846 F. Supp. 2d 1063
N.D. Cal.2012Background
- SunEarth, Inc. and The Solaray Corporation seek a preliminary injunction to bar Sun-Earth/Sun-Earth mark usage in the U.S. during litigation.
- SunEarth, Inc. is a California corporation formed in 1978; Solaray acquired SunEarth, Inc. in 1992 and continued operating it under its original name.
- SunEarth uses the SunEarth mark and related house marks; Defendants use Sun-Earth and nbsolar marks and filed U.S. trademark applications.
- Defendants’ Sun-Earth mark originated in China; Ningbo Solar (later Sun Earth Solar Power Co., Ltd., SESP) obtained a U.S. Sun-Earth registration in 2010 and has marketed globally, including in the U.S.
- Plaintiffs allege trade name/trademark/service mark infringement, unfair competition, cybersquatting, and TTAB cancellation; a standstill agreement existed (June–October 2011) before this action was filed on October 11, 2011.
- Court grants the motion, finding likelihood of success on merits, likelihood of irreparable harm, and favorable balance of equities; a bond of $5,000 is approved.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Plaintiffs have a protectible ownership interest in SunEarth/Sun-Earth. | SunEarth/SunEarth used as house/trade marks before 2007. | Defendants contend ownership based on registrations; non-registrant rights contested. | Plaintiffs likely to have protectible ownership. |
| Whether Defendants’ use of Sun-Earth creates a likelihood of confusion with Plaintiffs’ marks. | SunEarth/SunEarth marks are senior; confusion probable. | Products/services related but not identical; less likelihood of confusion. | Likely to be confusion under Sleekcraft factors. |
| Whether Defendants’ laches bars Plaintiffs’ claims. | No undue delay; Defendants knowingly used mark in U.S. | Delay plus domain registrations may show laches. | Laches not established; defense unlikely to succeed. |
| Whether irreparable harm justifies injunctive relief. | Loss of goodwill and control over reputation; actual confusion exists. | Economic damages could compensate; no irreparable harm proven. | Irreparable harm shown; injunction warranted. |
| Whether the balance of equities and public interest favor an injunction. | Protecting consumer confusion and goodwill serves public interest. | Injunction would hinder Defendants’ US market development. | Balance and public interest favor injunction. |
Key Cases Cited
- Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), 599 F.2d 341 (9th Cir. 1979) (core factors for likelihood of confusion in trademark cases)
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000), 202 F.3d 1199 (9th Cir. 2000) (laid out framework for evaluating likelihood of confusion and strength of marks)
- Brookfield Communications, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999), 174 F.3d 1036 (9th Cir. 1999) (early injunction standard and application of Sleekcraft factors at preliminary stage)
- Accuride Intl., Inc. v. Accuride Corp., 871 F.2d 1531 (9th Cir. 1989), 871 F.2d 1531 (9th Cir. 1989) (ownership and rights in marks where both registered and unregistered marks protected)
- Glow Indus. v. Lopez, 252 F. Supp. 2d 962 (C.D. Cal. 2002), 252 F. Supp. 2d 962 (C.D. Cal. 2002) (court considers market penetration and senior user rights in trademark analysis)
- Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (9th Cir. 2002), 304 F.3d 829 (9th Cir. 2002) (laches analysis in trademark context; knowledge and delay considerations)
- Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873 (9th Cir. 2009), 571 F.3d 873 (9th Cir. 2009) (discusses irreparable harm presumptions in trademark contexts)