National Grange of the Order of Patrons of Husbandry v. California State Grange , 115 F. Supp. 3d 1171 ( 2015 )

MEMORANDUM AND ORDER RE: CROSS-MOTIONS FOR SUMMARY JUDGMENT

WILLIAM B. SHUBB, District Judge.

Plaintiff National Grange of the Order of Patrons of Husbandry brought this action for trademark infringement against defendant California State Grange. Presently before the court are the parties’ cross-motions for summary judgment pursuant to Federal Rule of Civil Procedure 56.

I. Factual and Procedural Background

Plaintiff is a national fraternal agricultural organization founded in 1867 to promote the interests of farmers and farming in the United States. (Luttrell Deck 11¶ 2, 5 (Docket No. 43-2).) Plaintiff has grown to a network of approximately 2,000 local chapters across the country, through which it'provides a variety of goods and services to agricultural communities. Plaintiff has registered numerous trademarks featuring the word “Grange,” which it uses for associational, educational and advocacy activities. (Turrill Deck Ex. 21 (Docket No. 43-6); Luttrell Deck ¶ 7.)

On July 15, 1873, plaintiff chartered defendant California State Grange as its affiliate state-level chapter. (Turrill Deck Ex. 9.) As a chartered affiliate, defendant collected dues from local subordinate Granges and turned over a portion of those dues ■ to plaintiff. (May 14, 2014 McFarland Dep. at 44:22-45:15 (Docket No. 43-7).)

On April 5,2013, plaintiff revoked defendant’s charter due to a dispute. (Luttrell Deck ¶¶ 19, 24; Turrill Deck Ex. 15.) In response, defendant sent a letter disclaiming any further affiliation with plaintiff and stated that it would amend its bylaws to reflect its. new status. (Turrill Deck Ex. 19.)

Despite its disaffiliation, defendant continues to use the name “California State Grange” at events, on its website, and in its newsletter and other communications. (May 14, 2014 McFarland Dep. at 112:8-11; Turrill Decl. Exs. 7, 23, 24.) Plaintiff sent a cease and desist letter to defendant on December 2, 2013. (Turrill Decl. Ex. 20.) When defendant was unresponsive, plaintiff filed this lawsuit.¹

Plaintiff brought claims under the Lan-ham Act for (1) trademark infringement, 15 U.S.C. § 1114; (2) unfair competition and false designation of origin, 15 U.S.C. § 1125(a); (3) trademark dilution, 15 U.S.C. § 1125(c); and (4) trademark counterfeiting, 15 U.S.C. § 1114(1). (Compl, ¶¶ 48-101.) Defendant answered with numerous affirmative defenses and counterclaims seeking a declaratory judgment that plaintiffs trademark is invalid. (Am. Answer (Docket No. 24).) Plaintiff now moves for partial summary judgment on its first and second claims for trademark infringement and unfair competition, respectively, and also on defendant’s counterclaims. (Docket No. 43.) Defendant also moves for summary judgment on all of plaintiffs claims and its counterclaims on the grounds that it is entitled to the defenses of genericness, abandonment, acquiescence, and unclean hands. (Def.’s Mem. at 2 (Docket No. 44); Del’s Opp’n at 2 (Docket No. 51).)

II. Discussion

Summary judgment is proper “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). A material fact is one that could affect the outcome of the suit, and a genuine issue is one that could permit a reasonable jury to enter a verdict in the' non-moving party’s favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The party moving for summary judgment bears the initial burden of establishing the absence of a genuine issue of material fact and can satisfy this burden by presenting evidence that negates an essential element of the non-moving party’s case., Celotex Corp. v. Catrett, 477 U.S. 317, 322-23, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Alternatively, the moving party can demonstrate that the nonmoving party cannot produce evidence to support an essential element upon which it will bear the burden of proof at trial. Id.

Once the moving party meets its initial burden, the burden shifts to the non-moving party to “designate ‘specific facts showing that there is a genuine issue for trial.’ ” Id. at 324, 106 S.Ct. 2548 (quoting then-Fed. R. Civ. P. 56(e)). To carry this burden, the non-moving party must “do more than simply show that there is some metaphysical doubt as to the material facts.” Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). “The mere existence of a scintilla of evidence ... will be insufficient; there must be evidence on which the jury could reasonably find for the [non-moving party].” Anderson, 477 U.S. at 252, 106 S.Ct. 2505.

In deciding a summary judgment motion, the court must view the evidence in the light most favorable to the non-moving party and draw all justifiable inferences in its favor. Id. at 255, 106 S.Ct. 2505. “Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge ... ruling on a motion for summary judgment----” Id. On cross-motions for summary judgment, the court “must review the evidence submitted in support of each cross-motion [in a light most favorable to the non-moving party] and consider each party’s motions on their own merits.” Corbis Corp. v. Amazon.com, Inc., 351 F.Supp.2d 1090, 1097 (W.D.Wash.2004).

A. Trademark Infringement under § 11U

To prevail on its trademark infringement claim under § 1114 of the Lan-ham Act, a plaintiff must prove: “(1) that it has a protectable ownership interest in the mark; and (2) that the defendant’s use of the mark is likely to cause consumer confusion.”² Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1202 (9th Cir.2012) (internal quotation marks and citation omitted).

1. Validity of the Trademark

“Federal registration of a mark constitutes prima facie evidence of the validity of the mark.” Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928 (9th Cir.2005). “If the plaintiff establishes that a mark has been properly registered, the burden shifts to the defendant to show by a preponderance of the evidence that the mark is not protectable.” Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1114 (9th Cir.2010). Plaintiff has submitted evidence of their registrations of the Grange trademark, (see Watson Deck 117, Ex. 21), and defendant has not raised a genuine dispute that the registration was proper. Plaintiffs trademark “Grange” is thus presumptively valid,.and the burden shifts to defendant to show it is invalid because it is generic.

A term is generic if it “refers, or has come to be understood as referring to the genus of which the particular product or service is a species.” Filipino Yellow Pages, Inc. v. Asian J. Publ’ns, Inc., 198 F.3d 1143, 1147 (9th Cir.1999). A generic term is not protectable as a trademark. Rudolph Int’l, Inc. v. Realys, Inc., 482 F.3d 1195, 1197 (9th Cir.2007). It lies in the public domain. Classic Foods Int’l Corp. v. Kettle Foods, Inc., 468 F.Supp.2d 1181, 1188 (C.D.Cal.2007).

“Whether a mark is generic is a question of fact.” Yellow Cab, 419 F.3d at 929 (internal quotation marks and citation omitted). The test is “whether consumers understand the word to refer only to a particular producer’s goods or whether the consumer understands the word to refer to the goods themselves.” Id. (internal quotation marks and citation omitted). Courts in the Ninth Circuit have called this the “‘who-are-you/what-are-you’ test: a valid trademark answers the former question, whereas a generic product name or adjective answers the latter.” Rudolph Int’l, 482 F.3d at 1198.

As support for its contention that “grange,” as it is used by plaintiff, is generic, defendant offers an excerpt from the 1980 edition of the Random House Dictionary. (See Def.’s Mot. Ex. D.)- Courts sometimes consider dictionaries as evidence that a term is generic. See Filipino Yellow Pages, 198 F.3d at 1147-48 (citing Webster to support the observation that “yellow pages” is generic); Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co., 601 F.2d 1011, 1020 (9th Cir.1979) (noting that the district court “careful analysed]” genericness by considering dictionary definitions and other evidence of generic use).

' Random House does not support defendant’s position that “grange” is a generic term meaning farmers’ association. The 1980 edition defines Grange as

n. 1. Brit. A farm with its nearby buildings. 2. (cap.) a lodge or local branch of a farmers’ association in the U.S.

(Def.’s Mot. Ex. D.) Random House indicates that the secondary use of .Grange is “cap.” or capitalized, meaning it is a proper noun, naming a particular thing. This would suggest that the secondary definition refers to a local branch affiliated with one particular - national association, plaintiff. A more contemporary dictionary definition further reflects that Grange, when used to mean an association of farmers, is a proper' noun naming plaintiffs organization. In the more recent 2005 version of the Random House dictionary, the secondary definition of “grange” is “the Patrons of Husbandry,' a farmer’s organization formed in 1867 for social and cultural purposes.” (Pl.’s Opp’n Turrill Decl. Ex. N.) No trier of fact could reasonably conclude from these dictionary definitions that “grange” is a generic term denoting a local branch of any farmers’ association.

Beyond the dictionary, there is nothing before the court suggesting plaintiffs use of “grange,” particularly when capitalized, is generic. Defendant has not pointed to a. single use of “grange” meaning a local chapter of an association of farmers in the United States that predates plaintiffs use. Moreover, the court has not found any use of “grange” meaning farmers’ association other than plaintiff and its affiliates and defendant’s uses. The only conclusion the court can reasonably draw from the evidence before it is that “Grange” does not signal “an association of farmers,” but rather the national association of farmers founded by plaintiff in 1867,

Moreover, “there is no legal disability in taking a generic name and using it as a trademark for another type of product.”- 2 McCarthy on Trademarks and Unfair competition § 12:1 n. 10 (4th ed.). Arbitrary marks are protectable even though they are comprised of generic terms, because they do not describe the goods or services offered by the user of the mark. Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir.1996). Based on the dictionary definition offered by defendant, “grange” is a generic term for a farm with its nearby buildings. “Grange,” as plaintiff uses it, does not signify that plaintiff deals in “a farm with its nearby buildings.” It names plaintiffs national association.

Plaintiffs mark is therefore not generic, and there is no genuine issue of material fact as to the validity of the term “Grange” as a protectable trademark.³

2. Consumer Confusion

The second element requires a plaintiff to show that “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.” Rearden, 683 F.3d at 1209. The record is replete with evidence that a reasonably prudent Grange member, prospective member, or other person contemplating doing business with it is likely to be confused as to the origin of defendant’s services due to its use of “Grange.”

Defendant’s use of “grange” on its website strongly suggests it is associated with plaintiff. The homepage of defendant’s website, which carries the domain califor-niagrange.org, reads,

The Grange is a grass roots organization that began in 1867, in the aftermath of the destructive and divisive Civil War.... We built halls across the rural landscape of America.... For more than 140 years, we’ve preserved our founding principles of unity, liberty, and charity.

(Turrill Decl. Ex. 26 (emphasis added).) Here, defendant recounts plaintiffs history, and not its own. Plaintiff, the national association, and not defendant, which limits its services to California, “built halls across the rural landscape 'of America.” By using “we,” defendant is likely to cause a member or prospective member to be-' lieve it is affiliated with plaintiff. Defendant’s use of the slogan “We are the Grange” in its website banner, (see id.), implies it is part of “the Grange,” plaintiffs national association. There are many more examples on defendant’s website and in its newsletters of what appear to be uses of “grange” likely to cause the consumer to believe defendant is affiliated with plaintiff, which the court will not enumerate for the .sake of brevity. (See.id. Exs. -7, 23, 24.).

Beyond defendant’s communication tools, defendant’s use of plaintiffs mark is likely to cause confusion, because both plaintiff and defendant offer- similar services. At the hearing, counsel for defendant admitted' defendant provides the same services as'plaintiff. (See id.) Because those services are identical, a party looking to join the official Grange will likely believe that defendant is somehow affiliated with plaintiff. See U.S. Jaycees v. San Francisco Jr. Chamber of Commerce, 354 F.Supp. 61, 76 (N.D.Cal.1972) (finding that because defendant’s and plaintiffs civic services were substantially similar, defendant’s use of plaintiffs trademark would likely confuse consumers).

Lastly, because plaintiff chartered a new chapter in California after defendant’s disaffiliation, members and prospective members in California are' now likely to be confused as to which California-based Grange is affiliated with national organization. In 2014, after defendant disaffiliated, California-based members of- National Grange voted to reorganize a state Grange under the name Grange of the State of California’s Order of -Patrons of Husbandry, Chartered. It is foreseeable that a prospective or current member would be uncertain as to which California Grange originates from the national organization. See U.S. Jaycees, 354 F.Supp. at 76 (considering that there was a new official local affiliate bearing a similar .name to the disaffiliated defendant as a factor weighing-in favor of finding a likelihood of confusion).

Defendant has even conceded that two California organizations using the' name “Grange” would — and has — caused consumer confusion. In a separate lawsuit, California State Grange is suing the Grange of the State of California’s Order of Patrons of Husbandry (“TGSC”) for trademark infringement. See Cal. State Grange v. Grange of the State of Cal’s Order of Patrons of Husbandry, Civ. No. 2:15-00317 (E.D. Cal. filed February 6, 2015). In that suit, California State Grange alleges TGSC’s .use of the Grange mark causes “great confusion” among local granges, causing them to pay their dues to TGSC rather than California State Grange. (See id., Compl. ¶ 13-14.) In his deposition for this lawsuit, defendant’s president, Robert McFarland, stated that TGSC’s'use of “Grange” caused actual confusion:

[W]e know of some of our Granges that have accidently sent their reports and dues to [TGSC]. I get emails and phone calls consistently from — when they get a bulletin from [TGSC]. They say, “Is this — is that you or is it” — like they refer to — [TGSC]— So I consistently, have to enlighten them and tell them where the .communications are coming . from.

(McFarland Dep. at 162:7-18.)

In light of defendant’s concession, and the absence of any evidence or argument for why defendant’s use of “Grange” is not likely to cause consumer confusion, only one inference can be drawn: defendant’s use of “Grange” is likely to cause, and apparently has caused, a reasonably prudent consumer in the marketplace to' be confused about the origin of defendant’s services. Because there is also no genuine issue of fact regarding the “Grange” mark’s validity, plaintiff has undisputedly established a trademark infringement claim under § 1114.

B. Defendant’s Affirmative Defenses

1. ■ Estoppel by Acquiescence

Defendant insists it had a “long and continued public use of Grange” for 150 years thát went unchallenged, and so the court should estop plaintiff from prevailing in a suit that it has waited a century-and-a-half to bring. (Def.’s Mem, at 6-7 (Docket No. 44-1).) To establish'a claim for acquiescence, defendant must prove that plaintiff knew of facts giving it notice of its trademark infringement claim. Westinghouse Elec. Corp. v. Gen. Circuit Breaker & Elec. Supply Inc., 106 F.3d 894, 899 (9th Cir.1997). As previously discussed, a trademark infringement claim requires showing that plaintiff had a pro-tectable interest in the mark and that defendant’s use of the mark was likely to cause consumer confusion. Rearden LLC, 683 F.3d at 1202.

The facts giving rise to the second element of plaintiff’s trademark claim did not exist until defendant disaffiliated with plaintiff in April 2013. So long as defendant remained affiliated with plaintiff, a reasonably prudent consumer in the marketplace would have been correct, and not confused, to believe that defendant’s use of “Grange” marked its affiliation with plaintiff. There would have been no risk of consumer confusion until after defendant officially declared it was disaffiliating and stopped paying dues to plaintiff. Once defendant no longer bore any relation to plaintiff, and was operating by its own bylaws, (McFarland Decl. ¶ 13), and .collecting dues on its own terms, (McFarland Dep. at 147:13150:12), there arose a risk that consumers might be confused as to whether defendant’s use of “Grange” meant the “source” of its services was the national order.

A month after defendant disclaimed its affiliation in November 2013, and the facts existed that put plaintiff on notice that defendant’s use was likely to mislead consumers into thinking it remained affiliated with plaintiff, plaintiff sent defendant its cease and desist letter, (Turrill Deck Ex. 20), and filed this lawsuit in March 2014. Waiting four months to file a lawsuit after being put on notice that the facts supporting an infringement claim exists is hardly acquiescence. Based on the evidence before the court, defendant appears to be unable to prevail on its acquiescence theory. See Celotex, 477 U.S. at 323, 106 S.Ct. 2548 (“[T]he plain language of 56(c) mandates the entry of summary judgment, after adequate time for discovery and upon motion, against a party who fails to make a showing sufficient to establish the existence of an element essential to that party’s case, and on which that party will bear the burden of proof at trial.”).

2. Abandonment/Naked Licensing

“[N]aked licensing may result in the trademark ceasing to function as a symbol of quality and controlled source.” Barcamerica Int’l USA Trust v. Tyfield Imps., Inc., 289 F.3d 589, 596 (9th Cir.2002) (internal quotation marks and citation omitted). Although a trademark owner may license the use of its trademark, “where the licensor fails to exercise adequate quality control over the licensee, a court may find that the trademark owner has abandoned the trademark, in which case the owner would be estopped from asserting rights to the trademark.” Id. Because showing subjective intent to abandon the mark is not required, “the proponent of a naked license theory faces a stringent standard of proof.” Id.

The Ninth Circuit has not yet decided whether the preponderance of the evidence or clear and convincing standard applies to the naked licensing defense. FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 514 (9th Cir.2010). Under either standard, to overcome summary judgment, defendant must show that, viewing the light most favorable to defendant, plaintiff allowed a licensee to use the Grange trademark with so few restrictions as to compel a finding that plaintiff engaged in naked licensing and abandoned the trademark. See id. at 516.

Defendant provides several examples of alleged naked licensing, the first involving an entity called the Brooklyn Grange. Brooklyn Grange is a rooftop farming operation in Brooklyn, New York, which sells produce through retailers and provides meal and alcohol services. (See Def.’s Opp’n, Ex. K (complaint filed against Brooklyn Grange, LLC in the Eastern District of New York) (Docket No. 51-2).) It is not a Grange affiliate or a fraternity of farmers. In 2011, plaintiff brought an infringement action against the Brooklyn Grange. (See id.) The case settled, and the parties reached a “Settlement Agreement and License Agreement.” (Def.’s Opp’n Ex. M.) The parties kept the agreement confidential, and it is not before the court. From the title of the document, it can be inferred that plaintiff agreed' to license its trademark to the Brooklyn Grange as part of the settlement.

Defendant’s only evidence that plaintiff has failed to exercise adequate quality-control over Brooklyn Grange’s license is that Brooklyn Grange makes no reference to the license on its website. Even under the lower preponderance of the evidence standard, no trier of fact could reasonably conclude from this omission that plaintiff has failed to police the license. See Anderson, 477 U.S. at 252, 106 S.Ct. 2505 (holding that the “mere existence of a scintilla of evidence” is insufficient to overcome summary judgment). Whether the Brooklyn Grange has referred to its license from plaintiff on its website has no apparent connection to whether plaintiff has imposed so few restrictions on the use of its mark that “Grange” has “ceased to function as a symbol of quality and-controlled source.” See Barcamerica Int’l, 289 F.3d at 596.

Defendant also points to several farm-to-fork restaurants using Grange in their names, one of which happens to be just a few blocks from this courthouse. , Plaintiff has licensed these restaurants to use the “Grange” mark, and those licenses are subject to quality ' control provisions. (Watson ‘ Decl. ¶ 8.) Like. the Brooklyn Grange, defendant offers no evidence that plaintiff has failed to maintain adequate quality control over these licensees.

Because there is a total absence of evidence in the record that plaintiff failed to exercise adequate quality control over its licensing, defendant cannot meet a “stringent” standard of proof on its naked licensing affirmative defense. ’ See Barcamerica Int’l, 289 F.3d at 596. Defendant’s naked licensing theory must fail. See Celotex, 477 U.S. at 323, 106 S.Ct. 2548.

3. Unclean Hands

“The doctrine [of unclean hands] bars relief to a plaintiff who has violated conscience, good faith or other equitable principles in his prior conduct, ... [or] who has dirtied his hands in acquiring the right presently asserted.” Seller Agency Council, Inc, v. Kennedy Ctr. for Real Estate Educ., Inc., 621 F.3d 981, 986 (9th Cir.2010) (citation and internal quotation marks omitted). For defendant to succeed on an unclean hands defense,- plaintiffs alleged misconduct must bear some connection to the transaction from which the complaint arose. Id. “The court must weigh the substance of the right asserted by plaintiff against the transgression which, it is contended, serves to foreclose that right. The relative extent of each party’s wrong upon the other and upon the public should be taken into account, and an equitable balance struck.” Republic Molding Corp. v. B.W. Photo Utils., 319 F.2d 347, 350 (9th Cir. 1963). Ultimately, the court must decide whether plaintiffs wrong, compared with the defendant’s wrong, warrants punishment of the plaintiff rather than of the defendant. Id.

There is no evidence before the court suggesting plaintiff engaged in wrongful conduct in connection to its claims. According to plaintiffs constitution, subordinate granges “derive their rights and powers” from plaintiff. (Turrill Decl. Ex. 22, Ch. 1 art. Ill § 1.3.1 (Docket .No. 43-7).) Pláintiff retains the authority to issue charters. (Id. art. IV § 1.4.1.) Plaintiff’s bylaws set out the procedure for the revocation of charters where the “good of the Order” requires such action. (See id. Ch. 4 art. V.) In its letter revoking defendant’s charter, plaintiff stated the reason for the revocation was that. defendant made no effort to work with plaintiff following the suspension of defendant’s president for violating rules in' the charter and instead launched a “destructive public relations campaign” against plaintiff. (Turrill Decl. Ex. 15.) Defendant’s president McFarland merely states the disaffiliation was the result of a “political dispute” between the parties, without offering more explanation. (McFarland Decl. ¶ 13 (Docket 44-4).) Regardless of the precise ground for revoking defendant’s charter, it is not genuinely disputed that plaintiff was acting within its rights and in accordance with its bylaws when it revoked defendant’s charter. Plaintiff even afforded defendant procedural due process, giving defendant the opportunity to appeal the decision. (Tur-rill Decl. Ex. 16.) Defendant declined. (McFarland Dep. at 78:14-79:16.)

Moreover, as the organization bearing the right to use the “Grange” name, plaintiff was also .within its right to charter a new organization in California. (See Ex. 22 art. IV § 1.4.1.) Defendant asserts that after kicking out defendant, plaintiff’s purpose in beginning a new California Grange chapter was • “to take . defendant’s local chapters and cripple defendant organization.” (Def.’s Opp’n at 14.) Defendant offers no evidentiary support for this bare allegation. Viewing the record in the light most favorable to defendant, plaintiffs conduct does not rise to the level of violating “conscience, or good faith, or other equitable standards of conduct” such that plaintiff should be precluded from enforcing its rights. See Seller Agency Council, 621 F.3d at 986.

The record supports only one conclusion: plaintiffs behavior, compared with the defendant’s infringement, should not prevent plaintiff from enforcing its right to its trademark. Defendant’s unclean hands defense must also fail. See Celotex, 4.77 U.S. at 323, 106 S.Ct. 2548.

Plaintiff has thus undisputedly established a trademark infringement claim, and based on the record, defendant cannot prevail on any of its affirmative defenses. Accordingly, the court must grant plaintiffs motion for summary judgment and deny defendant’s motion for the same on plaintiffs first claim for trademark infringement. Moreover, because defendant’s counterclaims turn on the same legal issues, the court will also grant plaintiffs motion for summary judgment and deny motion for the same on defendant’s counterclaims.

C. Unfair Competition and False Designation of Origin under § 1125(a)

Plaintiffs commonly frame their claims in infringement suits under both §§ 1114 and 1125(a). Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1046 n. 8 (9th Cir.1999). “The analysis under the two provisions is oftentimes identical.” Id.; see Wecosign, Inc. v. IFG Holdings, Inc., 845 F.Supp.2d 1072, 1079 (C.D.Cal.2012) (jointly analyzing the plaintiffs §§ 1114 and 1125(a) claims). Because the analyses for plaintiffs first two claims appear to be indistinguishable in all respects that are material to this action, the court must also grant plaintiffs motion for summary judgment with respect to its second claim for unfair competition.

D. Remaining Claims on which Defendant Moves for Summary Judgment

While plaintiff only moves for summary judgment on its first two claims, defendant moves for -summary judgment on all of plaintiffs claims as well as its counterclaims seeking the court declare plaintiffs trademark invalid and abandoned. Because defendant failed to address any of plaintiffs remaining two claims, the court will deny defendant’s motion for summary judgment as to those claims.

IT IS THEREFORE ORDERED/that plaintiffs motion for summary judgment be, and the same hereby is, GRANTED; and that defendant’s motion for summary judgment be, and the same hereby is, DENIED.

IT IS FURTHER ORDERED that upon entry of final judgment in this action defendant and its agents, affiliates, and assigns, or any party acting in concert with defendant and its .agents, affiliates,, and assigns, shall be permanently enjoined from using marks containing, the word “Grange.”

The parties shall appear for a status conference on August 17, 2015 at 2:00 p.m. regarding the status'of plaintiffs remaining claims and its prayer -for damages.

1 . Plaintiff also initiated a proceeding in California state court, National Grange v. California State Grange, Civ. No. 34-2012-00130434 (Cal. Sup.Ct. filed Oct. 1, 2013), seeking a declaration of the rights and duties of the parties following the revocation of California State Grange’s charter.

In addition, there is a related case before this court, California State Grange v. Grange of the State of California's Order of Patrons of Husbandry, Civ. No. 2:15-00317 (E.D. Cal. filed Feb. 6, 2015), in which California State Grange is suing an affiliate of the National Grange for trademark infringement. The court denied a motion to consolidate that action with the present one, because doing so would have caused delay in the present action. (June 29, 2015 Order (Docket No. 52).)

2 , Plaintiff must also prove that defendant is using plaintiffs mark without plaintiff’s consent in commerce. See Wecosign, Inc. v. IFG Holdings, Inc., 845 F.Supp.2d 1072, 1079 (C.D.Cal.2012) (discussing the elements of an infringement claim). Because it is apparently undisputed that defendant is using plaintiff's mark in commerce without plaintiff’s consent, (see May 14, 2014 McFarland Dep. at 112:8-11), the court will focus its analysis on the remaining elements.

3 . Another category of mark is a descriptive term. Unlike a generic term, a descriptive term may sometimes be protected as a trademark “if the public comes to associate the mark with a specific source.” Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir.1998). This acquired distinctiveness is referred to as 'secondary meaning.’ Id. Whether a mark has a secondary meaning is a question of fact. Yellow Cab, 419 F.3d at 930. Defendant conflates the test for a generic mark and a descriptive mark. Because the court determines that plaintiff’s mark is protectable because it' is not generic, it need not discuss whether it might also be protected as a descriptive mark because it has a secondary meaning.