ERIKSON LAW GROUPDavid Alden Erikson (SBN 189838) Dae@daviderikson.comS. Ryan Patterson (SBN 279474) Ryan@daviderikson.com200 North Larchmont BoulevardLos Angeles, California 90004Telephone: 323.465.3100Facsimile: 323.465.3177

Attorneys for Plaintiff CO COLLECTION LLC

UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

Co collection, llc, a California limited liability company,

Plaintiff,

v.

brilliant design, llc, a New Jersey limited liability company; and DOES 1 through 10,

Defendants.

Case No. CV13-7919

Hon. R. Gary Klausner

Ex Parte Application for Temporary Restraining Order and for Order to Show Cause Why Preliminary Injunction should not Issue; MEMORANDUM OF POINTS AND AUTHORITIES

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORDPLEASE TAKE NOTICE that Plaintiff Co Collections LLC (Co) will, and hereby does, apply ex parte to this Court, pursuant to Rule 65 of the Federal Rules of Civil Procedure and Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)) for a Temporary Restraining Order and Order to Show Cause Why a Preliminary Injunction Should Not Issue, enjoining Defendant Brilliant Design LLC (Brilliant), and all those acting in concert and participation therewith, from doing, committing, abiding, causing or abetting any of the following: (a) using either of the trademarks Co or C in commerce, and/or (b) engaging in any acts or activities which in any way further represent, publish, broadcast, or disseminate to customers of Co any false statements relating to Cos trademark rights, including specifically the assertion that Cos use of the Co mark infringes of any trademark of Brilliant.GroundsCo has been using its Co mark since July 2011 for its clothing line, and has built substantial name recognition. Brilliant subsequently registered the mark C for clothing, claiming a first use after Cos. Despite the fact that this straightforwardly gives Co exclusive rights to Co and confusingly similar marks, Brilliant has contacted Cos largest customer, Barneys New York, and made bad faith threats to sue the department store for trademark infringement. Barneys has indicated that it will have to drop the Co line and return all goods (which would bankrupt Co) if this matter is not resolved immediately. Unfortunately, Brilliant will not release Barneys without extortionate concessions, including the right to do business in the future under the C mark, brand (and even use the mark Co, which it has never used before). This application is based on the grounds that (i) Co has the exclusive right to use the trademark Co and confusingly similar marks, (ii) Brilliants use of the C trademark is likely to cause confusion in the marketplace, and (iii) Brilliants assertions to third parties that Co is infringing its trademark constitutes trade libel under the Section 43(a) of the Lanham Act.Good Cause For Emergency ReliefGood cause exists for issuance of a TRO prohibiting Brilliant from contacting Cos customers because Co faces imminent demise if Brilliant makes even one further phone call to Barneys, in that its largest customer has already indicated that it will cease doing business with Co as a result of Brilliants bad faith threats, absent immediate resolution of this dispute. Good cause exists for issuance of a TRO prohibiting any new use by Brilliant of the Co or C trademarks because any such use would irreparably damage Cos reputation and goodwill in that Co would have no ability to control the nature and 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, would be uncollectible.Specific Relief SoughtCo seeks an Order from the Court:1.Temporarily restraining Brilliant and its alter egos, subsidiaries and/or parent organizations, affiliates, officers, agents, servants, employees, members, and all persons in active concert or participation with it from doing, committing, abiding, causing or abetting any of the following: (a) using the C or Co trademarks in commerce, and/or (b) engaging in any acts or activities which in any way further represent, publish, broadcast, or disseminate to customers of Co any false statements relating to Cos trademark rights (including specifically the assertion that Cos use of the Co mark infringes of any trademark of Brilliant.2. Ordering Brilliant to show cause why a preliminary injunction should not issue to enjoin Brilliant and its alter egos, subsidiaries and/or parent organizations, affiliates, officers, agents, servants, employees, members, and all persons in active concert or participation with it from such practices as described above.Notice of this ApplicationAdvance informal notice of the time, date and substance of this application was given to Jonathan Bick, counsel for Brilliant, on November 18, 2013. A copy of such email notice can be found in the concurrently filed Declaration of David Erikson. In such notice, counsel for Co offered to delay filing this Application if Brilliants counsel felt he required an extra day to oppose, and to further explain the bases for this Application on the telephone, so that Brilliants counsel could begin work on an Opposition. Brilliants counsel (who has not yet formally appeared in the case) did not respond in any manner. Nevertheless, Co did delay an extra day in order to provide notice and further explanation to Brilliant itself, due to the silence and lack of a formal appearance by counsel. Accordingly, advance informal notice 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, 2013. In the past week, Co has agreed (with new counsel for Brilliant) to further extending the filing this Application on a day-to-day basis while the parties met and conferred. New counsel for Brilliant has agreed to accept service of this Application.Bases for this ApplicationThis application is based on the accompanying memorandum of points and authorities, declarations and accompanying evidence of Stephanie Danan and David Erikson, such matters of which the Court may take judicial notice, and such evidence and argument as may be presented at the hearing.Contact Information of Brilliants CounselBrilliants counsel is Mark Geragos and Benjamin Meiselas of the firm Geragos & Geragos. Their contact information is as follows:GERAGOS & GERAGOSHistoric Engine Co. No. 28644 South Figueroa StreetLos Angeles, CA 90017-3411mark@geragos.com, meiselas@geragos.com(213) 625-3900DATED: November 26, 2013ERIKSON LAW GROUPBy: ____________________________ S. Ryan Patterson Attorneys for Plaintiff CO COLLCTION, LLC12345678910111213141516171819202122232425262728

Erikson Law Group200 NORTH LARCHMONT BOULEVARDLOS ANGELES, CALIFORNIA 90004Tel 323.465.3100 Fax 323.465.3177

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plaintiffs reply in support of demurrer and motion to strikeegligence

application for tro and osc re preliminary injunction

1

application for tro and osc re preliminary injunction

TABLE OF CONTENTSI.INTRODUCTION1II.STATEMENT OF FACTS3A.Co Is A Fledgling But Promising Product LineKnown To The Public And To The Industry As Co31.Cos Relationship With Barneys Is Largely Responsible For Its Success32.Co Shows It First Used The Co Mark In July 201143.The Public And Industry Know Co as Co5B.Brilliant Registered The Mark C, But Is Not Currently Selling Anything61.Brilliant Registered The C Mark62.Brilliant Is Planning To Sell C Branded Goods Again6C.Last Month, Brilliant Began Threatening BarneysAnd Barneys Will Drop Co This Week Unless This Matter Is Resolved7D.Notice Of This Application9III.STANDARD FOR A TRO10IV.A TRO PROHIBITING Brilliants use of the C (AND CO) Trade NameS Is WARRANTED10A.Co Will Succeed On The Merits Of Its Trademark Claim101.As Senior User, Co Enjoys A Valid Protectable Mark102.C Is Likely To Be Confused With Co113.The Other Sleekcraft Factors Suggest A Likelihood Of Confusion12B.Co Would Suffer Irreparable Harm Absent the TRO13C.The Balance Of Equities Tips Decidedly In Cos Favor14D.An Injunction Would Further The Public Interest15V.A TRO ENJOINING BRILLIANT FROM CONTACTING COS CUSTOMERS IS WARRANTED15A.Co Will Succeed On The Merits Of Its Trade Libel Claim151.Co May Continue To Use The Co Mark152.Brilliants Conduct Constitutes Unfair Competition (Trade Libel) Under The Lanham Act.15B.Co Would Suffer Irreparable Harm Absent the TRO17C.The Balance Of Equities Tips Decidedly In Cos Favor18D.Public Interest18VI.brilliants waiver argument fails18VII.jurisdiction18VIII.conclusion20

TABLE OF AUTHORITIESCasesAdvanced Reading Solutions, LLC v. VRVV, Inc., Trademark Tr. & App. Bd. June 26, 2009, 2009 WL 4075426 CANCELLATION 920458512AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 n. 10 (9th Cir. 1979)13Applied Info. Sciences Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th Cir. 2007)10Art of Living Foundation v. Does, 10-CV-05022-LHK, 2011 WL 2441898 (N.D. Cal. June 15, 2011)16Barone v. Rich Bros. Interstate Display Fireworks Co., 25 F3d 610, 615 (8th Cir. 1994)19BellSouth Adv. & Pub. Co. v. Real Color Pages, Inc., 792 F. Supp. 775, 781 (M.D. Fla. 1991)12Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1046-47 (9th Cir. 1999)11Burger King Corp. v. Rudzewicz, 471 U.S. 462, 477478 (1985)19Central Hudson Gas & Electric v. Public Serv. Commn, 447 U.S. 557, 563-64 (1980)17Earth Island Institute v. Carlton, 626 F3d 462, 475 (9th Cir. 2010)14eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 394 (2006)13Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002)12Erlich v. Etner, 224 Cal. App. 2d 69 (1964)16Flexible Lifeline Sys., Inc. v. Precision Lift, Inc., 654 F.3d 989, 994 (9th Cir. 2011)10GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir 2000)11, 12, 13Granny Goose Foods, Inc. v. Brotherhood of Teamsters & Auto Truck Drivers, 415 U.S. 423, 439 (1974)10In re Nuova Castelli S.P.A, Trademark Tr. & App. Bd. October 27, 2004, 2004 WL 261956412KP Permanent MakeUp, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 608 (9th Cir. 2005)12Laser Diode Array, Inc. v. Paradigm Lasers, Inc., 964 F. Supp. 90, 95 (W.D.N.Y. 1997)17Minebea Co., Ltd. v. Papst, 13 F. Supp. 2d 35, 38-39 (D.D.C. 1998)17New West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 120001 (9th Cir.1979)11Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1394 (9th Cir.1993)13Processed Plastic Co. v. Warner Commc'n, Inc., 675 F.2d 852, 858 (7th Cir. 1982)14Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996)11Soloflex, Inc. v. NordicTrack, Inc., CIV. 93-545-JE, 1994 WL 568401 (D. Or. 1994)17Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774, 112 S. Ct. 2753 (1992)11Vandelune v. 4B Elevator Components Unlimited, 148 F3d 943, 947 (8th Cir. 1998)19Vuitton et Fils S.A. v. J. Young Enterprises, 644 F.2d 769, 77576 (9th Cir.1981)11Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 24 (2008)14, 15World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297298 (1980)19Zenith Electronics Corporation v. Exzec, Inc., 182 F.3d 1340, 1348 (Fed. Cir. 1999)16, 17Statutes15 U.S.C. 1057(b)1015 U.S.C. 1115(a)1015 U.S.C. 1125(a)16, 17Treatises4 Callman, Unfair Competition, Trademarks and Monopolies 88.3(b), at 205 (3d ed. 1970)14Id.16J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition 16.03 (3d ed.1996)11McCarthy on Trademarks, Vol. 5, 27:6 27:1016

application for tro and osc re preliminary injunction

MEMORANDUM OF POINTS AND AUTHORITIES1. INTRODUCTIONBrilliant 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 Co[footnoteRef:2] 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. [2: In this Memorandum, all trademarks are referred to in italics. Co the Plaintiff can thus be easily distinguished from Co the mark. ]

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 daysand that was a few days ago. Hence this application. Barneys has made clear that the 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.STATEMENT OF FACTSCo Is A Fledgling But Promising Product LineKnown To The Public And To The Industry As CoIn late 2010, Stephanie Danan and Justin Kern (who live together romantically in Los Angeles) started a clothing line they called Co. [Declaration 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.] Cos Relationship With Barneys Is Largely Responsible For Its SuccessThe 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 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.]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).]The Public And Industry Know Co as CoFor purposes of this Application, Cos use of the Co name in 2011 is all-important 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.][footnoteRef:3] Cos designs have been 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.] [3: 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 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.]

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.]Brilliant Registered The Mark C, But Is Not Currently Selling AnythingBrilliant 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.] Brilliant Registered The C MarkOn 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.]Brilliant Is Planning To Sell C Branded Goods AgainBrilliant 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.] Last Month, Brilliant Began Threatening BarneysAnd Barneys Will Drop Co This Week Unless This Matter Is ResolvedOn 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 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 notand 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.] 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.]Notice Of This ApplicationBrilliant has had ample notice of this application. Erikson first gave notice to 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.]STANDARD FOR A TROA 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. A TRO PROHIBITING Brilliants use of the C (AND CO) Trade NameS Is WARRANTEDCo Will Succeed On The Merits Of Its Trademark ClaimA 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.As Senior User, Co Enjoys A Valid Protectable MarkIt 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 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.] C Is Likely To Be Confused With CoThere 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).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 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 confusionmostly 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.Co Would Suffer Irreparable Harm Absent the TROIts 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 instancefor 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. 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, 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. An Injunction Would Further The Public InterestIn 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.A TRO ENJOINING BRILLIANT FROM CONTACTING COS CUSTOMERS IS WARRANTEDSection 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.Co Will Succeed On The Merits Of Its Trade Libel ClaimCo May Continue To Use The Co MarkAbove, 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. 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-05022-LHK, 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 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.Co Would Suffer Irreparable Harm Absent the TROCo 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. 93-545-JE, 1994 WL 568401 (D. Or. 1994). Enjoining false commercial speech does not violate the First Amendment prohibition on prior restraints. Central Hudson Gas & Electric v. Public Serv. Commn, 447 U.S. 557, 563-64 (1980). The Balance Of Equities Tips Decidedly In Cos FavorIn 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.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.brilliants waiver argument failsDuring 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). jurisdictionBrilliant 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.] 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, multi-State 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).conclusionFor the reasons stated, the Court should issue the requested temporary restraining orders.

DATED: November 26, 2013ERIKSON LAW GROUP

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

17

application for tro and osc re preliminary injunction