Case3:11-cv-01990-SI Document10-2 Filed04/26/11 Page1 of 10

Laura A. Thomas (SBN 226028)

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BRANNON SOWERS HUGHEL P.C.
2 5217 Locksley Avenue
Oakland, CA 94618
3 Tel: (510) 547-8848
Fax (317) 630-2813
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lthomas@brannonsowers.com
5
Patricia A. Hughel (pro hac vice application pending)
6 BRANNON SOWERS HUGHEL P.C.
7
1 North Pennsylvania Street, Suite 520
Indianapolis, IN 46204
8 Tel: (317) 630-2819
Fax: (317) 630-2813
9 phughel@brannonsowers.com
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Attorneys for the Plaintiff, Earthstone International, LLC

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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14 Earthstone International, LLC, ) CASE NO. CV11 – 01990

)
15
Plaintiff, )
16 ) PLAINTIFF’S AMENDED
v. ) MEMORANDUM AND POINTS OF
17 ) AUTHORITIES IN SUPPORT
) OF AMENDED MOTION FOR
18
Alibaba Group Holding Limited ) TEMPORARY RESTRAINING
19 d/b/a AliExpress, and Alibaba.com, ) ORDER AND PRELIMINARY
) INJUNCTION
20 Defendant. )
21
Plaintiff Earthstone International, LLC (hereinafter “Earthstone”), owns U.S.
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Trademark Registration No. 2,459,853 for the mark GRILLSTONE in connection with
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goods described as “Abrasive preparation for cleaning hard surfaces.” Earthstone has a
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well-known reputation in their industry for having excellent quality goods.
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Defendants, Alibaba Group Holding Limited d/b/a AliExpress and Alibaba.com
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(hereinafter “Alibaba.com” or “Defendant”), are actively promoting a counterfeit product
27

28 AMENDED MEMORANDUM AND POINTS OF AUTHORITIES

IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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 Case3:11-cv-01990-SI Document10-2 Filed04/26/11 Page2 of 10

1 bearing Plaintiff’s GRILLSTONE trademark as well as offering for sale what purports to be
2 Earthstone’s actual product without Earthstone’s authorization. Further, Defendant’s
3 description of the counterfeit product is identical to the bullet point description used by
4 Earthstone in promotion of Earthstone’s GRILLSTONE product. Rather than create its own
5 brand identity, Defendant is marketing a product that appears to be manufactured by a
6 Chinese company named Guangxi Nanning Dalande Energy-Saving Technology Co., Ltd.
7 Plaintiff brings this Motion for Temporary Restraining Order in an effort to put an
8 immediate halt to the ongoing sales and distribution of these infringing goods of unknown
9 quality and composition since these goods are made for direct contact with surfaces used for
10 food preparation. If Defendant’s counterfeit product contains unsafe materials, such as
11 arsenic, as found in a prior counterfeit product, consumers may be at risk for serious health
12 risk or even death. Further, current and continued use of the GRILLSTONE mark by the
13 Defendant in connection with a similar or identical product as Earthstone’s could be
14 devastating to Earthstone’s reputation; as well, the Defendant’s selling the counterfeit
15 product, or Earthstone’s actual product, at a cost below that of Earthstone’s product would
16 draw business away from Earthstone.
17
I. Background
18

19 A. Earthstone’s Extensive Product Development and Promotion Efforts

20

21
Earthstone has been promoting its high quality GRILLSTONE product since February
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2000. Through considerable effort and expense, Earthstone has developed wide-spread
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brand recognition for quality and safety and promotes and distributes the GRILLSTONE
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product both in the United States and overseas.
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B. Defendant’s Wrongful Acts
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27

28 AMENDED MEMORANDUM AND POINTS OF AUTHORITIES

IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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 Case3:11-cv-01990-SI Document10-2 Filed04/26/11 Page3 of 10

1 On or about March 10, 2011, Plaintiff’s discovered Defendant’s promotion of the

2 counterfeit product on their website www.aliexpress.com. Defendant is not authorized to
3 use the GRILLSTONE trademark as evidenced by the Affidavit submitted herewith
4 executed by Earthstone’s Executive Chairman, George Morandin. Not only does the
5 Defendant use the GRILLSTONE trademark in connection with a product that looks similar,
6 if not identical to the Plaintiff’s product, but the Defendant’s description of the product is
7 identical to the bullet point description used by the Plaintiff.
8

9 The Plaintiff’s description, copied by the Defendant, is as follows:

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NO MORE WIRE BRUSHES!
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12
x Grill cleaning 4 times faster than wire brushes
x Non-toxic, odorless and without harmful chemicals
13 x May be used for grill cleaning on hot or cold grill surfaces
x Keeps your grill free from bacteria attracted by food residue
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x Will not clog like wire brushes
15 x Outperforms wire brushes and scrub pads for grill cleaning!

16

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Defendant uses the above description verbatim in its promotion of its counterfeit product.
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Further, Defendant is offering for sale what purports to be Plaintiff’s actual product on their
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website www.alibaba.com. The photo of the product looks identical to Plaintiff’s package
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and the “Supplier” information to the right of the picture actually identifies Earthstone
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International, LLC. Earthstone has not authorized the Defendant to sell their GRILLSTONE
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product or any other product.
23

24

25

26 II. Argument
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28 AMENDED MEMORANDUM AND POINTS OF AUTHORITIES

IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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1 The product at issue is intended for use on surfaces that come into direct contact with
2 food. The circulation of counterfeit products, falsely purporting to be the Plaintiff’s goods,
3 may present not only an extreme danger to the public first and foremost, but also a
4 devastating blow to the Plaintiff’s reputable name should a consumer be harmed by the
5 counterfeit product while falsely believing it to be that of the Plaintiff.
6

7 Congress provided remedies to trademark infringement in the Lanham Act of 1984.

8 These remedies protect Plaintiff’s registered trademark. The Lanham Act expressly
9 provides for extraordinary preliminary relief, including issuance of temporary restraining
10 orders and preliminary injunctions. No relief sought by Earthstone will meaningfully
11 interfere with Defendant’s lawful business operations. Contemporaneous with this filing,
12 Earthstone has provided a courier with a complete set of documents and instructions to
13 immediately serve the Defendant with the Complaint, Summons, and Motion papers.
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A. Legal Standard for Issuance of a Temporary Restraining Order
15

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“Like other types of preliminary injunctions, a temporary restraining order may be
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issued if the plaintiff has established: (1) a likelihood of success on the merits and the
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possibility of immediate irreparable injury, or (2) the existence of serious questions going to
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the merits and the balance of hardships tips heavily in its favor.” Wham-O, Inc. v.
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Paramount Pictures Corp., 286 F.Supp.2d 1254, 1259 (N.D.Cal.2003.) (Patel J) (citing,
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Metro Publishing, Ltd. v. San Jose Mercury News, 987 F.2d 637, 639 (9th Cir. 1993)); and
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Southwest Voter Registration Education Project v. Shelley, 344 F.3d 914, 917 (9th Cir.
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2003)(en banc; per curiam). A plaintiff will succeed on the merits of its trademark
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infringement claim under the Lanham Act if it establishes that the defendant’s use of its
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mark gives rise to a ‘likelihood of confusion’ in the consuming public.” Metro Publishing,
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987 F.2d at 640. “A likelihood of confusion exists when consumers ‘are likely to assume
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28 AMENDED MEMORANDUM AND POINTS OF AUTHORITIES

IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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1 that a product or services is associated with a source other than its actual source because of
2 similarities between the two sources’ mark or marketing techniques.’” Id., quoting
3 Nutri/System, Inc. v. Con-Stan Indus, Inc., 809 F.2d 601, 604 (9th Cir.1987). “Once the
4 plaintiff has demonstrated a likelihood of confusion, it is ordinarily presumed that the
5 plaintiff will suffer irreparable harm if injunctive relief is not granted.” Metro Publishing,
6 987 F.2d at 640 (citing Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 612 n. 3 (9th
7 Cir.1989)).
8

9 For the reasons set forth below, Earthstone presents an especially compelling case on
10 the merits, with Defendant directly competing against Earthstone’s product using
11 Earthstone’s own trademark in connection with a product that could potentially endanger the
12 consuming public. This provides a presumption of irreparable injury provided the nature of
13 the goods at issue. Moreover, Plaintiff is not requesting that Plaintiff’s entire website be
14 shut down. Plaintiff is merely requesting the Plaintiff cease any promotions, sales or
15 distributions of the counterfeit product in issue.
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B. Earthstone Will Prevail On The Merits
17

18

19 To prove trademark infringement, Plaintiff must show two basic elements: (1) a
20 valid, protectable mark, and (2) a likelihood of confusion, mistake or deception in the
21 defendants’ use of the trademark. See 15 U.S.C. §1114. Earthstone’s federal trademark
22 registration, attached to the Complaint as Exhibit A, is prima facia evidence of the validity
23 of the registered trademark and Earthstone’s exclusive rights therein. See 15. U.S.C. §
24 1057(b).
25

26 Defendant’s use of the identical mark with a counterfeit product that appears
27 identical to the Plaintiff’s bearing the identical description of the product is clear evidence of
28 AMENDED MEMORANDUM AND POINTS OF AUTHORITIES
IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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1 a likelihood of confusion, mistake or deception in the defendant’s use of the trademark.

2 Further, Defendant’s use of what purports to be Earthstone’s actual product is clear evidence
3 of a likelihood of confusion, mistake or deception in the defendant’s use of the trademark.
4
C. Likelihood of Confusion
5

6
The Ninth Circuit has identified eight factors for consideration in determining
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whether a likelihood of confusion exists between two trademarks: (1) strength of the
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Plaintiff’s mark; (2) similarity of the marks; (3) proximity of the goods in question; (4)
9
evidence of actual confusion; (5) marketing channels used by both parties; (6) types of
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goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent
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in selecting the mark; and (8) likelihood of expansion of the parties’ product lines. See
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AMF, Inc.. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979).
13

14 1. Defendant’s Use of the Identical Mark for Identical Goods Leads to

Consumer Confusion
15

16

17
Every factor set forth in Sleekcraft weighs in Earthstone’s favor:

18 (1) Strength of the Plaintiff’s mark: Plaintiff’s mark has been in use since
19 February 2000, and registered since 2001. The mark is not descriptive.
The consuming public has come to recognize the goodwill associated
20
with the mark.
21 (2) Similarity of the marks: the marks are identical.
(3) Proximity of the goods in question: both the Plaintiff’s product and the
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Defendant’s product can be purchased over the Internet. Consumers
23 looking for an abrasive cleaner for their grill would find both products by
doing a general search on the Internet.
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(4) Evidence of actual confusion: Plaintiff’s Australian distributor contacted
25 Plaintiff questioning the counterfeit product.
26 (5) Marketing channels used by both parties: both parties promote their
products via the Internet.
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28 AMENDED MEMORANDUM AND POINTS OF AUTHORITIES

IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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(6) Types of goods and the degree of care likely to be exercised by the
1
purchaser: the products are not incredibly expensive products and as
2 such, the consuming public would likely not look closely as to the
3
chemical composition of the product, unlike a product such as expensive
software or high end jewelry where the consumer may take additional
4 measures to confirm the authenticity of the manufacturer.
5 (7) Defendant’s intent in selecting the mark: clearly the defendant intended
to deceive consumers by using not only the identical mark, but using the
6
identical description from Plaintiff’s own website to promote their
7 counterfeit product. There is little room for coincidence when the 6 bullet
point description is identical.
8
(8) Likelihood of expansion of the parties’ product lines: it is very likely that
9 the Defendant will continue to create counterfeits of Plaintiff’s other
10
products if not stopped with GRILLSTONE. The Plaintiff has several
other related products, each with their own “xxx- STONE” identifier
11 which has become indicative of the Plaintiff’s high quality products.
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D. Earthstone Will be Irreparably Harmed by Defendant’s Conduct
13

14 Injunctive relief is a remedy of choice for trademark and unfair competition cases,
15 “since there is no adequate remedy at law for the injury caused by defendant’s continuing
16 infringement.” Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir.
17 1988).
18 There is no doubt as to the risk first and foremost to the consuming public if the
19 counterfeit product is dangerous and consumers believe it to be a high quality product of
20 Earthstone’s, but also there is no doubt as to the risk to Earthstone’s reputation as a
21 consequence of the Defendant’s use of the GRILLSTONE mark on their competing product.
22 Earthstone has no control over the manner of the Defendant’s use and more importantly, the
23 quality and safety of Defendant’s product. Any problems, including possible poisoning to
24 children, adults or animals, could have devastating effects on the good name of Earthstone.
25 Earthstone has extended enormous amounts of research and safety and related capital to
26 assure that their product is safe and as such, the entire investment is lost if the counterfeit
27 product is mistaken as Earthstone’s.
28 AMENDED MEMORANDUM AND POINTS OF AUTHORITIES
IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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1
E. Defendant Has Already Shown Immoral Behavior
2

3 Simply by trading on the goodwill of Earthstone in attempt to deceive consumers,

4 Defendant has already shown immoral behavior.
5 The balance of equities and the public interest strongly favors issuance of a temporary
6 restraining order. “A preliminary injunction is an appropriate remedy for infringement of a
7 registered trademark.” Charles Schwab & Co. v. Hibernia Bank, 665 F.Supp. 800, 803
8 (N.D. Cal. 1987). Earthstone’s reputation will be irreparably harmed if Defendant continues
9 to market counterfeit goods. Not only are the infringing items likely to be inherently
10 dangerous and possibly fatal, the Defendant’s price intentionally undercuts the Plaintiff’s
11 thereby swaying Earthstone’s customers toward the cheaper product causing Earthstone loss
12 of profit. “Where the only hardship the Defendant will suffer is lost profits from an activity
13 which has been shown likely to be infringing, such an argument in defense merits little
14 equitable consideration.” Triad Sys. Corp. v. Southeastern Express Co., 64 F.3d 1330, 1338
15 (9th Cir. 1995).
16

17 F. The Bond Should not Exceed $1,000

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Plaintiff must post a bond as security against wrongful issuance of an injunction.
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Federal Rule Of Civil Procedure 65(c). “A bond should attempt to create a fund from which
20
all of [defendant’s] potential damage from an erroneous preliminary injunction can be
21
compensated.” McCarthy, §30:55. The size of the bond required here should relate only to
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Defendant’s loss of profit from enjoined sales during the pendency of this case. Defendant
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would only be stopped from selling products that they were never rightfully selling to begin
24
with, and further, Defendant is not enjoined from sales of products other than those using the
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Plaintiff’s mark or any variation thereof. Thus, the risk to Defendant is minimal.
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28 AMENDED MEMORANDUM AND POINTS OF AUTHORITIES

IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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G. Plaintiff is Entitled to a Preliminary Injunction
2

3 The temporary restraining order should be converted to a preliminary injunction

4 following the requisite hearing. The violative conduct of Defendant will resume and likely
5 expand to other of Earthstone' s products, if the temporary restraining order expires without
6 further relief. The same factors that justify the temporary restraining order stand to justify
7 the preliminary injunction pending trial. Earthstone' s likelihood of success will continue
8 and the possibility of irreparable harm will remain past the point of the expiration of the
9 temporary restraining order and throughout the pendency of trial.
10

11 III. Conclusion

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A temporary restraining order is not only permissible under the present circumstances, it
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is necessary in the interest of justice to prevent injury to consumers and irreparable harm to
14
the Plaintiff that cannot be compensated by money damages alone. Accordingly, it is
15
respectfully requested that the Court issue a Temporary Restraining Order and Order to
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Show Cause Re: Preliminary Injunction.
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18 Respectfully Submitted,
19

20

21 aura A. Thomas
Attorney for the Plaintiff
22
BRANNON SOWERS HUGHEL P.c.
23 5217 Locksley Avenue
Oakland, CA 94618
24 (510) 547-8848
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26

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28 MEMORANDUM AND POINTS OF AUTHORITIES

IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
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1 CERTIFICATE OF SERVICE
2

3 I hereby certify that a copy of the foregoing has been served upon the following this
4 26nd day of April, 2011, via a commercial carrier:
5

6
Alibaba.com
7 3945 Freedom Cir., Suite 600
Santa Clara, California 95054
8

10
ura A. Thomas
=-------
11 BRANNON SOWERS HUGHEL P.C.
12
5217 Locksley Avenue
Oakland, CA 94618
13 (510) 547-8848

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28 MEMORANDUM AND POINTS OF AUTHORITIES

IN SUPPORT OF AMENDED MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTION
10