Am. Auto. Ass'n of N. Cal. v. Gen. Motors LLC
Opinion
LUCY H. KOH, United States District Judge
Plaintiffs American Automobile Association of Northern California, Nevada & Utah and its affiliate A3 Mobility LLC ("Plaintiffs" or "AAA") bring the instant trademark infringement lawsuit against Defendants General Motors LLC and its affiliate Maven Drive LLC ("Maven") (collectively, "Defendants" or "GM"). Before the Court is GM's motion for summary judgment. Having considered the submissions of the parties, the relevant law, and the record in this case, the Court DENIES IN PART AND GRANTS IN PART GM's motion for summary judgment.
*1078I. BACKGROUND
A. Factual Background
This case concerns two competing car share services with similar names. On April 17, 2017, AAA issued a press release announcing the launch of its "GIG" car share service. GM also developed a car share service called "MAVEN GIG," which AAA asserts AAA did not learn about until May 3, 2017. See Opp'n at 1. Viewing the facts in the light most favorable to AAA, the Court discusses the two car share services below. The Court starts with AAA's GIG car share service.
1. AAA's GIG Car Share Service
In 2016, AAA created its subsidiary, A3 Mobility, to focus on a new business model innovation for AAA. ECF No. 77-1 ("Haight Decl.") ¶ 7; see also ECF No. 77-2 ("Bowler Decl."), Ex. 1 ("Hetke Tr.")1 at 16:19-25, 24:13-18. In September 2016, A3 Mobility began developing an idea for a car share service, and AAA drafted a business case to present to its executives that identified April 2017 as the launch date. Haight Decl. ¶ 8; Hetke Tr. at 46:6-18, 53:19-54:3, 106:5-12; 138:17-23. AAA hired third-party advertising agency Muhtayzik Hoffer, and with Muhtayzik Hoffer's collaboration, AAA settled on the name [redacted] with the tagline "Get In. Go." in January 2017. Haight Decl. ¶¶ 9-12; Hetke Tr. at 79:20-80:25. Soon after, AAA learned that [redacted] was covered by a preexisting third party trademark application, and therefore AAA abandoned [redacted] and proceeded with "GIG" (the acronym of "Get In. Go."), a mark that AAA's Chief Innovation Officer, Mike Hetke, came up with during a January 27, 2017 meeting. Haight Decl. ¶¶ 13-15; Hetke Tr. at 80:1-25, 82:21-83:25, 85:6-25.
After receiving a clean trademark clearance search yielding no conflicting marks, AAA filed a trademark application for the "GIG" mark with the U.S. Patent and Trademark Office on February 3, 2017 (U.S. Trademark Application Serial No. 87323570). Haight Decl. ¶ 16; Hetke Tr. at 136:10-138:3. On February 24, 2017, AAA submitted a formal application to the City of Oakland as "Gig Car Share" for parking permits. Haight Decl. ¶ 17; see also Bowler Decl., Ex. 2. By March 2, 2017, AAA shared the GIG mark with event services vendor Daybreaker, LLC, and Daybreaker, LLC began planning the official GIG launch event and promoted the event through social media, posters, and direct email. Haight Decl. ¶¶ 18-19; see also Bowler Decl., Ex. 3 ("Voges Tr.")2 at 63:8-65:22. By April 12, 2017, there were over 3,600 RSVPs for the GIG launch event. Haight Decl. ¶ 21; see also Bowler Decl., Exs. 4 & 5.
On April 17, 2017, AAA issued a formal press release regarding the GIG launch; launched the GIG website, www.gigcarshare.com; began social media advertising and street team/field marketing; and opened up a GIG early enrollment period that included a targeted e-mail campaign to sign up GIG users. Haight Decl. ¶¶ 22-23; Hetke Tr. at 138:17-140:14, 149:15-25; Voges Tr. at 31:19-33:12, 36:10-37:16, 40:14-25, 41:11-42:9: 90:21-91:3.
*1079AAA launched the GIG mobile phone application in app stores on April 17, 2017, and immediately began receiving hundreds of downloads. Haight Decl. ¶ 25. San Francisco-based public media outlet KQED aired a radio interview about GIG with AAA's GIG Car Share President, Jason Haight. Id. ¶ 24; see also Bowler Decl., Exs. 6 & 7. Between April 17, 2017 and April 30, 2017, dozens of AAA employees drove GIG branded cars in public. Id. ¶ 26; see also Voges Tr. at 68:8-18. By April 28, 2017, there were over 7,000 RSVPs for the GIG launch event. Haight Decl. ¶ 27. When the GIG launch event was ultimately held on April 30, 2017, it was heavily branded with the GIG mark, and there were thousands of attendees. Id. ¶ 28; Voges Tr. at 66:20-22; 68:19-70:9.
Within one year of operation, GIG doubled in size from 250 to 500 cars and expanded to serve four cities, including Berkeley, Oakland, Alameda, and Albany. Haight Decl. ¶ 32. AAA publicly announced GIG's expansion into Sacramento in 2019. Id. ¶ 34.
2. GM's MAVEN GIG Car Share Service
a. GM's "Maven" Mark
Maven is an affiliate of GM that provides vehicle-sharing services under its "Maven" mark. ECF No. 1 ("Compl") ¶ 29. GM developed its "Maven" mark in January of 2016. GM offers rental services through Maven that are labeled with the word "Maven" and another identifying word. For instance, GM offers rental services targeted toward personal use called "MAVEN HOME" and "MAVEN CITY" under its Maven mark. Bowler Decl., Ex. 8 ("Bhattacharya Tr.")3 at 33:11-12; id. , Ex. 9 ("Stooke Tr.")4 at 26:21-28:16.
b. GM's EXPRESS DRIVE Relationship with Lyft
Around the same time that GM developed its Maven mark, GM had a program with Lyft called "EXPRESS DRIVE" for the use of GM vehicles in providing Lyft services. Bhattacharya Tr. at 33:19-34:8; Bowler Decl., Ex. 8 ("Steyn Tr.")5 at 20:11-25:9. Specifically, EXPRESS DRIVE is a program branded by Lyft whereby Lyft "offers cars through their partners, like Maven to the drivers exclusively for them to earn money on the Lyft platform." Steyn Tr. at 21:9-12. In other words, Lyft serves as the direct contact to the drivers. Id. at 22:21-25, 52:18-23.
Before the fall of 2016, however, GM's relationship with Lyft and EXPRESS DRIVE became strained due to unprofitability and unaligned incentives. Bhattacharya Tr. at 50:10-51:6; Steyn Tr. at 24:16-25:10; 53:18-23. In particular, GM wanted direct contact with the drivers. Steyn Tr. at 53:18-23. Therefore, in the *1080summer of 2016, GM began exploring an alternative "platform-agnostic" model where GM would maintain a direct relationship with drivers regardless of the business partnership. Id. ; Stooke Tr. at 37:13-38:22.
c. GM Brainstorms the MAVEN GIG Mark
Free access — add to your briefcase to read the full text and ask questions with AI
LUCY H. KOH, United States District Judge
Plaintiffs American Automobile Association of Northern California, Nevada & Utah and its affiliate A3 Mobility LLC ("Plaintiffs" or "AAA") bring the instant trademark infringement lawsuit against Defendants General Motors LLC and its affiliate Maven Drive LLC ("Maven") (collectively, "Defendants" or "GM"). Before the Court is GM's motion for summary judgment. Having considered the submissions of the parties, the relevant law, and the record in this case, the Court DENIES IN PART AND GRANTS IN PART GM's motion for summary judgment.
*1078I. BACKGROUND
A. Factual Background
This case concerns two competing car share services with similar names. On April 17, 2017, AAA issued a press release announcing the launch of its "GIG" car share service. GM also developed a car share service called "MAVEN GIG," which AAA asserts AAA did not learn about until May 3, 2017. See Opp'n at 1. Viewing the facts in the light most favorable to AAA, the Court discusses the two car share services below. The Court starts with AAA's GIG car share service.
1. AAA's GIG Car Share Service
In 2016, AAA created its subsidiary, A3 Mobility, to focus on a new business model innovation for AAA. ECF No. 77-1 ("Haight Decl.") ¶ 7; see also ECF No. 77-2 ("Bowler Decl."), Ex. 1 ("Hetke Tr.")1 at 16:19-25, 24:13-18. In September 2016, A3 Mobility began developing an idea for a car share service, and AAA drafted a business case to present to its executives that identified April 2017 as the launch date. Haight Decl. ¶ 8; Hetke Tr. at 46:6-18, 53:19-54:3, 106:5-12; 138:17-23. AAA hired third-party advertising agency Muhtayzik Hoffer, and with Muhtayzik Hoffer's collaboration, AAA settled on the name [redacted] with the tagline "Get In. Go." in January 2017. Haight Decl. ¶¶ 9-12; Hetke Tr. at 79:20-80:25. Soon after, AAA learned that [redacted] was covered by a preexisting third party trademark application, and therefore AAA abandoned [redacted] and proceeded with "GIG" (the acronym of "Get In. Go."), a mark that AAA's Chief Innovation Officer, Mike Hetke, came up with during a January 27, 2017 meeting. Haight Decl. ¶¶ 13-15; Hetke Tr. at 80:1-25, 82:21-83:25, 85:6-25.
After receiving a clean trademark clearance search yielding no conflicting marks, AAA filed a trademark application for the "GIG" mark with the U.S. Patent and Trademark Office on February 3, 2017 (U.S. Trademark Application Serial No. 87323570). Haight Decl. ¶ 16; Hetke Tr. at 136:10-138:3. On February 24, 2017, AAA submitted a formal application to the City of Oakland as "Gig Car Share" for parking permits. Haight Decl. ¶ 17; see also Bowler Decl., Ex. 2. By March 2, 2017, AAA shared the GIG mark with event services vendor Daybreaker, LLC, and Daybreaker, LLC began planning the official GIG launch event and promoted the event through social media, posters, and direct email. Haight Decl. ¶¶ 18-19; see also Bowler Decl., Ex. 3 ("Voges Tr.")2 at 63:8-65:22. By April 12, 2017, there were over 3,600 RSVPs for the GIG launch event. Haight Decl. ¶ 21; see also Bowler Decl., Exs. 4 & 5.
On April 17, 2017, AAA issued a formal press release regarding the GIG launch; launched the GIG website, www.gigcarshare.com; began social media advertising and street team/field marketing; and opened up a GIG early enrollment period that included a targeted e-mail campaign to sign up GIG users. Haight Decl. ¶¶ 22-23; Hetke Tr. at 138:17-140:14, 149:15-25; Voges Tr. at 31:19-33:12, 36:10-37:16, 40:14-25, 41:11-42:9: 90:21-91:3.
*1079AAA launched the GIG mobile phone application in app stores on April 17, 2017, and immediately began receiving hundreds of downloads. Haight Decl. ¶ 25. San Francisco-based public media outlet KQED aired a radio interview about GIG with AAA's GIG Car Share President, Jason Haight. Id. ¶ 24; see also Bowler Decl., Exs. 6 & 7. Between April 17, 2017 and April 30, 2017, dozens of AAA employees drove GIG branded cars in public. Id. ¶ 26; see also Voges Tr. at 68:8-18. By April 28, 2017, there were over 7,000 RSVPs for the GIG launch event. Haight Decl. ¶ 27. When the GIG launch event was ultimately held on April 30, 2017, it was heavily branded with the GIG mark, and there were thousands of attendees. Id. ¶ 28; Voges Tr. at 66:20-22; 68:19-70:9.
Within one year of operation, GIG doubled in size from 250 to 500 cars and expanded to serve four cities, including Berkeley, Oakland, Alameda, and Albany. Haight Decl. ¶ 32. AAA publicly announced GIG's expansion into Sacramento in 2019. Id. ¶ 34.
2. GM's MAVEN GIG Car Share Service
a. GM's "Maven" Mark
Maven is an affiliate of GM that provides vehicle-sharing services under its "Maven" mark. ECF No. 1 ("Compl") ¶ 29. GM developed its "Maven" mark in January of 2016. GM offers rental services through Maven that are labeled with the word "Maven" and another identifying word. For instance, GM offers rental services targeted toward personal use called "MAVEN HOME" and "MAVEN CITY" under its Maven mark. Bowler Decl., Ex. 8 ("Bhattacharya Tr.")3 at 33:11-12; id. , Ex. 9 ("Stooke Tr.")4 at 26:21-28:16.
b. GM's EXPRESS DRIVE Relationship with Lyft
Around the same time that GM developed its Maven mark, GM had a program with Lyft called "EXPRESS DRIVE" for the use of GM vehicles in providing Lyft services. Bhattacharya Tr. at 33:19-34:8; Bowler Decl., Ex. 8 ("Steyn Tr.")5 at 20:11-25:9. Specifically, EXPRESS DRIVE is a program branded by Lyft whereby Lyft "offers cars through their partners, like Maven to the drivers exclusively for them to earn money on the Lyft platform." Steyn Tr. at 21:9-12. In other words, Lyft serves as the direct contact to the drivers. Id. at 22:21-25, 52:18-23.
Before the fall of 2016, however, GM's relationship with Lyft and EXPRESS DRIVE became strained due to unprofitability and unaligned incentives. Bhattacharya Tr. at 50:10-51:6; Steyn Tr. at 24:16-25:10; 53:18-23. In particular, GM wanted direct contact with the drivers. Steyn Tr. at 53:18-23. Therefore, in the *1080summer of 2016, GM began exploring an alternative "platform-agnostic" model where GM would maintain a direct relationship with drivers regardless of the business partnership. Id. ; Stooke Tr. at 37:13-38:22.
c. GM Brainstorms the MAVEN GIG Mark
GM came up with the MAVEN GIG mark idea in early August 2016, when a team of GM employees brainstormed names for a car rental service for individuals to drive for companies like Uber or Lyft, who do not own cars or do not want to use their own cars for commercial purposes. ECF No. 75-1 ("Bhattacharya Decl.") ¶ 4; Stooke Tr. at 46:3-5, 48:8-22; Adkisson Decl., Ex. 2 ("5th Resp. to AAA's 1st Interrogs.") at 3-5. The name was based on research by Megan Stooke, the Chief Marketing Officer for Maven Drive, regarding the phrase "gig economy," which is used to describe the trend in the labor market for short-term, freelance work, such as working as a driver for one of the app-based services. Bhattacharya Decl. ¶¶ 6-7; Stooke Tr. at 48:8-22. From that research, the team shared the MAVEN GIG name with GM's advertising agency, Dentsu Aegis Network, on August 8, 2016. Bhattacharya Decl. ¶¶ 6-7; Adkisson Decl., Ex. 5. Management approved the MAVEN GIG mark in mid-September 2016. Bhattacharya Decl. ¶¶ 8-9. GM employees confirmed that the purpose of the MAVEN GIG service was for GM to have a direct relationship with drivers and to have an agnostic platform where drivers could drive for any ride share or delivery business. Strooke Tr. at 38:10-18; Steyn Tr. at 53:18-23.
d. GM Communicates with Potential Business Partners
Before GM's formal approval of the MAVEN GIG mark, GM used the mark in a few instances to discuss potential partnerships with other businesses. Bhattacharya Decl. ¶ 10. For instance, GM emailed Amazon twice in August and September 2016, to propose a partnership based on the MAVEN GIG service. Id. ¶¶ 11-12; Adkisson Decl., Ex. 7 ("8/29/16 Email to Amazon"); id. , Ex. 8 ("9/28/16 Email to Amazon") ("For Maven Gig ... [A] Gig partnership with Amazon wouldn't be a fleet dedicated to Amazon; the concept of Gig is that rideshare drivers can use our car to drive for multiple platforms."); Stooke Tr. 80:14-24.
On September 8, 2016, GM participated in a live WebEx meeting with Uber during which GM proposed a business partnership with Uber. Bhattacharya Decl. ¶ 13. As part of that WebEx meeting, GM emailed Uber a slideshow titled "Maven Gig" (file name "Maven-Gig-Overview_Uber.pdf") that explained the MAVEN GIG service. Id. ¶ 13; see also Adkisson Decl., Ex. 9 ("9/8/16 Email to Uber"). The slideshow bore both the Maven mark as well as the MAVEN GIG mark.
In September and November 2016, GM also discussed and presented written materials about the MAVEN GIG service with an individual name Moshe Cohen from Gravity Technologies as well as the grocery delivery company Instacart. Bhattacharya Decl. ¶¶ 14-16; Stooke Tr. 81:5-12; see also Adkisson Decl., Ex. 10 ("9/2016 Emails with Gravity Technologies"); id. , Ex. 12 ("11/2016 Instacart Maven Gig Presentation"); id. , Ex. 11 ("11/30/16 Instacart Maven Gig Workflow Presentation"). The Instacart presentation predominantly displayed the Maven mark, but also displayed the MAVEN GIG mark. See 11/2016 Instacart Maven Gig Presentation.
e. GM's Pilot Program Partnership with Uber
Both parties agree that GM entered into a partnership with Uber to rent cars directly to Uber drivers. See Mot. at 3; Opp'n at 4; see also Bhattacharya Decl.
*1081¶ 17. However, GM paints the partnership as the "first business partnership for the MAVEN GIG service," while AAA emphasizes that this was merely a pilot program. Compare Mot. at 3-6, with Opp'n at 4-7.
The evidence reflects that GM and Uber entered into a three-month "Pilot Agreement" executed on October 31, 2016, that made Uber a rideshare partner. Steyn Tr.at 52:1-18, 97:8-19, 99:22-100:25; id. , Ex. 11 ("Pilot Agreement"); Stooke Tr. 39:6-41:3; Bhattacharya Tr. at 53:2-15. Although the Pilot Agreement mentioned Uber and Maven, it did not mention MAVEN GIG. See Pilot Agreement. The Pilot Agreement provided that Uber had exclusive responsibility to "conduct email marketing of the Program to existing and potential Uber Driver Partners," and that the parties would jointly distribute a press release announcing the launch of the program. Pilot Agreement at GM18110 & GM18121; Steyn Tr. at 103:1-104:22; Bhattacharya Tr. at 26:24-25, 144:15-145:25. The press release went out on November 1, 2016; however, the press release mentioned Uber and Maven but did not mention MAVEN GIG. Bowler Decl., Ex. 12 ("11/1/16 Press Release"); Steyn Tr. at 105:10-107:8; Bhattacharya Tr. at 148:11-150:6. Indeed, GM employees later clarified that this was because GM technically never had a co-marketing agreement with Uber on MAVEN GIG. Bhattacharya Tr. at 255:4-18; Bowler Decl., Ex. 27.
AAA points to evidence in the record demonstrating that GM may have sought to purposefully conceal the MAVEN GIG mark during its pilot with Uber. For instance, the record demonstrates that GM was particularly sensitive about the Lyft EXPRESS DRIVE partnership, so GM wanted to get "Express Drive unwound" before they got "[MAVEN GIG] up and running," especially because GM had not given Lyft formal notice that GM was exiting EXPRESS DRIVE and especially given the fact that Lyft and Uber were competitors. Steyn Tr. at 55:21-57:25, 89:20-90:20; Bhattacharya Tr. at 148:13-151:4 ("[W]e knew the entire conversation would be about Uber and Lyft, in any case, and that the message we wanted to tell would get lost."); see also Bowler Decl., Ex. 15. Moreover, GM wanted MAVEN GIG to be a platform-agnostic, multi-partner product, and knew that if GM "tried to message extensively about the platform agnostic aspects of [MAVEN GIG], the fact that [GM] only had one-co-marketing partner to begin with didn't look great with that." Bhattacharya Tr. at 150:13-151:4. Therefore, GM did not have a marketing campaign or intend to market MAVEN GIG until it had other partners besides Uber, which the evidence in the record suggests did not occur until May of 2017.6 Id. at 59:4-60:8, 156:1-158:18, 214:8-11; see also Bowler Decl., Ex. 16. Thus, the MAVEN GIG mark is not mentioned in the media talking points or the official communications plan regarding the Uber pilot. Steyn Tr. at 110:21-112:24; Bowler Decl., Ex. 16 ("Media Briefing Talking Points"); Bhattacharya Tr. at 152:12-155:25; Bowler Decl., Ex. 18 ("Communications Plan").
The car share service rental became available to Uber drivers in San Francisco on November 1, 2016. Bhattacharya Decl. ¶ 18; ECF No. 75-2 ("Jaising Decl.") ¶ 5. That same day, as part of the Pilot Agreement, Uber contacted drivers through a sign-up email to promote the car share service and to explain how to rent a car. Bhattacharya Decl. ¶ 19; Jaising Decl. ¶ 6. The sign-up email from Uber mentioned Uber and Maven but did not mention MAVEN GIG. Bowler Decl., Ex. 14 ("Uber Driver Email"); Bhattacharya Tr. at 113:18-114:22; Stooke Tr. 84:19-85:3. Specifically, the sign-up email stated: "We've teamed up with Maven." See Uber Driver *1082Email. The Uber sign-up email contained a hyperlink that led to the landing page at www.mavendrive.com/gig, and an enrollment website at www.mavendrive.com/gig/#!enroll ("Enrollment Website"), which directed customers to complete a four-part enrollment form to create an account, provide personal and credit card information, and schedule an appointment to rent a car. Bhattacharya Decl. ¶¶ 19-20; Jaising Decl. ¶ 6; Adkisson Decl., Ex. 13; 5th Resp. to AAA's 1st Interrogs. at 10. Anyone with the hyperlink could access the site; however, the link was only emailed to existing Uber drivers through the Uber email and was not sent to the general public. Steyn Tr. at 95:1-96:20; Bowler Decl., Ex. 19; Bhattacharya Tr. at 26:11-27:15.
The first screen of the Enrollment Website bore the "Maven" mark in large text in the top left corner, but not the "MAVEN GIG" mark. Adkisson Decl., Ex. 14 ("First Enrollment Screen"). The description on the website stated "Welcome to Maven! ... Once you have completed the registration process, it can take up to 2 business days to be approved." Id. As displayed in the image below, however, the "Maven Gig" mark appeared only once, at the bottom of the first screen of the Enrollment Website, where customers were required to check a box next to the statement, "I agree to Maven Gig's Lease Agreement and Privacy Statement." Id. ; Jaising Decl. ¶ 7.
See First Enrollment Screen. The MAVEN GIG check box statement appeared in font smaller than the Maven mark that was used in multiple places on the first screen of the Enrollment Website. See First Enrollment Screen. Customers were not permitted to move onto the next screen of the Enrollment Website if they did not check the box acknowledging this statement. See id. ; Jaising Decl. ¶ 7. Although the statement next to the check box mentioned MAVEN GIG, the lease agreement itself did not display the MAVEN GIG mark and only mentioned Maven. See Bowler Decl., Ex. 11 at GM18122-33 ("Maven Program Rental Agreement"); Bhattacharya Tr. at 146:1-147:24; Bowler Decl., Ex. 29 ("Gig Enrollment Flow") at 3.
All Uber drivers who checked the box received a welcome email prompting verification by clicking on a URL (www.mavendrive.com/gig/#!/emailConfirm/). Jaising Decl. ¶ 8; 5th Resp. to AAA's 1st Interrogs. at 15-18. The welcome email did not mention MAVEN GIG and instead bore only the Maven mark. Gig Enrollment Flow at 7. Drivers were then prompted to complete the next three screens of the Enrollment Website, which required them to enter payment details and driver's license information, and to select a car rental appointment time. Jaising Decl. ¶ 8; 5th Resp. to AAA's 1st Interrogs. at 18-19; Bhattacharya Tr. at 81:16-83:16. The MAVEN GIG mark was not present on any of these screens, and instead the screens showed only the Maven mark. See Gig Enrollment Flow at 4-6.
Customers who completed all four screens of the Enrollment Website received *1083an automated reservation confirmation email bearing a large Maven mark header in the body of the email. See Adkisson Decl., Ex. 15 ("Confirmation Emails") at GM55933-45. The email's text stated, "Welcome to Maven Gig!" in font smaller than the large Maven mark header. Jaising Decl. ¶ 9; see also Confirmation Emails at GM559393-45. The reservation confirmation email also provided directions to a shared parking lot and instructed customers to let the parking attendant know "that you are looking for Maven Gig." Confirmation Emails at GM559393-45. The reservation confirmation email was signed "The Maven Team." See id. An example of the reservation confirmation email is presented in the image below.
After the drivers had enrolled, they could log into their Maven accounts at www.mavendrive.com/gig/#!/login ("Maven Website") and could view and revise their existing reservations or make new ones through their Maven account. Jaising Decl. ¶ 10. MAVEN GIG did not appear on this Maven Website. See Bhattacharya Tr. at 181:2-182:21; Bowler Decl., Ex. 20; id. , Ex. 21; Steyn Tr. at 91:8-17. However, if customers revised their existing reservations, they received a reservation update email confirming the details for their new reservation that again stated, "Welcome to Maven Gig!" and to let the parking attendant "know that you are looking for Maven Gig." Id. ¶ 11; see also Adkisson Decl., Ex. 16; id. , Ex. 17. Invoices sent to drivers after completed reservations displayed the Maven mark but not the MAVEN GIG mark. See, e.g. , Bowler Decl., Ex. 31 (December 2016 emails with attached invoice); id. , Ex. 32 (July 2017 emails with attached invoice).
On November 1, 2016, GM recorded its first driver who enrolled and reserved a car on the Enrollment Website. Jaising Decl. ¶¶ 12, 14; Bhattacharya Decl. ¶ 21; see also Adkisson Decl., Ex. 18. On November 2, 2016, Akshay Jaising, the Regional Manager - West at Maven Drive, and another GM employee met the first driver to pick up a car rented through the service at a parking lot in San Francisco and provided an overview of how the MAVEN GIG service works. Jaising Decl. ¶ 13; Bhattacharya Decl. ¶ 22.
GM explained that when drivers would go to the parking lot to pick up cars, the parking lot was not generally branded, but employees would typically wear Maven, *1084but not MAVEN GIG, apparel so that the drivers would know with whom to speak. Bhattacharya Tr. at 56:25-12. GM also clarified that the rental cars were branded with the Maven mark but not the MAVEN GIG mark. Id. at 137:3-11; see also Bowler Decl., Exs. 22 & 23 (showing car with only a "Maven" mark car decal).
Starting November 21, 2016, Uber incorporated a link to the Enrollment Website in its sign-up flow for new drivers in San Francisco on the Uber website, which is available to all members of the public who wish to drive for Uber. See Jaising Decl. ¶ 15; see also Adkisson Decl., Ex. 19 ("Uber Sign-Up Flow"). The sign-up flow included only the Maven mark, and clicking on the Maven mark would bring drivers to the Enrollment Website. See Uber Sign-Up Flow; see also Jaising Decl. ¶ 15.
Beginning as early as January 31, 2017, existing drivers could make new reservations to rent cars on the Maven Website by clicking to expand a section of the website that was specifically titled "Maven Gig." Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459. However, this tab only appears to have been available to drivers who already had a Maven account and had logged in. See Jaising Decl. ¶ 17. After clicking the "Maven Gig" tab, customers could follow the listed steps to make a new reservation. Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459.
f. GM's Communications with Customers
GM highlights that, beginning around December 28, 2016, GM had responded to email inquiries from customers and prospective customers using the MAVEN GIG mark. See Jaising Decl. ¶ 16; Bhattacharya Decl. ¶ 24; Bhattacharya Tr. at 60:20-70:5. Specifically, GM cites to evidence in the record that GM used the mark in a few emails to: (1) confirm that customers were interested in GM's "Maven Gig program" (as opposed to GM's other services under Maven); (2) advise customers that their inquiry would be forwarded to GM's "Maven Gig" team; and (3) provide information about the MAVEN GIG service. See, e.g. , Adkisson Decl., Ex. 21 (email dated 2/22/2017); id. , Ex. 22 (emails dated 1/5/2017-1/6/2017); id. , Ex. 23 (email dated 2/8/2017); id. , Ex. 24 (email dated 3/15/2017). Nonetheless, GM's emails in response to customer inquiries also frequently used the Maven mark. For instance, GM sent the emails from a Maven email address, such as memberservices@maven.com; GM signed the emails "Maven Member Services"; and GM's emails displayed a prominent Maven mark. See, e.g. , Adkisson Decl., Exs. 21 & 23. Further, several of GM's emails referred to the service inconsistently, including "[o]ur program with Uber," "[o]ur Uber program," "[o]ur partnership with Uber." See, e.g. , id. , Ex. 21; id. , Ex. 29.
Additionally, GM cites to evidence showing that GM replied to two customer emails with questions about the car share service by attaching a slide presentation dated January 31, 2017 with the file name "Maven Gig Uber Pilot Highlights.pdf" that displayed the MAVEN GIG mark. Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 (email dated 2/22/2017 attaching PDF); id. , Ex. 29 (email dated 3/2/2017 attaching PDF). For example, next to the screenshot showing the Maven Website, the presentation explained: "Once you have logged in, click on Maven Gig and follow the steps to make an appointment." Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459. The presentation also stated: "[t]he Maven Gig program for Uber drivers is currently offered in San Francisco," and to "[s]tay tuned for updates." Jaising Decl. ¶ 18; Adkisson Decl., Ex. 21 at GM56462. However, the PDF presentation that GM sent out also mentions the Maven Website, the "Maven Lease Agreement," Maven insurance, *1085the "Maven vehicle," and the "Maven bill." Id.
g. GM Continues to Communicate to Potential Business Partners
GM also cites to evidence in the record that GM discussed potential partnerships with other third-party companies in early 2017. Bhattacharya Decl. ¶ 26. For example, GM and Hertz began discussing a potential partnership in mid-February of 2017. Id. ¶ 27. On March 29, 2017, GM and Hertz had an in-person meeting, during which GM used a slide presentation. Id. ; Jaising Decl. ¶ 21; Adkisson Decl., Ex. 30 ("Hertz Presentation"); Bhattacharya Tr. at 70:7-10. The MAVEN GIG mark was on several of the slides; however, many of the slides bore just the Maven mark. See Hertz Presentation. GM and Hertz continued their discussions about the car share service in a live WebEx meeting on April 11, 2017. Jaising Decl. ¶ 21.
GM also discussed a potential partnership with the package delivery company Roadie on March 28, 2017 using a presentation titled "Maven GIG overview (Roadie)" that showed both the Maven mark and the MAVEN GIG mark. Bhattacharya Decl. ¶ 28; Adkisson Decl., Ex. 31 ("Roadie Presentation"); Bhattacharya Tr. at 66:12-16. GM also discussed a potential partnership with the food delivery company Grubhub beginning in March 2017. Bhattacharya Decl. ¶ 29; Bhattacharya Tr. at 66:12-16. On April 6, 2017, GM emailed Grubhub a presentation titled "MAVEN GIG OVERVIEW" with the file name "170405_Maven-GIG_Overview.pdf." Bhattacharya Decl. ¶ 29. The presentation showed the MAVEN GIG name several times, including references to the "Maven Gig renter experience" and a proposed co-marketing partnership that showed the MAVEN GIG mark. Id. ; see also , Adkisson Decl., Ex. 32 ("MAVEN GIG OVERVIEW Presentation").
Roadie, Grubhub, and Instacart all eventually became co-marketing partners for the MAVEN GIG service sometime in April 2017, after AAA's April 17, 2017 launch; however, the exact dates of those partnerships are not clear from the record. Bhattacharya Decl. ¶¶ 30-31; Bhattacharya Tr. at 47:9-49:7. GM employees explained that these additional partnerships between GM and companies such as Grubhub, Instacart, Roadie, and other ridesharing services to provide vehicles to use for independent driving gigs meant GM had achieved its goal of making the MAVEN GIG service "platform-agnostic." Bhattacharya Decl. ¶ 32; Jaising Decl. ¶ 28.
h. GM's Customer Statistics
By April 17, 2017, the date AAA issued a formal press release regarding the GIG launch, GM had received 2,340 applications from prospective drivers who had visited the Enrollment Website and had checked the box next to the statement "I agree to Maven Gig's Lease Agreement and Privacy Statement"). Jaising Decl. ¶¶ 14, 23-24; Adkisson Decl., Ex. 18; id. , Ex. 34 ("Customer Data"). GM also asserts that it had sent over 846 reservation confirmation emails to customers, but this figure is not supported-or at the very least made clear-by GM's citations to the record. See Mot. at 8 n.45.
By April 17, 2017, the number of "members" of the MAVEN GIG service, which refers to GM's way of counting the number of customers who have either completed or have an in-progress service rental, was 284 customers. Jaising Decl. ¶ 23; see also Customer Statistics. From November 2016 until April 1, 2017, GM collected approximately [redacted] in revenue from the car share service. See Adkisson Decl., Ex. 20 ("Maven Gig Billing Collections").
i. GM's Use of the MAVEN GIG Service After April 17, 2017
GM contends it first learned about AAA's GIG mark through an article published *1086on April 17, 2017. Bhattacharya Decl. ¶ 35. After that date, on May 2, 2017, GM launched a new website for the MAVEN GIG service and published the "Maven Gig Insurance Policy for Commercial Lease/Rental Agreement" online at: http://media.gm.com/media/us/en/maven/gig-insurance.html. Jaising Decl. ¶ 27; see also Adkisson Decl., Ex. 41 ("Maven Gig Insurance Policy").
On May 3, 2017, GM issued a press release titled "Maven Gig Accelerates the Freelance Mobility Economy," in which GM announced that "Maven is expanding its flexible mobility platform to accelerate the gig economy." Adkisson Decl., Ex. 42 ("5/3/2017 MAVEN GIG Press Release"). Evidence in the record suggests that GM issued this press release because the MAVEN GIG service was technically not yet public at that time. Bhattacharya Tr. at 190:7-14, 192:23-193:9; Bowler Decl., Ex. 24 ("Note that Gig isn't technically public yet"); id. , Ex. 25 (4/17/2017 email stating "we aren't announcing the Gig business until 2 weeks from now."); id. , Ex. 26 (2/25/2017 emails stating "I just wanted to make sure we were on the same page in respect to communications. The direction is to NOT make a lot of noise around the Australian Maven Gig partnership with Uber in March. So please, do not issue any press releases" and that "we are 100% aligned on not doing anything external during our pilot.").
The press release stated that "Maven Gig drivers are provided access to vehicles they can use for independent gigs that they choose, such as package delivery, food or grocery delivery, and ridesharing." 5/3/2017 MAVEN GIG Press Release. "This program is live in San Diego and will launch in San Francisco and Los Angeles later this year."7 Id. "Initial partners include GrubHub, Instacart, Roadie and ridesharing services." Id. The press release further stated that "Maven's internal data shows a clear, growing need for Maven Gig"; that "Maven's on-demand rental for ridesharing program has produced more than 100 million miles driven and 9.3 million rides have been given"; and that "Maven has applied learnings from these operations to launch Maven Gig and help make the sharing economy more accessible and intelligent." Id. The press release generated publicity, including third-party articles that referred to the service as "Maven Gig." Bhattacharya Decl. ¶ 32; see also, e.g. , Adkisson Decl., Ex. 43 (5/3/2017 Los Angeles Times article titled "GM introduces 'Maven Gig' rental program for app-based freelance drivers").
After May 3, 2017, GM used the MAVEN GIG mark in paid search marketing. Stooke Tr. at 102:11-13. GM also started a MAVEN GIG Facebook community, created MAVEN GIG marketing materials that are located on YouTube and "created digital assets for Maven Gig members to refer to other members." Id. at 102:11-20, 103:19-105:18. MAVEN GIG has expanded since its initial launch and is currently available in Austin, Detroit, San Diego, San Francisco, Los Angeles, Phoenix, Boston, Baltimore, Washington, D.C., and New York. Bhattacharya Decl. ¶ 33. MAVEN GIG was not introduced to the Maven app until August 2017. Stooke Tr. at 126:10-12.
GM has earned approximately [redacted] in revenue from the MAVEN GIG
*1087service from November 2016 through August 2018; however, GM has yet to turn a profit. See Maven Gig Billing Collections; Bhattacharya Decl. ¶¶ 34-35; Adkisson Decl., Ex. 44 ("Distler Rpt.") ¶¶ 54, 70, 95. [redacted]
3. Facts Leading to the Instant Litigation
AAA states that it first became aware of GM's MAVEN GIG mark on May 3, 2017 via GM's announcement. Haight Decl. ¶¶ 35-36. AAA sent GM a cease and desist letter on May 5, 2017 that asserted common law rights in the GIG mark. Id. ¶¶ 38-40; see also Adkisson Decl. ¶ 54, Ex. 53 ("5/5/17 Cease and Desist Letter"). The letter also stated "[i]n addition to common law rights in the 'GIG' service mark, AAA owns a pending application in the U.S. Patent and Trademark Office for the 'GIG' mark (Serial No. 87323670)." 5/5/17 Cease and Desist Letter. GM responded on May 16, 2017 and asserted that GM's use of the MAVEN GIG mark predated AAA's use of the GIG mark. Adkisson Decl. ¶ 16, Ex. 15 ("5/16/17 Email"). On May 11, 2017, GM filed a trademark application with the U.S. Patent and Trademark Office (U.S. Trademark Application Serial No. 87446290). Stooke Tr. at 59:4-25, 68:7-69:10; see also id. , Ex. 74.
B. Procedural History
AAA filed its lawsuit against GM on July 7, 2017. ECF No. 1 ("Compl."). AAA's complaint alleges causes of action for (1) Common Law Trademark Infringement; (2) Federal Unfair Competition and False Designation of Origin, in violation of Section 43(a) of the Lanham Act,
A week before GM had answered, GM filed a motion to stay the case pending resolution of the priority issue in the Trademark Trial and Appeal Board ("TTAB") on August 18, 2018. ECF No. 18. The Court denied GM's request to stay during the October 11, 2017 case management conference. See ECF No. 40.
On January 1, 2019, GM filed the instant motion for summary judgment. ECF No. 75 ("Mot."). On January 24, 2019, AAA opposed. ECF No. 77 ("Opp'n"). On January 31, 2019, GM replied. ECF No. 81 ("Reply").
II. LEGAL STANDARD
Summary judgment is proper where the pleadings, discovery, and affidavits show that there is "no genuine dispute as to any material fact and [that] the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Material facts are those which may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc. ,
The 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 Corp. v. Catrett ,
At the summary judgment stage, the Court must view the evidence in the light most favorable to the nonmoving party: if evidence produced by the moving party conflicts with evidence produced by the nonmoving party, the judge must assume the truth of the evidence set forth by the nonmoving party with respect to that fact. See Leslie v. Grupo ICA ,
"Because of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena." Interstellar Starship Servs., Ltd. v. Epix Inc. ,
III. DISCUSSION
GM moves for summary judgment on all claims brought by AAA. GM asserts that all four of AAA's claims rely on the same set of facts related to GM's use of the MAVEN GIG mark, and therefore, all of AAA's claims are analyzed under the same standards as an infringement claim under Section 43(a) of the Lanham Act,
Specifically, GM argues (1) that there is no genuine dispute as to any material fact regarding GM's ownership of prior rights in the trademark MAVEN GIG over AAA's alleged rights in the trademark GIG, and therefore GM is entitled to judgment as a matter of law. Mot. at i, 2. In the alternative, GM argues that (2) AAA cannot recover any monetary remedies in this action because there is no evidence, and thus no genuine dispute of material fact (a) that GM acted willfully or (b) that AAA suffered actual damages because of the alleged infringement. See
A. Summary Judgment is Not Warranted on Priority of Use
To prevail on a Lanham Act trademark claim, AAA "must prove: (1) that it has a protectable ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion." Rearden LLC. ,
*1089Sengoku Works Ltd. ,
GM argues that it is entitled to summary judgment on the issue of priority because GM's use of the MAVEN GIG mark constitutes trademark use and predates any use by AAA of the GIG mark, and therefore AAA cannot establish that it owns valid trademark rights. Both parties agree that AAA first used its GIG mark on April 17, 2017. Accordingly, GM must establish that there is no genuine dispute that GM made use of the MAVEN GIG mark prior to April 17, 2017.
GM contends that there is no genuine dispute on priority of use for two reasons. First, GM argues that GM has made actual trademark use of the MAVEN GIG mark in commerce by selling and rendering its car share service under the MAVEN GIG mark. Mot. at 13. GM argues second that if its sales are not alone sufficient, then the totality of GM's non-sales activity under the MAVEN GIG mark constitutes analogous use. See
1. GM is Not Entitled to Summary Judgment Based on Actual Use of the MAVEN GIG Mark in Connection with Sales Prior to April 17, 2017
GM first argues that there is no genuine dispute of material fact that GM actually used the MAVEN GIG mark in connection with its car share service sales prior to April 17, 2017. Mot. at 13-17. In particular, GM points to the fact that by April 17, 2017, GM had made sales of and rendered the MAVEN GIG service to approximately 284 customers and had collected approximately [redacted] in revenue.
Under the Lanham Act and Ninth Circuit law, "actual" trademark use occurs through "use in commerce," which means "the bona fide use of a mark in the ordinary course of trade, and not [use] merely to reserve a right in a mark." Brookfield Commc'ns Inc. ,
As an initial matter, the "actual sales" cases relied on by GM, Seal Shield, LLC v. Otter Prods., LLC , and Macy's Inc. v. Strategic Marks, LLC , are distinguishable. For example, in Seal Shield, LLC , the court found prior use where plaintiff "sold 382 units of its protective Kindle 2 case *1090with the designation 'Life Proof' affixed to the packaging." 13-cv-2736-CAB (NLS),
Perhaps recognizing that it cannot rely only on the sale in the same way as the parties in Seal Shield, LLC and Macy's Inc. , GM points to the following evidence from the car share service enrollment and reservation process during the Uber pilot program in an attempt to demonstrate that GM used the MAVEN GIG mark "publicly and repeatedly in connection with its bona fide sales between November 1, 2016, and April 17, 2017": (1) the statement next to the check box on the Enrollment Website that said "I agree to Maven Gig's Lease Agreement and Privacy Statement" before being able to proceed; (2) the reservation confirmation and reservation update emails that stated "Welcome to Maven Gig!" and instructed customers to let the parking attendant know "you are looking for Maven Gig" when picking up the rental car;8 (3) other email correspondence with customers; and (4) the January 31, 2017 update to the Maven Website that allowed people to make reservations on the "Maven Gig" tab. Mot. at 16.
The Court addresses each in turn. The Court then addresses AAA's arguments regarding GM's use, including evidence that GM purposefully hid the MAVEN GIG mark. Ultimately, the Court concludes that despite GM's insistence that its sales numbers and revenue constitute evidence of priority, the MAVEN GIG mark was not sufficiently used in conjunction with the actual sale of the car share service in a public manner so as to create an association among consumers between the MAVEN GIG mark and the car share service.
a. GM's Evidence in Support of GM's Actual Sales Argument is Insufficient
The Ninth Circuit has emphasized that parties cannot rely on a few instances of a use of a mark that were " 'casual' or had 'little importance apparently attached to [them].' " Dep't of Parks & Rec. ,
*1091In the paragraphs that follow, the Court addresses GM's evidence from the car share service enrollment and reservation process. Before doing so, however, the Court finds it useful to briefly discuss GM's pilot program with Uber because all of the evidence GM cites arises from this pilot program. GM and Uber entered into a three-month Pilot Agreement executed on October 31, 2016, that made Uber a rideshare partner. See Pilot Agreement; Steyn Tr.at 52:1-18, 97:8-19, 99:22-100:25; Stooke Tr. at 39:6-41:3; Bhattacharya Tr. at 53:2-15. That Pilot Agreement only mentioned Uber and Maven and did not mention MAVEN GIG. See Pilot Agreement. GM employees clarified that this was because GM technically never had a co-marketing agreement with Uber on MAVEN GIG. Bhattacharya Tr. at 255:4-18; Bowler Decl., Ex. 27.
The evidence shows that when GM developed MAVEN GIG, GM wanted MAVEN GIG to be a platform-agnostic, multi-partner product. However, when GM entered into its pilot program with Uber, Uber was GM's only partner. The evidence shows that GM recognized that having only one partner would be inconsistent with its platform-agnostic goals for MAVEN GIG. Bhattacharya Tr. at 150:13-151:4 (explaining that GM knew that if it "tried to message extensively about the platform agnostic aspects of [MAVEN GIG], the fact that [GM] only had one-co-marketing partner to begin with didn't look great with that."); Bowler Decl., Ex. 16 (11/1/2016 email from Rachel Bhattacharya, Director of Global Innovation at GM stating "Maven and Uber jointly answered questions to the press at 3 pm ahead of the formal release. Emails to the drivers go out today. It is simply being marketed as 'a pilot program with Maven and Uber;' we aren't using the GIG name publicly until later this year ... when we have more partners on board."). Therefore, GM did not have a marketing campaign or intend to market MAVEN GIG until it had partners other than Uber. Bhattacharya Tr. at 59:4-60:8, 156:1-158:18, 214:8-11; see also Bowler Decl., Ex. 16. Thus, the MAVEN GIG mark is not mentioned in the media talking points or the official communications plan regarding GM's pilot program with Uber. Steyn Tr. at 110:21-112:24; Media Briefing Talking Points; Bhattacharya Tr. at 152:12-155:25; Communications Plan. Instead, as discussed below, GM only used MAVEN GIG in limited and casual instances with the Uber drivers in the pilot program.
i. The Enrollment Process
GM's evidence from the car share service enrollment and reservation process resembles the casual or limited use about which courts have cautioned, especially when compared to the prominent use of the Maven mark in the customer facing communications. For example, GM continuously emphasizes the fact that the Uber drivers who received the sign-up email during the pilot program and went to the Enrollment Website that included the Maven mark but did not include the MAVEN GIG mark, had to check a box next to the statement, "I agree to Maven Gig 's Lease Agreement and Privacy Statement" before being able to proceed. See First Enrollment Screen (emphasis added); Jaising Decl. ¶ 7; see also Reply at 6-7. This is the only use of "MAVEN GIG" prior to completing enrollment in the pilot program. The Court finds it useful to discuss the enrollment process, including this check box statement, before discussing the insufficiency of this use of the mark.
As part of the Pilot Agreement, Uber contacted drivers through a sign-up email to promote the car share service and to explain how to rent a car. Bhattacharya Decl. ¶ 19; Jaising Decl. ¶ 6. The Uber sign-up email mentioned Uber and Maven but did not mention MAVEN GIG. See *1092Uber Driver Email; Bhattacharya Tr. at 113:18-114:22; Stooke Tr. 84:19-85:3. Specifically, the sign-up email stated: "We've teamed up with Maven." See Uber Driver Email. The Uber sign-up email contained a hyperlink that led to the landing page at www.mavendrive.com/gig, and the Enrollment Website at www.mavendrive.com/gig/#!enroll, which directed customers to complete a four-part enrollment form to create an account, provide personal and credit card information, and schedule an appointment to rent a car. Bhattacharya Decl. ¶¶ 19-20; Jaising Decl. ¶ 6; Adkisson Decl., Ex. 13. Anyone with the hyperlink could access the site; however, the link was only emailed to existing Uber drivers through the Uber sign-up email and was not sent to the general public. Steyn Tr. at 95:1-96:20; Bowler Decl., Ex. 19; Bhattacharya Tr. at 26:11-27:15.
The first screen of the Enrollment Website bore the "Maven" mark in large text in the top left corner, but not the "MAVEN GIG" mark. See First Enrollment Screen. The description on the website stated "Welcome to Maven! ... Once you have completed the registration process, it can take up to 2 business days to be approved."
All Uber drivers who checked the box received a welcome email prompting verification by clicking on a URL (www.mavendrive.com/gig/#!/emailConfirm/). Jaising Decl. ¶ 8. The welcome email did not mention MAVEN GIG and instead bore only the Maven mark. Gig Enrollment Flow at 7. Drivers were then prompted to complete the next three screens of the Enrollment Website, which required them to enter payment details and driver's license information, and to select a car rental appointment time. Jaising Decl. ¶ 8; 5th Resp. to AAA's 1st Interrogs. at 18-19; Bhattacharya Tr. at 81:16-83:16. The MAVEN GIG mark was not present on any of these screens, and instead the screens showed only the Maven mark. See Gig Enrollment Flow at 4-6.
Having reviewed GM's use of the MAVEN GIG mark in this context, the Court finds that the limited mention of MAVEN GIG at the end of the first screen of the Enrollment Website does not constitute sufficient use "in conjunction with" the actual sale of the service. See Brookfield Commc'ns Inc. ,
The limited and casual nature of the one mention of the MAVEN GIG mark during the pilot program enrollment process is underscored by the prominent use of the Maven mark during this process in the sign-up emails and on the Enrollment Website, including in the sign-up email that only mentioned Maven but not MAVEN GIG; the First Enrollment Screen on the Enrollment Website that bore the large "Maven" mark in the top left corner and that stated "Welcome to Maven!"; the welcome email that bore only the Maven mark; and the second, third, and fourth screens of the Enrollment Website, where driver's entered payment details, driver's license information, and selected a car rental appointment time, which bore only the Maven mark. See Gig Enrollment Flow. The prominent use of the Maven mark instead of the MAVEN GIG mark during the enrollment process may diminish "the public's ability to associate a single mark" with the service "as it is unclear which mark to attach to the [service]." Nexsan Techs., Inc. v. EMC Corp. ,
Further, it bears mentioning that the Lease Agreement and Privacy Statement to which the drivers were asked to agree did not mention the MAVEN GIG mark either. See Maven Program Rental Agreement. Instead, the Lease Agreement and Privacy Statement only referred to the "Maven Program" and the "Uber Program." Therefore, unlike in Telegram Messenger Inc. v. Lantah, LLC , where the court granted summary judgment for the plaintiff on priority of use because plaintiff had entered into $ 850 million worth of purchase agreements that actually bore the mark at issue, Uber drivers in the pilot program entered into a Lease Agreement that did not mention the MAVEN GIG mark at all. See 18-cv-2811-CRB,
Besides the statement next to the check box, the only thing that comes close to mentioning the MAVEN GIG mark during the enrollment process were the hyperlinks in the emails to the Uber drivers, including www.mavendrive.com/gig/#!enroll and www.mavendrive.com/gig/#!/emailConfirm/.
*1094See Jaising Decl. ¶¶ 6, 8. However, these hyperlinks are to the website www.mavendrive.com and do not use the MAVEN GIG mark. Moreover, the Ninth Circuit has held that using a hyperlink or a domain name in e-mail communications is not sufficient to establish priority. See Brookfield ,
ii. GM's Communications with Customers
a. Reservation Confirmation and Reservation Update Email
GM also points to evidence of post-enrollment use of the mark, meaning evidence of use of the mark after customers had already signed-up. For example, GM cites the reservation confirmation and reservation update emails as well as evidence confirming that those emails were sent. See Mot. at 16. Specifically, the reservation confirmation and reservation update emails displayed a large Maven mark header in the body of the email. See, e.g. , Confirmation Emails at GM559393-45; see also Section I.A.2.e. By contrast, the email's text stated, "Welcome to Maven Gig!" and provided instructions to let the parking attendant know "that you are looking for Maven Gig" in font smaller than the large Maven mark header. Jaising Decl. ¶ 9; see also Confirmation Emails at GM559393-45; Adkisson Decl., Exs. 16, 17, 18, & 35. The confirmation email was signed "The Maven Team." See Confirmation Emails at GM559393-45.
As an initial matter, the parties dispute the relevancy of these emails to the "sale" because these emails occurred after the enrollment process. In particular, AAA points out that these emails were an auto-generated reservation confirmation email sent after drivers decided to enroll in the Uber pilot program and had already entered their payment and driver's license information online. See Opp'n at 16.
Regardless, even if the Court considers the reservation confirmation and reservation update emails, like the statement next to the check box, this evidence does not constitute sufficient use of the MAVEN GIG mark. First, the uses of the MAVEN GIG mark in these emails appear to be "casual," Dep't of Parks & Rec. ,
Moreover, case law suggests that this minimal, two-time mention of MAVEN GIG in email communications would not create in the minds of a customer any direct association between the underlying service and the MAVEN GIG mark. Indeed, the Ninth Circuit has already found that "mere use [of a mark] in limited e-mail correspondence with ... a few customers is not" sufficient to create an association among the public between the mark and the good or service. See Brookfield Commc'ns Inc. ,
Finally, the emails themselves are private one-on-one communications with individuals, not public use of the mark. As such, the reservation confirmation and reservation update emails do not support a finding of use. See Brookfield Commc'ns Inc. ,
b. Customer Email Inquiries
Similarly, the sample communications between GM and customers, including a few email inquiries from customers and the PDF presentation that GM sent to a few customers, are insufficient to support a finding that the MAVEN GIG mark was "used" in connection with the sales. See, e.g. , Adkisson Decl., Ex. 21 (email dated 2/22/2017);
However, GM's use of the MAVEN GIG mark in the sample communication emails appeared limited and inconsistent, as well as potentially overshadowed by GM's more prominent use of the Maven mark. For instance, although some of GM's emails discussed the MAVEN GIG service, GM sent the emails from a Maven email address, such as memberservices@maven.com; GM signed the emails "Maven Member Services"; and GM's emails displayed a prominent Maven mark. See, e.g. , Adkisson Decl., Exs. 21 & 23. In addition, the PDF presentation that GM sent out mentions the Maven Website, the "Maven Lease Agreement," Maven insurance, the "Maven vehicle," and the "Maven bill."
As a result of GM's limited and casual uses, GM's argument that its use of the MAVEN GIG mark created an association in the minds of customers is dubious. GM points to several of the sample communication emails between GM and customers to say that there is evidence in the record that customers themselves actually referred to the MAVEN GIG service in their email inquiries beginning in January 9, 2017, and therefore customers associated MAVEN GIG with GM's car share service. See Reply at 7-8 (citing Adkisson Decl., Exs. 27 & 28); see also Adkisson Decl., Exs. 21, 25, & 26. However, the sufficiency of these few sample communication emails between GM and customers is called into question when compared to other sample communications demonstrating that customers had no idea what the service was called. See, e.g. , Adkisson Decl., Ex. 22 (customer referring only to "Maven" in 1/5/17 email);
Next, like the reservation confirmation and update emails, the subset of the sample communications between GM and customers that are post-enrollment communications between GM and customers9 raise questions about whether these communications are relevant to determining that the MAVEN GIG mark was "used" in connection with the sales because these emails arrived after drivers had already enrolled for the car share service.
Finally, as already emphasized above, the sample communications between GM and customers are insufficient to establish use because the Ninth Circuit has already explained that the mere use of a mark in limited e-mail correspondence with a few customers is not sufficient to create an association between the mark and the service. See Brookfield Commc'ns Inc. ,
iii. The MAVEN GIG Tab on Maven Website
Finally, the last evidence cited by GM is evidence that beginning around January 31, 2017, existing drivers could make new reservations to rent cars through the MAVEN GIG service on the Maven Website by clicking to expand a section of the website that was specifically titled "Maven Gig." Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459. AAA challenges this evidence because the tab was only accessible to existing users with a Maven account. Opp'n at 19. That is, the "webpage could only be reached after a user logs on to the Maven Drive website and enters their [Maven] login information. Customers without a [Maven] or an Uber pilot account would never have encountered MAVEN GIG."
b. Evidence that GM was Hiding MAVEN GIG Mark
The Court also agrees with AAA that evidence shows that GM purposefully hid the MAVEN GIG mark during the Uber pilot program. This undermines GM's claim that the MAVEN GIG mark was sufficiently used in conjunction with the actual sale of the car share service in a public manner to create an association among customers between the MAVEN GIG mark and GM's car share service, and whether GM's actual sales are, in turn, relevant.
For instance, before GM entered into its pilot program with Uber, GM had a program with Lyft called "EXPRESS DRIVE" for the use of GM vehicles in providing Lyft services. Bhattacharya Tr. at 33:19-34:8; Steyn Tr. at 20:11-25:9. Before the fall of 2016, however, GM's relationship with Lyft and EXPRESS DRIVE became strained due to unprofitability and unaligned incentives. Bhattacharya Tr. at 50:10-51:6; Steyn Tr. at 24:16-25:10; 53:18-23. In particular, GM wanted direct contact with the drivers. Steyn Tr. at 53:18-23. Therefore, in the summer of 2016, GM began exploring an alternative "platform-agnostic" model where GM would maintain a direct relationship with drivers regardless of the business partnership.
The record demonstrates that because GM had not given Lyft formal notice that GM was exiting its EXPRESS DRIVE program with Lyft, and because Lyft and Uber were competitors, GM was still sensitive about its Lyft partnership when GM began its relationship with Uber. Therefore, GM wanted to get "Express Drive unwound" before they got "[MAVEN GIG] up and running." Steyn Tr. at 55:21-57:25, 89:20-90:20; Bhattacharya Tr. at 148:13-151:4 ("[W]e knew the entire conversation would be about Uber and Lyft, in any case, and that the message we wanted to tell would get lost."); see also Bowler Decl., Ex. 15. Moreover, GM wanted MAVEN GIG to be a platform-agnostic, multi-partner product, and knew that if GM "tried to message extensively about the platform agnostic aspects of [MAVEN GIG], the fact that [GM] only had one-co-marketing partner to begin with didn't look great with that." Bhattacharya Tr. at 150:13-151:4. Therefore, GM did not have a marketing campaign or intend to market MAVEN GIG until it had other partners besides Uber. Id. at 59:4-60:8, 156:1-158:18, 214:8-11; see also Bowler Decl., Ex. 16. Thus, the MAVEN GIG mark is not mentioned in the media talking points or the official communications plan regarding GM's pilot program with Uber. Steyn Tr. at 110:21-112:24; Media Briefing Talking Points; Bhattacharya Tr. at 152:12-155:25; Communications Plan.
Moreover, evidence in the record suggests that GM issued a press release on May 3, 2017 because the MAVEN GIG service was not technically public yet at that time. See 5/3/2017 MAVEN GIG Press Release; Bhattacharya Tr. at 190:7-14, 192:23-193:9; Bowler Decl., Ex. 24 ("Note that Gig isn't technically public yet"); id. , Ex. 25 (4/17/2017 Email stating "we aren't announcing the Gig business until 2 weeks from now."); id. , Ex. 26 (2/25/2017 emails stating "I just wanted to make sure we were on the same page in respect to communications. The direction is to NOT make a lot of noise around the Australian Maven Gig partnership with Uber in March. So *1099please, do not issue any press releases" and that "we are 100% aligned on not doing anything external during our pilot."). However, GM disputes this evidence and asserts that the May 3, 2017 was merely an "expansion" of the MAVEN GIG service. See Mot. at 8-9.
The Court concludes that evidence that GM sought to play down the MAVEN GIG mark during its pilot program with Uber supports the inference that the uses of the MAVEN GIG mark were purposefully limited and casual so as to not create an association among consumers between the mark and the service, such that the revenue10 and costumers figures do not reflect actual use of the mark. See, e.g. , Sebastian Brown Prods. LLC ,
According, having reviewed GM's evidence regarding its use, the Court concludes that GM is not entitled to summary judgement on priority of use on the basis of its actual use of the MAVEN GIG mark.
2. GM is Not Entitled to Summary Judgment Based on Analogous Use of the MAVEN GIG Mark
The Court turns next to GM's second argument regarding priority. Specifically, GM argues that GM's use of the MAVEN GIG mark through pre-sales activity are sufficient to establish "analogous use" to trademark use prior to April 17, 2017. Mot. at 17-20. The Court disagrees.
The Ninth Circuit has held that "trademark rights can vest even before any goods or services are actually sold if 'the totality of [one's] prior actions, taken together, [can] establish a right to use the trademark" Brookfield Commc'ns Inc.
The Court finds that GM's analogous use arguments fail. First, GM relies on much of the same evidence and arguments that GM relied on for its actual use argument, like the statement next to the check box on the Maven Website and the emails with customers. See Mot. at 18-19. These arguments fail for the same reasons discussed in Section III.A.1. For example, the check box statement was not "designed to attract the attention of the viewer to" the MAVEN GIG mark itself, and therefore it fails to create any association between the mark[ ] and the ... service[ ]." Dep't of Parks & Rec. ,
*1100Brookfield ,
In addition, the Court found GM's use of the MAVEN GIG mark in GM's email communications with customers limited and inconsistent, as well as potentially overshadowed by more prominent use of the Maven mark. For example, the reservation confirmation email bore a large Maven mark header, while the email's text stated, "Welcome to Maven Gig!" in font smaller than the large Maven mark header. Confirmation Emails at GM559393-45. The email exchanges with customers similarly displayed limited uses of the MAVEN GIG mark as compared to the Maven mark. For instance, GM sent the emails from a Maven email address, such as memberservices@maven.com; GM signed the emails "Maven Member Services"; and GM's emails displayed a prominent Maven mark. See, e.g. , Adkisson Decl., Exs. 21 & 23. In addition, the PDF presentation that GM sent out mentions the Maven Website, the "Maven Lease Agreement," Maven insurance, the "Maven vehicle," and the "Maven bill."
Second, GM points to its communications with potential partners like Instacart, Grubhub, and Roadie as activities constituting analogous use. Mot. at 18-19. However, these businesses are not the "appropriate segment of the public." Pactel Teletrac ,
Moreover, GM's communications with potential partners like Instacart, Grubhub, *1101and Roadie merely show that GM was trying to find more partners with whom to work to ultimately target the appropriate segment of the public. This looks more like "mere preparation" to use the MAVEN GIG mark in commerce, which is not sufficient. See Sebastian Brown Prods. LLC ,
Further, even if the Court were to consider the communications with the potential partners as evidence that GM was targeting the "appropriate segment of the public mind," the limited nature of these communications with potential partners would still be insufficient for the public to associate the mark with the service. See id. ("[N]o goodwill is created when a mark is 'seen by the consuming public only in very limited quantity.' " (citing E. & J. Gallo Winery ,
Third, GM cites post-April 17, 2017 evidence to show that GM's "use of the mark[ ] was continuous and not interrupted." Dep't of Parks & Rec. ,
In sum, the Court finds that the totality of GM's evidence does not establish that GM's pre-sale activities rose to the level of "sufficiently public" use of the MAVEN GIG mark so as to "identify or distinguish the marked goods in an appropriate segment of the public mind." Chance ,
B. Summary Judgment is Warranted on Monetary Remedies
GM argues in the alternative that GM is entitled to summary judgment on the issue of monetary remedies because (1) there is no evidence that GM acted willfully; and (2) there is no evidence that AAA has experienced any actual damages as a result of GM's use of the MAVEN GIG mark. Mot. at 20-25. After addressing each argument below, the Court GRANTS GM's motion for summary judgment on willfulness and on actual damages.
*11021. There is No Evidence of Willfulness
GM first argues that there is no evidence of willfulness, and thus that AAA cannot disgorge GM's profits. Mot. at 20-22. The Court agrees.
"Under the remedies provision of the Lanham Act, a court may award" the "defendant's profits." Stone Creek, Inc. v. Omnia Italian Design, Inc. ,
a. AAA's Dispute Regarding Definition of Willfulness
As an initial matter, although a showing of willfulness is clearly required by Stone Creek, Inc. and Lindy Pen Co. , AAA disputes what showing is necessary for willfulness. See Opp'n at 23-25. In particular, AAA cites to cases regarding the two recognized theories of consumer confusion that support a claim for trademark infringement: forward confusion and reverse confusion.
*1103The Court finds that AAA has incorrectly interpreted the law on willfulness in the disgorgement context. In particular, the cases on which AAA relies are likelihood of confusion cases (which is part of the liability inquiry), not disgorgement cases. See, e.g. , Marketquest Grp., Inc. ,
Moreover, AAA has identified no authority, nor has the Court found any, where a court has disgorged a defendant's profits in a reverse confusion case based only on mere knowledge. Further, AAA has identified no authority, nor has the Court found any, where a court has disgorged a defendant's profits in any case based only on mere knowledge. AAA has conflated what is sufficient for purposes of likelihood of confusion at the liability stage with what is sufficient to find "willfulness" in the disgorgement context at the remedies stage. Indeed, the Ninth Circuit's decisions in Stone Creek, Inc. and Lindy Pen Co. , emphasize that in order to prove willfulness so as to be entitled to disgorgement of profits, a plaintiff must show that the infringement is "willfully calculated to exploit the advantage of an established mark" or that GM is "attempting to gain the value of an established name of another." Lindy Pen Co. ,
Further, the Court's independent review of the case law indicates that AAA cannot rely on a reverse confusion theory to disgorge GM's profits. For instance, several cases suggest that because reverse confusion cases do not involve an intent to exploit an existing mark, reverse confusion cases are not entitled to a finding of willfulness under Lindy Pen Co. , and thus to infringer's profits. See, e.g. , Scat Enters., Inc. v. FCA US LLC , No. CV 14-7995-R,
b. AAA Fails to Point to Evidence Supporting a Finding of a Genuine Issue as to Willfulness
Pursuant to the Ninth Circuit's decisions in Stone Creek, Inc. and Lindy Pen Co. , in order to prove willfulness so as to be entitled to disgorgement of GM's profits, AAA must show that GM's infringement is "willfully calculated to exploit the advantage of an established mark" or that GM is "attempting to gain the value of an established name of another." Lindy Pen Co. ,
*1104The Court finds that GM is entitled to summary judgment on willfulness and disgorgement of profits. First, GM argues that it is entitled to summary judgment as a matter of law because GM acted with a reasonable, good faith belief that it owned prior rights in the MAVEN GIG mark. See San Miguel Pure Foods Co., Inc. v. Ramar Inter. Corp. ,
In its opposition, AAA fails to "set forth specific facts showing that there is a genuine issue for trial," Fed. R. Civ. P. 56(e), because AAA fails to set forth any facts showing that GM's infringement is "willfully calculated to exploit the advantage of an established mark" or that GM is "attempting to gain the value of an established name of another." Lindy Pen Co. ,
AAA next asserts that "[s]ince launching the MAVEN GIG services, GM has not made efforts to correct statements made by third-parties referring to the service as something other than MAVEN GIG, including third parties' reference to the MAVEN GIG services as simply 'Gig,' and [has] continued to use the MAVEN GIG Mark despite knowledge of this confusion."
Accordingly, having found that AAA fails to demonstrate the existence of a genuine issue of material fact as to willfulness, the Court GRANTS GM's motion for summary judgment on willfulness. Therefore, AAA cannot disgorge GM's profits. See, e.g. , Hydramedia Corp. ,
2. There is No Evidence that AAA Has Experienced Actual Damages
GM next argues that it is entitled to summary judgment on actual damages because there is no evidence that AAA has experienced any actual damages as a result of GM's use of the MAVEN GIG mark. Mot. at 20, 23-25. The Court agrees.
"Section 35 of the Lanham Act,
The Court finds that GM has met its burden of "identifying those portions of the pleadings, discovery and affidavits that demonstrate the absence of a genuine issue of material fact" on the question of actual damages. See Celotex Corp. , 477 U.S. at 323,
In its opposition, AAA fails to "set forth specific facts showing that there is a genuine issue for trial." Fed. R. Civ. P. 56(e). Indeed, AAA devotes only a single paragraph to the issue of actual damages. See Opp'n at 22-23. AAA does not challenge GM's assertions that: (1) AAA did not identify any actual damages in its discovery responses or documents; (2) AAA's witnesses were unable to identify any actual damages during their depositions; and (3) AAA's own damages expert was unable to identify any evidence of actual damages. Further, AAA does not address the case law cited by GM in support of its motion for summary judgment. Moreover, as discussed further below, neither AAA's case law nor evidence show a genuine issue for trial.
First, the case cited by AAA, Villagomes v. Lab. Corp. of Am. , does not support AAA's position. Villagomes v. Lab. Corp. of Am. , is a case from the United States District Court for the District of Nevada involving a claim for negligence.
Second, in a footnote, AAA cites to the only evidence that AAA offers to rebut GM's argument: the declaration of AAA's GIG Car Share President, Jason Haight, in support of AAA's opposition to GM's motion for summary judgment, and a few sentences from the deposition of AAA's witness, Michael Hetke. Opp'n at n.103. AAA cites to these two documents without any elaboration except for AAA's assertion that "[a]lthough AAA has not quantified the precise amount of actual damages suffered, AAA produced testimony in discovery and declaration bearing on harm sustained as a result of infringement."
Specifically, the declaration of AAA's GIG Car Share President, Jason Haight, provides anecdotal examples of Mr. Haight's "belief" that AAA has been damaged. See Haight Decl. ¶¶ 44-57. Mr. Haight's conclusory statements are not supported by detailed facts or evidentiary support. To the extent he mentions instances of confusion, Mr. Haight provides no details as to who specifically was confused, when the instance occurred, or how many times that type of confusion occurred. Moreover, as the Ninth Circuit has held "[a] conclusory, self-serving affidavit, lacking detailed facts and any supporting evidence, is insufficient to create a genuine issue of material fact." F.T.C. v. Publ'g Clearing House, Inc. ,
Similarly, the Michael Hetke deposition provides a few brief statements suggesting that Mr. Hetke is aware of anecdotal evidence of consumer confusion, but Mr. Hetke also does not provide any supporting factual details or supporting evidence. See Hetke Tr. at 189:1-15, 208:3-15. This evidence is conclusory. See F.T.C. ,
Accordingly, having found that AAA has presented no evidence creating a genuine issue of material fact on actual damages, the Court GRANTS GM's motion for summary judgment on actual damages. See, e.g. , Color Me Mine Enters. Inc. v. S. States Mktg. Inc. , No. CV 12-00860-RGK (JCx),
IV. CONCLUSION
For the foregoing reasons, the Court DENIES GM's motion for summary judgment on priority of trademark use. The Court GRANTS GM's motion for summary judgment on willfulness and actual damages.
IT IS SO ORDERED.
Footnotes
367 F. Supp. 3d 1072 (Am. Auto. Ass'n of N. Cal. v. Gen. Motors LLC) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.