National Board of Young Men's Christian Associations, A/K/A Ymca of the U.S.A. v. The Flint Young Men's Christian Association of Flint, Michigan , 764 F.2d 199 ( 1985 )

MERRITT, Circuit Judge.

In this tradename infringement action not yet tried, District Judge Newblatt declined to issue, prior to trial, a preliminary injunction ordering the defendant, the Flint Young Men’s Christian Association, a local YMCA, to refrain from using YMCA trademarks and tradenames registered by plaintiff, National Board of Young Men’s Christian Associations, under the Lanham Act, 15 U.S.C. §§ 1051-1127. Defendant has withdrawn from the national organization in a dispute over dues payments.

The general standard of appellate review in preliminary injunction cases is “abuse of discretion” by the trial court. In order to reverse the trial court we must find that it has made a serious and important error respecting the requirements of likelihood of success on the merits or irreparable injury or one of the other requirements for the issuance of a preliminary injunction. Our review of the record convinces us that Judge Newblatt has not abused his discretion in declining to issue an injunction against the Flint Young Men’s Christian Association prior to trial.

In light of the initial showing by defendant that plaintiff has acquiesced in the use of YMCA trademarks and trade-names by numerous local YMCA organizations while unaffiliated with or suspended from the national organization, and in light of proof that plaintiff and defendant do not compete in products, services or membership, we are unable to conclude that Judge Newblatt abused his discretion in finding that the plaintiff has not shown sufficient product confusion or harm to reputation through confusion to meet the threshold showing of irreparable injury.

The plaintiff, relying on Omega Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190 (2nd Cir.1971), argues for a per se rule which deems the requirement of irreparable injury satisfied and the injunction prior to trial mandatory whenever the plaintiff shows ownership of a registered trademark or tradename used by the defendant. Our dissenting colleague would adopt such a per se rule. Reliance on Omega is misplaced, however. In Omega, Judge Friendly reaffirmed a standard first enunciated by Judge Frank in Hamilton Watch Co. v. Benrus Watch Co., 206 F.2d 738, 740 (2nd Cir.1953), that,

a temporary injunction should issue when, in his words, a plaintiff “has raised questions going to the merits so serious, substantial, difficult and doubtful, as to make them a fair ground for litigation and thus for more deliberate investigation” and “the balance of hardships tips decidedly toward plaintiff,” even though the plaintiff has not demonstrated-a strong likelihood of success. (Emphasis added.)

451 F.2d at 1193-94. Judge Friendly defined this balancing test for measuring irreparable injury in trademark cases to mean that a preliminary injunction should not issue unless “there is, then, such high probability of confusion, injury irreparable in the sense that it may not be fully com-pensable in damages almost inevitably follows.” Id. at 1195. We are unable to say that Judge Newblatt abused his discretion in balancing the hardships in the case and in refusing to issue an injunction prior to trial taking away the name which the Flint YMCA has used, according to this record, for more than 100 years. Omega is not authority for a per se rule on trademark confusion. If it were, there would be no need for a “balance of hardship” test for determining irreparable injury.

Despite our dissenting colleague’s desire to put words in our mouth, we need not, and do not, reach any conclusion on the likelihood-of-success-on-the-merits branch of the preliminary injunction test, namely, whether the plaintiff “has raised questions going to the merits so serious, substantial, difficult and doubtful, as to make them a fair ground for litigation.” Nor do we reach any conclusion on the issue of abandonment. The defendant claims and has offered proof that it has used the name, “Young Men’s Christian Association,” and the acronym, “YMCA,” for more than 100 years — for many years prior to the registration of this name by plaintiff. It also argues that it did not lose its independence or control over the use of its name as a local YMCA by its affiliation with the national organization. We need not reach these issues. The record is not yet developed, and the discovery process is still ongoing in the District Court. There is no point in tying the hands of the District Court on these issues prior to trial. These are essentially factual issues, as is the “balancing of hardship” test of irreparable injury. We do not know how these issues should be resolved, and nothing will be gained by ruling on them prior to trial on the merits.

Accordingly, the judgment of the District Court is affirmed. Costs are taxed against plaintiff-appellant. We would encourage the District Court to set the case for trial at an early date.