## Facts

- Las Vegas Diamondbacks, Inc. (LVD) was an amateur softball club based in Nevada.
- LVD sponsored local softball tournaments in 1991 and 1992 using the name “Diamondbacks.”
- After 1992, LVD did not sponsor another tournament until February 1995.
- LVD incurred almost $48,000 in expenses, but most of those costs were not for advertising or otherwise building “Diamondbacks” recognition as a brand for LVD.
- LVD never sought federal trademark registration for “Diamondbacks.”
- LVD sold virtually no merchandise bearing the “Diamondbacks” name.
- In 1992, Major League Baseball (MLB) established the Arizona Fall League (AFL), which included a club called the “Chandler Diamondbacks.”
- In December 1992 and February 1993, AFL applied to the United States Patent and Trademark Office to register “Chandler Diamondbacks.”
- The USPTO granted those unopposed applications in August 1993 and May 1994.
- In March 1995, MLB announced it had awarded an expansion franchise to Arizona-based bidders and that AFL was in the process of assigning its rights in “Diamondbacks” to Arizona Diamondbacks, Inc. (AD).
- AD had spent more than $390,000 advertising and publicizing the “Arizona Diamondbacks” name.
- Major League Baseball Properties, Inc. (MLBP), MLB’s exclusive licensing agent for merchandise, and MLBP’s licensees may have made nonrecoverable investments tied to “Arizona Diamondbacks” merchandise.
- AD and MLBP did not object to LVD’s continued use of “Diamondbacks” for LVD’s amateur softball activities.
- LVD sued AD and MLBP for common-law trademark infringement and sought a preliminary injunction to bar AD and MLBP from selling Arizona Diamondbacks merchandise in Nevada and Arizona.
- The district court held a hearing on LVD’s request for a preliminary injunction.

## Issues

1. Whether LVD showed protectable common-law trademark rights in “Diamondbacks,” including priority and scope of any rights in Nevada and Arizona.
2. Whether LVD showed a likelihood of consumer confusion between its use of “Diamondbacks” for amateur softball tournaments and defendants’ use of “Arizona Diamondbacks” for a professional baseball team and licensed merchandise.
3. Whether LVD satisfied the requirements for preliminary injunctive relief, including likelihood of success on the merits and equitable factors.

## Decision

- The court denied LVD’s motion for a preliminary injunction.
- The court concluded LVD had not made the showing required for preliminary relief on its common-law trademark claim.
- The court declined to bar AD and MLBP from selling Arizona Diamondbacks merchandise in Nevada and Arizona at the preliminary-injunction stage.

## Legal Principles

- Common-law trademark rights come from actual use of a designation as a mark in connection with goods or services, and the scope of protection generally matches the strength and continuity of that use.
- Limited, sporadic, or weakly publicized use may support only narrow and localized rights, making broader marketplace restrictions harder to justify.
- A preliminary injunction is an extraordinary remedy; the movant must show a sufficient likelihood of success on the merits and that equitable considerations support immediate relief.
- In evaluating equitable relief, courts consider the relative hardships and the practical consequences of an injunction, including disruption to established branding, licensing, and marketplace activity.
- Federal trademark registrations and substantial investment in a contested name can weigh against preliminary relief where the plaintiff’s use appears modest and the claimed harm is not well supported.

## Conclusion

The district court denied LVD’s request to stop Arizona Diamondbacks merchandise sales because LVD’s prior use of “Diamondbacks” for amateur softball tournaments was limited and interrupted, LVD showed little evidence of brand-building or merchandising under the name, and the record did not justify the extraordinary step of restricting the MLB expansion team’s widely publicized name and related licensed merchandise pending a final decision.


Las Vegas Diamondbacks, Inc. v. Arizona Diamondbacks, Inc., CV-S-95-344-DWH (1995)