Macy's Inc. et al v. Strategic Marks, LLC

Filing 77

Order by Hon. Samuel Conti denying 55 Plaintiffs Macy's, Inc. and Macys.com, Inc.'s Motion for Partial Summary Judgment.(sclc2, COURT STAFF) (Filed on 3/19/2013)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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United States District Court

For the Northern District of California

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MACY'S, INC. and MACYS.COM,
INC.,

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Plaintiffs,

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v.

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STRATEGIC MARKS, LLC,

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Defendant.

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Case No. 11-6198 SC
ORDER DENYING PLAINTIFFS
MACY'S, INC. AND MACYS.COM,
INC.'S MOTION FOR PARTIAL
SUMMARY JUDGMENT

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I.

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INTRODUCTION
Now before the court is Plaintiffs and Counter-Defendants

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Macy's, Inc. and Macys.com, Inc.'s ("Plaintiffs") motion for

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partial summary judgment against Defendant and Counter-Claimant

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Strategic Marks, LLC. ("Defendant").

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motion is fully briefed, ECF Nos. 63 ("Opp'n"), 66 ("Reply"), and

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appropriate for resolution without oral argument, Civ. L.R. 7-1(b).

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For the reasons explained below, the Court DENIES Plaintiffs'

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motion for partial summary judgment.

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ECF No. 55 ("Mot.")

The

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BACKGROUND

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The instant matter arises from Defendant's counterclaims

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against Plaintiffs for trademark infringement, among other things,

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based on Defendant's registrations and applications for four

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service marks, "The Broadway," "The Bon Marche," "Robinson's," and

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"Abraham & Straus," under the Lanham Act, 15 U.S.C. section 1051 et

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seq.

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"The Broadway," "The Bon Marche," and "Robinson's."

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(Decl. of Anthony F. Lo Cicero ISO Mot. ("Lo Cicero Decl.")) Exs.

Defendant has already obtained service mark registrations for
ECF No. 56

United States District Court

For the Northern District of California

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A-C.

Defendant's application to register the "Abraham & Straus"

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mark is pending.

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here (the "Marks") are names of well-known but now-defunct

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department stores.

Id. Ex. D.

All of the service marks at issue

See Am. Answer & Countercl. ¶ 15.

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All four applications were filed as "intent to use"

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applications pursuant to Lanham Act section 1051(b) and were

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accordingly accompanied with Statements of Use ("SOU").

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Decl. Exs. E-H.

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registration process under the Lanham Act before using the marks in

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commerce, provided that the applicant shows a "bona fide intention

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to use the mark in commerce at a later date."

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Such applications are called "intent to use" applications, and

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registration under these applications is granted if the applicant

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files a verified statement of commercial use proving eventual use

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of the mark in commerce.

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may not file a statement of use until the applicant has made use of

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the mark in commerce on or in connection with all services

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specified in the notice of allowance.

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(describing the USPTO's requirements for filing a statement of

Lo Cicero

A service mark applicant may begin the

Id. § 1051(d).

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15 U.S.C. § 1051(b).

In general, an applicant

See 37 C.F.R. § 2.88

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use).
Each of Defendant's SOUs affirms that, per Lanham Act

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section 1051(b)'s requirements for service mark registration,

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"[t]he mark is in use in commerce on or in connection with all

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goods or services listed in the application."

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E-H.

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Defendant "is using the mark in commerce on or in connection with

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the goods/services identified."

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Specifically, each SOU identifies the services for which Defendant

United States District Court

For the Northern District of California

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Lo Cicero Decl. Exs.

Each SOU also contains a sworn, signed declaration that

Lo Cicero Decl. Exs. E-H.

claims to be using the Mark as:
retail department store and on-line retail
department store services
retail and on-line retail clothing
boutiques
retail and on-line clothing stores
retail and on-line retail apparel stores
retail and on-line retail store services
featuring clothing and fashion accessories
Id. Exs. E-H.
Each Mark's application is also accompanied by the requisite

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Specimen of Use ("Specimen"), which provides proof of how Defendant

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claims to be using the mark in commerce.

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Specimens are screenshots taken from Defendant's website, "Retro

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Department Stores" (RetroDepartmentStores.com).

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Mark's Specimen is a screenshot of that Mark's sub-page, each of

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which features the Mark on a t-shirt that the visitor can purchase

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by clicking an "Add to Cart" button, a brief history of the Mark's

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namesake department store, and, in some cases, a video clip of an

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old commercial for that store.

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Id. Exs. I-L.

See id.

The

Each

See id.

Defendant's business, as described on its website, is meant to
bring back some of "the great department stores of the 20th

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century" by rebuilding and restoring "well-loved" department store

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brands, including Robinson's May, The Broadway, The Bon Marche, and

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Abraham & Straus.

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its plan as follows, on Retro Department Stores' "About" page:

Id. Ex. M.

Specifically, Defendant described

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You'll see these stores first as part of
this "nostalgic" virtual mall. Then we plan
to branch out with unique accessories at
small
boutiques,
followed
by
exclusive
apparel by up and coming designers, and then
ultimately with actual "Brick and Mortar"
stores throughout the United States with a
full line-up of products.

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United States District Court

For the Northern District of California

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Id.
As to the factual dispute that forms the root of the instant

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motion for summary judgment, Defendant never actually sold any

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"unique accessories," "exclusive apparel," or other products, and

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never opened any "small boutiques" or "Brick and Mortar" stores.

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Plaintiffs claim that these facts render all of Defendants'

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registrations void.

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Defendant's preparatory activities or other work is sufficient to

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satisfy the Lanham Act's requirements for "intent to use"

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applications or use in commerce.

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its evidence -- invoices from companies it says it retained to

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build its website and provide merchandise, deposition testimony as

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to employees' duties, and correspondence related to its work

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publicizing its business -- satisfies the Lanham Act's

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requirements, rendering Defendant's Marks presumptively valid and

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capable of supporting Defendant's counter-claims against

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Plaintiffs.

Mot at 9-16.

Plaintiff claims that none of

See id.

Defendant insists that

See Opp'n at 2-8.

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Plaintiffs now move for partial summary judgment as to

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Defendant's counterclaims, arguing that there is no genuine issue

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of material fact as to the invalidity of Defendant's Marks, thereby

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rendering unsupportable Defendant's counterclaims for Plaintiff's

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infringement of the Marks.

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Plaintiffs' motion, arguing that genuine issues of material fact

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exist as to the definition of Defendant's services and whether

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Defendant used the Marks in commerce.

Mot. at 9.

Defendant opposes

Opp'n at 3-7.

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Entry of summary judgment is proper "if the movant shows that

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United States District Court

LEGAL STANDARD

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For the Northern District of California

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

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is entitled to judgment as a matter of law."

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56(a).

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require a directed verdict for the moving party.

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Liberty Lobby, Inc., 477 U.S. 242, 251 (1986).

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bears the initial burdens of production and persuasion.

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Fire & Marine Ins. Co., Ltd. v. Fritz Companies, Inc., 210 F.3d

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1099, 1102 (9th Cir. 2000).

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Fed. R. Civ. P.

Summary judgment should be granted if the evidence would
Anderson v.
The moving party
Nissan

"In order to carry its burden of production, the moving party

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must either produce evidence negating an essential element of the

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nonmoving party's claim or defense or show that the nonmoving party

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does not have enough evidence of an essential element to carry its

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ultimate burden of persuasion at trial."

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its ultimate burden of persuasion on the motion, the moving party

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must persuade the court that there is no genuine issue of material

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fact."

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party presents evidence from which a reasonable jury, viewing the

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evidence in the light most favorable to that party, could resolve

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the material issue in his or her favor.

Id.

Id.

"In order to carry

A genuine issue for trial exists if the non-moving

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Anderson, 477 U.S. at 248-

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49.
The Ninth Circuit has instructed that "[b]ecause of the

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intensely factual nature of trademark disputes, summary judgment is

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generally disfavored in the trademark arena."

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Rearden Commerce, Inc., 683 F.3d 1190, 1202 (9th Cir. 2012)

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(quoting Interstellar Starship Servs., Ltd. v. Epix, Inc., 184 F.3d

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1107, 1109 (9th Cir. 1999)); see also Levi Strauss & Co. v. Blue

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Bell, Inc., 778 F.2d 1352, 1356 n.5 (9th Cir. 1985).

Rearden LLC v.

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United States District Court

For the Northern District of California

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DISCUSSION

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The Marks at issue here are service marks.

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The Lanham Act

provides the definition of a service mark:

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The term "service mark" means any word,
name, symbol, or device, or any combination
thereof -(1) used by a person, or
(2) which a person has a bona fide
intention
to
use
in
commerce
and
applies to register . . .
to identify and distinguish the services of
one person, including a unique service, from
the services of others and to indicate the
source of the services, even if that source
is unknown.

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15 U.S.C. § 1127.

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"trademark," but a trademark identifies goods, and a service mark

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identifies intangible services.

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Airflite, Inc., 560 F.3d 1350, 1356 (9th Cir. 2009).

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A service mark is virtually identical to a

Id.; Aycock Eng'g, Inc. v.

Both trademarks and service marks are governed by the same

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statutory criteria for registration and validity.

Aycock, 560 F.3d

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at 1357.

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to registration under the Lanham Act.

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be deemed to be in use in commerce . . . on services when it is

One such criterion is the "use in commerce" prerequisite

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Id.

"In short, a mark shall

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used or displayed in the sale or advertising of services and the

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services are rendered in commerce."

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(citing 15 U.S.C. § 1127) (internal quotation marks omitted).

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requirement has two parts: "(1) an element of actual use, and (2)

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an element of display."

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1151, 1159 (9th Cir. 2001).

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Rearden, 683 F.3d at 1204
This

Chance v. Pac-Tel Teletrac, Inc., 242 F.3d

In determining whether a service mark meets the Lanham Act's

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use in commerce requirement, district courts within the Ninth

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Circuit are to employ a "totality of the circumstances" test that

United States District Court

For the Northern District of California

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considers not only the actual sales activity under the trademark or

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service mark, but also non-sales activity:

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In applying this approach, the district
courts
should
be
guided
in
their
consideration of non-sales activities by
factors we have discussed, such as [1] the
genuineness and commercial character of the
activity, [2] the determination of whether
the mark was sufficiently public to identify
or distinguish the marked service in an
appropriate segment of the public mind as
those of the holder of the mark, [3] the
scope of the non-sales activity relative to
what would be a commercially reasonable
attempt to market the service, [4] the
degree of ongoing activity of the holder to
conduct the business using the mark, [5] the
amount of business transacted, and [6] other
similar factors which might distinguish
whether
a
service
has
actually
been
"rendered in commerce."

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Chance, 242 F.3d at 1159.

Actual sales of a service, while

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important, are therefore not required for a service mark to meet

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the "use in commerce" requirement, though at the other end of the

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spectrum, mere advertisement or preparation for use does not

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suffice.

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Commc'ns, Inc. v. West Coast Entm't Corp., 174 F.3d 1036, 1052 (9th

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Cir. 1999).

See id.; see also Rearden, 683 F.3d at 1204; Brookfield

Moreover, once a mark has been federally registered,

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there attaches a prima facie presumption of validity that can be

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rebutted by a preponderance of evidence showing invalidity.

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Brookfield, 174 F.3d at 1047.

See

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Keeping in mind the Ninth Circuit's instruction that the

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"intensely factual nature of trademark disputes" means that summary

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judgment "is generally disfavored in the trademark arena," Rearden,

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683 F.3d at 1202, and drawing all inferences in the non-movant

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Defendant's favor, the Court finds that there are genuine, disputed

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issues of material fact as to the definitions of Defendant's

United States District Court

For the Northern District of California

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services.

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the parties' dispute over the definitions of "retail" and "on-line"

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in Defendant's SOUs could reasonably be resolved in favor of either

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party.

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See, e.g., Opp'n at 2-4; Reply at 9-12.

Specifically,

See Nissan Fire, 210 F.3d at 1102.

The Court also finds that there are genuine, disputed issues

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concerning whether, under the Ninth Circuit's "totality of

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circumstances" standard, Defendant's sales- and non-sales-related

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activities meet the "use in commerce" requirement for service mark

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registration.

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all of the evidence concerning Defendant's Marks and the Retro

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Department Stores website, as well as the USPTO's ongoing office

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action concerning the validity of the "Abraham & Straus" Mark,

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makes clear that Defendant's activities concerning the Marks

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pertain to possible future uses, and that Defendant has never

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actually rendered any services under the Mark.

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Reply at 12-14.

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activities in their totality are cognizable preparatory activities

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under the Lanham Act, and that its on-line activities were indeed

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uses in commerce.

See Chance, 242 F.3d at 1159.

Plaintiffs argue that

See Mot. at 9-14;

Defendant responds in relevant part that its

See Opp'n at 3-8.

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Based on the evidence that

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the parties provided, as rwell as the arguments in their briefs,

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the Court finds that Plaintiffs fail to meet their burden on these

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points as well.
In total, Plaintiffs have not persuaded the Court that there

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are no material issues of fact for trial.

A reasonable jury,

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reviewing the evidence that the parties have provided up to this

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point and regarding the evidence in the light most favorable to

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Defendant, could resolve the instant matter in Defendant's favor.

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Anderson, 477 U.S. at 248-49.

United States District Court

For the Northern District of California

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V.

CONCLUSION
For the reasons described above, the Court DENIES Plaintiffs

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Macy's, Inc. and Macys.com, Inc.'s motion for summary judgment

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against Defendant Strategic Marks, LLC.

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IT IS SO ORDERED.

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Dated: March ___, 2013

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UNITED STATES DISTRICT JUDGE

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