Jenco, LC, and Dean Gardner Investment, LC v. Valderra Development, LLC, et al.

Summary

The United States District Court for the District of Utah grants in part and denies in part Defendants’ motion for summary judgment in a trademark dispute concerning use of the “The Ledges of St. George” word mark and logo. The decision addresses summary-judgment evidentiary objections and the parties’ rights and authorization to use the marks in connection with a master-planned real estate community.

Holdings

1. At summary judgment, evidence need not be submitted in a form admissible at trial, but the content or substance of the evidence must be admissible. Conclusory, self-serving assertions unsupported by admissible facts cannot alone create a genuine dispute of material fact.
2. Summary judgment on the trademark claims was inappropriate because, even assuming an unreasonable delay, a genuine dispute existed as to whether defendants suffered material prejudice.
3. Summary judgment on the trademark claims was inappropriate because a genuine dispute existed as to whether defendants suffered material or undue prejudice, an element of acquiescence.
4. Defendants were not entitled to summary judgment on their unclean-hands defense because the record did not establish as a matter of law that plaintiffs acted inequitably toward the public or defendants in relation to the trademarks.
5. The trademark assignment was not shown as a matter of law to be an impermissible assignment in gross, so summary judgment was denied on that defense.
6. Plaintiffs could not prevail on their Utah Truth in Advertising Act claim for injunctive relief because they did not provide the statutory notice of an alleged Act violation and an opportunity to publish a corrective notice.
7. Plaintiffs could not maintain their damages claim under the Utah Truth in Advertising Act without first providing the statutory notice required before filing suit.
8. Summary judgment was denied on the unfair-competition and tortious-interference claims because the court did not dispose of the underlying trademark claims.

Questions Presented

1. Whether defendants were entitled to summary judgment on plaintiffs’ federal and common-law trademark claims based on laches.
2. Whether defendants were entitled to summary judgment on the trademark claims based on acquiescence.
3. Whether plaintiffs’ conduct supported summary judgment on an unclean-hands defense.
4. Whether the assignment of the trademarks was an impermissible assignment in gross because plaintiffs did not acquire control of the homeowners association.
5. Whether plaintiffs satisfied the Utah Truth in Advertising Act’s presuit notice requirement for injunctive relief.
6. Whether plaintiffs could seek damages under the Utah Truth in Advertising Act without satisfying the statutory notice requirement.
7. Whether plaintiffs’ unfair-competition and tortious-interference claims failed because they depended on allegedly defective trademark claims.

Disposition

other