Solid 21, Inc. v. Hublot of America
685 F. App'x 530
9th Cir.2017Background
- Solid 21, Inc. appealed the district court’s summary-judgment ruling that its mark “red gold” is generic and therefore invalid.
- The district court excluded portions of Solid 21’s expert linguist Dr. Ronald Butters’s declaration (beyond dictionary definitions) as addressing the ultimate issue.
- The district court also excluded multiple consumer declarations under Federal Rule of Civil Procedure 37(c) for late disclosure.
- The excluded evidence related to consumer understanding of the term “red gold” (associations with Solid 21/Chris Aire and whether the term had prior usage for watches).
- The Ninth Circuit reviewed the evidentiary rulings for abuse of discretion and summary judgment de novo, reversed the district court’s exclusions, and remanded for further proceedings.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of expert linguistic opinion (Butters) | Butters may testify about ordinary speakers’ associations with “red gold,” which is relevant to primary significance. | Testimony impermissibly addresses the ultimate issue of law and should be excluded. | Court: Exclusion was an abuse of discretion; expert may offer linguistic opinions relevant to consumer perception. |
| Exclusion of consumer declarations under Rule 37(c) | Late disclosures should not bar the declarations because their exclusion prejudiced Solid 21 and Hublot could have sought additional discovery. | Late disclosure justified exclusion to prevent unfair surprise. | Court: Exclusion was an abuse of discretion; declarations were probative of genericness and prejudice could have been cured by further discovery. |
| Whether “red gold” is generic | Evidence (expert + consumer declarations) raises a triable issue whether consumers view term as producer-specific. | District court found no genuine dispute: term generic as matter of law. | Court: With the excluded evidence admitted, Solid 21 raised a triable issue on genericness; remand for further proceedings. |
Key Cases Cited
- Estate of Barabin v. AstenJohnson, Inc., 740 F.3d 457 (9th Cir. 2014) (standard of review for district court evidentiary rulings)
- Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010) (summary-judgment review; relevance of usage evidence in trademark context)
- Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111 (1938) (genericness test: primary significance to consuming public)
- Nationwide Transp. Fin. v. Cass Info. Sys., Inc., 523 F.3d 1051 (9th Cir. 2008) (expert may not give legal conclusions, but may offer admissible opinions)
- Hangarter v. Provident Life & Accident Ins. Co., 373 F.3d 998 (9th Cir. 2004) (limits on expert legal conclusions)
- R & R Sails, Inc. v. Ins. Co. of Pa., 673 F.3d 1240 (9th Cir. 2012) (Rule 37(c) exclusion requires showing of prejudice)
- Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925 (9th Cir. 2005) (consumer perception central to genericness inquiry)
- Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902 (9th Cir. 1995) (treatment of biased insider declarations in trademark disputes)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596 (9th Cir. 2005) (distinguishing generic vs. source-identifying significance)