On May 2, the Northern District of California dismissed plaintiff Jarritos, Inc.’s infringement and dilution claims against the defendant owners of a San Francisco restaurant called “Los Jarritos.” Plaintiff alleged it manufactures and distributes soft drinks under various JARRITOS trademarks and that defendants’ use of the “Los Jarritos” name and logo in connection with their restaurant infringed and diluted plaintiff’s marks.
Defendants moved for summary judgment. On plaintiff’s infringement claim, the court found that even if the parties’ goods were considered related, “the absence of any evidence demonstrating that any of the remaining eight [Sleekcraft] factors tip in Plaintiff’s favor warrant[s] granting summary judgment. Plaintiff bears the burden of demonstrating that ‘confusion is probable, not simply a possibility.’ Cohn v. Petsmart, Inc., 281 F.3d 837, 842-43 (9th Cir. 2002).”
On plaintiff’s dilution claim, the court noted the Trademark Dilution Revision Act revised the Federal Trademark Dilution Act “to deny protection to marks that are famous only in ‘niche’ markets. Century 21 Real Estate LLC v. Century Ins. Group, 2007 WL 484555, *14 (D. Ariz. Feb. 9, 2007).” (STL discussion of Century 21 here.)
The court first found that plaintiff failed to show fame: “Defendants argue that Plaintiff’s dilution claim fails because the marks are not identical, Plaintiff’s mark is not famous, and that Defendants are not using the mark in a way that capitalizes on that mark’s status in the soft drink market. Plaintiff admits that it needs to prove fame, but states that it ‘will do so at trial.’ Unfortunately for Plaintiff, to proceed to trial, Plaintiff had an obligation to submit evidence demonstrating the fame of its mark in opposition to the motion for summary judgment. The only evidence Plaintiff does submit is insufficient.”
Plaintiff’s evidence evidence mainly consisted of a one-page map of the United States with text stating: “100% Hispanic Coverage more than 50,000 points of sales, 220 Food Service Distributors, 209 Distributors.” The court found that even if it accepted these purported facts as true, the document was insufficient to prove fame because it did not address the volume of plaintiff’s sales, the breadth of its advertisements, or consumers’ recognition of the mark.
The court also found: “Even if Plaintiff did have some evidence demonstrating its mark is famous, which the Court finds it does not, Plaintiff has not submitted any admissible evidence demonstrating that its mark was famous as of 1988, when Defendants opened their restaurant. On this basis alone, the Court grants Defendants’ motion as to Plaintiff’s federal dilution claim.”
Finally, the court found: “Plaintiff is required to demonstrate that Defendants have been using its mark ‘as a trademark, capitalizing on its trademark status.’ Plaintiff has not submitted any evidence in support of this element. Accordingly, this provides another, independent basis for granting Defendants’ motion.”
The case is captioned as Jarritos, Inc. v. Los Jarritos, No. 05-02380, 2007 WL 1302506 (N.D. Calif).