United States District Court, D. Colorado
ORDER GRANTING IN PART TEMPORARY RESTRAINING
ORDER
William J. Martínez United States District Judge.
On June
21, 2019, Plaintiff SEBO America, LLC (“SEBO”)
filed a “Motion for and Brief in Support of a Temporary
Restraining Order and Preliminary Injunction” (the
“Motion”) seeking to limit Defendant Euraco Group
Limited from selling SEBO's goods in the United States
without authorization. (ECF No. 26.) SEBO seeks a temporary
restraining order (“TRO”) enjoining Defendant
Euraco Group Limited (“Euraco”), its officers,
agents, employees, successors, and assigns, and those acting
in concert or participation with, or under the authority of
or from Euraco, by using the username USABuyer or any other
alias, from infringing on the following trademarks: SEBO,
FELIX, AUTOMATIC X, ESSENTIAL G, COMFORT, AIRBELT, DART,
DISCO, DUO, DUO-P, and WORKS FOR ME (the “SEBO
Trademarks”). (Id.) SEBO also seeks a
preliminary injunction enjoining Euraco and its associates to
the same extent. (Id.)
As
explained below, SEBO's motion for a TRO is granted in
part and denied in part. That portion of the Motion seeking
the entry of a preliminary injunction is taken under
advisement. However, with respect to non-registered
trademarks, on or before Friday, July 5, 2019, SEBO must
provide additional detail about each mark it wishes for the
Court to consider in regards to a one-time extension of the
TRO under Rule 65, or with respect to entry of a preliminary
injunction.
I.
DISCUSSION
A.
Rule 65 Requirements for a Temporary Restraining
Order
To
obtain a temporary restraining order (“TRO”)
before the party to be restrained has an opportunity to
appear and respond, a plaintiff must present
(A) specific facts in an affidavit or a verified complaint
clearly show[ing] that immediate and irreparable injury,
loss, or damage will result to the movant before the adverse
party can be heard in opposition; and
(B) the movant's attorney['s] certifi[cation] in
writing [regarding] any efforts made to give notice and the
reasons why it should not be required.
Fed. R.
Civ. P. 65(b)(1). As for requirement “A, ” SEBO
has provided an affidavit from its chief executive officer,
John Van Leuven. (ECF No. 26-1.) As for requirement “B,
” SEBO's counsel certifies that he has
unsuccessfully attempted to communicate with Euraco through
its mailing address, telephone, and an e-mail address
(obtained through third-party discovery). (ECF No. 26-3
¶¶ 4-8.) At the time of filing the instant motion,
SEBO's counsel provided actual notice of the motion and
all pleadings filed in the action to Euraco through the
e-mail address provided in discovery. (Id. ¶
8.) Counsel notes that service of process is in progress and
the required documents for service have been provided to the
Central Authority of Jersey, United Kingdom, under the Hague
Service Convention, and that authority is proceeding with
local service requirements. (Id. ¶ 3.)
While
not explicit in the Motion or attorney certification, SEBO
suggests that it has made reasonable efforts to provide
notice, and thus the TRO should issue absent actual notice to
Euraco. The Court agrees. The Court thus finds that SEBO has
made a sufficient showing that a TRO should issue without
notice.
B.
SEBO Satisfies the Four-Part Test for Obtaining a
TRO
“A
party seeking a temporary restraining order or preliminary
injunction must show (1) a substantial likelihood that the
movant eventually will prevail on the merits; (2) that the
movant will suffer irreparable injury unless the injunction
issues; (3) that the threatened injury to the movant
outweighs whatever damage the proposed injunction may cause
the opposing party; and (4) that the injunction, if issued,
would not be adverse to the public interest.” NRC
Broad. Inc. v. Cool Radio, LLC, 2009 WL 2965279, at *1
(D. Colo. Sept. 14, 2009). The purpose of a temporary
restraining order is to “preserv[e] the status quo and
prevent[] irreparable harm just so long as is necessary to
hold a [preliminary injunction] hearing, and no
longer.” Granny Goose Foods, Inc. v. Bhd. of
Teamsters & Auto Truck Drivers Local No. 70 of Alameda
Cnty., 415 U.S. 423, 439 (1974).
SEBO
asserts eight claims against Defendants, alleging violations
of federal and state law. Its Motion for TRO, however, SEBO
focuses on its trademark infringement, unfair competition,
and false advertising claims under the Lanham Act, 15 U.S.C.
§§ 1051 et seq. Because the Court finds
that SEBO has shown a likelihood of success on its federal
claims, it does not address the likelihood of success on the
state claims.
“[I]n
order to establish trademark infringement, a plaintiff must
prove the validity of the mark it seeks to protect and must
also prove that the use of a similar mark by defendant is
‘likely to cause confusion in the market place
concerning the source of the different products.'”
USA Network v. Gannett Co., 584 F.Supp. 195, 198 (D.
Colo. 1984) (quoting Beer Nuts, Inc. v. Clover Club Foods
Co., 711 F.2d 934, 940 (10th Cir. 1983)).
“‘Confusion occurs when consumers make an
incorrect mental association between the involved commercial
products or their producers' or ‘when a mark is
likely to deceive purchasers or users as to the source,
endorsement, affiliation, or sponsorship of a
product.'” Health Grades, Inc. v. Robert Wood
Johnson Univ. Hosp.,Inc., 634 ...