IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

BRITHRIC ENTERPRISES, LLC, et al., ) 

 ) 

 Plaintiffs, ) 

 ) No. 20-cv-04696 

 v. ) 

 ) Judge Andrea R. Wood 

BAY EQUITY LLC, ) 

 ) 

Defendant. ) 

MEMORANDUM OPINION AND ORDER 

Plaintiffs Brithric Enterprises, LLC and Brithric Enterprises Realty, LLC, doing business 

as BE Realty (together, “Brithric”), use their mark in connection with their residential real 

estate brokerage services. Defendant Bay Equity LLC (“Bay Equity”) offers mortgage brokerage 

services and recently started using its registered and marks, which Brithric contends 

infringe on its common law trademark. Brithric has brought this lawsuit for unfair competition 

pursuant to the Lanham Act, 15 U.S.C. § 1051 et seq., Uniform Deceptive Trade Practices Act 

(“UDTPA”), 815 ILCS 510/1 et seq., Illinois Consumer Fraud and Deceptive Business Practices 

Act (“ICFA”), 815 ILCS 505/1 et seq., and Illinois unfair competition laws. Now before the Court 

is Brithric’s motion for a preliminary injunction pursuant to Federal Rule of Civil Procedure 

65(a). (Dkt. No. 12.) Brithric seeks to enjoin Bay Equity’s continued use of the mark in 

connection with its mortgage brokerage business. For the reasons detailed below, Brithric’s 

motion is denied.

BACKGROUND 

Brithric Enterprises, LLC and Brithric Enterprises Realty, LLC are both Illinois limited 

liability companies with their principal places of business in Chicago, Illinois. (Compl. ¶¶ 5–6, 

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Dkt. No. 1.) Brithric began offering residential real estate brokerage services in 2012. (Decl. of 

Ian Carswell (“Carswell Decl.”) ¶ 10, Dkt. No. 44.) In May 2012, Brithric started using its 

 (“be realty”) mark, and in May 2014, it started using the (“be”) mark. (Id. ¶¶ 4–

5.) Brithric decided to register the “be realty” mark with the U.S. Patent and Trademark Office 

(“USPTO”) in early 2019. When Brithric still had not heard back regarding its trademark 

application in May 2020, it did some research and discovered that Bay Equity had trademarked 

several “be” marks already. Brithric filed this case on August 10, 2020 and moved for a 

preliminary injunction shortly thereafter. 

 Bay Equity was founded in California in 2007 and remains a California limited liability 

company with its principle place of business there. (Compl. ¶ 7; Def.’s Mem. in Opp’n, Ex. A, 

Decl. of Autumn Van Rooy (“Van Rooy Decl.”) ¶ 2, Dkt. No. 38.) Bay Equity provides direct-toconsumer mortgage lending and refinancing services. (Van Rooy Decl. ¶ 2.) It is licensed and 

registered to do business in 42 states and has been doing business in Illinois since 2015. (Id. ¶¶ 3–

4.) Bay Equity has three offices in Illinois—in Plainfield, Berwyn, and Grayslake. (Id. ¶ 6.) Bay 

Equity has been using its “BE ALL IN!” mark since 2012 and started to transition to its ® 

and ® (“be”) marks in December 2018. (Id. ¶¶ 10, 17, 22.) Bay Equity applied for trademarks 

with the USPTO for its two “be” marks on July 26, 2018 and received the trademarks in April and 

October 2020. (Id. ¶ 9.) 

 The Court allowed the parties to conduct expedited discovery concerning Brithric’s 

preliminary injunction motion and held an evidentiary hearing on February 5, 2021. (See Dkt. No. 

64.) Brithric and Bay Equity each presented one witness. Ian Carswell testified on behalf of 

Brithric. Carswell is a member and co-owner of both Brithric limited liability companies. 

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(Carswell Decl. ¶ 2.) Autumn Van Rooy, who is Bay Equity’s Executive Vice President of Branch 

Finance and Onboarding, testified on behalf of Bay Equity. (Van Rooy Decl. ¶ 1.) Having 

considered the evidence and arguments of the parties, the Court finds that a preliminary injunction 

is not warranted. 

DISCUSSION 

“An equitable, interlocutory form of relief, a preliminary injunction is an exercise of a very 

far-reaching power, never to be indulged in except in a case clearly demanding it.” Valencia v. 

City of Springfield, 883 F.3d 959, 965 (7th Cir. 2018) (internal quotation marks omitted). “It is 

never awarded as a matter of right.” Id. (quotation marks omitted). When faced with a motion for 

preliminary injunction, the court conducts an analysis with two phases: “a threshold phase and 

balancing phase.” Id. (quotation marks omitted). At the threshold phase, the party seeking the 

preliminary injunction must make three showings: “(1) absent a preliminary injunction, it will 

suffer irreparable harm in the interim period prior to the final resolution of its claims; (2) 

traditional legal remedies would be inadequate; and (3) its claim has some likelihood of 

succeeding on the merits.” Id. (internal quotation marks omitted). If all three requirements are 

met, the Court then moves to the balancing phase, in which it “weighs the irreparable harm that 

the moving party would endure without the protection of the preliminary injunction against any 

irreparable harm the nonmoving party would suffer if the court were to grant the requested relief.” 

Id. at 966 (quotation marks omitted). This is also called the “sliding scale” approach: “the more 

likely the plaintiff is to win on the merits, the less the balance of harms needs to weigh in his 

favor, and vice versa.” Mays v. Dart, 974 F.3d 810, 818 (7th Cir. 2020), petition for cert. filed sub 

nom. Dart v. Mays (U.S. Jan. 26, 2021) (No. 20-990). Finally, the Court considers the public 

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interest in denying or granting the injunction. Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 895 (7th 

Cir. 2001). 

I. Likelihood of Success on the Merits 

The Court turns first to the question of Brithric’s likelihood of success on the merits. The 

Seventh Circuit has recently clarified that to obtain a preliminary injunction, the plaintiff must 

make a “strong showing” that it is likely to succeed on the merits. Ill. Republican Party v. 

Pritzker, 973 F.3d 760, 762 (7th Cir. 2020) (citing Nken v. Holder, 556 U.S. 418, 434 (2009)), 

petition for cert. filed (U.S. Feb. 8, 2021) (No. 20-cv-1081).1 While this is a significant burden, 

the plaintiff “need not show that it will definitely win the case” or even show that the 

preponderance of the evidence favors its success. Id. at 763. A “strong” showing “normally 

includes a demonstration of how the applicant proposes to prove the key elements of its case.” Id. 

 Brithric’s Complaint requests injunctive relief pursuant to the Lanham Act, the UDTPA, 

and the ICFA. The Lanham Act provides in relevant part that a plaintiff may bring a civil action 

against 

[a]ny person who, on or in connection with any goods or services, or any container 

for goods, uses in commerce any word, term, name, symbol, or device, or any 

combination thereof, or any false designation of origin . . . which is likely to cause 

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or 

association of such person with another person, or as to the origin, sponsorship, or 

approval of his or her goods, services, or commercial activity by another person. 

15 U.S.C. § 1125(a)(1). To succeed on its federal trademark infringement claim, Brithric must 

establish (1) that its “be” mark is protectable, (2) that Bay Equity used the mark in commerce, and 

(3) that Bay Equity’s use of the term is likely to cause confusion. Ty, 237 F.3d at 897. Because the 

                                                            

1

 In Illinois Republican Party, the Seventh Circuit officially repudiated that the “better than negligible” 

standard often cited by plaintiffs seeking preliminary injunctions. 973 F.3d at 762–63. 

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parties do not dispute that Bay Equity uses the mark in commerce, the Court’s analysis focuses the 

legitimacy of Brithric’s common law trademark and the likelihood of confusion. 

 The elements required to prove a UDTPA cause of action overlap with the elements of a 

Lanham Act claim: (1) that the petitioning party has a protectable trademark; and (2) that the 

defendant’s use of the trademark is likely to cause confusion. Holbrook MFG LLC v. Rhyno Mfg. 

Inc., No. 20-cv-05940, 2020 WL 6343083, at *7 (N.D. Ill. Oct. 29, 2020). The elements of an 

ICFA claim “are the same as those under the Lanham Act with the added element that the 

tortfeasor intend that consumers rely on the deception.” Coach, Inc. v. Di Da Imp. & Exp., Inc., 

No. 13 C 7165, 2015 WL 832410, at *4 (N.D. Ill. Feb. 25, 2015) (quotation marks omitted). The 

Court thus focuses its analysis on the elements of Brithric’s Lanham Act claim. 

A. Whether Brithric’s Mark is Protectable 

 A plaintiff may show that its mark is protectable in several ways. First, it may prove that it 

registered the mark with the USPTO Principal Register, as “[r]egistration of a mark in the 

Principal Register is prima facie evidence of the validity of the registered mark.” 15 U.S.C. 

§ 1057(b). When the plaintiff’s mark is unregistered (as is the case here), the plaintiff has the 

burden to establish that its mark as distinctive enough to warrant protection under the Lanham Act 

and that it has proper ownership of the mark. Johnny Blastoff, Inc. v. L.A. Rams Football Co., 188 

F.3d 427, 433 (7th Cir. 1999); Platinum Home Mortg. Corp. v. Platinum Fin. Grp., Inc., 149 F.3d 

722, 727 (7th Cir. 1998). 

 “Marks are often classified in categories of generally increasing distinctiveness; . . . they 

may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. 

v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). A generic term is one that is commonly used to 

name that particular product and is therefore not entitled to trademark protection. See H-D Mich., 

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Inc. v. Top Quality Serv., Inc., 496 F.3d 755, 761 (7th Cir. 2007); Platinum Home Mortg., 149 

F.3d at 727. A descriptive mark “describes the ingredients, qualities, or characteristics of an article 

of trade or a service” and is generally not protectable but may be under certain circumstances. 

Platinum Home Mortg., 149 F.3d at 727 (quotation marks omitted). The term “bubbly” as applied 

to champagne is an example of a descriptive term. Int’l Kennel Club of Chi., Inc. v. Mighty Star, 

Inc., 846 F.2d 1079, 1085 (7th Cir. 1988), abrogated on other grounds by Ill. Republican Party, 

973 F.3d 760. A suggestive mark “stands for an idea which requires some operation of the 

imagination to connect it with the goods.” Platinum Home Mortg., 149 F.3d at 727. Arbitrary 

terms (e.g., a phrase taken out of context, like “‘Black & White’ scotch”), G. Heileman Brewing 

Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985, 992 (7th Cir. 1989), and fanciful terms (e.g., a 

coined term like “Kodak”) are generally fully protected. Int’l Kennel Club of Chi., 846 F.2d at 

1085. 

 In classifying Brithric’s “be” mark, the Seventh Circuit case Sullivan v. CBS Corp., 385 

F.3d 772 (7th Cir. 2004), is instructive. There, the plaintiff had a trademark in his band name 

“Survivor” and brought suit against the CBS television network for using the name on the logo for 

its television show “Survivor.” Id. at 774. The court of appeals found that the district court had 

wrongly classified the plaintiff’s mark as descriptive when it was, in fact, arbitrary. Id. at 776. As 

the Seventh Circuit explained: 

The word “survivor” when used as a band name is arbitrary; there is nothing about 

the word which is necessary to the description of a band, or of Sullivan’s band. 

Because the word “survivor” is a common word that is being applied to a service 

unrelated to its meaning, the [b]and name, properly considered, is an arbitrary 

mark. 

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Id. Similarly, here, Brithric’s has adopted the common word “be” for its company BE Realty. 

There is nothing about the term “be” that is related to or describes residential realty services. The 

Court thus finds that the mark at issue here is properly classified as arbitrary. 

 The classification of Brithric’s mark as arbitrary does not automatically guarantee it strong 

protection. Id. “[I]f it is used only in a narrow area, others may use a similar mark for different 

goods without any trademark infringement.” Id. Thus, the Court may assume that Brithric is 

entitled to strong protection with respect to other residential realty companies, but there is no 

presumption that its mark is equally strong outside that area. 

 In addition to distinctiveness, a trademark is only protectable if the owner shows that it has 

adopted and used the mark in connection with its product in the marketplace. Johnny Blastoff, 188 

F.3d at 433; Planet Hollywood (Region IV), Inc. v. Hollywood Casino Corp., 80 F. Supp. 2d 815, 

878–79 (N.D. Ill. 1999) (“[t]rademark rights are acquired by adoption and use, not by registration” 

(quotation marks omitted)). Common law confers superior ownership rights on “[t]he party who 

first appropriates the mark through use.” Johnny Blastoff, 188 F.3d at 434; see also Planet 

Hollywood, 80 F. Supp. 2d at 879. “‘Use’ under the common law means that the mark was 

attached to the product or service sold to the public.” Planet Hollywood, 80 F. Supp. 2d at 879. 

Such use must also be continuous. Id. In this case, Brithric has presented evidence that it has been 

using the “be” mark since 2014—on its office awnings and signage, on marketing materials, 

coffee mugs, and sponsorship materials. (Carswell Decl. ¶ 5; see id. Ex. D, Dkt. No. 44-4.) It has 

also used the mark in its email communications with clients and on its social media pages. (See

Pl.’s Hr’g Exs. at BEREALTY000004, BEREALTY000008–09.) Bay Equity has only been using 

its “be” mark since December 2018. (See Van Rooy Decl. ¶ 17.) Since the Seventh Circuit has 

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made clear that prior use in the marketplace, not registration, confers ownership, the Court finds 

that Brithric has demonstrated an ownership right over the “be” mark. 

 In conclusion, the Court finds that Brithric has acquired a protectable right in its “be” 

mark. As Bay Equity has conceded that it uses the “be” mark in commerce, the Court turns to the 

third part of the Lanham Act analysis: whether there is a likelihood of confusion between 

Brithric’s and Bay Equity’s marks. 

B. Likelihood of Confusion 

 Likelihood of confusion is a “factual determination” based on an “equitable balancing 

test.” Barbecue Marx, Inc. v. 551 Ogden, Inc., 235 F.3d 1041, 1044 (7th Cir. 2000). Courts 

generally examine seven factors: 

(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 the complainant’s mark; (6) actual 

confusion; and (7) intent of defendant to palm off his product as that of another. 

Id. at 1043–44 (internal quotation marks omitted). No single factor is dispositive, and this Court 

may assign varying weights to each of the factors, but three factors are considered “particularly 

important: the similarity of the marks, the defendant’s intent, and actual confusion.” Id. at 1044. 

1. Similarity of the Marks 

In determining whether two parties’ marks are similar, the Court examines the marks as a 

whole, not by looking at their separate elements. AutoZone, Inc. v. Strick, 543 F.3d 923, 929–30 

(7th Cir. 2008). The important question is not whether the public would confuse the marks 

themselves, but whether it is likely that the public would believe that the marks derive from the 

same source. Id. at 930. 

The images below show Brithric’s use of its “be” trademark (lime green and white), 

followed by Bay Equity’s (black and white). 

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(Compare Pl.’s Hr’g Exs. at BEREALTY000141, with Van Rooy Decl., Ex. 2, Dkt. No. 38.) 

Brithric has presented images of its mark with white lettering on a lime green background and 

vice versa. (See Carswell Decl., Ex. D at 5–6.) Most of Brithric’s images display the “be” on a 

square background, but it has shown the “be” mark on a circular background on social media 

posts. (Pl.’s Hr’g Ex. 9, Side-by-Side Social Media Posts (“Side-by-Side”).) Bay Equity uses a 

greater variety of colors to display its “be” mark, primarily oranges and blues. Bay Equity has 

presented images of its marks in black and white; black and orange; and navy and white. (See Van 

Rooy Decl., Exs. 4, 11, Dkt. No. 38.) Van Rooy testified at the hearing that Bay Equity has never 

used green. 

 The most striking similarities between Brithric’s and Bay Equity’s marks are the use of the 

term “be,” all in lowercase letters, on solid color backgrounds. Similar uses of font and color may 

indicate a similarity. See Uncommon, LLC v. Spigen, Inc., 926 F.3d 409, 426 (7th Cir. 2019). 

There are differences between Brithric’s and Bay Equity’s marks—as discussed above, Brithric 

primarily uses a square shape while Bay Equity uses a circle; Brithric’s “be” mark is not followed 

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by a period while Bay Equity’s is; Brithric’s font is thin while Bay Equity’s is thick. But looking 

at the marks as a whole, the Court finds that they are similar enough that a consumer could readily 

believe they represent the same entity. The marks are not identical, but as a gestalt, they resemble 

each other. The lowercase lettering of the same word “be” and uses of solid background colors are 

especially distinctive. Even if Bay Equity has apparently never used Brithric’s signature lime 

green coloring, that fact is less significant since Bay Equity uses a variety of other colors. If 

consumers have already seen Bay Equity’s trademark in various colors, they may be more likely 

to attribute another color to Bay Equity, as well. 

 The Court concludes that the “similarity of the marks” factor weighs in favor of Brithric. 

2. Similarity of the Products 

 In determining the similarity of the products, the key inquiry is whether the products or 

services “are the kind the public attributes to a single source.” Ty, 237 F.3d at 899 (quotation 

marks omitted); see also Forum Corp. of N. Am. v. Forum, Ltd., 903 F.2d 434, 442 (7th Cir. 1990) 

(holding that trademark protection extends to “such other [products and services] as might 

naturally or reasonably be expected to come from [it]” (quotation marks omitted)). 

 Bay Equity emphasizes that it and Brithric are not direct competitors. Brithric provides 

real estate brokerage services to individuals buying homes. Bay Equity is a mortgage brokerage 

firm, which offers financing to home buyers. Brithric does not provide mortgage brokerage 

services. In other words, an individual could conceivably buy one home using both Brithric’s real 

estate services and Bay Equity’s financing services. The companies do not directly compete for 

clients. Nonetheless, both companies offer services specifically to residential home buyers. As to 

the question of whether a typical consumer could attribute their services to the same source, 

Brithric and Bay Equity disagree about how common it is for one brand to offer both real estate 

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and mortgage brokerage services. Carswell testified that integration between the two sectors of the 

industry is “increasingly regular.” Van Rooy described that integration as “more than an 

anomaly.” But both witnesses acknowledged that there are firms which provide both services. 

Further, the home buying and home financing processes are necessarily interconnected. Carswell 

testified that Brithric has relationships with mortgage brokers and that they regularly refer clients 

to each other. Given the overlap in services, it would be reasonable for a consumer who saw 

similar trademarks to believe that a real estate brokerage firm and mortgage brokerage firm were 

related. 

 The Court concludes that the similarity of the products factor weighs in Brithric’s favor, 

though not as strongly as it would if Brithric and Bay Equity were direct competitors. 

3. Area and Manner of Concurrent Use 

 When considering the two marks’ areas and manners of concurrent use, the Court must 

assess “whether there is a relationship in use, promotion, distribution, or sales between the goods 

and services of the parties.” Ty, 237 F.3d at 900 (internal quotation marks omitted). “When the 

goods and services are in close competition, marks need not be as similar in order to find 

infringement.” Lettuce Entertain You Enters., Inc. v. Leila Sophia AR, LLC, 703 F. Supp. 2d 777, 

786–87 (N.D. Ill. 2010). The relevant factors as to the area and manner of concurrent use include: 

(1) the parties’ geographical distribution areas, (2) whether there is any evidence that the products 

directly compete, and (3) whether the products are marketed in similar channels. Ty, 237 F.3d at 

900. 

 First, with respect to the parties’ geographic areas, Brithric has offered evidence 

purporting to show that it has a nationally recognized brand. For instance, it offered a chart 

showing its clients’ primary states of residence. (See Carswell Decl., Ex. A, Owner Directory, 

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Dkt. No. 45.) Some of those individuals reside in Illinois, while others live in New York, 

California, Minnesota, New Jersey, Ohio, and various other states. (Id.) However, the properties 

those clients own are all located in Illinois, and the majority of those are in Chicago. (Id.) Brithric 

also submitted a chart of its followers on the social media website Instagram. (Carswell Decl., Ex. 

B, Dkt. No. 46.) Of 220 followers, nearly two-thirds are located in Illinois. (Id.) The area with the 

next highest number of followers is California, where eleven of Brithric’s followers are located. 

(Id.) The remaining are spread across various states and even outside the United States. (Id.) 

Brithric’s website analytics demonstrate that its site attracts visitors from various locations across 

the country, but around 39% of its new users are located in Chicago. (See Carswell Decl. Ex. C, 

Dkt. No. 47.) Carswell testified that Brithric is based in Illinois and primarily operates out of 

Chicago. It holds a real estate license only in Illinois and assists with the purchase and sale of 

properties located in Illinois. It markets itself to people in Illinois or who are considering moving 

into the state. 

 Overall, Brithric’s website visitors and social media followers show that while it might 

have a small national following, most of its potential clients are located in Illinois. And even more 

relevantly, Brithric has not presented any evidence that it assists with real estate transactions 

taking place outside the State of Illinois. The Court concludes that Brithric’s primary geographic 

area is Illinois and, more specifically, the Chicago area. 

 Bay Equity offers its services in 42 states, including Illinois. (Van Rooy Decl. ¶ 3.) Within 

Illinois, it has offices in Berwyn, Grayslake, and Plainfield. (Id. ¶ 6.) The Court does not have as 

much detailed information concerning where Bay Equity’s offers its services in Illinois. Brithric 

suggests such information is not relevant here. But Brithric does not cite any legal authority for 

that claim, and this Court disagrees. The area and manner of use is one of the seven factors 

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relevant to the likelihood of confusion. Without more detailed information, the Court concludes 

based on Bay Equity’s office locations that it primarily serves its Illinois clients outside of 

Chicago. Brithric is based in Chicago and seems to assist customers buying homes mostly within 

the city. (See Owner Directory.) The Court therefore concludes that there is minimal overlap in 

Brithric’s and Bay Equity’s geographic areas. 

 The second question that is relevant to the area and manner of use factor is whether 

Brithric and Bay Equity are direct competitors. As discussed above, the two companies offer 

distinct (albeit related) services. They do not directly compete. 

 Third, the Court analyzes whether Brithric and Bay Equity market their services in similar 

channels. Carswell testified that Brithric’s primary manner of attracting clients is on websites like 

Facebook and Yelp. Brithric also utilizes business listing syndication services to ensure that its 

company name and logo is listed on as many websites as possible. Van Rooy did not testify as to 

the type of marketing Bay Equity relies upon most heavily, either nationally or within Illinois. 

However, his testimony mentioned marketing and advertising channels like social media, video 

and print advertisements, and building signage. There is no evidence before the Court to suggest 

that Brithric and Bay Equity rely heavily upon the same channels to market their services. 

 To conclude, the Court finds that the evidence does not demonstrate that Brithric and Bay 

Equity operate concurrently in the same area or manner. This factor favors Bay Equity. 

4. Degree of Care Likely to be Exercised by Consumers 

 Generally, when the cost of a party’s services are high, “‘courts assume that purchasers are 

likely to be more discriminating than they might otherwise be.’” MB Fin. Bank, N.A. v. MB Real 

Est. Servs., L.L.C., No. 02 C 5925, 2003 WL 21462501, at *16 (N.D. Ill. June 23, 2003) (quoting 

Maxim’s Ltd. v. Badonsky, 772 F.2d 388, 393 (7th Cir. 1985)). “Where consumers are 

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sophisticated, deliberate buyers, confusion is less likely than where the consumers are prone to 

make uninformed, impulse purchases.” Planet Hollywood, 80 F. Supp. 2d at 882. By contrast, 

“[t]he more widely accessible and inexpensive the products and services, the more likely that 

consumers will exercise a lesser degree of care and discrimination in their purchases.” CAE Inc. v. 

Clean Air Eng’g., Inc., 267 F.3d 660, 683 (7th Cir. 2001). 

 Bay Equity has offered several cases from outside this Circuit to support its assertion that 

consumers of real estate brokerage and mortgage brokerage services are highly sophisticated and 

discerning. See Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Fam. Music Ctr., 109 F.3d 275, 

285 (6th Cir. 1997) (noting as an example in a case concerning the sale of musical instruments 

that “home buyers will display a high degree of care when selecting their real estate brokers”); 

Comerica Inc. v. Fifth Third Bankcorp, 282 F. Supp. 2d 557, 571 (E.D. Mich. 2003) (finding that 

“customers exercise a high degree of care in choosing banking services because acquiring a home 

equity line of credit is a major transaction”); Golden W. Fin. v. WMA Mortg. Servs., No. C 02-

05727 CRB, 2003 WL 1343019, at *5 (N.D. Cal. Mar. 13, 2003) (finding that “mortgage 

consumers exercise a high degree of care in their purchasing decisions since buying a home is one 

of the most significant transactions people will make in their lifetimes”). This Court agrees. A 

residential property is likely to be the most expensive and significant purchase that the typical 

consumer will ever make. Admittedly, the property itself is probably of greater consequence to the 

consumer than the brokerage services they employ to buy it. But overall, home buyers are likely to 

be sophisticated consumers who exercise a great deal of care in selecting their brokers. 

 The Court finds that the degree of care factor weighs strongly in Bay Equity’s favor. 

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5. Strength of Brithric’s Mark 

 “The stronger the mark, the more likely it is that encroachment on it will produce 

confusion.” AutoZone, 543 F.3d at 933 (internal quotation marks omitted). Courts analyze the 

strength of a party’s mark by evaluating its overall “economic and marketing strength.” Id.

Economic and marketing strength depends on the “distinctiveness of the mark, or more precisely, 

its tendency to identify the goods sold under the mark as emanating from a particular source.” Eli 

Lilly & Co. v. Nat. Answers, Inc., 233 F.3d 456, 464 (7th Cir. 2000) (quotation marks and 

alterations omitted). The only ways to directly prove the public’s evaluation of a mark are through 

customer testimony and consumer surveys. Gimix Inc. v. JS & A Grp., Inc., 699 F.2d 901, 907 

(7th Cir. 1983). But the Court may also consider evidence of the frequency of the mark’s display 

and the quantity of advertising dollars used to promote the mark. See AutoZone, 543 F.3d at 933 

(holding that the evidence that the plaintiff had spent millions of dollars’ on advertising to 

promote its mark and that the mark was displayed prominently on thousands of stores nationally 

was more than sufficient to establish the mark’s strength). In addition, a party may show the 

strength of its mark through long-term, continuous use and good reputation. See Barbecue Marx, 

235 F.3d at 1045. 

 Brithric has not offered any direct evidence of the strength of its “be” mark. However, as 

the Court concluded above, Brithric’s mark is sufficiently distinctive to be protectable. Brithric 

has also been using the mark for more than six years, which establishes its long-term use. See id.

(holding that the plaintiff’s use of the same mark for six years was one factor indicating the 

mark’s strength). In terms of advertising dollars, the Court must consider Brithric’s spending in 

proportion to its size. For smaller businesses, it is helpful to compare the amount of money the 

plaintiff spends on advertising, particularly “brand awareness marketing,” to its total revenues. 

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See LHO Chi. River, L.L.C. v. Rosemoor Suites, L.L.C., 16 C 6863, 2017 WL 467687, at *10 

(N.D. Ill. Feb. 3, 2017). In LHO Chicago River, the district court found that the plaintiff did not 

spend a significant amount of money advertising its mark because it spent less than 1% of its total 

revenues marketing its brand. Id. By contrast, in International Kennel Club of Chicago, the 

Seventh Circuit considered the plaintiff’s mark strong where it had spent more than 25% of its 

total revenues on advertising and public relations expenses, and frequently received free 

advertising on top of that. 846 F.2d at 1086. Here, Brithric has presented evidence that over a 

recent five-year period, it spent a total of $104,703 on marketing, and that over the same period, 

its total gross income (less rents) was $3,544,543. (See Reply, Ex. 8, Be Realty Revenue, Dkt. No. 

43.) (Because the Court lacks information concerning Brithric’s total revenues and how much of 

its marketing budget went directly to its “be” mark, the Court relies on these data points as a 

rough substitute.) Brithric’s marketing expenditure thus constituted around 3% of its gross 

income. Those advertising dollars would constitute an even lower percentage of Brithric’s total 

revenues. 

 The Court concludes that Brithric has failed to establish the strength of its mark. Consumer 

surveys and testimony are not necessary to demonstrate trademark strength. But absent such 

evidence, the plaintiff must present other, indirect evidence of the mark’s strength, like a high 

frequency of display, high advertising spending, or good reviews and goodwill surrounding the 

mark. Brithric has offered several examples of how it uses its “be” mark and has demonstrated 

that it contributes a small amount of its income to advertising. These facts are not sufficient to 

establish the mark’s strength. The Court therefore finds that this factor weighs in Bay Equity’s 

favor. 

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6. Actual Confusion 

 Evidence of actual confusion is not required to prove that a likelihood of confusion exists. 

CAE, 267 F.3d at 685. But evidence of actual confusion is considered particularly important to the 

Court’s analysis. Barbecue Marx, 235 F.3d at 1044. In determining whether a plaintiff has 

established the presence of this factor in the analysis, the Court must see “evidence of actual

confusion, not a mere risk of confusion.” Eli Lilly & Co., 233 F.3d at 465. 

 Brithric has conceded that it does not have any evidence of actual confusion between its 

mark. (See Reply at 7–8.) At the preliminary injunction hearing, Carswell could not provide a 

specific example of any instance of confusion. The Court thus finds that the actual confusion 

factor weighs strongly in Bay Equity’s favor. 

7. Intent of Bay Equity 

 The seventh and final factor in the likelihood of confusion analysis is the defendant’s 

intent to palm off its product as that of another. Barbecue Marx, 235 F.3d at 1046. The Seventh 

Circuit has explained that palming or passing off is a type of fraud in which the defendant “tr[ies] 

to get sales from a competitor by making consumers think that they are dealing with that 

competitor, when actually they are buying from the passer off.” Liquid Controls Corp. v. Liquid 

Control Corp., 802 F.2d 934, 940 (7th Cir. 1986). Generally, to establish this factor, the plaintiff 

must present some evidence that the defendant acted in bad faith. Packman v. Chi. Trib. Co., 267 

F.3d 628, 644–45 (7th Cir. 2001). “Distinctive appearances and a clearly stated designation of 

origin weigh against finding an intent to palm off.” Uncommon, LLC v. Spigen, Inc., 305 

F. Supp. 3d 825, 863 (N.D. Ill. 2018) (internal quotation marks omitted). 

 Brithric argues that it has proven Bay Equity’s bad faith and bad intent by offering sideby-side comparisons of several of its Instagram posts next to Bay Equity’s similar posts, published 

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after Brithric’s. (See Side-by-Side.) For instance, on August 4, 2020, Brithric posted a photograph 

of a mother and young daughter drawing, with its “be” mark in the top left corner and text that 

read “Are your needs in a home changing?” (Id. at 3.) On September 23, 2020, Bay Equity posted 

a photograph of a mother holding a basket and moving box (her family in the background behind 

her), with its “be” mark also in the top left corner and text reading “Ready for a change? How 

about a new home for fall?” (Id.) Brithric posted a photograph of colorful paint brushes on March 

31, 2020, and nearly one month later, Bay Equity posted a photograph of open paint cans of 

various colors. (Id. at 1.) In December 2019, Brithric posted several holiday images with text that 

showed its “be” mark followed by the words “home for the holidays.” (Id. at 2.) Several weeks 

later, on December 27, Bay Equity posted a photo of a mother and daughter with its “be” logo in 

the top left corner, and text in the top right corner that read “Home for the Holidays the best gift of 

all.” (Id. (edited the capital letters).) 

 There are certainly similarities between these posts. But the Court does not consider this 

sufficient evidence to establish that Bay Equity is intending to palm its product off as Brithric’s. 

First, the timing of Bay Equity’s posts are not as close or suspicious as Brithric suggests. Bay 

Equity posted its photograph of a mother and daughter nearly two months after Brithric. The 

“home for the holidays” posts were closer in time, but as Bay Equity pointed out at the hearing, 

one would expect to see such posts on social media around December. One might also expect to 

see posts concerning home projects around March and April 2020, at the start of the COVID-19 

pandemic, when so many people were stuck at home. Moreover, even if Bay Equity were blatantly 

copying Brithric’s social media messaging, there is no evidence that Bay Equity was trying to 

confuse consumers or pass its products off as Brithric’s. Its social media posts necessarily have a 

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“clearly stated designation of origin,” see Uncommon, 305 F. Supp. 3d at 863, since its Instagram 

account name, visible next to all of its posts, is “bayequity.” (See Side-by-Side.)2

 

 There is no compelling evidence that Bay Equity is acting in bad faith by using the “be” 

mark or intending to palm off its services as Brithric’s. The Court therefore concludes that this 

factor weighs in Bay Equity’s favor. 

C. Summary of Brithric’s Likelihood of Success on the Merits 

 In summary, Brithric has presented evidence that it has a protectable ownership interest in 

the “be” mark. But with respect to the likelihood of confusion, the only two factors that weigh in 

Brithric’s favor are the similarity between the marks and the similarity of the products. And those 

two factors do not weigh heavily in Brithric’s favor. The factors of area and manner of concurrent 

use, degree of consumer care, strength of Brithric’s mark, actual confusion, and intent to palm off 

all weigh in Bay Equity’s favor. Of the factors that are considered particularly important, only the 

similarity of the marks weighs in Brithric’s favor, while the actual confusion and intent to palm 

off weigh in Bay Equity’s. The Court concludes that Brithric has not demonstrated a likelihood of 

confusion in this case. Given this result, Brithric has fallen short of making a strong showing that 

it is likely to succeed on the merits of its Lanham Act claim and its related Illinois state-law 

claims. This finding warrants denial of Brithric’s motion for a preliminary injunction. See Abbott 

Labs. v. Mead Johnson & Co., 971 F.2d 6, 11 (7th Cir. 1992). 

II. Inadequate Remedy at Law and Irreparable Harm 

 Although Brithric has failed to meet its burden of showing that it is likely to succeed on 

the merits, the Court nonetheless considers whether Brithric has met the remaining requirements 

                                                            

2

 Brithric presented evidence that one of Bay Equity’s brokers—under the account name 

“mortgageswithhustleandheart”—posted the image of paint cans with a blue “be” logo in the bottom left 

corner. (See Side-by-Side at 1.) It does not appear that the broker tagged Bay Equity. But without 

additional evidence that Bay Equity’s brokers solicit business over social media using the “be” mark, that 

post is not enough to suggest that Bay Equity is attempting to palm off its services as Brithric’s. 

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for a preliminary injunction: namely, a showing “that it has no adequate remedy at law and as a 

result, will suffer irreparable harm if the injunction is not issued.” Promatek Indus., Ltd. v. 

Equitrac Corp., 300 F.3d 808, 813 (7th Cir. 2002). Irreparable harm is harm that is “not fully 

compensable or avoidable by the issuance of a final judgment (whether a damages judgment or a 

permanent injunction, or both) in the plaintiff’s favor.” Kraft Foods Grp. Brands LLC v. Cracker 

Barrel Old Country Store, Inc., 735 F.3d 735, 740 (7th Cir. 2013). “[I]f the harm can be fully 

repaired in the final judgment, there is no reason to hurry the adjudicative process.” Id. 

 Following the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 

388 (2006), the Seventh Circuit held that its prior presumption of irreparable harm no longer 

applies in patent and copyright cases. See Flava Works, Inc. v. Gunter, 689 F.3d 754, 755 (7th Cir. 

2012). A subsequent Seventh Circuit case suggests that the presumption still applies in trademark 

cases due to the difficulty of quantifying the impact of consumer confusion on a brand’s value. 

See Kraft Foods, 735 F.3d at 741. Yet district courts in this Circuit are divided on the issue. 

Compare Mkt. Track, LLC v. Efficient Collaborative Retail Mktg., LLC, No. 14 C 4957, 2015 WL 

3637740, at *23 n.20 (N.D. Ill. June 11, 2015) (collecting cases that apply the presumption), with 

Ill. Tamale Co. v. El-Greg, Inc., No. 16 C 5387, 2019 WL 4395139, at *19–20 (N.D. Ill. Sept. 13, 

2019) (declining to apply the presumption), Nat’l Fin. Partners Corp. v. Paycom Software, Inc., 

No. 14 C 7424, 2015 WL 3633987, at *11 (N.D. Ill. June 10, 2015) (same). Given the Seventh 

Circuit’s relatively recent reliance on the presumption and the fact that this matter is before the 

Court on a motion for a preliminary injunction, the Court will apply the presumption here. 

Accordingly, the Court presumes that because Brithric has asserted a claim for trademark 

infringement, any harm it suffers will be irreparable and it will not have an adequate remedy at 

law. 

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III. Balancing of Harms 

For the sake of thoroughness, the Court also addresses the parties’ evidence about the 

harms they would suffer as a result or in the absence of a preliminary injunction. 

 As noted above, when balancing the harms each party may suffer, the Seventh Circuit 

applies a sliding scale approach: “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, 735 F.3d at 740 

(quotation marks omitted). The sliding scale approach “is not mathematical in nature, rather it is 

more properly characterized as subjective and intuitive, one which permits district courts to weigh 

the competing considerations and mold appropriate relief.” Ty, 237 F.3d at 895–96 (internal 

quotation marks omitted). As previously explained, Brithric’s likelihood of success on the merits 

is relatively slim, necessitating a stronger showing that the balance of harm weighs in its favor. 

Where the plaintiff has made a strong showing that the defendant’s use of the mark poses a 

likelihood of confusion, the Court may assume that the loss of goodwill and control is substantial. 

See Kraft, 735 F.3d at 741. In this case, Brithric must present more concrete evidence of harm. 

But the only harms to which Carswell testified were abstract, such as loss of control and brand 

dilution. Brithric argues that if the preliminary injunction is not granted, it will have to undergo an 

expensive rebranding process or face the possible loss of its clients’ goodwill. But Brithric has not 

offered any evidence that Bay Equity’s use of its “be” trademark will negatively impact its 

goodwill. It has not suggested, for instance, that Bay Equity offers poor services that would reflect 

poorly upon Brithric. 

 By contrast, Van Rooy testified that if the preliminary injunction is granted, Bay Equity 

would have to shut down its business to remove all of the “be” marks from its websites, corporate 

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swag, and signage—steps he guessed would cost millions of dollars. While the Court is skeptical 

of Van Rooy’s estimate,3

 it is clear that it would cost Bay Equity a significant amount of money to 

comply with an injunction ordering it to immediately stop using the “be” mark. Of course, the 

Court would not give the damage to Bay Equity as much weight if Brithric had presented a 

stronger case of trademark infringement. But given Brithric’s showing as to its likelihood of 

success and its vague claims of harm, Van Rooy’s testimony is more compelling. 

 Finally, the Court must consider the public interest in denying or granting the injunction. 

Ty, 237 F.3d at 895. Enforcement of trademark law serves the public interest by reducing 

consumer confusion. See Eli Lilly & Co., 233 F.3d at 469. On the other hand, “trademark 

protection should not interfere with traditional policies of a competitive market.” Platinum Home 

Mortg., 149 F.3d at 726. The Court has already determined that there is a relatively low likelihood 

of confusion here. Thus, it is not in the best interest of the public to grant the preliminary 

injunction. 

 Based on the record, the balance of hardships weighs against Brithric and in favor of Bay 

Equity. The Court thus concludes that the extraordinary remedy of injunctive relief is not justified 

here. 

                                                            

3 Van Rooy’s testimony seemed to include the costs associated with shutting down Bay Equity’s use of the 

“be” mark on a national level. As the Court determined above, Brithric operates only in Illinois. A 

preliminary injunction prohibiting Bay Equity’s use of “be” mark throughout the entire country would not 

be appropriate even if Brithric had established a strong likelihood of success. The cost to Bay Equity of 

ceasing its use of the “be” mark within Illinois would likely be much less expensive than Van Rooy 

represented.

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CONCLUSION 

For the foregoing reasons, Brithric’s motion for a preliminary injunction (Dkt. No. 12) is 

denied. 

ENTERED: 

Dated: March 31, 2021 __________________________ 

Andrea R. Wood 

United States District Judge 

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