United States District Court, N.D. California
ORDER GRANTING PLAINTIFF'S MOTION FOR PARTIAL
SUMMARY JUDGMENT AND DENYING MOTION FOR CLARIFICATION Re: ECF
No. 122, 157
TIGAR UNITED STATES DISTRICT JUDGE
trademark dispute, Plaintiff InternMatch, Inc. alleges that
Defendants Nxtbigthing, LLC and Chad Batterman wrongly
obtained registration of the trademark INTERNMATCH. ECF No.
1. Plaintiff seeks cancellation of the mark. Id.
Presently before the Court is Plaintiff’s Motion for
Partial Summary Judgment. Plaintiff requests that the Court
grant partial summary judgment against Defendants on
Plaintiff’s claims for (1) declaratory judgment that
Plaintiff has superior rights to Defendants in the
INTERNMATCH trademark; (2) cancellation of Registration No.
4, 641, 911 (“the ’911 Registration”); (3)
false designation of origin; and (4) unfair competition.
Plaintiff also seeks a permanent injunction and an award of
attorneys’ fees and costs incurred in the litigation.
The Court will grant Plaintiff’s motion for partial
summary judgment and enjoin Defendants from using the
INTERNMATCH mark, but will not award attorneys’ fees.
in 2009, Plaintiff provides an online platform that connects
individuals seeking internships with employers seeking
interns. ECF No. 124, Maguire Decl. ¶ 2. Plaintiff
offers these resources and tools under the service mark
INTERNMATCH. Id. Individuals use InternMatch to
search for internships and utilize its tools, such as resume
creation. Id. ¶ 3. Plaintiff offers its
services online and through social media. Its website
(www.internmatch.com) has been maintained since at
least October 31, 2009. Id. ¶ 4. Plaintiff uses
the INTERNMATCH mark to advertise and promote its services on
social media, including LinkedIn, Instagram, Google, and
Twitter. Id. ¶ 9.
its founding, InterMatch has invested time, money, and
resources to grow its business and develop goodwill
associated with the INTERNMATCH mark. Id. ¶ 5.
Plaintiff spent the following amounts annually in advertising
from 2009-2015: $8, 178 (2009); $5, 012 (2010); $18, 715
(2011); $53, 634 (2012); $100, 704 (2013); $127, 770 (2014);
and $66, 701 (2015). Id. In 2009, 100 interns and 85
employers used Plaintiff’s services, id.
¶ 6; today, Plaintiff has 1.56 million registered
interns, and 39, 645 employers have used its services.
Id. 180 colleges and universities link to
Plaintiff’s website, and a number of third party news
articles have covered Plaintiff’s services.
Id. ¶¶ 7-8.
2009, Plaintiff began a trademark application with the U.S.
Patent and Trademark Office (“USPTO”), but
abandoned the application by July 7, 2010. Id.
¶ 10. Plaintiff filed a new trademark application on
January 6, 2014, but the application was suspended because of
a pending application for the same mark filed by defendant
Nxtbigthing. Id. ¶ 11.
is a limited liability company owned by Chad Batterman. ECF
No. 32 at 8 ¶ 2. Batterman formed Nxtbigthing in 2012.
Id. at 9 ¶ 9. On March 27, 2013, Nxtbigthing
filed an intent-to-use trademark application for INTERNMATCH,
and the application issued on November 18, 2014. ECF No. 1
¶ 22; ECF No. 32 ¶ 22. Nxtbigthing states that the
trademark was first used in commerce on February 15, 2007.
ECF No. 1 ¶ 23.
January of 2014, Plaintiff sent Batterman a letter, informing
him of InternMatch’s “prior rights in the
INTERNMATCH trademark.” ECF No. 124, Maguire Decl.
¶ 11. Batterman responded by offering to settle the
INTERNMATCH matter for $325, 000. Id. Batterman also
provided documents to Plaintiff, demonstrating use of the
INTERNMATCH trademark as early as 2007. Id. The
documents included marketing flyers and an activity log.
See ECF No. 1-3, Ex. C. Plaintiff did not believe
the documents were genuine. ECF No. 124, Maguire Decl. ¶
11. Plaintiff did not accept Batterman’s offer to sell
his rights in the trademark. ECF No. 124, Maguire Decl.
began to send trademark claim notices to various social
networking services used by Plaintiff. Id. ¶
12. These notices “were very disruptive to
InternMatch’s ongoing operations and continued
promotion of its brand and goodwill, ” so Plaintiff
filed this lawsuit. Id.
discovery, Defendants did not produce any evidence showing
Defendants’ commercial use of the INTERNMATCH mark. ECF
No. 88-1, ECF No. 64-1, Keyes Decl., Ex. 1, Batterman Tr.
62:12-23. In fact, the evidence showed that Defendants have
never received any revenue from use of the mark. Id.
Procedural History and the Court’s Spoliation
filed its Complaint on December 12, 2014. See ECF
No. 1. Plaintiff alleges five causes of action: (1) false
designation of origin; (2) cancellation for fraud on the
USPTO; (3) cancellation for lack of use in commerce; (4)
declaratory judgment that InternMatch has superior rights to
Nxtbigthing and Chad Batterman in the INTERNMATCH trademark;
and (5) unfair competition under California Business and
Professions Code section 17200. Id. Plaintiff
contends that “Nxtbigthing and Mr. Batterman currently
hold or control various trademark registrations and/or
trademark applications that have been or are being prosecuted
through the use of false specimens of use at the
USPTO.” Id. ¶ 39. Central to
Plaintiff’s claims is the determination of whether
InternMatch or Nxtbigthing has priority in the INTERNMATCH
trademark and whether Batterman created and provided genuine
evidence of use documents. ECF No. 63 at 11.
Nxtbigthing and Chad Batterman answered the Complaint on
February 25, 2015. See ECF Nos. 31, 32. Nxtbigthing
also filed counterclaims alleging (1) trademark infringement,
(2) unfair competition under the Lanham Act; and (3) unfair
competition under California Business and Professions Code
section 17200. See ECF No. 32. Defendants’
Answer asserts “[f]rom 2007 through current day, Mr.
Batterman and Nxtbigthing have continuously and extensively
used the mark INTERNMATCH® in interstate commerce.”
ECF No. 32 ¶ 14.
6, 2015, the parties submitted a joint case management
statement and identified the principal factual issues in
Whether the evidence of commercial use of the INTERNMATCH
trademark by Defendants are [sic] genuine and whether
statements made by Defendants in order to procure its
INTERNMATCH trademark registration are fraudulent, such that
Defendants do not own any rights to the trademark
INTERNMATCH. Additionally, the parties dispute whether
Plaintiff is an infringer of the INTERNMATCH trademark.
ECF No. 49 at 3. The parties’ joint case management
statement also stated that the parties’ had taken
reasonable steps “to preserve evidence relevant to the
issues reasonably evidence in this action.”
Id. at 4.
the discovery phase, Plaintiff sought copies, including
electronic copies, of documents that would support
Nxtbigthing and Batterman’s assertions that they have
used the INTERNMATCH mark continuously and extensively. In
response to Plaintiff’s requests for production,
Defendants informed Plaintiff that electronic copies of
potentially responsive documents “were irretrievably
lost in August 2011 due to a lightning strike, and in April
2015 due to a power surge.” See ECF No. 65-1,
Keyes Decl., Ex. 7.
testified as follows at his deposition: Nxtbigthing created a
database in 2007 or 2008 that permitted users to search for
job postings. ECF No. 64-1, Keyes Decl., Ex. 1, Batterman Tr.
62:12-23. The database was maintained on hard drives. See
id. at 62:24-64:10. Two separate lightning strikes hit
Batterman’s office in August and September or October
of 2011. Id. at 75:1- 14. As a result of the August
2011 lightning strike, the data on the hard drives were not
recoverable. Id. Batterman purchased a replacement
iMac desktop computer in August or September of 2011.
Id. at 96:14-22. Batterman transferred documents
evidencing his use of the INTERNMATCH mark to the desktop
computer through a backup jump drive on which Batterman had
stored past marketing and advertising materials and financial
information. Id. at 130:16-132:7. He was able to
reconstruct a new database because many of the job postings
existed in paper form. Id. at 77:17-78:3. Batterman
explained that a power surge destroyed the iMac desktop
computer and other electronic devices on April 2, 2015, while
this litigation was pending. Sometime between April 5, 2015
and April 12, 2015, various electronic devices, including the
iMac desktop computer that contained corporate records and
marketing material central to the parties’ dispute,
were discarded. Defendants did not run diagnostics on the
iMac desktop computer to see if the files on the hard drive
could be recovered prior to discarding it. ECF No. 64-1,
Keyes Decl., Ex. 1, Batterman Tr. 19:9-18, 20:5-25. The
desktop computer contained the only electronic copies of
Nxbigthing’s marketing materials that allegedly
established prior use. Id. at 19:11-21:8.
Plaintiff nor, ultimately, the Court believed
Batterman’s version of events. On November 12, 2015,
Plaintiff filed a motion for terminating sanctions, accusing
Defendants of intentionally destroying the electronic
versions of the evidence of use documents. ECF No. 63. On
February 8, 2016, the Court granted the motion in part,
finding that Defendants wilfully failed to preserve relevant
evidence of use documents that they had a duty to preserve.
ECF No. 114 at 22. The Court found that terminating sanctions
were too severe, but held that Plaintiff was entitled to an
adverse inference jury instruction. Id. at 21-22.
The Court also precluded Defendants from offering testimony
or argument that the destroyed evidence, or any versions of
it in hard copy or otherwise, supported Defendants’
assertions that they had priority in the trademark.
Id. at 23. The Court also awarded monetary
sanctions. Id. at 23; ECF No. 140 (granting
Plaintiff’s application for $69, 322.45 in
attorneys’ fees and costs).
December 25, 2015, Nxtbigthing filed a motion to dismiss its
counterclaim. ECF No. 83. On February 11, 2016, the Court
granted the motion.
March 24, 2016, Plaintiff filed this motion for partial
summary judgment. ECF No. 122. On March 7, 2016, Defendants
filed a response. On April 14, 2016, Plaintiff filed a reply.
judgment is appropriate where the pleadings, depositions,
answers to interrogatories, and admissions on file, together
with the affidavits, if any, show “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). A party seeking summary judgment bears the initial
burden of informing the court of the basis for its motion and
of identifying those portions of the pleadings and discovery
responses that demonstrate the absence of a genuine issue of
material fact. See Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986). All reasonable inferences from the
evidence must be drawn in favor of the nonmoving party.
See Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
242 (1986). Once the moving party meets its burden, the
burden shifts to the nonmoving party opposing the motion, who
must “set forth specific facts showing that there is a
genuine issue for trial.” Anderson, 477 U.S.
at 256. A genuine issue exists if “the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party, ” and material facts are those
“that might affect the outcome of the suit under the
governing law.” Id. at 248. There is no
genuine issue of fact “[w]here the record taken as a
whole could not lead a rational trier of fact to find for the
nonmoving party.” Matsushita Elec. Indus. Co. v.
Zenith Radio Corp., 475 U.S. 574, 587 (1986).
moves for summary judgment on four of its five claims,
arguing that the undisputed evidence shows that InternMatch
is the senior user of the INTERNMATCH mark. See ...