Federal District Court Opinions

ALBERTO-CULVER CO. v. TREVIVE, INC., (C.D.Cal. 2002) 199 F. Supp.2d 1004 ALBERTO-CULVER CO., a Delaware Corporation, v. TREVIVE, INC., a California Corporation, Defendant. No. CV 01-5336-RC. United States District Court, C.D. California. May 7, 2002. West Page 1005

Charles R. Mandly, Wildman, Harrold, Allen & Dixon, Chicago, IL, for plaintiff.

Dennis G. Martin, Willmore F. Holbrow, Blakely, Sokoloff, Taylor & Zafman, Los Angeles, CA, for defendant.

MEMORANDUM DECISION AND ORDER

CHAPMAN, United States Magistrate Judge.

On January 22, 2002, plaintiff Alberto-Culver Co. filed a
notice of motion and motion for summary judgment,[fn1] with
supporting memorandum of points and authorities and
declaration of Nathan E. Ferguson (with exhibits), a
statement of uncontroverted facts and conclusions of laws,
and a proposed order. Plaintiff claims that as a result of
prior litigation West Page 1006 between the parties
before the Trademark Trial and Appeal Board (“Board”) of
the Patent and Trademark Office (“PTO”), see Alberto-Culver
Co. v. Han Beauty, Inc., 1999 WL 1004627 (Trademark Tr. &
App. Bd.), and Federal Circuit Court of Appeals, Han
Beauty, Inc., v. Alberto-Culver Co., 236 F.3d 1333 (Fed.
Cir. 2001), defendant Trevive, Inc., should be collaterally
estopped from relitigating the issues of plaintiffs
ownership of its TRES-family of marks for hair care products
and whether defendant’s use of its TREVIVE trade name for
hair care products results in a likelihood of confusion in
violation of plaintiffs rights. The plaintiff, therefore,
requests this Court enter partial summary judgment in its
favor, and permanently enjoin defendant from using the
TREVIVE mark.

On March 6, 2002, defendant filed its memorandum of points
and authorities in opposition to plaintiffs summary
judgment motion, a statement of genuine issues of material
fact in opposition to plaintiffs motion, the supporting
declarations of Willmore F. Holbrow, Steve Han, Mary
Goodstein and Dr. Itamar Simonson,[fn2] and an appendix of
exhibits. Defendant contends that collateral estoppel does
not apply to this action.

On March 20, 2002, plaintiff filed a reply memorandum, with
the supporting declaration of Mike Yaghmai.

Oral argument was held on April 22, 2002, before Magistrate
Judge Rosalyn M. Chapman. Charles R. Mandly,
attorney-at-law, appeared on behalf of plaintiff, and
Dennis G. Martin and William F. Holbrow, attorneys-at-law,
appeared on behalf of defendant.

BACKGROUND

I

On June 15, 2001, plaintiff Alberto-Culver Co., a Delaware
corporation, filed a complaint against Trevive, Inc., a
California corporation, setting forth five causes of
action: (1) trademark infringement, in violation of 15
U.S.C. § 1114; (2) false designation of origin, in
violation of 15 U.S.C. § 1125 (a); (3) unfair
competition and dilution, in violation of 15 U.S.C. §
1125 (c); (4) trademark dilution, in violation of
California Business & Professions Code (“Cal. Bus. & Prof.
C.”) §§ 14330, et seq.; and (5) unfair
competition and deceptive trade practices, in violation of
Cal. Bus. & Prof. C. §§ 17200, et seq.[fn3]
Plaintiff seeks injunctive relief, an accounting,
compensatory damages, punitive damages, treble damages,
attorney’s fees and costs. The gravamen of plaintiffs
complaint is that defendant markets and sells hair care
products under the trade name TREVIVE, with the knowledge
of plaintiffs registered TRES-family of marks for hair care
products and without the consent or West Page 1007
authorization of plaintiff. The defendant answered the
complaint on August 8, 2001, and raised five affirmative
defenses.

II

On May 3, 1994, Han Beauty, Inc., filed an application
(serial no. 74/519,598) with the PTO to register a
trademark for “TREVIVE NUTRIENTS FOR LIFE OF YOUR HAIR.”
Alberto-Culver Co., 1999 WL 1004627 at *1 n. 1. The
registration was subsequently assigned to the defendant,
Trevive, Inc. Id.; see also Ferguson Decl., Exh. 1 at
141-42. On October 10, 1995, plaintiff filed a Notice of
Opposition to the trademark registration under 15 U.S.C.
§ 1052 (d), arguing that “[u]se by applicant of the
mark TREVIVE and Design for hair shampoo, hair
conditioning, hair gel, and hair spray is likely to cause
confusion, mistake, or deception with each of opposer’s
TRES-trademarks or in the belief that applicant or its
TREVIVE and Design products are in some way legitimately
connected with, or licensed or approved by, opposer.”
Ferguson Decl., Exh. 1 at 13-15.

The parties then conducted discovery and presented evidence
to the Board, which, on November 10, 1999, sustained
plaintiffs opposition and denied registration of the
disputed trademark. Alberto-Culver Co., 1999 WL 1004627 at
*1-4 The defendant appealed the Board’s decision to the
Federal Circuit Court of Appeals, which affirmed the Board’s
decision. Han Beauty, Inc., 236 F.3d at 1334-38.

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