ORDER DENYING PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION
BARRY TED MOSKOWITZ, District Judge.
Plaintiff Mytee Products, Inc. ("Plaintiff" or "MPI") has moved for a preliminary injunction against Defendant Shop Vac Corporation ("Defendant" or "Shop Vac"). (ECF No. 7). For the reasons below, Plaintiff's motion is hereby DENIED.
Plaintiff manufactures, markets, and sells commercial cleaning machines, including extractors, sprayers, spotters, polishers, and scrubbers. (LaBarbera Decl. ¶¶ 2-3). Since 1998, it has also sold "air movers" - "fans generally used to dry out wet or flooded environments." (LaBarbera Decl. ¶ 7). Most MPI products, including its air movers, are sold under the company's federally registered trademark "MYTEE." (LaBarbera Decl. ¶¶ 4, 7). Plaintiff's trademark registrations indicate that it used a plain text "MYTEE" mark in commerce as early as 1993 on "machines for hard surface and carpet cleaning" and "portable hot water heater and heat exchanger elements." (Plaintiff's Exhibits A-B). In 2007, MPI began using a modified "MYTEE" mark with a stylized "M" above the letters suggestive of a mountain. (Plaintiff's Exhibit C). The new mark was registered for "machines for hard surface and carpet cleaning, " and "electric fans for drying carpets and wet areas."
MPI alleges that in June, 2013, it discovered that Defendant was selling air movers under the name "MIGHTYmini" and that it intends to sell air movers under the name "MIGHTY MICRO." (LaBarbera Decl. ¶ 10; Seccof Decl. ¶ 3; Plaintiff's Exhibits D, H, M). Plaintiff contends that Shop Vac has infringed on its trademark and seeks a preliminary injunction prohibiting Shop Vac from using the "MIGHTYmini, " "MIGHTY MICRO, " and "MIGHTYmicro" names in connection with the sale of their air movers and related equipment and prohibiting Shop Vac and its distributors from selling or marketing air movers bearing such marks.
A. Preliminary Injunction
"A preliminary injunction is an extraordinary remedy" and is "never awarded as of right." Winter v. NDRC, Inc. , 555 U.S. 7, 24 (2008) (citing Munaf v. Geren , 553 U.S. 674, 689-90 (2008)). A preliminary injunction will only be granted "upon a clear showing that the plaintiff is entitled to such relief." Id . at 22 (citing Mazurek v. Armstrong , 520 U.S. 968, 972 (1997)). To obtain a preliminary injunction, the plaintiff must establish four elements: (1) "that he is likely to succeed on the merits, " (2) "that he is likely to suffer irreparable harm in the absence of preliminary relief, " (3) "that the balance of equities tips in his favor, " and (4) "that an injunction is in the public interest." Id . at 20 (citations omitted). The requirement that irreparable harm be likely is significant; a mere possibility of harm will not suffice. Id . at 22.
The Ninth Circuit Court of Appeals applied Winter in the copyright infringement context in Flexible Lifeline Sys., Inc. v. Precision Lift, Inc. , 654 F.3d 989 (9th Cir. 2011). The court held that Winter abrogated the Circuit's prior case law, which had allowed a presumption of irreparable harm if the plaintiff was able to show a likelihood of success on the merits. Id . at 997 ("If our past standard, which required a plaintiff to demonstrate at least a possibility of irreparable harm, is too lenient, ' then surely a standard which presumes irreparable harm without requiring any showing at all is also too lenient.'"); See, e.g., El Pollo Loco, Inc. v. Hashim , 316 F.3d 1032, 1038 (9th Cir. 2003) ("In a trademark infringement claim, irreparable injury may be presumed from a showing of likelihood of success on the merits." (internal quotation marks and citations omitted)).
Notably, the court in Flexible Lifeline disregarded its prior opinion in Marlyn Nutraceuticals, "an analogous trademark infringement case" where the court had affirmed application of an irreparable harm presumption without considering the effect of Winter. Flexible Lifeline Sys., Inc. , 654 F.3d at 997 (criticizing Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co. , 571 F.3d 873 (9th Cir. 2009)). The Flexible Lifeline court concluded that "even in a copyright infringement case, the plaintiff must demonstrate a likelihood of irreparable harm as a prerequisite for injunctive relief." Flexible Lifeline Sys. , 654 F.3d at 998.
At least two district courts in this Circuit have applied the same reasoning to applications for preliminary injunctions in trademark infringement claims. See ConocoPhillips Co. v. Gonzalez, 2012 WL 538266, at *2, 2012 U.S. Dist. LEXIS 20972, at *6 (N.D. Cal. Feb. 17, 2012) ("[A] plaintiff is no longer entitled to a presumption of irreparable harm on the ground that it has shown a likelihood of success on the merits."); Leatherman Tool Group, Inc. v. Coast Cutlery Co. , 823 F.Supp.2d 1150, 1157 (D. Or. 2011) ("While the holding in Flexible Lifeline applied to copyright infringement cases, there is no language in the court's rationale that would indicate a different standard for other types of cases.").
This Court agrees. In the wake of Winter and Flexible Lifeline there is no presumption of irreparable harm; a plaintiff seeking a preliminary injunction in the trademark infringement context must demonstrate sufficient facts to establish a likelihood of irreparable harm. See Winter , 555 U.S. at 22; Flexible Lifeline Sys. , 654 F.3d at 997-98.
B. Trademark Infringement
A trademark is "any word, name, symbol, or device, or any combination thereof... used by a person... to identify and distinguish his or her goods." 15 U.S.C. § 1127. "To prevail on a claim of trademark infringement under the Lanham Act, 15 U.S.C. § 1114, a party must prove: (1) that it has a protectible ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion.'" Network Automation, Inc. v. Adv. Sys. Concepts, Inc. , 638 F.3d 1137, 1144 (9th Cir. 2011) (quoting Dep't of Parks & Recreation v. Bazaar Del Mundo, Inc. , 448 F.3d 1118, 1124 (9th Cir. 2006)).
i. Protectible Ownership Interest
Ownership interests in a trademark accrue to the first party to actually use the mark in commerce. See Sengoku Works LTD v. RMS Int'll, LTD , 96 F.3d 1217, 1219 (9th Cir. 1996) (citing J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 16.03 (3d ed. 1996)). A plaintiff's federal registration of a trademark is prima facie evidence of an ownership interest, but a defendant may rebut the presumption by proving their own prior use of the mark in commerce. See Dep't of Parks & Recreation , 448 F.3d at 1124; 15 U.S.C. §§ 1057(b), 1115(a).
ii. Likelihood of Consumer Confusion
The Ninth Circuit employs a flexible multi-factor test to gauge the likelihood of confusion caused by an allegedly infringing mark. See Network Automation, Inc. , 638 F.3d at 1145. Normally, eight different factors are considered: "similarity of the conflicting designations; relatedness or proximity of the two companies' products or services; strength of [the plaintiff's] mark; marketing channels used; degree of care likely to be exercised by purchasers in selecting goods; [the defendant's] intent in selecting its mark; evidence of actual confusion; and likelihood of expansion in product lines." Brookfield Commc'ns., Inc. v. West Coast Entertainment Corp. , 174 F.3d 1036, 1053-54 (9th Cir. 1999) (citations omitted); accord AMF, Inc. v. Sleekcraft Boats , 599 F.2d 341, 348-49 (9th Cir. 1979). However, it is ...