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Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. DE C.V.

United States District Court, D. Columbia.

September 25, 2014

PALETERIA LA MICHOACANA, INC. et al., Plaintiffs & Counter-Defendants,
v.
PRODUCTOS LACTEOS TOCUMBO S.A. DE C.V., Defendant & Counter-Claimant

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For Paleteria LA Michoacana, Inc., a California corporation, Plaintiff: Laura L. Chapman, LEAD ATTORNEY, PRO HAC VICE, SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP, San Francisco, CA USA; Wendy M. Garbers, LEAD ATTORNEY, PRO HAC VICE, MORRISON FOERSTER, LLP, San Francisco, CA USA; Karin H. Johnson , SHEPPARD, MULLIN, RICHTER & HAMPTON LLP, Washington, DC USA.

For Paleteria LA Michoacana, LLC, a California Limited Liability Company, Plaintiff: Karin H. Johnson, LEAD ATTORNEY, SHEPPARD, MULLIN, RICHTER & HAMPTON LLP, Washington, DC USA.

For Productos Lacteos Tocumbo S.A. DE C.V., a Mexican corporation, Defendant, Counter Claimant: Steven Michael War, LEAD ATTORNEY, MCNEELY, HARE & WAR LLP, Washington, DC USA; Stephen L. Anderson, PRO HAC VICE, ANDERSON & ASSOCIATES, Temecula, CA USA.

For Paleteria LA Michoacana, Inc., a California corporation, Counter Defendant, Cross Claimant: Wendy M. Garbers, LEAD ATTORNEY, PRO HAC VICE, MORRISON FOERSTER, LLP, San Francisco, CA USA.

For Productos Lacteos Tocumbo S.A. DE C.V., a Mexican corporation, Cross Defendant, Counter Claimant: Steven Michael War, LEAD ATTORNEY, MCNEELY, HARE & WAR LLP, Washington, DC USA; Stephen L. Anderson, ANDERSON & ASSOCIATES, Temecula, CA USA.

For Paleteria LA Michoacana, Inc., a California corporation, Paleteria LA Michoacana, LLC, a California Limited Liability Company, Counter Defendants: Wendy M. Garbers, LEAD ATTORNEY, PRO HAC VICE, MORRISON FOERSTER, LLP, San Francisco, CA USA; Karin H. Johnson, SHEPPARD, MULLIN, RICHTER & HAMPTON LLP, Washington, DC USA.

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MEMORANDUM OPINION

RUDOLPH CONTRERAS, United States District Judge.

Granting In Part and Denying In Part Plaintiffs' Motion for Summary Judgment; Granting In Part and Denying In Part Defendant's Motion for Summary Judgment; Denying Defendant's Motion to Strike; and Denying Plaintiffs' Motion in Limine

I. INTRODUCTION

Before the Court is a highly contested trademark action that raises complex factual and legal issues. This case arrived here when Plaintiffs, Paleteria La Michoacana, Inc. and Paleteria La Michoacana, LLC (collectively, " PLM" ), brought suit against Defendant Productos Lacteos Tocumbo S.A. De C.V. (" PROLACTO" ) challenging a decision by the Trademark Trial and Appeal Board (" TTAB" ) regarding various registered and unregistered trademarks used to sell " Mexican-style" ice cream bars, called paletas, and other frozen

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ice cream treats. PROLACTO responded by filing a counterclaim that asserts several counts against PLM under various sections of the Lanham Act, 15 U.S.C. § 1051 et seq., as well as District of Columbia common law. PLM and PROLACTO each filed motions for partial summary judgment in which they seek a ruling on most counts in the complaint and counterclaim. Upon consideration of the parties' motions, the memoranda in support thereof and opposition thereto, and the voluminous evidentiary record submitted by both parties to supplement their summary judgment filings, the Court will grant in part and deny in part each party's motion.

II. BACKGROUND

At the heart of this action is a fight over the right to use certain trademarks in the sale of paletas -- which are " Mexican-style" ice cream bars traditionally made from fruit, spices, and nuts, and sold in trucks and supermarkets -- and other similar frozen ice cream treats within the United States. PROLACTO and PLM dispute, whether for factual reasons or on evidentiary grounds, nearly all of the hundreds of " facts" proffered to support their respective motions for summary judgment. Nonetheless, after wading through the extensive evidentiary records provided by both parties to support their motions, the Court finds that the following background facts have been established. To the extent additional relevant and material facts remain in dispute, those factual discrepancies are discussed in more detail as they arise throughout this Memorandum Opinion.

PROLACTO is a family-owned company founded in Mexico in 1992. The family that founded the company has a long history of operating ice cream stores (" paleterias" ) and selling ice cream and fruit bars in various cities and towns throughout Mexico stretching back to the 1940s. PROLACTO's historic use and ownership in Mexico of the marks at issue is largely in dispute and mostly irrelevant to the legal issues at hand, but beginning in 1995, PROLACTO started successfully registering with the Mexican Institute of Intellectual Property many of these marks, including the term " LA MICHOACANA NATURAL." [1] A few years later, PROLACTO began entering licensing agreements in the United States with close family members of the company's founding directors. Through these agreements, PROLACTO authorized the licensees to use within the United States some of the marks PROLACTO had been using and registering in Mexico. The evidentiary record shows that PROLACTO has not produced, advertised, or sold its ice cream products directly to consumers inside the United States, and the company has not directly operated any stores within the country. Instead, PROLACTO's use of the disputed marks inside the United States arises through its licensing agreements.[2]

The first license occurred in 1999, when Rigoberto Fernandez, with permission

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from PROLACTO, opened a paleteria called LA MICHOACANA in Homestead, Florida. In April 2001, Fernandez and his sister, Mary Fernandez, opened a second paleteria under the same name in West Palm Beach, Florida, where they used PROLACTO's Mexican marks for the sale of ice cream products. In October 2002, again through a license with PROLACTO, Mary Fernandez opened a paleteria under the name Michoacana Natural Ice Cream in Rosenberg, Texas, a suburb of Houston. Sometime between 2004 and 2006, Mary Fernandez opened a second licensed store in Houston. She ultimately added several additional ice cream parlors in Houston over the next few years, although the exact number and timing is disputed. Finally, in July 2009, PROLACTO licensed the opening of a Michoacana Natural Ice Cream store in Sonoma, California, which makes and sells paletas, ice cream, and drinks on site. PROLACTO's California licensee has not operated any other ice cream parlors in the Sonoma area since July 2009. PROLACTO has no licensees in the District of Columbia or any other state not discussed herein.

Turning to PLM's history, in 1991 brothers Ruben Gutierrez and Ignacio Gutierrez started an ice cream business called Paleteria Michoacana as an informal partnership in the city of Turlock, which is in northern California. Shortly after Ignacio Gutierrez was married, in April 1999, the Gutierrez brothers dissolved their partnership, and from late April 1999 until 2002, Ignacio Gutierrez operated the Paleteria Michoacan ice cream business as a sole proprietorship in the same location in Turlock, California. In 2002, Ignacio Gutierrez created a California corporation known as Paleteria La Michoacana, Inc. and served as its president, sole shareholder, and sole director from 2002 until early 2011, at which time Paleteria La Michoacana, LLC, as assignee of the assets of Paleteria La Michoacana, Inc., took over the business.

PLM's products are made in a factory in California before being distributed throughout various parts of the country, where they are sold at large club stores like Costco, supermarkets like Wal-Mart, Hispanic grocery stores like El Super and Vallarta, drug stores like Walgreens, and a variety of other retail outlets. PLM has not sold products directly to consumers in Florida. And like PROLACTO, PLM's products are not sold or distributed in the District of Columbia, although PLM's goods are sold in numerous other states across the country. In fact, although they both sell products within the same broad category of frozen ice cream treats, PROLACTO's licensee's goods and PLM's goods cross paths in limited geographical areas within the United States, namely Texas, where PLM has distributed ice cream products such as paletas since sometime in 2005, and northern California, where the respective parties' goods are sold in the same general area within one mile or so. In at least one instance, the companies' goods are sold at the very same store in Houston.

Finally, the parties' ice cream products are relatively inexpensive treats typically purchased on impulse. For example, PLM's four ounce single serve fruit and ice cream bars sell at retail for approximately $0.89 to $1.19, while PLM's three ounce bars are sold at retail in packages of six for between $2.49 to $4.49. Paletas sold by PROLACTO's United States licensees are slightly more expensive at a retail price of approximately $1.75 to $2.00 each, but they are larger than PLM's bars and still remain inexpensive consumer items typically purchased on impulse.

A. Marks In Dispute

As noted in the introduction, this action involves a dispute between PLM and

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PROLACTO over the right to use certain registered and unregistered marks during the sale of ice cream products in the United States. The central marks at issue include the so-called Indian Girl design, as well as marks bearing various forms of the word " Michoacá n." Below is a graphic displaying some of the marks in dispute between the companies:

B. Procedural History

Before arriving at this Court, PROLACTO filed a petition with the TTAB to cancel PLM's trademark No. 3,210,304 for the mark LA INDITA MICHOACANA and design, shown above, for use on ice cream and fruit products, namely fruit bars. The TTAB granted PROLACTO's petition, finding a likelihood of confusion between several, but not all, of PROLACTO's marks and PLM's registered trademark. See generally Productos Lacteos Tocumbo S.A. De C.V. v. Paleteria La Michoacana, Inc., 98 U.S.P.Q.2d 1921, 2011 WL 2161071 (TTAB May 20, 2011) (" TTAB Decision" ).

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The TTAB's decision is discussed with more detail in the ensuing sections.

On June 11, 2012, PLM filed a second amended complaint in which it asserted four causes of action against PROLACTO regarding the TTAB decision and other issues in the fight to use the various registered and unregistered marks. First, PLM seeks reversal of the TTAB decision cancelling its registered trademark No. 3,210,304. See 2d Am. Compl., ECF No. 40, at ¶ ¶ 42-48. Second, PLM seeks declaratory judgment that there is no likelihood of confusion between its mark and PROLACTO's lone registered mark. See id. ¶ ¶ 49-51. Third, PLM asserts a Lanham Act trademark infringement claim under 15 U.S.C. § 1114 against PROLACTO for its use of the Indian Girl design with LA INDITA MICHOACANA and separate use of the Indian Girl mark standing alone. See id. ¶ ¶ 52-56. Finally, PLM seeks cancellation of PROLACTO's registered trademark No. 3,249,113, also shown above. See id. ¶ ¶ 57-61.

On June 29, 2012, PROLACTO filed its answer to the second amended complaint and asserted a variety of trademark counterclaims against PLM, including Lanham Act claims for federal trademark infringement, unfair competition, passing off, false advertising, false association, and false designation. See Answer 2d Am. Compl. & Countercls., ECF No. 41, at ¶ ¶ 43-52. PROLACTO also asserted Lanham Act claims to cancel two of PLM's registered marks on the basis of fraud and abandonment, see id. ¶ ¶ 64-87, as well as a claim for trademark infringement under District of Columbia common law. See id. ¶ ¶ 53-59. Finally, PROLACTO brought a Lanham Act federal trademark dilution claim against PLM. See id. ¶ ¶ 60-63.

C. Motions For Summary Judgment

Now before the Court are the parties' motions for summary judgment in which they seek a decision on nearly every claim in the complaint and counterclaim. Upon a searching examination of the parties' filings, the attached exhibits, the relevant case law, and the entire record herein, the Court finds that it can resolve a number of issues at this stage because no dispute of material fact exists. The Court therefore will enter the following rulings: (1) granting summary judgment in favor of PLM on counterclaim Count I; (2) granting summary judgment in favor of PLM limiting counterclaim Count II for trademark infringement to the Houston, Texas, market; (3) granting summary judgment in favor of PROLACTO on counterclaim Count II for false advertising on the elements of falsity, deceptiveness, and interstate commerce; (4) granting summary judgment in favor of PLM on counterclaim Count III; (5) granting summary judgment in favor of PLM on counterclaim Count IV; (6) granting summary judgment in favor of PLM on counterclaim Counts V, VI, and VII; and (7) granting summary judgment in favor of PLM on the question of whether PROLACTO is entitled to any form of monetary relief for its trademark counterclaims.

There exist, however, numerous other issues that cannot be dealt with at summary judgment because contested factual questions remain for a fact-finder to decide. The Court therefore also makes the following rulings on the parties' motions: (1) denying summary judgment as to both parties on complaint Count I; (2) denying summary judgment as to both parties on counterclaim Count II for trademark infringement on the question of whether PROLACTO has established secondary meaning for its marks; (3) denying summary judgment as to both parties on counterclaim Count II for false designation, passing off, false association, and unfair competition; (4) denying summary judgment as to PLM on its arguments that

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laches prevents PROLACTO from bringing counterclaim Count II for false advertising, and that PROLACATO lacks prudential standing for its false advertising claim; and (5) denying summary judgment to both parties on counterclaim Count II for false advertising on the elements of materiality and injury.

III. LEGAL STANDARD FOR SUMMARY JUDGMENT

Summary judgment is appropriate " if the movant shows that there is no genuine dispute as to any material fact and [thus] the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a); accord Talavera v. Shah, 638 F.3d 303, 308, 395 U.S.App.D.C. 7 (D.C. Cir. 2011). " A fact is material if it 'might affect the outcome of the suit under the governing law,' and a dispute about a material fact is genuine 'if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.'" Steele v. Schafer, 535 F.3d 689, 692, 383 U.S.App.D.C. 74 (D.C. Cir. 2008) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). When Rule 56 is invoked, the moving party has the initial burden of demonstrating the absence of a genuine dispute as to any material fact. See Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). When the moving party does not bear the burden of persuasion at trial, its burden " may be discharged by 'showing' -- that is, pointing out to the district court -- that there is an absence of evidence to support the nonmoving party's case." Id. at 325.

Once the moving party has met its burden, to defeat the motion the nonmoving party must designate " specific facts showing that there is a genuine issue for trial." Id. at 324 (citation omitted). Although the Court must view this evidence in the light most favorable to the nonmoving party and draw all reasonable inferences in that party's favor, see Grosdidier v. Broad. Bd. of Governors, Chairman, 709 F.3d 19, 23-24, 404 U.S.App.D.C. 189 (D.C. Cir. 2013), the nonmoving party must show more than " [t]he mere existence of a scintilla of evidence in support of" his position -- " there must be evidence on which the jury could reasonably find for [the nonmoving party]." Anderson, 477 U.S. at 252. Moreover, the nonmoving party " may not rest upon mere allegation or denials of his pleading but must present affirmative evidence showing a genuine issue for trial." Laningham v. U.S. Navy, 813 F.2d 1236, 1241, 259 U.S.App.D.C. 115 (D.C. Cir. 1987) (internal quotation marks and citation omitted).

When both parties file cross-motions for summary judgment, " each must carry its own burden under the applicable legal standard." Ehrman v. United States, 429 F.Supp.2d 61, 67 (D.D.C. 2006); Nuzzo v. FBI, No. 95-CV-1708, 1996 WL 741587, at *1 (D.D.C. Oct. 8, 1996) (" When both parties in a cause of action move for summary judgment, each party must carry its own burden." ). Finally, the Court notes that " [c]redibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge at summary judgment." Barnett v. PA Consulting Grp., Inc., 715 F.3d 354, 358, 404 U.S.App.D.C. 439 (D.C. Cir. 2013) (citation omitted). Indeed, a court's role in deciding a summary judgment motion is not to " determine the truth of the matter, but instead [to] decide only whether there is a genuine issue for trial." Id. (citation omitted).

IV. ANALYSIS

The Court now turns to the merits of the motions for summary judgment. As suggested above, the parties seek judgment on numerous counts in the complaint and counterclaim. Specifically,

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PLM seeks the following relief through its motion: (1) judgment in its favor on counterclaim Count I for infringement on PROLACTO's registered trademark; (2) judgment limiting counterclaim Count II exclusively to the Houston, Texas, market; (3) judgment preventing PROLACTO from recovering monetary relief in any form on all of its counterclaims; (4) judgment in its favor on counterclaim Count II for false advertising; (5) judgment in its favor on counterclaim Count III for District of Columbia common law trademark infringement; (6) judgment in its favor on counterclaim Count IV for federal trademark dilution; and (7) judgment in its favor on counterclaim Counts V, VI, and VII for cancellation of PLM's registered Indian Girl trademarks on the basis of fraud and abandonment.

In response, PROLACTO requests that the Court grant the following relief: (1) judgment in its favor on all of counterclaim Count II for various Lanham Act violations; (2) judgment in its favor on counterclaim Count III for District of Columbia common law trademark infringement; (3) judgment in its favor on complaint Count I affirming the TTAB decision; (4) judgment in its favor on counterclaim Count I overturning the TTAB decision as to PROLACTO's registered trademark; (5) judgment in its favor on counterclaim Counts V and VI for cancellation of PLM's registered Indian Girl trademarks; and (6) judgment in its favor on counterclaim Count IV for federal trademark dilution.[3] The Court addresses each issue below.

A. Complaint Count I: Appeal Of TTAB Decision Cancelling PLM's Registered Mark

Upon PROLACTO's petition before the TTAB, the board cancelled PLM's registered trademark No. 3,210,304 for the LA INDITA MICHOACANA and design after finding that the mark was sufficiently similar to PROLACTO's unregistered Indian Girl mark, as well as PROLACTO's marks for LA MICHOACANA, LA MICHOACANA NATURAL, and LA MICHOACANA NATURAL and design, such that consumer confusion was likely to occur. See generally TTAB Decision. PLM filed the initial complaint in this Court seeking judicial review of that decision and arguing, in particular, that it has evidence contradicting the TTAB's conclusion regarding priority use of the marks. See generally 2d Am. Compl., ECF No. 40. PROLACTO moves for summary judgment affirming

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the TTAB decision to cancel PLM's mark. See Def.'s Mem. Supp. Mot. Part. Summ. J., ECF No. 116-1, at 37.

1. Standard Of Review For A TTAB Decision

Section 21 of the Lanham Act permits a party dissatisfied with a TTAB decision to appeal to the United States Court of Appeals for the Federal Circuit or to bring a civil action in federal district court. See 15 U.S.C. § 1071(a), (b); see also Material Supply Int'l, Inc. v. Sunmatch Indus. Co., Ltd., 146 F.3d 983, 989, 331 U.S.App.D.C. 42 (D.C. Cir. 1998). In the latter case, the district court acts as a quasi-appellate court to the TTAB and applies a hybrid standard of review, affording deferential treatment to the board's factual findings but confronting legal questions de novo. See Aktieselskabet AF 21. Nov. 2001 v. Fame Jeans, Inc., 511 F.Supp.2d 1, 6 (D.D.C. 2007); see also Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848, 852 (2d Cir. 1988) (" The section 1071(b) action in a district court is not, strictly speaking, an 'appeal' at all, but an independent judicial proceeding provided as an alternative to a direct appeal to the Federal Circuit[.]" ); Smith v. Entrepreneur Media, Inc., No. 2:12-CV-2184, 2013 WL 2296077, at *5 (E.D. Cal. May 24, 2013) (" [W]hile new evidence and new issues may be introduced in the district court, an appeal of a decision by the TTAB is a unique procedure because, unlike a true de novo proceeding, findings of fact made by the TTAB are given great weight and are not upset unless supported by substantial evidence." ).

A court reviews the TTAB's findings of fact under the " substantial evidence" standard, which requires a court to defer to the factual findings made by the TTAB unless new evidence " carries thorough conviction." Material Supply Int'l, 146 F.3d at 990 (citing 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition (" McCarthy on Trademarks" ) § 21:20, at 21-24 (4th ed. 1997); see also Guantanamera Cigar Co. v. Corporacion Habanos, S.A., 729 F.Supp.2d 246, 251 (D.D.C. 2010); Tequila Centinela, S.A. de C.V. v. Bacardi & Co. Ltd., 517 F.Supp.2d 1, 4 (D.D.C. 2007). " Substantial evidence," as described by the Supreme Court, is " 'more than a mere scintilla of evidence'" and requires " 'such relevant evidence as a reasonable mind would accept as adequate' to support a conclusion." In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003) (quoting Consol. Edison v. NLRB, 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938)).

Importantly, the party seeking to overturn a TTAB decision may present new evidence and raise new issues, which a court must review de novo. See Aktieselskabet AF 21. Nov. 2001, 525 F.3d at 13 (the district court " may consider both new issues and new evidence that were not before the TTAB" ); see also CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660, 674 (7th Cir. 2001) (explaining that a district court's review of a TTAB decision is de novo when parties assert new claims); Smith, 2013 WL 2296077, at *5 (explaining that " new evidence and new issues may be introduced in the district court" on appeal of a TTAB decision). Thus, to prevail on appeal, PLM must either raise a new issue compelling a different result, or show that the TTAB's findings were unsupported by substantial evidence or contrary to " new evidence carr[ying] thorough conviction." Guantanamera, 729 F.Supp.2d at 251; see also Coryn Grp. II, LLC v. O.C. Seacrets, Inc., No. CIV. 08-2764, 2011 WL 3240456, at *3 (D. Md. July 27, 2011).

2. TTAB Factual Findings And Legal Conclusions

At the TTAB proceeding, the board found that PROLACTO had established

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priority use over PLM for the following marks: LA MICHOACANA (words only); LA MICHOACANA NATURAL (words only); LA MICHOACANA NATURAL (and design); design of an Indian Girl doll holding an ice cream; LA FLOR DE MICHOACAN (words only); LA FLOR DE MICHOACAN (and design); and LA MICHOACANA NAURAL (and design). See TTAB Decision Id. at *11. To reach its conclusion regarding priority, the board explained that PLM " filed its application for registration on June 28, 2005, claiming first use anywhere and in commerce as of February 21, 2005." See Id. at *9. This finding was supported by the deposition testimony of PLM's Ignacio Gutierrez and Patricia Gutierrez. Through similar evidence in the record, the TTAB determined that PROLACTO, " through its licensees, began using [the] Indian girl in connection with the sale of ice cream and ice cream bars in the United States in April 2001." See id. Based on additional testimony, the TTAB further found that PROLACTO " used the marks LA MICHOACANA NATURAL and design, LA FLOR DE MICHOACAN, and LA MICHOACANA in connection with ice cream and retail ice cream store services since 2001." See Id. at *10. The TTAB concluded that, based on these facts, PROLACTO had priority over PLM for all marks because PROLACTO used each in commerce within the United States before PLM.

The TTAB next considered the likelihood of confusion between PROLACTO's marks and PLM's registered mark. Based on competent evidence in the record, the TTAB made the following findings: all the marks at issue are used in connection with ice cream products; PLM's fruit bars are sold in all normal channels of trade to all normal purchasers of such goods, including retail ice cream stores; ice cream bars and fruit bars are inexpensive products and by their nature are impulse purchase items consumers buy without a high degree of care; considering the overall commercial impressions of the marks, the companies' Indian Girl designs are virtually identical; and PROLACTO's mark LA MICHOACANA, and PLM's registered mark LA INDITA MICHOACANA and design, are similar in appearance and sound, and have similar meanings. See Id. at *12-15. Based on these findings, the board concluded that PLM's registered mark No. 3,210,304 was sufficiently similar to PROLACTO's design of an Indian Girl doll holding an ice cream, LA MICHOACANA (words only), LA MICHOACANA NATURAL (words only), and LA MICHOACANA NATURAL and design, to create a likelihood of confusion among customers. See Id. at *15. The TTAB therefore concluded that PLM's registered mark No. 3,210,304 must be cancelled. See Id. at *16.

3. New Evidence And Arguments: Tacking

On review of the TTAB decision, a district court must take into consideration new evidence and new issues not raised before the TTAB. Here, PLM presents for the first time at the summary judgment stage testimonial and documentary evidence suggesting that it used a version of the Indian Girl design since at least the mid-1990s, which potentially would predate PROLACTO's use of similar marks in the United States. See Pls.' Stmt Disputed Issues, ECF No. 120, at 59, No. 6. PLM argues that it should be permitted to " tack" these earlier uses to establish priority for its registered LA INDITA MICHOACANA mark and design over PROLACTO's use of similar marks. See Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1048 (9th Cir. 1999) (explaining that " tacking" occurs when the " trademark holder essentially seeks to 'tack' his first use date in the

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earlier mark onto the subsequent mark" ); see also 3 McCarthy on Trademarks § § 17:25-28 (4th ed.) (discussing tacking). Due to pleading issues, however, the TTAB did not consider evidence to determine whether PLM's marks are sufficiently similar to permit tacking as a valid defense.

When a district court hearing a TTAB appeal acts as a finder of fact with regard to new evidence submitted by the parties, it " must examine the evidence de novo and make its own findings of fact[.]" Shammas v. Rea, 978 F.Supp.2d 599, 606 (E.D. Va. 2013). If a court finds that new evidence contradicts or is inconsistent with the board's factual findings, it must consider whether the record, taken as a whole, warrants reversal. See id. When this standard of review is applied in the context of a motion for summary judgment, the primary inquiry is whether a party has presented sufficient evidence that, when considered with the board's findings, creates a genuine issue of material fact precluding summary judgment. See Bd. of Regents of Univ. of Wis. Sys. v. Phoenix Int'l Software, Inc., 653 F.3d 448, 452 (7th Cir. 2011).

The use of an earlier mark may be tacked onto the later use of a different mark only if the first mark is " the legal equivalent of the mark in question or indistinguishable therefrom" such that consumers " consider both as the same mark." See Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir. 1991). Tacking is permitted " only in rare instances." Id. at 1160 (citation and quotation marks omitted). " Legal equivalence" for tacking purposes does not occur simply if the two marks are " confusingly similar" ; instead, the marks sought to be tacked must create the same continuing " commercial impression." Id.; see also George & Co. LLC v. Imagination Entm't Ltd., 575 F.3d 383, 402 (4th Cir. 2009) (discussing tacking); Navistar Int'l Transp. Corp. v. Freightliner Corp., No. 96 C 6922, 1998 WL 911776, at *2 (N.D. Ill.Dec. 28, 1998) (same).

There is a dispute among the federal circuit courts regarding whether tacking is a question of law for a court or a question of fact for a jury. For example, the Federal Circuit has stated that because " [n]o evidence need be entertained other than the visual or aural appearance of the marks themselves," tacking is a question of law. See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347 (Fed. Cir. 2001) (citations omitted). The Sixth Circuit agrees that tacking is a question of law. See Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 623 (6th Cir. 1998). The Ninth Circuit, however, has held that tacking is a question of fact typically left for a jury to decide. See One Indus., LLC v. Jim O'Neal Distrib., Inc., 578 F.3d 1154, 1160 (9th Cir. 2009); see also Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158, 1168 (9th Cir. 2013) (" [T]acking presents a question of fact that must ultimately be decided by the jury unless the evidence is so strong that it permits only one conclusion." ).

The critical inquiry under a tacking analysis is whether a consumer would consider the prior and subsequent designs to be the " same mark." See Brookfield Commc'ns, 174 F.3d at 1048 (stating that " tacking should be allowed if two marks are so similar that consumers generally would regard them as essentially the same" ); Van Dyne-Crotty, 926 F.2d at 1159 (stating that a " consumer should consider both as the same mark" ). Consumer opinion is dispositive because a fundamental purpose of trademark law is to create a marketplace in which consumers are not deceived or confused by competing merchants using similar marks. See Park 'N

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Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198, 105 S.Ct. 658, 83 L.Ed.2d 582 (1985) (noting that the Lanham Act's aim is not only to encourage investments in strong trademarks, but also " to protect the ability of consumers to distinguish among competing producers" (citations omitted)); Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 539 (2d Cir. 2005) (" [The Lanham] Act seeks to eliminate the confusion that is created in the marketplace by the sale of products bearing highly similar marks." (citations omitted)).

As such, it is less than ideal for a court, sitting in relative isolation, to speculate about what consumers may think regarding the similarity of two marks as a question of law. In fact, such a conclusion would be inconsistent with the rule in this Circuit that the " likelihood of confusion" inquiry, which requires a similar fact-intensive comparison between marks, is a question of fact for a jury to decide. See Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F.Supp.2d 1, 48 (D.D.C. 2006); Pro-Football, Inc. v. Harjo, 284 F.Supp.2d 96, 117 (D.D.C. 2003); see also Louangel, Inc. v. Darden Rests., Inc., No. 2:12-CV-00147, 2013 WL 1223653, at *2 (S.D. Tex. Mar. 22, 2013) (" The courts' treatment of the tacking question is commensurate with their treatment of the related issue of 'likelihood of confusion' in the trademark context." ). Thus, consistent with this Circuit's approach to the " likelihood of confusion" inquiry, the Court concludes that tacking presents a question of fact that ultimately must be decided by a jury unless evidence is so strong that it permits only one conclusion such that summary judgment is appropriate.

Here, the Court finds that the evidence presented by PLM regarding its past use of the Indian Girl marks creates a genuine dispute of material fact as to whether the tacking doctrine is applicable because there is at least some evidence that a version of the Indian Girl design was used by PLM in the 1990s, and a jury therefore could find that the earlier marks are sufficiently similar to the later marks to create the continuity of commercial impression. See, e.g., Pls.' Resp. Def.'s Stmt Facts, ECF No. 120-1, at 97, Nos. 120-22. But because the evidence does not compel only one result, the Court ...


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