Opinion
Civil Action No. 3:02MC-1-S, Central District of California, Case No. CV-01-05783 SVW (MCX)
March 7, 2002
MEMORANDUM OPINION AND ORDER
This matter is before the court on motion of non-parties, Ear X-tacy, Inc. and John D. Timmons (collectively "Ear X-tacy"), to quash subpoenas served on them in relation to the above-styled action filed in the United States District Court for the Central District of California.
Ear X-tacy holds a registration of the "Ear X-tacy" mark
"For: Prerecorded cassette tapes, video tapes, compact discs, laser disks and records featuring music and entertainment and blank cassette tapes and blank video tapes and compact disc and cassette tape storage cases, in Class 9 (U.S. CLS 21 and 36)."
Reg. No. 1,717, 667. The registration was allowed by the Patent and Trademark Office ("PTO") on September 22, 1992 and the mark has been in continuous use by Ear X-tacy since August of 1985.
On August 16, 1999, the PTO refused to allow registration of the mark "Extasy Records International" for goods and services described as a "series of sound recordings, namely, phonograph records, pre-recorded compact discs, and videos featuring music and entertainment." Registration was denied "because the [Extasy Records International] mark, when used on or in connection with the identified goods, so resembles the mark [Ear X-tacy] in U.S. Registration No. 1,717,667 as to be likely to cause confusion, to cause mistake, or to deceive." The PTO Trademark Trial and Appeal Board ("Appeal Board") affirmed the PTO's refusal to register "Extasy Records International" by decision rendered February 27, 2001. On June 29, 2001, the applicant, Yoshiki Hayashi ("Hayashi"), filed suit in the United States District Court for the Central District of California appealing the PTO's decision and the affirmance by the Appeal Board. Ear X-tacy is not a party to that action nor was it involved at the agency level.
Hayashi issued subpoenas for depositions and production of documents to Ear X-tacy, Inc. and to its owner, John Timmons. On January 17, 2001, they filed a motion in this court to quash the subpoenas on the grounds that 1) they seek information which is irrelevant to the California action and not reasonably calculated to lead to the discovery of admissible evidence, 2) they are overbroad and unduly burdensome, and 3) they seek confidential and proprietary information.
Ear X-tacy notes that the matter before the California court is an appeal from an ex parte proceeding and, as such, Hayashi is precluded from mounting a collateral attack on the validity of the Ear X-tacy registration. In re Dixie Restaurants, Inc., 105 F.3d 1405, 1408 (Fed. Cir. 1997), citing, Dan Robbins Assoc., Inc. v. Questor Corp., 599 F.2d 1009, 1014 (C.C.P.A. 1979). Ear X-tacy's certificate of registration is prima facie evidence of the validity of the registration and the registrant's exclusive right to use the mark in connection with the services specified. See, In re Dixie Restaurants, supra. at 1408, citing, 15 U.S.C. § 1057(b) (1994). Unless abandonment of the mark is established the registration is valid and the court must give effect to its identification of services. Id., citing, Cosmetically Yours, Inc. v. Clairol, Inc., 424 F.2d 1385, 1387 (C.C.P.A. 1970). Abandonment is not contended here.
The goods and services specified by Hayashi in the "Extasy Records International" application are identical to that which is specified in the "Ear X-tacy" registration. Therefore, Hayashi is precluded from asserting in the California litigation that confusion is unlikely due to a divergence in the channels of trade between the companies. Hayashi cannot seek to narrow the scope of the "Ear X-tacy" registration in order to carve out a niche for his goods and services. Dixie Restaurants, supra.; Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490 (Fed. Cir. 1987). Additionally, there has been no consent given by Ear X-tacy for registration or use, such as in In re N.A.D., Inc., 754 F.2d 996 (Fed. Cir. 1985), and In re E.I. DuPont DeNemours Co., 476 F.2d 1357 (C.C.P.A. 1973). Thus there is no basis for exploring the markets in which these businesses exist, and discovery in this vein should be denied.
Hayashi insists that he is entitled to wide-ranging discovery from Ear X-tacy on the ground that, having filed his appeal in the U.S. District Court rather than with the Court of Appeals for the Federal Circuit, he may avail himself of the opportunity to present new evidence not presented to the PTO. He contends that the E.I. DuPont case stands for the proposition that evidence adduced on any of the 13 factors recited therein is fair game in this appeal. The court finds this contention to be without merit.
As noted in Otocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 943 (Fed. Cir. 1990), "A factor listed in DuPont is not made material by submission of evidence on that point; rather, the factor must be shown to be material or relevant in the particular case before any evidence offered on the factor should be considered."
Civil review in federal court is intended to be a trial "de novo" of the Trademark Board decision. However, this does not mean that all issues determined by the Patent and Trademark Office are thrown open for a new decision. The appellant can present new evidence not presented in the Trademark Office, but cannot raise a legal issue it did not raise below . . . While district court review is called "de novo" because new evidence may be introduced, it is a unique procedure because unlike a true de novo proceeding, findings of fact made by the Trademark Trial and Appeal Board are given great weight.
3 McCarthy on Trademarks at 21:21, pgs. 21-27, 21-28.
The subpoenas seek documents concerning the creation of the "Ear X-tacy" mark, its use, and Ear X-tacy's business. Since the validity of the registration and the goods and services which that registration covers cannot be challenged in the California litigation, these matters are irrelevant and therefore need not be produced by Ear X-tacy. Arguably, evidence regarding the nature and extent of any actual confusion between the "Ear X-tacy" mark and the "Extasy Records International" mark would be relevant and producible under the subpoenas. However, it is necessarily Hayashi's contention (and he has so stated in his brief in response to the summary judgment motion) that there has not been any actual confusion between the marks. Hayashi's premise is that Ear X-tacy's mark is not famous, that there has been no actual confusion, nor is there potential for confusion in the future. What Hayashi seeks via his subpoenas is confirmation that no such evidence exists. He may attempt to confirm this contention, to the extent that Ear X-tacy has knowledge of any actual confusion which has occurred.
For the reasons set forth hereinabove and the court being otherwise sufficiently advised, IT IS HEREBY ORDERED AND ADJUDGED that the motion of non-parties, Ear X-tacy, Inc. and John D. Timmons, to quash subpoenas is DENIED to the extent that they seek evidence of actual confusion between the "Ear X-tacy" registered trademark and the "Extasy Records International" mark. In all other respects the motion to quash subpoenas is GRANTED.
IT IS SO ORDERED.