Meth Lab Cleanup LLC v. Bio Clean, Inc. et al, No. 2:2014cv01259 - Document 149 (W.D. Wash. 2016)
Court Description: ORDER granting defendants' 133 Motion for Summary Judgment by Judge Richard A Jones.(RS)
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Meth Lab Cleanup LLC v. Bio Clean, Inc. et al Doc. 149 HONORABLE RICHARD A. JONES 1 2 3 4 5 6 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON AT SEATTLE 7 8 9 METH LAB CLEANUP, LLC, Plaintiff, 10 11 12 CASE NO. C14-1259RAJ ORDER v. BIO CLEAN, INC., et al., Defendants. 13 14 I. INTRODUCTION 15 This matter comes before the Court on consideration of Defendants Bio Clean Inc. 16 and Theresa Borst’s Motion for Summary Judgment. Dkt. #133. Although not explicitly 17 styled as a Motion for Partial Summary Judgment, the Motion does not address one of 18 Bio Clean’s counterclaims. See id.; Dkt. #17 at 27-28. Therefore, it will be treated as a 19 Motion for Partial Summary Judgment. Briefing on this Motion is now complete, and 20 after reviewing the briefs and evidence submitted, the Court GRANTS the Motion. 21 22 II. BACKGROUND Meth Lab Cleanup and Bio Clean are competitors in the business of 23 decontaminating properties that have previously been used as clandestine drug 24 laboratories. See Dkt. #48 at 2, ¶¶ 2-4. Theresa Borst is Bio Clean’s sole owner, 25 principal, and moving force. Dkt. #43 at 3, ¶ 12. Both Meth Lab Cleanup and Bio Clean 26 are among the eight companies that are certified by the State of Washington to offer drug 27 lab decontamination. Id. at 3, ¶¶ 9, 14. Bio Clean was started in 1998 to offer a variety 28 ORDER – 1 Dockets.Justia.com 1 of decontamination services. Dkt. #134 at 1, ¶ 2. In 2000, Bio Clean began performing 2 drug lab decontaminations in Washington State. Id. at 1, ¶ 3. Meth Lab Cleanup was 3 started in 2003, and performs drug lab decontaminations across the country. Dkt. #43 at 4 1, ¶¶ 2-3. Meth Lab Cleanup also offers drug lab remediation training in multiple states, 5 including Washington, where Meth Lab Cleanup is one of only two companies certified 6 to do so. Id. at 2, ¶¶ 5, 7. 7 In 2007, Meth Lab Cleanup applied for three trademarks for the mark “Meth Lab 8 Cleanup LLC.” Id. at 7, ¶ 29. The trademarks were initially denied, because the USPTO 9 found that the trademarks were descriptive without secondary meaning. Dkt. #48 at 3, ¶ 10 8. Meth Lab Cleanup then asked for reconsideration, submitting a declaration stating that 11 Meth Lab Cleanup’s use of “Meth Lab Cleanup LLC” had been continuous and 12 substantially exclusive for the past five years. See Dkt. #146 at 3, ¶ 5. In 2009, the 13 USPTO granted the trademarks. See Dkt. #1-1 at 2-4. In 2012, Meth Lab Cleanup 14 applied for three trademarks for the phrase “Meth Lab Cleanup.” Dkt. #43 at 7, ¶ 30. 15 These trademarks were also initially denied, because a different agent at the USPTO 16 found that the term “meth lab cleanup” was either generic or descriptive without 17 secondary meaning. Dkt. #135-8 at 5. Meth Lab Cleanup once again sought 18 reconsideration, stating that it already had trademarks for “Meth Lab Cleanup LLC” and 19 that its use of “Meth Lab Cleanup” had been continuous and substantially exclusive. Dkt. 20 #135-13 at 2. Once again, the USPTO granted the trademarks after reconsideration. See 21 Dkt. #1-1 at 5-7. 22 23 24 In 2009, four employees of Bio Clean attended a Meth Lab Cleanup training at Ms. Borst’s instruction. Dkt. #43 at 4, ¶ 15. In 2012, Bio Clean made two relevant changes to its website. First, it changed one 25 of the tabs that listed the services Bio Clean offered from “Drug Lab Cleanup & 26 Disposal” to “Meth Lab Cleanup.” See Dkt. #43-1 at 3-4. Second, it added “meth lab 27 cleanup” as one of the metatags on its website. See Dkt. #143-11 at 6-10. Meth Lab 28 ORDER – 2 1 Cleanup then sent Bio Clean two letters notifying Bio Clean that it was infringing on 2 Meth Lab Cleanup’s trademark. See Dkt. ##1-5, 1-7. When Bio Clean did not change its 3 website, Meth Lab Cleanup initiated this lawsuit, suing Bio Clean for violations of the 4 federal Lanham Act and Washington unfair competition and trademark law. See Dkt. #1 5 at 12-16, ¶¶ 49-72. Bio Clean counterclaimed, asking for cancellation of all six of Meth 6 Lab Cleanup’s trademarks, and alleging that Meth Lab Cleanup had engaged in false 7 advertising. See Dkt. #17 at 24-28, ¶¶ 117-141. 8 9 Meth Lab Cleanup filed a Motion for Partial Summary Judgment, asking for judgment as to liability on Meth Lab Cleanup’s three claims, as well as dismissal of all 10 six of Bio Clean’s trademark cancellation counterclaims. Dkt. #42 at 1. The motion 11 requested that damages be left for a jury to decide, and did not ask for dismissal of Bio 12 Clean’s seventh counterclaim for false advertising. See id. 13 Bio Clean responded to the Motion for Partial Summary Judgment, arguing that 14 Meth Lab Cleanup was not entitled to summary judgment because there was a genuine 15 issue of material fact as to whether Meth Lab Cleanup had procured its trademarks 16 through fraud. See Dkt. #47 at 6. The only evidence Bio Clean offered of this alleged 17 fraud was that Meth Lab Cleanup was aware at the time of applying for the trademarks 18 that two other companies had used the term “meth lab cleanup” to describe their work. 19 See id. at 8-9. Bio Clean argued that this meant Meth Lab Cleanup had committed fraud 20 when it declared that its use of the phrase was continuous and substantially exclusive. Id. 21 Bio Clean also vaguely argued that the term “meth lab cleanup” was generic. See id. at 2. 22 This Court granted Meth Lab Cleanup’s motion. Dkt. #54 at 15. The Court found 23 that, even if Meth Lab Cleanup was aware that two other businesses had used the term 24 “meth lab cleanup,” that still did not raise a genuine issue of fraud, because Meth Lab 25 Cleanup’s statement was that its use was “substantially exclusive” not “completely 26 exclusive.” Id. at 9-10. The Court also found that Bio Clean had offered no evidence 27 with which to create a genuine issue of genericness. Id. at 12. 28 ORDER – 3 1 After the partial summary judgment motion was granted, the parties began 2 preparing for trial on damages. In the parties’ proposed pretrial order, Bio Clean argued 3 that one of the issues still remaining in the case was Bio Clean’s affirmative defense of 4 senior use. Dkt. #59 at 2, 4. At a pretrial telephone conference, the Court indicated that 5 this issue should have been raised in response to the summary judgment motion. Dkt. 6 #70 at 16. Bio Clean’s local counsel stated that it was raised, although perhaps not 7 highlighted, but the Court had not ruled on it. Id. After the telephone conference, this 8 Court issued an order allowing Bio Clean to file a motion for summary judgment on its 9 fair use defense. Dkt. #67 at 1. However, the Court noted that the issue of senior use had 10 not been squarely raised in Bio Clean’s response to the summary judgment motion. Id. at 11 1 n.1. The only mention of Bio Clean’s senior use in the response related to the fraud 12 defense, and not to a separate defense of senior use. Id. 13 Bio Clean then filed a motion for summary judgment on their senior use defense, 14 asking that all of Meth Lab Cleanup’s claims be dismissed, and all of Meth Lab 15 Cleanup’s trademarks be cancelled. Dkt. #71 at 2, 15. The evidence submitted in 16 support of this motion was limited to Bio Clean’s prior use of the phrase “meth lab 17 cleanup.” See Dkt. ##72—72-4. Meth Lab Cleanup then filed a response, arguing that 18 Bio Clean had not used the phrase as a trademark prior to Meth Lab Cleanup’s use of the 19 phrase as a trademark, and therefore Bio Clean was not the senior user. Dkt. #83 at 13. 20 Prior to the filing of Meth Lab Cleanup’s response, Bio Clean filed a substitution 21 of counsel. Dkt. #75. New counsel then filed a reply. Dkt. #89. The reply briefly 22 reiterated the argument that Bio Clean was the senior user of the disputed trademark. See 23 id. at 10. However, the reply also argued at more length that the term “meth lab cleanup” 24 was generic or descriptive without secondary meaning, and that Bio Clean’s use of the 25 phrase was protected by fair use. See id. at 4-5, 8-13. The reply alleged that the Court 26 had not ruled on any of these affirmative defenses, and so they remained for trial. Id. at 27 8. In support of these new arguments, Bio Clean attached declarations and documents 28 ORDER – 4 1 showing generic or descriptive use of the phrase “meth lab cleanup” by Bio Clean and by 2 other competitors, governmental entities, Yellow Page listings, and newspapers. See Dkt. 3 ##90-125. 4 Meth Lab Cleanup filed a surreply, asking the Court to disregard the evidence 5 submitted in the reply, since the vast majority of it had not been disclosed in discovery, 6 and it was irrelevant to the issue of senior use. Dkt. #128 at 1. 7 Instead of ruling on the motion for summary judgment, this Court terminated the 8 motion and allowed Bio Clean to file another motion for summary judgment addressing 9 senior use, fair use, genericness, and secondary meaning. Dkt. #130. The Court did so in 10 part to allow Meth Lab Cleanup to respond to the new evidence and arguments that were 11 presented for the first time in Bio Clean’s reply brief. See id. at 1. Bio Clean then filed 12 the present motion. Dkt. #133. III. LEGAL STANDARD 13 14 Summary judgment is appropriate if there is no genuine dispute as to any material 15 fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 16 56(a). The moving party bears the initial burden of demonstrating the absence of a 17 genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). 18 Where the moving party will have the burden of proof at trial, it must affirmatively 19 demonstrate that no reasonable trier of fact could find other than for the moving party. 20 Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (9th Cir. 2007). On an issue where 21 the nonmoving party will bear the burden of proof at trial, the moving party can prevail 22 merely by pointing out to the district court that there is an absence of evidence to support 23 the non-moving party’s case. Celotex Corp., 477 U.S. at 325. If the moving party meets 24 the initial burden, the opposing party must set forth specific facts showing that there is a 25 genuine issue of fact for trial in order to defeat the motion. Anderson v. Liberty Lobby, 26 Inc., 477 U.S. 242, 250 (1986). The court must view the evidence in the light most 27 favorable to the nonmoving party and draw all reasonable inferences in that party’s favor. 28 ORDER – 5 1 Reeves v. Sanderson Plumbing Prods. Inc., 530 U.S. 133, 150-51 (2000). IV. ANALYSIS 2 3 a. Scope of the Motion 4 Before discussing the merits of Bio Clean’s motion, it is important to note the 5 6 scope of evidence and arguments that the Court will consider on this motion. Meth Lab Cleanup argues that the validity of their trademarks and the issue of Bio 7 Clean’s infringement have already been decided, in the Court’s Order granting partial 8 summary judgment to Meth Lab Cleanup. Dkt. #142 at 24-25. Meth Lab Cleanup also 9 argues that the vast majority of the evidence now presented by Bio Clean was not 10 disclosed in discovery, and all of it should have been presented in response to Meth Lab 11 Cleanup’s motion for partial summary judgment. See id. at 9-12, 25. Bio Clean 12 acknowledges that the evidence was not timely disclosed, but argues that the Court 13 should nevertheless admit the evidence because Bio Clean’s failure to disclose “was 14 substantially justified or . . . harmless.” Dkt. #147 at 3 (quoting Fed. R. Civ. P. 15 37(c)(1)). 16 The Court agrees with Meth Lab Cleanup that all of the arguments now raised by 17 Bio Clean should have been raised in response to Meth Lab Cleanup’s motion for partial 18 summary judgment. See Dkt. #142 at 25. The Court’s Order granting that motion, and 19 finding Bio Clean liable for trademark infringement, implicitly rejected all of Bio Clean’s 20 affirmative defenses to liability for infringement. See Dkt. #54. It is true that the Order 21 did not specifically mention most of these affirmative defenses, but that is only because 22 Bio Clean did not mention them in its response to Meth Lab Cleanup’s motion for 23 summary judgment. See Dkt. ##47, 54. The Court, therefore, would be well within its 24 discretion at this point to simply rely on its previous Order and deny Bio Clean’s motion. 25 However, the Court also retains the power to reconsider or rescind its previous Order. 26 Since the Order addressed only liability and not damages it was an interlocutory order, 27 see Liberty Mut. Ins. Co. v. Wetzel, 424 U.S. 737, 744 (1976), and therefore the Court 28 ORDER – 6 1 retained the power to reconsider or rescind it when justice so requires see City of Los 2 Angeles, Harbor Div. v. Santa Monica Baykeeper, 254 F.3d 882, 885 (2001). 3 The Court finds that justice requires it to reconsider its original Order. The 4 original grant of summary judgment was based largely on the lack of evidence submitted 5 by Bio Clean’s prior counsel. See Dkt. #54. Bio Clean’s new counsel has worked 6 diligently to brief this motion, and has produced substantial and compelling evidence to 7 support Bio Clean’s affirmative defenses. See Dkt. ##133-135. In light of this 8 substantial and compelling evidence, the Court will address Bio Clean’s affirmative 9 defenses anew on this motion, and not treat its previous Order as binding. 10 Similarly, the Court will consider all of the new evidence submitted on this 11 motion, despite Bio Clean’s failure to timely disclose it in discovery. While the Court 12 cannot say that Bio Clean was “substantially justified” in failing to bring this evidence 13 forward earlier, see Fed. R. Civ. P. 37(c)(1), the Court does note that it was Bio Clean’s 14 former counsel that failed to timely disclose this evidence, and not its current counsel. 15 More importantly, the Court finds that Meth Lab Cleanup will not be prejudiced by the 16 untimely disclosure. See id. 17 Meth Lab Cleanup first saw the evidence at issue on February 26, 2016, when Bio 18 Clean filed its reply to the senior use motion for summary judgment. See Dkt. ##90-125. 19 This Court then ordered that Bio Clean file a new summary judgment motion, in order to 20 allow Meth Lab Cleanup an opportunity to respond to Bio Clean’s new arguments and 21 evidence. See Dkt. #130. Meth Lab Cleanup was thus on notice that it needed to prepare 22 a response to the evidence, and had two months to do so. See Dkt. #142 (filed April 25, 23 2016). And Meth Lab Cleanup has, in fact, responded to the new evidence. Meth Lab 24 Cleanup has produced multiple declarations attempting to contradict Bio Clean’s 25 declarations. See Dkt. ##142-1—142-9. Meth Lab Cleanup was apparently already 26 familiar with all of Bio Clean’s declarants, and was able to develop arguments and 27 evidence to attack the declarants’ credibility. See Dkt. ##142 at 16-17, 144-145. Since 28 ORDER – 7 1 Bio Clean’s evidence is so compelling, and Meth Lab Cleanup has been given a fair 2 opportunity to respond to it, the Court will consider all of the evidence submitted by both 3 parties. 4 b. Merits 5 Turning to the merits of the motion, Bio Clean moves this Court for summary 6 judgment on Meth Lab Cleanup’s claims for trademark infringement under 15 U.S.C. 7 § 1114, unfair competition under 15 U.S.C. § 1125(a), and Washington common law 8 trademark infringement and unfair competition. See Dkt. ##1 at 12-16, ¶¶ 49-72, 133 at 9 27. Bio Clean also asks for summary judgment on Bio Clean’s six counterclaims for 10 trademark cancellation. See Dkt. ##17 at 24-27, ¶¶ 117-134, 133 at 27. i. Trademark cancellation 11 12 This Court has the power to cancel invalid trademarks. 15 U.S.C. § 1119. Bio 13 Clean urges this Court to cancel Meth Lab Cleanup’s trademarks for three reasons. First, 14 Bio Clean argues that “meth lab cleanup” is generic, and thus cannot be trademarked. 15 Dkt. #133 at 16-18. Second, Bio Clean argues that if “meth lab cleanup” is not generic, 16 then at the very least it is descriptive, and it has not acquired secondary meaning. Id. at 17 19-22. Third, Bio Clean argues that if “meth lab cleanup” can be trademarked, then Bio 18 Clean is the senior user of the trademark, and so Meth Lab Cleanup’s trademarks must be 19 cancelled. Id. at 22-24. 1. 20 21 Genericness Federal trademark law arranges marks on a spectrum of distinctiveness. See 22 Surgicenters of Am. Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1014 (9th Cir. 23 1979). As marks get more distinctive, they receive more protection. See id. The least 24 distinctive type of mark is a generic mark. Id. Generic marks are marks that simply 25 name the product or service being offered. See id. (“A ‘generic’ term is one that refers, 26 or has come to be understood as referring, to the genus of which the particular product or 27 service is a species.”). “If the buyer understands the word to refer to the source of the 28 ORDER – 8 1 goods, the term is not generic. However, if the disputed term is identified with all such 2 goods or services, regardless of their suppliers, it is generic.” KP Permanent Make-Up 3 Inc. v. Lasting Impression I Inc., 408 F.3d 596, 604 (9th Cir. 2005) (internal quotation 4 marks omitted). 5 A generic mark can never be trademarked, and genericness is a sufficient reason to 6 cancel a trademark. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 7 (1985). However, a properly registered trademark “is presumed valid, and the burden of 8 proving that the mark is generic rests upon the defendant.” See Krav Maga Ass’n of Am., 9 Inc. v. Yanilov, 464 F. Supp. 2d 981, 985 (C.D. Cal. 2006) (citing Yellow Cab Co. of 10 11 Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928 (9th Cir. 2005)). In order to overcome the presumption, Bio Clean must offer actual evidence that 12 the term “meth lab cleanup” “was used or understood by consumers as a generic term [for 13 the services offered] rather than a brand name.” KP Permanent Make-Up, 408 F.3d at 14 606. This could be done by presenting the following: “(1) generic use by competitors of 15 the mark that has not been contested by the owner of the mark; (2) generic use of the 16 trademark by the proponent of the trademark; (3) dictionary definitions to determine 17 public usage; (4) generic usage in the media of the trademark, such as in trade journals 18 and newspapers; (5) testimony of persons in the trade; and (6) consumer surveys.” 19 Calista Enters. Ltd. v. Tenza Trading Ltd., 43 F. Supp. 3d 1099, 1116 (D. Or. 2014) 20 (citing Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1150- 21 51 (9th Cir. 1999)). 22 Bio Clean has offered evidence in the first five categories. Bio Clean has 23 submitted thirty-nine declarations from Bio Clean employees, former employees, and 24 others in the industry, attesting that the term “meth lab cleanup” is used by everyone in 25 the industry generically to name the services they offer, and has been used that way for 26 the last 30 years. See Dkt. ##133-2—133-40. Bio Clean has bolstered these declarations 27 with documents showing use of the phrase, and similar phrases, on competitors’ websites, 28 ORDER – 9 1 and in a PowerPoint Presentation Bio Clean has been giving since 2001. See Dkt. ##133- 2 18, 134-1, 135-15. Bio Clean has also offered numerous examples of the term “meth lab 3 cleanup,” or similar terms, being used in newspaper articles, in the names of legislation, 4 on governmental agencies’ websites, and in online Yellow Pages. See Dkt. ##134-1— 5 134-2, 134-6—134-8, 135-1—135-7, 135-12, 135-15, 141. Bio Clean has even given 6 four different examples of Meth Lab Cleanup itself using the phrase in a generic way. 7 See Dkt. ##135-7 at 26, 36, 135-16 at 7, 11. In addition, Bio Clean has submitted 8 dictionary definitions for “meth,” “methamphetamine,” “lab,” “laboratory,” and 9 “cleanup,” showing that the services performed match the dictionary definitions and thus, 10 presumably, consumer expectations. See Dkt. #135-7 at 41-45. The only type of 11 evidence Bio Clean did not produce was evidence from actual customers. While that 12 information would have been useful, even without that evidence, Bio Clean’s 13 submissions are still quite persuasive in showing that the term “meth lab cleanup” is 14 generic. 15 Meth Lab Cleanup does not respond directly to Bio Clean’s genericness argument. 16 See Dkt. #142. There is not a separate section of Meth Lab Cleanup’s brief devoted to 17 whether the phrase “meth lab cleanup” is generic. See id. The word “generic” is used 18 only five times in Meth Lab Cleanup’s brief – once in the section on secondary meaning, 19 twice in the section on prior use, and twice in the section on whether the Court’s prior 20 order should be controlling. See id. at 17, 24. Since Meth Lab Cleanup’s brief does 21 address secondary meaning, see id. at 12-17, the Court has done its best to discern the 22 arguments and evidence that Meth Lab Cleanup has put forth with regards to secondary 23 meaning that also apply to genericness. 24 Meth Lab Cleanup has submitted declarations from eleven people in the industry 25 that are relevant to genericness. See Dkt. ##43, 142-1—142-9, 143-145. Four of these 26 declarations are from Joseph Mazzuca and Julie Mazzuca, who are principals of Meth 27 Lab Cleanup. See Dkt. ##43, 143-145. One of Julie Mazzuca’s declarations states that 28 ORDER – 10 1 when she started Meth Lab Cleanup in 2003, the phrase “meth lab cleanup” was not in 2 common use. Dkt. #43 at 6-7, ¶ 28. The commonly used phrase was “clandestine drug 3 lab assessment and decontamination.” Id. Joseph Mazzuca also declares that “meth lab 4 cleanup” is not a commonly used phrase in other countries. Dkt. #144 at 7, ¶ 11. These 5 bare statements by Meth Lab Cleanup’s principals have very little evidentiary value. See 6 Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 7 910 (9th Cir. 1995) (“Trademark law is skeptical of the ability of an associate of a 8 trademark holder to transcend personal biases to give an impartial account of the value of 9 the holder's mark.”). Moreover, they are clearly contradicted by the evidence submitted 10 by Bio Clean showing that the phrase “meth lab cleanup” has frequently been used 11 generically in the industry. 12 Joseph Mazzuca and Julie Mazzuca spend a significant amount of time in their 13 declarations attacking Bio Clean’s evidence. Both argue that the PowerPoint presentation 14 that Bio Clean has submitted, showing Bio Clean’s generic use of the phrase “meth lab 15 cleanup” since 2001, may be fabricated. See Dkt. ##143 at 6, ¶ 17, 144 at 25, ¶ 28. But 16 they offer no real evidence of this beyond speculation. See id. Joseph Mazzuca also 17 points out that many of the exhibits submitted by Bio Clean are duplicative. See Dkt. 18 #145. While this is true, and somewhat frustrating to the Court, it does not change the 19 fact that Bio Clean has submitted numerous non-duplicative examples of the phrase 20 “meth lab cleanup” being used generically. 21 Joseph Mazzuca also points out that many of the declarations from competitors in 22 the industry come from competitors who do not use the exact phrase “meth lab cleanup” 23 on their website. See Dkt. #144. He also argues that many of the exhibits do not contain 24 the exact phrase “meth lab cleanup.” See Dkt. #145. But this argument misses the point. 25 It is not necessary that “meth lab cleanup” be the only generic name for these services. 26 “Meth lab cleanup” does not even need to be the most common generic name for the 27 services. All that matters is whether “meth lab cleanup” is one of the generic names for 28 ORDER – 11 1 the services. Bio Clean’s evidence shows that is the case. Meth Lab Cleanup’s evidence 2 shows only that there exist several other generic names for the same services. See Dkt. 3 ##144-145. But other examples of other generic names do not undermine Bio Clean’s 4 proof that “meth lab cleanup” is a generic name. 5 Joseph Mazzuca also goes to great lengths showing that Bio Clean’s declarants 6 have heard of Meth Lab Cleanup. See Dkt. #144. According to Mr. Mazzuca, this shows 7 that the declarants have all testified falsely in stating that, to their knowledge, the term 8 “meth lab cleanup” “is not associated with any particular company.” See id.; Dkt. ##133- 9 2—133-40. However, it is clear from the context of the entire declarations that the 10 declarants are not intending to state that they have never heard of a company called Meth 11 Lab Cleanup. Instead, their intention is to show that, to them, the term “meth lab 12 cleanup” is not associated with only one company, but is associated with all the 13 companies in the industry. See, e.g., Dkt. #133-2. This statement is not undermined by 14 the declarants’ knowledge that a company named Meth Lab Cleanup exists. 15 Joseph Mazzuca also points out that Bio Clean’s declarants are biased. See Dkt. 16 #144. He states that many of them are Bio Clean employees or former employees, and 17 the others are Meth Lab Cleanup’s competitors, many of whom are involved in litigation 18 with Meth Lab Cleanup. See id. The Court acknowledges this fact in its assessment of 19 the weight of this evidence. However, this fact applies even more strongly to Meth Lab 20 Cleanup’s “third party” declarations. 21 Meth Lab Cleanup has submitted nine declarations from professionals in the 22 industry. See Dkt. ##142-1—142-9. All nine of them declare that they are not aware of 23 anyone in the industry using the term “meth lab cleanup” to describe the services they 24 offer. Id. However, all nine of these declarations are from sub-contractors who work for 25 Meth Lab Cleanup. Id. This makes them almost as biased as current Bio Clean 26 employees, and even more biased than Bio Clean’s other industry declarants. See Self- 27 Realization Fellowship Church, 59 F.3d at 910. Moreover, Bio Clean has submitted 28 ORDER – 12 1 evidence that five of the nine declarants use the phrase “meth lab cleanup” on their own 2 websites to describe the services they offer. See Dkt. #148. The importance of this fact 3 cannot be overstated. More than half of the declarants testifying that they do not know of 4 anyone in the industry using “meth lab cleanup” in a generic manner are, themselves, 5 using meth lab cleanup in a generic manner. Even if the other four declarants truly do not 6 know of anyone using the phrase in a generic way, their personal knowledge would be 7 irrelevant, since Bio Clean’s evidence clearly shows that the phrase is, in fact, used 8 generically in the industry, regardless of whether these four sub-contractors are aware of 9 it. 10 Finally, Meth Lab Cleanup argues that Bio Clean has not submitted any evidence 11 from consumers. Dkt. #142 at 17. This is true. But neither has Meth Lab Cleanup. 12 Moreover, given the numerous examples Bio Clean has submitted of generic usage of the 13 phrase “meth lab cleanup” in newspapers, by governmental agencies, in online Yellow 14 Pages, and by competitors in the industry, the Court finds no reasonable jury could 15 conclude that the phrase “meth lab cleanup” is not generic. The Court therefore finds that 16 there is no genuine issue of material fact as to whether Meth Lab Cleanup’s trademarks 17 are invalid. Accordingly, the Court GRANTS Bio Clean’s motion for summary judgment 18 on all six of its counterclaims for trademark cancellation. 2. 19 20 Descriptiveness and Secondary Meaning In the alternative, the Court finds that even if “meth lab cleanup” was not a generic 21 mark, it would still be a descriptive mark without secondary meaning, and therefore still 22 invalid and subject to cancellation. 23 A descriptive mark is a mark that “describes the qualities or characteristics of a 24 good or service.” Park ‘N Fly, 469 U.S. at 194. Descriptive marks can only be 25 trademarked if they have acquired a “secondary meaning.” Id. “To determine whether a 26 descriptive mark has secondary meaning, a finder of fact considers: (1) whether actual 27 purchasers of the product bearing the claimed trademark associate the trademark with the 28 ORDER – 13 1 producer, (2) the degree and manner of advertising under the claimed trademark, (3) the 2 length and manner of use of the claimed trademark, and (4) whether use of the claimed 3 trademark has been exclusive.” Yellow Cab Co. of Sacramento v. Yellow Cab of Elk 4 Grove, Inc., 419 F.3d 925, 930 (9th Cir. 2005). In the Ninth Circuit, consumer surveys 5 can be the most persuasive evidence of secondary meaning. See Levi Strauss & Co. v. 6 Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir. 1985) (en banc). 7 A mark cannot be both generic and descriptive. See Park ‘N Fly, 469 U.S. at 193- 8 94. As discussed above, the Court finds that the term “meth lab cleanup” is generic. The 9 Court finds that “meth lab cleanup” would be understood by consumers as the name of 10 the services offered, and not as a description of the qualities or characteristics of the 11 services offered. Nevertheless, even if the Court were to assume that “meth lab cleanup” 12 was not a generic mark, it would certainly be a descriptive mark. Even Meth Lab 13 Cleanup does not contest this. See Dkt. #142 at 12-14. The question then becomes 14 whether the phrase “meth lab cleanup” has acquired secondary meaning. See Park ‘N 15 Fly, 469 U.S. at 194. 16 The USPTO originally found that the phrase “meth lab cleanup” was descriptive 17 without secondary meaning. See Dkt. ##48 at 3, ¶ 8, 135-8 at 5. Meth Lab Cleanup then 18 submitted a declaration stating that Meth Lab Cleanup had been using the phrase 19 continuously and substantially exclusively for at least five years. See Dkt. ##135-13 at 2, 20 146 at 3, ¶ 5. Based on this declaration, the USPTO found that “meth lab cleanup” had 21 acquired secondary meaning, and allowed Meth Lab Cleanup to register its marks. See 22 Dkt. #1-1 at 2-7. This registration entitles Meth Lab Cleanup to a presumption of 23 secondary meaning. See 15 U.S.C. §§ 1057(b), 1115(a); Sand Hill Advisors, LLC v. Sand 24 Hill Advisors, LLC, 680 F. Supp. 2d 1107, 1116 (N.D. Cal. 2010). However, as 25 discussed in more detail above, Bio Clean has rebutted this presumption by showing that 26 Meth Lab Cleanup was not the substantially exclusive user of the phrase. Bio Clean’s 27 evidence clearly shows that competitors, newspaper reporters, governmental agencies, 28 ORDER – 14 1 and online Yellow Pages all used the phrase “meth lab cleanup” to describe the services 2 offered by all competitors in the industry, and not just Meth Lab Cleanup. See Dkt. 3 ##133-2—133-40, 134-1—134-2, 134-6—134-8, 135-1—135-7, 135-12, 135-15, 141. 4 Since Meth Lab Cleanup was granted registration based on its assertion of substantial 5 exclusivity, and Bio Clean has shown that Meth Lab Cleanup’s use was not substantially 6 exclusive, Bio Clean has overcome the presumption of validity created by the 7 registration, and shifted the burden back to Meth Lab Cleanup to show that consumers 8 associate the phrase “meth lab cleanup” with their company. See Cold War Museum, Inc. 9 v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358 (Fed. Cir. 2009). 10 Meth Lab Cleanup has not done this. Meth Lab Cleanup has not submitted any 11 consumer surveys or other direct evidence of consumer beliefs. Instead, Meth Lab 12 Cleanup has offered the testimony of its principals and sub-contractors that they associate 13 the phrase “meth lab cleanup” with their company, see Dkt. ##43, 142-1—142-9, 143- 14 145, but this evidence is entitled to little weight, see Self-Realization Fellowship Church, 15 59 F.3d at 910. Meth Lab Cleanup has also not shown lengthy use, since it has only been 16 in business since 2003. See Dkt. #43 at 1, ¶ 2. As to advertising, Julie Mazzuca states 17 that Meth Lab Cleanup has spent $92,521 in advertising over the last five years. See Dkt. 18 #143 at 4, ¶ 12. As proof, Meth Lab Cleanup has submitted a couple of print ads. See 19 Dkt. #143-9. However, Meth Lab Cleanup has not submitted any evidence about the 20 exposure of the relevant consumer base to this advertising, as compared to the advertising 21 of its competitors. The mere fact that Meth Lab Cleanup has engaged in some 22 advertising is not enough, by itself, for a jury to find that consumers associate the phrase 23 “meth lab cleanup” with this company in particular. 24 In sum, given the lack of exclusivity, and the lack of evidence from actual 25 consumers, the Court finds that no reasonable jury could conclude that the phrase “meth 26 lab cleanup” has acquired secondary meaning. This finding would serve as an alternative 27 basis for the Court to GRANT Bio Clean’s motion for summary judgment. 28 ORDER – 15 3. 1 2 Senior Use Since the Court has found that no reasonable jury could conclude that the phrase 3 “meth lab cleanup” can be trademarked, Bio Clean’s counterclaims for trademark 4 cancellation based on senior use are moot. However, in the interest of completeness, the 5 Court notes that if there was a genuine issue of material fact as to whether “meth lab 6 cleanup” could be trademarked, the Court would not grant summary judgment to Bio 7 Clean based on its senior use defense. 8 A trademark can be cancelled if the challenger to the mark can show that the 9 challenger used the mark prior to the trademark holder’s use. See Sengoku Works Ltd. v. 10 RMC Intern., Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). Bio Clean argues that any prior 11 use is sufficient for cancellation, and so Bio Clean’s prior descriptive use of the phrase 12 “meth lab cleanup” makes Bio Clean the senior user. See Dkt. #133 at 23. This 13 argument is based on a single quote from a single district court case. See id. (quoting 14 Minutemen Press Int’l, Inc. v. Minute-Men Press, Inc., No. C 81 1832, 1983 U.S. Dist. 15 LEXIS 19613 (N.D. Cal. Jan. 31, 1983). However, all that case says is that a trademark 16 can be cancelled even if “the challenger used the term in a nontrademark sense, e.g., as a 17 trade name.” Id. (emphasis added) (internal quotation marks omitted). This comports 18 with the court’s earlier statement that priority goes to “the first to use the mark as either a 19 name or mark.” Id. (emphasis added). Bio Clean does not allege that it used the phrase 20 “meth lab cleanup” as either a name or a mark, but rather that it used the phrase in a 21 generic way to describe its services. See Dkt. #134 at 3, ¶ 9. Generic or descriptive use 22 of a phrase does not create priority. See 2 J. Thomas McCarthy, McCarthy on 23 Trademarks and Unfair Competition § 16:34 (4th ed. 2013) (“[M]ere priority of use (as 24 for technical trademarks) is insufficient. It is the party who first achieved trademark 25 significance in the mark through secondary meaning who is the senior user of such a 26 mark.”). Therefore, if the Court had determined that a jury could find that the phrase 27 28 ORDER – 16 1 “meth lab cleanup” could be trademarked, the Court would DENY summary judgment to 2 Bio Clean on its fair use defense. ii. Effect of Trademark Cancellation on Meth Lab Cleanup’s Claims For 3 Trademark Infringement and Unfair Competition 4 All three of Meth Lab Cleanup’s claims for trademark infringement and unfair 5 6 competition require proof of a valid trademark. See eAcceleration Corp. v. Trend Micro, 7 Inc., 408 F. Supp. 2d 1110, 1114 (W.D. Wash. 2006). The Court has found that there is 8 no genuine issue of material fact as to whether Meth Lab Cleanup’s trademarks are 9 generic and invalid. The Court therefore GRANTS Bio Clean’s motion for summary 10 judgment on all three of Meth Lab Cleanup’s claims. iii. Bio Clean’s Fair Use Defense 11 12 Since the Court has granted summary judgment to Bio Clean based on the 13 invalidity of Meth Lab Cleanup’s trademarks, Bio Clean’s fair use defense has become 14 moot. However, even if the Court had found that Meth Lab Cleanup’s trademarks were 15 valid, the Court would still grant summary judgment to Bio Clean based on fair use. Fair use is an affirmative defense to trademark infringement. 15 U.S.C. 16 17 § 1115(b)(4); KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 18 118 (2004). The classic fair use defense involves the use of a descriptive trademark. See 19 id. at 122. In order for the defense to apply, the defendant must show that the trademark 20 was “used descriptively, not as a mark, fairly, and in good faith.” Id. at 124. Bio Clean 21 argues that it has only ever used the phrase “meth lab cleanup” in a descriptive manner, 22 not as a trademark, and that its use has been fair and in good faith. See Dkt. #133 at 26- 23 27. 24 Meth Lab Cleanup acknowledges that, in the past, Bio Clean used the phrase 25 “meth lab cleanup” in a descriptive sense, and that use did not constitute infringement. 26 See Dkt. #142 at 18, 22-23. However, Meth Lab Cleanup argues that, starting in 2012, 27 28 ORDER – 17 1 Bio Clean began deliberately and in bad faith using the phrase in a trademark sense. See 2 id. at 18-20. 3 Meth Lab Cleanup points to two uses on Bio Clean’s website that it claims are not 4 protected by fair use. See id. at 7, 18. First, Bio Clean changed one of the tabs listing the 5 services offered by Bio Clean from “Drug Lab Cleanup & Disposal” to “Meth Lab 6 Cleanup.” See id., Dkt. #143-11 at 3-4. Second, Bio Clean added the metatag “meth lab 7 cleanup” to its website. Dkt. ##142 at 7, 18, 143-11 at 6-10. Meth Lab Cleanup argues 8 that these uses were not in good faith, and were intended to divert business from Meth 9 Lab Cleanup. See Dkt #142 at 19. However, the only evidence Meth Lab Cleanup has 10 offered to support its claim of bad faith is that Bio Clean made these change after four of 11 its employees attended a training session by Meth Lab Cleanup. See id. at 3. Meth Lab 12 Cleanup misleadingly claims that the website changes came “shortly” after the training. 13 See id. However, closer inspection reveals that Bio Clean employees attended the 14 training in 2009, see Dkt. #43 at 4, ¶ 15, and three years later, in 2012, the changes to the 15 website were made, see Dkt. #143-11 at 3-4. This long interval between the training and 16 website changes negates any inference of bad faith. 17 There is also no genuine issue of fact that these uses on Bio Clean’s website are 18 descriptive, and not trademark uses. The first use of the phrase “meth lab cleanup” is as a 19 label on one of many tabs that users can click to see different services offered by Bio 20 Clean. See Dkt. #143-11 at 4. Other tabs nearby include “Bed Bugs,” “Bio-Recovery,” 21 “Hoarders,” and “Crime Scene.” See id. Before the changes to the website, this tab was 22 labeled “Drug Lab Cleanup & Disposal.” See id. at 3. At the top of Bio Clean’s website, 23 in much larger letters, is the name “BioClean, Inc.” with a symbol. See id. at 4. In this 24 context, it is clear that Bio Clean, Inc. is the source of the services, and “Meth Lab 25 Cleanup” is simply one of the services offered. 26 The other use on the website, in the metatags, is also descriptive, and not as a 27 trademark. The vast majority of visitors to the website will not see the metatag, so it 28 ORDER – 18 1 doesn’t make sense to claim Bio Clean is using this invisible tag to indicate the source of 2 its services. Moreover, the context of this metatag, in amongst other tags such as “crime 3 scene cleanup,” “biohazard cleanup,” “blood,” “body fluid,” and “hoarding cleanup,” see 4 Dkt. #143-11 at 9, shows that the phrase is being used to describe Bio Clean’s services, 5 and not to describe the source of those services. 6 In sum, there is no genuine issue of material fact that Bio Clean used the phrase 7 “meth lab cleanup” “descriptively, not as a mark, fairly, and in good faith.” See KP 8 Permanent Make-Up, 543 U.S. at 124. Therefore, if the Court had not granted summary 9 judgment to Bio Clean based on trademark invalidity, the Court would still GRANT 10 summary judgment to Bio Clean based on its fair use defense. V. CONCLUSION 11 12 13 14 For the foregoing reasons, the Court GRANTS Defendants’ Motion for Summary Judgment. Dkt. #133. The Court hereby ORDERS as follows: 1. That portion of the Court’s December 15, 2015 Order dealing with Plaintiff’s 15 Motion for Partial Summary Judgment is RESCINDED. Dkt. #54. 16 2. Defendants’ Motion for Summary Judgment is GRANTED. Dkt. #133. a. Summary judgment is granted in favor of Defendants on Plaintiff’s 17 18 claims for federal unfair competition, pursuant to 15 U.S.C. § 1125(a) 19 (see Dkt. #1 at 12-13, ¶¶ 49-56), Washington State common law 20 trademark infringement and unfair competition (see Dkt. #1 at 13-14, ¶¶ 21 57-64), and federal trademark infringement, pursuant to 15 U.S.C. 22 § 1114 (see Dkt. #1 at 15-16, ¶¶ 65-72). 23 b. Summary judgment is granted in favor of Bio Clean and against 24 Plaintiff on Bio Clean’s counterclaims for “Cancellation and 25 Declaration of Invalidity” of Plaintiff’s federal trademark registrations. 26 See Dkt. #17 at 24- 27, ¶¶ 117-134. 27 28 ORDER – 19 1 c. Bio Clean’s seventh counterclaim for false advertising in violation of 15 2 U.S.C. § 1125(a) (see Dkt. #17 at 27-28, ¶¶ 135-141) is not addressed 3 by this Order. 4 5 DATED this 31st day of August, 2016. 6 7 A 8 9 The Honorable Richard A. Jones United States District Judge 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ORDER – 20
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