Mercado Latino Inc v. Indio Products Inc et al

Filing 154

ORDER by Judge Dean D. Pregerson: GRANTING 131 DEFENDANTS MOTION FOR SUMMARY JUDGMENT. (shb)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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MERCADO LATINO, INC. dba
CONTINENTAL CANDLE COMPANY,

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Plaintiff,
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v.
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INDIO PRODUCTS, INC., a
California corporation,

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Defendants.

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Case No. CV 13-01027 DDP (RNBx)
ORDER GRANTING DEFENDANT’S MOTION
FOR SUMMARY JUDGMENT
[Dkt. No.128]

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Presently before the court is Defendant Indio Products, Inc.

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(“Indio”)’s Motion for Summary Judgment.

Having considered the

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submissions of the parties and heard oral argument, the court

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grants the motion and adopts the following Order.

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I.

Background

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A.

Factual History

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Plaintiff Mercado Latino, Inc. (“Mercado”) began manufacturing

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candles in 1991.

Mercado is headquartered in Southern California,

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which is its largest market, but also sells products nationwide.

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Mercado sells three tiers of prayer candles.

Sales of Mercado’s

highest-priced “Sanctuary Series” candles run in the millions

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annually, as they have since the launch of the product in 1991.

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Mercado also sells the “Carisma” line of candles, its lower-tier

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candles that are sold at dollar-type stores (e.g. 99 Cents Only).

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Customers for Mercado’s Sanctuary Series candles include Target,

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Walmart, and other big chains, as well as independent markets and

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boutiques.

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Defendant Indio Products, Inc. (“Indio”) also manufactures and

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sells multiple lines of prayer candles, including the allegedly

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infringing Templar line and the non-accused, higher-end Eternalux

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line, which is sold at a higher price point than the Templar line.

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Indio began selling the Templar line of candles in 2012.

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not sold the Eternalux and Templar candles to the same stores

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because the two lines serve different prayer candle sub-markets.

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Templar candles are generally sold to dollar-type stores, with 99

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Cents Only stores accounting for 80% of all Templar candle sales.

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Some of Mercado’s Sanctuary Series candles bear the Asserted

Indio has

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Sanctuary Series Trade Dress (“ATD”), which is comprised of “a

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clear cylindrical container that is approximately 2.25 x 2.25 x 8.0

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inches in length, width and height, filled with a solid, single

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color wax, the clear cylindrical container has an opaque die-cut

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label with two opposite sides – a ‘front’ and ‘back’. The front

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side of the die-cut label has a silhouette outlined by a black

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border with a top portion that tapers together and forms a pointed

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tip that resembles a ‘bullet’ shape, with segments of shapes in

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varying and alternating sizes and colors, similar to a stained

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glass window. Placed over that label is a depiction of a saint or

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other religious icon. Directly beneath the depiction of the saint

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or religious icon, (sic) is a separate segment on the label that
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resembles a scroll with the name of the saint or religious icon.”

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(SAC at ¶12.)

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the Asserted Trade Dress.

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bear no label at all.1

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dimensions as Sanctuary Series candles, and are also in a clear

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cylindrical glass jar with an opaque label bearing an image of a

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religious figure and religious décor and prayers.

Some Sanctuary series candles, however, do not bear
Indeed, some Sanctuary Series candles

Indio’s Templar candles have the same

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B.

Procedural History

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Mercado’s initial Complaint alleged causes of action for

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copyright infringement, trade dress infringement, and other claims,

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as did Mercado’s First Amended Complaint (“FAC”).

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trade dress featuring “the unique combination of the following

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design elements: a depiction of a saint or religious icon, with a

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border that appears to be a ‘bullet’ shape in the style of a

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stained glass window and the name of the saint or the religious

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icon underneath the depiction.”

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regarding trade dress are more extensive, as set forth above.

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(FAC ¶ 21.)

The FAC alleged

The SAC’s allegations

Indio moved for judgment on the pleadings.

(Dkt. 79.)

This

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Court denied the motion, concluding that (1) Mercado’s SAC alleged

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the ATD with sufficient specificity, (2) although the SAC asserts a

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product design claim rather than a packaging claim, a question of

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fact remained regarding whether the ATD had acquired secondary

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meaning, (3) factual questions remained with respect to

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functionality, and (4) questions of fact remained regarding

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Other candles, such as the “Lucky Lottery” candle, are not
part of the Sanctuary Series “line,” and do not bear the ATD, but
were included in a Sanctuary Series catalog.
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Mercado’s adequately-pleaded likelihood of confusion allegations.

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(Dkt. 95.)

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II.

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Indio now moves for summary judgment on all claims.

Legal Standard
Summary judgment is appropriate where the pleadings,

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depositions, answers to interrogatories, and admissions on file,

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together with the affidavits, if any, show “that there is no

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genuine dispute as to any material fact and the movant is entitled

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to judgment as a matter of law.” Fed. R. Civ. P. 56(a).

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seeking summary judgment bears the initial burden of informing the

A party

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court of the basis for its motion and of identifying those portions

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of the pleadings and discovery responses that demonstrate the

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absence of a genuine issue of material fact.

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Catrett, 477 U.S. 317, 323 (1986).

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the evidence must be drawn in favor of the nonmoving party. See

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Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986).

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moving party does not bear the burden of proof at trial, it is

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entitled to summary judgment if it can demonstrate that “there is

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an absence of evidence to support the nonmoving party’s case.”

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Celotex, 477 U.S. at 323.

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See Celotex Corp. v.

All reasonable inferences from

If the

Once the moving party meets its burden, the burden shifts to

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the nonmoving party opposing the motion, who must “set forth

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specific facts showing that there is a genuine issue for trial.”

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Anderson, 477 U.S. at 256.

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party “fails to make a showing sufficient to establish the

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existence of an element essential to that party’s case, and on

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which that party will bear the burden of proof at trial.”

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477 U.S. at 322.

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that a reasonable jury could return a verdict for the nonmoving

Summary judgment is warranted if a

Celotex,

A genuine issue exists if “the evidence is such

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party,” and material facts are those “that might affect the outcome

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of the suit under the governing law.”

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There is no genuine issue of fact “[w]here the record taken as a

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whole could not lead a rational trier of fact to find for the

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nonmoving party.”

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Corp., 475 U.S. 574, 587 (1986).

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Anderson, 477 U.S. at 248.

Matsushita Elec. Indus. Co. v. Zenith Radio

It is not the court’s task “to scour the record in search of a

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genuine issue of triable fact.”

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1278 (9th Cir. 1996).

Keenan v. Allan, 91 F.3d 1275,

Counsel have an obligation to lay out their

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support clearly.

Carmen v. San Francisco Sch. Dist., 237 F.3d

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1026, 1031 (9th Cir.2001).

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file for evidence establishing a genuine issue of fact, where the

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evidence is not set forth in the opposition papers with adequate

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references so that it could conveniently be found.”

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III.

The court “need not examine the entire

Id.

Discussion

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A.

The Product Design “Issue”

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As an initial matter, Plaintiff argues that this Court’s prior

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conclusion regarding Plaintiff’s product design claim, as opposed

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to a packaging claim, was merely “passing dicta” and a “passing

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comment.”

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notwithstanding any “inelegancies” in its pleadings, it “has always

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preserved that it viewed and intended to assert its Trade Dress as

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a product packaging claim, [and] clarifies that it does not intend

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to ‘expand’ its present claim of trade dress ‘to the candle

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itself,’ but rather, only the enveloping label or packaging.”

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(Opp. at 4:12-15; 6:25.)

(Opposition at 4:1, 5.)

Plaintiff further asserts that,

This claim is untenable.2

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The court also notes that Plaintiff’s Opposition violates
(continued...)
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First, this Court’s discussion of the product design issue was

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hardly a “passing comment.”

As stated in the court’s Order Denying

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Defendant’s Motion for Judgment on the pleadings, “The distinction

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[between product design and product packaging] is important because

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product design trade dress can never be inherently distinctive, and

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therefore always requires a showing of secondary meaning to support

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a claim of infringement.”

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explained that Plaintiff’s ATD could not possibly be considered a

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packaging claim, given that the ATD includes essential physical

(Dkt. 95 at 6.)

This Court further

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aspects such as a cylindrical container and solid, single-colored

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wax.

(Dkt. 95 at 7.)

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Second, Plaintiff’s characterization of its product design

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allegations as mere “inelegancies” of a pleading intended to assert

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a packaging claim strains belief.

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its claimed trade dress to include product design features appears

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to have been the product of a deliberate decision, as evinced by

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the differences between the Second Amended Complaint’s

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comprehensive description of the ATD and the First Amended

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Complaint’s comparatively limited trade dress allegations.

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the SAC, unlike the FAC, specifically highlights “clear 2.25x2.25.8

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cylindrical container” and “filled with solid color wax” as

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infringing elements of Indio’s trade dress.

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and furthermore, Plaintiff never sought reconsideration of this

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Court’s product design determination, nor sought leave to amend the

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SAC’s trade dress allegations.

Plaintiff’s decision to expand

(SAC ¶ 23.)

Indeed,

Third,

Plaintiff’s belated “request” for

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(...continued)
several of the local rules of this district.
9, 11-3.1.1, 11-3.6.
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See C.D. Cal. L.R. 7-

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leave to amend, such as it is, made in passing within Plaintiff’s

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opposition to the instant motion, is denied.

(Opp. at 7:3-5.)

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B.

Secondary Meaning

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Trade dress is the “total image of a product, including

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features such as size, shape, color, texture, and graphics[.]”

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Millennium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1126 (9th

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Cir. 2016) (internal quotation and citations omitted).

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bringing a trade dress claim must prove “(1) that its claimed dress

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is nonfunctional; (2) that its claimed dress serves a

A plaintiff

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source-identifying role[,] either because it is inherently

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distinctive or has acquired secondary meaning; and (3) that the

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defendant’s product . . . creates a likelihood of consumer

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confusion.”

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1252, 1258 (9th Cir. 2001).

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product design case, Plaintiff must prove that the ATD has acquired

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secondary meaning. See Wal-Mart Stores, Inc. v. Samara Bros., Inc.,

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529 U.S. 205, 216 (2000).

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Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d
As discussed above, because this is a

“A product’s trade dress acquires secondary meaning when the

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purchasing public associates the dress with a single producer or

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source rather than just the product itself.”

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Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987).

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meaning can be established in many ways, including (but not limited

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to) direct consumer testimony; survey evidence; exclusivity,

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manner, and length of use of a mark; amount and manner of

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advertising; amount of sales and number of customers; established

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place in the market; and proof of intentional copying by the

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defendant.”

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Inc., 198 F.3d 1143, 1151 (9th Cir.1999).

First Brands Corp. v.
“Secondary

Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns,

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Indio argues that Plaintiff cannot point to sufficient

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evidence to create a triable issue regarding secondary meaning.

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The most persuasive evidence of secondary meaning is an expert

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survey of purchasers.

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F.2d 609, 615 (9th Cir. 1989).

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citation to the record, that it conducted a “consumer survey, which

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provides compelling evidence” of secondary meaning.

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11:17-18.)

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report to which Plaintiff refers did not attempt to gauge whether

Vision Sports, Inc. v. Melville Corp., 888
Plaintiff asserts, without any

(Opp. at

As Plaintiff acknowledged at argument, however, the

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consumers associate the trade dress with a single source.

Rather,

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the survey was designed “to test whether the appearance of the

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Indio Templar candles creates a likelihood of confusion to the

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Sanctuary Series trade dress.”

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support of Opposition, Ex. A at 4.)

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as evidence of actual confusion, might bear on both likelihood of

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confusion and secondary meaning, Plaintiff has cited no authority

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for the proposition that a survey geared toward consumer confusion

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can be used to demonstrate secondary meaning.

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Ajac Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985).

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Plaintiff also claims that it has other direct evidence of

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secondary meaning, pointing to the declaration of Kirk Zehnder,

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Plaintiff’s Vice President of Business Development.

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conclusorily asserts that “consumers have come to associate our . .

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. trade dress with us as a uniform source . . . .”

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¶ 26.)

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of consumers contact Plaintiff every year to ask for Sanctuary

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Series products, that fact is insufficient to create a triable

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issue regarding secondary meaning, as not all Sanctuary Series

(Declaration of Hal Poret in
Although some evidence, such

See Transgo, Inc. v.

Zehnder

(Zehnder Decl.

Although Zehnder also states that “dozens if not hundreds”

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products bear the Asserted Trade Dress.

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consumer inquiries attached to Zehnder’s declaration, even those

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asking for Sanctuary Series candles by name, identify the ATD.

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(Declaration of Janice Marinelli, Ex. A1 at 50:17-51:1, 91:9-19;

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Ex. A2 at 40-41; 72; Zehnder Decl., Ex. 14.)

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consumer inquiries cited by Zehnder explicitly ask for candles that

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do not bear the trade dress.3 (See, e.g., Zehnder Decl., Ex. 14 at

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79 (“I am looking for the White candles you make[.] Just the plain

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glass.”) There is, therefore, no direct evidence that the ATD has

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Furthermore, none of the

Indeed, some of the

acquired secondary meaning.
Indirect evidence, such as evidence of sales, advertising, and

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exclusivity of use, may also be used to prove secondary meaning.

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Filipino Yellow Pages, 198 F.3d at 1151.

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be on the effectiveness of the plaintiff’s efforts.

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Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987).

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Plaintiff first argues that it has been using the ATD exclusively

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since 1991.

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however, does not support that assertion.

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declaration of Mercado Vice President Richard Rodriguez to which

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Plaintiff cites makes no reference to length of use or exclusivity.

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(Declaration of Richard Rodriguez in opposition to motion, ¶ 10.)

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Although Rodriguez does elsewhere state that Mercado began selling

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Sanctuary Series products in 1991 and has done so continuously

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since then, there is no indication of when Sanctuary Series

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products began featuring the ATD, what proportion of the Sanctuary

(Opp. at 12:8-11.)

The focus, however, must
First Brands

The evidence Plaintiff cites,
The portion of the

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Furthermore, Zehnder testified that the white Sanctuary
Series, with no label, is Mercado’s top selling candle. (Marinelli
Decl., Ex. 2 at 73.)
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Series products bore the ATD, or whether any use of the ATD was

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exclusive.

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cited by Plaintiff is a portion of the Zehnder declaration, which

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says no different, and indeed refers back to the Rodriguez

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declaration.

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could rely on this evidence to find either length or exclusivity of

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use of the Asserted Trade Dress.

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(See Rodriguez Decl., ¶ 64.)

(Zehnder Decl. ¶ 25.)

The only other evidence

No reasonable trier of fact

Mercado next argues, again largely without citation to the
record, that it has produced evidence of marketing and promotional

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efforts sufficient to create a triable issue as to secondary

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meaning.

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indeed be relevant, provided that the advertising features the

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trade dress itself and is extensive enough to effectively create an

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association with the advertiser’s product.

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LLC v. MGA Entm't Inc., 581 F.3d 1138, 1146 (9th Cir. 2009); First

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Brands, 809 F.2d at 1383; see also Int'l Jensen, Inc. v. Metrosound

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U.S.A., Inc., 4 F.3d 819, 824 (9th Cir. 1993) (“While evidence of a

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manufacturer's sales, advertising and promotional activities may be

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relevant in determining secondary meaning, the true test of

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secondary meaning is the effectiveness of this effort to create

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it.”).

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Plaintiff never itself undertook any advertising efforts.

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Plaintiff used “advertising allocation,” or an allowance to

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retailers who would themselves promote and advertise the “Sanctuary

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Series line.”4

(Opp. at 12.)

Evidence of advertising activities can

See Art Attacks Ink,

Here, however Plaintiff’s own evidence establishes that

(Rodriguez Decl., ¶ 26).

Instead,

Although Plaintiff’s

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As discussed above, the declarations do not specify whether
the Sanctuary Series products advertised by retailers actually
displayed the ATD. For this same reason, evidence regarding
(continued...)
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declarants state that retailers promoted Sanctuary Series candles

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for at least twenty years, the record includes only three examples

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of such advertisements.5

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circulars and one black-and-white coupon, all three of which do

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appear to display the Asserted Trade Dress.

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7.)

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of these advertisements were distributed, or for how long.

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Cont'l Lab. Prod., Inc. v. Medax Int'l, Inc., 114 F. Supp. 2d 992,

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1001 (S.D. Cal. 2000).

These consist of two supermarket

(Rodriguez Decl., Ex.

There is, however, no indication of where or how many copies
See

Furthermore, although these advertisements

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do bear images of the trade dress, they can hardly be said to

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“feature” the ATD.

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candles alongside between one and a dozen food products.

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advertisements all identify the product only as “Religious Candles”

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or “Candle(s),” and none makes any mention of the “Sanctuary

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Series” product line.6

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Rodriguez’s testimony that mass retailers did some kind of

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advertising of Sanctuary Series products, are insufficient to

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establish that Mercado’s (or its retail customers’) advertising

All three examples display Sanctuary Series
The

These examples, even coupled with

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(...continued)
Sanctuary Cities sales, with no distinction between products
bearing the Asserted Trade Dress and other products, is of no
moment. See Rodriguez Decl., Ex. 8.
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Plaintiff’s Opposition does not cite to the portions of the
record that include these three examples.
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The black-and-white coupon, which offers a free “Candle” (in
Spanish) with purchase of a food product, does identify the candle
as a “Continental Candle” product. Mercado acquired Continental
Candle in 1991. (Rodriguez Decl., ¶ 4.)
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efforts effectively linked the Asserted Trade Dress with a single

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source.7

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Lastly, Plaintiff argues that evidence that Defendant copied

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the Asserted Trade Dress creates a triable issue of fact regarding

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secondary meaning.

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copying strongly supports an inference of secondary meaning.”

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Vision Sports, 888 F.2d at 615.

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relied, however, specified that “[p]roof of exact copying, without

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any opposing proof, can be sufficient to establish a secondary

The Ninth Circuit has stated that “proof of

The cases upon which Vision Sports

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meaning.”

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Transgo court explained, under such circumstances, there would be

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no reason to copy other than to capitalize upon pre-existing

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secondary meaning.

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recognized that a party might copy trade dress for other reasons,

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particularly where trade dress includes functional features.

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Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 844

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(9th Cir. 1987).

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copying does not create a presumption of secondary meaning.

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Transgo, 768 F.3d at 1016 (emphasis added).

Id.

As the

Subsequently, however, the Ninth Circuit

See

For that reason, evidence of even deliberate
Id.

Here, Plaintiff does not assert that there is any evidence of

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exact copying.

Rather, Plaintiff points, without any citation to

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the record, to the “striking similarity” of the two trade dresses

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For this same reason, Rodriguez’s testimony that “just
because Mercado doesn’t currently have copies of . . .
advertising[] doesn’t mean the advertising didn’t occur” is of no
moment. Even assuming that some kind of advertising did occur,
Rodriguez’s declaration is insufficient to establish that such
advertising even bore the Asserted Trade Dress, let alone featured
it or effectively created an association in consumers’ minds with
Plaintiff.
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as evidence of deliberate copying.8

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such evidence exists, it is not sufficient to demonstrate secondary

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meaning.

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dress claims based upon product design.

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Laboratory Products court explained, the rather circular logic that

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copying is evidence of secondary meaning because a copier wouldn’t

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copy unless a trade dress had already acquired secondary meaning is

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less persuasive in the product design context.

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114 F. Supp. 2d at 1009-10.

(Opp. at 13.)

Even assuming

The Vision Sports line of cases does not address trade
As the Continental

Cont’l Lab. Prod.,

Indeed, notwithstanding Vision Sports,

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the Ninth Circuit has recognized that an alleged infringer might

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copy a trade dress for functional reasons, wholly apart from any

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desire to deceive consumers as to the origin of a product.

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Fuddruckers, 826 F.2d at 844; Cont’l Lab. Prod. 114 F. Supp. 2d at

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1010.

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“intentional copying supports a finding of secondary meaning only

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where the defendant intended to confuse consumers and pass off its

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product as the plaintiff’s.”

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1010.

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Thus, as the Continental Laboratory Products court stated,

Cont’l. Lab. Prod., 114 F.Supp. 2d at

There is no evidence of such intent here.9
None of the evidence cited by Plaintiff is sufficient to

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establish, either directly or indirectly, that consumers associated

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the Asserted Trade Dress with a single source.

In the absence of

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Although Plaintiff’s Opposition does, in one instance, cite
to “Exhibit A,” there are several such exhibits in the record. It
is unclear which of these Plaintiff intends to reference. (Opp. at
13:27).
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Although Mercado does allege a trademark infringement claim
related to Indio’s sale of repackaged Mercado candles, that claim
does not involve, nor is there evidence of, any attempts by Indio
to pass off its own candles as Mercado candles by adopting similar
trade dress.
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evidence of secondary meaning, Plaintiff’s trade dress infringement

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claim must fail.

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C.

Functionality

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Trade dress is presumed to be functional. 15 U.S.C. §

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1125(a)(3); TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S.

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23, 30 (2001).

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therefore, prove that its claimed dress is non-functional.

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Billiards, 251 F.3d at 1258.

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arbitrary” trade dress is not functional.

A plaintiff alleging trade dress infringement must,
Clicks

“[O]rnamental, incidental, or
Id.

A product feature

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is functional, however, “if it is essential to the use or purpose

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of the article or if it affects the cost or quality of the article,

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that is, if exclusive use of the feature would put competitors at a

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significant non-reputation-related disadvantage.”

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Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998).

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A plaintiff’s burden to show non-functionality is, therefore,

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heavier in the product design context.

17

Abbyson Living Corp., No. CV 16-02781 AB (KSX), 2016 WL 9108405, at

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*4 (C.D. Cal. June 22, 2016) (citing Samara Bros., 529 U.S. at

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212).

20

Disc Golf Ass'n,

Red Star Traders, LLC v.

Plaintiff correctly observes that, as with other elements of a

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trade dress claim, the functionality analysis looks to the overall

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combination of trade dress elements rather than to individual

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elements.

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is a question of “(1) whether the design yields a utilitarian

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advantage, (2) whether alternative designs are available, (3)

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whether advertising touts the utilitarian advantages of the design,

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and (4) whether the particular design results from a comparatively

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simple or inexpensive method of manufacture.

See Clicks Billiards, 251 F.3d at 1259.

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Functionality

Disc Golf Ass'n, 158

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F.3d at 1006.

2

a single (and general) citation to evidence of the existence of

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other prayer candles that do not bear the Asserted Trade Dress.

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(Marinelli Decl., Ex. A-7.)

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indeed, support the contention that alternative designs are

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available.

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Plaintiff’s entire functionality argument makes only

The existence of such candles does,

Plaintiff totally ignores, however, evidence pertinent to

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other factors.

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Plaintiff, that one purpose of devotional candles is to “indulge”

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the religious figure depicted, and that because candles are “part

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of the church,” they “must have images that are respected” so as to

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function as “a little altar in the house.”

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at 23-24.)

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that devotional candles are used to pray to the depicted religious

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figure as merely an “amusing assertion,” other evidence in the

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record indicates that Plaintiff not only shared that view, but

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promoted its products as particularly well-suited to that purpose.

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(Opp. at 17:25.)

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the Asserted Trade Dress was intended to simulate “light shining

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through stained glass windows in cathedrals,” and Plaintiff’s own

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product information sheets explained, “When burned, Sanctuary

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Series simulate the effect of light shining through a stained glass

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window.”

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evidence directly contradicts Plaintiff’s unsupported assertion

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that the Asserted Trade Dress is merely suggestive, evocative, or

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fanciful.

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28

Defendant points to evidence, submitted by

(Zehnder Decl., Ex. 1

Although Plaintiff now attempts to dismiss the idea

Plaintiff’s interrogatory responses stated that

(Marinelli Decl., Ex. 5 at 100; Ex. 12 at 38.)

This

(Opp. at 17:27.)

Trade dress “need only have some utilitarian advantage to be
considered functional.”

Disc Golf Ass'n, 158 F.3d at 1007.
15

1

Regardless whether other candle designs might also serve to invoke

2

or honor a particular figure or function as an altar or other

3

approximation of a church inside a home, the undisputed evidence

4

shows that the Asserted Trade Dress is particularly well-suited to

5

that purpose, and that Plaintiff promoted that utilitarian

6

advantage.

7

demonstrate that its Asserted Trade Dress is non-functional.10

Accordingly, Plaintiff cannot meet its burden to

8

D.

Trademark Infringement

9

Plaintiff’s SAC also alleges a cause of action for trademark

10

infringement under the Lanham Act, 25 U.S.C. § 1114.

11

alleges that Defendant passed its candles off as Mercado candles by

12

selling Mercado candles in Indio boxes.

13

Vallarta supermarkets began to sell Indio’s Eternalux candles.

14

(Declaration of Pooya Bahktiari ¶ 55.)

15

wanted to sell one line of prayer candles, Indio agreed to “buy

16

back” all of Vallarta’s remaining stock of Mercado Candles.

17

Indio removed loose candles from Vallarta shelves and placed them

18

in shipping boxes.

19

closeout vender Vernon Sales.

20

(Id. ¶ 57.)

(SAC ¶ 35.)

Plaintiff

In 2012,

Because Vallarta only

(Id.)

Indio then sold those boxes to
(Id.)

Indio argues that Mercado’s trademark rights in the candles at

21

issue were extinguished as soon as Mercado sold the candles to

22

Vallarta.

23

right of a producer to control distribution of its trademarked

24

product does not extend beyond the first sale of the product.”

(Mot. at 21-22.)

Under the first sale doctrine, “the

25
26
27
28

10

Having determined that Plaintiff cannot succeed on two of
the essential elements of its trade dress claim, the court need not
address Defendant’s remaining arguments.
16

1

Sebastian Int'l, Inc. v. Longs Drug Stores Corp., 53 F.3d 1073,

2

1074 (9th Cir. 1995).

3

of fact remain regarding its trademark claim, Mercado cites to no

4

law or facts to support that assertion or its suggestion that some

5

exception to the first sale doctrine applies.

6

some cases, where there is a likelihood of downstream confusion,

7

the first sale doctrine may not apply.

8

v. Volkswagen of Am., Inc., 603 F.3d 1133, 1136-38 (9th Cir. 2010).

9

Here, however, there is no evidence that Vernon Sales, or anyone

10

else, was confused about the nature or origin of the bought-back

11

candles, or that any other potential exception to the first sale

12

doctrine would apply.

13

summary judgment on the trademark infringement claim.

14

IV.

15
16

Although Mercado asserts that triable issues

It is true that in

See Au-Tomotive Gold Inc.

Accordingly, Defendant is entitled to

Conclusion
For the reasons stated above, Defendant’s Motion for Summary

Judgment is GRANTED.11

17
18
IT IS SO ORDERED.
19
20

Dated: July 17, 2018
DEAN D. PREGERSON
United States District Judge

21
22
23
24
11

25
26
27
28

Summary judgment is also granted on Plaintiff’s claims for
unfair competition and intentional interference with prospective
economic advantage. Plaintiff appears to concede that its unfair
competition claim is predicated upon its trade dress claim (Opp.
at 24:23-25.) Although Plaintiff asserts that its intentional
interference claim is viable independent of the other claims,
Plaintiff does not articulate how that is the case or identify any
independent wrongful acts.
17