Rearden LLC v. Rearden Commerce, Inc. ( 2012 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
REARDEN LLC; REARDEN 
PRODUCTIONS LLC; REARDEN
STUDIOS LLC; REARDEN PROPERTIES
LLC, California limited liability
No. 10-16665
companies; REARDEN, INC., a
California corporation,
Plaintiff-Appellants,
 D.C. No.
3:06-cv-07367-MHP
v. OPINION
REARDEN COMMERCE, INC., a
California corporation,
Defendant-Appellee.

Appeal from the United States District Court
for the Northern District of California, San Francisco
Marilyn H. Patel, Senior District Judge, Presiding
Argued and Submitted
December 8, 2011—San Francisco, California
Filed June 27, 2012
Before: Diarmuid F. O’Scannlain, Robert E. Cowen,* and
Marsha S. Berzon, Circuit Judges.
Opinion by Judge Cowen
*The Honorable Robert E. Cowen, Senior United States Circuit Judge
for the Third Circuit, sitting by designation.
7599
REARDEN LLC v. REARDEN COMMERCE, INC. 7603
COUNSEL
Deanne E. Maynard (argued), Washington, DC, for the appel-
lants.
Richard D. Harris (argued), Chicago, Illinois, for the appellee.
7604 REARDEN LLC v. REARDEN COMMERCE, INC.
OPINION
COWEN, Circuit Judge:
Plaintiffs Rearden LLC, Rearden Productions LLC, Rear-
den Studios LLC, Rearden, Inc., and Rearden Properties LLC
appeal from the orders of the United States District Court for
the Northern District of California granting summary judg-
ment in favor of Defendant Rearden Commerce, Inc. In two
rulings, the District Court granted Rearden Commerce’s
motions for summary judgment with respect to Appellants’
claims under the Lanham Act, the Anticybersquatting Con-
sumer Protection Act (“ACPA”), California’s common law of
trademark infringement, and the California Unfair Competi-
tion Law (“UCL”). Because there are genuine issues of mate-
rial fact, we vacate and remand for further proceedings
consistent with this opinion.
I.
Steve Perlman founded Rearden Steel, Inc. in May 1999.
He chose this name, at least in part, because it was a reference
to the “Hank Rearden” character from Ayn Rand’s novel,
Atlas Shrugged. This company changed its name to Rearden
Studios, Inc. in March 2002, Rearden, Inc. in October 2004,
and, finally, Rearden LLC in June 2006. Rearden LLC was
only the first of several Bay Area-based “Rearden” companies
started by Perlman. Other Rearden entities include: (1) Rear-
den Studios LLC (which was originally incorporated as Rear-
den Steel Entertainment, Inc. in March 2000, and then
changed its name to Rearden Entertainment, Inc. in March
2002, Rearden Studios, Inc. in February 2005, and Rearden
Studios LLC in June 2006); (2) Rearden Productions LLC
(which was incorporated as Look Aside Productions, Inc. in
March 2000, changed its name in the same month to Rearden
Steel Productions, Inc., and then became Rearden Produc-
tions, Inc. in March 2002 and Rearden Productions LLC in
June 2006); and (3) Rearden Properties LLC.
REARDEN LLC v. REARDEN COMMERCE, INC. 7605
Appellants have offices in San Francisco and Palo Alto,
and they collectively employ approximately one hundred
employees. They also operate a number of websites, including
“Rearden.com” (their main website, which has been in opera-
tion since April 2001), “ReardenSteel.com” (maintained since
November 1999), “ReardenStudios.com” (since March 2002),
and “ReardenLabs.com” (since May 2005).
“The Rearden companies are technology incubators and
artistic production companies.” Rearden LLC v. Rearden
Commerce, Inc., 597 F. Supp. 2d 1006, 1012 (N.D. Cal. 2009)
(“Rearden I”) (citation omitted). Simply put, an incubator
provides resources and support for the ground-up develop-
ment of start-up ventures. Such resources and support include
office space, personnel, equipment, IT infrastructure, funding,
credit guarantees, insurance, administrative services, benefits,
travel services, marketing, creative ideas, intellectual prop-
erty, and domain names. In turn, Appellants sometimes con-
tract with third parties in order to provide certain services. For
example, they have entered into a partnership with TriNet, a
human resources company, to provide their affiliates with
online access to payroll and benefits management services as
well as the ability to purchase such services as airline, hotel,
and dining reservations, car services, and event tickets.
Unlike Rearden Commerce, Appellants generally do not
distinguish between the various Rearden entities for the pur-
poses of this lawsuit. The District Court likewise frequently
referred to “the Rearden companies” or, simply, to “Rearden.”
It also pointed out that Rearden LLC, as the “flagship entity,”
actually provides the resources and support for the ground-up
development of new ventures. Id. at 1013. On the other hand,
Rearden Productions LLC and Rearden Studios LLC special-
ize in high definition and animated movie production ser-
vices. Finally, Rearden Properties LLC is a property
ownership and management company that rents three units in
a San Francisco building to the other Rearden entities.
7606 REARDEN LLC v. REARDEN COMMERCE, INC.
Appellants own a registered mark in the words “Rearden
Studios” as well as in a blue and black logo featuring a promi-
nent figure of an Amazon warrior and the words “REARDEN
STUDIOS.” Specifically, the company now known as Rear-
den LLC originally sought protection from the Patent and
Trademark Office (“PTO”) for this mark on April 20, 2002,
and registration was ultimately obtained on November 1,
2005. On May 31, 2007, Appellants filed “intent-to-use”
applications for the following marks: “Rearden,” “Rearden
Companies,” “Rearden Commerce Email,” “Rearden Personal
Email,” “Rearden Mobile,” “Rearden Wireless,” and “Rear-
den Communications.” In addition to alleging that Rearden
Commerce has infringed on their “Rearden Studios” mark and
name, Appellants claimed that Rearden Commerce has
infringed on a large number of other alleged “Rearden” marks
and names, including “Rearden,” “Rearden LLC,” “Rearden
Productions,” “Rearden Properties,” “Rearden Commerce
Email,” “Rearden Companies,” “Rearden Entertainment,”
“Rearden, Inc.,” “Rearden Labs,” “Rearden Personal Email,”
and “Rearden Steel.” Partly because Rearden Commerce has
frequently referred to itself simply as “Rearden,” the District
Court (following the example set by Appellants themselves)
believed it was appropriate to focus on the word “Rearden,”
which appears in each of the Appellants’ names.
The alleged infringer, Rearden Commerce, Inc., is a Silicon
Valley-based business concierge company. Simply put, it
offers a proprietary web-based platform called the “Rearden
Personal Assistant,” which links its clients, specifically busi-
nesses and professionals, to an online marketplace where they
then are able to search for, compare, purchase, and manage a
variety of business and travel-related services from more than
130,000 different vendors (including such well-known com-
panies as American Airlines, Hertz, Hilton, and WebEx). The
available services include air, car, hotel, and dining reserva-
tions, event tickets, web conferencing, and package shipping.
Patrick Grady founded Rearden Commerce as Gazoo Cor-
poration in 1999. He then changed its name to Talaris two
REARDEN LLC v. REARDEN COMMERCE, INC. 7607
years later. Grady also has an affinity for Rand’s “Hank Rear-
den” character. In August 2004, Talaris accordingly reserved
the California corporate name “Rearden, Inc.,” but it ulti-
mately lost this reservation to Appellants in October 2004.
After reserving the “Rearden Commerce” name in November
2004, Talaris officially changed its name to Rearden Com-
merce in January 2005. The renamed company then re-
launched its main website as “ReardenCommerce.com” in
February 2005 (a domain name that Rearden Commerce had
obtained in August 2004). On March 4, 2005, it formally filed
applications with the PTO for the “Rearden Commerce with
logo” and “Rearden Commerce” marks. The red and black
logo consists of a stylized letter “R” next to the words
“REARDEN commerceTM.” The applications were formally
published for opposition on July 4, 2006 and October 31,
2006, and Appellants thereby became aware of Rearden Com-
merce and its alleged marks.
Rearden Commerce also began to obtain a variety of Inter-
net domain names incorporating the word “Rearden.”1 A user
1
We have provided the following explanation of the domain name sys-
tem:
“Every computer connected to the Internet has a unique Inter-
net Protocol (“IP”) address. IP addresses are long strings of num-
bers, such as 64.233.161.147. The Internet [domain name system]
provides an alphanumeric shorthand for IP addresses. The hierar-
chy of each domain name is divided by periods. Thus, reading a
domain name from right to left, the portion of the domain name
to the right of the first period is the top-level domain (‘TLD’).
TLDs include .com, .gov, .net, and .biz. Each TLD is divided into
second-level domains identified by the designation to the left of
the first period, such as ‘example’ in ‘example.com’ or ‘exam-
ple.net.’ . . . Each domain name is unique and thus can only be
registered to one entity. . . .
A domain name is created when it is registered with the appro-
priate registry operator. A registry operator maintains the defini-
tive database, or registry, that associates the registered domain
names with the proper IP numbers for the respective domain
7608 REARDEN LLC v. REARDEN COMMERCE, INC.
accessing one of these domain names is then redirected to the
company’s primary website. In particular, Rearden Commerce
registered the following domain name “families” (e.g.,
“.com,” “.org”) on March 4, 2005: (1) “ReardenInc”; (2)
“ReardenCo”; and (3) “ReardenC.”2
On October 31, 2006, the same day it agreed to an exten-
sion of time for Appellants to file a possible opposition to its
applications with the PTO, Rearden Commerce, at the direc-
tion of General Counsel Gabriel Sandoval, registered the
“ReardenLLC.com” domain name. It then registered the
“ReardenLLC.net” domain name on November 6, 2006 and
the “ReardenMobile.com” and “MobileRearden.com” names
on November 10, 2006. As of December 1, 2006, Rearden
Commerce began directing individuals accessing the “Rear-
denLLC” domain names to its main website.
Appellants, in a letter dated November 7, 2006, informed
Rearden Commerce that their research revealed a conflict
between the parties’ marks and names and accordingly asked
for a response by November 17, 2006. According to Appel-
lants, no substantive response was provided, and they filed
suit on November 30, 2006.
name servers. The domain name servers direct Internet queries to
the related web resources. A registrant can register a domain
name only through companies that serve as registrars for second
level domain names. Registrars accept registrations for new or
expiring domain names, connect to the appropriate registry oper-
ator’s TLD servers to determine whether the name is available,
and register available domain names on behalf of registrants.
. . .”
Office Depot Inc. v. Zuccarini, 596 F.3d 696, 698-99 (9th Cir. 2010)
(alteration in original) (quoting Coalition for ICANN Transparency, Inc.
v. VeriSign, Inc., 464 F. Supp. 2d 948, 951-52 (N.D. Cal. 2006)).
2
There appears to be a dispute as to the registration date of the “Rear-
denC.com” domain name—namely whether it was registered on March 4,
2005 or June 12, 2007.
REARDEN LLC v. REARDEN COMMERCE, INC. 7609
In their initial complaint, Appellants advanced the follow-
ing claims against Rearden Commerce: (1) false designation
of origin under the Lanham Act, 15 U.S.C. § 1125; (2) com-
mon law trademark infringement; (3) violations of the Cali-
fornia UCL, Cal. Bus. & Prof. Code § 17200; and (4) false
advertising under California law, Cal Bus. & Prof. Code
§ 17500. Perlman subsequently discovered, among other
things, Rearden Commerce’s registration of the “Rearden-
LLC” domain names as well as the fact that it was directing
traffic from these domain names to its main website.
At a mediation session held on June 6, 2007, Appellants
demanded that Rearden Commerce cease its alleged cyber-
squatting. As a supposed sign of good faith, Rearden Com-
merce ceased directing traffic from the “ReardenLLC” and
the “ReardenInc” domain names to its main website. While
denying any wrongdoing on its part and refusing to assign the
domain names, Rearden Commerce “parked” the “Rearden-
LLC” domain names (i.e., a generic Network Solutions web
page was displayed on the screen to any person accessing
these domain names) until the case was resolved or the Dis-
trict Court directed otherwise.
On June 11, 2007, Appellants accused Rearden Commerce
of cybersquatting in connection with the “ReardenC.com”
domain name. They also asked Rearden Commerce to agree
to a stipulated preliminary injunction prohibiting the company
from using various “Rearden” domain names and from regis-
tering or using any domain name containing Appellants’ cor-
porate names, brands, trademarks, or trade names, with the
sole exception of the “ReardenCommerce” domain name. In
a June 19, 2007 letter from its attorneys, Rearden Commerce
refused to agree to this injunction. However, it did state that,
“[i]n that same spirit of compromise, and without any admis-
sions, Rearden Commerce would be willing to voluntarily
maintain the nondirecting nature of the ‘reardenllc.com,’
‘reardenllc.net,’ ‘reardeninc.net,’ ‘reardeninc.org,’ and ‘rear-
deninc.us’ domain names—provided that your client agrees to
7610 REARDEN LLC v. REARDEN COMMERCE, INC.
withdraw the trademark applications it has filed on May 31,
2007 directed to REARDEN COMMERCE EMAIL, REAR-
DEN PERSONAL EMAIL, REARDEN MOBILE, REAR-
DEN WIRELESS, REARDEN COMMUNICATIONS,
REARDEN COMPANIES, AND REARDEN—based upon
our clients’ marks and announced new products.” (ER208.)
On August 14, 2007, Appellants amended their complaint
to allege, inter alia, that Rearden Commerce’s purchase of
several domain names violated the ACPA, 15 U.S.C.
§ 1125(d), and constituted corporate name infringement and
unfair competition under California law. Appellants also
moved for a preliminary injunction, which was granted by the
District Court. Expressly rejecting Rearden Commerce’s
claim that the issue was now moot, the District Court enjoined
the company from directing traffic from the “ReardenLLC”
domain names and from registering any other domain name
containing the words “Rearden LLC.”
The parties filed cross-motions for summary judgment as to
Appellants’ trademark-related claims. In an extensive memo-
randum and order, the District Court granted Rearden Com-
merce’s motion for summary judgment and denied
Appellants’ motion.
After acknowledging that the federal and state trademark
claims were subject to the same legal standards, the District
Court stated that “[t]he first step in the analysis is to deter-
mine whether there is any genuine issue of material fact as to
whether the Rearden companies have used ‘Rearden’ in com-
merce so as to give rise to a protected right.” Rearden I, 597
F. Supp. 2d at 1016. The District Court called into question
whether there is any evidence at all showing that “Rearden
has marketed any products or services to consumers using the
Rearden name” and whether it has any actual customers. Id.
at 1017. It specifically turned to an exchange that occurred
between the parties’ attorneys at oral argument: “At oral argu-
ment, defense counsel stated that the Rearden companies have
REARDEN LLC v. REARDEN COMMERCE, INC. 7611
served only to incubate Perlman’s ideas and that no one actu-
ally pays Rearden to have their ideas incubated. Plaintiffs’
counsel did not challenge that characterization, other than to
state that outside persons ‘could’ come to Rearden.” Id. (cita-
tion omitted). Nevertheless, the District Court ultimately
assumed without deciding that there was a triable issue of fact
with respect to the “use in commerce” requirement because its
“likelihood of confusion” analysis sufficed to dispose of the
trademark claims.
After establishing a protectable interest in the trade or ser-
vice mark or name at issue, a plaintiff must then show that the
defendant’s use of the mark or name creates a likelihood of
confusion. The District Court turned to the eight factors iden-
tified by this Court in AMF, Inc. v. Sleekcraft Boats, 599 F.2d
341 (9th Cir. 1979), for assistance in determining whether
such confusion is likely: “(1) strength of the mark; (2) prox-
imity of the goods; (3) similarity of the marks; (4) evidence
of actual confusion; (5) marketing channels used; (6) type of
goods and the degree of care likely to be exercised by the pur-
chaser; (7) defendant’s intent in selecting the mark; and (8)
likelihood of expansion of the product lines.” Rearden I, 597
F. Supp. 2d at 1018 (citing Sleekcraft, 599 F.2d at 348-49).
The District Court found that two factors weigh—albeit
only “somewhat” so—in favor of a “likelihood of confusion”
finding. Specifically, the “Rearden” mark constitutes a sug-
gestive mark entitled to a certain degree of protection. The
District Court similarly acknowledged the similarities
between the name “Rearden Commerce” and the names of the
various Rearden companies.
On the other hand, the District Court explained at some
length why: (1) the “proximity of the goods” and “type of
goods and the degree of care likely to be exercised by the pur-
chaser” factors “strongly” weigh against a finding of a likeli-
hood of confusion; (2) the “marketing channels used” and
“likelihood of expansion of the product lines” factors weigh
7612 REARDEN LLC v. REARDEN COMMERCE, INC.
against any such finding; and (3) the “evidence of actual con-
fusion” factor does not support a “likelihood of confusion”
finding, and there is no basis for a reasonable finder of fact
to conclude that Rearden Commerce acted in bad faith.
Among other things, the District Court rejected Appellants’
various theories of why the parties should be considered to be
in competitive proximity. According to the District Court, no
reasonably prudent consumer seeking to obtain start-up sup-
port would mistake Rearden Commerce’s online marketplace
for Appellants’ incubation business. In turn, no prudent con-
sumer seeking a web-based means to search, compare, and
purchase a variety of business services would mistake Appel-
lants’ start-up incubation services for Rearden Commerce’s
online personal assistant program.
The District Court likewise concluded that it would be
unreasonable for a finder of fact to find that the relevant con-
suming public has experienced any real confusion. It
explained, inter alia, that nearly every example of purported
confusion in the record involved a vendor or an industry
insider of some sort, while the critical determination is
whether prospective purchasers are likely to be deceived,
regardless of the experiences of vendors, industry insiders,
and job-seekers. The District Court therefore went on to reject
Appellants’ argument that confusion on the part of investors,
vendors, and suppliers can support a finding of infringement
even in the absence of any evidence of actual consumer con-
fusion. Turning to the only alleged incidents appearing to
demonstrate confusion on the part of members of the relevant
consuming public (a Rearden Commerce customer known as
QubicaAMF expressed confusion as to which “Rearden” it
conducted business with after receiving a subpoena in this
lawsuit, and Appellants received dozens of misdirected e-
mails originally intended for Rearden Commerce, some of
which were sent by Rearden Commerce’s own customers),
the District Court believed that both examples (as well as the
various incidents involving vendors or industry insiders)
REARDEN LLC v. REARDEN COMMERCE, INC. 7613
merely involved, at best, confusion with respect to the parties’
names or affiliations and, possibly, simple confusion as to the
correct e-mail addresses.
The District Court ultimately concluded that no reasonable
jury could find, even after drawing any factual inferences in
the light most favorable to Appellants, that Rearden Com-
merce’s use of “Rearden” creates a strong likelihood of con-
fusion in the minds of the relevant consuming public. It then
concluded that, given its “likelihood of confusion” analysis,
Rearden Commerce’s use of the term “Rearden” could not be
considered “false and misleading” under California’s false
advertising statutory provision. Id. at 1027. The District Court
likewise granted summary judgment in favor of Rearden
Commerce as to the UCL claim “to the extent that [it] relies
upon trademark infringement, rather than cybersquatting.” Id.
The District Court subsequently denied Appellants’ motion
for reconsideration, expressly rejecting, among other things,
their contention that it improperly failed to consider non-
consumer confusion. Appellants and Rearden Commerce then
filed motions for summary judgment on the remaining
cybersquatting-related claims. For a second time, the District
Court granted Rearden Commerce’s motion and denied the
motion filed by Appellants.
The District Court began with the threshold question of
whether (and at what point in time) Appellants have made
sufficient use of their “Rearden” marks and names in the sale
or advertising of their services. The results were mixed.
On the one hand, it determined that “plaintiffs cannot estab-
lish a valid, protectable interest in any ‘Rearden’ mark prior
to July 2005.” Rearden LLC v. Rearden Commerce, Inc., No.
C 06-7367 MHP, 2010 WL 2650516, at *5 (N.D. Cal. Jul. 1,
2010) (“Rearden II”) (footnote omitted). Accordingly, sum-
mary judgment was granted in favor of Rearden Commerce
with respect to the multiple domain names acquired before
7614 REARDEN LLC v. REARDEN COMMERCE, INC.
that date. In the process, the District Court considered but
rejected various pieces of evidence as insufficient to satisfy
the “use in commerce” requirement (i.e., a trademark status
report, multiple newspaper articles mentioning Appellants, an
office lease agreement, an independent contractor agreement
for administrative, accounting, and information services
between Rearden Studios and Ice Blink Studios, e-mail corre-
spondence regarding services, instances in which Appellants
were credited with providing services for various production
projects, and merchandise distributed by Appellants).
According to the District Court, “[a] reasonable jury could,
however, find that plaintiffs used the ‘Rearden Studios’ mark
as early as July 2005.” Id. The District Court pointed to
Appellants’ entry in the July 2005 “Reel Directory” as evi-
dence that “could establish use or display ‘in the sale or
advertising of services’ along with the rendering of those ser-
vices in commerce.” Id. at *4 (quoting 15 U.S.C. § 1127).
Likewise, it indicated that Rearden Studios’s July 2006 agree-
ment to provide editing services to Electronic Arts could rep-
resent an example of rendering services in commerce. The
District Court therefore did not grant Rearden Commerce’s
summary judgment motion on “use in commerce” grounds as
to the domain names evidently obtained by the company after
July 2005: “ReardenLLC.com,” “ReardenLLC.net,” “Rear-
denMobile.com,” “MobileRearden.com,” and “Rear-
denC.com.”
The District Court then considered whether Rearden Com-
merce acted with a bad faith intent to profit with respect to
these five specific domain names. After acknowledging that
the most important grounds for finding bad faith consist of the
unique circumstances of the case, it applied the nine non-
exclusive statutory factors that may be considered in deter-
mining whether a party acted in bad faith.3 According to the
3
The non-exclusive factors consist of the following:
REARDEN LLC v. REARDEN COMMERCE, INC. 7615
District Court, the first, third, fifth, sixth, and eighth factors
favor Rearden Commerce. While the fourth and seventh fac-
(I) the trademark or other intellectual property rights of the per-
son, if any, in the domain name;
(II) the extent to which the domain name consists of the legal
name of the person or a name that is otherwise commonly used
to identify that person;
(III) the person’s prior use, if any, of the domain name in connec-
tion with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the
mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark
owner’s online location to a site accessible under the domain
name that could harm the goodwill represented by the mark,
either for commercial gain or with the intent to tarnish or dispar-
age the mark, by creating a likelihood of confusion as to the
source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the
domain name to the mark owner or any third party for financial
gain without having used, or having an intent to use, the domain
name in the bona fide offering of any goods or services, or the
person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false con-
tact information when applying for the registration of the domain
name, the person’s intentional failure to maintain accurate con-
tact information, or the person’s prior conduct indicating a pat-
tern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain
names which the person knows are identical or confusingly simi-
lar to marks of others that are distinctive at the time of registra-
tion of such domain names, or dilutive of famous marks of others
that are famous at the time of registration of such domain names,
without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s
domain name registration is or is not distinctive and famous
within the meaning of subsection (c) of this section.
15 U.S.C. § 1125(d)(1)(B)(i).
7616 REARDEN LLC v. REARDEN COMMERCE, INC.
tors are neutral (and the ninth factor is irrelevant), the second
factor “marginally” favors Appellants with respect to the
“ReardenLLC” domain names and favors Rearden Commerce
with respect to the other domain names.
The District Court accordingly granted summary judgment
in favor of Rearden Commerce as to the “ReardenMo-
bile.com,” “MobileRearden.com,” and “ReardenC.com”
domain names. While indicating that it could also conclude as
a matter of law on the basis of the statutory factors that the
“ReardenLLC” domain names were not acquired in bad faith,
it nevertheless addressed the unique circumstances of the
case. Relying in particular on the deposition testimony offered
by Rearden Commerce General Counsel Sandoval, the Dis-
trict Court determined that “a jury could find that [Rearden
Commerce] had not earlier considered the ReardenLLC
domain names during its initial registration frenzy, registered
them when it became aware of the potential domain names,
and registered them as part of its long-standing program.” Id.
at *9. According to the District Court, the company’s decision
to cease using the “Rearden LLC” domain names, its belief
that it is the proper mark owner, and its unconditional offer
(made at oral argument held in connection with the second
round of summary judgment motions) to transfer the domain
names to Appellants further demonstrate Rearden Com-
merce’s good faith. The District Court questioned why Appel-
lants chose to continue litigating this issue after Rearden
Commerce’s unconditional offer was made.
In the end, the District Court determined that no reasonable
jury could find the existence of bad faith with respect to any
of the domain names, even those registered prior to July 2005.
It also granted summary judgment to Rearden Commerce with
respect to the related UCL claim.
Judgment was entered dismissing the current action in its
entirety, and Appellants appealed.
REARDEN LLC v. REARDEN COMMERCE, INC. 7617
II.
The District Court possessed subject matter jurisdiction
over Appellants’ claims pursuant to 28 U.S.C. §§ 1331 and
1338. We have appellate jurisdiction under 28 U.S.C. § 1291.
We exercise de novo review over the District Court’s sum-
mary judgment rulings in favor of Rearden Commerce. See,
e.g., GoPets Ltd. v. Hise, 657 F.3d 1024, 1029 (9th Cir.
2011). “Viewing the evidence in the light most favorable to
[the non-moving party], we must determine whether there are
any genuine issues of material fact and whether the district
court correctly applied the relevant substantive law.” Id. (cit-
ing Bamonte v. City of Mesa, 598 F.3d 1217, 1220 (9th Cir.
2010)).
“Because of the intensely factual nature of trademark dis-
putes, summary judgment is generally disfavored in the trade-
mark arena.” Interstellar Starship Servs, Ltd. v. Epix Inc. 184
F.3d 1107, 1109 (9th Cir. 1999) (citing Levi Strauss & Co. v.
Blue Bell, Inc., 778 F.2d 1352, 1356 n.5 (9th Cir. 1985)); see
also, e.g., Fortune Dynamic, Inc. v. Victoria’s Secret Stores
Brand Mgmt., Inc., 618 F.3d 1025, 1029, 1031 (9th Cir.
2010); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1140 (9th Cir. 2002).
The parties filed cross-motions for summary judgment
before the district court. “When the district court disposes of
a case on cross-motions for summary judgment, we may
review both the grant of the prevailing party’s motion and the
corresponding denial of the opponent’s motion.” Redevelop-
ment Agency of Stockton v. BNSF Ry. Co., 643 F.3d 668, 672
(9th Cir. 2011) (citations omitted); see also, e.g., Pintos v.
Pac. Creditors Ass’n, 605 F.3d 665, 674 (9th Cir. 2010)
(“Cross-motions for summary judgment are evaluated sepa-
rately under [the] same standard.” (citation omitted)), cert.
denied, 131 S. Ct. 900 (2011). Because Appellants do not
challenge the District Court’s denial of their own summary
7618 REARDEN LLC v. REARDEN COMMERCE, INC.
judgment motions, we do not review that portion of the Dis-
trict Court’s decisions. Instead, we review only the District
Court’s grant of Rearden Commerce’s motions as to the trade-
mark infringement, cybersquatting, and UCL claims. Rearden
Commerce contends that Appellants, by filing their own
motions for summary judgment, thereby conceded the
absence of any genuine issues of material fact. However, we
do not believe that a plaintiff who moves for summary judg-
ment somehow gives up the right to argue that the defendant’s
own motion should have been denied due to genuine issues of
material fact. Because of differences in their legal arguments,
the parties can disagree as to which disputed facts are “materi-
al.”
III.
A. Appellants’ Federal Claims
1. The Lanham Act
[1] The parties generally agree on the basic elements of
Appellants’ federal causes of action. To prevail on its Lanham
Act trademark claim, a plaintiff “ ‘must prove: (1) that it has
a protectible ownership interest in the mark; and (2) that the
defendant’s use of the mark is likely to cause consumer con-
fusion.’ ” Network Automation, Inc. v. Advanced Sys. Con-
cepts, Inc., 638 F.3d 1137, 1144 (9th Cir. 2011) (quoting
Dep’t of Parks & Recreation v. Bazaar Del Mundo Inc., 448
F.3d 1118, 1124 (9th Cir. 2006)). “It is axiomatic in trade-
mark law that the standard test of ownership is priority of use.
To acquire ownership of a trademark it is not enough to have
invented the mark first or even to have registered it first; the
party claiming ownership must have been the first to actually
use the mark in the sale of goods or services.” Sengoku Works
Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996)
(citing 2 J. Thomas McCarthy, McCarthy on Trademarks &
Unfair Competition § 16.03 (3d ed. 1996)). Therefore, a party
REARDEN LLC v. REARDEN COMMERCE, INC. 7619
pursuing a trademark claim must meet a threshold “use in
commerce” requirement.4
a. The “Use In Commerce” Requirement
Defending the District Court’s application of this require-
ment, Rearden Commerce contends that Appellants’ trade-
mark claims must be rejected because Appellants’ use of the
“Rearden Studios” mark began at least five months after
Rearden Commerce had already begun using its own marks in
commerce. It further argues that summary judgment was
appropriately granted in its favor with respect to the various
domain names it acquired before July 2005. However, espe-
cially given our obligation to construe the evidence in the
light most favorable to the non-moving party as well as the
highly circumstantial nature of this threshold requirement, we
agree with Appellants that there are genuine issues of material
fact with respect to their use of the “Rearden” marks and names.5
4
Furthermore, the District Court properly observed that trademark and
trade name claims are governed by the same general principles. See, e.g.,
Accuride Int’l, Inc. v. Accuride Corp., 871 F.2d 1531, 1534-36 (9th Cir.
1989). We also note that trade and service marks are analyzed under the
same basic “likelihood of confusion” framework. See, e.g., Nutri/System,
Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 603-04 (9th Cir. 1987).
5
Appellants contend that the “use in commerce” issue with respect to
their trademark claim should be decided in the first instance by the District
Court. They do note that the District Court assumed in its summary judg-
ment decision addressing their trademark claim that there is a triable issue
of fact as to whether their use of the “Rearden” mark and name has consti-
tuted sufficient public use and proceeded to its dispositive “likelihood of
confusion” analysis. In contrast, the District Court did rule on “use in
commerce” grounds in its subsequent summary judgment ruling disposing
of Appellants’ cybersquatting claim. However, while it appropriately
acknowledged in its initial decision that courts have begun to accord pro-
tection to a particular trademark where the totality of the circumstances
suffices to establish a right to use that trademark, the District Court did not
really take into account this “totality of the circumstances” principle in its
subsequent ruling beyond mentioning in a footnote that protection prior to
actual sales may arise where the totality of the circumstances establishes
7620 REARDEN LLC v. REARDEN COMMERCE, INC.
The Lanham Act, as amended by the 1988 Trademark Law
Revision Act, states that “[t]he term ‘use in commerce’ means
the bona fide use of a mark in the ordinary course of trade,
and not made merely to reserve a right in a mark.” 15 U.S.C.
§ 1127. The statute goes on to provide that:
For purposes of this chapter, a mark shall be deemed
to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods
or their containers or the displays associ-
ated therewith or on the tags or labels
affixed thereto, or if the nature of the goods
makes such placement impracticable, then
on documents associated with the goods or
their sale, and
(B) the goods are sold or transported in
commerce, and
(2) on services when it is used or displayed
in 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 and a foreign
country and the person rendering the ser-
a right to use the trademark and then stating that Appellants never argued
that their rights vested through use prior to any actual sales. In the end,
we address the “use in commerce” issue because the merits are fully
briefed, the trademark and cybersquatting claims (which also implicate the
“use in commerce” question) do appear to be related, and Appellants
themselves ask for such a ruling in their opening brief. Nevertheless, we
do not overlook the somewhat unusual procedural circumstances present
here.
REARDEN LLC v. REARDEN COMMERCE, INC. 7621
vices is engaged in commerce in connection
with the services.
Id. As the parties and the District Court have recognized, this
case specifically implicates the alleged use of service marks.
“The Lanham Act grants trademark protection only to
marks that are used to identify and to distinguish goods or ser-
vices in commerce—which typically occurs when a mark is
used in conjunction with the actual sale of goods or services.”
Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174
F.3d 1036, 1051 (9th Cir. 1999). “The purpose of a trademark
is to help consumers identify the source, but a mark cannot
serve a source-identifying function if the public has never
seen the mark and thus is not meritorious of trademark protec-
tion until it is used in public in a manner that creates an asso-
ciation among consumers between the mark and the mark’s
owner.” Id.
In fact, the specific statutory language governing service
marks contemplates the existence of two elements that must
be satisfied in order to meet the “use in commerce” require-
ment. In short, “a mark shall be deemed to be in use in com-
merce . . . on services when it used or displayed in the sale
or advertising of services and the services are rendered in
commerce.” 15 U.S.C. § 1127; see also, e.g., Int’l Bancorp,
LLC. v. Societe des Bains de Mer et du Cercle des Etrangers
a Monaco, 329 F.3d 359, 373 (4th Cir. 2003) (“But in short,
section 1127 defines the term ‘use in commerce’ with respect
to services as being when a mark is ‘used or displayed in the
sale or advertising of services and the services are rendered
in commerce.’ As a consequence of the conjunctive com-
mand, it is not enough for a mark owner simply to render ser-
vices in foreign commerce for it to be eligible for trademark
protection. Nor is it enough for a mark owner simply to use
or display a mark in the sale or advertising of services to
United States consumers. Both elements are required, and
both elements must be distinctly analyzed.”); Chance v. Pac-
7622 REARDEN LLC v. REARDEN COMMERCE, INC.
Tel Teletrac Inc., 242 F.3d 1151, 1159 (9th Cir. 2001) (“For
both goods and services, the ‘use in commerce’ requirement
includes (1) an element of actual use, and (2) an element of
display.” (citing 15 U.S.C. § 1127)). Consistent with this dual
requirement, we observed in a trademark case that “mere
advertising by itself may not establish priority of use.” New
West Corp. v. NYM Co. of Cal., 595 F.2d 1194, 1200 (9th Cir.
1979) (citing Consumers Petroleum Co. v. Consumers Co. of
Ill., 169 F.2d 153 (7th Cir. 1948); Deltronics, Inc. v. H. L.
Dalis, Inc., 158 U.S.P.Q. 475 (1968)). We have, in turn, gone
on to apply this basic principle in the service mark context.6
See, e.g., Chance, 242 F.3d at 1156-60.
In determining whether the two prongs of the “use in com-
merce” test have been satisfied, we have (as the District Court
recognized in its initial summary judgment ruling) generally
followed a “totality of the circumstances” approach. This
approach turns on “ ‘evidence showing, first, adoption, and,
second, Use in a way sufficiently public to identify or distin-
guish the marked goods in an appropriate segment of the pub-
lic mind.’ ” New W. Corp., 595 F.2d at 1200 (quoting New
England Duplicating Co. v. Mendes, 190 F.2d 415, 418 (1st
Cir. 1951)). Our adoption of the “totality of the circum-
stances” approach reflects a movement away from the previ-
ous approach set forth in Sengoku Works Ltd. v. RMC
International., Ltd., 96 F.3d 1217 (9th Cir. 1996), in which
we suggested that parties must “actually use the mark in the
sale of goods or services, id. at 1219 (citing 2 McCarthy,
supra, § 16.03), to acquire ownership in that mark. We have
since indicated that evidence of actual sales, or lack thereof,
6
Appellants quote our statement in Nutri/System, Inc. v. Con-Stan
Industries, Inc., 809 F.2d 601 (9th Cir. 1987), that rights in a service mark
“ ‘may be acquired by use in advertising alone.’ ” (Appellants’ Brief at 43
(quoting Nutri/System, 809 F.2d at 604). We, however, made this passing
statement in the specific context of rejecting the theory that “the test for
determining infringement [of service marks acquired by advertising] must
differ from that applied to trademarks or service marks acquired by more
than advertising alone.” Id. at 604.
REARDEN LLC v. REARDEN COMMERCE, INC. 7623
is not dispositive in determining whether a party has estab-
lished “use in commerce” within the meaning of the Lanham
Act. Instead, we have acknowledged the potential relevance
of non-sales activity in demonstrating not only whether a
mark has been adequately displayed in public, but also
whether a service identified by the mark has been “rendered
in commerce,” 15 U.S.C. § 1127.
As we explained in Chance v. Pac-Tel Teletrac Inc., 242
F.3d 1151 (9th Cir. 2001):
In applying [the “totality of the circumstances”]
approach, the district courts should be guided in their
consideration of non-sales activities by factors we
have discussed, such as the genuineness and com-
mercial character of the activity, the determination of
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, the scope of the non-sales activity relative
to what would be a commercially reasonable attempt
to market the service, the degree of ongoing activity
of the holder to conduct the business using the mark,
the amount of business transacted, and other similar
factors which might distinguish whether a service
has actually been “rendered in commerce.”
Id. at 1159. Applying this approach, we determined that the
plaintiff ’s activities in promoting his lost and found tag ser-
vice, such as mailing 35,500 post cards but generating only
128 telephone responses and not a single sale, were insuffi-
cient to raise a triable issue of fact as to “use in commerce.”
Id. at 1159-60. On the other hand, we held that the defendant
had established first use of the mark in commerce because,
among other things, its predecessor used the mark as part of
its business name and the defendant had itself begun a public
relations campaign using the mark to introduce a new service
(namely a radio-frequency based system for tracking and
7624 REARDEN LLC v. REARDEN COMMERCE, INC.
recovering fleet vehicles), in which it sent out brochures to
potential customers, conducted interviews with major news-
papers resulting in a number of stories mentioning the mark,
and marketed the service through a slide presentation to
potential customers. Id. at 1160.
As Chance makes clear, non-sales activities such as solici-
tation of potential customers may be taken into account as
part of the “totality of the circumstances” inquiry. See, e.g.,
Dep’t of Parks & Recreation v. Bazaar del Mundo Inc., 448
F.3d 1118, 1125-27 (9th Cir. 2006); Chance, 242 F.3d at
1156-60; Brookfield, 174 F.3d at 1050-53; New W. Corp., 595
F.2d at 1199-1201. At the very least, such non-sales activities,
may be relevant in determining whether the “used or dis-
played in the sale or advertising of services,” 15 U.S.C.
§ 1127, element is satisfied. And, depending on the circum-
stances, the non-sales activity may also be relevant to assess-
ing whether a party has satisfied the “services are rendered in
commerce,” id., element.
[2] Accordingly, even if a party completes the initial sale
of its services only after its opponent has done so, that party
still could establish prior use of the contested mark based on
its prior non-sales activities. For instance, this Court observed
in Brookfield Communications, Inc. v. West Coast Entertain-
ment Corp., 174 F.3d 1036 (9th Cir. 1999), that “we have
indeed held that trademark rights can vest even before any
goods or services are actually sold if ‘the totality of [one’s]
prior actions, taken together, [can] establish a right to use the
trademark,’ ” id. at 1052 (alterations in original) (quoting New
W. Corp., 595 F.2d at 1200); see also, e.g., Bazaar del
Mundo, 448 F.3d at 1126 (“Although mere advertising by
itself may not establish priority of use, New West Corp., 595
F.2d at 1200, advertising combined with other non-sales
activity, under our ‘totality of the circumstances test,’ Pac-Tel
Teletrac, 242 F.3d at 1158, can constitute prior use in com-
merce.”); Chance, 242 F.3d at 1158-59 (discussing Brook-
field). The District Court recognized the existence of this
REARDEN LLC v. REARDEN COMMERCE, INC. 7625
“prior to actual sales” principle, especially in its initial sum-
mary judgment ruling. But, as the District Court likewise
noted, we have also made it clear that such non-sales activi-
ties still must be sufficiently public in nature to identify or
distinguish the goods or services in an appropriate segment of
the public mind as belonging to the owner. See, e.g., Brook-
field, 174 F.3d at 1052 (quoting New W. Corp., 595 F.2d at
1200).
Turning to the factual circumstances now before us, we
begin our analysis with the “services are rendered in com-
merce” element. 15 U.S.C. § 1127. Initially, Appellants point
to evidence in the record purportedly showing that they have
offered incubation-related services to a variety of start-up
companies, including: (1) securing $67 million in outside
funding for Rearden Steel Technologies in April 2001; (2)
spinning off Rearden Steel Technologies as Moxi Digital, Inc.
in January 2002; (3) providing a range of incubation services
to Ice Blink Studios LLC in 2004; (4) receiving $12.5 million
for the sale of a minority interest in a Rearden-incubated start-
up, OnLive, Inc., in 2007 (after Rearden Commerce began
using its own marks in commerce); and (5) providing incuba-
tion services to another company called MOVA LLC.
It does appear that, at the very least, many (and possibly
even all) of these incubated companies were actually created
by Perlman himself. For example, Perlman acknowledged that
he founded Rearden Steel Technologies in September 1999.
In turn, Rearden Commerce quite understandably draws atten-
tion to the District Court’s account in its first summary judg-
ment decision of what was said by counsel at oral argument—
namely, that Rearden Commerce’s attorney claimed that
Appellants have only ever incubated Perlman’s ideas and no
one has paid them to have their ideas incubated and that
Appellants’ attorney merely responded that outside persons
could come to his clients for incubation services. There is
even evidence in the record indicating that Ice Blink Studios
was one of Perlman’s own creations. If Appellants have only
7626 REARDEN LLC v. REARDEN COMMERCE, INC.
ever incubated new ventures started by Perlman and have
never provided or even offered their incubation services to
outsiders, their purported incubation business would fail to
meet either element of the “use in commerce” requirement. In
other words, “[i]f the Rearden entities merely use the name
amongst themselves,” Rearden I, 597 F. Supp. 2d at 1018,
they would fail to show use in a way sufficiently public in
nature to identify or distinguish the services in an appropriate
segment of the public mind, see, e.g., Brookfield, 174 F.3d at
1052.
[3] Nevertheless, we still believe that there are genuine
issues of material fact here as to whether Appellants have pro-
vided, at least once, incubation services to outside persons. In
discussing the incubation of Ice Blink Studios, Perlman stated
in a declaration that incubation services “were provided
and/or administered by the Rearden incubator, and in return,
Ice Blink Studios paid Rearden an ongoing fee.” (ER612-
ER613.) Appellants subsequently submitted to the District
Court a copy of the November 5, 2004 “Standard Independent
Contractor Agreement” entered by “Rearden Studios, Inc.”
and “Ice Blink Studios, LLC.” (ER255-ER257.) In exchange
for a monthly payment of $1750 plus expenses (with a maxi-
mum of $13,000), Rearden Studios, as an independent con-
tractor, expressly agreed to provide Ice Blink Studios with
administrative, accounting, and communications and technol-
ogy services from June 1, 2004 until December 31, 2004.7
[4] In any case, the record also contains more than enough
evidence that Appellants have provided non-incubation ser-
vices in order to preclude summary judgment on “services are
rendered in commerce” grounds. It appears that Appellants
participated in a 2001 movie project for Cinemax, and, in par-
ticular, one of the Rearden-named entities was expressly iden-
7
We further note that the District Court never mentioned the attorneys’
oral argument statements in its subsequent summary judgment ruling,
where it actually applied the “use in commerce” requirement.
REARDEN LLC v. REARDEN COMMERCE, INC. 7627
tified in the credits of the movie “How to Make a Monster”
as furnishing motion capture services. Significantly, this
movie was aired on the cable television channel in 2001, sev-
eral years before Rearden Commerce began using its own
marks, and then was released as a DVD. Appellants also sub-
mitted to the District Court a copy of an “Office License
Agreement,” dated August 11, 2003, between “Rearden Stu-
dios, Inc.” (as the licensor or landlord) and “Life Aquatic Pro-
ductions, Inc.” (as the licensee) (ER246-ER253). Turning to
transactions that evidently took place after 2004, we uncover
even more evidence of services rendered, including: (1) a July
10, 2006 “HD Editing Services Agreement” between “Elec-
tronic Arts” and “Rearden Studios LLC,” in which Rearden
Studios agreed to provide “Editorial services” in exchange for
a fee of $2000 and expenses (ER216-ER221); (2) the 2005-
2006 “Reel Directory,” published in July 2005, which, inter
alia, identified “Rearden Studios” (listed under the “Audio
Post Facilities,” “Video Post Facilities,” “HD Post Facilities,”
and “Film Editing Facilities” categories) as a “State-of-the-art
HDTV and audio editing studio” that “welcome[s] indepen-
dent filmmakers and innovative projects” (FER2-FER10); (3)
the cover of a DVD of a performance by Carlos Santana,
bearing a copyright date of 2005 and identifying “Rearden
Studios” as providing “DVD Design & Editorial” services
(ER214); (4) “a true and correct copy of a photograph of the
DVD cover of [Appellants’] 2005 project for independent
filmmaker Catherine Margerin entitled “Hope,” with “Rear-
den Studios” listed in the credits as providing editing services
(ER178 (citing ER223)); and (5) “true and correct copies of
a photograph of the DVD cover of [Appellants’] 2005 project
for independent filmmaker Benjamin Morgan entitled ‘Qual-
ity of Life’ and an email stating that [Appellants’] logo would
be included in the credits for the film” (ER178-ER179 (citing
ER226-ER228)). We note that the District Court pointed to
the Reel Directory entry as well as the agreement with Elec-
tronic Arts as evidence of “use in commerce.”
[5] We therefore conclude that there are genuine issues of
material fact with respect to the “services are rendered in
7628 REARDEN LLC v. REARDEN COMMERCE, INC.
commerce” element. Turning to the other element of the “use
in commerce” requirement, we have already addressed some
of the evidence indicating that Appellants’ “Rearden” marks
and names were “used or displayed in the sale . . . of services”
before 2005. Specifically, Appellants furnished incubation
services to Ice Blink Studios in 2004, production services to
Cinemax for the 2001 “How to Make a Monster” movie, and
office space to Life Aquatic Productions in 2003. The Rear-
den mark is, moreover, featured in the contracts or credits
associated with each of these transactions. Turning to non-
sales activities, Appellants also appeared to generate a signifi-
cant amount of publicity about their services and the “Rear-
den” marks and names, including: (1) numerous news stories
in various trade and other publications (Perlman’s amended
declaration submitted with the first round of summary judg-
ment motions referred to nineteen pre-2005 news stories, cop-
ies of which were attached to the declaration); (2)
appearances at various trade shows and publicity parties (such
as the 2000 launch party for Rearden Steel); and (3) the distri-
bution of “Rearden” merchandise (ranging from such items as
mugs and t-shirts bearing a “Rearden Steel” logo (identical to
the registered “Rearden Studios” logo except with the word
“Steel” in place of “Studios”) to Nintendo Game Boy “invita-
tions” distributed for the 2000 launch party, which were, inter
alia, branded with the “Rearden Steel” logo and displayed
graphics referring to “Rearden Steel”).
[6] In the end, we do not believe that a reasonable finder
of fact would be required to find in favor of Appellants with
respect to the “use in commerce” requirement. In particular,
we note that both Rearden Commerce as well as the District
Court do raise some reasonable points in Rearden Com-
merce’s favor. For instance, we have already mentioned the
District Court’s assertion that Appellants have only ever pro-
vided incubation services to Perlman himself and that no one
has actually paid them to have their ideas incubated. Rearden
Commerce further observes that Appellants did not file trade-
mark applications for the “Rearden,” “Rearden Companies,”
REARDEN LLC v. REARDEN COMMERCE, INC. 7629
“Rearden Commerce Email,” and “Rearden Personal Email”
marks until May 2007. The District Court and Rearden Com-
merce likewise have noted that Perlman claimed under oath,
in connection with the “Rearden Studios” trademark applica-
tions, that the “Rearden Studios” mark was not used until
February 23, 2005 (and the District Court specifically noted
that Appellants’ attorney claimed at oral argument in connec-
tion with the second round of summary judgment motions that
this mark was first used on this particular date); in contrast,
Appellee had already changed its name from “Talaris” to “Re-
arden Commerce” as of January 2005.
[7] Nevertheless, this Court is not currently sitting as the
finder of fact at this stage of the proceeding. We instead are
confronted with motions for summary judgment implicating
a highly fact-specific “totality of the circumstances” inquiry
as well as the generally applicable requirement to view all of
the evidence in the light most favorable to the non-moving
party. Given the record now before us, we conclude that genu-
ine issues of material fact preclude summary judgment in
favor of Rearden Commerce on “use in commerce” grounds.
b. “Likelihood of Confusion” and the Sleekcraft Factors
[8] The “likelihood of confusion” inquiry generally consid-
ers whether a reasonably prudent consumer in the marketplace
is likely to be confused as to the origin or source of the goods
or services bearing one of the marks or names at issue in the
case. See, e.g., Entrepreneur, 279 F.3d at 1140. To succeed,
a plaintiff must show more than simply a possibility of such
confusion. See, e.g., Rodeo Collection, Ltd. v. W. Seventh, 812
F.2d 1215, 1217 (9th Cir. 1987), abrogated on other grounds
by EBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393
(2006).
Here, Appellants have essentially advanced a theory of
unjust enrichment based on the purported confusion arising
from Rearden Commerce’s use of the “Rearden” name. See,
7630 REARDEN LLC v. REARDEN COMMERCE, INC.
e.g., Maier Brewing Co. v. Fleischmann Distilling Corp., 390
F.2d 117, 123 (9th Cir. 1968) (indicating that “the concept of
unjust enrichment, utilized ‘subject to the principles of
equity’, will properly serve to effectuate the policies of the
Lanham Act”). In other words, their trademark claim rests on
the notion that consumers could be more inclined to do busi-
ness with Rearden Commerce because they mistakenly
believe that its services are sponsored by or affiliated with
Appellants. See, e.g., id. at 122 (“The theory behind this mod-
ern advertising is that once the name or trade-mark of a prod-
uct is firmly associated in the mind of the buying public with
some desired characteristic- quality, social status, etc.- the
public will buy that product.”). If correct, Appellants could,
among other things, lose an opportunity to charge for the use
of their marks and names and also could suffer damage to
their reputation or goodwill if Rearden Commerce’s services
turn out to be of poor quality. See, e.g., id. (referring to possi-
bility that customers who believed they are buying product
manufactured by plaintiff may be so unhappy with product
that they will never deal with plaintiff again and that, in any
case, plaintiff also has right to exclusive use and control of
product’s reputation).
[9] Both the District Court and the parties themselves have
turned to the eight “likelihood of confusion” factors first enu-
merated in our 1979 Sleekcraft opinion. These eight factors
are: (1) strength of the mark; (2) proximity of the goods; (3)
similarity of the marks; (4) evidence of actual confusion; (5)
marketing channels used; (6) type of goods and the degree of
care likely to be exercised by the purchaser; (7) defendant’s
intent in selecting the mark; and (8) likelihood of expansion
of the product lines. Sleekcraft, 599 F.2d at 348-49.
It is well established that this multi-factor approach must be
applied in a flexible fashion. The Sleekcraft factors are
intended to function as a proxy or substitute for consumer
confusion, not a rote checklist. See, e.g., Network, 638 F.3d
at 1145. In other words, “we do not count beans.” Dream-
REARDEN LLC v. REARDEN COMMERCE, INC. 7631
werks Prod. Grp., Inc. v. SKG Studio, 142 F.3d 1127, 1129
(9th Cir. 1998). A determination may rest on only those fac-
tors that are most pertinent to the particular case before the
court, and other variables besides the enumerated factors
should also be taken into account based on the particular cir-
cumstances. See, e.g., Network, 638 F.3d at 1142, 1145, 1148-
49, 1153-54; Surfvivor Media, Inc. v. Survivor Prods., 406
F.3d 625 F.3d 625, 631 (9th Cir. 2005). For example, this
Court has pointed to three factors (“similarity of the marks,”
“proximity of the goods,” and the simultaneous use of the
Internet for marketing) as especially important in cases
involving similar domain names. See, e.g., Network, 638 F.3d
at 1148-49. While the “internet trinity” is weighed heavily in
domain cases, “it makes no sense to prioritize the same three
factors for every type of potential online commercial activi-
ty.” Id. at 1148-49. On the other hand, evidence of actual con-
fusion, at least on the part of an appreciable portion of the
actual consuming public, constitutes strong support for a
“likelihood of confusion” finding. See, e.g., Playboy, 354
F.3d at 1026. “[T]he result of the consideration of one factor
can influence the consideration of another.” Entrepreneur,
279 F.3d at 1145 n.9. In the end, “[t]his eight-factor analysis
is ‘pliant,’ illustrative rather than exhaustive, and best under-
stood as simply providing helpful guideposts.” Fortune, 618
F.3d at 1030 (quoting Brookfield, 174 F.3d at 1054).
Given the open-ended nature of this multi-prong inquiry, it
is not surprising that summary judgment on “likelihood of
confusion” grounds is generally disfavored. We have affirmed
summary judgment rulings based on the Sleekcraft factors in
the past. See, e.g., Au-Tomotive Gold, Inc. v. Volkswagen of
Am., Inc., 457 F.3d 1062, 1075 (9th Cir. 2006) (“[I]n cases
where the evidence is clear and tilts heavily in favor of a like-
lihood of confusion, we have not hesitated to affirm summary
judgment on this point.” (citing Nissan Motor Co. v. Nissan
Computer Corp., 378 F.3d 1002, 1019 (9th Cir. 2004)); Sur-
fvivor, 406 F.3d at 630-35. On the other hand, “[w]e have
cautioned that district courts should grant summary judgment
7632 REARDEN LLC v. REARDEN COMMERCE, INC.
motions regarding the likelihood of confusion sparingly, as
careful assessment of the pertinent factors that go into deter-
mining likelihood of confusion usually requires a full record.”
Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 901-02
(9th Cir. 2002) (citing Clicks Billiards Inc. v. Sixshooters Inc.,
251 F.3d 1252, 1265 (9th Cir. 2001); Interstellar, 184 F.3d at
1109), superseded by statute on other grounds, Trademark
Uniform Dilution Revision Act of 2006, 15 U.S.C. § 1125, as
recognized in Levi Strauss & Co. v. Abercrombie & Fitch
Trading Co., 633 F.3d 1158 (9th Cir. 2011). In other words,
“[b]ecause the likelihood of confusion is often a fact-intensive
inquiry, courts are generally reluctant to decide this issue at
the summary judgment stage.” Au-Tomotive, 457 F.3d at 1075
(citing Thane, 305 F.3d at 901-02)); see also, e.g., Fortune,
618 F.3d at 1039.
Rearden Commerce defends the District Court’s Sleekcraft
analysis, specifically challenging Appellants’ contention that
the District Court merely tallied up the factors and applied
them in an artificially mechanical fashion. The District Court
certainly conducted a thorough and careful examination, and
both the District Court as well as Rearden Commerce itself
have raised some reasonable points in Rearden Commerce’s
favor. A reasonable jury could ultimately determine that sev-
eral of the Sleekcraft factors weigh against Appellants (or, at
least, do not support a finding of likelihood of confusion) and
that, in the end, a verdict must be entered in favor of Rearden
Commerce pursuant to the “likelihood of confusion” require-
ment. There, nevertheless, are genuine issues of material fact
present in this case with respect to at least some of the factors
as well as the overall Sleekcraft inquiry itself. The District
Court acknowledged that two factors—namely the “strength
of the mark” and “similarity of the marks” factors—weigh
“somewhat” in favor of Appellants. Indeed, a reasonable jury
could give great weight to these two factors, especially when
viewed together. We also determine that there are genuine
issues of material fact with respect to the “proximity of the
goods,” “evidence of actual confusion,” “marketing channels
REARDEN LLC v. REARDEN COMMERCE, INC. 7633
used,” and “likelihood of expansion of the product lines” fac-
tors.
i. “Strength of the Mark” and “Similarity of the
Marks”
The District Court recognized that the strength of a mark
depends, at least in part, on where it falls on a spectrum rang-
ing from the “arbitrary” to the “generic.” See, e.g., Surfvivor,
406 F.3d at 631-32. An arbitrary mark consists of “common
words that have no connection with the actual product.” Id.
(citing Dreamwerks, 142 F.3d at 1130 n.7). On the other
hand, the less protected “suggestive” category requires the
exercise of some imagination to associate the mark with the
good or service. See, e.g., id. at 632.
The District Court properly characterized “Rearden” as a
“suggestive” mark. Contrary to Appellants’ claim that the
mark is “arbitrary” in nature, it takes only a small exercise of
imagination to associate this name, made famous in the busi-
ness community (and elsewhere) as an image or paragon of
entrepreneurial success by Rand’s highly successful and influ-
ential novel, with the incubation of start-up enterprises:
“[A]t a small distance of miles, the words of a neon
sign stood written on the blackness of the sky:
REARDEN STEEL. . . . [Hank Rearden] thought
that in the darkness of this night other signs were
lighted over the country: Rearden Ore—Rearden
Coal—Rearden Limestone. He thought of the days
behind him. He wished it were possible to light a
neon sign above them, saying: Rearden Life.”
Rearden I, 597 F. Supp. 2d at 1019 (alteration in original)
(quoting Ayn Rand, Atlas Shrugged 37 (Signet 1992)).
The District Court also appropriately rejected Rearden
Commerce’s argument that Appellants’ marks are especially
7634 REARDEN LLC v. REARDEN COMMERCE, INC.
weak because over 840 other companies use the word “Rear-
den,” or some variation thereof, in their respective names.
Only four of these entities identify themselves as technology
or engineering firms, and each of these four companies has
headquarters outside of California, lacks an Internet presence,
and employs fewer than five people. See, e.g., M2 Software,
Inc. v. Madacy Ent., 421 F.3d 1073, 1087-88 (9th Cir. 2005)
(indicating that district court properly excluded evidence of
unrelated third party marks).
[10] According to the District Court, the “Rearden” mark
is “relatively strong,” and this Sleekcraft factor thereby
weighs “somewhat in favor of finding a likelihood of confu-
sion.” Rearden I, 597 F. Supp. 2d at 1020. A reasonable
finder of fact could accord more significant weight to this fac-
tor than did the District Court, particularly in light of evidence
that Appellants have undertaken efforts to promote the mark
in association with their services; we have observed that
“ ‘advertising expenditures can transform a suggestive mark
into a strong mark.’ ” Fortune, 618 F.3d at 1034 (quoting
Brookfield, 174 F.3d at 1058); see, e.g., id. at 1034-35 (“Here,
Fortune proffered evidence indicating that it spends approxi-
mately $350,000 yearly marketing its footwear and that it sold
12,000,000 pairs of DELICIOUS shoes from 2005 to 2007. In
addition, Fortune has advertised its DELICIOUS footwear in
a variety of popular magazines . . . . Whatever its ultimate
force, this evidence is sufficient to make the relative commer-
cial strength of the DELICIOUS mark a question for the
jury.”).
Turning to the related “similarity of the marks” factor, the
District Court appropriately looked to sight, sound, and mean-
ing and recognized that any similarities weigh more heavily
than differences. See, e.g., Sleekcraft, 599 F.2d at 351. While
it properly observed that no ordinarily prudent consumer
could be confused by the parties’ very different logos, it high-
lighted the apparent similarities between the names them-
selves. It therefore noted the prominence of the word
REARDEN LLC v. REARDEN COMMERCE, INC. 7635
“Rearden” and the fact that, like “Rearden Commerce,” many
of Appellants’ own names consist of just two words (exclud-
ing the corporate identifiers). The District Court also observed
elsewhere in its initial summary judgment decision that Rear-
den Commerce has often referred to itself simply as “Rear-
den.” See, e.g., Entrepreneur, 279 F.3d at 1144 (stating that
marks should be considered as they appear in marketplace).
In the end, the District Court acknowledged that this factor
weighs “somewhat” in favor of a “likelihood of confusion”
finding. Rearden I, 597 F. Supp. 2d at 1023.
[11] A reasonable juror could conclude that the “strength
of the marks” and “similarity of the marks” factors weigh
more than just “somewhat” in favor of finding a likelihood of
confusion. Granted, it is common for multiple companies
offering different goods and services to use similar names and
marks (the District Court provided as an example the fact that
several well-known companies share the name “Johnson”
(Johnson & Johnson, Johnson Publications, Howard John-
son’s, Johnson Controls, Johnson Products, and S.C. John-
son)). However, a reasonable jury could still determine that
this factor weighs significantly in Appellants’ favor. We fur-
ther note that the District Court did not address the possible
cumulative effect of its determinations regarding the “strength
of the mark” and “similarity of the marks” factors. See, e.g.,
Entrepreneur, 279 F.3d at 1145 n.9 (stating inter alia that, “if
the trademark holder’s mark were strong, the fact that a con-
sumer would likely notice the difference between two marks
might not suffice for a finding that the marks are dissimilar”).
ii. “Proximity of the Goods”
Initially, Appellants are correct that they need not establish
that the parties are direct competitors to satisfy the proximity
or relatedness factor. Related goods (or services) are those
“ ‘which would be reasonably thought by the buying public to
come from the same source if sold under the same mark.’ ”
Sleekcraft, 599 F.2d at 348 n.10 (citations omitted). As the
7636 REARDEN LLC v. REARDEN COMMERCE, INC.
District Court noted, the mere existence of some similarity
does not necessarily “render the businesses so closely related
as to suggest strongly a likelihood of confusion.” Entrepre-
neur, 279 F.3d at 1148. However, we have also adopted a
rather flexible approach to the whole notion of competition.
For instance, this Court concluded that two entities “are not
properly characterized as non-competitors” where “both com-
panies offer products and services relating to the entertain-
ment industry generally, and their principal lines of business
both relate to movies specifically and are not as different as
guns and toys or computer circuit boards and the Rocky Hor-
ror Picture Show.” Brookfield, 174 F.3d at 1056 (citations
omitted); see also, e.g., Dreamwerks, 142 F.3d at 1129-32
(indicating that finder of fact could find proximity where
plaintiff sponsored science fiction conventions and defendant
was well-known movie studio because, among other things,
consumers could easily suspect that studio sponsored conven-
tions at which its merchandise was sold); Am. Int’l Grp., Inc.
v. Am. Int’l Bank, 926 F.2d 829, 832 (9th Cir. 1991) (stating
that, “[a]lthough the parties are not direct competitors,” their
respective financial services “may be sufficiently ‘comple-
mentary’ or ‘related’ that the public is likely to be confused
as to the source of the services” (citations omitted)).
[12] Turning to the underlying record, Appellants quite
properly cite to evidence that could support a finding that the
services offered by the parties “would be reasonably thought
by the buying public to come from the same source if sold
under the same mark.” Sleekcraft, 599 F.2d at 348 n.10 (cita-
tions omitted). Construed in the light most favorable to
Appellants, the record contains evidence suggesting that the
parties have, among other things: (1) offered arguably similar
technology platforms to their respective customers (i.e.,
Appellants have offered an online means, as part of their incu-
bation business, for clients to arrange business, travel, and
other services through TriNet while, on the other hand, Rear-
den Commerce has provided businesses with an online mar-
ketplace for businesses to purchase and manage similar
REARDEN LLC v. REARDEN COMMERCE, INC. 7637
services from a variety of third parties);8 (2) attended the same
trade shows; (3) appeared in the same publications; and (4)
relied on private investment funding from the same sources.
[13] We acknowledge that a reasonable jury could still rule
against Appellants with respect to the “proximity of the
goods” factor for the various reasons singled out by the Dis-
trict Court as well as Rearden Commerce. For instance, a rea-
sonable finder of fact could possibly determine that an
incubator cannot really be compared to an online business
concierge marketplace. Nevertheless, after viewing the evi-
dence in the light most favorable to the non-moving parties,
we are satisfied that there are genuine issues of material fact
with respect to this factor.
iii. “Evidence of Actual Confusion”
With respect to the “evidence of actual confusion” factor,
Appellants claim that the District Court committed reversible
error by refusing to take into account evidence of non-
consumer confusion in the present context. While we reject
their theory of so-called “non-purchasing consumers,” we
ultimately agree that the District Court should have taken into
account evidence of relevant non-consumer confusion in its
analysis and that, taking such evidence into consideration,
there are genuine issues of material fact with respect to this
particular factor.
[14] It is well established that the particular field or market
in which trademark protection is being sought must be taken
into account. See, e.g., Toyota Motor Sales, U.S.A., Inc. v.
Tabari, 610 F.3d 1171, 1176 (9th Cir. 2010). Purportedly
8
There is some indication that Appellants’ efforts in this area have cen-
tered on developing IT infrastructure underlying a platform, application,
or website managed by TriNet. In this respect, the services offered by
Rearden Commerce may be more similar to those offered by TriNet rather
than by Appellants.
7638 REARDEN LLC v. REARDEN COMMERCE, INC.
relying on this principle, Appellants argue that they have
offered “incubation, technology development, and production
services to a variety of companies spanning across a range of
industries.” (Appellants’ Brief at 24 (citing ER612-ER615).)
Appellants emphasize that incubation services, by definition,
are not directed towards the general public and that the incu-
bation business cannot be compared to more traditional busi-
nesses offering goods and services to end purchasers. For
instance, start-up ventures typically deal with investors, other
businesses seeking strategic partnerships, marketers, and gen-
eral business strategists. Various outlets, like trade shows and
trade publications, are therefore critical to a successful incu-
bation process as well as to a successful incubation business.
According to Appellants, these various groups (i.e., investors,
businesses seeking strategic partnerships, marketers, strate-
gists, vendors, suppliers, and media outlets) represent the “rel-
evant consuming groups” or the “non-purchasing consumers”
for purposes of their current trademark claim. In other words,
they assert that an incubator essentially “sells” the start-up
venture itself to investors and other interested parties.
We do not accept Appellants’ open-ended and unsupported
theory of “non-purchasing consumers.” As Rearden Com-
merce points out, their “incubator” model is distinct from
their more traditional movie production and property manage-
ment services. Appellants also embrace an overly expansive
understanding of the relevant market. It is difficult to see who
exactly could not be included as a “non-purchasing consum-
er” under their interpretation of this concept, which appar-
ently includes those who sell to, as well as buy from, the
entity. They cite to no case law or relevant authority expressly
recognizing such an open-ended concept. On the contrary,
they actually acknowledge that “[t]he relevant group for
showing confusion is the ‘consuming public’ for the particular
good or service—that is, consumers who are actually in the
market for the good or service at issue.” (Appellants’ Brief at
23 (citing Thane, 305 F.3d at 903.) Just as the relevant con-
sumer in a case involving a website selling luxury cars is a
REARDEN LLC v. REARDEN COMMERCE, INC. 7639
reasonably prudent person accustomed to shopping online, see
Toyota, 610 F.3d at 1176, the relevant consumer for purposes
of an incubation business is the start-up enterprise that hires
(and pays) the incubator for its various services.
[15] We also recognize that a court conducting a trademark
analysis should focus its attention on the relevant consuming
public. “ ‘The test for likelihood of confusion is whether a
“reasonably prudent consumer” in the marketplace is likely to
be confused as to the origin of the good or service bearing one
of the marks.’ ” Entrepreneur, 279 F.3d at 1140 (quoting
Dreamwerks, 142 F.3d at 1129). Accordingly, “ ‘[t]rademark
infringement protects only against mistaken purchasing deci-
sions and not against confusion generally.’ ” Bosley Med.
Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005)
(emphasis omitted) (quoting Lang v. Ret. Living Publ’g Co.,
949 F.2d 576, 582-83 (2d Cir. 1991)); accord Accuride Int’l,
Inc. v. Accuride Corp., 871 F.2d 1531, 1535 & n.5 (9th Cir.
1989) (explaining that “likelihood of confusion” analysis
must remain focused “upon confusion in the marketplace, as
opposed to generalized public confusion,” and that “[u]nless
prospective purchasers of AII ‘s goods are confused, there is
. . . no cause of action”). In the end, “consumer confusion”
constitutes “the sine qua non of trademark infringement.”
Entrepreneur, 279 F.3d at 1142; see also id. at 1149 (same);
id. at 1154 (describing consumer confusion as “linchpin” of
trademark infringement).
[16] Consistent with this principle, litigants usually satisfy
the “likelihood of confusion” test by providing direct evi-
dence of consumer confusion. Nevertheless, we conclude that
non-consumer confusion may also be relevant to the “likeli-
hood of confusion” inquiry in three specific and overlapping
circumstances—namely where there is confusion on the part
of: (1) potential consumers; (2) non-consumers whose confu-
sion could create an inference that consumers are likely to be
confused; and (3) non-consumers whose confusion could
influence consumers. In all three instances, the non-consumer
7640 REARDEN LLC v. REARDEN COMMERCE, INC.
confusion bears a relationship to the existence of confusion on
the part of consumers themselves.9
Our recognition that non-consumer confusion can properly
factor into the “likelihood of confusion” inquiry is consistent
with circuit precedent. In Surfvivor Media, Inc. v. Survivor
Productions, 406 F.3d 625 (9th Cir. 2005), we stated that,
“[i]n analyzing this [“evidence of actual confusion” Sleek-
craft] factor, we may consider whether merchants and non-
purchasing members of the public, as well as actual consum-
ers, were confused,” id. at 633 (citing Americana Trading Inc.
v. Russ Berrie & Co., 966 F.2d 1284, 1289 (9th Cir. 1992);
Karl Storz Endoscopy-America, Inc. v. Surgical Tech., Inc.,
285 F.3d 848, 854 (9th Cir. 2002)). Likewise, in Karl Storz
Endoscopy-America, Inc. v. Surgical Tech., Inc., 285 F.3d 848
(9th Cir. 2002), we relied in part on a Federal Circuit opinion,
which noted that the 1962 amendments to the Lanham Act
eliminated language limiting the statute’s scope to confusion
on the part of purchasers and went on to hold that an action
can be based on the confusion of non-purchasers such as indi-
viduals who simply observe the purchaser wearing an accused
article of clothing, id. at 854 (discussing Payless Shoesource,
Inc. v. Reebok Int’l Ltd., 998 F.2d 985 (Fed. Cir. 1993)). We
now explain our bases for concluding that non-consumer con-
9
We need not—and do not—decide whether there are other circum-
stances or grounds for taking into account non-consumer confusion. For
example, we do not decide whether confusion on the part of such non-
consumers as vendors and suppliers, potential employees, and investors
should be considered merely because such confusion could affect the
trademark holder’s business, goodwill, or reputation. See, e.g., Beacon
Mut. Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8, 10-11, 15-18 (1st Cir.
2004) (holding, inter alia, that “likelihood of confusion” inquiry is not lim-
ited to actual or potential purchasers but also encompasses other persons
whose confusion could either influence purchasing decisions or, alterna-
tively, present significant risk to trademark owner’s sales, goodwill, or
reputation). We simply recognize that the confusion of vendors, suppliers,
potential employees, investors, and similar groups of non-consumers could
be relevant on the three specific grounds set forth in this opinion.
REARDEN LLC v. REARDEN COMMERCE, INC. 7641
fusion can be relevant to the “likelihood of confusion” inquiry
in the aforementioned three circumstances.
As an initial matter, it is well established that confusion on
the part of potential consumers may be relevant. In Accuride
International, Inc. v. Accuride Corp., 871 F.2d 1531 (9th Cir.
1989), for example, we acknowledged that the “likelihood of
confusion” inquiry must remain focused on confusion on the
part of “prospective purchasers,” id. at 1535 & n.5. “The criti-
cal focus of the likelihood of confusion inquiry,” we con-
cluded in that case (which was cited by the District Court), is
“the effect of defendant’s usage of the name on prospective
purchasers in the marketplace.” Id. at 1535 (citing Alpha
Indus., Inc. v. Alpha Steel Tube & Shapes, Inc., 616 F.2d 440,
444-45 (9th Cir. 1980); Inc. Publ’g Corp. v. Manhattan Mag-
azine, Inc., 616 F. Supp. 370, 386 (S.D.N.Y. 1985); Sears,
Roebuck & Co. v. Sears Fin. Network, Inc., 576 F. Supp. 857,
861 (D.D.C. 1983)).
We have also recognized, in a closely related context, that
non-consumer confusion can serve as a proxy for consumer
confusion. Our recent decision in TrafficSchool.com, Inc. v.
Edriver Inc., 653 F.3d 820 (9th Cir. 2011), involved plaintiff
companies who sold traffic school and driver’s education
courses, id. at 828. The plaintiffs brought Lanham Act claims
for unfair competition and false advertising against the defen-
dants, who owned DMV.org, a for-profit website offering ser-
vices in “renewing driver’s licenses, buying car insurance,
viewing driving records, beating traffic tickets, registering
vehicles, [and] even finding DUI/DWI attorneys.” Id. In
assessing whether the defendants’ website was “likely to mis-
lead consumers into thinking DMV.org was affiliated with a
government agency,” id. at 827, we acknowledged not only
evidence of “actual consumer confusion,” id. at 828, but also
confusion on the part of non-consumers like law enforcement
officials and state DMV employees, id. Implicit in our atten-
tion to the non-consumer evidence was the following reason-
ing: if even these parties, who presumably have much more
7642 REARDEN LLC v. REARDEN COMMERCE, INC.
familiarity with governmental DMVs, are confused about the
defendants’ website, then it is probable that consumers, who
have less familiarity, would also experience confusion. We
note that the degree to which non-consumer confusion can
serve as a proxy for consumer confusion depends on how the
groups are situated in relation to one another. For example,
whereas confusion on the part of a sophisticated non-
consumer may reasonably signal that less sophisticated con-
sumers would also be confused, confusion on the part of a
non-sophisticated non-consumer may shed little or no light on
whether a sophisticated consumer would likewise be con-
fused.
In addition, our prior decisions support the proposition that
non-consumer confusion can bear on the “likelihood of confu-
sion” inquiry insofar as non-consumer confusion can contrib-
ute to consumer confusion. In Storz, we discussed the concept
of “post-purchase confusion.” We explained that “[t]he law in
the Ninth Circuit is clear that ‘post-purchase confusion,’ i.e.,
confusion on the part of someone other than the purchaser
who, for example, simply sees the item after it has been pur-
chased, can establish the required likelihood of confusion
under the Lanham Act.” Storz, 285 F.3d at 854 (citing Acad.
of Motion Picture Arts & Scis. v. Creative House Promotions,
Inc., 944 F.2d 1446, 1456 (9th Cir. 1991); Levi Strauss & Co.
v. Blue Bell, Inc., 632 F.2d 817, 822 (9th Cir. 1980)). Ulti-
mately, the Court in Storz determined that there were genuine
issues of material fact as to “likelihood of confusion” because
the record contained, among other things, evidence indicating
confusion on the part of the surgeons who actually handled
the endoscopes at issue in the case (which were extensively
reconstructed at the hospitals’ orders by the defendant and yet
still bore the plaintiff manufacturer’s own mark) and who
then could influence their hospitals’ purchasing decisions. Id.
at 855; see also, e.g., Americana Trading Inc. v. Russ Berrie
& Co., 966 F.2d 1284, 1289 (9th Cir. 1992) (observing that
plaintiff raised genuine issue of material fact as to actual con-
fusion when, in addition to submitting letter from confused
REARDEN LLC v. REARDEN COMMERCE, INC. 7643
customer, it proffered testimony “that retailers were confused
about the source of [the parties’ stuffed] bears”); Sleekcraft,
599 F.2d at 352 (asserting that “confusion among retailers and
consumers is relevant”).
Recognizing the potential relevance of non-consumer con-
fusion accords with this Circuit’s precedent, which reflects a
flexible approach to assessing “likelihood of confusion,” as
embodied in the highly fact-specific Sleekcraft analysis. In
addition, it appears to be a matter of basic common sense to
recognize the very real possibility that confusion on the part
of at least certain non-consumers could either: (1) turn into
actual consumer confusion (i.e., potential consumers); (2)
serve as an adequate proxy or substitute for evidence of actual
consumer confusion (i.e., non-consumers whose confusion
could create an inference of consumer confusion); or (3) oth-
erwise contribute to confusion on the part of the consumers
themselves (i.e., non-consumers whose confusion could influ-
ence consumer perceptions and decision-making).
As Appellants further point out, such an approach appears
to be consistent with rulings from other courts.10 They also
10
See, e.g., Mid-State Aftermarket Body Parts, Inc. v. MQVP, Inc., 466
F.3d 630, 634 (8th Cir. 2006) (“‘Confusion is relevant when it exists in
the minds of persons in a position to influence the purchasing decision or
persons whose confusion presents a significant risk to the sales, goodwill,
or reputation of the trademark owner.’ Beacon Mut. Ins. Co. v. OneBeacon
Ins. Group, 376 F.3d 8, 10 (1st Cir. 2004). Here, viewing the evidence
most favorably to MQVP, as we must, Mid-State engaged in the unautho-
rized use of the MQVP® mark for the obvious purpose of confusing,
indeed deceiving, end users into believing they are buying qualified
‘MQVP parts’ that are fully validated under the MQVP program, with all
its attendant services. The deception, if successful, would discourage com-
peting vendors from paying MQVP to participate in the full program,
thereby destroying the market for the very basket of services the MQVP®
mark was intended to protect.”); Beacon, 376 F.3d at 9-11, 15-18 (holding,
inter alia, that “likelihood of confusion” inquiry is not limited to actual or
potential purchasers but also encompasses other persons whose confusion
could influence purchasing decisions or could present significant risk to
7644 REARDEN LLC v. REARDEN COMMERCE, INC.
appropriately note that a leading trademark law treatise
observed that “[d]amage to reputation and good will can be
triggered by confusion among non-purchasers” and that “ac-
tionable confusion need not be limited to potential purchasers
whose confusion could cause a direct loss of sales.” 4 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:5 (4th ed. 2010).
We now turn to the evidence of consumer and non-
consumer confusion presented by Appellants. We begin with
trademark owner’s sales, goodwill, or reputation and determining that
finder of fact could infer that misdirected communications demonstrated
confusion among companies purchasing parties’ insurance policies, their
covered employees, consulting physicians and other health care providers,
third-party insurers, attorneys for claimant employees, and courts handling
such claims); Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d
373, 382-83 (2d Cir. 1997) (“The likelihood of confusion test concerns not
only potential purchasers but also the general public. See United States v.
Hon, 904 F.2d 803, 804-08 (2d Cir. 1990) (discussing Rolex watches and
other luxury goods). But, such third parties are only relevant if their views
are somehow related to the goodwill of the aggrieved manufacturer.
[Restatement (Third) of Unfair Competition § 20 cmt. b (1995).] Here,
where there is no showing that the general public is aware of Landscape’s
‘dress,’ the district court erred in giving this factor great weight.”); Cham-
pions Golf Club, Inc. v. The Champions Golf Club, Inc. 78 F.3d 1111,
1119-20 (6th Cir. 1996) (stating that district court erred in rejecting inci-
dents of confusion on part of vendors and other non-consumers simply
because they were not direct consumers of plaintiff golf club’s services
and indicating, inter alia, that confused persons were knowledgeable about
golf clubs and had incentive to identify club in question but nevertheless
were still unclear about which club was which); Bishop v. Hanenburg, 695
P.2d 607, 611 (Wash. Ct. App. 1985) (“Not only is a supplier a member
of the public, but if a supplier is confused by similar businesses with iden-
tical names, the consuming public is likely to be similarly confused.”).
Several of these cases suggest that non-consumer confusion may be rel-
evant independent of any relationship to confusion on the part of consum-
ers. We cite these decisions only to show that other courts have adopted
an expansive approach to the question of non-consumer confusion. As we
have already noted in footnote 9, supra, we need not—and do not—decide
whether there are other circumstances or grounds for taking non-consumer
confusion into account.
REARDEN LLC v. REARDEN COMMERCE, INC. 7645
the evidence of actual consumer confusion. As the District
Court recognized, two incidents “involve actual confusion on
the part of a member of the relevant consuming public.” Rear-
den I, 597 F. Supp. 2d at 1023-24. We therefore are con-
fronted with at least some direct examples of confusion on the
part of consumers. In the first, a customer of Rearden Com-
merce, QubicaAMF, expressed confusion as to which “Rear-
den” it was conducting business with after receiving a
subpoena in this lawsuit. In addition, Appellants received doz-
ens of misdirected e-mails actually intended for Rearden
Commerce, some of which were sent by Rearden Com-
merce’s own customers.
[17] Turning to the non-consumer evidence in the record,
Appellants specifically note that trade and other publications,
as well as trade show organizers and attendees, have confused
Appellants with Rearden Commerce or have believed that
Rearden Commerce was founded by Perlman or somehow is
associated with him and the various Rearden companies. For
example, the author of a March 23, 2005 CNET News.com
article observed that “the main question in the conference
hallways [at the PC Forum trade show] was whether the com-
pany [Rearden Commerce] had any relationship to Rearden
Steel, the set-top box outfit started years ago by WebTV
founder Steve Perlman” and that, “[i]t doesn’t, but the associ-
ation made many wiggly.” (ER825.) In addition, the author of
a May 6, 2008 TechConfidential article, discussing the receipt
of $100 million in funding by Rearden Commerce, clearly
believed that this company was created by the “legendary
inventor,” Perlman, and the “technology incubator” he
founded. (ER895.) This article also featured an excerpt from
a recent interview with Perlman and included his picture. A
Rearden Commerce employee likewise admitted in his depo-
sition testimony that he was asked about “a dozen times” on
the first day of the April 2008 Web 2.0 show whether the
companies were somehow affiliated or related. (ER439.)
[18] Confusion on the part of such persons could conceiv-
ably fall under any of the non-consumer confusion categories
7646 REARDEN LLC v. REARDEN COMMERCE, INC.
set forth above. In particular, it appears that the confusion of
presumably knowledgeable and experienced trade journalists
and trade show organizers could very well influence the pur-
chasing decisions of consumers.
Appellants further point, inter alia, to evidence of actual
confusion on the part of other non-consumers, evidently either
in a position in which to influence consumers or to serve as
their proxy. These non-consumers include: (1) Appellants’
prospective employees; (2) a vendor; (3) an investor (Mac-
Quarie Group, which had previously entered into an agree-
ment with Rearden Commerce itself and was then in
negotiations with Appellants regarding a $1 billion lease); (4)
Appellants’ auditors; and (5) their patent attorneys. Tellingly,
Rearden Commerce and Grady were cautioned about using
the “Rearden” name before the company’s name was ulti-
mately changed in 2005. For example, Rearden Commerce’s
public relations consultant stated in a December 8, 2004 e-
mail that: “Also, there is a guy who has a small thing called
Rearden Steel, the one who started Web TV. That might con-
fuse folks in the beginning.” (ER338.)
In the end, a reasonable finder of fact could still find in
favor of Rearden Commerce. In particular, it is certainly con-
ceivable that such a finder of fact could determine that the
evidence of non-consumer confusion presented by Appellants
simply has no bearing on the critical question of whether con-
sumers themselves may be confused. For instance, a reason-
able jury could find that presumably sophisticated start-ups
looking for critical incubation services could not really be
misled by some mistakes in a trade publication. Both the Dis-
trict Court as well as Rearden Commerce likewise have pre-
sented a variety of reasons for weighing this factor in favor
of Rearden Commerce. Among other things, they have
asserted that the evidence of confusion presented here merely
relates to the parties’ names (and e-mail addresses), not to the
trademarks that include the logos. In fact, Rearden Commerce
suggests that Appellants attempted to fabricate the appearance
REARDEN LLC v. REARDEN COMMERCE, INC. 7647
of confusion in various underhanded ways (i.e., removing e-
mail filters and moving their booth at the Web 2.0 show).
[19] Still, we believe that there are genuine issues of mate-
rial fact present with respect to the “evidence of actual confu-
sion” factor, especially after viewing the evidence in the light
most favorable to Appellants. If anything, Rearden Com-
merce’s accusations of bad faith only further highlight the
existence of such genuine factual issues and the need for a
jury to make the ultimate factual determinations in this pro-
ceeding.
iv. The Remaining Sleekcraft Factors
[20] Although they do appear to be of lesser importance
given the current record now before us, an examination of the
remaining four factors provides a limited degree of support
for Appellants’ position on appeal.
On the one hand, the last two factors (“type of goods and
the degree of care likely to be exercised by the purchaser” and
“defendant’s intent in selecting the mark”) do not appear to
weigh in favor of finding a likelihood of confusion. Among
other things, Appellants address these two specific factors in
a cursory fashion and specifically admit that we are con-
fronted in this case with sophisticated consumers.
On the other hand, we agree with Appellants that there are
genuine issues of material fact with respect to the “marketing
channels used” factor due to the evidence in the record indi-
cating that the parties have appeared in the same trade publi-
cations and have participated in the same trade shows. There
are also genuine issues of material fact with respect to the
“likelihood of expansion of the product lines” factor. Accord-
ing to Perlman, “Rearden has been developing wireless tech-
nology since 1999” and “has continued with extensive
wireless development work resulting in dozens of patents
pending and issued, which will be leading to revolutionary
7648 REARDEN LLC v. REARDEN COMMERCE, INC.
wireless and mobile products.” (ER629.) In turn, Rearden
Commerce has, among other things, developed its own “mo-
bile wireless product” (Appellee’s Brief at 41), registered the
“ReardenMobile.com” and “MobileRearden.com” domain
names, and appears to have an active interest in further expan-
sion. In the end, it is for the jury to decide whether the parties
really intend to expand into—or are already operating in—the
same product line or lines.
[21] In sum, because there are genuine issues of material
fact with respect to both the “use in commerce” and “likeli-
hood of confusion” elements of Appellants’ Lanham Act
trademark claim, the District Court erred in granting summary
judgment to Rearden Commerce. We now turn to their other
federal claim: the cybersquatting cause of action under the
ACPA statute.
2. The ACPA and “Bad Faith”
A plaintiff pursuing a cybersquatting claim under the
ACPA must show that: “(1) the defendant registered, traf-
ficked in, or used a domain name; (2) the domain name is
identical or confusingly similar to a protected mark owned by
the plaintiff; and (3) the defendant acted ‘with bad faith intent
to profit from that mark.’ ” DSPT Int’l, Inc. v. Nahum, 624
F.3d 1213, 1218-19 (9th Cir. 2010) (footnote omitted). This
appeal implicates the first and third elements of the ACPA
cause of action for cybersquatting: whether the plaintiff pos-
sesses a protected mark; and whether the defendant acted with
a bad faith intent to profit. See, e.g., 15 U.S.C.
§ 1125(d)(1)(A); DSPT, 624 F.3d at 1218-19.
We have already determined (in Section III.A.1.a, supra)
that there are genuine issues of material fact with respect to
the Appellants’ “use in commerce” of the “Rearden” marks
and names. The District Court recognized that a reasonable
jury could, however, find that Appellants used in commerce
the “Rearden Studios” mark as of this date, and it therefore
REARDEN LLC v. REARDEN COMMERCE, INC. 7649
refused to grant summary judgment in Rearden Commerce’s
favor based on the “use in commerce” requirement with
respect to the domain names registered after July 2005
(“ReardenLLC.com,” “ReardenLLC.net,” “ReardenMo-
bile.com,” “MobileRearden.com,” and possibly “Rear-
denC.com”). Appellants themselves focus on these post-July
2005 domain names—especially “ReardenLLC.com” and
“ReardenLLC.net.”
As to bad faith, the notion implicates three analyses: (1)
surveying the nine non-exclusive and permissive statutory
factors that “may” be considered in “determining whether a
person has a bad faith intent,” 15 U.S.C. § 1125(d)(1)(B)(i);
(2) taking into account the unique circumstances of each case,
which represent “ ‘the most important grounds for finding bad
faith,’ ” and which affect the examination (and weight) of the
nine permissive factors as well as any other relevant consider-
ations, Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1202 (9th
Cir. 2009) (quoting Interstellar Starship Servs., Ltd. v. Epix,
Inc. 304 F.3d 936, 946 (9th Cir. 2002)); and (3) considering
the availability of the safe harbor for any defendant who “be-
lieved and had reasonable grounds to believe that the use of
the domain name was a fair use or otherwise lawful,” 15
U.S.C. § 1125(d)(1)(B)(ii). Applying this framework, we
determine that there are genuine issues of material fact with
respect to the matter of bad faith.
Beginning with the statutory factors, the District Court rec-
ognized that the second factor (the extent to which the domain
name consists of the alleged cybersquatter’s legal name or a
name commonly used to identify the cybersquatter) “margin-
ally favors” Appellants, at least as to the “ReardenLLC”
domain names, because Rearden Commerce admitted that it
has never used the term “Rearden LLC” to describe itself.
Rearden II, 2010 WL 2650516, at *6. We add that a reason-
able jury could weigh this particular factor even more heavily
in favor of Appellants given the fact that “Rearden LLC” is
7650 REARDEN LLC v. REARDEN COMMERCE, INC.
the exact legal name recently adopted by one of the Appel-
lants.
Furthermore, Rearden Commerce’s own General Counsel
“ordered these domains be purchased immediately after learn-
ing that Rearden might oppose RC’s trademark applications.”
Id. at *9. Specifically, General Counsel Sandoval and Appel-
lants’ outside counsel had been exchanging e-mails—all with
the subject line “Rearden LLC”—about, among other things,
Appellants’ possible opposition to Rearden Commerce’s
trademark applications. At the same time, Grady had asked
Perlman whether the “Rearden.com” domain name was for
sale and had received a negative response. On the same day
it agreed to an extension of time for Appellants to oppose its
trademark applications, Rearden Commerce, at Sandoval’s
own direction, registered the “ReardenLLC.com” domain
name (and the company obtained the “ReardenLLC.net” name
shortly thereafter). Explaining this conduct, Sandoval testi-
fied, inter alia, that: “So, yes, at that point in time, there was
I find out that there’s a party opposing my trademark applica-
tion that I feel has no right to oppose my trademark applica-
tion, and I need to protect my mark, and I need to—and those
were two marks that I hadn’t obtained in the past.” (ER310-
ER311 (emphasis added).) He also admitted that he was well
aware of the fact that one of the Perlman entities was orga-
nized as a limited liability company.
[22] The District Court (and Rearden Commerce) are cor-
rect that a reasonable jury could find that Rearden Commerce
had not earlier considered these two particular domain names
during its initial registration frenzy, registered them when it
became aware of the names, and did so as part of a long-
standing (if unwritten and informal) branding program. How-
ever, it is improper for a court to grant a party’s summary
judgment motion merely because the finder of fact could find
in its favor. On the contrary, a reasonable finder of fact could,
among other things, find that Rearden Commerce acted in bad
faith by seeking to gain leverage in an ongoing trademark dis-
REARDEN LLC v. REARDEN COMMERCE, INC. 7651
pute, especially given the apparent absence of any formal pol-
icy or method for its registrations. See, e.g., DSPT, 624 F.3d
at 1218-21 (stating that registration or use of domain name in
order to obtain leverage in business dispute could be suffi-
cient to establish bad faith).
[23] Likewise, there are genuine issues of material fact
with respect to Rearden Commerce’s alleged good or bad
faith in dealing with Appellants after they first accused the
company of cybersquatting. As Appellants acknowledge,
Rearden Commerce did deactivate the “ReardenLLC.com”
and “ReardenLLC.net” domain names when confronted by
Appellants. At oral argument on the cybersquatting claims,
Rearden Commerce (although, as Appellants point out, at the
District Court’s prompting) made an unconditional offer to
transfer the two domain names to Appellants. However, we
disagree that such conduct “conclusively demonstrates,”
Rearden II 2010 WL 2650516, at *10, Rearden Commerce’s
good faith. Given the overall factual record present in this
case, this is a question for the jury to decide. We note, for
example, that Rearden Commerce had previously offered to
maintain the non-directing nature of the domain names only
on the condition that Appellants abandon several trademark
applications. The District Court did draw a distinction
between attempting to sell a domain name before litigation
commences and doing so in the context of litigation itself.
But, at the very least, the evidence in the record still presents
genuine factual issues with respect to the existence of bad—
or good—faith. See, e.g., DSPT, 624 F.3d at 1218-21.
B. State Law Claims
[24] It is undisputed that Appellants’ state law trademark
infringement claim (as well as their claim under the UCL to
the extent it is based on infringement grounds) is subject to
the same legal standards as their Lanham Act trademark
claim. See, e.g., Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628,
632 (9th Cir. 2008). Therefore, to the extent that there are
7652 REARDEN LLC v. REARDEN COMMERCE, INC.
genuine issues of material fact with respect to the federal
trademark claim, such issues also exist as to the related state
trademark infringement and unfair competition claims. Like-
wise, we conclude that Rearden Commerce is not entitled to
summary judgment on the UCL claim insofar as this state law
claim is based on allegations of cybersquatting.
IV.
For the foregoing reasons, we vacate the District Court’s
orders granting summary judgment in favor of Rearden Com-
merce and remand for further proceedings consistent with our
opinion.
VACATED AND REMANDED FOR FURTHER PRO-
CEEDINGS CONSISTENT WITH THIS OPINION.