3M Company v. Ugly Juice, LLC dba Good Use

Background

3M brought nine claims against Ugly Juice, LLC dba Good Use, RDGIV Holdings LLC, Grant Carlson, Slava Chupryna, Sabrina Corpus, and Ralph Dewar Gaines. The claims included federal trademark counterfeiting, trademark infringement, unfair competition, false designation of origin, trademark dilution, and false advertising under the Lanham Act, as well as California statutory and common-law claims.

3M alleged that the defendants advertised and sold counterfeit 3M-brand N95 respirators. The allegations included sales to an elder care group and a hospital, attempted sales to a health care system, and offers to other hospitals and health care systems. According to 3M, some products had known counterfeit lot numbers and inauthentic packaging, and the defendants made misleading statements about authorization to distribute 3M products.

3M moved for a temporary restraining order, an order requiring the defendants to show cause why a preliminary injunction should not issue, and limited expedited discovery. The order states that no defendant had filed an opposition or otherwise communicated directly with the court as of the time the order was entered. The court found that 3M had made reasonable efforts to provide notice and had tried to determine whether the defendants had counsel or would agree to resolve the motion.

Court’s Analysis

For temporary restraining orders and preliminary injunctions, the court applied a four-factor test: likelihood of success on the merits, likely irreparable harm without relief, the balance of equities, and the public interest. The court described an injunction as an extraordinary remedy requiring a clear showing that the plaintiff was entitled to relief.

The court found that 3M had shown a likelihood of success on its trademark-related claims and that it would suffer irreparable harm unless the defendants’ violations were stopped. The court also found that immediate relief was necessary before the hearing concerning a preliminary injunction and that the balance of equities and interests of justice supported relief.

Order

The court granted the temporary restraining order. It immediately temporarily restrained the defendants, their agents, representatives, employees, assigns, and people acting in concert or privity with them from using the 3M marks or confusingly similar marks; using those marks in connection with goods or services, including 3M-brand N95 masks; concealing, destroying, transferring, selling, donating, or disposing of evidence related to the alleged counterfeit sales; and engaging in false, misleading, or deceptive conduct connected with 3M or its products, including claiming to be an authorized 3M distributor, vendor, agent, representative, retailer, or licensee.

The court also ordered limited expedited discovery before the preliminary-injunction hearing. The defendants were required to cooperate with inspections of warehouses and storage sites where counterfeit 3M-brand N95 masks might be stored and to produce records related to purchasing, marketing, and selling purported 3M-brand N95 masks.

The court ordered the defendants to show cause before Edward J. Davila on May 13, 2021, why a preliminary injunction should not issue pending final disposition of the action. The order did not itself grant the preliminary injunction. The court dispensed with the bond requirement but stated that it could reconsider that issue if circumstances required. 3M was made responsible for serving the order on all defendants.