United States District Court, D. Nevada
GRANTINGMOTIONTOFILE SURREPLY (ECF NOS. 80, 106)
P. GORDON, UNITED STATES DISTRICT JUDGE.
Baskim Holdings, Inc. filed this lawsuit against defendants
Two M, Inc. and Omar Aldabbagh, alleging the defendants
infringed Baskim's trademarks related to Babe's
Cabaret. The defendants move for summary judgment, arguing
Baskim lacks standing to bring its trademark claims because
it did not own the trademarks at the time this lawsuit was
initiated, and a March 2017 nunc pro tunc assignment
cannot retroactively confer standing on Baskim. The
defendants also argue Baskim procured its
federally-registered marks through fraud by falsely
representing to the United States Patent and Trademark Office
(USPTO) that Baskim had used the marks since 2005 when Baskim
was not even formed until 2009. Finally, they contend that
Baskim could not have used the trademark before the
defendants did because Baskim did not exist until 2009 and
Baskim did not obtain the rights to the Babe's marks
until the March 2017 assignment.
responds that it obtained the trademark rights through a 2009
oral assignment that pre-dates the marks' federal
registrations. Baskim contends it has standing because oral
assignments of unregistered marks are valid. Baskim argues
that the assignor used the mark starting in 2005, so
Baskim's statements to the USPTO that it or its
predecessors had used the marks since 2005 were truthful.
Finally, Baskim asserts that for these same reasons, its use
predates the defendants' use because Baskim steps into
the shoes of its assignor.
the defendants' motion because they have not shown as a
matter of law that Baskim lacks standing or committed a fraud
on the USPTO. Additionally, because Baskim as assignee steps
into the shoes of its assignor, the defendants also have not
shown as a matter of law that their use of the Babe's
marks pre-dates Baskim's.
2005, non-party RMDR Investments, Inc. began operating a
strip club called Babe's Cabaret in New Orleans,
Louisiana. ECF No. 44-1 at 3. RMDR continuously used the
Babe's Cabaret mark until 2009, when RMDR was sold to the
same individuals who formed and own Baskim. Id.; ECF
Nos. 80 at 24; 99-2 at 3-4. Baskim was formed to hold the
Babe's Cabaret intellectual property, and according to
Baskim's president, Charles Bass, RMDR orally assigned
its rights in the Babe's Cabaret name to Baskim. ECF Nos.
44-1 at 3; 80 at 24; 99-2 at 3-4. Baskim then licensed use of
the Babe's name back to RMDR. ECF No. 44-1 at 3.
Following the 2009 oral assignment, Baskim has licensed the
Babe's marks to other strip clubs, including one in Texas
and another in New Jersey. ECF No. 44-1 at 5.
February 2015, Baskim filed applications with the USPTO to
register the “Babe's Cabaret, ”
“Babe's NOLA, ” “Babe's NOLA
Cabaret, ” and “Babe's Cabaret NOLA”
marks in connection with exotic dancing. Id. at 4-5;
ECF No. 80 at 43, 61. In its application for the Babe's
Cabaret mark, Baskim represented to the USPTO that “the
mark was first used by the applicant or the applicant's
related company or licensee predecessor in interest at least
as early as 11/28/2005.” ECF No. 99-1 at 5. All four
applications were granted. ECF No. 44-1 at 4-5.
filed this lawsuit on August 10, 2016, alleging that the
defendants infringed on the Babe's marks by operating
“Babe's Cabaret, ” a strip club in Las Vegas.
ECF No. 1. In March 2017, Baskim and RMDR entered into a
written “nunc pro tunc agreement of mark,
” by which RMDR assigned its rights in the Babe's
marks, including all associated goodwill and rights to sue
for past and future infringement, “nunc pro
tunc effective as of November 28, 2005.” ECF No.
80 at 58. This is the only written assignment between RMDR
and Baskim regarding the Babe's marks.
judgment is appropriate if the movant shows “there is
no genuine dispute as to any material fact and the movant is
entitled to judgment as a matter of law.” Fed.R.Civ.P.
56(a), (c). A fact is material if it “might affect the
outcome of the suit under the governing law.”
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(1986). An issue is genuine if “the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party.” Id.
party seeking summary judgment bears the initial burden of
informing the court of the basis for its motion and
identifying those portions of the record that demonstrate the
absence of a genuine issue of material fact. Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986). The burden
then shifts to the non-moving party to set forth specific
facts demonstrating there is a genuine issue of material fact
for trial. Fairbank v. Wunderman Cato Johnson, 212
F.3d 528, 531 (9th Cir. 2000). I view the evidence and
reasonable inferences in the light most favorable to the
non-moving party. James River Ins. Co. v. Hebert Schenk,
P.C., 523 F.3d 915, 920 (9th Cir. 2008).
establish standing to sue for trademark infringement under
the Lanham Act, a plaintiff must show that he or she is
either (1) the owner of a federal mark registration, (2) the
owner of an unregistered mark, or (3) a nonowner with a
cognizable interest in the allegedly infringed
trademark.” Halicki Films, LLC v. Sanderson Sales
& Mktg., 547 F.3d 1213, 1225 (9th Cir. 2008). Baskim
owns federally registered marks and asserts rights in
unregistered marks as well. The question is whether Baskim
lacks standing because it did not have a written assignment
of those rights until after this suit was filed.
are assignable. Russell Rd. Food & Beverage, LLC v.
Spencer, 829 F.3d 1152, 1156 (9th Cir. 2016) (citing 15
U.S.C. § 1060(a)(1) (“A registered mark . . .
shall be assignable . . . .”)). Under the Lanham Act,
assignments of federally registered marks must be in writing.
15 U.S.C. § 1060(a)(3) (“Assignments shall be by
instruments in writing duly executed . . . .”).
However, common law trademark rights may be assigned orally.
See Taylor v. Thomas, 624 F. App'x 322, 326 (6th
Cir. 2015) (“When, as here, an assignment is not in
writing, the plaintiff can prove an implied agreement to
transfer with strong evidence of conduct manifesting
agreement.” (quotation omitted)); Doeblers' Pa.
Hybrids, Inc. v. Doebler, 442 F.3d 812, 822 (3d Cir.
2006), as amended (May 5, 2006) (“Even if a
writing is lacking, an assignment may be proven . . . by the
clear and uncontradicted oral testimony of a person in a
position to have actual knowledge.”); TMT N. Am.,
Inc. v. Magic Touch GmbH, 124 ...