Federation of Telugu Associations of Southern California v. Telugu Association of Southern California

Filing 144

ORDER Re: PLAINTIFF'S MOTION FOR DEFAULT JUDGMENT AGAINST DEFENDANT TELUGU ASSOCIATION OF SOUTHERN CALIFORNIA 140 by Judge Ronald S.W. Lew: This Court GRANTS Plaintiff's Motion for Default Judgment. Additionally, this Court GRANTS Plaintiff's request for entry of a permanent injunction against Defendant. SEE ORDER FOR COMPLETE DETAILS. (jre)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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13 FEDERATION OF TELUGU
ASSOCIATIONS OF SOUTHERN
14 CALIFORNIA, a California
Corporation
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Plaintiff,
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v.
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TELUGU ASSOCIATION OF
18 SOUTHERN CALIFORNIA, a
California corporation,
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Defendant.
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CV 14-1278 RSWL (ASx)
ORDER Re: PLAINTIFF’S
MOTION FOR DEFAULT
JUDGMENT AGAINST
DEFENDANT TELUGU
ASSOCIATION OF SOUTHERN
CALIFORNIA [140]

Now before this Court is Plaintiff Federation of

22 Telugu Associations of Southern California’s
23 (“Plaintiff”) Motion for Default Judgment against
24 Defendant Telugu Association of Southern California
25 [140].

In the present Motion, Plaintiff seeks entry of

26 default judgment and requests entry of a permanent
27 injunction against Defendant Telegu Association of
28 Southern California (“Defendant” or “TASC”).
1

1

I.

BACKGROUND

2 A.

Factual Background

3

Plaintiff is a California corporation, with its

4 principal place of business in Upland, California.
5 Second Am. Compl. (“SAC”) ¶ 4, ECF No. 72.

Defendant

6 is a California corporation, with its principal place
7 of business in Artesia, California.

Id. at ¶ 5.

8 Plaintiff is the owner of the following federally
9 registered trademark and trade name “Telugu Association
10 of Southern California,” and is incorporated under this
11 trade name.

Id. at ¶ 7.

Plaintiff has used this trade

12 name in interstate commerce since December 31, 2002, in
13 connection with 1) charitable services, namely,
14 promoting public awareness of the Telugu language and
15 culture, and 2) organizing and hosting events for
16 cultural and educational purposes.

Id. at ¶ 8.

17 Plaintiff’s members and officers reside throughout the
18 United States.
19

Id. at ¶ 9.

In February 2014, Defendant began using Plaintiff’s

20 trademark / trade name in connection with Defendant’s
21 services.

Id. at ¶ 12.

On March, 13, 2014, when the

22 California Franchise Tax Board suspended Plaintiff’s
23 corporate standing for a period of about six months,
24 Plaintiff changed its corporate name to “Federation of
25 Telegu Associations of Southern California.”

Id.;

26 Declaration of Mallik Banda (“Banda Decl.”) ¶ 2, ECF
27 No. 14.

While Plaintiff was suspended, Defendant

28 incorporated itself under Plaintiff’s trademark / trade
2

1 name.

SAC ¶ 12.

However, during its corporate

2 suspension, Plaintiff continued to use its trademark /
3 trade name.

Defendant’s services consist of 1)

4 charitable services, such as promoting public awareness
5 of the Telegu language and culture, and 2) organizing
6 and hosting events for cultural and educational
7 purposes.

See SAC Exs. 3-4.

8 B.

Procedural Background

9

On June 23, 2014, Plaintiff filed its Complaint [1]

10 for injunctive and monetary relief, alleging violations
11 of the Lanham Act as well as unfair competition under
12 the California Business and Professions Code against
13 Defendants TASC and Nagesh Ankam.

On July 7, 2014, the

14 Complaint was served on Defendants [9].

On August 5,

15 2014, Plaintiff requested that the clerk of court enter
16 default against Defendant TASC [10].

On August 7,

17 2014, the clerk entered default against TASC [11].

On

18 October 15, 2014, Plaintiff filed a Motion for Default
19 Judgement against TASC [14].

On October 15, 2014,

20 Defendant TASC filed a Motion to Set Aside Default
21 [15].

On February 10, 2015, the Court granted

22 Defendant TASC’s Motion to Set Aside Default, and thus
23 denied as moot Plaintiff’s Motion for Default Judgment
24 [28].
25

On June 29, 2015, Plaintiff filed its Second

26 Amended Complaint (“SAC”) against Defendants [72].

On

27 August 4, 2015, Wolf & Levine, LLP (“Defense Counsel”)
28 filed a Motion to Withdraw as Counsel for Defendant
3

1 Telugu Association of Southern California [93]. Upon a
2 finding of good cause and a determination that Defense
3 Counsel complied with the applicable Local Rules, this
4 Court granted Defense Counsel’s Motion to Withdraw
5 [123]. In doing so, the Court ordered Defense Counsel
6 to file proof of service, containing Defendant TASC’s
7 last known contact information, that the Court’s Order
8 [123] was properly served upon TASC. The Court further
9 ordered TASC to obtain permanent counsel within thirty
10 days of the Court’s Order, and file proof of service as
11 to its new counsel.
On December 3, 2015, this Court ordered Defendant
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13 TASC to show cause as to why it failed to comply with
14 this Court’s previous Order [137]. The Court advised
15 and cautioned TASC that it had until December 15, 2015
16 to provide the Court with proof of permanent counsel.
17 TASC was advised that a failure to respond to this
18 Order to Show Cause may lead to the imposition of
19 sanctions, including placing TASC in default.
On November 04, 2015, the Court granted the
20
21 parties’ stipulation to Dismiss Defendant Nagesh Ankam
22 [135], with only Defendant TASC (hereinafter
23 “Defendant”) remaining. On December 17, 2015, upon
24 Defendant’s failure to provide proof of permanent
25 counsel, the Clerk entered default against Defendant
26 [139]. Plaintiff now brings the instant Motion for
27 Default Judgment [140].
28 /
4

II.

1

DISCUSSION

2 A.

Legal Standard

3

Default judgment is within the discretion of the

4 district court. Aldabe v. Aldabe, 616 F.2d 1089, 1092
5 (9th Cir. 1980); see Fed. R. Civ. P. 55. A party
6 applying to the Court for default judgment must satisfy
7 both procedural and substantive requirements.
8

Procedurally, the requirements set forth in Federal

9 Rules of Civil Procedure Rules 55 and 56, and Local
10 Rule 55-1 must be met. See Vogel v. Rite Aid Corp.,
11 992 F. Supp. 2d 998, 1006 (C.D. Cal 2014). Local Rule
12 55-1 provides: “When an application is made to the
13 Court for a default judgment, the application shall be
14 accompanied by a declaration in compliance with Fed. R.
15 Civ. P. 55(b)(1) and/or (2) and include the following:
16 (a) When and against what party the default was
17 entered; (b) The identification of the pleading to
18 which default was entered; (c) Whether the defaulting
19 party is an infant or incompetent person, and if so,
20 whether that person is represented by a general
21 guardian, committee, conservator or other
22 representative; (d) That the Service Members Civil
23 Relief Act, 50 U.S.C. App. § 521, does not apply; and
24 (e) That notice has been served on the defaulting
25 party, if required by Federal Rule of Civil Procedure
26 55(b)(2).” L.R. 55-1.
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Substantively, the Ninth Circuit has directed that

28 courts consider the following factors, referred to as
5

1 the Eitel factors in deciding whether to enter default
2 judgment: “(1) the possibility of prejudice to
3 plaintiff, (2) the merits of plaintiff’s substantive
4 claim, (3) the sufficiency of the complaint, (4) the
5 sum of money at stake in the action, (5) the
6 possibility of a dispute concerning the material facts,
7 (6) whether defendant’s default was the product of
8 excusable neglect, and (7) the strong public policy
9 favoring decisions on the merits.” See Vogel, 992 F.
10 Supp. 2d at 1005; see also Eitel v. McCool, 782 F.2d
11 1470, 1471071 (9th Cir. 1986). Additionally, “[w]hen
12 entry of judgment is sought against a party who has
13 failed to plead or otherwise defend , a district court
14 has an affirmative duty to look into its jurisdiction
15 over both the subject matter and the parties.”
16 Tuli, 172 F.3d 707, 712 (9th Cir. 1999).
17

In re

In analyzing these factors, the Court may base its

18 judgment entirely upon the affidavits submitted by the
19 parties. Davis v. Fendler, 650 F.2d 1154, 1161 (9th
20 Cir. 1981). If the Court determines that the defendant
21 is in default, “‘the factual allegations of the
22 complaint, other than those relating to damages, are
23 taken as true.’” Televideo Sys., Inc. v. Heidenthal,
24 826 F.2d 915, 917-918 (9th Cir. 1987) (quoting Geddes
25 v. United Fin. Group, 559 F.2d 557, 560 (9th Cir.
26 1977)). Additionally, “[w]hen entry of judgment is
27 sought against a party who has failed to plead or
28 otherwise defend, a district court has an affirmative
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1 duty to look into its jurisdiction over both the
2 subject matter and the parties.” In re Tuli, 172 F.3d
3 707, 712 (9th Cir. 1999).
4 B. Analysis
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Plaintiff seeks entry of default judgment against

6 Defendant for failure to respond or otherwise defend
7 itself in this matter. See generally Mot. for Default
8 J. (“Mot.”), ECF No. 140. For the reasons set forth
9 below, the Court GRANTS Plaintiff’s Motion.
10

1.

Jurisdiction and Service of Process are Proper

11

In considering whether to enter default judgment

12 against a party for failing to plead or otherwise
13 defend himself in an action, a district court must
14 first determine whether it has jurisdiction over the
15 subject matter and the parties to the case. In re
16 Tuli, 173 F.3d 707, 712 (9th Cir. 1999).
Generally, a defect in personal jurisdiction is a
17
18 defense that must be asserted or waived by a party.
19 Id. (citing Fed. R. Civ. P. 12(h)(1)). However, when a
20 court is considering whether to enter default judgment,
21 the court may dismiss the action sua sponte for lack of
22 personal jurisdiction, for a “judgment entered without
23 personal jurisdiction over the parties is void.” Id.
24 This court should find that service of process was
25 proper, and the Court has jurisdiction over the parties
26 and the subject matter in this action.
a. Personal jurisdiction
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In states where no applicable federal statute
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1 governs personal jurisdiction, that state’s long-arm
2 statute applies. See Panavision Int’l, L.P. v.
3 Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998). The
4 exercise of personal jurisdiction over a nonresident
5 defendant requires the presence of two factors: (1)
6 California’s laws must provide a basis for exercising
7 personal jurisdiction, and (2) the assertion of
8 personal jurisdiction must comport with due process.
9 Hirsch v. Blue Cross, Blue Shield of Kansas City, 800
10 F.2d 1474, 1477 (9th Cir. 1986). California’s long arm
11 statute permits the exercise of personal jurisdiction
12 to the fullest extent permitted by due process. See
13 Cal. Civ. Proc. Code § 410.10; Panavision, 141 F.3d at
14 1320. “Because California’s long-arm jurisdictional
15 statute is coextensive with federal due process
16 requirements, the jurisdictional analyses under state
17 law and federal due process are the same.”
18 Schwarzeneggar v. Fred Martin Motor Co., 374 F.3d 797,
19 800-01 (9th Cir. 2004). Thus only a due process
20 analysis is required here.
21

Due process requires that a defendant have “certain

22 minimum contacts with [the forum state] such that the
23 maintenance of the suit does not offend traditional
24 notions of fair play and substantial justice.” Int’l
25 Shoe Co. v. Washington, 326 U.S. 310, 316 (1945)
26 (internal quotations marks omitted). Depending on the
27 nature and scope of the defendant’s contacts with the
28 forum, jurisdiction may be general or specific to a
8

1 cause of action. Roth v. Garcia Marquez, 942 F.2d 617,
2 620 (9th Cir. 1991). When a defendant’s contacts with
3 the forum state are “substantial” or “continuous and
4 systematic,” general jurisdiction may be exercised over
5 that defendant for any cause of action, even if it is
6 unrelated to the defendant’s activities with the forum
7 state. Schwarzeneggarm, 374 F.3d at 801-02; Data Disc,
8 Inc. v. Sys. Tech. Assocs., 557 F.2d 1280, 1287 (9th
9 Cir. 1977). This Court finds it has personal
10 jurisdiction over all parties. Defendant is a
11 California corporation with its principal place of
12 business in Artesia, California, SAC ¶ 5, thus this
13 Court has general jurisdiction over Defendant.
b. Subject matter jurisdiction
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15

This Court finds it has subject matter jurisdiction

16 over the matter, as Plaintiff’s claims for trademark
17 infringement, trade name infringement, and false
18 designation of origin arise under the Lanham Act. See
19 SAC, ECF No. 72; 15 U.S.C § 1125(a). This Court has
20 pendent jurisdiction over Plaintiff’s unfair
21 competition claim pursuant to 28 U.S.C. section 1367.
22 Furthermore, under 28 U.S.C. § 1338(a), this Court
23 “shall have original jurisdiction of any civil action
24 arising under any Act of Congress relating to ...
25 trademarks.” 28 U.S.C. § 1338(a). This court thus has
26 original jurisdiction over this matter as the Court has
27 jurisdiction of “any civil action asserting a claim of
28 unfair competition when joined with a substantial and
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1 related claim under the . . . trademark laws.”
2 U.S.C. § 1338(b).
3
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c.

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Service of process

This Court finds Plaintiff has proffered the

5 requisite Proofs of Service [1, 6, 9, 140]. The Proofs
6 of Service show Defendant was properly served with the
7 Summons, Complaint, Clerk’s Entry of Default, and the
8 present Motion, and thus service of process is complete
9 and proper.
2. Plaintiff has Satisfied the Procedural
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11
12

Requirements for Default Judgment
This Court finds Plaintiff has met all of the

13 procedural requirements for entry of default judgment.
14 Plaintiff’s application includes the identity of the
15 party that default was entered against, Defendant
16 Telegu Association of Southern California, and when
17 default was entered against Defendant. Declaration of
18 Michael Shimokaji (“Shimokaji Decl.”) ¶ 2, ECF No. 14019 1. Furthermore, Plaintiff’s application identifies the
20 pleading to which default was entered, the Second
21 Amended Complaint. Id. As Defendant is a corporation,
22 it is neither an infant or incompetent person, nor
23 subject to the Servicemembers Civil Relief Act. See
24 Shimokaji Decl. ¶¶ 3-4. Additionally, Plaintiff has
25 sufficiently established the seven Eitel factors, thus
26 satisfying the substantive requirements for entry of
27 default judgment.
3. Plaintiff has Satisfied the Substantive
28
10

1

Requirements for Default Judgment

2

a.

3

Risk of prejudice to Plaintiff

The first Eitel factor “considers whether plaintiff

4 will suffer prejudice if default judgment is not
5 entered.” Tate v. Molina, 2015 U.S. Dist. LEXIS 3607
6 (C.D. Cal. Jan. 9, 2015). This Court finds Plaintiff
7 would be prejudiced if default judgment was not
8 entered.
Currently, Defendant is not represented through
9
10 licensed counsel. See Declaration of Sarah R. Wolk
11 (“Wolk Decl.”) ¶ 2, ECF No. 93. Defendant is a
12 corporation and cannot appear pro se. See Rowland v.
13 California Men’s Colony, Unit II Men’s Advisory
14 Council, 506 U.S. 194, 202 (1993). Since Defense
15 Counsel withdrew their representation of Defendant, and
16 Defendant subsequently failed to provide the Court with
17 proof of new permanent counsel, this Court struck
18 Defendant’s Answer to Plaintiff’s SAC and placed
19 Defendant in default [138]. Since Defendant was placed
20 in default on December 17, 2015 [139], Defendant has
21 neither obtained permanent counsel, nor responded to
22 Plaintiff’s Motion for Default Judgment in any way.
Plaintiff argues that in the absence of a default
23
24 judgment awarding injunctive relief, Defendant will be
25 free to continue its infringement and acts of unfair
26 competition. Mot. 2:24-25. Further, as Defendant
27 cannot yet appear in this litigation due to lack of
28 representation, Plaintiff would be denied its right to
11

1 judicial resolution of its claim if default judgment
2 were not entered. Electra Entm’t Grp. Inc. v.
3 Crawford, 226 F.R.D. 388, 392 (C.D. Cal. 2005) (holding
4 “plaintiff would suffer prejudice if default judgment
5 is not entered because plaintiff ‘would be denied the
6 right to judicial resolution of the claims presented,
7 and would be without other recourse for recovery.’”).
8 Accordingly, this factor weighs in favor of entry of
9 default judgment.
b. The merits of Plaintiff’s substantive
10
11
12

claims and sufficiency of the Complaint.
The second and third Eitel factors consider the

13 merits of Plaintiff’s substantive claims and the
14 sufficiency of the complaint. “Under an [Eitel]
15 analysis, [these factors] are often analyzed together.”
16 Tate, 2015 U.S. Dist. LEXIS 3607 at *5 (quoting Dr. JKL
17 Ltd. v. HPC IT Educ. Ctr., 749 F.Supp.2d 1038, 1048
18 (N.D. Cal. 2010)). “These two factors require a
19 plaintiff to ‘state a claim on which the [plaintiff]
20 may recover.” Id. (quoting Danning v. Lavine, 572 F.2d
21 1386, 1388 (9th Cir. 1978)).
i. Plaintiff has asserted a meritorious
22
23

claim for Federal Trademark

24

Infringement.

25

Plaintiff’s first claim against Defendant alleges

26 federal trademark infringement in violation of the
27 Lanham Act, 15 U.S.C. 1125(a). Mot. 1:27. To prevail
28 on such a claim, Plaintiff must establish that the
12

1 “trademark infringer’s use of [its] mark creates a
2 likelihood that the consuming public will be confused
3 as to who makes the product.” Jada Toys, Inc. v.
4 Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008).
5
6
7

In order to prevail on a suit under § 1125(a) of

8 the Lanham Act, a plaintiff must prove two basic
9 elements: (1) it has a valid, protectable trademark or
10 trade name, and (2) [the defendant’s] use of the mark
11 is likely to cause confusion. Southern Ca. Darts Ass’n
12 v. Zaffina, 762 F.3d 921, 929 (9th Cir. 2014) (citing
13 Applied Info. Sciences Corp. v. eBAY, Inc., 511 F.3d
14 966, 969 (9th Cir. 2007).
1. Whether the Trademark / Trade Name
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is Valid and Protectable
In regards to the first element, it is comprised of

18 two sub-parts: the mark’s protectability and the
19 plaintiff’s ownership of the mark. So. Ca. Darts, 762
20 F.3d. at 929. Whether a mark is protectable depends on
21 its degree of “distinctiveness.” Id. There are five
22 traditional categories of distinctiveness: (1) generic,
23 (2) descriptive, (3) suggestive, (4) arbitrary, or
24 (5)fanciful. Id. (citing Two Pesos, Inc. v. Taco
25 Cabana, Inc., 505 U.S. 763, 768 (1992). Furthermore,
26 descriptive marks, such as Plaintiff’s mark here,
27 become protectable if they acquire a “secondary
28 meaning,” by becoming distinctive “as used on or in
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1 connection with the applicant’s goods in commerce.”
2 Id.; 15 U.S.C. § 1052(f). Whether a secondary meaning
3 exists requires the consideration of several factors:
4 (1) whether consumers associate the product with the
5 trademark owner, (2) the extent of advertisement by the
6 trademark owner, (3) the length of time of use by the
7 trademark owner, and (4) the owner’s exclusive use of
8 the trademark. Japan Telecom v. Japan Telecom, 287
9 F.3d 866, 873 (9th Cir. 2002).
Here, this Court finds Plaintiff’s trademark /
10
11 trade name is valid and protectable. Plaintiff is the
12 sole owner of the trademark and trade name, registered
13 as federal trademark No. 4,634,567 on November 4, 2014.
14 SAC ¶ 7; see SAC Ex. 1. Plaintiff has advertised and
15 used its trademark/trade name since at least 2002.
16 Mot. 4:15-16; SAC ¶ 8. Plaintiff incorporated itself
17 about thirty years before Defendant incorporated itself
18 under Plaintiff’s trademark/trade name. Mot. 4:8-9;
19 SAC ¶ 4, 5. Plaintiff has continuously used
20 Plaintiff’s trademark and has never abandoned it.

Mot.

21 4:9-11; SAC ¶ 7-8, 13; Banda Decl. ¶ 2, ECF No. 14.
22 Plaintiff has never consented to Defendant’s use of
23 Plaintiff’s trademark. SAC ¶ 13-14, 17-18. Until
24 Defendant’s use of Plaintiff’s trademark/trade name,
25 Plaintiff believes it was the exclusive user of the
26 trademark/trade name throughout the United States.
27 Mot. 4:22-24; SAC ¶ 7. Furthermore, under California
28 Business and Professions Code section 14415, a
14

1 presumption has existed since 1983 that Plaintiff has
2 the exclusive right to use Plaintiff’s trademark/trade
3 name. SAC ¶ 13. Based on the analysis of the factors
4 above, this Court finds Plaintiff’s trademark / trade
5 name has a secondary meaning and is thus protectable.
Additionally, “proof of exact copying, without
6
7 opposing proof, can by itself establish secondary
8 meaning.” So. Ca. Darts 762 F.3d at 929. Here,
9 Defendant has been using Plaintiff’s trademark / trade
10 name: 1) without variation of the mark (exact copying),
11 2) in the same marketing channel as Plaintiff - a
12 website, and 3) for the same services Plaintiff offers
13 - charitable services to promote the Telegu language
14 and culture. Mot. 4:25-28; SAC ¶ 12; Banda Decl. ¶ 6.
15 Thus for this additional reason, Plaintiff has shown
16 that Plaintiff’s trademark/trade name has acquired a
17 secondary meaning and, accordingly, is protectable.
2. Whether Defendant’s Use is Likely
18
19
20

to Cause Confusion
In regards to the second element, Plaintiff must

21 show that Defendant’s infringing use would likely cause
22 consumer confusion. Southern Ca. Darts Ass’n, 762 F.3d
23 at 929. Generally, courts apply a “likelihood of
24 confusion” test that asks whether use of the
25 plaintiff’s trademark by the defendant is “likely to
26 cause confusion or to cause mistake, or to deceive as
27 to the affiliation, connection, or association” of the
28 two products. Mattel, Inc. v. Walking Mountain Prods.,
15

1 353 F.3d 792, 806-07 (9th Cir. 2003).
The factors assessed in determining a “likelihood
2
3 of confusion” are: (1) the strength of the mark; (2)
4 proximity of the goods; (3) similarity of the marks;
5 (4) evidence of actual confusion; (5) marketing
6 channels used; (6) type of goods and the degrees of
7 care likely to be exercised by the purchaser; (7)
8 defendant’s intent in selecting the mark; and (8)
9 likelihood of expansion of the product lines. AMF Inc.
10 v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.
11 1979), abrogated in part on other grounds by Mattel
12 Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 n.
13 19 (9th Cir. 2003). While courts analyze each of the
14 eight factors, “[t]he test is a fluid one and the
15 plaintiff need not satisfy every factor, provided that
16 strong showings are made with respect to some of them.”
17 Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625,
18 631 (9th Cir. 2005). The importance of any one factor
19 will vary case by case, and a court may reach a
20 conclusion of confusion by only considering a subset of
21 the factors. Brookfield Commc’ns, Inc. v. West Coast
22 Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).
23

Here, the Court finds Plaintiff has made a “strong

24 showing” with respect to six of the eight Sleekcraft
25 factors. Regarding the first factor, Plaintiff shows
26 it’s trademark/trade name is strong. Plaintiff has
27 continuously used, since its incorporation in 1983 to
28 present, the trademark/trade name - Telegu Association
16

1 of Southern California, and has never abandoned it or
2 shown an intention to abandon it. Banda Decl. ¶ 2.
3 Plaintiff has advertised and used its trademark/trade
4 name since at least 2002, by way of plaintiff’s website
5 and advertising fliers. Mot. 4:15-17; SAC ¶ 8; Banda
6 Decl. ¶ 3. Plaintiff has promoted itself and its
7 services throughout different regions of the United
8 States, including via the Telegu Association of North
9 America (“TANA”), a national organization addressing
10 the needs of the Telegu community. SAC ¶ 10.
11 Furthermore, Plaintiff argues that since 1983,
12 Plaintiff’s membership has increased by over forty
13 percent to date, as a result of Plaintiff’s
14 advertisement and use of its trademark/trade name.
15 Mot. 4:17-19; Banda Decl. ¶ 3.
Regarding the second factor, the proximity of
16
17 services, this Court finds Plaintiff shows such
18 proximity exists here. Defendant provides charitable
19 services, namely, promoting public awareness of the
20 Telegu language and culture, and organizing and hosting
21 events for cultural and educational purposes. SAC ¶
22 12. Plaintiff also provides these types of services.
23 Id. at ¶ 8. This Court finds Defendant’s use of
24 Plaintiff’s trademark / trade name would likely cause
25 consumers confusion between Defendant’s website and
26 services and Plaintiff’s.
27

The third Sleekcraft factor considers whether the

28 marks are identical.

Here, the Court finds the marks
17

1 are identical. Since about February 2014, Defendant
2 has been using Plaintiff’s trademark/trade name,
3 without variation of the mark. Banda Decl. ¶ 6.
4 Defendant’s website copies the “look and feel” of
5 Plaintiff’s website. SAC at ¶ 12; See SAC Exs. 6, 17,
6 40. Defendant appears to have copied Plaintiff’s
7 trademark/trade name. Furthermore, Defendant uses an
8 identical trade name on its website’s banner. Id. at
9 ¶¶ 12, 15, 18; Banda Decl. ¶ 7. Defendant’s website
10 also uses graphics in its banner that are identical to
11 Plaintiff’s website banner. Mot. 5:11-12.
In regards to the fourth Sleekcraft factor, the
12
13 Court finds that actual confusion has occurred.
14 Plaintiff claims, and Defendant fails to refute, that
15 “[a]bout 50 members of [P]laintiff’s organization have
16 reportedly gone to [D]efendant’s website, believing the
17 website to be that of P[]laintiff.” Banda Decl. ¶ 10.
18 The fifth Sleekcraft factor considers the marketing
19 channels used. This Court finds that both Plaintiff
20 and Defendant use the same marketing channels, i.e.
21 websites, to promote their services to the Telegu
22 community. SAC ¶¶ 10, 12.
23

The seventh Sleekcraft factor addresses the

24 defendant’s intent in selecting the mark. This Court
25 finds Defendant was aware of Plaintiff’s trademark /
26 trade name and nonetheless intentionally used
27 Plaintiff’s trademark/trade name. Defendant
28 organization’s President was formerly the President of
18

1 Plaintiff organization, during the year immediately
2 preceding Defendant’s founding in February 2014. Mot.
3 5:1-3; Banda Decl. ¶ 8. This indicates that Defendant
4 was well aware of Plaintiff’s trademark/trade name.
5 Mot. 5:3-4. Plaintiff alleges that Defendant was aware
6 of Plaintiff’s website. Id. at 5:4-5. Additionally,
7 Defendant amended its articles of incorporation to make
8 Defendant’s corporate name identical (not just similar)
9 to Plaintiff’s trademark/trade name, which further
10 indicates Defendant’s improper intent to benefit from
11 its infringing use of Plaintiff’s trademark/trade name.
12 See SAC Ex. 11.
13

This Court finds Plaintiff has made a strong

14 showing on six of the eight Sleekcraft factors, and
15 accordingly has asserted a meritorious claim for
16 federal trademark infringement. Plaintiff is likely to
17 succeed on the merits of this claim.
18

ii. Plaintiff has asserted a meritorious

19

claim for Common Law Trade Name

20

Infringement.

21

Plaintiff brings a common law trade name

22 infringement claim against Defendant, pursuant to 15
23 U.S.C. § 1125(a). Mot. 1:28. To prevail on its common
24 law trade name infringement claim, Plaintiff must show
25 that (1) it has a valid, protectable trademark or trade
26 name, and (2) Defendant’s use of the mark is likely to
27 cause confusion. Applied Info. Scis. Corp. v. eBAY,
28 Inc., 511 F.3d 966, 969 (9th Cir. 2007).
19

“As a

1 practical matter, courts are rarely called upon to
2 distinguish between trade names, trademarks, and
3 service marks. Trade names often function as
4 trademarks or service marks as well.” Accuride Int’l
5 v. Accuride Corp., 871 F.2d 1531, 1534-35 (9th Cir.
6 1989). There are three ways in which Plaintiff can
7 establish it has a protectable interest: (1) it has a
8 federally registered trademark in goods or services;
9 (2) its mark is descriptive but has acquired a
10 secondary meaning in the market; or (3) it has a
11 suggestive mark, which is inherently distinctive and
12 protectable. Id. at 970. Registration of a mark “on
13 the Principal Register in the Patent and Trademark
14 Office constitutes prima facie evidence of the validity
15 of the registered mark and of [the registrant’s]
16 exclusive right to use the mark on the goods and
17 services specified in the registration.”
18 Commc’ns, Inc., 174 F.3d at 1047.
19

Brookfield

Here, Plaintiff has registered the trade name

20 “TELEGU ASSOCIATION OF SOUTHERN CALIFORNIA” with the
21 United States Patent and Trademark Office. See SAC.
22 Ex. 1, ECF No. 72-1. Thus, Plaintiff has made a prima
23 facie showing that it holds a valid, protectable
24 interest in the use of the trade name “TELEGU
25 ASSOCIATION OF SOUTHERN CALIFORNIA,” in connection with
26 organizing and hosting events for cultural and
27 education al purposes. Id. Thus, this Court finds
28 Plaintiff is likely to succeed on the merits of this
20

1 claim.
2

iii.

Plaintiff has asserted a

3

meritorious claim for False

4

Designation of Origin and Common

5

Law Unfair Competition.

6

The elements to establish the claims of false

7 designation of origin, unfair competition, and
8 trademark infringement are “identical.” New West Corp.
9 v. NYM Co., 595 F.2d 1194, 1201 (9th Cir. 1979).
10 as this Court finds Plaintiff has asserted a

Thus,

11 meritorious claim for trademark infringement, this
12 Court similarly finds Plaintiff is likely to succeed on
13 the merits of its false designation of origin claim and
14 its common law unfair competition claim.
15

iv. Plaintiff has asserted a meritorious

16

claim for California Statutory Unfair

17

Competition.

18

California Business and Professions Code § 17200

19 defines unfair competition as “any unlawful, unfair or
20 fraudulent business act or practice and unfair,
21 deceptive, untrue or misleading advertising.” BPC §
22 17200. The Ninth Circuit “has consistently held that
23 state common law claims of unfair competition and
24 actions pursuant to California Business and Professions
25 Code § 17200 are ‘substantially congruent’ to claims
26 made under the Lanham Act.” Shingle Springs Band of
27 Miwok Indians v. Caballero, 630 Fed. Appx. 708, 711 fn
28 2 (9th Cir. 2015); See also Jada Toys, Inc. v. Mattel,
21

1 Inc., 518 F.3d 628, 632 (9th Cir. 2008) (finding that
2 California state law trademark infringement claims are
3 subject to same test as federal claims under the Lanham
4 Act). As this Court finds Plaintiff has asserted a
5 meritorious claim for trademark infringement, this
6 Court similarly finds Plaintiff has established its
7 claim for unfair competition under California Business
8 and Professions Code § 17200.
9

In sum, as this Court finds Plaintiff has

10 sufficiently alleged all of its claims in its
11 Complaint, and Plaintiff is likely to succeed on the
12 merits of its claims, this Court finds the second and
13 third Eitel factors weigh in favor of default judgment.
14
15

c.

The sum of money at stake in the action.

“Under the fourth Eitel factor, ‘the court must

16 consider the amount of money at stake in relation to
17 the seriousness of Defendant’s conduct.’” Tate, 2015
18 U.S. Dist. LEXIS 3607 at *10 (quoting PepsiCo, Inc. v.
19 California Sec. Cans, 238 F.Supp.2d 1172, 1176 (C.D.
20 Cal. 2002)).
Under the Lanham Act, the Court has the power to
21
22 grant injunctions according to the rules of equity, and
23 on such terms as the court deems reasonable, to prevent
24 the violation of a mark holder’s rights. Truong, 2007
25 WL 1545173 at *19; See also 15 U.S.C. § 1116(a). A
26 plaintiff is not entitled to an injunction as a matter
27 of course, but where a mark holder demonstrates ongoing
28 infringement of its marks, an injunction is
22

1 appropriate. Truong, 2007 WL 1545173 at *19.
2 “Injunctive relief is the remedy of choice for
3 trademark infringement and unfair competition cases,
4 since there is no adequate remedy at law for the injury
5 caused by a defendant’s continuing infringement.”
6 Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175,
7 1180 (9th Cir. 1988).
Here, Plaintiff has abandoned its claim for damages
8
9 and instead seeks a permanent injunction against
10 Defendant. Mot. 8:13-9:2. Plaintiff seeks to enjoin
11 Defendant, its officers, directors, agents, employees,
12 representatives, and all persons acting in concert or
13 privity with any of them from: (1) Using in any manner
14 Plaintiff’s trademark/trade name or any other names or
15 marks that so resemble Plaintiff’s trademark / trade
16 name as to be likely to cause confusion, deception or
17 mistake; and (2) Committing or contributing to any acts
18 calculated to cause consumers to believe that any
19 services that are not Plaintiff’s are those provided
20 under the control or supervision of Plaintiff, or are
21 sponsored or approved or connected with, guaranteed by,
22 or produced under the control of supervision of
23 Plaintiff. Id. at 9:1-12.
As Plaintiff has established that Defendant’s use
24
25 of Defendant’s website is likely to cause confusion,
26 this Court enters a permanent injunction against
27 Defendant as requested by Plaintiff. Without entry of
28 a permanent injunction, Plaintiff will be exposed to
23

1 the risk of continuing irreparable harm. See PepsiCo,
2 238 F.Supp.2d at 1177 (finding this Eitel favor weighs
3 in favor of grating default judgment when a Plaintiff
4 is not seeking monetary damages, but rather injunctive
5 relief, against Defendant’s continued infringing use of
6 their trademarks). This Court finds this factor weighs
7 in favor of default judgment, and enters a permanent
8 injunction as requested.
9
10
11

d.

The possibility of a dispute concerning
the material facts.

This Court finds it is not clear there would be any

12 genuine dispute of material fact in the present case,
13 as Defendant has not obtained replacement counsel or
14 properly answered Plaintiff’s SAC or present Motion.
15 “Upon entry of default, the well-pleaded allegations in
16 the complaint are taken as true, except those relating
17 to damages.” Tate, 2015 U.S. Dist. LEXIS 3607 at *12
18 (citing TeleVideo Sys., Inc. v. Heidenthal, 826 F.2d
19 915, 917-918 (9th Cir. 1987)). “In addition, ‘[t]he
20 district court is not required to make detailed
21 findings of fact.’” Id. (citing Fair Housing of Marin
22 v. Combs, 285 F.3d 899, 908 (9th Cir. 2002)). In Tate,
23 the district court found: “Since defendant never
24 answered or otherwise appeared in this action, it is
25 unclear whether there would be any genuine dispute of
26 material facts.” Id. As in Tate, this Court similarly
27 finds no impediment to entry of default judgment
28 against Defendant.
24

1

e.

Whether Defendant’s default was the

2

product of excusable neglect.

3

“Excusable neglect is an equitable concept that

4 takes account of factors such as ‘prejudice . . ., the
5 length of the delay and its potential impact on
6 judicial proceedings, the reason for the delay,
7 including whether it was within the reasonable control
8 of the movant, and whether the movant acted in good
9 faith.’” Tate, 2015 U.S. Dist. LEXIS 3607 at *12
10 (quoting Pioneer Inv. Servs. Co. v. Brunswick Assocs.
11 Ltd. Partnership, 507 U.S. 380, 395 (1993)). As
12 Defendant has not responded or otherwise obtained
13 replacement counsel in this action, there is no
14 evidence before this Court that Defendant’s default is
15 the product of excusable neglect. Such failure to
16 respond, obtain replacement counsel, and/or appear
17 favors default judgment.
18
19
20

f.

The strong public policy favoring
decisions on the merits.

Although there is a strong policy underlying the

21 Federal Rules of Civil Procedure, which favors
22 decisions on the merits “whenever reasonably possible,”
23 Tate, 2015 U.S. Dist. LEXIS 3607 at *13 (quoting Eitel,
24 782 F.2d at 1427), “‘this preference, standing alone,
25 is not dispositive.’” Id. (quoting Kloepping v.
26 Fireman’s Fund, 1996 U.S. Dist. LEXIS 1786 (N.D. Cal.
27 1996)). In deciding to grant default judgment, the
28 Tate court noted: “Defendant’s failure to answer the
25

1 Complaint makes a decision on the merits impractical,
2 if not impossible.” Id. (citing PepsiCo, Inc. v.
3 California Sec. Cans, 238 F.Supp.2d 1172, 1177 (C.D.
4 Cal. 2002)). “Under Fed. R. Civ. P. 55(b), termination
5 of a case before hearing the merits is allowed whenever
6 a defendant fails to defend an action.” Id.
7 Furthermore, because Defendant participated in this
8 case before abandoning their defense, this factor
9 weighs in favor of entering a default judgment against
10 Defendant. See Stanley Black & Decker, Inc. v. D&L
11 Elite Investments, LLC, 2014 WL 3738327 at *14 (N.D.
12 Cal. 2014).
13

In the present case, Defendant has similarly made

14 it impractical to decide the matter on the merits. In
15 fact, no adjudication of the substantive claims can
16 occur because Defendant has not obtained proper
17 replacement counsel, in spite of this Court’s order to
18 do so. Because all Eitel factors weigh in favor of
19 default judgment, this Court GRANTS Plaintiff’s Motion
20 for Default Judgment [140] against Defendant, and
21 accordingly permanently enjoins Defendant from further
22 infringement of Plaintiffs’ trademark / trade name.
23 //
24 //
25 //
26 //
27 //
28 //
26

1
2

III.

CONCLUSION

This Court GRANTS Plaintiff’s Motion for Default

3 Judgment. Additionally, this Court GRANTS Plaintiff’s
4 request for entry of a permanent injunction against
5 Defendant.
IT IS SO ORDERED.
6
7 DATED: April 20, 2016
8

s/ RONALD S.W. LEW
HONORABLE RONALD S.W. LEW
Senior U.S. District Judge

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