Bonnet v. Hacienda Cent., Inc.
| Decision Date | 29 March 2021 |
| Docket Number | CIVIL NO. 20-1172 (DRD) |
| Parties | PEDRO L. BONNET, Plaintiff, v. HACIENDA CENTRAL, INC., Defendant. |
| Court | U.S. District Court — District of Puerto Rico |
On April 9, 2020, Pedro L. Bonnet (hereinafter, "Plaintiff") filed a Complaint, against Hacienda Central, Inc. (hereinafter, "Defendant") for trademark infringement under the Lanham Act of 1946, 15 U.S.C. §1051 et seq. (hereinafter, "Lanham Act") for which the Court has subject matter jurisdiction under claims based on 28 U.S.C. §1331 and 1338 (a). See Docket No. 1. Plaintiff's claims consist of trademark infringement, false designation of origin, and other acts of unfair competition arising under statutes of the United States, the Lanham Act, the Common Law, and the law of the Commonwealth of Puerto Rico proscribing unfair and deceptive trade practices (10 L.P.R.A. § 257 et seq.). Plaintiff requests damages plus all profits that are attributable to the infringing sale of goods; the destruction of all products, advertisements, labels, signs, prints, packages, wrappers, receptacles and all other materials in their possession or under the control of Defendant which infringes upon Plaintiff's mark, and a permanent injunction pursuant to 15 U.S.C. § 1116.
On June 10, 2020, Defendant filed a Motion to Dismiss for failure to state a claim upon which relief can be granted under Fed. R. Civ. P. 12(b)(6). In sum, Defendant alleges that Plaintiff has failed to establish essential elements of his causes of action failing to state a claim regarding each of the causes of action stated in the Complaint. See Docket No. 9. On July 3, 2020, Plaintiff filed an Opposition to Motion to Dismiss (hereinafter, Opposition"). See Docket No. 14. Subsequently, Defendants reciprocated with a Reply to Plaintiff's Opposition to Motion to Dismiss (hereinafter, "Reply to Opposition") on July 17, 2020.
After a careful analysis of the arguments presented by both Parties, and for the reasons stated herein, the Court DENIES Hacienda Central, Inc.'s Motion to Dismiss.
Taking the allegations set forth in the Complaint as true, the facts are as follows:
Plaintiff is the owner of a domestic corporation dedicated to the business of retail and grocery which sells "a wide variety of products and prepared meals under the mark LA HACIENDA® and LA HACIENDA MEAT CENTER®." Docket No. 1 at ¶ 10. "The LA HACIENDA MEAT CENTER and/or LA HACIENDA® mark is prominently displayed on all products sold by [Plaintiff]." Id. Records show that marks LA HACIENDA MEAT CENTER and LA HACIENDA have been registered under the United States Patent and Trademark Office (hereinafter, "USPTO") under registration numbers 4,992,481 since July 5, 2016 and 4,988,101 since June 28, 2016, respectively. See Exhibit 1-1 at Docket No. 1. Additionally, records show that LA HACIENDA MEAT CENTER and LA HACIENDA trademarks have been registered in the Puerto Rico Trademark Registry (hereinafter, "PRTO") under registration numbers 215330 and 215089, respectively, issued by the Department of State of the Commonwealth of Puerto Rico. Both trademarks have been registered in the PRTO since September 10, 2015. See Exhibit 1-2 at Docket No. 1.
Defendant, Hacienda Central, Inc. is a domestic corporation with its principal office in Juncos, Puerto Rico that is dedicated to "prepared and packaged meals consisting primarily ofmeat, poultry or vegetables." Exhibit 1-3 at 4 at Docket No. 1. Defendant sells these products under the term H PRODUCTOS LA HACIENDA and/or PRODUCTOS LA HACIENDA. The mark H PRODUCTOS LA HACIENDA has been registered in the PRTO under registration number 200788 since March 10, 2015, issued by the Department of State of the Commonwealth of Puerto Rico.
Plaintiff alleges that Defendant's use of its mark to sell its products constitutes a "deceptive and misleading business practice of using a confusingly similar mark that infringes upon the rights [of Plaintiff]." Docket No. 1 at ¶ 6. According to Plaintiff:
Defendant's use of the LA HACIENDA® Marks is likely to cause confusion or mistake or to deceive persons into the erroneous belief that Defendant's products are authorized, endorsed or sponsored by [Plaintiff] or are connected in some way with [Plaintiff] as Defendant has adopted the name H PRODUCTOS LA HACIENDA to imply that its products originate from LA HACIENDA MEAT CENTER and/or LA HACIENDA when the Defendant could have chosen other name such as PRODUCTOS HACIENDA CENTRAL to identify its product which is similar to its corporate name Hacienda Central instead of the term H PRODUCTOS LA HACIENDA which carries the false connotation that its products originate from Bonnet's LA HACIENDA® and LA HACIENDA MEAT CENTER®.
Docket No. 1 at ¶ 23. In the Opposition, Plaintiff argues that "[a]fter learning of defendant's intent to misappropriate La Hacienda® Marks' goodwill, Plaintiff immediately enforced its trademark rights by sending a cease and desist letter to defendant and requesting the cancellation of [D]efendant's trademark in the Puerto Rico Trademark Registry, an ongoing procedure." Docket No. 14 at 1. Meanwhile, Defendant stated that Plaintiff's "federal registrations are currently undergoing a cancellation proceeding due to [Plaintiff]'s lack of use thereof in interstate commerce and otherwise." Docket No. 9 at 2. In turn, Plaintiff alleges that after they requested the cancellation of Defendant's trademark in Puerto Rico, Docket No. 14 at 1-2. Furthermore, according to Plaintiff, Defendant also has attempted to register its mark H PRODUCTOS LA HACIENDA before the USPTO and its application was rejected on the basis of confusing similarity with the LA HACIENDA® marks belonging to Plaintiff. Docket No. 1 at ¶ 23 and Exhibit 1-3.
On April 9, 2020, Plaintiff filed a Complaint against Defendant founded on four causes of action and requesting the Court for a permanent injunction against Defendant. The first cause of action is founded upon trademark infringement in violation of Section 32(1)(a) of the Lanham Act (15 U.S.C. § 1114(1)(a)). Plaintiff alleges that "the H PRODUCTOS LA HACIENDA and/or PRODUCTOS LA HACIENDA designation resembles the LA HACIENDA Mark® marks in a manner that creates likelihood of confusion, mistake or deception." Docket No. 1 at ¶ 29. Plaintiff further argues that he has suffered irreparable injury and loss of reputation as a consequence of Defendant's "deliberately and maliciously [. . .] acts for the purpose of causing injury [. . .] and with intent to trade on the vast goodwill associated with [Plaintiff's] marks." Docket No. 1 at ¶ 31. Additionally, Plaintiff alleges that Defendant knew of the LA HACIENDA marks before engaging in the trademark infringement.
The second cause of action is founded upon false designation of origin in violation of section 43(a)(1) of the Lanham Act (15 U.S.C. § 1125(a)(1)). According to Plaintiff, Defendant's unauthorized use of a "a word, symbol or device, or combination thereof, [that results in] a false designation or origin" constitutes a violation of Section 43(a)(1) of the Lanham Act., 15 U.S.C. §1125(a)(1) and "[u]nless Defendant is restrained from continuing its wrongful acts, the damage to [Plaintiff], which is irreparable, will only continue to increase." Docket No. 1 at ¶ 37. The third cause of action in the Complaint relates to common law infringement as Plaintiff alludes thatDefendant's use of an imitation of LA HACIENDA marks creates "a likelihood of confusion among prospective purchasers, thereby inducing purchasers and others to believe, contrary to fact, that such business is sponsored, or otherwise approved by, or connected with Plaintiff." Docket No. 1 at ¶ 39. This, according to Plaintiff has "impaired and diluted that part of Plaintiff's goodwill symbolized by the LA HACIENDA®." Id. Plaintiff believes that the marks utilized by Hacienda Central, Inc. are "so confusingly similar [that are] likely to cause confusion, mistake or deception as to the source or origin of LA HACIENDA® Marks and constitute infringement of [Plaintiff's] rights under common law." Docket No. 1 at ¶ 41. Lastly, Plaintiff's fourth cause of action is founded upon unfair competition in violation of the law of the Commonwealth of Puerto Rico. Plaintiff alleges that Defendant's "colorable imitations" misrepresent Defendant's products as being associated in any manner whatsoever with Plaintiff and these Docket No. 1 at ¶ 47. Additionally, "[d]efendant's unfair business practices are of a recurring nature and harmful to the trade and the public at large." Docket No. 1 at ¶ 48. Moreover, a permanent injunction pursuant to 15 U.S.C. § 1116 has been requested by Plaintiff.
To provide examples of the alleged likelihood between both marks, Plaintiff has provided in the Complaint, photos comparing both trademarks and photos of Defendant's products displaying their mark in what appears to be a supermarket setting. One of the photos displays various trays of raw meat with the labels that appear to say "Econo", a chain of locally owned supermarkets. Additionally, Plaintiff argues that Defendant's products were recalled for contamination found by a consumer from the School Program of Puerto Rico who found a piece of metal embedded in a chub of corned beef. Plaintiff provided a copy of the news report inExhibit 4. See Docket No. 1-4. As to this issue, Plaintiff alleges that because of the confusion between both marks "companies dedicated to manage contaminated foods approached [Plaintiff] offering their services to dispose of the contaminated material." Docket No. 1 at 9.
Defendant is...
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