Helio LLC v. Palm, Inc.

Filing 56

Memorandum in Opposition re 34 MOTION for Preliminary Injunction ; Memorandum of Points & Authorities in Support filed byPalm, Inc.. (Colt, Douglas) (Filed on 3/20/2007)

Helio LLC v. Palm, Inc.

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1 QUINN EMANUEL URQUHART OLIVER & HEDGES, LLP Claude M. Stern (Bar No. 96737) 2 Brian Cannon (Bar No. 193071) Doug Colt (Bar No. 210915) 3 Andrea Pallios Roberts (Bar No. 228128) [e-mail] 4 [e-mail] m [e-mail] m 5 [e-mail] m 555 Twin Dolphin Drive, Suite 560 6 Redwood Shores, California 94065-2139 Telephone: [phone] Facsimile: [phone] 8 Attorneys for Defendant Palm, Inc. 9 10 11 12 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA OAKLAND DIVISION CASE NO. C 06 7754 SBA __________________________ Plaint iff, vs. OPPOSITION TO PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION HEARING DATE: Defendant. JUDGE: April 10, 2007 1:00 p.m. Hon. Saundra B. Armstrong

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13 14 HELIO LLC 15 16

17 PALM, INC. 18 19 20

Defendant Palm, Inc. ("Palm") respectfully submits the following opposition to plaintiff

21 Helio's motion for a preliminary injunction. 22 23 24 25 26 27 28
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1 2 3 4 I.

TABLE OF CONTENTS PAGE PRELIMINARY STATEMENT REGARDING HELIO'S OBSTRUCTION OF DISCOVERY .................................................................................................................... 1 INTRODUCTION AND SUMMARY ............................................................................... 1 STATEMENT OF FACTS ................................................................................................ 3 A. B. C. D. IV. Development of the Palm Campaign ...................................................................... 3 Notice Provided to Palm and Helio's Alleged First Knowledge of the Campaign...............................................................................................................5 Conduct of Discovery............................................................................................. 5 Expert Discovery....................................................................................................6

5 II. 6 III. 7 8 9 10 11 12

ARGUMENT .................................................................................................................... 6 A. B. This Motion is Moot Because Palm is No Longer Running the Campaign. ............. 6 Plaint iff Cannot Meet its High Burden to Establish the Need for a Preliminary Injunction............................................................................................7 1. Helio Cannot Obtain Injunctive Relief Because It Has Not Established a Likelihood of Success on the Merits. ..................................... 7 (a) Factor One: There is No Evidence of Actual Confusion..................8 (i) (ii) (iii) (b) (c) (d) Helio Failed to Conduct a Consumer Survey to Demonstrate Likelihood of Confusion ................................. 8 Palm Commissioned a Consumer Survey That Demonstrates That There Is No Consumer Confusion..........8 Helio Failed to Present any Other Evidence of Actual Confusion............................................................................9

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Factor Two: Helio's and Palm's Marks are Not Similar................ 10 Factor Three: There is No Evidence that Palm Intended to Copy Helio 's Campaign. ............................................................... 15 Factor Four: Helio's "Don't Call it a Phone" and "Don't Call us a Phone Company" Marks are Weak. ................................ 18 (i) (ii) Helio presented no evidence of secondary meaning ........... 19 Palm's survey establishes that plaintiff's marks have no secondary meaning. ...................................................... 20

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1 2 3 4 5 6 7 8 9 10 11 12 V. 2. 3.

(e)

Factor Five: For Plaintiff's Tech-Savvy and Image Conscious Target Market, The Goods and Services Provided by Plaintiff and Palm are Not the Same. ........................................ 20 Factor Six: There is a High Degree of Consumer Care Associated with the Purchase of Plaintiff's and Palm's Goods, Particularly Amo ng Plaintiff's Tech-Savvy and Image Conscious Target Market.................................................... 22 Factor Seven: The Marketing Channels Used by Plaintiff and Palm Differ. .................................................................................. 22

(f)

(g)

Plaint iff has not demonstrated that it will suffer irreparable injury. ........... 24 Plaint iff has not demonstrated that serious questions are raised and that the balance of harms weighs in its favor............................................. 24

CONCLUSION ............................................................................................................... 25

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TABLE OF AUTHORITIES Page Cases AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).................................................................................. 8, 11, 19, 23

6 Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440 (9th Cir. 1980).................................................................................................. 11 7 Braun, Inc. v. Dynamics Corp. of America, 8 975 F.2d 815 (Fed. Cir. 1992)..................................................................................................8 9 Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 533 F. Supp. 75 (11th Cir. 1983)............................................................................................ 20 10 Chesebrough-Pond's, Inc. v. Fabrege, Inc., 11 666 F.2d 393 (9th Cir. 1982).................................................................................................. 23 12 Claremo nt Polychemical Corp. v. Atlantic Powdered Metals, Inc., 470 F.2d 636 (C.C.P.A. 1972) ............................................................................................... 10 13 Dastar Corp. v. Twentieth Century Fox File Corp., 14 539 U.S. 23 (2003) ................................................................................................................ 13 15 E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280 (9th Cir. 1992)................................................................................................ 23 16 Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc., 17 198 F.3d 1143 (9th Cir. 1999)................................................................................................ 19 18 G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385 (7th Cir. 1959).................................................................................................. 12 19 Genesee Brewing Company, Inc. v. Stroh Brewing Company, 20 124 F.3d 137 (2nd Cir. 1997)................................................................................................. 19 21 Grotrian, Helfferich, Schulz Th. Steinweg, Nachf. v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 1975)................................................................................................. 12 22 Holiday Inns, Inc. v. Holiday Out in America, 23 481 F.2d 445 (5th Cir. 1973).................................................................................................. 10 24 Lebow Bros. Co. v. Lebole Euroconf S.p.A., 503 F. Supp. 209 (E.D. Pa. 1980) .......................................................................................... 12 25 Levi Strauss & Co. v. Blue Bell, Inc., 26 778 F.2d 1352 (9th Cir. 1985).......................................................................................... 19, 20 27 Mattel, Inc. v. Azrak-Hamway International, Inc., 724 F.2d 357 (2d Cir. 1983).....................................................................................................9 28
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1 Miss World (UK) Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445 (9th Cir. 1988)............................................................................................ 7, 26 2 Northern California Power Agency v. Grace Geothermal Corp., 3 469 U.S. 1306 (1984) ............................................................................................................ 25 4 Pignons S.A. de Mecanique de Precision v. Polaroid, 498 F. Supp. 805 (D.C. Mass. 1980) ...................................................................................... 23 5 Plough, Inc. v. Kreis Laboratories, 6 314 F.2d 635 (9th Cir. 1963).................................................................................................. 12 7 Postx Corp. v. docSpace Co., Inc., 80 F. Supp. 2d 1056 (N.D. Cal. 1999).............................................................................. 25, 26 8 Rodeo Collection, Ltd. v. West Seventh, 9 812 F.2d 1215 (9th Cir. 1987).................................................................................. 7, 8, 25, 26 10 Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855 (C.C.P.A. 1962) ............................................................................................... 20 11 Shen Mfg. Co., Inc. v. Ritz Holte, Ltd., 12 393 F.3d 1238 (Fed. Cir. 2004).............................................................................................. 10

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13 Sierra On-Line, Inc. v. Phoenix Software, Inc., 739 F.2d 1415 (9th Cir. 1984)................................................................................................ 26 14 Spraying Systems Co. v. Delavan, Inc., 15 975 F.2d 387 (7th Cir. 1992).................................................................................................. 20 16 Starbucks Corp. v. Lundberg, No. Civ. 02-948, 2005 WL. 3183858 (D. Or. 2005).......................................................................................... 23 17 Surfvivor Media, Inc. v. Survivor Productions, 18 406 F.3d 625 (9th Cir. 2005).................................................................................................. 19 19 U.S. v. Oregon State Medical Society, 343 U.S. 326 (1952) ................................................................................................................ 6 20 Webb v. Missouric Pacific Railroad Co., 21 98 F.3d 1067 (8th Cir. 1996)....................................................................................................6 22 Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005).................................................................................................. 19 23 Yurman Design, Inc. v. PAJ, Inc., 24 262 F.3d 101 (2d Cir. 2001)............................................................................................. 13, 14 25 Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F. Supp. 670 (S.D.N.Y. 1963) ......................................................................................... 20 26 27 28
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Statutes Fed R. Civ. P. 30(b)(6) .................................................................................................................. 5 Rule 30(b)(6) ...............................................................................................................................6

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I. PRELIMINARY STATEMENT REGARDING HELIO'S OBSTRUCTION OF DISCOVERY As addressed in Palm's separate March 9, 2007 motion to compel (Docket no. 48), Helio

4 refused to present its key 30(b)(6) witness, Jessica Weeks, to testify for more than 1.5 hours and 5 walked out of the deposition without prior notice. Helio seeks to rely upon Ms. Weeks' 6 declaration to support its motion, but deliberately foreclosed full examination of this witness. 7 Although Palm believes the discovery and consumer surveys conducted to date conclusively show 8 that Helio's mark has no secondary meaning and that there is no likelihood of confusion, Palm is 9 submitting this brief without the benefit of complete discovery, and respectfully requests leave 10 from the Court to submit a supplemental brief following the hearing on Palm's motion to compel. 11 12 II. INTRODUCTION AND SUMMARY In this case for trademark infringement, Helio failed to establish the single most important

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14 element of its claim--likelihood of consumer confusion between Palm's and Helio's 15 advertisements. Despite having had more than three months to do so, Helio declined to present 16 any surveys to support its claim of consumer confusion. Palm, on the other hand, at great expense, 17 commissioned two separate studies that conclusively establish the following: 18 · 19 20 21 22 23 24 · · There is absolutely no evidence of forward or reverse confusion. Of the more than 800 survey respondents from Palm's and Helio's respective target markets, not a single person associated Palm's products or advertisements with Helio, or associated Helio's products or advertisements with Palm. This is not a case where Helio has scant evidence to support its claims of confusion; this is a case where Helio has no evidence to support its claim o f confusion. Helio 's "Don't call it a phone" slogan has no secondary meaning, with only a 13% consumer recognition rate. Helio 's "Don't call us a phone company" slogan has no secondary meaning, with only a 17% consumer recognition rate. Instead of present ing the most basic evidence, such as a consumer survey, Helio opens its

25 moving papers with an unsupported attack on one of Palm's witnesses and the misguided 26 assumption that this Court's preliminary findings from December's TRO hearing excuse Helio 27 from further developing its claims. But Helio can no longer hide behind a claim of urgency when 28 failing to meet its burden of proof, especially given that Helio has completed all of its discovery.
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1 The evidence developed over the past three months demonstrates that Helio has no case for 2 trademark infringement, and certainly no basis for injunctive relief. 3 In a case for trademark infringement, the single-most important question for this Court to

4 resolve is whether consumers are likely to be confused by Palm's advertisements; fortunately, 5 Helio itself already answered this question more than one year ago. Through its own admission, 6 Helio is using the phrase, "Don't call it a phone," to convey the message that "A Helio is so much 7 more than a phone.", which Helio admits is "the most important thing we can say." In December 8 2005, however -- one year before filing for the TRO against Palm -- both Helio and its advertising 9 agency became aware of a new tagline, "It's so much more than a phone," that was being used by 10 a Helio competitor, ESPN Mobile -- a company that was selling branded phones and phone 11 service. Despite the word-for-word similarity of this slogan and Helio's intended message, Helio 12 concluded that its own tagline, "Don't call it a phone" was not similar to the ESPN slogan.

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13 During the same time period, Helio also became aware of a slogan being used by Verizon 14 Wireless, "You can do so much more with your phone." Despite this explicit knowledge of two 15 virtually identical slogans, Helio concluded that consumers were not likely to be confused, and 16 Helio proceeded to launch its own advertising campaign. 17 In its TRO and preliminary injunction papers, in which Helio is trying to shut down Palm's

18 use of its theme line, Helio never disclosed to the Court its knowledge of the ESPN and Verizon 19 slogans, nor did Helio disclose its internal conclusion that the use of "Don't call it a phone" was 20 not likely to confuse consumers. Yet now, Helio comes before this Court and argues that Palm's 21 theme line, "Not just a cell phone. A Treo" is likely to confuse the public. This is hypocrisy at its 22 best. 23 Not only has Helio failed to present any evidence of consumer confusion, Helio's request

24 for a preliminary injunction should be denied because it is moot. Palm's advertising has run its 25 course. Palm has no intention of relaunching its campaign. Helio has presented no evidence of 26 lost sales, lost goodwill, or any type of tangible harm to its business, let alone any ongoing or 27 threatened harm. In short, there is nothing left of Helio's case that could not be addressed through 28
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1 mo netary damages or permanent injunctive relief at the time of trial. On this basis alone, the 2 Court should deny the motion. 3 This is a case that should never have been brought, and certainly a case that Helio should

4 have dismissed with prejudice after the evidence overwhelmingly established a lack of consumer 5 confusion and a lack of any good-faith basis for this litigation to continue. 6 7 8 9 A. III. STATEMENT OF FACTS Development of the Palm Campaign Helio 's moving papers would lead the Court to believe that Palm attempted to mimic

10 Helio's advertising campaign. This is not so. The development of Palm's "Not Just a Cell Phone. 11 A Treo." campaign (hereinafter the "Campaign"), began over two years ago, in January 2005, 12 before Helio even existed. (Decl. of Scott Hancock, ¶ 2.) At that time, Palm's advertising agency,

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13 AKQA, developed the theme line, "Not a Cell Phone. A Treo" and presented it to Palm. (Id.) 14 AKQA created fourteen advertising mockups at that time, each of which contained the theme line 15 "Not a Cell Phone. A Treo." (Id., Ex. A.) 16 In early 2006, Palm was completing the development of a new smartphone, the Treo 680,

17 and AKQA began developing a promotional campaign for the product. (Patterson Decl., ¶ 3; Colt 18 Depo., Ex. 2 - Hancock Depo., 17:1-5.) As early as April 21, 2006, before Helio launched its 19 "Don't call it a phone" campaign, AKQA delivered a creative brief to Palm, identifying "not a cell 20 phone. A Treo" as the single-most important element of the campaign. (Patterson Decl., ¶ 3, Ex. 21 A.) Palm considered "Not a Cell Phone. A Treo." along with other potential campaign lines 22 through May 2006 and the early summer. (Colt Dec., Ex. 1 - Patterson Depo. 32:7-33:8, 52:5-19, 23 96:23-97:2.) 24 The Treo 680 does not have an external antenna, and Palm was concerned that if it used the

25 line "Not a cell phone. A Treo.," some consumers might actually think that the Treo 680 was in 26 fact not a cell phone. (Colt Dec., Ex. 2 - Hancock Depo., 27:25-28:11; Hancock Decl., ¶ 3.) By 27 including the word "just" in the theme line, Palm believed that the advertising would convey the 28
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1 idea that the Treo 680 was a cell phone that also had additional features, which was the intended 2 goal of the campaign. (Hancock Decl., ¶ 3.) 3 In late July, 2006, after the Treo Campaign had been developed, the Palm team at AKQA

4 became aware of Helio's "Don't Call it a Phone" campaign. (Patterson Decl., ¶ 4.) In its brief, 5 Helio mischaracterizes the evidence by arguing that AKQA became aware of the Helio campaign 6 "as early as October 2005." (Motion, 5:20.) The email referenced by Helio, however, makes no 7 mention of Helio's "Don't call it a phone" slogan, and as Helio is well aware, it had not even used 8 the slogan as of that date. 9 Plaintiff alleges that Scott Hancock, Palm's Director of Marketing, misled the court by

10 stating that Helio's slogan had never been discussed, considered or raised by Palm. (Motion, 5:1.) 11 Helio has misconstrued the facts. Mr. Hancock stated that "at no point during the development 12 of the Campaign" was Helio's slogan considered. (Hancock TRO Decl., ¶ 6.) By the time Palm

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13 learned of Helio's slogan in August 2006, Palm's Campaign had already been developed and was 14 nearly finalized; at that point, Palm was only considering whether to use the line "Not a cell 15 phone. A Treo." or the line "Not just a cell phone. A Treo." (Davis Decl., Ex. 2 - Hancock Depo., 16 58:11-19, 71:18-74:12, 77:21-80:2, 82:24-86:3, 100:10-101:10.) With its concerns about 17 consumers interpreting "Not a cell phone. A Treo" literally, Palm ultimately decided to include 18 the term "just" in the Campaign, such that the theme line became "Not Just a Cell Phone. A 19 Treo." (Hancock Decl., ¶ 3.) 20 Concerned that "Don't Call it a Phone" and "Not a Cell Phone. A Treo." might convey a

21 similar message -- namely that the product being advertised was not a phone -- AKQA notified 22 Palm of Helio's campaign on August 2, 2006. (Colt Dec., Ex. 1 - Patterson Depo., 42:22-44:10, 23 53:18-54:16; Patterson Decl., ¶ 4.) Already aware of Palm's concerns over the lack of an external 24 antenna on the Treo 680, AKQA brought the Helio tagline to Palm's attention, as it appeared that 25 Helio's tagline was conveying the message that Palm wanted to avoid, namely that a particular 26 device was not a phone. (Patterson Decl., ¶ 4.) 27 In September 2006, Palm publicly launched the Campaign, using the phrase "Not just a

28 mobile. A Treo." in Europe, and on October 12, 2006, Palm publicly launched the U.S. Campaign
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1 at the Digital Life electronics expo in New York City, a significant electronics-industry event. 2 (Hancock Decl., ¶ 4.) Palm displayed a large banner over its exhibition booth with the theme line, 3 "Not Just a Cell Phone. A Treo." (Id., Ex. B.) Industry journalists covering the event, such as 4 James Miller, acknowledged Palm's new advertising campaign and wrote publicly about the 5 association of the theme line with Palm's new Treo 680 smartphone. (Id., Ex. C.) Mr. Miller 6 wrote in a publicly-available online article dated October 12, 2006 that, "To support the roll out of 7 the Treo 680, Palm is going to roll out $25 million advertising and marketing campaign. The main 8 theme line will be `Not Just a Cell Phone. A Treo.'" (Id.) 9 B. 10 Notice Provided to Palm and Helio's Alleged First Knowledge of the Campaign Helio provided no notice of its claims until December 19, 2006, when plaintiff's complaint

11 and application for a temporary restraining order were served on Palm's in-house counsel. 12 (Hancock Decl., ¶ 8.) Helio made no contact with anyone at Palm regarding the Campaign prior

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13 to that time. (Id.) In its moving papers and in repeated representations to the Court, Helio stated 14 that it first became aware of Palm's campaign on December 12, 2006. Yet a recently served 15 privilege log reveals that counsel sent an email to Helio on November 18, 2006, nearly a month 16 before the date claimed in Helio's papers, regarding "Palm/Helio litigation." (Colt Decl., ¶ 9, 17 Ex. 6, p. 24.) 18 C. 19 Conduct of Discovery In its January 8, 2007 order denying Helio's application for a TRO, this Court permitted

20 both parties to take two depositions. Plaint iff noticed the depositions of Scott Hancock and 21 AKQA, Palm's former advertising agency. Palm noticed the deposit ion of Helio under Rule 22 30(b)(6). (Id., ¶ 6, 8.) In response to this notice, Helio designated three individuals to testify on 23 its behalf. (Id.) Helio designated Michael Zemetra to testify about "financial information," Jae 24 Lee to testify about "products," and Jessica Weeks to testify about "marketing." (Id.) The 25 depositions of Messrs. Zemetra and Lee were taken on the same day and completed in five and a 26 half hours total. (Id.) The deposition of Ms. Weeks began on March 9, 2007. (Id.) After 27 approximately one and a half hours of testimony, Helio's counsel and the witness walked out of 28 the deposition, contending that Palm was only entitled to seven hours of deposition time for all
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1 three of Helio's Rule 30(b)(6) designees. (Id.) That same day, Palm filed an Emergency Motion 2 for to Compel Deposit ion and Sanctions. (Docket no. 48.) 3 D. 4 Expert Discovery To test Helio's claims of consumer confusion, Palm commissioned two separate consumer

5 surveys from Marylander Marketing Research, Inc., a firm with more than 30 years of experience 6 in the design and analysis of consumer surveys. Palm spent approximately $80,000 on survey fees 7 alone. As detailed in the two Marylander declarations, the surveys tested a pool of more than 8 1,000 respondents and established that there is absolutely no evidence of confusion between Palm 9 and Helio's advertisements, nor any evidence of secondary meaning for Helio's slogans. 10 11 12 A. IV. ARGUMENT This Motion is Moot Because Palm is No Longer Running the Campaign. Preliminarily, the Court should deny plaintiff's motion for a preliminary injunction because

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14 it is moot; plaintiff has made no showing of a threat of continuing harm. Webb v. Missouri Pacific 15 Railroad Co., 98 F.3d 1067 (8th Cir. 1996) (quoting U.S. v. Oregon State Medical Society, 343 16 U.S. 326, 333 (1952) (injunct ive relief is inappropriate unless there is "a real threat of [a] future 17 violation [of the law] or a contemporary violation of a nature likely to continue to recur.") Aside 18 from two print publications that are already slated for publication at the end of March with cover 19 dates of April 2007, the Campaign has run its course. Palm has no plans to publish any further 20 print advertisements. (Hancock Decl., ¶ 9.) There is no outdoor advertising that is still being 21 displayed at the request of Palm, and Palm has no plans to purchase any additional outdoor 22 advertising. (Id.) While Palm acknowledges that some outdoor advertisements may have 23 remained on display because the owners of the property did not take them down, all of Palm's 24 leases have expired and it is up to the property owners to remove the displays and replace them 25 with new ads. (Id.) There is no online advertising being displayed at Palm's request, and Palm 26 has no plans to purchase any additional online advertising. (Id.) 27 Not only does Palm have no intention of running any further advertising, the parties and

28 the Court are in the present position of debat ing over a campaign that has run its course because of
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1 plaint iff's delay. In its opposition to plaintiff's application for a TRO, Palm proposed a 2 preliminary injunction hearing on January 25, 2007. (Opp. to TRO, p. 13.) The Court set the 3 hearing date for March 6, 2007. (Docket no. 23.) At Helio's request, Palm stipulated to extending 4 the hearing date and the Court set it for April 3, 2007. (Docket no. 29); (Colt Decl., ¶ 10.) The 5 hearing date was later extended only one week, to April 10, to accommodate Palm's counsel's trial 6 schedule in another matter. (Docket no. 32.) Helio did not object to moving the hearing date, nor 7 did Helio ask Palm to stipulate that the continuance was not to Helio's prejudice. Yet now, 8 plaintiff asks this Court to enjoin Palm from continuing to run a campaign Palm has no intention 9 of running. Without an ongoing or immediate threat of harm, a preliminary injunction is 10 unjustified. 11 B. 12 Plaint iff Cannot Meet its High Burden to Establish the Need for a Preliminary Injunction Mootness aside, injunctive relief is an extraordinary remedy that imposes a high burden of

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13 proof on the moving party. Here, Helio cannot obtain a preliminary injunction because it has not 14 established either (1) a combination of probable success on the merits and the possibility of 15 irreparable harm, or (2) that serious questions are raised and the balance of hardships tips sharply 16 in plaintiff's favor. Miss World (UK) Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1448 17 (9th Cir. 1988); Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987). 18 Failure to make such a showing warrants denial of a motion for preliminary injunct ion. Miss 19 World, 856 F.2d at 1448; Rodeo Collection, 812 F.2d at 1217. 20 21 22 1. Helio Cannot Obtain Injunctive Relief Because It Has Not Established a Likelihood of Success on the Merits.

In a trademark infringement case, the moving party cannot establish probable success on

23 the merits without establishing the fundamental element of likelihood of consumer confusion. 24 Rodeo Collection, 812 F.2d at 1220 (affirming denial of motion for preliminary injunction after 25 moving party failed to produce evidence of actual confusion and wrongful intent). To analyze the 26 likelihood of confusion in a trademark infringement case, courts in the Ninth Circuit employ the 27 eight-factor test set forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). 28 While Helio argues that the Court initially stated the issue was "close," the discovery obtained
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1 over the past three months now demonstrates that plaintiff has no likelihood of success on the 2 merits of its claims. 3 4 (a) Factor One: There is No Evidence of Actual Confusion. First and foremost, despite now having had more than three months to develop and

5 investigate this case, Helio has provided the Court with abso lutely no evidence of actual consumer 6 confusion--not a single survey, not a single email, not a single declaration from one of its 7 salespeople, not a single expert declaration, and not even a single offhand comment by one of the 8 more than 200,000 MySpace "friends" who actively post comments on Helio's homepage. As the 9 Sleekcraft court noted, evidence of actual confusio n can be persuasive proof of likely future 10 confusion. Id., 599 F.2d at 352. Instead of presenting this Court with evidence of confusio n, 11 plaintiff instead relies heavily on case law stating that the lack of such evidence--by itself-- is not 12 dispositive. (See Motion, p. 24-25.) But plaintiff fails to note that the Court may weigh this factor

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13 heavily when the circumstances indicate such evidence should have been available. Sleekcraft, 14 599 F.2d at 352. This is precisely the case here, as Helio has now had more than three months to 15 develop its case and, at a bare minimum, conduct a survey to test actual consumer confusion. 16 17 18 (i) Helio Failed to Conduct a Consumer Survey to Demonstrate Likelihood of Confusion

In a trademark infringement case, it is almost always essential for the plaintiff to introduce

19 survey evidence to support the allegation of a likelihood of confusion. Braun, Inc. v. Dynamics 20 Corp. of America, 975 F.2d 815, 828 (Fed. Cir. 1992) ("failure to proffer survey evidence, 21 empirical studies, or disinterested testimony from consumers or members of the trade as to this 22 issue, suggests that the public is not likely to be confused with respect to source"); Mattel, Inc. v. 23 Azrak-Hamway International, Inc., 724 F.2d 357, 361 (2d Cir. 1983). Helio certainly could have 24 conducted a survey in the time since the TRO hearing, and Helio has set forth no justification for 25 its failure to provide this most basic evidence for the Court to consider. 26 27 28
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(ii)

Palm Commissioned a Consumer Survey That Demonstrates That There Is No Consumer Confusion

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1

Palm did not sit idle for the past three months, but instead commissioned two separate

2 consumer surveys to test Helio's claims of confusion at a cost of nearly $80,000 in survey fees 3 alone. The results are unmistakable and demonstrate that there is no merit to Helio's case. The 4 survey results are set forth in detail in the attached Marylander declarations, and reveal the 5 following: 6· 7 8· 9 · 10 11 · 12 To test forward and reverse confusion, Palm tested a panel of 800 respondents, who viewed one of two Helio print advertisements, or one of two Palm advertisements. The panel tested both Helio's target market of 18-34 year olds and Palm's target market of 2544 year olds. After viewing each advertisement, respondents were asked "Who do you think puts out or offers the product(s) and/or service(s) discussed in this ad?" Not a single respondent ident ified Palm or Treo in connection with the Helio ads, nor did a single respondent identify Helio in connection with the Palm ads. Respondents were also asked to identify any other brands put out by the same company ment ioned in the ad, or any other brands that are connected or affiliated with the company, thus giving them the opportunity to identify any type of relationship between Palm and Helio. Not a single respondent linked Palm and Helio.

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13 ·

14 (Marylander Decl.- Consumer Confusion, ¶ 16-53.) As the Court held in IDV North America, Inc. 15 v. S&M Brands, Inc., (E.D. Va. 1998), a survey that showed only a 2.4% confusion rate, "is 16 persuasive evidence that there is very little likelihood of confusion between the marks here at 17 issue." Here, there is a 0% confusion rate, clearly establishing the speculative nature of Helio's 18 claim of likelihood of confusion. 19 20 (iii) Helio Failed to Present any Other Evidence of Actual Confusion

Given that Palm's Campaign was introduced in the U.S. in October 2006, and plaintiff

21 alleges that confusion already exists, one would expect plaintiff to present at least some evidence 22 of actual confusion from a consumer, marketing expert, salesperson, store manager, phone 23 operator, customer service representative, advertising representative, or any other readily available 24 source. Plaintiff, for example, monitors emails received from consumers and comments posted on 25 YouTube (see e.g., Colt Dec., ¶¶ 11-12, Exs. 7 and 8), yet plaintiff cannot point to a single email 26 or comment demonstrating, or even suggesting, confusio n. Similarly, plaintiff boasts about the 27 over 200,000 "friends" it has on MySpace.com, but cannot cite to a single one of the over 13,400 28 comments posted on its MySpace page that indicates any type of confusion.
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1

The sole piece of evidence cited by plaintiff in support of the claim of actual confusion is

2 an article by William Lozito wherein he states "Palm has launched its Treo smartphone campaign 3 under the theme line `Not just a cell phone. A Treo.' I've noted that Helio is running a similar 4 campaign under the mantra `Don't call us a phone company.'" (Motion, p. 24.) This article, 5 demonstrates lack of confusio n, as Mr. Lozito was clearly able to differentiate between Palm and 6 Helio and determine that the two campaigns were different advertisements for different products. 7 The fact that Mr. Lozito commented that the campaigns are similar is irrelevant; the issue to be 8 tested is whether they are confusingly similar. Similar marks that are not likely to cause confusion 9 do not infringe. See e.g., Shen Mfg. Co., Inc. v. Ritz Holte, Ltd., 393 F.3d 1238 (Fed. Cir. 2004) 10 (finding Ritz bath towels and Putting on the Ritz shower curtains not confusingly similar); 11 Holiday Inns, Inc. v. Holiday Out in America, 481 F.2d 445 (5th Cir. 1973) (finding Holiday Inn 12 motels and campgrounds and Holiday Out trailer marks not confusingly similar); Claremont

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13 Polychemical Corp. v. Atlantic Powdered Metals, Inc., 470 F.2d 636 (C.C.P.A. 1972) (finding 14 Duragold bronze pigment and Evergold metal power not confusingly similar). 15 16 (b) Factor Two: Helio's and Palm's Marks are Not Similar.

The next factor for the Court to consider is the similarity of plaintiff's mark and Palm's

17 allegedly infringing mark. At the TRO hearing, the Court considered this factor to weigh in favor 18 of Helio. Evidence acquired during discovery, however, illustrates precisely how different the 19 marks are. Helio repeatedly misstates the facts by claiming that Palm's theme line is "Not just a 20 cell phone." The actual theme line is "Not just a cell phone. A Treo." The two sentences are 21 always presented together in Palm's Campaign, such that any consumer seeing the theme line 22 immediately knows that it refers to the Treo and not to any other product. (Hancock Decl., ¶ 5.) 23 Additionally, Helio mistakenly focuses on the words of the theme lines alone. The marks

24 cannot be evaluated in this type of vacuum; the Court must consider "the marks and names in their 25 entirety and as they appear in the marketplace. . . ." Alpha Industries, Inc. v. Alpha Steel Tube & 26 Shapes, Inc., 616 F.2d 440, 444 (9th Cir. 1980) (emphasis added). When evaluated as they 27 actually appear in the marketplace, the marks are unmistakably different. 28
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1

"Similarit y of the marks is tested on three levels: sight, sound, and meaning." Sleekcraft,

2 599 F.2d at 351. Here, the marks differ significantly on all three levels. First, with respect to 3 sight, plaintiff's marks are always used with the term "Helio," the distinctive Helio flame, and the 4 predominant use of the color blue. (See e.g., Weeks Decl., ¶ 9, Ex. B; Colt Decl., ¶ 13, Ex. 9.) In 5 some cases, the Helio flame is blue and is seen on a white background; in other cases the flame is 6 white and is seen on a blue background. (Colt Decl., ¶ Ex. 5 - Weeks Depo., 70:13-71:9.) The 7 color blue is prevalent in Helio's advertising, including "Blue Helio" cocktail drinks, "Blue 8 Rooms" at events, blue backgrounds in clubs, and blue uniforms for store personnel. (Id., 40:7-22, 9 70:3-71:9, Exs. 1018, 1019, 1022 p. 76-81.) Documents produced by Deutsch, the advertising 10 agency that developed plaintiff's campaign, reference the importance of blue in the campaign and 11 establish a particular shade of blue that is to be used for all Helio advertising. (Id.). Additionally, 12 plaintiff's advertisements typically feature a picture of a Helio handset, which bears no

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13 resemblance to the Treo. (See e.g., Colt Decl., Ex. ¶ 13, Ex. 9.) 14 In contrast, every Palm advertisement contains the line: "Not Just a Cell Phone. A Treo."

15 (emphasis added). The advertisements feature a bright orange background as the predominant 16 visual element. (Hancock Decl., ¶ 5.) Ms. Weeks, Helio's 30(b)(6) witness on marketing, 17 admitted that Helio has never used the color orange as anything aside from an incidental color in 18 its "Don't call it a phone" "Don't call us a phone company" campaign. (Colt Decl., Ex. 5 - Weeks 19 Depo., 46:13-25.) Palm's advertisements also include the Palm logo, which is a simple circle 20 around the word "Palm," again featuring the color orange. (Hancock Decl., ¶ 5.) Finally, except 21 in certain small uses on the internet where space is limited, Palm's advertisements contain a 22 picture of the Treo itself, which bears no resemblance to Helio's devices. (Id.) A simple side-by23 side comparison of the advertisements demonstrates the highly distinctive features of each 24 campaign and the lack of potential consumer confusion. (Colt Decl., ¶ 14, Ex. 10.) 25 With respect to sound, Helio's marks are very different from Palm's. Helio's campaign

26 tries to emulate a fun, party atmosphere, whereas Palm's advertising is simple and businesslike. 27 Helio admits that it is targeting young, style-conscious, hip consumers, and the sound of its 28 advertisements reinforces this focus. (See Colt Decl., Ex. 5 - Weeks Depo., 24:18-25:10, Exs.
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1 1022, 1016.) For example, Helio drafted scripts for radio DJs to read on the air that clearly appeal 2 to the teen market and would be largely indecipherable by anyone over the age of 25. (See e.g., 3 Colt Decl., ¶ 15, Ex. 11) ("They gave me a jankey phone that looks like a butt.") Helio's radio 4 advertisements reinforce the young, hipster style of the Helio campaign: 5 6 Now let me give you all a little piece of advice. You gotta taste that milk before you buy the cow. And trust me, you are gonna love the sweet cream that flows from this Helio-heiffer

7 (Id., ¶ 16, Ex. 12; Id., ¶ 18, Ex. 14- CLICK HERE TO LISTEN.) Another radio ad, entitled 8 "boy band", featured the lyrics: 9 10 Girl you got me all tied down. Now I never get around.....I got Google Maps in my pants (Helio!) In my pants. In my pants (GPS!)

11 (Id., ¶ 17, Ex. 13; Id., ¶ 18, Ex. 14: CLICK HERE TO LISTEN.) Similarly, Helio's television 12 ads feature a hip, youth-oriented style that reinforces the idea that a Helio should never be called a

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13 phone. (Weeks Decl., Ex. C). In stark contrast to this marketing style, Palm's advertisements do 14 not contain youth jargon, amusing radio spots, or anything aside from a straightforward 15 presentation of the Treo's features and capabilities. 16 Nor do the two lines sound similar to the ear. "Don't call it a phone" and "Not Just a Cell

17 Phone. A Treo." do not phonetically sound similar unlike, for example, "Dramamine' and 18 "Bonamine." See G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385 (7th Cir. 1959); see also 19 Grotrian, Helfferich, Schulz Th. Steinweg, Nachf. v. Steinway & Sons, 523 F.2d 1331 (2d Cir. 20 1975) (finding Steinway and Steinweg pianos to be confusingly similar phonetically); cf. Plough, 21 Inc. v. Kreis Laboratories, 314 F.2d 635 (9th Cir. 1963) (finding Coppertan and Copa Tan were 22 not phonetically similar to Coca Tan); Lebow Bros. Co. v. Lebole Euroconf S.p.A., 503 F. Supp. 23 209 (E.D. Pa. 1980) (finding Lebow and Lebole were not phonetically similar). Plaintiff does not 24 present any testimony from a marketing expert, branding expert, or linguist establishing that these 25 advertisements look or sound the same. 26 Finally, the parties' campaigns are different in meaning. Plaintiff's slogans use the phrases

27 "Don't call it a phone" and "Don't call us a phone company." The statements are intended to 28 disassociate Helio 's products from phones or phone companies. Consumers are specifically told
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1 not to call Helio devices phones. Indeed, Helio admits that one of the central themes of its 2 advertising and business model is that calling a Helio handset a phone is a social faux pas. (Colt 3 Dec., Ex. 5 - Weeks Depo., 22:16-24, 28:19-29:24.) Helio reinforces this mantra through a 4 number of means, including posting comments on YouTube where it directly tells viewers that 5 referring to its devices as phones is a faux pas, warning Helio sales representatives, street team 6 members and "brand masters" not to refer to the devices as phones, and instructing radio DJs not 7 to call the devices phones. (Id., 21:25-22:17.) Helio is so concerned about the use of the word 8 "phone" in association with its products that it contacted a radio DJ who inadvertently referred to 9 his device as a "Helio phone" and specifically instructed him to refer to the unit as a "device." 10 (Colt Dec., ¶ 19, Ex. 15.) Helio's advertising agency then sent a follow-up email to MTV to make 11 sure that no one referred to any of the Helio devices as "phones." (Id.) 12 In stark contrast, Palm's theme line is intended to associate the Treo 680 with a cell phone

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13 and then inform the consumer that the Treo offers additional features. Palm's campaign 14 specifically refers to the Treo as a phone, a statement that would be anathema to Helio. Even if 15 Helio had evidence that the parties' lines convey the same idea, namely that their products are 16 different from "a phone," plaintiff would not be entitled to relief because only a mark, not an idea, 17 is protectible. See Dastar Corp. v. Twentieth Century Fox File Corp., 539 U.S. 23, 37 (2003) 18 (Lanham Act does not protect originality or creativity); Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 19 101, 115-16 (2d Cir. 2001). 20 In its brief, plaintiff argues that marks need not be identical in order to create confusion.

21 (See Motion, p. 17.) While true, the fact remains that the marks must be similar in sight, sound, 22 and meaning for there to be a likelihood of confusion. In each of the cases cited by plaintiff, the 23 court found that the terms or phrases at issue were similar in sight, sound, and/or meaning; the 24 analysis was not whether the marks were in fact identical. Following the same analysis in this 25 case, there is no likelihood of consumer confusion. 26 Indeed, plaintiff introduces a red herring by claiming that Palm has "admitted" to the

27 similarity of the marks; the allegation that AKQA thought the lines were "similar" is a gross 28 misstatement of the evidence. As discussed above, when AKQA learned of Helio's campaign, it
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1 believed that the Helio slogan conveyed the idea that a Helio was not a phone, and that the phrase 2 "Not a Cell Phone. A Treo." conveyed the idea that the Treo is not a phone, which was not a 3 message that Palm wanted to communicate, given the concern about the lack of antenna on the 4 Treo 680. Palm had been debating the theme line for months, and eventually chose the phrase 5 "Not just a cell phone. A Treo." because that theme line accurately conveyed the message that (1) 6 a Treo was a cell phone and (2) it also had additional features. Helio's claim of "similarity" is 7 meaningless. 8 Indeed, it would appear that Helio is attempting to claim a monopoly over the idea or

9 message behind "Don't call it a phone.", yet Helio 's own actions illustrate the hypocrisy of this 10 position. Helio has repeatedly admitted that the single most important message it intends to 11 convey through the use of "Don't call it a phone." is that "A Helio is so much more than a phone." 12 (Colt Decl., Ex. 5 - Weeks Depo., 29:25-30:3, Ex. 1016.) In December 2005, months before

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13 launching its campaign, Helio became aware of a new slogan being used by ESPN Mobile, "It's so 14 much more than a phone." (Id., Exs. 1028-1029.) Obviously, this tagline is identical to the 15 message Helio is trying to convey. Yet Helio concluded that its own tagline was different from 16 the ESPN tagline, and at no time has anyone at Helio ever expressed any concern over the two 17 slogans. (Id., 116:15-117:18.) Similarly, Ms. Weeks admitted that Helio has never been 18 concerned that the Helio tagline was similar to the tagline for Verizon's VCast, "Your Phone Can 19 Do So Much More." (Id., 118:11-119:21.) Yet now, after concluding that "It's so much more 20 than a phone" and "Your Phone Can Do So Much More" are not similar to "Don't Call it a 21 Phone," Helio comes before this Court and argues that "Not just a cell phone. A Treo." is likely to 22 confuse consumers. Helio's hypocrisy should not be rewarded, especially in light of Helio's utter 23 lack of evidence of any consumer confusion and Palm's conclusive evidence of a lack of 24 confusion. 25 Finally, plaintiff argues that the Court must evaluate the strength of Palm's mark so as to

26 gauge whether there is reverse confusion. (Motion, p. 18.) Helio suggests that because Palm is a 27 larger company that Helio, there is "serious danger" that Helio will be overwhelmed by Palm's 28 advertising. The sheer scope of Helio's campaign belies this allegation. When Palm launched its
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1 Campaign, it was described as a $25 million campaign. In actuality, Palm conducted no television 2 or radio advertising, and ended up spending only $10 million on the campaign. (Colt Decl., Ex. 2 3 - Hancock Depo., 114:23-115:15.) In contrast, Helio spent over $40 million on marketing in 4 2006, approximately 80-90% of which was spent on its "Don't call it a phone" campaign. (Colt 5 Dec., Ex. 3, Zemetra Depo., 60:9-20.) Helio has boasted about nearly two billion online 6 impressions in 2006 and, as of mid-December 2006, had over 40.1 million page views online. 7 (Colt Decl., ¶¶ 20-21, Exs. 16-17.) Palm's holiday campaign could hardly overwhelm Helio's 8 massive advertising bombardment over the last ten months. 9 Helio's arguments regarding reverse confusion are pure speculation unsupported by any

10 evidence and wholly contradicted by the survey evidence obtained by Palm. If Helio wanted to 11 make a good-faith claim of reverse confusion, it could have conducted a consumer survey. It did 12 not, and the Marylander survey establishes that there is no evidence of reverse confusion. Helio's

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13 slogans differ greatly from Palm's theme line in sight, sound, and meaning, and Helio has 14 presented no credible evidence to establish a likelihood of consumer confusion. 15 16 17 18 19 20 21 22 23 24 25 26 27 28 (c) Factor Three: There is No Evidence that Palm Intended to Copy Helio's Campaign.

Plaint iff has fabricated the story that Palm deliberately chose to use "Not Just a Cell Phone. A Treo." because it was similar to plaintiff's campaign. In actuality, the record is clear that, if anything, Palm chose its theme line to make certain that it conveyed a different message than Helio's. The evidence plaintiff "uncovered" during discovery establishes that AKQA first developed the theme line "Not a Cell Phone. A Treo." in early 2005, well over a year before plaintiff launched its campaign. (Hancock Decl., ¶2, Ex. A.) As early as April 21, 2006, before Helio launched its "Don't call it a phone" campaign, AKQA delivered a creative brief, identifying "not a cell phone. A Treo" as the potential theme of the campaign. (Patterson Decl., ¶ 3, Ex. A.) Palm considered "Not a Cell Phone. A Treo." along with other potential campaign lines through May 2006 and the early summer. (Colt Decl., Ex. 1 - Patterson Depo. 32:7-33:8, 52:5-19, 96:2397:2.) By June 2006, the campaign had been developed, but Palm was still considering whether to

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1 use the line "Not a cell phone. A Treo." or the line "Not just a cell phone. A Treo." (Colt Decl., 2 Ex. 2 - Hancock Depo., 27:25-28:11; Hancock Decl., ¶ 3.) As discussed above, the Treo 680 does 3 not include an external antenna, and Palm was concerned that if it used the line "Not a cell phone. 4 A Treo.," some consumers might actually think that the Treo 680 was in fact not a cell phone. 5 (Colt Decl., Ex. 2 - Hancock Depo., 27:25-28:11; Hancock Decl., ¶ 3.) By including the word 6 "just" in the theme line, Palm believed that the advertising would convey the idea that the Treo 7 680 was a cell phone that also had additional features, the intended goal of the campaign. (Colt 8 Decl., Ex. 2 - Hancock Depo., 27:25-28:11; Hancock Decl., ¶ 3.) 9 The Palm team at AKQA did not become aware of plaintiff's "Don't Call it a Phone"

10 campaign until July 2006. (Patterson Decl., ¶ 4.) Plaintiff cites to several documents produced 11 during discovery and claims that these documents establish that Ms. Patterson's testimony that she 12 learned of Helio's campaign in July 2006 is incorrect. (Motion, p. 5.) They do not. First, plaintiff

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13 cites to an email dated October 31, 2005 (AKQA 5415). Plaintiff did not launch its "Don't call it 14 a phone campaign" until May 2006, and this email obviously did not reference the mark in 15 question. Plaintiff also cites to emails dated July 26, 2006, August 2006 and November 2006, and 16 an undated email, in which the AKQA team referenced Helio's retail stores and partnership with 17 MySpace and received industry news updates featuring articles about Helio. (AKQA 5220; Davis 18 Decl. Exs. 16-18 and Ex. 23; AKQA 5416.) Yet, plaint iff fails to explain how these constitute 19 evidence of AKQA's knowledge of Helio's campaign before July 2006. Next, plaintiff cites to an 20 email dated June 27, 2006 (AKQA 5419). That AKQA referenced plaintiff in an email just days 21 before July 2006 does not establish that Ms. Patterson's testimony was wrong; at most, her 22 recollection was simply off by a matter of days. Finally, plaintiff cites to industry articles dated 23 May 2006, April 2006, and June 16, 2006 (Davis Decl., Exs. 19-21), yet fails to show that anyone 24 at Palm or AKQA read these articles before late June or early July 2006. In short, Helio has 25 presented no credible evidence that AKQA was aware of Helio's campaign prior to late June or 26 early July, 2006. 27 Plaintiff further alleges that AKQA was "so uncomfortable" with Palm's use of the

28 "confusingly similar slogan" that it developed other options to the "Not Just a Cell Phone. A
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1 Treo." theme line. (Motion, p. 22.) This misconstrues the testimony of AKQA. After learning of 2 plaintiff's campaign, AKQA notified Palm because it was concerned that Palm's "Not a Cell 3 Phone. A Treo." theme line might convey a similar message as plaintiff's campaign, namely that 4 that the Treo 680 was not a phone. (Colt Decl., Ex. 1 - Patterson Depo., 42:22-44:10, 53:185 54:16; Patterson Decl., ¶ 4.) Helio presents no evidence of ill-intent by Palm. 6 Plaintiff also implies that Palm selected marketing channels based on Helio's campaign.

7 In her declaration supporting plaintiff's application for a TRO, Ms. Weeks testified that Palm ran 8 an advertisement featuring "Not Just a Cell Phone. A Treo." in Entertainment Weekly just one 9 week after a Helio advertisement appeared in the same magazine. Magazines, however, require 10 several weeks of lead time to contract to run an advertisement, and it would have been impossible 11 for Palm to observe a Helio advertisement, enter into a contract with Entertainment Weekly, 12 provide advertising copy, and somehow manage to have the ads appear in the very next issue.

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13 (Hancock Decl., ¶ 7.) Indeed, Palm placed the order for the ad on September 26, 2006. (Id.) 14 As alleged evidence of intent, plaintiff further claims that Palm decided to focus on

15 partnering with "passion brands" after plaintiff had allegedly made such partnerships a centerpiece 16 of its campaign. (Motion, p. 22.) The "passion brands" plaintiff references include Yahoo, 17 Google, Orbitz, Fandango, and eBay. (Colt Decl., Ex. 1 - Patterson Depo., 96:3-11.) These 18 companies are behemoths of the Internet with tremendous viewership and broad, global appeal. 19 They are not niche players and they are among the very first outlets any company would consider 20 for an advertising partnership. The mere fact that both Palm and plaintiff sought marketing 21 agreements with so me of the same leading companies does not establish that Palm intended to 22 copy plaint iff's advertising campaign. Moreover, plaintiff's citation to Ms. Patterson and Mr. 23 Hancock's deposition testimony is misleading. At no point did either witness state or imply that 24 plaintiff's partnerships had any bearing on Palm's choice of "passion brands." (See Colt Decl., 25 Ex. 1 - Patterson Depo., 34:9-35:24, 95:19-96:22, 110:5-111:20; id., Ex. 2 - Hancock Depo., 60:326 20, 62:25-63:4, 66:2-66:14.) Plaintiff points to a single document, claiming that it establishes that 27 AKQA looked at plaintiff's partnership models for its own partnerships (Motion, p. 22.), but does 28

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1 not cite to any testimony from AKQA establishing Helio's claimed interpretation of the 2 document.1 3 During the hearing on plaintiff's application for a TRO, the parties repeatedly discussed

4 Palm's partnership with the Onion. The Court evidently considered the Onion to be a non5 business oriented publication. Palm's market research and "MRI scores," a widely used measure 6 to profile the characteristics of a particular publication's readership, however, establish that the 7 Onion is popular with Palm's target audience of 25-44 year-old professionals. (Colt Decl., Ex. 2 8 Hancock Depo., 36:19-37:3.) Additionally, the Onion provides a website that is optimized for 9 mobile devices, and Palm chose to partner with the Onion for these two reasons. 10 Helio cannot ignore the simple facts. Palm and AKQA first developed the theme line "Not

11 a phone. A Treo." in January 2005, before Helio's existence. By the time Helio launched its 12 advertising, Palm had already largely developed its upcoming campaign and had preliminarily

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13 adopted the theme line "Not a cell phone. A Treo." The inclusion of the word "just" was intended 14 to make sure that consumers did not believe that the Treo 680 was not a cell phone. Simply stated, 15 Helio has presented no credible evidence that Palm intended to copy Helio 's slogan. 16 17 18 (d) Factor Four: Helio's "Don't Call it a Phone" and "Don't Call us a Phone Company" Marks are Weak.

Wit h regard to the strength of mark factor of the Sleekcraft test, plaintiff does not introduce

19 any new evidence to support its argument that its marks are strong, but instead relies on this 20 Court's preliminary findings in December that plaintiff's marks have been recognized and 21 associated with its products. The evidence that Helio presented at that hearing, however, has now 22 been discredited, and further evidence obtained during discovery establishes that plaintiff's marks 23 are most likely generic and, at most, descriptive. 24 Descriptive marks "`define a particular characteristic of the product in a way that does not

25 require any exercise of the imagination.'" Yellow Cab Co. of Sacramento v. Yellow Cab of Elk 26
1

27 referring to the deposition testimony of Ms. Patterson. Yet, Exhibit 18 to Ms. Patterson's deposition does not mention 28
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Plaintiff cites to Exhibit 18 to the Patterson declaration. No such declaration exists. Plaintiff is likely

looking at plaintiff's partnership models. (Patterson Depo., Ex. 18.)

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1 Grove, Inc., 419 F.3d 925, 927 (9th Cir. 2005) (quoting Surfvivor Media, Inc. v. Survivor 2 Productions, 406 F.3d 625, 632 (9th Cir. 2005)); Filipino Yellow Pages, Inc. v. Asian Journal 3 Publications, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). They describe "a product's features, 4 qualities or ingredients in ordinary language or describe[] the use to which a product is put." 5 Genesee Brewing Company, Inc. v. Stroh Brewing Company, 124 F.3d 137, 143 (2nd Cir. 1997) 6 (internal citations omitted). Descriptive marks will be protected only if there is a showing of 7 secondary meaning. Sleekcraft, 599 F.2d at 349. 8 Although likely generic, plaintiff's marks are descriptive at best because they say

9 something about the product's characteristics and do not require any exercise of the imagination to 10 convey Helio's central theme. The message plaintiff tried to convey with its "Don't call it a 11 phone" and "Don't call us a phone company" marks was that a Helio device was "so much more 12 than a phone." (Colt Dec., Ex. 5 - Weeks Depo., Ex. 1016.) Helio's own brand equity study

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13 confirms that this is the primary message conveyed to consumers. (Colt Decl., Ex. 5 - Week's 14 Depo., Ex. 1023.) In order to qualify for trademark protection, Helio must establish that "a 15 substantial part" of the buying audience attributes "Don't call it a phone." to a single source. Levi 16 Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354, (9th Cir. 1985). Helio itself has presented 17 no evidence of secondary meaning, and Palm's surveys establish that Helio's slogans have no 18 secondary meaning. 19 20 (i) Helio presented no evidence of secondary meaning

Plaint iff cites only a brand equity survey "showing 61% consumer recognition." (Motion,

21 p. 21.) This grossly misrepresents the survey results. Helio's survey revealed that when asked 22 "Do you recall ever seeing or hearing any advertising featuring" "Don't call it a phone," only 29% 23 of target consumers in target markets answered "yes." (Colt Decl., Ex. 5 - Weeks Depo., Ex. 24 1023, p. 26.) When those 29% were asked which company the slogan is for, 62% correctly 25 associated the slogan with plaintiff. (Id.) Thus, in reality, only 18% of those surveyed correctly 26 associated "Don't call it a phone" with Helio, not 61%, as plaintiff claims. (Colt Decl., Ex. 5 27 Weeks Depo., 99:20-100:8.) Plaintiff has had ample time to conduct a customized survey on the 28
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1 issue of secondary meaning, but has failed to do so. In contrast, Palm's survey has established that 2 Helio's slogans have no secondary meaning in the marketplace. 3 4 5 (ii) Palm's survey establishes that plaintiff's marks have no secondary meaning.

Palm commissioned a separate survey to test Helio's claim of secondary meaning, as set

6 forth in detail in the attached declaration of Howard Marylander with the following conclusions: 7· 8 9 10 11 12 The survey consisted of a test pool of 649 respondents in Helio's stated target market of 18-34 year olds. · Respondents were shown either the slogan "Don't call it a phone." or "Don't call us a phone company." along with two fictitious taglines and the taglines for Verizon Wireless ("Can you hear me now?") and Boost Mobile ("Where you at?"). Thus, respondents were exposed to five separate slogans as part of the study. · After accounting for noise (the percentage of respondents who attributed one of the fictitious taglines to a single source, the survey revealed "Don't call it a phone." has a secondary meaning of only 13% and "Don't call us a phone company." has a secondary meaning of only 17%. · In contrast, the Verizon tagline, "Can you hear me now?" has a secondary meaning of 65%. (Marylander Decl.-Secondary Meaning, ¶¶ 1-42.) As Mr. Marylander concludes, these figures are

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13 14

15 wholly insufficient to establish secondary meaning for either of Helio's slogans. See e.g., 16 Spraying Systems Co. v. Delavan, Inc. 975 F.2d 387, 394 (7th Cir. 1992) ("While a 50-percent 17 figure is regarded as clearly sufficient to establish secondary meaning, a figure in the thirties can 18 be considered only marginal"); Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 533 F. Supp. 75, 19 215 (11th Cir. 1983) (2.7% figure considered "de minimus"); (Zippo Mfg. Co. v. Rogers Imports, 20 Inc., 216 F. Supp. 670 (S.D.N.Y. 1963) (25% consumer recognition insuf