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Marketquest Group, Inc. v. BIC Corporation

United States District Court, S.D. California

April 17, 2015

MARKETQUEST GROUP, INC., a California corporation d/b/a All-In-One, Plaintiff,
BIC CORPORATION, a Connecticut corporation, et al., Defendants.


CYNTHIA BASHANT, District Judge.

Before the Court are Defendants Norwood Promotional Products, LLC ("Norwood") and BIC USA, Inc.'s ("BIC") motions for summary judgment. ECFs 214, 215. Plaintiff Marketquest Group, Inc. ("Marketquest") has sued them for infringing its trademarks "All-In-One" and "The Write Choice" (respectively), and Defendants have moved for summary judgment on all claims on the basis that any infringement is protected by fair use. For the following reasons, the Court GRANTS Defendants' motions.


Plaintiff Marketquest Group Inc. is a California corporation that produces and sells various promotional products. FAC ¶¶ 10-12. Marketquest has registered trademarks for "ALL-IN-ONE" and "THE WRITE CHOICE."[1]

BIC included the phrase "The Write Pen Choice" in online advertising and displays for writing instruments, including its pens, in October 2010. FAC ¶¶ 21-25. This campaign, designed to celebrate BIC's thirty-year anniversary producing its ROUND STIC pens in the United States, included BIC ® and ROUND STIC ® at the top of the page, followed by "The WRITE Pen Choice for 30 years!", unaccompanied by either TM or ®. BIC and ROUND STIC, along with BIC's logo, are included in other portions of the advertisement and are always prominently followed by ®. FAC, Ex. G. This advertisement could allegedly be found on various internet sites and at BIC's promotional displays. FAC ¶ 23. This promotion is no longer active.

Norwood, a subsidiary of BIC, sells promotional products and included the phrase "All in ONE" on its 2011 product catalogue. FAC ¶ 24. This catalogue included many of Norwood's hard goods products in one catalogue and is no longer available. "Norwood ®" was printed in a larger font on the cover of the catalogue, and "All in ONE" appeared below and to the right of it.


Federal courts sitting in diversity "apply state substantive law and federal procedural law." Snead v. Metro. Prop. & Cas. Ins. Co., 237 F.3d 1080, 1090 (9th Cir. 2001) (citing Gasperini v. Ctr. for Humanities, Inc., 518 U.S. 415, 427 (1996)). Under Rule 56 of the Federal Rules of Civil Procedure, summary judgment is appropriate if "the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). An issue of fact is "material" if it "might affect the outcome of the suit under the governing law." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); George v. Morris, 736 F.3d 829, 834 (9th Cir. 2013). A dispute is "genuine" if "a reasonable jury could return a verdict for the nonmoving party." Anderson, 477 U.S. at 248; see also FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 514 (9th Cir. 2010). "Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment." T.W. Elec. Serv., Inc. v. P. Elec. Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987) (citing Anderson, 477 U.S. at 248).

A party seeking summary judgment bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex Corp., 477 U.S. at 323. The moving party without the ultimate burden of persuasion at trial can satisfy this burden in two ways: (1) by producing "evidence negating an essential element of the nonmoving party's claim or defense;" or (2) by demonstrating that the nonmoving party does not have enough evidence of an essential element to carry its ultimate burden of persuasion at trial. Nissan Fire & Marine Ins. Co., Ltd. v. Fritz Cos., Inc., 210 F.3d 1099, 1102 (9th Cir. 2000); Celotex, 477 U.S. at 322-23; Fed.R.Civ.P. 56(c)(1). Evidence may be offered "to support or dispute a fact" on summary judgment only if it "could be presented in an admissible form at trial." Fraser v. Goodale, 342 F.3d 1032, 1036-37 (9th Cir. 2003); see also Fed.R.Civ.P. 56(c)(2). However, at the summary judgment stage, the focus is not on the admissibility of the evidence's form, but on the admissibility of its contents. Id. If the moving party meets it burden, the burden then shifts to the non-moving party to produce admissible evidence showing a genuine issue of material fact. Nissan Fire, 210 F.3d at 1102-03; Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986).

"[I]n granting summary judgment a district court cannot resolve disputed questions of material fact; rather, that court must view all of the facts in the record in the light most favorable to the non-moving party and rule, as a matter of law, based on those facts." Albino v. Baca, 747 F.3d 1162, 1173 (9th Cir. 2014). "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] ruling on a motion for summary judgment[.]" Anderson, 477 U.S. at 255.


Two provisions of The Lanham Act, 15 U.S.C. §§ 1124-25, protects trademarks from infringement. In particular, former Section 43 (now 15 U.S.C. § 1125) prohibits false designations of origin or dilution of a trademark under a "likelihood of confusion" standard. If the false designation is "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person" the trademark holder may sue the infringer. Previously in this case, the court determined that BIC and Norwood's use of Marketquest's trademark had some likelihood of confusion. See Order Den. Prelim. Inj. 20:17-20, ECF 41. While some of the evidence presented at the summary judgment stage changes the calculus of some Sleekcraft factors, the Court is satisfied that there is some likelihood of confusion and therefore the potential for trademark infringement liability. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). Further analysis of those factors is unnecessary, however, because BIC and Norwood's uses of Marketquest's trademarks are completely protected by fair use.

Fair use is an affirmative defense to trademark infringement. In trademark law, fair use is a defense if "the use of the... term, or device charged to be an infringement is a use, otherwise than as a mark, ... of a term or device which is descriptive of and used fairly and in good faith only to describe the [defendant's] goods or services[.]" 15 U.S.C. § 1115(b)(4). Here, Defendants allege "classic fair use" defenses because they used Marketquest's marks only to describe their own products, which applies when defendants "ha[ve] used the plaintiff's mark only to describe [their] own product, and not at all to describe the plaintiff's product." Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 809 (9th Cir.2003) (emphasis deleted) (internal quotations omitted). Under fair use doctrine, "[a] junior user is always entitled to use a descriptive term in good faith in its primary, descriptive sense other than as a trademark.'" Cairns v. Franklin Mint Co., 292 F.3d 1139, 1150-51 (9th Cir.2002) (quoting 2 McCarthy on Trademark and Unfair Competition § 11.45 (4th ed.2001)). This doctrine "forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods." See New Kids on the Block v. News Am. Publ'g, Inc., 971 F.2d 302, 306 (9th Cir.1992) (internal quotation omitted)). To invoke the fair use defense, defendants must show they are (1) not using the term as a trademark, (2) use the term only to describe their own goods and services, and (3) use the term fairly and in good faith. Cairns, 292 F.3d at 1151.

According to the Supreme Court, "the defendant has no independent burden to negate the likelihood of any confusion in raising the affirmative defense" of fair use. KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 124, 125 S.Ct. 542, 160 L.Ed.2d 440 (2004). Therefore, "some possibility of consumer confusion must be compatible with fair use[.]" Id. at 121, 125 S.Ct. 542; Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211, 217 (3d Cir.2005). The fair use defense recognizes "the undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first." KP Permanent Make-Up, 543 U.S. at 122, 125 S.Ct. 542. The Ninth Circuit has clarified that although some consumer confusion will not negate fair use, the degree of consumer confusion remains a factor. KP Permanent Make-Up Inc. v. Lasting Impression I, 408 F.3d 596, 609 (9th Cir. 2005). Relevant factors include "the degree of likely confusion, the strength of the trademark, the descriptive nature of the term for the product ...

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