1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 EASTERN DISTRICT OF CALIFORNIA 10 ----oo0oo---- 11 12 TIM TYNAN, an individual doing No. 2:21-cv-00963 WBS CKD business as TNTYNAN PERFORMANCE 13 ENGINEERING, a California Business Entity, 14 MEMORANDUM AND ORDER RE: Plaintiff, DEFENDANT’S MOTION FOR 15 SUMMARY JUDGMENT v. 16 ALLEN PERRY, an individual, 17 Defendant. 18
19 ----oo0oo---- 20 Plaintiff Tim Tynan filed this action against defendant 21 Allen Perry alleging claims for (1) trademark infringement under 22 15 U.S.C. § 1114 and common law; (2) false designation of origin, 23 15 U.S.C. § 1125(a); (3) trademark dilution, 15 U.S.C. § 1125(c); 24 (4) injunctive relief under the Lanham Act; (5) injury to 25 business reputation and dilution, Cal. Bus. & Prof. Code § 26 142471; (6) unfair competition, Cal. Bus. & Prof. Code § 17200, 27
28 1 Plaintiff cites to California Business and Professions 1 et seq.; (7) unjust enrichment;2 (8) declaratory relief; and (9) 2 intentional interference with prospective economic advantage 3 under California common law. (Docket No. 4.) Defendant now 4 moves for summary judgment. (Docket No. 21.) 5 I. Factual and Procedural Background 6 The following facts are undisputed. Plaintiff 7 manufactures and designs watercraft exhaust pipes and claims he 8 markets them as “TNT” pipes. (Decl. of Tim Tynan (“Tynan Decl.”) 9 ¶ 3 (Docket No. 27-3).) Defendant was plaintiff’s customer and 10 eventually himself began selling watercraft pipes. (Id. at ¶ 8.) 11 Defendant referred to the pipes he sold as “TNT” pipes because 12 some were pipes made by plaintiff that defendant was reselling, 13 and some were “similarly designed.” (Def.’s Resp. to Pl.’s 14 Statement of Undisputed Facts (“PSUF”) ¶ 14 (Docket No. 29-1).) 15 On or about April 10, 2021, plaintiff submitted an 16 application to the United States Patent and Trademark Office 17 (“USPTO”) to register the mark “TNT.” (Req. for Judicial Notice, 18 Ex. B, Ex. E (Docket No. 21-5).)3 Plaintiff’s application states 19 Code § 14330, though this statute has been repealed. The correct 20 statute for dilution under California law appears to be § 14247.
21 2 “There is not a standalone cause of action for ‘unjust 22 enrichment’ which is synonymous with restitution.” Astiana v. Hain Celestial Group, Inc., 783 F.3d 753, 762 (9th Cir. 2015). 23 Rather, it “describe[s] the theory underlying a claim that a defendant has been unjustly conferred a benefit through mistake, 24 coercion, or request” and the “return of that benefit is typically sought in a quasi-contract cause of action.” 25
26 3 Defendant submitted a request for judicial notice of, among other items, a copy of plaintiff’s application to the USPTO 27 (exhibit B), with attached photos (exhibit E), and a non-final office action in response to the application (exhibit C). 28 (Docket Nos. 21-5, 29-3). Because plaintiff does not object, the 1 that the “mark consists of standard characters without claim to 2 any particular font style, size, or color.” (Id., Ex. B.) On or 3 about December 18, 2021, the USPTO issued a non-final office 4 action refusing registration of the “TNT” mark. (Id., Ex. C.) 5 The USPTO gave plaintiff six months to supplement the application 6 with additional materials and information, which plaintiff did 7 and is awaiting further action. (Id.; Tynan Decl. ¶ 17.) 8 In 2019, plaintiff discovered that defendant was 9 selling watercraft pipes using the term “TNT” and brought this 10 action. (Pl.’s Opp. to Def.’s Statement of Undisputed Facts 11 (“DSUF”) ¶ 1 (Docket No. 28-1); Tynan Decl. ¶ 8). 12 II. Trademark Infringement under 15 U.S.C. § 1114 13 The Lanham Act, 15 U.S.C. § 1114, allows an action for 14 trademark infringement to be brought by the “registrant” of a 15 “registered mark.” 15 U.S.C. § 1114(1). Here, it is uncontested 16 that plaintiff does not own a registered mark. (See DSUF at ¶ 17 2); 15 U.S.C. § 1127 (defining “registered mark” as a “mark 18 registered in the [USPTO]”). 19 Plaintiff has a pending registration application of the 20 “TNT” mark, for which he has received a non-final refusal. 21 However, an application with the USPTO is not enough to confer 22 standing upon plaintiff to bring a claim under 15 U.S.C. § 1114. 23 See Antiaging Inst. of Cal., Inc. v. Solonova, LLC, No. CV 15- 24 03416-AB (FFMx), 2015 WL 12792028, at *3 (C.D. Cal. Nov. 19, 25 2015) (“Plaintiff’s contention that it has standing as a 26
27 court takes judicial notice of Exhibits B, C, and E. The court does not rely on the remaining items at issue in the request, and 28 therefore the request is denied as moot as to those items. 1 trademark applicant is without merit”). Even if plaintiff’s 2 application is approved, he did not have a registered mark at the 3 commencement of this suit. See Lujan v. Defs. of Wildlife, 504 4 U.S. 555, 570 n.5 (1992) (standing is determined “as of the 5 commencement of suit”). Accordingly, the court will grant 6 summary judgment in favor of defendant on plaintiff’s claim for 7 trademark infringement under 15 U.S.C. § 1114. 8 III. Remaining Claims 9 The sole reasoning defendant provides for summary 10 judgment on the remaining claims is that plaintiff does not have 11 trademark rights for “TNT.” (See Def.’s Mot. at 7; Def.’s Reply 12 at 3-8 (Docket No. 29).) Plaintiff has raised a genuine dispute 13 of material fact as to whether plaintiff has a protectible 14 ownership interest in the “TNT” mark. 15 Defendant correctly notes that plaintiff’s use of the 16 “TNT” mark was often in a logo in conjunction with the words 17 “Performance Engineering” and this weighs against a finding of a 18 “protectible ownership interest in the mark” because “TNT” is not 19 being used as a solo identifier for plaintiff’s products. See 20 Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1202 (9th 21 Cir. 2012); (Decl. of Melody Kramer (“Kramer Decl.”), Ex. 3 22 (Docket No. 21-2); Tynan Decl., Exs. D, E, F.) However, 23 plaintiff, consumers, and defendant himself referred to 24 plaintiff’s pipes as “TNT” pipes, which indicates that 25 plaintiff’s use of the mark is recognized in the market. See 26 Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 27 432 (9th Cir. 2017) (stating that the “mark’s recognition in the 28 market is a key factor in determining the strength of the mark 1 under the “likelihood of confusion” analysis). 2 Plaintiff referred to the pipes in advertisements as 3 “TNT” pipes without mention of “Performance Engineering.” 4 (Kramer Decl., Ex.
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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 EASTERN DISTRICT OF CALIFORNIA 10 ----oo0oo---- 11 12 TIM TYNAN, an individual doing No. 2:21-cv-00963 WBS CKD business as TNTYNAN PERFORMANCE 13 ENGINEERING, a California Business Entity, 14 MEMORANDUM AND ORDER RE: Plaintiff, DEFENDANT’S MOTION FOR 15 SUMMARY JUDGMENT v. 16 ALLEN PERRY, an individual, 17 Defendant. 18
19 ----oo0oo---- 20 Plaintiff Tim Tynan filed this action against defendant 21 Allen Perry alleging claims for (1) trademark infringement under 22 15 U.S.C. § 1114 and common law; (2) false designation of origin, 23 15 U.S.C. § 1125(a); (3) trademark dilution, 15 U.S.C. § 1125(c); 24 (4) injunctive relief under the Lanham Act; (5) injury to 25 business reputation and dilution, Cal. Bus. & Prof. Code § 26 142471; (6) unfair competition, Cal. Bus. & Prof. Code § 17200, 27
28 1 Plaintiff cites to California Business and Professions 1 et seq.; (7) unjust enrichment;2 (8) declaratory relief; and (9) 2 intentional interference with prospective economic advantage 3 under California common law. (Docket No. 4.) Defendant now 4 moves for summary judgment. (Docket No. 21.) 5 I. Factual and Procedural Background 6 The following facts are undisputed. Plaintiff 7 manufactures and designs watercraft exhaust pipes and claims he 8 markets them as “TNT” pipes. (Decl. of Tim Tynan (“Tynan Decl.”) 9 ¶ 3 (Docket No. 27-3).) Defendant was plaintiff’s customer and 10 eventually himself began selling watercraft pipes. (Id. at ¶ 8.) 11 Defendant referred to the pipes he sold as “TNT” pipes because 12 some were pipes made by plaintiff that defendant was reselling, 13 and some were “similarly designed.” (Def.’s Resp. to Pl.’s 14 Statement of Undisputed Facts (“PSUF”) ¶ 14 (Docket No. 29-1).) 15 On or about April 10, 2021, plaintiff submitted an 16 application to the United States Patent and Trademark Office 17 (“USPTO”) to register the mark “TNT.” (Req. for Judicial Notice, 18 Ex. B, Ex. E (Docket No. 21-5).)3 Plaintiff’s application states 19 Code § 14330, though this statute has been repealed. The correct 20 statute for dilution under California law appears to be § 14247.
21 2 “There is not a standalone cause of action for ‘unjust 22 enrichment’ which is synonymous with restitution.” Astiana v. Hain Celestial Group, Inc., 783 F.3d 753, 762 (9th Cir. 2015). 23 Rather, it “describe[s] the theory underlying a claim that a defendant has been unjustly conferred a benefit through mistake, 24 coercion, or request” and the “return of that benefit is typically sought in a quasi-contract cause of action.” 25
26 3 Defendant submitted a request for judicial notice of, among other items, a copy of plaintiff’s application to the USPTO 27 (exhibit B), with attached photos (exhibit E), and a non-final office action in response to the application (exhibit C). 28 (Docket Nos. 21-5, 29-3). Because plaintiff does not object, the 1 that the “mark consists of standard characters without claim to 2 any particular font style, size, or color.” (Id., Ex. B.) On or 3 about December 18, 2021, the USPTO issued a non-final office 4 action refusing registration of the “TNT” mark. (Id., Ex. C.) 5 The USPTO gave plaintiff six months to supplement the application 6 with additional materials and information, which plaintiff did 7 and is awaiting further action. (Id.; Tynan Decl. ¶ 17.) 8 In 2019, plaintiff discovered that defendant was 9 selling watercraft pipes using the term “TNT” and brought this 10 action. (Pl.’s Opp. to Def.’s Statement of Undisputed Facts 11 (“DSUF”) ¶ 1 (Docket No. 28-1); Tynan Decl. ¶ 8). 12 II. Trademark Infringement under 15 U.S.C. § 1114 13 The Lanham Act, 15 U.S.C. § 1114, allows an action for 14 trademark infringement to be brought by the “registrant” of a 15 “registered mark.” 15 U.S.C. § 1114(1). Here, it is uncontested 16 that plaintiff does not own a registered mark. (See DSUF at ¶ 17 2); 15 U.S.C. § 1127 (defining “registered mark” as a “mark 18 registered in the [USPTO]”). 19 Plaintiff has a pending registration application of the 20 “TNT” mark, for which he has received a non-final refusal. 21 However, an application with the USPTO is not enough to confer 22 standing upon plaintiff to bring a claim under 15 U.S.C. § 1114. 23 See Antiaging Inst. of Cal., Inc. v. Solonova, LLC, No. CV 15- 24 03416-AB (FFMx), 2015 WL 12792028, at *3 (C.D. Cal. Nov. 19, 25 2015) (“Plaintiff’s contention that it has standing as a 26
27 court takes judicial notice of Exhibits B, C, and E. The court does not rely on the remaining items at issue in the request, and 28 therefore the request is denied as moot as to those items. 1 trademark applicant is without merit”). Even if plaintiff’s 2 application is approved, he did not have a registered mark at the 3 commencement of this suit. See Lujan v. Defs. of Wildlife, 504 4 U.S. 555, 570 n.5 (1992) (standing is determined “as of the 5 commencement of suit”). Accordingly, the court will grant 6 summary judgment in favor of defendant on plaintiff’s claim for 7 trademark infringement under 15 U.S.C. § 1114. 8 III. Remaining Claims 9 The sole reasoning defendant provides for summary 10 judgment on the remaining claims is that plaintiff does not have 11 trademark rights for “TNT.” (See Def.’s Mot. at 7; Def.’s Reply 12 at 3-8 (Docket No. 29).) Plaintiff has raised a genuine dispute 13 of material fact as to whether plaintiff has a protectible 14 ownership interest in the “TNT” mark. 15 Defendant correctly notes that plaintiff’s use of the 16 “TNT” mark was often in a logo in conjunction with the words 17 “Performance Engineering” and this weighs against a finding of a 18 “protectible ownership interest in the mark” because “TNT” is not 19 being used as a solo identifier for plaintiff’s products. See 20 Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1202 (9th 21 Cir. 2012); (Decl. of Melody Kramer (“Kramer Decl.”), Ex. 3 22 (Docket No. 21-2); Tynan Decl., Exs. D, E, F.) However, 23 plaintiff, consumers, and defendant himself referred to 24 plaintiff’s pipes as “TNT” pipes, which indicates that 25 plaintiff’s use of the mark is recognized in the market. See 26 Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 27 432 (9th Cir. 2017) (stating that the “mark’s recognition in the 28 market is a key factor in determining the strength of the mark 1 under the “likelihood of confusion” analysis). 2 Plaintiff referred to the pipes in advertisements as 3 “TNT” pipes without mention of “Performance Engineering.” 4 (Kramer Decl., Ex. 3.) Defendant himself also referred to 5 plaintiff’s pipes as being from “TNT.” (Decl. of Jake Ward, Ex. 6 1 (Docket 27-4) (“These are not made by Tim from tnt”).) 7 Further, potential customers referred to the pipes they were 8 seeking as “TNT” pipes. (Decl. of Casey Maudlin, Ex. 1 (Docket 9 No. 27-5) (“I saw you posted that you can get a TnT superstoack 10 [sic] chamber”); Decl. of Jake Ward, Ex. 1 (“planned on running a 11 TNT chamber” and “[d]o you still have any TNT chambers for 12 sale?”).) 13 “Summary judgment is appropriate when, viewing the 14 evidence in the light most favorable to the non-moving party, 15 there is no genuine dispute as to any material fact.” Acosta v. 16 City Nat’l Corp., 922 F.3d 880, 885 (9th Cir. 2019). Here, as 17 demonstrated above, there is a genuine dispute of material fact 18 on the issue of whether plaintiff has a common law trademark 19 right in the “TNT” mark. Accordingly, as this is the sole ground 20 upon which defendant moves for summary judgment, the motion will 21 be denied as to the remaining claims. 22 IT IS THEREFORE ORDERED that defendant’s motion for 23 summary judgment (Docket No. 21) be, and the same hereby is, 24 GRANTED as to the claim for trademark infringement under 15 25 U.S.C. § 1114 and DENIED on the remaining claims.4 26 4 From the representations of counsel at the time of the 27 hearing on this motion, it appears that the parties are only $1,000 apart in their settlement negotiations. The parties are 28 accordingly urged to bring those negotiations to fruition before nnn nnn en en en nn nn on nn on nn EO
he ble 7H. (LA. 2 Dated: March 24, 2022 WILLIAMB.SHUBB ©... 3 UNITED STATES DISTRICT JUDGE 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26
the further expenditure of valuable time and resources on the 28 | litigation of this action.