Southern California Darts Assn v. Dino M. Zaffina, 762 F.3d 921

Southern California Darts Association (SoCal) operated for decades using marks: “Southern California Darts Association,” “SCDA,” “SoCal Darts,” and a logo; an earlier corporate entity’s corporate powers were suspended in 1977.
Dino Zaffina, a former SoCal member, later incorporated a new entity named Southern California Darts Association, Inc. (SoCal Inc.), registered a domain, and began using SoCal’s marks.
SoCal sued Zaffina and SoCal Inc. under the Lanham Act (15 U.S.C. § 1125) and obtained a preliminary injunction; SoCal Inc. later defaulted.
District court granted SoCal summary judgment on the Lanham Act claim, issued a permanent injunction barring Zaffina’s use of SoCal marks and ordered monetary relief; Zaffina appealed.
On appeal the Ninth Circuit affirmed: it found federal jurisdiction under § 1125, treated SoCal as an unincorporated association with capacity to sue and own trademarks, held SoCal’s marks were descriptive with acquired secondary meaning, and concluded Zaffina’s use was likely to cause confusion.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Subject-matter jurisdiction	SoCal: claim arises under Lanham Act § 1125 so federal courts have jurisdiction	Zaffina: no federal question because marks are unregistered	Held: Jurisdiction exists under 15 U.S.C. § 1121 and 28 U.S.C. § 1338; § 1125 covers unregistered marks
Capacity to sue / own marks	SoCal: functions as an unincorporated association and may enforce federal rights and own marks	Zaffina: suspended original corporation cannot sue or own marks	Held: Under Fed. R. Civ. P. 17(b)(3)(A) SoCal is an unincorporated association with capacity to sue; unincorporated associations can own trademarks
Protectability & likelihood of confusion	SoCal: marks are descriptive with secondary meaning; Zaffina’s identical use causes confusion	Zaffina: SoCal lacked lawful use (delinquent corporate status), abandoned marks, and therefore no protectable rights	Held: Marks protected (secondary meaning); no evidence of unlawful use or abandonment; Sleekcraft factors weigh toward likelihood of confusion
Service, equitable defenses, and evidentiary objections	SoCal: served motion per Rule 5 and proffered declaration evidence	Zaffina: improper service; unclean hands; Irete declaration exceeds personal knowledge	Held: Service proper under Rule 5; unclean hands not shown or related to trademark rights; admission of declaration was not prejudicial

Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036 (9th Cir.) (§1125 protects unregistered marks and trade dress)
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (U.S.) (trade dress distinctiveness and protection principles)
Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814 (9th Cir.) (treating suspended corporations as unincorporated associations for Rule 17(b))
Sierra Ass’n for Env’t v. FERC, 744 F.2d 661 (9th Cir.) (similar treatment of suspended entities)
Applied Info. Sciences Corp. v. eBAY, Inc., 511 F.3d 966 (9th Cir.) (elements of §1125 claim: protectable mark and likelihood of confusion)
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir.) (eight-factor likelihood-of-confusion test)
Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir.) (priority of use determines trademark ownership)
CreAgri, Inc. v. USANA Health Sciences, Inc., 474 F.3d 626 (9th Cir.) (unlawful use in commerce can defeat trademark rights if material)
Magnuson v. Video Yesteryear, 85 F.3d 1424 (9th Cir.) (actual notice does not excuse noncompliance with service rules without good cause)