Mfib, LLC v. Ibca, LLC

• Court: Court of Appeals for the Ninth Circuit
• Decided: June 5, 2026
• Docket: 25-6589
• Status: Unpublished

Opinion

NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS JUN 5 2026 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT

MFIB, LLC, a Delaware limited liability No. 25-6589 company doing business as ICON National, D.C. No. 2:25-cv-02517-SPL Plaintiff - Appellant,

v. MEMORANDUM*

IBCA, LLC, a California limited liability company doing business as Icon Builders; ALLEN W. SANDS, an individual residing in Arizona,

Defendants - Appellees.

Appeal from the United States District Court for the District of Arizona Steven Paul Logan, District Judge, Presiding

Argued and Submitted May 19, 2026 Phoenix, Arizona

Before: GOULD, M. SMITH, and HURWITZ, Circuit Judges.

MFIB, LLC appeals the denial of its motion for a preliminary injunction

barring IBCA, LLC and its owner and founder, Allen Sands (collectively,

“Defendants”), from using the trademarks “ICON,” “ICON Builders,” and “THE

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. ORIGINAL ICON BUILDERS” (“the ICON Marks”). We have jurisdiction under

28 U.S.C. § 1292(a)(1). We review the district court’s order for abuse of discretion,

Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1123 (9th Cir. 2014), and affirm.

1. Sands began using the ICON Marks in connection with general

contracting services in 1985 and has used the mark in at least five affordable housing

businesses in “various states,” including California, Arizona, New Mexico, and

Texas. Sands had between 50 and 100 percent ownership and served as the president

with “final say” in each of these businesses.

In 2017, one of Sands’s business, Icon Commercial Contractors d/b/a ICON

Builders (“ICC”), merged with MFRG Construction to form MFIB. Sands agreed

not to compete with MFIB in affordable housing renovation projects, but the merger

agreement permitted ICC to continue to use the ICON Marks in connection with

other projects, some of which were still ongoing as of September 2025. MFIB

worked on projects in the affordable housing business using the trademarks “MFRG

ICON” and “ICON National.”

In 2022, MFRG bought out ICC’s interest in MFIB, and Sands’s non-

competition agreement was terminated. In November 2023, MFIB registered the

MFRG ICON and ICON National marks. Sands then dissolved ICC and founded

IBCA, LLC, headquartered in Arizona. By 2024, IBCA had undertaken affordable

housing projects in California and Texas using the ICON Marks. In 2025, MFIB

2 25-6589 sued for trademark infringement and moved for a preliminary injunction to bar

Defendants’ use of the ICON Marks.

2. A preliminary injunction is an “extraordinary remedy that may only be

awarded upon a clear showing that the plaintiff is entitled to such relief.” Winter v.

Nat. Res. Def. Council, Inc., 555 U.S. 7, 22 (2008). The movant must show, among

other things, a likelihood of success on the merits. Id. at 20.

To succeed on an infringement claim, MFIB must have senior rights to the

disputed trademarks. See Pom Wonderful, 775 F.3d at 1124. But if the Defendants

engaged in continuous use of the ICON Marks before MFIB registered its marks,

their interest in the ICON Marks is senior. Casual Corner Assocs., Inc. v. Casual

Stores of Nev., Inc., 493 F.2d 709, 711-12 (9th Cir. 1974); 15 U.S.C. §§ 1115(a),

(b)(5).2 MFIB does not dispute that Sands’s other businesses have continuously used

the ICON mark since before registration. The critical issue is whether Defendants

may establish prior use through privity with Sands’s other businesses.

2 Although the parties agree that that § 1115(b)(5) applies and the district court analyzed the case under the statute, a prominent treatise states that § 1115(b)(5) “is restricted to a situation where the registrant is the senior user.” 2 McCarthy on Trademarks & Unfair Competition § 26:53 (5th ed. 2025). In any event, the analysis is the same under the common law. See Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996) (“It is axiomatic in trademark law that the standard test of ownership is priority of use. To acquire ownership of a trademark it is not enough to . . . have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.”).

3 25-6589 “Privity exists when there is substantial identity between parties, that is, when

there is sufficient commonality of interest.” In re Gottheiner, 703 F.2d 1136, 1140

(9th Cir. 1983) (cleaned up). “When a person owns most or all of the shares in a

corporation and controls the affairs of the corporation, it is presumed that in any

litigation involving that corporation the individual has sufficient commonality of

interest.” Id. The district court’s finding of privity is supported by the record. Sands

testified that he founded each company that engaged in prior use, served as president

of each with “final say,” and maintained between 50 and 100 percent ownership, and

each company traded off the ICON Builders mark to generate business.

3. Even if privity is established, MFIB faults the district court for failing

to consider the geographic scope of prior use. Rights deriving from prior use are

“frozen” after federal registration to “those areas where [the mark] then enjoyed

recognition based on its reputation, advertising, and sales.” Quiksilver, Inc. v.

Kymsta Corp., 466 F.3d 749, 762 (9th Cir. 2006). But we cannot fault the district

court for failing to enter a limited injunction given the procedural posture of this

case. MFIB’s motion for a preliminary injunction sought nationwide relief,

mentioning the possibility of more limited geographic scope only in a footnote.

Instead, the focus of MFIB’s arguments below was that Sands had abandoned any

rights to the ICON Marks. And the only evidence presented to the district court of

IBCA’s current and allegedly infringing use was limited to areas of prior use. Indeed,

4 25-6589 MFIB conceded at oral argument that it has no evidence of present use by the

Defendants in any area other than those of prior use. Under these circumstances, the

district court did not abuse its discretion in denying the broad relief MFIB requested.

4. We emphasize, however, that MFIB may be entitled, on an appropriate

showing, to either preliminary or permanent injunctive relief preventing use of the

ICON Marks by IBCA in areas other than those of prior use. We affirm the district

court’s denial of a preliminary injunction without prejudice to MFIB seeking such

relief.

AFFIRMED.

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