It's a 10, Inc. v. Beauty Elite Group, Inc.

932 F. Supp. 2d 1325, 2013 WL 1136426, 2013 U.S. Dist. LEXIS 36883
CourtDistrict Court, S.D. Florida
DecidedMarch 18, 2013
DocketCase No. 13-60154-CIV
StatusPublished
Cited by7 cases

This text of 932 F. Supp. 2d 1325 (It's a 10, Inc. v. Beauty Elite Group, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
It's a 10, Inc. v. Beauty Elite Group, Inc., 932 F. Supp. 2d 1325, 2013 WL 1136426, 2013 U.S. Dist. LEXIS 36883 (S.D. Fla. 2013).

Opinion

ORDER ON MOTION FOR PRELIMINARY INJUNCTION

JAMES I. COHN, District Judge.

THIS CAUSE is before the court upon Plaintiff’s Motion for Preliminary Injunction and Request for Oral Argument [DE 6]. The Court has considered the motion, Defendants’ response [DE 10], the evidence presented and arguments of counsel at the March 8, 2013, hearing, and is otherwise fully advised in the premises.

I. BACKGROUND

On January 22, 2013, Plaintiff It’s a 10, Inc., filed this action against Defendants Beauty Elite Group, Inc. (“BEG”) and Basim Shami, bringing the following claims: (1) registered trademark infringement, in violation of 15 U.S.C. § 1114; (2) trade dress infringement, in violation of 15 U.S.C. § 1125(a); (3) federal trademark dilution, under 15 U.S.C. § 1125(c); (4) false designation of origin and false advertising, under 15 U.S.C. § 1125(a); (5) state common law trademark infringement; (6) state-law deceptive acts and unfair trade practices, pursuant to Florida Statutes § 501.201; (7) trademark counterfeiting, under 15 U.S.C. § 1114; and (8) state-law unjust enrichment. According to the Complaint, Defendants have infringed on Plaintiffs trademarks by selling imitations of Plaintiffs product in containers that are labeled and designed in a way that mimics Plaintiffs marks and trade dress. Plaintiff seeks injunctive relief, as well as compensatory, statutory, and punitive damages. In the instant motion, Plaintiff seeks a four-part preliminary injunction requiring that Defendants (1) cease manufacturing or selling the allegedly infringing product, (2) cease using ‘Miracle’ or TO’ on its product label, (3) refrain from destroying evidence relevant tb this case, and (4) produce certain records in Defendants’ possession for Plaintiffs inspection. See DE 6-3.

Plaintiff offers evidence, including the exhibits attached to the Complaint, that Plaintiff owns a number of trademarks related to its hair-care products and that it makes constructive use of such marks. See DE’s 1-4, 1-5, 1-6, 1-7, 6-1. Plaintiff also submits images of what it alleges is Defendants’ infringing product — a container labeled “10-PL + US Miracle Leave-In Treatment,” using font; colors, and design similar to those used on Plaintiffs containers of “It’s a 10 Miracle Leave-In Product.” See DE’s 1-5, 1-8. At the March 8 hearing, Plaintiffs counsel presented the parties’ respective bottles to the Court and entered them into evidence. Both bottles are purple with a magenta cap, and with magenta and white text and accents. The bottles are roughly the same height, and both use the -phrases “Miracle Leave-In” to describe their product. Both bottles place the TO’ approximately three-quarters of the way up the front of the bottle. The ‘10’s’ are nearly the same size, and they [1329]*1329are both oriented horizontally across the respective labels. The back label of Defendants’ product is also similar to the back label of Plaintiffs product. At the top of Plaintiffs back label, it states that “It’s a 10 does 10 things instantly.” It then numbers and lists those ten features. At the top of Defendants’ back label, it states that “Miracle Leave-in Treatment is a Salon Inspired formula that instantly” does fourteen things. It then numbers and lists those features, using the same white text and purple background as is found on Plaintiffs label. Further, Plaintiffs President and CEO, Carolyn Plummer, submitted an affidavit in which she states that she has received several inquL ries from customers concerning Defendants’ product. DE 6-1 ¶ 14. Ms. Plummer claims that the confusion related..!» Defendants’ product is causing irreparable harm to Plaintiffs business. Id. Additionally, Plaintiffs counsel sent Defendants a cease and desist letter on January 21, 2013, requesting that Defendants respond within five days. DE 6-2; DE 10-3 at 5. Plaintiff filed suit the following day.

Defendants respond that Plaintiffs allegations have been mooted by subsequent events. Defendants represent that their attorney contacted Plaintiffs counsel within five days of receiving the letter to discuss the issues contained therein. DE 10-2 at 2. On February 6, 2013, defense counsel sent a letter to Plaintiffs counsel stating that BEG would take the following actions:

(1) Cease immediately to ship all units of the accused product.
(2) . Remove all shrink wrapped labels from its product that [Plaintiff accuses] of trade dress infringement. We will then destroy the wrappers.
(3) Change the packaging on our product. Specifically, Beauty Elite Group will change the color, eliminate the word “miracle” and will emphasize its brands “SoSilk” and “Bio-Plus” with a reconfigured label.

DE 10-4 at 2. Further, the letter stated that BEG would take such steps without any return commitment from Plaintiff. Id. On February 18, 2013, defense counsel sent another letter tó Plaintiffs counsel in which he represented that BEG had ceased using the allegedly infringing label, and attached a picture óf the newly-designed bottle. DE 10-5 at 2-4. On February 26,' 2013, defense counsel sent yet another letter ‘to Plaintiffs counsel in which he attached a picture of the final new design for BEG’s “10 PL + US” product line. DE 10-6 at 3. The new bottle is white with a pink label and maroon cap; more prominently displays BEG’s “SoSilk” and “BIOPL + US” trademarks; displays the “10 PL + US” mark in a vertical manner in the middle of the bottle; and uses a different font. DE 10 at 3. Additionally, the back label no longer contains the word ‘instantly,’ nor does it number and list the product’s features. DE 22 at 4.

At the hearing, Plaintiffs counsel presented a sworn affidavit from Jennifer O’Dell, a manager at a beauty supply store in Denton, Texas. In the affidavit, she states that she purchased two bottles of BEG’s product, which used BEG’s old label design, from a Kroger’s in Denton on February 27, 2013. Counsel also attached a sales receipt for Ms. O’Dell’s purchase, as well as the actual bottles of BEG’s product that she bought. In response, defense counsel represented that BEG sells products through distributors, rather than-directly to retail outlets, such as Kroger’s. Therefore, while BEG had destroyed bottles containing the former label, there may still be some residual product remaining in stores. In the instant motion, Plaintiff seeks to enjoin Defendants from using both the old and the new labels. With regard to the new label, Plaintiff objects to BEG’s use of the num[1330]*1330ber “10” on the front of its bottle. Defendants oppose the relief requested.

II. PRELIMINARY INJUNCTION STANDARD

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932 F. Supp. 2d 1325, 2013 WL 1136426, 2013 U.S. Dist. LEXIS 36883, Counsel Stack Legal Research, https://law.counselstack.com/opinion/its-a-10-inc-v-beauty-elite-group-inc-flsd-2013.