(“Solid Gold”), which had operated the club on Howard Street in San Francisco since the mid-1990s.GCSF claimed it owned prior common law rights in the GOLD CLUB mark and lion-and-spear design in San Jose based on continuous use in commerce in nine-counties surrounding the San Francisco Bay Area since 1994.There also were questions regarding whether Solid Gold randomly chose THE GOLD CLUB and design, given that it was “strikingly identical to the name and mark of Gold Club-Atlanta.” GCSF made a showing of serious questions going to the merits of its trademark infringement and related claims, but it did not establish likelihood of success on its claims, the court determined. GCSS also did not sufficiently show a likelihood of irreparable harm.
Serious questions of material fact precluded deciding which party had priority in the GOLD CLUB mark and the geographic area of any prior common law rights. In 2004, the plaintiff, Gold Club-SF, LLC, purchased the San Francisco “Gold Club” (“GCSF”) from Solid Gold, Inc.
Rather, the gravamen of the dispute centered on ownership rights and the scope of protection.
GCSF plausibly could have a common-law trademark for “GOLD CLUB” dating to 1995.
PML argued that it was the legal owner of THE GOLD CLUB marks and that the GCSF was infringing on its marks, because the oral license Goodman granted to Solid Gold in 1995 was not transferrable.
PML alternatively argued that the doctrine of license estoppel barred GCSF’s claims.