Bernina v. Fashion Fabrics

Citation: Bernina of America, Inc. v. Fashion Fabrics Int'l, Inc., 2001 U.S. Dist. LEXIS 1211 (N.D. Ill. Feb. 8, 2001).

Factual Background
Plaintiff manufactured sewing machines under the marks BERNINA and BERNETTE. Defendant, an independent seller of various brands of sewing machines, used the BERNINA and BERNETTE trademarks on its website to promote and describe plaintiff’s products and as metatags. In addition, defendant stated on its site that it was knowledgeable about all the latest developments regarding plaintiff’s products and manufacturing processes.

Trial Court Proceedings
Plaintiff sought a temporary restraining order, arguing that defendant’s website was confusing to users. Although independent dealers can use a manufacturer’s trademark to resell the manufacturer’s products, the court noted that they must do so in a way that is not likely to cause confusion or imply that the reseller is associated with the manufacturer.

Here, defendant’s representations regarding its knowledge about plaintiff’s products and manufacturing processes, and the absence of any statements that defendant was not an authorized dealer of plaintiff’s products, misled consumers into believing that defendant was affiliated with plaintiff. Plaintiff thus established “some likelihood of success” on the merits of its trademark-infringement claim, and the court enjoined defendant from “using, in trade or advertising in any fashion, [plaintiff’s] trademark on [defendant’s] website.” Moreover, because defendant’s website was misleading, it also enjoined defendant from using plaintiff’s marks as metatags. The court noted, however, that had defendant’s website not been confusing to users, an injunction against defendant’s use of plaintiff’s marks as metatags “would be improper because such use merely directs customers to the location where they may purchase genuine branded goods from a reseller that does not hold itself out to be anything but an independent retailer unaffiliated with [the manufacturer].”

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