Xoom Corporation v. Motorola Trademark Holdings, LLC et al

Filing 38

JOINT CASE MANAGEMENT STATEMENT filed by Xoom Corporation. (Alpert, Rochelle) (Filed on 12/9/2011)

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ROCHELLE D. ALPERT, State Bar No. 065037
LEIGHA E. WEINBERG, State Bar No. 251795
MORGAN, LEWIS & BOCKIUS LLP
One Market, Spear Street Tower
San Francisco, CA 94105-1126
Tel: [phone]
E-mail: [e-mail]
[e-mail]
Attorneys for Plaintiff
XOOM CORPORATION
KRISTIN J. ACHTERHOF (pro hac vice)
CATHAY Y.N. SMITH (pro hac vice)
KATTEN MUCHIN ROSENMAN LLP
525 West Monroe Street
Chicago, IL 60661
Tel.: [phone]
Email: [e-mail],
[e-mail]
DENNIS B. KASS, State Bar No. 137263
RICHARD GARCIA, State Bar No. 198185
Manning & Kass, Ellrod, Ramirez, Trester LLP
One California Street, Suite 1100
San Francisco, CA 94111
Tel.: [phone]
Email: [e-mail],
[e-mail]

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Attorneys for Defendants
MOTOROLA TRADEMARK HOLDINGS, LLC,
MOTOROLA MOBILITY, INC., and MOTOROLA
MOBILITY HOLDINGS, INC.

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UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO DIVISION

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XOOM CORPORATION, a California corporation, §
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Plaintiff,
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vs.
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MOTOROLA TRADEMARK HOLDINGS, LLC, a §
Delaware limited liability company, MOTOROLA §
MOBILITY, INC., a Delaware corporation,
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MOTOROLA MOBILITY HOLDINGS, INC., a
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Delaware corporation, and DOES 1 through 10,
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Defendants.

Case No: 11-CV-00848 CRB
JOINT CASE MANAGEMENT
CONFERENCE STATEMENT
(N.D. Cal. Civil L.R. 16-9)
DATE: December 16, 2011
TIME: 8:30 a.m.
LOCATION: Courtroom 8, 19th Floor

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JOINT CASE MANAGEMENT CONFERENCE STATEMENT
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Pursuant to Civil L.R. 16-9, the Court’s Standing Order regarding case management

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conferences, as well as the Court’s April 26, 2011 Order (Dkt. No. 10) and the Court’s November

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15, 2011 Order (Dkt. No. 34) setting the case management conference, Plaintiff, Xoom Corporation

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(hereinafter, “Xoom” or “Plaintiff”) and Defendants, Motorola Trademark Holdings, LLC,

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Motorola Mobility, Inc. and Motorola Mobility Holdings, Inc. (collectively, “Motorola” or

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“Defendants”), jointly file this Case Management Conference Statement.

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1.

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and 1125(a)(1), for trademark infringement and unfair competition, as well as California statutory

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and common law. This Court has subject matter jurisdiction over Xoom’s claims pursuant to 15

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U.S.C. §1121 and 28 U.S.C. §§1331, 1338, and 1367(a). Venue is proper in this court under 28

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U.S.C. §§ 1391(b) and 1400(b). Xoom timely served Motorola with the Complaint on October 28,

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2011. Motorola timely answered Xoom’s Complaint on November 18, 2011 and did not contest

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jurisdiction, venue or service.

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2.

Jurisdiction and Service: Xoom’s claims arise under the Lanham Act, 15 U.S.C. §§ 1114(1)

Facts:

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(a)

Xoom’s Factual Allegations:

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Xoom is the owner of an incontestable, federal trademark registration for the XOOM® mark:

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U.S. Trademark Registration No. 2909931 for XOOM® issued December 14, 2004 covering

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“providing business information, namely, on money transfer services,” and “money transfer services;

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electronic funds transfer services; bill payment remittance services; electronic payment, namely,

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electronic processing and transmission of bill payment data.” Xoom also owns a registration for

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XOOM, U.S. Trademark Registration No. 4012377, which registered on August 16, 2011 for

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“providing a web site featuring temporary use of non-downloadable software for providing

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information on money transfers, and for facilitating money transfers, electronic funds transfers, bill

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payment remittances and electronic processing and transmission of bill payment data.” Xoom also

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owns an allowed application, Serial No. 85/225,008, for XOOM for “computer software for

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facilitating money transfer services, electronic funds transfer services, bill payment remittance

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services, electronic processing and transmission of payments and payment data.” No other XOOM

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mark is federally registered for Internet services or mobile services or devices.
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Xoom has used its XOOM® mark and its Xoom trade name in commerce since at least as

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early as 2003 in connection with its remittance services, which allow users to transmit monies

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through the company’s xoom.com website to more than 30 different countries, as well as its

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provision of online access to XOOM® product offerings. Xoom’s XOOM® remittance services are

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accessible via computers and mobile devices and are available in special formats for users of mobile

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devices such as cellular phones and mobile computers, including Motorola’s mobile devices and

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tablet computers. For example, an image of the screen of a mobile phone accessing Xoom’s

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XOOM® remittance services is set forth below:

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Xoom contends that Motorola has used a similar depiction of its product on its website (see

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Complaint ¶ 18).

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Xoom asserts that, in an effort to exploit and improperly trade on Xoom’s goodwill, to

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otherwise diminish the value of the Xoom trade name and the federally registered, incontestable

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XOOM® mark, and to confuse and mislead consumers, Motorola, without authorization

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intentionally and unlawfully appropriated Xoom’s trade name and trademark rights through: (1) its

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adoption and use of XOOM designations to promote a mobile computer and related products and

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services; (2) its purchase of the XOOM keyword on online search engines; (3) its Internet

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advertisements that Motorola’s site is the Xoom “Official Site”; and (4) its filing of applications to

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register the XOOM and MOTOROLA XOOM designations for mobile computers and related

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accessories (U.S. App. Nos. 85161358 and 85257238, respectively).

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(b)

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Motorola is a leader in the design and manufacture of a variety of communication inventions

Motorola‘s Factual Allegations:

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and innovations around the world, including, without limitation, mobile phones and mobile devices.

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The “MOTOROLA” brand is widely known and famous for its consumer mobile technologies.

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In early 2011, Motorola began marketing and selling its MOTOROLA XOOM tablet

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computer.

The MOTOROLA XOOM is a touch screen tablet computer, which is a wireless,

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portable personal computer with a touch screen interface. Tablet computers are typically smaller

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than a notebook or laptop computer, but larger than a smart phone. The MOTOROLA XOOM is

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similar to other tablet computers that have been marketed by some of Motorola’s competitors,

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including Apple (iPad), HP (TouchPad), Samsung (Galaxy Tab), and Blackberry (Playbook).

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Motorola’s MOTOROLA XOOM tablet computer is entirely different from the money transfer

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services that Plaintiff provides under its XOOM mark. Indeed, Motorola does not offer any services

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under the MOTOROLA XOOM mark, and certainly does not offer any services similar to Plaintiff’s

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money transfer services. Similarly, upon information and belief, Plaintiff does not offer any goods

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or products under its XOOM mark.

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The term “Xoom” and phonetic equivalents thereof are highly-diluted because such terms

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have been used for many years by many third-parties. As such, any rights owned by Plaintiff are

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extremely weak and too narrow to stop Motorola’s complained of use in this case. Additionally,

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Motorola does not use or advertise its MOTOROLA XOOM product without its famous house mark,

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MOTOROLA, which diminishes the likelihood of consumer confusion.

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MOTOROLA mark is prominently displayed on the tablet computer itself, on all of the packaging

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for the MOTOROLA XOOM, and in all advertisements and marketing materials. Furthermore, the

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MOTOROLA XOOM tablet computer is relatively expensive, having launched at around $599 to

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$799, depending on whether a consumer also purchases a monthly wireless data plan, and consumers

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are likely to be aware of the source of such an expensive product. Finally, Motorola had no intent to

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trade on Plaintiff’s alleged “goodwill,” and it is not credible or logical to assume that Motorola

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named its MOTOROLA XOOM tablet computer in order to intentionally confuse consumers into

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thinking that Motorola’s product is in some way sponsored by, or associated or connected with

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Plaintiff or Plaintiff’s money transfer services.

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In fact, Motorola’s

Motorola is not aware of any instances in which a consumer has confused Plaintiff’s XOOM
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JOINT CASE MANAGEMENT CONFERENCE STATEMENT
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on-line money transfer services with Motorola’s MOTOROLA XOOM tablet computer, and all of

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the factors used in determining “likelihood of confusion” in this Circuit favor Motorola.

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Additionally, absent evidence of consumer confusion sufficient to unjustly enrich Motorola, and

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absent any bad faith on Motorola’s behalf to trade on Plaintiff’s mark, Plaintiff is not entitled to

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damages even if liability exists, which it does not. Motorola believes that Plaintiff’s claims are

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meritless, and Motorola intends to seek its attorneys’ fees and costs as the prevailing party pursuant

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to 15 U.S.C. § 1117.

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3.

Legal Issues:

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Xoom’s Complaint asserts claims for federal trademark infringement (15 U.S.C. §1114(1))

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and unfair competition (15 U.S.C. §1125(a)(1)), as well as state unfair business practices (Cal. Bus.

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& Prof. Code §§17200 et seq.), trademark infringement (Cal. Bus. & Prof. Code §14335), and

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common law unfair competition.

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In Motorola’s answer, Motorola denies all liability and asserts the following affirmative

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defenses: Plaintiff’s Complaint fails to state a claim; any rights owned by Plaintiff are extremely

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weak and too narrow to stop Motorola’s complained of use in this case; Motorola always uses its

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famous house mark MOTOROLA to promote and advertise Motorola’s products and, therefore,

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there is no likelihood that consumers would be confused; Plaintiff’s claims are barred under the

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equitable doctrine of laches, estoppel, waiver and acquiescence; and Plaintiff’s claims are barred by

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unclean hands. Xoom contends that Motorola’s affirmative defenses are invalid as a matter of law.

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The principal legal issues in this case appear to be:

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

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Whether, as Xoom alleges, Motorola infringed Xoom’s incontestable, federally

registered XOOM® mark and Xoom’s common law rights in its XOOM trade name;
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Whether, as Xoom alleges, the mark XOOM and/or MOTOROLA XOOM is likely

to cause confusion under the Ninth Circuit’s Sleekcraft test for likelihood of confusion;
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Whether, as Motorola alleges, Motorola’s use of its famous house mark

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MOTOROLA with the word XOOM diminishes the likelihood of consumer confusion, or whether,

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as Xoom alleges, it adds to the likelihood of confusion under this Circuit’s case law;

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Whether, as Motorola alleges, Plaintiff’s XOOM mark is weak and too narrow to
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stop Motorola’s complained of use in this case, or whether, as Xoom alleges, the federally

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registered XOOM® mark and trade name are protectable and not weak for the goods and services at

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issue;
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Whether, as Motorola alleges, Plaintiff’s claims are barred by unclean hands based

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on Plaintiff’s conduct of applying for an intent-to-use trademark application for XOOM for the sole

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purpose of interfering with Motorola, without a bona fide intent to use the mark for goods;
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Whether, as Motorola alleges, Plaintiff’s claims are barred by unclean hands for its

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false claims that it offers “products” under the XOOM mark, even though it offers no products, but

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only money transfer services;

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and trade name;

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Whether Motorola’s affirmative defenses are valid or invalid as a matter of law;

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Whether, as Xoom alleges, Xoom is entitled to injunctive relief;

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Whether, as Xoom alleges, Xoom is entitled to its actual damages and/or Motorola’s

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Whether, as Xoom alleges, Motorola intentionally infringed Xoom’s XOOM® mark

profits; and
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Whether, as Motorola alleges, Motorola is entitled to its attorneys’ fees and costs

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under 15 U.S.C. § 1117.

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4.

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related deadlines in this proceeding and the parties have each filed ex parte motions for extension of

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the case management conference date and related deadlines, all of which were granted by the Court.

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Depending on the results of discovery, each party may file a motion for summary judgment or

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partial summary judgment.

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5.

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amend the pleadings based on currently available information.

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6.

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preserve documents relevant to the claims and counterclaims in this action and to preserve all

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electronic evidence relating thereto.

Motions: The parties have filed four consented motions to extend the service deadline and

Amendment of Pleadings: The parties do not presently expect to add additional parties or

Evidence Preservation: Both parties represent that they have taken appropriate measures to

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Disclosures: The parties expect to exchange initial disclosures pursuant to Fed. R. Civ. P.

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26(a) on or before December 21, 2011.

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causes of action for trademark infringement and unfair competition, and Motorola’s affirmative

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defenses. The parties propose that the discovery rules in the Federal Rules of Civil Procedure

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remain unmodified.

Discovery: No discovery has yet been taken. The parties anticipate discovery on Xoom’s

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The Parties propose the following discovery plan pursuant to Fed. R. Civ. P 26(f)(3):

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(A)

Rule 26(a) disclosures: The parties will serve initial disclosures by December 21,

(B)

Discovery is expected to cover the factual and legal issues identified above. The

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2011.

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parties’ proposed discovery schedule is set forth below.
(C)

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Production of ESI:

The parties will participate in full discovery, working together

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to avoid the complications and costs of e-discovery given the nature of the claims and affirmative

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defenses.
(D)

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Privilege and trial-preparation material: The parties are working together to propose

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a protective order based on the Model Stipulated Protective Order that will provide for designation

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of confidential and highly confidential documents, and post-production assertion of privilege or of

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production as trial-preparation material. The parties will also exchange privilege logs in accordance

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with Rule 26(b)(5); the parties agree that privileged communications and/or work product relating

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to this case and created after Plaintiff’s initiation of this case need not be logged.
(E)

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Limits on Discovery: The parties propose that the discovery rules in the Federal

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Rules of Civil Procedure remain unmodified. Specifically, each party is limited to not more than 25

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interrogatories per party (including subparts); unlimited sets of requests for admission per party;

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unlimited sets of requests for production per party; 10 depositions per party of not more than 7

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hours each. Xoom believes the term “parties” should be construed to mean Xoom on the one hand

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and the Motorola parties collectively, on the other hand, such that the collective Motorola parties

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should be limited to no more than 25 interrogatories and 10 depositions.

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9.

Class Actions: This matter is not a class action.
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Related Cases: Xoom has filed two trademark opposition proceedings against Motorola in

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the Trademark Trial and Appeal Board (“TTAB”) for Motorola’s trademark applications for

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XOOM and MOTOROLA XOOM. Motorola has filed a motion in the TTAB to stay the TTAB

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proceedings pending outcome of this case.

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Relief:

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(a)

Relief Sought By Xoom:

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Xoom seeks actual damages, Motorola’s profits attributable to the infringement and

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injunctive relief. Xoom further seeks an order ordering that all labels, packaging, wrappers, signs,

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prints, banners, posters, brochures, or other advertising, marketing, or other promotional materials

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bearing a confusingly similar designation to Xoom’s XOOM® mark or name, be disabled, removed

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and destroyed, along with the means for making the same, and that all Internet websites, online

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advertising, marketing, promotions or other online materials bearing the XOOM designation in any

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form or manner by Motorola be disabled, removed and destroyed. Xoom also seeks an order

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declaring Motorola’s unauthorized use of XOOM and MOTOROLA XOOM in connection with

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mobile computers and related products and services infringes Xoom’s XOOM® mark and name

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and that Motorola has engaged in false advertising by buying the keyword “Xoom,” claiming it

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owns the Xoom Official Site and otherwise misrepresenting Motorola’s and Xoom’s offerings and

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declaring Motorola’s infringement, unfair competition, and false advertising was knowing,

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intentional, and willful. To the extent Motorola’s conduct is found to be intentional, Xoom seeks

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treble damages, punitive and exemplary damages, costs and attorneys’ fees and any other relief the

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Court deems just and proper. Xoom is unable to identify its complete financial loss at this time, as

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such damage is in an amount that is ongoing, increasing, and is yet to be fully ascertained. Nor can

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Xoom determine the value of Motorola’s profits from its infringing activity without discovery.

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(b)

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Motorola seeks dismissal of all claims against Motorola, for judgment in Motorola’s favor,

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Relief Sought By Motorola:

and for an award of attorneys’ fees as the prevailing party pursuant to 15 U.S.C. § 1117.

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12.

Settlement and ADR: The parties have had settlement discussions, but no resolution has

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been reached. The parties agree that mediation in front of a magistrate judge or by a mediator from

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the Court’s mediation panel is the appropriate ADR process in the case.

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13.

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magistrate judge conduct all further proceedings including trial and entry of judgment.

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arbitration, a special master, or the Judicial Panel on Multidistrict Litigation.

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15.

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as they arise.

Consent to Magistrate Judge For All Purposes: The parties do not consent to have a

Other References: The parties do not believe this case is suitable for reference to binding

Narrowing of Issues: The parties will attempt to narrow issues by agreement or by motion

Expedited Schedule: This is not the type of case that can be handled on an expedited basis

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16.

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with streamlined procedures.

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for the case:

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Deadline for joinder and amendment of pleadings – January 15, 2012

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Deadline for completion of factual discovery – July 1, 2012

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Deadline for expert reports – July 31, 2012

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Deadline for rebuttal reports – September 4, 2012

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Deadline for completion of expert discovery – October 4, 2012

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Deadline for filing dispositive motions – October 29, 2011

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Pretrial conference and trial – to be set by Court after consideration of dispositive motions

Scheduling: The parties agree on, and therefore propose to the Court, the following schedule

Trial: Xoom has made a demand for trial by jury. At this juncture, the parties believe the

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trial should last six (6) days.

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Certification of Interested Entities or Persons.

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//

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//

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//

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//

Disclosure of Non-party Interested Entities or Persons:

Both parties have filed a

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20.

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of this matter.

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Dated: December 9, 2011

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/s/ Rochelle D. Alpert

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Rochelle D. Alpert
Leigha E. Weinberg
Morgan, Lewis & Bockius LLP
One Market, Spear Street Tower
San Francisco, CA 94105
Tel.: [phone]
Email:[e-mail],
[e-mail]

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There are no other matters that may facilitate the just, speedy, and inexpensive disposition

/s/ Kristin J. Achterhof
Kristin J. Achterhof (pro hac vice)
Cathay Y.N. Smith (pro hac vice)
Katten Muchin Rosenman LLP
525 West Monroe Street
Chicago, IL 60661
Tel.: [phone]
Email:[e-mail],
[e-mail]

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Dennis B. Kass
Richard Garcia
Manning & Kass, Ellrod, Ramirez, Trester LLP
One California Street, Suite 1100
San Francisco, CA 94111
Tel.: [phone]
Email: [e-mail],
[e-mail]

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Attorneys for Plaintiff
XOOM CORPORATION

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Attorneys for Defendants
MOTOROLA TRADEMARK HOLDINGS,
LLC, MOTOROLA MOBILITY, INC., and
MOTOROLA MOBILITY HOLDINGS,
INC.

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