Alberto-Culver Co. v. Trevive, Inc.

• Decision Date: 07 May 2002
• Docket Number: No. CV 01-5336-RC.,CV 01-5336-RC.
• Citation: 199 F.Supp.2d 1004
• Parties: ALBERTO-CULVER CO., a Delaware Corporation, v. TREVIVE, INC., a California Corporation, Defendant.
• Court: U.S. District Court — Central District of California

199 F.Supp.2d 1004

ALBERTO-CULVER CO., a Delaware Corporation, v. TREVIVE, INC., a California Corporation, Defendant.

No. CV 01-5336-RC.

United States District Court, C.D. California.

May 7, 2002.

Charles R. Mandly, Wildman, Harrold, Allen & Dixon, Chicago, IL, for plaintiff.

Dennis G. Martin, Willmore F. Holbrow, Blakely, Sokoloff, Taylor & Zafman, Los Angeles, CA, for defendant.

MEMORANDUM DECISION AND ORDER

CHAPMAN, United States Magistrate Judge.

On January 22, 2002, plaintiff Alberto-Culver Co. filed a notice of motion and motion for summary judgment,¹ with supporting memorandum of points and authorities and declaration of Nathan E. Ferguson (with exhibits), a statement of uncontroverted facts and conclusions of laws, and a proposed order. Plaintiff claims that as a result of prior litigation between the parties before the Trademark Trial and Appeal Board ("Board") of the Patent and Trademark Office ("PTO"), see Alberto-Culver Co. v. Han Beauty, Inc., 1999 WL 1004627 (Trademark Tr. & App. Bd.), and Federal Circuit Court of Appeals, Han Beauty, Inc., v. Alberto-Culver Co., 236 F.3d 1333 (Fed.Cir.2001), defendant Trevive, Inc., should be collaterally estopped from relitigating the issues of plaintiff's ownership of its TRES-family of marks for hair care products and whether defendant's use of its TREVIVE trade name for hair care products results in a likelihood of confusion in violation of plaintiff's rights. The plaintiff, therefore, requests this Court enter partial summary judgment in its favor, and permanently enjoin defendant from using the TREVIVE mark.

On March 6, 2002, defendant filed its memorandum of points and authorities in opposition to plaintiff's summary judgment motion, a statement of genuine issues of material fact in opposition to plaintiff's motion, the supporting declarations of Willmore F. Holbrow, Steve Han, Mary Goodstein and Dr. Itamar Simonson,² and an appendix of exhibits. Defendant contends that collateral estoppel does not apply to this action.

On March 20, 2002, plaintiff filed a reply memorandum, with the supporting declaration of Mike Yaghmai.

Oral argument was held on April 22, 2002, before Magistrate Judge Rosalyn M. Chapman. Charles R. Mandly, attorney-at-law, appeared on behalf of plaintiff, and Dennis G. Martin and William F. Holbrow, attorneys-at-law, appeared on behalf of defendant.

BACKGROUND

I

On June 15, 2001, plaintiff Alberto-Culver Co., a Delaware corporation, filed a complaint against Trevive, Inc., a California corporation, setting forth five causes of action: (1) trademark infringement, in violation of 15 U.S.C. § 1114; (2) false designation of origin, in violation of 15 U.S.C. § 1125(a); (3) unfair competition and dilution, in violation of 15 U.S.C. § 1125(c); (4) trademark dilution, in violation of California Business & Professions Code ("Cal. Bus. & Prof. C.") §§ 14330, et seq.; and (5) unfair competition and deceptive trade practices, in violation of Cal. Bus. & Prof. C. §§ 17200, et seq.³ Plaintiff seeks injunctive relief, an accounting, compensatory damages, punitive damages, treble damages, attorney's fees and costs. The gravamen of plaintiff's complaint is that defendant markets and sells hair care products under the trade name TREVIVE, with the knowledge of plaintiff's registered TRES-family of marks for hair care products and without the consent or authorization of plaintiff. The defendant answered the complaint on August 8, 2001, and raised five affirmative defenses.

II

On May 3, 1994, Han Beauty, Inc., filed an application (serial no. 74/519,598) with the PTO to register a trademark for "TREVIVE NUTRIENTS FOR LIFE OF YOUR HAIR." Alberto-Culver Co., 1999 WL 1004627 at *1 n. 1. The registration was subsequently assigned to the defendant, Trevive, Inc. Id.; see also Ferguson Decl., Exh. 1 at 141-42. On October 10, 1995, plaintiff filed a Notice of Opposition to the trademark registration under 15 U.S.C. § 1052(d), arguing that "[u]se by applicant of the mark TREVIVE and Design for hair shampoo, hair conditioning, hair gel, and hair spray is likely to cause confusion, mistake, or deception with each of opposer's TRES-trademarks or in the belief that applicant or its TREVIVE and Design products are in some way legitimately connected with, or licensed or approved by, opposer." Ferguson Decl., Exh. 1 at 13-15.

The parties then conducted discovery and presented evidence to the Board, which, on November 10, 1999, sustained plaintiff's opposition and denied registration of the disputed trademark. Alberto-Culver Co., 1999 WL 1004627 at *1-4. The defendant appealed the Board's decision to the Federal Circuit Court of Appeals, which affirmed the Board's decision. Han Beauty, Inc., 236 F.3d at 1334-38.

DISCUSSION

III

Federal Rule of Civil Procedure 56(c) authorizes the granting of summary judgment if "there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law." The moving party bears the initial burden of identifying the elements of the claim in the pleadings, or other evidence which the moving party "believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 2553, 91 L.Ed.2d 265 (1986); Adickes v. S.H. Kress and Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 1608, 26 L.Ed.2d 142 (1970); McClure v. Life Ins. Co. of North America, 84 F.3d 1129, 1132-33 (9th Cir.1996) (per curiam). "A material issue of fact is one that affects the outcome of the litigation and requires a trial to resolve the parties' differing versions of the truth." S.E.C. v. Seaboard Corp., 677 F.2d 1301, 1306 (9th Cir.1982). The burden then shifts to the nonmoving party to establish, beyond the pleadings, that there is a genuine issue for trial. Celotex Corp., 477 U.S. at 324, 106 S.Ct. at 2553; Gasaway v. Northwestern Mutual Life Ins. Co., 26 F.3d 957, 959-60 (9th Cir.1994).

"[I]n ruling on a motion for summary judgment, the nonmoving party's evidence `is to be believed, and all justifiable inferences are to be drawn in [that party's] favor.'" Hunt v. Cromartie, 526 U.S. 541, 552, 119 S.Ct. 1545, 1551-52, 143 L.Ed.2d 731 (1999) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 2513, 91 L.Ed.2d 202 (1986)); Diruzza v. County of Tehama, 206 F.3d 1304, 1314 (9th Cir.), cert. denied, 531 U.S. 1035, 121 S.Ct. 624, 148 L.Ed.2d 533 (2000). However, more than a "metaphysical doubt" is required to establish a genuine issue of material fact. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 1356, 89 L.Ed.2d 538 (1986); Scribner v. Worldcom, Inc., 249 F.3d 902, 907 (9th Cir.2001). Rather, "the nonmoving party must come forward with `specific facts showing that there is a genuine issue for trial.'" Matsushita Elec. Indus. Co., 475 U.S. at 587, 106 S.Ct. at 1356 (citation omitted); Devereaux v. Abbey, 263 F.3d 1070, 1076 (9th Cir.2001) (en banc). In an appropriate trademark infringement case, likelihood of confusion may be determined as a matter of law. Murray v. Cable Nat'l Broad. Co., 86 F.3d 858, 860-61 (9th Cir.1996), cert. denied, 519 U.S. 1058, 117 S.Ct. 689, 136 L.Ed.2d 613 (1997).

IV

Under collateral estoppel or issue preclusion, "once an issue is actually and necessarily determined by a court of competent jurisdiction, that determination is conclusive in subsequent suits based on a different cause of action involving a party to the prior litigation." Montana v. United States, 440 U.S. 147, 153, 99 S.Ct. 970, 973, 59 L.Ed.2d 210 (1979); Allen v. McCurry, 449 U.S. 90, 94, 101 S.Ct. 411, 414-15, 66 L.Ed.2d 308 (1980); Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n. 5, 99 S.Ct. 645, 649 n. 5, 58 L.Ed.2d 552 (1979).⁴ "To preclude parties from contesting matters that they have had a full and fair opportunity to litigate protects their adversaries from the expense and vexation attending multiple lawsuits, conserves judicial resources, and fosters reliance on judicial action by minimizing the possibility of inconsistent decisions." Montana, 440 U.S. at 153-54, 99 S.Ct. at 973-74; Disimone v. Browner, 121 F.3d 1262, 1267 (9th Cir.1997).

Here, plaintiff seeks to apply "offensive" collateral estoppel, which "occurs when a plaintiff seeks to foreclose a defendant from relitigating an issue the defendant has previously litigated unsuccessfully in another action against the same or a different party." United States v. Mendoza, 464 U.S. 154, 159 n. 4, 104 S.Ct. 568, 571 n. 4, 78 L.Ed.2d 379 (1984); National Med. Enter, Inc. v. Sullivan, 916 F.2d 542, 545 n. 2 (9th Cir.1990), cert. denied, 500 U.S. 917, 111 S.Ct. 2014, 114 L.Ed.2d 100 (1991).

Collateral estoppel bars a party from relitigating an issue if the issue at stake is identical to the one alleged in the prior litigation, the issue was actually litigated in the prior litigation, and the determination of the issue in the prior litigation was a critical and necessary part of the judgment in the earlier action. Disimone, 121 F.3d at 1267; Figueroa v. Campbell Indus., 45 F.3d 311, 315 (9th Cir.1995); Clark v. Bear Stearns & Co., 966 F.2d 1318, 1320-21 (9th Cir.1992).

1. Identical Issues:

"The party asserting collateral estoppel must first show that the estopped issue is identical to an issue litigated in a previous action." Kamilche Co. v. United States, 53 F.3d 1059, 1062 (9th Cir.1995), as amended, 75 F.3d 1391 (1996); Pool Water Products v. Olin Corp., 258 F.3d 1024, 1031 (9th Cir.2001); see also Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1357 (9th Cir.1985) (en banc) ("Similarity between issues does not suffice: collateral estoppel is applied only when the issues are identical."). The Court must consider four factors to determine whether an issue in a proceeding is identical to an issue previously litigated:

(1) is there a substantial overlap between the evidence or argument to be advanced in the second proceeding and that...