United States of America Futsal Federal v. USA Futsal LLC

Filing 34

ORDER. The court issues the attached order to facilitate the parties' possible resolution of the case and directs an update by June 21, 2018. (Beeler, Laurel) (Filed on 5/21/2018)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

NORTHERN DISTRICT OF CALIFORNIA

10

San Francisco Division

United States District Court
Northern District of California

11

UNITED STATES OF AMERICA FUTSAL
FEDERATION, a California nonprofit
corporation, doing business as United States
Futsal, U.S. Futsal, and USFF,

12
13

Plaintiff,

14

Case No. 17-cv-04206-LB
ORDER
Re: ECF No. 15

v.

15

USA FUTSAL LLC, a North Carolina
Limited Liability Company, doing business
as USA Futsal,

16
17

Defendant.

18
19

INTRODUCTION

20

The plaintiff is United States of America Futsal Federation, and it sued the defendant USA

21

Futsal LLC for trademark infringement in violation of 15 U.S.C. § 1114(a) and California

22

common law, false designation of origin in violation of 15 U.S.C. § 1125(a), unfair business

23

practices in violation of California Business & Professions Code § 17200, and injury to business

24

reputation in violation of California Business & Professions Code § 14330.1 Futsal is a form of

25
26
27
28

1

Compl. – ECF No. 1. Citations refer to material in the Electronic Case File (“ECF”); pinpoint
citations are to the ECF-generated page numbers at the top of documents.

ORDER – No. 17-cv-04206-LB 

1

indoor soccer.2 The plaintiff organizes futsal clinics, events, and tournaments; the defendant does

2

too.3 The plaintiff served the defendant, which did not respond to the complaint or otherwise

3

appear.4 After the clerk’s entry of default,5 the plaintiff moved for default judgment and ultimately

4

limited its claim for relief to its costs of $1,167.22 and an injunction to prevent the defendant’s use

5

of the plaintiff’s mark.6 The defendant has not appeared. A magistrate judge may not exercise

6

jurisdiction under 28 U.S.C. § 636(c)(1) without the consent of all parties. Ultimately, the court

7

will direct the Clerk of Court to reassign the case to a district judge and will recommend that the

8

new judge enter default judgment in favor of the plaintiff and against the defendant.
But — as discussed below and at the May 16, 2018 hearing — the defendant may have

10

rebranded its business and stopped any infringing use of the plaintiff’s marks. It may be more

11
United States District Court
Northern District of California

9

cost-efficient for both parties to settle the case. And for the defendant, it may be useful to avoid a

12

default judgment. The plaintiff agreed that (1) the court would issue this order with the analysis

13

that will be in the court’s report and recommendation for entry of default judgment, and (2) the

14

plaintiff’s counsel will serve the order on the defendant and its counsel (listed on the North

15

Carolina Secretary of State’s website) to try to settle the dispute and the scope of the relief. The

16

court thus issues this order and asks for an update from counsel by June 21, 2018.

17
STATEMENT

18
19

1. The Plaintiff and its Trademarks

20

The plaintiff United States of America Futsal Federation is a nonprofit corporation with its

21

principal place of business in Oakland, California; it “is engaged in the business of, inter alia,

22
23
24
25
26
27
28

2

Id. at 3–4 (¶ 9) (“Futsal is the way the world plays indoor soccer.” It is played on an indoor hard
court by two teams of five players with a smaller ball with less bounce than a regular soccer ball; on
information and belief, futsal is played on all continents, in over 100 countries, by more than 12
million players.).

3

Id. at 3 (¶¶ 5–6).

4

See Docket.

5

Clerk’s Entry of Default – ECF No. 12.

6

Mot. for Default Judgment – ECF No. 15; Pl.’s Second Supp. Br. – ECF No. 25; Chitsaz Supp. Decl.
– ECF No. 33.

ORDER – No. 17-cv-04206-LB

2 

1

arranging and conducting futsal training clinics and indoor and outdoor futsal events and

2

tournaments, and related activities.”7 It does business as United States Futsal, U.S. Futsal, and

3

USFF.8
The plaintiff “has been governing the sport of futsal in the United States since 1981, at which

5

time it began using the distinctive UNITED STATES FUTSAL and U.S. FUTSAL trademarks in

6

interstate commerce in connection with their futsal training, events, tournaments, and sale of its

7

related goods and services.”9 The plaintiff has been promoting futsal leagues for over three

8

decades; since at least 1985, it has been sponsoring state, regional, and national futsal leagues and

9

tournaments.10 It has more than 110,000 registered players of all ages throughout the United States

10

and has leagues and programs in all 50 states.11 It is the only futsal organization “directly affiliated

11
United States District Court
Northern District of California

4

with U.S. Soccer and U.S. Youth Soccer.”12
The plaintiff “organizes its futsal leagues and tournaments, and offers its futsal-related

12
13

services, under its UNITED STATES FUTSAL and U.S. FUTSAL brand, and in connection with

14

the UNITED STATES FUTSAL and U.S. FUTSAL trademarks, and offers and sells its futsal-

15

related goods and services throughout the United States and internationally.”13 At all times, the

16

plaintiff operated its business under the trademarks “United States Futsal” and “U.S. Futsal.”14

17

The plaintiff has been the sole and exclusive owner of the following registered trademarks.15

18

The first is United States Futsal:
Plaintiff is the owner of the federally registered trademark UNITED STATES
FUTSAL in Class 41 for “entertainment services, namely, arranging and
conducting sports training clinics and 18 indoor/outdoor sporting events in the
nature of futsal games,” Registration No. 4,297,129. The mark has been registered

19
20
21
22
23
24
25
26
27
28

7

Compl. – ECF No. 1 at 3 (¶ 5).

8

Id.

9

Id. (¶ 8).

10

Id. at 4 (¶ 10).

11

Id. (¶ 11).

12

Id. (¶ 12).

13

Id. (¶ 13).

14

Id. (¶ 14).

15

Id. (¶¶ 15–18).

ORDER – No. 17-cv-04206-LB

3 

since March 5, 2013, and has been in consistent, uninterrupted use in interstate
commerce since at least 1987 in connection with the aforementioned services. The
registration is in good standing.16

1
2

The second is U.S. Futsal:

3

The Plaintiff is the owner of the federally registered trademark U.S. FUTSAL in
Class 41 for “entertainment services, namely, arranging and conducting sports
training clinics and indoor/outdoor sporting events in the nature of futsal games,”
Registration No. 4,490,564. The mark has been registered since March 4, 2014, and
has been in consistent, uninterrupted use in interstate commerce since at least 1987
in connection with the aforementioned services. The registration is in good
standing.17

4
5
6
7

The third is U.S. Futsal:
Plaintiff is the owner of the federally registered trademark U.S. FUTSAL in Class
25 for “clothing, namely, warm up suits, jerseys and trousers,” and Class 28 for
“sporting goods, namely, balls,” Registration No. 4,160,663. The mark has been
registered since June 19, 2012, and has been in consistent, uninterrupted use in
interstate commerce since at least December of 2003 in connection with the
aforementioned goods. The registration is in good standing.18

8
9
10

United States District Court
Northern District of California

11

The plaintiff does not claim right to the generic term “futsal” but claims “the exclusive right to

12
13
14
15

use the UNITED STATES FUTSAL and the U.S. FUTSAL composite marks in connection with
its organization, the activities it offers and sponsors, and the clothing and equipment products
associated therewith.”19 The complaint pleads the following about use:
22. The U.S. FUTSAL Marks have been in use in interstate commerce in some
form since at least 1987, and have become well-known based on Plaintiff’s
consistent, uninterrupted, and exclusive use in connection with futsal-related
services and goods since that time. Through extensive and continued use, the U.S.
FUTSAL Marks have become exclusively associated by the trade and public with
Plaintiff, and have developed considerable goodwill.
23. By virtue of advertising and sales, together with consumer acceptance and
recognition, Plaintiff’s U.S. FUTSAL Marks identify Plaintiff’s futsal-related
services and goods only, and distinguish it from services and goods offered and
sold by others. Plaintiff’s U.S. FUTSAL Marks have thus become and are a

16
17
18
19
20
21
22
23
24
25
26
27
28

16

Id. (¶ 15). Exhibit A to the complaint (referenced later in ¶ 15) is a copy of the Trademark
Status and Document Retrieval (“TSDR”) printout for the UNITED STATES FUTSAL mark.
Exhibit B is the Registration Certificate for the UNITED STATES FUTSAL mark,
Registration No. 4,297,129. Exs. A & B – ECF Nos. 1-1 & 1-2.

17

Id. at 4–5 (¶ 16). Exhibit C to the complaint is a copy of the TSDR printout for the U.S. FUTSAL
mark. Exhibit D is the Registration Certificate for the U.S. FUTSAL mark, Registration No.
4,490,564. Exs. C & D – ECF Nos. 1-3 & 1-4.

18

Id. at 5 (¶ 17). Exhibit E to the complaint (referenced later in ¶ 17) is a copy of the SDR
printout for the U.S. FUTSAL mark. Exhibit F is a copy of the Registration Certificate for the
U.S. FUTSAL mark, Registration No. 4,160,663.

19

Id. at 5–6 (¶ 21).

ORDER – No. 17-cv-04206-LB

4 

valuable asset symbolizing Plaintiff, its quality goods and services, and its
goodwill.
24. Plaintiff’s futsal leagues, tournaments, events, and related goods offered
and sold under the U.S. FUTSAL Marks have achieved critical and commercial
success and the strength of the long-established UNITED STATES FUTSAL and
U.S. FUTSAL brand is one of Plaintiff’s most valuable assets.
25. In connection with its futsal business, since on or about March 7, 1996,
Plaintiff has operated and continues to operate a website located at the URL
<futsal.com> (“Plaintiff’s Website”). Beginning in or about March of 1996, and on
an ongoing basis, Plaintiff has advertised and continues to advertise its futsal
tournaments, leagues, and related goods and services on Plaintiff’s Website using
the U.S. FUTSAL Marks. A true and correct copy of a screenshot of the home page
of Plaintiff’s Website, prominently displaying the U.S. FUTSAL Marks, is attached
hereto as Exhibit “G,” and incorporated herein by this reference.20

1
2
3
4
5
6
7
8
9

2. The Defendant and its Infringing Activities
The plaintiff alleges on information and belief that the defendant USA Futsal LLC, doing

11
United States District Court
Northern District of California

10

business as USA Futsal, is a limited liability corporation (organized under the laws of the State of

12

North Carolina with its principal place of business in Highland Village, Texas) that “is engaged in

13

the business of, inter alia, providing instruction related to futsal, providing entertainment services,

14

including organizing amateur and professional futsal events, tournaments, leagues, camps and

15

clinics, including, but not limited to, under the name USA Futsal.”21 “On information and belief,

16

[the defendant] . . . offers its futsal-related services throughout the United States, including in San

17

Francisco, California, and internationally.”22 The complaint alleges the following:

18

27. On information and belief, in 2010 USA Futsal was formed in Cary, North
Carolina, as “Club Ambassadors, LLC”.

19

28. On information and belief, in 2014, USA Futsal was renamed “USA Futsal
LLC”.

20
21

29. On information and belief, at the time of changing the name from Club
Ambassadors, LLC to USA Futsal LLC, and selecting the infringing mark USA
FUTSAL, (the “USA FUTSAL Mark”), USA Futsal knew or should have known of
Plaintiff’s senior use of the U.S. FUTSAL Marks.

22
23

30. On information and belief, USA Futsal is the owner of the URL
<usafutsal.com>, and is the operator of the website appearing at that URL (“USA
Futsal’s Website”). USA Futsal’s Website advertises its futsal leagues,

24
25
26
27
28

20

Id. at 6 (¶¶ 22–25).

21

Id. at 3 (¶ 6).

22

Id. at 7 (¶ 26).

ORDER – No. 17-cv-04206-LB

5 

tournaments, camps, and related goods and services. The URL was registered on
November 30, 2011, and is registered to “USA Futsal LLC.” A true and correct
copy of the WHOIS URL ownership record is attached hereto as Exhibit “H,” and
incorporated herein by this reference.

1
2
3

31. The USA FUTSAL Mark is prominently displayed on USA Futsal’s
Website. A true and correct copy of a screenshot of the home page of USA Futsal's
Website is attached hereto as Exhibit “I,” and incorporated herein by this reference.

4
5

32. On information and belief, Defendant, itself or through its affiliates, agents,
or employees, has registered a Facebook page
(https://www.facebook.com/USAfutsal/), as shown in the screenshot attached as
Exhibit “J,” and incorporated herein by this reference.

6
7

33. On information and belief, Defendant, itself or through its affiliates, agents,
or employees, has registered an Instagram page
https://www.instagram.com/usafutsal/), as shown in the screenshot attached as
Exhibit “K”, and incorporated herein by this reference.

8
9
10

34. On information and belief, Defendant, itself or through its affiliates, agents,
or employees, has also registered the Twitter handle @USAFutsal
(https://twitter.com/USAFutsal) as shown in the screenshot attached as Exhibit “L,”
and incorporated herein by this reference.

United States District Court
Northern District of California

11
12

35. Defendant uses the Facebook, Instagram, and Twitter social media sites set
forth in Paragraphs 33 through 34 with its infringing USA FUTSAL Mark, where
Defendant is actively marketing and promoting its futsal-related services and
goods.

13
14
15

20

36. On December 16, 2014, USA Futsal applied to register the Service Mark
USA FUTSAL with the US PTO in Class 41 for “educational services, namely,
providing instruction in the field of the importance of futsal as a development tool
and entertainment sport; entertainment services, namely, organizing amateur and
professional futsal events, tournaments, leagues, camps and clinics,” Serial Number
86/481,760. On May 12, 2016, the USPTO refused the application on the grounds
of a likelihood of confusion with Plaintiff’s registered U.S. FUTSAL marks and
registrations. Defendant USA Futsal failed to respond to the Office Action refusing
its application, and the USPTO deemed the application abandoned. Attached as
Exhibit “M” and incorporated herein by this reference is a true and correct copy of
the TSDR printout for the USA FUTSAL mark, Serial No. 86/481,760.23

21

....

16
17
18
19

22

39. Defendant USA Futsal’s mark is nearly identical to Plaintiff’s marks.

23
24

40. Defendant’s USA FUTSAL mark and Plaintiff’s UNITED STATES
FUTSAL and U.S. FUTSAL mark[s] are nearly identical in sight, sound, meaning,
and commercial impression.24

25

....

26
27
28

23

Id. at 7–8 (¶¶ 27–36).

24

Id. at 8–9 (¶¶ 39–40).

ORDER – No. 17-cv-04206-LB

6 

42. Defendant uses the USA FUTSAL Mark in interstate commerce in
connection with the sale, offering for sale, distribution, and advertising of its futsalrelated services and goods – which are identical to the futsal-related services and
goods offered and sold by Plaintiff under its U.S. FUTSAL Marks. As such,
Defendant’s use of the USA FUTSAL Mark is likely to cause confusion, mistake,
or deception among consumers as to the source, quality, and nature of Defendant’s
services and goods.25

1
2
3
4

....

5

44. When Plaintiff determined that Defendant’s USA Futsal Mark infringed
Plaintiff’s U.S. FUTSAL marks, Plaintiff informed Defendant of the infringement,
demanding that Defendant ceases and desist from further use of the infringing
mark. In response, Defendant summarily refused Plaintiff’s demand to cease and
desist, indicating its purported belief that there is no likelihood of confusion.
Defendant continues to use the infringing mark in interstate commerce in
connection with the sale, offering for sale, distribution, and advertising of its futsalrelated services and goods.26

6
7
8
9
10

United States District Court
Northern District of California

11

3. Procedural History and Other Relevant Information
On July 24, 2017, the plaintiff filed its complaint, raising five claims: (1) trademark

12
13

infringement in violation of the Lanham Act, 15 U.S.C. § 1114(a); (2) false designation of origin,

14

in violation of 15 U.S.C. § 1125(a); (3) California common-law trademark infringement; (4) unfair

15

business practices in violation of Cal. Bus. & Prof. Code § 17200; and (5) injury to business

16

reputation in violation of Cal. Bus. & Prof. Code § 14330.27 On September 30, 2017, the plaintiff

17

personally served the complaint on Robert David Andrews — Manager and President of defendant

18

USA Futsal LLC — at 935 Crown Court, Highland Village, Texas 75077.28 The defendant did not

19

respond or otherwise appear.

20

The plaintiff moved for entry of default, and on November 29, 2017, the clerk entered the

21

default.29 The plaintiff moved for default judgment, asking for damages and an injunction.30 The

22

plaintiff served the motion for default judgment by mail to Robert David Andrews at the Texas

23
24
25
26
27
28

25

Id. at 9 (¶ 42).

26

Id. at 9 (¶ 44).

27

Id. at 10–16.

28

Proof of Service – ECF No. 9; Davis Decl. – ECF No. 15-1 at 2 (¶ 2).

29

Mot. for Entry of Default – ECF No. 11; Entry of Default – ECF No. 12.

30

Mot. for Default Judgment – ECF No. 15.

ORDER – No. 17-cv-04206-LB

7 

1

address and also at the registered office address at 310 S. Harrington Street, Raleigh, NC 27603.31

2

After discussing issues about damages with the court at a hearing on February 22, 201832 and after

3

the court’s subsequent order about damages,33 the plaintiff limited its request for relief to its costs

4

and an injunction prohibiting use of the marks.34
To obtain the information to serve the defendant, the plaintiff’s counsel accessed the website

5
6

for the North Carolina Secretary of State. He downloaded the 2017 Annual Report, which lists the

7

defendant’s registered office at 310 S. Harrington St., Raleigh, NC 27603-1818, its principal

8

office at 935 Crown Court, Highland Village, Texas 75077, and its registered agent as Robert

9

David Andrews, Jr.35 In October 2017, the plaintiff’s counsel accessed the website for the Texas
Secretary of State and downloaded the Certificate of Formation for USA Futsal Corporation, a

11
United States District Court
Northern District of California

10

nonprofit corporation formed in Texas on April 11, 2017, and which included as a director Robert

12

David Andrews, Jr. (at the Highland Village, Texas address) as one of the three directors.36
The complaint alleges “on information and belief” that USA Futsal was formed in 2010 in

13
14

Cary, North Carolina, as “Club Ambassadors, LLC” and was renamed “USA Futsal LLC” in

15

2014.37 The website for the North Carolina Secretary of State now lists the defendant’s current

16

legal name as A2 Sports LLC and its previous legal names as Club Ambassadors LLC and USA

17

Futsal LLC.38 The website lists the corporation’s current status as active, the corporation’s

18
19
20
21
22
23
24
25
26
27
28

31

Proof of Service – ECF No. 15-7 at 2. As discussed below, North Carolina corporate records show
that the defendant’s registered office is in Raleigh, NC, and its principal office is in Highland Village,
TX.
32

Minute Entry – ECF No. 16.

33

Order – ECF No. 20.

34

Pl.’s Supp. Br. – ECF No. 25. The plaintiff filed an earlier brief about damages at ECF No. 18 and
served that brief on Mr. Andrews at the Texas and North Carolina Addresses. ECF Nos. 18, 22.

35

Davis Decl. – ECF No. 15-1 at 2 (¶ 2); Ex. 1 – ECF No. 15-2 at 2. It lists Robert David Andrews, Sr.
of Cary, North Carolina as an additional member. Ex. 1 – ECF No. 15-2 at 2.

36

Ex. 2 – Ex. 15-3 at 3. It also lists Robert David Andrews, Sr. of Cary, North Carolina as a director.
Id.

37

Compl. – ECF No. 1 at 7 (¶¶ 27–28).

38

See https://www.sosnc.gov/online_services/search/Business_Registration_Results (last visited May
14, 2018). The court may take judicial notice of information on government websites that is not
reasonably subject to dispute as a matter of public record. Daniels-Hall v. Nat’l Educ. Ass’n, 629 F.3d
992, 998–99 (9th Cir. 2010).
ORDER – No. 17-cv-04206-LB

8 

1

formation date of August 4, 2010, its registered agent as Robert Andrews, Jr., its registered office

2

at the North Carolina address, and the principal office and mailing address at the Texas address.39

3

As discussed above in the section describing the defendant’s infringing activities, the plaintiff

4

identifies the defendant’s use of a website and social-media sites and includes screen shots.40 The

5

specific sites are usafutsal.com, https://www.facebook.com/USAfutsal/,

6

https://www.instagram.com/usafutsal/, and https://twitter.com/USAFutsal. Since the filing of the

7

complaint, the defendant has changed the content of the sites.41 First, the usafutsal.com website

8

now redirects to https://unitedfutsal.com/; the defendant’s name is reflected as United Futsal

9

Association, and the infringing marks are not on the site.42 Second, the Facebook page at
https://www.facebook.com/USAfutsal is not an active site, meaning, the content is not available.43

11
United States District Court
Northern District of California

10

Third, the Instagram site similarly shows no content.44 Fourth, the Twitter site is now suspended.45

12

The court held a hearing on May 16, 2018, and the defendant did not appear.46 The plaintiff

13

agreed that the default-judgment order would be limited to the two federal claims: (1) trademark

14

infringement in violation of the Lanham Act, 15 U.S.C. § 1114(a); and (2) false designation of

15

origin, in violation of 15 U.S.C. § 1125(a). Counsel also agreed with the court’s suggestion that a

16

more cost-effective and efficient way of resolving the dispute would be for (1) the court to issue

17

an order with the analysis that will be in the court’s report and recommendation for entry of

18
19
20

39

21

See https://www.sosnc.gov/online_services/search/Business_Registration_Results (last visited May
14, 2018).

22

Compl. – ECF No. 1 at 7–8 (¶¶ 33–35); Ex. G – ECF No. 1-7; Ex. I – ECF No. 1-9; Ex. J –ECF No.
1-10; Ex. K – ECF No. 1-11; Ex. L – ECF No. 1-12.

40

41

23

The court can consider the websites under the incorporation-by-reference doctrine. Knievel v. ESPN,
393 F.3d 1068, 1076–77 (9th Cir. 2005).

24

42

25
26
27
28

See usafutsal.com and https://unitedfutsal.com/ (last visited May 15, 2018). The unitedfutsal.com
site reflects the Raleigh, NC address.

43

See https://www.facebook.com/USAfutsal (last visited May 15, 2018).

44

See https://www.instagram.com/usafutsal (last visited May 15, 2018).

45

The page https://twitter.com/USAFutsal redirects to https://twitter.com/account/suspended (last
visited May 15, 2018).

46

Minute Entry – ECF No. 30.

ORDER – No. 17-cv-04206-LB

9 

1

default judgment against the defendant and (2) the plaintiff’s counsel to contact the defendant to

2

possibly work out the scope of the relief. The court thus issues this order.

3
ANALYSIS

4
5

1. Jurisdiction and Service

6

Before entering a default judgment, a court must determine whether it has subject-matter

7

jurisdiction over the action and personal jurisdiction over the defendant. See In re Tuli, 172 F.3d

8

707, 712 (9th Cir. 1999). A court also must ensure the adequacy of service on the defendant. See

9

Timbuktu Educ. v. Alkaraween Islamic Bookstore, No. C 06-0325 JSW, 2007 WL 1544790, at *2

10

(N.D. Cal. May 25, 2007).

United States District Court
Northern District of California

11

1.1

12

First, the court has subject-matter jurisdiction because the plaintiff brings claims under the

13

Lanham Act, 15 U.S.C. § 1114 et seq., and therefore invokes federal-question jurisdiction. See 28

14

U.S.C. § 1331.

The Court Has Subject-Matter Jurisdiction

15

1.2

16

“It is the plaintiff’s burden to establish the court’s personal jurisdiction over a defendant.”

The Court Has Personal Jurisdiction

17

Donell v. Keppers, 835 F. Supp. 2d 871, 876 (S.D. Cal. 2011) (default-judgment case) (quoting

18

Doe v. Unocal Corp., 248 F.3d 915, 922 (9th Cir. 2001)). Personal jurisdiction may be either

19

general or specific. See, e.g., Schwarzenegger v. Fred Martin Motor Co., 374 F.3d 797, 801–802

20

(9th Cir. 2004). The court has specific personal jurisdiction over the defendant.47
California’s long-arm statute authorizes specific personal jurisdiction over nonresident

21
22

defendants to the full extent permitted by the Due Process Clause of the United States

23

Constitution. Schwarzenegger, 374 F.3d at 800–01. To establish specific personal jurisdiction in

24

the forum state, the court applies the following three-prong test:

25
26
27
28

47

The plaintiff contended in its motion that the court has general personal jurisdiction and specific
personal jurisdiction over the defendant. Mot. – ECF No. 15 at 13–14. The plaintiff agreed at the
March 16, 2018 hearing that specific jurisdiction was a more appropriate basis for personal
jurisdiction.
ORDER – No. 17-cv-04206-LB

10 

1. The non-resident defendant must purposefully direct his activities or
consummate some transaction with the forum or resident thereof; or perform some
act by which he purposefully avails himself of the privilege of conducting activities
in the forum, thereby invoking the benefits and protections of its laws;

1
2
3

2. The claim must be one which arises out of or relates to the defendant’s forumrelated activities; and

4
5

3. The exercise of jurisdiction must comport with fair play and substantial justice,
i.e. it must be reasonable.

6

Id. at 802. “The plaintiff bears the burden of satisfying the first two prongs of [this] test.” Id. The

7

burden then shifts to defendants to present a compelling case that the exercise of jurisdiction

8

would be unreasonable. Id.
1.2.1

9

Purposeful Direction

The first prong of the specific-jurisdiction test requires a defendant to “purposefully avail”

10

United States District Court
Northern District of California

11

itself of the privilege of conducting business in the forum or “purposefully direct” activities

12

toward the forum. Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998). The

13

Ninth Circuit generally uses the purposeful direction test for trademark-infringement cases. See

14

Panavision, 141 F.3d at 1321 (applying purposeful direction analysis to trademark-infringement

15

lawsuit because it is “akin to a tort case.”).48
Purposeful direction exists when a defendant commits an act outside the forum that was

16
17

intended to and does in fact cause injury within the forum. Calder v. Jones, 465 U.S. 783, 788-89

18

(1984). Under the “effects” test, the defendant must (1) commit an intentional act (2) expressly

19

aimed at the forum (3) that causes harm that the defendant knows is likely to be suffered in the

20

forum. Washington Shoe Co. v. A-Z Sporting Goods Inc., 704 F.3d 668, 673 (9th Cir. 2012)

21

(quoting Mavrix Photo, Inc. v. Brand Tech., 647 F.3d 1218, 1228 (9th Cir. 2011)). The “‘effects’

22

test . . . focuses on the forum in which the defendant’s actions were felt, whether or not the actions

23

themselves occurred within the forum.” Mavrix, 647 F.3d at 1228. “However, referring to the

24

Calder test as an ‘effects’ test can be misleading. For this reason, we have warned courts not to

25
26
27
28

48

The plaintiff argues both purposeful direction and purposeful availment. Mot. – ECF No. 15 at 14–
15 (the defendant “purposefully availed itself of the benefits of doing business in California” and the
defendant uses its website and social media accounts to “purposefully direct to California consumers
its marketing and sales activities.”). The court limits its analysis to purposeful direction. See
Panavision Int’l, 141 F.3d at 1321.

ORDER – No. 17-cv-04206-LB

11 

1

focus too narrowly on the test’s third prong — the effects prong — holding that ‘something more’

2

is needed in addition to a mere foreseeable effect.” Pebble Beach Co. v. Caddy, 453 F.3d 1153,

3

1156 (9th Cir. 2006) (citation omitted).
First, the defendant must commit an intentional act. Intent means “an actual, physical act in the

5

real world, rather than an intent to accomplish a result or consequence of the act.” Brayton Purcell

6

LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010) (quotation omitted). Here, the

7

plaintiff alleged that the defendant committed intentional acts by willfully using the name U.S.A.

8

Futsal to advertise and sell futsal products and services.49 This sufficiently establishes an

9

intentional act. See Levi Strauss & Co. v. Toyo Enter. Co., 665 F. Supp. 2d 1084, 1093–94 (N.D.

10

Cal. 2009) (allegation that the defendant manufactures and sells products that directly infringe the

11
United States District Court
Northern District of California

4

plaintiff’s trademarks met the intentional act requirement).

12

Second, conduct must be expressly aimed at the forum. Brayton Purcell, 606 F.3d at 1129

13

(“‘[S]omething more’ than mere foreseeability [is required] in order to justify the assertion of

14

personal jurisdiction.”) (quotation omitted)). Express aiming exists “when the defendant is alleged

15

to have engaged in wrongful conduct targeted at a plaintiff whom the defendant knows to be a

16

resident of the forum state.” CollegeSource, Inc. v. Academyone, Inc., 653 F.3d 1066, 1077 (9th

17

Cir. 2011) (internal quotations and citations omitted); Pebble Beach, 453 F.3d at 1157 (the

18

“expressly aiming” standard is satisfied when “individualized targeting” is present).

19

Here, among other things, the plaintiff alleges that the defendant advertised by email and its

20

website a Summer 2017 futsal camp in San Francisco.50 A screenshot of the defendant’s twitter

21

account (Exhibit L) displays the following captions to pictures of futsal teams:

22

Day 1 of the #Elite96 San Francisco/Oakland’s afternoon session. Hard workers with
a lot of passion for futsal!

23

#Elite96 San Francisco/Oakland is officially in full swing! Check out some great
shots from our morning session yesterday!51

24
25
26
27
28

49

Compl. – ECF No. 1 at 9 (¶¶ 42–43).

50

Davis Decl. – ECF No. 15-1 at 4 (¶ 16).

51

Ex. L – ECF No. 1-12 at 1.

ORDER – No. 17-cv-04206-LB

12 

The plaintiff also alleges that the defendant provides identical futsal-related goods and services.52

2

These uncontested allegations demonstrate “individualized targeting” of California markets. See

3

Rio Properties, Inc. v. Rio Int’l Interlink, 284 F.3d 1007, 1020 (9th Cir. 2002) (finding in

4

trademark-infringement case that the defendant “specifically targeted consumers” in Nevada by

5

running advertisements directed at Nevada); Brayton Purcell, 606 F.3d at 1130–31 (nonresident

6

defendant in copyright-infringement case “individually targeted” plaintiff by using copyrighted

7

materials to enter direct competition with the plaintiff). Furthermore, the plaintiff alleges that the

8

defendant’s use of the U.S.A. Futsal mark in California is depriving the plaintiff of sales and

9

reducing the value and goodwill of the plaintiff’s registered marks.53 The plaintiff feels these lost-

10

profits and the diminution of its marks in its principal place of business: California.54 Panavision,

11
United States District Court
Northern District of California

1

141 F.3d at 1322 (defendant in trademark-infringement suit expressly aimed at California because

12

it injured plaintiff with principal place of business in California); accord Levi Strauus & Co., 665

13

F. Supp. 2d at 1093.
Third, the defendant’s intentional act must cause harm that the defendant knew was likely to

14
15

be suffered in the forum. Brayton, 606 F.3d at 1131. This element is satisfied when the

16

defendant’s act has ‘foreseeable effects’ in the forum. Id. Here, it was foreseeable that the plaintiff

17

would be harmed by infringement of its marks, including harm to its business reputation and

18

goodwill, and decreased business. Id. The plaintiff alleges that the defendant knew of the

19

plaintiff’s exclusive rights to its mark, which it used “to great success for 35 years.”55 It informed

20

the defendant of the infringement in a cease-and-desist letter, and the defendant refused to stop

21

using the marks.56 These allegations establish sufficiently that the defendant knew that the harm

22

was likely to be suffered in California, the plaintiff’s principal place of business. Id.; see

23

Facebook, Inc. v. Pedersen, 868 F. Supp. 2d 953, 961 (N.D. Cal. 2012) (foreseeable harm in

24
25
26
27
28

52

Compl. – ECF No. 1 at 3 (¶¶ 5–6).

53

Id. at 12 (¶¶ 63–64).

54

Id. at 3 (¶ 5).

55

Id. at 8 (¶ 37).

56

Id. at 9 (¶ 44).

ORDER – No. 17-cv-04206-LB

13 

1

trademark-infringement lawsuit because the defendant “likely knew that any harm suffered by [the

2

plaintiff] would be suffered in California, as [the plaintiff’s] principal place of business is in

3

California.”).
1.2.2

4

Forum-Related Activities

The second prong of the specific-jurisdiction analysis requires that the plaintiff’s claims arise

5
6

from the defendant’s forum-related activities. Panavision, 141 F.3d at 1322. The requirement is

7

satisfied if the plaintiff would not have been injured “but for” the defendant’s forum-related

8

conduct. Id.; Ballard v. Savage, 65 F.3d 1495, 1500 (9th Cir. 1995). Here, the plaintiff has shown

9

sufficiently that, absent the defendant’s conduct, it would not have been injured. The plaintiff
alleges that the defendant used a mark that is confusingly similar to its own mark, that it did so in

11
United States District Court
Northern District of California

10

California in the same line of business, and that as a result, the use had the effect of injuring the

12

plaintiff in California.57 See Levi Strauus & Co., 665 F. Supp. 2d at 1094.
1.2.3 Reasonableness

13

The final prong of the specific-jurisdiction test is that the exercise of jurisdiction must comport

14
15

with fair play and substantial justice. Panavision, 141 F.3d at 1322. A court considers seven

16

factors: (1) the extent of the defendant’s purposeful interjection into the forum state’s affairs; (2)

17

the burden on the defendant of defending in the forum; (3) the extent of conflict with the

18

sovereignty of the defendant’s state; (4) the forum state’s interest in adjudicating the dispute; (5)

19

the most efficient judicial resolution of the controversy, (6) the importance of the forum to the

20

plaintiff’s interest in convenient and effective relief, and (7) the existence of an alternative forum.

21

Core-Vent Corp. v. Nobel Indus., 11 F.3d 1482, 1487–88 (9th Cir. 1993).
There is a presumption of reasonableness when the first two prongs have been met, and a

22
23

defendant must present a “compelling case” that jurisdiction is unreasonable. Schwarzenegger,

24

374 F.3d at 802. Here, because the defendant has not appeared, it has not raised any challenge to

25

the reasonableness of the court’s exercise of jurisdiction over it. The record does not suggest any

26
27
28

57

Id. at 11 (¶ 60), 12 (¶ 63).

ORDER – No. 17-cv-04206-LB

14 

1

compelling reason why the court should decline to exercise jurisdiction over the defendant. See

2

Levi Strauss & Co., 665 F. Supp. 2d at 1094.

3

In sum, there is specific personal jurisdiction.

4

1.3 The Plaintiff Served the Defendant

5

Under Federal Rule of Civil Procedure 4(h)(1)(B), service on a corporation, partnership, or

6

association may be made by delivery to an authorized agent. The defendant must be served within

7

90 days after the complaint is filed. Fed. R. Civ. Proc. 4(m). Proof of service must be made to the

8

court. Fed. R. Civ. Proc. 4(l)(1).
Here, as described in the Statement, the plaintiff personally and timely served the complaint on

9

Robert David Andrews — Manager and President of defendant USA Futsal — at the Highland

11
United States District Court
Northern District of California

10

Village, Texas address58 and filed a proof of service with the court.59 The plaintiff also served the

12

motion for default judgment on Mr. Andrews by mail addressed to the registered office in Raleigh,

13

North Carolina, and the principal office in Highland Village, Texas.60 As the Statement describes,

14

these are the defendant’s addresses. Service was timely and proper.

15
16

2. Default Judgment
Under Federal Rule of Civil Procedure 55(b)(2), a plaintiff may apply to the district court for

17
18

— and the court may grant — a default judgment against a defendant who has failed to plead or

19

otherwise defend an action. See Draper v. Coombs, 792 F.2d 915, 925 (9th Cir. 1986). After entry

20

of default, well-pleaded allegations in the complaint regarding liability and entry of default are

21

taken as true, except as to damages. See Fair Hous. of Marin v. Combs, 285 F.3d 899, 906 (9th

22

Cir. 2002); TeleVideo Sys., Inc. v. Heidenthal, 826 F.2d 915, 917–18 (9th Cir. 1987). The court

23

need not make detailed findings of fact. Combs, 285 F.3d at 906 (9th Cir. 2002). Default judgment

24

cannot differ in kind from or exceed the amount demanded in the pleadings. Fed. R. Civ. P. 54(c).

25
26
27
28

58

Proof of Service – ECF No. 9 at 1–2.

59

Id.

60

Davis Decl. – ECF No. 15-1 at 3 (¶ 12).

ORDER – No. 17-cv-04206-LB

15 

1

“A defendant’s default does not automatically entitle the plaintiff to a court-ordered

2

judgment,” Pepsico, Inc. v. Cal. Sec. Cans, 238 F. Supp. 2d 1172, 1174 (C.D. Cal. 2002); that

3

decision lies within the court’s discretion, Draper, 792 F.2d at 924–25. Default judgments are

4

generally disfavored because “cases should be decided on their merits whenever reasonably

5

possible.” Eitel v. McCool, 782 F.2d 1470, 1472 (9th Cir. 1986). In deciding whether to enter a

6

default judgment, the court considers: “(1) the possibility of prejudice to the plaintiff; (2) the

7

merits of [the] plaintiff’s substantive claim; (3) the sufficiency of the complaint; (4) the sum of

8

money at stake in the action; (5) the possibility of a dispute concerning material facts; (6) whether

9

the default was due to excusable neglect; and (7) the strong policy underlying the Federal Rules of

10

Civil Procedure favoring decisions on the merits.” Id. at 1471–72.

United States District Court
Northern District of California

11

The Eitel factors favor default judgment here.

12

2.1 The Possibility of Prejudice to the Plaintiff (First Eitel Factor)

13

The first Eitel factor considers whether the plaintiff would suffer prejudice if default judgment

14

is not entered, and whether such potential prejudice to the plaintiff weighs in favor of granting a

15

default judgment. Id. at 1471; Craigslist, Inc. v. Naturemarket, Inc., 694 F. Supp. 2d 1039, 1054

16

(N.D. Cal. 2010). This factor weighs in favor of default judgment. The plaintiff filed the lawsuit in

17

July 2017 and served the complaint and the default-judgment motion on the defendant. The

18

defendant has not defended the action. If the court does not grant default judgment, the plaintiff is

19

without recourse.

20

2.2 The Merits and Sufficiency of the Claims (Second and Third Eitel Factors)

21

The second and third Eitel factors consider the merits of the claim and the sufficiency of the

22

complaint. Eitel, 782 F.2d at 1471. “The Ninth Circuit has suggested that [these factors] . . .

23

require that plaintiffs’ allegations ‘state a claim on which the [plaintiff] may recover.’” Kloepping

24

v. Fireman’s Fund, No. C 94-2684 TEH, 1996 WL 75314, at *2 (N.D. Cal. Feb. 13, 1996)

25

(quoting Danning v. Lavine, 572 F.2d 1386, 1388 (9th Cir. 1978)). The plaintiff moves for default

26

judgment on its two federal claims: (1) trademark infringement in violation of the Lanham Act, 15

27

U.S.C. § 1114; and (2) false designation of origin, in violation of 15 U.S.C. § 1125(a).

28
ORDER – No. 17-cv-04206-LB

16 

1
2

2.2.1

Trademark Infringement

To prevail on a claim for trademark infringement under 15 U.S.C. § 1114, a plaintiff must

3

establish that (1) it owns the trademark at issue; (2) the defendant used in commerce without

4

authorization “any reproduction, counterfeit, copy, or colorable imitation of the” mark “in

5

connection with the sale, offering for sale, distribution, or advertising of any goods and services;”

6

and (3) the defendant’s use of the mark is likely to cause confusion, cause mistake, or deceive. 15

7

U.S.C. 1114(1); Yelp v. Catron, 70 F. Supp. 3d 1082, 1094 (N.D. Cal. 2014); see Applied Info.

8

Scis. Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir. 2007) (to prevail on a trademark-

9

infringement claim, a plaintiff must show that there is “(1) a valid, protectable trademark, and (2)

10

that . . . use of the mark is likely to cause confusion.”).

United States District Court
Northern District of California

11

The plaintiff has met these requirements.

12

First, the plaintiff owns the trademarks at issue. “Federal registration provides prima facie

13

evidence of the mark’s validity and entitles the plaintiff to a strong presumption that the mark is a

14

protectable mark.” Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir.

15

2010); see also Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925,

16

927 (9th Cir. 2005) (“When a plaintiff pursues a trademark action involving a properly registered

17

mark . . . the burden of proving that the mark is generic rests upon the defendant.”); Filipino

18

Yellow Pages, Inc. v. Asian J. Publ’ns, Inc., 198 F.3d 1143, 1146 (9th Cir. 1999) (“In cases

19

involving properly registered marks, a presumption of validity places the burden of proving

20

genericness upon the defendant.”); Brookfield Commc’ns, Inv. v. W. Coast Entm’t Corp., 174 F.3d

21

1046, 1047 (9th Cir. 1999).

22

Second, the defendant used the marks without authorization.

23

Third, the defendant’s use of the mark was likely to cause confusion. To assess the likelihood

24

of confusion for trademark-infringement cases, courts in the Ninth Circuit apply the eight factors

25

identified in AMF, Inc. v. Sleekcraft Boats: (1) strength of the mark; (2) proximity of the goods;

26

(3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type

27

of goods and the degree of care likely to be exercised by the purchaser; (7) the defendant’s intent

28

in selecting the mark; and (8) likelihood of expansion of the product lines. 599 F.2d 341, 349 (9th
ORDER – No. 17-cv-04206-LB

17 

1

Cir. 1979); see iCall, Inc. v. Tribair, Inc., No. C–12–2406 EMC, 2012 WL 5878389, at *5 (N.D.

2

Cal. Nov. 21, 2012); “The test is a fluid one and the plaintiff need not satisfy every factor,

3

provided that strong showings are made with respect to some of them.” Survivor Media, Inc. v.

4

Survivor Prods., 406 F.3d 625, 631 (9th Cir. 2005). In GoTo.com, Inc. v. Walt Disney Co., the

5

Ninth Circuit found that “the three most important Sleekcraft factors are (1) the similarity of the

6

marks, (2) the relatedness of the goods or services, and (3) the . . . marketing channel.” 202 F.3d

7

1199, 1205 (9th Cir. 2000); see Brookfield Commc’ns, 174 F.3d at 1054 (the “similarity of the

8

marks and whether the two companies are direct competitors — will always be important”).
Here, based on the uncontested allegations, the “three most important Sleekcraft factors” —

9

the similarity of the marks, the relatedness of the goods or services, and marketing channel — are

11
United States District Court
Northern District of California

10

met. One, the marks are similar: the plaintiff’s marks are “United States Futsal” and “U.S. Futsal,”

12

and the defendant’s mark is “USA Futsal.” They are not identical, but the descriptive “U.S.”

13

“USA” and “United States”— attached to the word “Futsal” — add to the marks’ similarity.61 See

14

Sleekcraft, 599 F.2d at 351 (acknowledging that “craft” is a “generic frequently used in trademarks

15

on boats” but adding that “the common endings do add to the marks’ similarity”).62 Two, the

16

parties operate in the same niche market: both operate futsal leagues and tournaments, and both

17

sell futsal-related goods.63 Three, the parties use the same trade channels, including marketing

18

through their websites and social-media platforms.64 An ordinary consumer likely would be

19

confused. See Brookfield Commun. Inc., 174 F.3d at 1050 (“[t]he failure to prove instances of

20

actual confusion is not dispositive against a trademark plaintiff, because actual confusion is hard

21

to prove; difficulties in gathering evidence of actual confusion make its absence generally

22

unnoteworthy”).

23
24
25
26
27
28

61

Compl. – ECF No. 1 at 8 (¶ 39).

62

The PTO refused the defendant’s application to trademark “USA Futsal” based on a likelihood of
confusion. Id. at 8 (¶ 36).

63

Id. at 7 (¶ 26).

64

Id. at 6 (¶ 25), 7 (¶¶ 31–33).

ORDER – No. 17-cv-04206-LB

18 

1

2.2.2

False Designation of Origin

2

The Lanham Act was intended to make ‘actionable the deceptive and misleading use of

3

marks,’ and ‘to protect persons engaged in . . . commerce against unfair competition.’” Dastar

4

Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 28 (2003) (quoting 15 U.S.C. § 1127).

5

“To this end, section 43(a) of the Act, 15 U.S.C. § 1125(a), proscribes ‘the use of false

6

designations of origin, false descriptions, and false representations in the advertising and sale of

7

goods and services.’” Sleep Science Partners v. Lieberman, No. 09–04200 CW, 2010 WL

8

1881770, at *2 (N.D. Cal. May 10, 2010) (quoting Jack Russell Terrier Network of N. Cal. v. Am.

9

Kennel Club, Inc., 407 F.3d 1027, 1036 (9th Cir. 2005)). More specifically, section 43(a)(1) of the

10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19

Lanham Act, 15 U.S.C. § 1125(a)(1), states in pertinent part:
Any person who, on or in connection with any goods or services, or any container
for goods, uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or misleading
description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with another person, or as
to the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person’s
goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is
likely to be damaged by such act.

20

Thus, to establish a claim for trademark infringement or false designation of origin under

21

Section 43(a)(1)(A), 15 U.S.C. § 1125(a)(1)(A), a plaintiff must prove that the defendant (1) used

22

in commerce (2) any word, false designation of origin, false or misleading description, or

23

representation of fact, that (3) is likely to cause confusion or mistake, or to deceive, as to

24

sponsorship, affiliation, or the origin of the goods or services in question. Freecycle Network v.

25

Oey, 505 F.3d 898, 902 (9th Cir. 2007); see Int’l Order of Job’s Daughters v. Lindeburg & Co.,

26

633 F.2d 912, 917 (9th Cir. 1980) (claims under Section 43(a)(1)(A) of the Lanham Act for

27

trademark infringement, false designation of origin, or unfair competition may be proven by the

28

same elements as common-law unfair competition; the federal prohibitions on trademark
ORDER – No. 17-cv-04206-LB

19 

1

infringement and false designation of origin each “preclude the use of another's trademark in a

2

manner likely to confuse the public about the origin of goods”) (citing New West Corp. v. NYM

3

Co. of California Inc., 595 F.2d 1194, 1201 (9th Cir. 1979) (“Whether we call the violation [under

4

Section 43(a)(1)(A)] infringement, unfair competition or false designation of origin, the test is

5

identical[:] [I]s there a ‘likelihood of confusion?’”)). These elements largely track those of

6

trademark infringement. Oppenheimer v. Allvoices, Inc., No. 14-cv-00499-LB, 2014 WL 2604033,

7

at *10 (N.D. Cal. June 10, 2014); see JL Beverages Co. LLC v. Jim Beam Brands, 828 F.3d 1098,

8

1106 (9th Cir. 2016) (Sleekcraft factors apply to false-designation-of-origin claims).
Here, the defendant used the marks in a manner that was likely to confuse consumers. For the

10

reasons stated in the analysis regarding trademark infringement, the merits and sufficiency of the

11
United States District Court
Northern District of California

9

plaintiff’s allegations favor entering default judgment on the claims for false designation of origin

12

under § 1125(a). See JL Beverages, 828 F.3d at 1104–05 (analyzing false-designation-of-origin

13

and trademark claims together).

14

2.3 The Sum of Money at Stake (Fourth Eitel Factor)

15

The fourth Eitel factor addresses the amount of money at stake in the litigation. Eitel, 782 F.2d

16

at 1471. When the money is substantial or unreasonable, default judgment is discouraged. See id.

17

at 1472 (three-million dollar judgment, considered in light of parties’ dispute as to material facts,

18

supported decision not to enter default judgment); Tragni v. S. Elec. Inc., No. 09-32 JF (RS), 2009

19

WL 3052635, at *5 (N.D. Cal. Sept. 22, 2009); Bd. of Tr. v. RBS Washington Blvd, LLC, No. C

20

09-00660 WHA, 2010 WL 145097, at *3 (N.D. Cal. Jan. 8, 2010). When the sum of money at

21

stake is tailored to the specific misconduct of the defendant, default judgment may be appropriate.

22

See Bd. of Tr. of the Sheet Metal Workers Health Care Plan of N. Cal. V. Superhall Mechanical,

23

Inc., No. C 10-2212 EMC, 2011 WL 2600898, at *2–*3 (N.D. Cal. June 2011) (the amount of

24

unpaid contributions, liquidated damages, and attorney’s fees were appropriate as they were

25

supported by adequate evidence provided by the plaintiffs).

26
27
28
ORDER – No. 17-cv-04206-LB

20 

The plaintiff asks only for its costs of $1,167.22 and injunctive relief.65 This factor supports

1
2

default judgment.

3

2.4 The Possibility of a Dispute or Excusable Neglect (Fifth and Sixth Eitel Factors)

4

The fifth and sixth Eitel factors consider the potential of factual disputes and whether a

5

defendant’s failure to respond was likely due to excusable neglect. Eitel, 782 F.2d at 1471–72. In

6

Eitel, there was both a factual dispute and excusable neglect. Id. at 1472. There, the defendant

7

disputed material facts in the (untimely) answer and counterclaim. Id. Moreover, the defendant’s

8

response was late because the parties had previously agreed to “what appeared to be a final

9

settlement agreement” and “[the defendant] reasonably believed that the litigation was at an
end[.]” Id. Because of his reasonable reliance and prompt response when the agreement dissolved,

11
United States District Court
Northern District of California

10

the defendant’s untimely response appeared due to excusable neglect. Id.

12

The facts here are different. The plaintiff served the defendant with the complaint, its motion

13

for default judgment, and other papers along the way. The defendant never appeared. There is no

14

evidence of a factual dispute or excusable neglect. These factors support default judgment.

15

2.5

16

The Strong Policy Underlying the Federal Rules of Civil Procedure Favoring
Decisions on the Merits (Seventh Eitel Factor)

17

The seventh Eitel factor is the strong policy favoring decisions on the merits. Eitel, 782 F.2d at

18

1472; see also Pena v. Seguros La Commerical, S.A., 770 F.2d 811, 814 (9th Cir. 1985). Although

19

default judgment is disfavored, “[t]he very fact that F.R.C.P. 55(b) exists shows that this

20

preference, standing alone, is not dispositive.” Kloepping, 1996 WL 75314 at *3. “While the

21

Federal Rules do favor decisions on the merits, they also frequently permit termination of cases

22

before the court reaches the merits[,] . . . [as] when a party fails to defend against an action[.]” Id.

23

The defendant has not defended the lawsuit. Litigation on the merits is not possible. Default

24

judgment is appropriate. Fed. R. Civ. P. 55(a); Board of Trustees v. RBS Washington Blvd LLC,

25

No. C 09-00660 WHA, 2010 WL 145097, at *4 (N.D. Cal. Jan. 8, 2010).

26
27
28

65

Supplemental Br. – ECF No. 25 at 2.

ORDER – No. 17-cv-04206-LB

21 

*

1

*

In sum, the Eitel factors weigh in favor of granting default judgment. In the next section, the

2
3

*

court considers the scope of relief.

4
5

3. Relief Sought

6

Under Federal Rule of Civil Procedure 54(c), “[a] default judgment must not differ in kind

7

from, or exceed in amount, what is demanded in the pleadings.” Fed. R. Civ. P. 54(c). The purpose

8

of this rule is to ensure that a defendant is put on notice of the damages being sought against it so

9

that he may make a calculated decision as to whether or not it is in his best interest to answer. In re
Ferrell, 539 F.3d 1186, 1192–93 (9th Cir. 2008); Board of Trustees of the Sheet Metal Workers

11
United States District Court
Northern District of California

10

Local 104 Health Care Plan v. Total Air Balance Co., No. 08-2038 SC, 2009 WL 1704677, at *3–

12

5 (N.D. Cal. June 17, 2009). The plaintiff seeks injunctive relief and an award of costs.66

13

3.1

14

The plaintiff asks the court to enter a permanent injunction.

15

The Lanham Act provides for injunctive relief to prevent future trademark infringement. 15

Injunctive Relief

16

U.S.C. § 1116. “Injunctive relief is the remedy of choice for trademark and unfair competition

17

cases, since there is no adequate remedy at law for the injury caused by a defendant's continuing

18

infringement.” Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir.1988). To

19

determine if injunctive relief is appropriate in a particular case, “district courts should apply

20

‘traditional equitable principles[.]’” Reno Air Racing Ass’n, Inc. v. McCord, 452 F.3d 1126, 1137

21

(9th Cir. 2006). Those traditional equitable principles require a plaintiff to demonstrate: “(1) that it

22

has suffered an irreparable injury; (2) that remedies available at law … are inadequate to

23

compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and

24

defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved

25

by a permanent injunction.” eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 391 (2006).

26
27
28

66

Supplemental Br. – ECF No. 25.

ORDER – No. 17-cv-04206-LB

22 

1

Putting aside (for now) the issue of mootness (discussed below), and considering only the

2

complaint’s allegations of harm, the factors militate in favor of an injunction. The defendant is

3

using the plaintiff’s mark, causing confusion and usurping the plaintiff’s reputation and goodwill.

4

See Herman Miller Inc. v. Alphaville Design Inc., No. C 08-03407 WHA, 2009 WL 3429739, at *

5

9 (N.D. Cal. Oct. 22, 2009) (permanent injunction appropriate when the defendant’s “infringement

6

has caused irreparable injury by hurting the goodwill” of the plaintiff’s brand). The balance of

7

hardships tips in the plaintiff’s favor: the defendant is “in default and has not demonstrated that it

8

would incur any irreparable hardship from being permanently enjoined against infringing” the

9

plaintiff’s trademark. Bittorent, Inc. v. Bittorent Mktg. GMBH, No. 12-cv-02525-BLF, 2014 WL

10

5773197, at *13 (N.D. Cal. Mar. 8, 2018).

United States District Court
Northern District of California

11

The next issue is the appropriate scope of injunctive relief. Federal Rule of Civil Procedure

12

65(d) requires that “[e]very order granting an injunction … (A) state the reasons why it issued; (B)

13

state its terms specifically; and (C) describe in reasonable detail … the act or acts restrained or

14

required.” Generally, an injunction must be narrowly tailored to remedy only the specific harms

15

shown by a plaintiff, rather than to enjoin all possible breaches of the law. Price v. City of

16

Stockton, 390 F.3d 1105, 1117 (9th Cir. 2004); Skydive Arizona, Inc. v. Quattrocchi, 673 F.3d

17

1105, 1116 (9th Cir. 2012) (“Injunctive relief under the Lanham Act must be narrowly tailored to

18

the scope of the issues tried in the case.”); Iconix, Inc. v. Tokuda, 457 F. Supp. 2d 969, 998 (N.D.

19

Cal. 2006).

20
21
22
23
24
25
26
27
28

The plaintiff’s proposed permanent injunction is set forth in ECF No. 25-1 and enjoins the
defendant from:
1. Using the Infringing Mark, either alone or in conjunction with any other words or symbols,
or any phonetically or visually similar words or symbols in any combination, in connection
with futsal-related services and goods or any related goods or services, including futsal
training, events, clubs, leagues, tournaments, secondary medical insurance, player
development programs, player identification programs, and coaching education for futsal
leagues, and related clothing and sporting goods, within the Territory;
2. Using or continuing to use the Infringing Mark, either alone or in conjunction with any
other words or symbols, or any phonetically or visually similar words or symbols in any
combination in connection with any marketing or advertising or any other promotional
materials relating to futsal or any related goods or services, including with futsal-related
services and goods or any related goods or services, including futsal training, events, clubs,
leagues, tournaments, secondary medical insurance, player development programs, player
ORDER – No. 17-cv-04206-LB

23 

identification programs, and coaching education for futsal leagues, and related clothing and
sporting goods, viewable within the Territory;

1
2

3. Further infringing on plaintiff’s U.S. FUTSAL and UNITED STATES FUTSAL marks by
using the Infringing Mark or any confusingly similar trademark, service mark, name, term,
or designation in any manner or place within the Territory, including through any website,
including but not limited to defendant’s website, or any URL with a confusingly similar
name, and any social media, including but not limited to defendant’s social media pages;

3
4
5

4. Filing any application for registration with any government agency, including but not
limited to the United States Patent and Trademark Office, of any trademark or service
mark that contains the words USA FUTSAL;

6
7

5. Further infringing, in any manner, contributing to infringement, or participating in the
infringement by others, of any of plaintiff’s trademarks, and from acting in concert with,
aiding or abetting others, to infringing any of plaintiff’s trademarks in any way;

8
9

6. Causing likelihood of confusion, deception, or mistake as to the source, nature, or quality
of defendant’s goods and services;

10

7. Engaging in any other activity constituting unfair competition with plaintiff, or constituting
an infringement of any of plaintiff’s marks, or of plaintiff’s rights in, or to use, or to
exploit, said trademarks, or constituting any injury to or dilution of any of plaintiff’s
names, marks, reputation, or goodwill;

United States District Court
Northern District of California

11
12
13

8. Secreting, destroying, altering, removing, or otherwise using its infringing advertising and
promotional materials or any records that may contain information relating to the
developing, producing, selling, marketing, offering for sale, advertising, and/or promoting
of any and all futsal-related services and goods infringing plaintiff’s U.S. FUTSAL and
UNITED STATES FUTSAL marks;

14
15
16

9. Aiding and abetting, contributing to, or otherwise assisting anyone in infringing upon
plaintiff’s U.S. Futsal and United States Futsal marks; and

17

10. Effecting assignments or transfers, forming new entities or association, or using any other
device with the purpose of circumventing or otherwise avoiding the prohibitions set forth
in subparagraphs 1 through 9, above[.]67

18
19
20
21
22
23
24
25

It also requires the defendant to disclose infringing activities to the court within 30 days of the
court’s order and to re-label its goods and services to the extent that they bear the infringing USA
Futsal mark.68
Based on the allegations in the complaint, the plaintiff’s proposed injunction is tailored to the
harm. Price, 390 F.3d at 1117. But as summarized in the Statement, and apparently after the
plaintiff filed the lawsuit, the defendant changed its name to United Futsal Association, changed

26
67

27

Proposed Order – ECF No. 25-1 at 3–5; see Compl. – ECF No. 1 at 17–19 (¶¶ 7–12) (request for
injunction).

28

68

Proposed Order – ECF No. 25-1 at 5.

ORDER – No. 17-cv-04206-LB

24 

1

its corporate name to A2 Sports LLC, stopped using the infringing marks, and took down the

2

offending social-media sites. A defendant’s cessation of infringing activities can moot a claim for

3

injunctive relief.69 Polo Fashions, Inc. v. Dick Bruhn, Inc., 793 F.2d 1132, 1135–36 (9th Cir.

4

1986). But normally, the defendant establishes that the infringing activity ceased, and “the reform

5

of the defendant must be irrefutable and total.” Id. at 1135 (quoting 2 J. McCarthy, Trademarks

6

and Unfair Competition § 30:6, at 471 (2d ed. 1984)). Here, we have a defaulting defendant. That

7

said, arguably, there is no longer a substantial possibility that the defendant will engage in

8

continued infringing activity. But because the defendant’s continued non-use of the infringing

9

name is not assured, arguably, injunctive relief is warranted. See E. & J. Gallo Winery v.

10

Consorzio del Gallo Nero, 782 F. Supp. 457, 468 (N.D. Cal. 1991).
The court reserves the issue until it receives the plaintiff’s June 21 update about the status of

United States District Court
Northern District of California

11
12

its outreach to the defendant (as discussed in the Introduction and Statement, supra).

13

3.2 Costs

14

The plaintiff is entitled to its costs. 15 U.S.C. § 1117(a); Fed. R. Civ. P. 54(d)(1); Coach, Inc.

15

v. Diana Fashion, No. 11-2315 SC, 2011 WL 6182332, at *5 (N.D. Cal. Dec. 13, 2011). Entry of

16

default judgment constitutes success on the merits for the prevailing party.

17
18

CONCLUSION

19

The court issues this order to facilitate the parties’ possible resolution of the case and directs

20

an update by June 21, 2018. Thereafter, if the parties have not worked out the dispute, the court

21

will direct the Clerk of Court to reassign the case to a district judge and will recommend that the

22
23
24
25
26
27
28

69

Robert Stigwood Grp., Ltd. v. Hurwitz, 462 F.2d 910, 913(2nd Cir. 1972) (must be a “cognizable
danger of recurrent violation, something more than the mere possibility”); Schutt Mfg. Co. v. Riddell,
Inc., 673 F.2d 202, 207 (7th Cir. 1992) (trial court has discretion to deny an injunction when the
conduct has ceased and is not likely to recur); W. Wind Energy Corp. v. Savitr Capital, LLC, No. C 124806 PJH, 2013 WL 3286190, at *2 (N.D. Cal. June 27, 2013) (request for injunctive relief moot in
light of the corrective actions taken by defendant); Employers Ins. of Wausau v. Am. Int’l Specialty
Lines Ins. Co., No. C-02-04976 RMW, 2005 WL 1220945, at *4 (N.D. Cal. May 23, 2005) (plaintiff’s
trademark claim “essentially mooted” because defendant redesigned its packages and labeling); Nova
Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965, 975 (N.D. Cal. 2006) (plaintiff either lacks
standing or trademark claim is moot based on defendants’ statement that it does not and will not use
the mark).

ORDER – No. 17-cv-04206-LB

25 

1

newly assigned judge grant the plaintiff’s motion for default judgment, enter judgment in the

2

amount of the plaintiff’s costs, and potentially permanently enjoin the defendant from infringing

3

on the plaintiff’s marks.

4

The court directs the plaintiff to serve this order on the defendant.

5

IT IS SO ORDERED.

6

Dated: May 21, 2018

7

______________________________________
LAUREL BEELER
United States Magistrate Judge

8
9
10

United States District Court
Northern District of California

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
ORDER – No. 17-cv-04206-LB

26