Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA350298
`ESTTA Tracking number:
`06/01/2010
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91189063
`Plaintiff
`JIPC Management, Inc.
`STEVEN E. KLEIN
`STOEL RIVES LLP
`900 SW FIFTH AVENUE, SUITE 2600
`PORTLAND, OR 97204
`UNITED STATES
`seklein@stoel.com, rcfoster@stoel.com, tm-pdx@stoel.com
`Response to Board Order/Inquiry
`Steven E. Klein
`seklein@stoel.com, tm-pdx@stoel.com
`/Steven E. Klein/
`06/01/2010
`JIPC Report.pdf ( 100 pages )(2344438 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91189063
`Application No. 77/442,151
`Published on September 2, 2008
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`For the mark AMERICA'S INCREDIBLE
`PIZZAZ.COM GREAT FOOD, FUN,
`FAMILY, & FRIENDS (and Design)
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`))
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`))
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`))
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`JIPC Management, Inc.,
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`Opposer,
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`v.
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`Incredible Pizza Co. Inc.,
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`Applicant.
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`REPORT ON STATUS OF CIVIL ACTION
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`Pursuant to the Board’s May 6, 2010 Order, Opposer JIPC Management, Inc. (“JIPC”)
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`submits this report on the current status of the civil action captioned JIPC Management, Inc. v.
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`Incredible Pizza Co., Inc., Case No. 08cv004310 (CBM), currently pending the United States
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`District Court for the Central District of California (the “Civil Action”).
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`There has been no final, non-appealable disposition of the Civil Action.
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`On June 29, 2009, the District Court granted partial summary judgment in JIPC’s favor
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`on Defendants Incredible Pizza Co., Inc. and Incredible Pizza Franchise Group, LLC’s
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`(collectively, “IPC”) second, third, fourth, and fifth counterclaims and, in addition, found as
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`established for purposes of trial that pursuant to a March 31, 1999 assignment agreement,
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`trademark rights in “John’s Incredible Pizza Co.” had been validly assigned to JIPC and that
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`JIPC had standing to assert those rights. A true and correct copy of the District Court’s June 29,
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`1
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`

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`2009 Opinion and Order is attached hereto as Exhibit A.
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`On June 24, 2009, the District Court entered partial summary judgment in IPC’s favor on
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`IPC’s sixth counterclaim, finding that JIPC did not have rights in the phrase “Incredible Pizza
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`Co.” as a stand-alone mark independent of its rights in the phrase “John’s Incredible Pizza Co.”
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`A true and correct copy of the District Court’s June 24, 2009, Opinion and Order is attached
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`hereto as Exhibit B.1
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`On January 22, 2010, the District Court entered a Final Pretrial Order that governs the
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`trial of the remaining claims in the Civil Action. A true and correct copy of the Final Pretrial
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`Order is attached hereto as Exhibit C. The Final Pretrial Order provides for the bifurcation of
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`certain issues as follows: In the first phase, “all issues as to Plaintiff’s claims for infringement
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`and damages and Counterclaim One [declaratory judgment of non-infringement] are triable to a
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`jury.” Ex. C at 38. In the second phase, “all issues as to Defendants’ affirmative defenses of
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`unclean hands and trademark misuse and the parties’ claims for attorney’s fees and Plaintiff’s
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`request for an enhancement of damages pursuant to 15 U.S.C. § 1117 are matters for the Court’s
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`determination after a trial on the merits.” Id. at 39.
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`The first phase of trial began on March 16, 2010. On March 30, 2010, the jury returned a
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`verdict in JIPC’s favor. See March 30, 2010 Civil Minutes, a true and correct copy of which is
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`attached hereto as Exhibit D.
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`1 In the June 24, 2009 Order the District Court also found as established for purposes of
`trial certain facts regarding whether the use or reputation of JIPC’s marks had extended into
`certain mid-western and southern states where IPC had been operating restaurants. These
`findings have no relevance to the matters in issue in this Opposition as the opposed application
`contains no geographic limitation.
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`2
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`

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`There is currently pending before the District Court a motion by IPC pursuant to Rule
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`50(b) for judgment as a matter of law limited to the issue of whether a reasonable jury would
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`have had a legally sufficient evidentiary basis to find for JIPC on the issue of damages.
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`The District Court has yet to schedule the second phase of trial and the parties currently
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`disagree about what affirmative defenses, if any, remain to be tried in the second phase and what
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`additional relief, injunctive or otherwise, JIPC is entitled to. In addition, no final judgment has
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`been entered by the District Court.
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`In accordance with the Board’s Order, dated May 5, 2009, JIPC will notify the Board of
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`the final disposition of the Civil Action within twenty days thereafter.
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`Dated: June 1, 2010
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`Respectfully submitted,
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`/s Steven E. Klein/_____________________
`Steven E. Klein
`STOEL RIVES LLP
`900 SW Fifth Avenue, Suite 2600
`Portland, Oregon 97204-1268
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`Attorneys for Opposer
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`3
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`

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`CERTIFICATE OF SERVICE
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`I hereby certify that I served the foregoing REPORT ON STATUS OF
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`CIVIL ACTION on the following named person on the date indicated below by:
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`Y mailing with postage prepaid
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`˚ hand delivery
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`˚ facsimile transmission
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`˚ overnight delivery
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`˚ e-mail attachment in PDF format
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`to said person a true copy thereof, contained in a sealed envelope, addressed to said person at
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`his last-known address indicated below.
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`Glenn Spenser Bacal
`David M. Andersen
`Bacal Law Group
`6991 East Camelback Road, Suite D-102
`Scottsdale, Arizona 85251
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`DATED: June 1, 2010.
`
`STOEL RIVES LLP
`
`/s Steven E Klein/
`Steven E. Klein
`Email: seklein@stoel.com
`900 SW Fifth Avenue, Suite 2600
`Portland, OR 97204
`Telephone: (503) 224-3380
`Facsimile:
`(503) 220-2480
`
`4
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`

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`Exhibit A
`Exhibit A
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`

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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 1 of 17
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`CASE NO. CV 08-04310 MMM (PLAx)
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`ORDER GRANTING IN PART AND
`DENYING IN PART PLAINTIFF’S
`MOTION FOR PARTIAL SUMMARY
`JUDGMENT
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`)))))))))))))
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`JIPC MANAGEMENT, INC.,
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` Plaintiff,
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`vs.
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`INCREDIBLE PIZZA CO., INC.;
`INCREDIBLE PIZZA FRANCHISE
`GROUP, LLC; and CJM RACING, LLC,
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` Defendants.
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`
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`Plaintiff JIPC Management, Inc. (“JIPC”) filed this trademark infringement and unfair
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`competition action against defendants Incredible Pizza Co., Inc. Incredible Pizza Franchise Group,
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`LLC (“IPFG”), and CJM Racing, LLC on June 30, 2008.1 JIPC licenses and manages restaurants
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`in California under the name “John’s Incredible Pizza Co.” The restaurants offer all-you-can-eat
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`pizza buffets in an entertainment complex featuring theme rooms, video games, miniature golf,
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`and bumper cars. IPC and IPFG license and manage similar all-you can eat pizza restaurants and
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`entertainment complexes in other parts of the United States.
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`JIPC asserts that defendants’ recent use of the name “Incredible Pizza Company” in
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`1CJM was subsequently dismissed as a defendant.
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 2 of 17
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`California infringes its rights in the marks “Incredible Pizza Co.” and “John’s Incredible Pizza
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`Co.”
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`I. FACTUAL BACKGROUND
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`A.
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`Undisputed Facts
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`JIPC is in the business of licensing and managing restaurants under the name “John’s
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`Incredible Pizza Co.” The restaurants offer all-you-can-eat buffets of pizza, pasta, salad, and
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`desserts, in an entertainment complex featuring theme rooms, video games, redemption games,
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`miniature golf, bumper cars, and go-karts.2 John Parlet is JIPC’s founder, president and CEO.3
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`The first John’s Incredible Pizza Co. store opened in Victorville, California in September 1997.4
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`It was owned and operated by John’s Incredible Pizza Co., Inc. (“JIPC, Inc.”), a California
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`corporation formed by Parlet on June 3, 1997.5 On May 11, 1998, Parlet formed JIPC for the
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`purpose of controlling the “John’s Incredible Pizza Co.” brand’s intellectual property and serving
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`as managing entity for the stores.6 Since that time, JIPC has continuously managed each of the
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`John’s Incredible Pizza Co. stores from the date the store opened to the present, under agreements
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`with the entities that own the stores.7 JIPC, Inc. remains the owner of the Victorville store, but
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`manages the store pursuant to an agreement with JIPC, Inc.8 Since 2003, Parlets’ former wife,
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`2Plaintiff’s Statement of Uncontroverted Facts and Conclusions of Law in Support of
`Motion for Partial Summary Judgment (“Pl.’s Facts”), ¶¶ 1-2; Defendants’ Statement of Genuine
`Issues of Material Fact in Support of Opposition to Plaintiff’s Motion for Partial Summary
`Judgment (“Def.’s Facts”), ¶¶ 1-2.
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`3Pl.’s Facts, ¶ 4; Def.’s Facts, ¶ 4.
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`4Pl.’s Facts, ¶ 9; Def.’s Facts, ¶ 9.
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`5Pl.’s Facts, ¶ 13; Def.’s Facts, ¶ 13.
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`6Pl.’s Facts, ¶ 15; Def.’s Facts, ¶ 15.
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`7Pl.’s Facts, ¶ 17.
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`8Pl.’s Facts, ¶ 22.
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 3 of 17
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`Betty Parlet, has owned JIPC, Inc.9 There are currently eight John’s Incredible Pizza Co. stores
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`operating in California.10 JIPC has obtained federal registration for its “John’s Incredible Pizza
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`Co.” mark and “John’s Incredible Pizza Co. All You Can Eat Food & Fun” mark and design.11
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`B.
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`Procedural Background
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`JIPC filed its complaint on June 30, 2008, and sought a preliminary injunction on July 7,
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`2008. The court declined to enter an injunction on August 26, 2008. Defendants filed a motion
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`for summary judgment on April 27, 2009. JIPC filed a motion for summary judgment on May
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`12, 2009. This order addresses JIPC’s motion.
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`JIPC seeks partial summary judgment in the form of a declaration that it is the owner of
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`the mark “John’s Incredible Pizza,” and has standing to assert claims based on that mark.12
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`Defendants counter that JIPC, Inc., not JIPC, is the owner of the marks. JIPC also seeks
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`summary judgment on defendants’ second, third, fourth, and fifth counterclaims. Defendants’
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`second and third counterclaims seek cancellation of JIPC’s registration of the “John’s Incredible
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`Pizza Co. All You Can Eat Food & Fun!” mark and design (registration nos. 3,099,682 and
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`3,061,612). Their fourth and fifth counterclaims seek cancellation of JIPC’s registration of the
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`“John’s Incredible Pizza Co.” mark (registration nos. 3,058,427 and 3,025,377). The
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`counterclaims allege that in the applications for registration of the marks, Parlet falsely claimed
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`9Pl.’s Facts, ¶ 21; Def.’s Facts, ¶ 21.
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`10Pl.’s Facts, ¶ 6; Def.’s Facts, ¶ 6. These stores are located in Victorville, California
`(opened September 1997); Bakersfield, California (opened November 1998); Fresno, California
`(opened June 2000); Stockton, California (opened August 2002); Modesto, California (opened
`July 2003); Montclair, California (opened January 2005); Roseville, California (opened March
`2007); and Riverside, California (opened October 2007). (Id.)
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`11Pl.’s Facts, ¶ 8.
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`12JIPC also seeks a declaration that it is the owner of the “Incredible Pizza Co” mark and
`has standing to assert claims based on that mark. This aspect of JIPC’s motion must be denied
`given the court’s determination, in its order on defendants’ summary judgment motion, that JIPC
`has adduced no evidence that it ever used the mark “Incredible Pizza Co.” standing alone, and
`thus has no rights in the mark independent of its rights in “John’s Incredible Pizza Co.”
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 4 of 17
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`that JIPC was their owner. As noted, defendants contend that JIPC, Inc., not JIPC, is the owner
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`of the marks and seek cancellation based on fraud. Finally, JIPC argues that it is entitled to
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`summary judgment on defendants’ claim that the case is “exceptional” and that they are entitled
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`to attorneys’ fees under 15 U.S.C. § 1117(a).
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`A.
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`Standard Governing Motions for Summary Judgment
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`II. DISCUSSION
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`A motion for summary judgment must be granted when “the pleadings, depositions,
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`answers to interrogatories, and admissions on file, together with the affidavits, if any, show that
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`there is no genuine issue as to any material fact and that the moving party is entitled to a judgment
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`as a matter of law.” FED.R.CIV.PROC. 56(c). A party seeking summary judgment bears the
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`initial burden of informing the court of the basis for its motion and identifying those portions of
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`the pleadings and discovery responses that demonstrate the absence of a genuine issue of material
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`fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Where the moving party will have
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`the burden of proof on an issue at trial, the movant must affirmatively demonstrate that no
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`reasonable trier of fact could find other than for the moving party. On an issue as to which the
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`nonmoving party will have the burden of proof, however, the movant can prevail merely by
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`pointing out that there is an absence of evidence to support the nonmoving party’s case. See id.
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`If the moving party meets its initial burden, the nonmoving party must set forth, by affidavit or
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`as otherwise provided in Rule 56, “specific facts showing that there is a genuine issue for trial.”
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986); FED.R.CIV.PROC. 56(e).
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`Conclusory, speculative testimony in affidavits or moving papers is insufficient to meet this
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`burden, or raise genuine issues of fact defeating summary judgment. See Nelson v. Pima
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`Community College, 83 F.3d 1075, 1081-82 (9th Cir. 1996) (“mere allegation and speculation do
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`not create a factual dispute for purposes of summary judgment”); Thornhill Pub. Co., Inc. v. GTE
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`Corp., 594 F.2d 730, 738 (9th Cir. 1979).
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`“It is well settled that only admissible evidence may be considered by the trial court in
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`ruling on a motion for summary judgment.” Beyene v. Coleman Sec. Serv., Inc., 854 F.2d 1179,
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 5 of 17
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`1181 (9th Cir. 1988). “At the summary judgment stage,” however, courts “do not focus on the
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`admissibility of the evidence’s form. [They] instead focus on the admissibility of its contents.”
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`Fraser v. Goodale, 342 F.3d 1032, 1036 (9th Cir. 2003) (citing Block v. City of Los Angeles, 253
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`F.3d 410, 418-19 (9th Cir. 2001), and Fed. Deposit Ins. Corp. v. N.H. Ins. Co., 953 F.2d 478,
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`485 (9th Cir. 1991)); see Cutrona v. Sun Health Corp., No. CV 06-2184-PHX-MHM, 2008 WL
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`4446710, *7 (D. Ariz. Sept. 30, 2008) (on summary judgment, “hearsay is admissible if there is
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`any way to present it in an admissible form at trial”); see also Rowell v. BellSouth Corp., 433
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`F.3d 794, 800 (11th Cir. 2005) (“On motions for summary judgment, we may consider only that
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`evidence which can be reduced to an admissible form”).
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`In judging the evidence presented in support of or opposition to summary judgment, the
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`court does not make credibility determinations or weigh conflicting evidence. Rather, it draws
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`all inferences in the light most favorable to the nonmoving party. See T.W. Electric Service, Inc.
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`v. Pacific Electric Contractors Ass’n, 809 F.2d 626, 630-31 (9th Cir. 1987).
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`Rule 56(d) governs situations in which a party moves for summary judgment on less than
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`all of a claim. It provides:
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`“If summary judgment is not rendered on the whole action, the court should, to the
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`extent practicable, determine what material facts are not genuinely at issue. The
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`court should so determine by examining the pleadings and evidence before it and
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`by interrogating the attorneys. It should then issue an order specifying what facts
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`– including items of damages or other relief – are not genuinely at issue. The facts
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`so specified must be treated as established in the action.” FED.R.CIV.PROC. 56(d).
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`See also id., FED.R.CIV.PROC. 56(a) (“A party claiming relief may move, with or without
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`supporting affidavits, for summary judgment on all or part of the claim” (emphasis added)); see
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`also Harris Technical Sales, Inc. v. Eagle Test Systems, Inc., No. 06-02471-PHX-RCB, 2008 WL
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`343260, *10 (D. Ariz. Feb. 5, 2008) (noting that “Rule 56 authorizes a summary adjudication that
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`will often fall short of a final determination, even of a single claim . . .”). “As the Advisory
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`Committee Notes to the 1946 amendment to Rule 56 observe: ‘The partial summary judgment is
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`merely a pretrial adjudication that certain issues shall be deemed established for the trial of the
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 6 of 17
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`case. This adjudication . . . serves the purpose of speeding up litigation by eliminating before
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`trial matters wherein there is no genuine issue of fact.’” Rotorex Co., Inc. v. Kingsbury Corp.,
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`42 F.Supp.2d 563, 570-71 (D. Md. 1999) (quoting Advisory Committee Notes).
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`B.
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`Standard Governing Motions for Summary Judgment Involving Contract
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`Interpretation
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`In general “summary judgment is appropriate [in contract interpretation cases] only if the
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`contract or the contract provision in question is unambiguous.” See Northwest Acceptance Corp.
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`v. Lynnwood Equipment, Inc., 841 F.2d 918, 920 (9th Cir. 1988) (quoting National Union Fire
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`Ins. Co. v. Argonaut Ins. Co., 701 F.2d 95, 97 (9th Cir. 1983) (quoting Castaneda v. Dura-Vent
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`Corp., 648 F.2d 612, 619 (9th Cir. 1981)). The rationale for this rule is that “ambiguity in a
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`contract raises a question of intent, which is a question of fact precluding summary judgment.”
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`National Union, 701 F.2d at 97. “The usual statement of the rule, however, assumes that there
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`is at least some evidentiary support for competing interpretations of the contract’s language.” Id.
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`Where there is no evidentiary support for the interpretation urged by a party, summary judgment
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`against that party is appropriate, even if the contract is ambiguous on its face. Id. (“National
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`cannot rely on the mere possibility of a factual dispute as to intent to avert summary judgment.
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`Nor can it expect the district court to draw inferences favorable to it when they are wholly
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`unsupported. National failed to raise a genuine issue of material fact as to the contract’s proper
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`interpretation. Summary judgment was appropriate”); see Compagnie Financiere de CIC et de
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`L'Union Europeenne v. Merrill Lynch, Pierce, Fenner & Smith Inc., 232 F.3d 153, 159 (2d Cir.
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`2000) (“This Court may resolve the ambiguity in the contractual language as a matter of law if
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`there is no extrinsic evidence to support one party’s interpretation of the ambiguous language or
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`if the extrinsic evidence is so[ ] one[-]sided that no reasonable factfinder could decide contrary
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`to one party’s interpretation”); 3Com Corp. v. Banco do Brasil, S.A., 171 F.3d 739, 746-47 (2d
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`Cir. 1999) (“As with any other factual issue, however, the court may resolve ambiguity in
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`contractual language as a matter ‘of law’ if ‘the evidence presented about the parties’ intended
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`meaning [is] so one-sided that no reasonable person could decide the contrary,’” quoting Boston
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`Five Cents Sav. Bank v. Sec'y of Dep't of Hous. & Urban Dev., 768 F.2d 5, 8 (1st Cir. 1985)
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 7 of 17
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`(alteration original)); Unicom Systems, Inc. v. Electronic Data Systems, Corp., No. CV 04-6716
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`AHM (RZx), 2005 WL 5801534, *8 (C.D. Cal. Nov. 1, 2005) (“Where a party presents no
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`evidence in support of its contract interpretation, summary judgment is appropriate”); see also
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`Ferguson v. Lion Holding, Inc., 478 F.Supp.2d 455, 468 (S.D.N.Y. 2007) (“In rare instances,
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`summary judgment will be appropriate where there exists a contractual ambiguity, yet the relevant
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`extrinsic evidence is so one-sided as to compel a finding as a matter of law,” citing Compagnie
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`Financiere, 232 F.3d at 159); Joseph M. Perillo, CALAMARI & PERILLO ON CONTRACTS § 3.15,
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`at 164 (5th ed. 2003) (“Where . . . extrinsic evidence is introduced in aid of interpretation of a
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`writing, the question of meaning is left to the jury except where, after taking the extrinsic
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`evidence into account, the meaning is so clear that . . . the question is treated as one of law”
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`(footnotes omitted)). As the Ninth Circuit has explained:
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`“If we find a contract to be ambiguous, we ‘ordinarily’ are hesitant to grant
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`summary judgment ‘because differing views of the intent of parties will raise
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`genuine issues of material fact.’ Maffei v. Northern Ins. Co., 12 F.3d 892, 898
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`(9th Cir.1993). This circuit has not, however, adopted a rigid rule prohibiting
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`reference to extrinsic evidence in resolving a contractual ambiguity on a summary
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`judgment motion. See, e.g., International Bhd. of Elec. Workers Local 47 v.
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`Southern Cal. Edison Co., 880 F.2d 104, 107 (9th Cir.1989) (examining parol
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`evidence on summary judgment motion in effort to reconcile conflicting contract
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`provisions). Rather, ‘[c]onstruing all evidence in the light most favorable to, and
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`making all reasonable inferences in favor of, the non-moving party,’ we have
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`sought to determine whether the ambiguity could be resolved in a manner consistent
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`with the non-moving party’s claim. Id. Only if the ambiguity could be so resolved
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`would summary judgment be denied. Id.” San Diego Gas & Elec. Co. v.
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`Canadian Hunter Marketing Ltd., 132 F.3d 1303, 1307 (9th Cir. 1997).
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`C. Whether There is a Triable Issue of Fact Regarding the Meaning of the
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`Assignment Agreement Between JIPC, Inc. & JIPC
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`The issues on which JIPC seeks summary judgment turn on whether JIPC or JIPC, Inc.
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 8 of 17
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`is the owner of the trademarks in question. It is undisputed that JIPC, Inc. used the name “John’s
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`Incredible Pizza Co.” before JIPC. JIPC argues, however, that JIPC, Inc. transferred all rights
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`in “John’s Incredible Pizza Co.,” including all trademark rights, on March 31, 1999.13 JIPC and
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`JIPC, Inc. executed two contracts on that date. In the first, denominated a “Trademark
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`Assignment Agreement,” JIPC, Inc. assigned to JIPC “all of [the] right, title, and interest in and
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`to the Tradename [‘John’s Incredible Pizza Co.’], including all goodwill associated therewith, free
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`from any notice or claim asserted or threatened by any third party due to the infringement of any
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`trade name, trademark, service mark, copyright, or license of any person or organization.”14 In
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`the second, captioned a “Tradename License Agreement,” JIPC licensed all rights to the
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`“tradename” back to JIPC, Inc.15 Parlet signed both contracts on behalf of JIPC and JIPC, Inc.
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`JIPC contends that Parlet’s “intent and understanding” in signing the assignment agreement
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`for JIPC and JIPC, Inc. was that it “transferred rights to both the John’s Incredible Pizza Co.
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`name and mark.”16 JIPC proffers Parlet’s declaration, in which he states that “[o]n March 31,
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`1999, JIPC, Inc. transferred to JIPC by written assignment all right, title, and interest in the
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`John’s Incredible Pizza Co. name, including all trademark rights in the name.”17 JIPC contends
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`that the language of the license agreement confirms the term “tradename,” as used in the
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`assignment agreement, includes trademark rights.18 It notes that the license agreement provides
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`that the “[l]icensee will not commence the use of the Tradename until it has taken all actions and
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`obtained all registrations in the Territory which are required of trademark and service mark
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`13Pl.’s Facts, ¶ 23.
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`14Declaration of Betty Parlet in Support of Motion for Partial Summary Judgment (“B.
`Parlet Decl.”), Exh. 1.
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`15Id., Exh. 2.
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`16Memorandum in Support of Motion for Partial Summary Judgment (“Mot.”) at 4.
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`17Declaration of John Parlet (“Parlet Decl.”), ¶ 18.
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`18Mot. at 10.
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 9 of 17
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`licensees and trademark and service mark users.”19 JIPC asserts that its practice of licensing
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`trademark rights to subsequent stores confirms the parties’ understanding that the assignment
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`included trademark rights.
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`Defendants counter that trade name and trademark are distinct concepts. They assert that
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`the March 31, 1999 assignment agreement transferred rights only to the trade name “John’s
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`Incredible Pizza Co.” and did not assign any trademark rights. They also contend that the
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`agreement is not reasonably susceptible to the interpretation Parlet puts on it.20
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`Defendants are correct that trade names and trademarks are “technically distinct.” See
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`Accuride Intern., Inc. v. Accuride Corp., 871 F.2d 1531, 1534 (9th Cir. 1989). “Trade names
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`symbolize the reputation of a business as a whole. In contrast, trademarks and service marks are
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`designed to identify and distinguish a company’s goods and services.” Id. (citing New West Corp.
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`v. NYM Co., 595 F.2d 1194, 1201 (9th Cir. 1979)).21 “As a practical matter, courts are rarely
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`called upon to distinguish between trade names, trademarks and service marks. Trade names
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`often function as trademarks or service marks as well.” Id. “The major legal distinction between
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`trademarks and trade names is that trade names cannot be registered and are therefore not
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`protected under 15 U.S.C. § 1114.” Id. (citing Safeway Stores, Inc. v. Safeway Discount Drugs,
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`Inc., 675 F.2d 1160, 1163 (11th Cir. 1982)). Analogous actions for trade name infringement may
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`be brought under section 43(a) of the Lanham Act, however. Id. (citing New West, 595 F.2d at
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`1198-1201, and Walt-West Enterprises, Inc. v. Gannett Co., 695 F.2d 1050, 1054 n. 6 (7th Cir.
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`1982)).
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`19B. Parlet Decl., Exh. 2.
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`20Opp. at 9.
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`21The Lanham Act defines a trade name as “any name used by a person to identify his or
`her business or vocation.” 15 U.S.C. § 1127. A trademark includes “any word, name, symbol,
`or device, or any combination thereof – (1) used by a person, or (2) which a person has a bona
`fide intention to use in commerce and applies to register on the principal register established by
`this chapter, to identify and distinguish his or her goods, including a unique product, from those
`manufactured or sold by others and to indicate the source of the goods, even if that source is
`unknown.” Id.
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 10 of 17
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`The assignment agreement states that it is governed by California law.22 “Under California
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`law, the fundamental goal of contract interpretation is to give effect to the mutual intent of the
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`parties as it existed at the time of contracting.” U.S. Cellular Inv. Co. v. GTE Mobilnet, Inc.,
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`281 F.3d 929, 934 (9th Cir. 2002) (citing CAL. CIV. CODE § 1636, and City of Atascadero v.
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`Merrill Lynch, Pierce, Fenner & Smith, Inc., 68 Cal.App.4th 445, 474 (1998)). “When a
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`contract is reduced to writing, this intent ‘is to be ascertained from the writing alone, if
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`possible.’” Id. (citing CAL. CIV. CODE § 1639, and Brinton v. Bankers Pension Servs., Inc., 76
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`Cal.App.4th 550, 559 (1999)).
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`Because the words of a written instrument “often lack a clear meaning apart from the
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`context in which the words were written,” however, “courts may preliminarily consider any
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`extrinsic evidence offered by the parties.” Miller v. Glenn Miller Productions, Inc., 454 F.3d
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`975, 989-90 (9th Cir. 2006). “‘The test of admissibility of extrinsic evidence to explain the
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`meaning of a written instrument is not whether it appears to the court to be plain and unambiguous
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`on its face, but whether the offered evidence is relevant to prove a meaning to which the language
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`of the instrument is reasonably susceptible.’” Id. at 989 (quoting Pacific Gas and Electric Co.
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`v. G.W. Thomas Drayage & Rigging Co., 69 Cal.2d 33, 37 (1968), and citing United States v.
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`King Features Entertainment, Inc., 843 F.2d 394, 398 (9th Cir. 1988)). “‘If the court decides,
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`after consideration of this evidence, that the language of a contract, in the light of all the
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`circumstances, is “fairly susceptible of either one of the two interpretations contended for,”
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`extrinsic evidence relevant to prove either of such meanings is admissible.’” Id. at 990 (quoting
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`Pacific Gas, 69 Cal.2d at 38-40, and citing U.S. Cellular Invest. Co., 281 F.3d at 939).
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`“Extrinsic evidence includes testimony regarding the circumstances in which a contract was
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`written, the subsequent conduct of the parties, and the common usage of particular terms in a
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`given industry.” Id. (citing Pacific Gas, 69 Cal.2d at 38-39; U.S. Cellular Invest. Co., 281 F.3d
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`at 937, and United Cal. Bank v. THC Financial Corp., 557 F.2d 1351, 1360 (9th Cir. 1977)).
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`As noted, the March 1999 “Tradename Assignment Agreement” conveyed to JIPC “all of
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`22B. Parlet Decl., Exh. 1.
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009 Page 11 of 17
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`[the] right, title, and interest in and to the Tradename, including all goodwill associated therewith,
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`free from any notice or claim asserted or threatened by any third party due to the infringement of
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`any trade name, trademark, service mark, copyright, or license of any person or organization.”23
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`The contract did not explicitly convey rights in the John’s Incredible Pizza Co. trademark to JIPC.
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`The term “name,” however, is incorporated in the Lanham Act’s definition of a trademark. See
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`15 U.S.C. § 1127. Moreover, the agreement refers both to a specific “Tradename” and non-
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`specific “trade name” in a single clause, suggesting that the two terms have a different meaning.
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`Because the agreement is ambiguous on its face and reasonably susceptible to multiple
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`interpretations, the court will consider extrinsic evidence regarding JIPC, Inc.’s and JIPC’s intent
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`at the time they executed the agreement.24
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`One type of extrinsic evidence that is relevant in interpreting the assignment agreement is
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`the “Tradename License Agreement” the parties executed contemporaneously. “‘Where two or
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`more written instruments are executed contemporaneously, with reference to each other, for the
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`purpose of attaining a preconceived object, they must all be construed together, and effect given
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`if possible to the purpose intended to be accomplished.’” Harm v. Frasher, 181 Cal.App.2d 405,
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`412-13 (1960) (quoting Burnett v. Piercy, 149 Cal. 178, 189 (1906) (emphasis original in Frasher);
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`see also CAL. CIV. CODE § 1642 (“Several contracts relating to the same matters, between the same
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`parties, and made as parts of substantially one transaction, are to be taken together”); Deluca v.
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`Massachusetts Mut. Life Ins. Co., CV 05-0632 OWW DLB, 2005 WL 1562033, *6 (E.D. Cal.
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`June 28, 2005) (“‘The general principle of joint consideration of several instruments as one
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`23Id.
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`24Cf. Miller, 454 F.3d at 990 (“The 1956 license agreement conveyed to GMP ‘the right
`and license to use the name and likeness of Glenn Miller . . . in connection with the business
`activities of [GMP].’ The license agreement does not explicitly convey to GMP either the right
`to license any existing Glenn Miller trademark or Glenn Miller’s publicity rights, or both.
`However, the terms ‘name’ and/or ‘likeness’ are found in both the Lanham Act definition of a
`trademark and in the definitions of California’s statutory and common law rights to publicity.
`Because the 1956 agreement is ambiguous on its face and is reasonably susceptible to multiple
`interpretations, extrinsic evidence is admissible to prove the parties’ intent when they executed
`the agreement,” citing Pacific Gas, 69 Cal.2d at 38-40).
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`Case 2:08-cv-04310-MMM-PLA Document 226 Filed 06/29/2009