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3                8.  Defendant’s intent

 

4                “[A]n intent to confuse customers is not required for a finding of trademark

 

5    infringement.” GoTo.com, Inc, 202 F.3d at 1208. Accordingly, this factor is of “minimal

 

6    importance.” Id. (declining to attempt to divine the defendant’s intent). Clearly Food

 

7    establishes that Top Shelf’s founders were aware of the Clearly Canadian brand, product,

 

8    and trademark at the time they adopted the Clearly Kombucha mark, which weighs in

 

9    favor of infringement.8  See (Whittaker Decl. Ex. B (“Cargle Dep.”) at 99:17-101:22);

 

10    Surfvivor Media, 406 F.3d at 634. For its part, Top Shelf’s founder testifies that the

 

11    intent in changing the name of its product to Clearly Kombucha was both to emphasize

 

12    the “clear” nature of its product, which is the result of a filtration system that removes

 

13    floating solids ordinarily found in kombucha, as well as to “reflect transparency in the

 

14    brewing process.” (Cargle Decl. ¶¶ 12-13; Zarrow Dep. at 16:22-17:2.) This minimal

 

15    evidence does little to aid a jury’s determination of intent. Because this factor is

 

16    “minimally important,” the court concludes that this factor is neutral for the purposes of

 

17    summary judgment. See GoTo.com, Inc, 202 F.3d at 1208.

 

18                9.  Summary

 

19                The Ninth Circuit has consistently observed that, “[b]ecause of the intensely

 

20    factual nature of trademark disputes, summary judgment is generally disfavored in the

 

21

8 Although Clearly Food contends that Top Shelf purchased bottles of Clearly Canadian in

22    August of 2011 in order to mimic their labeling, Clearly Food puts forth no evidence supporting this assertion. (Compare Resp. (citing Whittaker Decl. Ex. P) with Whittaker Decl. (omitting Exhibit P).)

 

 

 

 

 

1    trademark arena.” Entrepreneur Media, Inc, 279 F.3d at 1140. That observation holds

 

2    true here. The court finds that, on this record, a majority of the factors—namely, the

 

3    similarity of marks, the relatedness of the products, the strength of the mark, actual

 

4    confusion, and consumer degree of care—raise questions of material fact that a jury could

 

5    reasonably resolve in Clearly Food’s favor. More importantly, the court finds that, taking

 

6    the evidence in the light most favorable to Clearly Food, a jury evaluating the totality of

 

7    the circumstances could find that these factors show a likelihood of confusion between

 

8    the Clearly Canadian and Clearly Kombucha products and marks. See Pom Wonderful

 

9    LLC, 775 F.3d at 1125. Because a reasonable jury could find a likelihood of confusion as

 

10    to the origin of the Clearly Kombucha beverages, summary judgment on Clearly Food’s

 

11    trademark infringement claim is inappropriate. See Mattel, 353 F.3d at 806-07;

 

12    Entrepreneur Media, 279 F.3d at 1141.

 

13    F.         Dilution

 

14                 “Dilution” refers to the “whittling away of the value of a trademark” when the

 

15    mark is used to identify different products. Mattel, Inc. v. MCA Records, Inc., 296 F.3d

 

16    894, 903 (9th Cir. 2002). “A plaintiff seeking relief under federal anti-dilution law must

 

17    show that its mark is famous and distinctive, that defendant began using its mark in

 

18    commerce after plaintiff’s mark became famous and distinctive, and that defendant’s

 

19    mark is likely to dilute plaintiff’s mark.”9  Levi Strauss & Co. v. Abercrombie & Fitch

 

20    Trading Co., 633 F.3d 1158, 1169 (9th Cir. 2011) (quoting Visa Int’l Serv. Ass’n v. JSL

 

21

9 There are two types of dilution:  dilution by blurring and dilution by tarnishment.  15 U.S.C.

22    § 1125(c)(2)(B), (C); Mattel, Inc., 296 F.3d at 903.

 

 

 

 

 

1    Corp., 610 F.3d 1088, 1089-90 (9th Cir. 2010)). Top Shelf challenges only one element

 

2    of this test; specifically, Top Shelf contends that Clearly Food cannot show that the

 

3    Clearly Canadian mark is famous. (Mot. at 18.)

 

4                “[A] mark is famous if it is widely recognized by the general consuming public of

 

5    the United States as a designation of source of the goods or services of the mark’s

 

6    owner.” 15 U.S.C. § 1125(c)(2)(A). To determine the degree of fame a mark retains,

 

7    courts look to the following four non-exclusive factors:

 

8                (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

9

(ii)  The  amount,  volume,  and  geographic  extent  of  sales  of  goods  or

10                services offered under the mark.

 

11                (iii) The extent of actual recognition of the mark.

 

 

12                (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.

13

Id.see also Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 635 (9th Cir. 2008).

14

Protection from dilution is a cause of action “reserved for a select class of marks—those

15

marks with such powerful consumer associations that even non-competing uses can

16

impinge on their value.” Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002,

17

1011 (9th Cir. 2004). For this reason, protection from dilution extends “only to those

18

whose mark is a ‘household name.’” Id.

19

Top Shelf puts forth the following evidence showing that Clearly Food cannot

20

prove that the Clearly Canadian mark was famous as of early 2011, the date the Clearly

21

Kombucha products were launched. (See Mot. at 18-19; Cargle Decl. ¶ 14.) A

22

 

 

 

 

 

1    consulting group’s 2007 report on the Clearly Canadian trademark showed that only

 

2    34 % of the survey respondents who had consumed flavored soda or water within the last

 

3    month (and only 22% of the survey respondents overall) were aware of the Clearly

 

4    Canadian brand. (See 2007 Survey at 4-5, 10, 22.) This recognition rate was much lower

 

5    than the rate for competitors such as Aquafina (94%), Schweppes (77%), Perrier (76%),

 

6    VitaminWater (61%), and Pellegrino (43%). (Id.) The report concluded that, in 2007,

 

7    the brand was “in a good starting place for rebuilding.” (Id.)

 

8                Sales of the Clearly Canadian product, however, had declined steadily between

 

9    1992 and 2007, and between 2007 and 2009 they dropped to a minimal amount. (See

 

10    2014 Investor Pres. at 14; Trustee’s Rep. at 3 (stating that after 2005, CC Beverage

 

11    “struggled in the competitive beverage market” despite “attempts . . . to revive the

 

12    business”).) In 2009, production of Clearly Canadian beverages ceased. (6/3/14 Khan

 

13    Email; 12/22/11 Khan Email.) By 2010, CC Beverage “no longer ha[d] meaningful

 

14    operations.” (Trustee’s Rep. at 3; 2012 Bus. Plan at 5 (“The brand . . . entered dormancy

 

15    in late 2010 . . . .”)  Cybersquatters had taken over the Clearly Canadian website

 

16    domains. (Ledden Decl. Ex. 10.) Negligible sales of Clearly Canadian were occurring

 

17    on the secondary market. (See Bogen Decl. ¶ 5, Attachs. A, B, C; Colley Dep. at 23:6-

 

18    15; 24:19-25:3.)

 

19                Clearly Food’s responsive briefing does not mention its trademark dilution claim,

 

20    or otherwise attempt to rebut Top Shelf’s contention that the Clearly Canadian mark was

 

21    not famous in early 2011. (See Resp.) The court will not sift through the record

 

22    searching for evidence on Clearly Food’s behalf. See United States v. Dunkel, 927 F.2d

 

 

 

 

 

1    955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”)

 

2    The court finds that the evidence Clearly Food put forth to support its trademark

 

3    infringement claim is insufficient to raise a question of fact regarding the dilution claim.

 

4                Specifically, the facts that Clearly Canadian’s social media page has received

 

5    35,000 “Likes” and an Internet comedy show recently discussed Clearly Canadian

 

6    beverages for four minutes, see supra § III.E, are insufficient to show that Clearly

 

7    Canadian was a “household name” to consumers in the United States in early 2011. That

 

8    evidence does not remedy Clearly Food’s failure to point the court to any affirmative

 

9    evidence showing the “duration, extent, and geographic reach of advertising and

 

10    publicity” of the Clearly Canadian mark; the “amount, volume, and geographic extent of

 

11    sales of goods or services offered under the mark”; or the “extent of actual recognition of

 

12    the mark.” See 15 U.S.C. § 1125(c)(2)(A). That evidence also cannot negate the fact that

 

13    the record currently before the court shows that, as of 2007, consumer awareness of the

 

14    Clearly Canadian brand was already low, sales up to that point had been lackluster, and

 

15    the brand’s visibility only diminished from that point on. See Jada Toys, Inc., 518 F.3d

 

16    at 635 (“[A] reasonable trier of fact could conclude that the HOT WHEELS mark is

 

17    famous [because] it has been in use for over thirty-seven years; 350 million dollars have

 

18    been expended in advertising the mark; three billion HOT WHEELS units have been sold

 

19    since the inception of the mark; and HOT WHEELS are sold in all fifty states and

 

20    throughout the world.”).

 

21                Accordingly, the court can only conclude that Clearly Food has failed to carry its

 

22    burden to put forth evidence from which a trier of fact could reasonably find in Clearly

 

 

 

 

 

1    Food’s favor. Celotex, 477 U.S. at 324. Because no trier of fact considering the record

 

2    currently before the court could conclude that the Clearly Canadian trademark was

 

3    “widely recognized by the general consuming public of the United States” in early 2011,

 

4    summary judgment on the trademark dilution claim is appropriate. See 15 U.S.C.

 

5    § 1125(c)(2)(A).

 

6    G.        State Law Claims

 

7                Clearly Food also brings claims under Washington state law for trademark

 

8    infringement and unfair competition. (See Compl.) Top Shelf moves for summary

 

9    judgment in its favor on these claims as well. (Mot. at 26.) Top Shelf, however, fails to

 

10    set forth the applicable state law, or otherwise explain why the claims should be

 

11    adjudicated in its favor without a trial. (See id.) Instead, Top Shelf asserts that there are

 

12    no material issues of fact with respect to those claims “for the very same reasons [as]

 

13    discussed above with respect to Plaintiff’s federal trademark infringement claims.” (Id.)

 

14    Needless to say, Top Shelf has failed to carry its burden of production. See Nissan Fire

 

15    & Marine Ins. Co., 210 F.3d at 1106. Summary judgment on the remaining state law

 

16    claims is not appropriate.

 

17    H.        Motions to Seal

 

18                In the course of briefing this motion, the parties have managed to generate an

 

19    inordinate number of motions to seal, some of which the court has granted. (See

 

20    generally Dkt.) At this time, three motions are still outstanding: Top Shelf’s ex parte

 

21    motion to seal documents associated with its motion for summary judgment (Dkt. # 50);

 

22

 

 

 

 

 

1    Clearly Food’s motion to seal documents associated with its responsive brief (Dkt. # 52);

 

2    and Top Shelf’s motion to seal documents associated with its reply brief (Dkt. # 58).

 

3                Under the court’s Local Rules, “[t]here is a strong presumption of public access to

 

4    the court’s files.” Local Rules W.D. Wash. LCR 5(g); see also Nixon v. Warner

 

5    Commc’ns, Inc., 435 U.S. 589, 597 (1978). Accordingly, a party must demonstrate

 

6    “compelling reasons” to seal judicial records attached to a dispositive motion. Kamakana

 

7    v. City & Cnty. of Honolulu, 447 F.3d 1172, 1179 (9th Cir. 2006). “Only in rare

 

8    circumstances should a party file a motion, opposition, or reply under seal.” Local Rules

 

9    W.D. Wash. LCR 5(g)(5).

 

10                In an attempt to clarify the issues raised by the parties’ remaining motions to seal,

 

11    the court directed the parties to provide a joint list identifying the docket number of each

 

12    document subject to a pending motion to seal. (Dkt. # 110.) Inexplicably, the parties

 

13    responded to the court’s invitation by listing only the documents allegedly subject to the

 

14    motion to seal found at Docket. No. 101, which the court had already granted. (See Dkt.

 

15    # 111.) The court cannot help parties who refuse to help themselves. Accordingly, the

 

16    court interprets the remaining motions to seal to the best of its ability, and rules as

 

17    follows.

 

18                First, the court interprets Top Shelf’s motion at Docket No. 58 as a premature

 

19    motion to seal the subsequently filed reply brief (Dkt. # 102) and accompanying exhibits

 

20    (Dkt. # 103). The court, however, has already stricken the evidence filed with Top

 

21    Shelf’s reply brief from the record. See supra § III.C n.3. Therefore, Top Shelf’s motion

 

22    to seal the exhibits found at Docket. No. 103 is moot. The court also finds that Top Shelf

 

 

 

 

 

1    has not shown good cause to seal the reply brief itself. See Kamakana, 447 F.3d at 1179.

 

2    The brief does not mention any trade secrets, confidential information, marketing

 

3    strategies, or business plans of either party. “Only in rare circumstances should a party

 

4    file a motion, opposition, or reply under seal.” Local Rules W.D. Wash. LCR 5(g)(5).

 

5    Those circumstances are not found here. Therefore, the court DENIES Top Shelf’s

 

6    motion to seal found at Docket No. 58. For completeness’ sake, the court also STRIKES

 

7    the exhibits filed at Docket No. 59 because they are redundant to the exhibits filed at

 

8    Docket No. 103.

 

9                Second, the court refers to Clearly Food’s response (Dkt. # 60) to Top Shelf’s

 

10    motion at Docket No. 50 to determine which exhibits associated with Top Shelf’s motion

 

11    for summary judgment should be sealed.10  See Local Rules W.D. Wash. LCR 5(g)(3)

 

12    (providing that the party that designated a document as confidential pursuant to a

 

13    protective order has the burden of showing it should be sealed). The court concludes that

 

14    good cause exists to seal Exhibits 3, 4, 6-8, 11-15, 17, and 22 to Top Shelf’s motion for

 

15    summary judgment, which are interspersed throughout Docket Nos. 47-1 through 47-16,

 

16    and 48. The exhibits contain Clearly Food’s confidential financial projections, marketing

 

17

 

18                10 Top Shelf erroneously filed this motion to seal as an ex parte motion.  (See Dkt. # 51 (order directing Top Shelf to show cause why the motion was filed as an ex parte motion); Dkt. #

19    62 ¶ 13 (Top Shelf’s response conceding that the “ex parte filing was the result of an error in procedure”).) Ordinarily, Clearly Foods would not receive notice of the court’s ruling on an

20    opposing party’s ex parte motion.  The court, however, finds it appropriate to provide Clearly

Food notice of its ruling for three reasons:  (1) the ex parte restriction is an error, (2) the

21    operative document is Clearly Food’s response, and (3) the motion concerns Clearly Food’s

confidential information.  Therefore, the court will address the substance of its ruling on the

putative ex parte motion in this order.  For docketing purposes only, a separate, non-public order

22    ruling on the ex parte motion will follow this order.

 

 

 

 

 

1    strategies, and business plans, all of which could be used against Clearly Food by

 

2    competitors. See Kamakana, 447 F.3d at 1179. However, the court finds that there is not

 

3    good cause to seal the motion itself; Clearly Foods has not shown that the motion

 

4    discloses confidential business information. Accordingly, in a subsequent order, the

 

5    court will grant in part and deny in part Top Shelf’s ex parte motion to seal found at

 

6    Docket No. 50.

 

7                A problem arises because Top Shelf has included documents that should be sealed

 

8    in the same pdf files as documents that should not be sealed. (See Dkt. # 47-1 through

 

9    47-16.) To remedy this problem, the court DIRECTS the clerk to maintain the seal on

 

10    Docket Nos. 47 and 48 in their entirety, and ORDERS Top Shelf to file unsealed versions

 

11    of Exhibits 1, 2, 5, 9, 10, 16, and 18-21 to Top Shelf’s motion for summary judgment

 

12    within 10 days of the date of this order.

 

13                Third, the court refers to Top Shelf’s response (Dkt. # 63) to Clearly Food’s

 

14    motion to seal at Docket No. 52 to determine which exhibits associated with Clearly

 

15    Food’s opposition should be sealed. See Local Rules W.D. Wash. LCR 5(g)(3).

 

16    Although Clearly Food moved to seal the opposition and all exhibits filed with the

 

17    opposition, Top Shelf clarifies that only Exhibits C and E to the Whitaker Declaration

 

18    should be sealed. (See Dkt. # 63.) These exhibits, which are the depositions of Mr.

 

19    Cargle and Ms. Zarrow, are found at Docket Nos. 57-3 and 57-7, respectively. The court

 

20    concludes that good cause exists to seal those exhibits: both Mr. Cargle and Ms. Zarrow

 

21    testified about Top Shelf’s business plans, marketing strategies, financial history and

 

22    projections, and other confidential information, and this information could be used

 

 

 

 

 

1    against their company by competitors. See Kamakana, 447 F.3d at 1179. Accordingly,

 

2    the court GRANTS in part and DENIES in part Clearly Food’s motion to seal at Docket

 

3    No. 52. The court directs the clerk to LIFT the seal on every document in Docket Nos.

 

4    54 through 57, with the exception of Docket Nos. 57-3 and 57-7, which shall remain

 

5    under seal.

 

6    I.         Motion to strike

 

7                On the last page of its supplemental response, Clearly Food makes a desultory

 

8    attempt to strike the expert report of Mr. Silverman on the basis that Mr. Silverman’s

 

9    opinion is premised on inadequate facts and/or factual inaccuracies. (Supp. Resp. at 15.)

 

10    Because the briefing on this subject is incomplete, the court denies the motion to strike as

 

11    currently presented.

 

12                                                          IV.      CONCLUSION

 

13                For the foregoing reasons, the court GRANTS in part and DENIES in part

 

14    Defendant’s motion for summary judgment (Dkt. # 47).  The court STRIKES the exhibits

 

15    filed at Docket Nos. 59 and 103. The court DENIES Top Shelf’s motion to seal (Dkt.

 

16    # 58) and DIRECTS the clerk to LIFT the seal on Docket No. 102. The court ORDERS

 

17    Top Shelf to file unsealed versions of Exhibits 1, 2, 5, 9, 10, 16, and 18-21 to Top Shelf’s

 

18    motion for summary judgment within 10 days of the date of this order. The court

 

19    DIRECTS the clerk to LIFT the seal on Docket No. 47.

 

20    //

 

21    //

 

22    //

 

 

 

 

 

1    Finally, the court GRANTS in part and DENIES in part Clearly Food’s motion to seal

 

2    (Dkt. # 52) and DIRECTS the clerk to LIFT the seal on Docket Nos. 54 through 57, with

 

3    the exception of Docket Nos. 57-3 and 57-7, which shall remain under seal.

 

4                Dated this 28th day of April, 2015.

 

5

 

A

6

 

7

JAMES L. ROBART

8                                                                                        United States District Judge

 

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“The test for likelihood of confusion is whether a ‘reasonably prudent

 

17    consumer’ in the marketplace is likely to be confused as to the origin of the good or

 

18

5 Clearly Food brings claims under both Section 32 of the Lanham Act, 15 U.S.C. § 1114(1), and

19    Section 43 of the Lanham Act, 15 U.S.C. § 1125(a)(1).  (See generally Compl.) Although Section 32 provides protection only to registered marks and Section 43 provides protection to unregistered marks,

with respect to proving infringement, the same “likelihood of confusion” standard applies to both

20    provisions.  See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000); Brookfield

Commc’ns, Inc., v. West Coast Entm’t Corp., 174 F.3d 1036, 1046-47 n.8 (9th Cir.1999).  As such, the

21    court’s analysis of the “likelihood of confusion” standard is independent of the prospective outcome of

Top Shelf’s cancellation-of-registration claim.  See Grupo Gigante SA De CV v. Dallo & Co., 391 F.3d

22    1088, 1108 (9th Cir. 2004) (“Ultimately, very little turns on the cancellation-of-registration claim because

registration is not necessary to establish trademark protection under federal . . . law.”).

 

 

 

 

 

1    service bearing one of the marks.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,

 

2    1140 (9th Cir. 2002).

 

3                The Ninth Circuit has developed an eight-factor test to guide courts in assessing

 

4    likelihood of confusion. Id. (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49

 

5    (9th Cir.1979), abrogated on other grounds by Mattel Inc. v. Walking Mountain Prods.,

 

6    353 F.3d 792, 810 n.19 (9th Cir. 2003)). The non-exclusive factors include (1) strength

 

7    of the protected mark, (2) proximity and relatedness of the goods, (3) type of goods and

 

8    degree of consumer care, (4) similarity of the protected mark and the allegedly infringing

 

9    mark, (5) marketing channel convergence, (6) evidence of actual consumer confusion, (7)

 

10    the defendant’s intent in selecting the allegedly infringing mark, and (8) likelihood of

 

11    product expansion. Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1125 (9th Cir.

 

12    2014).

 

13                The “ultimate question of likelihood of confusion is predominantly factual in

 

14    nature, as is each factor.” Entrepreneur Media, 279 F.3d at 1141. Rather than

 

15    mechanically identifying the number of factors that favor of each party, a court must

 

16    “consider what each factor, and—more importantly—what the analysis as a whole,

 

17    reveals about the ultimate question . . . : the likelihood of consumer confusion as to the

 

18    origin of the product or service bearing the allegedly infringing mark.” Id. At the end of

 

19    the day, “it is the totality of facts in a given case that is dispositive.” Pom Wonderful

 

20    LLC, 775 F.3d at 1125.

 

21    //

 

22    //

 

 

 

 

 

1                1.  Similarity of the marks

 

2                “The greater the similarity between the two marks at issue, the greater the

 

3   likelihood of confusion.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th

 

4   Cir. 2000). The Ninth Circuit has “developed three axioms that apply to the ‘similarity’

 

5    analysis: 1) Marks should be considered in their entirety and as they appear in the

 

6   marketplace; 2) Similarity is best adjudged by appearance, sound, and meaning; and, 3)

 

7    Similarities weigh more heavily than differences.” Entrepreneur Media, Inc., 279 F.3d at

 

8    1144.

 

9                First and foremost, the court notes that both marks appear in the marketplace

 

10    primarily as labels on the bottles of single-serve beverages. (See Mot. at 21 (showing

 

11    pictures of the trademarks alone and as used on bottles).) The salient differences are that

 

12    the Clearly Canadian logo is screen printed, whereas the Clearly Kombucha logo is a

 

13    paper label, and the Clearly Canadian bottle has a “teardrop” shape, whereas the Clearly

 

14    Kombucha label has a traditional “beer bottle” shape. (See Ledden Decl. Ex. 21 (side-by-

 

15    side comparison of the bottled beverages).) Second, the court notes that the appearance

 

16    of the trademarks as used on the bottle labels is not overly similar: the Clearly Canadian

 

17    label has horizontal text and a picture of the fruit that represent’s the beverage’s flavor;

 

18    the Clearly Kombucha label has vertical text and an apparently whimsical drawing; the

 

19    fonts are also different.6  (See id.) Moreover, the logos as used separately from the

 

20

 

 

21                6 The previous version of the Clearly Kombucha bottle looked different:  that version used horizontal writing in a different font, the word “Clearly” was written in significantly larger text than the

22    word “Kombucha,” and the background consisted of brightly colored vertical stripes. (See Whittaker

Decl. Exs. N, O.)

 

 

 

 

 

1    bottles are not overly similar: Clearly Canadian’s logo consists of blue, horizontal text,

 

2    and a red bottle with a maple leaf; Clearly Kombucha’s label is a black, oversized letter

 

3    “C” with the work “Clearly” written vertically inside the “C” and the word “kombucha”

 

4    written in a different font outside of the “C.” (Compare Ledden Decl. Ex. 19 with

 

5    Ledden Decl. Ex. 20.)

 

6                On the other hand, the sound of the trademarks is quite similar: both begin with

 

7    the word “clearly” and end with a word that begins with a phonetic hard “c” sound. See

 

8    Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d

 

9    1369, 1372 (Fed. Cir. 2005) (finding that the first word in the trademark constituted the

 

10    “dominant feature in the commercial impression” created by the mark). In addition, as

 

11    Clearly Food points out, the common word “clearly” is the operative word in both

 

12    trademarks: the Trademark Office required both registrants to disclaim rights to the use

 

13    of the words “Canadian” and “kombucha” without the preceding word “clearly.” (Req.

 

14    for Not. Ex. C; Ledden Decl. Ex. 2 (Appendix A).) Last, the meaning of the trademarks

 

15    is also similar, insofar as they both rely on the word “clearly” to describe an aspect of

 

16    their product. (See Zarrow Dep. at 16:22-17:2.)

 

17                Overall, the court finds that the third axiom—that similarities weigh more heavily

 

18    than differences—controls the result here. Although Top Shelf has identified certain

 

19    differences between the marks, a reasonable jury could find that the similarities in how

 

20    the marks are used in the marketplace and the sound and meaning of the marks outweigh

 

21    those differences. See Entrepreneur Media, Inc., 279 F.3d at 1144. Therefore, the court

 

22

 

 

 

 

 

1    concludes that a reasonable jury could find that the marks are similar. As such, for

 

2    summary judgment purposes, this factor weighs in Clearly Food’s favor.

 

3                2.  Marketing channels

 

4               Here, there is evidence that both companies market and sell their beverages over

 

5    the Internet through their own websites, third party retail sites, and Facebook. (See

 

6    Zarrow Dep. at 51:24-52:5; Cargle Dep. at 83:21-25; Khan Dep. at 46:12-19; 91:15-92:2;

 

7   95:8-15.) Yet, “[g]iven the broad use of the Internet today, the same could be said for

 

8   countless companies.” Playboy Enterprises, Inc. v. Netscape Commc'ns Corp., 354 F.3d

 

9   1020, 1028 (9th Cir. 2004). “Some use of the Internet for marketing . . . does not alone

 

10   and as a matter of law constitute overlapping marketing channels.” Entrepreneur Media,

 

11    Inc., 279 F.3d at 1151.

 

12                The parties hotly contest whether the two products would typically be stored in the

 

13    same shelves, aisles, or general areas of a retail store. (See Mot. at 22 (contending that

 

14    Clearly Kombucha must be located in the refrigerated section); Supp. Resp. (Dkt. # 94) at

 

15    10-11 (contending that Clearly Kombucha appears on warm shelves).) Because the court

 

16    must weigh the facts in the light most favorable to Clearly Food, the court assumes for

 

17   the purposes of this motion that retail stores would choose to display Clearly Kombucha

 

18    products near Clearly Canadian products more often than not, which weighs in favor of

 

19    finding of likelihood of confusion. (See Billick Decl. Ex. I (restocking notes from 2013

 

20    showing that retail stores stocked Clearly Kombucha on warm shelves and next to bottled

 

21    water products such as Perrier, Smart Water, Vitamin Water, Evian, and Fiji, as well as

 

22    next to flavored beverages such as Snapple and Sobe), Ex. J.) The significance of the

 

 

 

 

 

1    potential adjacent storage, however, is blunted by the fact that Clearly Canadian is not

 

2    currently sold in any brick and mortar retail stores. Clearly Food has recently engaged a

 

3    sales and marketing company to market Clearly Canadian “to the top twenty-five grocery

 

4    store chains across the United States,” and expects that Clearly Canadian will be sold in

 

5    unspecified grocery stores in 2015. (2d Khan Decl. ¶¶ 3, 5.) However, it remains unclear

 

6    whether Clearly Canadian will be sold in similar retail stores as Clearly Kombucha, or in

 

7    the same geographic region as Clearly Kombucha, in the near or intermediate future.

 

8    (See Zarrow Dep. at 27:21-28 (explaining that Clearly Kombucha was sold in limited

 

9    stores on the West Coast).)

 

10                In sum, a reasonable jury could not find that the parties’ current marketing

 

11    channels “overlap to any significant degree.” See Entrepreneur Media, Inc., 279 F.3d at

 

12    1151. Future overlap, although possible, is speculative, and the minor existing overlap in

 

13    Internet use is insignificant because the “shared use of a ubiquitous marketing channel

 

14    does not shed much light on the likelihood of consumer confusion,” Network Automation,

 

15    Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1151 (9th Cir. 2011). Therefore, the

 

16    court finds that this factor merits little weight in the likelihood of confusion analysis, and

 

17    what weight it does merit benefits Top Shelf. Id.

 

18                3.  Relatedness of the goods

 

19                “Related goods are generally more likely than unrelated goods to confuse the

 

20    public as to the producers of the goods.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d

 

21    1199, 1207 (9th Cir. 2000). “Related goods are those products which would be

 

22    reasonably thought by the buying public to come from the same source if sold under the

 

 

 

 

 

1    same mark.” Entrepreneur Media, Inc., 279 F.3d at 1147. The Ninth Circuit applies “a

 

2    sliding scale approach as to the weight that relatedness will carry dependent upon the

 

3    strength of the trademark holder’s mark.” Entrepreneur Media, Inc., 279 F.3d at 1147.

 

4                Clearly Food identifies the following undisputed similarities between the two

 

5    products. To begin with the obvious, Clearly Canadian and Clearly Kombucha are

 

6    single-serve, bottled beverages. (See Ledden Decl. Ex. 21.) Moreover, both products are

 

7    “sparkling” (carbonated) beverages, and are marketed as such. (See Dkt. # 47-4 (2014

 

8    presentation to Clearly Canadian investors); Billick Decl. (Dkt. # 95) Ex. A (a December,

 

9    2010 “Gourment California Foods Product Brief” identifying Clearly Kombucha’s “core

 

10    position” as a “lightly sparkling” beverage), Ex. B (2009 business plan to market Top

 

11    Shelf Kombucha as “the world’s first luxury sparkling elixir”), Ex. C (October 2013

 

12    email from Ms. Zarrow to a potential distributor describing Clearly Kombucha as a

 

13    “sparkling, fermented, nonalcoholic tea”), Ex. D (2013 business plan describing Clearly

 

14    Kombucha as a “sparkling fermented tea”), Ex. E, Ex. F at 3, Ex. G (“Brand

 

15    Ambassador” handbook instructing marketers demonstrating Clearly Kombucha in retail

 

16    stores to “[a]sk EVERY person that walks by if they would like a sample of  ‘sparkling

 

17    tea’” unless the person already had kombucha in his or her cart).) Additionally, both

 

18    products are “clear” beverages, and are marketed as such. (See Cargle Dep. (Dkt. # 57-3)

 

19    at 37:1-25; Cargle Decl. ¶¶ 12-13; Zarrow Dep. at 12:20-24; 16:22-25.) Finally, both

 

20    products are perceived as healthy alternatives to other carbonated beverages, such as

 

21    soda, and marketed as such. (See Ledden Decl. Ex. 8 (“2007 Survey”); Dkt. # 47-4 (2014

 

22    presentation to Clearly Canadian investors); 2012 Bus. Plan; Billick Decl. Ex. D (Clearly

 

 

 

 

 

1    Kombucha 2013 business plan) at 9), Ex. E (notes from a Clearly Kombucha marketing

 

2    demonstration).

 

3                Top Shelf points out that Clearly Kombucha differs from Clearly Canadian in that

 

4    it is a flavored fermented tea rather than flavored water. (See Mot. at 22.) Top Shelf

 

5    attempts to further distinguish the products by emphasizing the affirmative health

 

6    benefits allegedly associated with kombucha, as well as the fact that Top Shelf targets a

 

7    “niche” health-conscious demographic. (See Mot. at 21-23.) However, “the relatedness

 

8    of each company’s prime directive isn’t relevant.” Brookfield Commc’ns, Inc. v. W.

 

9    Coast Entm’t Corp., 174 F.3d 1036, 1056 (9th Cir. 1999). Rather, “the focus is on

 

10    whether the consuming public is likely somehow to associate [the alleged infringer’s]

 

11    products with [the mark owner].” Id.see also Am. Int’l Group, Inc. v. Am. Int’l Bank,

 

12    926 F.2d 829, 832 (9th Cir. 1991).

 

13                Viewing the evidence in the light most favorable to Clearly Food, the court

 

14    concludes that a jury could reasonably find that the consuming public is likely to

 

15    associate the Clearly Kombucha product with the Clearly Canadian brand. The thrust of

 

16    Top Shelf’s argument is that the two brands do not directly compete for customers. But

 

17    even if a jury concluded that the two brands do not directly compete, a jury could still

 

18    reasonably find that the similarity of their products—namely, clear, sparkling, single-

 

19    serve beverages—would likely result in consumer confusion between the brands and

 

20    products. See American Int’l Group, Inc., 926 F.2d at 832 (concluding that although the

 

21    parties were not direct competitors, customer confusion could result in light of the

 

22

 

 

 

 

 

1    similarities between the financial services offered by the parties). Therefore, for

 

2    summary judgment purposes, this factor weighs in Clearly Food’s favor.

 

3                4.  Strength of Clearly Canadian’s mark

 

4                “The more likely a mark is to be remembered and associated in the public mind

 

5    with the mark’s owner, the greater protection the mark is accorded by trademark laws.”

 

6    GoTo.com, Inc., 202 F.3d at 1207. The “‘strength’ of the trademark is evaluated in terms

 

7   of its conceptual strength and commercial strength.” Id. “Marks can be conceptually

 

8    classified along a spectrum of increasing inherent distinctiveness.” Id. “From weakest to

 

9    strongest, marks are categorized as generic, descriptive, suggestive, and arbitrary or

 

10    fanciful.” Id. For purposes of this motion, the court concludes that a jury could

 

11    reasonably find that the Clearly Canadian trademark is either descriptive or suggestive.

 

12    See Entrepreneur Media, 279 F.3d at 1141-42 (“Descriptive marks define qualities or

 

13    characteristics of a product in a straightforward way that requires no exercise of the

 

14    imagination to be understood. A suggestive mark is one for which a consumer must use

 

15    imagination or any type of multistage reasoning to understand the mark’s significance,

 

16    the mark does not describe the product’s features, but suggests them.”).

 

17                “Although a suggestive or descriptive mark is inherently a weak mark, it may be

 

18    strengthened by such factors as extensive advertising, length of exclusive use, [and]

 

19    public recognition.” Id. Clearly Food claims that its mark enjoys substantial public

 

20    recognition to this day. (Resp. at 16.) In support of that claim, Clearly Food provides

 

21    evidence that the Clearly Canadian mark has been in use since 1989 (Ledden Decl. Ex. 6

 

22    (“2014 Marketing Pres.”); that CC Beverage sold millions of dollars worth of Clearly

 

 

 

 

 

1    Canadian beverages yearly through 2007 (although sales dwindled substantially after

 

2    1992) (id.); that Clearly Canadian’s Facebook page has received over 35,000 “Likes” by

 

3    members of the public (Screenshot (Dkt. # 57-6)); and that in November 2014, a daily

 

4    Internet comedy show with in excess of one million subscribers discussed the Clearly

 

5    Canadian beverages for four-and-a-half minutes (see Resp. at 13 (citing the Good

 

6    Mythical MORE YouTube Channel at

 

7    https://www.youtube.com/channel/UCzpCc5n9hqiVC7HhPwcIKEg (last accessed April

 

8    28, 2015)); Sewer Adventures Episode November 10, 2014, http://youtu.be/2ajd-

 

9    vy_JM4?t=6m50s (last accessed April 28, 2015). A jury could reasonably find that this

 

10    evidence of public recognition so strengthens the mark as to tip this factor in favor of

 

11    finding a likelihood of confusion.7  See Entrepreneur Media, Inc, 279 F.3d at 1141-42

 

12    (finding that monthly sales of half a million products could strengthen a descriptive mark

 

13    such that the factor weighed in favor of likely confusion). However, this evidence is by

 

14    no means overwhelming; a jury could also reasonably find that the mark remained weak.

 

15    Therefore, the court concludes that, for summary judgment purposes, this factor weighs

 

16    only slightly in Clearly Food’s favor.

 

17

 

18

7 Here, Clearly Food contends—but provides no evidence showing—that the Clearly Canadian

19    mark is incontestable. (Resp. at 2.) The incontestable status of a mark serves as conclusive proof that the mark has secondary meaning.  Entrepreneur Media, Inc., 279 F.3d at 1142, n.3. Therefore, an

incontestable mark cannot be challenged as invalid on the basis that the mark is descriptive and has not

20   acquired secondary meaning.  Id. If the Clearly Canadian mark is incontestable, Top Shelf’s arguments

that the mark is not entitled to protection because it is descriptive must fail.  (See Mot. at 24.) The

21    incontestable status, however, does not require a finding that the mark is strong for infringement purposes.  Entrepreneur Media, Inc., 279 F.3d at 1142, n.3. Therefore, the relative strength or weakness

22    of an incontestable mark is still relevant to the likelihood of confusion analysis.  Id.

 

 

 

 

 

1                5.  Actual confusion

 

2                “Evidence of actual confusion is strong evidence that future confusion is likely.”

 

3    Entrepreneur Media, Inc, 279 F.3d at 1150. However, “the converse is not true.”

 

4    GoTo.com, Inc., 202 F.3d at 1208. Nonetheless, a “reasonable juror may . . . find de

 

5    minimis evidence of actual confusion unpersuasive as to the ultimate issue of likelihood

 

6    of confusion.” Id.

 

7                Here, the parties present conflicting evidence as to confusion. Top Shelf relies on

 

8    a survey taken by its expert, Dr. Thomas Maronick, in which “the majority of

 

9    respondents . . . said that Clearly Kombucha is either not affiliated with or sponsored by

 

10    any other company organization, or they ‘don’t know.’” (Ledden Decl. Ex. 18

 

11    (“Maronick Rep.”) at 9.) For its part, Clearly Food presents evidence of actual consumer

 

12    confusion: in five separate instances, written comments from consumers encountering

 

13    Top Shelf’s products online have expressed the belief that Clearly Kombucha and Clearly

 

14    Canadian are affiliated. (See Whittaker Decl. Exs. M (comment asking Clearly

 

15    Kombucha, “are you no longer making Clearly Canadian, too?”), N (comment next to

 

16    picture of Clearly Kombucha bottles: “instead of clearly Canadian it’s clearly

 

17    Kombucha!”), O (comment next to picture of Clearly Kombucha bottles: “I’ve heard of

 

18    (and loved) Clearly Canadian, but never Clearly Kombucha!”); Ledder Decl. Ex. 13

 

19    (“Silverman Rep.”) ¶ 47 (referencing consumer queries posted on Clearly Kombucha’s

 

20    Facebook page asking, “Are you producing Clearly Canadian too? You are the same

 

21    company yes?” and “Why are you pushing only Clearly Kombucha? Your Clearly

 

22    Canadian should be on top! I used to drink you all the time growing up.”).) Clearly Food

 

 

 

 

 

1    also identifies various flaws in Top Shelf’s survey that Clearly Food claims require the

 

2    expert’s opinion to be discounted. (Resp. at 25-26 (pointing out that a majority of the

 

3    survey respondents also answered that Clearly Kombucha was affiliated with another

 

4    company, or they “don’t know”).)

 

5                The court is not permitted to weigh the evidence on summary judgment. Although

 

6    a jury could reasonably find that Clearly Food’s evidence was de minimus, a jury could

 

7    also reasonably credit Clearly Food’s evidence of actual confusion over Top Shelf’s

 

8    survey. See Americana Trading Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1289 (9th Cir.

 

9    1992) (finding that one letter from a confused consumer plus evidence of retailer

 

10    confusion was sufficient evidence for a trier of fact to find actual confusion). Therefore,

 

11    for summary judgment purposes, this factor weighs in Clearly Food’s favor.

 

12                6.  Likelihood of expansion

 

13                Clearly Food claims that it intends to release a sparkling tea beverage in the

 

14    United States that will overlap with the Clearly Kombucha product. (Mot. at 24. (citing

 

15    Khan Dep. at 106-08). ) However, Clearly Food fails to provide any supporting evidence

 

16    for that assertion. The pages of Mr. Khan’s deposition to which Clearly Food cites do not

 

17    discuss expansion plans into sparkling tea beverages or otherwise. (See Khan Dep. at

 

18    106-08 (discussing whether Mr. Kahn believed Clearly Canadian-branded air fresheners

 

19    would infringe his company’s trademark).) “[M]ere speculation is not evidence.”

 

20    Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005). Clearly

 

21    Food’s “complete inability to adduce any concrete evidence of expansion plans tilts this

 

22    factor in favor of” Top Shelf. Id.

 

 

 

 

 

1                7.  Consumer degree of care

 

2                 “In analyzing the degree of care that a consumer might exercise in purchasing the

 

3   parties' goods, the question is whether a ‘reasonably prudent consumer’ would take the

 

4    time to distinguish between the two product lines. Surfvivor Media, Inc., 406 F.3d at

 

5    634. “[T]he standard used by the courts is the typical buyer exercising ordinary caution .

 

6    . . . [W]hen the goods are expensive, the buyer can be expected to exercise greater care in

 

7    his purchases . . . .”  Network Automation, Inc., 638 F.3d at 1152.

 

8               Again, the parties present conflicting evidence as to the degree of care consumers

 

9    of their products are likely to exercise. Top Shelf’s expert opines that kombucha is a

 

10    “niche product” and that the price point of Clearly Kombucha is high enough, relative to

 

11    other bottled beverages, to foster a relatively greater degree of care among consumers.

 

12    (See Silverman Rep. ¶¶ 55-56.) Top Shelf’s founder testifies that its clients are

 

13    particularly health-conscious, and therefore are more discerning when choosing bottled

 

14    beverages. (Cargle Decl. ¶ 20.) On the other hand, Clearly Canadian points to evidence

 

15    showing that Top Shelf’s beverages have been sold at a variety of price points, ranging

 

16    on the low end from $1.50 to $3.00. (See Supp. Resp. at 12-13).

 

17                “With respect to small, inexpensive goods . . . the consumer is likely to exercise

 

18    very little care.” Surfvivor Media, Inc, 406 F.3d at 634; see also CytoSport, Inc. v. Vital

 

19    Pharm., Inc., 617 F. Supp. 2d 1051, 1076 (E.D. Cal. 2009) (finding a low degree of care

 

20    with respect to bottled drinks costing between $3.00 and $5.00). A jury reviewing the

 

21    parties’ evidence could reasonably find that consumers purchasing Clearly Canadian and

 

22

 

 

 

 

 

1    Clearly Kombucha beverages exercise a low degree of care. Therefore, for the purposes

 

2    of summary judgment, this factor weighs in Clearly Food’s favor.

 

3                8.  Defendant’s intent

 

4                “[A]n intent to confuse customers is not required for a finding of trademark

 

5    infringement.” GoTo.com, Inc, 202 F.3d at 1208. Accordingly, this factor is of “minimal

 

6    importance.” Id. (declining to attempt to divine the defendant’s intent). Clearly Food

 

7    establishes that Top Shelf’s founders were aware of the Clearly Canadian brand, product,

 

8    and trademark at the time they adopted the Clearly Kombucha mark, which weighs in

 

9    favor of infringement.8  See (Whittaker Decl. Ex. B (“Cargle Dep.”) at 99:17-101:22);

 

10    Surfvivor Media, 406 F.3d at 634. For its part, Top Shelf’s founder testifies that the

 

11    intent in changing the name of its product to Clearly Kombucha was both to emphasize

 

12    the “clear” nature of its product, which is the result of a filtration system that removes

 

13    floating solids ordinarily found in kombucha, as well as to “reflect transparency in the

 

14    brewing process.” (Cargle Decl. ¶¶ 12-13; Zarrow Dep. at 16:22-17:2.) This minimal

 

15    evidence does little to aid a jury’s determination of intent. Because this factor is

 

16    “minimally important,” the court concludes that this factor is neutral for the purposes of

 

17    summary judgment. See GoTo.com, Inc, 202 F.3d at 1208.

 

18                9.  Summary

 

19                The Ninth Circuit has consistently observed that, “[b]ecause of the intensely

 

20    factual nature of trademark disputes, summary judgment is generally disfavored in the

 

21

8 Although Clearly Food contends that Top Shelf purchased bottles of Clearly Canadian in

22    August of 2011 in order to mimic their labeling, Clearly Food puts forth no evidence supporting this assertion. (Compare Resp. (citing Whittaker Decl. Ex. P) with Whittaker Decl. (omitting Exhibit P).)

 

 

 

 

 

1    trademark arena.” Entrepreneur Media, Inc, 279 F.3d at 1140. That observation holds

 

2    true here. The court finds that, on this record, a majority of the factors—namely, the

 

3    similarity of marks, the relatedness of the products, the strength of the mark, actual

 

4    confusion, and consumer degree of care—raise questions of material fact that a jury could

 

5    reasonably resolve in Clearly Food’s favor. More importantly, the court finds that, taking

 

6    the evidence in the light most favorable to Clearly Food, a jury evaluating the totality of

 

7    the circumstances could find that these factors show a likelihood of confusion between

 

8    the Clearly Canadian and Clearly Kombucha products and marks. See Pom Wonderful

 

9    LLC, 775 F.3d at 1125. Because a reasonable jury could find a likelihood of confusion as

 

10    to the origin of the Clearly Kombucha beverages, summary judgment on Clearly Food’s

 

11    trademark infringement claim is inappropriate. See Mattel, 353 F.3d at 806-07;

 

12    Entrepreneur Media, 279 F.3d at 1141.

 

13    F.         Dilution

 

14                 “Dilution” refers to the “whittling away of the value of a trademark” when the

 

15    mark is used to identify different products. Mattel, Inc. v. MCA Records, Inc., 296 F.3d

 

16    894, 903 (9th Cir. 2002). “A plaintiff seeking relief under federal anti-dilution law must

 

17    show that its mark is famous and distinctive, that defendant began using its mark in

 

18    commerce after plaintiff’s mark became famous and distinctive, and that defendant’s

 

19    mark is likely to dilute plaintiff’s mark.”9  Levi Strauss & Co. v. Abercrombie & Fitch

 

20    Trading Co., 633 F.3d 1158, 1169 (9th Cir. 2011) (quoting Visa Int’l Serv. Ass’n v. JSL

 

21

9 There are two types of dilution:  dilution by blurring and dilution by tarnishment.  15 U.S.C.

22    § 1125(c)(2)(B), (C); Mattel, Inc., 296 F.3d at 903.

 

 

 

 

 

1    Corp., 610 F.3d 1088, 1089-90 (9th Cir. 2010)). Top Shelf challenges only one element

 

2    of this test; specifically, Top Shelf contends that Clearly Food cannot show that the

 

3    Clearly Canadian mark is famous. (Mot. at 18.)

 

4                “[A] mark is famous if it is widely recognized by the general consuming public of

 

5    the United States as a designation of source of the goods or services of the mark’s

 

6    owner.” 15 U.S.C. § 1125(c)(2)(A). To determine the degree of fame a mark retains,

 

7    courts look to the following four non-exclusive factors:

 

8                (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.

9

(ii)  The  amount,  volume,  and  geographic  extent  of  sales  of  goods  or

10                services offered under the mark.

 

11                (iii) The extent of actual recognition of the mark.

 

 

12                (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.

13

Id.see also Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 635 (9th Cir. 2008).

14

Protection from dilution is a cause of action “reserved for a select class of marks—those

15

marks with such powerful consumer associations that even non-competing uses can

16

impinge on their value.” Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002,

17

1011 (9th Cir. 2004). For this reason, protection from dilution extends “only to those

18

whose mark is a ‘household name.’” Id.

19

Top Shelf puts forth the following evidence showing that Clearly Food cannot

20

prove that the Clearly Canadian mark was famous as of early 2011, the date the Clearly

21

Kombucha products were launched. (See Mot. at 18-19; Cargle Decl. ¶ 14.) A

22

 

 

 

 

 

1    consulting group’s 2007 report on the Clearly Canadian trademark showed that only

 

2    34 % of the survey respondents who had consumed flavored soda or water within the last

 

3    month (and only 22% of the survey respondents overall) were aware of the Clearly

 

4    Canadian brand. (See 2007 Survey at 4-5, 10, 22.) This recognition rate was much lower

 

5    than the rate for competitors such as Aquafina (94%), Schweppes (77%), Perrier (76%),

 

6    VitaminWater (61%), and Pellegrino (43%). (Id.) The report concluded that, in 2007,

 

7    the brand was “in a good starting place for rebuilding.” (Id.)

 

8                Sales of the Clearly Canadian product, however, had declined steadily between

 

9    1992 and 2007, and between 2007 and 2009 they dropped to a minimal amount. (See

 

10    2014 Investor Pres. at 14; Trustee’s Rep. at 3 (stating that after 2005, CC Beverage

 

11    “struggled in the competitive beverage market” despite “attempts . . . to revive the

 

12    business”).) In 2009, production of Clearly Canadian beverages ceased. (6/3/14 Khan

 

13    Email; 12/22/11 Khan Email.) By 2010, CC Beverage “no longer ha[d] meaningful

 

14    operations.” (Trustee’s Rep. at 3; 2012 Bus. Plan at 5 (“The brand . . . entered dormancy

 

15    in late 2010 . . . .”)  Cybersquatters had taken over the Clearly Canadian website

 

16    domains. (Ledden Decl. Ex. 10.) Negligible sales of Clearly Canadian were occurring

 

17    on the secondary market. (See Bogen Decl. ¶ 5, Attachs. A, B, C; Colley Dep. at 23:6-

 

18    15; 24:19-25:3.)

 

19                Clearly Food’s responsive briefing does not mention its trademark dilution claim,

 

20    or otherwise attempt to rebut Top Shelf’s contention that the Clearly Canadian mark was

 

21    not famous in early 2011. (See Resp.) The court will not sift through the record

 

22    searching for evidence on Clearly Food’s behalf. See United States v. Dunkel, 927 F.2d

 

 

 

 

 

1    955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for truffles buried in briefs.”)

 

2    The court finds that the evidence Clearly Food put forth to support its trademark

 

3    infringement claim is insufficient to raise a question of fact regarding the dilution claim.

 

4                Specifically, the facts that Clearly Canadian’s social media page has received

 

5    35,000 “Likes” and an Internet comedy show recently discussed Clearly Canadian

 

6    beverages for four minutes, see supra § III.E, are insufficient to show that Clearly

 

7    Canadian was a “household name” to consumers in the United States in early 2011. That

 

8    evidence does not remedy Clearly Food’s failure to point the court to any affirmative

 

9    evidence showing the “duration, extent, and geographic reach of advertising and

 

10    publicity” of the Clearly Canadian mark; the “amount, volume, and geographic extent of

 

11    sales of goods or services offered under the mark”; or the “extent of actual recognition of

 

12    the mark.” See 15 U.S.C. § 1125(c)(2)(A). That evidence also cannot negate the fact that

 

13    the record currently before the court shows that, as of 2007, consumer awareness of the

 

14    Clearly Canadian brand was already low, sales up to that point had been lackluster, and

 

15    the brand’s visibility only diminished from that point on. See Jada Toys, Inc., 518 F.3d

 

16    at 635 (“[A] reasonable trier of fact could conclude that the HOT WHEELS mark is

 

17    famous [because] it has been in use for over thirty-seven years; 350 million dollars have

 

18    been expended in advertising the mark; three billion HOT WHEELS units have been sold

 

19    since the inception of the mark; and HOT WHEELS are sold in all fifty states and

 

20    throughout the world.”).

 

21                Accordingly, the court can only conclude that Clearly Food has failed to carry its

 

22    burden to put forth evidence from which a trier of fact could reasonably find in Clearly

 

 

 

 

 

1    Food’s favor. Celotex, 477 U.S. at 324. Because no trier of fact considering the record

 

2    currently before the court could conclude that the Clearly Canadian trademark was

 

3    “widely recognized by the general consuming public of the United States” in early 2011,

 

4    summary judgment on the trademark dilution claim is appropriate. See 15 U.S.C.

 

5    § 1125(c)(2)(A).

 

6    G.        State Law Claims

 

7                Clearly Food also brings claims under Washington state law for trademark

 

8    infringement and unfair competition. (See Compl.) Top Shelf moves for summary

 

9    judgment in its favor on these claims as well. (Mot. at 26.) Top Shelf, however, fails to

 

10    set forth the applicable state law, or otherwise explain why the claims should be

 

11    adjudicated in its favor without a trial. (See id.) Instead, Top Shelf asserts that there are

 

12    no material issues of fact with respect to those claims “for the very same reasons [as]

 

13    discussed above with respect to Plaintiff’s federal trademark infringement claims.” (Id.)

 

14    Needless to say, Top Shelf has failed to carry its burden of production. See Nissan Fire

 

15    & Marine Ins. Co., 210 F.3d at 1106. Summary judgment on the remaining state law

 

16    claims is not appropriate.

 

17    H.        Motions to Seal

 

18                In the course of briefing this motion, the parties have managed to generate an

 

19    inordinate number of motions to seal, some of which the court has granted. (See

 

20    generally Dkt.) At this time, three motions are still outstanding: Top Shelf’s ex parte

 

21    motion to seal documents associated with its motion for summary judgment (Dkt. # 50);

 

22

 

 

 

 

 

1    Clearly Food’s motion to seal documents associated with its responsive brief (Dkt. # 52);

 

2    and Top Shelf’s motion to seal documents associated with its reply brief (Dkt. # 58).

 

3                Under the court’s Local Rules, “[t]here is a strong presumption of public access to

 

4    the court’s files.” Local Rules W.D. Wash. LCR 5(g); see also Nixon v. Warner

 

5    Commc’ns, Inc., 435 U.S. 589, 597 (1978). Accordingly, a party must demonstrate

 

6    “compelling reasons” to seal judicial records attached to a dispositive motion. Kamakana

 

7    v. City & Cnty. of Honolulu, 447 F.3d 1172, 1179 (9th Cir. 2006). “Only in rare

 

8    circumstances should a party file a motion, opposition, or reply under seal.” Local Rules

 

9    W.D. Wash. LCR 5(g)(5).

 

10                In an attempt to clarify the issues raised by the parties’ remaining motions to seal,

 

11    the court directed the parties to provide a joint list identifying the docket number of each

 

12    document subject to a pending motion to seal. (Dkt. # 110.) Inexplicably, the parties

 

13    responded to the court’s invitation by listing only the documents allegedly subject to the

 

14    motion to seal found at Docket. No. 101, which the court had already granted. (See Dkt.

 

15    # 111.) The court cannot help parties who refuse to help themselves. Accordingly, the

 

16    court interprets the remaining motions to seal to the best of its ability, and rules as

 

17    follows.

 

18                First, the court interprets Top Shelf’s motion at Docket No. 58 as a premature

 

19    motion to seal the subsequently filed reply brief (Dkt. # 102) and accompanying exhibits

 

20    (Dkt. # 103). The court, however, has already stricken the evidence filed with Top

 

21    Shelf’s reply brief from the record. See supra § III.C n.3. Therefore, Top Shelf’s motion

 

22    to seal the exhibits found at Docket. No. 103 is moot. The court also finds that Top Shelf

 

 

 

 

 

1    has not shown good cause to seal the reply brief itself. See Kamakana, 447 F.3d at 1179.

 

2    The brief does not mention any trade secrets, confidential information, marketing

 

3    strategies, or business plans of either party. “Only in rare circumstances should a party

 

4    file a motion, opposition, or reply under seal.” Local Rules W.D. Wash. LCR 5(g)(5).

 

5    Those circumstances are not found here. Therefore, the court DENIES Top Shelf’s

 

6    motion to seal found at Docket No. 58. For completeness’ sake, the court also STRIKES

 

7    the exhibits filed at Docket No. 59 because they are redundant to the exhibits filed at

 

8    Docket No. 103.

 

9                Second, the court refers to Clearly Food’s response (Dkt. # 60) to Top Shelf’s

 

10    motion at Docket No. 50 to determine which exhibits associated with Top Shelf’s motion

 

11    for summary judgment should be sealed.10  See Local Rules W.D. Wash. LCR 5(g)(3)

 

12    (providing that the party that designated a document as confidential pursuant to a

 

13    protective order has the burden of showing it should be sealed). The court concludes that

 

14    good cause exists to seal Exhibits 3, 4, 6-8, 11-15, 17, and 22 to Top Shelf’s motion for

 

15    summary judgment, which are interspersed throughout Docket Nos. 47-1 through 47-16,

 

16    and 48. The exhibits contain Clearly Food’s confidential financial projections, marketing

 

17

 

18                10 Top Shelf erroneously filed this motion to seal as an ex parte motion.  (See Dkt. # 51 (order directing Top Shelf to show cause why the motion was filed as an ex parte motion); Dkt. #

19    62 ¶ 13 (Top Shelf’s response conceding that the “ex parte filing was the result of an error in procedure”).) Ordinarily, Clearly Foods would not receive notice of the court’s ruling on an

20    opposing party’s ex parte motion.  The court, however, finds it appropriate to provide Clearly

Food notice of its ruling for three reasons:  (1) the ex parte restriction is an error, (2) the

21    operative document is Clearly Food’s response, and (3) the motion concerns Clearly Food’s

confidential information.  Therefore, the court will address the substance of its ruling on the

putative ex parte motion in this order.  For docketing purposes only, a separate, non-public order

22    ruling on the ex parte motion will follow this order.

 

 

 

 

 

1    strategies, and business plans, all of which could be used against Clearly Food by

 

2    competitors. See Kamakana, 447 F.3d at 1179. However, the court finds that there is not

 

3    good cause to seal the motion itself; Clearly Foods has not shown that the motion

 

4    discloses confidential business information. Accordingly, in a subsequent order, the

 

5    court will grant in part and deny in part Top Shelf’s ex parte motion to seal found at

 

6    Docket No. 50.

 

7                A problem arises because Top Shelf has included documents that should be sealed

 

8    in the same pdf files as documents that should not be sealed. (See Dkt. # 47-1 through

 

9    47-16.) To remedy this problem, the court DIRECTS the clerk to maintain the seal on

 

10    Docket Nos. 47 and 48 in their entirety, and ORDERS Top Shelf to file unsealed versions

 

11    of Exhibits 1, 2, 5, 9, 10, 16, and 18-21 to Top Shelf’s motion for summary judgment

 

12    within 10 days of the date of this order.

 

13                Third, the court refers to Top Shelf’s response (Dkt. # 63) to Clearly Food’s

 

14    motion to seal at Docket No. 52 to determine which exhibits associated with Clearly

 

15    Food’s opposition should be sealed. See Local Rules W.D. Wash. LCR 5(g)(3).

 

16    Although Clearly Food moved to seal the opposition and all exhibits filed with the

 

17    opposition, Top Shelf clarifies that only Exhibits C and E to the Whitaker Declaration

 

18    should be sealed. (See Dkt. # 63.) These exhibits, which are the depositions of Mr.

 

19    Cargle and Ms. Zarrow, are found at Docket Nos. 57-3 and 57-7, respectively. The court

 

20    concludes that good cause exists to seal those exhibits: both Mr. Cargle and Ms. Zarrow

 

21    testified about Top Shelf’s business plans, marketing strategies, financial history and

 

22    projections, and other confidential information, and this information could be used

 

 

 

 

 

1    against their company by competitors. See Kamakana, 447 F.3d at 1179. Accordingly,

 

2    the court GRANTS in part and DENIES in part Clearly Food’s motion to seal at Docket

 

3    No. 52. The court directs the clerk to LIFT the seal on every document in Docket Nos.

 

4    54 through 57, with the exception of Docket Nos. 57-3 and 57-7, which shall remain

 

5    under seal.

 

6    I.         Motion to strike

 

7                On the last page of its supplemental response, Clearly Food makes a desultory

 

8    attempt to strike the expert report of Mr. Silverman on the basis that Mr. Silverman’s

 

9    opinion is premised on inadequate facts and/or factual inaccuracies. (Supp. Resp. at 15.)

 

10    Because the briefing on this subject is incomplete, the court denies the motion to strike as

 

11    currently presented.

 

12                                                          IV.      CONCLUSION

 

13                For the foregoing reasons, the court GRANTS in part and DENIES in part

 

14    Defendant’s motion for summary judgment (Dkt. # 47).  The court STRIKES the exhibits

 

15    filed at Docket Nos. 59 and 103. The court DENIES Top Shelf’s motion to seal (Dkt.

 

16    # 58) and DIRECTS the clerk to LIFT the seal on Docket No. 102. The court ORDERS

 

17    Top Shelf to file unsealed versions of Exhibits 1, 2, 5, 9, 10, 16, and 18-21 to Top Shelf’s

 

18    motion for summary judgment within 10 days of the date of this order. The court

 

19    DIRECTS the clerk to LIFT the seal on Docket No. 47.

 

20    //

 

21    //

 

22    //

 

 

 

 

 

1    Finally, the court GRANTS in part and DENIES in part Clearly Food’s motion to seal

 

2    (Dkt. # 52) and DIRECTS the clerk to LIFT the seal on Docket Nos. 54 through 57, with

 

3    the exception of Docket Nos. 57-3 and 57-7, which shall remain under seal.

 

4                Dated this 28th day of April, 2015.

 

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JAMES L. ROBART

8                                                                                        United States District Judge

 

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5Feb/160

Go Inside Lilenfeld PC

David Lilenfeld

Lilenfeld PC - Entrance

David Lilenfeld

Lilenfeld PC - David's office

Lilenfeld PC - trademark office

Lilenfeld PC - conference room

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3Feb/160

GAME FACE For Masks Confusingly Similar With GAME FACE For Goggles

GAME FACE by Markwort

Markwort Sporting Goods Company filed an application to register the trademark GAME FACE. The TTAB affirmed the refusal to register the trademark GAME FACE for protective sports masks because the trademark is likely to cause confusion with the same already registered trademark for paint ball goggles. Markwort argued the sports masks would be sold in different markets from paint ball goggles; however, the TTAB still found the products to be confusingly similar.

Regarding a likelihood of confusion issue, a more lenient level of relatedness between the sports masks and the paint ball goggles is allowed because the trademarks are identical. Katherine S. Chang, the Examining Attorney, found three different stores that sell lacrosse, field hockey and catcher’s masks as well as paint ball goggles. This discovery supports her theory that the products are being used in the same manner and have the same purpose.

Markwort Sporting Goods, on the contrary, claimed the stores were of little probative value because a finding that the products are being sold in the same stores of a large store does not mean the goods are related. Furthermore, the masks Markwort sells perform an entirely different function than paint ball goggles, as they would not protect a person’s eyes from harmful liquid such as that which is used in paint ball activities. The TTAB agreed, for the above reasons, that the PTO failed to establish that the channels of trade are related. Thus, it considered this du Pont factor to be neutral.

Next, the relatedness of the goods and the trade channels are taken into consideration. In deciding the relatedness of the products, there only needs to be a viable relationship between the goods. In this case, there is such a relationship because the products are identical. Both products protect the consumer’s face and eyes.

Markwort asserted that the products could be expensive thereby requiring more care in the purchasing process. The TTAB, however, was not convinced because the items are not considered expensive enough to fall into this category.

Therefore, the TTAB affirmed the refusal to register the trademark GAME FACE because the goods are likely to be confused as Markwort’s trademark is identical to the registered trademark and the goods are related.

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16Feb/110

Recent Article in the Atlanta Business Chronicle

Here is a recent article from the  Atlanta Business Chronicle.

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10Feb/110

Ford Sues Ferrari over F-150 Mark

Ferrari names its new race car “F150,” sued by Ford.  Dilution claim very strong (Ford says it spent $1.9B on F150 ads since ’99).  Here is Complaint.

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9Feb/110

Ninth Circuit Reinstates Levi’s Trademark Suit Against Abercrombie & Fitch.

The Ninth Circuit no longer requires that marks be identical or nearly identical for federal dilution claim.  Here is the opinion.

Levi Strauss & Co. filed a federal trademark dilution claim against Abercrombie & Fitch for infringing Levi’s back pocket stitch design for Levi jeans.  The case made it to a jury trial during which the trial court (Northern District of California) asked the jury to make advisory rulings on fact issues, including whether the two designs were “identical or nearly identical.”  The jury answered that they were neither, from which the District Court entered judgment in A&F’s favor on the dilution claim.  Levi appealed.

The Ninth Circuit observed that the “identical or nearly identical” standard has origins in state law and was incongruous with the federal Trademark Dilution Revision Act’s (15 U.S.C. § 1125(c)) scheme.  The TDRA allows for relief when there is similarity between defendant’s mark and plaintiff’s famous mark which impairs the distinctiveness of the famous mark.  Given that, the Court ruled that all three previously used dilution standards – identicalness, near identicalness and substantial similarity – were too strenuous under TDRA.

Now, at least in the Ninth Circuit, a TDRA plaintiff must only show that the marks are similar and that the junior mark is likely to impair the distinctiveness of the famous mark.

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5Feb/110

Is Your Name Also a Trademark?

This blog entry was inspired by Sarah Palin and her daughter, Bristol.  No, I am not about to get political, so keep reading.  Instead, the famous Alaskans have given me an opportunity to write about trademark law's treatment of  personal names.

Sarah and Bristol Palin have applied to the United States Patent and Trademark Office to register their names as trademarks.  Ms. Palin claims she uses SARAH PALIN in connection with providing “[i]nformation about political elections” and “motivational speaking services in the field of politics, culture, business and values.”  Bristol says she uses BRISTOL PALIN in connection with “motivational speaking services in the field of life choices.”  Here are their applications: Sarah/Bristol.

Will the Palins have a hard time obtaining these registrations -- “you betcha”!

A person cannot register her name as a trademark without a showing of “secondary meaning.”  Secondary meaning is a high standard to meet.  In connection with personal names, it is achieved when the public has come to recognize the personal name as a symbol that identifies the service (or good), in contrast to identifying the person.

The mark SARAH PALIN is used to identify a person, not a service.  In other words, the public does not connect the name SARAH PALIN with a particular service, but rather with a particular person, at least not yet.  The same reasoning applies to Bristol, perhaps even more so since she does not have same level of notoriety as her mother.

Secondary meaning tends to grow out of a long association of the name with a particular business.  Secondary meaning requires that, in the public mind, the primary meaning of the name as a word identifying a person has been lost in favor of identifying the business.  Examples of personal names which have acquired secondary meaning – and therefore are protected as trademarks -- are RONALD MCDONALD, HOWARD JOHNSON and, to a lesser extent, MARTHA STEWART. Indeed, it takes time before the name and the business become synonymous in the public mind.

So, if you hear a loud “doggone it” coming from Wasilla, that means the Palins just received a final refusal to register their names as trademarks.  It's on the way.

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1Feb/110

Copyright Registrations – Do You Need ‘Em?

This is for non-lawyers and lawyers who do not practice in the area of intellectual property.  It is meant to correct a very common and damaging misconception about United States copyright law.  As an intellectual property litigator, I see this error frequently and, for those copyright owners who end-up having to deal with an infringer, it creates a serious problem.

Most of us understand that works gain the protection of U.S. copyright law when they are created and fixed in some tangible format.  This is accurate and important but, at the same time, a little bit misleading.  Creating and fixing your work affords you with rights, but  . . . and here is the key . . . you cannot enforce those rights without a copyright registration (A refusal from the Copyright Office to register will also suffice, although you will have to prove to the court that the Copyright Office’s refusal was improper).

In other words, you cannot bring a lawsuit under the U.S. Copyright Act until your work is registered or registration was refused.  If your work is infringed, you can rush to register it, but having waiting, you will likely have forfeited your right to recover money damages or attorney fees.

So, register your work and do so early.  Think of the registration as your key to the courtroom.

And, while on the topic, let’s quickly address another misconception.  There is no “poor man’s copyright.”  The practice of sending a copy of your own work to yourself and then relying on the date on the envelope gives no copyright protection.  Save your stamp!

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31Jan/110

Eighth Circuit Rules on Trademark Damages

Clearing up some confusion, the Eighth Circuit holds definitively that under the Lanham Act actual confusion is not a prerequisite to an award of money damages.  Here is a copy of the 0pinion.

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24Jan/111

Is Suffix ‘VILLE for Online Games Proprietary?

How strong is the suffix ‘VILLE as a trademark for online games?  We may find out soon.  West Virginia game developer Blingville files Declaratory Judgment action against Zynga (maker of Farmville) after Zynga demanded that Blingville stop using ‘VILLE as suffix for online games. Copy of complaint is attached here.

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