F OR P UBLICATION



### UNIT E D ST AT E S CO URT O F APPE AL S FO R T H E NINT H CIRCUIT

S O U T H E R

N C A L I F O R

N I A D A R T S A S S O C I A T I O N , a California unincorporated association,

Plaintiff-Appellee
,

v

.

D I N O M. Z A

F F I N A , pro se, an individual, Defendant-Appellant
,

and

S O U T H E R

N C A L I F O R

N I A D A R T S A S S O C I A T I O N , I

N C ., a California corporation, Defendant

. N o. 13-55780

D.C. No. 2:12-cv-01899-R GK-J CG

OPI NI ON

A ppeal from the United States District Court for the Central District of California R. Gary Klausner, District J udg e, Presiding

Submitted December 20, 2013 *

F iled Aug ust 11, 2014

* T h e p an el u n an im o u sly co n clu d es th at th is case is su itab le f o r d ecisio n

w ith o u t o ral arg u

m en t. S ee Fed . R. A pp . P . 3 4 (a)(2 ).S. C A L

. D A R T S A S S ’ N V

. Z A F F I

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B e fore: Ronald M. Gould and Kim McL ane W a rdlaw, Circuit J u dg es, and Mark L . W olf, Senior District J udg e. * *

Opinion by

J udg e W o lf

SUMMARY * * *

Lanham Act

The panel affirmed the d istrict court’s entry of summary judg ment and issuance of a permanent injunction in an action broug ht under the L a

nham Act by

Southern California Darts Association.

The p anel affirmed the d i s t r ict court’s r uling s on threshold issues. I t hel d that the district court had subject
matter jurisdiction b ecause even thoug h Southern California D arts Association had not reg istered any trademarks, its claim arose under 15 U

. S

. C

. § 1125, a provision of the L anham Act that protects ag ainst infring ement o f unreg ister e d marks and trade dress as well as reg istered marks. The panel held that even thoug h Southern California Darts Association lacked the capacity to sue a s a corporation bec au s e i ts corporate powers h ad been suspended by the S t a t e o f C alifornia, it could bring suit in federal court as an

** T h e Ho n o rab le Mark L

. W o lf
, Sen i o r District J u d g e f

or th e Un ited States D istrict C o u rt f

o r th e District o f Massach u setts, sittin g b y d esig n atio n

.

*** T h is su

m m ary co n stitu

tes n o p art o f

th e o p in io n

o f th e co u rt. It h as b een p rep ared b y

co u rt staf

f f o r th e co n v en i en ce o f

th e read er.S. C A L

. D A R T S A S S ’ N V

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N A 3

unincorporated assoc i a tion f or the purpose of enforcing a substantive rig ht ex isting under the laws of the United States. T he panel also held that Southern California D a r t s Association had standi n g t o sue and that its motion for

sum mary judg ment w as properly served on defendant Dino M. Z affina.

The panel affirmed the district court’s summary judg ment in favor o f Southern California Darts Association on its claim that Z affina infring ed its t r a demarks. The panel h eld that the c ontested marks were protectable a s descriptive marks that had acquired secondar y m e aning and that Z a ffina’s use of the marks was likely to cause confusion. The panel a lso h eld that Southern California Dar t s Association owned the marks. I t held that u nincorporat e d associations have the capacity to own trademarks. I n addition, S o u t hern California Darts Association’s us e of the marks had been lawful, and it had not abandoned the marks.

F inally
, the panel rej e c ted Z affina’s arg uments that Souther n California Darts Association should be denied injunctive relief on the basis o f u n c lean hands and that the district c ourt erred b y adm i t ting a declaration into evidence.

COUNSEL

Dino M. Z affina, pro se, L os Ang eles
, California, for Defendant-Appellant.

J ames Kawahito and Timothy Patrick Hennessey
, Kawahito Shrag a & W estrick L L P, L os Ang eles, California
, for Plaintiff-Appellee.S. C A L

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OP INION

W O L F , Senior District J udg e:

The d istrict court e n tered summary judg ment for plain t i ffa p p e l l e e S o u t

hern California Darts Association (“SoC a l ” ) a n d issued a p ermanent injunction enjoining defendant-appellant Dino M. Z affina from u sing certain marks t hat have been used b y S o C al for several d ecades. W e have jurisdiction under 28 U.S.C. § 1291, and we affirm.

I

. B ACKGROUND

F or forty y ears or more, SoCal ha s p r o moted the competitive play o f the g ame of da r t s a n d has coordinated leag ue play of this g a me. F or a time, beg inning in the 1960s, members o f SoCal formed and ran a corporation na med “Southern California Darts Association, I nc.” (the “orig inal SoCal corporation”). T h e c orporate pow e r s of the orig inal SoCal corporation were suspended by the State of California in 1977, apparently for n onpay ment o f the corporate franchise
tax

. SoCal h as, for many y ears, u sed the following marks: its full name (“Southern California Darts Association”) ; t h e acrony m “ SCDA”; the nickname “ SoCal Darts”; and a log o featuring the org aniz ation’s full name and a dart board.

Z affina was once a member of SoCal. Z affina and SoCal feuded in J uly 2010 over whether Z affina’s middle initial would be used in S o C a l ’s w eekly scoring reports, a nd Z a ffina’s membership in SoCal came to an end. I t is unclear whether Z affina renounced his SoCal membership o r whether the o rg aniz ation ex pelled him. On J anuary 3
, 2011, Z affina

r eg istered with the State of California a corporation named S o uthern California Darts Association, I nc. (“SoCal I nc. ” ),S. C A L

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the same name once used by the orig inal SoCal corporation. Z a ffina a ppointed him s elf president and CEO of SoCal I nc. H e t h e n r e g i s t e r e d t h e i n t e r n e t d o m a i n n a m e www.southerncalifornia dartsassociation.com and beg an to use it to promote SoCal I nc.

I n Aug ust 2011, Z affina and S o Cal I nc. informed approx i mately three hundred darts-related b usinesses, b y email, of SoCal I nc.’s ex istence. These businesses included the so-called “host pubs” in which the events or ga n i z ed b y SoCal traditionally have been held. I n September of the same y ear, Z affina and SoCal I nc. sued multiple defendants in state court for hosting or p a rticipating in events while using SoCal’s name and other marks.

On March 6, 2012, SoCal broug ht suit ag ainst Z affina a nd SoCal I nc. in the United States District Court for the Central District of California. I n its comp l a i n t , SoCal alleg ed violations o f the L anham Act and the California B usiness a nd Professions Code, common law trademark infring ement, a nd

u n f air competition. SoCal a lso moved for a prelimin a r y injunction.

On April 23, 2012, the district court g ranted S o Cal’s motion for a p r eliminary injunction, and enjoined Z affina a nd SoCal I nc. from u sing SoCal’s marks, using URL s c ontaining these marks, and representing to the public that they have rig hts to these marks. See Apr. 2 3, 2012 Dist. Ct. Order (“PI Order”). On J une 22, 2012, the district court denied Z affina’s motion for reconsideration of its decision to issue a preliminary

injunction.

Z a f f i n a and SoCal I n c. filed interlocutory appeals from the d istrict court’s preliminary injunction. W hile t heseS. C A L

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appeals were pending , the following developments occurred in the district court.

On A ug ust 20, 2012, th e d i s t rict court allowed a motion to withdraw filed by SoC al I n c.’s counsel, Robert Racine, Esq. The c ourt ordered SoCal I nc. to retain new counsel within thirty day s. W hen S o C a l I n c. failed to do so, the district c ourt struck SoCal I nc.’s answer to the complaint a nd ordered default to enter ag a inst it.

On F ebruary 22, 2013, the district court g ranted SoCal’s motion for partial summary judg ment ag ainst Z a ff i n a o n its L an h am Act claim. Althoug h Z affina had not filed a n opposition to the motion for summary judg ment, the district court e x amined the motion on the merits, and found it meritorious. See F eb. 22, 2 013 D ist. Ct. Order (“SJ Order”). SoCal then moved to withdraw all of i ts additional c laims ag ainst Z a ffina.

On April 2
, 2013, the district court entered final judg ment ag ainst both defendants—ag ainst SoCal I nc. because of its default, and ag ainst Z affina on the basis o f t h e entry o f

s u m mary judg ment on SoCal’s L anham Act claim. T h e district c ourt vac a t ed its preliminary injunction and issued a pe rm anent injunction. The permanent injunction ag ain prohibited Z a ffina, as w ell as any associated businesses, from using SoCal’s marks, f

r om using URL s containing these marks, and f

r om r epresenting to the public that they have rig hts to these marks. I t a lso ordered Z affina to: file a notice discontin u i n g or chang ing SoCal I nc.’s corporate name, file cancel l a t ions of all fictitious business name reg istrations using SoCal’s marks, and d es t r o y o r turn over to SoCal all marketing products create d by Z affina for the purpose o f promoting SoCal I nc. I n addition, the district court fo u ndS. C A L

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Z a ffina and SoCal I n c. jointly and severally liable to SoCal in the amount of $115,705.28 plus costs. 1

The district court’s f

inal judg ment mooted the appeals from the preliminary injunction. Consequently
, o n A pril 25, 2013, we dismissed those appeals.

Z affina now appeals from the dist r i c t court’s Order entering summary judg ment ag ainst him, offering a series o f threshold challeng e s and several arg uments on the merits. 2

I I . STANDARD OF REVI EW

W e review the district court’s g rant of summary judg ment de novo

. See United States v. Arango
, 6 70 F .3d 988, 992 (9th Cir. 2012); Ha m b l e t on Bros. Lumber Co. v

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

Summary judg ment is appropriate if “the movant shows that there is n o g enuine dispute as to any material fact and the movant is entitled to judg ment a s a m a t t e r o f law.” F ed. R. Civ. P. 56(a); Celotex Corp. v. Catr e t t , 477 U .S. 3 17, 322

1 T h e d istrict co u rt su

b seq u en t ly g ran ted So Cal’ s m o t io n to h o ld Z af f in a i n co n tem pt f or f ailu re to co m

p ly w ith th e j u dg m en t (o n J u ly 17
, 2 0 1 3 )

an d i ts m o tio n to c o m

p e l co m p lian ce w ith th e co u rt’ s o rd er o f co n tem p t (o n Octo b er 1 6 , 2 0 1 3 ).

2 Za ff in a also ap p aren tly seek s to ren ew h is ch allen g es to th e d ist r i c t

co u rt’ s d ecisio n s to issu e a p relim in ary i n j u n ctio n a n d to d eclin e to

reco n sid er its p relim i n a r y in j u n ctio n

. A s w e ex p lain ed in o u r A p ril 2 5
, 2 0 1 3 Mem o ran du m Disp o s itio n , th e d i stri c t co u rt’ s p rio r o rd ers w ere

su p ersed ed b y th e en try of f in al j u d g m en t, an d can n o t n o w b e rev i s i ted

. S ee In re Esta te o

f Ferd in a n d Ma rco s Hu ma n Rig h ts Litig

. , 94 F.3 d 5 3 9
, 5 4 4 (9 t h Cir. 1 9 9 6 ).S. C A L

. D A R T S A S S ’ N V

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( 1 986). Viewing the facts in the lig h t most favorable to t h e nonmoving party , we must determine whether a g e nuine issue of material fact ex ists, and whether the district court applied the law c orrectly

. See F

o rt y u n e v. Am. Multi–Cinema, Inc.
, 364 F .3d 1075, 1080 (9th Cir. 2004).

An issue of fact i s “material” if it “mig h t affect the

o utcome o f the suit u nder the g overning law.” And e r s o n v. Liberty L o bby, Inc.
, 477 U.S. 242, 248 (1986); George v

. Morris
, 736 F.3d 829, 834 (9th Cir. 2013). A dispute is “g enuine” 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). E v i d e nce may be offered “to support o r dispute a f

act” on summary j u d gm ent only if it “ could be presented in an admissible form at trial.” Fraser v. G oodale
, 342 F

. 3 d 1032, 1036–37 ( 9th Cir. 2 003); F ed. R. Civ. P. 56(c)(2).

I I I . THRESHOL D I SSUES

Z affina presents four threshold chal l e n ge s to the district court’s entry of summ a r y j udg ment. He arg ues that the district court lacked subject-matter jurisdiction, that SoCal lacks the capacity

to sue, that SoCal lacks standing
, and that Z a ffina was n ot proper l y s e r ved with SoCal’s motion for summary judg ment. These contentions are not correct.

A. Jurisdiction

Z affina first c halleng e s the district court’s subject-matter jurisdiction. H e arg ues that SoCal’s suit involves no question of federal law, because i t i m p licates neither common-law trademark r ig h ts nor statutory trademark rig hts. I t does notS. C A L

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implicate c ommon-law trademark rig hts, according to Z a ffin a, because “there is no f ederal common law o f trademark infring ement

. ” A ppellant’s B r. at 8–9 (quoting Toho Co., Ltd. v. Sears

, R o ebuck & Co.
, 645 F .2d 788, 791 (9th Cir. 1981)). SoCal’s s u it also does not implicate statutory trademark rig hts, Z affina arg ues, because SoCal has not reg istered any

of the contested marks.

This a r g ument misapprehends the a pplicable law. The L anham A ct, 15 U.S.C. ch. 22, gr a n ts the f ederal district courts orig inal jurisdiction over al l actions arising under it. See 15 U .S.C. § 1121(a). Another statute gr a n t s the district courts jurisdicti o n o ver “any c ivil action a rising under any Act o f Cong r ess relating to patents, plant variety protection, copy rig hts and trademarks.” 28 U.S.C. § 1338(a).

The pertinent part of SoCal’s co m p l a i n t is based on the provision of the L anham Act codified a t 15 U.S.C. § 1125. This section, u nlike certain other L an h a m Act provisions, “protects ag ainst infring ement of unreg ist e r e d marks a nd trade dress as well a s reg istered marks.” Brookfield Co m m c’ n s , Inc. v. W

. Coast Entm’t Corp.
, 174 F

. 3d 1036, 1046 n.8 (9th Cir. 1999); Two Pesos, Inc. v

. T a co Cabana, Inc.
, 505 U.S. 763, 768 (19 9 2). The elements of a c ause o f action under this p r ovision, which a re discussed below, do not include reg istration.

SoCal’s claim does arise u nder the L anham Act, therefore
, n otwithstanding the fact that SoCal has not reg istered any trademarks. According ly
, the district court did have jurisdiction over SoCal’s claim p ursuant to 15 U .S.C. § 1121 and 28 U.S.C. § 1338.S. C A L

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B

. Capacity to Sue

Z affina’s second t h r e shold arg ument is that SoCal lacks the capacity to sue. As noted earlier, the corporate powers o f the orig inal SoCal c orporation were suspended in 1977, apparently because it f ailed to p a y the state corporate franchise tax

. Z affina contends that SoCal is, therefore, a “delinquent corporation” that lacks the ca p acity to sue. He also asserts t h a t under California law, a person conducting business under a fictitious business name may only sue once he has reg istered that name.

W e have indeed held that, under California law, a delinquent corpor a t ion whose powers have been suspended “may n ot bring suit an d may not defend a leg al action.” United S tates v

. 2.61 Acres of Land
, 791 F .2d 666, 6 6 8 ( 9 th Cir. 1985). However, California law is not dispositive in the present circumstances.

Capacity to sue in federal court is g overned by Fe d e ra l R u le of Civil Procedure 17(b). Under this Rule, a n individual’s capacity to sue is determined by “the law of the individual’s d omicile”; a corporati o n’s capacity to sue is determined by “the law under which it was o rg aniz ed”; a nd the c apacity of “all o ther p arties” to sue is determined by “the l a w o f the state where the court is located.” F ed. R. Civ. P. 17(b)(1), (2), (3). There a re two ex ceptions to Rule 17(b)(3), however. The f

irst of these e x c eptions is relevant in the

c u r r ent case. Rule 17(b)(3)(A) states that a “partnership o r other unincorporated association” tha t lacks the c apacity to

sue under the law of the state in which the c ou r t i s l o c ated “may sue o r be sued in its c o mmon name t o e n f orce a substantive rig ht ex isting under the United St a t e s C o n s t i t

u t i o n or laws.”S. C A L

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The d istrict court addressed SoCal’s capacity to sue in its PI Order. F o r the purpose of its analy sis, the district court assumed that SoCal is, i n e ssence, the same entity as the orig inal SoCal corporation. See PI Order at 3 n.2. T h e court correctly r ecog niz ed, however, that even on this assumption, the suspension of the orig inal c o r poration’s powers does not necessarily ex ting uish SoC al’s capacity to pursue federal claims in federal court.

This conclusion follows from our previ ous decisions in Comm. for Idaho’s High Desert, Inc. v. Y ost , 9 2 F .3d 814 (9th Cir. 1996), and Sierra Ass’n for E nv’t v. FERC
, 744 F

. 2 d 661 (9th Cir. 1984). I n b oth of those cases, corporations whose powers h ad been suspended u nder California law broug ht suit in federal court. Idaho’s High Desert involved a “non-profit

e n v ironmental education and advocacy org aniz ation” t h a t h a d “forfeited its c orporate charter

. . . for f ailure to file an annual report.” 92 F .3d at 817, 819. Our decision in Sier r a Ass’n includes less f

actual d etail, but the circumstances o f that case

a p p ear to have been analog ous to those of Idaho’s High Desert

. See 744 F

. 2d at 662.

I n both c ases, a

pply ing F ederal Rule of Civil Procedure 17(b), we treated the p l a i n t i f f s a s unincorporated a ssociations. W e ex plained that an “unincorporated association” is “a volu n t ary g roup of persons, w ithout a charter, formed b y mutual consent for the purpose of p romoting a c o mmon objective.” Idaho’s High Desert
, 92 F .3d at 82 0 ( q uoting Local 4076, U

n i t e d Steelworkers v. United Steelworkers, AFL CIO
, 327 F

. Supp. 1400, 1403 (W .D. Pa. 197 1 ) )

. W e h eld that as unincorporated a ssociations, the plaint i f fs in those

cases were permitted to “sue in federal co urt, reg ardless o f [ their] capacity to sue under the law of the state in which the court sits, w hen [ they were] suing ‘for the purpose o fS. C A L

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enforcing

. . . a substantive rig ht ex isting under the

. . . laws of the U nited States.’” Idaho’s High Desert
, 9 2 F .3d at 819–20; see Sierra A ss’n
, 744 F .2d at 662; see a l s o 1 J

. Thomas McCarthy
, McCarthy on Trademarks and Unfair Competition § 9:11 (4th ed. 2014).

I n i t s P I Order, the district court ex pressly found that SoCal is an org aniz ation formed by the consent of individuals who share a common ca use a nd, therefore, is an unincorporated association. See PI Order at 2

. The district court applied Idaho’s High D es e r t a n d Sierra Ass’n to the facts of this case a n d determine d correctly that, notwithstanding the suspension of the corporate powers o f the orig inal SoCal corporation, SoCal should now be classified

as an unincorporated association. Se e id. The district court implicitly relied on this reasoning i n its SJ Order. The evidence d oes not p lace in g enuine dispute the district court’s factual finding s, and its leg al conclusion was not wrong as a matter of law. See Idaho’s High D esert , 92 F .3d at 820 (“F o r purposes of Rule [ 17(b)(3)(A)]
, the det e r m ination of what constitutes an ‘unincorporated association’ is a question o f federal law.”). T he district court was, therefore, c orrect in concluding that SoCal had the capac i t y t o bring its L anham Act claim, at least, in federal court.

C. Standing

Z affina also contends that SoCal l a cks standing to sue, arg uing that SoCal “is not the real party in interest.” Rather, according to Z affina, SoCal is a “straw plaintiff,” and the real party in interest is David L

. I r ete, the current president o f SoCal’s board.S. C A L

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This arg ument is not meritorious. I rete may be personally concerned w i th, and may have p ersonally contributed to, SoCal’s litig ation. The interests of non-natural leg al persons commonly overlap with t he interests of their officers a nd stakeholders. The fact that the intere s ts of other parties a re implicated b y a suit does not deprive an unincorporated association of standing

. “A plaintiff has standing if he o r she has alleg ed a ‘personal stake’ in the liti ga t i o n ‘to justify

ex e r cise of the court’s remedial powers on his behalf.’” State of Nevada Employees’ Ass’n, I n c

. v

. Bryan
, 916 F .2d 1384, 1391 (9 t h C i r. 1990) (quoting Vill. of Arlington Heights v

. Metro. Hous. Dev. Corp.
, 4 29 U.S. 252, 261 (1977)). SoCal has, throug h its a ge n t s, asserted a “personal” stake in this
case, nam ely the fact that its trademarks h ave been misappropriated. As we have p reviously held, “ownership o f

an unreg istered trademark

. . . is suffici e n t to establish standing under the L anham Act.” Hali c k i F ilms, LLC v

. Sanderson Sales & Mktg.
, 5 47 F .3d 1213, 1226 (9th Cir. 2008). Z affina’s contention that SoCal lacks standing to sue is, therefore, without merit.

D. Service of Process

F inally
, Z affina c ontends that SoCal’s m o t i o n for summary judg ment w a s n o t properly served o n him. SoCal served the motion, by

messeng er, at the address provided by Z a ffina to the district court. Z affina arg ues, however, that the motion was delivered to “the ‘receptionist’ o f t he larg er office” at t h at a ddress, and that that receptionist “is not affiliated with Z affina, [ SoCal I nc.]
, or any of [ Z a f f i n a ’s] other businesses.” Z affina a dmittedly received S o Cal’s motion by email on J anuary 22, 2013, one month befo r e the district c ourt ruled o n t h e m o tion. However, he had notS. C A L

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consented to service b y electronic means. See F e d. R. Civ. P. 5(b)(2)(E).

W e have held that even where the p a rty to be served received “ actual notice” o f the documents in question
, the serving party must “demonstrate ex c e ptional g ood cause for f a i l i n g to comply with Rule 5(b).” Magnuson v. Vide o Y e steryear , 8 5 F .3d 1424, 1431 (9th Cir. 1996). S o C al d id not fail to comply with Rule 5(b), however. A motion may be served b y various methods tha t may n ot be used to serve a

summons. Compare F ed. R. Civ. P. 4(e), with F ed. R. Civ. P. 5(b)(2). Among other methods, a litig ant may serve a motion b y “ l e a v ing it at [ a] person’s o ffice with a clerk or other person in charg e or, if no o n e i s in c harg e, in a c onspicuous place in the office.” F ed. R. Civ. P. 5(b)(2)(B )(i).

I n the circumstances, the r e c eptionist at the business address that Z affina had p rovided to the d i s trict court is reasonably deemed to be a “clerk or other p erson in c harg e” for the p urposes of receiving d ocuments

. SoCal, therefore, properly effected service of its moti o n w h en its messeng er delivered the motion to this r eceptionist. I ts service was not deficient even if it is assumed tha t , f o r some reason, the motion was not ultimately c onvey ed to Z affina. See a lso F ed. 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 challeng e to the district court’s Order is, therefore, also not meritorious.S. C A L

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I V. MERI TS

The district court’s e n try o f summary judg ment was based

on SoCal’s L anham Act c l a i m , under 1 5 U.S.C. § 1125(a). This provision states, in part, that:

Any p erson who, on or in connection with any g oods or services

. . . uses in co m m e rc e any word, term, name, sy

mbol, or d evice, or any combination thereof

. . . which

. . . is likely to

cause c onfusion

. . . shall b e liable in a civil action . . . .

I n o r d e r to prevail on a suit under this provision, a p laintiff must prove two basic elements: “(1) it h as a valid, protectable trademark, and (2) [ the defendant’s] use of the mark is likely to cause confusion.” Applied I nfo. S ciences Cor

p

. v

. eBAY

, Inc.
, 511 F .3d 966, 969 (9th Cir. 2007); see Dep’t of Parks & Recreation v. Bazaar D el Mundo I nc. , 44 8 F .3d 1118, 1124 ( 9 t h C ir. 2006). T he first of these basic e lements is comprised of two sub-parts: the mark’s p rotectability and the plaintiff’s ownership of the mark.

Therefore, S o C a l is entitled to summary judg ment if the facts that a

re not g enuinely disputed demonstrate: (a) that the contested marks are protectable; ( b ) that SoCal o wns these

m a r k s; and (c) that Z affina’s u se o f these marks is likely t o

cause confusion. W e b eg in our analy sis w ith the first a nd third of these elements, to which the district co u rt g ave careful attention.S. C A L

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A. Protectability

W h ether a mark is protectable depends on it s d e gr e e o f “distinctiveness.” See Z o b mondo Entm’t, LLC v. Falls Media, LLC
, 602 F .3d 1108, 1113 (9th Cir. 2010). There a re five traditional categ o r ies of distinctiveness: “(1) g eneric, (2) descriptive, (3) sug g estive, (4) arbitrary , or (5) fanciful.” Id. (citing Two P e s o s , 505 U.S. at 768). Generic marks a re not elig i b l e f

or trademark protection. See Entrepreneur Media, Inc. v. Smith
, 279 F

. 3d 1135, 1141 (9th C i r

. 2 0 0 2 ). Descriptive marks become protectable if they a c q u ire a “secondary meaning ,” by becoming distinctive “as used on o r in co n n ection with the a pplicant’s g oods in commerce.” 15 U.S.C. § 1052(f); see Two Pesos
, 505 U.S. at 769. Sug g estive, arbitrary
, and fanciful marks are automati c ally protectable. See id. a t 768; Zobmondo Ent m ’t
, 602 F .3d at 1113.

The d istrict court, e vidently c a teg oriz i n g SoCal’s marks

as “descriptive,” found that these marks h a v e a c quired a “secondary meaning

. ” See SJ Order at 4. The court based this finding , among other thing s, on SoCal’s “acclaim in the darts community .” Id

. The court also noted Z affina’s admission, i n documents presented by SoCal, that he h ad “deliberately appropriated SoCal’s Marks precisely because of their strong reputation in th e d arts c ommunity as being associated with SoCal.” Id. ( citing Idaho’s H i g h D e sert , 92 F .3 d at 823 (“Proof of ex act c o p y ing
, without any opposing proof, can be suffic i e n t t o establish a secondary meaning .”)). Z af

f i n a does not appear to challeng e these finding s on appeal, and we find them to be correct.S. C A L

. D A R T S A S S ’ N V

. Z A F F I

N A 17

B

. Likelihood of Confusion

The second element o f S o Cal’s claim analy zed b y the district court, likelihood of confusion, addresses “whether the similarity of the marks is likely to confuse c ustomers ab o ut the source of the products” or services. E. & J. Gallo W inery

v. Gallo Cattle Co.
, 967 F. 2 d 1 280, 1290 ( 9th Cir. 1992). Eig ht factors are weig

hed to determine whether confusion is likely : (1) the streng th of t h e m a rk; (2) the prox imity o f the g oods; (3) the similarity of the marks; (4) evidence of actual confusi o n ; ( 5 ) the marketing channels used; ( 6) the ty pe o f g oods and the deg ree o f care likely to be ex er c i s e d by the purchaser; ( 7) th e defendant’s intent in selecting the mark; and (8) the likelihood o f ex pansion of the product lines. See AMF Inc. v

. Sleekcraft Boats
, 599 F .2d 341, 348-49 ( 9th Cir. 1979); E ntrepreneur Media
, 279 F

. 3d at 1140. N o sing le factor is determinative. Rather, “[ i] t is the totality of facts in

a g iven case that is d ispositive.” Rodeo Collection, Ltd. v

. W

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

The district court c o nducted a c a reful likelihood-ofconfusion analy sis. The court addressed the eig ht Sleekcraft factors, and found, among other thing s, that the parties’ marks

are “identical in appearanc e, sound, and meaning ,” that the p a rties “ offer identical services,” that the parties use

over l a p p ing c hannels for marketing and advertising
, that Z a ffina intentionally selected h is marks to ca p i t a liz e on SoCal’s reputation, and that at least o ne third party h ad actually been c onfused by Z a ffina’s use of the contested marks. The court c o ncluded that Z affina’s use of S o C a l ’s marks is likely to c ause confusion. This concl u s i o n is also not apparently challeng ed o n appeal, and we find it, too, to be correct.S. C A L

. D A R T S A S S ’ N V

. Z A F F I

N A 18

C. Ownership

A party ’ s ownership of a protectable mark is determined

on the basis of “priority of use in c o m m e r c e

. ” That is, “the party c laiming ownership must have been the first to actually use the mark in the sale of g oods or services.” Rearden LLC

v. R earden Commerce, Inc.
, 683 F .3d 1190, 1203 ( 9th Cir. 2012) (q u o ting Sengoku W orks Ltd. v

. RMC Int’l, Ltd.
, 96 F .3d 1217, 1219 (9th Cir. 1 996)); see also 1 5 U .S.C. § 1127 (determining when “a mark shall be deemed to be in use in commerce”).

I t i s undisputed that SoCal was the first to use t h e

c o n t e sted marks in its business-related dealing s. Howeve r, Z a ffina o f

f e rs a series of challeng es to the conclusion that SoCal, therefore, owns these marks. He arg ues that SoCal lacks the c apacity to own trademarks, that its use of its marks in commerce h as not been lawful, and tha t it has abandoned its marks. None of these contentions is correct.

1. Capacity to Own Trademarks

The dis trict c ourt e vidently assumed that SoCal has the leg al capacity to own trademarks. This ass u m p tion cannot necessarily be inferred, however, from the fact that SoCal has the capacity to sue. Rule 17(b)(3)(A) of the F ederal Rules o f Civil Procedure a llo w s unincorporated associations to vindicate “substantive rig ht[ s] ex isting under the United States Constitution or laws,” but i t d o es not define o r c reate any substantive rig h ts.

We h o l d t h at unincorporated associations do, indeed
, h a v e the capacity to own trademarks. This c o n c l usion is implicit in our d ecision in Idaho’s High D esert

. There, althoug h weS. C A L

. D A R T S A S S ’ N V

. Z A F F I

N A 19

did not ex pressly address the issue, we upheld a judg ment for trademark infring ement in f avor o f an unincorporated association. See 92 F .3d at 820–23. W e now ex pressly adopt the implicit holding of Idaho’s High Desert

. Questions may arise a s to w h e t h e r specific unincorporated associations, particularly those operating not f o r p rofit, 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 comme r c e ” ) ; Rearden
, 683 F .3d at 1203 ( “the party claimin g o w nership must have been the first to actually use the m a rk in the sale o f g o ods o r services”); Sengoku W orks
, 96 F .3d at 1 219 (same). There i s no reason, however, why such questions in specific circumstances should preclude the universe of unincorpor a t e d associations from owning trademarks. As ex plained earl i e r , an unincorporated association is “a v oluntary g r ou p of persons, without a

c h a r t er, f ormed by mutual consent for the purpose of promoting a c ommon objective.” Idaho’s High Desert
, 92 F .3d at 820 (quoting Local 4076
, 3 2 7 F. S u pp. at 1403). An entity of this character may e n ga ge 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 g ood will are as important to eleemosy nary institutions as they a

r e to business org aniz ations”); P u rcell v

. Summers
, 145 F

. 2d 979, 985 (4th Cir. 1944) (ex amining the ap p licability of g oodwill-related doctrines to relig ious a nd charitable org aniz ations).

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 personalty may acquireS. C A L

. D A R T S A S S ’ N V

. Z A F F I

N A 20

the rig ht 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 f ound that standard trademark law appli e s to the
tr a d e m ark claims o f u nincorporated associations. See, e.g. , Gen. Conference Corp. of Seventh Day Adventists v. M cGill
, 617 F

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

. Phelps
, 675 F

. Supp. 2d 916 (E.D. W is. 2009); B irthright v

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

. 1993).

W e hold, therefore, that unincorporated associations have the capacity to own trademarks. According ly
, t h e d i s trict court’s assumption that SoCal h as the capacity to own the contested marks was correct.

2. Unlawful Use in Commerce

Z affina a rg ues that SoCal is not e n t i t l ed to trademark protection because its use of the marks in qu e s t i on has not been “lawful.” H e alleg es that SoCal has neg le c t e d to reg ister a s a corporation since 1977, and that it has v iolated various laws, primarily

tax laws.

W e have h eld that “only lawful use in commerce can g ive rise to trademark priority .” CreAg r i

, I nc. v. USANA Health Sciences, I

nc. , 474 F .3d 626, 630 (9th Cir. 2007); see also United Phosphorus, Ltd. v. Midland F u migant, Inc.
, 205 F .3d 1219, 1225 (10th Cir. 2000) (di scussing the “well-reasoned proposition tha t shipping g oods in violation o f federal law cannot qualify as t h e ‘ use in commerce’ necessary to establish trademark rig hts”). However, w e ex p lained in CreAgri that unlawful conduct would n ot preclude trademark pro t e c t i o n if it was “ immaterial,” n amely if it was not “of such g ravity and sig nificance that the u sag e [ of the mark]

. . . as a matter of law, [ can] create no trademar k rig h ts.”S. C A L

. D A R T S A S S ’ N V

. Z A F F I

N A 21

474 F .3d at 633 (quo t i n g Gen. Mills Inc. v. Health Valley Foods
, 2 4 U.S.P.Q.2d 1 270, 1274 (T.T.A.B

. 1 992)). W e also noted that trademark protection mig ht not be wi t hheld on account of unlawful conduct that is “collateral,” namely where there is an insuff

i c ient nex us between the unlawful behavior and the use o f t h e mark in commerce. See id. at 631–33 (citing Satinine Societa in Nome Collettivo di S.A. v

. P.A.B. Produits et Appareil s de Beaute
, 209 U.S.P.Q. 958, 967 (T.T.A.B . 1981)).

As e x plained earlier, SoCal was properly found to be an

u n i n c o r p o r a t e d a s sociation, and an unincor p o r a t e d a s s o c i a

t i o n

can own trademarks. E v e n assuming that SoCal unlawfully failed to pay tax e s, its misconduct would be unrelated to the purpose of the fed eral trademark laws and, therefore, collateral and immaterial. Cf

. C r e Agri
, 474 F .3d at 630 (deny ing trademark protection to a company that had v iolated federal law in becoming the first to use the mark in commerce because to do otherwise would put the g ove rnment in the “‘anomalous p osition’ of ex tending the benefits of trademark protection to a seller based upon act i o ns the seller took in violation of that g overnment’s own laws”).

More sig nificantly
, Z affina has of fered only unsubstantiated a c c u sations of SoCal’s alleg ed illeg al acts. SoCal does n ot d ispute that it h as remained unincorporated for many y ears. However, this fact alone is not sufficient to prove that it has a cted unlawfully

. Althoug h SoCal may have, at times, incorrectly present e d itself as a corporation, Z a ffina presents no evidence to support his alleg ations of tax violations o r 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

. According ly
, there was noS. C A L

. D A R T S A S S ’ N V

. Z A F F I

N A 22

error in the district c o urt’s determination that SoCal’s use o f the contested marks entitles it to trademark protection.

3. Abandonment

Nex t, Za f

fina contends that SoCal has abandoned any tra d e m arks it once o wned. Generally speaking
, a mark is abandoned “ [ w] hen its use has been d iscontinued with intent not to resume such use.” 15 U.S.C. § 1127. Z affina arg ues that SoCal’s marks have be en abandoned because “[ t] he defunct corporation has not leg ally b een in business for over 35 y ears.” This arg ument is evidently premised on the theory that an u nin c orporated association cannot own trademark rig hts. A s ex plained earlier, this theory is incorrect. Idaho’s High Desert
, 92 F .3d at 819–20, in dicates that an unincorporated association can o w n trademark rig hts, and we

n o w so find ex plicitly

. There is, therefore, no evidence t o support the contention that SoCal abandoned its marks when the corporate powers of the orig inal SoCal corporation were suspended or, indeed, at any other time.

D. Other Issues

F inally
, Z affina challeng es the district co u r t’s g rant o f

s u m m a ry judg ment on two g rounds that are not tied to any specific prong

of SoCal’s L anham Act claim.

1. Unclean Hands

Z affina asserts t h at SoCal should b e 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 Z a ffina, this rule is a

pplicable because SoCal h a s viola t e dS. C A L

. D A R T S A S S ’ N V

. Z A F F I

N A 23

various laws and because it has neg lected to reg ister as a corporation since 1977.

This arg ume n t i s unmeritorious for r easons that correspond to the f

laws in Z affina’s contention that SoCa l ’s

use of its marks in co m m e r c e has not been “lawful.” F irst, and most crucially
, the arg ument lacks a factua l f o u ndation. Z a ffina’s accusations to the effect that SoCal’s h a nds a re unclean a r e not supported by evidence. I n addition, the unclean hands doctrine would not be ap p l i c a b le e ven if Z a ffina’s alleg ations were p roperly supported. This doctrine pertains only to misdeeds that h ave an “imme diate a nd necessary relatio n t o t h e e q uity that [ a plaintiff] seeks in respect of t h e m a tter in litig ation.” Keystone D riller Co.
, 290 U.S. 240 at 2 45. “W hat is material,” in other words, “ is not that the plaintiff’s hands a r e dirty
, but that he dirtied them in acquiring the rig ht he now asserts, or that the manner o f dirty ing r enders inequitable the asse r tion of such rig hts ag ainst the defendant.” Republic Moldi n g C o rp. v. B. W

. Photo U tils.
, 319 F .2d 347, 349 (9th C i r

. 1963); see Japan Telecom, Inc. v . Japan Telecom Am. Inc.
, 287 F .3d 866, 870 (9th Cir. 2 002). B ecause the mis co n duct alleg ed by Z affina does not bear any “ immediate and necessary relation” to the

manner in which SoCal a c q u ired its rig hts or to the equities of this case, the unclean hands doctrine is inapplicable.

2. Evidence Considered

Z affina also c o n tends that the d istrict court should not have admitted into evidence a declaration prepared b y I r e t e , the president of SoCal’s board. The district court cited I rete’s declaration several times in its SJ Order. Z affina arg ues that I r e te’s declaration contains factual claims that ex c eed the realm of I rete’s personal knowledg e.S. C A L

. D A R T S A S S ’ N V

. Z A F F I

N A 24

“Evidentiary ruling s are reviewed for an a b u s e o f discretion and should not be r eversed absent some prejudice.” D efenders of W

ildlife v. Bernal
, 2 0 4 F .3d 920, 927–28 ( 9 t h Cir. 2000); see McEuin v. Crown E q uip. Corp.
, 3 28 F .3d 1 0 28, 1032 (9th Cir. 2003). Z affina has established neit h e r

an abuse of discretion nor prejudice. I rete’s declaration was cited by the d istri c t court in support of propositions that appear to be undisputed. See als o 2 8 U.S.C. § 2111 (appellate courts are to disreg ard “errors or defects which do not affect the substantial rig hts of the parties”); F ed. R. Civ. P. 6 1 (an error in admitting or ex cluding e vidence is g enerally not a g r ound f

or disturbing a judg ment o r an order). Therefore, this final contention, too, lacks merit.

V. CONCL USI ON

W e find no error in the district court’s entry of summary judg ment.

AF F IRMED.