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FLP LLC v. Wolf

United States District Court, D. Arizona

July 26, 2018

FLP LLC, Plaintiff,
v.
Kimberly Wolf, Defendant.

          ORDER

          DAVID G. CAMPBELL UNITED STATES DISTRICT JUDGE

         Plaintiff 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 both motions.[1]

         I. Background.

         FLP and 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.

         Later 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.

         In 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. at 11-12.

         FLP's 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.

         II. Legal Standard.

         “A 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).

         III. Discussion.

         FLP 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).

         To 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. 1999).

         With 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.

         With 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 ...


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