Defendant is therefore entitled to summary judgment on this basis. In addition, the Court may consider further evidence or remand the matter to the magistrate judge with instructions. Where the mark is not registered, as in the instant case, a plaintiff must establish that its mark either is inherently distinctive, or has acquired distinctiveness through secondary meaning. Plaintiff admittedly has no direct evidence of Defendant's intent to deceive, but instead claims that such intent can be inferred on the ground that Mr. Hill denied knowing about Plaintiff's existence at the time he registered Defendant as a limited liability company in 1999. SAND HILL ADVISORS, LLC, a Delaware limited liability company, Plaintiff, v. SAND HILL ADVISORS, LLC, a California limited liability company, Dkt. (Hill Decl. (Id. Id. Defendant has since corrected this error by submitting a properly verified version of Mr. Hill's declaration. 1989). Boston Private said it would pay 70% of the purchase price in cash and the rest in stock. 3 and Ex. In any event, little imagination would be required for a consumer to connect "Sand Hill Advisors" with other companies that are located in or near the Sand Hill area whose service is providing advice. (Opp'n at 14.) See Lahoti, 586 F.3d at 1196. (Davidson Decl. Ex. Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1196 (9th Cir.2009). Rather, the salient question for purposes of ascertaining whether a mark is descriptive is whether the mark conveys information regarding the nature of the goods or services. To establish service mark infringement under the Lanham Act, the plaintiff must show that (1) it has a valid, protectable mark, and (2) defendant's use of the mark is likely to cause confusion. % ("MSJ Order"), Dkt. Struck (Defendant); Struck Capital Management, LLC (Defendant); Struck Capital Fund GP LLC (Defendant) et al. At the other end of the spectrum are generic marks, which are not protected. 's Mot. On January 12, 2010, the parties appeared through counsel for oral argument on the motion. No one has written a summary of this case yet. 0000013022 00000 n WebMike and his team have represented some of the worlds most recognized brands and companies in high-stakes litigation in numerous federal courts across the country including Washington, Oregon, California, Colorado, Minnesota, Illinois, New York, Massachusetts, Utah, and Florida. (mejlc1, COURT STAFF) (Filed on 4/5/2010). IN SUPPORT OF MOTION TO COMPEL ARBITRATION to Of Frank D. Rorie JR. (Opp'n at 14.) 9; McCaffrey Depo. Thus, the Court concludes that "Sand Hill Advisors" is primarily geographically descriptive. Minute Order - MINUTE ORDER (HEARING ON MOTION TO COMPEL ARBITRATION), Notice of Change of Address or Other Contact Information, Minute Order - MINUTE ORDER (STATUS CONFERENCE RE: ARBITRATION), Declaration - DECLARATION OF FRANK D. RORIE JR. 3Wrv]*\nwNN!4N%tN)NNNN9)%-cDE)7(/-3d=:tK~iE)f}!C6C@0d.O rZ aEnQ;! Subscribe to Justia's Free Newsletters featuring summaries of federal and state court opinions. The Rodeo Collection court held that under both tests, the mark "Rodeo Collection," and the component term "Collection" were "more than merely descriptive as used to identify a shopping center." Signed by Judge ARMSTRONG on 9/16/10. Motion Hearing set for 2/23/2010 01:00 PM in Courtroom 3, 3rd Floor, Oakland. "Exceptional circumstances can be found when the non-prevailing party's case is groundless, unreasonable, vexatious, or pursued in bad faith." 's Mot. trailer at 22.) Signed by Judge ARMSTRONG on 9/16/10. "If the evidence is merely colorable, or is not significantly probative, summary judgment may be granted." Struck (Defendant); Struck Capital These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia. 2.) 57. Since 1999, Defendant has closed between seven to ten commercial real estate transactions. (Entered: 12/15/2008), Declination to Proceed Before a U.S. Magistrate Judge by Sand Hill Advisors LLC. Operating Status Active. L.R. Notice of Case Assignment - Unlimited Civil Case; Filed by: Clerk. 's Mot. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979). See MSJ Order at 13-14, Dkt. Struck (Defendant); Struck Capital Management, LLC (Defendant); Struck Capital Fund GP LLC (Defendant) et al. But, advertising, standing alone, does not establish secondary meaning. Signed by the Executive Committee on December 16, 2008. In Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC a trademark case involving companies with the same name the Northern District of California found that northern California is big enough for both parties. Other business, many of which are located in the Silicon Valley (which encompasses the Sand Hill *1119 area), include "Sand Hill Angels," "Sand Hill Financial," "Sand Hill Finance," "Sand Hill Capital," "Sand Hill Econometrics," "Sand Hill Equity Research," "Sand Hill Partners," "Sand Hill Consulting Associates," and "Sand Hill Group LLC." at 51:6-52:14; Williams Decl. Though the Court ultimately rejected each of Plaintiff's contentions, that alone does not support the conclusion that its position that the mark at issue was suggestive was frivolous. Plaintiff argues that its provision of real estate investment advice overlaps with Defendant's business. 1. Sand Hill, which caters primarily to high-net-worth individuals in Northern California, has $900 million of assets under management. (adsbygoogle = window.adsbygoogle || []).push({}); Non-Government Works Copyright 2001-2023 Think Computer Corporation. Plaintiff nonetheless insists that "Sand Hill," when combined with "Advisors," is suggestive, as opposed to descriptive. Ex. (Entered: 01/12/2010), EXHIBIT C re 48 Declaration of Rachel R. Davidson in Support, CORRECTION OF DOCKET # 50 filed by Sand Hill Advisors LLC. at 50:10-52:14.) Plaintiff has filed an opposition to the motion, accompanied by objections to certain of the evidence offered by Defendant in support of its motion. Plaintiff summarily asserts that "there is no need for other wealth management firms to use `Sand Hill Advisors' in describing or advertising their services." xb``f``b sT,PAABmgX$ "This acquired distinctiveness is generally called `secondary meaning.'" Two Pesos, 505 U.S. at 769, 112 S.Ct. (Mot. "Secondary meaning can be established in many ways, including (but not limited to) direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant." 0000001160 00000 n Notwithstanding that finding, the Court disagrees with Defendant that Plaintiff's arguments were "frivolous." 0000000016 00000 n This is particularly true where the good or service is expensive. Company Type For Profit. 2505. Defendant also asserts that Plaintiff lacked evidence to support its alternative claim that even if SAND HILL ADVISORS were descriptive, such mark had gained secondary meaning. Summary judgment may be entered in a trademark action "when no genuine issue of material fact exists." Filing 1 MOTION for a Protective Order - filed by Yida Gao, Sand Hill Advisors PR LLC, Shima Capital Management LLC. An applicant nevertheless may seek to register a descriptive mark pursuant to section 2(f), which creates a presumption of distinctiveness (or "acquired distinctiveness"), where the applicant can establish at least five years of substantially exclusive and continuous use. If the PTO approves the registration under section 2(f), the presumption of validity conferred by the registration also "includes a presumption that the registered mark has acquired distinctiveness[.]" Lahoti, 586 F.3d at 1201. Nor is it disputed that Plaintiff does not engage in the sale, purchase or lease of any commercial properties. (Williams Depo. 0000013270 00000 n Jim Iuorio: The Fed will probably be dovish for a little longer. Thus, in a federal infringement action, the holder of the registered mark may rely on section 2(f) to show acquired distinctiveness (i.e., secondary meaning) as of the date of registration. In that case, plaintiff Instant Media alleged that its trademark "I'M" was infringed by defendant Microsoft's use of the mark "i'm." Plaintiff is a self-styled "wealth management" firm currently located in Menlo Park, California. The Court therefore addresses each prong of the test for service mark infringement to ascertain whether summary judgment is appropriate based on the record presented. Here, there is no dispute that Sand Hill can be construed to mean that Plaintiff is an advisory firm based in the Sand Hill areaand indeed, that name was selected by Plaintiff because they, in fact, were then located on Sand Hill Road. 92, Filing Subscribe to Justia's Free Newsletters featuring summaries of federal and state court opinions. Id. At Sand Hill, we have long-standing experience with RSUs, deferred compensation, and specialized tax IN SUPPORT OF MOTION TO COMPEL ARBITRATION, 7/8/2021: Declaration - DECLARATION OF ADAM B. 0000004889 00000 n See MSJ Order at 11-12, Dkt. 0 Ex. (Dhillon, Jas) (Filed on 1/29/2009) Modified on 1/30/2009 (jlm, COURT STAFF). Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Id. WebCompany profile page for Sand Hill Advisors Inc including stock price, company news, press releases, executives, board members, and contact information Assuming without deciding that Plaintiff's date of first use was March 25, 1995, Defendant has presented uncontroverted evidence demonstrating that it used the "Sand Hill Advisors" mark within five years of that date. YIDA GAO, ET AL. Shortly thereafter on November 17, 2008, Plaintiff sought to register "Sand Hill Advisors" as a service mark with the United States Patent and Trademark Office ("PTO"). 0000012780 00000 n STRUCK'S MOTION TO COMPEL ARBITRATION, 7/27/2021: Reply - REPLY REPLY MEMORANDUM IN SUPPORT OF ADAM B. STRUCKS MOTION TO COMPEL ARBITRATION, Hearing08/29/2023 at 08:30 AM in Department R at 1725 Main Street, Santa Monica, CA 90401; Status Conference, DocketUpdated -- Denis Shmidt (Attorney): Organization Name changed from Orsus Gate LLP to HARDER STONEROCK LLP, DocketNotice of Change of Firm Name; Filed by: Yida Gao (Plaintiff); Sand Hill Advisors, LLC (Plaintiff); Shima Capitol Management LLC, a Delaware Limited Liability Company (Cross-Defendant); Shima Capitol GP LLC, a Delaware Limited Liability Company (Cross-Defendant); New Firm Name: HARDER STONEROCK LLP, DocketNotice of Change of Address or Other Contact Information; Filed by: Amnon Siegel (Attorney), DocketAddress for Amnon Siegel (Attorney) updated. at 769, 112 S.Ct. [2] "[T]he only difference between a trademark and a service mark is that a trademark identifies goods while a service mark identifies services. 62-3. All Rights Reserved. 26, US District Court for the Northern District of California, 15:1125 Trademark Infringement (Lanham Act). There are three ways in which a plaintiff can establish that it has a protectable interest in a service mark or trademark: "(1) it has a federally registered mark in goods or services; (2) its mark is descriptive but has acquired a secondary meaning in the market; or (3) it has a suggestive mark, which is inherently distinctive and protectable." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. Neither party discusses the threshold question of whether section 2(f) is germane in an infringement case where the mark is unregistered. %%EOF at 27:13-23.) 1979). See One Indus., LLC v. Jim O'Neal Distrib., Inc., 578 F.3d 1154, 1164 (9th Cir.2009) ("When similar marks permeate the marketplace, the strength of the mark decreases. And so that was our address, but we felt it was an address that we wanted to trumpet. "Secondary meaning can be established in many ways, including (but not limited to) direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant." As noted, the "need test" measures the extent to which a mark is necessary for competitors to identify their goods and services. Sand Hill Global Advisors was founded in 1982 and is based in Palo Alto, California. THE KUHN FOUNDATION, A CALIFORNIA CORPORATION, ET AL. While that may have been one of Plaintiff's motivations, Defendant cites no authority to support the conclusion that such a desire is sufficient to justify the imposition of attorneys' fees under the Lanham Act. (Davidson Decl. Signed by Judge ARMSTRONG on at 1218-19. "); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir.2002) (internal quotation marks and citation omitted). As such, to survive summary judgment, a plaintiff is "required to come forward with enough evidence of secondary meaning to establish a genuine dispute of fact." This change was prompted by the decision of certain members of Plaintiff's management to reacquire equity from Boston Financial. 2753. Ex. (lrc, COURT STAFF) (Filed on 5/28/2009) Modified on 5/29/2009 (jlm, COURT STAFF). This is indicative of a descriptive mark. ORDER: That any oppositions shall be filed no later than 07/09/10; any reply shall be filed by 07/16/10. Plaintiff does not address, let alone dispute, Defendant's contention that neither party has evinced any intention to expand its business into the other's market. Aug. 13, 2007). J. at 16, Dkt. 636(b)(1)(B), (C); Fed.R.Civ.P. Defendant argues that Plaintiff lacked a reasonable basis for claiming that SAND HILL ADVISORS was suggestive or had acquired secondary meaning. 1983) (holding that the fact that plaintiff and defendant's respective products were used in the medical or health care field was insufficient to show that the goods were sufficiently similar to cause a likelihood of confusion). 28 U.S.C. As support for this proposition, Plaintiff cites this Court's decision in Instant Media, Inc. v. Microsoft Corp., 2007 WL 2318948 at *13 (N.D.Cal. 0000005571 00000 n 56, Filing (Opp'n at 14.) ), Defendant is a California limited liability company formed by business partners Bert Sandell and Albert Hill, Jr., located in Los Altos, California. Outside of work Brenda is a dedicated mother who loves spending time with her family and exploring all the Bay Area has to offer. WebVenture Capital. Com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 n. 3 (9th Cir.2000). 's Mot. Next, Plaintiff asserts that "Sand Hill" is suggestive ostensibly because it evokes qualities "associated with the Silicon Valley entrepreneurial community much like `Broadway' evokes qualities associated with New York's commercial theatre district and `Rodeo' evokes connotations of upscale shops in Beverly Hills." Defendant contends that Plaintiff's clients and those individuals likely to do business with Defendant are sophisticated, and hence, are unlikely to be confused. "In determining whether a mark has obtained secondary meaning, courts consider: (1) whether actual purchasers of the product bearing the mark associate the mark with the producer; (2) the degree and manner of advertising under the mark; (3) the length and manner of use of the mark; and (4) whether use of the mark has been exclusive." 4.) at 111:25-112:11 149:3-151:7.) 1976)). 3-5 b) of discussion of ADR options, filed by Sand Hill Advisors LLC (Miller, Katherine) (Filed on 1/28/2009) Modified on 1/29/2009 (jlm, COURT STAFF). (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H PART 1, # 9 Exhibit H PART 2, # 10 Exhibit H PART 3, # 11 Exhibit I, # 12 Exhibit J, # 13 Exhibit K, # 14 Exhibit L, # 15 Exhibit M, # 16 Exhibit N, # 17 Exhibit O, # 18 Exhibit P, # 19 Exhibit Q, # 20 Exhibit R, # 21 Exhibit S, # 22 Exhibit T, # 23 Exhibit U, # 24 Exhibit V)(Related document(s) 42 ) (Martin, James) (Filed on 12/11/2009) Modified on 12/14/2009 (jlm, COURT STAFF). WebThe Michigan Supreme Court is providing the information on this website as a public service. UniCourt uses cookies to improve your online experience, for more information please see our Privacy Policy. The record confirms that Plaintiff proffered evidence regarding it various marketing and promotional efforts using the SAND HILL ADVISORS name. As a result, Plaintiff changed its state of incorporation from California to Delaware. Defendant now moves this Court for a de novo determination of the Magistrate's recommendation, and requests that the Court grant its motion for attorneys' fees. The Court thus finds that this factor favors Defendant. % Service marks and trademarks are governed by identical standards." Chance v. Pac-Tel Teletrac Inc., 242 F.3d 1151, 1156 (9th Cir.2001). Modified on 12/23/2009 (feriab, COURT STAFF). Prior to March 25, 2000, Defendant was registered with the California Secretary of State under the *1117 "Sand Hill Advisors" mark, which it began using shortly thereafter. See Stephen W. Boney, 127 F.3d at 827 (finding that plaintiff had a "legitimate objective" in filing suit "to `preserve the right to use the name if and when I want to use it'"). endstream endobj 34 0 obj<> endobj 35 0 obj<> endobj 36 0 obj<>/Font<>/ProcSet[/PDF/Text]/ExtGState<>>> endobj 37 0 obj<> endobj 38 0 obj<> endobj 39 0 obj[/ICCBased 46 0 R] endobj 40 0 obj<> endobj 41 0 obj<> endobj 42 0 obj<> endobj 43 0 obj<>stream C The Ninth Circuit construes the "exceptional cases" requirement narrowly. In addition, the widespread use of "Sand Hill" by other businesses further weakens the "Sand Hill Advisors" mark. (Martin, James) (Filed on 1/22/2010) Modified on 1/25/2010 (jlm, COURT STAFF). 2007). NOTICE of Substitution of Counsel, filed by Sand Hill Advisors, LLC. 10 22 The court has the discretion under Lanham Act to award attorneys' fees to a prevailing party in "exceptional cases." Id. (af, COURT STAFF) (Filed on 3/5/2009) (Entered: 03/05/2009), STIPULATION AND PROTECTIVE ORDER. Answer; Filed by: Adam B. (Entered: 12/11/2009), Declaration of Katherine R. Miller in Support of 42 Memorandum in Opposition to Motion for Summary Judgment filed by Sand Hill Advisors LLC. (mejlc1, COURT STAFF) (Filed on 6/1/2010) Modified on 6/2/2010 (jlm, COURT STAFF). In addition, Defendant ignores the evidence proffered by Plaintiff, and cited by the Magistrate, that Plaintiff desired to protect the goodwill that it believed it had established by operating under the Sand Hill Advisors name. Such services include investment planning, retirement and estate planning and philanthropic strategies. (Martin, James) (Filed on 1/21/2010) Modified on 1/22/2010 (jlm, COURT STAFF). Astra Pharm. The Articles of Registration identify Defendant's "[t]ype of business" as follows: "To engage in any lawful business for which limited liability companies may be organized in California including real estate activities, finance and advisory services." The common use of an advertising medium (i.e., brochures and banners) is not probative of whether they are disseminated to the same audience. Def. Though ultimately concluding that such evidence was insufficient to establish a issue of fact regarding secondary meaning, the Court did not find that Plaintiff's position was groundless or baseless. 0000000860 00000 n 0000005191 00000 n CIV S-02-0704 FCD DAD, 2007 WL 988054 at *2 (E.D. Pretrial Conference set for 2/16/2010 01:00 PM.. 's Opp'n to Def. Id. 0000001817 00000 n See Brookfield Commc'ns, 174 F.3d at 1056 (likelihood of confusion resulting from the use of the same or similar mark was "remote" if the parties "did not compete" with one another); Dynamics Research Corp. v. Langenau Mfg. 31 0 obj<>stream 0000001201 00000 n The similarity of the marks, proximity of the goods or service and marketing channels used constitute "the controlling troika in the Sleekcraft analysis," GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir.2000), and are considered the most important, see Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1055 n. 16 (9th Cir.1999). (quoting Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 379 (7th Cir. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Exhibit H, # 9 Exhibit I, # 10 Exhibit J, # 11 Exhibit K, # 12 Exhibit L, # 13 Exhibit M, # 14 Exhibit N, # 15 Exhibit O, # 16 Exhibit P, # 17 Exhibit Q, # 18 Exhibit R)(Related document(s) 36 ) (Davidson, Rachel) (Filed on 11/19/2009) (Entered: 11/19/2009), MOTION for Summary Judgment filed by Sand Hill Advisors LLC. Art Attacks Ink, LLC, 581 F.3d at 1146 (affirming summary judgment for alleged infringer where plaintiff failed to produce any evidence to demonstrate that its advertising was effective). Despite Defendant's intimation to the contrary, the Court did not conclude that a mark is weakened by common use of terms comprising the mark only where the marks are identical. Defendant's business focuses on purchasing, holding, selling, managing and leasing commercial real estate in the San Francisco Bay Area solely for its own investment purposes. (Entered: 01/05/2009), ORDER REASSIGNING CASE. Def. Messrs. Sandell and Hill selected the name "Sand Hill" by combining the first four letters of Mr. Sandell's last name with Mr. Hill's last name. In addition to her role as CIO, Brenda serves as the chair of the Sand Hill Investment Committee and is a member of the Executive Committee, a small team charged with setting the firms long-term strategic course. WebCase No. <<22A12329BFF53A46B00346188163DD72>]>> Forschner, 30 F.3d at 355 (emphasis added). Struck (Defendant); Struck Capital Management, LLC (Defendant); Struck Capital Fund GP LLC (Defendant) et al. (McCaffrey Depo. "Convergent marketing channels increase the likelihood of confusion." (Related document(s) 48 ) (Davidson, Rachel) (Filed on 12/23/2009) Modified on 12/28/2009 (jlm, COURT STAFF). 61, 64, 84, 85 Defendant. at 89:9-12.) B, Williams Depo. (Id.). But for the bankers and credit union lenders who participated, PPP remains a high point of their careers. Accordingly, this factor weighs in favor of Defendant. The Court found that Instant Media's mark was "conceptually weak because the I'M mark exists in a crowded field of trademarks using variations of `IM,' `I'm' and `I am.'" (Opp'n at 17.) Though acknowledging that Defendant had used the SAND HILL ADVISORS mark sometime after its formation in 1999, Plaintiff argued that such use was insufficient to show "use in commerce" for trademark purposes. 33 0 obj <> endobj The amount of protection accorded to a particular mark is a function of its distinctiveness. (lrc, COURT STAFF) (Filed on 6/24/2010) Modified on 6/25/2010 (jlm, COURT STAFF). at 3. Her commentary begins at the 3:51 mark. See McSherry v. City of Long Beach, 584 F.3d 1129, 1138 (9th Cir.2009) ("Summary judgment requires facts, not simply unsupported denials or rank speculation"). We are experts in guiding wealthy families and individuals through complex financial transitions. Id. 0000010111 00000 n Cancellation and Refund Policy, Privacy Policy, and Even if section 2(f) were applicable, Plaintiff has failed to demonstrate the requisite five years of exclusive and continuous use. All Rights Reserved. (Opp'n at 13.) 0000001331 00000 n Sand Hill Advisors LLC: Defendant: Sand Hill Advisors LLC: Case Number: 4:2008cv05016: Filed: November 4, 2008: Court: US District Court for the Northern District The following documents for this case are available for you to view or download: Use the links below to access additional information about this case on the US Court's PACER system.
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