United States District Court, C.D. California
ORDER RE: PLAINTIFF'S THIRD MOTION FOR PARTIAL
SUMMARY JUDGMENT [DKT. 305]
D. PREGERSON UNITED STATES DISTRICT JUDGE.
before the court is Plaintiff and Counter-Defendant Reserve
Media, Inc.'s (“Reserve”) Third Motion for
Partial Su mmary Judgment. After considering the parties'
submissions and hearing oral argument, the court adopts the
court assumes the parties' familiarity with the facts,
which have been set forth more fully in the court's prior
partial summary judgment orders. (Dkts. 235, 296.) In brief,
Efficient Frontiers, Inc. (“EFI”) is a company
that offers software products to companies in the hospitality
industry. (First Amended Counterclaim (“FAC”)
¶¶ 4, 15-17.) EFI's products assist with
catering and event-management, restaurant table management,
and dining reservations. (FAC ¶¶ 17-19.) Reserve
Media, Inc. (“Reserve”) is a startup company
focusing on restaurant technology, which was founded in 2014.
(Dkt. 296 at 2.) According to the founders, the company aims
to compete with consumer-facing software companies that
facilitate restaurant reservations. (Id.) The
company offers products and services using the mark
suit arises out of a trademark dispute between EFI and
Reserve. After learning about Reserve's business, EFI
sent Reserve a cease-and-desist letter for attempting to use
a mark that infringes on EFI's marks “Reserve
Interactive and its variations.” (Id.) The
parties attempted to negotiate their trademark dispute but
Reserve ultimately filed for declaratory relief seeking a
determination that its use of the “Reserve” mark
does not infringe on EFI's trademark rights. (Complaint
¶ 14.) EFI responded with a counterclaim asserting
federal and state causes of action for trademark infringement
and unfair competition. (FAC ¶¶ 34-60.)
issue in this litigation were ten EFI trademarks. Prior
summary judgment motions addressed whether there were triable
issues as to eight of the ten trademarks. (See Dkts.
235, 296.) In prior Orders, the court concluded that six of
EFI's marks were not valid and protectable as a matter of
law because they were descriptive and lacked secondary
meaning. (Id.) The court also concluded that there
was no triable question as to Reserve's willful
infringement for any mark. The two trademarks that were not
addressed in either Order were EFI's RESERVE Q marks.
Given the basis for the prior summary judgment orders, the
court determined that the best use of judicial resources
would be to direct the parties to file summary judgment
briefs regarding these remaining marks so as to ensure that
there were triable issues warranting a jury trial. See
Portsmouth Square Inc. v. Shareholders Protective Comm.,
770 F.2d 866, 869 (9th Cir. 1985) (noting that, even as late
as the final pretrial conference, the district court has
authority to sua sponte enter summary judgment if no material
facts are at dispute in order to “conserves scarce
judicial resource”). In order to ensure the parties had
adequate notice and a “full and fair opportunity to
ventilate the issues, ” see Norse v. City of Santa
Cruz, 629 F.3d 966, 972-73 (9th Cir. 2010) (citing
Greene v. Solano Cnty. Jail, 513 F.3d 982, 990 (9th
Cir. 2008)), the court set a briefing schedule for a third
successive summary judgment motion.
issue in this motion are EFI's two RESERVE Q marks. The
first RESERVE Q mark was registered in October 2012 and is a
standard word mark for “computer software for database
management used in the hospitality industry.” (Carter
Decl., Ex. 1.) The second mark was registered in March 2013
and is a standard service mark for “design,
development, implementation and maintenance of software for
others in the hospitality industry.” (Id., Ex.
2.) These marks are used in connection with EFI's
“Reserve Q” online hospitality management
software. (Carter Decl. ¶ 5.) ReServe Q is a web-based
software application that allows business in the hospitality
industry to “leverage reservations, waitlists, and
marketing opportunities.” (Id. ¶ 14, Ex.
11.) The question at issue in the instant motion is whether
the RESERVE Q marks are valid and enforceable as a matter of
law and, if so, whether there is a triable issue of fact as
to likelihood of confusion under the Sleekcraft
analysis. Finally, as in the prior motions for partial
summary judgment, there is a question of whether Reserve is
entitled to summary judgment on EFI's damages theories
for the RESERVE Q marks.
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). If the moving party does not bear the burden of
proof at trial, it is entitled to summary judgment if it can
demonstrate that “there is an absence of evidence to
support the nonmoving party's case.”
Celotex, 477 U.S. at 323.
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. Summary
judgment is warranted if a party “fails to make a
showing sufficient to establish the existence of an element
essential to that party's case, and on which that party
will bear the burden of proof at trial.” Celotex, 477
U.S. at 322. 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.” Anderson, 477 U.S. 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
not the court's task “to scour the record in search
of a genuine issue of triable fact.” Keenan v.
Allan, 91 F.3d 1275, 1278 (9th Cir. 1996). Counsel has
an obligation to lay out their support clearly. Carmen v.
San Francisco Sch. Dist., 237 F.3d 1026, 1031 (9th Cir.
2001). The court “need not examine the entire file for
evidence establishing a genuine issue of fact, where the
evidence is not set forth in the opposition papers with
adequate references so that it could conveniently be
prevail on [a] trademark infringement claim, ” a party
must show that “(1) it has a valid, protectable
trademark, and (2) that [the other party's] use of the
mark is likely to cause confusion.” Applied Info.
Sciences Corp. v. eBay, Inc., 511 F.3d 966, 969 (9th
Cir. 2007). The court addresses each of these issues in turn.
Distinctiveness of RESERVE Q Marks
the court's third inquiry into whether EFI's RESERVE
marks are distinctive, and thus protectable, as a matter of
law. See Zobmondo Entm't, LLC v. Falls Media,
LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). In each of the
prior instances, the operative question was whether the marks
were descriptive, and thus required a showing of secondary
meaning, Zobmondo, 602 F.3d at 1113, or suggestive,
and thus automatically entitled to federal trademark
protection as “inherently distinctive, ”
id.; see also Two Pesos, Inc. v. ...