United States District Court, W.D. North Carolina, Charlotte Division
J. Conrad, Jr., United States District Judge
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.
OF THE FACTS
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 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.
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
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.
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
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.
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.
Plaintiff is likely to succeed on the merits.
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
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.
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