Seal Shield, LLC v. Otter Products, LLC, 678 F. App'x 483

Background

TreeFrog (owner of the federally registered LIFEPROOF mark) sued to defend its registration after Seal Shield (successor to KlearKase) sought cancellation and asserted trademark/domain infringement, false designation, and unfair competition claims.
The dispositive timing issue was priority: whether KlearKase used the unregistered "Life Proof™" mark in a protectable way before TreeFrog’s ITU filing on July 12, 2010.
The parties agreed on the facts; dispute centered on whether KlearKase’s mark was sufficiently distinctive to merit protection before the ITU date.
Seal Shield/ KlearKase presented no consumer-survey or other evidence about how prospective purchasers perceived the "Life Proof" phrase or whether competitors needed the phrase to describe products.
Seal Shield relied primarily on TreeFrog’s federal registration to infer distinctiveness but failed to introduce evidence about TreeFrog’s ITU application or how LIFEPROOF appeared in TreeFrog’s product context.
The district court granted summary judgment for TreeFrog; the Ninth Circuit affirmed, holding Seal Shield failed to rebut the presumption of TreeFrog’s protectable mark by proving prior distinctiveness.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether KlearKase established prior protectable trademark use of "Life Proof" before 7/12/2010	KlearKase (Seal Shield) argued its prior use made the mark distinctive/protectable	TreeFrog argued KlearKase offered no evidence of consumer perception or distinctiveness; TreeFrog relied on its federal registration presumption	Held for TreeFrog; Seal Shield failed to present evidence of distinctiveness, so cannot rebut TreeFrog's registration presumption
Whether TreeFrog's USPTO registration alone proves KlearKase's mark was similar/distinctive in context	Seal Shield argued TreeFrog’s registration supports inferential distinctiveness	TreeFrog argued context matters and registration alone is insufficient without evidence of how marks appeared/were used	Held for TreeFrog; registration alone, without contextual evidence, does not establish KlearKase’s prior distinctiveness
Whether failure to present consumer perception evidence is fatal at summary judgment	Seal Shield contended consumer surveys are not required and other evidence suffices	TreeFrog contended absence of consumer-focused evidence prevents a reasonable juror from determining meaning/distinctiveness	Held for TreeFrog; absent consumer-evidence or comparable contextual proof, summary judgment appropriate
Jurisdiction to review summary judgment in separate consolidated/severed action (14-cv-68)	Seal Shield urged the orders from the severed action are reviewable here because of prior consolidation	TreeFrog argued Seal Shield failed to timely appeal the separate action so this court lacks jurisdiction	Held for TreeFrog; Seal Shield failed to timely appeal the 14-cv-68 Action and identified no authority to permit review here

Key Cases Cited

Applied Info. Scis. Corp. v. eBay, Inc., 511 F.3d 966 (9th Cir.) (federal registration gives presumption of validity and protectable interest)
Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749 (9th Cir.) (burden to rebut registration by proving prior use and distinctiveness)
JL Beverage Co., LLC v. Jim Beam Brands Co., 828 F.3d 1098 (9th Cir.) (summary judgment: view facts in nonmovant’s favor)
Celotex Corp. v. Catrett, 477 U.S. 317 (U.S.) (failure of proof on essential element warrants summary judgment)
Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir.) (importance of consumer perception in distinctiveness analysis)
Lahoti v. VeriCheck, Inc., 586 F.3d 1190 (9th Cir.) (context critical when comparing registrations for distinctiveness inference)
Melendres v. Maricopa Cty., 815 F.3d 645 (9th Cir.) (timely notice of appeal is jurisdictional)
Smith v. Marsh, 194 F.3d 1045 (9th Cir.) (arguments/evidence not raised in briefs may be waived)