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November 6, 1997

IN HYUK SUH, Plaintiff,

The opinion of the court was delivered by: INFANTE


 On September 29, 1997, Defendant Choon Sik Yang ("Yang") filed motions for (1) summary judgment on Count 1 and for partial summary judgment on Counts 3 and 4 of In Hyuk Suh's ("Suh") complaint on the grounds that Plaintiff's federally registered logo trademark is generic and that there is no likelihood of confusion between Plaintiff's and Defendant's graphic marks ("the Logo Mark issue") *fn1" ; and (2) summary judgment on Count 2 and partial summary judgment on Counts 3 and 4 on the grounds that the terms "KUK SOOL" and "KUK SOOL WON" are generic and that there is no likelihood of confusion between Plaintiff's marks and Defendant's use of the mark "INTERNATIONAL KUK SUL FEDERATION" ("the Word Mark issue"). On September 30, 1997, Plaintiff Suh filed a motion for summary judgment for all claims asserted in his complaint. *fn2" In response to this motion, Yang filed a counter-motion for summary judgment, contending that Suh's claims are barred by laches, and that his unfair competition claim is barred by the statute of limitations. For the reasons set forth below, both Plaintiff's and Defendant's motions for summary judgment are DENIED.


 The following facts are not disputed, except where otherwise noted.

 In 1958, Plaintiff created a unique form of martial arts that he eventually named "Kuk Sool Won." Decl. Suh, P 4. The Korea Kido Association, which is an organization established by the Korean government to oversee martial arts in Korea, recognizes Suh's exclusive right to use the term Kuk Sool Won. Decl. Suh, P 5. Plaintiff offered martial arts instruction under the name "Kuk Sool Won" until 1974, when he emigrated to the United States to teach the martial art of Kuk Sool Won. Decl. Suh, P 6, 7; Plaintiff's Exh. 7. Within two years of immigrating to the United States, Suh established schools in Illinois, Louisiana, Texas, and Arkansas to teach Kuk Sul. Decl. Suh, P 8. Plaintiff has licensed 120 schools worldwide under the Kuk Sool trademark and logo. Suh Decl. P 8.

 In 1983, Suh registered a service mark described as a "fanciful design of a clutching fist surrounded by traditional weapons and a cloud-like perimeter" with Korean characters, which, translated into English, states "Korean Martial Arts Center." Plaintiff, exh. 1. Plaintiff was required to disclaim the right to use the design of the Korean words, apart from the mark as shown. Id. Plaintiff also attempted to register the service mark "Kuk Sool Won" for "instructional services relating to martial arts training" and "World Kuk Sool Association" ("WKSA") for "conducting schools competition (sic.) and demonstrations relating to martial arts" with the Patent and Trademark Office ("PTO") in 1981, 1994, and 1995 (Defendant's exh. 8-12). These applications were all denied as being "highly descriptive," "merely descriptive," and "generic." Defendant's exh. 14-17, 32, 43, 45. Plaintiff has registered the term Kuk Sool Won and his fist logo in over half the U.S. states (including California) and in Canada and England. Suh Decl. P 13 and Plaintiff's exh. 3.

 Defendant Yang began his martial arts study in 1958, and first studied Kuk Sool Won/Hap Ki Do in 1963. Yang Depo., p. 9, 15. In 1965, Yang began studying Kuk Sool Won Hap Ki Do at a school that was operated by Plaintiff's older brother. Yang Depo., p. 23. Yang became an instructor in this school in 1970, and he continued teaching until he immigrated to the United States in 1979. Yang Depo. p. 25, 42. Yang moved to the United States and worked as a Master in a school owned by another one of Plaintiff's brothers, which was affiliated with The World Kuk Sool Association. Yang Depo., p. 48. In 1980, Yang bought this school and continued to run it as the "Kuk Sool Won San Jose School" until 1987. Yang Depo., p. 48. In 1987, Yang and other branch masters became dissatisfied about the manner in which Plaintiff was dividing and managing various student fees and wanted Suh to resign from his position of Grand Master from the WKSA. Suh declined, and invited Yang to leave the organization. Yang Depo. p. 130. Yang told Suh that he intended to start a different kuk sool organization or studio and ended his membership with the WKSA. Yang Depo., p. 130. Yang continued to run his martial arts studio, and took the name International Kuk Sul Federation. Yang Depo., p. 135. Yang testified that he "personally used the name of Yang's Kuk Sul Academy" as well as "Yang's Kuk Sul" in 1988. Id. At some point, Defendant adopted a graphic "logo" in connection with his business. In 1996, and after Plaintiff's counsel demanded that Yang cease and desist the use of his original logo, Defendant designed a second graphic logo. Yang Depo., p. 169:14-23.

 Defendant testified that he began advertising under the name "International Kuk Sul Federation" in the phone book in or about 1990. Yang Depo., p. 136. Yang states that there are four licensees of the International Kuk Sul Federation located in Geneva City, Cleveland, Paradise, and Guadalajara, Mexico. Yang Depo., p. 118. Yang also testified that his organization is "in a sister relationship with two organizations in Korea, called the Dae Han Kuk Sul Association and the International Kuk Sul Association. Yang Depo., p. 119.

 Suh states that he first learned in 1995 that Yang was using the name "International Kuk Sul Federation," although he does not identify the circumstances under which he became aware of this use. Declaration of Suh in Support of Plaintiff's Opposition to Defendant's Counter-Motion for Summary Judgment, P 2. In August 1995, Yang received a letter from Plaintiff's counsel demanding, among other things, that Yang cease all use of the term "KUK SUL," Yang's Fist Logo Design, or any other variation of Suh's marks. Declaration of Narayanamurthi, Exh. 15.

 On September 12, 1996, Plaintiff filed a complaint against Defendant in the Superior Court of Santa Clara County alleging claims for (1) Service and Trademark Infringement, pursuant to 15 U.S.C. § 1114(a), based upon Defendant's use of the Yang Fist Logo; (2) Violation of the Lanham Act, pursuant to 15 U.S.C. § 1125(a), alleging that Defendant's actions of advertising his services as instruction in Kuk Sool falsely designates himself as the source of origin of the martial arts system described in the Kuk Sool Won service mark, and that Yang's marketing and selling products under the Kuk Sul name and Yang Fist Logo causes confusion as to the origin of the Plaintiff's martial arts; (3) Service Mark and Trademark Infringement, pursuant to Cal. Bus. & Prof. Co. § 14320 and the common law, based upon Defendant's use of the term Kuk Sul and the Yang Fist Logo; and (4) Unfair Competition, pursuant to Cal. Bus. & Prof. C. §§ 17200 et seq. and common law, for wrongful use and dilution of Plaintiff's word and logo service marks.

 Defendant removed this case to federal court on October 24, 1996.


 Summary judgment is proper "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Rule 56(c), Fed.R.Civ.P. The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548, 2553, 91 L. Ed. 2d 265 (1986). However, the moving party has no burden to negate or disprove matters on which the non-moving party will have the burden of proof at trial. The moving party need only point out to the court that there is an absence of evidence to support the non-moving party's case. Celotex, 477 U.S. at 325, 106 S. Ct. at 2554.

 The burden then shifts to the non-moving party to "designate 'specific facts showing that there is a genuine issue for trial.'" Id. at 324, 106 S. Ct. at 2553 (quoting Rule 56(e)). To carry this burden, the non-moving party must "do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Electric Industrial Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S. Ct. 1348, 1356, 89 L. Ed. 2d 538 (1986). "The mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party]." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S. Ct. 2505, 2512, 91 L. Ed. 2d 202 (1986). Evidence that "is merely colorable, or is not significantly probative," is not sufficient to avoid summary judgment. Id. at 249-250, 106 S. Ct. at 2511.

 Summary judgment cannot be granted where a genuine dispute exists as to any material fact. Rule 56(c), F.R.Civ.P. A "material" fact is one which might affect the outcome of the case under the applicable law. Anderson, 477 U.S. at 248, 106 S. Ct. at 2510. A dispute about a material fact is genuine if a reasonable jury could return a verdict for the non-moving party. Id. In deciding a motion for summary judgment, the evidence is viewed in the light most favorable to the non-moving party, and all justifiable inferences are to be drawn in its favor. Id. at 255, 106 S. Ct. at 2513. Moreover, "credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge [when] he is ruling on a motion for summary judgment." Id.


 Although the parties bring three separate motions for summary judgment, two of the motions share the following common issues: 1) whether the terms "Kuk Sool" and "Kook Sool Won" are generic, and thus are not protected under federal and state trademark law; and 2) whether there is a substantial likelihood of confusion between the parties' service marks. Defendant's countermotion for summary judgment on grounds of laches and running of the statute of limitations on Plaintiff's unfair competition claim will be discussed separately.


 Defendant Yang seeks summary judgment in his favor of Count 2 and partial summary judgment in his favor on Counts 3 and 4, contending that the term "Kuk Sool Won" or "Kuk Sool" are generic and that Plaintiff has promoted kuk sool as a type of martial art. Plaintiff responds by attacking Defendant's evidence on foundation and hearsay grounds, asserts that Defendant has the burden of proof in showing that Plaintiff's word marks have become generic through public use, and contends that the only admissible evidence before the court establishes that Kuk Sool and Kuk Sool Won are arbitrary terms subject to trademark protection.

 1. Plaintiff has the burden of establishing that "kuk sool" and "Kuk Sool Won" are not generic terms. However, Defendant has the burden of establishing that the terms "KUK SOOL" and KUK SOOL WON" have become generic through public use.

 The first issue of dispute between the parties is which party has the burden of establishing that "Kuk Sool" and "Kuk Sool Won" are or are not subject to trademark protection.

 As a general rule, there is a presumption that service marks are generic if they are not federally registered, and that the person asserting trademark protection of service marks that are not federally registered has the burden of establishing the service marks are not generic once the defendant has raised the defense of genericness. See, e.g., Bath & Body Works, Inc. v. Luzier Personalized Cosmetics, Inc., 76 F.3d 743, 748 (6th Cir. 1996) (citing J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 12.02[7][b] (3d ed.1993). However, the Second Circuit has held that where the public has come to use an invented or coined term as a generic name after use of the term as a trademark, the burden is upon the alleged infringer to show that an unregistered term has become generic. The Murphy Bed Co., Inc. v. Interior Sleep Systems, Inc., 874 F.2d 95, 101 (2d Cir.1989). The Ninth Circuit has not addressed this issue, although a California Northern District Court recognized this presumption in Intel Corp. v. Advanced Micro Devices, 756 F. Supp. 1292 (N.D.Cal.1991). While Defendant does not introduce any evidence to suggest that the term "kuk sool" or "Kuk Sool Won" was in common usage prior to Plaintiff's use of these terms, he does contend that the terms "kuk sool" and Kuk Sool Won" were generic when adopted by Plaintiff since the literal translation of kuk sool and Kuk Sool Won is "National Martial Arts" and "National Martial Arts Association," respectively. See, e.g., SD Decl., exh. 16. Based upon this allegation, Defendant is alleging that the service marks were generic when coined, even though he does not dispute that Plaintiff was the first person to use these terms in connection with a martial art.

 In following the general presumptions set forth above, Plaintiff Suh has the burden of showing that the terms "kuk sool" and "Kuk Sool Won" were not generic when adopted by him (i.e., the terms name "some distinctive characteristic" of the product or services *fn3" ), and Defendant Yang has the burden of showing that the terms later became generic through public use.

 This issue is largely academic, however, since Defendant has presented sufficient evidence to satisfy both burdens, as explained below.

 2. Classification of Trademark Terms

 Before examining the evidence presented by the parties, it is useful to set forth the general rules on the classification of service and trademarks. As adeptly explained by the court in Blinded Veterans Ass'n v. Blinded American Veterans Foundation, ...

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