Tokidoki, LLC v. Fortune Dynamic, Inc. , 434 F. App'x 664 ( 2011 )

FILED
NOT FOR PUBLICATION MAY 25 2011
MOLLY C. DWYER, CLERK
UNITED STATES COURT OF APPEALS U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
TOKIDOKI, LLC, No. 09-56388
Plaintiff-Appellant, D.C. No. 2:07-cv-01923-DSF-PJW
v.
MEMORANDUM*
FORTUNE DYNAMIC, INC.,
Defendant-Appellee.
TOKIDOKI, LLC, No. 10-55661
Plaintiff-counter-defendant- D.C. No. 2:07-cv-01923-DSF-PJW
Appellee,
v.
FORTUNE DYNAMIC, INC.,
Defendant-counter-claimant-
Appellant.
Appeal from the United States District Court
for the Central District of California
Dale S. Fischer, District Judge, Presiding
Argued and Submitted May 2, 2011
Pasadena, California
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
Before: PREGERSON, FISHER and BERZON, Circuit Judges.
Tokidoki appeals an adverse judgment on its trademark infringement and
unfair competition claims. Fortune Dynamic, Inc. appeals the denial of its motion
for attorney’s fees. We affirm in part, vacate in part and remand.
1. The district court properly granted Fortune’s counterclaim for
cancellation of Tokidoki’s trademark registration under 15 U.S.C. § 1064. The
court did not apply an erroneous legal standard because, even though the court
relied on the negligence standard articulated in Medinol Ltd. v. Neuro Vasx, Inc.,
67 U.S.P.Q.2d (BNA) 1205, 1209 (T.T.A.B. 2003), it ruled in the alternative that
Tokidoki satisfied the stricter knowledge standard adopted in In re Bose Corp., 580
F.3d 1240, 1245 (Fed. Cir. 2009). The court’s factual findings on knowledge of
falsity and intent to induce reliance were not clearly erroneous.
2. The court properly rejected Tokidoki’s trademark infringement and
unfair competition claims. Even assuming that Tokidoki’s heart and crossbones
design is a strong mark, the court’s finding that Tokidoki failed to establish
likelihood of confusion in this particular case, in light of the Sleekcraft factors as a
whole, is not clearly erroneous. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,
348-49 (9th Cir. 1979). The parties’ products were sold in different stores, at
different prices and with distinct labeling. The court rejected the survey by
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Tokidoki’s expert, so there was no evidence of actual confusion. There was thus
no clear error in the court’s finding that “the goods are not so related or the
marketing channels so similar as to be likely to cause confusion.”
The district court was not required to consider the possibility of post-sale
confusion because Tokidoki did not raise that issue in the district court. See
Whittaker Corp. v. Execuair Corp., 953 F.2d 510, 515 (9th Cir. 1992) (to avoid
forfeiture, an argument “must be raised sufficiently for the trial court to rule on
it”). We also decline to address the issue for the first time on appeal; the current
record is insufficiently developed to permit such review. See WildWest Inst. v.
Bull, 547 F.3d 1162, 1172-73 (9th Cir. 2008).
Because the district court properly rejected Tokidoki’s Lanham Act claims,
we need not consider Tokidoki’s arguments that the district court erroneously
denied Tokidoki’s claims for damages and injunctive relief.
3. In denying Fortune’s motion for attorney’s fees under the Copyright
and Lanham Acts, the district court gave undue weight to the fact that Tokidoki
survived Fortune’s motion for summary judgment. The summary judgment ruling
should have been afforded little or no weight in deciding whether to award fees,
given that many of the factual contentions upon which Tokidoki relied at the
summary judgment stage were not borne out at trial. We accordingly vacate the
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denial of fees and remand to the district court to reconsider Fortune’s motion,
without regard to the court’s summary judgment ruling. We express no opinion on
whether fees should be awarded.
We affirm the judgment in favor of Fortune in No. 09-56388. In No. 10-
55661, we vacate the order denying the motion for attorney’s fees and remand for
reconsideration of the motion.
Each party shall bear its own costs on appeal.
AFFIRMED IN PART, VACATED IN PART AND REMANDED.
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