Especias Montero, Inc. v. Best Seasonings Grp.
| Decision Date | 23 September 2022 |
| Docket Number | CIVIL 20-1740 (GLS) |
| Parties | ESPECIAS MONTERO, INC. Plaintiff/Counter Defendant v. BEST SEASONING GROUP, INC. D/B/A SOFRITO MONTERO Defendant/Counter Plaintiff |
| Court | U.S. District Court — District of Puerto Rico |
Plaintiff Especias Montero, Inc. (“Especias”) and Defendant Best Seasonings Group, Inc. (“Best Seasonings”) are local competitors that produce, sell, and distribute spices and seasonings, among other products. Especias registered the mark ESPECIAS MONTERO DESDE 1959 in the U.S Patent and Trademark Office (“USPTO”). Especias claims that Best Seasonings is infringing its trademark and filed this action seeking a preliminary and permanent injunction, as well as damages, for trademark infringement under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and the Puerto Rico Trademark Act, 10 P.R. Laws Ann § 223 et seq., and for unfair competition and unjust enrichment under Article 26 of the Puerto Rico Civil Code. Docket Nos. 1 and 6. Best Seasonings filed a counterclaim in the alternative seeking a declaration that the purportedly infringing mark (ESPECIAS NATURALES BY SOFRITO MONTERO) was in use prior to Especias' first use in commerce of ESPECIAS MONTERO DESDE 1959 and its subsequent registration in the USPTO. Docket No. 32. Especias' damages claims were dismissed by stipulation. Docket Nos. 52 and 54. Pending before the Court is Best Seasonings' request for summary judgment on the claims for equitable relief. Docket No. 74. For the reasons discussed below, Best Seasonings' motion for summary judgment is GRANTED.
Summary judgment under Rule 56 of the Federal Rules of Civil Procedure is warranted when the moving party demonstrates 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 dispute is considered genuine if “a reasonable jury, drawing favorable inferences, could resolve it in favor of the nonmoving party.” Velazquez-Perez v. Developers Diversified Realty Corp., 753 F.3d 265, 270 (1st Cir. 2014)(citation omitted). A fact is “material” if it potentially affects the outcome of the suit. American Steel Erectors, Inc. v. Local Union No. 7, 536 F.3d 68, 75 (1st Cir. 2008). However, “[c]onclusory allegations, improbable inferences, and unsupported speculation are insufficient to establish a genuine dispute of fact.” Velazquez-Perez, 753 F.3d at 270 (citations omitted).
A party moving for summary judgment bears the burden of proving that there are no genuine issues of material fact and that judgment as a matter of law is warranted. Adickes v. S.H. Kress & Co., 398 U.S. 144 (1970). The moving party “may affirmatively produce evidence that negates an essential element of the non-moving party's claim” or “point to evidentiary materials already on file [...] that demonstrate that the non-moving party will be unable to carry its burden of persuasion at trial.” Carmona v. Toledo, 215 F.3d 124, 132 (1st Cir. 2000) (citing Celotex Corp. v. Catrett, 477 U.S. 317)). “[I]f the summary judgment record satisfactorily demonstrates that the plaintiff's case is, and may be expected to remain, deficient in vital evidentiary support, this may suffice to show that the movant has met its initial burden.” Carmona, 215 F.3d at 133; Ocasio-Hernandez v. Fortuno-Burset, 777 F.3d 1, 4-5 (1st Cir. 2015).
Even though infringement cases “often present factual issues that render summary judgement inappropriate, this is not invariably so.” Copy Cop, Inc. v. Task Printing, Inc., 908 F.Supp. 37, 43 (1st Cir.1995)(citing Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 24 (1st Cir. 1989); Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 814 (1st Cir.1987)). In some infringement cases, “the Court may determine that the facts have been fully developed through pleadings, affidavits, documents and exhibits and that the legal issues are squarely presented.” Pignons S. A. de Mecanique de Precision Corp. v. Polaroid Corp., 498 F.Supp. 805, 809-810 (D. Mass. 1980), aff'd 657 F.2d 482, 487 (1st Cir. 1981).
Pursuant to Local Rule 56 of the Local Rules of the District Court for the District of Puerto Rico, a party opposing a motion for summary judgment must submit a statement admitting, denying or qualifying each of the facts set forth by the moving party in its statement of uncontested facts in support of the motion for summary judgment. This is accomplished by making individual reference to each numbered paragraph of the moving party's statement of uncontested facts. Local Rule 56 (c) and (e). The purpose of Local Rule 56 is to “relieve the district court of any responsibility to ferret through the record to discern whether any material fact is genuinely in dispute”. CMI Capital Mkt. Inv., LLC v. Gonzalez-Toro, 520 F.3d 58, 62 (1st Cir. 2008). Local Rule 56 admonishes that the facts that are not specifically denied, qualified or otherwise properly controverted by the non-moving party are deemed admitted by the Court. Local Rule 56 (c) and (e). The First Circuit has “held with a regularity bordering on the monotonous that parties ignore the strictures of an ‘anti-ferret' rule at their peril.” Puerto Rico Am. Ins. Co. v. Rivera Vazquez, 603 F.3d 125, 131 (1st Cir 2010).
Best Seasonings submitted a Statement of Uncontested Material Facts at Docket No. 72 (“SUF”). Especias submitted its own statement of facts in Docket No. 84 (“PSUF”). Especias' statement does not reference by numbered paragraphs the facts proposed by Best Seasonings; it merely includes a list of its own proposed facts. This is exactly what is proscribed in Local Rule 56(c). Especias did not “admit, deny or qualify the uncontested facts proposed by the moving party.”. Therefore, the materials facts proposed by Best Seasonings in Docket No. 72, which have been properly supported by evidence on the record, are deemed admitted. See Mariani-Colon v. Dept of Homeland Security, 511 F.3d 216, 219 (1st Cir. 2007) (“[S]ubmitting an ‘alternate statement of facts' [..] justifies the issuance of a “deeming order” which characterizes defendant's assertions of fact as uncontested”) (emphasis ours).
Having reviewed the submissions by both sides, the Court finds that the following material facts are not in dispute:
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