PRELIMINARY INJUNCTION ORDER Plaintiff Shenzhen Miracle Laptop Bags Co., Ltd. (“Shenzhen”) seeks entry of a preliminary injunction against Defendant Michael Castillo pursuant to Federal Rule of Civil Procedure 65. The Court has reviewed Plaintiff’s Complaint, ECF No. 1; the Motion for a Temporary Restraining Order, ECF No. 10; the Declaration of Yun Xu, ECF No. 11; Defendant’s Reply in Opposition, ECF No. 21; the arguments made by the parties at the January 11, 2023, Show Cause Hearing, ECF Minute Entry, January 11, 2023; the Parties’ supplemental letters, ECF Nos. 22-28; and all pleadings and papers previously filed herein. For the reasons stated herein, the Court grants in part and denies in part Plaintiff’s motion for entry of a preliminary injunction against Defendant. BACKGROUND Plaintiff Shenzhen Miracle Laptop Bags Co., Ltd. (“Shenzhen”) is a Chinese company, founded in 2005, which designs, produces, and sells laptop bags and phone accessories, mainly for export. ECF No. 1 2. Defendant Michael Castillo is the individual who applied for and was granted the “MIRACASE” trademark. Id. 3. In 2009, Plaintiff created the trademark “MIRACASE” (“Miracle Phone Case”) in 2009 and purchased the domain name “miracase.com.” ECF No. 1 8. Plaintiff applied for its “MIRACASE” mark on September 13, 2013. The mark (“Plaintiff’s Mark”) was successfully registered on September 2, 2014. Id. 15; see also ECF No 1-1 (Exhibit A — Plaintiff’s Trademark). In 2017, Plaintiff opened its Amazon.com, Inc. (“Amazon”) store selling protective phone cases and later mobile phone holders. ECF No. 1 13. Plaintiff needed to file its Section 71 declaration with the United States Patent and Trademark Office (“USPTO”) before September 2, 2020, id. 16, which it did, id. 17. However, on September 28, 2020, the USPTO identified a discrepancy in Plaintiff’s Section 71 declaration, id. 16, and asked for clarification, id. 19. Plaintiff’s attorney did not understand that a response was required, and thus did not file a response. Id. 20. As a result, on April 6, 2021, the USPTO notified the Plaintiff that its trademark registration was canceled due to failure to provide a proper Section 71 declaration. Id. 21. However, this cancellation was temporary, and Plaintiff’s Mark was reinstated on February 25, 2022. Id. 22. On July 26, 2021, Defendant applied for a MIRACASE trademark. ECF No. 18-1 6 (Defendant’s Declaration). The mark (“Defendant’s Mark”) was published on May 10, 2022, and approved on July 26, 2022. Id.
7-9. Plaintiff alleges that Defendant’s Mark application was fraudulent because, inter alia, Defendant: (i) submitted Plaintiff’s product to the USPTO when Defendant applied for his trademark, and (ii) claimed Plaintiff’s Amazon page was Defendant’s Amazon page. ECF No. 1
