Southern California Darts Assn v. Dino M. Zaffina

FOR PUBLICATION

UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

SOUTHERN CALIFORNIA DARTS No. 13-55780
ASSOCIATION, a California
unincorporated association, D.C. No.
Plaintiff-Appellee, 2:12-cv-01899-R
GK-JCG
v.

DINO M. ZAFFINA, pro se, an OPINION
individual,
Defendant-Appellant,

and

SOUTHERN CALIFORNIA DARTS
ASSOCIATION, INC., a California
corporation,
Defendant.

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 summary judgment for plaintiff-
appellee Southern 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, apparently for 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 States Constitution
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 advocacy organization” 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
“secondary meaning,” 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-of-
confusion 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 may arise as to whether specific 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 personalty may 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.