Opinion
CV-23-00298-TUC-AMM
05-07-2024
ICU Industries Incorporated, Plaintiff, v. Copper State Glass and Screen LLC, Defendant.
REPORT AND RECOMMENDATION
ANGELA M. MARTINEZ, UNITED STATES MAGISTRATE JUDGE
Pending before the Court is Plaintiff's Motion for Entry of Default Judgment. (Doc. 19.) Plaintiff has consented to Magistrate Judge jurisdiction. (Doc. 15.) However, because Defendant has failed to appear in this matter, and, therefore, has not consented to Magistrate Judge jurisdiction, the assigned Magistrate Judge submits a Report and Recommendation to Senior District Judge Raner C. Collins pursuant to Gen. Ord. 21-25. For the reasons set forth herein, the Court recommends granting Plaintiff default judgment and injunctive relief on its trademark infringement claims.
I. Factual and Procedural Background
On June 29, 2023, Plaintiff ICU Industries, Inc., doing business as Copperstate Glass & Mirror, filed a Complaint against Defendant Copper State Glass and Screen LLC alleging four causes of action: trademark infringement under 15 U.S.C. § 1051 et seq., false designation of origin/false advertising under 15 U.S.C. § 1125(a), common law trademark infringement, and common law unfair competition. (Doc. 1.) The allegations supporting these claims are as follows.
Plaintiff is in the business of installing, repairing, and replacing glass, mirrors, and screens. (Doc. 1 at ¶ 6.) Plaintiff serves primarily commercial enterprises such as Circle K, Starbucks, and Sheraton, and has been doing business in Arizona under the name “Copperstate Glass & Mirror” since 1989. (Id.) Plaintiff has both an Arizona tradename registration and a trademark registration from the United States Patent and Trademark Office (USPTO) for “Copperstate Glass & Mirror.” (Id. at ¶¶ 8-9; see also Exh. A.) The trademark is currently active and has been used continuously in Arizona commerce since 1989 and in interstate commerce since 2006. (Id. at ¶¶ 8-10.)
Plaintiff has invested significant amounts of money to advertise and promote its business and to provide quality service to commercial and residential customers. (Id. ¶ 11.) Due to its advertising and continuous use of the trademark “Copperstate Glass & Mirror,” customers in Arizona and throughout the United States associate “Copperstate,” “Copperstate Glass,” and “Copperstate Mirror” with Plaintiff's business. (Id.)
Defendant Copper State Glass and Screen LLC has been advertising and providing glass, mirror, and screen installation and repair services in Tucson, Arizona since March 19, 2019. (Id. ¶ 11.) Plaintiff alleges that the infringing mark, “Copper State Glass and Screen,” is “almost exactly identical to, is a colorable imitation of, and is confusingly similar to” Plaintiff's registered mark, “Copperstate Glass & Mirror.” (Id. ¶ 13.) Plaintiff further alleges that Defendant offers the same or similar glass, mirror, and screen installation, repair, and replacement services to commercial and residential customers as does Plaintiff. (Id.) In support of these allegations, Plaintiff attaches as Exhibit B to the Complaint images of Defendant's website, https://copperstategs.com, and Facebook page. (Id. at 13-17.)
The Complaint contains two consecutive paragraphs numbered 11. (Doc. 1 at 4.) To avoid confusion, the Court refers to the paragraphs as numbered. This citation refers to the second paragraph 11.
Plaintiff avers that Defendant has actual notice of this lawsuit. (Id. ¶ 14.) Plaintiff's counsel has sent Defendant's principal, Luis R. Garcia, at least two cease and desist letters since October 27, 2022. (Id.) Plaintiff's counsel further avows that she discussed the facts of the case with Mr. Garcia and asked Mr. Garcia to provide evidence supporting his position that the infringing mark had been used continuously in the Tucson area prior to Plaintiff's use, which he did not do. (Id.) Mr. Garcia has now ceased communicating with Plaintiff's counsel, and Defendant continues to use and advertise the infringing mark. (Id. ¶ 14-15.)
Plaintiff's Complaint requests (1) injunctive relief prohibiting Defendant from further use of the “Copper State Glass and Screen” mark, or any other similar mark, word, or name; (2) injunctive relief prohibiting Defendant from further use of the “Copper State Glass and Screen” mark on its vehicles, website, social media, promotional materials, or any other form of advertising; (3) an Order requiring Defendant to undertake a corrective advertising campaign; (4) cancellation of Defendant's domain name https://copperstategs.com; (5) damages for unjust enrichment; and (6) Plaintiff's costs and attorneys' fees. (Doc. 1 at 9-10); see 15 U.S.C. § 1117(a) (assessment of damages for violations of 15 U.S.C. § 1125(a)).
Following the filing of the Motion for Default Judgment, the Court directed Plaintiff to submit any briefing and evidence in support of a request for monetary damages. (Doc. 20.) Plaintiff has not done so.
Plaintiff executed service in accordance with A.R.S. § 29-3119(B) on or about August 12, 2023. (Doc. 12; doc. 17 ¶¶ 4-6.)) On August 31, 2023, Plaintiff consented to Magistrate Judge jurisdiction. (Doc. 15.) On December 1, 2023, after no further action had been taken by either party, the Court issued an Order to Show Cause why the action should not be dismissed for failure to prosecute. (Doc. 16.) On December 5, 2023, Plaintiff filed an Application for Entry of Default. (Doc. 17.) On January 18, 2024, the Clerk of Court entered default. (Doc. 18.) On February 6, 20204, Plaintiff filed the pending Motion for Default Judgment. (Doc. 19.) Defendant has not answered, entered an appearance, or otherwise defended itself against the allegations.
A.R.S. § 29-3119(B) provides that if a company's “statutory agent cannot with reasonable diligence be served, the company or foreign company may be served by registered or certified mail, return receipt requested, or by a similar commercial delivery service, addressed to the company or foreign company at its principal address. The principal address must be as shown on the company's or foreign company's most recent filing with the commission.” Because Plaintiff was not able to serve Defendant's statutory agent, Plaintiff completed service pursuant to this provision. (See doc. 12.)
II. Legal Standard
“When a party against whom a judgment for affirmative relief is sought has failed to plead or otherwise defend, and that failure is shown by affidavit or otherwise, the clerk must enter the party's default.” Fed.R.Civ.P. 55(a). The plaintiff may thereafter apply for entry of default judgment by the Court. Fed.R.Civ.P. 55(b)(2); Truong Giang Corp. v. Twinstar Tea Corp., 2007 WL 1545173, at *3 (N.D. Cal. May 29, 2007) (citing Fed.R.Civ.P. 55). In deciding whether to grant default judgment, the Court considers:
(1) the possibility of prejudice to the plaintiff, (2) the merits of plaintiff's substantive claim, (3) the sufficiency of the complaint, (4) the sum of money at stake in the action; (5) the possibility of a dispute concerning material facts; (6) whether the default was due to excusable neglect, and (7) the strong policy underlying the Federal Rules of Civil Procedure favoring decisions on the merits.See Eitel v. McCool, 782 F.2d 1470, 1471-72 (9th Cir. 1986)). “In considering the above factors, the Court takes all factual allegations in [the plaintiff's] complaint as true, except for those relating to damages.” Truong Giang Corp., 2007 WL 1545173, at *3 (citing TeleVideo Systems, Inc. v. Heidenthal, 826 F.2d 915, 917-18 (9th Cir. 1987)); see also Fair Hous. of Marin v. Combs, 285 F.3d 899, 906 (9th Cir. 2002) (“With respect to the determination of liability and the default judgment itself, the general rule is that well-pled allegations in the complaint regarding liability are deemed true.”).
III. Discussion
Having considered each of the Eitel factors, the Court finds that the factors weigh in favor of granting default judgment, as set forth herein:
A. There is a strong possibility of prejudice to Plaintiff.
As discussed below in Section B, Plaintiff's claim of trademark infringement is likely meritorious. Were the Court to deny Plaintiff's request for default judgment, Plaintiff would have no other recourse. See Amerifresh Inc. v. So Ono Food Prod. LLC, No. CV-19-01331-PHX-DJH, 2019 WL 3532156, at *2 (D. Ariz. Aug. 2, 2019); see also Eitel, 782 at 1471-72 (9th Cir. 1986)); Truong Giang Corp., 2007 WL 1545173, at *3.
Furthermore, unless the Court grants the requested injunctive relief, Plaintiff would likely be prejudiced because it continues to suffer harm from the violation of its trademark rights. See id.
B. All but one of Plaintiff's claims have merit, and the Complaint is sufficient.
Plaintiff alleges four causes of action in the Complaint, as follows:
1. Plaintiff establishes a claim for Trademark Infringement under 15 U.S.C. §§ 1051 et seq .
First, Plaintiff alleges trademark infringement under the Lanham Act, 15 U.S.C. §§ 1051 et seq. (Doc. 1 at 5-6.) To establish trademark infringement under the Lanham Act, a plaintiff must demonstrate that (1) it has a protectible ownership interest in the mark and (2) defendant's use of the mark is likely to cause consumer confusion. Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011); see also Dep't of Parks & Recreation for State of California v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006) (federal registration of a mark is prima facie evidence of ownership of the mark). Here, Plaintiff has established an ownership interest in the mark in Exhibit A to the Complaint, which documents its registration of the mark “Copperstate Glass & Mirror.” (Doc. 1 at 12.)
15 U.S.C. § 1114 governs infringement of registered marks.
Whether a mark is likely to cause consumer confusion is subject to evaluation of eight factors: “(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines.” Network Automation, Inc., 638 F.3d at 1145 (citation omitted). This list is not exhaustive and other variables may be relevant, depending on the facts. Id. These factors are “intended as an adaptable proxy for consumer confusion, not a rote checklist.” Id. (citing Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc., 618 F.3d 1025, 1030 (9th Cir. 2010) (eight-factor analysis is “best understood as simply providing helpful guideposts”)).
Here, the Court finds that Defendant's use of the infringing mark “Copper State Glass and Screen” is likely to cause consumer confusion. Plaintiff serves large corporate clients and has been operating in Arizona since 1989 and in interstate commerce since 2006. Thus, Plaintiff's 35-year history of business operations in Arizona (known as the “Copper State”) and its large customer base establish the strength of its mark. Both parties operate in southern Arizona, and therefore their services of installing and repairing glass and screen doors overlap geographically. The registered and infringing marks are very similar, with a difference of only one word-in the infringing mark, the word “screen” replaces the word “mirror.” Although the infringing mark has a space between “copper” and “state,” whereas the registered mark has “copper” and “state” as one word, this is unlikely to differentiate the companies from a customer's viewpoint. Both marks begin with the phrase “Copper State Glass and,” which, in this Court's view, is sufficient to cause confusion among consumers as to which company they are hiring.
Although the Court notes the possibility of confusion, Plaintiff has not presented any evidence of actual confusion among consumers. There is at least some overlap in the marketing channels used, where both parties advertise their services on the internet, via websites and social media. Lastly, the type of goods and services provided are very similar-both companies install and repair glass, screens, and mirrors. Assuming the companies offer similar pricing, a customer would be unlikely to distinguish between two companies providing identical services. Based on its evaluation of these factors, the Court finds that the infringing mark is likely to cause consumer confusion, and Plaintiff has therefore satisfactorily established the merits of its claim of trademark infringement under the Lanham Act. Default judgment should therefore be granted as to this claim.
2. Plaintiff establishes a claim for False Designation of Origin but not False Advertising under 15 U.S.C. § 1125(a).
Plaintiff's second cause of action alleges false designation of origin and false advertising under 15 U.S.C. § 1125(a). (Doc. 1 at 6-7.) False designation of origin, also called false association, requires proof that a defendant “(1) used in commerce (2) any word, false designation of origin, false or misleading description, or representation of fact, which (3) is likely to cause confusion or misrepresents the characteristics of his or another person's goods or services.” PetConnect Rescue, Inc. v. Salinas, 656 F.Supp.3d 1131, 1160 (S.D. Cal. 2023) (citing Freecycle Network, Inc. v. Oey, 505 F.3d 898, 902 (9th Cir. 2007)). “The core element is the likelihood of confusion, i.e., whether the similarity of the marks is likely to confuse customers about the source of the products.” Id. “Likelihood of confusion will be found whenever consumers are likely to assume that a mark is associated with another source or sponsor because of similarities between the two marks.” Acad. of Motion Picture Arts & Scis. v. Creative House Promotions, Inc., 944 F.2d 1446, 1456 (9th Cir. 1991).
Here, the alleged facts, which are taken as true, are sufficient to establish a likelihood of confusion among consumers about the source of Plaintiff's services. The similarities between the parties' business names and the services they offer are likely to cause consumers to associate Plaintiff's services with those of Defendant, or to incorrectly attribute them to Defendant. Therefore, because customers are likely to be misled as to the source of Defendant's services due to Defendant's use of the infringing mark, Plaintiff has established the elements of a claim for false designation of origin. Default judgment should therefore be granted as to this claim.
The Lanham Act also prohibits “false advertising.” PetConnect Rescue, Inc., 656 F.Supp. at 1166. The elements of a false advertising claim under section 43(a)(1)(B) of the Lanham Act are “(1) a false statement of fact by the defendant in a commercial advertisement about its own or another's product; (2) the statement actually deceived or has the tendency to deceive a substantial segment of its audience; (3) the deception is material, in that it is likely to influence the purchasing decision; (4) the defendant caused its false statement to enter interstate commerce; and (5) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct diversion of sales from itself to defendant or by a lessening of the goodwill associated with its products.” Id. at 1166 (citing Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1139 (9th Cir. 1997)). “To demonstrate falsity within the meaning of the Lanham Act, a plaintiff may show that the statement was literally false, either on its face or by necessary implication, or that the statement was literally true but likely to mislead or confuse consumers.” Id.
A false advertising claim must also establish that the claimed injury “(1) is within the ‘zone of interests' protected by the Lanham Act and (2) was proximately caused by defendant's violation of the Lanham Act.” Id. (citation omitted). To be within the “zone of interests,” a plaintiff must suffer “an injury to a commercial interest in reputation or sales.” Id. (citation omitted). To establish proximate cause, a plaintiff must show “economic or reputation injury flowing directly from the deception wrought by the defendant's advertising; and that occurs when deception of consumers causes them to withhold trade from the plaintiff.” Id. (citation omitted).
Plaintiff has not alleged sufficient factual support for a false advertising claim. Plaintiff has not identified a “false statement of fact” made by Defendant that caused “material deception” affecting the public's decision as to whether to purchase services from Plaintiff, nor has Plaintiff shown that Defendant advertised in a way that was “literally true” but likely to mislead or confuse consumers. Plaintiff has not shown that Defendant engaged in any affirmative act of false advertising that could provide a basis for this claim.
Plaintiff further fails to show any injury within the “zone of interests” protected by the Lanham Act. For instance, Plaintiff presents no evidence that it has lost business as a result of Defendant's use of the infringing mark. Plaintiff also has not shown that sales have been diverted from itself to Defendant or that the goodwill associated with its business has been reduced as a result of Defendant's use of the infringing mark. Furthermore, there is no evidence that Defendant's services are of inferior quality such that any misattribution by customers would negatively impact their opinion of Plaintiff. The Court notes that it has not located, nor has Plaintiff offered, any law directing the Court to assume material harm, such as lost business or goodwill, from the mere fact of Defendant's use of the infringing mark for the purpose of proving a false advertising claim. Accordingly, Plaintiff fails to establish the necessary elements of a false advertising claim, and default judgment should be denied as to this claim.
3. Plaintiff establishes a claim for common law trademark infringement.
Plaintiff's third cause of action alleges common law trademark infringement. (Doc. 1 at 7-8.) To establish a federal common law trademark infringement claim, a plaintiff must show “(1) a protected trademark and (2) [that] the use of that trademark by a party accused of infringing on the trademark is likely to cause consumer confusion.” Golden Eye Media USA, Inc. v. Trolley Bags UK Ltd., 525 F.Supp.3d 1145, 1179 (S.D. Cal. 2021), affd sub nom. Golden Eye Media USA, Inc. v. Evo Lifestyle Prod. Ltd., 2022 WL 2232517 (Fed. Cir. June 22, 2022). “[F]ederal registration provides ‘prima facie evidence' of the mark's validity and entitles the plaintiff to a ‘strong presumption' that the mark is protectable.” Id. As previously discussed, the Court finds that Plaintiff has a protectable trademark and that Defendant's use of the name “Copper State Glass and Screen” is likely to cause consumer confusion. Accordingly, Plaintiff has established its claim of common law trademark infringement and default judgment should be granted on this claim.
4. Plaintiff establishes a claim for common law unfair competition.
Plaintiff's fourth cause of action alleges common law unfair competition. (Doc. 1 at 9.) “The decisive test of common law unfair competition is whether the public is likely to be deceived about the source of goods or services by the defendant's conduct.” Hokto Kinoko Co. v. Concord Farms, Inc., 810 F.Supp.2d 1013, 1032 (C.D. Cal. 2011), affd, 738 F.3d 1085 (9th Cir. 2013). “The likelihood of public confusion, although innocently created, will warrant injunctive relief against unfair competition.” Id. Because courts have “uniformly held that common law and statutory trademark infringement are merely specific aspects of unfair competition, a finding of likelihood of confusion under Plaintiff's trademark infringement claim also supports a finding of likelihood under Plaintiff's common law unfair competition claim.” Id.
As previously discussed, the Court finds that Defendant's use of the infringing mark “Copper State Glass and Screen” is likely to cause consumer confusion as to the source of Plaintiff's services. Accordingly, Plaintiff has established its claim of common law unfair competition and default judgment should be granted as to this claim.
C. The sum of money at stake is not at issue.
“For the fourth Eitel factor, the court must consider the amount of money at stake in relation to the seriousness of Defendant's conduct.” William Consalo & Sons Farms, Inc. v. Mex-Produce Sales, LLC, No. CIV 08-348-TUC-CKJ, 2008 WL 4700017, at *3 (D. Ariz. Oct. 23, 2008). “If the sum of money at stake is completely disproportionate or inappropriate, default judgment is disfavored.” Id.; see also Truong Giang Corp., 2007 WL 1545173 at *12 (citing Totten v. Hurrell, 2001 U.S. Dist. LEXIS 20259, *2 (N.D. Cal. Nov. 28, 2001) (stating that “the ‘sum of money at stake' factor is meant to focus on the size of the award requested, as courts are hesitant to enter default judgments where large sums of money are at stake”). “The Court considers Plaintiff's declarations, calculations, and other documentation of damages in determining if the amount at stake is reasonable.” Truong Giang Corp., 2007 WL 1545173 at *12 (citation omitted). Here, Plaintiff has not provided any documentation or calculation of damages. (See doc. 20.) Thus, this factor does not affect the default judgment determination.
D. There is little possibility of a dispute concerning material facts.
“Here, there is little possibility of dispute concerning material facts because (1) based on the entry of default, the Court accepts all allegations in [the plaintiff's] complaint as true (except for those relating to damages) and (2) Defendants have not made any attempt to challenge [the plaintiff's] Complaint or even appear in this case.” William Consalo & Sons Farms, Inc., 2008 WL 4700017, at *3; see also Televideo, 826 F.2d at 917-18. The court may infer from Defendant's failure to appear that it lacks a meritorious defense to Plaintiff's claims. Furthermore, evidence submitted by Plaintiff in support of its motion for default judgment-in particular, its account of correspondence with Defendant's principal, Mr. Garcia-supports Plaintiff's claims. Given the evidence presented by Plaintiff, there is little possibility of dispute as to Defendant's violations and resulting liability on the meritorious claims. Accordingly, the fifth Eitel factor favors entry of default judgment.
E. The default is not due to excusable neglect.
There is no indication that Defendant's default is due to neglect, excusable or otherwise. It appears that Defendant was properly served with the Summons, Complaint, and the Motion for Entry of Default Judgment. Therefore, the sixth Eitel factor favors entry of default judgment.
F. Judgment on the merits is impractical given Defendant's nonresponsiveness.
Federal civil procedure and public policy favor deciding cases on the merits. However, “the Defendants' failure to answer the Complaint makes a decision on the merits impractical, if not impossible.” William Consalo & Sons Farms, Inc., 2008 WL 4700017, at *4. “[T]he policy encouraging decisions of cases on their merits does not weigh against granting default judgment here.” Id. Accordingly, having considered all applicable Eitel factors, the Court finds that Plaintiff's Motion for Entry of Default Judgment should be granted.
G. Injunctive relief is warranted.
Plaintiff requests injunctive relief prohibiting Defendant from (1) use of the “Copperstate Glass & Mirror” mark, or any other similar mark, word, or name; and (2) use of the “Copperstate Glass & Mirror” mark on its vehicles, website, social media, promotional materials, or any other form of advertising. (Doc. 1 at 10.)
“The Lanham Act gives courts the ‘power to grant injunctions, according to the principles of equity and upon such terms as the court may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in the Patent and Trademark Office or to prevent a violation under [the Lanham Act].” Daimler AG v. A-Z Wheels LLC, 498 F.Supp.3d 1282, 1291 (S.D. Cal. 2020) (citing 15 U.S.C. § 1116(a)). “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 v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008).
As to the first factor, the Court finds that Plaintiff is likely to succeed on the merits of its claims. As discussed above, Plaintiff has shown ongoing infringement of its protected trademark and thus that it is likely to succeed on the merits of its claims for trademark infringement, unfair competition, and false designation of origin. Plaintiff has shown evidence of its registered trademark for the name “Copperstate Glass & Mirror” and that the trademark is actively being used in commerce. Plaintiff has shown further evidence that Defendant has been using the infringing mark in commerce to offer the same or similar glass, mirror, and screen installation and repair services as Plaintiff. Based on this evidence, the Court found that consumers would likely be confused or deceived by Defendant's use of the infringing mark, and therefore Plaintiff's claims of trademark infringement, unfair competition, and false designation of origin are likely to succeed on the merits. Accordingly, the first factor for granting injunctive relief is satisfied.
As to the second factor, the Court finds that Plaintiff is likely to suffer irreparable harm in the absence of injunctive relief. Absent granting of the requested injunctive relief, Plaintiff will likely continue suffering the harm of infringement of its trademark. However, whether this harm is “irreparable” requires further analysis. Irreparable harm is not presumed upon a finding of infringement. Daimler AG, 498 F.Supp.3d at 1292 (S.D. Cal. 2020) (citing cases). To establish irreparable harm, a plaintiff must show that “the infringement manifests as the loss of control over a business' reputation, a loss of trade, and a loss of goodwill.” Id.
“Trademarks serve as the identity of their owners and in them resides the reputation and goodwill of their owners.” Id. (quoting CytoSport, Inc. v. Vital Pharm., Inc., 617 F.Supp.2d 1051, 1080 (E.D. Cal.), affd, 348 Fed.Appx. 288 (9th Cir. 2009)). “If another infringes on a mark, the person borrows the owner's reputation, preventing the trademark owner from exercising control over the quality of its mark and thus creating the potential for damage to its reputation.” Daimler AG, 498 F.Supp.3d at 1292 (citation omitted). Furthermore, this type of injury to reputation is “difficult, if not impossible, to adequately compensate for after the fact.” Id. (citation omitted).
Here, although Plaintiff has not shown evidence of lost business, damage to its reputation, or loss of goodwill, Defendant's use of the infringing mark is “preventing the trademark owner from exercising control over the quality of its mark” and is therefore “creating the potential for damage to its reputation.” The Ninth Circuit Court of Appeals has affirmed that “potential damage to reputation constitutes irreparable injury for the purpose of granting a preliminary injunction in a trademark case.” CytoSport, Inc., 617 F.Supp.2d at 1080, affd, 348 Fed.Appx. 288 (9th Cir. 2009) (unpublished); see also Daimler AG, 498 F.Supp.3d at 1293 (finding irreparable harm where plaintiff lost control over its reputation due to defendant's infringement). Here, Defendant's use of the infringing mark is preventing Plaintiff from exercising control over its trademark and is therefore creating the potential for damage to Plaintiff's reputation. Accordingly, the second factor for granting injunctive relief is satisfied.
The third and fourth factors are also satisfied. The balance of equities tips in Plaintiff's favor because “the harm to Plaintiff in the absence of an injunction [outweighs] the harm to Defendant as the result of one.” Daimler AG, 498 F.Supp.3d at 1294 (S.D. Cal. 2020). The Court has found that Plaintiff is likely to succeed on the merits, will suffer irreparable harm in the absence of injunctive relief, and lacks alternative recourse absent the requested relief. Comparatively, injunctive relief will not harm Defendant, as it “will only require Defendant to comply with the law and refrain from [its] continuing infringing activity.” Id. Lastly, the public interest will be served by injunctive relief because such relief will protect the public interest by preventing consumer confusion. Id. at 1294-95 (citing AT&T Corp. v. Vision One Sec. Sys., 1995 WL 476251, at *7 (S.D. Cal. July 27, 1995) (“Where defendant's concurrent use of plaintiff's trademark without authorization is likely to cause confusion, the public interest is damaged by the defendant's use.”)).
Therefore, the Court finds that Plaintiff has met the statutory and equitable requirements for injunctive relief and recommends granting Plaintiff's request for a permanent injunction.
Accordingly, IT IS RECOMMENDED that the District Judge grant the Motion for Entry of Default Judgment (doc. 19) as to Defendant's liability for (1) trademark infringement under the Lanham Act; (2) false designation of origin under the Lanham Act; (3) common law trademark infringement; and (4) common law unfair competition.
IT IS FURTHER RECOMMENDED that the District Judge deny the Motion for Entry of Default Judgment (doc. 19) as to Defendant's liability for false advertising.
IT IS FURTHER RECOMMENDED that the District Judge award Plaintiff no monetary damages, due to a lack of documentation of or request for monetary damages.
IT IS FURTHER RECOMMENDED that the following injunctive relief be granted against Defendant Copper State Glass and Screen LLC, to be completed by a deadline set by the District Judge:
(1) Defendant is permanently enjoined from using the infringing mark, i.e., “Copper State Glass and Screen,” directly or indirectly, or any other mark, word, or name similar to “Copperstate Glass & Mirror,” or any derivation thereof which is likely to cause confusion, mistake, or to deceive directly or indirectly in connection with window or glass replacement, installation, or repair, or mirror or screen replacement, installation, or repair.
(2) Defendant is permanently enjoined from using the infringing mark, i.e., “Copper State Glass and Screen,” or any colorable imitation thereof, on its service vehicles, website(s), social media profiles and posts, promotional materials, or any forms of advertising. Defendant shall immediately take town and remove all such uses from service vehicles, website(s), social media profiles and posts, promotional materials, and all other forms of advertising.
(3) GODADDY.COM, INC., (and/or DOMAINS BY PROXY, LLC), shall transfer the domain name (URL), https://copperstategs.com, from the current owner to the Plaintiff, ICU Industries, Inc., GoDaddy account number: 53519029 and that GoDaddy.com, Inc., shall work with Plaintiff's attorney to ensure that such transfer is effectuated.
(4) META PLATFORMS, INC. shall remove and take down the Facebook page on its Facebook platform at: https://www.facebook.com/CopperStateGS.
(5) YELP, Inc. shall remove and take down the YELP page at: https://www.yelp.com/biz/copperstate-glass-and-screen-tucson.
(6) ANGI'S LIST, INC. (“ANGI”) shall remove and take down the ANGI listing page at: https://www.angi.com/companylist/us/az/tucson/copper-state-glass-and-screen-co-reviews-360776.htm.
(7) THRYV, INC (“Yellow Pages”) shall remove and take down the Yellow Pages listing at: https://www.yellowpages.com/tucson-az/mip/copper-state-glass-screen-co-14324137.
(8) THE BUILDER MARKET, INC. shall remove and take down the The Builder Market listing at: https://thebuildermarket.com/pros/copper-state-glass-and-screen-co--60cf42.
(9) S.C. CYLEX TEHNOLOGIA INFORMATIEI INTERNATIONAL SNC (“Cylex”) shall remove and take down the Cylex listing at: https://www.cylex.us.com/company/copper-state-glass-screen-5152661.html.
(10) The Defendant shall remove and take down the listing at: https://www.windowglass.us/company-copper-state-glass-screen-in-tucson-az-45147.
(11) Plaintiff shall change the name of its company by filing papers to Amend its Articles of Organization with the Arizona Corporation Commission (Entity ID: 1965164).
....
....
....
Pursuant to Federal Rule of Civil Procedure 72(b)(2), any party may serve and file written objections within fourteen (14) days of being served with a copy of the Report and Recommendation. A party may respond to the other party's objections within fourteen (14) days. No reply brief shall be filed on objections unless leave is granted by the District Court. If objections are not timely filed, they may be deemed waived. If objections are filed, the parties should use the following case number: CV-23-298-TUC-RCC.