A motion for preliminary injunctive relief that would otherwise be deemed to be untimely, may be viable if there have been recent material changes to the circumstances. For example, plaintiff, which had been tolerating a geographically remote third-party, may contest that party’s recent expansion into plaintiff’s geographic market.

Here, in a dispute between two upstate New York business over the mark LAKE EFFECT for ice cream, plaintiff’s motion for urgent relief was denied, as it failed to establish that ‘changed circumstances’ offset its excessive delay in protesting defendant’s somewhat lengthy use.

Defendant had been selling ice cream in a location 40 minutes from plaintiff. Plaintiff began business discussions with defendant in 2013, coinciding with defendant’s expansion of distribution into a third party shop from 2012 until 2014. Defendant opened an ice cream store under its own mark in 2017. Plaintiff resumed negotiations, then protested, and then filed for a preliminary injunction in February 2019. It argues that:

(1) defendant’s original store was too far away for it to take action;

(2) plaintiff wasn’t aware of the 2012 location (even though the location was near its own store, and plaintiff had been negotiating with defendant during this time); and

(3) plaintiff had protested promptly after learning of the 2017 location.

Held: (1) plaintiff failed to establish that defendant’s original location was in fact outside of plaintiff’s market (but do people really drive 40 minutes for ice cream?);

(2) plaintiff’s claim of ignorance of the 2012 usage was not plausible; and

(3) even if plaintiff had not been aware of the 2012 usage, it still had waited too long to protest the 2017 location.

199 Delaware Avenue v. Lake Effect Artisan Ice Cream et. al., 1:19-cv-00224 eaw (WDNY April 18, 2019)


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