White v. Parks et al
Filing
39
ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S 25 MOTION FOR PARTIAL SUMMARY JUDGMENT, AND ENJOINING PLAINTIFF'S USE OF "IT'S PAWSIBLE" Signed by Senior Judge Edward F. Shea. (JW, Operations Clk)
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UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WASHINGTON
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ALAN WHITE, d/b/a “It’s
Pawsible,”
CASE NO. 4:15-CV-5011-EFS
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Plaintiff,
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v.
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WAYNE PARKS, ELIZABETH OSTROWSKIPARKS, and IT’S PAWSIBLE DOG
TRAINING CENTER, INC.,
ORDER GRANTING IN PART AND
DENYING IN PART DEFENDANT’S
MOTION FOR PARTIAL SUMMARY
JUDGMENT, AND ENJOINING
PLAINTIFF’S USE OF “IT’S
PAWSIBLE”
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Defendant.
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WAYNE PARKS and ELIZABETH
OSTROWSKI-PARKS,
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CounterclaimPlaintiffs,
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v.
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ALAN WHITE, d/b/a “It’s
Pawsible,”
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CounterclaimDefendant.
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It is more than possible that two dog-obedience training businesses
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use the name It’s Pawsible: it happened.
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a dog-obedience training business under the names It’s Pawsible and Al’s
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Pawsible in Washington. Defendants Wayne Parks and Elizabeth Ostrowski-
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Parks operate a business under the nationally registered mark, It’s
ORDER - 1
Plaintiff Alan White operates
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Pawsible, in Massachusetts.
Before the Court, without oral argument,
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is the Parks’ Motion for Partial Summary Judgment, ECF No. 25, which
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seeks summary judgment in their favor on their trademark-infringement
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counterclaim and on Mr. White’s claim for declaratory judgment of non-
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infringement, regarding Mr. White’s use of the marks It’s Pawsible and
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Al’s Pawsible.
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Court grants the Parks’ motion as to It’s Pawsible and denies the motion
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as to Mr. White’s use of Al’s Pawsible.
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A.
After reviewing the record and relevant authority, the
Factual Statement1
In 2006 or 2007, Massachusetts residents Wayne Parks and Elizabeth
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Ostrowski-Parks
began
marketing
and
selling
dog-obedience
training
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services under the name It’s Pawsible. It’s Pawsible’s services include
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dog-obedience training classes and videos that can be purchased onsite
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or online at http://www.itspawsible.com.
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Decl., ECF No. 26 ¶ 3.
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Pawsible as a trademark with the U.S. Patent and Trademark Office’s
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Principal Register in International Class 41 for “dog obedience training
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instruction.”
Answer, ECF No. 14 ¶ 2; Parks
On February 26, 2007, the Parks registered It’s
Id. ¶ 4.
Trademark registration was granted for It’s
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When considering this motion and creating this factual section, the Court
1) believed the undisputed facts and the non-moving party=s evidence, 2)
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drew all justifiable inferences therefrom in the non-moving party=s favor,
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3) did not weigh the evidence or assess credibility, and 4) did not accept
assertions made by the non-moving party that were flatly contradicted by
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the record. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986);
Scott v. Harris, 550 U.S. 372, 380 (2007).
ORDER - 2
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Pawsible to the Parks on November 13, 2007.
Id. ¶ 5 & Ex. A.
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trademark registration was later extended to November 2017.
The
Id. ¶ 6.
On the other side of the United States, during this same time
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frame,
Alan
White
obtained
a
license
from
the
Washington
State
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Department of Licensing to operate “It’s Paws-ible Dog Training” and
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registered that trade name in Washington on August 21, 2007.
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Decl., ECF No. 27, Ex. A.
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Washington State Department of Revenue and obtained a tax identification
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number under that name. Id., Ex. B. Mr. White markets his dog-obedience
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training services in the Tri-Cities, Washington through It’s Pawsible
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Dog Training and Al’s Pawsible Dog Training and uses two web addresses:
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http://itspawsible.webs.com/ and http://www.alspawsibledogtraining.
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com.
Atkins
Mr. White opened an account with the
Atkins Decl., ECF No. 27, Exs. C & D.
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Because both businesses operate under the name It’s Pawsible, at
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least one individual, and possibly two individuals, mistakenly contacted
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the Parks in Massachusetts, rather than Mr. White in Washington, for
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dog-obedience services in Tri-Cities, Washington.
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ECF No. 33, Ex. 1 ¶¶ 9 & 10.
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number
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“pawsible” in their business name.
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of
In
other
January
In addition to these two businesses, a
animal-related
2015,
ECF No. 26, Ex. D;
following
businesses
utilize
some
form
of
ECF No. 33, Ex. 1, ex. A.
the
second
instance
of
customer
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confusion, Mr. Parks contacted Mr. White and advised him that he owned
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a federal trademark registration for It’s Pawsible for dog-obedience
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training services and requested that Mr. White cease and desist using
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the names It’s Pawsible and Al’s Pawsible.
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White filed this lawsuit against the Parks, seeking a declaratory
ORDER - 3
On January 29, 2015, Mr.
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judgment
that
It’s
Pawsible
and
Al’s
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trademark infringement as to the Parks’ It’s Pawsible Dog Training
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Center and Day Camp.
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summary-judgment motion requesting the Court enter summary judgment in
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their favor on their counterclaim for trademark infringement and on Mr.
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White’s claim for a declaratory judgment of non-infringement.
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25.
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B.
ECF No. 1.
Pawsible
do
not
constitute
Thereafter, the Parks filed this
ECF No.
Standard
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Summary judgment is appropriate if the record establishes "no
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genuine dispute as to any material fact and the movant is entitled to
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judgment as a matter of law.@
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summary judgment must point to specific facts establishing a genuine
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dispute of material fact for trial.
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317, 324 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475
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U.S. 574, 586-87 (1986).
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showing for any of the elements essential to its case for which it bears
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the burden of proof, the trial court should grant the summary-judgment
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motion.
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C.
Fed. R. Civ. P. 56(a).
The party opposing
Celotex Corp. v. Catrett, 477 U.S.
If the non-moving party fails to make such a
Celotex Corp., 477 U.S. at 322.
Analysis
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“The Lanham Act provides national protection of trademarks in
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order to secure to the owner of the mark the goodwill of his business
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and to protect the ability of consumers to distinguish among competing
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producers.”
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189,
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counterclaim,
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trademark with priority over Mr. White’s use and that Mr. White’s use
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ORDER - 4
Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S.
(1985).
the
To
Parks
prevail
must
on
prove
their
they
have
trademark-infringement
a
valid
protectable
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of the same or similar mark is likely to confuse the public.
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Brookfield Comms., Inc. v. W. Coast Enter’t Corp., 174 F.3d 1036, 1046
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(9th Cir. 1999); Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d
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837 (9th Cir. 1987).
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evidence of mark ownership.
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Lanham Act § 33(a), 15 U.S.C. § 1115(a)3.
Federal registration of the mark is prima facie
Lanham Act § 7(b), 15 U.S.C. § 1057(b)2;
Here, the Parks registered the mark It’s Pawsible with the federal
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See
government.
Accordingly, the Parks are presumed to own the It’s
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“A certificate of registration of a mark upon the principal
register provided by this chapter shall be prima facie evidence of
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the validity of the registered mark and of the registration of the
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mark, of the owner's ownership of the mark, and of the owner's
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exclusive right to use the registered mark in commerce on or in
connection with the goods or services specified in the certificate,
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subject to any conditions or limitations stated in the certificate.”
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15 U.S.C. § 1057(b).
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“Any registration issued under the Act of March 3, 1881, or the Act
of February 20, 1905, or of a mark registered on the principal
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register provided by this chapter and owned by a party to an action
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shall be admissible in evidence and shall be prima facie evidence
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of the validity of the registered mark and of the registration of
the mark, of the registrant's ownership of the mark, and of the
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registrant's exclusive right to use the registered mark in commerce
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on or in connection with the goods or services specified in the
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registration
subject
to
any
conditions
or
limitations
stated
therein, but shall not preclude another person from proving any
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legal or equitable defense or defect, including those set forth in
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subsection (b) of this section, which might have been asserted if
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such mark had not been registered.” 15 U.S.C. § 1115(a).
ORDER - 5
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Pawsible mark since February 6, 2007—the filing date of the Parks’
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application for federal registration of the mark.
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& Rec. for the State of Calif. v. Bazaar Del Mundo Inc., 448 F.3d 1118,
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1125-26 (9th Cir. 2006).
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validity with evidence that he was the first to use the mark in the
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sale of goods or services.
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96 F.3d 1217, 1220 (9th Cir. 1996); Brookfield Comm’ns, Inc., 174 F.3d
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at 1047.
See Dep’t of Parks
Mr. White can overcome this presumption of
See Sengoku Works Ltd. v. RMC Intern., Ltd.,
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The record before the Court shows that Mr. White began operating
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his business either in the summer or fall of 2007—well after the Parks
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began their It’s Pawsible dog-obedience business and applied for federal
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registration of the It’s Pawsible mark in February 2007.
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the Court finds Mr. White has not rebutted the presumption that the
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Parks’ registered It’s Pawsible mark is valid and has priority over his
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use.
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claim, that they registered an Al’s Pawsible mark or have used Al’s
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Pawsible in their dog-obedience business.
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Accordingly,
However, there is no evidence in the record, nor do the Parks
The next question is whether Mr. White’s continued use of It’s
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Pawsible and/or Al’s Pawsible is likely to confuse the public.
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answer this question, the Court considers the Sleekcraft factors under
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the totality of the circumstances: 1) the strength of the mark, 2)
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relatedness of the goods, 3) similarity of the marks, 4) evidence of
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actual confusion, 5) marketing channels used, 6) likely degree of
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purchaser care, 7) defendant’s intent in selecting the mark, and 8)
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likelihood of expansion of product lines.
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Survivor Prods., 406 F.3d 625, 631 (9th Cir. 2005); AMV, Inc. v.
ORDER - 6
To
Surfvivor Media, Inc. v.
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Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), abrogation in
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part on other grounds recognized by Mattel, Inc. v. Walking Mtn. Prods.,
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353 F.3d 792, 810, n.19 (9th Cir. 2003).
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each factor is case specific.
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Inc., No. 13-55575, --- F.3d ----, 2015 WL 4068877, *5 (9th Cir. July
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6, 2015).
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“far from certain that consumers were likely to be confused [and still
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be] confident that the question is close enough that it should be
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answered as a matter of fact by a jury, not as a matter of law by a
The relative importance of
Multi Time Machine, Inc. v. Amazon.com,
When analyzing a summary-judgment motion, a court may be
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court.”
Multi Time Machine, 2015 WL 4058877, *5 (quoting Fortune
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Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d
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1025, 1031 (9th Cir. 2010)).
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about the sophistication of would-be consumers.
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a genuine issue of fact as to any of the factors, there is more likely
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to be a genuine issue of fact as to whether there is likelihood of
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confusion.
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every factor weighs in his favor, [he must] only . . . make a strong
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showing as to some of them.”
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confusion is submitted, it strongly supports a finding of a likelihood
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of confusion.
And the court may not make assumptions
Id. at 7. “If there is
The party opposing summary judgment “need not show that
Id. at 6.
Yet, where evidence of actual
Id. at 8.
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After considering these Sleekcraft factors, the Court determines,
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as a matter of law, that Mr. White’s use of It’s Pawsible is likely to
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cause confusion with the Parks’ It’s Pawsible mark.
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the marks is identical.
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and market on the internet by having a website for their business.
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Finally, at least one of Mr. White’s clients, and possibly two, have
ORDER - 7
The language of
Both businesses provide dog-obedience training
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confused the Parks’ business with Mr. White’s business, notwithstanding
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that these businesses are located on opposite sides of the United
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States.
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favorable to Mr. White, the Court determines Mr. White failed to dispute
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that his use of It’s Pawsible is unlikely to cause confusion with the
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Parks’ valid It’s Pawsible trademark.
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continued use of It’s Pawsible is likely to cause confusion with the
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Parks’ valid mark, the Parks are entitled to summary judgment on their
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counterclaim of trademark infringement in regard to Mr. White’s use of
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It’s Pawsible, and to summary judgment in their favor on Mr. White’s
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claim for a declaratory judgment of non-infringement in regard to his
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use of It’s Pawsible.
Accordingly, when viewing the evidence in the light most
Therefore, because Mr. White’s
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Yet, the Court finds the Sleekcraft factors do not support a
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finding as a matter of law that Mr. White’s use of Al’s Pawsible is
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likely to cause confusion with the Parks’ It’s Pawsible mark.
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names do contain “Pawsible.”
And the first word of each name contains
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an “’s” after two letters.
“Al’s” is an abbreviation for Alan, Mr.
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White’s first name—it is specific to the owner; whereas, “It’s” is a
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generic term.
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or refer to the same matter.
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intended to cause confusion by using the name Al’s Pawsible.
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Time Machine, 2015 WL 4068877, *7.
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for the Court on the point of consumer confusion, the Court must draw
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all reasonable inferences in favor of the non-moving party.
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done so, the Court finds there is currently a genuine dispute of material
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fact as to Mr. White’s use of Al’s Pawsible and denies the Parks summary
ORDER - 8
Both
Both words are three-letter words but they do not rhyme
There is no evidence that Mr. White
See Multi
While this is a very close question
Having
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judgment on their counterclaim of trademark infringement in regard to
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Mr. White’s use of Al’s Pawsible.4
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prove enlightening.
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D.
It’s possible that discovery will
Conclusion
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For the above-given reasons, IT IS HEREBY ORDERED:
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1.
The Parks’ Motion for Partial Summary Judgment, ECF No. 25,
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is GRANTED IN PART (It’s Pawsible) and DENIED IN PART (Al’s
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Pawsible).
2.
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Summary judgment is entered in the Parks’ favor on their
trademark-infringement counterclaim as to It’s Pawsible.
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3.
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Mr. White’s claim for a declaratory judgment that his use of
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It’s
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trademark is denied as a matter of law.
4.
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Pawsible
Mr.
White
does
and
not
his
infringe
agents,
servants,
employees,
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acting in concert or participation with him are permanently
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enjoined from:
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a. Using
any
assigns,
registered
representatives,
displaying
and
Parks’
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or
successors
the
simulation,
and
all
others
reproduction,
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counterfeit, copy, or colorable imitation of the Parks’
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IT’S PAWSIBLE registered trademark in connection with
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providing, offering to provide, selling, offering to sell,
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Mr. White has not moved for summary judgment in his favor in regard to his
claim
that
his
infringement.
ORDER - 9
use
of
Al’s
Pawsible
does
not
constitute
trademark
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promoting,
or
advertising
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dog-training
services
and
related goods and services;
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b. Registering or continuing to register any domain name that
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contains any simulation, reproduction, counterfeit, copy,
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or
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registered
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which Mr. White shall transfer to the Parks within ten
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days from the date of this Order.
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paying for the use of this domain name from that point
the
including
Parks’
IT’S
PAWSIBLE
itspawsible.webs.com,
The Parks are to begin
trademark in any trade or corporate names.
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trademark,
of
c. Using the names and logos of the Parks’ IT’S PAWSIBLE
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imitation
forward if they desire to retain the domain; and
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colorable
IT IS SO ORDERED.
The Clerk’s Office is directed to enter this
Order and provide copies to all counsel.
DATED this
4th
day of August 2014.
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s/Edward F. Shea
EDWARD F. SHEA
Senior United States District Judge
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Q:\EFS\Civil\2015\5011.msj.lc1.docx
ORDER - 10
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