Kische USA LLC v. Simsek, 2:16-cv-00168

Background

Kische USA (founded 2007) designed, imported, and sold clothing under two marks: the KISCHE word mark (registered Aug. 5, 2014) and a MARSEILLE design mark (registered May 17, 2011).
Former Kische manager Ali Simsek facilitated assignment of the Marseille mark to JD Stellar in March 2014 while he was still a Kische manager; JD Stellar later registered a Marseille word mark (July 2015).
Kische alleges Simsek and co-defendants misappropriated marks and assets, formed JD Stellar, and used Kische’s marks to sell/solicit clothing, pleading Lanham Act and common-law infringement.
Kische moved for summary judgment on (1) ownership/validity of the marks, (2) invalidity of the Marseille assignment, (3) likelihood of consumer confusion (infringement), and (4) willful infringement; defendants opposed.
The court denied summary judgment: it found (a) Kische has prima facie ownership of the KISCHE registration but defendants failed to prove abandonment, (b) Kische failed to prove prior continuous use of the Marseille mark to overcome JD Stellar’s registration, (c) Kische failed to show JD Stellar used the KISCHE mark ‘in commerce’ (use on goods/labels) — emails and signatures alone insufficient, and (d) no summary adjudication of willfulness or transfer of registrations.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Validity / ownership of KISCHE mark	Kische points to federal registration and prior use	Defendants argue abandonment (no sales since 2014, insolvent)	Court: Kische has prima facie ownership via registration; defendants did not strictly prove abandonment (no proof of intent not to resume use) — no summary judgment for defendants
Ownership / prior use of MARSEILLE mark	Kische says it used MARSEILLE in commerce before JD Stellar and had an earlier registration/usage	Defendants point to JD Stellar’s current registration and dispute Kische’s continuous/public use	Court: JD Stellar is registered owner; Kische failed to produce prima facie evidence of prior, continuous, sufficiently public use to overcome that registration — summary judgment denied to Kische
Use in commerce / likelihood of confusion (KISCHE)	Kische points to kische.com email addresses, email signatures, and communications showing solicitation under the KISCHE name	Defendants contend email/signature usage is not use on goods and thus not use in commerce for trademark purposes	Court: Use in email addresses/signatures is insufficient under 15 U.S.C. § 1127 (mark must be placed on goods, labels, or associated displays); Kische failed to show use in commerce or reach likelihood-of-confusion as a matter of law
Relief: invalid assignment / transfer of registrations	Kische seeks return/transfer of the Marseille registration to Kische because assignment was improper/fiduciary breach	Defendants argue Kische has not met legal standard for transfer and is effectively seeking injunctive relief without proper showing	Court: Court previously found Simsek breached fiduciary duty but on this summary-judgment record Kische did not present a legal basis to order transfer or cancellation of JD Stellar’s registration — request denied

Key Cases Cited

Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment burden-shifting framework)
Anderson v. Liberty Lobby, 477 U.S. 242 (1986) (materiality and genuine dispute standards at summary judgment)
Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966 (2007) (two elements of trademark infringement: valid mark and likelihood of confusion)
Sengoku Works v. RMC Int’l, 96 F.3d 1217 (1996) (registrations are prima facie evidence of ownership; prior use can rebut)
Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (2012) (totality-of-circumstances test for prior use and continuous public use)
Herb Reed Enters., LLC v. Florida Entm’t Mgmt., Inc., 736 F.3d 1239 (2013) (three-year nonuse gives prima facie abandonment evidence)
Electro Source, LLC v. Brandess-Kalt-Aetna Grp., Inc., 458 F.3d 931 (2006) (abandonment requires nonuse and intent not to resume)
Tillamook Country Smoker, Inc. v. Tillamook County Creamery Ass’n, 465 F.3d 1102 (2006) (laches can bar Lanham Act claims)
Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829 (2002) (laches: determine analogous state limitations period and weigh six factors)
Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127 (1998) (likelihood-of-confusion test for trademark infringement)