Citations
- 69 F. Supp. 3d 175
Full opinion text
Re Document Nos.: 114, 116, 119, 128
MEMORANDUM OPINION
Granting In Part and Denying In Part Plaintiffs’ Motion for Summary Judgment; Granting In Part and Denying In Part Defendant’s Motion for Summary Judgment; Denying Defendant’s Motion to Strike; and Denying Plaintiffs’ Motion In Limine
RUDOLPH CONTRERAS, United States District Judge
I. INTRODUCTION
Before the Court is a highly contested trademark action that raises complex factual and legal issues. This case arrived here when Plaintiffs, Paleteria La Michoa-cana, Inc. and Paleteria La Michoacana, LLC (collectively, “PLM”), brought suit against Defendant Productos Lácteos To-cumbo S.A. De C.V. (“PROLACTO”) challenging a decision by the Trademark Trial and Appeal Board (“TTAB”) regarding various registered and unregistered trademarks used to sell “Mexican-style” ice cream bars, called paletas, and other frozen ice cream treats. PROLACTO responded by filing a counterclaim that asserts several counts against PLM under various sections of the Lanham Act, 15 U.S.C. § 1051 et seq., as well as District of Columbia common law. PLM and PRO-LACTO each filed motions for partial summary judgment in which they seek a ruling on most counts in the complaint and counterclaim. Upon consideration of the parties’ motions, the memoranda in support thereof and opposition thereto, and the voluminous evidentiary record submitted by both parties to supplement their summary judgment filings, the Court will grant in part and deny in part each party’s motion.
II. BACKGROUND
At the heart of this action is a fight over the right to use certain trademarks in the sale of paletas — which are “Mexican-style” ice cream bars traditionally made from fruit, spices, and nuts, and sold in trucks and supermarkets — and other similar frozen ice cream treats within the United States. PROLACTO and PLM dispute, whether for factual reasons or on eviden-tiary grounds, nearly all of the hundreds of “facts” proffered to support their respective motions for summary judgment. Nonetheless, after wading through the extensive evidentiary records provided by both parties to support their motions, the Court finds that the following background facts have been established. To the extent additional relevant and material facts remain in dispute, those factual discrepancies are discussed in more detail as they arise throughout this Memorandum Opinion.
PROLACTO is a family-owned company founded in Mexico in 1992. The family that founded the company has a long history of operating ice cream stores (“pal-eterias”) and selling ice cream and fruit bars in various cities and towns throughout Mexico stretching back to the 1940s. PROLACTO’s historic use and ownership in Mexico of the marks at issue is largely in dispute and mostly irrelevant to the legal issues at hand, but beginning in 1995, PROLACTO started successfully registering with the Mexican Institute of Intellectual Property many of these marks, including the term “LA MICHOACANA NATURAL.” A few years later, PRO-LACTO began entering licensing agreements in the United States with close family members of the company’s founding directors. Through these agreements, PROLACTO authorized the licensees to use within the United States some of the marks PROLACTO had been using and registering in Mexico. The evidentiary record shows that PROLACTO has not produced, advertised, or sold its ice cream products directly to consumers inside the United States, and the company has not directly operated any stores within the country. Instead, PROLACTO’s use of the disputed marks inside the United States arises through its licensing agreements.
The first license occurred in 1999, when Rigoberto Fernandez, with permission from PROLACTO, opened a paleteria called LA MICHOACANA in Homestead, Florida. In April 2001, Fernandez and his sister, Mary Fernandez, opened a second paleteria under the same name in West Palm Beach, Florida, where they used PROLACTO’s Mexican marks for the sale of ice cream products. In October 2002, again through a license with PROLACTO, Mary Fernandez opened a paleteria under the name Michoacana Natural I?e Cream in Rosenberg, Texas, a suburb of Houston. Sometime between 2004 and 2006, Mary Fernandez opened a second licensed store in Houston. She ultimately added several additional ice cream parlors in Houston over the next few years, although the exact number and timing is disputed. Finally, in July 2009, PROLACTO licensed the opening of a Michoacana Natural Ice Cream store in Sonoma, California, which makes and sells paletas, ice cream, and drinks on site. PROLACTO’s California licensee has not operated any other ice cream parlors in the Sonoma area since July 2009. PROLACTO has no licensees in the District of Columbia or any other state not discussed herein.
Turning to PLM’s history, in 1991 brothers Ruben Gutierrez and Ignacio Gutierrez started an ice cream business called Pal-eteria Michoacana as an informal partnership in the city of Turlock, which is in northern California. Shortly after Ignacio Gutierrez was married, in April 1999, the Gutierrez brothers dissolved their partnership, and from late April 1999 until 2002, Ignacio Gutierrez operated the Paleteria Michoacan ice cream business as a sole proprietorship in the same location in Tur-lock, California. In 2002, Ignacio Gutierrez created a California corporation known as Paleteria La Michoacana, Inc. and served as its president, sole shareholder, and sole director from 2002 until early 2011, at which time Paleteria La Michoaca-na, LLC, as assignee of the assets of Pal-eteria La Michoacana, Inc., took over the business.
PLM’s products are made in a factory in California before being distributed throughout various parts of the country, where they are sold at large club stores like Costco, supermarkets like Wal-Mart, Hispanic grocery stores like El Super and Vallarta, drug stores like Walgreens, and a variety of other retail outlets. PLM has not sold products directly to consumers in Florida. And like PROLACTO, PLM’s products are not sold or distributed in the District of Columbia, although PLM’s goods are sold in numerous other states across the country. In fact, although they both sell products within the same broad category of frozen ice cream treats, PRO-LACTO’s licensee’s goods and PLM’s goods cross paths in limited geographical areas within the United States, namely Texas, where PLM has distributed ice cream products such as paletas since sometime in 2005, and northern California, where the respective parties’ goods are sold in the same general area within one. mile or so. In at least one instance, the companies’ goods are sold at the very same store in Houston.
Finally, the parties’ ice. cream products are relatively inexpensive treats typically purchased on impulse. For example, PLM’s four ounce single serve fruit and ice cream.bars sell at retail for approximately $0.89 to $1.19, while PLM’s three ounce bars are sold at retail in packages of six for between $2.49 to $4.49. Paletas sold by PROLACTO’s United States licensees are slightly more expensive at a retail price of approximately $1.75 to $2.00 each, but they are larger than PLM’s bars and still remain inexpensive consumer items typically purchased on impulse.
A. Marks In Dispute
As noted in the introduction, this action involves a dispute between PLM and PRO-LACTO over the right to use certain registered and unregistered marks during the sale of ice cream products in the United States. The central marks at issue include the so-called Indian Girl design, as well as marks bearing various forms of the word “Michoacán.” Below is a graphic displaying some of the marks in dispute between the companies:
B. Procedural Histoiy
Before arriving at this Court, PROLAC-TO filed a petition with the TTAB to cancel PLM’s trademark No. 3,210,304 for the mark LA INDITA MICHOACANA and design, shown above, for use on ice cream and fruit products, namely fruit bars. The TTAB granted PROLACTO’s petition, finding a likelihood of confusion between several, but not all, of PROLACTO’s marks and PLM’s registered trademark. See generally Productos Lacteos Tocumbo S.A. De C.V. v. Paleteria La Michoacana, Inc., 98 U.S.P.Q.2d 1921, 2011 WL 2161071 (TTAB May 20, 2011) (“TTAB Decision”). The TTAB’s decision is discussed with more detail in the ensuing sections.
On June 11, 2012, PLM filed a second amended complaint in which it asserted four causes of action against PROLACTO regarding the TTAB decision and other issues in the fight to use the various registered and unregistered marks. First, PLM seeks reversal of the TTAB decision cancelling its registered trademark No. 3,210,304. See 2d Am. Compl., ECF No. 40, at ¶¶ 42-48. Second, PLM seeks declaratory judgment that there is no likelihood of confusion between its mark and PROLACTO’s lone registered mark. See id. ¶¶ 49-51. Third, PLM asserts a Lan-ham Act trademark infringement claim under 15 U.S.C. § 1114 against PROLACTO for its use of the Indian Girl design with LA INDITA MICHOACANA and separate use of the Indian Girl mark standing alone. See id. ¶¶ 52-56. Finally, PLM seeks cancellation of PROLACTO’s registered trademark No. 3,249,113, also shown above. See id. ¶¶ 57-61.
On June 29, 2012, PROLACTO filed its answer to the second amended complaint and asserted a variety of trademark counterclaims against PLM, including Lanham Act claims for federal trademark infringement, unfair competition, passing off, false advertising, false association, and false designation. See Answer 2d Am. Compl. & Countercls., ECF No. 41, at ¶¶ 43-52. PROLACTO also asserted Lanham Act claims to cancel two of PLM’s registered marks on the basis of fraud and abandonment, see id. ¶¶ 64-87, as well as a claim for trademark infringement under District of Columbia common law. See id. ¶¶ 53-59. Finally, PROLACTO brought a Lan-ham Act federal trademark dilution claim against PLM. See id. ¶¶ 60-63.
C. Motions For Summary Judgment
Now before the Court are the parties’ motions for summary judgment in which they seek a decision on nearly every claim in the complaint and counterclaim. Upon a searching examination of the parties’ filings, the attached exhibits, the relevant case law, and the entire record herein, the Court finds that it can resolve a number of issues at this stage because no dispute of material fact exists. The Court therefore will enter the following rulings: (1) granting summary judgment in favor of PLM on counterclaim Count I; (2) granting summary judgment in favor of PLM limiting counterclaim Count II for trademark infringement to the Houston, Texas, market; (3) granting summary judgment in favor of PROLACTO on counterclaim Count II for false advertising on the elements of falsity, deceptiveness, and interstate commerce; (4) granting summary judgment in favor of PLM on counterclaim Count III; (5) granting summary judgment in favor of PLM on counterclaim Count IV; (6) granting summary judgment in favor of PLM on counterclaim Counts V, VI, and VII; and (7) granting summary judgment in favor of PLM on the question of whether PRO-LACTO is entitled to any form of monetary relief for its trademark counterclaims.
There exist, however, numerous other issues that cannot be dealt with at summary judgment because contested factual questions remain for a fact-finder to decide. The Court therefore also makes the following rulings on the parties’ motions: (1) denying summary judgment as to both parties on complaint Count I; (2) denying summary judgment as to both parties on counterclaim Count II for trademark infringement on the question of whether PROLACTO has established secondary meaning for its marks; (3) denying summary judgment as to both parties on counterclaim Count II for false designation, passing off, false association, and unfair competition; (4) denying summary judgment as to PLM on its arguments that laches prevents PROLACTO from bringing counterclaim Count II for false advertising, and that PROLACATO lacks prudential standing for its false advertising claim; and (5) denying summary judgment to both parties on counterclaim Count II for false advertising on the elements of materiality and injury.
III. LEGAL STANDARD FOR SUMMARY JUDGMENT
Summary judgment is appropriate “if the movant shows that there is no genuine dispute as to any material fact and [thus] the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a); accord Talavera v. Shah, 638 F.3d 303, 308 (D.C.Cir.2011). “A fact is material if it ‘might affect the outcome of the suit under the governing law,’ and a dispute about a material fact is genuine ‘if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.’ ” Steele v. Schafer, 535 F.3d 689, 692 (D.C.Cir.2008) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). When Rule 56 is invoked, the moving party has the initial burden of demonstrating the absence of a genuine dispute as to any material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When the moving party does not bear the burden of persuasion at trial, its burden “may be discharged by ‘showing’ — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party’s case.” Id. at 325, 106 S.Ct. 2548.
Once the moving party has met its burden, to defeat the motion the nonmoving party must designate “specific facts showing that there is a genuine issue for trial.” Id. at 324, 106 S.Ct. 2548 (citation omitted). Although the Court must view this evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party’s favor, see Grosdidier v. Broad. Bd. of Governors, Chairman, 709 F.3d 19, 23-24 (D.C.Cir.2013), the nonmoving party must show more than “[t]he mere existence of a scintilla of evidence in support of’ his position - “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. Moreover, the nonmoving party “may not rest upon mere allegation or denials of his pleading but must present affirmative evidence showing a genuine issue for trial.” Laningham v. U.S. Navy, 813 F.2d 1236, 1241 (D.C.Cir.1987) (internal quotation marks and citation omitted).
When both parties file cross-motions for summary judgment, “each must carry its own burden under the applicable legal standard.” Ehrman v. United States, 429 F.Supp.2d 61, 67 (D.D.C.2006); Nuzzo v. FBI, No. 95-CV-1708, 1996 WL 741587, at *1 (D.D.C. Oct. 8, 1996) (“When both parties in a cause of action move for summary judgment, each party must carry its own burden.”). Finally, the Court notes that “[credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge at summary judgment.” Barnett v. PA Consulting Grp., Inc., 715 F.3d 354, 358 (D.C.Cir.2013) (citation omitted). Indeed, a court’s role in deciding a summary judgment motion is not to “determine the truth of the matter, but instead [to] decide only whether there is a genuine issue for trial.” Id. (citation omitted).
IV. ANALYSIS
The Court now turns to the merits of the motions for summary judgment. As suggested above, the parties seek judgment on numerous counts in the complaint and counterclaim. Specifically, PLM seeks the following relief through its motion: (1) judgment in its favor on counterclaim Count I for infringement on PROLACTO’s registered trademark; (2) judgment limiting counterclaim Count II exclusively to the Houston, Texas, market; (3) judgment preventing PROLACTO from recovering monetary relief in any form on all of its counterclaims; (4) judgment in its favor on counterclaim Count II for false advertising; (5) judgment in its favor on counterclaim Count III for District of Columbia common law trademark infringement; (6) judgment in its favor on counterclaim Count IV for federal trademark dilution; and (7) judgment in its favor on counterclaim Counts V, VI, and VII for cancellation of PLM’s registered Indian Girl trademarks on the basis of fraud and abandonment.
In response, PROLACTO requests that the Court grant the following relief: (1) judgment in its favor on all of counterclaim Count II for various Lanham Act violations; (2) judgment in its favor on counterclaim Count III for District of Columbia common law trademark infringement; (3) judgment in its favor on complaint Count I affirming the TTAB decision; (4) judgment in its favor on counterclaim Count I overturning the TTAB decision as to PROLACTO’s registered trademark; (5) judgment in its favor on counterclaim Counts V and VI for cancellation of PLM’s registered Indian Girl trademarks; and (6) judgment in its favor on counterclaim Count IV for federal trademark dilution. The Court addresses each issue below.
A. Complaint Count I; Appeal Of TTAB Decision Cancelling PLM’s Registered Mark
Upon PROLACTO’s petition before the TTAB, the board cancelled PLM’s registered trademark No. 3,210,304 for the LA INDITA MICHOACANA and design after finding that the mark was sufficiently similar to PROLACTO’s unregistered Indian Girl mark, as well as PROLACTO’s marks for LA MICHOACANA, LA MICHOACA-NA NATURAL, and LA MICHOACANA NATURAL and design, such that consumer confusion was likely to occur. See generally TTAB Decision. PLM filed the initial complaint in this Court seeking judicial review of that decision and arguing, in particular, that it has evidence contradicting the TTAB’s conclusion regarding priority use of the marks. See generally 2d Am. Compl., ECF No. 40. PROLACTO moves for summary judgment affirming the TTAB decision to cancel PLM’s mark. See Def.’s Mem. Supp. Mot. Part. Summ. J., ECF No. 116-1, at 37.
1. Standard Of Review For A TTAB Decision
Section 21 of the Lanham Act permits a party dissatisfied with a TTAB decision to appeal to the United States Court of Appeals for the Federal Circuit or to bring a civil action in federal district court. See 15 U.S.C. § 1071(a), (b); see also Material Supply Int’l, Inc. v. Sunmatch Indus. Co., Ltd., 146 F.3d 983, 989 (D.C.Cir.1998). In the latter case, the district court acts as a quasi-appellate court to the TTAB and applies a hybrid standard of review, affording deferential treatment to the board’s factual findings but confronting legal questions de novo. See Aktieselskabet AF 21. Nov. 2001 v. Fame Jeans, Inc., 511 F.Supp.2d 1, 6 (D.D.C.2007); see also Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848, 852 (2d Cir.1988) (“The section 1071(b) action in a district court is not, strictly speaking, an ‘appeal’ at all, but an independent judicial proceeding provided as an alternative to a direct appeal to the Federal Circuit[.]”); Smith v. Entrepreneur Media, Inc., No. 2:12-CV-2184, 2013 WL 2296077, at *5 (E.D.Cal. May 24, 2013) (“[W]hile new evidence and new issues may be introduced in the district court, an appeal of a decision by the TTAB is a unique procedure because, unlike a true de novo proceeding, findings of fact made by the TTAB are given great weight and are not upset unless supported by substantial evidence.”).
A court reviews the TTAB’s findings of fact under the “substantial evidence” standard, which requires a court to defer to the factual findings made by the TTAB unless new evidence “carries thorough conviction.” Material Supply Int’l, 146 F.3d at 990 (citing 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition (“McCarthy on Trademarks”) § 21:20, at 21-24 (4th ed.1997); see also Guantanamera Cigar Co. v. Corporacion Habanos, S.A., 729 F.Supp.2d 246, 251 (D.D.C.2010); Tequila Centinela, S.A. de C.V. v. Bacardi & Co. Ltd., 517 F.Supp.2d 1, 4 (D.D.C.2007). “Substantial evidence,” as described by the Supreme Court, is “ ‘more than a mere scintilla of evidence’ ” and requires “ ‘such relevant evidence as a reasonable mind would accept as adequate’ to support a conclusion.” In re Pacer Tech., 338 F.3d 1348, 1349 (Fed.Cir.2003) (quoting Consol. Edison v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938)).
Importantly, the party seeking to overturn a TTAB decision may present new evidence and raise new issues, which a court must review de novo. See Aktieselskabet AF 21. Nov. 2001, 525 F.3d 8, 13 (D.C.Cir.2008) (the district court “may consider both new issues and new evidence that were not before the TTAB”); see also CAE, Inc. v. Clean Air Eng’g, Inc., 267 F.3d 660, 674 (7th Cir.2001) (explaining that a district court’s review of a TTAB decision is de novo when parties assert new claims); Smith, 2013 WL 2296077, at *5 (explaining that “new evidence and new issues may be introduced in the district court” on appeal of a TTAB decision). Thus, to prevail on appeal, PLM must either raise a new issue compelling a different result, or show that the TTAB’s findings were unsupported by substantial evidence or contrary to “new evidence carr[ying] thorough conviction.” Guantanamera, 729 F.Supp.2d at 251; see also Coryn Grp. II, LLC v. O.C. Seacrets, Inc., No. CIV. 08-2764, 2011 WL 3240456, at *3 (D.Md. July 27, 2011).
2. TTAB Factual Findings And Legal Conclusions
At the TTAB proceeding, the board found that PROLACTO had established priority use over PLM for the following marks: LA MICHOACANA (words only); LA MICHOACANA NATURAL' (words only); LA MICHOACANA NATURAL (and design); design of an Indian Girl doll holding an ice cream; LA FLOR DE MI-CHOACAN (words only); LA FLOR DE MICHOACAN (and design); and LA MI-CHOACANA NAURAL (and design). See TTAB Decision at *11. To reach its conclusion regarding priority, the board explained that PLM “filed its application for registration on June 28, 2005, claiming first use anywhere and in commerce as of February 21, 2005.” See id. at *9. This finding was supported by the deposition testimony of PLM’s Ignacio Gutierrez and Patricia Gutierrez. Through similar evidence in the record, the TTAB determined that PROLACTO, “through its licensees, began using [the] Indian girl in connection with the sale of ice cream and ice cream bars in the United States in April 2001.” See id. Based on additional testimony, the TTAB further found that PROLACTO “used the marks LA MICHOACANA NATURAL and design, LA FLOR DE MICHOACAN, and LA MICHOACANA in connection with ice cream and retail ice cream store services since 2001.” See id. at *10. The TTAB concluded that, based on these facts, PROLACTO had priority over PLM for all marks because PRO-LACTO used each in commerce within the United States before PLM.
The TTAB next considered the likelihood of confusion between PROLACTO’s marks and PLM’s registered mark. Based on competent evidence in the record, the TTAB made the following findings: all the marks at issue are used in connection with ice cream products; PLM’s fruit bars are sold in all normal channels of trade to all normal purchasers of such goods, including retail ice cream stores; ice cream bars and fruit bars are inexpensive products and by their nature are impulse purchase items consumers buy without a high degree of care; considering the overall commercial impressions of the marks, the companies’ Indian Girl designs are virtually identical; and PROLACTO’s mark LA MICHOACANA, and PLM’s registered mark LA INDITA MICHOA-CANA and design, are similar in appearance and sound, and have similar meanings. See id. at *12-15. Based on these findings, the board concluded that PLM’s registered mark No. 3,210,304 was sufficiently similar to PROLACTO’s design of an Indian Girl doll holding an ice cream, LA MICHOACANA (words only), LA MI-CHOACANA NATURAL (words only), and LA MICHOACANA NATURAL and design, to create a likelihood of confusion among customers. See id. at *15. The TTAB therefore concluded that PLM’s registered mark No. 3,210,304 must be cancelled. See id. at *16.
3. New Evidence And Arguments: Tacking
On review of the TTAB decision, a district court must take into consideration new evidence and new issues not raised before the TTAB. Here, PLM presents for the first time at the summary judgment stage testimonial and documentary evidence suggesting that it used a version of the Indian Girl design since at least the midl990s, which potentially would predate PROLACTO’s use of similar marks in the United States. See Pis.’ Stmt Disputed Issues, ECF No. 120, at 59, No. 6. PLM argues that it should be permitted to “tack” these earlier uses to establish priority for its registered LA INDITA MI-CHOACANA mark and design over PROLACTO’s use of similar marks. See Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1048 (9th Cir.1999) (explaining that “tacking” occurs when the “trademark holder essentially seeks to ‘tack’ his first use date in the earlier mark onto the subsequent mark”); see also 3 McCarthy on Trademarks §§ 17:25-28 (4th ed.) (discussing tacking). Dué to pleading issues, however, the TTAB did not consider evidence to determine whether PLM’s marks are sufficiently similar to permit tacking as a valid defense.
When a district court hearing a TTAB appeal acts as a finder of fact with regard to new evidence submitted by the parties, it “must examine the evidence de novo and make its own findings of fact[.]” Shammas v. Rea, 978 F.Supp.2d 599, 606 (E.D.Va.2013). If a court finds that new evidence contradicts or is inconsistent with the board’s factual findings, it must consider whether the record, taken as a whole, warrants reversal. See id. When this standard of review is applied in the context of a motion for summary judgment, the primary inquiry is whether a party has presented sufficient evidence that, when considered with the board’s findings, creates a genuine issue of material fact precluding summary judgment. See Bd. of Regents of Univ. of Wis. Sys. v. Phoenix Int’l Software, Inc., 653 F.3d 448, 452 (7th Cir.2011).
The use of an earlier mark may be tacked onto' the later use of a different mark only if the first mark is “the legal equivalent of the mark in question or indistinguishable therefrom” such that consumers “consider both as the same mark.” See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed.Cir.1991). Tacking is permitted “only in rare instances.” Id. at 1160 (citation and quotation marks omitted). “Legal equivalence” for tacking purposes does not occur simply if the two marks are “confusingly similar”; instead, the marks sought to be tacked must create the same continuing “commercial impression.” Id.; see also George & Co. LLC v. Imagination Entm’t Ltd., 575 F.3d 383, 402 (4th Cir.2009) (discussing tacking); Navistar Int’l Transp. Corp. v. Freightliner Corp., No. 96 C 6922, 1998 WL 911776, at *2 (N.D.Ill. Dec. 28, 1998) (same).
There is a dispute among the federal circuit courts regarding whether tacking is a question of law for a court or a question of fact for a jury. For example, the Federal Circuit has stated that because “[n]o evidence need be entertained other than the visual or aural appearance of the marks themselves,” tacking is a question of law. See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347 (Fed.Cir.2001) (citations omitted). The Sixth Circuit agrees that tacking is a question of law. See Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 623 (6th Cir.1998). The Ninth Circuit, however, has held that tacking is a question of fact typically left for a jury to decide. See One Indus., LLC v. Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1160 (9th Cir.2009); see also Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158, 1168 (9th Cir.2013) (“[Tjacking presents a question of fact that must ultimately be decided by the jury unless the evidence is so strong that it permits only one conclusion.”).
The critical inquiry under a tacking analysis is whether a consumer would consider the prior and subsequent designs to be the “same mark.” See Brookfield Commc’ns, 174 F.3d at 1048 (stating that “tacking should be allowed if two marks are so similar that consumers generally would regard them as essentially the same”); Van Dyne-Crotty, 926 F.2d at 1159 (stating that a “consumer should consider both as the same mark”). Consumer opinion is dispositive because a fundamental purpose of trademark law is to create a marketplace in which consumers are not deceived or confused by competing merchants using similar marks. See Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985) (noting that the Lanham Act’s aim is not only to encourage investments in strong trademarks, but also “to protect the ability of consumers to distinguish among competing producers” (citations omitted)); Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 539 (2d Cir.2005) (“[The Lanham] Act seeks to eliminate the- confusion that is created in the marketplace by the sale of products bearing highly similar marks.” (citations omitted)).
As such, it is less than ideal for a court, sitting in relative isolation, to speculate about what consumers may think regarding the similarity of two marks as a question of law. In fact, such a conclusion would be inconsistent with the rule in this Circuit that the “likelihood of confusion” inquiry, which requires a similar fact-intensive comparison between marks, is a question of fact for a jury to decide. See Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F.Supp.2d 1, 48 (D.D.C.2006); Pro-Football, Inc. v. Harjo, 284 F.Supp.2d 96, 117 (D.D.C.2003); see also Louangel, Inc. v. Darden Rests., Inc., No. 2:12-CV-00147, 2013 WL 1223653, at *2 (S.D.Tex. Mar. 22, 2013) (“The courts’ treatment of the tacking question is commensurate with their treatment of the related issue of ‘likelihood of confusion’ in the trademark context.”). Thus, consistent with this Circuit’s approach to the “likelihood of confusion” inquiry, the Court concludes that tacking presents a question of fact that ultimately must be decided by a jury unless evidence is so strong that it permits only one conclusion such that summary judgment is appropriate.
Here, the Court finds that the evidence presented by PLM regarding its past use of the Indian Girl marks creates a genuine dispute of material fact as to whether the tacking doctrine is applicable because there is at least some evidence that a version of the Indian Girl design was used by PLM in the Í990s, and a jury therefore could find that the earlier marks are sufficiently similar to the later marks to create the continuity of commercial impression. See, e.g., Pis.’ Resp. Def.’s Stmt Facts, ECF No. 120-1, at 97, Nos. 120-22.' But because the evidence does not compel only one result, the Court concludes that summary judgment is inappropriate as to both parties on PLM’s Count I for reversal of the TTAB decision cancelling its registered mark.
B. Counterclaim Count I: Trademark Infringement Under Lan-ham Act Section 32(1)
The Lanham Act provides “national protection of trademarks in order to secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.” Park ‘N Fly, 469 U.S. at 198, 105 S.Ct. 658. Under Section 32(1)(a) of the Act,
[a]ny person who shall, without the consent of the registrant [] use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant for the remedies hereinafter provided.
15 U.S.C. § 1114(1). Section 32 requires that the asserted marks be registered. Globalaw, 452 F.Supp.2d at 25 (“[B]y its very text, a Section 32(1) claim — unlike a Section 43 claim — contemplates that a ‘registration’ has occurred and that a ‘registrant’ is seeking certain remedies.”). Thus, to state an infringement claim under Section 32, a party must prove (1) that it has a protectable ownership interest in a mark; and (2) that the alleged infringer’s use of the mark is likely to cause consumer confusion. See Breaking the Chain Found., Inc. v. Capitol Educ. Support, Inc., 589 F.Supp.2d 25, 29 (D.D.C.2008); see also Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir.2011); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir.2006).
PROLACTO moves for summary judgment as to its registered mark No. 3,249,-113 for the LA FLOR DE MICHOACAN and design. See Def.’s Mem. Supp. Mot. Part. Surnrh. J., ECF No. 116-1, at 42. The TTAB ruled that this mark was not sufficiently similar to PLM’s registered mark No. 3,210,304 to cause consumer confusion and require cancellation. PRO-LACTO seeks reversal of that decision through its counterclaim Count I, while PLM moves for summary judgment in its favor on the same count. Both parties focus their, arguments for summary judgment on whether the board correctly ruled that the marks were not likely to cause consumer confusion.
Again, the Court must apply a hybrid standard of review to the appeal of a TTAB decision, affording deferential treatment to the TTAB’s factual findings but confronting legal questions de novo. See Aktieselskabet AF 21. Nov. 2001 v. Fame Jeans, Inc., 511 F.Supp.2d 1, 6 (D.D.C.2007). The Court therefore reviews the TTAB’s findings of fact under the “substantial evidence” standard, which requires the Court to defer to the factual findings made by the TTAB unless new evidence “carries thorough conviction.” Material Supply Int’l, Inc. v. Sunmatch Indus. Co., 146 F.3d 983, 990 (D.C.Cir.1998) (citations omitted).
1. TTAB Factual Findings And Legal Conclusions
In reaching its conclusion that there was no likelihood of confusion between PRO-LACTO’s registered LA FLOR DE MI-CHOACAN mark and PLM’s registered mark, the TTAB made the following findings, each of which was supported by evidence in the record: all marks and designs are used on packaging for ice cream bars; all marks move in the normal channels of trade; ice cream bars and fruit bars are impulse purchase items, and consumers do not exercise a high degree of care before buying; and LA FLOR DE MICHOA-CAN translates to English as “the blossom of Michoacán,” while LA INDITA MI-CHOACANA translates to “the Indian girl or woman from Michoacán.” See TTAB Decision, at *14. After balancing these facts, the board concluded that PROLAC-TO’s mark created a different “commercial impression” than PLM’s mark which “out-weighted] any similarities caused by the inclusion of the word ‘Michoacán.’ ” Id. at *15. For the reasons discussed below, the Court affirms the TTAB’s conclusion.
2. Application Of Factors
The TTAB did not, and need not as a matter of law, utilize the same multifactor analysis to determine consumer confusion that a district court must apply under the laws of its circuit. See Coach House Rest., Inc. v. Coach & Six Rests., Inc., 934 F.2d 1551, 1561 (11th Cir.1991) (“Although the TTAB need not utilize th[e] multi-factor analysis to be upheld by a district court ... we do require the district court to analyze the confusion issue via the multi-factor analysis to determine if the result comports with that of the TTAB.”); Coryn Grp. II, LLC v. O.C. Seacrets, Inc., No. CIV. 08-2764, 2011 WL 3240456, at *3 (D.Md. July 27, 2011) (explaining that “[although the TTAB analyzes the likelihood of confusion under a different set of factors than the jury will use for [defendant’s] counterclaims, on review this Court will use the same factors as the jury, and determine if the result under those factors comports with the TTAB’s conclusion”).
Thus, in accordance with prior cases in this Circuit, the Court should consider approximately seven factors to evaluate consumer confusion, none of which is individually determinative and not all of which must be given equal weight or be present in every ease to find that confusion is likely. See Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F.Supp.2d 1, 48 (D.D.C.2006). These factors include: (1) the strength of the party’s mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) evidence of actual confusion; (5) the defendant’s purpose or reciprocal good faith in adopting its own mark; (6) the quality of defendant’s product; and (7) the sophistication of the buyers. See id.) see also Partido Revolucionario Dominicano (PRD) v. Partido Revolucionario Dominicano, Seccional de Maryland y Virginia, 312 F.Supp.2d 1, 14 (D.D.C.2004).
Notably, the comparison between marks is made in light of what happens with consumers in the marketplace, not by viewing the marks side-by-side in a vacuum. See Globalaw, 452 F.Supp.2d at 49; see also Lang v. Ret. Living Publ’g Co., 949 F.2d 576, 581 (2d Cir.1991) (“In [determining whether marks are confusingly similar], a court should look at the general impression created by the marks, taking into account all factors that potential purchasers will likely perceive and remember.”); Sensient Techs. Corp. v. SensoryEffects Flavor Co., 636 F.Supp.2d 891, 900 (E.D.Mo.2009) (“This analysis should not be completed in a vacuum because the Court must attempt to recreate the conditions in which buying decisions are made, and ... what a reasonable purchaser in market conditions would do.” (citation and internal quotation omitted; alteration in original)). Because the likelihood of confusion inquiry is inherently fact-based and open-ended, summary judgment is disfavored unless the evidence is clear such that “no reasonable factfinder could find that there is a likelihood of confusion based on the evidence presently before the Court.” Jurin v. Google, Inc., No. 2:09-CV-03065, 2012 WL 5011007, at *4 (E.D.Cal. Oct. 17, 2012); see also Packman v. Chi. Tribune Co., 267 F.3d 628, 643 (7th Cir.2001) (explaining that likelihood of confusion may be resolved at summary judgment only when evidence is so one-sided that there is no doubt about how the question must be answered).
Upon consideration of the Globalaw factors, the Court concludes that no reasonable jury could find a likelihood of confusion between- the marks at issue. The Court recognizes, however, that several of the relevant factors weigh in favor of PROLACTO, or are neutral at best. For example, the parties agree that the products compete within a few regions of the country, and sometimes even in the same store, albeit rarely. See Def.’s Stmt Facts, ECF No. 116-2, at 85-86, Nos. 193-94. The parties also agree, and the TTAB found, that paletas are relatively inexpensive products purchased on an impulse, which increases the likelihood of confusion. See TTAB Decision, at *12. On the other hand, PROLACTO has offered expert testimony suggesting a discernible difference in quality between its product and that of PLM. See, e.g., Def.’s Stmt Facts, ECF No. 116-2, at 91-106, Nos. 204, 213-14, 221. Though PLM disputes the value and admissibility of that evidence, a noticeable difference in quality suggests against consumer confusion. Even more importantly, however, PROLACTO has not provided a survey or other evidence demonstrating actual consumer confusion between the two specific marks now at issue. Although “[e]vidence of actual confusion is not necessary to prove likelihood of confusion[,] actual confusion is substantial proof of the existence of the likelihood of confusion.” MalarkeyTaylor Assocs., Inc. v. Cellular Telecomms. Indus. Ass’n, 929 F.Supp. 473, 477 (D.D.C.1996).
The Court, moreover, is most influenced by the simple fact that the marks in dispute share little visual resemblance with each other. “Similarity is a holistic consideration that turns on the. marks’ sight, sound, and overall commercial impression under the totality of the circumstances.” Akiro LLC v. House of Cheatham, Inc., 946 F.Supp.2d 324, 334 (S.D.N.Y.2013). Although the marks contain similar words— a version of “Michoacán”- — this fact alone does not compel a finding that consumers are likely to be confused. Cf. Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir.2000) (explaining that the marks “DENTYNE ICE and ICE BREAKERS are at best marginally similar because of the common use of ‘Ice.’ ”); GoSMiLE, Inc. v. Dr. Jonathan Levine, D.M.D. P.C., 769 F.Supp.2d 630, 640 (S.D.N.Y.2011) (“[E]ven if the marks had contained identical words while competing head to head, that may, standing alone, still is insufficient to establish similarity.”). Instead, “[e]ven if the marks are composed of the same words and are pronounced the same, they may be distinguished by the use of a company name in close proximity, the use of different font sizes, and dissimilar modes of presentation.” Globalaw, 452 F.Supp.2d at 49; see also King of the Mountain Sports v. Chrysler, 185 F.3d 1084, 1090-91 (10th Cir.1999) (finding that marks with the same dominant text are dissimilar due to differences in style, presentation, and visual impact); Rush Indus., Inc. v. Garnier LLC, 496 F.Supp.2d 220, 226 (E.D.N.Y.2007) (“The use of the same words ... is far from dispositive. Instead, the court must focus on the overall impression conveyed by the use of the words.” (citations omitted)); Door Sys., Inc. v. Overhead Door Sys., Inc., 905 F.Supp. 492, 496 (N.D.Ill.1995) (explaining that “no protection is available against confusion generated by mere similarity of names”).
Further, the design elements and colors of the marks in dispute are quite different. For example, PROLACTO’s registered mark features a swirl surrounding an orange popsicle, while PLM’s mark features pink and black coloring with a drawing of a little girl holding an ice cream cone with words above and below her image. Cf. Nabisco, 220 F.3d at 47 (“[A]l-though both packages use blue and white colors, the shades and patterns of these colors are different. The front panel of the DENTYNE ICE package has a light-blue background broken by a thick, dark-blue band and two smaller white bands. Nabisco’s package, on the other hand, has a homogenous, metallic-blue background broken only by the ICE BREAKERS mark itself.”); Luigino’s, Inc. v. Stouffer Corp., 170 F.3d 827, 831 (8th Cir.1999) (finding that MICHELINA’S LEAN ‘N TASTY is not confusingly similar to STÓUFFER’S LEAN CUISINE as a matter of law because “[t]he use of different colors and typefaces, as well as the prominent display of the house marks convey perceptible distinctions between the products”); Medici Classics Prods., LLC v. Medici Grp., LLC, 683 F.Supp.2d 304, 311 (S.D.N.Y.2010) (finding no likelihood of confusion when “the overall impression created by the marks is dissimilar despite the use of the same word. The marks use different typefaces and presentation to create different impressions: in the plaintiffs case, one of royalty and the renaissance, and in the defendant’s case, one of modernity”). Indeed, even the phrases within the marks have different meanings and use different letters, as was noted above.
For these reasons, the Court finds that the difference, in meaning and commercial impression engendered by the marks outweighs any similarities caused by the inclusion of a version of the word “Michoacán” or the fact that both marks are used on a similar category of products. See, e.g., Kellogg Co. v. Pack’em Enters., 951 F.2d 330, 332-33 (Fed.Cir.1991) (concluding that “substantial and undisputed differences” between the parties’ use of FROOTEE ICE and FROOT LOOPS warranted summary judgment because “the dissimilarity of the marks in their entireties itself made it unlikely that confusion would result from the simultaneous use of the marks” (internal quotation marks omitted)); Rush Indus., 496 F.Supp.2d at 226 (finding at summary judgment that marks “Long ‘n Strong” and “Long & Strong” are dissimilar because “[d]espite the fact that the words use[d] are, essentially, the same, the impression created by the parties’ use of the words is vastly different”). As such, the Court affirms the TTAB’s decision regarding PLM’s lack of infringement and grants summary judgment in PLM’s favor on counterclaim Count I.
C. Counterclaim Count II: Trademark Infringement Under Lan-ham Act Section 43(a)
In Count II of the counterclaim, PROLACTO asserts that PLM violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), through its use of registered trademarks Nos. 3,210,304; 2,905,172; and 2,968,652 because those marks allegedly infringe on PROLACTO’s use of the LA MICHOACANA marks and the Indian Girl design. To prevail on a trademark infringement claim, a party must show that (1) it owns a valid trademark, (2) its trademark is distinctive or has acquired a secondary meaning, and (3) there is a substantial likelihood of confusion between the party’s mark and the alleged infringer’s mark. See Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F.Supp.2d 1, 26 (D.D.C.2006). Whereas federal registration of a mark is prima facie evidence that the registrant owns the mark and has the exclusive right to use the mark on the goods and services specified in the registration, see 15 U.S.C. § 1057(b), an unregistered mark is protectable under Section 43 of the Lanham Act only if a separate showing is made that it would qualify for registration as a trademark. See Globalaw, 452 F.Supp.2d at 26; see also A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d 198, 210 (3d Cir.2000). “ ‘Summary judgment may be granted in trademark matters where there is no protectable trademark interest and no likelihood of confusion.’” Globalaw, 452 F.Supp.2d at 22-23 (quoting Info. Superhighway, Inc. v. Talk Am., Inc., 395 F.Supp.2d 44, 50 (S.D.N.Y.2005)).
PROLACTO moves for summary judgment on this count largely by relying on the so-called famous mark doctrine to establish nationwide priority of its marks. See, e.g., Def.’s Mem. Supp. Mot. Part. Summ. J., ECF No. 116-1, at 33-34. Separately, PLM moves for summary judgment limiting PROLACTO’s trademark infringement claim to the Houston, Texas, market on the bases that, first, the famous mark doctrine is not good law in this Circuit, and second, PLM has priority use in Sonoma, California, which it claims is the only market besides Houston in which the companies actually compete. See Pis.’ Mem. Supp. Mot. Part. Summ. J., ECF No. 114, at 30. The Court addresses each argument below.
1. Validity Of A Trademark: Priority, Territoriality, And Foreign Use
It is axiomatic that under United States trademark law, a party establishes valid ownership of a mark by being the first to use that mark in commerce. See United States v. Steffens, 100 U.S. 82, 85, 25 L.Ed. 550 (1879); Estate of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341, 1347 (D.C.Cir.2008); Sengoku Works Ltd. v. RMC Int'l, Ltd., 96 F.3d 1217, 1219 (9th Cir.1996); see also Jaffe v. Simon & Schuster Inc., 3 U.S.P.Q.2d 1047, 1987 WL 124312, at *4 (S.D.N.Y.1987) (“Ownership of a mark is not determined by the race to the Patent Office, but by the race to the market.”). It also is a basic tenet of American' trademark law that foreign use of a mark creates no cognizable right to use that mark within the. United States. See Fuji Photo Film Co., Inc. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 599 (5th Cir.1985). This is known as the “territoriality principle,” through which “trademark rights exist in each country solely according to that country’s statutory scheme.” Person’s Co., Ltd. v. Christman, 900 F.2d 1565, 1568-69 (Fed.Cir.1990); see also Aktieselskabet AF 21. Nov. 2001 v. Fame Jeans, Inc., 511 F.Supp.2d 1, 12 n. 5 (D.D.C.2007). As such, the “ ‘ [pjriority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world.’ ” See Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1093 (9th Cir.2004) (quoting 3 McCarthy on Trademarks § 29:2 (4th ed.) (internal footnote omitted)).
There is, however, a narrow yet divisive disturbance to the force of the territoriality principle. This is the so-called “famous mark” or “well-known mark” doctrine, under which a mark may be deemed so well-known in a particular American market — despite no actual commercial use in the market — that the territoriality principle is disregarded and priority is established through reputation rather than actual use in the United States. See id. at 1094. The gist of the famous mark doctrine is that “even those who use marks in other countries can sometimes — when their marks are famous enough — gain exclusive rights to the marks in this country.” Id. at 1095.
But to date, this . exception has been adopted only within one federal circuit following a decision by the U.S. Court of Appeals for the Ninth Circuit. See generally id.; see also Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 675 F.Supp.2d 1029, 1039-40 (D.Nev.2009) (applying Grupo Gigante). The Ninth Circuit panel justified embracing the doctrine in Grupo Gigante largely on policy grounds: “An absolute territoriality rule without a famous-mark exception would promote consumer confusion and fraud. Commerce crosses borders. In this nation of immigrants, so do people. Trademark is, at its core, about protecting against consumer confusion and ‘palming off.’ ” Grupo Gigante, 391 F.3d at 1094. Before and since Grupo Gigante, however, no other federal circuit court has adopted such a doctrine, though the exception has been recognized in the past by the TTAB. See generally, e.g., The All England Lawn Tennis Club (Wimbledon) Ltd. v. Creations Aromatiques, Inc., 220 U.S.P.Q. 1069, 1983 WL 51903 (TTAB Sept. 27, 1983); Mother’s Rests. Inc. v. Mother’s Other Kitchen, Inc., 218 U.S.P.Q. 1046, 1983 WL 51992 (TTAB June 2, 1983).
The U.S. Court of Appeals for the Second Circuit, on the other hand, has explicitly rejected the doctrine. See generally ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir.2007). Prior to 2007, district courts within the Second Circuit differed as to whether the famous mark rule was included in federal trademark law. Compare Empresa Cubana del Tabaco v. Culbro Corp., 70 U.S.P.Q.2d 1650, 2004 WL 602295 (S.D.N.Y.2004) (finding that the mark COHIBA for premium Cuban cigars was sufficiently well-known in the United States to create rights under Lanham Act § 44(b) senior to a United States user of the same mark for cigars), with Almacenes Exito S.A. v. El Gallo Meat Market, Inc., 381 F.Supp.2d 324, 327 (S.D.N.Y.2005) (explaining that the famous-known mark doctrine, while applicable under New York state law, is not a part of federal trademark law under the Lanham Act). In ITC v. Punchgini, the Second Circuit concluded that the Lanham Act lacked an express recognition of the famous mark doctrine as embodied in the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights. Because the operative American trademark statute did not recognize the rule in so many words, the court concluded that it was not part of federal law. In reaching this conclusion, the court rejected an argument that the famous mark rule is implicit in the structure of the Lanham Act, as advocated by Professor McCarthy. Finally, although the court acknowledged the strong policy rationales for incorporating the doctrine into federal law, it concluded that those arguments must be directed to Congress, not the courts.
Though there are robust arguments on both sides regarding the famous mark doctrine — including legitimate concerns over the need to protect famous international marks as commerce becomes increasingly globalized and interconnected — the Court need not decide whether to recognize the rule at this time because PROLACTO does not come close to establishing the necessary fame of its marks within the United States for the doctrine to apply. Without doubt, absent the famous mark doctrine, foreign trademark owners are at risk of having their marks adopted in the United States by a seller who wants American consumers to believe they are buying the products of a well-known foreign company. But there must be a limit to the reach of such a doctrine, as not every foreign mark is famous enough within the United States to warrant legal protection.
PROLACTO spends significant portions of its already-extensive summary judgment briefing and statement of facts discussing the company’s long history in Mexico and how PLM allegedly knew of this history when it adopted the relevant marks. But such facts are, of course, irrelevant even under the famous mark doctrine: although the rule alters the historical requirement that only use within the United States establishes priority, it still demands that a mark achieve some level of awareness within this country. Thus, even assuming this Court was to recognize the doctrine, prior use and fame within a foreign country are immaterial under the famous mark doctrine except insofar as that familiarity actually permeates into the United States at such a critical level that it qualifies for legal protection.
As the preeminent — and only — circuit court case approving of the doctrine, Grupo Gigante is a logical starting point on the threshold question of how much fame is required for the rule to apply. In that decision, the Ninth Circuit panel explained that
where the mark has not before been used in the American market, the court must be satisfied, by a preponderance of the evidence, that a substantial percentage of consumers in the relevant American market is familiar with the foreign mark. The relevant American market is the geographic area where the defendant uses the alleged infringing mark.
Grupo Gigante, 391 F.3d at 1098. The 'majority opinion, however, provides little guidance as to what exactly constitutes a “substantial percentage” of consumers. The concurring opinion suggests that 50% consumer awareness is the proper baseline, following the analysis of Professor McCarthy. See Grupo Gigante, 391 F.3d at 1108 (Graber, J., concurring); see also 5 McCarthy on Trademarks § 29:4 (4th ed.) (arguing that “ ‘substantial percentage’ is a reasonable rule and that this means that at least 50% of the relevant group is an appropriate measure of ‘substantial’ in this context”). But the majority did not adopt the concurrence’s suggestion, expressing no opinion about what the test should be on remand. See Grupo Gigante, 391 F.3d at 1098-99.
Nonetheless, it seems plausible that if the majority intended the standard to be 50%, it would have phrased the test not as a “substantial' percentage of consumers,” but as a “majority of consumers.” To be sure, the famous mark doctrine is a narrow deviation from the long-standing territoriality rule, which gestures at placing a relatively high burden on the party seeking to invoke it. Thus, it appears to the Court that consistent with Grupo Gigante, the appropriate threshold percentage should be somewhere below, but still very close to, 50% of consumers in the relevant market if the doctrine were adopted here. Of course, as with federal dilution, no specific percentage is required as a matter of law, but such a benchmark is helpful nonetheless for sorting out the haves from the have-nots.
Returning to the evidence in the present case, the Court agrees with PLM’s characterization that PROLACTO appears to seek nationwide priority of its marks through the famous mark doctrine. But PROLACTO fails to provide evidence demonstrating sufficient familiarity with the marks in any relevant United States market, let alone across the entire country. Relevant factors in determining whether a substantial percentage of consumers are familiar with a foreign mark may be borrowed from the secondary meaning context and might include: survey evidence; direct consumer testimony; exclusivity, manner, and length of use of the mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant. See, e.g., Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns, Inc., 198 F.3d 1143, 1151 (9th Cir.1999); see also Grupo Gigante, 391 F.3d at 1098 (explaining that “such factors as the intentional copying of the mark by the defendant, and whether customers of the American firm are likely to think they are patronizing the same firm that uses the mark in another country” are of particular importance because “they bear heavily on the risks of consumer confusion and fraud, which are the reasons for having a famous-mark exception”).
.Although PROLACTO’s marks may be recognized by some in the United States as associated with high-quality paletas and other frozen ice cream treats, there simply is insufficient evidence in the record demonstrating the extent of that fame nationwide — particularly given that PROLACTO only sells goods in three states. Without such evidence, no reasonable jury could conclude that consumers are familiar enough with PROLACTO’s marks for the famous mark doctrine to apply on a national scale. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986).
The Court reaches the same conclusion regarding individual markets within the United States, as Grupo Gigante permits. PROLACTO has not provided satisfactory market-by-market evidence from which the Court might conclude if, where, or when its marks achieved “substantial” familiarity such that the famous mark doctrine should apply. PROLACTO argues that it has provided “declarations, photographic, documentary and survey evidence, uncontradicted expert testimony, (and even the testimony of PLM’s founders), that establish that [its] Marks are famous within the relevant consuming public here in the United States.” Def.’s Mem. Opp’n Pis.’ Mot. Summ. J., ECF No. 121, at 14. PROLACTO then cites extensively to its statement of facts. See id. (citing to “SOF 13-28, 37-41, 58, 68, 69, 85, 90, 101, 110, 113-116, 131-134, 151, 153, 160, 165-166, 169-176, 192, 195, 220”). The Court is not persuaded by PROLATO’s argument.
First, the Court notes that “[jjudges ‘are not like pigs, hunting for truffles buried in briefs’ or the record.” Potter v. District of Columbia, 558 F.3d 542, 553 (D.C.Cir.2009) (quoting United States v. Dunkel, 927 F.2d 955, 956 (7th Cir.1991)). Although PROLACTO makes an effort in its brief to cite parts of its voluminous summary judgment record, much of the evidence referenced therein is completely irrelevant to resolving the present question under the famous mark doctrine and thus does not reduce the Court’s burden to uncover the important facts on its own, a considerable task given the amount of evidence submitted for this motion.
Second, the few facts PROLACTO does cite that actually relate to the company’s presence within the United States do not establish that its marks have achieved awareness among a “substantial percentage” of relevant consumers in any given market. For example, evidence that PRO-LACTO has licensed its marks in West Palm Beach, Florida, since April 2001 may go to priority use in that market, but without more information, it says nothing persuasive about consumers’ overall familiarity with the marks before or after that date. See Def.’s Stmt Facts, ECF No. 116-2, at 32, No. 58; see also, e.g., id. at 38, No. 68 (stating that PROLACTO’s licensed store in Homestead, Florida, was-featured on Telemundo); id. at 44-45, No. 85 (stating that in July 2003 an article appeared in the Houston Herald-Coaster about PROLACTO); id. at 49-50, No. 101 (stating that in 2011 the Napa Sun named a PROLACTO licensee’s store as the best for ice cream, and the licensee’s products have received extremely favorable reviews on third party food websites). The famous mark doctrine is narrow and places a high burden on the party seeking its protection. PROLACTO does not come close to meeting that burden in any market, and the Court therefore need not determine whether the doctrine should be rec