Rawnori v. Guangzhou Shi Tai Ku Ke Ji You Xian Ze Ren Gong Si

Background

Rawnori brought a trademark-infringement action based on the mark “RAWNORI.” The opinion states that Rawnori sells products through its website and an Amazon.com storefront called “RAWNORI Healthy Living,” and that at least some products bear the mark. Rawnori alleged that it had consistently used the mark in commerce since 2011 and had used it on its website and Amazon storefront since 2012.

The opinion states that Guangzhou registered the RAWNORI mark with the United States Patent and Trademark Office in 2019. Rawnori alleged that Guangzhou obtained the registration fraudulently by claiming that it was the first user of the mark in commerce and that its first use occurred on August 26, 2018. Rawnori also alleged that Guangzhou knew Rawnori had used the mark before that date.

Temporary Restraining Order Application

Rawnori sought a temporary restraining order, or TRO, to prevent Guangzhou from using the “Protected Mark.” The proposed order did not define that term. It also sought to restrain Guangzhou’s merchant storefronts and assets with financial institutions, permit alternative methods of service, and authorize expedited discovery.

Court’s Analysis

The court held that the proposed TRO could not be granted in its current form. It noted that the proposed order sought one-sided consideration and sealing of the complaint and motion papers even though those materials had already been filed publicly. The court also noted that Rawnori had begun a proceeding before the United States Patent and Trademark Office to cancel Guangzhou’s registration, making the reason for one-sided treatment and sealing unclear.

The court found that Rawnori’s papers did not clearly explain the precise nature of its prior use of the RAWNORI mark or the scope of the rights it claimed. Because Guangzhou had a registered mark, the court stated that Rawnori’s vague and conclusory allegations about prior use were insufficient to show a likelihood of success on its claims. The court required details about Rawnori’s prior use in an affidavit or declaration and information about the status of the cancellation proceeding.

The court also required a factual basis for personal jurisdiction, meaning the court’s power to exercise authority over the defendant. It stated that, absent an affidavit or declaration showing that Guangzhou had sold merchandise to a New York customer or otherwise conducted business in New York, there was no basis shown for personal jurisdiction. The court explained that merely operating a commercial website capable of reaching customers in New York, without evidence or allegations that commercial activity actually occurred there, was insufficient. The court found that a cited case did not change that conclusion because the alleged counterfeit products in that case had been shipped from the forum.

Disposition

The court denied Rawnori’s application for a temporary restraining order without prejudice. The opinion does not decide the ultimate trademark-infringement claims.