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Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 1 of 28

Kenneth R. Davis II, OSB No. 971132


davisk@lanepowell.com
Parna A. Mehrbani, OSB No. 053235
mehrbanip@lanepowell.com
LANE POWELL PC
601 SW Second Avenue, Suite 2100
Portland, Oregon 97204-3158
Telephone: 503.778.2100
Facsimile: 503.778.2200

Attorneys for Plaintiff Heart, LLC

UNITED STATES DISTRICT COURT

DISTRICT OF OREGON

PORTLAND DIVISION

HEART, LLC, an Oregon limited liability Case No. 3:17-cv-01297-YY


corporation,

Plaintiff, Plaintiff Heart, LLCs


MOTION FOR PRELIMINARY
v. INJUNCTION

HEART PIZZA, LLC, an Oregon limited ORAL ARGUMENT REQUESTED


liability corporation; and MICAH CAMDEN,
an individual residing in Oregon,

Defendants.

MOTION FOR PRELIMINARY INJUNCTION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 2 of 28

TABLE OF CONTENTS

Page

LOCAL RULE 7-1 CERTIFICATION .......................................................................................... 1

MOTION......................................................................................................................................... 1

MEMORANDUM .......................................................................................................................... 1

I. INTRODUCTION .............................................................................................................. 1

II. FACTUAL BACKGROUND ............................................................................................. 2

A. Heart and Its Business............................................................................................. 2

B. Camden, A Long-Time Customer of Heart, Establishes His Own


Business, Heart Pizza, Literally Around the Corner From Hearts
Downtown Caf. ..................................................................................................... 4

C. Defendants Intentionally Sought to Usurp Hearts Goodwill. ................................ 5

D. Defendants Actions Have Already Caused Numerous Instances of


Actual Confusion. ................................................................................................... 6

E. The Harm Caused by Defendants Actions is Exacerbated by the Rapid


Expansion of Heart Pizza and Camdens History of Operating Similar
Businesses. .............................................................................................................. 8

III. HEART IS ENTITLED TO AN INJUNCTION PROHIBITING


DEFENDANTS FROM USING THE HEART MARK IN CONNECTION
WITH THEIR RESTAURANTS ........................................................................................ 8

A. Heart Is Likely to Prevail on the Merits.................................................................. 9

1. Heart owns the protectable HEART mark .................................................. 9

2. Defendants use of Heart Pizza creates a likelihood of


consumer confusion .................................................................................... 9

a. The HEART mark is strong .......................................................... 11

b. The proximity of the goods weighs heavily in Hearts favor


....................................................................................................... 12

c. Defendants Mark is not only similar, it is, in important


aspects, identical to the HEART mark .......................................... 13

d. There is significant evidence of actual confusion ......................... 13

PAGE i - TABLE OF CONTENTS AND AUTHORITIES

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601 SW SECOND AVENUE, SUITE 2100
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503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 3 of 28

e. Defendants use the same marketing channels as Heart ................ 14

f. The type of goods sold by both defendants and Heart, and


the degree of care likely to be exercised by the purchaser
favors Heart ................................................................................... 14

g. Defendants intended to usurp the goodwill associated with


the HEART mark .......................................................................... 15

h. Expansion of the product lines favors a finding that


confusion is likely ......................................................................... 16

3. The fact that defendants knowingly opened their restaurant only


a block and a half from Heart weighs heavily in Hearts favor ................ 17

B. The Threatened Injury To Heart Is Irreparable And Justifies


Preliminary Injunctive Relief. ............................................................................... 18

C. The Balance of Equities Tips in Hearts Favor..................................................... 19

D. A Preliminary Injunction Is in the Public Interest. ............................................... 20

IV. CONCLUSION ................................................................................................................. 21

PAGE ii - TABLE OF CONTENTS AND AUTHORITIES

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601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 4 of 28

TABLE OF AUTHORITIES

Page(s)

Cases

Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc.,
944 F.2d 1446 (9th Cir. 1991) ...........................................................................................11, 14

Adidas Am., Inc. v. Skechers USA, Inc.,


149 F. Supp. 3d 1222 (D. Or. 2016) ........................................................................................20

Am. Rena Intl Corp. v. SisJoyce Intl Co. Ltd.,


534 Fed. Appx. 633 (9th Cir. 2013) .......................................................................................20

AMF Inc. v. Sleekcraft Boats,


599 F.2d 341 (9th Cir. 1979) ........................................................................................... passim

Amoco Production Company v. Village of Gambell, Alaska,


480 U.S. 531 (1987) .................................................................................................................19

Beer Nuts, Inc. v. Clover Club Foods Co.,


805 F.2d 920 (10th Cir. 1986) .................................................................................................13

Brennans, Inc. v. Brennans Restaurant, L.L.C.,


360 F.3d 125 (2nd Cir. 2004)...................................................................................................17

Brookfield Commcns, Inc. v. W. Coast Entmt Corp.,


174 F.3d 1036 (9th Cir. 1999) ...........................................................................................11, 14

Century 21 Real Estate LLC v. All Profl Realty, Inc.,


Nos. CIV. 2:10-2751, CIV. 2:10-02846, 2011 WL 221651 (E.D. Cal. Jan. 24,
2011) ..................................................................................................................................18, 20

ChiChis Inc. v. Chi-Mex., Inc.


568 F. Supp. 731 (W.D. Pa. 1983) ...........................................................................................15

Community of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus


Christs Church,
634 F.3d 1005 (8th Cir. 2011) .................................................................................................17

CytoSport, Inc. v. Vital Pharms., Inc.,


617 F. Supp. 2d 1051 (E.D. Cal. 2009)..................................................................16, 18, 19, 21

Dept of Parks and Recreation for the State of California v. Bazaar Del Mundo Inc.,
448 F.3d 1118 (9th Cir. 2006) ...................................................................................................9

PAGE iii - TABLE OF CONTENTS AND AUTHORITIES

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 5 of 28

Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc.,


109 F.3d 1394 (9th Cir. 1997) .................................................................................................11

E. & J. Gallo Winery v. Gallo Cattle Co.,


967 F.2d 1280 (9th Cir. 1992) .......................................................................................9, 10, 12

Ewe Group, Inc. v. Bread Store, LLC,


54 F. Supp. 3d 1343 (N.D. Ga. 2014) ......................................................................................17

Fleischmann Distilling Corp. v. Maier Brewing Co.,


314 F.2d 149 (9th Cir. 1963) ...................................................................................................16

Frischs Restaurants, Inc. v. Elbys Big Boy of Steubenville, Inc.,


670 F.2d 642 (6th Cir. 1982) ...................................................................................................15

GoTo.com, Inc. v. Walt Disney Co.,


202 F.3d 1199 (9th Cir. 2000) .................................................................................................11

Grey v. Campbell Soup Co.,


650 F. Supp. 1166 (C.D. Cal. 1986) ........................................................................................10

Hasbro, Inc. v. Lanard Toys, Ltd.,


858 F.2d 70 (2d Cir. 1988).......................................................................................................15

Idaho Golf Partners, Inc. v. TimberStone Mgmt., LLC.,


No. 1:14-CV-00233-BLW, 2016 WL 5340302 (D. Idaho Sept. 21, 2016) .............................17

Intl Jensen, Inc. v. Metrosound U.S.A., Inc.,


4 F.3d 819 (9th Cir. 1993) .......................................................................................................19

Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery,


150 F.3d 1042 (9th Cir. 1998) .................................................................................................16

Kos Pharm., Inc. v. Andrx Corp.,


369 F.3d 700 (3d Cir. 2004).....................................................................................................20

Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co.,


571 F.3d 873 (9th Cir. 2009) ...................................................................................................18

Mastros Restaurants LLC v. Dominick Group LLC,


No. CV 11-1996-PHX-PGR, 2012 WL 2091535 (D. Ariz. June 11, 2012) ............................17

Mrs. U.S. Natl Pageant, Inc. v. Miss U.S. Org., LLC,


No. 12-CV-6137L, 2012 WL 2870218 (W.D.N.Y. July 13, 2012) .........................................18

Nautilus Group, Inc. v. ICON Health and Fitness, Inc.,


372 F.3d 1330 (Fed. Cir. 2004)................................................................................................12

PAGE iv - TABLE OF CONTENTS AND AUTHORITIES

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 6 of 28

Network Automation, Inc. v. Advanced Systems Concepts, Inc.,


638 F.3d 1137 (9th Cir. 2011) .......................................................................................8, 12, 14

Official Airline Guides, Inc. v. Goss,


6 F.3d 1385 (9th Cir. 1993) .....................................................................................................13

Pizzeria Uno Corp. v. Temple,


747 F.2d 1522 (4th Cir. 1984) .................................................................................................13

Playboy Enters. v. Netscape Communications Corp.,


354 F.3d 1020 (9th Cir. 2004) ...........................................................................................10, 14

Quia Corp. v. Mattel, Inc.,


No. C 10-1902 JF (HRL), 2011 WL 2749576 (N.D. Cal. July 14, 2011) ...............................14

Seven Elephants Distrib. Corp. v. Earthquake Sound Corp.,


No. CV 06 4761 GAF (RZX), 2007 WL 977391 (C.D. Cal. Jan. 11, 2007) ...........................14

Solutech, Inc. v. Solutech Consulting Servs., Inc.,


153 F. Supp. 2d 1082 (E.D. Mo. 2000)....................................................................................18

Starbucks Corp. v. Heller,


No. CV 1401383 MMM (MRWx), 2014 WL 6685662, at *9 (C.D.Cal. Nov.
26, 2014) ..................................................................................................................................20

Stone Creek, Inc. v. Omnia Italian Design, Inc.,


862 F.3d 1131 (9th Cir. 2017) .......................................................................................8, 13, 16

Stork Rest. v. Sahati,


166 F.2d 348 (9th Cir. 1948) ...................................................................................................12

Suisman, Shapiro, Wool, Brennan, Gray, & Greenberg, P.C. v. Suisman,


No. 3:04-CV-745 (JCH), 2006 WL 387289 (D. Conn. Feb. 15, 2006) ...................................17

Sunquest Info. Sys., Inc. v. Park City Solutions, Inc.,


130 F. Supp. 2d 680 (W.D. Pa. 2000) ......................................................................................19

TravisMathew, LLC v. Leisure Society Unlimited, LLC,


No. SACV 12-213-JST, 2012 WL 1463548 (C.D. Cal. April 26, 2012).....................18, 20, 21

Warner Bros. Entmt v. Glob. Asylum, Inc.,


No. CV 129547 PSG CWX, 2012 WL 6951315 (C.D.Cal. Dec. 10, 2012),
affd sub nom. Warner Bros. Entmt, Inc. v. Glob. Asylum, Inc., 544 Fed.
Appx. 683 (9th Cir. 2013) ......................................................................................................20

Winter v. Natural Res. Def. Council, Inc.,


555 U.S. 7 (2008) .................................................................................................................8, 19

PAGE v - TABLE OF CONTENTS AND AUTHORITIES

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 7 of 28

Statutes

15 U.S.C. 1125(1)(a).....................................................................................................................9

Other Authorities

Fed. R. Civ. P. 65(a) ........................................................................................................................1

J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed.


2017) ............................................................................................................................10, 11, 13

LR 7-1(a)(1)(A) ...............................................................................................................................1

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LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 8 of 28

LOCAL RULE 7-1 CERTIFICATION

Pursuant to LR 7-1(a)(1)(A), undersigned counsel for plaintiff Heart, LLC certifies that

plaintiffs counsel conferred in good faith with counsel for defendants Heart Pizza, LLC and Micah

Camden in an effort to resolve the dispute by telephone conference. The parties were unable to

reach an agreement.

MOTION

Pursuant to Fed. R. Civ. P. 65(a), Heart, LLC (Heart) respectfully moves this Court for

a preliminary injunction against Heart Pizza, LLC (Heart Pizza) and Micah Camden

(Camden). As detailed in the supporting memorandum that follows, Heart Pizza and Camden

have willfully and intentionally used Hearts trademark as the name of their competing business.

Heart is entitled to a preliminary injunction because Heart has established, for the reasons

set forth in the supporting memorandum below that: (1) it is likely to succeed on the merits of its

trademark claims; (2) it is suffering irreparable harm to its goodwill and reputation and will

continue to suffer irreparable harm absent injunctive relief; (3) the balance of hardships tips

sharply in Hearts favor; and (4) a preliminary injunction protects consumers from confusion

serves the public interest.

Heart, therefore, respectfully moves the Court to issue an order preliminarily restraining

Heart Pizza and Camden from using the HEART trademark or any mark, logo or designation that

is confusingly similar to HEART in connection with their restaurants.

This Motion is supported by the following memorandum, as well as the concurrently filed

Declarations of Parna A. Mehrbani, Wille Yli-Luoma, and Rebekah Yli-Luoma.

MEMORANDUM

I. INTRODUCTION

This is a clear case of knowing and intentional trademark infringement. Heart has operated

two cafs and a coffee roasting business in Portland for over seven years under the trademark

HEART. In late February 2017, defendant Camden, a long-time customer of Heart, opened up his

PAGE 1 - MOTION FOR PRELIMINARY INJUNCTION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 9 of 28

own restaurant under the name Heart Pizza a mere block and a half (.1 mile) away from one of

Hearts cafs. Camden owns and operates that business as defendant Heart Pizza. Since the

opening of that initial restaurant, Heart Pizza has quickly planted two more restaurants in the

Portland area purportedly with plans to open many more in the near future. That defendants knew

they were acting unlawfully and with the intent to usurp Hearts goodwill as evidenced by the fact

that Camden falsely represented to third parties that he had permission from Heart to use the same

name, when, in fact, he had no such permission.

Heart has received numerous inquiries indicating that a significant number of its customers

are confused and associate defendants restaurant with Heart. Thus, because of this evidence of

actual confusion, Heart will be able to establish a likelihood of confusionthe touchstone test

for trademark infringement. Further, every relevant factor supports a finding that defendants have

created a likelihood of confusion among an appreciable number of Hearts customers and potential

customers. The continued erosion of Hearts goodwill will irreparably harm Heart and thus

supports entry of a preliminary injunction.

II. FACTUAL BACKGROUND

A. Heart and Its Business.

The origins of Heart date to 2008, when Wille Yli-Luoma (Yli-Luoma) started roasting

coffee beans in his own home. On October 20, 2009, Yli-Luoma opened up doors to his business

under the HEART mark. (Declaration of Wille Yli-Luoma (W. Yli-Luoma Decl.), filed

concurrently herewith 2.) Since that time, Heart has expanded to 45 employees and has operated

two cafs in Portland in addition to its business of sourcing, roasting, and selling coffee as well as

a retail business selling its own coffee products, coffee brewing equipment, a variety of dishware,

shirts, hats, bags and gift items all under the trademark HEART. (Id. at 2.) After its first caf

located at Northeast 22nd Avenue and East Burnside in Portland, Heart opened its second shop in

2013 on Southwest 12th Avenue and Alder. Heart is scheduled to open a third caf in Southeast

Portland by the end of this summer. (Id. at 4.) Hearts cafs serve not only its own specialty

PAGE 2 - MOTION FOR PRELIMINARY INJUNCTION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 10 of 28

coffee drinks, but also a variety of food items, served all-day. With the Southeast Portland caf,

Heart will introduce significantly more food items to its menu, a change that it plans to incorporate

into its already existing cafs as well. (Id. at 5.) Plans are also underway to move the Southwest

12th Avenue location a block away to a much larger space to accommodate Hearts significant

customer growth. Heart plans this expansion for spring or summer 2018. (Id. at 6.) Given the

success and positive customer buzz, Heart has plans to further expand in the future, including

short-range plans to open in Seattle. Heart has already received offers to open cafs in Seattle as

well as other locations. (Id. at 7.)

In addition to its caf business, Heart continues to grow its roasting business. Heart has

become very well known within the coffee industry because of the consistency and quality of the

raw material (coffee beans) it buys. Heart competes with all roasters worldwide to purchase the

best possible green coffee. Only a select few roasters in North America have access to the same

lots of ultra-premium green coffee that Heart purchases. (Id. at 8.)

Heart owns and has continuously used the HEART trademark since 2009. During its years

of use, Heart has expended considerable time, effort, and expense in the advertisement and

promotion of its products and services under the HEART trademark. (Id. at 9.) Heart has

successfully capitalized on social media platforms and word of mouth advertising to create

significant buzz related to its cafs and products. In January 2016, Heart was awarded a

Sprudgie award by the Sprudge Media Network (recognized as the largest coffee news coverage

in the industry), recognizing Heart as the best in coffee in the world. The award was based on

public voting by Sprudge readers. (Id. at 13; Ex. 4.) In 2013, Heart was named the fifth best

coffee roaster in the country by Thrillist.com, a significant, New York-based online media brand

covering the food, drink, travel, and entertainment industries. (Id. at 10; Ex. 1.) In July 2014,

BuzzFeed, a popular New York-based Internet media company, named Heart as the first of 25

Coffee Shops Around The World You Have to See Before You Die. (Id. at 12; Ex. 3.) In

January 2017, TransWorld SNOWboarding magazine also featured Heart as part of how Yli-

PAGE 3 - MOTION FOR PRELIMINARY INJUNCTION

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601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 11 of 28

Luoma switched careers, previously working as a professional snowboarder to one of the best

known coffee roasters in the world. (Id. at 14; Ex. 5.) Heart was also named a Good Food award

winner as one of the best coffee roasters nationally in 2013. (Id. at 11; Ex. 2.)

B. Camden, A Long-Time Customer of Heart, Establishes His Own Business, Heart


Pizza, Literally Around the Corner From Hearts Downtown Caf.
The founder and owner of defendant Heart Pizza, Camden, was a frequent, near daily,

customer of Hearts caf located at Southwest 12th Avenue and Alder in downtown Portland. In

fact, Camden came into Heart almost daily from about January to March 2017. (Id. at 18.)

Camden is an owner and co-founder of Blue Star Donuts, located at SW 13th Avenue and

Washington, a block away from Hearts caf. (Id. at 16; Declaration of Parna A. Mehrbani

(Mehrbani Decl.) 2; Ex. 1.) Customers frequently visit both Blue Star Donuts and Heart,

frequently commenting to Hearts employees on the combination of Blue Stars donuts with

Hearts coffee. (W. Yli-Luoma Decl. 16, Ex. 6.) Blue Star Donuts even contacted Heart in 2015,

requesting that Heart create a unique coffee blend for Blue Star. Heart declined this collaboration.

(Id. at 17.)

In about late February, 2017, Camden opened another business only a block and a half

from Hearts Southwest 12th Avenue location, boldly naming it Heart Pizza. (Id. at 17.) Similar

to Hearts own caf, Heart Pizza is a small space with only a few tables with a focus on take-away

orders. Heart Pizzas logo used a black and white block-letter style font similar to the font used

by Heart:

PAGE 4 - MOTION FOR PRELIMINARY INJUNCTION

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601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 12 of 28

(Id. at 20; Mehrbani Decl. 3; Ex. 2.) Heart uses the above font in both white on black (as

depicted above), as well as black on white, for example:

(W. Yli-Luoma Decl. 3; see also e.g. Ex. 1 at p. 2, Ex. 3, Ex. 4, Ex. 5 at pp. 3 and 5, Ex. 6 at

pp. 3, 4 and 9.)

C. Defendants Intentionally Sought to Usurp Hearts Goodwill.

That defendants willfully misappropriated Hearts goodwill is not only evidenced by the

fact that Camden was a frequent customer of Heart and the similarity of their logos, but also

because Camden falsely represented to third parties that he had permission from Heart to use the

PAGE 5 - MOTION FOR PRELIMINARY INJUNCTION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 13 of 28

same name, knowing he had not received any such permission. Camden and/or Heart Pizza

retained an independent website developer to build defendants website. That developer was

familiar with Hearts business because he had previously assisted Yli-Luoma in developing

Hearts website. (Id. at 21.) When the developer learned that Camden intended to call his new

business Heart Pizza, the developer pointed out to Camden that there was already an existing,

nearby caf doing business under the name HEART. (Id. at 21.) In response, and as reflected

in text messages, Camden informed the developer that Yli-Luoma and Heart had granted Heart

Pizza permission to use the HEART mark. That statement was and is false. The developer

presented this information to Yli-Luoma in April 2017. (Id. at 22-23; Ex. 7.) After Yli-Luoma

clarified that he had not given Camden permission to use his trademark, the developer confronted

Camden and was promptly told by Camden to f off. (Id. at 23-24.)

D. Defendants Actions Have Already Caused Numerous Instances of Actual Confusion.

Camdens and Heart Pizzas unauthorized use of the identical mark for identical restaurant

services marketed to the same clientele through the same channels in such propinquity to Hearts

own business has caused actual confusion causing consumers to mistakenly believe that Heart

Pizza is sponsored by, associated with, or affiliated with Heart.

This actual confusion exists and is ongoing. Heart has received numerous inquiries clearly

indicating that a significant number of its customers are confused and associate defendants

restaurant with Heart. Heart employees have regularly received inquiries from customers who

clearly were confused and thought that defendants business was affiliated with Heart. After it

became clear that this confusion was significant and frequently recurring, some of Hearts

employees began to log some of these occasions where customers were confused. (Id. at 25.)

For example, on April 15, 2017, a customer inquired are you any relation to the pizza place I

noticed right around the corner? On April 20, a customer asked do you guys have a pizza spot?

On May 1, a customer asked do you guys do pizza by the slice? On May 11, a customer asked

are you affiliated with the Heart Pizza people? Similarly, on May 21, a customer asked are you

PAGE 6 - MOTION FOR PRELIMINARY INJUNCTION

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601 SW SECOND AVENUE, SUITE 2100
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503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 14 of 28

affiliated with Heart Pizza? (Id. at 26; Ex. 8.) On June 19, 2017, a representative of the sign

company with whom Heart works, asked if Heart was affiliated with the pizza business.

(Declaration of Rebekah Yli-Luoma (R. Yli-Luoma Decl.) 2.) On June 24, 2017, two people

asked Rebekah Yli-Luoma, another member of Heart, noting that they had seen a pizza box with

the HEART mark on it, whether Heart was affiliated with defendants business. Also, defendants

customers have carried pizza boxes with defendants logo on it into other businesses. When asked

where they bought it, those customers said they got it at Heart. These customers had assumed

defendants business was affiliated with Heart. (Id. at 3.)

Customers looking for Heart in a simple Google search are also likely to be confused. As

depicted below, when a search is done on Google asking for Heart near me while in downtown

Portland, both Heart and defendants businesses appear. (Mehrbani Decl. 4; Ex. 3.)

PAGE 7 - MOTION FOR PRELIMINARY INJUNCTION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 15 of 28

E. The Harm Caused by Defendants Actions is Exacerbated by the Rapid Expansion of


Heart Pizza and Camdens History of Operating Similar Businesses.
Since opening up the original Heart Pizza on February 24, 2017, defendants have quickly

opened up two other restaurants under the same name. (Id. at 7; Ex. 6.) Media references

indicate that defendants intend significant future growth. (Id. at 5-6; Exs. 4 and 5.) Such growth

is consistent with Camdens past restaurant businesses he has established, including Little Big

Burger, which grew exponentially only to be sold to a national chain. (Id. at 8; Ex. 7.)

III. HEART IS ENTITLED TO AN INJUNCTION


PROHIBITING DEFENDANTS FROM USING THE
HEART MARK IN CONNECTION WITH THEIR RESTAURANTS
A plaintiff is entitled to a preliminary injunction in a trademark case when it demonstrates:

(1) a likelihood of success on the merits; (2) a likelihood of irreparable harm if preliminary relief

is not granted; (3) that the balance of equities tips in its favor, and (4) that a preliminary injunction

is in the public interest. Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d

1137, 1144 (9th Cir. 2011) (citing Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008)).

Hearts case is likely to succeed on the merits resulting in a finding of infringement by

defendants. As the Ninth Circuit has noted, [t]wo particularly probative factors [in the

infringement analysis] are the similarity of the marks and the proximity of the goods. Stone

Creek, Inc. v. Omnia Italian Design, Inc., 862 F.3d 1131, 1136 (9th Cir. 2017). In this case, the

defendants infringing use is substantively identical to Hearts own mark, the services are the same,

and the use is only a block and a half away from Hearts downtown caf. Further, both the evidence

of actual confusion as well as defendants intent to deceive customers makes defendants liability

clear. See Id. at 1137 (evidence of actual confusion is particularly potent and choosing a

designation with knowledge that it is anothers trademark permits a presumption of intent to

deceive.). Moreover, Heart will be irreparably harmed if defendants are not enjoined, as the

significant and consistent confusion of customers and the rapid expansion of defendants business

threatens to debilitate the reputation and goodwill Heart has developed in its own mark. Finally,

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601 SW SECOND AVENUE, SUITE 2100
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503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 16 of 28

this district has recognized that the issuance of a preliminary injunction to prevent trademark

infringement is, as a matter of law, in the public interest.

A. Heart Is Likely to Prevail on the Merits.


Section 43 of the Lanham Act prohibits a defendant from using in commerce any word,

term, name, symbol, or device, or any combination thereof in a manner that is likely to cause

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such

person with another person, or as to the origin, sponsorship, or approval of his or her goods,

services, or commercial activities by another person[.] 15 U.S.C. 1125(1)(a). To prevail on a

trademark infringement claim, Heart need only prove that: (1) it has a protectable ownership

interest in the HEART mark; and (2) defendants use of Heart Pizza creates a likelihood of

consumer confusion. Dept of Parks and Recreation for the State of California v. Bazaar Del

Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006).1

1. Heart owns the protectable HEART mark. It is indisputable that Heart owns

valid rights in the HEART mark and that mark is protectable. Heart has used the HEART mark in

interstate commerce in the sales of coffee beans since 2010, wholesale and retail store services

since 2009, and coffee roasting and processing since 2010. Here in Oregon, Heart has used the

HEART mark on caf and restaurant services since at least as early as October 20, 2009. (W. Yli-

Luoma Decl. 2.) Heart owns an Oregon state trademark registration for the HEART mark, Reg.

No. 46513. (Complaint, ECF No. 1, Ex. 3.) Heart also owns two pending applications in the U.S.

Patent and Trademark Office, Serial Nos. 87/414,220 and 87/414,233. (Id. at Exs. 1-2.)

2. Defendants use of Heart Pizza creates a likelihood of consumer confusion.

The Ninth Circuit has identified eight factors that may be considered in determining whether a

likelihood of confusion exists: 1) strength of the mark; 2) proximity of the goods; 3) similarity

of the marks; 4) evidence of actual confusion; 5) marketing channels used; 6) type of goods and

1
The standards for establishing trademark infringement and unfair competition are virtually
identicalboth turn on the same likelihood of confusion analysis. E. & J. Gallo Winery v. Gallo
Cattle Co., 967 F.2d 1280, 1288, n.2 (9th Cir. 1992).
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the degree of care likely to be exercised by the purchaser; 7) defendants intent in selecting the

mark; and 8) likelihood of expansion of the product lines. AMF Inc. v. Sleekcraft Boats, 599 F.2d

341, 348-49 (9th Cir. 1979). This list of factors (commonly referred to as the Sleekcraft factors)

is neither exhaustive nor exclusive, and it is not necessary to establish that all (or even a majority

of) the factors favor the plaintiff; all that need be shown is that, on the whole, the evidence favors

a finding that confusion is likely. E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290-

91 (9th Cir. 1992).

Although it is not necessary for a plaintiff to establish that all (or even a majority of) the

factors relevant to the likelihood of confusion analysis support such a finding (see id. at 1290-91),

here every such factor does. Most tellingly, not only is there evidence of likelihood of confusion,

as explained below, this presents the rare case where much of the likelihood of confusion analysis

can be dispensed with because of the substantial evidence of actual confusion. Further,

defendants bad intent here is key. Defendants not only knew of Hearts trademark rights, they

felt compelled to misrepresent that they had authorization to use the HEART mark when they had

no such permission.

Further many different types of likely confusion, including initial interest confusion, can

give rise to trademark infringement. Playboy Enters. v. Netscape Communications Corp., 354

F.3d 1020, 1025 (9th Cir. 2004). Thus, infringement occurs if the average purchaser would be

likely to believe that the infringers product has some connection with the trademark owner.
Grey v. Campbell Soup Co., 650 F. Supp. 1166, 1173 (C.D. Cal. 1986), affd, 830 F.2d 197 (9th

Cir. 1987) (citations omitted, emphasis added). Such likely confusion may be in the form of

customers mistakenly believing that the junior trademark users services originate from, are

sponsored or endorsed by, or otherwise affiliated with the senior trademark user. J. Thomas

McCarthy, McCarthy on Trademarks and Unfair Competition, 23:10 (4th ed. 2017) (hereinafter

McCarthy).

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Finally, a likelihood of confusion need not exist at the time a consumer makes a decision

to purchase the allegedly infringing product; likely confusion created before a purchase is

actionable even though no actual sale is finally completed as a result of the confusion. Dr. Seuss

Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997); see also Brookfield

Commcns, Inc. v. W. Coast Entmt Corp., 174 F.3d 1036, 1064 (9th Cir. 1999) (when consumer

mistakenly reaches defendants website believing it is affiliated with plaintiffs similarly named

website, plaintiffs trademark is infringed even if consumer is fully aware of the mistake before

buying goods from defendants site); see also, Academy of Motion Picture Arts and Sciences v.

Creative House Promotions, Inc., 944 F.2d 1446, 1455 (9th Cir. 1991) (likelihood of post-sale

confusion and/or confusion on the part of non-purchasers is actionable). Thus, if customers who

encounter the defendants restaurant name are even temporarily likely to believe defendants goods

or services have some association with Heart, trademark infringement has occurred. In this case,

as explained below, every relevant Sleekcraft factor favors a finding that the defendants mark is

likely to confuse consumers.

a. The HEART mark is strong. The strength of a mark is evaluated in terms

of (1) its conceptual strength and (2) its commercial strength. GoTo.com, Inc. v. Walt Disney Co.,

202 F.3d 1199, 1207 (9th Cir. 2000). Conceptual strength refers to where a term falls on the

spectrum of trademarksthat is, whether the term is generic, descriptive, suggestive, arbitrary, or

fanciful. See, e.g. McCarthy 11:1-11:4; 11:83. Suggestive, arbitrary, and fanciful words used

as marks are inherently distinctive. Id. at 11:4. An arbitrary mark is a word that is common in

the language, but is arbitrarily applied to goods or services that does not even suggest some aspect

of the goods and services. Id. Apple used on electronic devices and computers is an arbitrary

mark. Heart used on coffee and cafs is likewise arbitrary. Because the term Heart as applied

to coffee is arbitrary, it is a conceptually strong mark.

The second step in the analysis of strength is the strength of the mark in the marketplace.

The commercial strength of a mark may be evidenced by substantial use and promotion, such that

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the mark is easily recognizable by consumers. See, e.g., Stork Rest. v. Sahati, 166 F.2d 348, 355

(9th Cir. 1948) (finding The Stork Club strong based, in part, on the extensive use and promotion

of the mark by its owner).

The HEART mark is also commercially strong. During its years of use, Heart has

successfully capitalized on social media platforms and word of mouth advertising to create

significant buzz related to its cafs and products all featuring the HEART mark. As described

in detail in the facts section, numerous national publications have recognized Heart in various ways

over the course of many years, including accolades as the best coffee in the world (See W.

Yli Luoma Decl. 10-14; Exs. 1-5.)

b. The proximity of the goods weighs heavily in Hearts favor. The

proximity of the goods factor addresses the extent to which the goods or services sold under the

parties respective marks are closely related to one another or are used in complementary ways.

E. & J. Gallo, 967 F.2d at 1291. Courts measure the proximity of goods by seeing if the products

are: (1) complementary; (2) sold to the same class of purchasers; and (3) similar in use and

function. See Network Automation, 638 F.3d at 1150. Where the products or services at issue

compete directly, the likelihood of confusion is increased. See, e.g., Nautilus Group, Inc. v. ICON

Health and Fitness, Inc., 372 F.3d 1330, 1345 (Fed. Cir. 2004) (applying Ninth Circuit precedent

and upholding preliminary injunction against use of CROSSBOW on home exercise resistance

training equipment where senior trademark owner used BOWFLEX on directly competing goods).

Defendants use is proximate to that of Hearts own use of the HEART mark both in terms

of physical presence as well as the types of products and services provided. First, defendants

opened their first location a mere block and a half away from one of Hearts own location. (W. Yli-

Luoma Decl. 19.) Second, both defendants business and Hearts business are in the restaurant

industry. That one sells primarily pizza and the other primarily coffee makes no difference. As

detailed above, the parties respective restaurants share customers, many of whom have been

confused into believing they are affiliated with one another. (See id. at 16, 25-26; R. Yli-Luoma

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Decl. 2-3.) Such confusion is inevitable given that the respective parties downtown locations

are only 1.5 blocks away from one another and significantly overlap in the hours they are open for

business.

That Defendants operate a pizza restaurant and Heart a caf is not relevant, particularly

where there are less than two blocks separating the respective businesses downtown locations.

See, e.g., Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1535 (4th Cir. 1984) (finding sit-down

pizzeria, PIZZERIA UNO, provided similar services to a fast food taco restaurant, TACO UNO,

because both parties operate restaurants and are in food service).

c. Defendants Mark is not only similar, it is, in important aspects,

identical to the HEART mark. Courts assess the similarity of marks in terms of their sight [i.e.,

appearance], sound, and meaning. Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1392 (9th

Cir. 1993). Similarity in any one of these aspects may cause likelihood of confusion. Beer Nuts,

Inc. v. Clover Club Foods Co., 805 F.2d 920, 925 (10th Cir. 1986). Further, identical marks

paired with identical goods can be case-dispositive. Stone Creek, 862 F.3d at 1136. As noted by

the Ninth Circuit, cases involving identical marks on competitive goods are rare and hardly ever

find their way into the appellate reports because liability is open and shut. Id. at 1136-37 (citing

McCarthy 23:20.)

This is such an open and shut case. Heart Pizza incorporates, in its entirety, the

HEART mark.2 Also, defendants operate a competing business in the restaurant industryin fact

defendants operate a caf only a block and a half away from Hearts own business.

d. There is significant evidence of actual confusion. While proof of actual

confusion is not necessary, evidence that actual confusion exists is particularly potent. Stone

2
The descriptor pizza has little, if any, tendency to differentiate the marks as a whole from one
another. The word pizza is merely descriptive of the food sold by defendant. Because
consumers are likely to (and indeed have) affiliated defendants business with that of Heart, it is
clear that the term pizza does nothing to distinguish defendants restaurant and only suggests
that perhaps Heart has ventured into different food categories in addition to its primary coffee
business.
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Creek, 862 F.3d at 1137; see also Academy of Motion Picture, 944 F.2d at 1456 (quoting

Sleekcraft, 599 F.2d at 352) (evidence of actual confusion is persuasive proof that future

confusion is likely); Network Automation, 638 F.3d at 1151 (quoting Playboy Enters., Inc. v.

Netscape Commcns Corp., 354 F.3d 1020, 1026 (9th Cir. 2004)) (evidence of actual confusion

provides strong support for the likelihood of confusion). In addition, a showing of actual

confusion constitutes persuasive proof that future confusion is likely. Network Automation, 638

F.3d at 1151. As detailed above, numerous customers have been actually confused and have

expressed this confusion to Heart employees.

e. Defendants use the same marketing channels as Heart. When a plaintiff

and defendant market their services through the same channels, the likelihood of consumer

confusion is increased. Sleekcraft, 599 F.2d at 353. This is particularly so where the services are

marketed through a niche marketplace, such as on social media sites. See Quia Corp. v. Mattel,

Inc., No. C 10-1902 JF (HRL), 2011 WL 2749576, *4 (N.D. Cal. July 14, 2011).

Heart devotes significant resources relative to its respective size to advertising and

promotion via social media platforms such as Twitter, Facebook, and YouTube and it is believed

that defendants do as well. This is exactly the kind of overlapping niche marketing that makes

confusion likely. See Quia, 2011 WL 2749576. As part of its reliance on social media, Heart is

heavily dependent on word of mouth promotion. As a result, the fact that one of the defendants

restaurants is only one and a half blocks from Hearts own caf means that the word of mouth

advertising between patrons and potential patrons are taking place amongst the same, relatively

small group of people.

f. The type of goods sold by both defendants and Heart, and the degree

of care likely to be exercised by the purchaser favors Heart. It is well settled that consumers

pay less attention when buying lower priced items than when buying more expensive items.

Brookfield, 174 F.3d at 1060; see, e.g., Seven Elephants Distrib. Corp. v. Earthquake Sound Corp.,

No. CV 06 4761 GAF (RZX), 2007 WL 977391 *1, *4 (C.D. Cal. Jan. 11, 2007) (issuing

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preliminary injunction; holding that parties car stereo amplifiers priced at between $100 and $300,

and selling for as little as $45, respectively, were relatively inexpensive products making

consumer confusion likely). This is particularly true where, as here, the goods and services are

both inexpensive and in competitive proximity. Hasbro, Inc. v. Lanard Toys, Ltd., 858 F.2d 70,

79 (2d Cir. 1988).

In the context of the restaurant industry, fast-food restaurants are considered impulse

purchases, supporting a finding of a likelihood of confusion. See Frischs Restaurants, Inc. v.

Elbys Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982). In Frischs, plaintiffa

network of family restaurants who own the mark Big Boymoved for a preliminary injunction,

requesting that defendants, a competing network of restaurants, be enjoined from using the Big

Boy mark. The United States District Court for the Southern District of Ohio granted a

preliminary injunction. On appeal, the Sixth Circuit affirmed, holding that the casual degree of

purchaser care in selecting fast-food restaurants supports a conclusion of likelihood of confusion.

Frischs Restaurants, 670 F.2d at 648. Notably, the court reasoned that the products promoted by

defendant do not trigger intensive consumer research, making it unlikely that consumers will

discover their mistake. Id.

Further, the fact that defendants restaurant focuses on pizza and Heart primarily focuses

on coffee does not alter the analysis. See, e.g., ChiChis Inc. v. Chi-Mex., Inc. 568 F. Supp. 731

(W.D. Pa. 1983). In ChiChis, plaintiff used the CHICHIS mark in connection with a family-

owned Italian-American restaurant and the defendant used CHI-CHIS for its franchised family-

style Mexican restaurant. The court was not impressed by the distinction drawn by the defendant

between Italian food and Mexican food, and found that the long-time, regionally well-known

Italian restaurant was entitled to protection from a rapidly expanding chain of casual Mexican

eateries. The court found a likelihood of confusion and ruled in favor of Plaintiff. Id.

g. Defendants intended to usurp the goodwill associated with the HEART

mark. Although intent to confuse is not required to prove trademark infringement, evidence of

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such intent is a factor that favors a finding that confusion is likely. When the alleged infringer

knowingly adopts a mark similar to anothers, reviewing courts presume that the defendant can

accomplish his purpose: that is, that the public will be deceived. Sleekcraft, 599 F.2d at 354; see

also, Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 157-58 (9th Cir. 1963)

(where defendant knew of plaintiffs mark and deliberately adopted a similar mark, the only

possible purpose could have been to capitalize upon the popularity of the name chosen). Thus, a

defendant choosing a designation with knowledge that it is anothers trademark permits a

presumption of intent to deceive. Stone Creek, 862 F.3d at 1139. Finally, such deceptive intent

is entitled to great weight in the ultimate determination of likelihood of confusion. Id. (quoting

Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1048 (9th Cir. 1998).)

Here, the facts strongly indicate malintent. Camden was a frequent customer of Heart prior

to the opening of defendants first location (W. Yli-Luoma Decl. 18), and thus was

knowledgeable about Hearts brand, its services, its popularity, and its valuable customer base.

Camden had previously asked Heart to create a collaboration coffee blend, which Heart declined.

(Id. at 17.) Camden also misrepresented to a third party that defendants had permission to use

the HEART mark (id. at 22), demonstrating knowledge that he knew such permission would be

necessary. Defendants opened their first location a block and a half away from Heart, apparently

seeking to divert customers looking for Hearts location in the neighborhood.

h. Expansion of the product lines favors a finding that confusion is

likely. In light of the fact that the parties services directly compete, there is no need to consider

whether one party will expand into the market of the other. CytoSport, Inc. v. Vital Pharms., Inc.,

617 F. Supp. 2d 1051, 1076 (E.D. Cal. 2009) (finding this factor neutral where parties sold directly

competing products). If, however, the Court were to conclude that the parties do not directly

compete, this factor would favor Heart. There is a clear risk that defendants, given Camdens

history of rapidly building local franchises and, at least in one case selling them to national

investors, will quickly grow defendants chain of restaurants thus flooding the market with their

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infringing mark and correspondingly diluting the strength of the HEART mark and limiting Hearts

ability to grow its own brand.

3. The fact that defendants knowingly opened their restaurant only a block and

a half from Heart weighs heavily in Hearts favor. While geographic proximity of the marks

at issue is not within the enumerated Sleekcraft factors, courts recognize that geographic

proximity is relevant to consumer confusion. Idaho Golf Partners, Inc. v. TimberStone Mgmt.,

LLC., No. 1:14-CV-00233-BLW, 2016 WL 5340302, at *4 (D. Idaho Sept. 21, 2016). Further,

in the restaurant industry, especially where individual restaurants rather than chains are

competing, physical separation seems particularly significant to the inquiry into consumer

confusion. Brennans, Inc. v. Brennans Restaurant, L.L.C., 360 F.3d 125, 134 (2nd Cir. 2004).

See also, Community of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus

Christs Church, 634 F.3d 1005, 1010 (8th Cir. 2011); Mastros Restaurants LLC v. Dominick

Group LLC, No. CV 11-1996-PHX-PGR, 2012 WL 2091535, at *7 (D. Ariz. June 11, 2012). See

also Ewe Group, Inc. v. Bread Store, LLC, 54 F. Supp. 3d 1343, 1351 (N.D. Ga. 2014); Suisman,

Shapiro, Wool, Brennan, Gray, & Greenberg, P.C. v. Suisman, No. 3:04-CV-745 (JCH), 2006 WL

387289, (D. Conn. Feb. 15, 2006). In Mastros, plaintiff, an owner of a steakhouse in Scottsdale,

Arizona, filed a complaint in the United States District Court for the District of Arizona, alleging

that defendants competing restaurant infringed on their mark. In response, defendants filed a

motion to dismiss, arguing that none of the Sleekcraft factors favored the plaintiff. The trial court

denied the defendants motion, noting thatwhile some of the factors weighed against a finding

of confusionthe parties geographical proximity favored plaintiff. Mastros Restaurants, 2012

WL 2091535 at *7. Since the restaurants of both plaintiff and defendant were located in

Scottsdale, the court found the restaurants to be geographically proximate, a fact that favored

plaintiff when assessing the possibility of customer confusion. Id.

Here, the propinquity of the businesses heavily favors a finding of a likelihood of

confusion. Defendants intentionally opened their flagship restaurant a mere block and a half away

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from Hearts downtown caf. See Solutech, Inc. v. Solutech Consulting Servs., Inc., 153 F. Supp.

2d 1082, 1088 (E.D. Mo. 2000) ([W]hen identical marks are used in the same geographic area for

the same class of goods or services, likelihood of confusion is presumed.).

B. The Threatened Injury To Heart Is Irreparable And Justifies Preliminary Injunctive


Relief.
Once a plaintiff has demonstrated a likelihood of success on the merits of its claims, the

next inquiry is whether plaintiff will likely be irreparably harmed if an injunction does not issue.

Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009).

In trademark cases, courts have found irreparable harm in the loss of control of a business

reputation, a loss of trade and loss of goodwill. CytoSport, 617 F. Supp. 2d at 1080. As the court

explained:

Trademarks serve as the identity of their owners and in them resides


the reputation and goodwill of their owners. Thus, if another person
infringes the marks, that person borrows the owners reputation,
whose quality no longer lies within the owners control. * * *
Potential damage to reputation constitutes irreparable injury for the
purpose of granting a preliminary injunction in a trademark case.

617 F. Supp. 2d at 1080-81 (citation omitted) (holding that likelihood of confusion among

consumers threatened to cause plaintiff substantial and irreparable harm, which supported

preliminary injunction); see also Century 21 Real Estate LLC v. All Profl Realty, Inc., Nos. CIV.

2:10-2751, CIV. 2:10-02846, 2011 WL 221651, *1,12-13 (E.D. Cal. Jan. 24, 2011). Where there

exists evidence of actual confusion, the plaintiff has met its burden of proving the loss of control

of its reputation and goodwill necessary to support a finding of irreparable harm. TravisMathew,

LLC v. Leisure Society Unlimited, LLC, No. SACV 12-213-JST (MLGx), 2012 WL 1463548, *4

(C.D. Cal. April 26, 2012) (finding irreparable harm existed based solely on evidence of actual

confusion) (emphasis added); Mrs. U.S. Natl Pageant, Inc. v. Miss U.S. Org., LLC, No. 12-CV-

6137L, 2012 WL 2870218, *15 (W.D.N.Y. July 13, 2012) (same).

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The overwhelming evidence of actual confusion based on defendants use of the HEART

mark supports a finding that Heart faces exactly the same injury that courts have determined to

constitute irreparable harmconfusion of consumers and loss of Hearts ability to control the

reputation and public perception of its trademark. Thus, Heart has more than satisfied the

irreparable injury requirement.

As noted above, defendants have a well-known history in the Portland Metropolitan area

of quickly building up restaurant chains, and in one case, selling it to national investors. (Mehrbani

Decl. 5-8; Exs. 4-7.) In only five short months, defendants have already opened three Heart

Pizza restaurants. In addition, their plans for future expansion are made clear in early interviews

(see, e.g. https://pdx.eater.com/2017/2/21/14685972/heart-pizza-opening-date-photos#heart-

pizza, (the first of what could be many Heart Pizza locations). (Id. at 6; Ex. 5.) Such rapid

expansion threatens to engulf and render irrelevant the HEART trademark and cause it to forever

lose its distinctive and source-identifying quality. In contrast, if an injunction issues, defendants

hardship would consist only of discontinuing use of the infringing name pending trial.

Defendants would still be free to conduct exactly the same business it currently operatesselling

exactly the same goods through exactly the same channels to exactly the same customers. As

defendants have no legitimate interest in infringing Hearts trademarks, any harm resulting from

a preliminary injunction, including economic harm, must be discounted. CytoSport, 617 F. Supp.

2d at 1081; Sunquest Info. Sys., Inc. v. Park City Solutions, Inc., 130 F. Supp. 2d 680, 699 (W.D.

Pa. 2000) (Park City sought to closely align itself with Sunquest, including with Sunquests

logo[;] Park City cannot now claim that it would suffer harm by being forced to right the wrong

that it committed.)

C. The Balance of Equities Tips in Hearts Favor.

In considering whether injunctive relief is appropriate, courts must balance the competing

claims of injury and must consider the effect on each party of the granting or withholding of the

requested relief. Winter, 555 U.S. at 24 (quoting Amoco Production Company v. Village of

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Gambell, Alaska, 480 U.S. 531, 542 (1987)); see also Intl Jensen, Inc. v. Metrosound U.S.A., Inc.,

4 F.3d 819, 827 (9th Cir. 1993) (In evaluating the balance of hardships a court must consider the

impact granting or denying a motion for a preliminary injunction will have on the respective

enterprises.).)

The balance of the equities favors Heart. Heart has invested significant time, capital, and

human resources in building its HEART brand. See Adidas Am., Inc. v. Skechers USA, Inc., 149

F. Supp. 3d 1222, 1250 (D. Or. 2016) (finding these factors dispositive in weighing the equities).

Defendants, to the contrary, are a nascent business. Changing its name at this juncture will not

result in great harm. In any event, as a knowing infringer, defendants cannot complain of any such

harm in any event. See id. (citing numerous cases).

D. A Preliminary Injunction Is in the Public Interest.

This district has noted that preventing consumer confusion is in the public interest. Adidas

Am., Inc., 149 F. Supp. 3d at 125051 (quoting Starbucks Corp. v. Heller, No. CV 1401383

MMM (MRWx), 2014 WL 6685662, at *9 (C.D.Cal. Nov. 26, 2014) (The most basic public

interest is the publics right not to be deceived or confused.).) Other courts agree. See Century

21, 2011 WL 221651 at *13 (In the trademark context, the public interest is usually the right of

the public not to be deceived or confused.); TravisMathew, 2012 WL 1463548 at *4 (the public

has an interest in protect[ing] the investment in a mark by the owner) (citations omitted); Warner

Bros. Entmt v. Glob. Asylum, Inc., No. CV 129547 PSG CWX, 2012 WL 6951315, at *23

(C.D.Cal. Dec. 10, 2012) (the most basic public interest at stake in all Lanham Act cases [is] the

interest in prevention of confusion, particularly as it affects the public interest in truth and

accuracy.), affd sub nom. Warner Bros. Entmt, Inc. v. Glob. Asylum, Inc., 544 Fed. Appx. 683

(9th Cir. 2013) (quoting Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700, 730 (3d Cir. 2004)). An

injunction that prevents consumer confusion in trademark cases, as this injunction does, serves the

public interest. Am. Rena Intl Corp. v. SisJoyce Intl Co. Ltd., 534 Fed. Appx. 633, 636 (9th

Cir. 2013) (citation omitted).

PAGE 20 - MOTION FOR PRELIMINARY INJUNCTION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200
Case 3:17-cv-01297-YY Document 8 Filed 08/23/17 Page 28 of 28

Over the last seven years, Heart has invested a significant amount of time, effort and

resources into promoting and protecting its mark. (See W. Yli-Luoma Decl. 2-15.) The use by

Heart Pizza of a confusingly similar mark undermines all of the efforts Heart has made to date,

and the resulting confusion that now exists in the marketplace in no way benefits the public.

Accordingly, where not only a likelihood of confusion exists, but actual confusion exists, the

public interest also weighs in favor of granting an injunction. CytoSport, 617 F. Supp. 2d at 1081;

TravisMathew, 2012 WL 1463548 at *4.

IV. CONCLUSION

Defendants have created not only a likelihood of confusion but also significant actual

confusion as to the relationship of their own business and Heart. Thus, Heart respectfully requests

that this Court enter a preliminary injunction pending a final determination of this action.

DATED: August 23, 2017

LANE POWELL PC

By s/Parna A. Mehrbani
Kenneth R. Davis II, OSB No. 971132
Parna A. Mehrbani, OSB No. 053235
Telephone: 503.778.2100

Attorneys for Plaintiff Heart, LLC

PAGE 21 - MOTION FOR PRELIMINARY INJUNCTION

LANE POWELL PC
601 SW SECOND AVENUE, SUITE 2100
718220.0002/7014188.10 PORTLAND, OREGON 97204-3158
503.778.2100 FAX: 503.778.2200