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BBK Tobacco & Foods LLP v. Skunk Inc.

United States District Court, D. Arizona

November 15, 2019

BBK Tobacco & Foods LLP, Plaintiff,
Skunk Incorporated, et al., Defendants.


          James A. Teilborg Senior United States District Judge.

         Pending 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 motion.[1]

         I. BACKGROUND

         Skunk 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).


         a. Legal Standard

         By 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. Ariz. 1997)).

         In 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).

         b. Jurisdiction over the Skunk Application

         As an 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.

         c. BBK's Claims for Full Cancellation of the Skunk Registration and Full Refusal of the Skunk Application Based on Fraud

         BBK 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 ...

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