See Fed.R.Civ.P. "Marks are often classified in categories of generally increasing distinctiveness; they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." In a trademark infringement action, Plaintiff bears the burden of establishing that the defendant use of the same or similar mark is likely to cause confusion based upon consideration of the factors set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 448-49 (9th Cir. Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. (Entered: 02/19/2009), CLERKS NOTICE Case Management Conference set for 2/18/2009 02:45 PM. at 24:9-14.) The next factor concerns the proximity or relatedness of the good or services represented by the potentially infringing mark. Id. ORDER by Judge Saundra Brown Armstrong GRANTING 35 Ex Parte Motion to Move the Hearing Date for Defendant's Motion for Summary Judgment and Setting Hearing on Motion For Summary Judgment to 1/12/2010 at 01:00 PM. Case Referred to Magistrate Judge for MANDATORY SETTLEMENT CONFERENCE to be held between 01/13/10 ant 01/22/10; Case Referred to Mediation. In the instant case, the "Sand Hill Mark" was never registered by Plaintiff, and as such, no presumption of secondary use could have arisen, even if Plaintiff now could show retrospectively that it meets the requirements of section 2(f). The Ninth Circuit has established eight factors that are relevant to this determination: (1) the strength of the plaintiff's mark; (2) proximity of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods or services and the degree of care likely to be used by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. Rather, the relevant inquiry is whether, upon consideration of all terms comprising a composite mark, "the term is being used geographically." Signed by Mediator, James Gilliland, dated 5/19/2009. Filing 1 MOTION for a Protective Order - filed by Yida Gao, Sand Hill Advisors PR LLC, Shima Capital Management LLC. (Entered: 12/15/2008), CLERK'S NOTICE of Impending Reassignment to U.S. District Judge. (Davidson Reply Decl. Listed below are those cases in which this Featured Case is cited. (Entered: 12/28/2009), *** FILED IN ERROR. 0 C-07-02258 RMW, 2008 WL 4542803 at *2 (N.D. Cal. Alternatively, the Court concluded that even if 2(f) were germane, Plaintiff had failed to demonstrate the requisite five years of exclusive and continuous use. In addition, Defendant ignores the evidence proffered by Plaintiff, and cited by the Magistrate, that Plaintiff desired to protect the goodwill that it believed it had established by operating under the Sand Hill Advisors name. "Convergent marketing channels increase the likelihood of confusion." See Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1197 (9th Cir. Shortly thereafter on November 17, 2008, Plaintiff sought to register "Sand Hill Advisors" as a service mark with the United States Patent and Trademark Office ("PTO"). See Aromatique, 28 F.3d at 870. %%EOF Docketof Court Order Continuing CMC; Filed by: Yida Gao (Plaintiff); As to: Adam B. (lrc, COURT STAFF) (Filed on 1/25/2010) Modified on 1/26/2010 (jlm, COURT STAFF). v. Joseph Rubin et al. Of Vill. (Entered: 01/28/2009), ORDER by Judge Saundra Brown Armstrong GRANTING 11 Motion for, CASE MANAGEMENT SCHEDULING ORDER FOR REASSIGNED CIVIL CASES: Case Management Conference set for 2/12/2009 02:45 PM. However, the Ninth Circuit has recognized that a mark need not precisely describe the services provided in order to be descriptive. Modified on 11/23/2009 (jlm, COURT STAFF). That section states, in relevant part, as follows: "The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made." Co., Inc. v. Enco Mfg. SAND HILL ADVISORS LLC v. SAND HILL ADVISORS LLC Ex. Sleekcraft, 599 F.2d at 353. DocketStatus Conference re: Arbitration scheduled for 08/29/2023 at 08:30 AM in Santa Monica Courthouse at Department R, DocketPursuant to the request of plaintiff, Status Conference re: Arbitration scheduled for 10/04/2022 at 08:30 AM in Santa Monica Courthouse at Department R Held - Continued was rescheduled to 08/29/2023 08:30 AM, DocketMinute Order (Status Conference re: Arbitration), DocketUpdated -- Declaration Of Frank D. Rorie JR. 636(b)(1)(B), (C); Fed.R.Civ.P. Plaintiff, Sand Hill Advisors LLC, a Delaware limited liability company, filed the instant service mark infringement action under the Lanham Act seeking to prevent Defendant, Sand Hill Advisors LLC, a California limited liability company, from continuing to use the mark "Sand Hill Advisors." 1986). J. at 131:9-10; Davidson Decl. Japan Telecom, 287 F.3d at 871; see also Comm. at 68:25-69:25; 79:1-12.) Commack Self-Service Kosher Meats, Inc. v. Hooker, Cunney v. Bd. 07:04. In its motion, Defendant contends that Plaintiff cannot demonstrate that "Sand Hill Advisors" is a protectable mark or that Defendant's use of the mark is likely to confuse the public. 0000002396 00000 n These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia. A subscription to PACER is required. Def. See Japan Telecom, Inc. v. Japan Telecom Am. A.) IN SUPPORT OF MOTION TO COMPEL ARBITRATION to Of Frank D. Rorie JR. A subscription to PACER is required. *** Declaration of Rachel R. Davidson in Support of 47 Reply Memorandum filed by Sand Hill Advisors LLC. Brenda Vingiello is a Chief Investment Officer at Sand Hill Global Advisors based in Palo Alto, California. (Opp'n at 13.) 31 0 obj<>stream The top five bank holding companies have combined total consumer loan portfolios of more than $1.8 trillion as of December 31, 2022. Of Grand View, 84 Video/newsstand, Inc. v. Thomas Sartini. ***Civil Case Terminated. As noted, a descriptive mark cannot be registered with the PTO absent a showing of secondary meaning. Feb 28, 2023 CNBC Halftime Report: Rising Interest Rates on Valuation Multiples | February 10, 2023 The central bank's instant payment system could bring enormous benefits to banks and their customers. Please take note that plaintiff's counsel initiates the call to all parties. (McCaffrey Depo. 0000004838 00000 n (Entered: 12/23/2009), RESPONSE to re 45 Objection to Evidence filed by Sand Hill Advisors LLC. Plaintiff's assertion that the parties overlap in the area of real estate services paints with too broad a brush. Here, after considering each of the Sleekcraft factors, the Court concluded that while Plaintiff and Defendant share the same mark, they offer completely distinct services to distinct consumers in separate markets, and there was but a paucity of evidence of actual confusion. at 24:9-11. WebREPORT AND RECOMMENDATIONS re 61 MOTION for Attorney Fees filed by Sand Hill Advisors LLC Objections to R&R due by 6/15/2010. This factor is not centered on a prospective customer or client's purchase decision, but rather, whether he or she is sufficiently sophisticated to discern the difference between the parties, notwithstanding their use of an identical or confusingly similar mark. (Opp'n at 16.). 0000001817 00000 n Signed by Judge ARMSTRONG on 1/5/09. Defendant contends that Plaintiff's clients and those individuals likely to do business with Defendant are sophisticated, and hence, are unlikely to be confused. Plaintiff is a self-styled "wealth management" firm currently located in Menlo Park, California. After Defendant announced plans to open a shopping center in downtown Los Angeles under the name "The Collection," plaintiff filed suit for federal service mark infringement. Struck (Defendant); Struck Capital Management, LLC (Defendant); Struck Capital Fund GP LLC (Defendant) et al. Sand Hill Advisors LLC v. Sand Hill Advisors LLC, Filing A claim is unreasonable or groundless for purposes of a permissible award of fees only if it is frivolous and fails to raise colorable or debatable issues. Ex. Entrepreneur Media, 279 F.3d at 1144. at 1218-19. 2009) (internal quotation marks and citation omitted) (emphasis added). 0 (Opp'n at 14.) Mark H. Epstein in Department R Santa Monica Courthouse, Notice of Case Management Conference; Filed by: Clerk. To establish service mark infringement under the Lanham Act, the plaintiff must show that (1) it has a valid, protectable mark, and (2) defendant's use of the mark is likely to cause confusion. 85. Sand Hill Global Advisors takes out PPP (Martin, James) (Filed on 1/22/2010) Modified on 1/25/2010 (jlm, COURT STAFF). Others say he should have named names. Plaintiff surmises that Mr. Hill was not being truthful and posits that he must have known about Plaintiff when he was securing Defendant's domain name. Given that Plaintiff and Defendant used the same mark in the same general geographical area, Plaintiff's position that the parties' simultaneous use of the SAND HILL ADVISORS mark was likely to cause confusion was certainly arguable. (Id.). Plaintiff attempted to register its new name with the California Secretary of State, but was informed that Defendant had previously registered the name with the State in 1999. 2548, 91 L.Ed.2d 265 (1986). Signed by Judge ARMSTRONG on 9/16/10. (Opp'n at 25.) Alliance for Open Soc. 15 U.S.C. Co., 704 F.2d 1575, 1577 (Fed.Cir.1983) (common use of "DRC" mark not likely to cause confusion where products were "quite distinct"). Messrs. Sandell and Hill selected the name "Sand Hill" by combining the first four letters of Mr. Sandell's last name with Mr. Hill's last name. VS ADAM B. "A geographically descriptive term or phrase is one that designates geographical location and would tend to be regarded by buyers as descriptive of the geographic location or origin of the goods or services." Plaintiff is a so-called "wealth management" firm that caters to high net worth individuals. And the best part of all, documents in their CrowdSourced Library are FREE! Sciences v. eBay, Inc., 511 F.3d 966, 969 (9th Cir.2007). Cir.2009). We lived in that area. The Rodeo Collection court held that under both tests, the mark "Rodeo Collection," and the component term "Collection" were "more than merely descriptive as used to identify a shopping center." Lahoti, 586 F.3d at 1197. The greater the similarity between the two marks at issue, the greater the likelihood of confusion. 's Opp'n to Def. 72-3. "The Legislative History of the Lanham Act points out that where a logical connection can be made between the product and the geographical term, the term is geographically descriptive" Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes, Inc., 871 F.2d 590, 595 (6th Cir.1989); e.g., In re Wada, 194 F.3d 1297, 1299-1300 (Fed.Cir.1999) (affirming PTO ruling that "New York Ways Gallery" was primarily geographically descriptive because "NEW YORK is not an obscure geographical term and that it is known as a place where the goods at issue here are designed, manufactured, and sold."). 1052(f) (emphasis added). Art Attacks Ink, LLC, 581 F.3d at 1146 (affirming summary judgment for alleged infringer where plaintiff failed to produce any evidence to demonstrate that its advertising was effective). The parties are presently before the Court on Defendant's Motion for Summary Judgment. Plaintiff provides no analysis or legal authority for its position. (lrc, COURT STAFF) (Filed on 1/26/2010) Modified on 1/27/2010 (jlm, COURT STAFF). 's Mot. In that case, plaintiff Instant Media alleged that its trademark "I'M" was infringed by defendant Microsoft's use of the mark "i'm." AMENDED ORDER re 91 Order. 2505. (Mot. 2753, 120 L.Ed.2d 615 (1992). Struck (Defendant); As to: Yida Gao (Plaintiff); Sand Hill Advisors, LLC (Plaintiff); Shima Capitol LLC, a Delaware Limited Liability Company (Cross-Defendant) et al. ORDER REFERRING MOTION re 61 Motion for Attorney Fees. As the Magistrate correctly found, Mr. Conway merely stated that he recalled having raised the issue of seeking trademark protection with co-founder Jane Williams and the company's outside counsel. (Miller, Katherine) (Filed on 1/28/2009) Modified on 1/29/2009 (jlm, COURT STAFF). WebGet free access to the complete judgment in SAND HILL ADVISORS LLC v. SAND HILL ADVISORS LLC on CaseMine. 578, 581-82 (S.D.N.Y.1972) addressed the issue of "use" to determine which party could establish priority to claim ownership of the mark. 57. The Court found that 2(f) was inapplicable because the mark was unregistered. xb```f``Zuxb 1}rx@Rl3g3%WvU3_eXM?dKn ti edPF ) X& b`l y6%I*'.&h,(a`H31Hu@ 2d (Martin, James) (Filed on 12/11/2009) Modified on 12/14/2009 (jlm, COURT STAFF). WebSAND HILL ADVISORS, LLC, a Delaware limited liability company, Plaintiff, vs. Defendant now moves this Court for a de novo determination of the Magistrate's recommendation, and requests that the Court grant its motion for attorneys' fees. The similarity of the marks, proximity of the goods or service and marketing channels used constitute "the controlling troika in the Sleekcraft analysis," GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir.2000), and are considered the most important, see Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1055 n. 16 (9th Cir.1999). The lack of overlap is underscored by the paucity of evidence of actual confusion, which consists of nothing more than a few misplaced calls and a misdelivered package over the course of the last ten years. "In determining whether a mark has obtained secondary meaning, courts consider: (1) whether actual purchasers of the product bearing the mark associate the mark with the producer; (2) the degree and manner of advertising under the mark; (3) the length and manner of use of the mark; and (4) whether use of the mark has been exclusive." (Related document(s) 48 ) (Davidson, Rachel) (Filed on 12/28/2009) Modified on 12/30/2009 (jlm, COURT STAFF). 84. Applied Info. (Entered: 01/05/2009), ORDER REASSIGNING CASE. 3Wrv]*\nwNN!4N%tN)NNNN9)%-cDE)7(/-3d=:tK~iE)f}[email protected] rZ aEnQ;!