Summit Ice Melt Systems, LLC v. Hotedge, LLC

• Court: District Court, D. Nevada
• Decided: January 27, 2025
• Docket: 3:24-cv-00066
• Status: Unknown

Opinion

2 UNITED STATES DISTRICT COURT 3 DISTRICT OF NEVADA 4 SUMMIT ICE MELT SYSTEMS, INC., Case No. 3:24-cv-00066-ART-CSD 5 Plaintiff, ORDER 6 v. (ECF Nos. 6, 34, 36, 50, 52) 7 HOTEDGE, LLC,

8 Defendant.

9 10 Plaintiff Summit Ice Melt Systems, Inc., a manufacturer of products that 11 melt ice on roofs, sued Defendant HotEdge, LLC, another manufacturer of 12 products that melt ice on roofs, for unauthorized use of Summit’s registered 13 trademark “PRO.” Summit seeks injunctive relief barring HotEdge from using 14 Summit’s “PRO” mark and requiring HotEdge to preserve evidence of prior use. 15 (ECF Nos. 6, 19, 32, 49, 50, 52, 53, 56.) HotEdge has also filed an answer and a 16 counterclaim seeking to void Summit’s trademark, (ECF No. 35), and moved to 17 dismiss two counts in Summit’s First Amended Complaint (ECF No. 29). (See ECF 18 Nos. 34, 46, 47.) 19 The Court denies Summit’s motion for preliminary injunctive relief and 20 HotEdge’s motion to dismiss. 21 I. FACTUAL AND PROCEDURAL BACKGROUND 22 Summit has used the “PRO” mark to sell its premiere ice-melting system 23 since May 2013, though it marketed the product as the “Radiant Edge PRO Roof 24 Ice Melt System” and “PATENTED Radiant Edge PRO Roof Ice Melt System” until 25 late 2017. (ECF Nos. 6, 53-3.) Summit’s ice-melt system may be installed on 26 existing roofs or in new construction, including remodels. Summit applied for a 27 trademark for “PRO” in 2017. The USPTO rejected its first application as 28 descriptive, but Summit convinced the agency that the mark was suggestive and 1 ambiguous. (ECF No. 32-3.) The USPTO approved Summit’s application and 2 added “PRO” to the registry. (ECF No. 6-2.) 3 Defendant Hotedge, LLC, also sells roof ice-melt systems. HotEdge claims 4 to have used “PRO” in the title of several of its products since 2015, including the 5 HotMetal PRO, HotMetal PRO2X, HotShingle PRO, the HotValley PRO, 6 HotFlashing PRO, HotShingle PRO2X, HotSlate PRO, HotShake PRO, and the 7 HotTile PRO. (ECF No. 19.) HotEdge alleges that it uses “PRO” to designate 8 products that are for construction professionals like architects, designers, and 9 general contractors, and that the PRO line of products is exclusively marketed for 10 new construction and remodeling projects, not for installation on existing 11 structures. 12 Summit and HotEdge’s products compete with one another in the Lake 13 Tahoe and Northern Nevada geographic areas, and at least some of their products 14 are substitutes for one another as roof ice-melt systems. (ECF Nos. 6, 19.) Both 15 companies have submitted bids for the same construction projects, though 16 Summit claims it did not find out about HotEdge’s use of the “PRO” mark until 17 January 2024. HotEdge claims that it has been aware of Summit’s products for 18 several years, but that it did not realize that Summit had trademarked “PRO.” 19 (ECF No. 19-1.) 20 Both companies sell their products primarily to construction professionals 21 and occasionally to individual homeowners. Summit explains that its customers 22 are “ordinary homeowners who are unsophisticated in the field of roof ice melt 23 systems” as well as “sophisticated residential and commercial owners.” (ECF Nos. 24 6, 19-3.) At the hearing, Summit represented that around 75% of its sales come 25 from industrial and professional purchasers, and 25% come from retail 26 customers. (See ECF No. 60.) Both companies represented that they do not sell 27 any products on the open market or through retail channels. (Id.) The only way 28 that a prospective customer could obtain either company’s products is by 1 contacting the company, providing details for the specific project, and requesting 2 a quote. (See id.) 3 Shortly after Summit filed this lawsuit, HotEdge started administrative 4 proceedings to cancel Summit’s “PRO” trademark at the USPTO as descriptive or 5 generic. (See ECF No 19.) HotEdge also counterclaimed asking this Court to do 6 the same. (See ECF No. 18.) The USPTO stayed proceedings until the matter 7 before this Court is resolved. See Hotedge, LLC v. Summit Ice Melt Sys., T.T.A.B., 8 92085126-CAN, No. 10. 9 II. SUMMIT’S PRELIMINARY INJUNCTION 10 A. Legal Standard 11 A movant seeking preliminary injunctive relief must show that they are 12 likely to succeed on the merits, that they are likely to suffer irreparable harm in 13 the absence of preliminary relief, that the balance of equities tips in their favor, 14 and that an injunction is in the public interest. Winter v. Nat. Res. Def. Council, 15 Inc., 555 U.S. 7, 20 (2008). A preliminary injunction is an “extraordinary” and 16 “drastic” remedy that requires the moving party to clearly show that they carry 17 the burden of persuasion. Mazurek v. Armstrong, 520 U.S. 968, 972 (1997) 18 (cleaned up). The most important Winter factor is likelihood of success on the 19 merits. See Disney Enterprises, Inc. v. VidAngel, Inc., 869 F.3d 848, 856 (9th Cir. 20 2017). 21 B. Likelihood of Success on the Merits 22 Summit seeks preliminary injunctive relief for its federal trademark 23 infringement claim, an unfair competition claims under 15 U.S.C. § 1125(a), its 24 Nevada Deceptive Trade Practices Claim, and a Common Law Trademark 25 Infringement claim. (ECF No. 29.) All of these claims rest on the federal standard 26 for trademark infringement. Lodestar Anstalt v. Bacardi & Co. Ltd., 31 F.4th 1228, 27 1251 (9th Cir. 2022) (Lanham Act trademark infringement and unfair competition 28 under the Lanham Act share “exactly the same” burden of consumer confusion); 1 NRS 598.0915(1), 598.0923(1)(c); see BBK Tobacco & Foods, LLP v. Aims Grp. USA 2 Corp., 723 F. Supp. 3d 973, 986 (D. Nev. 2024) (“[t]he elements of common law 3 claims for trademark infringement and unfair competition mirror the federal 4 standard” in Nevada). Accordingly, Summit’s trademark infringement claim must 5 be evaluated to determine if the preliminary injunction is warranted. 6 1. Trademark Infringement 7 Trademark infringement occurs when an unauthorized user of a mark sells 8 goods using that mark in a way likely to cause confusion or mistake. 15 9 U.S.C. § 1114(1)(a). A successful claim for trademark infringement must show 10 that (1) the claimant has a protectible ownership interest in the mark; and (2) the 11 defendant’s use of the mark is likely to cause consumer confusion. Network 12 Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 13 2011) (citing Dep't of Parks & Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 14 1124 (9th Cir. 2006)). 15 Although Summit has satisfied the first element by showing that it 16 registered the “PRO” mark, (ECF No. 6-2); Pom Wonderful LLC v. Hubbard, 775 17 F.3d 1118, 1124 (9th Cir. 2014) (registration prima facie evidence of ownership 18 interest), Summit has not shown the second element, likelihood of consumer 19 confusion. 20 a. Likelihood of Consumer Confusion 21 For success on the merits of its trademark infringement and unfair trade 22 practices claims, Summit must show that HotEdge’s use of the word “PRO” is 23 likely to confuse Summit’s and HotEdge’s customers. Courts use the eight 24 Sleekcraft factors to examine whether the similarity of the mark is likely to 25 confuse customers about the source of the products. See Freecycle Network, Inc. 26 v. Oey, 505 F.3d 898, 902 (9th Cir. 2007) (quoting Abercrombie & Fitch Co. v. 27 Moose Creek, Inc., 486 F.3d 629, 633 (9th Cir. 2007)). These factors are (1) 28 strength of the mark; (2) similarity of the marks; (3) proximity of the goods; (4) 1 evidence of actual confusion; (5) marketing channels used; (6) type of goods and 2 the degree of care likely to be exercised by the purchaser; (7) defendant's intent 3 in selecting the mark; and (8) likelihood of expansion of the product lines. See 4 Lodestar Anstalt, 31 F.4th at 1252; AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 5 348–49 (9th Cir.1979), abrogated on other grounds by Mattel Inc. v. Walking 6 Mountain Prods., 353 F.3d 792, 810 n.19 (9th Cir.2003). 7 The Sleekcraft factors must be applied “in a flexible fashion” and “may rest 8 on only those factors that are most pertinent to the particular case.” Rearden LLC 9 v. Rearden Com., Inc., 683 F.3d 1190, 1209 (9th Cir. 2012). Three factors are not 10 relevant at this stage: (4) actual confusion, (5) marketing channels used, and (8) 11 likelihood of expansion. Binding precedent prevents the Court from considering 12 the fourth factor, actual confusion, in deciding likelihood of consumer confusion 13 for a preliminary injunction. See Network, 638 F.3d at 1151. The Court also 14 recognizes that the fifth factor, marketing channels used, does not apply because 15 using the Internet to market products is “properly accorded . . . no weight.” 16 Lerner & Rowe PC v. Brown Engstrand & Shely LLC, 119 F.4th 711, 725 (9th Cir. 17 2024). Finally, both parties and the Court agree that the eighth factor, likelihood 18 of product expansion, is not relevant to this case because Summit and HotEdge 19 are direct competitors. Accordingly, the Court does not consider these factors, 20 and only considers (i) strength of the mark; (ii) similarity of the marks; (iii) 21 proximity of the goods; (iv) type of goods and the degree of care likely to be 22 exercised by the purchaser; and (v) defendant's intent in selecting the mark. 23 i. The strength of Summit’s “PRO” mark 24 The strength of a mark is relevant to evaluating likelihood of consumer 25 confusion, and it depends on two components: conceptual and commercial 26 strength. GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000). 27 The Court evaluates whether Summit has shown either form of strength. 28 // 1 1. Summit’s mark is conceptually weak. 2 Conceptual strength exists along a five-part spectrum. The “inherently 3 distinctive” categories are arbitrary, fanciful, and suggestive; and marks that 4 receive these classifications receive the most legal protection. 1 McCarthy on 5 Trademarks and Unfair Competition (“McCarthy”) § 11:2 (5th ed.). Descriptive 6 marks receive protection only when the mark has acquired distinctiveness 7 through commercial use, also referred to as “secondary meaning,” and generic 8 marks receive no trademark protection. Id. Summit’s registration of the mark 9 with the USPTO entitles it to a rebuttable presumption of being suggestive. 10 McCarthy § 11:43; (see ECF No. 32-2). 11 HotEdge, however, may rebut Summit’s presumption of conceptual 12 strength. “Suggestive marks are presumptively weak,” and “[s]ome weak marks 13 are weaker than others.” Brookfield Commc'ns, Inc. v. W. Coast Ent. Corp., 174 14 F.3d 1036, 1058 (9th Cir. 1999); see also Fortune Dynamic, Inc. v. Victoria's Secret 15 Stores Brand Mgmt., Inc., 618 F.3d 1025, 1033 (9th Cir. 2010) (“line between 16 descriptive and suggestive marks . . . nearly incapable of precise description”) 17 (citing Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1197 (9th Cir.2009)). To assess 18 conceptual strength, the Court applies the “imagination test” and “competitors’ 19 needs test,” which both show that Summit’s mark is weak. 20 The imagination test asks if “imagination or a mental leap” is required to 21 reach a conclusion about the nature of the product being referenced. Zobmondo 22 Ent., LLC v. Falls Media, LLC, 602 F.3d 1108, 1115 (9th Cir. 2010) (quoting 23 Rudolph Int'l, Inc. v. Realys, Inc., 482 F.3d 1195, 1198 (9th Cir. 2007)). A mark is 24 weak if it “describe[s] some aspect of the product.” Id. (citing Bada Co. v. 25 Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir. 1970)). For example, the marks 26 “ENTREPRENEUR,” “Aviation,” and “Classroom” applied to magazines about 27 entrepreneurs, aviation, and the instruction of students, respectively, do not 28 require imagination and are thus weak. Id.; Entrepreneur Media, Inc. v. Smith, 1 279 F.3d 1135, 1142 (9th Cir. 2002). Applying the imagination test, this Court 2 finds that the “PRO” mark describes Summit’s ice-melting system as having 3 professional quality. See Good Meat Project v. GOOD Meat, Inc., 716 F. Supp. 3d 4 783, 798 (N.D. Cal. 2024) (“little-to-no mental leap required to understand that 5 GOOD MEAT describes [Good Meat Project’s] services”). 6 The “PRO” mark is also weak under the competitors’ needs test, which asks 7 to what extent a mark is needed by competitors to identify their goods or services. 8 Zobmondo, 602 F.3d at 1117. If competitors need to use a mark to describe their 9 product, the mark is weak. See id; see M2 Software, Inc. v. Madacy Ent., 421 F.3d 10 1073, 1088 (9th Cir. 2005) (“use of similar marks by third-party companies in 11 the relevant industry weakens the mark”). HotEdge has argued that it uses the 12 mark “PRO” to describe its line of products made for professionals. (ECF No. 19.) 13 Other products, for example, the roof-gutter-de-icing “PD Pro Series,” also use 14 the mark for this purpose. (ECF No. 19-1, at 76). It is not obvious how a 15 competitor could indicate that their products are meant for construction 16 professionals without using either “professional” or “pro” in the product title. 17 2. Summit’s mark is commercially weak. 18 Next, the Court considers if Summit has shown that the “PRO” mark has 19 commercial strength. “Commercial strength is based on actual marketplace 20 recognition,” and may be proven, for instance, through advertising expenditures. 21 Network, 638 F.3d at 1149 (internal citations omitted). Summit has asserted that 22 it advertises its products to customers who live in areas with significant snowfall 23 and that it has spent “significant funds” to promote its products. (ECF No. 6-1.) 24 These assertions do not suffice as proof of commercial strength. 25 3. Summit’s mark is weak. 26 Summit points to Brookfield for the proposition that strength of the mark 27 is not weighed when the mark is identical and the two products are closely 28 related, but Brookfield is a domain-name case. 174 F.3d at 1059; see Rearden 1 LLC, 683 F.3d at 1209–10 (“internet trinity” Sleekcraft factors less important in 2 cases that are not about domain names). 3 Accordingly, the Court finds that strength of the mark is a factor deserving 4 moderate weight and that Summit’s mark is weak. A weak mark may still receive 5 protection if the infringing mark is “quite similar, and the goods closely related.” 6 Sleekcraft, 599 F.2d at 350. 7 ii. Similarity of Marks 8 Similarity of the marks is relevant to finding likelihood of consumer 9 confusion. The Court considers the marks’ “appearance, sound, and meaning;” it 10 considers the marks “in their entirety and as they appear in the marketplace;” 11 and it weighs “similarities . . . more heavily than differences.” Pom Wonderful, 775 12 F.3d at 1127–28. 13 HotEdge and Summit use “PRO” in a similar manner. Summit advertises 14 the “PATENTED PRO® Roof Ice Melt System,” the “Radiant Edge PRO Roof Ice 15 Melt System,” the “PATENTED Radiant Edge PRO Roof Ice Melt System,” and 16 refers to its product as “the PRO.” (See ECF Nos. 6, 53-3.) HotEdge advertises the 17 HotMetal PRO, the HotMetal PRO2X, the HotShingle PRO, the HotValley PRO, 18 and others. (ECF No. 19.) Both companies use “PRO” in black capital letters that 19 are around the same size as the surrounding words. Both companies intend the 20 same meaning for PRO, as in, a laudatory connotation associated with products 21 of professional quality or for professionals. See supra. 22 The key difference is that Summit uses “the PRO” alone, while HotEdge’s 23 uses “PRO” after various “Hot” words, often followed by numbers. While the 24 marks sound identical, HotEdge’s product names that use the mark look and 25 sound distinct in their entirety and as they appear in the marketplace. 26 Summit argues that the Ninth Circuit’s finding of similarity in La Quinta 27 Worldwide LLC v. Q.R.T.M., S.A. de C.V. requires this Court to weigh this factor 28 heavily in finding a likelihood of confusion, but in that case, both companies’ 1 “dominant words [“Quinta”] frequently appear[ed] without anything more in the 2 marketplace,” and there is no evidence here of HotEdge using the mark “PRO” 3 without the surrounding words. 762 F.3d 867, 876 (9th Cir. 2014). 4 While meaningful differences exist between the marks in their entirety, the 5 Court weighs similarities more heavily than differences to find that this factor 6 weighs moderately in favor of consumer confusion. 7 iii. Proximity of Summit and HotEdge’s Products 8 “Related goods are generally more likely than unrelated goods to confuse 9 the public as to the producers of the goods.” Brookfield, 174 F.3d at 1055. 10 Whether goods are closely related is “less important if advertisements are clearly 11 labeled or consumers exercise a high degree of care, because rather than being 12 misled, the consumer would merely be confronted with choices among similar 13 products.” Network, 638 F.3d at 1150. Weighing two parties’ status as direct 14 competitors too heavily can be clear error. Id. 15 Both Summit and HotEdge sell systems for melting ice on roofs in similar 16 geographic markets to construction professionals. (See ECF No. 60.) Both 17 companies have submitted bids on the same construction projects for rooftop ice- 18 melting systems. (See ECF Nos. 19-1, 32-5.) While this would normally weigh 19 heavily in favor of consumer confusion, it is not dispositive because of the 20 following factor: the degree of care a reasonable purchaser is likely to exercise in 21 selecting the product. 22 iv. Degree of Care Likely to Be Exercised by Purchaser 23 Whether a “‘reasonably prudent consumer’ would take the time to 24 distinguish between the two product lines” is relevant to finding consumer 25 confusion. Surfvivor Media, 406 F.3d 625, 634 (9th Cir. 2005) (quoting Brookfield, 26 174 F.3d at 1060). The Court finds that consumers of Summit’s and HotEdge’s 27 products are likely to exercise a high degree of care in selecting their products 28 because both products are expensive, most buyers are construction 1 professionals, and both products are sold through a quote system. This factor 2 weighs heavily against finding consumer confusion. 3 First, the risk of confusion is minimal because both companies’ products 4 cost several thousand dollars. Off. Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1393 5 (9th Cir. 1993) (finding confusion unlikely for products that cost several thousand 6 dollars). Summit argues that “even purchasers of high-end products who exercise 7 great care” can easily be confused, citing Boldface Licensing + Branding v. By Lee 8 Tillett, Inc., but the products in that case were cosmetics ranging between $6.49 9 and $100. 940 F. Supp. 2d 1178, 1189 (C.D. Cal. 2013). Consumers are likely to 10 exercise great care on home improvements, like these roof ice-melt systems, that 11 cost several thousand dollars. 12 Second, risk of confusion is minimal because both companies primarily 13 market their products to construction professionals. Accuride Int'l, Inc. v. Accuride 14 Corp., 871 F.2d 1531, 1537 (9th Cir. 1989) (finding fact that purchasers were 15 “highly specialized professional[s]” weighs “heavily against finding a likelihood of 16 confusion in the relevant purchasing population”). At the hearing, Summit stated 17 that only twenty-five percent of its sales are retail, and the rest are made to 18 construction professionals. (ECF No. 60.) HotEdge, on the other hand, markets 19 its “PRO” line of products exclusively for remodels and new construction, (see 20 ECF No. 19-1), which are more likely to be undertaken by construction 21 professionals than by individual homeowners. The reasonably prudent consumer 22 in this case is most likely a construction professional, and construction 23 professionals are unlikely to be confused by HotEdge’s use of “PRO.” 24 Finally, the risk of consumer confusion is minimal because both products 25 are sold through a quote system. Neither Summit nor HotEdge sell their products 26 on the open market. (ECF No. 60.) Their products are not available through retail 27 channels or even directly for purchase through their website. (Id.) A consumer 28 looking to purchase either “the PRO” or a “HotShingle PRO” must communicate 1 with a Summit or HotEdge representative about their project and about the 2 product to receive a quote. (Id.) Summit hypothesizes that a homeowner whose 3 neighbor recommended “the PRO” ice-melting system might be confused about 4 which product it is. The fact that this consumer cannot make an impulse 5 purchase, must consider the name and nature of the product several times before 6 buying it, and also must interact with a company representative about the 7 product weighs against finding consumer confusion. 8 Accordingly, this factor weighs strongly against Summit. 9 v. Lack of Willful Infringement 10 Whether an alleged infringer adopts a mark with actual or constructive 11 knowledge that it is someone else’s trademark is “relevant to the extent that it 12 bears upon the likelihood that consumers will be confused.” Brookfield, 174 F.3d 13 at 1059. Intent to deceive the public is presumed when an alleged infringer 14 knowingly adopts a mark resembling another’s. Off. Airline Guides, 6 F.3d at 15 1394. The evidence before the Court so far does not show that HotEdge knowingly 16 infringed on Summit’s mark. 17 First, the timing of HotEdge’s use of the “PRO” mark and Summit’s 18 protection of the mark weigh against finding knowing adoption of a protected 19 mark. HotEdge has used the “PRO” mark since 2015 (ECF No. 19-1) and 20 maintains that it first learned that Summit had registered the “PRO” mark when 21 it received notice of this lawsuit. (ECF No. 6.) Evidence submitted by Summit 22 shows that it did not include ™ or ® symbols on its web advertisements until 23 2018. (See ECF No. 53-3.) Summit also frequently changed its product name, to 24 the point where a reasonable reader could have thought that Summit’s trademark 25 was “Radiant Edge PRO” or “PATENTED PRO Ice Melt System.” (Id.; see ECF Nos. 26 32-1, 52-1.). 27 Additionally, HotEdge has so far credibly argued that its intent in adopting 28 the “PRO” mark was to describe its professional series of products, not to mislead 1 consumers. See Network, 638 F.3d at 1153. This factor does not weigh in favor 2 of finding consumer confusion. 3 Accordingly, this factor weighs against Summit. 4 vi. Summit is unlikely to show consumer confusion. 5 Considering the relevant Sleekcraft factors, the Court finds that Summit is 6 not likely to succeed on the merits of its trademark claims because it has not 7 shown that consumer confusion is likely. Summit and HotEdge sell to purchasers 8 whose degree of care in selecting the product minimizes risk of confusion. Both 9 products are expensive and sold primarily to construction professionals. Neither 10 product can be purchased without obtaining a quote. The “PRO” mark is weak, 11 and both companies use it descriptively. The Court is not convinced that 12 HotEdge, which has used the “PRO” mark descriptively in its product names since 13 2015, has willfully infringed the mark. 14 On the other hand, Summit and HotEdge directly compete in the same 15 geographic markets, and HotEdge uses the entire mark. These factors do not 16 compel finding likelihood of confusion because both companies’ customers are 17 likely to exercise care for the reasons explained above, and HotEdge’s use of 18 words before and numbers after “PRO” reduces the salience of the marks’ 19 similarity. 20 b. NDTPA claims 21 For the same reasons, Summit is also unlikely to succeed on the merits of 22 its NDTPA claims. Any person who is a victim of consumer fraud may sue for 23 relief under Nevada’s Deceptive Trade Practices Act. NRS 41.600(1). Consumer 24 fraud includes the following deceptive trade practices, for which Summit seeks 25 relief: knowingly passing off goods or services for sale as those of another person 26 (NRS 598.0915(c)) and knowingly violating a state or federal statute relating to 27 the sale of goods (NRS 598.0923(1)(c)). Summit argues that HotEdge’s use of 28 “PRO” is passing off its products as Summit’s or approved by Summit, in violation 1 of federal trademark law. (See ECF No. 6.) 2 The Court finds that Summit has not produced sufficient evidence to show 3 that HotEdge has knowingly passed off its products as Summit’s for the same 4 reasons it finds that consumers are not likely to be confused. See supra. In 5 addition, the Court finds that because Summit has not shown trademark 6 infringement, it has not shown that HotEdge knowingly violated a state or federal 7 statute related to the sale of goods. 8 C. Irreparable Harm 9 A movant for a preliminary injunction must show they are “likely to suffer 10 irreparable harm in the absence of preliminary relief.” Winter, 555 U.S. at 20. A 11 party seeking relief under the Lanham Act is “entitled to a rebuttable presumption 12 of irreparable harm upon . . . a finding of likelihood of success on the merits” 13 when seeking preliminary injunctive relief for a trademark violation. 15 U.S.C. § 14 1116(a). Without the presumption arising out of a likelihood of success on the 15 merits, “unsupported and conclusory statements regarding harm [a movant] 16 might suffer” will not suffice for preliminary injunctive relief. Herb Reed 17 Enterprises, LLC v. Fla. Ent. Mgmt., Inc., 736 F.3d 1239, 1250 (9th Cir. 2013). 18 Summit is not entitled to the Lanham Act’s presumption of irreparable 19 harm because the Court has not found a likelihood of success on the merits. See 20 supra. 21 Nor has Summit proved irreparable harm independent of the Lanham Act’s 22 presumption. In Herb Reed Enterprises, the Ninth Circuit found that the movant 23 failed to show irreparable harm, even with evidence of actual consumer 24 confusion. 736 F.3d at 1250. Despite being direct competitors, Summit claims 25 that it did not know that HotEdge had infringed until 2024, while HotEdge has 26 shown that it has used the “PRO” mark since 2015. (See ECF No. 32.) HotEdge’s 27 alleged infringement has taken place over nine years, and Summit has failed to 28 produce any evidence of consumer confusion. Nor has Summit pointed to 1 evidence that HotEdge’s use of “PRO” has seriously damaged Summit’s 2 reputation, interfered with Summit’s operations, or otherwise harmed Summit. 3 Finally, Summit has not shown why money damages would not be calculable or 4 otherwise vindicate the alleged infringement. The Court finds no likelihood of 5 irreparable harm. 6 D. The Balance of Equities 7 A movant for preliminary injunctive relief must show that “the balance of 8 equities tips in their favor.” Winter, 555 U.S. at 20. The Court finds that without 9 irreparable harm or likelihood of success on the merits, “forcing [Defendant] to 10 undergo a massive rebranding of a name it has built up for about nine years” 11 outweighs the hardship of denying the injunction to Plaintiff. See Good Meat 12 Project, 716 F. Supp. 3d at 806 (quoting Kiva Health Brands LLC v. Kiva Brands 13 Inc., 402 F. Supp. 3d 877, 899 (N.D. Cal. 2019). The balance of equities weighs 14 against granting an injunction. 15 E. Public’s Interest 16 A movant for a preliminary injunction must also show that “an injunction 17 is in the public interest.” Winter, 555 U.S. at 20. There does not appear to be a 18 public interest value in precluding use of the word “PRO” from a product market 19 where distinctions between products for lay and professional users may be 20 important. See 1 McCarthy § 1:24. Summit has not shown that a preliminary 21 injunction is in the public’s interest. 22 IV. HotEdge’s Motion to Dismiss 23 HotEdge seeks to dismiss Summit’s trademark-dilution claim because it is 24 based on the niche fame doctrine and Summit’s Nevada Deceptive Trade Practices 25 Act (NDTPA) claim because Summit fails to allege reliance. The Court denies the 26 motion because Nevada law permits trademark-dilution claims based on niche 27 fame even though federal law no longer allows them, and reliance is not an 28 element of NDTPA claims based on unfair competition. 1 A. Legal Standard 2 A complaint must provide “a short and plain statement of the claim 3 showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2); Bell Atl. Corp. 4 v. Twombly, 550 U.S. 544, 555 (2007). A complaint must be plausible and contain 5 more than a “recitation of the elements of a cause of action.” Ashcroft v. Iqbal, 6 556 U.S. 662, 678 (2009) (citing Twombly, 550 U.S. at 555). All factual allegations 7 set forth in the complaint are taken as true and construed in the light most 8 favorable to the plaintiff. Lee v. City of Los Angeles, 250 F.3d 668, 679 (9th Cir. 9 2001). An otherwise plausible claim may be dismissed under Fed. R. Civ. P. 10 12(b)(6) for “lack of a cognizable legal theory.” Solida v. McKelvey, 820 F.3d 1090, 11 1096 (9th Cir. 2016). 12 B. Nevada Trademark Dilution 13 The Court must decide if Nevada’s trademark-dilution statute permits 14 claims based on niche fame. Nevada’s statute prohibits the dilution of marks 15 famous in Nevada. NRS 600.435(1). A mark can be famous in Nevada based on 16 its “degree of recognition . . . [in] trading areas and channels of trade.” See NRS 17 600.435(2)(f). Fame limited to channels of trade and trading areas is referred to 18 as “niche” fame. See Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 908 (9th 19 Cir. 2002). 20 Nevada’s trademark-dilution law was modeled after the Lanham Act, which 21 previously permitted claims based on niche fame. See Russell Rd. Food & 22 Beverage, LLC v. Galam, 180 F. Supp. 3d 724, 741–42 (D. Nev. 2016); compare 23 15 U.S.C. § 1125(c) with NRS 600.435; see Thane, 305 F.3d at 908 (discussing 24 origin of niche fame doctrine). The Lanham Act was later amended to prohibit 25 claims based on niche fame. See 15 U.S.C. § 1125(c)(2)(A) (mark must be “widely 26 recognized by the general consuming public of the United States”); Blumenthal 27 Distrib., Inc. v. Herman Miller, Inc., 963 F.3d 859, 870 (9th Cir. 2020). The Nevada 28 dilution statute was never changed to prohibit niche fame or otherwise amended. 1 Nevada’s dilution statute therefore still permits claims based on niche fame. 2 While HotEdge argues that public policy disfavors the concept of niche 3 fame, see 3 McCarthy § 24:105, the Nevada Legislature has not modified the 4 statutory provisions that give rise to niche fame and must be considered when 5 deciding whether a party states a claim under NRS 600.435. The Court therefore 6 denies HotEdge’s motion to dismiss Summit’s NRS trademark-dilution claim. 7 C. NDTPA 8 HotEdge moves to dismiss Summit’s NDTPA claim for not alleging reliance 9 and for not being pled with particularity. As no Nevada Supreme Court case 10 plainly holds that the claimant’s reliance is or is not an element of the NDTPA, 11 this Court must predict how the Nevada Supreme Court would decide the issue. 12 This Court predicts that reliance is not an element of NDTPA claims based on 13 unfair competition and finds that Summit’s pleading satisfies Rule 9(b). 14 1. Reliance 15 NRS 41.600 provides a cause of action to “any person who is a victim of 16 consumer fraud,” including a “business competitor.” R.J. Reynolds Tobacco Co. 17 v. Eighth Jud. Dist. Ct., 514 P.3d 425, 433 (Nev. 2022). Consumer fraud includes 18 both knowingly passing off goods or services for sale as those of another person 19 and knowingly violating state and federal statutes relating to the sale of its goods. 20 See NRS 41.600, 598.0915, 598.0923(1)(c). 21 The Nevada Supreme Court’s reasoning in R.J. Reynolds Tobacco Co. shows 22 that reliance is not a necessary element in all NDTPA claims, even though the 23 plaintiff in that case alleged reliance. 514 P.3d at 429–31 (citing S. Serv. Corp. v. 24 Excel Bldg. Servs., 617 F. Supp. 2d 1097, 1100 (D. Nev. 2007)). Reynolds 25 instructs courts to interpret the NDTPA by its plain language, recognize it as a 26 “remedial statutory scheme [that] should be afforded liberal construction,” and 27 to not “read in” requirements. 514 P.3d at 429–31 (internal citations omitted). 28 The Reynolds Court endorsed Del Webb Communities, Inc. v. Partington, 652 F.3d 1 1145, 1153 (9th Cir. 2011) (allowing developer to sue a building-inspection 2 company for false statements to homeowners without alleging reliance), and 3 Southern Service, 617 F. Supp. 2d at 1100 (allowing business competitors to sue 4 one another for unfair practices without alleging reliance). This further supports 5 finding that the NDTPA permits claims that do not allege reliance. Accordingly, 6 the Court predicts that the Nevada Supreme Court would not require a showing 7 of reliance to state a claim under the NDTPA in this case, and it denies HotEdge’s 8 motion to dismiss Plaintiff’s NDTPA claim for failing to allege reliance. 9 2. Particularity 10 In addition, Summit has stated a NDTPA claim with particularity. A party 11 alleging fraud must “state with particularity the circumstances constituting fraud 12 or mistake.” Fed. R. Civ. P. 9(b). An allegation of fraud must be accompanied by 13 the “who, what, when, where, and how” of the allegation. Vess v. Ciba-Geigy Corp. 14 USA, 317 F.3d 1097, 1106 (9th Cir. 2003). Summit alleges HotEdge began using 15 Summit’s “PRO” mark on their roof ice melt products around 2015 in the snowy 16 markets where both companies sell their products by putting it on their 17 advertisements and product models. (See ECF No. 29.) This satisfies Rule 9(b). 18 Accordingly, the Court denies HotEdge’s motion to dismiss Summit’s NDTPA 19 claim for failing to allege fraud with particularity. 20 V. Conclusion. 21 It is ordered that Plaintiff’s Motion for a Temporary Restraining Order, 22 construed as a motion for preliminary injunctive relief, (ECF No. 6) be denied. 23 It is further ordered that Defendant’s Motion to Dismiss Plaintiff’s second 24 and fourth claims (ECF No. 34) be denied. 25 It is further ordered that HotEdge’s Motion to Strike (ECF No. 36) be denied 26 as moot because Summit amended the reply that HotEdge sought to strike. 27 // 28 // 1 It is further ordered that both parties’ motions to file additional documents 2 || (ECF Nos. 50, 52) in support of their positions regarding Summit’s preliminary 3 || injunctive relief is granted. 4 5 DATED THIS 27th day of January 2025. 6 Ana jlosed Jer 7 ANNE R. TRAUM 8 UNITED STATES DISTRICT JUDGE 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28