Am. Auto. Ass'n of N. Cal. v. Gen. Motors LLC (367 F. Supp. 3d 1072, 2019)

United States District Court for the Northern District of California 2019-03-21

Commerce and Trade

Citations

Full opinion text

LUCY H. KOH, United States District Judge

Plaintiffs American Automobile Association of Northern California, Nevada & Utah and its affiliate A3 Mobility LLC ("Plaintiffs" or "AAA") bring the instant trademark infringement lawsuit against Defendants General Motors LLC and its affiliate Maven Drive LLC ("Maven") (collectively, "Defendants" or "GM"). Before the Court is GM's motion for summary judgment. Having considered the submissions of the parties, the relevant law, and the record in this case, the Court DENIES IN PART AND GRANTS IN PART GM's motion for summary judgment.

I. BACKGROUND

A. Factual Background

This case concerns two competing car share services with similar names. On April 17, 2017, AAA issued a press release announcing the launch of its "GIG" car share service. GM also developed a car share service called "MAVEN GIG," which AAA asserts AAA did not learn about until May 3, 2017. See Opp'n at 1. Viewing the facts in the light most favorable to AAA, the Court discusses the two car share services below. The Court starts with AAA's GIG car share service.

1. AAA's GIG Car Share Service

In 2016, AAA created its subsidiary, A3 Mobility, to focus on a new business model innovation for AAA. ECF No. 77-1 ("Haight Decl.") ¶ 7; see also ECF No. 77-2 ("Bowler Decl."), Ex. 1 ("Hetke Tr.") at 16:19-25, 24:13-18. In September 2016, A3 Mobility began developing an idea for a car share service, and AAA drafted a business case to present to its executives that identified April 2017 as the launch date. Haight Decl. ¶ 8; Hetke Tr. at 46:6-18, 53:19-54:3, 106:5-12; 138:17-23. AAA hired third-party advertising agency Muhtayzik Hoffer, and with Muhtayzik Hoffer's collaboration, AAA settled on the name [redacted] with the tagline "Get In. Go." in January 2017. Haight Decl. ¶¶ 9-12; Hetke Tr. at 79:20-80:25. Soon after, AAA learned that [redacted] was covered by a preexisting third party trademark application, and therefore AAA abandoned [redacted] and proceeded with "GIG" (the acronym of "Get In. Go."), a mark that AAA's Chief Innovation Officer, Mike Hetke, came up with during a January 27, 2017 meeting. Haight Decl. ¶¶ 13-15; Hetke Tr. at 80:1-25, 82:21-83:25, 85:6-25.

After receiving a clean trademark clearance search yielding no conflicting marks, AAA filed a trademark application for the "GIG" mark with the U.S. Patent and Trademark Office on February 3, 2017 (U.S. Trademark Application Serial No. 87323570). Haight Decl. ¶ 16; Hetke Tr. at 136:10-138:3. On February 24, 2017, AAA submitted a formal application to the City of Oakland as "Gig Car Share" for parking permits. Haight Decl. ¶ 17; see also Bowler Decl., Ex. 2. By March 2, 2017, AAA shared the GIG mark with event services vendor Daybreaker, LLC, and Daybreaker, LLC began planning the official GIG launch event and promoted the event through social media, posters, and direct email. Haight Decl. ¶¶ 18-19; see also Bowler Decl., Ex. 3 ("Voges Tr.") at 63:8-65:22. By April 12, 2017, there were over 3,600 RSVPs for the GIG launch event. Haight Decl. ¶ 21; see also Bowler Decl., Exs. 4 & 5.

On April 17, 2017, AAA issued a formal press release regarding the GIG launch; launched the GIG website, www.gigcarshare.com; began social media advertising and street team/field marketing; and opened up a GIG early enrollment period that included a targeted e-mail campaign to sign up GIG users. Haight Decl. ¶¶ 22-23; Hetke Tr. at 138:17-140:14, 149:15-25; Voges Tr. at 31:19-33:12, 36:10-37:16, 40:14-25, 41:11-42:9: 90:21-91:3.

AAA launched the GIG mobile phone application in app stores on April 17, 2017, and immediately began receiving hundreds of downloads. Haight Decl. ¶ 25. San Francisco-based public media outlet KQED aired a radio interview about GIG with AAA's GIG Car Share President, Jason Haight. Id. ¶ 24; see also Bowler Decl., Exs. 6 & 7. Between April 17, 2017 and April 30, 2017, dozens of AAA employees drove GIG branded cars in public. Id. ¶ 26; see also Voges Tr. at 68:8-18. By April 28, 2017, there were over 7,000 RSVPs for the GIG launch event. Haight Decl. ¶ 27. When the GIG launch event was ultimately held on April 30, 2017, it was heavily branded with the GIG mark, and there were thousands of attendees. Id. ¶ 28; Voges Tr. at 66:20-22; 68:19-70:9.

Within one year of operation, GIG doubled in size from 250 to 500 cars and expanded to serve four cities, including Berkeley, Oakland, Alameda, and Albany. Haight Decl. ¶ 32. AAA publicly announced GIG's expansion into Sacramento in 2019. Id. ¶ 34.

2. GM's MAVEN GIG Car Share Service

a. GM's "Maven" Mark

Maven is an affiliate of GM that provides vehicle-sharing services under its "Maven" mark. ECF No. 1 ("Compl") ¶ 29. GM developed its "Maven" mark in January of 2016. GM offers rental services through Maven that are labeled with the word "Maven" and another identifying word. For instance, GM offers rental services targeted toward personal use called "MAVEN HOME" and "MAVEN CITY" under its Maven mark. Bowler Decl., Ex. 8 ("Bhattacharya Tr.") at 33:11-12; id. , Ex. 9 ("Stooke Tr.") at 26:21-28:16.

b. GM's EXPRESS DRIVE Relationship with Lyft

Around the same time that GM developed its Maven mark, GM had a program with Lyft called "EXPRESS DRIVE" for the use of GM vehicles in providing Lyft services. Bhattacharya Tr. at 33:19-34:8; Bowler Decl., Ex. 8 ("Steyn Tr.") at 20:11-25:9. Specifically, EXPRESS DRIVE is a program branded by Lyft whereby Lyft "offers cars through their partners, like Maven to the drivers exclusively for them to earn money on the Lyft platform." Steyn Tr. at 21:9-12. In other words, Lyft serves as the direct contact to the drivers. Id. at 22:21-25, 52:18-23.

Before the fall of 2016, however, GM's relationship with Lyft and EXPRESS DRIVE became strained due to unprofitability and unaligned incentives. Bhattacharya Tr. at 50:10-51:6; Steyn Tr. at 24:16-25:10; 53:18-23. In particular, GM wanted direct contact with the drivers. Steyn Tr. at 53:18-23. Therefore, in the summer of 2016, GM began exploring an alternative "platform-agnostic" model where GM would maintain a direct relationship with drivers regardless of the business partnership. Id. ; Stooke Tr. at 37:13-38:22.

c. GM Brainstorms the MAVEN GIG Mark

GM came up with the MAVEN GIG mark idea in early August 2016, when a team of GM employees brainstormed names for a car rental service for individuals to drive for companies like Uber or Lyft, who do not own cars or do not want to use their own cars for commercial purposes. ECF No. 75-1 ("Bhattacharya Decl.") ¶ 4; Stooke Tr. at 46:3-5, 48:8-22; Adkisson Decl., Ex. 2 ("5th Resp. to AAA's 1st Interrogs.") at 3-5. The name was based on research by Megan Stooke, the Chief Marketing Officer for Maven Drive, regarding the phrase "gig economy," which is used to describe the trend in the labor market for short-term, freelance work, such as working as a driver for one of the app-based services. Bhattacharya Decl. ¶¶ 6-7; Stooke Tr. at 48:8-22. From that research, the team shared the MAVEN GIG name with GM's advertising agency, Dentsu Aegis Network, on August 8, 2016. Bhattacharya Decl. ¶¶ 6-7; Adkisson Decl., Ex. 5. Management approved the MAVEN GIG mark in mid-September 2016. Bhattacharya Decl. ¶¶ 8-9. GM employees confirmed that the purpose of the MAVEN GIG service was for GM to have a direct relationship with drivers and to have an agnostic platform where drivers could drive for any ride share or delivery business. Strooke Tr. at 38:10-18; Steyn Tr. at 53:18-23.

d. GM Communicates with Potential Business Partners

Before GM's formal approval of the MAVEN GIG mark, GM used the mark in a few instances to discuss potential partnerships with other businesses. Bhattacharya Decl. ¶ 10. For instance, GM emailed Amazon twice in August and September 2016, to propose a partnership based on the MAVEN GIG service. Id. ¶¶ 11-12; Adkisson Decl., Ex. 7 ("8/29/16 Email to Amazon"); id. , Ex. 8 ("9/28/16 Email to Amazon") ("For Maven Gig ... [A] Gig partnership with Amazon wouldn't be a fleet dedicated to Amazon; the concept of Gig is that rideshare drivers can use our car to drive for multiple platforms."); Stooke Tr. 80:14-24.

On September 8, 2016, GM participated in a live WebEx meeting with Uber during which GM proposed a business partnership with Uber. Bhattacharya Decl. ¶ 13. As part of that WebEx meeting, GM emailed Uber a slideshow titled "Maven Gig" (file name "Maven-Gig-Overview_Uber.pdf") that explained the MAVEN GIG service. Id. ¶ 13; see also Adkisson Decl., Ex. 9 ("9/8/16 Email to Uber"). The slideshow bore both the Maven mark as well as the MAVEN GIG mark.

In September and November 2016, GM also discussed and presented written materials about the MAVEN GIG service with an individual name Moshe Cohen from Gravity Technologies as well as the grocery delivery company Instacart. Bhattacharya Decl. ¶¶ 14-16; Stooke Tr. 81:5-12; see also Adkisson Decl., Ex. 10 ("9/2016 Emails with Gravity Technologies"); id. , Ex. 12 ("11/2016 Instacart Maven Gig Presentation"); id. , Ex. 11 ("11/30/16 Instacart Maven Gig Workflow Presentation"). The Instacart presentation predominantly displayed the Maven mark, but also displayed the MAVEN GIG mark. See 11/2016 Instacart Maven Gig Presentation.

e. GM's Pilot Program Partnership with Uber

Both parties agree that GM entered into a partnership with Uber to rent cars directly to Uber drivers. See Mot. at 3; Opp'n at 4; see also Bhattacharya Decl.

¶ 17. However, GM paints the partnership as the "first business partnership for the MAVEN GIG service," while AAA emphasizes that this was merely a pilot program. Compare Mot. at 3-6, with Opp'n at 4-7.

The evidence reflects that GM and Uber entered into a three-month "Pilot Agreement" executed on October 31, 2016, that made Uber a rideshare partner. Steyn Tr.at 52:1-18, 97:8-19, 99:22-100:25; id. , Ex. 11 ("Pilot Agreement"); Stooke Tr. 39:6-41:3; Bhattacharya Tr. at 53:2-15. Although the Pilot Agreement mentioned Uber and Maven, it did not mention MAVEN GIG. See Pilot Agreement. The Pilot Agreement provided that Uber had exclusive responsibility to "conduct email marketing of the Program to existing and potential Uber Driver Partners," and that the parties would jointly distribute a press release announcing the launch of the program. Pilot Agreement at GM18110 & GM18121; Steyn Tr. at 103:1-104:22; Bhattacharya Tr. at 26:24-25, 144:15-145:25. The press release went out on November 1, 2016; however, the press release mentioned Uber and Maven but did not mention MAVEN GIG. Bowler Decl., Ex. 12 ("11/1/16 Press Release"); Steyn Tr. at 105:10-107:8; Bhattacharya Tr. at 148:11-150:6. Indeed, GM employees later clarified that this was because GM technically never had a co-marketing agreement with Uber on MAVEN GIG. Bhattacharya Tr. at 255:4-18; Bowler Decl., Ex. 27.

AAA points to evidence in the record demonstrating that GM may have sought to purposefully conceal the MAVEN GIG mark during its pilot with Uber. For instance, the record demonstrates that GM was particularly sensitive about the Lyft EXPRESS DRIVE partnership, so GM wanted to get "Express Drive unwound" before they got "[MAVEN GIG] up and running," especially because GM had not given Lyft formal notice that GM was exiting EXPRESS DRIVE and especially given the fact that Lyft and Uber were competitors. Steyn Tr. at 55:21-57:25, 89:20-90:20; Bhattacharya Tr. at 148:13-151:4 ("[W]e knew the entire conversation would be about Uber and Lyft, in any case, and that the message we wanted to tell would get lost."); see also Bowler Decl., Ex. 15. Moreover, GM wanted MAVEN GIG to be a platform-agnostic, multi-partner product, and knew that if GM "tried to message extensively about the platform agnostic aspects of [MAVEN GIG], the fact that [GM] only had one-co-marketing partner to begin with didn't look great with that." Bhattacharya Tr. at 150:13-151:4. Therefore, GM did not have a marketing campaign or intend to market MAVEN GIG until it had other partners besides Uber, which the evidence in the record suggests did not occur until May of 2017. Id. at 59:4-60:8, 156:1-158:18, 214:8-11; see also Bowler Decl., Ex. 16. Thus, the MAVEN GIG mark is not mentioned in the media talking points or the official communications plan regarding the Uber pilot. Steyn Tr. at 110:21-112:24; Bowler Decl., Ex. 16 ("Media Briefing Talking Points"); Bhattacharya Tr. at 152:12-155:25; Bowler Decl., Ex. 18 ("Communications Plan").

The car share service rental became available to Uber drivers in San Francisco on November 1, 2016. Bhattacharya Decl. ¶ 18; ECF No. 75-2 ("Jaising Decl.") ¶ 5. That same day, as part of the Pilot Agreement, Uber contacted drivers through a sign-up email to promote the car share service and to explain how to rent a car. Bhattacharya Decl. ¶ 19; Jaising Decl. ¶ 6. The sign-up email from Uber mentioned Uber and Maven but did not mention MAVEN GIG. Bowler Decl., Ex. 14 ("Uber Driver Email"); Bhattacharya Tr. at 113:18-114:22; Stooke Tr. 84:19-85:3. Specifically, the sign-up email stated: "We've teamed up with Maven." See Uber Driver Email. The Uber sign-up email contained a hyperlink that led to the landing page at www.mavendrive.com/gig, and an enrollment website at www.mavendrive.com/gig/#!enroll ("Enrollment Website"), which directed customers to complete a four-part enrollment form to create an account, provide personal and credit card information, and schedule an appointment to rent a car. Bhattacharya Decl. ¶¶ 19-20; Jaising Decl. ¶ 6; Adkisson Decl., Ex. 13; 5th Resp. to AAA's 1st Interrogs. at 10. Anyone with the hyperlink could access the site; however, the link was only emailed to existing Uber drivers through the Uber email and was not sent to the general public. Steyn Tr. at 95:1-96:20; Bowler Decl., Ex. 19; Bhattacharya Tr. at 26:11-27:15.

The first screen of the Enrollment Website bore the "Maven" mark in large text in the top left corner, but not the "MAVEN GIG" mark. Adkisson Decl., Ex. 14 ("First Enrollment Screen"). The description on the website stated "Welcome to Maven! ... Once you have completed the registration process, it can take up to 2 business days to be approved." Id. As displayed in the image below, however, the "Maven Gig" mark appeared only once, at the bottom of the first screen of the Enrollment Website, where customers were required to check a box next to the statement, "I agree to Maven Gig's Lease Agreement and Privacy Statement." Id. ; Jaising Decl. ¶ 7.

See First Enrollment Screen. The MAVEN GIG check box statement appeared in font smaller than the Maven mark that was used in multiple places on the first screen of the Enrollment Website. See First Enrollment Screen. Customers were not permitted to move onto the next screen of the Enrollment Website if they did not check the box acknowledging this statement. See id. ; Jaising Decl. ¶ 7. Although the statement next to the check box mentioned MAVEN GIG, the lease agreement itself did not display the MAVEN GIG mark and only mentioned Maven. See Bowler Decl., Ex. 11 at GM18122-33 ("Maven Program Rental Agreement"); Bhattacharya Tr. at 146:1-147:24; Bowler Decl., Ex. 29 ("Gig Enrollment Flow") at 3.

All Uber drivers who checked the box received a welcome email prompting verification by clicking on a URL (www.mavendrive.com/gig/#!/emailConfirm/). Jaising Decl. ¶ 8; 5th Resp. to AAA's 1st Interrogs. at 15-18. The welcome email did not mention MAVEN GIG and instead bore only the Maven mark. Gig Enrollment Flow at 7. Drivers were then prompted to complete the next three screens of the Enrollment Website, which required them to enter payment details and driver's license information, and to select a car rental appointment time. Jaising Decl. ¶ 8; 5th Resp. to AAA's 1st Interrogs. at 18-19; Bhattacharya Tr. at 81:16-83:16. The MAVEN GIG mark was not present on any of these screens, and instead the screens showed only the Maven mark. See Gig Enrollment Flow at 4-6.

Customers who completed all four screens of the Enrollment Website received an automated reservation confirmation email bearing a large Maven mark header in the body of the email. See Adkisson Decl., Ex. 15 ("Confirmation Emails") at GM55933-45. The email's text stated, "Welcome to Maven Gig!" in font smaller than the large Maven mark header. Jaising Decl. ¶ 9; see also Confirmation Emails at GM559393-45. The reservation confirmation email also provided directions to a shared parking lot and instructed customers to let the parking attendant know "that you are looking for Maven Gig." Confirmation Emails at GM559393-45. The reservation confirmation email was signed "The Maven Team." See id. An example of the reservation confirmation email is presented in the image below.

After the drivers had enrolled, they could log into their Maven accounts at www.mavendrive.com/gig/#!/login ("Maven Website") and could view and revise their existing reservations or make new ones through their Maven account. Jaising Decl. ¶ 10. MAVEN GIG did not appear on this Maven Website. See Bhattacharya Tr. at 181:2-182:21; Bowler Decl., Ex. 20; id. , Ex. 21; Steyn Tr. at 91:8-17. However, if customers revised their existing reservations, they received a reservation update email confirming the details for their new reservation that again stated, "Welcome to Maven Gig!" and to let the parking attendant "know that you are looking for Maven Gig." Id. ¶ 11; see also Adkisson Decl., Ex. 16; id. , Ex. 17. Invoices sent to drivers after completed reservations displayed the Maven mark but not the MAVEN GIG mark. See, e.g. , Bowler Decl., Ex. 31 (December 2016 emails with attached invoice); id. , Ex. 32 (July 2017 emails with attached invoice).

On November 1, 2016, GM recorded its first driver who enrolled and reserved a car on the Enrollment Website. Jaising Decl. ¶¶ 12, 14; Bhattacharya Decl. ¶ 21; see also Adkisson Decl., Ex. 18. On November 2, 2016, Akshay Jaising, the Regional Manager - West at Maven Drive, and another GM employee met the first driver to pick up a car rented through the service at a parking lot in San Francisco and provided an overview of how the MAVEN GIG service works. Jaising Decl. ¶ 13; Bhattacharya Decl. ¶ 22.

GM explained that when drivers would go to the parking lot to pick up cars, the parking lot was not generally branded, but employees would typically wear Maven, but not MAVEN GIG, apparel so that the drivers would know with whom to speak. Bhattacharya Tr. at 56:25-12. GM also clarified that the rental cars were branded with the Maven mark but not the MAVEN GIG mark. Id. at 137:3-11; see also Bowler Decl., Exs. 22 & 23 (showing car with only a "Maven" mark car decal).

Starting November 21, 2016, Uber incorporated a link to the Enrollment Website in its sign-up flow for new drivers in San Francisco on the Uber website, which is available to all members of the public who wish to drive for Uber. See Jaising Decl. ¶ 15; see also Adkisson Decl., Ex. 19 ("Uber Sign-Up Flow"). The sign-up flow included only the Maven mark, and clicking on the Maven mark would bring drivers to the Enrollment Website. See Uber Sign-Up Flow; see also Jaising Decl. ¶ 15.

Beginning as early as January 31, 2017, existing drivers could make new reservations to rent cars on the Maven Website by clicking to expand a section of the website that was specifically titled "Maven Gig." Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459. However, this tab only appears to have been available to drivers who already had a Maven account and had logged in. See Jaising Decl. ¶ 17. After clicking the "Maven Gig" tab, customers could follow the listed steps to make a new reservation. Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459.

f. GM's Communications with Customers

GM highlights that, beginning around December 28, 2016, GM had responded to email inquiries from customers and prospective customers using the MAVEN GIG mark. See Jaising Decl. ¶ 16; Bhattacharya Decl. ¶ 24; Bhattacharya Tr. at 60:20-70:5. Specifically, GM cites to evidence in the record that GM used the mark in a few emails to: (1) confirm that customers were interested in GM's "Maven Gig program" (as opposed to GM's other services under Maven); (2) advise customers that their inquiry would be forwarded to GM's "Maven Gig" team; and (3) provide information about the MAVEN GIG service. See, e.g. , Adkisson Decl., Ex. 21 (email dated 2/22/2017); id. , Ex. 22 (emails dated 1/5/2017-1/6/2017); id. , Ex. 23 (email dated 2/8/2017); id. , Ex. 24 (email dated 3/15/2017). Nonetheless, GM's emails in response to customer inquiries also frequently used the Maven mark. For instance, GM sent the emails from a Maven email address, such as memberservices@maven.com; GM signed the emails "Maven Member Services"; and GM's emails displayed a prominent Maven mark. See, e.g. , Adkisson Decl., Exs. 21 & 23. Further, several of GM's emails referred to the service inconsistently, including "[o]ur program with Uber," "[o]ur Uber program," "[o]ur partnership with Uber." See, e.g. , id. , Ex. 21; id. , Ex. 29.

Additionally, GM cites to evidence showing that GM replied to two customer emails with questions about the car share service by attaching a slide presentation dated January 31, 2017 with the file name "Maven Gig Uber Pilot Highlights.pdf" that displayed the MAVEN GIG mark. Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 (email dated 2/22/2017 attaching PDF); id. , Ex. 29 (email dated 3/2/2017 attaching PDF). For example, next to the screenshot showing the Maven Website, the presentation explained: "Once you have logged in, click on Maven Gig and follow the steps to make an appointment." Jaising Decl. ¶ 17; Adkisson Decl., Ex. 21 at GM56459. The presentation also stated: "[t]he Maven Gig program for Uber drivers is currently offered in San Francisco," and to "[s]tay tuned for updates." Jaising Decl. ¶ 18; Adkisson Decl., Ex. 21 at GM56462. However, the PDF presentation that GM sent out also mentions the Maven Website, the "Maven Lease Agreement," Maven insurance, the "Maven vehicle," and the "Maven bill." Id.

g. GM Continues to Communicate to Potential Business Partners

GM also cites to evidence in the record that GM discussed potential partnerships with other third-party companies in early 2017. Bhattacharya Decl. ¶ 26. For example, GM and Hertz began discussing a potential partnership in mid-February of 2017. Id. ¶ 27. On March 29, 2017, GM and Hertz had an in-person meeting, during which GM used a slide presentation. Id. ; Jaising Decl. ¶ 21; Adkisson Decl., Ex. 30 ("Hertz Presentation"); Bhattacharya Tr. at 70:7-10. The MAVEN GIG mark was on several of the slides; however, many of the slides bore just the Maven mark. See Hertz Presentation. GM and Hertz continued their discussions about the car share service in a live WebEx meeting on April 11, 2017. Jaising Decl. ¶ 21.

GM also discussed a potential partnership with the package delivery company Roadie on March 28, 2017 using a presentation titled "Maven GIG overview (Roadie)" that showed both the Maven mark and the MAVEN GIG mark. Bhattacharya Decl. ¶ 28; Adkisson Decl., Ex. 31 ("Roadie Presentation"); Bhattacharya Tr. at 66:12-16. GM also discussed a potential partnership with the food delivery company Grubhub beginning in March 2017. Bhattacharya Decl. ¶ 29; Bhattacharya Tr. at 66:12-16. On April 6, 2017, GM emailed Grubhub a presentation titled "MAVEN GIG OVERVIEW" with the file name "170405_Maven-GIG_Overview.pdf." Bhattacharya Decl. ¶ 29. The presentation showed the MAVEN GIG name several times, including references to the "Maven Gig renter experience" and a proposed co-marketing partnership that showed the MAVEN GIG mark. Id. ; see also , Adkisson Decl., Ex. 32 ("MAVEN GIG OVERVIEW Presentation").

Roadie, Grubhub, and Instacart all eventually became co-marketing partners for the MAVEN GIG service sometime in April 2017, after AAA's April 17, 2017 launch; however, the exact dates of those partnerships are not clear from the record. Bhattacharya Decl. ¶¶ 30-31; Bhattacharya Tr. at 47:9-49:7. GM employees explained that these additional partnerships between GM and companies such as Grubhub, Instacart, Roadie, and other ridesharing services to provide vehicles to use for independent driving gigs meant GM had achieved its goal of making the MAVEN GIG service "platform-agnostic." Bhattacharya Decl. ¶ 32; Jaising Decl. ¶ 28.

h. GM's Customer Statistics

By April 17, 2017, the date AAA issued a formal press release regarding the GIG launch, GM had received 2,340 applications from prospective drivers who had visited the Enrollment Website and had checked the box next to the statement "I agree to Maven Gig's Lease Agreement and Privacy Statement"). Jaising Decl. ¶¶ 14, 23-24; Adkisson Decl., Ex. 18; id. , Ex. 34 ("Customer Data"). GM also asserts that it had sent over 846 reservation confirmation emails to customers, but this figure is not supported-or at the very least made clear-by GM's citations to the record. See Mot. at 8 n.45.

By April 17, 2017, the number of "members" of the MAVEN GIG service, which refers to GM's way of counting the number of customers who have either completed or have an in-progress service rental, was 284 customers. Jaising Decl. ¶ 23; see also Customer Statistics. From November 2016 until April 1, 2017, GM collected approximately [redacted] in revenue from the car share service. See Adkisson Decl., Ex. 20 ("Maven Gig Billing Collections").

i. GM's Use of the MAVEN GIG Service After April 17, 2017

GM contends it first learned about AAA's GIG mark through an article published on April 17, 2017. Bhattacharya Decl. ¶ 35. After that date, on May 2, 2017, GM launched a new website for the MAVEN GIG service and published the "Maven Gig Insurance Policy for Commercial Lease/Rental Agreement" online at: http://media.gm.com/media/us/en/maven/gig-insurance.html. Jaising Decl. ¶ 27; see also Adkisson Decl., Ex. 41 ("Maven Gig Insurance Policy").

On May 3, 2017, GM issued a press release titled "Maven Gig Accelerates the Freelance Mobility Economy," in which GM announced that "Maven is expanding its flexible mobility platform to accelerate the gig economy." Adkisson Decl., Ex. 42 ("5/3/2017 MAVEN GIG Press Release"). Evidence in the record suggests that GM issued this press release because the MAVEN GIG service was technically not yet public at that time. Bhattacharya Tr. at 190:7-14, 192:23-193:9; Bowler Decl., Ex. 24 ("Note that Gig isn't technically public yet"); id. , Ex. 25 (4/17/2017 email stating "we aren't announcing the Gig business until 2 weeks from now."); id. , Ex. 26 (2/25/2017 emails stating "I just wanted to make sure we were on the same page in respect to communications. The direction is to NOT make a lot of noise around the Australian Maven Gig partnership with Uber in March. So please, do not issue any press releases" and that "we are 100% aligned on not doing anything external during our pilot.").

The press release stated that "Maven Gig drivers are provided access to vehicles they can use for independent gigs that they choose, such as package delivery, food or grocery delivery, and ridesharing." 5/3/2017 MAVEN GIG Press Release. "This program is live in San Diego and will launch in San Francisco and Los Angeles later this year." Id. "Initial partners include GrubHub, Instacart, Roadie and ridesharing services." Id. The press release further stated that "Maven's internal data shows a clear, growing need for Maven Gig"; that "Maven's on-demand rental for ridesharing program has produced more than 100 million miles driven and 9.3 million rides have been given"; and that "Maven has applied learnings from these operations to launch Maven Gig and help make the sharing economy more accessible and intelligent." Id. The press release generated publicity, including third-party articles that referred to the service as "Maven Gig." Bhattacharya Decl. ¶ 32; see also, e.g. , Adkisson Decl., Ex. 43 (5/3/2017 Los Angeles Times article titled "GM introduces 'Maven Gig' rental program for app-based freelance drivers").

After May 3, 2017, GM used the MAVEN GIG mark in paid search marketing. Stooke Tr. at 102:11-13. GM also started a MAVEN GIG Facebook community, created MAVEN GIG marketing materials that are located on YouTube and "created digital assets for Maven Gig members to refer to other members." Id. at 102:11-20, 103:19-105:18. MAVEN GIG has expanded since its initial launch and is currently available in Austin, Detroit, San Diego, San Francisco, Los Angeles, Phoenix, Boston, Baltimore, Washington, D.C., and New York. Bhattacharya Decl. ¶ 33. MAVEN GIG was not introduced to the Maven app until August 2017. Stooke Tr. at 126:10-12.

GM has earned approximately [redacted] in revenue from the MAVEN GIG

service from November 2016 through August 2018; however, GM has yet to turn a profit. See Maven Gig Billing Collections; Bhattacharya Decl. ¶¶ 34-35; Adkisson Decl., Ex. 44 ("Distler Rpt.") ¶¶ 54, 70, 95. [redacted]

3. Facts Leading to the Instant Litigation

AAA states that it first became aware of GM's MAVEN GIG mark on May 3, 2017 via GM's announcement. Haight Decl. ¶¶ 35-36. AAA sent GM a cease and desist letter on May 5, 2017 that asserted common law rights in the GIG mark. Id. ¶¶ 38-40; see also Adkisson Decl. ¶ 54, Ex. 53 ("5/5/17 Cease and Desist Letter"). The letter also stated "[i]n addition to common law rights in the 'GIG' service mark, AAA owns a pending application in the U.S. Patent and Trademark Office for the 'GIG' mark (Serial No. 87323670)." 5/5/17 Cease and Desist Letter. GM responded on May 16, 2017 and asserted that GM's use of the MAVEN GIG mark predated AAA's use of the GIG mark. Adkisson Decl. ¶ 16, Ex. 15 ("5/16/17 Email"). On May 11, 2017, GM filed a trademark application with the U.S. Patent and Trademark Office (U.S. Trademark Application Serial No. 87446290). Stooke Tr. at 59:4-25, 68:7-69:10; see also id. , Ex. 74.

B. Procedural History

AAA filed its lawsuit against GM on July 7, 2017. ECF No. 1 ("Compl."). AAA's complaint alleges causes of action for (1) Common Law Trademark Infringement; (2) Federal Unfair Competition and False Designation of Origin, in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) ; (3) Unfair Competition in violation of California Business and Professions Code § 17200, et seq. ; and (4) Common Law Unfair Competition. See Compl. ¶¶ 42-67. After receiving an extension, GM filed its answer on August 25, 2017. ECF No. 20.

A week before GM had answered, GM filed a motion to stay the case pending resolution of the priority issue in the Trademark Trial and Appeal Board ("TTAB") on August 18, 2018. ECF No. 18. The Court denied GM's request to stay during the October 11, 2017 case management conference. See ECF No. 40.

On January 1, 2019, GM filed the instant motion for summary judgment. ECF No. 75 ("Mot."). On January 24, 2019, AAA opposed. ECF No. 77 ("Opp'n"). On January 31, 2019, GM replied. ECF No. 81 ("Reply").

II. LEGAL STANDARD

Summary judgment is proper where the pleadings, discovery, and affidavits show that there is "no genuine dispute as to any material fact and [that] the movant is entitled to judgment as a matter of law." Fed. R. Civ. P. 56(a). Material facts are those which may affect the outcome of the case. See Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). A dispute as to a material fact is genuine if there is sufficient evidence for a reasonable jury to return a verdict for the nonmoving party. See id.

The party moving for summary judgment bears the initial burden of identifying those portions of the pleadings, discovery and affidavits that demonstrate the absence of a genuine issue of material fact. Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). Once the moving party meets its initial burden, the nonmoving party must go beyond the pleadings and, by its own affidavits or discovery, "set forth specific facts showing that there is a genuine issue for trial." Fed. R. Civ. P. 56(e). If the nonmoving party fails to make this showing, "the moving party is entitled to judgment as a matter of law." Celotex Corp. , 477 U.S. at 323, 106 S.Ct. 2548.

At the summary judgment stage, the Court must view the evidence in the light most favorable to the nonmoving party: if evidence produced by the moving party conflicts with evidence produced by the nonmoving party, the judge must assume the truth of the evidence set forth by the nonmoving party with respect to that fact. See Leslie v. Grupo ICA , 198 F.3d 1152, 1158 (9th Cir. 1999).

"Because of the intensely factual nature of trademark disputes, summary judgment is generally disfavored in the trademark arena." Interstellar Starship Servs., Ltd. v. Epix Inc. , 184 F.3d 1107, 1109 (9th Cir. 1999) (citing Levi Strauss & Co. v. Blue Bell, Inc. , 778 F.2d 1352, 1356 n. 5 (9th Cir. 1985) ); see also, e.g. , Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc. , 618 F.3d 1025, 1029, 1031 (9th Cir. 2010) ; Entrepreneur Media, Inc. v. Smith , 279 F.3d 1135, 1140 (9th Cir. 2002).

III. DISCUSSION

GM moves for summary judgment on all claims brought by AAA. GM asserts that all four of AAA's claims rely on the same set of facts related to GM's use of the MAVEN GIG mark, and therefore, all of AAA's claims are analyzed under the same standards as an infringement claim under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Mot. at 12 & n.74. Plaintiff does not dispute that the trademark ownership issue could dispose of all of its claims. See Opp'n; see, e.g. , Rearden LLC v. Rearden Commerce, Inc. , 683 F.3d 1190, 1202-03 (9th Cir. 2012) (explaining that the state claims for common law trademark infringement and unfair competition claim, to the extent they are based on infringement grounds, are subject to the same legal standards as the Lanham Act trademark claim); Jada Toys, Inc. v. Mattel, Inc. , 518 F.3d 628, 631 n.1, 632 (9th Cir. 2008) (noting that claims for false designation of origin under the Lanham Act, and unfair competition "are subject to the same test."). Thus, the Court's decision on the trademark ownership issue applies to all of AAA's claims.

Specifically, GM argues (1) that there is no genuine dispute as to any material fact regarding GM's ownership of prior rights in the trademark MAVEN GIG over AAA's alleged rights in the trademark GIG, and therefore GM is entitled to judgment as a matter of law. Mot. at i, 2. In the alternative, GM argues that (2) AAA cannot recover any monetary remedies in this action because there is no evidence, and thus no genuine dispute of material fact (a) that GM acted willfully or (b) that AAA suffered actual damages because of the alleged infringement. See id. The Court addresses each argument in turn, beginning with GM's priority argument.

A. Summary Judgment is Not Warranted on Priority of Use

To prevail on a Lanham Act trademark claim, AAA "must prove: (1) that it has a protectable ownership interest in the mark; and (2) that the defendant's use of the mark is likely to cause consumer confusion." Rearden LLC. , 683 F.3d at 1202-03 (internal quotation marks and citations omitted). An ownership interest in a mark is demonstrated through priority of use. Sengoku Works Ltd. v. RMC Int'l, Ltd. , 96 F.3d 1217, 1219 (9th Cir.1996) ("It is axiomatic in trademark law that the standard test of ownership is priority of use."). Therefore, AAA cannot prevail on its trademark claim if GM had prior use of the mark. See Dep't of Parks & Rec. v. Bazaar Del Mundo Inc. , 448 F.3d 1118, 1124-25 (9th Cir. 2006). To establish priority of use, "it is not enough to have invented the mark first."

Sengoku Works Ltd. , 96 F.3d at 1219. "[T]he party claiming ownership must have been the first to actually use the mark in the sale of goods or services." Id. ; see also Brookfield Commc'ns Inc. v. W. Coast. Entm't Corp. , 174 F.3d 1036, 1051 (9th Cir. 1999) ("The Lanham Act grants trademark protection only to marks that are used to identify and to distinguish goods or services in commerce-which typically occurs when a mark is used in conjunction with the actual sale of goods or services.").

GM argues that it is entitled to summary judgment on the issue of priority because GM's use of the MAVEN GIG mark constitutes trademark use and predates any use by AAA of the GIG mark, and therefore AAA cannot establish that it owns valid trademark rights. Both parties agree that AAA first used its GIG mark on April 17, 2017. Accordingly, GM must establish that there is no genuine dispute that GM made use of the MAVEN GIG mark prior to April 17, 2017.

GM contends that there is no genuine dispute on priority of use for two reasons. First, GM argues that GM has made actual trademark use of the MAVEN GIG mark in commerce by selling and rendering its car share service under the MAVEN GIG mark. Mot. at 13. GM argues second that if its sales are not alone sufficient, then the totality of GM's non-sales activity under the MAVEN GIG mark constitutes analogous use. See id. The Court considers both of GM's arguments. For the reasons given below, the Court finds that GM is not entitled to summary judgment on priority of use under either argument.

1. GM is Not Entitled to Summary Judgment Based on Actual Use of the MAVEN GIG Mark in Connection with Sales Prior to April 17, 2017

GM first argues that there is no genuine dispute of material fact that GM actually used the MAVEN GIG mark in connection with its car share service sales prior to April 17, 2017. Mot. at 13-17. In particular, GM points to the fact that by April 17, 2017, GM had made sales of and rendered the MAVEN GIG service to approximately 284 customers and had collected approximately [redacted] in revenue. Id. In opposition, AAA argues that GM's MAVEN GIG mark was not sufficiently used in conjunction with the actual sale of the car share service and therefore, the revenue and customer figures do not reflect actual use of the mark. Opp'n at 10-14.

Under the Lanham Act and Ninth Circuit law, "actual" trademark use occurs through "use in commerce," which means "the bona fide use of a mark in the ordinary course of trade, and not [use] merely to reserve a right in a mark." Brookfield Commc'ns Inc. , 174 F.3d at 1051 (quoting 15 U.S.C. § 1127 ). The Ninth Circuit has recognized that "evidence of actual sales, or lack thereof, is not dispositive in determining whether a party has established 'use in commerce' within the meaning of the Lanham Act. Rearden , 683 F.3d at 1205. However, for actual sales to be relevant, the mark must have been "used in conjunction with the actual sale of goods or services" in a public manner that "creates an association among consumers between the mark and the mark's owner." Brookfield Commc'ns Inc. , 174 F.3d at 1051 ; see also 15 U.S.C. § 1127 ("[A] mark shall be deemed to be used in commerce ... on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.").

As an initial matter, the "actual sales" cases relied on by GM, Seal Shield, LLC v. Otter Prods., LLC , and Macy's Inc. v. Strategic Marks, LLC , are distinguishable. For example, in Seal Shield, LLC , the court found prior use where plaintiff "sold 382 units of its protective Kindle 2 case with the designation 'Life Proof' affixed to the packaging." 13-cv-2736-CAB (NLS), 2014 WL 11350295, at *7 (S.D. Cal. Nov. 4, 2014) (emphasis added). Similarly, in Macy's Inc. , the court found use in commerce when there was "no real question that Macy's offers products displaying the disputed trademark for commercial sale on its website." 15-0612, 2016 WL 374147, at *6 (N.D. Cal. Feb. 1, 2016). In both of these cases, the sales could constitute actual use because the mark was attached to or displayed with a good that was, in turn, sold. Here, unlike in Seal Shield, LLC and Macy's Inc. , where the mark was simply affixed to the package or product itself, the mark at issue in the instant case is associated with a service, not a product, so the mark cannot directly be "affixed" to the service. There can, however, be use in connection with the sale of the service. See Brookfield Commc'ns Inc. , 174 F.3d at 1051 (explaining that for actual sales to be relevant, the mark must have been "used in conjunction with the actual sale of goods or services" in a public manner that "creates an association among consumers between the mark and the mark's owner.").

Perhaps recognizing that it cannot rely only on the sale in the same way as the parties in Seal Shield, LLC and Macy's Inc. , GM points to the following evidence from the car share service enrollment and reservation process during the Uber pilot program in an attempt to demonstrate that GM used the MAVEN GIG mark "publicly and repeatedly in connection with its bona fide sales between November 1, 2016, and April 17, 2017": (1) the statement next to the check box on the Enrollment Website that said "I agree to Maven Gig's Lease Agreement and Privacy Statement" before being able to proceed; (2) the reservation confirmation and reservation update emails that stated "Welcome to Maven Gig!" and instructed customers to let the parking attendant know "you are looking for Maven Gig" when picking up the rental car; (3) other email correspondence with customers; and (4) the January 31, 2017 update to the Maven Website that allowed people to make reservations on the "Maven Gig" tab. Mot. at 16.

The Court addresses each in turn. The Court then addresses AAA's arguments regarding GM's use, including evidence that GM purposefully hid the MAVEN GIG mark. Ultimately, the Court concludes that despite GM's insistence that its sales numbers and revenue constitute evidence of priority, the MAVEN GIG mark was not sufficiently used in conjunction with the actual sale of the car share service in a public manner so as to create an association among consumers between the MAVEN GIG mark and the car share service.

a. GM's Evidence in Support of GM's Actual Sales Argument is Insufficient

The Ninth Circuit has emphasized that parties cannot rely on a few instances of a use of a mark that were " 'casual' or had 'little importance apparently attached to [them].' " Dep't of Parks & Rec. , 448 F.3d at 1126 (citation omitted). Similarly, this Court has previously recognized that "no goodwill is created when a mark is 'seen by the consuming public only in very limited quantity.' " Sebastian Brown Prods. LLC v. Muzooka Inc. , 15-CV-1720-LHK, 2016 WL 5910817, at *9 (N.D. Cal. Oct. 11, 2016) (quoting E. & J. Gallo Winery v. Gallo Cattle Co. , 1989 WL 159628, at *3 (E.D. Cal. Jun. 19, 1989), aff'd E. & J. Gallo Winery , 967 F.2d 1280 (9th Cir. 1992) ).

In the paragraphs that follow, the Court addresses GM's evidence from the car share service enrollment and reservation process. Before doing so, however, the Court finds it useful to briefly discuss GM's pilot program with Uber because all of the evidence GM cites arises from this pilot program. GM and Uber entered into a three-month Pilot Agreement executed on October 31, 2016, that made Uber a rideshare partner. See Pilot Agreement; Steyn Tr.at 52:1-18, 97:8-19, 99:22-100:25; Stooke Tr. at 39:6-41:3; Bhattacharya Tr. at 53:2-15. That Pilot Agreement only mentioned Uber and Maven and did not mention MAVEN GIG. See Pilot Agreement. GM employees clarified that this was because GM technically never had a co-marketing agreement with Uber on MAVEN GIG. Bhattacharya Tr. at 255:4-18; Bowler Decl., Ex. 27.

The evidence shows that when GM developed MAVEN GIG, GM wanted MAVEN GIG to be a platform-agnostic, multi-partner product. However, when GM entered into its pilot program with Uber, Uber was GM's only partner. The evidence shows that GM recognized that having only one partner would be inconsistent with its platform-agnostic goals for MAVEN GIG. Bhattacharya Tr. at 150:13-151:4 (explaining that GM knew that if it "tried to message extensively about the platform agnostic aspects of [MAVEN GIG], the fact that [GM] only had one-co-marketing partner to begin with didn't look great with that."); Bowler Decl., Ex. 16 (11/1/2016 email from Rachel Bhattacharya, Director of Global Innovation at GM stating "Maven and Uber jointly answered questions to the press at 3 pm ahead of the formal release. Emails to the drivers go out today. It is simply being marketed as 'a pilot program with Maven and Uber;' we aren't using the GIG name publicly until later this year ... when we have more partners on board."). Therefore, GM did not have a marketing campaign or intend to market MAVEN GIG until it had partners other than Uber. Bhattacharya Tr. at 59:4-60:8, 156:1-158:18, 214:8-11; see also Bowler Decl., Ex. 16. Thus, the MAVEN GIG mark is not mentioned in the media talking points or the official communications plan regarding GM's pilot program with Uber. Steyn Tr. at 110:21-112:24; Media Briefing Talking Points; Bhattacharya Tr. at 152:12-155:25; Communications Plan. Instead, as discussed below, GM only used MAVEN GIG in limited and casual instances with the Uber drivers in the pilot program.

i. The Enrollment Process

GM's evidence from the car share service enrollment and reservation process resembles the casual or limited use about which courts have cautioned, especially when compared to the prominent use of the Maven mark in the customer facing communications. For example, GM continuously emphasizes the fact that the Uber drivers who received the sign-up email during the pilot program and went to the Enrollment Website that included the Maven mark but did not include the MAVEN GIG mark, had to check a box next to the statement, "I agree to Maven Gig 's Lease Agreement and Privacy Statement" before being able to proceed. See First Enrollment Screen (emphasis added); Jaising Decl. ¶ 7; see also Reply at 6-7. This is the only use of "MAVEN GIG" prior to completing enrollment in the pilot program. The Court finds it useful to discuss the enrollment process, including this check box statement, before discussing the insufficiency of this use of the mark.

As part of the Pilot Agreement, Uber contacted drivers through a sign-up email to promote the car share service and to explain how to rent a car. Bhattacharya Decl. ¶ 19; Jaising Decl. ¶ 6. The Uber sign-up email mentioned Uber and Maven but did not mention MAVEN GIG. See Uber Driver Email; Bhattacharya Tr. at 113:18-114:22; Stooke Tr. 84:19-85:3. Specifically, the sign-up email stated: "We've teamed up with Maven." See Uber Driver Email. The Uber sign-up email contained a hyperlink that led to the landing page at www.mavendrive.com/gig, and the Enrollment Website at www.mavendrive.com/gig/#!enroll, which directed customers to complete a four-part enrollment form to create an account, provide personal and credit card information, and schedule an appointment to rent a car. Bhattacharya Decl. ¶¶ 19-20; Jaising Decl. ¶ 6; Adkisson Decl., Ex. 13. Anyone with the hyperlink could access the site; however, the link was only emailed to existing Uber drivers through the Uber sign-up email and was not sent to the general public. Steyn Tr. at 95:1-96:20; Bowler Decl., Ex. 19; Bhattacharya Tr. at 26:11-27:15.

The first screen of the Enrollment Website bore the "Maven" mark in large text in the top left corner, but not the "MAVEN GIG" mark. See First Enrollment Screen. The description on the website stated "Welcome to Maven! ... Once you have completed the registration process, it can take up to 2 business days to be approved." Id. As shown in Section I.A.2.e. of this Order, the MAVEN GIG mark appeared only once, at the bottom of the first screen of the Enrollment Website, where customers were required to check a box next to the statement, "I agree to Maven Gig's Lease Agreement and Privacy Statement." Id. ; Jaising Decl. ¶ 7; see also First Enrollment Screen. The MAVEN GIG check box statement appeared in font far smaller than the Maven mark. See First Enrollment Screen. Customers were not permitted to move onto the next screen of the Enrollment Website if they did not check the box acknowledging this statement. See id. ; Jaising Decl. ¶ 7. Although the statement next to the check box mentioned MAVEN GIG, the lease agreement itself did not display the MAVEN GIG mark and only mentioned Maven. See Maven Program Rental Agreement; Bhattacharya Tr. at 146:1-147:24; Gig Enrollment Flow at 3.

All Uber drivers who checked the box received a welcome email prompting verification by clicking on a URL (www.mavendrive.com/gig/#!/emailConfirm/). Jaising Decl. ¶ 8. The welcome email did not mention MAVEN GIG and instead bore only the Maven mark. Gig Enrollment Flow at 7. Drivers were then prompted to complete the next three screens of the Enrollment Website, which required them to enter payment details and driver's license information, and to select a car rental appointment time. Jaising Decl. ¶ 8; 5th Resp. to AAA's 1st Interrogs. at 18-19; Bhattacharya Tr. at 81:16-83:16. The MAVEN GIG mark was not present on any of these screens, and instead the screens showed only the Maven mark. See Gig Enrollment Flow at 4-6.

Having reviewed GM's use of the MAVEN GIG mark in this context, the Court finds that the limited mention of MAVEN GIG at the end of the first screen of the Enrollment Website does not constitute sufficient use "in conjunction with" the actual sale of the service. See Brookfield Commc'ns Inc. , 174 F.3d at 1051. For instance, in Farmasino, Inc. v. Farmasino Pharms. Co. , the court found that defendant had used the mark when the defendant created a website that "prominently displayed the Name and the Mark." 5:15-cv-01977-SVW-DTB, 2016 WL 7655740 (C.D. Cal. Jun. 20, 2016). By contrast here, because the only display of the MAVEN GIG mark on the entire Enrollment Website is at the bottom next to the check box, it likely was not meant to attract the attention of the viewer to the mark. See Dep't of Parks & Rec. , 448 F.3d at 1127 ("Because neither of the brochures was designed to attract the attention of the viewer to the marks themselves, they fail to create any association between the marks and the tourism and recreation services provided by the Department of Parks."). Nor would the statement next to the check box make it immediately obvious to customers that MAVEN GIG was being used to describe the service. See also 1 McCarthy on Trademarks and Unfair Competition § 3:4 (5th ed.) ("In the ordinary course of shopping, either in brick & mortar stores or on the internet, most customers do not spend time closely examining labels and advertising copy. Usually, if when viewed in context, it is not immediately obvious that a certain word or design is being used as an indication of origin, then it probably is not. In that case, it is not a trademark. If a designation is being used as a trademark, it should be obvious at first glance.").

The limited and casual nature of the one mention of the MAVEN GIG mark during the pilot program enrollment process is underscored by the prominent use of the Maven mark during this process in the sign-up emails and on the Enrollment Website, including in the sign-up email that only mentioned Maven but not MAVEN GIG; the First Enrollment Screen on the Enrollment Website that bore the large "Maven" mark in the top left corner and that stated "Welcome to Maven!"; the welcome email that bore only the Maven mark; and the second, third, and fourth screens of the Enrollment Website, where driver's entered payment details, driver's license information, and selected a car rental appointment time, which bore only the Maven mark. See Gig Enrollment Flow. The prominent use of the Maven mark instead of the MAVEN GIG mark during the enrollment process may diminish "the public's ability to associate a single mark" with the service "as it is unclear which mark to attach to the [service]." Nexsan Techs., Inc. v. EMC Corp. , 260 F.Supp.3d 68, 77 (D. Mass. 2017) (finding no priority when "use of the mark [was] insufficiently clear or repetitive" such that the "public's ability to associate a single mark with the tested goods" was diminished); MicroStrategy Inc. v. Motorola, Inc. , 245 F.3d 335, 342 (4th Cir. 2001) (finding that use of mark did not constitute trademark use when "[u]nlike certain MicroStrategy trademarks, e.g., 'Intelligent E-Business,' MicroStrategy [did] not consistently place[ ] 'Intelligence Everywhere' on a particular part of the page, or in a particular type, or label[ ] it with 'TM,' or consistently use[ ] a distinctive font, color, typeset or any other method that makes 'its nature and function readily apparent and recognizable without extended analysis' "). Therefore, the Court is not persuaded that the small statement next to the check box constitutes sufficient "use."

Further, it bears mentioning that the Lease Agreement and Privacy Statement to which the drivers were asked to agree did not mention the MAVEN GIG mark either. See Maven Program Rental Agreement. Instead, the Lease Agreement and Privacy Statement only referred to the "Maven Program" and the "Uber Program." Therefore, unlike in Telegram Messenger Inc. v. Lantah, LLC , where the court granted summary judgment for the plaintiff on priority of use because plaintiff had entered into $ 850 million worth of purchase agreements that actually bore the mark at issue, Uber drivers in the pilot program entered into a Lease Agreement that did not mention the MAVEN GIG mark at all. See 18-cv-2811-CRB, 2018 WL 3753748, at *4-6 (Aug. 8, 2018) (appeal filed).

Besides the statement next to the check box, the only thing that comes close to mentioning the MAVEN GIG mark during the enrollment process were the hyperlinks in the emails to the Uber drivers, including www.mavendrive.com/gig/#!enroll and www.mavendrive.com/gig/#!/emailConfirm/.

See Jaising Decl. ¶¶ 6, 8. However, these hyperlinks are to the website www.mavendrive.com and do not use the MAVEN GIG mark. Moreover, the Ninth Circuit has held that using a hyperlink or a domain name in e-mail communications is not sufficient to establish priority. See Brookfield , 174 F.3d at 1052 (explaining that use of "moviebuff.com" in e-mail correspondence with lawyers and customers is "akin to putting one's mark 'on a business office door sign, letterheads, architectural drawings, etc.' or on a prototype displayed to a potential buyer, both of which have been held to be insufficient to establish trademark rights." (citations omitted) ). Thus, the Court finds that the MAVEN GIG mark was not sufficiently "used" during the enrollment process.

ii. GM's Communications with Customers

a. Reservation Confirmation and Reservation Update Email

GM also points to evidence of post-enrollment use of the mark, meaning evidence of use of the mark after customers had already signed-up. For example, GM cites the reservation confirmation and reservation update emails as well as evidence confirming that those emails were sent. See Mot. at 16. Specifically, the reservation confirmation and reservation update emails displayed a large Maven mark header in the body of the email. See, e.g. , Confirmation Emails at GM559393-45; see also Section I.A.2.e. By contrast, the email's text stated, "Welcome to Maven Gig!" and provided instructions to let the parking attendant know "that you are looking for Maven Gig" in font smaller than the large Maven mark header. Jaising Decl. ¶ 9; see also Confirmation Emails at GM559393-45; Adkisson Decl., Exs. 16, 17, 18, & 35. The confirmation email was signed "The Maven Team." See Confirmation Emails at GM559393-45.

As an initial matter, the parties dispute the relevancy of these emails to the "sale" because these emails occurred after the enrollment process. In particular, AAA points out that these emails were an auto-generated reservation confirmation email sent after drivers decided to enroll in the Uber pilot program and had already entered their payment and driver's license information online. See Opp'n at 16.

Regardless, even if the Court considers the reservation confirmation and reservation update emails, like the statement next to the check box, this evidence does not constitute sufficient use of the MAVEN GIG mark. First, the uses of the MAVEN GIG mark in these emails appear to be "casual," Dep't of Parks & Rec. , 448 F.3d at 1126, or "limited," Sebastian Brown Prods. LLC , 2016 WL 5910817, at *9. For instance, the reservation confirmation and reservation update emails displayed the "Maven" mark in large font in the header. See, e.g. , Confirmation Emails at GM559393-45. As the email image in Section I.A.2.e. of this Order shows, although, the email's text stated, "Welcome to Maven Gig!" and provided instructions to let the parking attendant know "that you are looking for Maven Gig," this text was in font far smaller than the large Maven mark header. See id. Further, the email was signed "The Maven Team." Id. Thus, the limited email use of the MAVEN GIG mark is less compelling when coupled with the prominent use of the large Maven mark header and the signature of "The Maven Team." See, e.g. , Seal Shield, LLC , 2014 WL 11350295, at *4 ("For instance, even if a visitor to KlearKase's Amazon.com page scrolled to the Product Description section and saw the paragraph heading 'Life Proof,' that consumer would have no more reason to associate KlearKase's product with the term 'Life Proof' than with other paragraph headings, like 'Splash Proof.' "); id. ("[T]he same consumer would not directly associate the KlearKase for Kindle 2 with the term 'Life Proof' after seeing the term once in an eight-paragraph, 510-word press release or in a lone tweet."); Vitality Anti-Aging Center and Med Spa, LLC v. La Bella Donna Advanced Laser Med-Spas of North America, LLC , 5:08cv108, 2009 WL 348217, at *6 (W.D.N.C. Feb. 11, 2009) (finding that a mark did not serve the service mark function of identifying the source of the services advertised because "[a]lthough the Mark was present on the fliers, it was printed in small font, given little prominence compared to the other text, and accompanied by several other slogans").

Moreover, case law suggests that this minimal, two-time mention of MAVEN GIG in email communications would not create in the minds of a customer any direct association between the underlying service and the MAVEN GIG mark. Indeed, the Ninth Circuit has already found that "mere use [of a mark] in limited e-mail correspondence with ... a few customers is not" sufficient to create an association among the public between the mark and the good or service. See Brookfield Commc'ns Inc. , 174 F.3d at 1052. For example, in Brookfield , the Ninth Circuit distinguished the "limited e-mail correspondence with lawyers and a few customers," which did not constitute use sufficient to create an association, from what it identified as sufficient activity, including an "announcement to 13 million comic book readers" in one case, and "the mailing of 430,000 solicitation letters with one's mark to potential subscribers of a magazine" in another. Brookfield , 174 F.3d at 1052 (citing Marvel Comics, Ltd. v. Defiant , 837 F.Supp. 546, 550 (S.D.N.Y. 1993), and New West Corp. , 595 F.2d at 1200 ); see also, e.g. , Sebastian Brown Prods. LLC , 2016 WL 5910817, at *9 ("[d]isplaying a 'prototype' and exchanging 'limited e-mail correspondence,' is essentially the activity that Miller's emails evince. This does not constitute use of a mark that is 'sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark.' " (citations omitted) ).

Finally, the emails themselves are private one-on-one communications with individuals, not public use of the mark. As such, the reservation confirmation and reservation update emails do not support a finding of use. See Brookfield Commc'ns Inc. , 174 F.3d at 1051 ("The pur