Boiling Crab Franchise Co LLC v. KL Boiling Crawfish Corporation

[5] UNITED STATES DISTRICT COURT 6 WESTERN DISTRICT OF WASHINGTON AT SEATTLE [7] BOILING CRAB FRANCHISE CO LLC, CASE NO. 2:21-cv-00293-JHC [8] a California limited liability company, ORDER RE: MOTION 9 Plaintiff, FOR SUMMARY JUDGMENT 10 v. 11 KL BOILING CRAWFISH CORPORATION a Washington corporation; and NGUYEN 12 BOILING CRAWFISH CORPORATION a Washington corporation, [13] Defendant. [15] I. [16] INTRODUCTION [17] This matter comes before the Court Defendants’ Motion for Summary Judgment. Dkt. # [18] 37. The Court has considered the materials filed in support of and in opposition to the Motion. [19] Being fully advised, for the reasons discussed below, the Court DENIES the motion. [20] II. [21] BACKGROUND [22] Plaintiff, Boiling Crab Franchise Co., LLC, is a California limited liability company. [23] Dkt. # 43 at 1. Plaintiff’s predecessor in interest, Sinhdarella, Inc., opened the first The Boiling [24] 1 Crab restaurant in 2004. Dkt. # 41 at 6, 9. In 2013, Sinhdarella Inc.—owned and operated by 2 || Plaintiff's CEO, Dada Ngo, and her husband—assigned its right, title, and interest in The Boiling 3 Crab’s intellectual property to Plaintiff. Dkt. # 43-1. Relevant here are four of Plaintiff's 4 || trademarks registered with the United States Patent and Trademark Office (PTO): 5 Mark US. Registration No. 6 THE BOILING CRAB 3256219 [7] . eo Boiy, 4174077 Sues ° Cra [10] THE BOILING CRAB Metoos 12 6 Bory 5374534 14 Crav 15 Dkt. # 43 at 5-6. Two marks include the text, “THE BOILING CRAB”—one in black and the 16 other with the words “THE BOILING” in red and “CRAB” in blue. The other two marks 17 include the text, “The Boiling” above and “Crab” below an image of a crab—one mark is black 18 and the other has black text with a red crab. 19 The Boiling Crab restaurants serve “Cajun-influenced” seafood entrees with “proprietary 20 finishing sauces from mild to a highly spicey [sic].” Dkt. # 43 at 2. They serve seafood by the 21 pound with different spice levels. There are currently 22 The Boiling Crab branded 22 || restaurants—none are in Washington. /d. at 4. [24] ORDER RE: MOTION l Tuyen Bach Nguyen and Hein Van Nguyen own Defendants KL Boiling Crawfish 2 Corporation and Nguyen Boiling Crawfish Corporation, both incorporated in Washington. Dkt. 3 # 42-51 at 6-8, 11-12. Defendants own and operate two Boiling Crawfish Seafood Restaurants 4 in Washington—one in Kent that opened in 2016 and one in Puyallup that opened in 2018. Dkt. 5 # 42-51 at 10. Defendants serve seafood by the pound with varying levels of seasoning and 6 spice. Dkt. # 37 at 3. 7 Defendants registered their mark with the Secretary of State of Washington. Dkt. # 38 at 8 81-90. Here is a copy of their mark: [9] BOILING [10] CRAWFISH 11 Seafood Restaurant 12 |\|/d. 55. In some signage, Defendants use orange, white, or black text, saying “BOILING 13 CRAWFISH SEAFOOD RESTAURANT,” with an image of a smiling, red crawfish with a 14 chef’s hat in the middle of the letter “O” in “BOILING.” Jd. at 85-87. 15 On September 27, 2016, Plaintiff sent Defendants a letter claiming Defendants’ “activity 16 is... trademark infringement.” Dkt. # 42-51 at 91. Plaintiff said Defendants’ menu used the 17 same format and sections as Plaintiffs, including sections for customer’s choice of catch, flavor, 18 and spice level. /d. at 91-92. The letter included the following menu images: 1] 9 Boiling Crawfish The Boiling Crab 20 ee ———— | a 21 ae | | Pee ee 23 cn eae ai [24] ORDER RE: MOTION [1] Id. at 92 . Plaintiff demanded that Defendants immediately stop using the name “Boiling 2 Crawfish” and change their menu: 3 • Stop all use of the name “Boiling Crawfish” and remove references to “Boiling Crawfish,” including but not limited to your website, menu, marketing 4 collateral, social media pages and all third party sites in which the name appears. Refrain in the future from using any name or mark that includes, 5 comprises of or is similar to THE BOILING CRAB, including “Boing Crawfish.” [6] • Change your menu section titles so they are not similar to The Boiling Crab’s 7 menu and refrain from using similar format and wording in the future. Id. In response, Defendants changed some aspects of their menu. Dkt. ## 42-12 at 3–4 (Resp. to [8] Req. Produc.); 42-51 at 46–48 (Tuyen Bach Nguyen Dep.). [9] On March 5, 2021, Plaintiff sued Defendants for trademark infringement under [10] Section 32(1) of the Lanham Act, 15 U.S.C. § 1114 (1), for its use of the Boiling Crawfish mark, [11] with and without the crawfish design. Dkt. ## 1 (Compl.); 34 at 1, 6–7 (Am. Compl). Plaintiff [12] alleges Defendants willfully and deliberately used and are using an infringing mark on its [13] websites and social media, and in advertising, “in such a way as is likely to cause confusion, to [14] cause mistake, and/or to deceive the consuming public.” Dkt. # 34 at 7–8. Defendants respond [15] that there is no likelihood of confusion; if the marks are infringing, that infringement was not [16] willful or deliberate; and they were unaware of Plaintiff’s marks or The Boiling Crab restaurant [17] chain. Dkt. ## 36 at 4 (Resp.); 37 at 3 (Defs.’s Mot. Summ. J.). And they move for summary [18] judgment dismissal of this matter. Dkt. # 37. [19] III. [21] ANALYSIS A. Summary Judgment Standard [22] Summary judgment is proper if “there is no genuine dispute as to any material fact and [23] the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a); see also Celotex [24] 1 Corp. v. Catrett, 477 U.S. 317, 323 (1986); Galen v. Cnty. of L.A., 477 F.3d 652 , 658 (9th Cir. 2 2007). In determining whether an issue of fact exists, the Court views the evidence and 3 reasonable inferences therefrom in the light most favorable to the non-moving party. Anderson 4 v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). The moving party is entitled to judgment as a 5 matter of law when the nonmoving party fails to make an adequate showing on an essential 6 element of a claim in the case on which the nonmoving party has the burden of proof. Celotex 7 Corp., 477 U.S. at 323. A fact is “material” if it might affect the outcome. Anderson, 477 U.S. 8 at 248. A factual dispute is “genuine” if the evidence is such that reasonable persons could 9 disagree about whether the facts claimed by the moving party are true. Aydin Corp. v. Loral 10 Corp., 718 F.2d 897, 902 (9th Cir. 1983). 11 B. Plaintiff’s Lanham Act Claims 12 Plaintiff claims Defendants’ “use of the BOILING CRAWFISH and BOILING 13 CRAWFISH SEAFOOD RESTAURANT trademarks” infringes on “The Boiling Crab’s THE 14 BOILING CRAB trademarks” under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114 (1). 15 Dkt. # 34 at 1. To establish a claim for trademark infringement under 15 U.S.C. § 1114 (1), [16] Plaintiff must prove: (1) it has a valid protectable mark1 and (2) Defendants’ use of the mark 17 confuses or is likely to confuse a “reasonably prudent consumer.” Dreamwerks Prod. Grp., Inc. 18 v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998). Courts apply 19 eight factors set forth in [AMF Inc. v. Sleekcraft Boats] to determine whether a likelihood of confusion exists: (1) the “similarity of the marks”; (2) the “strength 20 of the mark” that has allegedly been infringed; (3) “evidence of actual confusion”; (4) the relatedness or “proximity” of the goods; (5) the “normal marketing 21 channels” used by both parties; (6) the “type of goods and the degree of care likely to be exercised by the purchaser”; (7) the alleged infringer’s “intent in selecting the [23] 1 Defendants do not dispute that Plaintiff owns four valid trademarks. Dkt. ## 36 at ¶ 18 24 (Answer to Am. Compl.); 37 at 7 (Defs.’s Mot. Summ. J.). 1 mark”; and (8) evidence that “either party may expand his business to compete with the other.” [2] BBC Grp. NV LLC v. Island Life Rest. Grp. LLC, 413 F. Supp. 3d 1032 , 1043 (W.D. Wash. [3] 2019) (quoting AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 , 348–54 (9th Cir. 1979)). “The test is [4] a fluid one and the plaintiff need not satisfy every factor, provided that strong showings are made [5] with respect to some of them.” Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 631 (9th [6] Cir. 2005); E & J Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992) (“This [7] list of factors, while perhaps exhausting, is neither exhaustive nor exclusive.”). [8] “Because of the intensely factual nature of trademark disputes, summary judgment is [9] generally disfavored in the trademark arena.” Interstellar Starship Servs., Ltd. v. Epix, Inc., 184 10 F.3d 1107 , 1109 (9th Cir. 1999) (citing Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352 , [11] 1356 n. 5 (9th Cir. 1985) (“[T]he question of likelihood of confusion is routinely submitted for [12] jury determination as a question of fact.”)); see also JL Beverage Co., LLC v. Jim Beam Brands [13] Co., 828 F.3d 1098, 1105 (9th Cir. 2016) (“Because the [likelihood of confusion] determination [14] is based on a non-exhaustive, multi-factor, fact-intensive inquiry, we have cautioned against [15] granting summary judgment in these cases.”). The “‘[l]ikelihood of confusion is a factual [16] determination,’ and ‘district courts should grant summary judgment motions regarding the [17] likelihood of confusion sparingly.’” Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand [18] Mgmt., Inc., 618 F.3d 1025, 1039 (9th Cir. 2010) (quoting Thane Int’l, Inc. v. Trek Bicycle [19] Corp., 305 F.3d 894 , 901–02 (9th Cir. 2002)). To avoid summary judgment, Plaintiff “must [20] show sufficient evidence to permit a rational trier of fact to find that confusion is ‘probable,’ not [21] merely ‘possible.’” M2 Software, Inc. Madacy Ent., 421 F.3d 1073 , 1085 (9th Cir. 2005) (citing [22] Murray v. CNBC, 86 F.3d 858, 861 (9th Cir. 1996)). [24] 1 Application of the Sleekcraft factors here raises a genuine issue of material fact as to the 2 likelihood of confusion. 3 1. Strength of the mark 4 The strength of a trademark “is evaluated in terms of its conceptual strength and 5 commercial strength.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000) 6 (emphasis added), overruled on other grounds by Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7 7, 22 (2008). The more distinctive a mark, the more conceptual strength it has. Id. And “[t]he 8 stronger the mark, the more protection it is afforded.” BBC Grp. NV LLC, 413 F. Supp. 3d at 9 1043 (citing Sleekcraft, 599 F.2d at 349 ); see also GoTo.com, Inc., 202 F.3d at 1207 (“The more 10 likely a mark is to be remembered and associated in the public mind with the mark’s owner, the 11 greater protection the mark is accorded by trademark laws.”). 12 The conceptual strengths of trademarks “are categorized as generic, descriptive, 13 suggestive, and arbitrary or fanciful. A generic mark is the least distinctive, and an arbitrary or 14 fanciful mark is the most distinctive.” M2 Software, Inc., 421 F.3d at1080 (citations omitted). 15 Generic marks refer to the product and cannot be registered as trademarks. Fortune Dynamic, 16 Inc., 618 F.3d at 1033 . Descriptive marks describe the qualities or characteristics of a good or 17 service. Id. Suggestive marks “require a consumer to ‘use imagination or any type of multistage 18 reasoning to understand the mark’s significance.’” Id. (quoting Park ‘N Fly, Inc. v. Dollar Park 19 & Fly, Inc., 469 U.S. 189, 194 (1985)). “On summary judgment. . ., the question is whether a 20 reasonable jury could find that . . . mark is at least suggestive.” Ironhawk Techs., Inc. v. 21 Dropbox, Inc., 2 F.4th 1150, 1162 (9th Cir. 2021). When “the [PTO] issue[s] a registration 22 without requiring proof of secondary meaning, the federal registration provides prima facie 23 evidence that the. . . mark is inherently distinctive (i.e., at least suggestive).” Id.; see also 24 Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108 , 1113–14 n.7 (9th Cir. 2010) (“A 1 corollary of this principle is that the registrant is not entitled to a presumption of secondary 2 meaning unless the PTO required proof of secondary meaning as part of the application for 3 registration of the mark.”). But Defendants “may rebut this presumption.” Id. 4 Defendants say Plaintiff’s marks are descriptive or generic. Dkt. # 37 at 12. Plaintiff 5 responds that its marks are not descriptive or generic because it does not boil crab, it steams crab. 6 Dkt. # 41 at 16. Plaintiff also says that its marks are at least suggestive because “boiling” 7 conveys “very angry or upset,” so consumers must use their imagination to reach the conclusion 8 of The Boiling Crab’s services from a “very hot, agitated, or upset crab.” Dkt. # 41 at 17. But 9 Plaintiff also says that its “mark is a literal anatomical depiction of a cooked crab” (Dkt. # 41 at 10 16) and the red text in Plaintiff’s mark is “to suggest the heat from a boiling pot” (Dkt. # 43 at 6). 11 While Plaintiff’s marks could be descriptive, the PTO registered Plaintiff’s marks without proof 12 of a secondary meaning, which is prima facie evidence that they are “inherently distinctive.” 13 Ironhawk Techs., Inc., 2 F.4th at 1162 . The PTO registration creates a presumption of 14 distinctiveness and thus raises an issue of fact. 15 “A mark’s overall strength is relative and cannot be determined by mechanistically 16 assessing its conceptual or commercial strengths. . . [A] suggestive or descriptive mark, which is 17 conceptually weak, can have its overall strength as a mark bolstered by its commercial success.” 18 M2 Software, Inc., 421 F.3d at 1081. The Court may consider advertising and the marks 19 standing in the marketplace in assessing commercial strength. Brookfield Commc’ns, Inc. v. W. 20 Coast Ent. Corp., 174 F.3d 1036, 1058 (9th Cir. 1999). Since 2018, Plaintiff has spent more 21 than $808,000 towards marketing and advertising. Dkt. # 44 at 3–4. The Boiling Crab 22 restaurants are featured on food blogs, social media, newspapers, and magazines in California, 23 Florida, Hawaii, Maryland, Massachusetts, Nevada, and Texas. Dkt. ## 45 (exhibits 11–24); 43 24 (exhibits 33–38). Plaintiff has received “unsolicited media attention” from celebrities posting on 1 social media. Dkt. # 45 (exhibits 11-24). No matter if Plaintiff's mark is descriptive or 2 suggestive, the evidence of commercial strength raises a question about the marks’ “ultimate 3 force,” which in turn serves to raise a question of material fact as to likelihood of confusion. See 4 || Fortune Dynamic, Inc., 618 F.3d at 1035 (“Whatever its ultimate force, this evidence is 5 sufficient to make the relative commercial strength of the. .. mark a question for the jury.”). 6 2. Proximity or relatedness of the services 7 Proximity or relatedness of goods and services are “measured by whether the products 8 are (1) complementary; (2) sold to the same class of purchasers; and (3) similar in use and 9 function.” BBC Grp. NV LLC, 413 at 1047 (citing Network Automation, Inc. v. Advanced Sys. 10 Concepts, Inc., 638 F.3d 1137, 1150 (9th Cir. 2011)). Goods and services are related when 11 customers are likely to associate them or consider them from the same source. Surfvivor Media, 12. 406 F.3d at 633 . “Where the goods are related or complementary, the danger of confusion 13 is heightened.” M2 Software, Inc., 421 F.3d at 1082. 14 Plaintiff's and Defendants’ restaurants both provide Cajun-style seafood by the pound || with varying levels of spices and seasonings. Here are images of Plaintiffs current menus: PEssovomsaae “bonnet 2 Fie Slacs pe? Fiarercae rc Docurent 452 iW 22 Page 3 The Boiling Crab. 16 i Sm p= eee Pee pean PANE “FRED SHRIMP ASHE D0) eo SERS men pen 17 Sac = ————— PB pp sen vn i SS 5 we FS 23 Dkt. # 43-2 at 2-4. Like Plaintiffs menu heading that says, “STEP 1: WHAT’S YOUR 24 CATCH?” Defendants’ menu said, “WRAP YOUR CATCH”; Plaintiff's said, “STEP 2: ORDER RE: MOTION l WHAT’S YOUR FLAVOR?” and Defendants’ said, “PICK YOUR FLAVOUR’ and Plaintiffs 2 || said, “STEP 3: HOW HOT CAN YOU GO?” and Defendants’ said, “HOW SPICY CAN YOU.” 3 Dkt. # 49-2 at 3. After the 2016 demand letter, Defendants changed their menu to the following: 8 == ae =e s = | "us| 9 = 5 7 : ; 7 Seterbeas ard Sean 3 10 ™ 11 Dkt. # 42-12 at 9-15. The evidence of the similarity of the menus and services before this 12 change supports the relatedness factor, which tends to raise an issue of material fact as to the 13 likelihood of confusion. 14 3. Similarity of the marks 15 “TT |he similarity of the marks . . . has always been considered a critical question in the 16 likelihood-of-confusion analysis.” GoTo.com, Inc., 202 F.3d at 1205 . The Court considers the 17. || whole mark rather than the sum of its parts, how “they appear in the marketplace,” and similarity 18 in terms of appearance or sight, sound, and meaning. M2 Software, Inc., 421 F.3d at 1082; 19 GoTo.com, Inc., 202 F.3d at 1206 . The more similar the marks, the greater the likelihood of 20 confusion. GoTo.com, Inc., 202 F.3d at 1206 . Courts weigh “similarities . . . more heavily than 2] differences.” Jd. 22 Plaintiff's and Defendants’ marks contain the word “Boiling” and a red crustacean. 23 Plaintiffs crustacean is a crab, and Defendants’ is a crawfish often with a chef’s hat and smiling 24 Plaintiff and Defendants use circular and horizontal marks. The circular marks include ORDER RE:MOTION l text around the crustacean. Plaintiff and Defendants also use a mark with horizontal text. 2 || Plaintiff's horizontal mark is text only, without a crab. Defendants’ horizontal mark includes the 3 hatted and smiling crawfish superimposed on the “O” in the word “BOILING.” 4 While the fonts and types of crustacean are distinct, both Plaintiff and Defendants use a 5 mark with black text around red crustaceans on customer bibs: [6] 7 □□ eam 8 Se =, , i 4 9 Chad. e 6 é 10 Dkt. ## 45-7 at 7; 45-27 at 5. Sometimes, Defendants use bibs with neither text nor their image 11 of a crawfish with a hat and face: 12 eT a = a P Ty : he = 6) A 13 ea ~ ee □□□ -~ A a aye 14 Aaeaot a es a os co ‘ Pt 15 § opael □□□ ei 16 |) Dkt. ## 45-27 at 11; 45-29 at 6. 17 Both Plaintiff's and Defendants’ employee uniforms include black t-shirts with white text 18 and a red crustacean. Plaintiff's current and “primary” employee unforms include its trademark 19 || with lowercase white text and a red crab: 20 Pa: Se: =a : f =a EB oe “= □□□ ic a on) ae a (2 sr □ i! fi V3 a ro ye “a 4 uf we 23 My Pies a: | ag ( [24] ORDER RE: MOTION 1 Dkt. ## 43-24; 45-1 at 2. Below are Defendants’ 2019 and 2020 uniforms, which included white 2 || text and a red crawfish: 3 ae 4 Seas pag ae PT a 5 rea ] re rae Pare Crd Ps Cd Lg [6] Dkt. # 42-12 at 17-18. [7] Plaintiff compares the use of the marks on the parties’ cups: [8] en SEE == ee 9 4 eal oes a xt ; 2 □ ee es Gly KY □ 10 iOS iS = □ ool 12 ——— 3 Dkt. ## 45-1 at 4-5; 45-26 at 2. Both parties’ cups use circular marks—Plaintiff’s cups have 14 blue text around a red crab and Defendants have black text around the hatted and smiling red crawfish. [15] 16 The visual similarities between the marks and how the parties use them serve to raise an 7 issue of fact as to the likelihood of confusion. 8 4. Evidence of actual confusion 19 “Incidents of actual confusion are strong evidence of likelihood of confusion.” BBC Grp. NV LLC, 413 at 1047 (citing Rodeo Collection v. West Seventh, 812 F.2d 1215, 1219 (9th Cir. 1987)). )) 9 Plaintiff provides evidence that, on July 22, 2020, an employee of Northwest Mortgage in 33 Puyallup contacted Plaintiff to verify the employment of one of Defendants’ employees. Dkt. ## 43 at 16 (Ngo Decl.); 43-46 (email). Plaintiff provides evidence of social media users ORDER RE: MOTION [1] geotagging2 “Boiling Crawfish,” but hashtagging3 “#boilingcrab.” Dkt. ## 42-32; 42-33. 2 Plaintiff also provides two incidents of actual confusion on restaurant review websites: 3 • On July 27, 2016, Lillie M. wrote a Yelp review for Boiling Crawfish. Dkt. # 42-28. In the post, she apparently accidentally wrote “Boiling Crab” when she meant “Boiling 4 Crawfish.” A later produced version of the post does not include “Boiling Crab.” Compare Dkt. # 42-28 with Dkt. # 42-29. [5] • On December 17, 2017, Barakat Mawalin left a one-star Google review for Boiling 6 Crawfish that said, “DO NOT GO HERE !!!!!!! SPOILED AND ROTTEN SEAFOOD!!!!! NO REFUND NO MANAGER ON-SITE BOILING CRAB SOLD MY 7 FAMILY BAD SHRIMP.” Dkt. ## 42-14 at 2; 42-30; 42-31. 8 Defendants say the number of times Boiling Crawfish customers expressed their 9 awareness that they were not eating at The Boiling Crab outnumbers Plaintiff’s evidence of 10 actual incidents of confusion. Dkt. # 37 at 4–5, 15. While some customers seemingly 11 distinguish the two restaurants, the evidence of actual confusion tends to raise an issue of 12 material fact as to the likelihood of confusion. 13 5. Marketing channels 14 “Convergent marketing channels increase the likelihood of confusion.” Sleekcraft, 599 15 F.2d at 353. The internet, “as a marketing channel, is particularly susceptible to a likelihood of 16 confusion since . . . it allows for competing marks to be encountered at the same time, on the 17 same screen.” GoTo.com, Inc., 102 F.3d at 1207. But “[s]ome use of the Internet for 18 marketing. . . does not alone and as a matter of law constitute overlapping marketing channels.” 19 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1151 (9th Cir. 2002). In GoTo.com, the [21] 22 2 “[T]o add location information to (something, such as a digital image).” Geotag, MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary/geotagging. 23 3 “[A] word or phrase preceded by the symbol # that classifies or categorizes the accompanying text (such as a tweet).” Hashtag, MERRIAM-WEBSTER, https://www.merriam24 webster.com/dictionary/hashtag. 1 parties use of similar marks for similar services and substantial marketing on the internet was 2 enough to suggest a likelihood of confusion. 102 F.3d at 1207. 3 Defendants say they exclusively market their restaurants on Facebook, and that because 4 “essentially all restaurant chains market through the internet,” this factor is neutral. Dkt. # 37 at 5 16. But like Plaintiff, Defendants have a presence on other social media platforms and websites. 6 See e.g., Dkt. ## 42-29 (Yelp); 42-30 (Google); 42-31 (Google); 42-32 (Instagram); 42-33 7 (Instagram); 45-26 (Facebook). And the same YouTube channel featured both Plaintiff’s and 8 Defendants’ restaurants. Dkt. ## 42-12 at 5; 45-29. Because the parties have overlapping 9 presences on social media and websites, the evidence on this factor also tends to raise an issue of 10 fact as to the likelihood of confusion. 11 6. Degree of consumer care 12 “In analyzing the degree of care that a consumer might exercise in purchasing the parties’ 13 goods, the question is whether a ‘reasonably prudent consumer’ would take the time to 14 distinguish between the two product lines.” Surfvivor Media, Inc., 406 F.3d at 634 (quoting 15 Brookfield Commc’ns, Inc., 174 F.3d at 1060 ). “Unlike purchasers of expensive goods—whom 16 we expect to be more discerning and less easily confused—purchasers of inexpensive goods ‘are 17 likely to exercise less care, thus making confusion more likely.’” Pom Wonderful LLC v. 18 Hubbard, 775 F.3d 1118, 1127 (9th Cir. 2014) (determining the district court properly found that 19 consumers exercise a low degree of care when purchasing inexpensive pomegranate beverages) 20 (quoting Brookfield Commc’ns, Inc., 174 F.3d at 1060 ). 21 Defendants cite Dr. William Bearden’s report and testimony, in which Dr. Bearden 22 asserts generally that consumers of restaurants are “conscious and thoughtful” about their 23 decision of where to eat. Dkt. ## 37 at 16 (Defs.’s Mot. Summ. J.); 49 at 12 (Bearden Report). 24 He says that consumers exhibited care on Twitter by recognizing that The Boiling Crab and 1 Boiling Crawfish are different restaurants. Dkt. # 49 at 12. Plaintiff moves to strike the opinions 2 in Dr. Bearden’s report. Dkt. # 41 at 13. To rebut Dr. Bearden’s report, Plaintiff provides the 3 declaration of Dr. Jonathan Hibbard. Dkt. # 41 at 20. Dr. Hibbard asserts that the average price 4 per person at Plaintiff’s restaurant is $35, excluding the cost of alcohol. Dkt. # 46-1 at 34. He 5 says that Plaintiff and Defendants are “casual dining restaurant brands,” and “[m]ost marketers 6 would consider the purchase of a casual dining experience to be a low involvement decision.” 7 Id. at 33. He also says, “A lower involvement purchase usually involves an abridged decision8 making process,” and “can increase the likelihood of confusion.” Id. at 33–35. Plaintiff also 9 says that evidence of actual confusion is probative of the degree of consumer care. Dkt. # 41 at 10 27. The evidence above of consumer care tends to raise an issue of fact here. 11 7. Defendants’ intent in selecting the mark 12 “This factor favors the plaintiff where the alleged infringer adopted his mark with 13 knowledge, actual or constructive, that it was another’s trademark.” Brookfield Commc’ns, Inc., [14] 174 F.3d at 1059 . “‘[W]hen the evidence does show or require the inference that another’s name 15 was adopted deliberately with a view to obtain some advantage from the good will, good name, 16 and good trade which another has built up, then the inference of the likelihood of confusion is 17 readily drawn.’” Clean Crawl, Inc. v. Crawl Space Cleaning Pros, Inc., 364 F. Supp. 3d 1194 , 18 1209 (W.D. Wash. 2019) (quoting Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 19 149 , 157–58 (9th Cir. 1963)). 20 Plaintiff points to evidence that Defendants visited an area in California near two of The 21 Boiling Crab restaurants before opening their restaurants in Washington. Dkt. # 41 at 11. 22 Plaintiff provides a copy of Hien Van Nguyen’s Facebook page, which includes four posts from 23 April 10 and 14, 2016, checking-in at various locations in Southern California. Dkt. # 42-56. 24 Plaintiff provides driving directions from one of the check-in locations to two The Boiling Crab 1 locations, which are respectively about 2.1 miles or 2.6 miles from the check-in spot. Dkt. # 422 60 at 3-4. Plaintiff also provides a post from January 18, 2018, showing Hien Van Nguyen 3 checked-in at a Pho restaurant in Westminster, California. Dkt. # 42-54 at 4. Defendants opened 4 || the Boiling Crawfish restaurant in Kent in June 2016, and in Puyallup in 2018. Dkt. ## 42-12 at 5 3 (Defs.’s Resp.); 42-55 (Facebook); 42-51 at 10 (Tuyen Bach Nguyen Dep.). Tuyen Bach 6 || Nguyen testified that she and Hien Van Nguyen decided to open a crawfish restaurant after they 7 ||noticed that there were only three crawfish restaurants in Washington. Dkt. # 42-51 at 14. And 8 she said she had never heard of The Boiling Crab restaurants. /d. at 47. 9 Plaintiff alleges Defendants renovated their Kent restaurant and used some of Plaintiff's 10 design elements in the renovation after receiving Plaintiffs letter demanding Defendants cease 11 or modify the use of the marks. Dkt. # 41 at 4, 11-12. Plaintiff sent Defendants a demand letter 12 on September 26, 2016. Dkt. ## 42-51 at 40 (Tuyen Bach Nguyen Dep.); 49-2 at 2-4 (Bearden 13 Report). Plaintiff alleges the remodel occurred in 2019. Dkt. #41 at 11. Plaintiff and || Defendants’ restaurants are “nautically-themed” and decorated with “orange-red paint, brick 15 facade and black ceiling tiles.” Dkt. ## 43 at 14 (Ngo Decl.); 37 at 3 (Defs.’s Mot. Summ. J.). 16 || Here are images from Plaintiff's restaurants sometime after 2006 and in 2022: 17 r SM ee ue = ae 18 | a a i A 20 A « 4a [24] ORDER MOTION 1 Dkt. ## 43-44; 45-9 at 9. Here are images from Defendants’ Kent restaurant in 2016: ‘_ ae 2 = a Ne □□ 3 | □□ i. if —_ ee ees a ee 4 - 5 ala awl 6 || Dkt. # 42-51 at 76-80. And here are images from Defendants’ Kent restaurant in 2019 and 7 |) 2020: 8 i hy ; 9 " — Sa aia 10 Ee a : □ ae a. 12 || Td. at 118, 116. 13 Tuyen Bach Nguyen admitted she received the demand letter in 2016 and texted a phone 14 || number in the letter. Id. at 41-42 . She said she changed the price of a few menu items based on Id a text message she received but denied changing anything else. /d. at 46-48 (Tuyen Bach 16 Nguyen Dep.); See Dkt. # 42-12 at 3-4, 9-15 (Resp. to Req. Produc.). 17 Plaintiff also notes that Defendants filed their trademark registration application on 18 August 28, 2017, nearly one year after receiving Plaintiff's demand letter. Dkt. # 41 at 28 n.12. 19 Although the application stamp says Defendants filed it in August 2017, Defendants wrote they 20 first used the mark on June 10, 2016. Dkt. #38 at 81-82. 21 The evidence above tends to raise a question about Defendants’ intent, which serves to 22 || raise an issue of fact as to the likelihood of confusion. [24] ORDER RE: MOTION 1 8. Likelihood of expansion 2 “Even where two marks are nearly identical, courts may find no customer confusion if 3 the two companies operate in entirely different geographic areas.” BBC Grp. NV LLC, 413 at 4 1044. “To resolve this factor, we must determine whether existence of the allegedly infringing 5 mark is hindering the plaintiff’s expansion plans.” Surfvivor Media, Inc., 406 F.3d at 634 . 6 Plaintiff says it is “actively exploring further expansion of its chain of THE BOILING 7 CRAB restaurants to additional locations throughout the United States.” Dkt. ## 34 at 3(Am. 8 Compl.); 41 at 30 (Pl.’s Opp’n to Mot. Summ. J.). Plaintiff says that expanding to Washington is 9 a natural choice because its marks have already extended to the state. Dkt. # 41 at 30. Plaintiff 10 has received inquiries from people interested in opening a The Boiling Crab franchise in 11 Washington and inquiries from customers asking when they will open The Boiling Crab in 12 Seattle or Washington. Dkt. ## 42-9 at 13–14; 45-10. The evidence of Plaintiff’s interest in 13 expanding to Washington tends to raise an issue of material fact as to the likelihood of 14 confusion. 15 Having considered the record and the Sleekcraft factors, viewing the evidence and 16 reasonable inferences therefrom in the light most favorable to Plaintiff, the Court concludes that 17 there is a genuine issue of material fact as to the likelihood of confusion. [18] 19 IV. 20 CONCLUSION 21 For the above reasons, the Court DENIES Defendants’ Motion for Summary Judgment. 22 Dkt. # 37. The Court DENIES WITHOUT PREJUDICE Plaintiff’s requests to strike paragraphs 23 17 and 18 of the Michael Kyllo Declaration (Dkt. # 38 at 2–3) and strike the opinions in the 24 William Bearden Report (Dkt. # 38 at 5). Dkt. # 41 at 13. 1 Dated this 31“ day of May, 2022. 2 Cob ¥. Chur 3 John H.Chun United States District Judge [10] 1] [24] ORDER RE:MOTION