La Bamba Licensing, LLC v. La Bamba Authentic Mexican Cuisine, Inc.
La Bamba Licensing, LLC v. La Bamba Authentic Mexican Cuisine, Inc.
Opinion of the Court
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.
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 *764trademark 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
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 ,
III. DISCUSSION
A. The Law
Plaintiff brings claims against Defendant under the Lanham Act
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 ...
(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 *765to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ...
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. ,
Thus, the first issue before the court is the validity of the trademark in question. See Maker's ,
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. ,
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. ,
The Court will consider the facts supporting each of the "Frisch's" factors in turn.
B. The Factors
1. Strength of the LA BAMBA mark
The strength of a trademark turns on the mark's distinctiveness. Frisch's Restaurant, Inc. v. Shoney's Inc. ,
Courts measure the unique nature of the mark by placing the mark in one of four categories: generic, descriptive, suggestive, or fanciful or arbitrary. Daddy's ,
The LA BAMBA mark is an arbitrary mark. Plaintiff states that the term has some common usage in ordinary language (such as the term's association with a 1980's song and movie), but that the term "La Bamba" is unrelated to the restaurant services Plaintiff provides. (DN 27, 9.) Defendant does not dispute this and the court agrees. The arbitrary nature of the mark is in Plaintiff's favor on this factor.
The court also considers the mark's public recognition in determining the strength of the mark. "[A]lthough inherent distinctiveness may provide powerful support for the strength of a mark, the full extent of that support nonetheless depends on the scope of commercial recognition." Maker's Mark Distillery, Inc. v. Diageo North America, Inc. ,
Plaintiff claims that the mark has "commercial strength" because its restaurants have been using the LA BAMBA mark continuously for close to thirty years. (DN 27, Exh. A, ¶ 15.) It further claims that the mark is particularly strong in Kentucky where it has been used in connection with the Louisville restaurant for almost twenty years and in connection to a previous Lexington, Kentucky location. (Id. at ¶¶ 12, 14.) Plaintiff emphasizes that the Louisville restaurant is a popular location visited by customers throughout the state. (Id. at ¶ 13.) Plaintiff further argues that the continuous use of the mark regionally and in Kentucky supports strong recognition of the mark in connection with Mexican cuisine. The Defendant does not dispute these underlying facts. In fact, Defendant even seems to concede that the mark is commercially strong within the Louisville area ("Plaintiff's Mark Strength is not Strong outside of Louisville Area ") (emphasis added). (DN 29, 5.)
Rather, Defendant argues that third party use of the mark has weakened the LA BAMBA mark. See Daddy's ,
The arbitrary nature of the mark, combined with Plaintiff's uncontested evidence of continuously using the mark for twenty years in the state of Kentucky, weigh in Plaintiff's favor on this factor.
2. Relatedness of the Services
Services are " 'related' if the services are marketed and consumed such that buyers are likely to believe that the services, similarly marked, come from the same source, or are somehow connected with or sponsored by a common company." Homeowners ,
There is no question that both Plaintiff's and Defendant's restaurants serve casual, Mexican-style cuisine. (DN 26, 2.) While Defendant states that the "parties have different target markets, use different logos, and have completely different products," it does not explain how the parties' target markets, logos, and products are different. Defendant cites to nothing in the record to guide the court's analysis on this assertion. The court therefore finds that the services of the parties are sufficiently related as to cause buyers to believe the parties' services are somehow connected.
3. Similarity of the Marks
"Similarity of marks is a factor of considerable weight." Daddy's ,
The court acknowledges that the parties' marks are not identical; the name "La Bamba Authentic Mexican Cuisine" certainly is longer and more descriptive than Plaintiff's LA BAMBA mark. The court further acknowledges that "it is the overall impression of the mark, not an individual feature, that counts." Homeowners ,
Nevertheless, comparing the marks in their entirety, the court finds that consumers with only a "general, vague, or even hazy" recollection of Plaintiff's mark could easily confuse the marks. Potential consumers familiar with Plaintiff's La Bamba restaurant, which holds itself out as serving casual, Mexican-style cuisine, likely could believe that La Bamba Authentic Mexican Cuisine is connected to or affiliated with the Plaintiff's restaurant. Defendant's restaurant's name is merely Plaintiff's arbitrary mark accompanied by a description of the same style of food that Plaintiff offers to consumers. The evidence weighs in Plaintiff's favor on this factor.
4. Evidence of Actual Confusion
Courts agree that evidence of actual confusion is "undoubtedly the best evidence of likelihood of confusion." Daddy's ,
Plaintiff, by affidavit, submits the following evidence as support for actual confusion: that "[e]mployees of the Louisville Restaurant have reported numerous questions and comments from visitors to the Louisville Restaurant who have inquired about [Defendant's restaurant] and its connection to our LA BAMBA chain of restaurants;" that "customers have questioned why they could not purchase the same food at [Defendant's restaurant]" and "indicated that they felt confused or ripped off by their experience at [Defendant's restaurant];" that customers have "shown up to pick up orders at the Louisville Restaurant that were placed with [Defendant's Restaurant];" and that "these sorts of questions, comments, and occurrences relating to [Defendant's restaurant] are happening regularly and at all shifts at the Louisville Restaurant." (DN 27, Exh. A, ¶¶ 26-28.) Defendant does not offer any evidence rebutting this affidavit.
Because Plaintiff does not provide specific evidence indicating how often these complaints or questions occur, it cannot definitively be stated that "chronic mistakes and serious confusion" between the parties' restaurants has occurred. See Therma-Scan ,
5. Marketing Channels Used
The fifth "Frisch's" factor "requires an analysis of the parties' predominant customers and their marketing approaches." Id. at 636. "Where the parties have different customers and market their goods or services in different ways, the likelihood of confusion decreases." Id. This factor is significant when it illuminates what actually happens in the marketplace. See Homeowners , 931 F.2d at 1110.
There are some similarities in the parties' predominant customers. First, both parties serve and advertise to individual consumers of casual, Mexican-style food. (DN 27, Exh. A, ¶ 9; DN 26, 2.) See, e.g., Therma-Scan ,
Courts also consider how the parties market their services. In response to Plaintiff's interrogatory, Defendant alleged that it advertises and promotes its services through its Facebook page, through a coupon in a Lebanon, Kentucky grocery, and through a coupon in a Lebanon, Kentucky newspaper. (DN 23, 3.) Plaintiff alleges that it similarly promotes its services on its website, on Facebook, and through "coupon and grocery store advertisements,"
*769which Defendant does not dispute. (DN 27, Exh. A, ¶ 10.) Yet these general facts do not particularly "illuminate what actually happens in the marketplace." Homeowners , 931 F.2d at 1110. For example, neither party provided evidence on marketing budgets, frequency of advertising, or sophistication of advertising. Additionally, the mere fact that both parties use Facebook and the Internet is not sufficient. See Therma-Scan ,
Despite the limited and general nature of the evidence offered by Plaintiff, Defendant has not pointed to any facts in the record indicating that the parties market their services in different ways or to different customers. Because Defendant has not provided evidence showing that this factor disfavors Plaintiff or evidence establishing that a genuine issue of material fact exists, the court finds that this factor is neutral.
6. Likely degree of Purchaser Care
"[I]n assessing the likelihood of confusion to the public, the standard used by the courts is the typical buyer exercising ordinary caution." Homeowners , 931 F.2d at 1111. A higher standard is generally appropriate when a buyer has expertise in the products or services, or when the products or services are expensive or unusual. Id. See also Eat BBQ ,
The Court in Frisch's found that "[t]he 'fast-food' products promoted by [the defendant] are not likely to be the object of intensive consumer research, but rather subject to 'impulse buying.' "
7. Defendant's Intent in Selecting the Mark
"If a party chooses a mark with the intent of causing confusion, that fact alone may be sufficient to justify an inference of confusing similarity." Homeowners , 931 F.2d at 1111. On the other hand, this factor "does not carry significant weight if no evidence of intentional infringement exists." Therma-Scan ,
Defendant has testified that it was not aware of Plaintiff's trademark and its use in connection with Plaintiff's restaurant until Defendant received Plaintiff's May 10, 2016 letter informing it of Plaintiff's rights in the LA BAMBA mark. (DN 23, 3.) On Plaintiff's summary judgment motion, the court must accept this as true. The court finds that Defendant did not choose the mark intending to create confusion and therefore this factor is not relevant in determining likelihood of confusion.
8. Likelihood of Expansion of the Product Lines
The last of the "Frisch's" factors looks to whether there exists a "strong" possibility "that either party will expand [its] business to compete with the other or be marketed to the same consumers."
*770Daddy's ,
Plaintiff does not argue that Defendant seeks to expand its business at this time. However, Plaintiff does contend that there is a strong possibility that Plaintiff will expand its restaurants into new geographic locations. Plaintiff alleges that it currently operates numerous restaurants, has previously operated restaurants in five other states, and that it is currently offering franchise opportunities. (DN 27, Exh. A, ¶¶ 7-17.) However, these facts only indicate the mere possibility that Plaintiff could open another restaurant in close proximity to Defendant. Plaintiff has not alleged any specific plans to expand and only states that "if the right location was located, Plaintiff would potentially open another restaurant that is even closer to [Defendant]." (DN 27, 16.) Because the evidence does not show that the possibility of Plaintiff expanding near Defendant's restaurant is "strong," the last "Frisch's" factor is not relevant.
C. The Likelihood of Confusion
The preceding discussion on the eight "Frisch's" factors indicates that there is no genuine dispute of material fact. Defendant has not cited to any evidence in the record to rebut the facts offered by Plaintiff on this motion and discovery is closed.
The court finds that there exists a likelihood of confusion between the services offered by Plaintiff and Defendant. The first four factors provide the strongest support for Plaintiff's position: the LA BAMBA mark is arbitrary and has been used in Kentucky for more than twenty years; both parties use the mark in connection with casual, Mexican-style cuisine; the parties' marks are sufficiently similar as to confuse a consumer with only a vague recollection of Plaintiff's mark; and, perhaps most significantly, actual confusion between Plaintiff's and Defendant's services has already occurred. The remaining factors either favor Plaintiff or are irrelevant or neutral. Together, the foundational facts in this case establish a likelihood of confusion and summary judgment is proper on Plaintiff's claims.
D. Relief
Plaintiff has requested a permanent injunction.
A permanent injunction preventing Defendant from using the LA BAMBA mark would preclude further consumer confusion and stop customers from being "misled in the future." Maker's ,
IV. CONCLUSION
For the reasons stated, the court will GRANT the motion of Plaintiff La Bamba Licensing, LLC for summary judgment. The court will permanently enjoin Defendant La Bamba Authentic Mexican Cuisine, Inc. from using the LA BAMBA mark in connection with its services.
An order will be entered in accordance with this opinion.
While the initial application was filed in the name of Ramiro Aguas, the registration was subsequently assigned to Plaintiff. (DN 27, Exh. A, ¶ 21.)
U.S. Reg. No. 2,141,892.
U.S. Reg. Nos. 3,598,169; 3,598,167; and 3,527,867.
... the right of the owner to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce, shall be incontestable ...
The Lanham Act is codified at
In order to create a genuine dispute of material fact under Fed.R.Civ.P. 56, the nonmoving party must "direct the court's attention to those specific portions of the record upon which it seeks to rely." In re Morris ,
Plaintiff has also requested damages. The issue of damages, not being fully briefed at this time, will be reserved.
Reference
- Full Case Name
- LA BAMBA LICENSING, LLC v. LA BAMBA AUTHENTIC MEXICAN CUISINE, INC.
- Cited By
- 6 cases
- Status
- Published