Larisa Kopets v. Lara Kajajian
2:19-cv-07990
C.D. Cal.Mar 9, 2022Background:
- Plaintiff Kopets (Larisa Love) is a cosmetologist and owns Larisa Love, LLC; she registered the service mark “Larisa Love” with the USPTO (filing date Dec. 23, 2016; registration later issued) for hair salon services and used the name professionally since 2012.
- Defendant Kajajian operates a retail business as “Larissa Love Cosmetics,” owns registered USPTO marks for an LL design and “Larissa Love” for cosmetics (applications 2018; registration for Larissa Love matured Jan. 1, 2019; registration for LL matured Oct. 9, 2018).
- Dispute centers on use of similar names for overlapping product/service space (hair products and salon services); Kajajian challenged Kopets’ registration and alleged Lanham Act and common-law trademark infringement based on Kopets’ promotion and sale of hair products as a Joico brand ambassador.
- Key factual finding: Kajajian failed to prove by a preponderance that she used the Larissa Love mark in continuous commerce on hair products prior to Dec. 23, 2016 (the effective date of Kopets’ filing), and produced no documentary evidence of sales or continuous offering of Larissa Love-branded shampoos/conditioners before that date.
- Procedural outcome: Court entered judgment for Kopets and Larisa Love, LLC, dismissing Kajajian’s counterclaims and declaring that Kopets did not infringe Kajajian’s Larissa Love mark with respect to hair products.
Issues:
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Kajajian has a valid, protectable trademark in "Larissa Love" for hair products | Kajajian: USPTO registration for cosmetics (including shampoos/conditioners) creates presumption of validity and protectability | Kopets: Even if registered for cosmetics, Kajajian lacked prior, continuous commercial use of the mark on hair products before Kopets’ filing date | Kajajian failed to prove priority/continuous use for hair products; no protectable mark for hair products |
| Whether Kopets infringed Kajajian’s mark by using "Larisa Love" in connection with hair products/services | Kajajian: Kopets’ use is likely to cause confusion with Larissa Love-branded hair products | Kopets: Kajajian lacks protectable rights in hair products; Kopets holds its own service mark and used the name commercially | Court ruled for Kopets; infringement claims dismissed; noninfringement declared |
| Effect of USPTO registration presumption and burden shifting | Kajajian: Registration shifts burden to Kopets to rebut validity | Kopets: Presumption can be overcome; Kajajian must prove priority and continuous use for the goods at issue | Court applied presumption but found Kajajian did not meet burden to show priority/use in commerce for hair products |
| Entitlement to declaratory relief of noninfringement | Kopets: seeks declaration because Kajajian lacks protectable rights in hair products | Kajajian: sought counter-declaratory relief and alleged infringement | Court granted Kopets’ declaratory judgment of noninfringement as to hair products |
Key Cases Cited
- Applied Info. Scis. Corp. v. eBAY, Inc., 511 F.3d 966 (9th Cir. 2007) (sets elements of trademark infringement: valid mark and likelihood of confusion)
- Brookfield Commc'ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036 (9th Cir. 1999) (discusses use-in-commerce, priority, and continuous-use standards)
- Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012) (first use in commerce determines priority)
- Hana Fin., Inc. v. Hana Bank, 574 U.S. 418 (2015) (clarifies meaning of "use in commerce" under Lanham Act)
- Dep't of Parks & Recreation v. Bazaar Del Mundo, 448 F.3d 1118 (9th Cir. 2006) (continuous and uninterrupted use requirement for priority)
- Airs Aromatics, LLC v. Victoria's Secret Stores Brand Mgmt., Inc., 744 F.3d 595 (9th Cir. 2014) (common-law trademark requires continued use to the present)
- Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010) (federal registration gives presumption of validity)
- Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778 (9th Cir. 2002) (validity is a threshold issue for infringement)
- Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005) (plaintiff bears ultimate burden of proof on trademark validity)