United States District Court, D. Arizona
Douglas L. Rayes United States District Judge
the Court is Plaintiff Traeger Pellet Grills, LLC's
(“Traeger Grills”) motion for preliminary
injunction against Defendant Dansons US, LLC
(“Dansons”), which is fully briefed. (Docs. 11,
31, 34.) The Court held a preliminary injunction hearing on
September 12, 2019, and thereafter took this matter under
advisement. For the following reasons, Trager's motion is
Grills manufactures and sells wood pellet grills, grill
accessories, and wood pellets. The Traeger story originates
with Joe Traeger, who is credited with inventing the wood
pellet grill in the 1980s. Following this invention, Joe
Traeger manufactured and sold wood pellet grills through
Traeger Industries, Inc. (“TII”), a company owned
and operated by Joe and his family. TII first used the name
Traeger in commerce as a trademark for grills, grill
accessories, and wood pellets on January 1, 1986.
February 21, 2006, Traeger Grills, a limited liability
company registered and headquartered in Tampa, Florida,
entered the picture by means of two transactions. First,
Traeger Grills entered into an Asset Purchase Agreement
(“APA”) with TII, The Joe Trager Charitable
Trust, The Randy Traeger Charitable Trust, The Mark Traeger
Charitable Trust, Brian Traeger, Joe Traeger, Randy Traeger,
and Mark Traeger. (Doc. 11-1 at 22-67.) Pursuant to the APA,
the sellers assigned to Traeger Grills all their rights,
title and interest in and to the business, and all assets
including but not limited to all accounts receivable,
inventory, equipment and machinery, tools and goodwill
associated with the business. (Id. at 23-24.)
Traeger Grills paid $3, 402, 122 in consideration for these
assets. (Id. at 27.) Second, Traeger Grills entered
into an Intellectual Property Rights Assignment Agreement
(“IPRAA”) with Joe, Brian, Mark and Randy
Traeger. (Id. at 69-91.) Pursuant to the IPRAA, the
sellers assigned to Traeger Grills “all of their right,
title and interest in and to the Intellectual Property
rights, ” including but not limited to “[a]ll the
patents, patent rights, proprietary info and projects, trade
secrets, personal goodwill and IP assets and properties used
or usable in the business[.]” (Id. at 70, 95.)
Traeger Grills paid $9, 000, 000 in consideration for the
seller's right, title and interest in and to the
intellectual property rights assigned and transferred per the
IPRAA. (Id. at 71.)
assuming these assets and rights, Traeger Grills has poured
over $100 million into developing the Traeger brand.
(Id. at 9.) On May 22, 2007, Traeger Grills obtained
a Federal Trademark Registration for the trademark TRAEGER as
used in connection with the sale of grills, grill
accessories, and wood pellets, and Traeger Grills now owns
nine other active federal trademark registrations.
(Id. at 5-7.) In addition, Traeger Grills'
marketing includes images of the Traeger Barn and promotion
as the originator of the wood pellet grill. (Id. at
Grills competes in the wood pellet grill market with Dansons,
which manufactures and sells wood pellet grills and grill
accessories under the brand names Pit Boss and Louisiana
Grills. The instant conflict between the companies arose on
September 20, 2018, when Dansons issued a marketing release
announcing that it had hired Joe and Brian Traeger to elevate
the Louisiana Grills brand. (Doc. 11-3 at 32-33.)
Dansons' marketing release features two photos of Joe and
Brian alongside Danson executives, standing in front of the
Traeger Barn with the Traeger name prominently displayed
behind them, and a third photo of Joe and Dansons' CEO,
Dan Theissen. (Id.) On September 21, 2018, Traeger
Grills sent Mr. Theissen a cease and desist letter, demanding
that Dansons “discontinue all activities which suggest
or create the impression of a connection between Dansons and
Traeger Grills.” (Doc. 31-10 at 4.) Counsel for Dansons
responded by email, requesting a telephone call to discuss
how Dansons might address Traeger Grills' concerns, but a
resolution between the two parties was never reached. (Doc.
March 14, 2019, Dansons announced that the Louisiana Grills
brand planned to introduce a new series of grills in Fall
2019 called the Founders Series “brought to you proudly
by Joe Traeger, the founder of the original pellet grill, and
Dan Thiessen, an accomplished innovator in the pellet grill
industry.” (Doc. 11-3 at 36.) Following this
announcement, Dansons began posting a series of
advertisements on Instagram, Facebook and Twitter, including
photos and statements featuring the names and likenesses of
Joe and Brian Traeger and the Traeger mark and barn promoting
Dansons, Danson's products, and the Founders Series.
(Id. at 39-49; Doc. 11-4.) On July 16, 2019, Traeger
Grills filed this action against Dansons and George Koster.
(Doc. 1.) On the same date, Traeger Grills filed a separate
lawsuit against Joe, Brian and Mark Traeger in the Middle
District of Florida. (Doc. 31-4 at 3.)
17, 2019, Traeger Grills filed its motion for preliminary
injunction, which was fully briefed on August 28, 2019.
(Docs. 11, 31, 34.) In its motion, Traeger Grills requests
that the Court preliminarily enjoin Dansons from:
a. Using or assisting or consenting to others in using or
publishing, in any manner, the TRAEGER name, images of the
TRAEGER Barn location in Mt. Angel, Oregon, images of Joe or
Brian Traeger, references to Joe as the founder or creator of
the pellet grill (collectively the “Traeger
Intellectual Property”) in connection with the
advertising, marketing, or sale of wood pellet grills and
b. Publishing, in any manner, any statement that affiliates
in any way Joseph Traeger, Brian Traeger, or Traeger Grills
with Dansons U.S. LLC, LOUISIANA GRILLS, PIT BOSS, the
FOUNDERS SERIES grills, Dan Thiessen, Jordan Thiessen, Jeff
Thiessen or Dansons' products or endorses Dansons U.S.
LLC, LOUISIANA GRILLS, PIT BOSS, the FOUNDERS SERIES grills,
or any Dansons grill-related product; [and]
c. Arranging any public appearance anywhere in the United
States that communicates an endorsement by Joseph Traeger or
Brian Traeger of Dansons' U.S. LLC, LOUISIANA GRILLS, PIT
BOSS, the FOUNDERS SERIES grills, or any other Dansons
(Doc. 11 at 25.) The motion is now ripe for decision.
plaintiff seeking a preliminary injunction must establish
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.”
Winter v. Natural Res. Def. Council, Inc., 555 U.S.
7, 20 (2008); Am. Trucking Ass'n, Inc. v. City of Los
Angeles, 559 F.3d 1046, 1052 (9th Cir. 2009). These
elements may be balanced on a sliding scale, whereby a
stronger showing of one element may offset a weaker showing
of another. See Alliance for the Wild Rockies v.
Cottrell, 632 F.3d 1127, 1131, 1134-35 (9th Cir. 2011).
But the sliding-scale approach does not relieve the movant of
the burden to satisfy all four prongs for the issuance of a
preliminary injunction. Id. at 1135. Instead,
“‘serious questions going to the merits' and
a balance of hardships that tips sharply towards the
plaintiff can support issuance of a preliminary injunction,
so long as the plaintiff also shows that there is a
likelihood of irreparable injury and that the injunction is
in the public interest.” Id. at 1135. The
movant bears the burden of proof on each element of the test.
Envtl. Council of Sacramento v. Slater, 184
F.Supp.2d 1016, 1027 (E.D. Cal. 2000).
carefully considered the parties' briefs, arguments, and
presentations during the preliminary injunction hearing, the
Court finds that Traeger has carried its burden on all four
elements of the preliminary injunction test.
Likelihood of Success on the Merits
prevail on its trademark infringement claims, Traeger Grills
must establish (1) ownership of a valid trademark previously
used in commerce and (2) that Dansons used in commerce a mark
similar to Traeger Grills' trademark in a manner likely
to cause confusion. 15 U.S.C. § 1114; Nelson-Ricks
Cheese Co., Inc. v. Lakeview Cheese Co., LLC, 775 F.
App'x. 350, 351 (9th Cir. 2019); Bosley Med.
Inst., Inc. v. Kremer, 403 F.3d 672, 676 (9th
Cir. 2005); Playboy Enters., Inc. v. Netscape Cmmc'ns
Corp., 354 F.3d 1020, 1024 (9th Cir. 2004). The Ninth
Circuit assesses the second element, likelihood of confusion,
by weighing the eight Sleekcraft factors: (1) the
strength of the plaintiff's mark; (2) the proximity or
relatedness of the goods; (3) the similarity of the
parties' marks; (4) evidence of actual confusion; (5)
marketing channels used; (6) the type of goods and degree of
care likely to be exercised by the buyer; (7) the
defendant's intent in adopting the junior mark; and (8)
likelihood of expansion of the parties' product lines.
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th
Cir. 1979). “[T]his eight-factor test . . . is pliant.
Some factors are much more important than others, and the
relative importance of each individual factor will be
case-specific. Although some factors-such as the similarity
of the marks and whether the two companies are direct
competitors-will always be important, it is often possible to
reach a conclusion with respect to the likelihood of
confusion after considering only a subset of the
factors.” Brookfield Commc'ns, Inc. v. West
Coast Entm't Corp., 174 F.3d 1036, 1054 (9th Cir.
1999) (citation omitted).
Traeger Grills asserts trademark infringement claims
regarding two marks: the Traeger mark and the Traeger Barn.
The Court will address the merit of each of these claims in
The Traeger Mark
undisputed that Traeger Grills possesses valid ownership of
and has previously used the Traeger mark in commerce. (Doc.
11 at 12-13; Doc. 31 at 7.) Further, Dansons does not dispute
that nearly all the Sleekcraft factors support a
finding that confusion is likely. Indeed, the Court's