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

United States District Court, District of Columbia

March 30, 2017

PALETERIA LA MICHOACANA, INC. et al., Plaintiffs & Counter-Defendants,
v.
PRODUCTOS LACTEOS TOCUMBO S.A. DE C.V., Defendant & Counter-Claimant. Re Document Nos. 336, 340, 345, 346, 350, 351, 358

         MEMORANDUM OPINION GRANTING PLAINTIFFS' MOTION TO SUBSTITUTE AND JOIN SUCCESSOR IN INTEREST; DENYING PLAINTIFFS' MOTION TO AMEND THE JUDGMENT; DENYING DEFENDANT'S MOTION FOR NEW TRIAL; DENYING DEFENDANT'S MOTION TO AMEND FINDINGS AND TO AMEND THE JUDGMENT; GRANTING PLAINTIFFS' OPPOSITION AND OBJECTIONS TO DEFENDANT'S BILL OF COSTS, CONSTRUED AS A MOTION; GRANTING IN PART AND DENYING IN PART DEFENDANT'S MOTION FOR LEAVE TO FILE SURREPLY; DENYING DEFENDANT'S REQUEST FOR HEARING

          RUDOLPH CONTRERAS, United States District Judge.

         I. INTRODUCTION

         This case arises from the long-running dispute between Plaintiffs/Counter-Defendants Paleteria La Michoacana, Inc. and Paleteria La Michoacana (Sub), Inc. (collectively, “PLM”)[1]and Defendant/Counter-Claimant Productos Lacteos Tocumbo S.A. De C.V. (“PROLACTO”). Specifically, this litigation concerns the parties' rights to use various registered and unregistered trademarks when selling frozen confections in the United States.

         After resolving a number of preliminary issues, the Court conducted a bench trial over the course of thirteen days beginning on September 14, 2015 and ending on October 1, 2015. On May 27, 2016, the Court issued extensive Findings of Facts and Conclusions of Law resolving the remaining issues in the case. After trial, the parties filed a number of post-trial motions.

         For the reasons explained more fully below, the Court will grant PLM's motion to substitute another PLM-related entity as the sole Plaintiff in this action and join that same entity as an additional Counter-Defendant. The Court will also deny each parties' request to amend the findings and judgment and deny PROLACTO's motion for a new trial. Finally, upon consideration of PROLACTO's bill of costs and PLM's opposition, the Court will order both parties to bear their own costs.

         II. FACTUAL AND PROCEDURAL BACKGROUND

         The Court's previous Findings of Fact and Conclusions of Law set for the factual and procedural history of this case in detail. See generally Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. DE C.V. (PLM VI), 188 F.Supp.3d 22 (D.D.C. 2016).[2]The Court assumes the parties' familiarity with the background set forth in its earlier opinion. Nevertheless, the Court will briefly summarize the facts and procedural posture of this case, as described in the Court's previous opinion. See Id . For clarity, the Court will address the facts relevant to the pending post-trial motions in the context of each of the specific motions.

         A. Brief Factual Overview

         PLM and PROLACTO are in the business of manufacturing and selling “paletas” and other frozen treats. Paletas are a style of ice cream bars and popsicles originating in Mexico that are traditionally made from fruit, spices, and nuts.

         PROLACTO is a Mexican company that the Andrade Malfavon family founded in 1992. The Andrade Malfavon family continues to own PROLACTO. The company traces its history to Tocumbo, a city in the Mexican state of Michoacán, in the 1940s, which is the purported origin of the paleta and the shops, known as “paleterias, ” that make and sell them.[3] 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 United States.

         PLM 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.” That name literally means “the woman from the state of Michoacan” in Spanish. 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. PLM distributes its products to 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.

         Both PLM and PROLACTO use a variety of trademarks when selling their products in the United States. This litigation concerns the dispute between PLM and PROLACTO over the right to use those marks. The parties sharply dispute, among many other things, which of them first used those marks in the United States, and each party accuses the other of engaging in bad faith in a variety of different ways.

         B. Brief Procedural History

         The procedural history of this matter spans roughly a decade. The Court briefly restates that history here. See also PLM VI, 188 F.Supp.3d at 28 (setting forth procedural history).

         1. TTAB Proceedings

         This dispute began in earnest in 2007 when PROLACTO filed a petition with the Trademark Trial and Appeal Board (“TTAB”), a body of the United States Patent and Trademark Office (“USPTO”), to cancel PLM's U.S. Registration No. 3, 210, 304 for the mark titled “LA INDITA MICHOACANA.” See Pet. Cancellation, TTAB Dkt. 1.[4] On May 20, 2011, the TTAB granted PROLACTO's petition for cancellation of PLM's LA INDITA MICHOACANA mark, concluding that PROLACTO had established priority of use and likelihood of confusion with respect to several of its asserted, unregistered marks. See generally Productos Lacteos Tocumbo S.A. De C.V. v. Paleteria La Michoacana, Inc., 98 U.S.P.Q.2d 1921 (T.T.A.B. 2011). The TTAB denied PLM's motion for reconsideration on July 13, 2011. See TTAB Dkt. 115.

         2. The Present Action

         PLM brought this action pursuant to the Lanham Act, 15 U.S.C. § 1071(b), on September 8, 2011. See Compl., ECF No. 1. The operative Complaint is now the Second Amended Complaint, which was filed on June 11, 2012.[5] See 2d Am. Compl., ECF No. 40. PLM'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 2d Am. Compl. ¶¶ 42-61.

         PROLACTO, in turn, filed seven counterclaims. Specifically, Counterclaim Count I alleges that PLM infringed PROLACTO's registered LA FLOR DE MICHOACAN and design mark under 15 U.S.C. § 1114(1);[6] 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. ¶¶ 39-87, ECF No. 41.

         The parties filed cross-motions for summary judgment after the close of discovery and the Court granted in part and denied in part both motions. See generally Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V. (PLM IV), 69 F.Supp.3d 175 (D.D.C. 2014). The Court then granted in part and denied in part PLM's motion to revise that Memorandum Opinion and Order, see Mem. & Order, ECF No. 174, and denied PROLACTO's motion for reconsideration, see Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V. (PLM V), 79 F.Supp.3d 60 (D.D.C. 2015). The Court issued a First Revised Order on February 3, 2015. See First Revised Order, ECF No. 175.

         The Court's Findings of Fact and Conclusions of law set forth in detail which claims and counterclaims survived summary judgment. See PLM VI, 188 F.Supp.3d at 30. In brief, the Court denied summary judgment to both parties on Count I of PLM's Second Amended Complaint and neither party sought summary judgment on Counts II, III, and IV. Id. Turning to PROLACTO's counterclaims, the Court granted summary judgment in favor of PLM on Counterclaim Counts I, III, IV, V, VI, and VII. Id. at 30-31. With regard to the claims under trademark infringement, false designation of origin, passing off, and unfair competition in Counterclaim Count II, 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. Id. at 30. The Court also resolved a number of issues related to the false advertising claims found in Counterclaim Count II, but left others to be resolved at trial. Id. at 30-31.

         After the Court narrowed the issues through summary judgment, the case proceeded to trial. The bench trial took place over thirteen days between September 14, 2015 and October 1, 2015. After considering the parties proposed findings of fact and conclusions of law, as well as other motions filed during or after the trial, the Court issued its extensive Findings of Fact and Conclusions of Law. See generally PLM VI, 188 F.Supp.3d 22. In brief, the Court entered judgment in favor of PROLACTO as to Count I of PLM's Second Amended Complaint and entered judgment in favor of PLM as to Counts II and III. The Court dismissed Count VI as moot. Finally, the Court entered judgment in favor of PLM as to PROLACTO's Counterclaim Count II.

         3. Motions Pending Before the Court

         After the trial, but shortly before the Court issued its Findings of Fact and Conclusions of Law, PLM filed a motion to substitute a PLM-related entity as the sole Plaintiff and to add that entity as an additional Counter-Defendant because of the transfer of the marks at issue in this case. See generally Pls.' Mot. Sub. & Join Successor in Interest (“PLM Mot. Sub.”), ECF No. 336. After the Court issued its Findings of Fact and Conclusions of Law, PLM filed a motion to alter or amend the Court's judgment on Complaint Count I that affirmed the cancellation of PLM's U.S. Registration No. 3, 210, 304. See generally Pls.' Mot. Amend J. (“PLM's Mot. Amend”), ECF No. 340. After briefing on that motion, PROLACTO filed a motion seeking leave to file a surreply to address issues raised in PLM's reply brief. See Def.'s Mot. Leave File Surreply or, in the Alternative, Mot. Strike (“PROLACTO's Mot. Surreply”), ECF No. 351. PROLACTO filed a motion for a new trial based on the discovery of PLM's registration and ownership of the domain name “laflordemichoacan.com, ” see generally Def.'s Mot. New Trial (“PROLACTO's Mot. New Trial”), ECF No. 345, and a motion to amend the Court's findings and legal conclusions with regard to the incontestability of PLM's Indian Girl Design marks, see generally Def.'s Mot. Amend Findings & Amend J. (“PROLACTO's Mot. Amend”), ECF No. 346. PROLACTO also filed a bill of costs, see generally PROLACTO's Bill of Costs, ECF No. 343, which PLM objected to, see generally Pls.' Opp'n & Objs. Def.'s Bill of Costs (“PLM's Opp'n Bill of Costs”), ECF No. 350.

         After the close of briefing on its motion for a new trial and its motion to amend, PROLACTO requested a hearing to address the pending motions. See Def.'s Req. Hr'g, ECF No. 358. PROLACTO argues that “oral argument may assist the Court in evaluating PROLACTO's” motions. Def.'s Req. Hr'g ¶ 9. PLM responds that it “do[es] not believe that a hearing is necessary.” See Pls.' Resp. Def.'s Req. Hr'g at 1-2, ECF No. 359. Nevertheless, PLM requests that the Court also hear oral argument on PLM's motion to amend if it decides to grant a hearing. See Pls.' Resp. Def.'s Req. Hr'g at 1-2. The allowance of oral argument is “within the discretion of the Court.” See LCvR 7(f). The Court finds that there is no need for oral argument on the motions. The parties have briefed the pending motions extensively and the written arguments provide a sufficient basis for the Court to rule. The Court therefore denies PROLACTO's request for a hearing.

         III. PLM'S MOTION TO SUBSTITUTE PARTIES

         The Court first turns to PLM's motion pursuant to Federal Rule of Civil Procedure 25(c) to substitute PLM Operations, LLC (“PLM Operations”) as the sole Plaintiff and to join that entity as an additional Counter-Defendant. See generally PLM Mot. Sub. PROLACTO opposes the motion to substitute and join PLM Operations. See generally Def.'s Opp'n Pls.' Mot. Sub. & Join Successor in Interest (“PROLACTO's Opp'n Mot. Sub.”), ECF No. 341. For the reasons set forth below, the Court will grant PLM's motion, substitute PLM Operations as the sole Plaintiff, and join the same entity as an additional Counter-Defendant.

         A. Legal Standard

         Federal Rule of Civil Procedure 25(c) provides that, “[i]f an interest is transferred, the action may be continued by or against the original party unless the court, on motion, orders the transferee to be substituted in the action or joined with the original party.” Fed.R.Civ.P. 25(c). The decision to grant or deny a Rule 25(c) motion is a matter within the district court's discretion. See Burka v. Aetna Life Ins. Co., 87 F.3d 478, 482 (D.C. Cir. 1996); see also Bauer v. Commerce Union Bank, 859 F.2d 438, 441 (6th Cir. 1988) (“[O]rders [granting Rule 25(c) substitution] are reviewed only for abuse of discretion.”), cert. denied, 489 U.S. 1079 (1989); Prop-Jets, Inc. v. Chandler, 575 F.2d 1322, 1324 (10th Cir. 1978) (“Substitution of a successor in interest or its joinder as an additional party under Rule 25(c) is generally within the sound discretion of the trial court.”).

         The primary basis for deciding the motion is whether substitution would “facilitate the conduct of the litigation.” Comm'ns Imp. Exp., S.A. v. Republic of Congo, 118 F.Supp.3d 220, 231 (D.D.C. 2015) (quoting Citibank v. Grupo Cupey, Inc., 382 F.3d 29, 32 (1st Cir. 2004)); see also 7C Charles Wright & Arthur Miller, Federal Practice & Procedure § 1958 (3d ed. 2016) (noting the trial court's discretion). This focus on “considerations of convenience and economy . . . prevails because Rule 25(c) has no bearing on the substantive relationship between the parties.” Comm'ns Imp. Exp., 118 F.Supp.3d at 231. Regardless of the transfer in interest and subsequent substitution, “[t]he merits of the case . . . are still determined vis-à-vis the originally named parties.” Minn. Mining & Mfg. Co. v. Eco Chem, Inc., 757 F.2d 1256, 1263 (Fed. Cir. 1985); see also In re Covington Grain Co., Inc., 638 F.2d 1362, 1364 (5th Cir. 1981) (“Rule 25(c) is not designed to create new relationships among parties to a suit but is designed to allow the action to continue unabated when an interest in the lawsuit changes hands.”).

         Rule 25(c) places no time limit on a party seeking substitution or joinder. See Fed. R. Civ. P. 25(c); see also Luxliner P.L. Exp., Co. v. RDI/Luxliner, Inc., 13 F.3d 69, 71 (3d Cir. 1993); 7C Charles Wright & Arthur Miller, Federal Practice & Procedure § 1958 (3d ed. 2016) (“Since Rule 25(c) is wholly permissive there is no time limit on moving to substitute under its provisions.”).

         B. Analysis

         Pursuant to Federal Rule of Civil Procedure 25(c), PLM has moved to substitute PLM Operations as the sole Plaintiff and to join that entity as an additional Counter-Defendant. See generally PLM Mot. Sub. PLM argues that PLM (Sub) transferred the marks at issue in this case to PLM Operations on April 1, 2016. PLM Mot. Sub at 2. Thus, PLM argues, PLM Operations became the real party in interest and the Court should substitute PLM Operations as the sole Plaintiff. PLM Mot. Sub at 2. To avoid any prejudice to PROLACTO, PLM states that PLM Operations volunteers to join the case as an additional Counter-Defendant. PLM Mot. Sub at 2.

         PROLACTO opposes the motion to substitute and join PLM Operations. See generally PROLACTO's Opp'n Mot. Sub. PROLACTO argues that a purported successor in interest must show, not only a valid transfer of interest, but also “that the successor will be liable for any wrongs of its predecessor.” PROLACTO's Opp'n Mot. Sub at 1. PROLACTO argues that PLM has not shown that “PLM Operations has acquired the liabilities of PLM (Sub).” PROLACTO's Opp'n Mot. Sub at 2. PROLACTO states that the Court should permit limited discovery on the purported transfer of the relevant marks and hold an evidentiary hearing. PROLACTO's Opp'n Mot. Sub at 2. In the alternative, PROLACTO argues that the Court should deny the motion. PROLACTO's Opp'n Mot. Sub at 2.

         1. The Transfer of the Relevant Marks

         Before trial, PLM filed a motion pursuant to Rule 15 of the Federal Rules of Civil Procedure seeking leave to correct the caption in this case. Specifically, PLM requested leave to correct the case caption to replace “Paleteria La Michoacana, LLC” as a Plaintiff and Counter-Defendant with “Paleteria La Michoacana (Sub), Inc.” in order to reflect a change in its corporate form. See Pls.' Mot. Leave Correct Case Caption, ECF No. 210. The Court granted that motion on March 31, 2016. See Mem. & Order, ECF No. 333.

         The following day, PLM (Sub) sold “substantially all of its assets” to PLM Operations, which is a limited liability company organized under the laws of the state of Delaware. See PLM Mot. Sub. at 3; see also PLM Mot. Sub., Decl. of Robert J. Spigner (“Spigner Decl.”) ¶¶ 2-3, ECF No. 336-1; Spigner Decl., Ex. A (providing the State of Delaware Certificate of Formation and a copy of the Delaware Secretary of State's website listing relevant details of PLM Operations). PLM has provided the Bill of Sale, General Assignment and Conveyance, which sets forth the details of the transaction. See Spigner Decl., Ex. B. The transferred assets included the marks at issue in this case, including U.S. Registration Numbers 2, 905, 172, 2, 968, 652, and 3, 210, 304. See Spigner Decl. ¶ 3; see also Spigner Decl., Ex. B, schd. 1, annex D.

         Also on April 1, 2016, PLM (Sub) and PLM Operations executed a Trademark Assignment Agreement memorializing the transfer of the marks. See Spigner Decl. ¶ 4; see also Spigner Decl., Ex. C (Trademark Assignment Agreement). PLM has recorded that agreement with the USPTO. See Spigner Decl. ¶ 4. According to the terms of the agreement, PLM (Sub) assigned and transferred to PLM Operations “all of Assignor's right, title and interest in and to the Trademarks, together with all goodwill associated with said Trademarks, and the right to sue and recover for, and the right to profits or damages due or accrued, arising out of or in connection with any and all past, present or future infringements or dilution of or damage to the Trademarks or the associated goodwill.” Spigner Ex. C at 20.[7] PLM has also provided copies of entries on the USPTO's website that reflect PLM Operations as the listed owner of the relevant marks. See Spigner Decl. ¶ 5; see also Spigner Decl., Ex. D.

         As PLM correctly states, federal registration of a trademark is prima facie evidence that the registrant is the proper owner of that trademark. See 15 U.S.C. § 1057(b) (“A certificate of registration of a mark . . . shall be prima facie evidence . . . of the owner's ownership of the mark.”); see also Id . § 1057(d) (noting that a certificate of registration may be issued to the assignee of the application, “but the assignment must first be recorded in the [USPTO]”).

         PROLACTO has not presented any evidence undermining the Spigner affidavit or the documentary evidence put forth by PLM. In fact, PROLACTO appears to acknowledge that PLM “may have shown that certain of the relevant interests have been transferred.” PROLACTO's Opp'n Mot. Sub. at 10. In light of the extensive documentary evidence of a transfer and the prima facie validity of the registration in the name of PLM Operations, the Court finds that PLM (Sub) transferred the marks at issue in this case to PLM Operations.

         2. PROLACTO's Reliance on the Doctrine of Successor Liability

         Instead of focusing on the transfer of assets, including the relevant marks, PROLACTO argues that PLM has “not provided any, much less sufficient, evidence that PLM Operations has acquired the liabilities of PLM (Sub).” PROLACTO's Opp'n Mot. Sub. at 2 (emphasis added); see also PROLACTO's Opp'n Mot. Sub. at 1 (“[T]he Court must determine that the successor will be liable for any wrongs of its predecessor.”). PROLACTO urges the Court to rely on the doctrine of successor liability to determine whether PLM (Sub) has transferred a valid interest to PLM Operations for the purposes of Rule 25. PROLACTO's Opp'n Mot. Sub. at 7. Successor liability is an exception to the general rule that “a successor corporation is not liable for the wrongs of its predecessor.” Material Supply Int'l, Inc. v. Sunmatch Indus. Co., Ltd., 62 F.Supp.2d 13, 23 (D.D.C. 1999).[8] Under the four traditional exceptions, a successor corporation will be liable where: “(1) there is an express or implied agreement to assume the liabilities; (2) the transaction amounts to a consolidation or merger; (3) the successor entity is a mere continuation or reincarnation of the predecessor entity; or (4) the transaction was fraudulent, not made in good faith, or made without sufficient consideration.” Id. (quoting Bingham v. Goldberg, Marchesano, 637 A.2d 81, 89-90 (D.C. 1994)).

         PROLACTO's reliance on successor liability is misplaced. Rule 25(c) asks simply whether an “interest is transferred.” Fed.R.Civ.P. 25(c). PROLACTO's confusion appears to arise from cases where a party seeks to use Rule 25(c) to force an unwilling entity into the litigation. For instance, PROLACTO cites Select Creations, Inc. v. Paliafito America, Inc., 852 F.Supp. 740 (E.D. Wis. 1994) and Panther Pumps & Equipment Co. v. Hydrocraft, Inc., 566 F.2d 8 (7th Cir. 1977) for the principle that the court must consider the substantive law of successor liability before approving a substitution. See PROLACTO's Opp'n Mot. Sub. at 7. In both cases, however, the court considered successor liability only because a party was attempting to bring an unwilling successor before the court. See Select Creations, 852 F.Supp. at 766 (granting a motion to substitute unwilling non-parties); Panther Pumps, 566 F.2d at 28 (approving substitution of unwilling party).

         This case does not fit that pattern. Instead, PLM Operations is volunteering to join the case, both as the sole Plaintiff and as an additional Counter-Defendant. See PLM Mot. Sub. at 6. This distinction is longstanding. For instance, in McComb v. Row River Lumber Co., which PROLACTO cites in its brief, the Ninth Circuit refused to bring an unwilling defendant into the case. 177 F.2d 129, 130 (9th Cir. 1949). The court explained that it had allowed substitutions “in cases where the plaintiff below has transferred his interest in the subject matter of the action, ” but that, “where substitution is sought in this court for a defendant below . . . we have declined to allow a substitution.” Id.

         This distinction, found in other cases, reflects the due process concerns raised by forcing a party to step into the shoes of another against their will, perhaps even after a court has entered a judgment. See, e.g., Luxliner P.L. Exp., Co. v. RDI/Luxliner, Inc., 13 F.3d 69, 72 (3d Cir. 1993) (considering third party's due process interests); Panther Pumps, 566 F.2d at 24 (same). Those fairness concerns are not at issue in a case like this, where a plaintiff has transferred an interest in the case and voluntarily seeks substitution. See, e.g., Burka v. Aetna Life Ins. Co., 87 F.3d 478, 480 (D.C. Cir. 1996) (making no mention of successor liability or due process where all parties agreed that a third party should be a party to the suit). Because PLM Operations seeks to join this action voluntarily, the Court's analysis must focus on whether “an interest is transferred, ” Fed.R.Civ.P. 25(c), not whether that interest comes with liabilities attached.

         3. Substitution and Joinder Will Facilitate Litigation

         The proper criteria for deciding a motion under Rule 25(c) is whether substitution would “facilitate the conduct of the litigation.”[9] Comm'ns Imp. Exp., S.A. v. Republic of Congo, 118 F.Supp.3d 220, 231 (D.D.C. 2015) (quoting Citibank v. Grupo Cupey, Inc., 382 F.3d 29, 32 (1st Cir. 2004)); see also 7C Charles Wright & Arthur Miller, Federal Practice & Procedure § 1958 (3d ed. 2016) (“An order of joinder is merely a discretionary determination by the trial court that the transferee's presence would facilitate the conduct of the litigation.”). Any substitution or joinder under Rule 25(c) does not change the substance of the litigation, but simply allows the case to go forward when an interest changes hands.[10] See In re Covington Grain Co., Inc., 638 F.2d 1362, 1364 (5th Cir. 1981). The Court finds that substitution is appropriate here.

         The relevant marks are undoubtedly at the core of this long-running litigation. For example, Count I of PLM's Second Amended Complaint seeks reversal of the TTAB decision cancelling one of the transferred marks. See 2d Am. Compl. ¶¶ 42-48. Similarly, Counts II and III seek a declaratory judgment of noninfringement and injunctive relief to stop ongoing infringement, respectively, related to the transferred marks. See 2d Am. Compl. ¶¶ 49-51, 52-56. The Court has found that uncontested evidence shows that PLM (Sub) transferred the relevant marks to PLM Operations. See supra Part. III.B.1. Although the rights of PLM Operations, if substituted, are the same as the original Plaintiffs, it now owns the relevant marks and has the sole interest in the outcome of this litigation. See Crown Point Partners LLC v. Crown Point Plan Comm'n, 275 F.R.D. 279, 282 (N.D. Ind. 2011) (“First Financial, as a creditor and transferee in interest to the property, has a protectable interest in the outcome of this litigation and should be substituted, although its rights do not exceed those of Lauth and CPP in this litigation.”). Therefore, the Court finds that substituting the owner of the relevant marks as the sole Plaintiff will best facilitate any ongoing litigation.

         PLM also volunteered to join PLM Operations as an additional Counter-Defendant to address any possible prejudice to PROLACTO. See PLM Mot. Sub. at 2. Following PROLACTO's opposition to PLM's motion for substitution, PLM “withdr[ew] that portion of its Motion seeking to add PLM Operations as an additional counter-defendant, ” but nevertheless “does not object if the Court joins PLM operations as an additional counter-defendant.” Pl.'s Reply Supp. Mot. Sub. (“PLM's Reply Mot. Sub.”) at 15-16, ECF No. 342 (emphasis added). Rule 25(c) permits the Court to substitute or join a party. See Fed. R. Civ. P. 25(c). In order to avoid any possibility of prejudice, the Court will therefore exercise its discretion to join PLM Operations as an additional Counter-Defendant, as well as substituting it as the sole Plaintiff.

         4. PROLACTO's Request for Discovery and a Hearing

         Finally, the Court turns to PROLACTO's request for discovery and a formal hearing on PLM's motion to substitute PLM Operations. PROLACTO argues that “[l]imited discovery may better enable the Court to make an informed determination of whether PLM (Sub) has made a valid transfer of interest to PLM Operations and to avoid an inequitable outcome to PROLACTO.” PROLACTO's Opp'n Mot. Sub. at 11. PROLACTO also requests a hearing on this issue. PROLACTO's Opp'n Mot. Sub. at 11

         First, the Court has found that the uncontested evidence is sufficient to show that PLM (Sub) transferred the relevant trademarks to PLM Operations. See supra Part III.B.1. Second, the Court's decision to join PLM Operations as an additional Counter-Defendant ensures that the substitution will avoid inequitable outcomes for PROLACTO. See supra Part III.B.3. Finally, the Court notes that there is no requirement to grant limited discovery or a hearing in this context. The Seventh Circuit recently noted that there is no rule “that an evidentiary hearing is mandatory to resolve every Rule 25(c) substitution.” Sullivan v. Running Waters Irrigation, Inc., 739 F.3d 354, 359 (7th Cir. 2014). In fact, courts that have required an evidentiary hearing often point to the due process concerns raised by hailing an unwilling party into the action, particularly where substitution effectively imposes liability. See Luxliner P.L. Exp., 13 F.3d at 72. That is not the case here, and the Court therefore denies PROLACTO's request for limited discovery and a hearing.

         IV. THE PARTIES' MOTIONS TO AMEND THE FINDINGS AND JUDGMENT

         Following the bench trial, post-trial briefing, and the Court's release of its Findings of Fact and Conclusions of Law, both parties have filed motions to amend the Court's judgment. Each of the motions raises legal arguments for the first time in this litigation. Therefore, the Court will deny both motions.

         A. Legal Standards

         1. Federal Rule of Civil Procedure 52(b)

         Pursuant to Federal Rule of Civil Procedure 52(b), a party may file a motion requesting that the Court “amend its findings-or make additional findings-and . . . amend the judgment accordingly.” Fed. R. Civ. P 52(b). This Rule “permits the trial court to correct manifest errors of law or fact, make additional findings or take other action that is in the interests of justice.” Ashraf-Hassan v. Embassy of France, 185 F.Supp.3d 94, 108 (D.D.C. 2016) (quoting Bigwood v. Def. Intelligence Agency, 770 F.Supp.2d 315, 318 n.2 (D.D.C. 2011)). The decision to amend findings or the judgment is committed “to the sound discretion of the trial judge.” See Material Supply Int'l, Inc. v. Sunmatch Indus. Co., No. 94-1184, 1997 WL 243223, at *2 (D.D.C. May 7, 1997); see also Ashraf-Hassan, 185 F.Supp.3d at 108. And a party bringing a Rule 52(b) motion “bears a heavy burden.” Ashraf-Hassan, 185 F.Supp.3d at 108 (quoting Material Supply Int'l, 1997 WL 243223, at *2).

         A motion under Rule 52(b) “is not an avenue for relitigating issues upon which the moving party did not prevail at trial.” Material Supply Int'l, 1997 WL 243223, at *2. Instead, a movant “who failed to prove his [or her] strongest case is not entitled to a second opportunity to litigate a point, to present evidence that was available but not previously offered, or to advance new theories by moving to amend a particular finding of fact or conclusion of law.” Salazar v. District of Columbia, 685 F.Supp.2d 72, 75 (D.D.C. 2010) (quoting 9C Charles Wright & Arthur Miller, Federal Practice & Procedure § 2582 (3d ed. 2009)); see also Diocese of Winona v. Interstate Fire & Cas. Co., 89 F.3d 1386, 1397 (8th Cir. 1996) (finding that a party could not use a 52(b) motion to raise an argument that could have been raised prior to the entry of a judgment); Fontenot v. Mesa Petroleum Co., 791 F.2d 1207, 1219 (5th Cir. 1986) (explaining that a Rule 52(b) motion should not be employed “to advance new theories”).

         2. Federal Rule of Civil Procedure 59(e)

         Federal Rule of Civil Procedure 59(e) permits a party to file “[a] motion to alter or amend a judgment” within “28 days after the entry of the judgment.” Fed.R.Civ.P. 59(e). “Reconsideration of a judgment after its entry is an extraordinary remedy which should be used sparingly, ” Mohammadi v. Islamic Republic of Iran, 782 F.3d 9, 17 (D.C. Cir. 2015) (quoting 11 Charles Wright & Arthur Miller, Federal Practice & Procedure ยง 2810.1 (3d ed. 2012)), and the moving party bears the burden of establishing ...


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