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AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979). Thus, the Court concludes that "Sand Hill Advisors" is primarily geographically descriptive. As a result, Plaintiff changed its state of incorporation from California to Delaware. 2.) at 12, Dkt. Inc., 287 F.3d 866, 871 (9th Cir.2002) (use of "Japan" in "Japan Telecom, Inc." did not "automatically make the trade name geographically descriptive"); Forschner Group, 30 F.3d at 355 ("That a phrase or term evokes geographic associations does not, standing alone, support a finding of geographic descriptiveness."). (Conway Depo. (lrc, COURT STAFF) (Filed on 6/24/2010) Modified on 6/25/2010 (jlm, COURT STAFF). 4 and Ex. And so that was our address, but we felt it was an address that we wanted to trumpet. 0000004889 00000 n Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. In addition, the Court may consider further evidence or remand the matter to the magistrate judge with instructions. Contact Email [email protected]. Filing 1 MOTION for a Protective Order - filed by Yida Gao, Sand Hill Advisors PR LLC, Shima Capital Management LLC. Typically, Defendant purchases commercial property, which it then assigns to another limited liability company or entity owned by Messrs. Sandell and Hill. In that case, plaintiff Rodeo Collection, Inc., held several registered services marks for the mark "Rodeo Collection," which it used in connection with providing shopping center services. K.) Where the market is inundated by products using the particular trademarked word, there is a corresponding likelihood that consumers "will not likely be confused by any two in the crowd." 31 0 obj<>stream Brenda Vingiello is a Chief Investment Officer at Sand Hill Global Advisors based in Palo Alto, California. To reflect this change, Plaintiff then sought to change its name from "Sand Hill Advisors, Inc." to "Sand Hill Advisors, LLC." On September 3, 2009, the PTO rejected Plaintiff's application on the basis that "Sand Hill" is "primarily geographically descriptive" under 15 U.S.C. "An expert survey of purchasers can provide the most persuasive evidence of secondary meaning." Id. 0000013270 00000 n <<22A12329BFF53A46B00346188163DD72>]>> at 24:1-12 ("at the time we were located on Sand Hill Road. United States District Court, N.D. California, Oakland Division.https://leagle.com/images/logo.png. PLEASE SEE DOCKET # 51 . WebCase No. Case reassigned to Hon. The Ninth Circuit has established eight factors that are relevant to this determination: (1) the strength of the plaintiff's mark; (2) proximity of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods or services and the degree of care likely to be used by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. As set forth in the Court's summary judgment order, Defendant raised a number of potentially viable arguments to show that its mark is suggestive, notwithstanding Plaintiff's acknowledgement. (Conway Depo. Neither party discusses the threshold question of whether section 2(f) is germane in an infringement case where the mark is unregistered. at 67:24-68:3; Williams Decl. Signed by Judge Saundra Brown Armstrong, on 1/26/10. 85. Magistrate Judge Wayne D. Brazil no longer assigned to the case. ), According to its founders, they changed the firm name to "Sand Hill Advisors" because of recent developments in its business and accompanying desire to no longer use individual's names to identify the firm. Saundra Brown Armstrong for all further proceedings. (Mot. (Opp'n at 16-17.) at 3. Plaintiff's desire to protect such interests is a legitimate one. xref Why is this public record being published online? C.) In March 1999, Conway, Williams & Foster, Inc., again changed its name to Sand Hill Advisors, Inc. (Id. Ex. 92, Filing Signed by Judge Maria-Elena James on 4/5/2010. [2] Registration of a mark is prima facie evidence of its validity, as well as its owner's entitlement to use the mark exclusively as specified in the registration. (Entered: 12/15/2008), Declination to Proceed Before a U.S. Magistrate Judge by Sand Hill Advisors LLC. See, e.g., Williams Decl. 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. WebSAND HILL ADVISORS, LLC, a Delaware limited liability company, Plaintiff, v. SAND HILL ADVISORS, LLC, a California limited liability company, Dkt. Not true. The district court must review de novo "those portions of the report or specified proposed findings or recommendations to which objection is made." Thus, despite Defendant's protestations the contrary, Mr. Conway's deposition testimony does not show that Plaintiff "knew" that it lacked a protectable mark. 2007). After Defendant announced plans to open a shopping center in downtown Los Angeles under the name "The Collection," plaintiff filed suit for federal service mark infringement. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E)(Related document(s) 36 ) (Davidson, Rachel) (Filed on 11/19/2009) (Entered: 11/19/2009), Declaration of Rachel R. Davidson in Support of 36 MOTION for Summary Judgment filed bySand Hill Advisors LLC. 0000005059 00000 n On appeal, the court addressed, among other things, the strength of the mark "Rodeo Collection." However, evidence of secondary meaning must be established as of the time that the alleged infringer began using the mark in dispute. Id. REPORT AND RECOMMENDATIONS re 61 MOTION for Attorney Fees filed by Sand Hill Advisors LLC Objections to R&R due by 6/15/2010. (Davidson Decl. Seeing developments that could cause 5% pullback: Sand Hill Global Advisors CIO. Yet, there is no evidence to support Plaintiff's assertion that "Sand Hill" evokes an "entrepreneurial" spirit. 61, 64, 84, 85 Defendant. For these reasons, Plaintiff's Objections to Defendant's Evidence Offered in Support of Defendant's Motion for Summary Judgment (Docket 45) are denied as moot. But for the bankers and credit union lenders who participated, PPP remains a high point of their careers. 0000002396 00000 n Please take note that plaintiff's counsel initiates the call to all parties. 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." Plaintiff is a self-styled "wealth management" firm currently located in Menlo Park, California. And the best part of all, documents in their CrowdSourced Library are FREE! The record confirms that within five years of Plaintiff alleged date of first use, Defendant used the "Sand Hill Advisors" mark on its letterhead, and transacted business and publicized itself in newspapers and other media under that name. 2.) Sand Hill Global Advisors (SHGA) has taken out a government-backed coronavirus relief loan, the $2.7bn RIA disclosed in a recent Form ADV update. As noted, the "need test" measures the extent to which a mark is necessary for competitors to identify their goods and services. In re Sand Hill Exchange, et al. Plaintiff nonetheless insists that "Sand Hill," when combined with "Advisors," is suggestive, as opposed to descriptive. (Hill Decl. See Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384, 393 (2d Cir. trailer (Entered: 02/26/2009), ADR Clerks Notice Appointing James Gilliland as Mediator. Ex. Plaintiff attempts to analogize this case to Rodeo Collection, and argues that "Sand Hill Advisors" is suggestive, and not primarily geographically descriptive as claimed by Defendant. (Entered: 12/22/2009), Proposed Order re 36 Motion for Summary Judgment by Sand Hill Advisors LLC. Access the Case Summary and Docket Report to access additional information about this case on the US Court's PACER system. The mere fact that a mark references a geographic location does not ipso facto lead to the conclusion that the mark is descriptive. D.) At the time of the most recent name change, Plaintiff was located at 3000 Sand Hill Road in Menlo Park, California, which is part of what is commonly referred to as the "Silicon Valley." for Attorneys' Fees ("R&R"), Dkt. A case is not exceptional simply because the court granted summary judgment; otherwise, every Lanham Act case in which a summary judgment motion was granted would be considered an "exceptional" case. Save 25% on a pre-paid one year subscription. Indeed, Mr. Conway admitted that Defendant is not a competitor of Plaintiff. Co., Inc., 870 F.2d 512, 517 (9th Cir. Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. C 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. Plaintiff summarily asserts that "there is no need for other wealth management firms to use `Sand Hill Advisors' in describing or advertising their services." *1122 IT IS HEREBY ORDERED THAT Defendant's Motion for Summary Judgment (Docket 36) is GRANTED. Signed by Judge ARMSTRONG on 2/20/09. Yellow Cab Co. of Sacramento v. Yellow Cab Co. of Elk Grove, Inc., No. As such, other advisory companies are more likely to refer to "Sand Hill" and "Advisors" in describing or advertising their services. In Support Of Motion To Compel Arbitration: Name Extension changed from OF FRANK D. RORIE JR. Id. Plaintiff argues that its provision of real estate investment advice overlaps with Defendant's business. 57. 636(b)(1); see Fed.R.Civ.P 72(b). v. 78(b); N.D. Cal. 0000000736 00000 n She testified that such mark was chosen because of its geographical reference, since they worked and lived in that area, and were active in the community. Struck (Defendant); Struck Capital Management, LLC (Defendant); Struck Capital Fund GP LLC (Defendant) et al. at 51:6-52:14; Williams Decl. (Court Reporter: Not Reported) (jlsec, COURT STAFF) (Date Filed: 1/13/2010) Modified on 1/15/2010 (jlm, COURT STAFF). In certain cases, "[e]vidence of use and advertising over a substantial period of time is enough to establish secondary meaning." (lrc, COURT STAFF) (Filed on 9/20/2010) Modified on 9/21/2010 (kc, COURT STAFF). Defendant is therefore entitled to summary judgment on this basis. 1348, 89 L.Ed.2d 538 (1986). (Dhillon, Jas) (Filed on 1/29/2009) Modified on 1/30/2009 (jlm, COURT STAFF). Sand Hill, which caters primarily to high-net-worth individuals in Northern California, has $900 million of assets under management. Cons Only location is in downtown Palo Alto, not in the hub of the city or on the legendary Sand Hill Road. (Opp'n at 19.) E, F, H, K, L; Williams Depo. Struck (Defendant); As to: Yida Gao (Plaintiff); Sand Hill Advisors, LLC (Plaintiff); Shima Capitol LLC, a Delaware Limited Liability Company (Cross-Defendant) et al. C at 80:1-82:9, Dkt. Entrepreneur Media, 279 F.3d at 1148. 84. 's Mot. Inc. v. US Agency Intern. (Miller Decl. Accordingly, this factor weighs in favor of Defendant. (Miller, Katherine) (Filed on 2/3/2009) Modified on 2/4/2009 (jlm, COURT STAFF). A subscription to PACER is required. Defendant next argues that Plaintiff lacked any objective basis upon which to claim that SAND HILL ADVISORS is a suggestive mark entitled to protection under the Lanham Act. The `need test' focuses on the extent to which a mark is actually needed by competitors to identify their goods or services." 0000000596 00000 n ORDER by Judge Saundra Brown Armstrong GRANTING 35 Ex Parte Motion to Move the Hearing Date for Defendant's Motion for Summary Judgment and Setting Hearing on Motion For Summary Judgment to 1/12/2010 at 01:00 PM. Id. startxref 0000001296 00000 n The deal is expected to close in July or August, said Walter M. Pressey, Boston Private Financial's chief financial officer. 's Mot. (Davidson, Rachel) (Filed on 12/22/2009) Modified on 12/23/2009 (jlm, COURT STAFF). Sand Hill Advisors LLC v. Sand Hill Advisors LLC. The Court, in its discretion, finds this matter suitable for resolution without oral argument. To request information suppression, updates, or additions, contact us about this docket. Signed by Magistrate Judge Elizabeth D. Laporte, on February 26, 2009. Declaration of Albert R. Hill, Jr. in Support of 36 MOTION for Summary Judgment filed bySand Hill Advisors LLC. The greater the similarity between the two marks at issue, the greater the likelihood of confusion. "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." Broadly speaking, suggestive, arbitrary and fanciful marks are entitled to protection, whereas a descriptive mark is not unless it has acquired distinctiveness through secondary meaning. As the Magistrate correctly found, Mr. Conway merely stated that he recalled having raised the issue of seeking trademark protection with co-founder Jane Williams and the company's outside counsel. Ex. This is particularly true where the good or service is expensive. 1989); Grupo Gigante SA De CV v. Dallo & Co., Inc., 391 F.3d 1088, 1107 n. 1 (9th Cir.2004). Co-founder Jane Williams similarly confirmed the geographical significance of "Sand Hill." Plaintiff argues that this factor is germane only where the marks are different, and inapposite in cases such as the present where the marks are identical. In a trademark infringement action, Plaintiff bears the burden of establishing that the defendant use of the same or similar mark is likely to cause confusion based upon consideration of the factors set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 448-49 (9th Cir. In general, 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." NOTICE OF REFERENCE AND ORDER SCHEDULING HEARING: Hearing set for 04/08/2010 at 10:00 AM, re 61 Motion for Attorney Fees. 2505, 91 L.Ed.2d 202 (1986). The fact that the Court concluded that the Sleekcraft factors supported Defendant's position does not render Plaintiff's claim groundless or unreasonable. We worked in that area. [1] Plaintiff objects to the declaration of Albert Hill on the ground that he did not sign it under penalty of perjury.