                                                                           FILED
                           NOT FOR PUBLICATION
                                                                            JUN 26 2017
                    UNITED STATES COURT OF APPEALS                      MOLLY C. DWYER, CLERK
                                                                         U.S. COURT OF APPEALS


                           FOR THE NINTH CIRCUIT

GI SPORTZ INC. and GI SPORTZ                     No. 16-56882
DIRECT LLC,
                                                 D.C. No.
              Plaintiffs-Appellants,             8:16-cv-002038-AG-KES

 v.
                                                 MEMORANDUM*
APX GEAR LLC,

              Defendant-Appellee.


                   Appeal from the United States District Court
                      for the Central District of California
                   Andrew J. Guilford, District Judge, Presiding

                        Argued and Submitted June 6, 2017
                               Pasadena, California

Before: GRABER, SACK,** and MURGUIA, Circuit Judges.




      *
        This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
      **
       The Honorable Robert D. Sack, United States Circuit Judge for the Court
of Appeals for the Second Circuit, sitting by designation.
      This interlocutory appeal arises from the denial of GI Sportz Inc. and GI

Sportz Direct LLC’s (collectively, “GI Sportz”) motion for preliminary injunctive

relief for its pending trade-dress-infringement claim against APX Gear LLC. In

denying the motion, the district court correctly recited the four factors set forth in

Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7, 20 (2008) (“A

plaintiff seeking a preliminary injunction must establish [1] that he is likely to

succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence

of preliminary relief, [3] that the balance of the equities tips in his favor, and [4]

that an injunction is in the public interest.”). But the court’s analysis began and

ended with the first factor; it concluded that GI Sportz had not established a

likelihood of success with respect to an essential element of a trade-dress-

infringement claim: that “its claimed dress serves a source-identifying role either

because it is inherently distinctive or has acquired secondary meaning.” Clicks

Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252, 1258 (9th Cir. 2001) (footnote

omitted). Our review is “for abuse of discretion,” which occurs when “a district

court . . . bases its decision on an erroneous legal standard or on clearly erroneous

findings of fact.” Am. Trucking Ass’ns v. City of Los Angeles, 559 F.3d 1046,

1052 (9th Cir. 2009) (internal quotation marks omitted).




                                            2
      1. The district court erred in concluding that GI Sportz failed to establish

that its registered trade dress serves a source-identifying role. GI Sportz’s

registered trade dress for its “Marballizer” paintballs has attained incontestable

status pursuant to 15 U.S.C. § 1065.1 That status “serves as conclusive proof that

the mark has secondary meaning” and, as such, serves a source-identifying role.

Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1142 n.3 (9th Cir. 2002) (citing

Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 205 (1985)); see also

Rebecca Tushnet, Registering Disagreement: Registration in Modern American

Trademark Law, 130 HARV. L. REV. 867, 903 n.160 (2017) (“The key benefit of

incontestability is that an incontestable mark can’t be challenged on the ground that

it’s merely descriptive and lacks secondary meaning.”).

      2. The district court’s error, however, does not necessarily entitle GI Sportz

to preliminary injunctive relief, “an extraordinary and drastic remedy.” Munaf v.

Geren, 553 U.S. 674, 689 (2008) (internal quotation marks omitted). It must still

establish all four Winter factors. This disposition addresses only one aspect of GI



      1
        After five years of continuous use, the Lanham Act allows the owner of a
registered mark to attain incontestable status by filing an affidavit affirming that
certain statutory requirements have been met. 15 U.S.C. § 1065. A registered
trademark with incontestable status is treated as “conclusive evidence . . . of the
registrant’s exclusive right to use the registered trademark in commerce,” subject
to certain enumerated defenses. See id. § 1115(b).
                                           3
Sportz’s likelihood of success on the merits. We leave all other aspects of the first

Winter factor, and the remaining three Winter factors, for the district court’s

consideration on remand.

      VACATED AND REMANDED. Costs on appeal awarded to Plaintiffs-

Appellants.




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