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Brady v. Grendene Usa, Inc.

United States District Court, S.D. California

November 12, 2014

JAMES W. BRADY and PATRICIA M. BRADY, Plaintiffs,
v.
GRENDENE USA, INC., a Delaware Corporation, and GRENDENE S.A., a Brazil Corporation, Defendants. AND RELATED COUNTERCLAIMS

ORDER: (1) GRANTING PLAINTIFFS' MOTION FOR LEAVE TO FILE SUR-REPLY IN OPPOSITION TO MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT [ECF No. 113] (2) DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, PARTIAL SUMMARY JUDGMENT; [ECF No. 72]

GONZALO P. CURIEL, District Judge.

I. INTRODUCTION

Plaintiffs James W. Brady and Patricia M. Brady (collectively, the "Bradys") filed this trademark infringement action alleging that the Defendants Grendene USA, Inc. and Grendene S.A. (collectively, "Grendene") infringed the Bradys' IPANEMA WEAR mark and IPANEMA mark for swimwear by selling footwear bearing the IPANEMA mark. Grendene has filed a Motion for Summary Judgment or, in the Alternative, Partial Summary Judgment. (ECF No. 72.) Grendene asserts that it has the right to use the IPANEMA mark on footwear as a result of the assignment of a registered mark for IPANEMA footwear, challenges the Bradys' claim that IPANEMA WEAR and IPANEMA marks extend to footwear, and raises affirmative defenses. The Bradys filed an opposition challenging the claimed assignment and affirmative defenses. (ECF No. 93.) Grendene responded. (ECF No. 108.) The Bradys filed a motion for leave to file a sur-reply accompanied by the proposed sur-reply. (ECF No. 113, 113-1.) Good cause appearing, the Court GRANTS the Bradys' motion for leave to file a sur-reply; the proposed sur-reply is deemed filed.

The parties have fully briefed the motion. (ECF Nos. 72, 93, 108, 113-1.) The Court finds the motion suitable for disposition without oral argument pursuant to Civil Local Rule 7.1(d)(1). Upon review of the moving papers, admissible evidence, and applicable law, the Court DENIES Grendene's Motion for Summary Judgment or, in the Alternative, Partial Summary Judgment because there is insufficient evidence to determine whether each of the '404 Mark assignments were valid and the evidence surrounding Grendene's affirmative defenses is disputed.

II. PROCEDURAL BACKGROUND

On March 9, 2012, the Bradys filed a complaint against Grendene alleging trademark infringement, false designation of origin, and unfair competition. (ECF No. 1.) On March 16, 2012, the Bradys a filed a first amended complaint ("FAC"). (ECF No. 4.) On October 4, 2012, this case was transferred to the Honorable Gonzalo P. Curiel. (ECF No. 39.) On September 3, 2013, Grendene answered the FAC and filed two counterclaims for: (1) a declaratory judgment of noninfringement, and (2) a declaratory judgment of invalidity. (ECF No. 56.)

On May 30, 2014, Grendene filed this motion for summary judgment or, in the alternative, partial summary judgment. (ECF No. 72.) On June 18, 2014, Grendene filed a notice of errata withdrawing several pages from a declaration by David W. Quinto attached to its motion. (ECF No. 82.) On July 25, 2014, the Bradys filed a response in opposition to Grendene's motion. (ECF No. 93.) On August 1, 2014, Grendene filed a notice of errata correcting a declaration by Michael Bradford attached to its motion. (ECF No. 99.) On August 15, 2014, Grendene replied to the Bradys' opposition. (ECF No. 108.) On September 5, 2014, the Bradys filed a sur-reply. (ECF No. 113-1.)

III. FACTUAL BACKGROUND

On September 13, 1983, the Ipanema Shoe Corporation ("ISC") obtained a registration in the mark "IPANEMA" from the United States Patent and Trademark Office ("USPTO"). (ECF No. 72-3, Ex. A); IPANEMA, Registration No. 1, 251, 204 (the "'204 Mark"). On January 25, 1990, ISC's IPANEMA mark was cancelled for failure to timely submit a Section 8 affidavit. (ECF No. 72-3, Ex. A.)

On January 8, 1991, Made in Brazil, Inc. ("MIB"), the Bradys' past and present employer, (ECF No. 96, ΒΆ 2), obtained a registration in the IPANEMA WEAR mark from the USPTO. (ECF No. 94-17); IPANEMA WEAR, Registration No. 1, 630, 915 (the "'915 Mark"). On September 26, 1991, MIB applied to register the IPANEMA mark for swimwear with the USPTO, and on June 22, 1993, the USPTO granted MIB's application. (ECF No. 72-3, Ex. B); IPANEMA, Registration No. 1, 778, 404 (the "'404 Mark"). MIB subsequently assigned the '404 Mark to the Bradys. (ECF No. 72-4, Ex. A.) On June 22, 2003, the Bradys renewed the '404 Mark. (ECF No. 94-3.)

On November 24, 1992, after learning of the cancellation of the '204 Mark, ISC applied to re-register the IPANEMA mark with the USPTO. (ECF No. 72-3, Ex. C); U.S. Trademark Application Serial No. 74, 334, 106 (filed November 24, 1992). On March 8, 1993, the USPTO denied ISC's 1992 application in light of MIB's '915 Mark. (ECF No. 95-2, at 70.) On July 30, 1993, ISC filed a petition with the Trademark Trial and Appeal Board ("TTAB") seeking to cancel MIB's '915 and '404 Marks. (ECF No. 72-3, at 20.) On January 18, 1994, the USPTO again denied ISC's 1992 application in light of MIB's '404 Mark. (Id. at 52.)

On Feburary 16, 1995, MIB and ISC entered into a settlement agreement (the "Settlement Agreement") with the following covenants and conditions:

1. MIB, its affiliates, predecessors and successors agree to use the marks IPANEMA and IPANEMA WEAR only in connection with the sale of swimwear and activewear, and not in connection with any footwear;
2. ISC, its affiliates, predecessors and successors agree to make no objection, formally or informally, to the use by MIB, its affiliates, predecessors and successors of the terms IPANEMA or IPANEMA WEAR as a trademark in the selling of swimwear and activewear (excluding all footwear) as long as such use is in accordance with the terms of this Agreement.
3. MIB has executed a Letter of Consent, which is attached to this Agreement as Exhibit A. Further, MIB agrees to execute any further consent papers to assist ISC to register ISC's federal trademark application for the trademark IPANEMA, Serial No. 74/334, 106, which is currently pending at the U.S. Patent and Trademark Office.
4. MIB, its affiliates, predecessors and successors agree to make no objection, formally or informally, to the use by ISC, its affiliates, predecessors and successors of the term IPANEMA as a trademark in the selling of footwear as long as such use is in accordance with the terms of this Agreement.
5. This settlement agreement is subject to ISC obtaining registration at the Patent and Trademark Office of its trademark IPANEMA, Serial No. 74/334, 106. If ISC cannot obtain registration for the trademark IPANEMA, Serial No. 74/334, 106, this Agreement will be null and void. In that event, the rights of ISC and MIB to the name IPANEMA and IPANEMA WEAR will revert to the rights of the respective parties prior to settlement.
6. ISC agrees to stipulate to a suspension of any cancellation proceeding it may have brought against MIB's IPANEMA and IPANEMA WEAR trademark registrations pending the final results of the registration of ISC's application to register IPANEMA, Serial No. 74/334, 106.
7. If ISC obtains registration of the trademark IPANEMA, Serial No. 74/334, 106, as stated in Paragraphs 5 and 6, ISC agrees to withdraw without prejudice its Petition to Cancel, Cancellation No. 22, 022, MIB's registrations for the trademarks IPANEMA WEAR ...

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