215 F. Supp. 3d 919
C.D. Cal.2015Background
- Anhing Corporation (Plaintiff) has sold "MY-THO" rice noodles in the U.S. since 1980 and registered the MY-THO mark federally in 1986.
- Thuan Phong Company Limited (Defendant), a Vietnamese rice-product manufacturer, uses marks containing "MY THO" to indicate geographic origin and holds related Vietnamese registrations.
- Defendant pleaded an affirmative defense and counterclaim alleging Plaintiff committed fraud on the USPTO by failing to disclose that My Tho is a Vietnamese city known for rice products when applying for the mark.
- Plaintiff moved for partial summary judgment to adjudicate and exclude the fraud defense; Defendant moved for partial summary judgment on Plaintiff’s trade dress claim; Plaintiff also sought sanctions based on an asserted failure of Defendant to send a representative with full settlement authority to a mandatory settlement conference.
- The court excluded a late-disclosed Vietnamese declarant (expert) offered by Defendant for failure to comply with Rule 26 and Rule 37, considered admissible portions of Mr. Ly’s declarations, and reviewed extrinsic evidence about My Tho’s notoriety.
- The court granted Plaintiff’s partial summary judgment on fraud (finding no triable issue of knowing, material misrepresentation or intent to deceive), denied Defendant’s motion on trade dress (triable issues remain), and denied Plaintiff’s sanctions motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Plaintiff committed fraud on the USPTO in procuring the MY-THO mark | Ly translated MY-THO truthfully and did not know of, or need to disclose, any geographic significance; no evidence of knowing falsity or intent | Plaintiff omitted that My Tho is a notable city for rice products; that omission was material and supports fraud and cancellation | No triable issue of fraud; partial summary judgment for Plaintiff because Defendant failed to produce clear and convincing evidence of falsity, knowledge, and intent to deceive |
| Whether Defendant is entitled to partial summary judgment that Plaintiff's trade dress claim fails | Trade dress is confusing and Plaintiff previously failed to show no triable issues | Court’s prior language (in denying reconsideration) establishes no likelihood of confusion and warrants judgment for Defendant | Denied — court found prior statements did not constitute a legal finding extinguishing triable issues; trade dress dispute remains for trial |
| Whether Plaintiff is entitled to sanctions for lack of a person with full settlement authority at the mandatory settlement conference | Defendant failed to bring an authorized decision-maker and thus violated the court’s settlement-order requirement; fees incurred justify sanctions | Defendant produced principals and a power of attorney; requesting additional time to consider an offer is not evidence of bad faith or lack of authority | Denied — plaintiff did not prove bad faith or conduct tantamount to bad faith; evidence supported that representatives had authority |
Key Cases Cited
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment standard and genuine issue of material fact)
- Celotex Corp. v. Catrett, 477 U.S. 317 (moving party’s initial burden on summary judgment)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (nonmoving party must present specific facts beyond metaphysical doubt)
- In re Bose Corp., 580 F.3d 1240 (clear-and-convincing proof required for fraud on PTO; intent must be willful)
- Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357 (circumstantial evidence of deceptive intent must be the single most reasonable inference)
- Yeti by Molly, Ltd. v. Deckers Outdoor Corp., 259 F.3d 1101 (district court’s wide latitude to exclude undisclosed experts under Rule 37)