Collins v. United States Department of Veterans Affairs

          ORDER DENYING PLAINTIFFS' MOTION FOR PRELIMINARY INJUNCTION [DOC. NO. 16.]

          MARILYN L. HUFF, DISTRICT JUDGE UNITED STATES DISTRICT COURT.

         On May 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 prejudice.

         Background

         Plaintiff 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.)

         In 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.)

         Discussion

         I. Legal Standards

         A 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.

         II. Analysis

         The 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 lines.

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 Cir. 1979)).

         A. Irreparable Harm

         Plaintiffs 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 ...