PRYOR CASHMAN SHERMAN & FLYNN LLP
`
`410 PARK AVENUE, NEW YORK, NEW YORK 10022-4441
`
`PHILIP R. HOFFMAN
`GIDEON CASHMAN
`EDWARD A. MORGAN
`PAUL J. SHERMAN
`RONALD B. KREMNITZER
`DAVID L. AUERBACH
`RICHARD L. KAY
`ALAN H. SIEGEL
`ERIC B. WOLDENBERG
`STEPHEN F. HUFF
`LAWRENCE REMMEL
`JOSEPH 2. EPSTEIN
`RICHARD M. BETHEIL
`SANFORD M. GOLDMAN
`ERIC M. HELLIGE
`HOWARD SIEGEL
`TOM J. FERBER
`JAMES A. JANOWITZ
`JAMIE M. BRICKELL
`ARNOLD J. SCHAAB
`BLAKE HORNICK
`STEPHEN B. RODNER
`KAREN M. ROBSON
`SELIG D. SACKS
`JOSEPH L. GRIER
`DONALD S. ZAKARIN
`JOHN P. NAPOLI
`STEPHEN M. GOODMAN
`WAYNE B. HEICKLEN
`RONALD H. SHECHTMAN
` _nAn:x'jéj**$T0PHER J. SUES
`
`07-12-2°02
`Us Paton! & TM01‘cITM Mail acptDt- #71
`
`VIA EXPRESS MAIL
`
`_
`
`'
`
`:
`
`,_‘
`
`_
`
`-'
`
`‘
`.7
`
`WILLIAM M. LEVINE
`JOHN J. CFIOWE
`BRAD D. ROSE
`PERRY M. AMSELLEM
`STEPHEN G. EPSTEIN
`RICHARD S. FRAZER
`STEVEN J. PIERCE
`KENNETH A. SCHULMAN
`BRETT J. MEYER
`LISA M. BUCKLEY
`STEVEN L. CHUDNOW
`MARC A. KUSHNER
`MARK W. SAKS
`EDWARD A. FOX
`MURRAY D. SCHWARTZ
`
`COUNSEL:
`
`_
`
`WILDER KNIGHT H
`S-IZEVEN M_ RABlN0'Wn.Z
`JAMES s_ o,BR|EN JR.
`ROGER E. KASS
`'
`SAMSON R_ BECHHOFER
`JONATHAN A. BERNSTEIN
`JEFFREY C_ JOHNSON
`S. Y. KIM
`
`TELEPHONE: 212-421-4100
`,
`_
`_
`FAX" 212 326 0806
`EMAIL: FlRM@PRYORCASHMAN-COM
`WWW PRYORCASHMANCOM
`.
`
`wR|TER.S DIRECT DIAL:
`(212) 325-0375
`
`WFIITER'S EMAIL:
`
`brose@pryorcashman.com
`
`July 11, 2002
`
`United States Patent And Tradeinark Office
`
`Trademark Trial and Appeal Board
`2900 Crystal Drive
`.
`.
`.
`.
`‘
`—-
`Arlington, Virginia 22202-3513
`Attn: Angela Lykos, Esq.
`.-
`
`‘
`
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`Opposition No..114,603 / Phat Fashions, LLC v. Phat Game Athletic Agg'aréi._ 3
`Lo
`‘ii-.>.
`OJ
`: '
`
`Re:
`
`Dear Ms. Lykos:
`
`Please be advised that the District Court for the Eastern District of California has granted
`summary judgment to Plaintiff Phat Fashions, LLC ("Phat Fashions") in the civil action which
`occasioned the suspension of the above-captioned opposition proceeding and which is dispositive
`of all issues raised therein, Phat Fashions, LLC v. Phat Game Athletic Apparel, Inc. and Phat
`
`Game Inc., No. Civ. S-01-1771 LKK PAN (E.D. Cal. 2002). I enclose herewith a copy of Judge
`Karlton's decision and order in?that action, and the Judgment entered pursuant thereto, further to
`which Defendant Phat Game Athletic Apparel, Inc. has executed an express abandonment of its
`application to register the mark PHAT GAME (Ser. No. 75/373,802), the subject of the above-
`captioned opposition proceeding. A copy of the express abandonment is also enclosed.
`
`In accordance with thez‘-Tfindings of the District Court that the defendants‘ use of the mark
`PHAT GAME infringes and dilutes Phat Fashions’ trademark rights, and for all of the reasons set
`forth more fully in Phat Fashions‘ opposition papers, Phat Fashions respectfully requests that the
`Trade Mark Trial and Appeal Board enter judgment in Phat Fashions’ favor in the above-
`captioned opposition proceeding. SQ TMBP 510.02.
`
`255797
`
`

`
`
`
`PRYOR CASHMAN SHERMAN & FLYrg1N LLP
`
`Angela Lykos, Esq.
`July 11, 2002
`T‘
`Page 2
`
`e
`
`.
`
`_
`3
`
`-T
`
`I may be reached at (2112) 326-0875 should you wish to discuss the foregoing.
`':
`
`,
`Enclosures.
`cc:
`Mr; Richard S1omovitz(via facsimile) (W/o encls.)
`Leah Weitzen (W/0 encls.)
`
`
`
`

`
`
`
`ED513565
`
`P965? 2/6
`
`M95
`
`Brad D. Rose (BDR 2740) proizac vice
`Suzan Arden (SA 4715)
`r0 lzac vice
`PRYOR CASHMAN S
`RMAN & FLYNN, LLP
`410 Park Avenue
`5,.
`.
`Ilgelw {ark NYr21102o2«E2l-4100‘
`c e
`one:
`._
`Facsiigniilcz
`212; 326-0806
`
`M. Taylor Florence, SBN #; 159695
`BULLWANT HOUSER BAILEY PC
`11335 Gold Express Drive, Suite 105
`Gold River, CA 95670
`,
`Telephone;
`(91 6} 852-9] 00
`Facsimile:
`(916 852-5777
`
`FILED
`vac-manta‘
`-4cu.a-........
`
`um
`cum us ms
`.:o.s1£an ozsmzdukicnumm
`'.'\
`DCPJTY CLERK
`
`MAR292m2
`
`“AR 2 7 2802
`:M,s,fFg§,;3.cqgggn‘
`PHFI-I1ONS,I:.LC,
`
`Plaintiff‘,
`
`UNITED STATES DISTRICT COURT
`D EASTERN DISTRICT OF CALIFORNIA
`sgxcmammwro DIVISION
`1 Case No. C . —m—1771 LKK PAN
`
`JUDGMENT
`FOLLOWIN ORDER GRANTING
`PHAT FASHIONS’ MOTION FOR
`SUMMARY JUDGMENT
`
`
`
`V,
`
`‘
`.
`‘
`D
`PHAT GAME ATHLETIC APPAREL, INC.
`and PHAT GAME;INC.,
`-
`Defendants
`Having griinted Phat Fashions, I..LC's ("Phat Fashions") motion for summary
`judgment in its entirety, the Court now renders judgment as follows:
`O
`
`1,
`
`Defendants are permanently ENJOINED from using or permitting the use of
`
`the trademark 1.31-IAT GAME in connection with the advertising, promotion, marketing,
`manufacturing; licensing, sub—licensing, sale, and/or distribution ofany of defendants’
`apparel and/qr: products; and
`V
`
`2,
`
`Defendants shall DISABLE their internet web site 1ocated'a1:
`
`www.PHA'1_‘GAM§E.com by April 19, 2002; and
`
`3.
`Defendants shall TRANSMIT to Phat Fashions’ counsel by May 6, 2002 all
`[PROPOSED] JUDGMENT FOLLOWING ORDER cmwrmc.
`4/
`mxr 1=AsmoNs~ MOTION rote sumwmrw JU’DGMF.N’l' -
`Cw. s-oi-rrn‘LKx MN
`
`-v 1
`
`03/29/2002 FRI 12:55
`
`[TX/RX N0 71/21] @002
`
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`12
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`l4
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`l5
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`17
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`I8
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`19
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`22
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`25
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`26
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`27
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`28
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`

`
`#54565 PQQE: 3/6
`
`408 1855.1
`
`(mior-ossm JubamENT mu.owmo Oman GRANTING
`rum FASHIONS’ MOTION FOR SUMMARY JUDGMENT -
`CW. S-01-X77] LKXPAN .
`
`-2-
`
`03/29/2002 FRI 12: 55
`
`[TI/RX N0 7121] Enos
`
`

`
`
`
`.. 12:56 MGR 29; 2882
`
`.
`
`‘#54555
`
`PRGE‘ 4/5
`
`:-gr“
`
`STA'l‘E or CALll—‘ORNlA, couwrv or S-ACRAMENTO:
`
`moor or senvxca V
`
`I am a citizen oftho United States and am employed in Sacramento County, where this
`mailing occurs. My business addressis H335 Gold Express Drive, Suite 105, Gold River, California
`95670. lam over the age of 18 years and not a party to the within cause. On March 27, 2002, following
`ordinary business practice, 1 served the foregoing document(s) described as:
`
`[PROPOSED] JUDGMENT FOLLOVVING ORDER GRANTING
`PHAT FASHIONS’ MOTION FOR SUMMARY JUDGMENT ‘
`
`in the following rnanner, by placing a true copy/true copies thereof in a sealed envelope/scaled envelopes,
`addressed as follows:
`
`Roy C. Dickson
`Dickson and Associates
`4676 Lalteview Avenue. Suite 107
`York: Linda. CA 92886
`
`Courtesy Copy:
`Brad Rose
`3
`Suzan Arden
`PRYOR CASE-LNJAN SHERMAN & FLYNN, LLP
`410 Park Avenue
`New York, NY 1 0022
`
`-_____
`
`L (BY MAIL) I caused such envelope(s) with First Class postage thereon fully prepaid to be placed
`in the US. Mail in Gold River, California. I am readily familiar with my employer‘:
`normal business; practice for collection and processing of correspondence and other
`material for mailing with the United States Postal Service, and that practice is that said
`rriaterial is deposited with the United States Postal Service the same day as the day of
`collection in thesordinary course of business.
`(BY PERSONAL SERVICE) I caused such cnve1ope(s) to be hand-delivered by an authorized
`attorney messenger service. this date to the otfices of the addressce(s).
`(BY FEDERAL EXPRESS) I caused such cnvelope(s) to be delivered in a sealed Federal
`Express package. delivery fees for which are billed-to this firm‘: account, to a Federal
`Express office for next-morning delivery. I am readily familiar with the business
`practices of my: employer for the collection and processing of correspondence for mailing
`with Federal Express delivery service.
`(BY FACSIMILE) ll personally transmitted the aforementioned document, via facsimile machine.
`to each of the above listed parties‘ FAX numbers between the hours of9:00 mm. and 5:00
`p.m. on
`. and received verification thereafier of each complete
`transmission.
`(State) I declare under penalty of perjury under the laws of the State of California that the
`[ ]
`above is true and correct.
`[X]
`(Federal) I declare that] an: employed in the office of a member ofthe Bar of this Court
`at whose direction the service was made.
`
`Executed on March 27. 2002, at Gold River. California.
`
`
`
`- an-—he',7aL7sxflé’*"“E
`
`03/29/2002 FRI 12:55
`
`[TX/RX N0 7121]
`
`@004
`
`

`
` I
`
`. 12356 P% 29: 2&2
`X.2
`
`#54565
`
`PQGE3 5/6
`
`'
`p
`United States District Court
`for the
`Eastern District of California
`March 29, 2002
`
`* * CERTIFICATE 0? senvicn * *
`
`2:01-CVf01771
`
`ndd
`
`Phat Fashions Inc
`
`v.
`
`Phat Game Athleticv
`
`———_.__
`; I,
`the undersigned, hereby certify that I am an employee in the office of
`-
`the Clerk, U.S. District Court, Eastern District of California.
`
`'
`
`-That on March 29, 2002, I SERVED a true and correct copytiee) of
`the attached, by placing said copy(ies) in a postage paid envelope
`p
`L addressed to the person(s) hereinafter listed, by depositing said
`envelope in the U.S. Mail, by placing said copy(ies) into an inter-ofticea
`delivery receptacle located in the Clerk's office. or, pursuant to prior
`authorization by counsel, via facsimile.
`
`Brad David Rose
`PRO HAC VICE
`Pryor Cashman Sherman and Flynn
`410 Park Ave
`*
`New York. NY 10022
`
`SJ/LKK
`
`Suzan Arden
`PRO HAC VICE
`Pryor Cashman Sherman and Flynn
`410 Park Ave
`New York, NY
`
`10022
`
`David S Levine
`PRO I-{AC VICE
`Pryor Cashman Sherman and Flynn
`410 Park Ave
`New York, NY 10022
`
`M Taylor Florence
`Bullivant Houser Bailey Pendergrase and Hoffman
`11335 Gold Express Drive
`Suite 105
`Gold River, CA
`
`95670-4491
`
`03/29/2002 FRI 12:55
`
`IITI/RX N0 7121] @005
`
`

`
`
`
`#54565 PQGE3 6/6
`
`Roy C Dickson
`Dickson and Associates
`- 4676 Lakeview Avenue
`Suite 107
`Yorba Linda, CA 92886
`
`Jack L. Wagner, clerk
`
`BY:
`
`Depu
`
`C er
`
`03/29/2002 FRI 12:55
`
`[TX/RI no 7121) 21003
`
`

`
`
`
`"705
`
`
`
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`
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`
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`“
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF CALIFORNIA
`
`PHAT FASHIONS, L.L.C.,
`3
`Plaintiff,
`
`NO. CIV. S-01-1771 LKK/PAN
`
`4 5 6 7
`
`i
`
`8%
`9%
`
`10
`
`11
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`12
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`13
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`v.
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`to R D E R
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`14
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`15
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`16
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`17
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`PHAT GAME ATHLETIC APPAREL,
`And PHAT GAME,
`INC.,
`
`INC.;
`
`Defendant.
`
`
`/
`
`‘Plaintiff, Phatfashions, L.L.C., brings this action against
`
`18 defendants, Phat Game Athletic Apparel,
`
`Inc. and Phat Game, Inc-
`
`1
`19 for trademark infringement,
`I
`20 competition: and dilution under the Lanham Act.
`
`false designation of origin,
`See 15 U.S.C.
`
`unfair
`
`
`
`21
`
`22
`
`§§ 1114(1), 1125(a),
`
`& ll25(c). Plaintiff also brings state law
`
`claims for trademark dilution pursuant to Section 14330 of the Cal .
`
`23 Bus.
`
`& Prof. Code and a common law claim for unfair competition.
`
`24 This matter is before the court on plaintiff's motion for summary
`
`2 5
`
`26
`
`judgment .
`
`I decide this motion based on the papers and pleadings
`filed herein and after oral argument.
`[7
`
`1
`
`

`
`
`-.2"
`
`It
`
`» FACTS
`
`(“Simmons”) established Phat
`In-1992, Russell Simmons
`, Fashions, L.L.C.,
`the plaintiff corporation which manufactures
`: and distributes urban and athletic apparel.
`Simmons, who is
`also the co-founder of “Def Jam Records," started the plaintiff
`I corporation in order to. sell apparel worn by popular rap and
`
`y hip-hop artists whose music is produced by the record label.
`Plaintiff's products consist of T-shirts,
`jerseys, sweatshirts,
`slacks,
`jeans,
`jackets, shorts, caps, hats, backpacks, and
`
`
`
`;sunglasses.
`
`Plaintiff's most prominent label and design is the
`
`registered mark PHAT FARM,-which was first used in March 1993
`
`22
`
`Plaintiff's apparel prominently displays one of the PHAT
`marks, such as PHAT FARM,
`in a bold athletic style or script
`font. A Alternatively, plaintiff's logo features the mark PHAT
`_ FARM together with the initials P or PE‘, a PHAT mark in
`combination with a design logo, or the letters P or F surrounded
`
`by a heraldic crest or bold circle. All of the products in the
`
`PHAT FARM clothing line, except for BABY PHAT, also have a,
`
`2
`
`

`
`
`
`%bearing the name PHAT FARM which includes its custom design.
`
`Plaintiff sells its apparel through its flagship store in
`
`Manhattan,
`
`through department stores such as Macy's and
`
`By 1997, plaintiff's annual revenue exceeded $8.6 million.
`{In 1999, plaintiff's annual revenue had grown to $36.7 million,
`‘and in 2000 it increased to $111.5 million. Also in 2000, sales
`.by third parties pursuant to licenses granted by plaintiff
`
`amounted to $110.3 million, and plaintiff spent approximately
`
`14i music magazines and on radio, television, and billboards.
`
`15 Plaintiff has been promoting its products on its website since
`
`16 1998. Plaintiff's marks have been featured in unsolicited
`
`17 articles in national newspapers and magazines such as The New
`
`18 York Times, People, and Harper's Bazaar.
`
`19;
`
`‘In 1998, Shawn Williams and Cloyce Dickerson formed the
`
`defendant corporations in California. Defendants’ business is
`
`goperated primarily out of William's home in Sacramento,
`‘California. Defendants sell athletic apparel and accessories
`
`bearing the mark PHAT or PHAT GAME,
`
`in bold athletic print or
`
`24
`
`25
`
`script font. Alternatively, defendants’
`
`logo features thelmrk
`
`PHAT GAME appearing in a circle and surrounding the interloddng
`
`263 initials PG. Defendants’ website phatgame.com describes the
`
`3
`
`

`
`
`
`those of plaintiff.
`On October 5, 1997, defendants filed an intent—to¥use
`
`Vapplication in the USPTO to register the PHAT GAME mark forxme
`
`ion athletic apparel and urban wear.
`
`On November 18, 1998,
`
`21? plaintiff filed an opposition to defendant's PTO application.
`22j In January 2000, plaintiff brought this action for trademark
`
`23
`
`infringement.
`
`The USPTO proceedings are stayed during the
`
`24 pendency of this suit.
`
`25
`
`26
`
`////
`
`////
`
`goods as urban wear and athletic apparel, and defendants
`
`currently sell basketball uniforms, football jerseys, hats,
`shorts, T-shirts,_and warm—up suits. Defendants’ target
`
`E audience are males in their teens and early twenties.
`
`Defendants sell their goods through their website and
`
`sporadically in retail stores in the Sacramento area.
`
`Defendants have also sold their products at several basketball
`competitions and festivals in local parks, and have filled a few
`
`gcustom orders for local sports teams. Defendants’ market is
`
`‘primarily California, but it has distributed its clothes in
`Oregon and Ontario, Canada, and targets markets in North
`
`Carolina and Michigan due to large number of college basketball
`
`13
`
`14
`
`fans in those areas. Defendants have used manufacturers and
`
`suppliers in Minnesota and in the Phillippines, and Dickerson
`
`15 has traveled to the Philippines and Hong Kong for business
`
`16 purposes. Defendants retail their products at prices just belmv
`
`

`
`
`
`II.
`
`sm-man!‘ June.-mm swannmns
`
`Summary judgment is appropriate when it is demonstrated
`
`that there exists no genuine issue as to any material fact, and
`
`that the moving party is entitled to judgment as a matter of
`
`Fed. R. Civ. P. 56(c); See also Adickes v. S.H. Kress &
`
`law.
`
`ICo,, 398 U.S. 144, 157 (1970); Secor Limited V, Cetus Corp., 51
`
`‘ F.3d 848, 853 (9th Cir. 1995).
`
`the moving party
`Under summary judgment practice,
`[a]lways bears the initial responsibility of
`informing the district court of the basis
`for its motion, and identifying those
`portions of "the pleadings, depositions,
`answers to interrogatories, and admissions
`on file, together with the affidavits, if
`any," which it believes demonstrate the
`absence of a genuine issue of material fact.
`
`Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986).
`
`"[W]here
`
`15
`
`the nonmoving party will bear the burden of proof at trial on a
`
`
`
`18
`
`to interrogatories, and admissions on file.'" gg.
`
`Indeed,
`
`summary judgment should be entered, after adequate time for
`
`édiscovery and upon motion, against a party who fails to make a
`
`23 bear the burden of proof at trial.
`
`;g. at 322.
`
`"(A1 complete
`
`‘immaterial." Lg.
`
`In such a circumstance,
`
`summary judgment
`
`5
`
`

`
`‘should be granted, "so long as whatever is before the district
`
`court demonstrates that the standard for entry of summary
`
`3
`
`judgment, as set forth in Rule 56(c),
`
`is satisfied."
`
`lg. at
`
`If the moving party meets its initial responsibility,
`
`the
`
`‘burden then shifts to the opposing party to establish that a
`
`genuine issue as to any material fact actually does exist.
`
`Matsushita Elec.
`
`Indus. Co. v. Zenith Radio Corp., 475 U.S. 574,
`
`9;
`
`596 (1986); See also First Nat'l Bank of Ariz. v. Cities Sgrv,
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`Co., 391 U.S. 253, 288-89 (1968); Secor Limited v. Cetus CgrQ.,
`
`51 F.3d 848, 853 (9th Cir. 1995).
`
`In attempting to establish the existence of this factual
`
`dispute,
`
`the opposing party may not rely upon the denials of its
`
`pleadings, but is required to tender evidence of specific facts,
`
`in the form of affidavits, and/or admissible discovery material,
`
`in support of its contention that the dispute exists. Rule
`
`56(e); Matsushita, 475 UJSI at 586 n.11; See also First Nat'l
`
`Bank, 391 U,S. at 289; Rand v. Rowland, 154 F.3d 952, 954 (9th
`
`Cir. 1998).
`
`The opposing party must demonstrate that the fact
`
`in contention is material, i.e., a fact that might affect the
`
`outcome of the suit under the governing law, Anderson v. Liberty
`
`Lobb
`
`Inc., 477 U.S. 242, 248 (1986); Owens v. Local No. 169,
`
`Assoc. of Western Pulpand Paper Workers, 971 F.2d 347, 355 (9th
`
`Cir. 1992)
`
`(quoting T.W. Elec. Serv.,
`
`Inc. v. Pacific Elec.
`
`Contractors Ass'n, 809 F.2d 626, 630 (9th Cir. 1987), and that
`
`the dispute is genuine, i.e., the evidence is such that a
`
`6
`
`

`
`
`
`reasonable jury could return a verdict for the nonmoving party,
` 2, Anderson, 477 U.S. 248-49; See also Cline v. Industrial’
`:Maintenance Engineering & Contragting Co., 200 F.3d 1223, 1228
`
`(9th Cir. 1999).
`
`In the endeavor to establish the existence of a factual
`
`issue
`the opposing party need not establish a material
`6 dispute,
`7 of fact conclusively in its favor.
`It is sufficient that "the
`
`claimed factual dispute be shown to require a jury or judge to‘
`
`9; resolve the parties‘ differing versions of the truth at trial."
`[
`.
`First Nat'l Bank, 391 U.S. at 290; See also T.W. Elec. Serv.,
`
`809 F.2d at 631. Thus,
`
`the "purpose of_summary judgment is to
`
`
`
`l13 whether there is a genuine need for trial.'" Matsushita, 475
`
`_note on 1963 amendments); See also International Union of—:.?.
`Bricklayers & Allied Craftsman Local Union No. 20 v. Martin
`
`Qg§£§L_LQgg, 752 F.2d 1401, 1405 (9th Cir. 1985).
`
`In resolving the summary judgment motion,
`
`the court
`
`examines the pleadings, depositions, answers to interrogatories,
`
`and admissions on file, together with the affidavits, if any.
`Rule 56(c); See also In re Citric Acid Litigation, 191 F.3d
`
`51090, 1093 (9th Cir. 1999).
`The evidence of the opposing party
`:is to be believed, Anderson, 477 U.S. at 255, and all reasonable
`
`inferences that may be drawn from the facts placed before the
`
`25 court must be drawn in favor of the opposing party, Matsusgita,
`
`26
`
`475 U.S. at 587 (citing United States v. Diebold
`
`Inc., 369 U.S.
`
`

`
`654, 655 (1962)
`
`(pg; ggriam)); See also Headwaters Forest
`
`Defense v. County of Humboldt, 2000 WL 431004, *8 (9th Cir.
`
`1 2
`
`3 Cal). Nevertheless,
`
`inferences are not drawn out of the air,
`
`4
`and it is the opposing party's obligation to produce a factual
`5 predicate from which the inference may be drawn.
`gee Richargs
`
`;
`
`6 v. Nielsen Freight Lines, 602 F. Supp. 1224, 1244-45 (E.D. Cal.
`
`7 1985), a.f;f_'d, 810 F.2d 898, 902 (9th Cir. 1987).
`
`8
`
`9
`
`Finally,
`
`to demonstrate a genuine issue,
`
`the opposing party
`
`"must do more than simply show that there is some metaphysical
`
`10 doubt as to the material facts.
`
`.
`
`.
`
`. Where the record taken as
`
`11
`
`a whole could not lead a rational trier of fact to find for the
`
`12 nonmoving party,
`
`there is no 'genuine issue for trial.'"
`
`13 Matsushita, 475 U.S. at 587 (citation omitted).
`
`14
`
`15
`
`16
`
`III .
`
`CHOICE OF LAW‘
`
`Pursuant to 28 U.S.C. § l406(a),
`
`this matter was
`
`17
`
`transferred to the Eastern District of California from the
`
`18 Southern District of New York because the court lacked personal
`
`19
`
`jurisdiction over the defendants. When a case is transferred
`
`20 pursuant to 28 U.S.C. § 1406(a),
`
`the court should apply the
`
`21 choice of law rules of the transferee district.
`
`ggg Muldoon y,
`
`22 Tropitone Furniture C0,,
`
`1 F.3d 964, 967 (9th Cir. 1993); 17
`
`23 Moore's Federal Practice § lll.38[2]
`
`
`(2001). California
`
`24
`
`1 Because the matter was submitted on the original briefs
`25 which considered only New York and Second Circuit law,
`the court:
`granted the parties the opportunity to file briefs to contemplate:
`the effect of California law and the law of the Ninth Circuit.
`
`25
`
`8
`
`

`
`
`
`respect to each issue in a case." Application Group, Inc,.v.
`
`Hunter Group, Inc.,
`
`61 Cal.App.4th 881, 895-96 (1998).
`
`If the
`
`‘laws of the two states are “reasonably identical” there is no
`
`‘%conflict to be resolved, and the court should apply the
`
`substantive law of the state in which it sits.
`
`Isuzu Motors
`
`Ltd. v. Consumers Union of United States, 12 F.Supp.2d 1035,
`
`1043-44 (C.D. Cal. 1998).
`
`I turn first to plaintiff's federal
`
`claims.
`1
`In the Ninth and Second Circuits to prove trademark
`
`infringement or false designation under the Lanham Act, a
`
`zplaintiff must demonstrate that it owns a valid trademark
`
`;registration and that the defendant's use of the allegedly
`
`infringing mark is likely to cause confusion by the consuming
`
`24 public as to the source or sponsorship of the defendant's goods.
`
`25 See Brookfield Communications, Inc. V. West Coast Entm’t Corp.,
`
`26
`
`174 F.3d 1036, 1046 (9th Cir. 1999); Clinigue Labs., Inc. v. Deg
`
`
`
`determines choice of law questions using a “governmental
`interest analysis.” Offshore Rental Co. v. Continental Oil Co.,
`
`22 Cal.3d 157,
`
`161 (1978).
`
`Under this analysis,
`
`the court must apply a three-pronged
`
`test, examining (1) whether the laws of the states in question
`
`are different;
`
`(2)
`
`if so, whether each state has any interest in
`
`ihaving its law apply; and (3) if so, which state's interest
`
`gwould be most
`
`impaired if the other state's law were applied.
`
`_S_e_e_ Clothesrigger.
`
`Inc. v. cm; Corp., 191 Cal.App.3d 605, 614
`
`(1987).
`
`"A separate choice—of-law inquiry must be made with
`
`

`
`Corp., 945 F. Supp. 547, 550-58 (S.D.N.Y 1996).
`
`The standard
`
`
`
`Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Where a
`plaintiff has demonstrated trademark infringement under Section
`%32(1) of the Lanham Act,
`the Circuits also agree that the
`8} plaintiff is entitled to prevail on its claim of unfair
`‘ 9 competition under Section 43(a).
`See Brookfield Communications,
`Inc., 174 F.3d at 1046; Cartier,
`Inc. v. Deziner Wholesale,
`
`
`
`.L.L.C., 2000 WL 347171 (S.D.N.Y. 2000). Finally,
`
`in order to
`
`demonstrate a claim for dilution pursuant to Section 43(a) of
`
`3the Lanham Act, plaintiff must make an identical showing under
`
`‘both Ninth and Second Circuit precedent.
`
`See Panavision Int'l
`
`5 .
`16‘ v. PF Brands. Inc., 191 F.3d 208, 215 (2d Cir. 1999).
`
`141 F.3d 1316, 1324 (9th Cir. 1998); Nabisco.
`
`Inc.
`
`17
`
`with respect to plaintiff's state law claims, California
`
`18‘ and New York have-enacted virtually identical statutes to
`
`& Prof. Code
`ggg Cal. Bus.
`19 provide remedies for dilution.
`202 § 14330; N.Y. GBL § 368-1. Under both California and New York
`21' law, unfair competition is generally synonymous with the act of
`
`22; “passing off” one’s goods as those of another.
`ggg Cel—Tech
`23 Communications Inc. v. Los Angeles Cellular Telephone Co., 20
`Cal.4th 163, 193 (1999); Attorney's grocess & Research Inc. v.
`
`American Process & Research Corp., 676 N.Y.S.2d 419 (N.Y. Sup.
`
`Ct. 1998). Where plaintiff establishes a claim of unfair
`
`10
`
`

`
`
`
`competition under the Lanham Act, he has also deemed to have
`
`established common law claims under both California and New York
`
`Elaw.
`
`see Grupo Gigante S.A. de c.v. v. Dallo & co.. Inc., 119
`
`'F.Supp.2d 1083, 1088 (C.D. Cal. 2000); Kraft General Goods Inc.
`
`:v. Allied Old English. Inc., 831 F.Supp.2d 123, 135-36 (S.D.N.Y.
`11993).
`
`For the foregoing reasons,
`
`the court concludes that the
`
`Ninth Circuit law interpreting the Lanham Act is “reasonably
`
`iidentical” to that of the Second Circuit, as is the applicable
`
`Ecommon law of California and New York. Accordingly,
`
`the court
`
`will apply Ninth Circuit law to plaintiff's claims under the
`
`Lanham Act and California substantive law as to its state
`
`13. claims.
`
`‘14
`
`15
`16
`
`IV.
`
`TRADEMRRK INFRINGEMENT
`To prove trademark infringement or false designation under
`
`the Lanham Act, a plaintiff must show that he has a valid,
`
`‘projectile trademark interest in its trade and service marks,
`
`and the defendants similar mark creates a likelihood of
`
`confusion as to the source or sponsorship of its products.
`
`gee
`
`Brookfield Communications,
`
`Inc. v. West Coast Entertainment, 174
`
`F.3d 1036, 1046 (9th Cir. 1999); E.
`
`& J. Gallo Winer
`
`
`1
`23 Cattle Co., 96 F.2d 1280, 1290 (9th Cir. 1992).2 Below,
`
`I
`
`v. Ga
`
`24
`
`2 Section 32(1) of the Lanham Act applies to federally
`25' registered marks and provides in pertinent part:
`
`25'
`
`Any person who
`
`shall, without
`
`the consent of
`
`the
`
`11
`
`

`
`
`
`A trademark registered with the United States Patent and
`
`3
`iTrademark Office is "presumed to be distinctive and should be
`
`1
`
`conclude that plaintiff has made such a showing.
`
`2 A.
`
`VZLID INTEREST IN TRADEMERKS
`
`
`
`
`
`5 afforded the utmost protection." E.J. Gallo Winer v. Consorzio
`
`-:__?.——._—:—_:—:j
`6 Del Gallo Nero, 782 F. Supp. 457, 462 (N.D. Cal. 1992); 15
`
` —_¢———.j
`
`registrant-
`
`(a) use in commerce any reproduction, counterfeit, copy,
`or
`colorable
`imitation of
`a
`registered mark
`in
`connection with
`the
`sale,
`offering
`for
`sale,
`distribution, or advertising of any goods or services on
`or in connection with which such use is likely to cause
`confusion, or to cause mistake, or to deceive;
`.
`.
`.
`
`shall be liable in a civil action by the registrant for
`the remedies hereinafter provided.
`
`See 15 U.S.C. §
`
`1114(1).
`
`ection 43(a)(1) of the Lanham Act applies the same standard to
`oth registered and unregistered trademarks,
`and provides
`in
`16 pertinent part:
`
`3b
`
`15
`
`Any person who, on or in connection with any goods or
`services,
`.
`.
`. uses in commerce any word,
`term, name,
`symbol, or device, or any combination thereof, or any
`false designation of origin,
`false
`or misleading
`description
`of
`fact,
`or
`false
`or misleading
`representation of fact, which-
`(A)
`is likely to cause confusion, or to cause mistake,
`or
`to deceive as to the affiliation, connection, or
`association of such person with another person, or as to
`the origin,
`sponsorship, or approval of his or her
`goods, services, or commercial activities by another
`person,
`.
`
`shall be liable in a civil action by any person who
`believes that he or she is or is likely to be damaged by
`such act.
`
`I ‘
`
`17
`
`18
`
`19
`20
`
`21E
`
`22
`
`23
`
`24
`
`26 See 15 U.S.C. § 1125(a)(1).
`
`12
`
`

`
`In the matter at bar, plaintiff tenders evidence that the
`
`&service mark PHAT FARM, and all of the its sub brands are
`
`Plaintiff's Brief, at 11,
`
`fn. 4. Plaintiff also owns-
`
`3
`
`15 U.S.C. § 115(a) provides in part:
`
`. of a mark
`.
`.
`Any registration issued under the Act
`registered on the principal register provided by this
`chapter and owned by a party to an action shall be
`admissible in evidence and shall be prima facie evidence
`of
`the validity of
`the registered mark and of
`the
`registration of the mark, of the registrant's ownership
`of the mark, and of the registrant's exclusive right to
`use the registered mark in commerce .
`.
`.
`
`‘
`
`15 U.S.C. S 11l5(b) provides in part:
`
`To the extent that the right to use the registered mark
`has become
`incontestable under section 1065 of
`this
`title, the registration shall be conclusive evidence of
`the validity of
`the
`registered mark
`and of
`the
`registration of the mark, of the registrant's ownership
`of the mark, and of the registrant's exclusive right to
`use the registered mark in commerce .
`.
`.
`
`5
`
`PHAT
`The Phat Fashions registered marks include, PHAT,
`FARM, PHAT FARM and design, PHAT THREADS, BABY PHAT, BABY PHAT
`stylized, BABY PHAT and design, ALL CITY, ALL CITY ATHLETIQUES,
`PF 129 and design, Bulls Head Design, and Bull's Head Shaded
`. Design.
`
`.13
`
`

`
`
`
`registrations for various PHAT marks in over thirty countries
`
`around the world and has applications as well as registrations
`
`for several internet domains. ggg Simmons Aff. at T 21, Exh. J.
`
`While defendants challenge the validity of plaintiff's
`
`incontestable marks by citing to the existence of registered
`
`marks with the term PHAT,
`
`the record avers that the companies to
`
`7 which defendants cite, either no longer have goods in commerce,
`
`8 are engaged in the sale of goods unrelated to clothes or fashion
`
`9‘ accessories, or have been abandoned by its owner.
`
`ggg
`
`10 Plaintiff's Reply at 8, n. 3; Aff. Brad Rose at Ti 5-7, Exh. C.
`
`the court concludes that plaintiff has a valid
`Accordingly,
`11;
`12% interest in its trade and service marks.
`The court must now
`13 determine whether defendants’ mark results in a likelihood of
`
`confusion with plaintiff's trade and service marks, all linked
`
`with the word PHAT.
`
`I turn to that task.
`
`B.
`
`LIKELIHOOD OF CONFUSION
`
`Plaintiff asserts that defendant’ products which bear the
`
`mark PHAT GAME are likely to be confused by consumers as goods
`
`emanating from the Phat Fashions’
`
`family of PHAT marks.
`
`Defendants respond that its logo and product are distinct and
`
`2l| factual issues remain as to whether its mark is likely to cause
`
`%confusion with plaintiff's PHAT marks. Defendants’ argument
`g lacks merit.
`
`In the Ninth Circuit,
`
`the test for likelihood of confusion
`
`251 is whether a “reasonably prudent consumer” in the marketplace is
`
`likely to be confused as to the origin of the good or service
`
`14
`
`

`
`bearing one of the marks.
`
`See Dreamwerks Prod. Group, Inc., v.
`
`‘SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998).
`
`The Circuit
`
`enumerates eight factors to facilitate this inquiry:
`
`(1)
`
`strength of the mark;
`
`(2) proximity or relatedness of the goods;
`
`(3) similarity of sight, sound and meaning;
`
`(4) evidence of
`
`actual confusion;
`
`(5) marketing channels;
`
`(6)
`
`type of goods and
`
`’purchaser care;
`
`(7)
`
`intent; and (8)
`
`likelihood of expansion.
`
`~AMF,
`Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.
`9) 1979).
`The factors, however, should not be rigidly weighed,
`%id., and are intended to guide the court in assessing the basic
`
`11 question of likelihood of confusion. Gallo Winery v. Gallo
`
`12 Cattle Co., 967 F.2d 1280, 1290 (1992). Thus, “the presence or
`
`13
`
`absence of a particular factor does not necessarily drive the
`
`14 determination of confusion.” lg‘
`
`
`
`i.
`
`Strength of the Mark
`
`A strong mark is inherently distinctive, and therefore
`
`should be afforded the widest ambit of protection from
`
`infringing uses.
`
`geg Sleekcraft Boats, 599 F.2d at 349. Marks
`
`are often classified in one of five categories increasing in
`
`205 distinctiveness:
`
`(1) generic,
`
`(2) descriptive,
`
`(3) suggestive,
`
`(4) arbitrary, or
`
`(5) fanciful.
`
`ggg Kendall-Jackson Winery,
`
`;Ltd. v. E.& J. Gallo Winery, 150 F.3d 1042, 1046 (9th Cir.
`
`1998).
`
`“The latter three categories of marks, because their
`
`intrinsic nature serves to identify a particular source of a
`
`product, are deemed inherently distinctive.” Two Pesos,
`
`Inc. v,
`
`Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Thus, marks that
`
`15
`
`

`
`
`
`are suggestive, arbitrary or fanciful meet the distinctiveness
`
`element automatically.
`
`figg Kendall—Jackson, 150 F.3d at 1046.
`
`: On the other hand, generic marks “can never meet the
`
`distinctiveness element.”
`
`lg; The decision of the United
`
`States Patent and Trademark Office to register a mark without
`
`
`
`rather than merely descriptive.
`
`See Abercrombie & Fitch Co. v,
`
`‘Hunting World Inc., 537 F.2d 4, 11 (2d Cir. 1976).
`
`Defendants assert that the term PHAT has its origins in the
`
`African American community, and stands literally for “Pretty Hot
`
`And Tempting.”
`
`ggg Decl. Shawn Williams, at 2 T 7. Defendants
`
`contend that the acronym “phat” is synonymous with “cool,”
`
`,“hip,” or “attractive” and used in common vernacular.
`
`See id.
`
`EDefendants therefore submit that the term PHAT is only
`
`descriptive and not projectile for plaintiff's exclusive use.
`
`I_
`
`cannot agree.
`
`Even assuming that PHAT idiomatically describes the
`
`concludes that it does not describe the apparel’s features or
`
`its actual qualities.‘ Put plainly,
`
`the mark PHAT requires some
`
`20
`
`21
`
`22‘ thought by the consumer to connect the term with plaintiff's
`
`23 product line of clothing and fashion accessories because it has
`3 __ __________________
`
`the court need not
`‘ Given the conclusion in the text,
`i consider whether
`a
`term having a descriptive meaning in a
`distinctive cultural groups but without such meaning in the greater
`.isociety may be considered as merely descriptive.
`16
`
`

`
`
`
`1
`
`no intrinsic connection to the product for which the mark is
`
`used. Moreover, plaintiff tenders evidence that when Phat
`3 Fashions applied for the mark PHAT,
`the United States Patent and
`
`Trademark Office did not require proof of a secondary meaning on
`
`the ground that the term “phat” was only descriptive.
`
`ggg Aff.
`
`;Brad Rose, at T 2. Thus,
`
`the mark PHAT was registered as an
`
`-inherently distinctiv