SEBO America, LLC v. Euraco Group Ltd.

          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 ...