Veronica's Auto Insurance Services Inc v. Veronica's Services Inc, No. 5:2013cv01327 - Document 91 (C.D. Cal. 2014)
Court Description: ORDER DENYING DEFENDANT AND COUNTERCLAIMANT VERONICAS SERVICES, INC.S MOTION FOR PARTIAL SUMMARY JUDGMENT AND DENYING PLAINTIFFS AND COUNTERDEFENDANTS VERONICAS AUTO INSURANCE SERVICES, INC. AND VERONICA GALLARDOS MOTION FOR PARTIAL SUMMARY JUDGMENT 40 , 68 by Judge Dean D. Pregerson. (lc). Modified on 12/15/2014 .(lc).
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Veronica&#039;s Auto Insurance Services Inc v. Veronica&#039;s Services Inc Doc. 91 1 2 O 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA 10 11 12 VERONICA'S AUTO INSURANCE SERVICES, INC., a California Corporation , 13 14 15 Plaintiff, v. VERONICA'S SERVICES, INC., a California corporation, 16 Defendant. 17 ___________________________ ) ) ) ) ) ) ) ) ) ) ) ) ) ) Case No. EDCV 13-01327 DDP (DTBx) ORDER DENYING DEFENDANT AND COUNTERCLAIMANT VERONICA’S SERVICES, INC.’S MOTION FOR PARTIAL SUMMARY JUDGMENT AND DENYING PLAINTIFFS AND COUNTERDEFENDANTS VERONICA’S AUTO INSURANCE SERVICES, INC. AND VERONICA GALLARDO’S MOTION FOR PARTIAL SUMMARY JUDGMENT [DKT. NOS. 40, 68] 18 19 Presently before the Court are cross-motions for partial 20 summary judgment (the “Motions”). (Docket Nos. 40, 68.) For the 21 reasons stated in this order, the Motions are DENIED. 22 I. Background 23 This is a trademark action between two auto insurance 24 businesses located in Southern California. Plaintiff and 25 counterdefendant Veronica’s Auto Insurance Services, Inc. (“VAIS”) 26 is a Southern California business with multiple branches. Veronica 27 Gallardo obtained a personal license to transact insurance in 28 California on July 26, 2001. (Gallardo Decl., Docket No. 68-2, ¶ Dockets.Justia.com 1 5.) On or about April 2, 2007, Ms. Gallardo incorporated a business 2 in California called “Veronica’s Auto Insurance Services, Inc.” 3 (Id. ¶ 7 & Exh. 1.) On November 25, 2008, VAIS received a license 4 to transact insurance in California from the California Department 5 of Insurance. (Id. ¶ 9 & Exh. 2.) Though VAIS originally pleaded a 6 first use date of 2007 for the mark, it appears that the evidence 7 shows that VAIS did not begin using the mark in commerce until 8 September 2010, when VAIS began providing auto registration 9 services under the names “Veronica’s Registration Services” at 10 Adriana’s Insurance offices. (Id. ¶ 11.) In June 2011, VAIS opened 11 its first office in Los Angeles County using the name “Veronica’s 12 Auto Insurance Services” and began using the mark to sell auto 13 insurance. (Id. ¶ 11.) 14 Veronica Gallardo is the CEO and chief spokesperson for VAIS. 15 (Id. ¶ 10.) VAIS currently has 13 locations throughout Southern 16 California. (Id. ¶ 20.) On May 12, 2012, VAIS filed a service mark 17 application with the U.S. Patent and Trademark Office (“USPTO”). 18 (Id. ¶ 13.) On February 12, 2013, the USPTO issued a federal 19 registration to VAIS for its “Veronica’s Insurance” mark and design 20 for “insurance consulting in the field of automobile insurance.” 21 (Id. ¶ 14 & Exh. 4.) 22 Defendant and counterclaimant Veronica’s Services, Inc. 23 (“VSI”) is a small, family-run business. In 1990, husband and wife 24 Jaime and Martha Silva began providing income tax preparation and 25 notary public services at an office location in Pacoima, California 26 as a sole proprietorship. (Jaime Silva Decl., Docket No. 41, ¶ 3.) 27 In 1994, they erected a sign displaying the “Veronica’s Services” 28 mark on the roof of their business; though some changes have been 2 1 made to the appearance, the sign remains today. (Id. ¶¶ 5, 11.) In 2 1998, the Silvas expanded their business and began providing auto 3 insurance services under the same Veronica’s Services mark. (Id. ¶ 4 6 & Exh. B.) Jaime Silva was responsible for insurance sales and 5 was individually licensed by the California Department of Insurance 6 to sell auto insurance. (Id. ¶ 7 & Exh. C.) While operating as a 7 sole proprietorship using the Veronica’s Services mark, the Silvas 8 sold thousands of auto insurance policies to customers in Southern 9 California. (Id. ¶ 9.) 10 On June 6, 2008, the Silvas incorporated their business as 11 “Veronica’s Services, Inc.” (Id. ¶ 14 & Exh. G.) On June 27, 2008, 12 the Silvas transferred all of the assets of the sole proprietorship 13 to VSI. (Id. ¶ 15 & Exh. H.) The Silvas argue that part of what was 14 transferred to VSI were the common law trademark rights that the 15 Silvas had acquired through use of the Veronica’s Services mark in 16 commerce since 1990, though VAIS disputes that any such rights had 17 been acquired by the Silvas. VSI applied for an insurance broker’s 18 license with the California DOI, which was granted on March 10, 19 2009 and has been renewed through 2015. (Id. ¶ 16 & Exh. I.) VAIS 20 argues that VSI was required by the DOI to use only the name 21 “Veronica’s Services Insurance Agency” in its entirety to refer to 22 its business. (Ayala Decl., Docket No. 50-2, Exhs. 3 & 4.) Since 23 incorporation, VSI has continued to advertise its services using 24 the Veronica’s Services mark. (Id. ¶ 19.) 25 VAIS filed this action against VSI, alleging causes of action 26 for trademark infringement and false designation of origin under 27 the Lanham Act and state law claims for unfair competition and 28 trademark infringement. (See Complaint, Docket No. 1.) VSI filed 3 1 counterclaims against VAIS for declaratory relief, federal unfair 2 competition, state law trademark infringement and unfair 3 competition, and cancellation of federal trademark registration. 4 (Docket No. 8.) VSI also asserts claims against Veronica Gallardo 5 and Adriana’s Insurance, Inc. (Id.) VSI now moves for partial 6 summary judgment as to all of VAIS’s claims against VSI based on 7 VSI’s prior use of the mark and as to most of VSI’s claims against 8 VAIS. (Docket No. 40-1, p.7.) VAIS moves for summary judgment as to 9 VSI’s counterclaims. (Docket No. 68.) 10 11 II. Legal Standard Summary judgment is appropriate where the pleadings, 12 depositions, answers to interrogatories, and admissions on file, 13 together with the affidavits, if any, show “that there is no 14 genuine dispute as to any material fact and the movant is entitled 15 to judgment as a matter of law.” Fed. R. Civ. P. 56(a). A party 16 seeking summary judgment bears the initial burden of informing the 17 court of the basis for its motion and of identifying those portions 18 of the pleadings and discovery responses that demonstrate the 19 absence of a genuine issue of material fact. See Celotex Corp. v. 20 Catrett, 477 U.S. 317, 323 (1986). All reasonable inferences from 21 the evidence must be drawn in favor of the nonmoving party. See 22 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986). If the 23 moving party does not bear the burden of proof at trial, it is 24 entitled to summary judgment if it can demonstrate that “there is 25 an absence of evidence to support the nonmoving party’s case.” 26 Celotex, 477 U.S. at 323. 27 28 Once the moving party meets its burden, the burden shifts to the nonmoving party opposing the motion, who must “set forth 4 1 specific facts showing that there is a genuine issue for trial.” 2 Anderson, 477 U.S. at 256. Summary judgment is warranted if a party 3 “fails to make a showing sufficient to establish the existence of 4 an element essential to that party’s case, and on which that party 5 will bear the burden of proof at trial.” Celotex, 477 U.S. at 322. 6 A genuine issue exists if “the evidence is such that a reasonable 7 jury could return a verdict for the nonmoving party,” and material 8 facts are those “that might affect the outcome of the suit under 9 the governing law.” Anderson, 477 U.S. at 248. There is no genuine 10 issue of fact “[w]here the record taken as a whole could not lead a 11 rational trier of fact to find for the non-moving party.” 12 Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 13 587 (1986). 14 It is not the court’s task “to scour the record in search of a 15 genuine issue of triable fact.” Keenan v. Allan, 91 F.3d 1275, 1278 16 (9th Cir. 1996). Counsel has an obligation to lay out their support 17 clearly. Carmen v. San Francisco Sch. Dist., 237 F.3d 1026, 1031 18 (9th Cir. 2001). The court “need not examine the entire file for 19 evidence establishing a genuine issue of fact, where the evidence 20 is not set forth in the opposition papers with adequate references 21 so that it could conveniently be found.” Id. 22 III. Discussion 23 There are two primary issues raised by the parties in the 24 Motions. First, though VSI used the “Veronica’s Services” mark to 25 sell insurance services before VAIS did, VSI does not have any 26 protectable rights in the mark unless VSI can establish that the 27 mark acquired secondary meaning prior to VAIS’s use of the mark. 28 Second, VAIS argues that even if VSI could demonstrate that its 5 1 mark acquired secondary meaning, VSI does not have trademark rights 2 in the mark because VSI’s use of the mark was in violation of 3 various insurance regulations. 4 In order to prevail on a Lanham Act claim for trademark 5 infringement, a party must prove two basic elements: (1) the party 6 owns a valid, protectable trademark, and (2) the other party’s use 7 of the mark is likely to cause consumer confusion. S. Cal. Darts 8 Ass’n v. Zaffina, 762 F.3d 921, 929 (9th Cir. 2014); Applied Info. 9 Sciences Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th Cir. 2007). 10 “The first of these basic elements is comprised of two sub-parts: 11 the mark’s protectability and the plaintiff’s ownership of the 12 mark.” S. Cal. Darts, 762 F.3d at 929. 13 A. Protectability of VSI’s Mark 14 Whether a mark is protectable depends upon whether the mark is 15 distinctive. Zobmondo Enm’t, LLC v. Falls Media, LLC, 602 F.3d 16 1108, 1113 (9th Cir. 2010). Suggestive, arbitrary, or fanciful 17 marks are considered “inherently distinctive” and are automatically 18 entitled to federal trademark protection. Id.; see also Two Pesos, 19 Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). On the other 20 hand, merely descriptive marks are not automatically deemed 21 distinctive, but may become protectable if the mark acquires 22 secondary meaning. Zobmondo, 602 F.3d at 1113; Two Pesos, 505 U.S. 23 at 769. “Which category a mark belong in is a question of fact.” 24 Zobmondo, 602 F.3d at 1113; see also Lahoti v. VeriCheck, Inc., 586 25 F.3d 1190, 1195-96 (9th Cir. 2009). 26 1. VAIS’s “Inherently Distinctive” Allegation 27 First, VSI attempts to rely on VAIS’s allegation in its 28 complaint, where VAIS claims that the designations “Veronica’s 6 1 Insurance” and “Veronica’s Auto Insurance Services” are inherently 2 distinctive, to argue that VAIS has admitted that the marks at 3 issue in this case are protectable. (See Complaint, Docket No. 1, ¶ 4 8.) However, that same paragraph of the pleadings goes on to say 5 that the marks are “recognized by the relevant consuming public as 6 plaintiff’s marks,” which is a fact that would go toward 7 establishing secondary meaning and tend to contradict the assertion 8 that the mark is “inherently distinctive,” since secondary meaning 9 need not be established for such marks. 10 Further, the fact that VAIS was granted a federal registration 11 for the mark demonstrates only that VAIS may have acquired 12 secondary meaning in the mark, a determination that says nothing 13 about whether the mark previously had acquired secondary meaning as 14 to VSI. Secondary meaning means that the mark denotes a particular 15 source of the goods; the fact that a mark that has acquired 16 secondary meaning as to one source says nothing about whether that 17 same mark might have, for a different source at a different time, 18 been sufficiently tied to that source to establish secondary 19 meaning there. Therefore, the Court finds that in order for VSI to 20 prevail on any of its affirmative claims, it must demonstrate that 21 the mark acquired secondary meaning in the relevant market, where 22 such secondary meaning denoted VSI as the source of the goods or 23 services bearing the mark. 24 25 2. VSI’s Evidence of Secondary Meaning Personal names are generally entitled only to limited 26 protection and are descriptive marks. See Paul Frank Indus., Inc. 27 v. Sunich, 502 F.Supp.2d 1094, 1097-98 (C.D. Cal. 2007). In order 28 to acquire trademark protection in a personal name, an individual 7 1 must either (1) “obtain a federal trademark registration” or (2) 2 “prove that through usage, a personal name has acquired secondary 3 meaning.” Miller v. Glenn Miller Productions, Inc., 454 F.3d 975, 4 991 (9th Cir. 2006); see also E.J. Gallo Winery v. Gallo Cattle 5 Co., 967 F.2d 1280, 1291 (9th Cir. 1992). 6 “To acquire ownership of a trademark it is not enough to have 7 invented the mark first or even to have registered it first; the 8 party claiming ownership must have been the first to actually use 9 the mark in the sale of goods or services.” Sengoku Works Ltd. v. 10 RMC Intern., Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). However, 11 simple use in commerce is not enough where a mark is merely 12 descriptive. See McCarthy on Trademarks and Unfair Competition § 13 16:34 (4th ed. 2014). In order to have a valid trademark claim in a 14 descriptive mark, a plaintiff must establish that the mark acquired 15 secondary meaning. “Secondary meaning must be shown to have existed 16 prior to the date on which the accused infringer commenced using a 17 confusingly similar trade dress.” Tone Bros., Inc. v. Sysco Corp., 18 28 F.3d 1192, 1201 (Fed. Cir. 1994) (citing Co-Rect Prods., Inc. v. 19 Marvy! Adver. Photography, Inc., 780 F.2d 1324, 1330 (8th Cir. 20 1985)). 21 Here, under the undisputed facts, it is clear that VSI used 22 the mark “Veronica’s Services” in the sale of auto insurance before 23 VAIS began using the mark for the same purpose. Though the dates 24 are somewhat confusing, VAIS did not begin using the mark in 25 commerce to sell auto insurance until June 2011, by which time the 26 Silvas had used the mark for other services beginning in 1990, for 27 auto insurance services as a sole proprietorship in 1998, 28 incorporated and transferred assets to VSI in 2008, and received a 8 1 license from the California DOI for VSI to sell auto insurance in 2 2009. The real question, then, is whether VSI can show that, prior 3 to June 2011, there existed “a mental recognition in buyers’ and 4 potential buyers’ minds that products connected with the [mark] are 5 associated with the same source.” Levi Strauss & Co. v. Blue Bell, 6 Inc., 632 F.2d 817, 820 (9th Cir. 1980). Some factors that courts 7 consider when determining whether a mark has acquired secondary 8 meaning are: (1) whether actual purchasers of the product bearing 9 the mark associate the mark with the producer of the product; (2) 10 the degree and manner of advertising of the mark; (3) the length 11 and manner of use of the mark; and (4) whether the use of the mark 12 has been exclusive. Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 13 1352, 1358 (9th Cir. 1985). 14 VAIS argues that VSI’s evidence does not support the 15 conclusion that VSI’s mark acquired secondary meaning at any time, 16 let alone prior to VAIS beginning to use the mark. VAIS argues that 17 the geographic distribution of VSI’s customers, the fact that many 18 of VSI’s auto insurance customers were repeat customers who were 19 already familiar with VSI because they had used the business for 20 other services, the small amount spent on advertising, and the 21 small amount of sales indicate that VSI’s mark never acquired 22 secondary meaning. In response, VSI provides some evidence of 23 consumer confusion. Further, VSI provides evidence that it has some 24 customers not just in the immediate vicinity of its Pacoima 25 location, but also throughout Los Angeles County and in surrounding 26 counties, such that customers do not patronize VSI solely because 27 of geographic convenience. Further, VSI argues that it could 28 establish secondary meaning in a relatively limited geographic area 9 1 near its business because thousands of local motorists pass by 2 their store and sign on Van Nuys Boulevard each day, thereby 3 associating the mark on the sign with the services offered; this 4 would mean that VSI’s rights in the mark are limited to a small 5 area rather than that VSI owns no rights in the mark. 6 VSI’s evidence of secondary meaning is not particularly strong 7 and is subject to multiple interpretations as to its meaning. For 8 example, the fact that most auto insurance purchasers live in a 9 small geographic area could mean either that the mark has strong 10 presence in that small area through advertising and mark 11 recognition targeted at area resident or, alternatively, that 12 customers visited the establishment to purchase auto insurance 13 primarily or solely because of its geographic proximity to their 14 homes or businesses. A reasonable jury could weigh the evidence, 15 including expert reports, advertising revenues, and customer 16 declarations regarding name recognition, and conclude either that 17 the mark did acquire secondary meaning or that it did not. 18 Therefore, the Court finds that there is an issue of fact as to 19 whether VSI can establish that its mark acquired secondary meaning 20 before June 2011. 21 22 3. VSI’s “Unlawful Use” of the Mark VAIS further argues, in opposition to VSI’s Motion, that VSI 23 cannot establish any rights in the mark because VSI’s use violated 24 various California insurance law provisions and regulations. “[U]se 25 in commerce only creates trademark rights when the use is lawful.” 26 CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626, 630 27 (9th Cir. 2007). There are two rationales for this rule. “First, as 28 a logical matter, to hold otherwise would be to put the government 10 1 in the anomalous position of extending the benefits of trademark 2 protection to a seller based upon actions the seller took in 3 violation of that government’s own laws.” Id. “Second, as a policy 4 matter, to give trademark priority to a seller who rushes to market 5 without taking care to carefully comply with the relevant 6 regulations would be to reward the hasty at the expense of the 7 diligent.” Id. 8 9 However, “[t]here must be some nexus between ... use of [a] mark and [an] alleged violation before it can be said that the 10 unlawfulness of [a] sale or shipment has resulted in [a mark’s] 11 invalidity.” Id. at 631 (quoting Satinine Societa in Nome 12 Collettivo Di S.A. E M. Usellini v. P.A.B. Produits Et Appareils De 13 Beaute, 209 U.S.P.Q. 958, 967 (1981)). Further, unlawful conduct 14 that is “immaterial,” meaning that it is not “of such gravity and 15 significance that the usage [of the mark] ... as a matter of law, 16 [can] create no trademark rights,” does not preclude trademark 17 protection. Id. at 633; see also S. Cal. Darts, 762 F.3d at 931-32. 18 “[A] case by case determination is preferable to a blanket policy 19 of finding every possible technical violation to result” in 20 trademark cancellation. General Mills, Inc. v. Health Valley Foods, 21 24 U.S.P.Q.2d 1270, 1274 (1992). Further, it appears unsettled 22 whether this unlawful use theory applies only to laws of the United 23 States, or whether it would apply equally to uses that violate 24 state laws. Compare W. Worldwide Enters. Group Inc. v. Qinqdao 25 Brewery, 17 U.S.P.Q.2d 1137, 1141 (1990) and S. Cal. Darts, 762 26 F.3d at 931-32. 27 28 11 1 VAIS essentially alleges two kinds of insurance violations.1 2 First, VAIS argues that VSI could not have sold insurance under any 3 fictitious name prior to March 2009, since only Jaime Silva, and 4 not VSI, was licensed to sell insurance. Second, VAIS argues that 5 after March 2009, VSI was permitted to use the mark “Veronica’s 6 Services Insurance Agency” only, in its entirety, and could not use 7 the mark “Veronica’s Services” alone when referring to auto 8 insurance services.2 VAIS argues that these amount to per se 9 violations of California insurance statutes and regulations. The 10 evidence supports a finding that VSI did use the Veronica’s 11 Services mark to sell insurance in a way that it was not explicitly 12 authorized to do so. The question, then, is whether any such 13 technical violations are material and have a sufficient nexus to 14 the use of the mark to deprive VSI of any trademark protection on 15 that basis. 16 It is not clear from the evidence submitted that Jaime Silva 17 and/or VSI committed per se violations of the insurance code such 18 that this Court would preclude VSI from establishing any trademark 19 rights. First, although there is evidence that the license states 20 that “‘Veronica’s Services Insurance Agency’ must be used for all 21 insurance business conducted in California” (see Docket No. 68-4, 22 23 24 25 26 27 28 1 Additional violations are cited in the moving papers, but they do not appear to be sufficiently related to the use of the mark to potentially result in a loss of trademark rights. 2 The Court does not address the first argument in its analysis. Regardless of any allegedly unlawful use by Jaime Silva prior to 2009, VSI could have used the mark after March 2009 but before June 2011 and established trademark rights through that use alone. Therefore, the Court’s analysis focuses on VAIS’s argument that VSI’s use of the mark was unlawful because VSI was required to use only a particular form of the mark. 12 1 Exh. 39 to Jaime Silva Depo.), it is disputed that the purpose of 2 this requirement was “to avoid confusion with other licensees,” as 3 VAIS contends it was. VSI contends that it has used “the legal 4 equivalent” of the required term at all times. (See Response to 5 SUF, Docket No. 71, ¶¶ 39-40.) The difference between using 6 “Veronica’s Services,” along with the word “insurance” to refer to 7 insurance services and “Veronica’s Services Insurance Agency” 8 appears to be a distinction without a difference. Further, the 9 California DOI has not determined that VSI’s use of the name 10 “Veronica’s Services” was a sufficiently important violation that 11 it ought to act to enforce the insurance regulations. Though the 12 Court need not wait for the regulatory agency to act, here it is 13 sufficiently unclear that the violations at issue were “material” 14 rather than “technical” that the Court declines to find that VSI 15 cannot as a matter of law establish that it acquired trademark 16 rights. Therefore, the Court DENIES summary judgment on this basis. 17 B. VAIS’s Claims of Ownership of the Mark 18 VAIS’s federal registration of the marks is prima facie 19 evidence that it owns the marks. Dep’t of Parks & Recreation for 20 State of California v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 21 (9th Cir. 2006). However, VSI may “rebut the presumption of 22 ownership with evidence establishing its own prior use in commerce 23 of the registered mark.” Id.; see also Sengoku Works Ltd. v. RMC 24 Intern., Ltd., 96 F.3d 1217, 1220 (9th Cir. 1996). Prior use is a 25 complete defense to trademark infringement, false designation of 26 origin, and unfair competition claims. There are three elements to 27 a prior use defense: “(1) the defendant adopted the mark without 28 actual or constructive knowledge of the plaintiff’s use; (2) the 13 1 defendant used the mark before the plaintiff filed his or her 2 trademark application; and (3) the defendant used the mark 3 continuously after the plaintiff filed the application.” Bell v. 4 Harley-Davidson Motor Co., Inc., 2007 WL 935588, at *2 (S.D. Cal. 5 2007) (citing Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 761 6 (9th Cir. 2006)). “While the first use need not be extensive, the 7 use must be bona fide and commercial in character” and “in such as 8 manner that sufficiently associate[s] the marks with the ... 9 provision of ... services.” Dep’t of Parks, 448 F.3d at 1125-26; 10 see also Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 11 F.3d 1036, 1052 (9th Cir. 1999) (stating that the use must be 12 “sufficiently public to identify or distinguish the marked goods in 13 an appropriate segment of the public mind as those of the adopter 14 of the mark”). 15 It appears to be undisputed that VSI began using the 16 designation “Veronica’s Services” for its Pacoima business in 1990 17 and that it began offering auto insurance services under that mark 18 in 1998. At that time, the Silvas were operating their business as 19 a sole proprietorship, and Jaime Silva was licensed to sell 20 insurance. VSI began using the mark, at the latest, in March 2009, 21 well before VAIS ever used the mark. As a result, VSI clearly had 22 no knowledge of VAIS’s use of the mark and began using the mark 23 well before VAIS sought federal registration of the mark. Finally, 24 VSI has continuously used the mark at its Pacoima office location, 25 at least dating back to 2009. VAIS has not provided any evidence 26 that creates a genuine dispute as to whether VSI used the 27 “Veronica’s Services” mark to sell insurance as early as 1998 or 28 whether VSI has operated continuously. However, although VSI 14 1 provides some evidence from which a jury could conclude that the 2 mark became “sufficiently associated” with VSI’s business to meet 3 the requirements of the prior use defense,3 on balance, the Court 4 finds that there remain issues of fact as to the inferences to be 5 drawn from that evidence such that summary judgment would be 6 improper. As a result, the Court DENIES VSI’s Motion in this 7 regard. 8 IV. Conclusion 9 For the foregoing reasons, the Motions are DENIED. 10 11 IT IS SO ORDERED. 12 13 14 Dated: December 15, 2014 DEAN D. PREGERSON United States District Judge 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 The Court notes that the showing required to establish a sufficient association to satisfy the prior use defense appears to be substantially lower than the showing required to establish secondary meaning in the mark, though the two analyses involve similar kinds of inquiry and evidence. 15
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