The opinion of the court was delivered by: Hon. Gonzalo P. Curiel United States District Judge
ORDER DENYING PLAINTIFF'S ORDER EX PARTE MOTION FOR TEMPORARY RESTRAINING [Dkt. No. 5.]
On February 12, 2013, Plaintiff Zodiac Pool Systems, Inc. filed a trademark infringement complaint against Defendant Aquastar Pool Products, Inc. (Dkt. No. 1.) On February 13, 2013, Plaintiff filed an ex parte motion for temporary restraining order. (Dkt. No. 5.) On February 14, 2013, Defendant filed an opposition. (Dkt. Nos. 9, 10.) A telephonic hearing was held on February 15, 2013.*fn1 (Dkt. No. 14.) Daniel Foster, Esq. and Eric Garcia, Esq. appeared on behalf of Plaintiffs and Robert Lauson, Esq. appeared on behalf of Defendant. At the hearing, the Court granted Defendant additional time to file a supplemental opposition to the TRO. On February 20, 2013, Defendant filed a supplemental opposition to Plaintiffs' ex parte motion for temporary restraining order. (Dkt. Nos. 15, 16.) A telephonic hearing was held on February 21, 2013. (Dkt. No. 17.) Daniel Foster, Esq. and Eric Garcia, Esq. appeared on behalf of Plaintiffs and Robert Lauson, Esq. appeared on behalf of Defendant. On February 21, 2013, the parties filed supplemental letter briefs. (Dkt. Nos 18, 19.) After a review of the briefs, applicable law, and hearing oral argument, the Court DENIES Plaintiff's ex parte motion for temporary restraining order.
According to the Complaint, Plaintiff is in the business of designing, innovating and manufacturing automatic swimming pool cleaners and related pool accessories. (Dkt. No. 1, Compl. ¶ 8.) For over 30 years, Plaintiff has marketed, distributed, advertised and sold Polaris pool cleaners using a particular product configuration and trade dress that is unique in appearance and readily recognized by customers and members of the trade. (Id. ¶ 10.) Among the pool cleaners Zodiac manufactures is Polaris 280 automatic swimming pool cleaner. (Id. ¶ 9.) Polaris 280 pool cleaner is widely known and recognized by its distinctive appearance. (Id. ¶ 11.) Zodiac's trade dress has become Zodiac's trademark. (Id. ¶ 12.) Plaintiff is the owner and exclusive owner of U.S. Trademark Registration No. 1,725,031 for a distinctive product configuration granted on October 20, 1992 with the U.S. Patent and Trademark Office. (Id. ¶ 13.) It is used in connection with goods described as "automatic swimming pool cleaners designed to travel on and clean submerged surfaces of pool by a combination of jet action and vacuuming." (Id., Ex. B.)
Defendant AquaStar is engaged in the business of manufacturing automatic swimming pool cleaners and related pool accessories. (Id. ¶ 14.) It has recently started marketing and advertising, for purposes of distributing and selling, a pool cleaner under the name StealthStar pool cleaner. (Id. ¶ 15; Ex. A.) Plaintiff alleges that AquaStar's StealthStar pool cleaner is a reproduction, counterfeit, copy and/or colorable imitation of Zodiac's Polaris 280 pool cleaner. (Id. ¶ 19.) As a result, the product configuration and trade dress used by AquaStar is likely to cause confusion, mistake, and deception relative to Zodiac's pool cleaners, Zodiac's goods and the distinctive product configuration and trade dress used by Zodiac. (Id.)
Plaintiff alleges trademark infringement under the Lanham Act, 15 U.S.C. § 1114; trademark counterfeiting under the Lanham Act, 15 U.S.C. § 1114; false designation of original and unfair competition under the Lanham Act, 15 U.S.C. § 1125(a) and unfair competition under California Business & Professions Code section § 17200 et seq.
In opposition, Defendant states that it is in the business of selling replacement parts for automatic swimming pool cleaners. (Dkt. No. 10, Mjelde Decl. ¶ 2.) Defendant has been promoting StealthStar replacement parts for several months and put its catalog online in October 2012 with a webpage "coming soon" for StealthStar replacement parts. (Id. ¶ 3.) Defendant advertised and showed a prototype Stealth Star cleaner at the New Orleans Int'l Pool & Spa in November 2012 and than again in Atlantic City, in January 2013. (Id.) The final design of many replacement parts and any complete unit is not fully determined. (Id.) To date, Defendant has taken no order, made no molds, or produced any of the internal parts. (Id.)
Plaintiff seeks a temporary restraining order enjoining Defendant from infringing on Zodiac's trade dress and unfairly competing with it by marketing, advertising and selling the StealthStar pool cleaner. According to its proposed order, Plaintiff seeks to enjoin Defendant from "accepting or transmitting inquiries or orders for purchase from an entity in the U.S., manufacturing in the U.S., importing into or exporting from the U.S., buying, offering for sale, selling, marketing, advertising, or otherwise distributing in or to the United States, any product, including the StealthStar pool cleaner, which: a) infringes or is substantially similar in overall appearance to the Polaris 280 pool cleaner;
b) is identical or confusingly similar to Zodiac's trade dress; c) unfairly competes with Zodiac's pool cleaners or trade dress . . . . " It also seeks to enjoin Defendant from "disposing of, altering, destroying, transferring possession, custody or control, to anyone other than AquaStar's or Zodiac's counsel or to this Court, any document which describes, communicates about or refers to the design, manufacture, order, purchase, import, duties owed or paid for, distribution, advertisement, marketing or sale of any product which is confusingly similar to the overall appearance of the Polaris 280 pool cleaners or Zodiac's trade dress."
Defendant argues that the TRO is now moot since it has not taken any orders and produced any parts and Plaintiff has delayed in seeking relief. Defendant also seeks 60 days of discovery before any relief is granted concerning another recent case in this district which made the same trade dress infringement allegations and was privately settled. See Zodiac Pool Systems v. Custom Molded Prods., 11cv295-MMA(NLS) (S.D. Cal. 2011) Defendant also seeks discovery as to the functionality of the asserted trade dress and documents revealing Plaintiff's true motives in bringing the lawsuit.
The purpose of a TRO is to preserve the status quo before a preliminary injunction hearing may be held; its provisional remedial nature is designed merely to prevent irreparable loss of rights prior to judgment. Granny Goose Foods, Inc. v. Brotherhood of Teamsters & Auto Truck Drivers, 415 U.S. 423, 439 (1974). The legal standard that applies to a motion for a TRO is the same as a motion for a preliminary injunction. See Stuhlbarg Int'l Sales Co. v. John D. Brush & Co., 240 F.3d 832, 839 n. 7 (9th Cir. 2001). To obtain a TRO or preliminary injunction, the moving party must show: (1) a likelihood of success on the merits; (2) a likelihood of irreparable harm to the moving party in the absence of preliminary relief; (3) that the balance of equities tips in the moving party's favor; and (4) that an injunction is in the public interest. Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).
Under the Ninth Circuit's "sliding scale" approach, the first and third elements are to be balanced such that "serious questions" going to the merits and a balance of hardships that "tips sharply" in favor of the movant are sufficient for relief so long as the other two elements are also met. Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1134--35 (9th Cir. 2011). A preliminary injunction is "an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief," Winter, 555 U.S. at 22, and the moving party ...