United States District Court, S.D. California
RICK COLLINS, an individual; and VETERANS 360, a California Corporation, Plaintiffs,
UNITED STATES DEPARTMENT OF VETERANS AFFAIRS, Defendant.
ORDER DENYING PLAINTIFFS' MOTION FOR PRELIMINARY
INJUNCTION [DOC. NO. 16.]
MARILYN L. HUFF, DISTRICT JUDGE UNITED STATES DISTRICT COURT.
9, 2019, Plaintiffs Rick Collins and Veterans 360
(“Plaintiffs”), filed a complaint against
Defendant United States Department of Veterans Affairs
(“Defendant”) asserting claims for trademark
infringement. (Doc. No. 1.) On December 2, 2019, Plaintiffs
filed a motion for preliminary injunction to enjoin Defendant
from using “Vet360, ” “Veteran360, ”
or “any other reproduction, counterfeit, copy, or
colorable imitation of plaintiffs' registered
trademark[s].” (Doc. No. 16.) On December 30, 2019,
Defendant filed an opposition to Plaintiffs' motion (Doc.
No. 17), and Plaintiffs filed a reply on January 6, 2020.
(Doc. No. 18.) The Court held a hearing on the motion on
January 13, 2020. Glenn W. Trost and Don Wenskay appeared for
Plaintiffs and Scott Bolden and Rebecca G. Church appeared
for Defendant. For the reasons below, the Court denies
Plaintiffs' motion for a preliminary injunction without
Rick Collins is a veteran who founded a non-profit
organization, Veterans 360, in 2012. The organization
provides counseling, advocacy, and mentorship to active duty
personnel, veterans, and their families. (Doc. No. 1 ¶
5.) When forming this organization, Mr. Collins created the
trademarks “Veterans 360” and “Vets
360” for use by his organization in providing support
services to veterans. (Id. at ¶¶ 7-8.) Mr.
Collins registered the “Veterans 360” mark on
July 5, 2016 with the U.S. Patent and Trademark Office
(“PTO”), Registration No. 4, 991, 432. (Doc. No.
16-6.) On January 15, 2019, Mr. Collins registered the
“Vets 360” mark with the PTO, Registration No. 5,
654, 087. (Doc. No. 16-7.)
April 2018, Defendant United States Department of Veteran
Affairs rolled out a web-based platform to provide
veteran's services, naming the platform “Veteran
360” and “Vet 360.” (Id. ¶ 9;
Doc. No. 17 at 6.) On May 26, 2018, Plaintiffs wrote a letter
to Defendant to notify Defendant that it was infringing
Plaintiffs' marks. (Doc. No. 16-8.) On June 26, 2018,
Plaintiffs wrote a second letter to Defendant, informing
Defendant of the alleged infringement. (Doc. No. 16-9.) On
May 9, 2019, Plaintiffs filed the present action before this
Court, alleging that Defendant ignored Plaintiffs'
letters and continues to infringe their mark. (Doc. No. 1.)
preliminary injunction is “an extraordinary remedy
never awarded as of right.” Winter v. Natural
Resources Defense Council, Inc., 555 U.S. 7, 24 (2008).
“[P]laintiffs seeking a preliminary injunction face a
difficult task in proving that they are entitled to this
extraordinary remedy.” Earth Island Inst. v.
Carlton, 626 F.3d 462, 469 (9th Cir. 2010) (internal
quotations omitted). A 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.” Winter, 555 U.S. at 20.
Lanham Act, 15 U.S.C. § 1051 et seq.,
“creates a comprehensive framework for regulating the
use of trademarks and protecting them against infringement,
dilution, and unfair competition.” Gordon v. Drape
Creative, Inc., 909 F.3d 257, 263 (9th Cir. 2018)
(quoting Fortune Dynamic, Inc. v. Victoria's Secret
Stores Brand Mgmt., Inc., 618 F.3d 1025, 1030 (9th Cir.
2010)). To show trademark infringement, Plaintiffs must
prove: (1) that they have “a valid, protectable
trademark” and (2) the “defendant's use of
the mark is likely to cause confusion.” Id.
(quoting S. Cal. Darts Ass'n v. Zaffina, 762
F.3d 921, 929 (9th Cir. 2014)). Under the Lanham Act, the
owner of a trademark used in commerce may register the mark
with the PTO, and registration is prima facie evidence of the
mark's validity and the owner's exclusive right to
use the mark in connection with the goods and services
specified in the registration. 15 U.S.C. § 1057(b). To
determine whether another party's use of a mark is likely
to cause confusion, the Court considers eight factors:
(1) the strength of the mark; (2) the proximity of the goods;
(3) the similarity of the marks; (4) evidence of actual
confusion; (5) the marketing channels used; (6) the type of
goods and the degree of care likely to be exercised by the
purchaser; (7) the defendant's intent in selecting the
mark; and (8) the likelihood of expansion of the product
Gordon, 909 F.3d at 264 n.6 (internal citations
omitted). Evidence that use of the marks “has already
led to confusion is persuasive proof that future confusion is
likely.” La Quinta Worldwide LLC v. Q.R.T.M., S.A.
de C.V., 762 F.3d 867, 876 (9th Cir. 2014) (quoting
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 352 (9th
argue that Defendant's alleged infringement constitutes
irreparable harm because it harms Plaintiffs' ability to
control their business reputation. (Doc. No. 16 at 8- 9.)
Defendant contends that Plaintiffs do not demonstrate
irreparable harm because they have not offered objective
evidence showing injury and because Plaintiffs did not
diligently seek a preliminary injunction. (Doc. No. 17 at
5-7.) The Court commends Plaintiffs for their organization
and the public services ...