Zest Anchors, LLC v. Geryon Ventures, LLC, No. 3:2022cv00230 - Document 49 (S.D. Cal. 2022)

Court Description: ORDER granting in part and denying in part 15 Motion for Preliminary Injunction. Signed by Judge Todd W. Robinson on 7/18/2022. (fth)

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Zest Anchors, LLC v. Geryon Ventures, LLC Doc. 49 1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 12 ZEST ANCHORS, LLC d/b/a Zest DentalSolutions and ZEST IP HOLDINGS, LLC, 13 14 15 16 17 18 Case No.: 22-CV-230 TWR (NLS) ORDER GRANTING IN PART AND DENYING IN PART PLAINTIFFS’ MOTION FOR PRELIMINARY INJUNCTION Plaintiffs, v. GERYON VENTURES, LLC d/b/a DESS-USA and TERRATS MEDICAL SOCIEDAD LIMITADA, (ECF No. 15) Defendants. 19 Presently before the Court is the Motion for Preliminary Injunction (“Mot.,” ECF 20 Nos. 15 (public), 26 (sealed)) filed by Plaintiffs Zest Anchors, LLC, doing business as Zest 21 Dental Solutions (“Zest”), and Zest IP Holdings, LLC (“Zest IP”), as well as the Response 22 in Opposition (“Opp’n,” ECF No. 36) filed by Defendants Geryon Ventures, LLC, doing 23 business as DESS-USA (“Geryon”), and Terrats Medical Sociedad Limitada (“Terrats”) 24 (together, “DESS”) and Plaintiffs’ Reply in Support of (“Reply,” ECF Nos. 40 (public), 47 25 (sealed)) the Motion. The Parties declined to offer live testimony, and the Court held a 26 hearing on June 9, 2022. (See ECF No. 48.) Having carefully considered Plaintiffs’ 27 Complaint (“Compl.,” ECF No. 1), the record, the Parties’ arguments, and the relevant law, 28 the Court GRANTS IN PART AND DENIES IN PART Plaintiffs’ Motion as follows. 1 22-CV-230 TWR (NLS) Dockets.Justia.com 1 2 BACKGROUND I. Zest and Its LOCATOR® Products 3 Max Zuest founded Zest in 1972. (See ECF No. 40-2 (“Supp. Towse Decl.”) ¶ 4; 4 ECF Nos. 15-1 (public) and 26 (sealed) (“Stratton Decl.”) ¶ 4.1) “Since 1972, Zest has 5 been a global leader in the research, development, and manufacturing of dental attachment 6 products that are used to secure prosthetic dentures.” (Stratton Decl. ¶ 4.) Although Zest’s 7 products have evolved over time, (see Supp. Towse Decl. ¶¶ 3–9), the specific products 8 that are the focus of this action—Zest’s suite of LOCATOR® attachment products (the 9 “LOCATOR® Product Suite”)—have been on the market for approximately twenty years. 10 (See Stratton Decl. ¶¶ 5, 7, 9–10.) 11 The LOCATOR® Product Suite consists of the following components, which are 12 also depicted numerically in Figure 1: (1) the dental implant, which is an implant, bar, or 13 root connector in the form of a small bone screw that is anchored directly into the patient’s 14 jaw; (2) the abutment, which is screwed into the dental implant using a torquing tool; (3) a 15 color-coded retention insert; and (4) a denture housing or cap. (See ECF No. 15-2 (“Towse 16 Decl.”) ¶ 5; see also ECF No. 15-3 (“Scherer Decl.”) ¶ 9.) 17 /// 18 19 20 21 22 23 24 25 26 27 28 1 Defendants object to the declarations submitted by Tom Stratton, Zest’s President and Chief Executive Officer, and Ross Towse, Zest’s Chief Operations Officer, on the grounds that they only began working at Zest in October 2018, (see Stratton Decl. ¶¶ 1–2), and February 2016, (see ECF No. 15-2 (“Towse Decl.”) ¶¶ 1–2), respectively, and therefore lack personal knowledge of Zest’s activities predating their employment. (See Opp’n at 17 n.6, 20 n.8.) The Court OVERRULES this objection for two reasons: First, “[d]ue to the urgency of obtaining a preliminary injunction at a point when there has been limited factual development, the rules of evidence do not apply strictly to preliminary injunction proceedings[,]” and, accordingly, the district court need not rely only on admissible evidence. See Herb Reed Enters., LLC v. Fla. Ent. Mgmt., Inc., 736 F.3d 1239, 1250 n.5 (9th Cir. 2013) (citing Republic of Philippines v. Marcos, 862 F.2d 1355, 1363 (9th Cir. 1988)). Second, in any event, the declarations are not objectionable because “[p]ersonal knowledge can be inferred from a declarant’s position within a company or business.” See Edwards v. Toys “R” Us, 527 F. Supp. 2d 1197, 1201 (C.D. Cal. 2007) (collecting cases); see also Salgado v. Iqvia, Inc., 459 F. Supp. 3d 1318, 1337 (S.D. Cal. 2020) (overruling personal knowledge objection and concluding that Associate Director of Human Resources and Business Unit Head “may testify as to [their] understanding of the [defendant] organization” (citing In re Kaypro, 218 F.3d 1070, 1075 (9th Cir. 2000))). 2 22-CV-230 TWR (NLS) 1 2 Figure 1 Source: Towse Decl. at 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 The abutments used in the LOCATOR® Product Suite, depicted in Figure 2, are gold colored because of a titanium nitride coating. (See Towse Decl. ¶ 6.) Figure 2 Source: Towse Decl. at 2–3 18 19 20 21 22 23 24 According to Zest, this gold coloring “make[s] its abutments easily distinguishable.” (See 25 Towse Decl. ¶ 6.) But because titanium nitride coating “is biocompatible, brightens the 26 gingival hue, is easy to maintain and clean[,] and improves the abutment[’]s resistant to 27 scratching[, i]t is common to see gold-colored abutments sold by a variety of brands.” (See 28 ECF No. 36-3 (“Morris Decl.”) ¶ 9; see also ECF No. 36-4 (“Szara Decl.”) ¶ 13.) 3 22-CV-230 TWR (NLS) 1 Further, the top of Zest’s LOCATOR® abutments, which receives a torquing tool,2 2 uses a trilobate configuration of three notches in the shape of a triangle. (See Towse Decl. 3 ¶ 7; see also Stratton Decl. ¶ 13.) Although “[t]his shape is not unique to Zest[,]” (see 4 Morris Decl. ¶ 10), only one of Zest’s competitors had imitated this shape before DESS 5 introduced its competing DESSLoc® line.3 (See Supp. Towse Decl. ¶ 11.) 6 The retention inserts in the LOCATOR® Product Suite come in “brightly-colored 7 blue, pink, clear, red, orange, and green.” (See Stratton Decl. ¶ 6.) Although “[a]ll dental 8 implant companies that supply overdenture products directly . . . use different colors of 9 inserts to correspond with different retention strengths[,]” (see Morris Decl. ¶ 11; see also 10 Szara Decl. ¶ 12)—including Zest, (see Stratton Decl. ¶¶ 9–10)—Zest believes that its 11 chosen colors also “distinguish [Zest’s] product suite” from those of its competitors. (See 12 id. ¶ 7.) Since 2001, for example, the blue, pink, and clear inserts have been sold as part 13 of Zest’s standard retention strength set and correspond to retention strengths of extra light 14 (1.5 lbs), light (3 lbs), and regular (5 lbs), respectively. (See id. ¶ 9; see also Towse Decl. 15 ¶ 17.) Similarly, for eighteen years, Zest has sold bright red, orange, and green inserts as 16 part of its extended retention strength set, which correspond to retention strengths of extra 17 light (1 lbs), light (2 lbs), and regular (4 lbs), respectively. (See Stratton Decl. ¶ 10; see 18 also Towse Decl. ¶ 17.) “[A]side from a handful of market participants who have only 19 recently tried to sell LOCATOR® knock-offs, no Zest competitor has ever used [Zest’s] 20 colorful insert scheme or anything close to it.” (Stratton Decl. ¶ 7.) Further, “there are any 21 number of ways to differentiate inserts, including any combination of differing colors.” 22 (See Scherer Decl. ¶ 11.) 23 /// 24 25 26 27 28 2 Zest also offers accessories to its LOCATOR® Product Suite, including torquing tools. (See Supp. Towse Decl. ¶ 13.) According to Zest, these tools are “significantly distinct from the product suite itself” and “are not integral parts of the LOCATOR® Product Suite.” (See id.) 3 Two implant manufacturers also use a similar design, although Zest claims that “the manufacturers for and markets for abutments and implants are significantly different.” (See Supp. Towse Decl. ¶ 11.) 4 22-CV-230 TWR (NLS) 1 Zest IP, an affiliate of Zest, (see Compl. ¶ 8), owns unexpired U.S. trademark 2 registrations for these color-coded retention inserts (the “Registered Zest Insert Color 3 Marks”), as depicted in Figure 3. (See Towse Decl. ¶ 9.) 4 Figure 3 Source: Towse Decl. at 3–4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Zest also has active U.S. trademark applications for the following combinations, both with 26 and without packaging, as depicted in Figure 4 (the “Zest Insert Combination Marks”) 27 (together with the Registered Zest Insert Color Marks, the “Zest Insert Color Marks”). (See 28 Towse Decl. ¶ 11.) 5 22-CV-230 TWR (NLS) 1 Figure 4 Source: Towse Decl. at 4 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 “[T]hese applications remain pending, and Zest is in the process of submitting responses 18 to the trademark examiner as necessary to secure registrations.” (ECF No. 40-1 (“Supp. 19 Stratton Decl.”) ¶ 4.) 20 Zest claims that the LOCATOR® Product Suite is “the market leader in removable 21 denture attachment products” and “is the most popular and widely used denture attachment 22 system in the world.” (See Stratton Decl. ¶ 5.) LOCATOR® has won numerous awards 23 and recognitions over the years.” (See id. ¶¶ 30–31.) Together, Zest’s “palette of colorful 24 inserts, . . . and the shape and color of [its] gold abutments [(the “LOCATOR® Trade 25 Dress”)] reflect aesthetic choices that serve to define [its] brand.” (See id. ¶ 13.) “They 26 identify and differentiate LOCATOR® from the rest of the competition,” (id.), and “are 27 instantly recognizable and synonymous with Zest and LOCATOR®.” (Id. ¶ 14; see also 28 id. ¶ 51; Scherer Decl. ¶ 15.) According to Zest, its “customers, dental professionals, see 6 22-CV-230 TWR (NLS) 1 these design features and understand they are purchasing a time-tested product line that 2 meets Zest’s longstanding standards of high quality.” (See Scherer Decl. ¶ 15.) 3 “Zest’s LOCATOR® customers in the U.S. market are dental professionals, dental 4 laboratories, and others in the dental field.” (See Stratton ¶ 17.) Zest markets its 5 LOCATOR® Product Suite through various advertising media and promotional activities, 6 including “print advertisements” in dental trade publications; “banner advertisements” on 7 dental trade websites and on various forms of electronic media for dental trade and 8 academy publications; “clinical articles and case reports in dental trade and peer reviewed 9 dental academy publications[;]” “exhibitions” and “advertisements and promotional 10 activities at dental trade meetings[;]” podium presentations at dental trade meetings and 11 regional study clubs[;]” “social media advertisements[;]” “direct mail advertisements[;]” 12 “catalogs and price lists[;]” and its own website. (See id. ¶ 16.) These “marketing materials 13 prominently feature [Zest’s] trademarked insert colors—blue, pink, clear, red, orange, and 14 green, both individually and in combination—”together with “Zest’s uniquely-shaped gold 15 LOCATOR® abutments.” (See id. ¶¶ 18–21, 24–25.) Over the past decade, Zest has spent 16 an average of $ 17 of 18 per year marketing LOCATOR®, which represents an average % of its annual revenue. (See id. ¶ 23.) Like its advertising expenditures, Zest’s LOCATOR® sales have also been 19 “substantial[,]” (see id. ¶ 26), with approximately $ 20 revenue from LOCATOR® products since 2012. (See id. ¶ 29.) “Zest sells its products 21 through a variety of distribution channels.” (Towse Decl. ¶ 19.) One means by which Zest 22 “markets and sells a large portion of its products [is] directly to customers through its 23 website.” (See id.) The other way in which “Zest sells its products is by contracting with 24 distributors worldwide.” (See id.) “Currently, Zest sells the LOCATOR® Product Suite 25 through forty independent international distributors and ninety implant manufacturers.” 26 (Id. ¶ 20.) per year in annual average 27 As is particularly salient to the instant controversy, between May 1, 2008, and 28 September 2, 2021, “Zest sold a large quantity of Zest LOCATOR® products through 7 22-CV-230 TWR (NLS) 1 Zimmer Biomet[,]”4 with Zimmer Biomet purchasing on average approximately $ 2 per month in LOCATOR® products. (See Stratton Decl. ¶ 41.) “[U]ntil a few years ago, 3 Zimmer Biomet promoted LOCATOR®, including Zest’s distinctive inserts and 4 abutments, as part of an ‘OverdenSURE’ suite of removable attachment products that could 5 be purchased through Zimmer Biomet.” (Towse Decl. ¶ 26.) As can be seen in Figure 5, 6 for example, Zimmer Biomet’s advertisements during the relevant period attributed the 7 products to LOCATOR® and Zest, even when Plaintiffs’ products were sold under Zimmer 8 Biomet’s OverdenSURE line. (See, e.g., ECF No. 15-9 (“Pls.’ Ex. E”) at 318–19, 321–22, 9 324, 326–27, 329–30, 332–34, 336, 338–40, 345, 349, 351, 353, 356, 359, 363, 365–66. 5) 10 Figure 5 Source: Pls.’ Ex. E at 324, 326, 330 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 On March 1, 2022, Zimmer Biomet spun off its former dental and spine business to a new corporate entity, ZimVie. See Press Release: Zimmer Biomet Announces Completion of ZimVie Spinoff, zimmerbiomet.com, https://investor.zimmerbiomet.com/news-and-events/news/2022/03-01-2022120035502 (Mar. 1, 2022). Accordingly, some of the Parties’ filings refer to Zimmer Biomet, some to ZimVie, and others to both. To avoid confusion, the Court will use only the name Zimmer Biomet throughout. 5 Pin citations to Plaintiffs’ and Defendants Exhibits refer to the pagination the Parties have provided in the lower, right-hand corner of each page. 8 22-CV-230 TWR (NLS) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Zimmer Biomet uses many of the same marketing channels enumerated above, see 16 supra page 7 (citing Stratton Decl. ¶ 16), that Zest uses to market and sell the LOCATOR® 17 Product Suite, (see Stratton Decl. ¶ 43), and the U.S. market for Zimmer’s Biomet’s 18 products is identical to Zest’s. (See id. ¶ 44.) Zest’s distribution agreement with Zimmer 19 Biomet ended on September 2, 2021. (See id. ¶ 46.) 20 II. Terrats and Its DESSLoc® Products 21 Terrats’ predecessor company was founded in 1947 in Barcelona, Spain, to 22 manufacture precision mechanical components. (See ECF Nos. 36-2 (public), 39 (sealed) 23 (“Terrats Decl.”) ¶ 7.) In 2004, Terrats began manufacturing dental implant components 24 for other entities, (see id.), and Terrats introduced its own dental abutment products under 25 its KOMP brand in 2009. (See id. ¶ 8.) Terrats completely discontinued use of the KOMP 26 mark in 2014. (See id.) 27 Between 2011 and 2012, however, Terrats began using the mark DESS Dental Smart 28 Solutions® in Europe. (See id.) Terrats intended for its DESS Dental Smart Solutions® 9 22-CV-230 TWR (NLS) 1 product line to compete with Attachment International, “a specialist in the manufacture of 2 prosthetic parts in the dental implant field.” (See id. ¶ 9.) Like Attachment International, 3 Terrats’ business model is to “offer a range of abutments compatible to several implant 4 companies.” (See id. ¶ 30; see also id. ¶¶ 9, 22.) 5 Spanish customers began asking whether Terrats had a product compatible with 6 Zest’s LOCATOR® abutment between 2012 and 2013. (See id. ¶ 10.) Terrats discovered 7 that the company Kerator offered such abutments, as depicted in Figure 6. (See id.) 8 9 Figure 6 Source: Opp’n at 8–9 10 11 12 13 14 15 16 Terrats therefore purchased Kerator abutments through a Spanish reseller, Futuracam, and 17 offered them in Spain for a few years. (See Terrats Decl. ¶ 10.) 18 Ultimately, Terrats “decided to create [its] own abutment product to compete with 19 Kerator and other companies offering overdenture abutment products.” (See id.) Terrats 20 therefore developed the DESSLoc® abutment in 2015. (See id. ¶ 11.) Like Zest’s 21 LOCATOR® abutments, the DESSLoc® abutments are also gold-colored and have the 22 same triangular-shape on top, as depicted in Figure 7. (See Stratton Decl. ¶ 35.) 23 24 Figure 7 Source: Stratton Decl. at 7 25 26 27 28 10 22-CV-230 TWR (NLS) 1 Unlike the LOCATOR® abutments, however, Terrats’ DESSLoc® abutments are made of 2 titanium with a zirconium nitride coating, (see Terrats Decl. ¶ 12), which naturally results 3 in a lighter gold color. (See id. ¶ 13; see also Szara Decl. ¶ 14.) Terrats chose to use 4 zirconium nitride, rather than titanium nitride like Zest, because “[t]he zirconium nitride 5 coating improves overall mechanical resistance and reduces gingival inflammation and 6 plaque adhesion.” (See Terrats Decl. ¶ 13.) It is also “even stronger and more scratch 7 resistant” than the titanium nitride coating. (See Szara Decl. ¶ 14.) 8 Terrats also offers DESSLoc®-branded retention kits, which consist of colored 9 insert caps offered in a color-coded system representing retention strength. (See id. ¶ 14.) 10 Although there are slight variations in shade, (see id. ¶ 15), the DESSLoc® inserts are 11 offered in the same colors, corresponding to same retention strengths, as the LOCATOR® 12 inserts and are also packaged together in same combinations, as depicted in Figure 8. (See 13 Stratton Decl. ¶ 34.) 14 15 Figure 8 Source: Stratton Decl. at 7 16 17 18 19 20 21 22 23 24 25 26 27 28 11 22-CV-230 TWR (NLS) 1 Terrats explains that “[i]t would be cost-prohibitive to indicate the retention strength on the 2 caps given their small size and material[, and] . . . any printed information on the caps 3 would be difficult to read and would eventually be erased by the natural degradation of the 4 material during its normal use.” 5 manufacturing its own abutments, it therefore decided to offer multi-colored insert caps 6 that also were purchased from Futuracam and sold under the DESSLoc® brand. (See id. 7 ¶ 16.) Terrats currently purchases its multi-colored insert caps in the same color range but 8 from another Spanish manufacturer. (See id.) 9 (See Terrats Decl. ¶ 14.) When Terrats began Terrats now sells its DESSLoc® abutment products in more than twenty countries. 10 (See id. ¶ 17.) 11 distributors, who then sell the products to dentists and dental professionals. (See id.) DESS 12 also uses many of the same marketing channels as Zest, (see Stratton Decl. ¶ 48), and has 13 an identical U.S. market, (see id. ¶ 49), although DESSLoc® customers in the United States 14 cannot purchase the products from Terrats’ website, dessdental.com, and “Terrats does not 15 take order for DESSLoc® products at U.S. trade shows.” (See Terrats Decl. ¶ 23.) Indeed, 16 Terrats “do[es] not ship DESSLoc® to U.S. addresses.” (See id.) Terrats sells DESSLoc® in the United States through independent 17 Terrats first began offering its DESSLoc® products in limited quantities in the 18 United States in 2015. (See id. ¶¶ 17–18.) Between 2015 and 2020, Terrats’ only 19 independent distributor in the United States was Geryon. (See id. ¶ 17.) Now, “DESSLoc® 20 customers can purchase products from Geryon[;] Henry Schein, Inc.[;] and Darby Dental 21 Supply LLC.” (See id. ¶ 23.) Between 2017 and present, Terrats’ “sales of DESSLoc® 22 branded dental abutments and insert caps shipped directly to distributors to their U.S. 23 address[es] . . . have totaled approximately $ 24 2021, this works out to approximately $ .” (See id. ¶ 33.) Between 2018 and per year. (See id.) 25 Terrats’ “DESSLoc® products have not been modified since being introduced in 26 2015 in the United States,” (see id. ¶ 19), and are sold in packaging, which also has not 27 changed since 2015, (see id. ¶ 21), that “clearly indicates the source of the goods.” (See 28 id. ¶ 20.) 12 22-CV-230 TWR (NLS) 1 III. DESS’ Alleged Infringement 2 In the summer of 2017, Zest learned that DESS had begun offering its DESSLoc® 3 products, which Zest considered to be a “knock-off” of its LOCATOR® Product Suite. 4 (See Stratton Decl. ¶ 33.) Zest therefore retained Procopio, Cory, Hargreaves & Savitch 5 LLP (“Procopio”) in July 2017, “to protect its intellectual property rights in LOCATOR®, 6 including under trademark law.”6 (See id. ¶ 36.) “Between July 2017 and October 2020, 7 Zest continued to monitor DESS, and Zest and DESS, through counsel, exchanged a 8 number of letters regarding DESS’s [allegedly] infringing products.” (See id. ¶ 36.) 9 In 2017, for example, Zest IP contacted DESS Abutments, demanding that Terrats 10 “change [its] materials to delete references to the LOCATOR® mark and discontinue use 11 of the multi-colored insert caps.” (See Terrats Decl. ¶ 26.) Terrats declined. (See id.) Zest 12 IP again contacted Terrats in 2018, raising similar issues. (See id. ¶ 27.) In response, 13 Terrats “added ‘abutments’ after LOCATOR® where that mark appeared in [its] 14 materials.” (See id.) Finally, Zest IP contacted Terrats in September 2020, to claim that 15 Terrats was infringing the Zest Insert Color Marks. (See id. ¶ 28.) Although Terrats did 16 not believe that its products and materials infringed Zest IP’s intellectual property, Terrats 17 complied with Zest IP’s “request[] that Geryon modify the photos of the multi-colored 18 insert caps on its website to grayscale.” (See id.; see also Stratton Decl. ¶¶ 37–38.) 19 In late 2021, Zest learned that DESS had partnered with Zimmer Biomet to market 20 in the United States a product identical to DESSLoc® under Zimmer Biomet’s 21 OverdenSURE line. (See Stratton Decl. ¶ 47; see also Towse Decl. ¶ 24; Terrats Decl. 22 ¶ 25; Szara Decl. ¶ 14.) “While Zimmer Biomet has begun publicly marketing its 23 OverdenSURE product suite using DESS’s . . . products and is taking orders for these 24 products on its website, it is unclear whether Zimmer Biomet has actually begun to ship 25 these products to customers in the United States.” (See Towse ¶ 29.) 26 27 28 6 Procopio is also counsel of record for Zest’s trademark registrations and application. (See Towse Decl. ¶ 13.) 13 22-CV-230 TWR (NLS) 1 Although some trainings offered by Zimmer Biomet have explicitly communicated 2 that Zimmer Biomet is no longer selling Zest’s LOCATOR® products, (see Szara Decl. 3 ¶ 16), Zest maintains that Zimmer Biomet’s marketing materials may cause confusion, as 4 evidenced by a comparison, shown in Figure 9, of Zimmer Biomet’s previous catalogs 5 depicting Zest’s LOCATOR® and current catalogs depicting Terrats’ DESSLoc® product 6 that is now being offered under Zimmer Biomet’s OverdenSURE line. (See Towse Decl. 7 ¶ 28.) 8 9 Figure 9 Source: Towse Decl. at 8 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Not surprisingly, the Parties offer conflicting evidence regarding whether and to 26 what extent these visual similarities risk causing consumer confusion. On the one hand, 27 one of Terrats’ declarants—a licensed dentist with twenty-eight years of practice in 28 prosthodontics, (see Morris Decl. ¶¶ 2, 7)—attests that he “do[es] not and could not identify 14 22-CV-230 TWR (NLS) 1 the brand of an insert by the color of the insert,” (see id. ¶ 11), and Terrats claims that it 2 has “never received an email or any other communication from a customer or from anyone 3 else asking if [its] DESSLoc® products are associated with or authorized by Zest.” (See 4 Terrats Decl. ¶ 31.) On the other hand, Zest claims that Terrats’ recent partnership with 5 Zimmer Biomet has led to “actual confusion amongst Zest’s customers and potential 6 customers.” (See Scherer Decl. ¶ 21.7) “For example, a large Zimmer Biomet customer 7 told [Dr. Scherer] recently that the doctors to whom he sold LOCATOR® are confused by 8 DESS’s [alleged] knock-offs and how they related to LOCATOR®.” (See id. ¶ 22.) 9 “Additionally, an officer manager of a dental office told [Dr. Scherer] she believed that 10 Zimmer Biomet was still selling Zest’s products, stating . . . that OverdenSURE, the brand 11 Zimmer Biomet is using to sell DESSLoc[®], was still ‘the same LOCATOR® just a new 12 brochure.’” (See id. ¶ 23.) 13 Plaintiffs initiated this action against Defendants on February 18, 2022, asserting six 14 causes of action for (1) trademark infringement in violation of Section 32(1) of the Lanham 15 Act, 15 U.S.C. § 1114(1); (2) trademark infringement and false designation of origin in 16 violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) trade dress 17 infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); 18 (4) unfair competition in violation of California’s Unfair Competition Law (“UCL”), Cal. 19 Bus. & Prof. Code §§ 17200 et seq.; (5) common law trademark infringement; and 20 (6) common law unfair competition. (See generally Compl.) The instant Motion followed 21 on March 7, 2022. (See generally Mot.) 22 /// 23 24 25 26 27 28 7 Defendants also object to paragraphs 21 through 23 of the Scherer Declaration on the grounds that the evidence of actual confusion is inadmissible as “unsubstantiated hearsay” or “hearsay within hearsay[.]” (See Opp’n at 24–25.) For the reasons discussed above, see supra note 1, “[i]t [i]s within the discretion of the district court to accept this hearsay for purposes of deciding whether to issue the preliminary injunction.” Marcos, 862 F.2d at 1363 (citing Flynt Distrib. Co. v. Harvey, 734 F.2d 1389, 1394 (9th Cir. 1984); K-2 Ski Co. v. Head Ski Co., 467 F.2d 1087, 1088 (9th Cir. 1972)). Accordingly, the Court also OVERRULES Defendants’ objection to the Scherer Declaration. 15 22-CV-230 TWR (NLS) 1 LEGAL STANDARD 2 Pursuant to Federal Rule of Civil Procedure 65(a), a trial judge may grant a 3 preliminary injunction “to preserve the status quo and the rights of the parties until a final 4 judgment issues in the cause.” See Ramos v. Wolf, 975 F.3d 872, 887 (9th Cir. 2020) 5 (quoting U.S. Philips Corp. v. KBC Bank N.V., 590 F.3d 1091, 1094 (9th Cir. 2010)). “A 6 preliminary injunction . . . is not a preliminary adjudication on the merits[,] but rather a 7 device for preserving the status quo and preventing the irreparable loss of rights before 8 judgment.” Id. (alteration in original) (quoting Sierra On-Line, Inc. v. Phx. Software, Inc., 9 739 F.2d 1415, 1422 (9th Cir. 1984)). In the context of a preliminary injunction, the status 10 quo “refers not simply to any situation before the filing of a lawsuit, but instead to ‘the last 11 uncontested status which preceded the pending controversy[.]’” See GoTo.com, Inc. v. 12 Walt Disney Co., 202 F.3d 1199, 1210 (9th Cir. 2000) (quoting Tanner Motor Livery, Ltd. 13 v. Avis, Inc., 316 F.2d 804, 809 (9th Cir. 1963)). 14 “A party seeking a preliminary injunction must meet one of two variants of the same 15 standard.” Ramos, 975 F.3d at 887 (quoting All. for Wild Rockies v. Pena, 865 F.3d 1211, 16 1217 (9th Cir. 2017)). 17 18 19 20 Under the original standard, plaintiffs seeking a preliminary injunction must establish that: (1) they are likely to succeed on the merits; (2) they are likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in their favor; and (4) an injunction is in the public interest. 21 Id. (citing Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008)). “The Ninth Circuit 22 employs an alternative ‘serious questions’ standard, also known as the ‘sliding scale’ 23 variant of the Winter standard.” Id. (citing All. for Wild Rockies v. Cottrell, 632 F.3d 1127, 24 1134 (9th Cir. 2011)). 25 26 27 28 Under this alternate standard, [the court] weigh[s] the preliminary injunction factors on a sliding scale, such that where there are only serious questions going to the merits—that is, less than a likelihood of success on the merits— a preliminary injunction may still issue so long as the balance of hardships tips sharply in the plaintiff’s favor and the other two factors are satisfied. 16 22-CV-230 TWR (NLS) 1 Id. at 887–88 (internal quotation marks omitted) (quoting Short v. Brown, 893 F.3d 671, 2 675 (9th Cir. 2018)). In other words, “[a] preliminary injunction may be granted . . . where 3 the moving party demonstrates either ‘(1) a combination of probable success on the 4 merits and the possibility of irreparable injury or (2) the existence of serious questions 5 going to the merits and that the balance of hardships tips sharply in [its] favor.’” Grocery 6 Outlet Inc. v. Albertson’s Inc., 497 F.3d 949, 951 (9th Cir. 2007) (emphasis and second 7 alteration in original) (quoting Sardi’s Rest. Corp. v. Sardie, 755 F.2d 719, 723 (9th Cir. 8 1985)). 9 A preliminary injunction is an “extraordinary remedy that may only be awarded 10 upon a clear showing that the plaintiff is entitled to such relief.” Winter, 555 U.S. at 22. 11 Consequently, “[t]he court may issue a preliminary injunction only on notice to the adverse 12 party[,]” see Fed. R. Civ. P. 65(a)(1), and “only if the movant gives security in an amount 13 that the court considers proper to pay the costs and damages sustained by any party found 14 to have been wrongfully enjoined.” See Fed. R. Civ. P. 65(c). “Every order granting an 15 injunction and every restraining order must: (A) state the reasons why it issued; (B) state 16 its terms specifically; and (C) describe in reasonable detail—and not by referring to the 17 complaint or other document—the act or acts restrained or required.” Fed. R. Civ. P. 18 65(d)(1). 19 Whether to “grant . . . a preliminary injunction is a matter committed to the discretion 20 of the trial judge[,]” and that decision will be “reverse[d] only if that discretion is abused 21 or the decision is based on an erroneous legal standard or clearly erroneous findings of 22 fact.” See Sierra On-Line, 739 F.2d at 1421. 23 ANALYSIS 24 Through the instant Motion, Plaintiffs seek a preliminary injunction 25 to enjoin and restrain until the entry of final judgment in this action Defendants . . . , together with their agents, employees, representatives, and all persons and entities in concert or participation with them from engaging in, committing or performing, directly or indirectly, any and all of the following acts: 26 27 28 17 22-CV-230 TWR (NLS) 1 1. Using in any way, including in connection with the promotion, marketing, advertising, and sale of products or services, Zest’s LOCATOR® color retention insert trademarks, Zest’s LOCATOR® product suite trade dress, or any trademarks or trade dress that are a colorable imitation thereof, or confusingly similar thereto; and 2 3 4 5 7 2. Importing into the United States any products that use the LOCATOR® color retention insert trademarks, the LOCATOR® product suite trade dress, or any trademarks or trade dress that are a colorable imitation thereof, or confusingly similar thereto. 8 (See Mot. at II.) The Court therefore proceeds to analyze Plaintiffs’ showing under the 9 Winter factors and then to weigh those factors under the Ninth Circuit’s variant standards 6 10 to determine Plaintiffs’ entitlement to preliminary injunctive relief. 11 I. Likelihood of Success on the Merits 12 Plaintiffs contend that they are entitled to preliminary injunctive relief because they 13 are likely to succeed on their claims that Defendants’ DESSLoc® products infringe both 14 (1) the Zest Insert Color Marks, (see Compl. ¶¶ 78–98, 116–24), which comprise the 15 Registered Zest Insert Color Marks for each of the LOCATOR® colored inserts, together 16 with what the Court has termed the Zest Insert Combination Marks, which are 17 “combinations of the Registered Zest Insert Color Marks, appearing both with and without 18 packaging,” that are sold in Plaintiffs’ standard and extended retention strength sets, (see 19 id. ¶¶ 34–35); and (2) the LOCATOR® Trade Dress, (see id. ¶¶ 99–109), which is defined 20 by the “characteristic LOCATOR® insert colors and distinctively-shaped gold 21 LOCATOR® abutments,” (see, e.g., id. ¶ 20). (See generally Mot. at 14–28.) Because it 22 is undisputed that neither the Zest Insert Color Marks nor the LOCATOR® Trade Dress 23 are registered on the United States Patent and Trademark Office’s (“PTO”) Principal 24 Register, (see Reply at 8–9), the analysis for both Plaintiff’s trademark and trade dress 25 infringement claims “is very similar.” See Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 26 F.3d 819, 823 (9th Cir. 1993) (citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 27 773 (1992); Rachel v. Banana Republic, Inc., 831 F.2d 1503, 1506 (9th Cir. 1987)). 28 /// 18 22-CV-230 TWR (NLS) 1 “Under either theory[, Plaintiffs] must show the [Zest Insert Color Marks and 2 LOCATOR® Trade Dress are]: (1) nonfunctional; (2) either inherently distinctive or 3 ha[ve] acquired a secondary meaning; and (3) likely to be confused with [Defendants’ 4 DESSLoc®] products by members of the consuming public.” 5 Pesos, 505 U.S. at 769–70; HWE Inc. v. JB Research, Inc., 993 F.2d 694, 696 (9th Cir. 6 1993); First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1381 (9th Cir. 1987)); see 7 also adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747, 754 (9th Cir. 2018) (quoting Art 8 Attacks Ink, LLC v. MGA Entm’t Inc., 581 F.3d 1138, 1145 (9th Cir. 2009)). Defendants 9 challenge Plaintiffs’ showing as to each of these requirements.8 (See Opp’n at 12–27.) See id. (citing Two 10 A. 11 “Trademark or trade dress protection extends only to product features that are 12 nonfunctional.” Disc Golf Ass’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th 13 Cir. 1998). 14 functionality, “each with its own legal test.” See Blumenthal Distrib., Inc. v. Herman 15 Miller, Inc., 963 F.3d 859, 865 (9th Cir. 2020) (citing TrafFix Devices, Inc. v. Mktg. 16 Displays, Inc., 532 U.S. 23, 32–33 (2001)), cert. denied, 141 S. Ct. 1514 (2021). “The two 17 types are ‘utilitarian functionality,’ which is based on how well the product works, and 18 ‘aesthetic functionality,’ which is based on how good the product looks.” Id. (citing Au- 19 Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1067, 1073–74 (9th Cir. 20 2006)). “If the claimed trade dress has either type of functionality, it is unprotectable.” Id. 21 (citing Au-Tomotive Gold, 457 F.3d at 1072). Functionality Like the Supreme Court, the Ninth Circuit recognizes two types of 22 Accordingly, “the test for functionality proceeds in two steps.” Millennium Lab’ys, 23 Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1128 (9th Cir. 2016) (quoting Au-Tomotive Gold, 24 25 26 27 28 8 Defendants do not contest that Plaintiffs, who have used the Zest Insert Color Marks and LOCATOR® Trade Dress in commerce for approximately twenty years, (see, e.g., Stratton Decl. ¶¶ 9–10; Towse Decl. ¶ 17), have priority of use over DESSLoc®, which first began offering its colored inserts in 2015, (see, e.g., Terrats Decl. ¶¶ 11, 14, 16–18). See, e.g., Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190, 1203 (9th Cir. 2012) (“It is axiomatic in trademark law that the standard test of ownership is priority of use.” (quoting Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996))). 19 22-CV-230 TWR (NLS) 1 457 F.3d at 1072). First, the court assesses whether the claimed trade dress has utilitarian 2 functionality, meaning “it is essential to the use or purpose of a product or affects its cost 3 or quality.” Blumenthal, 963 F.3d at 865 (citing Millennium, 817 F.3d at 1127–28 (citing 4 Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982))). “If the claimed 5 trade dress is determined to be functional under Step One, then ‘the inquiry is over.’” 6 Millennium, 817 F.3d at 1129 (quoting Au-Tomotive Gold, 457 F.3d at 1072). “If not, the 7 court must proceed to the second step and address aesthetic functionality.” Id. 8 Where, as here, a plaintiff “define[s] its claimed trade dress as the ‘overall 9 appearance’ of its product[,] . . . these tests must be applied with extra care to prevent 10 ‘semantic trickery’ from obscuring the functionality of the design the plaintiff seeks to 11 monopolize.” See Blumenthal, 963 F.3d at 865–66 (footnote omitted). Consequently, the 12 Ninth Circuit has “held that the proper standard for whether a claimed trade dress 13 consisting of an ‘overall appearance’ is functional is whether ‘protecting the trade dress 14 threatens to eliminate a substantial swath of competitive alternatives in the relevant 15 market.’” Id. at 866 (quoting Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 16 1261 n.5 (9th Cir. 2001)). 17 1. Utilitarian Functionality 18 To determine whether a claimed trade dress has utilitarian functionality, courts “use 19 the four-factor test from Disc Golf.” See Blumenthal, 963 F.3d at 865 (citing Millennium, 20 817 F.3d at 1129). “The Disc Golf factors are: ‘(1) whether the design yields a utilitarian 21 advantage, (2) whether alternative designs are available, (3) whether advertising touts the 22 utilitarian advantages of the design, and (4) whether the particular design results from a 23 comparatively simple or inexpensive method of manufacture.’” Id. (quoting Millennium, 24 817 F.3d at 1128 (quoting Disc Golf, 158 F.3d at 1006)). “No one factor is dispositive; all 25 should be weighed collectively.” Id. (quoting Millennium, 817 F.3d at 1130 (quoting Disc 26 Golf, 158 F.3d at 1006)). 27 28 Here, Plaintiffs claim a valid, protectable interest in both the Zest Insert Color Marks and the LOCATOR® Trade Dress. The Court therefore analyzes each separately. 20 22-CV-230 TWR (NLS) 1 a. Zest Insert Color Marks 2 The Zest Insert Color Marks are themselves comprised of both the Registered Zest 3 Insert Color Marks and Zest Insert Combination Marks. (See Compl. ¶¶ 34–35.) Plaintiffs 4 contend that their “primary purpose . . . is to distinguish Zest’s inserts aesthetically from 5 competing brands’ inserts,” (see Mot. at 17 (citing Stratton Decl. ¶ 7)), while Defendants 6 counter that “[t]he Asserted Zest IP insert colors are purely functional: they indicate 7 retention strength.” (See Opp’n at 13.) 8 Upon consideration of the claimed marks under the Disc Golf factors, the Court 9 concludes that the Zest Insert Color Marks have utilitarian functionality. Regarding the 10 first factor, as Plaintiffs themselves acknowledge, the Zest Insert Color Marks do yield a 11 utilitarian advantage, i.e., “indicat[ing] . . . retention strength.” (See Mot. at 17.) Indeed, 12 the record before the Court indicates that it is industry standard to use different colors to 13 convey retention strength, (see Morris Decl. ¶ 11; Szara Decl. ¶ 12), in part because there 14 are no plausible alternatives. (See Terrats Decl. ¶ 14.) 15 As for the second factor, Plaintiffs contend that they “do[] not claim rights in all 16 insert colors or color-coding of inserts as a concept,” (see Reply at 4), and that “there are 17 numerous alternative colors . . . that competitors could (and do) use to indicate varying 18 retention strengths.” (See Mot. at 18 (emphasis in original) (citing Towse Decl. ¶ 18; 19 Stratton Decl. ¶ 15; ECF No. 15-5 (“Pls.’ Ex. A”).) The Registered Zest Insert Color 20 Marks, however, consist of six distinct marks, each asserting rights over a separate color 21 divorced from retention strength. (See ECF No. 15-10 (“Pls.’ Ex. F”).) If the Court were 22 to conclude that Plaintiffs have a valid and protectable interest in each of the Registered 23 Zest Insert Color Marks, Plaintiffs could foreclose their competitors from using many 24 alternative insert designs that include the colors blue, pink, clear, red, orange, and green.9 25 26 27 28 9 Indeed, many of Plaintiffs’ competitors are already using at least one of these colors for their inserts. (See, e.g., Pls.’ Ex. A at 6–10 (Rhein83 OT Equator: pink, clear, red), 17 (Straumann Novaloc: green), 19–20 (BioHorizons OD Secure: pink, clear).) 21 22-CV-230 TWR (NLS) 1 See, e.g., First Brands, 809 F.2d at 1382–83 (affirming district court’s denial of preliminary 2 injunction involving yellow, one-gallon, F-style jugs because, “if [the plaintiff] were 3 granted protection of its . . . trade dress, it would in effect be getting a trademark on the 4 color yellow as a background color for an ordinary-shaped container . . . [, which] would 5 deplete a primary color available to competitors and deprive them of a competitive need”). 6 Similarly, the Zest Insert Combination Marks seek protection for “[t]he color(s) 7 clear, pink and blue,” (see ECF No. 15-11 (“Pls.’ Ex. G”) at 382, 395), and “[t]he color(s) 8 red, green and orange,” (see id. at 408, 419), both without any packaging, (see id. at 387, 9 413, and inside an unmarked, clear plastic tube. (See id. at 400, 424.) As with the 10 Registered Zest Insert Color Marks, protection of the Zest Insert Combination Marks could 11 foreclose Plaintiffs’ competitors from offering any combination of clear, pink, and blue 12 and red, green, and orange inserts, despite the associated retention strengths. In other 13 words, even though Plaintiffs “do[] not claim rights in all insert colors,” (see Reply at 4 14 (emphasis in original)), a large number of alternative designs would be foreclosed if 15 Plaintiffs were allowed to exert rights over the Zest Insert Color Marks. 16 Third, while Plaintiffs’ advertising may not “tout” the utilitarian advantages of the 17 Zest Insert Color Marks, the colors (and corresponding retention strengths) have been— 18 and currently are—prominently depicted in Plaintiffs’ promotional materials over the last 19 decade. (See, e.g., ECF No. 15-6 (“Pls.’ Ex. B”) at 44–45, 48, 50, 56, 59, 98, 101, 108, 20 110, 112, 127, 129, 155, 161.) In any event, the utilitarian advantages of the Zest Insert 21 Color Marks are likely apparent to Plaintiffs’ customer base given that the use of color to 22 differentiate among retention strengths is the industry standard. (See Morris Decl. ¶ 11; 23 Szara Decl. ¶ 12.) 24 Finally, there is no indication that the Zest Insert Color Marks are any more simple 25 or inexpensive to manufacture than any other inserts. Although this final factor therefore 26 would appear to be neutral, the remaining factors weigh in favor of concluding that the 27 Zest Insert Color Marks have utilitarian functionality. Accordingly, the Court concludes 28 /// 22 22-CV-230 TWR (NLS) 1 that Plaintiffs fail to establish a likelihood of succeeding on the merits of their trademark 2 infringement claims based on the Zest Insert Color Marks. 3 b. LOCATOR® Trade Dress 4 By comparison to the Zest Insert Color Marks, the LOCATOR® Trade Dress 5 incorporates a variety of elements—insert colors combined with a trilobe-topped, gold 6 abutment. Defendants contend that, “[b]ecause each component of the Asserted Zest IP 7 has both utilitarian and aesthetic functionality, Zest has failed to make a ‘clear showing’ of 8 a likelihood of success on proving the non-functionality of the Asserted Zest IP.”10 (See 9 Opp’n at 13 (emphasis in original).) 10 The Ninth Circuit has concluded that Defendants’ “argument—that the [abutments]’ 11 overall appearances are functional ‘because they include, in whole or in part, elements that 12 are functional’ . . . —is a nonstarter.” See Blumenthal, 963 F.3d at 867 (emphasis in 13 original). This is because, as Plaintiffs point out, (see Reply at 4 (citing Clicks Billiards, 14 251 F.3d at 1259)), the LOCATOR® Product Suite must be examined “as a whole.” See 15 Blumenthal, 963 F.3d at 866. “[T]o examine a product ‘as a whole’ is to examine all of its 16 features, including the ways in which its various parts are combined or arranged, and to 17 recognize that nonfunctional combinations or arrangements of functional parts can create 18 an overall appearance that should be deemed nonfunctional.” See id. (citing Leatherman 19 Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 1009, 1011 n.3, 1013 (9th Cir. 1999)). 20 While it is clear that the LOCATOR® inserts and abutments each serve a functional 21 purpose, “[t]he fact that individual elements of the trade dress may be functional does not 22 necessarily mean that the trade dress as a whole is functional; rather, ‘functional elements 23 that are separately unprotectable can be protected together as part of a trade dress.’” See 24 Clicks Billiards, 251 F.3d at 1259 (emphasis in original) (quoting Fuddruckers, Inc. v. 25 26 27 28 10 For purposes of their Opposition, Defendants define “Asserted Zest IP” to mean (1) each individual color of its color-coded insert caps; (2) the gold abutment color, and (3) the triangular-shaped abutment.” (See Opp’n at 2.) 23 22-CV-230 TWR (NLS) 1 Doc’s B.R. Others, Inc., 826 F.2d 837, 842 (9th Cir. 1987)). Here, Plaintiffs introduce 2 evidence that the overall appearance of the LOCATOR® Product Suite “derive[s] from 3 non-utilitarian design choices,” see, e.g., Blumenthal, 963 F.3d at 867, such as the specific 4 colors it has selected to differentiate between inserts with different retention strengths, (see 5 Stratton Decl. ¶¶ 7–10; Towse Decl. ¶¶ 9–12, 18); the specific shape where the abutment 6 top receives a torquing tool, (see Stratton Decl. ¶ 12; Towse Decl. ¶¶ 7–8); and the gold 7 abutment color resulting from its selection of a titanium nitride coating. (See Towse Decl. 8 ¶ 6.) There is no evidence that the combination of these design choices would confer any 9 utilitarian advantage over Plaintiffs’ competitors. 10 Further, unlike the Zest Insert Color Marks, see supra Section I.A.1.a, protecting the 11 LOCATOR® Trade Dress would not “threaten[] to eliminate a substantial swath of 12 competitive alternatives in the relevant market.” See Blumenthal, 963 F.3d at 866 (quoting 13 Clicks Billiards, 251 F.3d at 1261 n.5). As Defendants’ own evidence reveals, there are 14 many alternate insert color combinations, (see, e.g., ECF No. 36-30 (“Defs.’ Ex. U”)), and, 15 as Defendants’ own website demonstrates, there is a wide array of shapes used on the top 16 of abutments. (See, e.g., ECF No. 15-21 (“Pls.’ Ex. Q”) at 504.) Further, while many of 17 Plaintiffs’ competitors use a titanium nitride coating, (see Morris Decl. ¶ 9; Szara Decl. 18 ¶ 13), resulting in a gold-colored abutment, 11 (see Towse Decl. ¶ 6), others do not. (E.g., 19 Pls.’ Ex. A at 2, 12–13 (Straumann Novaloc’s black, “carbon-based coating”); Defs.’ Ex. 20 U at 537 (Meg-Loc’s silver, titanium abutment), 538 (Optiloc’s silver, titanium abutment).) 21 Given the lack of evidence that Plaintiffs tout the utilitarian purposes of the 22 LOCATOR® Product Suite’s combined specific design choices or that those choices in 23 combination are comparatively simple or inexpensive to manufacture,12 the Court 24 25 11 26 Indeed, while DESSLoc® also offers a gold-colored abutment, it is naturally a lighter gold color because Defendants use a different, zirconium nitride coating. (See Terrats Decl. ¶¶ 12–13; Szara Decl. ¶ 14.) 27 12 28 While Defendants have introduced evidence that DESSLoc®’s zirconium nitride coating is more expensive than LOCATOR®’s titanium nitride coating as a result of licensing fees, (see Terrats Decl. ¶ 13), it is clear that Defendants elected a more expensive coating because it confers certain perceived 24 22-CV-230 TWR (NLS) 1 concludes that the LOCATOR® Trade Dress does not have utilitarian functionality and 2 proceeds to step two of the functionality analysis. 3 2. Aesthetic Functionality 4 Under the second step of the functionality analysis, “[a] claimed trade dress has 5 aesthetic functionality if it serves ‘an aesthetic purpose wholly independent of any source 6 identifying function,’ such that the trade dress’s protection under trademark law ‘would 7 impose a significant non-reputation-related competitive disadvantage’ on its owner’s 8 competitors.” Blumenthal, 963 F.3d at 865 (quoting Millennium, 817 F.3d at 1129, 1131). 9 [T]he inquiry is whether, if one seller were given exclusive rights to use the claimed trade dress, other sellers would be forced to use alternative designs that make their products more costly to sell, or for which consumers’ willingness to pay would be lower for reasons having nothing to do with the reputation of any source (e.g., the alternative designs would not have as much intrinsic aesthetic appeal). 10 11 12 13 14 Id. “If such competitive disadvantages would be significant, then this second requirement 15 for aesthetic functionality is satisfied.” Id. 16 As discussed above, see supra Section I.A.1.b, there are a wide array of available 17 insert colors, shapes to accept torquing tools, and coatings—and an even greater 18 combination of those elements—available to other manufacturers of abutments. 19 Consequently, neither Defendants nor any of Plaintiffs’ other competitors would “be at a 20 non-reputation-related competitive disadvantage” if they were disallowed from using the 21 same combination of those elements Plaintiffs have selected for the LOCATOR® Trade 22 Dress. (Cf. Opp’n at 14 (“DESS would . . . be at a non-reputation-related competitive 23 disadvantage if it could not color code its inserts.”), 15 (“DESS would again be at a non- 24 25 26 27 28 advantages, such as “improv[ing] overall mechanical resistance and reduc[ing] gingival inflammation and plaque adhesion,” (see id.), and superior strength and scratch resistance. (See Szara Decl. ¶ 14.) In any event, recognizing a protectable interest in Plaintiffs’ LOCATOR® Trade Dress would not foreclose its competitors from using titanium nitride; rather, it would only foreclose its competitors from using a titanium nitride coating in combination with the same insert colors and same shaped abutment that comprise the LOCATOR® Trade Dress. 25 22-CV-230 TWR (NLS) 1 reputation-related competitive disadvantage if it could not use its own licensed and 2 distinctively different coating and associated gold color.”).) 3 Further, Plaintiffs have introduced evidence that the LOCATOR® Trade Dress does 4 not serve “an aesthetic purpose wholly independent of any source identifying function.” 5 For example, Zest’s President and Chief Executive Officer attests that the LOCATOR® 6 Product Suite’s “palette of colorful inserts, which has never changed, and the shape and 7 color of [its] gold abutments reflect aesthetic choices that serve to define [Plaintiffs’] 8 brand.” (See Stratton Decl. ¶ 13; see also id. ¶ 7 (“When we launched LOCATOR® 9 decades ago, we chose [blue, pink, clear, red, orange, and green inserts] to distinguish our 10 product suite.”).) On the other hand, there is no evidence that the LOCATOR® Trade 11 Dress has more intrinsic, aesthetic appeal than the combinations employed by its 12 competitors. (See Mot. at 19 (“[D]ental professionals do not purchase products bearing . . . 13 the LOCATOR® Trade Dress because of their ‘intrinsic’ aesthetic appeal. . . . They 14 purchase the LOCATOR® Product Suite because of its high quality and durability, not 15 [because it is a] beautiful product.” (citation and quotation marks omitted; fourth alteration 16 in original)).) 17 Accordingly, the Court concludes that the LOCATOR® Trade Dress does not have 18 aesthetic functionality. See, e.g., Millennium, 817 F.3d at 1131 (denying the defendant’s 19 motion for summary judgment as to aesthetic functionality where the plaintiff “presented 20 evidence that the [claimed trade dress] served in part a source-identifying function”). 21 3. Conclusion 22 Because the Court concludes that the Zest Insert Color Marks have utilitarian 23 functionality, see supra Section I.A.1.a, the Court necessarily concludes that Plaintiffs 24 cannot establish a serious question going to, much less a likelihood of success on, the merits 25 as to their trademark infringement claim. But because the Court concludes that the 26 LOCATOR® Trade Dress has neither utilitarian nor aesthetic functionality, see supra 27 Sections I.A.1.b, I.A.2, respectively, the Court therefore concludes that Plaintiffs have 28 /// 26 22-CV-230 TWR (NLS) 1 carried their burden of demonstrating that the LOCATOR® Trade Dress is non-functional 2 and proceeds to the next step of its analysis. 3 B. 4 “A trade dress has acquired secondary meaning when consumers associate the 5 design features with a particular producer.” adidas, 890 F.3d at 754 (citing Fleischer 6 Studios, Inc. v. A.V.E.L.A., Inc., 654 F.3d 958, 967 (9th Cir. 2011)). In other words, “a 7 plaintiff must demonstrate ‘a mental recognition in buyers’ and potential buyers’ minds 8 that products connected with the [mark] are associated with the same source.’” See Art 9 Attacks, 581 F.3d at 1145 (alteration in original) (quoting Japan Telecom v. Japan Telecom 10 Secondary Meaning Am., 287 F.3d 866, 873 (9th Cir. 2002)). 11 “A plaintiff may establish secondary meaning through direct and circumstantial 12 evidence.” Cont’l Lab’y Prod., Inc. v. Medax Int’l, Inc., 114 F. Supp. 2d 992, 999–1000 13 (S.D. Cal. 2000) (citing 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair 14 Competition § 15:30 (4th ed. 2000) (“McCarthy”)). “Direct evidence, such as consumer 15 surveys and direct consumer testimony, often provides the strongest evidence of secondary 16 meaning.”13 Id. at 1000 (first citing Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 17 1358 (9th Cir. 1985); then citing Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 18 (9th Cir. 1989)). “A plaintiff may also establish secondary meaning through circumstantial 19 evidence, such as: exclusivity, manner, and length of use, amount and manner of 20 advertising, amount of sales and the number of customers, and plaintiff’s established place 21 in the market.” Id. (citing Filipino Yellow Pages, Inc. v. Asian Journal Pubs., Inc., 198 22 F.3d 1143, 1151 (9th Cir. 1999); Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512, 517 (9th 23 Cir. 1989)); accord adidas, 890 F.3d at 754 (“Some of the relevant factors for determining 24 secondary meaning include the exclusivity, manner, and length of use of the trade dress, 25 26 13 27 28 Defendants fault Plaintiffs for not introducing such direct evidence. (See Opp’n at 18.) But “survey evidence is only one of the most persuasive ways to prove secondary meaning, and not a requirement for such proof,” Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814, 822 (9th Cir. 1996), particularly at the preliminary injunction phase. 27 22-CV-230 TWR (NLS) 1 the amount and manner of advertising, the amount of sales, and proof of intentional 2 copying by the defendant.” (citing Art Attacks, 581 F.3d at 1145)). “Evidence of deliberate 3 copying may, in appropriate cases, support an inference of secondary meaning.” Cont’l 4 Lab’y, 114 F. Supp. 2d at 1000 (citing Fuddruckers, Inc., 826 F.2d at 844). 5 Here, Plaintiffs contend that the LOCATOR® Trade Dress has acquired secondary 6 meaning because of its long, exclusive use; Plaintiffs’ substantial advertising efforts; and 7 Defendants’ exact copying. (See Mot. at 20–21.) Separately addressing the LOCATOR® 8 insert colors and abutment shape, Defendants counter that Plaintiffs have failed to carry 9 their burden. (See Opp’n at 16–20.) Again, Defendants miss the mark by failing to address 10 the LOCATOR® Trade Dress as a whole. 14 See supra Section I.A.2. Nonetheless, because 11 Plaintiffs bear the burden of establishing their entitlement to preliminary injunctive relief, 12 the Court must assure itself that Plaintiffs adequately have demonstrated that the 13 LOCATOR® Trade Dress has acquired secondary meaning based on the record before it. 14 First, Plaintiffs have introduced evidence that they first began continuously and 15 exclusively using the LOCATOR® Trade Dress in 1999. (See Towse Decl. ¶ 14.) 16 Plaintiffs therefore enjoyed continuous and exclusive use for approximately sixteen years 17 before DESSLoc® entered the United States market in 2015. (See Terrats Decl. ¶ 19.) 18 Although this is but one factor in the analysis, see, e.g., Walker & Zanger, Inc. v. Paragon 19 Indus., Inc., 549 F. Supp. 2d 1168, 1180 (N.D. Cal. 2007) (citing McCarthy § 15:53), the 20 Ninth Circuit has suggested that nine years is “a fairly long time” and that “[f]ive years of 21 exclusive use is prima facie evidence of secondary meaning.”15 Cal. Scents v. Surco Prod., 22 Inc., 28 F. App’x 659, 663 (9th Cir. 2002) (citing 15 U.S.C. § 1052(f)). 23 24 25 26 27 28 14 Defendants, for example, argue that the PTO’s 2014 denial of Plaintiffs’ applications to have the Registered Zest Insert Color Marks placed on the Principal Register are “dispositive” of the secondary meaning issue. (See Opp’n at 17–18.) Even if this were true, (cf. Reply at 8–10), the PTO examined only the Registered Zest Insert Color Marks, not the LOCATOR® Trade Dress. 15 California Scents is unpublished, see 9th Cir. Rule 36-3, and there appears to be a split in authority as to whether five years of exclusive use in commerce establishes a prima facie case of secondary meaning. 28 22-CV-230 TWR (NLS) 1 Plaintiffs also introduce evidence that they have expended significant amounts of 2 money over the years on advertisements depicting the LOCATOR® Trade Dress. (See, 3 e.g., Stratton Decl. ¶¶ 18–20 (depicting advertisements displaying the LOCATOR® trade 4 dress (citing Pls.’ Ex. B at 44–45, 56, 108)), ¶ 23 (noting that Plaintiffs have spent 5 approximately $ 6 approximately 7 does not in itself create legally protectable rights[ because] . . . [t]he test of secondary 8 meaning is the effectiveness of the effort to create it.” See First Brands, 809 F.2d at 1383 9 (first alteration in original) (internal quotation marks omitted) (quoting Carter-Wallace, 10 Inc. v. Procter & Gamble Co., 434 F.2d 794, 800, 802 (9th Cir. 1970)). Here, however, 11 Plaintiffs’ advertising has resulted in it becoming an award-winning, “market leader in 12 removable denture attachment products,” that now “is the most popular and widely used 13 denture attachment system in the world.” (See Stratton Decl. ¶¶ 5, 30–31.) Further, 14 although “[s]econdary meaning and likelihood of buyer confusion are separate but related 15 determinations,” see adidas, 890 F.3d at 754 (quoting Levi Strauss Co. v. Blue Bell, Inc., 16 632 F.2d 817, 821 (9th Cir. 1980)), Plaintiffs’ “evidence of the history of marketing their 17 product and that at least one consumer was indeed confused by the similarity” of 18 DESSLoc® to the LOCATOR® Trade Dress, (see Scherer Decl. ¶¶ 21–23), supports an 19 inference of secondary meaning. See Am. Rena Int’l Corp v. Sis-Joyce Int’l Co., No. CV- 20 12-06972-DMG-JEMX, 2012 WL 12538385, at *7 (C.D. Cal. Oct. 15, 2012), aff’d, 534 F. 21 App’x 633 (9th Cir. 2013). per year marketing LOCATOR®, which represents % of its annual revenue).) Of course, “[a] large expenditure of money 22 23 24 25 26 27 28 Compare CytoSport, Inc. v. Vital Pharms., Inc., 617 F. Supp. 2d 1051, 1079 (E.D. Cal.) (“Prima facie evidence of the development of secondary meaning is established where a mark has been continuously and exclusively used for a period of five years.” (citing Secular Org. for Sobriety Inc. v. Ullrich, 213 F.3d 1125, 1130 (9th Cir. 2000)), aff’d, 348 F. App’x 288 (9th Cir. 2009), with Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, 680 F. Supp. 2d 1107, 1116 (N.D. Cal. 2010) (“Neither party discusses the threshold question of whether section 2(f) is germane in a[ trademark] infringement case where the mark is unregistered. Stated simply, it is not.” (emphasis in original)). In any event, Plaintiffs used the LOCATOR® Trade Dress exclusively in commerce for sixteen years—providing a substantial window for the LOCATOR Trade Dress to assume secondary meaning—before DESSLoc® entered the market. 29 22-CV-230 TWR (NLS) 1 Finally, “[p]roof of copying strongly supports an inference of secondary meaning.” 2 adidas, 890 F.3d at 755 (alteration in original) (quoting Vision Sports, 888 F.2d at 615). 3 Defendants contend that they initially bought the DESSLoc® abutments and inserts 4 through another company, Futuracam, (see Terrats Decl. ¶¶ 10, 16), but this was spurred 5 by inquiries from Defendants’ Spanish customers as to whether they “had a product 6 compatible with Zest’s LOCATOR® abutment.” (See id. ¶ 10 (emphasis added).) In any 7 event, “[t]he similarities between the [LOCATOR® Trade Dress] and [DESSLoc®] are 8 unmistakable.” See adidas, 890 F.3d at 755. Defendants point out slight variations in 9 shade between the inserts, (see Szara Decl. ¶ 15), and the lighter gold color of their 10 abutments. (See Terrats Decl. ¶ 13; Szara Decl. ¶ 14.) But these “[m]inor differences . . . 11 do not negate the overall impression of similarity,” see adidas, 890 F.3d at 755 (citing 12 Clicks Billiards, 251 F.3d at 1259), and the corresponding inference of direct copying. As 13 Plaintiffs note, “[t]here is no logical reason for [Defendants’] precise copying save an 14 attempt to realize upon a secondary meaning that is in existence.” (See Mot. at 20 (second 15 alteration in original) (quoting Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 16 1001, 1016 (9th Cir. 1985)).) 17 Accordingly, the Court concludes that Plaintiffs’ have established that the 18 LOCATOR® Trade Dress has acquired secondary meaning. See, e.g., Vision Sports, 888 19 F.2d at 615 (affirming district court’s conclusion that “logo ha[d] acquired secondary 20 meaning . . . based on [the plaintiff]’s extensive use and promotion of the logo and also on 21 [the defendant]’s deliberate and close imitation of the design”). 22 C. 23 The final factor—likelihood of confusion—“turns on whether a reasonably prudent 24 consumer would be confused about the source of the goods bearing the marks.” See adidas, 25 890 F.3d at 755 (citing Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1129 26 (9th Cir. 1998)). “Likelihood of confusion in the trade dress context is evaluated by 27 reference to the same factors used in the ordinary trademark context[, which] . . . are 28 /// Likelihood of Confusion 30 22-CV-230 TWR (NLS) 1 commonly referred to as the ‘Sleekcraft factors.’” Id. (quoting Vision Sports, 888 F.2d at 2 616). Pursuant to Sleekcraft, 3 4 5 6 In determining whether confusion between related goods is likely, the following factors are relevant: 1. strength of the mark; 2. proximity of the goods; 3. similarity of the marks; 4. evidence of actual confusion; 5. marketing channels used; 6. type of goods and the degree of care likely to be exercised by the purchaser; 7. defendant’s intent in selecting the mark; and 8. likelihood of expansion of the product lines. 7 8 9 10 11 12 13 14 15 16 AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979) (footnote omitted) 17 (citing Sleeper Lounge Co. v. Bell Mfg. Co., 253 F.2d 720, 722 (9th Cir. 1958)); 18 Restatement (First) of Torts § 731 (1938)), abrogated on other grounds by Mattel, Inc. v. 19 Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003). 20 the Sleekcraft factors are needed to reach a conclusion as to whether there is a likelihood 21 of confusion.” adidas, 890 F.3d at 756 (quoting GoTo.com, 202 F.3d at 1206). “[O]nly a subset of 22 As an initial matter, “the similarity of the marks[ ]has always been considered a 23 critical question in the likelihood-of-confusion analysis.” See GoTo.com, 202 F.3d at 1205 24 (citing Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1054 (9th Cir. 25 1999)). “Together with the relatedness of the services and the use of a common marketing 26 channel, this . . . factor constitutes part of the controlling troika in the Sleekcraft analysis.” 27 See id. Unfortunately for Defendants, they do not contest any of these “controlling” 28 factors. (See generally Opp’n at 21–27; see also Reply at 9.) Nor could they—both 31 22-CV-230 TWR (NLS) 1 LOCATOR® and DESSLoc® are denture attachment product suites, both use the same 2 insert colors to correspond to the same retention strength and the same trilobe shape on the 3 top of a gold-colored abutment, 16 and both use nearly identical marketing channels.17 4 This leaves only four Sleekcraft factors in dispute: (1) the strength of the 5 LOCATOR® Trade Dress, (2) the degree of care likely to be exercised by the Parties’ 6 clientele, (3) evidence of actual confusion, and (4) Defendants’ intent in designing its 7 DESSLoc® line. 18 As for the first of these, “in situations in which the appearance of the 8 conflicting marks and the services provided are almost identical, ‘the strength of the mark 9 is of diminished importance in the likelihood of confusion analysis.’” GoTo.com, 202 F.3d 10 at 1208 (quoting Brookfield, 174 F.3d at 1059). As discussed above, see supra page 30, 11 Defendants have conceded the near identity in the appearance and goods provided. In any 12 event, even assuming that the LOCATOR Trade Dress is weak, the Court has concluded 13 that Plaintiffs have established that it is has acquired secondary meaning, see supra Section 14 I.B, thereby rendering it distinctive. See, e.g., Aurora World, Inc. v. Ty Inc., 719 F. Supp. 15 2d 1115, 1158 (C.D. Cal. 2009) (“The distinctiveness of trade dress is related to the 16 17 18 19 20 21 22 23 24 25 16 As noted above, see supra Section I.B, Defendants do identify minor distinctions between the LOCATOR® and DESSLoc® lines, such as slight variations in shade between the inserts, (see Szara Decl. ¶ 15), and the lighter gold color of their abutments. (See Terrats Decl. ¶ 13; Szara Decl. ¶ 14.) Figures 7 and 8, however, reveal the striking similarity between the LOCATOR® and DESSLoc® abutments and inserts, respectively. See supra pages 10–11. Further, not only do the products look alike, but they also have similar sounding names—ZestLoc (as a potential shorthand for Zest LOCATOR®) sounds nearly identical to DESSLoc®. 17 Between May 1, 2008, and September 2, 2021, Plaintiffs partnered with Zimmer Biomet to sell LOCATOR® products under Zimmer Biomet’s OverdenSURE line. (See Towse Decl. ¶ 26.) In late 2021, after Plaintiffs’ partnership with Zimmer Biomet ended, Defendants partnered with Zimmer Biomet to market in the United States a product identical to DESSLoc® under Zimmer Biomet’s OverdenSURE line. (See Stratton Decl. ¶ 47; see also Towse Decl. ¶ 24; Terrats Decl. ¶ 25; Szara Decl. ¶ 14.) Zimmer Biomet aside, there is not dispute that both Plaintiffs and Defendants use a number of the same marketing channels. (See, e.g., Stratton Decl. ¶ 48.) 26 18 27 28 Plaintiffs correctly note that the eighth factor—likelihood of expansion of product lines—is “not implicated” here, (see Reply at 10 n.3 (citing Mot. at 28)), because “DESS and Zest compete directly.” (See Mot. at 28 (citing Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1153 (9th Cir. 2011)).) 32 22-CV-230 TWR (NLS) 1 question of secondary meaning.” (citing TrafFix Devices, 532 U.S. at 28)). There is also 2 evidence in the record that dental professionals associate the LOCATOR® Trade Dress 3 with Plaintiffs.19 (See, e.g., Scherer Decl. ¶ 15 (“As a practicing dentist and prosthodontist, 4 and in my work speaking with dentists and others in the dental field, I have found that 5 dental professionals automatically associate LOCATOR®’s distinctive aesthetic 6 features—the brightly-colored inserts and the distinctive abutments—with Zest.”), 7 ¶¶ 21–23 (discussing customer confusion).) This factor therefore favors Plaintiffs. 8 As for degree of consumer care, “[c]onfusion is less likely where buyers exercise 9 care and precision in their purchases, such as for expensive or sophisticated items. In 10 evaluating this factor, [courts are to] consider ‘the typical buyer exercising ordinary 11 caution.’” See Au-Tomotive Gold, 457 F.3d at 1076 (citing Sleekcraft, 599 F.2d at 353). 12 Here, it is undisputed that buyers of the Parties’ products are dental professionals, (see 13 Stratton Decl. ¶ 17; Towse Decl. ¶ 19; Terrats Decl. ¶ 24; Morris Decl. ¶¶ 2, 7, 13), who 14 “are sophisticated consumers who will exercise heightened care.” See Juno Therapeutics, 15 Inc. v. Juno Biomed., Inc., No. 17-CV-04196-JSC, 2018 WL 2021483, at *6 (N.D. Cal. 16 Mar. 26, 2018) (citing Vertos Med., Inc. v. Globus Med., Inc., No. C 09-1411 PJH, 2009 17 WL 3740709, at *8–9 (N.D. Cal. Nov. 6, 2009); Asuragen, Inc. v. Accuragen, Inc., Case 18 No. 16-cv-05440-RS, 2018 WL 558888, at *3 (N.D. Cal. Jan. 25)), report and 19 recommendation adopted, No. 2018 WL 1993407 (N.D. Cal. Apr. 27, 2018). A “higher 20 standard,” however, “will not preclude a finding that confusion is likely.” See Sleekcraft, 21 599 F.2d at 353 (citing Am. Drill Brushing Co. v. Rockwell Mfg. Co., 342 F.2d 1019, 1022 22 (C.C.P.A. 1965)). 23 /// 24 25 26 27 28 19 Defendants attempt to rebut this evidence through the Morris and Szara Declarations. Like the rest of Defendants’ briefing, however, each of those declarations fails to address the LOCATOR® Trade Dress as a whole, instead focusing only on its individual elements (the individual insert colors, the gold-colored abutment, and the trilobe abutment top). (See Morris Decl. ¶¶ 9–11; Szara Decl. ¶¶ 10–13.) The relevance of this testimony is therefore minimal at best. 33 22-CV-230 TWR (NLS) 1 Such is the case here—although dental professionals are sophisticated, Defendants’ 2 product is now being marketed through Zimmer Biomet under its OverdenSURE line, as 3 Plaintiffs’ nearly identical product was until recently. As Plaintiffs demonstrate with 4 respect to the next Sleekcraft factor, this could lead to confusion among even the most 5 sophisticated of buyers. See, e.g., Am. Rena, 2012 WL 12538385, at *6 (“Where, as here, 6 the parties’ marks are nearly identical, it ‘is irrational to expect that even the most 7 sophisticated consumer will exercise the kind of scrupulous examination that would enable 8 him or her to discern the difference’ between the two product lines.” (quoting Electropix 9 v. Liberty Livewire Corp., 178 F. Supp. 2d 1125, 1134 (C.D. Cal. 2001))). Accordingly, 10 the Court finds that this factor also favors Plaintiffs. 11 This brings us to actual confusion. Especially at the preliminary injunction stage, 12 “[f]ailing ‘to prove instances of actual confusion is not dispositive against a trademark 13 plaintiff’ because ‘difficulties in gathering evidence of actual confusion make its absence 14 generally unnoteworthy.’” See Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1131 (9th 15 Cir. 2014) (quoting Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165, 1176 (9th Cir. 16 2007)) (citing Wells Fargo & Co. v. ABD Ins. & Fin. Servs., Inc., 758 F.3d 1069, 1072–73 17 (9th Cir. 2014)). Nonetheless, Plaintiffs introduce some evidence of actual confusion here. 18 (See Scherer Decl. ¶¶ 21–23.) “For example, a large Zimmer Biomet customer told 19 [Dr. Scherer] recently that the doctors to whom he sold LOCATOR® are confused by 20 DESS’s knock-offs and how they relate to LOCATOR®.” (Id. ¶ 22.) “Additionally, an 21 office manager of a dental office told [Dr. Scherer] she believed that Zimmer Biomet was 22 still selling Zest’s products, stating to [Dr. Scherer] that OverdenSURE, the brand Zimmer 23 Biomet is using to sell DESSLoc, was still ‘the same LOCATOR® just a new brochure.’” 24 (Id. ¶ 23.) This factor therefore weighs in favor of Plaintiffs. See, e.g., Am. Rena, 2012 25 WL 12538385, at *6 & n.3 (concluding that declarations from two consumers evidencing 26 actual confusion sufficed to establish a likelihood of actual confusion, even in the face of 27 “several declarations of customers who claim that they were not confused” submitted by 28 the defendants). 34 22-CV-230 TWR (NLS) 1 As for the final factor, “[t]his factor favors the plaintiff where the alleged infringer 2 adopted his mark with knowledge, actual or constructive, that it was another’s 3 trademark.” Id. (quoting Brookfield, 174 F.3d at 1059). As the Court has already noted, 4 see supra Section I.B, DESSLoc® was created directly in response to inquiries from 5 Defendants’ Spanish customers as to whether they “had a product compatible with Zest’s 6 LOCATOR® abutment.” (See Terrats Decl. ¶ 10.) Further, “[t]here is no logical reason 7 for [Defendants’] precise copying save an attempt to realize upon a secondary meaning 8 that is in existence.” (See Mot. at 20 (second alteration in original) (quoting Transgo, 768 9 F.2d at 1016). The Court therefore concludes that this final Sleekcraft factor favors 10 Plaintiffs. 11 “The seven relevant [Sleekcraft] factors all point to a likelihood of confusion on the 12 part of consumers, and thus it is likely Plaintiffs will be able to prove trade[ dress] 13 infringement.” 14 Accordingly, the Court concludes that Plaintiffs have established that consumers are likely 15 to be confused by the similarity of Defendants’ DESSLoc® products to the LOCATOR® 16 Product Suite. 17 D. 18 Based on the above analysis, the Court concludes that Plaintiffs have established a See Am. Rena, 2012 WL 12538385, at *7 (emphasis in original). Conclusion 19 likelihood of probable success on the merits for their trade dress infringement claim. 20 II. Likelihood of Irreparable Harm 21 Because the Court concludes that Plaintiffs have established a likelihood of success 22 on the merits, see supra Section I, “[b]y statute, [Plaintiffs are] entitled to a rebuttable 23 presumption of irreparable harm on [their] trademark claim because the compan[ies] ha[ve] 24 shown [they] will likely succeed on the merits.” AK Futures LLC v. Boyd St. Distro, LLC, 25 35 F.4th 682 (9th Cir. 2022) (citing 15 U.S.C. § 1116(a)). 26 presumption,” Plaintiffs also argue that they will suffer irreparable harm because 27 Defendants infringement will “harm Zest’s reputation and brand . . . , damage Zest’s sales, 28 and . . . diminish[] Zest’s goodwill and business.” (See Mot. at 28–29.) For their part, “Notwithstanding this 35 22-CV-230 TWR (NLS) 1 Defendants attempt to rebut the presumption of irreparable harm on two grounds: 2 (1) Plaintiffs delayed in seeking preliminary injunctive relief, (see Opp’n at 27–28); and 3 (2) Plaintiffs have unclean hands. (See id. at 28–29.) Defendants also contend that 4 Plaintiffs fail to establish more than a “possibility” of irreparable harm, which does not 5 suffice. (See id. at 29–30.) 6 First, Defendants contend that Plaintiffs are not entitled to a presumption of 7 irreparable harm because they waited nearly five years after learning that Defendants were 8 offering their DESSLoc® products in the United States to seek injunctive relief. (See id. 9 at 27–28.) Plaintiffs do not dispute that they first learned of Defendants’ alleged 10 infringement “[i]n the summer of 2017,” (see Stratton Decl. ¶ 33), but that they failed to 11 file suit or seek preliminary injunctive relief until early 2022. (See generally ECF Nos. 1, 12 15.) Plaintiffs respond, however, that “there has been no delay in seeking relief . . . 13 [because they] quickly sought relief when DESS’s partnership with Zimmer Biomet 14 presented immediate, material, and irreparable harm.” (See Reply at 13 (citing Arc of Cal. 15 v. Douglas, 757 F.3d 975, 990 (9th Cir. 2014)).) 16 The Ninth Circuit has explained that “[u]sually, delay is but a single factor to 17 consider in evaluating irreparable injury; courts are ‘loath to withhold relief solely on that 18 ground.’” Arc of Cal., 757 F.3d at 990 (quoting Lydo Enters., Inc. v. City of Las Vegas, 745 19 F.2d 1211, 1214 (9th Cir. 1984)). Consequently, “[a]lthough a plaintiff’s failure to seek 20 judicial protection can imply the lack of need for speedy action . . . , such tardiness is not 21 particularly probative in the context of ongoing, worsening injuries.” 22 quotation marks and citation omitted). For example, it may “undermin[e] any inference 23 that the plaintiff was sleeping on its rights” if “the magnitude of the potential harm becomes 24 apparent gradually.” Id. at 990–91. Similarly, a delay in seeking injunctive relief may be 25 reasonable where the plaintiff monitors the situation and decides to sue only when the 26 alleged infringer “expand[s] . . . into a real threat.” See Disney Enters., Inc. v. VidAngel, 27 Inc., 869 F.3d 848, 866 (9th Cir. 2017). In other words, “[u]nder [certain] circumstances, 28 waiting to file for preliminary relief until a credible case for irreparable harm can be made Id. (internal 36 22-CV-230 TWR (NLS) 1 is prudent rather than dilatory[, and t]he significance of such a prudent delay in determining 2 irreparable harm may become so small as to disappear.” See Arc of Cal., 757 F.3d at 991. 3 The Court concludes that Plaintiffs were not dilatory here. Beginning when 4 Plaintiffs discovered Defendants’ alleged infringement, they exchanged correspondence 5 through counsel and began monitoring Defendants’ actions. (See Stratton Decl. ¶ 36.) 6 Until Defendants partnered with Zimmer Biomet in late 2021, sales of DESSLoc® 7 products through United-States-based distributors—although trending up—were modest, 8 averaging only $ 9 Plaintiffs, on the other hand, averaged approximately $ per year for 2018 through 2021. (See Terrats Decl. ¶ 33.) per month—or $ 10 per year—in sales to Zimmer Biomet alone during that period, (see Stratton Decl. ¶ 41), 11 with its average annual revenue from LOCATOR® products averaging $ 12 2012. (See Stratton Decl. ¶ 29.) It is therefore reasonable that Plaintiffs only considered 13 Defendants’ alleged infringement to pose a legitimate “threat” when they learned that 14 Defendants had partnered with Zimmer Biomet. (See Stratton Decl. ¶ 41); see also Disney 15 Enters., 869 F.3d at 866 (affirming district court’s finding of irreparable harm where 16 approximately one-year delay was result of the plaintiffs’ “cautious investigation” of the 17 defendant’s allegedly infringing service and the plaintiffs decided to sue when the alleged 18 infringement “expanded . . . into a real threat”); Arc of Cal., 757 F.3d at 990–91 (reversing 19 district court’s conclusion that two-year delay weighed against irreparable harm where 20 delay was unlikely to be probative given existence of “ongoing, worsening injuries”). 21 Under these circumstances, Plaintiffs’ “delay” in seeking preliminary injunctive relief 22 therefore does not rebut the presumption of irreparable harm. since 23 Second, Defendants contend that Plaintiffs have unclean hands because Plaintiffs’ 24 website is “contributing to (and likely benefiting from) an alleged association between Zest 25 and Zimmer Biomet.” (See Opp’n at 28–29.) Plaintiffs respond that “these references [to 26 Zimmer Biomet-compatible products] are hardly sufficient to establish unclean hands.” 27 (See Reply at 13 (citing Northbay Wellness Grp., Inc. v. Beyries, 789 F.3d 956, 959 (9th 28 Cir. 2015)).) “Trademark law’s unclean hands defense springs from the rationale that ‘it 37 22-CV-230 TWR (NLS) 1 is essential that the plaintiff should not in his trade[]mark, or in his advertisements and 2 business, be himself guilty of any false or misleading representation.’” Japan Telecom, 3 287 F.3d at 870 (quoting Worden v. Cal. Fig Syrup Co., 187 U.S. 516, 528 (1903)). “To 4 make out an unclean hands defense, a trademark defendant must demonstrate that the 5 plaintiff’s conduct is inequitable and that the conduct relates to the subject matter of its 6 claims.” 2Die4Kourt v. Hillair Cap. Mgmt., LLC, 692 F. App’x 366, 368 (9th Cir. 2017) 7 (internal quotation marks omitted) (quoting Japan Telecom, 287 F.3d at 870). “To show 8 that a trademark plaintiff’s conduct is inequitable, defendant must show that plaintiff used 9 the trademark to deceive consumers.” Id. (quoting Japan Telecom, 287 F.3d at 870). “Bad 10 intent is the essence of the defense of unclean hands,” Dollar Sys., Inc. v. Avcar Leasing 11 Sys., Inc., 890 F.2d 165, 173 (9th Cir. 1989) (citing Wells Fargo & Co. v. Stagecoach 12 Props., Inc., 685 F.2d 302, 308 (9th Cir. 1982)), and mere negligence will not suffice. See, 13 e.g., id.; see also FLIR Sys., Inc. v. Sierra Media, Inc., 965 F. Supp. 2d 1184, 1194 (D. Or. 14 2013) (quoting Infineon Techs. AG v. Volterra Semiconductor Corp., No C 11–6239 15 MMC, 2013 WL 1832558, at *4 n. 7 (N.D. Cal. May 1, 2013)). 16 The Court concludes that there is no evidence of such intentional deception here. 17 Plaintiffs explain on reply that Defendants “brought to Zest’s attention a page on Zest’s 18 website . . . that was out of date,” which Zest is now in the process of updating. (See Supp. 19 Stratton Decl. ¶ 5.) Plaintiffs note that their other statements regarding compatibility are 20 truthful, (see id. ¶ 6), but that Plaintiff has updated its website “[f]or the avoidance of any 21 doubt.” (See id. ¶ 7.) Even assuming that this conduct rises to the level of negligence, it 22 would still fall far short of establishing “bad intent.” Accordingly, the Court concludes 23 that Defendants have failed to rebut the presumption that Plaintiffs will be irreparably 24 harmed. 25 Even if Plaintiffs were not entitled to the presumption of irreparable harm, however, 26 the Court would conclude that Plaintiffs have introduced sufficient evidence to establish a 27 likelihood of irreparable harm. “‘[E]vidence of loss of control over business reputation 28 and damage to goodwill [can] constitute irreparable harm,’ so long as there is concrete 38 22-CV-230 TWR (NLS) 1 evidence in the record of those things.” adidas, 890 F.3d at 756 (alterations in original) 2 (quoting Herb Reed, 736 F.3d at 1250). For example, “extensive and targeted advertising 3 and unsolicited media, along with tight control of the supply of [LOCATOR® products], 4 [can] demonstrate that [Plaintiffs] ha[ve] built a specific reputation around the 5 [LOCATOR® Product Suite] with ‘intangible benefits.’” See id. at 756–57 (citing Regents 6 of Univ. of Cal. v. Am. Broad. Cos., 747 F.2d 511, 519 (9th Cir. 1984)). Further, 7 “[e]vidence of threatened loss of prospective customers or goodwill certainly supports a 8 finding of the possibility of irreparable harm.” Stuhlbarg Int’l Sales Co. v. John D. Brush 9 & Co., 240 F.3d 832, 841 (9th Cir. 2001) (citing Tom Doherty Assocs., Inc. v. Saban 10 Entm’t, Inc., 60 F.3d 27, 37–38 (2d Cir. 1995)). 11 Although Defendants contend that Plaintiffs “present[] no evidence of actual loss or 12 tangible harm,” (see Opp’n at 29–30), the Court disagrees and concludes that Plaintiffs 13 introduce sufficient evidence to establish a likelihood of irreparable harm. Here, Plaintiff 14 introduce uncontroverted evidence that they have spent significant amounts of money 15 advertising the LOCATOR® Product Suite, averaging approximately $ 16 year over the last decade. (See Stratton Decl. ¶ 23.) As a result, the LOCATOR® Product 17 Suite has won numerous, third-party awards, (see id. ¶¶ 30–31), and has become “the most 18 popular and widely used denture attachment system in the world.” (See id. ¶ 5.) Until 19 Defendants’ DESSLoc® products entered the scene, Plaintiffs had a lucrative partnership 20 with Zimmer Biomet worth approximately $ 21 Biomet, however, is currently taking orders for Defendants’ allegedly infringing 22 products—which previously had sold a maximum of approximately $ 23 the United States, (see Terrats Decl. ¶ 33)—through its website. (See Towse Decl. ¶ 29.) 24 Purchasers through Zimmer Biomet already have expressed confusion, (see Scherer Decl. 25 ¶¶ 21–23), and, if Defendants are permitted to ship their DESSLoc® products under the 26 OverdenSURE mark pursuant to their new partnership with Zimmer Biomet to customers 27 who previously had purchased the LOCATOR® Product Suite under that same name, (see 28 Towse Decl. ¶ 29), it is likely that Plaintiffs will suffer harm that cannot be remedied by per per year. (See id. ¶ 41.) Zimmer per year in 39 22-CV-230 TWR (NLS) 1 monetary damages in the form of loss of customers and loss of goodwill. Accordingly, the 2 Court concludes that Plaintiffs have established a likelihood, as opposed to a mere 3 “possibility,” of irreparable harm. 4 III. Balance of Equities 5 Plaintiffs contend that “[a]ny harm to DESS’s business is of its own making given 6 that . . . DESS has intentionally sought to market and sell products nearly identical to Zest’s 7 and has recently entered into a distribution agreement to sell knock-off LOCATOR® 8 products via Zimmer Biomet.” (See Mot. at 29–30 (emphasis in original).) Defendants 9 counter that the balance of equities does not favor Plaintiffs because Defendants have been 10 selling DESSLoc®—with Plaintiffs’ knowledge—for nearly five years, meaning that 11 “Zest’s requested remedy . . . goes ‘well beyond maintaining the status quo.’” (See Opp’n 12 at 30 (first citing Signeo USA, LLC v. SOL Republic, Inc., No. 5:11-cv-06370-PSG, 2012 13 WL 2050412 at *11 (N.D. Cal. June 6, 2012); then citing Wild v. HarperCollins Publishers 14 LLC, No. 8:12-cv-01191-JST (ANx), 2013 WL 12137684, at *3 (C.D. Cal. Jan. 2, 2013)).) 15 While it is true that a preliminary injunction is meant to maintain the status quo, 16 Defendants misinterpret its scope: “The status quo ante litem refers not simply to any 17 situation before the filing of a lawsuit, but instead to ‘the last uncontested status which 18 preceded the pending controversy[.]’” GoTo.com, 202 F.3d at 1210 (quoting Tanner 19 Motor Livery, 316 F.2d at 809). In this case, that would be before Defendants began 20 marketing and selling their allegedly infringing DESSLoc® products in the United States. 21 See id. (concluding that status quo existed before the defendant had begun using its 22 allegedly infringing logo, not before the plaintiff had filed suit). 23 In any event, Plaintiffs are correct that, “[w]here the only hardship that the defendant 24 will suffer is lost profits from an activity which has been shown likely to be infringing, 25 such an argument . . . ‘merits little equitable consideration.’” Cadence Design Sys. v. 26 Avant! Corp., 125 F.3d 824, 829 (9th Cir. 1997) (alteration in original) (quoting Triad Sys. 27 Corp. v. Se. Exp. Co., 64 F.3d 1330, 1338 (9th Cir. 1995), superseded by statute on other 28 grounds, 17 U.S.C. § 117(c)) (collecting cases). Here, Defendants continued to sell and 40 22-CV-230 TWR (NLS) 1 market DESSLoc® even after receiving correspondence from Plaintiffs’ counsel regarding 2 their alleged infringement. (See, e.g., Stratton Decl. ¶¶ 36–38; Terrats Decl. ¶¶ 26–28.) 3 Because Plaintiffs have shown a likelihood of success on the merits, “the balance of 4 hardships issue cannot be accorded significant—if any—weight in determining whether a 5 court should enter a preliminary injunction.” See Cadence Design, 125 F.3d at 830. The 6 Court therefore concludes that Plaintiffs have established that the equities favor granting 7 them the requested preliminary injunctive relief. 8 IV. Public Interest 9 Finally, Plaintiffs contend that the requested preliminary injunction would serve the 10 public interest because “[o]ne of the essential purposes of trademark law is to protect 11 consumers from confusion.” (See Mot. at 30 (citing Park ‘N Fly, Inc. v. Dollar Park & 12 Fly, 469 U.S. 189, 198 (1985); Wetzel’s Pretzels, LLC v. Johnson, 797 F. Supp. 2d 1020, 13 1029 (C.D. Cal. 2011)).) Defendants respond that, “even if the Court were to find a 14 likelihood of consumer confusion, that harm does not outweigh the public’s interest in 15 ready access to, and a robust market for, FDA approved medical devices.” (See Opp’n at 16 31.) 17 Defendants cite several cases to support their position. (See id. at 31 & n.10 (first 18 citing Nutrishare, Inc. v. BioRx, LLC, No. 08 CV 1493 JM BLM, 2008 WL 4748109, at *5 19 (S.D. Cal. Oct. 23, 2008); then citing Conceptus, Inc. v. Hologic, Inc., No. C 09-02280 20 WHA, 2012 WL 44064, at *3–4 (N.D. Cal. Jan. 9, 2012); then citing Advanced 21 Cardiovascular Sys., Inc. v. Medtronic, Inc., No. C95-03577-DLJ, 2008 WL 4647384, at 22 *11 (N.D. Cal. Oct. 20, 2008); finally citing HDOS Franchise Brands, LLC v. El Paso Hot 23 Dog, LLC, No. 321CV00201AJBBLM, 2021 WL 5629923, at *8 (S.D. Cal. June 29, 24 2021)).) Not only are none of those cases binding on this Court, all can be distinguished 25 from the instant case as well. 26 First, the Court in HDOS concluded that the public interest supported issuance of a 27 preliminary injunction because “[t]he public . . . has a strong interest in being free from 28 confusion due to [the d]efendants’ infringing conduct.” See 2021 WL 5629923, at *8. This 41 22-CV-230 TWR (NLS) 1 is the exact argument Plaintiffs advance here. HDOS therefore simply does not support 2 Defendants’ position. 3 Second, the party seeking the preliminary injunction in Nutrishare “fail[ed] to 4 demonstrate a strong or probable likelihood of success on its trademark claims or that it 5 w[ould] suffer irreparable harm if a preliminary injunction is not granted.” See 2008 WL 6 4748109, at *6. Unlike in Nutrishare, however, the Court here concludes that Plaintiffs 7 have demonstrated a strong likelihood of success on the merits, see supra Section I, and 8 that Plaintiffs will suffer irreparable harm if a preliminary injunction is not granted. See 9 supra Section II. Further, the court in Nutrishare found that the public interest factor was 10 “not substantial” because both of the parties’ positions—plaintiff’s argument concerning 11 avoidance of confusion and the defendant’s argument concerning the effect the injunction 12 would have on “healthy competition in the market” and “patients who rely on its 13 products”—had “some merit.” See id. at *5. Accordingly, Nutrishare—at best—supports 14 a conclusion that the public interest factor is of minimal relevance here. 15 Third, Conceptus involved a motion for a permanent injunction following a patent- 16 infringement trial for a contraceptive product, see 2012 WL 44064, at *1, where the two 17 products were “not interchangeable products and procedures” and “[e]njoining the sale of 18 [the infringing product] would leave only one product for transcervical hysteroscopic 19 sterilization.” See id. at *3. Here, by contrast, the products are interchangeable, (see 20 Terrats Decl. ¶¶ 10–11 (explaining that DESSLoc® was developed to be compatible with 21 LOCATOR®)), and there are other, non-infringing products available. (See Reply at 14.) 22 Finally, Advanced Cardiovascular Systems concerned a motion to modify a 23 permanent injunction entered eight years prior following a patent-infringement trial, see 24 2008 WL 4647384, at *1, *3, meaning the plaintiff had enjoyed permanent injunctive relief 25 for eight years before the court decided to dissolve the injunction. The plaintiff in that case 26 also had licensed the patented product in contention to other companies over those eight 27 years, indicating that money damages were sufficient. See id. at *10. And, as in Conceptus 28 /// 42 22-CV-230 TWR (NLS) 1 but unlike in this case, enjoining the sale of the infringing product would leave only one 2 device available to the market. See id. at *11. 3 In short, this is not a situation in which enjoining Defendants’ allegedly infringing 4 DESSLoc® products would leave consumers without viable alternative denture attachment 5 products. Indeed, Defendants characterize the market for their products as “crowded.” 6 (See Opp’n at 21–23.) On the other hand, allowing Defendants to continue to market and 7 sell their allegedly infringing DESSLoc® products pending final adjudication of Plaintiffs’ 8 trade dress infringement claims would risk consumer deception or confusion. Under these 9 circumstances, the Court concludes that the public interest weighs in favor of Plaintiffs. 10 V. Weighing of the Factors 11 Because the Court concludes that Plaintiffs have demonstrated both a likelihood of 12 probable success on the merits, see supra Section I, a likelihood of irreparable harm, see 13 supra Section II, and that all four of the Winter factors favor preliminary injunctive relief, 14 see supra Sections I–IV, the Court also concludes that Plaintiffs have established that they 15 are entitled to their requested preliminary injunctive relief under either of the Ninth 16 Circuit’s variant standards. 17 VI. Bond 18 Under Rule 65(c), “[t]he court may issue a preliminary injunction . . . only if the 19 movant gives security in an amount that the court considers proper to pay the costs and 20 damages sustained by any party found to have been wrongfully enjoined.” See Fed. R. 21 Civ. P. 65(c) (emphasis added). “Despite the seemingly mandatory language, ‘Rule 65(c) 22 invests the district court ‘with discretion as to the amount of security required, if 23 any.’” Johnson v. Couturier, 572 F.3d 1067, 1086 (9th Cir. 2009) (emphasis in original) 24 (quoting Jorgensen v. Cassiday, 320 F.3d 906, 919 (9th Cir. 2003)). “The district court is 25 afforded wide discretion in setting the amount of the bond.” Conn. Gen. Life Ins. Co. v. 26 New Images of Beverly Hills, 321 F.3d 878, 882 (9th Cir. 2003) (citing Walczak v. EPL 27 Prolong, Inc., 198 F.3d 725, 733 (9th Cir. 1999)). 28 /// 43 22-CV-230 TWR (NLS) 1 Because “the purpose of . . . a bond is to cover any costs or damages suffered by the 2 [party sought to be enjoined], arising from a wrongful injunction,” see Gorbach v. Reno, 3 219 F.3d 1087, 1092 (9th Cir. 2000), “the party affected by the injunction [bears the] 4 obligation of presenting evidence that a bond is needed.” See Conn. Gen, 321 F.3d at 883; 5 accord Gorbach, 219 F.3d at 1092 (affirming district court’s decision not to require bond 6 where the party sought to be enjoined “did not show that there would be any” damages). 7 Consequently, if the party affected by the injunction fails to request a bond or submit any 8 evidence regarding its likely damages, the court does not abuse its discretion by setting a 9 bond of zero. See Conn. Gen, 321 F.3d at 882–83. 10 Defendants did not request—or in any way address—bond until the Court asked at 11 oral argument whether Defendants’ failure to do so was an intentional waiver. (See 12 generally Opp’n; see also 06/09/22 Tr.) Accordingly, the Court would be well within its 13 discretion to decline to require Plaintiffs to post any bond here. See Conn. Gen, 321 F.3d 14 at 882–83; Am. Rena, 2012 WL 12538385, at *9 (waiving bond requirement where the 15 “[d]efendants have not addressed the amount of the bond and have failed to respond to [the 16 p]laintiffs’ contention that no bond is required”). 17 Nonetheless, Defendants did request “at minimum a dollar bond” at oral 18 argument based on Plaintiffs’ historic monthly sales of the LOCATOR® Product Suite to 19 Biomet Zimmer. (See 06/09/22 Tr.; see also Stratton Decl. ¶ 41.) Defendants, however, 20 made only $ 21 2017 and the filing of their Opposition. (See Terrats Decl. ¶ 33.) On this record, 22 Defendants—who bear the burden of proving their likely damages arising from the 23 issuance of a wrongful injunction—fail to establish their entitlement to the requested bond. 24 Accordingly, the Court ORDERS supplemental briefing as to the necessity and 25 appropriate amount of a bond in this case. Defendants SHALL FILE a supplemental brief 26 accompanied by all evidence necessary to support their request for bond pursuant to 27 Federal Rule of Civil Procedure 65(c) within two (2) weeks of the electronic docketing of 28 this Order. from sales of DESSLoc® to distributors with U.S. addresses between Plaintiffs MAY FILE a response within two (2) weeks of service of 44 22-CV-230 TWR (NLS) 1 Defendants’ supplemental brief. Upon closing of the supplemental briefing, the Court will 2 take the bond issue under submission on the papers pursuant to Civil Local Rule 7.1(d)(1) 3 unless the Court determines that additional briefing or oral argument is required. 4 CONCLUSION 5 In light of the foregoing, the Court GRANTS IN PART AND DENIES IN PART 6 Plaintiffs’ Motion (ECF No. 15). Specifically, the Court GRANTS Plaintiffs’ Motion as 7 to the LOCATOR® Trade Dress but DENIES Plaintiffs’ Motion as to the Zest Insert Color 8 Marks. Accordingly, the Court ENJOINS AND RESTRAINS until the entry of final 9 judgment in this action Defendants Geryon Ventures, LLC d/b/a DESS-USA, and Terrats 10 Medical Sociedad Limitada, together with their agents, employees, representatives, and all 11 persons and entities in concert or participation with them from engaging in, committing or 12 performing, directly or indirectly, any and all of the following acts: 13 1. Using in any way, including in connection with the promotion, marketing, 14 advertising, and sale of products or services, Zest’s LOCATOR® product suite trade dress 15 or any trade dress that is a colorable imitation thereof, or confusingly similar thereto; and 16 2. Importing into the United States any products that use the LOCATOR® 17 product suite trade dress or trade dress that is a colorable imitation thereof, or confusingly 18 similar thereto. 19 Finally, the Court DECLINES to impose a bond in this Order but ORDERS 20 Defendants to file a fully supported supplemental brief regarding the necessity and 21 appropriate amount of any bond in this case within two (2) weeks of the electronic 22 docketing of this Order. Plaintiffs MAY FILE an optional response within two (2) weeks 23 of service of Defendants’ supplemental brief. 24 25 26 27 IT IS SO ORDERED. Dated: July 18, 2022 _____________________________ Honorable Todd W. Robinson United States District Judge 28 45 22-CV-230 TWR (NLS)

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