Wunderwerks, Inc. v. Dual Behav. Co. LLC

Wunderwerks, Inc. v. Dual Behav. Co. LLC

Opinion

ORDER DENYING PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION

Dkt. No. 16

On November 5, 2021, the Court heard oral argument on plaintiff's motion for a preliminary injunction. Dkt. No. 17. Plaintiff Wunderwerks, Inc. ("plaintiff" or "Wunderwerks") alleges defendants Dual Beverage Company LLC ("DBC"), WNDER, LTD ("Wnder"), and DOES 1-10, collectively "defendants," infringe plaintiff's trademark and should be preliminarily enjoined from doing so. Dkt. Nos. 1 and 17. Having considered the papers and arguments made, the Court hereby DENIES plaintiff's motion.

BACKGROUND

Plaintiff's complaint (Dkt. No. 1 at 1) alleges five causes of action against defendants:

(1) [*2]  Federal Trademark Infringement under 15 U.S.C. § 1114;

(2) Federal False Designation of Origin under 15 U.S.C. § 1125(a)(1)(A);

(3) Common Law Trademark Infringement;

(4) California Statutory Unfair Competition under Cal. Bus. & Prof. Code § 17200 et seq.; and

(5) Declaratory judgment that Trademark Reg. No. 6,198,393 is valid and enforceable.

Plaintiff Wunderwerks was founded in September, 2019, as a wholly owned subsidiary of parent company Radix Labs, Inc. ("Radix"), incorporated in California. Dkt. No. 20 at ¶ 9 (Chialtas Decl.). Radix is based in Napa, California, and was founded in 2018. Id. at ¶ 3. Radix began to sell "all-natural, uninfused¹ sparkling fruit beverages under the word mark WUNDER" in April, 2019, to customers in California and Florida. Id. at ¶ 4, referencing Dkt. No. 20-1 (Invoices) (emphasis added).

On September 14, 2019, Radix assigned its rights and interests in the "WUNDER" mark to plaintiff. Dkt. No. 20 at ¶ 10; see Dkt. No. 19-1 Exhibit A (Assignment and Transfer Agreement). Plaintiff maintains it has "continued to develop and refine the line of uninfused . . . beverages" and has registered several domain names in connection with uninfused beverages. Dkt. No. 19 at ¶ 9. On October 24, 2019, plaintiff filed a trademark application, U.S. Serial [*3]  No. 88667500, with the USPTO to register the mark "WUNDER" (the '500 application). Dkt. No. 19-1 Exhibit E. The '500 application matured to Registration No. 6,198,393 (the '393 Registration) on November 17, 2020, and has a first use date of April 1, 2019. Dkt. No. 19-1 Exhibit F (Registration certificate). The '393 Registration indicates "CLASS 32: Fruit Juices Non-alcoholic sparkling fruit juice beverages; Non-alcoholic carbonated beverages; Concentrates and powders used in the preparation of energy drinks and fruit-flavored beverages." See WUNDER, Registration No. 6,198,393.

Around July 2020, plaintiff launched its infused beverage product, with sales alleged to have begun thereafter around July 2020. Dkt. No. 26 at 8² (Opposition); Dkt. No. 29 at 5 (Reply); Dkt. No. 27-4 Exhibit D (plaintiff's Instagram post of June 27, 2020); Dkt. No. 27-5 Exhibit E (plaintiff's Instagram post of July 10, 2020). This "separate line of infused . . . beverages also sold under the WUNDER mark" is available in eight-ounce cans in three flavors. Dkt. No. 29-3 at ¶ 10. Plaintiff asserts the infused beverages and uninfused beverages differ only by the CBD and THC additives and "[n]one of the ingredients in [*4]  the uninfused beverage have been substituted." Id. at ¶¶ 8-9. For example, plaintiff asserts plaintiff's infused Lemon Ginger flavored beverage and Radix's uninfused Lemon Ginger flavored beverages differ only by added CBD and THC. Id. Plaintiff admits the WUNDER mark has not been used since the "end of 2019" in connection with uninfused beverages. Dkt. No. 29 at 9. However, plaintiff maintains that while Radix developed only a single flavor of uninfused beverage (Lemon Ginger), plaintiff is currently developing further flavors of uninfused beverages. Dkt. No. 29-3 at ¶¶ 5-7 (Chialtas Reply Decl.); See Dkt. No. 29-12 Exhibit L (taste-test survey indicating Q3 2021). Plaintiff maintains it is "in the process of securing a manufacturer so that it can release [uninfused beverages] in early 2022." Dkt. No. 29 at 10; Dkt. No. 29-3 at ¶ 7.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.