macy's v. strategic marks, llc, 3-2011-cv-06198 (n.d. cal.) (strategic marks' brief in opposition to...

7/29/2019 Macy's v. Strategic Marks, LLC, 3-2011-CV-06198 (N.D. Cal.) (Strategic Marks' brief in opposition to Macy's' motio

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DEFENDANT STRATEGIC MARKS LLCS OPPOSITION TO PLAINTIFFS MACYS, INC. AND

MACYS.COM, INC.S MOTION FOR PARTIAL SUMMARY JUDGMENT

Case No. 3:11-cv-06198-SC

KB ASH LAW GROUP

5674 Sonoma Drive, Suite A

Pleasanton, CA 94566

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BENJAMIN ASHUROV (SBN# 271716)[email protected] ASH Law Group


Pleasanton, CA 94566Telephone: (415) 754-9346

Facsimile: (925) 734-8125

Attorneys for Defendant

STRATEGIC MARKS, LLC

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

SAN FRANCISCO DIVISION

MACYS INC and MACYS.COM, INC.,

Plaintiffs,

v.

STRATEGIC MARKS, LLC,

Defendant.

CASE NO. 3:11-cv-06198-SC

DEFENDANT STRATEGIC MARKS

LLCS OPPOSITION TO

PLAINTIFFS MACYS, INC. AND

MACYS.COM, INC.S MOTION

FOR PARTIAL SUMMARY

JUDGMENT

STRATEGIC MARKS, LLC,

Counter-Claimant,

v.

MACYS INC and MACYS.COM, INC.,

Counter-Defendants.

Date: March 15, 2013

Time: 10:00 a.m.

Courtroom: 1

THE HONORABLE SAMUEL CONTI

Case3:11-cv-06198-SC Document66 Filed02/16/13 Page1 of 15


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TABLE OF CONTENTS

I. INTRODUCTION AND SUMMARY OF ARGUMENT...ivII. RELEVANT FACTS...................................................................................................................vIII. ARGUMENT ...1A. Summary Judgment Is Disfavored In Trademark Cases ................... ..1

B. Genuine Triable Issues Of Fact Exist Concerning The Definition Of

The Identified Services ....2

1. On-Line Retail Services Means Providing A Virtual Destination WhereinItems Are Sold In Small Quantities To Ultimate Consumers Over The Internet...... 3

C. Genuine Triable Issues Of Fact Exist Concerning STRATEGICMARKSUse in Commerce Of The Registered Marks When The Statements OF Use Were

Submitted To the USPTO .... ...3

1. Totality Of Circumstances Control Use In Commerce DeterminationsAnd Sales Are Not Required .4

2. The Totality Of The Circumstances Suggest STRATEGIC MARKSRendered On-line Retail Store Services.5

D. Genuine Triable Issues of Fact Exist Concerning Whether Registered Marks Met The

Affixation Requirement of the Lanham Act. ...6

1. MACYS Presents No Probative Evidence To Rebut the Presumption of

Validity .....6

2. The Evidence Supports A Finding That The Registered Marks Are

Sufficiently Affixed To The Services Top Obtain Lanham Act Protection .7

IV. CONCLUSION.. .8



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TABLE OF AUTHORITIES

Cases

Adidas America, Inc. v. Payless Shoesource, Inc.,546. F. Supp. 2d 1029, 1044 (D. Or. 2008).... 5

In re Ancor Holdings, LLC,79 U.S.P.Q.2d 1218, 2006 WL 1258813 (T.T.A.B. 2006) 12, 13.

Aycock Engineering, Inc. v. Airflite, Inc.,

560 F. 3d 1350, 1356 (Fed. Cir. 2009) 7

Chance v. Pac-Tel Teletrac, Inc.,

242 F. 3d 1151 (9th

Cir. 2001) 9

Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc.,

618 F.3d 1025, 1029 (9th Cir. 2010) 5

In re Walker Research, Inc.,

228 USPQ 691, 692 (TTAB 1986) 12

Interstellar Starship Servs., Ltd. V. Epix Inc.,

184 F. 3d 1107, 1109 (9th

Cir. 2010) 5

Rearden LLC v. Rearden Commerce, Inc.,

683 F. 3d 1190, 1205 (9th

Cir. 2012) 5, 6, 9

Witco Chemical Corp. v. U.S.,742 F. 2d 615 (Fed Cir. 1984) 8

Statutes

Section 45 of the Lanham Act (15 U.S.C 1127) Passim

Rules

Fed. R. Civ. P. 56 5

Other Authorities

McCarthy on Trademarks and Unfair Competition, 16:33

(4th

ed. 2012) 12



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I. INTRODUCTION AND SUMMARY OF ARGUMENTIn furtherance of its vision of bringing a new type of virtual shopping experience to consumers,

defendant Strategic Marks, LLC (STRATEGIC MARKS) created and opened a collection of virtual

stores housed within its virtual mall entitled Retro Department Stores. Like physical malls, this

virtual mall contains individual stores which provide retail store service under their respective store

names, i.e., service marks. After STRATEGIC MARKS submitted trademark applications covering

each of the individual store names within the mall, the USPTO issued registrations for three (3) of the

stores: THE BROADWAY, U.S. Reg. No. 4,099,878; THE BON MARCHE, U.S. Reg. No. 4,136,284;

and ROBINSONS, U.S. Reg. No. 4,165,969 (collectively the Registered Marks).

While STRATEGIC MARKS trademark applications were pending, plaintiffs Macys, Inc.

and Macys.com, Inc. (collectively MACYS) initiated this trademark infringement lawsuit against

STRATEGIC MARKS. In response, STRATEGIC MARKS asserted counterclaims for, inter alia,

infringing STRATEGIC MARKS Registered Marks. MACYS now moves for partial summary

judgment asking this Court to summarily order the cancellation of the Registered Marks in order to

defeat some of STRATEGIC MARKS counterclaims. MACYS bases its motion on its allegation that

STRATEGIC MARKS did not make use in commerce ofthe Registered Marks as required for

federal registration of a service mark under the Lanham Act. The Registered Marks are presumed

valid, and so MACYSbears the burden of (i) producing sufficient evidence in its motion to overcome

that burden, and then (ii) establishing that STRATEGIC MARKS will be unable to produce any

evidence during trial from which a jury could draw a fair inference that STRATEGIC MARKS made

use in commerce of the Registered Marks in connection with even one of the services recited in the

statements of use (Identified Services) submitted during the prosecution of the Registered Marks.

MACYS does not meet its burden. Instead, MACYS disingenuously mischaracterizes the

case law which interprets the phrase use in commerce, ignores salient evidence, and relies (without

analysis or support) upon a purely conclusory assertion that the Registered Marks were not properly

affixed as service marks. More importantly, MACYS arguments are built upon a false premise:

MACYS has provided no authority to support the purported definition of the Identified Services that



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it seeks to impose upon this Court. The precise scope and nature of the Identified Services for the

Registered Marks have not yet been determined, and MACYS has made no effort whatsoever to

provide this Court with sufficient facts, authority, or analysis to support such a determination.

Accordingly, summary judgment should be denied. This opposition is accompanied by the declarations

of Ellia Kassoff (Kassoff Decl.) and Benjamin Ashurov (Ashurov Decl.)

II. RELEVANT FACTSIn order to position itself to render services using the Registered Marks, STRATEGIC MARKS

retained purchased domain names (Kassoff Decl. Ex. A)1, and retained a web developerto construct

the on-line stores along with a virtual mall to house the stores (Kassoff Decl. Ex. B)2. This

construction involved first building a webpage representing the virtual exterior of the mall (Kassoff

Decl. Ex. C)3. , and then constructing the interior infrastructure of the mall wherein virtual main

entrances bearing the names of each on-line store were seen. (Kassoff Decl. Ex. D)4. Finally, the web

developer was tasked with constructing store interiors containing virtual shelves for merchandise and

virtual cashiers to enable shoppers to purchase the merchandise. (Kassoff Decl. Ex. E.)5.

Well before submitting the statements of use for the Registered Marks, STRATEGIC MARKS

retained vendor PinPoint Associates (PinPoint) to provide STRATEGIC MARKS virtual stores

with wholesale merchandise (Kassoff Decl. Ex. F)6. To further develop its merchandise selection,

STRATEGIC MARKS employed the services of Helen Horwich as Merchandising Manager (Ashurov

Decl. Ex. 1)7. To help market and promote the stores, STRATEGIC MARKS engaged the services of

Tricia Buenvenida to as Vice President of Marketing (Ashurov Decl. Ex. 2)8.

1 Exhibit A is a printout of the domain name purchase receipt. (Kassoff Decl. Ex. A).2 Exhibit B is a copy of the invoice provided by the web developer. (Kassoff Decl. Ex. B).3 Exhibit C is screen capture showing the webpage representing the exterior of the virtual mall (Kassoff Decl. Ex. C).4 Exhibit D is a screen capture showing the webpage representing the inside of the virtual mall wherein the virtual front

entrances to the individual stores are seen. (Kassoff Decl. Ex. D).5 Exhibit E is a screen capture showing the webpages representing the inside of each virtual store wherein merchandise may

be browsed and purchased, and designs of the initial merchandise. (Kassoff Decl. Ex. E).6 Exhibit F shows invoices establishing an ongoing relationship between Strategic Marks and Pinpoint (Kassoff Decl. Ex.

F).7Exhibit 1 is an excerpt from the Kassoff Deposition referencing Ms. Horwichs role as Merchandising Manager for

STRATEGIC MARKS. (Ashurov Decl. Ex. 1 at 2:8-9).8 Exhibit 2 is an excerpt from the Buenvenida Deposition showing her role as VP of Marketing for STRATEGIC MARKS.

(Ashurov Decl. Ex. 2 at 2:22-25).



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On or about February 2011, once the virtual stores were built, merchandise had been obtained,

and key personnel retained, STRATEGIC MARKS opened the doors to its on-line retail stores and

offered its merchandise for sale within each store. (Ashurov Decl. Ex. 3)9. Thereafter, STRATEGIC

MARKS continuously promoted the services of its various virtual stores through various channels,

including social media, press releases in traditional media, and trade shows. (Kassoff Decl. Ex. G).

Evidence in the record suggests that at least some members of the public recognized STRATEGIC

MARKS association with the Registered Marks. (Kassoff Decl. Ex. H).

Instead of keeping inventory in stock, STRATEGIC MARKS employed a different type of

supply chain management method commonly used by on-line retailers. Instead of incurring the

expense of obtaining inventory beforehand, on-line retailers commonly use a method where once an

order for given merchandise is placed, the retailer passes on the details of the order to its vendor, who

then proceeds to fill the order within a specified amount of time. The ability to use this method, as

opposed to the traditional method of carrying inventory in stock, is one great advantage on-line

retailers enjoy because customers browse pictures of merchandise on-line, as opposed to browsing

physical goods.10

9 Exhibit 3 is an excerpt from the Kassoff Deposition identifying February 11 as the day the on-line stores were launched.

Ashurov Decl. Ex. 3).10 By using this method, online retailers can avoid expending significant funds on building up inventory that may not be

sold to consumers.



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MACYS.COM, INC.S MOTION FORPARTIAL SUMMARY JUDGMENT


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III. ARGUMENTA. Summary Judgment Is Disfavored In Trademark CasesIn deciding a motion for summary judgment, this Court must draw all reasonable inferences in

STRATEGIC MARKS favor; summary judgment is not appropriate where the record would allow a

reasonable trier of fact to find for [STRATEGIC MARKS]. Adidas America, Inc. v. Payless

Shoesource, Inc., 546. F. Supp. 2d 1029, 1044 (D. Or. 2008).

Trademark use issues rarely lend themselves to summary adjudication. The Ninth Circuit

Appellate Division recently reaffirmed this notion by overturning summary judgment granted based

upon a trademarkuse in commerce determination under 15 U.S.C 1127. See Rearden LLC v.

Rearden Commerce, Inc., 683 F. 3d 1190, 1205 (9th

Cir. 2012) ([b]ecause of the intensely factual

nature of trademark disputes, summary judgment is generally disfavored in the trademark arena)

(citing Interstellar Starship Servs., Ltd. V. Epix Inc., 184 F. 3d 1107, 1109 (9th

Cir. 2010)); see also,

e.g., Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Management, Inc., 618 F.3d 1025, 1029

(9th

Cir. 2010).

As discussed below, determining whether a trademark has been used in commerce requires

an exercise of discretion by the fact-finder, including examining the totality of the circumstances,

and weighing a multitude of factors and determining the weight and credibility of competing evidence.

Such determinations do not lend themselves to a summary judgment adjudication process. As stated in

Rearden LLC,

Nevertheless, this Court is not currently sitting as the finder of fact at this stage

of the proceeding. We are instead confronted with motions implicating a highly

fact-specific totality of the circumstances inquiry as well as the generally

applicable requirement to view all evidence in the light most favorable to the non-

moving party.Rearden LLC, 683 F. 3d at 1208.Moreover, the Ninth Circuit will reverse a grant of summary judgment where there is conflicting

evidence regarding use in commerce.

Given the record now before us, we conclude that genuine issues of material fact

preclude summary judgment in favor of Rearden Commerce on use in

commerce grounds. Id. (emphasis added)



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Summary judgment must be denied because the evidence in this case is not as one-sided

as MACYS would have the Court believe. There is competing evidence regarding use in

commerce that would support, after consideration of the totality of the circumstances, a

favorable jury verdict for STRATEGIC MARKS.

B. Genuine Triable Issues Of Fact Exist Concerning The Definition Of The IdentifiedServices

To prevail on its Motion, MACYS must overcome the presumption that STRATEGIC

MARKS used the Registered Marks in commerce. MACYS makes no such evidentiary showing.

Moreover, MACYS fails to establish that no reasonable jury could decide that STRATEGIC MARKS

had used the Registered Marks in commerce for even one component of the Identified Services for

those marks. The Identified Services for each of the Registered Marks are:

(a) retail department store and on-line retail department store services

(b) retail and on-lineretail clothing boutiques

(c) retail and on-line retail clothing stores(d) retail and on-lineretail apparel stores

(e) retail and on-line retail store services featuring clothing and fashion

accessories. (Emphasis added).

A prerequisite to deciding the use requirement issue, discussed infra, involves defining the

recitation of services in the application. Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350,

1356 (Fed. Cir. 2009). MACYS simply ignores this threshold issue, and fails to provide any

cognizable definition of the Identified Services against which STRATEGIC MARKS use must be

compared. Instead, MACYS simply parrots that which can be gleaned from the language of the

Identified Services itself, namely, that the (as yet undefined) Identified Services can be viewed as

having both a (i) brick and mortar retail component, and (ii) an on-line retail component, before

concluding that STRATEGIC MARKS makes no such use in commerce. However, this summary is

not a definition of the types of services that may fall within the Identified Services and would enable

this Court to determine whether, in fact, STRATEGIC MARKS has used the marks in commerce.

Thus, Plaintiffs motion fails.

STRATEGIC MARKS disputes MACYSdefinition to the extent that it interjects a physical



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or brick and mortar component into the Identified Services. The word physical and brick and

mortar are nowhere to be found within the Identified Services, and MACYS fails to provide any

analysis or authority for its interjection of these words into the purported definition of the Identified

Services. MACYS arbitrary definition is useless to the careful analysis a motion for summary

adjudication merits, and it should receive little weight in these proceedings. Instead, the scope and

nature of the Identified Services must be resolved by the jury during trial.

1. On-Line Retail Services Means Providing A Virtual Destination WhereinItems Are Sold In Small Quantities To Ultimate Consumers Over The

Internet

STRATEGIC MARKS concedes that the Identified Services contain an on-line retail

component. Within the confines of this component,STRATEGIC MARKS contends that retail

means to sell in small quantities directly to the ultimate consumer.11

The Court of Appeals for the

Federal Circuit has endorsed this definition of retail in Witco Chemical Corp. v. U.S., 742 F. 2d 615

(Fed Cir. 1984).12

STRATEGIC MARKS contends that on-line means connected to, served by, or available

through a system and especially a computer or telecommunications system (as the Internet).13

Thus,

STRATEGIC MARKS submits that online retail services means selling in small quantities directly

to consumers through the Internet, and online retail store services means providing a virtual store

wherein goods are offered for sale in small quantities to ultimate consumers via the Internet.

As explained in section 2(c) below, STRATEGIC MARKS opened virtual retail stores in which

goods are sold in small quantities to ultimate consumers, thereby rendering online retail store services.

Thus, Plaintiffs motion for partial summary judgment must be denied.

C. Genuine Triable Issues Of Fact Exist Concerning STRATEGIC MARKS Use inCommerce Of The Registered Marks When The Statements OF Use Were

Submitted To The USPTO

MACYS accurately identifies the relevant Lanham Act definition of service mark use-in-

11 "retail." Merriam-Webster.com. 2013. http://www.merriam-webster.com (15 February 2013).12 The court accepted retain to mean sales made in small quantities to ultimate consumers for personal use. Witco

Chemical Corp., 742 F. 2d at 621.13on-line. Merriam-Webster.com. 2013. http://www.merriam-webster.com (15 February 2013).



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commerce,14

but it grossly mischaracterizes case law which interprets this statutory language. The

case law is clear that the totality of the circumstances test governs the interpretations of the phrase, but

MACYS motion makes no mention whatsoever of that test. MACYS also misleads this Court by

suggesting that actual sales are necessary to meet the statutory definition ofuse in commerce for

service marks15

. Instead, as discussed more fully below, the case law has long held in this Circuit that

sales are not a prerequisite to register service marks. Instead the totality of the circumstances must be

considered in determining use in commerce under15 U.S.C. 1127.

1. Totality Of Circumstances Control Use In Commerce DeterminationsAnd Sales Are Not Required

A totality of the circumstances test applies to the determination of whether a service mark has

been adequately used in commerce so as to gain the protection of the Lanham Act. See Chance v.

Pac-Tel Teletrac, Inc., 242 F. 3d 1159 (9th

Cir. 2001). The totality of the circumstances test requires

consideration of the following factors: (i) the genuineness and commercial character of the activity; (ii)

whether the mark was sufficiently public to identify or distinguish the marked service in an appropriate

segment of the public mind as those of the holder of the mark; (iii) the scope of the non-sales activity

relative to what would be a commercially reasonable attempt to market the service; (iv) the degree of

ongoing activity of the holder to conduct the business using the mark; (v) the amount of business

transacted; and (vi) other similar factors which might distinguish whether a service has actually been

rendered in commerce. See Rearden LLC, 683 F. 3d at 1205.

As part of the totality of the circumstances, evidence of actual sales, or lack thereof, is not

dispositive in determining whether a party has established use-in-commerce within the meaning of

the Lanham Act, 15 U.S.C 1127. Rearden LLC v. Rearden Commerce, Inc., 683 F. 3d 1190, 1205

(9th Cir. 2012) (emphasis added). To the contrary, non-sales activity may well be relevant to the

14 The use-in-commerce requirement is met when (1) a mark is used or displayed in the advertising of services and (2)

either (i) the services are rendered in commerce or (ii) the services are rendered in more than one state or in the United

States and a foreign county and the person rendering those services is engaged in commerce in connection with the

services. 15 U.S.C. 1127.15Thus, in the absence of any sales whatsoever, the TTAB held that services were not rendered, and there was no use in

commerce of the mark. Similarly, in the present case Defendant did not sell a single t-shirt for any of the marks . . . Mot.

15: 24-26.



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determinations whether (i) a mark has been adequately displayed in public, and (ii) whether a

service identified by the mark has been rendered in commerce. Rearden LLC, 683 F. 3d at 1190,

1205 (9th Cir. 2012).

2. The Totality Of The Circumstances Suggest STRATEGIC MARKSRendered On-line Retail Store Services

Consideration of the totality of the circumstances will support a jury determination that

STRATEGIC MARKS had made use in commerce of the Registered Marks per 15 U.S.C 1127 as

of the date the statements of use were submitted.

The facts stated herein support the conclusion that STRATEGIC MARKS opened the doors to

its on-line retail stores, including stores bearing the Registered Marks, and made them available to

public patronage well before it submitted statements of use to the USPTO. Therefore, before

submitting its statements of use, STRATEGIC MARKS provided an on-line destination (store) for the

public to browse and purchase merchandise, and was operating a fully functional online retail store

under each of the Registered Marks. Thus, prior to submitting its statements of use, STRATEGIC

MARKS rendered on-line retail store services in commerce using the Registered Marks.

MACYS argues that the stores bearing the Registered Marks carried no inventory,16

but this

argument is irrelevant and misleading. As set forth in the facts section, STRATEGIC MARKS simply

employed a supply chain management method that is commonly used by on-line retailers by which the

stores online sales are fulfilled by a pre-contracted vendor tasked to do so. MACYS seeks to

penalize STRATEGIC MARKS for taking advantage of one of the primary business advantages gained

by taking a store online. STRATEGIC MARKS arranged for vendor PinPoint Associates to fill its

merchandise orders, and so MACYS inventory arguments are irrelevant.

MACYS relies heavily upon Aycock Engineering, Inc. v. Airflite, Inc., 560 F. 3d 1350, 1356

(Fed. Cir. 2009), but Aycock Engineering, Inc. undercuts MACYS Motion. Aycock Engineering, Inc.

clarifies that the questions one asks to determine whether the use in commerce requirement under 15.

U.S.C. 1127 is met, are simply the following: (i) did the service mark owner give intended

16 Mot. 15:27-28.



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customers the opportunity to use the relevant services? And (ii) was the service mark owner was in a

position to render the services he was advertising at the time he made the advertisement?17

The evidence supports a finding that STRATEGIC MARKS gave intended customers the

opportunity to use its services because STRATEGIC MARKS opened functioning stores to public

patronage and enabled those customers to browse and purchase the merchandise found inside those

stores. Indeed, customers have actually purchased merchandise from another STRATEGIC MARK

virtual store that is set up the same as the virtual stores for the Registered Marks, Jordan Marsh, in

STRATEGIC MARKS virtual mall (Kassoff Decl. Ex. I)18

. Because the Jordan Marsh store set up in

manner identical to the stores bearing the Registered Marks, a fact finder could easily infer that

STRATEGIC MARKS gave its intended customers true opportunities to use the Identified Services.

Thus, STRATEGIC MARKS may be found to have rendered services under the Aycock formulation of

use in commerce.

D. Genuine Triable Issues of Fact Exist Concerning Whether The Registered MarksMet The Affixation Requirement Of The Lanham Act

MACYS asserts that STRATEGIC MARKS does not affix the Registered Marks in a manner

sufficient to satisfy U.S.C. 112719

. This unsupported assertion does not overcome the presumption of

validity accompanying the USPTO Examiners approval of STRATEGIC MARKS statements of use

for the Registered Marks, these marks enjoy a presumption of validity. Instead, to succeed on its claim,

MACYS must rebut this presumption of validity by a preponderance of the evidence, which MACYS

fails to do.

1. MACYS Presents No Probative Evidence To Rebut the Presumption ofValidity

In support of its claim that the Registered Marks do not meet the affixation requirements,

17 TTAB's determination that Mr. Aycock failed to offer his service to the public is supported by substantial evidence,

because he never gave anyone an opportunity to use his AIRFLITE service to make a charter flight reservation. Aycock

Engg, Inc., 560 F. 3d at ).18 Exhibit I is a copy of a purchase order submitted by a customer for merchandise ordered from the Jordan Marsh store

(Kassoff Decl. Ex I)19 Mot. 14: 10-21. Although under the title Department store marks are not used, it appears Macys argues that the

affixation requirement is not met.



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MACYS producesjust one office action letterfrom STRATEGIC MARKS application file for the

mark ABRAHAM AND STRAUSS20

(Office Action), and extrapolates from that one letter the

conclusion that none of the three Registered Marks meet the affixation requirement.

However, the cited Office Action is neither relevant to nor dispositive of, the issue. In fact, the

Office Action is wholly irrelevant as to the Registered Marks. The Examiners comments in the Office

Action are directed towards the specific specimen of use submitted by STRATEGIC MARKS in that

particular application. Moreover the specific issue raised by the Examiner simply does not apply to the

Registered Marks. The specimen of use shows the service mark as A&S, while the applied-for mark is

ABRAHAM ANDSTRAUSS21

. The Examiners Office Action comments as quoted by MACYS

directly address this disparity between the applied-for mark (ABRAHAM ANDSTRAUSS) and the

manner in which the mark appeared in the specimen of use (A&S) used in commerce.22

Unlike in ABRAHAM AND STRAUSS, the applications for the Registered Marks had no such

disparity. Thus, the Examiners findings in the Office Action are not probative in regards to the

Registered Marks, which were found properly affixed and used in commerce when the Examiner

approved the statements of use submitted for the Registered Marks.

2.

The Evidence Supports A Finding That The Registered Marks AreSufficiently Affixed To The Services Top Obtain Lanham Act Protection

For the purposes of this [Lanahm] Act a mark shall be deemed to be used in commerceon

services when it is used or displayed in the sale or advertising of services and the services are rendered

in commerce. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 16:33 (4th

ed.

2012) (citing Lanham Act 45). All that is necessary to establish proper use of a service mark is to

prove that the mark is used or displayed in the sale or advertising of services in such a way as to

identify the services of one person and distinguish them from the services of others. Id. (citing 15

U.S.C.A. 1127).

20 Mot. 14: 18-19.21 As indicated above, the first specimen submitted by the applicant does not show the mark. The second specimen web

page is a shopping page, showing for sale a t-shirt with an A&S logo on the front. The proposed mark does appear on

this page.22The second specimen web page is a shopping page, showing for sale a t-shirt with an A&S logo on the front. The

proposed mark does appear on this page. (Lo Cicero Decl Ex. O at 3).



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Because on-line retail services are at issue, determining whether the Registered Marks are

sufficiently affixed requires analyzing the Registered Marks in the context of affixation requirements

for services rendered over the Internet. A designation in the body of an Internet Web site can be used

in such a way as to identify and distinguish the source of services rendered via the Internet. Id.

Addressing the issue of affixation of service marks for services rendered via the Internet, the

Trademark Trial and Appeal Board (TTAB) explains,

whether or not a term functions as a service mark necessarily depends on how that term

is used and how it is perceived by potential recipients of the services. In re Ancor

Holdings, LLC, 79 U.S.P.Q.2d 1218, 2006 WL 1258813 (T.T.A.B. 2006) (citing In re

Walker Research, Inc., 228 USPQ 691, 692 (TTAB 1986).

In In re Ancor Holdings, the TTAB determined that where service mark appears within a

website, and where such website identifies the services, in todays commercial context, sufficiently

creates in the minds of purchasers an association between the mark and applicants identified

reminder and scheduling services. In re Ancor Holdings, 79 U.S.P.Q.2d 1218, 2006 WL 1258813

at 7 (emphasis added).

Similar to the registrant in In re Ancor Holdings, STRATEGIC MARKS places the Registered

Marks on its website throughout the virtual mall. It does so outside the mall, inside the mall, and

inside each individual store.23

Appearing on the same page as this description are store icons bearing

each store name,24

including stores bearing the Registered Marks.

In In re Ancor Holdings, the TTAB found affixation sufficient for registration where the

relevant services were simply advertised online, even though they were not rendered on-line.

STRATEGIC MARKSclearly meets this standard, and STRATEGIC MARKS servicesareadvertised

and actually rendered on-line25

while the Registered Marks are in view. This forecloses any doubt that

the Registered Marks do not meet the affixation requirement as it applies to service marks used to

provide on-line services.

IV. CONCLUSION23 (Lo Cicero Decl. Ex O through Ex. M)24 These store icons are meant to represent the front entrance to each on-line store.25 (Lo Cicero Decl. Ex O through Ex. M)



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MACYS fails to present any evidence to overcome the presumption that the Registered Marks

are valid. Moreover, the question whether STRATEGIC MARKS has made use in commerce of the

Registered Marks under 15 U.S.C 1127 cannot be summarily adjudicated because genuine triable

issues of fact exist concerning: (i) the definition of the recited services under the Registered Marks,

(ii) whether STRATEGIC MARKS use is sufficient to constitute use in commerce ofthe Registered

Marks under the Lanham Act, and (iii) whether STRATEGIC MARKS use is sufficient to satisfy the

affixation requirement for the Registered Marks. MACYS motion for partial summary judgment

should be summarily denied.

DATED: February 15, 2013 KB ASH LAW GROUP

By ____/s/BENJAMIN ASHUROVAttorneys for DefendantSTRATEGIC MARKS, LLC


macy's v. strategic marks, llc, 3-2011-cv-06198 (n.d. cal.) (strategic marks' brief in opposition to...

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