United States District Court, W.D. Washington, Seattle
ORDER DENYING PLAINTIFF'S SECOND MOTION FOR
L. ROBART UNITED STATES DISTRICT JUDGE.
the court is Plaintiff Kische USA LLC's
(“Kische”) second motion for summary
judgment. (2d MSJ (Dkt. # 101).) Defendants oppose
the motion. (2d MSJ Resp. (Dkt. # 107).) The court has
considered the motion, the parties' submissions in favor
of and in opposition to the motion, the relevant portions of
the record, and the applicable law. Being fully advised,
court DENIES Kische's motion for the reasons set forth
court has extensively detailed the factual and procedural
background of this case in numerous prior orders. (See,
e.g., 6/29/16 Order (Dkt. # 39); 12/13/16 Order (Dkt. #
65); 2/22/17 Order (Dkt. # 74); 9/6/17 Order (Dkt. # 95);
11/2/17 Order (Dkt. # 115).) Thus, in this order, the court
recounts only the facts salient to Kische's instant
Uysal, who resides in Turkey, formed Kische in 2007. (Uysal
Decl. (Dkt. # 103) at 2.) Beginning at that time, Kische
“designed, imported[, ] and sold clothing to prominent
retailers in the United States, including Nordstrom, Haute
Look, Winners, T.J. Maxx, Marshalls[, and] Ross.”
(Id.) Kische contends that Mr. Simsek and Ms. Walker
abused their positions as Kische managers to misappropriate
Kische's assets and form JD Stellar, a competing
business. (See Id. (stating that Mr. Simsek and Mr.
Walker “worked as managers of Kische”); SAC (Dkt.
# 75) ¶¶ 4.19, 4.23-4.26; 9/6/17 Order (concluding
that Mr. Simsek breached duties that he owed to Kische as its
manager).) Of particular relevance here, Kische contends that
Defendants invalidly transferred and used two trademarks of
which Kische is “the senior user and owner”: (1)
Kische word mark # 682 (“the Kische Mark”), and
(2) Marseille design mark # 455 (“the Marseille
Mark”) (collectively, “the
Marks”). (2d MSJ at 6 (citing SAC ¶¶ 4.9,
Ex. 6 (Dkt. # 75-1) at 35-36 (“Kische Reg.”),
4.10, Ex. 7 (Dkt. # 75-1) at 37-38 (“Marseille
Reg.”)).) On this basis, Kische claims that Defendants
infringed the marks in violation of the Lanham Act, 15 U.S.C.
§ 1114, and common law. (SAC ¶¶ 5.1-6.7.)
registered the Marseille Mark on May 17, 2011, and the Kische
Mark on August 5, 2014, with the United States Patent and
Trademark Office (“USPTO”). (See Kische
Reg.; Marseille Reg.) The registrations state that Kische
first used the Kische Mark in 2007 and the Marseille Mark in
2010. (See Kische Reg.; Marseille Reg.) According to
Mr. Uysal, Kische “used its trademarks in commerce in
Washington State, as well as regionally across the United
States through its shipments and distributions to major
retailers.” (Uysal Decl. at 2; see also Simsek
Decl. (Dkt. # 108) ¶ 8 (agreeing that Kische sold
clothing under the Marks).) Kische's sale of clothing
with the Marks “grossed annual sales of $13
million” in 2011. (Uysal Decl. at 1.) Kische promoted
the clothing bearing the Marks “through the internet,
email and print advertising, word of mouth, showrooms,
tradeshows, retail agents, and at clothing showcase
events.” (Id. at 2.)
March 13, 2014, Mr. Simsek-while he was still Kische's
manager- facilitated the assignment of the Marseille Mark to
JD Stellar. (See SAC ¶ 4.23, Ex. 18
(Dkt. # 75-1) (“Assignment”) at 55.) After the
assignment, JD Stellar filed for federal trademark protection
of a Marseille word mark. (See SAC ¶ 4.30, Ex.
25 at 6.) The registration stated that the mark had first
been used on June 20, 2010. (Id.) The word mark was
registered to JD Stellar on July 7, 2015. (Id.;
Simsek Decl. ¶ 22, Ex. F.) Citing two purchase orders
from JD Stellar to TJ Maxx in 2014, Kische contends that
after the transfer and redesign of the Marseille Mark, JD
Stellar used the mark in connection with selling its goods.
(2d MSJ at 9 (citing Herschlip Decl. (Dkt. # 102) at 2, Exs.
F, G).) Kische also contends that JD Stellar used the Kische
Mark to “sell clothing goods and solicit sales”
by using the mark in emails to customers. (Id. at 12
(citing Mitchell Decl. (Dkt. # 104) at 2, Exs. D-F).)
version of events does not differ significantly from
Kische's.However, Defendants maintain that
“Kische has not delivered a single clothing order since
2014” (2d MSJ Resp. at 6 (citing Simsek Decl. ¶
13, Ex. B); but see Id. at 8 (stating that
“[t]he last shipment of Kische's Marseille mark
clothing was February 26, 2014, and the last shipment of
Kische's Kische mark clothing . . . was May 28,
2016”)) and that JD Stellar never sold or advertised
any clothing bearing the Kische Mark (Simsek Decl. ¶
17). Defendants further aver that the Kische Mark was the
more popular of the Marks and accounted for at least 90
percent of Kische's sales prior to 2014. (Id.
¶ 8.) Defendants contend that Kische sold only small
quantities of the Marseille Mark “primarily to select
Canadian customers.” (Id. ¶ 9.) Mr.
Simsek attests that Mr. Uysal's goal was to turn the
Kische Mark “into an internationally known brand”
and that Mr. Uysal disfavored the Marseille Mark as a result.
(Id. ¶ 8.) Mr. Simsek further states that the
Marseille Mark has also made up only a small percentage of JD
Stellar's sales, while the “vast majority” of
JD Stellar's sales have come from its Dantelle mark.
(Id. ¶ 20, Ex. D.) Defendants maintain that JD
Stellar stopped selling any clothing under the Marseille Mark
after they received a cease-and-desist letter from
Kische's counsel on September 11, 2015. (Id.
now seeks summary judgment on its claims that Defendants
infringed the Marks. (See 2d MSJ at 15-28; SAC
¶¶ 5.1-5.7 (alleging trademark infringement in
violation of 15 U.S.C. § 1114), 6.1-6.7 (alleging common
law trademark infringement).)
judgment is appropriate if the evidence 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(a); see Celotex Corp. v. Catrett,
477 U.S. 317, 322 (1986); Galen v. Cty. of L.A., 477
F.3d 652, 658 (9th Cir. 2007). A fact is
“material” if it might affect the outcome of the
case. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
248 (1986). A factual dispute is “‘genuine'
only if there is sufficient evidence for a reasonable fact
finder to find for the non-moving party.” Far Out
Prods., Inc. v. Oskar, 247 F.3d 986, 992 (9th Cir. 2001)
(citing Anderson, 477 U.S. at 248-49).
moving party bears the initial burden of showing there is no
genuine dispute of material fact and that it is entitled to
prevail as a matter of law. Celotex, 477 U.S. at
323. If the moving party does not bear the ultimate burden of
persuasion at trial, it can show the absence of such a
dispute in two ways: (1) by producing evidence negating an
essential element of the nonmoving party's case, or (2)
by showing that the nonmoving party lacks evidence of an
essential element of its claim or defense. Nissan Fire
& Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1106
(9th Cir. 2000). If the moving party will bear the burden of
persuasion at trial, it must establish a prima facie showing
in support of its position on that issue. UA Local 343 v.
Nor-Cal Plumbing, Inc., 48 F.3d 1465, 1471 (9th Cir.
1994). That is, the moving party must present evidence that,
if uncontroverted at trial, would entitle it to prevail on
that issue. Id. at 1473. If the moving party meets
its burden of production, the burden then shifts to the
nonmoving party to identify specific facts from which a fact
finder could reasonably find in the nonmoving party's
favor. Celotex, 477 U.S. at 324; Anderson,
477 U.S. at 252.
court is “required to view the facts and draw
reasonable inferences in the light most favorable to the
[nonmoving] party.” Scott v. Harris, 550 U.S.
372, 378 (2007). The court may not weigh evidence or make
credibility determinations in analyzing a motion for summary
judgment because those are “jury functions, not those
of a judge.” Anderson, 477 U.S. at 249-50.
Nevertheless, the nonmoving party “must do more than
simply show that there is some metaphysical doubt as to the
material facts . . . . Where the record taken as a whole
could not lead a rational trier of fact to find for the
nonmoving party, there is no genuine issue for trial.”
Scott, 550 U.S. at 380 (internal quotation marks
omitted) (quoting Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 586-87 (1986)).
Second Motion for Summary Judgment
threshold issue, Defendants take issue with the fact that
this motion is Kische's second motion for summary
judgment. (2d MSJ Resp. at 5.) District courts have
discretion to entertain second motions for summary judgment.
Hoffman v. Tonnemacher, 593 F.3d 908, 909 (9th Cir.
2010). The Ninth Circuit has stated that “allowing a
party to file a second motion for summary judgment is
logical, and it fosters the ‘just, speedy, and
inexpensive' resolution of suits.” Id. at
911 (quoting Fed.R.Civ.P. 1); see also Id. at 912
(“Allowing a successive summary judgment motion
potentially can save all concerned the far greater expenses
of a trial.”). However, the Ninth Circuit also
cautioned that district courts should “weed out
frivolous or simply repetitive motions.” Id.
In exercising its discretion on this question, a district
court may consider the following factors: “‘(1)
an intervening change in controlling law; (2) the
availability of new evidence or an expanded factual record;
and (3) [the] need to correct a clear error or prevent
manifest injustice.'” Brazill v. Cal.
Northstate Coll. of Pharm., LLC, No. CIV. 2:12-1218 WBS
GGH, 2013 WL 4500667, at *1 (E.D. Cal. Aug. 22, 2013)
(quoting Whitford v. Boglino, 63 F.3d 527, 530 (7th
Defendants contest Kische's filing of a second motion for
summary judgment, the court will consider the motion in the
interest of judicial efficiency. (2d MSJ Resp. at 5.) Even
though many of the underlying facts and issues are the same
as in Kische's first motion, the second motion is not
patently frivolous or simply repetitive. See
Hoffman, 593 F.3d at 911. Moreover, the first motion for
summary judgment involved the breach and duty elements of
Kische's breach of contract and fiduciary duty claims
against Mr. Simsek, whereas this motion involves Kische's
trademark infringement claims. (Compare 1st MSJ
(Dkt. # 85), with 2d MSJ.)
if left unchecked, repetitive motions practice can create
significant costs and expend considerable court resources.
Thus, the court orders any party wishing to file an
additional dispositive motion to first seek the court's
leave. See Fed. R. Civ. P. 56(b) (stating that
“[u]nless a different time is set by local rule or the
court orders otherwise, a party may file a motion for summary
judgment at any time until 30 days after the close of all
discovery”); (see also Sched. Order (Dkt. #
78) at 1 (setting the dispositive motions deadline as January
9, 2018).) A party's failure to seek the court's
leave will result in the court striking the dispositive
motion as improperly filed.
presented in its motion, Kische seeks summary judgment on
four issues: (1) that Kische had valid common law and federal
trademark rights in the Marks; (2) that Mr. Simsek's
transfer of the Marseille Mark was invalid and should be
reversed; (3) that Defendants infringed on the Marks by
causing a likelihood of consumer confusion; and (4) that
Defendants knowingly and willfully infringed on the
Marks. (2d MSJ at 6.) As a preliminary matter,
Defendants argue Kische's motion is so confused and
unclear that they cannot properly respond to it.
(See 2d MSJ Resp. at 5.) But Defendants exaggerate
the severity of any ineloquence in Kische's motion.
Although Kische does not expressly state that it seeks
summary judgment on its trademark infringement claims-instead
stating that it requests judgment in its favor on the issues
of whether it had rights in the Marks and whether Defendants
infringed on the Marks by causing a likelihood of consumer
confusion-Kische's motion adequately informs Defendants
and the court of Kische's arguments. (See 2d MSJ
at 14 (using the subheading “JD Stellar Has Committed
Federal Trademark Infringement In Violation of 15 U.S.C.
§ 1114”); see also 2d MSJ Resp. at 13-25
(contesting the entry of summary judgment on the trademark
infringement claims).) Indeed, those two “issues”
comprise the two elements of a trademark infringement claim
under both Section 32 of the Lanham Act and common
law.See Applied Info. Scis. Corp. v. eBay, Inc., 511
F.3d 966, 969 (9th Cir. 2007) (stating that a plaintiff
asserting a trademark infringement claim must prove that (1)
it has valid, protectable trademarks, and (2) the
defendant's use of the marks in commerce is likely to