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

295 F. Supp. 3d 756
CourtDistrict Court, W.D. Kentucky
DecidedJanuary 8, 2018
DocketCIVIL ACTION NO. 3:16–cv–00527–CRS
StatusPublished
Cited by6 cases

This text of 295 F. Supp. 3d 756 (La Bamba Licensing, LLC v. La Bamba Authentic Mexican Cuisine, Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Kentucky primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
La Bamba Licensing, LLC v. La Bamba Authentic Mexican Cuisine, Inc., 295 F. Supp. 3d 756 (W.D. Ky. 2018).

Opinion

Charles R. Simpson III, Senior Judge

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 *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 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, 106 S.Ct. 2548, 91 L.Ed.2d 265 (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, 106 S.Ct. 1348, 89 L.Ed.2d 538 (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, 106 S.Ct. 2505, 91 L.Ed.2d 202 (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).

III. DISCUSSION

A. The Law

Plaintiff brings claims against Defendant under the Lanham Act5 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:

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295 F. Supp. 3d 756, Counsel Stack Legal Research, https://law.counselstack.com/opinion/la-bamba-licensing-llc-v-la-bamba-authentic-mexican-cuisine-inc-kywd-2018.