CONSUMERINFO.COM, INC., a California corporation v. MONEY MANAGEMENT INTERNATIONAL, INC., a Texas corporation

This disposition is not appropriate for publication and is not precedent*
except as provided by 9th Cir. R. 36-3.
NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
CONSUMERINFO.COM, INC., a
California corporation,
Plaintiff-counter-defendant -
Appellee,
v.
MONEY MANAGEMENT
INTERNATIONAL, INC., a Texas
corporation,
Defendant-counter-claimant -
Appellant.
No. 08-56705
D.C. No. 2:07-cv-04275-SJO-E
MEMORANDUM *
CONSUMERINFO.COM, INC., a
California corporation,
Plaintiff-counter-defendant -
Appellee,
v.
MONEY MANAGEMENT
INTERNATIONAL, INC., a Texas
corporation,
No. 09-55228
D.C. No. 2:07-cv-04275-SJO-E
FILED
MAR 11 2010
MOLLY C. DWYER, CLERK
U .S. C OU R T OF APPE ALS

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Defendant-counter-claimant -
Appellant.
Appeal from the United States District Court
for the Central District of California
S. James Otero, District Judge, Presiding
Argued and Submitted March 3, 2010
Pasadena, California
Before: GOULD, IKUTA and N.R. SMITH, Circuit Judges.
Money Management International (“MMI”) appeals a partial grant of
summary judgment and a partial grant of attorneys’ fees to ConsumerInfo.com,
Inc. (“ConsumerInfo”). We reverse, therefore vacating the award of attorneys’
fees, and remand for trial on the issue of prior use.
We review de novo a district court’s grant or denial of summary judgment.
Universal Health Servs., Inc. v. Thompson, 363 F.3d 1013, 1019 (9th Cir. 2004).
We must determine, viewing the evidence in the light most favorable to the
nonmoving party, whether there are any genuine issues of material fact and
whether the district court correctly applied the substantive law. See Olsen v. Idaho
State Bd. of Med., 363 F.3d 916, 922 (9th Cir. 2004).
In order to prevail on its trademark infringement and related claims,
ConsumerInfo must show that MMI’s mark is 1) “confusingly similar” to

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The district court found no dispute as to whether the marks were similar1
either 1) because MMI admitted such was the case or 2), in the alternative, MMI
had failed to present evidence to rebut ConsumerInfo’s evidence on this point. As
to validity, ConsumerInfo’s registration is prima facie evidence of validity. See
Brookfield Commc’ns, 174 F.3d at 1047.
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ConsumerInfo’s mark and 2) that ConsumerInfo’s mark is “valid [and]
protectable.” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036,
1046 (9th Cir. 1999) (reciting the elements for trademark infringement); see
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1153 (9th Cir. 2002)
(explaining that unfair competition claims are “substantially congruent” to
trademark infringement claims). The district court determined — and we agree —
that there is no genuine issue of material fact as to whether ConsumerInfo had
satisfied these prima facie elements.1
MMI argued, both before the district court and on appeal, that it is shielded
from infringement due to its prior use of its mark. Under 15 U.S.C. § 1057(c), a
registered mark cannot be asserted against a person who used the otherwise
infringing mark in commerce before the priority date of the registered mark. In
order to constitute a valid prior use, the use must include “(1) an element of actual
use, and (2) an element of display.” Chance v. Pac-Tel Teletrac, Inc., 242 F.3d
1151, 1159 (9th Cir. 2001).

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The district court impermissibly weighed evidence in determining there was
no genuine issue of material fact as to whether MMI’s use was sufficient to
constitute a prior use under Chance. Specifically, the district court found that 1)
there was no evidence that consumers actually received brochures which MMI
alleges constituted use in commerce of the mark “My Score+” and 2) that there
were essentially no sales under the mark. Contrary to the district court’s
conclusion, however, there is evidence in the record demonstrating that consumers
received these materials and demonstrating sales, prior to the priority date of
ConsumerInfo’s mark.
MMI correctly points to the testimony of Jerry Radoff as suggesting that the
brochures did reach the hands of consumers. The district court did not credit this
testimony, finding that it was “undercut” by other testimony in the record. The
district court erred by weighing these potentially conflicting pieces of evidence
rather than viewing the evidence in the light most favorable to MMI.
There are also emails in the record that tend to show consumers were
receiving MMI’s brochures in early 2002. While internal emails are alone
insufficient to establish a sufficiently public use of a mark, see id. at 1158 (citing
Brookfield Commc’ns, 174 F.3d at 1052), the emails contain assertions that the

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brochures were being distributed to the public. Thus, the emails tend to show that
MMI used its mark publically, not just internally.
The district court did not credit evidence of actual sales by MMI under its
mark. MMI argues that, it presented a spreadsheet which — according to the
testimony of Charles Stanley — contained a record of numerous sales under
MMI’s mark. The district court found this record to be “unreliable” because the
spreadsheet itself did not reference MMI’s mark; thus the district court did not take
the spreadsheet into account. In making this determination the district court
improperly weighed evidence, discounting Stanley’s testimony. Viewing the
evidence in the light most favorable to MMI, this spreadsheet coupled with
Stanley’s testimony, tends to show sales under the mark.
On summary judgment, viewing the evidence in the light most favorable to
MMI, we must conclude there is sufficient evidence to create a triable issue of fact
as to MMI’s use of its mark in commerce before the priority date of the registered
mark.
Accordingly, we also vacate the district court’s order granting in part
ConsumerInfo’s motion for attorneys’ fees because ConsumerInfo is no longer the
prevailing party.

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We REVERSE and REMAND the partial grant of summary judgment and
VACATE the award of attorneys’ fees.

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