United States District Court, N.D. California, San Jose Division
ORDER GRANTING MOTION FOR LEAVE TO FILE A MOTION FOR
RECONSIDERATION AND GRANTING RECONSIDERATION TO ALLEGE NEWLY
PRESENTED FACTS RE: DKT. NO. 92
H. KOH, UNITED STATES DISTRICT JUDGE
Sebastian Brown Productions, LLC (“Plaintiff”)
sues Defendant Muzooka, Inc. (“Defendant”) for
unfair competition and trademark infringement under federal
and state law. ECF No. 65 (First Amended Complaint, or
“FAC”). Before the Court is Plaintiff’s
motion for leave to file a motion for reconsideration of the
Court’s March 14, 2016 order dismissing the FAC with
prejudice. ECF No. 92 (“Mot.”). Having considered
the submissions of Plaintiff, the relevant law, and the
record in this case, the Court GRANTS Plaintiff’s
motion for leave to file a motion for reconsideration. The
Court also GRANTS reconsideration and ORDERS Plaintiff to
file a Second Amended Complaint alleging a Lanham Act claim
with Plaintiff’s newly presented facts.
March 14, 2016 order dismissing the FAC with prejudice, the
Court provided a detailed factual background to this action
and legal analysis of each of Plaintiff’s claims.
Sebastian Brown Prods. LLC v. Muzooka Inc.
(“Muzooka II”), 2016 WL 949004 (N.D. Cal.
Mar. 14, 2016), ECF No. 86. Rather than repeat that analysis
here, the Court provides a brief factual and procedural
background and then considers the issues raised in
Plaintiff’s motion for leave to file a motion for
reconsideration. The Court assumes that the parties and
readers of this order have read the Court’s March 14,
2016 order on Defendant’s motion to dismiss.
gravamen of Plaintiff’s action is that the
“Muzooka” trademark owned by Defendant (the
“Muzooka Mark”) infringes upon Plaintiff’s
“Muzook” trademark (the “Muzook
Mark”). Plaintiff alleges (1) statutory and common law
unfair competition; (2) infringement of common law trademark
rights; and (3) unfair competition under the Lanham Act, 15
U.S.C. § 1125(a). Plaintiff filed the original complaint
on January 6, 2014. ECF No. 1.
November 11, 2015, the Court granted in part and denied in
part Defendant’s motion to dismiss the original
complaint. Sebastian Brown Prods., LLC v. Muzooka, Inc.
(“Muzooka I”), 143 F.Supp.3d 1026 (N.D. Cal.
2015), ECF No. 64. As relevant to the instant motion, the
Court concluded that Plaintiff failed to state a Lanham Act
claim. Specifically, the Court concluded that Plaintiff
insufficiently alleged ownership of the Muzook Mark because
the U.S. Patent and Trademark Office (“PTO”)
listed the individual J. Michael Miller
(“Miller”) as the owner of the Muzook Mark.
Id. at 1040. Moreover, there was no assignment of
the Muzook Mark from Miller to Plaintiff in the record.
Id. The Court concluded that Plaintiff may be able
to allege additional facts showing an ownership interest in
the Muzook Mark and dismissed Plaintiff’s Lanham Act
claim with leave to amend. Id. at 1041.
December 11, 2015, Plaintiff filed the FAC, which included
the assignment of the Muzook Mark from Miller to Plaintiff.
ECF No. 65. The FAC alleged that Miller had applied for the
Muzook Mark under an “intent-to-use” application,
which permits an applicant with a bona fide intent to use a
mark to effectively reserve the mark before the mark is
actually used in commerce. See Muzooka II, 2016 WL
949004, at *1. To complete registration of the mark with the
PTO, an intent-to-use applicant must file a statement of use
indicating that the mark has been used in commerce.
Id. According to the FAC, Miller assigned the
intent-to-use application for the Muzook Mark to Plaintiff
before filing a statement of use. Id. at *1-2.
March 14, 2016, the Court granted Defendant’s motion to
dismiss the FAC. The Court found that Plaintiff failed to
allege that the assignment of the Muzook Mark complied with
15 U.S.C. § 1060(a)(1). Analyzing the text of the
statute, applicable case law, and legislative history, the
Court concluded that § 1060(a)(1) limits the assignment
of intent-to-use applications before a statement of use is
filed to situations where the intent-to-use application is
transferred with both the goodwill accrued by the mark and
the “ongoing and existing” business associated
with the mark. See Id. at *8-11. The Court noted
that the FAC contained no allegations about Miller’s
pre-assignment use of the Muzook Mark. Id. at *12.
Thus, Plaintiff failed to allege that the Muzook Mark had
accrued goodwill or been part of an “ongoing and
existing” business prior to the assignment.
Accordingly, the Court concluded that Plaintiff failed to
allege a valid assignment and thus an ownership interest in
the Muzook Mark. Id. The Court also rejected a
procedurally improper declaration by Miller submitted in
opposition to the motion to dismiss, which failed to show
that the Muzook Mark accrued goodwill before the assignment.
Id. at *12-13. The Court denied leave to amend.
Id. at *16.
April 8, 2016, Plaintiff filed the instant motion for leave
to file a motion for reconsideration of the Court’s
March 14, 2016 order. ECF No. 92.
to Civil Local Rule 7-9(a), “[b]efore the entry of a
judgment adjudicating all of the claims and the rights and
liabilities of all the parties in a case, any party may make
a motion before a Judge requesting that the Judge grant the
party leave to file a motion for reconsideration of any
interlocutory order made by that Judge on any ground set
forth in Civil L.R. 7-9(b). No party may notice a motion for
reconsideration without first obtaining leave of Court to
file the motion.” Civil Local Rule 7-9(b) provides
three grounds for reconsideration of an interlocutory order:
(1) That at the time of the motion for leave, a material
difference in fact or law exists from that which was
presented to the Court before entry of the interlocutory
order for which reconsideration is sought. The party also
must show that in the exercise of reasonable diligence the
party applying for reconsideration did not know such fact or
law at the time of the interlocutory order; or
(2) The emergence of new material facts or a change of law
occurring after the time of such order; or
(3) A manifest failure by the Court to consider material
facts or dispositive legal arguments which were presented to
the Court ...