Order regarding 8 Motion for Temporary Restraining Order — Beringer Commerce, Inc. v. FIN Cap, Inc. (Dkt. 14, E.D.N.C. No. 5:21-cv-00251)

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U.S. District Court for the Eastern District of North Carolina · No. 5:21-cv-00251-BO · Doc. 14 · 2021-06-11 · Docket on CourtListener

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IN THE UNITED STATES DISTRICT COURT 
FOR THE EASTERN DISTRICT OF NORTH CAROLINA 
WESTERN DIVISION 
No. 5:21-CV-251-BO 
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; MICHAELS. COTA; 
) 
JAMES FLORES; STEPHANIE 
) 
HOCKRIDGE REIS; and NATHAN REIS, ) 
Defendants. 
) 
) 
ORDER 
This cause comes before the Court on plaintiffs motion for a temporary restraining order 
and preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure. 
Plaintiff commenced this action on June 10, 2021 , by filing a verified complaint alleging 
claims for trademark infringement, copyright infringement, cybersquatting, and unfair and 
deceptive trade practices. Plaintiff does business as Blue Acorn iCi and owns the registered 
trademark BLUE ACORN ICI, copyright of the "blue acorn" logo and artwork, and all associated 
intellectual property rights relating to plaintiffs "blue acorn" brand. Plaintiff alleges that 
defendants are operating an infringing "blue acorn" business by using unregistered logos, marks, 
and images that are nearly identical or confusingly similar to plaintiffs "blue acorn" intellectual 
property. Plaintiff further alleges that in March 2021 defendants flooded the market with their 
infringing "blue acorn" mark in similar channels of commerce as plaintiffs goods and services 
which has caused significant actual consumer confusion. Plaintiff alleges that it has recently been 
Case 5:21-cv-00251-BO     Document 14     Filed 06/11/21     Page 1 of 3

inundated with complaints related to defendants' business based upon consumers' mistaken belief 
that plaintiff is or is associated with defendants' business. Plaintiff contends that due to the nature 
of the complaints and defendants' failure to provide any customer service or method by which to 
address its customer complaints defendants are damaging the goodwill and value associated with 
plaintiffs "blue acorn" brand. 
Plaintiff, by its motion and verified complaint, and the exhibits attached thereto, has 
demonstrated that temporary injunctive relief is warranted. Specifically, plaintiff has sufficiently 
demonstrated on the basis of its pleadings that it will suffer irreparable injury in the form of actual 
consumer confusion, the likelihood of continued consumer confusion, plaintiffs inability to 
conduct its own business affairs due to the volume of defendants' customer complaints directed to 
plaintiff, and serious reputational harm such that temporary emergency relief is warranted. 
Plaintiff has further demonstrated that ex parte relief is warranted. It has demonstrated that 
immediate and irreparable injury, loss, or damage will result before the defendants can be heard in 
opposition in light of the ongoing damage to plaintiffs reputation caused by the actual confusion 
experienced by defendants' consumers. Plaintiff has also shown that notice should not be required 
as plaintiff has recently sent two cease and desist letters to defendants who have continued in their 
alleged unauthorized use of infringing logos, marks, and images. Although counsel for one 
defendant contacted plaintiffs counsel following receipt of the second cease and desist letter, 
plaintiff alleges that "defendants were unwilling to cease infringing activity and offered no 
alternative solution to address the ongoing confusion and damages to plaintiff." [DE 1 ,r 122]. 
Accordingly, it is hereby ORDERED that defendants shall: 
1. Cease, desist, and refrain from all use of the words "acorn," "blue acorn," or "blueacorn" 
or any of their formatives in any manner and on any print or electronic platform of any 
kind, including but not limited to any website, social media platforms, or any online or 
print advertising or marketing materials; 
2 
Case 5:21-cv-00251-BO     Document 14     Filed 06/11/21     Page 2 of 3

2. Cease, desist, and refrain from all use of any acorn images, including a copy of the Acom 
Logo, in any manner, including but not limited to any electronic platform, any advertising, 
and on any public forum; 
3. Place a prominent disclaimer on the landing or home page for all websites associated 
with defendants' business explaining that the website and services at issue are not affiliated 
with, sponsored by, or otherwise connected to Blue Acom iCi; 
4. Set up an actively monitored email address and dedicated customer service line for 
customer inquiries and maintain sufficient trained personnel to monitor and respond to such 
inquiries on a timely basis; 
5. Provide detailed information that is prominently displayed on all websites associated 
with defendants' business, explaining how, where, and when to contact defendants by 
phone and by email. 
This temporary restraining order shall remain in effect for fourteen days from the date of 
entry of this order. A hearing on plaintiffs request for a preliminary injunction is set for 
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, North Carolina. 
Plaintiff is hereby ORDERED to provide a security in the amount of $1 ,000.00 to pay the 
costs and damages of any party found to have been wrongfully enjoined or restrained. 
Plaintiff, through its counsel, is further ORDERED to serve a copy of this order on all 
defendants, including their respective counsel if known, and file proof of service of the same prior 
to the hearing on the motion for preliminary injunction. 
I I 
,,, } ~u, 
SO ORDERED, this _L/_ day of June, 2021 , at _~-""L.C,_v-----'--v __ p.m. 
~M,d~ 
TENCEW.B0YLE 
UNITED STATES DISTRICT JUDGE 
3 
Case 5:21-cv-00251-BO     Document 14     Filed 06/11/21     Page 3 of 3

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