Channing Bete exclusively licensed a curriculum for children’s social and emotional development, known as the PATHS program, from the developers of the program. Channing Bete did not train on the program directly, sublicensed other organizations to implement it. One such entity, defendant PATHS Education Worldwide (“PEW”), obtained a sublicense in 2013, after Channing Bete had obtained a registration of the PATHS mark. In 2019, in preparation to sell the PATHS intellectual property, Channing Bete notified PEW that it was terminating PEW’s license effective April 30, 2019, including any rights to the PATHS mark. Channing Bete filed suit against developer Mark Greenberg in March 2019, and amended the complaint to include counts for trademark infringement, tortious interference, and breach of its NDA, and in September 2020 sought a preliminary injunction.
Magistrate Judge Robertson recommended denial of the motion on several grounds. She found that Channing Bete had not demonstrated a likelihood of success on the merits. Channing Bete had pointed to a pair of orders that came to it but that were addressed to PEW. Judge Robertson found two instances of confusion over a 16 months period of time between the revocation of the license and the filing of the motion were far too few to demonstrate a real likelihood of confusion. She further found that PEW’s use and re-registration of its original domain name that included the PATHS mark did not demonstrate an intention to cause confusion, as PEW had created a new domain that lacked the PATHS mark in either the domain name or on the site itself, noting that the original domain merely automatically directed viewers to the new site that was clearly and properly marked, and that any initial confusion resulting from this is not cognizable under trademark law. She found that PEW’s use of the PATHS mark in a grant application occurred prior to their receiving notice of termination, and that any subsequent use of the PATHS mark in the application took place before the sublicense terminated, thus again failing to show a likelihood confusion or intent to deceive. Finally, Judge Robertson also determined that there was no showing of irreparable harm if an injunction was not granted, pointing to the length of time, about a year, between learning of the alleged infringement and seeking the injunction. Accordingly, the motion for a preliminary injunction was denied.
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