One Industries, LLC v. Jim O'Neal Distributing

Citation578 F.3d 1154
Decision Date24 August 2009
Docket NumberNo. 08-55316.,08-55316.
PartiesONE INDUSTRIES, LLC, a limited liability company, Plaintiff-counter-defendant-Appellee, v. JIM O'NEAL DISTRIBUTING, INC., a corporation, Defendant-counter-claim-3rd-party-plaintiff-Appellant, v. Marc Blanchard; Ludovic Boinnard, Third-party-defendants-Appellees.
CourtU.S. Court of Appeals — Ninth Circuit

R. Joseph Trojan, Trojan Law Offices, Beverly Hills, CA, argued the cause for Jim O'Neal Distributing, Inc., and filed the briefs.

Jonathan Hangartner, X-Patents, APC, La Jolla, CA, argued the cause for One Industries, LLC, Marc Blanchard, and Ludovic Boinnard and filed the brief.

Appeal from the United States District Court for the Southern District of California, John A. Houston, District Judge, Presiding.

Before: JOHN T. NOONAN, DIARMUID F. O'SCANNLAIN, and SUSAN P. GRABER, Circuit Judges.

Opinion by Judge O'SCANNLAIN; Partial Concurrence and Partial Dissent by Judge GRABER.

O'SCANNLAIN, Circuit Judge:

We venture into the world of motocross racing to determine whether federal trademark law protects a motorcycle apparel company's use of a stylized "O" on its products.

I
A

Motocross is a popular form of off-road, rough terrain motorcycle racing. Jim O'Neal Distributing, Inc. ("O'Neal"), is a leader in the industry. Founded in 1970, O'Neal equips riders with boots, jerseys, helmets, and other racing indispensables. By 1998, O'Neal had captured 17.5% of the market for motocross apparel and helmets—about the same proportion, according to the record, as Ford's share of the 2006 U.S. car market.

Though motocross racing is all about dirt and dust, O'Neal's success apparently also depended on fashion. In 1991, O'Neal began decorating its products with a stylized O followed by an apostrophe (the "O' mark"). Over the years, O'Neal experimented with different versions of the O' mark. In 1992, O'Neal flattened the original, creating a compressed mark. A year later, O'Neal created a slanted mark. In 1997, O'Neal developed a thicker, boxier O' mark with rounded corners (the "Rounded O' mark"). Finally, in 2003, O'Neal adopted the current O' mark, which abandons the rounded corners of the 1997 mark in favor of an angular approach (the "Angular O' mark"). The graphical timeline below shows the evolution of O'Neal's O' mark:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

O'Neal's products also often feature a stylized "O'NEAL" (the "O'NEAL mark"):

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Compared to O'Neal, One Industries, LLC, is a newcomer to the motocross world. Founded in 1997 by a graphic designer, One Industries began by selling stickers and decals. By 2003, One Industries had added helmets and clothing to its product lines, putting it in direct competition with O'Neal.

Style is also a pillar of One Industries' success. In 1999, One Industries developed the "One Icon," which it describes as two interlacing number ones:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Also in 1999, One Industries created the "One Angular" mark:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Like O'Neal, One Industries now uses the One Icon and the One Angular mark on motorcycle-related apparel and headgear.

B

As One Industries grew from a decal and sticker producer to a full-fledged motocross apparel company, it attracted O'Neal's unwelcome eye. In 2006, O'Neal accused One Industries of infringing the 2003 Angular O' mark and the O'NEAL mark. O'Neal asserted that the O' mark had been in use "for over a decade," and the "O'NEAL" mark had been in use "for over thirty-five years."

One Industries did not give an inch, denying that its One Icon and One Angular marks infringed O'Neal's trademarks. One Industries accused O'Neal of falsely representing that its O' mark had been in use for over a decade, pointing out that the Angular O' mark was created in 2003. According to One Industries, the One Icon and One Angular marks, which were created and registered in 1999, are senior to the Angular O' mark. Two days later O'Neal replied, reiterating its position that One Industries' marks infringed the Angular O' mark and the O'NEAL mark.

One Industries subsequently sought a declaratory judgment in the United States District Court for the Southern District of California that the One Icon and One Angular marks did not infringe O'Neal's trademarks. O'Neal, in its answer, asserted six counterclaims for trademark infringement of the O' and O'NEAL marks, trade dress infringement, and unfair competition under California state law. O'Neal also brought a third-party complaint against One Industries' founders, alleging trademark infringement and trade dress infringement.

Before discovery, One Industries moved for a more definite statement under Federal Rule of Civil Procedure 12(e), claiming that O'Neal's complaint did not identify the particular iteration of its O' mark that was allegedly infringed. In opposition, O'Neal contended that "[t]here is no need for a more definite statement" because "O'Neal has used a singular O' mark that has changed slightly over the years.... [O]nly one mark is at issue in O'Neal's trademark infringement claim."

The district court granted One Industries' motion for a more definite statement. It reasoned that "two of the marks alleged to be one have been registered separately and the marks presented appear to this Court to be more than just slightly different." O'Neal accordingly amended its answer and counterclaims to assert infringement of the 1997 Rounded O' mark. Later, the district court granted summary judgment to One Industries on all claims. O'Neal timely appealed.

II

O'Neal primarily contends that the district court erred by refusing to "tack" the different versions of the O' mark dating back to 1991. According to O'Neal, each iteration of the O' mark constituted a continuation of the same mark rather than a creation of a new mark. Tacking matters because One Industries first used the One Icon in 1999after O'Neal developed the 1997 Rounded O' mark but before O'Neal created the 2003 Angular O' mark. It is a cardinal principle of federal trademark law that the party who uses the mark first gets priority. See Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1047 (9th Cir.1999) ("It is axiomatic ... that the standard test of ownership is priority of use.... [T]he party claiming ownership must have been the first to actually use the mark in the sale of goods or services." (internal quotation marks omitted)). Thus, if the Rounded and Angular O' marks are the same mark, then the district court should have compared the One Icon with the 2003 Angular O' mark; if the marks are different, however, then the district court correctly compared the One Icon with the 1997 Rounded O' mark.

A

Before we reach the merits, we must confront dueling procedural arguments.

At the outset, One Industries insists that O'Neal forfeited the tacking argument by failing to raise it in the district court. A party normally may not press an argument on appeal that it failed to raise in the district court. See Allen v. Ornoski, 435 F.3d 946, 960 (9th Cir.2006) ("[A] party cannot treat the district court as a mere ill-placed bunker to be circumvented on his way to this court where he will actually engage his opponents." (alteration in original) (internal quotation marks omitted)).

One Industries emphasizes that O'Neal's amended counterclaims, which alleged infringement of the Rounded O' mark, did not raise the tacking issue. It also notes that the district court's summary judgment order did not address tacking. In response, O'Neal contends that the district court rejected the tacking argument in its order granting One Industries' motion for a more definite statement. In O'Neal's view, the law of the case doctrine precluded it from raising tacking again during the summary judgment proceedings. O'Neal also argues that "this entire case has been predicated from the beginning on the doctrine of tacking." It points to the original exchange of litigation threats with One Industries in which the parties disputed whether O'Neal had used the Angular O' mark for "over a decade." Tellingly, however, O'Neal's Notice of Appeal refers only to the summary judgment order, not to the order granting the motion for a more definite statement.

After picking through the tangled procedural posture of this case, we are satisfied that O'Neal did not forfeit its tacking claim. Tacking was fleshed out during the proceedings surrounding the motion for a more definite statement. While O'Neal did not use the word "tack" in its opposition to the motion for a more definite statement, it raised the essence of the claim:

O'Neal objects to Boinnard and Blanchard's attempt to characterize O'Neal's O' mark as "five distinct" marks. O'Neal plainly lays out the evolution and continued use of the O' mark since its inception in its Third-Party Complaint.... Consequently, no further statement is necessary concerning O'Neal's infringement claim of the O' mark, given the extremely well-settled law that a party is entitled to modify a mark over the years if the change neither creates a new mark nor changes the commercial impression created by the old mark, especially where the only change concerned is lettering style.

In addition, the district court expressly considered and rejected such argument: "This Court is unpersuaded by O'Neal's claim that it uses only one mark that has been slightly altered over the years because two of the marks alleged to be one have been registered separately and the marks presented appear to this Court to be more than just slightly different." Thus, the district court had an adequate opportunity to rule, and actually did rule, on the tacking issue, making it the "law of the case" and not subject to reopening. See Agostini v. Felton, 521 U.S. 203, 236, ...

To continue reading

Request your trial
89 cases
  • Golden Eye Media USA, Inc. v. Trolley Bags UK Ltd.
    • United States
    • U.S. District Court — Southern District of California
    • March 12, 2021
    ...F.Supp.3d 1220][Editor's Note: The preceding image contains the reference for footnote17 ].See, e.g., One Indus., LLC v. Jim O'Neal Distrib., Inc. , 578 F.3d 1154, 1165 (9th Cir. 2009) ("A side-by-side comparison of the two marks speaks for itself" and showed that the marks were "drasticall......
  • Humanitarian Law Project v. U.S. Treasury Dept.
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • August 24, 2009
  • Uncommon, LLC v. Spigen, Inc.
    • United States
    • U.S. District Court — Northern District of Illinois
    • March 26, 2018
    ...[124–9] at 8, 11. Such wide use of similar terms by different companies further weakens the mark. See One Indus., LLC v. Jim O'Neal Distrib., Inc. , 578 F.3d 1154, 1164–65 (9th Cir. 2009) ; see also Packman , 267 F.3d at 646 ("widely used descriptive phrase" indicated a weak mark); Blau Plu......
  • Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V.
    • United States
    • U.S. District Court — District of Columbia
    • May 27, 2016
    ...consumer would consider the prior and subsequent designs to be the ‘same mark.’ " (citations omitted)); One Indus., LLC v. Jim O'Neal Distrib., Inc. , 578 F.3d 1154, 1161 (9th Cir.2009) ("[T]acking will be allowed only if the marks are virtually identical."); Quiksilver, Inc. v. Kymsta Corp......
  • Request a trial to view additional results
1 books & journal articles
  • Knowledge curation.
    • United States
    • Notre Dame Law Review Vol. 86 No. 5, September 2011
    • September 1, 2011
    ...the goods and to facilitate differentiation of the trademark owner's goods."). (11) One Indus., LLC v. Jim O'Neal Distrib., Inc., 578 F.3d 1154, 1160 (9th Cir. 2009) (emphasis omitted) (quoting Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1048 (9th Cir. (12) Compare Ju......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT