Heart Pizza Response

Case 3:17-cv-01297-YY Document 16 Filed 09/07/17 Page 1 of 43
Steven T. Lovett, OSB No. 910701

steve.lovett@stoel.com
Nathan C. Brunette, OSB No. 090913
nathan.brunette@stoel.com
Elliott J. Williams, OSB No. 144835
elliott.williams@stoel.com
STOEL RIVES LLP
760 SW Ninth Avenue, Suite 3000
Portland, OR 97205
Telephone: 503.224.3380
Facsimile: 503.220.2480
Attorneys for Defendants
UNITED STATES DISTRICT COURT
DISTRICT OF OREGON
PORTLAND DIVISION
HEART, LLC, an Oregon limited liability Case No.: 3:17-cv-01297-YY

company,
DEFENDANTS RESPONSE IN
Plaintiff, OPPOSITION TO PLAINTIFFS
MOTION FOR PRELIMINARY
v. INJUNCTION
HEART PIZZA, LLC, an Oregon limited REQUEST FOR ORAL ARGUMENT

liability company; and MICAH CAMDEN,
an individual residing in Oregon,
Defendants.
Page 1 - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION
94016474.3 0065473-00001
TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES ......................................................................................................... ii

I. INTRODUCTION ............................................................................................................. 1
II. ARGUMENT ..................................................................................................................... 2
A. HCR Fails to Carry Its Burden to Prove a Likelihood That It Will Suffer
Specific and Immediate Irreparable Harm Absent Entry of A Preliminary
Injunction ............................................................................................................... 3
1. HCR Cannot Rely on A Presumption of Irreparable Harm, Since
Such a Presumption Is No Longer Legally Permissible ............................ 3
2. HCR Fails to Offer Evidence That Could Establish Specific, Non-
Speculative, and Imminent Irreparable Harm ............................................ 4
3. HCRs Long Delay in Filing Suit and This Motion Undercuts Its
Conclusory Assertions of Irreparable Harm .............................................. 6
4. HCRs Assertions of Supposed Actual Confusion Cannot Establish
Irreparable Harm Without Additional Proof .............................................. 7
B. HCR Has Not Made A Clear Showing That It Is Likely to Succeed on the
Merits ..................................................................................................................... 8
1. HCR Has Not Introduced Evidence That Can Establish Actual
Marketplace Confusion .............................................................................. 8
2. Consumers Would Not Assume that Pizzerias and Specialty, High-
End Coffee Derive from a Common Source ............................................ 13
3. Viewed in the Correct Context, the Parties Marks Are Distinct,
Not Similar ............................................................................................... 16
4. HCRs HEART Mark Is Entitled to Narrow Protection .......................... 19
5. Defendants Did Not Adopt Their Mark to Trade on HCRs
Goodwill .................................................................................................. 20
6. Both Parties Customers Are Sophisticated Purchasers Who Are
Unlikely to Be Confused .......................................................................... 24
7. The Fact that Both Parties Rely on Ubiquitous Trade Channels
Does Not Suggest A Likelihood of Confusion ........................................ 26
8. As Properly Analyzed, the Expansion Factor Does Not Support
A Likelihood of Confusion Here ............................................................. 28
9. The Fact That Both Parties Happen to Have A Location in
Portlands Popular West End Neighborhood Does Not Favor A
Likelihood of Confusion .......................................................................... 29
10. On Balance, the Sleekcraft Factors Establish that HCR is Unlikely
to Prevail on the Merits ............................................................................ 30
Page i - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION

TABLE OF CONTENTS
Page
C. The Balance of Hardships Weighs Heavily Against a Preliminary

Injunction ............................................................................................................. 31
D. The Public Interest Disfavors A Preliminary Injunction ..................................... 34
III. CONCLUSION ................................................................................................................ 35
Page ii - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION

TABLE OF AUTHORITIES
Page
Cases
Adidas America, Inc. v. Skechers USA, Inc.,

149 F. Supp. 3d 1222 (D. Or. 2016) ............................................................................31, 33, 34
Alpha Indus., Inc. v. Alpha Steel Tube & Shapes, Inc.,

616 F.2d 440 (9th Cir. 1980) ...................................................................................................16
AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979) ...................................................................................8, 22, 28, 30
Amoco Prod. Co. v. Vill. of Gambell,

480 U.S. 531 (1987) .................................................................................................................31
Brennan's, Inc. v. Brennan's Rest., L.L.C.,

360 F.3d 125 (2d Cir. 2004).....................................................................................................30
Caribbean Marine Servs. Co. v. Baldridge,

844 F.2d 668 (9th Cir. 1988) .....................................................................................................4
Cohn v. Petsmart, Inc.,

281 F.3d 837 (9th Cir. 2002) .............................................................................................10, 11
Dahl v. Swift Dist., Inc.,

No. Cv 10-00551 SJO, 2010 WL 1458957 (C.D. Cal. Apr. 1, 2010) ......................................21
Danaei v. Rostam,
No. 2:16-cv-0319-RGK-JPR, 2017 WL 2719984 (C.D. Cal. Feb. 2, 2017)..............................6
Denny's, Inc. v. Kennedy Rests., L.L.C.,

No. CV-09-0741-PHX-SRB, 2009 WL 10673493 (D. Ariz. Sept. 15, 2009) .........................35
First Franklin Fin. Corp. v. Franklin First Fin., Ltd.,

356 F. Supp. 2d 1048 (N.D. Cal. 2005) ...................................................................................33
Fleischmann Distilling Corp. v. Maider Brewing Co.,

314 F.2d 149 (9th Cir. 1963) .............................................................................................21, 22
Flynt Distrib. Co. v. Harvey,

734 F.2d 1389 (9th Cir. 1984) ...................................................................................................9
Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc.,

736 F.3d 1239 (9th Cir. 2013) ......................................................................................... passim
Herbalife Int'l, Inc. v. Lumene N. Am. LLC,

No. CV 07-5040 AHM (RCX), 2007 WL 4225776 (C.D. Cal. Oct. 15, 2007) .......................25
Page iii - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION
94016474.3 0065473-00001
Page
Horos v. Locol, LLC,

No. CV148065 MWFMRWX, 2015 WL 12656946, at *8 (C.D. Cal. Feb. 11,
2015) ........................................................................................................................................26
Icebreaker Ltd. v. Gilmar S.P.A.,

911 F. Supp. 2d 1099 (D. Or. 2012) ......................................................................14, 16, 19, 30
Icon Enters. Intl, Inc. v. Am. Prods. Co.,

No. CV 04-1240 SVW, 2004 WL 5644805 (C.D. Cal. Oct. 7, 2004) .....................................10
Idaho Golf v. TimberStone Mgmt., LLC,

No. 1:14-cv-00233, 2016 WL 5340302 (D. Idaho Sept. 21, 2016) .........................................30
iFreedom Direct Corp. v. McCormick,

No. SACV 16-470-JLS(KESx), 2016 WL 9049647 (C.D. Cal. June 15, 2016),
affd, 662 F. Appx 550 (9th Cir. 2016).................................................................................4, 6
Isle of Capri Casinos, Inc. v. Flynt,

No. 2:16-cv-06148-CAS, 2016 WL 6495380 (C.D. Cal. Nov. 1, 2016) .................................17
Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery,

150 F.3d 1042 (9th Cir. 1998) .................................................................................................22
Ketab Corp. v. Mesriani Law Grp.,

No. 214CV07241RSWLMRW, 2015 WL 12655670 (C.D. Cal. Feb. 6, 2015) ......................29
Lindy Pen Co. v. Bic Pen Corp.,

725 F.2d 1240 (9th Cir. 1984) .................................................................................................17
Lopez v. Brewer,
680 F.3d 1068 (9th Cir. 2012) ...................................................................................................1
M2 Software, Inc. v. Madacy Entmt,

421 F.3d 1073 (9th Cir. 2005) ...........................................................................................22, 23
Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co.,

571 F.3d 873 (9th Cir. 2009) .....................................................................................................3
Mastros Rests. LLC v. Dominick Grp. LLC,

No. CV 11-1996-PHX-PGR, 2012 WL 2091535 (D. Ariz. June 11, 2012) ............................30
Matrix Motor Co. v. Toyota Jidosha Kabushiki,

290 F. Supp. 2d 1083 (C.D.Cal. 2003) ....................................................................................14
Page iv - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION
94016474.3 0065473-00001
Page
Miss World (UK) Ltd. v. Mrs. Am. Pageants, Inc.,

856 F.2d 1445 (9th Cir. 1988), abrogated in part on other grounds by Eclipse
Assocs. Ltd. v. Data Gen. Corp., 894 F.2d 1114 (9th Cir. 1990).......................................10, 19
Mrs. U.S. Natl Pageant, Inc. v. Miss U.S. Org., LLC,

875 F. Supp. 2d 211 (W.D.N.Y. 2012) ......................................................................................7
Murray v. Cable Natl Broad. Co.,

86 F.3d 858 (9th Cir. 1996) .....................................................................................................29
Network Automation, Inc. v. Advanced Sys. Concepts, Inc.,

638 F.3d 1137 (9th Cir. 2011) ...........................................................................................13, 27
Newport Pac. Corp. v. Moe's Sw. Grill, LLC,

No. 05-995 KI, 2006 WL 2811905 (D. Or. Sept. 28, 2006) ....................................................26
Nordstrom, Inc. v. NoMoreRack Retail Gr., Inc.,

No. C12-1853-RSM, 2013 WL 1196948 (W.D. Wash. Mar. 25, 2013)............................23, 27
Oculu, LLC v. Oculus VR, Inc.,

No. SACV 14-0196 DOC(JPRx), 2015 WL 3619204, at *13 (C.D. Cal. June
8, 2015) ..............................................................................................................................12, 13
Official Airline Guides, Inc. v. Goss,

6 F.3d 1385 (9th Cir. 1993) .....................................................................................................28
One Indus., LLC v. Jim O'Neal Distrib., Inc.,

578 F.3d 1154 (9th Cir. 2009) .....................................................................................19, 20, 22
Pedego, LLC v. All. Wholesalers, Inc.,

No. SACV 12-01106-CJC(JPRx), 2012 WL 12892900 (C.D. Cal. Sept. 14,
2012) ..........................................................................................................................................9
Pizzeria Uno Corp. v. Temple,

747 F.2d 1522 (4th Cir. 1984) .................................................................................................14
Planet Coffee Roasters, Inc. v. Hung Dam,

No. SACV 09-00571-MLG, 2010 WL 625343 (C.D. Cal. Feb. 18, 2010) .............................34
Quia Corp. v. Mattel, Inc.,

No. C 10-1902 JF (HRL), 2011 WL 2749576 (N.D. Cal. July 14, 2011) ...............................27
Rodeo Collection, Ltd. v. W. Seventh,

812 F.2d 1215 (9th Cir. 1987) ...................................................................................................4
Page v - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION
94016474.3 0065473-00001
Page
Ross v. Target Corp.,

No. CV 07-1147 ODW, 2008 WL 11336378 (C.D. Cal. July 7, 2008) ..................................10
San Miguel Pure Foods Co. v. Ramar Intl Corp.,

625 F. Appx 322 (9th Cir. 2015) (unpublished) .......................................................................6
Stone Creek Inc. v. Omnia Italian Design, Inc.,

862 F.3d 1131 (9th Cir. 2017) ...........................................................................................18, 22
Stonefire Grill, Inc. v. FGF Brands, Inc.,

987 F. Supp. 2d 1023 (C.D. Cal. 2013) .................................................................14, 15, 16, 26
Suja Life, LLC v. Pines Intl, Inc.,

No. 16CV985-GPC(WVG), 2016 WL 6157950 (S.D. Cal. Oct. 24, 2016) ................11, 17, 25
Surfvivor Media, Inc. v. Survivor Prods.,

406 F.3d 625 (9th Cir. 2005) .............................................................................................13, 29
Titaness Light Shop, LLC v. Sunlight Supply, Inc.,

585 F. Appx 390 (9th Cir. 2014) (unpublished) .......................................................................4
TPW Management, LLC v. Yelp, Inc.,

No. 16-cv-03063-YGR, 2016 WL 6216879 (N.D. Cal. Oct. 25, 2016) ..................4, 21, 23, 27
TravisMatthew, LLC v. Leisure Socy Unlimited, LLC,

No. SACV 12213JST, 2012 WL 1463548 (C.D. Cal. Apr. 16, 2012)...................................7
U.S. Philips Corp. v. KBC Bank,

590 F.3d 1091 (9th Cir. 2010) ...................................................................................................1
VBS Distrib., Inc. v. Nutrivita Labs., Inc.,

No. SACV 16-01553-CJC(DFMx), 2017 WL 2404919 (C.D. Cal. Jan. 19,
2017) ....................................................................................................................................6, 31
Wells Fargo & Co. v. ABD Ins. & Fin. Servs., Inc.,
No. C 12-3856 PJH, 2014 WL 4312021 (N.D. Cal. Aug. 28, 2014) .......................................12
Winter v. Nat. Res. Def. Council,

555 U.S. 7 (2008) .................................................................................................................3, 31
Young v. 3.1 Phillip Lim, LLC,

No. SA CV 16-1556-DOC, 2016 WL 6781200 (C.D. Cal. Nov. 16, 2016) ........................7, 33
Rules
Fed. R. Evid. 803(6)(A)-(C) & 902(11) ...........................................................................................9

Page vi - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION
94016474.3 0065473-00001
Page
Other Authorities
Restatement (Third) of Unfair Competition 23 cmt. C (1995) ...................................................10
Page vii - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION
94016474.3 0065473-00001
I. INTRODUCTION
A preliminary injunction is an extraordinary and drastic remedy, one that should not be
granted unless the movant, by a clear showing, carries the burden of persuasion. Lopez v.
Brewer, 680 F.3d 1068, 1072 (9th Cir. 2012) (affirming denial of preliminary injunction)
(citation omitted). The purpose of a preliminary injunction is to preserve the status quo and the
rights of the parties until a final judgment issues in the cause. U.S. Philips Corp. v. KBC Bank,
590 F.3d 1091, 1094 (9th Cir. 2010). Here, plaintiff Heart Coffee Roasters (HCR) seeks to
dramatically change the status quo, not to preserve it, by forcing defendants to abandon the Heart
Pizza brand they have used since last October. As discussed below, if defendants are
preliminarily enjoined from using the brand, they will have to close the three currently operating
restaurants, lay off employees, and completely rethink their mission. Moreover, Heart Pizzas
founders cannot close Heart Pizza and then relaunch the business under that brand after the
litigation ends two years from now. If defendants are preliminarily enjoined from continuing to
use the Heart Pizza brand, they will be forced to permanently abandon it, thereby destroying the
goodwill and value the brand has already achieved.
In support of its motion for extraordinary and drastic relief, HCR resorts to outdated
presumptions, hyperbole, and unreliable multi-layered hearsay to compensate for its thin factual
record. For example, HCR relies on the presumption of irreparable harm based on a showing of
likelihood of success on the merits of a trademark infringement claim. This presumption no
longer applies in the Ninth Circuit, however, and HCR fails to offer any specific evidence of
irreparable harm. On that basis alone, its motion fails. Equally remarkable, HCR asks the Court
in balancing the equities at this preliminary stage to ignore entirely all hardship HCRs requested
relief would cause defendants. HCRs argument misreads the law and rests exclusively on
94016474.3 0065473-00001
inadmissible (and inaccurate) multi-level hearsay. The evidence of severe hardship that would
be imposed on defendants if an injunction is entered, and the absence of any evidence of harm to
HCR if an injunction is not entered, is an independent ground on which HCRs motion fails.
On the merits, all of HCRs arguments are colored by its unsupported and inaccurate
allegations of actual confusion and of defendants alleged intent to trade on HCRs goodwill.
HCRs evidence of actual confusion is nothing of the sort, and is based on unreliable hearsay in
any event. And the idea that Mr. Camden, who has created several successful mini-chains of fast
gourmet restaurants, would launch another fast gourmet concept by leveraging the goodwill of a
coffee shop, rather than on his own track record, is evidence of HCRs exaggerated sense of its
importance, not of Mr. Camdens bad intent.
HCRs arguments also rest on baseless exaggeration, such as its assertion that
defendants pizzerias compete[] directly with HCRs coffee shops merely because both are in
the restaurant industry. HCR also boasts that the parties marks are identical, despite the fact
that, when viewed in commercial context, as is appropriate, the opposite is true. HCRs coffee
shops and defendants pizzerias look and feel entirely different and no consumers are confused
as between them. Try as it might, HCR cannot parlay its common law trademark rights arising
from using HEART as a small, boutique coffee roaster and operator of two Portland coffee
shops, into the exclusive right to use the word heart in any business that serves food or drink.
HCR fails to carry its burden on each of the four elements of the Ninth Circuits preliminary
injunction test, any one of which dooms its motion for extraordinary relief.
II. ARGUMENT
The party seeking injunctive relief must make a clear showing that separately establishes
four separate required elements: [1] that he is likely to succeed on the merits, [2] that he is
94016474.3 0065473-00001
likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of
equities tips in his favor, and [4] that an injunction is in the public interest. Winter v. Nat. Res.
Def. Council, 555 U.S. 7, 20 (2008). As shown below, HCR fails to carry its burden on any of
the four required elements, and its motion for immediate injunctive relief should be denied.
A. HCR Fails to Carry Its Burden to Prove a Likelihood That It Will Suffer Specific
and Immediate Irreparable Harm Absent Entry of A Preliminary Injunction.
Any preliminary injunction requires a showing of a likelihood of imminent irreparable
harm during the pendency of the action. Winter, 555 U.S. at 21-22 (overturning earlier Ninth
Circuit cases allowing preliminary injunction based on mere possibility of irreparable harm).
1. HCR Cannot Rely on A Presumption of Irreparable Harm, Since Such a

Presumption Is No Longer Legally Permissible.
HCR neither offers specific evidence showing how it will be irreparably harmed if this
action proceeds without entry of a preliminary injunction, nor does it explain why it failed to
object to Heart Pizzas use of the name when it first learned of it nearly a year ago. Indeed, in
discussing irreparable harm, HCR does not even cite into the record. See Mtn. at 18. Instead,
HCR first relies on outdated authority applying a presumption that irreparable harm follows
automatically from proof of a likelihood of confusion. (Mtn. at 18 (citing Marlyn
Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 571 F.3d 873, 877 (9th Cir. 2009) (applying
the then-accepted presumption of irreparable harm in trademark cases: irreparable injury may
be presumed from a showing of likelihood of success on the merits (internal quotation marks
and citation omitted)).) The Ninth Circuit subsequently overturned this standard, flatly rejected
any such presumption, and demanded evidence that proves imminent irreparable harm:
Gone are the days when [o]nce the plaintiff in an infringement

action has established a likelihood of confusion, it is ordinarily
presumed that the plaintiff will suffer irreparable harm if injunctive
relief does not issue. This approach collapses the likelihood of
94016474.3 0065473-00001
success and the irreparable harm factors. Those seeking injunctive

relief must proffer evidence sufficient to establish a likelihood of
irreparable harm.
Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc., 736 F.3d 1239, 1250-51 (9th Cir. 2013)
(quoting Rodeo Collection, Ltd. v. W. Seventh, 812 F.2d 1215, 1220 (9th Cir. 1987)).
2. HCR Fails to Offer Evidence That Could Establish Specific, Non-

Speculative, and Imminent Irreparable Harm.
Courts require evidence rather than platitudes to establish how irreparable harm will
likely occur during pendency of the case. Id. at 1250-51 (vacating preliminary injunction entered
without factual findings on irreparable harm). In addition, a preliminary injunction must be
justified by irreparable harm that is specific and imminent, not merely speculative. Speculative
injury does not constitute irreparable injury sufficient to warrant granting a preliminary
injunction. Titaness Light Shop, LLC v. Sunlight Supply, Inc., 585 F. Appx 390, 391 (9th Cir.
2014) (unpublished) (quoting Caribbean Marine Servs. Co. v. Baldridge, 844 F.2d 668, 674 (9th
Cir. 1988))) (reversing preliminary injunction, despite likelihood of success on the merits, due to
lack of non-speculative evidence of irreparable harm).
For example, in TPW Management, LLC v. Yelp, Inc., No. 16-cv-03063-YGR, 2016 WL
6216879, at *11-12 (N.D. Cal. Oct. 25, 2016), evidence consisting of two articles featuring
complaints about the quality of the junior users services and the plaintiffs self-serving
declaration claiming that the junior users continuing (alleged) infringement would erode
plaintiffs customer base and control over goodwill, was held insufficient to prove likelihood of
irreparable harm in the absence of specific evidence such as diminished revenues or lost
customers.1
1
See also iFreedom Direct Corp. v. McCormick, No. SACV 16-470-JLS(KESx), 2016
WL 9049647, at *4-5 (C.D. Cal. June 15, 2016) (denying preliminary injunction where expert
94016474.3 0065473-00001
HCR cites no evidence of irreparable harm. Mtn. at 18. The only evidence even
arguably relating to irreparable harm in the entire preliminary injunction record are conclusory
and speculative assertions in the declaration of HCRs owner regarding supposed confusion of
customers eroding HCRs goodwill. Dkt. 10 25-26. But Mr. Yli-Luomas declaration does
not explain how HCR is supposedly being irreparably harmed, and the conclusory assertions of
irreparable harm made in HCRs briefing are lawyer argument rather than evidence. See Danaei
v. Rostam, No. 2:16-cv-0319-RGK-JPR, 2017 WL 2719984, at *3 (C.D. Cal. Feb. 2, 2017)
(despite finding likelihood of success on trademark infringement claim, refusing preliminary
injunction for failure to prove irreparable harm between direct competitors because only
evidence of irreparable harm was plaintiffs conclusory and self-serving declaration and because
decrease in plaintiffs website traffic was not proven to be caused by infringement); see also VBS
Distrib., Inc. v. Nutrivita Labs., Inc., No. SACV 16-01553-CJC(DFMx), 2017 WL 2404919, at
*5 (C.D. Cal. Jan. 19, 2017) (self-serving declaration claiming that Lanham Act plaintiff will
lose goodwill because of consumer confusion was too conclusory and speculative to support
imminent irreparable harm).
Thus, even if HCR could show that it is likely to prevail on the merits, and it cannot,
HCRs motion still fails as a matter of law due to its lack of evidence establishing specifically
how HCR faces immediate and irreparable harm absent entry of an injunction.
declaration regarding supposed irreparable harm failed to offer specific analysis, backed by facts,
showing precisely how infringement would irreparably harm trademark plaintiff), affd, 662 F.
Appx 550, 551 (9th Cir. 2016) (affirming that expert declaration could not establish irreparable
harm because it was too speculative and failed to show that harm is likely to occur or that
traditional remedies . . . are inadequate); San Miguel Pure Foods Co. v. Ramar Intl Corp., 625
F. Appx 322, 327 (9th Cir. 2015) (unpublished) (vacating permanent injunction for failure to
prove irreparable harm, even though evidence of actual confusion existed, where evidence failed
to show that even incidents of actual confusion had resulted in lost customers or goodwill).
94016474.3 0065473-00001
3. HCRs Long Delay in Filing Suit and This Motion Undercuts Its Conclusory
Assertions of Irreparable Harm.
HCRs claims of irreparable harm are further undercut by HCRs delay in filing this
action and moving for injunctive relief. HCR knew about Heart Pizzas plan to open its pizza
restaurants under the HEART PIZZA mark and pizza box logo long before Heart Pizza opened
to the public in February 2017. Due to the prominence of Heart Pizzas owners in the Portland
restaurant market, at least three articles highlighting the Heart Pizza restaurant concept appeared
in the Oregonian and elsewhere in mid-October 2016. The employees at HCRs West End
coffee shop began asking Mr. Camden about Heart Pizza as soon as those initial news articles
were published. (Camden Decl. 19, 39.) In addition, an Opening Soon sign featuring the
Heart Pizza brand was prominently placed on the West End store 3-4 months before the February
2017 opening, and Mr. Camden brought in sample pizzas to HCRs West End location beginning
in December 2016 or January 2017. (Id. 40-41.)
HCRs delay undermines its motion for emergency injunctive relief. In an analogous
case, the plaintiff learned in June 2015 that defendant would enter the disputed market with its
mark, but waited ten months before moving for a preliminary injunction in April 2016, during
which time the defendant entered the market. iFreedom Direct Corp. v. McCormick, No. SACV
16-470-JLS(KESx), 2016 WL 9049647, at *4 (C.D. Cal. June 15, 2016), affd 662 F. Appx 550
(9th Cir. 2016). After reviewing cases holding that delays of three, five, and seven months
undercut claims of irreparable harm, the court held that plaintiffs ten-month delay undercut any
potential irreparable harm. Id.
For the same reasons, HCRs 10-month delay in filing this motion undercuts its claims of
exigent irreparable harm justifying extraordinary relief. Like the plaintiff in iFreedom, HCR
easily could have made this motion to maintain the status quo before defendants built out their
94016474.3 0065473-00001
pizzerias, or as soon as they opened, if HCR was sincerely concerned about suffering irreparable
harm. Instead, it waited until six months after Heart Pizza opened to seek emergency relief.
4. HCRs Assertions of Supposed Actual Confusion Cannot Establish

Irreparable Harm Without Additional Proof.
Finally, HCR asserts that its supposed evidence of actual confusion independently and
automatically proves irreparable harm. Mtn. at 18. Even if HCR had proven actual
confusion -- and for all the reasons discussed in Section II.B.1, it did not -- evidence of actual
confusion alone does not suffice to prove irreparable harm for purposes of a preliminary
injunction. HCRs view of irreparable harm relies on two district court cases from 2012, one of
which is out-of-circuit. (Mtn. at 18 citing TravisMatthew, LLC v. Leisure Socy Unlimited, LLC,
No. SACV 12213JST (MLGx), 2012 WL 1463548, at *4 (C.D. Cal. Apr. 16, 2012), and Mrs.
U.S. Natl Pageant, Inc. v. Miss U.S. Org., LLC, 875 F. Supp. 2d 211, 226-27 (W.D.N.Y. 2012)
(applying Second Circuit requirements for proof of irreparable harm).) After TravisMatthew was
decided, the Ninth Circuit rejected the same argument HCR makes here, explaining that evidence
of actual confusion merely underscores customer confusion, not irreparable harm and is
insufficient on its own to support a preliminary injunction. Herb Reed, 736 F.3d at 1250.
In sum, HCR delayed bringing this action for months, offers no specific evidence
showing how it is likely to be irreparably harmed, and relies on presumptions of irreparable harm
(one based on a likelihood of success on the merits and the other on supposed actual confusion)
that no longer exist. HCR failed to meet its burden to prove irreparable harm and its motion for
extraordinary relief should be denied on that basis alone. See Young v. 3.1 Phillip Lim, LLC, No.
SA CV 16-1556-DOC (KESx), 2016 WL 6781200, at *5-6 (C.D. Cal. Nov. 16, 2016) (despite
finding likelihood of success on trademark infringement claim, refusing preliminary injunction
for lack of proof of irreparable harm).
94016474.3 0065473-00001
B. HCR Has Not Made A Clear Showing That It Is Likely to Succeed on the Merits.
Even if HCR could overcome its failure to establish irreparable harm, and it cannot, it
would still be required to establish a likelihood of success on the merits on each of HCRs
substantive claims. As shown below, no Sleekcraft factor significantly favors infringement, and
those of greatest important weigh heavily against any likelihood of confusion.
1. HCR Has Not Introduced Evidence That Can Establish Actual Marketplace
Confusion.
HCR boldly claims that it has offered overwhelming evidence of actual confusion
(Mtn. at 19), but beneath the surface of its carefully crafted arguments, HCRs evidence is
inadmissible, unreliable, and at most demonstrates inquiries about whether the parties are
related, which are insufficient as a matter of law to establish actual confusion.
HCR relies on four supposed facts to support its assertions of actual confusion: (1) a log
kept by HCR employees of statements purportedly made by customers at one of HCRs coffee
shops, (2) comments supposedly made by non-customers, (3) statements supposedly made and a
mental state supposedly held by an unidentified individual, and (4) the results of contrived
Google searches. (Mtn. at 18-19; Dkt. 9 2-3; Dkt. 10 25-26 & Ex. 8.) None of these
supposed facts are based on admissible or reliable evidence, nor would they establish actual
confusion even if they could be believed.
a. HCRs Heart Pizza Log. HCR offers a log of statements from unidentified
customers apparently written down by HCR employees at its downtown location. (Decl. of
Wille Yli-Luoma (Dkt. 10) Ex. 8.) HCR contends that the statements show that the customers
were confused as between the parties.
To begin, this log contains multiple levels of hearsay, including the log itself (which
Mr. Yli-Luoma admits he did not have first-hand knowledge of, but was made by unspecified
94016474.3 0065473-00001
HCR employees), as well as the statements from the customers to the employees who heard them
(and perhaps from those employees to whoever entered the statement into the log). Mr. Yli-
Luomas declaration fails to explain who created the log, whether it was created in the ordinary
course of HCRs business (it appears that it was created for purposes of this litigation), whether
the individuals who wrote entries actually heard the statements described, and whether the
entries were contemporaneously written. See Fed. R. Evid. 803(6)(A)-(C) & 902(11); see also
Pedego, LLC v. All. Wholesalers, Inc., No. SACV 12-01106-CJC(JPRx), 2012 WL 12892900, at
*2 (C.D. Cal. Sept. 14, 2012) (telephone log and descriptions of telephone calls allegedly
evidencing confusion not considered on preliminary injunction due to lack of sufficient
foundation for reliability). Indeed, the log itself raises a significant reliability problem: it
appears as if it were contemporaneous and purports to directly quote customers, but the April 20,
2017 entry is above the April 15, 2017 entry, which suggests that one or more of the entries may
have been re-constructed after the fact.2
In any event, the statements reported on HCRs log, even if entirely accurate, are mere
inquiries that, as a matter of law, are not sufficient to show actual confusion. Four of the five
entries on the log, from April 20, April 15, May 11, and May 21, are at most merely questions
2
The court has discretion to afford some weight to hearsay statements on a preliminary
injunction motion where the exigency of the motion has made obtaining formally admissible
testimony impossible, and suspension of formal rules is necessary to avoid injustice. Flynt
Distrib. Co. v. Harvey, 734 F.2d 1389, 1394 (9th Cir. 1984). But here, exigency is lacking in a
preliminary injunction motion that HCR has had months to prepare, HCR fails to provide any
foundational explanation for the log, and the declarations of HCRs own employees, who
supposedly heard these statement and created this log, were not submitted to answer these
questions. These foundational facts may be missing from HCRs motion because they are not
favorable to HCR.
94016474.3 0065473-00001
asking whether any affiliation exists between the parties. See Dkt. 10 Ex. 8.3 Such affiliation
inquiries may merely reflect that consumers perceive a difference between the [marks] and are
skeptical of the existence of a connection between the users. Restatement (Third) of Unfair
Competition 23 cmt. C (1995). Accordingly, questions about affiliation are insufficient as a
matter of law to prove actual confusion. See e.g., Cohn v. Petsmart, Inc., 281 F.3d 837, 842
n.7 (9th Cir. 2002) (although plaintiff had received several dozen inquiries as to whether the
parties were related, mere inquiries are too ambiguous to demonstrate actual confusion on
their own); see also id. ([W]hile enquiry evidence is admissible and relevant, standing alone
with no other evidence it is insufficient proof of actual confusion. (quoting 4 McCarthy on
Trademarks and Unfair Competition 23:16)). At least one district court in this circuit applied
Cohn to conclude that a series of approximately 10 customers over a short period of time
inquiring whether the parties had any relationship or affiliation was insufficient to prove actual
confusion. Ross v. Target Corp., No. CV 07-1147 ODW (PLAx), 2008 WL 11336378, at *8
(C.D. Cal. July 7, 2008).
b. Hairdresser and Sign Vendor Statements. HCR also points to two interactions
with non-customers, a Vancouver, Washington sign vendor and Ms. Yli-Luomas hairdresser.
(Mtn. at 7; Dkt. 9 2-3). Again, both interactions turn on hearsay statements and there is no
3
The other log entry, dated May 1, 2017, is merely a question about whether HCR offers
pizza by the slice, and does not reference Heart Pizza at all. (Dkt. 10 Ex. 8.) Such questions
about whether the plaintiff offers specific products do not evidence consumer confusion. See
Icon Enters. Intl, Inc. v. Am. Prods. Co., No. CV 04-1240 SVW (PLAx), 2004 WL 5644805, at
*13 (C.D. Cal. Oct. 7, 2004) (evidence that consumer call placed to plaintiff video monitor
company asking if they offered wheel rims, the trademark defendants product, was not evidence
of consumer confusion); see also Miss World (UK) Ltd. v. Mrs. Am. Pageants, Inc., 856 F.2d
1445, 1451 (9th Cir. 1988) (customer inquiry asking about services that happened to be provided
by the other party did not evidence confusion), abrogated in part on other grounds by Eclipse
Assocs. Ltd. v. Data Gen. Corp., 894 F.2d 1114, 1116 n.1 (9th Cir. 1990). Incidentally, Heart
Pizza does not sell pizza by the slice so, unlike Icon, the product the customer was asking about
here isnt even offered by the alleged infringer. (Camden Decl. 23.)
94016474.3 0065473-00001
explanation for why declarations from these third parties could not have been obtained. Ms. Yli-
Luomas recounting of what her hairdresser allegedly said to and was told by unnamed clients of
the hairdresser includes multiple layers of hearsay and is patently unreliable. (See Dkt. 9 3.) In
addition, the substance of these interactions also fail to show any actual confusion. The
hairdresser merely recounted that a client of the hairdresser had a pizza box from Heart Pizza,
and the hairdresser asked Ms. Yli-Luoma whether the pizza place was affiliated with HCR.
Similarly, the sign vendor merely asked whether HCR and Heart Pizza were affiliated. (Dkt. 9
2-3.) As discussed above, such inquiries do not prove actual confusion. Cohn, 281 F.3d at
842 & n.7. Moreover, even if HCR had evidence that such non-consumers were actually
confused (rather than merely making inquiries about association), evidence of non-consumer
confusion does not prove actual consumer confusion in the market. See Suja Life, LLC v. Pines
Intl, Inc., No. 16CV985-GPC(WVG), 2016 WL 6157950, at *10 (S.D. Cal. Oct. 24, 2016)
(rejecting evidence of alleged confusion by one who was not an actual consumer and finding
no actual confusion).
c. Facts Asserted in HCRs Brief But Missing from the Record. Citing
paragraph 3 of Rebekah Yli-Luomas Declaration (Dkt. 9), HCR also claims that 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. (Mtn. at 7.) First, Ms. Yli-Luoma
provides no explanation of how she purportedly knew what these unnamed third parties had
assumed. Second, these facts recounted in HCRs brief are nowhere to be found in Ms. Yli-
Luomas declaration. (See Dkt. 9.)
94016474.3 0065473-00001
d. Contrived Google Search Results. Finally, HCR argues that Google search
results for search for heart near me conducted from counsels offices somehow demonstrate
actual (human) confusion. At the outset, computer-generated Google search results
intermingling references to the parties businesses are not evidence of actual trademark
confusion. See Oculu, LLC v. Oculus VR, Inc., No. SACV 14-0196 DOC(JPRx), 2015 WL
3619204, at *13 (C.D. Cal. June 8, 2015) (To the extent that Plaintiff is relying on the Google
search engines propensity . . . to intermingle oculu and oculus search results, such evidence
is not evidence of customer confusion. (citing additional cases)). In addition, it is highly
unlikely that an actual consumer would contrive a search of search for heart near me. Rather,
customers looking for HCRs coffee would search Heart Coffee or coffee near me and
customers looking for a Heart Pizzas pizzeria would search for Heart Pizza or pizza near
me. Unsurprisingly, neither of these more realistic searches turned up the other party. (Hoff
Decl. 4-9 & Exs. 3-7.)
The most important aspect of HCRs actual confusion evidence is what is missing.
Despite its efforts to search for actual confusion for months, HCR presents no evidence at all
from its East Burnside location or from any aspect of its national coffee roasting business.
Moreover, the inquiries about association between the parties ended in May, which demonstrates
that the public readily appreciates the obvious differences between the parties services and
marks, and is not confused or likely to be confused. Wells Fargo & Co. v. ABD Ins. & Fin.
Servs., Inc., No. C 12-3856 PJH, 2014 WL 4312021, at *5 (N.D. Cal. Aug. 28, 2014) (finding
actual confusion factor weighed against likelihood of confusion on preliminary injunction
motion because any potential instances of confusion occurred within a short period immediately
94016474.3 0065473-00001
following ABDs launch and then subsided). This factor weighs against a likelihood of
confusion.
2. Consumers Would Not Assume that Pizzerias and Specialty, High-End

Coffee Derive from a Common Source.
The lack of a close relationship between HCRs specialty coffee shops and coffee and
Heart Pizzas pizzerias is a key factor weighing against any likelihood of confusion. Without
relying on any citation to the record, HCR contends that its coffee shops and coffee distribution
business is somehow a direct competitor of Heart Pizzas pizzerias. (Mtn. at 13.) To imagine
consumers deciding on a day to day basis whether to have coffee or pizza for dinner, or whether
to pair coffee or pizza with a donut, ignores reality. Coffee and pizza are not substitutes for each
other, and coffee shops and pizzerias are not direct competitors. (See Camden Decl. 24.)
Where, as here, the goods at issue are not competitive, the analysis of relatedness of
goods centers on whether the products are sufficiently related in the minds of consumers that
the buying public could reasonably conclude that the products came from the same source.
Oculu, 2015 WL 3619204, at *15 (quoting Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d
625, 633 (9th Cir. 2005)). As HCR acknowledges, this analysis turns on relationships between
the goods or services, such as whether they are complementary or similar in use. (Mtn. at 12
(citing Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir.
2011)).) Coffee is typically paired with cream or sugar, and is consumed with pastries, donuts or
other sweets. Pizza is paired with wine and beer, or perhaps a salad. But pizza and coffee are
not commonly paired together, and for good reason: coffee pairs well on the palate with sweets
and badly with garlic, cheese and olive oil. (Camden Decl. 23.) Nor are coffee and pizza used
for the same purpose: coffee is a drink mostly consumed in the morning that supplies caffeine,
94016474.3 0065473-00001
not nourishment. Pizza is nourishing food, with no caffeine, most often served as an entre at
dinner. (Camden Decl. 26.)
HCR also argues that the relatedness of goods factor weighs heavily in its favor,
because both parties operate in the restaurant industry. (Mtn. at 12.) The only legal support
HCR musters for this argument is a 33 year old case from the Fourth Circuit finding related a
taco restaurant and an Italian restaurant, which unlike here, both served meals, used similar
ingredients and offered the same or similar beverages. (Mtn. at 13 (citing Pizzeria Uno Corp. v.
Temple, 747 F.2d 1522 (4th Cir. 1984).) In this circuit, [c]ourts have held that the mere fact
that two products or services fall within the same general field does not mean that the two
products or services are sufficiently similar to create a likelihood of confusion. Icebreaker Ltd.
v. Gilmar S.P.A., 911 F. Supp. 2d 1099, 1104 (D. Or. 2012) (ellipsis omitted) (quoting Matrix
Motor Co. v. Toyota Jidosha Kabushiki, 290 F. Supp. 2d 1083, 1092 (C.D.Cal. 2003)). Courts
have rejected efforts to find products closely related simply because they can be grouped in a
broad and vague industry category. Matrix, 290 F. Supp. 2d at 1092 (automotive industry:
specialty race cars and passenger cars not sufficiently related to favor confusion); Icebreaker,
911 F. Supp. 2d at 1105 (apparel industry: active wear and designer apparel not sufficiently
related to favor confusion).
Courts also recognize that consumers readily distinguish among different types of
restaurants, and between restaurants and other types of food and beverage providers. For
example, in Stonefire Grill, Inc. v. FGF Brands, Inc., 987 F. Supp. 2d 1023, 1040-41, 1050-51
(C.D. Cal. 2013), the court found relatedness of goods was absent, even though the parties
businesses were more closely related than the coffee shops and pizzerias at issue here. In
Stonefire Grill, the Plaintiff operated seven fast-casual restaurants serving pizza, sandwiches,
94016474.3 0065473-00001
salads, soups, and meat and fish entrees under the STONEFIRE GRILL mark. The defendant
distributed pre-packaged flat-breads through grocery stores under the STONEFIRE mark. Id. at
1040-41. The Court concluded that the food products and restaurants were not closely related
and that the relatedness factor weighed against a likelihood of confusion, observing that
restaurant customers are not likely to assume that a restaurant sponsors food products that the
restaurant does not offer, make, or sell at its locations. Id. at 1050-51.
Here, HCR primarily sells coffee and baked goods, (which Heart Pizza does not sell),
along with bagged coffee beans, T-Shirts, coffee mugs, and other coffee paraphernalia. (Hoff
Decl. 11; Ex. 9 at 45-88.) Heart Pizza sells pizza, salad, wine, and beer, (which HCR does not
sell), and does not sell T-Shirts, mugs or other souvenirs. (Camden Decl. 23, 25.) As in
Stonefire Grill, the public is unlikely to assume that businesses offering distinct products share a
common source.
HCR also asserts that the goods are necessarily related because the parties supposedly
share customers. (Mtn at 12.) Nothing in the five declaration paragraphs HCR cites as support
(Dkt. 10 16, 25-26; Dkt. 9 2-3), or elsewhere in HCRs record, demonstrates that the same
customers visit Heart Pizza and HCR. Rather, HCR goes to some length to show that customers
often visit both Blue Star Donuts and HCR, and that a Heart Pizza customer once visited Ms.
Yli-Luomas hairdresser. (See Dkt. 10 16, 25-26; Dkt. 9 2-3.) But even if some customers
purchase coffee from HCR and pizza from Heart Pizza, that does not demonstrate that customers
view pizza and coffee as so related that they would naturally come from the same source. Many
of HCRs coffee shop customers presumably also purchase shoes, but these share[d] customers
do not make coffee and shoes closely related in the minds of consumers.
94016474.3 0065473-00001
Finally, since the relatedness factor is sometimes expressed as proximity of goods,
HCR asserts its satisfaction of this factor because Heart Pizza and HCR each operate a location
in Portlands West End neighborhood, such that the parties goods are proximate . . . in terms of
physical presence. (Mtn. at 12.) But the relevant inquiry focuses on whether the goods are
related, Icebreaker, 911 F. Supp. 2d at 1104, and HCR cites to no authority holding that
geographic proximity is even relevant where the goods are unrelated.
3. Viewed in the Correct Context, the Parties Marks Are Distinct, Not Similar.
HCR seeks to preliminarily enjoin defendants from using two marks: the word mark
HEART PIZZA, and Heart Pizzas pizza box logo. HCR argues that the word mark should be
viewed as identical to HCRs mark because Heart Pizza incorporates, in its entirety, the
HEART mark. (Mtn. at 13.) In fact, the marks are not identical, or even similar -- consumers
can easily distinguish between HEART PIZZA and HEART in sight, sound, and meaning,
because the added word pizza describes exactly what Heart Pizza sells. As a matter of brand
policy, Heart Pizza never uses the word heart without the word pizza. (Camden Decl. 11.)
Furthermore, the pizza box logo looks nothing like HCRs HEART mark. (Id. 10.)
HCR argues, without citing authority, that the word pizza in HEART PIZZA should be
ignored because it is merely descriptive of the food sold by Heart Pizza. (Mtn. at 13, n.2).
The Stonefire Grill court rejected the same argument. There, the restaurants mark STONEFIRE
GRILL included the word grill in addition to the common word stonefire. The court
explained that this additional word was crucial here because . . . the inclusion of the word grill
in the [mark] indicates that Plaintiff is a restaurant and concluded that the marks were not
similar. 987 F. Supp. 2d at 1051-52; see also Alpha Indus., Inc. v. Alpha Steel Tube & Shapes,
Inc., 616 F.2d 440, 444 (9th Cir. 1980) (marks ALPHA and ALPHA STEEL TUBE or ALPHA
94016474.3 0065473-00001
STEEL not similar because the additional words steel and steel tube indicated a different
origin). Inclusion of the word pizza indicates that Heart Pizza is a pizzeria and of a different
origin than HEART used for coffee.
HCR also errs by ignoring the very different commercial context in which the parties
marks are presented to consumers. Isle of Capri Casinos, Inc. v. Flynt, No. 2:16-cv-06148-CAS
(MRWx), 2016 WL 6495380, at *5 (C.D. Cal. Nov. 1, 2016) (even marks that are identical in
isolation may be readily distinguishable in light of other packaging or promotional material
affecting the context in which they are encountered (quoting Lindy Pen Co. v. Bic Pen Corp.,
725 F.2d 1240, 1245 (9th Cir. 1984))). For example, in Suja Life, 2016 WL 6157950, at *1, *10,
the parties both used the mark MIGHTY GREENS, in connection with a fruit and vegetable juice
drink on one hand, and a concentrated cereal grass nutrient powder for mixing into drinks on the
other. Despite the fact that the marks were exactly the same words and were used for similar
products, the court concluded that the marks were dissimilar because the look and feel of the
packaging featuring the mark were different in shape, color, style, font and overall appearance.
Id. at *10. Similarly here, the parties marks are presented in dramatically different commercial
contexts. HCR presents its HEART mark in lower case courier font, typically in white text on a
black circle, and sometimes black text on white. (Mtn. at 5; Hoff Decl. 13, Ex. 12.) In
contrast, Heart Pizzas logo, used with or without the word heart, presents the unmistakable
impression of an angular pizza box, usually in red, cemented by the word pizza below it.
(Camden Decl. 10, 13.) The angular box looks nothing like HCRs circular design, and the
thin, sans serif font looks nothing like HCRs courier font. As used in the marketplace, Heart
Pizza and the pizza box logo do not suggest any connection to coffee, but do tie directly to Heart
Pizzas charitable giving concept ($1 given to charity per pie sold). (Id. 14-15.)
94016474.3 0065473-00001
In addition, the look and feel of HCRs coffee shops, on the one hand, and the pizzerias
where customers encounter Heart Pizzas name and logo, on the other, are entirely different.
HCRs coffee shops are sleek, cool and Scandinavian, prominently featuring coffee brewing
machines, and emanating the distinct smell of coffee. (Camden Decl. 27.) In contrast,
defendants pizzerias, which are designed in a comfortable and warm farmhouse modern style
featuring bead board, butcher block, cherry counter tops, and wrought iron, are dominated by
Italian pizza ovens backed by colorful tile, and smell of baking pizza. The pizzerias feature
colorful bags and cans of ingredients used to make pizza, none of which are used in coffee or
products commonly sold with coffee. (Camden Decl. 28; Lynch Decl. 4-6.)
Simply put, no consumer is going to see a colorful Heart Pizza pizzeria, dominated by
smells of pizza baking and a prominent pizza oven, or look at a pizza box bearing Heart Pizzas
distinctive logo (Camden Decl. 12), and think about coffee or be confused about any
association with the sleek ultramodern image of HCR.
Finally, despite the sharp differences in how the marks are presented to the public in
commercial context, HCR jumps to the conclusion that the parties are using identical marks on
competitive goods such that liability is open and shut (Mtn. at 13), relying on Stone Creek
Inc. v. Omnia Italian Design, Inc., 862 F.3d 1131, 1136 (9th Cir. 2017) (citation omitted). But
Stone Creek involved very different facts: there a manufacturer produced furniture for sale by a
distributor under the distributors mark, and also sold its own interchangeable furniture pieces
under its own mark. In response to orders from a retailer, the manufacturer then started selling
interchangeable furniture pieces with exact counterfeit copies of the distributors mark, even
scanning and copying the distributors marketing materials. 862 F.3d at 1136-37 (Omnias
94016474.3 0065473-00001
mark is an exact replica of Stone Creeks logo that Omnia copied from materials given to Omnia
by Stone Creek.).
Here, not only are the parties not in direct competition, but their respective marks are
easily distinguished in sight, sound, and meaning, and are presented in radically different
commercial contexts. The lack of similarity of the parties marks weighs strongly against a
likelihood of confusion.
4. HCRs HEART Mark Is Entitled to Narrow Protection.
HCR is asserting only common law rights in its HEART mark, as it has no federal
registrations. HCRs rights are thus limited to its use of the mark in its two Portland coffee
shops and its wholesale coffee roasting business. Citing coverage touting the quality of HCRs
high-end coffee in niche coffee-industry publications, HCR nonetheless argues that its common
law mark is conceptually and commercially strong and entitled to broad protection. (Mtn. at 11-
12.) But even a conceptually strong mark can be weakened by third-party use of similar marks.
Icebreaker, 911 F. Supp. 2d at 1112-14 (despite finding arbitrary mark ICEBERG conceptually
strong, concluded that strength of mark factor weighed against potential confusion because other
apparel industry marks used ice including SUNICE, ICECREAM, ICETEX, ICE BOX, and
PINK ICE). When similar marks permeate the marketplace, the strength of the mark
decreases. In a crowded field of similar marks, each member of the crowd is relatively weak in
its ability to prevent use by others in the crowd. One Indus., LLC v. Jim O'Neal Distrib., Inc.,
578 F.3d 1154, 1164 (9th Cir. 2009) (quoting Miss World (UK) Ltd. v. Mrs. Am. Pageants, Inc.,
856 F.2d 1445, 1449 (9th Cir. 1988)).
For example, in One Industries, the parties both used symbols with some similarity to the
letter O on motocross racing helmets. The Ninth Circuit concluded that even though plaintiffs
94016474.3 0065473-00001
fanciful mark was in the strongest possible category of conceptual strength, [t]he record . . .
contains several examples of similar O marks used by different companies, including Oakley,
OGIO, and Alloy MX. Such use of other O symbols weakens the Rounded O mark. Id.
HCRs HEART mark consists of a common English language word, that is extensively
used by other businesses, which significantly weakens HCRs mark, and narrows the scope of
protection to which it is entitled. In the Portland metro area alone, at least six third party
restaurant, food, or beverage related companies use or recently used marks that include the word
heart: Lion Heart Kombucha, Bless Your Heart Burgers, Hungry Heart Bakery, Eat Your Heart
Out Catering, Heart Bar, and I Heart Gyro in Vancouver, Washington. (Hoff Decl. 17 & Ex.
16.) Outside Portland, many other restaurant and food companies operate under marks using the
word heart, (Id. 18 & Ex. 17.) Similarly, in HCRs own niche market, any number of coffees
and coffee shops use marks that incorporate the word heart. (Id. 19 & Ex. 18.)
Use of the word heart in other businesses, including restaurants and beverage
companies in Portland and elsewhere, suggest that consumers are likely to use greater care in
distinguishing the parties already dissimilar marks, and are even less likely to assume
association between HCRs coffee shops and Heart Pizzas pizzerias. This factor, therefore,
also weighs against a likelihood of confusion.
5. Defendants Did Not Adopt Their Mark to Trade on HCRs Goodwill.
HCR asserts that the facts of this case strongly indicate that Micah Camden and Heart
Pizza adopted the Heart Pizza name and pizza box logo with an intent to usurp the goodwill
associated with HCRs HEART mark, because Camden regularly bought coffee at HCRs West
End coffee shop, and opened a Heart Pizza store in the same neighborhood. (Mtn. at 15-16.)
But the Courts analysis does not end once it determines that the junior user was aware of the
94016474.3 0065473-00001
senior users use of the mark. The relevant inquiry is whether the junior user adopted the mark
deliberately with a view to obtain some advantage from the good will, good name, and good
trade which another has built up. TPW, 2016 WL 6216879, at * 9 (quoting Fleischmann
Distilling Corp. v. Maider Brewing Co., 314 F.2d 149, 158 (9th Cir. 1963)).
In fact, defendants adopted the Heart Pizza name and pizza box logo for specific reasons
completely unrelated to HCRs use of the heart name. Dahl v. Swift Dist., Inc., No. Cv 10-00551
SJO (RZx), 2010 WL 1458957, at *9 (C.D. Cal. Apr. 1, 2010) (although junior user adopted
name with knowledge of plaintiffs mark, junior users good faith explanation for selecting name
resulted in this factor weighing against likelihood of confusion). The Heart Pizza name was
selected because (1) it plays on the charitable giving at the core of the Heart Pizza concept, (2) of
the ubiquitous use of heart symbols as in I [heart] NY and I [heart] pizza images on T-shirts,
(3) it lent itself to an immediately recognizable idea in a heart pizza box logo, and (4) it had a
strong and available domain name: <heartpizza.com>. (Camden Decl. 14-15.)
Similarly, defendants opened a pizzeria in the West End, not because HCR has a coffee
shop there, but because Camdens overall strategy is to follow [his] own trail by opening new
concept restaurants near his existing businesses. Doing so encourages customers already loyal to
one of his restaurants to try his newly launched one, and Camden had other businesses
established in West End long before HCR moved in. (Camden Decl. 2-9; Hoff Decl. 2 &
Ex. 1.) Moreover, the mere fact that Camden regularly bought coffee from HCR does not
establish that his opening of a pizzeria concept under the Heart Pizza name and pizza box logo
was an attempt to steal HCRs goodwill among super-serious coffee aficionados for his
pizzerias. Nor does the fact that Blue Start Donuts once offered HCR the chance to compete
with four other roasters for the chance to replace its incumbent coffee vendor suggest that
94016474.3 0065473-00001
defendants named their pizzeria concept Heart Pizza to trade on HCRs goodwill. (See Mtn. at 4,
16; Camden Decl. 37.)
The very idea that defendants would name their pizzeria concept in order to trade on the
goodwill of a coffee roaster makes no sense. The cases that HCR cites on the intent factor
involve junior users adopting a mark either similar to the existing mark used by a direct
competitor or on closely-related goods.4 But even in the context of direct competitors, where the
marks are not very similar and there is no additional evidence of bad faith, mere knowledge of a
competitors allegedly-similar mark is insufficient to support an inference of intent. See One
Indus., 578 F.3d at 1163-64.
The same reasoning applies here but with greater force. Heart Pizzas marks and the look
and feel of its pizzerias are easily distinguished from those of HCR and the parties offer
unrelated goods and services. (Camden Decl. 16, 23.) In fact, defendants adopted a visually
distinct logo, use a totally different dcor, and do not serve coffee, which strongly undermines
any presumed attempt to trade on HCRs goodwill. Moreover, with the strong reputation and
good will of Mr. Camdens other brands, such as Blue Star Donuts and Boxer Ramen, it makes
no sense for him to attempt to trade on the goodwill of an unrelated high-end coffee shop to sell
pizza. Rather, Mr. Camden is building on the goodwill of his established brands. (See Camden
Decl. 5-9.) M2 Software, Inc. v. Madacy Entmt, 421 F.3d 1073, 1085 (9th Cir. 2005)
(knowledge of senior users mark alone insufficient to establish inference of intent to deceive
4
See Stone Creek, Inc. v. Omnia Italian Design, Inc., 862 F.3d 1131, 1136 (9th Cir.
2017) (adoption of counterfeit mark in connection with interchangeable furniture made by same
manufacturer); Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1044 (9th
Cir. 1998) (competing wines); AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th Cir. 1979)
(high-speed fiberglass boats with overlapping customers); Fleischmann Distilling Corp. v.
Maider Brewing Co., 314 F.2d 149, 158 (9th Cir. 1963) (alcoholic beverages).
94016474.3 0065473-00001
where junior user had its own, separate strong reputation in the industry under other marks,
negating any conclusion that it would seek to trade on senior users weaker reputation).
Furthermore, defendants adopted the HEART PIZZA mark and pizza box logo believing
that Heart Pizza could readily carve out a non-infringing mark, even with the existence of
[HCRs] mark, given the significant differences in services and dissimilarity of the marks. Id.
(no intent to deceive consumers where junior user adopted mark based on belief it could carve
out non-infringing space for its use).5 Here, Mr. Camden did not believe there would be any
likelihood of confusion due to the obvious differences between the parties respective goods and
services, and the differences between the parties respective logos and look and feel of their
businesses. (Camden Decl. 16.) Defendants also searched federal and state trademark
databased for heart pizza and heart and found that there were no registered trademarks for
either one. (Camden Decl. 15.)
Finally, HCR contends that Camden . . . misrepresented to a third party that defendants
had permission to use the HEART mark . . . , demonstrating knowledge that he knew such
permission would be necessary. (Mtn. at 16.) The basis for this accusation is an inference
drawn by HCRs owner that in turn is based on unreliable, inadmissible, and inaccurate hearsay.6
5
See also TPW, 2016 WL 6216879, at *9-10 (applying M2 and concluding intent factor
did not favor confusion on preliminary injunction despite defendants knowledge of plaintiffs
mark, where defendant searched for trademark registrations and believed products and marks
were sufficiently distinct to avoid confusion); Nordstrom, Inc. v. NoMoreRack Retail Gr., Inc.,
No. C12-1853-RSM, 2013 WL 1196948, at *8 (W.D. Wash. Mar. 25, 2013) (junior users intent
weighed against likelihood of confusion on preliminary injunction, even though defendant
adopted mark with knowledge of plaintiffs mark, because parties operated in a crowded field,
and defendant used mark believing it did not infringe on [plaintiffs] marks).
6
Both Mr. Yli-Luomas third-hand account of what Mr. Nakamoto told Mr. Yli-Luoma
that Mr. Camden told Mr. Nakamoto, and the out-of-court text message exchange between
Mr. Nakamoto and Mr. Yli-Luoma are unreliable and inadmissible hearsay.
94016474.3 0065473-00001
What actually happened, according to the only sworn statement from a party to the actual
conversation, is this: In response to a question from his longtime design consultant, David
Nakamoto, Mr. Camden said that HCR did not care about his use of the word heart. He said
that because he had discussed the Heart Pizza concept with HCR employees repeatedly, even
bringing them samples, and no one at HCR expressed any concern about the name. (Camden
Decl. 42.) Contrary to what Mr. Yli-Luoma says Mr. Nakamotos texts mean, Mr. Camden
never suggested that he spoke with Mr. Yli-Luoma, or that he needed Yli-Luomas permission to
open Heart Pizza (he did not), and never told his long-time colleague Mr. Nakamoto to f*ck
off. (Id. 42.)
In short, there is no evidence that defendants adopted the Heart Pizza name and pizza box
logo intending to trade on HCRs goodwill. In fact, the obvious differences between the parties
businesses, products, and marks point to the opposite conclusion. This factor, therefore, weighs
against a likelihood of confusion.
6. Both Parties Customers Are Sophisticated Purchasers Who Are Unlikely to

Be Confused.
HCR argues that since the parties offer goods at relatively low prices, the degree of
consumer care must be low, and favors confusion. (Mtn. at 14-15.) But price alone is not
determinative: the touchstone remains the general impression that is left with the ordinary
consumer. Herbalife Int'l, Inc. v. Lumene N. Am. LLC, No. CV 07-5040 AHM (RCX), 2007
WL 4225776, at *11 (C.D. Cal. Oct. 15, 2007). In Herbalife, the court found that plaintiffs
products were at the high end of the mass market for skin care products in terms of price. Id.
Herbalifes consumers were health-conscious and interested in improving their appearance and
nutritional habits and the defendants products were not inexpensive in the mass-market
retailers where they were sold. Id. Moreover, the target customers were women ages 25 and
94016474.3 0065473-00001
older who are looking to improve the quality of their skin. Thus, purchasers were likely to
exercise great care, even though both parties sold products in the $3 to $23 range. Id.
In Suja Life, the court noted that the allegedly infringing MIGHTY GREENS juice
product, while not expensive in absolute terms at $7 to $14, was more expensive than similar
products. 2016 WL 6157950, at *12 & n.3. Denying the motion for preliminary injunction, the
court found that the relevant market are educated shoppers and will pay a premium for these
nutrient-dense products and are more likely to exercise a higher degree of care. Id.
Here, according to HCR, its coffee is unique, ultra-premium and widely recognized in
coffee circles for its high quality, particularly among super-serious coffee nerds. (Dkt. 10 8,
10-15 & Ex. 1.) HCRs customers pay a premium for high-quality beans and brews, and at $3
for a small regular cup of coffee and up to $25 for a 12 ounce bag of coffee beans, HCRs
products are priced at the high end of the coffee market. (Camden Decl. 38.) HCR encourages
its customers care and discernment by offering coffee cupping clinic[s] ($30 per student),
featuring palette training, and coffee home-brewing classes ($40 per student) to teach
consumers how best to brew HCRs premium coffee beans. (Hoff Decl. 12 & Exs. 10, 11.)
Customers who care enough about their coffee to attend cupping clinics and coffee-brewing
classes take care when selecting their coffee drinks and in purchasing bags of coffee.
Similarly, Heart Pizza targets discerning foodies, and focuses on neighborhoods with
repeat customers, rather than high foot-traffic areas such as upscale malls. (Camden Decl. 3,
20-22.) Heart Pizza does not sell pizza by the slice, focusing instead on high-quality, quick serve
pizza. (Id. 23; Lynch Decl. 3.) Positive feedback from food and restaurant influencers on
social media and the strength of Mr. Camdens other brands motivate customers to try Heart
Pizza. (Camden Decl. 17.) Customers who seek out Heart Pizzas high-quality product are
94016474.3 0065473-00001
attentive to what they consume, and are making a choice to visit Heart Pizza rather than similar
gourmet fast-casual restaurants a block or two away like Grassa, Lardo, or Boxer Ramen.
(Camden Decl. 20; Hoff Decl. 3 & Ex. 2.) See Horos v. Locol, LLC, No. CV148065
MWFMRWX, 2015 WL 12656946, at *8 (C.D. Cal. Feb. 11, 2015) (purchaser care at take-out
restaurants weighed slightly against confusion); Newport Pac. Corp. v. Moe's Sw. Grill, LLC,
No. 05-995 KI, 2006 WL 2811905, at *15 (D. Or. Sept. 28, 2006) (choice of fine dining and fast
casual restaurants, a cut above the typical fast food restaurant is not simply impulse buying and
degree of care weighs against confusion).
Because coffee and pizza are not closely related, even if the Court was to conclude that
the level of purchaser care was low, such a determination would be of little relevance to the
overall likelihood of confusion analysis. E.g., Stonefire Grill, 987 F. Supp. 2d at 1055 (holding
that customer care was an inconsequential factor in finding no likelihood of confusion between
STONEFIRE GRILL for restaurant services and STONEFIRE for bread sold at retail, due to
dissimilarity of goods). Even a customer exercising a low degree of care will have no difficulty
distinguishing pizza and coffee. In any event, customers of both parties are actually quite
discerning and careful, and are especially unlikely to confuse HCRs coffee shops and Heart
Pizzas pizzerias. The purchaser care factor weighs against a likelihood of confusion.
7. The Fact that Both Parties Rely on Ubiquitous Trade Channels Does Not
Suggest A Likelihood of Confusion.
HCR argues that the marketing channels factor suggests a likelihood of confusion merely
because HCR relies upon word-of-mouth and social media to promote its services, and it
assumes Heart Pizza does the same. (Mtn. at 14.) HCR makes that assumption because every
consumer-facing brand relies on word of mouth and social media promotion. In the Ninth
Circuit, the parties joint use of ubiquitous trade channels is not material to the likelihood of
94016474.3 0065473-00001
confusion analysis. Network Automation, 638 F.3d at 1151 (Today it would be the rare
commercial retailer that did not advertise online, and the shared use of a ubiquitous marketing
channel does not shed much light on the likelihood of consumer confusion.).
The same reasoning now applies to social media promotion. For example, in Nordstrom,
2013 WL 1196948, at *7 & n.3, a plaintiff argued that social media promotion should be treated
as a niche marketing channel, and not like ubiquitous Internet marketing. The court rejected this
argument, applying Network Automation and concluding that social media is used as a routine
vehicle for most Internet marketing strategies today, and thus concluded that marketing
channels did not favor confusion, despite the parties shared use of Facebook, YouTube, and
Twitter. Id.; see also TPW, 2016 WL 6216879, at *8 (applying Network Automations holding to
now ubiquitous use of social media, including Facebook, YouTube, and Twitter, as well as the
parties appearing on search results together on Google); see also Camden Decl. 18 (unaware
of any fast-gourmet restaurant in Portland that does not use the Internet and social media as
primary marketing channels).
In contrast, the lone case relied upon by HCR, (Mtn. at 14) involved a very different
situation. In Quia Corp. v. Mattel, Inc., No. C 10-1902 JF (HRL), 2011 WL 2749576, at *4
(N.D. Cal. July 14, 2011), the court suggested that overlapping trade channels might potentially
favor the plaintiff not merely because both parties relied on social media promotion, as HCR
contends, but because both parties relied on the same niche tactics, that is social media tie-ins
with so-called mommy bloggers. Id. Here, Heart Pizza is not targeting super-serious coffee
nerds for its social media promotions (Dkt. 10, Ex. 1), nor is HCR targeting pizza-lovers.
94016474.3 0065473-00001
8. As Properly Analyzed, the Expansion Factor Does Not Support A

Likelihood of Confusion Here.
HCR argues that if the court concludes that pizzerias and coffee shops do not directly
compete, then the likelihood of future expansion factor favors a finding of likely confusion. In
doing so, HCR focuses myopically on the word expansion to argue that the mere fact that
Heart Pizza plans to expand the number of its pizzeria locations tips that Sleekcraft factor in
HCRs favor. (Mtn. at 16-17.) HCRs argument misconstrues the expansion factor. In
actuality, the expansion factor asks whether either party has concrete plans to expand into
direct competition with the other, not whether they may get bigger. Official Airline Guides, Inc.
v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993) (explaining that plaintiffs argument on this factor
based on potential expansion in unrelated markets misses the point. The question is whether the
parties are likely to compete with a similar product in the same market.).
Here, adding coffee to Heart Pizzas menu is inherently inconsistent with its business
plan to build a brand around serving fast, high quality and reasonably priced pizza. (Camden
Decl. 23.) Heart Pizzas narrow menu (pizza, salad, local wine and beer, and pop) is consistent
with other concepts executed by Mr. Camden, each of which features a particular food, whether
it be hamburgers, donuts, or ramen, and the beverages that complement that food. (Id.) Coffee
is not consumed with garlic, cheese and tomatoes, and is rarely consumed during the hours Heart
Pizza does the majority of its business. (Id.) Accordingly, not only does Heart Pizza have no
plans to offer coffee, but doing so would undermine its business. (Id.)
Nor is there anything in the record suggesting that HCR is preparing add pizza ovens
alongside its elaborate coffee brewing machines. HCR hints that it may in the future expand the
small assortment of prepared food delivered each day to its coffee shops by a third party vendor,
but is silent about undertaking the significant regulatory and logistical hurdles it would have to
94016474.3 0065473-00001
overcome to start cooking fresh foods in its coffee shops. (See Camden Decl. 29; c.f. Dkt. 10
5.) Moreover, vague, generalized speculation about future activity does not constitute evidence
of plans to complete directly in the future. Surfvivor, 406 F.3d at 634 (holding plaintiffs
conclusory self-serving statements about potential future expansion insufficient). Finally, HCR
cites no authority in support of its argument that mere growth is relevant to this factor. (Mtn. at
16-17.) Since neither party plans to expand into the others product line, the expansion factor
weighs against a finding of a likelihood of confusion.
9. The Fact That Both Parties Happen to Have A Location in Portlands

Popular West End Neighborhood Does Not Favor A Likelihood of Confusion.
Finally, HCR seeks to add a ninth factor to the analysis, arguing that although not
traditionally considered, geographic proximity favors a likelihood of confusion merely because
both parties happen to have one of their locations in Portlands West End neighborhood. HCRs
geographic proximity argument, however, rests entirely on cases where the parties provided
identical goods or services. As discussed above, see supra Section II.B.2, the opposite is true
here. Defendants pizza and plaintiffs coffee products are as different as plaintiffs information
directory and marketing services and defendants legal services in Ketab Corp. v. Mesriani Law
Grp., No. 214CV07241RSWLMRW, 2015 WL 12655670, at *3 (C.D. Cal. Feb. 6, 2015). In
that case, the plaintiff alleged an overlapping customer base: plaintiff served Iranians outside of
Iran, specifically Iranian-Americans in Southern California, and defendant, a Los Angeles law
firm, advertised via radio and television programs directed to the Iranian community in the same
geographic area. Id. at *1-2. Notwithstanding these facts, the court dismissed the complaint
because the services were unrelated. Id. at *3. The dispositive principle in Ketab applies here:
an overlapping customer base cannot create a likelihood of confusion where the goods or
services are clearly distinct. See also Murray v. Cable Natl Broad. Co., 86 F.3d 858, 861 (9th
94016474.3 0065473-00001
Cir. 1996) (affirming dismissal of trademark infringement claims because the plaintiffs man-on-
the-street polling services and defendants TV polling reports were unrelated).
HCRs geographic proximity argument also primarily relies on cases from circuits that,
unlike the Ninth Circuit, require analysis of whether the parties operate in the same geographic
market in addition to analyzing whether the goods or services are competitive or otherwise
closely related. Brennan's, Inc. v. Brennan's Rest., L.L.C., 360 F.3d 125, 134 (2d Cir. 2004)
(analyzing geographic proximity as a sub-factor of the proximity of the products factor).
The two cases cited by HCR from the Ninth Circuit simply do not support HCRs
arguments. In denying the Michigan golf courses motion to exclude the Idaho golf courses
evidence of geographic separation at trial, the Idaho Golf court did not assert that geographic
proximity alone could cause confusion as to unrelated goods and services. Idaho Golf v.
TimberStone Mgmt., LLC, No. 1:14-cv-00233, 2016 WL 5340302, at *4 (D. Idaho Sept. 21,
2016). In Mastro's, the court found that genuine issues of fact precluded summary judgment of
no infringement where defendants steakhouse competed with plaintiffs steakhouse in the same
city and named itself Dominicks after Dominick Mastro, the family patriarch and namesake of
plaintiffs Mastros Restaurant. Mastros Rests. LLC v. Dominick Grp. LLC, No. CV 11-1996-
PHX-PGR, 2012 WL 2091535, at *7 (D. Ariz. June 11, 2012). Neither case supports HCRs
argument that customers are likely to confuse a pizzeria and a coffee shop merely because they
operate in the same popular neighborhood.
10. On Balance, the Sleekcraft Factors Establish that HCR is Unlikely to Prevail
on the Merits.
The Sleekcraft factors, are not a scorecard, a bean-counter, or a checklist and individual
factors will be more or less important in each individual case, and the focus must be on what the
analysis of the factors reveals about whether consumer confusion is likely, overall. Icebreaker,
94016474.3 0065473-00001
911 F. Supp. 2d at 1103 (citation omitted). Here, the critical factors making confusion unlikely
are the dissimilarity of pizza and coffee, and the lack of close similarity between the parties
marks in commercial context. In addition, the crowded field of other restaurant and coffee shops
using heart in their names (including in Portland) and the sophistication of both parties
customers, make confusion highly unlikely. Just as significant, HCR cannot succeed on either of
the two factors that HCR asserts as trump cards, actual confusion and junior users intent.
Because HCR is unlikely to succeed in showing trademark infringement, its preliminary
injunction motion should be denied.
C. The Balance of Hardships Weighs Heavily Against a Preliminary Injunction.
In addition to proving irreparable harm and a likelihood of success on the merits, HCR
must make a clear showing that the balance of equities tips in [its] favor. Herb Reed, 736 F.3d
at 1247 (quoting Winter, 555 U.S. at 20). The Court 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 Prod. Co. v. Vill. of Gambell, 480 U.S. 531, 542
(1987)). Thus, HCR must make a clear showing that any harm HCR would suffer during
litigation absent an injunction outweighs the harm Heart Pizza would suffer due to an injunction.
HCR offers no evidence that it will be harmed in any way during the pendency of the
litigation absent entry of a preliminary injunction, assuming harm instead. See supra Section
III.A. HCR claims that it has invested significant time, capital, and human resources in
building its HEART brand, (Mtn. at 20 (quotation marks omitted)), but offers no evidence that
this investment would be lost or eroded if an injunction is not entered.7 See, e.g., VBS, 2017 WL
7
HCR supports its claim that its investment in its own brand is material here by quoting
from Adidas America, Inc. v. Skechers USA, Inc., 149 F. Supp. 3d 1222 (D. Or. 2016). In that
case, however, the plaintiffs investment in its brand was relevant because the alleged infringer
94016474.3 0065473-00001
2404919, at *5 (limited harm to defendant, in requiring re-labeling of goods, outweighed lack of
any concrete evidence of harm to trademark plaintiff in the absence of preliminary injunction);
Young, 2016 WL 6781200, at *5-6 (balance of equities weighed against preliminary injunction
where plaintiff failed to show any evidence of non-speculative harm arising from alleged
ongoing trademark infringement). HCR offers no proof of lost sales, lost goodwill, or other
actual harm it would suffer absent an injunction. (See Mtn. at 18-20.)
In contrast, if the Court enjoins defendants from using the Heart Pizza brand, they would
be forced to immediately close all three current Heart Pizza locations and stop the process of
opening new restaurants. Without the Heart Pizza brand, defendants would have to reconceive
the businesss mission from scratch. Heart Pizzas founders would seek to develop another
concept that could work in the spaces it currently has under lease, but it is not at all clear that
they could come up with another strong concept and brand for pizza in order to recoup
defendants significant investment in leases, pizza ovens and the design and build-out of
pizzerias. At a minimum, defendants pizzerias would have to remain closed pending selection
of a new name, development of a new logo, acquisition of a new domain name, and building out
a brand, a website and a social media presence. That process would take several months at least,
and potentially much longer. (Camden Decl. 30-31.)
Heart Pizza has 30 employees and is hiring more. If it is enjoined from using its name
and logo, defendants would lay off at least 20 to 25 current Heart Pizza employees for as long as
the pizzerias remain closed, making them ineligible for benefits. Id. 33. If the restaurants
could not be re-opened under a new concept, defendants would have to buy out of the current
was a direct competitor taking away sales and eroding prices with lower-quality shoes with
knock-off designs. Id. at 1248-50. HCR offers no similar evidence of how it will allegedly be
harmed absent a preliminary injunction.
94016474.3 0065473-00001
leases, and if any new concept developed did not involve pizza, they would need to remove and
sell the pizza ovens and other concept-specific equipment and fixtures. Id. 31.
If defendants are preliminarily enjoined from using the Heart Pizza name and logo, they
will never go back to using them, even if they ultimately prevailed in the litigation. Changing
the brand name and logo a year after it was announced and eight months after operations began,
would be a marketing nightmare. Changing back again a couple of years later is unthinkable
from a branding perspective. Defendants are in the business of building restaurant concepts tied
to a brand, and cannot bounce back and forth between brands. (Camden Decl. 35.)
Enjoining defendants from using the name and logo during the pendency of the case
would cause the company to permanently stop using the Heart Pizza brand, thereby abandoning
all goodwill developed in that brand. The current value of the Heart Pizza brand is about $5 to
$6 million. All of that value and the investment of time, creativity, and capital that created it,
would be lost upon entry of a preliminary injunction. Camden Decl. 36. See First Franklin
Fin. Corp. v. Franklin First Fin., Ltd., 356 F. Supp. 2d 1048, 1055 (N.D. Cal. 2005) (balance of
hardships weighed against injunction where, among other things, injunction would cause the
defendant to lose all goodwill it had earned in its name).
Perhaps understanding the significant harm entry of a preliminary injunction would do to
defendants, HCR argues that any hardship to defendants must be ignored because they
knowingly infringed HCRs trademark. (Mtn. at 20.) The case HCR cites, Adidas America, Inc.
v. Skechers USA, Inc., 149 F. Supp. 3d 1222 (D. Or. 2016), however, does not support HCRs
argument here. In that case, the court relied on strong evidence that Skechers acted intentionally
to deceive consumers, including by referencing Adidas trademarks in the source code of the
relevant pages of Skechers website, and by deceptively trading on Adidas goodwill on other
94016474.3 0065473-00001
products. Id. at 1244-45. Only on the basis of such intentional deceit did the court discount
harm to Skechers arising from an injunction in balancing the equities. Id. at 1250. In contrast,
the evidence here does not suggest that defendants intended to confuse consumers or trade on
HCRs goodwill among coffee drinkers, but rather that Heart Pizza and Mr. Camden acted in
good faith. In any event, HCRs argument puts the cart before the horse. A key factor courts
must consider in balancing the equities is the potential harm if the Court turns out to be wrong in
its predictions, and improperly denies a meritorious injunction or grants an unmeritorious
injunction. Planet Coffee Roasters, Inc. v. Hung Dam, No. SACV 09-00571-MLG, 2010 WL
625343, at * 6-7 (C.D. Cal. Feb. 18, 2010). Because there is a risk that infringement may not
ultimately be found in this case, harm to defendants from an injunction that turns out not to be
meritorious must be considered in weighing the equities.
HCRs motion for a preliminary injunction should be denied because HCR has not shown
that the balance of hardships tips in its favor. In the event a preliminary injunction is entered,
HCR should be required to post a bond of at least $5 million based on the costs, lost business,
and lost goodwill that defendants would incur. (Camden Decl. 36.)
D. The Public Interest Disfavors A Preliminary Injunction.
As the final element for a preliminary injunction, HCR must make a clear showing that
the requested injunction serves the public interest. Herb Reed, 736 F.3d at 1247. HCR argues
that it is likely to succeed on the merits, and thus the public interest against consumer confusion
favors a preliminary injunction. (Mtn. at 20-21.) As discussed above, HCR has not shown that it
will likely succeed on the merits, and its public interest argument also fails.
Regardless of how the likelihood of success on the merits element is resolved, however,
competing public interests strongly weigh against a preliminary injunction in this case, and
94016474.3 0065473-00001
provide yet another basis to deny HCRs motion. If a preliminary injunction is granted and
Heart Pizza shuts its doors, the donations to charity baked into the Heart Pizza concept will also
disappear from the community. Based on what Heart Pizzas three current pizzerias are donating
now, and considering both the interest in adding Heart Pizza restaurants and its principals
experience opening new stores, by 2019 Heart Pizza could produce total charitable donations of
$360,000 to $500,000 per year. (Camden Decl. 34.) All that will be lost if defendants are
preliminarily enjoined from using the Heart Pizza brand. In addition, granting HCRs motion
would put at least 20-25 people out of work, without pay or benefits while defendants pizzerias
are shuttered, all contrary to the public interest. See, e.g., Denny's, Inc. v. Kennedy Rests.,
L.L.C., No. CV-09-0741-PHX-SRB, 2009 WL 10673493, at *4 (D. Ariz. Sept. 15, 2009) (public
interest weighed against preliminary injunction in trademark infringement and franchise
agreement action where restaurant employees would be put out of work by granting injunction).
For these reasons, the public interest also weighs against entry of the requested
preliminary injunction.
III. CONCLUSION
For all the above reasons, HCRs preliminary injunction motion should be denied.
DATED: September 7, 2017.
STOEL RIVES LLP
/s/ Steven T. Lovett

STEVEN T. LOVETT, OSB No. 910701
steve.lovett@stoel.com
NATHAN C. BRUNETTE, OSB No. 090913
nathan.brunette@stoel.com
ELLIOTT J. WILLIAMS, OSB No. 144835
elliott.williams@stoel.com
Telephone: 503.224.3380
Attorneys for Defendants
94016474.3 0065473-00001

Heart Pizza Response

Enviado por

Dados do documento

Direitos autorais

Formatos disponíveis

Compartilhar este documento

Compartilhar ou incorporar documento

Opções de compartilhamento

Você considera este documento útil?

Este conteúdo é inapropriado?

Direitos autorais:

Formatos disponíveis

Heart Pizza Response

Enviado por

Direitos autorais:

Formatos disponíveis

Case 3:17-cv-01297-YY Document 16 Filed 09/07/17 Page 1 of 43

Steven T. Lovett, OSB No. 910701

Attorneys for Defendants

UNITED STATES DISTRICT COURT

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

HEART PIZZA, LLC, an Oregon limited REQUEST FOR ORAL ARGUMENT

Page 1 - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION

TABLE OF AUTHORITIES ......................................................................................................... ii

Page i - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION

C. The Balance of Hardships Weighs Heavily Against a Preliminary

Page ii - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION

Adidas America, Inc. v. Skechers USA, Inc.,

Alpha Indus., Inc. v. Alpha Steel Tube & Shapes, Inc.,

AMF Inc. v. Sleekcraft Boats,

Amoco Prod. Co. v. Vill. of Gambell,

Brennan's, Inc. v. Brennan's Rest., L.L.C.,

Caribbean Marine Servs. Co. v. Baldridge,

Cohn v. Petsmart, Inc.,

Dahl v. Swift Dist., Inc.,

Denny's, Inc. v. Kennedy Rests., L.L.C.,

First Franklin Fin. Corp. v. Franklin First Fin., Ltd.,

Fleischmann Distilling Corp. v. Maider Brewing Co.,

Flynt Distrib. Co. v. Harvey,

Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc.,

Herbalife Int'l, Inc. v. Lumene N. Am. LLC,

Horos v. Locol, LLC,

Icebreaker Ltd. v. Gilmar S.P.A.,

Icon Enters. Intl, Inc. v. Am. Prods. Co.,

Idaho Golf v. TimberStone Mgmt., LLC,

iFreedom Direct Corp. v. McCormick,

Isle of Capri Casinos, Inc. v. Flynt,

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

Ketab Corp. v. Mesriani Law Grp.,

Lindy Pen Co. v. Bic Pen Corp.,

M2 Software, Inc. v. Madacy Entmt,

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

Mastros Rests. LLC v. Dominick Grp. LLC,

Matrix Motor Co. v. Toyota Jidosha Kabushiki,

Page iv - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION

Miss World (UK) Ltd. v. Mrs. Am. Pageants, Inc.,

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

Murray v. Cable Natl Broad. Co.,

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

Newport Pac. Corp. v. Moe's Sw. Grill, LLC,

Nordstrom, Inc. v. NoMoreRack Retail Gr., Inc.,

Oculu, LLC v. Oculus VR, Inc.,

Official Airline Guides, Inc. v. Goss,

One Indus., LLC v. Jim O'Neal Distrib., Inc.,

Pedego, LLC v. All. Wholesalers, Inc.,

Pizzeria Uno Corp. v. Temple,

Planet Coffee Roasters, Inc. v. Hung Dam,

Quia Corp. v. Mattel, Inc.,

Rodeo Collection, Ltd. v. W. Seventh,

Page v - RESPONSE IN OPPOSITION TO PRELIMINARY INJUNCTION MOTION

Ross v. Target Corp.,

San Miguel Pure Foods Co. v. Ramar Intl Corp.,

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

Stonefire Grill, Inc. v. FGF Brands, Inc.,

Suja Life, LLC v. Pines Intl, Inc.,

Surfvivor Media, Inc. v. Survivor Prods.,

Titaness Light Shop, LLC v. Sunlight Supply, Inc.,

TPW Management, LLC v. Yelp, Inc.,

TravisMatthew, LLC v. Leisure Socy Unlimited, LLC,

U.S. Philips Corp. v. KBC Bank,