Debell Windows Systems, Inc. v. Dabella Exteriors, LLC et al

Filing 44

ORDER - Plaintiff's Motion for Preliminary Injunction (ECF No. 8 ) is granted in part, and denied in part, as specified herein, including instructions to Defendants. Any and all disputes about the disclaimer that arise while this case is pending - whether to form, usage, content, or otherwise - are referred to U.S. Magistrate Judge William G. Cobb. The parties must meet and confer in an attempt to resolve any disclaimer disputes before bringing them to Judge Cobb. Plaintiff's M otion for Leave to File Additional Evidence in Support of its Motion for Preliminary Injunction (ECF No. 35 ) is denied. (See PDF image for additional details). Signed by Chief Judge Miranda M. Du on 9/21/2020. (Copies have been distributed pursuant to the NEF - AB)

1
2
3

UNITED STATES DISTRICT COURT

4

DISTRICT OF NEVADA

5

***

6

DEBELL WINDOWS SYSTEMS, INC.,

7

Plaintiff,

DABELLA EXTERIORS, LLC, et al.,
Defendants.

10
11

ORDER

v.

8
9

Case No. 3:20-cv-00420-MMD-WGC

I.

SUMMARY

12

In this trademark infringement case, Plaintiff DeBell Window Systems, Inc. seeks

13

to preliminarily enjoin Defendants Dabella Exteriors, LLC and Damselfly Improvement,

14

LLC, doing business as DaBella, from using their DaBella name and mark in Northern

15

Nevada to promote or market their business in any way—including on Defendants’

16

website.1 (ECF No. 8 (the “Motion”).)2 The Court held a hearing on the Motion on August

17

26, 2020, where Plaintiff’s co-owner Melissa D’Andrea testified, as well as Defendants’

18

regional manager Daniel Lowenson. (ECF Nos. 31 (“Hearing”), 43 (hearing transcript).)

19

As further explained below, the Court will grant the Motion because Plaintiff made a

20

sufficient preliminary showing it owns a federally registered trademark, and that Defendant

21

is now using a confusingly similar junior mark in the Northern Nevada area, but will limit

22
23
24
25
26
27
28

1Plaintiff

withdrew its original request for an injunction that covered the entire state
of Nevada, Truckee, California, and South Lake Tahoe, California, at the Hearing. Plaintiff
also clarified it was not seeking to have Defendants remove the DaBella name from their
nationwide website, but maintains Defendants should change the name on their Nevadaspecific website and rename their Nevada operation. (ECF No. 43 at 114.)
2Plaintiff

concurrently filed a motion for temporary restraining order (“TRO Motion”)
(ECF No. 7) with its Motion, and Defendant filed a motion to seal along with its response
to the Motion (ECF No. 18). The Court addressed those two motions at the Hearing. (ECF
No. 31.) In addition, and separately, Plaintiff’s Motion cites to exhibits to its TRO Motion.
Thus, the Court will cite to exhibits to Plaintiff’s TRO Motion.

1

the scope of Plaintiff’s requested injunction because it finds Plaintiff’s requested injunctive

2

relief overbroad. This order also addresses two motions Plaintiff filed after the Hearing

3

seeking to supplement the Motion.

4

II.

Except where stated, the following facts appear without dispute in the preliminary

5
6

BACKGROUND

injunction record.

7

A. Plaintiff and Its Mark

8

Plaintiff is a home-improvement business that has been operating in Reno, Nevada,

9

and the surrounding area, since 1990. (ECF No. 8 at 4.) Working with a graphic designer,

10

Plaintiff’s founder arbitrarily chose the name DeBell and the Debell logo for his business

11

around the time of its founding. (Id.) The logo looks like this:

12
13
14
15
16

(Id.) Plaintiff “sells windows, doors, siding, roofing, insulation, bathtubs, and exterior

17

protection and uses its team of independent contractors to provide installation services.”

18

(Id. at 4.) Plaintiff operates out of a showroom in Reno, and also sends salespeople to

19

customers’ houses. (Id. at 5.)

20

That said, Plaintiff’s federally registered mark is not for the logo—it is for the word

21

“DeBell,” in any format or stylization. (Id.; see also ECF No. 7-4.) Plaintiff’s federal

22

registration issued on June 29, 1999. (ECF No. 7-4 at 2.) It covers: “Construction services,

23

namely, planning, laying out, and custom instillation of window units and sun and patio

24

rooms…” (Id.) Plaintiff also maintains it has common law trademark rights in “DeBell”

25

because of its use in commerce for the last 30 years or so. (ECF No. 8 at 5.)

26

///

27

///

28

///
2

1

Plaintiff has since its founding, and continues to, advertise in Reno and the

2

surrounding area. (Id.; see also ECF No. 7-1 at 3-5.)3 Plaintiff advertises on television, in

3

print, and in the local RedPlum circular. (ECF No. 7-1 at 3-5.) Plaintiff also advertises via

4

shopping-cart inserts, direct mail, and its website, debellinc.com. (Id.) Plaintiff estimates it

5

is on track to spend more than $1 million on advertising in 2020 alone. (Id. at 4.) That said,

6

much of Plaintiff’s business comes through word-of-mouth. (Id. at 4-5.) Many of Plaintiff’s

7

customers are older, and refer their children and grandchildren to Plaintiff. (Id.) Plaintiff

8

has a customer list of over 7,500 prior customers. (Id. at 4.)

9

B. Defendants and Their Mark

10

Defendants were founded in Oregon in 2011. (ECF No. 17 at 2, 9.) Defendants are

11

also in the home-remodeling business, both selling and offering installation of windows,

12

roofing, and other products. (Id. at 2.) Defendants came up with the name DaBella by

13

combining the names of the owners’ twins, David and Isabella. (Id.) Unlike Plaintiff,

14

Defendants have been rapidly expanding since 2011, moving from Oregon into a number

15

of other states. (Id.) As most pertinent to this case, Defendants expanded into Nevada

16

earlier in 2020. (Id. at 3.) Defendants’ expansion into Nevada led to the conflict here.

17

Back in 2013, Defendants registered two trademarks they have since let lapse:

18

“DaBella Exteriors” and “The DaBella Difference!” (Id. at 2.) In 2018, Defendants

19

rebranded and created the mark at issue in this case: the word “DaBella” with a greenish

20

butterfly icon next to it. (Id.) Defendants obtained federal registration for their trademark in

21

April 2019, and Plaintiff did not oppose that registration. (Id.; see also ECF No. 16-17.)

22

“The mark consists of a butterfly to the left of the word ‘DABELLA’” (ECF No. 16-17 at 2.)

23

Defendants’ registered mark looks like this:

24
25
26
27
28

No. 7-1 is the declaration of Plaintiff’s co-owner William D’Andrea. His wife,
Mrs. D'Andrea, offered confirmatory testimony at the Hearing. (ECF Nos. 31, 43.)
3ECF

3

1
2

(ECF No. 17 at 2-3.) Defendants’ mark covers: “residential remodeling services, namely,

3

installation of roofing, siding, windows doors, and gutter systems[.]” (Id.)

4

Defendants also advertise heavily, though their strategy is more focused on the

5

internet than Plaintiff’s. (ECF No. 17 at 3.) Defendants say they have spent more than $48

6

million on marketing and advertising since 2011. (Id.) They also say their rebranding effort

7

connected to the logo displayed above cost them about $1.8 million. (Id.) Defendants

8

conduct their “marketing in Nevada through the internet, Facebook, canvassing and

9

telemarketing.” (Id.) Mr. Lowenson offered generally confirmatory testimony at the

10

Hearing.

11

C. The Parties’ Interactions

12

According to testimony from both parties’ witnesses at the Hearing and the parties’

13

briefing, the parties became aware of each other earlier this year, after Defendants

14

expanded into Plaintiff’s market. Plaintiff says it became aware of Defendants because its

15

representatives had several interactions with customers where Plaintiff’s representatives

16

eventually determined that those customers had confused DeBell for DaBella. (ECF No.

17

8 at 7-11.) This prompted Plaintiff’s co-owner Mrs. D’Andrea to write a Yelp review on

18

Defendants’ Yelp page to the effect that “DaBella was wrongly trading on DeBell’s name

19

and reputation and that it was unlawfully using the confusingly similar DaBella name.” (Id.

20

at 11.) Defendants say this is the first time they had heard of Plaintiff, and attached a copy

21

of Mrs. D’Andrea’s conversation with one of Defendants’ representatives as an exhibit to

22

their response to the Motion. (ECF Nos. 17 at 3-4, 16-7.)

23

Following the Yelp conversation in March 2020, and also following another alleged

24

incident of direct consumer confusion, Mrs. D’Andrea requested that the Nevada State

25

Contractors Board force Defendants to stop using the DaBella name in May 2020. (ECF

26

No. 8 at 11.) A few days later, Plaintiff retained litigation counsel. (Id.) On May 26, Plaintiff’s

27

counsel sent Defendants a cease-and-desist letter. (Id.) The letter included a response

28

deadline of June 1, 2020. (Id.) Not having received a response to its letter, Plaintiff initiated
4

1

this suit in state court on July 8, 2020. (Id. at 12.) Defendants removed the case to this

2

Court on July 13. (Id.) Plaintiff filed its Motion on July 15. (See generally id.)

3

Plaintiff’s Complaint contains five claims: (1) trademark infringement under the

4

federal Lanham Act, specifically 15 U.S.C. § 1114(1)(a); (2) unfair competition under the

5

Lanham Act, specifically 15 U.S.C. § 1125(a)(1)(A); (3) cancellation of Defendants’

6

trademark registration under 15 U.S.C. § 1064; (4) common-law trademark infringement;

7

(5) and common-law unfair competition. (ECF No. 1-2 at 13-17.) Plaintiff’s Motion focuses

8

entirely on its first claim, for trademark infringement under the Lanham Act. (ECF No. 8.)

9

Plaintiff clarified at the Hearing it seeks a preliminary injunction on its first and fourth claims

10

for trademark infringement, as the applicable legal standards are basically the same for

11

both the federal and common law trademark infringement claims. (ECF No. 43 at 112-13.)

12

This order thus only addresses trademark infringement.

13

III.

DISCUSSION

14

The Court first addresses Plaintiff’s post-hearing briefing, then Defendants’

15

argument that Plaintiff’s claim is barred by the doctrine of laches—the Court finds it is

16

not—and then addresses each component of Plaintiff’s Motion.

17

A. Post-Hearing Briefing

18

At the Hearing, the Court raised the possibility of preliminarily requiring Defendants

19

to include some sort of disclaimer on their marketing materials instead of granting Plaintiff

20

the broad injunction it sought in its briefing, and both parties responded to the Court’s

21

questions. (ECF No. 31.) Neither party had previously briefed whether a disclaimer would

22

be a suitable compromise.

23

After the Hearing, Plaintiff filed a motion for leave to file supplemental authorities

24

regarding the Court’s disclaimer proposal. (ECF No. 33.) The Court granted this motion

25

by minute order because the parties had not previously had an opportunity to brief the

26

disclaimer issue, and gave Defendants the opportunity to respond. (ECF No. 34.)

27

Defendants filed a response. (ECF No. 39.)

28

///
5

1

Later the same day that Plaintiff filed its motion for leave to file supplemental

2

authorities on the disclaimer issue, Plaintiff filed another motion for leave to supplement

3

the evidentiary record of its Motion with an additional instance of consumer confusion, and

4

additional evidence of Plaintiff’s use of the DeBell mark in commerce. (ECF No. 35

5

(“Supplemental Evidence Motion”).) Defendants filed a response to that motion (ECF No.

6

38), and Plaintiff filed a reply (ECF No. 40). As the Court has not yet ruled on the

7

Supplemental Evidence Motion, it does so here.

8

The Court will deny the Supplemental Evidence Motion because it is cumulative

9

and unnecessary. As further explained below, the evidence Plaintiff submitted with its

10

Motion and at the Hearing is sufficient to establish both use in commerce of the DeBell

11

mark and instances of actual confusion. The evidence Plaintiff seeks to introduce through

12

the Supplemental Evidence Motion is therefore cumulative and unnecessary. Relatedly,

13

and as also explained below, the Court has been consistently unpersuaded by

14

Defendants’ argument at the Hearing that the testimony of Plaintiff’s owners (both written

15

and oral) is not evidence. Plaintiff’s Supplemental Evidence Motion—at least in part—

16

appears calculated to further rebut that argument. But because the Court found that

17

argument unpersuasive before Plaintiff even filed the Supplemental Evidence Motion, the

18

evidence Plaintiff offers in the Supplemental Evidence Motion is unnecessary for that

19

additional reason. In sum, the Supplemental Evidence Motion (ECF No. 35) is denied.

20

B. Laches

21

Defendants argue that Plaintiff cannot establish irreparable harm because it waited

22

to move for a preliminary injunction, invoking the doctrine of laches. (ECF No. 17 at 6-9.)

23

Perhaps out of an abundance of caution, Plaintiff interprets Defendants’ argument

24

broadly—that Plaintiff’s case is barred by laches, and replies that it is not. (ECF No. 21 at

25

3-5.) Reflecting that Defendants’ argument is unclear, and responding to the fact Plaintiff

26

interpreted it more broadly, the Court addresses laches as a threshold issue.

27

“Laches is an equitable time limitation on a party’s right to bring suit ... [and] is a

28

valid defense to Lanham Act claims.” Reno Air Racing Ass’n., Inc. v. McCord, 452 F.3d
6

1

1126, 1138 (9th Cir. 2006) (quoting Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d

2

829, 835 (9th Cir. 2002)). “[I]n determining the presumption for laches, the limitations

3

period runs from the time the plaintiff knew or should have known about his § 43(a) cause

4

of action.” Jarrow, 304 F.3d at 838.

5

The parties’ key dispute here is when Plaintiff should have known about its

6

trademark infringement cause of action. Defendants argue Plaintiff should have known

7

about the DaBella mark from the date it was registered (in 2019), but then go on to argue

8

Plaintiff should have been aware of Defendants’ alleged infringement from 2013—when

9

Defendants registered two trademarks they have since let lapse: “DaBella Exteriors” and

10

“The DaBella Difference!” (ECF No. 17 at 6-9.) Plaintiff persuasively replies this argument

11

does not follow, both because Defendants allowed those marks to be cancelled, so the

12

laches clock should have started in 2019 when Defendants registered the DaBella mark,

13

and Defendants are otherwise incorrect because Plaintiff only became aware of

14

Defendants’ use of the DaBella mark in March 2020, shortly after Defendants entered the

15

Nevada market for the first time. (ECF No. 21 at 3-5.) The Court agrees with Plaintiff.

16

To start, Defendants’ argument is unpersuasive because it attempts to start the

17

laches clock with two cancelled trademarks not at issue in this case beyond showing that

18

Defendants have used some version of a phrase including the word ‘DaBella’ since 2011.

19

(ECF No. 17 at 6-9.) As Plaintiff argues, even if one accepts Defendants’ incorrect premise

20

that constructive notice through registration always triggers the beginning of a laches

21

period, the DaBella mark registered in 2019 is the mark at issue here, not the cancelled

22

marks registered in 2013. (ECF No. 21 at 5.) Defendants’ argument based on the

23

cancelled marks registered in 2013 is thus a red herring.

24

Moreover, the Court agrees with Plaintiff that Defendants’ view of laches is too rigid.

25

Registration does not start the laches clock running in every case. Instead, it starts running

26

when Plaintiff knew or should have known about its cause of action. See Reno Air Racing,

27

452 F.3d at 1138. This flexible inquiry is “grounded in the fact that laches penalizes

28

inexcusable dilatory behavior; if the plaintiff legitimately was unaware of the defendant’s
7

1

conduct, laches is no bar to suit.” Id. at 1139. And that appears to be the case here. Plaintiff

2

argues it was not aware of Defendants until March 2020, and Defendants do not proffer

3

any evidence or argument to the contrary. (ECF Nos. 8, 17, 43.) Defendants only argue

4

that Plaintiff should have known about Defendants earlier4—either by monitoring the

5

trademark register or the internet. (ECF No. 17 at 6-9.) That imposes too heavy a burden

6

on Plaintiff. The Court instead agrees with Plaintiff any laches period only began running

7

in this case when it had undisputed, actual notice of Defendants’ allegedly infringing use

8

of the DaBella mark—March 2020. And since March was not so long ago, laches does not

9

bar Plaintiff’s case.

10

Two cases proffered by Plaintiff further illustrate why Plaintiff’s position is more

11

persuasive than Defendants on this laches issue. Both cases are partially about Reno,

12

which is appropriate given that Plaintiff is well established in this area, but not well-known

13

elsewhere. In Reno Air Racing, the Ninth Circuit found that laches did not bar the plaintiff’s

14

trademark infringement claim against a seller of T-Shirts and other merchandise that used

15

the plaintiff’s logo without authorization, even though he had sold a small amount of

16

infringing merchandise for years. See 452 F.3d at 1128-29, 1138-39. The Ninth Circuit

17

noted there was no evidence the plaintiff was aware of the defendant’s allegedly infringing

18

conduct before 2000, when the plaintiff attempted to contact the defendant, and further

19

noted that the earliest the plaintiff should have known about the defendant was the year

20

before, when the defendant began selling his infringing merchandise right outside the

21

gates of the plaintiff’s air show. See id. at 1139. Thus, in Reno Air Racing, the Ninth Circuit

22

used a commonsense approach to laches that focused on the defendant’s geographic

23

proximity to the plaintiff’s business activity.

24

Similarly, in Great Basin Brewing Co. v. Healdsburg Brewing Co., Case No. CV-N-

25

97-161-ECR, 1997 WL 745035 (D. Nev. Oct. 3, 1997), Judge Reed of this District rejected

26
27
28

4But

as noted, Defendants apparently were not aware of Plaintiff either, despite
their entry into the Nevada market.
8

1

a laches argument and issued a preliminary injunction in an analogous trademark case.

2

The plaintiff, a Reno brewery, sold a beer called Wild Horse Ale, but only on tap at its brew

3

pub in the Reno area. See id. at *1. The defendant, a brewery in Northern California, also

4

sold a beer called Wild Horse, but in bottles, primarily to distributors in Northern California,

5

but also one in Reno, and one national direct mail distributor. See id. The plaintiff was the

6

senior user of the mark. See id. Judge Reed rejected the defendant’s laches argument

7

within the likelihood of irreparable harm prong of the preliminary injunction analysis

8

because, while the plaintiff had been aware of the defendant’s allegedly infringing use for

9

some time, the plaintiff filed the case soon after it learned that the defendant had sold

10

some of the allegedly infringing beer into the Reno area. See id. at *7-*9. Judge Reed

11

ultimately granted the plaintiff a preliminary injunction geographically limited to Nevada,

12

where the plaintiff’s beer was well-known, and which did not cover California, where the

13

defendant’s beer was better-known. See id. at *9-*10.

14

Both of these cases suggest that the laches triggering date should be the date

15

Defendants moved into the Northern Nevada market. There is no dispute this was in early

16

2020. (ECF No. 17 at 3.) Plaintiff’s co-owner contacted Defendants in late March, and

17

Plaintiff eventually filed suit in July, with escalating actions in between. Plaintiff’s case is

18

not barred by laches.

19

C. Motion

20

A preliminary injunction is “an extraordinary remedy that may only be awarded upon

21

a clear showing that the plaintiff is entitled to such relief.” Winter v. Nat. Res. Def. Council,

22

Inc., 555 U.S. 7, 24 (2008).To qualify for a preliminary injunction, a plaintiff must

23

demonstrate: (1) a likelihood of success on the merits; (2) a likelihood of irreparable harm;

24

(3) that the balance of hardships favors the plaintiff; and (4) that the injunction is in the

25

public interest. See id. at 20. The Court addresses each of the factors in turn.

26

1.

Likelihood of Success on the Merits

27

To establish a likelihood of success on the merits of a trademark infringement claim,

28

the plaintiff must establish that she is “(1) the owner of a valid, protectable mark, and (2)
9

1

that the alleged infringer is using a confusingly similar mark.” Grocery Outlet, Inc. v.

2

Albertson’s, Inc., 497 F.3d 949, 951 (9th Cir. 2007). While it appeared to the Court from

3

reviewing the parties’ briefing they did not dispute the ownership or validity of Plaintiff’s

4

mark for purposes of this Motion, Defendants argued at the Hearing Plaintiff has not

5

established it used its mark in commerce. (ECF No. 43 at 128-35.) To the extent

6

Defendants intended that argument as an attack on the validity or ownership of Plaintiff’s

7

mark, the Court will address it here before moving on to determine whether the two marks

8

are likely to cause confusion in the marketplace.

9

Defendants’ argument is that Plaintiff has not proffered evidence it has ever used

10

its mark in commerce. (Id.) Plaintiff responded at the Hearing by pointing to the declaration

11

of one of its owners, Mr. D’Andrea, and the confirmatory testimony of its other owner, Mrs.

12

D’Andrea. (Id. at 147.) Plaintiff also responded that declarations and testimony are

13

evidence. (Id.) The Court agrees with Plaintiff.

14

As a general matter, testimony and declarations are evidence. See, e.g., U.S. v.

15

Black, 543 F. App’x 664, 672 (9th Cir. 2013) (“The statement was supported by evidence

16

because [the witness] was a percipient witness, and his testimony is evidence.”)

17

(emphasis in original); see also Herb Reed Enterprises, LLC v. Fla. Entm’t Mgmt., Inc.,

18

736 F.3d 1239, 1248, 1251 (9th Cir. 2013) (stating the Court “permissibly relied on the

19

declaration” of one of the parties’ general managers in considering a motion for a

20

preliminary injunction in a trademark case, though reversing and remanding because “the

21

record fails to support a finding of likely irreparable harm”). Thus, Defendants’ argument

22

that Plaintiff presented no evidence of its mark’s use in commerce is simply wrong.

23

Turning to Plaintiff’s proffered evidence, Mr. D’Andrea writes in his declaration that

24

Plaintiff has extensively advertised, marketed, and promoted the DeBell mark, and has

25

spent millions on it. (ECF No. 7-1 at 4.) He says Plaintiff has advertised on television, in

26

print, in the RedPlum circular, and via both shopping cart inserts and direct mail. (Id.) He

27

says Plaintiff is on track to spend more than $1 million on advertising this year alone, and

28

enjoys name recognition through word-of-mouth. (Id. at 4-5.) His wife Mrs. D’Andrea
10

1

offered confirmatory testimony at the Hearing. (ECF No. 43.) The Court finds Mr.

2

D’Andrea’s declaration in conjunction with Mrs. D’Andrea’s testimony provide sufficient

3

evidence that Plaintiff has used—and continues to use—the DeBell mark in commerce.5

4

Moving on, the Ninth Circuit uses the non-exhaustive eight factor Sleekcraft test for

5

determining likelihood of consumer confusion: (1) strength of the mark; (2) proximity or

6

relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5)

7

marketing channels used; (6) type of goods and the degree of care likely to be exercised

8

by the purchaser; (7) the defendant’s intent in selecting the mark; and (8) the likelihood of

9

expansion of the product lines. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 &

10

n.11 (9th Cir. 1979), abrogated in part on other grounds by Mattel, Inc. v. Walking

11

Mountain Prods., 353 F.3d 792, 810 (9th Cir. 2003). “Some Sleekcraft factors are much

12

more important than others, and the relative importance of each individual factor will be

13

case specific.” M2 Software, Inc., v. Madacy Entm’t, 421 F.3d 1073, 1080 (9th Cir. 2005)

14

(quotation marks and citation omitted). “In essence, the test for likelihood of confusion is

15

whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to

16

the origin of the good or service bearing one of the marks.” Id. (citations and brackets

17

omitted).

18

Though Plaintiff does not explicitly specify either way, Plaintiff appears to allege

19

forward confusion between Plaintiff and Defendants’ marks. (See generally ECF No. 1-2.)

20

“In the usual [forward] infringement case,” a court must determine “whether [the] junior

21

user is palming off its products as those of the senior user. Would a consumer who finds

22

a running shoe marked Mike be bamboozled into thinking that it was manufactured by

23
24
25
26
27
28

5Moreover,

to the extent Defendants argue the Court should discount Plaintiff’s
evidence because it is self-serving, the Court declines to do so. Absent any evidence Mr.
D’Andrea is lying—and Defendants have not proffered any—the Court must assume Mr.
D’Andrea’s statements regarding Plaintiff’s use of its mark in commerce in his sworn
declaration are true. (ECF No. 7-1 at 6.) Similarly, Mrs. D’Andrea was sworn in at the
Hearing before giving her testimony. (ECF No. 43 at 6.) The Court therefore rejects
Defendants’ apparent baseless attack on the D’Andreas’ credibility.
11

1

Nike?” Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129-30 (9th Cir.

2

1998).
a.

3

Factor 1: Strength of the Mark

4

“The more likely a mark is to be remembered and associated in the public mind with

5

the mark’s owner, the greater protection the mark is accorded by trademark law.”

6

GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000) (citation omitted).

7

“The strength of the trademark is evaluated in terms of its conceptual strength and

8

commercial strength.” SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 846 F. Supp. 2d

9

1063, 1078 (N.D. Cal. 2012) (citation omitted). Therefore, the Court considers the

10

conceptual and commercial strength of Plaintiff’s mark.
i.

11

Conceptual Strength

12

“The conceptual strength of a mark refers to its categorization on the continuum of

13

‘genericness’ to arbitrariness, with arbitrary marks being entitled to the highest degree of

14

protection from infringement.” Moose Creek, Inc. v. Abercrombie & Fitch Co., 331 F. Supp.

15

2d 1214, 1224 (C.D. Cal.), aff’d, 114 F. App’x 921 (9th Cir. 2004). “Generic marks are

16

those that refer to the genus of which the particular product is a species.” One Indus., LLC

17

v. Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1164 (9th Cir. 2009) (citing Two Pesos, Inc. v.

18

Taco Cabana, Inc., 505 U.S. 763, 768 (1992) (internal quotation marks omitted)).

19

“Descriptive terms directly describe the quality or features of the product.” Brookfield

20

Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1058 n.19 (9th Cir. 1999). “A

21

suggestive mark conveys an impression of a good but requires the exercise of some

22

imagination and perception to reach a conclusion as to the product’s nature.” Id. “Finally,

23

arbitrary and fanciful marks have no intrinsic connection to the product with which the mark

24

is used; the former consists of words commonly used in the English language . . . whereas

25

the latter are wholly made-up terms.” Id. (quotation marks and citation omitted).

26

Here, there is no dispute that Plaintiff’s mark is arbitrary. (ECF Nos. 8 at 14-15, 17

27

at 14.) Thus, Plaintiff’s mark is conceptually strong. See, e.g., Moose Creek, 331 F. Supp.

28

2d at 1224.
12

ii.

1

Commercial Strength

2

“Identifying whether a mark is generic, descriptive, suggestive, arbitrary or fanciful,

3

however, is only the first step of the inquiry.” One Indus., 578 F.3d at 1164. “The second

4

step is to determine the strength of this mark in the marketplace.” Id. (citation omitted)

5

Commercial strength is based on actual marketplace recognition, and thus advertising

6

expenditures are often a sound measure of commercial success. See Network

7

Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1149 (9th Cir. 2011).

8

Plaintiff argues that, given its “30 years of commercial success, large list of prior

9

customers, and constant advertising, the DeBell Mark is also commercially strong.” (ECF

10

No. 8 at 15.) Defendants counter Plaintiff’s mark is weak because it only engages in local

11

rather than national advertising, and spends much less money on advertising than

12

Defendants do. (ECF No. 17 at 14-15.)

13

The Court finds Plaintiff’s mark is somewhat commercially strong. As discussed

14

supra as to Defendants’ use in commerce argument, the Court credits the written and oral

15

testimony of the D’Andreas as establishing that their mark is somewhat commercially

16

strong in Reno, Nevada. Plaintiff has been in business for 30 years, has a customer list of

17

over 7,500 prior customers, is on track to spend over $1 million in advertising this year

18

alone, and obtains much of its business from generational word-of-mouth marketing,

19

where parents pass DeBell’s name onto their grown children when those grown children

20

need, for example, their windows replaced. (ECF No. 7-1.) However, all of Plaintiff’s

21

proffered evidence of commercial strength goes to its commercial strength in Reno,

22

Nevada. Defendants are a bigger business in other locations beyond Reno. (ECF No. 16-

23

1 at 2 (explaining Defendants operate in 11 different states), 7-8 (indicating Defendants

24

have won some awards and enjoy a generally positive reputation on online review sites),

25

8-9 (partially redacted) (indicating Defendants have spent many millions on advertising).)

26

Regardless, because Plaintiff did not proffer any evidence of the commercial strength of

27

its mark outside of Reno, Nevada, the Court finds Plaintiff’s mark is merely somewhat

28

commercially strong.
13

Overall, this factor favors Plaintiff because Plaintiff’s mark is conceptually strong,

1
2

and somewhat commercially strong.
b.

3

Factor 2: Proximity or Relatedness of the Goods

4

“The standard for deciding whether the parties’ goods or services are related is

5

whether customers are ‘likely to associate’ the two product lines.” Surfvivor Media, Inc. v.

6

Survivor Prods., 406 F.3d 625, 633 (9th Cir. 2005) (citation and remaining internal

7

quotation marks omitted); see also Sleekcraft, 599 F.2d at 350 (goods are related when

8

there is a likelihood that the consumer will “assume there is an association between the

9

producers of the related goods, though no such association exists.”). “Proximity of the

10

parties’ goods exists where they are (1) complementary, (2) sold to the same class of

11

purchasers, or (3) are similar in use or function.” Matrix Motor Co. v. Toyota Jidosha

12

Kabushiki Kaisha, 290 F. Supp. 2d 1083, 1092 (C.D. Cal. 2003) (citing Sleekcraft, 599

13

F.2d at 350).

14

Plaintiff argues this factor weighs in favor of finding confusion because the parties

15

sell identical goods and services—in some cases even using the same subcontractors to

16

install the products customers purchase. (ECF No. 8 at 16.) While Defendants concede

17

that both parties sell and install windows, they argue their product line is distinct because

18

Defendants offer several exclusive lines of windows. (ECF No. 17 at 15.) Defendants also

19

counter that the parties do not use the same subcontractors, and offer affidavits from

20

several subcontractors stating they do not also work for Plaintiff.6 (Id.)

21

///

22

///

23
24
25
26
27
28

6Defendants

also argue that Plaintiff falsely claims it sells products other than
windows because it only has a license to install windows (ECF No. 17 at 15), but that
argument in unpersuasive in light of Plaintiff’s reasonable reply that it uses licensed
subcontractors to install products other than windows, such as roofing, siding, and
bathtubs (ECF No. 21 at 11).
14

1

Regardless of whether Plaintiff and Defendants use the same subcontractors,7 this

2

factor favors Plaintiff. Both Plaintiff and Defendants sell similar products to homeowners

3

looking to renovate their houses. Defendants’ attempted distinction between the specific

4

windows they sell, and the specific windows Plaintiff sells, is a distinction without a

5

difference. Notably, Defendants do not proffer any legal authority to support their

6

argument—probably because no such authority exists. Moreover, and as Plaintiff points

7

out in reply, Defendants concede both Plaintiff and Defendants sell and install residential

8

windows in Northern Nevada, making them direct competitors in that particular market.

9

(ECF No. 21 at 11.) The Court’s focus must be on “whether the consuming public is likely

10

somehow[,]” to associate Plaintiff’s products with Defendants’, and vice-versa. Brookfield,

11

174 F.3d at 1056. Considering that both parties sell and offer the same products in the

12

same geographical location—installation of windows in the Northern Nevada area—this

13

factor favors Plaintiff.
c.

14

Factor 3: Similarity of the Marks

15

Courts consider “sight, sound and meaning to determine the similarity of

16

competing marks.” One Indus., 578 F.3d at 1162 (quotation marks and citation omitted).

17

“In considering the degree of similarity between the two marks, courts should analyze each

18

mark within the context of other identifying features.” Surfvivor, 406 F.3d at 633.

19

Plaintiff argues this factor favors finding likely confusion because the words in

20

Plaintiff and Defendants’ marks are both visually and phonetically similar, and they do not

21

have dissimilar meanings, because both words lack any inherent meaning. (ECF No. 8 at

22

15.) Plaintiff also argued at the Hearing the marks’ phonetic similarity is particularly

23

important because much of their business is word-of-mouth. Defendants focus on the

24

visual dissimilarities between the two logos in arguing this factor does not favor finding

25

likely confusion—Plaintiff’s has a window, while Defendants’ has a butterfly—and highlight

26
27
28

7Plaintiff

proffers another affidavit along with its reply stating that one of their
subcontractors overlaps. (ECF No. 21 at 11 n.22; see also ECF No. 21-1.)
15

1

the phonetic differences between the two—DaBella has two ‘a’ sounds, while DeBell does

2

not. (ECF No. 17 at 15-17.) The Court again agrees with Plaintiff.

3
4

While the parties’ logos (in Plaintiff’s case, including the mark, whereas in
Defendants’ case, the logo is the mark) are not visually identical, they are similar:

5
6
7
8
9

(ECF No. 17 at 16.) Plaintiff’s logo has a window, and dark green text with a yellow shadow

10

and a ‘shine’ effect. Defendants’ mark has simpler gray text with a butterfly. But both logos

11

have some amount of green and gray, and both have a pictorial element to the viewer’s

12

left of the textual element.

13

The words in the two marks are more similar. By swapping two es for two as, one

14

moves from DeBell to DaBella. They are also phonetically similar, especially considering

15

that they both refer to home improvement businesses. The Court finds the phonetic

16

similarity more important than the visual similarity here because Plaintiff’s mark covers the

17

word “DeBell” in any format or stylization, not just the logo. (ECF No. 7-4.) And especially

18

given Plaintiff’s proffered evidence that much of its business is word-of-mouth (ECF No.

19

7-1 at 4-5), a reasonable consumer could easily confuse DeBell for DaBella when trying

20

to remember the name of a business someone told them about that will both sell you

21

windows and then install them for you. Moreover, as Plaintiff argues, both words lack

22

intrinsic meaning in the home-improvement context—neither word means anything.8

23

Because the textual and phonetic similarity slightly outweighs the visual dissimilarity

24

between the two marks, the Court finds this factor weighs slightly in Plaintiff’s favor.

25
26
27
28

is uncontested that Plaintiff’s owner came up with DeBell in consultation with a
graphic designer, and it does not mean anything. (ECF No. 7-1 at 3.) It is similarly
uncontested that Defendants’ owners came up with DaBella by combining the names of
their twins, David and Isabella, to indicate their business is family-focused. (ECF No. 161 at 2.)
8It

16

1

d.

Factor 4: Evidence of Actual Confusion

2

Plaintiff proffers several examples of actual confusion, and therefore argues this

3

factor weighs in its favor. (ECF No. 8 at 16.) Defendants respond this factor does not weigh

4

in Plaintiff’s favor primarily because Plaintiff’s proffered instances of actual confusion are

5

inadmissible hearsay, as they are described in the declarations of the D’Andreas (who, as

6

Plaintiff’s owners, of course have a financial stake in winning this case), instead of

7

declarations from the actual customers. (ECF No. 17 at 17.) Plaintiff replies, “the Ninth

8

Circuit has long held that, in trademark cases, a consumer’s statement regarding

9

confusion made to an employee is admissible under the state-of-mind exception.” (ECF

10

No. 21 at 2.) The Court agrees with Plaintiff.

11

The parties’ arguments as to the admissibility of Plaintiff’s consumer confusion

12

evidence highlight a tension between Lahoti v. Vericheck, Inc., 636 F.3d 501, 509 (9th Cir.

13

2011), which suggests the Court can consider Plaintiff’s proffered evidence, and JL

14

Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098, 1110-11 (9th Cir. 2016)

15

(affirming in pertinent part the Court’s ruling the applicable statements were hearsay),

16

which distinguished Lahoti, and suggests the Court may not. However, the Court finds

17

Plaintiff’s proffered consumer confusion evidence is more like the evidence found

18

admissible in Lahoti than the evidence found inadmissible in JL Beverage. The JL

19

Beverage court noted two distinguishing factors that made the actual confusion evidence

20

admissible under the state of mind hearsay exception in Lahoti that were not present in JL

21

Beverage: (1) the customers who were calling in (as reported in a company

22

representative’s declaration) were confused at the time they called, not after the fact; and

23

(2) the declarant did not have a close personal relationship with the confused people. See

24

JL Beverage, 828 F.3d at 1111.

25

Both of these factors apply to Plaintiff’s proffered actual confusion evidence. The

26

confused customers described by the D’Andreas in their declarations and testimony

27

appear confused at the time those interactions occurred, and the D’Andreas do not appear

28
17

1

to have had a close personal relationship with them. The Court specifically discusses four

2

of Plaintiff’s proffered instances of actual confusion, which the Court finds admissible.

3

First, Mrs. D’Andrea describes, both in her declaration and in her Hearing

4

testimony, a May 9, 2020 incident with a potential customer, Mr. Peters, where Mr. Peters

5

told Mrs. D’Andrea he was unhappy with an estimate appointment he just had with one of

6

Plaintiff’s representatives. (ECF No. 7-2 at 3-4.) Because Mr. Peters had not yet had his

7

estimate appointment with Plaintiff, Mrs. D’Andrea was able to deduce he actually had an

8

appointment with Defendants, which she and Mr. Peters later corroborated by reviewing

9

a copy of the contract Mr. Peters signed after the estimate appointment, which was with

10

Defendants. (Id.) Mr. Peters appears to have been confused at the time he spoke with

11

Mrs. D’Andrea on the phone, and there is no evidence tending to indicate he and Plaintiff

12

and its employees have any personal relationship. The Court thus finds this incident with

13

Mr. Peters is admissible under the state of mind exception to the hearsay rule. See JL

14

Beverage, 828 F.3d at 1111; see also Lahoti, 636 F.3d at 509.

15

Second, Mrs. D’Andrea describes, both in her declaration and in her Hearing

16

testimony, a May 13, 2020 incident with a potential customer named Mr. DeVay, where

17

Mr. DeVay told Mrs. D’Andrea he was unhappy with an estimate appointment he had the

18

previous day with Plaintiff. (ECF No. 7-2 at 4-5.) Because Plaintiff had not given an

19

estimate to Mr. DeVay the day before, Mrs. D’Andrea was able to determine Mr. DeVay

20

thought Plaintiff and Defendants were the same company. (Id.) Like Mr. Peters, Mr. DeVay

21

appears to have been confused at the moment he called Mrs. D’Andrea, and there is no

22

evidence tending to indicate he and Mrs. D’Andrea and Plaintiff have any relationship. The

23

Court thus finds this incident with Mr. DeVay is also admissible under the state of mind

24

exception to the hearsay rule. See JL Beverage, 828 F.3d at 1111; see also Lahoti, 636

25

F.3d at 509.

26

Third and fourth, Mrs. D’Andrea described at the Hearing a July 2, 2020 call with a

27

potential customer named “Eileen or Irene” (see ECF No. 7-2 at 5-6; see also ECF No. 43

28

at 32-35), and an August 15, 2020 call with a potential customer named Lucy (ECF No.
18

1

43 at 33-35). These interactions were very similar to the interactions with Mr. Peters and

2

Mr. DeVay described above, in that “Eileen or Irene” and Lucy appeared to have confused

3

Plaintiff with Defendants, did not appear to be friends with Mrs. D’Andrea or have any

4

relationship with Plaintiff, and the confusion played out in real time on the phone with Mrs.

5

D’Andrea, the person who is testifying to the fact these interactions occurred. Thus, also

6

similar to the interactions with Mr. Peters and Mr. DeVay, the Court finds the “Eileen or

7

Irene” and Lucy incidents are also admissible under the state of mind exception to the

8

hearsay rule.

9
10
11

In sum, Plaintiff has proffered at least four admissible incidents of actual confusion.
This factor therefore also weighs in Plaintiff’s favor.
e.

Factor 5: Marketing Channels Used

12

Plaintiff further argues its marketing channels overlap with Defendants, weighing

13

in favor of finding a likelihood of confusion. (ECF No. 8 at 16-17.) Plaintiff more specifically

14

argues that both Plaintiff and Defendants have a website with similar domain names, both

15

businesses rely on social media websites, review websites like Yelp, and in-person

16

estimate appointments for customers. (Id.) Defendants respond that the fact both parties

17

have an online presence alone is insufficient to demonstrate overlapping marking

18

channels—because the internet is ubiquitous. (ECF No. 17 at 18 (relying on Network

19

Automation, 638 F.3d at 1151).) Defendants further generally argue their advertising

20

strategy is more digital than Plaintiff’s, which relies on word of mouth, local circulars,

21

signage, and television advertisements. (Id.) Defendants also state they rely on internet

22

lead generators, Facebook, canvassing, and telemarking. (Id.) Plaintiff replies that it also

23

uses internet lead generators—specifically including modernize.com, also used by

24

Defendants—and Facebook. (ECF No. 21 at 11-12.)

25

The Court again agrees with Plaintiff. “Convergent marketing channels increase

26

the likelihood of confusion.” Groupion, LLC v. Groupon, Inc., 826 F. Supp. 2d 1156, 1164

27

(N.D. Cal. 2011) (quotation marks and citations omitted). While the parties may not pursue

28

identical marketing strategies, there is no real dispute that the marketing channels they
19

1

use significantly overlap. Both parties use internet lead generators, Facebook, have

2

websites, and canvass to one degree or another, because both parties provide in-home

3

estimates. (ECF Nos. 8 at 16-17, 17 at 18, 21 at 11-12.) The Court therefore finds that this

4

factor also weighs in favor of finding a likelihood of confusion.

5

f.

Factor 6: the Type of Good and Degree of Care Likely to
be Exercised by the Consumer

6
7

Plaintiff argues this factor favors finding a likelihood of confusion because both

8

parties market their products and services to unsophisticated homeowners, particularly

9

Plaintiff, whose average customer tends to be older and not careful when buying windows.

10

(ECF No. 8 at 17-18.) Defendants persuasively respond this factor weighs against finding

11

likely confusion because new windows and roofing systems are expensive purchases.

12

(ECF No. 17 at 18-19.)

13

“In assessing the likelihood of confusion to the public, the standard used by the

14

courts is the typical buyer exercising ordinary caution.” Sleekcraft, 599 F.2d at 353. What

15

is expected of this reasonably prudent consumer depends on the circumstances:

16
17
18
19
20

[w]e expect him [the reasonable consumer] to be more discerning – and less
easily confused – when he is purchasing expensive items, see, e.g., Official
Airline Guides, 6 F.3d at 1393 (noting that confusion was unlikely among
advertisers when the products in question cost from $2,400 to $16,000), and
when the products being sold are marketed primarily to expert buyers, see,
e.g., Accuride Int’l, Inc. v. Accuride Corp., 871 F.2d 1531, 1537 (9th Cir.
1989).
Brookfield, 174 F.3d at 1060.

21

Defendants state, and Plaintiff does not argue otherwise, that the average price

22

for new roofing in Nevada is over $20,000, and the average price for the installation of

23

window systems in Nevada is over $12,000. (ECF No. 17 at 18-19 (partially redacted).)

24

These prices are as high or higher than the prices discussed in Brookfield, 174 F.3d at

25

1060, which the Ninth Circuit found sufficiently expensive to create a presumption that a

26

buyer would exercise care. Moreover, regardless of how sophisticated a particular

27

customer is, it is common sense that customer would exercise care in making a major

28
20

1

purchase such as new windows, or a new roof, for their home. The Court therefore finds

2

this factor favors Defendants.
g.

3

Factor 7: Defendants’ Intent in Selecting the Mark

4

“This factor favors the plaintiff where the alleged infringer adopted his mark with

5

knowledge, actual or constructive, that it was another’s trademark.” Id. at 1059 (citation

6

omitted).

7

While Plaintiff assumes in its Motion that Defendants selected their mark with an

8

intent to confuse (ECF No. 8 at 18-19), Defendants persuasively respond that their owners

9

chose their name by combining the names of their children back in 2011 (ECF No. 17 at

10

19-20). Defendants were not aware of Plaintiff or its mark until after the parties’ interactions

11

as discussed supra. And as Defendants argue, Plaintiff’s argument regarding its’ co-

12

owners Yelp conversation with one of Defendants’ employees is beside the point because

13

it does not go to Defendants’ intent in selecting their mark. (Id.) Plaintiff does not otherwise

14

address this factor in its reply. (ECF No. 21.) Thus, the Court finds this factor also favors

15

Defendants.

16

h.

Factor 8: Likelihood of Expansion

17

When the goods or services of the parties are related, this factor is irrelevant. See

18

Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020, 1029 (9th Cir. 2004).

19

Indeed, here, Plaintiff concedes this factor is irrelevant because both parties offer the

20

same products and services in the same market. (ECF No. 8 at 19.) And Defendants do

21

not address this factor. (ECF No. 17.) The Court therefore finds this factor irrelevant.

22

i.

Balancing the Factors

23

On balance, the Sleekcraft factors favor finding a likelihood of confusion.

24

Specifically, the first through fifth factors favor finding a likelihood of confusion. See supra.

25

The sixth and seventh factors weigh against finding a likelihood of confusion, and the

26

eighth factor is irrelevant. See id. But especially considering that “actual confusion is at

27

the heart of the likelihood of confusion analysis[,]” Playboy, 354 F.3d at 1027, the

28

Sleekcraft analysis leads the Court to conclude Plaintiff has made a sufficient showing of
21

1

likelihood of confusion at this preliminary injunction stage. The Court accordingly finds

2

Plaintiff is likely to prevail on the merits of its trademark infringement claims. See Grocery

3

Outlet, 497 F.3d at 951 (stating a plaintiff is likely to prevail on the merits where it owns a

4

valid trademark and “the alleged infringer is using a confusingly similar mark”). The DeBell

5

and DaBella marks are confusingly similar, especially considering Plaintiff and Defendants

6

both offer interchangeable products and services in Northern Nevada.

7

D. Likelihood of Irreparable Harm

8

That said, to prevail on its Motion, Plaintiff must establish that “remedies available

9

at law, such as monetary damages, are inadequate to compensate for that injury.” eBay

10

Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006). That is, Plaintiff must establish

11

that the harm caused by Defendants cannot be remedied except through injunctive relief.

12

See MGM Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1210 (C.D. Cal. 2007).

13

Defendants fit their laches argument into this prong of the preliminary injunction

14

analysis. (ECF No. 17 at 6-9.) However, as explained above, the Court finds that argument

15

unpersuasive. Accordingly, it has no impact on this prong of the analysis.

16

Turning to the parties’ other arguments on this prong, Plaintiff argues that

17

“Defendants’ use of the DaBella mark is likely to damage DeBell’s long-cultivated

18

reputation, limit DeBell’s ability to control its own reputation, divert DeBell’s prospective

19

customers to DaBella, and devalue DeBell’s longtime marketing efforts. These kinds of

20

harms cannot be quantified, and they cannot be remedied with money damages.” (ECF

21

No. 8 at 19; see also id. at 19-21.) Defendants primarily respond Plaintiff has not presented

22

sufficient evidence of irreparable harm. (ECF No. 17 at 9-12.) The Court agrees with

23

Plaintiff this factor also favors issuing a preliminary injunction.

24

Plaintiff’s most persuasive argument as to this factor is that, by moving into the

25

Reno market with a confusingly similar name to Plaintiff’s senior, registered, trademarked

26

name, Defendants are limiting Plaintiff’s ability to control its own reputation. As explained

27

supra as to likelihood of confusion, the Court credits four instances of actual confusion

28

proffered by Plaintiff where potential customers could not tell Plaintiff and Defendants’
22

1

businesses apart. More specifically, in the case of Mr. Peters, he decided not to do any

2

business with Plaintiff after his negative experience with Defendants. (ECF No. 7-2 at 3-

3

4.) While it is impossible to say whether he would have done business with Plaintiff in the

4

absence of his negative interaction with Defendants, his negative interaction with

5

Defendants meant he never gave Plaintiff a chance. (Id.) This is an example of actual

6

harm. See Herb Reed, 736 F.3d at 1249 (“actual irreparable harm must be demonstrated

7

to obtain a permanent injunction in a trademark infringement action”).

8

Moreover, as also discussed supra, the evidence regarding both parties’ marketing

9

and advertising expenditures suggests that Defendants are a much bigger business than

10

Plaintiff, who spend much more on marketing and advertising. Logically, that fact implies

11

that instances of actual confusion like those discussed supra will continue to occur. Said

12

otherwise, assuming Defendants continue to spend much more than Plaintiff on marketing

13

and advertising in Reno, more people will be unable to tell the difference between DeBell

14

and DaBella going forward. Plaintiff’s argument it is losing control of its own reputation is

15

therefore both persuasive and supported by the evidence before the Court. (Compare ECF

16

Nos. 7-1, 7-2 (describing Plaintiff’s marketing spend and instances of actual confusion)

17

with ECF No. 19-1 (sealed) at 8-9 (stating Defendants have spent amounts on marketing

18

and advertising totaling a larger expenditure than Plaintiff).) See also Herb Reed, 736 F.3d

19

at 1250 (“Evidence of loss of control over business reputation and damage to goodwill

20

could constitute irreparable harm.”); see also 2Die4Kourt v. Hillair Capital Mgmt., LLC, 692

21

F. App'x 366, 369 (9th Cir. 2017) (finding “evidence showing that [the defendant] used the

22

[plaintiffs’] trademarks after the termination of the Agreement to release an unapproved

23

line of cosmetics products” was “enough to support a finding, at this early stage, that the

24

[plaintiffs] likely will lose some measure of control over their business reputation in the

25

absence of injunctive relief.”).

26

Defendant contends this case is like Titaness Light Shop, LLC v. Sunlight Supply,

27

Inc., 585 F. App’x 390, 391 (9th Cir. 2014) in arguing that Plaintiff cannot show irreparable

28

harm because its “allegations of harm in the record are conclusory and speculative[.]”
23

1

(ECF No. 17 at 11-12.) However, as generally discussed supra as to the four instances of

2

actual confusion the Court credits, and more specifically as to the incident involving Mr.

3

Peters, the Court finds that Plaintiff’s allegations of harm are neither conclusory nor

4

speculative. Mr. Peters had a bad experience with one of Defendants’ representatives and

5

subsequently declined to do business with Plaintiff. (ECF No. 7-2 at 3-4.) At least in that

6

one instance, Mr. Peters’ actual confusion regarding the two businesses harmed Plaintiff.

7

The Court thus finds Defendants’ argument based on Titaness Light Shop unpersuasive,9

8

and more generally finds the irreparable harm prong also favors granting Plaintiff’s Motion.

9

E. Balance of the Hardships

10

Moving to the next prong of the preliminary injunction analysis, Plaintiff argues the

11

balance of the hardships favors Plaintiff because Defendants are benefitting from

12

Plaintiff’s hard-earned reputation through their infringing conduct. (ECF No. 8 at 21-22.)

13

Defendants respond this factor favors them because they will face substantial hardship if

14

the Court grants Plaintiff the overbroad injunction it requests here, primarily the expense

15

associated with rebranding. (ECF No. 17 at 21.) The Court finds Defendants’ arguments

16

persuasive, but, as further explained infra, finds they can be addressed by limiting the

17

scope of the injunction. Moreover, the Court finds this factor nonetheless favors Plaintiff.

18

“In each case, a court must balance the competing claims of injury and must

19

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

20

Amoco Prod. Co. v. Village of Gambell, Alaska, 480 U.S. 531, 542 (1987); see also Int’l

21

Jensen v. MetroSound U.S.A., Inc., 4 F.3d 819, 827 (9th Cir. 1993) (“In evaluating the

22

balance of hardships a court must consider the impact granting or denying a motion for a

23

preliminary injunction will have on the respective enterprises.”). But when, as here, the

24
25
26
27
28

9Defendants

also argue that Plaintiff has harmed its own reputation, citing negative
online reviews. (ECF No. 17 at 11.) That argument is beside the point. Whether Plaintiff
has harmed its own reputation is irrelevant to the irreparable harm analysis, though
evidence as to whether Defendants have harmed Plaintiff’s reputation is. And the Court
otherwise declines to separately address Defendants’ other unpersuasive arguments
raised in this portion of their briefing. (Id. at 9-12.)
24

1

defendant argues it will be harmed if an injunction issues, if “the harm complained of

2

results from a defendant’s allegedly infringing conduct, [the Ninth Circuit has] nonetheless

3

approved the entry of a preliminary injunction.” 2Die4Kourt, 692 F. App’x at 369 (citation

4

omitted).

5

The Court reiterates it is sensitive to Defendants expressed concerns about the

6

impact of an injunction on their business, considering the evidence suggests that

7

Defendants are a bigger business then Plaintiff, they did not select their confusingly similar

8

mark with ill intent, and Plaintiff has not presented any evidence of awareness of its brand

9

outside of Reno, Nevada and the surrounding area. The issue for Defendants is that the

10

Court has found the likelihood of confusion analysis suggests Defendants’ junior DaBella

11

mark infringes Plaintiff’s senior DeBell mark. And as noted, the Ninth Circuit has

12

sanctioned injunctions even when they effectively put defendants out of business if those

13

defendants are infringing the plaintiff’s marks, finding the balancing of the hardships

14

nonetheless favors the plaintiffs. See 2Die4Kourt, 692 F. App’x at 369. Because the Court

15

has found a likelihood of confusion here, the Court accordingly also finds the balance of

16

the hardships favors granting an injunction here, particularly given the Court’s curative

17

limit on the scope of Plaintiff’s requested injunction infra.

18

F. Public Interest

19

On the fourth and final prong of the preliminary injunction analysis, Plaintiff argues

20

the public has a strong interest in avoiding confusion in the marketplace, so the Court

21

should issue a preliminary injunction to protect consumers from confusion during the

22

pendency of this case. (ECF No. 8 at 22.) Defendant responds, “[b]ecause the marks are

23

not similarly confusing, no public interest would be served by granting a preliminary

24

injunction.” (ECF No. 17 at 22.) Defendant further reiterates Plaintiff’s requested injunction

25

is overbroad. (Id.) Especially considering the Court has already rejected the predicate of

26

Defendant’s primary argument, the Court agrees with Plaintiff.

27

Courts “must consider the public interest as a factor in balancing the hardships

28

when the public interest may be affected.” Caribbean Marine Servs. Co. v. Baldridge, 844
25

1

F.2d 668, 674 (9th Cir. 1988). “In the trademark context, courts often define the public

2

interest at stake as the right of the public not to be deceived or confused.” Cytosport v.

3

Vital Pharm., Inc., 617 F. Supp. 2d 1051, 1081 (E.D. Cal. 2009). Said otherwise, “[a]n

4

injunction that seeks to prevent confusion to consumers in a trademark case is in the public

5

interest.” Traeger Pellet Grills, LLC v. Dansons US, LLC, 421 F. Supp. 3d 876, 890 (D.

6

Ariz. 2019), appeal dismissed, Case No. 19-17211, 2020 WL 470307 (9th Cir. Jan. 8,

7

2020) (citations omitted).

8

Again, because the Court has found a likelihood of confusion supra, this factor also

9

favors Plaintiff. See Cybergun, S.A. v. Jag Precision, Case No. 2:12-CV-0074-KJD-GWF,

10

2012 WL 4868104, at *8 (D. Nev. Oct. 11, 2012), aff’d sub nom. Cybergun S.A. v. Jag

11

Precision, Inc., 533 F. App’x 791 (9th Cir. 2013) (“The public interest favors a preliminary

12

injunction where there is a likelihood of confusion.”). The marks at issue here are

13

confusingly similar. See supra Section III.C.1. Thus, the public will benefit from an

14

injunction that seeks to prevent confusion. See Traeger, 421 F. Supp. 3d at 890.

15

G. Weighing the Factors

16

All four preliminary inunction factors favor Plaintiff. The Court will therefore grant

17

Plaintiff’s Motion, but will limit the scope of the requested injunctive relief.

18

H. Scope of Injunction

19

The Court agrees with Defendants that Plaintiff’s requested injunction is overbroad

20

because Plaintiff has not proffered any evidence it has substantial operations or brand

21

awareness outside the Northern Nevada area. In contrast, Defendants have presented

22

evidence they have substantial operations spanning 11 states, and have invested

23

significant resources into developing the DaBella brand. (ECF No. 19-1 (sealed).) Thus,

24

issuing an injunction covering the 11 states in which Defendants do business, or that

25

otherwise impacted Defendants’ entire, national website would be inequitable.

26

As suggested at the Hearing, the Court finds the most equitable way to resolve this

27

tension surrounding the scope of Plaintiff’s requested injunction is to require Defendants

28

to use a disclaimer applicable only to their operations in Northern Nevada (from Hawthorne
26

1

north) while this case is pending. The parties addressed the potential use of a disclaimer

2

both at the Hearing and in their supplemental briefing. (ECF Nos. 33, 39.) At the Hearing,

3

Plaintiff stated it was amenable to a more limited injunction than the injunction requested

4

in its briefing; specifically, one limited to Northern Nevada (north of Hawthorne) in which

5

Defendants would be required to remove or rebrand only the ‘Reno’ page on their website,

6

and rebrand their Northern Nevada operations to something not confusingly similar to

7

DeBell. (ECF No. 43 at 114-115.) In its supplemental briefing, Plaintiff argues a disclaimer

8

is a disfavored remedy that the Court should only consider if Defendants can meet a heavy

9

burden of showing the disclaimer will not lead to more consumer confusion. (ECF No. 33.)

10

Defendants respond they are amenable to a disclaimer, argue the Court has discretion to

11

fashion appropriate relief, and argue Plaintiff’s proffered cases apply in the permanent

12

injunction context, but not necessarily in the preliminary injunction context. (ECF No. 39.)

13

The Court agrees with Defendants.

14

To start, the Court agrees with Defendants it has discretion to fashion appropriate

15

injunctive relief here. See, e.g., Webster v. Doe, 486 U.S. 592, 604-05 (1988) (“traditional

16

equitable principles requiring the balancing of public and private interests control the grant

17

of declaratory or injunctive relief in the federal courts.”). Further, the Court may consider

18

Defendants’ arguments regarding the hardships they will face if they are required to

19

change their name from ‘DaBella’ in fashioning relief. See Sardi’s Rest. Corp. v. Sardie,

20

755 F.2d 719, 726 (9th Cir. 1985) (“Although the relative size of the respective businesses

21

is not a defense to a suit for a permanent injunction, it is certainly relevant to the potential

22

hardship from changing a business’ name.”) (internal citation omitted).

23

Moreover, Defendants’ proffered hardships were they required to change their

24

name—as Plaintiff requests—are significant, and therefore weigh in favor of adopting the

25

disclaimer approach. See, e.g., Philip Morris Inc. v. Cigarettes For Less, 215 F.3d 1333

26

(Table), 2000 WL 369542, at *2 (9th Cir. 2000) (holding the district court did not abuse its

27

discretion in adopting a disclaimer approach in a preliminary injunction over the plaintiff’s

28

objection in a trademark case after considering the parties’ relative hardships and finding
27

1

the plaintiff’s requested injunctive relief would effectively put at least some of the

2

defendants out of business). Defendants’ President says it would cost well over a million

3

dollars and take a few years to successfully rebrand. (ECF No. 19-1 (sealed) at 8-9.)

4

Conversely, and as repeatedly noted, Plaintiff did not proffer any evidence suggesting its

5

brand is well-known anywhere outside of the Reno, Nevada area. Further, a disclaimer

6

would not impose any hardship on Plaintiff. Defendants’ arguments regarding the

7

hardships associated with rebranding are therefore well-taken.

8

Perhaps more importantly, requiring Defendants to use a disclaimer would mitigate

9

consumer confusion. See Philip Morris, 2000 WL 369542, at *2 (affirming on abuse of

10

discretion review the imposition of a disclaimer intended to remedy consumer confusion).

11

The four instances of actual confusion the Court found admissible supra are instances

12

where customers could not tell the difference between Plaintiff and Defendants. By

13

requiring Defendants use a disclaimer, any customers that go to Defendants first will

14

quickly learn there is a difference between Plaintiff and Defendants. To this point, Plaintiff

15

argued at the Hearing that a disclaimer would be insufficient because customers

16

attempting to find DeBell, but not able to remember its name, would search for something

17

online like DeBell and may well find DaBella instead—and then use DaBella instead of

18

DeBell after they found DaBella’s contact information. (ECF No. 43 at 122.) The Court is

19

unpersuaded. If someone was looking for DeBell, but they landed on DaBella’s Reno

20

website, a prominent disclaimer saying DaBella is not DeBell would resolve their

21

confusion.

22

In sum, the Court finds that using a disclaimer—as more specifically outlined in the

23

conclusion of this order—will appropriately limit the scope of the preliminary injunction

24

Plaintiff has shown it is entitled to. Plaintiff is the senior user, Defendants’ mark is

25

confusingly similar, but Plaintiff has only shown it operates in the Reno, Nevada area.

26

I. Bond

27

The Court will not require Plaintiff to post a bond. Defendants stated they would

28

stipulate to waiving the bond requirement if the Court only imposed a disclaimer on their
28

1

website, but also suggested they would be amenable to waiving the bond requirement so

2

long as the Court did not impose anything beyond a disclaimer. (ECF No. 39 at 4, 4 n.1.)

3

Thus, Defendants’ opposition to a waiver of any bond is at least not so strenuous.

4

Moreover, as Plaintiff argues (ECF No. 8 at 22), because the bond requirement exists to

5

protect Defendants against the issuance of a wrongful injunction (see Fed. R. Civ. P.

6

65(c)), and the Court has found Plaintiff likely to prevail on the merits (see supra Section

7

III.C.1.), a bond is unnecessary here. Thus, the Court will not require Plaintiff to post a

8

bond.

9

IV.

CONCLUSION

10

The Court notes that the parties made several arguments and cited to several cases

11

not discussed above. The Court has reviewed these arguments and cases and determines

12

that they do not warrant discussion as they do not affect the outcome of the Motion.

13

It is therefore ordered that Plaintiff’s motion for preliminary injunction (ECF No. 8)

14

is granted in part, and denied in part, as further specified below. Pending resolution of this

15

case on the merits, Defendants must:

16

1. Use a prominent disclaimer stating they are not DeBell Window Systems, Inc.—

17

and provide Plaintiff’s phone number in that disclaimer ([phone])—at the

18

outset of every interaction Defendants have with potential customers in Northern

19

Nevada, defined as the entire geographic area within the State of Nevada from

20

Hawthorne north.

21

2. The disclaimer must appear on the web page https://dabella.us/location/reno/, and

22

any other web page controlled by Defendants that exclusively addresses

23

Defendants’ Reno, Nevada location.

24

3. The disclaimer must also appear on any and all printed materials given by

25

Defendants’ representatives to customers or potential customers in Northern

26

Nevada.

27

///

28

///
29

1

4. Defendants’ representatives must also include the disclaimer at the beginning of

2

any and all marketing or canvassing scripts Defendants prepare for use in Northern

3

Nevada.

4

5. Defendants’ representatives must also say the disclaimer at the beginning of any

5

and all in-person or telephonic interactions between Defendants’ representatives

6

and customers or potential customers in Northern Nevada.

7

It is further ordered that any and all disputes about this disclaimer that arise while

8

this case is pending—whether to form, usage, content, or otherwise—are referred to U.S.

9

Magistrate Judge William G. Cobb.

10
11
12
13
14

It is further ordered the parties must meet and confer in an attempt to resolve any
disclaimer disputes before bringing them to Judge Cobb.
It is further ordered that Plaintiff’s motion for leave to file additional evidence in
support of its motion for preliminary injunction (ECF No. 35) is denied.
DATED THIS 21st Day of September 2020.

15
16
17

MIRANDA M. DU
CHIEF UNITED STATES DISTRICT JUDGE

18
19
20
21
22
23
24
25
26
27
28
30