Groupion, LLC. v. Groupon, Inc.

• Decision Date: 08 May 2012
• Docket Number: No. C 11–00870 JSW.,C 11–00870 JSW.
• Citation: 103 U.S.P.Q.2d 1326,859 F.Supp.2d 1067
• Parties: GROUPION, LLC., Plaintiff, v. GROUPON, INC., et al., Defendants.
• Court: U.S. District Court — Eastern District of California

859 F.Supp.2d 1067

103 U.S.P.Q.2d 1326

GROUPION, LLC., Plaintiff,

v.GROUPON, INC., et al., Defendants.

No. C 11–00870 JSW.

United States District Court, N.D. California.

May 8, 2012.

Jedediah Wakefield, Fenwick & West LLP, San Francisco, CA, Charles Webb, Jack Russo, Christopher Joseph Sargent, Clifford Computerlaw Group LLP, Palo Alto, CA, Plaintiff.

Margret Mary Caruso, Attorney at Law, Redwood Shores, CA, for Defendants.

ORDER GRANTING GROUPON'S MOTION FOR SUMMARY JUDGMENT

JEFFREY S. WHITE, District Judge.

Now before the Court is the motion for summary judgment filed by Defendant Groupon, Inc. (“Groupon”). Having carefully reviewed the parties' papers, considered their arguments and the relevant legal authority, the Court hereby grants Groupon's motion for summary judgment.¹

BACKGROUND

Plaintiff Groupion, LLC. (“Groupion”) contends that Groupon is infringing upon its trademark. Groupon is moving for summary judgment on all of Groupion's claims against it. The Court shall refer to additional facts as necessary in the remainder of this Order.

ANALYSIS

A. Applicable Legal Standards.

A principal purpose of the summary judgment procedure is to identify and dispose of factually unsupported claims. Celotex Corp. v. Catrett, 477 U.S. 317, 323–24, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Summary judgment is proper when the “pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(c). “In considering a motion for summary judgment, the court may not weigh the evidence or make credibility determinations, and is required to draw all inferences in a light most favorable to the non-moving party.” Freeman v. Arpaio, 125 F.3d 732, 735 (9th Cir.1997).

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, 477 U.S. at 323, 106 S.Ct. 2548. An issue of fact is “genuine” only if there is sufficient evidence for a reasonable fact finder to find for the non-moving party. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248–49, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A fact is “material” if it may affect the outcome of the case. Id. at 248, 106 S.Ct. 2505. If the party moving for summary judgment does not have the ultimate burden of persuasion at trial, that party must produce evidence which either negates an essential element of the non-moving party's claims or that party must show that the non-moving party does not have enough evidence of an essential element to carry its ultimate burden of persuasion at trial. Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir.2000). Once the moving party meets its initial burden, the non-moving party must go beyond the pleadings and, by its own evidence, “set forth specific facts showing that there is a genuine issue for trial.” Fed.R.Civ.P. 56(e).

In order to make this showing, the non-moving party must “identify with reasonable particularity the evidence that precludes summary judgment.” Keenan v. Allan, 91 F.3d 1275, 1279 (9th Cir.1996). In addition, the party seeking to establish a genuine issue of material fact must take care adequately to point a court to the evidence precluding summary judgment because a court is “ ‘not required to comb the record to find some reason to deny a motion for summary judgment.’ ” Carmen v. San Francisco Unified School Dist., 237 F.3d 1026, 1029 (9th Cir.2001) (quoting Forsberg v. Pacific Northwest Bell Telephone Co., 840 F.2d 1409, 1418 (9th Cir.1988)). If the non-moving party fails to point to evidence precluding summary judgment, the moving party is entitled to judgment as a matter of law. Celotex, 477 U.S. at 323, 106 S.Ct. 2548.

B. Groupon's Motion.1. Groupion's Trademark Infringement and Unfair Competition Claims.

To establish trademark infringement under the Lanham Act, Groupion must establish that Groupon is “using a mark confusingly similar to a valid, protectable trademark of [Groupion's].” Brookfield Communications, Inc. v. West Coast Entertainment, 174 F.3d 1036, 1046 (9th Cir.1999). At issue is whether Groupion has shown a likelihood of confusion, i.e. “whether the similarity of the marks is likely to confuse the customers about the source of the products.” GoTo.Com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir.2000) (internal quotations omitted). Groupion bears the burden of proving likelihood of confusion. See Lindy Pen Co., Inc. v. Bic Pen Corp., 725 F.2d 1240, 1243 (9th Cir.1984). “Likelihood of confusion requires that confusion be probable, not simply a possibility.” Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir.1987); see also Playboy Enterprises, Inc. v. Terri Welles, Inc., 78 F.Supp.2d 1066, 1083 (S.D.Cal.1999) (“There must be a substantial likelihood that the public will be confused.”) (emphasis in original) (citation omitted), rev'd in part on other grounds,279 F.3d 796 (9th Cir.2002).

To determine whether there is a likelihood of confusion between the marks, the Ninth Circuit applies the following eight factor test: “(1) the similarity of the marks; (2) the relatedness of the two companies' services; (3) the marketing channel used; (4) the strength of [the plaintiff's] mark; (5) [the defendant's] intent in selecting its mark; (6) evidence of actual confusion; (7) the likelihood of expansion into other markets; and (8) the degree of care likely to be exercised by purchasers.” GoTo.Com, Inc., 202 F.3d at 1205. However, “the eight-factor test is a pliant one, in which some factors are much more important than others.” Id.

The Court notes that “[b]ecause of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir.2002) (citation omitted). Nevertheless, where no material issues of fact are raised reflecting confusion between the marks, summary judgment is appropriate. Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 628 (9th Cir.2005). To defeat Groupon's motion for summary judgment, Groupion must “create a genuine issue that confusion is probable, not simply a possibility.” Cohn v. Petsmart, Inc., 281 F.3d 837, 842 (9th Cir.2002) (internal quotation marks and citation omitted).

i. Similarity of the Marks.

The similarity of the marks is a critical question in this analysis. GoTo.Com, 202 F.3d at 1205. “[T]he greater the similarity between the two marks at issue, the greater the likelihood of confusion.” Id. at 1206. The Ninth Circuit has developed certain axioms to guide the similarity analysis: (1) “the marks must be considered in their entirety and as they appear in the marketplace;” (2) “similarity is adjudged in terms of appearance, sound, and meaning;” and (3) “similarities are weighed more heavily than differences.” Id. at 1206 (citations omitted).

Despite the similarity in the spelling of the two words, the Court finds that the marks, when viewed in their entirety and as they appear in the marketplace, are dissimilar. Groupion regularly presents its mark in two colors, with the “group” in black and the “ion” in green. (Declaration of Clifford Webb in Support of Groupon's Motion for Summary Judgment (“Webb Decl.”), Exs. 4–6, 15.) Only the “G” is capitalized. All of the letters are outlined in white and the mark is on a grey background. The mark is frequently followed by the tag line “Business Groupware and CRM for the Cloud.” ( Id.) ² In contrast, Groupon's mark is typically all capitalized, all of the letters are in the same white color, the letters are in a thicker font, and the word appears on a black background. (Declaration of Nick Cioffi in Opposition to Groupion's Motion for Preliminary Injunction (“Cioffi Decl.”), Exs. 1–3, 13–17.) Moreover, Groupon does not display other marks or words with its mark. ( Id.) Additionally,groupion is a three syllable word, while groupon is a two syllable one.³

Groupion argues that it is significant that both companies use a similar shade of green on their respective websites where their marks appear. However, a comparison of the two websites reveals that their overall appearance is different. (Compare Webb Decl., Ex. 15 with Cioffi Decl., Ex. 1.) Moreover, at issue here is not the appearance of the two websites, but of the companies' respective marks.

Both “groupon” and “groupion” are made up words. However, they were created by different words and, thus, imply different meanings. Groupon was formed by combining the words “group” and “coupon.” (Cioffi Decl., ¶ 4.) The United States Patent and Trademark Office (“PTO”), in categorizing the Groupon mark for search purposes, assigned the pseudo mark “group coupon” to the Groupon mark. (Declaration of Jedediah Wakefield in Opposition to Groupion's Motion for Preliminary Injunction (“Wakefield Decl.”), Ex. 32.) Groupion states that it was created from the words “groupware” and “companion.” (Wakefield Decl., Exs. 1, 2.) The PTO assigned the pseudo mark “group ion,” as two words, presumably because it believed Groupion means “group” and “ion.” Regardless of which is the accurate meaning of Groupion, neither has the same as the meaning as Groupon.

In opposition to Groupon's motion, Groupion argues that evidence of actual confusion confirms that the marks are similar. (Opp. at 16.) However, Groupion cites to evidence which the Court has already determined does not show any confusion regarding the source of the marks. See Entrepreneur Media, 279 F.3d at 1151 (“To constitute trademark infringement, use of a mark must be likely to confuse an appreciable number of people as to the source of a product.”); Rearden LLC v. Rearden Commerce, Inc., 597 F.Supp.2d 1006, 1023 (N.D.Cal.2009) (“The focus is...