To establish a prima facie case in an ordinary trademark infringement suit, a plaintiff need only demonstrate “(1) that it has trademark rights in the mark or name at issue … and (2) that the defendant adopted a mark or name that was the same, or confusingly similar to the plaintiff’s mark, such that there was a likelihood of confusion for consumers as to the proper origin of the goods . . . created by the defendant’s use of the … name …” Ferrellgas Partners, 143 Fed. Appx. at 186; Tally-Ho, 889 F.2d at 1029 (reversing district court's denial of a preliminary injunction for abuse of discretion). In this case, Hansen has fully satisfied all the requirements demonstrating its likelihood of success on the merits of its trademark infringement claim pursuant to both 15 U.S.C. §1114(1)(a) (registered trademark infringement) and 15 U.S.C. § 1125(a) (false designation of origin, or common law trademark infringement). Hansen has clearly shown that it has strong trademark rights in its M Claw mark (Sacks Decl.

II. The Infringement Claims (First And Second Causes Of Action) Should Be Dismissed For Failure To State Any Plausible Counterfeiting Claim Courts “employ substantially similar standards when analyzing claims for trademark infringement under the Lanham Act, 15 U.S.C. § 1114(1)(a) and false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a).” Van Praagh v. Gratton, 993 F. Supp. 2d 293, 301 (E.D.N.Y. 2014); see also Zimmerli Textil AG v. Kabbaz, No. 14-CV-1560 (JS) (AYS), 2015 WL 5821523, at *3 (E.D.N.Y. Sept. 30, 2015) (same).

(FAC¶¶7, 9, 10). c. Injunctive Relief Is Available The liability limitation (injunctive relief) afforded under the “innocent infringer” defense,” codified at 15 U.S.C. §1114(2), does not provide a viable basis for dismissal. Google makes a convoluted argument that since the “innocent infringer/publisher” defense limits relief to injunctive relief, and in its opinion it is an “innocent infringer/publisher”, and in its opinion it has given Class Plaintiffs the relief they seek, the claim is moot and should be dismissed.

Case No. 2:15-CV-10001-BRO-AJW Judge: Hon. Beverly Reid O’Connell [PROPOSED] JUDGMENT ON DEFENDANT WAL-MART STORES, INC.’S MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT Date: August 28, 2017 Time: 1:30 p.m. Courtroom: 7C Case 2:15-cv-10001-BRO-AJW Document 67-2 Filed 07/10/17 Page 1 of 4 Page ID #:960 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 SMRH:483422714.1 -2- Case No. 2:15-CV-10001-BRO-AJW SMRH:483422714.1 [PROPOSED] JUDGMENT ON DEFENDANT WAL-MART STORES, INC.’S MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT Defendant Wal-Mart Stores, Inc. (“Walmart”) having moved for summary judgment, and good cause appearing for granting the motion, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED that: 1. JUDGMENT IS ENTERED in favor of Walmart and against Plaintiff on Plaintiff’s claim for federal trademark infringement under 15 U.S.C. § 1114. 2.

See id. Consequently, Plaintiff has failed to state a claim under 15 U.S.C. § 1114(2)(D)(v) and this Court must dismiss the Complaint. V. Plaintiff Failed to Join Indispensable Party, Cummings Manookian, PLC

Although the term “innocent infringer” is not defined in the statute, the legislative history and subsequent case law make clear that it embraces libel law’s “actual malice” standard as set forth in New York Times v. Sullivan, 376 U.S. 254 (1964). Congress revised Section 1114(2)(B) to its current formulation in 1992. At the time, the bill’s co-sponsor in the House, Congressman Robert Kastenmeier, explained that the revision: exempts from liability ‘innocent’ disseminators of offending material, whether that material constitutes a violation of Section 32(1) relating to infringement, or of proposed Section 43(a), relating to false and misleading commercial advertising.

at 620. Because the defendant in Holiday Inns never promoted the number in connection with the 6 To recover under 15 U.S.C. § 1114, Plaintiffs must demonstrate both the existence of a likelihood of confusion and that Oversee’s use of their trademarks caused the likelihood of confusion. See Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 625-26 (6th Cir. 1996).

Third, the most basic element of any claim for trademark infringement or cybersquatting is that a plaintiff must own a trademark. See 15 U.S.C. § 1114(1); see also KP Permanent, 543 U.S. at 117; Custom Vehicles, 476 F.3d at 483. To prevail, each putative owner will have to furnish individual proof of registration.

Because Vulcan cannot demonstrate that Oversee used or imitated its mark, Vulcan’s federal trademark claim must fail. B. Oversee is Excepted From Liability For Any Purported Involvement in Making Advertisements Available on the Allegedly Deceptive Domains To the extent Vulcan seeks to hold Oversee liable for making available the advertisements on allegedly infringing domains, Oversee is excepted from liability for money damages under 15 U.S.C. § 1114(2). Section 1114(2)(B) limits the relief against publishers of paid advertisements in electronic communications, including online publishers, to injunctive relief, so long as the publisher is an innocent infringer.9 Id.; see Century 21 Real Estate Corp. of N. Ill. v. R.M. Post, Inc., 8 U.S.P.Q. 2d 1614, 1617 (N.D. Ill. 1988).

2. Trademark Infringement And False Designation of Origin Pursuant Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) In contrast to 15 U.S.C. § 1114, Section 1125(a) applies to claims concerning unregistered marks, but the elements are generally the same. See Ninth Circuit Manual of Model Civil Jury Instructions § 15.