th Cir.1992): “the more likely it is the

plaintiff will succeed on the merits, the less the balance of irreparable harms need

weigh towards its side; the less likely it is the plaintiff will succeed, the more the

balance need weigh towards its side.

Kraft Foods Grp. Brands LLC v. Cracker Barrel Old Country Store, Inc., 735 F.3d 735, 740 (7th

12
Cir. 2013).

Trademark Law

While the plaintiffs never registered their purported trademark, even an unregistered mark

may still be enforceable under § 43(a) of the Lanham Act, which creates a federal cause of action for

trademark infringement. See Matal v. Tam, – U.S. –,–,137 S. Ct. 1744, 1752 (2017); Two Pesos,

Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992)(“Section 43(a) prohibits a broader range of

practices than does § 32, which applies to registered marks, but it is common ground that § 43(a)

protects qualifying unregistered trademarks” (internal quotation marks and citation omitted)).

Because the mark is unregistered, plaintiffs bear the burden of establishing that the mark is entitled

to protection. Baig v. Coca-Cola Co., 607 F. App'x 557, 559–60 (7th Cir. 2015). Plaintiffs argue

that it has established that it has used the PARKRIDGE FALCONS mark in commerce for more than

50 years by operating a program that competed both within Illinois and in various other states. They

rely exclusively on Mr. Toulon’s Declaration. [Dkt. #42-1, at 9]. Although by the time plaintiff filed

its Reply Brief, it whittled that claim down to having used the name since 2015. [Dkt. #53, at 3].

Much of plaintiff’s case presents a moving target, making it difficult to assess. Piling on top of that

is the fact “trademark law's hallmarks are doctrinal confusion, conflicting results, and judicial

prolixity.” HMH Publishing Co. v. Brincat, 504 F.2d 713, 716 (9thCir.1974). See also TMT N. Am.,

Inc. v. Magic Touch GmbH, 124 F.3d 876, 884 (7th Cir. 1997).

Atrademark is “an identifierratherthan a property‘right,’ ” Dorr–Oliver, Inc. v. Fluid–Quip,

Inc., 94 F.3d 376, 380 (7th Cir.1996), and trademarks are thus protected only to the extent that they

give consumers information about the origin or quality of products. TMT N. Am., 124 F.3d at 882.

(7th Cir. 1997). That salient point is what the real problem is here. Distilling everything the parties

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have submitted down to the essence, it does not seem that “Falcons” identifies much of anything –

it’s Park Ridge that isthe name of the programs. The confusion, if any,seemsto be fueled by the fact

that there are now two football programs in Park Ridge. It doesn’t matter much if both are called

Falcons, because both are called Park Ridge. “The principle underlying trademark protection isthat

distinctive marks—words, names, symbols, and the like—can help distinguish a particular artisan's

goodsfrom those of others.” B &B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ––––, ––––,

135 S.Ct. 1293, 1299 (2015). An identifying mark is distinctive and capable of being protected if it

either(1) isinherentlydistinctive or(2) has acquired distinctivenessthrough secondarymeaning . Two

Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).

The mark, “Falcons” is arbitrary because it does not describe or convey the nature of the

services of organizing and conducting a youth football program. An arbitrary mark enjoys

full trademark protection without proving secondary meaning. But the record – including the

emails plaintiff has recently submitted – gives every indication that “Falcons” does not identify

plaintiff’s program, it identifiesthe community’straveling tackle footballprogram; a programplaintiff

no longer offers and one that was merged with plaintiff’s programsfor only a brief period from 2015

to 2019.

Be that as it may, the analysis moves on to the likelihood of confusion. Seven factors

comprise the likelihood of confusion test: “(1) similarity between the marks in appearance and

suggestion; (2) similarity of the products; (3) area and manner of concurrent use; (4) degree of care

likely to be exercised by consumers; (5) strength of complainant's mark; (6) actual confusion; and,

(7) intent of defendant to ‘palm off his product as that of another.’ ” Barbecue Marx, Inc. v. 551

Ogden, Inc., 235 F.3d 1041, 1043–44 (7th Cir. 2000). See also Promatek Indus., Ltd. v. Equitrac

14
Corp., 300 F.3d 808, 812 (7th Cir. 2002); Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 898 (7th Cir.

2001).The likelihood of confusion test is an equitable balancing test. As a consequence, the “weight

and totality of the most important factors in each case will ultimately be determinative of the

likelihood of confusion, not whether the majority of the factors tilt the scale in favor of one side or

the other.” Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 812 (7th Cir. 2002); Ty, Inc. v.

Jones Grp., Inc., 237 F.3d 891, 898 (7th Cir. 2001).

While no single factor is dispositive, and courts may assign varying weights to each of the

factors in different cases, three of the factors are particularly important: the similarity of the marks,

the defendant's intent, and actual confusion. Barbecue Marx, 235 F.3d at 1044 (7th Cir. 2000). In

the end, however, unless a judge is the parent of a boy interested in playing highly competitive,

traveling team, tackle football, “a judge's finding that confusion [is] likely [is] nothing but a surmise,

a conjecture, a guess.” Kraft Foods Grp., 735 F.3d at 741–42.

Similarity of marks. There is little doubt that the marks are similar. They are both copies

of the NFL franchise’s team name and logo. But, the defendants point out that their mark is actually

“Travel Falcons” as opposed to just “Falcons.” Plaintiff calls that a slight difference but, in this

context it is rather significant. There is a huge difference to parents and their sons between a house

league – that’s what plaintiff offers, and this Fall it’s flag football – and a traveling tackle football

team. This factor doesn’t really tip one way or the other, but certainly doesn’t favor plaintiff’s

motion for an injunction.

Similarity of products. Both plaintiff and defendants offer youth footballprograms, but that

is where the similarity ends. As already said, there is a very significant difference between a house

league – one where, as plaintiffs say, anyone can play – and a traveling team. A traveling team like

15
defendants plays other traveling teams form other communities. Places on the team are not

guaranteed, tryouts are competitive. The difference issummed up in that the scene from “Remember

the Titans” where Denzel Washington explains to his young charges that, at this level, “football . .

. [isn’t] fun anymore, not even a little bit.” While plaintiff’s presentation attempts to disguise this

very salient distinction by suggesting it still offers a travel tackle football team, that’s just not true.

The parties offer two very different things and their participants have two very different expectations

and experiences. The similarity of products – they aren’t similar at all – weighs against an injunction.

Area and Manner of Concurrent Use.The defendants’ programis, as alreadyindicated,farreaching, playing teams from the Wisconsin border through Northern Illinois and over the Indiana

border. Plaintiff’s program is limited to Park Ridge and, perhaps, a couple of neighboring

communities but, again, plaintiff’s submissions are sketchy on that point. Area and manner of

concurrent use are sufficiently different to weigh against an injunction.

Degree of Care Used by Consumers. Plaintiff’s protestationsto the contrary aside, parents

of youth football players are likely to employ a high level of discernment in deciding whether their

sons play in a house league or on a traveling team. That these are two very different levels of

competitiveness and commitment is very likely well known to parents. When one adds in the

additional considerations parents must engage in now that we know so muchmore about football and

the dangers of Chronic Traumatic Encephalopathy (CTE), this would seem to be a group of

consumers that goes through a great deal of mulling before making such a significant decision

regarding their children. One would hope so, anyway. As such, it seems most parents would likely

know the difference between a competitive traveling team and a fun house league team; parents of

potential football players would definitely know. The parents who sent emails to plaintiff’s Mr.

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Hoffman had no intention of ever signing their sons up for a house league or a flag football league.

They wanted tackle football for their boys; they wanted the team that practiced in Indiana in order

to avoid the Covid-19 safeguards Illinois has in place. One might question their judgment, but it

cannot be said that they don’t care which product they are signing their sons up for.

Strength of Mark. The ‘strength’ of a trademark refers to the mark's propensity to identify

the products or services sold as emanating from a particular source. Sorensen v. WD-40 Co., 792

F.3d 712, 731 (7th Cir. 2015); CAE, 267 F.3d at 684. A mark's strength ordinarily corresponds to

its economic and marketing strength. Sorensen v. WD-40 Co., 792 F.3d 712, 731 (7th Cir. 2015);

AutoZone, 543 F.3d at 933. Plaintiff claims that Park Ridge Falcons has been used by Plaintiff in

connection with organized youth programs for over 52 years, has been recognized as one of the top

youth footballprogramsin the State ofIllinois, won severalyouth footballleague championships, and

attracted thousands of volunteers, coaches, athletes from the area. (Toulon Dec. ¶¶ 5-8). But what

doesthe “Falcons” mark actually mean to the plaintiff’s – and defendants’ – consumers? There is no

evidence of what the mark means or what people associate it with. There is no evidence that parents

associate “Falcons” with anything in particular, as opposed to, perhaps, Park Ridge football. There

are parents who want their kids to play a fun, participatory brand of football (plaintiff’s current

program) and parents who want their boys to play a highly competitive tackle on a traveling team (a

program defendants offer but plaintiff no longer does).

Actual Confusion. While a plaintiff does not have to prove this element with evidence of

actual confusion, it must provide some type of evidence. Barbecue Marx, Inc. v. 551 Ogden, Inc.,

235 F.3d 1041, 1045 (7th Cir. 2000). Similarity of the marks is not enough to demonstrate this

factor. “[W]e are concerned here with evidence of actual confusion, not a mere risk of confusion,

17
and we find no such evidence in the record. The similarity of the two marks is a separate

consideration in our analysis, and although it does create a risk of confusion, it does not constitute

evidence of actual confusion.” Eli Lilly & Co. v. Nat. Answers, Inc., 233 F.3d 456, 465 (7th Cir.

2000); see also Libman Co. v. Vining Industries, Inc., 69 F.3d 1360, 1363 (7th Cir.1995) (“But our

point is only that a finding of likely confusion can no more be based on pure conjecture or a fetching

narrative alone than any other finding on an issue on which the proponent bears the burden of

proof.”).

There is some evidence of actual confusion here, but given the context, it is not terribly

dispositive. First, there are the emails from Mr. Colleran’s wife, and the story from Mr. Thillens. It

has to be said, that given the context, they aren’t terribly convincing. One of Mrs. Colleran’s emails

is from the Maine Eagles, which is an organization she is a member of. ( Purcell Aff., ¶ 16). The

other is from a friend. Obviously, such evidence would be stronger if it were to come from outside

the PlaintiffDirectors’ clique. Asfor Mr. Thillens, there are obvious credibility issuesthere givenMr.

Sroka’s challenge to his story, as well as the possibility that defendants’ counsel was engaging in a

bit of trickeration by focusing on the date of the conversation.

Then we have the emails attached to plaintiff’s Reply Brief. These are from the hard-core,

travel tackle football parents, who are hoping to sign their sons up for the travel tackle program, a

program plaintiff is not offering. The parents don’t care if the program is called Falcons, Eagles,

Lions, Tigers, or Bears. There is no evidence of confusion stemming from anyone using the name,

“Falcons.” None! Indeed, the confusion, if any, comes from plaintiff being lessthan clear when it did

away with the travel team that parents were familiar with and folded it into a house league. Even

now, plaintiff’s website, which is not exactly crystal clear, explains things this way: 

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Falcons Travel Tackle Football. For the same price as paid in the fall, Tackle Football

players will actually get 2 seasons...Conditioning/ skill development and 7 on 7

intra-squad scrimmages in the fall and an actual tackle season (based on the IHSA

statementsthis week-in the spring) The expectation isthis will begin Tuesday, August

4th and end the last week in October.

https://cdn3.sportngin.com/attachments/document/5a80-2221543/Fall_Season_Announcement_0

8022020.pdf#_ga=2.267840078.1328407925.1596801742-2139499724.1596481108. Moreover,

if a parent clicked on the tab for information on plaintiff’s “Falcons Travel Football” program, they

would read that plaintiff was going through with a travel tackle football team:

8 games played on Friday nights, Saturdays, or Sundays beginning the first weekend

after Labor Day and ending the last week of October.

https://www.prfootball.com/page/show/4108298-falcons-travel-tackle-football. Obviously,that’snot

the case as plaintiff concedes. But one can certainly see the inspiration for the emails the plaintiff

claims show confusion caused by the defendants.

It can arguably be read that an “actualtackle season” wasto begin August 4

th

. And, according

to plaintiff’s submissions with gaps filled in by Mr. Purcell, plaintiff eliminated the Travel Tackle

Football team as the football parents knew it. That is what comes through in the emails to Mr.

Hoffman. Parents were looking for that team, and plaintiff’s website, seemingly, led them to the

restructured program.

In sum, if there was some confusion, it does not appear to have been driven by the name

“Falcons,” but rather by plaintiff’s elimination of a long-standing program, and the disruption that has

been visited upon just about every aspect of our lives by the coronavirus pandemic.

Bad faith/Intent to Palm Off. Again, and it cannot be stressed enough, there is a significant

difference between a 13-teamhouse league and a traveltackle footballteamplaying rivalsfromacross

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the northern quarter of the state and into neighboring Indiana. Defendants clearly don’t want to be

associated with Covid-19 safe in-house program, now offering only flag football competition.

Incredibly, given the threat posed by the virus, the defendants have gone so far as to move practices

60 miles away to Crown Point, Indiana – a state with lesser safety protocols. The parents who sign

their sons up for this program are not the parents who want their sons to play fun, flag football. The

name counts for nothing. It is the contents of the program that is everything. Indeed, asis clear from

the emails, the “Falcons” name means little or nothing to them. What is of utmost importance are

words like “travel” and “tackle.” Defendants would not want to palm off a flag football program.

IrreparableHarmand Balancing2 Given the foregoing discussion, the plaintiff’slikelihood

2 Traditionally, the Seventh Circuit has said that there is a presumption of irreparable harm in Lanham

Act cases. Promatek Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 813 (7th Cir. 2002). See, e.g., Redbox

Automated Retail, LLC v. Xpress Retail LLC, 310 F. Supp. 3d 949, 952 (N.D. Ill. 2018). However, in eBay

Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391–94 (2006), the Supreme Court called this presumption into

question in the patent context and rejected the categorical rule that a permanent injunction must issue upon a

showing of patent infringement. Id. at 394. The Seventh Circuit has not addressed whether eBay applies to

Lanham Act cases, but it has held that “eBay governs a motion for a preliminary injunction in a copyright

case.” Flava Works, Inc. v. Gunter, 689 F.3d 754, 755 (7th Cir. 2012).

Additionally, district courts within the Seventh Circuit, including this district, have expressed doubt

as to whether the Seventh Circuit would reach a different conclusion in cases falling under the Lanham Act.

See Ill. Tamale Co. v. El-Greg, Inc., 2019 WL 4395139, at *19 (N.D. Ill. Sept. 13, 2019) (“This Court sees

no reason why the Seventh Circuit would reach a different conclusion in a Lanham Act case.”); Market Track,

LLC v. Efficient Collaborative Retail Mktg., LLC, 2015 WL 3637740, at *23 (N.D. Ill. 2015); Nat'l Fin.

Partners Corp. v. Paycom Software, Inc., 2015 WL 3633987, at *12 (N.D. Ill. 2015); see also Ferrlng

Pharm., Inc. v. Watson Pharm., Inc., 765 F.3d 205, 216 (3

rdCir. 2014)(“there is no presumption of irreparable

harm afforded to parties seeking injunctive relief in Lanham Act cases.” ); Herb Reed Enters., LLC v. Fla.

Entm't Mgmt., Inc., 736 F.3d 1239, 1249 (9

th Cir. 2013)(requiring irreparable harm be demonstrated before

a preliminary injunction may issue in a trademark infringement action); North American Med. Corp. v. Axiom

Worldwide, Inc., 522 F.3d 1211, 1228 (11th Cir. 2008) (“Although eBay dealt with the Patent Act and with

permanent injunctive relief, a strong case can be made that eBay's holding necessarily extends to the grant of

preliminary injunctions under the Lanham Act.”); Audi AG v. D'Amato, 469 F.3d 534, 550 (6th Cir. 2006)

(applying eBay to a permanent injunction in a trademark infringement case without extensive analysis). As

such, and given the unchallenged notion that a preliminary injunction is extraordinary relief, we will not assume

irreparable harm here and require a demonstration of same from the plaintiff.

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of succeeding on the merits is not very good. As such, plaintiff must make a strong showing of

irreparable harm. Kraft Foods Grp, 735 F.3d at 740. Plaintiff has not done so. Plaintiffs certainly

did not act as though they will suffer irreparable harm. As already noted, they waited three months

to move for an injunction. It is not as though they needed that time to comb the Northwest Suburbs

for evidence. Their affidavits are strictlyin-house,frommembers oftheir board. They are augmented

by nothing more than a couple of emails to one of the board member’s wives, a handful of emails to

another board member, screenshots, and a newspaper article. This was not an extensive canvassing

of the community for evidence.

When, a day after plaintiffs filed, Judge Guzman referred their motion for a report and

recommendation, plaintiffs did not object or give Judge Guzman any indication that the additional

time before the motion would be resolved – at the very least, over a month pursuant to the timeframe

set out in least a month – was of any significance. That was June 24th. The last day of sign-up for

football was August 1

st

. Given the inevitable briefing schedule, plus the addition of an extra month

of delay resulting froma referralfor a Report and Recommendation, Fed.R.Civ.P. 72(b)(2), and then

subsequent de novo review, there would be, and is, no way plaintiffs could avoid their alleged

“irreparable harm.” [Dkt. #42-1, at 13-14].

3

Judge Guzman clearly thought little of plaintiff’s claim,

3

Internal Operating Procedure 14 allows for the referral of motions for preliminary injunctions to

magistrate judges for reports and recommendations. As noted, Fed.R.Civ.P. 72(b)(2)sets out a 28-day briefing

schedule for objections and responses to reports and recommendations, only then followed by de novo review

of the motion and those briefs by the referring district court judge. Even if a TRO is in place – notably,

plaintiff did not seek one here, which further detracts from its claim of irreparable harm – it would expire in

28 days, Fed.R.Civ.P. 65(b)(2); H-D Michigan, LLC v. Hellenic Duty Free Shops S.A., 694 F.3d 827, 843–44

(7th Cir. 2012), before the district court judge could rule on the report and recommendation and, if finding for

the movant, prevent the claimed irreparable harm. As such, a decision to refer such a motion under Rule 72(b)

is tantamount to a finding that there will be no irreparable harm or, at least, an indication that the district court

judge does not think much of the movant’s case for irreparable harm.

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and I have to agree.

Certainly, delay does not support an attorney’s claim that there is some sort of impending

irreparable harm or an emergency of any sort. That’s just common sense, as court after court has

found. See, e.g., Shaffer v. Globe Prot., Inc., 721 F.2d 1121, 1123 (7th Cir. 1983)(two month delay

before requesting injunctive reliefwas “inconsistent with a claim of irreparable injury.”); Wreal, LLC

v. Amazon.com, Inc., 840 F.3d 1244, 1248 (11th Cir. 2016); Citibank, N.A. v. Citytrust, 756 F.2d

273, 276 (2nd Cir. 1985)(“Delay in seeking enforcement of those rights, however, tends to indicate

at least a reduced need forsuch drastic,speedy action”); Arjo, Inc. v. Handicare USA, Inc., 2018 WL

5298527, at *9 (N.D. Ill. 2018); Traffic Tech Inc. v. Kreiter, 2015 WL 9259544, at *17 (N.D. Ill.

2015); Stokley-Van Camp, Inc. v. Coca-Cola Co., 1987 WL 6300, at *3 (N.D. Ill. 1987) (“[T]he fact

that [the plaintiff] waited three months indicates a lack of a need for the extraordinary remedy of a

preliminary injunction.”). The three-month wait, combined with the additional, automatic delay

occasioned by Judge Guzman’s referral – a delay plaintiffs made no objection to – undermines

plaintiffs’ claim of impending irreparable harm.

And we use the phrase “impending irreparable harm”advisedly. The extraordinary remedy

of a preliminary injunction is designed to protect against future harm, not, harm that has already

passed. Turnell v. CentiMark Corp., 796 F.3d 656, 662 (7th Cir. 2015)(movant must show that

“absent preliminary injunctive relief, he will suffer irreparable harm in the interim prior to a final

resolution . . . .” (emphasis added)); Traffic Tech, 2015 WL 9259544, at *17(“Even assuming that

those emails contained trade secrets, and even assuming that the harm stemming from the

dissemination of those trade secrets was irreparable, there is no plausible allegation as to how any

informationinthose emails—sent approximately17 months ago—continuesto inflict irreparableharm

22
upon Plaintiff. In a phrase, the damage is done.”); Square D Co. v. Van Handel, 2005 WL 2076720,

at *8 (E.D. Wis. 2005)(“. . . the amount of water now under the bridge counsels against a finding of

irreparable harm. If[defendant] violated the Trade Secrets Act, the damage has already been done.”);

iFreedom Direct Corp. v. McCormick, 2016 WL 9049647, at *4 (C.D. Cal. 2016)(“Plaintiff‘has not

shown why issuing a preliminary injunction now would prevent any irreparable harm beyond the

damage already done.’. . . These considerations weigh against a finding of irreparable harm.”);

Innospan Corp. v. Intuit, Inc., 2010 WL5157157, at *2 (N.D. Cal. 2010)(plaintiff “waited to request

preliminary relief until after it already had suffered the bulk ofits alleged harm, and . . . has not shown

why issuing a preliminary injunction now would prevent any irreparable harm beyond the damage

already done.”); Alvarez v. City of New York, 2 F. Supp. 2d 509, 514 n.5, 514-15 (S.D.N.Y. 1998)

(rejecting irreparable harm to reputation where the fact of investigation was already publicized, so

“any ‘damage’ [wa]s already done”). The Park Ridge parents who weighed the risks of football for

theirsons have already signed their boys up for plaintiff’s house league or defendant’straveling team.

The damage – or confusion – if there was any, is done.

As the plaintiff does not appear to have much likelihood of success and there is no or little 

threat of irreparable harm, no balancing of harms needs to be done. Proft v. Raoul, 944 F.3d 686,

693 (7th Cir. 2019); Eli Lilly & Co. v. Arla Foods, Inc., 893 F.3d 375, 381 (7th Cir. 2018). But it

hasto be said that there appearsto be little harmon eitherside. For example, plaintiffsaysit will lose

donations to its programs if defendants are not enjoined from using the name “Falcons.” Plaintiff

provides no evidence of this – most likely because if there is a loss of donations, it is because plaintiff

eliminated a program60-80 parents want their sons to participate in. Plaintiff claims that defendant

practicing outside Illinois to avoid Covid-19 safeguards somehow damages its reputation. But that

23
conclusion is based on nothing but conjecture and the supposition that the parents of aspiring football

players would, in fact, be offended by taking steps that would allow their sons to play football –

which, after all, isthe very thing desired by the parents of enrollees. But, again, it’srather clear from

even plaintiff’ssubmissionsthat the consuming public is one type of parent or another. On the other

side, defendants claim to have spent approximately $10,000 to $15,000 in the marketing,

advertising, and promotion of the league under the Park Ridge Travel Falcons mark. They don’t

say on what or how. But it would not seem terribly harmful to operate under a different name or,

more obviously, operate under a different name from the beginning. Using the same name was, to be

frank, the height of laziness. We can’t say the balance of harm goes either way, which shedslight on

the real importance of the issues we are actually dealing with here. In other words, this whole thing

is a bit of a scrimmage in a teacup.

FINAL SCORE

For the foregoing reasons, it is recommended that the plaintiff’s Motion for a Preliminary

Injunction [Dkt. #42] be denied.

RESPECTFULLY SUBMITTED,

UNITED STATES MAGISTRATE JUDGE

DATE: 8/20/20

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The parties have 14 days in which to object – and 14 further days in which to respond to any

objections – and trigger a de novo review ofthe foregoing issues and findings; the parties are entitled

to a clear error review in any event. Fed. R. Civ. P. 72(b)(3); White v. Sloop, 772 F. App'x 334, 337

(7th Cir. 2019); see also Mendez v. Republic Bank, 725 F.3d 651, 661 (7th Cir. 2013)(“De novo

review requires the district judge to decide the case based on an independent review of the evidence

and argumentswithout giving anypresumptive weight to the magistrate judge's conclusion.”). Failure

to object within the fourteen days results in a waiver. United States v. Gibson, 958 F.3d 661, 663

(7th Cir. 2020); Gabb v. Wexford Health Sources, Inc., 945 F.3d 1027, 1033 (7th Cir. 2019).

25