Barrio Fiesta, LLC v. Northridge Foods International, Inc., 4:15-cv-02669

Barrio Fiesta, LLC (Plaintiff) operates a Barrio Fiesta restaurant in Milpitas, CA and asserts federal and state trademark claims against Northridge Foods International, Inc., which imports and distributes packaged food products bearing the mark "Barrio Fiesta."
Plaintiff relies on a federal registration for "Barrio Fiesta Express" and claims rights in the common-law mark "Barrio Fiesta."
Prior to summary judgment, the record showed Plaintiff was a non-exclusive licensee of the registered mark; Plaintiff later produced a declaration and a written instrument (post-motion) purporting to memorialize an earlier oral grant of exclusive enforcement rights.
Northridge and its foreign licensor (BFMC) have used the "Barrio Fiesta" mark in the Philippines since the 1950s and in the United States since at least 1987; Northridge has been BFMC’s U.S. distributor since 2006.
Plaintiff was not incorporated until 2010; its license agreement is dated 2012; Plaintiff filed suit in 2015 after becoming aware of Northridge’s U.S. use years earlier.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Standing to sue under the Lanham Act	Plaintiff contends it has standing as the registrant’s legal representative/assignee and later claims an exclusive license (oral, then written)	Northridge argues Plaintiff is only a non-exclusive licensee and thus lacks statutory standing	Court: Plaintiff lacked standing; post-motion exclusive-license evidence contradicted prior testimony and was untimely — summary judgment for lack of standing granted
Priority of use	Plaintiff claims rights in the mark based on registration and association with Philippine restaurants	Northridge shows long prior use abroad and in the U.S. (since 1987) and earlier continuous distribution	Court: Plaintiff cannot show priority of use; summary judgment granted on that independent ground
Laches (equitable defense)	Plaintiff implied delay was justified or limited	Northridge argues Plaintiff unreasonably delayed litigation and Northridge would be prejudiced by delay	Court: Declined to grant summary judgment solely on laches given record gaps about prejudice; laches not determinative here
State-law and common-law claims (CA dilution, unfair competition)	Claims rest on underlying trademark violations	Northridge: State claims depend on federal trademark liability	Court: Because federal claims fail, California statutory and common-law trademark and unfair competition claims also dismissed via summary judgment

Celotex Corp. v. Catrett, 477 U.S. 317 (summary judgment standard)
Anderson v. Liberty Lobby, 477 U.S. 242 (genuine issue and materiality standards)
Freeman v. Arpaio, 125 F.3d 732 (9th Cir.) (inferences for nonmoving party)
Lujan v. Defenders of Wildlife, 504 U.S. 555 (standing is case-or-controversy requirement)
Kennedy v. Allied Mut. Ins. Co., 952 F.2d 262 (9th Cir.) (sham affidavit doctrine in opposing summary judgment)
Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217 (9th Cir.) (ownership = priority of use)
Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088 (9th Cir.) (priority/territoriality and foreign fame)
Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151 (9th Cir.) (ownership requires appropriation and use in trade)
Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (9th Cir.) (laches factors in trademark context)
Miller v. Glen Miller Prods., Inc., 454 F.3d 975 (9th Cir.) (laches/knew-or-should-have-known trigger)
Danjaq LLC v. Sony Corp., 263 F.3d 942 (9th Cir.) (laches and prejudice analysis)