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Nokota Horse Conservancy, Inc. v. Bernhardt

October 20, 2009

NOKOTA HORSE CONSERVANCY, INC., PLAINTIFF,
v.
DAVID J. BERNHARDT, NOKOTA HORSE ASSOCIATION, INC., DAVID ROBSON, NOLA ROBSON, ROBERT FJETLAND, AND DEB FJETLAND, DEFENDANTS.



The opinion of the court was delivered by: Daniel L. Hovland, Chief Judge United States District Court

ORDER GRANTING PLAINTIFF'S MOTION FOR TEMPORARY RESTRAINING ORDER

Before the Court is the "Plaintiff's Motion for Temporary Restraining Order and/or Preliminary Injunction" filed on October 14, 2009. See Docket No. 41. The Defendants Nokota Horse Association, Inc., David Robson, Nola Robson, Robert Fjetland, and Deb Fjetland, acting pro se, filed a response on October 19, 2009. See Docket No. 44. The Plaintiff filed a reply brief on October 20, 2009. See Docket No. 51. The Plaintiff seeks a temporary restraining order and/or preliminary injunction enjoining and restraining Defendant Nokota Horse Association and its principals and agents, Defendants David Robson, Nola Robson, Robert Fjetland, and Deb Fjetland, from (1) registering or certifying, or offering to register or certify, any horse, including those sold at the October 23, 2009 roundup sale, using the marks NOKOTA or any variation thereof that is confusingly similar to Nokota or the Nokota Horse Conservancy; (2) taking any action that would promote, advertise, or facilitate the registration or certification of horses, including those sold at the roundup sale, using the same marks; and (3) making any use of the same marks in association with any promotion, advertisement, display, sale, offering for sale, printing, production, circulation, or distribution of any product or service associated with the roundup sale of horses. For the reasons set forth below, the Plaintiff's motion for a temporary restraining order is granted.

I. BACKGROUND

The plaintiff, Nokota Horse Conservancy, Inc. (Conservancy), is a non-profit North Dakota corporation with its principal place of business in Linton, North Dakota. Defendant David Bernhardt is a resident of Wishek, North Dakota. Defendant Nokota Horse Association, Inc. (Association) is a Minnesota corporation, with its principal place of business in Hayfield, Minnesota. Defendants David Robson and Nola Robson are residents of Hayfield, Minnesota. Defendants Robert Fjetland and Deb Fjetland are residents of Welch, Minnesota.

The Conservancy was formed in 1999. The primary purpose of the Conservancy is to preserve the Nokota horse, a unique breed that descended from horses in the Theodore Roosevelt National Park. The Conservancy maintains a breed registry and registers Nokota horses that meet the Conservancy's registration criteria. Bernhardt used to be in the business of Nokota horse breeding and stud services, and was once a member of the Conservancy's board of directors.

On August 10, 2004, Bernhardt received a federal trademark registration for the mark "NOKOTA" for horse breeding and stud services. See Docket No. 21-2. In August 2008 and January 2009, the Conservancy sent Bernhardt requests that Bernhardt assign the trademark to the Conservancy. Bernhardt did not respond to the requests. On April 16, 2009, Bernhardt assigned the trademark to the Association. See Docket No. 21-3.

On May 1, 2009, the Conservancy filed a complaint alleging trademark infringement, unfair competition, false designation of origin, and fraud on the U.S. Patent and Trademark Office under federal law. See Docket No. 1. The complaint further claims trademark infringement and unfair competition in violation of the common law of North Dakota. On July 8, 2009, Bernhardt filed a counterclaim which alleges trademark infringement and false designation under federal law and service mark infringement, unfair competition, and consumer fraud under state law. See Docket No. 10. On October 14, 2009, the Conservancy filed an amended complaint that added the Association, the Robsons, and the Fjetlands as co-defendants. See Docket No. 39.

A roundup of horses at the Theodore Roosevelt National Park is scheduled for October 19-20, 2009. Following the roundup, approximately 90 horses will be made available for sale to the public on October 23, 2009 in Dickinson, North Dakota. The Conservancy contends that Association representatives have let it be known that prospective buyers may pay to register Nokota horses with the Association. The Conservancy further contends that the Association would sell Nokota registrations to all horses coming out of the Theodore Roosevelt National Park, regardless of bloodline, which would include horses that would not meet the standards required for Conservancy registration. The Conservancy moves for a temporary restraining order and/or preliminary injunction enjoining and restraining the Defendants from using the Nokota mark in any way, including at the roundup sale.

The Association, the Robsons, and the Fjetlands argue that North Dakota is an improper venue. They further contend that the Conservancy's motion for temporary restraining order and/or preliminary injunction should be denied because the Association's registry is not in competition with the Conservancy's registry, that the Conservancy does not own the mark "NOKOTA," and that the Conservancy has not suffered loss and will not suffer loss other than as a result of the Conservancy's own doing.

II. VENUE

The Association, the Robsons, and the Fjetlands contend that the Conservancy's motion for temporary restraining order and/or preliminary injunction should be dismissed for failure to file in the proper venue. 28 U.S.C. § 1391(b) provides that, in actions where federal jurisdiction is based at least in part on a federal question, venue is proper in the federal district where a substantial part of the events or omissions giving rise to the claim occurred. "A substantial part of the events leading to infringement occurs both in the district where the infringer is located and in the district where the trademark owner is located and confusion is likely to occur." Minn. Mining & Mfg. Co. v. Rauh Rubber, Inc., 943 F. Supp. 1117, 1125 (D. Minn. 1996).

The alleged infringers are located in North Dakota and Minnesota. The Conservancy claims ownership of the mark "NOKOTA," while the Defendants argue that NOKOTA is too generic a term to be trademarked and that the Association currently has the federal registration on the mark "NOKOTA." The Association plans to attend and solicit its registry at the roundup sale in North Dakota which will likely cause confusion. Additionally, the Robsons and the Fjetlands have previously purchased Nokota horses in North Dakota. See Docket Nos. 45, 46, 47 and 48. At this preliminary stage of the proceedings, the Court finds that venue is proper in federal district court in North Dakota.

III. LEGAL DISCUSSION

Pursuant to Rule 65(b), in determining whether a temporary restraining order should be granted, the Court must look to the specific facts shown by an affidavit to determine whether immediate and irreparable injury, loss, or damage will result to the applicant. It is well-established that applications for preliminary injunctions and temporary restraining orders are generally measured against the same factors. Wachovia Sec., L.L.C. v. Stanton, 571 F. Supp. 2d 1014, 1031 (N.D. Iowa 2008). In determining whether preliminary injunctive relief should be granted, the Court is required to consider the factors set forth in Dataphase Sys., Inc., v. C L Sys., Inc., 640 F.2d 109, 114 (8th Cir. 1981). Whether a preliminary injunction or temporary restraining order should be granted involves consideration of "(1) the movant's probability or likelihood of success on the merits, (2) the threat of irreparable harm or injury to the movant absent the injunction, (3) the ...


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