Reno Air Racing Association, Inc. v. Jerry McCord

Rule 65(b) permits an ex parte TRO only when immediate and irreparable injury will occur before the opposing party can be heard, and when the applicant’s attorney supplies a written certification explaining notice efforts and why notice should not be required. Ex parte relief is exceptional because it departs from the ordinary rule that a party receives notice and an opportunity to be heard; it should be limited to preserving the status quo only until a prompt hearing can occur.

Reno Air knew where McCord was and had dealt with him before, so this was not a case in which notice was impossible. Nor did Reno Air establish the narrow alternative justification that notice would make later relief futile because McCord would hide or destroy goods. Its application relied on counsel’s conclusory assertion that alleged infringers at well-known events commonly conceal merchandise, rather than evidence tying that risk to McCord.

Reno Air did not disclose its earlier contacts with McCord, its failure to enforce its alleged rights after those contacts, or facts showing that McCord—who had long worked in the Reno area—was likely to flee. Allowing such generalized assertions to justify ex parte orders would effectively erase Rule 65’s notice requirement. Because the TRO should not have issued without notice, it could not support contempt sanctions.

Rule 65(d) requires an injunction to be specific and to describe restrained conduct in reasonable detail. A vague injunction cannot support contempt, because a person subject to an order must be able to tell what conduct the court requires or forbids without guessing.

The TRO’s incorporation of Exhibit F was not independently fatal because the exhibit was attached to the order and served on McCord. But incorporation by reference is a rare exception, particularly at the start of litigation, when the recipient lacks prior litigation context that might explain the referenced materials.

More fundamentally, neither the TRO nor Exhibit F identified the actual trademarks. Exhibit F showed a T-shirt containing several words, airplanes, a checkered pylon, and other design elements, but it did not say whether the protected mark was the complete shirt design, the phrase “Reno Air Races,” the pylon, the airplanes, some combination of those features, or something else. The added prohibition on “confusingly similar variations” only magnified that uncertainty. A layperson served with an immediately effective TRO should not have to resolve such trademark-law ambiguity, so the contempt finding and related sanctions were vacated.

An incontestable registration is conclusive evidence of a mark’s validity, although a defendant may still prove that the mark has become generic. The defendant bears that burden by a preponderance of the evidence.

McCord effectively conceded Reno Air’s exclusive right to its distinctive composite logo, yet sought assurance that he could freely use pylons generally. The court declined to issue an advisory opinion about hypothetical future designs. It evaluated validity by viewing the registered logo as a whole: the stylized checkered pylon, two airplane silhouettes, and their flight paths. Even if individual components might be commonplace, the composite can function as a source-identifying mark, and McCord did not prove it had become generic.

McCord’s descriptiveness argument was foreclosed by the mark’s incontestable status. Under the Lanham Act, mere descriptiveness and lack of secondary meaning are not grounds for attacking an incontestable registration.

Trademark infringement turns on likely consumer confusion about a product’s source, affiliation, or sponsorship. The appellate court reviews the district court’s likelihood-of-confusion findings for clear error, rather than reweighing the evidence or comparing the designs anew from the appellate bench.

The district court made supported findings that Reno Air’s marks were strong; McCord sold low-cost merchandise immediately outside the event gates; his goods paired airplane-and-pylon imagery with “Reno Air Races”; customers asked whether he was selling official merchandise; buyers exercised little care; and McCord intended to benefit from Reno Air’s goodwill. Evidence of actual confusion strongly supported the prediction of future confusion.

McCord focused on differences between his artwork and the registered pylon logo. But similarity is assessed as consumers encounter the marks in the marketplace, not in isolation, and it is only one Sleekcraft factor. In the real-world setting—unofficial event merchandise sold beside the air show gates and bearing Reno Air’s undisputed event name—the district court could reasonably find the composite presentations substantially similar and confusing.

The Lanham Act authorizes equitable injunctions to prevent violations of a trademark owner’s rights. Applying traditional equitable principles, the district court found continuing infringement and a likelihood of confusion that monetary damages alone would not adequately remedy.

McCord characterized the injunction as barring all depictions of checkered pylons. The Ninth Circuit rejected that reading. The final judgment expressly defined the protected marks as the pylon logo and “Reno Air Races,” unlike the deficient TRO, and prohibited only those marks and confusingly similar variations.

McCord again sought a broad declaration that any future pylon depiction would be lawful. The court declined to decide hypothetical infringement questions. On the record before it, the district court had found infringement of Reno Air’s specific marks and a continuing likelihood of confusion, so granting permanent relief was not an abuse of discretion.

Laches may bar a Lanham Act claim when a trademark owner knowingly permits infringement without objection for an unreasonable time and the delay prejudices the defendant. Because the Lanham Act supplies no limitations period, the court borrowed Nevada’s three-year fraud or catchall limitations period to guide the laches analysis.

The record did not establish that Reno Air knew of McCord’s infringing activity before 2000, and the earliest date it reasonably should have known was 1999, when McCord began selling outside the air-race gates. Reno Air filed suit in 2002, within three years. That timely filing created a strong presumption that laches did not apply.

McCord’s evidence of earlier retail sales was sparse and did not show Reno Air’s knowledge. He also failed to establish prejudice sufficient to overcome the presumption against laches. The district court therefore acted within its discretion in rejecting the defense.