I Think That I Shall Never See, Trademark Injunctions If Confusion Is Unlikely

In its recent decision in Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc., a case involving claims for breach of contract and trademark infringement, the U.S. Court of Appeals for the First Circuit affirmed a preliminary injunction based upon the contract claims, but vacated the portion of the order requiring trademark attribution. In an opinion authored by retired Supreme Court Justice David Souter, sitting by designation and writing for a three-judge panel, the First Circuit held that the District Court had no basis upon which to include trademark relief in the injunction.

Plaintiff Arborjet manufactures and sells TREE-äge, a chemical solution that protects trees from various pests. Defendant Rainbow Treecare was at one time the contractually exclusive distributor of TREE-äge. After termination of the agreement between the parties, Rainbow began to market ArborMectin, which it touted on its website to be an improvement upon TREE-äge. Rainbow did