Ex Parte Application For TRO (Co v. Brilliant) With Tables

1 ERIKSON LAW GROUP
David Alden Erikson (SBN 189838)

Dae@daviderikson.com
S. Ryan Patterson (SBN 279474)
3 Ryan@daviderikson.com
200 North Larchmont Boulevard
4 Los Angeles, California 90004
Telephone: 323.465.3100
5 Facsimile: 323.465.3177
2
6 Attorneys for Plaintiff
200 NORTH LARCHMONT BOULEVARD
E R I K S O N L AW G R O U P
CO COLLECTION LLC
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION
10
11 CO COLLECTION, LLC, a California
Case No. CV13-7919
12
Hon. R. Gary Klausner
13
14
limited liability company,

Plaintiff,
v.
BRILLIANT DESIGN, LLC, a New
15 Jersey limited liability company; and

16
17
DOES 1 through 10,
Defendants.
EX PARTE APPLICATION FOR

TEMPORARY RESTRAINING
ORDER AND FOR ORDER TO
SHOW CAUSE WHY
PRELIMINARY INJUNCTION
SHOULD NOT ISSUE;
MEMORANDUM OF POINTS AND
AUTHORITIES
18
19
TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD
20
PLEASE TAKE NOTICE that Plaintiff Co Collections LLC (Co) will, and
21 hereby does, apply ex parte to this Court, pursuant to Rule 65 of the Federal Rules
22 of Civil Procedure and Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)) for a
23 Temporary Restraining Order and Order to Show Cause Why a Preliminary
24 Injunction Should Not Issue, enjoining Defendant Brilliant Design LLC
25 (Brilliant), and all those acting in concert and participation therewith, from doing,
26 committing, abiding, causing or abetting any of the following: (a) using either of the
27 trademarks Co or C in commerce, and/or (b) engaging in any acts or activities
28 which in any way further represent, publish, broadcast, or disseminate to customers
of Co any false statements relating to Cos trademark rights, including specifically

APPLICATION FOR TRO AND OSC RE PRELIMINARY INJUNCTION
1 the assertion that Cos use of the Co mark infringes of any trademark of Brilliant.
2
A.
Grounds
Co has been using its Co mark since July 2011 for its clothing line, and has
4 built substantial name recognition. Brilliant subsequently registered the mark C for
5 clothing, claiming a first use after Cos. Despite the fact that this straightforwardly
6 gives Co exclusive rights to Co and confusingly similar marks, Brilliant has
7 contacted Cos largest customer, Barneys New York, and made bad faith threats to
8 sue the department store for trademark infringement. Barneys has indicated that it
9 will have to drop the Co line and return all goods (which would bankrupt Co) if this
10 matter is not resolved immediately. Unfortunately, Brilliant will not release Barneys
11 without extortionate concessions, including the right to do business in the future
12 under the C mark, brand (and even use the mark Co, which it has never used
13 before).
14
This application is based on the grounds that (i) Co has the exclusive right to
15 use the trademark Co and confusingly similar marks, (ii) Brilliants use of the C
16 trademark is likely to cause confusion in the marketplace, and (iii) Brilliants
17 assertions to third parties that Co is infringing its trademark constitutes trade libel
18 under the Section 43(a) of the Lanham Act.
19
B.
Good Cause For Emergency Relief
20
Good cause exists for issuance of a TRO prohibiting Brilliant from contacting
21 Cos customers because Co faces imminent demise if Brilliant makes even one
22 further phone call to Barneys, in that its largest customer has already indicated that
23 it will cease doing business with Co as a result of Brilliants bad faith threats, absent
24 immediate resolution of this dispute.
25
Good cause exists for issuance of a TRO prohibiting any new use by Brilliant
26 of the Co or C trademarks because any such use would irreparably damage Cos
27 reputation and goodwill in that Co would have no ability to control the nature and
28 quality of goods in the marketplace bearing its mark. Further, it is clear that any
judgment against Brilliant, as a small company with no goods in the marketplace,

1 would be uncollectible.
2
C.
Specific Relief Sought
Co seeks an Order from the Court:
1.
Temporarily restraining Brilliant and its alter egos, subsidiaries and/or
5 parent organizations, affiliates, officers, agents, servants, employees, members, and

6 all persons in active concert or participation with it from doing, committing,
7 abiding, causing or abetting any of the following: (a) using the C or Co trademarks
8 in commerce, and/or (b) engaging in any acts or activities which in any way further
9 represent, publish, broadcast, or disseminate to customers of Co any false statements

10 relating to Cos trademark rights (including specifically the assertion that Cos use
11 of the Co mark infringes of any trademark of Brilliant.
12
2.
Ordering Brilliant to show cause why a preliminary injunction should
13 not issue to enjoin Brilliant and its alter egos, subsidiaries and/or parent
14 organizations, affiliates, officers, agents, servants, employees, members, and all
15 persons in active concert or participation with it from such practices as described
16 above.
17
D.
Notice of this Application
18
Advance informal notice of the time, date and substance of this application
19 was given to Jonathan Bick, counsel for Brilliant, on November 18, 2013. A copy of
20 such email notice can be found in the concurrently filed Declaration of David
21 Erikson. In such notice, counsel for Co offered to delay filing this Application if
22 Brilliants counsel felt he required an extra day to oppose, and to further explain the
23 bases for this Application on the telephone, so that Brilliants counsel could begin
24 work on an Opposition. Brilliants counsel (who has not yet formally appeared in the
25 case) did not respond in any manner. Nevertheless, Co did delay an extra day in
26 order to provide notice and further explanation to Brilliant itself, due to the silence
27 and lack of a formal appearance by counsel. Accordingly, advance informal notice
28 of the time, date and substance of this application was given to counsel for Brilliant
Jonathan Bick on November 19, 2013 and directly to Brilliant on November 20,
1 2013. In the past week, Co has agreed (with new counsel for Brilliant) to further
2 extending the filing this Application on a day-to-day basis while the parties met and
3 conferred. New counsel for Brilliant has agreed to accept service of this
4 Application.
5
E.
Bases for this Application
This application is based on the accompanying memorandum of points and
7 authorities, declarations and accompanying evidence of Stephanie Danan and David

8 Erikson, such matters of which the Court may take judicial notice, and such
9 evidence and argument as may be presented at the hearing.

10
F.
Contact Information of Brilliants Counsel
11
Brilliants counsel is Mark Geragos and Benjamin Meiselas of the firm
12 Geragos & Geragos. Their contact information is as follows:

13
GERAGOS & GERAGOS
14
Historic Engine Co. No. 28
15
644 South Figueroa Street
16
Los Angeles, CA 90017-3411
17
mark@geragos.com, meiselas@geragos.com
18
(213) 625-3900
19 DATED: November 26, 2013

20
21
22
ERIKSON LAW GROUP

By:
____________________________
S. Ryan Patterson
Attorneys for Plaintiff CO COLLCTION, LLC
23
24
25
26
27
28
II.
TABLE OF CONTENT
III.
I.
INTRODUCTION..................................................................................................................
II.
STATEMENT OF FACTS......................................................................................................
A. Co Is A Fledgling But Promising Product LineKnown To The Public And To
The Industry As Co.................................................................................................
B.
1.
Cos Relationship With Barneys Is Largely Responsible For Its Success

........................................................................................................................
2.
Co Shows It First Used The Co Mark In July 2011............................................
3.
The Public And Industry Know Co as Co...........................................................
Brilliant Registered The Mark C, But Is Not Currently Selling Anything..................

1.
Brilliant Registered The C Mark......................................................................
2.
Brilliant Is Planning To Sell C Branded Goods Again.....................................
C.
Last Month, Brilliant Began Threatening BarneysAnd Barneys Will Drop

Co This Week Unless This Matter Is Resolved..........................................................
D.
Notice Of This Application............................................................................................
III.
STANDARD FOR A TRO...................................................................................................
IV.
A TRO PROHIBITING Brilliants use of the C (AND CO) Trade NameS Is

WARRANTED.....................................................................................................................
A. Co Will Succeed On The Merits Of Its Trademark Claim...........................................
V.
1.
As Senior User, Co Enjoys A Valid Protectable Mark......................................
2.
C Is Likely To Be Confused With Co.............................................................
3.
The Other Sleekcraft Factors Suggest A Likelihood Of Confusion..................
B.
Co Would Suffer Irreparable Harm Absent the TRO...................................................
C.
The Balance Of Equities Tips Decidedly In Cos Favor..............................................
D.
An Injunction Would Further The Public Interest........................................................
A TRO ENJOINING BRILLIANT FROM CONTACTING COS CUSTOMERS IS

WARRANTED.....................................................................................................................
A. Co Will Succeed On The Merits Of Its Trade Libel Claim..........................................
1.
Co May Continue To Use The Co Mark........................................................
2.
Brilliants Conduct Constitutes Unfair Competition (Trade Libel) Under

The Lanham Act...........................................................................................

B.
Co Would Suffer Irreparable Harm Absent the TRO...................................................
C.
The Balance Of Equities Tips Decidedly In Cos Favor..............................................
D.
Public Interest...............................................................................................................
VI.
BRILLIANTS WAIVER ARGUMENT FAILS..................................................................
VII.
JURISDICTION...................................................................................................................
VIII.
CONCLUSION....................................................................................................................
TABLE OF AUTHORITIES
Cases
Advanced Reading Solutions, LLC v. VRVV, Inc., Trademark Tr. & App. Bd. June 26, 2009, 2009
WL 4075426 CANCELLATION 9204585..........................................................................12
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 n. 10 (9th Cir. 1979)...........................................13
Applied Info. Sciences Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th Cir. 2007)................................10
Art of Living Foundation v. Does, 10-CV-05022-LHK, 2011 WL 2441898 (N.D. Cal. June 15,
2011).....................................................................................................................................16
Barone v. Rich Bros. Interstate Display Fireworks Co., 25 F3d 610, 615 (8th Cir. 1994)..............19
BellSouth Adv. & Pub. Co. v. Real Color Pages, Inc., 792 F. Supp. 775, 781 (M.D. Fla. 1991).....12
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1046-47 (9th
Cir. 1999)..............................................................................................................................11
Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477478 (1985)...................................................19
Central Hudson Gas & Electric v. Public Serv. Commn, 447 U.S. 557, 563-64 (1980)................17
Earth Island Institute v. Carlton, 626 F3d 462, 475 (9th Cir. 2010)................................................14
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 394 (2006).......................................................13
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002)........................................12
Erlich v. Etner, 224 Cal. App. 2d 69 (1964)....................................................................................16
Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 994 (9th Cir. 2011)......................10
GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir 2000)............................11, 12, 13
Granny Goose Foods, Inc. v. Brotherhood of Teamsters & Auto Truck Drivers, 415 U.S. 423, 439
(1974)...................................................................................................................................10
In re Nuova Castelli S.P.A, Trademark Tr. & App. Bd. October 27, 2004, 2004 WL 2619564.......12
KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608 (9th Cir. 2005)....12
Laser Diode Array, Inc. v. Paradigm Lasers, Inc., 964 F. Supp. 90, 95 (W.D.N.Y. 1997)..............17
Minebea Co., Ltd. v. Papst, 13 F. Supp. 2d 35, 38-39 (D.D.C. 1998)..............................................17
New West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 120001 (9th Cir.1979)................................11
Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1394 (9th Cir.1993)..........................................13
Processed Plastic Co. v. Warner Commc'n, Inc., 675 F.2d 852, 858 (7th Cir. 1982).......................14
Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996).....................................11
Soloflex, Inc. v. NordicTrack, Inc., CIV. 93-545-JE, 1994 WL 568401 (D. Or. 1994).....................17
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774, 112 S. Ct. 2753 (1992).........................11
Vandelune v. 4B Elevator Components Unlimited, 148 F3d 943, 947 (8th Cir. 1998)....................19
Vuitton et Fils S.A. v. J. Young Enterprises, 644 F.2d 769, 77576 (9th Cir.1981)..........................11
Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 24 (2008)..............................14, 15
World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297298 (1980)...................................19
Zenith Electronics Corporation v. Exzec, Inc., 182 F.3d 1340, 1348 (Fed. Cir. 1999)..............16, 17
Statutes
15 U.S.C. 1057(b).........................................................................................................................10
15 U.S.C. 1115(a)..........................................................................................................................10
15 U.S.C. 1125(a).....................................................................................................................16, 17
Treatises
4 Callman, Unfair Competition, Trademarks and Monopolies 88.3(b), at 205 (3d ed. 1970)......14
Id.
16
J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition 16.03 (3d ed.1996) 11
McCarthy on Trademarks, Vol. 5, 27:6 27:10..........................................................................16
MEMORANDUM OF POINTS AND AUTHORITIES

I
INTRODUCTION
Brilliant can put Co out of business with one more phone call to its largest
customer Barneys. Indeed, as Brilliant knows, it can put Co out of business by doing
nothing and refusing to release Barneys in the next few daysgiven the stridency of
its prior and still-pending bad faith threats of litigation. This matter is an emergency
because Brilliant is demanding extortionate concessions to not put Co out of
businessa fate that can be probably averted with either or both of two simple
prohibitions designed to preserve the status quo. Moreover, granting a short-term
TRO would not harm Brilliant in the least.
Co holds unassailable rights in the trademark Co1 with respect to clothing,
because it can easily demonstrate that it has been using the mark in commerce since
well before Brilliants claimed first use. And this is no technicality: to extensive
marketplace presence, advertising, media coverage and prominent placement in
stores like Barneys, the public understands Co to refer to Co.
Brilliant is acting as a trademark troll in this matter. Because it happens to
hold a clothing trademark registration for the word Capplied for well after Co
was established in the marketplaceit threatens to destroy the fledgling Plaintiff
unless a ransom is paid. It makes this threat even though its legal position is wrong.
And Brilliant is making good on that threat: it has already contacted Cos top
customer to falsely allege trademark infringement, and threaten a lawsuit unless
money is paid. While sympathetic, Barneys has indicated it will indeed drop Co in
order to avoid litigation. While Barneys CEO and COO have temporarily
reconsidered, they have made clear to Co (and unfortunately to Brilliant as well) that
the store will indeed remove Co if this matter is not resolved within a few days
and that was a few days ago. Hence this application. Barneys has made clear that the
1 In this Memorandum, all trademarks are referred to in italics. Co the Plaintiff can
thus be easily distinguished from Co the mark.
1
only way to remain in the store permanently is to get a release from Brilliant.
Because Brilliants price for such a release is currently extortionate, a TRO is Cos
only hope.
Worse, Brilliant is apparently set to launch a line bearing the Co mark (not
even just C). More than a monetary settlement, it wants to extort from Co the
exclusive right to do so. Indeed, that is precisely the current ransom Brilliant
demands to allow Co to remain in existence. But such a move would be intolerable.
Not only would it be a misappropriation of more than two years of Cos hard-won
good will, it would defraud the public.
The Court should enjoin both of the brazenly opportunistic plans. More
specifically,
The Court should enjoin any use by Brilliant of the trademarks Co or
C for clothing, because Cos rights are superior as the senior user.
The Court should enjoin Brilliant from further harassment of Cos
customers, including Barneys.
Neither of these orders would harm Brilliant in the least. It is not currently
selling C products; so nothing needs to be removed from the marketplace. And it
certainly cannot complain about a temporary ban on harassing Cos customers with
bad faith threats (the falsity of which can be demonstrated with near certainty here).
Finally, this matter is an emergency because a monetary judgment could never
adequately compensate Co. The value at stake in this casean invaluable
relationship with prestigious retailer Barneysis intangible and impossible to
quantify. Further, it is clear that any judgment against Brilliant, as a small company
with no goods in the marketplace, would be uncollectible.
IV.
A.
STATEMENT OF FACTS
Co Is A Fledgling But Promising Product LineKnown To The

Public And To The Industry As Co
In late 2010, Stephanie Danan and Justin Kern (who live together
romantically in Los Angeles) started a clothing line they called Co. [Declaration
2
of Stephanie Danan, 2.] By Summer 2011, their clothing was being sold in a
number or stores around the country. [Id.] Their largest customer is the iconic
department store Barneys New Yorkby far the most prestigious fashion retailer in
the nation. [Id. 13.]
1.
Cos Relationship With Barneys Is Largely Responsible For Its
Success
The history of the Co line is the history of its relationship with Barneys. As an
opening gambit to get its new business noticed, Co placed an advertisement on the
fashion website Style.com (then the website of Vogue Magazine) on February 3rd,
2011. [Danan Decl. 8, Exh. B.] It turned out to be a good idea: within a few hours
of its release, the editor of Style.com called to say that representatives of Barneys
had requested Cos contact information. [Id. 9.] The next day, Barneys emailed
Danan and Kern to say that they loved the clothing and wanted to set up a buying
appointment for the following week in New York. [Id.] Danan and Kern were over
the moon: being sold at Barneys meant not only sales, but also instant legitimacy
and viability. [Id.]
Danan and Kern flew to New York and (spending more than they could
afford) took a hotel room at The Mercer Hotel to show the collection to the Barneys
team. [Id. 10.] Upon seeing the clothing in person, Barneys buyer Molly Nutter
reported that she would place Co on Barneys exalted designer flooralong with
the most famous luxury brands in the world. [Id.] This was truly incredible news:
There are few small new brands of the designer floorand Cos target audience and
indeed the entire industry would certainly take notice. [Id.]
Placement on Barneys designer floor can quickly define a brand. Danan and
Kern began to design for and cater to Barneys luxury market clientele. [Id. 53.]
Indeed, when Barneys gives feedback about what it might want to see next season,
Co listens. [Id.] Even unspoken feedback provided by Barneys decision on what to
buy and what not to buy greatly influences Cos designing choices. [Id.] Co also
turned away interest from other department stores and popular mass-market
3
boutiques in order hone its image as a Barneys brand. [Id. 51.] Barneys is by far
Cos largest customer, making up over 25% of total sales. [Id. 52, 59.]
2.
Co Shows It First Used The Co Mark In July 2011
From the beginning, Cos clothing has borne the Co mark, which appears on
the clothings labels and hangtags. [Id. 2., Exh A.] It appears all over Cos website,
and all promotional literature such as Cos brandbook. [Id. 22, Exh. G.] Exhibits
to the Danan Declaration clearly show that the mark Co has always been the
primary trademark and source identifier for Cos goods; and that such mark was in
wide use as early as July 2011.
The declaration establishes:
Deliveries of Co goods were made to Barneys and other stores in July
2011. [Danan Decl. 17, Exhibit D (invoices showing delivery dates).]
Those first deliveries went to stores in New York, Los Angeles, Miami,
Michigan, Oklahoma, and Chicagoas well as stores in Europe and
Asia. [Id.]
Such goods bore a Co label. [Id. 16, Exh. C (purchase order for
Co labels, showing exemplar, and related documents).]
3.
The Public And Industry Know Co as Co
For purposes of this Application, Cos use of the Co name in 2011 is allimportant because it established priority of use. But to show how a misappropriation
of the name by Brilliant would defraud the public, its also important to show that
the company is well known as Co within the industry and to consumers.
The press, stores and the public have always referred to the brand as Co.
[Danan Decl. 9, 10, 22-24, 63; Exhs. E, F, G, H, U-GG.]2 Cos designs have been
2 On August 17, 2011, Co filed an application with the United States Patent and
Trademark Office for the mark Co Collection for clothing. [Erikson Decl. 27.] This
application was granted and the mark was registered on December 11, 2012, registration
number 4258627. Cos attorney counseled the Company to apply for the mark Co
4
featured (and referred to as Co) in the fashion industry press, including The New
York Times, Elle Magazine, W Magazine, Womens Wear Daily and Style.com. [Id. 2,
63, Exhs. U-GG.]

Similarly, Cos customers have referred to the brand exclusively as Co. For
example, a window display at Barneys Beverly Hill store dedicated to the brand
identifies it as Co. [Id. 22, Exh. E.] In correspondence with Co, the companys
customers refer to the brand as Co. [Id. 24, Exh. F.] Throughout promotional
materials featuring the Companys goods, the brand is referred to as Co. [Id. 24,
Exh. G.] And in-store displays at Barneys consistently identify the brand as Co.
[Id. 24, Exh. H.] The Companys website (www.co-collections.com) has clearly
identifies the brand solely as Co since its inception in January 2011. [Id. 24, Exh.
G.]
B.
Brilliant Registered The Mark C, But Is Not Currently Selling
Anything
Brilliant previously sold at least a handful of clothing pieces under the name
C at Urban Outfitters stores. [Erikson Decl. 31.] One can find almost nothing
about C on the Internet. [Id. Exh. U.] C has not appeared in the market for over
six months and was clearly abandoned. [Id.] Urban Outfitters customer service
representatives and store personnel indicate that while it once sold C, the store
does so no longer and does not expect to do so again. [Id.; Danan Decl. 27.]
Collection rather than Co, reasoning that the trademark office was very unlikely to
register Co, especially in International Class 025. [Erikson Decl. 27.] Indeed, Co and its
counsel were quite surprised to learn that the USPTO issued a trademark in Class 25 for
Cand continues to submit that this was a mistake. For simplicity, Co will largely
ignore its own trademark registration in this brief, even though it provides a separate basis
for the propriety of its using the Co mark. Rather, it will confine itself for the time being
to the very simple and dispositive priority of use argument.
5
1.
Brilliant Registered The C Mark
On May 14, 2012, when Co had been prominently sold in stores around the
country for almost a year, Brilliant filed a trademark application for the mark C.
[Erikson Decl. 4, Exh. A.] In this application, which applied to clothing, Brilliant
states that its first use of this mark occurred on February 1, 2012 and its first use of
this mark in commerce occurred on February 27, 2012. [Id.] The mark was
registered on January 8, 2013. [Id.]
2.
Brilliant Is Planning To Sell C Branded Goods Again
Brilliant refuses to acknowledge that it is not selling todaybut that much is

more or less obvious from Brilliants inability to cite a single store selling it, and
from its lack of presence on the internet or in Urban Outfitters. [Danan Decl. 27;
Erikson Decl. 31, Exh. U (attaching everything that can be found on the Internet
relating to C).]
In recent correspondence described more fully below, Brilliant has indicated
that it intends to use the C mark again. [Danan Decl. 35, Exh. N.] As part of this
controversy, it has demanded that it have the exclusive right to use Cowith or
without an umlautgoing forward. [Id.] This in spite of the fact that such a change
would obviously result in consumer confusion. [Danan Decl. 36.] In addition,
although she provides no examples, Brilliants owner Janine Donen claims, my
buyers are confused by your use of CO at Barneys and I am under a legal obligated
[sic] to stop it. [Id. 35, Exh. N.]
C.
Last Month, Brilliant Began Threatening BarneysAnd Barneys
Will Drop Co This Week Unless This Matter Is Resolved

On October 23, 2013, Co received an email from Jennifer Sunwoo, its buyer
at Barneys, informing them that Barneys legal department had received a cease and
desist letter from Brilliants attorney, Jonathan Bick. [Danan Decl. 24, Exh. J.] Mr.
Bick asserted that the Co mark infringed on his clients C trademark and
demanded cessation of sales. [Id.; Erikson Decl. 2, Exh. A.] Much to Danan and
Kerns alarm, Ms. Sunwoo informed them that Barneys would be removing Cos
6
goods from both retail stores around the country and from its website, absent an
immediate resolution. [Danan Decl. 24, Exh. J; Erikson Decl. 2, Exh. A.]
Cos counsel David Erikson responded by contacting Barneys general
counsel, Marc Perlowitz, explaining that Mr. Bicks position was laughable, both
factually and legally. [Erikson Decl. 3.] While sympathetic, Mr. Perlowitz
expressed that Barneys did not want to get involved in litigation, meritorious or not
and that without a prompt resolution Barneys would have no choice but to stop
selling the line. [Id.]
In light of the impending disaster faced by Co, Mr. Erikson emailed Brilliants
counsel, Jonathan Bick, informing Mr. Bick that he represented Co and explaining
that his legal position was wrong because, among other things, Co had been using
the Co mark prior to Brilliants first use of C. [Erikson Decl. 5, Exh. B.] Mr.
Erikson also explained that Mr. Bicks baseless legal threats threatened to damage
Cos relationship with Barneys and with that relationship, its entire business. [Id.]
For example, on October 24, Mr. Erikson wrote to Mr. Bick:
We have a valid trademark and a valid right to use Co marka right that is
superior to your clients. Is your client even doing business? Your harassment
of Barneys constitutes interference (at best). My client is a small brand. Its
not impossible that Barneys would simply drop them rather than deal with
your unreasonable demands. If that happens, you and your client are
responsible. [.] And the fact that you doubled down on that harassment after
I informed you of our trademark is outrageous. [Id. 10, Exh. F.]
Over the next month, Brilliants counsel continued to threaten Barneys.
Barneys has continued to indicate that it is just days away from dropping the Co line
as a result, and it appears the stores patience is finally nearing an end. Brilliant has
continued to use the threat of such a calamity as means to make extortionate
demands on Co. The following is a brief summary of that story, which is laid out in
detail in the Erikson and Danan Declarations.
From October 23 to October 28, Brilliant refused to justify it legal position
or communicate in any way with Co. Instead, it threatened to sue Barneys
unless the store agreed to pay 10% of its gross revenue on Co sales.
[Erikson Decl. 5-9, 17, Exhs. B-E.]
7
From November 8 to November 20, Brilliants owner Janine Donen

communicated directly with Danan and Kernwhile Mr. Bick continued
to steadfastly refuse to speak to Cos counsel. [Danan Decl. 34-50.] Ms.
Donen was happy to engage in a laymans discussion of trademark law,
although she got in conveniently wrongpretending that Brilliants C
trademark gave it the uncontroversial exclusive right to use that and even
the Co mark. [Id. 35, Exh. N.] Ms. Donen demanded $55,000 to release
Barneys and put an end to Cos existential emergency. [Id. 43, Exh. P.]
But more outrageously, she demanded that she also have the future right to
use both the C and Co marks, while Co would only be allowed to do
business under the mark Co Collection. [Id. 35, Exh. N.] That exclusive
right to use Co is extremely valuable because it comes with a good portion
of Cos earned good will. [Id. 36.] As the deadline for a responsive
pleading in this lawsuit grew near, and especially once Co noticed this ex
parte application on November 18 [Erikson Decl. 27], Ms. Donen
dropped her monetary demand but continued to demand the exclusive right
to use Co. [Danan Decl. 50, Exh. O.] Danan and Kern found this option
intolerable, especially because it would defraud the public and ruin its
brand. [Danan Decl. 36.]
From November 20 to the present, Brilliants new counsel Geragos and

Geragos led negotiations. [Erikson Decl. 29.] They have continued to
insist that Brilliant have the exclusive right to use Co. [Id.] When they
eventually had to take a position on the merits of Cos priority of use
argument, as part of the meet and confer process for this application, they
advanced the positionalmost as untenable as Ms. Donensthat Co had
somehow abandoned its rights to Co by not opposing Brilliants trademark
application. [Id.]
D.
Notice Of This Application
Brilliant has had ample notice of this application. Erikson first gave notice to
8
Mr. Bick on November 18, and then directly to Ms. Donen on November 20 (since
no attorney had appeared and Bick would not communicate with Erikson). [Erikson
Decl. 27, 28, Exhs. S, T.] Because the notice to Ms. Donen precipitated some
mildly hopeful communications, Co held off filing the Application on a day-to-day
basis. On November 20, Co heard from Brilliants new attorney, Ben Meiselas of
Geragos and Geragos. [Erikson Decl. 29.] Meiselas asked for an extension of time
to file a responsive pleading an opportunity to meet and confer on the Application.
[Id.] Co and Erikson agreed to not file this Application until November 25, in
exchange for Brilliants agreement to be ready to litigate this matter if a TRO was
sought (by agreeing not to argue against issuance of a TRO on the basis that it did
not have sufficient time to respond). [Id.] On Friday, November 22, Co received an
ominous email from Ms. Vitale or Barneys asking for an update on this matter. [Id,
30.] In addition, although Mr. Meiselas has been helpful and communicative, it is
clear that his client will not back off its (demonstrably false) legal position and nor
will it release Barneys. [Id, 30.]
V.
STANDARD FOR A TRO
A temporary restraining order is designed to preserve the status quo and

prevent irreparable harm until a hearing on a preliminary injunction. Granny Goose
Foods, Inc. v. Brotherhood of Teamsters & Auto Truck Drivers, 415 U.S. 423, 439
(1974). The factors considered in ruling on a temporary restraining order mirror
those on motions for a preliminary injunction: In order to obtain such injunctive
relief, a plaintiff must establish that he is likely to succeed on the merits, that he is
likely to suffer irreparable harm in the absence of preliminary relief, that the balance
of equities tips in his favor, and that an injunction is in the public interest. Flexible
Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 994 (9th Cir. 2011). This is
commonly referred to as the four-factor test.
VI.
A TRO PROHIBITING BRILLIANTS USE OF THE C (AND CO)

TRADE NAMES IS WARRANTED
A.
Co Will Succeed On The Merits Of Its Trademark Claim

9
A plaintiff may show that it is likely to succeed on the merits of its trademark
infringement claim under the Lanham Act by establishing that (1) it has a valid,
protectable trademark, and (2) defendants use of the mark is likely to cause
confusion. See Applied Info. Sciences Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th
Cir. 2007). Co will succeed on the merits of its trademark infringement claim
because there is no question it was the senior user, and because C is obviously
confusingly similar to Co.
1.
As Senior User, Co Enjoys A Valid Protectable Mark
It is the basic tenet of U.S. trademark law that the first to use a mark earns the
right to use it and exclude othersregardless of federal registration. While
registration of a trademark constitutes prima facie evidence of validity and the
exclusive right to use the mark (15 U.S.C. 1057(b); 1115(a)), another user can
rebut this presumption by showing (by a preponderance standard) that it used the
mark in commerce first, because ownership is governed by priority of use.
Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036,
1046-47 (9th Cir. 1999); Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219
(9th Cir.1996) (It is axiomatic in trademark law that the standard test of ownership
is priority of use. To acquire ownership of a trademark it is not enough to have
invented the mark first or even to have registered it first; the party claiming
ownership must have been the first to actually use the mark in the sale of goods or
services.), cert. denied, 521 U.S. 1103, (1997); see also J. Thomas McCarthy, 2
McCarthy on Trademarks and Unfair Competition 16.03 (3d ed.1996); Vuitton et
Fils S.A. v. J. Young Enterprises, 644 F.2d 769, 77576 (9th Cir.1981)
(preponderance standard). The first to use a mark is deemed the senior user and
has the right to enjoin junior users from using confusingly similar marks. New
West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 120001 (9th Cir.1979).
Co establishes above that it was first to use the Co mark. It has shown
evidence of sales shipments to Barneys and other stores in July 2011. [Danan Decl.
15, Exh. D.] It has shown that the clothing delivered and sold in stores bore the Co
10
mark. [Id, 2, 20, 22, Exhs. A, E, H.] Brilliant claims a first use of the mark later, in
February of 2012. [Erikson Decl. 4, Exh. A.]
2.
C Is Likely To Be Confused With Co
There is no question that C infringes Co. In other words, a consumer would

likely confuse goods labeled C as coming from Co.
Trademarks and service marks are protected under the Lanham Act, and under
the common law, to protect business goodwill and to enable consumers to
distinguish among competing producers. See Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 774, 112 S. Ct. 2753 (1992). The most important factor in
determining likelihood of confusion is the similarity of the marks themselves.
Similarity of the marks is a critical question in analyzing the likelihood of
confusion. See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir
2000). The greater the similarity between the two marks, the greater the likelihood
of confusion. Id. at 1206. When, as here, the products offered under the marks are
closely related, an even lesser degree of similarity is required to support a showing
of likelihood of confusion. BellSouth Adv. & Pub. Co. v. Real Color Pages, Inc., 792
F. Supp. 775, 781 (M.D. Fla. 1991).
The addition of an umlaut or other diacritical mark does little or nothing to
distinguish a mark. Advanced Reading Solutions, LLC v. VRVV, Inc., Trademark Tr.
& App. Bd. June 26, 2009, 2009 WL 4075426 CANCELLATION 9204585 (umlaut
not very significant in distinguishing marks); In re Nuova Castelli S.P.A,
Trademark Tr. & App. Bd. October 27, 2004, 2004 WL 2619564 (TIRAMIS with
the diacritical mark is legally equivalent to TIRAMISU without the diacritical
mark).
3.
The Other Sleekcraft Factors Suggest A Likelihood Of Confusion
The Ninth Circuit considers the following factors, known as Sleekcraft

factors, in determining whether likelihood of confusion exists (1) strength of the
mark, (2) proximity or relatedness of the goods, (3) similarity of the marks, (4)
evidence of actual confusion, (5) marketing channels used, (6) degree of care
11
customers are likely to exercise in purchasing the goods, (7) defendants intent in
selecting the mark, and (8) likelihood of expansion into other markets. KP
Permanent MakeUp, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608 (9th Cir.
2005). In addition to the third similarity of marks factor treated above, all of the
other factors either tip in favor of a finding of likelihood of confusion.
Strength of Mark. On the spectrum of trademark strength, Co is at very
least a suggestive markone that requires imagination, thought and
perception to reach a conclusion as to the nature of goods. See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002).
Such a mark receives trademark protection without proof of secondary
meaning. Id.
Relatedness. The goods are clearly related: both parties sell clothing.
Actual Confusion. Co does not submit evidence or actual confusion
mostly because C was only sold at one store and thus was not
particularly visible. However, Brilliant itself asserts actual confusion
between the brands.
Marketing Channels. Convergent marketing channels increase the
likelihood of confusion. Official Airline Guides, Inc. v. Goss, 6 F.3d 1385,
1394 (9th Cir.1993). Both Co and Brilliant sell in independent clothing
stores.
Degree of Customer Care. Courts have found that the ordinary purchaser
presumably takes more care in purchasing expensive items that she buys
infrequently, than in buying everyday, relatively inexpensive items. See
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 n. 10 (9th Cir. 1979).
Intent. Here, there is every indication that Brilliants re-launching of a C
or Co brand is a brazen attempt to benefit from Cos good will.
Expansion. This factor is not applicable because the parties are already in
the same industry.
B.
Co Would Suffer Irreparable Harm Absent the TRO

12
Its not difficult to demonstrate irreparable injury in trademark cases. Indeed,

until the Supreme Courts decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S.
388, 394 (2006), irreparable injury was presumed. See GoTo.com, Inc. v. Walt
Disney Co., 202 F.3d 1199, 1205 n.4. (9th Cir. 2000).
Because eBay was a patent case, some courts and commentators argue that the
presumption of irreparable harm still applies in the trademark context. Co need not
engage in this academic debate, because irreparable harm is manifest in this instance
for many of the same reasons that the presumption originally applied. As the
Seventh Circuit has explained damages occasioned by trademark infringement are
by their very nature irreparable and not susceptible of adequate measurement for
remedy at law. Processed Plastic Co. v. Warner Commc'n, Inc., 675 F.2d 852, 858
(7th Cir. 1982). One of the reasons that trademark infringement is by its nature
irreparable is the inability of a trademark owner to control the nature and quality of
the defendant's goods. 4 Callman, Unfair Competition, Trademarks and
Monopolies 88.3(b), at 205 (3d ed. 1970).
This same reasoning leads to the conclusion that Co would be irreparable
injured if Brilliant were allowed to sell goods labeled C in the marketplace. Cos
hard-earned good will would be ruined if Brilliant were allowed to produce its own
goods under the same mark. Co is a luxury brand, and the appearance of lower
quality goods in the marketplace would irreparably tarnish its luxury allure.
C.
The Balance Of Equities Tips Decidedly In Cos Favor
Before a preliminary injunction may issue, the court must identify the harm
that a preliminary injunction might cause the defendant and weigh it against
plaintiff's threatened injury. The real issue in this regard is the degree of harm that
will be suffered by the plaintiff or the defendant if the injunction is improperly
granted or denied. See Winter v. Natural Resources Defense Council, Inc., 555 U.S.
7, 24 (2008); Earth Island Institute v. Carlton, 626 F3d 462, 475 (9th Cir. 2010).
Here, the balance of hardships easily tips in Cos favor. The grave injury that
would result from a proper injunction not issuing is detailed above. More important,
13
Brilliant would suffer no injury if enjoined (even wrongfully enjoined) because it is

not currently using its C mark. Presumably, its production of goods to be labeled
C (or Co) is in processand thus no goods would have to be removed from the
marketplace. And Because Brilliant has not been using the mark, changing it would
be of little consequencebecause it has not yet built recognition in the marketplace.
D.
An Injunction Would Further The Public Interest
In exercising their sound discretion, courts of equity pay particular regard for
the public consequences in employing the extraordinary remedy of injunction.
Winter, supra, 555 U.S. at 24 (2008). Trademark infringement is by its very nature a
deception of the public as to the source of goods or services. Brilliants use of the
C or Co mark is misleading because it would tend to make the public believe that
its goods are actually made by the much more recognized Copreventing the public
from making an informed purchase decision. This, issuance of this TRO would
serve to protect both Cos interests as well as the interests of consumers.
VII. A TRO ENJOINING BRILLIANT FROM CONTACTING COS
CUSTOMERS IS WARRANTED
Section 43(a) of the Lanham Act prohibits false statements about competitors
products. A number of courts have found that bad faith allegations of intellectual
property infringement violate Section 43(a) under its plain meaning.
A.
Co Will Succeed On The Merits Of Its Trade Libel Claim

1.
Co May Continue To Use The Co Mark
Above, Co established that its first use of the Co mark entitles it to continuing
exclusive rights. A watered down and even less controversial version of this same
proposition is that Co can continue to use the Co mark as it has been since 2011
(whether or not it has the right to exclude others). Thus, whether or not Brilliant is
an infringer, Brilliants statements that Co is an infringer are demonstrably false. As
described above, Cos counsel made this simple point from the very beginning of
this dispute.
14
2.
Brilliants Conduct Constitutes Unfair Competition (Trade Libel)
Under The Lanham Act.
By contacting Co customer and falsely asserting trademark infringement,

Brilliant violates the Lanham Acts prohibition of trade libel. The common law tort
of trade libel is defined as an intentional disparagement of the quality of property,
which results in pecuniary damage to plaintiff. Erlich v. Etner, 224 Cal. App. 2d 69
(1964). Its elements are (1) a publication, (2) which induces others not to deal with
plaintiff, and (3) special damages. Art of Living Foundation v. Does, 10-CV-05022LHK, 2011 WL 2441898 (N.D. Cal. June 15, 2011).
The Lanham Act prohibits the use of false or misleading representations of
the nature, characteristics, qualities, or geographic origin of goods or services in
connection with commercial advertising or promotion. 15 U.S.C. 1125(a), often
referred to as Section 43(a). Prior to 1989, this prohibition applied only to
misrepresentations concerning ones own product and trade libel claims. McCarthy
on Trademarks, Vol. 5, 27:6 27:10. Effective in 1989, the Acts prohibition was
broadened to include claims of trade libel and disparagement of a competitors
product. Id. Thus, the Lanham Act now provides a vehicle for federal court assertion
of trade libel claims under Section 43(a). Id.
To state a cause of action for trade libel under the Lanham Act, a plaintiff
must prove: (1) that the defendant, in promoting its goods, made a false or
misleading statement of fact about plaintiffs goods; (2) that the statement actually
deceives or is likely to deceive its audience; (3) the deception is likely to influence
purchasing decisions; (4) the defendant caused the statement to enter interstate
commerce; and (5) the statement results in actual or probable injury to the plaintiff.
Zenith Electronics Corporation v. Exzec, Inc., 182 F.3d 1340, 1348 (Fed. Cir. 1999).
A bad faith assertion of infringement (which can be thought of as a
disparaging of partys intellectual property rights) constitutes trade libel under the
Lanham Act. Id. at 1347, 1348. In Zenith, the defendant had contacted the plaintiffs
potential customers and represented that the customers faced liability because the
15
plaintiffs goods violated certain of defendants patents. As here, the plaintiff

claimed not only that there was no infringement, but also that the defendant knew as
muchand on that basis brought a Section 43(a) trade libel claim. The defendant
challenged this straightforward though somewhat novel use of Section 43(a), on the
ground that a patent holder has a right to assert his patent. The court had no problem
reconciling an intellectual property holders rights with the proscriptions of the
Lanham Act: While patent holders can certainly assert their rights, such conditional
privilege does not apply to bad faith assertionsand thus there is no problem in
saying that bad faith assertions violate Section 43(a). Id. at 1354.
Other cases are in accord. See e.g., Minebea Co., Ltd. v. Papst, 13 F. Supp. 2d
35, 38-39 (D.D.C. 1998) (a false patent infringement claim made by the defendant
to the plaintiffs customers may violate 1125(a)); Laser Diode Array, Inc. v.
Paradigm Lasers, Inc., 964 F. Supp. 90, 95 (W.D.N.Y. 1997) ([t]here is case
authority that allegations that a party falsely represented to a businesss customers
that the business was infringing on the partys patent rights will support [a Lanham
Act claim]).
Defendants actions present a textbook case of such trade libel. Defendants
contacted Barneys New York, a highly prestigious fashion retailer and Plaintiffs
biggest customer, falsely accusing Plaintiff of trademark infringement. Further, they
did so even after being informed that Plaintiff s superior trademark rights. Indeed,
upon being so informed, Defendants refused to give up their infringement claims
and in fact redoubled their efforts to exact a payment based on disproven claims.
B.
Co Would Suffer Irreparable Harm Absent the TRO
Co can easily demonstrate irreparable harm: If Brilliant calls Barneys again,

Co will likely lose Barneys as a customer and a result go out of business.
District courts have power to grant injunctive relief in Lanham Act actions to
prevent a violation of Section 43(a). Soloflex, Inc. v. NordicTrack, Inc., CIV. 93-545JE, 1994 WL 568401 (D. Or. 1994). Enjoining false commercial speech does not
violate the First Amendment prohibition on prior restraints. Central Hudson Gas &
16
Electric v. Public Serv. Commn, 447 U.S. 557, 563-64 (1980).

C.
The Balance Of Equities Tips Decidedly In Cos Favor
In contrast to the great harm Co would suffer in the absence of an injunction,

Brilliant would suffer no injury if enjoined from continuing its illegal and baseless
threats to sue Barneys.
D.
Public Interest
The public interest would be served by the TRO requested by Co. Such a
TRO would prevent a popular consumer choice from being removed from the
marketplace for no good legal reason. The public is also served by enforcement of
the Lanham Acts prohibition of false statements in the marketplace.
VIII. BRILLIANTS WAIVER ARGUMENT FAILS
During the meet and confer process which preceded this Application,
Brilliants counsels only counterargument to Cos priority of use argument was that
Co had somehow given up its exclusive right to the Co mark by failing to oppose
Brilliants application to register the C mark. But there is no legal authority for this
proposition. And indeed, if Brilliants legal assertion were correct, there would be no
such thing as a trademark cancellation proceeding based on priority of usewhich
by definition is a means to cancel a trademark registration after it has been
registered (and thus one that survived the opportunity for a senior user to oppose).
IX.
JURISDICTION
Brilliant is subject to personal jurisdiction in California because it sold goods

bearing the CO mark throughout California, as recently as six months ago. Indeed,
representatives of Urban Outfitters confirm that C goods were certainly sold in in
all thirty-eight Urban Outfitters stores in the state. [Erikson Decl. 31.]
Further, Brilliant has indicated that it intends to continue to sell goods,
presumably nation-wide and in California. [Id. Exh. A; Danan Decl. 35, Exh. N.]
Finally, Brilliant boasts of a $500,000 promotional campaign; and given that it sold
in California one can draw the conclusion that such advertising was aimed at this
state. [Erikson Decl. 2 Exh. A; Danan Decl. 24, Exh. J.]
17
This is certainly sufficient for limited jurisdiction. Limited or specific

personal jurisdiction requires a showing that:
The out-of-state defendant purposefully directed its activities toward
residents of the forum state or otherwise established contacts with the
forum state;
Plaintiff's cause of action arises out of or results from the defendant's
forum-related contacts; and
The forum's exercise of personal jurisdiction in the particular case must be
reasonablei.e., comports with fair play and substantial justice.
Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477478 (1985).
Cases in the product liability context make clear that a manufacturer or
national distributor (as distinguished from a retailer or local distributor) may be
subject to personal jurisdiction wherever a product is sold. It is enough that the
manufacturer or distributor purposefully attempts to serve a market in the forum
state. Local courts may properly assert personal jurisdiction over a corporation that
delivers its products into the stream of commerce with the expectation that they will
be purchased by consumers in the forum state. World-Wide Volkswagen Corp. v.
Woodson, 444 U.S. 286, 297298 (1980). Thus, jurisdiction may be upheld where
the manufacturer sells a product to a distributor with knowledge it will be shipped to
the ultimate buyer in the forum state. Barone v. Rich Bros. Interstate Display
Fireworks Co., 25 F3d 610, 615 (8th Cir. 1994).
(W)hen a foreign manufacturer pour(s) its products into a regional
distributor with the expectation that the distributor will penetrate a discrete, multiState trade area, the manufacturer has purposefully reaped the benefits' of the laws
of each State in that trade area for due process purposes. Vandelune v. 4B Elevator
Components Unlimited, 148 F3d 943, 947 (8th Cir. 1998) (emphasis added).
X.
CONCLUSION
For the reasons stated, the Court should issue the requested temporary
restraining orders.
18
DATED: November 26, 2013
ERIKSON LAW GROUP

By:
____________________________
S. Ryan Patterson
Attorneys for Plaintiff CO COLLCTION, LLC
19

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1 ERIKSON LAW GROUP

David Alden Erikson (SBN 189838)

6 Attorneys for Plaintiff

200 NORTH LARCHMONT BOULEVARD

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

Case No. CV13-7919

Hon. R. Gary Klausner

limited liability company,

BRILLIANT DESIGN, LLC, a New

15 Jersey limited liability company; and

DOES 1 through 10,