Gathering Tree, LLC v. Symmetric Labs, Inc.

Background

Gathering Tree sought default judgment under Federal Rule of Civil Procedure 55(b)(2) against Symmetry Labs, Inc., doing business as Symmetry Labs. Symmetry did not appear, answer the operative complaint, or oppose the motion.

Gathering Tree alleged that it oversaw the financing, design, construction, and installation of the Tree of Ténéré, a large illuminated sculpture. It alleged that Symmetry had worked as a subcontractor on the project, later took a tree branch from storage without permission, installed the branch in its San Francisco office, and refused to return it. Gathering Tree also alleged that Symmetry claimed exclusive creative credit, made unauthorized reproductions for sale, and filed a trademark application for the Tree of Ténéré name.

The complaint asserted claims for trademark registration cancellation under the Lanham Act and for unfair competition, intentional interference with prospective economic advantage, and conversion under California law.

Court’s analysis

The court determined that it had federal-question jurisdiction over the Lanham Act claims and supplemental jurisdiction over the related California claims. It also found personal jurisdiction over Symmetry and adequate service of the complaint and summons.

For the trademark-related claims, the court explained that Gathering Tree had to show both that its trademark was valid and protectable and that Symmetry’s mark was confusingly similar. The court found the similarity requirement satisfied because Symmetry marketed the same tree involved in the project. But Gathering Tree did not adequately show that it owned the trademark. In particular, it did not provide sufficient allegations or evidence that it had used the mark in commerce—that is, in selling or advertising goods or services. The court also noted that the Services Agreement was not in the record, the agreement’s reference to ownership did not clearly identify the relevant intellectual-property rights, and the parties’ alleged oral amendments concerning creative credit were not explained. The court found substantial questions about trademark ownership and the possibility of a factual dispute, and it noted that Symmetry’s registered trademark carried a presumption of validity.

For conversion, the court found that Gathering Tree adequately alleged ownership or the right to possess the physical branch, Symmetry’s wrongful control over it, and resulting damages. The complaint, invoices, and storage-payment allegations supported the conclusion that Gathering Tree owned the physical tree and that Symmetry took the branch and refused to return it.

Disposition

The court’s conclusion states that Gathering Tree’s motion for default judgment was DENIED IN PART and GRANTED IN PART. The motion was granted as to conversion, and the court awarded $31,249.66 to replace the stolen branch. The motion was denied without prejudice as to the Lanham Act claims, the California unfair competition claim, the intentional-interference claim, and the trademark-registration-cancellation claim. The court stated that Gathering Tree could refile a motion on the remaining causes of action with sufficient evidence within 30 days.