Toyo Tire and Rubber Co., Ltd. et al v. Toyama Tyre Corp., Ltd. et al

Filing 13

ORDER Denying 3 Plaintiffs' Emergency Motion for Temporary Restraining Order. Signed by Judge Gloria M. Navarro on 11/08/2013. (Copies have been distributed pursuant to the NEF - AC)

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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA

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Toyo Tire and Rubber Co., Ltd.; Toyo Tire
U.S.A. Corp.; and Toyo Tire Holdings of
Americas Inc.,

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Plaintiffs,
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vs.
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Toyama Tyre Corp., Ltd.; Toyama Tyre Corp., )
Ltd.; and Hong Kong Toyama Tyre Int’l Ltd., )
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Defendants.
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Case No.: 2:13-cv-02062-GMN-NJK
ORDER

This is a civil action for trademark infringement, trademark dilution, unfair competition,

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passing off, and cybersquatting under the Lanham Act, 15 U.S.C. §§ 1051–1141n, and under

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Nevada common law. Pending before the Court is the Emergency Ex Parte Motion for

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Temporary Restraining Order (ECF No. 3) filed by Plaintiffs Toyo Tire and Rubber Co., Ltd.

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(“Toyo Tire and Rubber”), Toyo Tire U.S.A. Corp. (“Toyo Tire USA”), and Toyo Tire

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Holdings of Americas, Inc. (“Toyo Tire Holdings”) (collectively, “Plaintiffs”).

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I. BACKGROUND

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On November 8, 2013, Plaintiffs filed their Complaint (ECF No. 1) against Toyama

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Tyre Corp., Ltd. (“Toyama Tyre China”), Toyama Tyre Corp., Ltd. (“Toyama Tyre Japan”),

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and Hong Kong Toyama Tyre Int’l Ltd. (“Toyama Tyre Hong Kong”) (collectively,

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“Defendants”), contemporaneously with their Emergency Ex Parte Motion for Temporary

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Restraining Order (ECF No. 3) and Motion for Preliminary Injunction (ECF No. 5).

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Plaintiffs and Defendants are foreign and domestic corporations that manufacture and

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distribute tires. Plaintiffs allege that they have “made exclusive and continuous use of the

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TOYO mark in connection with the tire industry internationally since at least as early as 1945,

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and in the United States as early as 1966.” (Compl., 4:¶7.) Plaintiffs attach as exhibits to the

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Complaint evidence of listings with the United States Patent and Trademark Office showing

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that Plaintiff Toyo Tire & Rubber Co., Ltd. is the registered owner of several marks using the

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name “TOYO,” including “TOYO 800 PLUS,” “TOYO SPECTRUM,” and “TOYO M/T”

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(“the TOYO marks”) dating between the years 1967 and 2006. (Id. at Exs 1–5.)

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Plaintiffs allege causes of action against Defendants for: (1) Trademark Infringement

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under section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); (2) False Designation of Origin

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and Unfair Competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3)

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Dilution of Trademarks under section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); (4)

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Cybersquatting under section 43(d) of the Lanham Act, 15 U.S.C. § 1125(d); (5) Common Law

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Trademark and Trade Name Infringement; and (6) Common Law Unfair Competition. (Compl.,

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ECF No. 1.)

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II. LEGAL STANDARD

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Preliminary injunctions and temporary restraining orders are governed by Rule 65 of the

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Federal Rules of Civil Procedure, which provides that a “court may issue a preliminary

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injunction only on notice to the adverse party.” Fed. R. Civ. P. 65(a)(1).

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A “court may issue a temporary restraining order without written or oral notice to the

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adverse party or its attorney only if: (A) specific facts in an affidavit or a verified complaint

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clearly show that immediate and irreparable injury, loss, or damage will result to the movant

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before the adverse party can be heard in opposition; and (B) the movant’s attorney certifies in

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writing any efforts made to give notice and the reasons why it should not be required.” Fed. R.

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Civ. P. 65(b)(1). A temporary restraining order “should be restricted to serving [its] underlying

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purpose of preserving the status quo and preventing irreparable harm just so long as is

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necessary to hold a hearing, and no longer.” Granny Goose Foods, Inc. v. Bhd. of Teamsters

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Local No. 70, 415 U.S. 423, 439 (1974).

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“A plaintiff seeking a preliminary injunction must establish that he is likely to succeed

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on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief,

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that the balance of equities tips in his favor, and that an injunction is in the public interest.”

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Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). Injunctive relief is “an

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extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is

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entitled to such relief.” Id. at 22. “[C]ourts must balance the competing claims of injury and

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must consider the effect on each party of the granting or withholding of the requested relief.”

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Id. at 24 (internal quotation marks omitted).

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The Ninth Circuit has held that “serious questions going to the merits and a hardship

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balance that tips sharply toward the plaintiff can support issuance of an injunction, assuming

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the other two elements of the Winter test are also met.” Alliance for the Wild Rockies v.

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Cottrell, 632 F.3d 1127, 1132 (9th Cir. 2011) (internal quotation marks omitted).

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“In deciding a motion for a preliminary injunction, the district court ‘is not bound to

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decide doubtful and difficult questions of law or disputed questions of fact.’” Int’l Molders’ &

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Allied Workers’ Local Union No. 164 v. Nelson, 799 F.2d 547, 551 (9th Cir. 1986) (quoting

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Dymo Indus., Inc. v. Tapeprinter, Inc., 326 F.2d 141, 143 (9th Cir. 1964)).

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“The urgency of obtaining a preliminary injunction necessitates a prompt determination

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and makes it difficult to obtain affidavits from persons who would be competent to testify at

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trial.” Flynt Distrib. Co., Inc. v. Harvey, 734 F.2d 1389, 1394 (9th Cir. 1984). “The trial court

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may give even inadmissible evidence some weight, when to do so serves the purpose of

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preventing irreparable harm before trial.” Id.

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“The court may issue a preliminary injunction or a temporary restraining order only if

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the movant gives security in an amount that the court considers proper to pay the costs and

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damages sustained by any party found to have been wrongfully enjoined or restrained.” Fed. R.

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Civ. P. 65(c).

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III. DISCUSSION

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Regardless of whether the Court finds that Plaintiffs can satisfy the Winter test, or the

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Ninth Circuit’s Cottrell sliding scale test, the Court need not reach these questions at this time

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because Plaintiffs have failed to satisfy the requirements for the issuance of a temporary

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restraining order pursuant to Rule 65(b)(1).

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A “court may issue a temporary restraining order without written or oral notice to the

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adverse party or its attorney only if: (A) specific facts in an affidavit or a verified complaint

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clearly show that immediate and irreparable injury, loss, or damage will result to the movant

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before the adverse party can be heard in opposition; and (B) the movant’s attorney certifies in

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writing any efforts made to give notice and the reasons why it should not be required.” Fed. R.

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Civ. P. 65(b)(1).

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Having reviewed Plaintiffs’ Complaint (ECF No. 1), Emergency Ex Parte Motion for

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Temporary Restraining Order (ECF No. 3), the Declaration of Iori Suzuki (ECF No. 7), the

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Declaration of Fardad Niknam (ECF No. 8), and Plaintiffs’ Proposed Order Granting Plaintiffs’

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Emergency Ex Parte Motion for Temporary Restraining Order (ECF No. 9), it is unclear

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whether Plaintiffs’ attorney has satisfied Rule 65(b)(1)(B).

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More important, Plaintiffs fail to include any basis for the Court to make the required

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Rule 65(b)(1)(A) findings justifying the issuance of a temporary restraining order, as opposed

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to a preliminary injunction, and notably fail to even acknowledge these separate requirements

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for the issuance of a temporary restraining order (see Em. Ex Parte Mot. TRO, 12:15–26).

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In their motion, which is identical to their Motion for Preliminary Injunction (ECF No.

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5), Plaintiffs argue that if Defendants are given notice before an injunction is issued, they will

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“promote and sell infringing products at SEMA and then flee to China to fill sales orders and

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build additional business,” and Plaintiffs “will be deprived of the ability to address its damages

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and extent of its injuries, including long-term loss of market share and concomitant erosion of

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exclusive patent and trademark rights.” (Em. Ex Parte Mot. TRO, 18:23–25, ECF No. 3.)

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However, this argument provides no specific facts that clearly show why Defendants’

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promotion and sale of infringing products at SEMA and subsequent flight to China will deprive

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Plaintiffs of their ability to address their damages and the extent of their injuries if an injunction

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is not issued before Defendants can be heard in opposition. Although Plaintiffs may be able to

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carry their burden for the issuance of a preliminary injunction, the Court cannot find that the

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issuance of an injunction without notice to Defendants (in the form of a temporary restraining

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order) is appropriate.

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Accordingly, the Court cannot find that Plaintiff has satisfied the requirements for the

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issuance of a temporary restraining order pursuant to Rule 65, and the Court must therefore

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deny Plaintiffs’ Emergency Ex Parte Motion for Temporary Restraining Order (ECF No. 3).

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IV. CONCLUSION

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IT IS HEREBY ORDERED that the Emergency Ex Parte Motion for Temporary

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Restraining Order (ECF No. 3) is DENIED.

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DATED this 8th day of November, 2013.
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Gloria M. Navarro
United States District Judge

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