United States District Court, E.D. Louisiana
FRANK W. BALLERO
727 INC., ET AL.
ORDER AND REASONS
the Court are two motions: Defendants 727, Incorporated and
721 Bourbon, Inc.'s “Motion to Dismiss Amended
Complaint” (Rec. Doc. 24) and Defendant Crescent Crown
Distributing, LLC's “Motion to Dismiss” (Rec.
Doc. 30). Plaintiff timely filed responses to both motions.
Rec. Docs. 32-33. Defendants then requested, and were
granted, leave to file reply memoranda. Rec. Docs. 36, 40.
For the reasons discussed below, IT IS ORDERED that the
motions to dismiss (Rec. Docs. 24, 30) are DENIED WITHOUT
FACTUAL BACKGROUND AND PROCEDURAL HISTORY
previously discussed, this case arises out of the sale of a
red ale beer known as Pirate's Blood. Rec. Doc. 1 at
¶ 5. Frank W. Ballero (“Plaintiff”) claims
that he invented and began brewing the beer in 2009.
Id. He also developed a “logo and mark”
for the beer. Id. The beer was subsequently sold by
various bars, including the Funky Pirate located at 727
Bourbon Street, New Orleans, Louisiana 70116 and owned by
727, Incorporated (“Defendant 727”) and Tropical
Isle Bourbon located at 721 Bourbon Street, New Orleans,
Louisiana 70116 and owned by 721 Bourbon, Incorporated
(“Defendant 721”). Id.; see
also Rec. Doc. 8-1 at 1 n.1.
March of 2011, Plaintiff stopped producing Pirate's
Blood. Rec. Doc. 1 at ¶ 6. Yet, the Funky Pirate and
Tropical Isle Bourbon continued to sell a beer called
“Pirate's Blood, ” “use the same exact
tap handle bearing [Plaintiff's] Pirate's Blood logo
and name, ” and tell customers that the beer “is
locally brewed and sold exclusively” at these two bars.
to Plaintiff, the beer “passing off as Pirate's
Blood” is sold and distributed by Defendant Crescent
Crown Distributing, LLC (“Defendant Crescent”).
Id. at ¶ 7. Plaintiff maintains that Defendant
Crescent regularly visits the Funky Pirate and Tropical Isle
Bourbon “to maintain and clean the equipment associated
with the product it has sold, i.e. the beer tap lines,
” and therefore is “complicit in the
on November 4, 2016, Plaintiff filed suit requesting
injunctive and monetary relief pursuant to § 43(a) of
the Lanham Act, 15 U.S.C. §§ 1125(a), 1116, 1117,
and the Louisiana Unfair Trade Practices Act
(“LUTPA”), Louisiana Revised Statute §
51:1401-1428. Rec. Doc. 1 at ¶¶ 12, 15.
response to Defendants' original motions to dismiss (Rec.
Docs. 8, 15), Plaintiff filed an amended complaint on
February 2, 2017 asserting that he “met with various
persons and companies in 2012, 2013, 2014, and 2015 regarding
the production and sale of Pirate's Blood” and that
he “fully intended/intends to continue brewing and
selling Pirate's Blood under its trademarked name and
logo” (Rec. Doc. 21). Before the Court could rule on
the original motions to dismiss, Defendants 727 and 721 filed
a second motion to dismiss in response to the amended
complaint. Rec. Doc. 24. Nonetheless, Defendants'
original motions were denied without prejudice on February
22, 2017. Rec. Doc. 29. The Court specifically stated that
“Plaintiff's amended complaint appears to allege
that he intended to continue to use and/or resume using his
mark and therefore alleges that he did not abandon the mark.
Arguments to the contrary will be considered in conjunction
with the pending motion to dismiss filed by Defendants 721
and 727 . . . .” Id. at 6. Defendant Crescent
then filed its second motion to dismiss. Rec. Doc. 30.
THE PARTIES' CONTENTIONS
did in their original motions, Defendants 727 and 721 argue
that “Plaintiff ceased using the ‘Pirate's
Blood' mark nearly six (6) years ago with no intent to
resume use of the mark within the reasonably foreseeable
future; and, therefore, abandoned the mark.” Rec. Doc.
24 at 1. Because Plaintiff's claims for unfair
competition under the LUTPA and for common law trademark
infringement, false designation of origin, and unfair
competition all require Plaintiff to own a protectable
trademark, Defendants maintain that Plaintiff failed to state
a claim upon which relief can be granted. Rec. Doc. 24-1 at
1-2. Defendant Crescent essentially adopts the arguments made
by its co-Defendants. Rec. Doc. 30-1 at 1.
responds that “he intended and continues to use the
Pirate's Blood formula with its associated logo, ”
as evidenced by his negotiations in 2012, 2013, 2014, and
2015 with individuals and businesses “regarding the
contract brewing of Pirate's Blood.” Rec. Doc. 33
LAW AND ANALYSIS
Rule 12(b)(6) of the Federal Rules of Civil Procedure, a
party can move to dismiss a complaint for failure to state a
claim upon which relief can be granted. Fed.R.Civ.P.
12(b)(6); see also Bell Atl. Corp. v. Twombly, 550
U.S. 544 (2007). Such motions are viewed with disfavor and
rarely granted. Lowrey v. Tex. A & M Univ. Sys.,
117 F.3d 242, 247 (5th Cir. 1997) (quoting Kaiser
Aluminum & Chem. Sales, Inc. v. Avondale Shipyards,
Inc., 677 F.2d 1045, 1050 (5th Cir. 1982)). Nonetheless,
“[t]o survive a motion to dismiss, a complaint must
contain sufficient factual matter, accepted as true, to state
a claim to relief that is plausible on its face.”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
(internal quotation marks omitted). A claim is facially
plausible “when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged.”
Id. Further, when reviewing a motion to dismiss,
courts must accept all well-pleaded facts as true and view
them in the light most favorable to the non-moving party.
See Baker v. Putnal, 75 F.3d 190, 196 (5th Cir.
to Defendants, to file a claim for federal and common law
trademark infringement, false designation of origin, federal
unfair competition, and unfair competition under the LUTPA,
Plaintiff must have a valid protectable trademark. Rec. Doc.
24-1 at 3-4 (citing Am. Rice, Inc. v. Producers Rice
Mill,Inc., 518 F.3d 321, 329 (5th Cir. 2008)
(“To recover on a claim of trademark infringement, a
plaintiff must first show that the mark is legally
protectable and must then establish infringement by showing a
likelihood of confusion. To be protectable, a mark must be
distinctive, either inherently or by achieving secondary
meaning in the mind of the public”) (internal citations
omitted); Action Ink, Inc. v. Anheuser-Busch, Inc.,
959 F.Supp.2d 934, 948 (E.D. La. 2013), aff'd sub
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