United States District Court, C.D. California
ORDER GRANTING PLAINTIFFS' MOTION FOR SUMMARY
JUDGMENT [DKT. 69]
D. PREGERSON UNITED STATES DISTRICT JUDGE.
before the court is Plaintiff Gilbert Lerma, Jr.'s Motion
for Partial Summary Judgment. After reviewing Lerma's
Motion and supporting papers and hearing oral argument, the
court GRANTS the Motion and adopts the following Order.
Gilbert Lerma, Jr. is the President of Stylistics Car Club
(“Stylistics CC”). (Statement of Uncontroverted
Facts (“SUF”) ¶ 1.) Stylistics CC has been
in operation since 1987. (Id.) Lerma is the owner of
California Trademark Registration No. 66192 for
“STYLISTICS” plus design for “promoting and
conducting trade shows and exhibits in the field of
automobiles.” (SUF ¶ 2.) Lerma has been using the
STYLISTICS mark since 1987 to promote his car club and its
services. (SUF ¶ 3.) Defendants are members of a
competing car club named “Stylistics Los Angeles Car
Club” (“SLACC”). (SUF ¶ 7.) Although
there were initially six named Defendants, three were
dismissed pursuant to a settlement. (See Dkt. 66.)
The remaining Defendants are Ernie Armijo, Joe Armijo, and
David Rodrigues. Defendants began using the phrase
“Stylistics Los Angeles” as part of their own car
club activities in 1998 without Plaintiff's consent. (SUF
case is not Lerma's first effort to protect the
STYLSITICS mark. In August 2012, Lerma filed suit against
Jorge Luis Ramirez and SLACC alleging, inter alia,
trademark infringement of the STYLISTICS mark. See
Complaint, Lerma v. Stylistics Los Angeles Car Club,
Inc. (“Lerma I”), Case No.
2:12-cv-06704-DDP-JEM. In Lerma I, this Court
granted default judgment against Ramirez and SLACC, holding
that the defendants had improperly attempted to register a
“STYLISTICS LOS ANGELES” mark (“SLA”
mark) and infringed on Plaintiff's STYLISTICS mark.
Furthermore, the court ordered cancellation of the SLA mark
and enjoined Rodriguez and SLACC from engaging in further
activities that infringement on the STYLISTICS mark. After
the entry of default judgment, the Lerma I
Defendants appeared and moved to set aside the Order. The
court denied the motion to vacate. Defendants then appealed
the cancellation order and the Ninth Circuit affirmed this
court's decision. See Lerma v. Stylistics Los Angeles
Car Club, Inc., 670 F.App'x 640 (9th Cir. 2016).
the Order in Lerma I enjoining Ramirez and SLACC
from infringing on the STYLSTICS mark, Lerma claims that
other members of SLACC have continued to infringe on the
mark. (Compl. ¶ 18.) Specifically, Defendants use the
word mark “STYLISTICS LOS ANGELES” and
corresponding logo online and in connection with automotive
trade shows and exhibitions. (Id.) Accordingly,
Lerma filed the instant action asserting common law trademark
infringement, false designation of origin under the Lanham
Act, 15 U.S.C. § 1125(a), violations of California's
Unfair Competition Law (“UCL”), Cal. Bus. &
Profs. Code § 17200 et seq., false advertising, Cal.
Bus. & Profs. Code § 17500. Lerma seeks damages and
injunction prohibiting Defendants from use of the STYLISTIC
mark or any confusingly similar mark. (See generally
Compl.; id. ¶ 44.)
filed an Answer on February 12, 2016 denying the allegations
and asserting a number of affirmative defenses. (See
Dkt. 24.) During discovery, Plaintiff served Requests for
Admission, Set One (“RFA”) on each of the
Defendants. (SUF ¶ 20.) During a November 1, 2016
hearing regarding a separate discovery motion,
Defendants' counsel represented that responses to the RFA
had already been served. (SUF ¶ 21.) That day,
Plaintiff's counsel sent an email noting that they had
not received the responses and asking for another copy. (SUF
¶ 22.) As of this filing, Plaintiff has received no
responses to the RFA from any of the Defendants. Accordingly,
the RFA's are deemed admitted pursuant to Rule 36.
Fed.R.Civ.P. 36(a)(3). Although Defendants represented at the
hearing on the instant motion that RFA responses were served,
they have not moved for relief from the admissions.
March 8, 2017 Plaintiff dismissed three defendants: Robert
Flores, Rudy Paredes, and Roger Torres. Plaintiffs
subsequently filed in the instant motion for summary judgment
as to liability on all causes of action as to the remaining
defendants, entitlement to injunctive relief, and entitlement
to reasonable attorneys' fees. (Dkt. 69.) Defendants
filed no opposition to the motion.
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). When a nonmovant fails to oppose a summary judgment
motion, the court must grant the motion unless the
“movant has failed to meet its burden of demonstrating
the absence of triable issues.” Henry v. Gill
Indust., Inc. , 983 F.2d 943, 950 (9th Cir. 1993). The
court therefore reviews an unopposed summary judgment motion
to determine whether “the movant's papers are
themselves insufficient to support a motion for summary
judgment or on their face reveal a genuine issue of material
fact.” Id. at 949 (quoting Hamilton v.
Keystone Tankship Corp., 539 F.2d 684, 686 n. 1 (9th
Liability on All Causes of Action
reviewed Plaintiff's submissions, the court finds that he
has carried his burden at summary judgment as to
Defendants' liability on all causes of action. The court
addresses each claim in turn.
first two claims are for common law trademark infringement
and false designation under the Lanham Act. In order to
prevail on these claims, “a plaintiff must show that it
owns a valid mark, that the mark was used without its
consent, and that such unauthorized use is likely to cause
confusion, mistake, or deception.” Credit One Corp.
v. Credit One Fin., Inc., 661 F.Supp.2d 1134, 1137 (C.D.
Cal. 2009) (New West Corp. v. NYM Co. of Cal., Inc.,
595 F.2d 1194, 1198-1202 (9th Cir.1979) (Lanham ...