United States District Court, District of Columbia
PALETERIA LA MICHOACANA, INC. et al., Plaintiffs & Counter-Defendants,
PRODUCTOS LACTEOS TOCUMBO S.A. DE C.V., Defendant & Counter-Claimant.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
Rudolph Contreras United States District Judge
long-running dispute between Plaintiffs/Counter-Defendants
Paleteria La Michoacana, Inc. and Paleteria La Michoacana
(Sub), Inc. (collectively, and together with their
predecessors in interest, “PLM”) and
Defendant/Counter-Claimant Productos Lacteos Tocumbo S.A. De
C.V. (“PROLACTO”) involves the right to use
various registered and unregistered trademarks when selling
ice cream and various other frozen treats in the United
States. PLM brought this action against PROLACTO under the
Lanham Act, 15 U.S.C. §§ 1051 et seq.,
challenging a decision by the Trademark Trial and Appeal
Board (the “TTAB”) to cancel the federal
registration of one of PLM’s asserted trademarks and
seeking other relief on various infringement-related
theories. See Second Am. Compl., ECF No. 40.
PROLACTO, in turn, filed a variety of counterclaims against
PLM alleging, among other things, trademark infringement and
false advertising. See Ans. 2d Am. Compl. &
Countercls., ECF No. 41. At the summary judgment stage, the
Court resolved a number of the parties’ claims and
narrowed some of the issues for trial.
Court conducted a bench trial over the course of thirteen
days between September 14, 2015 and October 1, 2015.
Following the trial, the parties submitted proposed findings
of fact and conclusions of law, as well as subsequent briefs
in opposition. The Court now makes its Findings of Fact and
Conclusions of Law, as required by Rule 52(a)(1) of the
Federal Rules of Civil Procedure. For the reasons discussed
below, the Court will enter judgment in favor of PROLACTO as
to Count I of PLM’s Second Amended Complaint, enter
judgment in favor of PLM as to Counts II and III of the
Second Amended Complaint and as to PROLACTO’s
Counterclaim Count II. The Court will also dismiss Count IV
of the Second Amended Complaint as moot.
clarity in following the Court’s specific findings of
fact and conclusions of law, the Court first provides a brief
overview of the facts underlying this case and a summary of
the case’s procedural history and current posture.
PROLACTO are in the business of manufacturing and selling
“paletas, ” a style of ice cream bars and
popsicles that originated in Mexico and are traditionally
made from fruit, spices and nuts and sold to the public in
trucks and retail stores, as well as other frozen treats.
is a Mexican company founded in 1992. The Andrade Malfavon
family, which founded and owns the company, traces its
history in the paleta business to the purported origin of the
paleta and the ice cream stores that make and sell them,
called “paleterias, ” in Tocumbo, a city in the
Mexican state of Michoacán, in the 1940s. PROLACTO
primarily does business in the United States through
licensing agreements with various members of the Andrade
Malfavon family who own and operate individual paleterias in
certain markets, namely, Florida, Texas, Northern California,
and North Carolina. Until relatively recently, PROLACTO did
not directly own any paleterias in the United States or
otherwise directly sell its products to any consumers in the
traces its history to at least as early as 1991, when two
brothers, Mexican immigrants Ignacio Gutierrez and Ruben
Gutierrez, began selling paletas out of pushcarts in Northern
California using the name “La Michoacana, ” which
literally means, in Spanish, “the woman from the state
of Michoacán.” The partnership dissolved in
1999, and Ignacio Gutierrez operated the business as a sole
proprietorship for several years before incorporating in
California. PLM’s business has grown significantly
since its beginnings as a pushcart operation in Northern
California. PLM currently manufactures its products in a
factory in Modesto, California and distributes its products
throughout various parts of the United States where they are
sold at large-scale retailers such as Costco, Wal-Mart, and
Walgreens, as well as Hispanic grocery stores such as El
Super and Vallarta and a variety of other retail outlets.
PLM and PROLACTO use a variety of trademarks when selling
their products in the United States. A graphic displaying
some of the marks the parties have used appears below:
battle between the PLM and PROLACTO over the right to use
these marks has been fierce and protracted. The parties
sharply dispute, among many other things, which of them first
used these marks in the United States, and each party accuses
the other of engaging in bad faith in a variety of different
procedural history of this case stretches back nearly a
decade. An understanding of this history is necessary to
resolve the issues before the Court.
unsuccessfully attempting to register certain marks with the
United States Patent and Trademark Office (the
“USPTO”), on April 27, 2007, pursuant to the
Lanham Act, PROLACTO filed a petition with the TTAB, a body
of the USPTO, to cancel PLM’s Registration No. 3, 210,
304 for the mark titled “LA INDITA MICHOACANA, ”
shown above, for use on ice cream and fruit products.
See Pet. Cancellation, TTAB Dkt. 1. The cancellation
proceeding remained pending for several years, and, as part
of the discovery process, the parties took oral and written
deposition testimony from a number of witnesses between 2009
20, 2011 the TTAB granted PROLACTO’s petition for
cancellation of PLM’s LA INDITA MICHOACANA mark.
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 (T.T.A.B. May 20, 2011) (“TTAB
Decision”). The TTAB concluded that the mark should be
cancelled because PROLACTO had established priority of use
and likelihood of confusion with respect to several of its
asserted, unregistered marks, including its own Indian Girl
design, as well as its LA MICHOACANA (words only), LA
MICHOACANA NATURAL (words only), and LA MICHOACANA NATURAL
marks. See Id. at **9-16.
the TTAB’s decision, PLM moved for reconsideration,
arguing that PROLACTO failed to establish priority of use and
that the TTAB erred in concluding that PROLACTO established
common law rights in its “Michoacana” marks.
See Mot. Recons., TTAB Dkt. 109. The TTAB issued a
decision denying reconsideration on July 13, 2011.
See TTAB Dkt. 115.
The Present Action
commenced this action pursuant to 15 U.S.C. § 1071(b) on
September 8, 2011. See Compl., ECF No. 1.
PLM’s Second Amended Complaint and PROLACTO’s
Second Amended Complaint alleges four causes of action: Count
I seeks reversal of the TTAB’s decision to cancel the
registration of PLM’s LA INDITA MICHOACANA mark and
denial of PROLACTO’s cancellation petition; Count II
seeks a declaration that there is no likelihood of confusion
between PLM’s LA INDITA MICHOACANA mark and various
marks asserted by PROLACTO on the basis of their common usage
of the word “MICHOACANA”; Count III alleges that
PROLACTO’s use of its Indian Girl mark infringes three
of PLM’s registered marks under 15 U.S.C. § 1114,
including its LA INDITA MICHOACANA mark; and Count IV seeks
to cancel PROLACTO’s registration of certain marks
containing the name LA FLOR DE MICHOACAN if a likelihood of
confusion is found between those marks and PLM’s marks.
See Second Am. Compl. at 13-16.
in turn, filed seven counterclaims: Counterclaim Count I
alleges that PLM infringed its registered LA FLOR DE
MICHOACAN and design mark under 15 U.S.C. § 1114(1);
Counterclaim Count II alleges trademark infringement, unfair
competition, passing off, false advertising, false
association, and false designation in violation of 15 U.S.C.
§ 1125(a); Counterclaim Count III alleges trademark
infringement of the District of Columbia’s common law;
Counterclaim Count IV alleges trademark dilution under 15
U.S.C. § 1125(c); and Counterclaim Counts V, VI, and VII
seek cancellation of two of PLM’s registered marks due
to fraud and abandonment. See Ans. 2d Am. Compl.
& Countercls. at 29-43.
the close of discovery in this case, the parties filed
cross-motions for partial summary judgment, each of which the
Court granted in part and denied in part. See generally
Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo
S.A. De C.V., 69 F.Supp. 3d 175 (D.D.C. 2014)
(“PLM I”). The Court subsequently
granted in part and denied in part a motion by PLM to revise
the Court’s Memorandum Opinion and Order at summary
judgment and denied a motion for consideration by PROLACTO,
issuing a First Revised Order on February 3, 2015.
See First Revised Order, ECF No. 175; Paleteria
La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De
C.V., 79 F.Supp. 3d 60 (D.D.C. 2015) (“PLM
II”) (denying PROLACTO’s motion for
reconsideration); Mem. & Order, ECF No. 174
(“PLM III”) (granting in part and
denying in part PLM’s motion to revise the
Court’s summary judgment Memorandum Opinion and Order).
summary of the disposition of each count of PLM’s
Second Amended Complaint and PROLACTO’s Counterclaims
is necessary to understanding the issues presented at trial
for the Court’s determination:
• Complaint Count I: The Court denied summary
judgment to both parties after concluding that new evidence
presented by PLM created a genuine dispute of material fact
as to whether the “tacking” doctrine is
applicable in order to establish priority of use for its LA
INDITA MICHOACANA mark. See First Revised Order
¶ 10; PLM I, 69 F.Supp. 3d at 192-96.
• Complaint Count II: The parties did not seek
• Complaint Count III: The parties did not seek
• Complaint Count IV: The parties did not seek
• Counterclaim Count I: The Court entered
judgment in favor of PLM, affirming the TTAB’s
conclusion that PLM did not infringe LA FLOR DE MICHOACAN and
design mark. See First Revised Order ¶ 1;
PLM I, 69 F.Supp. 3d at 196-200.
• Counterclaim Count II: Trademark
Infringement, False Designation of Origin, Passing Off, and
Unfair Competition: The Court entered partial judgment in
favor of PLM limiting this claim to the Houston, Texas market
and denied summary judgment to both parties as to whether
PROLACTO has established secondary meaning for its marks
after finding the existence of a genuine dispute of material
fact. See First Revised Order ¶¶ 2, 11;
PLM I, 69 F.Supp. 3d at 209- 12; PLM III at
• Counterclaim Count II: False Advertising: The
Court entered judgment in favor of PROLACTO as to the
elements of falsity, deceptiveness, and interstate commerce
after finding that PLM conceded the issues. See
First Revised Order ¶ 3; PLM I, 69 F.Supp. 3d
at 216. The Court denied summary judgment to both parties as
to the elements of materiality and injury after finding that
a genuine dispute of material fact existed. See
First Revised Order ¶ 13; PLM I, 69 F.Supp. 3d
at 216-19. The Court entered judgment in favor of PLM as to
all markets with regard to its use of “LA MICHOACANA ES
NATURAL” and “PALETERIA MICHOACANA” on the
basis that PROLACTO did not plead those marks. See
First Revised Order ¶ 3; PLM III at 8-11. The
Court entered judgment in favor of PLM as to the Sonoma,
California market with regard to its use of “LA INDITA
MICHOACANA” and Indian Girl designs on the basis that
PLM established priority in that market. See First
Revised Order ¶ 3; PLM III at 11-12. The Court
denied summary judgment to PLM as to its arguments that
laches prevents PROLACTO from bringing its claim and that
PROLACTO lacks prudential standing. See First
Revised Order ¶ 12; PLM I, 69 F.Supp. 3d at
213-16. The Court also dismissed one particular alleged false
advertisement as moot after finding that PLM no longer used
the advertisement. See PLM I, 69 F.Supp. 3d at 213
• Counterclaim Count III: The Court entered
judgment in favor of PLM on the basis that PROLACTO provided
no evidence that it used or planned to use the marks at issue
in the District of Columbia. See First Revised Order
¶ 4; PLM I, 69 F.Supp. 3d at 219.
• Counterclaim Count IV: The Court entered
judgment in favor of PLM after concluding that
PROLACTO’s marks had not achieved the level of fame
necessary for a trademark dilution claim. See First
Revised Order ¶ 5; PLM I, 69 F.Supp. 3d at
• Counterclaim Count V: The Court entered
judgment in favor of PLM after finding that PROLACTO failed
to establish fraud. See First Revised Order ¶
6; PLM I, 69 F.Supp. 3d at 222-26.
• Counterclaim Count VI: The Court entered
judgment in favor of PLM after finding that PROLACTO failed
to establish fraud. See First Revised Order ¶
6; PLM I, 69 F.Supp. 3d at 222-26.
• Counterclaim Count VII: The Court entered
judgment in favor of PLM after PROLACTO conceded that summary
judgment was appropriate. See First Revised Order
¶ 8; PLM I, 69 F.Supp. 3d at 223.
addition, the Court entered judgment in favor of PLM as to
the issue of whether PROLACTO is entitled to any form of
monetary relief on any of its counterclaims after finding
that PROLACTO conceded the issue. See First Revised
Order ¶ 9; PLM I, 69 F.Supp. 3d at 227-28;
PLM II, 79 F.Supp. 3d at 71-82.
Court conducted a bench trial over the course of thirteen
days between September 14, 2015 and October 1, 2015.
See Trial Tr. Day 1 A.M. Session (Sept. 14, 2015)
(“Day 1 A.M.”), ECF No. 256; Trial Tr. Day 1 P.M.
Session (Sept. 14, 2015) (“Day 1 P.M.”), ECF No.
321; Trial Tr. Day 2 A.M. Session (Sept. 15, 2015)
(“Day 2 A.M.”), ECF No. 257; Trial Tr. Day 2 P.M.
Session (Sept. 15, 2015) (“Day 2 P.M.”), ECF No.
322; Trial Tr. Day 3 A.M. Session (Sept. 16, 2015)
(“Day 3 A.M.”), ECF No. 262; Trial Tr. Day 3
P.M. Session (Sept. 16, 2015) (“Day 3 P.M.”), ECF
No. 323; Trial Tr. Day 4 A.M. Session (Sept. 17, 2015)
(“Day 4 A.M.”), ECF No. 266; Trial Tr. Day 4 P.M.
Session (Sept. 17, 2015) (“Day 4 P.M.”), ECF No.
324; Trial Tr. Day 5 A.M. Session (Sept. 18, 2015)
(“Day 5 A.M.”), ECF No. 325; Trial Tr. Day 5 P.M.
Session (Sept. 18, 2015) (“Day 5 P.M.”), ECF No.
270; Trial Tr. Day 6 A.M. Session (Sept. 21, 2015)
(“Day 6 A.M.”), ECF No. 275; Trial Tr. Day 6
P.M. Session (Sept. 21, 2015) (“Day 6 P.M.”), ECF
No. 278; Trial Tr. Day 7 A.M. Session (Sept. 22, 2015)
(“Day 7 A.M.”), ECF No. 280; Trial Tr. Day 7 P.M.
Session (Sept. 22, 2015) (“Day 7 P.M.”), ECF No.
285; Trial Tr. Day 8 A.M. Session (Sept. 23, 2015)
(“Day 8 A.M.”), ECF No. 284; Trial Tr. Day 8 P.M.
Session (Sept. 23, 2015) (“Day 8 P.M.”), ECF No.
319; Trial Tr. Day 9 A.M. Session (Sept. 25, 2015)
(“Day 9 A.M.”), ECF No. 289; Trial Tr. Day 9 P.M.
Session (Sept. 25, 2015) (“Day 9 P.M.”), ECF No.
230; Trial Tr. Day 10 A.M. Session (Sept. 28, 2015)
(“Day 10 A.M.”), ECF No. 291; Trial Tr. Day 10
P.M. Session (Sept. 28, 2015) (“Day 10 P.M.”),
ECF No. 326; Trial Tr. Day 11 A.M. Session (Sept. 29, 2015)
(“Day 11 A.M.”), ECF No. 292; Trial Tr. Day 11
P.M. Session (Sept. 29, 2015) (“Day 11 P.M.”),
ECF No. 327; Trial Tr. Day 12 A.M. Session (Sept. 30, 2015)
(“Day 12 A.M.”), ECF No. 293; Trial Tr. Day 12
P.M. Session (Sept. 30, 2015) (“Day 12 P.M.”),
ECF No. 328; Trial Tr. Day 13 (Oct. 1, 2015) (“Day
13”), ECF No. 329.
presented six witnesses over the course of seven days:
Ignacio Gutierrez, the co-founder of PLM’s business;
Patricia Gutierrez, the Chief Operating Officer of Paleteria
La Michoacana (Sub), Inc.; two private investigators, Zachary
Fechheimer and Patti James; George Reis, an expert in the
field of image forensics; and Samuel Quinones, a journalist
who has written on the subject of paleterias. PLM introduced
a substantial volume of exhibits and designated significant
deposition testimony for consideration.
presented eleven witnesses over the course of five days:
Ruben Gutierrez, who co-founded PLM’s business with his
brother, Ignacio Gutierrez, and left PLM in 1999; Marco
Antonio Andrade Malfavon, a partner of PROLACTO; four U.S.
licensees or employees of U.S. licensees, Mary Fernandez,
Teresita Fernandez, Miguel Chavez Bermudez, and Cesar
Gonzales Perez; Jorge Leon Baz, PROLACTO’s outside
Mexican counsel; Dr. Jacob Jacoby, an expert who conducted a
market research study; and three individuals who claimed to
have either purchased or consumed PLM’s products,
Felipe de Jesus Martinez, Lorena Salazar, and Ramon Salazar.
PROLACTO introduced a substantial volume of exhibits and
designated significant deposition testimony for
consideration. During trial, the Court also took under
advisement issues relating to the admissibility of numerous
exhibits proffered by both parties.
the close of trial, each party submitted their proposed
findings of fact and conclusions of law to the
Court. See Pls.’ [Proposed]
Findings of Fact & Conclusions of Law (“Pls.’
Br.”), ECF No. 309; Def.’s Proposed Findings of Fact
& Conclusions of Law (“Def.’s Br.”),
ECF No. 311. Each party also submitted an opposition
brief. See Pls.’ Opp’n & Obj.
Def.’s Proposed Findings of Fact & Conclusions of
Law (“Pls.’ Opp’n”), ECF No. 314;
PROLACTO’s Reply & Opp’n Pls.’
[Proposed] Findings of Fact & Conclusions of Law
(“Def.’s Opp’n”), ECF No. 315.
Other Pending Motions
addition to the factual and legal issues presented to the
Court during trial, several other motions filed during the
course of trial or post-trial remain pending.
filed a motion for involuntary dismissal of PLM’s
claims under Rule 52(c) of the Federal Rules of Civil
Procedure at the close of PLM’s case-in-chief.
See Def.’s Mot. & Mem. Involuntary
Dismissal & Recons. Interlocutory Order, ECF No. 283.
Pursuant to Rule 52(c), the Court declined to render any
judgment until the close of all the evidence. See
Day 9 A.M. at 4:13-5:3. Because the Court now finds for PLM
on some of its claims after the close of all the evidence,
PROLACTO’s motion for involuntary dismissal will be
denied as moot.PROLACTO also filed a separate motion to
exclude evidence and to seek spoliation sanctions.
See Def.’s Mot. & Mem. Exclusion &
Spoliation Sanctions, ECF No. 290. For numerous reasons
explained below, the Court will deny that motion. Finally, in
response to certain post-trial arguments made by PLM in its
proposed findings of fact and conclusions of law, PROLACTO
filed a motion seeking leave to file additional deposition
designations. See Def.’s Mot. Seeking Leave
File Add’l Deposition Designations, ECF No. 316. The
Court discusses the significance of the parties’
designated deposition testimony in its findings of fact, and,
for the reasons stated below, will deny PROLACTO’s
motion as moot.
for its part, filed four motions asking the Court to take
judicial notice of certain facts. See Pls.’
Request Judicial Notice, ECF No. 248; Pls.’ Request
Judicial Notice No. 2, ECF No. 263; Pls.’ Request
Judicial Notice No. 3, ECF No. 277; Pls.’ Request
Judicial Notice No. 4, ECF No. 282. The Court addresses these
pending motions, as well as admissibility issues relating to
certain evidence taken under advisement during the trial,
throughout its findings of fact to the extent that the Court
has found the issues relevant. To the extent those issues are
not relevant to the Court’s analysis, they will be
denied as moot.
Court first sets forth the requirements of the Federal Rules
of Civil Procedure governing the Court’s findings of
fact and conclusions of law and then addresses the standard
that the Court uses in reviewing the TTAB’s decision in
Rule 52(a) of the Federal Rules of Civil Procedure
to Rule 52(a) of the Federal Rules of Civil Procedure, in an
action tried without a jury, the Court “must find the
facts specially and state its conclusions of law
separately.” Fed.R.Civ.P. 52(a)(1). The Court’s
“[f]indings and conclusions may be incorporated in any
opinion or memorandum of decision the court may file.”
Defs. of Wildlife, Inc. v. Endangered Species Sci.
Auth., 659 F.2d 168, 176 (D.C. Cir. 1981); see
also Fed. R. Civ. P. 52(a)(1) (“The findings and
conclusions . . . may appear in an opinion or memorandum of
decision filed by the court.”).
Court’s findings must be “sufficient to indicate
the factual basis for the ultimate conclusion.”
Kelley v. Everglades Drainage Dist., 319 U.S. 415,
422 (1943); see also Lyles v. United States, 759
F.2d 941, 943-44 (D.C. Cir. 1985) (“One of [the
rule’s] chief purposes is to aid the appellate court by
affording it a clear understanding of the ground or basis of
the decision of the trial court.” (internal quotation
omitted)). “But the judge need only make brief,
definite, pertinent findings and conclusions upon the
contested matters; there is no necessity for over-elaboration
of detail or particularization of facts.” Fed.R.Civ.P.
52(a) advisory committee note to 1946 amendment; accord
Caffey v. Togo, No. 97-5092, 1998 WL 230269, at *2 (D.C.
Cir. Feb. 9, 1998); Wise v. United States, ___
F.Supp. 3d ___, 2015 WL 7274026, at *2 (D.D.C. Nov. 17,
2015); Moore v. Hartman, 102 F.Supp. 3d 35, 65
Court is neither “require[d]” nor
“encourage[d]” “to assert the negative of
each rejected contention as well as the affirmative of those
which they find to be correct.” Schilling v.
Schwitzer-Cummins Co., 142 F.2d 82, 84 (D.C. Cir. 1944);
see also Huff v. City of Burbank, 632 F.3d 539, 543
(9th Cir. 2011) (“It is . . . not ‘necessary that
the trial court make findings asserting the negative of each
issue of fact raised.’” (quoting Carr v.
Yokohama Specie Bank, Ltd., of S.F., 200 F.2d 251, 255
(9th Cir. 1952), rev’d on other grounds, 132
S.Ct. 987 (2012))). Similarly, “the court need not
‘address every factual contention and argumentative
detail raised by the parties, ’ or ‘discuss all
evidence presented at trial.’” Moore,
102 F.Supp. 3d at 65 (quoting Mayaguez v. Corporacion
Para El Desarrollo Del Oeste, 824 F.Supp.2d 289, 295
(D.P.R. 2011); Wachovia Bank N.A., Nat. Ass’n v.
Tien, 598 Fed. App’x 613, 617-18 (11th Cir.
2014)); see also Wise, 2015 WL 7274026, at *2
(“[T]he Court need not address all the evidence
presented at trial, and must simply make findings sufficient
to allow the appellate court to conduct a meaningful
review.”); Fasolino Foods Co. v. Banca Nazionale
del Lavoro, 961 F.2d 1052, 1058 (2d Cir. 1992)
(“All that is required by Rule 52(a) is that the trial
court provide findings that are adequate to allow a clear
understanding of its ruling.”); 9C Charles Alan Wright
& Arthur R. Miller, Federal Practice &
Procedure § 2579 (3d ed. 2008).
accordance with these standards, the Court has cited portions
of the record, including trial testimony, trial exhibits,
designated deposition testimony, and the TTAB record, to
support its findings of fact. The Court has not, however,
exhaustively identified every portion of the record upon
which it has relied to make its findings of fact, and the
omission of a citation to a particular portion of the record
does not necessarily mean that the Court did not rely on that
portion to make its findings of fact. Rather, the Court has
considered the record in its entirety, including the
Court’s own determination of witnesses’
credibility, and its citations to portions of the record are
simply intended to provide a helpful reference for the basis
of its findings.
the Court notes that Rule 52 provides that the Court’s
“[f]indings of fact, whether based on oral or other
evidence, must not be set aside unless clearly erroneous, and
the reviewing court must give due regard to the trial
court’s opportunity to judge the witnesses’
credibility.” Fed.R.Civ.P. 52(a)(6); see also
Anderson v. City of Bessemer City, N.C. , 470 U.S. 564,
573-76 (discussing the “clearly erroneous”
Standard for Reviewing the TTAB’s Decision
seeks reversal of the TTAB’s decision to cancel the
registration of its trademark in Complaint Count I. The other
pending claims and counterclaims in this action were not
presented to the TTAB. Nevertheless, because there is some
overlap in the factual issues underlying Complaint Count I
and the other claims and counterclaims in this action, and
given recent developments in the legal landscape, it is
helpful for the Court to clarify upfront that the standard by
which it reviews the TTAB’s factual findings and makes
its own findings of fact in this case is de novo.
an understanding of the statutory framework for this action
is necessary. The Lanham Act offers a party to a cancellation
proceeding before the TTAB who is “dissatisfied”
with the TTAB’s decision two options. See 15
U.S.C. § 1071. The party may either: (1) appeal the
TTAB’s decision directly to the United States Court of
Appeals for the Federal Circuit pursuant to § 1071(a);
or (2) commence a civil action in a United States District
Court pursuant to § 1071(b). See Id. Here, PLM
chose the latter option, filing this action against PROLACTO
pursuant to § 1071(b). In a § 1071(b) action, the
district court is empowered to “adjudge that an
applicant is entitled to a registration upon the application
involved, that a registration involved should be cancelled,
or such other matter as the issues in the proceeding require,
as the facts in the case may appear.” 15 U.S.C. §
under § 1071(a) and § 1071(b) “differ in
important ways.” Aktieselskabet AF 21. Nov. 2001 v.
Fame Jeans, Inc., 525 F.3d 8, 13 (D.C. Cir. 2008). For
example, unlike a § 1071(a) proceeding, in a §
1071(b) proceeding, the court is not always required to
review the TTAB’s record. Rather, the statute only
requires that the record “be admitted on motion of any
party, upon such terms and conditions as to costs, expenses,
and the further cross-examination of the witnesses as the
court imposes, without prejudice to the right of any party to
take further testimony.” 15 U.S.C. § 1071(b)(3);
see also Aktieselskabet, 525 F.3d at 13. Once
admitted, the record “shall have the same effect as if
originally taken and produced in the suit.” 15 U.S.C.
§ 1071(b)(3); see also Aktieselskabet, 525 F.3d
at 13. And, importantly, the parties in § 1071(b) action
may raise new claims, present new evidence, and seek
additional relief beyond that which was before the TTAB.
See Aktieselskabet, 525 F.3d at 13 (holding that the
district court “may consider both new issues and new
evidence that were not before the TTAB”). Here, both
parties have asserted a variety of new claims and introduced
substantial evidence, in the form of both witness testimony
and documentary evidence, that was not before the TTAB.
determining the proper standard of review in this case, the
Court looks to recent Supreme Court precedent. In 2012, the
Supreme Court held in Kappos v. Hyatt, 132 S.Ct.
1690 (2012), that when an applicant for a patent seeks review
of a decision of the USPTO in a district court pursuant to 35
U.S.C. § 145 and “new evidence is presented on a
disputed question of fact, the district court must make
de novo factual findings that take account of both
the new evidence and the administrative record before the
PTO.” Kappos, 132 S.Ct. at 1701. The Court
The district court must assess the credibility of new
witnesses and other evidence, determine how the new evidence
comports with the existing administrative record, and decide
what weight the new evidence deserves. As a logical matter,
the district court can only make these determinations de
novo because it is the first tribunal to hear the
evidence in question.
Id. at 1700. The Court agreed with the Federal
Circuit’s decision below that “the district court
may, in its discretion, ‘consider the proceedings
before and findings of the Patent Office in deciding what
weight to afford an applicant’s newly-admitted
evidence’” but also cautioned that
“[t]hough the PTO has special expertise in evaluating
patent applications, the district court cannot meaningfully
defer to the PTO’s factual findings if the PTO
considered a different set of facts.” Id.
(quoting Hyatt v. Kappos, 625 F.3d 1320, 1335 (Fed.
Cir. 2010)). Thus, the Court concluded: “the proper
means for the district court to accord respect to decisions
of the PTO is through the court’s broad discretion over
the weight to be given to evidence newly adduced in the
§ 145 proceedings.” Id.
Kappos specifically concerned a federal district
court’s review of a USPTO patent decision under 35
U.S.C. § 145, its holding applies with equal force to
actions challenging a TTAB trademark decision under 15 U.S.C.
§ 1071(b) that involve the introduction of new evidence.
The Supreme Court subsequently clarified in B & B
Hardware, Inc. v. Hargis Indus., Inc., 135 S.Ct. 1293
(2015), that Kappos concerned an “analogous
scheme in patent law” and that when a party challenges
a trademark registration in district court under §
1071(b), “the judge resolves registration de
novo.” B & B Hardware, 135 S.Ct. at
1301; see also Id. at 1305 (referring to a
party’s ability to “seek judicial review of a
TTAB registration decision in a de novo district
court action”); id. at 1306 (stating that
Congress “authorized de novo challenges for
those ‘dissatisfied’ with TTAB decisions”
in § 1071(b)). The Court’s clarification in B
& B Hardware followed the Fourth Circuit’s
decision in a separate case describing Kappos as
“the primary case interpreting the patent and trademark
civil action statutes” and as “explicitly
defin[ing] the only situation where consideration of the TTAB
decision is permitted.” Swatch AG (Swatch SA) v.
Beehive Wholesale, LLC, 739 F.3d 150, 155-56 (4th Cir.
2014); see also Shammas v. Focarino, 784 F.3d 219,
225 (4th Cir. 2015) (citing Kappos, 739 F.3d at
155); Adams Mfg. Corp. v. Rea, Civ. No. 12-1430,
2014 WL 978116, at *7 (W.D. Pa. Mar. 12, 2014). The leading
authority on trademark law has also recognized that, in light
of Kappos, a district court reviews the TTAB record
in a § 1071(b) proceeding de novo. 3 J. Thomas
McCarthy, McCarthy on Trademarks & Unfair
Competition (“McCarthy on
Trademarks”) § 21:20 (4th ed. 2016)
(“[I]f review is sought in a federal district court,
new evidence is permitted and both new evidence and the
T.T.A.B. record are reviewed with ‘de
novo’ scrutiny.”); id. § 21:22
(“[A]fter the 2012 Kappos case, the district
court reviews with ‘de novo’
in line with the Supreme Court’s decisions in
Kappos and B & B Hardware, the Court
makes its findings of fact and conclusions of law de
novo. As permitted by Kappos, the Court has
reviewed the entirety of the TTAB record in this case and, in
its discretion, takes into account both the new evidence
submitted over the course of the lengthy bench trial and the
TTAB record. See Kappos, 132 S.Ct. at 1701. But
because the TTAB, in many respects, considered a
“different set of facts” than has been presented
here, the Court finds itself largely unable to
“meaningfully defer” to the TTAB’s factual
findings, despite the TTAB’s expertise on trademark
issues. Id. The Court recognizes that this standard
of review may represent a departure from the
pre-Kappos approach in this Circuit, as well as the
Court’s own approach at the summary judgment stage of
this litigation,  but the Court is confident, particularly
after the Supreme Court’s clarification in B &
B Hardware, that the proper standard of review is de
novo. The parties appear to be in agreement with the
Court on this issue as well.
FINDINGS OF FACT
plaintiffs and counter-defendants in this action, Paleteria
La Michoacana, Inc. (“PLM, Inc.”) and Paleteria
La Michoacana (Sub) Inc. (“PLM (Sub) Inc.”), are
produces and sells Mexican-style ice cream, paletas, and
bolis out of its current headquarters in Modesto, California.
See Day 3 A.M. at 90:4-92:2. A paleta is a
Mexican-style popsicle that can be either water-based or
cream-based. See Id. at 92:7-13. A bolis is an ice
milk or water-based product similar to an American push pop
that is sealed on both sides and cylindrical in shape.
See Id. at 90:15-18.
PLM’s target consumers are of Mexican origin, typically
first-, second-, or third-generation immigrants to the United
States from Mexico. The flavor profile of PLM’s
products is designed to appeal to these target consumers, but
PLM also sells its products to consumers that fall outside
this target demographic. See Day 5 A.M. at 91:5-15.
Today, PLM sells its products to Wal-Mart, large supermarkets
such as Safeway, HEB, Albertsons, and Super Value, and
regional chain stores, such as Save Mart, FoodMaxx, and Lucky
Stores in the Northern California area, and Vallarta
Supermarkets, Northgates, and El Super in the Southern
California area. See Day 5 A.M. at 92:16-93:3. PLM
also sells some of its product to distributors that
distribute to street vendors. See Id. at 93:7-16.
PLM does not generally sell its products directly to
consumers, and it does not own or operate any retail location
where consumers can purchase its products. PLM currently
sells its products in, approximately, 30 states or more.
See Day 6 A.M. at 102:21-23.
History and Growth of PLM
history of PLM can be traced to Ignacio and Ruben Gutierrez,
two brothers who immigrated to California from Jalisco,
Mexico and began selling shaved ice part-time out of
pushcarts in the area of Turlock, California in 1988 or 1989.
See Day 3 A.M. at 76:6-80:25; Day 8 A.M. at
37:24-40:15. The Gutierrez brothers sold shaved ice under the
name “Acapulco” from approximately 1988 to 1991.
See Day 3 A.M. at 80:12-25; Day 8 A.M. at
or about October 1990, the Gutierrez brothers decided to sell
paletas instead of shaved ice. In preparation, the brothers
visited Guadalajara, in the state of Jalisco, Mexico to
purchase paleta-making equipment, including molds,
flavorings, sticks, a brine tank, and push carts, and to
learn how to make, package, and store paletas. As part of
their research in Mexico, the brothers also visited numerous
paleterias in order to understand the business of making and
selling paletas. See Day 3 A.M. at 82:10-86:21; Day
8 A.M. at 45:17-52:14.
1991, using money they had saved from their shaved ice
business, the Gutierrez brothers opened a paleta factory at
351 North Walnut Road in Turlock, California and sold the
paletas that they made in this factory out of their pushcarts
in the Northern California area. See Day 3 A.M. at
81:11-82:5; id. at 94:6-16; Day 8 A.M. at
1991 to 1999, the Gutierrez brothers conducted their paleta
business as a general partnership based on an oral agreement.
The Gutierrez brothers executed a written partnership
agreement effective January 1, 1999, a few months before the
partnership dissolved. See Day 3 P.M. at
34:17-35:15; Day 8 A.M. at 62:17-63:4; R. Gutierrez Dep. Tr.
(Mar. 15, 2010) at 9:22-11:11, 35:15-24, TTAB Dkt. 81.
1991, the Gutierrez brothers’ paleta business generated
between $50, 000 and $60, 000 in sales revenue. By 1998,
their business generated close to $1 million in sales.
See Day 3 A.M. at 94:17-19 (sealed testimony); Day 3
P.M at 76:24-77:14; Day 5 A.M. at 85:8-13.
Gutierrez brothers’ partnership operated under various
fictitious names over time, including “Paleteria
Michoacana, ” “Paleteria La Michoacana, ”
and “La Michoacana, ” but all variations used the
word “Michoacana.” See, e.g., R.
Gutierrez Dep. Tr. (June 10, 2013) at 13:1-5 (stating that
the partnership conducted business under the name
“Paleteria Michoacana”); id. at 15:10-16
(stating that business “probably” operated under
names other than “Paleteria Michoacana” between
1991 and 1996 but that he was not sure); I. Gutierrez Dep.
Tr. (Dec. 30, 2009), Reg. Ex. 30, TTAB Dkt. 69; (Affidavit of
Publication for fictitious business name of “PALETERIA
MICHOACANA” dated May 22, 1991); id. Reg. Ex.
37 (telephone bill dated February 17, 1993 addressed to
“RUEBEN [sic] GUTIERREZ DBA LA MICHOACANA”); I.
Gutierrez Dep. Tr. (Dec. 30, 2009), Reg. Ex. 36, TTAB Dkt. 71
(Purchase and Sale Agreement dated April 8, 1999 terminating
the partnership known as “PALETERIA LA
May 5, 1993, the Gutierrez brothers sold their product
wholesale to a Las Vegas, Nevada distributor. Ignacio
Gutierrez recorded the sale by hand on an invoice with the
name “PALETERIA MICHOACANA” written on the top.
See Pls.’ Ex. 142 at 1; Day 3 A.M. at
or about 1997, the Gutierrez brothers began to have
disagreements with each other, which sometimes resulted in
physical violence. In early 1997, as a result of these
disagreements, Ruben temporarily left the business. Ignacio
persuaded Ruben to return a week or two later, but the
Gutierrez brothers agreed to conduct their business
separately. Under this arrangement, each brother ran the
business in two-week shifts so that they did not need to work
together at the same time. From that point until the
dissolution of the partnership, the Gutierrez brothers had
very limited contact with each other. Despite this
arrangement (or perhaps as a result of it), the Gutierrez
brothers continued to have serious disagreements with each
other. See Day 8 A.M. at 65:4-72:25.
1998, Ignacio married Patricia Gutierrez, who then immigrated
to the United States in approximately February 1999. In March
or April 1999, she began visiting the PLM offices to
informally assist Ignacio with his work. The marriage and
Patricia’s involvement in the business exacerbated
problems between the Gutierrez brothers, and Ruben Gutierrez
ultimately determined that it was necessary to dissolve the
partnership. See Day 6 A.M. at 50:17-51:2; Day 6
P.M. at 5:10-6:3; Day 7 A.M. at 96:13-24; id. at
106:16-107:20; Day 8 A.M. at 77:17-83:12; see also
Day 4 A.M. at 9:17-10:2.
Gutierrez brothers terminated their partnership through a
Purchase and Sale Agreement dated April 8, 1999 pursuant to
which Ignacio Gutierrez agreed to pay Ruben for his 50% share
of the business. See Day 3 P.M. at 35:10-23; Day 8
A.M. at 83:13-84:7; I. Gutierrez Dep. Tr. (Dec. 30, 2009),
Reg. Ex. 36, TTAB Dkt. 71 (Purchase and Sale Agreement dated
April 8, 1999 terminating the partnership known as
“PALETERIA LA MICHOACANA”).
After the termination of the Gutierrez brothers’
partnership, Ruben Gutierrez formed his own paleta and ice
cream business called Tropicale Foods, Inc. (“Tropicale
Foods”). Tropicale Foods primarily sells its products
using the trademark name “Helados Mexico.”
See Day 8 P.M. at 38:13-40:3. Tropicale Foods and
PLM are competitors. See Day 4 A.M. at 13:1- 9.
Following the dissolution of the Gutierrez brothers’
partnership, Ignacio Gutierrez continued to operate the
business without interruption as a sole proprietorship.
See Day 3 P.M. at 35:16-36:9. At the time, the sole
proprietorship primarily sold its products to
independently-owned Mexican stores in the United States and
the “C-store channel, ” which includes gas
stations with mini-marts and neighborhood convenience stores
and liquor stores. See Day 5 A.M. at 91:16-92:15.
approximately May or June 1999, Patricia Gutierrez began
formally working for the sole proprietorship in an
administrative or secretarial role, which included, among
other things, filing documents related to sales and
distribution and ordering and distributing office supplies.
See Day 5 A.M. at 82:11-17; id. at 108:6-9;
id. at 112:3-6; Day 6 A.M. at 50:17-51:2; Day 6 P.M.
at 5:21-6:3; Day 7 A.M. at 109:11-21.
the time that Patricia Gutierrez joined the business in 1999,
PLM sold its products to, among others, a distributor that
sold PLM’s products in the Sacramento and northern
Nevada areas. See Day 5 A.M. at 93:17-94:11.
issue of when PLM began selling its products in interstate
commerce was disputed between the parties. PROLACTO argues,
without providing any citation to the record, that PLM made
its “first-ever interstate sale of product . . . when
Ignacio Gutierrez personally delivered a relatively small
shipment of paletas to a customer in the State of
Arizona” on February 21, 2005. Def.’s Br. at 11
¶ 39. PROLACTO appears to be referencing PLM’s
sale of product bearing the registered LA INDITA MICHOACANA
mark to a customer in Arizona named Cruz Ramirez.
See Day 4 P.M. at 88:7-14. That sale is discussed
below. The Court is not persuaded, based on its observation
of the witnesses’ testimony and trial and its review of
the documentary record in this case that this was PLM’s
“first-ever” interstate sale.
also offered testimony by Ruben Gutierrez that throughout his
time as a partner in the business from 1991 to April 1999,
PLM sold its products exclusively within the state of
California. See Day 8 A.M. at 75:25-77:18. To the
extent that his testimony conflicts with Patricia
Gutierrez’s testimony, the Court found Ms.
Gutierrez’s testimony to be more credible and
convincing. As explained in detail below with respect to the
dispute over PLM’s first use of the Indian Girl mark,
the Court found Ms. Gutierrez to be more credible in her
testimony than Ruben Gutierrez for a number of reasons,
including the Court’s observation of the
witnesses’ live testimony. With respect to this issue
specifically, the Court found Ms. Gutierrez’s testimony
to be particularly credible given her specific recollection
of personally processing the paperwork to obtain a license to
sell PLM’s dairy products across state lines and into
Nevada. See Day 5 A.M. at 94:3-11.
2002, Ignacio Gutierrez incorporated the business in
California as Paleteria La Michoacana, Inc. See Day
3 P.M. at 54:19-25.
Also in 2002, the business moved from 351 North Walnut in
Turlock, California to its current location at 2068 Lapham
Drive in Modesto, California, 95354. PLM makes all of its
products at the Modesto, California location. See
Day 3 A.M. at 90:19-92:2; Day 5 A.M. at 84:23-85:2.
From 1999 and through 2006, PLM expanded its geographic
distribution to other states, and, by 2005, PLM was selling
its products in, at a minimum, California, Nevada, Texas,
Oregon, Utah, and Colorado. See Day 6 A.M. at
some point in 2005, PLM began selling its products to
supermarket and grocery store chains in Texas, including in
the areas of Houston and Dallas, that in turn offered
PLM’s products for sale to consumers. See
generally Day 6 A.M. at 101:24-102:1. For example, PLM
began selling its product to and running advertisements in
HEB, a chain operating stores in Houston and Dallas, and a
Hispanic-format store operated by HEB called Mi Tienda.
See Day 4 A.M. at 25:8-26:18; Day 6 A.M. at
64:4-66:16; Pls.’ Ex. 121 at 2. PLM also began selling
to Sellers Bros., a chain operating in the city of Houston
and areas to the south of the city, as well as running
advertisements in the chain’s weekly circular.
See Day 6 A.M. at 58:16- 63:12; Pls.’ Ex. 121
2011, Ignacio Gutierrez sold 22% of his ownership interest in
PLM, Inc. to the Central Valley Fund (“CVF”). As
part of this transaction, Paleteria La Michoacana, LLC
(“PLM, LLC”) was formed. See Day 3 P.M.
Between 2006 and 2012, PLM expanded its geographic
distribution even further through large-scale retailers such
as Wal-Mart, entering states including Washington, New
Mexico, and Illinois. See Day 6 A.M. at 102:2-19.
2013, PLM, LLC was converted to Paleteria La Michoacana
(Sub), Inc. (“PLM (Sub) Inc.”), which has
continued to operate the business to the present day.
See Day 3 P.M. at 80:24-82:4. CVF subsequently
converted its equity in the company to debt. See Day
7 P.M. at 60:16-25.
PLM’s business grew over time, particularly following
the dissolution of the Gutierrez brothers’ partnership
in April 1999, in terms of its payroll, geographic
distribution, revenue, and variety of products. See,
e.g., Day 5 A.M. at 82:25-84:1; Pls.’ Ex. 147;
Pls.’ Ex. 269.
PLM’s Use of “Michoacana”
Since 1991, PLM has continuously and consistently used
“Michoacana” or “La Michoacana” as a
trademark in connection with making and selling paletas,
bolis, and ice cream. See Day 3 A.M. at 94:20-95:3;
Day 8 P.M. at 30:21-31:6; R. Gutierrez Dep. Tr. (Mar. 15,
2010) at 35:25-37:2, 38:5-19, 53:6-9, TTAB Dkt. 81.
Gutierrez brothers used “Michoacana” as a
trademark from the beginning of their paleta business in
1991. See Day 3 A.M. at 94:22-95:2.
Gutierrez brothers adopted the marks “La
Michoacana” and “Michoacana” for their
business in 1991 because they had seen that name used in
paleterias in Mexico. At the time that they adopted the
marks, however, they did not believe that, in Mexico, the
terms “La Michoacana” or “Michoacana”
denoted a single source of product. The brothers adopted the
marks because, at least in part, they believed that their
target consumers would recognize the name.
Court’s finding is well grounded in Ignacio and Ruben
Gutierrez’s live testimony at trial. The Gutierrez
brothers both testified that during their time in Mexico,
including during their trip to Guadalajara in preparation for
opening their business in California in 1991, they observed
innumerous paleterias that used the name “La
Michoacana” or a variation on that name containing the
word “Michoacana, ” including “Paleteria
Michoacana.” See Day 3 A.M. at 85:4- 16; Day 8
A.M. at 50:24-51:4; Day 8 P.M. at 63:7-21; see also
R. Gutierrez Dep. Tr. (Mar. 15, 2010) at 7:21-8:1, TTAB Dkt.
81. Ruben Gutierrez was confident that there were, in his
words, “over a thousand” paleterias named
“La Michoacana” in Mexico, Day 8 P.M. at 63:21,
and Ignacio Gutierrez similarly stated that in Guadalajara,
“they’re almost on every corner, ” Day 3
A.M. at 85:8-9; see also Day 4 P.M. at 50:13-14
(stating that there is one “just in every town in
Mexico”). These paleterias were distinct from each
other in terms of appearance. See Day 3 A.M. at
88:9-10; Day 8 P.M. at 51:7-52:9. Ignacio testified that his
understanding was not that the phrase “La
Michoacana” referred to a single source of product,
but, rather, “everybody used it.” Day 3 A.M.
85:8-17; see also Day 4 P.M. at 50:17. Similarly,
Ruben Gutierrez testified on cross-examination that he did
not know whether all of the “La Michoacana”
paleterias that he observed in Mexico were owned or operated
by the same company. See Day 8 P.M. at 63:22- 64:3.
He also testified that he did not know whether PROLACTO
licensed the phrase “La Michoacana” to every
paleteria that uses the name in Mexico. See Id. at
64:4-65:6. Finally, the Court notes that PROLACTO itself was
not even formed in Mexico until 1992, the year after
the Gutierrez brothers began doing business in California
using “La Michoacana, ” and no evidence has been
presented to the Court suggesting that the Gutierrez brothers
recognized some other entity as being the exclusive owner or
user of the phrase “La Michoacana” in Mexico in
There is no indication that the Gutierrez brothers adopted
the name in an effort to associate themselves with a prior
user of the name in the United States.
Gutierrez brothers used “LA MICHOACANA” on
pushcarts, as shown on the design in Plaintiffs’
Exhibit 91. Ignacio Gutierrez drew this design in
October or November of 1990, and it was used on pushcarts
beginning in 1991. See Pls.’ Ex. 91; Day 3
A.M. at 98:12- 100:15.
a period of time beginning in 1991, the Gutierrez brothers
packaged each paleta in a plastic wrapper printed with
“La Michoacana, ” as shown on the design in
Plaintiffs’ Exhibit 59, which is a printer’s
proof of the packaging containing handwritten changes made by
Ignacio Gutierrez in February 1991. This was the first
wrapper design that the Gutierrez brothers used. Pls.’
Ex. 59; Day 3 A.M. at 99:25-105:14; R. Gutierrez Dep. Tr.
(June 10, 2013), Pls.’ Ex. 256, at 16:21-17:7,
a short period in the early 1990s, the Gutierrez brothers
decided to intentionally copy a local competitor’s
paleta wrapper design of a clown for use on their paleta
wrappers. After the local competitor took action against the
Gutierrez brothers, the Gutierrez brothers ceased using the
clown design. See Day 4 P.M. at 92:10-93:23;
id. at 96:5-96:14; Day 8 A.M. at 55:12-57:20.
some point either shortly before or after the Gutierrez
brothers briefly adopted a competitor’s clown design
for their paleta wrappers in the early 1990s, the brothers
created and adopted a new design for their paleta wrappers as
shown in the wrapper film contained in Plaintiffs’
Exhibit 79. This design used “MICHOACANA” with an
array of cartoon fruit and paletas wearing sunglasses in
black and white. Pls.’ Ex. 79; Day 3 A.M. at
1993, the Gutierrez brothers began providing freezers to
retail establishments in order to hold and sell their
products to consumers. A photograph of the first freezer,
which had a decal and the name “PALETERIA MICHOACANA,
” is located in Plaintiffs’ Exhibit 89.
See Pls.’ Ex. 89; Day 3 A.M. at 115:22-118:4;
see also R. Gutierrez Dep. Tr. (June 10, 2013) at
approximately 1994, the Gutierrez brothers modified the
design of their paleta wrappers again, adopting the wrapper
contained in Plaintiffs’ Exhibit 101 and
Defendant’s Exhibit 73. This design, unlike the
previous design, was in color. It used the same array of
fruit and paletas with sunglasses and contained the name
“PALETERIA LA MICHOACANA, ” with “LA
MICHOACANA” being the focus of the design. The
Gutierrez brothers continued to use this wrapper design until
the dissolution of their partnership in 1999. Pls.’ Ex.
101; Def.’s Ex. 73; Day 3 A.M. at 118:21-119:20; Day 8
A.M. at 58:18-59:7.
Since the dissolution of the Gutierrez brothers’
partnership, PLM has continued to use
“Michoacana” in various forms on its products,
including in connection with the Indian Girl and LA INDITA
MICHOACANA marks that are also at issue in this case.
PLM’s Use of the Indian Girl and LA INDITA
has used various marks containing an Indian Girl, appearing
in different designs, in commerce over time.
(Sub), Inc. is currently the owner of the three registered
trademarks appearing in the chart below.
Girl with Paleta” Reg. No. 2, 905, 172 Pls.’ Ex.
Girl with Cone” Reg. No. 2, 968, 652 Pls.’ Ex.
INDITA MICHOACANA Reg. No. 3, 210, 304 Pls.’ Ex. 37
has also used various marks over time that incorporate the
Indian Girls that appear in each of its three registered
marks (or an Indian Girl that is similar in appearance) along
with the words "LA MICHOACANA ES NATURAL" in
different variations. A sample of these marks is provided
"Indian Girl with Paleta " and "Indian Girl
with Cone "
PLM, while it operated as a sole proprietorship owned by
Ignacio Gutierrez, used the Indian Girl with Paleta and
Indian Girl with Cone marks, pictured below, on the outside
of its corrugated shipping boxes in which it shipped products
from its factory in California to distributors and retail
stores in California and Nevada at least as early as June
1999, when, at the latest, Patricia Gutierrez began working
for the business.
fact issue of when PLM first used the Indian Girl with Paleta
and the Indian Girl with Cone marks on its shipping boxes was
sharply disputed by the parties at trial through conflicting
Gutierrez testified that the Gutierrez brothers’
partnership began using the Indian Girl with Paleta on the
outside of the corrugated shipping boxes used for shipping
and selling their fruit bars to customers in 1994.
See Day 3 P.M. at 44:17-45:24; id. at
50:11-25. He stated that, beginning in 1995, the brothers
began also using the Indian Girl with Cone mark on their
shipping boxes for ice cream bars. See Id. at
49:22-50:10. Ignacio explained that he and his brother
disagreed over whether to use the Indian Girl, with Ignacio
wanting to use it because it represented the name
“Michoacana” and Ruben not wanting to use it
because he did not want a change. See Id. at
47:16-49:6. As a compromise, according to Ignacio’s
testimony, they agreed to use the Indian Girl, which Ignacio
said that he drew, on shipping boxes. See Day 4 P.M.
at 94:3-95:10. He stated that PLM no longer had any
original boxes from that time but identified photographs of
more recent shipping boxes that displayed the Indian Girl
with Paleta and Indian Girl with Cone marks, cropped portions
of which appear below. See Day 3 A.M. at 49:7-51:9.
Gutierrez, in stark contrast, testified that the partnership
never used any Indian Girl marks, including the Indian Girl
with Paleta and Indian Girl with Cone marks, on its shipping
boxes and that the first time that he saw a shipping box with
those marks was when he saw them in the marketplace in
approximately late 2004, long after he left PLM’s
business in April 1999. See Day 8 A.M. at 91:7-93:5.
He did not believe that the brothers had ever discussed the
idea of using an Indian Girl at any time during their
partnership. See Day 8 P.M. at 5:12-22.
Patricia Gutierrez testified several times over the course of
three separate days that, at the time she joined
Ignacio’s sole proprietorship in 1999, the business
used both the Indian Girl with Paleta and the Indian Girl
with Cone on its shipping boxes. She identified the same
photographs as Ignacio and testified that those boxes were
shipped to customers in California and Nevada. Because she
was not a part of the business at the time that it operated
as the Gutierrez brothers’ partnership, she had no
personal knowledge of its prior use. See Day 5 A.M.
at 95:3-97:19; Day 6 A.M. at 51:3-19; Day 7 A.M. at 110:2-6;
Day 7 P.M. at 58:15- 59:19.
without any documentary evidence supporting either
side’s position, the Court must resolve this factual
dispute by making credibility determinations. The Court found
Patricia Gutierrez to be the most credible witness of the
three. Based on the Court’s observation of her entire
live testimony over the course of more than two-and-a-half
days of trial, as well as her testimony on this particular
issue, the Court found her to be clear, consistent, and
sufficiently and reasonably precise in her recollections. She
even returned after one break to clarify, unprompted by
counsel, that one particular Indian Girl design along with
the words LA MICHOACANA ES NATURAL, discussed below, was not
used on PLM’s shipping boxes in 1999 but that it was
added years later. See Day 5 P.M. at 4:15-5:20.
Moreover, PROLACTO did not present any evidence to counter
her testimony as to the 1999 time frame, as Ruben Gutierrez
left the business in April 1999, before Patricia joined.
Court did not find Ruben Gutierrez’s testimony on this
issue, or on any of the other issues that PLM’s
witnesses disputed at trial, to be particularly credible or
persuasive. The Court found, based on its observation of his
live testimony in court, including his demeanor, that Ruben
Gutierrez was extremely emotional and, frankly, hateful
towards his brother and he exhibited a high degree of bias
that undercut the reliability of his testimony. It is helpful
for the Court to explain just some of its observations
supporting its reasoning here.
and foremost, the Gutierrez brothers have had a very long and
extremely contentious history together. Ruben testified, for
example, that their disputes rose to the level of serious
physical altercations. See Day 8 P.M. at 69:25-70:1
(“Well, he knocked me out once when I was cold. Two or
three hours later I woke up.”). He even testified,
while being extremely emotional in court, that if he had not
left PLM, “someone was going to kill someone, ”
and, when asked whether he would have killed
someone, responded, “Anything can happen in the heat of
passion.” Id. at 68:11-19; see also
Id. at 69:18-21 (“[A]rguments led to altercations,
physical altercations. And you never know what will happen in
one of those things. It’s in the heat of passion
somebody is going to kill somebody else.”). He also
became very emotional when discussing disputes that he and
Ignacio had concerning their mother. See Id. at
88:3-89:23. He also testified emotionally regarding prior
litigation that he and Ignacio had concerning the terms of
their partnership and its dissolution and claimed that
Ignacio “wanted to put [his] wife and [him] in
jail.” Id. at 55:6; see also Id. at
55:5-56:14 (stating that he “pleaded and begged, got on
[his] knees”). It is not the Court’s place to
take any position on the legitimacy of Ruben
Gutierrez’s opinion of his brother. The Court does,
however, find that, given this long and emotional history,
his testimony on key factual disputes in this case was
colored by bias and not credible.
also important to note that, beyond emotional issues, the
Court found that Ruben Gutierrez appeared biased based on his
business stake in the outcome of this trial. His business,
Tropicale Foods, is a direct competitor of PLM, and Ruben
stated that from 1999 through 2008, PLM was his
biggest competitor. See Day 8 P.M. at
60:14-61:5. Ignacio and Ruben engaged in litigation that
concerned unfair competition, and Ignacio was successful,
almost putting Ruben out of business. See Day 8 A.M.
at 102:18-24; Day 8 P.M. at 21:5-23. It was, in fact, Ruben
who first took issue with some of PLM’s advertisements
and marks that are at issue in this case, retaining a lawyer
in March 2006 to send a cease-and-desist letter to PLM and to
alert PROLACTO and the USPTO. See Day 8 P.M. at
12:12-19:22; Def.’s Ex. 83 (letter dated March 22,
2006). That letter referred to Tropicale Foods as being
PLM’s “biggest competitor.” Def.’s
most significantly, Ruben testified that he had been in
discussions with PROLACTO about licensing the very marks at
issue in this case and distributing product for PROLACTO in
the United States. He testified that this discussion began
around 2007, see Day 8 P.M. at 70:5-71:25, the same
year that PROLACTO commenced the cancellation proceedings
before the TTAB in this case. Later, in August 2011, a month
after the TTAB denied PLM’s motion for reconsideration
of its decision to cancel its LA INDITA MICHOACANA mark,
PROLACTO’s lead counsel in this case and Jorge Leon,
PROLACTO’s Mexican counsel who was also present at
trial, arranged a meeting between Ruben and PROLACTO to
discuss a potential licensing arrangement in Mexico City.
See Pls.’ Ex 316 (August 10, 2011 e-mail
exchange); see also Day 8 P.M. at 72:1-75:1.
According to Ruben, that meeting took place in September
2011, the same month that PLM filed its initial complaint in
this action. See Day 8 P.M. at 75:2-76:17. For all
of these reasons, and many more not described here, the Court
found Ruben Gutierrez to be an unreliable witness.
the Court also notes that its finding of fact does not place
great weight on Ignacio Gutierrez’s testimony, either.
Based on the Court’s observation of his live testimony
at trial and its consideration of his prior conduct, not to
mention his own personal and business stake in the outcome of
this litigation, the Court did not find Ignacio Gutierrez to
be a particularly credible witness on this issue. The Court
need not determine, however, precisely when PLM began using
the Indian Girl designs on its shipping boxes, as, for
purposes of this case, whether PLM began using the marks in
June 1999 or earlier is immaterial.
began using its Indian Girl marks because, at least in part,
Ignacio Gutierrez had seen the Indian Girl mark used in
paleterias in Mexico and believed that PLM’s target
consumers would also recognize the mark. He did not, however,
believe that, in Mexico, the mark denoted a single source of
product, and there is no indication that he was aware of any
prior use of the Indian Girl in the United States.
Ignacio Gutierrez was asked on direct examination why he
wanted to use an Indian Girl in connection with PLM’s
product packaging, he responded by stating that, because
“La Michoacana” means “the woman from
Michoacán, ” he “wanted to add a girl that
would basically translate to the name itself.” Day 3
P.M. at 48:23-49:6. The Court does not find this to be
credible as a complete explanation, however. On
cross-examination, he acknowledged that he had seen a version
of an Indian Girl in Mexico before adopting it in the United
States and that he “redid [his] own version of
it” from his memory of its use in Mexico. Day 4 P.M. at
46:7-16. For the same reasons stated above with respect to
the term “La Michoacana, ” the Court does not
find, however, that Ignacio Gutierrez believed that the
Indian Girl was associated with one particular source in
Mexico. No evidence was presented at trial suggesting that he
was aware of any usage of the Indian Girl in the United
States before PLM adopted the marks at least as early as June
1999. The Court notes its finding below that PROLACTO did not
begin using an Indian Girl mark until March 2000 and that
there has been no evidence that any third party was using an
Indian Girl mark in the United States before June 1999.
PLM, Inc., which owned the marks as the successor to Ignacio
Gutierrez’s sole proprietorship, filed applications to
register both the Indian Girl with Paleta and Indian Girl
with Cone marks on November 19, 2003. The USPTO issued
Registration No. 2, 905, 172 for the Indian Girl with Paleta
on November 23, 2004 and issued Registration No. 2, 968, 652
for the Indian Girl with Cone on July 12, 2005. See
Pls.’ Exs. 35 and 36. Both registrations became
“incontestable” pursuant to 15 U.S.C. § 1065
on December 12, 2014 upon PLM’s filing of Section 15
affidavits with the USPTO.
has continually and consistently used the Indian Girl with
Paleta and the Indian Girl with Cone marks on its shipping
boxes for paletas and bolis since at least June 1999 and uses
them on its shipping boxes today. See, e.g., Day 3
P.M. at 58:3-19.
PLM’s Use of an Indian Girl with “LA MICHOACANA
has used a design, pictured below, containing an image of an
Indian Girl similar, if not identical, to its Indian Girl
with Paleta inside of a slanted oval with the words “La
MICHOACANA es…natural” on its product packaging,
business cards, and company checks.
Beginning in or around the summer of 2001, while it was
operating as a sole proprietorship owned by Ignacio
Gutierrez, and continuing until late 2002 or early 2003, PLM
used this “slanted oval” design on the wrappers
for some of its products along with cartoon animals, as
reflected in Plaintiffs’ Exhibit 69, a printer’s
proof of the design containing Ignacio Gutierrez’s
handwriting and dated March 17, 2001, and Plaintiffs’
Exhibit 70, a copy of the actual film used for the product
packaging, both of which are copied below with the mark
Court’s finding as to the first use of this design on
product packaging is grounded not only in the Court’s
review of the documentary exhibits but also the live witness
testimony of Ignacio and Patricia Gutierrez. See Day
3 P.M. at 67:20-71:10; Day 6 A.M. at 51:22-54:24. PROLACTO
disputes this fact, arguing that PLM did not use this design
until years later. See Def.’s Opp’n at
15-16 ¶ 44. The Court finds that, based on its review of
the evidence and its observation of the witnesses’
testimony at trial, none of the grounds argued by PROLACTO
has merit. First, PROLACTO argues that the Court cannot
consider these exhibits because they are illegible. See
Id. The Court previously addressed this argument at
trial, when PROLACTO objected to the admission of
Plaintiff’s Exhibit 69 on this same ground.
See Day 3 P.M. at 71:17-19 (“I think
they’re sufficiently legible. I see this logo in my
sleep. I think I can identify it here.”). PROLACTO also
argues that a printer’s proof is insufficient to show
actual use and that Ignacio Gutierrez’s testimony was
not credible. Def.’s Opp’n at 15-16 ¶ 44.
PROLACTO also argues that the existence of a prior version of
this packaging, which is nearly identical, except for the
mark at issue, somehow defeats PLM’s factual claim.
See Id. The Court disagrees. Its finding is based on
more than simply a printer’s proof; it is based on an
exhibit of the actual film that was used, which itself was
accepted by the USPTO as a specimen as part of the
registration application for the Indian Girl with Paleta
mark, as well as testimony from two witnesses. The Court
found, based on its observations of their live testimony,
including their demeanor, that both Ignacio and Patricia
Gutierrez were credible on this issue. The fact that PLM
acknowledges previously using a different version of this
package without the Indian Girl does nothing to belie the
proposition that PLM later elected to change the packaging.
See Pls.’ Ex. 107 at 1; Day 3 P.M. at
PLM, while it operated as a sole proprietorship owned by
Ignacio Gutierrez, also used the same “slanted
oval” design on its business cards at least as early as
June 1999 when, at the latest, Patricia Gutierrez joined the
the issue with the shipping boxes, the issue of when PLM
began using the “slanted oval” LA MICHOACANA ES
NATURAL with Indian Girl design on its business cards was
also sharply disputed by the parties.
argues that it used the design on its business cards at least
as early as 1997, while the Gutierrez brothers operated the
business as a partnership. As support, PLM introduced into
evidence a printer’s proof dated July 28, 1997 for a
set of business cards with the names of Ignacio Gutierrez,
Ruben Gutierrez, and their employees at the time, together
with an invoice for business cards dated November 27, 1997.
See Pls.’ Ex. 200; see also
Pls.’ Ex. 106. Ignacio Gutierrez testified that he and
his brother ordered 10, 000 of these business cards. Ruben
Gutierrez testified that the partnership never used these
cards or any other cards containing an Indian Girl mark and
instead produced on the stand, from his wallet, a hard copy
of a business card that he claimed was the one that the
partnership used. See Day 8 A.M. at 85:12-90:25;
see also Def.’s Ex. 182. This card has what
appears to be an identical front side but a very different
backside, without any Indian Girl present. See
Def.’s Ex. 182. Oddly, unlike the proof with the Indian
Girl, his surname is misspelled. Compare
Def.’s Ex. 182 (“Gutierez”) with
Pls.’ Ex. 200 at 3 (“Gutierrez”). Patricia
Gutierrez testified that when she joined Ignacio
Gutierrez’s sole proprietorship in May or June 1999,
the business was using the cards with an Indian Girl and the
words “La Michoacana Es Natural” and that they
continued to use these cards through approximately the
mid-2000s. See Day 5 A.M. at 110:8-111:23; see
also Day 7 A.M. at 96:3- 17.
the issue of the shipping boxes, the Court found Patricia
Gutierrez’s testimony to be the most credible of the
three and found Ruben Gutierrez’s testimony to be
colored by bias. In addition to the reasons provided above
with respect to the shipping boxes, on this specific issue,
the Court found Patricia Gutierrez’s testimony to be
particularly reliable. Among other reasons, she testified
that, as part of her duties in the office, she was
responsible for handing business cards out to the drivers.
See Day 5 A.M. at 112:3-6. She also recalled seeing
cards for Ignacio and other employees, but not Ruben. See
Id. at 111:24-112:2; see also Day 7 A.M. at
95:14-96:13. The existence of a printer’s proof from
1997 may suggest that the cards were made and used before
1999, and Ruben’s possession of a business card without
the Indian Girl mark on it does not disprove the notion that
the partnership at some point adopted a different design. The
Court is most confident, however, that the business cards
with the Indian Girl mark and the words “LA MICHOACANA
ES NATURAL” were in use at least as early as June 1999.
Beginning in at least June 2000, PLM, at that time a sole
proprietorship owned by Ignacio Gutierrez, used the
“slanted oval” Indian Girl mark on the
company’s invoices. See Pls.’ Ex. 148 at
2 (invoice dated June 14, 2000); see also Id. at 3
(invoice dated October 25, 2000); Day 5 A.M. at 114:16-116:6
(testimony by Ignacio Gutierrez authenticating the invoices
and describing the company’s practice with regard to
Beginning in at least January 2001, PLM, at that time a sole
proprietorship owned by Ignacio Gutierrez, used the
“slanted oval” Indian Girl mark on the
company’s checks. See Pls.’ Ex. 143 at 2
(returned check dated January 25, 2001 signed by Ignacio
approximately 2002, PLM, at that time operating as PLM, Inc.
began using a design containing its Indian Girl with Cone
mark surrounded by the words “LA MICHOACANA ES
NATURAL” on tab lids for its 4 oz. single-serve ice
cream cups, as shown in the printer’s proof of the lid
design dated April 3, 2002 by Patricia Gutierrez found at
Plaintiffs' Exhibit 74. See Pis.' Ex. 74;
Day 5 P.M. at 6:3-8:13.
approximately 2002 or 2003, PLM began using a design
containing its Indian Girl with Cone mark surrounded by the
words "LA MICHOACANA ES NATURAL" on its shipping
boxes, as pictured below in a cropped image of
Plaintiffs' Exhibit 124. See Day 5 P.M. at
14:9-15:5; Day 6 P.M. At 62:8-10, 64:15-25.
Beginning at least as early as January 2004, PLM, Inc. used a
colorized design of its Indian Girl with Cone mark surrounded
by the words "LA MICHOACANA ES NATURAL" on tab lids
for its 5 oz. single-serve ice cream cups, as pictured in a
printer's proof dated January 8, 2004. See Pls.' Ex.
125; Day 5 P.M. at 10:20-12:15.
Beginning at least as early as 2004, PLM, Inc. also used a
design of a "modernized" Indian Girl surrounded by
the words "LA MICHOACANA ES NATURAL" on its
products, including film to package its ice cream sandwiches,
bolis, and ice cream cups. Some examples of its usage of the
mark on product packaging and shipping boxes are shown in the
exhibits below, along with corresponding witness testimony
concerning the use over time.
disputes PLM’s claims regarding its use of these
designs. See, e.g., Def.’s Opp’n at
17-18 ¶ 50 (disputing Plaintiffs’ Exhibit 138);
id. at 17 ¶ 49 (disputing Plaintiffs’
Exhibit 140); id. at 19-20 ¶ 53 (disputing
Plaintiffs’ Exhibit 73). PROLACTO’s argument
rests on essentially two grounds: first, that a
printer’s proof or photograph of a roll of film does
not prove actual usage; and second, that PLM claimed before
the TTAB that the first use of any mark “analogous,
” in PROLACTO’s words, to its LA INDITA
MICHOACANA mark was on February 21, 2005. The Court finds
that neither is persuasive. First, in making its finding of
fact, the Court relies not only on documentary evidence,
although the Court does find dated photographs of actual film
and dated printer’s proofs to be highly persuasive, but
also on live witness testimony, particularly that of Patricia
Gutierrez, who the Court found to be highly credible on this
issue. Second, whether this design is “analogous,
” in PROLACTO’s words, to the LA INDITA
MICHAOCANA mark is better considered in the Court’s
tacking analysis and is not helpful in determining whether
this design was actually used.
PLM’s Use of LA INDITA MICHOACANA
PLM, Inc. started using LA INDITA MICHOACANA (Reg. No. 3,
210, 304) pictured below, on February 21, 2005. The phrase
“La Indita” translates to English as “the
Indian girl.” This mark was used on product packaging,
and the first sale of product with this packaging was made to
Cruz Ramirez, a customer in Arizona. See Day 4 P.M.
applied to register its LA INDITA MICHOACANA mark on June 28,
2005. The USPTO published the mark for opposition on December
5, 2006 and issued the registration on February 20, 2007.
See Pls.’ Ex. 37.
created and adopted this mark on its product packaging
pursuant to an agreement with a third party based in Arizona
who had threatened to challenge its use of “La
Michoacana” on its products. To settle this dispute and
avoid litigation, PLM agreed to use the LA INDITA MICHOACANA
mark on all of the products that it distributes in Arizona
and Nevada. See Day 5 P.M. at 60:4-66:18.
March 2005, PLM obtained, from its attorneys, a trademark
search report concerning uses of the mark LA INDITA
MICHOACANA. Based upon its review of the report, and the
advice of its counsel, PLM determined to use the registered
LA INDITA MICHOACANA mark in Arizona and Nevada. See
Day 6 A.M. at 31:3-48:3.
Since 2005, PLM has also used its registered LA INDITA
MICHOACANA mark in other markets in which it operates.
Outside of Arizona and Nevada, it has used the mark on
certain products, such as its single serve products and value
packs. On other products, even within the same market at the
same time, it has chosen to use LA MICHOACANA marks instead.
See Day 5 P.M. at 62:22-63:3; id. at
tracks sales of products bearing the LA INDITA MICHOACANA
mark separately from products bearing the LA MICHOACANA marks
using different SKU numbers. See Day 6 A.M. at
From February 2005 to the present, PLM has continually used
its registered LA INDITA MICHOACANA mark on a wide variety of
its product packaging, as well as on its shipping boxes, in
all geographic areas in which it distributes product. Some
examples of its usage of the mark on product packaging and
shipping boxes are shown in the exhibits below, along with
corresponding witness testimony concerning the use over time.
Since 2007 or 2008, PLM has also used a design similar to its
registered LA INDITA MICHOACANA mark on product packaging
using the same words “La Indita Michoacana.” In
this design, however, “La Indita” appears to the
side and in small, upper and lowercase letters,
“MICHOACANA” appears in large, all capital
letters at the top, and an Indian Girl appears to the side.
An example of this design is seen in Plaintiffs’ Ex.
133, which shows product packaging for PLM, Inc.’s
half-gallon tubs of ice cream.
yet another variation of the same theme, since at least as
early as 2012, PLM has essentially combined its LA INDITA
mark with a LA MICHOACANA ES NATURAL mark, creating a hybrid
of sorts that appears on some product packaging and shipping
boxes. In this design, “La Indita” is used in
small, upper and lowercase letters to the side of the Indian
Girl and “MICHOCANA” appears on top, with
“ES NATURAL” on bottom. Some examples of this
design in use on product packaging and shipping boxes are
shown in the exhibits below, along with corresponding witness
testimony concerning the use over time.
“tacking” doctrine does not advance PLM’s
priority date for its LA INDITA MICHAOCANA mark, because the
mark does not create the same continuing commercial
impression as its earlier Indian Girl marks.
argues that although it did not begin using its LA INDITA
MICHAOCANA mark prior to February 21, 2005, the priority date
for that mark should be advanced to the date it first used
any Indian Girl mark pursuant to the “tacking”
doctrine. See Pls.’ Br. at 85-91. After
considering the evidence presented to the Court at trial and
PLM’s arguments in its post-trial briefing, the Court
tacking doctrine permits the use of an earlier mark to be
“tacked” onto the later use of a different mark,
in effect “cloth[ing] a new mark with the priority
position of an older mark.” Hana Fin., Inc. v. Hana
Bank, 135 S.Ct. 907, 909 (2015). “The standard for
‘tacking, ’ however, is exceedingly strict:
‘The marks must create the same, continuing
commercial impression, and the later mark should not
materially differ from or alter the character of the mark
attempted to be tacked.’” Brookfield
Commc’ns, Inc. v. W. Coast Entm’t Corp., 174
F.3d 1036, 1048 (9th Cir. 1999) (quoting Van Dyne-Crotty,
Inc. v. Wear-Guard Corp., 926 F.2d 1156, 1159 (Fed. Cir.
1991)) (emphasis in original). Tacking is permitted
“only in rare instances.” Van
Dyne-Crotty, 926 F.2d at 1160 (citation and quotation
marks omitted); see also Brookfield Commc’ns,
174 F.3d at 1047 (stating that it is permitted only in
“exceptionally narrow instance[s]”). In order to
meet this high bar, the previously used mark must be
“the legal equivalent of the mark in question or
indistinguishable therefrom” such that consumers
“consider both as the same mark.” Van
Dyne-Crotty, 926 F.2d at 1159; see also PLM I,
69 F.Supp. 3d at 195 (“The critical inquiry under a
tacking analysis is whether a consumer would consider the
prior and subsequent designs to be the ‘same
mark.’” (citations omitted)); One Indus., LLC
v. Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1161
(9th Cir. 2009) (“[T]acking will be allowed only if the
marks are virtually identical.”); Quicksilver, Inc.
v. Kymsta Corp., 466 F.3d 749, 758 (9th Cir. 2006)
(“The later mark must be indistinguishable from the
original mark at the time that the later mark is
Supreme Court has recognized that “in making rulings in
bench trials, judges may look to past cases holding that
trademark owners either were or were not entitled to tacking
as a matter of law.” Hana Fin., 135 S.Ct. at
912. At the same time, however, the tacking analysis is
“fact-intensive” and “necessarily requires
[a] judgment call[.]” Id. PLM concedes that it
has the burden of establishing tacking. See
Pls.’ Br. at 86 ¶ 94 (citing Navistar
Int’l Transp. Corp. v. Freightliner Corp., No. 96
C 6922, 1998 WL 911776, at *3 (N.D. Ill.Dec. 28, 1998)).
the Court stated in its summary judgment opinion that it was
“less than ideal for a court, sitting in relative
isolation, to speculate about what consumers may think
regarding the similarity of two marks, ” PLM
I, 69 F.Supp. 3d at 196, PLM elected not to present any
evidence during trial as to how exactly consumers view its LA
INDITA MICHOACANA mark in comparison with its other Indian
Girl marks. Instead, PLM essentially asks the Court to rely
on three forms of evidence to find that the marks all create
the same continuing commercial impression: first, the visual
similarity of the marks to each other in comparison to
precedent; second, the testimony of a PROLACTO witness who
once purchased a PLM product; and third, a comment made by
PROLACTO’s counsel during trial. This evidence is far
from sufficient to meet the tacking doctrine’s high
bar. The Court addresses each in turn.
PLM points to the visual similarity between its various
Indian Girl marks over time, providing a chart showing the
changes over time that appears at Plaintiffs’ Exhibit
327, which the Court has reproduced, in part, below for
reference. See Pls.’ Br. at 89; Pls.’
argues that all of these marks create the same continuing
commercial impression, because they all feature a
similar-looking Indian Girl. See Pls. Br. at 90-91
¶¶ 105-10. PLM further argues that the addition of
the words “LA MICHOACANA ES NATURAL” and the
subsequent change to the words “LA INDITA
MICHOACANA” do not alter the commercial impression of
the marks, because, in Spanish, the phrases only refer to or
describe the Indian Girl that is displayed in the mark.
See Id. PLM also asks the Court to compare this set
of marks with other sets of marks that courts have deemed to
be legal equivalents for tacking purposes. See
App’x A, Pls.’ Opp’n, ECF No. 314-1.
Court does not find the visual similarity of PLM’s
various Indian Girl marks over time to be sufficient evidence
to establish that the marks create the same continuing
commercial impression in the minds of consumers. As the Ninth
Circuit has stated: “In determining whether the marks
have the same continuing commercial impression, the visual or
aural appearance may be instructive. Commercial impression,
however, should be resolved by considering a range of
evidence, ideally including consumer survey evidence.”
Hana Fin., Inc. v. Hana Bank, 735 F.3d 1158, 1164
(9th Cir. 2013), aff’d Hana Fin., 135 S.Ct.
907. Other courts, including those cited by PLM, have
recognized that visual similarity is insufficient. See,
e.g., Louangel, Inc. v. Darden Rests., Inc.,
Civ. No. 12-147, 2013 WL 1223653, at *4 (S.D. Tex. Mar. 22,
2013) (stating that “an ‘eyeball’
comparison, alone, does not end the inquiry”);
Navistar, 1998 WL 911776, at *3 n.5 (“[T]he
fundamental inquiry is whether the two marks make the same
commercial impression, not whether the two marks are similar
in appearance. Of course, two marks that are similar in
appearance may make the same commercial impression,
but that will not necessarily be true.”); id.
at *4 (“Defendants argue that we can apply a tacking
test without resort to evidence of consumers’
perceptions, but we disagree. Because the inquiry is how
consumers perceive the marks, there must be some evidence
demonstrating those perceptions.”). The Court’s
consideration of these marks, side-by-side and without any
evidence concerning how consumers in the marketplace perceive
them, does not compel the conclusion that they present the
same continuing commercial impression.
Court’s review of the relevant precedent is similarly
inconclusive. As PLM observes, some courts have permitted
tacking in cases involving marks that appear substantially
different. See, e.g., Miyano Mach. USA, Inc. v.
MiyanoHitec Mach., Inc., 576 F.Supp.2d 868, 889 (N.D.
Ill. 2008); Beech-Nut Packing Co. v. P. Lorillard
Co., 299 F. 834 (D.N.J. 1924), aff’d 7
F.2d 967 (3d Cir. 1925), aff’d 273 U.S. 629
(1927). In most of the cases cited, however, unlike the marks
at issue here, the wording on the marks remained consistent,
particularly in the modern cases. See, e.g.,
Miyano, 576 F.Supp.2d at 889; Paris Glove of
Can., Ltd. v. SBC/Sporto Corp., 84 U.S.P.Q.2d 1856,
1862, 2007 WL 2422997 (T.T.A.B. 2007). The Court also
observes that other courts have refused to permit tacking of
marks that appear to be only barely distinguishable from each
other. See, e.g., One Indus., 578 F.3d at
1160-65 (affirming summary judgment). ...