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					               Case3:14-cv-01425-CRB Document4 Filed03/28/14 Page1 of 16



 1   Bingham McCutchen LLP
     BREE HANN (SBN 215695)
 2   bree.hann@bingham.com
     Three Embarcadero Center
 3   San Francisco, CA 94111-4067
     Telephone: (415) 393-2000
 4   Facsimile: (415) 393-2286
 5   Bingham McCutchen LLP
     DAVID J. BUTLER
 6   david.butler@bingham.com
     Washington, DC 20006
 7   Telephone: (202) 373-6000
     Facsimile: (202) 373-6001
 8
     Attorneys for Plaintiff
 9   UNION ORTHODOX JEWISH CONGREGATIONS
     OF AMERICA
10

11                                          UNITED STATES DISTRICT COURT

12                                      NORTHERN DISTRICT OF CALIFORNIA

13

14

15   UNION OF ORTHODOX JEWISH                                          CIVIL ACTION NO. __________
     CONGREGATIONS OF AMERICA
16                                                                     MEMORANDUM OF POINTS AND
                         Plaintiff,                                    AUTHORITIES IN SUPPORT OF
17             v.                                                      PLAINTIFF’S MOTION FOR
                                                                       TEMPORARY RESTRAINING
18   URBAN TORTILLA, INC.                                              ORDER AND ORDER TO SHOW
                                                                       CAUSE RE PRELIMINARY
19                       Defendant.                                    INJUNCTION

20

21                                                                     Complaint filed: March 28, 2014

22

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           MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION FOR TEMPORARY
             RESTRAINING ORDER AND ORDER TO SHOW CAUSE RE PRELIMINARY INJUNCTION
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 1                                                   TABLE OF CONTENTS

 2                                                                                                                                      Page

 3   I.       PRELIMINARY STATEMENT........................................................................................ 1
     II.      STATEMENT OF FACTS ................................................................................................ 2
 4
              A.   Orthodox Union and the OU Mark ........................................................................ 2
 5            B.   UT’s Willfully Infringing Activity......................................................................... 3
 6   III.     ARGUMENT ..................................................................................................................... 4
              A.   Orthodox Union is Entitled to a Temporary Restraining Order ............................. 4
 7
              B.   Orthodox Union Has Established a Clear Likelihood of Success on the
 8                 Merits ..................................................................................................................... 5
                   1.      Orthodox Union Has a Strong Likelihood Of Success on the Merits
 9                         of Its Lanham Act Claims .......................................................................... 5
10                         a.          The Marks of the Parties Are Highly Similar ................................ 6
                           b.          The OU Mark is Strong .................................................................. 7
11
                           c.          UT Intentionally Continues to Use the Mark in Bad Faith ............ 7
12                         d.          The Public Does Not Exercise Significant Care When
                                       Purchasing Defendant’s Product .................................................... 8
13
                   2.      Orthodox Union Has a Strong Likelihood of Success on the Merits
14                         of its Trademark Dilution Claim ................................................................ 8
              C.   Orthodox Union Will Be Irreparably Injured If the Requested Relief is
15                 Denied .................................................................................................................. 10
16            D.   The Balance of the Equities Decidedly Favors Orthodox Union ......................... 10
              E.   Ceasing the Infringement Serves the Public Interest ........................................... 11
17
              F.   Immediate Relief Through a Temporary Restraining Order is Necessary ........... 11
18   IV.      CONCLUSION ................................................................................................................ 12
19

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            MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION FOR TEMPORARY
              RESTRAINING ORDER AND ORDER TO SHOW CAUSE RE PRELIMINARY INJUNCTION
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 1                                                 TABLE OF AUTHORITIES

 2

 3                                                                                                                                 Page(s)
 4   Cases
 5   AMF Inc. v. Sleekcraft Boats,
 6     599 F.2d 341(9th Cir. 1979).............................................................................................. 5, 6, 7

 7   Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp.,
        174 F.3d 1036 (9th Cir. 1999)............................................................................................... 7, 8
 8
     California Indep. Sys. Operator Corp. v. Reliant Energy Servs., Inc,
 9      181 F. Supp. 2d 1111 (E.D. Cal. 2001) ..................................................................................... 4
10   Clamp-Swing Pricing Co. v. Super Mkt. Merch. And Supply, Inc.,
        2013 WL 6199155 (N.D. Cal. Nov. 21, 2013)........................................................................ 11
11

12   Cleary v. News Corp.,
        30 F.3d 1255 (9th Cir. 1994)..................................................................................................... 6
13
     E & J Gallo Winery v. Gallo Cattle Co.,
14      967 F.2d 1280 (9th Cir. 1992)................................................................................................... 6
15   Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc.,
        618 F.3d 1025 (9th Cir. 2010)................................................................................................... 6
16
     GoTo.com, Inc. v. Walt Disney Co.,
17
        202 F.3d 1199 (9th Cir. 2000)................................................................................................... 6
18
     Hokto Kinoko Co. v. Concord Farms, Inc.,
19      738 F.3d 1085 (9th Cir. 2013)................................................................................................... 8

20   Hollywood Athletic Club Licensing Corp. v. GHAC-CityWalk,
        938 F. Supp. 612 (C.D. Cal. 1996).......................................................................................... 10
21
     Int'l Jensen, Inc. v. Metrosound U.S.A., Inc.,
22
          4 F.3d 819 (9th Cir. 1993)....................................................................................................... 10
23
     Internet Specialties West, Inc. v. Milton-DiGiorgio Enters., Inc.,
24       559 F.3d 985 (9th Cir. 2009)................................................................................................... 11

25   Mattel, Inc. v. MCA Records, Inc.,
        296 F.3d 894 (9th Cir. 2002)..................................................................................................... 9
26
     Official Airline Guides, Inc. v. Goss,
27       6 F.3d 1385 (9th Cir. 1993)....................................................................................................... 7
28
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                                                      TABLE OF AUTHORITIES
                                                           CONTINUED
 1                                                                                                                                        Page(s)
 2

 3   Pac. Telesis Grp. v. Int'l Telesis Commc'ns,
        994 F.2d 1364 (9th Cir. 1993)................................................................................................... 7
 4
     Sony Computer Entm't Am., Inc. v. Gamemasters,
 5
        87 F. Supp. 2d 976 (N.D. Cal. 1999) ...................................................................................... 10
 6
     Sprint Nextel Corp. v. Thuc Ngo,
 7      2012 WL 4127296 (N.D. Cal. Sept. 18, 2012) ......................................................................... 6

 8   Toyo Tire Holdings of Ams. Inc. v. Cont’l Tire N. Am., Inc.,
        609 F.3d 975 (9th Cir. 2010)..................................................................................................... 4
 9
     Statutes
10
     15 U.S.C. § 1057 ............................................................................................................................. 7
11

12   15 U.S.C. § 1072 ............................................................................................................................. 7

13   15 U.S.C. § 1114 ............................................................................................................................. 5

14   15 U.S.C. § 1115 ............................................................................................................................. 7

15   15 U.S.C. § 1116 ............................................................................................................................. 4
16   15 U.S.C. § 1125 ......................................................................................................................... 5, 8
17   15 U.S.C. § 1127 ............................................................................................................................. 9
18   Other Authorities
19
     J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §
20       23:95, at 23-188 (4th ed. 1998) ................................................................................................. 8

21

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23

24

25

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            MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION FOR TEMPORARY
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 1   I.        PRELIMINARY STATEMENT
 2             Plaintiff Union of Orthodox Jewish Congregations of America ( “Orthodox Union”),
 3   through its attorneys, respectfully submits this memorandum of law in support of its motion for a
 4   temporary restraining order to enjoin and restrain Urban Tortilla, Inc. (“UT” or “Defendant”)
 5   from infringing Orthodox Union’s famous                           kosher certification mark (the “OU mark”) and to
 6   remove or obliterate the OU mark or a close approximation thereof from the labels of all
 7   unauthorized products and any marketing materials or media.
 8             Orthodox Union is a New York not-for-profit corporation that performs kosher
 9   certifications for food products in the United States and around the world. Its famous OU mark
10   has provided consumers for nearly a century an easy way to determine if a product has been
11   certified as kosher. Yet UT has knowingly infringed the OU mark by displaying the OU mark on
12   the labels of products it manufactures, distributes and/or sells.
13             The facts, and their application to the familiar equitable principles, are straightforward.
14   UT has used the OU mark without authorization. This use has caused, and continues to cause,
15   irreparable harm to Orthodox Union and to the public. Orthodox Union has an overwhelming
16   likelihood of success on the merits of its claims, since UT has no right to use the OU mark and
17   any such use is likely to engender confusion among consumers who rely on the OU mark. Under
18   these circumstances, injunctive relief is both proper and required.
19             But UT’s conduct goes beyond the unlawful conduct of the typical infringer. UT’s
20   infringement deceives consumers into believing that its non-kosher food items have been
21   certified as kosher by Orthodox Union. Such deception can confuse consumers into
22   inadvertently consuming products that would violate their core religious beliefs. Consequently,
23   immediate relief is all the more necessary here.
24

25

26

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 1   II.       STATEMENT OF FACTS
 2             A.     Orthodox Union and the OU Mark
 3             One of the basic tenets of Jewish law is that all food consumed must be kosher.
 4   Declaration of Gad Buchbinder (“Buchbinder Decl.”) at ¶ 3. Kosher laws dictate which foods
 5   may and may not be eaten and how kosher food is to be prepared. Id. Because kosher laws are
 6   complex, most consumers choose to rely upon a certification agency’s authoritative certification
 7   that a particular packaged food or beverage product has been prepared according to strict kosher
 8   standards. Id. at ¶¶ 4, 9. Not only do Jewish consumers seek out kosher food, but so do many
 9   Seventh-day Adventists, Muslims, vegetarians and health-conscious consumers because of the
10   high standards of quality under which kosher food is manufactured. Id. at ¶ 7.
11             Pronouncing a food to be “kosher,” and the koshering process undertaken for products
12   related to food preparation, does not depend upon a Rabbi “giving his blessing” for the product.
13   Id. at ¶ 5. Rather, it involves a meticulous examination of the product itself to determine whether
14   the product, all of its ingredients, its method of preparation, and the equipment used to prepare
15   the product meet the strict standards and high level of quality demanded by kosher laws. Id.
16   Before certifying a product, Orthodox Union gathers information about the product, its
17   ingredients, and the location and conditions under which the product is manufactured. Id. at ¶¶
18   5, 13. Thereafter, a licensed rabbinic inspector (a “Mashgiach”) visits the applicant’s facilities to
19   examine each step of the manufacturing process to determine strict compliance with kosher laws.
20   Id. at ¶ 13. Applicants who meet all the standards and obtain certification from Orthodox Union
21   must subsequently undergo periodic follow-up inspections to insure that their compliance is
22   ongoing. Id.
23             After a product has been certified as kosher, Orthodox Union licenses the producer to use
24   the famous OU mark on the approved product pursuant to a written license agreement. Id. at ¶
25   14. Orthodox Union is the exclusive owner of the OU mark and has obtained incontestable
26   federal registrations for the OU mark. Id. at ¶¶ 10, 12; see also Complaint Ex. A.
27             Orthodox Union is the preeminent kosher certification entity in the United States and
28   throughout the world. Id. at ¶ 9. For over 85 years, Orthodox Union has inspected, supervised,
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 1   and certified as kosher thousands of food and beverage producers’ products. Id. at ¶ 9.
 2   Orthodox Union has spent considerable money, time and energy promoting its certification
 3   services and its OU mark. Id. at ¶ 11. The OU mark is the central feature of Orthodox Union’s
 4   promotional efforts and has received extensive coverage in print and on television and radio, in
 5   religious and dietary-conscious media sources, and also in the general interest media. Id. at ¶ 11.
 6             Orthodox Union views its role in kosher certification as a critical public service that
 7   serves the kosher-consuming public. Id. at ¶ 16. Orthodox Union has set high standards for its
 8   licensees, and thus its goodwill and reputation with consumers is its stock-in-trade. Id. This
 9   goodwill and reputation are presented to the public in the form of the OU mark. Id. at ¶¶ 15, 16.
10   Accordingly, Orthodox Union vigilantly monitors the authorized and unauthorized use of the OU
11   mark in commerce, in connection with food products and also with other products and services
12   offered in commerce outside the food industry.
13             B.        UT’s Willfully Infringing Activity
14             UT is a fast-food provider located in the San Francisco International Airport. Complaint
15   at ¶ 2. UT has not applied for authorization to use the OU mark in connection with such
16   products, has not submitted to inspection and evaluation by Orthodox Union, and is not
17   authorized to use the OU mark in connection with any such products that it manufactures,
18   markets or distributes. Buchbinder Decl. at ¶¶ 17-22. Orthodox Union has good reason to
19   believe that UT’s food products are not kosher. Id. at ¶ 23.
20             As reflected in Exhibit B to the Complaint, UT has used the OU mark or a close
21   approximation thereof on its packaging for its food products. UT has never been authorized to
22   use the OU mark or to hold itself out as being affiliated with or under the supervision of
23   Orthodox Union. Buchbinder Decl. at ¶ 22.
24                  Early in 2014, Orthodox Union learned that UT was using the OU mark or a close
25   approximation thereof without Orthodox Union’s knowledge or authorization in connection with
26   the production, marketing and sale of its products. Buchbinder Decl. ¶ 17. Shortly after it
27   discovered UT’s use, on March 6, 2014, Orthodox Union informed UT by letter that its use of
28   the OU mark was unauthorized and constituted trademark infringement. Complaint Ex. B;
                                                         3
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 1   Buchbinder Decl. at ¶ 18. Orthodox Union also pointed out to UT that since its food products
 2   are not kosher, its unauthorized use of the OU mark also implicated consumer deception
 3   concerns. Id. Orthodox Union’s letter to UT was sent via Federal Express. Id. Orthodox Union
 4   demanded that UT “immediately cease” from using the mark and requested a response by March
 5   17, 2014. Complaint Ex. B; Buchbinder Decl. at ¶ 18.
 6                  On March 19, 2014, having heard no response from the initial letter, Orthodox Union’s
 7   outside counsel contacted UT, and again demanded cessation of the offending conduct, stating
 8   that if no response was received by March 27, 2014, Orthodox Union would move forward with
 9   legal action. Complaint Ex. C; Buchbinder Decl. at ¶ 20. UT has not responded to counsel’s
10   March 19 letter. Buchbinder Decl. at ¶ 21.
11                  Orthodox Union believes that UT’s products are not kosher. Id. at ¶ 23. As such, in
12   addition to the trademark infringement inherent in UT’s unauthorized use of the OU mark,
13   Orthodox Union believes that kosher consumers are being misled as to whether UT’s products
14   are kosher in accordance with Orthodox Union’s standards. Id..
15   III.      ARGUMENT
16             A.         Orthodox Union is Entitled to a Temporary Restraining Order.
17             The Lanham Act gives the Court the power to grant injunctive relief “according to the
18   principles of equity and upon such terms as the court may deem reasonable, to prevent the
19   violation of any right of the registrant of a mark registered in the Patent and Trademark
20   Office . . . .” 15 U.S.C. § 1116(a).
21             The standard for issuing a temporary restraining order is the same as the standard for a
22   preliminary injunction. California Indep. Sys. Operator Corp. v. Reliant Energy Servs., Inc, 181
23   F. Supp. 2d 1111, 1126 (E.D. Cal. 2001) (citing Dumas v. Gommerman, 865 F.2d 1093, 1095
24   (9th Cir. 1989)). In the Ninth Circuit, an order should issue if the moving party demonstrates
25   that it is likely to succeed on the merits, it is likely to suffer irreparable harm in the absence of
26   preliminary relief, the balance of equities tips in its favor, and that an injunction is in the public
27   interest. Toyo Tire Holdings of Ams. Inc. v. Cont’l Tire N. Am., Inc., 609 F.3d 975, 982 (9th Cir.
28
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 1   2010) (citing Winter v. Nat’l Res. Def. Council, Inc., 555 U.S. 7 (2008)). As demonstrated
 2   below, Orthodox Union fully satisfies the requirements for immediate relief.
 3             B.        Orthodox Union Has Established a Clear Likelihood of Success on the
                         Merits.
 4
                         1.      Orthodox Union Has a Strong Likelihood Of Success on the Merits of
 5                               Its Lanham Act Claims.

 6             Section 1114 of Title 15 of the United States Code protects registered trademarks from
 7   infringement. It provides, in pertinent part, that “[a]ny person who shall, without the consent of
 8   the registrant . . . use in commerce any reproduction, counterfeit, copy, or colorable imitation of
 9   a registered mark in connection with the sale, offering for sale, distribution, or advertising of any
10   goods or services on or in connection with which such use is likely to cause confusion, or to
11   cause mistake, or to deceive . . . shall be held liable in a civil action by the registrant . . . .”
12   15 U.S.C. § 1114. Section 1125(a) of Title 15 of the United States Code addresses a broader
13   category of conduct, and provides that “[a]ny person who, on or in connection with any goods or
14   services . . . uses in commerce any word, term, name, symbol, or device . . . or any . . . false or
15   misleading description of fact, which . . . is likely to cause confusion, or to cause mistake, or to
16   deceive as to the affiliation, connection, or association of such person with another person, or as
17   to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by
18   another person . . . shall be held liable in a civil action by any person who believes that he or she
19   is or is likely to be damaged by such act.” 15 U.S.C. § 1125(a). The Lanham Act expressly
20   protects certification marks to the same degree as more traditional trademarks.
21             The key element in any Lanham Act claim is whether unauthorized use of a mark is
22   “likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. §1125(a). To
23   determine the likelihood of confusion, the Ninth Circuit considers the following Sleekcraft
24   factors:
25              (1)   the similarity of the marks;
26              (2)   the strength of plaintiff’s mark;
                (3)   the proximity or relatedness of the goods or services;
27              (4)   the defendant’s intent in selecting the mark;
                (5)   evidence of actual confusion;
28
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 1              (6) the marketing channels used;
                (7) the likelihood of expansion into other markets; and
 2              (8) the degree of care likely to be exercised by purchasers of defendant’s product.
 3   AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,348-49 (9th Cir. 1979).
 4             When conducting a Sleekcraft analysis, courts need not consider all the factors, as the
 5   eight-factor analysis is “best understood as simply providing helpful guideposts” rather than
 6   providing a “scorecard” or “checklist.” Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand
 7   Mgmt., Inc., 618 F.3d 1025, 1031 (9th Cir. 2010). Ultimately, the factors are intended to “guide
 8   the court in assessing the basic question of likelihood of confusion.” E & J Gallo Winery v.
 9   Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992). Under the facts of the present case, the
10   likelihood of confusion is inevitable.1
11                            a.      The Marks of the Parties Are Highly Similar.
12             The Ninth Circuit has recognized that the similarity of the marks is a “critical question”
13   in completing the likelihood-of-confusion analysis. GoTo.com, Inc. v. Walt Disney Co., 202
14   F.3d 1199, 1205 (9th Cir. 2000). Three principles guide whether the marks are similar: (1) an
15   adjudication of the appearance, sound, and meaning of the marks; (2) a consideration of the
16   marks in their entirety and how they appear in the marketplace; and (3) similarities should be
17   weighed more heavily than differences. Fortune, 618 F.3d at 1032.
18             The high degree of similarity here is indisputable. The symbol used by UT is the letter
19   “U” set within a circle, just like the OU mark. UT’s symbol, like the OU mark, appears on the
20   packaging of food products. Thus, Defendant’s unauthorized display of the OU mark or a close
21   approximation thereof conveys to the public the exact same impression as do authorized displays
22   of the OU mark: that the products are kosher and that they have met Orthodox Union’s stringent
23

24   1
            The elements of a claim for unfair competition under California’s statutory Unfair
25   Competition Law and the common law are “substantially congruent to claims made under the
     Lanham Act.” Cleary v. News Corp., 30 F.3d 1255 (9th Cir. 1994). Accordingly, for purposes
26   of considering this motion for a temporary restraining order, “the Court need only focus on the
     legal merits of the trademark infringement claim.” Sprint Nextel Corp. v. Thuc Ngo, 2012 WL
27   4127296, at *4 (N.D. Cal. Sept. 18, 2012).
28
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 1   certification standards.
 2                            b.      The OU Mark is Strong.
 3             Orthodox Union owns two incontestable Federal Registrations of the OU mark. See
 4   Complaint Exhibit A; see also Buchbinder Decl. at ¶ 12. The registrations are prima facie
 5   evidence of the validity of Orthodox Union’s mark, and they establish its exclusive rights to the
 6   mark in commerce and serve as constructive notice of its claim of ownership of the mark. See 15
 7   U.S.C. §§ 1057(b), 1072, and 1115(b).
 8             The Ninth Circuit measures the strength of a mark by examining the inherent strength of
 9   a mark, based on how “conceptually distinctive” the mark is by itself, as well as its acquired
10   strength, based on the mark’s “actual marketplace recognition.” Brookfield Commc’ns, Inc. v.
11   W. Coast Entm’t Corp., 174 F.3d 1036, 1058 (9th Cir. 1999)
12             The OU mark meets both measures of a strong mark. Orthodox Union has used the OU
13   mark since 1925. Throughout more than 85 years, Orthodox Union has expended substantial
14   resources in promoting the OU mark as a guarantee that the highest standards of kosher
15   supervision have been met by any product which bears the OU mark. Buchbinder Decl. at ¶¶ 9-
16   11, 15. These efforts have established the OU mark as the most widely recognized and respected
17   imprimatur of kosher compliance in the world. The OU mark is relied upon by millions of
18   people in the daily observation of their religious beliefs, and by millions more in the care of their
19   health.
20                            c.      UT Intentionally Continues to Use the Mark in Bad Faith.
21             In conducting a Sleekcraft analysis, courts also look at the defendant’s intent in using the
22   plaintiff’s mark. Courts will “presume an intent to deceive the public” if an “infringer
23   knowingly adopts a mark similar to another’s.” Official Airline Guides, Inc. v. Goss, 6 F.3d
24   1385, 1394 (9th Cir. 1993). “This deception justif[ies] the inference that there are confusing
25   similarities” between the marks. Pac. Telesis Grp. v. Int'l Telesis Commc'ns, 994 F.2d 1364,
26   1369 (9th Cir. 1993).
27             Under the facts of this case, a presumption that UT intends to deceive the public and thus
28   confuse consumers is appropriate. UT has been aware of Orthodox Union’s rights in the OU
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 1   mark since at least shortly after March 7, 2014 when it received Orthodox Union’s letter
 2   notifying it of the infringement and demanding that it cease all use of the OU mark. Buchbinder
 3   Decl. at ¶ 18. That initial demand letter was followed up by a second demand, which
 4   underscored the seriousness of the infringement claim. Id. at ¶ 20. Nonetheless, UT has
 5   continued using the OU mark and has not even sought to contact Orthodox Union in any way to
 6   resolve the issues raised by the demand letters. Id. at ¶¶ 19, 21.
 7                            d.      The Public Does Not Exercise Significant Care When
                                      Purchasing Defendant’s Product.
 8

 9             Likelihood of confusion is determined on the basis of a “reasonably prudent consumer.”
10   Brookfield, 174 F.3d at 1060. “Low-cost consumer good[s]” are unlikely to be “carefully
11   examine[d]” by a reasonably prudent consumer, suggesting a higher likelihood of confusion.
12   Hokto Kinoko Co. v. Concord Farms, Inc., 738 F.3d 1085, 1096 (9th Cir. 2013); J. Thomas
13   McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 23:95, at 23-188 (4th ed.
14   1998).
15             Here, consumers are unable to independently determine whether a product is kosher.
16   Buchbinder Decl. at ¶¶ 4-6, 9. Consumers cannot devote the substantial resources necessary to
17   studying and mastering the detailed and complex kosher laws, and are not able to inspect the
18   facilities and suppliers of the manufacturers who produce kosher products. Id. at ¶¶ 4, 9. Rather,
19   they must rely on the OU mark to assist them in identifying kosher products certified according
20   to the stringent standards applied by Orthodox Union. Id. at ¶ 9. When purchasing food,
21   consumers cannot be expected to differentiate between a valid OU mark and a close
22   approximation thereof (such as that used by UT). Under these circumstances, a likelihood of
23   confusion exists.
24                    2.      Orthodox Union Has a Strong Likelihood of Success on the Merits of
                              its Trademark Dilution Claim.
25

26             Section §1125(c) of Title 15 of the United States Code, in pertinent part, states that “[t]he
27   owner of a famous mark shall be entitled . . . to an injunction against another person’s
28   commercial use in commerce of a mark or trade name, if such use . . . causes dilution of the
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 1   distinctive quality of the mark.” 15 U.S.C. § 1125(c). The statute defines dilution as “the
 2   lessening of the capacity of a famous mark to identify and distinguish goods or services,
 3   regardless of competition between the parties, or likelihood of confusion.” 15 U.S.C. § 1127.
 4   Section 1125(c) provides a list of factors that the court may consider in determining whether a
 5   mark is famous, including its degree of inherent or acquired distinctiveness; the duration and
 6   extent of its use in connection with its associated goods or services; the duration and extent of its
 7   advertising and publicity; the geographic extent of the trading area in which it is used; the
 8   channels of trade for the goods or services with which it is used; its degree of recognition; and
 9   the nature and extent of use of similar marks by third parties.
10             Unquestionably, the OU mark is “famous” under these criteria. Orthodox Union has used
11   the OU mark to illustrate the highest standards of supervision and compliance for close to a
12   century. Buchbinder Decl. at ¶¶ 9-12. The mark is recognized throughout the world as a
13   guarantee that approved products meet these high standards. The mark appears on a wide range
14   of foods and beverages around the world, including many famous name-brands, thus
15   demonstrating the value manufacturers and consumers alike attach to Orthodox Union’s
16   certification mark. Id. at ¶ 15.
17             Similarly, there is no doubt that UT’s conduct causes dilution of the OU mark. When
18   kosher consumers purchase and consume products with the OU mark, they regard the OU mark
19   as proof that the products are properly certified as kosher according to the stringent standards of
20   Orthodox Union. Id. Placing the OU mark on products that have not been certified by Orthodox
21   Union or manufactured under Orthodox Union’s supervision poses a great threat to consumer
22   confidence and trust in Orthodox Union and its certification mark. Id. at ¶ 24; see, e.g., Mattel,
23   Inc. v. MCA Records, Inc., 296 F.3d 894, 903 (9th Cir. 2002) (unauthorized use “dilute[s] the
24   selling power of these trademarks by blurring their uniqueness and singularity . . . and/or by
25   tarnishing them with negative associations.”) (internal citation and quotation marks omitted).
26   Under these circumstances, Orthodox Union has a strong likelihood of success on its trademark
27   dilution claim, and it is entitled to injunctive relief.
28
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 1             C.     Orthodox Union Will Be Irreparably Injured If the Requested Relief is
                      Denied.
 2

 3             The Ninth Circuit has long held that establishing a likelihood of confusion caused by

 4   trademark infringement creates a presumption of irreparable harm, thus relieving the plaintiff of

 5   the need to prove such harm independently. Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d

 6   819, 827 (9th Cir. 1993); Sony Computer Entm’t Am., Inc. v. Gamemasters, 87 F. Supp. 2d 976,

 7   988 (N.D. Cal. 1999).

 8             In this case, the likelihood of confusion is inevitable and obvious because UT is using the

 9   OU mark in a way that signifies a kosher certification that does not exist. Buchbinder Decl. at ¶¶

10   22, 23.

11             Moreover, Orthodox Union and the public have suffered, and continue to suffer,

12   irreparable harm because of UT’s infringing activities. These infringing activities compromise

13   both Orthodox Union’s reputation as the preeminent kosher certification entity as well as the

14   kosher-consuming public’s ability to adhere to strict kosher laws in accordance with their

15   religious beliefs and health concerns. Id. at ¶ 24.

16             If UT is allowed to continue using the OU mark without authorization, the value of the

17   OU mark as a guarantee of kosher standards would be diminished. Id. A trademark owner, like

18   Orthodox Union, has a particular interest in protecting its trademark to avoiding “los[ing] control

19   over [the mark’s] reputation.” Hollywood Athletic Club Licensing Corp. v. GHAC-CityWalk,

20   938 F. Supp. 612, 615 (C.D. Cal. 1996). This loss of control over the use of a trademark “is the

21   very thing that constitutes irreparable harm in the licensing context.” Id. (quoting Church of

22   Scientology Int'l v. Elmira Mission of the Church of Scientology, 794 F.2d 38, 42 (2d Cir.1986)).

23             D.     The Balance of the Equities Decidedly Favors Orthodox Union.

24             The balance of equities weighs in favor of Orthodox Union. Orthodox Union has spent

25   considerable money advertising and promoting the OU mark, and prides itself on being the

26   world’s preeminent kosher certification agency. Buchbinder Decl. at ¶¶ 11, 15, 16. Kosher

27   consumers all over the world rely on the OU mark as an indicator that a product is not only

28   kosher, but that it has been certified as such by Orthodox Union. Id. at ¶ 15. Consumers trust
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 1   Orthodox Union; and therefore, they trust the OU mark. UT’s continued use of the OU mark or
 2   a close approximation thereof threatens Orthodox Union’s reputation and the trust it has built
 3   with kosher consumers. Id. at ¶ 24. Moreover, UT’s unauthorized use of the mark or a close
 4   approximation thereof constitutes a fraud on the public. Id. at ¶ 23.
 5             By contrast, UT simply has no right to use the OU mark. Under these circumstances, it
 6   cannot claim any harm if required to immediately cease from infringing on Orthodox Union’s
 7   federal registered and incontestable certification mark and obliterate or replace the OU mark on
 8   any products remaining for sale to the public.
 9             E.     Ceasing the Infringement Serves the Public Interest.
10             In trademark cases, an injunction favors the public interest because it “avoid[s] confusion
11   to consumers.” Internet Specialties West, Inc. v. Milton-DiGiorgio Enters., Inc., 559 F.3d 985,
12   993 (9th Cir. 2009); see also Clamp-Swing Pricing Co. v. Super Mkt. Merch. And Supply, Inc.,
13   2013 WL 6199155, at *5 (N.D. Cal. Nov. 21, 2013). Here an injunction would protect the public
14   from confusion caused by UT’s use of the         mark, and, as explained above, protect the kosher-
15   consuming public from unwittingly consuming non-kosher items. Buchbinder Decl. at ¶¶ 23, 24.
16             F.     Immediate Relief Through a Temporary Restraining Order is Necessary.
17             Once it discovered the infringement, Orthodox Union sought to resolve this matter
18   expeditiously. Id. at ¶¶ 17-21. It immediately contacted UT, and made a demand that the
19   infringement be stopped. Id. at ¶ 18. Since UT appears to be a small business, which only
20   operates from one location out of the San Francisco Airport, Orthodox Union was hopeful that
21   UT would realize its mistake, and end its infringing activity without the need for costly
22   involvement of outside counsel or the courts. Moreover, until the facts showed differently,
23   Orthodox Union was willing to accept that UT’s use of the OU mark may have been an innocent
24   mistake, which would be corrected once brought to the company’s attention. Given the
25   obviousness of the infringement, this was a reasonable assumption.
26             Notwithstanding its hope for voluntary compliance by UT, Orthodox Union moved
27   forward to protect its rights very quickly. Almost immediately after discovering the
28   infringement, it sent an overnight letter to UT demanding that it cease using the OU mark. Id.;
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           MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION FOR TEMPORARY
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 1   Complaint Ex. B. When no response was received to the first demand, Orthodox Union sent a
 2   second demand letter through counsel 13 days later. Buchbinder Decl. ¶ 20; Complaint Ex. C.
 3   That second letter was also met with silence.
 4              Orthodox Union now recognizes it must, reluctantly, resort to the courts to seek
 5   immediate relief. In these circumstances, a temporary restraining order is appropriate.
 6   IV.       CONCLUSION
 7             For the foregoing reasons, Orthodox Union respectfully requests that the Court grant its
 8   Motion for a Temporary Restraining Order and Order to Show Cause re Preliminary Injunction
 9   and grant such other relief as the Court deems just and proper.
10

11                                           Respectfully submitted,
12                                           BINGHAM McCUTCHEN LLP
13
     Dated: March 28, 2014                   /s/ Bree Hann
14

15                                           BREE HANN (SBN 215695)
                                             BINGHAM McCUTCHEN
16                                           bree.hann@bingham.com
                                             Three Embarcadero Center
17                                           San Francisco, CA 94111-4067
                                             Telephone: (415) 393-2000
18                                           Facsimile: (415) 393-2286
19                                           and
20                                           David J. Butler
                                             BINGHAM McCUTCHEN LLP
21                                           david.butler@bingham.com
                                             2020 K Street, NW
22                                           Washington, DC 20006
                                             Telephone:     202.373.6000
23                                           Facsimile:     202.373.6001
24

25

26

27

28
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           MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT OF MOTION FOR TEMPORARY
             RESTRAINING ORDER AND ORDER TO SHOW CAUSE RE PRELIMINARY INJUNCTION
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