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La Michoacana Natural, LLC v. Maestre

United States District Court, W.D. North Carolina, Charlotte Division

June 1, 2018

LA MICHOACANA NATURAL, LLC, Plaintiff,
v.
LUIS MAESTRE, an individual, d/b/a LA MICHOACANA and/or LA LINDA MICHOACANA; ADRIANA TERAN, an individual, d/b/a LA MICHOACANA and/or LA LINDA MICHOACANA; and LA MICHOACANA, a business entity, form unknown. Defendants.

          ORDER

          Robert J. Conrad, Jr., United States District Judge

         THIS MATTER is before the Court on Plaintiff's Motion for Preliminary Injunction. (Doc. No. 22). Upon consideration of the parties' briefs and the evidence presented in the record, the Court GRANTS the Plaintiff's motion and preliminarily enjoins the conduct of Defendants LUIS MAESTRE; ADRIANA TERAN (aka ADRIANA MAESTRE); and LA LINDA MICHOACANA (“Defendants”) as set forth in the following order.

         SUMMARY OF THE FACTS

         A. Procedural History

         Plaintiff LA MICHOACANA NATURAL, LLC is a North Carolina limited liability company, which since 2014 has owned and operated two ice cream parlors in Charlotte, North Carolina under the name LA MICHOACANA, who owns nine (9) North Carolina Trademark registrations for the marks “LA MICHOACANA”, “La MICHOACANA es… Natural” (and design) (Image Omitted) and (Image Omitted) (Indian girl doll design) in connection with ice cream products, retail store services, and ice cream parlor services respectively. Plaintiff is also the exclusive North Carolina licensee of the Federally applied for marks, owned by its Mexican Licensor, namely “LA MICHOACANA”, “La MICHOACANA Natural”, (Image Omitted) as well as the Federally registered trademarks, namely LA FLOR DE MICHOACAN and LA FLOR DE MICHOACAN (and design) (Image Omitted) (U.S. TM Cert. of Registrations Nos. 2830401 and 3249113.) Plaintiff is also the exclusive North Carolina user and licensee of a derivative mark, namely (Image Omitted) which was created by Plaintiffs founder's sister in 2014.

         On December 19, 2017, Plaintiff filed its Complaint, (Doc. No. 1), against the Defendants alleging the unlawful use of Plaintiffs North Carolina Registered trademarks as well as Plaintiffs licensed trademarks and derivatives. Plaintiff asserted eight causes of action: (1) Trademark infringement under the Lanham Act; (2) Unfair competition and False Designation of Origin under the Lanham Act; (3) Federal Trademark Dilution under the Lanham Act; (4) Cybersquatting under the Lanham Act; (5) Infringement of Copyright under the Copyright Act; (6) Statutory Trademark Infringement under North Carolina Gen. Stats. §80 et. seq.; (7) Unfair and Deceptive Trade Practices under North Carolina Gen. Stats. §75 et. seq.; and (8) Common law unfair competition and trademark infringement.

         After receiving the First Amended Complaint, Defendants filed a Motion to Dismiss pursuant to Rule 12(b)(2), (Doc. No. 7), to which Plaintiff's filed a Memorandum in Opposition (Doc. No. 8). Defendants then filed a Reply. (Doc. No. 9). This Court issued an Order to Show Cause on March 19, 2018. (Doc. No. 11). Defendants thereafter filed a Response to the Court's Order, (Doc. No. 16), refiled their Motion to Dismiss pursuant to Rule 12(b)(2), (Doc. No. 13), and Defendants' counsel filed a Motion to Withdraw, (Doc. No. 15). On April 23, 2018, Plaintiff filed its preliminary injunction against Defendants, (Doc. No. 22). On June 1, 2018, a hearing was held. Defendants Luis Maestre and Andriana Teran appeared pro se. No. counsel appeared to represent Defendant La Michoacana.

         Based on the new acts and recent conduct of Defendants as well as newly discovered evidence as is detailed in the Declaration of Stephen L. Anderson (Doc. No. 22-1), Plaintiff LA MICHOACANA NATURAL, LLC has moved for a Preliminary Injunction (Doc. No. 22) to preserve the status quo and to restrain Defendants from selling or transferring the allegedly infringing domain name www.lamichoacanapaleteria.com, to restrain Defendants from offering and distributing software applications via the World Wide Web, and to stop Defendants from unlawfully copying, infringing and using Plaintiff's Registered North Carolina Marks, namely, “LA MICHOACANA”, “La MICHOACANA es… Natural” (Image Omitted), (Image Omitted) its Licensor's Federally Registered marks LA FLOR DE MICHOACAN and (Image Omitted) as well as its longstanding Federally applied-for Marks, namely “LA MICHOACANA”, “La MICHOACANA Natural”, (Image Omitted) and closely related derivatives, namely (Image Omitted), and/or any other colorable simulation or mark which is likely to cause consumer confusion or deception therewith.

         CONCLUSIONS OF LAW

         A preliminary injunction is an extraordinary remedy, the primary function of which is to protect the status quo and to prevent irreparable harm during the pendency of a lawsuit. In re Microsoft Corp. Antitrust Litig., 333 F.3d 517, 525 (4th Cir. 2003). Courts evaluating a request for a preliminary injunction “must balance the competing claims of injury and must consider the effect on each party of the granting or withholding such request.” Amoco Prod. Co. v. Vill. of Gambell, Alaska, 480 U.S. 531, 542 (1987). A plaintiff seeking a preliminary injunction must establish the following four elements: (1) it is likely to succeed on the merits; (2) it is likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in its favor; and (4) an injunction is in the public interest. Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20 (2008). In this case, all four elements have been established by Plaintiff.

         A. Plaintiff is likely to succeed on the merits.

         To prevail on a trademark infringement claim, the plaintiff must show that it owns a valid and protectable mark, that the defendants used a “re-production, counterfeit, copy, or colorable imitation” of that mark in commerce without the plaintiff's consent, and that use of the mark is likely to cause confusion. Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 158 (4th Cir. 2014). This Court finds that Plaintiff is likely to prove that its Marks are valid and protectable. Plaintiff's North Carolina Registrations ( N.C. Registration Nos. T-22395 to T-22403) are prima facie evidence of the validity of their North Carolina Marks, ownership by the registrant, and proper registration under the Lanham Act. Rebel Debutante LLC v. Forsythe Cosmetic Grp., Ltd., 799 F.Supp.2d 558, 569 (M.D. N.C. 2011). Defendants bear the burden of overcoming this presumption of validity, and they have not done so. This Court concludes that Plaintiff is likely to establish the first element of its claim, ownership of a valid and protectable trademark.

         This Court finds that Plaintiff is also likely to establish the second element of its infringement claim. A visual comparison of the Marks at issue in this case shows that Defendants have used identical and colorable simulations of Plaintiff's Marks in various forms, including in and on their ice cream parlor stores and products, on their websites, and in their downloadable software applications which Defendants are distributing worldwide in several different languages.

         This Court also finds that Plaintiff has shown that it is likely to prove a likelihood of confusion. In determining the likelihood of confusion, courts in the Fourth Circuit apply the Pizzeria Uno/Sara Lee multi-factor test, which evaluates: (1) “the strength or distinctiveness of the mark;” (2) “the similarity of the two marks;” (3) “the similarity of the goods/services the marks identify;” (4) “the similarity of the facilities the two parties use in their businesses;” (5) “the similarity of advertising used by the two parties;” (6) “the defendant's intent;” (7) “actual confusion;” “(8) the quality of the defendant's product; and (9) the sophistication of the consuming public.” Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) (setting forth factors one through seven); Sara Lee Corp v. Kayser-Roth Corp., 81 F.3d 455, 463-64 (4th Cir. 1996) (identifying factors eight and nine). Based on the record evidence, this Court finds that the first seven factors and the ninth factor weigh in favor of Plaintiff. The eighth factor is at least neutral; however, the factors are not of equal importance, nor are they all relevant in every case. Id. Notably, at this time the important second, third, and fourth factors weigh in favor of Plaintiff. The marks are highly similar, contain the same commercial ...


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