Purepecha Enters., Inc. v. El Matador Spices & Dry Chiles
| Decision Date | 24 August 2012 |
| Docket Number | Case No. 11 C 2569 |
| Court | U.S. District Court — Northern District of Illinois |
| Parties | PUREPECHA ENTERPRISES, INC., an Illinois Corporation, d/b/a EL MATADOR, Plaintiff, v. EL MATADOR SPICES & DRY CHILES, a California Corporation, EL MATADOR ADOBOS, LLC, a Texas limited liability company, CARLOS RICO, JAIME PABLO RICO, DARIO RICO, ROGELIO RICO, ARTURO OROZCO, RUBEN OROZCO, and ISRAEL GONZALES FERNANDEZ, Defendants. EL MATADOR ADOBOS, LLC and CARLOS RICO, Counter-Plaintiffs, v. PUREPECHA ENTERPRISES, INC., EVERARDO MEJIA, and PETRA ANGELICA RICO, Counter-Defendants. |
AMY J. ST. EVE, District Court Judge:
On April 15, 2011, Plaintiff Purepecha Enterprises, Inc., d/b/a El Matador ("Plaintiff"), filed an eight-count Complaint alleging trademark claims under the Lanham Act, 15 U.S.C. § 1051, et seq., as well as state law claims against Defendants El Matador Spices & Dry Chiles, ElMatador Adobos, LLC, and certain individuals ("Defendants"). See 28 U.S.C. §§ 1331, 1367(a). On June 30, 2011, Defendants El Matador Adobos, LLC ("El Matador Adobos") and Carlos Rico ("Counter-Plaintiffs") filed a thirty-count Counterclaim against Purepecha Enterprises, Inc., Everardo Mejia, and Petra Angelica Rico ("Counter-Defendants") alleging Lanham Act trademark violations, see 15 U.S.C. § 1051, et seq., as well as state law claims.
As discussed in detail below, the parties have filed cross-motions for summary judgment pursuant to Federal Rule of Civil Procedure 56(a). For the following reasons, the Court grants in part and denies in part Defendants'/Counter-Plaintiffs' motion for summary judgment and grants in part and denies in part Plaintiff's/Counter-Defendants' motion for partial summary judgment. In addition, the Court grants in part and denies in part Defendants'/Counter-Plaintiffs' motion to strike.
In its eight-count Complaint, Plaintiff alleges the following claims: (1) a Lanham Act direct infringement claim pursuant to 15 U.S.C. § 1114 (Count I); (2) a Lanham Act unfair competition claim based on 15 U.S.C. § 1125, as well as common law unfair competition claims under Illinois, Texas, Michigan, Indiana, Missouri, and Ohio law (Count II); (3) a Lanham Act trademark dilution claim under 15 U.S.C. § 1125(c) (Count III); (4) an Illinois Uniform Deceptive Trade Practices Act ("IUDTPA") claim under 815 ILCS 510/2 (Count IV); (5) three Illinois common law tortious interference with contract claims (Counts V-VII); and (6) an Illinois Consumer Fraud and Deceptive Business Practices Act claim ("ICFA") pursuant to 815 ILCS 505/2 (Count VIII).
Counter-Plaintiffs El Matador Adobos and Carlos Rico bring the following thirty counts in their Counterclaim: (1) a Lanham Act trademark infringement claim pursuant to 15 U.S.C. § 1125(a) (Counterclaim I); (2) a Lanham Act false advertising claim under 15 U.S.C. § 1125(a) (Counterclaim II); (3) an IUDTPA claim (Counterclaim III); (4) an ICFA claim (Counterclaim IV); (5) a claim to cancel U.S. Trademark Registration No. 3,942,992 based on fraud (Counterclaim V); (6) a claim to cancel U.S. Trademark Registration No. 3,942,992 pursuant to 15 U.S.C. § 1052(d) (Counterclaim VI); (7) a claim to cancel U.S. Trademark Registration No. 3,436,830 based on abandonment (Counterclaim VII); (8) a claim for declaratory relief concerning ownership of the trademarks at issue (Counterclaim VIII); (9) an Illinois common law defamation per se claim (Counterclaim IX); (10) an Illinois common law defamation per quod claim (Counterclaim X); (11) a Texas common law breach of fiduciary duty claim (Counterclaim XI); and (12) nineteen Illinois common law tortious interference with contract claims (Counterclaims XII-XXX).
Before the Court are Defendants'/Counter-Plaintiffs' (collectively "El Matador") motion for summary judgment and Plaintiff's/Counter-Defendants' (collectively "Purepecha") motion for partial summary judgment. Purepecha moves for summary judgment as to Counterclaims I, III, IV, V, VII, and IX-XXX. El Matador moves for summary judgment as to all eight counts of Purepecha's Complaint, as well as Counterclaims V, VI, and VII in which El Matador seeks cancellation of Purepecha's U.S. Trademark Registrations. For the following reasons, the Court grants in part and denies in part El Matador's summary judgment motion and grants in part and denies in part Purepecha's partial summary judgment motion. The Court dismisses - withprejudice - Counts V-VII of the Complaint and Counterclaims XI-XIX and XXII-XXX from this lawsuit.
More specifically, the Court denies El Matador's summary judgment motion as to Purepecha's infringement claim in Count I of the Complaint. Furthermore, the Court denies El Matador's motion on Count II in which Purepecha alleges an unfair competition claim under both 15 U.S.C. § 1125(a) and common law because El Matador fails to make any arguments in support of its motion as to this claim. Likewise, although El Matador moved for summary judgment as to Purpecha's trademark dilution claim under 15 U.S.C. § 1125(c) in Count III, neither party addresses this claim, including whether the marks at issue are "truly prominent and renowned" as required by the statute. See Ty Inc. v. Perryman, 306 F.3d 509, 511 (7th Cir. 2002). As such, the Court denies El Matador's summary judgment motion as to Count III. The Court also denies El Matador's motion as to Purepecha's IUDTPA and ICFA claims alleged in Counts IV and VIII. The Court grants El Matador's summary judgment motion as to Purepecha's tortious interference of contract claims in Counts V, VI, and VII and dismisses these claims from this lawsuit.
Further, the Court denies El Matador's and Purepecha's summary judgment motions as to El Matador's Counterclaim V for cancellation of U.S. Trademark Registration No. 3,942,992 based on fraud and El Matador's motion as to Counterclaim VI for cancellation of U.S. Trademark Registration No. 3,942,992 based on 15 U.S.C. § 1052(d). Similarly, the Court denies both El Matador's and Purepecha's motions concerning Counterclaim VII for cancellation of U.S. Trademark Registration No. 3,436,830 based on abandonment.
Because El Matador does not oppose Purpecha's motion as to El Matador's tortious interference with contract claims as alleged in Counterclaims XVII-IX and XXII-XXX, the Court dismisses these claims from this lawsuit. The Court grants Purepecha's motion as to El Matador's tortious interference with contract claims alleged in Counterclaims XII through XVI, but denies Purepecha's motion as to Counterclaims XX and XXI. The Court also denies Purepecha's motion as to El Matador's defamation Counterclaims IX and X, but grants Purpecha's motion as to El Matador's Texas common law breach of fiduciary duty claim against Counter-Defendant Everardo Mejia as alleged in Counterclaim XI. Last, the Court denies Purepecha's motion for partial summary judgment as to El Matador's ICFA and IUDTPA claims in Counterclaims III and IV.
Local Rule 56.1 "is designed, in part, to aid the district court, 'which does not have the advantage of the parties' familiarity with the record and often cannot afford to spend the time combing the record to locate the relevant information,' in determining whether a trial is necessary." Delapaz v. Richardson, 634 F.3d 895, 899 (7th Cir. 2011) (citation omitted). Local Rule 56.1(a)(3) requires the moving party to provide "a statement of material facts as to which the moving party contends there is no genuine issue." Cracco v. Vitran Exp., Inc., 559 F.3d 625, 632 (7th Cir. 2009). "The opposing party is required to file 'a response to each numbered paragraph in the moving party's statement, including, in the case of any disagreement, specific references to the affidavits, parts of the record, and other supporting materials relied upon." Id. (citing N.D. Ill. R. 56.1(b)(3)(B)). Also, Local Rule 56.1(b)(3)(C) requires the nonmoving partyto present a separate statement of additional facts that requires the denial of summary judgment because the Court will not consider any additional facts proposed in the nonmoving party's Local Rule 56.1(b)(3)(B) Response. See Ciomber v. Cooperative Plus, Inc., 527 F.3d 635, 643-44 (7th Cir. 2008); Cichon v. Exelon Generation Co., L.L.C., 401 F.3d 803, 809 (7th Cir. 2005).
As the Seventh Circuit recently explained, Sojka v. Bovis Lend Lease, Inc., 686 F.3d 394, 398 (7th Cir. 2012). As such, Local Rule 56.1 statements should identify the relevant admissible evidence supporting the material facts, but should not make factual or legal arguments. See Cady v. Sheahan, 467 F.3d 1057, 1060 (7th Cir. 2006) (). Moreover, the requirements for responses under Local Rule 56.1 are "not satisfied by evasive denials that do not fairly meet the substance of the material facts asserted." Bordelon v. Chicago Sch. Reform Bd. of Trs., 233 F.3d 524, 528 (7th Cir. 2000). The Court may also disregard statements and responses that do not properly cite to the record. See Cady, 467 F.3d at 1060; Cichon, 401 F.3d at 809-10. Finally, the Court has broad discretion to enforce Local Rule 56.1. See Benuzzi v. Board of Educ. of City of Chicago, 647 F.3d 652, 655 (7th Cir. 2011).
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