The opinion of the court was delivered by: Garland E. Burrell, Jr. United States District Judge
ORDER DENYING DEFENDANTS' MOTION FOR PARTIAL SUMMARY JUDGMENT*fn1
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, mixitup.biz." (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, slushpuppiemixitup.com. (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 ...