i

UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION

DATA MANAGEMENT ASSOCIATION 

INTERNATIONAL LLC,

Plaintiff,

v.

ENTERPRISE WAREHOUSING 

SOLUTIONS, INC., d/b/a EWSOLUTIONS,

Defendant.

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CASE NO. 1:20-cv-4711

Judge: Weisman

Magistrate Judge: _______________

DATA MANAGEMENT ASSOCIATION INTERNATIONAL LLC’S BRIEF IN 

SUPPORT OF MOTION FOR PRELIMINARY INJUNCTION

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TABLE OF CONTENTS

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

FACTUAL BACKGROUND......................................................................................................... 1

A. DAMA-I and Its Trademarks.................................................................................. 1

B. EWS and Its Illicit Conduct.................................................................................... 3

ARGUMENT.................................................................................................................................. 4

A. Applicable Legal Standards.................................................................................... 4

B. All Factors Considered in Granting Injunctive Relief Favor DAMA-I.................. 7

1. DAMA-I Is Likely to Prevail on Its Trademark Infringement Claims................... 7

2. DAMA-I Will Continue to Suffer Irreparable Harm Absent Relief..................... 13

3. The Balance of Equities Favors a Preliminary Injunction.................................... 14

4. A Preliminary Injunction Advances the Public Interest ....................................... 15

C. No Bond Is Necessary........................................................................................... 15

CONCLUSION............................................................................................................................. 15

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TABLE OF AUTHORITIES

Cases

B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015) ............................................... 5

Caster Connection, Inc. v. Colson Grp. Holdings, LLC, No. 20 C 1598, 2020 WL 2745982 (N.D. 

Ill. May 27, 2020) ....................................................................................................................... 6

Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D. Va. 2001)................... 8

Hokto Kinoko Co. v. Concord Farms, Inc., 738 F.3d 1085 (9th Cir. 2013)................................. 10

Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079 (7th Cir. 1988)....................... 5

Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936 (9th Cir. 2002)........................... 9, 10

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 328 F.3d 1061 (9th Cir. 2003)..... 6, 7

Life After Hate, Inc. v. Free Radicals Project, Inc., 410 F.Supp.3d 891 (N.D. Ill. 2019).............. 5

Luxottica Grp. S.p.A. v. Light in the Box Ltd., No. 16-CV-05314, 2016 WL 6092636 (N.D. Ill. Oct. 

19, 2016) ................................................................................................................................... 15

Matal v. Tam, 137 S. Ct. 1744, 198 L. Ed. 2d 366 (2017).............................................................. 5

Meridian Mut. Ins. Co. v. Meridian Ins. Grp., Inc., 128 F.3d 1111 (7th Cir. 1997) .................. 5, 7

Munaf v. Geren, 553 U.S. 674 (2008)............................................................................................. 4

Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001)................................................... 6

Prof'l Towing & Recovery Operators of Ill. v. Box, No. 08 C 4096, 2008 WL 5211192 (N.D. Ill. 

Dec. 11, 2008)........................................................................................................................... 15

Qualitas Mfg. Inc. v. R. Lang Co., No. 09 C 2255, 2010 WL 11658336 (N.D. Ill. May 3, 2010). 9

Saeilo Enters., Inc. v. Alphonse Capone Enters., Inc., No. 13 CV 2306, 2014 WL 6883085 (N.D. 

Ill. Dec. 5, 2014) ................................................................................................................. 13, 15

Slep-Tone Entm’t Corp. v. Coyne, 41 F. Supp. 3d 707 (N.D. Ill. 2014)............................. 6, 11, 12

Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426 (9th Cir. 2017)........................... 10

Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010)................................. 13

Uncommon, LLC v. Spigen, Inc., 926 F.3d 409 (7th Cir. 2019)..................................................... 5

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USA-Halal Chamber of Commerce, Inc. v. Best Choice Meats, Inc., 402 F. Supp. 3d 427 (N.D. Ill. 

2019) ......................................................................................................................................... 14

Verizon California Inc. v. Lead Networks Domains Private Ltd., No. CV 09-613-ABC (CWX), 

2009 WL 10700112 (C.D. Cal. Feb. 17, 2009)........................................................................... 8

Winter v. Nat. Res. Def. Council, Inc. 555 U.S. 7 (2008)........................................................... 4, 7

Statutes

15 U.S.C. § 1057(b)........................................................................................................................ 5

15 U.S.C. § 1065............................................................................................................................. 5

15 U.S.C. § 1072............................................................................................................................. 5

15 U.S.C. § 1115(b).................................................................................................................... 5, 8

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INTRODUCTION

This is a case of trademark infringement and false advertising/unfair competition. Plaintiff 

Data Management Association International LLC (“DAMA-I”) is a not-for-profit vendorindependent global association of technical and business professionals dedicated to advancing 

concepts and practices relating to the field of information and data management. Defendant 

Enterprise Warehousing Solutions, Inc., d/b/a EWSolutions (“EWS”) is a for-profit enterprise 

offering services in that same field of information and data management who recently began 

advertising an online study resource for those individuals preparing to take the Data Management 

Fundamentals Exam. DAMA-I takes no issue with EWS offering such a resource, but it does take 

serious issue with—and is sustaining continuing irreparable harm as a result of—EWS’ use of 

DAMA-I’s federally registered trademarks to promote its course. Specifically, EWS’ use of 

DAMA-I’s trademarks has caused and continues to cause confusion and perpetuates the false 

impression that EWS’ exam prep course is endorsed by, licensed by, approved by, or otherwise 

affiliated with DAMA-I. Further, EWS persists in its illicit use of DAMA-I’s trademarks despite 

being specifically instructed to cease such use.

DAMA-I moves under Rule 65(a) for a preliminary injunction barring EWS, pending trial, 

from continuing to use any federally registered trademark identified in the accompanying 

Complaint, Dkt. No. 1, or any confusingly similar modification of any such trademark. 

FACTUAL BACKGROUND

A. DAMA-I and Its Trademarks

DAMA-I is an all-volunteer organization that traces its roots to its first chapter formation 

in 1980 and its first election of a board of directors in 1988. DAMA International History, 

dama.org/content/dama-international-history-0 (“DAMA-I History”). Since those formative years, 

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DAMA-I has been consistently growing, dedicating itself to the promotion, understanding, 

development, and practice of managing data and information as key enterprise assets of any 

organization. Mission, Vision, Purpose and Goals, https://dama.org/content/mission-visionpurpose-and-goals. Among its goals has been to “influence practices, education and certification 

in the information and data management profession.” Id. And as part of that mission, DAMA-I 

worked to create a standardized data management certification program, which simultaneously 

provides data management professionals an opportunity to achieve professional growth while 

assuring organizations that its personnel are qualified to manage their most important strategic 

assets. Certified Data Management Professionals, https://cdmp.info/.

Consistent with efforts to promote and educate the data management profession, DAMA-I 

has also taken steps to secure its substantial investments of time and resources to that end.

Specifically, DAMA-I has developed and maintained its own intellectual property portfolio, which 

includes but is not limited to a number of federally registered trademarks. Among them, and at 

issue in this matter, are the following Marks-at-Issue (“Marks”):

• “DAMA INTERNATIONAL” – The subject of DAMA-I’s U.S. Registration No. 2,649,116, 

which DAMA-I has been using in interstate commerce since at least 2001;

• – The subject of DAMA-I’s U.S. Registration No. 2,649,117, which 

 DAMA-I has been using in interstate commerce since at least 2001;

• “DAMA” – The subject of DAMA-I’s U.S. Registration No. 2,671,677, which DAMA-I has 

been using in interstate commerce since at least 2001;

• “CERTIFIED DATA MANAGEMENT PROFESSIONAL” – The subject of DAMA-I’s U.S. 

Registration No. 3,816,444, which DAMA-I has been using in interstate commerce since at 

least 2010; and

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• “CDMP” – The subject of DAMA-I’s U.S. Registration No. 3,816,445, which DAMA-I has 

been using in interstate commerce since at least 2010.

(See Complaint, Dkt. No. 1, ¶¶ 8-12.) The Marks have become incontestable. (Id.)

B. EWS and Its Illicit Conduct

As described in DAMA-I’s Complaint, EWS has been engaging in a scheme to willfully 

deceive the public into believing that an online prep course it offers for the Data Management 

Fundamentals Exam—the first exam required to become a certified data management 

professional—is endorsed by, licensed by, approved by, or otherwise affiliated with DAMA-I. One 

aspect of that scheme is predicated on misleading representations made through social media. For 

example, EWS posted on LinkedIn an online advertisement describing its “new, online, ondemand, college-level, video course [as the] DAMA CDMP® Data Management Fundamentals 

exam preparation course.” (Complaint, Dkt. No. 1, ¶ 14.) That same advertisement contained the 

® identifier to expressly identify “CDMP” as a federally registered trademark no less than four 

times, but it made no mention that the CDMP mark belonged to DAMA-I rather than EWS, it had 

no disclaimer that EWS’ use of the mark did not connote any type of affiliation, approval, or 

association between DAMA-I and EWS, and it made no attempt to clarify a critical distinction—

while DAMA-I is responsible for administering the Data Management Fundamentals exam, it has

no ties to EWS’ prep course. (See id. ¶¶ 14-19.)

Another aspect of EWS’ fraudulent scheme is predicated on cybersquatting. Specifically, 

EWS has registered and makes use of the URL https://damacdmp.com—a URL comprised of two 

federally registered trademarks belonging to DAMA-I—to promote its online prep course 

referenced above. (Id. ¶ 17.) Like its social media efforts, EWS’ website makes liberal use of 

DAMA-I’s Marks, employs the ® identifier without disclaimer, explanation, or caveat of any kind, 

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and misleadingly refers to its “prep course” as the “DAMA CDMP® Fundamentals Exam Prep 

Course.” DAMA CDMP® Data Management Fundamentals Exam Prep Course, EWSolutions, 

Error! Hyperlink reference not valid.https://damacdmp.com/. EWS even uses shorthand to refer 

to its online resource as “The DAMA CDMP prep course.” Id.

A third aspect of EWS’ fraudulent scheme is predicated on misleading representations 

found on its website. Most notably, and by no means limiting, EWS prominently displays on

its website DAMA-I’s stylized mark to falsely convey that EWS received an award 

or recognition from DAMA-I. (Complaint, Dkt. No. 1, ¶ 18.) EWS in fact 

has never received an award or recognition from DAMA-I. (Id. ¶ 19.)

Prior to initiating suit, DAMA-I received correspondence from EWS inviting DAMA-I to 

partner with EWS to offer the online exam prep course referenced above. Not only did DAMA-I 

decline EWS’ offer, but it also specifically requested that EWS discontinue its unauthorized use 

of the Marks, that EWS take corrective action to address any customer confusion already caused 

by its online prep course advertisements, and transfer the damacdmp.com domain name to DAMAI. (Id. ¶ 22.) EWS refused, and it continues its illicit use of the Marks to this day.

ARGUMENT

A. Applicable Legal Standards

“A [party] seeking a preliminary injunction must establish that he is likely to succeed on 

the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the 

balance of equities tips in his favor, and that an injunction is in the public interest.” Winter v. Nat.

Res. Def. Council, Inc. 555 U.S. 7, 20 (2008) (citing Munaf v. Geren, 553 U.S. 674, 689-90 (2008).)

“In the preliminary injunction context, a ‘likelihood of success’ exists if the party seeking 

injunctive relief shows that it has a ‘better than negligible’ chance of succeeding on the merits.”

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Meridian Mut. Ins. Co. v. Meridian Ins. Grp., Inc., 128 F.3d 1111, 1114-15 (7th Cir. 1997) (quoting 

Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1084 (7th Cir. 1988)).

In a trademark infringement dispute, a “movant shows a likelihood of success by 

establishing that (1) he has a protectable mark, and (2) that a ‘likelihood of confusion’ exists 

between the marks or products of the parties.” Meridian Mut. Ins. Co., 128 F.3d at 1115.

Regarding the former, “[f]ederal registration . . . ‘confers important legal rights and benefits 

on trademark owners who register their marks.’” Matal v. Tam, 137 S. Ct. 1744, 1753, 198 L. Ed. 

2d 366 (2017) (quoting B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 142 (2015)).

“Registration, for instance, serves as ‘constructive notice of the registrant’s claim of ownership’ 

of the mark.” B & B Hardware, 575 U.S. at 142 (quoting 15 U.S.C. § 1072). “It also is ‘prima 

facie evidence of the validity of the registered mark and of the registration of the mark, of the 

owner’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in 

commerce on or in connection with the goods or services specified in the certificate.’” Id. at 142-

43 (quoting 15 U.S.C. § 1057(b)). “And once a mark has been registered for five years, it can 

become ‘incontestable.’” Id. at 143 (quoting 15 U.S.C. §§ 1065, 1115(b)). An incontestable 

registration is “conclusive evidence of the validity of the registered mark and of the registration of 

the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use 

the registered mark in commerce.” 15 U.S.C. § 1115(b).

As to the latter, the existence of a likelihood of confusion hinges on “whether consumers 

who might use either product would likely attribute them to a single source.” Life After Hate, Inc. 

v. Free Radicals Project, Inc., 410 F.Supp.3d 891, 907 (N.D. Ill. 2019) (citing Uncommon, LLC 

v. Spigen, Inc., 926 F.3d 409, 425 (7th Cir. 2019)). Where a defendant is using a mark without 

authorization and claims a fair use defense, this Court has recognized that such a defense may take 

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one of two forms: “classic fair use” or “nominative fair use.” Slep-Tone Entm’t Corp. v. Coyne, 41 

F. Supp. 3d 707, 717 (N.D. Ill. 2014) (citing Ninth Circuit precedent with respect to nominative 

fair use because “[t]he Seventh Circuit has not addressed the nominative fair use defense”).

“Classic fair use is that in which the alleged infringer has used the trademark holder’s mark only

to describe his own product, and not at all to describe the trademark holder’s product . . . ., 

[whereas] nominative fair use occurs when the alleged infringer uses the trademark holder’s mark 

to describe the trademark holder’s product, even if the alleged infringer’s ultimate goal is to 

describe his own product.” Id. (alteration in original) (quoting KP Permanent Make-Up, Inc. v. 

Lasting Impression I, Inc., 328 F.3d 1061, 1071-72 (9th Cir. 2003), vacated on other grounds, 543 

U.S. 111 (2004)).

In instances where “classic fair use” is raised, the “Seventh Circuit has identified seven 

factors that comprise the likelihood of confusion analysis: ‘(1) similarity between the mark 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 the plaintiff’s mark; (6) 

actual confusion; and (7) intent of the defendant to ‘palm off’ [its] product as that of another.’”

Caster Connection, Inc. v. Colson Grp. Holdings, LLC, No. 20 C 1598, 2020 WL 2745982, at *4 

(N.D. Ill. May 27, 2020) (alteration in original) (quoting Packman v. Chicago Tribune Co., 267 

F.3d 628, 643 (7th Cir. 2001)). “No one factor is determinative . . . , however, the similarity of the 

marks, the defendant’s intent, and actual confusion have been found to be particularly important.”

Id.

Where “nominative fair use” is at issue, the Seventh Circuit appears to have remained silent 

on the defense, but Ninth Circuit case law is instructive. See Slep-Tone Entm’t Corp., 41 F. Supp. 

3d at 717 (reciting Ninth Circuit’s treatment of the defense). “To successfully assert the nominative 

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fair use defense, the alleged infringer must show that: (1) the product in question is not readily 

identifiable without use of the trademark; (2) only so much of the mark is used as reasonably 

necessary to identify the product; and (3) the user of the mark did nothing that would suggest 

sponsorship by the trademark holder.” Id. (quoting KP Permanent Make-Up, Inc., 328 F.3d at 

1072). “‘When analyzing nominative fair use, it is not necessary to address likelihood of confusion 

because the nominative fair use analysis replaces the likelihood of confusion analysis,’ while 

‘when the classic fair use defense is raised, it is still necessary to analyze likelihood of confusion.’”

Id. (quoting KP Permanent Make-Up, Inc., 328 F.3d at 1072).

B. All Factors Considered in Granting Injunctive Relief Favor DAMA-I

Based on the facts as alleged in its Complaint and as set forth in relevant part herein, 

DAMA-I meets its burden to show why preliminary injunctive relief is both warranted and needed 

against EWS. Specifically, DAMA-I will show that (1) it is likely to succeed on the merits of its 

trademark infringement claims; (2) it is likely to suffer irreparable harm without preliminary 

injunctive relief; (3) the balance of equities tips in its favor; and (4) the injunction DAMA-I seeks 

is in the public interest. See Winter, 555 U.S. at 20 (setting forth the four-factor test relevant to 

preliminary injunctive relief inquiries).

1. DAMA-I Is Likely to Prevail on Its Trademark Infringement Claims

DAMA-I is likely to succeed on its claims in Counts I and II of the Complaint for trademark 

infringement under both the Lanham Act and Common law. To prevail on its trademark 

infringement under the Lanham Act, DAMA-I must show (1) that it has a protected ownership 

interest in the marks; and (2) that EWS’ use of the mark is likely to cause consumer confusion.

Meridian Mut. Ins. Co., 128 F.3d at 1114. DAMA-I will show both.

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DAMA-I holds incontestable registrations for each of the Marks. (Complaint, Dkt. No. 1, 

¶¶ 8-12.) An incontestable registration is “conclusive evidence of the validity of the registered 

mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the 

registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. § 1115(b). DAMAI will therefore readily demonstrate its protected ownership interest in its Marks.

DAMA-I is also likely to prove that EWS’ continued unauthorized use of the Marks

constitutes infringement under federal law. DAMA-I alleges and can already prove that EWS is 

using the Marks without authorization. And even if either nominative or classic fair use is available 

for some of EWS’ uses—and they are not—neither is available to EWS for all its uses.

a. EWS’ damacdmp.com domain name is infringing

EWS is accused of trademark infringement in part because of its registration and use of the 

domain name, “damacdmp.com.” (See generally Complaint, Dkt. No. 1.) The domain name is 

simply a combination of two incontestable marks owned and used by DAMA-I: “DAMA” and 

“CDMP.” (See id. ¶ 17.) As such, a consumer naturally would expect damacdmp.com to be 

controlled and operated by DAMA-I, not EWS. EWS’ use of the domain unavoidably results in 

initial interest confusion. See, e.g., Verizon California Inc. v. Lead Networks Domains Private Ltd., 

No. CV 09-613-ABC (CWX), 2009 WL 10700112, at *5 (C.D. Cal. Feb. 17, 2009). In Verizon, 

the court explained, “Domain names which merely append a generic word to a distinctive or 

famous mark are also confusingly similar to the mark upon which they prey.” Id. (citing Harrods 

Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 667-68 (E.D. Va. 2001), aff’d in part, 

rev’d in part, 302 F.3d 214 (4th Cir. 2002) (domain names adding descriptive or generic terms like 

“bank,” “financial,” and “shopping” to the mark HARRODS held confusingly similar)). Here, 

EWS is not merely adding a generic word to a distinctive and incontestable mark, it is combining 

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two of DAMA-I’s Marks together. Such tactics result in initial interest confusion effectively as a 

matter of law. Further, an assessment of the most relevant likelihood-of-infringement factors 

confirms as much. See Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 942 (9th Cir. 

2002) (identifying the most important factors to consider to assess initial interest confusion “in the 

context of the Web, . . . are (1) similarity of the marks, (2) the relatedness of the goods or services, 

and (3) the parties’ simultaneous use of the Web as a marketing channel”) (case cited with approval 

by Qualitas Mfg. Inc. v. R. Lang Co., No. 09 C 2255, 2010 WL 11658336, at *2 (N.D. Ill. May 3, 

2010)). The first factor, similarity of the marks, weighs heavily in favor of initial interest 

confusion.

The second factor, relatedness of the goods or services, also weighs heavily in favor of 

initial interest confusion. EWS already admits to a direct relationship between the goods and 

services offered by the parties. (See Complaint Exhibit 2.) Specifically, DAMA-I administers 

various online exams for certification purposes, including the Data Management Fundamentals 

Exam, while EWS offers an online prep course for that exam. (Id.) Moreover, the parties’ products 

are not just related, they are directly competitive. In addition to administering the exam, DAMAI has already partnered with a different third party, Wilshire Conferences, Inc. d/b/a 

DATAVERSITY to offer online training for that same exam and certification process. (See

Partners, https://dama.org/content/partners (identifying DATAVERSITY as a DAMA-I partner); 

see also DMBoK and CDMP Preparation Learning Plan, https://bit.ly/2MM8l9g (specifically 

noting, “[t]he DAMA International-endorsed Learning Plan was developed by DATAVERSITY, 

DAMA International, and Christopher Bradley, the VP of Professional Development at DAMA”).

The relatedness of the goods and services offered by both Plaintiff and Defendant, then, supports

a conclusion of initial interest confusion.

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The third factor, the parties’ simultaneous use of the Web as a marketing channel, cannot 

be reasonably disputed. As noted above, both parties are using the internet as a marketing channel, 

which naturally follows given that the product at issue is an online exam prep course.

Where, as here, these factors, “or internet trinity, suggests confusion is . . . likely, the other 

factors must weigh strongly against a likelihood of confusion to avoid the finding of infringement.”

Interstellar Starship Servs., 304 F.3d at 942 (alteration in original) (internal quotations omitted).

EWS will be unable to show any remaining factor sufficiently in its favor, let alone all of them.

For instance, the strength of Plaintiff’s Marks favors a likelihood of confusion, because the Marks 

at issue are incontestable. (Complaint, Dkt. No. 1, ¶¶ 8-12.) DAMA-I likewise has already obtained 

evidence of actual confusion, a fifth factor now strongly favoring a finding of infringement.

(Complaint, Dkt. No. 1, ¶ 24.) And still another factor favoring infringement relates to EWS’ intent

to ‘palm off’ its product as that of another—EWS selected the damacdmp.com domain name 

knowing that both halves of the domain name were registered trademarks belonging to DAMA-I.

(See generally Complaint, Dkt. No. 1; see also Stone Creek, Inc. v. Omnia Italian Design, Inc., 

875 F.3d 426, 434 (9th Cir. 2017) (citing Hokto Kinoko Co. v. Concord Farms, Inc., 738 F.3d 

1085, 1096 (9th Cir. 2013) to apply “a presumption of intent to deceive” where a party chooses “a 

designation with knowledge that it is another’s trademark).) Under these circumstances, DAMAI will more than likely prevail in establishing that EWS’ illicit use of its damacdmp.com domain 

name infringes DAMA-I’s trademarks.

b. EWS’ online advertisements infringe DAMA-I’s marks

In addition to likely proving its case with respect to EWS’ domain name selection and use, 

DAMA-I will also likely prove that EWS’ use of the Marks to advertise its online prep course for 

the Data Management Fundamentals Exam cannot constitute fair use so as to insulate it from 

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infringement. Indeed, whether it refers to its prep course more formally as the “DAMA CDMP® 

Fundamentals Exam Prep Course,” or whether it employs shorthand to call it “the DAMA CDMP 

prep course,” either reference is too confusing to qualify as fair use. (Complaint, Dkt. No. 1, ¶¶ 

17.) Additionally, under no circumstance does EWS’ appropriation of DAMA-I’s stylized graphic, 

confusingly resembling DAMA-I’s incontestable stylized mark, qualify for fair use of any kind.

(Id. ¶¶ 31, 41.)

Taking EWS’ product descriptions at face value, EWS uses the various Marks to describe 

its own online exam prep course. (Id. ¶¶ 14, 17 (labeling its prep course as the “DAMA CDMP® 

Fundamentals Exam Prep Course” and “The DAMA CDMP prep course”).) Any “fair use” 

available to EWS under this circumstance would be limited to “classic fair use,” which would be 

evaluated by an assessment of the likelihood-of-confusion factors. Slep-Tone Entm’t Corp., 41 F. 

Supp. 3d at 717. As noted above in evaluating EWS’ improper domain name registration and use, 

however, at least six factors establish that EWS’ advertisements do not qualify as classic fair use.

Indeed, even where customers would be exercising the utmost care in selecting exam prep course 

to prepare for DAMA-I’s “Data Management Fundamentals Exam” (see cdmp.info/exams/ 

(providing the full formal name of the exam at issue and the opportunity to schedule its 

administration)), confusion would necessarily result—EWS is using the very same incontestable 

Marks, knowing they are registered marks belonging to DAMA-I, to describe its own version of 

an exam prep course through the same online marketing channels used by DAMA-I, where 

DAMA-I uses those online marketing channels to advertise both its related administration of the 

Data Management Fundamentals Exam as well as its own sponsored and competing exam prep 

course. The most educated consumers—including those within DAMA-I itself—have already been 

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confused into believing EWS’ course is affiliated with DAMA-I. (Complaint, Dkt. No. 1, ¶ 24.)

EWS’ use of the Marks cannot qualify as classic fair use. 

EWS fares no better in evaluating the availability of nominative fair use. Nominative fair 

use insulates a defendant’s use of another’s mark when three conditions are met: (1) the product 

in question is not readily identifiable without use of the trademark; (2) only so much of the mark 

is used as reasonably necessary to identify the product; and (3) the user of the mark did nothing 

that would suggest sponsorship by the trademark holder.” Slep-Tone Entm’t Corp., 41 F. Supp. 3d 

at 717. Here, EWS’ use of the Marks flouts each of these requisite conditions.

First, EWS’ advertisements for its online prep course have no need to use any of the Marks.

EWS’ online prep course is to prepare individuals to take the certification examination entitled, 

“Data Management Fundamentals Exam.” (See CDMP–Exams, https://cdmp.info/exams/.) EWS’ 

advertisements, however, mislabel the exam as the “DAMA CDMP® Fundamentals Exam,” and 

misleadingly refers to the exam in shorthand as “the CDMP®.” (See DAMA CDMP® 

Fundamentals Exam Prep Course, https://damacdmp.com.) More accurately, “the CDMP®” is not 

an exam, but rather a certification—it stands for CERTIFIED DATA MANAGEMENT 

PROFESSIONAL. One therefore does not “pass” the CDMP; one becomes a CDMP after passing 

the requisite examinations and satisfying the other criteria set forth by DAMA-I. (See id. (claiming 

that “Passing the CDMP® is difficult” and stating that “DAMA’s CDMP® Certification is the 

Gold Standard for Data Management Professionals”).) As such, EWS’ use of the Marks to describe 

DAMA-I’s products is not only unnecessary, but it is also inherently misleading and confusing.

Second, EWS uses the Marks far more than is reasonably necessary to identify DAMA-I’s 

examination or certification process. As noted above, the manner in which it uses the Marks is 

actually misleading, so its use of the Marks at all is not reasonably necessary per se. Further, even 

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if a single instance of EWS’ use of the Marks was done correctly and was arguably justifiable (e.g., 

“DAMA’s CDMP® Certification is the Gold Standard for Data Management Professionals), it 

does not justify EWS’ repeated use of the Marks throughout its advertisements, and it in no way 

justifies any need for EWS to incorporate confusingly similar and stylized DAMA-I graphics into 

its advertisements. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1181 (9th Cir. 2010)

(reasoning that the defendant “could adequately communicate their message without using the 

visual trappings of [plaintiff’s] brand”).

Third, and relatedly, EWS’ advertisements unequivocally and misleadingly suggest 

sponsorship or endorsement by DAMA. See Toyota Motor Sales, 610 F.3d at 1176 (“Consumers 

may reasonably infer sponsorship or endorsement if a company uses an unnecessary trademark or 

‘more’ of a mark than necessary.”) In this case, EWS makes repeated, gratuitous, and inherently 

misleading uses of the Marks, misusing the CDMP® mark as a misnomer for the DAMA-I’s Data 

Management Fundamentals Exam while incorporating prominently and needlessly DAMA-I’s 

stylized designs. Under these circumstances, DAMA-I will more than likely prevail in establishing 

that EWS’ unauthorized use of the Marks is not fair use of any kind.

2. DAMA-I Will Continue to Suffer Irreparable Harm Absent Relief

A preliminary injunction is justified and necessary in this circumstance because DAMA-I 

presumptively will continue to suffer irreparable harm absent the Court’s intervention. See Saeilo 

Enters., Inc. v. Alphonse Capone Enters., Inc., No. 13 CV 2306, 2014 WL 6883085, at *3 (N.D. 

Ill. Dec. 5, 2014) (“Irreparable harm is generally presumed in trademark infringement cases.”).

Even if the presumption of irreparable harm is not applied here, however, the harm inflicted by 

EWS’ illicit use of DAMA-I’s Marks is irreparable under any standard. Specifically, EWS’ use of 

the Marks to tout its own products having nothing to do with DAMA-I has caused DAMA-I to 

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lose control over its business reputation, which this Court recognizes as irreparable harm. USAHalal Chamber of Commerce, Inc. v. Best Choice Meats, Inc., 402 F. Supp. 3d 427, 437–38 (N.D. 

Ill. 2019) (“[T]he ‘most corrosive and irreparable harm [in] trademark infringement is the inability 

of the victim to control the nature and quality of the defendants’ goods.’”) (citation omitted)). 

As in USA-Halal, Defendant’s use of Plaintiff’s Marks here is without any authorization, 

supervision, or control. Further, an important element of DAMA-I’s reputation and growth has 

been its consistency in remaining “vendor-independent,” partnering deliberately with only select 

third parties so as to maintain its credibility as a resource available to all data management 

professionals worldwide. See Partners, https://dama.org/content/partners. Indeed, unlike the 

curriculum offered by DATAVERSITY which was specifically developed with the active 

involvement of DAMA-I, DAMA-I had no involvement in the development of EWS’ curriculum 

and therefore cannot vouch for the quality or comprehensiveness of the course. Students ultimately 

disappointed with EWS’ curriculum, absent injunctive relief, will necessarily and mistakenly hold 

DAMA-I responsible for their poor preparation for the Data Management Fundamentals Exam. A 

preliminary injunction in this circumstance is more than warranted.

3. The Balance of Equities Favors a Preliminary Injunction

The equities in this case strongly favor DAMA-I, which has invested considerable time 

and resources over the last 40 years in developing and maintaining its reputation as a not-for-profit 

global resource for data management professionals worldwide. See DAMA-I History. In contrast, 

EWS is a for-profit enterprise who is exploiting without authorization, the Marks for pure 

commercial gain. See generally Data Management Services, https://www.ewsolutions.com/. A 

balance of the equities favors issuance of a preliminary injunction here. Saeilo Enters., Inc., 2014 

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WL 6883085, at *4 (where court weighed harms in favor of plaintiff because a temporary 

suspension of Defendants’ sales could be remedied).

4. A Preliminary Injunction Advances the Public Interest

An injunction that “prevents consumer confusion” in trademark contexts “serves the 

public’s interest in not being deceived about the products they are purchasing.” Luxottica Grp. 

S.p.A. v. Light in the Box Ltd., No. 16-CV-05314, 2016 WL 6092636, at *9 (N.D. Ill. Oct. 19, 

2016). Here, EWS’ illicit use of the Marks is likely to confuse—and has already confused—

consumers, and even members of DAMA-I itself. A preliminary injunction is needed to protect the 

public interest from any further deceptive practices that EWS is continuing to perpetrate.

C. No Bond Is Necessary

As a not-for-profit, “all volunteer organization” (DAMA-I History), DAMA-I respectfully 

requests that the Court exercise its discretion to impose no bond for the issuance of the preliminary 

injunction, or that any amount set be minimal. Its ability to protect its reputation from commercial 

exploitation by unauthorized parties should not hinge on DAMA-I’s ability to pay a ransom 

extracted by EWS’ conduct. Further, DAMA-I’s high likelihood of success on the merits favors 

“minimal bond, or no bond at all.” Prof'l Towing & Recovery Operators of Ill. v. Box, No. 08 C 

4096, 2008 WL 5211192, at *20 (N.D. Ill. Dec. 11, 2008) (granting plaintiff’s request for a 

minimal bond based on high likelihood of success because a $1,000 bond requirement appeared

“to advance the purposes of Rule 65(c)” absent objection from defendant).

CONCLUSION

In light of the foregoing, DAMA-I respectfully requests that the Court grant DAMA-I’s 

Motion for Preliminary Injunction.

Dated this 11th day of August, 2020.

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Respectfully submitted, 

By:

/s/ Joseph M. Kuo

Joseph M. Kuo (ARDC 6216400)

SAUL EWING ARNSTEN & LEHR, LLP

161 N. Clark Street, Suite 4200

Chicago, IL 60601

Tel. (312) 876-7100 

Fax.: (312) 876-0288

joseph.kuo@saul.com

John D. Denkenberger, WSBA No. 25,907

(pro hac vice pending)

Brian F. McMahon, WSBA No. 45,739 (pro 

hac vice pending)

CHRISTENSEN O'CONNOR

JOHNSON KINDNESSPLLC

1201 Third Avenue

Suite 3600

Seattle, WA 98101

Telephone: 206.682.8100

Fax: 206.224.0779

john.denkenberger@cojk.com, 

brian.mcmahon@cojk.com, 

litdoc@cojk.com

Attorneys for Plaintiff DATA 

MANAGEMENT ASSOCIATION 

INTERNATIONAL LLC

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CERTIFICATE OF SERVICE

I hereby certify that on Tuesday, August 11, 2020, I electronically filed the foregoing 

with the Clerk of the Court using the CM/ECF system.

/s/ Joseph M. Kuo

Joseph M. Kuo

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