Sushi Nozawa, LLC v. The HRB Experience, LLC
2:19-cv-07653
C.D. Cal.Mar 31, 2020Background
- Plaintiff Sushi Nozawa, LLC operates Los Angeles sushi concepts (KazuNori, Sugarfish, Nozawa Bar) and owns supplemental-register marks including "THE ORIGINAL HAND ROLL BAR" and a stylized boxed version.
- Defendant The HRB Experience, LLC advertised and planned Los Angeles restaurants described as a "hand roll bar" experience and filed a USPTO intent-to-use application for the mark "HRB."
- Sushi Nozawa alleges HRB knew of its Registered Marks, used similar "hand roll bar" wording without permission, and omitted that "HRB" stands for "hand roll bar" on its USPTO application to avoid citation.
- Sushi Nozawa sued for federal trademark infringement (15 U.S.C. § 1114), federal unfair competition (15 U.S.C. § 1125(a)), common-law unfair competition, and California UCL violations.
- HRB moved to dismiss under Rule 12(b)(6), arguing no likelihood of confusion and asserting a fair-use defense; both parties sought judicial notice of USPTO filings (and HRB sought website notice).
- The court granted limited judicial notice of USPTO records, denied judicial notice of website contents, and denied HRB’s motion to dismiss in full.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion (trademark infringement) | Sushi Nozawa: owns marks and HRB’s use of "hand roll bar" in same market/channels likely confuses customers. | HRB: marks are dissimilar (stylization, fish logo) and no confusion; channels or marks distinguishable. | Denied dismissal — at pleading stage plaintiff plausibly alleged likelihood of confusion given similar wording, geographic overlap, and trade channels. |
| Fair use (classic fair use) | Sushi Nozawa: HRB’s asserted descriptive use is insufficient and must fail if confusion likely. | HRB: used the term descriptively to describe its goods (classic fair use / descriptive use). | Denied as a basis for dismissal — classic fair use unavailable when complaint plausibly alleges likelihood of confusion; fair use is mixed fact/law issue. |
| Judicial notice of USPTO filings and websites | Sushi Nozawa: USPTO records are proper for judicial notice to show filings/actions. | HRB: also sought USPTO filings and certain websites for notice. | Court granted limited judicial notice of USPTO records (to show filings/actions/dates) and denied notice of website contents (disputed, not appropriate under Rule 201). |
| Genericness of mark | Sushi Nozawa: mark non-generic and protectable. | HRB: contends "hand roll bar" is generic and not protectable. | Court declined to resolve genericness at pleading stage (fact question); did not resolve on motion to dismiss. |
Key Cases Cited
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (sets Sleekcraft multi-factor likelihood-of-confusion test)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility pleading standard)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (application of plausibility standard to pleadings)
- Cairns v. Franklin Mint Co., 292 F.3d 1139 (9th Cir. 2002) (elements of classic fair use defense)
- Leadsinger, Inc. v. BMG Music Pub., 512 F.3d 522 (9th Cir. 2008) (fair use is mixed question; may be resolved on motion to dismiss only if pleadings compel it)
- Brookfield Commc’ns, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) (courts may consider a subset of Sleekcraft factors)
- Lee v. City of L.A., 250 F.3d 668 (9th Cir. 2001) (limits judicial notice to undisputed facts; not for disputed matters in public records or websites)
- Transgo, Inc. v. Ajac Transmission Parts Corp., 911 F.2d 363 (9th Cir. 1990) (classic fair use unavailable if likelihood of confusion exists)
- M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) (marks compared in sight, sound, and meaning as a whole)