In May of 2007, Sports Imaging Photography of Utah sent a cease-and-desist letter to Utah School & Sports Imaging requesting it to stop using the “sports imaging” name. Both businesses offer photography services for schools and sports leagues. Utah School refused Sports Imaging's request, claiming that the terms “imaging,” “sports imaging” and “sports imaging photography” are generic and cannot be trademarked. Sports Imaging filed a trademark infringement suit in the United States District Court, District of Utah, against Utah School seeking a preliminary injunction prohibiting further use of its trademark.
The court denied Sports Imaging's request for an injunction because: 1) it did not register its trademark and was therefore not entitled to the presumption of validity that accompanies a registered mark; and 2) terms like sports, photography, and imaging, which describe a relevant class of goods are not entitled to trademark protection.
The court also reasoned that even if the marks were descriptive, rather than generic, Sports Imaging would not be able to demonstrate that the marks had acquired a secondary meaning, which is a necessary element for protection. Although, Sports Imaging had been using its marks for 27 years, it never sought to register the words in its logo, and its request to register its logo was unsuccessful.
The court could not conclude that Sports Imaging, at this preliminary stage in the matter, had a likelihood of success on the merits. If you are seeking to protect a trademark and are considering filing a request for an injunction, it is important to evaluate the likelihood of success on the merits.