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Cook v. J&J Snack Foods Corp.


January 27, 2010


The opinion of the court was delivered by: Garland E. Burrell, Jr. United States District Judge


On December 23, 2009, Defendants J & J Snack Foods Corp. ("J & J") and Whiting's Foods Concessions, Inc. ("Whiting's") filed a motion for partial summary judgment under Federal Rule of Civil Procedure 56(c) on Plaintiff's trademark infringement claim. Plaintiff's complaint alleges Defendants' use of the phrase "Mix It Up" in connection with the sale of frozen carbonated beverages infringes on Plaintiff's federally registered "Mix It Up!" service mark. Defendants argue they are entitled to partial summary judgment since Plaintiff's service mark is not protectable and, as a matter of law, there is no liklihood of confusion resulting from their use of Plaintiff's mark. For the reasons stated below, Defendants' motion for partial summary judgment is DENIED.


Under Federal Rule of Civil Procedure 56(c), the party moving for summary judgment bears the initial burden of demonstrating the absence of a genuine issue of material fact for trial. Celotex Corp. v. Catrett, 477 U.S., 317, 323 (1986). If the moving party satisfies this burden, the "non-movant must show a genuine issue of material fact by presenting affirmative evidence from which a jury could find in his favor." F.T.C. v. Stefanchik, 559 F.3d 924, 929 (9th Cir. 2009)(citation and emphasis omitted). When deciding a summary judgment motion, "all reasonable inferences are to be drawn in favor of the non-moving party." Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 630 (9th Cir. 2005). However, "[a] non-movant's bald assertions or mere scintilla of evidence in his favor are both insufficient to withstand summary judgment." Stefanchik, 559 F.3d at 929. Further, only admissible evidence may be considered in deciding a summary judgment motion. See Fed. R. Civ. P. 56(e); Ballen v. City of Redmond, 466 F.3d 736, 745 (9th Cir. 2006)(stating that "[a] trial court may only consider admissible evidence in ruling on a motion for summary judgment"). "Although disfavored in trademark infringement cases, summary judgment may be entered when no genuine issue of material fact exists." Surfvivor, 406 F.3d at 630.


Plaintiff Brien Cook is a sole proprietor of a business that rents machines for making frozen beverages at private parties. (Pl.'s Response to Defs.' Statement of Undisputed Facts ("SUF") ¶ 1.) Plaintiff's business also sells frozen beverage machines, services and repairs such machines, and sells MIX IT UP! branded beverages. (Cook Decl. ¶ 2.) Plaintiff has only rented machines within 60 miles of Sacramento but sells his MIX IT UP! branded beverages nationally. Plaintiff declares that his "customers make reservations for renting machines via telephone and [through his] website," (Id. ¶ 3.)

Plaintiff has been using the mark "MIX IT UP!" in his business since October 1, 2004. (Pl.'s Response to Defs.' SUF ¶¶ 2-3; Cook Decl. ¶ 2.) On February 7, 2006, Plaintiff applied to federally register his "MIX IT UP!" mark with the United States Patent and Trademark Office ("PTO")(Cook Decl. ¶ 5.) Registration on the principal register issued for Plaintiff's service mark on July 21, 2009. (Id. ¶ 5, Ex. B.) The registration provides that "[t]he mark consists of standard characters without claim to any particular font, style, size or color." (Id.) The registration further states that the service mark is used in connection with the "rental of machines and apparatus for making both alcoholic and non-alcoholic iced fruit beverages, for use at special events from house parties to galas and the like . . . ." (Id.) Plaintiff declares that he "adopted the MIX IT UP! mark to connote that having a frozen beverage machine at a party is unique and different and thus 'mixes up' what would otherwise be a routine event." (Id. at ¶ 4.) He further declares that he uses the mark "in both a standard character format with no design elements on [his] website and print advertising as well as a stylized version which includes the words MIX IT UP in black with an orange exclamation point and green swirl design underneath. [The] stylized mark also appears on [Plaintiff's] machines and bottles for the frozen drink machine beverages [he] sell[s]." (Id.)

Defendant J & J is a national and international manufacturer, marketer and distributer of a variety of branded snack foods and beverages for the food service and retail supermarket industries. (Pl.'s Response to Defs.' SUF ¶ 10.) Through its subsidiary, The ICEE Company, J & J sells carbonated frozen beverages under its nationally prominent brands ICEE and SLUSH PUPPIE. (Id. ¶ 13.) J & J sells ICEE and SLUSH PUPPIE drinks through various retail outlets, including Target, Wal-Mart, at movie theaters, concession counters, amusement parks and other pubic entertainment venues. (Id. ¶ 17.)

At some of these retail locations, various flavors of ICEE or SLUSH PUPPIE branded drinks may be mixed in different combinations by the consumer, "often as an interactive self-service experience." (Id. ¶ 18.) The ICEE Company employs the phrase "Mix It Up" as a slogan with these "multi-flavor mixing stations." (Id. ¶ 19.) Dan Fachner, the President of The ICEE Company, declares "[T]he Icee Company commenced use of the . . . MIX IT UP slogan in April 2007. The slogan is used . . . with the company's trademarks such as ICEE MIX IT UP and SLUSH PUPPIE MIX IT UP. The slogan[] tell[s] the customer[] that they can mix up flavors to their individual tastes as they operate the dispensers that pour the ICEE and SLUSH PUPPIE products into their cups." (Fachner Decl. ¶ 4.)

In or about December 2004, Plaintiff sought to meet with representatives from The ICEE Company to explore mutual business opportunities, including the marketing of ICEE branded products on Plaintiff's website. (Cook Decl. ¶ 6.) On or about January 25, 2005, Plaintiff met with two employees of The ICEE Company, Dave Springer and Randy Fachner. (Id.) At this meeting, Plaintiff gave Springer and Fachner copies of his marketing materials which featured his MIX IT UP! mark. (Id.) Plaintiff declares that Springer and Fachner expressed enthusiasm over his proposal to sell ICEE branded mixes through his website. (Id.) Dan Fachner, however, declares that Plaintiff's proposal never came to the attention of The ICEE Company's leadership. (Fachner Decl. ¶ 6.) Fachner further declares that The ICEE Company's decision to use the phrase "Mix It Up" in connection with multi-flavor mixing stations was developed by The ICEE Company's marketing department and not from the meeting Plaintiff had with Randy Fachner and Dave Springer. (Id. ¶ 5.) Defendants attach additional declarations from Ken Whiting, Randy Fachner, Dave Springer, Dan Fachner, Susan Woods and Karen Kline to their reply brief. Most of these declarations address The ICEE Company's decision to employ the slogan "Mix It Up." However, new evidence that is presented in a reply brief need not be considered and is therefore disregarded. See Provenz v. Miller, 102 F.3d 1478, 1483 (9th Cir. 1996)(stating that "where new evidence is presented in a reply to a motion for summary judgment, the district court should not consider the new evidence without giving the non-movant an opportunity to respond" (quotations and citations omitted)).

On December 12, 2007, J & J filed a trademark application to protect the use of the phrase "MIX IT UP" in connection with the sale of frozen carbonated beverages. (Fachner Decl. ¶ 7.) However, on May 22, 2008, the PTO suspended J & J's trademark application based upon Plaintiff's prior application to register "MIX IT UP!" (Leonard Decl. ¶ 4.) The Notice of Suspension noted the PTO's conclusion that there was a liklihood of confusion between J & J's application to register its "MIX IT UP" mark and Plaintiff's prior application. (Id. ¶ 3, Ex. B.)

Defendant Whiting's is a concessionaire that sells SLUSH PUPPIE products. (Pl.'s Response to Defs.' SUF ¶ 29.) Whiting's also sells ICEE brand products through a "mixing kiosk," using the phrase "MIX IT UP." (Id. ¶ 29.) On or about August 22, 2009, Plaintiff attended the California State Fair in Sacramento, California and visited a trailer operated by Whiting's. (Cook Decl. ¶ 10.) Plaintiff declares that the phrase "MIX IT UP" appeared on Whiting's trailer and on cups and the self-service machines used by consumers to dispense the frozen beverages. (Id.) Plaintiff also saw signs on Whiting's trailer advertising a website, (Id. ¶ 11.)

Plaintiff filed a complaint against J & J on August 19, 2009, and a first amended complaint, adding Whiting's as a defendant, on August 31, 2009. Plaintiff alleges Defendants' "use of the MIX IT UP mark in connection with frozen carbonated beverage products . . . constitutes trademark infringement pursuant to 15 U.S.C. § 1114 and is likely to cause confusion among the relevant consuming public." (First Amended Compl. ¶ 22.) Defendants' answer includes a counterclaim seeking to cancel Plaintiff's service mark under 15 U.S.C. § 1119. None of the parties have conducted discovery as initial disclosures under Federal Rule of Civil Procedure Rule 26 are set to be exchanged on February 28, 2010. (Leonard Decl. ¶ 4.)


Under the Lanham Act, "the holder of a protectable [service mark] . . . [may] hold liable any person who, without consent, uses in commerce any registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services." KP Permanent Make-Up Inc., v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005)(citing 15 U.S.C. § 1114(1)(a)). To prevail on his claim of trademark infringement, Plaintiff must demonstrate that: (1) "he has a valid, protectable" service mark and (2) Defendants' use of his service mark is "likely to cause confusion." Applied Info. Sciences Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir. 2007)(quotations and citations omitted).*fn2

A. Validity of Plaintiff's Service Mark

Defendants argue Plaintiff's service mark is invalid and therefore unprotectable since it is "too descriptive" and "too common to serve as a mark." Defendants also argue Plaintiff's mark is invalid because it is not used in connection with an interstate business as required by the Lanham Act. Plaintiff counters that the federal registration of his mark creates a strong presumption that his service mark is valid and protectable. Plaintiff further argues his business is engaged "in commerce" as defined in the Lanham Act.

Only trademarks and service marks that are "distinctive" may be registered and protected under the Lanham Act. See 15 U.S.C. § 1127. In general, marks are classified by the following five categories that fall along a spectrum of distinctiveness: fanciful, arbitrary, suggestive, descriptive and generic. See Surfvivor, 406 F.3d at 631-32 (describing the five categories of marks). "Suggestive, arbitrary [and] fanciful marks are inherently distinctive, but a mark that is generic or one that is descriptive and lacks a secondary meaning, is not distinctive and does not receive trademark protection." Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1197 (9th Cir. 2009)(quotations and citations omitted). Where along the spectrum of distinctiveness a mark is categorized is a question of fact. See id. at 1195-96 (clarifying that the district court's classification of a mark is a factual determination to which clear error review is applied). The parties dispute whether Plaintiff's service mark is "suggestive" or "descriptive."*fn3 If Plaintiff's mark is classified as "descriptive," it is not entitled to protection under the Lanham Act unless it has a secondary meaning.

"Deciding whether a mark is distinctive or merely descriptive is far from an exact science and is a tricky business at best." Lahoti, 586 F.3d at 1197. However, "[r]egistration of a [service] mark on the Principal Register in the Patent and Trademark Office constitutes prima facie evidence of the validity of the registered mark . . . ." Applied Information Sciences Corp., 511 F.3d at 970; see also 15 U.S.C. § 1115 (federal registration of mark is "prima facie evidence of the validity of the registered mark"). That is, federal registration of a particular mark supports the conclusion that a mark is distinctive "because the PTO should not otherwise give it protection." Lahoti, 586 F.3d at 1999 (also stating that "[r]egistration alone may be sufficient in an appropriate case to satisfy a determination of distinctiveness"); see also Quicksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (federal registration creates a presumption that mark is "inherently distinctive"). Since it is undisputed that Plaintiff's service mark was registered on the PTO's principal register on July 21, 2009, Plaintiff has made a "prima facie" showing of validity. See id. The burden of production, therefore, shifts to Defendants to demonstrate by a preponderance of the evidence that Plaintiff's mark is in fact invalid. Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002); Vuitton Et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 776 (9th Cir. 1981)(the presumption of validity need not be rebutted by "clear and convincing evidence" but only by a "preponderance of the evidence").

Defendants raise two arguments in an apparent attempt to satisfy their burden of demonstrating the invalidity of Plaintiff's mark. First, Defendants argue third-party use of the phrase "Mix It Up" renders Plaintiff's service mark descriptive, and therefore, invalid. The presumption of validity created by a federal registration "can be rebutted by contrary evidence" that the mark is "descriptive." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 11:43 (4th ed.); see also Lahoti, 586 F.3d at 1999-00 (discussing rebuttal of the presumption of distinctiveness by evidence of third-party use and third-party registration). "That is, if others are in fact using the term [Mix It Up] to describe their products [or services], an inference of descriptiveness can be drawn." Lahoti, 586 F.3d at 1200 (quoting McCarthy Section 11:69); see also Entrepreneur Media Inc. v. Smith, 279 F.3d 1135, 1143 (9th Cir. 2002)(stating that "[t]he needs of others in the marketplace to use the term . . . to describe their goods or services . . . confirms that [the] mark [at issue] is descriptive"); Classic Foods Intern. Corp. v. Kettle Foods, Inc., No. SACV 04-725 CJC (Ex), 2006 WL 5187497, at *12 (C.D. Cal. Mar. 2, 2006)(noting extensive use of mark by third-parties marketing similar products supports conclusion that mark, is at most, descriptive). However, only third-party use "of similar marks on similar goods [or services] is relevant . . . ." Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1396, 1373 (Fed. Cir. 2005).

To support their argument that Plaintiff's service mark is merely descriptive, Defendants provide what appears to be print out copies of websites employing the phrase "Mix It Up."*fn4 (See Kim Decl. Ex. J, L, M, N and O.) Plaintiff objects to the admissibility of Exhibits J, L, M, N and O, arguing that the declarant lacks personal knowledge, and alternatively, the exhibits constitute inadmissible hearsay. (Objections to Defs.' Evidence ¶ 1.) Defendants respond, arguing that the print outs are not hearsay because they are not statements. (Reply to Pl.'s Response ¶¶ 32-37.) Defendants do not address the issue of personal knowledge.

The website print outs at issue are attached to Nani Kim's declaration. (Ex. G.) In the first paragraph of her declaration, Kim states that she has personal knowledge of the contents of her declaration. (Kim Decl. ¶ 1.) However, Kim's declaration does not provide that she has personal knowledge of the website print outs that are attached to her declaration as exhibits. That is, she does not declare that she actually viewed the websites, when and how the pages were printed, or that the print outs accurately reflect the contents of the websites she viewed. While Plaintiff did not specifically raise the objection of authentication, personal knowledge is a necessary prerequisite. See Internet Specialties West, Inc. v. ISPWest, No. CV 05-3296 FMC AJWX, 2006 WL 4568796, at *2 (C.D. Cal. Sept. 19, 2006) (stating that "[t]o be authenticated, someone with [personal] knowledge of the accuracy of the contents of the internet printouts must testify."). "To authenticate printouts from a website, the proponent must present evidence from a witness with personal knowledge of the website at issue stating that the printout accurately reflects the contents of the website and the image of the page on the computer at which the printout was made." Toytrackerz LLC v. Koehler, No. 08-2297-GLR, 2009 WL 2591329, at *6 (D. Kan. Aug. 21, 2009). Since Kim's declaration does not demonstrate that she has personal knowledge of the website print outs, Plaintiff's objection to Exhibits J, L, M, N and O is sustained.

Plaintiff also objects to the admissibility of Mendi Parker's affidavit and the accompanying website print out (Ex. K), arguing Parker lacks personal knowledge under Federal Rule of Evidence 602. (Objections to Defs.' Evidence ¶ 2.) Defendants argue Parker's declaration "states facts based on asserted personal knowledge." (Reply to Pl.'s Response ¶ 34.)

Parker's affidavit, however, does not provide that she has personal knowledge of the contents of her affidavit. Rather, she merely states that the contents of her affidavit are "to the best of her knowledge and belief . . . true and correct." (Ex. K., Parker Decl. ¶ 3.) Defendants have not demonstrated that this is sufficient to satisfy Federal Rule of Evidence 602's requirement of personal knowledge. See Argo v. Blue Cross and Blue Shield of Kansas, Inc., 452 F.3d 1193, 1200 (10th Cir. 2006)(stating that "at the summary judgment stage, statements of mere belief in an affidavit must be disregarded" (quotations and citations omitted)). Therefore, Plaintiff's objection to Parker's affidavit and the accompanying website print out is sustained.

Therefore, the admissible evidence that supports Defendants' argument of descriptiveness is a declaration from Tim Gerber, an employee of Flavor Burst, Inc., in which he declares, "Flavor Burst developed materials for the use of its Nice Ice equipment for frozen cocktails, using the phrase "Mix It Up." (Ex. P, Gerber Decl., ¶ 3.)*fn5

This evidence is clearly insufficient to overcome the presumption of validity that attaches to Plaintiff's service mark.*fn6

Even if Defendants' excluded exhibits were considered, Defendants would still fail to satisfy their burden of demonstrating invalidity. "It is now well recognized that [a]nyone can put anything on the internet. No website is monitored for accuracy and nothing contained therein is under oath or even subject to independent verification absent underlying documentation[.] [H]ackers can adulterate the content of any website from any location at any time. For these reasons, any evidence procured off the Internet is adequate for almost nothing." Internet Specialties West, 2006 WL 4568796, at *1 (quotations and citations omitted). Further, in proving descriptiveness, third-party use is "only relevant if there are similar marks on similar goods. Print outs of websites are not likely to demonstrate that the goods offered are similar, and to the extent that they do, they are hearsay." Id. at *2.

Defendants also seek to overcome the presumption of validity by arguing Plaintiff's service mark is not used in connection with interstate business and therefore fails to satisfy the Lanham Act's "use in commerce" requirement. Plaintiff disputes this contention.

Under the Lanham Act, for a service mark to be valid, the mark must be used "in commerce." See 15 U.S.C. § 1127. Section 1127 provides that a service mark "shall be deemed to be in use in commerce . . . when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State . . . ." Id. "Commerce" is defined as "all commerce which may lawfully be regulated by Congress." Id. "It is well settled that so defined 'commerce' includes intrastate commerce which affects interstate commerce." Thompson Tank & Mfg. Co., Inc. v. Thompson, 693 F.2d 991, 993 (9th Cir. 1982). Further, "[a]dvertising that affects interstate commerce and solicitation of sales across state lines . . . is therefore commerce within the meaning of the Lanham Act." Health Net v. U.S.A. Healthnet, Inc., No. CV 92-3925 KN, 1993 WL 209558, at *2 (C.D. Cal. May 12, 1993)(quoting Shatel Corp. v. Mao Ta Lumber and Yacht Corp., 697 F.2d 1352, 1356 (11th Cir. 1983)).

Defendants rely upon a copy of the "Delivery Area" subpage of Plaintiff's website as support for their argument that Plaintiff uses his service mark in connection with an only intrastate business. The webpage states that Plaintiff provides his rental services in the greater Sacramento area. Plaintiff, however, declares that "his customers make reservations for renting machines via telephone and [through his] website" and that he sells "MIX IT UP! branded beverages nationwide." (Cook Decl. ¶ 3.) Defendants' evidence is insufficient to demonstrate that Plaintiff's service mark is not used in interstate commerce. Therefore, Defendants have not rebutted the presumption of validity that attaches to Plaintiff's registered service mark. Accordingly, Defendants' summary judgment motion on the issue of the validity of Plaintiff's service mark is denied.

B. Liklihood of Confusion

Defendants also argue they are entitled to summary judgment on Plaintiff's claim of trademark infringement since, as a matter of law, there is no liklihood of confusion caused by Defendants' allegedly infringing use of Plaintiff's service mark.

"Liklihood of confusion exists when consumers viewing the mark would probably assume that the goods [or services] it represents are associated with the source of a different product [or service] identified by a similar mark." KP Permanent Make-UP, 408 F.3d at 608. "To analyze liklihood of confusion, . . . the following eight factors, generally referred to as the Sleekcraft factors, [are considered]: (1) strength of the mark(s); (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) degree of consumer care; (7) the defendants' intent; and (8) liklihood of expansion." Surfvivor, 406 F.3d at 631. "The test is a fluid one and the plaintiff need not satisfy every factor, provided that strong showings are made with respect to some of [the factors.]" Id.

However, "[t]he ultimate question of liklihood of confusion is predominantly factual in nature as is each factor within the Sleekcraft likelihood of confusion test." Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002)(quotations and citations omitted). Further, "determining whether a likelihood of confusion exists at the summary judgment stage is generally disfavored because a full record is usually required to fully assess the facts." KP Permanent Make-UP, 408 F.3d at 608.

Here, the factual record is sparse. Neither Defendants nor Plaintiff have submitted any evidence on some of the Sleekcraft factors. Further, the evidence provided on the other factors is disputed, and is insufficient for Defendants to prevail on their motion. Defendants' mere argument that there is no liklihood of confusion is insufficient to satisfy their burden on summary judgment. Accordingly, Defendants' motion for summary judgment on the issue of liklihood of confusion is denied.


For the stated reasons, Defendants' motion for partial summary judgment is DENIED.

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