Rocky Mountain Honey Smoked Fish Company, LLC v. Einstein Noah Restaurant Group, Inc.

Filing 13

OPINION AND ORDER DENYING MOTION FOR TEMPORARY RESTRAINING ORDER AND SETTING HEARING: The Plaintiffs Motion for Temporary Restraining Order 2 is DENIED. The Court directs that the Defendants file a response to the Motion for Preliminary Injunction by noon on Monday, March 24, 2014, and that the parties appear for a non-evidentiary hearing on Wednesday, March 26, 2014 at 9:00 a.m. to address the need for an evidentiary preliminary injunction hearing and, if appropriate, to schedule such a hearing. By Chief Judge Marcia S. Krieger on 3/19/14.(msklc2, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Chief Judge Marcia S. Krieger
Civil Action No. 14-cv-00803-MSK
ROCKY MOUNTAIN HONEY SMOKED FISH COMPANY, LLC,
Plaintiff,
v.
EINSTEIN NOAH RESTAURANT GROUP, INC.,
Defendant.
______________________________________________________________________________
OPINION AND ORDER DENYING MOTION FOR TEMPORARY RESTRAINING
ORDER AND SETTING HEARING
______________________________________________________________________________
THIS MATTER comes before the Court pursuant to the Plaintiff’s Motion for
Temporary Restraining Order and Preliminary Injunction (# 2).
The Plaintiff commenced this action on March 18, 2014. Its Complaint (# 1) alleges that
it holds a trademark1 in the term “Honey Smoked Salmon” to describe a smoked fish product. It
contends that in September 2013, the Defendant approached it about the possibility of purchasing
and distributing the Plaintiff’s products in the Defendant’s stores, but the negotiations eventually
terminated without any agreement. Nevertheless, in March 2014, the Defendant began
prominently advertising a product using the term “Honey Smoked Salmon,” with that product
allegedly containing an inferior smoked fish product from another manufacturer. The Plaintiff
alleges claims for federal statutory trademark infringement, federal statutory unfair competition,
1

The Complaint refers to its “trademark” and uses the ™ symbol to accompany its
references to “Honey Smoked Fish,” but the Complaint does not clearly allege whether the
Plaintiff has formally registered the mark with the U.S. Patent and Trademark Office (and if so,
when and on what register), or otherwise elaborate on the basis for its claimed ownership of the
mark.

statutory deceptive trade practices under Colorado law, common-law unjust enrichment under
Colorado law, and common-law misappropriation of business value under Colorado law.
The Plaintiff moves (# 2) for a Temporary Restraining Order pursuant to Fed. R. Civ. P.
65(b) and a preliminary injunction pursuant to Rule 65(a), each prohibiting the Defendant from
using the “Honey Smoked Salmon” mark in any way.
Whether the Court considers the motion as one for an ex parte Temporary Restraining
Order under Rule 65(b) or one for a preliminary injunction under Rule 65(a), the required factual
showing is the same. To be entitled to provisional injunctive relief, a party must show: (i) that it
will suffer an irreparable injury unless the injunction issues; (ii) the threatened injury outweighs
whatever damages the injunction might cause to the non-movant; (iii) that the requested relief is
not adverse to the public interest; and (iv) that the movant has a substantial likelihood of
succeeding on the merits of its case. Schrier v. University of Colo., 427 F.3d 1253, 1259 (10th
Cir. 2005). In addition, a party requesting an ex parte Temporary Restraining Order must also
satisfy the requirements of Rule 65(b)(1)(A), a showing “in an affidavit or a verified complaint”
of facts “clearly show[ing] that immediate and irreparable injury . . . will result ot the movant
before the adverse party can be heard in opposition,” and Rule 65(b)(1)(B), a certification by the
movant’s attorney of the efforts made to give the opposing party notice of the motion and the
reasons why such notice should not be required.
Turning first to the request for a Temporary Restraining Order, the Court finds that the
Plaintiff has arguably complied with Rule 65(b)(1)(A): the Complaint is verified by Kevin
Mason, the Plaintiff’s owner and makes an assertion that the Defendant’s use of the mark is
causing the Plaintiff to suffer an ongoing loss of customer goodwill. However, nothing in the
record indicates that the Plaintiff has complied with Rule 65(b)(1)(B): there is no certification by

the Plaintiff’s attorney of the attempts to give the Defendant notice of this action, nor any
reasons why such notice should not be required. For this reason alone, the Court denies the
request for a Temporary Restraining Order.
Moreover, the Court is not convinced that, based solely on the allegations in the
Complaint, the Plaintiff has necessarily shown a likelihood of success on the merits sufficient to
warrant ex parte relief. The mark “Honey Smoked Salmon” is, arguably, merely descriptive of
characteristics of the product. As such, it may not be inherently entitled to trademark protection,
but may receive protection if it has acquired a secondary meaning. Two Pesos, Inc. v. Taco
Cabana, Inc. 505 U.S. 763, 768-69 (1992).2 A mark acquires secondary meaning when, “in the
minds of the public, the primary significance of [the] term is to identify the source of the product
rather than the product itself.” Id. at 766 n. 4. Secondary meaning may be established through
direct evidence, such as customer surveys and testimony from consumers, or circumstantially,
through a showing of the length and manner of the mark’s use, the nature and extent of
advertising and promotion, and the efforts made in the direction of promoting a conscious
connection in the public’s mind between the mark and the particular product. Water Pik, Inc. v.
Med-Systems, Inc., 726 F.3d 1136, 1154 (10th Cir. 2013). The Plaintiff’s Complaint contains
some allegations that the Plaintiff has advertised the product using the mark for many years and
through various outlets, but makes only relatively conclusory assertions that “the purchasing
public in particular have come to know and recognize Honey Smoked Salmon as the high quality
brand that originates with and belongs to [the Plaintiff].” The Court cannot say that, on this
2

Moreover, a descriptive mark is susceptible to a fair use defense if the alleged infringer is
not using it as a mark, instead using it in good faith for its descriptive purpose. 15 U.S.C. §
1115(b)(4). The materials attached to the Plaintiff’s Complaint, demonstrating the Defendant’s
use of the phrase, do not appear to suggest that the Defendant is making anything other than a
descriptive, non-mark use of the phrase. The Court recognizes, however, that the Plaintiff may
dispute whether the Defendant’s use of the phrase is in good faith.

allegation alone, the Plaintiff has made a showing of secondary meaning sufficient to warrant the
extraordinary remedy of a Temporary Restraining Order.
Accordingly, the Plaintiff’s Motion for Temporary Restraining Order (# 2) is DENIED.
The Court turns to the Plaintiff’s request for a Preliminary Injunction. Resolution of that motion
will require a response from the Defendant and, likely, an evidentiary hearing. Accordingly, the
Court directs that the Defendants file a response to the Motion for Preliminary Injunction by
noon on Monday, March 24, 2014, and that the parties appear for a non-evidentiary hearing on
Wednesday, March 26, 2014 at 9:00 a.m. to address the need for an evidentiary preliminary
injunction hearing and, if appropriate, to schedule such a hearing.
Dated this 19th day of March, 2014.
BY THE COURT:

Marcia S. Krieger
Chief United States District Judge