The National Grange of the Order of Patrons of Husbandry v. California State Grange

Filing 60

MEMORANDUM AND ORDER RE CROSS-MOTIONS FOR SUMMARY JUDGMENT signed by Senior Judge William B. Shubb on 7/14/2015: IT IS ORDERED that 43 Plaintiff's Motion for Summary Judgment be, and the same hereby is, GRANTED; and that 44 Defendant' ;s Motion for Summary Judgment be, and the same hereby is, DENIED. IT IS FURTHER ORDERED that upon entry of final judgment in this action defendant and its agents, affiliates, and assigns, or any party acting in concert with defendant and its agents , affiliates, and assigns, shall be permanently enjoined from using marks containing the word "Grange." The parties shall appear for a Status Conference on 8/17/2015 at 02:00 PM in Courtroom 5 (WBS) before Senior Judge William B. Shubb regarding the status of plaintiff's remaining claims and its prayer for damages. (Kirksey Smith, K)

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

EASTERN DISTRICT OF CALIFORNIA

10
----oo0oo----

11
12
13
14

THE NATIONAL GRANGE OF THE
ORDER OF PATRONS OF
HUSBANDRY, a District of
Columbia nonprofit
corporation,

17
18
19

MEMORANDUM AND ORDER RE: CROSSMOTIONS FOR SUMMARY JUDGMENT

Plaintiff,

15
16

CIV. NO. 2:14-00676 WBS DAD

v.
CALIFORNIA STATE GRANGE, a
California corporation,
Defendant.

20
21
22

----oo0oo---Plaintiff National Grange of the Order of Patrons of

23

Husbandry brought this action for trademark infringement against

24

defendant California State Grange.

25

are the parties’ cross-motions for summary judgment pursuant to

26

Federal Rule of Civil Procedure 56.

27

I. Factual and Procedural Background

28

Presently before the court

Plaintiff is a national fraternal agricultural
1

1

organization founded in 1867 to promote the interests of farmers

2

and farming in the United States.

3

(Docket No. 43-2).)

4

approximately 2,000 local chapters across the country, through

5

which it provides a variety of goods and services to agricultural

6

communities.

7

featuring the word “Grange,” which it uses for associational,

8

educational and advocacy activities.

9

(Docket No. 43-6); Luttrell Decl. ¶ 7.)

10

(Luttrell Decl. ¶¶ 2, 5

Plaintiff has grown to a network of

Plaintiff has registered numerous trademarks

(Turrill Decl. Ex. 21

On July 15, 1873, plaintiff chartered defendant

11

California State Grange as its affiliate state-level chapter.

12

(Turrill Decl. Ex. 9.)

13

collected dues from local subordinate Granges and turned over a

14

portion of those dues to plaintiff.

15

at 44:22-45:15 (Docket No. 43-7).)

16

As a chartered affiliate, defendant

(May 14, 2014 McFarland Dep.

On April 5, 2013, plaintiff revoked defendant’s charter

17

due to a dispute.

(Luttrell Decl. ¶¶ 19, 24; Turrill Decl. Ex.

18

15.)

19

further affiliation with plaintiff and stated that it would amend

20

its bylaws to reflect its new status.

In response, defendant sent a letter disclaiming any

21

(Turrill Decl. Ex. 19.)

Despite its disaffiliation, defendant continues to use

22

the name “California State Grange” at events, on its website, and

23

in its newsletter and other communications.

24

McFarland Dep. at 112:8-11; Turrill Decl. Exs. 7, 23, 24.)

25

Plaintiff sent a cease and desist letter to defendant on December

26

2, 2013.

(Turrill Decl. Ex. 20.)

27
28
2

(May 14, 2014

When defendant was

1

unresponsive, plaintiff filed this lawsuit.1

2

Plaintiff brought claims under the Lanham Act for (1)

3

trademark infringement, 15 U.S.C. § 1114; (2) unfair competition

4

and false designation of origin, 15 U.S.C. § 1125(a); (3)

5

trademark dilution, 15 U.S.C. § 1125(c); and (4) trademark

6

counterfeiting, 15 U.S.C. § 1114(1).

7

Defendant answered with numerous affirmative defenses and

8

counterclaims seeking a declaratory judgment that plaintiff’s

9

trademark is invalid.

(Compl. ¶¶ 48-101.)

(Am. Answer (Docket No. 24).)

Plaintiff

10

now moves for partial summary judgment on its first and second

11

claims for trademark infringement and unfair competition,

12

respectively, and also on defendant’s counterclaims.

13

43.)

14

plaintiff’s claims and its counterclaims on the grounds that it

15

is entitled to the defenses of genericness, abandonment,

16

acquiescence, and unclean hands.

17

44); Def.’s Opp’n at 2 (Docket No. 51).)

18

II. Discussion

(Docket No.

Defendant also moves for summary judgment on all of

19

(Def.’s Mem. at 2 (Docket No.

Summary judgment is proper “if the movant shows that

20
1

21
22
23
24
25
26
27
28

Plaintiff also initiated a proceeding in California
state court, National Grange v. California State Grange, Civ. No.
34-2012-00130434 (Cal. Sup. Ct. filed Oct. 1, 2013), seeking a
declaration of the rights and duties of the parties following the
revocation of California State Grange’s charter.
In addition, there is a related case before this court,
California State Grange v. Grange of the State of California’s
Order of Patrons of Husbandry, Civ. No. 2:15-00317 (E.D. Cal.
filed Feb. 6, 2015), in which California State Grange is suing an
affiliate of the National Grange for trademark infringement. The
court denied a motion to consolidate that action with the present
one, because doing so would have caused delay in the present
action. (June 29, 2015 Order (Docket No. 52).)
3

1

there is no genuine dispute as to any material fact and the

2

movant is entitled to judgment as a matter of law.”

3

P. 56(a).

4

of the suit, and a genuine issue is one that could permit a

5

reasonable jury to enter a verdict in the non-moving party’s

6

favor.

7

(1986).

8

burden of establishing the absence of a genuine issue of material

9

fact and can satisfy this burden by presenting evidence that

10

negates an essential element of the non-moving party’s case.

11

Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986).

12

Alternatively, the moving party can demonstrate that the non-

13

moving party cannot produce evidence to support an essential

14

element upon which it will bear the burden of proof at trial.

15

Id.

Fed. R. Civ.

A material fact is one that could affect the outcome

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
The party moving for summary judgment bears the initial

16

Once the moving party meets its initial burden, the

17

burden shifts to the non-moving party to “designate ‘specific

18

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

19

324 (quoting then-Fed. R. Civ. P. 56(e)).

20

the non-moving party must “do more than simply show that there is

21

some metaphysical doubt as to the material facts.”

22

Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986).

23

“The mere existence of a scintilla of evidence . . . will be

24

insufficient; there must be evidence on which the jury could

25

reasonably find for the [non-moving party].”

26

at 252.

Id. at

To carry this burden,

Matsushita

Anderson, 477 U.S.

27

In deciding a summary judgment motion, the court must

28

view the evidence in the light most favorable to the non-moving
4

1

party and draw all justifiable inferences in its favor.

2

255.

3

and the drawing of legitimate inferences from the facts are jury

4

functions, not those of a judge . . . ruling on a motion for

5

summary judgment . . . .”

6

judgment, the court “must review the evidence submitted in

7

support of each cross-motion [in a light most favorable to the

8

non-moving party] and consider each party’s motions on their own

9

merits.”

10

Id. at

“Credibility determinations, the weighing of the evidence,

Id.

On cross-motions for summary

Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090,

1097 (W.D. Wash. 2004).

11

A.

Trademark Infringement under § 1114

12

To prevail on its trademark infringement claim under §

13

1114 of the Lanham Act, a plaintiff must prove: (1) that it has a

14

protectable ownership interest in the mark; and (2) that the

15

defendant’s use of the mark is likely to cause consumer

16

confusion.”2

17

1190, 1202 (9th Cir. 2012) (internal quotation marks and citation

18

omitted).

19

Rearden LLC v. Rearden Commerce, Inc., 683 F.3d

1. Validity of the Trademark

20

“Federal registration of a mark constitutes prima facie

21

evidence of the validity of the mark.”

Yellow Cab Co. of

22

Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928

23
24
25
26
27
28

2

Plaintiff must also prove that defendant is using
plaintiff’s mark without plaintiff’s consent in commerce. See
Wecosign, Inc. v. IFG Holdings, Inc., 845 F. Supp. 2d 1072, 1079
(C.D. Cal. 2012) (discussing the elements of an infringement
claim). Because it is apparently undisputed that defendant is
using plaintiff’s mark in commerce without plaintiff’s consent,
(see May 14, 2014 McFarland Dep. at 112:8-11), the court will
focus its analysis on the remaining elements.
5

1

(9th Cir. 2005).

2

been properly registered, the burden shifts to the defendant to

3

show by a preponderance of the evidence that the mark is not

4

protectable.”

5

1108, 1114 (9th Cir. 2010).

6

their registrations of the Grange trademark, (see Watson Decl. ¶

7

7, Ex. 21), and defendant has not raised a genuine dispute that

8

the registration was proper.

9

thus presumptively valid, and the burden shifts to defendant to

10

“If the plaintiff establishes that a mark has

Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d
Plaintiff has submitted evidence of

Plaintiff’s trademark “Grange” is

show it is invalid because it is generic.

11

A term is generic if it “refers, or has come to be

12

understood as referring to the genus of which the particular

13

product or service is a species.”

14

Asian J. Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999).

15

generic term is not protectable as a trademark.

16

Inc. v. Realys, Inc., 482 F.3d 1195, 1197 (9th Cir. 2007).

17

lies in the public domain.

18

Foods, Inc., 468 F. Supp. 2d 1181, 1188 (C.D. Cal. 2007).

19

Filipino Yellow Pages, Inc. v.
A

Rudolph Int’l,
It

Classic Food Int’l Corp. v. Kettle

“Whether a mark is generic is a question of fact.”

20

Yellow Cab, 419 F.3d at 929 (internal quotation marks and

21

citation omitted).

22

word to refer only to a particular producer’s goods or whether

23

the consumer understands the word to refer to the goods

24

themselves.”

25

omitted).

26

“‘who-are-you/what-are-you’ test: a valid trademark answers the

27

former question, whereas a generic product name or adjective

28

answers the latter.”

The test is “whether consumers understand the

Id. (internal quotation marks and citation

Courts in the Ninth Circuit have called this the

Rudolph Int’l, 482 F.3d at 1198.
6

1

As support for its contention that “grange,” as it is

2

used by plaintiff, is generic, defendant offers an excerpt from

3

the 1980 edition of the Random House Dictionary.

4

Mot. Ex. D.)

5

that a term is generic.

6

1147-48 (citing Webster to support the observation that “yellow

7

pages” is generic); Surgicenters of Am., Inc. v. Med. Dental

8

Surgeries, Co., 601 F.2d 1011, 1020 (9th Cir. 1979) (noting that

9

the district court “careful analy[zed]” genericness by

(See Def.’s

Courts sometimes consider dictionaries as evidence
See Filipino Yellow Pages, 198 F.3d at

10

considering dictionary definitions and other evidence of generic

11

use).

12

Random House does not support defendant’s position that

13

“grange” is a generic term meaning farmers’ association.

14

The

1980 edition defines Grange as

15
16
17

n. 1. Brit. A farm with its nearby buildings.
2.
(cap.) a lodge or local branch of a farmers’
association in the U.S.

18
19
20
21
22
23
24
25
26
27
28

(Def.’s Mot. Ex. D.)

Random House indicates that the secondary

use of Grange is “cap.” or capitalized, meaning it is a proper
noun, naming a particular thing.

This would suggest that the

secondary definition refers to a local branch affiliated with one
particular national association, plaintiff.

A more contemporary

dictionary definition further reflects that Grange, when used to
mean an association of farmers, is a proper noun naming
plaintiff’s organization.

In the more recent 2005 version of the

Random House dictionary, the secondary definition of “grange” is
“the Patrons of Husbandry, a farmer’s organization formed in 1867
7

1

for social and cultural purposes.”

2

Ex. N.)

3

dictionary definitions that “grange” is a generic term denoting a

4

local branch of any farmers’ association.

(Pl.’s Opp’n Turrill Decl.

No trier of fact could reasonably conclude from these

5

Beyond the dictionary, there is nothing before the

6

court suggesting plaintiff’s use of “grange,” particularly when

7

capitalized, is generic.

8

use of “grange” meaning a local chapter of an association of

9

farmers in the United States that predates plaintiff’s use.

Defendant has not pointed to a single

10

Moreover, the court has not found any use of “grange” meaning

11

farmers’ association other than plaintiff and its affiliates and

12

defendant’s uses.

13

draw from the evidence before it is that “Grange” does not signal

14

“an association of farmers,” but rather the national association

15

of farmers founded by plaintiff in 1867.

16

The only conclusion the court can reasonably

Moreover, “there is no legal disability in taking a

17

generic name and using it as a trademark for another type of

18

product.”

19

n.10 (4th ed.).

20

are comprised of generic terms, because they do not describe the

21

goods or services offered by the user of the mark.

22

Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).

23

Based on the dictionary definition offered by defendant, “grange”

24

is a generic term for a farm with its nearby buildings.

25

“Grange,” as plaintiff uses it, does not signify that plaintiff

26

deals in “a farm with its nearby buildings.”

27

plaintiff’s national association.

28

2 McCarthy on Trademarks and Unfair competition § 12:1
Arbitrary marks are protectable even though they

Sara Lee

It names

Plaintiff’s mark is therefore not generic, and there is
8

1

no genuine issue of material fact as to the validity of the term

2

“Grange” as a protectable trademark.3

3

2. Consumer Confusion

4

The second element requires a plaintiff to show that “a

5

reasonably prudent consumer in the marketplace is likely to be

6

confused as to the origin or source of the goods or services

7

bearing one of the marks or names at issue in the case.”

8

Rearden, 683 F.3d at 1209.

9

that a reasonably prudent Grange member, prospective member, or

The record is replete with evidence

10

other person contemplating doing business with it is likely to be

11

confused as to the origin of defendant’s services due to its use

12

of “Grange.”

13

Defendant’s use of “grange” on its website strongly

14

suggests it is associated with plaintiff.

The homepage of

15

defendant’s website, which carries the domain

16

californiagrange.org, reads,

17
18
19
20

The Grange is a grass roots organization that began in
1867, in the aftermath of the destructive and divisive
Civil War. . . . We built halls across the rural
landscape of America. . . . For more than 140 years,
we’ve preserved our founding principles of unity,
liberty, and charity.

21
22
23
24
25
26
27
28

3

Another category of mark is a descriptive term. Unlike
a generic term, a descriptive term may sometimes be protected as
a trademark “if the public comes to associate the mark with a
specific source.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo
Winery, 150 F.3d 1042, 1047 (9th Cir. 1998). This acquired
distinctiveness is referred to as ‘secondary meaning.’ Id.
Whether a mark has a secondary meaning is a question of fact.
Yellow Cab, 419 F.3d at 930. Defendant conflates the test for a
generic mark and a descriptive mark. Because the court
determines that plaintiff’s mark is protectable because it is not
generic, it need not discuss whether it might also be protected
as a descriptive mark because it has a secondary meaning.
9

1
2

(Turrill Decl. Ex. 26 (emphasis added).)

Here, defendant

3

recounts plaintiff’s history, and not its own.

4

national association, and not defendant, which limits its

5

services to California, “built halls across the rural landscape

6

of America.”

7

member or prospective member to believe it is affiliated with

8

plaintiff.

9

its website banner, (see id.), implies it is part of “the

Plaintiff, the

By using “we,” defendant is likely to cause a

Defendant’s use of the slogan “We are the Grange” in

10

Grange,” plaintiff’s national association.

11

examples on defendant’s website and in its newsletters of what

12

appear to be uses of “grange” likely to cause the consumer to

13

believe defendant is affiliated with plaintiff, which the court

14

will not enumerate for the sake of brevity.

15

24.)

16

There are many more

(See id. Exs. 7, 23,

Beyond defendant’s communication tools, defendant’s use

17

of plaintiff’s mark is likely to cause confusion, because both

18

plaintiff and defendant offer similar services.

19

counsel for defendant admitted defendant provides the same

20

services as plaintiff.

21

identical, a party looking to join the official Grange will

22

likely believe that defendant is somehow affiliated with

23

plaintiff.

24

Commerce, 354 F. Supp. 61, 76 (N.D. Cal. 1972) (finding that

25

because defendant’s and plaintiff’s civic services were

26

substantially similar, defendant’s use of plaintiff’s trademark

27

would likely confuse consumers).

28

(See id.)

At the hearing,

Because those services are

See U.S. Jaycees v. San Francisco Jr. Chamber of

Lastly, because plaintiff chartered a new chapter in
10

1

California after defendant’s disaffiliation, members and

2

prospective members in California are now likely to be confused

3

as to which California-based Grange is affiliated with national

4

organization.

5

California-based members of National Grange voted to reorganize a

6

state Grange under the name Grange of the State of California’s

7

Order of Patrons of Husbandry, Chartered.

8

a prospective or current member would be uncertain as to which

9

California Grange originates from the national organization.

In 2014, after defendant disaffiliated,

It is foreseeable that

See

10

U.S. Jaycees, 354 F. Supp. at 76 (considering that there was a

11

new official local affiliate bearing a similar name to the

12

disaffiliated defendant as a factor weighing in favor of finding

13

a likelihood of confusion).

14

Defendant has even conceded that two California

15

organizations using the name “Grange” would--and has--caused

16

consumer confusion.

17

Grange is suing the Grange of the State of California’s Order of

18

Patrons of Husbandry (“TGSC”) for trademark infringement.

19

Cal. State Grange v. Grange of the State of Cal.’s Order of

20

Patrons of Husbandry, Civ. No. 2:15-00317 (E.D. Cal. filed

21

February 6, 2015).

22

TGSC’s use of the Grange mark causes “great confusion” among

23

local granges, causing them to pay their dues to TGSC rather than

24

California State Grange.

25

deposition for this lawsuit, defendant’s president, Robert

26

McFarland, stated that TGSC’s use of “Grange” caused actual

27

confusion:

In a separate lawsuit, California State

See

In that suit, California State Grange alleges

(See id., Compl. ¶ 13-14.)

28
11

In his

1
2
3
4

[W]e know of some of our Granges that have accidently
sent their reports and dues to [TGSC].
I get emails
and phone calls consistently from--when they get a
bulletin from [TGSC]. They say, “Is this--is that you
or is it”--like they refer to--[TGSC]. . . . So I
consistently have to enlighten them and tell them
where the communications are coming from.

5
6

(McFarland Dep. at 162:7-18.)
In light of defendant’s concession, and the absence of

7
8

any evidence or argument for why defedant’s use of “Grange” is

9

not likely to cause consumer confusion, only one inference can be

10

drawn: defendant’s use of “Grange” is likely to cause, and

11

apparently has caused, a reasonably prudent consumer in the

12

marketplace to be confused about the origin of defendant’s

13

services.

14

regarding the “Grange” mark’s validity, plaintiff has

15

undisputedly established a trademark infringement claim under §

16

1114.

17

Because there is also no genuine issue of fact

B. Defendant’s Affirmative Defenses

18

1. Estoppel by Acquiescence

19

Defendant insists it had a “long and continued public

20

use of Grange” for 150 years that went unchallenged, and so the

21

court should estop plaintiff from prevailing in a suit that it

22

has waited a century-and-a-half to bring.

23

(Docket No. 44-1).)

24

defendant must prove that plaintiff knew of facts giving it

25

notice of its trademark infringement claim.

26

Corp. v. Gen. Circuit Breaker & Elec. Supply Inc., 106 F.3d 894,

27

899 (9th Cir. 1997).

28

infringement claim requires showing that plaintiff had a

(Def.’s Mem. at 6-7

To establish a claim for acquiescence,

Westinghouse Elec.

As previously discussed, a trademark

12

1

protectable interest in the mark and that defendant’s use of the

2

mark was likely to cause consumer confusion.

3

F.3d at 1202.

4

Rearden LLC, 683

The facts giving rise to the second element of

5

plaintiff’s trademark claim did not exist until defendant

6

disaffiliated with plaintiff in April 2013.

7

remained affiliated with plaintiff, a reasonably prudent consumer

8

in the marketplace would have been correct, and not confused, to

9

believe that defendant’s use of “Grange” marked its affiliation

So long as defendant

10

with plaintiff.

11

confusion until after defendant officially declared it was

12

disaffiliating and stopped paying dues to plaintiff.

13

defendant no longer bore any relation to plaintiff, and was

14

operating by its own bylaws, (McFarland Decl. ¶ 13), and

15

collecting dues on its own terms, (McFarland Dep. at 147:13-

16

150:12), there arose a risk that consumers might be confused as

17

to whether defendant’s use of “Grange” meant the “source” of its

18

services was the national order.

19

There would have been no risk of consumer

Once

A month after defendant disclaimed its affiliation in

20

November 2013, and the facts existed that put plaintiff on notice

21

that defendant’s use was likely to mislead consumers into

22

thinking it remained affiliated with plaintiff, plaintiff sent

23

defendant its cease and desist letter, (Turrill Decl. Ex. 20),

24

and filed this lawsuit in March 2014.

25

file a lawsuit after being put on notice that the facts

26

supporting an infringement claim exists is hardly acquiescence.

27

Based on the evidence before the court, defendant appears to be

28

unable to prevail on its acquiescence theory.
13

Waiting four months to

See Celotex, 477

1

U.S. at 323 (“[T]he plain language of 56(c) mandates the entry of

2

summary judgment, after adequate time for discovery and upon

3

motion, against a party who fails to make a showing sufficient to

4

establish the existence of an element essential to that party’s

5

case, and on which that party will bear the burden of proof at

6

trial.”).

7

2. Abandonment/Naked Licensing

8

“[N]aked licensing may result in the trademark ceasing

9

to function as a symbol of quality and controlled source.”

10

Barcamerica Int’l USA Trust v. Tyfield Imps., Inc., 289 F.3d 589,

11

596 (9th Cir. 2002) (internal quotation marks and citation

12

omitted).

13

trademark, “where the licensor fails to exercise adequate quality

14

control over the licensee, a court may find that the trademark

15

owner has abandoned the trademark, in which case the owner would

16

be estopped from asserting rights to the trademark.”

17

Because showing subjective intent to abandon the mark is not

18

required, “the proponent of a naked license theory faces a

19

stringent standard of proof.”

20

Although a trademark owner may license the use of its

Id.

Id.

The Ninth Circuit has not yet decided whether the

21

preponderance of the evidence or clear and convincing standard

22

applies to the naked licensing defense.

23

Freecycle Network, 626 F.3d 509, 514 (9th Cir. 2010).

24

either standard, to overcome summary judgment, defendant must

25

show that, viewing the light most favorable to defendant,

26

plaintiff allowed a licensee to use the Grange trademark with so

27

few restrictions as to compel a finding that plaintiff engaged in

28

naked licensing and abandoned the trademark.
14

Freecycle Sunnyvale v.
Under

See id. at 516.

1

Defendant provides several examples of alleged naked

2

licensing, the first involving an entity called the Brooklyn

3

Grange.

4

Brooklyn, New York, which sells produce through retailers and

5

provides meal and alcohol services.

6

(complaint filed against Brooklyn Grange, LLC in the Eastern

7

District of New York) (Docket No. 51-2).)

8

affiliate or a fraternity of farmers.

9

an infringement action against the Brooklyn Grange.

Brooklyn Grange is a rooftop farming operation in

(See Def.’s Opp’n, Ex. K

It is not a Grange

In 2011, plaintiff brought
(See id.)

10

The case settled, and the parties reached a “Settlement Agreement

11

and License Agreement.”

12

the agreement confidential, and it is not before the court.

13

the title of the document, it can be inferred that plaintiff

14

agreed to license its trademark to the Brooklyn Grange as part of

15

the settlement.

(Def.’s Opp’n Ex. M.)

The parties kept
From

16

Defendant’s only evidence that plaintiff has failed to

17

exercise adequate quality-control over Brooklyn Grange’s license

18

is that Brooklyn Grange makes no reference to the license on its

19

website.

20

standard, no trier of fact could reasonably conclude from this

21

omission that plaintiff has failed to police the license.

22

Anderson, 477 U.S. at 252 (holding that the “mere existence of a

23

scintilla of evidence” is insufficient to overcome summary

24

judgment).

25

license from plaintiff on its website has no apparent connection

26

to whether plaintiff has imposed so few restrictions on the use

27

of its mark that “Grange” has “ceased to function as a symbol of

28

quality and controlled source.”

Even under the lower preponderance of the evidence

See

Whether the Brooklyn Grange has referred to its

See Barcamerica Int’l, 289 F.3d
15

1

at 596.

2

Defendant also points to several farm-to-fork

3

restaurants using Grange in their names, one of which happens to

4

be just a few blocks from this courthouse.

5

licensed these restaurants to use the “Grange” mark, and those

6

licenses are subject to quality control provisions.

7

Decl. ¶ 8.)

8

evidence that plaintiff has failed to maintain adequate quality

9

control over these licensees.

10

Plaintiff has

(Watson

Like the Brooklyn Grange, defendant offers no

Because there is a total absence of evidence in the

11

record that plaintiff failed to exercise adequate quality control

12

over its licensing, defendant cannot meet a “stringent” standard

13

of proof on its naked licensing affirmative defense.

14

Barcamerica Int’l, 289 F.3d at 596.

15

theory must fail.

16

See

Defendant’s naked licensing

See Celotex, 477 U.S. at 323.

3. Unclean Hands

17

“The doctrine [of unclean hands] bars relief to a

18

plaintiff who has violated conscience, good faith or other

19

equitable principles in his prior conduct, . . . [or] who has

20

dirtied his hands in acquiring the right presently asserted.”

21

Seller Agency Council, Inc. v. Kennedy Ctr. for Real Estate

22

Educ., Inc., 621 F.3d 981, 986 (9th Cir. 2010) (citation and

23

internal quotation marks omitted).

24

an unclean hands defense, plaintiff’s alleged misconduct must

25

bear some connection to the transaction from which the complaint

26

arose.

27

asserted by plaintiff against the transgression which, it is

28

contended, serves to foreclose that right.

Id.

For defendant to succeed on

“The court must weigh the substance of the right

16

The relative extent

1

of each party’s wrong upon the other and upon the public should

2

be taken into account, and an equitable balance struck.”

3

Republic Molding Corp. v. B.W. Photo Utils., 319 F.2d 347, 350

4

(9th Cir. 1963).

5

plaintiff’s wrong, compared with the defendant’s wrong, warrants

6

punishment of the plaintiff rather than of the defendant.

Ultimately, the court must decide whether

7

There is no evidence before the court suggesting

8

plaintiff engaged in wrongful conduct in connection to its

9

claims.

Id.

According to plaintiff’s constitution, subordinate

10

granges “derive their rights and powers” from plaintiff.

11

(Turrill Decl. Ex. 22, Ch. 1 art. III § 1.3.1 (Docket No. 43-7).)

12

Plaintiff retains the authority to issue charters.

13

§ 1.4.1.)

14

revocation of charters where the “good of the Order” requires

15

such action.

16

defendant’s charter, plaintiff stated the reason for the

17

revocation was that defendant made no effort to work with

18

plaintiff following the suspension of defendant’s president for

19

violating rules in the charter and instead launched a

20

“destructive public relations campaign” against plaintiff.

21

(Turrill Decl. Ex. 15.)

22

states the disaffiliation was the result of a “political dispute”

23

between the parties, without offering more explanation.

24

(McFarland Decl. ¶ 13 (Docket 44-4).)

25

ground for revoking defendant’s charter, it is not genuinely

26

disputed that plaintiff was acting within its rights and in

27

accordance with its bylaws when it revoked defendant’s charter.

28

Plaintiff even afforded defendant procedural due process, giving

(Id. art. IV

Plaintiff’s bylaws set out the procedure for the

(See id. Ch. 4 art. V.)

In its letter revoking

Defendant’s president McFarland merely

17

Regardless of the precise

1

defendant the opportunity to appeal the decision.

2

Ex. 16.)

3

Defendant declined.

(Turrill Decl.

(McFarland Dep. at 78:14-79:16.)

Moreover, as the organization bearing the right to use

4

the “Grange” name, plaintiff was also within its right to charter

5

a new organization in California.

6

Defendant asserts that after kicking out defendant, plaintiff’s

7

purpose in beginning a new California Grange chapter was “to take

8

defendant’s local chapters and cripple defendant organization.”

9

(Def.’s Opp’n at 14.)

(See Ex. 22 art. IV § 1.4.1.)

Defendant offers no evidentiary support

10

for this bare allegation.

11

favorable to defendant, plaintiff’s conduct does not rise to the

12

level of violating “conscience, or good faith, or other equitable

13

standards of conduct” such that plaintiff should be precluded

14

from enforcing its rights.

15

at 986.

16

Viewing the record in the light most

See Seller Agency Council, 621 F.3d

The record supports only one conclusion: plaintiff’s

17

behavior, compared with the defendant’s infringement, should not

18

prevent plaintiff from enforcing its right to its trademark.

19

Defendant’s unclean hands defense must also fail.

20

477 U.S. at 323.

21

See Celotex,

Plaintiff has thus undisputedly established a trademark

22

infringement claim, and based on the record, defendant cannot

23

prevail on any of its affirmative defenses.

24

court must grant plaintiff’s motion for summary judgment and deny

25

defendant’s motion for the same on plaintiff’s first claim for

26

trademark infringement.

27

counterclaims turn on the same legal issues, the court will also

28

grant plaintiff’s motion for summary judgment and deny motion for

Accordingly, the

Moreover, because defendant’s

18

1

the same on defendant’s counterclaims.

2
3

B. Unfair Competition and False Designation of Origin
under § 1125(a)

4

Plaintiffs commonly frame their claims in infringement

5

suits under both §§ 1114 and 1125(a).

Brookfield Commc’ns, Inc.

6

v. W. Coast Entm’t Corp., 174 F.3d 1036, 1046 n.8 (9th Cir.

7

1999).

8

identical.”

9

Supp. 2d 1072, 1079 (C.D. Cal. 2012) (jointly analyzing the

“The analysis under the two provisions is oftentimes
Id; see Wecosign, Inc. v. IFG Holdings, Inc., 854 F.

10

plaintiff’s §§ 1114 and 11259(a) claims).

11

for plaintiff’s first two claims appear to be indistinguishable

12

in all respects that are material to this action, the court must

13

also grant plaintiff’s motion for summary judgment with respect

14

to its second claim for unfair competition.

15
16

Because the analyses

C. Remaining Claims on which Defendant Moves for
Summary Judgment

17

While plaintiff only moves for summary judgment on its

18

first two claims, defendant moves for summary judgment on all of

19

plaintiff’s claims as well as its counterclaims seeking the court

20

declare plaintiff’s trademark invalid and abandoned.

21

defendant failed to address any of plaintiff’s remaining two

22

claims, the court will deny defendant’s motion for summary

23

judgment as to those claims.

24

Because

IT IS THEREFORE ORDERED that plaintiff’s motion for

25

summary judgment be, and the same hereby is, GRANTED; and that

26

defendant’s motion for summary judgment be, and the same hereby

27

is, DENIED.

28

IT IS FURTHER ORDERED that upon entry of final judgment
19

1

in this action defendant and its agents, affiliates, and assigns,

2

or any party acting in concert with defendant and its agents,

3

affiliates, and assigns, shall be permanently enjoined from using

4

marks containing the word “Grange.”

5

The parties shall appear for a status conference on

6

August 17, 2015 at 2:00 p.m. regarding the status of plaintiff’s

7

remaining claims and its prayer for damages.

8

Dated:

July 14, 2015

9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
20