United States District Court, S.D. California
ORDER GRANTING PRELIMINARY INJUNCTION
BARRY TED MOSKOWITZ, District Judge.
Defendants/Counterclaimants San Diego Americans for Safe Access and San Diego Americans for Safe Access Foundation (the "Movants" or "ASA") seek a preliminary injunction against Plaintiff Steele Clarke Smith, III ("Smith" or "Plaintiff").
For the reasons stated herein, ASA's motion is GRANTED.
Steph Sherer founded Americans for Safe Access in 2002, and began using its title as a word mark at that time. Sherer created ASA to "share what I had learned about the medical benefits of marijuana with others, particularly in connection with the federal prosecution of Edward Rosenthal. I selected the name Americans for Safe Access' in large part due to its acronym, ASA, which was the first name of the then-Administrator of the Drug Enforcement Administration, Asa Hutchinson." Sherer Decl. ¶4. Sherer also registered the web domain safeaccessnow.org. ASA provides education and legal materials/assistance in support of marijuana legalization and use for medical treatment. Sherer Decl. ¶15. It now has a national presence with six local chapters and over 50, 000 members. Since 2006, ASA has used two logos-the "molecule" logo (attached here as Exhibit 1), and the "ASA" logo (the initials) (attached here as Exhibit 2). Sherer Decl. ¶¶5-8. In 2007, ASA formed an Orange County chapter. Sherer Decl. ¶16.
In 2009, the Plaintiff (Smith) lost an election for the presidency of the ASA Orange County chapter. Sherer Decl. ¶17. In 2011 he started his own organization, Americans for Safe Access National ("ASAN") and registered the web domain: ASANational.org. Sherer Decl. ¶¶18-19. He also applied to register the ASA word mark. Sherer Decl. ¶27. ASA objected to his registration of the mark. The record does not indicate that the PTO has adjudicated the application.
Since 2011, but mostly recently, Smith has sent emails to ASA members that refer to a change in ASA leadership and imply that Sherer is no longer ASA President. Sherer Decl. ¶¶22-3; Duncan. Decl. ¶4, Ex. D1. Smith uses ASA's marks on ASAN's website and in several emails soliciting donations. Sherer Decl. ¶¶27-36; Duncan Decl. Ex. D2. Sherer alleges that Smith's deceptive website and deceptive emails harm recruiting efforts, intimidate ASA staff members, and aim to divert potential donations intended for the ASA by misleading donors.
B. Procedural History
Plaintiff Steele Clarke Smith, III ("Smith" or "Plaintiff") brought this action alleging trademark infringement in May 2013. He obtained a TRO in Superior Court (ECF 1-8), which was dissolved on June 6, 2013. The case was then removed here. ASA filed counterclaims and an ex parte application for a temporary restraining order ("TRO") against Smith. Notice of the application was duly provided to Plaintiff (Docs. 24, 26). On February 11, 2014, the Court held a hearing on the application. Plaintiff, pro se, did not appear at the hearing, and the Court issued a TRO covering the marks at issue (Doc. 27). The TRO scheduled a preliminary injunction hearing and ordered Plaintiff to show cause as to why an injunction should not issue. A copy of that order was immediately served upon Plaintiff (Docs. 29, 30, 35, 36) at the last address provided to the Court. At the April 1, 2014 hearing, ASA's counsel stated that they had also forwarded the TRO and Scheduling Order to Smith via email. Smith filed no response and did not appear at the preliminary injunction hearing.
II. LEGAL STANDARD
Rule 65(a) of the Federal Rules of Civil Procedure authorizes a court to "issue a preliminary injunction only on notice to the adverse party." "A preliminary injunction is an extraordinary remedy" that 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; Flexible Lifeline Sys., Inc. v. Precision Lift, Inc. , 654 F.3d 989, 997-98 (9th Cir. 2011) (criticizing Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co. , 571 F.3d 873 (9th Cir. 2009)). See also ConocoPhillips Co. v. Gonzalez, 2012 WL 538266, at *2, 2012 U.S. Dist. LEXIS 20972, at *6 (N.D. Cal. Feb. 17, 2012); Leatherman Tool Group, Inc. v. Coast Cutlery Co. , 823 F.Supp.2d 1150, 1157 (D. Or. 2011). Moreover, the irreparable injury must be imminent. Caribbean Marine Services Co., Inc. v. Baldrige , 844 F.2d 668, 674 (9th Cir. 1988); Midgett v. Tri-County Metro. Transp. Dist. of Oregon , 254 F.3d 846, 850-851 (9th Cir. 2001).
A. 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 protectable 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)).
1. Protectable 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)). The first to use a mark (the "senior" user) may enjoin "junior" users from using confusingly similar marks in the same market or within the senior user's "natural zone of expansion." Church & Dwight Co. v. Mayer Labs., Inc., 2011 U.S. Dist. LEXIS 35969, 66-67 (N.D. Cal. Apr. 1, 2011) (citation omitted). 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).
According to Sherer, ASA has used the ASA word mark since 2002, and has used the "molecule" logo and the ASA logo since 2006. Sherer Decl. ¶¶4-5. ASA uses the marks to identify itself and its members to the public. Sherer Decl. ¶¶9, 15. To that end, each mark has been used, e.g., on ASA's website, correspondence, conference materials, and litigation materials. Id . ASA has thus satisfactorily demonstrated its ownership interest in the marks sub judice. ASA has not registered the marks, but can, according ...