In a ruling that neatly illustrates some of the challenges a company is likely to face when trying to enforce trademark rights in an advertising tagline, a federal judge in the Northern District of California recently denied a motion for a preliminary injunction seeking to enjoin Yelp’s use of a trademarked tagline.

TPW Management, LLC —a regional property management, vendor sourcing, and real estate sales and services firm operating in Vermont—sued Yelp earlier this year for trademark infringement and unfair competition based on Yelp’s use of TPW’s registered trademark in the tagline “We Know Just the Place” in Yelp’s ads.  TPW sought a preliminary injunction prohibiting Yelp’s continued use of the phrase. TWP claimed that Yelp’s verbatim use of its trademarked tagline in conjunction with the similarity of services offered by the two companies confused TWP’s customers, irreparably harming TPW’s brand.

The court didn’t buy what TPW was selling: it ruled on October 25, 2016, that TPW had not shown that it was likely to succeed on the merits of its Lanham Act claims or that it was irreparably harmed by Yelp’s use.

Despite TPW’s valid, registered trademark in the phrase “We Know Just the Place” and Yelp’s word-perfect appropriation, the court decided consumers were unlikely to be confused by Yelp’s use of the mark and thus TPW failed to demonstrate likelihood of success on the merits.  Two Sleekcraft factors were of special importance in the court’s likelihood-of-confusion analysis:

The court found the first Sleekcraft factor, the similarity of the marks, weighed heavily in favor of Yelp.  Even though the two companies used exactly the same tagline, marks are not viewed in isolation.  Rather, courts consider marks in their entirety and as they appear in the market.  Both Yelp and TPW use of the tagline in conjunction with their own unique logos and company names.  According to the court, this sort of pairing “greatly reduces, if not completely eliminates, the risk of confusion that arises from the similarity of the marks.”

According to the court and Yelp’s “affluent, sophisticated, and technologically savvy” user base would thus be able to distinguish between the two companies when encountering the mark as actually used in the marketplace. This is a common hurdle companies encounter when using paired marks.

The third Sleekcraft factor, the strength of the mark, also weighed against finding a likelihood of confusion.  The court treated TPW’s mark as only a “descriptive” mark that merely described the nature of TPW’s services (and Yelp).  This weaker classification, common for advertising taglines, entitled the mark to protection only if it had acquired a sufficient secondary meaning associating it specifically with TPW in the minds of consumers.  TPW introduced no evidence  of actual marketplace recognition, i.e., that consumers associated the phrase “We Know Just the Place” specifically with services offered by TPW.

TPW also failed to make a threshold showing of irreparable injury. TPW argued it was harmed because Yelp’s use of the tagline would cause TPW to lose customers due to confusion and result in TPW’s loss of control over its trademark and reputation.  The court found TPW’s alleged harms speculative.  First, the court pointed out, TPW offered no actual evidence of customer confusion or customers lost as a result of Yelp’s use of the tagline.  Second, the only evidence TPW offered to support its loss-of-control argument was a declaration to that effect written by TPW’s marketing director.  The court determined the declaration could not be sufficient evidence to support a finding of irreparable harm as a matter of law.  According to the court, to find otherwise would result in a finding of irreparable harm in any case where plaintiff was able to demonstrate a likelihood of success on the merits.  This would collapse the likelihood-of-confusion and the irreparable-harm analyses in direct contravention of Ninth Circuit law.

This ruling isn’t the end of the matter—TPW has simply been denied a preliminary injunction, meaning Yelp can continue using the mark while the parties continue to litigate.  The case is TPW Management, LLC v. Yelp Inc., Case No. 16-cv-03063-YGR (N.D. Cal. Oct. 25, 2016).