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Performance Designed Products LLC. v. Plantronics, Inc.

United States District Court, S.D. California

July 12, 2019

PERFORMANCE DESIGNED PRODUCTS LLC, Plaintiff,
v.
PLANTRONICS, INC., et al., Defendants.

          ORDER (1) GRANTING DEFENDANTS' MOTION TO DISMISS FIRST AMENDED COMPLAINT [ECF NO. 18]; (2) DENYING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION [ECF NO. 24].

          Hon. Gonzalo P. Curiel, United States District Judge

         Before the Court are two motions arising from a trademark infringement dispute. On April 12, 2019, Defendants Plantronics, Inc., Polycom, Inc., and Poly (collectively, “Defendants”) filed a motion to dismiss Plaintiff Performance Designed Products LLC (“Plaintiff)'s First Amended Complaint. (ECF No. 18.) The motion is fully briefed. (ECF Nos. 21, 33.) Also before the Court is Plaintiff's May 10, 2019 motion for preliminary injunction. (ECF No. 24.)

         Pursuant to Civil Local Rule 7.1(d)(1), the Court finds the motions suitable for adjudication without oral argument. For the reasons set forth below, the Court GRANTS Defendants' motion to dismiss and DENIES Plaintiff's motion for preliminary injunction.

         I. Factual Background[1]

         Plaintiff is a “leading video game accessory company in the U.S. and worldwide, ” organized under California law and with its principal place of business in San Diego, California. (ECF No. 4, at 2.)

         Defendant Plantronics, Inc., (“Plantronics”) is a Delaware corporation with its principal place of business in Santa Cruz, California. (Id.) Defendant POLYCOM, INC. (“Polycom”), is a Delaware corporation with a principal place of business in San Jose, California. (Id.) After Plantronics acquired Polycom in 2018, the new combined entity was revealed to the public as “Poly.” (ECF No. 18-1, at 5 (explaining that Plantronics is registered as the parent company).[2]

         On or about March 21, 2018, Plaintiff developed the below “stylized ‘P' mark with flanges, ” for use in connection with headsets.

         (Image Omitted)

         (ECF No. 4, at 4.) On or about July 3, 2018, Plaintiff placed an initial tooling order with one of its factories to produce headsets bearing the mark; on approximately July 12, 2018, Plaintiff received its first order from a retail partner for the same. On or about October 30, 2018, the retail partner started to display the mark on its website. Thereafter on January 30, 2019, Plaintiff shipped its headsets to that retail partner and also begun accepting orders on its website, www.pdp.com. (Id.)

         Plaintiff alleges that Defendants started using a “virtually identical” mark sometime after Plaintiff's first use of the mark. Plaintiff provides a pictorial juxtaposition of the two marks:

         (Image Omitted)

         (Id. at 5.)

         On February 28, 2019, Plantronics applied for federal registration of its mark by filling an “intent to use” application with the United States Patent and Trademark Office (“USPTO”), Application Serial No. 88/320, 811. Plantronics sought registration of the mark for use in connection to a number of diverse classes, goods, and services, ranging from “cloud computing services, ” “electronic whiteboards, ” “sound masking equipment, ” and “interior design.” (Id. at 6-7.) Plaintiff, in its FAC, highlights that listed among the various types of goods and services are “headsets.” (Id. at 6.)

         II. Procedural Background

         On March 21, 2019, Plaintiff filed an original complaint with this Court. (ECF No. 1.) On March 22, 2019, Plaintiff amended as of right and filed the First Amended Complaint (“FAC”) at issue here. (ECF No. 4.) The FAC presents four causes of action for injunctive and monetary relief against Defendants for (1) trademark infringement and unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125, (2) common law trademark infringement, (3) violation of California's Unfair Competition Law (“UCL”), Cal. Bus. Prof. Code § 17200, and (4) denial of federal registration marks of Plantronics's USPTO Application Serial No. 88/320, 811.

         On April 14, 2019, Defendants moved to dismiss the FAC. (ECF No. 18-1.) On May 10, 2019, Plaintiff filed a response in opposition. (ECF No. 21.) That same day, Plaintiff filed a motion for preliminary injunction based on its first three causes of action. (ECF No. 24.) Defendants filed a reply to Plaintiff's response to the motion to dismiss on July 7, 2019. (ECF No. 33.)

         III. Discussion

         The resolution of Defendants' motion to dismiss and Plaintiff's request for preliminary injunction depends on the sufficiency of Plaintiff's first three causes of action for trademark infringement. Defendants have moved to dismiss all three trademark infringement counts on a singular basis-that Plaintiff has failed to allege sufficient facts of a likelihood of confusion between Plaintiff's goods and Defendants' goods.

         For reasons explained more fully below, the Court agrees with Defendants that Plaintiff has failed to meet its pleading burden on a material element of its claims. The Court will dismiss the FAC in its entirety[3 ...


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