Citgo Petroleum Corporation v. Mid State Energy, Inc. et al

Filing 6

ORDER granting 2 Plaintiff's Motion for a Temporary Restraining Order consistent with the terms outlined in the Order. The Temporary Restraining Order is effective immediately, and will remain in effect through and including May 7, 2012, at 5: 00 p.m., unless the TRO is extended in accordance with Federal Rule of Civil Procedure 65(b)(2). If Plaintiff wishes the Court to consider entering a preliminary injunction, it needs to file the appropriate motion within two days of the date of this Order. Signed by Judge Virginia M. Hernandez Covington on 4/23/2012. (CAC)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
TAMPA DIVISION
CITGO PETROLEUM CORP.,
Plaintiff,
v.

Case No. 8:12-cv-876-T-33MAP

MID-STATE ENERGY, INC. and
HIGHLANDS OIL CO., INC.,
Defendants.
/
ORDER
This matter comes before the Court pursuant to Plaintiff
CITGO Petroleum Corp.’s Motion for a Temporary Restraining Order
(Doc. # 2), filed on April 23, 2012. For the reasons that
follow, the Court grants the Motion for Temporary Restraining
Order as discussed below.
I.

DISCUSSION
On the basis of CITGO’s Complaint (Doc. # 1), Motion (Doc.

# 2) and the Declaration of Karl Schmidt(Doc. # 2-2), this Court
finds that CITGO has met its initial burden for the issuance of
a Temporary Restraining Order against Defendants pursuant to
Federal Rule of Civil Procedure 65 and Local Rule 4.05, M.D.
Fla., as follows:
1.

The Court finds a reasonable likelihood that CITGO will

succeed

on

the

merits

of

its

claims

against

Defendants,

including its claim that Defendants infringed upon CITGO’s

trademarks by packaging non-CITGO products in containers bearing
CITGO marks; claims that such acts constitute false advertising,
unfair

competition

and

trademark

counterfeiting;

claim

for

breach of contract; and claim for unfair and deceptive trade
practices under state law. Karl Schmidt’s declaration contains
a detailed description of facts surrounding Defendants’ misuse
of CITGO’s trademarks, including a letter from the Independent
Lubricant Manufacturers’ Association (ILMA) stating that samples
of a product randomly purchased from Defendants bearing CITGIO’s
mark failed to meet CITGO’s specifications. (Doc. # 2-2 at ¶
10).

After receiving this information from ILMA, CITGO checked

its records and discovered that Defendants had not purchased any
of the product from CITGO since they purchased 2,500 gallons in
2008, yet had obtained labels bearing CITGO’s logo sufficient to
brand

10,935

gallons

of

product.

(Id.

at

¶¶

15-16).

Subsequently, CITGO hired “secret shoppers” to purchase 10
CITGO-branded products from Defendants, and determined through
testing

that

at

least

five

of

the

10

products

were

not

manufactured by CITGO. (Id. at ¶¶ 17-21).
2.

Accordingly, the Court finds that CITGO demonstrated a

meaningful risk of irreparable harm in the absence of a TRO.
“[T]rademark

infringement

by

its

nature

causes

irreparable

harm.” Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 51 F.3d
2

982, 986 (11th Cir. 1995). The injuries CITGO faces include
consumer confusion and the loss of reputation from the sale of
substandard products under the CITGO brand. “A plaintiff need
not show that the infringer acted in such a way as to damage the
reputation of the plaintiff. It is the loss of control of one’s
reputation by the adoption of a confusingly similar mark that
supplies the substantial threat of irreparable harm.” Ferrellgas
Partners, L.P. v. Barrow, 143 F. App’x 180, 191 (11th Cir.
2005).
3.

The public interest will be served by the issuance of a

TRO. Specifically, a TRO will help ensure that consumers are not
deceived by the improper branding of products. “[T]he public
interest is served by preventing consumer confusion in the
marketplace.” Davidoff & CIE, S.A. v. PLD Int’l Corp., 263 F.3d
1297, 1304 (11th Cir. 2001).
4.

Plaintiff’s counsel, Dennis P. Waggoner, Esq. included with

the Motion a certificate stating that he served the Motion on
Ken

Allen, president of both of the Defendant companies. (Doc.

# 2 at 15).
II.

TRO DURATION
Accordingly, this Court grants Plaintiff’s Motion for

Temporary Restraining Order. The Temporary Restraining Order is
effective immediately and will remain in effect through and
3

including

May

7,

2012,

at

5:00

p.m.

Any

motions

for

an

enlargement of the TRO must demonstrate good cause and must be
filed in accordance with the requirements of Federal Rule of
Civil Procedure 65(b)(2).
III. SECURITY
Federal Rule of Civil Procedure 65 states that a bond must
be posted whenever the court issues a preliminary injunction.
However, “the amount of security required by the rule is a
matter within the discretion of the trial court . . . [, and]
the court may elect to require no security at all.” BellSouth
Telecomms., Inc. v. MCIMetro Access Transmission Svcs., LLC, 425
F.3d 964, 971 (11th Cir. 2005) (international quotation marks
and citations omitted). The Court determines that CITGO need not
post a bond due to its size and financial resources. CITGO is a
Fortune 500 company; there is no reasonable basis for concern
that CITGO could not satisfy any judgment that might ultimately
be entered in this case. See Burger King Corp. v. Duckrey, -- F.
Supp. 2d --, 2011 WL 6937384, at *6 (S.D. Fla. 2011) (waiving
bond requirement given the financial status of Burger King, a
Fortune 1000 company).
IV.

PROHIBITED BUSINESS ACTIVITIES
It is hereby ordered that Defendants, Mid-State Energy,

Inc. and Highlands Oil Co., Inc. (collectively “MSE”) and their
4

officers, agents, servants, employees, attorneys, successors and
assigns and all persons in active concert or participation with
any

of

them,

individually

or

collectively,

be

temporarily

restrained from:
1.

Selling or offering for sale any lubricant products in 5gallon buckets or 55-gallon drums bearing a label with any
CITGO trademark or the CITGO name;

2.

Using CITGO’s marks, or any other name or mark likely to
cause confusion with CITGO’s marks, in connection with the
sale of any lubricant products sold in 5-gallon buckets or
55-gallon drums;

3.

Doing any other act or thing likely to confuse, mislead or
deceive others into believing that MSE’s non-CITGO products
emanate

from,

or

are

connected

with,

sponsored

by

or

counterfeit

or

approved by CITGO;
4.

Destroying

any

infringing
wrappers,

false

goods,

advertisements

labels,

receptacles,

signs,

advertisements

or

prints,
or

packages,

other

printed

materials bearing the CITGO marks or any reproduction,
counterfeit, copy or colorable imitation of them; and
5.

Assisting, aiding or abetting any person or entity in
engaging in any of the activities prohibited in paragraphs
1 through 4.
5

V.

ADDITIONAL REQUIREMENTS
It is further ordered that

1.

MSE shall be required to quarantine all counterfeit and
infringing products, and goods, labels, signs, prints,
packages, wrappers, receptacles, advertisements or other
materials in MSE’s possession bearing the CITGO mark or any
reproduction, counterfeit, copy or colorable imitation of
them.

2.

MSE shall be required to quarantine any labels bearing
CITGO’s marks that it has obtained from CITGO or a thirdparty vendor.

3.

MSE

shall

be

required

to

quarantine

any

lubricants

repackaged in 5-gallon buckets or 55-gallon drums that
currently bear CITGO’s marks.
4.

MSE shall be required to file with this Court and serve on
CITGO a report in writing under oath setting forth in
detail the manner and form in which they have complied with
the terms of any injunction entered by this Court, in
accordance with 15 U.S.C. § 1116(a).

VI.

PRELIMINARY INJUNCTION
Although CITGO prayed for a preliminary injunction in its

Complaint (Doc. # 1), it has not filed a Motion for Preliminary
Injunction. If CITGO wishes the Court to consider entering a
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preliminary injunction, it needs to file the appropriate motion
within two days of the date of this Order. That motion will be
referred to the Honorable Mark A. Pizzo to schedule a hearing
and for issuance of a Report and Recommendation. The present TRO
is issued to protect CITGO from irreparable injury prior to the
preliminary injunction hearing.
VII. SERVICE OF THIS ORDER BY CITGO
It is further ordered that copies of this Order may be
served

by

facsimile

transmission,

personal

or

overnight

delivery, or U.S. Mail, by agents and employees of CITGO, on (1)
any Defendant in this action; and (2) any other person or entity
that may be subject to any provision of this Order. Service upon
any branch or office of any entity shall effect service upon the
entire entity.
In addition, to the extent it has not already done so,
CITGO shall attempt to accomplish service of this temporary
restraining order and other relevant documents in accordance
with Local Rule 4.05(b)(5).
Accordingly, it is hereby
ORDERED, ADJUDGED, and DECREED:
(1)

Plaintiff’s Motion for a Temporary Restraining Order (Doc.
# 2) is GRANTED consistent with the terms outlined above.

7

(2)

The Temporary Restraining Order is effective immediately,
and will remain in effect through and including May 7,
2012,

at

5:00

p.m.,

unless

the

TRO

is

extended

in

accordance with Federal Rule of Civil Procedure 65(b)(2).
(3)

If

Plaintiff

wishes

the

Court

to

consider

entering

a

preliminary injunction, it needs to file the appropriate
motion within two days of the date of this Order.
DONE and ORDERED in Chambers, in Tampa, Florida, this 23rd
day of April, 2012, at 4:45 p.m.

Copies to:

All Parties of Record

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