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Frugality Inc v. The Individuals Partnerships And Unincorporated Associations Identified on Schedule A

District Court, S.D. Florida·Decided September 21, 2021·No. 1:21-cv-23025·Unknown

Opinion

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF FLORIDA

Case No. 21-cv-23025-BLOOM/Otazo-Reyes

FRUGALITY INC.,

Plaintiff,

v.

THE INDIVIDUALS, PARTNERSHIPS, AND UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE “A,”

Defendants. ______________________________________/

ORDER GRANTING MOTION FOR PRELIMINARY INJUNCTION THIS CAUSE is before the Court on Plaintiff Frugality Inc.’s (“Plaintiff”) Motion for Preliminary Injunction, ECF No. [4] (“Motion”), filed on August 19, 2021 pursuant to 15 U.S.C. § 1116, Federal Rule of Civil Procedure 65, and The All Writs Act, 28 U.S.C. § 1651(a). On August 24, 2021, the Court entered a Temporary Restraining Order and an Order Restraining the Financial Accounts used by Defendants, ECF No. [11] (“TRO”). The TRO set a hearing on the Plaintiff Motion for Preliminary Injunction for September 1, 2021. Thereafter, Plaintiff sought two continuances of the Preliminary Injunction Hearing, ECF Nos. [14] & [19], which the Court granted, ECF No. [15] & [21]. The Preliminary Injunction Hearing was ultimately held on September 17, 2021 at 3:00 p.m. via remote video conference. ECF Nos. [21] & [32]. Prior to the hearing on the Motion for Preliminary Injunction, Plaintiff filed two Proof(s) of Service, ECF No. [29] & [30], demonstrating service on Defendants pursuant to the Court’s Order Authorizing Alternative Service of Process, ECF No. [12]. The Proof(s) of Service affirmed that Plaintiff served process on Defendants identified on Schedule A by emailing these Defendants the text of the summons issued in this action and the link http://www.sriplaw.com/notice, where the full text of the Complaint, exhibits thereto, Temporary Restraining Order, and the full text of all other documents filed in this action are available to view and download in compliance with this Court’s Order on Alternate Service, with the exception of Defendants numbered 485, 486, 487, 488, 489, 490.

At the Preliminary Injunction Hearing, the Court inquired whether service had been made on all Defendants, and Plaintiff confirmed that service was made on all Defendants identified on Schedule A, except for Defendants numbered 485, 486, 487, 488, 489, 490. Plaintiff requested that the TRO be extended as to those Defendants on which service had not yet been made. The Court found that good cause was not shown for the extension of the TRO on those Defendants and denied Plaintiff’s ore tenus motion. The Court heard argument from Plaintiff and reviewed the evidence presented to the Court on the Motion. Having considered the evidence and the arguments, the Court grants Plaintiff’s Motion for Entry of a Preliminary Injunction in its entirety against the Defendants identified in

Schedule A hereto, which does not include Defendants numbered 485, 486, 487, 488, 489, 490 on whom service has not been made, and the TRO is dissolved as to Defendants numbered 485, 486, 487, 488, 489, 490. The Court determines that it has personal jurisdiction over Defendants identified on Schedule A hereto since the evidence presented on the Motion shows that Defendants, except those indicated above on whom service was not made, have been served with process pursuant to this Court’s order authorizing alternative service. The Court also determines that these Defendants directly target their business activities toward consumers in the United States, including Florida, and specifically that Defendants are reaching out to do business with Florida residents by operating one or more commercial, interactive internet stores on internet marketplaces where Florida residents can purchase products bearing infringing and/or counterfeit trademarks belonging to the plaintiff. This Court further determines that the temporary restraints previously granted in the TRO should remain in place through the pendency of this litigation and that issuing this Preliminary

Injunction is warranted under Federal Rule of Civil Procedure 65. Evidence submitted in support of this Motion and in support of Plaintiff’s previously granted Motion for a Temporary Restraining Order establishes that Plaintiff has a likelihood of success on the merits; that no remedy at law exists; and that Plaintiff will suffer irreparable harm if the injunction is not granted. The Court concludes that Plaintiff has a strong probability of proving at trial that consumers are likely to be confused by Defendants’ advertisement, promotion, sale, offer for sale, or distribution of goods bearing counterfeits, reproductions, or colorable imitations of the products using the SECRET XPRESS CONTROL trademark, U.S. Reg. No. 5990755 for “Mascaras” in International Class 3 registered February 18, 2020.

The potential harm to Defendants in restraining their trade in counterfeit and infringing branded goods if a preliminary injunction is issued is far outweighed by the potential harm to Plaintiff, its reputation, and its goodwill as a manufacturer and distributor of quality products, if such relief is not issued. The public interest favors issuance of the temporary restraining order to protect Plaintiff’s trademark interests and protect the public from being defrauded by the palming off of counterfeit goods as Plaintiff’s genuine goods. Further, under 15 U.S.C. § 1117(a), Plaintiff may be entitled to recover, as an equitable remedy, the illegal profits gained through Defendants’ distribution and sales of goods bearing counterfeits and infringements of Plaintiff’s trademarks. See Levi Strauss & Co. v. Sunrise Int’l Trading Inc., 51 F.3d 982, 987 (11th Cir. 1995); Reebok Int’l, Ltd. v. Marnatech Enters., Inc., 970 F.2d 552, 559 (9th Cir. 1992). In light of the inherently deceptive nature of the counterfeiting business, and the likelihood that Defendants have violated federal trademark laws, Plaintiff has good reason to believe Defendants will hide or transfer their ill-gotten assets beyond the jurisdiction of this Court unless

the restraint of those assets ordered in the TRO is continued. Accordingly, the court, having considered the motion, and having found good cause, it is ORDERED that the Motion, ECF No. [4], is GRANTED and a preliminary injunction is entered as follows: PRELIMINARY INJUNCTION Each Defendant listed on Schedule A attached hereto, its officers, directors, employees, agents, subsidiaries, distributors, and all persons in active concert or participation with any Defendant having notice of this Order are restrained and enjoined during the pendency of this case:

a. From manufacturing, importing, advertising, promoting, offering to sell, selling, distributing, or transferring any products bearing the SECRET XPRESS CONTROL Mark, or any confusingly similar trademarks, other than those actually manufactured or distributed by plaintiff; and b.

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Frugality Inc v. The Individuals Partnerships And Unincorporated Associations Identified on Schedule A, (S.D. Fla. 2021).

Frugality Inc v. The Individuals Partnerships And Unincorporated Associations Identified on Schedule A (Frugality Inc v. The Individuals Partnerships And Unincorporated Associations Identified on Schedule A) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.

Related

Injunctive relief
15 U.S.C. § 1116
Recovery for violation of rights
15 U.S.C. § 1117(a)
Writs
28 U.S.C. § 1651(a)