                                                                           FILED
                            NOT FOR PUBLICATION                             MAR 19 2013

                                                                        MOLLY C. DWYER, CLERK
                    UNITED STATES COURT OF APPEALS                       U .S. C O U R T OF APPE ALS




                            FOR THE NINTH CIRCUIT



SOLID 21, INC., a Nevada Corporation             No. 11-56439
headquartered in Los Angeles, California,
                                                 D.C. No. 2:11-cv-00457-GAF-
              Plaintiff - Appellant,             PLA

  v.
                                                 MEMORANDUM *
BREITLING USA, INC., a Connecticut
Corporation and BREITLING SA, a Swiss
Corporation,

              Defendants - Appellees.



                    Appeal from the United States District Court
                       for the Central District of California
                     Gary A. Feess, District Judge, Presiding

                       Argued and Submitted March 7, 2013
                              Pasadena, California

Before: WARDLAW and GOULD, Circuit Judges, and WOLF, Senior District
Judge.**




        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
       **
             The Honorable Mark L. Wolf, Senior District Judge for the U.S.
District Court for the District of Massachusetts, sitting by designation.
      Solid 21, Inc. (Solid 21) appeals the district court’s dismissal of its claims

against Breitling USA, Inc. and Breitling SA (collectively, Breitling) pursuant to

Federal Rule of Civil Procedure 12(b)(6).1 We have jurisdiction under 28 U.S.C.

§ 1291, and we reverse and remand.

      The district court erred in dismissing Solid 21’s claims with prejudice under

Rule 12(b)(6) for failure to state a claim. Solid 21 has alleged in its complaint and

submitted supporting documentation indicating that its “Red Gold” mark is

registered in accordance with the Lanham Act. Solid 21’s federal registration of its

trademark constitutes prima facie evidence of the mark’s validity, 15 U.S.C.

§ 1057(b), entitles Solid 21 to a “strong presumption” that the mark is not generic,

Zobmondo Entm’t, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010)

(quoting KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596,

604 (9th Cir. 2005)), and shifts the burden to Breitling to show “by a

preponderance of the evidence” that the mark is not protectable, id. at 1114 (citing

Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 783 (9th Cir. 2002); Vuitton et Fils

S.A. v. J. Young Enters., Inc., 644 F.2d 769, 775-76 (9th Cir. 1981)); accord Yellow

Cab Co. of Sacramento v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 928 (9th


      1
         Solid 21 does not challenge the district court’s dismissal of its claims
related to its unregistered claimed trademark in the gold alloy with an amber hue
that it uses in its products (“the Color Mark”).

                                           2
Cir. 2005). Our precedent makes clear that the presumption of validity is difficult

to overcome, even at the summary judgment stage. See Zobmondo, 602 F.3d at

1115 (“[T]he presumption of validity is a strong one, and the burden on the

defendant necessary to overcome that presumption at summary judgment is

heavy.”).

      Breitling’s contention that the mark is, in fact, generic is an attempt to

introduce evidence to rebut the complaint, which is impermissible at the motion to

dismiss stage.2 While a court may consider judicially noticeable facts in resolving

a motion to dismiss, see, e.g., Colony Coves Props., LLC v. City of Carson, 640

F.3d 948, 955 (9th Cir. 2011), the inquiry under Rule 12(b)(6) is into the adequacy

of the pleadings, not the adequacy of the evidence.

      The parties’ pending requests for judicial notice on appeal are DENIED.



      2
        Breitling argues strenuously on appeal that the presumption of a registered
mark’s validity is a “bursting” presumption—in other words, that once any
contrary evidence of invalidity is presented, the presumption loses all evidentiary
significance. However, the cases to which Breitling cites for this proposition,
Talking Rain Beverage Co. v. South Beach Beverage Co., 349 F.3d 601 (9th Cir.
2003) and Tie Tech, Inc., 296 F.3d 778, merely recognize that the presumption of
validity is rebuttable and may not be sufficient in and of itself to preclude summary
judgment. Talking Rain, 349 F.3d at 603; Tie Tech, 296 F.3d at 783; cf. Zobmondo
Entm’t, LLC, 602 F.3d at 1118 (noting that, on remand, the trier of fact must
measure competitor Zobmondo’s evidence of third party use of a mark “against the
presumption of validity afforded to Falls Media’s registered mark and against any
other evidence of distinctiveness that Falls Media has proffered”).

                                           3
REVERSED AND REMANDED.




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