Profil Institut fur Stoffwechselforschung GmbH v. Prosciento, Inc.

Filing 35

ORDER denying #29 Motion for Preliminary Injunction, denying as moot #30 Motion to Shorten Time. This order does not prevent ProSciento from seeking a preliminary injunction in the future, in the event it files a complaint or counterclaim. Signed by Judge Larry Alan Burns on 2/27/17. (kas)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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PROFIL INSTITUT FUR
STOFFWECHSELFORSCHUNG GMBH,

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Plaintiff,
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CASE NO. 16cv1549-LAB (BLM)
ORDER DENYING MOTION FOR
PRELIMINARY INJUNCTION; AND

vs.
ORDER DENYING AS MOOT EX
PARTE MOTION TO SHORTEN TIME

PROSCIENTO, INC.,
Defendant.

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On February 21, Defendant ProSciento, Inc. (then known as Profil Institute for Clinical

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Research, Inc.) filed a motion for preliminary injunction along with a motion to shorten time.

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ProSciento asks the Court to enjoin Plaintiff's use of the American trademark "Profil" in

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connection with upcoming trade shows.

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A preliminary injunction is an “extraordinary and drastic remedy” that is not granted

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unless the movant carries the burden of persuasion by a clear showing. Mazurek v.

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Armstrong, 520 U.S. 968, 972 (1997). The purpose of a preliminary injunction is to preserve

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the status quo or prevent irreparable injury pending the resolution of the underlying claim.

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Sierra On-line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415, 1422 (9th Cir. 1984). A plaintiff

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seeking a preliminary injunction must establish (1) it is likely to succeed on the merits; (2)it

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is likely to suffer irreparable harm in the absence of preliminary relief, (3) the balance of

16cv1549

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equities tips in its favor and (4) an injunction is in the public interest. Winter v. Natural Res.

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Def. Council, Inc., 555 U.S. 7, 20, (2008). Under the Ninth Circuit’s alternate test, a plaintiff

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must, among other things, show at least “serious questions” going to the merits. See Lopez

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v. Brewer, 680 F.3d 1068, 1072 (9th Cir. 2012).

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ProSciento is solely a Defendant both in this case, and in the related case, 16cv2762,

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Profil Institut v. ProSciento; it has not filed a complaint, claim, counterclaim, or the like in

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either case. While Profil is bringing claims pertaining to the American “Profil” mark, Profil’s

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failure to prove its claims would not entitle ProSciento to any relief. Thus, even if ProSciento

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prevailed on all claims in both cases, it would not be entitled to any relief.

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Federal courts can issue preliminary injunctions only to the extent they pertain to

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pending underlying claims — in other words, where the preliminary injunction would

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temporarily grant the same kind of relief as the underlying claims, if successful, would

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ultimately merit. See Pac. Radiation Oncology, LLC v. Queen's Med. Ctr., 810 F.3d 631,

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636 (9th Cir. 2015) (citing De Beers Consol. Mines v. United States, 325 U.S. 212, 220

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(1945)) (“A preliminary injunction is appropriate when it grants relief of the same nature as

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that to be finally granted.”) Where, as here, the party is bringing no claims, there is no basis

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for issuance of a preliminary injunction. And in fact, the Court lacks authority to do so. Id.

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(quoting DeBeers, 325 U.S. at 220) (holding that, unless the preliminary injunction would

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grant “relief of the same character as that which may be granted finally,” a district court lacks

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authority to grant the requested relief).

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Because the Court lacks authority to grant the preliminary injunction, ProSciento’s

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motion is summarily DENIED. The motion to shorten time is DENIED AS MOOT. This order

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does not prevent ProSciento from seeking a preliminary injunction in the future, in the event

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it files a complaint or counterclaim.

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IT IS SO ORDERED.

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DATED: February 27, 2017

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HONORABLE LARRY ALAN BURNS
United States District Judge
16cv1549