HomeMy WebLinkAboutREDbedellb3From : Lee BeDell[SMTP :GLBEDELL@CHARTER .NET ]
Sent : Sunday, November 28, 2010 3 :03 :17 PM
To : Council, SloCit y
Subject : Kevin P . Ric e
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RECEI T
NOV 2 9 2010
SLO CITY CLL.,-
Dear San Luis Obispo City Council Members ,
Thank you for being fiscally responsible . My husband and I hav e
concerns about Kevin P . Rice being appointed to the vacant City Counci l
seat . He currently has a IRS tax lien filed in San Luis Obispo County .
He also recently lost a trademark case in Federal Court on October 28 ,
2010 . The Federal Judge calls his actions a sham (please revie w
attachments). We have a rental property in San Luis Obispo at 132 7
Pacific and appreciate sound fiscal decisions and honest civi l
discourse . We urge the council not to appoint Kevin P . Rice .
Respectfully, Geri and Lee BeDel l
RED FILE
MEETING AGEND A
DATE ifi//o ITEM #B3
Lard copy :email:
a COUNCIL a CDD DIR
a CITY MGR a FIT DIR
a ASST CM D FIRE CHIEF
a ATTORNEY a Pw DIR
a CLERKIORIO a POLICE CHIEF
a Pig a PARKS &. REC DIR
a TRIBUNE a UTIL DI R
a NEW TIMES D HR DIR
a SLO CITY NEWS a COUNCI L
a CITY MGR
a CLERK
Recording Requested By Internal Revenu e
Service . When recorded mail to :
INTERNAL REVENUE SERVIC E
PO BOX 145585,STOP 8420 G
CINCINNATI, OH 45250-5585
JULIE RODEWAL DSan Luis Obispo County-Cierk/ltecorde r
Recorded at the roquest a t
internal Revenue Service
LO
1211612008
9 :22 AM
2008061588 Titles:1
Pages ;1DOC#
sail
Fees
8 .0 0
Taxes
0 .0 0
Others 0 .00
PAID
$8 .00
For Optional use oy rtecoroing Uttic e
11ai
Form 668 (Y)(c )
(Rev. February 2004)
3625 Department of the Treasury Internal Revenue Servic e
Notice of Federal Tax Lie n
Area : SMALL BUSINESS/SELF EMPLOYED AREA #7
Lien Unit Phone : (800) 913-6050
Serial Number
49944800 8
As provided by section 6321,6322,and 6323 of the Internal Revenue Code, we are giving a notice that taxe s
(including interest and penalties) have been assessed against the following-named taxpayer,We have made a
demand for payment of this liability, but it remains unpaid . Therefore, there is a lien in favor of the United State s
on all property and rights to property belonging to this taxpayer for the amount of these taxes, and additiona l
penalties, interest, and costs that may accrue .
Name of Taxpayer KEVIN P RIC E
Residence PO BOX 141 .0 7
SNLUIS OBISP, CA 93406-410 7
IMPORTANT RELEASE INFORMATION:For each assessment listed below, unless notice of the lien is refired by the dat e
given in column {e), this notice shall, on the day following such date, operate as a certificate of release as defined in IRC 6325(a).
Tax Period Date of Last Day for Unpaid Balanc e
Kind of Tax Ending identifying Number Assessment Refilmg of Assessmen t
(a)(b)J (c)(d)(e)(f)
1040 12/31/2003 XXX-XX-3273 03/19/2007 04/18/2017 74664 .4 5
1040 12/31/2004 XXX-XX-3273 12/10/2007 01/09/2018 3184 .0 6
Place of Filing
COUNTY RECORDE R
SAN LUIS OBISPO COUNTY Total $77848 .5 1
SAN LUIS OBISPO, CA 9340 8
This notice was prepared and signed at OAKLAND,CA _,on this,
the 04th ,day of December ,_2008 .
Titl eREVENUE OFFICER 27-05-340 4
for LOIS TRASK
(805)352-034 0
(NOTE:Certificate of officer authorized by law to take acknowledgment is not essential to the validity of Notice of Federal Tax lie n
Rev . Rel. 71-466, 1971 - 2 C .B . 409)Form 668(Y)(c)(Rev . 2 .20041Part 1 - Kept By Recording Office CAT . NO 60026 XEND OF DOCUMEN T
Signatur e
Case 2 :10-cv-03258-JST -PLA Document 31 Filed 10/28/10 Page 1 of 10 Page ID #:27 5
UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES — GENERA L
Case No . CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title: Nell E . Langford v . Kevin P . Ric e
Present :Honorable JOSEPHINE STATON TUCKER, UNITED STATES DISTRICT JUDG E
Ellen Matheson N/A
Deputy Clerk
Court Reporter
ATTORNEYS PRESENT FOR PLAINTIFF : ATTORNEYS PRESENT FOR DEFENDANT :
Not Present
Not Presen t
PROCEEDINGS : (IN CHAMBERS) ORDER GRANTING PLAINTIFF NELL E .
LANGFORD'S MOTION FOR SUMMARY JUDGMENT (Doc .
12) AND DENYING DEFENDANT KEVIN P . RICE'S
MOTION FOR SUMMARY JUDGMENT (Doc . 19 )
I . INTRODUCTIO N
Plaintiff Nell Langford filed suit against Defendant Kevin Rice seeking (1 )
cancellation of Rice's Federal Trademark "Safe Beach Now®," registration numbe r
3,776,688 ("`688 mark"), (2) a preliminary and permanent injunction preventing Ric e
from interfering with Langford's use of the Safe Beach Now mark, and (3) declarator y
judgment of trademark non-infringement as to the `688 mark . (Compl ., Doc . 1, ¶¶ 15 -
23 .) Rice responded with an Answer denying Langford's allegations and asserting
multiple affirmative defenses .(See Answer, Doc . 6 .)
Langford and Rice now separately move, pursuant to Federal Rule of Civi l
Procedure 56, for summary judgment . (Docs . 12 & 19). Each has filed an oppositio n
(Docs . 20, 21 & 28), and Langford has filed a reply (Doc . 27). Having reviewed th e
briefs, heard the parties' oral arguments, and taken the matters under submission, th e
Court GRANTS Langford's Motion for Summary Judgment, DENIES Rice's Motion fo r
Summary Judgment, and ORDERS the cancellation of the `688 mark .
CV-90 (10/08)
CIVIL MINUTES — GENERAL
1
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UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES — GENERA L
Case No . CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Rice
II . BACKGROUN D
This trademark dispute arises out of the use of the mark "Safe Beach Now ." Th e
undisputed facts follow .'Plaintiff Langford has been a resident of Pismo Beach ,
California since 1976 and has actively participated in various community issues sinc e
then . (Langford Decl ., Doc . 12-2, ¶ 3 .) Specifically, for the past two decades, Langfor d
has publicly expressed her concern about off-road vehicle use at the Oceano Dunes beac h
area in San Luis Obispo County .(Id.¶5 .)In 2001, Langford started a communit y
organization called Safe Beach Now, which focuses on disseminating information abou t
the dangers of off-road vehicle activity in Oceano Dunes .(Id.¶¶ 6-7 .) Since then ,
Langford has used the Safe Beach Now mark in conjunction with her communit y
activism efforts .(Id.¶ 10 .) For example, Langford obtained the Internet domain name s
www .safebeachnow .com, www .safebeachnow .net, and www .safebeachnow .org to aid i n
her organization's outreach .(Id.¶¶ 7-9, Exh . 1 .) Langford has also appeared in severa l
publications, at public meetings, and at public demonstrations displaying Safe Beac h
Now signage and serving as a representative of the Safe Beach Now organization .(Id.¶¶
10-16, 19-20, Exhs . 2-11 .)
Defendant Rice is a resident of San Luis Obispo and also disseminate s
information, often at odds with Langford, about off-road vehicle use at Oceano Dunes .
(Rice Decl ., Doc . 24, ¶¶ 2-6 .) For example, on May 3, 2007, Rice videotaped a publi c
demonstration staged by Langford and the Safe Beach Now organization, and published a
video entitled, "The Langford Files – It's Sleazy Being Green" on YouTube . (Langfor d
Decl . ¶ 12-13, Exh . 4 ; Rice Decl . ¶ 8 .) On September 7, 2007, Rice also submitted a
letter to the editor of the Times Press Recorder, a local newspaper, entitled "Group Can't
Have It Both Ways," in which he specifically indentified Langford and others from th e
Safe Beach Now organization . (Langford Decl . ¶ 17 .)
Rice claims to develop and disseminate "safety information" about Oceano Dune s
through a "commercial enterprise ." (Rice Decl . ¶ 6 .) Rice alleges that, since July 9 ,
2007, he has sold informational safety brochures bearing the Safe Beach Now mark,(id.
'Because Langford and Rice failed to follow the Court's specific instructions regarding th e
presentation of statements of undisputed facts and genuine issues for summary judgmen t
motions,(see Initial Standing Order, Doc . 14, ¶ 10(c)(i),) the Court derives the facts from th e
parties' respective declarations . (Doc . 12-2, "Langford Decl ."; Doc . 24, "Rice Decl .")
CV-90 (10/08)CIVIL MINUTES — GENERAL
Case 2 :10-cv-03258-JST -PLA Document 31 Filed 10/28/10 Page 3 of 10 Page ID #:27 7
UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNI A
CIVIL MINUTES — GENERA L
Case No . CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Ric e
¶ 10,) and has advertised and disseminated information through two Internet domai n
names : www .safebeachnow .info and www .safebeachnow .us .(Id.¶ 11 .)
On April 20, 2010, Rice obtained the `688 mark . (Id., Exh . 12 .) Four days later ,
Rice sent Langford a letter alleging trademark infringement for Langford's use of the
Safe Beach Now mark in her above-referenced websites and community activism .
(Compl ., Exh . 1 .) Rice demanded that Langford disable or delete all content from he r
websites, and transfer her Internet domain names to him . (Id.)
In response, Langford filed suit against Rice seeking cancellation of the `68 8
mark, a preliminary and permanent injunction precluding Rice from interfering with he r
use of the Safe Beach Now mark, and declaratory judgment of non-infringement of th e
`688 mark .(Id.at 3-4 .) The parties then filed cross-motions for summary judgmen t
addressing the validity and enforceability of the `688 mark .(See Docs . 12 & 19).2
Langford's Motion for Summary Judgment (Doc . 12) seeks to cancel the `68 8
mark based on Langford's alleged prior use of the Safe Beach Now mark and becaus e
Rice's trademark application allegedly contained fraudulent and inaccurate information .
(Pl .'s Mem . Pts . & Auth . in Supp . Mot. Summ . J . ("Pl .'s MPA"), Doc . 12-1, at 6-7 .)
Rice responds 3 that Langford failed to make protectable commercial use of the Saf e
Beach Now mark and, moreover, her claims are barred by res judicata, estoppel, laches ,
and unclean hands . (Def.'s Mem . Pts . & Auth . in Opp . to Pl .'s Mot . Summ . J . and in
Supp . Def.'s Mot . Summ . J. ("Def.'s MPA"), Doc . 20, at 6-9 .) In reponse, Langford re -
asserts the arguments in her moving papers and further argues that the `688 mark i s
invalid and unenforceable because Rice has failed to make use of it "in commerce ."
(Pl .'s Opp . to Def . Mot . Summ . J ., Doc . 28, at 3-5 .);see 15 U .S .C . §§ 1051(a)(1),
1051(b)(1), and 1127 (requiring "use in commerce" to establish trademark rights).
2 Langford's Complaint does not allege common law trademark infringement .(See Compl .)
Therefore, the only question before the Court is the validity and enforceability of Rice's `68 8
mark .
Rice filed a single "Memorandum of Points and Authorities in Opposition to Plaintiff's Motio n
for Summary Judgment and in Support of Defendant's Motion for Summary Judgment ." (Doc .
20 .) Rice's arguments against Langford's Motion and for his own are therefore one and th e
same.
CV-90 (10/08)
CIVIL MINUTES — GENERAL
3
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UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNI A
CIVIL MINUTES –GENERA L
Case No . CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Rice
III.LEGAL STANDARD
In deciding a summary judgment motion, the court must view the evidence in th e
light most favorable to the non-moving party and draw all justifiable inferences in it s
favor.Anderson v . Liberty Lobby, Inc .,477 U .S . 242, 255 (1986). Summary judgment i s
proper "if the pleadings, the discovery and disclosure materials on file, and any affidavit s
show that there is no genuine issue as to any material fact and that the movant is entitle d
to judgment as a matter of law ." Fed . R. Civ . P . 56(c). A factual issue is "genuine" whe n
there is sufficient evidence such that a reasonable trier of fact could resolve the issue i n
the non-movant's favor, and an issue is "material" when its resolution might affect th e
outcome of the suit under the governing law .Anderson,477 U .S . at 248 . The movin g
party bears the initial burden of demonstrating the absence of a genuine issue of fact .
Celotex Corp . v . Catrett,477 U .S . 317, 323 (1986). The burden then shifts to the non -
moving party to "set out specific facts showing a genuine issue for trial ." Fed . R . Civ . P .
56(e)(2).
IV.DISCUSSION
District courts have the authority "[i]n any action involving a registered mark ...
[to] determine the right to registration, order the cancelation of registrations, in whole o r
in part, restore canceled registrations, and otherwise rectify the register ...." 15 U .S .C .
§ 1119 . A registered trademark is presumptively valid,Quiksilver, Inc. v. Kymsta Corp .,
466 F .3d 749, 755 (9th Cir . 2006), but if a challenging party "can demonstrate throug h
law, undisputed facts, or a combination thereof that the mark is invalid, the evidentiar y
bubble bursts and the [trademark owner] cannot survive summary judgment ."Talking
Rain Beverage Co . v. S. Beach Beverage Co .,349 F .3d 601, 603 (9th Cir . 2003) (quotin g
Tie Tech, Inc . v. Kinedyne Corp .,296 F .3d 778, 783 (9th Cir . 2002)). "[O]nce th e
presumption of validity afforded a registered trademark has been rebutted, mer e
registration does not enable a trademark holder to survive summary judgment ."Talking
Rain Beverage Co .,349 F .3d at 603 .
Here, Langford argues that Rice's `688 mark should be cancelled because o f
Rice's fraudulent trademark application and his failure to use the mark in commerce .
(Pl .'s MPA at 6-7 ; Pl .'s Opp . to Def. Mot . Summ . J . at 3-5 .) The court reviews thes e
arguments in turn .
CV-90 (10/08)CIVIL MINUTES – GENERAL 4
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UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNI A
CIVIL MINUTES — GENERAL
Case No . CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Ric e
A . Frau d
"Fraud is one of the enumerated grounds for challenging an uncontestable mark ."
Protech Diamond Tools, Inc . v. Liao,No . C08-3684, 2009 WL 1626587, *8 (N .D . Cal .
June 8, 2009);see 15 U .S .C . § 1115(b)(1). "Fraud in procuring a mark occurs when a n
applicant knowingly makes false, material representations of fact in connection with a n
application ."Quiksilver,446 F .3d at 755 (quoting L .D . Kichler Co . v. Davoil, Inc .,19 2
F .3d 1349, 1351 (Fed . Cir . 1999));see Pony Express Courier Corp . of Am. v. Pony
Express Delivery Serv .,872 F .2d 317, 319 (9th Cir . 1989) ("[T]o prove fraud that woul d
result in the cancellation of [a trademark], there would have to be a materia l
misrepresentation in the affidavit on the basis of which the mark was registered .").
Langford alleges that Rice committed fraud in obtaining the `688 mark b y
willfully making false statements of material fact on his trademark application .(See
Compl . at 3, ¶ 13 ; Pl .'s MPA at 7 .) Specifically, Langford alleges that Rice (1) include d
a false first use date on the trademark application, (Pl .'s Stat. of Uncont . Facts and Concl .
of Law at ¶ 7,) and (2) signed a verified statement on the application that stated "to th e
best of the declarant's knowledge and belief, no other person ... has the right to use th e
mark in commerce ..." despite knowledge of Langford's prior use of the mark . (Pl .'s
Opp . to Def. Mot. Summ . J ., Doc . 28, at 3-5 ; Langford Decl . Exh . 12 .) The Court is no t
persuaded.
First, "[t]he claim of a date of first use is not a material allegation as long as th e
first use in fact preceded the application date ."Pony Express,872 F .2d at 319 . It i s
undisputed that Rice's first use preceded his application date ; thus, the first use date is no t
a material representation .See id.As a result, Langford's allegations regarding th e
veracity of the first use date cannot amount to fraud .See Quiksilver, Inc .,446 F .3d at
755 .
Second, the fact that Rice signed the verified statement, despite having knowledg e
of Langford's prior use of the Safe Beach Now mark, does not constitute fraud . Th e
statement verifies only that, "to the best of [Rice's] knowledge and belief, no othe r
person ... has the right to use the mark in commerce ...."(Langford Decl . Exh. 12 )
(emphasis added). Langford never used the Safe Beach Now mark for commercia l
activities . (Pl .'s Stat. of Uncont. Facts and Concl . of Law at ¶ 3 .) Even if Langford had ,
Rice's actions would still not have amounted to fraud .
CV-90 (10/08)CIVIL MINUTES — GENERAL 5
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UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNI A
CIVIL MINUTES – GENERA L
Case No . CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Rice
In Quicksilver,when faced with the virtually identical claim, the court there hel d
that "mere knowledge of the existence of the ... mark does not constitute fraud" when a
declarant states that "to the best of [the declarant's] knowledge and belief, no othe r
person ... has the right to use the ... mark in commerce ...."Quicksilver,466 F .3d at
755 (citing Yocum v. Covington,216 U .S .P .Q . 210, 216-17 (T .T .A .B . 1982) ("[T]h e
statement of an applicant that no other person `to the best of his knowledge' has the righ t
to use the mark does not require the applicant to disclose those persons whom he ma y
have heard are using the mark if he feels that the rights of such others are not superior t o
his .") Because Langford does not establish that Rice was, in fact, aware that Langfor d
had the right to use the mark in commerce,Langford's attempt to invalidate Rice's `68 8
mark for fraud fails .
B. Use in Commerc e
Langford alleges that Rice's `688 mark should be cancelled because Rice has
failed to use the Safe Beach Now mark in commerce . (Pl .'s Opp . to Def. Mot . Summ . J .
at 3-5 .) As noted earlier, although a registered trademark is presumptively valid, tha t
presumption can be rebutted by "undisputed facts" and "mere registration does not enabl e
a trademark holder to survive summary judgment ."Talking Rain Beverage Co .,349 F .3 d
at 603 . Under the Lanham Act, a person may register a trademark if it is "used i n
commerce" or if that person has "a bona fide intention, under circumstances showing th e
good faith of such person, to use [the] trademark in commerce ...." 15 U .S .C .§
1051(b)(1). The `688 mark satisfies neither prong and is therefore invalid .
1 .Evolution of the Lanham Act and the "Use in Commerce" Requiremen t
"Congress enacted the Lanham Act in 1946 in order to provide national protectio n
for trademarks used in interstate and foreign commerce ."Park `N Fly, Inc . v. Dolla r
Park & Fly, Inc .,469 U .S . 189, 193 (1985) (citing S . Rep . No . 1333, 79th Cong ., 2 d
Sess ., 5 (1946)). Four decades later, Congress amended the Lanham Act with th e
Trademark Law Revision Act (TLRA). Pub . L . No . 100-667, 101 Stat . 3925 (1988).
Prior to the TLRA, "in order to qualify for federal registration, the extent of actual use o f
the mark was irrelevant so long as it amounted to more than a mere sham attempt t o
conform with statutory requirements ."Chance v . Pac-Tel Teletrac, Inc .,242 F .3d 1151 ,
CV-90 (10/08)
CIVIL MINUTES – GENERAL
Case 2 :10-cv-03258-JST -PLA Document 31 Filed 10/28/10 Page 7 of 10 Page ID #:28 1
UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNI A
CIVIL MINUTES – GENERA L
Case No .CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Ric e
1157 (9th Cir . 2001) (quoting 2 J . Thomas McCarthy,McCarthy on Trademark an d
Unfair Competition, §16 :8 (4th ed . 1997)).
With the enactment of the TLRA, "Congress changed the statutory definition o f
`use' so as to require a greater degree of activity ."Id.(quoting 2 J . Thomas McCarthy ,
McCarthy on Trademark and Unfair Competition, §16 :8 (4th ed . 1997)). Today, th e
phrase "use in commerce" means "the bona fide use of a mark in the ordinary course o f
trade, and not made merely to reserve a right in a mark ." 15 U .S .C . § 1127 4 ;see 1 5
U .S .C . §§ 1051(a)(1), 1051(b)(1).
The Ninth Circuit applies a "totality of the circumstances" test to determine i f
usage of a trademark qualifies as "use in the ordinary course of trade under § 1127 ."
Electro Source, LLC v . Brandess-Kalt-Aetna Grp ., Inc.,458 F .3d 931, 940 (9th Cir .
2006) (internal quotations omitted);see Chance,242 F .3d at 1158-59 ;Brookfield
Commc'ns, Inc. v. W Coast Entm't Corp .,174 F .3d 1036, 1052 (9th Cir . 1999). I n
applying the test, the Court considers the following factors :
the genuineness and commercial character of the activity, th e
determination of whether the mark was sufficiently public to identify o r
distinguish the marked service [or product] in an appropriate segment o f
the public mind as those of the holder of the mark, the scope of th e
[trademark] activity relative to what would be a commerciall y
reasonable attempt to market the service [or product], the degree o f
ongoing activity of the holder to conduct the business using the mark ,
4 15 U .S .C . § 1127 states that :
a mark shall be deemed to be in use in commerce on (1) goods when (A) it i s
placed in any manner on the goods ... (B) and the goods are sold o r
transported in commerce, and (2)on services when it is used or displayed i n
the sale or advertising of services and the services are rendered in commerce ,
or the services are rendered in more than one State or in the United States an d
a foreign country and the person rendering the services is engaged i n
commerce in connection with the services .
15 U .S .C . § 1127 .
CV-90 (10/08)
CIVIL MINUTES – GENERAL
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UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES – GENERAL
Case No .CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Ric e
the amount of business transacted, and other similar factors which migh t
distinguish whether a service [or product] has actually been "rendered i n
commerce ."
Chance,242 F .3d at 1159 . "[T]oken use is not enough ."Id.at 1157 . "[M]ere adoptio n
of a mark without bona fide use, in an attempt to reserve it for the future does not creat e
trademark rights .... [O]wnership of a mark requires both appropriation and use i n
trade ."Id.(quoting Signature Guardian Sys ., Inc . v. Lee,209 U .S .P .Q . 81, 87 (T .T .A .B .
1980));cf.Electro Source,458 F .3d at 939 ("Good faith nominal or limited commercia l
sales of trademarked goods are sufficient ... to avoid abandonment, where th e
circumstances legitimately explained the paucity of the sales .").
2 .Rice's Use of the `688 Mark Does Not Satisfy the Lanham Act's "Us e
in Commerce" Requiremen t
To survive Langford's Motion for Summary Judgment, Rice must "set out specifi c
facts showing a genuine issue for trial .'Fed . R. Civ . P . 56(e)(2). Here, Langford allege s
that Rice has not made a bona fide use of the `688 mark in the ordinary course of trade t o
support the `688 mark registration . (Pl .'s Opp . to Def. Mot . Summ . J . at 4 .) Langford
points out that Rice has produced only "two handwritten receipts as evidence of his us e
of SAFE BEACH NOW mark in interstate commerce ." (Id.;see Rice Decl ., Doc . 24 ,
Exh . 2 .) Rice does not dispute this .
In support of his Motion, Rice provides two receipts and two registered Interne t
domain names as evidence of the `688 mark's use in commerce . (Rice Decl . ¶ 11 ; Exh .
2 .) The first handwritten receipt, dated July 9, 2007, memorializes a $20 sale o f
"Brochures : SAFE BEACH NOW" to Angello's ATV for cash, and is signed by Rice .
(Id.Exh . 2 .) The second handwritten receipt, dated April 21, 2009, similarly evidences a
$20 sale of "SAFE BEACH NOW Brochures" to Broken Bikes, and appears to b e
initialed by Rice . (Id.) Rice included these safety brochures as the product specimen fo r
his trademark application, which consisted of a photograph of "the first informatio n
safety brochures [Rice] created bearing the SAFE BEACH NOW mark ." (Langfor d
Decl . Exh . 12 .) Rice also states that "[o]n November 25, 2007, [he] registered tw o
Internet domain names ... to create an Internet web presence with which to furthe r
advertise and disseminate news and safety information ." (Rice Decl . ¶ 11 .)
CV-90 (10/08)
CIVIL MINUTES – GENERAL
8
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UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNI A
CIVIL MINUTES — GENERA L
Case No . CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Ric e
Beyond these facts, Defendant supplies no other evidence supporting th e
proposition that (1) he has used the `688 mark in the ordinary course of trade or (2) tha t
he has a "bona fide intention to use" the `688 mark in commerce . 15 U .S .C . §§ 1127 ;
1051(b)(1). At oral argument, when asked if he had provided the Court all th e
information and documents he possessed regarding the `688 mark's use in commerce ,
Rice responded that, other than the two $20 brochure sales, he had "a couple more cas h
sales" but could not provide evidence of the exact amounts or dates of those sales .
(10/18/2010 Transcript at 12-15 .) Rice also alleged that he had "some web Interne t
advertising" and had "applied for some Internet ads ... and [was] building a website ...
."(Id.at 13 .) Rice provides no evidence of these claims, however, in his Motion .
While a "single sale or shipment may be sufficient to support an application t o
register the mark," such sale or shipment must have "[1]the color of a bona fid e
transaction" and "[2][be] accompanied or followed by activities which would tend t o
indicate a continuing effort or intent to continue such use and place the product on th e
market on a commercial scale within a time demonstrated to be reasonable in th e
particular trade ."Dep 't. of Parks & Rec . for Cal. v. Bazaar del Mundo, Inc .,448 F .3 d
1118, 1126 (9th Cir . 2006) (quoting Chance,242 F .3d at 1157). Here, Defendant's tw o
sales on July 9, 2007, and April 21, 2009, lack the "color of a bona fide transaction,"see
id.,and appear to be a "mere sham attempt to conform with statutory requirements ."
Chance,242 F .3d at 1157 . Furthermore, these sales were not "accompanied or followe d
by activities that would tend to indicate a continuing effort or intent" by Rice to place an y
marked product or service in the market .See Dep 't . of Parks,448 F .3d at 1126 .
Although Rice registered two Internet domain names nearly three years ago, and no w
maintains the website www .safebeachnow .us "to further advertise and disseminate new s
and safety information," (Rice Decl .111)the website offers no products or services fo r
sale, nor does it contain any paid advertisements from any other commercial entity .Se e
Bosley Med. Inst. v . Kremer,403 F .3d 672, 677-78 (9th Cir . 2005) (finding that a websit e
is non-commercial when it offers no products or services for sale and is devoid of pai d
advertisements from commercial entities).
Even if Rice's two sales did not appear to be a "mere sham," based on the totalit y
of the circumstances and applying the Chance factors outlined above,(supra,Par t
III .B .I,) Rice's use of the Safe Beach Now mark does not satisfy the Lanham Act's "i n
commerce" requirement .See 15 U .S .C . §§ 1127, 1051(a), 1051(b). Rice claims to hav e
"endeavored to create a commercial enterprise by which safety information and othe r
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Case 2 :10-cv-03258-JST -PLA Document 31 Filed 10/28/10 Page 10 of 10 Page I D
#:28 4
UNITED STATES DISTRICT COUR T
CENTRAL DISTRICT OF CALIFORNI A
CIVIL MINUTES — GENERA L
Case No . CV 10-3258-JST (PLAx)
Date : October 28, 201 0
Title : Nell E . Langford v . Kevin P . Ric e
useful information could be developed ." (Rice Decl . ¶ 6 .) Rice fails to provide evidence ,
however, supporting this claim . Since his first use of the mark on July 9, 2007 — th e
alleged $20 cash sale of informational pamphlets – Rice has made just one other allege d
sale, also consisting of a $20 cash sale of informational pamphlets . (Rice Decl . Exh . 2 .)
In short, there is no genuine issue of material fact as to whether the `688 mark "ha s
actually been rendered in commerce ."Chance,242 F .3d at 1159 (internal quotatio n
marks omitted).
V . CONCLUSIO N
For the reasons stated above, the Court GRANTS Langford's Motion fo r
Summary Judgment and DENIES Rice's Motion for Summary Judgment . Pursuant to 1 5
U.S .C . § 1119, the Court ORDERS the United States Patent and Trademark Office t o
cancel Defendant Kevin P . Rice's registration of the Safe Beach Now mark, registratio n
number 3,776,688 .5 Langford is ordered to prepare the judgment consistent with thi s
order.
Initials of Preparer :en m
5 Because Langford does not allege common law trademark infringement in her Complaint, an d
because the Court now orders Rice's `688 mark cancelled, Langford's remaining arguments ar e
moot .
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