In an opinion Friday, Judge Subramanian denied toymaker Wham-O’s renewed motion for an ex parte temporary restraining order against a slate of anonymous online sellers marketing “Hula Hoop”-labeled products, holding for the second time that Wham-O hadn’t shown a likelihood of success on its trademark claims given evidence in its own record suggesting the mark is generic.
In May, Judge Subramanian refused to grant the first requested TRO because Whamo-O failed to submit “the type of evidence that’s typically used to show whether a mark is generic, like dictionary usage, trade person testimony, or customer surveys.” And, he noted, some dictionaries indicate that “hula hoop” simply describes “the thing itself”—“a large plastic ring that you spin around your waist by moving your hips.” In other words, the mark may be generic.
Wham-O tried a different tack on its renewed motion: since HULA-HOOP is federally registered, it argued, the burden to prove genericness belongs to an accused infringer, not to Wham-O—and no accused infringer could carry the burden because the application was being brought ex parte. Judge Subramanian rejected the move, explaining that Wham-O’s own burden to justify emergency relief requires it to grapple with defenses the missing defendants would otherwise raise themselves:
In a normal case, defendants would be here opposing Wham-O’s motion and raising those defenses themselves. But Wham-O brings this application ex parte and under seal, so defendants have not even received notice of the suit. Under these circumstances, the Court may consider “affirmative defenses available to the defendant[s], especially when they have obvious merit and their applicability is evident from the face of the complaint.” This is true even where a defendant has received notice and defaulted, and applies with even greater force where, as here, defendants have no idea they’ve even been sued.