American Automobile Association of Northern California, Nevada & Utah et al v. General Motors LLC et al

Filing 101

Order by Judge Lucy H. Koh Denying in Part and Granting in Part 75 Motion for Summary Judgment.(lhklc1S, COURT STAFF) (Filed on 3/21/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE DIVISION

United States District Court
Northern District of California

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AMERICAN AUTOMOBILE
ASSOCIATION OF NORTHERN
CALIFORNIA, NEVADA & UTAH, et al.,

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Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND
GRANTING IN PART MOTION FOR
SUMMARY JUDGMENT

Plaintiffs,

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v.

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Re: Dkt. No. 75

GENERAL MOTORS LLC, et al.,

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Defendants.

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Plaintiffs American Automobile Association of Northern California, Nevada & Utah and

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its affiliate A3 Mobility LLC (“Plaintiffs” or “AAA”) bring the instant trademark infringement
lawsuit against Defendants General Motors LLC and its affiliate Maven Drive LLC (“Maven”)
(collectively, “Defendants” or “GM”). Before the Court is GM’s motion for summary judgment.
Having considered the submissions of the parties, the relevant law, and the record in this case, the
Court DENIES IN PART AND GRANTS IN PART GM’s motion for summary judgment.
I.

BACKGROUND
A. Factual Background

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This case concerns two competing car share services with similar names. On April 17,
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2017, AAA issued a press release announcing the launch of its “GIG” car share service. GM also

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developed a car share service called “MAVEN GIG,” which AAA asserts AAA did not learn

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about until May 3, 2017. See Opp’n at 1. Viewing the facts in the light most favorable to AAA, the

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Court discusses the two car share services below. The Court starts with AAA’s GIG car share

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service.

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1. AAA’s GIG Car Share Service

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In 2016, AAA created its subsidiary, A3 Mobility, to focus on a new business model
innovation for AAA. ECF No. 77-1 (“Haight Decl.”) ¶ 7; see also ECF No. 77-2 (“Bowler

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Decl.”), Ex. 1 (“Hetke Tr.”)1 at 16:19–25, 24:13–18. In September 2016, A3 Mobility began

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developing an idea for a car share service, and AAA drafted a business case to present to its

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executives that identified April 2017 as the launch date. Haight Decl. ¶ 8; Hetke Tr. at 46:6–18,

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53:19–54:3, 106:5–12; 138:17–23. AAA hired third-party advertising agency Muhtayzik Hoffer,

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and with Muhtayzik Hoffer’s collaboration, AAA settled on the name

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In. Go.” in January 2017. Haight Decl. ¶¶ 9–12; Hetke Tr. at 79:20–80:25. Soon after, AAA

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learned that

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AAA abandoned

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AAA’s Chief Innovation Officer, Mike Hetke, came up with during a January 27, 2017 meeting.

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Haight Decl. ¶¶ 13–15; Hetke Tr. at 80:1–25, 82:21–83:25, 85:6–25.

with the tagline “Get

was covered by a preexisting third party trademark application, and therefore
and proceeded with “GIG” (the acronym of “Get In. Go.”), a mark that

After receiving a clean trademark clearance search yielding no conflicting marks, AAA

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filed a trademark application for the “GIG” mark with the U.S. Patent and Trademark Office on

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February 3, 2017 (U.S. Trademark Application Serial No. 87323570). Haight Decl. ¶ 16; Hetke

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Tr. at 136:10–138:3. On February 24, 2017, AAA submitted a formal application to the City of

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Oakland as “Gig Car Share” for parking permits. Haight Decl. ¶ 17; see also Bowler Decl., Ex. 2.

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By March 2, 2017, AAA shared the GIG mark with event services vendor Daybreaker, LLC, and

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AAA cites to excerpts of the Hetke deposition transcript and attaches those excerpts as Exhibit 1
to the Bowler declaration. GM also cites to excerpts of the Hetke deposition transcript and attaches
those excerpts as Exhibit 47 to ECF No. 75-3 (“Adkisson Decl.”). For simplicity, the Court refers
only to the “Hetke Tr.” when referring to either, or both, exhibits.
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Daybreaker, LLC began planning the official GIG launch event and promoted the event through

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social media, posters, and direct email. Haight Decl. ¶¶ 18–19; see also Bowler Decl., Ex. 3

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(“Voges Tr.”) 2 at 63:8–65:22. By April 12, 2017, there were over 3,600 RSVPs for the GIG

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launch event. Haight Decl. ¶ 21; see also Bowler Decl., Exs. 4 & 5.
On April 17, 2017, AAA issued a formal press release regarding the GIG launch; launched

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the GIG website, www.gigcarshare.com; began social media advertising and street team/field

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marketing; and opened up a GIG early enrollment period that included a targeted e-mail campaign

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to sign up GIG users. Haight Decl. ¶¶ 22–23; Hetke Tr. at 138:17–140:14, 149:15–25; Voges Tr.

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at 31:19–33:12, 36:10–37:16, 40:14–25, 41:11–42:9: 90:21–91:3. AAA launched the GIG mobile

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phone application in app stores on April 17, 2017, and immediately began receiving hundreds of

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downloads. Haight Decl. ¶ 25. San Francisco-based public media outlet KQED aired a radio

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interview about GIG with AAA’s GIG Car Share President, Jason Haight. Id. ¶ 24; see also

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Bowler Decl., Exs. 6 & 7. Between April 17, 2017 and April 30, 2017, dozens of AAA employees

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drove GIG branded cars in public. Id. ¶ 26; see also Voges Tr. at 68:8–18. By April 28, 2017,

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there were over 7,000 RSVPs for the GIG launch event. Haight Decl. ¶ 27. When the GIG launch

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event was ultimately held on April 30, 2017, it was heavily branded with the GIG mark, and there

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were thousands of attendees. Id. ¶ 28; Voges Tr. at 66:20–22; 68:19–70:9.
Within one year of operation, GIG doubled in size from 250 to 500 cars and expanded to

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serve four cities, including Berkeley, Oakland, Alameda, and Albany. Haight Decl. ¶ 32. AAA

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publicly announced GIG’s expansion into Sacramento in 2019. Id. ¶ 34.

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2. GM’s MAVEN GIG Car Share Service
a. GM’s “Maven” Mark

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Maven is an affiliate of GM that provides vehicle-sharing services under its “Maven”

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mark. ECF No. 1 (“Compl”) ¶ 29. GM developed its “Maven” mark in January of 2016. GM

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AAA cites to excerpts of the Voges deposition transcript and attaches those excerpts as Exhibit 3
to the Bowler declaration. GM also cites to excerpts of the Voges deposition transcript and
attaches those excerpts as Exhibit 55 to the Adkisson declaration. For simplicity, the Court refers
only to the “Voges Tr.” when referring to either, or both, exhibits.
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offers rental services through Maven that are labeled with the word “Maven” and another

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identifying word. For instance, GM offers rental services targeted toward personal use called

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“MAVEN HOME” and “MAVEN CITY” under its Maven mark. Bowler Decl., Ex. 8

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(“Bhattacharya Tr.”) 3 at 33:11–12; id., Ex. 9 (“Stooke Tr.”)4 at 26:21–28:16.

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b. GM’s EXPRESS DRIVE Relationship with Lyft

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Around the same time that GM developed its Maven mark, GM had a program with Lyft

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called “EXPRESS DRIVE” for the use of GM vehicles in providing Lyft services. Bhattacharya

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Tr. at 33:19–34:8; Bowler Decl., Ex. 8 (“Steyn Tr.”) 5 at 20:11–25:9. Specifically, EXPRESS

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DRIVE is a program branded by Lyft whereby Lyft “offers cars through their partners, like Maven
to the drivers exclusively for them to earn money on the Lyft platform.” Steyn Tr. at 21:9–12. In

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other words, Lyft serves as the direct contact to the drivers. Id. at 22:21–25, 52:18–23.
Before the fall of 2016, however, GM’s relationship with Lyft and EXPRESS DRIVE

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became strained due to unprofitability and unaligned incentives. Bhattacharya Tr. at 50:10–51:6;

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Steyn Tr. at 24:16–25:10; 53:18–23. In particular, GM wanted direct contact with the drivers.

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Steyn Tr. at 53:18–23. Therefore, in the summer of 2016, GM began exploring an alternative

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“platform-agnostic” model where GM would maintain a direct relationship with drivers regardless

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of the business partnership. Id.; Stooke Tr. at 37:13–38:22.

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c. GM Brainstorms the MAVEN GIG Mark

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GM came up with the MAVEN GIG mark idea in early August 2016, when a team of GM

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employees brainstormed names for a car rental service for individuals to drive for companies like

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AAA cites to excerpts of the Bhattacharya deposition transcript and attaches those excerpts as
Exhibit 8 to the Bowler declaration. GM also cites to excerpts of the Bhattacharya deposition
transcript and attaches those excerpts as Exhibit 3 to the Adkisson declaration. For simplicity, the
Court refers only to the “Bhattacharya Tr.” when referring to either, or both, exhibits.
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AAA cites to excerpts of the Stooke deposition transcript and attaches those excerpts as Exhibit
9 to the Bowler declaration. GM also cites to excerpts of the Stooke deposition transcript and
attaches those excerpts as Exhibit 1 to the Adkisson declaration. For simplicity, the Court refers
only to the “Stooke Tr.” when referring to either, or both, exhibits.
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AAA cites to excerpts of the Steyn deposition transcript and attaches those excerpts as Exhibit
10 to the Bowler declaration. GM also cites to excerpts of the Bhattacharya deposition transcript
and attaches those excerpts as Exhibit 4 to the Adkisson declaration. For simplicity, the Court
refers only to the “Steyn Tr.” when referring to either, or both, exhibits.
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Uber or Lyft, who do not own cars or do not want to use their own cars for commercial purposes.

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ECF No. 75-1 (“Bhattacharya Decl.”) ¶ 4; Stooke Tr. at 46:3–5, 48:8–22; Adkisson Decl., Ex. 2

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(“5th Resp. to AAA’s 1st Interrogs.”) at 3–5. The name was based on research by Megan Stooke,

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the Chief Marketing Officer for Maven Drive, regarding the phrase “gig economy,” which is used

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to describe the trend in the labor market for short-term, freelance work, such as working as a

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driver for one of the app-based services. Bhattacharya Decl. ¶¶ 6–7; Stooke Tr. at 48:8–22. From

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that research, the team shared the MAVEN GIG name with GM’s advertising agency, Dentsu

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Aegis Network, on August 8, 2016. Bhattacharya Decl. ¶¶ 6–7; Adkisson Decl., Ex. 5.

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Management approved the MAVEN GIG mark in mid-September 2016. Bhattacharya Decl. ¶¶ 8–

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9. GM employees confirmed that the purpose of the MAVEN GIG service was for GM to have a

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direct relationship with drivers and to have an agnostic platform where drivers could drive for any

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ride share or delivery business. Strooke Tr. at 38:10–18; Steyn Tr. at 53:18–23.

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d. GM Communicates with Potential Business Partners
Before GM’s formal approval of the MAVEN GIG mark, GM used the mark in a few

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instances to discuss potential partnerships with other businesses. Bhattacharya Decl. ¶ 10. For

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instance, GM emailed Amazon twice in August and September 2016, to propose a partnership

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based on the MAVEN GIG service. Id. ¶¶ 11–12; Adkisson Decl., Ex. 7 (“8/29/16 Email to

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Amazon”); id., Ex. 8 (“9/28/16 Email to Amazon”) (“For Maven Gig . . . [A] Gig partnership with

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Amazon wouldn’t be a fleet dedicated to Amazon; the concept of Gig is that rideshare drivers can

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use our car to drive for multiple platforms.”); Stooke Tr. 80:14–24.

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On September 8, 2016, GM participated in a live WebEx meeting with Uber during which

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GM proposed a business partnership with Uber. Bhattacharya Decl. ¶ 13. As part of that WebEx

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meeting, GM emailed Uber a slideshow titled “Maven Gig” (file name “Maven-Gig-

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Overview_Uber.pdf”) that explained the MAVEN GIG service. Id. ¶ 13; see also Adkisson Decl.,

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Ex. 9 (“9/8/16 Email to Uber”). The slideshow bore both the Maven mark as well as the MAVEN

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GIG mark.

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In September and November 2016, GM also discussed and presented written materials
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about the MAVEN GIG service with an individual name Moshe Cohen from Gravity

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Technologies as well as the grocery delivery company Instacart. Bhattacharya Decl. ¶¶ 14–16;

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Stooke Tr. 81:5–12; see also Adkisson Decl., Ex. 10 (“9/2016 Emails with Gravity

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Technologies”); id., Ex. 12 (“11/2016 Instacart Maven Gig Presentation”); id., Ex. 11 (“11/30/16

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Instacart Maven Gig Workflow Presentation”). The Instacart presentation predominantly displayed

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the Maven mark, but also displayed the MAVEN GIG mark. See 11/2016 Instacart Maven Gig

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Presentation.

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e. GM’s Pilot Program Partnership with Uber
Both parties agree that GM entered into a partnership with Uber to rent cars directly to
Uber drivers. See Mot. at 3; Opp’n at 4; see also Bhattacharya Decl. ¶ 17. However, GM paints the

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partnership as the “first business partnership for the MAVEN GIG service,” while AAA

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emphasizes that this was merely a pilot program. Compare Mot. at 3–6, with Opp’n at 4–7.

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The evidence reflects that GM and Uber entered into a three-month “Pilot Agreement”

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executed on October 31, 2016, that made Uber a rideshare partner. Steyn Tr. at 52:1–18, 97:8–19,

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99:22–100:25; id., Ex. 11 (“Pilot Agreement”); Stooke Tr. 39:6–41:3; Bhattacharya Tr. at 53:2–

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15. Although the Pilot Agreement mentioned Uber and Maven, it did not mention MAVEN GIG.

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See Pilot Agreement. The Pilot Agreement provided that Uber had exclusive responsibility to

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“conduct email marketing of the Program to existing and potential Uber Driver Partners,” and that

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the parties would jointly distribute a press release announcing the launch of the program. Pilot

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Agreement at GM18110 & GM18121; Steyn Tr. at 103:1–104:22; Bhattacharya Tr. at 26:24–25,

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144:15–145:25. The press release went out on November 1, 2016; however, the press release

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mentioned Uber and Maven but did not mention MAVEN GIG. Bowler Decl., Ex. 12 (“11/1/16

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Press Release”); Steyn Tr. at 105:10–107:8; Bhattacharya Tr. at 148:11–150:6. Indeed, GM

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employees later clarified that this was because GM technically never had a co-marketing

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agreement with Uber on MAVEN GIG. Bhattacharya Tr. at 255:4–18; Bowler Decl., Ex. 27.

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AAA points to evidence in the record demonstrating that GM may have sought to

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purposefully conceal the MAVEN GIG mark during its pilot with Uber. For instance, the record

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demonstrates that GM was particularly sensitive about the Lyft EXPRESS DRIVE partnership, so

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GM wanted to get “Express Drive unwound” before they got “[MAVEN GIG] up and running,”

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especially because GM had not given Lyft formal notice that GM was exiting EXPRESS DRIVE

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and especially given the fact that Lyft and Uber were competitors. Steyn Tr. at 55:21–57:25,

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89:20-90:20; Bhattacharya Tr. at 148:13–151:4 (“[W]e knew the entire conversation would be

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about Uber and Lyft, in any case, and that the message we wanted to tell would get lost.”); see

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also Bowler Decl., Ex. 15. Moreover, GM wanted MAVEN GIG to be a platform-agnostic, multi-

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partner product, and knew that if GM “tried to message extensively about the platform agnostic

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aspects of [MAVEN GIG], the fact that [GM] only had one-co-marketing partner to begin with
didn’t look great with that.” Bhattacharya Tr. at 150:13–151:4. Therefore, GM did not have a

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marketing campaign or intend to market MAVEN GIG until it had other partners besides Uber,

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which the evidence in the record suggests did not occur until May of 2017.6 Id. at 59:4–60:8,

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156:1–158:18, 214:8–11; see also Bowler Decl., Ex. 16. Thus, the MAVEN GIG mark is not

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mentioned in the media talking points or the official communications plan regarding the Uber

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pilot. Steyn Tr. at 110:21–112:24; Bowler Decl., Ex. 16 (“Media Briefing Talking Points”);

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Bhattacharya Tr. at 152:12–155:25; Bowler Decl., Ex. 18 (“Communications Plan”).

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The car share service rental became available to Uber drivers in San Francisco on

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November 1, 2016. Bhattacharya Decl. ¶ 18; ECF No. 75-2 (“Jaising Decl.”) ¶ 5. That same day,

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as part of the Pilot Agreement, Uber contacted drivers through a sign-up email to promote the car

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share service and to explain how to rent a car. Bhattacharya Decl. ¶ 19; Jaising Decl. ¶ 6. The

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sign-up email from Uber mentioned Uber and Maven but did not mention MAVEN GIG. Bowler

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Decl., Ex. 14 (“Uber Driver Email”); Bhattacharya Tr. at 113:18–114:22; Stooke Tr. 84:19–85:3.

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Specifically, the sign-up email stated: “We’ve teamed up with Maven.” See Uber Driver Email.

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The Uber sign-up email contained a hyperlink that led to the landing page at

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www.mavendrive.com/gig, and an enrollment website at www.mavendrive.com/gig/#!enroll

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See supra, Sections I.A.2.g & i.
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(“Enrollment Website”), which directed customers to complete a four-part enrollment form to

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create an account, provide personal and credit card information, and schedule an appointment to

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rent a car. Bhattacharya Decl. ¶¶ 19–20; Jaising Decl. ¶ 6; Adkisson Decl., Ex. 13; 5th Resp. to

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AAA’s 1st Interrogs. at 10. Anyone with the hyperlink could access the site; however, the link was

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only emailed to existing Uber drivers through the Uber email and was not sent to the general

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public. Steyn Tr. at 95:1–96:20; Bowler Decl., Ex. 19; Bhattacharya Tr. at 26:11–27:15.
The first screen of the Enrollment Website bore the “Maven” mark in large text in the top

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left corner, but not the “MAVEN GIG” mark. Adkisson Decl., Ex. 14 (“First Enrollment Screen”).

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The description on the website stated “Welcome to Maven! . . . Once you have completed the

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registration process, it can take up to 2 business days to be approved.” Id. As displayed in the

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image below, however, the “Maven Gig” mark appeared only once, at the bottom of the first

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screen of the Enrollment Website, where customers were required to check a box next to the

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statement, “I agree to Maven Gig’s Lease Agreement and Privacy Statement.” Id.; Jaising Decl. ¶

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7.

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See First Enrollment Screen. The MAVEN GIG check box statement appeared in font smaller than

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the Maven mark that was used in multiple places on the first screen of the Enrollment Website.

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See First Enrollment Screen. Customers were not permitted to move onto the next screen of the

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Enrollment Website if they did not check the box acknowledging this statement. See id.; Jaising

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Decl. ¶ 7. Although the statement next to the check box mentioned MAVEN GIG, the lease

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agreement itself did not display the MAVEN GIG mark and only mentioned Maven. See Bowler

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Decl., Ex. 11 at GM18122–33 (“Maven Program Rental Agreement”); Bhattacharya Tr. at 146:1–

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147:24; Bowler Decl., Ex. 29 (“Gig Enrollment Flow”) at 3.

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All Uber drivers who checked the box received a welcome email prompting verification by

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clicking on a URL (www.mavendrive.com/gig/#!/emailConfirm/). Jaising Decl. ¶ 8; 5th Resp. to

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AAA’s 1st Interrogs. at 15–18. The welcome email did not mention MAVEN GIG and instead

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bore only the Maven mark. Gig Enrollment Flow at 7. Drivers were then prompted to complete the

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next three screens of the Enrollment Website, which required them to enter payment details and

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driver’s license information, and to select a car rental appointment time. Jaising Decl. ¶ 8; 5th

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Resp. to AAA’s 1st Interrogs. at 18–19; Bhattacharya Tr. at 81:16–83:16. The MAVEN GIG mark

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was not present on any of these screens, and instead the screens showed only the Maven mark. See

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Gig Enrollment Flow at 4–6.
Customers who completed all four screens of the Enrollment Website received an

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automated reservation confirmation email bearing a large Maven mark header in the body of the

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email. See Adkisson Decl., Ex. 15 (“Confirmation Emails”) at GM55933–45. The email’s text

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stated, “Welcome to Maven Gig!” in font smaller than the large Maven mark header. Jaising Decl.

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¶ 9; see also Confirmation Emails at GM559393–45. The reservation confirmation email also

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provided directions to a shared parking lot and instructed customers to let the parking attendant

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know “that you are looking for Maven Gig.” Confirmation Emails at GM559393–45. The

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reservation confirmation email was signed “The Maven Team.” See id. An example of the

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reservation confirmation email is presented in the image below.

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After the drivers had enrolled, they could log into their Maven accounts at

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www.mavendrive.com/gig/#!/login (“Maven Website”) and could view and revise their existing

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reservations or make new ones through their Maven account. Jaising Decl. ¶ 10. MAVEN GIG did

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not appear on this Maven Website. See Bhattacharya Tr. at 181:2–182:21; Bowler Decl., Ex. 20;

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id., Ex. 21; Steyn Tr. at 91:8–17. However, if customers revised their existing reservations, they

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received a reservation update email confirming the details for their new reservation that again

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stated, “Welcome to Maven Gig!” and to let the parking attendant “know that you are looking for

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Maven Gig.” Id. ¶ 11; see also Adkisson Decl., Ex. 16; id., Ex. 17. Invoices sent to drivers after

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completed reservations displayed the Maven mark but not the MAVEN GIG mark. See, e.g.,
Bowler Decl., Ex. 31 (December 2016 emails with attached invoice); id., Ex. 32 (July 2017 emails

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with attached invoice).

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On November 1, 2016, GM recorded its first driver who enrolled and reserved a car on the

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Enrollment Website. Jaising Decl. ¶¶ 12, 14; Bhattacharya Decl. ¶ 21; see also Adkisson Decl.,

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Ex. 18. On November 2, 2016, Akshay Jaising, the Regional Manager – West at Maven Drive, and

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another GM employee met the first driver to pick up a car rented through the service at a parking

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lot in San Francisco and provided an overview of how the MAVEN GIG service works. Jaising

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Decl. ¶ 13; Bhattacharya Decl. ¶ 22.

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GM explained that when drivers would go to the parking lot to pick up cars, the parking lot

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was not generally branded, but employees would typically wear Maven, but not MAVEN GIG,

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apparel so that the drivers would know with whom to speak. Bhattacharya Tr. at 56:25–12. GM

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also clarified that the rental cars were branded with the Maven mark but not the MAVEN GIG

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mark. Id. at 137:3–11; see also Bowler Decl., Exs. 22 & 23 (showing car with only a “Maven”

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mark car decal).

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Starting November 21, 2016, Uber incorporated a link to the Enrollment Website in its

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sign-up flow for new drivers in San Francisco on the Uber website, which is available to all

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members of the public who wish to drive for Uber. See Jaising Decl. ¶ 15; see also Adkisson

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Decl., Ex. 19 (“Uber Sign-Up Flow”). The sign-up flow included only the Maven mark, and

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clicking on the Maven mark would bring drivers to the Enrollment Website. See Uber Sign-Up

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Flow; see also Jaising Decl. ¶ 15.

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Beginning as early as January 31, 2017, existing drivers could make new reservations to

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rent cars on the Maven Website by clicking to expand a section of the website that was

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specifically titled “Maven Gig.” Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459.

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However, this tab only appears to have been available to drivers who already had a Maven account

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and had logged in. See Jaising Decl. ¶ 17. After clicking the “Maven Gig” tab, customers could

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follow the listed steps to make a new reservation. Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at

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GM56459.

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f. GM’s Communications with Customers

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GM highlights that, beginning around December 28, 2016, GM had responded to email

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inquiries from customers and prospective customers using the MAVEN GIG mark. See Jaising

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Decl. ¶ 16; Bhattacharya Decl. ¶ 24; Bhattacharya Tr. at 60:20–70:5. Specifically, GM cites to

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evidence in the record that GM used the mark in a few emails to: (1) confirm that customers were

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interested in GM’s “Maven Gig program” (as opposed to GM’s other services under Maven); (2)

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advise customers that their inquiry would be forwarded to GM’s “Maven Gig” team; and (3)

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provide information about the MAVEN GIG service. See, e.g., Adkisson Decl., Ex. 21 (email

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dated 2/22/2017); id., Ex. 22 (emails dated 1/5/2017–1/6/2017); id., Ex. 23 (email dated 2/8/2017);

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id., Ex. 24 (email dated 3/15/2017). Nonetheless, GM’s emails in response to customer inquiries

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also frequently used the Maven mark. For instance, GM sent the emails from a Maven email

21

address, such as [e-mail]; GM signed the emails “Maven Member Services”;

22

and GM’s emails displayed a prominent Maven mark. See, e.g., Adkisson Decl., Exs. 21 & 23.

23

Further, several of GM’s emails referred to the service inconsistently, including “[o]ur program

24

with Uber,” “[o]ur Uber program,” “[o]ur partnership with Uber.” See, e.g., id., Ex. 21; id., Ex. 29.

25

Additionally, GM cites to evidence showing that GM replied to two customer emails with

26

questions about the car share service by attaching a slide presentation dated January 31, 2017 with

27

the file name “Maven Gig Uber Pilot Highlights.pdf” that displayed the MAVEN GIG mark.

28

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Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 (email dated 2/22/2017 attaching PDF); id., Ex. 29

2

(email dated 3/2/2017 attaching PDF). For example, next to the screenshot showing the Maven

3

Website, the presentation explained: “Once you have logged in, click on Maven Gig and follow

4

the steps to make an appointment.” Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459. The

5

presentation also stated: “[t]he Maven Gig program for Uber drivers is currently offered in San

6

Francisco,” and to “[s]tay tuned for updates.” Jaising Decl. ¶ 18; Adkisson Decl., Ex. 21 at

7

GM56462. However, the PDF presentation that GM sent out also mentions the Maven Website,

8

the “Maven Lease Agreement,” Maven insurance, the “Maven vehicle,” and the “Maven bill.” Id.

9

g. GM Continues to Communicate to Potential Business Partners

10

GM also cites to evidence in the record that GM discussed potential partnerships with

United States District Court
Northern District of California

11

other third-party companies in early 2017. Bhattacharya Decl. ¶ 26. For example, GM and Hertz

12

began discussing a potential partnership in mid-February of 2017. Id. ¶ 27. On March 29, 2017,

13

GM and Hertz had an in-person meeting, during which GM used a slide presentation. Id.; Jaising

14

Decl. ¶ 21; Adkisson Decl., Ex. 30 (“Hertz Presentation”); Bhattacharya Tr. at 70:7–10. The

15

MAVEN GIG mark was on several of the slides; however, many of the slides bore just the Maven

16

mark. See Hertz Presentation. GM and Hertz continued their discussions about the car share

17

service in a live WebEx meeting on April 11, 2017. Jaising Decl. ¶ 21.

18

GM also discussed a potential partnership with the package delivery company Roadie on

19

March 28, 2017 using a presentation titled “Maven GIG overview (Roadie)” that showed both the

20

Maven mark and the MAVEN GIG mark. Bhattacharya Decl. ¶ 28; Adkisson Decl., Ex. 31

21

(“Roadie Presentation”); Bhattacharya Tr. at 66:12–16. GM also discussed a potential partnership

22

with the food delivery company Grubhub beginning in March 2017. Bhattacharya Decl. ¶ 29;

23

Bhattacharya Tr. at 66:12–16. On April 6, 2017, GM emailed Grubhub a presentation titled

24

“MAVEN GIG OVERVIEW” with the file name “170405_Maven-GIG_Overview.pdf.”

25

Bhattacharya Decl. ¶ 29. The presentation showed the MAVEN GIG name several times,

26

including references to the “Maven Gig renter experience” and a proposed co-marketing

27

partnership that showed the MAVEN GIG mark. Id.; see also, Adkisson Decl., Ex. 32 (“MAVEN

28

12
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1
2

GIG OVERVIEW Presentation”).
Roadie, Grubhub, and Instacart all eventually became co-marketing partners for the

3

MAVEN GIG service sometime in April 2017, after AAA’s April 17, 2017 launch; however, the

4

exact dates of those partnerships are not clear from the record. Bhattacharya Decl. ¶¶ 30–31;

5

Bhattacharya Tr. at 47:9–49:7. GM employees explained that these additional partnerships

6

between GM and companies such as Grubhub, Instacart, Roadie, and other ridesharing services to

7

provide vehicles to use for independent driving gigs meant GM had achieved its goal of making

8

the MAVEN GIG service “platform-agnostic.” Bhattacharya Decl. ¶ 32; Jaising Decl. ¶ 28.

9
10

h. GM’s Customer Statistics
By April 17, 2017, the date AAA issued a formal press release regarding the GIG launch,

United States District Court
Northern District of California

11

GM had received 2,340 applications from prospective drivers who had visited the Enrollment

12

Website and had checked the box next to the statement “I agree to Maven Gig’s Lease Agreement

13

and Privacy Statement”). Jaising Decl. ¶¶ 14, 23–24; Adkisson Decl., Ex. 18; id., Ex. 34

14

(“Customer Data”). GM also asserts that it had sent over 846 reservation confirmation emails to

15

customers, but this figure is not supported—or at the very least made clear—by GM’s citations to

16

the record. See Mot. at 8 n.45.

17

By April 17, 2017, the number of “members” of the MAVEN GIG service, which refers to

18

GM’s way of counting the number of customers who have either completed or have an in-progress

19

service rental, was 284 customers. Jaising Decl. ¶ 23; see also Customer Statistics. From

20

November 2016 until April 1, 2017, GM collected approximately

21

car share service. See Adkisson Decl., Ex. 20 (“Maven Gig Billing Collections”).

22
23

in revenue from the

i. GM’s Use of the MAVEN GIG Service After April 17, 2017
GM contends it first learned about AAA’s GIG mark through an article published on April

24

17, 2017. Bhattacharya Decl. ¶ 35. After that date, on May 2, 2017, GM launched a new website

25

for the MAVEN GIG service and published the “Maven Gig Insurance Policy for Commercial

26

Lease/Rental Agreement” online at: http://media.gm.com/media/us/en/maven/gig-insurance.html.

27

Jaising Decl. ¶ 27; see also Adkisson Decl., Ex. 41 (“Maven Gig Insurance Policy”).

28

13
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

On May 3, 2017, GM issued a press release titled “Maven Gig Accelerates the Freelance

1
2

Mobility Economy,” in which GM announced that “Maven is expanding its flexible mobility

3

platform to accelerate the gig economy.” Adkisson Decl., Ex. 42 (“5/3/2017 MAVEN GIG Press

4

Release”). Evidence in the record suggests that GM issued this press release because the MAVEN

5

GIG service was technically not yet public at that time. Bhattacharya Tr. at 190:7–14, 192:23–

6

193:9; Bowler Decl., Ex. 24 (“Note that Gig isn’t technically public yet”); id., Ex. 25 (4/17/2017

7

email stating “we aren’t announcing the Gig business until 2 weeks from now.”); id., Ex. 26

8

(2/25/2017 emails stating “I just wanted to make sure we were on the same page in respect to

9

communications. The direction is to NOT make a lot of noise around the Australian Maven Gig
partnership with Uber in March. So please, do not issue any press releases” and that “we are 100%

11
United States District Court
Northern District of California

10

aligned on not doing anything external during our pilot.”).
The press release stated that “Maven Gig drivers are provided access to vehicles they can

12
13

use for independent gigs that they choose, such as package delivery, food or grocery delivery, and

14

ridesharing.” 5/3/2017 MAVEN GIG Press Release. “This program is live in San Diego and will

15

launch in San Francisco and Los Angeles later this year.”7 Id. “Initial partners include GrubHub,

16

Instacart, Roadie and ridesharing services.” Id. The press release further stated that “Maven’s

17

internal data shows a clear, growing need for Maven Gig”; that “Maven’s on-demand rental for

18

ridesharing program has produced more than 100 million miles driven and 9.3 million rides have

19

been given”; and that “Maven has applied learnings from these operations to launch Maven Gig

20

and help make the sharing economy more accessible and intelligent.” Id. The press release

21

generated publicity, including third-party articles that referred to the service as “Maven Gig.”

22

Bhattacharya Decl. ¶ 32; see also, e.g., Adkisson Decl., Ex. 43 (5/3/2017 Los Angeles Times

23

article titled “GM introduces ‘Maven Gig’ rental program for app-based freelance drivers”).

24
25
26
27
28

7

It is not clear why this discrepancy exists between the May 5, 2017 press release, which states
that the MAVEN GIG service is live in San Diego and “will launch in San Francisco . . . later this
year,” and the declarations that suggest that the Uber pilot program launched in San Francisco on
November 1, 2016. Compare 5/3/2017 MAVEN GIG Press Release, with Bhattacharya Decl. ¶ 18;
Jaising Decl. ¶ 5. This evidence may further corroborate the private nature of the Uber pilot
program.
14
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

After May 3, 2017, GM used the MAVEN GIG mark in paid search marketing. Stooke Tr.

1
2

at 102:11–13. GM also started a MAVEN GIG Facebook community, created MAVEN GIG

3

marketing materials that are located on YouTube and “created digital assets for Maven Gig

4

members to refer to other members.” Id. at 102:11–20, 103:19–105:18. MAVEN GIG has

5

expanded since its initial launch and is currently available in Austin, Detroit, San Diego, San

6

Francisco, Los Angeles, Phoenix, Boston, Baltimore, Washington, D.C., and New York.

7

Bhattacharya Decl. ¶ 33. MAVEN GIG was not introduced to the Maven app until August 2017.

8

Stooke Tr. at 126:10–12.
GM has earned approximately

9

in revenue from the MAVEN GIG service

from November 2016 through August 2018; however, GM has yet to turn a profit. See Maven Gig

11
United States District Court
Northern District of California

10

Billing Collections; Bhattacharya Decl. ¶¶ 34–35; Adkisson Decl., Ex. 44 (“Distler Rpt.”) ¶¶ 54,

12

70, 95.

13
14
15
16
17

3. Facts Leading to the Instant Litigation

18

AAA states that it first became aware of GM’s MAVEN GIG mark on May 3, 2017 via

19

GM’s announcement. Haight Decl. ¶¶ 35–36. AAA sent GM a cease and desist letter on May 5,

20

2017 that asserted common law rights in the GIG mark. Id. ¶¶ 38–40; see also Adkisson Decl. ¶

21

54, Ex. 53 (“5/5/17 Cease and Desist Letter”). The letter also stated “[i]n addition to common law

22

rights in the ‘GIG’ service mark, AAA owns a pending application in the U.S. Patent and

23

Trademark Office for the ‘GIG’ mark (Serial No. 87323670).” 5/5/17 Cease and Desist Letter.

24

GM responded on May 16, 2017 and asserted that GM’s use of the MAVEN GIG mark predated

25

AAA’s use of the GIG mark. Adkisson Decl. ¶ 16, Ex. 15 (“5/16/17 Email”). On May 11, 2017,

26

GM filed a trademark application with the U.S. Patent and Trademark Office (U.S. Trademark

27

Application Serial No. 87446290). Stooke Tr. at 59:4–25, 68:7–69:10; see also id., Ex. 74.

28

15
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

B. Procedural History

1

AAA filed its lawsuit against GM on July 7, 2017. ECF No. 1 (“Compl.”). AAA’s

2
3
4
5
6
7

complaint alleges causes of action for (1) Common Law Trademark Infringement; (2) Federal
Unfair Competition and False Designation of Origin, in violation of Section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a); (3) Unfair Competition in violation of California Business and
Professions Code § 17200, et seq.; and (4) Common Law Unfair Competition. See Compl. ¶¶ 42–
67. After receiving an extension, GM filed its answer on August 25, 2017. ECF No. 20.
A week before GM had answered, GM filed a motion to stay the case pending resolution of

8
9
10

United States District Court
Northern District of California

11

the priority issue in the Trademark Trial and Appeal Board (“TTAB”) on August 18, 2018. ECF
No. 18. The Court denied GM’s request to stay during the October 11, 2017 case management
conference. See ECF No. 40.
On January 1, 2019, GM filed the instant motion for summary judgment. ECF No. 75

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

(“Mot.”). On January 24, 2019, AAA opposed. ECF No. 77 (“Opp’n”). On January 31, 2019, GM
replied. ECF No. 81 (“Reply”).
II.

LEGAL STANDARD
Summary judgment is proper where the pleadings, discovery, and affidavits show that

there is “no genuine dispute as to any material fact and [that] the movant is entitled to judgment as
a matter of law.” Fed. R. Civ. P. 56(a). Material facts are those which may affect the outcome of
the case. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute as to a material
fact is genuine if there is sufficient evidence for a reasonable jury to return a verdict for the
nonmoving party. See id.
The party moving for summary judgment bears the initial burden of identifying those
portions of the pleadings, discovery and affidavits that demonstrate the absence of a genuine issue
of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Once the moving party meets
its initial burden, the nonmoving party must go beyond the pleadings and, by its own affidavits or
discovery, “set forth specific facts showing that there is a genuine issue for trial.” Fed. R. Civ. P.
56(e). If the nonmoving party fails to make this showing, “the moving party is entitled to
16
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

judgment as a matter of law.” Celotex Corp., 477 U.S. at 323.

2

At the summary judgment stage, the Court must view the evidence in the light most

3

favorable to the nonmoving party: if evidence produced by the moving party conflicts with

4

evidence produced by the nonmoving party, the judge must assume the truth of the evidence set

5

forth by the nonmoving party with respect to that fact. See Leslie v. Grupo ICA, 198 F.3d 1152,

6

1158 (9th Cir. 1999).
“Because of the intensely factual nature of trademark disputes, summary judgment is

7
8

generally disfavored in the trademark arena.” Interstellar Starship Servs., Ltd. v. Epix Inc., 184

9

F.3d 1107, 1109 (9th Cir. 1999) (citing Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1356
n. 5 (9th Cir. 1985)); see also, e.g., Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand

11
United States District Court
Northern District of California

10

Mgmt., Inc., 618 F.3d 1025, 1029, 1031 (9th Cir. 2010); Entrepreneur Media, Inc. v. Smith, 279

12

F.3d 1135, 1140 (9th Cir. 2002).

13

III.

DISCUSSION

14

GM moves for summary judgment on all claims brought by AAA. GM asserts that all four

15

of AAA’s claims rely on the same set of facts related to GM’s use of the MAVEN GIG mark, and

16

therefore, all of AAA’s claims are analyzed under the same standards as an infringement claim

17

under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Mot. at 12 & n.74. Plaintiff does not

18

dispute that the trademark ownership issue could dispose of all of its claims. See Opp’n; see, e.g.,

19

Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1202–03 (9th Cir. 2012) (explaining

20

that the state claims for common law trademark infringement and unfair competition claim, to the

21

extent they are based on infringement grounds, are subject to the same legal standards as the

22

Lanham Act trademark claim); Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 631 n.1, 632 (9th Cir.

23

2008) (noting that claims for false designation of origin under the Lanham Act, and unfair

24

competition “are subject to the same test.”). Thus, the Court’s decision on the trademark

25

ownership issue applies to all of AAA’s claims.

26
27
28

Specifically, GM argues (1) that there is no genuine dispute as to any material fact
regarding GM’s ownership of prior rights in the trademark MAVEN GIG over AAA’s alleged
17
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

rights in the trademark GIG, and therefore GM is entitled to judgment as a matter of law. Mot. at i,

2

2. In the alternative, GM argues that (2) AAA cannot recover any monetary remedies in this action

3

because there is no evidence, and thus no genuine dispute of material fact (a) that GM acted

4

willfully or (b) that AAA suffered actual damages because of the alleged infringement. See id. The

5

Court addresses each argument in turn, beginning with GM’s priority argument.

6
7

A. Summary Judgment is Not Warranted on Priority of Use
To prevail on a Lanham Act trademark claim, AAA “must prove: (1) that it has a

8

protectable ownership interest in the mark; and (2) that the defendant’s use of the mark is likely to

9

cause consumer confusion.” Rearden LLC., 683 F.3d at 1202–03 (internal quotation marks and
citations omitted). An ownership interest in a mark is demonstrated through priority of use.

11
United States District Court
Northern District of California

10

Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996) (“It is axiomatic in

12

trademark law that the standard test of ownership is priority of use.”). Therefore, AAA cannot

13

prevail on its trademark claim if GM had prior use of the mark. See Dep’t of Parks & Rec. v.

14

Bazaar Del Mundo Inc., 448 F.3d 1118, 1124–25 (9th Cir. 2006). To establish priority of use, “it

15

is not enough to have invented the mark first.” Sengoku Works Ltd., 96 F.3d at 1219. “[T]he party

16

claiming ownership must have been the first to actually use the mark in the sale of goods or

17

services.” Id.; see also Brookfield Commc’ns Inc. v. W. Coast. Entm’t Corp., 174 F.3d 1036, 1051

18

(9th Cir. 1999) (“The Lanham Act grants trademark protection only to marks that are used to

19

identify and to distinguish goods or services in commerce—which typically occurs when a mark is

20

used in conjunction with the actual sale of goods or services.”).

21

GM argues that it is entitled to summary judgment on the issue of priority because GM’s

22

use of the MAVEN GIG mark constitutes trademark use and predates any use by AAA of the GIG

23

mark, and therefore AAA cannot establish that it owns valid trademark rights. Both parties agree

24

that AAA first used its GIG mark on April 17, 2017. Accordingly, GM must establish that there is

25

no genuine dispute that GM made use of the MAVEN GIG mark prior to April 17, 2017.

26

GM contends that there is no genuine dispute on priority of use for two reasons. First, GM

27

argues that GM has made actual trademark use of the MAVEN GIG mark in commerce by selling

28

18
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

and rendering its car share service under the MAVEN GIG mark. Mot. at 13. GM argues second

2

that if its sales are not alone sufficient, then the totality of GM’s non-sales activity under the

3

MAVEN GIG mark constitutes analogous use. See id. The Court considers both of GM’s

4

arguments. For the reasons given below, the Court finds that GM is not entitled to summary

5

judgment on priority of use under either argument.

6

1. GM is Not Entitled to Summary Judgment Based on Actual Use of the MAVEN
GIG Mark in Connection with Sales Prior to April 17, 2017

7
GM first argues that there is no genuine dispute of material fact that GM actually used the
8
MAVEN GIG mark in connection with its car share service sales prior to April 17, 2017. Mot. at
9
13–17. In particular, GM points to the fact that by April 17, 2017, GM had made sales of and
10
rendered the MAVEN GIG service to approximately 284 customers and had collected
11
United States District Court
Northern District of California

approximately

in revenue. Id. In opposition, AAA argues that GM’s MAVEN GIG mark

12
was not sufficiently used in conjunction with the actual sale of the car share service and therefore,
13
the revenue and customer figures do not reflect actual use of the mark. Opp’n at 10–14.
14
Under the Lanham Act and Ninth Circuit law, “actual” trademark use occurs through “use
15
in commerce,” which means “the bona fide use of a mark in the ordinary course of trade, and not
16
[use] merely to reserve a right in a mark.” Brookfield Commc’ns Inc., 174 F.3d at 1051 (quoting
17
15 U.S.C. § 1127). The Ninth Circuit has recognized that “evidence of actual sales, or lack thereof,
18
is not dispositive in determining whether a party has established ‘use in commerce’ within the
19
meaning of the Lanham Act. Rearden, 683 F.3d at 1205. However, for actual sales to be relevant,
20
the mark must have been “used in conjunction with the actual sale of goods or services” in a
21
public manner that “creates an association among consumers between the mark and the mark’s
22
owner.” Brookfield Commc’ns Inc., 174 F.3d at 1051; see also 15 U.S.C. § 1127 (“[A] mark shall
23
be deemed to be used in commerce . . . on services when it is used or displayed in the sale or
24
advertising of services and the services are rendered in commerce.”).
25
As an initial matter, the “actual sales” cases relied on by GM, Seal Shield, LLC v. Otter
26
Prods., LLC, and Macy’s Inc. v. Strategic Marks, LLC, are distinguishable. For example, in Seal
27
28

19
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

Shield, LLC, the court found prior use where plaintiff “sold 382 units of its protective Kindle 2

2

case with the designation ‘Life Proof’ affixed to the packaging.” 13-cv-2736-CAB (NLS), 2014

3

WL 11350295, at *7 (S.D. Cal. Nov. 4, 2014) (emphasis added). Similarly, in Macy’s Inc., the

4

court found use in commerce when there was “no real question that Macy’s offers products

5

displaying the disputed trademark for commercial sale on its website.” 15-0612, 2016 WL

6

374147, at *6 (N.D. Cal. Feb. 1, 2016). In both of these cases, the sales could constitute actual use

7

because the mark was attached to or displayed with a good that was, in turn, sold. Here, unlike in

8

Seal Shield, LLC and Macy’s Inc., where the mark was simply affixed to the package or product

9

itself, the mark at issue in the instant case is associated with a service, not a product, so the mark

10

cannot directly be “affixed” to the service. There can, however, be use in connection with the sale

11
United States District Court
Northern District of California

1

of the service. See Brookfield Commc’ns Inc., 174 F.3d at 1051 (explaining that for actual sales to

12

be relevant, the mark must have been “used in conjunction with the actual sale of goods or

13

services” in a public manner that “creates an association among consumers between the mark and

14

the mark’s owner.”).
Perhaps recognizing that it cannot rely only on the sale in the same way as the parties in

15
16

Seal Shield, LLC and Macy’s Inc., GM points to the following evidence from the car share service

17

enrollment and reservation process during the Uber pilot program in an attempt to demonstrate

18

that GM used the MAVEN GIG mark “publicly and repeatedly in connection with its bona fide

19

sales between November 1, 2016, and April 17, 2017”: (1) the statement next to the check box on

20

the Enrollment Website that said “I agree to Maven Gig’s Lease Agreement and Privacy

21

Statement” before being able to proceed; (2) the reservation confirmation and reservation update

22

emails that stated “Welcome to Maven Gig!” and instructed customers to let the parking attendant

23

know “you are looking for Maven Gig” when picking up the rental car;8 (3) other email

24

correspondence with customers; and (4) the January 31, 2017 update to the Maven Website that

25

allowed people to make reservations on the “Maven Gig” tab. Mot. at 16.

26
27
28

8

GM also cites to evidence confirming that those emails were sent. Mot. at 16 n.80 (citing
Adkisson Decl., Exs. 18 & 35).
20

Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

The Court addresses each in turn. The Court then addresses AAA’s arguments regarding

2

GM’s use, including evidence that GM purposefully hid the MAVEN GIG mark. Ultimately, the

3

Court concludes that despite GM’s insistence that its sales numbers and revenue constitute

4

evidence of priority, the MAVEN GIG mark was not sufficiently used in conjunction with the

5

actual sale of the car share service in a public manner so as to create an association among

6

consumers between the MAVEN GIG mark and the car share service.
a. GM’s Evidence in Support of GM’s Actual Sales Argument is Insufficient

8

The Ninth Circuit has emphasized that parties cannot rely on a few instances of a use of a

9

mark that were “‘casual’ or had ‘little importance apparently attached to [them].’” Dep’t of Parks

10

& Rec., 448 F.3d at 1126 (citation omitted). Similarly, this Court has previously recognized that

11
United States District Court
Northern District of California

7

“no goodwill is created when a mark is ‘seen by the consuming public only in very limited

12

quantity.’” Sebastian Brown Prods. LLC v. Muzooka Inc., 15-CV-1720-LHK, 2016 WL 5910817,

13

at *9 (N.D. Cal. Oct. 11, 2016) (quoting E. & J. Gallo Winery v. Gallo Cattle Co., 1989 WL

14

159628, at *3 (E.D. Cal. Jun. 19, 1989), aff’d E. & J. Gallo Winery, 967 F.2d 1280 (9th Cir.

15

1992)).

16

In the paragraphs that follow, the Court addresses GM’s evidence from the car share

17

service enrollment and reservation process. Before doing so, however, the Court finds it useful to

18

briefly discuss GM’s pilot program with Uber because all of the evidence GM cites arises from

19

this pilot program. GM and Uber entered into a three-month Pilot Agreement executed on October

20

31, 2016, that made Uber a rideshare partner. See Pilot Agreement; Steyn Tr. at 52:1–18, 97:8–19,

21

99:22–100:25; Stooke Tr. at 39:6–41:3; Bhattacharya Tr. at 53:2–15. That Pilot Agreement only

22

mentioned Uber and Maven and did not mention MAVEN GIG. See Pilot Agreement. GM

23

employees clarified that this was because GM technically never had a co-marketing agreement

24

with Uber on MAVEN GIG. Bhattacharya Tr. at 255:4–18; Bowler Decl., Ex. 27.

25

The evidence shows that when GM developed MAVEN GIG, GM wanted MAVEN GIG

26

to be a platform-agnostic, multi-partner product. However, when GM entered into its pilot

27

program with Uber, Uber was GM’s only partner. The evidence shows that GM recognized that

28

21
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

having only one partner would be inconsistent with its platform-agnostic goals for MAVEN GIG.

2

Bhattacharya Tr. at 150:13–151:4 (explaining that GM knew that if it “tried to message

3

extensively about the platform agnostic aspects of [MAVEN GIG], the fact that [GM] only had

4

one-co-marketing partner to begin with didn’t look great with that.”); Bowler Decl., Ex. 16

5

(11/1/2016 email from Rachel Bhattacharya, Director of Global Innovation at GM stating “Maven

6

and Uber jointly answered questions to the press at 3 pm ahead of the formal release. Emails to the

7

drivers go out today. It is simply being marketed as ‘a pilot program with Maven and Uber;’ we

8

aren’t using the GIG name publicly until later this year . . . when we have more partners on

9

board.”). Therefore, GM did not have a marketing campaign or intend to market MAVEN GIG
until it had partners other than Uber. Bhattacharya Tr. at 59:4–60:8, 156:1–158:18, 214:8–11; see

11
United States District Court
Northern District of California

10

also Bowler Decl., Ex. 16. Thus, the MAVEN GIG mark is not mentioned in the media talking

12

points or the official communications plan regarding GM’s pilot program with Uber. Steyn Tr. at

13

110:21–112:24; Media Briefing Talking Points; Bhattacharya Tr. at 152:12–155:25;

14

Communications Plan. Instead, as discussed below, GM only used MAVEN GIG in limited and

15

casual instances with the Uber drivers in the pilot program.

16

i. The Enrollment Process

17

GM’s evidence from the car share service enrollment and reservation process resembles

18

the casual or limited use about which courts have cautioned, especially when compared to the

19

prominent use of the Maven mark in the customer facing communications. For example, GM

20

continuously emphasizes the fact that the Uber drivers who received the sign-up email during the

21

pilot program and went to the Enrollment Website that included the Maven mark but did not

22

include the MAVEN GIG mark, had to check a box next to the statement, “I agree to Maven Gig’s

23

Lease Agreement and Privacy Statement” before being able to proceed. See First Enrollment

24

Screen (emphasis added); Jaising Decl. ¶ 7; see also Reply at 6–7. This is the only use of

25

“MAVEN GIG” prior to completing enrollment in the pilot program. The Court finds it useful to

26

discuss the enrollment process, including this check box statement, before discussing the

27

insufficiency of this use of the mark.

28

22
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

As part of the Pilot Agreement, Uber contacted drivers through a sign-up email to promote

2

the car share service and to explain how to rent a car. Bhattacharya Decl. ¶ 19; Jaising Decl. ¶ 6.

3

The Uber sign-up email mentioned Uber and Maven but did not mention MAVEN GIG. See Uber

4

Driver Email; Bhattacharya Tr. at 113:18–114:22; Stooke Tr. 84:19–85:3. Specifically, the sign-up

5

email stated: “We’ve teamed up with Maven.” See Uber Driver Email. The Uber sign-up email

6

contained a hyperlink that led to the landing page at www.mavendrive.com/gig, and the

7

Enrollment Website at www.mavendrive.com/gig/#!enroll, which directed customers to complete

8

a four-part enrollment form to create an account, provide personal and credit card information, and

9

schedule an appointment to rent a car. Bhattacharya Decl. ¶¶ 19–20; Jaising Decl. ¶ 6; Adkisson
Decl., Ex. 13. Anyone with the hyperlink could access the site; however, the link was only

11
United States District Court
Northern District of California

10

emailed to existing Uber drivers through the Uber sign-up email and was not sent to the general

12

public. Steyn Tr. at 95:1–96:20; Bowler Decl., Ex. 19; Bhattacharya Tr. at 26:11–27:15.

13

The first screen of the Enrollment Website bore the “Maven” mark in large text in the top

14

left corner, but not the “MAVEN GIG” mark. See First Enrollment Screen. The description on the

15

website stated “Welcome to Maven! . . . Once you have completed the registration process, it can

16

take up to 2 business days to be approved.” Id. As shown in Section I.A.2.e. of this Order, the

17

MAVEN GIG mark appeared only once, at the bottom of the first screen of the Enrollment

18

Website, where customers were required to check a box next to the statement, “I agree to Maven

19

Gig’s Lease Agreement and Privacy Statement.” Id.; Jaising Decl. ¶ 7; see also First Enrollment

20

Screen. The MAVEN GIG check box statement appeared in font far smaller than the Maven mark.

21

See First Enrollment Screen. Customers were not permitted to move onto the next screen of the

22

Enrollment Website if they did not check the box acknowledging this statement. See id.; Jaising

23

Decl. ¶ 7. Although the statement next to the check box mentioned MAVEN GIG, the lease

24

agreement itself did not display the MAVEN GIG mark and only mentioned Maven. See Maven

25

Program Rental Agreement; Bhattacharya Tr. at 146:1–147:24; Gig Enrollment Flow at 3.

26

All Uber drivers who checked the box received a welcome email prompting verification by

27

clicking on a URL (www.mavendrive.com/gig/#!/emailConfirm/). Jaising Decl. ¶ 8. The welcome

28

23
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

email did not mention MAVEN GIG and instead bore only the Maven mark. Gig Enrollment Flow

2

at 7. Drivers were then prompted to complete the next three screens of the Enrollment Website,

3

which required them to enter payment details and driver’s license information, and to select a car

4

rental appointment time. Jaising Decl. ¶ 8; 5th Resp. to AAA’s 1st Interrogs. at 18–19;

5

Bhattacharya Tr. at 81:16–83:16. The MAVEN GIG mark was not present on any of these screens,

6

and instead the screens showed only the Maven mark. See Gig Enrollment Flow at 4–6.

7

Having reviewed GM’s use of the MAVEN GIG mark in this context, the Court finds that

8

the limited mention of MAVEN GIG at the end of the first screen of the Enrollment Website does

9

not constitute sufficient use “in conjunction with” the actual sale of the service. See Brookfield
Commc’ns Inc., 174 F.3d at 1051. For instance, in Farmasino, Inc. v. Farmasino Pharms. Co., the

11
United States District Court
Northern District of California

10

court found that defendant had used the mark when the defendant created a website that

12

“prominently displayed the Name and the Mark.” 5:15-cv-01977-SVW-DTB, 2016 WL 7655740

13

(C.D. Cal. Jun. 20, 2016). By contrast here, because the only display of the MAVEN GIG mark on

14

the entire Enrollment Website is at the bottom next to the check box, it likely was not meant to

15

attract the attention of the viewer to the mark. See Dep’t of Parks & Rec., 448 F.3d at 1127

16

(“Because neither of the brochures was designed to attract the attention of the viewer to the marks

17

themselves, they fail to create any association between the marks and the tourism and recreation

18

services provided by the Department of Parks.”). Nor would the statement next to the check box

19

make it immediately obvious to customers that MAVEN GIG was being used to describe the

20

service. See also 1 McCarthy on Trademarks and Unfair Competition § 3:4 (5th ed.) (“In the

21

ordinary course of shopping, either in brick & mortar stores or on the internet, most customers do

22

not spend time closely examining labels and advertising copy. Usually, if when viewed in context,

23

it is not immediately obvious that a certain word or design is being used as an indication of origin,

24

then it probably is not. In that case, it is not a trademark. If a designation is being used as a

25

trademark, it should be obvious at first glance.”).

26
27
28

The limited and casual nature of the one mention of the MAVEN GIG mark during the
pilot program enrollment process is underscored by the prominent use of the Maven mark during
24
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

this process in the sign-up emails and on the Enrollment Website, including in the sign-up email

2

that only mentioned Maven but not MAVEN GIG; the First Enrollment Screen on the Enrollment

3

Website that bore the large “Maven” mark in the top left corner and that stated “Welcome to

4

Maven!”; the welcome email that bore only the Maven mark; and the second, third, and fourth

5

screens of the Enrollment Website, where driver’s entered payment details, driver’s license

6

information, and selected a car rental appointment time, which bore only the Maven mark. See Gig

7

Enrollment Flow. The prominent use of the Maven mark instead of the MAVEN GIG mark during

8

the enrollment process may diminish “the public’s ability to associate a single mark” with the

9

service “as it is unclear which mark to attach to the [service].” Nexsan Techs., Inc. v. EMC Corp.,
260 F. Supp. 3d 68, 77 (D. Mass. 2017) (finding no priority when “use of the mark [was]

11
United States District Court
Northern District of California

10

insufficiently clear or repetitive” such that the “public’s ability to associate a single mark with the

12

tested goods” was diminished); MicroStrategy Inc. v. Motorola, Inc., 245 F.3d 334, 342 (4th Cir.

13

2011) (finding that use of mark did not constitute trademark use when “[u]nlike certain

14

MicroStrategy trademarks, e.g., ‘Intelligent E–Business,’ MicroStrategy [did] not consistently

15

place[ ] ‘Intelligence Everywhere’ on a particular part of the page, or in a particular type, or label[

16

] it with ‘TM,’ or consistently use[ ] a distinctive font, color, typeset or any other method that

17

makes ‘its nature and function readily apparent and recognizable without extended analysis’”).

18

Therefore, the Court is not persuaded that the small statement next to the check box constitutes

19

sufficient “use.”

20

Further, it bears mentioning that the Lease Agreement and Privacy Statement to which the

21

drivers were asked to agree did not mention the MAVEN GIG mark either. See Maven Program

22

Rental Agreement. Instead, the Lease Agreement and Privacy Statement only referred to the

23

“Maven Program” and the “Uber Program.” Therefore, unlike in Telegram Messenger Inc. v.

24

Lantah, LLC, where the court granted summary judgment for the plaintiff on priority of use

25

because plaintiff had entered into $850 million worth of purchase agreements that actually bore

26

the mark at issue, Uber drivers in the pilot program entered into a Lease Agreement that did not

27

mention the MAVEN GIG mark at all. See 18-cv-2811-CRB, 2018 WL 3753748, at *4–6 (Aug. 8,

28

25
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1
2

2018) (appeal filed).
Besides the statement next to the check box, the only thing that comes close to mentioning
the MAVEN GIG mark during the enrollment process were the hyperlinks in the emails to the

4

Uber drivers, including www.mavendrive.com/gig/#!enroll and

5

www.mavendrive.com/gig/#!/emailConfirm/. See Jaising Decl. ¶¶ 6, 8. However, these hyperlinks

6

are to the website www.mavendrive.com and do not use the MAVEN GIG mark. Moreover, the

7

Ninth Circuit has held that using a hyperlink or a domain name in e-mail communications is not

8

sufficient to establish priority. See Brookfield, 174 F.3d at 1052 (explaining that use of

9

“moviebuff.com” in e-mail correspondence with lawyers and customers is “akin to putting one’s

10

mark ‘on a business office door sign, letterheads, architectural drawings, etc.’ or on a prototype

11
United States District Court
Northern District of California

3

displayed to a potential buyer, both of which have been held to be insufficient to establish

12

trademark rights.” (citations omitted)). Thus, the Court finds that the MAVEN GIG mark was not

13

sufficiently “used” during the enrollment process.

14
15
16

ii. GM’s Communications with Customers
a. Reservation Confirmation and Reservation Update Email
GM also points to evidence of post-enrollment use of the mark, meaning evidence of use

17

of the mark after customers had already signed-up. For example, GM cites the reservation

18

confirmation and reservation update emails as well as evidence confirming that those emails were

19

sent. See Mot. at 16. Specifically, the reservation confirmation and reservation update emails

20

displayed a large Maven mark header in the body of the email. See, e.g., Confirmation Emails at

21

GM559393–45; see also Section I.A.2.e. By contrast, the email’s text stated, “Welcome to Maven

22

Gig!” and provided instructions to let the parking attendant know “that you are looking for Maven

23

Gig” in font smaller than the large Maven mark header. Jaising Decl. ¶ 9; see also Confirmation

24

Emails at GM559393–45; Adkisson Decl., Exs. 16, 17, 18, & 35. The confirmation email was

25

signed “The Maven Team.” See Confirmation Emails at GM559393–45.

26
27
28

As an initial matter, the parties dispute the relevancy of these emails to the “sale” because
these emails occurred after the enrollment process. In particular, AAA points out that these emails
26
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

were an auto-generated reservation confirmation email sent after drivers decided to enroll in the

2

Uber pilot program and had already entered their payment and driver’s license information online.

3

See Opp’n at 16.

4

Regardless, even if the Court considers the reservation confirmation and reservation update

5

emails, like the statement next to the check box, this evidence does not constitute sufficient use of

6

the MAVEN GIG mark. First, the uses of the MAVEN GIG mark in these emails appear to be

7

“casual,” Dep’t of Parks & Rec. v, 448 F.3d at 1126, or “limited,” Sebastian Brown Prods. LLC,

8

2016 WL 5910817, at *9. For instance, the reservation confirmation and reservation update emails

9

displayed the “Maven” mark in large font in the header. See, e.g., Confirmation Emails at
GM559393–45. As the email image in Section I.A.2.e. of this Order shows, although, the email’s

11
United States District Court
Northern District of California

10

text stated, “Welcome to Maven Gig!” and provided instructions to let the parking attendant know

12

“that you are looking for Maven Gig,” this text was in font far smaller than the large Maven mark

13

header. See id. Further, the email was signed “The Maven Team.” Id. Thus, the limited email use

14

of the MAVEN GIG mark is less compelling when coupled with the prominent use of the large

15

Maven mark header and the signature of “The Maven Team.” See, e.g., Seal Shield, LLC, 2014

16

WL 11350292, at *4 (“For instance, even if a visitor to KlearKase’s Amazon.com page scrolled to

17

the Product Description section and saw the paragraph heading ‘Life Proof,’ that consumer would

18

have no more reason to associate KlearKase’s product with the term ‘Life Proof’ than with other

19

paragraph headings, like ‘Splash Proof.’”); id. (“[T]he same consumer would not directly associate

20

the KlearKase for Kindle 2 with the term ‘Life Proof’ after seeing the term once in an eight-

21

paragraph, 510–word press release or in a lone tweet.”); Vitality Anti-Aging Center and Med Spa,

22

LLC v. La Bella Donna Advanced Laser Med-Spas of North America, LLC, 5:08cv108, 2009 WL

23

348217, at *6 (W.D.N.C. Feb. 11, 2009) (finding that a mark did not serve the service mark

24

function of identifying the source of the services advertised because “[a]lthough the Mark was

25

present on the fliers, it was printed in small font, given little prominence compared to the other

26

text, and accompanied by several other slogans”).

27
28

Moreover, case law suggests that this minimal, two-time mention of MAVEN GIG in
27
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

email communications would not create in the minds of a customer any direct association between

2

the underlying service and the MAVEN GIG mark. Indeed, the Ninth Circuit has already found

3

that “mere use [of a mark] in limited e-mail correspondence with . . . a few customers is not”

4

sufficient to create an association among the public between the mark and the good or service. See

5

Brookfield Commc’ns Inc., 174 F.3d at 1052. For example, in Brookfield, the Ninth Circuit

6

distinguished the “limited e-mail correspondence with lawyers and a few customers,” which did

7

not constitute use sufficient to create an association, from what it identified as sufficient activity,

8

including an “announcement to 13 million comic book readers” in one case, and “the mailing of

9

430,000 solicitation letters with one’s mark to potential subscribers of a magazine” in another.
Brookfield, 174 F.3d at 1052 (citing Marvel Comics, Ltd. v. Defiant, 837 F. Supp. 546, 550

11
United States District Court
Northern District of California

10

(S.D.N.Y. 1993), and New West Corp., 595 F.2d at 1200); see also, e.g., Sebastian Brown Prods.

12

LLC, 2016 WL 5910817, at *9 (“[d]isplaying a ‘prototype’ and exchanging ‘limited e-mail

13

correspondence,’ is essentially the activity that Miller’s emails evince. This does not constitute use

14

of a mark that is ‘sufficiently public to identify or distinguish the marked goods in an appropriate

15

segment of the public mind as those of the adopter of the mark.’” (citations omitted)).

16

Finally, the emails themselves are private one-on-one communications with individuals,

17

not public use of the mark. As such, the reservation confirmation and reservation update emails do

18

not support a finding of use. See Brookfield Commc’ns Inc., 174 F.3d at 1051 (“The purpose of a

19

trademark is to help consumers identify the source, but a mark cannot serve a source-identifying

20

function if the public has never seen the mark.”); Matrix Motor Co. v. Toyota Motor Sales, U.S.A.,

21

Inc., 120 F. App’x 30, 31 (9th Cir. 2005) (finding no prior use where mark was not “visible to the

22

public” because it was used on interior car parts).

23
24

b. Customer Email Inquiries
Similarly, the sample communications between GM and customers, including a few email

25

inquiries from customers and the PDF presentation that GM sent to a few customers, are

26

insufficient to support a finding that the MAVEN GIG mark was “used” in connection with the

27

sales. See, e.g., Adkisson Decl., Ex. 21 (email dated 2/22/2017); id., Ex. 22 (emails dated

28

28
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

1/5/2017–1/6/2017); id., Ex. 23 (email dated 2/8/2017); id., Ex. 24 (email dated 3/15/2017); id.,

2

Exs. 25–28; id., Ex. 29 (email dated 3/2/2017 attaching PDF). Specifically, these sample

3

communications between GM and customers consisted of email inquiries and responses between

4

GM and customers regarding the car share service. In these emails, GM answered questions from

5

customers and: (1) confirmed that customers were interested in GM’s “Maven Gig program” (as

6

opposed to GM’s other services under Maven); (2) advised customers that their inquiry would be

7

forwarded to GM’s “Maven Gig” team; and (3) provided information to customers about the

8

MAVEN GIG service. See, e.g., Adkisson Decl., Ex. 21 (email dated 2/22/2017); id., Ex. 22

9

(emails dated 1/5/2017–1/6/2017); id., Ex. 23 (email dated 2/8/2017); id., Ex. 24 (email dated

10

United States District Court
Northern District of California

11

3/15/2017).
However, GM’s use of the MAVEN GIG mark in the sample communication emails

12

appeared limited and inconsistent, as well as potentially overshadowed by GM’s more prominent

13

use of the Maven mark. For instance, although some of GM’s emails discussed the MAVEN GIG

14

service, GM sent the emails from a Maven email address, such as [e-mail];

15

GM signed the emails “Maven Member Services”; and GM’s emails displayed a prominent Maven

16

mark. See, e.g., Adkisson Decl., Exs. 21 & 23. In addition, the PDF presentation that GM sent out

17

mentions the Maven Website, the “Maven Lease Agreement,” Maven insurance, the “Maven

18

vehicle,” and the “Maven bill.” Id., Ex. 21. Further, several of GM’s emails referred to the service

19

inconsistently, including “[o]ur program with Uber,” “[o]ur Uber program,” “[o]ur partnership

20

with Uber.” See, e.g., id.; id., Ex. 29. As discussed above, GM’s use of different names may

21

diminish “the public’s ability to associate a single mark” with the service “as it is unclear which

22

mark to attach to the [service].” Nexsan Techs., Inc., 260 F. Supp. 3d at 77; MicroStrategy Inc.,

23

245 F.3d at 342 (finding that use of mark did not constitute trademark use when “[u]nlike certain

24

MicroStrategy trademarks, e.g., ‘Intelligent E–Business,’ MicroStrategy [did] not consistently

25

place[ ] ‘Intelligence Everywhere’ on a particular part of the page, or in a particular type, or label[

26

] it with ‘TM,’ or consistently use[ ] a distinctive font, color, typeset or any other method that

27

makes ‘its nature and function readily apparent and recognizable without extended analysis’”); see

28

29
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

also Vitality Anti-Aging Center and Med Spa, LLC, 2009 WL 348217, at *6 (finding that a mark

2

did not serve the service mark function of identifying the source of the services advertised because

3

“[a]lthough the Mark was present on the fliers, it was printed in small font, given little prominence

4

compared to the other text, and accompanied by several other slogans”).

5

As a result of GM’s limited and casual uses, GM’s argument that its use of the MAVEN

6

GIG mark created an association in the minds of customers is dubious. GM points to several of the

7

sample communication emails between GM and customers to say that there is evidence in the

8

record that customers themselves actually referred to the MAVEN GIG service in their email

9

inquiries beginning in January 9, 2017, and therefore customers associated MAVEN GIG with
GM’s car share service. See Reply at 7–8 (citing Adkisson Decl., Exs. 27 & 28); see also

11
United States District Court
Northern District of California

10

Adkisson Decl., Exs. 21, 25, & 26. However, the sufficiency of these few sample communication

12

emails between GM and customers is called into question when compared to other sample

13

communications demonstrating that customers had no idea what the service was called. See, e.g.,

14

Adkisson Decl., Ex. 22 (customer referring only to “Maven” in 1/5/17 email); id., Ex. 23

15

(customer referring only to “Maven” and “Uber” in 2/8/17 email); id., Ex. 24 (customer referring

16

only to “Maven Team” in 3/14/17 email); id., Ex. 29 (customer referring to “Uber driver program”

17

in 3/1/17 email); Bowler Decl., Exs. 31 & 35 (customer referring to “Uber/Maven Program” in

18

11/30/16 and 12/11/16 emails); id., Ex. 36 (customer using no mark to describe application in

19

12/1/16 email). Thus, these sample communications between GM and customers provide evidence

20

that GM’s use of different names may have diminished the customer’s ability to associate a single

21

mark with the MAVEN GIG service as the evidence shows that it is was unclear to customers

22

“which mark to attach to the [service].” Nexsan Techs., Inc., 260 F. Supp. 3d at 77 (finding no

23

priority when “use of the mark [was] insufficiently clear or repetitive” such that the “public’s

24

ability to associate a single mark with the tested goods” was diminished).

25
26

Next, like the reservation confirmation and update emails, the subset of the sample
communications between GM and customers that are post-enrollment communications between

27
28

30
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

GM and customers9 raise questions about whether these communications are relevant to

2

determining that the MAVEN GIG mark was “used” in connection with the sales because these

3

emails arrived after drivers had already enrolled for the car share service.
Finally, as already emphasized above, the sample communications between GM and

5

customers are insufficient to establish use because the Ninth Circuit has already explained that the

6

mere use of a mark in limited e-mail correspondence with a few customers is not sufficient to

7

create an association between the mark and the service. See Brookfield Commc’ns Inc., 174 F.3d at

8

1052. Here, GM’s emails with customers regarding the car share service similarly fails because

9

these communications were private, one-on-one email communications in which GM clarifies or

10

assists a driver with the car share service. See also T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372,

11
United States District Court
Northern District of California

4

1376 (Fed. Cir. 1996) (“Likewise with PacTel’s slide show presentations to seven potential

12

customers: we discern nothing in the record to indicate whether this group of customers

13

constituted more than a negligible portion of the relevant market.”); Sebastian Brown Prods. LLC,

14

2016 WL 5910817, at *9 (“[d]isplaying a ‘prototype’ and exchanging ‘limited e-mail

15

correspondence,’ . . . does not . . . ‘distinguish the marked goods in an appropriate segment of the

16

public mind as those of the adopter of the mark.’” (citations omitted)).

17

iii. The MAVEN GIG Tab on Maven Website

18

Finally, the last evidence cited by GM is evidence that beginning around January 31, 2017,

19

existing drivers could make new reservations to rent cars through the MAVEN GIG service on the

20

Maven Website by clicking to expand a section of the website that was specifically titled “Maven

21

Gig.” Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459. AAA challenges this evidence

22

because the tab was only accessible to existing users with a Maven account. Opp’n at 19. That is,

23

the “webpage could only be reached after a user logs on to the Maven Drive website and enters

24

their [Maven] login information. Customers without a [Maven] or an Uber pilot account would

25
26
27
28

9

See, e.g., Adkisson Decl., Ex. 21 (email inquiring as to the total cost when picking up car); id.,
Ex. 25 (email inquiring how to return rented vehicle); id., Ex. 26 (email inquiring how to swap
cars); id., Ex. 27 (email requesting to cancel Maven account).
31
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

never have encountered MAVEN GIG.” Id.; see Jaising Decl. ¶ 17 (showing screenshot of access

2

to the Maven Gig tab only after logging into Maven account). The Court agrees with AAA that the

3

fact that only an existing Maven account user could see this tab raises questions about the private

4

use of the mark on the webpage and how many drivers actually came in contact with this use of

5

the mark. See Brookfield Commc’ns Inc., 174 F.3d at 1051 (“The purpose of a trademark is to help

6

consumers identify the source, but a mark cannot serve a source-identifying function if the public

7

has never seen the mark.”). More importantly, GM’s use of the MAVEN GIG mark in this manner

8

is overshadowed by the prominent use of the Maven mark on the Maven Website and during the

9

entire enrollment process. The prominent use of the Maven mark instead of the MAVEN GIG
mark diminishes the public’s ability to associate MAVEN GIG with the car share service “as it is

11
United States District Court
Northern District of California

10

unclear which mark to attach to the [service].” See Nexsan Techs., Inc., 260 F. Supp. 3d at 77.

12
13

b. Evidence that GM was Hiding MAVEN GIG Mark
The Court also agrees with AAA that evidence shows that GM purposefully hid the

14

MAVEN GIG mark during the Uber pilot program. This undermines GM’s claim that the

15

MAVEN GIG mark was sufficiently used in conjunction with the actual sale of the car share

16

service in a public manner to create an association among customers between the MAVEN GIG

17

mark and GM’s car share service, and whether GM’s actual sales are, in turn, relevant.

18

For instance, before GM entered into its pilot program with Uber, GM had a program with

19

Lyft called “EXPRESS DRIVE” for the use of GM vehicles in providing Lyft services.

20

Bhattacharya Tr. at 33:19–34:8; Steyn Tr. at 20:11–25:9. Before the fall of 2016, however, GM’s

21

relationship with Lyft and EXPRESS DRIVE became strained due to unprofitability and

22

unaligned incentives. Bhattacharya Tr. at 50:10–51:6; Steyn Tr. at 24:16–25:10; 53:18–23. In

23

particular, GM wanted direct contact with the drivers. Steyn Tr. at 53:18–23. Therefore, in the

24

summer of 2016, GM began exploring an alternative “platform-agnostic” model where GM would

25

maintain a direct relationship with drivers regardless of the business partnership. Id.; Stooke Tr. at

26

37:13–38:22.

27
28

The record demonstrates that because GM had not given Lyft formal notice that GM was
32
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

exiting its EXPRESS DRIVE program with Lyft, and because Lyft and Uber were competitors,

2

GM was still sensitive about its Lyft partnership when GM began its relationship with Uber.

3

Therefore, GM wanted to get “Express Drive unwound” before they got “[MAVEN GIG] up and

4

running.” Steyn Tr. at 55:21–57:25, 89:20–90:20; Bhattacharya Tr. at 148:13–151:4 (“[W]e knew

5

the entire conversation would be about Uber and Lyft, in any case, and that the message we

6

wanted to tell would get lost.”); see also Bowler Decl., Ex. 15. Moreover, GM wanted MAVEN

7

GIG to be a platform-agnostic, multi-partner product, and knew that if GM “tried to message

8

extensively about the platform agnostic aspects of [MAVEN GIG], the fact that [GM] only had

9

one-co-marketing partner to begin with didn’t look great with that.” Bhattacharya Tr. at 150:13–

10

151:4. Therefore, GM did not have a marketing campaign or intend to market MAVEN GIG until

11
United States District Court
Northern District of California

1

it had other partners besides Uber. Id. at 59:4–60:8, 156:1–158:18, 214:8–11; see also Bowler

12

Decl., Ex. 16. Thus, the MAVEN GIG mark is not mentioned in the media talking points or the

13

official communications plan regarding GM’s pilot program with Uber. Steyn Tr. at 110:21–

14

112:24; Media Briefing Talking Points; Bhattacharya Tr. at 152:12–155:25; Communications

15

Plan.

16

Moreover, evidence in the record suggests that GM issued a press release on May 3, 2017

17

because the MAVEN GIG service was not technically public yet at that time. See 5/3/2017

18

MAVEN GIG Press Release; Bhattacharya Tr. at 190:7–14, 192:23–193:9; Bowler Decl., Ex. 24

19

(“Note that Gig isn’t technically public yet”); id., Ex. 25 (4/17/2017 Email stating “we aren’t

20

announcing the Gig business until 2 weeks from now.”); id., Ex. 26 (2/25/2017 emails stating “I

21

just wanted to make sure we were on the same page in respect to communications. The direction is

22

to NOT make a lot of noise around the Australian Maven Gig partnership with Uber in March. So

23

please, do not issue any press releases” and that “we are 100% aligned on not doing anything

24

external during our pilot.”). However, GM disputes this evidence and asserts that the May 3, 2017

25

was merely an “expansion” of the MAVEN GIG service. See Mot. at 8–9.

26

The Court concludes that evidence that GM sought to play down the MAVEN GIG mark

27

during its pilot program with Uber supports the inference that the uses of the MAVEN GIG mark

28

33
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

at 1376–77. In making this determination, courts examine the “totality of the circumstances” by

2

examining factors, such as “the genuineness and commercial character of the activity”; “the scope

3

of the non-sales activity relative to what would be a commercially reasonable attempt to market

4

the service”; “the degree of ongoing activity of the holder to conduct the business using the mark”;

5

and “the amount of business transacted.” Chance, 242 F.3d at 1159.
The Court finds that GM’s analogous use arguments fail. First, GM relies on much of the

6
7

same evidence and arguments that GM relied on for its actual use argument, like the statement

8

next to the check box on the Maven Website and the emails with customers. See Mot. at 18–19.

9

These arguments fail for the same reasons discussed in Section III.A.1. For example, the check
box statement was not “designed to attract the attention of the viewer to” the MAVEN GIG mark

11
United States District Court
Northern District of California

10

itself, and therefore it fails to create any association between the mark[ ] and the . . . service[ ].”

12

Dep’t of Parks & Rec., 448 F.3d at 1127. Further, exchanging “limited e-mail correspondence,”

13

Brookfield, 174 F.3d at 1052, does not constitute use of a mark that is “sufficiently public to

14

identify or distinguish the marked goods in an appropriate segment of the public mind as those of

15

the adopter of the mark.” Dep’t of Parks & Rec. v, 448 F.3d at 1126. For example, in Brookfield,

16

the Ninth Circuit distinguished the “limited e-mail correspondence with lawyers and a few

17

customers,” which did not constitute use sufficient to create an association, from what it identified

18

as sufficient activity, including an “announcement to 13 million comic book readers” in one case,

19

and “the mailing of 430,000 solicitation letters with one’s mark to potential subscribers of a

20

magazine” in another. Brookfield, 174 F.3d at 1052 (citing Marvel Comics, Ltd., 837 F. Supp. at

21

550, and New West Corp., 595 F.2d at 1200); see also Pactel Teletrac, 77 F.3d at 1376 (“Likewise

22

with PacTel’s slide show presentations to seven potential customers: we discern nothing in the

23

record to indicate whether this group of customers constituted more than a negligible portion of

24

the relevant market.”).11

25
26
27
28

11

GM also argues that 800 customers reserved a car through the Maven Website and received a
confirmation email. Reply at 12. However, this figure is not supported by GM’s citations to the
record. See Jaising Decl. ¶ 23; see also Customer Data. Moreover, GM’s use of the Maven mark
diminished the public’s ability to associate GM’s car share service with the MAVEN GIG mark.
35
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

In addition, the Court found GM’s use of the MAVEN GIG mark in GM’s email

2

communications with customers limited and inconsistent, as well as potentially overshadowed by

3

more prominent use of the Maven mark. For example, the reservation confirmation email bore a

4

large Maven mark header, while the email’s text stated, “Welcome to Maven Gig!” in font smaller

5

than the large Maven mark header. Confirmation Emails at GM559393–45. The email exchanges

6

with customers similarly displayed limited uses of the MAVEN GIG mark as compared to the

7

Maven mark. For instance, GM sent the emails from a Maven email address, such as

8

[e-mail]; GM signed the emails “Maven Member Services”; and GM’s

9

emails displayed a prominent Maven mark. See, e.g., Adkisson Decl., Exs. 21 & 23. In addition,
the PDF presentation that GM sent out mentions the Maven Website, the “Maven Lease

11
United States District Court
Northern District of California

10

Agreement,” Maven insurance, the “Maven vehicle,” and the “Maven bill.” Id., Ex. 21. Further,

12

several of GM’s emails referred to the service inconsistently, including “[o]ur program with

13

Uber,” “[o]ur Uber program,” “[o]ur partnership with Uber.” See, e.g., id.; id., Ex. 29. As

14

discussed above, the Court found that GM’s use of different names may diminish “the public’s

15

ability to associate a single mark” with the service “as it is unclear which mark to attach to the

16

[service].” Nexsan Techs., Inc., 260 F. Supp. 3d at 77.

17

Second, GM points to its communications with potential partners like Instacart, Grubhub,

18

and Roadie as activities constituting analogous use. Mot. at 18–19. However, these businesses are

19

not the “appropriate segment of the public.” Pactel Teletrac, 77 F.3d at 1376. As even GM agrees

20

in its opening brief, the “appropriate segment of the public mind” is the “segment of the

21

purchasing public for whom the services are intended.” See Mot. at 17 (citing Pactel Teletrac, 77

22

F.3d at 1376). The Court agrees with AAA that the appropriate segment of the public is members

23

of the public who are likely to drive for a car share service. Opp’n at 20. Potential partners of the

24

service are not the appropriate segment of the public.

25

Moreover, GM’s communications with potential partners like Instacart, Grubhub, and

26

Roadie merely show that GM was trying to find more partners with whom to work to ultimately

27

target the appropriate segment of the public. This looks more like “mere preparation” to use the

28

36
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

MAVEN GIG mark in commerce, which is not sufficient. See Sebastian Brown Prods. LLC, 2016

2

WL 5910817, at *9. For instance, in Sebastian Brown Prods. LLC, this Court found insufficient

3

the fact that the party had “reached out and discussed his ‘business project,’ ‘proposal,’ and ‘idea’

4

to individuals in various marketing and creative industries.” 2016 WL 5910817, at *8. This Court,

5

citing Ninth Circuit law, explained that putting a mark on a “prototype displayed to a potential

6

buyer,” among other things, was not sufficient. Id. at *9 (citing Brookfield, 174 F.3d at 1052).

7

Moreover, these private discussions with potential partners are not “sufficiently public.” Id. at *9.

8

Further, even if the Court were to consider the communications with the potential partners

9

as evidence that GM was targeting the “appropriate segment of the public mind,” the limited
nature of these communications with potential partners would still be insufficient for the public to

11
United States District Court
Northern District of California

10

associate the mark with the service. See id. (“[N]o goodwill is created when a mark is ‘seen by the

12

consuming public only in very limited quantity.’” (citing E. & J. Gallo Winery, 1989 WL 159628,

13

at *3)); Pactel Teletrac, 77 F.3d at 1376 (“Likewise with PacTel’s slide show presentations to

14

seven potential customers: we discern nothing in the record to indicate whether this group of

15

customers constituted more than a negligible portion of the relevant market.”). Further, the

16

marketing to potential partners demonstrates that the MAVEN GIG mark was used by GM in a

17

limited and casual manner in the emails and slides and only in private communications.

18

Third, GM cites post-April 17, 2017 evidence to show that GM’s “use of the mark[ ] was

19

continuous and not interrupted.” Dep’t of Parks & Rec., 448 F.3d at 1126; Reply at 12.

20

Specifically, GM cites evidence that GM added new business partners, expanded marketing and

21

paid advertising activities, received substantial news coverage after GM issued its May 3, 2017

22

press release, and earned revenue through August 2018. Mot. at 20. Nonetheless, the Court is not

23

persuaded that GM’s use of the MAVEN GIG mark after May 3, 2017, directs this Court to

24

conclude that under the “totality of the circumstances,” GM had priority prior to April 17, 2017.

25

This is because, as already discussed, GM had continuously downplayed the use of the MAVEN

26

GIG mark before GM had achieved its goals of obtaining additional partners and becoming

27

platform agnostic.

28

37
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

In sum, the Court finds that the totality of GM’s evidence does not establish that GM’s

2

pre-sale activities rose to the level of “sufficiently public” use of the MAVEN GIG mark so as to

3

“identify or distinguish the marked goods in an appropriate segment of the public mind.” Chance,

4

242 F.3d at 1158. Therefore, having rejected both GM’s actual sales and analogous sales

5

arguments, the Court DENIES GM’s motion for summary judgment on priority of use.

6
7

B. Summary Judgment is Warranted on Monetary Remedies
GM argues in the alternative that GM is entitled to summary judgment on the issue of

8

monetary remedies because (1) there is no evidence that GM acted willfully; and (2) there is no

9

evidence that AAA has experienced any actual damages as a result of GM’s use of the MAVEN
GIG mark. Mot. at 20–25. After addressing each argument below, the Court GRANTS GM’s

11
United States District Court
Northern District of California

10

motion for summary judgment on willfulness and on actual damages.

12

1. There is No Evidence of Willfulness

13

GM first argues that there is no evidence of willfulness, and thus that AAA cannot

14
15

disgorge GM’s profits. Mot. at 20–22. The Court agrees.
“Under the remedies provision of the Lanham Act, a court may award” the “defendant’s

16

profits.” Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 439 (9th Cir. 2017) (citing

17

15 U.S.C. § 1117(a)). In the Ninth Circuit, a plaintiff seeking disgorgement of a defendant’s

18

profits in a trademark infringement case must demonstrate that the defendant willfully infringed

19

the plaintiff’s trademark. See id. “Willful infringement carries a connotation of deliberate intent to

20

deceive.” Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400, 1405 (9th Cir. 1993), abrogated on

21

other grounds by SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., 839 F.3d 1179 (9th Cir.

22

2016). “Courts generally apply forceful labels such as ‘deliberate,’ ‘false,’ ‘misleading,’ or

23

‘fraudulent’ to conduct that meets this standard.” Id. In particular, disgorgement is permitted only

24

in those cases where the infringement is “willfully calculated to exploit the advantage of an

25

established mark” or where the defendant is “attempting to gain the value of an established name

26

of another.” Id. at 1405–06 (citations omitted). Courts have routinely granted summary judgment

27

against plaintiff’s request for disgorgement when the plaintiff has failed to raise a genuine dispute

28

38
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

about willfulness. See, e.g., Hydramedia Corp. v. Hydra Media Grp., Inc., 392 F. App’x 522, 522–

2

23 (9th Cir. 2010) (finding district court did not err in granting summary judgment as to

3

willfulness and profits where “[d]efendant was not trading off [p]laintiff’s name” and

4

“[d]efendant’s infringement was not willful”); Spin Master, Ltd. v. Zobmondo Entm’t, LLC, 944 F.

5

Supp. 2d 830, 849 (C.D. Cal. Mar. 7, 2012) (“Plaintiffs have not raised a genuine dispute over

6

willfulness for disgorgement purposes and summary adjudication of this theory is warranted.”).

7
8
9

a. AAA’s Dispute Regarding Definition of Willfulness
As an initial matter, although a showing of willfulness is clearly required by Stone Creek,
Inc. and Lindy Pen Co., AAA disputes what showing is necessary for willfulness. See Opp’n at
23–25. In particular, AAA cites to cases regarding the two recognized theories of consumer

11
United States District Court
Northern District of California

10

confusion that support a claim for trademark infringement: forward confusion and reverse

12

confusion. Id. at 23–25 (citing Marketquest Grp., Inc. v. BIC Corp., 862 F.3d 927 (9th Cir. 2017);

13

Dreamwerks Prod. Grp. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998); Quia Corp. v. Mattel, Inc.,

14

No. C 10-1902 JF (HRL), 2011 WL 2749576 (N.D. Cal. Jul. 14, 2011)). “Forward confusion

15

occurs when consumers believe that goods bearing the junior mark came from, or were sponsored

16

by, the senior mark holder.” Marketquest Grp., Inc., 862 F.3d at 932 (citation omitted). “[R]everse

17

confusion occurs when consumers dealing with the senior mark holder believe that they are doing

18

business with the junior one.” Id. (citation omitted). Relying specifically on the reverse confusion

19

theory, AAA emphasizes that in the case of reverse confusion, typically “neither junior nor senior

20

user wishes to siphon off the other’s goodwill.” Id. (citing Dreamwerks Prod. Grp., 142 F.3d at

21

1130). Therefore, AAA argues that because it now plans to bring a reverse confusion theory, AAA

22

can show willfulness in the disgorgement context based only on GM’s knowledge of AAA’s mark

23

at the time of infringement and that GM’s knowledge is demonstrated by AAA’s April 17, 2017

24

public launch or May 5, 2017 cease and desist letter. Opp’n at 23–24.

25

The Court finds that AAA has incorrectly interpreted the law on willfulness in the

26

disgorgement context. In particular, the cases on which AAA relies are likelihood of confusion

27

cases (which is part of the liability inquiry), not disgorgement cases. See, e.g., Marketquest Grp.,

28

39
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

Inc., 862 F.3d at 932–935 (analyzing likelihood of confusion for purposes of finding trademark

2

infringement); Dreamwerks Prod. Grp., 142 F.3d at 1130 (same). Moreover, these cases do not

3

even address the issue of disgorging a defendant’s profits. As such, the Court finds these

4

“likelihood of confusion” cases have no applicability in the Court’s disgorgement analysis.

5

Moreover, AAA has identified no authority, nor has the Court found any, where a court

6

has disgorged a defendant’s profits in a reverse confusion case based only on mere knowledge.

7

Further, AAA has identified no authority, nor has the Court found any, where a court has

8

disgorged a defendant’s profits in any case based only on mere knowledge. AAA has conflated

9

what is sufficient for purposes of likelihood of confusion at the liability stage with what is
sufficient to find “willfulness” in the disgorgement context at the remedies stage. Indeed, the

11
United States District Court
Northern District of California

10

Ninth Circuit’s decisions in Stone Creek, Inc. and Lindy Pen Co., emphasize that in order to prove

12

willfulness so as to be entitled to disgorgement of profits, a plaintiff must show that the

13

infringement is “willfully calculated to exploit the advantage of an established mark” or that GM

14

is “attempting to gain the value of an established name of another.” Lindy Pen Co., 982 F.2d at

15

1405–06. Mere knowledge, therefore, is not sufficient.

16

Further, the Court’s independent review of the case law indicates that AAA cannot rely on

17

a reverse confusion theory to disgorge GM’s profits. For instance, several cases suggest that

18

because reverse confusion cases do not involve an intent to exploit an existing mark, reverse

19

confusion cases are not entitled to a finding of willfulness under Lindy Pen Co., and thus to

20

infringer’s profits. See, e.g., Scat Enters., Inc. v. FCA US LLC, No. CV 14-7995-R, 2017 WL

21

5896182, at *2 (C.D. Cal. Jun. 8, 2017) (“Plaintiff is barred as a matter of law from seeking

22

disgorgement of Defendant’s profits under its reverse confusion theory.”); Novadaq Techs., Inc. v.

23

Karl Stroz GmbH & Co. K.G., No. 14-cv-4853-PSG, 2015 WL 9028123, at *2 (N.D. Cal. Dec. 16,

24

2015) (“An intent to exploit an existing mark ‘is necessarily absent in a reverse confusion case,’

25

and Lindy Pen thus precludes an accounting of profits.” (citation omitted)); id. at *3 (“Novadaq

26

correctly notes that this court’s interpretation generally shields defendants in reverse confusion

27

cases from having to disgorge their profits. But Lindy Pen clearly holds that an accounting of

28

40
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

profits from an infringer requires willful exploitation of the plaintiff’s mark.”); see also Sands,

2

Taylor & Woods Co. v. Quaker Oats Co., 978 F.2d 947, 961 (7th Cir. 1992) (stating that intent to

3

trade on a good will or reputation “is necessarily absent in a reverse confusion case”). Therefore,

4

AAA has incorrectly interpreted the law on willfulness in the disgorgement context.

5

b. AAA Fails to Point to Evidence Supporting a Finding of a Genuine Issue as
to Willfulness

6
Pursuant to the Ninth Circuit’s decisions in Stone Creek, Inc. and Lindy Pen Co., in order
7
to prove willfulness so as to be entitled to disgorgement of GM’s profits, AAA must show that
8
GM’s infringement is “willfully calculated to exploit the advantage of an established mark” or that
9
GM is “attempting to gain the value of an established name of another.” Lindy Pen Co., 982 F.2d
10
at 1405–06.
11
United States District Court
Northern District of California

The Court finds that GM is entitled to summary judgment on willfulness and disgorgement
12
of profits. First, GM argues that it is entitled to summary judgment as a matter of law because GM
13
acted with a reasonable, good faith belief that it owned prior rights in the MAVEN GIG mark. See
14
San Miguel Pure Foods Co., Inc. v. Rama Inter. Corp., 625 F. App’x 322, 325 (9th Cir. 2015)
15
(“Infringement is not willful if the party reasonably believes that its usage of a trademark is not
16
barred by law.” (citing Int’l Olympic Comm. v. San Francisco Arts & Athletics, 781 F.2d 733, 738
17
(9th Cir. 1986)). In support, GM persuasively identifies evidence demonstrating that GM’s pre18
existing plan to announce MAVEN GIG was not impacted by AAA’s public announcement of its
19
GIG car share service and that GM “did not, and do[es] not, consider AAA’s GIG Car Share to be
20
relevant to [GM’s] Maven Gig business as the two businesses have different geographic
21
footprints, use cases, and customers.” See Mot. at 22 (citing Bhattacharya Decl. ¶ 37; Stooke Tr. at
22
117:22–24; Bhattacharya Tr. at 205:24–206:18). Moreover, the evidence shows that when GM
23
originally selected the MAVEN GIG mark in September 2016, GM had no knowledge of AAA’s
24
mark, nor could GM have knowledge because AAA did not select its GIG mark until January 27,
25
2017 and did not begin using GIG in commerce until April 17, 2017. Courts in the Ninth Circuit
26
routinely grant summary judgment on the issue of willfulness where the undisputed facts
27
28

41
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

demonstrate that the defendant selected the disputed mark without knowledge of the plaintiff’s

2

mark. See, e.g., Scat Enters., Inc., 2017 WL 5896182, at *2 (granting defendant’s motion for

3

summary judgment on the issue of disgorgement and explaining that defendant had no knowledge

4

of plaintiff’s mark when it launched the disputed mark); Blau v. YMI Jeanswear, Inc., No. CV 02-

5

09511 FMC (SHSx), 2004 WL 5313967, at *6 (C.D. Cal. Jan. 2, 2004) (“At the time Defendants

6

selected the “YMI lets UBU” slogan, Defendants had no knowledge of Plaintiff’s trademark of

7

any products labeled U.B.U.”); Groupion, LLC v. Groupon, Inc., 859 F. Supp. 2d 1067, 1081–82

8

(N.D. Cal. 2012) (same).

9

In its opposition, AAA fails to “set forth specific facts showing that there is a genuine issue
for trial,” Fed. R. Civ. P. 56(e), because AAA fails to set forth any facts showing that GM’s

11
United States District Court
Northern District of California

10

infringement is “willfully calculated to exploit the advantage of an established mark” or that GM

12

is “attempting to gain the value of an established name of another.” Lindy Pen Co., 982 F.2d at

13

1405–06. Indeed, AAA cites to AAA’s April 17, 2017 public launch and May 5, 2017 cease and

14

desist letter to support the fact that GM had knowledge. See Opp’n at 24–25. However, as already

15

discussed, evidence of mere knowledge is insufficient to show willfulness in the disgorgement

16

context. Moreover, “the failure to stop using a mark after receiving a cease and desist letter does

17

not show willful infringement and is not necessarily indicative of bad faith.” Groupion, LLC v.

18

Groupon, Inc., 826 F. Supp. 2d 1156, 1165 (N.D. Cal. 2011) (citation omitted).

19

AAA next asserts that “[s]ince launching the MAVEN GIG services, GM has not made

20

efforts to correct statements made by third-parties referring to the service as something other than

21

MAVEN GIG, including third parties’ reference to the MAVEN GIG services as simply ‘Gig,’

22

and [has] continued to use the MAVEN GIG Mark despite knowledge of this confusion.” Id. at 25

23

(citing Bowler Decl., Exs. 63 & 83). However, AAA does not cite to evidence showing that GM

24

failed to correct statements made by third parties. Indeed, the only evidence that AAA cites are

25

two internal GM email summaries of articles that show the media coverage surrounding the May

26

3, 2017 MAVEN GIG announcement. The first email, dated May 4, 2017, contains a bullet point

27

list of articles and hyperlinks, including a bullet point stating: “Android Headlines: Maven’s New

28

42
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

1

Gig Service Allows Uber Drivers to Rent Chevy Bolts.” Bowler Decl., Ex. 63. The second email,

2

dated May 9, 2017, contains the “GM Daily News Digest,” with summaries of articles about GM,

3

including an article stating that GM launched “a new program last week called Gig.” id., Ex. 83.

4

These internal GM emails with summaries of MAVEN GIG media coverage do not create a

5

genuine issue on willfulness because these GM emails do nothing to support a finding that GM

6

attempted to exploit the advantage of AAA’s GIG mark or that GM attempted to gain the value of

7

AAA’s GIG name. See Lindy Pen Co., 982 F.2d at 1405–06.

8
9

Accordingly, having found that AAA fails to demonstrate the existence of a genuine issue
of material fact as to willfulness, the Court GRANTS GM’s motion for summary judgment on
willfulness. Therefore, AAA cannot disgorge GM’s profits. See, e.g., Hydramedia Corp., 392 F.

11
United States District Court
Northern District of California

10

App’x at 522–23 (finding district court did not err in granting summary judgment as to willfulness

12

and profits where “[d]efendant was not trading off [p]laintiff’s name” and “[d]efendant’s

13

infringement was not willful”); Spin Master, Ltd. v, 944 F. Supp. 2d at 849 (“Plaintiffs have not

14

raised a genuine dispute over willfulness for disgorgement purposes and summary adjudication of

15

this theory is warranted.”); Scat Enters., Inc., 2017 WL 5896182, at *2 (granting summary

16

judgment when defendant plaintiff “failed to proffer any evidence demonstrating that [d]efendant

17

willfully infringed its ‘Scat’ mark”); Groupion, LLC, 859 F. Supp. 2d at 1081–82 (granting

18

defendant’s motion for summary judgment on plaintiff’s request for defendant’s profits where

19

plaintiff failed to submit any evidence of willful infringement); Blau, 2004 WL 5313967, at *6

20

(granting summary judgment on profits when plaintiff did not provide “sufficient evidence to raise

21

a triable issue of fact as to whether [d]efendants willfully infringed [p]laintiff’s mark.”), aff’d, 129

22

F. App’x 385 (9th Cir. 2005).

23

2. There is No Evidence that AAA Has Experienced Actual Damages

24

GM next argues that it is entitled to summary judgment on actual damages because there is

25

no evidence that AAA has experienced any actual damages as a result of GM’s use of the

26

MAVEN GIG mark. Mot. at 20, 23–25. The Court agrees.

27
28

“Section 35 of the Lanham Act, 15 U.S.C. § 1117(a), governs the award of monetary
43
Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

remedies in trademark infringement cases and provides for an award of . . . any damages

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sustained by the plaintiff.” Lindy Pen Co., 982 F.2d at 1405. To recover actual damages in a

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trademark infringement case, a plaintiff must prove “the fact and the amount of damage” Id. at

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1407. “Damages are typically measured by any direct injury which a plaintiff can prove, as well as

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any lost profits which the plaintiff would have earned but for the infringement.” Id. Compensatory

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damages must be established with “reasonable certainty” and not be based on speculation or

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conjecture. McClaren v. Plastic Indus., Inc., 97 F.3d 347, 361 (9th Cir. 1996) (citations omitted).

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The Ninth Circuit has recognized that claims for damages under the Lanham Act may be properly

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disposed of on summary judgment. See Committee for Idaho’s High Desert, Inc. v. Yost, 92 F.3d

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814, 823 (9th Cir. 1996) (finding that the district court was correct to grant summary judgment on

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United States District Court
Northern District of California

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the claim for damages in trademark case because plaintiff failed to create a genuine issue of

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material fact as to its actual damages); see also Strike It Rich, Inc. v. Joseph Schlitz Brewing Co.,

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505 F. Supp. 89, 91 (D.D.C. 1980) (finding that defendant’s motion for partial summary judgment

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should be granted in service mark infringement case when the plaintiff repeatedly “failed to

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provide this Court or defendant with any proof of damage that could be tested or studied,” but

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allowing claim for injunctive relief to stand).

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The Court finds that GM has met its burden of “identifying those portions of the pleadings,

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discovery and affidavits that demonstrate the absence of a genuine issue of material fact” on the

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question of actual damages. See Celotex Corp., 477 U.S. at 323. GM identifies evidence in the

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record where AAA repeatedly failed to identify damages. First, none of AAA’s written responses

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or documents identify any actual damages. See Adkisson Decl., Ex. 46 (“Resp. to GM’s 6th

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Interrogs.”) at 1–5. Second, AAA’s witnesses testified that they were unaware of any specific

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instances of consumers downloading the MAVEN GIG app under the mistaken belief that it was

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AAA’s GIG car share app, or vice versa. See, e.g., Voges Tr. at 166:23–167:06, 172:12–173:4,

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177:22–178:3; Hetke Tr. at 203:18–204:14, 205:13–23. Third, AAA’s damages expert, Scott

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Phillips, could not identify any evidence of actual damages. For instance, during Mr. Phillip’s

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deposition, Mr. Phillips admitted that he has not seen any evidence that AAA has experienced any

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Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

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quantifiable damages. Adkisson Decl., Ex. 57 (“Phillips Tr.”) at 36:18–24, 38:15–43:22, 44:19–

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46:20, 48:6–49:22, 52:10–53:13, 57:4–59:6, 61:7–62:11, 63:4–8, 67:1–68:23, 70:7–72:12. In his

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report, Mr. Phillips offers no opinion as to whether AAA has actually experienced any harm;

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instead, he only states that AAA believes it has been harmed. See Adkisson Decl., Ex. 54

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(“Phillips Rpt.”) ¶¶ 36–38 (stating “A3 Mobility believes that it has been damaged”; “A3 Mobility

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believes that . . . A3 Mobility may suffer damages in the future”; and “I have not made an effort to

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quantify actual damages at this time”). Finally, GM’s expert, Ms. Distler, was not aware of any

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evidence of actual damages. Distler Rpt. ¶¶ 100, 108 (“From my review of the evidence produced

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in this matter, I am not aware of any evidence that supports Plaintiffs’ claim that Defendants’ use
of the MAVEN GIG trademark resulted in any actual damages to Plaintiffs. To my knowledge,

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United States District Court
Northern District of California

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Plaintiffs did not identify any such instances during fact discovery.”).

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In its opposition, AAA fails to “set forth specific facts showing that there is a genuine issue

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for trial.” Fed. R. Civ. P. 56(e). Indeed, AAA devotes only a single paragraph to the issue of actual

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damages. See Opp’n at 22–23. AAA does not challenge GM’s assertions that: (1) AAA did not

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identify any actual damages in its discovery responses or documents; (2) AAA’s witnesses were

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unable to identify any actual damages during their depositions; and (3) AAA’s own damages

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expert was unable to identify any evidence of actual damages. Further, AAA does not address the

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case law cited by GM in support of its motion for summary judgment. Moreover, as discussed

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further below, neither AAA’s case law nor evidence show a genuine issue for trial.

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First, the case cited by AAA, Villagomes v. Lab. Corp. of Am., does not support AAA’s

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position. Villagomes v. Lab. Corp. of Am., is a case from the United States District Court for the

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District of Nevada involving a claim for negligence. 783 F. Supp. 2d 1121, 1128–29 (D. Nev.

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2011). In that case, the court declined to enter summary judgment on plaintiff’s negligence claim

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based on her failure to disclose a computation of damages as required by Federal Rule of Civil

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Procedure 26, and instead found that the defendants could raise the issue in a motion in limine. See

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id. By contrast here, GM does not challenge AAA’s failure to provide a computation under the

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Federal Rules of Civil Procedure. GM argues that AAA failed to provide any evidence of actual

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Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

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damages. See Mot. at 23–25. Accordingly, this District of Nevada case is inapplicable.
Second, in a footnote, AAA cites to the only evidence that AAA offers to rebut GM’s

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argument: the declaration of AAA’s GIG Car Share President, Jason Haight, in support of AAA’s

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opposition to GM’s motion for summary judgment, and a few sentences from the deposition of

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AAA’s witness, Michael Hetke. Opp’n at n.103. AAA cites to these two documents without any

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elaboration except for AAA’s assertion that “[a]lthough AAA has not quantified the precise

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amount of actual damages suffered, AAA produced testimony in discovery and declaration

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bearing on harm sustained as a result of infringement.” Id. This evidence cited by AAA does not

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create a genuine issue of material fact concerning actual damages.

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Specifically, the declaration of AAA’s GIG Car Share President, Jason Haight, provides

United States District Court
Northern District of California

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anecdotal examples of Mr. Haight’s “belief” that AAA has been damaged. See Haight Decl. ¶¶

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44–57. Mr. Haight’s conclusory statements are not supported by detailed facts or evidentiary

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support. To the extent he mentions instances of confusion, Mr. Haight provides no details as to

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who specifically was confused, when the instance occurred, or how many times that type of

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confusion occurred. Moreover, as the Ninth Circuit has held “[a] conclusory, self-serving affidavit,

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lacking detailed facts and any supporting evidence, is insufficient to create a genuine issue of

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material fact.” F.T.C. v. Publ’g Clearing House, Inc., 104 F.3d 1168, 1171 (9th Cir. 1997);

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Hansen v. United States, 7 F.3d 137, 138 (9th Cir. 1993) (“When the nonmoving party relies on its

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own affidavits to oppose summary judgment, it cannot rely on conclusory allegations unsupported

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by factual data to create an issue of material fact.”).

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Similarly, the Michael Hetke deposition provides a few brief statements suggesting that

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Mr. Hetke is aware of anecdotal evidence of consumer confusion, but Mr. Hetke also does not

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provide any supporting factual details or supporting evidence. See Hetke Tr. at 189:1–15, 208:3–

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15. This evidence is conclusory. See F.T.C., 104 F.3d at 1171. The Hetke deposition fails to create

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a genuine issue of material fact on actual damages.

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Accordingly, having found that AAA has presented no evidence creating a genuine issue of
material fact on actual damages, the Court GRANTS GM’s motion for summary judgment on
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Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

actual damages. See, e.g., Color Me Mine Enters. Inc. v. S. States Mktg. Inc., No. CV 12-00860-

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RGK (JCx), 2013 WL 12119715, at *9 (C.D. Cal. Apr. 25, 2013) (granting summary judgment in

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trademark infringement case on actual damages because plaintiff’s evidence and allegations were

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“simply speculative” and failed to establish with “reasonable certainty” that plaintiff directly

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experienced actual damages “as a proximate result” of defendant’s infringement); Blau, 2004 WL

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5313967, at *4, *7 (granting summary judgment in trademark infringement case on the issue of

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actual damages where plaintiff and its witnesses were unable to identify specific accounts or

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customers that were lost due to defendants’ alleged infringement); Oyster Software, Inc. v. Forms

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Processing, Inc., No. C-00-0724 JCS, 2001 WL 1736382 (N.D. Cal. Dec. 6, 2001) (granting

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summary judgment in trademark infringement case when expert’s report was “insufficient to

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create a material issue of fact” because it was “entirely speculative on the issue of causation of

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actual damages”); see also, e.g., Committee for Idaho’s High Desert, Inc., 92 F.3d at 823 (finding

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that the district court was correct in granting summary judgment on damages claim in trademark

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case because plaintiff failed to create a genuine issue of material fact as to its actual damages);

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Strike It Rich, Inc., 505 F. Supp. At 91 (finding that defendant’s motion for partial summary

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judgment should be granted in service mark infringement case when the plaintiff repeatedly

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“failed to provide this Court or defendant with any proof of damage that could be tested or

18

studied”); Groupion, LLC, 859 F. Supp. 2d at 1081 (granting summary judgment in trademark

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infringement suit on actual damages where plaintiff had “no evidence of any actual damages

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incurred”); Fed. Agr. Mortg. Corp. v. It’s A Jungle Out There, Inc., No. C 03-3721 VRW, 2005

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WL 3325051, at *11 (N.D. Cal. Dec. 7, 2005) (granting summary judgment in trademark

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infringement case on actual damages because plaintiff did not present “any evidence of damages

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or profits, much less damages or profits reasonable attributable to the alleged infringement.”).

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IV.

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CONCLUSION
For the foregoing reasons, the Court DENIES GM’s motion for summary judgment on

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priority of trademark use. The Court GRANTS GM’s motion for summary judgment on

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willfulness and actual damages.

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Case No. 17-CV-03874-LHK
ORDER DENYING IN PART AND GRANTING IN PART MOTION FOR SUMMARY JUDGMENT

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IT IS SO ORDERED.

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Dated: March 21, 2019
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United States District Judge

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United States District Court
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