Pollution Denim & Co. v. Pollution Clothing Co.

Decision Date07 September 2007
Docket NumberNo. CV 07-5208 MMM (JWJx).,CV 07-5208 MMM (JWJx).
Citation547 F.Supp.2d 1132
CourtU.S. District Court — Central District of California
PartiesPOLLUTION DENIM & CO., a California Corporation, Plaintiff, v. POLLUTION CLOTHING CO., an Oklahoma Domestic Limited Liability Company; Jordan Scott Wunder, an individual; Spirituali, Inc., a California Corporation, individually and d/b/a Spirituali Kids; Planet Funk, business entity unknown; Ryzen-7, business entity unknown; NHR Connection, business entity unknown; and Does 1-10, Defendants.

Scott A. Burroughs, Stephen M. Doniger, Doniger Law Firm, Culver City, CA, for Plaintiff.

Brian K. Wunder, Richard S. Siluk, Osha Liang, Houston, TX, Erica J. Pruetz, Pruetz Law Group, Los Angeles, CA, for Defendants.

ORDER DISCHARGING ORDER TO SHOW CAUSE WHY PRELIMINARY INJUNCTION SHOULD NOT ISSUE AND DENYING PLAINTIFF'S REQUEST FOR A PRELIMINARY INJUNCTION

AUDREY B. COLLINS, District Judge.

On August 10, 2007, plaintiff Pollution Denim & Co. commenced this trademark infringement action against Pollution Clothing Co., its president Jordan Wunder (collectively, "defendants"), and certain retailer and fictitious defendants. On the same day, plaintiff moved for and received a temporary restraining order and order to show cause why a preliminary injunction should not issue. Plaintiff contends that defendants' use of the mark "Pollution Clothing" in connection with the marketing and sale of shirts and other apparel infringes its "pending" "Pollution Denim & Co." mark and its federally registered "Skin Pollution" mark. Plaintiff seeks a preliminary injunction prohibiting defendant from further advertising, displaying, selling, or offering for sale any shirts or other apparel under the "Pollution Clothing" mark. For the reasons stated below, the court now discharges the order to show cause and denies plaintiffs request for a preliminary injunction.1

I. FACTUAL BACKGROUND

A. Defendants' "Pollution Clothing" Mark

Jordan Wunder is the founder, president, and sole employee of Pollution Clothing, LLC, an Oklahoma limited liability company that he founded in September 2005.2 He began designing clothing bearing the "Pollution Clothing" mark in February 2005.3 In March 2005, he began distributing his clothing in Oklahoma City, Oklahoma through retailer Blue Seven, and expanded his sales to other local businesses in June 2005.4 Later that summer, he purchased the website domain "pollutionclothing.com," and began marketing his clothing over that site and his personal MySpace page.5 Transaction records from August and September 2005 indicate that he made direct sales over the Internet to consumers in Wisconsin, Illinois, California, Iowa, and Indiana.6 In December 2005, he registered the "Pollution Clothing" mark with the State of Oklahoma.7 In February 2006, he began exhibiting clothing bearing the "Pollution Clothing" mark at national trade shows.8

B. Plaintiffs "Pollution Denim & Co." Mark

Allen Dahan is the president of plaintiff Pollution Denim & Co., which was incorporated in the State of California in November 2006.9 On June 22, 2006, plaintiff filed an application with the United States Patent and Trademark Office ("USPTO") for the mark "Pollution Denim & Co." on an intent to use basis.10 No amendment to establish date of first use has since been filed.11 In an office action dated December 5, 2006, the trademark examiner refused registration of the "Pollution Denim & Co." mark because she believed that it was too similar to two marks already registered, namely, "Denim & Co." and "Denim & Co. Easy Care" (the "'Denim & Co.' marks").12 She also noted that the she had "found a potentially conflicting pending application" for the mark "Skin Pollution" that might, if the mark were ultimately registered, provide a further basis to deny plaintiffs application.

On February 12, 2007, plaintiffs counsel responded to the trademark examiner's office action, requesting reconsideration of her denial of his client's trademark application.13 With respect to the "Denim & Co." marks, he argued that (1) the term "Denim & Co." is generic and thus free for all to use, and (2) even if not generic, there would be no likelihood of confusion; between "Pollution Denim & Co." and the "Denim & Co." marks. With respect to the pending application for a mark in "Skin Pollution," he argued that there would be no likelihood of contusion because, although "both companies [sic] use of the term `Pollution' may be said to be dominant of the mark, the variation on the arrangement, coupled with the vastly different designs associated with each mark, vitiate any concern that consumers would be confused when looking at the two marks."

In a final office action dated April 7, 2007, the trademark examiner denied plaintiffs application for the mark "Pollution Denim & Co."14 The basis for the denial was likelihood of confusion between that mark and the "Denim & Co." marks. The trademark examiner withdrew her citation to the "prior pending" "Skin Pollution" mark without further elaboration, even though the mark was entered on the principal register on December 5, 2006.15 On July 31, 2007, plaintiffs counsel filed a letter with the USPTO seeking reconsideration of the denial of his client's trademark application.16 In this letter, however, he did not address the likelihood of confusion between "Pollution Denim & Co." and the "Denim & Co." marks, but instead argued' exclusively that any "likelihood of confusion with the trademark `Skin Pollution,' U.S. Registration No. 3180361" was no longer an issue because plaintiff had acquired the "Skin Pollution" mark from its owner.

C. Plaintiffs "Skin Pollution" Mark

On July 10, 2007, plaintiff purchased the federally registered "Skin Pollution" mark from its previous owner and original registrant.17 On July 12, 2007, the USPTO recorded the assignment.18 The original registrant filed the "Skin Pollution" trademark application on November 28, 2005 on an intent to use basis; on March 9, 2006, the applicant filed an amendment to his application to allege that he first used the mark in commerce on January 8, 2006.19 As noted, the mark was entered on the principal register on December 5, 2006.

D. The Parties' Dispute

On November 9, 2006, plaintiff sent defendants a cease and desist letter.20 In the letter, plaintiff recognizes that defendants have registered the "Pollution Clothing" mark in Oklahoma and have rights to use the mark in that market, but asserts that use of the "Pollution Clothing" mark outside of Oklahoma infringes plaintiffs "Pollution Denim & Co." mark, USPTO Serial Number 78915016.21 Plaintiff represented that it "obtained its federal trademark with the United States Patent and Trademark Office in June of 2006."22 The letter demands that defendants "cease and desist all uses of the trademark `Pollution' outside the market of Oklahoma."23

On December 11, 2006, defendants responded to plaintiffs November 9, 2006 cease and desist letter.24 In that letter, defendants object to plaintiffs demand that they cease and desist using the "Pollution Clothing" mark, asserting that plaintiff had merely filed a application for the "Pollution Denim & Co." mark with the USPTO, that the application was filed on an intent to use basis, and that defendants believed that they were the senior users of the "Pollution Clothing" mark.25 Defendants consequently demanded that plaintiff cease and desist any plans to use the "Pollution Denim" mark in commerce and to voluntarily withdraw its trademark application.26

On the same day that defendants sent their response to the November 9, 2006 cease and desist letter, plaintiffs counsel sent a second cease and desist letter to defendants.27 Plaintiff reiterated its demand that defendants cease and desist using the "Pollution Clothing" mark.28 In addition, plaintiff noted that defendants had registered for the February 2007 "POOL Tradeshow" in Las Vegas and represented that it "will not allow [Pollution Clothing] to cause consumer confusion by using the name `Pollution' [at the tradeshow] in violation of [plaintiffs] federal trademark."29 Despite this threat, plaintiff did not commence this action until August 10, 2007, shortly before the August 2007 Pool Trade Show commenced.30

II. DISCUSSION
A. Standard Governing Entry of Preliminary Injunctive Relief

The basis for injunctive relief in the federal courts is irreparable injury and inadequacy of legal remedies. Weinberger v. Romero-Barcelo, 456 U.S. 305, 312, 102 S.Ct. 1798, 72 L.Ed.2d 91 (1982). A court may issue an interlocutory injunction if plaintiff demonstrates "`either: (1) a likelihood of success on the merits and the possibility of irreparable injury; or (2) that serious questions going to the merits were raised and the balance of hardships tips sharply in its favor.'" Clear Channel Outdoor Inc., a Delaware Corp. v. City of Los Angeles, 340 F.3d 810, 813 (9th Cir. 2003) (quoting Walczak v. EPL Prolong, Inc., 198 F.3d 725, 731 (9th Cir.1999)); see also Miller v. Cal. Pacific Med. Ctr., 19 F.3d 449, 456 (9th Cir.1994).31 "These two formulations represent two points on a sliding scale in which the required degree of irreparable harm increases as the probability of success decreases." Prudential Real Estate Affiliates, Inc. v. PPR Realty, Inc., 204 F.3d 867, 874 (9th Cir.2000); see also Baby Tarn & Co. v. City of Las Vegas, 154 F.3d 1097, 1100 (9th Cir.1998) (describing the two tests as "not separate [ ] but rather outer reaches of a single continuum"). In a trademark infringement action, however, where both parties have colorable claims to the use of a contested mark, the balance of hardships will rarely if ever "tip sharply" in one side's favor, requiring the moving party to demonstrate a "strong showing of likelihood of success" on the merits. See MicroStrategy Inc. v. Motorola, Inc., 245 F.3d 335, 339-40 (4th Cir.2001) ("In this case, the grant of an injunction would cause at least as much...

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