Quicksilver, Inc. v. Kymsta, Corporation ( 2006 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
QUIKSILVER, INC., a Delaware 
corporation,
Plaintiff-counter-
No. 04-55529
claim-defendant-Appellee,
v.  D.C. No.
CV-02-05497-DT
KYMSTA CORP., a California
OPINION
corporation,
Defendant-counter-
claimant-Appellant.

Appeal from the United States District Court
for the Central District of California
Dickran M. Tevrizian, District Judge, Presiding
Argued and Submitted
December 5, 2005—Pasadena, California
Filed October 6, 2006
Before: Stephen Reinhardt and Johnnie B. Rawlinson,
Circuit Judges, and Claudia Wilken,* District Judge.
Opinion by Judge Rawlinson
*The Honorable Claudia Wilken, United States District Judge for the
Northern District of California, sitting by designation.
17365
QUIKSILVER, INC. v. KYMSTA CORP. 17369
COUNSEL
William Robinson and James D. Nguyen (argued) of Foley &
Lardner LLP, Los Angeles, California, and Arthur Freilich of
Freilich, Hornbaker & Rosen, Northridge, California, for
appellant Kymsta Corp.
Michael G. Yoder (argued), Amy J. Longo, and Christine E.
Cwiertny of O’Melveny & Myers LLP, Newport Beach, Cali-
fornia, for appellee Quiksilver, Inc.
17370 QUIKSILVER, INC. v. KYMSTA CORP.
OPINION
RAWLINSON, Circuit Judge:
Kymsta appeals from the district court’s decision granting
Quiksilver’s motion for judgment as a matter of law and
denying Kymsta’s competing cross-motion. The court con-
cluded that Quiksilver’s trademarks, “QUIKSILVER ROXY”
and “ROXY,” are valid; that Kymsta was unable to rebut the
presumption of validity; and that Kymsta could not benefit
from the innocent-use defense.
We affirm the district court’s granting of Quiksilver’s
motion for judgment as a matter of law as to Kymsta’s fraud
defense. We also affirm the denial of Kymsta’s cross-motion
as to innocent use. However, reasonable minds could differ on
the import of the evidence regarding first use of the contested
mark, tacking related marks for first-use analysis, the inherent
distinctiveness of the contested mark, and Kymsta’s innocent-
use defense. Therefore, we reverse the judgment as a matter
of law in favor of Quiksilver as to those issues.
I
FACTUAL AND PROCEDURAL BACKGROUND
A. Quiksilver
Quiksilver is a global company that manufactures sports-
wear for young men and women. In 1989, Quiksilver decided
to launch a juniors’ clothing line for teenage girls. As the
name for its juniors’ line, Quiksilver chose either “QUIK-
SILVER ROXY” or “ROXY.”1 Quiksilver intended to begin
its juniors’ line with swimwear and beach cover-ups, and
expand into sportswear.
1
Whether Quiksilver opted for “QUIKSILVER ROXY” or “ROXY” is
a matter of some dispute.
QUIKSILVER, INC. v. KYMSTA CORP. 17371
To design its juniors’ line, Quiksilver hired Jill Williams
(now Jill Williams Dodd), who began designing the first
juniors’ line in January or February of 1990, for the 1991 sea-
son. Quiksilver used Dodd’s designs to create its first promo-
tional poster, featuring a logo displaying “QUIKSILVER” in
corporate script on the left, a “Bali-ohm” woman’s figure in
the middle, and “ROXY” on the right. See Figure 1.
Figure 1
In September, 1990, Quiksilver debuted its juniors’ line for
the 1991 season at a trade show. Quiksilver decorated its
showroom with the poster and distributed the poster to its
retail customers for display. Quiksilver also took orders for its
1991 juniors’ line, shipping its first orders in January, 1991.
A hangtag displaying the Bali-ohm logo was attached to each
garment shipped.2
From January to September, 1991, Dodd designed the
juniors’ line for the 1992 season. This line included two
denim items: a vest displaying a patch with “ROXY” in large
letters above “QUIKSILVER” in corporate script, see Figure
2, and a “graffiti short” displaying “ROXY” on the right back
pocket and “QUIKSILVER” wrapping around from the left
front pocket to the left back pocket. See Figures 3 and 4.
2
A hangtag is a dangling paper tag that displays information associated
with the company.
17372 QUIKSILVER, INC. v. KYMSTA CORP.
Figure 2
Figure 3
Figure 4
QUIKSILVER, INC. v. KYMSTA CORP. 17373
These denim items were featured in a second promotional
poster that was displayed at various trade shows and distrib-
uted in 1991. This poster also featured a logo with “ROXY”
above “QUIKSILVER.” See Figure 5.
Figure 5
Quiksilver sold the denim items beginning in September,
1991. A hangtag was affixed to these and all other juniors’
apparel Quiksilver sold from the fall of 1991 through 1992.
The hangtag for the 1992 line displayed “QUIKSILVER” in
corporate script above “ROXY” in a different font. See Figure
6.
Figure 6
In 1996, Quiksilver applied for trademark registration for
the “QUIKSILVER ROXY” mark. In its application, Quik-
silver cited a first-use date of “at least as early as January,
17374 QUIKSILVER, INC. v. KYMSTA CORP.
1992.” The U.S. Patent and Trademark Office (PTO) issued
the registration in July, 1997.
In 1998, Quiksilver applied for a trademark registration for
the “ROXY” mark. In that application, Quiksilver also cited
a first-use date of “at least as early as January 1, 1992.” The
PTO issued this registration in February, 2001 over Kymsta’s
objection.
B. Kymsta
Kymsta is a clothing manufacturer and wholesaler. Kymsta
produces four lines, only one of which is pertinent here:
“ROXYWEAR,” a junior contemporary and juniors’ line con-
sisting mostly of “hip” and “trendy” knit tops.
Roxanne Heptner co-owns Kymsta with her husband and
designs the “ROXYWEAR” line. Heptner initially selected
the “Roxy” name, but her trademark search in January, 1992
revealed different variations of Roxy registered to other com-
panies (but not to Quiksilver). Because Heptner and her hus-
band believed that they acquired trademark rights simply by
using the “ROXYWEAR” name, they never registered
“ROXYWEAR.”
The first sale of “ROXYWEAR” product occurred in mid-
January, 1992. Before January 1, 1992, Kymsta never affixed
“ROXYWEAR” to any product, never offered for sale or sold
any product bearing “ROXYWEAR,” never had product
packaging including the “ROXYWEAR” mark, and never
participated in any advertisement that included the “ROXY-
WEAR” mark.
When Kymsta displays “ROXYWEAR” on its products, it
is on the interior clothing label. Originally, Kymsta displayed
“ROXYWEAR BY ROXANNE HEPTNER.” In 1997, Kym-
sta changed its label to display “ROXYWEAR BY ROXX.”
In 1999, Kymsta again changed its interior label to display
QUIKSILVER, INC. v. KYMSTA CORP. 17375
Asian script (meaning “think happy”) on the front and
“ROXYWEAR BY ROXX” on the back. Kymsta has never
used “ROXYWEAR” on the fabric of its garments or on
hangtags, and, in recent years, Kymsta has largely distributed
its merchandise as private-label apparel.3
C. The District Court’s Decision
In 2002, Quiksilver filed suit against Kymsta for trademark
infringement, false designation of origin, trademark dilution,
and unfair competition. In response, Kymsta raised several
defenses — including fraud, first use, inherent distinctiveness,
and innocent use — and filed a counterclaim asserting unfair
competition and false designation of origin claims.
On the eighth day of trial, each party moved for judgment
as a matter of law. The district court granted Quiksilver’s
motion as to Kymsta’s counterclaim and as to Kymsta’s fraud,
first-use, inherent distinctiveness, and innocent-use defenses.
Concluding that the first use of “ROXY” was on the 1991
graffiti short and that tacking applies, the court ruled that the
“QUIKSILVER ROXY” and “ROXY” marks are valid and
that Quiksilver is the senior user.
The court granted Kymsta’s cross-motion only as to Quik-
silver’s trademark dilution claims. The remainder of Kymsta’s
cross-motion was denied. The court ruled that laches barred
Quiksilver from enjoining Kymsta’s present use of “ROXY-
WEAR,” and barred Kymsta from enjoining Quiksilver’s use
of “QUIKSILVER ROXY” and “ROXY.” The court entered
an injunction reflecting its ruling.4
3
Private labeling occurs when a retailer places its own label on a gar-
ment that it purchases from a manufacturer.
4
Because we are reversing the district court’s granting of judgment as
a matter of law, the accompanying injunction is necessarily vacated. See
TransWorld Airlines, Inc. v. American Coupon Exch., Inc., 913 F.2d 676,
693, 698 (9th Cir. 1990). However, we note that the inclusion of the
17376 QUIKSILVER, INC. v. KYMSTA CORP.
II
DISCUSSION
“We review de novo an order granting or denying judgment
as a matter of law.” Lawson v. Umatilla County, 139 F.3d
690, 692 (9th Cir. 1998) (citation omitted). “Judgment as a
matter of law is proper when the evidence permits a reason-
able jury to reach only one conclusion.” Id. (citations omit-
ted). “If reasonable minds could differ as to the import of the
evidence,” however, judgment as a matter of law should not
be granted. Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
250-51 (1986) (citation omitted). “In making this determina-
tion, we must consider all the evidence and all reasonable
inferences which may be drawn from the evidence in a light
most favorable to [Kymsta], the party against whom the
motion for [judgment as a matter of law] was made.” Janich
Bros., Inc. v. American Distilling Co., 570 F.2d 848, 853 (9th
Cir. 1977) (citations omitted).
A. The “QUIKSILVER ROXY” and “ROXY” Marks
Are Presumed Valid.
[1] Federal registration of a trademark “constitutes prima
facie evidence of the validity of the registered mark and of
[the registrant’s] exclusive right to use the mark” in com-
merce. Brookfield Commc’ns, Inc. v. West Coast Entm’t
“knock-offs” prohibition in the injunction goes beyond the claims asserted
in the complaint and the evidence presented at trial, in contravention of
well-settled Ninth Circuit authority holding that “a court may not, without
the consent of all persons affected, enter a judgment which goes beyond
the claim asserted in the pleadings.” Crawford v. Gould, 56 F.3d 1162,
1168 (9th Cir. 1995) (citations and alteration omitted).
We also note that the parties on appeal do not contest the court’s rulings
on false designation of origin, statutory and common law unfair competi-
tion, federal and state trademark dilution, federal and common law trade-
mark infringement, or laches. We express no opinion on these rulings.
QUIKSILVER, INC. v. KYMSTA CORP. 17377
Corp., 174 F.3d 1036, 1047 (9th Cir. 1999) (citations omit-
ted); Dep’t of Parks & Recreation v. Bazaar del Mundo Inc.,
448 F.3d 1118, 1124 (9th Cir. 2006). Quiksilver federally reg-
istered its “QUIKSILVER ROXY” and “ROXY” marks;
therefore, the marks enjoy the presumption of validity.
Kymsta contends that the “ROXY” mark should not be pre-
sumed valid because Quiksilver committed fraud on the PTO
during the “ROXY” registration process by failing to disclose
its knowledge of the “ROXYWEAR” mark.5
[2] “Fraud in procuring a mark occurs when an applicant
knowingly makes false, material representations of fact in
connection with an application.” L.D. Kichler Co. v. Davoil,
Inc., 192 F.3d 1349, 1351 (Fed. Cir. 1999) (citations and
alteration omitted).
[3] In the application process, Robert McKnight, Quik-
silver’s Chief Executive Officer, signed an oath on behalf of
Quiksilver attesting that he believed Quiksilver to be the
owner of the “ROXY” mark and that, “to the best of his
knowledge and belief, no other person, firm, corporation or
association has the right to use [the “ROXY”] mark in com-
merce . . .” In the face of McKnight’s attestation, mere knowl-
edge of the existence of the “ROXYWEAR” mark does not
constitute fraud. See Yocum v. Covington, 216 U.S.P.Q. 210,
216-17 (T.T.A.B. 1982) (“[T]he statement of an applicant that
no other person ‘to the best of his knowledge’ has the right
to use the mark does not require the applicant to disclose
those persons whom he may have heard are using the mark if
he feels that the rights of such others are not superior to his.”)
(emphasis added).
[4] Because reasonable minds could not differ regarding the
presumed validity of Quiksilver’s marks, the district court
5
There is no dispute regarding the validity of the “QUIKSILVER
ROXY” mark.
17378 QUIKSILVER, INC. v. KYMSTA CORP.
correctly granted judgment as a matter of law in favor of
Quiksilver on Kymsta’s fraud defense. Accordingly, both
“QUIKSILVER ROXY” and “ROXY” enjoy the presumption
of validity.
B. Kymsta Presented Evidence to Rebut the
Presumption of Validity Afforded Quiksilver’s
Marks, Foreclosing Judgment as a Matter of Law
in Favor of Quiksilver.
The presumption of validity may be rebutted “by showing
that the registrant had not established valid ownership rights
in the mark at the time of registration”; that is, “if [Kymsta]
can show that [it] used the mark in commerce first, then the
registration may be invalidated.” Sengoku Works Ltd. v. RMC
Int’l, Ltd., 96 F.3d 1217, 1220 (9th Cir. 1996); Dep’t of Parks
& Recreation, 448 F.3d at 1124-26.
1. Kymsta Introduced Evidence That It First Used
“ROXYWEAR” Before Quiksilver First Used
“ROXY.”
[5] Trademark rights are acquired by the party that first
uses a mark in connection with the sale of goods. Sengoku
Works Ltd., 96 F.3d at 1219; Dep’t of Parks & Recreation,
448 F.3d at 1125-26. A mark is used in the sale of goods
when “it is placed in any manner on the goods . . . or the dis-
plays associated therewith or on the tags or labels affixed
thereto . . . .” 15 U.S.C. § 1127 (Supp. 2005); Dep’t of Parks
& Recreation, 448 F.3d at 1125-26.6
6
Relying on Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d
1470, 1473 (Fed. Cir. 1987), Kymsta contends that Quiksilver, in attempt-
ing to prove that “QUIKSILVER ROXY” and “ROXY” have priority over
“ROXYWEAR,” should have been held to the clear and convincing evi-
dence standard, because Quiksilver attempted to prove first-use dates that
preceded the dates averred in its federal registrations. However, because
Kymsta conceded that “QUIKSILVER ROXY” has priority over “ROXY-
QUIKSILVER, INC. v. KYMSTA CORP. 17379
a. Reasonable Minds Could Differ on Whether
Quiksilver First Used “ROXY” as a Standalone
Mark Before Kymsta First Used “ROXY-
WEAR.”
[6] Quiksilver’s 1991 graffiti short displayed “QUIK-
SILVER” beginning on the left front side, wrapping around
to the left back side.7 The short also displayed “ROXY” on
the right back side. See Figures 3 and 4. Viewing the back of
the short, “ROXY” is fully discernable, but only the last four
letters of “QUIKSILVER” appear on the left side. See id. In
view of the fact that both “QUIKSILVER” and “ROXY”
were conspicuously displayed on the short in relatively close
proximity, a reasonable jury could conclude that the short did
not display “ROXY” as a standalone mark; an equally appro-
priate inference is that the short displayed the “QUIKSILVER
ROXY” mark.
The district court appeared to rule that Quiksilver used
“ROXY” as a standalone mark on the first promotional poster,
which featured the Bali-ohm logo. Assuming (without decid-
ing) that this poster is relevant to proving that Quiksilver first
used the “ROXY” mark in connection with the sale of
WEAR,” Quiksilver had no need to prove first use of the “QUIKSILVER
ROXY” mark at all, let alone by clear and convincing evidence. See Bax-
ter v. MCA, Inc., 812 F.2d 421, 424 n.2 (9th Cir. 1987).
As to the “ROXY” mark, the registration lists the first-use date as “at
least as early as January 1, 1992,” which precedes Kymsta’s first use of
“ROXYWEAR” in mid-January, 1992. Quiksilver’s evidence supports the
averment in its registration that it used “ROXY” at least as early as Janu-
ary 1, 1992. Quiksilver need not prove a first-use date that is earlier than
that alleged in its registration application. Therefore, the clear and con-
vincing evidence standard was never triggered.
7
At oral argument, Quiksilver suggested that the denim vest displayed
“ROXY” as a standalone mark. However, because “ROXY” appears
directly above “QUIKSILVER,” reasonable minds could infer that the vest
displayed the “QUIKSILVER ROXY” mark.
17380 QUIKSILVER, INC. v. KYMSTA CORP.
apparel, reasonable minds could also differ on whether the
Bali-ohm logo displayed the standalone “ROXY” mark or the
“QUIKSILVER ROXY” mark.8
[7] In view of the evidence in the record,9 the district court
erred in ruling as a matter of law that Quiksilver first used
“ROXY” as a standalone mark before Kymsta first used
“ROXYWEAR.”
b. Reasonable Minds Could Differ on Whether
Quiksilver Created Independent Trademark
Significance for Its “ROXY” Mark Before
Kymsta First Used “ROXYWEAR.”
Quiksilver argues, in the alternative, that the evidence at
trial established that the “ROXY” mark, used in conjunction
with the “QUIKSILVER” house mark in 1990 and 1991,
acquired independent trademark significance as Quiksilver’s
mark for its juniors’ line. This contention provides an inde-
pendent basis for concluding that Quiksilver is the senior user
of “ROXY.” See Vision Sports, Inc. v. Melville Corp., 888
F.2d 609, 613 (9th Cir. 1989).
[8] A product mark like “ROXY,” even if always displayed
with a house mark like “QUIKSILVER,” may acquire inde-
pendent trademark significance. See Bose Corp. v. QSC Audio
Prods., Inc., 293 F.3d 1367, 1374 (Fed. Cir. 2002). Whether
8
Quiksilver also used the Bali-ohm logo on hangtags that it attached to
all juniors’ apparel. For the same reason, these hangtags do not conclu-
sively display “ROXY” as a standalone mark.
9
The record does reveal a poster displaying “ROXY” alone. At oral
argument, however, Quiksilver disavowed reliance on this poster. In addi-
tion, Dodd testified that Quiksilver did not use the poster or the “ROXY”
mark on the poster during her employment with Quiksilver, which ended
in February, 1992. Her testimony serves as adequate evidence to support
an inference that the “ROXY” mark as displayed on the poster was not
used until sometime after she left in February, 1992, which is after Kymsta
began using its “ROXYWEAR” mark.
QUIKSILVER, INC. v. KYMSTA CORP. 17381
“ROXY” acquired trademark significance independent of
“QUIKSILVER” “depends on the manner of use and the com-
mercial impression engendered by that use.” Id. (citation
omitted). The question is whether “ROXY” is “recognized in
and of itself as an indication of origin” for the product. Tex-
tron Inc. v. Cardinal Eng’g Corp., 164 U.S.P.Q. 397, 399
(T.T.A.B. 1969).
In determining whether a mark has independent trademark
significance, we consider whether the mark owner has
engaged in “a constant pattern or effort . . . to use . . . [the
product mark] in a manner separate and distinct from [the
house mark].” See id. at 400 (holding that a product mark,
“ZIP,” had a separate commercial impression from its house
mark, “HOMELITE,” because, inter alia, “ ‘ZIP’ is always
set off by three arcs or by different logo and print style or by
different size lettering or by using it alone [and/or] in varying
positions apart from ‘HOMELITE’.”). “[C]onsumer aware-
ness of the product mark apart from the fame of the associated
house mark,” the “strength of the public reputation of the
product mark,” and the “nature and context of promotion” are
also “reliable test[s] of the independence of the product mark
from its parent house mark.” Bose Corp., 293 F.3d at 1374.
[9] Quiksilver asserts that whenever it displayed “ROXY”
with the “QUIKSILVER” house mark in 1990 and 1991, they
were displayed in a separate and distinct manner. For exam-
ple, Quiksilver’s second season hangtags displayed “QUIK-
SILVER” in corporate script and “ROXY” in a different size,
font, and color. This evidence may suggest that “ROXY”
acquired independent trademark significance, but it certainly
does not establish it. In fact, evidence to the contrary exists,
as McKnight and Danny Kwock, President of Quiksilver
Entertainment, testified that when Quiksilver launched its
juniors’ line, they were concerned because “no one would
know who Roxy was at that time.” Consequently, Quiksilver
decided to associate “ROXY” with “QUIKSILVER” to take
advantage of Quiksilver’s reputation.
17382 QUIKSILVER, INC. v. KYMSTA CORP.
[10] The evidence also evinces a lack of promotion.
Besides distributing free clothes and posters, Quiksilver did
no consumer advertising for the “ROXY” brand at least
through October 31, 1992, and did not advertise nationally in
mainstream publications until 1995 or 1996. Cf. Kellogg Co.
v. Gen. Foods Corp., 166 U.S.P.Q. 281, 282 (T.T.A.B. 1970)
(recognizing the existence of independent trademark signifi-
cance partially because “[e]xpenditures for media advertising
ha[d] increased from a sum in excess of one hundred and
seventy-five thousand dollars . . . to more than three million
dollars . . .”).
[11] The totality of the evidence could lead a reasonable
jury to conclude that, by mid-January, 1992, consumers were
not aware of “ROXY” apart from its association with “QUIK-
SILVER”; that the strength of the reputation of the “ROXY”
mark was low; and that promotion for “ROXY” was weak,
see Bose Corp., 293 F.3d at 1374; and, therefore, that
“ROXY” was not “recognized in and of itself as an indication
of origin” of Quiksilver’s juniors’ line. See Textron Inc., 164
U.S.P.Q. at 399.
c. Reasonable Minds Could Differ on Whether
Quiksilver May Tack the First-Use Date for Its
“QUIKSILVER ROXY” Mark onto Its
“ROXY” Mark.
Kymsta conceded that Quiksilver used its “QUIKSILVER
ROXY” mark in 1990 or 1991, and that “QUIKSILVER
ROXY” has priority over “ROXYWEAR.” Ruling that tack-
ing applies, the district court determined that “Quiksilver
Roxy and Roxy are one and the same” and “ROXY” can ben-
efit from “QUIKSILVER ROXY’s” 1990 or 1991 first-use
date.
[12] Under the tacking doctrine, a mark owner “essentially
seeks to ‘tack’ his first use date in the earlier mark onto the
subsequent mark.” Brookfield Commc’ns, Inc., 174 F.3d at
QUIKSILVER, INC. v. KYMSTA CORP. 17383
1048 (citation omitted). Tacking permits a mark owner “to
claim priority in a mark based on the first use date of a simi-
lar, but technically distinct, mark — but only in the exception-
ally narrow instance where the previously used mark is the
legal equivalent of the mark in question or indistinguishable
therefrom such that consumers consider both as the same
mark.” Id. at 1047-48 (citations and internal quotation marks
omitted). “The standard for tacking . . . is exceedingly strict:
The marks must create the same, continuing commercial
impression, and the later mark should not materially differ
from or alter the character of the mark attempted to be
tacked.” Id. at 1048 (emphasis, citation, and internal quotation
marks omitted). The later mark must be indistinguishable
from the original mark at the time that the later mark is intro-
duced. See id.; see also KeyCorp v. Key Bank & Trust, 99 F.
Supp. 2d 814, 820 (N.D. Ohio 2000).10
[13] Kymsta asserts that the district court erred by deciding
tacking as a matter of law. Whether tacking is an issue of law
or fact is a matter of first impression in this circuit. The only
circuits that have addressed this issue are the Federal Circuit
and the Sixth Circuit, and both consider tacking a legal ques-
tion for the court. See Van Dyne-Crotty, Inc. v. Wear-Guard
Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991); see also Data
Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 623
(6th Cir. 1998).
The Federal Circuit arrived at its conclusion by citing to,
10
In deciding whether tacking applies, courts often compare the earlier
mark with the subsequent mark to determine whether the two marks create
“the same, continuing commercial impression.” Brookfield Commc’ns,
Inc., 174 F.3d at 1048-49 (emphasis omitted) (reviewing cases). The simi-
larities or dissimilarities between two marks constitute evidence of
whether consumers view them as indistinguishable. See id. at 1047-48. In
this case, we are unable to compare the two marks because Quiksilver has
not delineated the attributes of its “QUIKSILVER ROXY” mark; there-
fore, we are left without a referent against which to compare the “ROXY”
mark.
17384 QUIKSILVER, INC. v. KYMSTA CORP.
and relying on, its cases that treat “likelihood of confusion”
— an analogous consideration — as a question of law. See
Van Dyne-Crotty, Inc., 926 F.2d at 1159 (citing Sweats Fash-
ions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1565 (Fed.
Cir. 1987), and In re Bed & Breakfast Registry, 791 F.2d 157,
158 (Fed. Cir. 1986)). In reaching the same conclusion, the
Sixth Circuit relied on the Federal Circuit’s decision in Van
Dyne-Crotty, Inc. See Data Concepts, Inc., 150 F.3d at 623.11
[14] In contrast, we have analyzed likelihood of confusion
as a question of fact. See Thane Int’l, Inc. v. Trek Bicycle
Corp., 305 F.3d 894, 901 (9th Cir. 2002). Applying the
approach of the Federal Circuit and the Sixth Circuit, we con-
clude that because we have analyzed the analogous consider-
ation of likelihood of confusion as a factual question, whether
tacking applies should also be analyzed as a question of fact.
Although the outcome differs, the approach is consistent with
that taken by our sister circuits.
[15] A question of fact may be resolved as a matter of law
if reasonable minds cannot differ and the evidence permits
only one conclusion. See Sanders v. Parker Drilling Co., 911
F.2d 191, 194 (9th Cir. 1990). However, the evidence prof-
fered by Quiksilver does not conclusively meet the “exceed-
ingly strict” standard that, at the time the “ROXY” brand was
introduced, consumers considered both “QUIKSILVER
ROXY” and “ROXY” as the same mark. See Brookfield
Commc’ns, Inc., 174 F.3d at 1048; see also KeyCorp, 99 F.
Supp. 2d at 820. McKnight testified that, when the “ROXY”
brand was launched, he decided to associate the “ROXY”
brand with “QUIKSILVER” because he was concerned that
“no one would know who Roxy was.” Randy Hild, Quik-
silver’s Senior Vice President of Marketing, confirmed that,
without combining the “ROXY” brand with “QUIKSILVER,”
11
Subsequent Sixth Circuit cases have analyzed likelihood of confusion
as a mixed question of fact and law. See Gibson Guitar Corp. v. Paul Reed
Smith Guitars, LP, 423 F.3d 539, 548 n.11 (6th Cir. 2005).
QUIKSILVER, INC. v. KYMSTA CORP. 17385
some people would not have recognized the “ROXY” brand
as being from the Quiksilver company, and the presence of
“QUIKSILVER” next to the “ROXY” brand could make a
difference on how a consumer perceives the trademark.
Finally, Dodd stated that the name of the brand given to the
juniors’ line was “QUIKSILVER ROXY” because “no one
would have known what ‘Roxy’ was.”
[16] This is evidence from which a reasonable jury could
easily conclude that “QUIKSILVER ROXY” and “ROXY”
did not create the “same, continuing commercial impression”
at the time the “ROXY” brand was introduced. Therefore, the
decision to allow Quiksilver to tack its priority in “QUIK-
SILVER ROXY” onto “ROXY” was erroneous. See Brook-
field Commc’ns, Inc., 174 F.3d at 1049 (“[I]t would be clearly
contrary to well-established principles of trademark law to
sanction the tacking of a mark with a narrow commercial
impression onto one with a broader commercial impression.”
(quoting Van Dyne-Crotty, Inc., 926 F.2d at 1160)).
2. Kymsta Presented Evidence That “ROXY” Is Not
an Inherently Distinctive Mark.
“There are five categories of trademarks: (1) generic; (2)
descriptive; (3) suggestive; (4) arbitrary; and (5) fanciful.”
Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove,
Inc., 419 F.3d 925, 927 (9th Cir. 2005) (citation omitted). At
one end of the spectrum, generic marks “give the general
name of the product; they embrace an entire class of prod-
ucts.” Id. (citation omitted). “Generic marks are not capable
of receiving protection because they identify the product,
rather than the product’s source.” Id. (citation omitted). At the
other end of the spectrum, suggestive, arbitrary, and fanciful
marks are “deemed inherently distinctive and are automati-
cally entitled to protection because they naturally serve to
identify a particular source of a product.” Id. (citation, alter-
ations, and internal quotation marks omitted).
17386 QUIKSILVER, INC. v. KYMSTA CORP.
Descriptive marks “define a particular characteristic of the
product in a way that does not require any exercise of the
imagination.” Id. (citation omitted). “A descriptive mark can
receive trademark protection if it has acquired distinctiveness
by establishing ‘secondary meaning’ in the marketplace.” Id.
(citation omitted); Dep’t of Parks & Recreation, 448 F.3d at
1127-28.
“Secondary meaning is used generally to indicate that a
mark . . . ‘has come through use to be uniquely associated
with a specific source.’ ‘To establish secondary meaning, [the
relevant party] must show that, in the minds of the public, the
primary significance of a product feature or term is to identify
the source of the product rather than the product itself.’ ” Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 766 n.4
(1992) (citations omitted).
[17] Where, as here, the PTO issues a mark registration
without requiring proof of secondary meaning, the registrant
(Quiksilver) enjoys a “presumption that the purchasing public
perceives the [“ROXY”] mark to be inherently distinctive.”
Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192
F.3d 337, 345 (2d Cir. 1999); see also Yellow Cab Co. of Sac-
ramento, 419 F.3d at 928.
Kymsta seeks to rebut this presumption, contending that
“ROXY” is not inherently distinctive because it is a female
name. “[P]ersonal names — both surnames and first names —
are generally regarded as descriptive terms,” 815 Tonawanda
Street Corp. v. Fay’s Drug Co., 842 F.2d 643, 648 (2d Cir.
1988) (citations omitted), which are not inherently distinctive.
See E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280,
1291 (9th Cir. 1992). To overcome the presumption in reli-
ance on this theory, Kymsta must present evidence that “the
primary significance of the mark to the purchasing public is
that of [primarily only] a [name].” Lane Capital Mgmt., Inc.,
192 F.3d at 345 (citation omitted). “[T]he relevant purchasing
QUIKSILVER, INC. v. KYMSTA CORP. 17387
public is not the population at large, but prospective purchas-
ers of the product.” Id. (citation omitted).
To establish that prospective purchasers perceived
“ROXY” as primarily only a name, Kymsta presented evi-
dence that “ROXY” is a female name; that “ROXY” is the
name of McKnight’s daughter, as well as the daughter of the
co-founder of Australian Quiksilver; and that Quiksilver
employees and materials, including a promotional video,
associated “ROXY” with McKnight’s daughter.
In Lane Capital Management, Inc., appellant, like Kymsta
in this case, argued that “Lane” in “Lane Capital Manage-
ment” is not inherently distinctive because Lane is primarily
only a surname. Id. at 341, 346. To support its argument,
appellant presented evidence indicating that Lane is indeed a
popular surname. Id. at 346. The Second Circuit held, how-
ever, that such evidence “is insufficient to create a genuine
issue for trial” because it “does not meet the burden of prov-
ing that it is primarily only a surname, especially since Lane
— unlike, for example, Harris — does have a dictionary defi-
nition.” Id. (emphasis in the original).
[18] In this case, although there is evidence that “ROXY”
was the name of a theater and a night club and connoted
“Rock ‘N’ Roll,” “ROXY,” unlike Lane, does not have a dic-
tionary definition, suggesting that it is primarily only (if not
only) a name. The absence of a dictionary definition for
“ROXY,” together with Kymsta’s evidence — which
included evidence from which a reasonable jury could infer
that Quiksilver used advertising material that associated
“ROXY” with the name of McKnight’s daughter — distin-
guish this case from Lane Capital Management, Inc. This evi-
dence, construed in the light most favorable to Kymsta,
reasonably supports an inference that prospective purchasers
perceived “ROXY” as primarily only a name. Accordingly,
judgment as a matter of law in favor of Quiksilver on the
issue of inherent distinctiveness was not warranted.
17388 QUIKSILVER, INC. v. KYMSTA CORP.
C. Kymsta Introduced Evidence to Support Its
Defense of Innocent Use Under 15 U.S.C.
§ 1115(b)(5).
To establish innocent use, Kymsta had the burden to prove
that it (1) adopted the “ROXYWEAR” mark without actual or
constructive knowledge of Quiksilver’s prior use of “QUIK-
SILVER ROXY” and “ROXY,” (2) used “ROXYWEAR”
before Quiksilver filed its trademark applications for the
“QUIKSILVER ROXY” and “ROXY” marks, and (3) contin-
uously used the “ROXYWEAR” mark after Quiksilver filed
its applications. See 15 U.S.C. § 1115(b)(5); see also Casual
Corner Assocs., Inc. v. Casual Stores of Nevada, Inc., 493
F.2d 709, 712 (9th Cir. 1974).
[19] According to Quiksilver, there is or should be a fourth
element to this defense: remoteness, which is an element of
the common law innocent-use defense. A remoteness element
would require Kymsta to prove that neither “QUIKSILVER
ROXY” nor “ROXY” was known in the geographical and
trade area where Kymsta first used “ROXYWEAR.” See
Champions Golf Club, Inc. v. The Champions Golf Club, Inc.,
78 F.3d 1111, 1124 (6th Cir. 1996). However, we hold that
remoteness is not an element of the innocent-use defense
under 15 U.S.C. § 1115(b)(5).
[20] The central reason for our holding is simple: The text
of 15 U.S.C. § 1115(b)(5) does not contain a remoteness ele-
ment. Conceding this point, Quiksilver counters that South-
land Corp. v. Schubert, 297 F. Supp. 477 (C.D. Cal. 1968),
incorporated a remoteness element into the statute. We do not
construe Southland Corp. as supporting Quiksilver’s incorpo-
ration argument. Rather, in Southland Corp., the district court
merely observed that § 1115(b)(5) “appears to be nothing
more than the common law of innocence . . .” Id. at 481. This
equivocal observation does not constitute a holding that
§ 1115(b)(5) incorporates a remoteness requirement. Indeed,
the Fourth Circuit has noted that “[§ 1115(b)(5)] appears to
QUIKSILVER, INC. v. KYMSTA CORP. 17389
have eliminated ‘remoteness’ as a requirement for the
defense.” Emergency One, Inc. v. American Fire Eagle
Engine Co., 332 F.3d 264, 272 n.4 (4th Cir. 2003) (citation
omitted); see also GTE Corp. v. Williams, 904 F.2d 536, 540-
41 (10th Cir. 1990) (analyzing the common law and statutory
versions of the innocent-use defense separately and discussing
remoteness only when analyzing the common law version);
Thrifty Rent-A-Car Sys., Inc. v. Thrift Cars, Inc., 831 F.2d
1177, 1182-83 (1st Cir. 1987) (reciting and applying only the
express provisions of § 1115(b)(5), with no mention of a
remoteness element).
We recognize that there are persuasive reasons to incorpo-
rate a remoteness element into 15 U.S.C. § 1115(b)(5). See,
e.g., J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition § 26:48 (4th ed. 1996) (iterating that
§ 1115(b)(5) “does not explicitly recite the element of
‘remoteness’ which is crucial to the common law defense,”
and advocating the element’s incorporation into § 1115(b)(5))
(footnote reference omitted). The Sixth Circuit, in fact, has
apparently incorporated a remoteness element into
§ 1115(b)(5). See Champions Golf Club, Inc., 78 F.3d at 1124
(instructing the district court on remand to make a threshold
remoteness determination). However, in our view, amending
§ 1115(b)(5) “is the role of Congress, not the courts.” Conner
v. Burford, 848 F.2d 1441, 1455 (9th Cir. 1988). For this rea-
son, we decline Quiksilver’s invitation to incorporate a
remoteness element into § 1115(b)(5).
Absent a remoteness element, Quiksilver’s remaining chal-
lenge is to the “continuous use” element of the innocent-use
defense. This element includes a “zone of reputation” compo-
nent and a “continuous use” component. When Quiksilver
filed its trademark applications, Kymsta’s trade area for
“ROXYWEAR” was frozen; Kymsta’s continuous use asser-
tion is limited to those areas where “ROXYWEAR” then
enjoyed recognition based on its reputation, advertising, and
17390 QUIKSILVER, INC. v. KYMSTA CORP.
sales. See Peaches Entm’t Corp. v. Entm’t Repertoire Assocs.,
Inc., 62 F.3d 690, 693-95 (5th Cir. 1995).
To maintain its trademark rights in the operative areas,
Kymsta also had to establish that it continuously used
“ROXYWEAR” from the time Quiksilver filed its trademark
applications through the time of trial. See Thrifty Rent-A-Car
Sys., Inc., 831 F.2d at 1182-83; see also Casual Corner
Assocs., Inc., 493 F.2d at 712 (“To be a continuing use, the
use must be maintained without interruption.”). Where usage
is interrupted, the innocent-use defense “dries up,” precluding
the innocent user from asserting trademark rights in those
areas. Thrifty Rent-A-Car Sys., Inc., 831 F.2d at 1183.
[21] Kymsta introduced evidence of zones of reputation.
For example, Heptner testified that “ROXYWEAR” has “built
up a reputation” as “a very trendy collection.” Anna Lew of
Nordstrom essentially agreed, stating that she has come to
expect “cute tops” from “ROXYWEAR.” Likewise, Laura
O’Connor of Urban Outfitters attested that Kymsta has “a
great designer and their product quality is excellent.”
“ROXYWEAR” sales were also documented in the record,
reflecting that “ROXYWEAR” was sold to “Merry-Go-
Round” in Maryland and “Contempo Casual” in Los Angeles,
California, as well as various Nordstrom locations.
[22] Additionally, Kymsta presented evidence of continu-
ous use. Heptner testified that Kymsta has continuously sold
“ROXYWEAR” merchandise since 1992. In response, Quik-
silver submits that Kymsta cannot show continuous use of
“ROXYWEAR” because Kymsta has sold, and continues to
sell, certain “ROXYWEAR” product under a private label,
which “dissociat[es] the ROXYWEAR mark from the prod-
uct.” However, Quiksilver has not cited, and we could not
find, any authority holding that continuous use is interrupted
where an innocent user begins selling certain product under a
private label. On the contrary, we have only concluded that
interruption occurred when there was complete non-use of a
QUIKSILVER, INC. v. KYMSTA CORP. 17391
mark for a one-year period, or the innocent user closed its
stores without any intent to reopen them. See Casual Corner
Assocs., Inc., 493 F.2d at 712-13. No comparable evidence
was presented in this case.
[23] As Kymsta introduced evidence from which a reason-
able jury could conclude that the continuous use element was
met, granting Quiksilver’s motion for judgment as a matter of
law as to Kymsta’s innocent-use defense under 15 U.S.C.
§ 1115(b)(5) was unwarranted.
III
CONCLUSION
The district court correctly held that the “QUIKSILVER
ROXY” and “ROXY” marks were not obtained fraudulently
and may benefit from the presumption of validity. However,
the court erred in holding as a matter of law that Kymsta
could not rebut the presumption of validity as to the “ROXY”
mark. Kymsta presented evidence from which a reasonable
jury could conclude that “ROXY” was not first used as a
standalone mark in 1991; “ROXY” did not have trademark
significance independent from the “QUIKSILVER” house
mark; “QUIKSILVER ROXY” and “ROXY” did not create
the “same, continuing commercial impression” for purposes
of tacking; and “ROXY” was not an inherently distinctive
mark. The court also erred in granting Quiksilver’s motion for
judgment as a matter of law on Kymsta’s innocent-use
defense under 15 U.S.C. § 1115(b)(5). However, we affirm
the court’s granting of Quiksilver’s motion for judgment as a
matter of law as to Kymsta’s fraud defense. We also affirm
the court’s denial of Kymsta’s cross-motion for judgment as
a matter of law as to innocent use. We reverse the court’s
decision to grant judgment as a matter of law in favor of
17392 QUIKSILVER, INC. v. KYMSTA CORP.
Quiksilver as to first use, tacking, inherent distinctiveness,
and innocent use; and remand.12
AFFIRMED in part, REVERSED in part, and
REMANDED. Each party is to bear its own costs on appeal.
12
We note that the district court also correctly concluded that Kymsta’s
evidence of damages, as presented, is speculative.