United States District Court, N.D. California
ORDER DENYING DEFENDANT'S MOTION FOR SUMMARY
JUDGMENT RE: DKT. NO. 80
M. Ryu, United States Judge
Balance Studio, Inc., doing business as Kink Academy and
KinkAcademy.com (“Kink Academy”), sues Defendant
Cybernet Entertainment, LLC, doing business as Kink.com, for
violations of the Lanham Act, 15 U.S.C. §§ 1114,
1125, and state law. Defendant moves for summary judgment.
[Docket No. 80.] The court held a hearing on May 25, 2017.
Having considered the parties' oral argument and written
submissions, and for the reasons stated below as well as at
the hearing, the court denies Defendant's motion.
following facts are undisputed, unless otherwise noted.
Plaintiff is a business that offers adult sexual education.
[Docket No. 83-1 (Williams Decl., May 4, 2017) ¶ 4.]
Plaintiff offers services through its website,
kinkacademy.com, as well as seminars and coaching services by
its founder, Kali Williams, that “focus on empowerment,
confidence, and communication.” Id. at
¶¶ 1, 4. Plaintiff launched the kinkacademy.com
website in 2009. Id. at ¶ 8.
April 1, 2009, Plaintiff applied for registration of its
“Kink Academy” word and logo mark. [Docket No.
80-1 (Swanson Decl., Apr. 20, 2017) Ex. BB (Kink Academy
10, 2011, the USPTO granted Plaintiffs application and issued
U.S. Trademark Registration Number 3958399 for the "Kink
Academy" word and logo mark, as depicted below:
Decl. Ex. C (Kink Academy registration). According to the
USPTO registration, Plaintiffs word and logo mark was first
used on February 1, 2007 and first used in commerce on April
1, 2009. Id. It describes the mark as follows:
The mark consists of large letter "K" in the color
purple with a white and purple outline, a stylized graduation
cap in black on top of the left leg of the "K", a
black leash attached to the lower leg of the "K"
going up and around to the left in a circular manner, with
the text "Kink Academy" in black underneath the
Id. The Kink Academy word and logo mark is
registered in International Class 041 for "adult
sexuality education, namely, through workshops, seminars,
on-line video classes featuring information on adult
role-play, bondage, domination and submission, fetishes and
gender exploration designed to enhance couple's [sic]
intimacy, and acknowledgement of one's own
to the issuance of the registration, on July 1, 2009, the
USPTO directed Plaintiff to disclaim the word
"academy" in the mark "because it refers to
the educational component of the identification" and was
could not be registered. Swanson Decl. Ex. D (July 1, 2009
Office Action). It appears that Plaintiff then took no action
on the application for several months, for on 80-1). It also
filed a separate request for judicial notice of that
documentation. [Docket No. 81.] Judicially noticeable facts
are those not subject to reasonable dispute because they are
"capable of accurate and ready determination by resort
to sources whose accuracy cannot reasonably be
questioned." Fed.R.Evid. 201(b)(2). A court may take
judicial notice of "records and reports of
administrative bodies." Mack, 798 F.2d at 1282
(citation omitted). Plaintiff does not object to the court
taking judicial notice of the USPTO documentation regarding
registration of the Kink Academy mark. Accordingly, the court
grants Defendant's request and takes judicial notice of
Exhibits A through BB. See Oroamerica Inc. v.
D&WJewelry Co., Inc., 10 Fed.Appx. 516, 517 n.4 (9th
Cir. 2001) (taking judicial notice of USPTO registration
certificates, patent file history, and patent application
materials). March 23, 2010, Plaintiff filed a petition to
revive its abandoned application in which it disclaimed the
“exclusive right to use Academy apart from the mark as
shown.” Id. Ex. E. The USPTO subsequently
directed Plaintiff to disclaim the word “kink” as
“merely descriptive of the subject matter of
[Plaintiff's] adult sexuality education services . .
.” Id. at Ex. F (Mar. 31, 2010 Office Action).
On April 6, 2010, Plaintiff amended its disclaimer to read,
“[n]o claim is made to the exclusive right to use
“KINK ACADEMY” apart from the mark as
shown.” Id. at Ex. G.
is “a company that produces and markets
videos and materials, which [it] make[s] available to [its]
members online, through [the] www.Kink.com website, its
subchannels and affiliated third parties.” [Docket No.
80-2 (Acworth Decl., Apr. 18, 2017) ¶ 2.] According to
its founder, Peter Acworth, Defendant “has been branded
as Kink and Kink.com, ” and “has been known and
referred to as Kink since at least 2006.” Id.
at ¶¶ 3, 4. Plaintiff's founder Williams states
that Kink.com offers “[h]ard-core extreme porn
entertainment; webcam video chat virtual prostitution
services; and porn industry advocacy.” Williams Decl.
not clear from the record, in approximately 2014,
Defendant began operating a “Kink University”
website accessible at kinkuniversity.com, and sought to
trademark the term “Kink University.”
See Compl. ¶ 15; Swanson Decl. Ex. H (USPTO
rejection of Defendant's application). Defendant sought
to register the term “Kink University” in the
area of “[e]ducation services, namely, providing live
and on-line classes, panel discussions, tutorials, seminars,
and workshops in the field of sexuality.” Id.
The USPTO rejected Defendant's application on July 23,
2014, finding a likelihood of consumer confusion between
“Kink University” and Plaintiff's Kink
Academy word and logo mark. Id. (“Registration
of the applied-for mark is refused because of a likelihood of
confusion with the mark in U.S. Registration No.
3958399.”). The USPTO explained the likelihood of
confusion between Defendant's proposed “Kink
University” mark and Plaintiff's registered Kink
Academy word and logo mark as follows:
In terms of the marks, the proposed mark is KINK UNIVERSITY,
while the cited mark is comprised of the letter K with the
design of a mortarboard and leash and the terms KINK ACADEMY.
Considering that the terms UNIVERSITY and ACADEMY are
descriptive for the educational services and that literal
elements dominate over design elements, the dominant
components of the marks are both KINK. . . .
In this case, despite the differences in the marks, the terms
UNIVERSITY and ACADEMY, each coupled with the dominant
component KINK, convey the same idea, i.e., a traditional
institute of higher learning juxtaposed next to the informal
slang term for an unusual sexual preference. Therefore, the
marks are similar in sound, appearance, and commercial
With respect to the services, those of the proposed mark are
“Education services, namely, providing live and on-line
classes, panel discussions, tutorials, seminars, and
workshops in the field of sexuality”, while those of
the cited mark are “Adult sexuality education, namely,
through workshops, seminars, on-line video classes featuring
information on adult role-play, bondage, domination and
submission, fetishes and gender exploration designed to
enhance couple's intimacy, and acknowledgment of
one's own sexuality”. Because both of the services
are educational services related to the topic of sexuality,
they are related such that there is a likelihood of confusion
if both of the marks were used for the respective services.
April 14, 2015, the USPTO issued a final rejection of
Defendant's trademark application for “Kink
University, ” reiterating that the two marks
“convey a similar commercial impression, ” and
that the use of the term “Kink University” would
likely cause consumer confusion with the “Kink
Academy” word and logo mark. Swanson Decl. Ex. J.
filed the complaint on September 3, 2015. It alleges that
despite the USPTO's determination, Defendant continues to
infringe Plaintiff's Kink Academy word and logo mark by
using the confusingly similar “Kink University”
mark, and that the Kink University website is “designed
to take advantage of the significant name recognition and
goodwill surrounding Kink Academy and its products.”
Compl. ¶¶ 24, 25. According to Williams, Kink
Academy “offers adult sexual education” with a
focus on “building trust and intimacy through bondage
and sadomasochism, ” as well as “empowerment,
confidence, and communication.” Williams Decl. ¶
4. In contrast, “Defendant uses their ‘Kink
University' brand in connection with porn services
including live chat rooms and pornographic videos.”
Id. at ¶ 7. Williams states that “Kink
University is not truly an educational branch of
Defendant's business.” Id. Plaintiff
further alleges that it has suffered monetary damage in the
form of diverted traffic and lost sales, and that Defendant
is damaging the valuable reputation and goodwill in
Plaintiff's brand by “marketing pornography videos
under the guise of educational videos.” Id. at
¶ 26. Finally, Plaintiff alleges that actual confusion
has already occurred between Kink Academy and Kink
University, id. at ¶ 27, and submits evidence
of what it claims is actual consumer confusion between the
two businesses. See Williams Decl. ¶ 15 Ex. C.
Plaintiff alleges the following claims for relief: 1)
trademark infringement under 15 U.S.C. § 1114; 2) false
designation of origin under 15 U.S.C. § 1125(a); and 3)
unfair competition under California Business &
Professions Code § 17200 et seq.
filed a counterclaim for cancellation of Plaintiff's Kink
Academy word and logo mark. [Docket No. 50.] It also alleges
counterclaims against Plaintiff and its founder, Kali
Williams, for trademark infringement under 15 U.S.C. §
1114, false designation of origin under 15 U.S.C. §
1125(a), and unfair competition under the UCL. Defendant now
moves for summary judgment on all of Plaintiff's claims.