White v. Parks et al, No. 4:2015cv05011 - Document 39 (E.D. Wash. 2015)
Court Description: ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT'S 25 MOTION FOR PARTIAL SUMMARY JUDGMENT, AND ENJOINING PLAINTIFF'S USE OF "IT'S PAWSIBLE" Signed by Senior Judge Edward F. Shea. (JW, Operations Clk)
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White v. Parks et al Doc. 39 1 2 3 4 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF WASHINGTON 5 6 7 ALAN WHITE, d/b/a “It’s Pawsible,” CASE NO. 4:15-CV-5011-EFS 8 Plaintiff, 9 v. 10 11 WAYNE PARKS, ELIZABETH OSTROWSKIPARKS, and IT’S PAWSIBLE DOG TRAINING CENTER, INC., ORDER GRANTING IN PART AND DENYING IN PART DEFENDANT’S MOTION FOR PARTIAL SUMMARY JUDGMENT, AND ENJOINING PLAINTIFF’S USE OF “IT’S PAWSIBLE” 12 Defendant. 13 14 WAYNE PARKS and ELIZABETH OSTROWSKI-PARKS, 15 CounterclaimPlaintiffs, 16 17 v. 18 19 ALAN WHITE, d/b/a “It’s Pawsible,” 20 CounterclaimDefendant. 21 22 It is more than possible that two dog-obedience training businesses 23 use the name It’s Pawsible: it happened. Plaintiff Alan White operates 24 a dog-obedience training business under the names It’s Pawsible and Al’s 25 Pawsible in Washington. Defendants Wayne Parks and Elizabeth Ostrowski- 26 Parks operate a business under the nationally registered mark, It’s ORDER - 1 Dockets.Justia.com 1 Pawsible, in Massachusetts. Before the Court, without oral argument, 2 is the Parks’ Motion for Partial Summary Judgment, ECF No. 25, which 3 seeks summary judgment in their favor on their trademark-infringement 4 counterclaim and on Mr. White’s claim for declaratory judgment of non- 5 infringement, regarding Mr. White’s use of the marks It’s Pawsible and 6 Al’s Pawsible. 7 Court grants the Parks’ motion as to It’s Pawsible and denies the motion 8 as to Mr. White’s use of Al’s Pawsible. 9 A. After reviewing the record and relevant authority, the Factual Statement1 In 2006 or 2007, Massachusetts residents Wayne Parks and Elizabeth 10 11 Ostrowski-Parks began marketing and selling dog-obedience training 12 services under the name It’s Pawsible. It’s Pawsible’s services include 13 dog-obedience training classes and videos that can be purchased onsite 14 or online at http://www.itspawsible.com. 15 Decl., ECF No. 26 ¶ 3. 16 Pawsible as a trademark with the U.S. Patent and Trademark Office’s 17 Principal Register in International Class 41 for “dog obedience training 18 instruction.” Answer, ECF No. 14 ¶ 2; Parks On February 26, 2007, the Parks registered It’s Id. ¶ 4. Trademark registration was granted for It’s 19 20 21 22 1 When considering this motion and creating this factual section, the Court 1) believed the undisputed facts and the non-moving party=s evidence, 2) 23 drew all justifiable inferences therefrom in the non-moving party=s favor, 24 3) did not weigh the evidence or assess credibility, and 4) did not accept assertions made by the non-moving party that were flatly contradicted by 25 26 the record. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986); Scott v. Harris, 550 U.S. 372, 380 (2007). ORDER - 2 1 Pawsible to the Parks on November 13, 2007. Id. ¶ 5 & Ex. A. 2 trademark registration was later extended to November 2017. The Id. ¶ 6. On the other side of the United States, during this same time 3 4 frame, Alan White obtained a license from the Washington State 5 Department of Licensing to operate “It’s Paws-ible Dog Training” and 6 registered that trade name in Washington on August 21, 2007. 7 Decl., ECF No. 27, Ex. A. 8 Washington State Department of Revenue and obtained a tax identification 9 number under that name. Id., Ex. B. Mr. White markets his dog-obedience 10 training services in the Tri-Cities, Washington through It’s Pawsible 11 Dog Training and Al’s Pawsible Dog Training and uses two web addresses: 12 http://itspawsible.webs.com/ and http://www.alspawsibledogtraining. 13 com. Atkins Mr. White opened an account with the Atkins Decl., ECF No. 27, Exs. C & D. 14 Because both businesses operate under the name It’s Pawsible, at 15 least one individual, and possibly two individuals, mistakenly contacted 16 the Parks in Massachusetts, rather than Mr. White in Washington, for 17 dog-obedience services in Tri-Cities, Washington. 18 ECF No. 33, Ex. 1 ¶¶ 9 & 10. 19 number 20 “pawsible” in their business name. 21 of In other January In addition to these two businesses, a animal-related 2015, ECF No. 26, Ex. D; following businesses utilize some form of ECF No. 33, Ex. 1, ex. A. the second instance of customer 22 confusion, Mr. Parks contacted Mr. White and advised him that he owned 23 a federal trademark registration for It’s Pawsible for dog-obedience 24 training services and requested that Mr. White cease and desist using 25 the names It’s Pawsible and Al’s Pawsible. 26 White filed this lawsuit against the Parks, seeking a declaratory ORDER - 3 On January 29, 2015, Mr. 1 judgment that It’s Pawsible and Al’s 2 trademark infringement as to the Parks’ It’s Pawsible Dog Training 3 Center and Day Camp. 4 summary-judgment motion requesting the Court enter summary judgment in 5 their favor on their counterclaim for trademark infringement and on Mr. 6 White’s claim for a declaratory judgment of non-infringement. 7 25. 8 B. ECF No. 1. Pawsible do not constitute Thereafter, the Parks filed this ECF No. Standard 9 Summary judgment is appropriate if the record establishes "no 10 genuine dispute as to any material fact and the movant is entitled to 11 judgment as a matter of law.@ 12 summary judgment must point to specific facts establishing a genuine 13 dispute of material fact for trial. 14 317, 324 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 15 U.S. 574, 586-87 (1986). 16 showing for any of the elements essential to its case for which it bears 17 the burden of proof, the trial court should grant the summary-judgment 18 motion. 19 C. Fed. R. Civ. P. 56(a). The party opposing Celotex Corp. v. Catrett, 477 U.S. If the non-moving party fails to make such a Celotex Corp., 477 U.S. at 322. Analysis 20 “The Lanham Act provides national protection of trademarks in 21 order to secure to the owner of the mark the goodwill of his business 22 and to protect the ability of consumers to distinguish among competing 23 producers.” 24 189, 25 counterclaim, 26 trademark with priority over Mr. White’s use and that Mr. White’s use 198 ORDER - 4 Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. (1985). the To Parks prevail must on prove their they have trademark-infringement a valid protectable 1 of the same or similar mark is likely to confuse the public. 2 Brookfield Comms., Inc. v. W. Coast Enter’t Corp., 174 F.3d 1036, 1046 3 (9th Cir. 1999); Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 826 F.2d 4 837 (9th Cir. 1987). 5 evidence of mark ownership. 6 Lanham Act § 33(a), 15 U.S.C. § 1115(a)3. Federal registration of the mark is prima facie Lanham Act § 7(b), 15 U.S.C. § 1057(b)2; Here, the Parks registered the mark It’s Pawsible with the federal 7 8 See government. Accordingly, the Parks are presumed to own the It’s 9 10 2 11 “A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of 12 the validity of the registered mark and of the registration of the 13 mark, of the owner's ownership of the mark, and of the owner's 14 exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate, 15 subject to any conditions or limitations stated in the certificate.” 16 17 15 U.S.C. § 1057(b). 3 “Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a mark registered on the principal 18 register provided by this chapter and owned by a party to an action 19 shall be admissible in evidence and shall be prima facie evidence 20 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 21 registrant's exclusive right to use the registered mark in commerce 22 on or in connection with the goods or services specified in the 23 registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any 24 legal or equitable defense or defect, including those set forth in 25 subsection (b) of this section, which might have been asserted if 26 such mark had not been registered.” 15 U.S.C. § 1115(a). ORDER - 5 1 Pawsible mark since February 6, 2007—the filing date of the Parks’ 2 application for federal registration of the mark. 3 & Rec. for the State of Calif. v. Bazaar Del Mundo Inc., 448 F.3d 1118, 4 1125-26 (9th Cir. 2006). 5 validity with evidence that he was the first to use the mark in the 6 sale of goods or services. 7 96 F.3d 1217, 1220 (9th Cir. 1996); Brookfield Comm’ns, Inc., 174 F.3d 8 at 1047. See Dep’t of Parks Mr. White can overcome this presumption of See Sengoku Works Ltd. v. RMC Intern., Ltd., 9 The record before the Court shows that Mr. White began operating 10 his business either in the summer or fall of 2007—well after the Parks 11 began their It’s Pawsible dog-obedience business and applied for federal 12 registration of the It’s Pawsible mark in February 2007. 13 the Court finds Mr. White has not rebutted the presumption that the 14 Parks’ registered It’s Pawsible mark is valid and has priority over his 15 use. 16 claim, that they registered an Al’s Pawsible mark or have used Al’s 17 Pawsible in their dog-obedience business. 18 Accordingly, However, there is no evidence in the record, nor do the Parks The next question is whether Mr. White’s continued use of It’s 19 Pawsible and/or Al’s Pawsible is likely to confuse the public. 20 answer this question, the Court considers the Sleekcraft factors under 21 the totality of the circumstances: 1) the strength of the mark, 2) 22 relatedness of the goods, 3) similarity of the marks, 4) evidence of 23 actual confusion, 5) marketing channels used, 6) likely degree of 24 purchaser care, 7) defendant’s intent in selecting the mark, and 8) 25 likelihood of expansion of product lines. 26 Survivor Prods., 406 F.3d 625, 631 (9th Cir. 2005); AMV, Inc. v. ORDER - 6 To Surfvivor Media, Inc. v. 1 Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), abrogation in 2 part on other grounds recognized by Mattel, Inc. v. Walking Mtn. Prods., 3 353 F.3d 792, 810, n.19 (9th Cir. 2003). 4 each factor is case specific. 5 Inc., No. 13-55575, --- F.3d ----, 2015 WL 4068877, *5 (9th Cir. July 6 6, 2015). 7 “far from certain that consumers were likely to be confused [and still 8 be] confident that the question is close enough that it should be 9 answered as a matter of fact by a jury, not as a matter of law by a The relative importance of Multi Time Machine, Inc. v. Amazon.com, When analyzing a summary-judgment motion, a court may be 10 court.” Multi Time Machine, 2015 WL 4058877, *5 (quoting Fortune 11 Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 12 1025, 1031 (9th Cir. 2010)). 13 about the sophistication of would-be consumers. 14 a genuine issue of fact as to any of the factors, there is more likely 15 to be a genuine issue of fact as to whether there is likelihood of 16 confusion. 17 every factor weighs in his favor, [he must] only . . . make a strong 18 showing as to some of them.” 19 confusion is submitted, it strongly supports a finding of a likelihood 20 of confusion. And the court may not make assumptions Id. at 7. “If there is The party opposing summary judgment “need not show that Id. at 6. Yet, where evidence of actual Id. at 8. 21 After considering these Sleekcraft factors, the Court determines, 22 as a matter of law, that Mr. White’s use of It’s Pawsible is likely to 23 cause confusion with the Parks’ It’s Pawsible mark. 24 the marks is identical. 25 and market on the internet by having a website for their business. 26 Finally, at least one of Mr. White’s clients, and possibly two, have ORDER - 7 The language of Both businesses provide dog-obedience training 1 confused the Parks’ business with Mr. White’s business, notwithstanding 2 that these businesses are located on opposite sides of the United 3 States. 4 favorable to Mr. White, the Court determines Mr. White failed to dispute 5 that his use of It’s Pawsible is unlikely to cause confusion with the 6 Parks’ valid It’s Pawsible trademark. 7 continued use of It’s Pawsible is likely to cause confusion with the 8 Parks’ valid mark, the Parks are entitled to summary judgment on their 9 counterclaim of trademark infringement in regard to Mr. White’s use of 10 It’s Pawsible, and to summary judgment in their favor on Mr. White’s 11 claim for a declaratory judgment of non-infringement in regard to his 12 use of It’s Pawsible. Accordingly, when viewing the evidence in the light most Therefore, because Mr. White’s 13 Yet, the Court finds the Sleekcraft factors do not support a 14 finding as a matter of law that Mr. White’s use of Al’s Pawsible is 15 likely to cause confusion with the Parks’ It’s Pawsible mark. 16 names do contain “Pawsible.” And the first word of each name contains 17 an “’s” after two letters. “Al’s” is an abbreviation for Alan, Mr. 18 White’s first name—it is specific to the owner; whereas, “It’s” is a 19 generic term. 20 or refer to the same matter. 21 intended to cause confusion by using the name Al’s Pawsible. 22 Time Machine, 2015 WL 4068877, *7. 23 for the Court on the point of consumer confusion, the Court must draw 24 all reasonable inferences in favor of the non-moving party. 25 done so, the Court finds there is currently a genuine dispute of material 26 fact as to Mr. White’s use of Al’s Pawsible and denies the Parks summary ORDER - 8 Both Both words are three-letter words but they do not rhyme There is no evidence that Mr. White See Multi While this is a very close question Having 1 judgment on their counterclaim of trademark infringement in regard to 2 Mr. White’s use of Al’s Pawsible.4 3 prove enlightening. 4 D. It’s possible that discovery will Conclusion 5 For the above-given reasons, IT IS HEREBY ORDERED: 6 1. The Parks’ Motion for Partial Summary Judgment, ECF No. 25, 7 is GRANTED IN PART (It’s Pawsible) and DENIED IN PART (Al’s 8 Pawsible). 2. 9 Summary judgment is entered in the Parks’ favor on their trademark-infringement counterclaim as to It’s Pawsible. 10 3. 11 Mr. White’s claim for a declaratory judgment that his use of 12 It’s 13 trademark is denied as a matter of law. 4. 14 Pawsible Mr. White does and not his infringe agents, servants, employees, 16 acting in concert or participation with him are permanently 17 enjoined from: 18 a. Using any assigns, registered representatives, displaying and Parks’ 15 or successors the simulation, and all others reproduction, 19 counterfeit, copy, or colorable imitation of the Parks’ 20 IT’S PAWSIBLE registered trademark in connection with 21 providing, offering to provide, selling, offering to sell, 22 23 24 4 25 26 Mr. White has not moved for summary judgment in his favor in regard to his claim that his infringement. ORDER - 9 use of Al’s Pawsible does not constitute trademark 1 promoting, or advertising 2 dog-training services and related goods and services; 3 b. Registering or continuing to register any domain name that 4 contains any simulation, reproduction, counterfeit, copy, 5 or 6 registered 7 which Mr. White shall transfer to the Parks within ten 8 days from the date of this Order. 9 paying for the use of this domain name from that point the including Parks’ IT’S PAWSIBLE itspawsible.webs.com, The Parks are to begin trademark in any trade or corporate names. 12 15 trademark, of c. Using the names and logos of the Parks’ IT’S PAWSIBLE 11 14 imitation forward if they desire to retain the domain; and 10 13 colorable IT IS SO ORDERED. The Clerk’s Office is directed to enter this Order and provide copies to all counsel. DATED this 4th day of August 2014. 16 s/Edward F. Shea EDWARD F. SHEA Senior United States District Judge 17 18 19 20 21 22 23 24 25 26 Q:\EFS\Civil\2015\5011.msj.lc1.docx ORDER - 10
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