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4 UNITED STATES DISTRICT COURT 5 WESTERN DISTRICT OF WASHINGTON AT SEATTLE 6 7 CAVE MAN KITCHENS INC, 8 Plaintiff, C18-1274 TSZ 9 v. ORDER 10 CAVEMAN FOODS LLC, Defendant. 11 12 THIS MATTER comes before the Court on Plaintiff Cave Man Kitchen Inc.’s 13 Show-Cause Response (“Response”), docket no. 129. 14 On November 23, 2020, the Court entered an order, docket no. 128, granting in 15 part Defendant Caveman Foods LLC’s motion for summary judgment, docket no. 103, 16 dismissing with prejudice all but three of Plaintiff’s causes of action: Count II (False 17 Designation of Origin), Count IV (State Common Law Unfair Competition), and 18 Count IX (Declaratory Judgment). The Court deferred its ruling with respect to those 19 causes of action and ordered Plaintiff to show cause as to why they should not be 20 dismissed with prejudice—as the allegations supporting the causes of action appear to 21 rely solely on an invalid trademark assignment executed by a now defunct corporation, 22 Cave Man Kitchens Inc. (“Dissolved Cave Man Kitchens”). Order (docket no. 128 at 1 Rather than address whether its evidence raises genuine disputes of fact material to the remaining causes of action, Plaintiff used its Response to revisit the issue of whether 2 Plaintiff’s ownership rights in the mark CAVE MAN KITCHENS date back to its first 3 use of the mark, sometime after its incorporation in June 2011, or whether its rights date 4 back to Dissolved Cave Man Kitchens’ first use of the mark in 1971. For the following 5 reasons, the Court rejects Plaintiff’s arguments with respect to the ownership issue and 6 grants Defendant’s motion for summary judgment on the remaining causes of action.1 7 Discussion 8 1. Plaintiff’s Ownership Rights in the Mark 9 The Court’s order, docket no. 128, concluded that Plaintiff was never validly 10 assigned, and therefore did not own, the registered mark CAVE MAN KITCHENS. 11 Order (docket no. 128 at 7–11). The Court further concluded that Plaintiff’s evidence 12 failed to raise genuine issues of fact on whether it was orally assigned any common law 13 rights in that mark when it was incorporated in June 2011. Id. at 11–14. 14 Plaintiff challenges those conclusions on the ground that, regardless of the 15 assignment’s validity, its president, Roseanna Donley, was a “co-owner of the mark” as a 16 former director and 20 percent shareholder of Dissolved Cave Man Kitchens. Response 17 (docket no. 129 at 3). As the Court previously explained, however, even controlling 18 shareholders and principal officers of a corporation do not have individual ownership 19 rights in a mark that only the corporation used. Order (docket no. 128 at 10–11 n.6) 20 21 22 1 The Court initially deferred ruling on these causes of action because they were not clearly briefed in the parties’ summary judgment briefing. Still, the parties’ briefing sufficiently raises the issues relevant to 1 (citing Monorail Car Wash, Inc. v. McCoy, 178 U.S.P.Q. 434, at *3 (T.T.A.B. 1973)); see also 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 16:36 2 (5th ed. 2020 update). Plaintiff cites no authority to the contrary.2 The Court 3 acknowledges that, during the relevant time period, Roseanna appeared to sincerely 4 believe that she co-owned the mark with Dissolved Cave Man Kitchens, explaining why 5 she failed to timely acquire a trademark assignment from the dissolved corporation’s 6 directors or to otherwise “ask[] permission” to use the mark. Roseanna Dep., Ex. A to 7 Williams Decl. (docket no. 113-1 at 85, 96). That mistaken belief, however, cannot 8 create ownership rights when none existed; nor can it excuse Plaintiff’s failure to secure 9 an assignment. 10 Plaintiff also argues that it can “tack” its current mark onto Dissolved Cave Man 11 Kitchen’s “2006 mark, if not the 1971 one.” Response (docket no. 129 at 10). The Ninth 12 Circuit has repeatedly emphasized “the narrowness of the tacking doctrine,” Hana Fin., 13 Inc. v. Hana Bank, 735 F.3d 1158, 1165 (9th Cir. 2013), and its body of decisions 14 indicate that the doctrine applies when the same trademark user exploits different but 15 “essentially the same” marks, see id. at 164–66. Because Plaintiff fails to demonstrate 16 that the doctrine applies when different trademark users exploit the same mark, the Court 17 concludes that this argument likewise fails. 18 Plaintiff’s remaining arguments concern abandonment, an issue on which the 19 Court’s previous summary judgment order did not rely. The Court reaffirms its 20 21 22 1 conclusion that there are no triable issues of fact on whether Plaintiff’s rights in the mark predate its corporate existence, beginning in June 2011. 2 2. False Designation of Origin (Count II) 3 Plaintiff asserts that Defendant’s “manufacture, distribution and/or sale of it[s] 4 food products and services under its various forms of the name CAVEMAN falsely 5 designates the origin of Defendant[’s] . . . food products and services in contravention of” 6 the Lanham Act, 15 U.S.C. § 1125(a). Complaint at ¶ 34.3 7 Summary judgment is appropriate on Plaintiff’s remaining Lanham Act claim 8 because the evidence is insufficient to raise genuine issues of fact material to Plaintiff’s 9 “prior ‘use’ of the mark in interstate commerce.” New West Corp. v. NYM Co. of Cal., 10 Inc., 595 F.2d 1194, 1200–01 (9th Cir. 1979) (affirming grant of summary judgment in 11 favor of defendant on a false designation of origin claim, holding that “the district court 12 properly found that the right to use the trade-mark . . . was with [defendant] due to its 13 prior ‘use’”). The Court has already determined that Plaintiff does not own the registered 14 mark CAVE MAN KITCHENS and that it did not acquire any common law rights in the 15 mark until sometime after June 2011. Further, Plaintiff does not dispute that Defendant 16 first used the registered mark CAVEMAN FOODS in interstate commerce in May 17 2011—the month before Plaintiff existed—or that Defendant has continuously used that 18 mark until now. Response (docket no. 129 at 3, 5–7). Because Plaintiff’s evidence is 19 20
21 3 Plaintiff does not identify the specific subsection of § 1125(a) that Defendant has purportedly violated. To the extent Plaintiff asserts that Defendant has confused the “origin” of its own goods with an “idea, 22 concept, or communication embodied in those goods” authored by Plaintiff, it cannot prevail on its false designation of origin claim. See Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37–38 1 insufficient to show that it acquired common law rights in the mark before Defendant’s registered mark received nationwide priority, it cannot prevail on its false designation of 2 origin claim. See New West Corp., Inc., 595 F.2d at 1200–02; see also Seltzer v. Green 3 Day, Inc., 725 F.3d 1170, 1180 (9th Cir. 2013) (affirming grant of summary judgment on 4 a false designation of origin claim because the evidence of plaintiff’s use of the mark was 5 insufficient “to establish trademark rights”). Count II is dismissed with prejudice. 6 3. State Common Law Unfair Competition (Count IV) 7 Plaintiff’s common law unfair competition claim is based on essentially the same 8 allegations as those alleged in in support of its Lanham Act claims. See Complaint at 9 ¶¶ 44–46. Again, because Plaintiff cannot establish that it was the first to use the mark 10 CAVE MAN KITCHENS in interstate commerce, its common law claim also fails. See 11 Money Savers Pharm., Inc. v. Koffler Stores (Western) Ltd., 37 Wn. App.
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4 UNITED STATES DISTRICT COURT 5 WESTERN DISTRICT OF WASHINGTON AT SEATTLE 6 7 CAVE MAN KITCHENS INC, 8 Plaintiff, C18-1274 TSZ 9 v. ORDER 10 CAVEMAN FOODS LLC, Defendant. 11 12 THIS MATTER comes before the Court on Plaintiff Cave Man Kitchen Inc.’s 13 Show-Cause Response (“Response”), docket no. 129. 14 On November 23, 2020, the Court entered an order, docket no. 128, granting in 15 part Defendant Caveman Foods LLC’s motion for summary judgment, docket no. 103, 16 dismissing with prejudice all but three of Plaintiff’s causes of action: Count II (False 17 Designation of Origin), Count IV (State Common Law Unfair Competition), and 18 Count IX (Declaratory Judgment). The Court deferred its ruling with respect to those 19 causes of action and ordered Plaintiff to show cause as to why they should not be 20 dismissed with prejudice—as the allegations supporting the causes of action appear to 21 rely solely on an invalid trademark assignment executed by a now defunct corporation, 22 Cave Man Kitchens Inc. (“Dissolved Cave Man Kitchens”). Order (docket no. 128 at 1 Rather than address whether its evidence raises genuine disputes of fact material to the remaining causes of action, Plaintiff used its Response to revisit the issue of whether 2 Plaintiff’s ownership rights in the mark CAVE MAN KITCHENS date back to its first 3 use of the mark, sometime after its incorporation in June 2011, or whether its rights date 4 back to Dissolved Cave Man Kitchens’ first use of the mark in 1971. For the following 5 reasons, the Court rejects Plaintiff’s arguments with respect to the ownership issue and 6 grants Defendant’s motion for summary judgment on the remaining causes of action.1 7 Discussion 8 1. Plaintiff’s Ownership Rights in the Mark 9 The Court’s order, docket no. 128, concluded that Plaintiff was never validly 10 assigned, and therefore did not own, the registered mark CAVE MAN KITCHENS. 11 Order (docket no. 128 at 7–11). The Court further concluded that Plaintiff’s evidence 12 failed to raise genuine issues of fact on whether it was orally assigned any common law 13 rights in that mark when it was incorporated in June 2011. Id. at 11–14. 14 Plaintiff challenges those conclusions on the ground that, regardless of the 15 assignment’s validity, its president, Roseanna Donley, was a “co-owner of the mark” as a 16 former director and 20 percent shareholder of Dissolved Cave Man Kitchens. Response 17 (docket no. 129 at 3). As the Court previously explained, however, even controlling 18 shareholders and principal officers of a corporation do not have individual ownership 19 rights in a mark that only the corporation used. Order (docket no. 128 at 10–11 n.6) 20 21 22 1 The Court initially deferred ruling on these causes of action because they were not clearly briefed in the parties’ summary judgment briefing. Still, the parties’ briefing sufficiently raises the issues relevant to 1 (citing Monorail Car Wash, Inc. v. McCoy, 178 U.S.P.Q. 434, at *3 (T.T.A.B. 1973)); see also 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 16:36 2 (5th ed. 2020 update). Plaintiff cites no authority to the contrary.2 The Court 3 acknowledges that, during the relevant time period, Roseanna appeared to sincerely 4 believe that she co-owned the mark with Dissolved Cave Man Kitchens, explaining why 5 she failed to timely acquire a trademark assignment from the dissolved corporation’s 6 directors or to otherwise “ask[] permission” to use the mark. Roseanna Dep., Ex. A to 7 Williams Decl. (docket no. 113-1 at 85, 96). That mistaken belief, however, cannot 8 create ownership rights when none existed; nor can it excuse Plaintiff’s failure to secure 9 an assignment. 10 Plaintiff also argues that it can “tack” its current mark onto Dissolved Cave Man 11 Kitchen’s “2006 mark, if not the 1971 one.” Response (docket no. 129 at 10). The Ninth 12 Circuit has repeatedly emphasized “the narrowness of the tacking doctrine,” Hana Fin., 13 Inc. v. Hana Bank, 735 F.3d 1158, 1165 (9th Cir. 2013), and its body of decisions 14 indicate that the doctrine applies when the same trademark user exploits different but 15 “essentially the same” marks, see id. at 164–66. Because Plaintiff fails to demonstrate 16 that the doctrine applies when different trademark users exploit the same mark, the Court 17 concludes that this argument likewise fails. 18 Plaintiff’s remaining arguments concern abandonment, an issue on which the 19 Court’s previous summary judgment order did not rely. The Court reaffirms its 20 21 22 1 conclusion that there are no triable issues of fact on whether Plaintiff’s rights in the mark predate its corporate existence, beginning in June 2011. 2 2. False Designation of Origin (Count II) 3 Plaintiff asserts that Defendant’s “manufacture, distribution and/or sale of it[s] 4 food products and services under its various forms of the name CAVEMAN falsely 5 designates the origin of Defendant[’s] . . . food products and services in contravention of” 6 the Lanham Act, 15 U.S.C. § 1125(a). Complaint at ¶ 34.3 7 Summary judgment is appropriate on Plaintiff’s remaining Lanham Act claim 8 because the evidence is insufficient to raise genuine issues of fact material to Plaintiff’s 9 “prior ‘use’ of the mark in interstate commerce.” New West Corp. v. NYM Co. of Cal., 10 Inc., 595 F.2d 1194, 1200–01 (9th Cir. 1979) (affirming grant of summary judgment in 11 favor of defendant on a false designation of origin claim, holding that “the district court 12 properly found that the right to use the trade-mark . . . was with [defendant] due to its 13 prior ‘use’”). The Court has already determined that Plaintiff does not own the registered 14 mark CAVE MAN KITCHENS and that it did not acquire any common law rights in the 15 mark until sometime after June 2011. Further, Plaintiff does not dispute that Defendant 16 first used the registered mark CAVEMAN FOODS in interstate commerce in May 17 2011—the month before Plaintiff existed—or that Defendant has continuously used that 18 mark until now. Response (docket no. 129 at 3, 5–7). Because Plaintiff’s evidence is 19 20
21 3 Plaintiff does not identify the specific subsection of § 1125(a) that Defendant has purportedly violated. To the extent Plaintiff asserts that Defendant has confused the “origin” of its own goods with an “idea, 22 concept, or communication embodied in those goods” authored by Plaintiff, it cannot prevail on its false designation of origin claim. See Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 37–38 1 insufficient to show that it acquired common law rights in the mark before Defendant’s registered mark received nationwide priority, it cannot prevail on its false designation of 2 origin claim. See New West Corp., Inc., 595 F.2d at 1200–02; see also Seltzer v. Green 3 Day, Inc., 725 F.3d 1170, 1180 (9th Cir. 2013) (affirming grant of summary judgment on 4 a false designation of origin claim because the evidence of plaintiff’s use of the mark was 5 insufficient “to establish trademark rights”). Count II is dismissed with prejudice. 6 3. State Common Law Unfair Competition (Count IV) 7 Plaintiff’s common law unfair competition claim is based on essentially the same 8 allegations as those alleged in in support of its Lanham Act claims. See Complaint at 9 ¶¶ 44–46. Again, because Plaintiff cannot establish that it was the first to use the mark 10 CAVE MAN KITCHENS in interstate commerce, its common law claim also fails. See 11 Money Savers Pharm., Inc. v. Koffler Stores (Western) Ltd., 37 Wn. App. 602, 606, 682 12 P.2d 960 (1984) (“The right to use a particular name as a trade name belongs to the one 13 who first appropriates and uses it in connection with a particular business.”). That is, 14 Plaintiff cannot prevail on an unfair competition claim “where it has no right to claim 15 infringement on [its] mark,” and where Defendant, which owns a registered mark that 16 indisputably received nationwide priority by May 2011, “has committed no violation in 17 attempting to enforce its own mark.” BBC Grp. NV LLC v. Island Life Rest. Grp. LLC, 18 413 F. Supp. 3d 1032, 1045 (W.D. Wash. 2019) (concluding the same with respect to the 19 state statutory claim for unfair competition). Count IV is dismissed with prejudice. 20 4. Declaratory Judgment (Count IX) 21 Defendant’s undisputed prior use of the mark CAVEMAN FOODS also precludes 22 1 in 2016 for the marks CAVEMAN KITCHEN (Serial No. 86,955,705) and CAVEMAN (Serial No. 86,966,805). The parties remain free to litigate the merits of the underlying 2 opposition proceedings before the United States Patent and Trade Office; but the Court 3 cannot grant the declaratory relief Plaintiff seeks on the ground that its rights in the marks 4 predate Defendant’s rights in the same or similar marks—as it is the other way around. 5 Count IX is dismissed with prejudice. 6 Conclusion 7 For the foregoing reasons, the Court ORDERS: 8 (1) The Motion for Summary Judgment, docket no. 103, is GRANTED in full. 9 (2) As a result of this Order, only Defendant’s counterclaims remain for trial. 10 (3) The parties are DIRECTED to meet and confer and to provide the Court 11 with a Joint Status Report on or before Friday, January 15, 2021, addressing whether and 12 to what extent the Court may sua sponte enter judgment on one or more of Defendant’s 13 counterclaims in light of this Order and the Court’s previous order, docket no. 128. 14 Assuming that one or more of Defendant’s counterclaims remain for trial, the parties’ 15 Joint Status Report shall also address (i) when the parties will be prepared to proceed to 16 trial and (ii) whether the case can proceed with a remote bench or jury trial. 17 (4) The Clerk is directed to send a copy of this Order to all counsel of record. 18 IT IS SO ORDERED. 19 Dated this 14th day of December, 2020. 20 A
21 THOMAS S. ZILLY 22 United States District Judge