Court filing

Memorandum in Support regarding 8 Motion for Temporary Restraining Order — Beringer Commerce, Inc. v. FIN Cap, Inc. (Dkt. 9, E.D.N.C. No. 5:21-cv-00251)

Filed June 10, 2021 in Beringer Commerce, Inc. v. FIN Cap, Inc.; one of 94 filings from this case.

Record facts

Court	U.S. District Court for the Eastern District of North Carolina
Filed	2021-06-10

U.S. District Court for the Eastern District of North Carolina · No. 5:21-cv-00251-BO · Doc. 9 · 2021-06-10 · Docket on CourtListener

Full text

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
WESTERN DIVISION
Civil Action No. _______________________
BERINGER COMMERCE, INC. d/b/a BLUE
ACORN iCi,
Plaintiff,
v.
FIN CAP, INC. d/b/a “BLUEACORN.CO,”
BLUE ACORN PPP, LLC, BLUE OAK
FOREST, LLC, MICHAEL S. COTA, JIMMY
FLORES, STEPHANIE HOCKRIDGE REIS,
and NATHAN REIS,
Defendants.
MEMORANDUM IN SUPPORT OF
PLAINTIFF’S MOTION FOR
TEMPORARY RESTRAINING
ORDER AND PRELIMINARY
INJUNCTIVE RELIEF
(Rule 65)
NOW COMES Plaintiff BERINGER COMMERCE, INC. d/b/a BLUE ACORN iCi (“Blue
Acorn iCi”), by and through undersigned counsel, and submits this Memorandum in Support of
Plaintiff’s Motion for Temporary Restraining Order and Preliminary Injunctive Relief (“Plaintiff’s
Motion”) against Defendants FIN CAP, INC. d/b/a “BLUEACORN.CO,” BLUE ACORN PPP,
LLC, BLUE OAK FOREST, LLC, MICHAEL S. COTA, JIMMY FLORES, STEPHANIE
HOCKRIDGE REIS and NATHAN REIS (collectively “Defendants”) under Rule 65 of the
Federal Rules of Civil Procedure.
FACTUAL BACKGROUND
This is a trademark infringement, copyright infringement, cybersquatting, unfair
competition, and unfair and deceptive trade practices action brought by Blue Acorn iCi against
numerous individuals and corporate entities who are operating an infringing “Blue Acorn”
business using unregistered names, logos, marks, and images that are nearly identical to Plaintiff’s
5:21-cv-00251-BO
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1) registered trademark BLUE ACORN ICI; 2) copyright of the “blue acorn” image artwork; and
3) all associated intellectual property rights relating to Plaintiff’s Blue Acorn Brand,1 including
the “blue acorn” name, used by Plaintiff since at least 2007 to promote its goods and services.
In 2020, Defendants established a business purporting to assist small businesses and
contractors in obtaining loans through the federal Paycheck Protection Program (“PPP”).
Defendants registered multiple websites and created marketing materials to promote their PPP
business using 1) Plaintiff’s “blue acorn” name; 2) a nearly identical “blue acorn” word logo to
that of Plaintiff’s “blue acorn” word logo; and 3) an exact copy of Plaintiff’s Acorn Logo, which
has been in use by Plaintiff since at least 2009.
Then, in March 2021, Defendants flooded the market with advertising, using these above-
described infringing “blue acorn” name and marks in similar channels of commerce as Plaintiff’s
goods and services. Almost immediately, Defendants’ widespread marketing caused significant,
actual consumer confusion in the marketplace. Specifically, Defendants’ numerous websites and
social media presence, including an infringing YouTube video that has been viewed over 14
million times, have caused thousands of consumers to believe, mistakenly, that Blue Acorn iCi is
associated with Defendants or is providing Defendants’ PPP business. As a direct result, Blue
Acorn iCi has been inundated with calls, complaints, emails, messages, and investigative inquires
relating to Defendants’ PPP business. Further, and as demonstrated in the Exhibits to the Verified
Complaint, these communications have been rife with complaints, frustration, desperation, alarm,
and concern about the quality and legitimacy of Defendants’ services.
Exacerbating this problem is Defendants’ utter failure to maintain any meaningful
customer service line or personnel to handle the deluge of complaints and inquiries from

1Plaintiff incorporates the meaning of defined terms as stated in the Verified Complaint, and all references to exhibits
are to the Exhibits to the Verified Complaint.
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Defendants’ customers. This has resulted in a truly overwhelming amount of communications that
Blue Acorn iCi has been forced to handle throughout the day, resulting in significant interruption
and impairment in its ability to conduct basic business affairs. In addition to the extreme burden
this has placed on Plaintiff’s business, the nature of the complaints has escalated to those of
potential fraud, negligence, and misdirection of PPP loan funds. The collective impact of these
events—including the significant, ongoing consumer confusion; volume of negative complaints
about Defendants’ services; Defendants’ extremely poor or nonexistent customer service; and the
concerning nature of complaints about Defendants’ business—is causing, and will continue to
cause, immediate and serious harm to Blue Acorn iCi’s brand, goodwill, and business reputation.
In an attempt to address these serious issues of infringement, cybersquatting, unfair
competition, and actual consumer confusion, Blue Acorn iCi sent two cease & desist letters
outlining Defendants’ blatant infringement and resulting losses to Blue Acorn iCi. Unfortunately,
Defendants have continued their unauthorized use and promotion of infringing marks in the face
of Blue Acorn iCi’s superior intellectual property rights; their full knowledge of actual consumer
confusion; and the serious harms to Blue Acorn iCi, further demonstrating that Defendants’
conduct is done willfully and with the deliberate intent to trade on the goodwill of Blue Acorn
iCi’s long-standing Blue Acorn Brand.
Escalating consumer confusion, together with Defendants’ failure and refusal to cure their
conduct, has forced Blue Acorn iCi to file this action, seeking damages and the injunctive relief
specifically set forth in Plaintiff’s Motion. In support of this requested relief, Plaintiff incorporates
the factual allegations set forth in the Verified Complaint in full, along with all Exhibits to the
Verified Complaint, and requests that the Court take any and all action necessary to address the
ongoing acts of infringement and immediate harm to Plaintiff resulting from Defendants’ conduct.
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LEGAL STANDARD

In considering a Motion for Temporary Restraining Order (“TRO”) and Preliminary
Injunctive Relief, the trial court evaluates four interrelated factors: “(1) the likelihood that the
plaintiff will succeed on the merits; (2) the likelihood of irreparable harm to the plaintiff if the
preliminary injunction is denied; (3) the likelihood of irreparable harm to the defendant if the
requested relief is granted; and (4) the public interest.” NaturaLawn of Am., Inc. v. W. Grp., LLC,
484 F. Supp. 2d 392, 398 (D. Md. 2007) (citing Rum Creek Coal Sales, Inc. v. Caperton, 926 F.2d
353, 359 (4th Cir.1991)).
ARGUMENT

I. LIKELIHOOD OF SUCCESS ON THE MERITS
Plaintiff’s Verified Complaint demonstrates a likelihood of success on the merits for
Plaintiff’s claims of trademark infringement, copyright infringement, and cybersquatting under
federal and state law. Plaintiff will discuss each of these claims in turn.
A. Trademark Infringement
“To prevail on a trademark infringement claim, the plaintiff must show that it owns a valid
and protectable mark, that the defendants used a ‘re-production, counterfeit, copy, or colorable
imitation’ of that mark in commerce without the plaintiff’s consent, and that use of the mark is
likely to cause confusion.” PGI Polymer, Inc. v. Church & Dwight Co., 2015 WL 5920013, at *3
(W.D.N.C. Oct. 9, 2015) (unpublished) (citing Swatch AG v. Beehive Wholesale, LLC, 739 F.3d
150, 158 (4th Cir. 2014)); see also 15 U.S.C. § 1114(a); Rosetta Stone Ltd. v. Google, Inc., 676
F.3d 144, 152 (4th Cir. 2012). The unauthorized use of a trademark infringes the trademark
holder’s rights if it is likely to confuse an “ordinary consumer” as to the source or sponsorship of
the goods. Anheuser–Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 318 (4th Cir. 1992).
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A similar standard applies to trademark claims under the North Carolina Registered
Trademarks Act. Specifically, N.C. Gen. Stat. § 80-11 requires a plaintiff to prove “(1) that it has
a valid, [protectable] trademark; and (2) that the defendant’s use of a colorable imitation of the
trademark is likely to cause confusion among consumers.” Window Gang Ventures, Corp. v.
Salinas, No. 18 CVS 107, 2019 WL 1471073, at *18 (N.C. Super. Apr. 2, 2019).
Common law trademark rights, including those for unregistered marks, are acquired by the
first use of the mark in connection with the sale of goods or services, and any subsequent and
unauthorized use of the mark constitutes common law trademark infringement. HCW Ret. & Fin.
Servs., LLC v. HCW Emp. Ben. Servs., LLC, No. 10 CVS 1447, 2015 WL 4238193, at *7 (N.C.
Super. July 14, 2015) (quoting Emergency One, Inc. v. Am. Fire Eagle Engine Co., 332 F.3d 264,
267 (4th Cir. 2003)).
In this case, the Verified Complaint and all exhibits show that 1) Plaintiff has valid,
protectable trademark rights in BLUE ACORN ICI, the Acorn Logo, and the Blue Acorn Brand,
which includes the “blue acorn” name (collectively, “Plaintiff’s IP”); 2) Plaintiff’s IP was
established and in use prior to Defendants’ use and publication; 3) Defendants have engaged in
unauthorized use and publication of Plaintiff’s IP in their widespread, nationwide marketing
campaign and through their websites; and 4) their infringement is causing actual consumer
confusion that is overwhelming Plaintiff’s business.
1. Plaintiff Owns Valid and Protectable Trademark Rights in Plaintiff’s IP
Plaintiff is the sole and exclusive owner of trademark rights in its registered mark BLUE
ACORN ICI, Acorn Logo, and Blue Acorn Brand, which includes the “blue acorn” name, under
federal and state law. Plaintiff’s USPTO Registration of the BLUE ACORN ICI trademark (see
Exhibit C) is prima facie evidence of its validity, ownership, and proper registration under The
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Lanham Act, 15 U.S.C. § 1114, et. seq. As a result, Defendants bear the burden of overcoming this
presumption of validity, but will not be successful in doing so since there is no evidence
Defendants have any superior or original rights to any aspect of the name “blue acorn” for use in
identifying and promoting their PPP business. At the earliest, Defendants’ infringing use of the
“blue acorn” name was in April 28, 2020 (see Exhibit G), which is insufficient to overcome the
presumption. La Michoacana Nat., LLC v. Maestre, 2018 WL 2465478, at *2 (W.D.N.C. June 1,
2018) (unpublished) (citing Rebel Debutante LLC v. Forsythe Cosmetic Grp., Ltd., 799 F. Supp.
2d 558, 569 (M.D.N.C. 2011)).
The same result applies to Plaintiff’s trademark infringement claims relating to the Blue
Acorn Brand, Acorn Logo, and “blue acorn” name under North Carolina law. Both statutory and
common law trademark claims require proof of ownership. N.C. Gen. Stat. § 80-11. As explained
by this Court in La Michoacana, 2020 WL 1233652, at *4:
One of the bedrock principles of trademark law is that trademark or
service mark ownership is not acquired by federal or state
registration. Rather, ownership rights flow only from prior
appropriation and actual use in the market.” Allard Enters. v.
Advanced Programming Res., Inc., 146 F.3d 350, 356 (6th Cir.
1998) (quotation marks omitted). Thus, the first to appropriate and
use a particular mark in a given market (the “senior” user) generally
has priority to use the mark in that market to the exclusion of any
subsequent or “junior” users. Emergency One, Inc. v. Am. Fire
Eagle Engine Co., 332 F.3d 264, 268 (4th Cir. 2003).

Since at least 2007, Blue Acorn iCi (through its Predecessors) created, marketed, and
developed the “blue acorn” name to promote and identify its e-commerce business and Blue Acorn
Brand, which is known throughout the United States and internationally. Since 2009, Blue Acorn
iCi (through its Predecessors) created, marketed, and developed the Acorn Logo, which is
exclusively used in connection with the Blue Acorn Brand. Thus, the Blue Acorn Brand generally,
as well as the Acorn Logo and “blue acorn” name, are trademarks owned by Blue Acorn iCi who
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has the sole and superior right to use the same in commerce. Verified Complaint (“Compl.”) ¶¶
21–29; Ex. A.
2. Defendants’ Use of Plaintiff’s IP is Unauthorized

Defendants’ use of the Blue Acorn Brand, Acorn Logo, and “blue acorn” name is
unquestionably unauthorized. Not only did Defendants have constructive notice of Plaintiff’s
registered and common law trademarks, Blue Acorn iCi provided Defendants with actual notice
of the same through two cease & desist letters in April and May 2021. Each of these letters
requested immediate action by Defendants to cease all infringing activities and address the
resultant consumer confusion. Unfortunately, Defendants made no attempt to modify their
conduct, and their unauthorized infringing activity has continued. Compl. ¶¶ 114–23; Exs. I–O.
3. Defendants’ use of the “Blue Acorn” Name and Acorn Logo is Causing Actual
Confusion and Poses a High Likelihood of Continued Consumer Confusion

In analyzing likelihood of consumer confusion under The Lanham Act, courts examine the
following well-known factors:
(1) the strength or distinctiveness of the plaintiff’s mark as actually
used in the marketplace; (2) the similarity of the two marks to
consumers; (3) the similarity of the goods or services that the marks
identify; (4) the similarity of the facilities used by the markholders;
(5) the similarity of advertising used by the markholders; (6) the
defendant’s intent; (7) actual confusion; (8) the quality of the
defendant’s product; and (9) the sophistication of the consuming
public.

George & Co., LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 393 (4th Cir. 2009) (citing Pizzeria
Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984) and Sara Lee Corp. v. Kayser–Roth
Corp., 81 F.3d 455, 463–64 (4th Cir. 1996) (“Pizzeria Uno/Sara Lee factors”)); see also Variety
Stores, Inc. v. Walmart Inc., No. 19-1601, 2021 WL 1171746, at *5 (4th Cir. Mar. 29, 2021).
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Courts in North Carolina also apply the Pizzeria Uno/Sara Lee factors to analyze trademark
infringement claims under state law. See, e.g., Baker v. Bowden, No. 16 CVS 235, 2016 WL
6652776, at *3 (N.C. Super. Nov. 10, 2016) (unpublished) (citing Lone Star Steakhouse & Saloon,
Inc. v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995)).
Since the relevant factors under North Carolina statutory and common law overlap with
those under The Lanham Act, Plaintiff’s evaluation of the likelihood of consumer confusion
pursuant to the Pizzeria Uno/Sara Lee factors should be dispositive of all trademark claims.
i. Strength or Distinctiveness of Plaintiff’s Marks in the Marketplace
The first Pizzeria Uno/Sara Lee factor—strength or distinctiveness of the marks—is
“paramount in determining the likelihood of confusion since a consumer is unlikely to associate a
weak or undistinctive mark with a unique source and consequently will not confuse the allegedly
infringing mark with a senior mark.” Variety Stores, Inc., 888 F.3d at 661 (internal citation and
quotation omitted). To measure the strength of mark, courts consider both the conceptual or
inherent strength of the mark, as well as the commercial or acquired strength of the mark. George
& Co., 575 F.3d at 393.
Conceptual strength is typically divided into five categories, which
are given varying levels of protection based on the mark’s
distinctiveness: (1) fanciful; (2) arbitrary; (3) suggestive; (4)
descriptive; and (5) generic. Commercial strength, on the other
hand, considers the mark’s strength in the marketplace and
essentially mimics the inquiry into whether a descriptive mark has
acquired secondary meaning, i.e., that “in the minds of the public,
the primary significance of a product feature or term is to identify
the source of the product rather than the product itself.” See Sara
Lee, 81 F.3d at 464.

Select Auto Imports Inc. v. Yates Select Auto Sales, LLC, 195 F. Supp. 3d 818, 831–32 (E.D. Va.
2016); see also George & Co., 575 F.3d at 393.
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Here, the BLUE ACORN ICI mark, the Acorn Logo, and the “blue acorn” name are
arbitrary and distinctive. In general, arbitrary marks are ones that consist of common words and
designs that do not suggest or describe the parties’ services. In other words, there is nothing
inherent to Blue Acorn iCi’s services that relate to the color “blue,” and its services have nothing
to do with actual acorns. As such, Blue Acorn iCi’s marks are inherently distinctive, which garners
“the greatest protection against infringement.” Grayson O Co. v. Agadir Int’l LLC, 856 F.3d 307,
315 (4th Cir. 2017); Variety Stores, 888 F.3d at 662.
Furthermore, Plaintiff’s registration of BLUE ACORN ICI (see Ex. C) constitutes a
presumption of validity and distinctiveness in the mark. 15 U.S.C. § 1115(a).
As to the mark’s commercial or acquired strength, the United States Court of Appeals for
the Fourth Circuit has identified the following six factors as relevant to the mark’s degree of
consumer recognition in the marketplace: “(1) plaintiff’s advertising expenditures; (2) consumer
studies linking the mark to the source; (3) the plaintiff’s record of sales success; (4) unsolicited
media coverage of the plaintiff’s business; (5) attempts to plagiarize the mark; and (6) the length
and exclusivity of the plaintiff’s use of the mark.” Johnson & Morris PLLC v. Abdelbaky & Boes,
PLLC, No. 16 CVS 6151, 2016 WL 5923662, at *5 (N.C. Super. Oct. 11, 2016) (unpublished)
(citing Perini Corp. v. Perini Constr., Inc., 915 F.2d 121, 125 (4th Cir. 1990) (citation and internal
quotations omitted)); see also Variety Stores, 888 F.3d at 663. “No factor is determinative and
all factors need not be favorable for the plaintiff to prevail.” Johnson & Morris, 2016 WL
5923662, at *5.
Here, the evidence before the Court, including the materials attached as Ex. B to the
Verified Complaint, establishes strong commercial or acquired strength in the marketplace based
on these factors. Plaintiff’s IP has been exclusively used and cultivated by Blue Acorn iCi (and its
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Predecessors) since at least 2007. Blue Acorn iCi has offered these services through its websites,
“blueacornici.com” and “blueacorn.com,” and other public channels of commerce in connection
with its e-commerce services. As a result of Blue Acorn iCi’s continuous and prominent promotion
of the Blue Acorn Brand over at least the past fourteen (14) years, Blue Acorn iCi and has
developed distinct, identifiable, and recognized marks to identify its services. Compl. ¶¶ 19–29.
As of today, Blue Acorn iCi provides services to over 169 clients throughout the United
States and generates approximately 64 million dollars in annual revenue. Blue Acorn iCi expends
approximately $630,000.00 annually toward the promotion and advertising of the Blue Acorn
Brand and associated services. Compl. ¶¶ 17–18.
Finally, but perhaps most importantly, Defendants’ blatant infringement of Plaintiff’s IP,
including its use of an exact copy of the Acorn Logo, shows that Defendants have intentionally
plagiarized Plaintiff’s marks.
As a whole, these factors present a high degree of inherent, acquired, and commercial
strength of Plaintiff’s IP in the marketplace.
ii. Similarity of the Goods or Services the Marks Identify
In evaluating the second factor, courts consider whether the goods or services of the parties
are similar. This is relevant because consumer confusion will be more likely if the parties’ goods
or services are sufficiently related such that consumers attribute them to a single source.
Renaissance Greeting Cards, Inc. v. Dollar Tree Stores, Inc., 227 F. App’x 239, 244 (4th Cir.
2007); Combe Inc. v. Dr. Aug. Wolff GmBH & Co. KG Arzneimittel, 382 F. Supp. 3d 429, 458
(E.D. Va. 2019), aff’d, No. 19-1674, 2021 WL 1384750 (4th Cir. Apr. 13, 2021). Moreover, under
Fourth Circuit authority, the goods or services do not need to be identical or in direct competition
for confusion to be likely. George & Co., 575 F.3d at 397.
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While the underlying product or services provided by the parties is not the same, the
underlying concern that consumers will attribute them to a single source is squarely at issue here.
First, both Plaintiff and Defendants operate a web-based business and market and sell their
services online. Blue Acorn iCi’s trademark registration for BLUE ACORN ICI covers, inter alia,
“[a]ssistance, advisory services and consultancy with regard to business planning [and] business
management.” Ex. C. Blue Acorn iCi also offers e-commerce payment processing services.
Compl. ¶ 15. Furthermore, companies similar to Blue Acorn iCi have offered PPP assistance to
their clients, further conflating the parties’ goods and services in the marketplace.
Like Blue Acorn iCi, Defendants “Blue Acorn PPP” business provides business planning
and management services by assisting businesses “to apply for low-interest private loans for their
payroll and other costs.” Compl. ¶ 58, Ex. G. In addition, like Blue Acorn iCi’s payment
processing services, Defendants’ PPP business is a SaaS offering that makes financial transactions
more accessible to busy professionals. Based on these similarities, thousands of consumers have
been sufficiently confused by Defendants’ use of the “blue acorn” name in concluding that Blue
Acorn iCi is the source of Defendants’ goods and services. See Ex. F. Accordingly, this factor
weights in favor of Blue Acorn iCi.
iii. Similarity of the Two Marks to Consumers
In general, the third Pizzeria Uno/Sara Lee factor—similarity of the marks to consumers—
compares the appearance of the marks in assessing the potential for confusion. Rosetta Stone, 676
F.3d at 152. In this case, a visual comparison of Defendants’ “Blue Acorn” word logo (“Infringing
Mark”) depicted below, and Plaintiff’s “Blue Acorn” word logo, shows they are unmistakably and
confusingly similar.
Defendants’ Infringing Mark

Plaintiff’s Mark
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Both images depicted have the same use of blue coloring, the same font style, the same
lack of capitalization, the same font contrast between the “blue” and the “acorn,” and the same
emphasis or bold typeface of the word “acorn.” Rosetta Stone, 676 F.3d at 152; La Michoacana,
2018 WL 2465478, at *2.
The potential for confusion with respect to its “Acorn Logo” is even more pronounced
given Defendants’ blatant use of an exact copy of Blue Acorn iCi’s Acorn Logo as shown below:

Despite the glaring similarities in the parties’ marks, Defendants may attempt to argue that
their use of the Infringing Mark is slightly different than Blue Acorn iCi’s updated logo:

However, any such attempt will be unavailing for at least three reasons. First, Plaintiff’s
updated Blue Acorn logo with the letters “iCi” attached to the end does not in any diminish the
evident, continued similarity between Plaintiff’s registered BLUE ACORN ICO mark in name,
font, color, emphasis, and capitalization. Marks may be confusingly similar in appearance despite
the addition, deletion, or substitution of letters or words. See, e.g., Weiss Assocs. Inc. v. HRL
Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
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Second, Plaintiff has not abandoned the original “Blue Acorn” logo and continues to use
and publish this mark.

Third, the addition of “iCi” has in not in any way prevented consumer confusion.
Consumers are generally more inclined to focus on the first word, prefix or syllable in any
trademark or service mark. See, e.g., Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered.”). Thus, in sum, the third Pizzeria Uno/Sara Lee factor
weighs heavily in favor of Blue Acorn iCi.
iv. Similarity of Advertising
In evaluating the fourth Pizzeria Uno/Sara Lee factor, courts consider the similarity of the
media used for marketing and channels of trade, as well as the appearance and content of the
parties’ advertising. CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 273 (4th Cir.
2006). A “finding of similarity of advertising requires some degree of overlap among the parties’
outlets and customer bases, but the two need not be identical”. Select Auto Imports, 195 F. Supp.
3d at 837 (internal quotations and citations omitted).
A search on Google for Plaintiff as “blue acorn ici” produces one of Defendants’ infringing
websites as the first result, Compl. ¶ 99. See, e.g., Tropical Nut & Fruit Co. v. Forward Foods.
LLC, No. 3:13-CV-131, 2013 WL 2481521, at *3 (W.D.N.C. June 10, 2013) (unpublished)
(finding a similarity of advertising where search engine produces information about both parties).
Further, both Blue Acorn iCi and Defendants spend significant portions of their marketing budget
advertising to businesses and self-employed individuals seeking businesses management advice
and financial assistance, as further detailed with respect to factor (v) below. In sum, this fourth
Pizzeria Uno/Sara Lee factor also weighs in favor of Blue Acorn iCi.
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v. Similarity of Facilities
This factor considers the similarity of the classes of consumers purchasing the parties’
products and the context in which they make their purchases. Renaissance, 227 F. App’x at 244-
45; Tools USA & Equip. Co. v. Champ Frame Straightening Equip. Inc., 87 F.3d 654, 661 (4th
Cir. 1996) (referring to this factor as “the similarity of [the] retail facilities and trade channels used
to market the two lines of products”); vonRosenberg v. Lawrence, 412 F. Supp. 3d 612, 650
(D.S.C.), enforcement granted in part, 429 F. Supp. 3d 175 (D.S.C. 2019).

Here, both parties market their products to small businesses and self-employed individuals
throughout the United States across a wide variety of industries. Consumers of both parties are
looking for assistance to compete with larger companies and rely primarily on the parties’ web-
based presence to do so. Specifically, Blue Acorn iCi assists small business with direct-to-
consumer deliveries and marketing, payment processing, ecommerce site development and other
services that enable small businesses and solo entrepreneurs to compete against larger brands.
Compl. ¶ 14. As a result, Blue Acorn iCi’s web-based presence and longstanding Blue Acorn
Brand has been co-opted by Defendants to push their product to small businesses and entrepreneurs
nationwide. Accordingly, the fifth Pizzeria Uno/Sara Lee factor weighs in Blue Acorn iCi’s favor.
vi. Defendants’ Intent
This sixth factor analyzing the defendant’s intent is of critical importance and is often
dispositive of the element of consumer confusion as a presumption. As explained by the Fourth
Circuit, “[t]he presumption that intentionally copying someone else’s mark causes a likelihood of
confusion arises from the recognition that one who tries to deceive the public should hardly be
allowed to prove that the public has not in fact been deceived.” Shakespeare Co. v. Silstar Corp.
of Am., 110 F.3d 234, 239 (4th Cir. 1997) (citing Osem Food Indus. Ltd. v. Sherwood Foods, Inc.,
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917 F.2d 161, 165 (4th Cir. 1990)); see also Mobil Oil Corp. v. Pegasus Petroleum Corp., 818
F.2d 254, 258 (2d Cir. 1987); vonRosenberg, 412 F. Supp. 3d at 651 (recognizing that a defendant’s
intent to confuse is strong evidence of a likelihood of confusion). In addition, even if a defendant’s
infringement was initially done in good faith, continued or ongoing infringement after receiving
notice of actual confusion and demand to cease infringing activities constitutes willful and
intentional infringement. Lone Star, 43 F.3d at 937.
Here, the evidence before the Court clearly demonstrates intentional infringement.
Defendants’ willful, knowing, and intentional infringement is demonstrated by 1) their blatant
copying and use of the Acorn Logo; 2) Defendants’ evident design of the Infringing Mark to look
nearly identical to Blue Acorn iCi’s name logo; and 3) Defendants’ continued use of the Acorn
Logo and Infringing Mark after receiving each cease & desist letter. Compl. ¶¶ 114–23; Exs I–O.
These facts demonstrate Defendants’ evident intent to willfully and knowingly build their
business on the back of Blue Acorn iCi’s Blue Acorn Brand, using marks that are nearly identical,
and in the case of the Acorn Logo wholly identical, to Plaintiff’s IP. As a result of Defendants’
evident willful, bad faith, and intentional infringement, consumer confusion should be presumed.
Osem, 917 F.2d at 165.
vii. Actual Confusion
In the Fourth Circuit, evidence of actual confusion is considered “the most important” of
the Pizzeria Uno/Sara Lee factors. George & Co., 575 F.3d at 398. This is because evidence of
actual consumer confusion “is patently the best evidence of likelihood of confusion.” Tools USA,
87 F.3d at 660 (internal quotation and citation omitted); see also Louis Vuitton Malletier S.A. v.
Haute Diggity Dog, LLC, 464 F. Supp. 2d 495, 502 (E.D. Va. 2006), aff’d on other grounds, 507
F.3d 252 (4th Cir. 2007).
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Thus, where consumers are shown to be actually confused about the source of the parties’
goods and services, such “evidence is entitled to substantial weight as it provides the most
compelling evidence of likelihood of confusion.” Lone Star, 43 F.3d at 937. In fact, the Fourth
Circuit Court of Appeals has emphasized that where actual confusion exists, this factor is
“paramount” and characteristically dispositive of the analysis in Plaintiff’s favor. Lyons P’ship,
L.P. v. Morris Costumes, Inc., 243 F.3d 789, 804 (4th Cir. 2001); Sara Lee, 81 F.3d at 467.
Here, indisputable evidence of significant actual consumer confusion is before the Court.
As detailed throughout the Verified Complaint and attached exhibits, Blue Acorn iCi’s business
activities have been increasingly overwhelmed with calls, emails, complaints, and other electronic
communications from consumers who mistakenly believe that Blue Acorn iCi is affiliated with, or
the same company as, Defendants. An astounding 86.9% of Blue Acorn iCi’s website-generated
communications are related to Defendants’ PPP business. In other words, only 13.1% of these
contacts relate to Blue Acorn iCi’s actual, legitimate business activities. Likewise, the number of
incoming calls to Blue Acorn iCi has been dominated by Defendants’ customers. Compl. ¶¶ 85–
95; Ex. F.
In addition, Blue Acorn iCi’s employees have been inundated with constant calls
throughout the day from Defendants’ irate customers who have been unable to reach Defendants
by phone, email, website, or any other manner. Many of these customers are desperate and
continue to call Blue Acorn iCi even after being advised that it has no association whatsoever to
Defendants or their PPP business. Id.
Blue Acorn iCi’s employees have also been individually contacted by Defendants’
customers through their own personal social media platforms, including direct messages sent
through Facebook, Twitter, and Instagram. To date, a total of 134 social media engagements have
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been initiated by Defendants’ customers. Moreover, because Defendants’ infringement and
nationwide marketing has only increased, the volume of actual consumer confusion has truly
overwhelmed Blue Acorn iCi’s business activities and is unsustainable. Id.
In addition to confusion by Defendants’ customers, Blue Acorn iCi has also been contacted
by various agencies, including the Better Business Bureau, the State of Tennessee Consumer
Affairs, and the Commonwealth of Massachusetts, relating to investigations prompted by
consumer complaints and/or potential fraud. As a result, Blue Acorn iCi has been forced to retain
counsel to address the confusion directly with these agencies and explain that it has no connection
whatsoever to Defendants’ PPP business. Due to the serious nature of these investigations, the
impact of apparent confusion about the source of Defendants’ services had reached a critical point.
Compl. ¶¶ 103–11; Exs. F & H. Thus, taking all evidence of actual, substantial, and unmitigated
consumer confusion together, the factor of actual confusion alone supports Plaintiff’s trademark
infringement claims, as well as its need for immediate injunctive relief.
viii.
Quality of the Defendants’ product
As demonstrated by the content of consumers’ concerns attached as Ex. F to the Verified
Complaint, concerns relating to the quality of Defendants’ services are serious in nature.
Consumers are not only dissatisfied with Defendants’ PPP services, they are irate with the lack of
ability to communicate with Defendants through phone, email, or any other manner. In addition, a
recent YouTube post identifies Defendants’ business as a “SCAM” and cautions consumers:
“Don’t give your info!” Other consumers have identified Defendants’ business as a scam and have
raised concerns about the misdirection of federal PPP funds to bank accounts other than the
consumers’ bank accounts. In addition, the Commonwealth of Massachusetts is currently
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investigating potential loan fraud as it relates to incarcerated individuals obtaining PPP loans
through Defendants’ services. Compl. ¶¶ 103–11; Exs. F & H.
Overall, the nature of these complaints and concerns paints a tremendously poor picture of
the quality of Defendants’ products and services, which is mistakenly imputed to Blue Acorn iCi
as a direct result of Defendants’ intentional infringement. As such, this seventh Pizzeria Uno/Sara
Lee factor weighs in favor of Blue Acorn iCi.
ix. Sophistication of consuming public
As to the eighth Pizzeria Uno/Sara Lee factor, Defendants’ services, by their very nature,
are intended to simplify the PPP loan process for businesses and self-employed individuals who
do not have the financial knowledge or time available to complete the PPP process themselves. As
such, this ninth Pizzeria Uno/Sara Lee factor also weighs in favor of Blue Acorn iCi.
In total, the evidence before the Court demonstrates a clear showing of consumer confusion
on all relevant factors, including strong and indisputable evidence of intentional infringement and
actual confusion. George & Co., 575 F.3d at 393; Rosetta Stone, 676 F.3d at 152. As such, Blue
Acorn iCi has demonstrated a likelihood of success on the merits for trademark infringement under
The Lanham Act and North Carolina law, warranting immediate injunctive relief.
B. Copyright Infringement

The elements for stating a copyright infringement claim are straightforward. Plaintiff must
show that (1) it owned a valid copyright; and (2) that Defendants copied original elements of
its copyrighted work. Louis Vuitton, 464 F. Supp. 2d at 506 (citing Trandes Corp. v. Guy F.
Atkinson Co., 996 F.2d 655, 660 (4th Cir. 1993)); see also Stockart.com, LLC v. Caraustar Custom
Packaging Grp., Inc., 240 F.R.D. 195, 197–98 (D. Md. 2006) (citing Hotaling v. Church of Jesus
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Christ of Latter–Day Saints, 118 F.3d 199, 203 (4th Cir.1997) (“There is no question that the
unauthorized distribution of a copyrighted work constitutes copyright infringement.”)).
1. Plaintiff Owns a Valid and Protectable Copyright in the Acorn Logo
Establishing the element of validity consists of three sub-elements: “(1) originality,
(2) copyrightability, and (3) compliance with statutory formalities.” Custom Dynamics, LLC v.
Radiantz LED Lighting, Inc., 535 F. Supp. 2d 542, 551 (E.D.N.C. 2008) (citing 4 Nimmer
on Copyright § 13.01[A])).
Here, the elements of copyrightability and compliance with statutory formalities are easily
shown. First, the Acorn Logo is used by Plaintiff in its advertising, Ex. B, which is “clearly
copyrightable.” Id. Second, Plaintiff has satisfied the statutory requirements by applying to register
its copyright in the Acorn Logo, and following a first refusal, serving notice of to the Copyright
Office of this suit contemporaneously with this action, Ex. C. See 17 U.S.C. § 411(a); 37 C.F.R.
§ 202.5(b)(1).
Third and finally, Blue Acorn iCi’s Acorn Logo is original and demonstrates creative
authorship in its original design. By way of background, the term “original” consists of two
components: independent creation and sufficient creativity. See Feist Publ’ns, Inc. v. Rural Tel.
Serv. Co., 499 U.S. 340, 345 (1991). First, the work must have been independently created by the
author, i.e., not copied from another work. Id. Second, the work must possess sufficient creativity.
Id.; 37 C.F.R. § 202.10(a) (stating “to be acceptable as a pictorial, graphic, or sculptural work, the
work must embody some creative authorship in its delineation or form”).
Here, the requirement of independent authorship is met. As detailed in the Verified
Complaint, Blue Acorn iCi (through its Predecessors) independently created the Acorn Logo,
which has continuously been in public use since its creation. In addition, the Acorn Logo was not
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copied from any other work, but was designed and drawn by Blue Acorn iCi, through its
Predecessors. Compl. ¶¶ 25–25.
Finally, as to the element of creative authorship, the Acorn Logo meets the low threshold
established by the United States Supreme Court in Feist. In fact, “[o]nly a modicum of creativity
is necessary.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. at 345. Thus, while there can be
no copyright where “the creative spark is utterly lacking or so trivial as to be virtually nonexistent,”
“the requisite level of creativity is extremely low; even a slight amount will suffice.” Id. at 345,
349. As such, “the vast majority of works make the grade quite easily, as they possess some
creative spark, ‘no matter how crude, humble or obvious’ it might be.” Id. (quoting 1 M. Nimmer
& D. Nimmer, Copyright § 1.08 [C] [1] (1990)); see also Universal Furniture Int’l, Inc. v.
Collezione Eur. USA, Inc., No. 1:04CV00977, 2007 WL 2712926, at *4 (M.D.N.C. Sept. 14,
2007), aff’d sub nom., 618 F.3d 417 (4th Cir. 2010), as amended (Aug. 24, 2010) (“[C]opyright
protection is available even if the quantum of originality is minimal.”) (internal quotation and
citation omitted).
As described in greater detail in the Request for Reconsideration, Ex. C, the Acorn Logo
easily meets the Feist standard for creative authorship in color, size, angle, shape, and internal use
of negative space, among other unique qualities of design. These elements were designed as a
matter of artistry and are not mere imitations of images available in the public domain.
Furthermore, the Acorn Logo is not a slavish copy of an acorn found in nature, but rather is an
expression of an idea with a sufficient level of creativity to be copyrightable. Id. at 345; Sunset
Lamp Corp. v. Alsy Corp., 698 F. Supp. 1146, 1151 (S.D.N.Y. 1988) (stylized design of
intertwined banana leaves on a lamp base were not mere imitations of nature but were
copyrightable); Folio Impressions, Inc. v. Byer Cal., 937 F.2d 759, 765 (2d Cir. 1991)
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(arrangement of roses contained a sufficient “dash of originality” for copyright protection); Hamil
Am. Inc. v. GFI, 193 F.3d 92, 101 (2d Cir. 1999) (flower design was more than “simply the
depiction of a flower as it would appear in nature,” but was “an artistic rendering that has its own
unique qualities” and was entitled to copyright protection); Home Legend, LLC v. Mannington
Mills, Inc., 784 F.3d 1404, 1410 (11th Cir. 2015) (maple wood flooring designs were not “highly
creative,” but were “creative enough to hurdle the low bar of copyrightable originality”).
In light of these illustrative cases, and following the holding in Feist, Blue Acorn iCi’s
unique, stylized Acorn Logo sufficiently satisfies the “originality” element for establishing a
protectable copyright.
2. Defendants Copied the Acorn Logo
The second element of a copyright infringement claim is plainly met in this case. As shown
in the Verified Complaint and exhibits attached as Ex. G, Defendants made an identical copy of
the Acorn Logo and used that copy in its advertising materials, including the YouTube video
promoting Defendants’ PPP service, which has been viewed over 14 million times.
A side-by-side comparison confirms unquestionable copying of the Acorn Logo.
Defendants’ acorn logo

Plaintiff’s Acorn Logo

Defendants’ copying and use of the Acorn Logo is unauthorized and clearly demonstrates
intentional copyright infringement, warranting injunctive relief, damages, and Defendants’ profits.
17 U.S.C. § 504.

Case 5:21-cv-00251-BO Document 9 Filed 06/10/21 Page 21 of 32

C. Cybersquatting

In addition to their widespread infringing activity, Defendants are also in violation of the
Anticybersquatting Consumer Protection Act (“ACPA”). Under the ACPA, Defendants will be
liable for cybersquatting if, without regard to the goods or services of the parties, one or more of
the Defendants (i) has a bad faith intent to profit from use of the Plaintiff’s mark; and (ii) registers,
traffics in, or uses a domain name that is identical or confusingly similar to that mark. 15 U.S.C. §
1125(d). For purposes of this action, the ACPA framework can be distilled to the following two
elements: (i) that Defendants’ use of “blueacorn.co,” “getblueacorn.com” and other related domain
names constitutes trademark infringement; and (ii) that Defendants have a bad faith intent to profit
from use of the websites using the infringing marks. Eurotech, Inc. v. Cosmos Eur. Travels
Aktiengesellschaft, 213 F. Supp. 2d 612, 623 (E.D. Va. 2002).
These elements are addressed in turn.
1. Defendants’ Websites Constitute Trademark Infringement
As thoroughly discussed above, each of Defendants’ websites infringe upon Plaintiff’s
original, superior rights in and to BLUE ACORN ICI, the “blue acorn” name, and Blue Acorn
Brand. Specifically, the registered domain names for “blueacorn.co” and “getblueacorn.com” each
contain the “blue acorn” name, which constitutes a facial infringement of Plaintiff’s trademark
rights. Moreover, both “blueacorn.co” and “getblueacorn.com” contain the following Infringing
Mark, which Defendants have used liberally to promote their PPP business:

For the reasons addressed in Section I(A) above, which is incorporated here in full,
Defendants’ use and promotion of the Infringing Mark shown above is confusingly similar to
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Plaintiff’s registered trademark and well-established Blue Acorn Brand. As a result, consumers
visiting the websites used by Defendants mistakenly believe that the above mark is attributable to
Plaintiff, resulting is significant, actual consumer confusion. Such circumstances are the essence
of a trademark infringement claim. Accordingly, Plaintiff has demonstrated a likelihood of success
on the merits of its trademark infringement claim, and therefore, the first element of their
cybersquatting claim under the ACPA is likewise met.
2. Defendants Have a Bad Faith Intent
In evaluating the “bad faith” element under the ACPA, courts in the Fourth Circuit look to
the following nine (9) nonexclusive factors: (a) the trademark rights of the defendants in the
offending domain name; (b) whether the domain name contains the legal name of the defendants;
(c) prior use of the domain name in connection with a bona fide business; (d) defendants’ bona
fide noncommercial use of the mark; (e) defendants’ intent to divert customers; (f) defendants’
offer to sell the domain name; (g) defendants’ provision of false registration information; (h)
defendants’ registration of multiple similar domain names; and (i) the strength of Plaintiff’s mark.
Retail Servs., Inc. v. Freebies Pub., 247 F. Supp. 2d 822, 828 (E.D. Va. 2003), aff’d sub
nom. Retail Servs., Inc. v. Freebies Publ’g, 364 F.3d 535 (4th Cir. 2004).
In applying these factors, the Fourth Circuit has explained:
The first four [factors] suggest circumstances that may tend to
indicate an absence of bad-faith intent to profit from the goodwill of
a mark, and the others suggest circumstances that may tend to
indicate that such bad-faith intent exists. However, “[t]here is no
simple formula for evaluating and weighing these factors. For
example, courts do not simply count up which party has more factors
in its favor after the evidence is in.” Harrods Ltd. v. Sixty Internet
Domain Names, 302 F.3d 214, 234 (4th Cir. 2002). In fact, because
use of these listed factors is permissive, “[w]e need not . . . march
through” them all in every case. Virtual Works, Inc. v. Volkswagen
of Am., Inc., 238 F.3d 264, 269 (4th Cir.2001). “The factors
are given to courts as a guide, not as a substitute for careful thinking
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about whether the conduct at issue is motivated by a bad faith intent
to profit.” Lucas Nursery & Landscaping, 359 F.3d at 811.

Lamparello v. Falwell, 420 F.3d 309, 319–20 (4th Cir. 2005).
Here, the majority of ACPA factors strongly demonstrate the element of bad faith. First,
with respect to factor (a) listed above, Defendants do not have any longstanding or registered
trademarks or other intellectual property rights in their domain names “blueacorn.co” and
“getblueacorn.com.” See Citigroup, Inc. v. Chen Bao Shui, 611 F. Supp. 2d 507, 511–12 (E.D. Va.
2009).
Second, addressing factor (b), each of Defendants’ domain names contain the words “blue
acorn” with only small alterations and such names do not refer to or include the legal name of
Defendants prior to March, 2021, when Defendants formed Blue Acorn PPP, LLC. Notably, from
April, 2020 to March, 2021, during the majority of Defendants’ infringing use of Plaintiff’s IP, no
legal entity was established incorporating the “blue acorn” phrase. See Ex. E.
Third, turning to factors (c) and (d), Defendants’ domain names are unquestionably
commercial in nature and no non-commercial use by the Defendants has been identified in the
public domain. Defendants have not engaged in prior use of the disputed domain names
“blueacorn.co” and “getblueacorn.com” in connection with a bona fide offering of any goods or
services prior to their registration of the domain names. To the contrary, the evidence before the
Court shows that Blue Acorn iCi’s domain names “blueacorn.com” (registered January 1, 2004)
and “blueacornici.com” (registered August 23, 2018) were created and maintained long before
Defendants started their PPP business. Thus, at the time Defendants registered their domain names
in 2020 and 2021, Blue Acorn iCi’s prior use of the “blue acorn” name in connection with its e-
commerce business was well-established and distinctive.
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Fourth, concerning factor (h), Defendants created and registered at least two interconnected
domain names and several associated social media sites, which further confirms their bad faith
intent. These indisputable acts demonstrate that Defendants intentionally traded on the existing
brand value of “Blue Acorn” to divert customers to itself for profit. They also show that Defendants
had no reasonable grounds to believe their use of the domain names was fair or otherwise lawful
or that they made any effort to register domain names that were non-infringing.
Fifth, concerning factors (e) and (i) and overarching the overall intent of bad faith,
Defendants’ actual knowledge of Plaintiff’s preexisting and superior intellectual property rights in
the Blue Acorn Brand is apparent. The strength of Blue Acorn iCi’s marks is addressed throughout
this memorandum. Defendants unquestionably had prior knowledge of Blue Acorn iCi’s Acorn
Logo since they made an exact copy of the Acorn Logo and used it liberally to promote their
business. Defendants’ bad faith intent is further confirmed by their creation and use of a “blue
acorn” brand logo that is almost identical to Blue Acorn iCi’s logo, using the same use of blue
coloring, font style, lack of capitalization, font contrast between the “blue” and the “acorn,” and
the same emphasis or bold typeface of the word “acorn.” As such, Defendants cannot plausibly
deny their knowledge of Blue Acorn iCi’s superior trademark and copyright rights at the time
Defendants registered their domains. Citigroup, Inc., 611 F. Supp. 2d at 511–12; Eurotech, Inc.,
213 F. Supp. 2d at 626.
Finally, Defendants’ continued use and promotion of the infringing material after receiving
two cease & desist letters further demonstrates that Defendants’ conduct is done willfully and with
the deliberate intent to trade on the goodwill of Plaintiff’s intellectual property rights. As a result,
the specific ACPA factors, as well as the “big picture” arising from Defendants’ evident disregard
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for Plaintiff’s intellectual property rights strongly supports the element of bad faith. See Citigroup,
Inc., 611 F. Supp. 2d at 511–12; Eurotech, Inc., 213 F. Supp. 2d at 626; 15 U.S.C. § 1125(d).
II.
IRREPARABLE HARM TO PLAINTIFF AND NEED FOR INJUNCTIVE RELIEF

In the Fourth Circuit, where a plaintiff demonstrates the likelihood of confusion—the “key
element” in a trademark infringement action—a presumption of irreparable injury is generally
applied. PGI Polymer, 2015 WL 5920013, at *4 (quoting Scotts Co. v. United Indus. Corp., 315
F.3d 264, 273 (4th Cir. 2002); see also Lone Star, 43 F.3d at 938 (recognizing that irreparable
injury regularly flows from infringement as it causes a substantial likelihood of confusion and loss
of control of business reputation); Rebel Debutante, 799 F. Supp. 2d at 579–80 (upholding
presumption of irreparable injury); Wynn Oil Co. v. Am. Way Serv. Corp., 943 F.2d 595, 608 (6th
Cir. 1991).
The same presumption generally applies for copyright infringement, cybersquatting, and
trademark infringement claims made under North Carolina law. See Scotts Co., 315 F.3d at 273;
Fairbanks Cap. Corp. v. Kenney, 303 F. Supp. 2d 583, 589–90 (D. Md. 2003); Asia Apparel, LLC.
v. Ripswear, Inc., No. 3:02-CV-469, 2004 WL 3259009, at *3 (W.D.N.C. Sept. 17, 2004), aff’d
sub nom., Asia Apparel, LLC v. Cunneen, 118 F. App’x 782 (4th Cir. 2005); Splitfish AG v. Bannco
Corp., 727 F. Supp. 2d 461, 467–68 (E.D. Va. 2010); DMARCIAN, INC., Plaintiff, v. DMARCIAN
EUROPE BV, Defendant., No. 1:21-CV-00067-MR, 2021 WL 2144915, at *25 (W.D.N.C. May
26, 2021) (unpublished); 17 U.S.C.A. § 502; N.C. Gen. Stat. § 66–154(a).
Moreover, injunctive relief is routinely awarded in the Fourth Circuit where willful or
deliberate acts are involved. See, e.g., Scotts Co., 315 F.3d at 273; Meineke Car Care Centers, Inc.
v. Catton, 2010 WL 2572875, at *3 (W.D.N.C. June 24, 2010) (unpublished) (citing S & R Corp.
v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 379 (3rd Cir. 1992)).
Case 5:21-cv-00251-BO Document 9 Filed 06/10/21 Page 26 of 32

Here, Blue Acorn iCi has presented a strong case of likelihood of confusion, including
significant actual confusion in the marketplace involving thousands of calls and other
communications from Defendants’ customers who mistakenly believe Blue Acorn iCi is associated
with Defendants’ PPP business due to Defendants’ widespread infringement and cybersquatting.
Blue Acorn iCi has also presented a strong case of willful and intentional infringement,
which is evidenced by Defendants’ blatant copying of Blue Acorn iCi’s Acorn Logo and “blue
acorn” word logo, as well as Defendants’ total failure and refusal to address their ongoing
infringement and cybersquatting following two cease & desist letters.
Finally, even if Blue Acorn iCi had not presented strong evidence of actual consumer
confusion and intentional infringement, there is overwhelming evidence to demonstrate the harm
to Plaintiff, including the reputational harm to its Blue Acorn Brand.
As outlined extensively in the Verified Complaint, Blue Acorn iCi has been inundated with
incessant calls, emails, and other communications from angry customers of Defendants. Instead of
operating Blue Acorn iCi’s own lawful business, its employees have been forced to expend
significant time and resources attempting to handle the deluge of misdirected customer complaints
relating to Defendants’ PPP business. Blue Acorn iCi has attempted to address these
communications and complaints directly with consumers; however, it cannot continue to do so
given the surge in Defendants’ advertising (and commensurate confusion) and the serious nature
of consumers’ complaints.
Unfortunately, Defendants’ pattern of failing to respond to their own customers and failure
to maintain a monitored email address and/or dedicated customer service line has only exacerbated
the significant business interruption caused by consumer confusion. Additionally, the extremely
poor quality of Defendants’ business and customer service is causing significant reputational harm
Case 5:21-cv-00251-BO Document 9 Filed 06/10/21 Page 27 of 32

to Blue Acorn iCi since confused customers mistakenly associate Blue Acorn iCi with the
extremely poor quality of Defendants’ customer service. Moreover, Blue Acorn iCi has no control
over such qualitative perceptions and cannot protect its long-standing Blue Acorn Brand, which it
has developed since at least 2007. These are the precise circumstances warranting injunctive relief.
See Mon Cheri Bridals, LLC v. P’ships, No. 3:15-CV-00021-FDW-DC, 2015 WL 3509259, at *6
(W.D.N.C. June 4, 2015) (unpublished) (finding that plaintiff has no adequate remedy at law where
defendants continue to operate infringing websites because plaintiff cannot control the quality of
what appears to be its products in the marketplace).
Such immediate, actual reputational harm is heightened by the nature of consumer concerns
relating to potential fraud and/or misdirection of funds, as well as investigations from
governmental agencies. The serious nature of these concerns present an unacceptable threat of
reputational harm to Blue Acorn iCi’s business and the goodwill associated with its Blue Acorn
Brand, which will only continue as long as consumers continue to mistakenly associate Blue Acorn
iCi with Defendants’ PPP business. Such reputational harms alone justify the finding of irreparable
harm. See, e.g., Merrill Lynch Pierce, Fenner and Smith v. Bradley, 765 F.2d 1048, 1055 (4th Cir.
1985) (where the failure to grant preliminary relief creates the possible loss of goodwill, the
irreparable injury prong is satisfied); Arkansas Best Corp. v. Carolina Freight Corp., 60 F. Supp.
2d 517, 520 (W.D.N.C. 1999) (holding that defendants’ infringement presents an undeniable threat
to plaintiffs’ reputation and goodwill, which creates imminent irreparable harm).
Furthermore, this case represents the existence of both forward and reverse infringement.
In other words, not only are consumers confused in believing that Defendants’ services originate
from, or are affiliated with, Blue Acorn iCi’s services, Defendants’ conduct is causing consumers
to believe, mistakenly, that Blue Acorn iCi’s services originate with, or are otherwise connected
Case 5:21-cv-00251-BO Document 9 Filed 06/10/21 Page 28 of 32

to, Defendants’ PPP business. See, e.g., Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d
466, 474 (3d Cir. 1994). The confluence of both forward and reverse infringement increases the
likelihood of continued consumer confusion and compounds the harm to Plaintiff. Id.
Thus, in sum, the profound degree of actual consumer confusion; the likelihood of
continued consumer confusion; the willful and intentional nature of Defendants’ infringing
activity; and the high degree of ongoing harm to Blue Acorn iCi, including its ability to conduct
its own business affairs and serious reputational harm, demonstrates that there is no adequate
remedy at law to address the irreparable damage associated with Defendants’ ongoing
infringement, cybersquatting, and unfair competition. Defendants should be held accountable for
their blatant disregard for Blue Acorn iCi’s rights in any lawful manner allowed by this Court.
III.
PUBLIC INTEREST
Granting injunctive relief to address trademark and copyright infringement and consumer
confusion is well within the public interests. See S & R Corp., 968 F.2d at 379; Bowe Bell & Howell
Co. v. Harris, 145 F. App’x 401, 404 (4th Cir. 2005); PGI Polymer, 2015 WL 5920013, at *4
(“Preventing trademarks from being used deceptively protects the public and serves the public
interest.”); Splitfish, 727 F. Supp. 2d at 469; Universal Furniture Int’l, Inc. v. Collezione Europa
USA, Inc., No. 1:04CV00977, 2005 WL 2427898, at *10 (M.D.N.C. Sept. 30, 2005) (unpublished).
Here, the great degree of actual confusion that has occurred strongly supports the public
interest in preventing further confusion and deception by Defendants in the marketplace. Toolchex,
v. Trainor, 634 F. Supp. 2d 586, 594 (E.D. Va. 2008); Mon Cheri Bridals, 2015 WL 3509259, at
*6 (“[T]he public interest supports the issuance of a permanent injunction . . . to prevent consumers
from being misled by Defendants’ products.”); Meineke Car Care Centers, 2011 WL 4829420, at
Case 5:21-cv-00251-BO Document 9 Filed 06/10/21 Page 29 of 32

*4 (holding that where defendants’ “use of [plaintiff’s] trademark is likely to confuse the public,
it is in the public’s interest for the Court to grant [plaintiff’s] motion for preliminary injunction”).
IV.
BALANCE OF HARDSHIPS
Defendants have continued their infringement and cybersquatting activities willfully,
intentionally, and with actual knowledge of Blue Acorn iCi’s original and exclusive rights to the
“blue acorn” name, Blue Acorn Brand, and Acorn Logo. While Blue Acorn iCi presumes
Defendants may incur costs associated with the need to re-brand their PPP business and address
the volume of consumer confusion at play, such costs could have been avoided entirely if
Defendants had refrained from obvious infringement of Blue Acorn’s long standing Blue Acord
Brand when they started their business in 2020. See Arkansas Best Corp., 60 F. Supp. 2d at 520
(noting that the losses to defendant’s recently incorporated business were di minimus compared to
plaintiff’s long-standing business).
In addition, Defendants’ infringement and cybersquatting activity has continued even after
receiving two cease & desist letters detailing the degree of actual consumer confusion that has
occurred and continues to occur at an alarming rate, resulting in significant reputational loss and
business interruption to Blue Acorn iCi. As such, any harm to Defendants though the grant of
injunctive relief is self-inflicted and far outweighed by the harms to Blue Acorn iCi. See S & R
Corp., 968 F.2d at 379 (noting that the defendant’s difficulties were brought upon himself and that
such “self-inflicted harm is far outweighed by the immeasurable damage done [plaintiff] by the
infringement of its trademark.”); Am. Dairy Queen Corp. v. YS & J Enters., Inc., No. 5:14-CV-
151-BR, 2014 WL 1327017, at *4 (E.D.N.C. Apr. 2, 2014) (unpublished) (noting that defendants’
financial loss and burden through the grant of injunctive relief is “self-inflicted”); IHOP Corp. v.
Langley, No. 5:08-CV-168-BO, 2008 WL 1859340, at *1 (E.D.N.C. Apr. 11, 2008) (unpublished)
Case 5:21-cv-00251-BO Document 9 Filed 06/10/21 Page 30 of 32

(“Any harm resulting from the cessation of Defendant capitalizing on Plaintiffs’ success is not
harm recognized under the law.”).
CONCLUSION
For the reasons set forth above, Blue Acorn iCi requests that the Court grant its Motion for
Temporary Restraining Order and Preliminary Injunctive Relief to preclude Defendants from
engaging in ongoing trademark infringement, copyright infringement, cybersquatting, unfair
competition, and deceptive trade practices, and to remedy ongoing and future consumer confusion.
RESPECTFULLY SUBMITTED this 10th day of June, 2021.

/s/ Beth A. Stanfield

Beth A. Stanfield (N.C. State Bar No. 36296)
Thomas Babel (N.C. State Bar No. 35004)
Laura K. Greene (N.C. State Bar No. 47771)
FORREST FIRM, P.C.
105 Grace Street, Suite 101
Wilmington, NC 28401
T/F: (336) 275-6344
Beth.stanfield@forrestfirm.com
thomas.babel@forrestfirm.com
katie.greene@forrestfirm.com

Attorneys for Plaintiff

Case 5:21-cv-00251-BO Document 9 Filed 06/10/21 Page 31 of 32

CERTIFICATE OF SERVICE

The undersigned does hereby certify that a copy of the foregoing MEMORANDUM IN
SUPPORT OF PLAINTIFF’S MOTION FOR TEMPORARY RESTRAINING ORDER
AND PRELIMINARY INJUNCTIVE RELIEF has been filed with the Clerk for the United
States District Court, Eastern District of North Carolina, using the electronic filing system of the
Court and that the foregoing was served upon the following persons by depositing a copy of the
same in the United States Mail in an envelope, postage prepaid, addressed as follow:
 By placing a copy, contained in a first-class, postage paid wrapper, into a depository
under the exclusive custody of the United States Postage Service, addressed to the
parties as indicated below:

Fin Cap, Inc. d/b/a "Blueacorn.co"
c/o Legalinc Corporate Services Inc.
5830 E 2nd St Ste 8
Casper, WY 82609
Blue Oak Forest, LLC
c/o Delaware Registered Agents &
Incorporators, LLC
19 Kris Court
Newark, DE 19702

Blue Acorn PPP, LLC
c/o Radix Law, PLC, Registered Agent
Jeff Meyerson
15205 N. Kierland Blvd, Ste 200,
Scottsdale, AZ 85254

Michael S. Cota
2138 S. Valle Verde Cir
Mesa, AZ 85209
Stephanie Hockridge Reis
4747 N. Scottsdale Road, Unit C
Scottsdale, AZ 85251

Nathan Reis
4747 N. Scottsdale Road, Unit C
Scottsdale, AZ 85251
James M. Flores
7833 E. Harvard Street
Scottsdale, AZ 85257

This the 10th day of June, 2021.

/s/ Beth A. Stanfield

Beth A Stanfield

Thomas Babel

Laura K. Greene

Attorneys for Plaintiff
Case 5:21-cv-00251-BO Document 9 Filed 06/10/21 Page 32 of 32

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Memorandum in Support regarding 8 Motion for Temporary Restraining Order — Beringer Commerce, Inc. v. FIN Cap, Inc. (Dkt. 9, E.D.N.C. No. 5:21-cv-00251)

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