Biomax Health Products LLC v. Perfectx USA

Background

Biomax Health Products LLC markets topical joint and muscle therapy cream under the registered PENETREX word mark. Biomax also uses a design consisting of a thick line with multiple color bands. Its PENETREX Intensive Concentrate Cream is sold in a white, rounded cylindrical jar with a particular label layout and similar sans-serif fonts.

Biomax alleged that Perfectx USA began selling PERFECTX Intensive Concentrate Cream in February 2023. According to the allegations and evidence presented, Perfectx’s product used a similar white jar, color band, label arrangement, wording, and fonts. The parties marketed relatively inexpensive topical creams through overlapping channels, including Amazon and Facebook. Biomax also alleged that Perfectx copied images from Biomax’s advertisements, made false claims about its product’s effectiveness and origin, and sold a lower-quality product that caused consumer confusion, complaints, reputational harm, and lost sales.

Biomax asserted federal claims for trademark infringement, unfair competition, and false advertising, along with California claims under the California unfair-competition law, California false-advertising law, and California common law. Biomax sought emergency relief while attempting to serve Perfectx. The court stated that Biomax sent documents to a commercial mail-receiving agency associated with Perfectx and to the attorney who filed a trademark application for Perfectx. Biomax and the court received no response.

Temporary restraining order standard

A temporary restraining order is short-term court relief designed to prevent immediate harm while the court considers longer-lasting relief. The court applied the same four factors used for a preliminary injunction: likelihood of success on the merits, likelihood of irreparable harm without an order, the balance of hardships, and the public interest. Because Biomax sought an order without the ordinary advance notice and opportunity to respond, the court also considered whether the notice requirements of Rule 65(b) of the Federal Rules of Civil Procedure were satisfied.

Likelihood of success

For trademark infringement or unfair competition, the court explained that a plaintiff must show a valid, protectable trademark and a likelihood that the defendant’s use will confuse consumers. Biomax submitted evidence of its federal registration for the PENETREX word mark and evidence concerning its trade dress and design mark.

The court evaluated the likelihood of confusion using the eight factors commonly used in the Ninth Circuit: the strength of the mark; the relatedness of the products; the care consumers are likely to use; the similarity of the marks; whether the parties use the same marketing channels; actual confusion; the defendant’s intent; and the likelihood of expansion into related products.

The court found that Biomax made a strong showing on the first seven factors. It described PENETREX as, at minimum, a suggestive mark, meaning consumers must use some imagination to connect the name with the product. The court also considered Biomax’s evidence that it had used the mark for about a decade and a half. The products were both topical joint creams, were relatively inexpensive, and were marketed through the same online channels. The court found the marks and products very similar, stating that they were virtually indistinguishable without close reading. Consumer complaints and Perfectx’s alleged copying of Biomax’s advertisements supported findings of actual confusion and an intent to create confusion. The eighth factor, likelihood of product expansion, was neutral.

Considering the factors as a whole, the court found a high likelihood of confusion and concluded that Biomax was likely to succeed on the merits.

Other required factors

Because Biomax showed a likelihood of success on its federal trademark claim, the court applied a rebuttable presumption that Biomax would suffer irreparable harm. The court found that Perfectx had not rebutted that presumption.

The court found that the balance of hardships favored Biomax because the only identified harm to Perfectx was lost profits from sales the court found likely to be infringing. The public interest also favored relief because trademark infringement can harm both the trademark owner and consumers. The court cited evidence that Perfectx allegedly appropriated Biomax’s advertisements and made false claims about its product’s origin and effectiveness.

The court found that Biomax had made every practicable effort to locate and notify Perfectx. It described a fictitious address, a San Francisco commercial mail-receiving agency associated with Perfectx, service on the attorney listed in Perfectx’s trademark application, and service at the address for the trademark applicant in China. The court concluded that Rule 65’s notice requirements were met.

Ruling and scope of the order

The court granted Biomax’s motion for a temporary restraining order. The order temporarily restrains Perfectx USA, its officers, directors, employees, agents, subsidiaries, distributors, and persons acting together with it who have notice of the order from manufacturing, importing, advertising, promoting, offering for sale, selling, distributing, or transferring products bearing marks identical or confusingly similar to the PENETREX trademarks.

The order also requires those persons to immediately discontinue use of identical or confusingly similar marks on websites and third-party online sales platforms where Perfectx offers goods. It further requires discontinuation of such use in e-commerce websites, domain-name extensions, website source code, web-page titles, advertising links, search-engine databases or cached material, and other uses visible to computer users or directing searches to websites controlled by Perfectx or associated sales platforms.

The temporary restraining order remains in effect until the scheduled preliminary-injunction hearing or a later date set by the court or agreed to by the parties. The court scheduled that hearing for July 11, 2023, and directed Biomax to serve the application and order through the available San Francisco address. The opinion does not state the result of the later preliminary-injunction hearing.