United States District Court, D. Arizona
A. Teilborg Senior United States District Judge.
before the Court is Plaintiff BBK Tobacco & Foods
LLP's (“BBK”) Motion for Judgment on the
Pleadings. (Doc. 65). Defendant Skunk, Inc.
(“Skunk”) has responded, (Doc. 74), and BBK has
replied, (Doc. 86). The Court now rules on the
currently owns a registration in the United States Patent and
Trademark Office (“PTO”) for the mark
“Skunk” (“Skunk Registration”) filed
on March 24, 2016. (Doc. 45 at 7 ¶ 48). The Skunk
Registration covers the following products:
Backpacks; book bags, sports bags, bum bags, wallets and
handbags; Beach bags; Belt bags; Book bags; Diaper bags;
Drawstring bags; Dry bags; Duffle bags; Evening bags; Flight
bags; Hiking bags; Hip bags; Hobo bags; Hunting bags; Kit
bags; Messenger bags; Sling bags; Suit bags; Tote bags;
Traveling bags; Wristlet bags. (Doc. 74 at 3).
In 2017, Skunk applied for a new registration with the PTO,
using the word “skunk” in connection with
“several dozen types of bags” (“Skunk
Application”). (Id. at 4). Later, BBK filed a
notice of opposition to the Skunk Application and a petition
for cancellation of the Skunk Registration with the Trademark
Trial and Appeal Board (“TTAB”). (Doc. 65 at 3).
BBK also filed a complaint in this Court, requesting, inter
alia, the same relief. (Id.). Skunk has since filed
its answer to BBK's complaint, (Doc. 54), and, based on
purported admissions in that answer, BBK now claims it is
entitled to judgment on the pleadings for its cancellation
and refusal claims, (Doc. 65 at 2).
rule, “[a]fter the pleadings are closed but within such
time as not to delay the trial, any party may move for
judgment on the pleadings.” Fed.R.Civ.P. 12(c). A court
should grant judgment on the pleadings only when the movant
“clearly establishes on the face of the pleadings that
no material issue of fact remains to be resolved and that it
is entitled to judgment as a matter of law.” Enron
Oil Trading & Transp. Co. v. Walbrook Ins. Co., 132
F.3d 526, 529 (9th Cir. 1997) (quoting George v.
Pacific-CSC Work Furlough, 91 F.3d 1227, 1229 (9th Cir.
1996)) (internal quotations omitted). Given the “policy
in favor of ensuring to each litigant a full and fair hearing
on the merits of his claim or defense, ” however,
courts “generally hesitate to grant judgment on the
pleadings.” Haller v. Advanced Indus. Comp.
Inc., 13 F.Supp.3d 1027, 1029 (D. Ariz. 2014) (quoting
Carrasco v. Fiore Enters., 985 F.Supp. 931, 934 (D.
deciding a motion for judgment on the pleadings, the Court
“cannot consider evidence outside the pleadings unless
the Court treats the motion as a motion for summary judgment,
” but it can “take ‘judicial notice of
undisputed matters of public record, including documents on
file in state or federal courts,' without converting the
motion.” Id. (citation omitted). The Court
must also accept as true all the well-pleaded allegations in
the pleadings, Nelson v. City of Irvine, 143 F.3d
1196, 1200 (9th Cir. 1998), and construe them in the light
most favorable to the non-movant, Gen. Conference Corp.
of Seventh-Day Adventists v. Seventh-Day Adventist
Congregational Church, 887 F.2d 228, 230 (9th Cir.
1989), unless they “contradict facts that may be
judicially noticed by the [C]ourt, ” Shwarz v.
United States, 234 F.3d 428, 435 (9th Cir. 2000).
Jurisdiction over the Skunk Application
initial matter, the Court must first reject Skunk's
contention that this Court has no authority to order refusal
of the Skunk Application. (Doc. 74 at 4-5). When a court has
jurisdiction over a registered mark, as is true with the
Skunk Registration, it may also determine the
“registerability” of a closely related mark. 5 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 30:113.50 (5th ed. 2019); see
also Forever 21, Inc. v. Gucci Am., Inc., No. CV
17-04706 SJO (Ex), 2018 WL 5860684, at *3 (C.D. Cal. Feb. 9,
2018) (applying this principle). Because there is substantial
overlap between the bags listed in the Skunk Application and
the bags listed in the Skunk Registration, the Court can
exercise jurisdiction over the Skunk Application.
BBK's Claims for Full Cancellation of the Skunk
Registration and Full Refusal of the Skunk Application Based
argues that because Skunk admits that it made false
representations to the PTO for the purpose of obtaining a
mark, both in the Skunk Application and when it obtained the
Skunk Registration, Skunk's admissions “establish
all of the elements of Plaintiff's claims for
cancellation” based on fraud. (Doc. 65 at 9). Skunk
asserts in response that the pleadings do not establish all
the elements of fraudulent procurement. (Doc. 74 at 9, 15).
Expressing no decision on other elements of BBK's fraud
claims, because the pleadings do not clearly establish that
Skunk acted with the requisite fraudulent intent in
connection with either the Skunk ...