Rudolph International v. Realy's,inc. , 482 F.3d 1183 ( 2007 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
RUDOLPH INTERNATIONAL, INC., a 
California corporation, d/b/a Soft
Touch Professional Beauty
Products,
No. 05-55605
Plaintiff-Appellant,
v.  D.C. No.
CV-03-01247-AHS
REALYS, INC., a California
OPINION
corporation, a/k/a Tropical Shine;
MICHAEL FALLEY, individually and
as alter ego of Realys, Inc.,
Defendants-Appellees.

Appeal from the United States District Court
for the Central District of California
Alicemarie H. Stotler, District Judge, Presiding
Argued and Submitted
March 5, 2007—Pasadena, California
Filed April 12, 2007
Before: Robert R. Beezer and Stephen Reinhardt,
Circuit Judges, and Thelton E. Henderson,* District Judge.
Opinion by Judge Beezer
*The Honorable Thelton E. Henderson, Senior United States District
Judge for the Northern District of California, sitting by designation.
4237
RUDOLPH INT’L v. REALYS, INC. 4239
COUNSEL
Lawrence E. Heller, Heller & Edwards, Beverly Hills, Cali-
fornia, for the plaintiff-appellant.
Darrel L. Olson, Knobbe, Martens, Olson & Bear, LLP,
Irvine, California, for the defendants-appellees.
OPINION
BEEZER, Circuit Judge:
In this trademark infringement case, Plaintiff Rudolph
International, Inc. (“Rudolph”) appeals the district court’s
grant of summary judgment to Defendant Realys, Inc.
(“Realys”). The district court held that the mark “disinfect-
able” is generic in the parties’ line of business and cannot be
the subject of trademark protection. We have jurisdiction pur-
suant to 28 U.S.C. § 1291, and we affirm.
I
Rudolph and Realys manufacture and sell abrasive nail files
and related products. California regulations required nail tech-
nicians to disinfect all instruments used on multiple custom-
ers. See Cal. Code Regs. tit. 16, § 979 (“Disinfecting Non-
Electrical Instruments and Equipment”), § 981(a) (“All instru-
ments and supplies which come into direct contact with a
4240 RUDOLPH INT’L v. REALYS, INC.
patron and cannot be disinfected (for example, cotton pads,
sponges, emery boards, and neck strips) shall be disposed of
in a waste receptacle immediately after use.”). Several other
states had similar regulations.1
In response to these regulations, Rudolph tested and devel-
oped a line of nail files that could withstand the disinfection
process. Until April 2001, Rudolph had used the term “sani-
tizable” to describe its nail files; thereafter it used the term
“disinfectable” in product packaging and advertising (e.g.,
“Antibacterial Disinfectable”). Rudolph marketed the disin-
fectable files under its established brand names of “Soft
Touch,” “Les Mirages” and “Quadmetrics.” Rudolph’s
founder and principal James Rudolph was quoted in a leading
trade magazine saying that “[t]he word ‘sanitizable’ as it
relates to nail and foot files needs to be abandoned forever.
. . . The word to adopt is ‘disinfectable.’ ” Patricia Oropeza,
Are Your Files Clean Enough?, Nails Magazine, Aug. 2001,
at 131, 133.
Rudolph concurrently sent a letter to every state’s cosme-
tology board urging them to adopt disinfection requirements
similar to California. Rudolph also applied to the Patent and
Trademark Office (“PTO”) to register “disinfectable” as a
trademark, but its application was rejected.
In mid-2002, Realys likewise replaced the term “sanitiz-
able” with “disinfectable” on its nail files at the behest of its
largest customer. Asserting trademark rights in “disinfect-
able,” Rudolph sent Realys a cease-and-desist letter in March
2003 demanding Realys halt its use of the term. Realys con-
tinued to use the term.
Rudolph filed suit against Realys for trademark infringe-
1
See, e.g., Neb. Admin. Code Title 172, Ch. 34; Or. Admin. R. 817-010-
0068; 04-030-030 Vt. Code R. § 12.2(b)(h); 18 Va. Admin. Code 41-20-
270(B)(7).
RUDOLPH INT’L v. REALYS, INC. 4241
ment and related claims in August 2003. Realys moved for
summary judgment, and on March 24, 2005, the district court
granted Realys’ motion. The court held that “disinfectable” is
a generic term when used in the nail file industry and cannot
be the subject of trademark protection.
Rudolph filed its timely notice of appeal on April 20, 2005.
II
We review de novo a district court’s grant of summary
judgment. Filipino Yellow Pages, Inc. v. Asian Journal
Publ’ns, Inc., 198 F.3d 1143, 1146 n.2 (9th Cir. 1999). The
district court’s findings of fact, however, are reviewed for
clear error. Husain v. Olympic Airways, 316 F.3d 829, 835
(9th Cir. 2002), aff’d, 540 U.S. 644 (2004). In reviewing a
grant of summary judgment, we determine, “viewing the evi-
dence in the light most favorable to the non-moving party,
whether there are any genuine issues of material fact and
whether the district court correctly applied the relevant sub-
stantive law.” KP Permanent Make-Up, Inc. v. Lasting
Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005).
[1] We recognize four categories of terms in determining
trademark protection: 1) generic; 2) descriptive; 3) sugges-
tive; and 4) arbitrary or fanciful. Filipino Yellow Pages, 198
F.3d at 1146 (citing Surgicenters of Am., Inc. v. Med. Dental
Surgeries, Co., 601 F.2d 1011, 1014 (9th Cir. 1979)). A
generic term, also known as a common descriptive term,
refers to the type or species of the product at issue. Id. at
1147. Generic terms cannot be protected trademarks. Id.
Descriptive terms “generally do not enjoy trademark protec-
tion” but may be protected if they acquire “ ‘secondary mean-
ing’ in the minds of consumers, i.e., [they] become distinctive
of the trademark applicant’s goods in commerce.” Id. Marks
that are suggestive, arbitrary or fanciful can be protected with-
out demonstrating secondary meaning. See AMF, Inc. v.
Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979). Where,
4242 RUDOLPH INT’L v. REALYS, INC.
as here, an allegedly valid trademark has not been registered
with the PTO, the plaintiff bears the burden of persuasion that
the mark is not generic. Filipino Yellow Pages, 198 F.3d at
1146.
[2] Rudolph argues that the district court erred in determin-
ing that the term “disinfectable” is generic and asserts that
“disinfectable” should be classified as a suggestive mark. A
term is suggestive “if ‘imagination’ or a ‘mental leap’ is
required in order to reach a conclusion as to the nature of the
product being referenced.” Id. at 1147. The district court
found that “disinfectable” has a clear and readily understand-
able meaning: something capable of being disinfected.
Unlike, for example, computer virus software that “disinfects”
your hard drive, the nail files at issue here are literally disin-
fected. See Webster’s Third New Int’l Dictionary 650 (defin-
ing the verb disinfect as “to free from infection esp. by
destroying harmful microorganisms”). No imagination or
mental leap is required to understand that “disinfectable” in
the nail file industry means “capable of being disinfected.”
Adjectives, as well as nouns, can be generic marks. See
Nupla Corp. v. IXL Mfg. Co., 114 F.3d 191, 196 (Fed. Cir.
1997) (holding that “cush-n-grip” is generic adjective for
cushion-gripped tools); Miller Brewing Co. v. G. Heileman
Brewing Co., 561 F.2d 75, 81 (7th Cir. 1977) (holding that
“light” and “lite” are generic adjectives for beer and opining
that “[o]therwise a manufacturer could remove a common
descriptive word from the public domain by investing his
goods with an additional quality, thus gaining the exclusive
right to call his wine ‘rose,’ his whisky ‘blended,’ or his bread
‘white’ ”). Rudolph’s arguments that “disinfectable” is sug-
gestive are untenable.
[3] Realys contends that the term “disinfectable” is generic.
The question of genericness is often answered by reference to
the “who-are-you/what-are-you” test: a valid trademark
answers the former question, whereas a generic product name
RUDOLPH INT’L v. REALYS, INC. 4243
or adjective answers the latter. Filipino Yellow Pages, 198
F.3d at 1147. “[I]f the primary significance of the trademark
is to describe the type of product rather than the producer, the
trademark is a generic term and cannot be a valid trademark.”
Id. (emphasis in original).
[4] Our review of the record amply supports the district
court’s conclusions. The district court correctly found that the
term “disinfectable” has a history of established use as a
generic adjective within the nail care industry as well as in
other fields such as medicine and dentistry. For example, the
district court noted that “disinfectable” is included in at least
25 patents issued since 2001. Rudolph admits that the devel-
opment and marketing of its disinfectable nail files originated
from regulatory obligations that nail salons only reuse abra-
sive files if they are capable of being disinfected—the precise
definition for the term “disinfectable.” At least one state had
gone so far as to include the term within its administrative
code. See 40-12 Or. Bull. 153 (Dec. 1, 2001). Rudolph’s own
use of the term “disinfectable” before this litigation com-
menced is inconsistent with its current position that the term
is not a descriptive subset of its nail file product line but
rather a true trademark.
[5] The term “disinfectable” relates to the type of product
rather than its source and consequently falls on the “what-are-
you” side of the genericness test.2 In contrast, the source of
2
This court has noted that “the lines of demarcation between the four
categories of marks are not always clear.” Filipino Yellow Pages, 198 F.3d
at 1151 n.5 (quoting Surgicenters, 601 F.2d at 1014, 1015). Differentiation
between generic marks and “weak descriptive marks” in particular can be
“almost imperceptible.” Id. After comparing the term “disinfectable” to
other marks we have held to be generic—“surgicenters” and “cush-n-
grip,” for example—we conclude that the mark is properly classified as
generic. Further, in light of the statutory requirements that nail files used
on multiple customers be capable of being disinfected, granting trademark
protection to Rudolph’s use of “disinfectable” would effectively “grant the
owner of the mark a monopoly, since a competitor could not describe his
goods as what they are.” Surgicenters, 601 F.2d at 1017 (quoting CES
Pub. Corp. v. St. Regis Publ’ns, Inc., 531 F.2d 11, 13 (2d Cir. 1975)).
4244 RUDOLPH INT’L v. REALYS, INC.
the product is identified by Rudolph’s established brand
names of “Soft Touch,” “Les Mirages” and “Quadmetrics.”
The district court correctly held that Rudolph failed to intro-
duce sufficient evidence to meet its burden of persuasion that
“disinfectable” is not a generic mark. This question does not
present a genuine issue of material fact and is appropriate for
summary judgment notwithstanding our reluctance to take
such action in trademark cases.3 See Surgicenters of Am., 601
F.2d at 1012 (affirming summary judgment on genericness
question). Because we affirm the district court’s determina-
tion that “disinfectable” is a generic mark, we need not reach
its alternative holdings.
Disinfectable: not trademarkable. AFFIRMED.
3
We have previously held that “[b]ecause of the intensely factual nature
of trademark disputes, summary judgment is generally disfavored in the
trademark arena.” KP Permanent Make-Up, Inc., 408 F.3d at 602 (quoting
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002)).