Unreported / Non-Citable
Background
Scott Myers sued Fiatte Kang in federal court for trademark infringement under the Lanham Act, the main federal law protecting brand names and logos. Both were representing themselves without lawyers. Myers sold a chopstick-like eating utensil called “Chipsticks” and held a federal trademark registration for the name and logo. Kang independently sold a similar silicone tong-style utensil called “Chip-Stick.” Myers claimed Kang’s product and name were close enough to his registered mark that customers would mistakenly think they were buying his product.
The timeline mattered a great deal. Myers developed his product idea in high school and college, formed a company in October 2020, and filed an “intent-to-use” (ITU) trademark application with the U.S. Patent and Trademark Office on November 9, 2020 — before he had actually started selling. He began selling nationally on February 1, 2021, and his registration issued in November 2021. Kang, working separately, settled on her “Chip-Stick” name in January 2020, searched online in early 2020 to confirm no conflicts existed, worked with an overseas manufacturer through mid-2020, and made her first sale on October 15, 2020, later listing the product on Amazon the same day.
After Myers sent a cease-and-desist letter in December 2021, Kang stopped using her mark while the dispute played out, and Myers sued in January 2022. The case proceeded to a two-day bench trial (a trial decided by the judge rather than a jury) in December 2025, after which the court issued this written decision setting out its factual findings and legal conclusions, as required whenever a judge — rather than a jury — resolves a civil case at trial.
The Court’s Holding
The court ruled in Kang’s favor and dismissed Myers’ infringement claim entirely. The key legal principle: owning a federal trademark registration is strong evidence of your rights, but it is not the final word. Under long-standing Ninth Circuit law, trademark ownership ultimately belongs to whoever actually used the mark in commerce first — registration merely creates a presumption that the registrant has priority, and a competitor can overturn that presumption by proving an earlier bona fide sale.
Myers’ registration gave him a “constructive” first-use date of November 9, 2020 — the day he filed his ITU application — rather than the later date he actually started selling. But the court found, based on Kang’s credible trial testimony and supporting records (including a contemporaneous sales receipt and manufacturer communications), that she had already sold her Chip-Stick product in commerce on October 15, 2020 — three and a half weeks earlier. Because Kang’s bona fide commercial use predated Myers’ constructive use date, she — not Myers — held the superior claim to use the mark in that market, regardless of who registered first.
The court also rejected the idea that Kang had abandoned her rights by temporarily halting sales after receiving Myers’ cease-and-desist letter. Abandonment requires an intent to permanently stop using a mark, and pausing sales specifically to avoid litigation while protecting oneself is not that. Because Myers could not establish that he owned the mark with priority over Kang, his infringement claim failed on that threshold element alone — the court did not even need to analyze whether customers were likely to be confused, the issue most trademark disputes turn on.
Key Takeaways
- A federal trademark registration is powerful evidence of ownership, but it can still be defeated by a rival who proves earlier actual use of a similar mark in commerce.
- Filing an “intent-to-use” application locks in a constructive first-use date as of the filing date — not an earlier date, and not the date sales actually begin.
- Unregistered, common-law trademark users can out-rank a federal registrant if they have documented, continuous sales predating the registrant’s priority date.
- Temporarily pulling a product or mark from the market in response to a cease-and-desist letter does not amount to abandonment, so long as there is no intent to permanently stop using it.
- In a bench trial, witness credibility determinations by the judge — not just paperwork — can decide who wins, especially in a close factual dispute over who used a mark first.
Why It Matters
This case is a cautionary tale for small businesses and entrepreneurs who assume that registering a trademark guarantees exclusive rights. Registration creates a legal presumption of ownership, but it is rebuttable: a competitor who can show, with real evidence like receipts and manufacturer correspondence, that they sold under a confusingly similar name first will generally win a priority fight — even against someone who filed for registration earlier. Businesses launching new product names should keep dated proof of their earliest sales (receipts, invoices, shipping records, website archives) since that evidence, not just the registration certificate, is often what decides these disputes.
The decision also illustrates how federal courts handle bench trials: the judge must issue detailed findings of fact and conclusions of law so that the reasoning is transparent and reviewable on appeal. Here, because the threshold ownership question resolved the whole case, the court never reached the likelihood-of-confusion analysis that typically dominates trademark litigation — a reminder that infringement cases can be won or lost on foundational elements well before the more commonly discussed issue of consumer confusion.