United States District Court, D. Arizona
G. CAMPBELL UNITED STATES DISTRICT JUDGE
FLP LLC moves for a preliminary injunction prohibiting
Defendant Kimberly Wolf and her company Liv-It! LLC
(“Liv-It”) from using FLP's federally
registered trademark, “LIVIT”. Doc. 62. Ms. Wolf
moves to strike a footnote from FLP's reply. Doc. 70. The
motions are fully briefed, and no party requests oral
argument. For the reasons stated below, the Court will deny
Liv-It are competing companies in the houseware industry.
Both sell their products to retail stores which then sell
directly to consumers. FLP sells its products under many
names and trademarks. Doc. 62 at 2. FLP alleges that its
chief executive officer first thought of using the names
“LIVE IT” and “LIVIT” in 2001, and
finalized artwork and a business plan for the names in August
2015. Id. at 2-3. In September 2015, FLP contracted
for the manufacture of 266, 400 product units “of the
type FLP sells in its usual course of business” with
the “LIVIT” name displayed on the packaging.
Id. at 3.
that month, FLP filed an application with the U.S. Patent and
Trademark Office (“USPTO”) for trademark
protection of the standard character mark “LIVE
IT”. Id. at 3-4. In November 2015, FLP also
applied for trademark protection of the mark
“LIVIT” (the “Mark”). Id. at
4. Ms. Wolf then applied for trademark protection of the mark
“Liv-It!” in December 2015. Id. In
October 2016, the USPTO granted FLP's application for
“LIVIT” and suspended action on Ms. Wolf's
application for “Liv-It!” because FLP's
application was filed first. Id. at 7. FLP abandoned
its application for the “LIVE IT” mark.
See Doc. 64-1 at 19-20.
February 2016, FLP discovered that Ms. Wolf was using the
Mark on Liv-It's products and stopped using the Mark
“to mitigate any losses that might occur because of a
potential challenge to the FLP Mark by the Wolf
Parties.” Doc. 62 at 5. FLP submits photographs of
Liv-It's products and website reflecting the Mark, some
of which display the ® symbol next to the Mark. Doc. 62-1
at 3-5, 16, 18-21. FLP alleges that it has sold “tens
of thousands of products bearing” the Mark and
“gained substantial goodwill and consumer
recognition” of the Mark. Doc. 62 at 4-5. FLP further
alleges that Liv-It's use of the Mark has caused consumer
confusion and has prevented certain retail stores from
purchasing FLP's products bearing the Mark. Id.
amended complaint asserts claims for trademark infringement
under the Lanham Act and tortious interference with business
expectancy. See Doc. 36. FLP filed this motion for a
preliminary injunction after it participated in a houseware
industry trade show in Chicago in March 2018 and observed
Liv-It's exhibit containing the Mark. Id. at 11;
Doc. 62-1 at 23.
preliminary injunction is an extraordinary remedy never
awarded as a matter of right.” Winter v. Nat. Res.
Def. Council, Inc., 555 U.S. 7, 24 (2008). To obtain a
preliminary injunction, a plaintiff must show “that he
is likely to succeed on the merits, that he is likely to
suffer irreparable harm in the absence of preliminary relief,
that the balance of equities tips in his favor, and that an
injunction is in the public interest.” Id. at
20; see also All. for the Wild Rockies v. Cottrell,
632 F.3d 1127, 1135 (9th Cir. 2011). The burden is on FLP to
make a “clear showing” that it is entitled to a
preliminary injunction. See Lopez v. Brewer, 680
F.3d 1068, 1072 (9th Cir. 2012).
seeks preliminary relief only on its trademark infringement
claim under the Lanham Act, 15 U.S.C. §§ 1114,
1117, 1125. See Doc. 62. The Court therefore will
not address the parties' arguments regarding FLP's
other claims. Nor will the Court address FLP's arguments
regarding damages. See Doc. 62 at 13-14 (discussing
entitlement to costs, attorneys' fees, profits,
compensatory damages, and punitive damages).
prevail on a trademark infringement claim, FLP must prove
“(1) that it has a protectible ownership interest in
the mark; and (2) that [Ms. Wolf's] use of the mark is
likely to cause consumer confusion, thereby infringing upon
[FLP's] rights to the mark.” Dep't of Parks
& Recreation for State of Cal. v. Bazaar Del Mundo
Inc., 448 F.3d 1118, 1124 (9th Cir. 2006). The
touchstone for trademark infringement is likelihood of
confusion, which asks whether a reasonably prudent consumer
is “likely to be confused as to the origin of the good
or service bearing one of the marks.” Rearden LLC
v. Rearden Commerce, Inc., 683 F.3d 1190, 1214 (9th Cir.
2012). This determination is made by applying the
well-established Sleekcraft factors: (1) strength of
the mark, (2) proximity of the goods, (3) similarity of the
marks, (4) evidence of actual confusion, (5) marketing
channels used, (6) types of goods and degree of care
exercised by consumers, (7) defendant's intent in
selecting the mark, and (8) likelihood of expansion of the
product lines. AMF Inc. v. Sleekcraft Boats, 599
F.2d 341, 348-49 (9th Cir. 1979). This eight-factor test is a
“pliant” one, in which “the relative
importance of each individual factor will be
case-specific.” Brookfield Commc'ns, Inc. v. W.
Coast Entm't Corp., 174 F.3d 1036, 1054 (9th Cir.
respect to ownership, FLP's federal registration of the
Mark is “prima facie evidence of its
ownership[.]” Dep't of Parks & Recreation
for State of Cal., 448 F.3d at 1124. But Ms. Wolf argues
that she owns the Mark because she can show prior use in
commerce. Doc. 64 at 11. She submits evidence that she
organized Liv-It with the Illinois Secretary of State in
August 2015, more than two weeks before FLP placed its
purchase order and over three months before FLP applied for
trademark protection of “LIVIT.” Doc. 64-1 at 17.
Ms. Wolf alleges that FLP's principals knew of her
company and filed for trademark protection only to interfere.
Doc. 64-1 at 8-9. She submits declarations from two industry
professionals who worked as broker representatives for FLP,
are familiar with FLP's products, and never saw
“LivIt” or “Live It” appear on any
FLP product or trade show exhibit. Doc. 64-1 at 27, 30.
FLP's reply disputes Ms. Wolf's assertions, but does
not present evidence refuting the assertions or establishing
its own use of the Mark in commerce. See Doc. 69 at
3-5, 7. The Court cannot conclude that FLP is likely to
succeed in proving ownership where Ms. Wolf has presented
unchallenged evidence tending to rebut FLP's prima facie
evidence of ownership.
respect to the likelihood of consumer confusion, FLP cites
the Sleekcraft factors but offers almost no analysis
of their application to this case. See Doc. 62 at
15-17. The only analysis FLP offers is that the parties are
in “direct competition selling the same types of
household general merchandise[, ]” and consumers are
not likely to exercise the diligence necessary to distinguish
such inexpensive household items. Id. at 17. The