Amarte USA Holdings, Inc. v. Kendo Holdings Inc.

Opinion

AMARTE USA HOLDINGS, INC., Case No. 22-cv-08958-CRB

Plaintiff,

ORDER GRANTING v. DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT AND KENDO HOLDINGS INC., et al., DENYING PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT Defendants.

Plaintiff Amarte USA Holdings, Inc. (“Plaintiff”) sells high-end skin care, including the EYECONIC eye cream, for which it holds a registered trademark. Defendants1 are the manufacturer and retailers of the MARC JACOBS BEAUTY EYE-CONIC (“MJB EYE- CONIC”) eye shadow. Alleging a likelihood of confusion between the two marks, Plaintiff sued Defendants for trademark infringement under federal and state law. Plaintiff and Defendants now both move for summary judgment. Because there is no likelihood of confusion between Defendants’ MJB EYE- CONIC mark and Plaintiff’s EYECONIC mark, the Court GRANTS Defendants’ motion and DENIES Plaintiff’s motion. A. Plaintiff’s EYECONIC Eye Cream Plaintiff Amarte USA Holdings, Inc. sells high-quality skin care products throughout the United States. See Kraffert Decl. (dkt. 95-53) ¶ 3. In 2012, Plaintiff sold

1 Kendo Holdings Inc. (“Kendo”), Marc Jacobs International, LLC (“Marc Jacobs”); its first EYECONIC eye cream. Id. In 2013, Plaintiff became the owner of a registered trademark for the standard character mark “EYECONIC” covering “eye cosmetics; eye creams.” Id. According to Plaintiff, it sent samples of its EYECONIC eye cream to Defendants on multiple occasions. Id. ¶ 9. First, on January 31, 2013, Plaintiff sent Sephora USA one free sample. Id. Then, on June 3, 2014, Plaintiff sent Neiman Marcus one free sample. Id. And on June 9, 2014, Plaintiff sent Sephora USA six free samples. Id. On June 24, 2014, Plaintiff met with Sephora Beauty Canada, Inc. (“Sephora Canada”) at Sephora USA’s headquarters in San Francisco to discuss the sales of Plaintiff’s products—including the EYECONIC eye cream—in Sephora Canada’s stores. 2 See White Decl., Ex. 25 (dkt. 95-27) at 61:11–20; Harmon Decl., Ex. 87 (dkt. 91-2) at 83:1–16. Lori Castagna and Marissa Caruso, two representatives from Sephora Canada, were present. See Third Harmon Decl., Ex. 116 (dkt. 118-4) at 180:20–181:7. The parties dispute whether a representative from Sephora USA was also at the meeting. Defendants say there was not, pointing to deposition testimony from Gabrielle Bridges, Plaintiff’s former Vice President of Sales, stating that she did not remember a Sephora USA buyer being there. See Def. Opp’n (dkt. 118) at 24; Second Harmon Decl., Ex. 112 (dkt. 102-3) at 68:4–9. Plaintiff disagrees, citing the fact that Ms. Bridges was shown an email that she wrote stating that a Sephora USA buyer was present and that she testified she would not have written the email unless it was true. See Pl. Reply (dkt. 120) at 8; Second Harmon Decl., Ex. 112 at 68:4–19. Despite conducting routine searches for third-party infringing uses of the EYECONIC mark on Google, Amazon, and eBay since 2016, Plaintiff did not become aware of Defendants’ MJB EYE-CONIC eye shadow until September 2021. See Kraffert Decl. ¶ 6–8. On October 5, 2021, Plaintiff sent a cease-and-desist letter to Marc Jacobs. See White Decl., Ex. 1 (dkt. 95-3). Marc Jacobs’ general counsel forwarded this email to Kendo’s general counsel, who responded to Plaintiff on November 21 stating that Kendo had discontinued its MJB EYE-CONIC eye shadow and would be finished selling its remaining inventory “within the next sixty (60) days.”3 See Loftis Decl., Ex. 24 (dkt. 91- 1) at 2–3. Kendo did not sell any MJB EYE-CONIC to retailers after December 31, 2021. See Loftis Decl. ¶ 58. However, Sephora USA continued sales of the product until February 5, 2022. See Abrams Decl. (dkt. 91-5) ¶ 14. Plaintiff continues to sell its EYECONIC eye cream to this day. See, e.g., Harmon Decl., Ex. 52 (dkt. 91-2) (sales from January through December 2023). B. Defendants’ MJB EYE-CONIC Eye Shadow In May 2012, Kendo and Marc Jacobs agreed to develop a line of beauty products to be sold under the MARC JACOBS trademark. See Loftis Decl., Ex. 1 ¶ 6. Kendo sold the cosmetics in this line through luxury retailers, including Sephora USA, Neiman Marcus, and Marc Jacobs. See Loftis Decl. ¶¶ 42–43; Loftis Decl., Ex. 17. Kendo launched the MJB product line in 2013, which included an eye shadow called “MARC JACOBS BEAUTY STYLE EYE-CON.” See Loftis Decl. ¶ 13. The external product packaging for the eye shadow depicted the phrase “EYE-CONIC COLORS.” See Loftis Decl., Ex. 3. Kendo sold the eye shadow from 2013 through 2017. Loftis Decl. ¶ 15. In 2017, Kendo relaunched the eye shadow under the name “EYE-CONIC.” Id. ¶¶ 16–18, 23. Kendo chose the name EYE-CONIC as a homage to the iconic status of the fashion designer Marc Jacobs and because it had previously used the phrase on the packaging for the MARC JACOBS BEAUTY STYLE EYE-CON eye shadow. Id. ¶ 17. Kendo’s copy team undertook significant market research prior to selecting the name for Marc Jacob’s new eye shadow. Id. ¶ 20. The team did not find Plaintiff, its EYECONIC eye cream, or its registered trademark. Id. ¶¶ 20, 64. Kendo used significant resources to generate consumer awareness around the MJB

3 Marc Jacobs had already stopped selling the MJB EYE-CONIC eye shadow. See Perrin EYE-CONIC eye shadow. Id. ¶ 24. The product’s launch included billboards, supermodel spokespersons, and heavy social media promotion through celebrities with millions of followers on social media platforms. See id. ¶¶ 25–41. Kendo sold units of MJB EYE-CONIC, including in 2017 alone. Id. ¶¶ 46, 51. However, the product was costly to manufacture because it used high quality materials and Kendo to Marc Jacobs for the use of the “MARC JACOBS” trademark. Id. ¶ 55. As a result, the product line, including MJB EYE-CONIC, was not profitable. Id. Kendo and Marc Jacobs terminated the licensing agreement and discontinued the product line on September 30, 2021. Id. ¶¶ 56, 57. As part of the termination of the licensing agreement, Kendo and Marc Jacobs Id. ¶ 58. Kendo did not sell any MJB EYE-CONIC to retailers after December 31, 2021. Id. Id. ¶ 59. Id. ¶ 60. Kendo says it has no intention to revive the Marc Jacobs Beauty line or to use the name “EYE-CONIC” on any future product. Id. ¶¶ 62–63. C. Procedural History On December 19, 2022, Plaintiff sued Defendants for federal trademark infringement under 15 U.S.C. § 1114, federal unfair competition under 15 U.S.C. § 1125(a), common law trademark infringement, common law passing off and unfair competition, and unfair competition under the California Business & Professions Code § 17200. See Compl. (dkt. 1). Plaintiff named the following defendants: Kendo, Marc Jacobs, Sephora USA, Walmart Inc., Neiman Marcus, and Nordstrom Inc. See id. Thereafter, Plaintiff voluntarily dismissed Nordstrom and settled with Walmart. See Notice (dkt. 33); Order of Dismissal (dkt. 65). On December 4, 2023, this Court permitted registration. See Order Gr. Leave to Amend (dkt. 96). Plaintiff and Defendants both move for summary judgment. See Pl. MSJ (dkt. 106); Def. MSJ (dkt. 91). In addition, Defendants move to strike both Plaintiff’s and Defendants’ jury demand. See Mot. to Strike (dkt. 113). And Plaintiff moves to exclude Defendants’ experts Brian M. Daniel, see Mot. to Exclude Daniel (dkt. 134), and John R. Hauser, see Mot. to Exclude Hauser (dkt. 135). The Court held a hearing on the summary judgment motions earlier this year. See Minute Entry (dkt. 153). Summary judgment is proper when there is “no genuine dispute as to any material fact and the [moving party] is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). Material facts are those that may affect the outcome of the case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute about a material fact is genuine if “the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Id. The moving party 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. Cattrett, 477 U.S. 317, 323 (1986). Where the moving party will have the burden of proof on an issue at trial, it must affirmatively demonstrate that no reasonable trier of fact could find other than for the moving party. Id. But on an issue for which the opposing party will have the burden of proof at trial, the moving party need only point out “that there is an absence of evidence to support the nonmoving party’s case.” Id. Once the moving party meets its initial burden, the nonmoving party must go beyond the pleadings to demonstrate the existence of a genuine dispute of material fact by “citing to particular parts of material in the record” or “showing that the materials cited do not establish the absence or presence of a genuine dispute.” Fed. R. Civ. P. 56(c). A triable dispute of fact exists only if there is sufficient evidence favoring the nonmoving nonmoving party fails to make this showing, “the moving party is entitled to judgment as a matter of law.” Celotex, 477 U.S. at 323. It is not a court’s task “to scour the record in search of a genuine issue of triable fact.” Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir.1996) (internal citation omitted). Rather, a court is entitled to rely on the nonmoving party to “identify with reasonable particularity the evidence that precludes summary judgment.” See id. When deciding a summary judgment motion, courts must view the evidence in the light most favorable to the nonmoving party and draw all justifiable inferences in its favor. Anderson, 477 U.S. at 255; see Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). Finally, when parties file cross-motions for summary judgment, the court must consider all the evidence submitted in support of the motions to evaluate whether a genuine dispute of material fact exists precluding summary judgment for either party. The Fair Hous. Council of Riverside Cnty., Inc. v. Riverside Two, 249 F.3d 1132, 1135 (9th Cir. 2001). First, the Court addresses whether either party is entitled to summary judgment on the merits. Because no reasonable trier of fact could find a likelihood of confusion between Defendants’ MJB EYE-CONIC mark and Plaintiff’s EYECONIC mark, and because Plaintiff must establish a likelihood of confusion to prevail on any of its claims, the Court GRANTS summary judgment for Defendants and DENIES summary judgment for Plaintiff. Second, the Court determines the effect of its summary judgment ruling on the parties’ remaining motions. A. Merits of Plaintiff’s Claims Defendants have demonstrated that there is no genuine dispute of material fact for any of Plaintiff’s five claims—federal trademark infringement, federal unfair competition, common law trademark infringement, common law passing off and unfair competition, and unfair competition under the California Business and Professions Code § 17200—such claims in turn. 1. Federal Trademark Infringement To prevail on a claim for federal trademark infringement, a plaintiff must demonstrate (a) ownership of a valid trademark, and (b) use by defendant in commerce of a mark (c) likely to cause confusion. See Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011). a. Ownership of the Mark On April 30, 2013, Plaintiff became the owner of the U.S. Trademark Registration Number 4328655 for the standard character mark “EYECONIC” under “[c]lass 3: eye cosmetics; eye creams.” See Kraffert Decl. ¶ 3; Registration (dkt. 1-1). Plaintiff’s registration and ownership of the mark constitutes prima facie evidence of the mark’s validity and Plaintiff’s exclusive right to use the mark on the goods specified in the registration. See 15 U.S.C. § 1115(b); Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966, 970 (9th Cir. 2007). Defendants argue that Plaintiff cannot show that it holds a valid, protectable trademark because Plaintiff has never used its mark in connection with “eye cosmetics” and therefore its registration should be cancelled. See Def. Opp’n at 6–7; see 15 U.S.C. § 1064(6) (registration may be cancelled if “the registered mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration”). Defendants have asserted a counterclaim for cancellation of Plaintiff’s trademark registration on this basis, see Am. Answer (dkt. 99) at 14–16, and argue that because the counterclaim is pending, there is a genuine issue of material fact regarding whether Plaintiff owns a valid mark. See Def. Opp’n at 7. But at the hearing, Defendants admitted that, if and until the Court rules in their favor on the counterclaim, Plaintiff has ownership of a valid trademark. Because Defendants do not move for summary judgment on the counterclaim, the Court declines to adjudicate it at this time. Therefore, the Court concludes that Plaintiff has ownership of a since 2013. b. Defendants’ Use in Commerce Defendants do not dispute that they used the MJB EYE-CONIC mark in commerce. See generally Def. MSJ; Def Opp’n. Nor could they reasonably dispute it. See, e.g., Loftis Decl. ¶¶ 46–51 (describing Kendo’s sales of MJB EYE-CONIC); Abrams Decl. ¶ 8 (describing Sephora USA’s sales of MJB EYE-CONIC); Perrin Decl. ¶ 19 (describing Marc Jacobs’ sales of MJB EYE-CONIC); Hall Decl. ¶¶ 16–18 (describing Neiman Marcus’s sales of MJB EYE-CONIC). c. Likelihood of Confusion A likelihood of confusion occurs when consumers “are likely to assume that a product or service is associated with a source other than its actual source because of similarities between the two sources’ marks or marketing techniques.” Int’l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 825 (9th Cir. 1993) (citation omitted). The Ninth Circuit has recognized two distinct theories of confusion: “forward confusion” and “reverse confusion.” Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 630 (9th Cir. 2005). Forward confusion is when “consumers believe that goods bearing the junior mark came from, or were sponsored by, the senior mark holder.” Id. By contrast, reverse confusion is when “consumers dealing with the senior mark holder believe that they are doing business with the junior one.” Id. Here, Plaintiff alleges only a theory of forward confusion.4 See Compl. (dkt. 1) ¶¶ 49, 59. Therefore, to avoid summary judgment for Defendants, Plaintiff must raise a material question of fact regarding whether a “reasonably prudent consumer in the marketplace” is likely to think that Defendants’ MJB EYE-CONIC eye shadow was made by, or affiliated with, Plaintiff and its EYECONIC eye cream. See Surfvivor Media, Inc., 406 F.3d at 630.

4 Plaintiff asserts that it is “reserving its right to establish reverse confusion at trial.” Pl. MSJ at 3 n.1. However, as Defendants correctly pointed out at the hearing, Plaintiff does not allege reverse confusion anywhere in its complaint. See generally Compl. Therefore, The Ninth Circuit has developed eight factors—the Sleekcraft factors—to guide the likelihood of confusion determination. GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000) (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979)). As applied here, those factors are: (i) strength of Plaintiff’s mark; (ii) relatedness of the goods; (iii) similarity of the marks; (iv) evidence of actual confusion; (v) the marketing channels used; (vi) the degree of care likely to be exercised by purchasers; (vii) Defendants’ intent in selecting its mark; and (viii) likelihood of expansion into other markets. See id. The Court addresses each factor in turn. i. Strength of Plaintiff’s Mark “The stronger a mark—meaning the more likely it is to be remembered and associated in the public mind with the mark’s owner—the greater the protection it is accorded by the trademark laws.” Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1058 (9th Cir. 1999). A mark’s strength is “evaluated in terms of its conceptual strength and commercial strength.” GoTo.com, Inc., 202 F.3d at 1207. “Marks can be conceptually classified along a spectrum of increasing inherent distinctiveness.” Id. “From weakest to strongest, marks are categorized as generic, descriptive, suggestive, and arbitrary or fanciful.” Id. “[S]uggestive, arbitrary, and fanciful marks are ‘deemed inherently distinctive and are automatically entitled to protection because they naturally serve to identify a particular source of a product.’” Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 760 (9th Cir. 2006). Although inherently distinctive, “suggestive marks are presumptively weak.” Brookfield, 174 F.3d at 1058. Plaintiff contends that its EYECONIC mark is “distinctive,” appearing to argue that it should be classified as suggestive. See Pl. MSJ at 10 (citing Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010)); Pl. Opp’n (dkt. 95) at 19. Defendant, too, asserts that the mark should be classified as “suggestive.” See Def. Reply (dkt. 102) at 11. Suggestive marks do not “describe the product’s features but suggest[] them.” See Surfvivor Media, Inc., 406 F.3d at 632 (citation omitted). An “exercise of The Court agrees that Plaintiff’s mark is suggestive: the exercise of “some imagination” is needed to associate “EYECONIC” with an eye cream. That means Plaintiff’s mark is inherently distinctive5 and entitled to some protection but is presumptively weak. Cf. Harman Int’l Indus., Inc. v. Jem Accessories, Inc., 668 F. Supp. 3d 1025, 1040 (C.D. Cal. 2023). Commercial strength is based on “actual marketplace recognition,” and thus “advertising expenditures can transform a suggestive mark into a strong mark.” Network Automation, Inc., 638 F.3d at 1149 (quoting Brookfield, 174 F.3d at 1058). Other factors suggesting commercial success—like length of exclusive use and public recognition—can similarly strengthen a suggestive mark. See M2 Software, Inc. v. Madacy Ent., 421 F.3d 1073, 1081 (9th Cir. 2005). Plaintiff argues that its sales figures, worth of product, which Plaintiff says accounts for total units sold, and that it has been selling EYECONIC eye creams for more than eleven years illustrate its commercial success. See Pl. MSJ at 11; Harmon Decl., Exs. 41–52 (dkt. 91-2). Defendants dispute that those facts show commercial strength, citing Brady v. Grendene USA, Inc., 2014 WL 5783771, at *7 (S.D. Cal. Nov. 6, 2014). See Def. MSJ at 15–16. There, the court found that sales of “only a few thousand swimsuits” in the “half decade” prior to the lawsuit evidenced poor commercial strength. Brady, 2014 WL 5783771, at *7. Plaintiff attempts to distinguish Brady because it involved “swimsuits” rather than an “expensive product” like the EYECONIC eye cream.” Pl. Reply at 10. This argument is not persuasive. First, Plaintiff is wrong on the facts. The swimwear in Brady retailed for $100 to $150, see 2014 WL 5783771, at *8, which is more than the $80 to $90 sale price for the EYECONIC eye cream, see Khalil Decl., Ex. 3 (dkt. 106-5); White Decl., Ex. 16 (“Wind Report”) (dkt. 95- 5 The Patent and Trademark Office issued Plaintiff’s trademark registration without requiring proof of secondary meaning, see Khalil Decl. (dkt. 106-2) ¶ 2, so Plaintiff is entitled to a presumption that the EYECONIC mark is inherently distinctive. See Quiksilver, Inc., 466 F.3d at 760. But because the mark is suggestive, it is inherently 1 } 18). Second, even taking the price of Plaintiff's eye cream into account, oly ii 2 and ii units of sales in over a decade is poor commercial strength. Akin to the sales in 3 Brady, Plaintiff sold oly iii units in the five years before this lawsuit. 4 See Harmon Decl., Exs. 47-50. And making its case for commercial success even weaker 5 } than in Brady, Plaintiff points to no advertising expenditures that could strengthen the 6 mark. See Pl. MSJ at 11. 7 Plaintiff does cite its “significant unsolicited media coverage in well-known media 8 } outlets, including The Oprah Magazine, Vogue, the Wall Street Journal, Vanity Fair, 9 People, and Fortune” to support its commercial strength. See Pl. MSJ at 11; see White 10 } Decl., Ex. 43 (dkts. 95-46, 47). But that this is the extent of the media coverage for the 11 EYECONIC eye cream further confirms its poor commercial success. Several of the cited = 12 |} articles are about other products that Plaintiff sells, and the remaining ones feature the € 13 || EYECONIC eye cream along with many other products, such that any effect on actual 14 marketplace recognition is limited. Finally, Plaintiff points to its enforcement efforts, see 15 Pl. Opp’n at 3, but fails to explain the extent of these efforts or how they have established a 16 || “actual marketplace recognition.” See Brookfield, 174 F.3d at 1058. 17 In sum, both the conceptual and commercial strength of Plaintiff's mark are weak 18 and in turn, so is the overall strength. This factor favors Defendants. 19 ii. Relatedness of the Goods 20 “Related goods are generally more likely than unrelated goods to confuse the public 21 as to the producers of the goods.” Brookfield, 174 F.3d at 1055. Goods are related when 22 they are “complementary, sold to the same class of purchasers, or similar in use and 23 function.” Ironhawk Techs., Inc. v. Dropbox, Inc., 2 F.4th 1150, 1163 (9th Cir. 2021). 24 Plaintiff argues that the EYECONIC eye cream and the MJB EYE-CONIC eye 25 shadow are related because they are complementary, sold to the same high-end customers, 26 and serve the same function to improve the area around the eyes.° See Pl. MSJ at 6. 27 3g || ° Plaintiff goes So far as to assert that the products are “identical” since “both are eye cosmetics.” See Pl. MSJ at 6. But obviously an anti-aging eye cream and an eye shadow

Plaintiff also claims the Ninth Circuit has found more disparate products and services to be related. See Pl. MSJ at 7 (citing cases). Defendants disagree on all bases. They argue that an anti-aging eye cream is neither complementary, nor similar in function, to an eye shadow palette. Def. Opp’n at 14. Whereas Plaintiff’s anti-aging cream purports to hydrate and “nourish[]” skin while “promot[ing] elasticity without irritation,” see Harmon Decl., Ex. 38 (dkt. 91-2), Defendants’ eye shadow offered dramatic and colorful shades of eye makeup. Id. Defendants also contend that the clientele for the products is different: Defendants’ customers sought bold-colored makeup, and Plaintiff’s clients are concerned with aging. See id. The Court agrees with Defendants. These two products have different uses— getting rid of wrinkles versus enhancing facial features with bright colors. They target different consumers: Plaintiff’s eye cream targets consumers interested in reducing the effects of aging whereas Defendants’ eye shadow targeted individuals of all ages desiring dramatic eye makeup. And Plaintiff has put forth no evidence for why the two products are complementary—that is, why consumers would necessarily use the two products together. Just because the products “fall within the same general field”—products to use around your eyes—“does not mean that the two products or services are sufficiently similar to create a likelihood of confusion.” Worx4u2, Inc. v. Earthwhile Endeavors, Inc., 2022 WL 1601399, at *9 (C.D. Cal. Apr. 5, 2022) (citation omitted); see Mach v. Head v. Dewey Global Holdings, Inc., 61 U.S.P.Q.2d 1313, 1318 (N.D. Cal. 2001) (“The fact that both products could broadly be described as relating to music is not sufficient to find that the products have a similar use or function.”). The cases that Plaintiff cites do not counsel otherwise.7 See Pl. MSJ at 6. palette are not “identical.”

7 None of the cases Plaintiff cites are controlling authority, and they are all distinguishable on the facts of this case. See Glow Indus., Inc. v. Lopez, 252 F. Supp. 2d 962, 993 (C.D. 1 The Court concludes that Plaintiff's EYECONIC eye cream and Defendants’ MJB 2 EYE-CONIC eye shadow are not related. This factor, too, favors Defendants. 3 iii. | Similarity of the Marks 4 The third factor considers the similarity of the marks. Similarity of the marks “has 5 always been considered a critical question in the likelihood-of-confusion analysis.” See 6 GoTo.com, 202 F.3d at 12-5 (citing Brookfield, 174 F.3d at 1054). No matter how similar 7 the goods and marketing channels, if the marks are not very similar, there is little risk of 8 } confusion. See Playmakers, 297 F. Supp. 2d at 1282 (“The most important factor in any 9 } likelihood of confusion analysis is the similarity of the marks. Without similarity, there 10 can be no confusion.”). Courts “should not myopically focus on only the alleged 11 ] counterfeit marks to the exclusion of the entire product or even common sense.” Arcona, = 12 || Inc. v. Farmacy Beauty, LLC., 976 F.3d 1074, 1080 (9th Cir. 2020). Marks should be

€ 13 || “considered in their entirety and as they appear in the marketplace.” Brookfield, 174 F.3d

LY 14 |] at 1055 (intemal quotation marks omitted). CS 15 The parties’ marks, as they appear in the marketplace, are pictured below. w 16 □□ ~_~_~_rr |

18 mi \ MARC JACOBS 19 ® : 1 igen == 7 X00 7 EYESHADOWS TOTAL NET WT 7 XO.03 05 j a. 20 5 ‘ 21 7 ) MARC JACOBS 22 a ee 23 24 75 } Tillett. Inc., 940 F.Supp.2d 1178 (C.D. Cal. 2013) (finding relatedness where some of the parties’ products were identical); Elizabeth Kent Cosmetics, Inc. v. G. B. Kent & Sons, 26 Ld., 309 F.2d 775, 776 (C.C.P.A. 1962) (no analysis of relatedness); Stendhal v. R. H. Cosmetics Corp., 211 U.S.P.Q. 1016 (TTAB 1981) (same); In re Prestige Cosmetics, No. 27 } 76691045, 2009 WL 1741902 (TTAB 2009) (analyzing possible relatesiness based on trademark registrations, without the context of actual products sold); In re Jamie OBanion, 28 No. 77843205, 2011 WL 1886399 (TTAB 2011) (same).

See Wind Report at 11–12. Considering the marks in their entirety, and despite both having the name EYECONIC, the Court concludes that they are not similar. First, and most importantly, both products have a prominent housemark. Plaintiff’s eye cream has an “amarte” housemark in big, bold letters, while Defendants’ product has “MARC JACOBS” in big, capital letters on both the packaging and the eye shadow palette. Second, the shape and packaging of the products are different: Plaintiff’s eye cream comes in a narrow white and gold tube, whereas Defendants’ eye shadow is sold in a rectangular box with a flat white palette inside. Third, unlike Plaintiff’s mark, Defendants’ mark separates “EYE” and “CONIC” with a hyphen. Fourth, Plaintiff’s corporate representative actually admitted that the packaging for Defendants’ MJB EYE-CONIC eye shadow “looks nothing like” the packaging for Plaintiff’s EYECONIC eye cream. See Harmon Decl., Ex. 27 at 166:3–15. The Court does find that the packaging for the products is a similar color, but Defendants explained at the hearing that it also sold the MJB EYE-CONIC eye shadow with different colored packaging. See, e.g., Harmon Decl., Ex. 4 (photos of the eye shadow packaging in other colors). Because multiple colors appear in the marketplace, that one of the colors is similar does not change the Court’s conclusion that the marks, as considered in their entirety, are not similar. The Ninth Circuit recently compared the marks for two skincare products—both called EYE DEW—and concluded that the marks were not similar and therefore there was no likelihood of confusion. See Arcona, 976 F.3d at 1076–80. Similar to Plaintiff’s EYECONIC product, Arcona’s EYE DEW product is an eye cream packaged in a “tall, cylindrical, silver bottle.” Id. at 1076. The product featured the phrase “EYE DEW” and the Arcona housemark on the bottle and the packaging. Id. The defendant, Farmacy Beauty, also sold an eye cream called “EYE DEW.” Id. It came in a “short, wide, white jar, along with a squarish outer box.” Id. The product featured the phrase “EYE DEW” and its housemark on both the jar and the packaging. Id. the Ninth Circuit held that “no reasonable consumer would be confused by these two products because the packaging, size, color, shape, and all other attributes—other than the term “EYE DEW”—are not remotely similar.” Id. at 1080–1081. The court also noted that it would be “implausible that a consumer would be deceived because the products had their respective housemarks . . . prominently on the packaging.” Id. That the Ninth Circuit found the marks in Arcona not to be similar supports the Court’s same conclusion about the marks in this case. Like in Arcona, both Plaintiff and Defendants have their housemark prominently on their product’s packaging, which negates consumer confusion. The only real similarity between Plaintiff’s eye cream and Defendants’ eye shadow is the mark itself, which is even less similar than the marks in Arcona. Whereas the EYE DEW marks in Arcona were identical, the marks here differ slightly given that Defendants’ is separated with a hyphen. See Ex. 92. Plaintiff attempts to reduce the force of Arcona by pointing to a “preeminent commentator[’s]” remark that Arcona is an extreme holding. See Pl. MSJ at 6. (citing 4 McCarthy on Trademarks and Unfair Competition § 23:52 (5th ed.)). Arcona may be an “extreme holding,” but it is recent, binding Ninth Circuit precedent that this Court must consider. Plaintiff also cites to Pom Wonderful LLC v. Hubbard, 775 F.3d 1118 (9th Cir. 2014), but that case does not support its argument that these marks are similar, either. Pom Wonderful involved two pomegranate beverages with marks that the court found similar based, in part, on their “many visual similarities.” Id. at 1130. Plaintiff does not show that visual similarities exist between the marks at issue here. The Court concludes that the parties’ products have dissimilar marks because the packaging, size, and shape are entirely different (which Plaintiff’s corporate representative admitted), and because the house marks on both products are prominent. 976 F.3d at 1080–81. This factor weighs strongly in the Defendants’ favor. See Brookfield, 174 F.3d at 1054 (“Where [] two marks are entirely dissimilar, there is no likelihood of confusion.”); Arcona, 976 F.3d at 1081 (affirming the district court’s grant of summary judgment that iv. Evidence of Actual Confusion “Evidence that use of the two marks has already led to confusion is persuasive proof that future confusion is likely.” Sleekcraft, 599 F.2d at 352. On the flip side, the Ninth Circuit has stated that it “cannot think of more persuasive evidence that there is no likelihood of confusion” between two marks than that “they have been simultaneously used for [several] years without causing any consumers to be confused as to who makes what.” See Brookfield, 174 F.3d at 1050. Plaintiff provides no evidence that customers were confused about the source of Defendants’ eye shadow when it was being sold from 2017 to 2022. In fact, when Plaintiff’s corporate representative was asked if he was “aware of any consumers who were actually confused between Marc Jacobs Beauty Eye-Conic eye shadow product and the Plaintiff Eyeconic product,” he responded “no.” See Harmon Decl., Ex. 27 at 58:16– 20. Plaintiff does, however, submit evidence of confusion from 2023, after Defendants stopped selling the MJB EYE-CONIC eye shadow, in the form of an expert survey. See Pl. MSJ at 12. Plaintiff’s expert found between 24% and 38% “net confusion.” See Wind Report at 6. The question, then, is whether Plaintiff’s survey evidence of actual confusion after Defendants stopped selling their product is sufficient evidence of actual confusion to preclude summary judgment for Defendants. See Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 903 (9th Cir. 2002); Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1263–64 (9th Cir. 2001) (noting that the presence of survey evidence will not always preclude summary judgment). Defendants argue that this survey evidence is unreliable because the question of likelihood of confusion “turns on marketplace realities that can change dramatically from year to year. See Def. Opp’n. at 18 (quoting Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., 140 S. Ct. 1589, 1596 (2020)). But Defendants point to no changes in “extrinsic factors” or “marketplace realities” between February 2022 (when the last MJB Given the close proximity in time, it is likely that the survey evidence accurately sheds light on marketplace realities in at least early 2022, when the eye shadow was still being sold. Even considering the survey evidence, however, this factor is still mixed. While the range of “net confusion” found by Plaintiff’s expert is not insubstantial, neither does it confirm actual confusion. Plaintiff’s corporate representative admitted that it is not aware of any customers who were confused between the EYECONIC eye cream and the MJB EYE-CONIC eye shadow during the five years that the products were both sold. See Harmon Decl., Ex. 27 at 58:16–20. And courts have put significant weight on the lack of evidence of actual confusion in the marketplace where the products have been simultaneously on the market for a substantial period of time. See, e.g., Brookfield, 174 F.3d at 1050 (“We cannot think of more persuasive evidence that there is no likelihood of confusion between these two marks than the fact that they have been simultaneously used for five years without causing any consumers to be confused as to who makes what.”)8; Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343, 1363 (11th Cir. 2019) (“A reasonable person could conclude that the lack of evidence is at least probative of the conclusion that there was no likelihood of confusion—hundreds of thousands of cosmetics consumers purchased the allegedly infringing kit, several times more likely saw it on store shelves or online, and still there is no evidence that anyone, anywhere, was ever confused.”); CareFirst of Maryland, Inc. v. First Care, P.C., 434 F.3d 263, 269 (4th Cir. 2006) (nine years of coexistence with no evidence of actual confusion “creates a strong inference that there is no likelihood of confusion”); see also 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:18 (5th ed. 2024) (“[W]hen the parties have made significant use of their respective designations in the same geographic market for a substantial period of time, the absence of any evidence of actual confusion 8 The court in Brookfield focused not just on the lack of actual evidence of confusion, but on the party’s concession that the marks were not “confusingly similar.” 174 F.3d at 1050. may in some cases justify an inference that the actor’s use does not create a likelihood of confusion.”). In the light most favorable to Plaintiff, the survey evidence demonstrates some evidence of actual confusion, but not enough to ignore the lack of any evidence of actual confusion when the two products were simultaneously sold. Accordingly, this factor is neutral and does not favor either party.9 v. Similarity in the Marketing Channels Used “Convergent marketing channels increase the likelihood of confusion.” Sleekcraft, 599 F.2d at 353. These products were not sold in the same channels. Defendant Kendo exclusively sold MJB EYE-CONIC eye shadow through luxury retailer partners, including Sephora, Neiman Marcus, Marc Jacobs’ boutiques, and through the Marc Jacobs Beauty website. See Loftis Decl. ¶ 43. None of those retailers have sold Plaintiff’s EYECONIC eye cream; rather, Plaintiff sells its EYECONIC eye cream out of its principal’s dermatology practice, various independent salons and spas, specialist online dermatologists’ marketplaces, and on Amazon. See Harmon Decl., Ex. 27 at 79:8–80:16.10 Plaintiff argues that both products are sold to “high-end customers, so the consumer bases are identical, and this alone establishes that the relevant marketing channels are identical.” Id. But the only authority Plaintiff cites for that proposition actually supports a finding of nonconvergent marketing channels here. In Moroccanoil, the court noted that the products were sold in different marketing channels—where, like here, one party sold its product in high-end retail stores and the other sold its product through non-luxury stores. Moroccanoil, Inc. v. Zotos International, Inc., 230 F. Supp. 3d 1161, 1775–76 (9th Cir. 2017). The court then explained that the “similarities between the products

9 At most, this factor slightly favors Plaintiff but that still would not change the Court’s overall finding as to likelihood of confusion.

10 Plaintiff initially argued that Defendants also sold MJB EYE-CONIC on Amazon by referencing an unknown third-party’s advertisement on the site. See Pl. MSJ at 12. suggest[ed] an overlapping general class of consumers”—a fact that does not affect the marketing channels inquiry here, given that these products are not related. Id. (emphasis added). Because the products are sold through nonoverlapping marketing channels, this factor favors Defendants. vi. The Degree of Care Likely to be Exercised by Purchasers “In assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution.” Sleekcraft, 599 F.2d at 353. “When the buyer has expertise in the field, a higher standard is proper though it will not preclude a finding that confusion is likely.” Id. “Similarly, when the goods are expensive, the buyer can be expected to exercise greater care in his purchases; again, though, confusion may still be likely.” Id. Defendants argue that Plaintiff admitted that “few purchasing decisions are so carefully made” as are purchases of its products and that its products are “very expensive.” Def. MSJ at 28 (citing Harmon Decl., Ex. 27 at 50:11–13, 67:17–68:1). Plaintiff seemingly concedes that this factor favors Defendants by arguing that even if their customers exercise a “high level of care,” this factor is not “sufficient to tip the scales in the other direction, when the other factors strongly show likelihood of confusion.” Pl. MSJ at 13. Accordingly, this factor favors Defendants given Plaintiff’s repeated assertions that its clientele is high-end, and its product is “very expensive.” vii. Defendants’ Intent in Selecting its Mark “When the alleged infringer knowingly adopts a mark similar to another’s, reviewing courts presume that the defendant can accomplish his purpose: that is, that the public will be deceived.” Sleekcraft, 599 F.2d at 354. Plaintiff points to several reasons why the Court should presume Defendants’ wrongful intent in using its mark. See Pl. MSJ at 8. First, Plaintiff sent Defendant Sephora USA a single sample of its EYECONIC eye cream on January 31, 2013 and six more samples on June 9, 2014. See Kraffert Decl. ¶ 9; Ex. 45. Defendants argue that there is no evidence that it even received the samples, let alone that it made its way out of the mailroom into the hands of any decisionmaker. See Def. Opp’n at 22. The Court agrees with Defendants that Plaintiff failed to provide sufficient evidence to impute bad faith based on these samples. Second, Plaintiff argues that Defendants had constructive notice of Plaintiff’s April 30, 2013 EYECONIC registration. See Pl. MSJ at 8. This is Plaintiff’s most persuasive evidence of bad faith. Defendants contend that Kendo’s copy team and its outside counsel conducted searches that revealed no registrations for EYECONIC or EYE-CONIC. See White Decl. ¶ 21. However, the Court finds it dubious that Kendo would be unable to find the only Class 3 registration for EYECONIC in the United States. Third, Plaintiff claims that the meeting it had with Sephora Canada in Sephora’s San Francisco headquarters was sufficient to provide Defendants with constructive knowledge. See Pl. MSJ at 8–9. However, there is a clear dispute regarding whether a Sephora USA buyer was even present. See Second Harmon Decl., Ex. 112 (dkt. 102-3) at 68:4–19 (deposition of Ms. Bridges claiming that she has no memory of a Sephora USA buyer being present despite writing an email that states a Sephora USA buyer was present). This evidence is too speculative to impute constructive knowledge on Defendants. Fourth, Plaintiff points to Kendo’s failure to disclose that Sephora USA continued to sell MJB EYECONIC after Plaintiff’s cease and desist letter was sent on October 12, 2021. See White Decl. ¶ 3; Loftis Decl. ¶ 64. However, Kendo informed Plaintiff on November 21, 2021 that it would sell its inventory “within the next sixty (60) days.” Loftis Decl. ¶ 66; Ex. 5. Given that Kendo sold its last MJB EYE-CONIC eye shadow on December 31, 2021, Kendo fulfilled its promise. See Loftis Decl. ¶ 58.11 The most compelling evidence for Defendants’ wrongful intent is their failure to

11 Although Sephora’s last sale was on February 5, 2022, Kendo did not attest to Sephora’s locate Plaintiff’s registered mark, but Defendants cite binding authority wherein the court found no bad faith, despite the plaintiff’s mark being registered. See, e.g., M2 Software, 421 F.3d at 1085 (affirming grant of summary judgment in favor of defendant despite evidence that defendant knew of plaintiff’s registered trademark prior to alleged infringement). In sum, Plaintiff alleges several instances of bad faith by Defendants, but none that would justify a trier of fact in concluding that Defendants had any intention of capitalizing on Plaintiff’s trademark. Therefore, this factor is neutral. viii. Likelihood of Expansion into Other Markets “Inasmuch as a trademark owner is afforded greater protection against competing goods, a ‘strong possibility’ that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing.” Sleekcraft, 599 F.2d at 354. “When goods are closely related, any expansion is likely to result in direct competition.” Id. Plaintiff argues that there is evidence that Marc Jacobs Beauty is being relaunched in partnership with Coty, a beauty product company. See Pl. MSJ at 13. Because Coty already co-brands Marc Jacobs’ perfume products and sells them on Amazon, Plaintiff argues that it is likely that Coty will sell Marc Jacobs Beauty line products on Amazon in the future. See id. Defendants respond that they have no intention to use the name EYE-CONIC on any future product and that Plaintiff’s arguments are speculative. See Def. Opp’n at 26. The Court agrees. Even in the light most favorable to Plaintiff, this evidence, by itself, is not enough to establish a “strong possibility” that Defendants plan to expand their business. See Sleekcraft, 599 F.2d at 354. Accordingly, this factor favors Defendants. ix. Overall Showing on Likelihood of Confusion All of the Sleekcraft factors either favor Defendants or are neutral. The Court concludes that, when viewing the evidence in the light most favorable to Plaintiff, no reasonable juror could find a likelihood of confusion between Defendants’ use of its MJB Because no reasonable juror could find a likelihood of confusion, Defendants are entitled to summary judgment on Plaintiff’s claim for federal trademark infringement. 2. Plaintiff’s Other Claims The tests for infringement of a federally registered mark under § 32(1), 15 U.S.C. § 1114(1), infringement of a common law trademark, unfair competition under § 43(a), 15 U.S.C. § 1125(a), and common law unfair competition involving trademarks are the same: whether confusion is likely. See Silberstein v. Fox Entm’t Grp., Inc.,732 F. App’x 517, 519 (9th Cir. 2018) (citation omitted). Balancing the Sleekcraft factors, as previously described, Defendants have demonstrated that no reasonable juror could find that they used a confusingly similar mark to Plaintiff’s EYECONIC mark. Accordingly, the Court also grants summary judgment for Defendants on Plaintiff’s common law trademark infringement claim, federal unfair competition claim, common law passing off and unfair competition claim. 3. California Unfair Competition Under the California Business and Professions Code § 17200, unfair competition is “any unlawful, unfair, or fraudulent business act or practice.” Cal. Bus. & Profs. Code § 17200. To be considered unlawful, a business practice must be “forbidden by law, be it civil or criminal, federal, state, or municipal, statutory, regulatory, or court-made.” Shroyer v. New Cingular Wireless Servs., 606 F.3d 658, 666 (9th Cir. 2010) (internal quotation marks omitted). Because Defendants have established that no reasonable juror could find that their conduct violates federal trademark infringement law, federal unfair competition law, common law trademark infringement law, or common law unfair competition law, Defendants’ conduct is also not unfair competition under the California statute.12

12 Additionally, because Defendants are entitled to summary judgment on all of Plaintiff’s B. Remaining Motions There are three other motions pending: Plaintiff’s motion to exclude Defendants’ expert Brian M. Daniel (dkt. 134), Plaintiff’s motion to exclude Defendants’ expert John R. Hauser (dkt. 135), and Defendants’ motion to strike Plaintiff’s and Defendants’ jury demands (dkt. 113). For the reasons below, the Court denies Plaintiff’s motions as moot, denies Defendants’ motion to strike Plaintiff’s jury demand as moot, and grants Defendants’ motion to strike its own jury demand. Because the Court grants summary judgment for Defendants, both of Plaintiff’s motions are moot. In one motion, Plaintiff moves to exclude Defendants’ rebuttal expert who calculates Defendants’ profits derived from the allegedly infringing sales. See Mot. to Exclude Daniel (arguing that expert who calculated Defendants’ profits derived from trademark infringement should be excluded). There is no need to determine whether Defendants’ expert on remedies should be excluded given that the Court determined there was no trademark infringement in the first place. Plaintiff also moves to exclude Defendants’ rebuttal expert who critiques Plaintiff’s expert, Dr. Jerry Wind, who conducted a likelihood of confusion survey. See Mot. to Exclude Hauser. However, the Court did not rely on the Hauser report in ruling on the parties’ summary judgment motions, and even if it had, Plaintiff waived any objection to it being considered as part of that record. See N.D. Cal. L.R. 7-3(a), 7-3(c), 7-3(d)(1). And now that the Court has granted summary judgment for Defendants on all of Plaintiff’s trademark infringement claims, the motion is moot. Finally, Defendant’s motion to strike Plaintiff’s jury demand is similarly moot, given that Plaintiff’s claims will not proceed to trial. See Mot. to Strike at 1–12. However, Defendants also move to strike Kendo’s own jury demand for its cancellation counterclaim, arguing that the claim is equitable. See Mot. at 12–13; see also Am. Answer at 14–16 (bringing cancellation counterclaim pursuant to 15 U.S.C. §§ 1064, 1119). Plaintiff does not oppose Defendants’ motion to strike Kendo’s jury demand. See Mot. to 1 The Court agrees that Kendo’s trademark cancellation claim is equitable in nature. 2 See Empresa Cubano Del Tabaco v. Culbro Corp., 123 F. Supp. 2d 203, 209 (S.D.N_Y. 3 } 2000) (A claim for cancellation of a trademark registration pursuant to Section 37 of the 4 Lanham Act, 15 U.S.C. § 1119, is equitable in nature and does not give rise to a jury trial 5 } right.”); Arctic Cat, Inc. v. Sabertooth Motor Grp., LLC, No. CV 13-146 (IRT/JSM), 2016 6 } WL 4212253, at *6 (D. Minn. Aug. 9, 2016) (striking jury demand because “the bulk of 7 district courts to consider the argument have found a cancellation claim to be equitable’’). 8 Kendo is therefore not entitled to a jury trial, and the Court GRANTS the motion to strike 9 its jury demand. See Fed. R. Civ. Proc. 39(a)(2); Fifty-Six Hope Rd. Music, Ltd. v. 10 A.V.E.L.A., Inc., 778 F.3d 1059, 1074—75 (9th Cir. 2015). 11 Iv. CONCLUSION = 12 For the foregoing reasons, the Court GRANTS Defendants’ motion for summary € 13 || judgment and DENIES Plaintiff's motion for summary judgment. The Court also DENIES 14 Defendants’ motion to strike Plaintiffs jury demand and Plaintiffs’ motions to exclude 15 || Defendants’ experts as MOOT. Finally, the Court GRANTS Defendants’ motion to strike a 16 || Kendo’s jury demand on its cancellation counterclaim. 17 S 18 IT IS SO ORDERED. 19 Dated: September 4, 2024 □□□ 20 United States District Tudge 21 22 23 24 25 26 27 28