ORDER GRANTING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT [Dkt. No.128]

DEAN D. PREGERSON, District Judge.

Presently before the court is Defendant Indio Products, Inc. ("Indio")'s Motion for Summary Judgment. Having considered the submissions of the parties and heard oral argument, the court grants the motion and adopts the following Order.

I. Background

A. Factual History

Plaintiff Mercado Latino, Inc. ("Mercado") began manufacturing candles in 1991. Mercado is headquartered in Southern California, which is its largest market, but also sells products nationwide. Mercado sells three tiers of prayer candles. Sales of Mercado's highest-priced "Sanctuary Series" candles run in the millions annually, as they have since the launch of the product in 1991. Mercado also sells the "Carisma" line of candles, its lower-tier candles that are sold at dollar-type stores (e.g. 99 Cents Only). Customers for Mercado's Sanctuary Series candles include Target, Walmart, and other big chains, as well as independent markets and boutiques.

Defendant Indio Products, Inc. ("Indio") also manufactures and sells multiple lines of prayer candles, including the allegedly infringing Templar line and the non-accused, higher-end Eternalux line, which is sold at a higher price point than the Templar line. Indio began selling the Templar line of candles in 2012. Indio has not sold the Eternalux and Templar candles to the same stores because the two lines serve different prayer candle sub-markets. Templar candles are generally sold to dollar-type stores, with 99 Cents Only stores accounting for 80% of all Templar candle sales.

Some of Mercado's Sanctuary Series candles bear the Asserted Sanctuary Series Trade Dress ("ATD"), which is comprised of "a clear cylindrical container that is approximately 2.25 x 2.25 x 8.0 inches in length, width and height, filled with a solid, single color wax, the clear cylindrical container has an opaque die-cut label with two opposite sides — a `front' and `back'. The front side of the die-cut label has a silhouette outlined by a black border with a top portion that tapers together and forms a pointed tip that resembles a `bullet' shape, with segments of shapes in varying and alternating sizes and colors, similar to a stained glass window. Placed over that label is a depiction of a saint or other religious icon. Directly beneath the depiction of the saint or religious icon, (sic) is a separate segment on the label that resembles a scroll with the name of the saint or religious icon." (SAC at ¶12.) Some Sanctuary series candles, however, do not bear the Asserted Trade Dress. Indeed, some Sanctuary Series candles bear no label at all.1 Indio's Templar candles have the same dimensions as Sanctuary Series candles, and are also in a clear cylindrical glass jar with an opaque label bearing an image of a religious figure and religious décor and prayers.

B. Procedural History

Mercado's initial Complaint alleged causes of action for copyright infringement, trade dress infringement, and other claims, as did Mercado's First Amended Complaint ("FAC"). The FAC alleged trade dress featuring "the unique combination of the following design elements: a depiction of a saint or religious icon, with a border that appears to be a `bullet' shape in the style of a stained glass window and the name of the saint or the religious icon underneath the depiction." (FAC ¶ 21.) The SAC's allegations regarding trade dress are more extensive, as set forth above.

Indio moved for judgment on the pleadings. (Dkt. 79.) This Court denied the motion, concluding that (1) Mercado's SAC alleged the ATD with sufficient specificity, (2) although the SAC asserts a product design claim rather than a packaging claim, a question of fact remained regarding whether the ATD had acquired secondary meaning, (3) factual questions remained with respect to functionality, and (4) questions of fact remained regarding Mercado's adequately-pleaded likelihood of confusion allegations. (Dkt. 95.) Indio now moves for summary judgment on all claims.

II. Legal Standard

Summary judgment is appropriate where the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show "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). A party seeking summary judgment bears the initial burden of informing the court of the basis for its motion and of identifying those portions of the pleadings and discovery responses that demonstrate the absence of a genuine issue of material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). All reasonable inferences from the evidence must be drawn in favor of the nonmoving party. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 242 (1986). If the moving party does not bear the burden of proof at trial, it is entitled to summary judgment if it can demonstrate that "there is an absence of evidence to support the nonmoving party's case." Celotex, 477 U.S. at 323.

Once the moving party meets its burden, the burden shifts to the nonmoving party opposing the motion, who must "set forth specific facts showing that there is a genuine issue for trial." Anderson, 477 U.S. at 256. Summary judgment is warranted if a party "fails to make a showing sufficient to establish the existence of an element essential to that party's case, and on which that party will bear the burden of proof at trial." Celotex, 477 U.S. at 322. A genuine issue exists if "the evidence is such that a reasonable jury could return a verdict for the nonmoving party," and material facts are those "that might affect the outcome of the suit under the governing law." Anderson, 477 U.S. at 248. There is no genuine issue of fact "[w]here the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party." Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986).

It is not the court's task "to scour the record in search of a genuine issue of triable fact." Keenan v. Allan, 91 F.3d 1275, 1278 (9th Cir. 1996). Counsel have an obligation to lay out their support clearly. Carmen v. San Francisco Sch. Dist., 237 F.3d 1026, 1031 (9th Cir.2001). The court "need not examine the entire file for evidence establishing a genuine issue of fact, where the evidence is not set forth in the opposition papers with adequate references so that it could conveniently be found." Id.

III. Discussion

A. The Product Design "Issue"

As an initial matter, Plaintiff argues that this Court's prior conclusion regarding Plaintiff's product design claim, as opposed to a packaging claim, was merely "passing dicta" and a "passing comment." (Opposition at 4:1, 5.) Plaintiff further asserts that, notwithstanding any "inelegancies" in its pleadings, it "has always preserved that it viewed and intended to assert its Trade Dress as a product packaging claim, [and] clarifies that it does not intend to `expand' its present claim of trade dress `to the candle itself,' but rather, only the enveloping label or packaging." (Opp. at 4:12-15; 6:25.) This claim is untenable.2

First, this Court's discussion of the product design issue was hardly a "passing comment." As stated in the court's Order Denying Defendant's Motion for Judgment on the pleadings, "The distinction [between product design and product packaging] is important because product design trade dress can never be inherently distinctive, and therefore always requires a showing of secondary meaning to support a claim of infringement." (Dkt. 95 at 6.) This Court further explained that Plaintiff's ATD could not possibly be considered a packaging claim, given that the ATD includes essential physical aspects such as a cylindrical container and solid, single-colored wax. (Dkt. 95 at 7.)

Second, Plaintiff's characterization of its product design allegations as mere "inelegancies" of a pleading intended to assert a packaging claim strains belief. Plaintiff's decision to expand its claimed trade dress to include product design features appears to have been the product of a deliberate decision, as evinced by the differences between the Second Amended Complaint's comprehensive description of the ATD and the First Amended Complaint's comparatively limited trade dress allegations. Indeed, the SAC, unlike the FAC, specifically highlights "clear 2.25x2.25.8 cylindrical container" and "filled with solid color wax" as infringing elements of Indio's trade dress. (SAC ¶ 23.) Third, and furthermore, Plaintiff never sought reconsideration of this Court's product design determination, nor sought leave to amend the SAC's trade dress allegations. Plaintiff's belated "request" for leave to amend, such as it is, made in passing within Plaintiff's opposition to the instant motion, is denied. (Opp. at 7:3-5.)

B. Secondary Meaning

Trade dress is the "total image of a product, including features such as size, shape, color, texture, and graphics[.]" Millennium Labs., Inc. v. Ameritox, Ltd., 817 F.3d 1123, 1126 (9th Cir. 2016) (internal quotation and citations omitted). A plaintiff bringing a trade dress claim must prove "(1) that its claimed dress is nonfunctional; (2) that its claimed dress serves a source-identifying role[,] either because it is inherently distinctive or has acquired secondary meaning; and (3) that the defendant's product . . . creates a likelihood of consumer confusion." Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1258 (9th Cir. 2001). As discussed above, because this is a product design case, Plaintiff must prove that the ATD has acquired secondary meaning. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 216 (2000).

"A product's trade dress acquires secondary meaning when the purchasing public associates the dress with a single producer or source rather than just the product itself." First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987). "Secondary meaning can be established in many ways, including (but not limited to) direct consumer testimony; survey evidence; exclusivity, manner, and length of use of a mark; amount and manner of advertising; amount of sales and number of customers; established place in the market; and proof of intentional copying by the defendant." Filipino Yellow Pages, Inc. v. Asian Journal Publ'ns, Inc., 198 F.3d 1143, 1151 (9th Cir.1999).

Indio argues that Plaintiff cannot point to sufficient evidence to create a triable issue regarding secondary meaning. The most persuasive evidence of secondary meaning is an expert survey of purchasers. Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989). Plaintiff asserts, without any citation to the record, that it conducted a "consumer survey, which provides compelling evidence" of secondary meaning. (Opp. at 11:17-18.) As Plaintiff acknowledged at argument, however, the report to which Plaintiff refers did not attempt to gauge whether consumers associate the trade dress with a single source. Rather, the survey was designed "to test whether the appearance of the Indio Templar candles creates a likelihood of confusion to the Sanctuary Series trade dress." (Declaration of Hal Poret in support of Opposition, Ex. A at 4.) Although some evidence, such as evidence of actual confusion, might bear on both likelihood of confusion and secondary meaning, Plaintiff has cited no authority for the proposition that a survey geared toward consumer confusion can be used to demonstrate secondary meaning. See Transgo, Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985).

Plaintiff also claims that it has other direct evidence of secondary meaning, pointing to the declaration of Kirk Zehnder, Plaintiff's Vice President of Business Development. Zehnder conclusorily asserts that "consumers have come to associate our . . . trade dress with us as a uniform source . . . ." (Zehnder Decl. ¶ 26.) Although Zehnder also states that "dozens if not hundreds" of consumers contact Plaintiff every year to ask for Sanctuary Series products, that fact is insufficient to create a triable issue regarding secondary meaning, as not all Sanctuary Series products bear the Asserted Trade Dress. Furthermore, none of the consumer inquiries attached to Zehnder's declaration, even those asking for Sanctuary Series candles by name, identify the ATD. (Declaration of Janice Marinelli, Ex. A1 at 50:17-51:1, 91:9-19; Ex. A2 at 40-41; 72; Zehnder Decl., Ex. 14.) Indeed, some of the consumer inquiries cited by Zehnder explicitly ask for candles that do not bear the trade dress.3 (See, e.g., Zehnder Decl., Ex. 14 at 79 ("I am looking for the White candles you make[.] Just the plain glass.") There is, therefore, no direct evidence that the ATD has acquired secondary meaning.

Indirect evidence, such as evidence of sales, advertising, and exclusivity of use, may also be used to prove secondary meaning. Filipino Yellow Pages, 198 F.3d at 1151. The focus, however, must be on the effectiveness of the plaintiff's efforts. First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987). Plaintiff first argues that it has been using the ATD exclusively since 1991. (Opp. at 12:8-11.) The evidence Plaintiff cites, however, does not support that assertion. The portion of the declaration of Mercado Vice President Richard Rodriguez to which Plaintiff cites makes no reference to length of use or exclusivity. (Declaration of Richard Rodriguez in opposition to motion, ¶ 10.) Although Rodriguez does elsewhere state that Mercado began selling Sanctuary Series products in 1991 and has done so continuously since then, there is no indication of when Sanctuary Series products began featuring the ATD, what proportion of the Sanctuary Series products bore the ATD, or whether any use of the ATD was exclusive. (See Rodriguez Decl., ¶ 64.) The only other evidence cited by Plaintiff is a portion of the Zehnder declaration, which says no different, and indeed refers back to the Rodriguez declaration. (Zehnder Decl. ¶ 25.) No reasonable trier of fact could rely on this evidence to find either length or exclusivity of use of the Asserted Trade Dress.

Mercado next argues, again largely without citation to the record, that it has produced evidence of marketing and promotional efforts sufficient to create a triable issue as to secondary meaning. (Opp. at 12.) Evidence of advertising activities can indeed be relevant, provided that the advertising features the trade dress itself and is extensive enough to effectively create an association with the advertiser's product. See Art Attacks Ink, LLC v. MGA Entm't Inc., 581 F.3d 1138, 1146 (9th Cir. 2009); First Brands, 809 F.2d at 1383; see also Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 824 (9th Cir. 1993) ("While evidence of a manufacturer's sales, advertising and promotional activities may be relevant in determining secondary meaning, the true test of secondary meaning is the effectiveness of this effort to create it."). Here, however Plaintiff's own evidence establishes that Plaintiff never itself undertook any advertising efforts. Instead, Plaintiff used "advertising allocation," or an allowance to retailers who would themselves promote and advertise the "Sanctuary Series line."4 (Rodriguez Decl., ¶ 26). Although Plaintiff's declarants state that retailers promoted Sanctuary Series candles for at least twenty years, the record includes only three examples of such advertisements.5 These consist of two supermarket circulars and one black-and-white coupon, all three of which do appear to display the Asserted Trade Dress. (Rodriguez Decl., Ex. 7.) There is, however, no indication of where or how many copies of these advertisements were distributed, or for how long. See Cont'l Lab. Prod., Inc. v. Medax Int'l, Inc., 114 F.Supp.2d 992, 1001 (S.D. Cal. 2000). Furthermore, although these advertisements do bear images of the trade dress, they can hardly be said to "feature" the ATD. All three examples display Sanctuary Series candles alongside between one and a dozen food products. The advertisements all identify the product only as "Religious Candles" or "Candle(s)," and none makes any mention of the "Sanctuary Series" product line.6 These examples, even coupled with Rodriguez's testimony that mass retailers did some kind of advertising of Sanctuary Series products, are insufficient to establish that Mercado's (or its retail customers') advertising efforts effectively linked the Asserted Trade Dress with a single source.7

Lastly, Plaintiff argues that evidence that Defendant copied the Asserted Trade Dress creates a triable issue of fact regarding secondary meaning. The Ninth Circuit has stated that "proof of copying strongly supports an inference of secondary meaning." Vision Sports, 888 F.2d at 615. The cases upon which Vision Sports relied, however, specified that "[p]roof of exact copying, without any opposing proof, can be sufficient to establish a secondary meaning." Transgo, 768 F.3d at 1016 (emphasis added). As the Transgo court explained, under such circumstances, there would be no reason to copy other than to capitalize upon pre-existing secondary meaning. Id. Subsequently, however, the Ninth Circuit recognized that a party might copy trade dress for other reasons, particularly where trade dress includes functional features. See Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826 F.2d 837, 844 (9th Cir. 1987). For that reason, evidence of even deliberate copying does not create a presumption of secondary meaning. Id.

Here, Plaintiff does not assert that there is any evidence of exact copying. Rather, Plaintiff points, without any citation to the record, to the "striking similarity" of the two trade dresses as evidence of deliberate copying.8 (Opp. at 13.) Even assuming such evidence exists, it is not sufficient to demonstrate secondary meaning. The Vision Sports line of cases does not address trade dress claims based upon product design. As the Continental Laboratory Products court explained, the rather circular logic that copying is evidence of secondary meaning because a copier wouldn't copy unless a trade dress had already acquired secondary meaning is less persuasive in the product design context. Cont'l Lab. Prod., 114 F. Supp. 2d at 1009-10. Indeed, notwithstanding Vision Sports, the Ninth Circuit has recognized that an alleged infringer might copy a trade dress for functional reasons, wholly apart from any desire to deceive consumers as to the origin of a product. Fuddruckers, 826 F.2d at 844; Cont'l Lab. Prod. 114 F. Supp. 2d at 1010. Thus, as the Continental Laboratory Products court stated, "intentional copying supports a finding of secondary meaning only where the defendant intended to confuse consumers and pass off its product as the plaintiff's." Cont'l. Lab. Prod., 114 F.Supp. 2d at 1010. There is no evidence of such intent here.9

None of the evidence cited by Plaintiff is sufficient to establish, either directly or indirectly, that consumers associated the Asserted Trade Dress with a single source. In the absence of evidence of secondary meaning, Plaintiff's trade dress infringement claim must fail.

C. Functionality

Trade dress is presumed to be functional. 15 U.S.C. § 1125(a)(3); TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 30 (2001). A plaintiff alleging trade dress infringement must, therefore, prove that its claimed dress is non-functional. Clicks Billiards, 251 F.3d at 1258. "[O]rnamental, incidental, or arbitrary" trade dress is not functional. Id. A product feature is functional, however, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage." Disc Golf Ass'n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998). A plaintiff's burden to show non-functionality is, therefore, heavier in the product design context. Red Star Traders, LLC v. Abbyson Living Corp., No. CV 16-02781 AB (KSX), 2016 WL 9108405, at *4 (C.D. Cal. June 22, 2016) (citing Samara Bros., 529 U.S. at 212).

Plaintiff correctly observes that, as with other elements of a trade dress claim, the functionality analysis looks to the overall combination of trade dress elements rather than to individual elements. See Clicks Billiards, 251 F.3d at 1259. Functionality is a question of "(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture. Disc Golf Ass'n, 158 F.3d at 1006. Plaintiff's entire functionality argument makes only a single (and general) citation to evidence of the existence of other prayer candles that do not bear the Asserted Trade Dress. (Marinelli Decl., Ex. A-7.) The existence of such candles does, indeed, support the contention that alternative designs are available.

Plaintiff totally ignores, however, evidence pertinent to other factors. Defendant points to evidence, submitted by Plaintiff, that one purpose of devotional candles is to "indulge" the religious figure depicted, and that because candles are "part of the church," they "must have images that are respected" so as to function as "a little altar in the house." (Zehnder Decl., Ex. 1 at 23-24.) Although Plaintiff now attempts to dismiss the idea that devotional candles are used to pray to the depicted religious figure as merely an "amusing assertion," other evidence in the record indicates that Plaintiff not only shared that view, but promoted its products as particularly well-suited to that purpose. (Opp. at 17:25.) Plaintiff's interrogatory responses stated that the Asserted Trade Dress was intended to simulate "light shining through stained glass windows in cathedrals," and Plaintiff's own product information sheets explained, "When burned, Sanctuary Series simulate the effect of light shining through a stained glass window." (Marinelli Decl., Ex. 5 at 100; Ex. 12 at 38.) This evidence directly contradicts Plaintiff's unsupported assertion that the Asserted Trade Dress is merely suggestive, evocative, or fanciful. (Opp. at 17:27.)

Trade dress "need only have some utilitarian advantage to be considered functional." Disc Golf Ass'n, 158 F.3d at 1007. Regardless whether other candle designs might also serve to invoke or honor a particular figure or function as an altar or other approximation of a church inside a home, the undisputed evidence shows that the Asserted Trade Dress is particularly well-suited to that purpose, and that Plaintiff promoted that utilitarian advantage. Accordingly, Plaintiff cannot meet its burden to demonstrate that its Asserted Trade Dress is non-functional.10

D. Trademark Infringement

Plaintiff's SAC also alleges a cause of action for trademark infringement under the Lanham Act, 25 U.S.C. § 1114. Plaintiff alleges that Defendant passed its candles off as Mercado candles by selling Mercado candles in Indio boxes. (SAC ¶ 35.) In 2012, Vallarta supermarkets began to sell Indio's Eternalux candles. (Declaration of Pooya Bahktiari ¶ 55.) Because Vallarta only wanted to sell one line of prayer candles, Indio agreed to "buy back" all of Vallarta's remaining stock of Mercado Candles. (Id.) Indio removed loose candles from Vallarta shelves and placed them in shipping boxes. (Id. ¶ 57.) Indio then sold those boxes to closeout vender Vernon Sales. (Id.)

Indio argues that Mercado's trademark rights in the candles at issue were extinguished as soon as Mercado sold the candles to Vallarta. (Mot. at 21-22.) Under the first sale doctrine, "the right of a producer to control distribution of its trademarked product does not extend beyond the first sale of the product." Sebastian Int'l, Inc. v. Longs Drug Stores Corp., 53 F.3d 1073, 1074 (9th Cir. 1995). Although Mercado asserts that triable issues of fact remain regarding its trademark claim, Mercado cites to no law or facts to support that assertion or its suggestion that some exception to the first sale doctrine applies. It is true that in some cases, where there is a likelihood of downstream confusion, the first sale doctrine may not apply. See Au-Tomotive Gold Inc. v. Volkswagen of Am., Inc., 603 F.3d 1133, 1136-38 (9th Cir. 2010). Here, however, there is no evidence that Vernon Sales, or anyone else, was confused about the nature or origin of the bought-back candles, or that any other potential exception to the first sale doctrine would apply. Accordingly, Defendant is entitled to summary judgment on the trademark infringement claim.

IV. Conclusion

For the reasons stated above, Defendant's Motion for Summary Judgment is GRANTED.11

IT IS SO ORDERED.