                                                                           FILED
                           NOT FOR PUBLICATION                              MAR 11 2010

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




                            FOR THE NINTH CIRCUIT



CONSUMERINFO.COM, INC., a                        No. 08-56705
California corporation,
                                                 D.C. No. 2:07-cv-04275-SJO-E
             Plaintiff-counter-defendant -
Appellee,
                                                 MEMORANDUM *
  v.

MONEY MANAGEMENT
INTERNATIONAL, INC., a Texas
corporation,

             Defendant-counter-claimant -
Appellant.



CONSUMERINFO.COM, INC., a                        No. 09-55228
California corporation,
                                                 D.C. No. 2:07-cv-04275-SJO-E
             Plaintiff-counter-defendant -
Appellee,

  v.

MONEY MANAGEMENT
INTERNATIONAL, INC., a Texas
corporation,



        *
             This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
              Defendant-counter-claimant -
Appellant.



                    Appeal from the United States District Court
                        for the Central District of California
                     S. James Otero, District Judge, Presiding

                        Argued and Submitted March 3, 2010
                               Pasadena, California

Before: GOULD, IKUTA and N.R. SMITH, Circuit Judges.

      Money Management International (“MMI”) appeals a partial grant of

summary judgment and a partial grant of attorneys’ fees to ConsumerInfo.com,

Inc. (“ConsumerInfo”). We reverse, therefore vacating the award of attorneys’

fees, and remand for trial on the issue of prior use.

      We review de novo a district court’s grant or denial of summary judgment.

Universal Health Servs., Inc. v. Thompson, 363 F.3d 1013, 1019 (9th Cir. 2004).

We must determine, viewing the evidence in the light most favorable to the

nonmoving party, whether there are any genuine issues of material fact and

whether the district court correctly applied the substantive law. See Olsen v. Idaho

State Bd. of Med., 363 F.3d 916, 922 (9th Cir. 2004).

      In order to prevail on its trademark infringement and related claims,

ConsumerInfo must show that MMI’s mark is 1) “confusingly similar” to


                                           2
ConsumerInfo’s mark and 2) that ConsumerInfo’s mark is “valid [and]

protectable.” Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036,

1046 (9th Cir. 1999) (reciting the elements for trademark infringement); see

Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1153 (9th Cir. 2002)

(explaining that unfair competition claims are “substantially congruent” to

trademark infringement claims). The district court determined — and we agree —

that there is no genuine issue of material fact as to whether ConsumerInfo had

satisfied these prima facie elements.1

      MMI argued, both before the district court and on appeal, that it is shielded

from infringement due to its prior use of its mark. Under 15 U.S.C. § 1057(c), a

registered mark cannot be asserted against a person who used the otherwise

infringing mark in commerce before the priority date of the registered mark. In

order to constitute a valid prior use, the use must include “(1) an element of actual

use, and (2) an element of display.” Chance v. Pac-Tel Teletrac, Inc., 242 F.3d

1151, 1159 (9th Cir. 2001).




      1
        The district court found no dispute as to whether the marks were similar
either 1) because MMI admitted such was the case or 2), in the alternative, MMI
had failed to present evidence to rebut ConsumerInfo’s evidence on this point. As
to validity, ConsumerInfo’s registration is prima facie evidence of validity. See
Brookfield Commc’ns, 174 F.3d at 1047.

                                           3
      The district court impermissibly weighed evidence in determining there was

no genuine issue of material fact as to whether MMI’s use was sufficient to

constitute a prior use under Chance. Specifically, the district court found that 1)

there was no evidence that consumers actually received brochures which MMI

alleges constituted use in commerce of the mark “My Score+” and 2) that there

were essentially no sales under the mark. Contrary to the district court’s

conclusion, however, there is evidence in the record demonstrating that consumers

received these materials and demonstrating sales, prior to the priority date of

ConsumerInfo’s mark.

      MMI correctly points to the testimony of Jerry Radoff as suggesting that the

brochures did reach the hands of consumers. The district court did not credit this

testimony, finding that it was “undercut” by other testimony in the record. The

district court erred by weighing these potentially conflicting pieces of evidence

rather than viewing the evidence in the light most favorable to MMI.

      There are also emails in the record that tend to show consumers were

receiving MMI’s brochures in early 2002. While internal emails are alone

insufficient to establish a sufficiently public use of a mark, see id. at 1158 (citing

Brookfield Commc’ns, 174 F.3d at 1052), the emails contain assertions that the




                                            4
brochures were being distributed to the public. Thus, the emails tend to show that

MMI used its mark publically, not just internally.

        The district court did not credit evidence of actual sales by MMI under its

mark. MMI argues that, it presented a spreadsheet which — according to the

testimony of Charles Stanley — contained a record of numerous sales under

MMI’s mark. The district court found this record to be “unreliable” because the

spreadsheet itself did not reference MMI’s mark; thus the district court did not take

the spreadsheet into account. In making this determination the district court

improperly weighed evidence, discounting Stanley’s testimony. Viewing the

evidence in the light most favorable to MMI, this spreadsheet coupled with

Stanley’s testimony, tends to show sales under the mark.

        On summary judgment, viewing the evidence in the light most favorable to

MMI, we must conclude there is sufficient evidence to create a triable issue of fact

as to MMI’s use of its mark in commerce before the priority date of the registered

mark.

        Accordingly, we also vacate the district court’s order granting in part

ConsumerInfo’s motion for attorneys’ fees because ConsumerInfo is no longer the

prevailing party.




                                            5
     We REVERSE and REMAND the partial grant of summary judgment and

VACATE the award of attorneys’ fees.




                                       6
