Free Ex Parte Application - District Court of California - California

Case 5:07-cv-04808-JF

Document 8

Filed 10/18/2007

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KURT OSENBAUGH (State Bar No. 106132) ON JONES (State Bar No. 118127)
DEBORAH YO

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RUBALCAVA & MacCUISH LLP 333 South Hope Street Sixteenth Floor Los Angeles, California 90071
Telephone: (213) 576-1000

WESTON, BENSHOOF, ROCHEFORT,

SA Y AKA KARITANI (State Bar No. 240122)

Facsimile: (213) 576-1100

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Attorneys for Plaintiffs BP WEST COAST PRODUCTS LLC and ATLANTIC RICHFIELD COMPANY

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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BP WEST COAST PRODUCTS LLC, a Delaware Limited Liability Company; and A TLANTIC RICHFIELD COMPANY, a
Delaware Corporation,

Case No.: C07 04808 RS
EX PARTE APPLICATION FOR TEMPORARY RES TRAINING ORDER AND ORDER TO SHOW CAUSE RE ISSUANCE OF PRELIMINARY INJUNCTION; MEMORANDUM OF POINTS AND AUTHORITIES IN SUPPORT THEREOF

Plaintiff,
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v.
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STTN ENTERPRISES, INC., a California COl)oration; NAZIM F AQUIRY AN, an individual; SAYED FAQDIRYAN, an individual; and MAGHVL FAQUIRY AN, an individual; and AVA GLOBAL ENTERPRISE, LLC, a California limited liability company,
Defendants.

rFiled concurrently with Declarations of
Brad Chrstensen and Deborah Y oon

Jones; and (Proposed) Order.)
Date: To Be Scheduled by Court

Time: To Be Scheduled by Court
Ctrm: 4

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Honorable Richard Seeborg
Filing Date:
September 17, 2007

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EX PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER

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TABLE OF CONTENTS
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i.
II.

INTRODUCTION................................................................................................ 5

SUMMARY OF FACTS .... ...... ............................................. ........ .......... .............6
A.

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The Federally Registered and Common Law Protected
Trademarks. ................................................................................................ 6

B.

Defendants' Violation of the Federally Registered and Common
Law Trademarks........................................................................................ 9

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C.

BPWCP and ARCO Demand that Defendants Stop Any Display or Products Bearing Trademarks, Trade Names or Any Other
Sales of

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InfTinging Marks....................................................................................... 10

D.

Scope of the Injunction. ........................................................................... 11

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III.

BPWCP AND ARCO ARE ENTITLED TO INJUNCTIVE RELIEF AND AS SUCH, A TEMPORARY RESTRAINING ORDER AND ORDER TO SHOW CAUSE SHOULD ISSUE HERE ....................................12
A.

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Standard for Granting Injunctive Relief.................................................. 12
BPWCP and ARCO Are Likely to Prevail on the Merits. .......................13

B. C.

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BPWCP and ARCO Have Suffered and Will Suffer Immediate and
Irreparable Harm if Defendants are Not Restrained fTom Violating

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the Protected Marks.................................................................................. 14
D.

The Balance Of Hardships Weighs In Favor Of BPWCP and
ARCO. ...................................................................................................... 1 5

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iv.

CONCLUSION................................................................................................... 15

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TABLE OF AUTHORITIES
Page
CASES
Arcamuzi v. Continental Air Lines, Inc., 819 F.2d 935 (9th Cir. 1987) ...................................................................................................... 12

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Atari Corp. v. Nintendo of America, Inc., 897 F.2d 1572 (9th Cir. 1990) .................................................................................... ............... 12
Fong v. Lawn,

851 F.2d 1559 (9th Cir. 1988) .................................................................................................... 12
Johanna Farms, Inc. v. Citrus Bowl, Inc.,

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468 F.Supp. 866 (E.D.N.Y. 1 978) .............................................................................................. 13

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Metro Brokers, Inc. v. Tann, 815 F.Supp. 377 (D.Colo. 1993)............ ....................... ........................ .......... """'"'' ................. 12
Pfizer, Inc. v. Miles, Inc.,

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868 F .Supp. 437 (D.Conn. 1994)................................................................................................ 13
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Second Earth Enterprises, Inc. v. Allstar Product Marketing Co., 717 F.Supp. 302 (E.D. Pa. 1989) ................................................................................................ 13

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STATUTES
15 D.S.C. § 1125(a) .......................................................................................................................... 13

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15 D.S.C. § 1 125(c) ..........................................................................................................................13

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15 D.S.C. §§ 2801, et seq............... ............ ........... ........... ........................................... ...... ......... ....... 11

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RULES
F.R.C.P. Rule 65(b)................................................................. .......................................................... 12

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EX PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER

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TO DEFENDANTS AND TO THEIR ATTORNEYS OF RECORD
HEREIN:

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PLEASE TAKE NOTICE that Plaintiffs BP West Coast Products LLC
("BPWCP") and Atlantic Richfield Company ("ARCO") hereby apply ex parte to this

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Court for an order restraining and enjoining defendants STTN Enterprises, Inc.,
Nazim Faquiryan, Sayed Faquiryan, Maghul Faquiryan, and AVA Global Enterprise,
LLC (collectively, "Defendants") from the use and display of the following items

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which bear federally registered and common law protected trademarks ("Protected
Marks"):
(a)

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"ARCO" Logo contained on pay station screen near the gasoline

pumps: Registration Number 1495419;

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(b) "ARCO" typed words as in "Thank You for Choosing ARCO"
contained on pay station screen near the gasoline pumps:
1496212;
(c)

Registration Number

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"am/pm" logo contained on fountain beverage cups: Registration

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Number 2821396;
(d)
"am/pm" logo contained on nachos wrappers:

Registration

Number 1459431;
(e)

"Thirst Oasis"

logo contained on fountain beverage cups:

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Registration Number 313357.

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The following designs and marks are proprietary and exclusive to BPWCP's franchises and BPWCP must authorize their use:

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"Fil Smart" words depicted on pay station screen near the gasoline
pumps.;

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Soda Machine Graphics "Crunch Cube" depicted;
am/pm Coffee Graphics;
am/pm Coffee Menu;

am/pm Hamburger Graphics;
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ARCO Blue Neon Illuminated Light Stripe on Fuel Canopy; and
am/pm Orange Neon Illuminated Light Stripe on Mini Market.

Defendants are utilizing these Protected Marks at their gasoline station
and convenience store located at 631 San Felipe Road, Hollister, California 95035 (the

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"Station"). Indeed, the pay machines at the gasoline pumps continue to indicate
"Thank you for choosing ARCO." In addition, Defendants continue to display and

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sell cups for fountain beverages and food wrappers bearing am/pm trademarked
designs.
This Ex Parte Application is made on the grounds that Defendants are

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unauthorized to utilize the Protected Marks. Defendants are not ARCO dealers or

BPWCP fTanchisees and do not sell ARCO-branded motor fuels or am/pm mini
market convenience store products and services. Although STTN Enterprises, Inc.

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("STTN"), is a former BPWCP franchisee and previously enjoyed the right to display
and use the Protected Marks, BPWCP terminated the fTanchise relationship due to a

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number of breaches and defaults by STTN as set forth more specifically in the First
Amended Complaint. Thus, Defendants are no longer authorized to use or display any
of the Protected Marks.

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Defendants' ongoing use of products and materials bearing the Protected

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Marks is likely to confuse, mislead or deceive customers, purchasers and members of
the general public as to the origin, source, sponsorship or affiliation of Defendants'
products and is likely to cause such people to erroneously believe that Defendants'

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motor fuel and convenience store products and services have been manufactured,

authorized, sponsored, approved or licensed by BPWCP and/or ARCO, or that
Defendants are in some way affiliated with BPWCP or ARCO. This is especially so
since there used to be an ARCO-branded gasoline station and am/pm mini market at

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the 631 San Felipe Road, Hollister, California location, which increases the likelihood

of confusion to the public. As set forth more fully in the First Amended Complaint
filed in this action, the Memorandum of Points and Authorities attached hereto, and
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the Declarations of Brad Chrstiansen and Deborah Y oon Jones filed concurrently

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herewith, Defendants are in violation of Sections 32 and 43 of the Lanham Act, 15
U.S.C. §§ 1114 and 1125, are liable under common law unfair competition principles,

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and are in violation of California Business & Professions Code §§ 14320, 14330,

17200 et seq., and 17500 et seq. by continuing to utilize, without authorization, the
Protected Marks.

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Defendants' continued use and display of the Protected Marks will result

in continued and irreparable injury to BPWCP, ARCO and the public before this
matter may be heard on a fully noticed motion. Although Defendants are on notice of

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their violations, Defendants have refused to immediately remedy the situation. As
such, BPWCP and ARCO apply to this Court for a Temporary Restraining Order that:
(1) Requires Defendants to immediately remove all products and

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materials bearing the Protected Marks from the Station; and
(2) Restrains Defendants fTom any future use of the Protected Marks.

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BPWCP and ARCO also apply ex parte for an Order to Show Cause re
Issuance of Preliminary Injunction enjoining and restraining Defendants fTom further

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acts of trademark infTingement. Specifically, BPWCP and ARCO seek an order that
requures:

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(1)

Defendants to show cause why they should not be enjoined fTom

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displaying or otherwise using the federally registered trademarks

and trademark names pending the outcome of trial of this action;
and
(2)

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Defendants, their agents, servants, employees and attorneys and all

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those in active concert or participation with them to be restrained
and enjoined from the violations described above and herein.

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This Ex Parte Application is based upon the First Amended Complaint
filed on October 17, 2007, the Memorandum of Points and Authorities filed herewith,

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the Declarations of Brad Christensen and Deborah Y oon Jones filed herewith, and
upon such oral argument as may be made to the Court.

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DATED: October 18, 2007

Respectfully submitted,

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KURT OSENBAUGH DEBORAH YOON JONES SAY AKA KARITANI WESTON, BENSHOOF, ROCHEFORT, RUBALCAVA & MacCUISH LLP

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MEMORANDUM OF POINTS AND AUTHORITIES
I.

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INTRODUCTION
Without the consent, approval, authorization or permission fTom BPWCP

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or ARCO to use products and materials that bear federally registered trademarks, trade

names, and service marks, Defendants continue to use food and beverage containers
and other materials at their non-ARCO-branded gasoline station and non-am/pm
convenience store. Defendants were previously BPWCP fTanchisees but due to their

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numerous breaches of the fTanchise agreements, BPWCP terminated the franchise and

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debranded the gasoline station and convenience store. However, Defendants continue
to use paper products, cups, and other materials which contain federally registered

trademarks, trade names, and service marks that are federally registered or recognized

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as proprietary under common law. Furthermore, the pay machine at the gasoline
pumps go so far as to indicate "Thank you for choosing ARCO." The station is no
longer an ARCO-branded station or am/pm mini market. BPWCP and ARCO (the
registered owner of the trademarks) have notified Defendants of their violations.
Defendants refuse to stop their infTingement and dilution.

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Dealers and fTanchisees of BPWCP pay a royalty for the use of "ARCO"

and am/pm signage and displays in marketing motor fuel and convenience store
products and services sold at BPWCP's ARCO-branded gasoline stations and am/pm

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mini markets. But, Defendants have not paid any such royalties as they are no longer
fTanchisees nor do they have any agreement with BPWCP or ARCO to sell motor fuel

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and convenience store products and services under the ARCO or am/pm brand names.

Furthermore, BPWCP and ARCO do not supply any motor fuel or convenience store
products to Defendants. Thus, as set forth herein and in the First Amended Complaint

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filed by BPWCP and ARCO, Defendants are tring to gain an unfair advantage by
their unauthorized use of the Protected Marks in violation of both Federal and State
trademark and unfair competition authorities.
Because BPWCP and ARCO are suffering continued and irreparable
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harm as each day goes by with Defendants selling motor fuel and convenience store
products and services under the guise of an ARCO-branded gasoline station and

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am/pm mini market, BPWCP and ARCO seek ex parte relief from this Court. Besides

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the confusion and mistake created by Defendants' acts to the consumers and public,
other ARCO-branded gasoline stations and am/pm mini markets in the area will suffer
as result of Defendants' actions.

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Accordingly, BPWCP and ARCO respectfully

request that this Court issue a Temporary Restraining Order and Order to Show Cause

re Issuance of Preliminary Injunction requiring Defendants to immediately remove all
products and materials bearing the Protected Marks and refTain from further actions

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that violate and infringe upon the trademarked rights.

II.

SUMMARY OF FACTS
A.

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The Federally Re2Istered and Common Law Protected Trademarks.
Plaintiff BPWCP is engaged in the marketing and distrbution of motor

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fuel in the State of California and elsewhere in the United States. BPWCP currently

has ARCO-branded gasoline stations with am/pm mini market conveniences stores
located throughout the Western States. Among its activities, BPWCP sells ARCO-

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branded motor fuels to franchisees and, at certain of its properties, provides
fTanchisees with products for am/pm mini market convenience stores to be operated
concurrently on the same properties. Pursuant to fTanchise agreements, BPWCP has the authority to grant its fTanchisee dealers the right to use trade names, trademarks,
and service marks in connection with the resale of ARCO-branded motor fuels and the

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operation of the am/pm mini market convenience stores. Franchisee dealers must pay

BPWCP a royalty for use of the trade names, trademarks, and service marks. (See
Declaration of

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Brad Chrstensen ("Christensen Decl."), i1l3.)

ARCO is the registered owner of federally registered trademarks on the
following items, which have registration numbers as indicated:
(a)

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"ARCO" Logo depicted in photograph number 1 in Exhibit C to
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Christensen Decl.: Registration Number 1495419;
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(b) "ARCO" typed words as in "Thank You for Choosing ARCO"
depicted in photograph number 2 in Exhibit C to Christensen Decl.: Registration

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Number 1496212;
(c)

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"am/pm" logo contained on fountain beverage cups depicted in

photograph number 3 in Exhibit C to Chrstensen Decl.: Registration Number
2821396; and

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(d)

"am/pm" logo contained on nachos wrappers depicted in
Registration Number

photograph number 5 in Exhibit C to Christensen DecL.:

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1459431. (See Christensen Decl., i18.)

BP Products North America, Inc. is the registered owner of the "Thirst
Oasis" logo contained on fountain beverage cups and depicted in photograph numbers

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4 and 13 in Exhibit C to Chrstensen Decl; the relevant registration number for this
logo is 313357. (Christensen Decl., i1ll.)

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The following designs and marks are proprietary and exclusive to
BPWCP's franchises and BPWCP must authorize their use:
(a) "Fil Smart" words depicted in photograph number 1 in Exhibit C

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to Chrstensen Decl.;
(b) Soda Machine Graphics "Crunch Cube" depicted in photograph

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number 6 in Exhibit C to Chrstensen Decl.;

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(c) am/pm Coffee Graphics depicted in photograph numbers 7 and 8 in Exhibit C to Chrstensen Decl.;
(d) am/pm Coffee Menu depicted in photograph number 9 in Exhibit C
to Christensen Decl.;

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(e) am/pm Hamburger Graphics depicted in photograph number lOin

Exhibit C to Christensen Decl.;

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(f) ARCO Blue Neon Illuminated Light Stripe on Fuel Canopy
depicted in photograph number 11 in Exhibit C to Christensen Decl.; and

(g) am/pm Orange Neon Illuminated Light Stripe on Mini Market
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depicted in photograph number 12 in Exhibit C to Chrstensen Decl.

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BP Products North America, Inc. is the registered owner of the "Thirst
Oasis" logo contained on fountain beverage cups and depicted in photograph numbers

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4 and 13 in Exhibit C; the relevant registration number for this logo is 313357.
BPWCP has the right to utilize these trademarks in connection with its ARCObranded gasoline station and am/pm mini market fTanchises, has a cognizable interest
in the infTinged upon mark, and therefore has a right to bring the trademark

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infTingement action. (Christensen Decl., i1ll.)

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In addition, these Protected Marks have been used continuously since
they were first used in commerce in connection with ARCO-branded gasoline stations

and am/pm mini market/convenience stores throughout the Western United States in

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California, Nevada, Washington, Oregon, and Arizona (the "Western States").
(Chrstensen Decl., i1l2 and Exhibit Band Exhibit C.) These Protected Marks have been used to identify for consumers the products available at ARCO-branded gasoline
stations and am/pm mini market convenience stores.
Furthermore, BPWCP and ARCO have made a significant investment to

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advertise and market the Protected Marks in connection with the sale of high quality

motor fuels and mini market convenience store products and services, and have
developed considerable good will in the Protected Marks among the consumers of
motor fuels and mini market convenience store products and services. The Protected
Marks are prominently displayed at ARCO-branded gasoline stations and am/pm mini

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market convenience stores throughout the Western States. (Christensen Decl., i1l2.)

BPWCP and ARCO rely heavily on the name, color and design scheme recognition
and good wil that it has developed over the years in these Protected Marks to attract
customers and to make sales of ARCO-branded motor fuels and am/pm mini market
convenience store products and services. (Id.)

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B.

Defendants' Violation of the Federally Re2istered and Common Law

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Trademarks.
Prior to BPWCP terminating its franchise relationship with STTN, the
Station was an ARCO-branded gasoline station and am/pm mini market. As discussed
above, the Station was an ARCO gasoline station and am/pm mini market, however,

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BPWCP terminated the fTanchise effective September 6, 2007. BPWCP "de-branded"
the Station on September 17 and 18, 2007, and advised Defendants to remove all

products bearing trademarked and proprietary displays and products. As of September

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11, 2007, the Station was still improperly displaying these Protected Marks while, at
the same time, offering non-ARCO branded gasoline for sale.

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Defendants have and continue to violate Federally-registered trademarks,
trade names and service marks and use proprietary materials as follows:

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Defendants have not altered the Pay Island Cashier Machine screen

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such that the screen statement displays "ARCO" and "bp" logos,
and states "Fil Smart," and "Thank you for choosing ARCO";

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Defendants continue to sell beverages in fountain cups bearing

"am/pm" and "thirst oasis" logos;

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Defendants continue to sell Nacho Chips that are contained in
"am/pm" food wrappers;

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Defendants continue to display the am/pm soda fountain "CRUNCH
CUBE" machine graphics above the soda dispenser heads;

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Defendants continue to display the am/pm coffee graphics above the
coffee machine;

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Defendants continue to display the am/pm coffee price menu board
that are exclusive to am/pm mini markets;

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Defendants continue to display a hamburger graphic that is
exclusive to am/pm mini markets;

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Defendants continue to utilize the ARCO neon blue iluminated
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light band on the fuel canopy;

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Defendants continue to utilize the am/pm neon orange illuminated

light band in the mini market exterior; and

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Defendants have not altered the store cash registers such that the
printed receipts state "Thirst Oas" for a purchase of fountain
beverages.

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(Christensen Decl., i1i16, 8, 9 and 11.)

C.

BPWCP and ARCO Demand that Defendants Stop Any Display or

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Sales of Products Bearin2 Trademarks. Trade Names or Any Other
Infrin2in2 Marks
In a letter dated September 12, 2007, Plaintiffs advised Defendants that

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they must immediately discontinue the use of all the Protected Marks. (Jones Decl.,
i12, Exhibit D.)

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Defendants sent a letter dated September 12, 2007 which notably failed
to address any of the trademark violations and threatened BPWCP with litigation.
(Jones Decl., i13, Exhibit E.)

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In a letter dated September 13, 2007, BPWCP and ARCO demanded that
Defendants immediately cease the trademark and trade name violations and stop using

proprietary items. (Jones Decl., i14, Exhibit F.) As of October 12, 2007, Defendants

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were continuing to violate BPWCP's and ARCO's trademark-protected and
proprietary interests. (Christensen Decl., i1i16, 8, and 9, Exhibit C.)

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On October 8, 2007, BPWCP's counsel contacted Defendants' to advise

that BPWCP would be filing a First Amended Complaint to include claims for
trademark violation and moreover, would be filing a Temporary Restraining Order to

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restrain Defendants fTom their continued trademark violations. (Jones Decl., i1 6.)
BPWCP's counsel agreed to hold off on its filings to determine whether Defendants'

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had any interest with an informal mediation. As of today's date BPWCP's counsel
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has not heard from Mr. Michael and it is my understanding that Defendants'

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trademark infringement persists.

Although BPWCP and ARCO have made informal attempts to resolve
the dispute prior to filing this First Amended Complaint, Defendants refused to cease
their violations.

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Indeed, to date, Defendants continue to use the famous and

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trademarked ARCO and am/pm names, trademarked products, and proprietary

materials in connection with the promotion, distribution, and sale of motor fuels and
convenience store products.
D.

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Scope of the Injunction.
In view of the foregoing facts, on October 18, 2007, BPWCP and ARCO

filed a First Amended Complaint for: (1) declaratory relief under the Petroleum
Marketing Practices Act (15 U.S.C. §§ 2801, et seq.); (2) breach of contract - gasoline
agreement; (3) breach of contract - mini market agreement; (4) breach of fTanchise

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guaranties; (5) common count - goods sold and delivered; (6) unjust enrichment; (7)
breach of contract - mini market loan agreement; (8) breach of mini market loan

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guaranties; (9) judicial foreclosure; (10) federal trademark, trade name, and service
mark infungement; (11) common law unfair competition; (12) trademark infungement

under California Business & Professions Code § 14320 and § 14330; and
(13) violation of California Business & Professions Code §§ 17200 et seq. & 17500 et

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seq. i BPWCP and ARCO believe that during the pendency of the action BPWCP and
ARCO will be irreparably harmed if Defendants are allowed to continue operating the

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Station and provide motor fuel and convenience store products and services under the
guise of the Protected Marks. Defendants are now a competitor of BPWCP and

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ARCO, and because they are using the Protected Marks to sell motor fuel and
convenience store products and services in direct competition with BPWCP and

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i At the time BPWCP filed the original complaint it was uncertain whether
Defendants would be voluntarily removin1 lll products bearing the Protected Marks.
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ARCO, BPWCP and ARCO seek immediate relief fTom this Court to have the
Protected Marks removed pending the outcome of this lawsuit.
For the reasons set forth below, by this application for a temporary

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restraining order and order to show cause re issuance of preliminary injunction,

BPWCP and ARCO respectfully request that this Court order Defendants to
immediately remove all products, the color material, designs and displays that are in
violation of the federally registered trademarks and refTain fTom using any Protected
Marks in any way, shape or form in the future.

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III.

BPWCP AND ARCO ARE ENTITLED TO INJUNCTIVE RELIEF AND
AS SUCH. A TEMPORARY RESTRAINING ORDER AND ORDER TO
SHOW CAUSE SHOULD ISSUE HERE
A.

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Standard for Grantin2 Injunctive Relief.
In order to obtain preliminary relief (TRO or preliminary injunction), a

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movant must show: "(1) a strong likelihood of success on the merits, (2) the
possibility of irreparable injury to the plaintiff if preliminary relief is not granted, (3)

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the balance of hardships favoring the plaintiff, and (4) advancement of the public
interest." See F.R.C.P. Rule 65(b); Arcamuzi v. Continental Air Lines, Inc., 819 F.2d

935, 937 (9th Cir. 1987); Atari Corp. v. Nintendo of America, Inc., 897 F.2d 1572,

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1575 (9th Cir. 1990) (citations omitted). A party may meet the burden under these

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four factors by demonstrating either: (1) a combination of probable success on the
merits and the possibility of irreparable injury, or (2) that serious questions of law are

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raised and the balance of hardships tips sharply in its favor. Id.; Fong v. Lawn, 851
F.2d 1559,1561 (9th Cir. 1988).

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When there is a high probability of confusion between trade names for
purposes of the Lanham Act false designation of origin claim and common law, there
is a presumed likelihood of damage to reputation and good will which entitles a
plaintiff

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to preliminary relief. Metro Brokers, Inc. v. Tann, 815 F.Supp. 377 (D.Colo.

1993). The balance of equities in an action for trade dress infTingement action under
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EX PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER

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the Lanham Act is in favor of the movant. See Second Earth Enterprises, Inc. v.
Allstar Product Marketing Co., 717 F.Supp. 302 (E.D. Pa. 1989); Johanna Farms,

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Inc. v. Citrus Bowl, Inc., 468 F.Supp. 866 (E.D.N.Y. 1978). In addition, the
irreparable harm necessary for preliminary injunctive relief may be presumed once the

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Lanham Act plaintiff has demonstrated that the defendant has made a false and
misleading comparison of its product to that of the plaintiff/competitor. Pfizer, Inc. v.
Miles, Inc., 868 F.Supp. 437 (D.Conn. 1994).

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BPWCP and ARCO have met their burden of showing to warrant the
granting of injunctive relief here and as the balance of equities are in favor of BPWCP

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and ARCO, this ex parte application should be granted. Moreover, injunctive relief is
necessary as money damages wil be inadequate.
B.

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BPWCP and ARCO Are Likely to Prevail on the Merits.
In this case, on both the facts and the law, it is probable and "likely" that

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BPWCP and ARCO will succeed on the merits, and BPWCP and ARCO have raised
questions serious enough to require litigation. Indeed, BPWCP and ARCO have filed
a First Amended Complaint against Defendants on the following grounds:
. Section 43(a) of the Lanham Act imposes civil liability upon

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"(a)ny person who, on or in connection with any goods or services, . . . uses in
commerce any word, term, name, symbol, or device, or any combination thereof, or

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any false designation of origin, false or misleading description of fact, or false or

misleading representation of fact, which -- (A) is likely to cause confusion, or to
cause mistake, or to deceive. . . , or (B) . . . misrepresents the nature, characteristics,

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qualities, or geographic origin of his or her or another person's goods, services, or
commercial activities.. . ."
deceive.
. Section 43(c) of the Lanham Act, 15 U.S.C. § l125(c) provides
15 U.S.C. § l125(a). Again, Defendants' use of the

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Protected Marks at the Station is more than likely to cause confusion or mistake or to

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protection against dilution of famous marks, such as the Protected Marks. The
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products and materials bearing the Protected Marks used by Defendants at their non-

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ARCO gasoline station either blurs the Protected Marks' identification or tarnishes
BPWCP's and ARCO's reputation and associations.
. California authority under common law and statutory law also

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provide relief to BPWCP and ARCO under state actions for unfair competition,

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trademark infringement, and trademark dilution. These actions are based essentially
upon the same facts already discussed above. Given the unequivocal nature of
Defendants' trademark infringement and improper use of the Protected Marks,

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BPWCP and ARCO are more than likely to prevail on the merits.

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BPWCP and ARCO have more than a fair chance of succeeding on the
merits in its trademark action against the Defendants given Defendants' blatant

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infTingement.

Unless Defendants are temporarily restrained until the tral in this

action, BPWCP and ARCO will suffer continued and irreparable harm. Accordingly,
BPWCP and ARCO respectfully request this Court grant the ex parte application and

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issue a temporary restraining order that requires Defendants to remove all products
and materials bearing the Protected Marks fTom the Station and refrain fTom use of

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these products and materials in the future.
C.

BPWCP and ARCO Have Suffered and Will Suffer Immediate and

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Irreparable Harm if Defendants are Not Restrained from Violatin2
the Protected Marks.
Defendants refuse to remove and cease using the products and materials

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with the Protected Marks fTom the Station. Defendants have made it clear that they

will not recognize BPWCP's and ARCO's trademark rights and wil continue to
violate BPWCP's and ARCO's rights unless otherwise refTained. If Defendants
continue to sell motor fuel and convenience store products and services under these

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violating acts, BPWCP and ARCO will be irreparably injured. Consumers may be
confused into purchasing motor fuel or convenience store goods or products fTom

Defendants' Station under the misguided belief that they are doing so from an ARCO14
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branded gasoline station and am/pm mini market. Other ARCO-branded stations and
am/pm mini market stores will also lose business as a result of Defendants' use of the

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Protected Marks at the Station. Thus, BPWCP and ARCO are threatened with actual

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and significant irreparable injury if a temporary restraining order and preliminary
injunction are denied.
D.

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The Balance Of Hardships Wei2hs In Favor Of BPWCP and ARCO.
If a temporary restraining order is issued, the only detriment suffered by

Defendants would be the expense to remove the current infunging products. BPWCP

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and ARCO have provided sufficient notice to Defendants concerning its intent to file
this motion.

(Jones Decl., i1 6.) Defendants refused to immediately remove the

infTinging design thereby forcing BPWCP and ARCO to move forward with the
action and these proceedings. (Jones Decl., i16.)

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Thus, in light of the potential and actual harm to BPWCP and ARCO
which was directly caused by Defendants' infringement, it is clear that the balance of

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hardships weigh in favor of BPWCP and ARCO, and that the requested relief is
appropriate. Moreover, as set forth above, in actions involving violations of the
Lanham Act, the balance of equities for purposes of determining injunctive relief
should be in favor of

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the moving parties BPWCP and ARCO.

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IV.

CONCLUSION
Based upon all of the foregoing, as well as the First Amended Complaint

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on file herein and the Declarations of Brad Chrstensen and Deborah Y oon Jones,
BPWCP and ARCO respectfully request that a temporary restraining order be issued

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EX PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER

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which requires Defendants to immediately remove any and all infTinging products and

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materials bearing the Protected Marks at the Station and that the Court set an Order to
Show Cause re a preliminary injunction.

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DATED: October 18, 2007

Respectfully submitted,

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KURT OSENBAUGH DEBORAH YOON JONES
WESTON, BENSHOOF, ROCHEFORT,
SA Y AKA KARITANI

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RUBALCAVA & MacCUISH LLP

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Attorneys for Plain
BP WEST COAS

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Document 8

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DECLARTION OF PERSONAL SERVlCE

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I am eI1loyed in the County of Fresno, State of California, and my business address is Fresno Legal Servces, 2115 Kern Street, Suite 250, Fresno,
which ths servce is made.

Catiforni.a 93 7~ 1. .1 am over the age of eighteen years and not a par to the action in

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APPLICATION FOR TE1VlPORAY RESTRAG GlIER AND ORDER TO

On October 1,,8J 2007, I simred the document(s) described as EX PARTE

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SHOW CAUSE RE ISSUANCE OF PRELIMINARY INJUCTION'
addressed as tallows: SEE ATTACHED SERVICE LIST
(Check one of

MEMORANDUM OF POINTS AND AUTHORIffS IN SUPPORT TIREOF on
the interested.pares in this action 9.y enclosiIlg--he document(s)in a sealed envelope

the following:)

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o
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I personally delivered the documents to:

package clearly labeled to identj fy the attorney being served:

(specify name): . I personally left the documents at the attorney's offce, in an envelope or
t& with a receptionist or with a person havig charge thereof
o in a conspicuous p-lace in the office between the hours of nine in the

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morning and five in the åfterocin

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o
o o
1&

I personally left the documents at the attorney's residence with some person of not less than i 8 years of age
I .pers~mally left tpe docwweaIS at the p~' s residence~ between the hours of

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eight in the mommg and six In the evening, wwth some person of not less than

1 ir years of age '

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of Cafifomia that the foregoing 'is tre ana correct.

(Statel I declare uncler penalty of

perjur under the laws of

the State

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correct

(Federal) I declare under penalty of perjur that

'the foregoing is tre and

Executed on October 18, 2007! at Los Angeles, Californa.

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L/I~fS--,' .f /L l-' .': \' f r-Lf~

(Name - Please ~tJ ./ ,,/ (Signature)

)' - ~'

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o'J

(\ UI '(\ ~I

(I ¡ J ~i \J (\ I 1 \\ X) \J J 1' ~I J (' (' J IAI L f\ \J

IAI I I i 'r

i rr rr 7 '(1 I 'I""

Case 5:07-cv-04808-JF

Document 8

Filed 10/18/2007

Page 21 of 21

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BP WEST COAST PRODUCTS LLC v. STTN ENTERPRISES, et al. United States District Court, Northern District Case No. C07 04808 RS

SERVICE LIST
John G. Michael, Esq.

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Baker Manock & Jensen 5260 North Palm Avenue
Fourth Floor

Attorney for Defendants, STTN ENTERPRISES, INC.; NAZIM FAQUIRYAN; and SAYED FAQUIRYAN

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Fresno, CA 93704

Tel: (559) 432-5400
Fax: (559) 432-5620

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¡ 052855.1