Corporation of Gonzaga University v. Pendleton Enterprises LLC et al

Filing 33

ORDER ON GONZAGA'S MOTION FOR PARTIAL SUMMARY JUDGMENT; granting #21 Motion for Partial Summary Judgment. Signed by Senior Judge Lonny R. Suko. (PL, Case Administrator)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF WASHINGTON
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)
CORPORATION OF GONZAGA
)
NO. CV-14-0093-LRS
UNIVERSITY,
)
) ORDER ON GONZAGA’S MOTION
Plaintiff,
) FOR [PARTIAL] SUMMARY
) JUDGMENT
-vs)
)
PENDLETON ENTERPRISES, LLC, )
a Washington LLC; PENDLETON )
BROADCASTING, INC., a
)
Washington Corporation; and )
JAMIE PENDLETON, an
)
individual and a resident of )
the State of Washington,
)
)
Defendants.
)
)

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BEFORE THE COURT is Plaintiff Corporation of Gonzaga

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University’s (“Gonzaga”) Motion For Summary Judgment1 (ECF No.

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21) filed on July 16, 2014.

Oral argument was held on

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September 4, 2014 in Spokane, Washington.

Defendants opposed

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The motion is a partial summary judgment as Gonzaga’s
26 motion seeks to have a ruling only on the alleged violation of
§43(a) of the Lanham Act (15 U.S.C. §1125(a)).
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ORDER - 1

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the motion (ECF No. 26).

The court took Gonzaga’s motion

under advisement at the conclusion of the hearing.

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DISCUSSION

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A.

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Introduction
Plaintiff Gonzaga brought an action against Defendant

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Pendleton Enterprises, LLC, Pendleton Broadcasting Inc., and
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Jamie Pendleton (collectively referred to as “Defendants”),

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alleging violations of the Lanham Act, trademark infringement

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(federal,

state

and

common

law),

Washington

Consumer

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Protection Act, and unfair competition.

Gonzaga moved for

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partial summary judgment on its §43(a) Lanham Act (15 U.S.C.

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§1125(a)) claim.

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preventing unauthorized use of Gonzaga trademarks because such

Plaintiff asserts a commercial interest in

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use will allegedly create confusion concerning Plaintiff's
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endorsement

of Defendants'

bar and radio station

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activities, products and services.

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B.

related

Legal Standard

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A party may move for summary judgment on a “claim or

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defense” or “part of ... a claim or defense.” Fed.R.Civ.P.

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56(a).

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Summary

judgment

is

appropriate

when

there

is

no

genuine dispute as to any material fact and the moving party
ORDER - 2

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is entitled to judgment as a matter of law. Id.
A party seeking summary judgment bears the initial burden

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of informing the court of the basis for its motion, and of

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identifying those portions of the pleadings and discovery

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responses that demonstrate the absence of a genuine issue of

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material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323,

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106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Material facts are

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those that might affect the outcome of the case. Anderson v.

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Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91

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L.Ed.2d

202 (1986).

A dispute as to a material

fact is

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“genuine” if there is sufficient evidence for a reasonable
jury to return a verdict for the nonmoving party. Id.
Where the moving party will have the burden of proof at
trial, it must demonstrate that no reasonable trier of fact

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could find other than for the moving party. Soremekun v.

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Thrifty Payless, Inc., 509 F.3d 978, 984 (9th Cir.2007). Where

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the nonmoving party will bear the burden of proof at trial,

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the moving party can prevail merely by pointing out to the

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district court that there is an absence of evidence to support

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the nonmoving party's case. Celotex, 477 U.S. at 324–25, 106

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S.Ct. 2548. If the moving party meets its initial burden, the
ORDER - 3

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opposing party must then set out specific facts showing a
genuine

issue

for

trial

in

order

to

defeat

the

motion.

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Anderson,

U.S.

at

250,

106

S.Ct.

2505;

see

also

Fed.R.Civ.P. 56(c), (e).

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477

When deciding a summary judgment motion, a court must view
the evidence in the light most favorable to the nonmoving

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party

and

draw

all

justifiable

inferences

in

its

favor.

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Anderson, 477 U.S. at 255, 106 S.Ct. 2505; Hunt v. City of Los

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Angeles, 638 F.3d 703, 709 (9th Cir.2011).

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for

a

party

opposing

summary

judgment

It is not enough
to

“rest

on

mere

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allegations or denials of his pleadings.” Anderson, 477 U.S.

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at 259.

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pleadings to designate specific facts showing that there is a

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Instead, the nonmoving party must go beyond the

genuine issue for trial. Celotex, 477 U.S. at 325.

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It is not the Court's task “to scour the record in search

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of a genuine issue of triable fact.” Keenan v. Allan, 91 F.3d

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1275,

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1279

(9th

Cir.1996).

Counsel

has

an

obligation

to

clearly lay out support for the claim asserted. Carmen v. San

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Francisco

Unified

Sch.

Dist.,

237

F.3d

1026,

1031

(9th

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Cir.2001). The Court “need not examine the entire file for

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evidence establishing a genuine issue of fact, where the
ORDER - 4

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evidence is not set forth in the opposing papers with adequate
references so that it could conveniently be found.” Id.

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C.

Gonzaga’s Motion for [Partial] Summary Judgment

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1.

Gonzaga’s Identifiers and Marks

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Plaintiff Gonzaga, is an institution of higher learning in

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Spokane, Washington and has become well-known for its athletic
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programs in the Spokane area. The following are the “words,

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terms, names, symbols, devices, and combinations thereof”

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(hereinafter

referred

to

as

Identifiers

and

Marks)

that

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Gonzaga asserts were used by the Defendants to reference or
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identify Gonzaga in connection with Defendants’ commercial and

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promotional purposes:

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“GONZAGA UNIVERSITY”, which is the subject of
U.S. Trademark Registration No. 1,931,286,
and is an incontestable U.S. trademark per 15
U.S.C. §1065. ECF No. 23.

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“GONZAGA UNIVERSITY BULLDOGS”, which is the
subject of U.S. Trademark Registration No.
1,931,285, and is an incontestable U.S.
trademark per 15 U.S.C. §1065. Id.

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“ZAGS”, which is the subject of U.S.
Trademark Registration No. 1,931,449, and is
an incontestable U.S. trademark per 15 U.S.C.
§1065. Id.

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/ / /
ORDER - 5

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Gonzaga’s “Bulldog mascot wearing a Gonzaga
jersey”, which the record indicates that
Gonzaga has used in Spokane since the 1980’s,
and which is the subject of Washington State
Trademark Registration File No. 56807. Id.

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Gonzaga’s Bulldog Head, for which Gonzaga has
been awarded Washington State Trademark
Registration File No. 56780, showing a date
of first use in Washington in 1998. Id.

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Gonzaga’s Bulldog Head combined with the word
Gonzaga, for which Gonzaga has been awarded
Washington State Trademark Registration File
No. 56959, showing a date of first use in
Washington in 1998. Id.

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Gonzaga’s Identifier “GU”, for which Gonzaga
has been awarded Washington State Trademark
Registration File No. 56960, showing a date
of first use in Washington in 1998. Id.

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Gonzaga’s Bulldog Head combined with “GU”,
for which Gonzaga has been awarded Washington
State Trademark Registration File No. 56958,
showing a date of first use in Washington in
1998. Id.

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2.

The Undisputed Facts Underlying the Section 43(a)
Claim

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The controlling facts of the case at bar are relatively

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uncomplicated and uncontested. Plaintiff Gonzaga has a rather

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well-known basketball team in the Spokane area and throughout

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the State

of Washington.

ECF No. 24. In producing and

promoting the sport of NCAA basketball, Gonzaga has adopted
ORDER - 6

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and widely publicized the name/nickname (GONZAGA UNIVERSITY,
GONZAGA UNIVERSITY BULLDOGS, ZAGS) and a team symbol, Spike,

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a bulldog who wears a Gonzaga jersey.

Since the 1998-1999

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season when Gonzaga began to enjoy national prominence and

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using the Gonzaga Identifiers and Marks, thousands of fans

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have attended basketball games where the team Identifiers and

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Marks are displayed on jersey fronts of the players, bulldog

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mascot and throughout the game programs.

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the team Identifiers and Marks during televised games. Still

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Other fans observe

more fans are exposed to Gonzaga’s Identifiers and Marks

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through sporting news coverage in newspapers, magazines, and
radio.
Gonzaga alleges that Defendants have used the bulldog
mascot wearing a Gonzaga jersey, a bulldog mascot head with a

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spike

collar

and

other

Gonzaga

Identifiers

and

Marks

in

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conjunction with their radio station services and bar services

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intending

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the

consuming

public

to

recognize

the

Gonzaga

Identifiers as symbols of Gonzaga.

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Photographs of these uses were posted in commerce on

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Defendants’ online social media websites which advertise and

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promote Defendants’ radio station and bar services.
ORDER - 7

ECF No.

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2

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at

7-26.

Relative

to

the

Spokane

Downtown

Daiquiri

Factory, Gonzaga asserts that the use of a bulldog mascot

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wearing a Gonzaga-identifying jersey (Gonzaga or GU), as well

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as the posting of photographs on Defendants’ online social

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media websites, were intended to reference or identify Gonzaga

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in connection with the commercial advertising and promotion of

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defendants’

bar

services,

the

Spokane

Downtown

Daiquiri

Factory.
Gonzaga asserts that the Defendants’ use of the Gonzaga
Identifiers and Marks is likely to cause confusion, or to

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cause

mistake,

or

to

deceive

as

to

the

affiliation,

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connection, or association of Gonzaga with the radio station

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and bar services offered by Defendants’ businesses, or as to

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the origin, sponsorship, or approval of Defendants’ radio

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station and bar services, or commercial activities.

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With regard to the radio station services, Gonzaga argues

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that the photographs make it appear that the third party

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businesses

being

promoted

and/or

Pendleton

Broadcasting’s

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104.5 radio station are affiliated with, associated with or in
some other commercial business relationship with Gonzaga.
Gonzaga reports there have been multiple instances of
ORDER - 8

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actual confusion by members of the public in Spokane as to
whether there was an "affiliation, connection, or association"

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or

a

"sponsorship,
such

approval"

example

of

between

this

Defendants

reported

and

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Gonzaga.

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(negative) with one of Defendants' businesses, the Downtown

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One

or

association

Spokane Daiquiri Factory, is as follows:

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> Dear GU Athletics – As a Spokane resident,
a mother of student athletes and fan of GU –
I was very dismayed to see Spike associated
in this manner with this particular business.
This bar has promoted their signature drink
called Date Grape, an obvious pun on Date
Rape, and refuses to cooperate, acknowledge,
or show any remorse for their blatant
insensitivity for victims of sexual assault.
This issue has prompted nationwide press
coverage and as a result, they simply put the
word "Banned" over the word Date. They are
now promoting their "Q-Laid", "Strawberry
Deep Throat Banana" and "We Still In This
Bitch". See below as well as the numerous
pictures still showing of Spike in their
public photo gallery.
>
> I do not know if you are aware of this or
not, the pictures are in their photo gallery
on a public page and this is not a good image
for your mascot. Thank you.
ECF No. 24, Kassel Decl., ¶ 10.

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Gonzaga

(through

its

Associate

Athletic

Director

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Kristopher Kassel) requested that Defendant Pendleton cease
ORDER - 9

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further use of the Gonzaga Identifiers and Marks, but the uses
did not stop.

Gonzaga concludes that Defendants are using

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Gonzaga’s Identifiers and Marks without authorization and such

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uses

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association

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make

it

appear
with

that

or

there

some

is

other

an

affiliation

commercial

with,

business

relationship with Gonzaga-- when there is none.

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3.

Defendants’ Opposition

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Defendants oppose the motion arguing that in a trademark

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action, likelihood of confusion is a material fact2 which

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should preclude summary judgment. Defendants do not respond to
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Plaintiff's argument that there is a likelihood of confusion

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with their use of Gonzaga’s Identifier and Marks.

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despite there being no affidavits containing contrary facts,

Defendants,

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assert there exist genuine issues of fact, yet to be resolved.
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Additionally, Defendants argue that the parties have yet to

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commence any discovery.

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Defendants further argue that the doctrine of “fair use”

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should

be held applicable

action

and

to this trademark

infringement

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that

the

Court

should

apply

the

doctrine

to

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Defendants cite Lloyd's Food Products, Inc. v. Eli's,
Inc., 987 F.2d 766, 767 (Fed. Cir. 1993).
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ORDER - 10

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sanction their use of a replica of Gonzaga's Identifiers.
Plaintiff replies that Defendants do not mount a colorable

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factual

or

legal

argument

why

their

use

of

Gonzaga's

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Identifiers and Marks is a "fair use" or what facts they need

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from the discovery process to support this or any of their

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contentions.

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Another issue advanced by Defendants is whether a mark

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owned by the Plaintiff can be protected outside of the class

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of services for which it is registered.

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Plaintiff replies

that all trademarks can apply outside of the "class" of

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services because the legal test for trademark infringement is

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whether there is a likelihood of confusion.

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it unnecessary to decide this issue as this motion only covers

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The Court finds

a claim pursuant to §43(a) of the Lanham Act for unregistered

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marks.
Defendants

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also

assert

that

the

Washington

State

trademarks were obtained after this suit was filed. Plaintiff
replies that the Washington State trademarks each certify that

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the

marks

are

trademarks

owned

by

Gonzaga,

carry

the

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evidentiary value set forth in R.C.W. §19.77.040, and identify

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Gonzaga as the source of the goods.
ORDER - 11

Again, this motion does

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not cover state registered trademark infringement.

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Finally, Defendants suggest that Gonzaga does not have

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standing to bring suit.
D.

Section 43(a) Violation – Likelihood of Confusion Analysis

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In its Complaint, Gonzaga claims that Defendants are

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liable for trademark infringement and unfair competition under
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the Lanham Act, 15 U.S.C. §1125(a).

Gonzaga indicated at the

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hearing that the instant motion for summary judgment was based

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only on Section §43(a) of the Lanham Act (15 U.S.C. §1125(a)).

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Although it is somewhat unclear, Gonzaga’s arguments cover
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claims of false designation of origin, federal/common law

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trademark infringement (collectively, “infringement claims”),

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and

unfair

competition

claims,

which

claims

cannot

be

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separated for purposes of the Court’s analysis.

Section 43(a)

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covers unregistered marks and is the federal counterpart of

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certain state unfair competition and anti-dilution rights.

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Section 43(a) of the Lanham Act gives an entity a cause of

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action for the use by any person of “any word, term, name,
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symbol, or device, or any combination thereof * * * which * *

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*

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sponsorship, or approval of his or her goods.” 15 U.S.C. §

is

likely

ORDER - 12

to

cause

confusion

*

*

*

as

to

origin,

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1125(a).
In order to sue under the statute at issue in the instant

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motion, it is not necessary for a mark or trademark to be

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registered.

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595 F.2d 1194, 1198 (9th Cir. 1979).

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New West Corp. v. NYM Co. of California, Inc.,
Whether the theory is

Section 43(a) of the Lanham Act or state unfair competition

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law,3 the ultimate test is whether the public is likely to be

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deceived or confused by the similarity of the marks. Id. at

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1201. The burden on plaintiff is twofold: First, plaintiff

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must establish secondary meaning in their use of the Gonzaga

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Identifiers and Marks. Second, Defendants’ activities must be
shown to have created a likelihood of confusion.
Secondary meaning has been defined as association, nothing
more. Carter-Wallace, Inc. v. Proctor & Gamble Co., 434 F.2d

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794, 802 (9th Cir. 1970). The basic element of secondary

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meaning is a mental recognition in buyers' and potential

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buyers' minds that products connected with the symbol or

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device emanate from or are associated with the same source.

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Plaintiff’s Fourth Cause of Action is for common law
unfair competition but was not specifically argued in the
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summary judgment motion.
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ORDER - 13

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Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 200
U.S.P.Q. 713, 716 (9th Cir. 1980).

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The creation of confusion as to sponsorship of products

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5

is also actionable. See HMH Publishing Co., Inc. v. Brincat,

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504 F.2d 713, 716 (9th Cir. 1974); Dallas Cowboys Cheerleaders,

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Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2nd Cir.

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1979).

The

standard,

however,

applied

by

the

courts

in

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determining whether a showing of secondary meaning has been

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made in a sponsorship context is not well-defined. See, e.g.,

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HMH

Publishing,

504

F.2d

at

718

(secondary

meaning

is

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14

demonstrated by a showing that the purchasing public generally

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believes that a product which bears that mark is “in some

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fashion connected” with the products of the registrant); Wyatt

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Earp Enterprises, Inc. v. Sackman, Inc., 157 F.Supp. 621, 625
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(S.D.N.Y.1958)

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confusion and secondary meaning).

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(collapsing

the

analysis

of

likelihood

of

The correct standard should be reachable deductively.

22

National Football League Properties, Inc. v. Wichita Falls
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24

Sportswear,

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a symmetry between the concepts of secondary meaning and

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likelihood
ORDER - 14

532 F.Supp. 651, 659 (D.C.Wash.1982).

of

confusion.

Secondary

meaning

There is

requires

an

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examination of the non-infringing party's mark and product,
and tests the connection in the buyers' mind between the

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4

product bearing the mark and its source. Id. Likelihood of

5

confusion in a sponsorship context focuses on the product

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bearing the allegedly infringing marks and asks whether the

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public believes the product bearing the marks originates with

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9

or is somehow endorsed or authorized by the plaintiff. Id.

10

citing Kentucky Fried Chicken Corp. v. Diversified Packaging

11

Corp., 549 F.2d 368, 388-90 (5th Cir. 1977). Just as the

12

relevant

inquiry

for

the

establishment

of

likelihood

of

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14

confusion

in

a

sponsorship

context

is

the

belief

that

15

sponsorship or authorization was granted, the inquiry should

16

be the same in order to establish secondary meaning. Wichita,

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532 F.Supp. at 659.
18

As the Ninth Circuit has explained it, § 43(a) provides

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two bases for liability: “(1) false representations concerning

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the origin, association or endorsement of goods or services

22

through the wrongful use of another's distinctive mark, name,
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24

trade dress or other device (‘false association’), and (2)

25

false representations in advertising concerning the qualities

26

of

goods

ORDER - 15

or

services

(‘false

advertising’).”

Waits

v.

1
2

Frito–Lay, Inc., 978 F.2d 1093, 1108 (9th Cir.1992) (citations
omitted). Here, Plaintiff asserts a violation of the Lanham

3
4

Act §1025 [sic] as its First Claim for relief. ECF No. 1 at 8.

5

A false endorsement claim is available where defendants'

6

conduct has allegedly created “a likelihood of confusion as to

7

whether

plaintiffs

were

endorsing

[defendants']

product.”

8
9

Wendt v. Host Int'l, Inc., 125 F.3d 806, 812 (9th Cir.1997).

10

“Section 43(a)(1) [of the Lanham Act] provides similar

11

protection to trademarks regardless of registration.” Bell v.

12

Harley

Davidson

Motor

Co.,

539

F.Supp.2d

1249,

1254

13
14

(S.D.Cal.2008) (citing Brookfield Commc'ns, Inc. v. W. Coast

15

Entm't Corp., 174 F.3d 1036, 1046 n. 6 (9th Cir.1999)). “To

16

establish a trademark infringement claim ..., [Plaintiff] must

17

establish that [Defendant] is using a mark confusingly similar
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19

to

a

valid,

protectable

trademark

of

[Plaintiff's].”

20

Brookfield Commc'ns, 174 F.3d at 1046. “To show that he has a

21

protectable trademark interest, Plaintiff must have been the

22

first to use the mark in the sale of goods or services.”
23
24

Sengoku Works, Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th

25

Cir.1996).

26

ORDER - 16

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2

To prevail on an infringement claim, a trademark owner4
must prove that the alleged infringer used the mark at issue

3
4

in commerce and in connection with the sale, distribution, or

5

advertising of goods or services in such a way that the use

6

“is likely to cause confusion, or to cause mistake, or to

7

deceive.” 15 U.S.C. § 1114; see also 15 U.S.C. § 1125(a).

8
9

Infringement disputes are “intensely factual in nature,” and

10

therefore

11

Interstellar Starship Serv., Ltd. v. Epix, Inc., 184 F.3d

12

summary

judgments

are

generally

disfavored.

1107, 1109 (9th Cir.1999).

13
14

As between Plaintiff and Defendants, this Court finds

15

Plaintiff is the owner of the Gonzaga Identifiers and Marks,

16

which include protectable marks.5

Defendants have not denied

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21
22
23

Although Defendants assert an affirmative defense calling
into question the ownership of the marks, there is no dispute
that Gonzaga owns the Marks, which are federally and state
registered or acquired through actual and continuous use. (ECF
No. 22, Hendricksen Decl., ¶¶ 2-5.) This “constitutes prima
facie evidence of the validity of the registered mark and of
[Gonzaga’s] exclusive right to use the mark on the goods and
services specified in the registration.” Brookfield, 174 F.3d
at 1047.
4

24

Three word marks are incontestible federal trademarks
(“GONZAGA UNIVERSITY,” GONZAGA UNIVERSITY BULLDOGS, and
26 ”ZAGS”). Plaintiff may also prevail if it establishes that it
has a common law trademark or service mark. See Boston
5

25

ORDER - 17

1
2

that each of the Gonzaga Identifiers or trademarks refer to or
identify Gonzaga in the Spokane area.

With the exception of

3
4

other

non-local

teams

that

also

use

a

bulldog

mascot,

5

Defendants have not identified any other possible entity to

6

which the Gonzaga Identifiers and Marks refer.

7

The Court finds that Defendants have made commercial use

8
9

of a mark that is similar enough to cause confusion in the

10

minds of consumers about the origin of the goods or services

11

in question. KP Permanent Make–Up, Inc. v. Lasting Impression

12

I, Inc., 543 U.S. 111, 117, 125 S.Ct. 542, 160 L.Ed.2d 440

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14
15
16
17
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20
21
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(2004).
To assess likelihood of confusion, courts in the Ninth
Circuit consider the Sleekcraft factors:
(1) the strength of the plaintiff's mark;
(2) relatedness of the goods;
(3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) likely degree of purchaser care;
(7) defendant's intent in selecting the mark; and
(8) likelihood of expansion of the product lines.
Wendt, 125 F.3d at 812 (applying AMF, Inc. v. Sleekcraft

23
24
25

Professional Hockey Association v. Dallas Cap & Emblem Mfg.,
26 Inc., 510 F.2d 1004, 1010 (5th Cir.), Cert. denied, 423 U.S.
991, 96 S.Ct. 408, 46 L.Ed.2d 312 (1975).
ORDER - 18

1
2

Boats, 599 F.2d 341 (9th Cir.1979)). This list of factors is
not

exhaustive

and

is

not

intended

to

be

applied

as

a

3
4

“mechanistic formula.” Dr. Seuss Enterprises, L.P. v. Penguin

5

Books USA, Inc., 109 F.3d 1394, 1404 (citations and internal

6

marks omitted), cert. dismissed, Penguin Books USA, Inc. v.

7

Dr. Seuss Enterprises, 521 U.S. 1146, 118 S.Ct. 27, 138
8
9

L.Ed.2d 1057 (1997). “Other variables may come into play

10

depending on the particular facts presented.” Id. As the

11

nature of the factors makes clear, the “ ‘likelihood of

12

confusion’ standard is predominantly factual in nature.” Id.
13

In the Spokane area, there is no dispute that Gonzaga's

14
15

Identifiers

and

Marks

are

commercially

strong.

The

16

relatedness of goods/services is somewhat nebulous as one

17

could argue that an athletic/school program class is not close
18
19

to

the

Defendants'

bar/radio

program

class,

but

Gonzaga

20

arguably has opportunities to associate with or approve of a

21

broad range of different entities to become affiliated with

22

its programs.

In this case, there can be no dispute that

23
24

Defendants

25

identically except the bulldog mascot wearing the Gonzaga

26

identifying
ORDER - 19

are

using

jersey.

Gonzaga's

Even

though

Identifiers

the

bulldog

and

Marks

costume

is

1
2

different than Gonzaga's, the bulldog costume also includes
other Gonzaga Identifiers to further create the impression

3
4
5

that it is the Gonzaga Bulldog mascot or is affiliated or
approved by Gonzaga.

6
7

Evidence of actual confusion is not required to find a
likelihood

of

confusion.

Moreover,

if

Plaintiff

offers

8
9

compelling evidence of actual confusion, such evidence may be

10

"persuasive proof that future confusion is likely."

11

Inc., v. Sun Earth Solar Power Co., 846 F.Supp.2d 1063, 1079

12

(N.D.Cal.2012) (citations and quotations omitted).

SunEarth,

The Court

13
14

finds that Defendants

have used Gonzaga’s

Identifiers

to

15

benefit from any connection (negative or positive) the public

16

might

17

draw

between

goodwill)and

the

Defendants’

well-know
sports

sports

bar

or

team

(and

radio

its

station.

18
19

Plaintiff

has

also

provided

compelling

evidence

of

the

20

existence of at least public comment and confusion from the

21

use of the Spike-like mascot at the Spokane Daiquiri Factory.

22

As far as marketing channels go, in this case both Gonzaga

23
24

and the Defendants advertise and promote their respective

25

goods and services to the public in Spokane, Washington using

26

the

Gonzaga

ORDER - 20

Identifiers

and

Marks.

From

the

photographs

1
2

included

in

Exhibit

B

to

the

Kassel

Declaration,

the

Defendants have been using their bulldog mascot with the

3
4

Gonzaga

or

GU

jersey

in

the

promotion

of

Defendants'

5

businesses (as well as the businesses of the customers of

6

Defendant's radio station 104.5 JAMZ) in the Spokane area.

7

Furthermore,

when

it

comes

to

well-known

college

sports

8
9
10
11
12

programs, the range of businesses and products with which the
college may become associated or approve is wide and varied.
The Spokane area has a very large number of Gonzaga fans
who are loyal to Gonzaga and its various athletic teams, and

13
14

based upon the photographs attached as Exhibit B to the Kassel

15

Declaration, Defendants are using Gonzaga's Identifiers and

16

Marks in order to benefit commercially from the well known fan

17

recognition and loyalty.

18
19

The

fact

that

the

Defendants

are

using

several

of

20

Gonzaga's Identifiers and Marks in most instances, is strong

21

evidence

22

impression

that

Defendants

that

are

Defendants

are

intending

to

affiliated,

create
connected

the
or

23
24

associated with Gonzaga, or that there was a sponsorship or

25

approval

26

activities by Gonzaga.
ORDER - 21

of

Defendants

goods,

services,

or

commercial

Evidence would suggest Defendants are

1
2

intending to use the notoriety and reputation of
gain

attention,

advertising

and

Gonzaga

to

benefit in Defendants' own

3
4

businesses, and in the case of Defendants' radio station

5

(104.5

6

businesses.

7

JAMZ),

promotional

benefit

for

the

third

party

As far as the other remaining Sleekcraft factors, these

8
9

either favor Gonzaga or are neutral.

10

To address Defendants’ defense of fair use raised in their

11

opposition, the fair use doctrine typically allows adjustments

12

of conflicts between the first amendment and the copyright

13
14

laws, See Wainwright Securities Inc. v. Wall Street Transcript

15

Corp., 558 F.2d 91, 95 (2d Cir. 1977), Cert. denied, 434 U.S.

16

1014, 98 S.Ct. 730, 54 L.Ed.2d 759 (1978), and is designed

17

primarily to balance "the exclusive rights of a copyright

18
19

holder

with

the

public's

interest

in

dissemination

of

20

information affecting areas of universal concern, such as art,

21

science and industry." Id. at 94.

22

There are two fair use defenses available in trade dress

23
24

or trademark infringement cases—classic and nominative.

The

25

classic fair use defense "applies only to marks that possess

26

both a primary meaning and a secondary meaning—and only when
ORDER - 22

1
2

the mark is used in its primary descriptive sense rather than
its secondary

trademark

sense." Brother

Records,

Inc. v.

3
4

Jardine, 318 F.3d 900, 905 (9th Cir.2003).

In the Ninth

5

Circuit, "the classic fair use defense is not available if

6

there is a likelihood of customer confusion as to the origin

7

of the product." Cairns v. Franklin Mint, 292 F.3d 1139, 1151

8
9

(9th Cir.2002).

10

To prove nominative fair use, a defendant must satisfy

11

three requirements: (1) "the plaintiff's product or service in

12

question must be one not readily identifiable without use of

13
14

the trademark"; (2) "only so much of the mark or marks may be

15

used as is reasonably necessary to identify the plaintiff's

16

product or service"; and (3) "the user must do nothing that

17

would, in conjunction with the mark, suggest sponsorship or

18
19
20
21

endorsement by the trademark holder."

Mattel, Inc. v. Walking

Mountain Productions, 353 F.3d 792, 809 (9th Cir.2003).
The Court does not find either type of fair use is

22

applicable under the facts of this case.

There are numerous

23
24

ways in which Defendants may entertain their Gonzaga fans

25

without infringing Plaintiff's trademark(s).

26

primary purpose of the trademark laws is to protect the public
ORDER - 23

Because the

1
2

from confusion,6 it would be somewhat anomalous to hold that
the confusing use of another's trademark is "fair use".

See

3
4

also Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d

5

1210, 1215 (8th Cir.), Cert. denied, 429 U.S. 861, 97 S.Ct.

6

164, 50 L.Ed.2d 139 (1976).

7

The greater the similarity, the greater the likelihood of

8
9

confusion. GoTo.com. Inc. v. Walt Disney Co., 202 F.3d 1199,

10

1205-06 (9th Cir.2000). In the Ninth Circuit, secondary meaning

11

is defined merely as “association” and has as its “basic

12

element ... the mental association by a substantial segment of

13
14

consumers and potential consumers ‘between the alleged mark

15

and a single source of the product.’ ” Levi Strauss & Co., 778

16

F.2d

at

1354,

quoting

McCarthy,

§§

15:2

and

15:11(B)

17

(additional citations omitted).
18
19

"[W]hile the issue of likelihood of confusion is a mixed

20

question of law and fact, the inquiry is predominantly a

21

question of fact." United States v. Six Thousand Ninety–Four

22

(6,094)

“Gecko”

Swimming

Trunks,

949

F.Supp.

768,

771

23
24

(D.Haw.1996).

The

circumstances

of

each

particular

case

25
26

, See W. E. Basset Co. v. Revlon, Inc., 354 F.2d 868, 871
(2d Cir. 1966).
6

ORDER - 24

1
2

dictate whether the determination is a question of law or
fact. J.B. Williams Company, Inc. v. Le Conte Cosmetics, Inc.,

3

523 F.2d 187, 190 (9th Cir.1975).

Where summary judgment is

5

appropriate,

relief

6

choice. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d

4

7

however,

injunctive

is the remedy

of

1175, 1180 (9th Cir.1988). Gonzaga indicated at the hearing

8
9
10
11
12

that if its summary judgment is granted, it will moved for
injunctive relief in a motion to follow.
Plaintiff has put forth evidence to establish secondary
meaning for its Identifiers and Marks and the likelihood of

13
14

confusion,

relative

to

Defendants’

use

of

the

various

15

Identifiers/Marks and combinations thereof.

16

shown the primary significance of its Identifiers and Marks is

17

Plaintiff has

source identification.

18
19

Having found that Plaintiff has acquired secondary meaning

20

in its Identifiers including the bulldog (with spike collar

21

wearing a Gonzaga jersey), the Court finds that the bulldog

22

mascot

used

by

Defendants

in

the

Spokane

area

closely

23
24
25
26

resembles Gonzaga’s bulldog mascot and that the public is
likely to identify it as Plaintiff's mascot.
In the Complaint, Plaintiff states that “[i]n the past
ORDER - 25

1
2

weeks for example,
a

concern

or

multiple

outrage

that

concerned
Gonzaga

citizens

have voiced

University

would

be

3
4

affiliated or associated with a business that would engage in

5

conduct such as naming a drink Date Grape Koolaid.”

6

1 at 8.

7

ECF No.

As Judge Markey opined, the trademark laws are

designed not only to prevent consumer confusion but also to

8
9

protect “the synonymous right of a trademark owner to control

10

his product's reputation.” James Burrough Ltd. v. Sign of the

11

Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976). The

12

depiction of the bulldog in a Gonzaga jersey using a urinal as

13
14

shown in the March 23, 2013 posting on Defendants’ social

15

media advertising website, for example, violates §43(a) and

16

the Plaintiff’s right to control its reputation. (ECF. No. 22

17

at 21).

18

In the Ninth Circuit, neither an intent to confuse nor

19
20

actual

21

infringement claim. See Coca–Cola Co. v. Overland, Inc., 692

22

confusion

are

required

elements

of

a

trademark

F.2d 1250, 1256 n. 16 (9th Cir.1982) (intent to confuse);

23
24

Brookfield Communications, Inc. v. West Coast Entm't Corp.,

25

174

F.3d

26

Instead, “[l]ikelihood of confusion will be found whenever
ORDER - 26

1036,

1050

(9th

Cir.1999)

(actual

confusion).

1
2

consumers are likely to assume that a mark is associated with
another source or sponsor because of similarities between the

3
4

two marks.” Academy of Motion Picture Arts & Scis. v. Creative

5

House Promotions, Inc., 944 F.2d 1446, 1456 (9th Cir.1991),

6

citing Shakey's, Inc. v. Covalt, 704 F.2d 426, 431 (9th

7

Cir.1983).

8
9

Defendants, as the nonmoving parties, have not designated

10

specific facts showing that there is a genuine issue(s) for

11

trial with respect to Plaintiff’s §43(a) claim.

12

The Court

finds, as a matter of law, evidence of record would permit a

13
14

rational factfinder to conclude Defendants' use of the Gonzaga

15

Identifiers and Marks is likely to cause confusion, or to

16

cause

17

mistake,

or

to

deceive

as

to

the

affiliation,

connection, or association of Gonzaga with the radio station

18
19

and bar services offered by Defendants' businesses, or as to

20

the origin, sponsorship, or approval of Defendants' radio

21

station and bar services, or other commercial activities.

22

As to Defendants’ defense that Plaintiff lacks standing,

23
24

the Court flatly rejects this contention.

25

Section

43(a)

26

believes that he is or is likely to be damaged.”
ORDER - 27

gives

standing

to

sue

to

On its face,

“any

person

who

See L’Aiglon

1
2

Apparel Co. V. Lana Lobell, Inc., 214 F.2d 649 (3rd Cir.1954).
E.

Conclusion

3
4

Accordingly, the Court finds the likelihood of confusion

5

exists and a violation of Section 43(a) has occurred.

The

6

strength in the market of Plaintiff’s Identifiers weigh in

7

favor

of

finding

likelihood

of

confusion

required

for

8
9

Gonzaga’s Lanham Act false designation of origin claim against

10

Defendants as supported by Gonzaga’s long and substantial use

11

of the Identifiers and marks in connection with the college

12

and well-known athletic program.
13
14
15
16

Accordingly, Plaintiff Gonzaga's Motion for [Partial]
Summary

Judgment,

ECF

No.

21,

is

GRANTED.

The

Court

specifically finds for Plaintiff with respect to the First

17
18
19
20
21

Cause of Action (Violation of the Lanham Act, Section 43(a)).
The District Court Executive is directed to enter this
Order.
DATED this 25th day of September, 2014.

22
23

s/Lonny R. Suko

24

LONNY R. SUKO
SENIOR UNITED STATES DISTRICT JUDGE

25
26

ORDER - 28