James R. Glidewell Dental Ceramics, Inc. v. Keating Dental Arts, Inc.
| Decision Date | 21 February 2013 |
| Docket Number | Case No.: SACV 11-1309-DOC(ANx) |
| Parties | JAMES R. GLIDEWELL DENTAL CERAMICS, INC., Plaintiff, v. KEATING DENTAL ARTS, INC., Defendant. |
| Court | U.S. District Court — Central District of California |
Before the Court are several filings: (1) a Motion for Partial Summary Judgment as to Trademark Misuse, Unfair Competition, Unclean Hands, Fair Use, and Estoppel (Dkt. 79) filed by Plaintiff James R. Glidewell Dental Ceramics, Inc. ("Plaintiff"); (2) Plaintiff's Motion for Partial Summary Judgment as to Infringement of a Federally Registered Mark (Dkt.81); (3) Plaintiff's Motion for Partial Summary Judgment as to Keating Dental Arts, Inc.'s Invalidity Defense (Dkt. 82); (4) a Motion for Summary Judgment Canceling Glidewell's Trademark Registration (Dkt. 83) filed by Defendant Keating Dental Arts, Inc. ("Defendant"); and (5)Defendant's Motion for Summary Judgment as to No Infringement of Glidewell's Registered Trademark (Dkt. 84).
Oral arguments were presented to the Court on December 21, 2012. After considering all the moving papers and oral arguments, the Court orders the following:
The Court exercises subject matter jurisdiction over this action pursuant to 28 U.S.C. § 1331, 1338; and 2201; and supplemental jurisdiction over state law claims pursuant to 28 U.S.C. § 1367(a). The parties do not contest personal jurisdiction.
As difficult as it may be to imagine any unpleasantness associated with a trip to the dentist, this case reminds us that discord and painful friction may invade even society's most cheerful and unsullied icon of good times and happy memories: the dentist's chair. The parties in this lawsuit are dental laboratories who, among other things, receive and fill orders for crowns from dentists. In 2009, Plaintiff began marketing an all-zirconia crown under the "BruxZir" trademark. In 2011, Defendant began marketing its own all-zirconia crown using the mark "KDZ Bruxer" and an associated logo.
Neither party has introduced any evidence reasonably challenging the following facts: (1) "bruxism" is a well-known term of art in the dental community that describes a condition in which the dental patient grinds or gnashes her teeth, sometimes unconsciously and/or at night; (2) "bruxers" are people suffering from or experiencing bruxism; and (3) "to brux" means "to grind ones teeth." If a bruxer has a tooth that is ground down or cracked, her dentist may prepare a dental crown. An all-zirconia crown is particularly suited for this use, since zirconia is strong enough to withstand the wear-and-tear associated with inveterate bruxing.
Plaintiff brings three causes of action, all based on the same alleged acts by Defendant. First, Plaintiff alleges that Defendant's trademark, "KDZ Bruxer," infringes Plaintiff's federally-registered (as of January 19, 2010) trademark, "BruxZir," under the Lanham Act, 15 U.S.C. § 1051 et seq. Compl. (Dkt. 1) at 5-6. Second, Plaintiff alleges that Defendant's acts giving rise to the infringement claim also constitute false designation of origin within the meaning of Section 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125(a). Id. at 6-7. Finally, Plaintiff alleges that these acts constitute unfair competition under California Business & Professions Code 17200 et seq. Id. at 7-8.
Defendant brings four counterclaims against Plaintiff. First, Defendant seeks a declaratory judgment of non-infringement of Plaintiff's trademark. See Def's Second Amended Answer and Counterclaims (Dkt. 67) at 14. Second, Defendant brings a claim for unfair competition under California Business & Professions Code 17200, et seq., and California common law. Id. at 14-15. Third, Defendant brings a claim for Misuse of Trademark. Id. at 15-16. Fourth, Defendant makes a claim for the cancellation of Plaintiff's trademark registration pursuant to 15 U.S.C. § 1052(e)(1). Id. at 17.
In denying Defendant's subsequent Motion to Reconsider (Dkt. 50), the Court elaborated:
[T]he Court will provide Defendant with another opportunity to move for summary judgment in the future. The Court provides Defendant with a second opportunity because this is a straight-forward trademark infringement case. As such, it is highly unlikely that there will be any genuine issues of material fact and it is entirely possible that Defendant could show in its second motion that it wins as a matter of law - if Defendant would just cite analogous cases finding no infringement of a plaintiff's composite mark by a defendant's composite mark where the marks share only a portion of letters.
May 1, 2012, Minute Order (Dkt. 52) at 1-2.
On November 19, 2012, the parties submitted their current motions and cross motions for summary judgment. Arguments were heard before the Court on December 21, 2012.
Summary judgment is proper if "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(c). The court must view the facts and draw inferences in the manner most favorable to the non-moving party. United States v. Diebold, Inc., 369 U.S. 654, 655 (1992); Chevron Corp. v. Pennzoil Co., 974 F.2d 1156, 1161 (9th Cir. 1992). The moving party bears the initial burden of demonstrating the absence of a genuine issue of material fact for trial, but it need not disprovethe other party's case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 323-25 (1986). When the non-moving party bears the burden of proving the claim or defense, the moving party can meet its burden by pointing out that the non-moving party has failed to present any genuine issue of material fact. Musick v. Burke, 913 F.2d 1390, 1394 (9th Cir. 1990).
Once the moving party meets its burden, the opposing party must set out specific facts showing a genuine issue for trial; merely relying on allegations or denials in its own pleading is insufficient. See Anderson, 477 U.S. at 248-49. A party cannot create a genuine issue of material fact simply by making assertions in its legal papers. S.A. Empresa de Viacao Aerea Rio Grandense v. Walter Kidde & Co., Inc., 690 F.2d 1235, 1238 (9th Cir. 1982). Rather, there must be specific, admissible evidence identifying the basis for the dispute. Id. The Supreme Court has held that "[t]he mere existence of a scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could reasonably find for [the opposing party]." Anderson, 477 U.S. at 252. 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 Sch. Dist., 237 F.3d 1026, 1029 (9th Cir. 2001).
Summary judgment may be appropriate in the trademark litigation context because a likelihood of confusion between marks can be determined as a matter of law. See Murray v. Cable Nat'l Broad. Co., 86 F.2d 858, 860 (9th Cir. 1996).
Defendant has shown that Plaintiff has failed to establish at least one element of Plaintiff's first claim of trademark infringement, namely, that there is a likelihood of confusion between the parties' marks. The confusion analysis for Plaintiff's second claim of false designation of origin under Section 43(a) of the Trademark Act of 1946, 15 U.S.C. § 1125, isthe same as the analysis for infringement of a registered trademark under 15 U.S.C. § 1114. See Brookfield Commc'n, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1046-47 n. 8 (9th Cir. 1999) (). Regarding Plaintiff's third claim of unfair competition, the "test" for harm under the "unfair competition [law] is exactly the same as for trademark infringement," namely, likelihood of confusion. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1178 (9th Cir. 1988). Accordingly, the Court's analysis applies to all three of Plaintiff's claims. See New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1201 (9th Cir. 1979) (...
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