The National Grange of the Order of Patrons of Husbandry v. California State Grange

Filing 108

ORDER denying 88 Motion to Stay Injunction Pending Appeal, signed by Senior Judge William B. Shubb on 1/11/16. (Kastilahn, A)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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----oo0oo----

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THE NATIONAL GRANGE OF THE
ORDER OF PATRONS OF
HUSBANDRY, a District of
Columbia nonprofit
corporation,

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ORDER RE: MOTION TO STAY
INJUNCTION PENDING APPEAL

Plaintiff,

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CIV. NO. 2:14-676 WBS DAD

v.
CALIFORNIA STATE GRANGE, a
California corporation,
Defendant.
----oo0oo---On July 14, 2015, the court granted summary judgment in

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favor of plaintiff National Grange of the Order of Patrons of

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Husbandry’s claims for trademark infringement, 15 U.S.C. § 1114,

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and unfair competition and false designation of origin, 15 U.S.C.

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§ 1125(a), under the Lanham Act.

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judgment was entered on September 29, 2015, which permanently

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enjoined defendant California State Grange and its agents,

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affiliates, and assigns, and any party acting in concert with

(Docket No. 60.)

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Final

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defendant and its agents, affiliates, and assigns from using

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marks containing the word “Grange.”

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October 28, 2015, defendant filed a notice of appeal to the

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United States Court of Appeals for the Ninth Circuit.

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No. 87.)

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injunction pending appeal.

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(Docket Nos. 85-86.)

On

(Docket

Defendant now brings this motion for a stay of the
(Docket No. 88.)

When a party files a notice of appeal, “jurisdiction

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over the matters being appealed normally transfers from the

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district court to the appeals court.”

Mayweathers v. Newland,

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258 F.3d 930, 935 (9th Cir. 2001).

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retains jurisdiction to preserve the status quo until decision by

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the appellate court.

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Inc., 242 F.3d 1163, 1166 (9th Cir. 2001).

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Civil Procedure 62(c), the district court may “suspend, modify,

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restore, or grant an injunction on terms for bond or other terms

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that secure the opposing party’s rights” while an appeal is

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pending.

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merits of the case” or “materially alter the status of the case

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on appeal.”

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omitted).

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The district court, however,

Nat. Res. Def. Council, Inc. v. Sw. Marine
Under Federal Rule of

In doing so, the court may not “adjudicate anew the

Sw. Marine Inc., 242 F.3d at 1166 (citations

A stay pending appeal “is not a matter of right, even

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if irreparable injury might otherwise result.”

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556 U.S. 418, 433 (2009) (citation omitted).

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court’s discretion to grant such a stay, and the party requesting

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it “bears the burden of showing that the circumstances justify an

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exercise of that discretion.”

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whether to grant a stay pending appeal, the district court

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considers (1) whether defendant has made a strong showing that it

Id. at 433-34.

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Nken v. Holder,

It is within the

In evaluating

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will likely succeed on the merits of its appeal, (2) whether

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defendant will be irreparably injured if the stay is not granted,

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(3) whether a stay will substantially injure plaintiff, and (4)

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whether the public interest favors a stay.

Id. at 434.1

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The first two factors are the most critical.

Id.

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Defendant must make a strong showing that it “has a substantial

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case for relief on the merits.”

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1204 (9th Cir. 2012).

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success on the merits is ‘better than negligible’ or that there

Lair v. Bullock, 697 F.3d 1200,

“[I]t is not enough that the likelihood of

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is a ‘mere possibility of relief.’”

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The decision to grant injunctive relief “rests with the sound

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discretion of the trial court and requires a clear abuse of

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discretion for a modification or reversal” on appeal.

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Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1021-22

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(9th Cir. 1985).

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appeal, it must therefore “show that there was no reasonable

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basis for the district court’s decision.”

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U.S. Cellular Inv. Co. v. GTE Mobilnet, Inc., 281 F.3d 929, 934

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(9th Cir. 2002) (“Discretion is abused when the judicial action

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is arbitrary, fanciful or unreasonable or where no reasonable man

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[or woman] would take the view adopted by the trial court.”

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(citations omitted)).

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Id. (citations omitted).

Transgo,

For defendant to succeed on the merits of its

Id. at 1022; see also

For the reasons stated in the court’s July 14 and

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September 29, 2015 Orders, defendant has infringed upon

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plaintiff’s trademark by using the name “Grange,” and injunctive

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This standard “is similar to that employed by district
courts in deciding whether to grant a preliminary injunction.”
Lopez v. Heckler, 713 F.2d 1432, 1435 (9th Cir. 1983).
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relief was appropriate to prevent defendant’s continued trademark

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violations and unfair competition.

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Ninth Circuit has determined that “[i]njunctive relief is the

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remedy of choice for trademark and unfair competition cases,

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since there is no adequate remedy at law for the injury caused by

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a defendant’s continuing infringement.”

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Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988).

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injunctions are especially appropriate where,” as here, “the

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infringing use is for a similar service.”

(Docket No. 60, 85.)2

The

Century 21 Real Estate
“[B]road

Id.

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Plaintiff would be substantially injured by defendant’s

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continued infringement of its trademark were the court to grant a

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stay of the injunction here.

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99-1).)

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likelihood of confusion,” the public interest also weighs heavily

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against granting stay.

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Milon–DiGiorgio Enters., 559 F.3d 985, 993 (9th Cir. 2009) (“We

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find no abuse in the district court’s determination that, in

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order to avoid confusion to consumers, MDE must abandon all use

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of the name ‘ISPWest.com.’”); Century 21, 846 F.2d at 1181 (“In

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light of the likelihood of confusion arising from Sandlin’s use

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of the word ‘Century’ in offering service very similar to Century

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21’s, we find no abuse of discretion in the issuance of the

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injunction.”).

(See Huber Decl. ¶¶ 4-7 (Docket No.

Given that the injunction is “fashioned to prevent the

See Internet Specialties W., Inc. v.

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The elements for trademark infringement and unfair
competition under the Lanham Act are essentially the same and the
same evidence can establish both claims. See Century 21 Real
Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988);
Century 21 Real Estate, LLC v. Ramron Enters., Civ. No. 1:14-788
AWI, 2015 WL 521350, at *6 (E.D. Cal. Feb. 9, 2015).
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The court further finds no merit in defendant’s

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argument that defendant will face hardship by having to change

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its name, communicate the change to its members, and revise its

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documents and marketing materials.

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taking steps to comply with the injunction since the court’s July

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14, 2015 Order, which was issued months before final judgment was

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entered.

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(Docket No. 78).)

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name and has been publicly referring to itself as “California

Defendant had been actively

(Def.’s Opp’n to Entry of Final J. (“EFJ Opp’n”) at 8-9
Since July 2015, defendant has changed its

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State Guild” or “CSG,” communicated the change “to its members

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via numerous communications, including emails, letters and

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bulletins,” and switched its domain name to reflect this change.

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(See McFarland Decl. in Supp. of Def.’s Mot. to Stay ¶¶ 4-10, Ex.

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A (Docket No. 105-1).)

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Since July 2015, defendant has also published its new

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name and domain on marketing materials, “diligently” removed the

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word “Grange” from its documents, and repeatedly disclaimed its

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affiliation with the “California State Grange” name on its

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correspondence and bulletins.

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of EFJ Opp’n ¶¶ 4-20, Exs. A-F (Docket No. 78-1).)

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therefore unlikely that defendant would be irreparably injured if

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the stay of the injunction is not granted.

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(See id.; McFarland Decl. in Supp.
It is

IT IS THEREFORE ORDERED that defendant’s motion to stay

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the injunction pending appeal (Docket No. 88) be, and the same

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hereby is, DENIED.

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Dated:

January 11, 2016

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