Intellectual Property Law

No Preliminary Injunction in "Planet Coffee" Trademark Infringement Case

By Michael Atkins

Plaintiff Planet Coffee Roasters’ (left) and defendant Planet Coffee’s marks

Yes, it’s a trademark dispute involving coffee.

But no, it’s not being fought out in Seattle. This one’s in southern California.

Last year, Planet Coffee Roasters, Inc., sued Hung Dam, d/b/a Planet Coffee, for trademark infringement.

Planet Coffee Roasters sells coffee beans to wholesale customers under the mark PLANET COFFEE ROASTERS. Mr. Dam’s store sells beans and coffee by the cup to retail customers under the mark PLANET COFFEE. 

As the Los Angeles IP Trademark Law Blog predicted, Planet Coffee Roasters has had a hard time of it.

On Feb. 18, the Central District of California denied Planet Coffee Roasters’ motion for preliminary injunction against Mr. Dam, finding the plaintiff was not likely to succeed on the merits.

Favoring Planet Coffee Roasters, the court found the marks and goods/services are similar, and consumers are not likely to exercise much care in purchasing the parties’ relatively inexpensive products. 

Favoring Mr. Dam, however, the court found PLANET COFFEE ROASTERS is fairly weak and the parties use different marketing channels.

The court also wasn’t impressed with Planet Coffee Roasters’ evidence of irreparable harm.

“Plaintiff has failed to show that it has suffered any injury at all, let alone injury that is ‘great,’” the court wrote. “Plaintiff simply asserts that allowing Defendant to ‘use[ ] a confusingly identical name and sell[ ] inferior coffee products will damage, if not destroy entirely, Planet Coffee’s reputation and goodwill.’ However, it offers no evidentiary support at all for this claim. Even assuming that Plaintiff’s business has suffered some monetary loss, Plaintiff has made no showing that money damages will be inadequate to compensate for its losses.”

Nor was the court impressed with Planet Coffee Roasters’ proof that the balance of hardships tips sharply in its favor: “[A]side from unsubstantiated claims made in declarations submitted by two of its employees, Plaintiff has offered no factual evidence in support of its claim that it has been harmed by Defendant’s use of the mark ‘Planet Coffee.’”

The case cite is Planet Coffee Roasters, Inc. v. Hung Dam, 2010 WL 625343, No. 09-00571 (C.D.Cal. Feb. 18, 2010).

Full post as published by Seattle Trademark Lawyer on March 03, 2010 (boomark / email).