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5 UNITED STATES DISTRICT COURT 6 WESTERN DISTRICT OF WASHINGTON AT TACOMA 7 PENINSULA COMMUNITY HEALTH CASE NO. C20-5999 BHS 8 SERVICES, ORDER GRANTING PLAINTIFF’S 9 Plaintiff, RULE 56(D) REQUEST AND v. DENYING WITHOUT PREJUDICE 10 DEFENDANT’S MOTION FOR OLYMPIC PENINSULA HEALTH SUMMARY JUDGMENT 11 SERVICES PS, et al., 12 Defendants. 13
This matter comes before the Court on Defendants Olympic Peninsula Health 14 Services PS, Antif Mian M.D. and Jane Doe Mian, and Ann Failoni and John Doe 15 Failoni’s (collectively “Olympic”) motion for summary judgment. Dkt. 12. The Court has 16 considered the motion and the briefs filed in support of and in opposition to the motion 17 and the remainder of the file and hereby denies the motion without prejudice for the 18 reasons stated herein. 19 20 21 22 1 I. PROCEDURAL HISTORY AND FACTUAL BACKGROUND 2 Overview 3 This case involves a trademark dispute between health services providers in
4 || Western Washington. Defendant Olympic is a for-profit provider of treatment for opioid 5 || use disorder and medication-assisted treatment for alcohol use disorder. Olympic has
6 || clinics located in Port Angeles and Port Hadlock, and serves Clallam County, Jefferson
7 County, and the Olympic Peninsula. OPHS began using its trade name, OLYMPIC
g || PENINSULA HEALTH SERVICES, on January 1, 2018, and adopted the following 9 || design mark shortly thereafter:
10 12 = 13 Oly Tim ne) te eno 14 Plaintiff Peninsula Community Health Services is a nonprofit provider of medical, 15 dental, behavioral health, substance use treatment, and pharmacy services. Peninsula has 16 clinics in Bremerton, Belfair, Shelton, Kingston, Port Orchard, Poulsbo, and Silverdale, 17 as well as school-based and mobile clinics, and serves Kitsap County, Mason County, 18 and the Olympic Peninsula.! Peninsula began using its trade name, PENINSULA 19 20 21 |} ———__ ' Olympic notes that Peninsula formerly had locations on the Olympic Peninsula but no 22 || longer does. Dkt. 12 at 8.
1 || COMMUNITY HEALTH SERVICES, on June 1, 1999, and adopted the following 2 design mark in February 2001: 3 x. Peninsula 4 gals Community Health 5 Services
6 Background 7 Peninsula alleges that after Olympic registered its Tree Logo with the State of 8 || Washington, several of Peninsula’s patients and community partners “stated their 9 || mistaken belief to Peninsula that Olympic’s clinics were Peninsula’s.” Dkt. 1, P 15. 10 || Shortly thereafter, Peninsula wrote to Olympic to express concern that the similarity of 11 || the names and logos would confuse the public. Jd. P 1. Olympic declined to change its 12 ||name, trademark, or logo. Jd. Peninsula alleges that Atif Mian and Ann Failoni are 13 || owners, agents, and officers of Olympic and are responsible for the trademark 14 || infringement. Jd. PP 2-5. 15 Peninsula brought this suit on October 8, 2020, claiming unfair competition and 16 || false designation of origin in violation of 15 U.S.C. § 1125(a), trade name infringement, 17 || infringement of Peninsula’s registered trademark in violation of RCW 19.77, et seq., and 18 || violation of Washington’s Consumer Protection/Unfair Business Practices Act, RCW 19 || 19.86, et seg. Dkt. 1. On March 8, 2021, Olympic moved for summary judgment, arguing 20 || that Peninsula’s mark is generic and that there is no likelihood of confusion. Dkt. 12. 21 || Peninsula responded on April 26, 2021, arguing that its mark is protectable, that it has 22 || evidence of confusion, and in the alternative seeking a continuance under Federal Rule of
1 Civil Procedure 56(d). Dkt. 17. Olympic replied on April 30, 2021, contending that there 2 are no disputes of fact about the weakness of Peninsula’s mark and the similarity of the 3 marks and that Peninsula fails to show how the discovery it seeks would reveal additional
4 evidence in support of its opposition. Dkt. 29. 5 II. DISCUSSION 6 Olympic moves for summary judgment on all of Peninsula’s claims, arguing that it 7 cannot maintain its claims as a matter of law because its mark is not protectable, and even 8 if it is, there is no likelihood of confusion.
9 A. Summary Judgment Standard 10 Summary judgment is proper only if the pleadings, the discovery and disclosure 11 materials on file, and any affidavits show that there is no genuine issue as to any material 12 fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). 13 The moving party is entitled to judgment as a matter of law when the nonmoving party
14 fails to make a sufficient showing on an essential element of a claim in the case on which 15 the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323 16 (1986). There is no genuine issue of fact for trial where the record, taken as a whole, 17 could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec. 18 Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must
19 present specific, significant probative evidence, not simply “some metaphysical doubt”). 20 Conversely, a genuine dispute over a material fact exists if there is sufficient evidence 21 supporting the claimed factual dispute, requiring a judge or jury to resolve the differing 22 1 versions of the truth. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 253 (1986); T.W. 2 Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987). 3 The determination of the existence of a material fact is often a close question. The
4 Court must consider the substantive evidentiary burden that the nonmoving party must 5 meet at trial—e.g., a preponderance of the evidence in most civil cases. Anderson, 477 6 U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual 7 issues of controversy in favor of the nonmoving party only when the facts specifically 8 attested by that party contradict facts specifically attested by the moving party. The
9 nonmoving party may not merely state that it will discredit the moving party’s evidence 10 at trial, in the hopes that evidence can be developed at trial to support the claim. T.W. 11 Elec. Serv., Inc., 809 F.2d at 630 (relying on Anderson, 477 U.S. at 255). Conclusory, 12 nonspecific statements in affidavits are not sufficient, and missing facts will not be 13 presumed. Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888–89 (1990).
14 B. Trademark Infringement 15 “The Lanham Act provides national protection of trademarks in order to secure the 16 owner of the mark the goodwill of his business and to protect the ability of consumers to 17 distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 18 469 U.S. 189, 198 (1985). A Lanham Act claim requires proof that “(1) trademark is a
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5 UNITED STATES DISTRICT COURT 6 WESTERN DISTRICT OF WASHINGTON AT TACOMA 7 PENINSULA COMMUNITY HEALTH CASE NO. C20-5999 BHS 8 SERVICES, ORDER GRANTING PLAINTIFF’S 9 Plaintiff, RULE 56(D) REQUEST AND v. DENYING WITHOUT PREJUDICE 10 DEFENDANT’S MOTION FOR OLYMPIC PENINSULA HEALTH SUMMARY JUDGMENT 11 SERVICES PS, et al., 12 Defendants. 13
This matter comes before the Court on Defendants Olympic Peninsula Health 14 Services PS, Antif Mian M.D. and Jane Doe Mian, and Ann Failoni and John Doe 15 Failoni’s (collectively “Olympic”) motion for summary judgment. Dkt. 12. The Court has 16 considered the motion and the briefs filed in support of and in opposition to the motion 17 and the remainder of the file and hereby denies the motion without prejudice for the 18 reasons stated herein. 19 20 21 22 1 I. PROCEDURAL HISTORY AND FACTUAL BACKGROUND 2 Overview 3 This case involves a trademark dispute between health services providers in
4 || Western Washington. Defendant Olympic is a for-profit provider of treatment for opioid 5 || use disorder and medication-assisted treatment for alcohol use disorder. Olympic has
6 || clinics located in Port Angeles and Port Hadlock, and serves Clallam County, Jefferson
7 County, and the Olympic Peninsula. OPHS began using its trade name, OLYMPIC
g || PENINSULA HEALTH SERVICES, on January 1, 2018, and adopted the following 9 || design mark shortly thereafter:
10 12 = 13 Oly Tim ne) te eno 14 Plaintiff Peninsula Community Health Services is a nonprofit provider of medical, 15 dental, behavioral health, substance use treatment, and pharmacy services. Peninsula has 16 clinics in Bremerton, Belfair, Shelton, Kingston, Port Orchard, Poulsbo, and Silverdale, 17 as well as school-based and mobile clinics, and serves Kitsap County, Mason County, 18 and the Olympic Peninsula.! Peninsula began using its trade name, PENINSULA 19 20 21 |} ———__ ' Olympic notes that Peninsula formerly had locations on the Olympic Peninsula but no 22 || longer does. Dkt. 12 at 8.
1 || COMMUNITY HEALTH SERVICES, on June 1, 1999, and adopted the following 2 design mark in February 2001: 3 x. Peninsula 4 gals Community Health 5 Services
6 Background 7 Peninsula alleges that after Olympic registered its Tree Logo with the State of 8 || Washington, several of Peninsula’s patients and community partners “stated their 9 || mistaken belief to Peninsula that Olympic’s clinics were Peninsula’s.” Dkt. 1, P 15. 10 || Shortly thereafter, Peninsula wrote to Olympic to express concern that the similarity of 11 || the names and logos would confuse the public. Jd. P 1. Olympic declined to change its 12 ||name, trademark, or logo. Jd. Peninsula alleges that Atif Mian and Ann Failoni are 13 || owners, agents, and officers of Olympic and are responsible for the trademark 14 || infringement. Jd. PP 2-5. 15 Peninsula brought this suit on October 8, 2020, claiming unfair competition and 16 || false designation of origin in violation of 15 U.S.C. § 1125(a), trade name infringement, 17 || infringement of Peninsula’s registered trademark in violation of RCW 19.77, et seq., and 18 || violation of Washington’s Consumer Protection/Unfair Business Practices Act, RCW 19 || 19.86, et seg. Dkt. 1. On March 8, 2021, Olympic moved for summary judgment, arguing 20 || that Peninsula’s mark is generic and that there is no likelihood of confusion. Dkt. 12. 21 || Peninsula responded on April 26, 2021, arguing that its mark is protectable, that it has 22 || evidence of confusion, and in the alternative seeking a continuance under Federal Rule of
1 Civil Procedure 56(d). Dkt. 17. Olympic replied on April 30, 2021, contending that there 2 are no disputes of fact about the weakness of Peninsula’s mark and the similarity of the 3 marks and that Peninsula fails to show how the discovery it seeks would reveal additional
4 evidence in support of its opposition. Dkt. 29. 5 II. DISCUSSION 6 Olympic moves for summary judgment on all of Peninsula’s claims, arguing that it 7 cannot maintain its claims as a matter of law because its mark is not protectable, and even 8 if it is, there is no likelihood of confusion.
9 A. Summary Judgment Standard 10 Summary judgment is proper only if the pleadings, the discovery and disclosure 11 materials on file, and any affidavits show that there is no genuine issue as to any material 12 fact and that the movant is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). 13 The moving party is entitled to judgment as a matter of law when the nonmoving party
14 fails to make a sufficient showing on an essential element of a claim in the case on which 15 the nonmoving party has the burden of proof. Celotex Corp. v. Catrett, 477 U.S. 317, 323 16 (1986). There is no genuine issue of fact for trial where the record, taken as a whole, 17 could not lead a rational trier of fact to find for the nonmoving party. Matsushita Elec. 18 Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (nonmoving party must
19 present specific, significant probative evidence, not simply “some metaphysical doubt”). 20 Conversely, a genuine dispute over a material fact exists if there is sufficient evidence 21 supporting the claimed factual dispute, requiring a judge or jury to resolve the differing 22 1 versions of the truth. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 253 (1986); T.W. 2 Elec. Serv., Inc. v. Pac. Elec. Contractors Ass’n, 809 F.2d 626, 630 (9th Cir. 1987). 3 The determination of the existence of a material fact is often a close question. The
4 Court must consider the substantive evidentiary burden that the nonmoving party must 5 meet at trial—e.g., a preponderance of the evidence in most civil cases. Anderson, 477 6 U.S. at 254; T.W. Elec. Serv., Inc., 809 F.2d at 630. The Court must resolve any factual 7 issues of controversy in favor of the nonmoving party only when the facts specifically 8 attested by that party contradict facts specifically attested by the moving party. The
9 nonmoving party may not merely state that it will discredit the moving party’s evidence 10 at trial, in the hopes that evidence can be developed at trial to support the claim. T.W. 11 Elec. Serv., Inc., 809 F.2d at 630 (relying on Anderson, 477 U.S. at 255). Conclusory, 12 nonspecific statements in affidavits are not sufficient, and missing facts will not be 13 presumed. Lujan v. Nat’l Wildlife Fed’n, 497 U.S. 871, 888–89 (1990).
14 B. Trademark Infringement 15 “The Lanham Act provides national protection of trademarks in order to secure the 16 owner of the mark the goodwill of his business and to protect the ability of consumers to 17 distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 18 469 U.S. 189, 198 (1985). A Lanham Act claim requires proof that “(1) trademark is a
19 valid, protectable trademark; (2) [the plaintiff] owns the trademark; and (3) the opposing 20 party used the trademark or a similar trademark without consent in a manner likely to 21 cause confusion among ordinary consumers as to the source, sponsorship, affiliation, or 22 approval of goods.” Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1196 (9th Cir. 2009). 1 “Because of the intensely factual nature of trademark disputes, summary judgment is 2 generally disfavored in the trademark arena.” Entrepreneur Media, Inc. v. Smith, 279 3 F.3d 1135, 1140 (9th Cir. 2002).
4 “There are five categories of trademarks: (1) generic; (2) descriptive; (3) 5 suggestive; (4) arbitrary; and (5) fanciful.” Yellow Cab Co. of Sacramento v. Yellow Cab 6 of Elk Grove, Inc., 419 F.3d 925, 927 (9th Cir. 2005) (citing KP Permanent Make-Up, 7 Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005)). The latter three 8 categories are inherently distinctive and automatically entitled to protection because they
9 naturally function to identify the particular source of a product. Id. (citing KP Permanent 10 Make-Up, 419 F.3d at 927). “Descriptive marks ‘define a particular characteristic of the 11 product in a way that does not require any exercise of the imagination.’” Id. (quoting 12 Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 632 (9th Cir. 2005)). “A 13 descriptive mark can receive trademark protection if it has acquired distinctiveness by
14 establishing “secondary meaning” in the marketplace.” Id. (citing Filipino Yellow Pages, 15 Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999)). “Generic marks 16 are not capable of receiving protection because they identify the product, rather than the 17 product's source.” Id. (quoting KP Permanent Make-Up, 408 F.3d at 602). 18 “Likelihood of confusion is a factual determination,” and courts often find
19 likelihood of confusion is best determined by the jury. Fortune Dynamic v. Victoria’s 20 Secret Stores Brand Mgmt., 618 F.3d 1025, 1031 (9th Cir. 2010) (quoting Thane Int’l, 21 Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901 (9th Cir. 2002)). Courts use the eight 22 Sleekcraft factors to assess likelihood of consumer confusion among similar trademarks, 1 assessing: “(1) the similarity of the marks; (2) the strength of the plaintiff’s mark; (3) the 2 proximity or relatedness of the goods or services; (4) the defendant’s intent in selecting 3 the mark; (5) evidence of actual confusion; (6) the marketing channels used; (7) the
4 likelihood of expansion into other markets; and (8) the degree of care likely to be 5 exercised by purchasers of the defendant’s product.” Id. at 1030–31 (citing AMF Inc. v. 6 Sleekcraft Boats, 599 F.3d 341 (9th Cir. 1979)). “This eight-factor analysis is ‘pliant,’ 7 illustrative rather than exhaustive, and best understood as simply providing helpful 8 guideposts” for analysis. Id.
9 The parties dispute the first and third elements of a Lanham Act claim. Olympic 10 contends that Peninsula’s trademark is entitled to no protection either because it is 11 generic or because it is descriptive without evidence of secondary meaning. Peninsula 12 responds that its trademark is not used generically and is either descriptive or suggestive. 13 Olympic contends that the Sleekcraft factors are all neutral or weigh against a finding of
14 likely consumer confusion. Peninsula counters that questions of fact preclude resolving 15 likelihood of confusion on summary judgment. 16 C. Rule 56(d) 17 Peninsula asserts that it has not yet had the opportunity to develop the record 18 through discovery and should be permitted to do so before the Court rules on the motion.
19 Peninsula, through the declaration of its attorney as required by Rule 56(d), asserts that it 20 seeks to depose Olympic and Defendants Ann Failoni and Dr. Antif Mian on topics 21 including the geographic areas Olympic serves, its knowledge of Peninsula and its 22 trademarks, its intent in selecting its name and logo, and “the revenue it has received in 1 connection with its trademarks so [Peninsula] can calculate the ‘infringer’s profits’ 2 component of its damages.” Dkt. 28, ⁋ 10. 3 Olympic counters that Peninsula has failed to specify what facts it expects to find
4 in discovery and why those facts are essential to opposing summary judgment. Dkt. 29 at 5 15–16. The Court concludes that Peninsula has sufficiently identified discovery it seeks, 6 discovery which could have some relevance to the secondary meaning analysis and which 7 is relevant to the likelihood of confusion analysis. The Court has not yet issued a 8 scheduling order, and the parties proposed in their Joint Status Report, Dkt. 11, that they
9 would complete discovery by January 2022. Given the very early stage of this case, in the 10 interests of judicial efficiency, the Court grants Peninsula’s 56(d) request and denies 11 Olympic’s motion for summary judgment without prejudice. After the depositions 12 Peninsula seeks, Olympic may either renote its motion to allow Peninsula time to respond 13 or file a new motion.
14 III. ORDER 15 Therefore, it is hereby ORDERED that Peninsula’s Rule 56(d) request is 16 GRANTED and Olympic’s motion for summary judgment, Dkt. 12, is DENIED without 17 prejudice 18 Dated this 16th day of June, 2021. A 19 20 BENJAMIN H. SETTLE 21 United States District Judge