Pursuant to Local Rule 3-16 (Miller, Katherine) (Filed on 2/2/2009) (Entered: 02/02/2009), Certificate of Interested Entities by Sand Hill Advisors LLC Pursuant to Local Rule 3-16 (Davidson, Rachel) (Filed on 1/30/2009) (Entered: 01/30/2009), ***ERRONEOUS ENTRY, PLEASE REFER TO DOCUMENT 19 *** Certificate of Interested Entities by Sand Hill Advisors LLC Pursuant to Local Rule 3-16 (Miller, Katherine) (Filed on 1/30/2009) Modified on 2/3/2009 (jlm, COURT STAFF). [2] "[T]he only difference between a trademark and a service mark is that a trademark identifies goods while a service mark identifies services. Indeed, Mr. Conway admitted that Defendant is not a competitor of Plaintiff. (Entered: 01/30/2009), JOINT CASE MANAGEMENT STATEMENT and Proposed Order, filed by Sand Hill Advisors LLC., Sand Hill Advisors LLC. Id. Applied Info. WebDefendant Sand Hill Advisors LLCs stipulation to amend its Answer to assert additional Affirmative Defenses challenging Plaintiffs legal capacity and standing to bring its 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 NOTICE OF REFERENCE AND ORDER SCHEDULING HEARING: Hearing set for 04/08/2010 at 10:00 AM, re 61 Motion for Attorney Fees. 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. Struck (Defendant); Struck Capital Management, LLC (Defendant); Struck Capital Fund GP LLC (Defendant) et al. (Davidson Decl. Thus, the Court concludes that "Sand Hill Advisors" is primarily geographically descriptive. 30, 2007) (citations omitted). Struck (Defendant); Struck Capital Management, LLC (Defendant); Struck Capital Fund GP LLC (Defendant) et al. Struck (Defendant); As to: Yida Gao (Plaintiff); Sand Hill Advisors, LLC (Plaintiff); Shima Capitol LLC, a Delaware Limited Liability Company (Cross-Defendant) et al. See MSJ Order at 11-12, Dkt. (adsbygoogle = window.adsbygoogle || []).push({}); Non-Government Works Copyright 2001-2023 Think Computer Corporation. [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. Plaintiff's desire to protect such interests is a legitimate one. Id. 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. 04:53. Why is this public record being published online? 's Mot. (Related document(s) 48 ) (Davidson, Rachel) (Filed on 12/28/2009) Modified on 12/30/2009 (jlm, COURT STAFF). Sand Hill Advisors LLC v. Sand Hill Advisors LLC Filing 92 AMENDED ORDER re 91 Order, Terminate Motions,,,,,. (lrc, COURT STAFF) (Filed on 2/19/2009) (Entered: 02/19/2009), Minute Entry: Initial Case Management Conference held on 2/18/2009 before Judge Saundra Brown Armstrong. Id. (Davidson, Rachel) (Filed on 12/22/2009) Modified on 12/23/2009 (jlm, COURT STAFF). YIDA GAO, ET AL VS ADAM B STRUCK, ET AL - UniCourt (Entered: 01/22/2010), STIPULATION and Proposed Order re Pretrial Schedule, by Sand Hill Advisors LLC. Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. Plaintiff responds that in order to challenge its showing of a "substantially continuous" use of the "Sand Hill Advisors" mark, Defendant is required to show that it used the mark in advertising or in a manner that describes its services. A claim is unreasonable or groundless for purposes of a permissible award of fees only if it is frivolous and fails to raise colorable or debatable issues. 1502(e)(2). 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. Plaintiff's argument is unpersuasive. SAND HILL ADVISORS LLC v. SAND HILL ADVISORS LLC 0000004889 00000 n for Summ. In addition, the record does not support Defendant's assertion that the only reason Plaintiff filed suit was to "force it to surrender its business registration" in California. (lrc, COURT STAFF) (Date Filed: 1/12/2010) Modified on 1/13/2010 (jlm, COURT STAFF). 0000012780 00000 n trailer 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"). C, Conway Depo. We worked in that area. 1997). (Id. 0000000860 00000 n (Opp'n at 23.) Subscribe to Justia's Free Newsletters featuring summaries of federal and state court opinions. (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. 2009) (internal quotation marks and citation omitted) (emphasis added). they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Sand Hill Global Advisors 2004) ("Is the mark the name of the place or region from which the goods actually come? We lived in that area. Motion Hearing set for 2/23/2010 01:00 PM in Courtroom 3, 3rd Floor, Oakland. 47 0 obj<>stream Astra Pharm. As noted, the "need test" measures the extent to which a mark is necessary for competitors to identify their goods and services. at 23:3-15; Williams Decl. REPORT AND RECOMMENDATIONS re 61 MOTION for Attorney Fees filed by Sand Hill Advisors LLC Objections to R&R due by 6/15/2010. See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, 14:7 (4th ed. startxref (Entered: 12/15/2008), CLERK'S NOTICE of Impending Reassignment to U.S. District Judge. 's Mot. Because "Sand Hill Advisors" is descriptive, it is not entitled to protection unless it has acquired secondary meaning. Whether a mark has acquired secondary meaning generally presents a question of fact. 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"). 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. 578, 581-82 (S.D.N.Y.1972) addressed the issue of "use" to determine which party could establish priority to claim ownership of the mark. Phone Number (650) 8549150. 2007). C.). Unlike Plaintiff, Defendant does not provide any advice to any third party, and has no involvement in providing wealth management services. AMENDED ORDER re 91 Order. Sand Hill (emphasis added). "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." WebSAND HILL ADVISORS, LLC, a Delaware limited liability company, Plaintiff, v. SAND HILL ADVISORS, LLC, a California limited liability company, Dkt. at 89:9-12.) 2505, 91 L.Ed.2d 202 (1986). Sand Hill Advisors LLC v. Sand Hill Advisors LLC SAND HILL ADVISORS, LLC v. SAND HILL ADVISORS, LLC J. C at 80:1-82:9, Dkt. 56(e); Orr v. Bank of Am., 285 F.3d 764, 773 (9th Cir. CV-08-5016-SBA ORDER GRANTING DEFENDANT SAND HILL ADVISORS LLC'S STIPULATION TO AMEND ANSWER PURSUANT TO STIPULATION, IT IS SO ORDERED Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. Operating Status Active. To update this case yourself, sign into PACER (paid PACER subscription required). Ex. 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." 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. 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. 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. 0000002907 00000 n 0000000913 00000 n Citations are also linked in the body of the Featured Case. 0000013022 00000 n ORDER VACATING HEARING re 61 MOTION for Attorney Fees filed by Sand Hill Advisors LLC. Defendant has since corrected this error by submitting a properly verified version of Mr. Hill's declaration. Having so decided, the Court turns to the issue of whether the mark has acquired secondary meaning. See Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1076 (9th Cir.2006). Neither party discusses the threshold question of whether section 2(f) is germane in an infringement case where the mark is unregistered. Signed by Judge Saundra Brown Armstrong, on 11/19/09. 10; Davidson Decl. Id. (Entered: 05/21/2009), CERTIFICATION OF MEDIATION Session 5/19/2009, case not settled, no follow up contemplated, mediation complete. Signed by Judge ARMSTRONG on 2/19/09. (Id.) Jury Trial set for 2/22/2010 08:30 AM. %PDF-1.3 Applied Info Sciences Corp., 511 F.3d at 969-970. Def. 2004). 4 and Ex. Sleekcraft, 599 F.2d at 354. 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.")