Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA1043816
`
`Filing date:
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`03/20/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`92065670
`
`Party
`
`Correspondence
`Address
`
`Submission
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`Filer's Name
`
`Filer's email
`
`Defendant
`Adrian Rivera
`
`SUDIP KUNDU
`KUNDU PLLC
`1300 I STREET NW, SUITE 400E
`WASHINGTON, DC 20005
`UNITED STATES
`E.sudip.kundu@kundupllc.com
`202-749-8374
`
`Other Motions/Papers
`
`Cassandra Mercer
`
`mercerc@lanepowell.com, davisk@lanepowell.com, trade-
`marks@lanepowell.com, garciat@lanepowell.com
`
`Signature
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`Date
`
`/Cassandra Mercer/
`
`03/20/2020
`
`Attachments
`
`TTAB - Rivera Status Report 2020.03.20.pdf(1073068 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`EKO BRANDS, LLC,
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`
`
`
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`ADRIAN RIVERA,
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`
`
`
`
`
`
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`Petitioner,
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`Registrant.
`
`
`
`v.
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`
`
`
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`Cancellation No. 92065670
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`ECOFILL
`
`Mark:
`4,239,190
`Reg. No.:
`Reg. Date: November 6, 2012
`
`ECO CARAFE
`
`Mark:
`4,796,840
`Reg. No.:
`Reg. Date: August 18, 2015
`
`
`
`
`
`
`
`
`Pursuant to the Board’s order issued February 20, 2020, in this cancellation proceeding,
`
`STATUS REPORT
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`Registrant Adrian Rivera provides this status update. As noted by Petitioner in its filing made on
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`March 12, 2020, as a result of a trial held in the United States District Court, Western District of
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`Washington at Seattle, between September 16-20, 2019 (Civil Action No. 17-cv-00894-TSZ), the
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`Court issued its Findings of Fact and Conclusions of Law (“Findings”) on January 31, 2020, a
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`copy of which is attached.
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`
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`For reasons known only to Petitioner, Petitioner neglected to notify the Board of the key
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`determination in the Court’s Findings as related to this proceeding: “Eko Brands’ request to
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`cancel the federal registrations for ECO FILL, ECO CARAFE, and ECO FILTER is
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`DENIED.” (See Findings of Fact and Conclusions of Law (ECF No. 149) ¶ 70.k. at 41 (attached
`
`as Exhibit 1.) While both parties have filed motions to amend the Court’s Findings, Petitioner
`
`does not put forward any reason why the Board should not be bound to the Court’s determination.
`
`DATED: March 20, 2020
`
`LANE POWELL PC
`
`By /Cassandra Mercer/
`Kenneth R. Davis II, OSB No. 971132
`Cassandra Mercer, OSB No. 141054
`Attorneys for Adrian Rivera
`
`
`
`STATUS REPORT - 1
`719141.0001/8014158.1
`
`LANE POWELL PC
`601 SW SECOND AVENUE, SUITE 2100
`PORTLAND, OREGON 97204-3158
`503.778.2100 FAX: 503.778.2200
`
`
`

`

`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a true copy of the foregoing STATUS REPORT was
`
`served upon Petitioner’s correspondent as listed with the U.S. Patent and Trademark Office:
`
`
`David A. Lowe
`Lowe Graham Jones PLLC
`701 Fifth Avenue, Suite 4800
`Seattle, WA 98104
`Lowe@LoweGrahamJones.com
`
`
`by e-mail on the 20th day of March, 2020.
`
`
`
`
`
`
`
`
`
`
`/Tangi T. Garcia
`Tangi T. Garcia
`
`
`
`STATUS REPORT - 2
`719141.0001/8014158.1
`
`
`
`LANE POWELL PC
`601 SW SECOND AVENUE, SUITE 2100
`PORTLAND, OREGON 97204-3158
`503.778.2100 FAX: 503.778.2200
`
`
`

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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 1 of 41
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`
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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`EKO BRANDS, LLC,
`
`
`
` v.
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`Plaintiff,
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`ADRIAN RIVERA MAYNEZ
`ENTERPRISES, INC.; and ADRIAN
`RIVERA,
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`
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`
`
`
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`Defendants.
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`C17-894 TSZ
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`FINDINGS OF FACT AND
`CONCLUSIONS OF LAW
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`
`THIS MATTER came on for trial on September 16, 2019, before the Court, sitting
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`with an advisory jury.1 Plaintiff Eko Brands, LLC was represented by David Lowe and
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`Lawrence Graham of Lowe Graham Jones PLLC. Defendants Adrian Rivera Maynez
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`Enterprises, Inc. and Adrian Rivera were represented by Kenneth R. Davis II of Lane
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`Powell PC. Trial proceeded for four days and ended on September 19, 2019, at which
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`
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`1 By Minute Order entered September 16, 2019, docket no. 119, the Court directed plaintiff to
`show cause why it should not be sanctioned for failing to make mandatory disclosures in
`discovery concerning the actual damages it sought in this action. In response, after the first day
`of trial, plaintiff withdrew its claim for actual damages, see Pla.’s Resp. at 4 (docket no. 120),
`leaving only plaintiff’s claims for equitable relief. Because a jury had already been impaneled,
`the Court decided to proceed under Federal Rule of Civil Procedure 39(c), and treat any verdict
`as advisory. The Court is “at liberty to accept or reject the advisory verdict.” Chicago & N.W.
`Ry. Co. v. Minn. Transfer Ry. Co., 371 F.2d 129, 130 (8th Cir. 1967); see Reachi v. Edmond, 277
`F.2d 850, 854 (9th Cir. 1960) (an advisory jury’s verdict is “not binding upon the trial court”).
`
`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 1
`
`Exhibit 1
`Page 1 of 41
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`

`

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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 2 of 41
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`1
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`time the advisory jury began deliberations. At the end of the day on September 20, 2019,
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`2
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`the advisory jury rendered a partial verdict, docket no. 136.
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`3
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`Having considered the advisory jury’s partial verdict, the testimony of the
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`4
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`witnesses,2 the exhibits admitted into evidence,3 the facts on which the parties have
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`5
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`agreed,4 and the oral and written arguments of counsel, including defendants’ motion for
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`6
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`judgment, docket no. 125, plaintiff’s response, docket no. 146, defendants’ reply in
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`support of their motion for judgment, docket no. 147, plaintiff’s proposed findings of fact
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`8
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`and conclusions of law, docket no. 144, defendants’ objections, docket no. 145, and
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`plaintiff’s response to such objections, docket no. 148, the Court now ENTERS these
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`10
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`Findings of Fact and Conclusions of Law pursuant to Federal Rule of Civil Procedure
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`11
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`52(a). Any conclusion of law misidentified as a finding of fact shall be deemed a
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`12
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`conclusion of law, and any finding of fact misidentified as a conclusion of law shall be
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`13
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`deemed a finding of fact.
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`14
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`
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`The Court TREATS defendants’ motion for judgment pursuant to Federal Rule
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`of Civil Procedure 50, docket no. 125, as a motion for judgment pursuant to Federal Rule
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`2 The following individuals testified at trial: Catherine Carr, Dino Ditta, Christopher Legler,
`Jim Peterson, Adrian Rivera, and Laura Sommers.
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`3 Plaintiff’s Exhibits 1-17, 19, 21, 23, 29-45, 47-51, 53-54, 57, 59-60, 63-64, 67-71, 74, 77-78,
`83-84, 89-95, 97-100, 102-120, 123-127, 130, 134-138, 141-142, 146-147, 149-156, 159-160,
`162, and 164-175, as well as defendants’ Exhibits 203, 206-207, 209, 225, 229, 231, 241-242,
`249-250, 255-260, 264-266, 273-275, 280, 288-293, 298, 300, 303-304, 309-310, 363-365, 367,
`369-370, 373-374, 381, 384-385, 387, 389, 392-393, 457-459, 461-462, 464, 466, 473, 479-480,
`498, 507-510, and 514, were admitted into evidence. Exhibits 176-178 and 511-512 were
`admitted for demonstrative purposes.
`
`4 See Pretrial Order at § D (docket nos. 105 & 106); Court’s Instruction No. 5 (docket no. 129).
`
`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 2
`
`Exhibit 1
`Page 2 of 41
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`

`

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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 3 of 41
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`1
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`of Civil Procedure 52(c). Defendants’ Rule 52(c) motion is GRANTED in part and
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`2
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`DENIED in part as indicated, and for the reasons set forth, in the following Findings of
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`3
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`Fact and Conclusions of Law.
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`Findings of Fact and Conclusions of Law
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`A.
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`Parties and Jurisdiction
`
`
`
`1.
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`Plaintiff Eko Brands, LLC (“Eko Brands”) is a Washington limited liability
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`company having a principal place of business in Woodinville, Washington.
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`
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`2.
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`Eko Brands is in the business of manufacturing and selling reusable
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`beverage cartridges that are commonly used with single-serve coffee makers, such as
`
`those sold under the Keurig® brand. Eko also sells paper filters and cleaning tablets to be
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`used in connection with the reusable beverage cartridges.
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`
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`3.
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`Eko Brands has received Certificates of Registration from the United States
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`Patent and Trademark Office (“PTO”) for the trademarks EKOBREW and the
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`design (collectively, the “EKOBREW Marks”). The Certificates of Registration, bearing
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`Registration Nos. 5,073,356 and 5,073,357, respectively, were issued on November 1,
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`2016, and they indicate that the EKOBREW Marks were first used on September 7, 2011,
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`in connection with reusable filters, not made of paper, for use in electric brewing
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`machines for beverages.
`
`
`
`4.
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`Defendant Adrian Rivera Maynez Enterprises, Inc. (“ARM”) is a Nevada
`
`corporation having a principal place of business in California.
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 3
`
`Exhibit 1
`Page 3 of 41
`
`

`

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`1
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`
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 4 of 41
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`5.
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`Defendant Adrian Rivera is the owner, founder, and president of ARM, and
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`2
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`resides in California.
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`3
`
`
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`6.
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`Defendants are in the business of manufacturing and selling reusable
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`4
`
`beverage cartridges that are commonly used with single-serve coffee makers, such as
`
`5
`
`those sold under the Keurig® brand.
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`6
`
`
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`7.
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`Rivera has received Certificates of Registration from the PTO for the
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`7
`
`trademarks ECO FILL, ECO CARAFE, ECO FILTER, PERFECT POD, and EZ-CUP.
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`8
`
`Certificate of Registration No. 4,239,190 for ECO FILL was issued on November 6,
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`9
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`2012, and indicates that ECO FILL was first used on September 7, 2012, in connection
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`10
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`with reusable single serving coffee filters, not made of paper, which are part of an electric
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`coffee maker. Certificate of Registration No. 4,796,840 for ECO CARAFE was issued
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`12
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`on August 18, 2015, and indicates that ECO CARAFE was first used on February 4,
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`13
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`2015, in connection with empty brewing cartridges for use in electric coffee machines.
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`14
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`Certificate of Registration No. 5,741,858 for ECO FILTER was issued on April 30, 2019,
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`15
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`and indicates that ECO FILTER was first used on August 31, 2017, in connection with
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`16
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`paper coffee filters.
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`17
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`8.
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`ARM began selling reusable beverage filter capsules under the mark
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`18
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`ECO-FLOW in January 2016. ARM began selling cleaning kits for reusable beverage
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`19
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`filter capsules under the mark ECO-PURE in 2018. On May 16, 2019, Mr. Rivera
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`20
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`applied to the PTO for registration of the marks ECOSAVE and the
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` design,
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`21
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`indicating that he and/or ARM intend to use the marks in connection with reusable filter
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`cartridges for use in electric coffee brewing machines.
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 4
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`Exhibit 1
`Page 4 of 41
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`1
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 5 of 41
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`9.
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`ARM’s sales of products under the marks ECO FILL, ECO CARAFE, and
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`2
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`ECO-FLOW between January 1, 2012, and July 31, 2019, totaled $17,952,815.00.
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`3
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`ARM’s sales of products under the marks ECO FILTER, ECO-PURE, and ECOSAVE
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`4
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`through July 31, 2019, totaled $170,995.00.
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`5
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`10.
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`Eko Brands brought suit against ARM under Sections 32 and 43 of the
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`6
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`7
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`Lanham Act, 15 U.S.C. §§ 1114 & 1125, alleging trademark infringement and unfair
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`competition in connection with ARM’s use of the marks ECO FILL, ECO CARAFE,
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`8
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`ECO-FLOW, ECO FILTER, ECO-PURE, and ECOSAVE. The Court concludes that
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`9
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`federal jurisdiction exists pursuant to 28 U.S.C. § 1338.
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`B.
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`Eko Brands’ Claims and Burdens of Proof
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`11.
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`In connection with the first claim of trademark infringement, Eko Brands
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`must prove each of the following elements by a preponderance of the evidence:
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`13
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`(i) EKOBREW is a valid, protectable trademark; (ii) Eko Brands owns EKOBREW as a
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`14
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`trademark; and (iii) on or after November 1, 2016, defendants used a mark similar to
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`15
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`EKOBREW without Eko Brands’ consent in a manner that was likely to cause confusion
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`16
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`among ordinary consumers as to the source, sponsorship, affiliation, or approval of the
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`goods. See 9th Cir. Model Instr. No. 15.6; Court’s Instruction No. 14 (docket no. 129).
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`12.
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`In connection with the second claim of unfair competition, Eko Brands
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`19
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`must prove each of the following elements by a preponderance of the evidence:
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`20
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`(i) EKOBREW was a valid, protectable trademark prior to when defendants first used
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`ECO FILL; (ii) Eko Brands owns EKOBREW as a trademark; and (iii) during the period
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`22
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`prior to November 1, 2016, defendants used a mark similar to EKOBREW without
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 5
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`Exhibit 1
`Page 5 of 41
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 6 of 41
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`1
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`Eko Brands’ consent in a manner that was likely to cause confusion among ordinary
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`2
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`consumers as to the source, sponsorship, affiliation, or approval of the goods. See
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`3
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`Court’s Instruction No. 15 (docket no. 129).
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`4
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`C.
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`Validity and Ownership of EKOBREW Marks
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`5
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`13.
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`To be valid and protectable, a trademark must be either: (i) inherently
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`distinctive; or (ii) descriptive with an acquired secondary meaning. See 9th Cir. Model
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`7
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`Instr. Nos. 15.10 & 15.11; Court’s Instruction No. 14B.
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`8
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`14.
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`Eko Brands contends that EKOBREW is a “suggestive” trademark and
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`therefore inherently distinctive. Defendants assert that EKOBREW is merely a
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`10
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`“descriptive” trademark that has not acquired any secondary meaning and, as a result, is
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`11
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`not valid or protectable. The advisory jury was asked whether the EKOBREW mark is
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`12
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`“suggestive” or “descriptive,” but it could not reach a unanimous verdict. See Verdict
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`13
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`(docket no. 136). The advisory jury, however, found that the EKOBREW mark had
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`14
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`acquired secondary meaning before defendants first began to use ECO FILL. Id.
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`15.
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`In determining whether a trademark has acquired a secondary meaning, the
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`following factors may be considered:
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`(1)
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`Consumer Perception. Whether people who purchase the
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`product that bears the trademark associate the trademark with plaintiff;
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`(2) Advertisement. To what degree and in what manner has
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`plaintiff advertised under the trademark;
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`(3) Demonstrated Utility. Whether plaintiff successfully used the
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`trademark to increase the sales of its product;
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 6
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`Exhibit 1
`Page 6 of 41
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 7 of 41
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`(4)
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`Extent of Use. The length of time and manner in which
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`plaintiff used the trademark;
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`(5)
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`Exclusivity. Whether plaintiff’s use of the trademark was
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`exclusive;
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`(6)
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`Copying. Whether defendants intentionally copied plaintiff’s
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`trademark; and
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`(7) Actual Confusion. Whether defendants’ use of plaintiff’s
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`trademark has led to actual confusion among a significant number of
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`consumers.
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`The presence or absence of any particular factor does not necessarily resolve whether a
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`trademark has acquired secondary meaning. A trademark does not need to be used for
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`any particular length of time to acquire a secondary meaning. See 9th Cir. Model Instr.
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`13
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`No. 15.11; Court’s Instruction No. 14B.
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`16. Regardless of whether the EKOBREW Marks are “suggestive” or
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`“descriptive,” they are valid and protectable because they acquired secondary meaning
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`before defendants began using ECO FILL in September 2012.
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`17. As early as June 2011, Eko Brands received purchase orders from Amazon
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`and J.C. Wright Sales Company (on behalf of QFC) for its EKOBREW reusable coffee
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`(or beverage) filters for Keurig® single cup brewers; product deliveries were scheduled
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`20
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`for mid July 2011. During the same timeframe, Eko Brands was marketing and selling its
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`EKOBREW filters on the Internet through its website www.ekobrew.com.
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 7
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`Exhibit 1
`Page 7 of 41
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`1
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 8 of 41
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`18. When EKOBREW reusable filters debuted in September 2011, they were
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`2
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`the #1 new release in the Amazon.com grocery category. In the spring of 2012, the
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`3
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`EKOBREW cartridge was among the five finalists for a Housewares Design Award. By
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`4
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`the end of 2012, Eko Brands had sold 262,994 cases of EKOBREW filters (12 per case),
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`5
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`generating just over $9.5 million in gross revenue. See Ex. 123 at EKOTM0254453; see
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`also Tr. (Sep. 18, 2019) at 355:10-356:12 (docket no. 140).
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`19. As of April 2013, Eko Brands used for its EKOBREW cartridges both
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`cylindrical and rectangular packaging, with clear portions through which the product can
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`be viewed. In late 2013 and early 2014, Eko Brands began extending its use of the
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`EKOBREW Marks to other items, namely paper filters and cleaning tablets. As of
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`April 2014, the top distributors or retailers of the EKOBREW “flagship” product were
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`Ahold, Amazon, Bed Bath & Beyond, KeHe Distributors, Safeway, and Walmart. By
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`the time Eko Brands was acquired in 2015 by Espresso Supply, Inc., approximately
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`14
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`10 million EKOBREW filters had been sold. In March 2016, Eko Brands introduced an
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`EKOBREW “carafe” reusable filter for multi-cup brewing in the Keurig® 2.0 machine.
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`20.
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`Eko Brands has several competitors in the reusable cartridge market,
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`including Keurig’s MY K-CUP, Solofill, Melitta’s JAVA JIG, and CAFÉ CUP. ARM is
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`the only company other than Eko Brands to use the EKO or ECO prefix in a trademark
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`associated with filters for Keurig® and similar brewing machines.
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`21. As of September 2012, when defendants began using ECO FILL, the
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`EKOBREW Marks were linked with the industry leader at the time, i.e., Eko Brands.
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`By then, the EKOBREW reusable filters had already gained recognition from the largest
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`
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 8
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`Exhibit 1
`Page 8 of 41
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 9 of 41
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`1
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`e-commerce company in the United States (Amazon) and the trade publication
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`2
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`(HomeWorld Business) that sponsors the annual Housewares Design Awards. Eko
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`3
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`Brands had devoted substantial resources to advertising under the EKOBREW Marks,
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`4
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`developing a website with the same name (www.ekobrew.com), attending trade shows,
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`5
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`6
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`7
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`and participating in social media. Before defendants started branding with ECO FILL,
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`the EKOBREW Marks had demonstrated their utility, being linked to a product that
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`almost doubled in sales from 2011 to 2012. During this same timeframe, no competitor
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`8
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`used a similar mark. The Court therefore ADOPTS the advisory jury’s verdict that the
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`9
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`EKOBREW Marks acquired secondary meaning before defendants first began to use
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`10
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`ECO FILL.
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`11
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`22. Although a close call, as indicated by the advisory jury’s inability to reach a
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`12
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`verdict, the EKOBREW Marks are suggestive and therefore inherently distinctive.
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`13
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`Whether a trademark is “suggestive” or “descriptive” must be determined with reference
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`14
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`to the goods that the trademark identifies. A trademark, however, need not recite in detail
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`15
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`each feature of the related goods to qualify as merely descriptive. To be descriptive, a
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`16
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`trademark only has to describe some aspect of the product. Two tests apply when
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`17
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`determining whether a trademark is “suggestive” or “descriptive,” namely (i) the
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`18
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`“imagination” test; and (ii) the “needs” test. The “imagination” test asks whether a
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`19
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`mental leap is required to reach a conclusion concerning the nature of the product being
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`20
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`referenced by the trademark. The question is not what information could be derived from
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`21
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`the trademark, but rather whether a mental leap is required to understand the trademark’s
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`22
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`relationship to the product. If a mental leap is required, then the trademark is suggestive.
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`23
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 9
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`Exhibit 1
`Page 9 of 41
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 10 of 41
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`If a mental leap is not required, then the trademark is descriptive. The “needs” test
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`2
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`focuses on the extent to which a trademark (or one of its components) is needed by
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`3
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`competitors to identify their goods. If competitors have a great need to use the
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`4
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`trademark, then the trademark is more likely to be descriptive. On the other hand, if the
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`5
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`6
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`7
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`relationship between the trademark and the product is so remote and subtle that the
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`trademark is not really needed by competitors to describe their goods, then the trademark
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`is more likely to be suggestive. See 9th Cir. Model Instr. Nos. 15.10 & 15.11; Court’s
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`8
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`Instruction No. 14B; see also Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d
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`9
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`1108, 1117 (9th Cir. 2010).
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`10
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`23.
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`The EKOBREW Marks were determined to be inherently distinctive by the
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`11
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`PTO; such finding was a prerequisite to the issuance of Certificates of Registration for
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`12
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`the EKOBREW Marks.5
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`13
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`24. When asked about ARM’s competing ECO FILL trademark, Rivera
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`14
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`testified that he believed the mark was distinctive and entitled to protection, and he
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`15
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`agreed that, likewise, EKOBREW “should be protected on its own.” Tr. (Sep. 17, 2019)
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`16
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`at 223:22 (docket no. 139). Rivera’s view is that EKOBREW and ECO FILL are both
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`17
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`protectable trademarks, but they are not similar and can co-exist. See id. at 223:22–
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`18
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`224:3.
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`20
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`21
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`22
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`23
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`5 Although Eko Brands was originally unsuccessful in securing registration of the EKOBREW
`Marks, the reason cited by the PTO was not lack of distinctiveness, but rather similarity to an
`already registered mark, namely ECO BREW, which is owned by Thomas Hammer Coffee
`Roasting, Inc. of Spokane, Washington, and used in connection with coffee beans. Eko Brands
`and Thomas Hammer Coffee Roasting, Inc. subsequently entered into a trademark coexistence
`agreement.
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 10
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`Exhibit 1
`Page 10 of 41
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`1
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 11 of 41
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`25. Both the PTO’s decision to permit registration of the EKOBREW Marks
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`2
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`and Rivera’s concession on the subject support a finding that the EKOBREW Marks are
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`3
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`valid. Moreover, both the “imagination” test and the “needs” test lead to the conclusion
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`4
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`that the EKOBREW Marks are “suggestive,” rather than merely “descriptive.” Although
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`5
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`the term ECO, or its phonetic equivalent EKO,6 in combination with BREW, connotes an
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`6
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`7
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`ecological or environmentally-friendly brewing solution, it does not itself describe the
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`approach embodied in the EKOBREW products. Rather, a “mental leap” is required to
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`8
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`understand that the device referenced by the EKOBREW Marks is a reusable filter or
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`9
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`cartridge for a single-serving beverage brewing machine. This conclusion is reinforced
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`10
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`by the absence of competitors other than ARM that use ECO or EKO, or BREW, as part
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`11
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`of their brand names. The lack of “need” demonstrated by this evidence tends to show
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`12
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`that EKOBREW is “suggestive,” rather than “descriptive.” The Court’s finding that
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`13
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`EKOBREW is “suggestive” and therefore inherently distinctive constitutes an alternative
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`14
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`basis for concluding that the EKOBREW Marks are valid and protectable.
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`6 Eko Brands contends that EKO is a fanciful or coined word entitled to be treated as “arbitrary”
`for the purpose of determining its inherent distinctiveness. Such argument runs contrary to the
`weight of authorities. See Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315,
`328 (1938) (observing that “the mark ‘Nu-Enamel’ is descriptive of a type of paint long familiar
`to manufacturers, with the addition of the adjective new, phonetically spelled or misspelled”);
`Unisplay S.A. v. Am. Elec. Sign Co., 28 U.S.P.Q.2d 1721 (E.D. Wash. 1993) (concluding that
`“Solar Glo,” which incorporated an incomplete form of “glow,” was descriptive and had no
`secondary meaning); In re Calphalon Corp., 122 U.S.P.Q.2d 1153 (T.T.A.B. 2017) (affirming
`the refusal to register SHARPIN, as being equivalent to “sharpen,” which was merely descriptive
`in connection with cutlery blocks containing built-in blade sharpeners).
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 11
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`Exhibit 1
`Page 11 of 41
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 12 of 41
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`26. Regardless of whether the EKOBREW Marks are “suggestive” or
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`2
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`“descriptive,” Eko Brands owned the EKOBREW Marks before defendants first began to
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`3
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`use ECO FILL. If the EKOBREW Marks are “suggestive,” then Eko Brands has the
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`4
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`burden of showing by a preponderance of the evidence that it used the EKOBREW
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`5
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`6
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`7
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`Marks for its products before defendants began to use ECO FILL to market their products
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`in the area where Eko Brands sells its product. On the other hand, if the EKOBREW
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`Marks are “descriptive,” then Eko Brands has the burden of showing by a preponderance
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`8
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`of the evidence that the EKOBREW Marks gained secondary meaning before defendants
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`9
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`first began to use ECO FILL. See 9th Cir. Model Instr. No. 15.13; Court’s Instruction
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`10
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`No. 14C. For the same reasons outlined with respect to the validity of the EKOBREW
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`Marks, the Court ADOPTS the advisory jury’s verdict that Eko Brands has made the
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`requisite showing of ownership of the EKOBREW Marks.
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`D.
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`Likelihood of Confusion
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`27. Defendants’ use of their “ECO” trademarks is likely to cause confusion
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`about the source of Eko Brands’ and/or ARM’s goods. In connection with its first claim
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`of trademark infringement occurring on or after November 1, 2016, Eko Brands
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`challenges the following ARM trademarks: ECO FILL, ECO CARAFE, ECO-FLOW,
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`ECO FILTER, ECOSAVE, and ECO-PURE. With respect to its second claim of unfair
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`competition occurring before November 1, 2016, Eko Brands contends that the following
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`ARM trademarks were infringing: ECO FILL, ECO CARAFE, and ECO-FLOW.
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`28. ARM first generated revenue in November 2012 from use of the ECO FILL
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`mark. ARM began deriving income in connection with the ECO CARAFE mark in 2015,
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 12
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`Exhibit 1
`Page 12 of 41
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 13 of 41
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`the ECO-FLOW mark in 2017, and the ECO FILTER, ECOSAVE, and ECO-PURE
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`2
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`marks in 2019. See Exs. 274 & 473.
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`3
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`29.
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`Like Eko Brands, ARM maintains a website (www.perfectpod.com)
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`through which it markets and sells its products. ARM also has a presence on Amazon
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`and on social media, and has participated in the same trade shows (within the same
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`exhibition space) as Eko Brands. ARM distributes its products through “big-box”
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`retailers like Target and Bed Bath & Beyond, as well as through “regional chains” like
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`Meijer, but not within grocery stores, like Safeway, which is among Eko Brands’ top
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`9
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`customers for EKOBREW products. Tr. (Sep. 18, 2019) at 423:22-424:5 (docket
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`10
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`no. 140); Exs. 149 & 167. ARM had a relationship with Walmart until late 2012 or early
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`11
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`2013, when Eko Brands secured a contract with the retailer and ARM lost the account.
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`Id. at 425:10-20. Eko Brands’ EKOBREW filters and ARM’s ECO FILL capsules are
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`13
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`priced within the same range ($5 to $12), and they are considered “impulse” buys as to
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`which purchasers perform little to no advance research.
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`15
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`30.
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`In comparing the accused trademarks with the EKOBREW Marks to
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`16
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`determine whether a likelihood of confusion exists, the Court has considered, as it must,
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`each mark as a whole, and not merely a component of the marks, and the Court has
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`18
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`applied the non-exhaustive Sleekcraft factors, which are as follows: (1) strength or
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`weakness of the marks; (2) proximity of the goods; (3) similarity of the marks; (4) actual
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`confusion; (5) marketing channels used; (6) consumer’s degree of care; (7) defendants’
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`intent; and (8) likelihood of product line expansion. The Court has been mindful that the
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`22
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`presence or absence of any particular factor does not necessarily resolve the question of
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`23
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 13
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`Exhibit 1
`Page 13 of 41
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 14 of 41
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`whether confusion is likely. See 9th Cir. Model Instr. No. 15.18; Court’s Instruction
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`2
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`No. 14D; see also AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).
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`3
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`31. Although the marks at issue are fairly weak,7 a finding of infringement is
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`nevertheless supported by the proximity of the goods with which they are associated (i.e.,
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`6
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`7
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`direct competitors), the similarity of the marks (containing an aurally-identical prefix),
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`and the overlap in marketing channels within which the products are advertised and travel
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`(namely, e-commerce and certain brick-and-mortar retailers). See Sleekcraft, 599 F.2d at
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`8
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`350 (observing that “[a]lthough appellant’s mark is protectible and may have been
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`9
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`strengthened by advertising, it is a weak mark entitled to a restricted range of protection”
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`10
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`and “only if the marks are quite similar, and the goods closely related, will infringement
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`11
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`be found” (citations omitted)). In addition, the inexpensive nature of the products and the
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`12
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`resultant lack of caution exercised by consumers, as well as both Eko Brands’ and
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`13
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`ARM’s efforts to expand the use of their respective marks to complementary products,
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`14
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`like paper filters and cleaning materials, weigh in favor of finding some likelihood of
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`15
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`confusion.8 Finally, defendants’ intent to exploit Eko Brands’ success by adopting a
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`7 A strong mark is one that is arbitrary or fanciful, while a descriptive mark is much weaker and
`will not enjoy protection absent proof of secondary meaning; a suggestive mark falls somewhere
`in the middle. See Sleekcraft, 599 F.2d at 349. On the continuum of types of trademarks, both
`EKOBREW and ECO FILL are close to the boundary of descriptiveness, and neither mark is
`entitled to the “wide ambit” of protection afforded to arbitrary or fanciful marks. See id.
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`8 At trial, Eko Brands presented no evidence of any surveys or litigation studies done to assess
`whether confusion is likely or actually exists. Eko Brands offered only anecdotal evidence of a
`few instances of confusion, one involving an individual, Rabbi Zev Schwartz, who bought a
`machine manufactured by one of Keurig’s competitors (OXX) and inquired of an Eko Brands’
`customer service agent whether ARM’s ECO FILL cartridge would work in his device, another
`in which representatives from Bonavita (which makes automatic coffee brewers) and a Chinese
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`FINDINGS OF FACT AND CONCLUSIONS OF LAW - 14
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`Exhibit 1
`Page 14 of 41
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`Case 2:17-cv-00894-TSZ Document 149 Filed 01/31/20 Page 15 of 41
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`1
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`visually and aurally similar mark, as will be discussed in further detail in the subsequent
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`2
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`section, further persuades the Court that the advisory jury reached the correct result, and
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`3
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`its verdict that a likelihood of confusion exists between the EKOBREW Marks and each
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`4
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`of ARM’s marks, namely ECO FILL, ECO CARAFE, ECO-FLOW, ECO FILTER,
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`5
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`ECOSAVE, and ECO-PURE, is ADOPTED.
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`6
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`E. Willfulness
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`7
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`32.
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`To be entitled to the disgorgement of defendants’ profits, Eko Brands must
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`8
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`prove by a preponderance of the evidence that defendants’ infringement was willful.
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`9
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`Court’s Instruction No. 18; see 15 U.S.C. § 1117(a); see also Stone Creek, Inc.