Arro-Mark v. Warren — “Mighty Marker” Trademark Injunction Denied Where Reseller Did Not Itself Use the Mark on Third-Party Listings

Background

Arro-Mark Co. LLC is a closely held, family-owned manufacturer of inks and paints for permanent marking devices. It owns U.S. Trademark Registration No. 3,032,336 for the word “Mighty Marker,” which it uses on most of its markers and pens, including its “High Purity” markers. SKM Industries, Inc. works in the same industry, and for nearly a decade before the lawsuit Arro-Mark sold Mighty Marker products to SKM for resale. The relationship deteriorated, and in November 2022 Arro-Mark sued SKM, its principal Shanta Syal and other defendants, alleging among other things trademark infringement and trade secret misappropriation. In December 2022 the court entered a consent order that, among other things, bars the defendants from marketing, producing, distributing or selling Arro-Mark’s trade secrets. The court denied an earlier request to hold the defendants in contempt and enjoin infringement of the “Mighty Marker” and “Bleed-Thru” marks in March 2024.

In September 2026, Arro-Mark filed a combined motion for a preliminary injunction, a contempt order and sanctions. It argued that the defendants marketed Mighty Marker MM-07 and MM-08 High Purity markers through third-party websites, including Raptor Supplies, Agriflexcarlow.com, Amazon.com and Google Images, while identifying SKM as the manufacturer. Arro-Mark said this was misleading, likely to confuse customers, and created a risk that buyers would receive expired, non-conforming or unauthorized products, and that it violated the consent order. The defendants responded that they do not own or control the websites, did not authorize the listings, asked for them to be removed, cannot be liable for third parties’ conduct, are protected by the first sale doctrine and that Arro-Mark’s claimed harms are speculative.

The Court’s Holding

Judge Jamel K. Semper denied the motion in its entirety, without oral argument. A preliminary injunction requires the moving party to show a likelihood of success on the merits and that it is more likely than not to suffer irreparable harm without relief. If both are shown, the court weighs the harm to the other side and the public interest. Failure to establish either of the first two factors defeats the request.

Trademark infringement and false association. A trademark infringement claim requires a valid, legally protectable mark, ownership of the mark, and the defendant’s use of the mark to identify goods or services in a way likely to cause confusion. The defendants did not dispute that Arro-Mark owns a valid registered mark, so the dispute centered on whether the third-party listings reflect the defendants’ use of it. The court held the present record did not show that the defendants themselves used the mark. Actual use of a protected mark is a prerequisite to an infringement action. The record indicated that Raptor Supplies is a company registered in England that owns raptorsupplies.com, Agriflexcarlow.com belongs to an Irish company, the Google images appeared to have been scraped from those sites, and the Amazon listing was placed by another company that was not an SKM customer and acted without SKM’s authorization. Arro-Mark itself referred to the sites as “third-party websites,” and the defendants asked Raptor Supplies to remove the images in July 2023 and obtained removal of the Agriflex listing. Arro-Mark argued in reply that website ownership was irrelevant but cited no authority. Because false association claims have the same elements as infringement claims, that claim failed for the same reason.

First sale doctrine. Independently, the court found Arro-Mark had not shown that the first sale doctrine does not apply. Under the doctrine, an authorized first sale of a trademarked product extinguishes the owner’s control over who later resells it in its authorized form, and if the resold product is genuine there is no infringement. In the Third Circuit, the trademark owner bears the burden of showing that the products sold are not genuine. Arro-Mark acknowledged that it sold Mighty Marker High Purity markers to SKM for resale until about 2022, the defendants submitted evidence of sales from 2013 to 2022, and Arro-Mark offered no evidence that the contested products are not genuine.

Counterfeiting. A counterfeiting claim requires infringement and intentional use of the mark knowing it was counterfeit or willful blindness to that fact. The claim failed at the first step because infringement was not shown, and the record also suggested that the defendants did not own, control or authorize the use of the mark on the websites and sought its removal.

Irreparable harm. Even if Arro-Mark had shown a likelihood of success, it did not show irreparable harm. It identified no specific instance of customers being confused or receiving expired or non-conforming products, and instead relied on the “possibility of a remote future injury,” which cannot support an injunction. Because both threshold factors failed, the court did not weigh the balance of harms or the public interest.

Contempt and sanctions. Civil contempt requires clear and convincing evidence that a valid order existed, the defendants knew of it and the defendants disobeyed it. The consent order and the defendants’ knowledge of it were not in doubt, but Arro-Mark did not allege that its trade secrets were marketed or sold in the challenged website postings, let alone by the defendants. With reason to doubt the wrongfulness of the defendants’ conduct, and ambiguities resolved in favor of the party charged, the court declined to find contempt or award sanctions.

Key Takeaways

• A trademark owner seeking to hold a reseller responsible for online listings must show that the reseller itself used the mark, not merely that its products or name appear on third-party sites.
• Taking steps to have unauthorized third-party listings removed supports a defendant’s position that it did not use or authorize the use of the mark.
• In the Third Circuit, the trademark owner has the burden to show that goods resold under its mark are not genuine, so a prior history of authorized sales to the reseller is significant.
• Speculation about customer confusion or the risk of receiving non-conforming products does not establish irreparable harm without specific instances.

Why It Matters

Manufacturers who end distribution relationships often find their branded goods continuing to appear online through former resellers and others. The ruling shows that a request for emergency relief against a former reseller requires evidence tying the specific listings to the reseller and evidence that the goods are not genuine or that harm is actually occurring. Resellers should note the value of documenting prompt takedown requests for listings they do not control.

The ruling denies preliminary relief only. It is not a final decision on Arro-Mark’s trademark, trade secret or other claims, which remain pending.