## Facts

- OMEGA, S.A. (Omega) owned a federal registration for the trademark OMEGA for watches.
- S & N Jewelry Inc. and other retailer defendants sold watches in New York City’s Chinatown shopping district.
- The watches sold by defendants displayed the word “OMEGA” on the watch face.
- The OMEGA mark on defendants’ watches was indistinguishable in size, placement, and appearance from the OMEGA mark used on watches manufactured by Omega.
- Omega sued defendants for trademark infringement under § 32 of the Lanham Act, alleging the watches were counterfeit.
- While the case was pending, Omega moved for a preliminary injunction to stop defendants from selling watches bearing the counterfeit OMEGA mark.

## Issues

1. Whether Omega was entitled to a preliminary injunction under the Lanham Act based on defendants’ sale of watches bearing an indistinguishable OMEGA mark.
2. Whether Omega showed irreparable harm from continued sales of counterfeit OMEGA-marked watches sufficient to justify preliminary injunctive relief.

## Decision

- The court (Leisure, J.) granted Omega’s motion for a preliminary injunction.
- The court found Omega showed a strong likelihood of success on the merits because Omega held a valid federal registration for OMEGA and defendants were selling watches bearing an indistinguishable OMEGA mark on identical goods.
- The court found irreparable harm because continued sales of counterfeit OMEGA-marked watches would damage Omega’s goodwill and reputation in ways not readily cured by money damages alone.

## Legal Principles

- Under Lanham Act § 32 (15 U.S.C. § 1114), unauthorized use in commerce of a registered mark in connection with goods is actionable where the use is likely to cause consumer confusion as to source, sponsorship, or affiliation.
- A preliminary injunction may issue where the movant shows (1) likelihood of success on the merits and (2) irreparable harm absent injunctive relief; in the alternative, courts may consider serious questions going to the merits and a balance of hardships that favors the movant.
- Use of an identical or indistinguishable mark on the same type of goods strongly supports a finding of likely confusion; when the mark and goods are effectively the same, the risk of confusion is especially high.
- Sales of counterfeit goods can constitute irreparable harm because counterfeiting threatens the trademark owner’s control over its brand reputation and the quality associated with its mark.

## Conclusion

In OMEGA, S.A. v. S & N Jewelry Inc., the Southern District of New York granted Omega a preliminary injunction stopping Chinatown-area retailers from selling watches bearing an indistinguishable OMEGA mark, finding Omega likely to succeed on its § 32 Lanham Act claim and that ongoing counterfeit sales would cause irreparable damage to Omega’s goodwill and reputation.


OMEGA, S.A. v. S & N Jewelry Inc., 1992 WL 142746 (1992)