Bridgestone Brands, LLC et al v. Dastgah
Filing
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ORDER GRANTING 11 PLAINTIFFS' MOTION FOR A TEMPORARY RESTRAINING ORDER AND SETTING HEARING ON PLAINTIFFS' MOTION FOR PRELIMINARY INJUNCTION. Signed by Judge Beth Labson Freeman on 3/18/2016. (blflc3S, COURT STAFF) (Filed on 3/18/2016)
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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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SAN JOSE DIVISION
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BRIDGESTONE BRANDS, LLC, et al.,
Case No. 16-cv-00906-BLF
Plaintiffs,
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v.
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HASSAN DASTGAH,
Defendant.
[Re: ECF 11]
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United States District Court
Northern District of California
ORDER GRANTING PLAINTIFFS’
MOTION FOR A TEMPORARY
RESTRAINING ORDER AND SETTING
HEARING ON PLAINTIFFS’ MOTION
FOR PRELIMINARY INJUNCTION
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On February 29, 2016, Plaintiffs Bridgestone Brands, LLC and Bridgestone Americas Tire
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Operations, LLC (“Firestone”) filed an application for a temporary restraining order (“TRO”) and
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preliminary injunction, seeking to enjoin Defendant Hassan Dastgah from representing that he is a
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Bridgestone or Firestone dealer, or that he, his business, or his activities are associated or
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connected in any way with Firestone, and to cover, remove, and destroy signage, business cards,
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uniforms, and other similar items bearing the FIRESTONE, FIRESTONE COMPLETE AUTO
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CARE, and BRIDGESTONE trademarks and names. Firestone personally served Mr. Dastgah
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with the Complaint and motion for a temporary restraining order. Plaintiff filed no opposition.
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On March 17, 2016, the Court held a hearing on the motion for a temporary restraining
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order and Plaintiff appeared pro se. For the reasons stated on the record and contained herein, the
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motion for a TRO is GRANTED as set forth below and a hearing on the motion for a preliminary
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injunction is HEREBY SET for March 31, 2016 at 9:00 a.m.
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I.
BACKGROUND
Firestone and its related and affiliated companies comprise the world’s largest tire and
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rubber company. Pacsi Decl. ¶ 2 to Mot., ECF 11-2. Firestone develops, manufactures and sells
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FIRESTONE and BRIDGESTONE-branded tires. Id. at ¶ 7. It also offers a full assortment of
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tires and automobile maintenance and repair services under the FIRESTONE mark. Id. at ¶ 11.
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Firestone owns the following U.S. trademark registrations for its FIRESTONE marks:
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United States District Court
Northern District of California
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Id. at ¶ 8.
Additionally, the BRIDGESTONE mark, which Firestone uses under license from
Bridgestone Corporation, is covered by the following U.S. trademark registrations:
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Id. at ¶ 9.
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According to Firestone, it spends significant resources advertising, marketing, and
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promoting the FIRESTONE and BRIDGESTONE marks. Mot. 4-6 (citing Pacsi Decl. ¶¶ 15-21).
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Mr. Dastgah owns and operates a tire and automotive services business at 1311 Camden
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Avenue in Campbell, California. Farquhar Decl. to Mot. ¶ 4, ECF 11-3. He applied to be an
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authorized FIRESTONE dealer but was turned twice. Id. at ¶ 2. Despite this, there are
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FIRESTONE and BRIDGESTONE logos displayed in several places around his business
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including on a white business van parked in his storefront driveway and on flags lining the front of
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his store. Id. at ¶¶ 5-6. There is also a sign in the front window of his store that states it is
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Bridgestone approved. Id. at ¶ 7. He has verbally told customers that his shop is a Firestone store,
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and identified his store as “Campbell Firestone.” Id. at ¶ 4; see also Exh. A to Farquhar Decl.,
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ECF 11-4. His social media accounts also use the Firestone marks. Exhs. A and B to Schroeder
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Decl., ECF 11-8, 11-9. Further, he uses FIRESTONE business cards and Bridgestone jackets and
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overalls. Schroeder Decl. ¶¶ 8-10, ECF 11-7. The following is a photograph of Mr. Dastgah’s
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business card, which displays Firestone’s FIRESTONE COMPLETE AUTO CARE MARK:
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United States District Court
Northern District of California
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Farquhar Decl. to Mot. ¶ 4, ECF 11-3.
Mr. Dastgah’s store is also located 1.13 miles from a genuine FIRESTONE store at 2120
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Winchester Blvd. in Campbell, California. Pacsi Decl. ¶ 14, ECF 11-2. Customers have
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complained to Firestone about Dastgah’s service and business practices. Farquhar Decl. at ¶¶ 3-6,
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ECF 11-3. For example, one customer complained to Firestone that Mr. Dastgah’s shop refused to
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honor a Firestone coupon, had inconsistent prices, long wait times, and refused to give a written
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estimate. Id. ¶ 4.
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Firestone has written to Mr. Dastgah and asked that he stop using their trademarks. Id. ¶ 7.
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When he did not comply with Firestone’s request, Firestone filed this action on February 23, 2016.
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ECF 1. Firestone moved for a TRO on February 29, 2016, ECF11, and the Court set a briefing
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schedule and a hearing on the TRO for March 17, 2016. Mr. Dastgah did not file any opposition
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to Plaintiff’s motion but did attend the hearing.
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II.
LEGAL STANDARD
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The substantive standard for issuing a temporary restraining order is identical to the
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standard for issuing a preliminary injunction. See Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush
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& Co., 240 F.3d 832, 839 n.7 (9th Cir. 2001); Lockheed Missile & Space Co. v. Hughes Aircraft,
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887 F. Supp. 1320, 1323 (N.D. Cal. 1995). An injunction is a matter of equitable discretion and is
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“an extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is
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entitled to such relief.” Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 22 (2008).
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A plaintiff seeking preliminary injunctive relief must establish “[1] that he is likely to succeed on
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the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3]
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that the balance of equities tips in his favor, and [4] that an injunction is in the public interest.” Id.
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at 20. Alternatively, an injunction could issue where “the likelihood of success is such that serious
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questions going to the merits were raised and the balance of hardships tips sharply in plaintiff’s
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favor,” provided that the plaintiff can also demonstrate the other two Winter factors. Alliance for
the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131-32 (9th Cir. 2011) (citation and internal
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United States District Court
Northern District of California
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quotation marks omitted). Under either standard, the plaintiff bears the burden of making a clear
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showing on these elements and on entitlement to this extraordinary remedy. Earth Island Inst. v.
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Carlton, 626 F.3d 462, 469 (9th Cir. 2010).
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III.
DISCUSSION
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Before discussing the Winter factors, the Court notes that at the TRO hearing, Mr. Dastgah
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indicated he was attempting to comply with Plaintiffs’ request. According to Mr. Dastgah, he had
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removed many of the signs and logos at issue. Plaintiffs also confirmed that Mr. Dastgah had in
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general been cooperative. However, as of the date of the hearing, Mr. Dastgah acknowledged not
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all of Firestone’s signs and logos had been removed.
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A.
Likelihood of Success
i.
Counterfeiting Claim
The Court finds that Firestone is likely to succeed on its counterfeiting claim. The Lanham
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Act prohibits the use of “counterfeit” marks in connection with “the sale, offering for sale, or
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distribution of goods.” 15 U.S.C. § 1116(d)(1)(A). The state defines a counterfeit mark as a mark
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identical with or substantially indistinguishable from a registered mark. 15 U.S.C. § 1127.
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Here, Mr. Dastgah appears to have copied Firestone’s exact registered marks and used
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them for automotive repair and maintenance services, the same exact services covered by
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Firestone’s registrations. Mr. Dastgah did not deny this claim at the hearing. As a result,
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Firestone has shown it is likely to succeed on its counterfeiting claim. See, e.g., Ford Motor Co. v.
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Heritage Mgmt. Grp., Inc., 911 F. Supp. 2d 616, 628-29 (E.D. Tenn. 2012) (holding that an
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unauthorized use of FORD mark in packaging and sale of allegedly genuine Ford parts constituted
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counterfeiting).
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ii.
Trademark Infringement and Unfair Competition Claim
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The Court also finds that Firestone is likely to succeed on its trademark infringement and
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unfair competition claim. To establish trademark infringement, the trademark owner must show
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(1) ownership of a valid, protectable trademark and (2) a likelihood of confusion caused by the use
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of the mark. Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1046 (9th Cir.
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United States District Court
Northern District of California
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1999).
As to the first prong of trademark infringement, Firestone’s federal trademark registrations
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for the marks at issue are “conclusive evidence of the validity,” ownership, and “exclusive rights
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to use the registered mark[s] in commerce.” 15 U.S.C. § 1115(b). Moreover, as a licensee of the
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BRIDGESTONE mark, Firestone can assert rights in that mark. STX, Inc. v. Bauer USA, Inc.,
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Case No. 96-CV-1140-FMS, 1997 WL 337578, at *3 (N.D. Cal. June 5, 1997).
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As to the second prong of trademark infringement, the Ninth Circuit considers the
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following eight factors, known as the Sleekcraft factors, to assess whether likelihood of confusions
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exists: (1) the strength of the plaintiff’s mark; (2) the proximity of the parties’ goods; (3) the
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similarity of the parties’ marks; (4) evidence of actual confusion; (5) the marketing channels used;
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(6) the type of goods or services and the degree of care likely to be exercised by purchases; (7)
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defendant’s intent in selecting the mark; (8) likelihood of expansion of the parties’ product line.
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AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).
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The Court’s review of the Sleekcraft factors indicates that there is a likelihood of confusion
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caused by Mr. Dastgah’s use of the marks. Firestone has spent significant resources establishing
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the strength of their marks. The parties’ marks are identical – Mr. Dastgah is using Firestone’s
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marks without alteration or change. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1144
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(9th Cir. 2002). The parties’ services and trade channels are identical. Id. (“[T]he more closely
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related the goods are, the more likely consumers will be confused by similar marks.”). Mr.
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Dastgah’s automotive maintenance and repair services are not the types of product purchased with
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a high degree of care or deliberation. See, e.g. Lee Myles Auto Grp., LLC v. Fiorillo, Case No. 10-
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cv-6267-PKC, 2010 WL 3466687, at *6 (S.D.N.Y. Aug. 25, 2010) (“[G]iven the ubiquity of cars
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and trucks in our society, it is likely that the sophistication of [consumers of transmission repair
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services] will vary widely, and include unsophisticated individuals.”). It appears Mr. Dastgah is
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using Firestone’s mark in order to capitalize on their widespread consumer recognition. Sleekcraft,
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599 F.2d at 354 (“When the alleged infringer knowingly adopts a mark similar to another’s …
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courts presume that the defendant can accomplish his purpose: that is, that the public will be
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deceived.”). There is also evidence of actual confusion on the parts of consumers. Farquhar Decl.
at ¶ 4, ECF 11-3 (customer complaint to Firestone that Mr. Dastgah’s shop refused to honor a
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United States District Court
Northern District of California
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Firestone coupon, had inconsistent prices, long wait times, and refused to give a written estimate).
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As a result, the Sleekcraft factors weigh in favor of finding a likelihood of confusion.
Accordingly, Firestone has shown a likelihood of success on its trademark infringement
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and unfair competition law claims.
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iii.
Trademark Dilution Claim
The Court also has little trouble concluding that Firestone has shown a likelihood of
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success on if its trademark dilution claim. To prevail on its dilution claim, Firestone must show
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that (1) the FIRESTONE1 mark is “famous and distinctive,” (2) Mr. Dastgah “began using its
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mark in commerce after plaintiff’s mark became famous and distinctive,” and (3) Mr. Dastgah’s
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mark is “likely to dilute” Firestone’s mark. Visa Int’l Serv. Ass’n v. JSL Corp., 610 F.3d 1088,
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1089-90 (9th Cir. 2010). Firestone’s mark appears to be famous and distinctive, and Mr. Dustgah
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started using the mark after it became famous and was supported by significant resources. See,
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e.g., Crossfit, Inc. v. Maximum Human Performance, LLC, Case No. 12-cv-2348-BTM-MDD,
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2013 WL 1627953, at *3 (S.D. Cal. Apr. 12, 2013) (“For the purposes of the preliminary
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injunction, CrossFit has offered sufficient evidence to indicate that it owns a famous mark,
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Firestone cannot assert dilution for the BRIDGESTONE mark because Firestone is a licensee
and does not own it. MCCARTHY at § 29:99 (“[s]tanding to sue for a claim of dilution under
Lanham Act § 43(c) is limited to ‘the owner of a famous mark.’”).
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including that it currently licenses over 4,600 affiliate gyms and hosts an annual international
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workout competition televised nationally by ESPN.”). As to the third factor, Mr. Dastgah’s use of
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an identical mark to offer automobile maintenance and repair services of varying quality is likely
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to dilute Firestone’s mark. See, e.g., New York Stock Exchange, Inc. v. New York, New York Hotel
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LLC, 293 F.3d 550, 558 (2d Cir. 2002).
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B.
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Turning to the second Winter factor, likelihood of irreparable harm absent a TRO, damage
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to a trademark owner’s good will and business reputation constitute irreparable injury. SunEarth,
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Inc. v. Sun Earth Solar Power Co., 846 F. Supp. 2d 1063, 1083 (N.D. Cal. 2012) (finding
Irreparable Harm, Balance of Hardships, and Public Interest
irreparable harm where defendant “poses a serious threat to [plaintiff’s] goodwill and
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United States District Court
Northern District of California
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reputation.”).
With respect to the third and fourth Winter factors, the equities tip in favor of Firestone,
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which is attempting to protect its mark but not prevent Mr. Dastgah from operating his business.
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Moreover, at the TRO hearing, Mr. Dastgah noted he had begun to comply with Firestone’s
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demand, which also indicates the balance of hardships weighs in Firestone’s favor. Finally, in
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trademark cases, granting a TRO is in the public interest because it protects “the right of the public
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not to be deceived or confused.” Vertos Med., Inc. v. Globus Med., Inc., No. C 09-1411 PJH,
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2009 WL 3740709, at *12 (N.D. Cal. Nov. 6, 2009) (“In the trademark context, courts often
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define the public interest as the right of the public not to be deceived or confused.”).
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C.
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Federal Rule of Civil Procedure 65(c) provides that a TRO will only issue “if the movant
Bond
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gives security in an amount that the court considers proper to pay the costs and damages sustained
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by any party found to have been wrongfully enjoined or restrained.” Fed. R. Civ. P. 65(c). The
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amount of the bond is within the discretion of this Court. GoTo.com, Inc. v. Walt Disney Co., 202
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F.3d 1199, 1211 (9th Cir. 2000). Under the facts of this case, the Court finds a minimal bond of
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$500 is appropriate.
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IV.
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ORDER
For the foregoing reasons, IT IS HEREBY ORDERED that Firestone’s motion for a
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temporary restraining order is GRANTED. Therefore, the Court hereby ORDERS as follows:
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1. Plaintiffs shall post with the clerk of the court a bond or other security in the amount of
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five hundred (500) dollars on or before Tuesday, March 22, 2016 at 4:00 p.m.
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2. Mr. Dastgah, his employees, agents, representatives, companies, and all persons and
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entities in active concert or participation with any of them are hereby temporarily
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restrained, effective immediately, from representing by any means whatsoever, directly or
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indirectly, that Mr. Dastgah is a Bridgestone or Firestone dealer or that Mr. Dastgah, his
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business, or his activities are associated or connected in any way with Firestone or
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sponsored, licensed, or authorized by Firestone.
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3. Mr. Dastgah must immediately cover, remove, and destroy, at his sole cost, signage,
United States District Court
Northern District of California
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business cards, uniforms, and other similar items bearing the FIRESTONE, FIRESTONE
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COMPLETE AUTO CARE, and BRIDGESTONE trademarks and names.
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4. Mr. Dastgah shall show cause at a hearing on March 31, 2016 at 9:00 a.m., in Courtroom
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3, 5th Floor, 280 South First Street, San Jose, California, 95113, concerning why Mr.
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Dastgah, his employees, agents, representatives, companies, and all persons and entities in
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active concert or participation with any of them, should not be restrained and enjoined
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pending trial of this action as described above.
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5. Plaintiffs, or their authorized agents, are directed to serve a copy of this Order and papers
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upon which this Order is based upon Mr. Dastgah by 5:00 p.m. on March 21, 2016, which
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shall constitute sufficient service of process thereof;
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6. Mr. Dastgah shall have until 5:00 p.m. on March 28, 2016 to file with the Court and serve
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on Plaintiffs’ counsel, Robert F. McCauley, Finnegan Henderson Farabow Garrett &
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Dunner LLP, 3300 Hillview Avenue, Palo Alto, CA 94304, any points and authorities,
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affidavits or declarations, or other evidence in opposition to the Order to Show Cause
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Regarding Preliminary Injunction.
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7. This Order shall expire on its own terms at 5 p.m. on March 31, 2016, unless further
extended by Order of this Court.
8. For good cause shown and upon written application to the Court, this Order may be
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extended for a longer period determined by the Court.
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9. Mr. Dastgah is currently proceeding pro se. He may wish to contact the Federal Pro Se
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Program, a free program that offers limited legal services and advice to parties who are
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representing themselves. The Federal Pro Se Program has offices in two locations, listed
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below. Help is provided by appointment and on a drop-in basis. Parties may make
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appointments by calling the program’s staff attorney, Mr. Kevin Knestrick, at 408-297-
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1480. Additional information regarding the Federal Pro Se Program is available at
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http://cand.uscourts.gov/helpcentersj.
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United States District Court
Northern District of California
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Federal Pro Se Program
United States Courthouse
280 South 1st Street
2nd Floor, Room 2070
San Jose, CA 95113
Monday to Thursday 1:00 pm – 4:00 pm
Fridays by appointment only
Federal Pro Se Program
The Law Foundation of Silicon Valley
152 North 3rd Street
3rd Floor
San Jose, CA 95112
Monday to Thursday 9:00 am – 12:00 pm
Fridays by appointment only
IT IS SO ORDERED.
Dated: March 18, 2016
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BETH LABSON FREEMAN
United States District Judge
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