Mfib, LLC v. Ibca, LLC

── Mfib, LLC v. Ibca, LLC ── Court: Court of Appeals for the Ninth Circuit Date: June 05, 2026 Category: General NOT FOR PUBLICATION FILED UNITED STATES COURT OF APPEALS JUN 5 2026 MOLLY C. DWYER, CLERK U.S. COURT OF APPEALS FOR THE NINTH CIRCUIT MFIB, LLC, a Delaware limited liability No. 25-6589 company doing business as ICON National, D.C. No. 2:25-cv-02517-SPL Plaintiff - Appellant, v. MEMORANDUM* IBCA, LLC, a California limited liability company doing business as Icon Builders; ALLEN W. SANDS, an individual residing in Arizona, Defendants - Appellees. Appeal from the United States District Court for the District of Arizona Steven Paul Logan, District Judge, Presiding Argued and Submitted May 19, 2026 Phoenix, Arizona Before: GOULD, M. SMITH, and HURWITZ, Circuit Judges. MFIB, LLC appeals the denial of its motion for a preliminary injunction barring IBCA, LLC and its owner and founder, Allen Sands (collectively, “Defendants”), from using the trademarks “ICON,” “ICON Builders,” and “THE * This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. ORIGINAL ICON BUILDERS” (“the ICON Marks”). We have jurisdiction under 28 U.S.C. § 1292(a)(1). We review the district court’s order for abuse of discretion, Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1123 (9th Cir. 2014), and affirm. 1. Sands began using the ICON Marks in connection with general contracting services in 1985 and has used the mark in at least five affordable housing businesses in “various states,” including California, Arizona, New Mexico, and Texas. Sands had between 50 and 100 percent ownership and served as the president with “final say” in each of these businesses. In 2017, one of Sands’s business, Icon Commercial Contractors d/b/a ICON Builders (“ICC”), merged with MFRG Construction to form MFIB. Sands agreed not to compete with MFIB in affordable housing renovation projects, but the merger agreement permitted ICC to continue to use the ICON Marks in connection with other projects, some of which were still ongoing as of September 2025. MFIB worked on projects in the affordable housing business using the trademarks “MFRG ICON” and “ICON National.” In 2022, MFRG bought out ICC’s interest in MFIB, and Sands’s non- competition agreement was terminated. In November 2023, MFIB registered the MFRG ICON and ICON National marks. Sands then dissolved ICC and founded IBCA, LLC, headquartered in Arizona. By 2024, IBCA had undertaken affordable housing projects in California and Texas using the ICON Marks. In 2025, MFIB 2 25-6589 sued for trademark infringement and moved for a preliminary injunction to bar Defendants’ use of the ICON Marks. 2. A preliminary injunction is an “extraordinary remedy that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 22 (2008). The movant must show, among other things, a likelihood of success on the merits. Id. at 20. To succeed on an infringement claim, MFIB must have senior rights to the disputed trademarks. See Pom Wonderful, 775 F.3d at 1124. But if the Defendants engaged in continuous use of the ICON Marks before MFIB registered its marks, their interest in the ICON Marks is senior. Casual Corner Assocs., Inc. v. Casual Stores of Nev., Inc., 493 F.2d 709, 711-12 (9th Cir. 1974); 15 U.S.C. §§ 1115(a), (b)(5).2 MFIB does not dispute that S