FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

SOUTHERN CALIFORNIA DARTS

ASSOCIATION, a California

unincorporated association,

Plaintiff-Appellee,

v.

DINO M. ZAFFINA, pro se, an

individual,

Defendant-Appellant,

and

SOUTHERN CALIFORNIA DARTS

ASSOCIATION, INC., a California

corporation,

Defendant.

No. 13-55780

D.C. No.

2:12-cv-01899-R

GK-JCG

OPINION

Appeal from the United States District Court

for the Central District of California

R. Gary Klausner, District Judge, Presiding

Submitted December 20, 2013*

Filed August 11, 2014

* The panel unanimously concludes that this case is suitable for decision

without oral argument. See Fed. R. App. P. 34(a)(2).
2 S. CAL. DARTS ASS’N V. ZAFFINA

Before: Ronald M. Gould and Kim McLane Wardlaw,

Circuit Judges, and Mark L. Wolf, Senior District Judge.**

Opinion by Judge Wolf

SUMMARY***

Lanham Act

The panel affirmed the district court’s entry of summary

judgment and issuance of a permanent injunction in an action

brought under the Lanham Act by Southern California Darts

Association.

The panel affirmed the district court’s rulings on

threshold issues. It held that the district court had subject

matter jurisdiction because even though Southern California

Darts Association had not registered any trademarks, its

claim arose under 15 U.S.C. § 1125, a provision of the

Lanham Act that protects against infringement of

unregistered marks and trade dress as well as registered

marks. The panel held that even though Southern California

Darts Association lacked the capacity to sue as a corporation

because its corporate powers had been suspended by the

State of California, it could bring suit in federal court as an

** The Honorable Mark L. Wolf, Senior District Judge for the United

States District Court for the District of Massachusetts, sitting by

designation.

 

*** This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.
S. CAL. DARTS ASS’N V. ZAFFINA 3

unincorporated association for the purpose of enforcing a

substantive right existing under the laws of the United States. 

The panel also held that Southern California Darts

Association had standing to sue and that its motion for

summary judgment was properly served on defendant Dino

M. Zaffina.

The panel affirmed the district court’s summary judgment

in favor of Southern California Darts Association on its

claim that Zaffina infringed its trademarks. The panel held

that the contested marks were protectable as descriptive

marks that had acquired secondary meaning and that

Zaffina’s use of the marks was likely to cause confusion. The

panel also held that Southern California Darts Association

owned the marks. It held that unincorporated associations

have the capacity to own trademarks. In addition, Southern

California Darts Association’s use of the marks had been

lawful, and it had not abandoned the marks. 

Finally, the panel rejected Zaffina’s arguments that

Southern California Darts Association should be denied

injunctive relief on the basis of unclean hands and that the

district court erred by admitting a declaration into evidence.

COUNSEL

Dino M. Zaffina, pro se, Los Angeles, California, for

Defendant-Appellant.

James Kawahito and Timothy Patrick Hennessey, Kawahito

Shraga & Westrick LLP, Los Angeles, California, for

Plaintiff-Appellee.
4 S. CAL. DARTS ASS’N V. ZAFFINA

OPINION

WOLF, Senior District Judge:

The district court entered summaryjudgment for plaintiffappelleeSouthern California Darts Association (“SoCal”) and

issued a permanent injunction enjoining defendant-appellant

Dino M. Zaffina from using certain marks that have been

used by SoCal for several decades. We have jurisdiction

under 28 U.S.C. § 1291, and we affirm.

I. BACKGROUND

For forty years or more, SoCal has promoted the

competitive play of the game of darts and has coordinated

league play of this game. For a time, beginning in the 1960s,

members of SoCal formed and ran a corporation named

“Southern California Darts Association, Inc.” (the “original

SoCal corporation”). The corporate powers of the original

SoCal corporation were suspended by the State of California

in 1977, apparentlyfor nonpayment of the corporate franchise

tax. SoCal has, for many years, used the following marks: its

full name (“Southern California Darts Association”); the

acronym “SCDA”; the nickname “SoCal Darts”; and a logo

featuring the organization’s full name and a dart board.

Zaffina was once a member of SoCal. Zaffina and SoCal

feuded in July 2010 over whether Zaffina’s middle initial

would be used in SoCal’s weekly scoring reports, and

Zaffina’s membership in SoCal came to an end. It is unclear

whether Zaffina renounced his SoCal membership or whether

the organization expelled him. On January 3, 2011, Zaffina

registered with the State of California a corporation named

Southern California Darts Association, Inc. (“SoCal Inc.”),
S. CAL. DARTS ASS’N V. ZAFFINA 5

the same name once used by the original SoCal corporation. 

Zaffina appointed himself president and CEO of SoCal Inc. 

He then registered the internet domain name

www.southerncaliforniadartsassociation.com and began to

use it to promote SoCal Inc.

In August 2011, Zaffina and SoCal Inc. informed

approximately three hundred darts-related businesses, by

email, of SoCal Inc.’s existence. These businesses included

the so-called “host pubs” in which the events organized by

SoCal traditionally have been held. In September of the same

year, Zaffina and SoCal Inc. sued multiple defendants in state

court for hosting or participating in events while using

SoCal’s name and other marks.

On March 6, 2012, SoCal brought suit against Zaffina and

SoCal Inc. in the United States District Court for the Central

District of California. In its complaint, SoCal alleged

violations of the Lanham Act and the California Business and

Professions Code, common law trademark infringement, and

unfair competition. SoCal also moved for a preliminary

injunction.

On April 23, 2012, the district court granted SoCal’s

motion for a preliminary injunction, and enjoined Zaffina and

SoCal Inc. from using SoCal’s marks, using URLs containing

these marks, and representing to the public that they have

rights to these marks. See Apr. 23, 2012 Dist. Ct. Order (“PI

Order”). On June 22, 2012, the district court denied Zaffina’s

motion for reconsideration of its decision to issue a

preliminary injunction.

Zaffina and SoCal Inc. filed interlocutory appeals from

the district court’s preliminary injunction. While these
6 S. CAL. DARTS ASS’N V. ZAFFINA

appeals were pending, the following developments occurred

in the district court.

On August 20, 2012, the district court allowed a motion

to withdraw filed by SoCal Inc.’s counsel, Robert Racine,

Esq. The court ordered SoCal Inc. to retain new counsel

within thirty days. When SoCal Inc. failed to do so, the

district court struck SoCal Inc.’s answer to the complaint and

ordered default to enter against it.

On February 22, 2013, the district court granted SoCal’s

motion for partial summary judgment against Zaffina on its

Lanham Act claim. Although Zaffina had not filed an

opposition to the motion for summary judgment, the district

court examined the motion on the merits, and found it

meritorious. See Feb. 22, 2013 Dist. Ct. Order (“SJ Order”). 

SoCal then moved to withdraw all of its additional claims

against Zaffina.

On April 2, 2013, the district court entered final judgment

against both defendants—against SoCal Inc. because of its

default, and against Zaffina on the basis of the entry of

summary judgment on SoCal’s Lanham Act claim. The

district court vacated its preliminary injunction and issued a

permanent injunction. The permanent injunction again

prohibited Zaffina, as well as any associated businesses, from

using SoCal’s marks, from using URLs containing these

marks, and from representing to the public that they have

rights to these marks. It also ordered Zaffina to: file a notice

discontinuing or changing SoCal Inc.’s corporate name, file

cancellations of all fictitious business name registrations

using SoCal’s marks, and destroy or turn over to SoCal all

marketing products created by Zaffina for the purpose of

promoting SoCal Inc. In addition, the district court found
S. CAL. DARTS ASS’N V. ZAFFINA 7

Zaffina and SoCal Inc. jointly and severally liable to SoCal

in the amount of $115,705.28 plus costs.1

The district court’s final judgment mooted the appeals

from the preliminary injunction. Consequently, on April 25,

2013, we dismissed those appeals.

Zaffina now appeals from the district court’s Order

entering summary judgment against him, offering a series of

threshold challenges and several arguments on the merits.2

II. STANDARD OF REVIEW

We review the district court’s grant of summary judgment

de novo. See United States v. Arango, 670 F.3d 988, 992 (9th

Cir. 2012); Hambleton Bros. Lumber Co. v. Balkin

Enterprises, Inc., 397 F.3d 1217, 1226 n.8 (9th Cir. 2005).

Summary judgment is appropriate 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); Celotex Corp. v. Catrett, 477 U.S. 317, 322

1 The district court subsequently granted SoCal’s motion to hold Zaffina

in contempt for failure to comply with the judgment (on July 17, 2013)

and its motion to compel compliance with the court’s order of contempt

(on October 16, 2013).

2 Zaffina also apparently seeks to renew his challenges to the district

court’s decisions to issue a preliminary injunction and to decline to

reconsider its preliminary injunction. As we explained in our April 25,

2013 Memorandum Disposition, the district court’s prior orders were

superseded by the entry of final judgment, and cannot now be revisited. 

See In re Estate of Ferdinand Marcos Human Rights Litig., 94 F.3d 539,

544 (9th Cir. 1996).
8 S. CAL. DARTS ASS’N V. ZAFFINA

(1986). Viewing the facts in the light most favorable to the

nonmoving party, we must determine whether a genuine issue

of material fact exists, and whether the district court applied

the law correctly. See Fortyune v. Am. Multi–Cinema, Inc.,

364 F.3d 1075, 1080 (9th Cir. 2004).

An issue of fact is “material” if it “might affect the

outcome of the suit under the governing law.” Anderson v.

Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); George v.

Morris, 736 F.3d 829, 834 (9th Cir. 2013). A dispute is

“genuine” if “a reasonable jury could return a verdict for the

nonmoving party.” Anderson, 477 U.S. at 248; see

FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509, 514

(9th Cir. 2010). Evidence may be offered “to support or

dispute a fact” on summary judgment only if it “could be

presented in an admissible form at trial.” Fraser v. Goodale,

342 F.3d 1032, 1036–37 (9th Cir. 2003); Fed. R. Civ. P.

56(c)(2).

III. THRESHOLD ISSUES

Zaffina presents four threshold challenges to the district

court’s entry of summary judgment. He argues that the

district court lacked subject-matter jurisdiction, that SoCal

lacks the capacity to sue, that SoCal lacks standing, and that

Zaffina was not properly served with SoCal’s motion for

summary judgment. These contentions are not correct.

A. Jurisdiction

Zaffina first challenges the district court’s subject-matter

jurisdiction. He argues that SoCal’s suit involves no question

of federal law, because it implicates neither common-law

trademark rights nor statutory trademark rights. It does not
S. CAL. DARTS ASS’N V. ZAFFINA 9

implicate common-law trademark rights, according to

Zaffina, because “there is no federal common law of

trademark infringement.” Appellant’s Br. at 8–9 (quoting

Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 791

(9th Cir. 1981)). SoCal’s suit also does not implicate

statutory trademark rights, Zaffina argues, because SoCal has

not registered any of the contested marks.

This argument misapprehends the applicable law. The

Lanham Act, 15 U.S.C. ch. 22, grants the federal district

courts original jurisdiction over all actions arising under it. 

See 15 U.S.C. § 1121(a). Another statute grants the district

courts jurisdiction over “any civil action arising under any

Act of Congress relating to patents, plant variety protection,

copyrights and trademarks.” 28 U.S.C. § 1338(a).

The pertinent part of SoCal’s complaint is based on the

provision of the Lanham Act codified at 15 U.S.C. § 1125. 

This section, unlike certain other Lanham Act provisions,

“protects against infringement of unregistered marks and

trade dress as well as registered marks.” Brookfield

Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036,

1046 n.8 (9th Cir. 1999); Two Pesos, Inc. v. Taco Cabana,

Inc., 505 U.S. 763, 768 (1992). The elements of a cause of

action under this provision, which are discussed below, do

not include registration.

SoCal’s claim does arise under the Lanham Act,

therefore, notwithstanding the fact that SoCal has not

registered any trademarks. Accordingly, the district court did

have jurisdiction over SoCal’s claim pursuant to 15 U.S.C.

§ 1121 and 28 U.S.C. § 1338.
10 S. CAL. DARTS ASS’N V. ZAFFINA

B. Capacity to Sue

Zaffina’s second threshold argument is that SoCal lacks

the capacity to sue. As noted earlier, the corporate powers of

the original SoCal corporation were suspended in 1977,

apparently because it failed to pay the state corporate

franchise tax. Zaffina contends that SoCal is, therefore, a

“delinquent corporation” that lacks the capacity to sue. He

also asserts that under California law, a person conducting

business under a fictitious business name may only sue once

he has registered that name.

We have indeed held that, under California law, a

delinquent corporation whose powers have been suspended

“may not bring suit and may not defend a legal action.” 

United States v. 2.61 Acres of Land, 791 F.2d 666, 668 (9th

Cir. 1985). However, California law is not dispositive in the

present circumstances.

Capacity to sue in federal court is governed by Federal

Rule of Civil Procedure 17(b). Under this Rule, an

individual’s capacity to sue is determined by “the law of the

individual’s domicile”; a corporation’s capacity to sue is

determined by “the law under which it was organized”; and

the capacity of “all other parties” to sue is determined by “the

law of the state where the court is located.” Fed. R. Civ. P.

17(b)(1), (2), (3). There are two exceptions to Rule 17(b)(3),

however. The first of these exceptions is relevant in the

current case. Rule 17(b)(3)(A) states that a “partnership or

other unincorporated association” that lacks the capacity to

sue under the law of the state in which the court is located

“may sue or be sued in its common name to enforce a

substantive right existing under the United StatesConstitution

or laws.”
S. CAL. DARTS ASS’N V. ZAFFINA 11

The district court addressed SoCal’s capacity to sue in its

PI Order. For the purpose of its analysis, the district court

assumed that SoCal is, in essence, the same entity as the

original SoCal corporation. See PI Order at 3 n.2. The court

correctly recognized, however, that even on this assumption,

the suspension of the original corporation’s powers does not

necessarily extinguish SoCal’s capacity to pursue federal

claims in federal court.

This conclusion follows from our previous decisions in

Comm. for Idaho’s High Desert, Inc. v. Yost, 92 F.3d 814 (9th

Cir. 1996), and Sierra Ass’n for Env’t v. FERC, 744 F.2d 661

(9th Cir. 1984). In both of those cases, corporations whose

powers had been suspended under California law brought suit

in federal court. Idaho’s High Desert involved a “non-profit

environmental education and advocacyorganization” that had

“forfeited its corporate charter . . . for failure to file an annual

report.” 92 F.3d at 817, 819. Our decision in Sierra Ass’n

includes less factual detail, but the circumstances of that case

appear to have been analogous to those of Idaho’s High

Desert. See 744 F.2d at 662.

In both cases, applying Federal Rule of Civil Procedure

17(b), we treated the plaintiffs as unincorporated associations. 

We explained that an “unincorporated association” is “a

voluntary group of persons, without a charter, formed by

mutual consent for the purpose of promoting a common

objective.” Idaho’s High Desert, 92 F.3d at 820 (quoting

Local 4076, United Steelworkers v. United Steelworkers, AFL

CIO, 327 F. Supp. 1400, 1403 (W.D. Pa. 1971)). We held

that as unincorporated associations, the plaintiffs in those

cases were permitted to “sue in federal court, regardless of

[their] capacity to sue under the law of the state in which the

court sits, when [they were] suing ‘for the purpose of
12 S. CAL. DARTS ASS’N V. ZAFFINA

enforcing . . . a substantive right existing under the . . . laws

of the United States.’” Idaho’s High Desert, 92 F.3d at

819–20; see Sierra Ass’n, 744 F.2d at 662; see also 1 J.

Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 9:11 (4th ed. 2014).

In its PI Order, the district court expressly found that

SoCal is an organization formed by the consent of individuals

who share a common cause and, therefore, is an

unincorporated association. See PI Order at 2. The district

court applied Idaho’s High Desert and Sierra Ass’n to the

facts of this case and determined correctly that,

notwithstanding the suspension of the corporate powers of the

original SoCal corporation, SoCal should now be classified

as an unincorporated association. See id. The district court

implicitly relied on this reasoning in its SJ Order. The

evidence does not place in genuine dispute the district court’s

factual findings, and its legal conclusion was not wrong as a

matter of law. See Idaho’s High Desert, 92 F.3d at 820 (“For

purposes of Rule [17(b)(3)(A)], the determination of what

constitutes an ‘unincorporated association’ is a question of

federal law.”). The district court was, therefore, correct in

concluding that SoCal had the capacity to bring its Lanham

Act claim, at least, in federal court.

C. Standing

Zaffina also contends that SoCal lacks standing to sue,

arguing that SoCal “is not the real party in interest.” Rather,

according to Zaffina, SoCal is a “straw plaintiff,” and the real

party in interest is David L. Irete, the current president of

SoCal’s board.
S. CAL. DARTS ASS’N V. ZAFFINA 13

This argument is not meritorious. Irete may be personally

concerned with, and may have personally contributed to,

SoCal’s litigation. The interests of non-natural legal persons

commonly overlap with the interests of their officers and

stakeholders. The fact that the interests of other parties are

implicated by a suit does not deprive an unincorporated

association of standing. “A plaintiff has standing if he or she

has alleged a ‘personal stake’ in the litigation ‘to justify

exercise of the court’s remedial powers on his behalf.’” State

of Nevada Employees’ Ass’n, Inc. v. Bryan, 916 F.2d 1384,

1391 (9th Cir. 1990) (quoting Vill. of Arlington Heights v.

Metro. Hous. Dev. Corp., 429 U.S. 252, 261 (1977)). SoCal

has, through its agents, asserted a “personal” stake in this

case, namely the fact that its trademarks have been

misappropriated. As we have previously held, “ownership of

an unregistered trademark . . . is sufficient to establish

standing under the Lanham Act.” Halicki Films, LLC v.

Sanderson Sales & Mktg., 547 F.3d 1213, 1226 (9th Cir.

2008). Zaffina’s contention that SoCal lacks standing to sue

is, therefore, without merit.

D. Service of Process

Finally, Zaffina contends that SoCal’s motion for

summary judgment was not properly served on him. SoCal

served the motion, by messenger, at the address provided by

Zaffina to the district court. Zaffina argues, however, that the

motion was delivered to “the ‘receptionist’ of the larger

office” at that address, and that that receptionist “is not

affiliated with Zaffina, [SoCal Inc.], or any of [Zaffina’s]

other businesses.” Zaffina admittedly received SoCal’s

motion by email on January 22, 2013, one month before the

district court ruled on the motion. However, he had not
14 S. CAL. DARTS ASS’N V. ZAFFINA

consented to service by electronic means. See Fed. R. Civ. P.

5(b)(2)(E).

We have held that even where the party to be served

received “actual notice” of the documents in question, the

serving party must “demonstrate exceptional good cause for

failing to comply with Rule 5(b).” Magnuson v. Video

Yesteryear, 85 F.3d 1424, 1431 (9th Cir. 1996). SoCal did

not fail to comply with Rule 5(b), however. A motion may be

served by various methods that may not be used to serve a

summons. Compare Fed. R. Civ. P. 4(e), with Fed. R. Civ. P.

5(b)(2). Among other methods, a litigant may serve a motion

by “leaving it at [a] person’s office with a clerk or other

person in charge or, if no one is in charge, in a conspicuous

place in the office.” Fed. R. Civ. P. 5(b)(2)(B)(i).

In the circumstances, the receptionist at the business

address that Zaffina had provided to the district court is

reasonably deemed to be a “clerk or other person in charge”

for the purposes of receiving documents. SoCal, therefore,

properly effected service of its motion when its messenger

delivered the motion to this receptionist. Its service was not

deficient even if it is assumed that, for some reason, the

motion was not ultimately conveyed to Zaffina. See also Fed.

R. Civ. P. 5(b)(2)(C) (a motion may be served by “mailing it

to the person’s last known address—in which event service

is complete upon mailing”).

This last threshold challenge to the district court’s Order

is, therefore, also not meritorious.
S. CAL. DARTS ASS’N V. ZAFFINA 15

IV. MERITS

The district court’s entry of summary judgment was based

on SoCal’s Lanham Act claim, under 15 U.S.C. § 1125(a). 

This provision states, in part, that:

Any person who, on or in connection with any

goods or services . . . uses in commerce any

word, term, name, symbol, or device, or any

combination thereof . . . which . . . is likely to

cause confusion . . . shall be liable in a civil

action . . . .

In order to prevail on a suit under this provision, a plaintiff

must prove two basic elements: “(1) it has a valid, protectable

trademark, and (2) [the defendant’s] use of the mark is likely

to cause confusion.” Applied Info. Sciences Corp. v. eBAY,

Inc., 511 F.3d 966, 969 (9th Cir. 2007); see Dep’t of Parks &

Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124

(9th Cir. 2006). The first of these basic elements is

comprised of two sub-parts: the mark’s protectability and the

plaintiff’s ownership of the mark.

Therefore, SoCal is entitled to summary judgment if the

facts that are not genuinely disputed demonstrate: (a) that the

contested marks are protectable; (b) that SoCal owns these

marks; and (c) that Zaffina’s use of these marks is likely to

cause confusion. We begin our analysis with the first and

third of these elements, to which the district court gave

careful attention.
16 S. CAL. DARTS ASS’N V. ZAFFINA

A. Protectability

Whether a mark is protectable depends on its degree of

“distinctiveness.” See Zobmondo Entm’t, LLC v. Falls

Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). There are

five traditional categories of distinctiveness: “(1) generic,

(2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.” 

Id. (citing Two Pesos, 505 U.S. at 768). Generic marks are

not eligible for trademark protection. See Entrepreneur

Media, Inc. v. Smith, 279 F.3d 1135, 1141 (9th Cir. 2002).

Descriptive marks become protectable if they acquire a

“secondarymeaning,” by becoming distinctive “as used on or

in connection with the applicant’s goods in commerce.” 

15 U.S.C. § 1052(f); see Two Pesos, 505 U.S. at 769. 

Suggestive, arbitrary, and fanciful marks are automatically

protectable. See id. at 768; Zobmondo Entm’t, 602 F.3d at

1113.

The district court, evidently categorizing SoCal’s marks

as “descriptive,” found that these marks have acquired a

“secondary meaning.” See SJ Order at 4. The court based

this finding, among other things, on SoCal’s “acclaim in the

darts community.” Id. The court also noted Zaffina’s

admission, in documents presented by SoCal, that he had

“deliberately appropriated SoCal’s Marks precisely because

of their strong reputation in the darts community as being

associated with SoCal.” Id. (citing Idaho’s High Desert,

92 F.3d at 823 (“Proof of exact copying, without any

opposing proof, can be sufficient to establish a secondary

meaning.”)). Zaffina does not appear to challenge these

findings on appeal, and we find them to be correct.
S. CAL. DARTS ASS’N V. ZAFFINA 17

B. Likelihood of Confusion

The second element of SoCal’s claim analyzed by the

district court, likelihood of confusion, addresses “whether the

similarity of the marks is likely to confuse customers about

the source of the products” or services. E. & J. Gallo Winery

v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992). 

Eight factors are weighed to determine whether confusion is

likely: (1) the strength of the mark; (2) the proximity of the

goods; (3) the similarity of the marks; (4) evidence of actual

confusion; (5) the marketing channels used; (6) the type of

goods and the degree of care likely to be exercised by the

purchaser; (7) the defendant’s intent in selecting the mark;

and (8) the likelihood of expansion of the product lines. See

AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.

1979); Entrepreneur Media, 279 F.3d at 1140. No single

factor is determinative. Rather, “[i]t is the totality of facts in

a given case that is dispositive.” Rodeo Collection, Ltd. v. W.

Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987).

The district court conducted a careful likelihood-ofconfusion analysis. The court addressed the eight Sleekcraft

factors, and found, among other things, that the parties’ marks

are “identical in appearance, sound, and meaning,” that the

parties “offer identical services,” that the parties use

overlapping channels for marketing and advertising, that

Zaffina intentionally selected his marks to capitalize on

SoCal’s reputation, and that at least one third party had

actually been confused by Zaffina’s use of the contested

marks. The court concluded that Zaffina’s use of SoCal’s

marks is likely to cause confusion. This conclusion is also

not apparently challenged on appeal, and we find it, too, to be

correct.
18 S. CAL. DARTS ASS’N V. ZAFFINA

C. Ownership

A party’s ownership of a protectable mark is determined

on the basis of “priority of use in commerce.” That is, “the

party claiming ownership must have been the first to actually

use the mark in the sale of goods or services.” Rearden LLC

v. Rearden Commerce, Inc., 683 F.3d 1190, 1203 (9th Cir.

2012) (quoting Sengoku Works Ltd. v. RMC Int’l, Ltd.,

96 F.3d 1217, 1219 (9th Cir. 1996)); see also 15 U.S.C.

§ 1127 (determining when “a mark shall be deemed to be in

use in commerce”).

It is undisputed that SoCal was the first to use the

contested marks in its business-related dealings. However,

Zaffina offers a series of challenges to the conclusion that

SoCal, therefore, owns these marks. He argues that SoCal

lacks the capacity to own trademarks, that its use of its marks

in commerce has not been lawful, and that it has abandoned

its marks. None of these contentions is correct.

1. Capacity to Own Trademarks

The district court evidently assumed that SoCal has the

legal capacity to own trademarks. This assumption cannot

necessarily be inferred, however, from the fact that SoCal has

the capacity to sue. Rule 17(b)(3)(A) of the Federal Rules of

Civil Procedure allows unincorporated associations to

vindicate “substantive right[s] existing under the United

States Constitution or laws,” but it does not define or create

any substantive rights.

We hold that unincorporated associations do, indeed, have

the capacity to own trademarks. This conclusion is implicit

in our decision in Idaho’s High Desert. There, although we
S. CAL. DARTS ASS’N V. ZAFFINA 19

did not expressly address the issue, we upheld a judgment for

trademark infringement in favor of an unincorporated

association. See 92 F.3d at 820–23. We now expressly adopt

the implicit holding of Idaho’s High Desert.

Questions mayarise as towhetherspecific unincorporated

associations, particularly those operating not for profit, may

be said to be using their marks “in commerce.” See 15 U.S.C.

§ 1127 (determining when “a mark shall be deemed to be in

use in commerce”); Rearden, 683 F.3d at 1203 (“the party

claiming ownership must have been the first to actually use

the mark in the sale of goods or services”); Sengoku Works,

96 F.3d at 1219 (same). There is no reason, however, why

such questions in specific circumstances should preclude the

universe of unincorporated associations from owning

trademarks. As explained earlier, an unincorporated

association is “a voluntary group of persons, without a

charter, formed by mutual consent for the purpose of

promoting a common objective.” Idaho’s High Desert,

92 F.3d at 820 (quoting Local 4076, 327 F. Supp. at 1403).

An entity of this character may engage in commercial

activities, and may use names and marks in connection with

those activities. Cf. Am. Gold Star Mothers v. Nat’l Gold

Star Mothers, 191 F.2d 488, 489 (D.C. Cir. 1951) (stating that

“reputation and good will are as important to eleemosynary

institutions as they are to business organizations”); Purcell v.

Summers, 145 F.2d 979, 985 (4th Cir. 1944) (examining the

applicability of goodwill-related doctrines to religious and

charitable organizations).

Persuasive authority supports the rule endorsed implicitly

in Idaho’s High Desert. The Seventh Circuit has stated that

“[a]ny person, partnership, corporation, or unincorporated

association capable of holding title to personaltymay acquire
20 S. CAL. DARTS ASS’N V. ZAFFINA

the right to a trade mark.” U.S. Ozone Co. v. U.S. Ozone Co.

of Am., 62 F.2d 881, 885 (7th Cir. 1932). Other courts have

tacitly found that standard trademark law applies to the

trademark claims of unincorporated associations. See, e.g.,

Gen. Conference Corp. of Seventh Day Adventists v. McGill,

617 F.3d 402 (6th Cir. 2010); Third Educ. Grp., Inc. v.

Phelps, 675 F. Supp. 2d 916 (E.D. Wis. 2009); Birthright v.

Birthright Inc., 827 F. Supp. 1114, 1120 (D.N.J. 1993).

We hold, therefore, that unincorporated associations have

the capacity to own trademarks. Accordingly, the district

court’s assumption that SoCal has the capacity to own the

contested marks was correct.

2. Unlawful Use in Commerce

Zaffina argues that SoCal is not entitled to trademark

protection because its use of the marks in question has not

been “lawful.” He alleges that SoCal has neglected to

register as a corporation since 1977, and that it has violated

various laws, primarily tax laws.

We have held that “only lawful use in commerce can give

rise to trademark priority.” CreAgri, Inc. v. USANA Health

Sciences, Inc., 474 F.3d 626, 630 (9th Cir. 2007); see also

United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d

1219, 1225 (10th Cir. 2000) (discussing the “well-reasoned

proposition that shipping goods in violation of federal law

cannot qualify as the ‘use in commerce’ necessary to

establish trademark rights”). However, we explained in

CreAgri that unlawful conduct would not preclude trademark

protection if it was “immaterial,” namely if it was not “of

such gravity and significance that the usage [of the mark] . . .

as a matter of law, [can] create no trademark rights.” 
S. CAL. DARTS ASS’N V. ZAFFINA 21

474 F.3d at 633 (quoting Gen. Mills Inc. v. Health Valley

Foods, 24 U.S.P.Q.2d 1270, 1274 (T.T.A.B. 1992)). We also

noted that trademark protection might not be withheld on

account of unlawful conduct that is “collateral,” namely

where there is an insufficient nexus between the unlawful

behavior and the use of the mark in commerce. See id. at

631–33 (citing Satinine Societa in Nome Collettivo di S.A. v.

P.A.B. Produits et Appareils de Beaute, 209 U.S.P.Q. 958,

967 (T.T.A.B. 1981)).

As explained earlier, SoCal was properly found to be an

unincorporated association, and an unincorporated association

can own trademarks. Even assuming that SoCal unlawfully

failed to pay taxes, its misconduct would be unrelated to the

purpose of the federal trademark laws and, therefore,

collateral and immaterial. Cf. CreAgri, 474 F.3d at 630

(denying trademark protection to a company that had violated

federal law in becoming the first to use the mark in commerce

because to do otherwise would put the government in the

“‘anomalous position’ of extending the benefits of trademark

protection to a seller based upon actions the seller took in

violation of that government’s own laws”).

More significantly, Zaffina has offered only

unsubstantiated accusations of SoCal’s alleged illegal acts. 

SoCal does not dispute that it has remained unincorporated

for many years. However, this fact alone is not sufficient to

prove that it has acted unlawfully. Although SoCal may

have, at times, incorrectly presented itself as a corporation,

Zaffina presents no evidence to support his allegations of tax

violations or similar violations of law. There is, therefore, no

basis upon which a reasonable fact finder could conclude that

SoCal’s use of the contested marks has been “unlawful,” let

alone unlawful in a relevant way. Accordingly, there was no
22 S. CAL. DARTS ASS’N V. ZAFFINA

error in the district court’s determination that SoCal’s use of

the contested marks entitles it to trademark protection.

3. Abandonment

Next, Zaffina contends that SoCal has abandoned any

trademarks it once owned. Generally speaking, a mark is

abandoned “[w]hen its use has been discontinued with intent

not to resume such use.” 15 U.S.C. § 1127. Zaffina argues

that SoCal’s marks have been abandoned because “[t]he

defunct corporation has not legally been in business for over

35 years.” This argument is evidently premised on the theory

that an unincorporated association cannot own trademark

rights. As explained earlier, this theory is incorrect. Idaho’s

High Desert, 92 F.3d at 819–20, indicates that an

unincorporated association can own trademark rights, and we

now so find explicitly. There is, therefore, no evidence to

support the contention that SoCal abandoned its marks when

the corporate powers of the original SoCal corporation were

suspended or, indeed, at any other time.

D. Other Issues

Finally, Zaffina challenges the district court’s grant of

summary judgment on two grounds that are not tied to any

specific prong of SoCal’s Lanham Act claim.

1. Unclean Hands

Zaffina asserts that SoCal should be denied injunctive

relief on the basis of the doctrine that “[h]e who comes into

equity must come with clean hands.” Keystone Driller Co. v.

Gen. Excavator Co., 290 U.S. 240, 241 (1933). According to

Zaffina, this rule is applicable because SoCal has violated
S. CAL. DARTS ASS’N V. ZAFFINA 23

various laws and because it has neglected to register as a

corporation since 1977.

This argument is unmeritorious for reasons that

correspond to the flaws in Zaffina’s contention that SoCal’s

use of its marks in commerce has not been “lawful.” First,

and most crucially, the argument lacks a factual foundation.

Zaffina’s accusations to the effect that SoCal’s hands are

unclean are not supported by evidence. In addition, the

unclean hands doctrine would not be applicable even if

Zaffina’s allegations were properly supported. This doctrine

pertains only to misdeeds that have an “immediate and

necessary relation to the equity that [a plaintiff] seeks in

respect of the matter in litigation.” Keystone Driller Co.,

290 U.S. 240 at 245. “What is material,” in other words, “is

not that the plaintiff’s hands are dirty, but that he dirtied them

in acquiring the right he now asserts, or that the manner of

dirtying renders inequitable the assertion of such rights

against the defendant.” Republic Molding Corp. v. B. W.

Photo Utils., 319 F.2d 347, 349 (9th Cir. 1963); see Japan

Telecom, Inc. v. Japan Telecom Am. Inc., 287 F.3d 866, 870

(9th Cir. 2002). Because the misconduct alleged by Zaffina

does not bear any “immediate and necessary relation” to the

manner in which SoCal acquired its rights or to the equities

of this case, the unclean hands doctrine is inapplicable.

2. Evidence Considered

Zaffina also contends that the district court should not

have admitted into evidence a declaration prepared by Irete,

the president of SoCal’s board. The district court cited Irete’s

declaration several times in its SJ Order. Zaffina argues that

Irete’s declaration contains factual claims that exceed the

realm of Irete’s personal knowledge.
24 S. CAL. DARTS ASS’N V. ZAFFINA

“Evidentiary rulings are reviewed for an abuse of

discretion and should not be reversed absent some prejudice.” 

Defenders of Wildlife v. Bernal, 204 F.3d 920, 927–28 (9th

Cir. 2000); see McEuin v. Crown Equip. Corp., 328 F.3d

1028, 1032 (9th Cir. 2003). Zaffina has established neither

an abuse of discretion nor prejudice. Irete’s declaration was

cited by the district court in support of propositions that

appear to be undisputed. See also 28 U.S.C. § 2111

(appellate courts are to disregard “errors or defects which do

not affect the substantial rights of the parties”); Fed. R. Civ.

P. 61 (an error in admitting or excluding evidence is generally

not a ground for disturbing a judgment or an order). 

Therefore, this final contention, too, lacks merit.

V. CONCLUSION

We find no error in the district court’s entry of summary

judgment.

AFFIRMED.