The opinion of the court was delivered by: Marvin J. Garbis United States District Judge
MEMORANDUM AND ORDER: RE SUMMARY JUDGMENT
The Court has before it Defendants' Motion for Summary Judgment (sic) [Document 36] and the materials submitted relating thereto. The Court has held a hearing and has had the benefit of the arguments of counsel.
The instant case involves a dispute over the use of the name "Optimal Pet(s)" in connection with the sale of pet vitamins.
As discussed herein, in or about January 2004, Plaintiff Optimal Pets, Inc. ("OPI"), a California corporation, began using the name "Optimal Pets" to identify pet products, including vitamins, that it was offering for sale on its Internet website and in other ways. OPI's sales of products using the name "Optimal Pets" were modest, with gross sales totaling, for the four years 2004 to 2008, some $35,000 or less. OPI did not register OPTIMAL PETS as a trademark with the United States Patent and Trademark Office, but contends that it acquired common law trademark rights by virtue of its use of the name in commerce.
As discussed more fully herein, in 2008 Defendants NutriVet LLC ("Nutri-Vet") and Vitamin Shoppe Industries, Inc, ("Vitamin Shoppe") began using the name "Optimal Pet" to identify pet vitamins they were offering for sale. On May 13, 2008, Nutri-Vet filed with the United States Patent and Trademark Office an application for federal registration of the OPTIMAL PET trademark.*fn1 (Cornwell Decl., Feb. 12, 2010, Ex. A.) In August 2008, Defendants began selling products labeled with the OPTIMAL PET trademark via the Internet and through Vitamin Shoppe's approximately 422 retail stores located in 37 states.*fn2 (Ex. D to Holley Decl., Jones Dep. 14:23-16:4, 37:6-38:16, Ex. 46.) Through September 2009, Vitamin Shoppe's total gross sales of OPTIMAL PET products were over $260,000 and Nutri-Vet's were over $168,089.00. (Ex. J to Holley Decl., Squar Dep. 13:16-20, 16:7-12, Ex. 84.)
In this case, OPI is suing Defendants for their allegedly improper use of the name "Optimal Pets" asserting claims for trademark infringement, false designation of origin under the Lanham Act and unfair competition under California law.
By the instant motion, Defendants seek summary judgment on the ground that OPI "cannot establish market recognition or market penetration sufficient to establish enforceable . . . trademark rights [in the name "Optimal Pets"] either nationally or in any specific geographical area." (Defs.' Mot. for Summ. J. [Document 36] at 2.)
II. SUMMARY JUDGMENT STANDARD
A motion for summary judgment shall be granted if the pleadings and supporting documents "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." FED. R. CIV. P. 56(c).
The well-established principles pertinent to such motions can be distilled to a simple statement. The Court may look at the evidence presented in regard to the motion for summary judgment through the non-movant's rose-colored glasses, but must view it realistically. After so doing, the essential question is whether a reasonable fact finder could return a verdict for the non-movant, or whether the movant would, at trial, be entitled to judgment as a matter of law. E.g., Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 327 (1986); Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970); Soremekun v. Thrifty Payless, Inc., 509 F.3d 978, 984 (9th Cir. 2007).
To prevail on its trademark infringement claim, OPI must prove that it "has a valid protectable trademark, and that Defendants' use of the same or similar mark causes a likelihood of confusion in the minds of the relevant consuming public." See Glow Industries, Inc. v. Lopez, 252 F. Supp. 2d. 962, 975 (C.D. Cal. 2002). Because OPI did not register "Optimal Pets" as a trademark with the United States ...