Smith Roofing and Siding, L.L.C. v. Smith et al
Filing
12
MEMORANDUM DECISION AND ORDER - Plaintiffs Motion for Default Judgment (Dkt. 11 ) is GRANTED. The Court will enter judgment on Plaintiffs claims for trademark infringement under Section 43(a) of the Lanham Act, common law trademark infringement, com mon law unfair competition, and unfair competition under Idaho Code § 48-603. The Court awards Plaintiff the following relief: Defendants are permanently enjoined from the activities enumerated inthe Courts Default Judgment; Attorneys fees in the amount of $7,764.50; Costs is the amount of $622.00. The Court will enter a separate judgment pursuant to Federal Rule of Civil Procedure 58(a). Signed by Judge David C. Nye. (caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by (lm)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
SMITH ROOFING AND SIDING,
L.L.C., an Idaho limited liability
company,
Case No. 4:23-cv-00310-DCN
MEMORANDUM DECISION AND
ORDER
Plaintiff,
v.
GLEN SMITH, an individual, and
SMITH ROOFING LLC, an Idaho
limited liability company,
Defendants.
I. INTRODUCTION
Before the Court is Plaintiff Smith Roofing and Siding, L.L.C.’s (“Plaintiff”)
Motion for Default Judgment.1 Dkt. 11. For the reasons set forth below, the Motion for
Default Judgment is GRANTED.
II. BACKGROUND
A. Factual Background2
Plaintiff is the latest iteration of a family roofing business in operation for over 52years using the name “Smith Roofing.” Plaintiff provides residential, commercial, and new
1
The Court finds oral argument is unnecessary both because Plaintiff has adequately presented the facts
and legal argument supporting its Motion for Default Judgment, and because Defendants have failed to
formally appear or participate in this matter. Dist. Idaho Loc. Civ. R. 7.1(d)(1)(B).
2
The following facts are from Plaintiff’s Complaint. Dkt. 1. When examining the merits of a default
judgment, the Court takes the well-pleaded allegations in the Complaint as true. Fair Hous. of Marin v.
Combs, 285 F.3d 899, 906 (9th Cir. 2002) (citation omitted).
MEMORANDUM DECISION AND ORDER - 1
construction services in Southeast Idaho and Western Wyoming. Plaintiff has become
widely known in the roofing trade, and specifically in the Southeast Idaho and Western
Wyoming communities, with an excellent reputation for quality of workmanship and
customer service. From the early 1970s through the present, Plaintiff and its predecessor
have always operated using the tradenames “Smith Roofing” and “Smith Roofing
Company.” Originally operated as a sole proprietorship under the name “Smith Roofing,”
Plaintiff registered the assumed business name “Smith Roofing Company” in 1997, and
then organized into a limited liability company in 2021. Further, since at least 2015, but
potentially as early as 2008, Plaintiff has utilized a trademark consisting of a stylized
roofline drawing behind the words “Smith Roofing.”
On or about December 22, 2021—after Plaintiff had been in business for more than
50-years—Defendants Glen Smith and Smith Roofing, LLC (collectively, “Defendants”)
began doing business as “Smith Roofing,” and organized Smith Roofing, LLC, as a limited
liability company with the Idaho Secretary of State.3 In addition to using the same trade
name as Plaintiff, Defendants adopted a confusingly similar mark consisting of a stylized
roofline drawing behind the words, “Smith Roofing.” Defendants also established multiple
separate internet sites, including www.smithroofs.com, www.smithroofs.net, and
www.smithroofingid.com, each of which rely upon Plaintiff’s trade name “Smith
Roofing.”
Defendants, operating as “Smith Roofing,” provide residential, commercial, and
3
Plaintiff believes Defendant Glen Smith is the sole member of Smith Roofing, LLC. Dkt. 1, ¶ 16.
MEMORANDUM DECISION AND ORDER - 2
new construction roofing services in Southeast Idaho and Western Wyoming, and thus
offer the same services, in the same communities, as Plaintiff. Defendants create market
confusion by using an identical name to Plaintiff’s assumed business name, and by
displaying a similar mark to Plaintiff’s trademark on their signs and marketing materials.
Plaintiff alleges Defendants have actively and intentionally misled customers attempting
to reach Plaintiff by allowing such customers to believe that the Defendants are the same
company as Plaintiff. In fact, actual marketplace confusion has resulted in at least one
check owed to Plaintiff, in the total sum of $83,000.00, to be sent to Defendants. Plaintiff
has also received telephone calls from customers complaining about services performed
and/or not performed in a timely manner by Defendants, and thus has actual knowledge of
the reputational injury Defendants have caused. Through intentionally using an identical
trade name and confusingly similar mark, Defendants have diluted Plaintiff’s reputation
and good will.
B. Procedural Background
On June 15, 2023, Plaintiff demanded that Defendants cease and desist use of the
Smith Roofing trademark. When Defendants refused, Plaintiff filed the instant suit on June
30, 2023. Dkt. 1. Plaintiff brings six claims against Defendants: (1) Trademark
Infringement under Section 43 of the Lanham Act, 15 U.S.C. § 1125(a); (2) Common Law
Trademark Infringement; (3) Unfair Competition; (4) Unfair Competition under Idaho
Code § 48-603; (5) Unjust Enrichment; and (6) Tortious Interference with Prospective
Economic Advantage. Id.
MEMORANDUM DECISION AND ORDER - 3
Defendants were served with Plaintiff’s Complaint on July 11, 2023. Dkt. 4. After
their response deadline had passed, Defendants appeared through an unlicensed third party
on September 5, 2023, and requested an extension of time to answer Plaintiff’s Complaint.
Dkt. 5. The Court gave Defendants an additional thirty days to file an Answer. Dkt. 7. The
Court also ordered Defendant Glen Smith to appear himself or to retain an attorney, and
Defendant Smith Roofing, LLC to appear with an attorney.4 Id. Defendants neither
appeared nor answered Plaintiff’s Complaint.
On November 1, 2023, Plaintiff applied for entry of default against Defendants. Dkt.
8. A Clerk’s Entry of Default was entered on November 15, 2023. Dkt. 10. Since the
Clerk’s Entry of Default, Defendants have not appeared, moved to set aside the Clerk’s
Entry of Default, nor otherwise participated in this case. Plaintiff filed the instant Motion
for Default Judgment on January 17, 2024. Dkt. 11. Defendants did not respond to
Plaintiff’s Motion for Default Judgment, and the deadline for doing so has expired.
III. LEGAL STANDARD
When a party against whom a judgment for affirmative relief is sought fails to plead
or otherwise defend, the plaintiff may apply to the court for a default judgment. Fed. R.
Civ. P. 55. Plaintiff seeks entry of default judgment pursuant to Federal Rule of Civil
Procedure 55(b)(2). Specifically, Plaintiff requests a permanent injunction enjoining
Defendants from continuing to conduct business under the name Smith Roofing, and from
4
The Court ordered Defendant Smith Roofing, LLC to appear with an attorney because corporations,
partnerships, and limited liability companies—even solely owned limited liability companies—may appear
in federal court only through a licensed attorney. Lattanzio v. COMTA, 481 F.3d 137, 140 (2d Cir. 2007)
(explaining a layperson may not represent any separate legal entity pursuant to 28 U.S.C. § 1654).
MEMORANDUM DECISION AND ORDER - 4
utilizing any marks like those used by Smith Roofing and Siding, L.L.C. Dkt. 1, at 9.
Whether to enter a default judgment is a matter within the court’s discretion. Aldape
v. Aldape, 616 F.2d 1089, 1092 (9th Cir. 1980). The court may consider a variety of factors
in the exercise of such discretion, including: (1) the possibility of prejudice to plaintiff; (2)
the merits of plaintiff's substantive claims; (3) the sufficiency of the complaint; (4) the sum
of money at stake in the action; (5) the possibility of a dispute concerning the material
facts; (6) whether defendant’s default was the product of excusable neglect; and (7) the
strong policy favoring decisions on the merits. Eitel v. McCool, 782 F.2d 1470, 1471–72
(9th Cir. 1986). “In applying this discretionary standard, default judgments are more often
granted than denied.” PepsiCo v. Triunfo-Mex, Inc., 189 F.R.D. 431, 432 (C.D. Cal. 1999).
IV. ANALYSIS
A. Procedural Requirements
As a threshold matter, the Court finds Plaintiff has met the procedural requirements
of Federal Rule of Civil Procedure 54 and 55. On July 11, 2023, Defendants were served
with the Complaint and Summons. Dkt. 4. Plaintiff’s counsel filed a declaration affirming
that Defendants are not minors or incompetent persons, and are not persons protected by the
Servicemembers Civil Relief Act. Dkt. 8, ¶ 4. Every filing in this case has also been mailed
to Defendants at the address Defendants provided to the Court.5
Pursuant to Federal Rule of Civil Procedure 55(a), a Clerk’s Entry of Default was
5
Defendants included a contact address in their Motion for Extension of Time to File Answer. Dkt. 5. The
Court’s Electronic Case Filing system reflects that every subsequent filing in this case was mailed to
Defendants at the contact address they provided.
MEMORANDUM DECISION AND ORDER - 5
entered on November 15, 2023. Dkt. 10. Plaintiff filed its Motion for Default Judgment on
January 17, 2024. Dkt. 11. Although Plaintiff’s Motion for Default Judgment was mailed to
Defendants the same day, Defendants have failed to ever respond. Finally, in compliance
with Federal Rule of Civil Procedure 54(c), the relief Plaintiff requests in its Motion for
Default Judgment—a permanent injunction, attorney fees, and costs—does not differ in kind
or exceed in amount the relief requested in the Complaint. Compare Dkt. 1 with Dkt. 11.
Accordingly, Plaintiff has met the procedural requirements for obtaining a default judgment.
B. Jurisdiction6
“To avoid entering a default judgment that can later be successfully attacked as void,
a court should determine whether it has the power, i.e., the jurisdiction, to enter the judgment
in the first place.” In re Tuli, 172 F.3d 707, 712 (9th Cir. 1999). Thus, before addressing the
merits of Plaintiff’s Motion for Default, the Court must first determine whether it has subject
matter jurisdiction.
Pursuant to 28 U.S.C. § 1331 and 15 U.S.C. § 1121, the Court has federal question
jurisdiction because Plaintiff’s primary claim is for trademark infringement under the
Lanham Act, 15 U.S.C. § 1111 et seq. In addition, 28 U.S.C. § 1338(a) provides that the
“district courts shall have original jurisdiction of any civil action arising under any Act of
Congress relating to . . . trademarks.” Further, because Plaintiff’s state law claims are
inextricably intertwined with its federal trademark infringement claim, this Court exercises
6
Venue is proper because, while using Plaintiff’s name and similar mark, Defendants provide commercial
and residential roofing services within the boundaries of the Eastern District of Idaho. Therefore, “a
substantial part of the events or omissions giving rise to” Plaintiff’s claims occurred in this District. 28
U.S.C. § 1391(b)(2).
MEMORANDUM DECISION AND ORDER - 6
supplemental jurisdiction over Plaintiff’s remaining state law claims pursuant to 28 U.S.C.
§ 1367(a).7
C. Merits
The Court finds the factors set forth in Eitel, 782 F.2d at 1471–72 (hereinafter “Eitel
factors”) weigh in favor of granting Plaintiff’s Motion for Default Judgment.
1. Prejudice to Plaintiff
First, Plaintiff would suffer prejudice if the Court does not enter a default judgment
because Plaintiff would be denied the right to a judicial resolution of its claims. Id. Because
Defendants have refused to stop using Plaintiff’s name and similar trademark, and also failed
to respond to Plaintiff’s Complaint, the only recourse Plaintiff has is through this litigation.
Since denying Plaintiff’s Motion for Default Judgment would leave Plaintiff “without
recourse for recovery,” the first Eitel factor weighs in favor of a default judgment. PepsiCo,
Inc., 238 F. Supp. 2d at 1177; Blumenthal Distrib., Inc. v. Comoch, Inc., 652 F. Supp. 3d
1117, 1127 (C.D. Cal. 2023).
2. Merits of Claim and Sufficiency of Complaint
The Court next considers the merits of Plaintiff’s claims and the sufficiency of
Plaintiff’s Complaint. Eitel, 782 F.2d at 1471. “Under the Eitel analysis, the merits of
plaintiff’s substantive claims and the sufficiency of the complaint are often analyzed
7
The Court has personal jurisdiction over both Defendants because Defendant Glen Smith resides, and
operates Smith Roofing LLC, in Idaho, and Defendant Smith Roofing LLC is an Idaho entity existing
pursuant to the laws of Idaho, with its principal place of business in Idaho. Dkt. 1, ¶¶ 2–3; Milliken v. Meyer,
311 U.S. 457, 462 (1940) (explaining “[d]omicile in the state is alone sufficient” to establish personal
jurisdiction); Idaho Code § 5-514 (enabling Idaho courts to exercise personal jurisdiction over any person
or company engaged in the “transaction of any business within this state”).
MEMORANDUM DECISION AND ORDER - 7
together.” Dr. JKL Ltd. v. HPC IT Educ. Ctr., 749 F. Supp. 2d 1038, 1048 (N.D. Cal. 2010).
Given Defendants’ failure to ever respond to Plaintiff’s Complaint, the allegations in
Plaintiff’s Complaint are deemed admitted. Fed. R. Civ. Proc. 8(b)(6) (“An allegation—other
than one relating to the amount of damages—is admitted if a responsive pleading is required
and the allegation is not denied.”); Geddes v. United Fin. Grp., 559 F.2d 557, 560 (9th Cir.
1977) (“The general rule of law is that upon default the factual allegations of the complaint,
except those relating to the amount of damages, will be taken as true.”).
Having reviewed Plaintiff’s Complaint, the Court finds Plaintiff sufficiently states
four claims: trademark infringement under the Lanham Act, common law trademark
infringement, common law unfair competition, and unfair competition pursuant to Idaho
Code section 48-603.8 Danning v. Lavine, 572 F.2d 1386, 1388 (9th Cir. 1978) (explaining
the second and third Eitel factors—involving the substantive merits of plaintiff’s claim and
the sufficiency of the complaint—require that plaintiffs’ allegations “state a claim on which
the [plaintiff] may recover”).
a. Trademark Claims
Plaintiff brings its trademark infringement claim under Section 43(a) of the Lanham
Act. 15 U.S.C. § 1125(a). This provision of the Lanham Act makes actionable the deceptive
and misleading use in commerce of “any word, term, name, symbol, or device, or any
combination thereof” in connection with any goods or services. 15 U.S.C. § 1125(a)(1). The
8
Because Plaintiff does not give more than passing reference to its claims for unjust enrichment or tortious
interference with prospective economic advantage in its Motion for Default Judgment, and because, as
explained below, the Court finds Plaintiff’s Complaint does not adequately state such claims, the Court
enters default judgment solely with respect to Plaintiffs’ trademark infringement and unfair competition
claims.
MEMORANDUM DECISION AND ORDER - 8
Ninth Circuit “has consistently held that state common law claims of unfair
competition . . .are substantially congruent to claims under the Lanham Act.” Cleary v. News
Corp., 30 F.3d 1255, 1262–63 (9th Cir. 1994) (cleaned up); M2 Software, Inc. v. Madacy
Entm’t, Corp., 421 F.3d 1073, 1080 n. 5 (9th Cir. 2005) (explaining the same standard—
likelihood of confusion—applies to claims of trademark infringement under federal, state,
and common law, as well as to common law and state statutory unfair competition claims);
see also Rise Basketball Skill Dev., LLC v. K Mart Corp., 2017 WL 2775030, at *3 (N.D.
Cal. June 27, 2017) (“[A] common law unfair competition claim for trademark exploitation
is analogous to a Lanham Act claim and may be analyzed under the same standard.”). The
Court, accordingly, jointly assesses Plaintiff’s claims for trademark infringement under the
Lanham Act, common law trademark infringement, common law unfair competition, and
unfair competition pursuant to Idaho Code Section 48-603.9 Wecosign, Inc. v. IFG Holdings,
Inc., 845 F. Supp. 2d 1072, 1079 (C.D. Cal. 2012).
To establish a claim for trademark infringement under section 43(a) of the Lanham
Act, Plaintiff must show: (1) it has a valid, protectable trademark; and (2) Defendants’ use
of the mark is likely to cause confusion. Applied Info. Sciences Corp. v. eBay, Inc., 511 F.3d
966, 969 (9th Cir. 2007). On July 5, 2023, Plaintiff registered with the United States Patent
and Trademark Office (“USPTO”) for trademark protection of the name “Smith Roofing”
and mark “Smith Roofing” over a stylized roofline drawing.10 Registration with the PTO
9
Although known as the “Idaho Consumer Protection Act,” Idaho Code Section 48-603 prohibits a
defendant’s unauthorized use of a plaintiff’s tradename or trademark. J.C. Penney Co. v. Parrish Co., 339
F. Supp. 726, 727 (D. Idaho 1972).
10
This
information
was
obtained
from
the
PTO’s
trademark
search
tool.
https://tmsearch.uspto.gov/search/search-results. The Court takes judicial notice of information available
MEMORANDUM DECISION AND ORDER - 9
constitute prima facie evidence of validity. Id. at 970.
Moreover, Section 43(a) of the Lanham Act protects against infringement of both
unregistered and registered marks. GoTo.com. Inc. v. Walt Disney Co., 202 F.3d 1199, 1204
n. 4 (9th Cir. 2000) (citing Kendall-Jackson Winder, Ltd. v. E. & J. Gallo Winery, 150 F.3d
1042, 1046 (9th Cir. 1998)). “The first to use a mark is deemed the ‘senior’ user and has the
right to enjoin ‘junior’ users from using confusingly similar marks in the same industry and
market or within the senior user’s natural zone of expansion.” Brookfield Communications,
Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1047 (9th Cir. 1999) (cleaned up).
For over 50-years, Plaintiff has utilized, traded on, and developed goodwill around
the name “Smith Roofing” in Southeast Idaho and Western Wyoming. Dkt. 1, ¶¶ 6–10. From
the early 1970s to the present, Plaintiff and its predecessor have consistently used the
tradenames “Smith Roofing” and “Smith Roofing Company.” Id., ¶ 8. In 1997, Plaintiff
registered the assumed business name “Smith Roofing Company.” Id., ¶ 7. For at least a
decade, Plaintiff has also utilized, traded on, and developed good will around a mark
featuring the words “Smith Roofing” over a stylized roofline drawing. Id., ¶¶ 8–10. Plaintiff
has become widely known for its excellent customer service and quality of workmanship to
the roofing trade in the Southeast Idaho and Western Wyoming communities. Id., ¶ 10.
On or about December 22, 2021, after Plaintiff had been in business for more than
on this government website, and accordingly, of Plaintiff’s trademark registration status. Autodesk, Inc. v.
Dassault Sys. SolidWorks Corp., 2008 WL 6742224, at *2 n.1 (N.D. Cal. Dec. 18, 2008) (taking judicial
notice of trademark registrations and applications publicly available on the USPTO website). Daniels–Hall
v. National Educ. Ass’n, 629 F.3d 992, 998–99 (9th Cir. 2010) (taking judicial notice of information on the
websites of two school districts because they were government entities); U.S. ex rel. Modglin v. DJO Glob.
Inc., 48 F. Supp. 3d 1362, 1381–82 (C.D. Cal. 2014) (finding the court could take judicial notice of
documents from the Food and Drug Administration’s website).
MEMORANDUM DECISION AND ORDER - 10
50-years, and registered under the name “Smith Roofing Company” for nearly 25-years,
Defendants started trading on Plaintiff’s reputation by not only doing business as “Smith
Roofing,” but also by utilizing a confusingly similar mark consisting of the words “Smith
Roofing” over a stylized roofline drawing. Id., ¶¶ 6–7, 11–12. Given Plaintiff’s decades long
use before that of Defendants, Plaintiff is the senior user of both the name “Smith Roofing,”
and of the mark “Smith Roofing” over a stylized roofline drawing. 15 U.S.C. § 1057(c).
Thus, in addition to its registration with the PTO, Plaintiff is the senior user of the “Smith
Roofing” name and mark. In short, Plaintiff has adequately alleged it has a valid, protectable
interest in the Smith Roofing name and mark.
The second element of a trademark infringement claim is “the defendant’s use of the
same or similar mark would create a likelihood of consumer confusion.”11 Murray v. Cable
Nat’l Broad. Co., 86 F.3d 858, 860 (9th Cir. 1996). Where, as here, the services offered by
the alleged infringer compete with those offered by the trademark owner, infringement
usually will be found if the marks are sufficiently similar that confusion can be expected.
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979) (“Sleekcraft”), abrogated
in part on other grounds by Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 n.
19 (9th Cir. 2003)).
Like Plaintiff, Defendants offer residential, commercial, and new construction
roofing services in Southeast Idaho and Western Wyoming. Dkt. 1, ¶¶ 9, 14. Defendants
trade on Plaintiff’s good name and reputation by providing the same services, in the same
11
The test for common law and statutory unfair competition claims is also whether a likelihood of confusion
exists. Walter v. Mattel, Inc., 210 F.3d 1108, 1111 (9th Cir. 2000) (citations omitted).
MEMORANDUM DECISION AND ORDER - 11
communities, as Plaintiff, while also using both the name “Smith Roofing,” and a
confusingly similar mark consisting of the words “Smith Roofing” over a stylized roofline
drawing. Id. ¶¶ 11–12. Defendants have also established multiple separate internet sites,
including www.smithroofs.com, www.smithroofs.net, and www.smithroofingid.com, each
of which relies upon Plaintiff’s trade name “Smith Roofing,” in an effort to create confusion
as to the source within the marketplace. Id., ¶ 13.
As a result of Defendants’ conduct, Plaintiff contends it has suffered reputational
injury and has also experienced actual marketplace confusion. Id., ¶¶ 20–21. Specifically,
Plaintiff has received telephone calls from customers complaining about services performed
and/or not performed in a timely matter by Defendants. Id. at 20. Marketplace confusion has
also resulted in at least one check, in the sum of $83,000.00 owed to Plaintiff, to be sent to
Defendants. Id. at 21. “Evidence that use of the two marks has already led to confusion is
persuasive proof that future confusion is likely.” Sleekcraft, 599 F.2d at 352.
In sum, Plaintiff has sufficiently alleged it has a valid interest in the “Smith Roofing”
name and mark, as well as both a likelihood of confusion, and actual marketplace confusion,
as a result of Defendant’s infringement. The Court thus finds Plaintiff states claims for
trademark infringement under the Lanham Act, common law trademark infringement,
common law unfair competition, and unfair competition pursuant to Idaho Code section 48603.
b. Unjust Enrichment
District Courts have held that an “unjust enrichment claim that restates a trademark
infringement claim, without alleging any quasi-contractual relationship, fails as a matter of
MEMORANDUM DECISION AND ORDER - 12
law.” Upper Deck Co. v. Flores, 569 F. Supp. 3d 1050, 1071–72 (S.D. Cal. 2021) (quoting
Gearsource Holdings, LLC v. Google LLC, 2020 WL 3833258, at *13 (N.D. Cal. Jul. 8,
2020)); Sugarfina, Inc. v. Sweet Pete’s LLC, 2017 WL 4271133, at *6 (C.D. Cal. Sept. 25,
2017) (dismissing unjust enrichment claim where plaintiff failed to allege any quasi-contract
between the parties and plaintiff’s unjust enrichment allegations were “inextricably
intertwined” with plaintiff’s trademark claims and did not “give rise to a separate theory of
quasi-contract”) (quoting Purcell v. Spokeo, Inc., 2014 WL 4187157, at *6 (C.D. Cal. Aug.
25, 2014)).
Plaintiff’s Complaint does not allege a quasi-contractual relationship, and thus fails
to state a claim for unjust enrichment. However, because Plaintiff has adequately alleged its
various trademark infringement and unfair competition claims, the inadequacy of Plaintiff’s
unjust enrichment claim is not fatal to Plaintiff’s Motion for Default Judgment. Simple
Design Ltd. v. Dairy-Queen Vision, 2023 WL 2629153, at *5 (C.D. Cal. Jan. 10, 2023).
c. Tortious Interference with Prospective Economic Advantage
To state a claim for tortious interference with a prospective economic advantage, a
plaintiff must allege: “(1) the existence of a valid economic expectancy; (2) the defendant’s
knowledge of the expectancy; (3) an intentional interference inducing termination of the
expectancy; (4) that the interference was wrongful by some measure beyond the fact of the
interference itself”; and (5) harm resulting from the defendant’s conduct. Nelson-Ricks
Cheese Co., Inc. v. Lakeview Cheese Co., LLC, 331 F. Supp. 3d 1131, 1145 (D. Idaho 2018).
Although Plaintiff alleges it “had a valid economic expectancy in developing
customer relationships and contracts with customers,” Plaintiff has not identified a
MEMORANDUM DECISION AND ORDER - 13
prospective contractual relationship with any specific entity or individual. Dkt. 1, ¶ 57. As
such, Plaintiff has not adequately stated a claim for tortious interference with a prospective
economic advantage. Rickards v. Canine Eye Registration Found., Inc., 704 F.2d 1449, 1456
(9th Cir. 1983) (explaining the plaintiff must plead the existence of a specific prospective
economic relationship between the plaintiff and a third party to state a claim for tortious
interference with a prospective economic advantage). Again, however, Plaintiff has
sufficiently alleged its various trademark infringement and unfair competition claims. Thus,
the inadequacy of Plaintiff’s tortious interference claim does not warrant denying Plaintiff’s
Motion for Default Judgment. Simple Design Ltd., 2023 WL 2629153, at *5.
In sum, the Court finds that the merits and sufficiency of Plaintiff’s Lanham Act
trademark infringement claim, and relatedly, Plaintiff’s claims for common law trademark
infringement, common law unfair competition, and unfair competition pursuant to Idaho
Code section 48-603, weigh in favor of entering default judgment.
3. Damages
Under the fourth Eitel factor, the court must consider the amount of money at stake
in relation to the seriousness of Defendants’ conduct. PepsiCo, 238 F. Supp. 2d at 1176.
Because Plaintiff requests only injunctive relief and does not seek monetary damages, this
factor favors entering default judgment. Id.
4. Dispute Regarding Material Facts
Plaintiff filed a well-pleaded Complaint alleging the elements necessary to prevail on
four of its claims. Subsequently, the Clerk of the Court entered default judgment against
Defendants. Dkt. 10. Because all allegations in a well-pleaded Complaint, except those
MEMORANDUM DECISION AND ORDER - 14
relating to damages, are taken as true after a Clerk’s Entry of Default, there is no possibility
of dispute as to any material fact in this case. Elektra Ent. Grp. Inc. v. Crawford, 226 F.R.D.
388, 393 (C.D. Cal. 2005); PepsiCo, Inc., 238 F. Supp. 2d at 1177. The fifth Eitel factor thus
favors granting a default judgment.
5. Excusable Neglect
Defendants were served with the Complaint on August 14, 2023. Dkt. 4. After their
response deadline had passed, Defendants illustrated they had notice of the Complaint by
requesting—through a non-licensed third party—an extension to answer the Complaint. Dkt.
5. Although the Court granted Defendants a 30-day extension, Defendants failed to ever
answer the Complaint, or to otherwise participate in this case. Dkt. 7. Further, Plaintiff’s
Motion for Clerk’s Entry of Default (Dkt. 8), the Court’s Order Granting the Motion for
Clerk’s Entry of Default (Dkt. 9), the Clerk’s Entry of Default (Dkt. 10), and Plaintiff’s
Motion for Default Judgment (Dkt. 11) were each mailed to Defendants at the address
Defendants provided to the Court when requesting an extension of time to answer. Despite
having ample notice of Plaintiff’s claims, as well as notice of the possibility of default,
Defendants have essentially ignored this action. In addition, more than six months have
passed since the Complaint was served on Defendants, and four months have passed since
the Clerk’s Entry of Default.
Given the many notices to the Defendants, as well as the extended period of time that
has passed since the Clerk’s Entry of Default, the Court finds the possibility of excusable
neglect is remote. Elektra, 226 F.R.D. at 393; PepsiCo, Inc., 238 F. Supp. 2d at 1177 (holding
defendants could not establish excusable neglect where defendants contacted plaintiffs’
MEMORANDUM DECISION AND ORDER - 15
counsel after the complaint was served, but then failed to participate in the case). Thus, the
sixth Eitel factor also supports default.
6. Policy Favoring Decision on the Merits
Finally, although cases “should be decided upon their merits whenever reasonably
possible,” Eitel, 782 F.2d at 1472, Defendants’ failure to participate in this matter “makes a
decision on the merits impractical if not impossible.” Elektra, 226 F.R.D. at 393. Federal
Rule of Civil Procedure 55(a) permits termination of a case without consideration of the
merits where, as here, a defendant fails to plead or otherwise defend. Because Defendants
have failed to defend this action in any way, the seventh Eitel factor does not preclude the
Court from entering default judgment. PepsiCo, Inc., 238 F. Supp. 2d at 1177.
In conclusion, the Court finds the first six Eitel factors weigh in favor default
judgment, and the seventh Eitel factor weighs against default judgment but is not dispositive.
Blumenthal Distrib., Inc., 652 F. Supp. 3d at 1131. Accordingly, the Court grants Plaintiff’s
Motion for Default Judgment with respect to its federal and common law trademark
infringement claims, and common law and state unfair competition claims.
D. Relief Requested
Plaintiff seeks a permanent injunction enjoining Defendants from all acts of
trademark infringement and unfair competition. Dkt. 1; Dkt. 11-1. Plaintiff also requests
$8,530.00 in attorney’s fees and $622.00 in costs. Dkt. 11-2, at 1. The Court considers each
form of requested relief in turn.
1. Injunctive Relief
The injunctive relief Plaintiff seeks is consistent with that requested in Plaintiff’s
MEMORANDUM DECISION AND ORDER - 16
Complaint.12 Compare Dkt. 1 with Dkt. 11-1. Specifically, Plaintiff requests an order
permanently enjoining Defendants from: (1) using the name “Smith Roofing” in commerce;
(2) utilizing any marks similar to Plaintiff’s marks, and (3) using the domain names
www.smithroofs.com, www.smithroofs.net, www.smithroofingid.com, or any other domain
name that infringes or is confusingly similar to the trademarks of Plaintiff. Dkt. 1, at 9.
Under the Lanham Act, “the district court [has] the ‘power to grant injunctions
according to principles of equity and upon such terms as the court may deem reasonable, to
prevent the violation of any right’ of the trademark owner.” Reno Air Racing Ass’n v.
McCord, 452 F.3d 1126, 1137 (9th Cir. 2006) (quoting 15 U.S.C. § 1116(a)). Notably,
“injunctive relief is the remedy of choice for trademark and unfair competition cases, since
there is no adequate remedy at law for the injury caused by a defendant’s continuing
infringement.” Century 21 Real Est. Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988).
As discussed above, Plaintiff has adequately stated its statutory and common law
trademark infringement and unfair competition claims. To obtain a permanent injunction,
Plaintiff must establish: (1) it has suffered irreparable injury; (2) remedies available at law,
12
As noted, Federal Rule of Civil Procedure 54(c) requires that a “default judgment must not differ in kind
from, or exceed in amount, what is demanded in the pleadings.” “In enacting this provision, judicial and
legislative authorities recognized that the defending party should be able to decide on the basis of the relief
requested in the original pleading whether to expend the time, effort, and money necessary to defend the
action.” Gray Ins. Co. v. Lectrfy, Inc., 2014 WL 12689270, at *6 (C.D. Cal. Mar. 3, 2014) (citing 10 Charles
Alan Wright & Arthur R. Miller, Federal Practice and Procedure § 2663 (3d ed. 1998)). While it would be
fundamentally unfair to award a different type of relief, or a higher damage award, than that prayed for in
a complaint, it does not prejudice a defaulting defendant to award less relief than that sought in the
complaint. Luxottica Grp., S.p.A. v. Eye Story, Inc., 2020 WL 2404913, at *6 (C.D. Cal. May 11, 2020)
(entering permanent injunction upon defendant’s default where such relief was within the broader scope of
relief sought in the pleadings). Because Plaintiff’s Complaint requested injunctive relief, attorney’s fees,
and costs, the Court finds Federal Rule of Civil Procedure 54(c) is satisfied even though Plaintiff has
apparently abandoned the monetary damages sought in its Complaint.
MEMORANDUM DECISION AND ORDER - 17
such as monetary damages, are inadequate to compensate Plaintiff for that injury; (3) the
balance of hardship between Plaintiff and Defendants warrants injunctive relief; and (4) “the
public interest would not be disserved by a permanent injunction.” eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006).
The Court finds Plaintiff has demonstrated that it will suffer irreparable injury in the
absence of an injunction because, under the Lanham Act, a plaintiff seeking an injunction
“shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation
identified in this subsection in the case of a motion for a permanent injunction[.]” 15 U.S.C.
§ 1116(a). By failing to participate in this case, Defendants have not even attempted to rebut
this presumption. Further, in an action for trademark infringement, “once the plaintiff
establishes a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer
irreparable harm if injunctive relief is not granted.” Vision Sports, Inc. v. Melville Corp., 888
F.2d 609, 612 n.3 (9th Cir. 1989). Plaintiff’s Complaint demonstrates not only a likelihood
of confusion, but also actual consumer confusion caused by Defendants’ use of Plaintiff’s
name and similar mark. Dkt. 1, ¶¶ 17–21. Plaintiff has thus established it will suffer
irreparable harm if the Court does not award injunctive relief.
Plaintiff has shown other legal remedies would be inadequate because Plaintiff
alleges it has suffered reputational damage and lost profits, and will continue to suffer such
injury, if Defendants’ infringement is not enjoined. Dkt. 1, ¶¶ 18–23. “Damage to reputation
and loss of customers are intangible harms not adequately compensable through monetary
damages.” Car-Freshner Corp. v. Valio, LLC, 2016 WL 7246073, at *8 (D. Nev. Dec. 15,
2016). As such, other legal remedies would be inadequate.
MEMORANDUM DECISION AND ORDER - 18
The balance of hardships also weighs in favor of an injunction because Plaintiff will
continue to lose profits and goodwill without an injunction, while an injunction will only
proscribe Defendants’ infringing activities. Wecosign, Inc., 845 F. Supp. 2d at 1084. Finally,
an injunction is in the public interest because “[t]he public has an interest in avoiding
confusion between two companies’ products.” Internet Specialties West, Inc. v. MilonDiGiorgio Enters., Inc., 559 F.3d 985, 993 n. 5 (9th Cir. 2009); AT&T Corp.v. Vision One
Sec. Sys., 1995 WL 476251, at *7 (S.D. Cal. Jul. 27, 1995) (“Where defendant’s concurrent
use of plaintiff’s trademark without authorization is likely to cause confusion, the public
interest is damaged by the defendant’s use.”). Because Defendants are using Plaintiff’s name
and similar trademark, while also offering the same services in the same communities, the
public is likely to be confused—and in fact has been confused—by Defendants’ conduct.
The public interest consequently weighs in favor of an injunction.
In sum, Plaintiff has established it will suffer irreparable injury if Defendants’
infringement is not enjoined and that other remedies are insufficient to compensate Plaintiff
for such injury. The balance of harm, and the public’s interest, also each weigh in favor of
an injunction. Accordingly, the Court grants Plaintiff’s request for a permanent injunction.
2. Attorney’s Fees
The Lanham Act authorizes an award of attorney fees to the prevailing party in
“exceptional cases.” 15 U.S.C. § 1117(a). “A case is exceptional if the defendant has acted
in bad faith or with willful and deliberate conduct.” Discovery Commc’ns, Inc. v. Animal
Planet, Inc., 172 F. Supp. 2d 1282, 1291 (C.D. Cal. 2001). Here, Defendants have continued
to use Plaintiff’s trade name, as well as a confusingly similar trademark, despite Plaintiff’s
MEMORANDUM DECISION AND ORDER - 19
cease and desist letter, Complaint, and Motion for Default Judgment. An award of attorney’s
fees is appropriate under such circumstances. Id. at 1292 (finding plaintiff was entitled to
attorney’s fees where defendant chose to use plaintiff’s mark even though defendant had
actual notice of plaintiff’s rights thereto); E. & J. Gallo Winery v. Consorizio del Gallo Nero,
782 F. Supp. 472, 474–76 (N.D. Cal. 1992) (awarding attorney’s fees to plaintiff after
defendant repeatedly ignored warnings to stop using plaintiff’s mark). Further, a case may
be considered exceptional where, as here, “the defendants disregard the proceedings and do
not appear.” Discovery Commc’ns, Inc., 172 F. Supp. 2d at 1292 (citing Taylor Made Golf
Co., Inc. v. Carsten Sports, Ltd., 175 F.R.D. 658, 663 (S.D. Cal. 1997)). Defendants’ failure
to participate in this case and willful use of Plaintiff’s name and mark constitute exceptional
circumstances justifying an award of attorney’s fees.
Having found Plaintiff is entitled to attorney’s fees, the Court turns next to Plaintiff’s
request for $8,530.00 in fees. Courts within the Ninth Circuit apply the “lodestar” approach
to determine appropriate fee awards. Vogel v. Harbor Plaza Ctr., LLC, 893 F.3d 1152, 1158
(9th Cir. 2018). The lodestar amount is calculated by multiplying “the number of hours
reasonably expended on the litigation by a reasonable hourly rate.” Id. at 1160 (emphasis in
original) (quoting Costa v. Comm'r of Soc. Sec. Admin., 690 F.3d 1132, 1135 (9th Cir.
2012)). 13 “The party seeking fees bears the burden of documenting the hours expended in
the litigation and must submit evidence supporting those hours and the rates claimed.” Welch
13
A court may adjust the lodestar figure based on a number of additional factors not subsumed in the initial
lodestar calculation. Kerr v. Screen Extras Guild, Inc., 526 F.2d 67, 70 (9th Cir. 1975), abrogated on other
grounds by City of Burlington v. Dague, 505 U.S. 557 (1992). Since Plaintiff does not seek an adjustment
to the lodestar calculation, the Court does not address such factors here.
MEMORANDUM DECISION AND ORDER - 20
v. Metro Life Ins. Co., 480 F.3d 942, 945–46 (9th Cir. 2007) (citing Hensley v. Eckerhart,
461 U.S. 424, 433 (1983)).
a. Hours Expended
A fee applicant must submit appropriate and accurate time records to support its claim
of fees. Chalmers v. City of Los Angeles, 796 F.2d 1205, 1210 (9th Cir. 1986). Claimed hours
“may be reduced by the court where documentation of the hours is inadequate, if the case
was overstaffed and hours are duplicated, [or] if the hours expended are deemed excessive
or otherwise unnecessary.” Id. (cleaned up).
In conjunction with its Motion for Default Judgment, Plaintiff submitted detailed time
records for 20.9 hours of attorney time, and 8.1 hours of paralegal time, resulting in a total
of 29 hours spent litigating this case.14 Dkt. 11-2, Ex. A. Having carefully reviewed such
records, the Court finds this matter was appropriately staffed, and that the hours expended
were not duplicative, excessive, or unnecessary. The Court accordingly finds a total of 29
hours was a reasonable amount of time to expend on this case.
b. Hourly Rates Claimed
Although Plaintiff does not specifically so state, the relevant community for assessing
Plaintiff’s requested rates is the Eastern District of Idaho, where this Court sits.15 Gates v.
Rowland, 39 F.3d 1429, 1449, 1405 (9th Cir. 1994) (“Normally, the relevant legal
community for determining the prevailing market rates for attorneys’ fees is the community
14
Plaintiff’s records detail time Plaintiff’s attorney, Jared Wayne Allen, and another unidentified
timekeeper, “SB,” spent on this matter. Without any information about “SB” other than the specific tasks
s/he performed, the Court assumes “SB” is a paralegal.
15
Plaintiff’s counsel’s office is also located in Eastern District of Idaho, specifically in Idaho Falls.
MEMORANDUM DECISION AND ORDER - 21
in which the forum is situated.”) (cleaned up); Vargas v. Howell, 949 F.3d 1188, 1194 (9th
Cir. 2020) (explaining reasonable hourly rates “are to be calculated according to the
prevailing market rates in the relevant community”).
Parties seeking fees have the “burden of producing evidence that their requested fees
are in line with those prevailing in the community for similar services by lawyers of
reasonably comparable skill, experience and reputation.” Id. at 1199 (cleaned up). Plaintiff
seeks an hourly rate of $350.00 for its attorney, and $150.00 for its paralegal. However,
Plaintiff’s counsel did not submit his own declaration, declarations of other attorneys, or any
other information to establish Plaintiff’s requested rates are commensurate with those
prevailing in eastern Idaho for lawyers with comparable experience. In fact, Plaintiff’s
counsel has not outlined even his own experience, or that of SB, in requesting fees. See Dkt.
11-2. In the absence of such information, the Court relies upon its own experience to
determine the prevailing market rate. Ingram v. Oroudjian, 647 F.3d 925, 928 (9th Cir. 2011)
(noting in evaluating a requested rate, “judges are justified in relying on their own knowledge
of customary rates and their experience concerning reasonable and proper fees”).
According to his firm’s website, Plaintiff’s counsel is a partner with litigation and
business experience in a small regional firm located in Idaho Falls, Idaho. See
https://www.beardstclair.com/attorneys/jared-w-allen. Although the Court lacks information
regarding Mr. Allen’s experience, another judge of this District determined $300.00 per hour
was a reasonable hourly rate for a partner with significant litigation experience in a small
regional firm located in Idaho Falls. United States ex rel. Jacobs v. CDS, P.A., 2018 WL
6268201, at *2–3 (D. Idaho Nov. 30, 2018). Given the time that has elapsed since Jacobs
MEMORANDUM DECISION AND ORDER - 22
was decided, the Court finds $325.00 is an appropriate hourly rate for Plaintiff’s counsel.
The Court’s adjusted rate for Mr. Allen’s fee results in a reduction of $522.50 to Plaintiff’s
fee request.
The Court also lacks information about “SB,” the other timekeeper who worked on
Plaintiff’s case. As noted, in the absence of any information about SB, the Court assumes
s/he is a paralegal. Because Plaintiff has neither outlined SB’s specific experience, nor
submitted any evidence regarding the prevailing market rate for paralegals with comparable
experience, the Court finds $120.00 an hour is reasonable and is in line with rates the Court
has previously awarded for paralegals who, like SB, work for small regional firms in Idaho.
Gonzales on behalf of A.G. v. Burley High Sch., 2020 WL 7047747, at *7 (D. Idaho Nov.
30, 2020); Eccles v. City of Lewiston Lib. Bd. of Trustees, 2021 WL 277196, at *5 (D. Idaho
Jan. 27, 2021). The Court’s adjusted rate for SB’s hourly fee results in a reduction of $243.00
to Plaintiff’s fee request.
Based on the record and the Court’s experience, the Court finds that a fee award of
$7,764.50 is reasonable.16 Vogel, 893 F.3d at 1160. Accordingly, the Court awards Plaintiff
$7,764.50 in attorney’s fees.
3. Costs
Pursuant to Federal Rule of Civil Procedure 54(d)(1) and District of Idaho Local Civil
Rule 54.1, the Court may award costs to Plaintiff as the prevailing party. Costs may include,
inter alia, fees for printing, fees of the clerk, and fees for making copies of any materials
16
Mr. Allen’s 20.9 hours at $325.00 per hour ($6,792.50), plus SB’s 8.1 hours at $120.00 per hour
($972.00), results in a total of $7,764.50 in fees.
MEMORANDUM DECISION AND ORDER - 23
obtained for use in the case. 28 U.S.C. § 1920. Plaintiff seeks costs of $622.00 for fees related
to filing, service, and legal research. Dkt. 11-2. The Court finds such costs are permissible
under 28 U.S.C. § 1920, and awards Plaintiff $622.00 in costs.
V. CONCLUSION
The Court finds the Eitel factors weigh in favor of entering judgment in favor of
Plaintiff on its claims for trademark infringement under Section 43 of the Lanham Act,
common law trademark infringement, common law unfair competition, and unfair
competition under Idaho Code § 48-603. Further, Plaintiff is entitled to a permanent
injunction enjoining Defendants from using Plaintiff’s name and trademark, or any other
names or marks similar thereto, because the likelihood of irreparable harm, inadequacy of
other remedies, balance of hardships, and public interest each weigh in favor of such relief.
Finally, the Court finds Plaintiff is entitled to a total award of $8,386.50 in fees and costs.
VI. ORDER
It is HEREBY ORDERED:
1. Plaintiff’s Motion for Default Judgment (Dkt. 11) is GRANTED. The Court will
enter judgment on Plaintiff’s claims for trademark infringement under Section
43(a) of the Lanham Act, common law trademark infringement, common law
unfair competition, and unfair competition under Idaho Code § 48-603.
2. The Court awards Plaintiff the following relief:
a. Defendants are permanently enjoined from the activities enumerated in
the Court’s Default Judgment;
b. Attorney’s fees in the amount of $7,764.50;
MEMORANDUM DECISION AND ORDER - 24
c. Costs is the amount of $622.00.
3. The Court will enter a separate judgment pursuant to Federal Rule of Civil
Procedure 58(a).
DATED: March 26, 2024
_________________________
David C. Nye
Chief U.S. District Court Judge
MEMORANDUM DECISION AND ORDER - 25
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