Safecover Roofing LLC v. Pro-Cover Roofing Inc

• Court: District Court, W.D. Washington
• Decided: April 8, 2021
• Docket: 3:20-cv-06212
• Status: Unknown

Opinion

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6 7 UNITED STATES DISTRICT COURT 8 WESTERN DISTRICT OF WASHINGTON AT TACOMA 9 10 SAFECOVER ROOFING, LLC, CASE NO. 3:20-cv-06212-RJB 11 Plaintiff, ORDER GRANTING, IN PART, 12 v. AND DENYING, IN PART, PLAINTIFF’S MOTION FOR 13 PRO-COVER ROOFING, INC., and DEFAULT JUDGMENT VINCENTE NOLASCO-IGNACIO, 14 individually, 15 Defendants. 16 17 THIS MATTER comes before the Court on Plaintiff Safecover Roofing, LLC’s 18 (“Plaintiff” or “Safecover”) Motion for Default Judgment Against Defendants. Dkt. 13. The 19 Court has considered the motion and the remaining file. 20 I. BACKGROUND 21 On December 16, 2020, Plaintiff filed the complaint in this matter alleging trademark and 22 trade name infringement in violation of the Lanham Act, 15 U.S.C. § 1051 et seq. and RCW 23 19.86 and unfair competition pursuant to 15 U.S.C. § 1125 and RCW 19.77. Dkt. 1. On 24 1 || December 19, 2020, Plaintiff filed proof of service against both defendants Pro-Cover Roofing, 2 || Inc. and Vincente Nolasco-Ignacio (“Defendants”). Dkts. 5 and 6. 3 There appear to be four designs at issue. The first two are Plaintiffs trademarks: 4

6 ROOFING LLC ele) a ice a ae 7 The second two are designs used by Defendants: 8 COVER ROG | Pe = ANI 0 8 o ss ss ~ PAO COVER ROOF iG Int 1] 12 13 On January 21, 2021, the Clerk of the Court entered default against Defendants pursuant 14 || to Fed. R. Civ. P. 55(a) and W.D. Wash. Local Civil Rule 55(a) for failure to plead or otherwise 15 || defend. 16 Plaintiff now moves for default judgment against Defendants and the following relief: a 17 |} permanent injunction prohibiting use of Defendants’ logo, name, and any other confusingly 18 |} similar mark; an order requiring Defendants deliver for destruction all products containing the 19 |} infringing mark and name; transfer of the Pro-Cover Roofing domain name; and reasonable 20 || attorney’s fees and costs. Dkts. 1 and 13. 21 Il. DISCUSSION 22 A. TRADEMARK AND TRADE NAME INFRINGMENT 23 Pursuant to Fed. R. Civ. P. 55(b), a court may order default judgment following the entry 24 || of default. The entry of default, however, does not automatically entitle the plaintiff to a court-

ORDER GRANTING, IN PART, AND DENYING, IN PART, PLAINTIFF’S MOTION FOR DEFAULT

1 ordered default judgment. See Geddes v. United Financial Group, 559 F.2d 557, 560 (9th Cir. 2 1977). Instead, all allegations, other than those relating to damages, are presumed to be true, and 3 the court may order default judgment at its discretion. Id. 4 Assuming Plaintiff’s allegations are true, Plaintiff has made a showing of trademark and 5 trade name infringement.

6 “The test for trademark infringement under state, federal, and common law is whether 7 there will be a likelihood of confusion.” M2 Software, Inc. v. Madacy Entertainment, 421 F.3d 8 1073, 1080 (9th Cir. 2005). This test is used for all four of Plaintiff’s causes of action. See e.g., 9 New W. Corp. v. NYM Co. of Cal. Inc., 595 F.2d 1194, 1201 (9th Cir. 1979); BBC Grp. V. Island 10 Life Rest. Grp., 413 F. Supp. 3d 1032, 1049 (W.D. Wash. 2019) (“The Washington dilution 11 statute is identical to the federal dilution statue under 15 U.S.C. § 125(c)(2)(A).”). 12 To determine whether there is a likelihood of confusion, courts in the Ninth Circuit 13 consider the following eight factors: “(1) strength of the mark; (2) proximity of the goods; (3) 14 similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type

15 of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in 16 selecting the mark; and (8) likelihood of expansion of the product lines.” Id. 17 Considering the eight elements together, Defendants’ name and logo, which includes the 18 name “Pro-Cover Roofing” and uses similar design and color elements as Plaintiff’s trademark, 19 has a likelihood of confusing the public. The parties both provide roofing services, are based 20 near one another, and Plaintiff alleges that “approximately a half dozen instances of actual 21 confusion between our companies” occurred “[b]ecause the company name, word and design 22 trademarks are so similar, people recall ‘COVER’ or the unique geometric design and color, and 23 24 1 are confused into believing PRO-COVER ROOFING is the same as SAFECOVER ROOFING.” 2 Dkt. 14 at 3. 3 Therefore, Plaintiff’s motion for default judgment should be granted as to trademark and 4 trade name infringement. Defendants should be enjoined from using both logos at issue, the 5 name “Pro-Cover Roofing,” and any other confusingly similar marks. Neither requiring

6 Defendants to turn over all products with the infringing design, nor transfer of the Pro-Cover 7 domain name appears necessary. 8 B. ATTORNEY’S FEES AND COSTS 9 The only monetary relief Plaintiff seeks in the motion for default judgment is for 10 attorney’s fees and costs. 11 The prevailing party in a trademark dispute may recover reasonable attorney’s fees in 12 “exceptional cases.” 15 U.S.C. § 1117(a). A trademark case is generally considered exceptional 13 “when the infringement is malicious, fraudulent, deliberate or willful.” Lindy Pen Co., Inc. v. 14 Bic Pen Corp., 982 F.2d 1400, 1409 (9th Cir. 1993). Infringement is willful when “the

15 defendant was actually aware of the infringing activity,” or showed “reckless disregard for, or 16 willful blindness to, the copyright holder’s rights.” Louis Vuitton Malletier, S.A. v. Akanoc 17 Solutions, Inc., 658 F.3d 936, 944 (9th Cir. 2001). 18 This case is not “exceptional.” It is not clear that Defendants were actually aware of or 19 recklessly disregarded Plaintiff’s rights. Nor is there evidence of more nefarious intent. 20 Therefore, Plaintiff’s request for attorney’s fees and costs should be denied. 21 / 22 / 23 / 24 1 III. ORDER 2 Therefore, it is hereby ORDERED: 3  Plaintiff’s Motion for Default Judgment Against Defendants (Dkt. 13) IS 4 GRANTED, IN PART, AND DENIED, IN PART; 5 o Plaintiff’s motion is granted as to trademark and trade name infringement;

6 o DEFENDANTS ARE ENJOINED from using the trade name “Pro-Cover 7 Roofing,” the logo designs at issue, or any other confusingly similar 8 marks; and 9 o Plaintiff’s motion is denied as to attorney’s fees and costs. 10 The Clerk is directed to send uncertified copies of this Order to all counsel of record and 11 to any party appearing pro se at said party’s last known address. 12 Dated this 8th day of April, 2021. A 13

14 ROBERT J. BRYAN United States District Judge 15

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