A preliminary injunction is an extraordinary remedy that requires showing:

1.  a likelihood of success on the merits;
2.  irreparable injury if the injunction is denied;
3.  the threatened injury outweighs the injury the injunction would cause the party to be enjoined; and
4.  the injunction would not adversely affect the public interest.

See Beltronics USA, Inc. v. Midwest Inventory Distribution, LLC, 562 F.3d 1067, 1070 (10th Cir. 2009) (citation omitted).

“The purpose of a preliminary injunction is not to remedy past harm but to protect plaintiffs from irreparable injury that will surely result without their issuance.” Schrier v. Univ. Of Co., 427 F.3d 1253, 1267 (10th Cir. 2005).

Irreparable harm is more than merely serious or substantial harm; rather the injury “must be certain, great, actual, and not theoretical,” as well as imminent. Heideman v. S. Salt Lake City, 348 F.3d 1182, 1189 (10th Cir. 2003). Indeed, irreparable harm requires “a significant risk that [it] will experience harm that cannot be compensated after the fact by money damages.” Fish v. Kobach, 840 F.3d 710, 751 (10th Cir. 2016); Greater Yellowstone Coal. v. Flowers, 321 F.3d 1250, 1258 (10th Cir. 2003) (“purely speculative harm does not amount to irreparable injury”).

“Because a showing of probable irreparable harm is the single most important prerequisite for the issuance of a preliminary injunction, the moving party must first demonstrate that such injury is likely before the other requirements will be considered.” First W. Cap. Mgmt. Co. v. Malamed, 874 F.3d 1136, 1141 (10th Cir. 2017).

EMPOWER

On July 5, 2023, Empower Annuity Insurance Company of America sought a preliminary injunction to prevent Empower Finance from (1) advertising with the EMPOWER name on social media; (2) using the EMPOWER name in connection with the release of the “Empower Thrive” line of credit; and (3) using the EMPOWER name on withdrawals from consumer bank accounts. Judge Charlotte Sweeney of the District of Colorado denied the motion for preliminary injunction on September 12, 2023. Empower Annuity Ins. Co. of Am. v. Empower Finance, Inc., No. 1:23-cv-00062 (D. Colo. Sept. 12, 2023).

Plaintiff Empower Annuity (“EA”), a finance services company, has been operating under the name EMPOWER since at least 2014, and has invested over $160 million in advertising on television and social media, among other means

Defendant Empower Finance (“EF”) also a financial services company that launched a mobile application in May 2017. Since 2016, EF has spent $45 million on marketing and advertising. In 2020, EF announced a cash advance feature on its mobile application for $8 a month after a free trial period.

            The central issue underlying Plaintiff's motion is 218 communications it received from May 16 to June 28, 2023, from consumers (ECF No. 40 at 3) that ultimately caused Plaintiff to implement “a new process” to track and address these communications (ECF 40-6 at 4). Plaintiff alleges that over 58 of these communications were from consumers who believed Plaintiff, instead of Defendant, had been withdrawing $8 from their bank accounts monthly and that at least 12 of these consumers said the withdrawals appeared under the EMPOWER name on their bank statements.

***

            Here, Plaintiff contends that it has experienced “a loss of control over its reputation and goodwill” because of, among other things, 218 calls over six weeks from consumers who were, on the majority, “upset, angry, confused and frustrated” with Defendant's cash advance mobile application function (ECF No. 40 at 19). Some of these calls “approach or exceed[ed]” 15 minutes in length (ECF 40 at 19). Plaintiff explains that it cannot resolve the consumers' issues which, in turn, causes a loss of control over its reputation (ECF 40 at 19). It also contends it has diverted “significant resources” to address these instances of confusion.

The Court found, however, that there was no evidence EA lost any business, revenue, or that it faces a significant risk of losing business or revenue because of the communications from customers who felt confused and were seeking more information. This was insufficient to establish the loss of business so significant as to constitute irreparable harm.

Indeed, the loss of customers and consultants and the general decline of value as a business can be quantified in money damages. See DTC Energy Grp., Inc. v. Hirschfeld, 912 F.3d 1263, 1272 (10th Cir. 2018); Farm Bureau Prop. & Cas. Ins. Co. v. Biggs, No. 2:20-CV-2558- HLT-KGG, 2021 WL 1348317, at *5-6 (D. Kan. Feb. 25, 2021) (finding the plaintiffs failed to demonstrate irreparable harm based upon “loss of customers and goodwill” where the evidence showed only fourteen customers and only seven canceled their business with plaintiff).

Furthermore, the Court found there was not a significant risk of future harm. There was a specific period of six weeks in 2023 during the NBA playoffs where Defendant EF launched a new social media campaign that caused an increase in phone calls.

But Plaintiff fails to show how this harm will continue now that this period has passed. Because the harm Plaintiff alleges was caused by Defendants activities during a discreet period of time in the past, the Court can only conclude that the harm caused could be compensated with money damages after the fact

As for the alleged 218 instances of actual confusion, the Court found that this did not establish a likelihood of success on the merits where the Plaintiff EA “operates with a multi-billion-dollar budget and does not operate only locally.” Furthermore, consumers exercise a high degree of care in selecting their financial service, citing Elevate Fed. Credit Union v. Elevations Credit Union, No. 120CV00028DAKJCB, 2022 WL 798901, at *22 (D. Utah Mar. 16, 2022), aff'd, 67 F.4th 1058 (10th Cir. 2023).

The Court distinguished Central Bancorp, Inc. v. Central Bancompany, Inc., 385 F. Supp. 3d 1122, 1142 (D. Colo. 2019) which had found that eight uncontroverted instances of actual confusion was not de minimis because “for a relatively small operation” that tries specifically to promote its local community ties, an arguably “small amount of confusion has greater significance.”

And the Court also distinguished Heartland SPCA Animal Med. Clinic, LLC, 861 F. Supp. 2d 1293, 1303 (D. Kan. 2021) which had granted a preliminary injunction in which there were dozens of instances of confusion because there was no evidence relating to the sophistication of animal care consumers in the relevant market.

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.