IP Law Daily, TRADEMARK—C.D. Cal.: Los Angeles-area Iranian telephone directory provider’s marks safe from competitors’ counterclaims, (Dec 7, 2015)

By Jody Coultas, J.D.

An Iranian television channel and Iranian telephone directory provider failed to state counterclaims against Ketab Corporation for cancellation of Ketab’s trademark registrations and state consumer protection law violations, according to the federal district court in Los Angeles (Ketab Corp. v. Mesriani & Associates, December 4, 2015, Lew, R.). The court dismissed all five counterclaims without leave to amend.

Ketab and counterclaimant Melli Yellowpages, Inc. are California corporations that provide telephone directory and marketing services to the Iranian community in the Los Angeles area. Ketab filed direct, contributory, and vicarious trademark infringement claims against Melli Yellow Pages, its owner, Studio Cinegraphic Los Angeles, and others. Melli Yellow and Studio Sinegraphic counterclaimed for violations of the California Unfair Competition Law (UCL), cancellation of Ketab’s trademarks, and declarations of invalidity and non-infringement.

Judicial notice. The court took judicial notice of the Registration No. 3,271,704, Registration No. 3,337,567, and Registration No. 3,246,367. Courts may take judicial notice of copies of trademark registration certificates.

Cancellation of registration. Ketab was granted dismissal of the counterclaimants’ motion to cancel Ketab’s trademark registrations because the counterclaimants lacked a real interest in the proceedings, according to the court. In order to have standing under the Lanham Act to seek cancellation of a trademark registration, the cancellation petitioner must “plead and prove facts showing a ‘real interest’ in the proceeding.” Courts have found standing where the cancellation petitioner asserts a likelihood of confusion between the petitioner’s mark and a registered mark, or where the petitioner’s application is rejected during prosecution. Counterclaimants based their standing to bring their cancellation claim on allegations that certain marks were “generic and/or descriptive.” There were no allegations of independent injury or personal interest in the cancellation of the trademarks separate from the allegations of injury relating to the generic or descriptive nature of the marks.

Invalidity and non-infringement. In cases where leave to amend is given to cure deficiencies in certain specified claims, courts have struck or dismissed new claims alleged for the first time in the amended pleading. Counterclaimants sought a declaration of invalidity of trademark Registration Nos. 3,337,567 and 3,271,704 and a declaration of noninfringement of the Ketab marks for the first time in their second amended counterclaim. Counterclaimants were required to seek leave before adding the new claims. Also, counterclaimants unduly delayed in adding the invalidity claims. The court declined to grant leave to amend to add claims for declaration of invalidity and non-infringement.

Also, the court dismissed the declaratory judgment claims as “repetitious of issues already before the court via the complaint.” Ketab alleged direct, contributory, and vicarious trademark infringement against counterclaimants. The court will, therefore, have to determine whether the marks were valid and whether there was infringement. Therefore, the counterclaims will necessarily be disposed of and rendered moot.

State law claims. A number of the counterclaimants’ UCL claims, filed in 2014, were barred by the four-year statute of limitations, according to the court. The allegation that Ketab deceived the public by placing an ® symbol next to its “08" design mark (Registration Number 3,271,704) prior to its registration date of October 16, 2006 should have been filed no later than 2010. The limitations period on an allegation that Ketab was the “driving force” behind a baseless and abusive class action filed in 1998 ran no later than 2002.

The UCL claim based on cybersquatting, initiated on September 30, 2011, after Ketab allegedly “reserved through eNom, Inc., a domain name identical to Defendant and Counterclaimant’s trademark 5050100 through a false registrant name,” and subsequently “attempt[ed] to avoid service of the complaint” was not time barred. However, because counterclaimants failed to allege what law was actually violated by Ketab’s reservation of the domain name, the UCL claim could not be based on an unlawful act.

Counterclaimants also failed to state a UCL claim under the unfairness prong, according to the court. Ketab allegedly asserted rights to the descriptive terms necessary to sell yellow page services and information, effectively creating a barrier to entering the market and otherwise restraining trade. The court found that the allegations could not be brought under the unfair prong, and the counterclaimants failed to assert any law or antitrust law violated by the alleged conduct. The court also dismissed UCL claims under the fraudulent prong.

Because counterclaimants had multiple opportunities to allege additional facts to support the UCL claims, the court dismissed the claims without leave to amend.

The case is No. 2:14-cv-07241-RSWL (MRW).

Attorneys: Drew Harris Sherman (Adli Law Group PC) for Ketab Corp. Justin Hideki Aida (Gordon and Rees LLP) for Melli Yellow Pages, Inc. Reid E. Dammann (Musick, Peeler & Garrett LLP) for Studio Cinegraphic Los Angeles Inc. d/b/a IRTV.

Companies: Ketab Corporation; Mesriani & Associates; Studio Cinegraphic Los Angeles; and Melli Yellow Pages, Inc.

Cases: Trademark CaliforniaNews