Free Order - District Court of Arizona - Arizona

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF ARIZONA

Century 21 Real Estate LLC, Plaintiff , vs.

Century Surety Co., Defendant.

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No. CIV 03-0053-PHX-SMM ORDER

Pending before the Court are the briefs of Century 21 Real Estate LLC ("C21") and Century Surety Co. ("Century") regarding the appropriate manner by which the Court should resolve the remaining two claims in the present case: C21's Opposition Claim to the mark "Century Surety Group" (dkt. 1 at 15-16) and C21's Cancellation Claim to the mark "Century Insurance Group" (dkt. 13 at 6) (collectively, the "Remaining Claims"). C21 admits that the Remaining Claims "involve many of the same issues of fact and law" that have already been decided (dkt. 218 at 2), but contends the Court "should enter a final appealable order under Fed.R.Civ.P. 54(b) and . . . stay further proceedings in this case pending a ruling by the Ninth Circuit" because "disposition of the Remaining Claims would require consideration of different legal standards" and "facts in addition to those already submitted." (Id.) Century contends the Remaining Claims should be resolved by this Court now, rather than after an appeal of the resolved claims, because "there are no unusual
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circumstances justifying piecemeal treatment of the case" under Rule 54(b). (Dkt. 219 at 1.) After reviewing the legal standards applicable to cancellation and opposition claims, the Court finds that the Remaining Claims should be resolved at this stage of the case, rather than following an appeal of the previously-resolved claims. The crux of C21's brief is that the issuance of a Rule 54(b) order would be "appropriate," because "a different standard is used in evaluating at least one of the likelihood of confusion factors when determining whether a mark is registrable." (Dkt. 218 at 4) (emphasis in original). The Court agrees that a different standard may be necessary in evaluating the likelihood of confusion factors when determining whether a mark is registrable. See Jim Beam Brands Co. v. Beamish & Crawford, Ltd., 937 F.2d 729, 734-35 (2d Cir. 1991) ("Though worded similarly, the issue of likelihood of confusion in a cancellation proceeding may be different from the issue of likelihood of confusion in an action for infringement."). However, the difference between the two standards is slight, and will not likely interfere with the expeditious resolution of this case such that Rule 54(b) certification is warranted or appropriate. Section 2(d) of the Lanham Act provides that a mark is not entitled to registration if it "[c]onsists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office . . . as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d). With respect to infringement, § 32 of the Act provides that infringement actions may be brought against those using or reproducing marks for certain purposes when "such use is likely to cause confusion, or to cause mistake, or to deceive." Id. § 1114(1)(a) and (b). Although both sections refer to whether the use of a mark is likely to cause confusion, "[i]n a proceeding seeking the cancellation of a trademark or opposing an application for registration, likelihood of confusion is determined only as to the registrability of the applicant's mark exactly as shown in the application and only as to the goods listed, regardless of actual usage." Jim Beam Brands, 937 F.2d at 734. "Similarly, if the party contesting the registration relies on -2Case 2:03-cv-00053-SMM Document 220 Filed 08/21/2006 Page 2 of 4

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its own federal registration, its rights are determined as of the format and goods in that registration, regardless of the reality of actual usage." Id. Although the legal standard applicable to a resolution of the Remaining Claims differs from the infringement and dilution standards previously applied, the Court cannot say that the Remaining Claims involve so little factual overlap with the issues previously considered as to require that this case be fractured into two pieces. See Gausvik v. Perez, 392 F.3d 1006, 1009 n. 2 (9th Cir. 2004) ("[I]n the interest of judicial economy Rule 54(b) should be used sparingly."). Indeed, it is not unusual for courts presented with both infringement and cancellation/opposition claims to resolve all issues in a single proceeding. See MWS Wire Ind. v. California Fine Wire Co., 797 F.2d 799, 801 (9th Cir. 1986) (district court found noninfringement and cancelled plaintiff's registrations; both issues appealed); Prudential Ins. Co. v. Gibraltor Financial Corp., 694 F.2d 1150, 1152 (9th Cir. 1982) (same); American Heritage Life Ins. Co. v. Heritage Life Ins. Co., 494 F.2d 3 (5th Cir. 1974) (appeal concerned both cancellation and infringement claims). Because the grant of certification would result in piecemeal litigation of claims with significant factual overlap, the entry of a Rule 54(b) judgment is unwarranted. Accordingly, IT IS HEREBY ORDERED that the Remaining Claims shall be resolved in the instant proceeding by way of summary judgment motion(s). If the Court is unable to grant summary judgment on both claims, or if neither party elects to file a summary judgment motion, a trial on the Remaining Claims will be held before the Court. IT IS FURTHER ORDERED that both parties shall have until October 2, 2006 to file a motion for summary judgment on either or both of the Remaining Claims. /// /// ///

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IT IS FURTHER ORDERED that, with respect to any summary judgment motions filed pursuant to this Order, if either party elects to file a motion to strike or disregard evidence submitted by the other party, such motion shall be filed simultaneously with the moving party's response to the document to which the evidence objected to is submitted or attached. DATED this 18th day of August, 2006.

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