cause mistake or to deceive." 15 U.S.C. § 1114(1). A
case of infringement is shownwhen a party's (1) mark is distinctive and worth protecting, (2) the opposing party was notauthorized to use it, and (3) unauthorized use of the trademark is likely to cause confusion as tothe origin or sponsorship of the products in question.
Bliss Salon Day Spa v. Bill World LLC
,268 F.3d 494, 496-97 (7th Cir. 2001);
Neopost Industrie B.V. v. PFE Int'l, Inc
., 403 F. Supp.2d669, 684 (N.D. Ill. 2005).Based on the briefs and extensive exhibits submitted, the Court finds that Deckers meetsthe standard for a preliminary injunction. The first two elements of a
infringementcase are clearly shown: Deckers' UGG trademark is registered as U.S. Trademark RegistrationNo. 3,050,925, and the company has never licensed it to any of the Defendants for use.Declaration of Leah Evert-Burks at ¶ 3; Declaration of Justin Gaudio at ¶ 9. The third factorrequires a more complex analysis involving seven factors: (1) the similarity between the marksin appearance and suggestion; (2) the similarity of the products; (3) the area and manner of concurrent use; (4) the degree of care likely to be exercised by consumers; (5) the strength of thecomplaint's mark; (6) actual confusion;
and, (7) the infringing party's intent to palm off aproduct as that of another.
Eli Lilly & Co. v. Natural Answers, Inc
., 233 F.3d 456, 461 (7th Cir.2000) (citation omitted). No one factor is determinative, but special consideration should begiven to the potential for confusion and the defendant's intent.
G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc
., 873 F.2d 985, 999 (7th Cir. 1989). Confusion is also the central issue
refers to evidence of actual confusion,
, 233 F.3d at 462, courtsfrequently analyze this factor in terms of the likelihood for confusion.
Facebook, Inc.v. Teachbook.com LLC
, — F. Supp.2d —, No. 11 C 3052, 2011 WL 4449686, at *7 (N.D. Ill.Sept. 26, 2011);
Lorillard Tobacco Co. v. Amoco & Food Shop 5, Inc
., 360 F. Supp.2d 882, 886(N.D. Ill. 2005).- 3 -
Case: 1:11-cv-07970 Document #: 37 Filed: 12/14/11 Page 3 of 61 PageID #:671