Empire Level Manufacturing Corp. v. Toolrich Imp. & Exp. Co., Ltd. et al, No. 2:2014cv00718 - Document 25 (D. Nev. 2014)

Court Description: ORDER GRANTING PRELIMINARY INJUNCTION. Signed by Chief Judge Gloria M. Navarro on 8/6/2014. (Copies have been distributed pursuant to the NEF - DKJ)
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Empire Level Manufacturing Corp. v. Toolrich Imp. & Exp. Co., Ltd. et al 1 2 3 4 Doc. 25 F. Christopher Austin, (NV Bar No. 6559) Ryan Gile, (NV Bar No. 8807) WEIDE & MILLER, LTD. 7251 W. Lake Mead Blvd., Suite 530 Las Vegas, NV 89128-8373 (702) 382-4804 caustin@weidemiller.com rgile@weidemiller.com 5 6 7 8 9 10 11 12 Peter N. Jansson (pending pro hac vice) Eric V.C. Jansson (pending pro hac vice) Molly Hogan McKinley (pending pro hac vice) JANSSON MUNGER MCKINLEY & SHAPE LTD 245 Main Street Racine, WI 53403 (262) 632-6900 pjansson@janlaw.com ejansson@janlaw.com mmckinley@janlaw.com Attorneys for Plaintiff Empire Level Manufacturing Corp. / UNITED STATES DISTRICT COURT 13 DISTRICT OF NEVADA 14 15 16 Empire Level Manufacturing Corp., a Wisconsin corporation, Plaintiff, 17 v. 18 Toolrich Imp. & Exp. Co., Ltd., a Chinese company, Zhejiang Yongkang Shiya Wanxing Tools Factory, a Chinese company, Wuxi Just Int’l Trading Co., Ltd., a Chinese company, Pro-Starter Tools Co. Ltd., a Chinese company, Zhejiang Boda Measure Tools Co., Ltd., a Chinese company, Jinhua Shunchi Tools Factory, a/k/a Jinhua Chunyi Tools Co., Ltd., a/k/a Jinhua City Shunchi Tools Factory, a Chinese company, Cixi Ocean Trade Co., Ltd., a Chinese company, and Shaoxing Sunway Tools & Hardware Export & Import Co. Ltd., a Chinese company, 19 20 21 22 23 24 25 26 27 28 Case No.: 2:14-cv-00718 ORDER GRANTING PRELIMINARY INJUNCTION Defendants. W EIDE & MILLER, LTD. 7251 W. LAKE MEAD BLVD., SUITE 530 LAS VEGAS, NEVADA 89128 (702) 382-4804 fca-w-0142 1 Order Granting Preliminary Injuction Dockets.Justia.com 1 Empire Level Manufacturing Corp. (“Empire”) filed a Verified Complaint against the 2 eight above-listed Defendants, and at the same time filed an ex parte Motion for a Temporary 3 Restraining Order, Seizure Order and Preliminary Injunction (“the Motion”). The Court 4 considered the arguments contained in the Motion and its supporting documents, and, based 5 thereon, entered a temporary restraining and seizure order (DE-10) on May 8, 2014, which also 6 set a bond requirement of $10,000 and a preliminary injunction hearing date of May 20, 2014. 7 Counsel for Plaintiff Empire appeared at the preliminary injunction hearing, but counsel did not 8 appear for any of the Defendants. At such hearing the Court was informed that, on May 8, 2014, 9 the Defendants were served process and the Defendants’ subject goods were seized at the 10 National Hardware Show in Las Vegas pursuant to the Order. Based on the papers submitted 11 and the arguments and responses provided at the hearing, the Court finds and orders as follows: 12 1. Empire is likely to succeed in demonstrating that it owns a federally registered 13 trademark, United States Trademark Registration No. 2,833,616 (“the ‘616 Trademark 14 Registration,” a copy of which is attached hereto as Exhibit 1), for key portions of the look of its 15 em81.9 torpedo level, namely, the appearance of its vial window, as well as common law rights 16 in and to the overall appearance of such torpedo level (see attached Exhibit 2), and that such 17 registered trademark and overall appearance serve to signify the source of such product. The 18 non-functional aesthetic elements which constitute the ‘616 Trademark Registration and the 19 overall appearance collectively comprise the protectable trademark rights at issue (collectively, 20 the “Empire Marks”). 21 2. The injury to Empire’s reputation and goodwill resulting from Defendants’ 22 infringement of the Empire Marks is irreparable, and Defendants are unlawfully seeking to 23 capitalize on the reputation and goodwill of Empire. 24 3. The harm to Empire from Defendants’ infringement clearly outweighs any 25 potential harm to any legitimate interest of Defendants resulting from the issuance of a 26 preliminary injunction. 27 4. The public interest in avoiding confusion is served by issuance of an injunction. 28 W EIDE & MILLER, LTD. 7251 W. LAKE MEAD BLVD., SUITE 530 LAS VEGAS, NEVADA 89128 (702) 382-4804 fca-w-0142 2 Order Granting Preliminary Injuction 1 2 5. The value of the seized goods, all of which were shown at the hearing, is no more than modest; furthermore, counsel represented that Empire is financially responsible. 3 NOW, THEREFORE, IT IS ORDERED, ADJUDGED, AND DECREED: 4 A. Defendants, their officers, agents, servants, employees, and attorneys, and all 5 other persons in active concert or participation with one or more of them who receive actual 6 notice of this Order, are enjoined and restrained, throughout the pendency of this litigation or 7 until the Court otherwise orders, from engaging in the following activities and from assisting or 8 inducing others to engage in the following activities: 9 10 i. Using any of the Empire Marks or any other trademark that is a colorable imitation of any Empire Mark or confusingly similar thereto in connection with a level; 11 ii. Importing, exporting, distributing, shipping, introducing into commerce, 12 returning, disposing of, purchasing, offering for sale, marketing, selling, soliciting, filling orders 13 for, promoting, or advertising, including without limitation on the Internet, any level embodying 14 the Empire Marks; 15 16 iii. Passing off, promoting, or selling any products as being produced by or under the supervision or control of Empire when such is not the case; and/or 17 iv. Destroying, altering, shipping, secreting, or otherwise making unavailable 18 to the Court, Empire, the United States Marshal or other law enforcement officer, any 19 documents or tangible things concerning the importing, exporting, distribution, shipment, 20 introduction into commerce, return, disposal of, purchase, offer for sale, sale, solicitation, filling 21 of orders for, promotion or advertising of any level product embodying the Empire Marks, 22 and/or any documents or tangible things in any way pertinent to this action. 23 B. Empire’s counsel shall be permitted to maintain possession of the seized goods 24 during this litigation for use by the Court and by counsel for the parties pursuant to the 25 requirements of the Federal Rules of Civil Procedure. The term “Empire’s counsel” as used 26 herein shall mean attorneys of record in this matter, as well as paralegal assistants, stenographic 27 and clerical employees working under the direct supervision or control of such counsel. 28 C. Service of a copy of this Order and the Verified Complaint shall be made upon W EIDE & MILLER, LTD. 7251 W. LAKE MEAD BLVD., SUITE 530 LAS VEGAS, NEVADA 89128 (702) 382-4804 fca-w-0142 3 Order Granting Preliminary Injuction 1 Defendants by Empire’s counsel by mail to the addresses set forth in the Verified Complaint 2 and/or by email to contact information otherwise provided by Defendants, and/or by facsimile; 3 service by any of such methods shall constitute sufficient service thereof. 4 D. The bond, previously set (in DE-10) at $10,000, is hereby reduced to $100, to 5 secure the payment of such costs and damages as may be suffered or sustained by a party who is 6 found to have been wrongfully enjoined or whose property has been wrongfully seized. 7 IT IS SO ORDERED this 6th day of August, 2014. 8 ________________________________ GLORIA M. NAVARRO UNITED STATES DISTRICT JUDGE 9 ________________________________ Gloria M. Navarro, Chief Judge DATED: _________________________ United States District Court 10 11 12 13 Respectfully submitted by: 14 15 16 17 18 /F. Christopher Austin/ F. Christopher Austin, (NV Bar No. 6559) Ryan Gile, (NV Bar No. 8807) WEIDE & MILLER, LTD. 7251 W. Lake Mead Blvd., Suite 530 Las Vegas, NV 89128-8373 (702) 382-4804 caustin@weidemiller.com rgile@weidemiller.com 19 20 21 22 23 24 25 Peter N. Jansson (pending pro hac vice) Eric V.C. Jansson (pending pro hac vice) Molly Hogan McKinley (pending pro hac vice) JANSSON MUNGER MCKINLEY & SHAPE LTD 245 Main Street Racine, WI 53403 (262) 632-6900 pjansson@janlaw.com ejansson@janlaw.com mmckinley@janlaw.com Attorneys for Plaintiff Empire Level Manufacturing Corp. 26 27 28 W EIDE & MILLER, LTD. 7251 W. LAKE MEAD BLVD., SUITE 530 LAS VEGAS, NEVADA 89128 (702) 382-4804 fca-w-0142 4 Order Granting Preliminary Injuction Exhibit 1 Exhibit B Exhibit 2