United States District Court, S.D. California
YOUNGEVITY INTERNATIONAL, INC., a Delaware corporation, Plaintiff,
RENEW LIFE FORMULAS, INC., a Florida corporation; KEIL'S FOOD STORES, a California corporation; SUPER JUNIOR INC., d/b/a KRISP BEVERAGES AND NATURAL FOODS, a California corporation; SUNFLOWER FARMERS MARKETS, LLC, d/b/a SPROUTS FARMERS MARKETS, a Delaware limited liability company; and PHARMACA INTEGRATIVE PHARMACY, INC., a Delaware corporation, Defendants
For Youngevity International, Inc., a Delaware Corporation, Plaintiff: Boris Zelkind, David P. Kujawa, Seong-hee Emily Lee, LEAD ATTORNEYS, Knobbe Martens Olson and Bear LLP, San Diego, CA; Steven J Nataupsky, LEAD ATTORNEY, Knobbe Martens Olson and Bear, Irvine, CA.
For Renew Life Formulas, Inc., a Florida Corporation, Defendant: Daniel M Cislo, LEAD ATTORNEY, Cislo and Thomas, Santa Monica, CA; James B. Lake, James McGuire McGuire, LEAD ATTORNEYS, PRO HAC VICE, Thomas & LoCicero PL, Tampa, FL.
For Keil's Food Stores, a California Corporation, Sunflower Farmers Markets, LLC, a Delaware Limited Liability Company, doing business as, Sprouts Farmers Markets, Pharmaca Integrative Pharmacy, Inc., a Delaware Corporation, Defendants: Daniel M Cislo, LEAD ATTORNEY, Cislo and Thomas, Santa Monica, CA.
ORDER GRANTING DEFENDANT RENEW LIFE FORMULAS, INC.'S MOTION TO STAY (Doc. No. 13)
Hon. Anthony J. Battaglia, United States District Judge.
Presently before the Court is Defendant Renew Life Formulas, Inc.'s (" Renew Life" ) motion to dismiss, stay, or transfer the case pursuant to the first-to-file rule. (Doc. No. 13.) Plaintiff Youngevity International, Inc. (" Youngevity" ) filed an opposition on August 4, 2014, (Doc. No. 19), and Renew Life filed a reply on August 11, 2014, (Doc. No. 20). In accordance with Civil Local Rule 7.1.d.1, the Court finds the motion suitable for determination on the papers and without oral argument. Accordingly, the motion hearing scheduled for September 11, 2014 is hereby vacated. For the reasons set below, the Court GRANTS Renew Life's motion to stay. (Doc. No. 13.)
I. Youngevity's Trademark
Youngevity is a Delaware corporation organized in 1997, and has its principal place of business in Chula Vista, California.
(Compl. ¶ 5.) Youngevity offers a variety of health care products and nutritional supplements, many of which are offered under the brand name ULTIMATE, including, but not limited to, ULTIMATE SELENIUMTM, ULTIMATE ALUCO GELTM, ULTIMATE TANGERINE TM, ULTIMATE DAILYTM, ULTIMATE EFA PLUSTM, ULTIMATE MINERAL CAPSTM, ULTIMATE CLASSICTM, and ULTIMATE FLORA FXTM. ( Id. at ¶ 18.) Since at least early 2002, Youngevity has used the trademark ULTIMATE FLORA FXTM, the mark at issue here, in commerce to market and sell its proprietary formula of probiotic products. ( Id. at ¶ 19, Ex. B.)
From its inception, Youngevity has used a national direct sales approach to market and sell its inventory, offering its products through various commercial and retail channels. ( Id. at ¶ 15.) Youngevity currently has over 70,000 independent distributors throughout the nation, and spends over $40 million annually on these sales efforts. ( Id.) Youngevity's distributors reach customers through, among other avenues, the Internet (either through Youngevity-provided websites or third-party websites such as Amazon.com or eBay.com), the airwaves, trade shows, lectures, flea markets, and local shops throughout the nation. ( Id. at ¶ 17, Ex. A.)
II. Renew Life's Trademark
Since at least early 2005, Renew Life has been advertising, marketing, and selling in interstate commerce a variety of probiotic supplements under the ULTIMATE FLORATM mark. (Doc. No. 19, Zelkind Decl., Ex. 3 ¶ 9.) Renew Life has expended substantial resources marketing and promoting the ULTIMATE FLORATM mark, and as a result, contends tat the ULTIMATE FLORATM mark has ...