Trp Entertainment v. Barrie Cunningham , 637 F. App'x 334 ( 2016 )

FILED
NOT FOR PUBLICATION
FEB 16 2016
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
TRP ENTERTAINMENT, LLC, No. 13-16754
Plaintiff - Appellant, D.C. No. 2:08-cv-00579-LDG-
CWH
v.
BARRIE CUNNINGHAM, MEMORANDUM*
Defendant - Appellee.
Appeal from the United States District Court
for the District of Nevada
Lloyd D. George, Senior District Judge, Presiding
Submitted November 18, 2015**
San Francisco, California
Before: KLEINFELD, WARDLAW, and PAEZ, Circuit Judges.
TRP Entertainment, LLC (“TRP”) appeals the district court’s grant of partial
summary judgment to Barrie Cunningham. We have jurisdiction under 28 U.S.C.
§ 1291. We affirm and remand.
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
**
The panel unanimously concludes this case is suitable for decision
without oral argument. See Fed. R. App. P. 34(a)(2).
1. The district court correctly ruled that the term “The Rat Pack” is
generic in the context of live shows about or in tribute to members of the Rat Pack.
Generic terms primarily describe the type of product, rather than the producer, and
are ineligible for trademark protection. Filipino Yellow Pages, Inc. v. Asian
Journal Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir. 1999). Viewed in the light
most favorable to TRP, the record demonstrates that the term “The Rat Pack”
describes a type of live entertainment show and does not identify any particular
producer of a Rat Pack tribute show. First, the record indicates that at least twenty
producers of Rat Pack tribute shows had used the term “Rat Pack” in their shows’
titles as of the year 2008. See Advertise.com, Inc. v. AOL Advert., Inc., 616 F.3d
974, 980 (9th Cir. 2010). Second, TRP and its owner have used the term
generically, referring to Rat Pack performances as a “genre” of entertainment. See
Filipino Yellow Pages, 198 F.3d at 1150–51. Finally, numerous news articles
indicate that the media and other third parties have also used the term in a generic
sense. See id. at 1151. TRP did not rebut this evidence with sufficient evidence of
nongenericness. Therefore, the district court did not err in determining that “The
Rat Pack” is generic in the context of live shows about or in tribute to members of
the Rat Pack.
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2. The district court did not abuse its discretion in ordering a disclaimer
of the term “The Rat Pack” modifying TRP’s trademark registration. Under 15
U.S.C. § 1119, a court may order the modification of a trademark registration to
include a disclaimer of generic components. See id. §§ 1056(a), 1119. Because
the term “The Rat Pack” is a generic component of TRP’s registered trademark, the
district court was within its discretion to require a disclaimer of the term.
3. The district court did not err in implicitly denying TRP’s request to
deny or stay Cunningham’s motion for summary judgment until the completion of
discovery. See Fed. R. Civ. P. 56(d). Although TRP diligently pursued discovery
prior to Cunningham’s motion, TRP failed to demonstrate that further discovery
would have precluded partial summary judgment. See Kennedy v. Applause, Inc.,
90 F.3d 1477, 1482 (9th Cir. 1996). Accordingly, the district court’s denial of
TRP’s request was not erroneous.
We AFFIRM the district court’s grant of partial summary judgment and
REMAND with instructions to order the Director of the United States Patent and
Trademark Office to enter a disclaimer of the term “The Rat Pack” modifying
TRP’s Trademark Registration No. 2,640,066 that NO CLAIM IS MADE TO THE
EXCLUSIVE RIGHT TO USE “THE RAT PACK” APART FROM THE MARK
AS SHOWN.
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AFFIRMED; REMANDED.
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