United States District Court, E.D. California
ORDER FINDINGS AND RECOMMENDATION THAT
PLAINTIFF'S MOTION FOR DEFAULT JUDGMENT AND PERMANENT
INJUNCTION BE GRANTED (Doc. 16) OBJECTIONS DUE: 21
K. OBERTO UNITED STATES MAGISTRATE JUDGE
August 6, 2019, Plaintiff Tapatio Foods, LLC filed a motion
for default judgment against Defendant Sulaiman Waleed
Rodriguez. (Doc. 16.) No opposition to
Plaintiff's motion was filed. The motion was referred to
the undersigned for findings and recommendation pursuant to
28 U.S.C. § 636(b). The undersigned reviewed
Plaintiff's papers and all supporting material and found
the matter suitable for decision without oral argument
pursuant to Local Rule 230(g). The hearing set for October
16, 2019, was therefore VACATED. (Doc. 23.)
reasons set forth below, the Court RECOMMENDS that
Plaintiff's motion for default judgment and permanent
injunction be GRANTED.
April 3, 2019, Plaintiff filed the operative First Amended
Complaint (“FAC”) alleging claims for trademark
infringement; unfair competition under the Lanham Act, 15
U.S.C. § 1125; unfair competition under California law;
and trademark dilution by tarnishment. (Doc. 5.) Plaintiff
states that it is the owner of four United States Trademark
Registrations (the “Tapatio Marks”) related
to its meatless hot sauce and apparel sold in grocery stores,
retail outlets, and restaurants nationwide. (See Id.
alleges Defendant advertises and sells meatless hot sauce
infused with T.H.C., a derivative of marijuana, and other
related products under the brand name “Tiowaxy”
and “a variety of marks that are confusingly similar to
the TAPATIO Marks[.]” (Id. ¶¶
seeks injunctive relief in the form of “a permanent
injunction restraining Defendants, any companies or business
that they own, their officers, directors, agents, employees,
representatives and all persons acting in concert with
Defendants, from engaging in any further trademark
infringement, unfair competition and dilution[.]”
(Id. at 11.)
was served on April 15, 2019. (Doc. 10.) To date, Defendant
has not responded to the FAC. Plaintiff requested that the
Clerk enter default against Defendant on June 21, 2019, (Doc.
11), which was entered on June 24, 2019. (Doc. 12.) Plaintiff
then filed a motion for default judgment and permanent
injunction against Defendant, which is now before the Court.
Rule of Civil Procedure 55(b) permits a court-ordered default
judgment following the entry of default by the clerk of the
court under Rule 55(a). It is within the sole discretion of
the court as to whether default judgment should be entered.
See Aldabe v. Aldabe, 616 F.2d 1089, 1092 (9th Cir.
1980). A defendant's default by itself does not entitle a
plaintiff to a court-ordered judgment. See Id.
Instead, the Ninth Circuit has determined a court should
consider seven discretionary factors, often referred to as
the “Eitel factors, ” before rendering a
decision on default judgment. See Eitel v. McCool,
782 F.2d 1470, 1471-72 (9th Cir. 1986). The Eitel
factors include (1) the possibility of prejudice to the
plaintiff, (2) the merits of the plaintiff's substantive
claim, (3) the sufficiency of the complaint, (4) the sum of
money at stake in the action, (5) the possibility of a
dispute concerning material facts, (6) whether the default
was due to excusable neglect, and (7) the strong policy
underlying the Federal Rules of Civil Procedure favoring
decisions on the merits. See id.
plaintiff is required to prove all damages sought in the
complaint. See Televideo Sys., Inc. v. Heidenthal,
826 F.2d 915, 917-18 (9th Cir. 1992). In addition, any relief
sought may not be different in kind from, or exceed in
amount, what is demanded in the complaint. Fed.R.Civ.P.
54(c). If the facts necessary to determine the damages are
not contained in the complaint, or are legally insufficient,
they will not be established by default. See Cripps v.
Life Ins. Co. of N. Am., 980 F.2d 1261, 1267 (9th Cir.
once the court clerk enters a default, the well-pleaded
factual allegations of the complaint are taken as true,
except for those allegations relating to damages. See
Televideo Sys., Inc., 826 F.2d at 917.
The Eitel Factors Weigh in Favor of Granting a
Default Judgment a. Prejudice to Plaintiff
if Default Judgment is Not Granted
default judgment is not granted, Plaintiff will effectively
be denied a remedy until Defendant participates and makes an
appearance in the litigation-which may never occur. Denying
Plaintiff a means of recourse is, by itself, sufficient to
meet the burden imposed by this factor. See, e.g., Philip
Morris, USA, Inc. v. Castworld Prods., Inc., 219 F.R.D.
494, 499 (C.D. Cal. 2003); Adobe Systems Inc. v.
Cain, No. 5:08-cv-02435 RMW, 2008 WL 5000194, at *3
(N.D. Cal. Nov. 21, 2008) (“[I]f the default judgment
motion is denied, [the plaintiff] will be left without a
remedy or means to prevent [Defendant's] continued
Merits of Plaintiff's Substantive Claims and the
Sufficiency of the Complaint
next relevant Eitel factors include an evaluation of
the merits of the substantive claims pled in the complaint as
well as the general sufficiency of the complaint. In weighing
these factors, courts evaluate whether the complaint is
sufficient to state a claim that supports the relief sought.
See Danning v. Lavine, 572 F.2d 1386, 1388 (9th Cir.
1978); see also DIRECTV, Inc. v. Huynh, 503 F.3d
847, 854 (9th Cir. 2007) (“[A] defendant is not held to
admit facts that are not well- pleaded or to admit
conclusions of law.”) (internal quotation marks
Plaintiff pleads claims for (1) trademark infringement under
15 U.S.C. § 1114; (2) unfair competition under 15 U.S.C.
§ 1125; (3) unfair competition under Cal. Bus. &
Prof. Code § 17200; and (4) dilution by tarnishment
under 15 U.S.C. § 1125(c)(2)(C). (Doc. 5 ¶¶
Trademark Infringement and Unfair Competition (Counts
Court analyzes Plaintiff's claims for trademark
infringement under 15 U.S.C. § 1114, unfair competition
under 15 U.S.C. § 1125, and unfair competition under
California law together, because if a plaintiff sufficiently
pleads a claim for trademark infringement, it also
sufficiently pleads claims for unfair competition under 15
U.S.C. § 1125 and California law. See, e.g.,
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1153
(9th Cir. 2002) (“[A]ctions pursuant to . . . §
17200 are ‘substantially congruent' to claims made
under the Lanham Act”) (citation omitted); Spy
Optic, Inc. v. Alibaba.Com, Inc., 164 F.Supp.3d 755, 764
(C.D. Cal. 2015); Kythera Biopharmaceuticals, Inc. v.
Lithera, Inc., 998 F.Supp.2d 890, 897 (C.D. Cal. 2014);
Phillip Morris USA Inc. v. Liu, 489 F.Supp.2d 1119,
1122 (C.D. Cal. 2007) (“Proof of trademark infringement
under the Lanham Act independently constitutes unfair
competition under California law”); Grey v.
Campbell Soup Co., 650 F.Supp. 1166, 1173 (C.D. Cal.
1986) (“The tests for infringement of a federally
registered mark under § 32(1), 15 U.S.C. § 1114(1),
infringement of a common law trademark, unfair competition
under § 43(a), 15 U.S.C. § 1125(a), and common law
unfair competition involving trademarks are the
prevail on a claim for trademark infringement, a plaintiff
must show “(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.”
Rearden LLC v. Rearden Commerce, Inc., 683 F.3d
1190, 1202 (9th Cir. 2012) (quoting Network Automation,
Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137,
1144 (9th Cir. 2011)); see also Chan Luu, Inc. v. Guang
Gao, No. CV 13-2297 FMO (JCX), 2014 WL 12567141, at *4
(C.D. Cal. Jan. 27, 2014) (“To prevail on its claims
under the Lanham Act for trademark infringement . . .
plaintiff must demonstrate that, ‘(1) it owns a valid
and protectable trademark, and (2) the defendant used in
commerce a similar mark without authorization in a manner
likely to cause consumer confusion, deception, or
mistake.”) (citation omitted).