O'brien Corporation, an Indiana Corporation, Plaintiff-appellee, v. Preston Ray Griff, Individually and Doing Business As Fullero'brien, Weather King, Weather King Waterproofing,defendant-appellant, 967 F.2d 589 (9th Cir. 1992)

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US Court of Appeals for the Ninth Circuit - 967 F.2d 589 (9th Cir. 1992)

Submitted June 12, 1992. *Decided June 17, 1992


Before JAMES R. BROWNING, ALDISERT**  and PREGERSON, Circuit Judges.


MEMORANDUM*** 

The district court did not abuse its discretion in granting a preliminary injunction prohibiting Griff from using the trademark "Weather King."

O'Brien demonstrated probable success on the merits. An incontestable trademark may not be challenged as merely descriptive. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196 (1985). The district court's finding of a likelihood of confusion was not clearly erroneous: (1) O'Brien's trademark is distinctive and has been used for 30 years; (2) Griff was using the same trademark; (3) Griff used the trademark to offer essentially the same services; (4) both parties conducted business in the Bay Area and advertised in the Pacific Bell Smart Yellow Pages; (5) a confused customer complained to O'Brien; and (6) there was evidence Griff infringed on the trademark intentionally, including his previous infringement of other trademarks. See Ocean Garden, Inc. v. Marktrade Co., Inc., 953 F.2d 500, 506-07 (9th Cir. 1991) (discussing factors considered in determining likelihood of confusion). While evidence of actual confusion was weak, "proof of actual confusion is only one factor to be weighed in determining likelihood of confusion...." Eclipse Assoc. LTD. v. Data Gen. Corp., 894 F.2d 1114, 1118 (9th Cir. 1990).

O'Brien also demonstrated the possibility of irreparable injury. Damage to goodwill qualifies as irreparable harm. Rent-A-Center, Inc. v. Canyon Television & Appliance Rental, Inc., 944 F.2d 597, 603 (9th Cir. 1991). If Griff continued to use the "Weather King" trademark, O'Brien might have suffered a loss of goodwill.

AFFIRMED.

 *

The panel finds this case appropriate for submission without oral argument pursuant to 9th Cir.R. 34-4 and Fed. R. App. P. 34(a)

 **

Honorable Ruggero J. Aldisert, Senior Judge, United States Court of Appeals for the Third Circuit, sitting by designation

 ***

This disposition is not appropriate for publication and may not be cited to or by the courts of this circuit except as provided by 9th Cir.R. 36-3