Sunsauce Foods Industrial Corp., Ltd v. Son Fish Sauce USA Corporation

Background

Sunsauce alleged that Son Fish’s use of the “SON SAUCE” mark infringed Sunsauce’s registered “SUNSAUCE” composite mark under Section 32 of the Lanham Act, 15 U.S.C. § 1114. Sunsauce also asserted common-law trademark infringement, California unfair competition, and unfair competition under Section 43 of the Lanham Act, but its preliminary-injunction motion relied only on the Section 32 infringement claim.

Sunsauce registered its mark with the United States Patent and Trademark Office in July 2013 for sauces and related food products. Son Fish later applied to register “SON SAUCE” in word and design forms, but the application was denied in 2020 because the Patent and Trademark Office found a likelihood of confusion with Sunsauce’s mark. Son Fish then petitioned the Trademark Trial and Appeal Board to cancel Sunsauce’s registration, alleging abandonment or inadequate use in the United States.

Legal standard

A preliminary injunction is temporary court relief issued before a final decision. The requesting party must show a likely success on the merits, likely irreparable harm without the injunction, a favorable balance of hardships, and that the injunction serves the public interest. Under the Ninth Circuit’s alternative sliding-scale approach, serious questions on the merits and a sharply favorable balance of hardships may support an injunction if likely irreparable harm and the public interest are also shown.

Court’s analysis

The court first held that Sunsauce had not submitted enough reliable evidence to justify this extraordinary remedy. Sunsauce initially relied on an attorney’s declaration describing the Patent and Trademark Office proceedings and attaching Son Fish’s website and Amazon product listings. It relied on allegations in its unverified complaint to show likely success and irreparable harm. After Son Fish challenged the lack of evidence that Sunsauce operated in the United States, Sunsauce submitted another attorney declaration with purported shipment receipts and Amazon pages. That attorney did not claim personal knowledge of the shipments or sales.

The court noted that preliminary-injunction proceedings may use less strict evidentiary standards, but the requesting party still must provide probative evidence showing a likelihood that it can prove its case with admissible evidence at trial. The court found that Sunsauce had not explained why it could not provide evidence from an owner or employee with personal knowledge, even though more than a year had passed since the lawsuit was filed.

The court also found that Sunsauce had not shown a likely success on the merits or serious questions about its infringement claim. A registered-mark infringement claim requires a protectable ownership interest and a likelihood of consumer confusion. The court accepted Sunsauce’s ownership interest based on its registration, which provided initial evidence of the mark’s validity and Sunsauce’s exclusive right to use it in commerce.

The court found, however, that Son Fish appeared to have the better argument on likely consumer confusion at this stage. Although the marks sounded similar, they were spelled differently, the SUNSAUCE mark included Thai lettering, and the SON SAUCE mark included a space before “sauce.” Sunsauce also did not provide reliable evidence that it actually sold fish sauce bearing its mark in the United States. The shipment receipts were mostly for shipments after the lawsuit began, did not show where the products were marketed or sold, and mostly involved chili suki sauces rather than fish sauce.

The court further found insufficient evidence that the companies’ products were sold through the same channels or were otherwise sufficiently close in the marketplace. Sunsauce provided no probative evidence of actual consumer confusion. Son Fish submitted declarations from two United States Asian or ethnic sauce distributors stating that they had not heard of Sunsauce’s products or did not recognize the SUNSAUCE mark. The court concluded that the limited, largely post-lawsuit shipments and the lack of evidence concerning overlapping products and marketing channels made likely confusion among American consumers appear limited.

The court also explained that the Patent and Trademark Office’s rejection of Son Fish’s applications did not by itself establish infringement or an intent to deceive the public. The agency had not considered the evidence about Sunsauce’s limited United States presence, and it had found only a potential likelihood of confusion—not that Son Fish had infringed Sunsauce’s mark.

Finally, the balance of hardships did not favor an injunction. Sunsauce’s proposed order would have stopped Son Fish from packaging, marketing, selling, or distributing products bearing the SON SAUCE mark, which the court found constituted Son Fish’s entire existing business. It also would have deprived Son Fish of benefits from more than ten years of developing its mark. In contrast, Sunsauce waited more than a year after filing the lawsuit to seek preliminary relief, which suggested that the harm it claimed to be suffering without an injunction was limited.

Disposition

The court denied Sunsauce’s motion for a preliminary injunction. The order did not resolve the ultimate merits of Sunsauce’s trademark-infringement claim or its other claims.