Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 1 of 17 Page ID #:443 'O' 1 2 3 4 5 6 7 10 11 12 ABUNDANT LIVING FAMILY 5:22-CV-00140-RSWL-MRWx CHURCH, 13 Plaintiff, ORDER RE: DEFENDANT’S 14 MOTION FOR JUDGMENT ON THE v. 15 PLEADINGS[24] 17 Defendant. 18 Plaintiff Abundant Living Family Church 19 (“Plaintiff”) brought the instant Action against 20 Defendant Live Design, Inc. (“Defendant”) alleging 21 trademark and service mark infringement, false 22 designation of origin, dilution, cybersquatting, unfair 23 business practices (pursuant to Bus. & Professions Code 24 §§ 17200, et. seq.), and receipt of stolen property. 25 Currently before the Court is Defendant’s Motion for 26 Judgment on Pleadings [24] (“Motion”). Having reviewed 27 all papers submitted pertaining to the Motion, the Court 28 1 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 2 of 17 Page ID #:444
1 NOW FINDS AND RULES AS FOLLOWS: the Court DENIES in part
2 and GRANTS in part Defendant’s Motion WITHOUT LEAVE TO
5 A. Factual Background 6 The Complaint alleges: 7 Since 1994, Plaintiff has been known as Abundant 8 Living Family Church or “ALFC.” Compl. ¶ 11, ECF No. 1. 9 Twenty years after Plaintiff first used the “ALFC” mark, 10 Defendant purchased the domain name www.alfc.church. 11 Id. ¶ 15. Two years after Defendant’s purchase, 12 Plaintiff registered the domain name 13 www.alfcrancho.church (“Rancho Website”) in reference to 14 Plaintiff’s Rancho Cucamonga church. Id. ¶ 12. 15 Plaintiff planned to open another church in Pomona and 16 “remove the ‘rancho’ portion of its existing URL.” Id. 17 ¶ 14. However, upon learning that Defendant owned the 18 domain name www.alfc.church, Plaintiff asked to purchase 19 Defendant’s URL. Id. ¶ 16. 20 Defendant responded to Plaintiff’s request offering 21 to sell Plaintiff “web design and hosting services.” 22 Id. ¶ 17. Plaintiff initially refused, but later 23 accepted Defendant’s offer after the Rancho Website was 24 attacked and disabled. Id. ¶¶ 18-19. Plaintiff signed 25 a contract with Defendant to obtain the URL 26 www.alfc.church. Id. ¶ 19. Defendant then signed a 27 second contract with Plaintiff, offering “certain 28 branding and brand management services, graphic design, 2 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 3 of 17 Page ID #:445
1 project management, and web design and development
2 services.” Id. ¶ 21. After fifteen months without
3 receiving the website, Plaintiff requested Defendant 4 deliver the uncompleted product. Id. ¶ 24. Defendant 5 refused and instead claimed that Plaintiff must enter an 6 additional contract. Id. Plaintiff insisted on the 7 domain www.alfc.church transfer along with the backend 8 coding, but Defendant refused. Id. ¶ 25. 9 B. Procedural Background 10 Plaintiff filed its Complaint [1] on January 24, 11 2022. Defendant filed the instant Motion [24] on August 12 26, 2022. Plaintiff opposed [26] on September 6, 2022, 13 and Defendant replied [29] on September 13, 2022. 15 A. Legal Standard 16 Federal Rule of Civil Procedure 12(c) states that 17 “after the pleadings are closed — but early enough not 18 to delay trial — a party may move for judgment on the 19 pleadings.” Fed. R. Civ. P. 12(c). A motion for 20 judgment on the pleadings is “functionally identical” to 21 a Rule 12(b)(6) motion to dismiss for failure to state a 22 claim, meaning the same pleading standards apply. 23 Dworkin v. Hustler Magazine, Inc., 867 F.2d 1188, 1192 24 (9th Cir. 1989). The non-moving party’s allegations 25 must be accepted as true, and any allegations made by 26 the moving party that have been denied or contradicted 27 are assumed to be false. MacDonald v. Grace Church 28 Seattle, 457 F.3d 1079, 1081 (9th Cir. 2006). Judgment 3 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 4 of 17 Page ID #:446
1 on the pleadings is proper “only if it is clear that no
2 relief could be granted under any set of facts that
3 could be proved consistent with the allegations.” 4 Turner v. Cook, 362 F.3d 1219, 1225 (9th Cir. 2004) 5 (quoting Swierkiewicz v. Sorema N.A., 534 U.S. 506, 514 6 (2002)). 7 In ruling on a motion for judgment on the 8 pleadings, courts may consider documents attached to the 9 complaint, documents incorporated by reference into the 10 complaint, or matters properly subject to judicial 11 notice. United States v. Ritchie, 342 F.3d 903, 907-08 12 (9th Cir. 2003). “Even if a document is not attached to 13 a complaint, it may be incorporated by reference into a 14 complaint if the plaintiff refers extensively to the 15 document or the document forms the basis of the 16 plaintiff’s claim.” Id. at 908. 17 B. Discussion 18 1. Judicial Notice 19 An adjudicative fact may be judicially noticed when 20 it is “not subject to reasonable dispute because it: (1) 21 is generally known within the trial court’s territorial 22 jurisdiction; or (2) can be accurately and readily 23 determined from sources whose accuracy cannot reasonably 24 be questioned.” Fed. R. Evid. 201(b). Matters of 25 public record may be judicially noticed, but disputed 26 facts contained therein may not. Khoja v. Orexigen 27 Therapeutics, Inc., 899 F.3d 988, 999 (9th Cir. 2018). 28 “[A]ccuracy is only part of the inquiry under Rule 4 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 5 of 17 Page ID #:447
1 201(b).” Id. “A court must also consider—and identify—
2 which fact or facts it is noticing from” the documents.
3 Id. The document a party requests to be judicially 4 noticed must be relevant to the matter before the court. 5 Townshend v. Rockwell Int'l Corp., No. C 99-0400 SBA, 6 2000 U.S. Dist. LEXIS 5070, at *7-8 (N.D. Cal. Mar. 28, 7 2000). 8 It is common “for courts to ‘take judicial notice 9 of factual information found on the world wide web.’” 10 Turner v. Samsung Telcoms. Am., LLC, No. CV 13-00629-MWF 11 (VBKx), 2013 U.S. Dist. LEXIS 198631, at *3-4 (C.D. Cal. 12 Nov. 4, 2013) (quoting O'Toole v. Northrop Grumman 13 Corp., 499 F.3d 1218, 1225 (10th Cir. 2007)). 14 Furthermore, this Court may judicially notice publicly 15 accessible websites. Perkins v. LinkedIn Corp., 53 F. 16 Supp. 3d 1190, 1204 (N.D. Cal. 2014); Aguiar v. MySpace 17 LLC, No. CV-14-05520(SJO)(PJWX), 2017 U.S. Dist. LEXIS 18 165463, 2017 WL 1856229, at *9 n.6 (C.D. Cal. May 5, 19 2017) (judicially noticing website screen shots). 20 Defendant seeks to judicially notice twenty-three 21 documents. See generally Defendant’s Req. for Judicial 22 Notice (“Defendant’s RJN”), ECF No. 25. The first 23 document is a printout of the United States Patent and 24 Trademark Office (“USPTO”) website that depicts zero 25 results in the USPTO database for a registered trademark 26 for the acronym “ALFC” (“Exhibit A”). The second 27 document is a printout of the Trademark Electronic 28 Search System (“TESS”) website showing there was a 5 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 6 of 17 Page ID #:448
1 trademark registered in 2017 that uses “ALFC” in part of
2 its mark (“Exhibit B”). Exhibits A and B are
3 susceptible to judicial notice because, as official 4 documents from the USPTO and TESS, they are not subject 5 to reasonable dispute. See Dehoog v. Anheuser-Busch 6 InBev SA/NV, 899 F.3d 758, 763 n.5 (9th Cir. 2018) 7 (taking judicial notice of “government documents, court 8 filings, press releases, and undisputed matters of 9 public record”). 10 The next twenty-one documents are all printouts of 11 websites using the acronym “ALFC” in the second-level 12 domain name, companies’ websites with “ALFC” as the 13 companies’ initials, or church websites with similar 14 names to Plaintiff’s name. See generally Defendant’s 15 RJN. The Defendant requests the Court judicially notice 16 that the websites exist, but not judicially notice 17 specific facts contained in the websites. See generally 18 id. These 21 documents are susceptible to judicial 19 notice because they are publicly accessible websites 20 that are not subject to reasonable dispute. See Aguiar 21 v. MySpace LLC at *9 n.6 (judicially noticing “relevant 22 publicly accessible company web sites”). Therefore, 23 because Plaintiff does not dispute Defendant’s 24 printouts, the printouts are not subject to reasonable 25 dispute, and they are relevant to the instant Motion, 26 the Court GRANTS Defendant’s requests for judicial 27 notice as to all twenty-three documents. 28 Plaintiff seeks to judicially notice three 6 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 7 of 17 Page ID #:449
1 documents. See generally Plaintiff’s Req. for Judicial
2 Notice (“Plaintiff’s RJN”), ECF No. 26-1. The three
3 documents are: (1) a printout of the website ICANN 4 archives; (2) a printout of the website Domain Name 5 Sanity; and (3) a printout of the website Go Daddy. See 6 generally id. Although Plaintiff’s three documents may 7 be judicially noticed as publicly accessible websites, 8 Plaintiff does not specify which relevant facts it seeks 9 to judicially notice from the three filings. 10 Furthermore, the documents are not pertinent or 11 necessary to the Court’s resolution of the instant 12 Motion and the Court does not rely upon them. 13 Therefore, the Court DENIES Plaintiff’s requests for 14 judicial notice in their entirety. 15 2. All Six of Plaintiff’s Claims Rely on Plaintiff 16 Having a Protectable Trademark Right in “ALFC" 17 Defendant asserts in its Motion that a valid and 18 protectable mark serves as the basis for all of 19 Plaintiff’s claims. See generally Mot. Plaintiff has 20 alleged it has been using the name “ALFC” regularly 21 since 1994. See Compl. ¶ 11. Plaintiff does not 22 dispute that it is essential that it has a valid 23 protectable mark in “ALFC” for all its claims. See 24 generally Opp’n. 25 Plaintiff’s first three claims - trademark and 26 service mark infringement, false designation of origin, 27 and trademark dilution - all require Plaintiff to own a 28 valid protectable mark. Levi Strauss & Co. v. Blue 7 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 8 of 17 Page ID #:450
1 Bell, Inc., 778 F.2d 1352 (9th Cir. 1985) (holding that
2 to prevail on its federal claims - trademark
3 infringement, false designation of origin, and dilution 4 - plaintiff must establish that it has a protected 5 interest). To bring a trademark infringement claim 6 under 15 U.S.C.S. § 1114, the protectable mark must be 7 registered. See Brookfield Commc'ns., Inc. v. W. Coast 8 Entmt Corp., 174 F.3d 1036, 1046 n.8 (9th Cir. 1999). 9 Plaintiff’s fourth claim for cybersquatting also 10 requires Plaintiff to own a protected mark. DSPT 11 Intern., Inc. v. Nahum,624 F.3d 1213 (9th Cir. 2010). 12 Plaintiff’s unfair business practices (pursuant to 13 Bus. & Professions Code §§ 17200, et. seq.) claim arises 14 from Plaintiff’s four previous claims which each require 15 a valid trademark right. See Krantz v. BT Visual 16 Images, LLC., 89 Cal. App. 4th 164, 178 (2001) (holding 17 that relief under unfair competition law “stand[s] or 18 fall[s]” depending on the outcome of the antecedent 19 causes of action). Given that Plaintiff’s fifth claim 20 is based on its first four claims, Plaintiff’s fifth 21 claim requires a valid enforceable trademark right in 22 “ALFC.” See AMN Healthcare, Inc. v. Aya Healthcare 23 Services, Inc., 28 Cal. App. 5th 923, 950 (2018). 24 Lastly, Plaintiff’s sixth claim for receipt of 25 stolen property requires Plaintiff to own property that 26 was allegedly stolen. See Finton Constr., Inc. v. Bidna 27 & Keys, APLC, 238 Cal. App. 4th 200, 213 (2015). Given 28 that the only property that Plaintiff alleges that 8 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 9 of 17 Page ID #:451
1 Defendant stole was Plaintiff’s domain name, Plaintiff
2 must have a valid protectable mark for its sixth claim.
3 See Compl. ¶¶ 75-76. Therefore, Plaintiff’s claims rely 4 on Plaintiff having a valid protectable mark in “ALFC.” 5 3. Plaintiff Does Not Have a Registered Trademark 6 in “ALFC” 7 The Lanham Act defines a trademark as "any word, 8 name, symbol, or device, or any combination thereof" 9 used by any person "to identify and distinguish his or 10 her goods, including a unique product, from those 11 manufactured or sold by others.” Marketquest Grp. Inc. 12 v. BIC Corp., 316 F. Supp. 3d 1234, 1256 (S.D. Cal. 13 2018) (citing 15 U.S.C. § 1127). A trademark can be 14 protectable if it is either registered with the USPTO or 15 unregistered while meeting certain requirements. Wal- 16 Mart Stores v. Samara Bros., 529 U.S. 205, 210 (2000). 17 Here, Plaintiff does not allege in its Complaint 18 that it has any registered mark with the USPTO. See 19 generally Compl. Furthermore, the USPTO also does not 20 have any record of an “ALFC” trademark registered by 21 Plaintiff. See Defendant’s RJN. Plaintiff’s first 22 claim for trademark infringement protects only 23 registered trademarks. See 15 U.S.C.S. § 1114; 24 Brookfield Communs., Inc. at 1046 n.8. Without 25 registering with the USPTO, Plaintiff cannot have a 26 registered trademark, and therefore cannot assert a 27 28 9 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 10 of 17 Page ID #:452
1 claim under 15 U.S.C.S. § 1114.1 See Wal-Mart Stores at
2 210.
3 Accordingly, the Court GRANTS Defendant’s Motion 4 for Judgment on the Pleadings as to Plaintiff’s 15 5 U.S.C.S. § 1114 trademark infringement claim. 6 4. Plaintiff Sufficiently Pled It Has an 7 Unregistered Trademark in “ALFC” 8 To sustain a trademark-infringement action, the 9 plaintiff must have a mark that is valid and 10 protectable. Zobmondo Entertainment, LLC v. Falls 11 Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). 12 Registered marks are presumed valid, but plaintiffs 13 asserting rights in an unregistered mark have the burden 14 of proving their mark’s validity. Yellow Cab Co. of 15 Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 16 925, 928 (9th Cir. 2005). An unregistered trademark can 17 be valid and protectable against potential infringers. 18 Matal v. Tam, 137 S. Ct. 1744, 1747 (2017). 19 The mark’s protectability largely depends on its 20 inherent distinctiveness. Golden Eye Media USA, Inc. v. 21 Trolley Bags UK Ltd., 525 F. Supp. 3d 1145, 1222 (S.D. 22 Cal. 2021). Accordingly, marks are classified in 23 categories of increasing distinctiveness within the 24
25 1 While Plaintiff’s first claim for trademark infringement under 15 U.S.C.S. § 1114 requires Plaintiff’s trademark to be 26 registered, Plaintiff’s other five claims do not require Plaintiff’s trademark to be registered. See generally 15 27 U.S.C.S. § 1125; Cal. Bus. & Prof. Code § 17200; Cal. Penal Code 28 § 496. 10 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 11 of 17 Page ID #:453
1 Abercrombie spectrum: 1) generic; 2) descriptive; 3)
2 suggestive; 4) fanciful; or 5) arbitrary. Two Pesos,
3 Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). 4 Generic marks are the weakest category and do not 5 receive protection because they identify the product, 6 rather than the product’s source. Yellow Cab Co. of 7 Sacramento, 419 F.3d at 927. Descriptive marks “define 8 a particular characteristic of the product in a way that 9 does not require any exercise of the imagination.” 10 Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 11 632 (9th Cir. 2005). Descriptive marks must acquire 12 distinctiveness (secondary meaning) to be protectable. 13 Id. Suggestive, fanciful, or arbitrary marks are deemed 14 “inherently distinctive” and are protectable since 15 “their intrinsic nature serves to identify a particular 16 source of a product.” Zobmondo Entertainment at 1108. 17 a. Plaintiff’s Moniker “ALFC” Is Not Evidently 18 Generic Under the Ninth Circuit Court’s 19 “Who-Are-You/What-Are-You” Test 20 The Ninth Circuit employs the “who-are-you/what- 21 are-you” test to determine whether a contested mark is 22 generic. Threshold Enters. Ltd. V. Pressed Juicery, 23 Inc., 445 F. Supp. 3d 139, 148 (N.D. Cal. 2020) (quoting 24 Yellow Cab Co. of Sacramento, 419 F.3d at 929). The 25 test 1) identifies the category of goods or services to 26 which the mark applies and 2) analyzes whether the 27 relevant public primarily perceives the mark to 28 represent the product’s source or the product itself. 11 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 12 of 17 Page ID #:454
1 Id. Ultimately, the test asks “whether consumers
2 understand the word to refer only to a particular
3 producer's goods or . . . to the goods themselves.” 4 Yellow Cab Co. of Sacramento, 419 F.3d at 929. If the 5 public perceives the mark to represent a category of 6 goods or services - the “what,” - then the mark is 7 generic. See Threshold Enters., 445 F. Supp. 3d at 148. 8 If the public thinks of a goods or service producer - 9 the “who,” - then the mark is not generic. See id. 10 “Whether a mark is generic is a question of fact.” 11 Yellow Cab Co. of Sacramento, 419 F.3d at 929. 12 Therefore, the fact-specific nature of this inquiry 13 normally precludes courts from determining whether a 14 mark is generic at the pleading stage. Pinterest Inc. 15 v. Pintrips Inc., 15 F. Supp. 3d 992, 998 (N.D. Cal. 16 2014). Some courts in the Ninth Circuit have held that 17 such a determination is “inappropriate for resolution on 18 a motion to dismiss”. Webceleb, Inc. v. Procter & 19 Gamble Co., No. 10CV2318 DMS NLS, 2012 WL 460472, at *3 20 (S.D. Cal. Feb. 13, 2012). Ultimately, courts only 21 decide such fact-specific trademark issues at the 22 pleading stage where “the complaint suffers from a 23 complete failure to state a plausible basis for 24 trademark protection.” Pinterest Inc. at 998-999. 25 Here, Defendant asserts that Plaintiff’s moniker, 26 “ALFC,” is generic because other companies bear the same 27 initials. See generally Mot.; See Defendant’s RJN. 28 However, Defendant cites no case law in its Motion that 12 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page130f17 Page ID #:455
1] supports the proposition that if multiple parties share 24 the same initials or names, then the names and initials 3 are generic. See generally Mot. A mark is generic if 4] it shares its name with its product, not if it shares 5 its name with a few other parties. See Jerome Gilson & 6 Anne Gilson Lalonde, 1 Gilson on Trademarks § 2.02 749 (2022). 8 Under the first prong of the Ninth Circuit’s “who- 9 are-you/what-are-you” test, “ALFC” applies to church 10 services. Compl. @ 11. Thus, under the second prong, 11] “ALFC” would only be generic if the public perceives the 12 mark to represent a genus of church services, rather 13 J than a source of church services. Here, “ALFC” — 14 comprised of four seemingly arbitrary initials* - does 15 J not evidently refer to a broad category of church 16] services.? Clearly, Plaintiff’s mark does not establish 17] “a complete failure” to assert a plausible infringement 18 claim. See Pinterest Inc. at 992. Therefore, the Court 19 finds that Plaintiff has plausibly alleged that “ALFC” 20 — 2 Both inside and outside the Ninth Circuit, courts split in 21 4] analyzing the distinctiveness of marks made with initials. Cf. YKK Corp. v. Jungwoo Zipper Co., 213 F. Supp. 2d 1195, 1200 (C.D. 22 Cal. 2002) (holding initials were a highly distinctive mark because they derived from an original name that in no way 23 described or suggested the company’s products) with CPP Ins. Agency, Inc. v. Gen. Motors Corp., No. CV—-79-801-MML, 1980 WL 24 30349, at *4 (C.D. Cal. Dec. 4, 1980), aff'd, 676 F.2d 709 (9th Cir. 1982) (holding “[i]nitials, especially when .. . derived 25 from a corporate name, are descriptive”). > Defendant has cited multiple businesses that are not 26 churches nor religious institutions that use “ALFC” for their 27 trademark. See generally Defendant’s RJN. This undermines the proposition that the public perceives “ALFC” to refer to a genus 29 of church services.
Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 14 of 17 Page ID #:456
1 is not generic. 2 b. Plaintiff Sufficiently Plead Secondary
3 Meaning to Survive a Motion to Dismiss 4 A descriptive mark “define[s] a particular 5 characteristic of the product in a way that does not 6 require any exercise of the imagination.” 4 Yellow Cab 7 Co. of Sacramento, 419 F.3d at 927. Since a descriptive 8 mark is not inherently distinctive, it must have a 9 secondary meaning (acquired distinctiveness) to receive 10 protection. Two Pesos at 769. Whether a particular 11 mark has acquired secondary meaning is also a question 12 of fact. Clicks Billiards, Inc. v. Sixshooters, Inc., 13 251 F.3d 1252, 1262 (9th Cir. 2001). Thus, secondary 14 meaning need only be plead generally to survive a motion 15 to dismiss. See Spirit Clothing Co. v. N.S. 16 Enterprises, Inc., No. CV132203RGKPJWX, 2013 WL 17 12144107, at *3 (C.D. Cal. July 23, 2013) (holding a 18 plaintiff’s allegations sufficient when it alleged it 19 marketed clothing with its mark for 14 years and 20 consumers associated the mark with plaintiff); 21 4 When determining whether a mark is descriptive or 22 suggestive, the compound term or phrase making up the mark must be considered as a whole. See Zylotrim, Ltd. Liab. Co. v. 23 Superbalife Int'l, Ltd. Liab. Co., No. 08-CV-1917 H (JMA), 2008 24 U.S. Dist. LEXIS 135310, at *9 (S.D. Cal. Dec. 15, 2008). In Official Airline Guides, Inc. v. Goss, a travel agency called 25 Official Arline Guides, Inc. combined its initials “OAG” with “Travel Planner,” to form a protectable common law trademark in 26 “OAG Travel Planner.” 856 F.2d 85, 87 (9th Cir. 1988). The Court held “OAG Travel Planner” to be an arbitrary mark, even 27 though “Travel Planner” on its own would likely be a descriptive 28 mark. See id. 14 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 15 of 17 Page ID #:457
1 BottleHood, Inc. v. Bottle Mill, No. 11-CV-2910-MMA MDD,
2 2012 WL 1416272, at *5 (S.D. Cal. Apr. 23, 2012)
3 (finding that although a plaintiff provided minimal 4 detail regarding secondary meaning, “a plaintiff does 5 not have to plead secondary meaning to survive a motion 6 to dismiss”). 7 The Court need not address the mark’s 8 classification on the Abercrombie spectrum. Even if the 9 mark was descriptive, Plaintiff’s allegations that (1) 10 “ALFC” – a “very large non-denominational Christian 11 Church with two locations” - was founded in 1994, (2) 12 the church has regularly used the mark in commerce, and 13 (3) the mark has “become distinctive and famous” are 14 sufficient to plausibly plead secondary meaning. Compl. 15 ¶¶ 1, 11. Although, as in Bottlehood, Plaintiff’s 16 Complaint provides minimal detail regarding the public’s 17 perception of the mark, secondary meaning need only be 18 pled generally to survive a motion to dismiss. See 19 generally Spirit Clothing at *3. Therefore, the Court 20 finds that even if the mark is descriptive, Plaintiff 21 has plausibly pled acquired distinctiveness. 22 Therefore, “ALFC” is not clearly generic, and 23 Plaintiff has plausibly pled acquired distinctiveness. 24 Thus, Plaintiff has sufficiently alleged it has a valid 25 unregistered trademark in “ALFC.” See generally Compl. 26 Accordingly, the Court DENIES Defendant’s Motion for 27 Judgment on the Pleadings as to Plaintiff’s false 28 designation of origin, dilution, cybersquatting, unfair 15 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 16 of 17 Page ID #:458
1 business practices (pursuant to Bus. & Professions Code 2 §§ 17200, et. seq.), and receipt of stolen property 3 claims. 4 5. Leave to Amend 5 Although Rule 12(c) does not mention amendments, courts 6 have discretion to grant a Rule 12(c) motion with leave 7 to amend. Lonberg v. City of Riverside, 300 F. Supp. 2d 8 942, 945 (C.D. Cal. 2004). “The court should give leave 9 [to amend] freely when justice so requires.” Fed. R. 10 Civ. P. 15(a)(2). In the Ninth Circuit, “Rule 15’s 11 policy of favoring amendments to pleadings should be 12 applied with extreme liberality.” United States v. 13 Webb, 655 F.2d 977, 979 (9th Cir. 1981). Against this 14 extremely liberal standard, the Court may consider “the 15 presence of any of four factors: bad faith, undue delay, 16 prejudice to the opposing party, and/or futility.” 17 Owens v. Kaiser Found. Health Plan, Inc., 244 F.3d 708, 18 712 (9th Cir. 2001). 19 Here, Plaintiff’s Complaint cannot be cured because 20 Plaintiff cannot allege it has a valid registered 21 trademark in “ALFC.” See Defendant’s RJN. Given that 22 the USPTO does not contain Plaintiff’s “ALFC” mark, no 23 additional facts could sustain a 15 U.S.C.S. § 1114 24 trademark infringement claim. See id. Because the 25 defective 15 U.S.C.S. § 1114 claim cannot be cured 26 through amendment, leave to amend would be futile. See 27 Nat’l Funding, Inc. v. Com. Credit Counseling Servs., 28 Inc., 817 F. App’x 380, 385 (9th Cir. 2020) (affirming 16 Case 5:22-cv-00140-RSWL-MRW Document 31 Filed 10/24/22 Page 17 of 17 Page ID #:459
1 district court’s denial of leave to amend where no 2 additional facts are available that would support 3 4 plaintiff’s claim to cure its deficiencies). Therefore, 5 the Court GRANTS Defendant’s Motion for Judgment on the 6 Pleadings as to Plaintiff’s 15 U.S.C.S. § 1114 trademark 7 infringement claim WITHOUT LEAVE TO AMEND. 9 Based on the foregoing, the Court DENIES in part 10 Defendant’s Motion for Judgment on the Pleadings as to 11 Plaintiff’s false designation of origin, dilution, 12 cybersquatting, unfair business practices (pursuant to 13 Bus. & Professions Code §§ 17200, et. seq.), and receipt 14 of stolen property claims and GRANTS in part as to 15 Plaintiff’s 15 U.S.C.S. § 1114 trademark infringement 16 claim WITHOUT LEAVE TO AMEND. 18 19 DATED: October 24, 2022 /s/Ronald S.W. Lew HONORABLE RONALD S.W. LEW 20 Senior U.S. District Judge 21 22 23 24 25 26 27 28 17