1 – OPINION AND ORDER 

 IN THE UNITED STATES DISTRICT COURT 

 FOR THE DISTRICT OF OREGON 

VERSATOP SUPPORT SYSTEMS, LLC, 

 Plaintiff, 

v. 

GEORGIA EXPO, INC., 

 Defendant. 

 3:15-cv-02030-JE 

 OPINION AND ORDER 

BROWN, Senior Judge. 

 This matter comes before the Court pursuant to the Mandate 

(#86) issued May 28, 2019, by the United States Court of Appeals 

for the Federal Circuit remanding this matter for further 

proceedings. 

 For the reasons that follow, the Court denies Plaintiff 

Versatop Support System LLC's request for entry of a permanent 

injunction. 

BACKGROUND

 Plaintiff brought this action against Defendant Georgia 

Expo, Inc., and alleged five claims in its First Amended 
2 – OPINION AND ORDER 

Complaint: violation of patent law (Ct. I); violation of 

copyright law (Counts II and III); and violation of trademark 

law (Counts IV and V). Plaintiff's trademarks at issue are 

"2.0" and "Pipe & Drape 2.0." 

 The parties filed cross-motions for summary judgment on all 

counts. 

 On February 16, 2017, Magistrate Judge John Jelderks issued 

Findings and Recommendations (F&R)(#45) and recommended the 

Court grant Defendant's Cross-Motion on all counts and deny 

Plaintiff's Motion. On April 13, 2017, this Court adopted the 

F&R, entered Judgment in favor of Defendant, and dismissed 

Plaintiff's case with prejudice. On February 12, 2018, the 

Court subsequently denied Defendant's Motion for extraordinary 

attorneys' fees. 

 Plaintiff appealed the Court's dismissal of the case, and 

Defendant appealed the Court's denial of its request for 

attorneys' fees. 

 On appeal the Federal Circuit noted "[o]nly the trademark 

issue is before us" and addressed only two issues: whether 

there was a violation of trademark law and whether Defendant was 

entitled to an award of extraordinary attorneys' fees. On the 

trademark issue the Federal Circuit found this Court's adoption 
3 – OPINION AND ORDER 

of the F&R was erroneous as a matter of law and that there was a 

violation of the Trademark Act based on Defendant's admitted use 

of Plaintiff's trademarks. The Federal Circuit reversed the 

judgment in favor of Defendant, stated "judgment is entered in 

favor of Plaintiff," and remanded the case "for any appropriate 

further proceedings." The Federal Circuit also denied without 

opinion Defendant's appeal on the attorneys' fees issue. 

 Following return of the Mandate Magistrate Judge Jelderks 

contacted the parties and directed them to confer regarding the 

form of judgment to be entered in light of the Federal Circuit 

holding. When the parties were unable to agree on a form of 

judgment, Magistrate Judge Jelderks directed the parties to 

submit their proposed respective forms of judgment and 

supporting memoranda for the court's consideration. 

 On October 4, 2019, each party filed a proposed form of 

judgment and a supporting memorandum. On October 8, 2019, 

Plaintiff filed the same papers again, but Plaintiff included 

additional Declarations that were referenced but not included in 

their earlier submission. 

 Although the parties concur the court must now enter 

judgment in Plaintiff's favor as to Counts IV and V for 

Trademark Infringement, they disagree as to whether such 
4 – OPINION AND ORDER 

judgment should also include injunctive relief. Plaintiff 

contends it is entitled to a form of judgment that includes a 

permanent injunction against Defendant, but Defendant contends 

entry of a permanent injunction as part of the judgment is not 

appropriate. 

STANDARDS 

 The Lanham Act permits a court to grant injunctions 

"according to the principles of equity and upon such terms as 

the court may deem reasonable" to prevent further trademark 

infringement. 15 U.S.C. § 1116. See also Reno Air Racing Ass'n 

v. McCord, 452 F.3d 1126, 1137 (9th Cir. 2006). 

According to well-established principles of equity, a 

plaintiff seeking a permanent injunction must satisfy 

a four-factor test before a court may grant such 

relief. A plaintiff must demonstrate (1) that it has 

suffered an irreparable injury; (2) that remedies 

available at law, such as monetary damages, are 

inadequate to compensate for that injury; (3) that, 

considering the balance of hardships between the 

plaintiff and the defendant, a remedy in equity is 

warranted; and (4) that the public interest would not 

be disserved by a permanent injunction. 

eBay v. MercExchange, 547 U.S. 388, 391 (2006). The Ninth 

Circuit has held "actual irreparable harm must be demonstrated 

to obtain a permanent injunction in a trademark-infringement 

action," and it may not be presumed. Herb Reed Enter., LLD v. 
5 – OPINION AND ORDER 

Florida Ent. Mgt., Inc., 736 F.3d 1239, 1249 (9th Cir. 2013). 

Irreparable harm may be shown through evidence of the loss of 

prospective customers, goodwill, or reputation. Stuhlbarg 

Intern. Sales Co., Inc. v. John D. Brush & Co., Inc., 240 F.3d 

832, 841 (9th Cir. 2001). Conclusory and factually unsupported 

allegations are insufficient to establish irreparable harm. 

Herb, 736 F.3d at 1250. 

DISCUSSION 

 In support of its proposed form of judgment that includes a 

permanent injunction against Defendant, Plaintiff asserts it is 

entitled to a form of judgment that is "broader than merely an 

order to not use the exact marks" and the Court should require 

Defendant to be "permanently enjoined from using [Plaintiff's] 

Trademarks, or any trademark confusingly similar to 

[Plaintiff's] Trademarks, in any manner in its online marketing, 

including in any keywords or in metadata or on its website, 

packaging, marketing materials, catalogs, and other sales or 

promotion materials." In particular, Plaintiff argues a 

permanent injunction is necessary to enjoin Defendant from any 

future trademark infringement and to prevent product confusion 

in the public market, including a loss of control over business 
6 – OPINION AND ORDER 

reputation, loss of trade, and loss of goodwill. According to 

Plaintiff, it has satisfied each of the equitable criteria for 

entry of an injunction: (1) it has suffered irreparable injury; 

(2) remedies at law, including monetary damages, are inadequate 

to compensate for that injury; (3) in the balance of hardships 

between the parties, a remedy in equity is warranted; and (4) 

the public interest would not be disserved by a permanent 

injunction. Plaintiff contends the "actual, irreparable harm" 

it sustained is the "loss of control over its goodwill in its 

trademarks," and Plaintiff points to evidence that it "sent a 

letter to customers to combat the damages that [Defendant's] 

infringement was causing." Decl. of David Cooper (#96-2), 

attaching deposition transcripts from Vince Ovist (Ex. 5). 

 Defendant, in turn, asserts there is not any basis for the 

Court to enter an injunction in this case. In particular, 

Defendant argues a permanent injunction is not automatic and 

even though Plaintiff prevailed on the merits, Plaintiff has not 

established any harm let alone irreparable harm. As evidence of 

a lack of injury, Defendant points to the fact that Plaintiff 

did not promptly move for a permanent injunction when the 

Federal Circuit issued its opinion in April 2019 nor before this 

Court contacted the parties in July. Moreover, Defendant 
7 – OPINION AND ORDER 

maintains entry of an injunction at this point would "continue 

this litigation rather than help to put an end to it" because 

one of Plaintiff's marks ("2.0") is so broad and vague that 

Plaintiff may seek a contempt finding for even the innocuous use 

of that term. 

 This Court notes it did not reach, and, therefore, did not 

evaluate, the issue of an injunction previously because it ruled 

in Defendant's favor on the merits. The Court also notes 

Defendant conceded at summary judgment that it used a picture of 

Plaintiff's product and referenced Plaintiff's product name in a 

marketing brochure. Defendant also acknowledged it believed in 

good faith that the Patent Office was not going to issue 

Plaintiff's patent at the time it used the materials. Defendant 

emphasizes it stopped all activity regarding Plaintiff's product 

when the Patent Office issued a notice of allowance and before 

the patent was issued. Moreover, the Court notes Plaintiff does 

not provide any authority for its contention that the mere fact 

that Plaintiff sent a warning letter to its customers about 

Defendant's infringement constitutes evidence of irreparable 

harm. In addition, the record only establishes Plaintiff was 

concerned about the potential loss of prospective customers, 

goodwill, and/or reputation, but Plaintiff does not provide any 
8 – OPINION AND ORDER 

evidence of actual loss. 

 Based on this record the Court concludes Plaintiff has not 

made any showing of irreparable harm and, therefore, Plaintiff 

fails to meet the standard required for a permanent injunction. 

Accordingly, the Court concludes Plaintiff is not entitled to a 

judgment as to its trademark claims against Defendant that 

includes a permanent injunction. 

CONCLUSION

 For these reasons, the Court declines to adopt Plaintiff's 

form of Judgment. The Court also declines to enter Defendant's 

proposed form of Judgment because it is overbroad in that it 

addresses all claims Plaintiff originally asserted, fails to 

clarify the status of each of those non-trademark claims, and 

includes claims not reviewed on appeal. 

 As noted, the Court previously found in favor of Defendant 

Georgia Expo, Inc., on cross-motions for summary judgment; 

dismissed with prejudice the First Amended Complaint filed by 

Plaintiff Versatop Support Systems, Inc.; and entered Judgment 

(#51) in favor of Defendant. Plaintiff, however, pursued its 

claim on appeal and prevailed. 

 Accordingly, the Court now VACATES its previously entered 
9 – OPINION AND ORDER 

Judgment (#51) only as to Counts IV and V for Trademark 

Infringement in Plaintiff's First Amended Complaint and enters 

JUDGMENT in favor of Plaintiff and against Defendant on those 

claims only. Because the Mandate refers only to the trademark 

claims, the remainder of Plaintiff's claims (Counts I, II, and 

III) remain dismissed with prejudice. Finally, for the reasons 

previously stated, the Court also DENIES Plaintiff's request for 

a permanent injunction. 

 IT IS SO ORDERED. 

 DATED this 13th day of November, 2019. 

 /s/ Anna J. Brown 

 ___________________________________ 

 ANNA J. BROWN 

 United States Senior District Judge