United States District Court, N.D. California
BARRIO FIESTA, LLC, a California Limited Liability Company, Plaintiff,
NORTHRIDGE FOODS INTERNATIONAL, INC. and DOES 1-10, Defendants.
ORDER GRANTING MOTION FOR SUMMARY JUDGMENT
JEFFREY S. WHITE UNITED STATES DISTRICT JUDGE
before the Court is the motion for summary judgment filed by
Defendant Northridge Foods International Inc.
(“Northridge”). Having carefully reviewed the
parties' papers, considered their arguments and the
relevant legal authority, the Court hereby GRANTS
Northridge's motion for summary judgment.
Barrio Fiesta, Inc. (“Plaintiff”) contends that
Northridge infringes upon its trademark. Northridge moves for
summary judgment on all of Plaintiff's claims against it.
In summary, Plaintiff operates Barrio Fiesta Restaurant in
Milpitas, California. Northridge, a California corporation,
imports packaged food products with the mark “Barrio
Fiesta” for distribution in the United States.
Plaintiff's claims for relief are premised upon the
allegations of purported infringement of the registered
trademark Barrio Fiesta Express and the common law trademark
of “Barrio Fiesta.” The Court shall refer to
additional facts as necessary in the remainder of this Order.
Legal Standard for Motion for Summary Judgment.
principal purpose of the summary judgment procedure is to
identify and dispose of factually unsupported claims.
Celotex Corp. v. Cattrett, 477 U.S. 317, 323-24
(1986). Summary judgment is proper when the “pleadings,
depositions, answers to interrogatories, and admissions on
file, together with the affidavits, if any, show that there
is no genuine issue as to any material fact and that the
moving party is entitled to judgment as a matter of
law.” Fed.R.Civ.P. 56(a). “In considering a
motion for summary judgment, the court may not weigh the
evidence or make credibility determinations, and is required
to draw all inferences in a light most favorable to the
non-moving party.” Freeman v. Arpaio, 125 F.3d
732, 735 (9th Cir. 1997).
party moving for summary judgment bears the initial burden of
identifying those portions of the pleadings, discovery, and
affidavits that demonstrate the absence of a genuine issue of
material fact. Celotex, 477 U.S. at 323; see
also Fed. R. Civ. P. 56(c). An issue of fact is
“genuine” only if there is sufficient evidence
for a reasonable fact finder to find for the non-moving
party. Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248-49 (1986). A fact is “material” if it
may affect the outcome of the case. Id. at 248. Once
the moving party meets its initial burden, the non-moving
party must go beyond the pleadings and, by its own evidence,
“set forth specific facts showing that there is a
genuine issue for trial.” Fed.R.Civ.P. 56(e).
order to make this showing, the non-moving party must
“identify with reasonable particularity the evidence
that precludes summary judgment.” Keenan v.
Allan, 91 F.3d 1275, 1279 (9th Cir. 1996) (quoting
Richards v. Combined Ins. Co., 55 F.3d 247, 251 (7th
Cir. 1995) (stating that it is not a district court's
task to “scour the record in search of a genuine issue
of triable fact”); see also Fed. R. Civ. P.
56(e). If the non-moving party fails to point to
evidence precluding summary judgment, the moving party is
entitled to judgment as a matter of law. Celotex,
477 U.S. at 323; Fed.R.Civ.P. 56(e)(3).
Northridge's Motion for Summary Judgment.
moves for summary judgment on Plaintiff's trademark
infringement and related claims on four discrete grounds: (1)
Plaintiff lacks standing because it only possesses a
nonexclusive license in the “Barrio Fiesta”
trademark at issue; (2) Plaintiff cannot establish priority
of use; (3) Plaintiff's claims are barred by the
equitable doctrine of laches; and (4) Plaintiff's
California and common law trademark and unfair competition
claims are dependent upon the federal trademark infringement
claims and should be summarily adjudicated. The Court shall
address each argument in turn.
threshold issue, the Court must determine whether Plaintiff
has standing to pursue the claims for trademark infringement
and related claims. Standing is “an essential . . .
part of the case-or-controversy requirement of Article
III.” Lujan v. Defenders of Wildlife, 504 U.S.
555, 560 (1992). Plaintiff bears the burden of proving the
existence of standing to sue. See, e.g., United States v.
Hays, 515 U.S. 737, 743 (1995). “The statutory
property right in a trademark is not simply the right to make
or use the trademark, but to do so to the exclusion of
others.” Visa U.S.A., Inc. v. First Data
Corp., 2005 WL 6271242, *4 (N.D. Cal. Aug. 16, 2005)
(citing International Society for Krishna Consciousness
of Western Pennsylvania v. Stadium Authority, 479
F.Supp. 792, 797 (W.D. Pa. 1979) (citations omitted)).
contends that Plaintiff lacks standing to assert its
trademark claims under the Lanham Act for trademark
infringement, unfair competition and false designation of
origin, because it is a non-exclusive licensee and not the
registrant of the subject mark. Plaintiff argues that it has
standing to sue because trademark protection extends to an
actual registrant's “legal representatives,
predecessors, successors and assigns.” (Opp. Br. at 4,
citing 15 U.S.C. § 1127.) This Court has previously
found that a non-exclusive licensee does not have standing to
sue for copyright infringement. See Visa U.S.A.,
2005 WL 6271242 at *4 (“[w]here the license is
non-exclusive, the licensee does not have standing to bring
an infringement action.”). “The determination of
whether a licensee has standing to sue under § 1114
depends on the rights granted to the licensee in the
licensing agreement. Where the license is non-exclusive the
licensee does not have standing to bring an infringement
action.” Ultrapure Sys., Inc. v. Ham-let
Group, 921 F.Supp. 659, 665 (N.D. Cal. 1996). Prior to
the filing of Northridge's motion for summary judgment,
the undisputed evidence in the record establishes that