Marketquest Grp., Inc. v. BIC Corp. (316 F. Supp. 3d 1234, 2018)

(1) GRANTING IN PART AND DENYING IN PART PLAINTIFF MARKETQUEST'S MOTION FOR PARTIAL SUMMARY JUDGMENT

[ECF No. 205];

(2) DENYING DEFENDANT BIC CORP.'S MOTION FOR PARTIAL SUMMARY JUDGMENT

[ECF No. 216];

AND

(3) GRANTING IN PART AND DENYING IN PART DEFENDANTS BIC USA AND NORWOOD'S MOTIONS FOR SUMMARY JUDGMENT AS TO DAMAGES

[ECF Nos. 214, 215]

Hon. Cynthia Bashant, United States District Judge

This case is on remand from the Ninth Circuit's reversal of this Court's previous order granting summary judgment to Defendants on their fair use defense and corresponding dismissal of Plaintiff Marketquest Group, Inc.'s ("Marketquest") claims that Defendants infringed its All in One and THE WRITE CHOICE marks. See Marketquest Grp., Inc. v. BIC Corp. , No. 11-cv-618-BAS-JLB, 2015 WL 1757766 (S.D. Cal. April 17, 2015), rev'd by , Marketquest Grp., Inc. v. BIC Corp. , 862 F.3d 927 (9th Cir. 2017). The Court has reinstated Marketquest and BIC Corp.'s cross-motions for summary judgment filed in 2014, the merits of which the Court has not previously reached. Marketquest seeks partial summary judgment on all of Defendants' thirteen counterclaims and twelve of Defendants' twenty-two affirmative defenses. (ECF No. 205.) BIC Corp. has opposed the motion. (ECF No. 254.) BIC Corp. has cross-moved for partial summary judgment on five counterclaims, which Marketquest has opposed. (ECF Nos. 216-1, 259.) The Court has also reinstated Defendants BIC USA, Inc. ("BIC USA") and Norwood Promotional Products LLC's ("Norwood") motions for summary judgment as to Plaintiff's damages, which Marketquest has opposed. (ECF Nos. 214, 215, 258.) The reinstated motions and opposing papers, the record submitted, and the parties' evidentiary objections number several thousand pages.

For the reasons herein, the Court: (1) grants in part and denies in part Marketquest's motion; (2) denies BIC Corp.'s motion in full; and (3) grants in part and denies in part BIC USA and Norwood's motions.

I. BACKGROUND

A. Factual Background

1. The Parties and the Promotional Products Industry

The acts of alleged trademark infringement in this case arise in the context of the promotional products industry. A promotional product is a product used by a company to brand itself with its customers. (ECF No. 205-8 Decl. of Harris Cohen ("Cohen Decl.") ¶ 16.) The industry supports the manufacture, imprinting, and distribution of promotional products to companies seeking to brand themselves. (Id. ) In this context, a distributor approaches a supplier which either manufactures or imports a promotional product and then imprints the company's brand and messaging on the product. The end company then gives the product away as part of a promotion. (Id. ¶ 17, Ex. I.3.)

Marketquest, doing business as "All in One," is a San Diego, California-based local supplier of promotional products, including pens, writing instruments and magnets. (Id. ¶¶ 5-12.) At issue in this case are Plaintiff's federally registered All in One and THE WRITE CHOICE trademarks. Marketquest's All in One marks, primarily for "writing instruments, namely pens," include: (1) the word mark "ALL-IN-ONE", Registration No. 2,422,976 (Jan. 23, 2001) ('976 Registration); (2) the word mark "ALL-IN-ONE LINE," Registration No. 2,426,417 (Feb. 6, 2001) ('417 Registration); (3) the design mark "ALL IN ONE," Registration No. 3,153,089 (Oct. 10, 2006) ('089 Registration) (a registration which also covers services of "dissemination of advertising matter"); and (4) the design service mark "ALL IN ONE," Registration No. 3,718,333 (Dec. 1, 2009) ('333 Registration) , specifically for services including "customized printing of equipment, merchandise and accessories for business promotion." (ECF No. 205-2, Request for Judicial Notice ("RFJN") ¶¶ 1-3, 5, Exs. A-C, E.) Plaintiff also sues for alleged infringement of the word mark for goods "THE WRITE CHOICE," Registration No. 3,164,707 (Oct. 31, 2006) ('707 Registration). (Id. ¶ 4, Ex. D).

According to Plaintiff, Defendant Norwood is one of the largest non-apparel promotional products suppliers in the industry. (ECF No. 205-22, Decl. of Michael Lane ("Lane Decl.") ¶¶ 12-13, Exs. J, K.) Plaintiff claims that Norwood has reached this size by acquiring and aggregating smaller suppliers, like Plaintiff, and retaining their trademarks. (Id. ¶¶ 14-15, Exs. F.2, I.2.) BIC Corp. and BIC USA acquired Norwood in 2009 at a bankruptcy auction. (ECF No. 214-2, Decl. of Lori Bauer ("Bauer Decl.") ¶ 3.)

2. Defendants' Alleged Infringement of the Marks

Plaintiff alleges Defendants used its "All in One" marks in their 2011 catalogue. (ECF No. 227-5, Lane Decl. ¶ 32, Exs. Y, Z.) Plaintiff claims Defendants placed the mark on the cover of the catalog in the same location where Norwood placed its "sub brands" on the cover of its 2010 catalog, which Plaintiff contends implied that Defendants had acquired Plaintiff. (Id. ¶¶ 20-23, Exs. S, N, O, P, Q.) Defendants contend that the phrase "All in One catalogue" signified that Defendants had merged multiple catalogues into one. (ECF No. 214-2, Bauer Decl. ¶ 6.) Defendants also distributed promotional materials that featured an image of this 2011 catalogue, and directed customers to look for products or information in the "2011 Norwood All in One catalogue." (ECF No. 227-5, Lane Decl. ¶¶ 34-38, Exs. X, Y, Y.2, AC, AD, AE, AF.) Plaintiff also alleges that Defendants distributed an on-line advertisement that said "Put Your Drinkware Needs...in a Norwood All in One basket," which included a photo of a basket containing several types of drinkware. (Lane Decl. ¶ 12, Ex. C.2.)

Plaintiff further alleges Defendants used "the Write Pen Choice" to promote the 30th anniversary of the BIC Round Stic pen. (First Amended Complaint ("FAC") ¶ 23; ECF No. 227-5, Lane Decl. ¶ 43, Ex. K.3.) Plaintiff claims that this infringed the "THE WRITE CHOICE" mark. (Id. )

B. Procedural Posture

1. Pre-Appeal

On March 28, 2011, Marketquest brought suit against BIC Corp., BIC USA, and Norwood, alleging that (1) Defendants infringed the All in One marks in violation of 15 U.S.C. § 1114 ; (2) Defendants' conduct with respect to the All in One marks constituted unfair competition in violation of 15 U.S.C. § 1125(a) ; (3) Defendants infringed THE WRITE CHOICE mark in violation of 15 U.S.C. § 1114 ; (4) Defendants' conduct with respect to THE WRITE CHOICE mark constituted unfair competition in violation of 15 U.S.C. § 1125(a) ; (5) Defendants' conduct violated the California Unfair Competition Law, CAL. BUS. & PROF. CODE § 17200, et seq. ; and (6) Defendants were unjustly enriched. (ECF No. 1.) Plaintiff filed the FAC on May 5, 2011, alleging these same claims. (ECF No. 14.) On May 13, 2011, Defendants filed their Answer, raising thirteen counterclaims, broadly grouped into fraud, abandonment, and mere descriptiveness and ornamentality. (ECF No. 17.) Defendants also asserted some twenty-two affirmative defenses, including fair use, defenses related to the counterclaims, and multiple equitable defenses. (Id. )

In August 2011, Marketquest moved for a preliminary injunction to enjoin Defendants from continuing their alleged infringement of the marks. (ECF No. 27.) Judge Sammartino, then presiding over this case, denied Plaintiff's motion on November 7, 2011. (ECF No. 41.) Judge Sammartino determined that Plaintiff was likely to show it has valid, protectable All In One marks, and rejected Defendants' defenses of fraud and abandonment. (Id. at 6-9.) Although Judge Sammartino determined that there was "some likelihood of confusion" based on the eight likelihood of confusion factors elaborated in AMF, Inc. v. Sleekcraft Boats , 599 F.2d 341, 348-49 (9th Cir. 1979), she also determined that Defendants were likely to succeed on a fair use defense. (Id. at 9-23.) Marketquest did not appeal the denial of the preliminary injunction motion.

Roughly three years later, after numerous discovery disputes among the parties requiring Court intervention on eighteen occasions (ECF No. 175), the case entered the summary judgment stage on October 27, 2014 when Marketquest filed its motion for partial summary judgment on Defendants' counterclaims and certain affirmative defenses. (ECF No. 205). BIC Corp. filed its motion for partial summary judgment on Defendants' fraud and abandonment counterclaims. (ECF No. 216-1.) BIC USA and Norwood each filed motions for summary judgment on the fair use defense and Marketquest's damages. (ECF Nos. 214, 215.) After submission of extensive briefing and a swelling record, the Court held oral argument on the parties' motions on February 9, 2015. (ECF No. 323, 324.)

On April 17, 2015, the Court granted Defendants Norwood and BIC USA's motions on fair use. (ECF No. 327.) As a result of that decision, the Court denied Defendant BIC Corp.'s cross-motion (ECF No. 216-1) and dismissed Defendants' counter-claims (ECF No. 17). The Court terminated as moot Plaintiff's motion for partial summary judgment (ECF No. 205), Defendants' motion for sanctions (ECF No. 289) and several motions seeking to exclude testimony of experts and certain witnesses. (ECF Nos. 199, 217, 218, 219). Judgment was entered in favor of Defendants and the FAC was dismissed. (ECF No. 328.)

2. Appeal and Post-Remand

Plaintiff appealed this Court's summary judgment decision in favor of Defendants on May 15, 2015. (ECF No. 339.) Over two years later, the Ninth Circuit issued its mandate (the "Mandate") reversing this Court's order. (ECF No. 377.) With respect to the All in One marks, the Ninth Circuit determined that genuine issues of fact exist as to all elements of the fair use defense. (Id. at 13-17.) The Ninth Circuit, however, left open to this Court to determine on remand the relevance of the degree of consumer confusion in this case. (Id. at 19.) As to THE WRITE CHOICE mark, the Ninth Circuit determined that this Court erred by applying the fair use analysis to Defendants' use when it had also found that "there was no evidence of actual or potential confusion." (Id. ) The Ninth Circuit observed that " '[t]he fair use defense only comes into play once the party alleging infringement has shown by a preponderance of the evidence that confusion is likely.' " (Id. (quoting KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc. , 408 F.3d 596, 608-09 (9th Cir. 2005).) The Ninth Circuit remanded for this Court "to consider Marketquest's trademark infringement claim regarding Defendants' use of the 'The Write Choice.' " (Id. at 20.)

In view of the Mandate and after requesting the parties' positions regarding how the case should proceed (ECF Nos. 383, 386, 388, 390, 391), the Court reinstated the FAC, Defendants' counterclaims, and the motions at issue in this Order. (ECF No. 400.)

3. The Issues for Resolution Here

With the procedural posture of the case set, the Court briefly outlines the issues for resolution in this Order. Marketquest and BIC Corp. both seek partial summary judgment with respect to Defendants' (1) Affirmative Defense 15 and Counterclaims 4, 8, 10, and 12 regarding fraudulent procurement of the marks, and (2) Affirmative Defense 16 and Counterclaims 3, 7, 9, and 11 regarding abandonment of the marks. Marketquest further seeks partial summary judgment on (1) Counts 1 and 3 (trademark infringement claims) of the FAC with respect to whether Marketquest has valid and protectable marks; (2) Affirmative Defense 21 and Counterclaims 1, 2, 5, 6 and 13 regarding mere descriptiveness and ornamentality of certain marks; and (3) Affirmative Defenses 2 (acquiescence), 6 (laches), 7 (waiver), 8 (estoppel), 9 (unclean hands), 10 (statute of limitations), 11 (general invalidity defense), 17 (trademark misuse), and 20 (nominative fair use). BIC USA and Norwood seek summary judgment on Plaintiff's damages. In addition to these issues, the Court addresses the issue of likelihood of confusion regarding THE WRITE CHOICE mark, as instructed by the Mandate.

II. EVIDENTIARY ISSUES

A. Plaintiff's Requests for Judicial Notice

Marketquest submits two requests for judicial notice. The first request seeks judicial notice of a certified copy of each mark's registration with the United States Patent and Trademark Office ("PTO"). (ECF No. 205-2 Exs. A-E.) The second request seeks judicial notice of a certified copy of each registration file wrapper for the marks, which includes information regarding the initial application for the marks, correspondence with the PTO, and related registration documents. (ECF No. 258-1 Exs. F-J.)

Federal Rule of Evidence 201(b) allows a court to take judicial notice of "a fact that is not subject to reasonable dispute because it (1) is generally known within the trial court's territorial jurisdiction; or (2) can be accurately and readily determined from sources whose accuracy cannot reasonably be questioned." FED. R. EVID. 201(b). Administrative agency records are subject to judicial notice. Interstate Nat. Gas Co. v. S. Cal. Gas Co. , 209 F.2d 380, 385 (9th Cir. 1953) ; see also United States v. 14.02 Acres , 547 F.3d 943, 955 (9th Cir. 2008). Courts routinely take judicial notice of PTO records in trademark litigation. See, e.g. , Bennett v. Forbes , No. 17-cv-464-MMA-KSC, 2017 WL 4557215, at *2 (S.D. Cal. Oct. 12, 2017) (taking judicial notice of trademark application obtained from PTO electronic search system); Clearly Food & Beverage Co. v. Top Shelf Bevs., Inc. , 102 F.Supp.3d 1154, 1161 (W.D. Wash. 2015) (taking judicial notice of trademark application, notice of publication of mark, registration certificate, combined declaration of use and/or excusable nonuse/application for renewal); Dahon N. Am., Inc. v. Hon , No. 2:11-cv-05835-ODW (JCGx), 2012 WL 1413681, at *8 n.4 (C.D. Cal. April 24, 2012) (taking judicial notice of trademark assignment filed on PTO-published website). Accordingly, the Court grants Marketquest's requests.

B. Evidentiary Objections

Each party has lodged numerous evidentiary objections to many exhibits submitted in connection with the summary judgment briefing. These objections are largely unwarranted and the Court generally overrules them.

"[A] party does not necessarily have to produce evidence in a form that would be admissible at trial" to survive summary judgment. Block v. City of Los Angeles , 253 F.3d 410, 419 (9th Cir. 2001). Rather, "Rule 56[ (c) ] requires only that evidence 'would be admissible', not that it presently be admissible." Burch v. Regents of Univ. of Cal. , 433 F.Supp.2d 1110, 1120 (E.D. Cal. 2006). Thus, "[t]he focus is on the admissibility of the evidence's contents, not its form." Estate of Hernandez-Rojas ex rel. Hernandez v. United States , 62 F.Supp.3d 1169, 1174 (S.D. Cal. 2014) (citing Fonseca v. Sysco Food Servs. of Ariz., Inc. , 374 F.3d 840, 846 (9th Cir. 2004) ); see also Fraser v. Goodale , 342 F.3d 1032, 1036 (9th Cir. 2003) (same).

The vast majority of the objections offered by Marketquest (ECF Nos. 268, 282) are "boilerplate recitations of evidentiary principles or blanket objections without analysis applied to specific items of evidence." Stonefire Grill, Inc. v. FGF Brands, Inc. , 987 F.Supp.2d 1023, 1033 (C.D. Cal. 2013) (quoting Doe v. Starbucks , Inc. , No. 08-0582, 2009 WL 5183773, at *1 (C.D. Cal. Dec. 18, 2009) ). As such, they do little to convince the Court that a meritorious objection hides among the haystack of evidentiary rules cited. While Defendants' objections appear tailored in form-adding analysis, rather than simply citing a slew of evidentiary rules-the consistency of the same objections raised to nearly every statement in Marketquest's declarations and the underlying exhibits evidences the boilerplate spirit that guides them. (ECF Nos. 291, 310-6.) As to all boilerplate objections from the parties regarding foundation, relevance, hearsay, the best evidence rule, and prejudice, "the Court will not scrutinize each objection and give a full analysis of identical objections raised as to each fact." Stonefire Grill, Inc. , 987 F.Supp.2d at 1033. "To the extent that the Court relied on objected-to evidence, it relied only on admissible evidence and, therefore, the objections are overruled." Capitol Records, LLC v. BlueBeat, Inc. , 765 F.Supp.2d 1198, 1200 n.1 (C.D. Cal. 2010) (quotation omitted).

Both sides object to certain exhibits on the ground that they are irrelevant, speculative, and/or argumentative, or constitute an improper legal conclusion. These objections are unnecessary. The "parties should simply argue that the facts are not material," rather than drown the Court in objections which "are all duplicative of the summary judgment standard itself." Burch , 433 F.Supp.2d at 1119 (emphasis in original). Both sides also object to statements in the declarations submitted by the other's counsel as improperly characterizing the contents of documents, being argumentative, or making improper legal conclusions. These objections are "simply superfluous" in the summary judgment context because "statements in declarations or improper legal conclusions, or argumentative statements, are not fact and...will not be considered on a motion for summary judgment." Id. ; Hanger Prosthetics & Orthotics, Inc. v. Capstone Orthopedic, Inc. , 556 F.Supp.2d 1122, 1126 n.1 (E.D. Cal. 2008) (declining to rule on objections to statements in declarations submitted with a summary judgment motion). The Court overrules all such objections.

Both sides lodge various authentication challenges to documents submitted by the other, even when the document has been provided by the other side as well. To give a document foundation, the proponent need only make a showing of authenticity sufficient to allow a reasonable juror to find that the matter in question is what its proponent claims. United States v. Tank , 200 F.3d 627, 630 (9th Cir. 2000) (citing FED. R. EVID. 901(a) ). The Court is generally satisfied that the parties' exhibits meet this standard and overrules these objections.

Marketquest does offer a more particularized authentication challenge by objecting to various excerpts of deposition testimony submitted by Defendants, which generally lack a reporter's certification. A deposition or an extract therefrom is properly authenticated in a motion for summary judgment when it identifies the name of the deponent and the action and includes the reporter's certification that the deposition is a true record of the testimony of the deponent. See FED. R. EVID. 901(b) ; FED. R. CIV. P. 56(e), 30(f)(1) ; see also Orr v. Bank of Am. , 285 F.3d 764, 774 (9th Cir. 2002). Although Defendant's excerpts do not satisfy this rule when taken alone, Marketquest has offered and properly authenticated excerpts from the depositions of the same individuals. As such, the excerpts on which Defendants rely from the same deponents are authenticated. See Orr , 285 F.3d at 776 ("[W]hen a document has been authenticated by a party, the requirement of authenticity is satisfied as to that document with regards to all other parties..."); Kesey, LLC v. Francis , CV-06-540-AC, 2009 WL 909530, at *4 (D. Or. April 3, 2009) (finding that plaintiff's proper authentication of deposition excerpts from same deponent rendered admissible defendant's excerpts from same deponents). The Court thus overrules Marketquest's objections. With the parties' evidentiary objections addressed, the Court finally turns to the merits of the motions for summary judgment.

III. LEGAL STANDARD

Summary judgment is proper on "each claim or defense" "or the part of each claim or defense" on which summary judgment is sought when "there is no genuine dispute as to any material fact, and the moving party is entitled to judgment as a matter of law." FED. R. CIV. P. 56(a). A fact is "material" if it might affect the outcome of the suit under the governing law, and a dispute is "genuine" if there is sufficient evidence for a reasonable trier of fact to decide in favor of the nonmoving party. Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).

Summary judgment is appropriate "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." FED. R. CIV. P. 56(c). "The district court may limit its review to documents submitted for the purpose of summary judgment and those parts of the record specifically referenced therein." Carmen v. San Francisco Unified Sch. Dist. , 237 F.3d 1026, 1030 (9th Cir. 2001). The court is not obligated "to scour the record in search of a genuine issue of triable fact." Keenan v. Allan , 91 F.3d 1275, 1279 (9th Cir. 1996) (citing Richards v. Combined Ins. Co. of Am., 55 F.3d 247, 251 (7th Cir. 1995) ). When resolving a motion for summary judgment, the court must view all inferences drawn from the underlying facts in the light most favorable to the nonmoving party. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The court does not make credibility determinations or weigh conflicting evidence. See Anderson , 477 U.S. at 255, 106 S.Ct. 2505. The court's role at summary judgment "is to isolate and dispose of factually unsupported claims" so that they are "prevented from going to trial with the attendant unwarranted consumption of public and private resources." Celotex Corp. v. Catrett , 477 U.S. 317, 323-24, 327, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "Disputes over irrelevant or unnecessary facts will not preclude a grant of summary judgment." T.W. Elec. Serv., Inc. v. Pac. Elec. Contractors Ass'n , 809 F.2d 626, 630 (9th Cir. 1987).

The party seeking summary judgment bears the initial burden of establishing the absence of a genuine issue of material fact. Celotex Corp. , 477 U.S. at 323, 106 S.Ct. 2548. The moving party can satisfy its burden in two ways: (1) by presenting evidence that negates an essential element of the nonmoving party's case or (2) by demonstrating that the nonmoving party failed to make a showing sufficient to establish an element essential to that party's case on which that party will bear the burden of proof at trial. Id. at 322-23, 106 S.Ct. 2548. If the moving party fails to discharge this initial burden, summary judgment must be denied and the court need not consider the nonmoving party's evidence. Adickes v. S.H. Kress & Co., 398 U.S. 144, 159-60, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970).

If the moving party meets its burden, the nonmoving party must go beyond the pleadings and, by its own evidence or by citing appropriate materials in the record, show by sufficient evidence that there is a genuine dispute for trial. Celotex Corp. , 477 U.S. at 324, 106 S.Ct. 2548. The party "must do more than simply show that there is some metaphysical doubt as to the material facts....[w]here the record as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no 'genuine issue for trial.' " Matsushita , 475 U.S. at 587, 106 S.Ct. 1348. A "scintilla of evidence" in support of the nonmoving party's position is insufficient; "there must be evidence on which the jury could reasonably find for the [nonmoving party]." Anderson , 477 U.S. at 252, 106 S.Ct. 2505 ; Triton Energy Corp. v. Square D Co. , 68 F.3d 1216, 1221 (9th Cir. 1995) (same). Nor can "a party...manufacture a genuine issue of material fact merely by making assertions in its legal memoranda." S.A. Empresa de Viacao Aerea Rio Grandense v. Walter Kidde & Co., Inc. , 690 F.2d 1235, 1238 (9th Cir. 1982) (citations omitted).

"[S] ummary judgment is generally disfavored in the trademark arena" because of "the intensely factual nature of trademark disputes." Marketquest Grp., Inc. , 862 F.3d at 932 (citing KP Permanent Make-Up, Inc. , 408 F.3d at 602 ); Interstellar Starship Servs. Ltd. v. Epix, Inc. , 184 F.3d 1107, 1109 (9th Cir. 1999). However, "this is not invariably so." Sidco Indus. v. Wimar Tahoe Corp. , 795 F.Supp. 343, 345 (D. Or. 1992) (quoting Boston Athletic Ass'n v. Sullivan , 867 F.2d 22, 24 (1st Cir. 1989) ). Claims or affirmative defenses in a trademark infringement action that lack a sufficient evidentiary basis under the applicable standard of proof, or for which there are only questions of law for the court to resolve, are appropriate for summary resolution. See FreecycleSunnyvale v. Freecycle Network , 626 F.3d 509, 514 (9th Cir. 2010) ("In ruling on a motion for summary judgment, our inquiry 'necessarily implicates the substantive evidentiary standard of proof that would apply at the trial on the merits.' ") (quoting Anderson , 477 U.S. at 252, 106 S.Ct. 2505 ); Saul Zaentz Co. v. Wozniak Travel, Inc. , 627 F.Supp.2d 1096, 1108 (N.D. Cal. 2008) ("[S]ummary judgment is still appropriate in trademark suits when no dispute remains as to genuine issues of material fact.") (citing Tillamook Country Smoker, Inc. v. Tillamook Cty. Creamery Ass'n , 465 F.3d 1102 (9th Cir. 2006) ); Lockheed Martin Corp. v. Network Solutions, Inc. , 985 F.Supp. 949, 956 (C.D. Cal. 1997).

IV. DISCUSSION

A. Validity and Protectability of the Marks

Marketquest moves for summary judgment on two sets of issues that present the same question: whether the All in One and THE WRITE CHOICE marks are valid and protectable. Marketquest moves for partial summary judgment on its trademark infringement claims of the All in One marks (Count 1) and THE WRITE CHOICE mark (Count 3) on the ground that there are no triable issues regarding whether it has valid and protectable marks. (ECF No. 205-1 at 8-9.) Marketquest also moves for summary judgment on Defendants' Affirmative Defense 21 and Counterclaims 1, 2, 5, 6, and 13. (Id. at 13-20.) Defendants assert that certain marks are invalid because they are "merely descriptive" and/or "merely ornamental." (ECF No. 17.) Defendants' counterclaims thus intersect with the fundamental question of the protectability of Marketquest's marks. Because the claims and counterclaims intersect in this manner, the Court will consider them together.

The fundamental starting point of whether Plaintiff has valid and protectable marks is the nature of a trademark. The Lanham Act defines a trademark as "any word, name, symbol, or device, or any combination thereof" used by any person "to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127. To claim infringement, a plaintiff must have a "valid, protectable trademark." Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp. , 174 F.3d 1036, 1046 (9th Cir. 1999). "The existence and extent of trademark protection for a particular term depends on that term's inherent distinctiveness." Calista Enters. v. Tenza Trading Ltd. , 43 F.Supp.3d 1099, 1115 (D. Or. 2014) (citing 15 U.S.C. § 1052 ).

Courts have identified five categories of distinctiveness which impact whether a mark is protectable: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful. Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). Suggestive, arbitrary, and fanciful marks are deemed "inherently distinctive" and automatically entitled to federal trademark protection because "their intrinsic nature serves to identify a particular source of a product." Zobmondo Entm't, LLC , 602 F.3d at 1113 ; see also Two Pesos, Inc. , 505 U.S. at 768-69, 112 S.Ct. 2753. "Generic" marks, or "common descriptive" names for what a product is, are the weakest category and receive no trademark protection. Zobmondo Entm't, LLC , 602 F.3d at 1113 ; Park 'N Fly, Inc. v. Dollar Park & Fly, Inc. , 718 F.2d 327, 329 (9th Cir. 1983), rev'd on other grounds by , 469 U.S. 189, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985). A "descriptive" mark may be entitled to protection only if it has acquired distinctiveness through secondary meaning. Zobmondo Entm't, LLC , 602 F.3d at 1113 ; Two Pesos , 505 U.S. at 769, 112 S.Ct. 2753. Trademark validity and the category to which a mark belongs are deemed to be "an intensely factual issue" with "the plaintiff bear[ing] the ultimate burden of proof" to show that its trademark is valid and protectable. Zobmondo Entm't, LLC v. Falls Media, LLC , 602 F.3d 1108, 1113 (9th Cir. 2010) ; KP Permanent Make-Up, Inc. , 408 F.3d at 605.

As all of Marketquest's marks in this case are registered on the Principal Register of the PTO, the registrations are "prima facie evidence of the validity of the registered marks." 15 U.S.C. § 1057(b) ; 15 U.S.C. § 1115(a). "[F]ederal registration ...entitles the plaintiff to a strong presumption that the mark is a protectable mark." Zobmondo Entm't, LLC , 602 F.3d at 1113 (internal quotations omitted); see also Brookfield Commc'ns., Inc. , 174 F.3d at 1047. 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 , 602 F.3d at 1114 ; Tie Tech, Inc. v. Kinedyne Corp. , 296 F.3d 778, 783 (9th Cir. 2002) ; Vuitton et Fils S.A. v. J. Young Enters., Inc. , 644 F.2d 769, 775-76 (9th Cir. 1981). A defendant may rebut the presumption of validity when the federally registered trademark is contestable. Vuitton et Fils S.A. , 644 F.2d at 775. Defendants' burden at trial with their counterclaims is thus to show that, notwithstanding the presumption of protectability arising from the marks' registrations, the marks are descriptive and lack secondary meaning. See Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc. , 419 F.3d 925, 928 (9th Cir. 2005), Surgicenters of Am., Inc. v. Med. Dental Surgeries, Co. , 601 F.2d 1011, 1014 (9th Cir. 1979). As the non-movants here, however, Defendants need only show that a triable issue of fact precludes summary judgment in Marketquest's favor.

1. The All in One Service Marks ('089 and '333 Registrations)

The Court first considers Marketquest's motion as it applies to the All in One marks in the '089 and '333 registrations for services, both of which are contestable. The Court finds that genuine issues of material fact preclude summary judgment in Plaintiff's favor on both Count 1 of its trademark infringement claim and Counterclaims 5 and 13 of Defendants' mere descriptiveness counterclaims as to its contestable registrations for services.

a. There Exists a Genuine Dispute About Whether the All in One Marks Are Descriptive of Services

As an initial matter, the nature of the marks in the '089 and '333 registrations bears upon how the Court should assess the issues the parties raise. The PTO registered both marks without requiring proof of secondary meaning. When "the PTO issues a mark registration without requiring proof of secondary meaning, the registrant...enjoys 'a presumption that the purchasing public perceives the...mark to be inherently distinctive.' " Quiksilver, Inc. v. Kymsta Corp. , 466 F.3d 749, 760 (9th Cir. 2006) (quoting Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc. , 192 F.3d 337, 345 (2d Cir. 1999) ); see also Zobmondo Entm't, LLC , 602 F.3d at 1113-14. Marketquest understandably grasps onto this presumption in its motion for summary judgment, requesting that the Court "decline Defendants' invitation" to find that the marks are not inherently distinctive. (ECF No. 205-1 at 15.) "However, 'while the registration adds something on the scales, we must come to grips with an assessment of the mark itself.' " Network Automation, Inc. v. Advanced Sys. Concepts , 638 F.3d 1137, 1149 (9th Cir. 2011) (quoting Zobmondo Entm't , LLC , 602 F.3d at 1115 ). Thus, the fact that both the contestable '089 and '333 registrations did not require proof of secondary meaning does not foreclose this Court from determining that a genuine dispute of material fact exists as to whether the marks are descriptive without secondary meaning.

"Deciding whether a mark is distinctive or merely descriptive 'is far from an exact science' and is 'a tricky business at best.' " Lahoti v. VeriCheck, Inc. , 586 F.3d 1190, 1197 (9th Cir. 2009) (quoting Banff, Ltd. v. Federated Dep't Stores, Inc. , 841 F.2d 486, 489 (2d Cir. 1988) ). Suggestive marks require "a consumer [to] use imagination or any type of multistage reasoning to understand the mark's significance." Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery , 150 F.3d 1042, 1047 n.8 (9th Cir. 1998) (providing as examples "Air Care" for a service that maintains medical equipment used for administering oxygen and "Anti-Washboard" for a soap that makes scrubbing unnecessary when washing clothes). Descriptive marks, however, "define qualities or characteristics of a product in a straightforward way." Id. (examples include "Honey Baked Ham" for a ham that has been baked with honey and "Honey Roast" for nuts that have been roasted with honey); see also Park 'N Fly, Inc. , 469 U.S. at 194, 105 S.Ct. 658 (stating that a descriptive mark "describes the qualities or characteristics of a good or service"). "Whether a mark suggests or describes the goods or services of the trademark holder depends, of course, upon what those goods or services are." Entrepreneur Media, Inc. v. Smith , 279 F.3d 1135, 1142 (9th Cir. 2002) (internal quotations and citations omitted). As noted, the question of which classification applies to a particular mark is a factual determination. Lahoti , 586 F.3d at 1195.

Two tests are used to differentiate descriptive marks requiring proof of secondary meaning from suggestive marks that do not. The first and "primary criterion" is the "imagination test," which asks whether "imagination or a mental leap is required in order to reach a conclusion as to the nature of the product being referenced." Rudolph Int'l, Inc. v. Realys, Inc. , 482 F.3d 1195, 1198 (9th Cir. 2007) (quotation marks omitted). A routinely used example of a mark that fails the imagination test is "ENTREPENEUR," which is descriptive as applied to a magazine because "an entirely unimaginative, literal-minded person would understand the significance of the reference." Entrepreneur Media, Inc. , 279 F.3d at 1142. The second test is known as the "competitor needs" test, which "focuses on the extent to which a mark is actually needed by competitors to identify their goods or services." Rodeo Collection, Ltd. v. W. Seventh , 812 F.2d 1215, 1218 (9th Cir. 1987). The needs test asks whether "the suggestion made by the mark is so remote and subtle that it is really not likely to be needed by competitive sellers to describe their goods." Zobmondo Entm't, LLC , 602 F.3d at 1116 (quotations omitted). These two tests are complementary rather than independent inquiries as "the more imagination that is required to associate a mark with a product or service, the less likely the words used will be needed by competitors to describe their products or services." Zobmondo Entm't, LLC , 602 F.3d at 1117 (quotations and citations omitted).

Marketquest argues that the issue of whether the All in One mark is descriptive or suggestive has already been decided, directing the Court to the preliminary injunction order. (ECF No. 205-1 at 15.) At the preliminary injunction stage, Judge Sammartino "agree[d] with Marketquest that ALL-IN-ONE is at least a suggestive mark because it requires a mental leap from the mark to the product, and as a registered trademark it is inherently distinctive." (ECF No. 41 at 11 (internal quotations omitted).) In reaching this conclusion, however, the decision first determined that the needs aspect was "plainly quite low" because the phrase is not needed to describe a company that sells customizable business promotion merchandise. (Id. ) The decision determined that "[c]orrespondingly, the mark's imagination aspect is high." (Id. ) While recognizing that "the phrase 'all in one' comes closest to describing the 'one-stop source' aspect of Marketquest's service," the decision reasoned that "it does not explain how the phrase in any way describes customizable business promotion merchandise, which is in essence the heart of Marketquest's service." (Id. at 12.)

Marketquest contends that a different determination by this Court now would "reverse" the preliminary injunction ruling. (ECF No. 275 at 17.) The Court rejects Marketquest's argument for two postural reasons. First, a preliminary injunction ruling is premised on an inherently limited record. See, e.g., FTC v. Affordable Media, LLC , 179 F.3d 1228, 1235 (9th Cir. 1999). A court's summary judgment analysis necessarily "may differ from its findings at the preliminary injunction stage" due to a fuller evidentiary record. Zepeda v. INS , 753 F.2d 719, 723-24 (9th Cir. 1983). Defendants raise arguments and evidence here that were not presented during the preliminary injunction stage. Second, Marketquest's argument "misperceives the purpose of a preliminary injunction" assessment, which "is not a preliminary adjudication on the ultimate merits," but rather an assessment of whether the equities point toward "preserving rights pending final resolution of the dispute." Sierra On-Line, Inc. v. Phoenix Software, Inc. , 739 F.2d 1415, 1422 (9th Cir. 1984). Importantly, "decisions on preliminary injunctions do not constitute law of the case and parties are free to litigate the merits."

Golden State Transit Corp. v. City of Los Angeles , 754 F.2d 830, 832 n.3 (9th Cir. 1985) (internal quotation omitted); Anaheim v. Duncan , 658 F.2d 1326, 1328 n.2 (9th Cir. 1981). Thus, the preliminary injunction order is not binding here.

In addition to these postural reasons, the Court respectfully departs from the reasoning in the preliminary injunction order because relevant distinctions have come into play at this stage of the proceedings in which the ultimate merits are very much at issue. The preliminary injunction order treated Marketquest's All in One marks for goods and services together, blurring the line between the specific products named in the All in One mark registrations for goods with those for services. But as the Court has noted, a mark is assessed with particular "reference to the goods or services that it identifies," Entrepreneur Media, Inc. , 279 F.3d at 1142 (emphasis added). A mark may be descriptive as to one but not as to the other, a point Marketquest expressly recognizes by arguing against descriptiveness of the All in One marks for goods separately from that for services. (Contrast ECF No. 205-1 at 13-14 (goods) with id. 14-17 (services).) Whereas the Court agrees that the phrase "all in one" is not descriptive as applied to goods classes, the Court cannot say the same with respect to Marketquest's service marks.

Turning to the imagination test here, Defendants argue that the All in One mark merely describes an aspect of Marketquest's services. Defendants need only present sufficient evidence to show that there is a triable issue that the primary significance of the mark to the purchasing public is descriptive. Quiksilver, Inc , 466 F.3d at 760-61 (quoting Lane Capital Mgmt., Inc. , 192 F.3d at 345 ). Defendants provide a dictionary definition of "all in one." "A suitable starting place for attempting to draw the line between a suggestive and a descriptive mark is the dictionary." Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc. , 618 F.3d 1025, 1033 (9th Cir. 2010) (internal quotations omitted); see also Surgicenters of Am., Inc. , 601 F.2d at 1015 n.11 ("While not determinative, dictionary definitions are relevant and often persuasive in determining how a term is understood by the consuming public ..."). The Oxford Dictionary definition proffered by Defendants defines "all in one" to mean "[c]ombining two or more items or functions in a single unit." (ECF No. 254-3 Ex. 19.) Defendants argue that one does not have to take a mental leap from the mark to Marketquest's services.

Given the absence of a comprehensive consumer survey in the record, the Court cannot say as a matter of law that the relevant purchasing public of Marketquest's services-distributors who engage on behalf of end companies-would or would not find that All in One "describes some aspect of the" service. Fortune Dynamic, Inc. , 618 F.3d at 1034 (emphasis added); Zobmondo Entm't, LLC , 602 F.3d at 1116 (absence of survey precluded court from deciding how consumers would understand the mark "Would you rather...?"). In addition to enumerated goods classes, the '089 registration includes "dissemination of advertising matter," as a service for which the All in One mark is registered. (ECF No. 205-5 RFJN Ex. C.) The '333 registration applies to "customized imprinting of equipment, merchandise and accessories for business promotion." (205-7 RFJN Ex. E.) A reasonable jury focusing on the items aspect of the dictionary definition might conclude that Marketquest's services are descriptive because the services combine multiple items, such as pens, magnets, key chains, and the like.

In moving for summary judgment, Marketquest argues that the imagination aspects are "high" because "nothing in the phrase ALL IN ONE immediately conveys knowledge to a consumer that [Marketquest] offers customized imprinting services on the business promotion products it sells to distributors." (ECF No. 205-1 at 16.) The Court cannot agree that the imagination test requires such a high level of specificity when a mark need only describe "some aspect" to be deemed descriptive. See Fortune Dynamic, Inc. , 618 F.3d at 1034 ; Zobmondo Entm't, LLC , 602 F.3d at 1116 ; see also Sunmark, Inc. v. Ocean Spray Cranberries, Inc. , 64 F.3d 1055, 1059 (7th Cir. 1995) ("For a word or mark to be considered descriptive it merely needs to refer to a characteristic of the product."); Sec. Ctr., Ltd. v. First Nat'l. Sec. Ctrs. , 750 F.2d 1295, 1299 (5th Cir. 1985) ("To be descriptive, a term need only describe the essence of a business, rather than to spell out comprehensively all its adjunct services.") (holding that "Security Center" constituted a descriptive term when used by businesses "provid[ing] secured storage facilities"). A reasonable jury might focus on the function aspect of the dictionary definition. Doing so, a jury might determine that Marketquest's services have a singular function, i.e. , customizable business promotion, and do not combine multiple functions in one.

Defendants also submit evidence disputing competitor need to use the phrase "all in one." On this, Defendants submit evidence that the phrase "all in one" is the name of several businesses specifically in the promotional products field. (ECF No. 310 at 17; ECF No. 254-4 Ex. 24, 24a.) On this point, Defendants' expert, Wingfield Hughes, states that sales representatives in the promotional products industry use the phrase to describe the assortment of their products. (ECF No. 310-4 Ex. 23 at 4.) Another defense expert, Bruce Silverman opines that the phrase "all in one" is a very popular brand name for many businesses across industries. (ECF No. 310-4 Ex. 25 at 10.) Based on this evidence, a reasonable jury might conclude that all in one is descriptive based on third party use. See Miss World (U.K.) Ltd. v. Mrs. Am. Pageants, Inc. , 856 F.2d 1445, 1449 (9th Cir. 1988) ("[A] mark which is hemmed in on all sides by similar marks on similar goods cannot be very 'distinctive.' It is merely one of a crowd of marks. In such a crowd, customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other."); cf. Halo Mgmt., LLC v. Interland, Inc. , 308 F.Supp.2d 1019, 1034 (N.D. Cal. 2003) (noting that the term "halo" is a popular one in "[i]n the trademark world," thus rendering marks incorporating the term "relatively weak").

Ever "mindful that summary judgment is generally disfavored in the trademark arena," Marketquest Grp., Inc. , 862 F.3d at 932, the Court finds that Defendants have sufficiently raised a genuine dispute of material fact. See, e.g., Fortune Dynamic, Inc. , 618 F.3d at 1034 (determining that a genuine issue of material fact existed for whether the term "DELICIOUS" was descriptive as applied to footwear given several different dictionary meanings, any one of which a jury could rely on). Accordingly, the Court finds that summary judgment in Marketquest's favor is inappropriate both on Count 1 as to whether it has valid and protectable All in One marks for services and as to Defendants' descriptive counterclaims against the contestable '089 and '333 registrations as to services.

b. A Dispute About Whether the Mark Has Secondary Meaning for Marketquest's Services Remains

Assuming that the All in One marks are descriptive as to Marketquest's services, there is a genuine dispute about whether the marks in the '089 and '333 registrations for services have acquired secondary meaning entitling them to trademark protection.

To determine whether a descriptive mark has acquired secondary meaning, courts consider: " '(1) whether actual purchasers of the product bearing the claimed trademark associate the trademark with the producer, (2) the degree and manner of advertising under the claimed trademark, (3) the length and manner of use of the claimed trademark, and (4) whether use of the claimed trademark has been exclusive.' " Yellow Cab Co. of Sacramento , 419 F.3d at 930 (quoting Levi Strauss & Co. v. Blue Bell, Inc. , 778 F.2d 1352, 1358 (9th Cir. 1985) (en banc) ). "The test of secondary meaning is the effectiveness of the effort to create it, and the chief inquiry is directed towards the consumer's attitude about the mark in question: does it denote to him a single thing coming from a single source?" Carter-Wallace, Inc. v. Procter & Gamble Co. , 434 F.2d 794, 802 (9th Cir. 1970) (internal quotation marks omitted). Generally, an expert survey of purchasers can provide the most persuasive evidence of secondary meaning. Vision Sports, Inc. v. Melville Corp. , 888 F.2d 609, 615 (9th Cir. 1989) ; Levi Strauss & Co. , 778 F.2d at 1358.

Here, neither party has submitted survey evidence regarding secondary meaning. In the absence of such evidence and assuming a jury concludes All in One is descriptive as to services, the competing evidence the parties present may permit a reasonable jury to find that the All in One mark does or does not have secondary meaning.

Plaintiff has submitted testimony from a few distributor-customers, two trade organization executives, and Marketquest's president, Harris Cohen, to argue that All in One has acquired secondary meaning. (ECF No. 205-22 Lane Decl. Exs. A-I, I.4, N, O, AN.2, AR-AZ, BR.) At the summary judgment stage, declarations from associates of a company or its president are minimally persuasive in showing that consumers generally have formed a similar mental impression regarding the company's mark. Japan Telecom, Inc. v. Japan Telecom Am., Inc. , 287 F.3d 866, 874 (9th Cir. 2002) ; Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc. , 198 F.3d 1143, 1152 (9th Cir. 1999) ("Trademark law is skeptical of the ability of an associate of a trademark holder to transcend personal biases to give an impartial account of the value of the holder's mark."). In contrast, Defendants provide the deposition testimony of their expert, Wingfield Hughes, whose company was a customer of Marketquest but who could not recall Marketquest when referred to as "All in One." In his role as an expert, Hughes further opines that suppliers and distributors within the promotional products industry would think of "all in one" as a descriptive expression. (ECF No. 310-4 Ex. 23 at 4.) This evidence thus controverts deposition testimony Marketquest offers from other distributor-customers. Drawing all inferences in favor of Defendants, the Court cannot say that a reasonable jury could not find for Defendants.

Plaintiff also argues that its "extensive and exclusive use" of the mark shows secondary meaning. (ECF No. 205-1 at 17.) Yet, "secondary meaning requires more than extensive use alone." Art Attacks Ink, LLC v. MGA Entm't Inc. , 581 F.3d 1138, 1146 (9th Cir. 2009). Even on this issue, Defendants' expert Silverman opines that the phrase "all in one" is used "so broadly and generically" that it is unlikely consumers will identify it with one company. (ECF No. 254-4 Ex. 25 at ¶ 25.) He opines that "too many other businesses use the phrase for it to qualify as a mark" and provides numerous examples. (Id. ¶¶ 25-26.) Defendants provide evidence of their own distributor-customers in the promotional products industry who use the phrase "all in one" in their company names and who order promotional products from Norwood or BIC USA. (ECF No. 254-4 Ex. 24 Bauer Decl. ¶ 14, Ex. 24a.) Such evidence thus controverts Marketquest's claim of exclusive use.

Lastly, Defendants also question Marketquest's advertising expenditures. A party asserting secondary meaning must demonstrate that its advertising "was 'of a nature and extent such as to create an association of the term with the user's goods.' " Dep't of Parks & Recreation v. Bazaar del Mundo Inc. , 448 F.3d 1118, 1128 (9th Cir. 2006) (quoting Malcolm Nicol & Co. v. Witco Corp. , 881 F.2d 1063, 1065 (Fed. Cir. 1989) ). Silverman characterizes Marketquest's yearly advertising of some $340,000 to be a "relative pittance" for a national advertiser. Although the Marketquest's expenditures may be explained because it is merely a local supplier, drawing all inferences in favor of Defendants, the Court cannot say that a reasonable jury would not think otherwise.

Accordingly, the Court finds that summary judgment in Marketquest's favor is inappropriate on Count 1 and Defendants' descriptive counterclaims (Counterclaims 5 and 13) against the '089 and '333 registrations for services. If a jury finds that the All in One marks for services are descriptive, the jury would need to resolve this additional genuine factual dispute regarding whether the mark has secondary meaning.

2. The All in One Marks for Goods

Although the Court has determined that genuine issues of fact remain regarding whether the All in One marks in the '089 and '333 registrations are protectable as to services, the Court finds that Marketquest is entitled to partial summary judgment on Count 1 insofar as it concerns the validity and protectability of the All in One marks for goods. These marks include the incontestable '967 and '417 registrations and the '089 registration, which the Court finds to be functionally incontestable solely as to goods classes. In addition, Marketquest is entitled to summary judgment on Counterclaims 5 and 6 regarding mere descriptiveness and ornamentality of the '089 registration with respect to goods classes.

a. Incontestable '967 and '417 Registrations for Goods

It is undisputed that Marketquest's All in One mark '967 and '417 registrations for goods are incontestable. (ECF No. 205-1 at 2; ECF No. 254 at 11, 13; ECF No. 205-3 Ex. A ('417 registration); ECF No. 205-4 Ex. B ('967 registration).)

Under the Lanham Act, a mark may become incontestable if it is not challenged within five years of its registration. See 15 U.S.C. § 1065(3). To become incontestable, Section 1065(3) requires that the registered mark be continuously used in commerce for "five consecutive years" subsequent to the date of registration and still be in use in commerce. Id. The registration of an incontestable mark is "conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark." 15 U.S.C. § 1115(b). "Once incontestability is established, only [the]...defenses enumerated in § 1115(b) can be interposed in an action for trademark infringement." Sovereign Order of Saint John of Jerusalem, Inc. v. Grady , 119 F.3d 1236, 1240 (6th Cir. 1997).

Incontestable registrations may not be challenged on the ground that they are merely descriptive. See Park 'N Fly, Inc. , 469 U.S. at 205, 105 S.Ct. 658 ("[T]he holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that the mark is merely descriptive."); Clearly Food & Beverage Co. , 102 F.Supp.3d at 1173 n.7 (citing Entrepreneur Media, Inc. , 279 F.3d at 1142 & n.3 ); see also 15 U.S.C. § 1115(b) (omitting mere descriptiveness or mere ornamentality from list of permissible defenses to incontestable registrations). The absence of mere descriptive and ornamentality counterclaims to the All in One mark '967 and '417 registrations ostensibly reflects Defendants' awareness that they cannot challenge the registrations on those grounds. Defendants raise no other grounds for finding that these marks are invalid or not protectable.

As a result of their incontestable nature here, the marks in the '967 and '417 registrations are "presumed to be at least descriptive with secondary meaning," regardless of whether the mark would otherwise be descriptive and regardless of its strength or weakness as a mark. Caliber Auto. Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC , 605 F.3d 931, 939 (11th Cir. 2010) ; see also KP Permanent Make-Up, Inc. , 408 F.3d at 602 ("A descriptive mark that has become incontestable is conclusively presumed to have acquired secondary meaning") (citing Entrepreneur Media, Inc. , 279 F.3d at 1142 n.3 ). Because no triable issues remain as to the '967 and '417 registrations for goods, the Court finds that Marketquest is entitled to partial summary judgment on Count 1 that it has valid and protectable marks with respect to these registrations.

b. The '089 Registration's Goods Classes Are Functionally Incontestable

Marketquest's All in One mark '089 registration is not itself incontestable. In Counterclaim 5, Defendants allege that the registration is invalid because it is merely descriptive, in part, as to goods, and in Counterclaim 6, Defendants allege it is merely ornamental as to goods. (ECF No. 17 at 15-16.) Marketquest moves for summary judgment on these counterclaims on the ground that the mark is "functionally incontestable" as to goods in view of the incontestable All in One '967 and '417 registrations for goods. (ECF No. 205-1 at 13-14 & n.12.) The Court agrees.

It is an "idle" act to cancel a contestable registration when the party holding it has an incontestable registration which protects "the most salient feature" of the contestable registration. See Park 'N Fly, Inc. , 718 F.2d at 331 n.3 (rejecting argument that a contestable service mark registration should be cancelled because its most salient feature-the words "park 'n fly"-were protected in an incontestable service mark registered earlier). Courts have extended protection against descriptiveness challenges to a mark in an incontestable registration to a contestable registration if the marks are iterations of the same mark and for the same goods or services. See, e.g., Cottonwood Fin. Ltd. v. Cash Store Fin. Servs. , 778 F.Supp.2d 726, 744 n.21 (N.D. Tex. 2011) (considering "marks that lack[ed] incontestable status as functionally incontestable" when the plaintiff had "obtained incontestable status for various iterations of the mark" "Cash Store"); Serv. Merch. Co. v. Serv. Jewelry Stores , 737 F.Supp. 983, 999 (S.D. Tex. 1990) (noting that "[i]t would be illogical to allow Defendants to claim that the phrase SERVICE MERCHANDISE is merely descriptive with respect to the non-incontestable marks while the law conclusively presumes that the same phrase is not merely descriptive with respect to the incontestable mark.") (citing In re American Sail Training Ass'n , 230 U.S.P.Q. (BNA) 879 (T.T.A.B. 1986) ).

Defendants oppose treating the All in One design mark ('089 registration) as functionally incontestable. First, Defendants contend that such treatment is unavailable when the marks were never properly used in commerce. (ECF No. 254 at 13-14.) As set forth in the Court's analysis of Defendants' abandonment counterclaims herein, Defendants' argument that Marketquest has never properly used the marks in commerce fails as a matter of law. Thus, this reason carries no weight here.

Defendants further contend that the PTO does not permit an applicant to "bootstrap" incontestability from a prior registration when seeking an additional registration, pointing to a several regulations which they contend say nothing about "such bootstrapping." (Id. at 14.) In support of this argument, Defendants point to In re Merrill Lynch , Pierce, Fenner & Smith, Inc. , 828 F.2d 1567, 1568 (Fed. Cir. 1987), in which the Federal Circuit determined that a prior incontestable registration did not entitle a registrant to seek registration of the same mark for services broader than those covered by the incontestable registration. Defendants' argument confuses the issue here, which is not about what requirements a registrant must satisfy to register a given mark with the PTO, but about whether it makes any practical sense to challenge a mark on "merely descriptive" grounds when other iterations of the same salient feature of the marks for the same goods cannot be so challenged. Here, the Court finds that doing so would be nothing more than an "idle" act.

The most salient feature of the '967, '417, and '089 registrations is the "All in One" phrase. A review of the certificates for the All in One '967 and '417 registrations shows that these incontestable registrations cover the same goods set forth in the goods classes of the '089 registration. (ECF No. 205 RFJN Exs. A-C.) Accordingly, the Court grants summary judgment to Marketquest on Counterclaim 5 as it pertains to goods classes in the '089 registration and on Counterclaim 6 in full.

Further, the Court grants partial summary judgment to Marketquest on Count 1 of the FAC as it pertains to the validity and protectability of the All in One mark '089 registration as to goods classes.

3. The Write Choice Mark ('707 Registration)

In Affirmative Defense 21 and Counterclaims 1 and 2, Defendants allege that THE WRITE CHOICE mark is merely descriptive with no secondary meaning and its use is merely ornamental. (ECF No. 17 at 10-11.) Marketquest moves for summary judgment on the ground that Defendants have no evidence that the mark is merely descriptive or merely ornamental and that it lacks secondary meaning. (ECF No. 205-1 at 17-18.) The Court finds that a triable issue remains regarding whether the mark has acquired secondary meaning.

THE WRITE CHOICE mark is subject to a particular type of presumption given that the PTO required Marketquest to show that it acquired distinctiveness. (ECF No. 258-5 Supp. RFJN Ex. I (file wrapper for '707 registration).) When the PTO determines that a mark is descriptive, Section 1052(f) of the Lanham Act permits a party to register the mark if it has acquired distinctiveness through five years of continuous and exclusive. 15 U.S.C. § 1052(f). When a mark is registered under this provision, there are two implications relevant to the Court's analysis here. First, such a registration "assumes that the mark has been shown or conceded to be merely descriptive." Yamaha Int'l Corp. v. Hoshino Gakki Co. , 840 F.2d 1572, 1577 (Fed. Cir. 1988) ; Arrow Fastener Co., Inc. v. Stanley Works , 59 F.3d 384, 393 (2d Cir. 1995). Second, such a registration creates a rebuttable presumption that the mark has secondary meaning. See Zobmondo Entm't, LLC , 602 F.3d at 1114 n.7 (citing PaperCutter, Inc. v. Fay's Drug Co. , 900 F.2d 558, 564 (2d Cir. 1990) ); Arrow Fastener Co., Inc. , 59 F.3d at 393 ; Church & Dwight Co. v. Mayer Laboratories, Inc. , No. C-10-4429 EMC, 2012 WL 1745592, at *1 (N.D. Cal. May 16, 2012).

In view of the nature of this presumption, a party challenging the validity and protectability of a mark registered u