416 F.Supp.3d 948
N.D. Cal.2019Background
- Plaintiff Vietnam Reform Party (an unincorporated political organization) alleges longstanding U.S. and international use of the marks “Viet Tan,” “Viêt Tân,” “Vietnam Reform Party,” and its Vietnamese equivalent in political broadcasting, seminars, and publications since 2004.
- In 2016 Defendant Nguyen Thanh Tu formed and incorporated VT Corp. in California as “Viet Tan—Vietnam Reform Party”; Plaintiff alleges Tu/VT Corp. used the name to interfere with Plaintiff’s activities and sent cease-and-desist letters to Plaintiff’s partners and media.
- Plaintiff sued VT Corp., Tu, and Michelle Duong in January 2017 for Lanham Act infringement, California unfair competition and related state-law claims; Tu later settled and was dismissed with prejudice; VT Corp. and Duong defaulted.
- Court found subject-matter and personal jurisdiction proper and concluded service on VT Corp. and Duong was adequate based on proofs of service delivered to Duong as individual and corporate agent.
- Taking well-pled allegations as true for default purposes, the Court found (1) Plaintiff owned and used the Marks prior to VT Corp., (2) some Marks were suggestive (Viet Tan/Viêt Tân) and others descriptive with secondary meaning (Vietnam Reform Party and Vietnamese equivalent), and (3) likelihood of confusion was established under relevant Sleekcraft factors.
- The Court granted default judgment against VT Corp. for trademark infringement, state-law unfair competition and related claims, awarded declaratory relief and a permanent injunction (with specified limits), denied the dilution claim, and denied default judgment as to Duong individually. The Court also found the case "exceptional" and awarded attorneys’ fees and costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Service & personal jurisdiction | Service completed Jan 12, 2018 on Duong (individual and corporate agent); VT Corp. and Duong are California domiciliaries so court has general jurisdiction | (No appearance; no contest) | Service and personal jurisdiction were adequate; court may enter judgment against VT Corp. and Duong (but ultimately denies personal liability against Duong) |
| Ownership & protectability of Marks | Plaintiff used the Marks since 2004; USPTO registrations later; Marks are protectable (some suggestive, some descriptive with secondary meaning) | (No responsive pleadings) | Plaintiff sufficiently pled prior use and protectability: “Viet Tan/Viêt Tân” suggestive; “Vietnam Reform Party” and Vietnamese equivalent descriptive but shown to have secondary meaning |
| Likelihood of confusion / trademark infringement | VT Corp.’s corporate name identical/similar to Plaintiff’s Marks, targeted same channels, and adopted name with bad intent to usurp and harass | (No appearance) | Likelihood of confusion found under Supreme Court/Ninth Circuit factors (Sleekcraft subset); infringement established against VT Corp. |
| Trademark dilution (state law) | Plaintiff alleges fame and dilution by tarnishment/blurring | (No appearance) | Denied: Plaintiff did not plead the high “famous”/household-name standard required for dilution at time of defendant’s adoption |
| Relief against individual Duong | Plaintiff seeks injunction and liability against Duong for signing letters and as agent | Duong did not appear | Denied as to personal liability: complaint lacks sufficient allegations of individual acts or officer status to impose individual liability; injunction binding corporate officers may bind Duong only if she is an officer/acting in concert |
| Remedies: injunction & fees | Requests declaratory judgment, permanent injunction barring use/claims to Marks, and attorneys’ fees/costs | (No appearance) | Declaratory judgment and permanent injunction granted in part (court narrows some requested post-judgment reporting obligations); costs and attorneys’ fees awarded because case deemed "exceptional" (willful adoption and harassment) |
Key Cases Cited
- Aldabe v. Aldabe, 616 F.2d 1089 (9th Cir. 1980) (default judgment is discretionary)
- TeleVideo Sys., Inc. v. Heidenthal, 826 F.2d 915 (9th Cir. 1987) (deemed-true effect of well-pled allegations after default)
- In re Tuli, 172 F.3d 707 (9th Cir. 1999) (court must examine jurisdiction before default judgment)
- Eitel v. McCool, 782 F.2d 1470 (9th Cir. 1986) (seven-factor test for default-judgment analysis)
- Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) (likelihood-of-confusion core trademark principle)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (Sleekcraft eight-factor likelihood-of-confusion test)
- Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010) (distinctiveness spectrum and protectability)
- Matal v. Tam, 137 S. Ct. 1744 (U.S. 2017) (registration provides constructive notice; registration presumption of validity)
- Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (high standard for fame in dilution claims)
- Daimler AG v. Bauman, 571 U.S. 117 (U.S. 2014) (paradigm forums for general jurisdiction)