## Facts

- Acushnet manufactured golf balls and owned registered trademarks including TITLEIST, ACUSHNET, PINNACLE, and PRO V1.
- Nitro acquired used golf balls and resold them as (1) “recycled” balls that were washed and repackaged and (2) “refurbished” balls subjected to stripping, repainting, clear coating, and reapplication of the original manufacturer’s marks.
- Nitro stamped refurbished balls with legends such as “USED & REFURBISHED BY SECOND CHANCE” or “USED AND REFURBISHED BY GOLFBALLSDIRECT.COM,” and some balls also bore a Nitro mark.
- Nitro’s refurbished-ball packaging included conspicuous disclaimers stating the balls were used/refurbished, warning of potential performance variations from new balls, and describing refurbishing steps (e.g., stripping, painting, stamping, clear coating).
- Acushnet contended Nitro’s refurbishing materially altered performance, quality, and appearance so that the balls should not be sold bearing Acushnet’s marks.
- In consolidated litigation in the Southern District of Florida, Acushnet sought a preliminary injunction barring Nitro from selling refurbished balls bearing Acushnet marks; the district court denied the motion.
- Acushnet appealed the denial to the Federal Circuit.

## Issues

1. Whether the district court abused its discretion in finding Acushnet failed to show a reasonable likelihood of success on Lanham Act infringement claims based on likely consumer confusion from Nitro’s sale of refurbished balls bearing Acushnet marks with Nitro’s legends and packaging disclaimers.
2. Whether the district court abused its discretion in finding Acushnet failed to show a likelihood of success on a federal trademark dilution claim requiring actual dilution.
3. Whether, under the preliminary-injunction factors and abuse-of-discretion review, the denial of injunctive relief should be reversed.

## Decision

- The Federal Circuit affirmed the denial of the preliminary injunction.
- The court held the district court did not abuse its discretion in concluding Acushnet failed to show a reasonable likelihood of success on trademark infringement because the prominent legends and disclaimers reduced the likelihood of consumer confusion.
- The court also held Acushnet failed to show actual dilution as required under the then-governing federal dilution statute.
- On the limited preliminary-injunction record, the district court’s application of governing standards and its factual findings were within permissible bounds.

## Legal Principles

- A preliminary injunction in a trademark case requires, among other things, a showing of a reasonable likelihood of success on the merits, including likely consumer confusion for infringement claims.
- Resale of repaired or reconditioned trademarked goods may be permissible when the goods are clearly and distinctively marketed as used or reconditioned and the seller avoids deceiving consumers about the goods’ condition and the refurbisher’s role.
- In assessing likely confusion for used/refurbished goods, clear point-of-sale disclosures and markings identifying refurbishment may weigh strongly against confusion about source, sponsorship, approval, or warranty.
- Under the pre-2006 federal dilution standard, injunctive relief required proof of actual dilution, not merely a likelihood of dilution.

## Conclusion

The court upheld denial of preliminary injunctive relief because Nitro’s conspicuous ball markings and packaging disclosures framed the products as used and reconditioned, undercutting a showing of likely confusion, and because Acushnet did not provide evidence of actual dilution necessary for a dilution injunction.


Nitro Leisure Prods., L.L.C. v. Acushnet Co., 341 F.3d 1356 (Fed. Cir. 2003)