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La Michoacana Natural, LLC v. Maestre

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

June 6, 2019

LUIS MAESTRE, an individual, d/b/a LA MICHOACANA and/or LA LINDA MICHOACANA et al. Defendants.



         THIS MATTER comes before the Court on (1) Plaintiff's Motion for Partial Summary Judgment, (Doc. No. 64); (2) Plaintiff's Motion for Second Preliminary Injunction, (Doc. No. 61); and Plaintiff's associated briefs and exhibits. To date, Defendants have not filed a response to the pending motions.

         I. BACKGROUND

         Despite the Court extending wide latitude to Defendants to comply with Plaintiff's discovery requests and this Court's various orders compelling discovery, the record indicates Defendants' repeated pattern of evading discovery and failing to comply with Court orders. To date, it appears that Defendants have not responded to Plaintiff's Request for Admissions to Luis Maestre. (See Doc. No. 64-9).[1] “Courts within the Fourth Circuit have consistently held that admissions, including unanswered requests for admissions, may provide a sufficient factual basis to support a motion for summary judgment.” Aero. Mfg., Inc. v. Clive Merch. Group, LLC, 2007 U.S. Dist. LEXIS 68373, at *5 (M.D. N.C. Sept. 14, 2007) (citing Batson v. Porter, 154 F.2d 566, 568 (4th Cir. 1946)).[2] Accordingly, the Court treats those admissions as a factual basis for summary judgment. Adventis, Inc. v. Consol. Prop. Holdings, Inc., 124 Fed.Appx. 169, 173 (4th Cir. 2005) (“Thus, once a matter that is properly subject of an admission under Rule 36(b) has been admitted during discovery, the district court is not free to disregard that admission.”); see also Atad v. Atad, 2015 U.S. Dist. LEXIS 3110, at *1 (E.D. N.C. Jan. 12, 2015). Plaintiff has submitted a Statement of Uncontroverted Material Facts in Support of Plaintiffs Motion for Partial Summary Judgment, (Doc. No. 64-4), based on Plaintiffs unanswered Request for Admission to Defendant Luis Maestre, which the Court deems as the statement of undisputed material facts in this case and incorporates herein by reference. Accordingly, the Court finds the following:

1. This Court has jurisdiction over the parties to this action and over the subject matter hereof pursuant to 17 U.S.C. § 101 et seq., 17 U.S.C. § 501, 28 U.S.C. §§ 1331 and 1338, and 28 U.S.C. § 1367.
2. Plaintiff LA MICHOACANA NATURAL, LLC is a North Carolina limited liability company which owns and operates at least three (3) ice cream parlors doing business as: LA MICHOACANA and LA MICHOACANA NATURAL in North Carolina. Two are located in Charlotte, respectively at 6301 N. Tryon Street, Unit 115 and 6300 South Boulevard, Unit 100, while the third is located at 1096 Concord Parkway, N., Unit 7 in Concord, North Carolina.
3. Plaintiff owns nine (9) North Carolina Trademark registrations for the marks “LA MICHOACANA”, “La MICHOACANA es… Natural” (and design) (Image Omitted) and (Indian girl doll design) (Image Omitted), in connection with ice cream products, retail store services, and ice cream parlor services, respectively. Plaintiff is also the exclusive North Carolina licensee of Federally applied for marks “LA MICHOACANA”, “La MICHOACANA Natural”, (Image Omitted) as well as the Federally registered trademarks, namely “LA MICHO AC AN A 100% Tradicional” (and design) (Image Omitted) U.S. TM Cert. of Registration No. 5143039); 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 design, namely (Image Omitted) which was created by Plaintiffs founder's sister in 2014.

         4. Plaintiffs Licensor PRODUCTOS LACTEOS TOCUMBO, S.A. de C.V. (“PROLACTO”) is a Mexican Corporation, owned by direct family members of Plaintiffs founding/managing Member, who with their predecessors, have used the designations PALETERIA LA MICHOACANA and LA MICHOACANA, in connection with artisanal and hand-made, ice cream and drinks, in Mexico, since the 1940's, and who have used and licensed use of the LA MICHOACANA, LA MICHOACANA NATURAL and LA FLOR DE MICHOACAN word and design marks and Indian girl doll marks, including (Image Omitted), and (Image Omitted) at least since 1995 in Mexico; at least since 1999 in Florida; at least since 2002 in Houston, Texas; at least since 2009 in California; and since 2014 in North Carolina.

         5. Since the 1940's PROLACTO's and its principal family members and predecessors have continuously used and made the mark LA MICHOACANA famous in connection with ice cream in Mexico and elsewhere. Since 1999, PROLACTO, Plaintiff's founder and other family-related companies have continuously engaged in the business of operating ice cream parlors and retail stores featuring Mexican-style ice cream, “paletas”, ice cream and fruit bars, shakes and fruit drinks and related frozen confections throughout Florida and elsewhere in the United States, ultimately including the Western District of North Carolina.

         6. Plaintiff, the exclusive licensee in North Carolina of PROLACTO, and its closely related companies and family licensees, have acquired considerable fame, public recognition and goodwill under the marks LA MICHOACANA, LA MICHOACANA NATURAL, and the Indian Girl doll design as the result of their and their predecessors' continuous use of such marks in connection with ice-cream and ice cream parlors, including in the states of Florida and North Carolina, where the marks are well-known as an indicator of source of high quality Mexican-style ice cream and drinks, originating with PROLACTO and its U.S. licensees, and related companies, particularly including Plaintiff.

         7. At least as early as 2014, and at all times alleged in the Complaint, PROLACTO and Plaintiff owned and had acquired valid and protectable trade and service mark rights, a considerable positive reputation, a well-developed market and loyal customer base, in, to and with regard to the LA MICHOACANA and Indian girl doll design(s), which marks had acquired consumer recognition with Plaintiff, if not a strong brand recognition and special significance in the field of Mexican-style ice cream.

         8. On December 19, 2017, Plaintiff filed its Complaint, (Doc. No. 1), against Defendants alleging the unlawful use of Plaintiff's North Carolina Registered trademarks as well as Plaintiff's 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) Cyberpiracy under the Lanham Act; (5) Infringement of Copyright under the Copyright Act; (6) statutory trademark infringement under N.C. Gen. Stat. § 80 et. seq.; (7) N.C. Unfair and Deceptive Trade Practices Act (“ N.C. UDTPA”) under N.C. Gen. Stat. § 75 et. seq.; and (8) common law unfair competition and trademark infringement.

         9. On June 1, 2018, this action came before this Court on Plaintiff's Motion for Preliminary Injunction. (Doc. No. 22). After consideration of the parties' briefs, arguments and the evidence presented in the record, including evidence establishing the First, Second and Fourth Causes of Action asserted in the Complaint, this Court granted the Motion, (Doc. No. 30), finding, inter alia that Plaintiff had established that: (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. In the Order granting Plaintiff's Motion, this Court highlighted the unlawful conduct of Defendants who, without authorization, and despite notice of Plaintiff's rights had adopted, infringed and used the LA MICHOACANA marks, with the intent and effect of confusing the public, misrepresenting the source and origin of their own competing goods, unfairly harming Plaintiff and diluting the LA MICHOACANA Marks.

         10. Defendants have never attempted to dispute nor rebut Plaintiff's evidence which has showed, e.g., that Defendant Luis Maestre, doing business as “Maid Express, ” claimed to be residing in a Post Office Box in North Carolina while according to Defendants' own submissions to this Court, he had been out of the Country, living in Colombia, South America, since 2016. Further, Plaintiff had shown and Defendants have never denied that in violation of the Cyberpiracy Prevention Act, since appearing in this action: (a) Defendants operated an ice cream store in Concord, North Carolina, concealing their whereabouts and ownership of infringing domain names: { and {} {},, and }; (b) changed the registration data for such domain names to “private” by designating a private domain registration service as the Registrant(s) thereof; (c) Defendants publicly listed the “” domain name as being offered for sale for the sum of $85, 000; and (d) Defendant Maestre verbally threatened to sell such infringing domain name to a “man in Panama for $40, 000”. (Doc. No. 30 at 4- 9). Defendant Maestre also registered other closely related domain names.

         11. With knowledge of the fame and popularity of Plaintiff and PROLACTO's trademarks and intentionally violating what Defendants knew to be specific rights and registrations in the trademarks, domain names, designs and designations owned by Plaintiff and/or PROLACTO, including: LA MICHOACANA, LA MICHOACANA NATURAL, and/or (Image Omitted) LA FLOR DE MICHOACAN (the “LA MICHOACANA Marks”), Defendants adopted and unlawfully used the LA MICHOACANA Marks and infringing domain names to competitively sell their own goods and services, to confuse the public and to cause harm to the Plaintiff and its Licensor.


         Summary judgment shall be granted “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). A factual dispute is genuine “if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is material only if it might affect the outcome of the suit under governing law. Id The movant has the “initial responsibility of informing the district court of the basis for its motion, and identifying those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, which it believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986) (internal quotation marks omitted). This “burden on the moving party may be discharged by ‘showing'-that is, pointing out to the district court-that there is an absence of evidence to support the nonmoving party's case.” Id. at 325.

         Once this initial burden is met, the burden shifts to the nonmoving party, which “must set forth specific facts showing that there is a genuine issue for trial.” Anderson, 477 U.S. at 250. The nonmoving party may not rely upon mere allegations or denials of allegations in the pleadings to defeat a motion for summary judgment, rather it must present sufficient evidence from which “a reasonable jury could return a verdict for the nonmoving party.” Id. at 248; accord Sylvia Dev. Corp. v. Calvert Cty., Md., 48 F.3d 810, 818 (4th Cir. 1995).

         When ruling on a summary judgment motion, a court must view the evidence and any inferences from the evidence in the light most favorable to the nonmoving party. Anderson, 477 U.S. at 255. “Where the record taken as a whole could not lead a rational trier of fact to find for the nonmoving party, there is no genuine issue for trial.” Ricci v. DeStefano, 557 U.S. 557, 586 (2009) (quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986)). The mere argued existence of a factual dispute does not defeat an otherwise properly supported motion. Anderson, 477 U.S. at 248-49. “If the evidence is merely colorable or is not significantly probative, ” summary judgment is appropriate. Id. at 249-50 (citations omitted).


         In light of the foregoing, this Court hereby finds that Defendants LUIS MAESTRE; ADRIANA TERAN (aka ADRIANA YOLANDA TERAN FRAUSTO and/or ADRIANA MAESTRE); and LA LINDA MICHOACANA (“Defendants”) have no valid claim of any rights, interest or priority or superiority in, nor to, nor any authorization to use, seek, adopt, register or infringe the LA MICHOACANA Marks. Accordingly, Plaintiff is entitled to summary judgment on its Lanham Act claims (causes of action 1-4; Doc. No. 1 ¶¶ 27-56), and its N.C. UDTPA claim (cause of action 6; Doc. No. 1 ¶¶ 76-80). During the summary judgment hearing, Plaintiff indicated that it had withdrawn its copyright claim (cause of action 5; Doc. No. 1 ¶¶ 57-66). Plaintiff further stipulated that it was Plaintiff's position that if the Court could grant summary judgment in Plaintiff's favor on its Lanham Act and N.C. UDTPA claims, Plaintiff could dismiss the remaining causes of action.

         A. Plaintiff's Lanham Act Claims (Causes of Action 1-4)

         The first four causes of action in Plaintiff's Complaint are based upon Defendants' respective violations of the Lanham Act: (1) trademark infringement under 15 U.S.C. § 1114; (2) unfair competition and false designation under 15 U.S.C. §1125(a); (3) federal trademark dilution under 15 U.S.C. § 1125(c);[3] and (4) cybersquatting, in violation of the Anticybersquatting Consumer Protection Act (“ACPA”), under 15 U.S.C. § 1125(d)(1). Defendants have violated the Lanham Act and infringed upon Plaintiff's and PROLACTO's prior, valid, registered, and exclusive trademarks and service mark rights in the strong, arbitrary, and famous LA MICHOACANA Marks, with the intent and effect of causing damage and dilution thereto. In particular, the public was likely to be confused, mistaken and/or deceived by Defendant's conduct, which included, inter alia using, displaying and advertising identical copies of The LA MICHOACANA marks, including, LA MICHOACANA, “La MICHOACANA es… natural” (and design), and Plaintiff's distinctive design marks featuring a little Indian girl doll and any other colorable simulations thereof, including “LA MEXICANA” in connection with the promotion and sale of ice cream, frozen fruits, frozen confections, fruit drinks, and restaurant or ice cream parlor services at a store located within this District at 280 ...

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