He further stated that the location of Plaintiff's business "was very much part and parcel" to its decision to adopt "Sand Hill Advisors" as its name. (mejlc1, COURT STAFF) (Filed on 6/1/2010) Modified on 6/2/2010 (jlm, COURT STAFF). (lrc, COURT STAFF) (Filed on 6/24/2010) Modified on 6/25/2010 (jlm, COURT STAFF). The firm is the successor-in-interest to CLW Financial Services, Inc., a company founded in 1982 by Jane Williams, Gary Conway and Joseph Luongo. Civil Case Cover Sheet; Filed by: Yida Gao (Plaintiff); Sand Hill Advisors, LLC (Plaintiff); As to: Adam B. Given that Plaintiff and Defendant used the same mark in the same general geographical area, Plaintiff's position that the parties' simultaneous use of the SAND HILL ADVISORS mark was likely to cause confusion was certainly arguable. 0000005059 00000 n In Support Of Motion To Compel Arbitration: Name Extension changed from OF FRANK D. RORIE JR. In addition, the Court may consider further evidence or remand the matter to the magistrate judge with instructions. 33 0 obj <> endobj Defendant contends that Plaintiff filed this lawsuit in bad faith, ostensibly because it pursued the action knowing that it had no protectable mark. According to Defendant, Plaintiff supposedly knew that it had no protectable mark because it did not seek to register its mark with the United States Patent and Trademark Office until 2008, even though it had been using the SAND HILL ADVISORS mark since 1995. 2753. VS ADAM B. 4.) B, Williams Depo. Plaintiff's desire to protect such interests is a legitimate one. <<4841BC4BF8452A4DA9F87B341F4BADE3>]>> As support, Plaintiff relies on Rodeo Collection Ltd. v. W. Seventh, 812 F.2d 1215 (9th Cir.1987). That leaves "descriptive" marks, which are not considered inherently distinctive because *1113 they define a particular characteristic of a product in a way that does not require any exercise of the imagination. (cjl, COURT STAFF) (Filed on 11/4/2008) (Entered: 11/06/2008), COMPLAINT against Sand Hill Advisors LLC (Filing fee $350, receipt number 34611025084). Defendant contends that Plaintiff's clients and those individuals likely to do business with Defendant are sophisticated, and hence, are unlikely to be confused. (Entered: 12/22/2009), Proposed Order re 36 Motion for Summary Judgment by Sand Hill Advisors LLC. J. (McCaffrey Depo. 58, Filing See Japan Telecom, Inc. v. Japan Telecom Am. The recommendation of the Magistrate is ADOPTED and Defendant's Motion for Attorneys' Fees is DENIED. See Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1076 (9th Cir.2006). As for the issue of whether Plaintiff could establish the requisite five years of continuous and exclusive use, the Court finds that Defendant raised a colorable argument in support of such a claim. 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. Access this case on the California Northern District Court's Electronic Court Filings (ECF) System. (Entered: 01/22/2010), STIPULATION and Proposed Order re Pretrial Schedule, by Sand Hill Advisors LLC. 88, Filing 2009) (internal quotation marks and citation omitted) (emphasis added). Related services are generally more likely than unrelated services to confuse the public as to the provider of the services. The deal is expected to close in July or August, said Walter M. Pressey, Boston Private Financial's chief financial officer. at 207:11-19.) 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." (lrc, COURT STAFF) (Filed on 1/5/2009) Modified on 1/6/2009 (jlm, COURT STAFF). Co-founder Jane Williams similarly confirmed the geographical significance of "Sand Hill." (Opp'n at 14.) 78(b); N.D. Cal. "Marks are often classified in categories of generally increasing distinctiveness; . (Entered: 01/30/2009), JOINT CASE MANAGEMENT STATEMENT and Proposed Order, filed by Sand Hill Advisors LLC., Sand Hill Advisors LLC. A subscription to PACER is required. (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. The `need test' focuses on the extent to which a mark is actually needed by competitors to identify their goods or services." Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. As an initial matter, Defendant argues that since Plaintiff's founders acknowledged choosing SAND HILL ADVISORS because of its geographical significance, i.e., the company's then new location on Sand Hill Road in the heart of the Silicon Valley, Plaintiff was foreclosed from arguing that the SAND HILL ADVISORS mark was anything other than descriptive. SAND HILL ADVISORS LLC, a Delaware limited liability company: Defendant - Appellee,: SAND HILL ADVISORS LLC, a California limited liability company: Case Number: at 111:25-112:11 149:3-151:7.) Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1196 (9th Cir.2009). 2004) ("Is the mark the name of the place or region from which the goods actually come? Indus. 61, 64, 84, 85 Defendant. See MSJ Order at 13-14, Dkt. See Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 870 (8th Cir.1994) (plaintiff could not rely on presumption of secondary meaning where it alleged that defendant infringed in 1985, but the mark was not registered until 1988); 2 McCarthy 11:13 ("The presumption to which a 2(f) registration is entitled is not that the designation is inherently distinctive, but that it had acquired secondary meaning as of the date of registration.") 2021-11-08. For reprint and licensing requests for this article, Swift works to bridge 'digital islands' of CBDCs, 20 bank holding companies with the largest consumer loan portfolios, Bank runs, fraud and faster payments: FedNow's impact on regulation, JPMorgan Chase, FDIC put an end to First Republic's slow bleed, Conflating issues or missing the point? BOSTON - Boston Private Financial Holdings Inc. said Monday that it had agreed to acquire Sand Hill Advisors Inc., an investment advisory firm in Menlo Park, Calif., for about $16 million. 0000000016 00000 n 15 U.S.C. (Id. The record confirms that Plaintiff proffered evidence regarding it various marketing and promotional efforts using the SAND HILL ADVISORS name. Co., Inc. v. Enco Mfg. *1109 Rachel R. Davidson of K & L Gates, LLP for Defendant, Sand Hill Advisors. But it also presents new risks to manage. 0000002396 00000 n trailer The greater the similarity between the two marks at issue, the greater the likelihood of confusion. UniCourt uses cookies to improve your online experience, for more information please see our Privacy Policy. Defendant argues that "Sand Hill Advisors" is a "primarily geographical descriptive" mark lacking any secondary meaning, and hence, is not subject to protection. 1117(a). 42. at 24:1-14.) Sleekcraft, 599 F.2d at 353. ), 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. Commack Self-Service Kosher Meats, Inc. v. Hooker, Cunney v. Bd. at 80:15, 81:21-22. These undisputed facts demonstrate the undeniably geographic significance of the "Sand Hill Advisors" mark. Alternatively, the Court concluded that even if 2(f) were germane, Plaintiff had failed to demonstrate the requisite five years of exclusive and continuous use. 0000001331 00000 n Viewing the record in a light most favorable to Plaintiff, the Court finds that no reasonable jury could find that the parties' common use of the "Sand Hill Mark" is sufficient to create a likelihood of confusion. (lrc, COURT STAFF) (Filed on 9/20/2010) Modified on 9/21/2010 (kc, COURT STAFF). Sand Hill Advisors LLC v. Sand Hill Advisors LLC, Filing Under that standard, the Court is persuaded that "Sand Hill Advisors" means exactly what it says: It describes a geographic location where Plaintiff offers advisory services. On appeal, the court addressed, among other things, the strength of the mark "Rodeo Collection." Def. 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." Status Conference re: Arbitration scheduled for 08/29/2023 at 08:30 AM in Santa Monica Courthouse at Department R, Pursuant to the request of plaintiff, Status Conference re: Arbitration scheduled for 10/04/2022 at 08:30 AM in Santa Monica Courthouse at Department R Held - Continued was rescheduled to 08/29/2023 08:30 AM, Minute Order (Status Conference re: Arbitration), Updated -- Declaration Of Frank D. Rorie JR. 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'"). In that case, plaintiff Instant Media alleged that its trademark "I'M" was infringed by defendant Microsoft's use of the mark "i'm." DocketStatus Conference re: Arbitration scheduled for 08/29/2023 at 08:30 AM in Santa Monica Courthouse at Department R, DocketPursuant to the request of plaintiff, Status Conference re: Arbitration scheduled for 10/04/2022 at 08:30 AM in Santa Monica Courthouse at Department R Held - Continued was rescheduled to 08/29/2023 08:30 AM, DocketMinute Order (Status Conference re: Arbitration), DocketUpdated -- Declaration Of Frank D. Rorie JR. 0000002907 00000 n Unlike Plaintiff, Defendant does not provide any advice to any third party, and has no involvement in providing wealth management services. SAND HILL ADVISORS, LLC, a Delaware limited liability company, Plaintiff, at 7-10.) SAND HILL ADVISORS, LLC, a California limited liability company, Dkt. 0000000736 00000 n Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). "The two tests are related because `[t]he more imagination that is required to associate a mark with a product [or service,] the less likely the words used will be needed by competitors to describe their products [or services].'" Citations are also linked in the body of the Featured Case. Listed below are those cases in which this Featured Case is cited. Id. Def. (Id.). ), In 2000, Plaintiff changed its state of incorporation from California to Delaware, for reasons which were related to the acquisition of Plaintiff by Boston Private Financial Holdings ("Boston Private"). (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. "While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion." 2505 (internal citations omitted). Banks react to Fed report. ANE Holdings, LLC et al. WebCase No. Gracie v. Gracie, 217 F.3d 1060, 1071 (9th Cir. Feb 28, 2023 CNBC Halftime Report: Rising Interest Rates on Valuation Multiples | February 10, 2023 for Summ. 02:50. STRUCK IN SUPPORT OF MOTION TO COMPEL ARBITRATION, 7/8/2021: Memorandum of Points & Authorities, 7/21/2021: Declaration - DECLARATION OF DENIS SHMIDT IN SUPPORT OF PLAINTIFFS AND CROSS-DEFENDANTS' OPPOSITION TO DEFENDANT AND CROSS-COMPLAINANT ADAM B. 2004). Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. In its motion, Defendant contends that Plaintiff cannot demonstrate that "Sand Hill Advisors" is a protectable mark or that Defendant's use of the mark is likely to confuse the public. 0000004984 00000 n Entrepreneur Media, 279 F.3d at 1144. 10 0 obj <> endobj 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. (Martin, James) (Filed on 12/11/2009) Modified on 12/14/2009 (jlm, COURT STAFF). Within fourteen days of service of the proposed findings and recommendations, "any party may serve and file written objections to such proposed findings and recommendations as provided by rules of court." STRUCK'S MOTION TO COMPEL ARBITRATION, Reply - REPLY REPLY MEMORANDUM IN SUPPORT OF ADAM B. STRUCKS MOTION TO COMPEL ARBITRATION, Cases involving other agreements or torts not classified elsewhere, 190, 1190, 2190, 3190, 4190, 4194, 5190, 5196. At the conclusion of the hearing, the Court took the matter under submission. Modified on 12/23/2009 (feriab, COURT STAFF). Previously, Brenda was an Emeritus Boa rd Member at Boys & Girls Clubs of America and also held positions at CFA Society San Francisco, S&P Global. Cons Only location is in downtown Palo Alto, not in the hub of the city or on the legendary Sand Hill Road. 26, US District Court for the Northern District of California, 15:1125 Trademark Infringement (Lanham Act). Brenda Vingiello is a Chief Investment Officer at Sand Hill Global Advisors based in Palo Alto, California. (Williams Depo. WebDefendant Sand Hill Advisors LLCs stipulation to amend its Answer to assert additional Affirmative Defenses challenging Plaintiffs legal capacity and standing to bring its %PDF-1.3 at 1219. F, Hill Depo. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia. The moving party bears the initial burden of demonstrating the basis for the motion and identifying the portions of the pleadings, depositions, answers to interrogatories, affidavits, and admissions on file that establish the absence of a triable issue of material fact. Applied Info. Id. Ex. at 27:13-23 ("[W]e had been located at Sand Hill Road and actually were a very active part of the community around that area. 3-5.) In Support Of Motion To Compel Arbitration: Name Extension changed from OF FRANK D. RORIE JR. THE KUHN FOUNDATION, A CALIFORNIA CORPORATION, ET AL. Sand Hill Global Advisors manages $3.6 billion and provides investment advisory services for 433 clients (1:31 advisor/client ratio). at 13-18. (Court Reporter: Diane Skillman.) "); Williams Depo. Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 630 (9th Cir. The record shows that over the course of the last ten years since Defendant began using the "Sand Hill Advisors" name, it has received only five or six telephone calls and one package intended for Plaintiff. 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. Equally unpersuasive is Defendant's contention that Plaintiff had no basis upon which to rely on section 2(f) of the Lanham Act, 15 U.S.C. (Entered: 01/14/2010), Minute Entry: Motion Hearing held on 1/12/2010 before Judge Saundra Brown Armstrong (Date Filed: 1/12/2010). Plaintiff surmises that Mr. Hill was not being truthful and posits that he must have known about Plaintiff when he was securing Defendant's domain name. 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." To update this case yourself, sign into PACER (paid PACER subscription required). endstream endobj 11 0 obj<> endobj 12 0 obj<> endobj 13 0 obj<> endobj 14 0 obj<>/Font<>/ProcSet[/PDF/Text]/ExtGState<>>> endobj 15 0 obj<> endobj 16 0 obj<> endobj 17 0 obj<> endobj 18 0 obj[/ICCBased 27 0 R] endobj 19 0 obj[20 0 R 21 0 R 22 0 R 23 0 R] endobj 20 0 obj<>stream Struck (Defendant); Struck Capital Management, LLC (Defendant); Struck Capital Fund GP LLC (Defendant) et al. Docket Summons on Complaint; Issued and Filed by: Yida Gao (Plaintiff); Sand Hill Advisors, LLC (Plaintiff); As to: Adam B. HWv6}WGj}I-Y]Ih RdJRx>#wHY 8}9|n{oXxlW0A(x{3|ZUzjlWgQ?mf7Es2P2AB& nwdse%7YPI*eoFH1GI!| The marks here are identical, which, at first blush, appears to favor Plaintiff. Yellow Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 930 (9th Cir.2005). In addition, Plaintiff ignores that "[t] he question is whether the phrase can be construed to mean that the product is made in a certain locale." On November 19, 2009, Defendant filed a Motion for Summary Judgment. 0 All Rights Reserved. Forschner, 30 F.3d at 355 (emphasis added). 0000000940 00000 n Her commentary begins at the 3:51 mark. at 12, Dkt. Def. Sand Hill Advisors LLC v. Sand Hill Advisors LLC Filing 92 AMENDED ORDER re 91 Order, Terminate Motions,,,,,. (Attachments: # 1 Appendix Declaration of James P. Martin, # 2 Appendix Proposed Order)(Martin, James) (Filed on 12/2/2009) Modified on 12/3/2009 (jlm, COURT STAFF). Plaintiff summarily asserts that "there is no need for other wealth management firms to use `Sand Hill Advisors' in describing or advertising their services." (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). The plaintiffs in this case, the New Jersey Sand Hill Band of Lenape and Cherokee Indians and its representative Ronald S. Holloway (collectively, "plaintiffs"), seek redress for the alleged conversion and misappropriation of There's always a lot to do, and even more to learn. 92, Filing 69, Filing The Court, in its discretion, finds this matter suitable for resolution without oral argument. "However, such a broad inference is not sufficient to demonstrate that a genuine issue exists concerning likelihood of confusion as to the source of the products involved in the present suit." Ex. GoTo. 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. Sand Hill Advisors LLC: REPORT AND RECOMMENDATIONS re {{61}} MOTION for Attorney Fees filed by Sand Hill Advisors LLC Objections to R&R due by 6/15/2010. 's Mot. 4.) Consequently, only evidence showing use of the mark in advertising prior to Defendant's use of the mark is probative of secondary meaning. C.). See Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1358 (9th Cir.1985) ("[Levi] Strauss was required to prove that the tab as used on shirts had acquired secondary meaning by 1976, when Blue Bell began using a protruding label on shirts."). Whether a mark has acquired secondary meaning generally presents a question of fact. (McCaffrey Depo. 04:53. 10 22 Id. 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. 79, Filing On February 9, 2010, Defendant filed a motion for attorneys' fees, which was referred to Magistrate Judge James ("the Magistrate"). (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, # 19 Exhibit S, # 20 Exhibit T, # 21 Exhibit U PART 1, # 22 Exhibit U PART 2, # 23 Exhibit U PART 3, # 24 Exhibit U PART 4)(Related document(s) 42 ) (Martin, James) (Filed on 12/11/2009) Modified on 12/14/2009 (jlm, COURT STAFF). (Hill Decl. C at 80:1-82:9, Dkt. 0000012780 00000 n YIDA GAO, ET AL. The Court found that 2(f) was inapplicable because the mark was unregistered. In addition, Defendant asserts that the only reason Plaintiff commenced this action was to obtain the right to register its mark with the California Secretary of State. In re Sand Hill Exchange, et al. (Hill Decl. at 23:3-15; Williams Decl. "Sand Hill" refers to a geographical locale where Plaintiff operates its business. 5 and Ex. Forschner Group, Inc. v. Arrow Trading Co., Inc., 30 F.3d 348, 355 (2d Cir.1994) (internal quotation marks omitted). 84. xb``f``b sT,PAABmgX$ "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." However, the cited deposition excerpts of Gary Conway, one of Plaintiff's founders, do not support Defendant's argument. 57. Of Trs. xref (Date Filed: 2/18/2009). VS SEAN SABERI, ET AL. WebFebruary 17, 2023 Sand Hill Global Advisors, registered in 2000, serves 9 state (s) with a licensed staff of 14 advisors. 56(e); Orr v. Bank of Am., 285 F.3d 764, 773 (9th Cir. In Support Of Motion To Compel Arbitration; As To Parties: removed. (Davidson 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. Signed by Judge ARMSTRONG on 1/5/09. (Id. Jury Trial set for 2/22/2010 08:30 AM. C, Conway Depo. 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.