Cook v. J&J Snack Foods Corp., No. 2:2009cv02297 - Document 22 (E.D. Cal. 2010)
Court Description: ORDER denying 14 Motion for partial Summary Judgment signed by Judge Garland E. Burrell, Jr on 1/27/10. (Kaminski, H)
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Cook v. J&J Snack Foods Corp. Doc. 22 1 2 3 4 5 IN THE UNITED STATES DISTRICT COURT 6 FOR THE EASTERN DISTRICT OF CALIFORNIA 7 8 9 10 11 12 13 14 BRIEN COOK, ) ) Plaintiff, ) ) v. ) ) J&J SNACK FOODS CORP., a New Jersey) corporation; WHITING’S FOODS ) CONCESSIONS, INC., a California ) corporation, ) ) Defendants. ) ) 15 2:09-CV-02297-GEB-EFB ORDER DENYING DEFENDANTS’ MOTION FOR PARTIAL SUMMARY JUDGMENT* On December 23, 2009, Defendants J & J Snack Foods Corp. (“J 16 & J”) and Whiting’s Foods Concessions, Inc. (“Whiting’s”) filed a 17 motion for partial summary judgment under Federal Rule of Civil 18 Procedure 56(c) on Plaintiff’s trademark infringement claim. 19 Plaintiff’s complaint alleges Defendants’ use of the phrase “Mix It 20 Up” in connection with the sale of frozen carbonated beverages 21 infringes on Plaintiff’s federally registered “Mix It Up!” service 22 mark. 23 since Plaintiff’s service mark is not protectable and, as a matter of 24 law, there is no liklihood of confusion resulting from their use of 25 Plaintiff’s mark. 26 for partial summary judgment is DENIED. Defendants argue they are entitled to partial summary judgment For the reasons stated below, Defendants’ motion 27 28 * argument. This matter is deemed to be suitable for decision without oral E.D. Cal. R. 230(g). 1 Dockets.Justia.com 1 2 I. LEGAL STANDARD Under Federal Rule of Civil Procedure 56(c), the party 3 moving for summary judgment bears the initial burden of demonstrating 4 the absence of a genuine issue of material fact for trial. 5 Corp. v. Catrett, 477 U.S., 317, 323 (1986). 6 satisfies this burden, the “non-movant must show a genuine issue of 7 material fact by presenting affirmative evidence from which a jury 8 could find in his favor.” 9 (9th Cir. 2009)(citation and emphasis omitted). Celotex If the moving party F.T.C. v. Stefanchik, 559 F.3d 924, 929 When deciding a 10 summary judgment motion, “all reasonable inferences are to be drawn in 11 favor of the non-moving party.” 12 Productions, 406 F.3d 625, 630 (9th Cir. 2005). 13 movant’s bald assertions or mere scintilla of evidence in his favor 14 are both insufficient to withstand summary judgment.” 15 F.3d at 929. 16 deciding a summary judgment motion. 17 v. City of Redmond, 466 F.3d 736, 745 (9th Cir. 2006)(stating that 18 “[a] trial court may only consider admissible evidence in ruling on a 19 motion for summary judgment”). 20 infringement cases, summary judgment may be entered when no genuine 21 issue of material fact exists.” 22 II. 23 Surfvivor Media, Inc. v. Survivor However, “[a] non- Stefanchik, 559 Further, only admissible evidence may be considered in See Fed. R. Civ. P. 56(e); Ballen “Although disfavored in trademark Surfvivor, 406 F.3d at 630. BACKGROUND Plaintiff Brien Cook is a sole proprietor of a business that 24 rents machines for making frozen beverages at private parties. 25 Response to Defs.’ Statement of Undisputed Facts (“SUF”) ¶ 1.) 26 Plaintiff’s business also sells frozen beverage machines, services and 27 repairs such machines, and sells MIX IT UP! branded beverages. 28 Decl. ¶ 2.) (Pl.’s (Cook Plaintiff has only rented machines within 60 miles of 2 1 Sacramento but sells his MIX IT UP! branded beverages nationally. 2 Plaintiff declares that his “customers make reservations for renting 3 machines via telephone and [through his] website, mixitup.biz.” 4 ¶ 3.) 5 (Id. Plaintiff has been using the mark “MIX IT UP!” in his 6 business since October 1, 2004. 7 Cook Decl. ¶ 2.) 8 register his “MIX IT UP!” mark with the United States Patent and 9 Trademark Office (“PTO”)(Cook Decl. ¶ 5.) (Pl.’s Response to Defs.’ SUF ¶¶ 2-3; On February 7, 2006, Plaintiff applied to federally Registration on the 10 principal register issued for Plaintiff’s service mark on July 21, 11 2009. 12 consists of standard characters without claim to any particular font, 13 style, size or color.” 14 the service mark is used in connection with the “rental of machines 15 and apparatus for making both alcoholic and non-alcoholic iced fruit 16 beverages, for use at special events from house parties to galas and 17 the like . . . .” 18 IT UP! mark to connote that having a frozen beverage machine at a 19 party is unique and different and thus ‘mixes up’ what would otherwise 20 be a routine event.” 21 the mark “in both a standard character format with no design elements 22 on [his] website and print advertising as well as a stylized version 23 which includes the words MIX IT UP in black with an orange exclamation 24 point and green swirl design underneath. 25 appears on [Plaintiff’s] machines and bottles for the frozen drink 26 machine beverages [he] sell[s].” 27 28 (Id. ¶ 5, Ex. B.) The registration provides that “[t]he mark (Id.) (Id.) The registration further states that Plaintiff declares that he “adopted the MIX (Id. at ¶ 4.) He further declares that he uses [The] stylized mark also (Id.) Defendant J & J is a national and international manufacturer, marketer and distributer of a variety of branded snack 3 1 foods and beverages for the food service and retail supermarket 2 industries. 3 subsidiary, The ICEE Company, J & J sells carbonated frozen beverages 4 under its nationally prominent brands ICEE and SLUSH PUPPIE. 5 13.) 6 outlets, including Target, Wal-Mart, at movie theaters, concession 7 counters, amusement parks and other pubic entertainment venues. 8 ¶ 17.) 9 (Pl.’s Response to Defs.’ SUF ¶ 10.) Through its (Id. ¶ J & J sells ICEE and SLUSH PUPPIE drinks through various retail (Id. At some of these retail locations, various flavors of ICEE 10 or SLUSH PUPPIE branded drinks may be mixed in different combinations 11 by the consumer, “often as an interactive self-service experience.” 12 (Id. ¶ 18.) 13 slogan with these “multi-flavor mixing stations.” 14 Fachner, the President of The ICEE Company, declares “[T]he Icee 15 Company commenced use of the . . . MIX IT UP slogan in April 2007. 16 The slogan is used . . . with the company’s trademarks such as ICEE 17 MIX IT UP and SLUSH PUPPIE MIX IT UP. 18 customer[] that they can mix up flavors to their individual tastes as 19 they operate the dispensers that pour the ICEE and SLUSH PUPPIE 20 products into their cups.” 21 The ICEE Company employs the phrase “Mix It Up” as a (Id. ¶ 19.) Dan The slogan[] tell[s] the (Fachner Decl. ¶ 4.) In or about December 2004, Plaintiff sought to meet with 22 representatives from The ICEE Company to explore mutual business 23 opportunities, including the marketing of ICEE branded products on 24 Plaintiff’s website. 25 Plaintiff met with two employees of The ICEE Company, Dave Springer 26 and Randy Fachner. 27 and Fachner copies of his marketing materials which featured his MIX 28 IT UP! mark. (Id.) (Cook Decl. ¶ 6.) (Id.) On or about January 25, 2005, At this meeting, Plaintiff gave Springer Plaintiff declares that Springer and Fachner 4 1 expressed enthusiasm over his proposal to sell ICEE branded mixes 2 through his website. (Id.) 3 Plaintiff’s proposal never came to the attention of The ICEE Company’s 4 leadership. 5 ICEE Company’s decision to use the phrase “Mix It Up” in connection 6 with multi-flavor mixing stations was developed by The ICEE Company’s 7 marketing department and not from the meeting Plaintiff had with Randy 8 Fachner and Dave Springer. 9 declarations from Ken Whiting, Randy Fachner, Dave Springer, Dan Dan Fachner, however, declares that (Fachner Decl. ¶ 6.) Fachner further declares that The (Id. ¶ 5.) Defendants attach additional 10 Fachner, Susan Woods and Karen Kline to their reply brief. 11 these declarations address The ICEE Company’s decision to employ the 12 slogan “Mix It Up.” 13 reply brief need not be considered and is therefore disregarded. 14 Provenz v. Miller, 102 F.3d 1478, 1483 (9th Cir. 1996)(stating that 15 “where new evidence is presented in a reply to a motion for summary 16 judgment, the district court should not consider the new evidence 17 without giving the non-movant an opportunity to respond” (quotations 18 and citations omitted)). 19 Most of However, new evidence that is presented in a See On December 12, 2007, J & J filed a trademark application to 20 protect the use of the phrase “MIX IT UP” in connection with the sale 21 of frozen carbonated beverages. 22 22, 2008, the PTO suspended J & J’s trademark application based upon 23 Plaintiff’s prior application to register “MIX IT UP!” 24 ¶ 4.) 25 was a liklihood of confusion between J & J’s application to register 26 its “MIX IT UP” mark and Plaintiff’s prior application. 27 B.) (Fachner Decl. ¶ 7.) However, on May (Leonard Decl. The Notice of Suspension noted the PTO’s conclusion that there 28 5 (Id. ¶ 3, Ex. 1 Defendant Whiting’s is a concessionaire that sells SLUSH 2 PUPPIE products. 3 sells ICEE brand products through a “mixing kiosk,” using the phrase 4 “MIX IT UP.” 5 attended the California State Fair in Sacramento, California and 6 visited a trailer operated by Whiting’s. 7 Plaintiff declares that the phrase “MIX IT UP” appeared on Whiting’s 8 trailer and on cups and the self-service machines used by consumers to 9 dispense the frozen beverages. (Pl.’s Response to Defs.’ SUF ¶ 29.) (Id. ¶ 29.) Whiting’s also On or about August 22, 2009, Plaintiff (Id.) (Cook Decl. ¶ 10.) Plaintiff also saw signs on 10 Whiting’s trailer advertising a website, slushpuppiemixitup.com. 11 ¶ 11.) 12 (Id. Plaintiff filed a complaint against J & J on August 19, 13 2009, and a first amended complaint, adding Whiting’s as a defendant, 14 on August 31, 2009. 15 UP mark in connection with frozen carbonated beverage products . . . 16 constitutes trademark infringement pursuant to 15 U.S.C. § 1114 and is 17 likely to cause confusion among the relevant consuming public.” 18 (First Amended Compl. ¶ 22.) 19 counterclaim seeking to cancel Plaintiff’s service mark under 15 20 U.S.C. § 1119. 21 initial disclosures under Federal Rule of Civil Procedure Rule 26 are 22 set to be exchanged on February 28, 2010. 23 24 Plaintiff alleges Defendants’ “use of the MIX IT Defendants’ answer includes a None of the parties have conducted discovery as III. (Leonard Decl. ¶ 4.) DISCUSSION Under the Lanham Act, “the holder of a protectable [service 25 mark] . . . [may] hold liable any person who, without consent, uses in 26 commerce any registered mark in connection with the sale, offering for 27 sale, distribution, or advertising of any goods or services.” 28 Permanent Make-Up Inc., v. Lasting Impression I, Inc., 408 F.3d 596, 6 KP 1 602 (9th Cir. 2005)(citing 15 U.S.C. § 1114(1)(a)). 2 claim of trademark infringement, Plaintiff must demonstrate that: (1) 3 “he has a valid, protectable” service mark and (2) Defendants’ use of 4 his service mark is “likely to cause confusion.” 5 Sciences Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir. 6 2007)(quotations and citations omitted).1 7 A. 8 9 To prevail on his Applied Info. Validity of Plaintiff’s Service Mark Defendants argue Plaintiff’s service mark is invalid and therefore unprotectable since it is “too descriptive” and “too common 10 to serve as a mark.” 11 invalid because it is not used in connection with an interstate 12 business as required by the Lanham Act. 13 federal registration of his mark creates a strong presumption that his 14 service mark is valid and protectable. 15 business is engaged “in commerce” as defined in the Lanham Act. 16 Defendants also argue Plaintiff’s mark is Plaintiff counters that the Plaintiff further argues his Only trademarks and service marks that are “distinctive” may 17 be registered and protected under the Lanham Act. 18 1127. 19 categories that fall along a spectrum of distinctiveness: fanciful, 20 arbitrary, suggestive, descriptive and generic. 21 F.3d at 631-32 (describing the five categories of marks). 22 “Suggestive, arbitrary [and] fanciful marks are inherently 23 distinctive, but a mark that is generic or one that is descriptive and 24 lacks a secondary meaning, is not distinctive and does not receive 25 trademark protection.” See 15 U.S.C. § In general, marks are classified by the following five See Surfvivor, 406 Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1197 26 27 28 1 “Service marks and trademarks are governed by identical standards” under the Lanham Act. Chance v. Pac-Tel Telerac Inc., 242 F.3d 1151, 1156 (9th Cir. 2001). 7 1 (9th Cir. 2009)(quotations and citations omitted). 2 spectrum of distinctiveness a mark is categorized is a question of 3 fact. 4 classification of a mark is a factual determination to which clear 5 error review is applied). 6 service mark is “suggestive” or “descriptive.”2 7 is classified as “descriptive,” it is not entitled to protection under 8 the Lanham Act unless it has a secondary meaning. Where along the See id. at 1195-96 (clarifying that the district court’s The parties dispute whether Plaintiff’s If Plaintiff’s mark 9 “Deciding whether a mark is distinctive or merely 10 descriptive is far from an exact science and is a tricky business at 11 best.” 12 [service] mark on the Principal Register in the Patent and Trademark 13 Office constitutes prima facie evidence of the validity of the 14 registered mark . . . .” 15 at 970; see also 15 U.S.C. § 1115 (federal registration of mark is 16 “prima facie evidence of the validity of the registered mark”). 17 is, federal registration of a particular mark supports the conclusion 18 that a mark is distinctive “because the PTO should not otherwise give 19 it protection.” 20 “[r]egistration alone may be sufficient in an appropriate case to 21 satisfy a determination of distinctiveness”); see also Quicksilver, 22 Inc. v. Kymsta Corp., 466 F.3d 749, 760 (federal registration creates 23 a presumption that mark is “inherently distinctive”). 24 undisputed that Plaintiff’s service mark was registered on the PTO’s 25 principal register on July 21, 2009, Plaintiff has made a “prima Lahoti, 586 F.3d at 1197. However, “[r]egistration of a Applied Information Sciences Corp., 511 F.3d That Lahoti, 586 F.3d at 1999 (also stating that Since it is 26 27 28 2 Defendants make a conclusory statement that Plaintiff’s trademark is generic but have advanced no arguments in support of this conclusion. 8 1 facie” showing of validity. 2 therefore, shifts to Defendants to demonstrate by a preponderance of 3 the evidence that Plaintiff’s mark is in fact invalid. 4 v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002); Vuitton Et Fils 5 S.A. v. J. Young Enters., Inc., 644 F.2d 769, 776 (9th Cir. 1981)(the 6 presumption of validity need not be rebutted by “clear and convincing 7 evidence” but only by a “preponderance of the evidence”). 8 9 See id. The burden of production, Tie Tech, Inc. Defendants raise two arguments in an apparent attempt to satisfy their burden of demonstrating the invalidity of Plaintiff’s 10 mark. 11 Up” renders Plaintiff’s service mark descriptive, and therefore, 12 invalid. 13 registration “can be rebutted by contrary evidence” that the mark is 14 “descriptive.” 15 Competition, Section 11:43 (4th ed.); see also Lahoti, 586 F.3d at 16 1999-00 (discussing rebuttal of the presumption of distinctiveness by 17 evidence of third-party use and third-party registration). 18 if others are in fact using the term [Mix It Up] to describe their 19 products [or services], an inference of descriptiveness can be drawn.” 20 Lahoti, 586 F.3d at 1200 (quoting McCarthy Section 11:69); see also 21 Entrepreneur Media Inc. v. Smith, 279 F.3d 1135, 1143 (9th Cir. 22 2002)(stating that “[t]he needs of others in the marketplace to use 23 the term . . . to describe their goods or services . . . confirms that 24 [the] mark [at issue] is descriptive”); Classic Foods Intern. Corp. v. 25 Kettle Foods, Inc., No. SACV 04-725 CJC (Ex), 2006 WL 5187497, at *12 26 (C.D. Cal. Mar. 2, 2006)(noting extensive use of mark by third-parties 27 marketing similar products supports conclusion that mark, is at most, 28 descriptive). First, Defendants argue third-party use of the phrase “Mix It The presumption of validity created by a federal J. Thomas McCarthy, McCarthy on Trademarks and Unfair “That is, However, only third-party use “of similar marks on 9 1 similar goods [or services] is relevant . . . .” 2 Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1396, 3 1373 (Fed. Cir. 2005). 4 Palm Bay Imports, To support their argument that Plaintiff’s service mark is 5 merely descriptive, Defendants provide what appears to be print out 6 copies of websites employing the phrase “Mix It Up.”3 7 Ex. J, L, M, N and O.) 8 Exhibits J, L, M, N and O, arguing that the declarant lacks personal 9 knowledge, and alternatively, the exhibits constitute inadmissible (See Kim Decl. Plaintiff objects to the admissibility of 10 hearsay. 11 arguing that the print outs are not hearsay because they are not 12 statements. 13 address the issue of personal knowledge. 14 (Objections to Defs.’ Evidence ¶ 1.) Defendants respond, (Reply to Pl.’s Response ¶¶ 32-37.) Defendants do not The website print outs at issue are attached to Nani Kim’s 15 declaration. 16 states that she has personal knowledge of the contents of her 17 declaration. 18 provide that she has personal knowledge of the website print outs that 19 are attached to her declaration as exhibits. 20 declare that she actually viewed the websites, when and how the pages 21 were printed, or that the print outs accurately reflect the contents 22 of the websites she viewed. 23 raise the objection of authentication, personal knowledge is a 24 necessary prerequisite. 25 ISPWest, No. CV 05-3296 FMC AJWX, 2006 WL 4568796, at *2 (C.D. Cal. (Ex. G.) In the first paragraph of her declaration, Kim (Kim Decl. ¶ 1.) However, Kim’s declaration does not That is, she does not While Plaintiff did not specifically See Internet Specialties West, Inc. v. 26 27 28 3 Defendants have not related how they obtained or created the purported website print outs that they submit as evidence of third-party use. 10 1 Sept. 19, 2006) (stating that “[t]o be authenticated, someone with 2 [personal] knowledge of the accuracy of the contents of the internet 3 printouts must testify.”). 4 the proponent must present evidence from a witness with personal 5 knowledge of the website at issue stating that the printout accurately 6 reflects the contents of the website and the image of the page on the 7 computer at which the printout was made.” 8 No. 08-2297-GLR, 2009 WL 2591329, at *6 (D. Kan. Aug. 21, 2009). 9 Since Kim’s declaration does not demonstrate that she has personal “To authenticate printouts from a website, Toytrackerz LLC v. Koehler, 10 knowledge of the website print outs, Plaintiff’s objection to Exhibits 11 J, L, M, N and O is sustained. 12 Plaintiff also objects to the admissibility of Mendi 13 Parker’s affidavit and the accompanying website print out (Ex. K), 14 arguing Parker lacks personal knowledge under Federal Rule of Evidence 15 602. 16 declaration “states facts based on asserted personal knowledge.” 17 (Reply to Pl.’s Response ¶ 34.) (Objections to Defs.’ Evidence ¶ 2.) 18 Defendants argue Parker’s Parker’s affidavit, however, does not provide that she has 19 personal knowledge of the contents of her affidavit. 20 merely states that the contents of her affidavit are “to the best of 21 her knowledge and belief . . . true and correct.” 22 Decl. ¶ 3.) 23 to satisfy Federal Rule of Evidence 602's requirement of personal 24 knowledge. 25 452 F.3d 1193, 1200 (10th Cir. 2006)(stating that “at the summary 26 judgment stage, statements of mere belief in an affidavit must be 27 disregarded” (quotations and citations omitted)). Rather, she (Ex. K., Parker Defendants have not demonstrated that this is sufficient See Argo v. Blue Cross and Blue Shield of Kansas, Inc., 28 11 Therefore, 1 Plaintiff’s objection to Parker’s affidavit and the accompanying 2 website print out is sustained. 3 Therefore, the admissible evidence that supports Defendants’ 4 argument of descriptiveness is a declaration from Tim Gerber, an 5 employee of Flavor Burst, Inc., in which he declares, “Flavor Burst 6 developed materials for the use of its Nice Ice equipment for frozen 7 cocktails, using the phrase “Mix It Up.” 8 This evidence is clearly insufficient to overcome the presumption of 9 validity that attaches to Plaintiff’s service mark.5 10 (Ex. P, Gerber Decl., ¶ 3.)4 Even if Defendants’ excluded exhibits were considered, 11 Defendants would still fail to satisfy their burden of demonstrating 12 invalidity. 13 on the internet. 14 contained therein is under oath or even subject to independent 15 verification absent underlying documentation[.] 16 adulterate the content of any website from any location at any time. 17 For these reasons, any evidence procured off the Internet is adequate “It is now well recognized that [a]nyone can put anything No website is monitored for accuracy and nothing [H]ackers can 18 4 19 20 21 22 23 24 25 26 27 28 Plaintiff also objects to Gerber’s declaration, arguing that he lacks personal knowledge and that his declaration impermissibly relies on documents not provided under Federal Rule of Evidence 1002. (Objections to Defs.’ Evidence ¶ 3.) Defendants argue Gerber has personal knowledge of the facts declared. Plaintiff’s objections are overruled. Gerber’s declaration states that it is made upon personal knowledge. Further, Gerber’s declaration is not offering the contents of any documents and therefore Federal Rule of Evidence 1002 is not implicated. 5 Defendants also provided a print out of the first page of the search results produced when the terms “Mix It Up” and “Mix It Up Frozen Beverage” are entered into the Google search engine. (Kim Decl., Exs. H, I.). However, only evidence of third-party use on similar goods and services is relevant. See Eclipse Ass’n, Ltd. v. Data General Corp., 894 F.2d 1114, 1119 (9th Cir, 1990)(stating that “[e]vidence of other unrelated potential infringers is irrelevant to claims of trademark infringement . . . .”). A list of search results does not demonstrate such third-party use, and is therefore, irrelevant. 12 1 for almost nothing.” 2 *1 (quotations and citations omitted). 3 descriptiveness, third-party use is “only relevant if there are 4 similar marks on similar goods. 5 to demonstrate that the goods offered are similar, and to the extent 6 that they do, they are hearsay.” 7 Internet Specialties West, 2006 WL 4568796, at Further, in proving Print outs of websites are not likely Id. at *2. Defendants also seek to overcome the presumption of validity 8 by arguing Plaintiff’s service mark is not used in connection with 9 interstate business and therefore fails to satisfy the Lanham Act’s 10 “use in commerce” requirement. 11 Plaintiff disputes this contention. Under the Lanham Act, for a service mark to be valid, the 12 mark must be used “in commerce.” 13 provides that a service mark “shall be deemed to be in use in commerce 14 . . . when it is used or displayed in the sale or advertising of 15 services and the services are rendered in commerce, or the services 16 are rendered in more than one State . . . .” 17 defined as “all commerce which may lawfully be regulated by Congress.” 18 Id. 19 intrastate commerce which affects interstate commerce.” 20 & Mfg. Co., Inc. v. Thompson, 693 F.2d 991, 993 (9th Cir. 1982). 21 Further, “[a]dvertising that affects interstate commerce and 22 solicitation of sales across state lines . . . is therefore commerce 23 within the meaning of the Lanham Act.” 24 Healthnet, Inc., No. CV 92-3925 KN, 1993 WL 209558, at *2 (C.D. Cal. 25 May 12, 1993)(quoting Shatel Corp. v. Mao Ta Lumber and Yacht Corp., 26 697 F.2d 1352, 1356 (11th Cir. 1983)). 27 28 See 15 U.S.C. § 1127. Id. Section 1127 “Commerce” is “It is well settled that so defined ‘commerce’ includes Thompson Tank Health Net v. U.S.A. Defendants rely upon a copy of the “Delivery Area” subpage of Plaintiff’s website as support for their argument that Plaintiff 13 1 uses his service mark in connection with an only intrastate business. 2 The webpage states that Plaintiff provides his rental services in the 3 greater Sacramento area. 4 customers make reservations for renting machines via telephone and 5 [through his] website” and that he sells “MIX IT UP! branded beverages 6 nationwide.” 7 to demonstrate that Plaintiff’s service mark is not used in interstate 8 commerce. 9 validity that attaches to Plaintiff’s registered service mark. Plaintiff, however, declares that “his (Cook Decl. ¶ 3.) Defendants’ evidence is insufficient Therefore, Defendants have not rebutted the presumption of 10 Accordingly, Defendants’ summary judgment motion on the issue of the 11 validity of Plaintiff’s service mark is denied. 12 B. 13 Liklihood of Confusion Defendants also argue they are entitled to summary judgment 14 on Plaintiff’s claim of trademark infringement since, as a matter of 15 law, there is no liklihood of confusion caused by Defendants’ 16 allegedly infringing use of Plaintiff’s service mark. 17 “Liklihood of confusion exists when consumers viewing the 18 mark would probably assume that the goods [or services] it represents 19 are associated with the source of a different product [or service] 20 identified by a similar mark.” 21 “To analyze liklihood of confusion, . . . the following eight factors, 22 generally referred to as the Sleekcraft factors, [are considered]: (1) 23 strength of the mark(s); (2) relatedness of the goods; (3) similarity 24 of the marks; (4) evidence of actual confusion; (5) marketing 25 channels; (6) degree of consumer care; (7) the defendants’ intent; and 26 (8) liklihood of expansion.” 27 is a fluid one and the plaintiff need not satisfy every factor, KP Permanent Make-UP, 408 F.3d at 608. Surfvivor, 406 F.3d at 631. 28 14 “The test 1 provided that strong showings are made with respect to some of [the 2 factors.]” 3 Id. However, “[t]he ultimate question of liklihood of confusion 4 is predominantly factual in nature as is each factor within the 5 Sleekcraft likelihood of confusion test.” 6 Smith, 279 F.3d 1135, 1140 (9th Cir. 2002)(quotations and citations 7 omitted). 8 exists at the summary judgment stage is generally disfavored because a 9 full record is usually required to fully assess the facts.” 10 Entrepreneur Media, Inc. v. Further, “determining whether a likelihood of confusion KP Permanent Make-UP, 408 F.3d at 608. 11 Here, the factual record is sparse. Neither Defendants nor 12 Plaintiff have submitted any evidence on some of the Sleekcraft 13 factors. 14 disputed, and is insufficient for Defendants to prevail on their 15 motion. 16 confusion is insufficient to satisfy their burden on summary judgment. 17 Accordingly, Defendants’ motion for summary judgment on the issue of 18 liklihood of confusion is denied. Further, the evidence provided on the other factors is Defendants’ mere argument that there is no liklihood of 19 IV. CONCLUSION 20 For the stated reasons, Defendants’ motion for partial 21 summary judgment is DENIED. 22 Dated: January 27, 2010 23 24 25 GARLAND E. BURRELL, JR. United States District Judge 26 27 28 15
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