998 F. Supp. 2d 890
C.D. Cal.2014Background
- Plaintiff Kythera Biopharmaceuticals, Inc. is a Delaware corp. with principal place in California; Lithera, Inc. is a Delaware corp. with principal place in California.
- Plaintiff uses KYTHERA marks for its pharmaceutical research, development, and lead product ATX-101 to reduce body fat.
- Plaintiff owns two federal registrations for KYTHERA (No. 3357920 registered 2007; No. 4012388 registered 2011).
- Defendant filed an intent-to-use application for LITHERA and secured federal registration (No. 4067542) with a date of first use in commerce September 2011.
- Plaintiff alleges trademark infringement, unfair competition, and false designation of origin under the Lanham Act and California law, and seeks trademark cancellation.
- Defendant moved to dismiss on November 25, 2013; the court denied the motion on January 2, 2014.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity of KYTHERA marks for goods and services | KYTHERA registrations are prima facie valid; use in commerce supports ownership | Questionable service-mark rights; failure to render services to others undermines validity | Plaintiff plausibly holds valid marks for goods; service-mark validity partly supported by presales use and public record evidence |
| Likelihood of confusion between KYTHERA and LITHERA | Marks are similar and used for related goods/services; actual confusion alleged | No current consumer confusion; arguments rely on speculative future conduct | Sleekcraft factors support plausible likelihood of confusion at this stage; claims not dismissed |
| Use in commerce for services by KYTHERA | KYTHERA used in public pre-sales activities and engaged in collaboration, signaling services | Service-mark use must be shown via actual public services; some pre-sales use insufficient | Court finds plausible use in commerce for services based on pre-sales and collaborations; not fatal to claims |
| Ripeness/justiciability of trademark claims | Injunctive relief possible for threatened infringement; some Sleekcraft factors ripe | Claims premature due to lack of commercial products; not ripe for full adjudication | Claims are not ripe for complete resolution but are sufficiently pled to survive dismissal |
Key Cases Cited
- Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999) (likelihood of confusion elements; use in commerce and public perception)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Eight Sleekcraft factors for likelihood of confusion)
- Chance v. Pac-Tel Teletrac, Inc., 242 F.3d 1151 (9th Cir. 2001) (use in commerce and public association standards)
- Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012) (use in commerce; public-sourced identification of services)
- Hokto Kinoko Co. v. Concord Farms, Inc., 810 F. Supp. 2d 1013 (C.D. Cal. 2011) (likelihood of confusion and mark strength analysis)
- GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199 (9th Cir. 2000) (centrality of likelihood of confusion in analysis)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (plausibility standard for pleading claims)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility standard for pleading facts supporting claims)
- Balistreri v. Pacifica Police Dept., 901 F.2d 696 (9th Cir. 1988) (12(b)(6) standard; presumptions on motion to dismiss)
- McCalden v. Cal. Library Ass’n, 955 F.2d 1214 (9th Cir. 1990) (liberal pleading standards; grounds required for relief)