SWAROVSKI AKTIENGESELLSCHAFT; SWAROVSKI NORTH AMERICA LIMITED, Plaintiffs, Appellees, v. BUILDING #19, INC., Defendant, Appellant., 704 F.3d 44

Summary

The reseller obtained a number of the trademark holders' crystal figurines that it hoped to resell and designed a newspaper advertisement emblazoned with the trademarked name in large print font. The preliminary injunction limited the reseller's use of the name to a much smaller font size. Without endorsing any particular approach to the nominative fair use doctrine, the appellate court determined that remand was warranted because (1) the district court erred by granting the trademark holders' request for a preliminary injunction without first finding that the reseller's use of the mark in the proposed advertisement was likely to cause confusion, and (2) there was no indication in the record that the district court concluded that the trademark holders would suffer irreparable harm if the district court allowed the advertisement to run as proposed.