United States District Court, S.D. California
ORDER DENYING PLAINTIFF'S EX PARTE MOTION FOR A TEMPORARY RESTRAINING ORDER [Dkt. No. 40.]
GONZALO P. CURIEL, District Judge.
Before the Court is Plaintiff Wahoo International, Inc.'s ("Wahoo" or "Plainitff") ex parte motion for a temporary restraining order. (Dkt. No. 40.) Defendant Phix Doctor, Inc. ("Phix Doctor" or "Defendant") filed an opposition on May 15, 2014. (Dkt. No. 42.) A reply was filed on May 16, 2014. (Dkt. No. 43.) A hearing was held on May 16, 2014. (Dkt. No. 44.) Isi Mataele, Esq. appeared on behalf of Defendant and Erin Barns, Esq. and Richard Wirtz, Esq. appeared on behalf of Plaintiff. Based on the reasoning below, the Court DENIES Plaintiff's ex parte application for temporary restraining order.
According to Plaintiff, Wahoo is a leading manufacturer of UV cure resins. Resins are thick liquids that harden into transparent solids and used to repair fiberglass, plastics, wood and metal. The repair putty hardens in minutes, 3 minutes when exposed to UV sunlight. SOLAREZ is a unique UV cure synthetic resin. It is a clear, non-yellowing mixture of high-strength, fiber reinforced polyester resin and a solar-activated catalyst. No mixing is required and it can be applied straight from the tube. It was the first UV cure resin on the surf market and first sold in 1987. Wahoo has invested in promotion of its product and education regarding use to the UV cure repair resin. As the first resin of its kind, Solarez has become famous in the surf, snowboard, and skate industry. Plaintiff sells its products online directly to consumers and through distributors and retailers. Its distributors are located in San Diego, CA, Ocean City, MD and Aiea, HI and they distribute to retailers across the country.
Wahoo first registered the mark SOLAREZ on April 14, 1992 (Reg. No. 1, 682, 565). The mark's first registration lapsed for inadvertent failure to renew in 2003, but it was re-registered on January 6, 2004 with Reg. No. 2, 802, 579. The registration's date of first use is June 26, 1989.
Wahoo also alleges it is the owner of a family of marks with the root suffix -rez. Plaintiff has advertised "Rez-solutions" such as SPONGEREZ for bodyboard and swimfin repair resin since 1989; NEOREZ for wetsuit repair resin since 1990; and RADREZ for snow and skateboard and skate shoe repair resin since 1992. In the surf, skate, and snowboard industry and culture, -rez is recognized by customers to be associated with Plaintiff.
Phix Doctor is a producer of fiberglass repair products and accessories. On November 29, 2011, it announced its new product "DURA REZ" on its website. According to its description, it is a fiber filled epoxy and polyester repair product and also made of resin. Its advertising states: "cures in full sun in less then 3 minutes for a professional finish that saves you time and money!" Dura Rez has a product line with distributors in California, North Carolina, and Florida as well as retailers throughout the country.
When Plaintiff discovered the infringement on its trademark, SOLAREZ, it sent a cease and desist letter dated December 10, 2012 to Phix Doctor; however, Phix Doctor never responded. In January 2013, at a Surf Expo in Orlando, Florida, Wahoo's sales manager, Nelz Vellocido, saw Tony Gowen, a principal of Phix Doctor, exhibiting DURA REZ. At the time, Gowen told Vellocido that he would be "winding down" the use of the DURA REZ mark. However a month later, one of Plaintiff's distributors called to complain that retailers claimed to be buying Solarez from a non-Wahoo distributor. When Plaintiff's distributors called that particular retailer and asked if they carried Solarez, they said "yes, we sell Solarez." However, the store was selling Dura Rez.
In March 2013, Defendant's website was still advertising Dura Rez. Therefore, on June 14, 2013, Plaintiff filed a complaint against Defendant alleging violations of Trademark Infringement; Federal Trademark Dilution; False Designation of Origin; Injury to Business Reputation and Dilution under California Law and Unfair Competition under California Law. (Dkt. No. 1.) On June 17, 2013, Plaintiff contacted Gowen and during that conversation, Gowen said he would be willing to change his mark to Dura Resin. According to Plaintiff, it indicated that Dura Resin would be acceptable and that he would dismiss the case if Gowen agreed to share in the legal expenses. But Gowen refused.
On August 29, 2013, Plaintiff received photos from a retail store in Hawaii displaying Defendant's Dura Rez on August 28, 2013. Again, on September 6, 2013, at the Surf Expo in Oralado, Plaintiff received photos showing Dura Rez displayed at the booths of two major distributors. Then again on November 5, 2013, Wahoo's products were displayed together with Defendant's DURA REZ, as if it was one of Wahoo's products. (Dkt. No. 40-11, TRO App., Ex. E.) On January 9, 2014, Plaintiff's sales representative attended the Surf Expo in Orlando, Florida and saw DURA REZN displayed. (Dkt. No. 40-12, TRO App. Ex. F.)
At the end of April 2014, Plaintiff inquired whether Defendant intended to attend the Surf Expo to be held in Del Mar, California on May 17 and 18, 2014. Defendant did not respond until May 13, 2014 indicating that Phix Doctor would be attending the trade show and so would his "vendors" who may be displaying their products. Defendant refused to stipulate to an order enjoining him and his distributors/retailers from selling or promoting any products bearing DURA REZ and/or DURA REZN.
Plaintiff now brings this ex parte application for a temporary restraining order to enjoin Defendant and its distributors and retailers from using an imitation of the SOLAREZ trademark to include DURAREZ, DURA REZ, and/or DURA REZN at the May 17-18, 2014 Surf Expo in Del Mar, California. Defendant opposes.
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; ...