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8 UNITED STATES DISTRICT COURT 9 EASTERN DISTRICT OF CALIFORNIA 10 ----oo0oo---- 11 12 INTTERRA, LLC, No. 2:26-cv-00747-WBS-CSK 13 Plaintiff, 14 v. MEMORANDUM AND ORDER DENYING 15 DEFENDANTS’ MOTION FOR THE ANALYTICAL MOOSE LLC and PRELIMINARY INJUNCTION 16 RACHAEL BRADY, 17 Defendants. 18 19 ----oo0oo---- 20 This action commenced on March 5, 2026, when plaintiff 21 Interra, LLC (“Intterra”) filed a complaint seeking declaratory 22 and injunctive relief requesting this court to, among other 23 things, declare that its use of its “AWARECA” mark does not 24 infringe upon defendants The Analytical Moose (“TAM”) and Rachael 25 Brady’s alleged trademark rights in their “WILDFIRE AWARE” mark. 26 (See Docket No. 1 at 18.) 27 On April 3, 2026, TAM and Brady filed an answer and 28 counterclaims. (Docket No. 12.) TAM now moves for preliminary 1 injunctive relief on two of those counterclaims: A federal 2 trademark infringement counterclaim brought pursuant to the 3 Lanham Act, 15 U.S.C. § 1114; and a common-law trademark 4 infringement counterclaim. (Docket No. 14.) Specifically, TAM 5 asks this court to enjoin Intterra from launching its mobile 6 application titled “AWARECA” on May 1, 2026, and using “AWARE- 7 formative branding,” because permitting Intterra to do so would 8 infringe upon TAM’s “WILDFIRE AWARE” mark. (See generally id.) 9 The issue before the court is thus whether TAM is 10 entitled to preliminary injunctive relief on its trademark 11 infringement counterclaims. 12 I. Background 13 Intterra, founded in 2010, is a technology company 14 designed to “connect[] and serve[] communities” by “support[ing] 15 public service agencies on the front lines of response to public 16 safety threats.” (Docket No. 1 (Compl.) at 3.) Intterra 17 “markets and sells its software exclusively to governmental 18 public safety agencies,” such as fire and police departments at 19 various levels of state and federal government. (Id. at 4.) 20 In 2024, Intterra began to develop a mobile application 21 “through which its governmental agency customers could securely 22 share real-time information with the public.” (Id.) While this 23 application is “intended for use by the general public,” its key 24 functionality “necessarily depends on integration with 25 [governmental] agencies’ data sources.” (Id.) 26 The following year, Intterra began to offer this new 27 mobile application through its typical business-to-government 28 1 marketing channel: by submitting bids for government contract 2 awards. (Id. at 5, 7.) Specifically, Intterra “markets and 3 supplies” this application “to its governmental customers under 4 the mark AWARE, and an AWARE-formative mark customized for each 5 state . . . such as AWARECA for California.” (Id. at 5.) While 6 Intterra originally chose the name “ReadyCA” for its application, 7 it adopted the “AWARE” brand at the urging of the State of 8 California due to concerns of conflict with the existing state- 9 government website ready.ca.gov. (Declaration of Robert P. Wolf 10 (Docket No. 21) ¶ 16.) 11 On December 20, 2025, Intterra filed fourteen trademark 12 applications for a “number of its AWARE-formative marks, 13 including . . . the word mark AWARECA.” (Id. at 5.) 14 Approximately two weeks later, Intterra announced that the 15 California Department of Forestry and Fire Protection (“CALFIRE”) 16 “had selected Intterra’s mobile application to be California’s 17 statewide public safety information platform.” (Id. at 6.) 18 On January 28, 2026, counsel for Rachael Brady sent 19 Intterra a cease-and-desist letter alleging that she is “the 20 owner of the federally recognized trademark ‘Wildfire Aware,’ 21 used in connection with a mobile application providing wildfire 22 information and alerts” and demanding that Intterra cease use of 23 the “AWARE,” “AWARECA,” and “AWARECALIFORNIA” marks, any 24 confusingly similar marks, and any products or services using the 25 complained-of marks; and abandon the AWARECA mobile application. 26 (Id. at 7-8.) WILDFIRE AWARE is a mobile application designed to 27 “provide crucial information” regarding wildfires to potentially 28 1 affected communities. (Docket No. 14-1 at 9.) According to 2 Brady, WILDFIRE AWARE “pulls from various data sources, including 3 the National Weather Service and the National Wildfire 4 Coordination Group, to display authoritative information 5 graphically, with accessibility and speed at top of mind,” and 6 “presents information at all relevant times.” (Id.) Brady 7 offers the WILDFIRE AWARE application through her company, The 8 Analytical Moose LLC (“TAM”). (See id.) 9 The cease-and-desist letter did not mark the first 10 interaction between the parties, however. In 2024, when Intterra 11 began the development process for its mobile application, the 12 company offered to hire Brady as a product manager to lead that 13 application’s development. (Docket No. 1 at 8.) Intterra was 14 aware that Brady had developed the WILDFIRE AWARE application. 15 (See id.) Indeed, Interra alleges that because Brady “had made 16 significant financial and personal investments in developing the 17 WILDFIRE AWARE app and brand, and also that Ms. Brady, in 18 dedicating her full professional attention to the product 19 management role going forward, would no longer be able to develop 20 or maintain her WILDFIRE AWARE application,” it structured its 21 offer to Brady “to include a bonus, to be paid over a three-year 22 period, in purported exchange for the WILDFIRE AWARE app and 23 brand.” (Id.) 24 Brady declined Intterra’s offer of employment in 25 November 2024, and again on March 3, 2025. (Id. at 9.) On March 26 15, 2026, Intterra’s Chief Executive Officer “publicly announced 27 Intterra’s plans to launch its AWARE-branded app for public use 28 1 on May 1, 2026.” (Docket No. 14-5 (Decl. of Rachael Brady 2 (“Brady Decl.”)) at 8.) Brady filed the instant motion for 3 preliminary injunction through counsel shortly thereafter, in 4 which she seeks an order of this court “enjoin[ing] Plaintiff 5 Intterra, LLC . . . from, directly or indirectly, promoting, 6 offering, and selling software and related products and services 7 in the field of wildfire alerts and emergency notification under 8 AWARE-formative branding, including its planned launch of AWARECA 9 on May 1, 2026.” (Docket No. 14 at 28.) 10 II. Legal Standard 11 TAM, as the party “seeking a preliminary injunction,” 12 must “establish that [they are] likely to succeed on the merits, 13 that [they are] likely to suffer irreparable harm in the absence 14 of preliminary relief, that the balance of equities tips in 15 [their] favor, and that an injunction is in the public interest.” 16 Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). A 17 preliminary injunction is an “extraordinary and drastic remedy” 18 that should not be granted “unless the movant, by a clear 19 showing, carries the burden of persuasion.” Mazurek v. 20 Armstrong, 520 U.S. 968, 972 (1997) (per curiam) (emphasis in 21 original). 22 III. Irreparable Harm 23 “[A]n unjustified delay in seeking an injunction may 24 undermine a movant's argument that [they] will suffer irreparable 25 harm in the absence of a” preliminary injunction. Zamfir v. 26 Casperlabs, LLC, 528 F. Supp. 3d 1136, 1151 (S.D. Cal. 2021) 27 (collecting cases); see also, e.g., Hanginout, Inc. v. Google, 28 1 Inc., 54 F. Supp. 3d 1109, 1132 (S.D. Cal. 2014) (same) 2 (collecting cases). 3 Here, TAM learned of Intterra’s plans to launch the 4 AWARECA application on January 6, 2026. (Brady Decl. at 7; 5 Docket No. 20 at 51.) But TAM did not file the instant motion 6 seeking to enjoin that launch until April 3, 2026, nearly three 7 months later. (Docket No. 14.) While TAM responds that it was 8 engaged in negotiations with Intterra for much of those three 9 months (see Docket No. 26 at 8-9), this argument cannot overcome 10 the fact that “unreasonable delay in a trademark infringement 11 case is measured from when the [movant] knew or should have known 12 about its potential cause of action,” SunEarth, Inc. v. Sun Earth 13 Solar Power Co., 846 F. Supp. 2d 1063, 1083 (N.D. Cal. 2012), 14 which TAM itself acknowledges was January 6, 2026. 15 Excusing TAM’s delay on the grounds that TAM was 16 engaged in settlement negotiations could also incentivize parties 17 to gain tactical advantage by ostensibly engaging in such 18 negotiations for lengthy periods of time, all the while planning 19 to litigate their dispute. Indeed, at oral argument, counsel for 20 Intterra emphasized that TAM did not file the instant motion 21 until approximately one month before AWARECA’s projected launch 22 date, i.e., until Intterra had taken significant steps and 23 incurred substantial obligations that it would not have had it 24 not planned to launch AWARECA on May 1, 2026. 25 The court is not in a position to opine on TAM’s 26 motives. That said, the court observes that TAM also filed the 27 instant motion for preliminary injunction a full month after 28 1 Intterra filed its declaratory relief action (see Docket Nos. 1, 2 14), which would appear to undercut TAM’s argument that its delay 3 was solely attributable to being engaged in settlement 4 negotiations. Moreover, as another court has noted, “a party 5 suffering irreparable harm would and should seek injunctive 6 relief rather than, or in addition to, engaging in negotiations.” 7 Ronaldo Designer Jewelry, Inc. v. Cox, No. 1:17-cv-2 DMB DAS, 8 2017 WL 3879095, at *11 (N.D. Miss. Sept. 5, 2017); see also 9 Apple, Inc. v. Samsung Elecs. Co., No. 11-CV-01846-LHK, 2011 WL 10 7036077, at *22 n.21 (N.D. Cal. Dec. 2, 2011), aff'd in part, 678 11 F.3d 1314 (Fed. Cir. 2012) (finding party’s argument that delay 12 in seeking injunctive relief was due to being “engaged in 13 negotiations” “lack[ed] merit”). TAM did not do so here. 14 Delaying seeking injunctive relief -- particularly when 15 the matter at hand is complex, fact-intensive, and time-sensitive 16 -- also places the court at a distinct disadvantage in having to 17 reach a conclusion on the motion on short notice. It is no 18 secret that this court is one of the busiest courts in the 19 nation. S & J Rentals, Inc. v. Hilti, Inc., 294 F. Supp. 3d 978, 20 989 (E.D. Cal. 2018) (England, J.). Accordingly, in order for 21 this court to accommodate urgency, the circumstances must truly 22 be pressing, and TAM’s multiple-month filing delay suggests that 23 its circumstances are not. 24 Most importantly, the court strives to correctly apply 25 the law to its decisions. Even though this is a motion for 26 preliminary injunctive relief, the court “does not have the 27 luxury of treating its first decision as a dress rehearsal for 28 1 the next time. The court is required to ‘get it right’ the first 2 time,” even under the expedited timeline it has been forced to 3 adhere to. In re JSJF Corp., 344 B.R. 94, 103 (B.A.P. 9th Cir. 4 2006), aff'd and remanded, 277 F. App'x 718 (9th Cir. 2008). 5 In considering TAM’s unjustified delay, which counsels 6 against a finding of irreparable harm, see Zamfir, 528 F. Supp. 7 3d at 1151 (S.D. Cal. 2021), alongside the court’s opinion that 8 TAM is not likely to succeed on the merits of its trademark 9 infringement counterclaims, as discussed below, preliminary 10 injunctive relief is not warranted here. 11 IV. Likelihood of Success on the Merits 12 Likelihood of success on the merits is “the most 13 important factor in determining whether a preliminary injunction 14 is warranted.” Garcia v. County of Alameda, 150 F. 4th 1224, 15 1230 (9th Cir. 2025) (internal citations and quotation marks 16 omitted). A mere possibility of success is insufficient to 17 fulfill this factor; rather, TAM must demonstrate “a strong 18 likelihood of success on the merits” on its trademark 19 infringement counterclaims against Intterra. Save Our Sonoran, 20 Inc. v. Flowers, 408 F. 3d 1113, 1120 (9th Cir. 2005). 21 In order to prevail on its trademark infringement counterclaims, 22 TAM “must show that it is (1) the owner of a valid, protectable 23 mark, and (2) that the alleged infringer” -- here, Intterra -- 24 “is using a confusingly similar mark.” Grocery Outlet Inc. v. 25 Albertson's Inc., 497 F.3d 949, 951 (9th Cir. 2007) (per curiam). 26 The parties’ dispute is focused on the second factor. 27 Whether Intterra is using a confusingly similar mark is 28 1 assessed using the Sleekcraft factors, which include the: (1) 2 strength of the movant’s mark; (2) proximity of the goods; (3) 3 similarity of the marks; (4) evidence of actual confusion; (5) 4 marketing channels; (6) types of goods and consumer’s degree of 5 care; (7) opposer’s intent in selecting the mark; and (8) 6 likelihood of expansion of the product lines. See AMF Inc. v. 7 Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979). 8 The Sleekcraft factors are “non-exhaustive” and “should 9 be applied flexibly, particularly in the context of Internet 10 commerce.” Network Automation, Inc. v. Advanced Sys. Concepts, 11 Inc., 638 F.3d 1137, 1149 (9th Cir. 2011). 12 a. Strength of “AWARE” 13 Typically, courts analyze the strength of a mark “along 14 the following spectrum: arbitrary and fanciful marks are the 15 strongest, suggestive marks fall in the middle, descriptive marks 16 are presumptively weak, and generic marks are not entitled to 17 trademark protection at all.” Masters Software, Inc. v. 18 Discovery Commc'ns, Inc., 725 F. Supp. 2d 1294, 1299 (W.D. Wash. 19 2010). TAM focuses its strength arguments on the “AWARE” 20 portion of its mark -- the only commonality between the two marks 21 at issue -- and argues that it has “exclusive rights” to that 22 term “for software apps in the context of public safety.” 23 (Docket No. 14-1 at 19.) Intterra responds that “‘AWARE’ is [an] 24 inherently weak” source identifier, both because it is “highly 25 descriptive,” and, more crucially here, because it is “dilute[d]” 26 by “common third-party use.” (Docket No. 20 at 26-27.) 27 TAM does not place the AWARE mark on the spectrum from 28 1 arbitrary to generic in its discussion of this factor; instead, 2 TAM references the arguments it made to United States Patent 3 Office (“USPTO”) after initially being denied federal trademark 4 registration due to its similarity to another, existing “AWARE” 5 mark. (Id. at 19.) Here, TAM asserts that, in its arguments to 6 the USPTO, it did not “disclaim[] the term AWARE,” that “AWARE” 7 was “the predominant term” of its mark, and that its “arguments 8 in support of registration affirm the strength of [its] exclusive 9 rights to AWARE.” (Id.) 10 However, it appears that the opposite occurred. In its 11 communications with the USPTO, TAM took pains to differentiate 12 its mark from a pre-existing “AWARE” mark by asserting that “the 13 word WILDFIRE . . . is the most important term for the purpose of 14 informing consumers.” (Docket No. 1-7 at 9.) TAM then added 15 that finding confusion based on the common usage of AWARE “seems 16 highly inconsistent with prior decisions of the USPTO,” which had 17 previously registered many “marks with the term AWARE,” before 18 listing eleven (11) such examples. (Id. at 12-15.) TAM pointed 19 to this “crowded field” for the “AWARE” mark and argued that 20 “[g]iven the widespread use of the term,” they should be 21 permitted to “come closer” to using it without causing confusion. 22 (Docket No. 1-7 at 15-16.) 23 TAM’s argument to the USPTO -- that the source- 24 identifier “AWARE” is entitled to little protection -- is 25 strikingly applicable here. Indeed, it appears that the field 26 for “AWARE” is now even more crowded than TAM realized: Intterra 27 cites no less than thirty-one (31) “AWARE” marks, many of which 28 1 correspond to emergency preparedness products. (Docket No. 20 at 2 29-34.) As Intterra points out, and as TAM ultimately admits, 3 this widespread usage of the “AWARE” mark makes it “merely one of 4 a crowd of marks.” J. Thomas McCarthy, McCarthy on Trademarks 5 and Unfair Competition § 11:85 (4th Ed. 2012). And where TAM’s 6 “mark resides in a crowded field, hemmed in on all sides by 7 similar marks on similar goods, that mark is weak as a matter of 8 law.” Reserve Media, Inc. v. Efficient Frontiers, Inc., No. 15- 9 cv-5072 DDR AGRX, 2017 WL 123420, at *8 (C.D. Cal. Jan. 11, 2017) 10 (internal citations omitted); see also M2 Software, Inc., 421 F. 11 3d at 1088 (“Use of similar marks by third-party companies in the 12 relevant industry weakens the mark at issue.”); Jupiter Hosting, 13 Inc. v. Jupitermedia Corp., No. 04-cv-1820 CW, 2004 WL 3543299, 14 at *3 (N.D. Cal. Nov. 9, 2004) (“Where the market is inundated by 15 products using the particular trademarked word, there is a 16 corresponding likelihood that consumers will not likely be 17 confused by any two in the crowd.” (citing Entrepreneur Media, 18 Inc. v. Smith, 279 F. 3d 1135, 1144 (9th Cir. 2002)). 19 In light of the “AWARE” mark’s presence in a crowded 20 field, the court agrees with Intterra that the mark is inherently 21 weak. This factor therefore weighs in favor of Intterra. 22 b. Proximity of the Goods 23 “The proximity of goods is measured by whether the 24 products are: (1) complementary; (2) sold to the same class of 25 purchasers; and (3) similar in use and function.” Network 26 Automation, Inc., 638 F. 3d at 1150. TAM argues that both 27 parties “will use AWARE-formative marks for . . . publicly 28 1 available mobile applications intended to provide users with 2 [public safety] alerts.” (Docket No. 14-1 at 20.) Intterra 3 advances two counter-arguments regarding this factor: (1) its 4 platform “is an all-hazards, all-discipline” application, for 5 which “wildfires constitute less than 1% of the data,” and (2) it 6 is integrated with government agencies and correspondingly “is a 7 government public service,” not a consumer-facing product. (Id. 8 at 45-46.) 9 While Intterra’s application may encompass a broader 10 range of functions than TAM’s, the relevant inquiry is whether 11 the products share an overlapping purpose, not whether one 12 product does more than the other. See Brookfield Commc'ns, Inc. 13 v. West Coast Ent. Corp., 174 F.3d 1036, 1056 (9th Cir. 1999) 14 (finding proximity where a broader business included a function 15 that overlapped with a narrower product, because “the products 16 [were] used for similar purposes”). Both applications here 17 provide emergency preparedness alerts, including wildfire alerts; 18 the fact that wildfire monitoring constitutes a minute portion of 19 Intterra’s application’s offerings does not necessarily destroy 20 that overlap. See Ironhawk Techs., Inc. v. Dropbox, Inc., 2 21 F.4th 1150, 1164 (9th Cir. 2021) (finding a jury question on 22 relatedness where broader platform encompassed the narrower 23 product’s core function). As to the class of purchasers, 24 Intterra’s integration with government agencies distinguishes the 25 parties’ primary markets, but both products are ultimately 26 27 28 1 available for download on app stores.1 On balance, this factor 2 is likely neutral; at best, it weighs slightly in TAM’s favor. 3 c. Similarity of the Parties’ Marks 4 “In determining whether marks are similar enough to 5 confuse consumers, the court must consider their sight, sound, 6 and meaning as they appear in the marketplace.” Masters 7 Software, Inc., 725 F. Supp. 2d at 1302. When assessing 8 similarity, the marks are “considered in their entirety.” 9 Prolacta Bioscience, Inc. v. Prolact Ltd., No. 2:24-cv-10392 WLH, 10 2025 WL 2078270, at *16 (C.D. Cal. June 18, 2025) (citing 11 Ironhawk Techs., 2 F. 4th at 1164). 12 As with the first factor, the arguments TAM made to the 13 USPTO serve as a counterpoint to the arguments it makes here. 14 TAM noted that “the term WILDFIRE . . . is not at all present in 15 the [“AWARE”] Mark of the Cited Registration,” and argued that 16 “the shared formative term ‘AWARE’ alone was [not] enough for . . 17 . [the marks] to be confusingly similar.” (Docket No. 1-7 at 9.) 18 The same is true here: The term “WILDFIRE” does not appear in 19 Intterra’s mark, and if it is the case -- as TAM then argued and 20 the USPTO agreed -- that the addition of the term “WILDFIRE” 21 renders it “markedly different” from “AWARE,” it is certainly 22 enough to be distinguished from the variations used by Intterra, 23 such as “AWARECA,” “AWARE INTEL HUB,” and “AWARE OPS.” (Docket 24 1 As discussed below with regard to the “marketing channels” 25 factor, mobile application stores are “ubiquitous” marketing platforms; accordingly, that both applications are present on 26 these application stores is unremarkable. Cf. Network 27 Automation, Inc., 638 F. 3d at 1151 (observing “ubiquitous” nature of mobile phone application stores within trademark 28 infringement context). 1 No. 20 at 5.) This factor thus weighs in favor of Intterra. 2 d. Evidence of Actual Confusion 3 Because Intterra has yet to launch its application, 4 “consideration of this factor is necessarily conjectural.” Cf. 5 Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965, 6 980 (N.D. Cal. 2006). Accordingly, the court “affords this 7 factor little weight,” and finds it to be neutral. Cf. id. at 8 980-81; Network Automation, Inc., 638 F. 3d at 1151 (“importance” 9 of evidence of action confusion is “diminished at the preliminary 10 injunction stage”). 11 e. Marketing Channels 12 “In assessing marketing channel convergence, courts 13 consider whether the parties' customer bases overlap and how the 14 parties advertise and market their products.” Pom Wonderful LLC 15 v. Hubbard, 775 F.3d 1118, 1130 (9th Cir. 2014). In the 16 Sleekcraft era, “convergent marketing channels increase[d] the 17 likelihood of confusion.” 599 F. 2d at 353. “Today,” however, 18 “it would be the rare commercial retailer that did not advertise 19 online, and the shared use of a ubiquitous marketing channel does 20 not shed much light on the likelihood of consumer confusion.” 21 Network Automation, Inc., 638 F. 3d at 1151. 22 TAM argues that this factor weights in its favor 23 because both the WILDFIRE AWARE application and Intterra’s yet- 24 to-launch application will be “marketed and available for 25 download” on mobile phone application stores. (Docket No. 14-1 26 at 22.) However, mobile phones’ application stores constitute 27 precisely the kind of “ubiquitous marketing channels” that do not 28 1 “shed much light on the likelihood of consumer confusion.” 2 Network Automation, Inc., 638 F. 3d at 1151; see also Good Meat 3 Project v. GOOD Meat, Inc., 716 F. Supp. 3d 783, 802 (N.D. Cal. 4 2024) (“Merely showing that both businesses advertise on the 5 internet is insufficient to show marketing channel 6 convergence.”). 7 Moreover, as noted above, TAM markets the WILDFIRE 8 AWARE application to individual consumers, whereas Intterra 9 markets its application to governmental agencies, who may, in 10 turn, recommend that individual consumers download that 11 application. (See Brady Decl. at 5; Docket No. 20 at 47-48.) 12 Given the incongruence between the “parties’ customer bases,” 13 this factor weighs slightly in favor of Intterra. See Pom 14 Wonderful LLC, 775 F. 3d at 1130. 15 f. Types of Goods and Consumer’s Degree of Care 16 “Low consumer care . . . increases the likelihood of 17 confusion.” Playboy Enters., Inc. v. Netscape Commc'ns Corp., 18 354 F.3d 1020, 1028 (9th Cir. 2004). The degree of care expected 19 of a “reasonably prudent consumer depends on the circumstances.” 20 Brookfield Commc'ns, Inc., 174 F.3d at 1060. A customer is 21 expected to be “more discerning” and “less easily confused” when 22 purchasing “expensive items”; conversely, “when dealing with 23 inexpensive products, [a] customer[] [is] likely to exercise less 24 care.” Id. 25 TAM argues that consumers are likely to exercise less 26 care when determining whether to download WILDFIRE AWARE or 27 AWARECA because such consumers will inevitably be doing so during 28 1 “moments of intense urgency and stress, including impending 2 wildfires.” (Docket No. 14-1 at 22.) But, as Intterra points 3 out, TAM has not offered evidence in support of its claim that 4 consumers are “most likely to download emergency apps in the 5 midst of a disaster,” as opposed to well before disaster strikes, 6 particularly if they “liv[e] in areas with high risk of natural 7 disasters.” (Docket No. 20 at 48.) 8 The court is not currently in a position to discern the 9 juncture at which a consumer is most likely to download an 10 emergency preparedness application. That being said, given the 11 obvious importance of such applications, and the fact that “[a] 12 consumer’s care generally intensifies with the importance of the 13 product,” Elevate Fed. Credit Union v. Elevations Credit Union, 14 67 F.4th 1058, 1072 (10th Cir. 2023), this factor weighs slightly 15 in favor of Intterra. 16 g. Intent 17 In determining Intterra’s intent, “[t]he relevant 18 question is whether [they] intended to profit by confusing 19 consumers concerning the endorsement of” their product. White v. 20 Samsung Elecs. Am., Inc., 971 F.2d 1395, 1400 (9th Cir. 1992), as 21 amended (Aug. 19, 1992) (quotations omitted). Intterra’s “intent 22 to confuse constitutes probative evidence of likely confusion: 23 Courts assume that the [their] intentions were carried out 24 successfully.” Playboy Enterprises, Inc., 354 F. 3d at 1028 25 (footnote omitted). 26 As mentioned above, Intterra originally chose the name 27 “ReadyCA” for its application; it pivoted to the “AWARE” family 28 1 of names (including “AWARECA”) only upon the urging of the State 2 of California. (Declaration of Robert P. Wolf (Docket No. 21) ¶ 3 16.) This fact cuts against TAM’s claim that Intterra “intended 4 to profit” by confusing customers regarding the origins of its 5 application. See White, 971 F. 2d at 1400. 6 Further, TAM would be hard-pressed to now argue 7 Intterra acted in bad faith without calling into question the 8 motivations governing its own, prior actions. As discussed 9 earlier, in 2023, TAM successfully argued to the USPTO that a 10 “crowded field” exists for the “AWARE” mark and that it should 11 therefore be permitted to register its own “WILDFIRE AWARE” mark, 12 even though it knew that a registered trademark with the word 13 “AWARE” corresponding to a product providing “computer hardware, 14 software, and sensors, used to provide real-time or near-real- 15 time GPS information regarding emergency incidents” existed. 16 (See Docket No. 1-7 at 7.) TAM cannot legitimately condemn 17 Intterra for seeking to do precisely what it, itself, did just 18 three years ago.2 Accordingly, this factor does not weigh in 19 favor of TAM. 20 h. Likelihood of Expansion 21 This factor concerns “whether existence of the 22 allegedly infringing mark is hindering [TAM’s] expansion plans.” 23 Stonefire Grill, Inc. v. FGF Brands, Inc., 987 F. Supp. 2d 1023, 24 1056 (C.D. Cal. 2013). For this factor to “weigh[] in favor of a 25 finding of infringement,” TAM must demonstrate “a strong 26
27 2 Moreover, at oral argument, counsel for Intterra represented that Intterra consulted and relied upon TAM’s representations to 28 the PTO as part of their due-diligence process. en een een ne nnn nnn nnn nn nnn ene ne on OO Oe
1 . . . . . . possibility of expansion into competing markets.” M2 Software, 2 Inc., a Delaware corporation v. Madacy Ent., a corporation, 421 3 F.3d 1073, 1085 (9th Cir. 2005) (alteration and emphasis in 4 . . original). 5 TAM concedes that its “offerings are currently targeted 6 towards” individual consumers but avers that “there is no reason 7 that” the WILDFIRE AWARE application “could not be .. . sold to 8 businesses or governmental entities.” (Docket No. 14-1 at 24.) 9 The Ninth Circuit has repeatedly held that mere “interest in 10 expanding [a] product line” absent “concrete evidence of 11 expansion plans” is insufficient to tilt this factor in the 12 movant’s favor. Surfvivor Media, Inc. v. Survivor Prods., 406 13 F.3d 625, 634 (9th Cir. 2005). Thus, this factor weighs in favor 14 of Intterra, too. See id.; see also Entrepreneur Media, Inc. v. 15 Smith, 279 F.3d 1135, 1152 (9th Cir. 2002) (absent evidence of 16 intent to expand into overlapping product lines, likelihood of 17 expansion factor weighs “against finding likely confusion”). 18 1. Totality 19 Having considered the Sleekcraft factors, at most one 20 of which weighs in favor of TAM, the court finds that TAM is not 21 likely to succeed on the merits of its claims that Intterra’s 22 “AWARE” family of marks infringes upon its mark. 23 IT IS THEREFORE ORDERED that defendants’ motion for 24 preliminary injunction (Docket No. 14) be, and the same hereby 25 is, DENIED. 26 . . Dated: April 22, 2026 eh tle HK Ad. 27 WILLIAM B. SHUBB 28 UNITED S TATES DISTRICT JUDGE