Trident Investment Partners Incorporated v. Evans
2:20-cv-01848
D. Ariz.Jan 8, 2021Background
- Trident owns federally registered HANDYMAN CONNECTION word and design marks (rights traced through assignments/merger culminating in 2014) and operates franchises, including in Phoenix, AZ.
- Defendants (Elizabeth Evans, Susan Solebello — Evans’s spouse — and The Handy Connection LLC) operate in Arizona as “The Handy Connection” with a logo and name substantially similar to Trident’s marks.
- Trident sent a cease‑and‑desist on June 10, 2020; Defendants continued using the marks.
- Trident filed suit on September 22, 2020 (Lanham Act and state claims); Defendants were served, failed to appear, and the Clerk entered default on October 23, 2020.
- Trident moved for default judgment (seeking a permanent injunction, attorneys’ fees of $15,420, and $400 in costs) and to amend the complaint to name Solebello; the Court treated Solebello as already served under a John Doe pseudonym.
- The Court granted default judgment as to trademark infringement and unfair competition, denied the dilution claim, awarded a permanent injunction (narrowed), attorneys’ fees of $11,610, and $400 costs, and denied the amendment as moot while directing a caption correction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Entry of default judgment (Eitel factors) | Eitel factors favor default: prejudice to Trident, merits, lack of participation, need for relief | Defendants did not appear; no opposing arguments | Court granted default judgment as to infringement and unfair competition after applying Eitel factors |
| Trademark ownership | Trident showed chain of assignments/merger establishing ownership of the registered word and design marks | Not disputed (defendants defaulted) | Trident established protectible ownership of the asserted marks |
| Likelihood of confusion (Sleekcraft factors) | Marks and goods/services are highly similar; evidence of actual confusion (customer incidents) | No rebuttal (default) | Court found likelihood of consumer confusion and infringement |
| Trademark dilution | Marks are famous; dilution claim appropriate | No rebuttal | Court held Trident failed to plead fame required for statutory dilution; claim dismissed |
| Permanent injunction scope | Injunction should bar use of confusing marks/trade dress and related conduct | No rebuttal | Court granted permanent injunction narrowly tailored to the asserted word and design marks; omitted dilution-based language |
| Attorneys' fees and costs (Lanham Act exceptional case) | Willful infringement (continued after cease‑and‑desist) + default = exceptional; fees of $15,420 and $400 costs sought | No rebuttal | Court found the case exceptional; awarded $11,610 in attorneys’ fees (after reducing entries/rates) and $400 costs |
| Motion to amend to name spouse (Solebello) | Amend to add Solebello as defendant (served already) | N/A | Denied as moot: Solebello was already served/covered by the John Doe pseudonym; Court directed caption amendment |
Key Cases Cited
- Aldabe v. Aldabe, 616 F.2d 1089 (9th Cir. 1980) (default‑judgment entry is discretionary)
- Eitel v. McCool, 782 F.2d 1470 (9th Cir. 1986) (Eitel factors for default judgment)
- Fair Hous. of Marin v. Combs, 285 F.3d 899 (9th Cir. 2002) (well‑pled allegations in default deemed true)
- Cripps v. Life Ins. Co. of N. Am., 980 F.2d 1261 (9th Cir. 1992) (default does not establish legally insufficient claims)
- Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) (elements of Lanham Act infringement)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft likelihood‑of‑confusion factors)
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (marks compared in their entirety; similarities weigh more heavily)
- Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010) (registration is prima facie evidence of validity and protectability)
- Herb Reed Enters., LLC v. Fla. Ent. Mgmt., Inc., 736 F.3d 1239 (9th Cir. 2013) (actual irreparable harm required for injunction post‑Herb Reed)
- Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (elements for dilution claim)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (standard for awarding attorneys’ fees in exceptional cases)
- SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179 (9th Cir. 2016) (application of Octane Fitness in trademark context)
- Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008) (default can establish willful infringement entitlement to fees)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006) (four‑factor test for permanent injunction)
- Monsanto Co. v. Geertson Seed Farms, 561 U.S. 139 (2010) (injunction is extraordinary relief)