TTAB
`
`Docket No. 20307-060
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`Mark: ECHOBRAIN
`
`
`
`In re Matter of Application Nos. 76/044,047,
`76/044,072, 76/044,073, and 76/044,025
`
`
`' ‘gr: «#4 5
`2;
`. , gyf 5 .,;—;A
`
`
`
`
`
`
`
`
`Echo Drain,
`
`
`
`Opposition Nos. 91-125087
`«I/{.5 /_.;j
`91-123257
` Opposer,
`91 -123572 ' 51;» ./5 : zu, I 1::
`91-123822
`91-152425
` VS.
`
`Jason Newsted,
`
`APPL|CANT’S RESPONSE TO ORDER
`
`TO SHOW CAUSE RE STATUS OF CIVIL
` Applicant.
`
`CASE
`
`TO: Commissioner for Trademarks
`
`ATTN: Trademark Trial and Appeal Board
`P.O. Box 1451
`
`Alexandria, VA 22313-1451
`
`Applicant, Jason Newsted, by and through his attorneys responds to the Board’s
`
`request of June 17, 2005 as follows:
`
`1.
`
`The Court action was filed in U.S. District Court for the Central
`
`District of California, Western District, as Case No. 02-CV-04568 JFW (FMOx).
`
`2.
`
`The bulk of the Court action was dismissed when the Court granted
`
`Applicant’s motion for summary judgment on August 29, 2003. This decision was
`
`published as Echo Drain v. Jason Newsted, 307 F. Supp.2d 116, 68 U.S.P.Q.2d 1203
`
`(C.D. Cal. 2003). A copy of the decision as published in the U.S. Patent Quarterly is
`
`attached as Exhibit A.
`
`3.
`
`The remaining counterclaims were dismissed on September 30,
`
`2003 when the Court entered a Stipulated Order of Dismissal of Counterclaims With
`
`Prejudice. A copy of the Stipulated Order is attached as Exhibit B.
`
`1
`
`07-29-2005
`U.S. Patent 8: TMO1‘cITM Mall Rep! Dt. #77
`
`

`
`
`
`Having supplied the requested information, Applicant respectfully requests that
`
`the TTAB dismiss these actions and close its files.
`
`Dated: July 18,2005
`
`Respectfully submitted,
`
`MANATT, PHELPS & PHILLIPS, LLP
`
`“
`
`I‘
`-
`Jill M. Pietrini
`11355 West Olympic Blvd.
`Lo$'Ange|es, California 90064
`Telephone:
`(310) 312-4000
`Facsimile:
`(310)312-4224
`Attorneys for Jason Newsted
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this Notice of Resolution Of Court Action is being deposited
`with the United States Postal Service as first class mail, postage prepaid, in an
`envelope addressed to: Assistant Commissioner for Trademarks, ATTN: Trademark
`Trial and Appeal Board, P.O. Box 1451, Alexandria, VA 2313-1451, on this 18”‘ day of
`July, 2005.
`
` atrina Martin
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of this Notice of Resolution Of Court Action is
`being deposited with the United States Postal Service as first class mail in an envelope
`
`addressed to: Victor E. Libert, Libert & Associates, 3 Mil Pnd Lane, PO Box 538,
`
` La ina Martin
`
`40902067. 1
`
`

`
`I ‘EXHIBIT A
`
`

`
`
`
`
`
` l 203
`Echo Drain v. Newsted
`group is "not protectable as trademark, since I
`plaintiff failed to timely respond to request
`seeking admissions that “echo" is descriptive
`when used in conjunction with sound record-
`ings, music group,’ and live musical perfor-
`mances, and since plaintifi“ submitted no ex-
`pert reports or surveys to show secondary
`meaning, and no consumer testimony to indi-
`cate that significant portion of consuming
`public associates “Echo Drain" with plain-
`tiff’s products and services.
`’
`
`6
`
`8 -USPQ2d
`
`under Section 2(e)(1) is based on our consid-
`eration of the whole, not its parts. The combi-
`nation of the specific term and TLD at issue,
`i.e.,-OFFICE and .NET, does not create any
`double entendre, incongruity, or any other ba-
`sis upon_which we can find the composite any
`more registrable than its separate elements.
`The‘ combination immediately informs pro-
`spective purchasers that the software includes
`“office suite" type software and is from an In-
`ternet business,
`i.e., a “.net” type business.
`See In re Taylor & Francis [Publishers] Inc.,
`supra at 1216 ('I'_l‘AB 2000) (PSYCHOLOGY
`and PRESS, “each merely descriptive of ap-
`plicant’s identified goods...
`in combination
`are likewise merely descriptive. PSYCHOL-
`OGY PRESS directly and immediately in-
`forms purchasers that the books bearing those
`words pertain to psychology, and that
`they
`emanate from a publishing establishment (a
`‘press’).'.’); and In re Patent & Trademark
`' Services Inc., supra at 1539 ('I'I‘AB~l998) (“it
`is clearrthat the phrase PATENT & TRADE-
`MARK»-SERVICES, INC.
`immediately con-
`veys information concerning characteristics or
`features__”of- applicant's legal representation ser-
`»vices, namely, that the services are rendered
`with respect to-patents and trademarks, and
`that they are rendered by a corporation”).
`
`Dejcisionf I
`The refusal of registration under Section
`2(d) of the Act is affirmed. The refusal of reg-
`istration under Section 2(e)(l) of the Act also
`is affirmed.
`
`__________.___________________..__.
`
`Echo Drainv. Newsted
`
`U._S. District. Court
`CentralaDistrict of California
`
`_
`
`No. CV 02-4568-JFW (FMOX)
`‘ ‘Decided August 29, 2003
`‘
`"TRADEMARKS AND UNFAIR TRADE
`PRACTICES
`
`[1] Types of marks — Secondary meaning
`(§ 327.02)
`"
`Types of marks — Descriptive — Par-
`ticular marks (§ 327.0303)
`Defendants are entitled to summary judg-
`ment
`that name “Echo Drain" for music
`
`[2] Infringement; conflicts between marks
`——_ Likelihood of confusion — Particu-
`lar marks — Confusion not
`likely
`(§ 335.0304.05)
`
`‘
`
`_
`
`Infringement; conflicts between marks
`-—j Likelihood of confusion — Related-
`ness of goods or services -4- Not simi-
`‘ lar (§ 335.0305.05) '
`Defendants are entitled to..summary judg-
`ment that their “Echobrain" mark for “pop
`rock." band is not likely_to create reverse_con-
`fusion_with plaintiffs “Echo Drain" mark for
`“funk and ~ g-r,oove”.N band,
`since plaintiffs _
`mark, even if suggestive,
`is presumptively
`weak, especially in view_ of large number of
`third parties using ,_“echo"’in music industry,
`since parties’ bands play different
`types of
`music, and there is no evidence that they share
`listeners, since evidence indicates that bands
`play in different types of clubs and cater to
`different
`types of customers, since parties‘
`marks are not confusingly similar in appear-
`ance, sound or meaning, since evidence sub-
`mitted to "show actual confusion does not sug-
`gestthatimembers of buying public would
`mistakenly ‘purchase either party's product.
`and since there is no evidence that defendants
`intended to promote confusion or appropriate
`plaintiffs goodwill.
`
`‘[3] ‘Acquisition, assignment, and mainte-
`nance of marks —,Scope of trademark
`—-V As to territory (§ 305.0205)
`Plaintiffs rights in name “Echo Drain," for
`musical group, do not extend beyond limited
`geographicalarea within Texas,.since plaintiff
`has never performed outside of Texas, and ad-
`-mits that it is local‘, not ‘national, act, since
`there is no evidence that plaintiff has taken af-
`firmative steps or entertained realistic plans
`for expansion beyond Dallas-Fort Worth area,
`
`

`
`
`
`1204
`
`Echo Drain v. Newsted
`
`68 USPQ2d
`
`and since plaintiffs maintenance of Web site
`for band does not show legally sufiicient mar-
`ket penetration outside that area.
`
`[4] Infringement; conflicts between marks
`— Willful (§ 335.11)
`
`Plaintifi‘ using name “Echo Drain” for mu-
`sical group cannot not prevail on claim’ that
`defendants’
`registration of “echodrain.net”
`and “echodrain.org” Internet domain names
`violated anticybersquatting provisions of Lan-
`ham Act, 15 _U.S.C. § l125(d), since plaintifi
`has offered no evidence that defendants regis-
`‘tered domain names with bad faith intent to
`profit from “Echo Drain” mark.
`
`Action by Echo Drain against Jason New-
`sted, Echobrain, and Chophouse Records Inc.
`for
`trademark infringement, cybersquatting,
`and false designation of origin in violation of
`Lanham Act, and for trademark infringement,
`deceptive trade practices, unfair competition,
`trademark dilution,“ and injury to business
`reputation under state law. On defendants‘ mo-
`'tion for summary judgment. Granted.
`
`Morris S. Getzels, Tarzana, Calif.; Allen
`Hyman, North Hollywood, Calif., for plaintifi‘.
`nu M. Pietrini and Jonathan M. Eisenberg,
`of Manatt, Phelps & Phillips, Los Angeles,
`Calif., for defendants. "
`'
`-
`
`I. Facts And Procedural Background
`
`"On June 11, 2002, Echo Drain fileda com-
`
`plaint against Jason Newsted, Echobrain, and
`Chophouse Records, Inc. On October 4, 2002,
`Echo Drain filed a first amended complaint
`(“FAC"), alleging nine claims forrelief: (1)
`Reverse confusion under the Lanham Act; (2)
`Violation of 15 U.S.C. § 1l25(d)(l)(a) (cyber-
`squatting); (3) False designation of origin; (4)
`Trademark disparagement; (5) Common law
`trademark infringement; (6) Violation of Cali-
`fomia Unfair, Trade Practices Act; (7) Unfair
`
`competition; (8) Dilution of mark and injury
`to business reputation; and (9) Declaratory re-
`lief.
`
`Defendants originally noticed their sum-
`mary judgment motion for hearing on the
`Court’s August 4, 2003 calendar. On July 17,
`2003, Echo Drain filed an ex parte. application
`to continue the hearing. In order togive Echo
`Drain ample time to respond to the summary
`Judgment motion,
`the Court granted Echo
`Drain’s ex parte application and continued the
`hearing on Defendants’ summary judgment
`motion to August 18‘, 2003. On July 28,2003,
`Echo'Drain filed asecond ex parte application
`to continue the hearing on Defendants’ sum-
`mary judgment motion. On July 30, 2003,‘ the
`Court again granted Echo Drain’s ex parte ap-
`plication for a continuance and continued the
`motion for summary judgment to'A‘ugust 25,
`~ 2003.
`s
`
`Walter, J.
`
`A. Echo Drain
`
`ORDER GRANTING DEFENDANTS’
`MOTION FOR SUMMARY .
`JUDGMENT OF ALL PLAINTIFF’-S
`~ CLAIMS
`-
`-
`
`On July 15, 2003, Defendants Jason New-
`sted, Echobrain, and Chophouse Records, Inc.
`(collectively “Defendants") fileda Motion
`For Summary_ Judgment Of All‘Plaintiff’s
`Claims. On August 11', 2003, Plaintiff Echo
`Drain filed its Opposition. On August 18,
`2003, Defendants filed a Reply...The Motion
`came for hearing on August 25, 2003._:_After
`hearing oral argument on..the Motion, the
`Court took the matter under submission. After
`
`reviewing the moving,_opposing, an_d_.reply
`papers and hearing oral argument, the Court
`rules as follows:
`
`Echo Drain is a band that was formed in
`
`Texas by Andrew C. Libert, Richard Walker,
`Todd Visentine, and Jesse Hall. (UF ‘}[103.)
`Libert, Walker, Visentine, and Hall adopted
`“Echo Drain" as the name of their band in
`February 2000. (UF ‘j[ 110:)‘ Echo Drain’s mu-
`sic can be described as progressive funk and
`groove with elements of heavy metal.
`(UF
`‘][168.) In March 2000, Echo Drain recorded
`its first compact disk at Crystal—Clear Sound
`in Dallas, Texas.
`(UF ‘II 112.) Crystal Clear
`Sound “pressed" one-hundred copies of Echo
`Drain’s first. compact disk, which, included
`three musical compositions entitled Mother
`Mirror, Sucker Punch, and Secret. (UF ‘II 112
`& 114.) In April 2000, Echo Drain began giv-
`ing away copies'='of its first compact disk to
`club owners in the, Dallas-Fort Worth, Texas
`
`area. (UF ‘ll 113.)
`
`

`
`1
`ock band that was
`
` 1205
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Echo Drain’distrib-
`
`_
`
`
`
`Echo Drain v. Newsted
`68 USPQ2d
`B. Echobrain
`On May 25, 2000, Echo Drain performed
`live for the first time at a club called “The
`Echobmin is _a pop r
`Rock" in the~Deep Ellum area, which is about
`formed by Jason Newste-d-, Bdan Sagrafena,
`'a six to seven block area in Da11as,Texas. (UF
`and Dylan Donkm (UF <11 46.) Newsted is a
`11111118 & 117-1T11°1031101v1’e1W°e“ Ma)’ 2000 well-known rock musician in the United
`and September 2002, Echo Drain perfonned
`smes’ having been a me
`nineteen live -shows at various clubs in the
`known band Metamca (U1: (K134) Newsted
`D01‘-P E11111“ 3103- (UF (1 125-) E0110 1313101135
`is also the president and owner of Chophouse
`never performed live outside of Texas, and
`Records,
`1nc_
`(U1: q[244_') Newsted and
`EC110 Drain -band membC[S admit 1,118.1 EC110
`Donkjn adoptgd “Echobrain” as the name of
`Drain 15 1110031 act, T10t’a-‘j_11a1i0na1 301. (UF
`their band in October 1999. (Newsted Decl.
`T117 & 19-V)
`1
`'
`"‘
`1
`‘ii 5.) Echobrain's music has been described as
`Four of Echo Drain's' shows were adver-
`“melodious ‘pop rock," even “Beatlesque.—"
`tised in the Dallas Observer, a free newspaper
`(UF ‘ll 68-)
`2000, Echobrain began recording
`in the Dallas, Texas area. (UF ii 138.) Prior to
`’
`In April‘
`ding studio in the San Fran-
`each of its shows, Echo Drain printed approxi— 11111510 111 11 161101’
`ci’sco, California area.
`(Newsted Decl
`‘ll 8',
`sic equipment Sig-res‘ C
`,
`10 Newstbd DCC1.) On
`19,
`mately 350 fiyers and distributed them to mu-
`,
`and posted them on telephone poles and news-
`13011013111111 5111111111100 3 DAT 1000101118 '01 3
`paper"boxes in: the Dallas-Fort Worth, Texas
`00110011011 01 50112510 1110 U1111‘0C1.S1a105 COPY‘
`area (Up (H 120-121.) Beginning in 'June
`‘Office’
`titled “Chimera—Echobrain."
`‘right
`2000, Echo‘-Drain distributed bumper stickers
`'<EX11- 1 10“1’11=1r1n1' De°1-'»‘E'X11- 0 10 Néwsted
`with the designation “Echo Drain.com." (UF
`D691-'» ,.‘.N§WSted D661
`‘1103 . Defendants
`ti 137') During its Shows’
`learned ofEcho Drain for the first time during
`uted"‘t-shirts and candy coins with the name
`111° 11151 1"’e_°1‘ (11 May 2000' (U1111 5.6;)
`,
`uE-Cho D*rain_n (U
`On June 25,2001, Echobrain mailed pro-
`F ‘)[122.)‘ In_ 2001, Echo
`,_
`.
`V,
`_
`_g
`,
`_
`Drain recorded its Second compact disk at mot-ional compact disks to several individuals
`Master Labs Dallas Recording Studio in Dal-
`‘111‘1‘1‘=1‘11'° ’S‘a11°“S~ (E1111 3 1° 11Y“1°“ D°°1-'1
`las, Texas. (Uri 143.) Echo Drain “pressed" 0“ 1’.‘.‘1g“51.‘. "199 ?°°1’ E°11°1°“““ P°‘1°““°‘1
`000 copies of
`its Second
`live f'or'=the«first time at Nadine's Wild Week-
`Califomia. (UE ‘)1 180.)
`-end in- sari Francisco,
`’
`approximately 1
`002, Echobrain released an album
`compact disk. (UF ‘{ 144.) Echo Drain sold a
`‘
`1f its second compact disk and
`In May 2
`under the Chophouse Records, Inc. record‘ la-
`"
`'
`%:::.atii.:*::.::'.::“;:.‘;:.°?:‘:;.a:s2i*::.:2:
`ieiggi. 1, to
`
`In June 2000, Echo Drain created a website
`die. play andrycompact dik storm (Up <1148.)
`‘"1111
`1110 '‘1°111a111
`11111110 "11E°11°D1'a111-C0111-"
`‘Echobrain’also‘has a website with the domain
`(UF 150) The W°b511° P1°V1‘1°d‘11e“’5 11130111
`'naine"-“echobrain.com." Echobrain ceased to
`the band and pictures..of the band members.
`ex-,st.On:fJune 11, 2002 (Up rfi248_)
`-
`(UF ‘)1 159.) The website a
`to download Echo. Drain recorded perfor-
`11, Standard
`proper where “the
`mances and allowed visitors to post messages.
`Summary judgment is
`(UF 11 159") '1
`'
`pleadings, depositions, answers to‘interrogato-
`E0110 1313111 1105 “W01 1130 3 00010118 380111»
`ties, and admissions on file, together with the
`promoter, personal manager, business man-
`Show thamhere is nogenu-
`U
`affidavits, if any,
`3801. 1811 011113. 01 §0a_d1<‘~S- (UF T1116. 17. & ine issue as -to any material fact and that the
`4,3-) 139110 ‘Drain d5¢S 1101 have a recording
`moving‘ party is entitled to a judgment as a
`contract or a merchandising contract, nor has matter of._-1a_w_" . Fed, R, Civ_ P, 56(c)_ The
`any merchandising company or record com- moving party has the burden of demonstrating
`pany ever offered Echo‘ Drain a contract. (UF
`theiabsenccof a genuine issue of fact for trial.’
`all of Anderson v. Liberty Lobby, Inc. .-.477 Us. 242.
`'ng a properly made
`‘£1113 & 26.) Thelgross revenue from
`._Echo ‘Drain‘s live performances‘ was $200.
`256 (1986). Apart)! 01313051
`’
`and supported motion for summary judgment
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`‘P
`
`
`
`
`
`(UF ‘i[ 10.)
`
`

`
`Echo Drain v. Newsted 68 USPQ2d
`1206
`
`
`may not rest upon mere denials but “must set
`forth specific facts showing that
`there is a
`genuine issue for trial.” Fed. R. Civ. P. 56(e).
`In particular, when the non-moving party
`bears the burden of proving an element essen-
`tial to its case, that party must make a show-
`ing sufficient to establish a genuine issue of
`material fact with respect to the existence of
`that element or be subject to summary judg-
`ment. See Celotex Corp. v. Catrett, 477 U.S.
`317, 322 (1986).
`An issue is genuine if evidence is produced
`that would allow a reasonable jury to reach a
`verdict
`in favor of the non-moving party.
`Anderson, 477 U.S. at 248. The Court" must
`assume the truth of direct evidence set forth
`
`by the opposing party. See Hanon v. Datap-
`roducts Corp. 976 F.2d 497, 507 (9thVCir.
`1992). However, where circumstantial evi-
`dence is presented, the Court may consider the
`plausibility and reasonableness of inferences
`arising therefrom. See Anderson, 4.77~U.S. at
`249-50; TW Electrical Service, Inc. Pacific
`Electrical Contractors Ass'n,.,80_9_
`626,
`631-32 (9th Cir. 1987). In that regard, “a mere
`‘sciritilla’ of evidence will not be sufficient to
`defeat a property supported motion for sum-
`mary judgment; rather, the nonmoving .pa_rry
`must introduce some significant .probativ,e evi-
`dence tending to support the comp1a.i_nt..” Sum-
`mers v. Teichert
`Son, Inc., 127 F.3d_11_50,
`1152 _(9th Cir. 1997) (internal quotations omit-
`ted).
`,
`.‘
`__.
`.
`v
`.'
`¢
`.ln ruling on a summary judgmen-t,m_otion,
`“the judge’s function is not himself to weigh
`the evidence and determine the truth of _the
`matter but
`to determine whether there is a
`genuine issue. for trial," Anderson.477 U.S. at
`249. Credibility determinations,=the weighing
`of the evidence, and the drawing of legitimate
`inferences from the facts are jury functions
`.. Id. at 255.
`
`III. Discussion 1
`Echo Drain’s FAC -alleges c1aims.:for fed-
`eral trademark infringement, as well as state
`statutory and common law claims. During oral
`argument, Echo Drain agreed that if the Court
`entered an order granting summary‘ judgment
`on Echo Drain's federal trademark infringe-
`ment claims, it would be dispositiver of-the re-
`maining claims in Echo Drain’s.FAC with the
`exception of Echo Drain's claim for cyber-
`squating. See e.g., Glow Industries,
`Inc.
`v.
`
`Lopez, 252 F.Supp.2d 962, 975 n.9O (C.D.
`Cal. 2002) (noting that “‘[t]he standard for
`Lanham Act unfair competition is the same as
`that for Lanham Act trademark infringement”
`and “the elements of state claims for trade-
`mark infringement and unfair competition are
`substantially similar to those of the compa-
`rable federal claims"). ‘In order to prevail on
`its
`federal
`trademark infringement claims,
`Echo Drain must prove that it has a valid pro-
`tectable trademark and that Defendants’ use of
`the same or similar mark caused a likelihood
`of confusion in the minds of the relevant con-
`suming pubic.‘ Fuddruckers,-j Inc.
`v. Doc's
`3.12. Others,
`Inc., 826 F.2d 837, 341
`[4
`USPQ2d 1026] (9th Cir. 1987).
`
`A. Echo Drain Does Not Have A
`Protectable Trademark. _
`_
`Pursuant
`to 15 U.S.C..,§ 1'_115(a), a valid
`federal
`trademark
`registration
`constitutes
`prima facie evidencethat the holder owns the
`mark and_has the exclusive right to use the
`mark in connection with thelgoods or services
`specified in the registration. KP Permanent
`Make-Up, Inc.
`v.‘ Lasting Impression 1, ,Inc.,
`_328'F.3d 1061, I069 [66 USPQ2d 1509] (9th
`Cir. 2003). It
`is undisputed_that Echo Drain
`has not obtained a federal trademark registra-
`tion for the Echo Drain .mark_. (UF ‘][2_4.) Be-
`cause Echo Drain has not obtained a’ federal
`trademark registration, it must prove that the
`Echo Drain mark is protectable. Glow", 252
`F.Supp.2d at 9976. In order to e‘stablish’that it
`has a protectable trademark, Echo Drain must
`prove (1) that its mark is inherently" distinctive
`or (2) that the mark has acquired distinctive-
`ness
`-through 9 secondary '-meaning.
`' See
`Kendall-Jackson Winery, Ltd v. E & J‘ Gallo
`Winery, 150 F.3d 1042,1047 [47 USPQ2d
`1332] (9th Cir. 1998).
`'
`.
`'
`'
`Marks are often.-classified in categories of
`increasing distinctiveness: (1) generic, (2) de-
`scriptive, (3) suggestive, and (4) arbitrary or
`
`' For purposes of this motion, Defendants conceded
`that Echo Drain was the first to use its mark commer-
`cially. (Reply pp.7-8.) Thus,__for purposes of this mo-
`tion, Echo Drain is the senior ‘user and Defendantsare
`the junior user. Brookfield Communications, Inc. v. West
`Coast Entertainment Group, 174 F.3d 1036, 1046 [50
`l.lSPQ2d 1545] (9th Cir. 1999) (noting that “[t]he_first
`to use a mark is deemed the ‘senior’ user and has the
`right to enjoin ‘junior’ users from using confusingly
`similar marks in the same industry or within the senior
`user's natural zone of expansion").
`
`

`
`
`
`1207
`Echo Drain v. Newsted
`68 USPQ2d
` ::
`Judge Fernando M. Olguin. Echo Drain’s fail-
`ure to timely respond to Defendants’ request
`for admissions conclusively establishesthat
`the Echo Drain mark is descriptive. See U.S.
`v."Kasul7oski, 834 F.2d 1345, 1350 (7th Cir.
`1987) (holding that “[a]dmissions made under
`Rule 36, even defaultiadmissioins, can serve as
`the factual predicate for
`summary judg-
`ment”); see also Schwarzer, supra, at 1122102
`(noting that “[u]nlike admissions made in in-
`terrogatory answers or depositions, admis-
`sions made in RFAs are binding and cannot be
`~ explained away or contradicted by other evi-
`dence”). .
`_
`
`fanciful. Two Pesos, Inc. v. Taco Cabana, Inc.,
`505 U.-S. 763, 768 [23 USPQ2d 1081] (1992);
`Japan Telecom,
`Inc.
`v. Japan Telecom Am.
`Inc., 287 F.3d 866, 872 [62 USPQ2d 1593]
`(9th Cir. 2002). Generic terms are not protect-
`able as trademarks because “they are common
`words or phrases that describe a class of
`goods rather than an ‘individual product" and
`“do not relate exclusively to the trademark
`owner’s product.” Id.
`(internal quotations
`omitted). Descriptive terms relate more di-
`rectly to a particular product
`than generic
`terms because descriptive terms “describe [] a
`person, a piece or an attribute of a product.”
`Id. However, descriptive terms “suffer from
`theisame problem as generic terms’; Because
`they tend to consist of common words that
`might be the only way to describe a category
`of goods, [courts] do not grant exclusive prop-
`erty rights in them. Thus, a descriptive term is
`protectable only if it “has acquired secondary
`meaning in the minds of consumers, i.e., it has
`become distinctive’ of the trademark appli-
`cant’s goods in commerce." Filipino Yellow
`Pages, _Inc.
`v. Asian Journal Publications,
`Inc.."198 F.3d 1143, 1147 [53 USPQ2d 1001]
`(9th ‘Cir. 1999) (internal quotations omitted).
`Marks thatare “suggestiv_e" or “arbitrary__or
`fanciful" are prot_ectab1e,with'out a showing of
`secondary meaning. Japan Telecom, 287,_F_.3d
`at'872.
`.
`A
`‘_
`'
`‘_
`[1].On April‘3, 2002, Defendants served_a
`request foradmissions on EchoHDrain which
`specifically reques'ted"that Echo Drain:
`(1)
`“Admit that the word ‘Echo’ has a descriptive
`meaning when used in conjunction with musi-
`cal sound recordings;” (2) “Admit that the
`word ‘Echo’ has a descriptive meaning when
`used in conjunctionwith a musical group;”
`and (3) “Admit that theiword ‘Echo’ has a de-
`scriptive meaning when used in conjunction
`with Ventertainmentservices inthe nature of
`live musical 'performances.""(UF 1] 92; Exh. F
`to Pietrini Decl.) It .is undisputed that Echp
`Drain did not timely respond to the request for
`admissions. (UF ‘][92.) Failure to timely’ re-
`spond to a party’s request for admissions re-
`sults in automatic admission of the matters re-
`quested. Fed.R.Civ.P._ 36(a); see also William
`W. Schwarzer et al., California Practice
`Guide: Federal Civil Procedure Before Trial
`‘][ 1122070. Although Echo Drain flied a mo-
`tion to set aside its admissions on July’ 7,
`2003, that motion was denied by Magistrate
`
`Echo Drain offered no expert reports or sur-
`veys to prove that the Echo Drain mark has
`secondary meaning.
`(UF. ‘][ 97.) In addition,
`there is no consumer testimony in this case to
`indicate that a significant portion of the gon-
`suming public associates the Echo Drain mark
`with the products or services offered by Echo
`Drain. ‘See, e;g'., Surgiceriters of Americaf Inc.
`v. Medical Dental Surgeries C02, 601' F.2d
`l0‘l1,'-1018 =n.23 [202 USPQ 401] (9th Cir?’
`1979); see also Yellow Cab Co. of Sacramento
`v. Yellow ‘Cab Co. of Elk ‘Grove, 266'
`F.Supp.2d 1199, 1206 (E.D. Cal. 2003)'(hold-
`ingthat “there is no genuine issue of material
`factremainingfor trial as to whether ‘yellow,
`cab’ has acquired a secondary meaning to the
`buying public_In the Sacramento area”). Be-.
`cause the Echo Drain mark is descriptive
`there is "no evidence that it has acquired a sec-
`ondary meaning, the_mark is not protectable
`and"the Courtgrants Defendants’ motion "for
`summary judgment.
`‘
`
`B. Even If.Ech0 Drain Could "Prove"
`That It "Has A Protectable
`A
`Trademark, No Reasonable. Jury
`Could Find A Likelihood Of Confu-
`szon.
`
`Although the Court granted summary judg-
`ment based on Echo Drain’s failure to present
`evidence that it has a protectable mark, the
`Court has nonetheless decided to indepen-
`dently consider the motion for summary judg-
`ment assuming that Echo Drain has a prote_ct-
`able mark. Unfortunately for Echo Drain, the
`result is the same because the Court concludes
`that summary judgment must still be granted
`on Echo Drain’s federal
`trademark infringe-
`ment claims because it cannot demonstrate,
`
`
`
`

`
`
`
`
`
`1208
`
`Echo Drain v. Newsted
`
`_
`
`_68- USPQ2d
`
`that a genuine issue of material'fact exists on
`the issue of likelihood of confusion.
`_
`'-
`'
`
`“The test for likelihood of confusion ;is_
`whether a reasonably prudent consumer in the:
`market place is likely_ to be_cor__1fuse_d
`to the
`origin of the good or “service bearing onegp_f=
`the marks." Dreamwerks Production Group...-
`Inc. v. SKG Studio; 142 F.3d 1127, 1129 [46
`USPQ2d 1561] (9th Cir. 1998) (internal quo-.
`tations omitted).
`In AMF Inc.
`'.v. Sleekcraft’
`
`Boats, 599 F.2d 341.1348-49'[204-USPQ 808-]
`(9th Cir. 1979),"the Ninth Circuit
`identified
`
`eight factors that should be considered in de-
`termining whether there is likelihood of”con-
`fusion:_ (1) the strength of -the mark; (2) the
`proximity or relatedness of the goods;'(3) the
`marks’ similarity in appearance, sound, and
`meaning; (4) evidence of actual confiision; (5,)
`the degree to which the parties’ ‘marketing
`channels converge; (6) the type, of‘ goods and",
`the degree of care customers are likely to.‘ ex-
`ercise in purchasing them; (7) evidence of the
`defendants’ intention in selecting and using:
`the‘ allegedly infringing name; and -(8)-the
`likelihood that
`the parties will expand their
`product lines, “This: list of factors, while per"-
`haps exhausting, is neither‘-‘exhaustive nor ex"--‘
`clusive. Rather,
`theefactors are intended to‘
`guide the court in assessing" the basic question‘
`of ‘likelihood of confusion. The presence o‘r1
`absence of [a particular factor doeslnot neces-
`sai'ydrive_ the determination ofialikelihood of
`confusion.” E & J Gallo Winery‘ vf Gallo
`Cattle Co., 967 F.2d 1280, 1290-91
`[21
`USPQ2d 1324] (9th Cir. 1992). During argu-
`ment, Echo Drain conceded that this is a" re-
`versevconfusion case? Three Sle_ekcraft fac-
`tors arelpivotal in reverse confusion cases: (1)
`the strength or arbitrariness of the mark; (2)
`the relatedness of the parties’ goods; and (3)
`the similarity of the-marks. Dreamwerks, 142
`F.3d at 1129.. As discussedtin detail ‘below, the.
`application of the Sleekcraft factors weighs
`against findingia likelihood of confusion, and
`the Court concludes that no reasonablejury
`could find 'a likelihood of conf1i1sion' in this
`Case.‘
`"
`'
`.
`. ..
`.
`
`1. Strength Of The Mark
`
`i
`la.” Conceptual ;Strengtlz .
`In a reverse 'g:o:'nfusioJri_pc'ase, the court evalu-
`ates the conceptual ’str'eng"th_.of the senior us-
`er’s mark and .the,commercial' strength, of the
`J’lmi°r.uS5r'5 m3rl<- -Gl'0W5i'252iF-.S..uPP-%d 937
`n.'fl_l2. The conceptual_strength‘;‘,pf a given
`markrests on its _distinctiveness. Miss (World
`(UK) Ltd. u Mrs. America Pdgpeants, Inc., 856
`F.2d 1445, 1448 ‘(9th Cii'.,;1_988)‘. AS discussed
`above; Echo Drain's adrnissions conclusively
`establish. thatthe Echo Drain mark is descrip-
`tive. Howeyerfeven without thoseiadmissions,
`Echo Draiifs mark yvouldiatirnost be sugges-
`tive.3 "A suggestive mark “conveys an lrnpres-'
`sion of a "good but requires": the e_xercise‘of
`some imagiiiationandperception to reacha
`conclusion as toijthe product's nature." Brook-
`field Communiciztiqns, 174 F.3d at 1058 ‘n. 19.
`It: is clear ,,fror'n[the _testimony of Echo Drain’s
`band" me__inbers'
`that,;_1‘vvith some imagination
`and perception, the 'vt”‘er'r’n_ Echo Drain conveys
`an impression of the type of _music the band‘
`performs. For example, Todd Vis_er_itine, a cur-
`rent member of Echo Drain testified that the
`name’ “Echo,Qr_ain’ffwas' intended to convey
`the fo_ll_owing__i_inage:" “[t]he_ image ofswirling‘
`soun_ds,’of‘echoing the variousistyles of music
`we create, and maybe a ‘drain that
`‘of
`pulls it all togethenas those ‘echoed sounds "our.
`influences, and draining it into"'water_, asfa‘
`band, 7 as a ‘whole,"" thatiwe‘ "represent-—'that
`those sounds represent the“‘defining theme", or
`the "Echo Drain name defines that particular
`art that we create.” (Exhj L tojlfiietrini Deal.)
`In addition, Echo l)rain’_s formeriband mem-‘
`ber‘, lnes lnfa’rite,‘,te_sti_'fie'd that the term _Echo
`Drain conveys the following 'hiean_ing:‘ “The
`meaning [is]. .
`.
`. basically the eternal sound‘
`of the’ drain and the‘ echo that woiild be con-
`tihuous." (Exh. K to'PietriniiDecl.) (ihftemal;
`quotations. o'mitted).”Because- the Echo 'Drain'
`marklhas an intrinsic connection with Echo
`Drain’s music, themark is suggestive at best.
`See Brookfield Communications, 174 F.3d at
`1053 n. 19 (hohhgtha: “[a]rbitrary o‘; fanciful
`marks “have no‘ intrinsic connection ’with the
`product with which the triarkis used:’).
`_
`
`2 The ‘Court also notes that Echo Drain's Opposition
`Brief only argues reverse confusion and does not argue
`forward confusion.
`4
`F‘
`
`the conceptual
`”Echo ljrairi "failed _to
`strength issue in its Opposition papers and ofiered no
`evidence that its mark is arbitrary or fanciful.
`
`

`
`1209
`V
`Echo Drain v. Nevvsted
`in~'a-' reverse confusion case; a court should
`“evaluate the strength of the junior user's
`mark""so"-as to gauge its ability to overpower
`the senior user's mark." 3 J. McCarthy, Mc-
`Carthy On Trademarks And Unfair Competi-
`tion § 23:-10; see also Glow, 252 F.Supp.2d at‘
`987' n.l12. In a reverse confusion case,
`the
`court considers two factors while analyzing
`commercial
`strength: “(1)
`the commercial
`strength of the junior user as compared to the
`senior user; and (2) "any advertising or market-
`ing campaign by the junior user that has re-
`sulted in a saturation in the public awareness
`of the junior user's mark." A & H Sportswear.’
`Inc. v. Victoria is Secret Stores, Inc., 237 F.3d
`198, 231‘[57 USPQ2d 1097] (3d Cir. 2000).
`Although ‘Echo Drain presented evidence that
`Defendants’ mark is commercially stronger,
`this does not end the analysis of this Sleek-
`craft factor because the Court must compare
`the commercial strength of the Defendant's
`mark with the conceptual strength of the Echo
`Drain mark.
`
`c. Comparing Commercial
`"Strength And Conceptual
`Strength
`The key question in reverse confusion cases
`is rwhetherconsumers who -encounter the se-
`nior ‘user's produ'cts_will believe that they are
`associated -with the junior“user. See Walter v.
`Mattel, Inc., 210 F.-3d 1108; 1110 [54 USPQ2d
`1501] '(9th Cir. 2000)." Because the Echo Drain
`mark is presumptively weak and there are nu-
`merous other music bands‘ in‘the market that
`use tlieword “echo," the strength of_the mark
`factor" "weighs In favor ‘of Defendants. ‘See
`Glo'w,"252 F.Supp.2d at 991-92 (holding that
`“while defendants” commercial strength is
`likelyvfto overwhelm plaintiff in the market-
`place to the extent thattheir products com-
`pete, the court concludes that Glow, Inc. will
`not likely be able to prove that the strength of
`the mark factor favors a finding of. likelihood
`of confusion because’ its own mark is concep-
`tually weakand -operates in a_ crowded field’).
`2. Proximity Or Relatedness Of The
`Goods
`“When two products or services fall within
`the same general field, it does not mean that
`the two products or services are sufficiently
`similar to create a likelihood of confusion."
`Harlem Wizards Entertainment Basketball
`
`[2] Although suggestive marks are protect-
`able, it is presumed thatthey areconceptually
`weak. Brookfield C0mmunicatioris,”174 F.3d
`at 1058 (noting that “’[w]e»have recognized
`that, unlike arbitrary or fanciful marks which
`are typically strong, suggestive marks" are pre-
`sumptively weak"): see also Acculride _Intern'.',‘
`Inc.
`v." Accuride Corp, 871 F.2d 1531, 1536
`«[10 USPQ2d 1589] (9th Cir. 1989) (“Arbi-
`trary and fanciful marks are strong, whi7'le"sug-
`gestive and descriptive marks are weak”). Be-
`cause the Echo Drain mark is suggestive,’ the
`mark is presumptively weak and Echo Drain
`should have anticipated‘ some confusion with
`legitimate competitors, such as Echobrain.
`Dreamwerks, 142 F.3d ‘at 1130 (noting that
`“[h]ad Dreamwerks chosen a descriptive
`mark, like Sci-Fi Conventions lnc., or a sug-
`gestive mark like Sci-Fi World, some confu-
`sion with legitimate competitors might be ex-
`pected”); see also Glow, 252 F.Supp.2d at
`987 (holding that becausethe Glow mark is
`suggestive, “Glow,
`lnc‘ .
`. .. cannot claim
`broad protection for its mark,