United States District Court, D. Arizona
G. CAMPBELL SENIOR UNITED STATES DISTRICT JUDGE
LLC sued Defendant Kimberly Wolf for trademark infringement
and tortious interference. Doc. 1, No. CV-17-00214. Ms.
Wolf's company, Liv-IT!, LLC, filed a separate suit
against FLP seeking cancellation of FLP's trademark and
declaratory judgment of no trademark infringement. Doc. 1,
No. CV-17-00773. The cases have been consolidated. Ms. Wolf
and Liv-IT!, LLC will be referred to in this order as the
parties have moved for summary judgment. Docs. 82; 92. The
Wolf parties also have filed a motion to strike and for
sanctions. Doc. 109. The motions are fully briefed, and no
party requests oral argument. For the reasons stated below,
the Court will deny the motions and set this case for trial.
parties dispute most of the facts. For that reason, the Court
discusses each side separately. This background section
includes key facts from the parties' factual summaries,
even when unsupported. The Court notes that FLP, in violation
of Local Rule of Civil Procedure 56.1, failed to file a
controverting statement of facts. Doc. 102 at 7. But the Wolf
Parties also violate Local Rule 56.1 by providing only
general citations to large exhibits, rather than citing to
“a specific admissible portion of the record”
that supports each factual assertion. LRCiv 56.1(a), (b); see,
e.g., Doc. 83 ¶¶ 15, 17, 21, 22. Because both
sides have failed to comply with the local rules, the Court
will not simply credit the Wolf Parties' statements as
sells household products to retail stores that resell
directly to consumers. It sells its products under many names
and trademarks. Doc. 99-1 ¶¶ 3, 5. FLP asserts that
its CEO conceived of and developed the “LIVIT”
trademark in 2001 by shortening and combining the phrases
“live it up” and “live life to the
fullest.” Id. ¶ 9. FLP decided to move
forward with the mark in January 2015 and assigned it to
several items, which FLP ordered from a Chinese supplier on
September 14, 2015 (“the NAIE purchase order”).
Docs. 93 ¶ 3; 99-1 at 33. FLP contends that it ordered
more than 36, 000 products with the LIVIT mark and circulated
sell sheets and product exemplars to customers, all of which
displayed the mark. See Docs. 93 ¶ 3; 99-1
¶ 12; 99-1 at 33-43. The NAIE purchase order products
arrived in country in December 2015 and were subsequently
sold to retail customers. Doc. 93 ¶ 6.
September 29, 2015, FLP filed an intent-to-use-in-commerce
trademark application with the United States Patent and
Trademark Office (“USPTO”) for the mark
“LIVE IT.” See Docs. 93 ¶ 4; 99-1
at 14-20. On November 10, 2015, FLP filed its
actual-use-in-commerce application for the mark
“LIVIT.” Docs. 93 ¶ 4; 99-1 at 22-31. The
application states that FLP used the mark in commerce
“at least as early as 10/01/2015.” Doc. 99-1 at
26. It attached pictures of a scrubber brush and an air
freshener with the LIVIT mark. Id. at
to FLP, tens of thousands of products bearing the LIVIT mark
have been sold in retail stores. FLP supports this assertion
by providing copies of invoices to Amazon, Piggly Wiggly,
Food City Distribution Centers, and other large purchasers,
showing sales of the item numbers that, according to FLP,
bore the LIVIT mark. Doc. 99-1 ¶ 7; Doc. 96-1 at 2-11.
FLP's records indicate that it sold 38, 860 LIVIT items
between December 2015 and March 2017. Doc. 93 ¶ 8.
February 2016, a third party informed FLP that the Wolf
Parties were using a Liv-IT! mark to sell household products
to retailers. Doc. 93 ¶ 11. FLP suspended production of
the LIVIT products and related marketing activities because
of a potential challenge to its mark. Id.; Doc. 99-1
¶ 5. FLP contacted the Wolf Parties regarding possible
trademark infringement. Doc. 93 ¶ 12. The Wolf Parties
answered that Liv-IT!, LLC started using the Liv-IT! mark
before FLP used the LIVIT mark.
March 23, 2016, the USPTO approved the first application for
FLP's LIVE IT mark. Doc. 93 ¶ 15. The USPTO
suspended, and ultimately denied, the Wolf Parties'
application for the LIV-IT! mark, finding FLP's pending
application barred the Wolf Parties' registration. Docs.
93 ¶¶ 14-16; 99-1 at 58-65. On October 4, 2016, the
USPTO granted FLP's second application for the LIVIT
mark. Docs. 93 ¶ 20; 95-1 at 7.
to FLP, the Wolf Parties continued to use the Liv-IT! mark on
products after the USPTO denial. See Doc. 93 ¶
29. Further, Liv-IT!, LLC used the trademark registration
symbol “®” next to Liv-IT! on its website.
Id. ¶ 21.
The Wolf Parties' Facts.
LLC was organized under Illinois law on August 26, 2015. Doc.
83 ¶ 8. The company markets and sells various household
and other products. Id. Before September 29, 2015,
Liv-IT!, LLC used its mark to issue purchase orders, pay for
manufacturing, register for trade shows, lease office space,
obtain insurance, and obtain UPC codes for products.
Id. ¶ 9; Doc. 115.
Wolf Parties contend that on or around September 15, 2015,
Liv-IT!, LLC hired an independent graphic designer who
developed product packaging, disposable food storage
containers, lint rollers, cleaning products, and air care
products each bearing the Liv-IT! mark. Doc. 83 ¶ 17.
The graphic designer delivered this work to Liv-IT!, LLC on
or around September 28, 2015. Id. The Wolf Parties
then submitted purchase orders for products that would bear
the Liv-IT! mark. Id. ¶18; Doc. 115-1 at 36
(purchase order stating items should have Liv-IT! logo).
These products were offered to Liv-IT!, LLC customers on or
around September 21, 2015. Doc. 83 ¶ 20. Liv-IT!,
LLC's second sale of the products was on October 29,
2015. Id. The items were delivered by a Chinese
manufacturer in early November 2015. Id. ¶ 19.
Wolf Parties contend that FLP learned of Liv-IT!, LLC and its
uses of the Liv-IT! mark on September 15, 2015. Id.
¶ 22. Thus, FLP's September 29, 2015 application for
phonetically similar marks was done to prevent Liv-IT!, LLC
from registering its mark. Docs. 83 ¶¶ 4, 22; 83-4
at 4. Use of the FLP's marks forced Liv-IT!, LLC to
rebrand their products to “Keep-IT!.”
See Doc. 83 ¶ 32.
The Parties' Motions.
Wolf Parties move for summary judgment on all of FLP's
claims. Doc. 82. They argue that they have prior use of the
trademark, that FLP never used its marks in commerce, and
that FLP has failed to show a tortious interference with
business expectancy. Doc. 82 at 15-19. FLP cross-moves on its
claims for trademark infringement and false advertising. Doc.
92. FLP argues that it has a presumption of ownership of the
marks, that the Wolf Parties' use of their mark causes
confusion among vendors and consumers, and that the Wolf
Parties falsely represented that their mark was trademarked
in violation of the Lanham Act. Doc. 92 at 9-14.
seeking summary judgment “bears the initial
responsibility of informing the district court of the basis
for its motion and identifying those portions of [the record]
which it believes demonstrate the absence of a genuine issue
of material fact.” Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986). Summary judgment is appropriate if
the evidence, viewed in the light most favorable to the
nonmoving party, shows “that there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.” Fed.R.Civ.P. 56(a).
Summary judgment is also appropriate against a party who
“fails to make a showing sufficient to establish the
existence of an element essential to that party's case,
and on which that party will bear the burden of proof at
trial.” Celotex, 477 U.S. at 322. Only
disputes over facts that might affect the outcome of the suit
will preclude summary judgment, and the disputed evidence
must be “such that a reasonable jury could return a
verdict for the nonmoving party.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986).
Infringement of FLP's Trademark.
prevail on a trademark infringement claim, FLP must prove
“(1) that it has a protectible ownership interest in
the mark; and (2) that [the Wolf Parties'] use of the
mark is likely to cause consumer confusion, thereby
infringing upon [FLP's] rights to the mark.”
Dep't of Parks & Recreation for State of Cal. v.
Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 (9th Cir.
Ownership of the Mark.
registration is “prima facie evidence of . . .
ownership[.]” Dep't of Parks, 448 F.3d at
1124. But mere “adoption of a mark without bona fide
use, in an attempt to reserve it for the future, does not
create trademark rights.” See Chance v. Pac-Tel
Teletrac, Inc., 242 F.3d 1151, 1157 (9th Cir. 2001). A
“litigant attempting to establish priority of
commercial use must demonstrate both adoption of the marks
and ‘use in a way sufficiently public to identify or
distinguish the marked goods in an appropriate segment of the
public mind as those of the adopter of the mark.”
Dep't of Parks, 448 F.3d at 1124 (citing
Brookfield Commnc'ns, Inc. v. West Cost Entm't
Corp., 174 F.3d 1036, 1052 (9th Cir. 1999) (alteration
the Lanham Act, a mark shall be deemed to be used in
(1) on goods when -
(A) it is placed in any manner on the goods or their
containers or the displays associated therewith or on the
tags or labels affixed thereto, or if the nature of the goods
make such placement impracticable, then on the documents
associated with the goods or their sale.
15 U.S.C. §1127. The test is a totality of
circumstances, allowing consideration of non-sales activities
so long as they show the mark has been publicly rendered in
commerce. See Brookfield, 174 F.3d at 1052.
The Wolf Parties' ...