Vicious Brands, Inc. v. Face Co., LLC

• Court: District Court, N.D. California
• Decided: March 10, 2025
• Docket: 3:24-cv-04996
• Status: Unknown

Opinion

1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 VICIOUS BRANDS, INC., Case No. 24-cv-04996-LJC

8 Plaintiff, ORDER DENYING MOTION TO STAY v. 9 Re: Dkt. No. 30 10 FACE CO., LLC, et al., Defendants. 11

12 13 I. INTRODUCTION 14 Plaintiff Vicious Brands, Inc., doing business as Saints & Sinners, brings this action 15 against Defendants Face Co., LLC, Skin Saint, LLC, and Holly Cutler, alleging that Defendants 16 infringed Plaintiff’s trademark and fraudulently applied for a similar trademark. The Court 17 previously denied Defendants’ motion to dismiss the case for lack of personal jurisdiction and 18 improper venue, or in the alternative, to transfer the case to the Eastern District of Michigan. ECF 19 No. 25.1 Defendants now move to stay the case pending the resolution of administrative 20 proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and 21 Trademark Office (PTO), where Plaintiff has opposed Defendants’ application to register their 22 mark. The Court previously found the matter suitable for resolution without oral argument and 23 vacated the hearing. See Civ. L.R. 7-1(b); ECF No. 38. Having considered the parties’ papers and 24 arguments, and for the reasons discussed below, the Motion to Stay is DENIED.2 25

26 1 Vicious Brands, Inc. v. Face Co., LLC, No. 24-cv-04996-LJC, 2024 WL 4753287 (N.D. Cal. Nov. 12, 2024). Citations herein to documents filed in the docket of this case refer to page 27 numbers as assigned by the Court’s ECF filing system, unless otherwise specified. 1 II. BACKGROUND 2 A. Allegations of the Complaint 3 For convenience, this section summarizes Plaintiff’s allegations as if true. Nothing in this 4 summary should be construed as resolving any issue of fact that might be disputed, or to suggest 5 that the Court has reached such a conclusion in resolving the present Motion to Stay. This 6 summary is materially identical to the equivalent section of the Court’s previous Order denying 7 Defendants’ Motion to dismiss the case or transfer venue to Michigan. ECF No. 25 at 1–2. 8 Plaintiff is a Nevada corporation based in Reno that has developed and sold hair care 9 products nationwide since Plaintiff’s founding in 2016, using the trade name Saints & Sinners and 10 a logo featuring two instances of the letter S conjoined horizontally, for which it holds multiple 11 registered trademarks. Compl. (ECF No. 1) ¶¶ 2, 20–22, 25. 12 Defendants Skin Saint and Face Co. are Michigan limited liability companies that sell 13 beauty products and consultation services under the trade name Skin Saint, using a logo featuring 14 two instances of the letter S conjoined vertically. Id. ¶¶ 12–13, 34. Skin Saint owns and operates 15 a website for the sale of such products, which Plaintiff claims is confusingly similar to Plaintiff’s 16 Saints & Sinners website. Id. ¶¶ 12, 47. Face Co. owns and operates a brick-and-mortar store, 17 and previously owned and operated the Skin Saint website. Id. ¶ 13. Defendant Cutler is the 18 founder and owner of both Skin Saint and Face Co., and Plaintiff alleges that she is personally 19 responsible for the conduct at issue. Id. ¶ 11. 20 Face Co. applied to register a trademark for its double-S mark in 2022, and later assigned 21 its rights to that mark and application to Cutler. Id. ¶¶ 36, 39. Plaintiff has filed a notice of 22 opposition to that application with the Trademark Trial and Appeal Board. Id. ¶ 52. 23 Plaintiff sent Defendants a cease-and-desist letter asserting infringement, but Defendants 24 have refused to cease using their double-S mark. Id. ¶¶ 49–50. 25 Plaintiff asserts the following claims: (1) trademark infringement in violation of 15 U.S.C. 26 § 1114, Compl. ¶¶ 61–74; (2) unfair competition and false designation of origin in violation of 15 27 U.S.C. § 1125(a), Compl. ¶¶ 75–88; (3) fraudulent procurement of a trademark in violation of 15 1 California Business and Professions Code, Compl. ¶¶ 102–08; (5) common law trademark 2 infringement, id. ¶¶ 109–20; and (6) common law unfair competition, id. ¶¶ 121–31. 3 B. TTAB Proceedings 4 1. Procedural Overview 5 Registration of trademarks is not required, but the Lanham Act provides significant 6 benefits to trademark owners who register their marks with the Patent and Trademark Office 7 (PTO). The Supreme Court has summarized the process of trademark registration, opposition to 8 registration, and parallel infringement proceedings as follows:

9 To obtain the benefits of registration, a mark owner files an application with the PTO. The application must include, among other 10 things, the date of the applicant’s first use of the mark, the date of the applicant's first use of the mark in commerce, the goods in connection 11 with which the mark is used, and a drawing of the mark. The usages listed in the application—i.e., those goods on which the mark appears 12 along with, if applicable, their channels of distribution—are critical. The PTO generally cannot register a mark which so resembles another 13 mark as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. 14 If a trademark examiner believes that registration is warranted, the 15 mark is published in the Official Gazette of the PTO. At that point, any person who believes that he would be damaged by the registration 16 may file an opposition. Opposition proceedings occur before the TTAB (or panels thereof). The TTAB consists of administrative 17 trademark judges and high-ranking PTO officials, including the Director of the PTO and the Commissioner of Trademarks. 18 Opposition proceedings before the TTAB are in many ways similar 19 to a civil action in a federal district court. These proceedings, for instance, are largely governed by the Federal Rules of Civil Procedure 20 and Evidence. The TTAB also allows discovery and depositions. The party opposing registration bears the burden of proof, and if that 21 burden cannot be met, the opposed mark must be registered.

22 The primary way in which TTAB proceedings differ from ordinary civil litigation is that proceedings before the Board are conducted in 23 writing, and the Board’s actions in a particular case are based upon the written record therein. In other words, there is no live testimony. 24 Even so, the TTAB allows parties to submit transcribed testimony, taken under oath and subject to cross-examination, and to request oral 25 argument.

26 When a party opposes registration because it believes the mark proposed to be registered is too similar to its own, the TTAB evaluates 27 likelihood of confusion by applying some or all of the 13 factors set 1973).[3] After the TTAB decides whether to register the mark, a party 1 can seek review in the U.S. Court of Appeals for the Federal Circuit, or it can file a new action in district court. In district court, the parties 2 can conduct additional discovery and the judge resolves registration de novo. 3 The Lanham Act, of course, also creates a federal cause of action for 4 trademark infringement. The owner of a mark, whether registered or not, can bring suit in federal court if another is using a mark that too 5 closely resembles the plaintiff’s. The court must decide whether the defendant’s use of a mark in commerce is likely to cause confusion, 6 or to cause mistake, or to deceive with regards to the plaintiff’s mark. In infringement litigation, the district court considers the full range of 7 a mark’s usages, not just those in the application. 8 B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 143–45 (2015) (cleaned up). 9 2. Plaintiff’s Opposition to Defendants’ Registration 10 After Plaintiff filed its opposition to Defendants’ trademark registration4 in January of 11 2024, the TTAB set a schedule in which discovery would open on March 27, 2024 and close on 12 September 23, 2024, Plaintiff’s pretrial disclosures were due November 7, 2024, Plaintiff’s trial 13 period5 would begin November 22, 2024, Defendants’ pretrial disclosures were due January 6, 14 2025, and Defendants’ trial period would begin on January 20, 2025. ECF No. 30-1 (Mobin 15 Decl.) ¶ 5; ECF No. 30-5 at 4. Plaintiffs would then have a rebuttal period ending April 6, 2025, 16 and trial briefing would be completed by July 20, 2025. ECF No. 30-5 at 4. 17 Plaintiff served interrogatories, requests for admission, and requests for production on 18 March 27, 2024, and Defendants responded on May 13, 2024 after an agreed extension of time. 19 ECF No. 30-1, ¶¶ 6–11; ECF No. 30-12 at 2. On June 10, 2024, Plaintiff sent Defendants a meet- 20 and-confer letter asserting that Defendants had failed to verify their interrogatory responses, 21 repeatedly failed to produce documents they had agreed to produce, asserted improper objections, 22 and failed to provide a privilege log. ECF No. 30-12. Defendants responded by letter on June 21, 23 2024 asserting that they had by then produced documents and would remedy certain other issues. 24

25 3 The U.S. Court of Customs and Patent Appeals was a predecessor to the Federal Circuit. 4 This Order follows the parties’ practice of referencing Defendants collectively in the TTAB 26 proceeding, even though it appears that Defendant Cutler is the only applicant in that proceeding, and Defendants Skin Saint and Face Co. are not currently parties to it. No party has suggested that 27 the incomplete overlap in parties is relevant to the present Motion to Stay. 1 ECF No. 30-1, ¶ 16; ECF No. 30-16. Defendants served supplemental responses in July. ECF 2 No. 30-1, ¶¶ 18–20. Plaintiff characterizes Defendants’ written discovery as “deficient” and their 3 document production as a “limited” seventy-five pages, with redactions unsupported by a privilege 4 log. ECF No. 35-2 (Mulcahy Decl.) ¶ 5. 5 Defendants served interrogatories, requests for admission, and requests for production on 6 June 11, 2024, and Plaintiff responded on July 29, 2024, indicating that it would produce 7 documents in response to many of Defendants’ requests.6 ECF No. 30-1, ¶¶ 13–15, 21–23; ECF 8 No. 30-22 at 6–19. Plaintiff did not produce any documents in response before the TTAB stayed 9 proceedings on October 17, 2024 (or thereafter). 10 Plaintiff served a notice of deposition for Cutler on June 27, 2024. ECF No. 30-1, ¶ 17. 11 Plaintiff asserts that Cutler “refused to answer several important questions” at her deposition on 12 July 26, 2024. ECF No. 35-2, ¶ 7. The excerpt Plaintiff provides from the transcript indicates that 13 Plaintiff’s counsel repeatedly asked Cutler if she would “be concerned” if someone else 14 approached her manufacturer to make a product with a “logo that is almost exactly like the current 15 Skin Saint logo,” or that is “identical to your current double S logo,” or that “was the same but in a 16 slightly different font.” ECF No. 35-2 at 7–14. Cutler’s answers were at times evasive or 17 frustrated, but she stated that “if someone had [her] exact logo, that wouldn’t just be a 18 manufacturing issue, that would be a trademark issue” or “an issue in general,” and that if a 19 similar logo “comes off as the exact same logo, [she could] see where there would be a threat.” Id. 20 at 9, 12–13. Cutler ultimately provided an answer to most if not all of the questions that Plaintiff’s 21 counsel asked on this topic, and her personal opinions about others’ use of a logo that is the same 22 as or similar to Defendants’ logo would seem to be of limited evidentiary value to the resolution of 23 Plaintiffs’ claims. 24 Plaintiff filed the present action in this Court on August 9, 2024. ECF No. 1. On 25

26 6 Defendants assert in their present Motion that Plaintiff agreed in its responses to “produce all non-privileged, responsive documents in its possession, custody, or control,” ECF No. 30 at 9, but 27 while Plaintiff agreed to produce documents in response to some of Defendants’ requests, Plaintiff 1 September 17, 2024, Plaintiff filed a motion before the TTAB to suspend the administrative 2 proceeding pending resolution of this case. ECF No. 20-24. In their Motion to Dismiss filed 3 September 27, 2024, Defendants asserted that Plaintiff’s motion to suspend the TTAB proceeding 4 “will be opposed by Defendants.” ECF No. 16 at 9. But Defendants apparently did not file any 5 opposition in the TTAB proceeding, and Plaintiff’s motion to suspend that proceeding was 6 “granted as conceded” on October 17, 2024. ECF No. 30-1, ¶ 24; ECF No. 30-25 at 2.7 Both 7 parties here use the terms “stay” and “suspend” interchangeably with respect to the TTAB 8 proceeding, and the Court understands the suspension of that proceeding as equivalent to a stay. 9 According to Defendants, discovery in the TTAB proceeding was complete at that time except for 10 Plaintiff’s outstanding production of documents. ECF No. 30 at 10. 11 Plaintiff intends to seek de novo review by a district court, with additional discovery and 12 expert opinion evidence, if the TTAB proceeding continues and Plaintiff does not prevail in 13 opposing Defendants’ trademark registration. ECF No. 35-1 (Wilson Decl.) ¶¶ 8–9. 14 C. The Parties’ Arguments 15 1. Defendants’ Motion to Stay 16 Defendants argue that the Court has broad discretion to stay a case pending the conclusion 17 of administrative proceedings, taking into account factors including whether discovery is 18 complete, whether a trial date has been set, whether a stay will simplify the trial and the issues in 19 dispute, whether a stay would unduly prejudice or disadvantage the non-moving party, and the 20 hardship to the moving party if a stay is not granted. ECF No. 30 at 11. 21 Defendants contend that courts typically stay cases that are still in their early stages to 22 allow for the conclusion of administrative proceedings, relying largely on cases addressing patent 23 reexamination proceedings. Id. at 11–12. Defendants also argue that efficiency favors allowing 24 the TTAB to proceed first, because that body will decide the same question of likelihood of 25 7 The TTAB’s decision refers in a footnote to a forthcoming filing by the “Opposer,” but that is a 26 reference to Vicious Brands (the plaintiff in this case) as the party opposing trademark registration, not to any party opposing Vicious Brands’ motion to suspend proceedings. ECF No. 27 30-25 at 2 n.1; see ECF No. 30-24 at 3 (“Opposer Vicious Brands, Inc. dba Saints & Sinners 1 confusion that will be relevant to Plaintiff’s infringement claims (and related claims) here, thus 2 likely resolving, narrowing, or aiding in the resolution of the issues before the Court. Id. at 12–15, 3 16–17. Defendants assert that the Court should disregard Plaintiff’s fraudulent procurement claim 4 because such a claim only lies against a registration that has already been issued, and Defendants’ 5 registration has not yet been resolved. Id. at 10 n.1, 15–16.8 6 According to Defendants, the TTAB’s suspension of its proceedings is of no consequence 7 because the TTAB’s standard procedure includes both suspending proceedings when a judicial 8 action has been filed and resuming proceedings if the judicial case is stayed, and “[c]ourts 9 regularly grant stays in the interest of judicial efficiency even where the alternate proceeding has 10 been suspended.” Id. at 10, 16. 11 Defendants argue that a stay would not prejudice Plaintiff because the TTAB could resolve 12 the question of likelihood of confusion more quickly than “any realistic trial date in this Action,” 13 and that decision would then aid in the efficient resolution of any remaining issues here. Id. at 17– 14 18. Defendants contend that “Plaintiff waited almost 3 years to attempt to enforce its rights” after 15 Defendants began using their mark,” thus undermining any argument Plaintiff might make of 16 urgency. Id. at 18. In contrast, Defendants argue that starting over with litigation here would 17 cause substantial prejudice to them as a small business, risk inconsistent outcomes, and excuse 18 Plaintiff’s failure to produce documents in the TTAB proceeding. Id. at 18–20. 19 2. Plaintiff’s Opposition 20 As a starting point, Plaintiff contends that Defendants erroneously cite a legal standard that 21 applies specifically to requests for stays pending patent reexaminations, and that the Court should 22 instead apply the three-factor test set by the Ninth Circuit for a “docket management stay” pending 23 the resolution of other proceedings. ECF No. 35 at 8–9 & n.1. 24 Plaintiffs also argue that Congress has not set up the TTAB (or the PTO more generally) as 25 an exclusive arbiter of trademark issues, and that the district court is a more efficient forum to 26

27 8 Asking the Court to hold a claim for relief not viable on a motion to stay is, at best, an unusual 1 resolve the parties’ disputes now that Plaintiff has asserted infringement claims. Id. at 9–10, 12. 2 Plaintiff contends that the right to de novo review of a TTAB decision by a district court (with 3 additional discovery) cuts against the use of that administrative forum, because Plaintiff intends to 4 take advantage of that right if Defendants prevail before the TTAB, which would draw out 5 proceedings longer than if the parties litigated Plaintiff’s claims here. Id. at 10–12. Plaintiff 6 further asserts that discovery already taken in the TTAB proceeding can be used in this case, 7 reducing any potential inefficiency of litigating here after the parties began discovery in that 8 forum. Id. at 12–13. 9 Plaintiff asserts that Defendants have not met their burden to show harm absent a stay, 10 noting Supreme Court and Ninth Circuit precedent requiring the proponent of a stay to “make out 11 a clear case of hardship or inequity in being required to go forward” “if there is even a fair 12 possibility that the stay” will harm another party. Id. at 13 (citation omitted). Plaintiff contends 13 that burden “is heightened in the context of a trademark infringement proceeding,” because courts 14 have recognized the urgency of a trademark owner’s interest in abating purported infringement. 15 Id. at 13–14. Plaintiff argues that the opportunity for de novo review of a TTAB decision could 16 further delay resolution of that proceeding and the resumption of Plaintiff’s infringement claims, 17 and that the TTAB’s current stay of its own proceeding further counsels in favor of continuing 18 with this litigation. Id. at 14–15. In Plaintiff’s view, Defendants have not identified any 19 cognizable hardship. See id. at 13–15. For similar reasons, Plaintiffs also argue that a stay would 20 impair Plaintiff’s interests and would not simplify the issues before this Court. Id. at 15–16. 21 3. Defendants’ Reply 22 Defendants argue in their Reply that although “courts apply differing approaches when 23 delineating the precise legal standard,” the factors they identified in their Motion are relevant 24 considerations that courts use in this context. ECF No. 36 at 5–6. Defendants contend that courts 25 have generally stayed cases filed at a similarly late stage of TTAB proceedings, and that the cases 26 on which Plaintiff relies are distinguishable. Id. at 6–9, 10–12. Defendants ask the Court to 27 disregard Plaintiff’s stated intent to relitigate an adverse TTAB decision as speculative and 1 useful here even if appealed. Id. at 9–10, 14. 2 Defendants contend that Plaintiff would not be prejudice by a stay because the parties’ 3 marks have coexisted for around three years, Plaintiff has not identified instances of actual 4 customer confusion, and Plaintiff can expect a resolution the TTAB proceeding that Plaintiff itself 5 initiated in less than a year. Id. at 12–14. Defendants argue that they would suffer prejudice in the 6 absence of a stay by being “forced to start over in this Court after expending substantial fees 7 litigating the same issues in the TTAB Opposition Proceeding,” and because Defendants are a 8 smaller business than Plaintiff. Id. at 14–15. 9 The parties dispute a number of factual contentions regarding the proceedings before the 10 TTAB and legal or procedural issues regarding the TTAB’s process and authority to manage 11 discovery. See generally ECF No. 36-1 (Phillips Decl.) (disputing assertions by Plaintiffs’ 12 declarants Diana Wilson and Kelly Mulcahy). None of those disputes are material to the outcome 13 of the present Motion. The Court reaches no decisions here as to whether either party behaved 14 appropriately in the TTAB discovery process. 15 III. ANALYSIS 16 A. Legal Standard 17 “A trial court may . . . enter a stay of an action before it, pending resolution of independent 18 proceedings which bear upon the case. This rule applies whether the separate proceedings are 19 judicial, administrative, or arbitral in character, and does not require that the issues in such 20 proceedings are necessarily controlling of the action before the court.” Leyva v. Certified Grocers 21 of Cal., Ltd., 593 F.2d 857, 863–64 (9th Cir. 1979) (citing, e.g., Landis v. N. Am. Co., 299 U.S. 22 248, 254–55 (1936)). “District courts possess ‘broad discretion’ in deciding whether to grant a 23 stay.” Fred G. v. Anthem Blue Cross Life & Health Ins. Co., No. 2:22-cv-05710-FLA (Ex), 2024 24 WL 5356269, at *1 (C.D. Cal. Sept. 3, 2024) (quoting Clinton v. Jones, 520 U.S. 681, 706 25 (1997)). 26 This form of discretionary stay is sometimes called a “docket management stay.” In re 27 PG&E Corp. Sec. Litig., 100 F.4th 1076, 1085 (9th Cir. 2024). The Ninth Circuit has “identified 1 management stay: (1) the possible damage which may result from the granting of a stay; (2) the 2 hardship or inequity which a party may suffer in being required to go forward; and (3) the orderly 3 course of justice measured in terms of the simplifying or complicating of issues, proof, and 4 questions of law.” Id. (cleaned up); see also Lockyer v. Mirant Corp., 398 F.3d 1098, 1110 (9th 5 Cir. 2005) (quoting CMAX, Inc. v. Hall, 300 F.2d 265, 268 (9th Cir. 1962)). 6 As a general rule, the “party requesting a stay bears the burden of showing that the 7 circumstances justify an exercise of that discretion.” Nken v. Holder, 556 U.S. 418, 433–34 8 (2009) (citing, e.g., Landis, 299 U.S. at 255). “In Landis, the Supreme Court made clear that ‘if 9 there is even a fair possibility that the stay . . . will work damage to some one else,’ the party 10 seeking a stay ‘must make out a clear case of hardship or inequity in being required to go 11 forward.’” In re PG&E, 100 F.4th at 1087 (quoting Landis, 299 U.S. at 255) (ellipsis in original). 12 The Ninth Circuit has identified that rule as a meaningful “restriction[] on what otherwise might 13 be an unfettered exercise of discretion,” which can warrant reversal if a district court fails to 14 account for it. Dependable Highway Exp., Inc. v. Navigators Ins. Co., 498 F.3d 1059, 1066 (9th 15 Cir. 2007). “[B]eing required to defend a suit, without more, does not constitute a ‘clear case of 16 hardship or inequity’ within the meaning of Landis.” Lockyer, 398 F.3d at 1112; see also 17 Dependable Highway, 498 F.3d at 1066. 18 B. Inapplicable Legal Standards 19 1. Defendants’ Alternative Standard 20 Defendants’ Motion cites a similar but slightly different set of factors as compared to the 21 Ninth Circuit standard addressed above: “(1) whether discovery is complete and whether a trial 22 date has been set; (2) whether a stay will simplify the issues in question and trial of the case; and 23 (3) whether a stay would unduly prejudice or present a clear tactical disadvantage to the non- 24 moving party.” ECF No. 30 at 11 (quoting Telemac Corp. v. Teledigital, Inc., 450 F. Supp. 2d 25 1107, 1111 (N.D. Cal. 2006)). District courts have used those factors when “determining whether 26 to stay this case pending re-examination” of a patent. Telemac, 450 F. Supp. 2d at 1111; see also, 27 e.g., In re Cygnus Telecomms. Tech., LLC, Pat. Litig., 385 F. Supp. 2d 1022, 1023 (N.D. Cal. 1 above, it was developed by district courts applying Federal Circuit law in a somewhat different 2 procedural posture. See In re Cygnus, 385 F. Supp. 2d at 1023 (N.D. Cal. 2005) (“One purpose of 3 the reexamination procedure is to eliminate trial of that issue . . . or to facilitate trial by providing 4 the district court with the expert view of the PTO . . . .” (quoting Gould v. Control Laser Corp., 5 705 F.2d 1340, 1342 (Fed. Cir. 1983))); ASCII Corp. v. STD Ent. USA, Inc., 844 F. Supp. 1378, 6 1380 (N.D. Cal. 1994) (same). 7 One particularly notable distinction between the two tests is the Telemac factors’ inquiry 8 into whether a stay would result in “undu[e] prejudice or . . . a clear tactical disadvantage to the 9 non-moving party,” see Telemac, 450 F. Supp. 2d at 1111 (emphasis added), which appears to 10 reverse the emphasis from the Supreme Court and Ninth Circuit’s requirement that, upon “even a 11 fair possibility” of harm caused by a stay, the moving party must establish a “clear case of 12 hardship or inequity” if the stay is not granted, see In re PG&E, 100 F.4th at 1087 (quoting 13 Landis, 299 U.S. at 255). Telemac’s test appears more favorable for stay requests, because it 14 places a particular burden on the non-moving party. Whereas Landis and its progeny lighten the 15 burden on the non-moving party and instead place it on the moving party—if it is even fairly 16 possible that the stay will harm another, the moving party must clearly demonstrate hardship or 17 inequity if the stay is not granted. At least one court has nevertheless applied the Telemac factors 18 in considering motions to stay a case pending TTAB proceedings, without addressing the 19 distinction. V.V.V. & Sons Edible Oils Ltd. v. Meenakshi Overseas LLC, No. 2:14-cv-02961-TLN- 20 CKD, 2016 WL 1268008, at *5 (E.D. Cal. Mar. 31, 2016).9 This Court respectfully disagrees with 21 the use of that framework in this context, and instead applies the factors the Ninth Circuit has 22 stated are mandatory to any consideration of a discretionary docket management stay. See In re 23 PG&E, 100 F.4th at 1085. 24 2. Primary Jurisdiction Doctrine 25 Some decisions also discuss requests for stays pending resolution of TTAB proceedings 26 9 In their Reply, Defendants cite several other cases as purportedly applying these factors, but 27 most of those cases instead used some version of the Ninth Circuit’s CMAX factors, albeit often 1 under the doctrine of primary jurisdiction, as distinct from discretionary stays under the standard 2 addressed above. E.g., Branded, LLC v. Vans, Inc., No. SACV 20-2085 JVS (KESx), 2020 WL 3 8385656, at *1–2 (C.D. Cal. Dec. 7, 2020) (finding no basis for a stay under that doctrine, but 4 granting a discretionary docket management stay). The Ninth Circuit has rejected the application 5 of the primary jurisdiction doctrine to TTAB proceedings, at least under most circumstances. 6 Rhoades v. Avon Prods., Inc., 504 F.3d 1151, 1162 (9th Cir. 2007). “Likelihood of consumer 7 confusion, which is relevant to the registration determination under 15 U.S.C. § 1052(d), is a legal 8 standard with which courts have long-standing familiarity in resolving suits arising under both the 9 Lanham Act and the common law of trademark infringement and unfair competition,” such that 10 “the judgment of a technically expert body is not likely to be helpful in the application of these 11 standards to the facts of the particular case.” Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 12 848, 853 (2d Cir. 1988) (cleaned up); see also Rhoades, 504 F.3d at 1164 (endorsing Goya Foods 13 as “persuasive” and “instructive”). 14 Defendants disclaim any intent to pursue that theory here. See ECF No. 36 at 5 (“[T]he 15 cases that Plaintiff extensively relies upon . . . are totally inapposite and easily distinguishable. 16 Rhoades was a primary jurisdiction case, not a discretionary stay case.”); id. at 8 (“Here, 17 Defendants are not claiming [under the primary jurisdiction doctrine] that the TTAB is better 18 equipped to handle the Action.”). This Order therefore does not analyze Defendants’ request for a 19 stay under the primary jurisdiction doctrine. To the extent Defendants nevertheless quote caselaw 20 invoking the TTAB’s “specialized knowledge” or “expertise” to justify a stay, the Court affords 21 that consideration little weight. See ECF No. 30 at 14–15 (quoting Citicasters Co. v. Country 22 Club Commc’ns, No. 97-0678 RJK, 1997 WL 715034, at *2 (C.D. Cal. July 21, 1997); Castro v. 23 Castillo, No. 2:23-cv-00448 TLN CKD (PS), 2024 WL 2922633, at *3 (E.D. Cal. May 15, 2024)). 24 C. Possible Risk of Damage from a Stay 25 The first factor that the Court considers is the harm to Plaintiff if a stay is granted. It bears 26 repeating that precedent calls for only a minimal showing on this factor in order to impose a heavy 27 burden on the party seeking a stay: “‘if there is even a fair possibility that the stay . . . will work 1 inequity in being required to go forward.’” In re PG&E, 100 F.4th at 1087 (quoting Landis, 299 2 U.S. at 255) (emphasis added) 3 Nearly every district court within the Ninth Circuit that has acknowledged the controlling 4 “fair possibility” of damage and “clear case of hardship” standard has a denied a motion to stay 5 pending the resolution of TTAB proceedings. See Expensify, Inc. v. Swappoint AG, No. 22-cv- 6 05720-LB, 2023 WL 8007983, at *4 (N.D. Cal. Nov. 18, 2023); Christian Copyright Licensing 7 Int’l LLC v. Multitracks.com LLC, No. CV-23-00368-PHX-DWL, 2024 WL 3936382, at *2, *4 8 (D. Ariz. Aug. 26, 2024); Hanginout, Inc. v. Google, Inc., No. 13cv2811 AJB (NLS), 2015 WL 9 11254689, at *5–6 (S.D. Cal. June 3, 2015); Calista Enters. Ltd. v. Tenza Trading Ltd., No. 3:13- 10 CV-01045-SI, 2013 WL 6080184, at *5–6 (D. Or. Nov. 19, 2013); RML Jackson, LLC v. Excelled 11 Sheepskin & Leather Coat Corp., No. CV 09-7823 DSF (CWc), 2010 WL 11597435, at *2 (C.D. 12 Cal. Apr. 7, 2010); Hansen Beverage Co. v. Cytosport, Inc., No. CV-09-0031-VBA(AGRx), 2009 13 WL 882414, at *3 (C.D. Cal. Mar. 23, 2009); Salu, Inc. v. Original Skin Store, No. CIV. S-08- 14 1035 FCD/KJM, 2008 WL 11389040, at *3 (E.D. Cal. Oct. 16, 2008) (a case Defendants 15 erroneously cite as having granted a stay, ECF No. 30 at 16, when the court in fact denied the 16 stay).10 17 A leading treatise states that “[w]hen related proceedings are pending in both a court 18 infringement case and in a [TTAB] opposition or cancellation case, a court will almost always 19 refuse to stay and suspend court proceedings to wait for the [TTAB] decision.” See Christian 20 Copyright, 2024 WL 3936382, at *3 (quoting 5 McCarthy on Trademarks and Unfair Competition 21 § 32:48 (5th ed.)) (final alternation in original). That may be an overstatement, as Defendants cite 22

23 10 A large majority of decision on motions to stay pending TTAB proceedings from outside the Ninth Circuit that acknowledge this standard have also denied such requests. See O & M Halyard, 24 Inc. v. Sri Trang USA, Inc., No. 4:22-cv-622-SDJ, 2023 WL 307465, at *1, *3 (E.D. Tex. Jan. 18, 2023); ADP, Inc. v. Wise Payments Ltd., No. CV 21-12457 (JXN) (JSA), 2022 WL 2833819, at *3 25 (D.N.J. July 19, 2022); Int’l Watchman Inc. v. Barton Watchbands Holdco, LLC, No. 1:19-cv- 2310, 2021 WL 855119 (N.D. Ohio Mar. 8, 2021); SafeRack, LLC v. Bullard Co., No. 2:17-cv- 26 1613-RMG, 2018 WL 3696557, at *3 (D.S.C. Aug. 3, 2018); SEFAC S.A. v. SEFAC, Inc., No. CV 15-3406, 2015 WL 6103267, at *3 (E.D. Pa. Oct. 16, 2015); Exclusive Supplements, Inc. v. 27 Abdelgawad, No. CIV.A. 12-1652, 2013 WL 160275, at *1 (W.D. Pa. Jan. 15, 2013); Nutraquest, 1 a number of cases taking the opposite approach. Most of those cases, however—like Defendants’ 2 briefs here—do not acknowledge the controlling Landis standard requiring a clear case of hardship 3 or inequity in order to overcome even a possibility of harm from a stay. E.g., Castro, 2024 WL 4 2922633, at *2; Aero AG Holdings, LLC v. Summit Footwear Co., Ltd., No. CV 20-16655 (WJM), 5 2021 WL 4148218, at *2 (D.N.J. Sept. 13, 2021); Shaf Int’l, Inc. v. Ultimate Leather Apparel, 6 Inc., No. CV 20-2569 (JMV)(MF), 2021 WL 409757, at *3 (D.N.J. Feb. 5, 2021); Branded, 2020 7 WL 8385656, at *3; V.V.V. & Sons, 2016 WL 1268008, at *4–6; Santana’s Grill, Inc. v. 8 Castaneda, No. 03-CV-2340-L(RBB), 2004 WL 7331445 (S.D. Cal. June 3, 2004); Citicasters, 9 1997 WL 715034. This Court finds those decisions generally unpersuasive for failure to address 10 controlling precedent. 11 As far as this Court is aware, only one in-circuit decision that (briefly) acknowledged the 12 “fair possibility” of harm and “clear case of hardship or inequity” requirement in its discussion of 13 the legal standard nevertheless granted a stay, without discussing that standard specifically in its 14 analysis of harm to either the proponent or opponent of the stay. Lodestar Anstalt v. Bacardi & 15 Co., No. CV 16-06411-GHK (FFMx), 2016 WL 7635955, at *2, *4 (C.D. Cal. Nov. 16, 2016). 16 Lodestar may have applied a more forgiving standard for the defendant’s showing of 17 hardship based on its conclusion that the plaintiff did “not provide any evidence indicating that it 18 would suffer harm in the event of a stay,” aside from attorney arguments regarding harm from 19 infringement, which the court afforded “no weight in the equitable analysis.” Id. at *4 & n.2. Its 20 consideration of that issue relied entirely on three decisions denying or reversing preliminary 21 injunctions. See id. (citing Lydo Enters., Inc. v. City of Las Vegas, 745 F.2d 1211, 1213 (9th Cir. 22 1984); Nutrition 21 v. United States, 930 F.2d 867, 872 (Fed. Cir. 1991); Main-Amherst Bus. 23 Ass’n, Inc. v. Adams, 461 F. Supp. 1077, 1082 (W.D.N.Y. 1978)). In doing so, the Lodestar court 24 appears to have flipped the burden of proof, and equated the need for an affirmative showing of 25 irreparable injury to obtain a preliminary injunction with the threshold question on a motion to 26 stay of whether “there is even a fair possibility that the stay . . . will work damage to some one 27 else,” see Lockyer, 398 F.3d at 1112. This Court therefore respectfully disagrees with Lodestar’s 1 Notably, although not addressed by either the parties here or the court in Lodestar, the 2 party opposing a stay in the Ninth Circuit’s Lockyer case offered no evidence with its briefs to the 3 district court, instead resting on attorney argument regarding the nature of the claims at issue and 4 the relief sought. California ex rel. Lockyer v. Mirant Corp., No. C-02-1787-VRW, Mot. for 5 Determination of Applicability of Exemption to Automatic Stay, ECF No. 43 (N.D. Cal. Aug. 27, 6 2003); id., Reply, ECF No. 56 (N.D. Cal. Oct. 16, 2003). The Ninth Circuit nevertheless reversed 7 the district court’s decision granting a stay, relying in large part on the plaintiff’s request for 8 injunctive relief to distinguish the case from CMAX—a case where a plaintiff “alleged no 9 continuing harm and sought no injunctive or declaratory relief” but instead “sought only 10 damages,” and the Ninth Circuit declined to disturb a stay. Lockyer, 398 F.3d at 1110, 1112 11 (discussing CMAX, 300 F.2d at 268–69). The Lockyer decision did not inquire as to the plaintiff 12 attorney general’s likelihood of success on the claim for injunctive relief, instead discussing the 13 potential harm “[i]f the Attorney General’s Clayton Act claim has merit,” and finding “more than 14 a ‘fair possibility’ of harm to the Attorney General.” See id. at 1112 (emphasis added). 15 That case also involved other factors militating against a discretionary stay, like the Ninth 16 Circuit’s conclusion that the parallel bankruptcy proceeding was “unlikely to decide, or to 17 contribute to the decision of, the factual and legal issues before the district court.” Id. at 1113. Its 18 discussion of the plaintiff’s request for injunctive relief in the context of the Landis standard, as 19 summarized above, is nevertheless instructive. 20 Here, Plaintiff seeks injunctive relief, including an injunction against Defendants’ 21 continued use of a competing mark that is allegedly confusing to Plaintiff’s customers. See ECF 22 No. 1 (Compl.) at 19, ¶ 1 (Prayer for Relief). That relief is not available from the TTAB; “only 23 the district court can award damages or injunctive relief in an infringement action.” Rhoades, 504 24 F.3d at 1164 n.12. Courts have recognized that in trademark infringement cases, “‘there is often 25 some urgency’ in continuing the litigation. . . because ‘[o]ngoing harm, possibly irreparable, may 26 be accruing’”—without inquiring as to the merits or likelihood of success of the claim. Calista 27 Enters., 2013 WL 6080184, at *5 (quoting PHC, Inc. v. Pioneer Healthcare, Inc., 75 F.3d 75, 80 1 Although Defendants vigorously dispute the merits of whether the marks are confusing, 2 they apparently acknowledge that Plaintiff’s likelihood-of-confusion argument is not frivolous. 3 ECF No. 36 at 9 (asserting, in response to Plaintiff’s stated intent to appeal any adverse decision 4 by the TTAB, that “Plaintiffs might win in the TTAB, not lose”). There is also no dispute that 5 Defendants have sold at least some products bearing the mark at issue to customers in California, 6 where Plaintiff purportedly conducts much of its business. That is enough to meet the low bar of 7 “a fair possibility” that a stay would harm Plaintiff by delaying its ability to obtain injunctive 8 relief and thus prolonging the confusion of current or potential customers. See Lockyer, 398 F.3d 9 at 1112. In reaching that conclusion, the Court emphasizes that it has made no finding of whether 10 Plaintiff is likely to prevail in showing likelihood of confusion (or any other element of its claims). 11 Other cases on which Defendants rely do not show that a contrary result is warranted here. 12 In Branded, LLC v. Vans, Inc., for example, the Central District of California held that the plaintiff 13 would not be damaged by a stay when the plaintiff had waited twelve years after learning of the 14 alleged infringement before bringing suit, and trial briefing before the TTAB was set to close only 15 “more than four months” from when the court issued its order. Branded, 2020 WL 8385656, at 16 *3. As noted above, that case failed to address the controlling standard that “even a fair 17 possibility” of harm can be enough to deny a stay. It is also distinguishable on its facts. 18 Although Defendants assert here that Plaintiff “waited almost 3 years to enforce its rights,” 19 ECF No. 30 at 18, Plaintiff offers an uncontroverted declaration that it only learned of Defendants’ 20 use of the purportedly infringing mark in September of 2023, ECF No. 35-1 (Wilson Decl.) ¶ 5. 21 Plaintiff sent a cease-and-desist letter the following month, ECF No. 35-2 (Mulcahy Decl.) ¶ 2, 22 and initiated opposition proceedings a few months later in January of 2024, ECF No. 30-1 (Mobin 23 Decl.) ¶ 3. Plaintiff filed this action in early August of 2024, see ECF No. 1, based in part on 24 Defendants’ continued use of the mark at issue after Plaintiff initiated the opposition proceeding, 25 ECF No. 35-1, ¶ 7. Plaintiff has not slept on its rights in the same manner as the plaintiff in 26 Branded, and the Court declines to discount Plaintiff’s interest in resolving its infringement claims 27 promptly. Cf. Monster Energy Co. v. My Energy Monster, Inc., No. 8:20-cv-1269-T-35SPF, 2020 1 ‘prompt adjudication’ of its trademark infringement claims is undercut by its failure to bring this 2 action for over five years [after the start of TTAB proceedings].”). 3 The delay imposed by a stay here would also be greater than the approximately four 4 months in Branded. By Defendants’ own estimate, it would take “nine to ten months” from when 5 this Court granted a stay until the TTAB matter was fully briefed and taken under submission. 6 ECF No. 36-1 (Phillips Decl.) ¶ 9. Although it may have been nearing “the eve of trial” based on 7 the TTAB’s extended trial-on-the-papers procedure, that characterization by Defendants is 8 somewhat misleading for a dispute that would not have been submitted for decision for the better 9 part of a year. See ECF No. 30 (Mot.) at 12–13. That is a meaningful delay before Plaintiff would 10 be able to resume proceedings in this Court towards—if it prevails—an injunction against 11 Defendants’ purported infringement. The Branded court did not address whether the plaintiff 12 there sought injunctive relief. See generally 2020 WL 8385656. Nor did that court account for 13 the further delay that could result from potential district court review of a TTAB decision in its 14 evaluation of harm to the plaintiff, id. at *3, although it addressed that issue separately in its 15 discussion of judicial efficiency, id. at *4. 16 The Supreme Court’s decision in B & B Hardware sheds light on the effects, and 17 opportunities for review, of a TTAB reexamination decision. That case concerned a dispute 18 between B & B, which used the trademark SEALTIGHT for fasteners in the aerospace industry, 19 and Hargis, which used the trademark SEALTITE for building screws. See 575 U.S. at 141. The 20 “twists and turns in the SEALTIGHT versus SEALTITE controversy” were sufficiently 21 “labyrinthine” to “fill a long, unhappy book.” Id. at 145. But as was relevant to the case before 22 the Supreme Court, B & B opposed registration of Hargis’s mark, and “the TTAB sided with 23 B & B,” holding that the similarity between the two marks would likely cause confusion. Id. at 24 146. 25 In the meantime, B & B had also sued Hargis for trademark infringement in a district 26 court. Id. The TTAB reached its likelihood-of-confusion decision before the district court, but the 27 district court declined to give any preclusive effect to that decision, and “a jury returned a verdict 1 holding that “likelihood of confusion for purposes of registration is the same standard as 2 likelihood of confusion for purposes of infringement, id. at 154, and that unchallenged TTAB 3 decisions can be preclusive in subsequent infringement actions if they satisfy ordinary principles 4 of issue preclusion, although they will not always meet that test, see id. at 147–53, 158–60. 5 In holding that TTAB decisions can sometimes be preclusive on separate suits for 6 infringement and related claims, such as the present case before this Court, the Supreme Court did 7 not supplant the statutory right to de novo district court review of a TTAB registration decision or 8 suggest that any preclusive effect of the administrative decision would apply in that proceeding. 9 See id. at 151–52; 15 U.S.C. § 1071(b); Paleteria La Michoacana, Inc. v. Productos Lacteos 10 Tocumbo S.A. DE C.V., 188 F. Supp. 3d 22, 37–38 (D.D.C. 2016) (“[T]he Court is confident, 11 particularly after the Supreme Court’s clarification in B & B Hardware, that the proper standard of 12 review is de novo.”), aff’d, 743 F. App’x 457 (D.C. Cir. 2018).11 Neither party here disputes that 13 whichever party loses before the TTAB could pursue de novo review in a district court. 14 Accordingly, if this Court stayed this case and the TTAB resumed its proceedings, the 15 matter would likely be submitted to the TTAB in around nine or ten months. ECF No. 36-1 16 (Phillips Decl.) ¶ 9. Some time after that, the TTAB would issue a decision. The losing party 17 could then seek de novo review by a district court, in a case that would likely take at least year to 18 resolve, and potentially much longer. Plaintiff has stated that it would pursue such review if 19 Defendants prevailed before the TTAB. ECF No. 35-1 (Wilson Decl.) ¶ 8. Defendants have not 20 ruled out the possibility that they would do so if Plaintiff prevailed. Once that case was resolved, 21 Plaintiff could pick up where it left off here, assuming the losing party did not appeal the district 22 court’s decision to the court of appeals. When they returned to this Court, the parties would have 23 a likelihood-of-confusion ruling that might have preclusive effect sufficient to streamline the 24 case—or might simply spur further litigation over whether it has preclusive effect. See B & B 25 Hardware, 575 U.S. at 153 (“[F]or a great many registration decisions issue preclusion obviously 26

27 11 Se e also Paleteria La Michoacana, 188 F. Supp. 3d at 38 n.11 (“To the extent that 1 will not apply because the ordinary elements will not be met.”). Defendants have given no 2 indication that they would cease using their mark in the interim. 3 That delay is sufficient to show “a fair possibility that the stay will work damage to” 4 Plaintiff. In re PG&E, 100 F.4th at 1087 (cleaned up). The factor of potential harm to Plaintiff 5 weighs against a stay. 6 D. Hardship or Inequity in Denying a Stay 7 With a possibility of a stay causing damage established, Defendants must “must make out 8 a clear case of hardship or inequity in being required to go forward.” In re PG&E, 100 F.4th at 9 1087 (quoting Landis, 299 U.S. at 255). Defendants have not met that burden. 10 As a starting point, “being required to defend [this] suit, without more, does not constitute 11 a ‘clear case of hardship or inequity.’” Lockyer, 398 F.3d at 1112. Unnecessarily duplicative 12 proceedings might be such a hardship, but Defendants have not shown that any meaningful 13 duplication of effort would result from a stay. 14 Defendants cite caselaw finding “the need to litigate the same issues in two separate fora to 15 be a hardship.” WheelImage Corp. v. Axial Mfg., No. 8:23-cv-02206-JVS (ADS), 2024 WL 16 3086679, at *2 (C.D. Cal. May 8, 2024); Branded, 2020 WL 8385656, at *3; see ECF No. 36 at 17 14. Even aside from the fact that those decisions do not address the controlling “clear case of 18 hardship” standard, denying a stay in the present case would not require the parties to litigate the 19 same issues in separate fora, because the TTAB has already suspended its proceedings pending the 20 resolution of this litigation. See, e.g., NCAA v. Ken Grody Mgmt., Inc., No. SACV 18-00153 JVS 21 (ASx), 2018 WL 5099489, at *2 (C.D. Cal. Apr. 13, 2018) (“Given that the TTAB has already 22 suspended its own proceedings and that the instant action involves infringement claims that cannot 23 be resolved by the TTAB, the Court declines to stay or dismiss this action in favor of the TTAB 24 proceedings.”); CTF Dev., Inc. v. Penta Hosp., LLC, No. C 09-02429 WHA, 2009 WL 2524476, 25 at *2 (N.D. Cal. Aug. 17, 2009) (“Given that the TTAB has already stayed its own proceeding, the 26 best course of action is to allow the parties to take reasonable discovery and to allow defendant to 27 present the cancellation issues at summary judgment and perhaps trial.”). 1 Court granted a stay, and some courts have stayed cases notwithstanding stays already entered by 2 the TTAB or other administrative bodies, neither outcome requires the parties to litigate 3 simultaneously in two fora. Either the TTAB proceedings will remain suspended and this case 4 will proceed first, or this case will be stayed and the TTAB will proceed first. Defendants have 5 not shown a clear case of hardship or inequity from choosing the former of those two options. 6 Along the same lines, Defendants’ assertion that proceeding here creates a “risk of inconsistent 7 outcomes” fails to explain why that risk is any higher than if this case were stayed and the TTAB 8 went first. See ECF No. 30 at 19–20. Defendants also have not argued that they have any current 9 need to enforce their trademark against anyone else, such that delay in finalizing their registration 10 before the TTAB while this case proceeds impairs their ability to enforce their rights. To the 11 extent Defendants assert they face greater prejudice than Plaintiff due to a disparity in financial 12 resources, ECF No. 30 at 19, they cite neither evidence showing that to be true nor legal authority 13 that it would be an appropriate consideration. 14 Nor have Defendants identified any “duplicative proceedings before the TTAB and this 15 court,” cf. Branded, 2020 WL 8385656, at *3, when the only “proceedings” that occurred before 16 the TTAB consisted of taking discovery that presumably could also be used in this litigation. “[I]t 17 is not unusual for parties opposing one another in two separate cases to agree that any discovery 18 provided in one such case will be deemed provided in the other.” Rogozinski v. Reddit, Inc., No. 19 23-cv-00686-MMC, 2023 WL 4297583, at *5 (N.D. Cal. June 30, 2023) (rejecting an argument 20 that discovery taken in a TTAB proceeding would need to be repeated in a district court action); 21 see also Branded, 2020 WL 8385656, at *3 (acknowledging, while granting a stay, “that at least 22 some of the information gained through TTAB discovery would be applicable to the case at 23 hand”); Santana’s, 2004 WL 7331445, at *1 (asserting, in granting a stay, that “there would be 24 little in the way of new discovery required” when district court proceedings later resumed). The 25 Court expects that the parties here will be able to use discovery already taken in the TTAB 26 proceeding, thus reducing or eliminating any need for duplicative discovery. 27 Defendants seek to distinguish Judge Chesney’s decision denying a stay in Rogozinski v. 1 advanced stage.” ECF No. 36 at 14–15 (quoting Rogozinski v. Reddit, Inc., No. 23-cv-00686- 2 MMC, 2023 WL 4297583, at *4 (N.D. Cal. June 30, 2023)). But there, like here, “the parties 3 [had] conducted some written discovery, . . . no expert discovery [had] been conducted, . . . and no 4 dispositive motions [had] been filed.” Rogozinksi, 2023 WL 4297583, at *4. The posture is not 5 identical: the parties there had taken no depositions, as compared to one deposition that occurred 6 here; and TTAB discovery had not closed in that case, while it had at least nearly closed in this 7 one. See id. But especially when the TTAB does not appear to have resolved any disputes 8 between the parties in this case, the similarities between the two cases are more significant than 9 the differences. 10 Lodestar, apparently the only in-circuit case to both acknowledge the controlling legal 11 standard and grant a stay pending TTAB proceedings, addressed hardship to the party seeking the 12 stay as follows:

13 The third factor we consider is “the hardship or inequity which a party may suffer in being required to go forward.” CMAX, 300 F.2d at 268. 14 Bacardi submits no evidence that it would suffer hardship if this case went forward. However, it would clearly be inequitable for this case 15 to proceed. Lodestar initiated the TTAB proceeding in April 2014. Thereafter, Lodestar served Bacardi & Co. with numerous requests 16 for admission, interrogatories, and requests for document production, and the parties prepared dispositive motions. It was not until the day 17 before dispositive motions were due that Lodestar filed its complaint in our court. After dragging Bacardi & Co. through more than two 18 years of litigation before TTAB, Lodestar should not be allowed to start all over again in a different forum on the eve of TTAB’s decision. 19 20 Lodestar, 2016 WL 7635955, at *4. 21 Unlike in that case, there is no indication that the parties here wasted their efforts preparing 22 dispositive motions before the TTAB—or any other motions, besides Plaintiff’s unopposed 23 motion to suspend—before Plaintiff filed this action and the TTAB suspended its proceedings.12 24 Instead, they merely conducted discovery that is likely also to be relevant here, which does not 25 12 The Court takes judicial notice of the docket for the TTAB proceeding as a matter of public 26 record. See U.S. Patent & Trademark Office, Trademark Trial and Appeal Board Inquiry System, Opposition No. 91289269, available at https://ttabvue.uspto.gov/ttabvue/v?pno=91289269. That 27 docket shows no motions besides Plaintiff’s motion to suspend, and no opposition to that motion 1 clearly impose any hardship or inequity on Defendants. The parties would not, in any meaningful 2 sense, be required to “start all over again” in this Court. Cf. id. 3 Some district court cases from outside the Ninth Circuit have also granted a stay despite 4 acknowledging the need for a “clear case of hardship or inequity,” including the District of 5 Delaware’s decision in Tigercat International, Inc. v. Caterpillar Inc., No. 16-cv-1047-GMS, 6 2018 WL 2049816, at *6 (D. Del. May 2, 2018). That case was filed at a similar stage of the 7 TTAB proceedings as here, “only ten days before the close of . . . discovery and two months 8 before the start of trial before the TTAB.” Id. But that TTAB proceeding involved “three-years of 9 contentious discovery,” with “[d]iscovery and procedural disputes between the parties during the 10 opposition proceedings require[ing] intervention by the TTAB and two Federal District Court 11 Judges from the Eastern District of Pennsylvania and the Western District of Arkansas,” causing 12 the “TTAB [to] extend[] the discovery and trial dates seven times.” Id. at *1, *6. Here, TTAB 13 proceedings lasted less than a year, and do not appear to have involved any contested motions. 14 Assuming for the sake of argument that Tigercat involved a sufficiently “clear case of hardship or 15 inequity” to warrant a stay, the case before this Court does not involve nearly the same degree of 16 delay and potentially wasted effort—if any, when discovery from the TTAB process is likely 17 usable here—as what the District of Delaware found “unacceptable” in the case before it. See id. 18 at *6.13 19 In another out-of–circuit case, a district court recited the Landis standard requiring “a clear 20 case of hardship or inequity” to grant a stay “if there is even a fair possibility” that the stay would 21 cause harm, but did not specifically identify any harm or inequity in proceeding, and instead 22 appears to have rested its decision to grant a stay largely (and perhaps exclusively) on 23 considerations of judicial efficiency. Taco Mamacita, LLC v. Wilco Holdings, LLC, No. 1:21-cv- 24 62, 2022 WL 16542580, at *19 (E.D. Tenn. Oct. 29, 2022). It is difficult to reconcile that analysis 25

26 13 The district court case in Tigercat was also a declaratory relief action brought by the party accused of infringement rather than the party asserting infringement, and the court found the 27 plaintiff’s argument that a stay would “‘perpetuate [a] cloud’ over its mark” unpersuasive. 2018 1 with the Supreme Court’s rule that, if there is even a possibility of harm, the party seeking a stay 2 “must” demonstrate clear hardship or inequity in proceeding. Landis, 299 U.S. at 255. At least in 3 the Ninth Circuit, the efficiency factor “standing alone is not necessarily a sufficient ground to 4 stay proceedings.” In re PG&E, 100 F.4th at 1085 (citation omitted). 5 Finally, while Plaintiff’s failure to produce documents during the TTAB proceeding does 6 not redound in Plaintiff’s favor, the Court finds no clear inequity in Plaintiff choosing to pursue 7 infringement litigation several months after initiating an opposition proceeding, when Defendants 8 have continued to use the purportedly infringing mark. (To be clear, and as noted above, this 9 Order should not be construed as expressing any opinion on the merits of Plaintiff’s claims.) 10 Whatever prejudice Defendants might have suffered from Plaintiff’s previous failure to produce 11 documents can be remedied through discovery in this case. As a starting point, the Court is 12 inclined to require that Plaintiff promptly produce the documents it previously agreed to produce 13 in the TTAB proceeding if it has not done so already, and will address that issue at the upcoming 14 case management conference. 15 Plaintiff has demonstrated the possibility that staying this case would harm its interest in 16 promptly resolving its infringement claims, and thus, Defendants must make a clear showing of 17 hardship or inequity to justify their request for a stay. For the reasons discussed above, they have 18 not met that burden. That alone is likely sufficient reason to deny Defendants’ Motion. The Court 19 nevertheless briefly addresses the final factor of judicial efficiency and the orderly course of 20 justice below. 21 E. Orderly Course of Justice 22 The third factor that courts in the Ninth Circuit must weigh when considering a 23 discretionary stay is “the orderly course of justice measured in terms of the simplifying or 24 complicating of issues, proof, and questions of law which could be expected to result from a stay.” 25 Lockyer, 398 F.3d at 1110 (quoting CMAX, 300 F.2d at 268). Here, those considerations overlap 26 significantly with the potential prejudice to the parties, both of whom raise concerns about delay 27 and inefficiency. As is likely clear from the Court’s discussion above regarding the potential for 1 As discussed above, “TTAB proceedings are subject to relitigation” through de novo 2 review by a district court, “which makes deferral to the TTAB inefficient where pending 3 infringement claims are at issue.” Calista Enters., 2013 WL 6080184, at *4. Unlike a typical 4 appeal, that process for review may involve additional “discovery and . . . new evidence not 5 presented originally to the USPTO.” See Snap Inc. v. Vidal, 721 F. Supp. 3d 1070, 1073 (C.D. 6 Cal. 2024). If the Court entered a stay, the delay to this case might extend well beyond the nine or 7 ten months that Defendants expect the TTAB would need to reach a decision, and instead require 8 the resolution of a separate district court action and any subsequent appeal. Accordingly, “if, as 9 here, a potential infringement claim requires the district court to resolve much or all of the 10 registration issues, it would waste everyone’s time not to settle the registration issue now, in 11 district court.” Rhoades, 504 F.3d at 1165 (cleaned up);14 see also Beijing Tong Ren Tang (USA), 12 Corp. v. TRT USA Corp., No. C-09-00882 RMW, 2009 WL 5108578, at *3 (N.D. Cal. Dec. 18, 13 2009) (holding, where a plaintiff “alleged infringement of its trademarks,” that “it would be more 14 efficient to settle the registration issues along with the infringement issues in the instant case 15 rather than staying the case pending resolution of the Trademark Board Action”). 16 Depending how the issues are decided, it is possible that neither this case nor the TTAB 17 proceeding would resolve the dispute pending in the other forum. For example, this case might be 18 resolved on other grounds besides likelihood of confusion, the uses of Defendants’ mark stated in 19 their application (and thus before the TTAB) might prove to be distinct from the full scope of 20 actual uses relevant to Plaintiff’s infringement claims, or some other procedural distinction might 21 stand in the way of issue preclusion. It is also possible that a decision in either forum could 22 substantially narrow the disputes remaining in the other forum or inform their resolution. But this 23

24 14 Rhoades, which considered arguments based on the primary jurisdiction doctrine, is not directly on point here, where Defendants disclaim any argument under that doctrine. See ECF No. 36 at 5, 25 8. Lodestar also distinguished Rhoades as not addressing a situation where “the TTAB proceeding ha[d] the potential to moot [the plaintiff’s] principal claim,” see 2016 WL 7635955, at 26 *4, which Defendants contend the TTAB could also do here if it finds no likelihood of confusion, ECF No. 30 at 14. The Court does not treat Rhoades as dispositive of the present Motion, but 27 finds aspects of its reasoning informative. 1 Court is capable of resolving more of the issues in dispute than the TTAB, and the Court’s 2 || decision would not generally be subject to relitigation through a de novo proceeding with new 3 || discovery. 4 This Court’s schedule may also permit a trial sooner than the parties anticipate. Cf ECF 5 || No. 30 (Mot.) at 18 (asserting that the close of trial briefing previously set by the TTAB for July 6 || “is undoubtedly sooner than any realistic trial date in this Action”); ECF No. 35 (Opp’n) at 11-12 7 (noting a median of around thirty-five months to resolve cases through trial in this district). This 8 case may be particularly suitable for an expedited schedule when the parties have already 9 || completed at least some relevant discovery through the TTAB proceeding, and when “summary 10 || judgment is generally disfavored in the trademark arena.” Snap, 721 F. Supp. 3d at 1074 (quoting ll Interstellar Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1109 (9th Cir. 1999)). The parties 12 should be prepared to address the possibility of an expedited trial at the upcoming case 5 13 management conference. 14 As discussed above, most cases applying the controlling legal standard have denied 15 requests to stay judicial proceedings pending the resolution of administrative proceedings. The 16 || Court recognizes that some of those cases concerned somewhat different facts and procedural 3 17 postures than are present here, and that other cases have granted such motions. The fact remains 18 that TTAB can address only limited issues, and its decision is subject to more extensive 19 || relitigation than a judgment of this Court. The Court finds that under the circumstances of this 20 || case, the orderly course of justice favors proceeding with this litigation. 21 || IV. CONCLUSION 22 For the reasons discussed above, Defendants’ Motion to Stay is DENIED. 23 IT IS SO ORDERED. 24 Dated: March 10, 2025 25 26 Ls, | sarin — 7 BA J. CISNEROS ited States Magistrate Judge 28