Gerawan Farming, Inc. v. Prima Bella Produce, Inc., No. 1:2010cv00148 - Document 150 (E.D. Cal. 2011)

Court Description: SUMMARY JUDGMENT DECISION [112, 126] signed by District Judge Lawrence J. O'Neill on August 2, 2011. (Lira, I)

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1 2 3 4 5 6 7 8 IN THE UNITED STATES DISTRICT COURT 9 FOR THE EASTERN DISTRICT OF CALIFORNIA 10 11 GERAWAN FARMING, INC., 12 CASE NO. CV F 10-0148 LJO JLT Plaintiff, SUMMARY JUDGMENT DECISION (Docs. 112, 126.) vs. 13 PRIMA BELLA PRODUCE, INC., 14 Defendant. 15 / 16 INTRODUCTION 17 Defendant Prima Bella Produce, Inc. ( PBP ) seeks summary judgment on plaintiff Gerawan 18 Farming, Inc. s ( Gerawan s ) federal and common law trademark infringement, dilution and unfair 19 competition claims. Gerawan contends material factual disputes exist on all grounds upon which PBP 20 seeks summary judgment, in particular, whether there is a likelihood of confusion among PBP s and 21 Gerawan s trademarks. This Court considered PBP s summary judgment motion on the record without 22 a hearing, pursuant to Local Rule 230(g).1 For the reasons discussed below, this Court DENIES PBP 23 summary judgment. 24 25 26 27 28 1 This Court carefully reviewed and considered the extensive record, including all evidence, arguments, points and authorities, declarations, testimony, statements of undisputed facts and responses thereto, objections and other papers filed by the parties. Omission of reference to evidence, an argument, document, objection or paper is not to be construed to the effect that this Court did not consider the evidence, argument, document, objection or paper. This Court thoroughly reviewed, considered and applied the evidence it deemed admissible, material and appropriate for summary judgment. This Court does not rule on objections in a summary judgment context, unless otherwise noted. 1 1 BACKGROUND 2 Summary 3 4 This is a dispute over Gerawan s use of its Prima trademarks and PBP s use of its Prima Bella trademarks. 5 Family owned and operated since 1938, Gerawan is based in Sanger, California and describes 6 itself as the nation s largest grower of peaches, plums and nectarines and among the leaders in table 7 grapes. Gerawan sells its produce in grocery and warehouse stores, fruit and vegetable stands, and 8 similar retail outlets, and its customers include Costco, Safeway and Wal-Mart. Gerawan owns 10 9 registered U.S. trademarks and claims to have used its Prima trademarks as a brand for its fresh produce 10 in interstate commerce since early 1970. 11 PBP is based in Tracy, California and describes itself as a leading supplier of fresh, year 12 round sweet corn in the United States and the largest packaged sweet corn producer and seller in the 13 Western United States. PBP packages and sells fresh sweet corn that is distributed to retail outlets, 14 including Costco, Safeway and Wal-Mart, as well as food service companies.2 PBP s recent retail sales 15 are in the millions of dollars. PBP uses Prima Bella trademarks. 16 Gerawan claims that PBP has infringed upon and diluted Gerawan s Prima trademarks. In this 17 action, Gerwan seeks to enjoin PBP s infringement and dilution of Gerawan s Prima trademarks and to 18 recover damages for PBP s alleged infringement, dilution and unfair trade practices. PBP seeks 19 summary judgment in the absence of evidence of a likelihood of confusion between Gerawan s and 20 PBP s trademarks and dilution caused by PBP s trademarks. 21 Gerawan s Trademarks 22 Gerawan owns U.S. Trademark Reg. No. 1,441,378 for Prima in standard character form ( Prima 23 word mark ). On April 1, 1985, Gerawan applied to register the Prima word mark for fresh fruits and 24 vegetables, namely, table grapes; peaches; plums; nectarines; lettuce; cauliflower; kiwis; persimmons; 25 rapini; broccoli; bok choy; apricots; cantaloupe; escarole; honeydew; crenshaw; red leaf; green leaf; 26 boston; red cabbage; green cabbage; and nappa. The U.S. Patent and Trademark Office ( USPTO ) 27 28 2 Gerawan notes that it and PBP share no less than 17 customers. 2 1 issued a registration for the Prima word mark on June 2, 1987. 2 In November 2007, Gerawan submitted a Combined Declaration of Use in Commerce and 3 Application for Renewal of Registration of Mark under Sections 8 and 9 (15 U.S.C. §§ 1058, 1059) to 4 renew registration for the Prima work mark. 5 Gerawan owns U.S. Trademark Reg. No. 3,592,505 for Prima in a stylized form ( Prima logo ). 6 On November 28, 2007, Gerawan applied to register the Prima logo for fresh fruit. The USPTO 7 issued a registration for the Prima logo on March 17, 2009. 8 9 Gerawan also owns eight other trademarks containing Prima for its other goods and services, including pallets and computer services.3 10 PBP s Trademarks 11 PBP owns U.S. Trademark Reg. No. 3,404,125 for Prima Bella in standard character form 12 ( Prima Bella work mark ). On October 3, 2006, PBP applied to register the Prima Bella work mark 13 for fresh vegetables. The USPTO issued registration for the Prima Bella word mark on April 1, 2008. 14 PBP owns U.S. Trademark Reg. No. 3,404,126 for Prima Bella in stylized form ( Prima Bella 15 logo ). On October 4, 2007, PBP applied to register the Prima Bella logo for fresh vegetables. The 16 USPTO issued registration for the Prima Bella logo on April 1, 2008.4 17 On November 4, 2003, PBP applied to register Glori Ann in standard character form ( Glori Ann 18 word mark ) for fresh vegetables. 5 On December 21, 2004, the USPTO issued U.S. Trademark Reg. 19 No. 2,913,100 for the Glori Ann word mark. 20 21 Gerawan s History And Naming Gerawan s principals include Ray Gerawan and his sons Dan and Mike Gerawan. Gerawan dates 22 23 3 This Court will refer to the Prima word mark, the Prima logo and other Gerawan trademarks collectively as the Prima trademarks. 24 4 25 26 27 PBP claims it is the first to use the Prima Bella mark in commerce for the fresh vegetable category of fresh food produce. PBP notes that the USPTO trademark examiner searched all trademarks that included the word Prima and that although such search would have alerted the trademark examiner to Gerawan s Prima trademark registrations, the examiner did not mention Gerawan s Prima trademark in connection with granting PBP exclusive right to use a Prima Bella trademark for fresh vegetables. 5 28 The Prima Bella work mark, Prima Bella logo and Glori Ann word mark will be referred to collectively as the Prima Bella trademarks. 3 1 back to 1938, when Ray Gerawan s parents began farming in California. 2 In the 1960s, Ray Gerawan came up with the brand name Prima. In his deposition, Ray 3 Gerawan testified that he was [l]ooking for something simple, two syllables, sounded good, it looked 4 good. Ray Gerawan came up with Prima by himself. 5 PBP s History, Naming And Products 6 PBP s president is Mark Bacchetti ( Mr. Bacchetti ), and its secretary/treasurer is Mary Bacchetti 7 ( Ms. Bacchetti ), Mr. Bacchetti s wife. PBP is closely held. A related company, Bella Mia 8 Management, performs PBP s payroll services. 9 Mr. Bacchetti s parents Bert and Gloria Ann Bacchetti engaged in California farming operations. 10 Bert Bacchetti Farms began as a dairy and farming business in the 1950s and incorporated in 1968. Mr. 11 Bacchetti joined his father as a full-time employee of Bert Bacchetti Farms in 1976. 12 Before PBP began doing business in 2002, Mr. and Ms. Bacchetti formed and operated Marca 13 Bella Farms along with Mr. Bacchetti s father. Marca Bella Farms began farming and packing 14 operations in 1996. PBP notes that Marca Bella Farms was primarily devoted to growing and 15 distribution of asparagus and sold asparagus using a Bella trademark. 16 Mr. Bacchetti first began growing and distributing fresh sweet corn as a small part of Marca 17 Bella Farms operations. Marca Bella Farms ceased growing and distributing corn products in the early 18 to mid-2000s. 19 In 2001, Ms. Bacchetti came up with the name Prima Bella Produce for the company, PBP, that 20 she and Mr. Bacchetti wanted to form to grow and sell packaged fresh sweet corn. Ms. Bacchetti desired 21 to include Bella to carry on the lineage of related companies. In her deposition, Ms. Bacchetti testified 22 that to create the Prima Bella Produce name, I pulled out an Italian dictionary and I came up with words 23 in English that I thought, you know, represented what we were doing and then I would look it up in the 24 Italian version. . . . I wanted names that that flowed right off the tip of your tongue. Ms. Bacchetti 25 found Prima and believed that it sounded good as Prima Bella. Ms. Bacchetti consulted an outside 26 accountant who informed her that Prima Bella was not used as a California corporate name. Mr. and 27 Ms. Bacchetti decided to adopt Prima Bella as the tradename for PBP. Mr. and Mrs. Bacchetti have no 28 knowledge of a trademark search for Prima Bella prior to PBP s use of it. Mr. Bacchetti testified that 4 1 he considers Prima Bella as PBP s brand. 2 Prior to PBP s formation, Marca Bella Farms used the Glori Ann word mark for sales of 3 packaged fresh sweet corn products. With Marca Bella Farms cessation of growing and distributing 4 sweet corn, only PBP sells sweet corn using the Glori Ann word mark. 5 When PBP applied to register the Glori Ann word mark in November 2003, PBP included a 6 declaration from Gloria Ann Bacchetti, Mr. Bacchetti s mother, since the trademark is based on her 7 name. PBP notes that trademark registration rules require such declaration when a trademark is based 8 on a family name of a living person. 9 In some retail outlets, PBP s packaged sweet corn is sold in refrigerated sections known as a wet 10 rack. Grocery stores place PBP s fresh sweet corn products in the wet rack next to loose corn. PBP 11 prefers placement of its packaged sweet corn in upper sections of the wet rack to keep sprinklers off the 12 sweet corn products and to present at consumers eye level. 13 Gerawan s Products And Patents 14 During recent years, Gerawan s production and sales have been limited to stone fruit6 and grapes. 15 Dan Gerawan testified that Gerawan and its entities have been out of vegetables . . . [p]robably 30 years 16 even. Gerawan s website and promotional materials do not mention Gerawan s farming or sales of 17 vegetable produce. Produced Gerawan records disclose production and sale of stone fruit and table 18 grapes since 1980, but no vegetable sales. 19 In May 1993, Dan Gerawan signed a Combined Affidavit Under Sections 8 and 15 in which he 20 states that the Prima mark has been in continuous use in interstate commerce for five consecutive years 21 from the date of registration or the date of publication under Section 12(c) to present, on each of the 22 following goods stated in the registration fresh fruits and vegetables, namely, table grapes; peaches; 23 plums; nectarines; lettuce; cauliflower; kiwis; persimmons; rapini; broccoli; bok choy; apricots; 24 cantaloupe; escarole; honeydew; crenshaw; red leaf; green leaf; boston; red cabbage; green cabbage; and 25 nappa. In his deposition, Dan Gerawan acknowledged that the affidavit was incorrect with respect to 26 vegetables. 27 28 6 Stone fruit includes peaches, plums, nectarines and apricots. 5 1 In November 2007, Gerawan submitted a Combined Declaration of Use in Commerce and 2 Application for Renewal of Mark under Sections 8 and 9 (15 U.S.C. §§ 1058 & 1059) to request deletion 3 from the registration of all vegetable produce and certain fruit produce. In February 2009, Gerawan s 4 trademark counsel authorized the USPTO to amend the Prima logo to delete and vegetables. In 5 connection with the Prima logo s statement of use, Gerawan informed the USPTO that the applicant 6 is submitting one specimen for the class showing the mark as used in commerce on or in connection with 7 any item in the class, consisting of a(n) photograph of a container of goods. The specimen provided 8 was a box with the Prima Gattie peach variety designation and the Prima logo. PBP notes that federal 9 regulations require inclusion of the applicable fruit variety name on fruit packages and containers. 10 11 12 Mike Gerawan is the named inventor of five plant patents with Prima titles which were applied for Gerawan s benefit. The titles are: 1. 13 14 2010; 2. 15 16 3. U.S. Plant Patent No. 8057 Prima Red Plum 9-1" term expired on December 24, 2010; 4. 19 20 U.S. Plant Patent No. 8067 Prima Black Plum 5-25" term expired on December 24, 2010; 17 18 U.S. Plant Patent No. 8068 Prima Black Plum 8-15" term expired on December 24, U.S. Plant Patent No. 10,085 Prima Gattie Peach Tree term expires on January 24, 2016; and 5. U.S. Plant Patent No. 12,011 Nectarine Tree Named Prima Diamond 19' term expires on March 5, 2019.7 21 22 PBP notes that each of these patents begins with a description that the invention relates to a new and 23 distinct variety of the subject fruit tree that produces a corresponding fruit. Gerawan points out that 24 the Prima word mark and Prima logo predate by 18 years any of the above patents. Gerawan notes that 25 fruit producers commonly associate their trademarks with patent varieties and identify the trademarks 26 in their plant patents. 27 7 28 Mike Gerawan is also the inventor of seven U.S. plant patents for fruit trees and plants which do not include Prima in their titles. 6 1 Gerawan markets and sells its produce, including 20 kinds of peaches and table grapes, under 2 Prima marks in various forms, and expanded its products to pallets and computer services. Gerawan 3 explains that Prima is used for all Gerawan fruit, not just fruit produced from plum, nectarine and peach 4 trees covered by the five Prima patents. 5 PBP notes that the Prima plum patent titles are included in the Brooks and Olmo Register of 6 Fruit and Nut Varieties (3rd ed. 1997), which USPTO examiners review to determine if any other patent 7 includes a variety name. PBP further notes that after the 1997 third edition of the Brooks and Olmo 8 Register of Fruit and Nut Varieties, subsequent listings of patented varieties of Prima nectarines and 9 peaches are included in the Register of New Fruit and Nut Varieties published in the journal 10 Horticultural Science. PBP points out that since 1994, Prima peach and nectarine varieties have been 11 listed in the Federal Register and the Code of Federal Regulations as fruit varieties and that successive 12 Federal Registrar editions include numerous references to Prima varieties of peaches and nectarines. 13 According to PBP, unlike other California peach and nectarine growers, since 2004, Gerawan has not 14 appended trademark symbols to the Prima peach and nectarine varieties listed in the Federal Register 15 although Gerawan s fruit variety designations in the Federal Register and Code of Federal Regulations 16 are amended from time to time. 17 Gerawan points out that the USPTO in granting six Gerawan trademark registrations for Prima 18 produce has not taken the position the Prima is a varietal name for live plants, seeds, or fruit. Dan 19 Gerawan denies that Gerawan s varieties appeared in the Federal Register. 20 Gerawan s Advertising And Promotion 21 Ray Gerawan testified that Gerawan s products are its advertisement to a point. Ray Gerawan 22 further testified: Prima s a brand, that s how we sell our fruit, Prima. . . . We do numerous promotions 23 with retailers, promoting ads of Prima to the consumer. 24 Ray Gerawan testified that Gerawan advertising in the 1960s and 1970s comprised [j]ust 25 primary, the brand. . . . Putting the brand on the product. PBP notes that in the 1980s, Gerawan 26 distributed promotional material to wholesale customers and that the Gerawan family name is included 27 in large font. 28 Gerawan has not engaged in significant television and radio advertising. In 2007 or 2008, 7 1 Gerawan prepared a radio spot for a grocery store customer. Gerawan s sales manager does not know 2 if the spot aired. In 2009, Gerawan had one direct mail piece sent to wholesale and retail customers for 3 Thompson seedless grapes. Gerawan notes that it runs advertisements in trade publications and 4 magazines and advertises with point-of-sale signage. 5 Point-of-sale posters have included phrases Prima Fruit, Prima Flavor, Prime Grapes, Prima 6 Sweet Goodness, and Prima Fruit in its Prime. PBP notes that a Gerawan-produced photo depicts 7 use of a Prime Fruit, Prima Flavor point-of-sale display and shows the retailer s price signs which refer 8 to Gerawan s peaches and nectarines as California Peaches and California Nectarines. 9 PBP points out that Gerawan has not promoted Prima trademarks by using billboards, airport or 10 bus ads, celebrity chefs, cookoffs, cookbooks, sweepstakes, clubs, running races, walkathons, or state 11 and county fairs. Gerawan print promotions include point-of-sale materials and brochures. 12 Gerawan retained MJR Creative Group to prepare Gerawan s point-of-sale and other advertising 13 materials. In years during 2002-2010, Gerawan has paid MJR well under $81,000 annually but did pay 14 nearly $198,000 one year. PBP notes the absence of produced records of Gerawan s television and radio 15 advertising and number and text of advertisements. 16 Gerawan considers its website as a form of advertising. The website lists Gerawan s products 17 with the Prima trademarks. PBP notes that Gerawan s website refers to its stone fruit and table grapes 18 as fruit varieties ( Standard Varieties Aren t Good Enough. So We Develop Our Own. ) PBP notes 19 that Gerawan s website identifies Prima Red Seedless and Prima Black Seedless as grape varieties, 20 Primacot as an apricot variety, Red and Black as plum varieties, and Prima Gattie as a peach 21 variety. Gerawan promotes its patented varieties of peaches and nectarines in print, website advertising, 22 and letters to grocery store buyers. 23 Gerawan s shipping cartons function as displays of the Prima trademarks, and PBP notes that 24 they identify fruit by variety name. Gerawan points out that it uses its Prima trademarks on its boxes, 25 buildings, website, labels, tags, recipe cards, pallets, clothing, headwear, pens, beverage containers, 26 computer bags, paper tablet holder for sales and marketing, air pillows for shipping, fruit stickers, 27 posters, business cards, <prima.com> email address, large retail store banners, letterhead, brochures, 28 tissue paper, packing top sheets, trays, print advertisements, pallets and computer services. 8 1 2 Retailers offer contests with Prima products between their stores. General Mills approached Gerawan for a cross promotion of Bisquick and Prima peaches. 3 Recognition Of Prima And Its Brand 4 Randy Scott ( Mr. Scott ) is a fruit category manager for Food Lion, a North Carolina regional 5 grocery with 1200 stores in 11 states with 10 million customers. When asked of his understanding of 6 the use of Prima, Mr. Scott testified: Prima is on the side of their boxes. It s on the side of their 7 boxes, on their stickers and it s some of their varieties are called Prima with a number and some of 8 them with a name. In his deposition, Mr. Scott also denied that he was aware that Prima was a variety. 9 In his declaration, Mr. Scott claims that several customers have asked for Prima produce grown by the 10 Gerawan name. 11 Jason Weiler ( Mr. Weiler ) is a head fruit buyer for one of Gerwan s New York wholesalers. 12 In his deposition, Mr. Weiler reviewed a table grapes label on the end of display boxes and testified: 13 Q. I m showing you what s been marked as Exhibit 91. Have you ever seen a label like that for Gerawan Farming? A. Yes. Q. . . . is this on the end of boxes? A. Yes. Q. . . . you see the portion of Exhibit 91 that has table grapes? A. Yes. Q. And there s some boxes below that? A. Yes. Q. . . . to your understanding, are the boxes below that? Are those check-off boxes? A. They ll check off the variety of grape that s actually in the box. Q. . . . So if there was a check off near Prima Black Seedless, that would be the variety of grape that was in the box? ... A. Yes. 14 15 16 17 18 19 20 21 22 23 24 25 26 27 Mr. Weiler further testified that Prima is a Gerawan brand and a major brand in the produce industry. 28 Mr. Weiler testified that his customers ask for the Prima brand of that commodity, grape, peach, 9 1 nectarine and identified several customers who asked for the Prima brand. PBP notes that Mr. Weiler 2 works for a wholesaler in a terminal market that sells to retail grocery store representatives, not end 3 customers. 4 When asked to give examples of varieties, Mr. Scott responded: Naval oranges, Mineola 5 tangelos, caracara oranges, blood oranges and not the company from which an orange comes. 6 When asked to identify fruit brands which Food Lion sells, Mr. Scott testified: 7 I don t know we offer brands so much as we buy from companies that have a brand on it. We don t really sell produce as branded. . . . we re selling the commodities, so if we re buying from Sunkist, obviously that s their brand. We offer that, but we don t advertise or sell that as branded product. We re basically buying top quality produce. 8 9 10 Q. But as part of that, there are certain fruits that are associated with brands? 11 A. I believe they re recognized as having a brand, yes. 12 Q. Using that definition, what fruits does Food Lion sell that are associated with a brand? A. I would say the ones such as Chiquita bananas, Del Monte pineapples, Dole bananas, Dole salads, Fress Express salads, those are ones that . . . have a brand name on them, and . . . I believe they re probably recognizable. 16 Q. Does Prima fall into that category? 17 A. Not in my opinion. 18 Q. And why is that? 19 A. I think I could show that fruit to someone with that label on it and I think that wouldn t mean anything to anybody on the east coast. Q. So what is your definition of a brand? A. A brand to me is something nationally recognized. 13 14 15 20 21 22 ... 23 Q. But if a customer picks up a piece of fruit that s of high quality, how do they know to ask for that particular type of fruit again in the future? A. 27 I ve never pretty sure I haven t had a customer ask for a particular brand of fruit. They have asked for when am I going to get really good honey crisp apples. When am I going to get big, juicy bright red grapes? When am I going to get some nicer size bright red strawberries? Very rare to ask for a brand. And part of that s because we carry multiple we carry products from multiple sources. 28 Ray Gerawan testified that he considered Prima a famous fruit brand: Prima s a brand, it s like 24 25 26 10 1 Del Monte or Dole or Driscoll, it s a brand. That s all it is. Ray Gerawan identified Sunkist, Dole, Del 2 Monte and Driscoll Berries well recognized brands by the consuming public. Ray Gerawan testified that 3 he does not know whether the Prima brand is widely recognized by the general consuming public in 4 California or any area of it. Ray Gerawan does not know of testing whether the Prima brand is widely 5 recognized in a particular geographic area. Ray Gerawan is unaware of informal polls to determine if 6 consumers recognize the Prima brand.8 7 Fruits And Vegetables Promotion 8 PBP notes that at the grocery store level, fruits and vegetables generally are not displayed 9 together. PBP points to Mr. Scott s deposition testimony that Food Lion generally does not mix fruits 10 and vegetables in a single display and generally does not advertise fruits and vegetables side by side in 11 outdoor signage. Mr. Scott testified that corn is not sold side by side with peaches, plums, nectarines 12 or grapes but rather is sold within 20 feet of such fruits. 13 PBP further notes that at the grocery store level, fruits and vegetables are neither considered 14 complementary nor promoted together. PBP points to Mr. Scott s testimony that Food Lion does not 15 promote fruits and vegetables together as a tie in. Gerawan points to Mr. Scott s declaration that fruits 16 and vegetables are commonly and frequently considered together in the produce industry. Mr. 17 Bacchetti testified that fruits and vegetables are displayed together at produce trade shows. 18 Public Domain And Commercial Use Of Prima 19 Citing to Webster s dictionary, PBP explains that prima means first or leading in English 20 and is derived from the feminine conjugation of the Italian word primo, which in turn is derived from 21 the Latin word primus more at prime. Gerawan takes the position that prima s English translation is 22 before. Gerawan notes that the Italian or Spanish word bella translates to beautiful in English. 23 PBP notes that Google search results for plums, peaches, nectarines, apricots and table grapes 24 did not mention Gerawan or its Prima fruit produce on the first page. PBP further notes that Bing search 25 results for stone fruit and table grapes did not mention Gerawan or its Prima fruit produce in the first five 26 pages. According to PBP, a Bing search of prima plum did not mention Gerawan in the first five 27 8 28 Gerawan takes issue with this testimony of Ray Gerawan in that he was not designated as Gerawan s F.R.Civ.P. 30(b)(6) witness as to fame and secondary meaning of the Prima trademarks. 11 1 pages but did produce a search result for Prima red and black plum patents. 2 Gerawan notes that PBP did not search for Gerawan s products in connection with its Prima 3 brand, that is, prima peaches, prima stone fruit, or prima grapes, which identifies Gerawan s 4 Prima brand as the first hit. 5 PBP further points out that numerous U.S. companies have incorporated Prima into their 6 corporate or business tradenames, including 209 California corporate entities and 55 limited liability 7 entities. PBP s search of USPTO s database in early April 2011 revealed 779 records of live or dead 8 trademark registrations or applications which include Prima. PBP notes that the USPTO has granted 9 trademark registrations which include Prima as all or part of a trademark for numerous agricultural 10 and food-related entities and include Prima (beer), Prima (wine), Prima Frutta (fresh fruit and fresh 11 vegetable produce), Prima Roma (tomato produce), Prima Guida (pizza ingredients), Prima Taste 12 (restaurant services and food ingredients), Yerba Prima (herbal dietary supplements), and Prima Cucina 13 (cookware). 14 PBP further notes that a third-party has held a Prima Frutta trademark for fresh fruits and 15 vegetables since 1989 and of which Gerawan has been aware. PBP points to Dan Gerawan s testimony 16 that he easily distinguished the Prima and Prima Frutta logos in a photograph of an in-store promotion 17 of Prima Frutta apples displayed closely to Gerawan s peaches. 18 Consumer Confusion 19 PBP contends that Gerawan lacks evidence of actual consumer confusion caused by PBP s use 20 of its Prima Bella trademarks. PBP notes that Gerawan has produced no trademark surveys to 21 demonstrate likelihood of confusion, secondary meaning, fame or actual dilution associated with 22 Gerawan s Prima trademarks and that Gerawan does not conduct market surveys in its regular business 23 course. 24 According to PBP, the produce industry does not consider PBP s Prima Bella trademarks to be 25 similar to Gerawan s Prima trademarks. PBP offers the declarations of R.S. Viggers ( Mr. Viggers ), 26 general manager of Charlie s Produce, a full-service produce supplier, and Eugene Razo ( Mr. Razo ), 27 who works in sales for Interfresh, a nationwide produce distributor and marketer. Both Mr. Viggers and 28 Mr. Razo declare: I am not aware of any producers of fresh fruit that use a trademark that I would 12 1 consider similar to Prima Bella or Gloriann. 2 Gerawan seeks to strike Mr. Viggers and Mr. Razo s declarations in that PBP failed to disclose 3 Mr. Viggers and Mr. Razo as witnesses until May 5, 2011, a day prior to the May 6, 2011 discovery cut- 4 off. Gerawan contends that they have been denied ability to depose Mr. Viggers and Mr. Razo, 5 especially since PBP cancelled the deposition of Charlie s Produce, of which PBP belatedly provided 6 notice.9 This Court will not tolerate untimely witness disclosures and discovery gamesmanship and 7 STRIKES Mr. Viggers and Mr. Razo s declarations. F.R.Civ.P. 37(b)(2)(A)(ii) and (c)(1)(C). 8 As to confusion, Gerawan points to the declaration of Food Lion s Mr. Scott: The first time I 9 heard of Prima Bella Produce in connection with produce, I immediately thought of Gerawan s Prima 10 produce and wondered if the two were related in some manner. 11 Gerawan s Claims 12 Gerawan proceeds on its First Amended Complaint for Trademark Infringement, Trademark 13 Dilution, Trademark Cancellation, and Unfair Competition ( FAC ) to recover damages and injunctive 14 relief for PBP s alleged infringement and dilution of Gerawan s Prima trademarks and PBP s unfair 15 trade practices. The FAC alleges that Gerawan s Prima trademarks have become a valuable asset 16 symbolizing Gerawan, its quality products and goodwill. The FAC accuses PBP to possess no less than 17 constructive knowledge of Gerawan s Prima trademarks and to have adopted the confusingly similar 18 designation Prima Bella which is identical or nearly identical to Gerawan s common law and federally 19 registered Prima marks. The FAC alleges that the likelihood of confusion and dilution between 20 Gerawan s common law and federally registered Prima marks and Defendant s designation Prima Bella 21 is not alleviated by the descriptive word bella in Defendant s designation. The FAC further accuses 22 PBP of adopting the its Prima Bella designation to trade on the goodwill associated with Gerawan s 23 marks, and, to obtain salability for Defendant s fresh produce products that it otherwise would not have. 24 The FAC alleges: 25 1. 26 A (first) infringement of federally registered trademark claim under 15 U.S.C. § 1114 that PBP s unauthorized use of the federally registered Prima Bella trademarks is likely 27 9 28 During the late afternoon of April 29, 2011, Gerawan received PBP s deposition notice and subpoena for Charlie s Produce for a May 6, 2011 deposition. On May 4, 2011, PBP cancelled the deposition. 13 1 2 to confuse the purchasing public; 2. A (second) common law trademark infringement claim that PBP s unauthorized use of 3 the Prima Bella designation is likely to confuse the purchasing public to constitute 4 infringement of Gerawan s common law rights; 5 3. A (third) dilution of federally registered trademark claim that PBP s use of Prima Bella 6 trademarks is likely to dilute and impair the distinctiveness of Gerawan s famous 7 trademarks and to create false association to harm the reputation of Gerawan s famous 8 Prima trademarks; 9 4. A (fourth) unfair competition and false designation of origin claim that PBP s conduct 10 is likely to cause confusion, mistake and deception to constitute a false designation of 11 origin to violate 15 U.S.C. § 1125(a); 12 5. A (fifth) unfair competition and unfair business practices claim that PBP s unlawful 13 conduct constitutes unfair competition under the common law and California Business 14 & Code, §§ 17000, et seq, and 17200, et seq.; and 15 6. A (sixth) cancellation of federally registered trademark claim to cancel the Prima Bella 16 trademarks because they are likely to cause confusion and mistake with the purchasing 17 public. 18 For remedies, the FAC seeks an accounting of PBP profits from its unlawful activities, an 19 injunction to prevent PBP s use of Prima Bella, compensatory, treble and punitive damages, and 20 cancellation of the Prima Bella work mark and Prima Bella logo. 21 22 Gerawan pursues a counterclaims, not at issue here, to cancel registrations of the Prima word mark and Prima logo as generic and/or abandoned. 23 DISCUSSION 24 Summary Judgment Standards 25 PBP seeks summary judgment in the absence of evidence of likelihood of confusion between 26 Gerawan s Prima trademarks and PBP s Prima Bella trademarks and to meet the high threshold to 27 establish the Prima trademarks fame. PBP contends that in the absence of likelihood of confusion and 28 dilution, all of Gerawan s claims fail. See Brookfield Communications, Inc. v. West Coast Entertainment 14 1 Corp., 174 F.3d 1036, 1046 (9th Cir. 1999) ( To establish a trademark infringement claim under section 2 32 of the Lanham Act or an unfair competition claim under section 43(a) of the Lanham Act, [plaintiff] 3 must establish that [defendant] is using a mark confusingly similar to a valid, protectable trademark of 4 [plaintiff s]. PBP continues that summary judgment on Gerawan s federal trademark claims warrants 5 summary judgment on Gerawan s California claims. See Cleary v. New Corp., 30 F.3d 1255, 1261-1262 6 (9th Cir. 1994) ( state common law claims and actions pursuant to California Business and Professions 7 Code § 17200 are substantially congruent to claims under the Lanham Act ); Walter v. Mattel, Inc., 8 210 F.3d 1108, 1111 (9th Cir. 2000) (federal, common law and state statutory unfair competition claims 9 are treated coextensive in that they turn on the sufficiency of proof of likelihood of confusion ); 10 Metro Pub., Ltd. v. San Jose Mercury News, Inc., 861 F.Supp. 870, 881 (N.D. Cal. 1994) ( Because the 11 Court grants summary judgment in favor of the Mercury News on Metro Publishing's trademark 12 infringement and dilution claims, it also grants summary judgment in favor of the Mercury News on 13 Metro Publishing's unfair competition claim under California Business & Professions Code § 17200, 14 inasmuch as that claim is based on trademark infringement and dilution. ) 15 Gerawan responds that material factual issues defeat summary judgment on all grounds raised 16 by PBP. Gerawan points out that trial courts disfavor deciding trademark cases in summary judgments 17 because the ultimate issue is so inherently factual. . . . Additionally, the question of likelihood of 18 confusion is routinely submitted for jury determination as a question of fact. Levi Strauss & Co. v. Blue 19 Bell, Inc., 778 F.2d 1352, 1356, n. 5 (9th Cir. 1985). 20 As the parties well know, F.R.Civ.P. 56(a) permits a party to seek summary judgment 21 identifying each claim or defense or the part of each claim or defense on which summary judgment 22 is sought. A district court may dispose of a particular claim or defense by summary judgment when 23 one of the parties is entitled to judgment as a matter of law on that claim or defense. Beal Bank, SSB 24 v. Pittorino, 177 F.3d 65, 68 (1st Cir. 1999). 25 Summary judgment is appropriate when the movant shows there is no genuine dispute as to any 26 material fact and the movant is entitled to judgment as a matter of law. F.R.Civ.P. 56(a); Matsushita 27 Elec. Indus. v. Zenith Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 1356 (1986); T.W. Elec. Serv., 28 Inc. v. Pacific Elec. Contractors Ass n, 809 F.2d 626, 630 (9th Cir. 1987). Although disfavored in 15 1 trademark infringement cases, summary judgment may be entered when no genuine issue of material fact 2 exists. Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 630 (9th Cir. 2005). The purpose 3 of summary judgment is to pierce the pleadings and assess the proof in order to see whether there is a 4 genuine need for trial. Matsushita Elec., 475 U.S. at 586, n. 11, 106 S.Ct. 1348; International Union 5 of Bricklayers v. Martin Jaska, Inc., 752 F.2d 1401, 1405 (9th Cir. 1985). 6 On summary judgment, a court must decide whether there is a genuine issue as to any material 7 fact, not weigh the evidence or determine the truth of contested matters. F.R.Civ.P. 56(a), (c); Covey 8 v. Hollydale Mobilehome Estates, 116 F.3d 830, 834 (9th Cir. 1997); see Adickes v. S.H. Kress & Co., 9 398 U.S. 144, 157, 90 S.Ct. 1598 (1970); Poller v. Columbia Broadcast System, 368 U.S. 464, 467, 82 10 S.Ct. 486 (1962); Loehr v. Ventura County Community College Dist., 743 F.2d 1310, 1313 (9th Cir. 11 1984). Credibility determinations, the weighing of the evidence, and the drawing of legitimate 12 inferences from the facts are jury functions, not those of a judge, whether he is ruling on a motion for 13 summary judgment or for a directed verdict. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 14 S.Ct. 2505 (1986) 15 The evidence of the party opposing summary judgment is to be believed and all reasonable 16 inferences that may be drawn from the facts before the court must be drawn in favor of the opposing 17 party. Anderson, 477 U.S. at 255, 106 S.Ct. 2505; Matsushita, 475 U.S. at 587, 106 S.Ct. 1348. The 18 inquiry is whether the evidence presents a sufficient disagreement to require submission to a jury or 19 whether it is so one-sided that one party must prevail as a matter of law. Anderson, 477 U.S. at 251- 20 252, 106 S.Ct. 2505. 21 To carry its burden of production on summary judgment, a moving party must either produce 22 evidence negating an essential element of the nonmoving party s claim or defense or show that the 23 nonmoving party does not have enough evidence of an essential element to carry its ultimate burden of 24 persuasion at trial. Nissan Fire & Marine Ins. Co. v. Fritz Companies, Inc., 210 F.3d 1099, 1102 (9th 25 Cir. 2000); see Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (2007) (moving party is able to 26 prevail by pointing out that there is an absence of evidence to support the nonmoving party s case ); 27 High Tech Gays v. Defense Indus. Sec. Clearance Office, 895 F.2d 563, 574 (9th Cir. 1990). A 28 complete failure of proof concerning an essential element of the nonmoving party's case necessarily 16 1 renders all other facts immaterial to entitle the moving party to summary judgment. Celotex Corp. v. 2 Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548 (1986). 3 [T]o carry its ultimate burden of persuasion on the motion, the moving party must persuade the 4 court that there is no genuine issue of material fact. Nissan Fire, 210 F.3d at 1102; see High Tech 5 Gays, 895 F.2d at 574. As to materiality, the substantive law will identify which facts are material. 6 Only disputes over facts that might affect the outcome of the suit under the governing law will properly 7 preclude the entry of summary judgment. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. 8 If a moving party fails to carry its initial burden of production, the nonmoving party has no 9 obligation to produce anything, even if the nonmoving party would have the ultimate burden of 10 persuasion at trial. Nissan Fire, 210 F.3d at 1102-1103; see Adickes, 398 U.S. at 160, 90 S.Ct. 1598. 11 If, however, a moving party carries its burden of production, the nonmoving party must produce 12 evidence to support its claim or defense. Nissan Fire, 210 F.3d at 1103; see High Tech Gays, 895 F.2d 13 at 574. If the nonmoving party fails to produce enough evidence to create a genuine issue of material 14 fact, the moving party wins the motion for summary judgment. Nissan Fire, 210 F.3d at 1103; see 15 Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548 (1986) (F.R.Civ.P. 56 mandates the entry 16 of summary judgment, after adequate time for discovery and upon motion, against a party who fails to 17 make the showing sufficient to establish the existence of an element essential to that party s case, and 18 on which that party will bear the burden of proof at trial. ) 19 But if the nonmoving party produces enough evidence to create a genuine issue of material fact, 20 the nonmoving party defeats the motion. Nissan Fire, 210 F.3d at 1103; see Celotex, 477 U.S. at 322, 21 106 S.Ct. 2548. The amount of evidence necessary to raise a genuine issue of material fact is enough 22 to require a jury or judge to resolve the parties differing versions of the truth at trial. Aydin Corp. 23 v. Loral Corp., 718 F.2d 897, 902 (quoting First Nat l Bank v. Cities Service Co., 391 U.S. 253, 288- 24 289, 88 S.Ct. 1575, 1592 (1968)). The mere existence of a scintilla of evidence in support of the 25 plaintiff s position will be insufficient. Anderson, 477 U.S. at 252, 106 S.Ct. 2505. 26 As discussed below, Gerawan has raised material factual issues, especially regarding likelihood 27 of confusion and dilution of the Prima trademarks to defeat summary judgment. 28 /// 17 1 Genericness Use Of Prima Fruit Variety 2 No Presumption Of Genericness 3 PBP argues that the Prima trademarks are associated with a varietal name to render them 4 automatically generic and part of the public domain. Generic marks are not capable of receiving 5 protection because they identify the product, rather than the product s source. KP Permanent Make-Up, 6 Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005); see First Sav. Bank, F.S.B. v. First 7 Bank System, Inc., 101 F.3d 645, 653-654 (10th Cir. 1996) ( The greater the number of identical or more 8 or less similar marks already in use on different kinds of goods, the less is the likelihood of confusion 9 between any two specific uses of the weak mark. ) 10 PBP contends that application of trademark law to plant variety names applies to likelihood of 11 confusion and dilution issues. PBP quotes from a treatise: Plant varietal names are generic designations 12 and cannot be registered as trademarks. 3 Callman on Unfair Competition, Trademarks & Monopolies 13 (4th ed. updated 2011), § 18:5. For decades the U.S. Patent and Trademark Office and case law have 14 treated varietal names as generic designations that do not and can not function as trademarks. Van Well 15 Nursery, Inc. v. Mony Life Ins. Co., 421 F.Supp.2d 1321, 1328 (E.D. WA 2006). 16 PBP argues that the Prima trademarks are generic because: 17 1. Gerawan incorporated Prima into five plant patent titles; 18 2. Generic fruit varietal names are stenciled on Gerawan display boxes; 19 3. The Federal Register lists Gerawan s fruit by their generic fruit varietal designations; 20 4. Gerawan s point-of-sale posters and website identify Gerawan fruit by generic varietal 21 22 23 designations; and 5. Fruit wholesaler and category buyers refer to Gerawan s produce by generic varietal designations. 24 Gerawan responds that mere association of a trademark with a varietal name does not forfeit 25 the trademark to the public domain. Gerawan argues that PBP s genericness defense is subject to 26 strict proof, which PBP lacks. Gerawan notes there is a strong presumption that a mark is not generic. 27 A certificate of registration of a mark . . . shall be prima facie evidence of the validity fo the registered 28 mark . . . 15 U.S.C. § 1057(b). A plaintiff alleging infringement of a federally-registered mark is 18 1 entitled to a presumption that the mark is not generic. Yellow Cab Co. of Sacramento v. Yellow Cab 2 of Elk Grove, Inc., 419 F.3d 925, 928 (9th Cir. 2005). A defendant may overcome the presumption by 3 showing by a preponderance of evidence that the term was or has become generic. Anti-Monopoly, Inc. 4 v. General Mills Fun Group, Inc., 684 F.2d 1316, 1319 (9th Cir. 1982), cert. denied, 459 U.S. 1227, 103 5 S.Ct. 1234 (1983). Whether a mark is generic is a question of fact. Stuhlbarg Int l Sales Co., Inc. v. 6 John D. Brush & Co., Inc., 240 F.3d 832, 840 (9th Cir. 2001). 7 The Ninth Circuit Court of Appeals has explained how to address genericness: 8 To determine whether a term has become generic, we look to whether consumers understand the word to refer only to a particular producer's goods or whether the consumer understands the word to refer to the goods themselves. . . . If the buyer understands the word to refer to the source of the goods, the term is not generic. However, if the disputed term is identified with all such goods or services, regardless of their suppliers, it is generic. 9 10 11 12 KP Permanent Make-Up, 408 F.3d at 604 (internal quotation marks and citation omitted). 13 15 U.S.C. § 1064(3) also provides: 14 A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. 15 16 17 18 Moreover, a mark is deemed abandoned [w]hen any course of conduct of the owner, including 19 acts of omission as well as commission, causes the mark to become the generic name for the goods or 20 services on or in connection with which it is used or otherwise to lose its significance as a mark. 21 Purchaser motivation shall not be a test for determining abandonment under this paragraph. 15 U.S.C. 22 § 1127. 23 24 25 26 27 28 Plant Patents As to genericness of plant patents, PBP points to the Trademark Manual of Examining Procedure, § 1202.12, at 1200-108-109 (7th ed. 2010), which provides in part: Varietal or cultivar names are designations given to cultivated varieties or subspecies of live plants or agricultural seeds. They amount to the generic name of the plant or seed by which the variety is known to the public. These names can consist of a numeric or alphanumeric code or can be a fancy arbitrary name. The terms varietal and cultivar may have slight semantic differences but pose indistinguishable issues and are 19 1 treated identically for trademark purposes. . . . 2 A varietal or cultivar name is used in a plant patent to identify the variety. Thus, even if the name was originally arbitrary, it describe[s] to the public the [plant] of a particular sort, not a [plant] from a particular [source]. Dixie Rose [Nursey v. Coe], 131 F.2d 446, 447, 55 U.S.P.Q. 315, 316 (App. D.C. 1942)]. It is against public policy for any one supplier to retain exclusivity in a patented variety of plant, or the name of a variety, once its patent expires. . . . 3 4 5 6 PBP also points to the following from the Trademark Manual of Examining Procedure, § 1202.13: If 7 the examining attorney determines that the wording to be registered as a mark for live plants, agricultural 8 seeds, fresh fruits, or fresh vegetables comprises a varietal or cultivar name, then the examining attorney 9 must refuse registration, or require a disclaimer, on the ground that the matter is the varietal name or the 10 goods and does not function as a trademark under §§ 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 11 1051, 1052, and 1127. 12 PBP argues that Gerawan s insertion of Prima as a descriptive patent name for its proprietary 13 fruit undermines the Prima trademarks as a source-identifier of its stone fruit and table grape produce. 14 PBP notes that Gerawan included Prima on three plum patent applications in 1990, used 15 alphanumerical 7-B for its next plum patent in 1996, used Prima Gattie to name a peach tree patent 16 in 1996, and used Prima Diamond for its nectarine patent application in 1999. PBP points out that 17 grocery store wholesalers and retailers understand and refer to Gerawan s fruit produce by their varietal 18 designations. PBP concludes that the Prima name is inextricably linked to generic fruit variety 19 designations and cannot simultaneously function as Prima trademarks. 20 Gerawan responds that PBP s reference to section 1202.12 of the Trademark Manual of 21 Examining Procedure is incomplete in that excludes the following regarding the USPTO s burden to 22 inquire of the applicant if the examining attorney believes an issue exits: 23 24 25 26 Market realities and lack of laws concerning the registration of varietal and cultivar names have created a number of problems in this area. Some varietal names are not attractive or easy to remember by the public. As a result, many arbitrary terms are used as varietal names. Problems arise when trademark registration is sought for varietal names, when arbitrary varietal names are thought of as being trademarks by the public, and when terms intended as trademarks by plant breeders become generic through public use. These problems make this a difficult area for the examining attorney in terms of gathering credible evidence and knowing when to make refusals. 27 28 Whenever an application is filed to register a mark containing wording for live plants, 20 1 2 agricultural seeds, fresh fruits, or fresh vegetables, the examining attorney must inquire of the applicant whether the term has ever been used as a varietal name, and whether such name has been used in connection with a plant patent, a utility patent, or a certificate for plant variety protection. 3 4 Trademark Manual of Examining Procedure, § 1202.12. 5 Gerawan explains that Prima was an established trademark for 18 years, and federally registered 6 for three years, prior to the first Prima-associated patent with a varietal name. Gerawan notes that is uses 7 Prima for all its fruit, not merely fruit produced from threes covered by its five plant patents. Gerawan 8 continues that a varietal name can be marketed with a trademark and that such trademark is not 9 necessarily part of the varietal denomination. Gerawan points out that its varietal names are Diamond 10 19, Gattie, Black Plum 8-15, Black Plum 5-25, and Red Plum 9-1 and that its trademark is Prima. 11 This Court agrees with Gerawan that PBP has failed to establish that Gerawan s plant patents 12 render the Prima trademarks generic. Of key importance is Prima s pre-existence to the patents. The 13 record reveals that Gerawan has used Prima since the 1960s and the Prima work mark was registered 14 in 1987, no less than three years prior to the first patent filing. PBP fails to demonstrate that the patents 15 cause consumers to associate Prima with fruits subject to the patents, rather than Gerawan, the fruit s 16 source. The evidence raises inferences that patents are associated with Gerawan, not Prima. PBP fails 17 to bridge a solid connection from the patents to Prima as a mere good, that is, fruits. See In re Stark 18 Bro s Nurseries & Orchards Co., 132 U.S.P.Q. 652, 653 (1962) ( It is, moreover, incongruous, to say 19 the least, to suppose that a single designation, such as STARKRIMSON , would or could be used and 20 be considered in the trade or by the purchasing public as a varietal name for three distinctively different 21 types of plants and/or trees. ) 22 23 24 In addition, Gerawan further validates existence of a dispute as to whether the public perceives Prima as a brand of produce or as a generic plant varietal name in that: 1. 25 Gerawan uses the Prima trademarks for all its fruit, not merely fruit from plum, nectarine and peach trees subject to the five plant patents; 26 2. The Prima trademarks are used for grapes which are not covered by plant patents; 27 3. Gerawan uses the Prima logo with federal registration symbol on its marketing materials 28 and boxes and labels, which is consistent with the produce industry; and 21 1 4. Gerawan uses the Prima trademarks on a number of non-produce items, including boxes, 2 buildings, website, labels, tags, recipe cards, pallets, clothing, headwear, pens, beverage 3 containers, computer bags, paper tablet holder for sales and marketing, air pillows for 4 shipping, fruit stickers, posters, business cards, <prima.com> email address, large retail 5 store banners, letterhead, brochures, tissue paper, packing top sheets, trays, print 6 advertisements, pallets and computer services. 7 8 At a minimum, factual issues exist whether the Prima trademarks are generic based on association with varietal names. 9 10 11 Likelihood Of Confusion PBP argues that Gerawan, is unable to establish as a matter of law confusion of the Prima and Prima Bella trademarks. 12 15 U.S.C. § 1125(a) provides: 13 Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which 14 15 16 17 18 19 20 (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. (Bold added.) 21 22 A trademark's function is to identify and distinguish the goods or services of one seller from 23 another. General Conference Corp. of Seventh-Day Adventists v. Seventh-Day Adventist, 887 F.2d 228, 24 231 (9th Cir. 1989), cert. denied, 493 U.S. 1079, 110 S.Ct. 1134 (1990). The test of trademark 25 infringement under state, federal, common law is whether there will be a likelihood of confusion. M2 26 Software, Inc. v. Madacy Entertainment, 421 F.3d 1073, 1080 (9th Cir. 2005), cert. denied, 547 U.S. 27 1069 (2006). The core element of trademark infringement is the likelihood of confusion, i.e., whether 28 the similarity of the marks is likely to confuse customers about the source of the products. Brookfield 22 1 Communications, 174 F.3d at 1045. [U]nder the Lanham Act, 15 U.S.C. § 1125(a), the ultimate test 2 is whether the public is likely to be deceived or confused by the similarity of the marks. New West Corp. 3 v. NYM Co. of California, Inc., 595 F.2d 1194, 1201 (9th Cir. 1979). Whether we call the violation 4 infringement, unfair competition or false designation of origin, the test is identical is there a likelihood 5 of confusion? New West, 595 F.2d at 1201. 6 The Lanham Act seeks to prevent consumer confusion that enables a seller to pass off his goods 7 as the goods of another. . . . [T]rademark infringement protects only against mistaken purchasing 8 decisions and not against confusion generally. Lang v. Ret. Living Publ'g Co., Inc., 949 F.2d 576, 9 582-83 (2nd Cir.1991) (internal quotation marks and citation omitted). 10 The Ninth Circuit Court of Appeals employs an eight-factor test ( Sleekcraft factors) to 11 determine likelihood of confusion. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 632 (9th Cir. 2008); 12 Brookfield Communications, 174 F.3d 1036, 1053-1054. The factors are: 13 1. The mark s strength; 14 2. The goods proximity or relatedness; 15 3. The marks similarity; 16 4. Evidence of actual confusion; 17 5. Marketing channels used to sell respective goods; 18 6. Type of goods and degree of care likely to be exercised by purchaser; 19 7. Defendant s intent to select the mark; and 20 8. Likelihood of expansion of product lines. 21 Jada Toys, 518 F.3d at 632 (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348, 349 (9th Cir. 1979)); 22 Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). 23 The likelihood of confusion test is pliant and [s]ome factors are much more important than 24 others, and the relative importance of each individual factor will be case-specific. Brookfield 25 Communications, 174 F.3d at 1054. The Ninth Circuit has never countenanced a likelihood of 26 confusion determination based on a consideration of dissimilarity alone or, indeed, on the consideration 27 of any single factor. Jada Toys, 518 F.3d at 632. The Ninth Circuit regularly applies all relevant 28 factors, noting that a final likelihood of confusion determination may rest on those factors that are of the 23 1 most relative importance in any particular case. Jada Toys, 518 F.3d at 632-633; see Eclipse Assocs. 2 Ltd. v. Data General Corp., 894 F.2d 1114, 1118 (9th Cir. 1990) ( Our court has never articulated 3 specific factors that a district court must recite and apply, instead, we have identified a non-exclusive 4 series of factors that are helpful in making the ultimate factual determination. ) 5 With these standards in mind, this Court turns to application of the Sleekcraft factors. 6 Strength Of The Prima Trademarks 7 PBP argues that Gerawan s Prima trademarks are conceptually and commercially weak and 8 that the Prima Bella trademarks are not likely to cause any confusion with Gerawan s weak, generically- 9 eroded Prima mark. Gerawan responds that the Prima trademarks are arbitrary as applied to fresh 10 produce and thus are extremely strong. 11 The purpose of examining the strength of the plaintiff's mark is to determine the scope of 12 trademark protection to which the mark is entitled. . . .The more unique the mark, the greater the degree 13 of protection. Surfvivor Media, 406 F.3d at 631. A strong mark is afforded the widest ambit of 14 protection from infringing uses. Sleekcraft, 599 F.2d 349. 15 strongest to weakest, of arbitrary, fanciful, suggestive, descriptive and generic. Surfvivor Media, 406 16 F.3d at 631-632; GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000). Trademarks are divided into categories, from 17 The two strongest sets of marks are arbitrary and fanciful marks, which trigger the highest 18 degree of trademark protection. Surfvivor Media, 406 F.3d at 631. Arbitrary marks are common 19 words that have no connection with the actual product for example, Dutch Boy paint. Dreamwerks 20 Production, 142 F.3d at 1130, n. 7. Fanciful marks consist of coined phrases that also have no 21 commonly known connection with the product at hand. Examples of fanciful marks include Kodak 22 cameras or Aveda skin care products. Surfvivor Media, 406 F.3d at 632. 23 Suggestive marks do not describe the product's features but suggest [ ] them. 24 Kendall-Jackson Winery v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 n. 8 (9th Cir.1998) (emphasis 25 omitted). Imagination is required to associate a suggestive mark with the product. Examples include 26 Slickcraft boats or Air Care, for a service that maintains medical equipment for administering 27 oxygen. Surfvivor Media, 406 F.3d at 632. 28 Descriptive marks define a particular characteristic of the product in a way that does not 24 1 require exercise of imagination. Kendall-Jackson Winery, 150 F.3d at 1047, n. 8. An example of a 2 descriptive mark is Honey Roasted for nuts roasted with honey. Surfvivor Media, 406 F.3d at 632. 3 Because these marks merely describe a characteristic of the product, they do not receive any trademark 4 protection unless they acquire sufficient secondary meaning to create an association between the mark 5 and the product. Surfvivor Media, 406 F.3d at 632. 6 Generic marks describe the product in its entirety and are not entitled to trademark protection. 7 Surfvivor Media, 406 F.3d at 632. Examples include Liquid controls for equipment that dispenses 8 liquid, or Multistate Bar Examination for a bar examination that may be taken across multiple states. 9 Surfvivor Media, 406 F.3d at 632.; see Nat'l Conf. of Bar Examiners v. Multistate Legal Stud., Inc., 692 10 F.2d 478, 488 (7th Cir.1983), cert. denied, 464 U.S. 814, 104 S.Ct. 69 (1983). 11 A mark s strength is discussed or evaluated in terms of conceptual strength and commercial 12 strength. Conceptual strength relates to the distinctiveness of the mark, for example whether the mark 13 is arbitrary or fanciful, or is suggestive, or is merely descriptive. Playmakers, LLC v. ESPN, Inc., 14 297 F.Supp.2d 1277, 1281 (W.D. WA 2003). A mark may also acquire strength through its use in the 15 marketplace, otherwise known and commercial strength; this acquired strength can be shown through 16 length and manner of use of the mark, the amount and volume of advertising, and the volume of sales. 17 Playmakers, 297 F.Supp.2d at 1281. An incontestable mark may be sufficiently strong for registration 18 purposes, i.e. not generic, but may still be relatively weak for likelihood of confusion purposes. 19 Playmakers, 297 F.Supp.2d at 1281. 20 PBP argues that the Prima trademarks are extraordinarily weak in that prima is derived 21 etymologically from the Latin word primus which means prime. PBP contends that prima connotes 22 first, prime or premier goods or services with an international flavor. PBP notes that Gerwan s 23 point-of-sale posters pick up on this close etymological and alliterative connection by equating prima 24 and prime. PBP contends that the Prima Bella trademarks are conceptually and commercially strong 25 in that they have no meaning as it relates to corn produce and the grocery produce industry recognizes 26 Prima Bella as PBP s brand name given PBP s significant sales using the Prima Bella trademarks. 27 Gerawan responds that the Prima trademarks strength is demonstrated by use of Prima for 40 28 years, significant sales of Prima branded products, consumer compliments and demand for Prima 25 1 products, Gerawan s use of a family of Prima marks on multiple products, and Gerawan s significant 2 share of stone fruit and grape markets. Gerawan equates its use of prima for fresh fruits to the use 3 of apple for computers. To address strength of the Prima trademarks, Gerawan criticizes PBP s 4 reliance on third-party Prima trademark registrations as irrelevant without evidence as to the third- 5 party trademarks current use, history, subject goods or services, promotion, and consumer recognition 6 of them. Gerawan further criticizes PBP s internet search results as pages that may mention prima , 7 but do not show use of prima as a trademark or the extent of that use by third parties. Gerawan 8 concludes material factual issues exist regarding the strength of the Prima trademarks. 9 Contrary to PBP s claims, the record reveals that the Prima trademarks are strong and that at a 10 minimum, there are factual issues whether the Prima trademarks are arbitrary, at least in the produce 11 industry. Food Lion s Mr. Scott confirmed the ready appearance of the Prima logo on Gerawan boxes 12 and stickers and customer requests for Prima produce grown by the Gerawan name. Fruit buyer Mr. 13 Weiler also confirmed that Prima is a major brand in the produce industry. The commercial strength of 14 the Prima trademarks is further evidenced by Gerawan s significant stone fruit and grape sales over 40 15 years. The strength of trademark factor weighs in Gerawan s favor. 16 17 18 Proximity Or Relatedness PBP contends that the proximity or relatedness of goods factor does not support likelihood of confusion of the Prima and Prima Bella trademarks. 19 When the goods produced by the alleged infringer compete for sales with those of the trademark 20 owner, infringement usually will be found if the marks are sufficiently similar that confusion can be 21 expected. Sleekcraft, 599 F.2d at 348. The more closely related the goods are, the more likely 22 consumers will be confused by similar marks. Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 23 (9th Cir. 2002). Related goods are those products which would be reasonably thought by the buying 24 public to come from the same source if sold under the same mark. Sleekcraft, 599 F.2d at 348, n. 10. 25 In practice, this definition does not necessarily require a close proximity before goods will be found 26 related. Entrepreneur Media, 279 F.3d at 1147. 27 The standard to decide whether goods are related is whether customers are likely to associate 28 the two product lines. Surfvivor, 406 F.3d at 633. In addressing the proximity/relatedness factor, a 26 1 court must consider whether the buying public could reasonably conclude that the products came from 2 the same source. Surfvivor, 406 F.3d at 633. 3 Proximity of the parties' goods exists where they are (1) complementary, (2) sold to the same 4 class of purchasers, or (3) are similar in use or function. Matrix Motor Co., Inc. v. Toyota Jidosha 5 Kabushiki Kaisha, 290 F.Supp.2d 1083, 1092 (C.D. Cal. 2003). The mere fact that two products or 6 services fall within the same general field . . . does not mean that the two products or services are 7 sufficiently similar to create a likelihood of confusion. Harlem Wizards Entm't Basketball, Inc. v. NBA 8 Props., 952 F.Supp. 1084, 1095 (D.N.J.1997). Meaningful differences between the products and 9 services are often cited as a factor tending to negate reverse confusion, even when the products are 10 superficially within the same category. Harlem Wizards Entm't Basketball, 952 F.Supp. at 1095. 11 PBP argues that fruit and vegetable produce are not complementary and that commonality of 12 goods sold in some of the same grocery stores and by some the same mass merchandising retailers does 13 not satisfy this factor. PBP points to the deposition testimony of Food Lion s Mr. Scott that Food Lion 14 does not promote fruits and vegetables together as a tie in and that fruits and vegetables generally do not 15 appear in a single display. PBP notes its corn produce s distinguishable display in the refrigerated wet 16 rack, whereas Gerawan s fruit produce is typically displayed in boxes and with the grocery store 17 signage that refers to the produce emanating from California. 18 Gerawan contends that fruits and vegetables are related in that: 19 1. Many companies market and sell fruits and vegetables under the same brand; 20 2. Several companies own trademark registrations that are used and registered for fruits and 21 vegetables, including corn; 22 3. Fruits and vegetables are frequently advertised together; 23 4. Fruits and vegetables are sold in the same produce sections of retail outlets; 24 5. Fruits and vegetables are exhibited in trade shows, often next to each other; 25 6. Gerawan has grown fruits and vegetables; and 26 7. Some of PBP s growers grow fruits and vegetables. 27 28 Gerawan concludes that fruits and vegetables are complementary and sold and used together. There is no doubt that fruits and vegetables are sold collectively in produce sections of retail 27 1 outlets. Food Lion s Mr. Scott noted that corn is not sold side by side with peaches, plums, nectarines 2 or grapes but rather within 20 feet of such fruits. 3 At a minimum, factual issues arise whether corn and stone fruit/grapes compete for sales among 4 the same class of customers. A consumer may be faced with the choice of serving PBP s corn on the 5 cob or a fruit salad using Gerawan s stone fruit and grapes. As such, a close relationship between PBP s 6 corn and Gerawan s stone fruit/grapes arises, or at least, a factual issue arises as to the degree of 7 closeness of their relationship. The proximity of the parties products in produce sections of grocery 8 stores suggests a relatedness of the products. PBP offers nothing to suggest that purchasers of its corn 9 are in a class distinct from purchasers of Gerawan s stone fruit and grapes. The proximity/relatedness 10 factor tips in Gerawan s favor. 11 12 13 Similarity Of Marks PBP contends that Gerawan s Prima trademarks and PBP s Prima Bella trademarks are dissimilar as they appear in the marketplace and regarding their respective sight, sound and meaning. 14 The most important factor in any likelihood of confusion analysis is the similarity of the marks. 15 Without similarity, there can be no confusion. Playmakers, 297 F.Supp.2d at 1282. Obviously, the 16 greater the similarity between the two marks at issue, the greater the likelihood of confusion. 17 GoTo.com, 202 F.3d at 1206. The Ninth Circuit has developed axioms to guide the comparison: 1) 18 Marks must be considered in their entirety as they appear in the marketplace; 2) Similarity is adjudged 19 in terms of appearance, sound, and meaning; and, 3) Similarities weighed more heavily than 20 differences. GoTo.com, 202 F.3d at 1206. PBP quotes the following from 4 McCarthy on Trademarks 21 and Unfair Competition (4th ed. updated 2011), § 23:41: [C]onflicting marks must be compared in their 22 entireties. A mark should not be dissected or split up into its component parts and each part then 23 compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. 24 It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the 25 parts thereof, that is important. 26 PBP argues that its Glori Ann word mark constitutes its housemark and must be analyzed in 27 that its is more prominently displayed on PBP s packaged, fresh sweet corn. Emphasis on house marks 28 has the potential to reduce or eliminate likelihood of confusion. Cohn v. Petsmart, Inc., 281 F.3d 837, 28 1 842 (9th Cir. 2002) (citation omitted). PBP characterizes the Glori Ann word mark as what the end- 2 consumer sees and experiences in the real marketplace. 3 PBP contends that the Prima and Prima Bella trademarks are quite dissimilar given differences 4 in their fonts, color schemes and ornamental features. PBP notes that the cotyledon10 design of the 5 Prima Bella logo evokes the tassel and leaves of corn stalk. PBP points to the dissimilar sounding of 6 Prima and Prima Bella given Prima s two abrupt syllables and Ms. Bacchetti s choice of Prima Bella 7 because it flows right of the tip of your tongue. PBP distinguishes the meanings of Prima and Prima 8 Bella in that Prima means prime and Prima Bella means first beautiful with no specific meaning 9 as applied to agricultural products. 10 Gerawan responds that the dominant portion of the Prima and Prima Bella trademarks is the 11 distinctive Prima element. PBP s Prima Bella mark is only distinguishable for its use of the laudatory, 12 descriptive term Bella, which does not serve to distinguish it from Plaintiff s Prima marks. Gerawan 13 continues that Prima Bella s different appearance on packaging does not negate the likelihood of 14 confusion, since consumers are likelier to remember the word itself than how it is depicted. Gerawan 15 contends that PBP s Glori Ann house mark does not absolve PBP of liability as the Glori Ann word 16 mark is similar to Gerawan s Lor Ann mark which Gerawan had used until recently.11 17 There is no less than a factual issue whether Prima and Prima Bella are similar in sight and 18 sound. Prima and Prima Bella clearly share Prima, with the addition of Bella as the only distinction. 19 Although the Prima and Prima Bella logos use different fonts and styles, they share Prima to raise a 20 factual issue as to similarity. However, Gerawan fails to raise factual issues as the similarity of the Glori 21 Ann word mark. Gerawan merely offers that until recently, it has used Lor Ann but offers nothing to 22 place such mark in the produce context. Gerawan s acknowledgment that it ceased using Lor Ann more 23 /// 24 /// 25 /// 26 10 27 28 PBP explains that cotyledon is defined as a leaf of the embryo of a seed plant, which upon germination either remains in the seed or emerges, enlarges and becomes green. 11 PBP notes that Gerawan has not used Lor Ann for two years. 29 1 than two years ago demonstrates the lack of relevance of the Lor Ann mark.12 Based strictly on factual 2 issues surrounding the Prima and Prima Bella trademarks, the similarity factor weighs in Gerawan s 3 favor. 4 5 6 Actual Confusion PBP challenges Gerawan s ability to demonstrate actual consumer confusion between the Prima and Prima Bella trademarks. 7 Evidence of actual confusion by consumers is strong evidence of likelihood of confusion. 8 Surfvivor, 406 F.3d at 633. In addressing actual confusion, a court may consider whether merchants 9 and non-purchasing members of the public, as well as actual consumers, were confused. Surfvivor, 406 10 F.3d at 633. Proving actual confusion is difficult, however . . . and the courts have often discounted 11 such evidence because it was unclear or insubstantial. Sleekcraft, 599 F.2d at 352. Evidence that use 12 of the two marks has already led to confusion is persuasive proof that future confusion is likely. 13 Sleekcraft, 599 F.2d at 352. However, actual confusion is not necessary to a finding of likelihood of 14 confusion under the Lanham Act. Academy of Motion Picture Arts & Sciences v. Creative House 15 Promotions, Inc., 944 F.2d 1446, 1456 (9th Cir.1991) (citing American Int'l Group, Inc. v. American 16 Int'l Bank, 926 F.2d 829, 832 (9th Cir.1991)). 17 PBP argues that no evidence of actual consumer confusion has emerged despite the presence 18 of the parties respective fruit and vegetable produce in the marketplace since early 2002. PBP points 19 to the absence Gerawan s survey evidence to support its claim and the passage of time since Gerawan 20 and PBP s products became available in the marketplace. We cannot think of more persuasive evidence 21 that there is no likelihood of confusion between these two marks than the fact that they have been 22 simultaneously used for five years without causing any consumers to be confused as to who makes 23 what. Brookfield Communications, 174 F.3d at 1050. PBP further notes there is no direct evidence of 24 actual confusion, such as, misdirected letters or telephone calls or inquiries whether PBP and Gerawan 25 are associated. 26 27 28 12 This Court s comments on the Glori Ann and Lor Ann marks are restricted to the similarity of marks factor in the Sleekcraft analysis. PBP did not seek summary adjudication as to the Glori Ann or Lor Ann marks, and the Lor Ann mark does not appear subject to the FAC s claims and thus is irrelevant. 30 1 As to confusion, Gerawan points to the declaration of Food Lion s Mr. Scott: The first time I 2 heard of Prima Bella Produce in connection with produce, I immediately thought of Gerawan s Prima 3 produce and wondered if the two were related in some manner. Likelihood of confusion will be found 4 whenever consumers are likely to assume that a mark is associated with another source or sponsor 5 because of similarities between the two marks. Academy of Motion Picture Arts & Sciences, 944 F.2d 6 at 1456. Gerawan concludes that the actual confusion factor is neutral to the parties. 7 Gerawan appears to concede the absence of evidence of actual confusion. Gerawan merely relies 8 on Mr. Scott s association of Prima Bella with Gerawan. PBP astutely notes the co-existence of Prima 9 and Prima Bella trademarks in the produce market since 2002 and the absence of survey evidence and 10 misdirected communications and inquiries. There is no evidence to suggest actual confusion between 11 the Prima and Prima Bella trademarks. The actual confusion element weighs in PBP s favor. 12 Martketing Channels 13 PBP contends that its and Gerawan s marketing channels do not meaningfully converge or 14 create any likelihood of confusion in that Gerawan offers seasonal fruit that generally occupies much 15 different shelf space. 16 A court must determine whether the parties distribute their goods in the same marketing 17 channels. Surfvivor, 406 F.3d at 633. Convergent marketing channels increase the likelihood of 18 confusion. Sleekcraft, 599 F.2d at 353. 19 PBP urges this Court to concentrate on the parties marketings. PBP notes that Gerawan s 20 marketing for its seasonal fruits differs from PBP s marketing for its corn products which are available 21 all year. PBP points to Gerawan s marketing emphasis on California fruit and that Gerawan s 22 website and promotional materials do not mention any farming or sales of vegetable produce. PBP 23 further points to Gerawan s spending relatively little money on product advertising. 24 25 Gerawan notes that Gerawan s and PBP s produce products are sold in identical or related retail outlets and that Gerawan and PBP share 17 customers. 26 PBP s corn and Gerawan s stone fruit and grapes share similar market channels, that is, produce 27 sections of retail outlets. The record reveals that PBP s and Gerawan s products are sold in close 28 physical proximity. Their marketing channels converge, and this factor weighs in Gerawan s favor. 31 1 2 3 Customer Care PBP argues that grocery store customers will exercise ordinary care to purchase fresh vegetable and fruit produce to negate likelihood of confusion between the Prima and Prima Bella trademarks. 4 In analyzing the degree of care that a consumer might exercise in purchasing the parties goods, 5 the question is whether a reasonably prudent consumer would take the time to distinguish between the 6 two product lines. Surfvivor, 406 F.3d at 634. [W]hen dealing with inexpensive products, customers 7 are likely to exercise less care, thus making confusion more likely. Resource Lenders, Inc. v. Source 8 Solutions, Inc., 404 F.Supp.2d 1232, 1245 (E.D. Cal. 2005). 9 PBP points to the deposition testimony of Food Lion fruit category manager Mr. Scott that 10 grocery produce customers are sophisticated and should probably get a little more credit than we give 11 them. . . . I think they re looking at the fruit as a piece of fruit. Does it have good color? Is it a good 12 size? Is it not bruised? Is it not leaking? Does it have stem punctures? I think that s what they re 13 looking at. PBP notes that typical customers purchase PBP s packaged corn with distinctive Glori 14 Ann house mark logo and the Prima Bella trademarks and know they are purchasing corn. 15 16 17 Gerawan argues that since the Gerawan s and PBP s products are inexpensive, their customers are not sophisticated. The parties offer no meaningful evidence regarding sophistication of produce buyers. Mr. Scott 18 suggests that produce customers are discerning, and Gerawan does not dispute such suggestion. 19 Nonetheless, produce is relatively inexpensive and does not require sophistication to evaluate. The 20 customer care and sophistication factor is neutral to the parties. 21 PBP s Intent 22 PBP argues that it had no intent to deceive the public with the Prima Bella trademarks and that 23 Gerawan fails to challenge Mr and Ms. Bacchetti s testimony regarding how they chose their Prima 24 Bella Produce tradename. 25 Although an intent to confuse consumers is not required for a finding of trademark 26 infringement, Brookfield Communications, 174 F.3d at 1059, intent to deceive is strong evidence of 27 a likelihood of confusion, Interstellar Starship Services, Ltd. v. Epix Inc., 184 F.3d 1107, 1111 (9th Cir. 28 1999). When the alleged infringer knowingly adopts a mark similar to another s, reviewing courts 32 1 presume that the defendant can accomplish his purpose: that is, that the public will be deceived. 2 Sleekcraft, 599 F.2d at 354. The issue is not that an intent to confuse is relevant as some measure of 3 culpability. Rather, the alleged infringer s judgment as to what is likely to be confusing is relevant 4 because it may well be accurate. Entrepreneur Media, 279 F.3d at 1148. Where an alleged infringer 5 chooses a mark he knows to be similar to another, one can infer an intent to confuse. Entrepreneur 6 Media, 279 F.3d at 1148. 7 PBP contends it adopted its Prima Bella trademarks in good faith and that Gerawan is unable to 8 establish PBP s bad faith to adopt the Prima Bella trademarks. PBP notes that Ms. Bacchetti chose 9 Prima Bella to add to the pre-existing Bella name that had served as a trademark and root for other 10 related company tradenames. PBP points out that it obtained USPTO trademark registration for the 11 Prima Bella trademarks without USPTO trademark examiner mention of an impediment raised by 12 Gerawan s Prima trademarks. 13 Gerawan faults PBP s failure to perform a trademark search or consult a trademark lawyer to 14 unveil Gerawan s federal trademark registrations for some of the Prima marks. Gerawan claims that 15 PBP had actual and constructive notice of the Prima trademarks. 16 Gerawan points to no meaningful evidence that PBP intended to deceive produce buyers and to 17 trade on Gerawan s goodwill. For the Prima Bella choice, Ms. Bacchetti offers a logical explanation free 18 of bad intent. Ms. Bacchetti consulted an outside accountant who informed her that Prima Bella was 19 not used as a California corporate name. In the absence of evidence to suggest that PBP choose Prima 20 Bella to create confusion with Prima, the intent factor weighs in PBP s favor. 21 22 23 Product Lines Expansion PBP argues that Gerawan has produced no tangible plans showing a strong possibility of expanding into growing and selling fresh vegetable produce. 24 The likelihood of expansion factor addresses whether existence of the allegedly infringing mark 25 is hindering the plaintiff s expansion plans. Surfvivor, 406 F.3d at 634. A strong possibility that 26 either party may expand his business to compete with the other will weigh in favor of finding that the 27 present use is infringing. Sleekcraft, 599 F.2d at 354. 28 PBP contends that Gerawan produced no credible evidence of any tangible plan to grow and sell 33 1 fresh vegetable produce. 2 Gerawan notes that it previously sold vegetables under the Prima trademarks and that Ray 3 Gerawan had recent discussions with Gerawan s general ranch manager to produce cauliflower and 4 broccoli. 5 Gerawan points to no concrete plans to expand into vegetable production. Of key importance, 6 Gerawan has no apparent plans to produce corn. As such, the product lines expansion factor weighs in 7 PBP s favor. 8 An analysis of the Sleekcraft factors raises no less than factual issues to defeat summary 9 judgment on the likelihood of confusion issue. Given the disfavor of summary judgment in trademark 10 infringement actions and factual issues noted above, this Court is not in a position to grant PBP summary 11 judgment on the issue of likelihood of confusion. 12 Priority Rights For Fresh Vegetable Produce 13 PBP argues that Gerawan is barred to claim priority rights for its Prima trademarks for fresh 14 vegetables because Gerawan ceased using its Prima trademarks for fresh vegetable produce no later than 15 1980. According to PBP, Gerawan misled the USPTO and public that Gerawan used the Prima 16 trademarks for vegetable produce when it was not. 17 PBP notes that under 15 U.S.C. § 1115(b), after filing of an affidavit of continuous mark use for 18 five years for those good or services stated in the registration pursuant to 15 U.S.C. § 1065, the 19 trademark becomes incontestible. Prior to such time, the U.S. trademark registration is prima facie 20 evidence of the registrant s exclusive right to use the registered trademark in connection with the 21 goods or services specified in the registration . . . 15 U.S.C. § 1115(a). 22 Gerawan s Prima word mark issued in 1987 to include a number of fresh vegetables. PBP argues 23 that when Gerawan applied for its Prima word mark in 1985, it had already ceased using the Prima 24 work mark for fresh vegetable produce and could not truthfully aver that it was presently using the 25 mark in connection with fresh vegetable produce when it applied for the Prima word mark. PBP points 26 to Dan Gerawan s acknowledgment in his deposition that Gerawan had been out of vegetables for 30 27 years and that a 1993 affidavit of use was incorrect as to vegetables. 15 U.S.C. § 1127 addresses 28 trademark abandonment and provides: Nonuse for 3 consecutive years shall be prima facie evidence 34 1 of abandonment. Use of a mark means the bona fide use of such mark made in the ordinary course of 2 trade, and not made merely to reserve a right in a mark. 3 Based on Gerawan s abandonment of the Prima word mark as to vegetables, PBP contends that 4 it is the senior user with priority rights for use of its Prima Bella trademarks in connection with fresh 5 vegetable produce. PBP continues that [b]ased on equitable principles of equitable estoppel, unclean 6 hands, laches, and trademark misuse, Gerawan cannot claim a priority entitlement vis-a-vis Prima Bella 7 regarding product expansion rights in the fresh vegetable category. 8 Gerawan responds that PBP offers a non-sensical hodgepodge of legal principals related to 9 trademark law, supplemented with an undefined combination of other trademark-related doctrines on 10 which PBP will bear the burden at trial. Gerawan argues that PBP s selling of vegetables and 11 Gerawan s primary fruit sales do not entitle PBP to priority over Gerawan as to vegetables in that the 12 parties respective goods are related. 13 Gerawan characterizes the essence of PBP s claims as fraudulent procurement in that, using 14 Gerawan s words, Gerawan made fraudulent statements to the USPTO by claiming use of the Prima 15 word mark for fresh vegetables when Gerawan had already ceased such use. A party may seek 16 cancellation of a registered trademark on the basis of fraud under 15 U.S.C. § 1064(c) by proving a false 17 representation regarding a material fact, the registrant's knowledge or belief that the representation is 18 false, the intent to induce reliance upon the misrepresentation and reasonable reliance thereon, and 19 damages proximately resulting from the reliance. Robi v. Five Platters, Inc., 918 F.2d 1439, 1444 (9th 20 Cir. 1990). Fraud in procurement of a trademark registration may be raised as a ground for cancellation 21 in civil litigation, in which case it may function as a defense to a claim of trademark infringement. 22 eCash Techs., Inc. v. Guagliardo, 127 F.Supp.2d 1069, 1079 (C.D. Cal. 2000). The defense is 23 disfavored, however, and carries a heavy burden of proof. Hana Financial, Inc. v. Hana Bank, 500 24 F.Supp.2d 1228, 1233-1234 (C.D. Cal. 2007) (citing Robi, 918 F.2d at 1444). Gerawan concludes that 25 deleting vegetables from its trademark registration was not nefarious. 26 This Court agrees with Gerawan that there is an absence of evidence of fraud to support PBP s 27 priority theory. Gerawan s inclusion of vegetables in its trademark registration was inaccurate but 28 nothing suggests that such inclusion satisfies elements of fraudulent procurement. PBP s claims of 35 1 2 3 4 priority appear at best as a distraction. Likelihood Of Dilution PBP challenges Gerawan s ability to demonstrate a likelihood of dilution of the Prima trademarks because the Prima trademarks are not famous to render them subject to dilution. 5 Dilution refers to the diminution of a trademark s value when it is used to identify different 6 products. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903 (9th Cir. 2002), cert. denied, 537 U.S. 7 1171 (2003). Dilution protects owners from an appropriation of or free riding on the substantial 8 investment that they have made in their marks. I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27, 50 9 (1st Cir.1998). In Mattel, 296 F.3d at 903, the Ninth Circuit explained: 10 11 12 13 For example, Tylenol snowboards, Netscape sex shops and Harry Potter dry cleaners would all weaken the commercial magnetism of these marks and diminish their ability to evoke their original associations. Ralph S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 Yale L.J. 1165, 1187 (1948), reprinted in 108 Yale L.J. 1619 (1999). These uses dilute the selling power of these trademarks by blurring their uniqueness and singularity, Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L.Rev. 813, 831 (1927), and/or by tarnishing them with negative associations. 14 15 With the enactment of the Federal Trademark Dilution Act in 1996, the Lanham Act expanded 16 to permit famous mark owners to obtain injunctive relief against another s commercial use of the mark 17 in commerce. Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 676 (9th Cir. 2005). The statute 18 protects the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, 19 . . . against another person who, at any time after the owner's mark has become famous, commences use 20 of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by 21 tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of 22 competition, or of actual economic injury. 15 U.S.C. § 1125(c)(1). 23 Although this statutory language is ungainly, its meaning seems clear: It refers to a use of a 24 famous and distinctive mark to sell goods other than those produced or authorized by the mark's owner. 25 Mattel, 296 F.3d at 903. Protection of trade dress, no less than of trademarks, serves the Act's purpose 26 to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers 27 to distinguish among competing producers. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774, 28 112 S.Ct. 2753 (1992) (quoting Park N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 105 36 1 S.Ct. 658 (1985)). In contrast to other trademark protections, dilution does not require a showing of 2 consumer confusion in that dilution law protects only the distinctiveness of the mark, which is 3 inherently less weighty than the dual interest of protecting trademark owners and avoiding harm to 4 consumers that is at the heart of every trademark claim. Mattel, 296 F.3d at 905. 5 Dilution Elements 6 To prove a dilution claim, a plaintiff must show that (1) the mark is famous and distinctive; (2) 7 the defendant is making use of the mark in commerce; (3) the defendant s use began after the mark 8 became famous; and (4) the defendant s use of the mark is likely to cause dilution by blurring or dilution 9 by tarnishment. Jada Toys, 518 F.3d at 634. The analysis is the same under federal and California law. 10 Jada Toys, 518 F.3d at 634. 11 Famous And Distinctive 12 Dilution is reserved for a select class of marks those with such powerful consumer 13 associations that even non-competing uses can impinge on their value. Avery Dennison Corp. v. 14 Sumpton, 189 F.3d 868, 875 (9th Cir.1999). [T]o meet the famousness element of protection under the 15 dilution statutes a mark must be truly prominent and renowned. I.P. Lund Trading ApS v. Kohler Co., 16 163 F.3d 27, 46 (1st Cir.1998). 17 broad-based fame only if a large portion of the general consuming public recognizes that mark. Put 18 another way, as a district court recently did, the mark must be a household name. Thane Intern., Inc. 19 v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002). In short, for purposes of § 1125(c), a mark usually will achieve 20 15 U.S.C. § 1125(c)(2)(A) specifies factors to address a mark s fame: 21 In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: 22 23 (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. 24 (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. 25 (iii) The extent of actual recognition of the mark. 26 27 (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. 28 PBP challenges Gerawan s ability to demonstrate that its Prima marks are widely recognized 37 1 by the general consuming public . . . PBP argues that Prima is not a household name. PBP points to 2 the testimony of Food Lion s Mr. Scott and the Prima brand does fit into the category of Chiquita 3 bananas, Del Monte pineapples, Dole bananas, Dole Salads or Fress Express salads. 4 PBP faults Gerawan s failure to produce a consumer survey to demonstrate the alleged fame 5 of its Prima marks. PBP points to Ray Gerawan s testimony that he does not know whether the Prima 6 brand is widely recognized by the general consuming public in California or any area of California. PBP 7 attributes Gerawan to spend a relatively modest amount of money on product advertising in that it does 8 not engage in television or radio or many other forms of publicity. PBP notes its points raised in 9 connection with likelihood of confusion as to dissimilarity between the Prima and Prima Bella 10 trademarks, weakness and lack of recognition of the Prima trademarks, passing of the Prima trademarks 11 in the public domain as generic fruit variety designations, absence of association of the Prima and Prima 12 Bella trademarks, and lack of PBP s intent to create an association with the Prima trademarks. 13 Gerawan attributes PBP to rely on a number of conclusory allegations to support its claim that 14 Gerawan s Prima marks are not famous. Gerawan argues there is sufficient information from which 15 a jury could reasonably conclude that Gerawan s Prima marks are famous. Whether a defendant's 16 mark creates a likelihood of dilution is a factual question generally not appropriate for decision on 17 summary judgment. Visa Intern. Service Ass'n v. JSL Corp., 610 F.3d 1088, 1090 (9th Cir. 2010). 18 The record reveals factual issues as to the fame of the Prima trademarks. Gerawan aggressively 19 uses the Prima trademarks in connection with its products. Gerawan uses its Prima trademarks on its 20 boxes, buildings, website, labels, tags, recipe cards, pallets, clothing, headwear, pens, beverage 21 containers, computer bags, paper tablet holder for sales and marketing, air pillows for shipping, fruit 22 stickers, posters, business cards, <prima.com> email address, large retail store banners, letterhead, 23 brochures, tissue paper, packing top sheets, trays, print advertisements, pallets and computer services. 24 Food Lion s Mr. Scott testified as to the appearance of Prima . . . on the side of their boxes and 25 declared that several customers have asked for Prima produce grown by the Gerawan name. New 26 York fruit buyer Mr. Weiler recognized Prima as a major brand in the produce industry and testified that 27 his customers ask for the Prima brand of that commodity, grape, peach, nectarine. Although the Prima 28 trademarks may lack the fame of Dole, Del Monte or Sunkist, Gerawan has raised factual issues as to 38 1 the famous and distinctive element of trademark dilution. Moreover, of critical importance, PBP has 2 failed to produce evidence to negate the fame of Prima or to show that Gerawan lacks evidence of the 3 fame of the Prima trademarks. 4 /// 5 Likely To Cause Dilution 6 Gerawan argues that the Prima and Prima Bella trademarks are so similar that a likelihood of 7 dilution can be inferred. [W]hen identical marks are used on similar goods, dilution the capacity of 8 the famous mark to identify and distinguish the goods of the trademark holder obviously occurs. 9 American Honda Motor Co., Inc. v. Pro-Line Protoform, 325 F.Supp.2d 1081, 1085 (C.D. Cal. 2004). 10 [A]ctual dilution can reliably be proved through circumstantial evidence . . . where the junior and senior 11 marks are identical. Moselay v. V Secret Catalogue, Inc., 537 U.S. 418, 433, 123 S.Ct. 1115 (2003). 12 Assessing whether marks are identical is a fact-based determination. Horphag Research Ltd. v. 13 Garcia, 475 F.3d 1029, 1036 (9th Cir. 2007). 14 Gerawan challenges PBP s ability to demonstrate an absence of blurring of the Prima and Prima 15 Bella trademarks. Where, as here, a plaintiff's claim is based on a dilution by blurring theory, the 16 question is whether the association arising from the similarity between a mark or trade name and a 17 famous mark . . . impairs the distinctiveness of the famous mark. Jada Toys, 518 F.3d at 635 (quoting 18 15 U.S.C. § 1125(c)(2)(B)). A court may consider all relevant factors in making this determination, 19 including the six identified by 15 U.S.C. § 1125(c)(2)(B): 20 (i) The degree of similarity between the mark or trade name and the famous mark. 21 (ii) The degree of inherent or acquired distinctiveness of the famous mark. 22 (iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark. 23 (iv) The degree of recognition of the famous mark. 24 25 (v) Whether the user of the mark or trade name intended to create an association with the famous mark. 26 (vi) Any actual association between the mark or trade name and the famous mark. 27 Similar to the likelihood of confusion issue, factual issues arise as to the likelihood of dilution 28 given the similarity between the Prima and Prima Bella trademarks. PBP has failed to provide 39 1 meaningful evidence to negate potential for blurring of the Prima and Prima Bella trademarks, especially 2 given that such task is fact based. PBP s reliance on points raised to address likelihood of confusion fare 3 no better as to likelihood of dilution. Factual issues preclude summary judgment on Gerawan s 4 trademark dilution claims. 5 CONCLUSION AND ORDER 6 For the reasons discussed above, this Court: 7 1. DENIES PBP summary judgment; and 8 2. RECONFIRMS the September 20, 2011 pretrial conference and November 7, 2011 trial. 9 IT IS SO ORDERED. 10 Dated: 66h44d August 2, 2011 /s/ Lawrence J. O'Neill UNITED STATES DISTRICT JUDGE 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 40

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