United States District Court, N.D. California
VINH-SANH TRADING CORPORATION, a California Corporation Plaintiff,
SFTC, INC., D.B.A. SUN FAT TRADING CORPORATION, a California Corporation, Defendant.
ORDER DENYING PRELIMINARY INJUNCTION
CHARLES R. BREYER UNITED STATES DISTRICT JUDGE.
pending is Plaintiff Vinh-Sanh Trading Corporation's
(“Vinh-Sanh”) motion for a preliminary injunction
against Defendant SFTC, Inc. (“Sun Fat”).
See MPI (dkt. 39) at 1-2. Vinh-Sanh seeks to enjoin
Sun Fat from further using allegedly infringing marks in its
sale of Thai jasmine rice. Id. The Court DENIES the
preliminary injunction for the reasons below.
imports and distributes rice and rice-based products. Compl.
(dkt. 1) ¶ 9. Its most popular product is Thai jasmine
rice, which it sells throughout the United States.
Id. ¶¶ 10, 12. In the mid-1980s, Vinh-Sanh
established the THREE LADIES brand, and developed a trademark
consisting of a drawing of three women wearing clothing
representing the countries of Cambodia, Vietnam, and Laos.
Id. ¶ 11. Vinh-Sanh has four trademarks in
connection with the THREE LADIES brand. See Compl.
¶ 13; TRO App. (dkt. 11) at 4.
is an importer, distributor, and wholesale buyer of Asian
foods. Compl. ¶ 22. Vinh-Sanh works with a
variety of distributors and briefly had a wholesale
relationship with Sun Fat “for the sale of a small
quantity of THREE LADIES rice.” Id. ¶ 23.
Vinh-Sanh “terminated the relationship with Sun
Fat” when it discovered that, in its view, Sun Fat was
infringing the THREE LADIES mark. Id. ¶ 24. Sun
Fat had started marketing and selling Thai jasmine rice with
the images-photographs, not drawings-of three women wearing
what Vinh-Sanh asserts is clothing representing the countries
of Cambodia, Vietnam, and Laos. Id.
brought suit for federal trademark infringement under 15
U.S.C. § 1114, Federal Unfair Competition under 15
U.S.C. § 1125(a), Common Law Trademark Infringement, and
Unfair Competition under Cal. Bus. & Prof. Code §
17200. See generally Compl. Vinh-Sanh applied for a
temporary restraining order (TRO) on August 2, 2019. See
generally TRO App. The Court denied the TRO. The Court
concluded that while Vinh-Sanh was likely to succeed on the
merits, and an injunction was in the public interest,
Vinh-Sanh had not shown irreparable harm. See Tr. of
Aug. 9, 2019 Proceedings (dkt. 27) at 3:19-22. The Court gave
the parties leave to conduct further discovery on irreparable
harm prior to briefing a preliminary injunction motion. Tr.
of Aug. 9, 2019 Proceedings at 3:13-4:12. Vinh-Sanh
subsequently filed a motion for preliminary injunction.
See generally MPI. Sun Fat opposed the motion.
See generally MPI Opp'n (dkt. 44). Vinh-Sanh
replied. See generally MPI Reply (dkt. 45).
motion for preliminary injunction, Vinh-Sanh asked the Court
to enjoin Sun Fat from: (1) manufacturing, producing,
sourcing, importing, selling or offering for sale,
distributing, advertising, providing, or promoting any goods
or services with the allegedly infringing marks; (2) using
the infringing marks or any “false designation of
origin, or false or misleading description or representation
of fact”; (3) “further infringing the rights of
Vinh-Sanh in and to its THREE LADIES Marks or otherwise
damaging Vinh-Sanh's goodwill or business
reputation”; (4) “competing unfairly with
Vinh-Sanh in any manner”; and (5) “continuing to
perform any other unlawful acts in any manner whatsoever
complained of in the Complaint[.]” See MPI at
plaintiff seeking a preliminary injunction must establish
that he is likely to succeed on the merits, that he is likely
to suffer irreparable harm in the absence of preliminary
relief, that the balance of equities tips in his favor, and
that an injunction is in the public interest.”
Rodriguez v. Robbins, 715 F.3d 1127, 1133 (9th Cir.
2013) (quoting Winter v. Natural Res. Def. Council,
Inc., 555 U.S. 7, 20 (2008)). The Ninth Circuit allows a
“sliding scale approach, ” such that if the
plaintiff can show “serious questions going to the
merits, ” that a balance of hardships tips sharply
toward the plaintiff, that there is likelihood of irreparable
injury, and that the injunction is in the public interest, a
preliminary injunction may still issue. See Kiva Health
Brands, LLC v. Kiva Brands, Inc., 2019 WL 4249075, No.
19-cv-03459-CRB, at *3 (N.D. Cal. Sep. 6, 2019) (quoting
Alliance for the Wild Rockies v. Cottrell, 632 F.3d
1127, 1134-35 (9th Cir. 2011) (internal quotation marks
Likelihood of Success on the Merits
Court continues to conclude that Vinh-Sanh is likely to
succeed on the merits of a trademark infringement claim. To
prevail on such a claim, a plaintiff must demonstrate (1)
ownership of a valid trademark and (2) use by defendant in
commerce of a mark likely to cause confusion. See Network
Automation, Inc. v. Advanced Sys. Concepts, Inc., 638
F.3d 1137, 1144 (9th Cir. 2011).
Ownership of Mark
owns its trademarks. Vinh-Sanh registered the THREE LADIES
Composite Mark on May 31, 2005, claiming a first use in
commerce in May of 1986, and registered its
Vietnamese-language Word Mark on October 8, 2013, with a
first use in commerce of 2004. See MPI at 9; Aug. 2.
Chen Decl. Ex. C, D, E, F (dkt. 12). Vinh-Sanh's
registration and ownership of the marks constitutes prima
facie evidence of the marks' validity and Vinh-Sanh's
exclusive right to use the marks in commerce. See 15
U.S.C. § 1115(b); Applied Info. Scis. Corp. v. eBAY,
Inc., 511 F.3d 966, 970 (9th Cir. 2007). Vinh-Sanh has
used the marks continuously in commerce since 1986.
See MPI at 9; Aug. 2 Chen Decl. ¶ 10.
Likelihood of Confusion
is also likely to succeed in demonstrating a likelihood of
confusion. There is a likelihood of confusion between two
products “when consumers are likely to assume that a
product or service is associated with a source other than its
actual source because of similarities between the two
sources' marks or marketing techniques.”
Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4
F.3d 819, 825 (9th Cir. 1993) (quoting Metro Publishing,
Ltd. v. San Jose Mercury News, 987 F.2d 637, 640 (9th
Cir. 1993) (abrogated on other grounds)). The Ninth Circuit
analyzes likelihood of confusion by referring to eight
factors identified in AMF Inc. v. Sleekcraft Boats,
599 F.2d 341, 348-49 (9th Cir. 1979) (abrogated in part on
other grounds by Mattel, Inc. v. Walking Mountain
Prods., 353 F.3d 792 (2003)): (a) strength of the mark;
(b) similarity of the marks; (c) proximity of the
goods/services sold; (d) similarity in the marketing channels
used; (e) type of goods/services and degree of care likely to
be exercised by purchasers; (f) evidence of actual confusion;
(g) defendant's intent in selecting its mark; and (h)
likelihood of expansion into other markets.
Strength of the Mark
marks are inherently distinctive and are “afforded the
widest ambit of protection, ” whereas a
“descriptive mark tells something about the product
[and] will be protected only when secondary meaning is
shown.” Sleekcraft, 599 F.2d at 349. That
Vinh-Sanh registered the trademarks without being required to
prove secondary meaning supports the conclusion that the
marks are inherently distinctive. See Americana Trading,
Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1287 (9th
Cir. 1992) (registered marks presumed to be distinctive).
Moreover, the THREE LADIES mark is distinctive on its face.
See Lahoti v. Vericheck, Inc., 586 F.3d 1190, 1198
(9th Cir. 2009) (“‘primary criterion' for
distinguishing between a suggestive and a descriptive mark
‘is the imaginativeness involved in the suggestion,
that is, how immediate and direct is the thought process from
the mark to the particular product.'”) (internal
citation omitted)). “THREE LADIES” does not
describe the rice or its features-it is instead fanciful and
arbitrary, like “Dutch Boy” as a name for paint.
See Sleekcraft, 599 F.2d at 349 (citing National
Lead Co. v. Wolfe, 223 F.2d 195, 199 (9th Cir. 1955),
cert. denied, 350 U.S. 883 (1955)).
consisting of non-English words must pass the “foreign
equivalents” test: the mark is translated into English
to see whether, “to those American buyers familiar with
the foreign language, the word would have a descriptive
connotation.” See McCarthy on Trademarks,
§ 11:34 (5th Ed.); see also Bart Schwartz Intern.
Textiles, Ltd. v. F.T.C., 129 U.S.P.Q. 258, 289 F.2d
665, 668 (1961) (“[A] descriptive word in a foreign
language cannot be registered in the United States as a
trademark for the described product.”). Because
Vinh-Sanh's Vietnamese mark translates to “Three
Ladies” or “Three Girls, ” it is just as
arbitrary and fanciful as the English mark and is thus just
as distinctive a mark.
marks also show “commercial strength, ” a feature
“based on ‘actual market
recognition[.]'” Network Automation, Inc.,
638 F.3d at 1149. Though the commercial strength inquiry is
“evidence-intensive” and “unnecessary at
the preliminary injunction stage[, ]” it is worth
noting that Vinh-Sanh would likely make a successful showing
here as well. See id. at 1150. Vinh-Sanh asserts
that the brand “is widely recognized by customers, and
has further attained incredible commercial success over some
thirty-plus years of use[.]” MPI at 11.
argues that the Design Mark is not strong because
“there are other well-known rice brands that feature on
the bags drawings of three Asian figures.” TRO
Opp'n (dkt. 23) at 11. Sun Fat CEO Benny Hong declares
that there are “other popular rice brands” that
include drawings of three Asian people, such as Three Farmers
and Three Kings. Hong Decl. (dkt. 23-1) ¶ 20; see
also Xiong Decl. (dkt. 23-7) ¶ 10 (“several
companies in the rice and Asian foods market . . . use
drawings of three ancient Asian characters.”). The
Court was presented with no examples. While examples of
extensive third party use of an image much like the THREE
LADIES mark would weaken Vinh-Sanh's claim, see Hero
Nutritionals LLC v. Nutraceutical Corp., No. SACV
11-1195 AG (MLGx), 2013 WL 4480674, at *4 (C.D. Cal. Aug. 16,
2013) (extensive third party use demonstrated weakness of
marks), at this stage, the Three Ladies mark appears strong.
Similarity of the Marks
of the marks is tested on three levels: sight, sound, and
meaning, ” and each must be considered as encountered
in the marketplace. Sleekcraft, 599 F.2d at 351.
Even assuming that the THREE ASIAN LADIES identifier from the
Sun Fat website, Chen Decl. Ex. H (dkt. 12), is no longer on
display, the image on the Sun Fat rice, Chen Decl. Ex. G-a
photograph of three women in traditional Asian clothing-is
strongly reminiscent of the image on Vinh-Sanh's rice,
Chen Decl. Ex. B, a drawing of three women in traditional
Asian clothing with the words “Three Ladies
Brand” underneath. Both show three women smiling while
wearing different traditional Asian dresses, though the
Vinh-Sanh image shows the women's full bodies and the Sun
Fat image cuts off above the women's knees, the women are
doing different things with their hands in the two images,
and the Vinh-Sanh image is a drawing while the Sun Fat image
is a photograph. Compare Chen Decl. Ex. B
and Chen Decl. Ex. G.
argues that the distinction between a drawing and a
photograph is significant. See TRO Opp'n at 8;
MPI Opp'n at 10. But the likelihood of confusion for a
consumer in the marketplace is not necessarily that they
mistake one image for another-it is that they will perceive
Sun Fat's package, with a photograph of three women in
traditional Asian dress, as an updated version of the drawing
of three women in traditional Asian dress that they are
accustomed to seeing on Vinh-Sanh's product. See
MPI at 12. Sun Fat's citation to Funrise Canada (HK)
Ltd. v. Zauder Bros., Inc., No. 99-cv-1519 (ARR), 1999
WL 1021810, at *22 (E.D.N.Y. July 2, 1999), in which the
court noted the difference between a “photograph of a
witch” and a “drawing of a fanciful phantom-like
ghoul” is not helpful-this case is more like a
photograph of a witch versus a drawing of a witch.
See TRO Opp'n at 8. The same is true of
Gameologist Group, LLC v. Scientific Games Int'l,
Inc., 838 F.Supp.2d 141, 160-61 (S.D.N.Y. 2011), where
the images were “visually dissimilar, ” not only
because one was a photograph and one a drawing, as Sun Fat
asserts, see TRO Opp'n at 8, but because, among
other things, one “depicts photographs of cars,
scantily-clad women, and stacks of hundred dollar
bills” while the other “depict[s] drawings of
diamonds, flowers, butterflies, and in one instance, a
cartoon of an anthropomorphized lottery ticket, ”
see Gameologist Group, 838 F.Supp.2d at 161.
also made much of the argument that its three women are not
wearing clothing representing Cambodia, Vietnam, and Laos (as
in the Vinh-Sinh image) but either Cambodian, Hmong and
Vietnamese clothing, or Thai, Vietnamese, and Hmong clothing.
See TRO Opp'n at 9. It is true that the dresses
are different. Of the three women pictured in the two
designs, the first woman looks the most similar in both
images, with an elaborate, pointed headpiece; the second
woman in both images has a long-sleeved floral dress (though
the second Vinh-Sanh woman is wearing a headpiece while the
second Sun Fat woman is not); and the third woman is the most
different-while the Vinh-Sanh woman wears a flower in her
hair and a sleeveless dress, the Sun Fat woman wears a
triangular headpiece and three-quarter sleeve dress, though
both dresses exhibit prominent collars. Compare Chen
Decl. Ex. B and Chen Decl. Ex. G.
also argues that the THREE LADIES name appears below the
image of the three women on the Vinh-Sanh rice, while Sun Fat
does not use the name “three ladies” anywhere on
its rice. See TRO Opp'n at 8; MPI Opp'n at
11. This is a difference between the two images-and of course
other words on the rice bags are different as ...