TechShop, Inc. v. Rasure
4:18-cv-01044
N.D. Cal.Mar 9, 2020Background
- TechShop owned registered standard-character service mark "TECHSHOP" for makerspace services; TechShop filed bankruptcy and the Chapter 7 Trustee amended the complaint.
- In late 2017–early 2018 Dan Rasure negotiated to buy TechShop assets under an MOU; parties never executed a definitive sale.
- Rasure and entities formed TechShop 2.0 (later renamed TheShop.build) and announced reopening a San Francisco makerspace using similar branding and the same facility/equipment.
- TechShop sent cease-and-desist letters on Feb 14–16, 2018 and filed suit on Feb 16, 2018 alleging trademark infringement; defendants counterclaimed for fraud (trial verdict dismissed the fraud claim).
- A jury found TECHSHOP valid and owned by plaintiff, found defendants willfully infringed (likelihood of confusion) but awarded $0 damages; court entered judgment for plaintiff.
- Post-trial motions raised: renewed JMOL, equitable defenses, permanent injunction, new trial on damages, attorneys’ fees, and review of costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Renewed JMOL on infringement (TechShop 2.0 / TheShop.build) | TechShop: marks valid, ownership proven, infringement proven | Rasure: had consent / use was de minimis; no likelihood of confusion | Denied — substantial evidence supports jury (lack of consent, Sleekcraft factors: similarity, proximity, intent, actual confusion) |
| Equitable defenses (acquiescence, estoppel, laches) | TechShop: promptly objected and sued; no consent or unreasonable delay | Rasure: TechShop’s prior references and silence amounted to consent and reasonable reliance | Denied — record shows no acquiescence; letters and filing were timely; no estoppel or laches |
| Permanent injunction | TechShop: seeks injunction to prevent further confusing uses and harm to goodwill | Rasure: no ongoing operation under those names; no ongoing harm | Denied — plaintiff failed to show actual irreparable harm; defendants had largely ceased operations |
| New trial on damages (zero award) | TechShop: zero damages inconsistent with liability and against weight of evidence | Rasure: evidence supports zero damages (bankruptcy, negative equity), and plaintiff waived inconsistent-verdict objection | Denied — no clear-weight error; plaintiff waived timely objection to inconsistency; jury could credit defendants’ evidence |
| Attorneys' fees under Lanham Act (exceptional case) | TechShop: prevailing party entitled to fees because defendants litigated unreasonably | Rasure: seeks fees/costs arguing prevailing-party status | Denied — TechShop was the prevailing party but case not "exceptional" under Octane Fitness; fees denied to both sides |
Key Cases Cited
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (articulates multi-factor likelihood-of-confusion test)
- Pom Wonderful LLC v. Hubbard, 775 F.3d 1118 (9th Cir. 2014) (standard-character marks cover design/context in marketplace analysis)
- La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867 (9th Cir. 2014) (assessing similarity of marks by sight, sound, and meaning)
- Equal Emp’t Opportunity Comm’n v. Go Daddy Software, Inc., 581 F.3d 951 (9th Cir. 2009) (Rule 50 JMOL renewal procedure and standard)
- Herb Reed Enterprises, LLC v. Florida Entm’t Mgmt., Inc., 736 F.3d 1239 (9th Cir. 2013) (actual irreparable harm required for trademark injunction)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (four-factor test for permanent injunctions)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (defines "exceptional" for fee-shifting; totality-of-circumstances test)
- SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179 (9th Cir. 2016) (apply totality-of-circumstances for Lanham Act fee awards)
- Kode v. Carlson, 596 F.3d 608 (9th Cir. 2010) (waiver of inconsistent-verdict objection if not raised before jury discharge)