The opinion of the court was delivered by: Barry Ted Moskowitz, Chief Judge
ORDER GRANTING MOTION FOR PRELIMINARY INJUNCTION
Plaintiff CrossFit, Inc. ("CrossFit") seeks a preliminary injunction requiring Defendant Maximum Human Performance, LLC ("MHP") to cease and remove its "X-Fit Workout Series" fitness videos and any other such videos available on the Internet that state or imply an affiliation with CrossFit, and to remove any use of "X-Fit" from its website or social media relating to exercise instruction. For the reasons discussed below, CrossFit's motion for a preliminary injunction (ECF No. 5) is GRANTED, and its ex parte motion for leave to file a supplemental declaration in support of its motion for a preliminary injunction (ECF No. 53) is DENIED as moot.
CrossFit is a popular fitness program, well-known for its intense workout regimen and the corresponding intensity of its members. MHP is a nutritional supplement company geared towards the sports and nutrition industry. In 2011, MHP developed a line of "X-Fit" nutritional products. According to MHP, the mark "X-Fit" is meant as an abbreviation for "Extreme Fitness Intensity Training."
CrossFit owns a variety of federal trademarks for "CrossFit," including for fitness training, fitness equipment, computer software related to tracking exercise, entertainment services (e.g., videos and podcasts), and clothing and footwear. MHP owns a trademark for "X-FIT" and variations thereof solely for use related to "[d]ietary and nutritional supplements."
CrossFit commenced this action on September 26, 2012, and filed its motion for a preliminary injunction on September 27, 2012. The motion was taken under submission by the Court on November 9, 2011.
A plaintiff seeking a preliminary injunction or temporary restraining order must establish that (1) he is likely to succeed on the merits; (2) he is likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in his favor; and (4) an injunction is in the public interest. Winter v. Natural Resources Defense Council, 555 U.S. 7, 129 S. Ct. 365, 374 (2008).
The Ninth Circuit has held that the "sliding scale" approach to preliminary injunctions survives Winter when applied as part of the four-element Winter test. Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011). In other words, "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 Court finds that CrossFit is entitled to a preliminary injunction. As discussed below, CrossFit have established that it is likely to succeed on the merits, it is likely to suffer irreparable harm in the absence of preliminary relief, the balance of equities tip in its favor, and an injunction is in the public interest.
A. Merits of Plaintiff's Legal Claims
Based on the evidence before the Court, it appears that CrossFit is likely to succeed on the merits of its legal claims. CrossFit has alleged causes of action for trademark infringement, unfair competition, and trademark dilution.
To prevail on a claim of trademark infringement or unfair competition under the Lanham Act, the "ultimate test" is "whether the public is likely to be deceived or confused by the similarity of the marks." Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175 (9th Cir. 1988) (quoting New ...