To sustain a cause of action for unfair competition in the use of a tradename justifying the issuance of an injunction, the plaintiff must prove:  During prior, continuous use of plaintiff's name or mark plaintiff's tradename has acquired a secondary meaning;  thereafter defendant used and is using a tradename which, under all of the circumstances, the purchasing public is likely to confuse with the plaintiff's name or mark, and  by reason of the deceptive appearances, the public is likely to identify the defendant's product as that of the plaintiff or to conclude that the plaintiff has some connection with the production of the defendant's goods or services.
Cowles Magazines & Broadcasting, Inc. v. Elysium, Inc., 255 Cal. App. 2d 731, 733 (1967); see Cal. Bus. & Prof. Code §§14200 et seq. (California’s Model State Trademark Law) & 17200, et seq. (California’s Unfair Competition Statute).
Under California law and general common law, there are three categories of terms which are afforded trademark or trade name protection: (1) fanciful or arbitrary terms, (2) suggestive terms, and (3) descriptive terms. A substantial difference exists between the protection afforded the first two categories and that afforded the third category. While a term is immediately protectable if found to be arbitrary or fanciful, or suggestive, [d]escriptive terms are not protected without proof of secondary meaning.
T Shirts Plus v. T-Shirts Plus, Inc., No. 82-1783-WMB, 1983 U.S. Dist. LEXIS 13717, at *11-12 (N.D. Cal. Sept. 15, 1983).
With regard to trademark dilution:
Plaintiff must show the following to establish dilution: (1) plaintiff owns valid registrations of the . . .marks; (2) defendants’ marks are a colorable imitation of plaintiff’s marks; (3) defendants’ use was without plaintiff’s consent; (4) plaintiff’s marks is distinctive or has acquired secondary meaning; and (5) defendants’ mark threatens to dilute the distinctiveness of the . . . mark, or tarnish its reputation.
E. & J. Gallo Winery v. Pasatiempos Gallo, S.A., 905 F. Supp. 1403, 1416 (E.D. Cal. 1994); see also Franklin Mint Co. v. Manatt, Phelps & Phillips, LLP, 184 Cal. App. 4th 313, 334 (2010).
CALIFORNIA STATE COURTS
Supreme Court of California: Academy of Motion Picture Arts & Sciences v. Benson, 15 Cal. 2d 685, 690 (1940).
California 1st District: North Carolina Dairy Foundation, Inc. v. Foremost-McKesson, Inc., 92 Cal. App. 3d 98, 109-10 (1979).
California 2d District: Tomlin v. Walt Disney Productions, 18 Cal. App. 3d 226, 236 (1971); Cowles Magazines & Broadcasting, Inc. v. Elysium, Inc., 255 Cal. App. 2d 731, 733 (1967).
California 3d District: In re Marriage of Shelton, 118 Cal. App. 3d 811, 814-15 (1981).
California 4th District: Visser v. Macres, 214 Cal. App. 2d 249, 253-54 (1963).
California 5th District: None .
California 6th District: None.
CALIFORNIA FEDERAL COURTS
United States Court of Appeal for the 9th Circuit: Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988).
Central District: Phillip Morris USA Inc. v. Shalabi, 352 F. Supp. 2d 1067, 1072-73 (C.D. Cal. 2004); Brookfield Communs. v. W. Coast Entm't Corp., No. CV98-9074 CM (AJWx), 1999 U.S. Dist. LEXIS 23247, at *8-9 (C.D. Cal. Sept. 8, 1999).
Eastern District: Coach, Inc. v. Sac a Main, No. 1:12-cv-00840-LJO-SMS, 2012 U.S. Dist. LEXIS 159907, at *6-7 (E.D Cal. Nov. 7, 2012).
Northern District: California Sec. Alarms v. Escobar’s Sec. Plus Alarm Systems, Inc.., No. C-95-3749 MMC, 1996 U.S. Dist. LEXIS 14913, at *7 (N.D. Cal. Sept. 30, 1996); T Shirts Plus v. T-Shirts Plus, Inc., No. 82-1783-WMB, 1983 U.S. Dist. LEXIS 13717, at *11-12 (N.D. Cal. Sept. 15, 1983).
Southern District: West Coast Corvettes, Inc. v. MV Mktg., No. SACV 12-0269 DOC(RNBx), 2012 U.S. Dist. LEXIS 187094, at *18-19 (S.D. Cal. Dec. 13, 2012).