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La Bamba Licensing, LLC v. La Bamba Authentic Mexican Cuisine, Inc.

United States District Court, W.D. Kentucky, Louisville

January 9, 2018




         This matter is before the court on motion of Plaintiff, La Bamba Licensing, LLC (“Plaintiff”), for summary judgment. For the following reasons, the court will GRANT Plaintiff's motion.

         I. BACKGROUND

         Plaintiff La Bamba Licensing, LLC operates a series of restaurants under the name “La Bamba” (“Plaintiff's restaurant” or “La Bamba”) serving casual, Mexican-style cuisine. (DN 27, Exh. A, ¶ 9.) There are currently eight La Bamba restaurants located throughout Illinois, Kentucky, Indiana, and Wisconsin. (Id. at ¶ 8.) In years past, La Bamba locations also have existed in Ohio, Michigan, Pennsylvania, Nebraska, and Georgia. (Id. at ¶ 7-8.) One of La Bamba's current locations is in the Highlands neighborhood of Louisville, Kentucky, conveniently located next to many popular bars. (Id. at ¶ 13.) This location has been serving the Louisville market under the name La Bamba since early 1997. (Id. at ¶¶ 12, 15.)

         In 1996, Ramiro Aguas, the founder and current president of Plaintiff, filed a trademark application for the LA BAMBA mark (“mark” or “LA BAMBA mark”) with the U.S. Patent and Trademark Office.[1] (Id. at 20-21.) The mark was registered in 1998 and covers “restaurant, café, carry out restaurant and catering services.”[2] (Id.) Plaintiff also owns registrations for logos that contain the LA BAMBA mark as well as a registration for the LA BAMBA mark covering various food items.[3] (Id. at 22.) Each of these marks has become incontestable under 15 U.S.C. § 1065.[4] (Id. at 23.)

         Defendant, La Bamba Authentic Mexican Cuisine, Inc. (“Defendant”), opened a restaurant in December of 2015 under the name “La Bamba Authentic Mexican Cuisine” (“Defendant's restaurant”). (DN 23, 1-2.) Defendant's restaurant has only one location in Lebanon, Kentucky, which is approximately sixty-five miles from Plaintiff's restaurant in Louisville. (Id.) Defendant's restaurant also serves casual, Mexican-style cuisine. (DN 26, 2.)

         On May 10, 2016, Plaintiff sent a letter to Defendant advising it of Plaintiff's trademark rights in the LA BAMBA mark and demanding that Defendant cease use of the mark, which Defendant refused. (DN 27, Exh. B, ¶¶ 4-5.) Plaintiff sent another letter to Defendant on June 24, 2016, asking again that it change its restaurant's name. (Id. at ¶ 6.) Defendant again refused this request. (Id. at ¶ 7.)

         Plaintiff filed a Complaint in August of 2016 alleging three counts: (1) Trademark Infringement under 15 U.S.C. § 1114(1); (2) Unfair Competition under 15 U.S.C. § 1125(a); and (3) Common Law Unfair Competition under Kentucky Law. (DN 1.) Plaintiff now moves this court to enter summary judgment in its favor on each of its counts. (DN 27.)

         II. STANDARD

         A party moving for summary judgment must show 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). The moving party bears the burden of demonstrating the absence of a genuine issue of material fact. Celotex Corp. v. Catrett, 477 U.S. 317, 323 (1986). Additionally, the Court must draw all factual inferences in favor of the nonmoving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986). A genuine issue for trial exists when “there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party.” Anderson v. Liberty Lobby, 477 U.S. 242, 249 (1986). It is the burden of the nonmoving party to “direct the court's attention to those specific portions of the record upon which it seeks to rely to create a genuine issue of material fact.” In re Morris, 260 F.3d 654, 655 (6th Cir. 2001).


         A. The Law

         Plaintiff brings claims against Defendant under the Lanham Act[5] and Kentucky common law. The Lanham Act's purpose “is to protect the trademark holder's quasi-property interest in the mark and prevent consumer confusion about the actual source of goods using the mark.” Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 703 F.Supp.2d 671, 687 (W.D. Ky. 2010) aff'd, 679 F.3d 410 (6th Cir. 2012).

         Plaintiff's first claim is Trademark Infringement under Section 32 of the Lanham Act, which states that it is a violation for a person, without the consent of the registrant, to:

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive… 15 U.S.C. § 1114(1)(a). Plaintiff also brings a claim for Unfair Competition under Section 43(a) of the Lanham Act, which holds liable:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person…

15 U.S.C. § 1125(a). Plaintiff's last claim is Unfair Competition arising under Kentucky common law.

         The analysis for Lanham Act claims of trademark infringement and unfair competition is identical to the analysis for Kentucky common law claims of the same. See Winchester Federal Savings Bank v. Winchester Bank, Inc., 359 F.Supp.2d 561, 564 (E.D. Ky. 2004); See also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 780 (1992) (“Whether we call the violation infringement, unfair competition or false designation of origin, the test is identical.”). Specifically, to prove trademark infringement and unfair competition, a plaintiff must show that: “(1) [it] held the trademarks, (2) [it] did not consent to [the defendant's] use of those marks and (3) [the defendant's] use of the marks was likely to cause confusion among relevant consumers.” Eat BBQ LLC v. Walters, 47 F.Supp.3d 521, 528 (E.D. Ky. 2014); See also Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 833 (6th Cir. 1983) (“Once the plaintiffs establish that the marks are valid and protectable, they must establish that the defendant's service mark is likely to cause confusion among consumers in the marketplace in to prevail on all of the state and federal claims.”).

         Thus, the first issue before the court is the validity of the trademark in question. See Maker's, 703 F.Supp.2d at 683, aff'd, 679 F.3d 410 (6th Cir. 2012). A mark is presumed valid when it becomes “incontestable” under 15 U.S.C. § 1065. A defendant then has the burden of rebutting its validity. In the present case, there is no dispute that the LA BAMBA mark is incontestable under 15 U.S.C. § 1065. (DN 27, Exh. 4.) Because Defendant does not attempt to rebut the validity of the mark, the court finds that Plaintiff's mark is valid.

         The next inquiry is whether Plaintiff consented to Defendant's use of the mark. There is likewise no dispute about this prong of inquiry; Defendant admits that Plaintiff sent it correspondence asking it to change its name. (DN 29, 1-2.) Therefore, the only issue on this motion is whether Defendant's use of the mark is likely to cause confusion.

         “Whether there is a likelihood of confusion is a mixed question of fact and law.” Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111, 1116 (6th Cir. 1996) (citing Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988)). The court first considers the “fact[s] supporting the likelihood of confusion” before turning to the legal question of “whether those foundational facts constitute a likelihood of confusion.” Id. (internal citations omitted).

         The court looks at eight factors when determining whether the facts support a likelihood of confusion: (1) strength of the plaintiff's mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. Frisch's Rests., Inc. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir.), cert. denied, 459 U.S. 916 (1982). A plaintiff does not need to prevail on each of the abovementioned “Frisch's” factors in order to establish likelihood of confusion. Daddy's JunkyMusic Stores, Inc. v. Big Daddy's Family Music Center, 109 F.3d 275, 280 (6th Cir. 1997). “These factors imply no mathematical precision, but are simply a guide to help determine whether confusion is likely… The ultimate ...

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