United States District Court, D. Delaware
E. Moore, Bindu A. Palapura, Stephanie O'Byrne, and
Jennifer Penberthy Buckley, POTTER ANDERSON & CORROON
LLP, Wilmington, DE; David A. Perez, Zachary E. Davidson, and
Christian W. Marcelo, PERKINS COIE LLP, Seattle, WA,
attorneys for Plaintiff.
Patricia A. Winston and Kathleen A. Murphy, MORRIS JAMES LLP,
Wilmington, DE; John M. Magliery, DAVIS WRIGHT TREMAINE LLP,
New York, NY; Cyrus E. Ansari, DAVIS WRIGHT TREMAINE LLP,
Seattle, WA, attorneys for Defendant.
ANDREWS, U.S. DISTRICT JUDGE.
pending before the Court are Plaintiffs Motion for Summary
Judgment and Defendant's Cross-Motion for Summary
Judgment. (D.I. 55, 65). The Parties have fully briefed the
issues. (D.I. 56, 65, 69). After full consideration of the
briefing, I will grant Plaintiffs motion and deny
Ganz filed this suit against Defendant SM Kids, LLC on August
31, 2018 alleging various contract and trademark infringement
claims. (D.I. 1). Defendant counterclaimed for declaratory
judgment. (D.I. 5). On May 17, 2019, the Parties stipulated
to seek solely declaratory and equitable relief and
"agree[d] that the Court may determine the Parties'
rights and obligations under the Coexistence Agreement as a
matter of law or as a trier of fact." (D.I. 47, ¶
3). As part of this agreement, Plaintiff dismissed with
prejudice all claims except for its breach of contract claim
and Defendant dismissed all counterclaims except for its
declaratory judgment claim. (Id., ¶¶ 1-2).
The Parties also dismissed all claims for damages.
(Id.) The Parties have now submitted competing
motions for summary judgment, subject to their agreement that
I may decide any remaining factual issues as the trier of
relevant facts are as follows. In 2001, Plaintiff and
Defendant's predecessor-in-interest, Steven Silvers,
entered into the Coexistence Agreement. (See D.I.
47-1). Defendant agrees that it is bound by the Coexistence
Agreement. The Coexistence Agreement was intended to resolve
a legal dispute over each party's respective use of and
trademarking of marks with the word "Googles."
(D.I. 56 at 2; D.I. 65 at 8). The Parties dispute the meaning
of the Coexistence Agreement. Paragraph 2.1 of the
Coexistence Agreement states:
Silvers shall have the right to use the Silvers'
Mark in connection with the extraterrestrial
character depicted in Exhibit A to this Agreement, and
subject to the following:
(a) Silvers shall expressly abandon Serial No. 75/547, 007
and not seek to register at the [sic] either the federal or
the state level any mark containing, or confusingly similar
to, "GOOGLES" for PLUSH TOYS, but Silvers will not
abandon any other "Googles" marks he holds or will
hold in the future that relate to goods other than plush
(b) Silvers shall not use the GOOGLES word on or in
connection with any product, image or character without also
using the character depicted in Exhibit A to this Agreement.
If there is not room for the design portion of the
Silvers' Mark along with the term
"Googles," Silvers may use the word only, so long
as use is not made in connection with a plush toy.
(c) Silvers shall never manufacture, distribute, market
and/or sell any characters that resemble Ganz's current
line of plush toys, or such plush toys that Ganz may add to
the GOOGLES line in the future.
(d) Silvers and/or any assigns, persons, corporation(s),
entities, heirs or legal representatives that Silvers
designates to use the Silvers' Mark may
use the Silvers' Mark on any such items
that shall be marketed and distributed by Silvers, or by any
other such designated entity of his or his assigns, heirs, or
legal representatives, as long as the Silvers'
Mark is used with the design logo and not just the
word mark "Googles," except as set forth herein.
(e) Except as otherwise specified in this Agreement, Silvers
is not prevented from creating other aliens or alien-themed
merchandise utilizing the Silvers' Mark. Silvers may
continue to use the terms "The Googles Family,"
"The Googles from Goo," "Googles.com" and
any other terms currently being used or created for the
alien-themed property and merchandise. Silvers may use the
term "Googles" for purposes such as titles to
books, movies, features, music, music titles and web sites
relating to the alien-themed property.
(D.I. 47-1 ¶ 2.1). The Coexistence Agreement defines the
"Silvers' Mark" as "the GOOGLES and Design
Mark as represented in Serial No. 75/547, 007. (D.I. 47-1 ¶
1.4). The "Silvers' Mark" has been reproduced
below. (Image Omitted) U.S. Trademark Application Serial No.
75/547, 007 (filed Sept. 2, 1998) (abandoned June 11, 2001).
Exhibit A to the Coexistence Agreement has been reproduced
47-1 at 8).
manufactures and sells toys and gifts, primarily in the
United States and Canada. (D.I. 56 at 6). Plaintiff began
selling a line of plush toys called "GOOGLES" in
has continually used the GOOGLES word mark for its plush toys
ever since. (Id.). In 1998, Plaintiff applied to
register its GOOGLES mark for use with plush toys, and the
application was granted in 2002. U.S. Trademark Reg. No. 2,
554, 518. Plaintiff has expanded its use of the GOOGLES mark
to include the Webkinz website, "an online world where
children can adopt and play with various virtual pets,
including virtual pet-Googles." (D.I. 56 at 7).
created characters and published a book called Googles
and the Planet of Goo in 1996. (Id.). The
characters were aliens/extraterrestrials and looked like the
character included in Exhibit A of the Coexistence Agreement
(pictured above). In 1997, Silvers' company, the Googles
Children's Workshop, was granted a trademark registration
for the GOOGLES (design mark) for children's books. U.S.
Trademark Registration No. 2, 087, 590. The Parties agree
that the mark was assigned to Silvers individually in 1999.
(D.I. 5 ¶ 10; D.I. 56 at 7).
September 1998, Silvers filed an intent-to-use application to
register the Silvers' Mark for "plush toy figurines,
plastic toy figurines." U.S. Trademark Application
Serial No. 75/547, 007. Plaintiff filed its trademark
application for use of its GOOGLES mark on October 19, 1998
and opposed Silvers' application. U.S. Trademark Reg. No.
2, 554, 518; (D.I. 56 at 8). Plaintiff and Silvers settled
their disagreement with the Coexistence Agreement, and
Silvers abandoned his trademark application for the
Silvers' Mark for plush toys. (D.I. 56 at 8); U.S.
Trademark Application Serial No. 75/547, 007.
court shall grant summary judgment if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). The moving party has the initial burden
of proving the absence of a genuinely disputed material fact
relative to the claims in question. Celotex Corp. v.
Catrett,477 U.S. 317, 330 (1986). Material facts are
those "that could affect the outcome" of the
proceeding, and "a dispute about a material fact is
'genuine' if the evidence is sufficient to permit a
reasonable jury to return a verdict for the nonmoving
party." Lamont v. New Jersey,637 F.3d 177, 181
(3d Cir. 2011) (quoting Anderson v. Liberty Lobby,
Inc.,477 U.S. 242, 248 (1986)). When determining
whether a genuine issue of material fact exists,
court must view the evidence in the light ...