A reader posted the following comment to yesterday’s post about the CreAgri v. USANA priority case: “I have to wonder what happened with Plaintiff’s common law (California) trademark claims. The opinion seemed to focus on the narrow federal issue of whether the ‘use in commerce’ was lawful. From what I can tell, it doesn’t state that the requirement would be the same for common law TM claims.
“I guess I could look through all the docs on PACER, but if you have an idea of how the federal claim & state claim interact on this “lawful” priority issue, I would be interested to hear it.”
I was curious, too, so I looked at the underlying summary judgment order that the Ninth Circuit affirmed. CreAgri alleged five state-law claims: violation of Section 17500 of the Business & Professions Code (false advertising); violation of Section 17200 of the Business & Professions Code (unfair or unlawful acts); common law unfair competition; intentional interference with economic relationship; and negligent interference with economic relationship.
The Northern District found: “Each of these five state law counts are wholly predicated on USANA’s alleged acts of trademark infringement. For the reasons stated above [relating to priority and “lawful” use in commerce], Creagri cannot prove a claim of trademark infringement and, consequently, cannot establish any of its state law claims.”
The Ninth Circuit summarily agreed. In a footnote, it stated: “Summary judgment was also properly granted as to CreAgri’s non-trademark infringement claims and USANA’s request for declaratory judgment, as these claims also hinged on Olivenol’s trademark priority — or lack thereof — over Olivol.”
Good question. I hope this answers it.