Stone Brewing Co., LLC v. Molson Coors Brewing Company
Case Information
UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA STONE BREWING CO., LLC, Case No.: 3:18-cv-00331-BEN-LL Plaintiff / Counterclaim Defendant, ORDER:
v. (1) GRANTING IN PART AND
MILLERCOORS LLC, DENYING IN PART PLAINTIFF’S Defendant / Counterclaim Plaintiff. MOTION FOR SUMMARY JUDGMENT; (2) DENYING DEFENDANT’S MOTION FOR SUMMARY JUDGMENT; and (3) DENYING AS MOOT PLAINTIFF’S MOTION TO STRIKE PORTIONS OF DEFENDANT’S SUMMARY JUDGMENT BRIEFS OR, IN THE ALTERNATIVE, FOR LEAVE TO FILE SUPPLEMENTAL BRIEF
[ECF Nos. 175, 170, 271.]
Before the Court is Plaintiff Stone Brewing Co., LLC’s (“Plaintiff”) and Defendant MillerCoors LLC’s (“Defendant”) Motions for Summary Judgment, as well as Plaintiff’s Motion to Strike portions of Defendant’s Summary Judgment Briefs or, in the alternative, for Leave to File Supplemental Brief. All three motions are fully briefed, and the Court has considered all the arguments presented, even those not discussed in this Order. To the extent that an argument is not acknowledged in this Order, it is rejected.
BACKGROUND
For purposes of this decision, the Court assumes the parties are familiar with the procedural history and many disputed facts of the suit. The Court relies on the background facts provided in the Complaint and the parties’ summary judgment motions to provide the following brief case background.
Plaintiff Stone is a San Diego-based craft brewer that has sold its artisanal Stone® beers nationwide for over two decades. (Doc. No. 1 ¶ 17.) From the beginning, Stone developed and maintained its trademark and brand. Stone’s founders applied for the STONE® mark on July 29, 1997. Id . at 4. The mark was registered without objection on June 23, 1998, under U.S. Registration No. 2,168,093. Id . Roughly ten years later, on or about June 28, 2008, the Patent Trade Office (“PTO”) recognized Stone’s continuous use of the brand and granted Stone’s Combined Declaration of Use and Incontestability application, making the STONE® mark incontestable. Id . Today, every Stone beer bears the registered incontestable trademark STONE®. . ¶ 20. Stone filed suit in this matter out of concern for its brand reputation.
Defendant Molson Coors is a multi-national beer conglomerate formed after a series of mergers involving Coors, Miller, and Canadian brewing giant Molson. In the United States, Molson Coors operates through its subsidiary, Defendant MillerCoors. Among the dozens of brands in its portfolio, MillerCoors has sold domestic lager brand Keystone since 1989. . at 33.
The Keystone line of beers consists of Keystone, Keystone Ice, and Keystone Light. (Doc. No. 44 at 1.) Since its inception, MillerCoors and its predecessors have sold “Keystone” sub-premium beer in cans with a primary KEYSTONE® mark and prominent imagery of the Colorado Rocky Mountains. (Doc. No. 1 at 34.) The name “Keystone” is the name of a popular ski resort town founded in the 1970s in Colorado. The mountain range depicted on the can is styled after Wilson Peak located in the Rockies. Id .
From 1989 through today, Keystone cans have been updated from time to time but have always prominently featured the KEYSTONE® mark. For at least the past twenty- three years, Keystone packaging and advertising have also borne the nickname “STONES.” (Doc. No. 44 at 1.)
MillerCoors undertook efforts to ‘refresh’ its KEYSTONE image by introducing an updated can and package design, in or around April 2017. Id . ¶ 38. MillerCoors also began acquiring various independent craft beer breweries like Saint Archer Brewing , through its craft beer holding entity, Tenth and Blake Beer Company , to expand its holdings and reduce competition. Id .
MillerCoors’s ‘refreshed’ can design took “KEYSTONE” and separated “KEY” and “STONE” onto separate lines. (Doc. No. 30-1 at 10.) Its ‘refreshed’ packaging emphasized “STONE” rather than “KEYSTONE” Id . Similar advertising campaigns began to feature the redesigned Keystone can often accompanied by slogans or taglines such as the August 2017 campaign “Hunt the STONE.” .
Since introducing the ‘refreshed’ can and package design, Keystone Light has gone from MillerCoors’s worst, to its best-selling beer of the entire Keystone line. At this same time, Stone noticed a discernable drop in its sales as current and potential purchasers were allegedly confused by Keystone’s new can and packaging. To further complicate matters, in many areas of the country, STONE® and KEYSTONE® use identical distribution and marketing channels. . ¶ 64.
LEGAL STANDARD
Summary judgment is appropriate where “the movant shows that there is no
genuine dispute as to any material fact and the movant is entitled to judgment as a matter
of law.” Fed. R. Civ. P. 56(a);
see also Celotex Corp. v. Catrett
,
The Party moving for summary judgment bears the initial burden of identifying
those portions of the pleadings, discovery, and affidavits that demonstrate the absence of
a genuine issue of material fact.
Celotex Corp. v. Catrett
,
Once the moving party meets its initial burden, the non-moving party must go
beyond the pleadings and show that there is a genuine issue for trial.
Anderson
, 477 U.S.
at 250. It can do this by citing to specific parts of the materials in the record or by
showing that the materials cited by the moving party do not compel a judgment in the
moving party’s favor. Fed. R. Civ. P. 56(c). The opposing party may also object to the
movant’s evidence.
Synoptek
,
The Court will first address the parties Motion’s for Summary Judgment, followed by Plaintiff’s Motion to Strike.
DISCUSSION
I. PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT A. Plaintiff’s Request for Judicial Notice
Plaintiff requests that the Court take judicial notice of several documents from United States Patent Trademark Office’s (“USPTO”) “File History” for U.S. Trademark numbers: 77284884 for “STONES”, 85002333 for “HOLD MY STONES’, and 2168093 for “STONE”.
A court may take judicial notice of a fact that is not subject to reasonable dispute
because it “can be accurately and readily determined from sources whose accuracy
cannot reasonably be questioned.” Fed. R. Evid. 201(b)(2). Defendant did not object to
the Court taking judicial notice of the documents. Courts may also take judicial notice of
“‘records and reports of administrative bodies,’ file histories, and application materials.”
Balance Studio, Inc. v. Cybernet Entm’t, LLC
, No. 15-CV-04038-DMR, 2016 WL
1559745, at *1 (N.D. Cal. Apr. 18, 2016) (quoting
Mack v. South Bay Beer Distributors,
Inc.
,
Because the documents are not subject to reasonable dispute, are capable of
accurate and ready determination by resort to sources whose accuracy cannot reasonably
be questioned, and are a matter of public record, (
see Lee v. City of L.A.
,
B. Ownership of a Valid and Legally Protectable Mark Under the Lanham Act, a mark may become incontestable if it is not challenged within five years of its registration. See 15 U.S.C. § 1065(3). To become incontestable, Section § 1065(3) requires that the registered mark be continuously used in commerce for “five consecutive years” subsequent to the date of registration and still be in use in commerce. . The registration of an incontestable mark is “conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark.” 15 U.S.C. § 1115(b).
In this case, the first two elements of a claim for federal trademark infringement
are met. First, Plaintiff holds a valid trademark in STONE® as it was registered
without
objection
on July 23, 1998, under U.S. Reg. No. 2,168,093. (Doc. No. 175 at 4.) Second,
in 2008 (
approximately ten years after registration
), the PTO accepted Plaintiff’s
Combined Declaration of Use and Incontestability application, making STONE®
“incontestable” as a matter of law. . “If the mark at issue was federally registered and
had become ‘incontestable’, pursuant to 15 U.S.C. §§ 1058 and 1065, validity, legal
protectability, and ownership are proved.”
Ford Motor Co. v. Summit Motor Products,
Inc.
,
C. Likelihood of Confusion
Likelihood of confusion is a question of material fact.
Levi Strauss & Co. v. Blue
Bell, Inc.
,
“The factors are non-exhaustive and applied flexibly; the
Sleekcraft
factors are not
intended to be a ‘rote checklist.’”
JL Beverage Co., LLC v. Jim Beam Brands Co.
, 828
F.3d 1098, 1106 (9th Cir. 2016) (quoting
Rearden
,
a. Strength of the Mark
“The more likely a mark is to be remembered and associated in the public mind
with the mark’s owner, the greater protection the mark is accorded by trademark laws.”
GoTo.com, Inc. v. Walt Disney Co.
,
“A mark’s conceptual strength ‘depends largely on the obviousness of its
connection to the good or service to which it refers.’”
JL Beverage Co.
,
*9
1
“After identifying whether a mark is generic, descriptive, suggestive, arbitrary, or
fanciful, the court determines the mark’s commercial strength.” . (citing
Miss World
(UK) Ltd. v. Mrs. Am. Pageants, Inc.
,
Previously, while considering Plaintiff’s mоtion for a preliminary injunction, this Court determined that Plaintiff’s STONE® mark was conceptionally [3] and commercially [4] strong and recognizable based on the record before it at that time . ( See Doc. No. 85 at 6- *10 1 7.) As the evidentiary record has changed since the preliminary injunction stage, the Court will reevaluate the strength of the mark based on the current record.
Plaintiff argues its mark remains conceptually strong because it is arbitrary, fanciful, and because it does not inherently describe or even “suggest” anything at all about beer. [5] (Doc. No. 175 at 5.) It is also commercially strong since it is “both nationally and internationally known,” and “is one of the ten largest craft breweries in the United States, with sales at thousands of stores, bars, and restaurants nationwide.” Id . at 6. Moreover, “Stone is widely recognized as an industry leader by national and international publications including The New York Times , The Wall Street Journal , The Economist , USA Today , and Time magazine. Id .
Defendant argues that Plaintiff’s mark is conceptually weak because at least ten other craft breweries actively use the word “Stone” in their name. (Doc. No. 202 at 6.) Moreover, it is commercially weak as evidenced by the fact that even Plaintiff’s own executives admit “that Stone Brewing is ‘not a broadly known brand’ and that 53% of beer drinkers” have “never even heard of Stone Brewing; even among craft beer drinkers, nearly a quarter of them had never heard of Stone Brewing.” [6] Id .
It is clear the parties dispute how broadly the relevant market should be
characterized in evaluating whether the field is crowded with the word “STONE.”
See JL
Bev. Co.
,
*11
1
Viewing all the evidence in the light most favorable to Defendant, there remains a
genuine issue of material fact as to whether the “STONE” mark is descriptive,
suggestive, arbitrary, or even fanciful. Descriptive marks “define a particular
characteristic of the product in a way that does not require any imagination. . at 1107.
While Defendant has provided some evidence that the word “STONE” has been used in
craft brewery names, as well as it being an old-style beer brewing technique, the Court is
unable to see a commonly understood connection between the mark and the product.
Furthermore, Plaintiff also offers evidence that it has sold its products nationally.
Nevertheless, viewing such evidence in the light most favorable to Defendant, a finder of
fact could reasonably conclude that Plaintiff’s marks are commercially weak.
See
Fortune Dynamic, Inc.
,
b. Proximity/Relatedness of the Goods
“Related goods are generally more likely than unrelated goods to confuse the
рublic as to the producers of the goods.”
Brookfield Commc’ns, Inc. v. West Coast
Entertainment Corp.
,
Plaintiff contends that there is no reasonable dispute that Stone beers and MillerCoors Keystone Light beer are related and directly competing as “related goods (or services) … ‘which would be reasonably thought by the buying public to come from the same source if sold under the same mark.’” [8] (Doc. No. 175 at 6.) Moreover, “when it comes to alcoholic beverages, courts have consistently held that wine, spirits, and beer are all related to one another, rejecting attempts to “slice and dice” the market into specialized sub-segments.” Fleischmann Distilling Corp. v. Maier Brewing Co. , 314 F.2d 149, 159-60 (9th Cir. 1963) (“beer and Scotch whisky” are related).
Defendant argues that Plaintiff’s claims are erroneous because the parties are not true competitors as evidenced by the fact that Plaintiff produces “craft” [9] beer, while the Defendant produces an “economy” [10] beer. (Doc. No. 202 at 13.) In fact, in the beer market, the parties are at “polar extremes.” . Moreover, Defendant asserts that it never considered Plaintiff’s products ( or craft beers in general ), to be a segment of the market from which Keystone could take market share. [11] . at 14. Lastly, the cases offered by Plaintiff in support of this factor pre-date the existence of many craft breweries. Plaintiff’s cases represent the early 1990’s, not the drastically changed alcohol and beer market that exists today. . at 15.
The Court concludes that there remains a genuine issue of material fact as to
whether the Defendant’s Keystone Light and the Plaintiff’s STONE® beer are related
goods. The thrust of Defendant’s argument is that the two brands do not directly compete
for customers. But even if a jury concluded that the two brands do not directly compete,
a jury could still reasonably find that the similarity of their products—specifically, beer—
would likely result in consumer confusion between the brands and products.
See
American Int’l Group, Inc. v. Am. Int’l Bank
,
c. Similarity of the Marks
“[T]he similarity of the marks…has always been considered a critical question in
the likelihood-of-confusion analysis.”
GoTo.com, Inc. v. Walt Disney Co.
, 202 F.3d
1199, 1205 (9th Cir. 2000);
Brookfield
,
“Packaging is certainly a factor in the overall appearance of a mark in the
marketplace.”
PowerFood, Inc. v. Sports Science Inst.
, No. C-93-0259 MHP, 1993 WL
13681782, at *6 (N.D. Cal. Mar. 11, 1993). The Ninth Circuit has held that use of a
house mark or distinctive logo on packaging and advertising can reduce the likelihood of
confusion.
Lindy Pen Co., Inc.
,
In
Lindy Pen Co
., after concluding that the marks themselves were identical if
viewed in isolation, the Ninth Circuit looked at how the Lindy’s “Auditor’s” and Bic’s
“Auditor’s fine point” appeared in the marketplace and held that the appearance of the
pens, their packaging, and their display and promotional materials were dissimilar and
readily distinguishable.
Lindy Pen Co.
,
Plaintiff maintains that its STONE® mark and Defendant’s KEYSTONE mark are identical and confusingly similar as displayed on the products themselves. Specifically, they both use the same letters, both are in capital letters, and both share a bold font. Moreover, “[w]hatever stylistic differences may exist between Stone and Keystone’s materials, they both share the word “STONE” as the dominant visual element.” (Doc. No. 175 at 9.) Furthermore, “the marks are also verbally identical, strongly favoring a finding of likelihood of confusion.” . Lastly, “it is self-evident that the marks’ meanings are identical because they are the same English word – “STONE.” . at 10. In sum, Plaintiff argues that the marks are highly similar in sound, appearance, meaning and overall commercial impression.
Defendant responds that when one looks at how the parties’ respective trademarks are presented to consumers, the similarities between the marks vanish. First and foremost, Defendant’s actual wordmark – KEYSTONE® – is dissimilar from Plaintiff’s STONE® mark. (Doc. No. 202 at 7.) Morеover, Defendant has not used “Own the Stone” in commerce. . Furthermore, in the marketplace, Defendant’s Keystone product is found in different areas of the cooler or display shelf from Stone products. Thus, according to Defendant, when the marks are considered as they appear in the marketplace, they are not at all similar in appearance.
Next, while, Plaintiff focuses on the identical words used in the marks and
Defendant focuses on how the marks appear in the marketplace, the Court must consider
both.
See Fortune Dynamic, Inc.
,
Here, the packaging of both products is dissimilar. The Court notes that the “STONE®” mark is used as a logo and label on Plaintiff’s single-serve cans and/or bottles of beer. ( See Doc. No. 175 exhibits ( showing pictures of the trademarks alone and as used on cans and bottles ).) Defendant’s single-serve cans have the “KEYSTONE” logo displayed vertically ( bottom to top ) with the letters “KEY” separated from and shown above the letters “STO” of “STONE.” .
The salient differences are that the Plaintiff’s cans/bottles are “generally labeled with the word ‘Stone’ along with the type or name of the specific beer—indeed, not a single year-round beer shown on Stone Brewing’s website is labeled “Stone” alone, and each label is dominated by the name of the beer, not the word “Stone.” (Doc. No. 202 at 9.) Defendant’s “KEYSTONE® mark appears on bright blue packages that also include *16 1 the Coors Brewing Company name logo and Keystone’s signature mountains,” while Plaintiff’s STONE® mark in contrast appears almost exclusively “alongside Stone Brewing’s signature Gаrgoyle, with the word ‘STONE’ in smaller font than the descriptors ‘IPA,’ as in ‘Tangerine Express IPA.’” . Lastly, the two products are not sold or promoted next to each other in grocery, liquor, or other retail establishments. Generally, Plaintiff’s products are found in the refrigerated beer and wine section of the retail store, together with Plaintiff’s other direct craft beer competitors. Defendant’s products, on the other hand, are most generally found on the lower refrigerated shelfs of the cooler and/or aisle display unit with other economy class beers.
Therefore, even though the marks are dissimilar, there remains a genuine issue of material fact as to how the marks appear in the marketplace.
d. Evidence of Actual Confusion
“[E]vidence of actual confusion, at least on the part of an appreciable portion of the
actual consuming public, constitutes strong support for a ‘likelihood of confusion,
finding.”
Rearden
,
Plaintiff offers evidence of actual consumer confusion “[s]ince the launch of the 2017 Keystone Rebrand” by identifying instances where individual consumers reported ‘being confused between the rebranded Keystone and STONE® beers’ on online forums and social media platforms.” (Doc. No. 175 at 11.) For example, “[i]n December 2017, as MillerCoors was ramping up its social media campaign for the Keystone rebrand, a customer contacted Stone to ask whether it was making a ‘Stone Lite.’” Id . Moreover, Plaintiff’s marketing expert, Professor David W. Stewart, Ph.D., conducted four consumer surveys using different methods to assess consumer confusion related to the 2017 Keystone Rebrand, each showing clear evidence of confusion.
Defendant disputes Plaintiff’s claims arguing that no actual evidence of consumer confusion has been submitted. (Doc. No. 202 at 10.) First, the three declarations cited by Plaintiff, came from its own employees who were never disclosed during discovery. As a result, Defendant lacks discovery from these individuals regarding the purported “actual confusion” which Plaintiff’s Motion relies on. Id . Next, Plaintiff’s reliance on Dr. Stewart’s survey results is severely misplaced because each of the surveys suffers from fatal flaws rendering them wholly unreliable and invalid. Id . at 11. Specifically, “[u]nmentioned in Plaintiff’s motion is that Dr. Stewart performed a previously undisclosed fifth survey, in which he used accurate images of Keystone products—and tabulated note confusion “in the vicinity of four or five,” which “Dr. Stewart agreed that such low numbers are ‘not considered sufficient evidence of likelihood of confusion.” .
The court notes that it is not permitted to weigh the evidence on summary
judgment. In this case, a jury could reasonably find that Plaintiff’s evidence was
de
minimus
, or reasonably credit Plaintiff’s evidence of actual confusion over Defendant’s.
*18
1
See Americana Trading Inc. v. Russ Berrie & Co
.
,
e. Marketing Channels Used
“Convergent marketing channels increase the likelihood of confusion.”
Nutri/Sys.,
Inc. v. Con-Stan Indus., Inc.
,
Here, the evidence before the Court demonstrates genuine issues of material fact as to marketing channel convergence. First, Plaintiff provides evidence that the parties “share overwhelmingly identical marketing channels, including retail, distribution, and advertising.” (Doc. No. 175 at 14.) Specifically, “Stone is sold at 80% of Keystone’s top 150 retailers nationwide.” Id . Second, there is also overlap at the distributor level, and at over fifty of Defendant’s own regional brand “houses” as demonstrated by the fact that Plaintiff’s beer has been distributed alongside Keystone. . Finally, the parties share similar advertising channels as evidenced by the fact that both make extensive use of social media and in-store promotional displays to advertise their beers. . at 15.
In response, Defendant provides evidence that there is little overlap between Keystone and Stone Brewing drinkers because the products are overwhelmingly not sold in the same outlets. (Doc. No. 202 at 15.) Defendant’s expert Mark Hosfield even found that “Keystone and Stone Brewing offerings were sold at the same national retail chain in the same zip code within the same month at most only 38% of the time.” Id . at 16. Lastly, even if the products were to be found in the same stores, Keystone would be located separately from Stone Brewing’s products, since Keystone does not carry the same retail shelf segment and price tier as Plaintiff’s products. Id .
In sum, it is a jury question as to whether the parties’ current marketing channels
“overlap significantly.”
See Entrepreneur Media, Inc.
,
f. Type of Goods and Degree of Care Likely Exercised by Purchaser
“In analyzing the degree of care that a consumer might exercise in purchasing the
parties’ goods, the question is whether a ‘reasonably prudent consumer’ would take the
time to distinguish betweеn the two product lines.”
Surfvivor Media
,
Here, the parties present conflicting evidence as to the degree of care consumers of their products are likely to exercise. Plaintiff’s marketing expert Brandon Hernandez confirms that the “tendency for the public to generalize beer, coupled with the beverage’s relative low cost, renders it a consumable for which shoppers exercise less care when *20 1 purchasing.” (Doc. No. 175 at 16.) Defendant, however, offers evidence that economy beer drinkers are highly price sensitive, and often make their purchase decisions based on price and the availability of promotions that afford them more value. (Doc. No. 202 at 17.) As a result, beer drinkers focused on value and accustomed to Keystone Light pricing would certainly stop and take notice if they suddenly noticed they were paying more than three times as much as they used to for the same good. .
The Court finds that triablе issues of fact remain regarding the degree of care exercised by the parties considering the evidence regarding costs and purchaser sophistication. A reasonable factfinder might or might not find this factor weighs in favor of Plaintiff.
g. Defendant’s Intent in Selecting Mark
While “not required for a finding of trademark infringement,”
Brookfield
Commc’ns
,
h. Likelihood of Expansion оf Product Lines
“[A] ‘strong possibility’ that either party may expand his business to compete with
the other will weigh in favor of finding that the present use is infringing.”
Sleekcraft
, 599
F.2d at 354. When, however, the parties “already compete to a significant extent,” as
they do here, this factor is “relatively unimportant” to the likelihood of confusion
analysis.
Brookfield Commc’ns
,
Plaintiff contends that the Eighth Sleekcraft factor, “likelihood of expansion,” is not relevant to this analysis because the products already compete in the same market. (Doc. No. 240 at 8.) Defendant, on the other hand, argues Plaintiff had no intentions of expanding into “light beer” as evidenced by the fact that Stone Brewing’s cofounder Steve Wagner, stated under oath that he “hate[s] light beer,” and that “we [Plaintiff] don’t have any plans to produce a light beer … it’s definitely something we never plan on doing….”. . Because the parties’ goods are already related, the Court finds the factor to be neutral and affords it little weight.
i. Evaluation of the Factors
Evaluating all the factors and the evidence provided by the parties, the Court
cannot find Plaintiff has, as a matter of law, demonstrated a likelihood of consumer
confusion, although it is a close call. While some of the eight factors favor Plaintiff, in
determining whether a likelihood of confusion of the parties’ marks exists, the court does
not “merely count beans or tally points.”
Stone Creek
,
Here, a triable issue remains on the “critical question” of the degree of similarity of
the marks.
GoTo.com, Inc.
,
Therefore, the Court DENIES Plaintiff’s Motion for Summary Judgment on its trademark infringement claim.
D. Defendant’s First
[19]
, Third
[20]
, and Fourth
[21]
Counterclaims
In addition to moving for summary judgment on its own trademark infringement
claim, Plaintiff also seeks summary judgment on Defendant’s counterclaims for
declaratory judgment that: (1) it has a right to use STONE and STONES to advertise
Keystone Beer, (2) it has not infringed based on its right to the STONE mark, and (3) it
has an “exclusive common law right to use STONE in connection with the sale of beer in
the United States. (
See
Doc. No. 19 at 24:17-25:20, 26:18-28:20). Plaintiff argues that
Defendant cannot state a claim for declaratory judgment as to these counterclaims
because the Defendant has not sought to enforce any right against Plaintiff through them.
(Doc. No. 240 at 8.) Essentially, by seeking the court to grant the counterclaims,
Defendant is asking the Court to render advisory opinions about all potential uses of
“STONE” or “STONES” divorced from any specific context or dispute with Plaintiff.
Id
. As a result, the counterclaims are not justiciable, and the Court lacks jurisdiction.
Medimmune, Inc. v. Genentech, Inc.
,
Article III of the United States Constitution authorizes federal courts to adjudicate
only “Cases” or “Controversies.” U.S. Const. Art. III, § 2, cl. 1;
see MedImmune, Inc. v.
Genentech, Inc.
,
The Declaratory Judgment Act provides that, “[i]n a case of actual controversy
within its jurisdiction … any court of the United States … may declare the rights and
other legal relations of any interested party seeking such declaration, whether or not
further relief is or could be sought.” 28 U.S.C. § 2201(a). The phrase “case of actual
controversy” in the Act refers to the type of “Cases” and “Controversies” that are
justiciable under Article III.
MedImmune
,
At first blush, the existence of an actual controversy regarding Counterclaims One and Three seems obvious. In this case, Plaintiff has sued Defendant for its use of names allegedly infringing on Plaintiff’s trademark rights. Plaintiff’s allegations are sweeping and implicate the names “STONE,” “STONES,” and other iterations utilized in Defendant’s advertising and sales of Keystone Light. ( See Doc. No. 175 at 22-24.) Additionally, Plaintiff contends that Defendant never used STONES as a trademark until filing its counterclaim in this litigation.
Defendant’s Counterclaims One and Three assert a right to use, and lack of
infringement based off a prior right, to use the objectionable words “STONE,” and
“STONES,” respectively, in advertising. On these allegations, the Court finds an actual
controversy between the parties, such that the Court may exercise Article III jurisdiction
over Defendant’s declaratory judgment Counterclaims One and Three.
See Already, LLC
v. Nike, Inc.
,
*25 1 As to Counterclaim Four, Defendant seeks a declaration that it has an exclusive common law right to freely use the word “STONE” in connection with its sale of beer in the United States. [24] (Doc. No. 175 at 22.) Plaintiff argues that Defendants “past sporadic use of ‘STONES’ on boxes and promotional materials is not sufficient to rise to the level of use of the word as a trademark.” [25] Id . at 23. Moreover, it is beyond any dispute that neither Defendant nor its customers considered “Stone” to be a trademark of Keystone beer. .
In response, Defendant contends that its “use of STONE and STONES has undoubtedly been “sufficiently public” such that consumers would associate the words with Keystone beer. [26] (Doc. No. 202 at 22.) For instance, throughout Defendant’s examples of Keystone packaging and marketing materials, “STONE” and/or “STONES” was prominently displayed utilizing larger print, capital letters, and different color schemes than other text. . Furthermore, there is no requirement that Defendant use a “TM” symbol on its cans, packaging and merchandising materials to evidence its continuous use of “STONE” and/or “STONES” as a trademark back as early as 1991. See Id . at 21-23. Thus, considering the parties competing claims as to whether Defendant had a common law right to use the word STONE(S), the Court finds that it has Article III jurisdiction to consider Defendant’s Counterclaim Four. See MedImmune , 549 U.S. at 127.
Laches
Next, Defendant asserts that Plaintiff’s claims are bаrred by laches. “‘Laches is an
equitable limitation on a party’s right to bring suit.’”
Jarrow Formulas, Inc. v. Nutrition
Now, Inc.
,
In assessing the reasonableness of a delay, the court “must first decide whether [a
plaintiff] filed suit within the applicable” statute of limitations period.
Internet
Specialties W., Inc.
,
Here, Plaintiff timely filed suit within the four-year statutory period. Although Defendant asserts in its response that it has been using “STONE” and “STONES” in association with Keystone as early as 1991, (Doc. No. 202 at 21), Plaintiff’s claims stem from Defendant’s use of its mark in connection with its Keystone Light refresh in 2017, not any prior use of the mark. Plaintiff filed its complaint on February 12, 2018, less than four years after its potential claims accrued. ( See Doc. No. 1.) Accordingly, a strong presumption against the application of laches arises. Jarrow Formulas, Inc. , 304 F.3d at 835. Accordingly, Plaintiff’s motion for summary judgment on Defendant’s affirmative defense of laches is GRANTED.
Therefore, consistent with the above analysis, the Plaintiff’s entire Motion for Summary Judgment is GRANTED IN PART and DENIED IN PART . Notwithstanding that outcome, considering the procedural setting of this action, the merits of the Defendant’s Motion are next addressed.
II. DEFENDANT’S MOTION FOR SUMMARY JUDGMENT A. Defendant’s Priority Right to Use “STONE” and STONES” Defendant asserts that it is entitled to claim priority of use because it has utilized the word “STONE” and/or “STONES” in commerce as early as 1991, provided evidence that each and every 30-pack of Keystone Light sold since 1995 included the word “STONES” on its packaging/packaging artwork evidencing continuous, nationwide use of the “STONE” and “STONES” mark beginning in 1991, through 2017. (Doc. Nos. 170 at 13-15; 238 at 1-7.) In support of this assertion, Defendant cites to Casamassima’s Declaration and the corresponding exhibits. .
Plaintiff disputes Defendant’s claim of priority. Specifically, Plaintiff argues that Defendant’s assertion of priority is based off “unverified, supposedly historical documents contained in an “archive” that MillerCoors has refused to allow Stone to inspect.” (Doc. No. 206 at 2-3.) Moreover, not a single MillerCoors executive “has any personal knowledge of Keystone ever using the alleged terms before 1996,” and its only witness to support its claim “is a librarian who has given contradictory testimony and who admittedly has no personal knowledge of whether any of the items (many of which are plainly ‘drafts’) entered the market.” . at 3.
“It is axiomatic in trademark law that the standard test of ownership is priority of
use. To acquire ownership of a trademark it is not enough to have invented the mark first
or even to have registered it first; the party claiming ownership must have been the first
to actually use the mark in the sale of goods or services.”
Rearden LLC v. Rearden
Commerce, Inc.
,
“In determining whether the two prongs of the ‘use in commerce’ test have been
satisfied, [the Ninth Circuit has] … generally followed a ‘totality of the circumstances’
approach. This approach turns on ‘еvidence showing, first, adoption, and, second, use in
a way sufficiently public to identify or distinguish the marked goods in an appropriate
segment of the public mind.’”
Rearden
,
A federal trademark registration is “prima facie evidence of the validity of the
registered mark and of the registration of the mark, of the registrant’s ownership of the
mark, and of the registrant’s exclusive right to sue the registered mark in commerce ….”
15 U.S.C. § 1115(a);
see id.
§ 1057(b). Additionally, after a mark is registered, “the
filing of the application to register such mark shall constitute constructive use of the
mark, conferring a right of priority, nationwide in effect, on or in connection with the
goods or services specified in the registration against any other person except for a person
whose mark has not been abandoned and who, prior to such filing … has used the mark
….” . § 1057(c)(1). Thus, “the registrant is granted a presumption of ownership,
dating to the filing date of the application for federal registration, and the challenger must
overcome this presumption by a preponderance of the evidence.”
Sengoku Works
, 96
F.3d at 1219-20 (citing
Vuitton et Fils S.A. v. J. Young Enters.
,
Here, Plaintiff’s actual intent to use the STONE® mark is clear from the record. Aсcordingly, the question before this Court is whether Defendant provides sufficient evidence from which a reasonable juror could conclude Defendant used the mark prior to 1996. Thus, priority of use is a genuine issue of material fact.
Plaintiff’s application for registration for STONE with the USPTO claims first use
in 1996, and first use in commerce in 1997. (
See
Doc. No. 1.) Defendant’s Motion
asserts that Plaintiff has failed to provide sufficient evidence to support its claim of prior
use of the STONE® mark. (
See
Doc. No. 170.) In support of this assertion, Defendant
argues it has provided declarations and documentation of its use of “STONE” and
“STONES” on packaging material, in advertising, and other marketing merchandise such
as frisbees to demonstrate its prior continuous use, beginning in 1991 and continuing
*31
1
through 2017.
[27]
Furthermore, its use was sufficiently public to establish priority.
[28]
(Doc.
No. 238 at 2.) Defendant claims that the Ninth Circuit has specifically instructed that use
in commerce need not be extensive but need merely show a “bona fide intention to use
the mark in commerce.”
Chance v. Pac-Tel Teletrac Inc.
,
In response, Plaintiff points out that “[m]ere use of a word does not make it a trademark.” [29] (Doc. No. 206 at 3.) In this case, because Defendant’s use of “STONE” and “STONES” varied, it was not clear and/or recognizable without extended analysis that it was intended to identify the item as a Keystone Light beer product. Moreover, Plaintiff’s evidence shows that MillerCoors never used “STONE” or “STONES” on the Keystone packaging or as a source identifier prior to 2017. Id . at 5. It is notable that “MillerCoors’s own internal marketing surveys and analyses establish that consumers ( even its brand loyalists ) never recognized ‘Stone’ and ‘Stones’ as names for Keystone Light beer. Id . at 8. Furthermore, Defendant’s evidence fails to demonstrate that its proffered marketing materials were ever used in commerce, much less prior to 1996. Id . at 9. Additionally, Plaintiff’s evidence shows there was a fourteen-year gap in MillerCoors use of the word “STONE,” proving its use was not continuous. Id . at 12. This fact was most clearly illustrated by Ms. Harris, the Defendant’s archivist who “admitted that, other than 30-packs there was not ‘any Keystone marketing or other materials between 1996 and 2010 that used ‘STONE’ or ‘STONES.’” . Lastly, Defendant’s use of “STONE” in its promotional materials is insufficient to establish trademark rights in the mark. . at 13.
Although it is a close call, considering all the evidence submitted by the parties, there remains a genuine issue of material fact as to whether MillerCoors has demonstrated a priority right to use the “STONE” and/or “STONES” mark. Ultimately, the Defendant may prevail on this issue at trial when the issues are fully fleshed out on direct and cross. However, as the record currently stands, such a determination would be improper on summary judgment. Therefore, the Court DENIES Defendant’s motion for summary judgment as to priority right to use.
B. Lack of Evidence of Willfulness
Plaintiff “must show intentional or willful infringement before disgorgement of
[Defendant’s] profits could be awarded.”
Stone Creek, Inc. v. Omnia Italian Design, Inc.
,
Here, Plaintiff presents evidence that Defendant was admittedly aware of Plaintiff’s fedеrally owned and registered STONE® trademark. (Doc. No. 206 at 16.) Moreover, Defendant intended to trade off the STONE® trademark without a license as evidenced by its conduct in developing advertising materials utilizing the Keystone rebrand theme, “OWN THE STONE.” . at 18. Lastly, Plaintiff contends the Defendant was deliberately indifferent to Plaintiff’s rights when it launched “its ‘OWN THE STONE’ campaign in the face of repeated warnings” that such use would infringe the STONE® mark. . at 19. Defendant on the other hand argues there is no evidence to disprove its claim that MillerCoors used “STONE” and “STONES” prior to Plaintiff’s registration and publication of its STONE® mark, (Doc. No. 170 at 14) or that *34 1 Defendant has used the “STONE” and “STONES” marks continuously since at least 1991. . These are all appropriate and valid arguments the Court expects the parties to make to the jury.
In this case, a jury could find from these facts that the Defendant was willfully using Plaintiff’s mark to suggest a connection between Keystone Light and the Stone Brewery product line. Moreover, a jury could find that such actions have created confusion in the promotion of Keystone Light and Stone products throughout the marketplace. Of course, a jury could find quite the opposite as well. Thus, genuine issues of fact appear such that it is not appropriate for the Court to make such a determination of willfulness at the summary judgment stage. Therefore, Defendant’s Motion is DENIED on this point.
C. Plaintiff’s Trademark Dilution Claims
“Dilution is a cause of action invented and reserved fоr a select class of marks—
those marks with such powerful consumer associations that even non-competing uses can
impinge on their value.”
Avery Dennison Corp. v. Sumpton
,
To prove a claim for dilution under 15 U.S.C. § 1125(c), “a plaintiff must show
that (1) the mark is famous and distinctive; (2) the defendant is making use of the mark in
commerce; (3) the defendant’s use began after the mark became famous; and (4) the
defendant’s use of the mark is likely to cause dilution by blurring or dilution by
tarnishment.”
Jada Tory, Inc. v. Mattel, Inc.
,
Defendant contends that Plaintiff has not adequately alleged that the STONE®
mark is famous, or MillerCoors’s use started after the STONE® mark became famous.
(Doc. No. 170 at 21.) A mark qualifies as famous for the purposes of a dilution claim “if
it is widely recognized by the general consuming public of the United States as a
designation of source of the goods or services of the mark’s owner.” 15 U.S.C. §
1125(c)(2). The mark must have acquired the requisite level of fame by the time “the
defendant first began to use the mark in commerce.”
Pinterest, Inc. v. Pintrips, Inc.
, 140
F. Supp. 3d 997, 1031,
Applying these provisions, the Ninth Circuit has concluded that trademark dilution
“is a cause of action reserved for a select class of marks—those marks with such
powerful consumer associations that even nоncompeting uses can impinge on their
value.”
Nissan Motor Co. v. Nissan Computer Corp.
,
In defending its allegations of dilution fame, Plaintiff points to Stone’s extensive nationwide sales and media coverage. (Doc. No. 206 at 20.) There, Plaintiff states that “Stone has been extensively covered by national and local media outlets since at least the mid-2000s.” Id . Moreover, “Stone has been regularly featured in stories by national news media outlets including virtually every major news outlet in the United States.” Id . Furthermore, “Stone also has received extensive coverage in widely recognized general- interest magazines with national subscriber bases.” . It states that it has done so, not by relying on traditional advertising, “but the simplest advertising technique of all: producing remarkably great beer that journalists and consumers across the country want to talk and write about.” . at 21. Plaintiff also states that it “prioritizes grassroots *37 1 marketing efforts like social media and in-store promotions.” This allows it to maintain an “industry-leading social media presence with hundreds of thousands of followers and/or viewers across multiple platforms,” together with strategic product placement [34] . The combined effect of Stone’s traditional media exposure equals at least $39 million in advertising spending for 2018, $39 million for 2018, and $94.6 million for 2017. . Lastly, it is also important to note, as discussed supra , Plaintiff’s mark is both registered and deemed uncontestable by the PTO. As a result, Plaintiff asserts that the evidence of actual recognition in the record is sufficient to support a finding of fame without the need for a per se survey to support Plaintiff’s claim of fame. [35]
However, the undisputed evidence in the record is not sufficient to show that the STONE® mark is famous within the meaning of 15 U.S.C. § 1125(c)(2). While the fourth of the 15 U.S.C. § 1125(c)(2)(A) factors (regarding registration of the mark) favors Plaintiff, the rest weigh heavily in favor of Defendant. See Parts.com , 996 F. Supp. 2d at 940-41 (dismissing federal trademark dilution claim where the plaintiff’s mark was registered but the plaintiff’s “allegations regarding th[e] [other] three factors are conclusory and do not provide sufficient specific facts to be plausible”).
First, with respect to the “duration, extent, and geographic reach of advertising and
publicity of the mark,” 15 U.S.C. (c)(2)(A)(i), Plaintiff began using the STONE® mark
in 1998, which it displays on the product containers of all the craft beers in the STONE
product line. Defendant offers some evidence that it first began using the “STONE” or
*38
1
“STONES” mark in commerce to sell Keystone Light beer as early as 1991.
[36]
(Doc. No.
170 at 24.) “Since at least 1995, every 30-pack of Keystone Light sold has prominently
featured the ‘STONES’ reference.” . Thus, to prevail on its dilution claims, Plaintiff
must show that the STONE® mark acquired fame by the early to mid-1990s.
See
Pinterest
,
Second, with respect to the amount, volume, and geographic extent of media
coverage, Plaintiff relies on its submission of a declaration with attached press articles
mentioning Stone Brewing. However, it is improper because it was not produced in
discovery and falls short of providing sufficient market context to justify its assertion that
Plaintiff’s mark is famous.
[37]
Specifically, “press accounts are only evidence of fame
when they describe ‘the popularity of the brand.’”
Thank Int’l, Inc. v. Trek Bicycle
Corp.
,
Finally, with respect to the “extent of actual recognition of the mark,” 15 U.S.C. §
(c)(2)(A)(iii), Plaintiff offers only nonconclusory allegations about the extent to which
consumers recognize the STONE® mark. Plaintiff simply alleges that its extensive
nationwide sales and media coverage (
since at least the mid-2000’s
) has enabled it to
achieve ‘Big Beer’ status alongside conglomerates like MillerCoors and Anheuser-Busch.
(Doc. No. 206 at 22.) Thus, given its success, Plaintiff simply argues its STONE® mark
was famous before Defendant began its infringing use in 2017. . In any event,
Plaintiff has not submitted undisputed proof that its STONE® mark is a “household
name,” or that it is famous throughout the population at large. The “extraordinarily high
level of public awareness” required to show fame has been recommended to be at least
75%.”
Pinterest, Inc. v. Pintrips, Inc.
,
Given the high burden that a plaintiff faces in establishing that its mark is sufficiently famous to support a dilution claim, Plaintiff must establish more than conclusory assertions of fame. While this Court cannot, as a matter of law, find that Plaintiff’s STONE® mark is sufficiently famous, it does not find that Plaintiff’s claims lack all merit to justify granting summary judgment on counterclaims three and four. As the evidentiary record currently stands, such a determination would be improper on summary judgment. Therefore, the Court DENIES Defendant’s motion for summary judgment as to Counts three and four for trademark dilution.
D. Defendant’s Laches Defense
The Court has already granted Plaintiff’s motion as to Defendant’s laches affirmative defense. ( See § C supra at 26.) Accordingly, Defendant’s motion for summary judgment is DENIED as Moot.
Therefore, consistent with the above analysis, the Defendant’s Motion for Summary Judgment is DENIED .
III. PLAINTIFF’S MOTION TO STRIKE
Plaintiff submitted a motion to strike portions of Defendant’s summary judgment briefs or, in the alternative, for leave to file supplemental brief. The Court having reviewed the fully briefed motion declines to rule on the motion as it finds the evidence sought to be stricken, or alternatively, to supplement the record, will not change the outcome of the Court’s analysis with respect to Defendant’s motion for summary judgment.
Accordingly, Plaintiff’s motion to strike is DENIED as moot .
CONCLUSION
The Court ORDERS as follows:
(1) The Plaintiff’s Motion for Summary Judgment is GRANTED IN PART and DENIED IN PART ;
(2) The Defendant’s Motion for Summary Judgment is DENIED.
(3) The Plaintiff’s Motion to Strike Portions of Defendant’s Summary Judgment Brief is DENIED as moot .
IT IS SO ORDERED. DATED: March 27, 2020 _________________________
Hon. Roger T. Benitez United States District Court
Notes
[1] “Not all factors are created equal, and their relative weight varies based on the
context of a particular case.”
Stone Creek, Inc. v. Omnia Italian Design, Inc.,
875 F.3d
426, 431 (9th Cir. 2017),
cert. denied
, —U.S.—,
[7]
[2] “To determine a mark’s conceptual strength, we classify a mark along a spectrum
of five categories ranging from [most to least distinctive]: arbitrary, fanciful, suggestive,
27
descriptive, and generic.” . (citing
Network Automation Inc. v. Advancеd Systems
Concepts, Inc.
,
[8]
[3] In the Court’s earlier Order, it said, “STONE® may be considered a suggestive or possibly arbitrary mark. However, currently, the Court is unconvinced that STONE® is an arbitrary mark because the can and packaging incorporate more than just the letters STONE. For example, even a glancing look at the “Selection of Stone’s Iconic Brews” in the Complaint show a large gargoyle perched ominously over the STONE® mark, aptly described as Stone’s mascot. Stone’s packaging appears to reflect the same. Both taken together, serve to strengthen the Court’s finding that its mark is suggestive, not arbitrary. However, the Court agrees, especially considering the marks incontestability, STONE® is entitled to the strong protection afforded to suggestive marks.” (Doc. No. 85 at 7.)
[4] In the Court’s earlier Order, it said, “The Court finds Stone’s mark to be 26 commercially strong and recognizable. Moreover, while it is both nationally and internationally known, it need not reach the level of worldwide profitability and 27 recognition of other market icons like Apple or Starbucks in order to be considered a ‘strong’ mark.” (Doc. No. 85 at 6.)
[9]
[5] “STONE ® is an inherently distinctive mark entitled to the highest degree of 26 protection as a matter of law.” (Doc. No. 175 at 5-6.)
[6] “This lack of recognition is unsurprising given that Stone Brewing is only ‘one 27 brand among over 10,500 other craft beer brands in the United States.” (Doc. No. 202 at 6.)
[10]
[7] An example of a descriptive mark, on thе other hand, is “Honey Roasted” for nuts
roasted with honey.
See Surfvivor Media
,
[11]
[8] “The USPTO came to the same conclusion in 2007 when it held that the parties sell 20 in the same class of goods, namely, beer. And there is only one USPTO classification for beer: Class 32, which includes “beer” and no subclass thereunder.” (Doc. No. 240 at 4.) 21
[9] “Craft beer, like Stone Brewing’s products, is the ‘high end’ of the beer market 22 notable for having some of the highest prices, typically smaller package sizes (such as 6- packs of bottles or cans), higher alcohol content, and unique, intense flavors.” (Doc. No. 23 202 at 13.) 24
[10] “Economy beer, like Keystone, is the ‘value end’ of the beer market with the lowest prices, largest package sizes (typically 15-packs or more), lower alcohol content, 25 and more consistent, light, refreshing flavor.” (Doc. No. 202 at 13.) 26
[11] “Demographic data shows that craft beer and economy beer are largely purchased by different populations. Craft drinkers tend to be younger, higher-income individuals, 27 while economy drinkers tend to be over the age of 55, less educated and lower income.” (Doc. No. 202 at 14.)
[12]
[12] “As part of the rebrand, MillerCoors has attempted to create ‘STONE’ as a verbal nickname for Keystone by commissioning a radio campaign intended to ‘establish our brand nickname (‘STONE) in everyday vernacular.” (Doc. No. 175 at 9.)
[14]
[13] The single-serve cans produced by Plaintiff each contain the STONE mark printed onto the sidе of the can, while Plaintiff’s individual glass bottles utilize a paper label mimicking the logo found on its associated flavor single-serve can.
[15]
[14] “In the Ninth Circuit, district courts often rely on three types of evidence to
26
demonstrate actual confusion: (1) evidence of actual instances of confusion; (2) survey
evidence; and (3) inferences arising from judicial comparison of the conflicting marks
27
and the context of their use in the marketplace.”
HM Elecs. v. R.F. Techs.
, No. 12-CV-
2884-MMA (WMC),
[16]
[15] “This evidence, which Plaintiff’s counsel and expert withheld in clear violation of the Federal Rules, is alone sufficient to create a disputed issue of fact as to whether there is a likelihood of confusion. 6 McCarthy on Trademarks and Unfair Competition § 32:189 (5th ed.) (‘When the percentage results of a confusion survey dip below 10%, they can become evidence which will indicate that confusion is not likely.’).” at 11- 12.
[17]
[16] Additionally, this Court has already found, “[b]oth Stone and Miller sell through thousands of the same stores, restaurants, pubs and liquor stores.” (Doc. No. 175 at 14.)
[18]
[17] “Approximately 28.4% of Stone Brewing sales are on premise, meaning in a restaurant or bar. By contrast, only 2.8% of on-premise accounts sell Keystone.” (Doc. No. 202 at 15.)
[19]
[18] Demographic data shows that economy drinkers generally have blue collar jobs or are not currently in the workforce and have household incomes of $50,000 per year or 27 less and these demographics are mirrored in Keystone Light drinkers. (Doc. No. 202 at 17.)
[20]
[19] First Counterclaim – Declaratory Judgment of MillerCoors’ Right to use STONE and STONES to advertise Keystone Beer. (Doc. No. 109 at 24-25.)
[20] Third Counterclaim – Declaratory Judgment of MillerCoors’ Non-Infringement Based on its Right to the STONE ® Mark. . at 26-27. 27
[21] Fourth Counterclaim – Declaratory Judgment of MillerCoors’ Exclusive Right to Use the Stone Mark in the United States. . at 27-28.
[22]
[22] No case or controversy existed because plaintiff’s claims “would have the Court
declare a safe harbor as equally applicable against Defendant as to any other copyright
holder.”
See Veoh
,
[23]
[23] Plaintiff contends that Defendant admitted that it never considered its use of “STONES” as an enforceable property right and never claimed such as an asset or as goodwill. (Doc. No. 175 at 23.)
[24]
[24] To succeed on its claims for trademark infringement under California common
law, Plaintiff must make the same showing it must make to succeed on its Lanham Act
claim for trademark infringement.
See American Petrofina v. Petrofina of California,
Inc.
,
[25] “MillerCoors never affixed the common law trademark symbol, ‘TM,’ to the words
22
‘Stone’ or ‘Stones’ on any merchandise or materials (
see Edsal
[26] The examples that Defendant has produced include point of sale advertising 25 materials to be displayed in stores and promotional items for Keystone to be distributed 26 to consumers, packages of Keystone Light distributed nationally beginning in 1995, and dozens of additional examples of advertising, all of which clearly were intended to be 27 distributed to consumers and all of which associate the terms “STONE” and/or “STONES” with Keystone beer. (Doc. No. 202 at 22.)
[25]
[27] “…MillerCoors has provided overwhelming, incontrovertible evidence that it used ‘STONE’ and ‘STONES’ to advertise Keystone beer starting in at least 1991, five years 21 before Stone Brewing filed its trademark application, and that it began placing 22 ‘STONES’ on the packaging for its 30-packs beginning in at least 1995, a year before Stone Brewing’s trademark application was filed.” (Doc. No. 170 at 14.) 23
[28] “Correctly examining the totality of MillerCoors’ use of STONE and STONES (on 24 both packaging and marketing materials) undoubtedly shows that use has been ‘sufficiently public’ such that consumers would associate that use with Keystone.”) 25 (Doc. No. 238 at 2-3.) 26
[29] Ninth Circuit courts have cited
Tovey
for the proposition that, where a claimant
uses different designs, colors, fonts, font sizes, and the presentation of a word varies from
27
item to item, the word is unlikely to be a trademark.
See Macy’s v. Strategic Marks
, No.
11-CV-06198-EMC,
[31]
[30] “MillerCoors offers no introducing witness or person with actual knowledge of the brand or its use prior to 1996 legally capable of presenting the material.” (Doc. No. 206 at 9.)
[32]
[31] MillerCoors claims it has provided overwhelming, incontrovertible evidence “that it used ‘STONE’ and ‘STONES’ to advertise Keystone beer starting in at least 1991, five years before Stone Brewing filed its trademark application, and that it began placing
[33]
[33] “The fact that Stone has been widely discussed in dozens of national publications reaching virtually every consumer of media in the United States is strong evidence that 27 Stone is ‘widely recognized by the general consuming public of the United States. 15 U.S.C. § 1125(c)(2).” (Doc. No. 206 at 20, FN*5.)
[36]
[34] “Stone also engages in product placement, with its products appearing in nationally-syndicated TV shows like The Big Bang Theory .” (Doc. No. 206 at 21.)
[35] “Given these admissions and the other extensive evidence of actual recognition, a 26 survey is not necessary. See adidas-Am., Inc. v. Payless Shoesource, Inc. , 546 F. Supp. 2d 1029, 1063 (D. Or. 2008) (“Given the extensive evidence adidas submitted as to each 27 of the statutory ‘fame’ factors, it failure to conduct a fame survey is not dispositive.” (Doc. No. 206 at 22.)
[37]
[36] “Stone Brewing admits that MillerCoors has demonstrated at least some use of STONES in the early 1990s, (ECF No. 206 at 1), which is sufficient to establish prior use…”) (Doc. No. 238 at 10.)
[37] A mark is not famous simply because it is mentioned in media outlets.
Thane Int’l,
Inc. v. Trek Bicycle Corp
.
[38] “The fact that Stone has been widely discussed in dozens of national publications reaching virtually every consumer of media in the United States is strong evidence that 27 Stone is ‘widely recognized by the general consuming public of the United States.’” (Doc. No. 206 at fn.*4.)
[38]
[39] Plaintiff contends Defendants infringing use of the STONE® mark began in 2017, as opposed to Defendants assertion that it began using STONE and STONES back in 1991.
[39]