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PLAINTIFF’S EX PARTE MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT 

THEREOF 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

JEFFREY C. HALLAM (State Bar No. 161259) 

E-Mail: jhallam@sideman.com 

ZACHARY J. ALINDER (State Bar No. 209009) 

E-Mail: zalinder@sideman.com

PETER M. COLOSI (State Bar No. 252951) 

E-Mail: pcolosi@sideman.com

REBECCA K. FELSENTHAL (State Bar No. 303476) 

E-Mail: rfelsenthal@sideman.com

SIDEMAN & BANCROFT LLP 

One Embarcadero Center, Twenty-Second Floor 

San Francisco, California 94111-3711 

Telephone: (415) 392-1960 

Facsimile: (415) 392-0827 

Attorneys for Plaintiff 

FITBIT, INC. 

UNITED STATES DISTRICT COURT 

NORTHERN DISTRICT OF CALIFORNIA 

FITBIT, INC., a Delaware Corporation,

Plaintiff, 

v. 

LAGUNA 2, LLC, A New Jersey Limited 

Liability Company; JOEL BLANK, an 

individual; and DOES 1-30, inclusive, 

Defendants. 

Case No. 3:17-cv-00079 EMC 

PLAINTIFF’S EX PARTE MOTION FOR 

ENTRY OF A TEMPORARY 

RESTRAINING ORDER AND ORDER TO 

SHOW CAUSE WHY A PRELIMINARY 

INJUNCTION SHOULD NOT ISSUE; 

MEMORANDUM OF POINTS AND 

AUTHORITIES IN SUPPORT THEREOF 

Judge: Honorable Edward M. Chen 

Dept.: Courtroom 5, 17th Floor 

Date: TBD 

Time: TBD

Case 3:17-cv-00079-EMC Document 12 Filed 01/11/17 Page 1 of 30
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1 Case No. 3:17-cv-00079 EMC

MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

NOTICE OF MOTION, MOTION, AND STATEMENT OF RELIEF SOUGHT 

TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD: 

PLEASE TAKE NOTICE that at a date and time to be set by the Court, or as soon 

thereafter as the matter may be heard, in Courtroom 5 on the 17th Floor of the United States 

District Court for the Northern District of California, San Francisco Courthouse, 450 Golden Gate 

Avenue, San Francisco, CA 94102, before the Honorable Edward M. Chen, Plaintiff Fitbit, Inc. 

(“Fitbit”) will, and hereby does, respectfully move ex parte for entry of (1) a temporary restraining 

order, and (2) an order to show cause why a preliminary injunction should not issue against 

Defendants Laguna 2 LLC (“L2”) and Joel Blank (collectively, “Defendants”), and anyone acting 

in concert with them. Prior to filing this Motion, Fitbit, by and through its undersigned counsel, 

provided notice to Defendants’ counsel of its intention to bring this Motion (along with a copy of 

the Complaint), pursuant to Civ. L.R 65-1(b). Accordingly, Fitbit brings this Motion, with Notice 

to Defendants, pursuant to Federal Rule of Civil Procedure 65 and 15 U.S.C. § 1116. 

Fitbit’s Ex Parte Motion seeks temporary and preliminary injunctive relief against 

Defendants to enjoin them from (i) further sales of purportedly refurbished “Fitbit” branded 

product from their inventory, until such time as Fitbit has been allowed to inspect and approve the 

products to ensure no further sale of scrap products occurs, and (ii) further use of any counterfeit 

Fitbit trademarks, including on their product packaging. 

This Motion is based on this Notice of Motion and Motion; the Memorandum of Points 

and Authorities below; the Declarations of Brett Millar and Jeff Hallam filed in Support of this 

Motion, including the Exhibits attached thereto; the Proposed Order submitted in support of this 

Motion; the Complaint and record in this matter; and such other and further papers, evidence, and 

argument as may be submitted in connection with this Motion. 

DATED: January 11, 2017 SIDEMAN & BANCROFT LLP 

 By: /s/ Zachary J. Alinder 

 Zachary J. Alinder 

Attorneys for Plaintiff 

FITBIT, INC. 

Case 3:17-cv-00079-EMC Document 12 Filed 01/11/17 Page 2 of 30
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i Case No. 3:17-cv-00079 EMC

MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

TABLE OF CONTENTS 

Page 

I. INTRODUCTION ................................................................................................................. 1

II. STATEMENT OF ISSUES TO BE DECIDED .................................................................... 2

III. STATEMENT OF FACTS .................................................................................................... 3

A. Relevant Background Regarding Fitbit ..................................................................... 3

B. Fitbit’s Supply Chain And Related Quality Control Processes ................................. 3

C. Fitbit’s Federally-Registered Trademarks ................................................................. 4

D. Defendant’s Infringement and Counterfeiting Activities .......................................... 5

1. Fitbit Puts Defendants On Notice Of The Fitbit Marks And 

Warranty ........................................................................................................ 5

2. Defendants Expand Their Infringement ........................................................ 5

E. Defendants’ Misleading and Inferior Warranty ........................................................ 7

F. Consumer Confusion Already Caused By Defendants ............................................. 8

G. Fitbit Attempts To Avoid Urgent Court Relief And Defendant L2 Sues Over 

Statements Purportedly Made To Groupon ............................................................... 9

H. Defendants’ Continued Attempts To Resell Products That Were Likely 

Designated As Scrap Too Requires Urgent Relief .................................................... 9

IV. ARGUMENT ...................................................................................................................... 10

A. Standard for Temporary Restraining Order and Preliminary Injunction ................ 10

B. Fitbit Will Likely Succeed on the Merits of Each of its Causes of Action ............. 11

1. Federal Trademark Counterfeiting and Infringement ................................. 11

a. Fitbit has a Protectable Ownership Interest in the Trademark ........ 11

b. The Court Should Presume Consumer Confusion .......................... 11

c. The Sleekcraft Factors Also Sharply Tip In Favor Of Fitbit ........... 14

(1) Strength of the Fitbit Marks ................................................ 14

(2) Proximity of the Goods ....................................................... 15

(3) Similarity Between the Marks ............................................. 15

(4) Evidence of Actual Confusion ............................................ 15

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MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

LAW OFFICES 

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& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

(5) Marketing Channels Used ................................................... 16

(6) Type of Goods and Purchasers’ Likely Degree of 

Care ..................................................................................... 16

(7) Defendants’ Intent in Selecting the Mark ........................... 17

(8) Likelihood of Expansion of the Product Lines .................... 17

2. Federal Trademark Dilution ........................................................................ 18

3. Federal Unfair Competition and California Unfair Competition ................ 19

C. Fitbit is Likely to Suffer Irreparable Harm in the Absence of Preliminary 

Relief for which there is No Adequate Legal Remedy ........................................... 19

D. The Balance of Equities Sharply Tips in Favor of Fitbit ........................................ 20

E. The Proposed Injunction Serves the Public’s Interest ............................................. 21

F. A Bond, If Any, Should Be Nominal ...................................................................... 21

V. CONCLUSION ................................................................................................................... 22

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28 iii Case No. 3:17-cv-00079 EMC

PLAINTIFF’S EX PARTE MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT 

THEREOF

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

TABLE OF AUTHORITIES 

 Page(s) 

Cases 

Acad. of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 

944 F.2d 1446 (9th Cir. 1991) ....................................................................................................19 

ACI Int’l Inc. v. Adidas-Salomon AG, 

359 F. Supp. 2d 918 (C.D. Cal. 2005) ........................................................................................19

Alliance for the Wild Rockies v. Cottrell, 

632 F.3d 1127 (9th Cir. 2011) ....................................................................................................10 

AMF Inc. v. Sleekcraft Boats, 

599 F.2d 341 (9th Cir. 1979) ....................................................................................14, 15, 17, 19

Apple Computer, Inc. v. Formula Int’l Inc., 

725 F.2d 521 (9th Cir. 1984) ......................................................................................................20 

Beaty v. Brewer, 

649 F.3d 1071 (9th Cir. 2011) ....................................................................................................10 

Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 

174 F.3d 1036 (9th Cir. 1999) ..................................................................................14, 15, 16, 17 

Mattel, Inc. v. Walking Mountain Prods., 

353 F.3d 792 (9th Cir. 2003) ......................................................................................................14 

Cartier, a Div. of Richemont N. Am., Inc. v. Symbolix, Inc., 

454 F. Supp. 2d 175 (S.D.N.Y. 2006) ........................................................................................13 

Cleary v. News Corp., 

30 F.3d 1255 (9th Cir. 1994) ......................................................................................................19 

Custom Mfg. & Eng’g, Inc. v. Midway Servs., Inc., 

508 F.3d 641 (11th Cir. 2007) ....................................................................................................12 

Dallas Cowboys Football Club, Ltd. v. Am’s Team Props., Inc., 

616 F. Supp. 2d 622 (N.D. Tex. 2009) .......................................................................................12 

Dan-Foam A/S v. Brand Named Beds, LLC, 

500 F. Supp. 2d 296 (S.D.N.Y. 2007) ........................................................................................18 

E. & J. Gallo Winery v. Gallo Cattle Co., 

967 F.2d 1280 (9th Cir. 1992) ..............................................................................................14, 17 

E Clampus Vitus v. Steiner, 

No. 2:12-CV-01381-TLN, 2013 WL 4431992 (E.D. Cal. Aug. 16, 2013) ................................19 

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PLAINTIFF’S EX PARTE MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT 

THEREOF

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

Eclipse Assoc., Ltd. v. Data Gen. Corp., 

894 F.2d 1114 (9th Cir. 1990) ....................................................................................................14 

El Greco Leather Prods. Co, Inc.. v. Shoe World, Inc., 

806 F.2d 392 (2d Cir. 1986) .......................................................................................................12 

Entrepreneur Media, Inc. v. Smith, 

279 F.3d 1135 (9th Cir. 2002) ....................................................................................................15 

Fleischmann Distilling Corp. v. Maier Brewing Co., 

314 F.2d 149 (9th Cir. 1963) ......................................................................................................17 

GoTo.com, Inc. v. Walt Disney Co., 

202 F.3d 1199 (9th Cir. 2000) ..............................................................................................14, 16 

Jada Toys, Inc. v. Mattel, Inc., 

518 F.3d 628 (9th Cir. 2008) ......................................................................................................18 

JL Beverage Co., LLC v. Jim Beam Brands Co., 

828 F.3d 1098 (9th Cir. 2016) ....................................................................................................19 

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 

408 F.3d 596 (9th Cir. 2005) ......................................................................................................11 

La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 

762 F.3d 867 (9th Cir. 2014) ......................................................................................................16 

Landscape Forms, Inc. v. Columbia Cascade Co., 

113 F.3d 373 (2d Cir. 1997) .......................................................................................................12 

Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 

658 F.3d 936 (9th Cir. 2011) ......................................................................................................11 

M/A-COM Tech. Solutions, Inc. v. Integrated Semiconductor Serv., Inc., 

No. C–15–2423 EMC, 2015 WL 4463920 (N.D. Cal. Jul. 21, 2015) ........................................10 

Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 

571 F.3d 873 (9th Cir. 2009) ................................................................................................ 19-20 

Maxim Integrated Prods., Inc. v. Quintana, 

654 F. Supp. 2d 1024 (N.D. Cal. 2009) ...............................................................................20, 21 

Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 

638 F.3d 1137 (9th Cir. 2011) ....................................................................................................11 

New W. Corp. v. NYM Co. of California, Inc., 

595 F.2d 1194 (9th Cir. 1979) ....................................................................................................19 

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28 v Case No. 3:17-cv-00079 EMC

PLAINTIFF’S EX PARTE MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT 

THEREOF

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

Obesity Research Inst., LLC v. Fiber Research Int’l, LLC, 

165 F. Supp. 3d 937 (S.D. Cal. 2016) ........................................................................................19

Official Airline Guides, Inc. v. Goss, 

6 F.3d 1385 (9th Cir. 1993) ........................................................................................................17 

Opticians Ass’n of Am. v. Indep. Opticians of Am., 

920 F.2d 187 (3d Cir. 1990) .......................................................................................................20 

Perkins School for the Blind v. Maxi-Aids, Inc., 

274 F. Supp. 2d 319 (E.D.N.Y. 2003) ........................................................................................13 

Playboy Enters., Inc. v. Welles, 

279 F.3d 796 (9th Cir. 2002) ......................................................................................................18 

Printers Servs. Co. v. Bondurant, 

No. CV 91-0916 JSL (SX), 1991 WL 332055 (C.D. Cal. Apr. 16, 1991) ........................... 21-22 

Sun Microsystems, Inc. v. Microsoft Corp., 

999 F. Supp. 1301 (N.D. Cal. 1998) ..........................................................................................21

Surfvivor Media, Inc. v. Survivor Prods., 

406 F.3d 625 (9th Cir. 2005) ................................................................................................ 16-17 

Ubiquiti Networks, Inc. v. Kozumi USA Corp., 

No. 12-2582 CW, 2012 WL 2343670 (N.D. Cal. June 20, 2012) ..............................................11 

United States v. Farmer, 

370 F.3d 435 (4th Cir. 2004) ......................................................................................................12 

United States v. Hon, 

904 F.2d 803 (2d Cir. 1990) .................................................................................................12, 13 

United States v. Milstein, 

401 F.3d 53 (2d Cir. 2005) .........................................................................................................13 

Vertos Med., Inc. v. Globus Med., Inc., 

No. C 09-1411 PJH, 2009 WL 3740709 (N.D. Cal. Nov. 6, 2009) ...........................................21 

Warner-Lambert Co. v. Northside Dev. Corp., 

86 F.3d 3 (2nd Cir. 1996) ..................................................................................................... 12-13 

Westinghouse Elec. Corp. v. Gen. Circuit Breaker & Elec. Supply Inc., 

106 F.3d 894 (9th Cir. 1997) ......................................................................................................12 

Zeltiq Aesthetics, Inc. v. BTL Indus., Inc., 

32 F. Supp. 3d 1088 (N.D. Cal. 2014) .......................................................................................19 

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28 vi Case No. 3:17-cv-00079 EMC

PLAINTIFF’S EX PARTE MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT 

THEREOF

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

Statutes 

15 U.S.C. § 1125(c)(1), (2) ..............................................................................................................18 

Cal. Civ. Code Section 1797.81 .....................................................................................................7, 8 

Other Authorities 

Federal Rule of Civil Procedure 65(d) .............................................................................................21 

Local Rule 65.1.1 .............................................................................................................................21 

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1 Case No. 3:17-cv-00079 EMC

MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

I. INTRODUCTION 

Fitbit recently caught Defendants selling non-genuine “Fitbit” branded products that were 

never supposed to be resold to consumers. Indeed, nine separate purchases from Defendants all 

turned out the same. These products were originally manufactured by Fitbit, but because they did 

not meet Fitbit’s high quality standards, they were designated to be scrapped and/or recycled. 

Rather than being destroyed as part of Fitbit’s standard quality control processes, these scrap 

products instead were diverted from Fitbit’s supply chain, placed into counterfeit packaging, and 

then resold by Defendants through numerous non-authorized online retailers, under the guise that 

they were “refurbished” genuine Fitbit products. 

As the customer reviews for Defendants’ recent online sales make clear, Defendants’ sales 

have caused significant actual confusion with members of the consuming public, deceived by 

Defendants into believing they were buying a high-quality genuine Fitbit product only to receive 

an inferior product with an inferior warranty: 

These customer reviews also detail the continuing irreparable harm to Fitbit’s brand and 

goodwill as a result of Defendants’ conduct, as these customers attempted to contact Fitbit for 

customer service and warranty support only to find out there is none:

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2 Case No. 3:17-cv-00079 EMC

MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

LAW OFFICES 

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& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

The scathing product reviews from Defendants’ online sales continue to grow day after 

day, requiring Fitbit to seek urgent temporary and preliminary injunctive relief to ensure that the 

irreparable harm to Fitbit’s brand and goodwill does not continue during the pendency of this 

Action. The critical need for this relief crystalized during the holidays, as Defendants’ negative 

customer reviews mounted and Fitbit learned that one of Defendants’ distribution channels – 

Groupon – was returning to Defendants roughly 2,200 “Fitbit” branded products already rejected 

by their customers. Fitbit sought to inspect Defendants’ remaining “Fitbit” branded inventory to 

determine whether additional products may have been designated for scrap, including these 

Groupon product returns, to ensure that Defendants did not resell any further scrap products. 

Defendants not only refused to allow Fitbit to inspect this inventory, but also sued Fitbit in New 

Jersey based on purported state law claims that Fitbit was somehow defaming them with one of 

their online retailers, Groupon. 

Because there is no jurisdiction over Fitbit in New Jersey, that lawsuit presents a different 

set of legal issues, and further irreparable harm would occur before Fitbit’s jurisdictional motion 

can be heard in any event, good cause exists for this Court to temporarily restrain Defendants from 

reselling any further purportedly refurbished “Fitbit” branded products, including the returned 

Groupon products, from their inventory without first allowing Fitbit to inspect and approve it as 

requested in the proposed order submitted concurrently with the Motion. This temporary 

injunctive relief should also prohibit Defendants from using counterfeit packaging, to the extent 

they have not ceased such conduct. Further, Fitbit respectfully requests that the Court order 

Defendants to show cause why a preliminary injunction should not issue granting this same relief 

during the pendency of this litigation, or until permanent injunctive relief may be ordered. 

II. STATEMENT OF ISSUES TO BE DECIDED 

Should the Court grant a narrow Temporary Restraining Order and Order to Show Cause 

re Preliminary Injunction against Defendants where: (i) Fitbit is likely to succeed on its claims that 

Defendants have infringed, tarnished, and counterfeited Fitbit’s trademarks and unfairly competed 

with Fitbit as a result; (ii) Fitbit has suffered, and will likely continue to suffer, irreparable harm to 

its good will and reputation as a result of Defendants’ actions, if no TRO is entered; (iii) the 

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3 Case No. 3:17-cv-00079 EMC

MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

LAW OFFICES 

SIDEMAN

& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

balance of equities tips sharply in Fitbit’s favor based on the consideration of all the relevant facts; 

and (iv) the narrow injunctive relief Fitbit requests would benefit the public interest by ensuring 

that members of the public are not further confused or deceived about the nature and quality of 

non-genuine “Fitbit” branded products being offered for sale to the public? 

III. STATEMENT OF FACTS 

A. Relevant Background Regarding Fitbit 

Fitbit is a San Francisco-based corporation that specializes in the design, production, and 

sale of connected health and fitness wearable products and various associated mobile applications 

and online resources with current sales exceeding $2 billion annually. See Declaration of Brett 

Millar in Support of Plaintiff’s Ex Parte Motion for Entry of a Temporary Restraining Order and 

Order to Show Cause why a Preliminary Injunction Should not Issue (“Millar Decl.”), ¶ 2. Fitbit’s 

customers recognize these products and services for their high quality and reliability in helping 

those customers achieve their health-related goals. See id. Fitbit has worked hard to earn that 

reputation by investing significant financial and human resources to develop its cutting-edge 

products and services, which, in turn, have achieved worldwide acclaim and popularity. See id. 

As a result, Fitbit has created substantial goodwill in its brand and the Fitbit trademarks have come 

to signify the high quality and reliable products and services that are the fruit of Fitbit’s efforts. 

See id. 

B. Fitbit’s Supply Chain And Related Quality Control Processes 

To maintain its reputation for high quality and reliable products and services, Fitbit has 

established substantial, legitimate, and non-pretextual quality-control procedures to ensure that 

non-conforming units do not diminish or tarnish Fitbit’s brand and goodwill. See Millar Decl., ¶ 

3. One of the ways that Fitbit does so is through a robust warranty and return program, as well as 

an established supply chain quality control process for any returns or exchanges from consumers, 

distributors, or anyone else. See id. 

Because of the technical complexity of Fitbit products, Fitbit does not authorize any third 

party not associated with Fitbit to conduct refurbishment of Fitbit products for the intent of resale. 

See id. Instead, Fitbit has a reverse logistics supply chain process, whereby Fitbit products that do 

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SAN FRANCISCO, CALIFORNIA 94111-3711 

not meet its high quality standards or that have been returned for any reason are evaluated and 

either refurbished by authorized third parties to be used as replacements for customer returns or 

designated to be scrapped and/or recycled. See id. The determination that a product should be 

scrapped occurs for many reasons, including the existence of physical defects and other material 

differences between those products and genuine Fitbit products that are authorized for resale. See 

id.

C. Fitbit’s Federally-Registered Trademarks 

Fitbit is the owner of numerous federally-registered trademarks related to the Fitbit brand 

of products and services, including but not limited to the Federal Registration Numbers 3,732,334; 

4,507,210; 4,851,801; 4,851,802; and, 4,851,803, (collectively, the “Fitbit Marks”). See 

Complaint, ECF No. 1, ¶¶ 17-25; Millar Decl., ¶ 4. The Fitbit Marks were registered to Fitbit at 

its principal place of business at the time of registration in San Francisco, California, and have 

been used in interstate commerce to identify and distinguish Fitbit’s high quality products and 

services since approximately 2009. See Millar Decl., ¶ 4. 

Fitbit has built tremendous goodwill and brand reputation among consumers through 

significant investment in advertising, promoting, and delivering products and services of the 

highest quality under Fitbit’s federally-registered trademarks and the Fitbit trade name. See id. 

Fitbit has used the Fitbit Marks to identify goods and services as being genuine, and the Fitbit 

Marks and name are well-recognized and famous worldwide. See id. Fitbit vigorously protects 

this reputation, and the consumers who have come to rely on the Fitbit Marks, by maintaining 

quality-control and supply-chain standards for all of its products. See id. As a result, purchasers, 

potential purchasers, members of the public, and those who care about fitness trackers associate 

Fitbit’s products with exceptional materials, design, functionality, and reliability. See id. 

Fitbit’s significant investment in advertising, promoting, and delivering products and 

services of the highest quality have resulted in a high degree of fame and notoriety to Fitbit and 

the Fitbit Marks, from being named a runner-up at TechCrunch50 in 2008, and CES 2009 

Innovation honoree and best in the Health & Wellness category, to being ranked by Fast Company 

as one of the top 50 most innovative companies of 2014 and 2016. See, e.g.,

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SAN FRANCISCO, CALIFORNIA 94111-3711 

https://www.fastcompany.com/company/fitbit. 

D. Defendant’s Infringement and Counterfeiting Activities 

Defendants’ business model is to sell end of life, discontinued, and refurbished consumer 

electronics products, through online retailers. See Declaration of Jeffrey C. Hallam in Support of 

Plaintiff’s Ex Parte Motion for Entry of a Temporary Restraining Order and Order to Show Cause 

Why a Preliminary Injunction Should not Issue (“Hallam Declaration”), Ex. D at p. 1. Since at 

least sometime in 2015, Defendants’ product offerings have included certain “Fitbit” branded 

products. See id. 

1. Fitbit Puts Defendants On Notice Of The Fitbit Marks And Warranty 

In 2015, Fitbit discovered that Defendants were using the name “Fitbit” as their vendor 

name on a consumer electronics website, called www.thenextweb.com, and had misappropriated 

Fitbit’s trademarks and other intellectual property rights in the process. See Millar Decl., ¶ 10. 

Defendants were also not disclosing that their sales were not covered by Fitbit’s warranty. See id. 

Fitbit sent Defendants a cease and desist letter on November 19, 2015 demanding that Defendants 

halt their infringement of Fitbit’s intellectual property rights and not mislead consumers about any 

warranty. See id. As such, no later than 2015, Defendants were on notice of Fitbit’s federallyregistered trademarks and that further infringement would necessarily be a willful violation of 

Fitbit’s intellectual property rights. Defendants appeared to comply with Fitbit’s cease and desist 

letter, and Fitbit believed that would be the end of the matter. See id. 

2. Defendants Expand Their Infringement 

Unfortunately, Defendants instead have expanded their infringement, selling non-genuine 

“Fitbit” products in counterfeit packaging, through much more established distribution channels, 

such as eBay.com, Groupon.com, and Woot.com (Defendants’ “Established Distribution 

Channels”). See Millar Decl., ¶¶ 5-9, 11. Indeed, Fitbit is informed and believes that, beginning 

in approximately 2015, Defendants began selling a large volume of non-genuine “Fitbit” products 

online through their Established Distribution Channels, under the guise that these products had 

merely been “refurbished.” See id.; Hallam Decl., ¶ 2. 

Through the Groupon platform alone, Defendants have apparently sold over 200,000 

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“Fitbit” branded products over the past two years, with an MSRP value for new Fitbit products of 

over $20 million. See Millar Decl., ¶ 7. Defendants have sold many more through its other 

Established Distribution Channels, including over $80,000 of “Fitbit” branded products on 

eBay.com in the last two years. See Hallam Decl., ¶ 5. 

Due to the complexity of these products, Fitbit was skeptical of Defendants’ claims that 

they were offering “refurbished” Fitbit products for sale. That skepticism turned out to be well 

founded. Fitbit has now confirmed through numerous purchases of Defendants’ purportedly 

“refurbished” Fitbit products through Defendants’ Established Distribution Channels that 

Defendants have been selling non-genuine and otherwise infringing “Fitbit” products, including in 

counterfeit packaging mocked up to resemble genuine Fitbit return replacement packaging. See

Millar Decl., ¶¶ 5-7; Hallam Decl., ¶ 2. While Defendants claimed the products were merely 

“refurbished,” Fitbit confirmed that nine separate products purchased from Defendants had 

actually been designated to be scrapped and/or recycled as part of Fitbit’s standard quality control 

processes, and had somehow been diverted from Fitbit’s reverse logistics supply chain and 

obtained by Defendants. See id. 

To further deceive consumers, Defendants sold these scrap products in counterfeit 

packaging that attempts to mimic Fitbit’s genuine return replacement packaging. 

Example of Genuine Fitbit Return Counterfeit “Fitbit” Packaging Used 

Replacement Packaging: By Defendants: 

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See Millar Decl., ¶ 6, Ex. F. As shown above, the counterfeit packaging used by Defendants 

reproduced, counterfeited, copied, and/or colorably imitated the Fitbit Marks and Fitbit trade 

name. Defendants’ counterfeit packaging also referred the consumer to Fitbit.com to setup the 

product to further confuse and deceive the consumer into believing that Fitbit authorized, was 

affiliated with, and/or approved the sale of this product to consumers. See id. 

E. Defendants’ Misleading and Inferior Warranty 

In addition, Defendants included a “Warranty Card” in their product shipments that 

referred the customer to the Fitbit website to download a product manual, and further misled the 

consumer into believing that Fitbit authorized, was affiliated with, and/or approved the sale of this 

non-genuine product to consumers by failing to state that there is no warranty provided by Fitbit 

for these products: 

See Millar Decl., ¶ 6, Ex. F. Thus, Defendants sold scrap products without advising consumers 

that they are not Fitbit authorized retailers, and that the products are not eligible for Fitbit warranty 

support, as required for example by Cal. Civ. Code Section 1797.81. This failure dramatically 

increased the likelihood, confirmed in the consumer reviews of Defendants’ product sales, that 

their customers would be confused about Fitbit’s support of the warranty, further damaging the 

consumer experience and increasing the damage to Fitbit’s brand. 

In addition, Defendants’ warranty itself is far inferior to, and materially different from, 

Fitbit’s warranty. Defendants provide a 60-day warranty, but only for replacement of broken 

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units. See id. On the other hand, Fitbit has a 45-day Satisfaction Guaranteed Return Policy that 

allows the consumer to return a product for any reason for 45 days and allows the return of 

defective products for a year in the United States. See Fitbit’s Warranty and Return Policy, 

available at https://www.fitbit.com/legal/returns-and-warranty. 

F. Consumer Confusion Already Caused By Defendants 

Not only are consumers likely to be confused by Defendants’ use of the Fitbit Marks, but 

there is also significant evidence of actual consumer confusion and brand reputational harm to 

Fitbit from consumers who have recently complained about the products sold by Defendants. 

The harm to Fitbit’s brand and goodwill caused by Defendants’ conduct is ongoing, as the 

negative reviews continue to mount (see the most recent reviews in Introduction for example), and 

confirm the confusion and disappointment caused to consumers due to the inferior quality of the 

product and warranty sold by Defendants: 

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Hallam Decl., Ex. F. As just a small sampling of the reviews by Defendants’ customers confirms1, 

Defendants’ use of the Fitbit Marks has caused actual confusion or mistake, and deceived 

consumers into believing there is an affiliation, connection, or association between Fitbit and 

Defendants, and has confused members of the public as to the origin, sponsorship, authorization 

and/or approval by Fitbit of Defendants’ “Fitbit” branded product sales. This has caused 

irreparable harm to Fitbit’s brand and reputation, as to which there is no adequate remedy at law.

G. Fitbit Attempts To Avoid Urgent Court Relief And Defendant L2 Sues Over 

Statements Purportedly Made To Groupon 

Fitbit attempted to avoid the need to seek this relief on an exigent basis, by requesting that 

Defendants allow Fitbit to inspect their inventory to ensure that Defendants did not resell any 

more products that had been designated for scrap. See Hallam Decl., ¶ 2, Ex. A. Defendants 

refused that request, and instead demanded that Fitbit authorize them to sell the rest of their 

inventory on Groupon, which Fitbit could not possibly do without inspecting it. See id. ¶ 3, Ex. B. 

Defendant L2 then sued Fitbit in mid-December 2016 in state court in New Jersey, 

claiming that certain of Fitbit’s alleged statements to Groupon were defamatory. See id., ¶ 4. 

Fitbit removed that lawsuit to Federal Court, and the matter is still pending there. See id. Fitbit’s 

motion to dismiss, including but not limited for lack of personal jurisdiction over Fitbit in New 

Jersey, is currently due to be filed January 18, 2017. See id. Thus far, the Court has denied 

Defendant L2’s requests for emergency relief, and Fitbit intends to specially appear through 

counsel only to establish the lack of jurisdiction. 

H. Defendants’ Continued Attempts To Resell Products That Were Likely 

Designated As Scrap Too Requires Urgent Relief 

Around the same time, Fitbit received notice from Groupon that it had received over 2,000 

products returns that were sold by Defendants. See Millar Decl., ¶ 9. Although Fitbit requested 

 

1

 Defendants’ customer reviews in this Motion and many other reviews compiled from the 

Groupon pages associated with Defendants’ product sales have been attached as Exhibits F to J to 

the Hallam Declaration. 

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that Groupon quarantine these products for inspection by Fitbit, Groupon notified Fitbit on 

December 16, 2016 that it was returning those products to Defendants on December 19, 2016. See 

id. Given the continuing and irreparable nature of the harm to Fitbit if Defendants are allowed to 

continue selling “Fitbit” branded products that may have been designated as scrap, including 

potentially thousands that have already been rejected by Groupon customers, Fitbit filed the 

current Action in this Court, which has personal jurisdiction over all parties, to ensure that 

appropriate temporary and preliminary injunctive relief can be entered to prevent further harm to 

Fitbit’s brand and goodwill during the pendency of this Action. 

Accordingly, good cause and exigent circumstances exist here to order temporary and 

preliminary injunctive relief to prevent Defendants from reselling any “Fitbit” branded products in 

their inventory that had been designated for scrap, and from any further use of counterfeit “Fitbit” 

packaging.2 

IV. ARGUMENT 

A. Standard for Temporary Restraining Order and Preliminary Injunction 

The standard for issuing a temporary restraining order is essentially the same as that for 

issuing a preliminary injunction. Beaty v. Brewer, 649 F.3d 1071, 1072 (9th Cir. 2011); see also 

M/A-COM Tech. Solutions, Inc. v. Integrated Semiconductor Serv., Inc., No. C–15–2423 EMC, 

2015 WL 4463920, *1 (N.D. Cal. Jul. 21, 2015). To obtain a temporary restraining order or a 

preliminary injunction, the moving party must demonstrate that “(1) it is likely to succeed on the 

merits; (2) it is likely to suffer irreparable harm in the absence of relief; (3) the balance of equity 

tips in its favor; and (4) the injunction is in the public interest. ” M/A-COM Tech. Solutions, 2015 

WL 4463920 at *1. Courts in the Ninth Circuit apply a “sliding scale” test and balance each of the 

four factors. See Alliance for the Wild Rockies v. Cottrell, 632 F.3d 1127, 1131 (9th Cir. 2011). 

Because each of these four factors tips sharply in Fitbit’s favor, the Court should grant Fitbit’s 

 

2

 Defendants have recently claimed that they have stopped using counterfeit packaging; however, 

Fitbit cannot conclusively confirm that is the case, and therefore the temporary and preliminary 

injunctive relief should also prohibit use of counterfeit Fitbit Marks on packaging. 

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narrow request for temporary and preliminary injunctive relief. 

B. Fitbit Will Likely Succeed on the Merits of Each of its Causes of Action 

1. Federal Trademark Counterfeiting and Infringement 

First, to prevail on its trademark infringement claims under the Lanham Act, it “must 

prove: (1) that it has a protectible ownership interest in the mark; and (2) that the defendant’s use 

of the mark is likely to cause consumer confusion.” Network Automation, Inc. v. Advanced Sys. 

Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (quotation omitted). 

a. Fitbit has a Protectable Ownership Interest in the Trademark 

Fitbit has registered the Fitbit Marks with the US Patent and Trademark Office and has 

used at least one of the Fitbit Marks for nearly ten years. See Millar Decl., ¶ 4. There can be no 

dispute that Fitbit has a protectable ownership in the Fitbit Marks. 

b. The Court Should Presume Consumer Confusion 

As established above, Defendants have been selling non-genuine scrap products in 

packaging with counterfeit Fitbit Marks, and consumer reviews related to Defendants’ sales show 

not just likely, but actual consumer confusion. “Likelihood of confusion exists when consumers 

viewing the mark would probably assume that the goods it represents are associated with the 

source of a different product identified by a similar mark.” KP Permanent Make-Up, Inc. v. 

Lasting Impression I, Inc., 408 F.3d 596, 608 (9th Cir. 2005). Where the products at issue bear 

counterfeit marks, likelihood of confusion is presumed. See Ubiquiti Networks, Inc. v. Kozumi 

USA Corp., No. 12-2582 CW, 2012 WL 2343670, at *14 (N.D. Cal. June 20, 2012) (holding 

“counterfeit marks are inherently confusing”) (citing Phillip Morris USA Inc. v. Shalabi, 352 F. 

Supp. 2d 1067, 1073 (C.D. Cal. 2004)); Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 

658 F.3d 936, 945 (9th Cir. 2011) (noting that a presumption of confusion arises where “intent to 

cause confusion is coupled with the use of a counterfeit mark or a mark virtually identical to a 

previously registered mark”). Here, as described in detail above, Fitbit has confirmed that 

Defendants have resold numerous non-genuine scrap “Fitbit” products bearing Fitbit trademarks in 

counterfeit packaging. Therefore, the Court should presume likelihood of confusion for at least 

two reasons (although actual consumer confusion has already occurred here as well). 

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First, although Fitbit does not dispute the products sold were originally manufactured by 

Fitbit, as a result of Defendants’ actions, these products nevertheless bear counterfeit Fitbit Marks. 

Where a good which was originally manufactured by the rights holder is distributed without the 

rights holder’s authorization, that good is not “genuine” within the definition of the Lanham Act. 

See El Greco Leather Prods. Co, Inc.. v. Shoe World, Inc., 806 F.2d 392, 395 (2d Cir. 1986) 

(shoes initially ordered by the company which were subsequently sold without the company’s 

approval after the order was cancelled were not “genuine” under the Lanham Act because the 

company “never gave its consent to the use of the mark on those shoes”); see also Westinghouse 

Elec. Corp. v. Gen. Circuit Breaker & Elec. Supply Inc., 106 F.3d 894, 900 (9th Cir. 1997) (citing 

El Greco and holding that “[w]hen an original mark is attached to a product in such a way as to 

deceive the public, the product itself becomes a ‘counterfeit’ just as it would if an imitation of the 

mark were attached”). The reason for this is to protect a brand owner’s “‘right to control the 

quality of the goods manufactured and sold.’” United States v. Farmer, 370 F.3d 435, 441 (4th 

Cir. 2004) (quoting Shell Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104, 107 (4th Cir. 

1991)) (affirming a criminal counterfeit conviction as to sales of irregular shirts, rejected as 

defective by manufacturer, that would “deceive consumers, to trick them into purchasing as Nike 

or Hilfiger clothing the very shirts those companies had already rejected as of lesser quality” 

because “the whole point is that deciding whether shirts pass muster is reserved to Nike and 

Hilfiger, not to [the defendant]. . . .”)3; see also Warner-Lambert Co. v. Northside Dev. Corp., 86 

 

3

 Although the Farmer court was examining the criminal counterfeiting statute, the confusion 

requirement is the same in the criminal and civil contexts. See United States v. Hon, 904 F.2d 

803, 805 (2d Cir. 1990) (“There is no doubt that Congress wished to incorporate the Lanham Act’s 

confusion requirement into 18 U.S.C. § 2320 and did so.”). Further, civil courts often look to 

criminal courts for help analyzing whether consumer confusion exists. See Custom Mfg. & Eng’g, 

Inc. v. Midway Servs., Inc., 508 F.3d 641, 650 (11th Cir. 2007) (analyzing United States v. 

Torkington, 812 F.2d 1347 (11th Cir. 1987) in its analysis of post-sale consumer confusion); 

Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 382 (2d Cir. 1997) (citing Hon, 

904 F.2d at 804-808, in its confusion analysis); Dallas Cowboys Football Club, Ltd. v. Am’s Team 

Props., Inc., 616 F. Supp. 2d 622, 637 (N.D. Tex. 2009) (citing United States v. Yamin, 868 F.2d 

130, 133 (5th Cir. 1989) for same); Cartier, a Div. of Richemont N. Am., Inc. v. Symbolix, Inc., 

454 F. Supp. 2d 175, 183 (S.D.N.Y. 2006) (comparing to Hon, 904 F.2d at 804-808, in analysis of 

(footnote continued) 

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F.3d 3, 6 (2nd Cir. 1996) (“Distribution of a product that does not meet the trademark holder’s 

quality control standards may result in the devaluation of the mark by tarnishing its image. If so, 

the non-conforming product is deemed for Lanham Act purposes not to be the genuine product of 

the holder, and its distribution constitutes trademark infringement.”); Perkins School for the Blind 

v. Maxi-Aids, Inc., 274 F. Supp. 2d 319, 323-34 (E.D.N.Y. 2003) (“Put simply, a distribution of 

non-conforming products may constitute trademark infringement.”). 

Here, Fitbit confirmed through numerous purchases of Defendants’ products, which bore 

the Fitbit Marks, that Defendants have been reselling “Fitbit” branded products that had been 

designated to be scrapped and/or recycled as part of Fitbit’s standard quality-control processes. 

By selling such products, Defendants subverted Fitbit’s quality-control procedures. Therefore, 

such goods are not genuine within the meaning of the Lanham Act and are infringing. 

Second, Defendants sold the products using counterfeit packaging. See Millar Decl. ¶ 6. 

Indeed, even if the Fitbit products enclosed within that packaging had been “genuine,” where a 

party repackages genuine goods in packaging bearing a trademark without the trademark owner’s 

authorization, the trademark on the packaging is counterfeit. See United States v. Milstein, 401 

F.3d 53, 62-63 (2d Cir. 2005). In Milstein, the defendant purchased genuine drugs from foreign 

markets, “stripped them of their original factory packaging, [then] repackaged them with forged 

labels and packaging materials closely resembling those of drugs produced in accordance with 

FDA requirements for the U.S. market . . .” Id. at 59. The Court specifically held that a party’s 

“knowing repackaging of [goods] without the trademark holders’ authorization” means that party 

knowingly trafficked in goods with a counterfeit mark in violation of 18 U.S.C § 2320(a). Id. at 

63. Here, as shown above, Defendants’ sales were repackaged in plastic bags bearing the Fitbit 

Marks without Fitbit’s authorization, thus they were counterfeit. The Court again should 

accordingly presume consumer confusion. 

/ / / / 

 

likelihood of confusion).

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c. The Sleekcraft Factors Also Sharply Tip In Favor Of Fitbit 

Even if the presumption did not apply (though it should), Defendants’ product sales have 

caused, and are likely to continue to cause, consumer confusion under established Ninth Circuit 

law. In cases where counterfeit marks are not used, the Ninth Circuit applies the eight-factor 

Sleekcraft test to gauge the likelihood of consumer confusion: 1) strength of the plaintiff’s mark; 

2) proximity of the goods; 3) similarity between the marks in sound, appearance, and meaning; 4) 

evidence of actual confusion; 5) similarity in the marketing channels used; 6) type of goods and 

degree of care likely to be exercised by the purchaser; 7) defendant’s intent in selecting the mark; 

and 8) likelihood of expansion of the product lines. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 

341, 348–49 (9th Cir. 1979), abrogated on other grounds by Mattel, Inc. v. Walking Mountain 

Prods., 353 F.3d 792, 810 n.19 (9th Cir. 2003); see also Eclipse Assoc., Ltd. v. Data Gen. Corp., 

894 F.2d 1114, 1117 n.3 (9th Cir. 1990). Analysis of the Sleekcraft factors establishes a strong 

likelihood of confusion here. 

(1) Strength of the Fitbit Marks 

A stronger mark is afforded greater protections under trademark laws. See Brookfield 

Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1058 (9th Cir. 1999). “The strength of 

a mark is determined by its placement on a continuum of marks from generic, afforded no 

protection; through descriptive or suggestive, given moderate protection; to arbitrary or fanciful 

awarded maximum protection.” E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1291 

(9th Cir. 1992) (quotations omitted). Determining a mark’s strength requires evaluating its 

“conceptual strength and commercial strength.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 

1199, 1207 (9th Cir. 2000). 

The Fitbit Marks require no imagination to form an association between the mark and the 

product. It is precisely the strength of the Fitbit Marks, and the positive association consumers 

have with the products bearing that mark, which makes it a desirable target for would-be 

infringers, like Defendants, who seek only to profit from Fitbit’s hard work and expense. As such, 

the first factor weighs in Fitbit’s favor. 

/ / / 

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(2) Proximity of the Goods 

The products sold by Defendants on Groupon compete directly with genuine Fitbit 

products—thus meeting the second factor. “When the goods produced by the alleged infringer 

compete for sales with those of the trademark owner, infringement usually will be found if the 

marks are sufficiently similar that confusion can be expected.” Sleekcraft, 599 F.2d at 348. Here, 

Defendants have sold Fitbit products originally manufactured by Fitbit that were supposed to be 

scrapped and/or recycled. Thus, there can be little doubt that Defendants’ non-genuine “Fitibit” 

products and genuine Fitbit products are related and “[r]elated goods are generally more likely 

than unrelated goods to confuse the public as to the producers of the goods.” Brookfield, 174 F.3d 

at 1055. As such, this factor also heavily favors Fitbit. 

(3) Similarity Between the Marks 

Defendants’ non-genuine “Fitbit” products not only have the Fitbit Marks on the products 

themselves, but also came in packaging bearing colorable imitations of the Fitbit Marks affixed 

without Fitbit’s consent. Thus, this factor also strongly supports the likelihood of Fitbit’s ultimate 

success on the merits and consumer confusion. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 

1135, 1144 (9th Cir. 2002) (while the court may consider the differences between the respective 

trademarks, the similarities should be weighed more heavily than the differences). 

(4) Evidence of Actual Confusion 

Customer feedback regarding Defendants’ sales of “Fitbit” branded products has already 

established that consumers are actually confused as to the source, nature, and quality of the goods. 

“Evidence that use of the two marks has already led to confusion is persuasive proof that future 

confusion is likely.” Sleekcraft, 599 F.2d at 352. Indeed, the consumer reviews established that 

certain consumers believed the refurbished Fitbit products sold by Defendants were actually new 

Fitbit products. See Hallam Decl., ¶ 6, Ex. F-J (“bands were brand new”; “absolutely love my 

new Fitbit”; “I love my new Fitbit”). Similarly, the reviews show consumer confusion leading 

customers to contact Fitbit directly regarding their customer support and warranty claims. See id. 

While certain of these consumers understood that they were not purchasing a new Fitbit 

product, none even mention that the source of the goods was anything other than Fitbit. In short, 

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MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

LAW OFFICES 

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& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

Fitbit has been harmed because consumers buying these products, commenting on them, or even 

reviewing them believe that these products are in the marketplace because Fitbit wanted them in 

the marketplace. That alone is evidence of confusion. One comment is a damning illustration of 

the harm done by the inferior products Defendants sold on Groupon—merchandise that Fitbit 

wanted removed from the marketplace: “Don’t waste your money on a refurbished item. I would 

even question purchasing this model new.” Hallam Decl., ¶ 6. This demonstrates that even 

though the consumer knew the product purchased was refurbished, the general quality of these 

inferior goods caused members of the consuming public to even question the quality of a new 

Fitbit as well. 

The consumers’ frustration with the poor quality of the goods sold by Defendants plainly 

harms Fitbit’s brand and goodwill, as consumers have mistakenly believed, and will continue to 

mistakenly believe, that these inferior goods are a reflection of Fitbit. Indeed, the harm is not just 

to those consumers who purchased these goods, but all members of the consuming public exposed 

now to these misleading reviews about products that were never intended to be resold to customers 

at all. This evidence of actual confusion, and irreparable harm to Fitbit, its brand, and its goodwill 

tips this factor sharply in favor of Fitbit. 

(5) Marketing Channels Used 

 Both genuine Fitbit products and the products sold by Defendants were sold online, thus 

the marketing channels used are the same. The Internet “as a marketing channel, is particularly 

susceptible to a likelihood of confusion since, as it did in this case, it allows for competing marks 

to be encountered at the same time, on the same screen.” GoTo.com, 202 F.3d at 1207; see also 

Brookfield, 174 F.3d at 1057 (“[C]ourts have consistently recognized [the Internet] as exacerbating 

the likelihood of confusion.”); La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867, 

877 (9th Cir. 2014). Because Defendants offered their infringing products using the same 

marketing channels as Fitbit, this factor also weighs in Fitbit’s favor.

(6) Type of Goods and Purchasers’ Likely Degree of Care 

As shown by the customer complaints, consumers online looking for good deal often do 

not take a high degree of care with respect to such purchases. “In analyzing the degree of care that 

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SAN FRANCISCO, CALIFORNIA 94111-3711 

a consumer might exercise in purchasing the parties’ goods, the question is whether a ‘reasonably 

prudent consumer’ would take the time to distinguish between the two product lines.” Surfvivor 

Media, Inc. v. Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005) (citing Brookfield, 174 F.3d at 

1060). The expectations as to the behaviors of the “reasonably prudent” consumer depend on the 

circumstances. Brookfield, 174 F.3d at 1060. “[W]hen dealing with inexpensive products, 

customers are likely to exercise less care, thus making confusion more likely.” Id. (citing Gallo, 

967 F.2d at 1293). Given the price of these products, the similarities between the two, and that 

consumers shopping online are unable to see how well a product works, consumers are not likely 

to take high care in differentiating between a genuine Fitbit and the ones Defendants sold. This 

factor therefore also weighs in favor of Fitbit. 

(7) Defendants’ Intent in Selecting the Mark 

That Defendants intended to profit from infringing on the Fitbit Marks cannot reasonably 

be disputed. Just looking at the counterfeit packaging, Defendants adopted the Fitbit Marks 

deliberately to benefit from the “good will, good name, and good trade which [Fitbit] has built 

up,” and to reinforce with the consumer that these products were affiliated with, sponsored by, or 

otherwise approved by Fitbit. Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 

158 (9th Cir. 1963). Thus, this factor also tips in Fitbit’s favor, as Defendants’ conduct indicates 

that it “expect[ed] confusion and resultant profit.” Id. 

(8) Likelihood of Expansion of the Product Lines 

If the Court does not enjoin Defendants from reselling scrap products and trading on 

Fitbit’s strong trademark rights, Defendants are much more likely to expand their product 

offerings, further harming Fitbit. “A strong possibility that either party may expand his business 

to compete with the other will weigh in favor of finding that the present use is infringing.” 

Sleekcraft, 599 F.2d at 354 (quotation omitted); see also Official Airline Guides, Inc. v. Goss, 6 

F.3d 1385, 1394 (9th Cir. 1993). Defendants thus far have done precisely that in this case. As 

such, this factor also favors Fitbit. 

Based on either the presumption of confusion or analysis of the Sleekcraft factors, the facts 

here easily establish that Fitbit is likely to succeed on the merits of its Lanham Act claims. 

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& BANCROFT LLP 

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2. Federal Trademark Dilution 

Fitbit will also succeed on its second cause of action for Federal Trademark Dilution as the 

Defendants’ actions have diluted and tarnished its brand. Subject to the principles of equity, the 

owner of a famous mark is entitled to an injunction “against another person's commercial use in 

commerce of a mark or trade name, if such use begins after the mark has become famous and 

causes dilution of the distinctive quality of the mark.” 15 U.S.C. § 1125(c)(1). A trademark 

holder alleging trademark dilution must demonstrate that “(1) the mark is famous and distinctive; 

(2) the defendant is making use of the mark in commerce; (3) the defendant’s use began after the 

mark became famous; and (4) the defendant’s use of the mark is likely to cause dilution by 

blurring or dilution by tarnishment.” Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 

2008).

Here, there is no doubt that the Fitbit Marks are famous, that Defendants are using the 

marks in commerce, and that Defendants’ conduct began after the Fitbit Marks first came to 

prominence in 2009. The only question remaining is whether Fitbit can show that the Defendants’ 

use of the mark has tarnished Fitbit’s rights to the Fitbit Marks. 

Dilution by tarnishment occurs when “association arising from the similarity between a 

mark or a trademark and a famous mark . . . harms the reputation of the famous mark.” 15 U.S.C. 

§ 1125(c)(2). Tarnishment may be found “when a famous mark is improperly associated with an 

inferior or offensive product or service.” Playboy Enters., Inc. v. Welles, 279 F.3d 796, 805 (9th 

Cir. 2002) (quotations omitted); see also Dan-Foam A/S v. Brand Named Beds, LLC, 500 F. Supp. 

2d 296, 325-26 (S.D.N.Y. 2007) (holding that a trier of fact could find that the sale of “nonconforming” products outside of the trademark holder’s quality control procedures could dilute the 

trademark by tarnishment). Here, the scrap “Fitbit” branded products sold by Defendants are 

markedly inferior to genuine Fitbit products. The significant number of negative consumer 

reviews shown above in Section III.F. establish that the Fitbit Marks are being tarnished by the 

“Fitbit” branded products being sold by Defendants, and will likely continue to be tarnished 

should the Court deny the narrow injunctive relief requested here. 

/ / / 

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3. Federal Unfair Competition and California Unfair Competition 

Finally, Fitbit is also likely to succeed on its claims of Federal Unfair Competition and 

California Unfair Competition against Defendants. These claims largely overlap with the analysis 

above regarding the Lanham Act’s consumer confusion test. Cleary v. News Corp., 30 F.3d 1255, 

1262–63 (9th Cir. 1994) (finding that 17200 claims are substantially congruent with Lanham Act);

see also Acad. of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., 944 F.2d 

1446, 1457 (9th Cir. 1991); Zeltiq Aesthetics, Inc. v. BTL Indus., Inc., 32 F. Supp. 3d 1088, 1099 

(N.D. Cal. 2014). 

Even when the allegations “do not involve trademark infringement, in order to determine 

the likelihood of confusion, courts use the trademark infringement analysis.” Obesity Research 

Inst., LLC v. Fiber Research Int’l, LLC, 165 F. Supp. 3d 937, 949 (S.D. Cal. 2016). “Whether we 

call the violation infringement, unfair competition or false designation of origin, the test is 

identical is there a ‘likelihood of confusion?’” New W. Corp. v. NYM Co. of California, Inc., 595 

F.2d 1194, 1201 (9th Cir. 1979); see also ACI Int’l Inc. v. Adidas-Salomon AG, 359 F. Supp. 2d 

918, 921 (C.D. Cal. 2005) (“The ultimate test for unfair competition is exactly the same as for 

federal trademark infringement.”). Thus, courts analyzing unfair competition claims under federal 

and California law apply the eight Sleekcraft factors to determine whether likelihood of confusion 

has been alleged. See E Clampus Vitus v. Steiner, No. 2:12-CV-01381-TLN, 2013 WL 4431992, 

at *8 (E.D. Cal. Aug. 16, 2013); see also JL Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 

1098, 1106 (9th Cir. 2016) (applying Sleekcraft factors to determine whether likelihood of

consumer confusion exists supporting a claim for unfair competition). 

As shown by the Lanham Act analysis in Section IV.B.1. above, Defendants’ sales of 

“Fitbit” products have caused consumer confusion and may continue to do so if the requested 

injunctive relief is not granted. Thus, Fitbit has also shown it is likely to succeed on the Federal 

and State Unfair Competition claims. 

C. Fitbit is Likely to Suffer Irreparable Harm in the Absence of Preliminary 

Relief for which there is No Adequate Legal Remedy 

Fitbit can also easily demonstrate “that [it] is likely to suffer irreparable harm in the 

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MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

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ONE EMBARCADERO CENTER, 22ND FLOOR 

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absence of preliminary relief, that the balance of equities tips in [Fitbit’s] favor, and that an 

injunction is in the public interest.” Marlyn Nutraceuticals, Inc. v. Mucos Pharma GmbH & Co., 

571 F.3d 873, 877 (9th Cir. 2009) (quotation omitted). 

Companies are irreparably harmed when counterfeit or infringing goods trade on the 

reputation of a rights holder and erode that party’s ability to control the quality of the goods 

bearing its marks. See Apple Computer, Inc. v. Formula Int’l Inc., 725 F.2d 521, 525-26 (9th Cir. 

1984) (finding of irreparable harm supported by plaintiff’s evidence that it invested “considerable 

time and money” in developing the products jeopardized by defendants’ “wholesale copying”); 

Opticians Ass’n of Am. v. Indep. Opticians of Am., 920 F.2d 187, 196 (3d Cir. 1990) (holding that 

potential damage to reputation due to defendant’s infringement constitutes irreparable injury for 

the purpose of granting a preliminary injunction in a trademark case); see also Maxim Integrated 

Prods., Inc. v. Quintana, 654 F. Supp. 2d 1024, 1036 (N.D. Cal. 2009) (finding that irreparable 

harm was likely, absent a preliminary injunction where plaintiff submitted evidence showing that 

it had “lost some control over its business reputation and goodwill”). Here, the harm that Fitbit 

will suffer if Defendants are allowed to continue to sell non-genuine “Fitbit” branded products that 

have been diverted from Fitbit’s quality control processes is plainly irreparable and ongoing. 

Fitbit invests heavily in its products and its trademarks. See Millar Decl., ¶¶ 2-4. And 

Fitbit’s brand and goodwill depend on the ability of Fitbit to control the high quality and reliability 

of its products. Given that Defendants have taken, and threaten to continue to take, that quality 

control out of Fitbit’s hands by selling products that were supposed to be scrapped and/or 

recycled, there can be no doubt of the significant and irreparable harm of such unauthorized sales 

on Fitbit’s brand and goodwill with members of the consuming public. That irreparable harm will 

likely continue unless the Court enjoins Defendants or until Defendants run out of infringing and 

counterfeit products and packaging to sell. 

D. The Balance of Equities Sharply Tips in Favor of Fitbit 

Taken in its entirety, the irreparable harm caused to Fitbit as a result of Defendants’ sale of 

inferior “Fitbit” branded products in counterfeit packaging greatly outweighs any harm to 

Defendants which might come from not having the ability to resell infringing and counterfeit 

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goods. See, e.g., Vertos Med., Inc. v. Globus Med., Inc., No. C 09-1411 PJH, 2009 WL 3740709, 

at *12 (N.D. Cal. Nov. 6, 2009) (finding that potential irreparable harm to the plaintiff outweighed 

any injury to defendant, who needed only to cease its use of the infringing mark); Sun 

Microsystems, Inc. v. Microsoft Corp., 999 F. Supp. 1301, 1307-08 (N.D. Cal. 1998) (holding that 

the irreparable harm to the plaintiff, its licensees, and the consuming public by defendant’s 

infringement outweighed any hardship to defendant). Put simply, Defendants have no legitimate 

interest in selling products that they are not legally allowed to sell and that confuse consumers, 

while Fitbit has every interest in protecting its brand and goodwill by keeping inferior scrap 

products bearing the Fitbit Marks and counterfeit packaging out of the marketplace. Here, the 

balance of equities strongly supports enjoining Defendants’ further sale of scrap “Fitbit” branded 

products and use of any counterfeit packaging. 

E. The Proposed Injunction Serves the Public’s Interest 

By reducing consumer confusion and anger over purchasing inferior products, the 

injunctive relief that Fitbit seeks is also in the public’s interest. “In the trademark context, courts 

often define the public interest at stake as the right of the public not to be deceived or confused.” 

Maxim Integrated Prods., 654 F. Supp. 2d at 1036 (citing Moroccanoil, Inc. v. Moroccan Gold, 

LLC, 590 F. Supp. 2d 1271, 1282 (C.D. Cal. 2008). Where, as here, Defendants’ actions prey 

upon consumers who are shopping online with no opportunity to inspect the items, injunctive 

relief is necessary to protect the public from deceptive business practices designed to create 

confusion as to the source and quality level of the product being purchased. Thus, the public 

interest also supports issuance of the requested injunctive relief. 

F. A Bond, If Any, Should Be Nominal 

While Fitbit is prepared to provide such security as the Court deems appropriate according 

to Federal Rule of Civil Procedure 65(d) and Civil Local Rule 65.1.1, because here, the request for 

injunctive relief is narrow and merely requires Defendants to stop conduct and sales that infringe, 

tarnish, and/or counterfeit the Fitbit Marks, a bond, if any, required by the Court should be 

nominal in amount. See e.g., Printers Servs. Co. v. Bondurant, No. CV 91-0916 JSL (SX), 1991 

WL 332055, at *11 (C.D. Cal. Apr. 16, 1991) (imposing nominal bond in the amount of $1,000 in 

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MOTION FOR TRO AND OSC RE PRELIMINARY INJUNCTION; MPA IN SUPPORT THEREOF 

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& BANCROFT LLP 

ONE EMBARCADERO CENTER, 22ND FLOOR 

SAN FRANCISCO, CALIFORNIA 94111-3711 

trademark infringement and counterfeiting action). Because of the low likelihood that Defendants 

will be harmed by an injunction that requires them to at most to take action to prevent further 

infringement, tarnishment, and counterfeiting, Fitbit requests that any such bond not exceed 

$10,000. 

V. CONCLUSION 

For the foregoing reasons, Fitbit respectfully requests that the Court grant Fitbit’s Motion 

for entry of the requested Temporary Restraining Order against Defendants and also issue an 

Order for Defendants to show cause why the Court should not also grant a preliminary injunction 

granting the same relief during the pendency of this Action. 

DATED: January 11, 2017 SIDEMAN & BANCROFT LLP 

 By: /s/ Zachary J. Alinder 

 Zachary J. Alinder 

Attorneys for Plaintiff 

FITBIT, INC. 

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