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Jolie Design & Decor, Inc. v. BB Frosch, LLC

United States District Court, E.D. Louisiana

December 27, 2017

JOLIE DESIGN & DÉCOR, INC. ET AL
v.
BB FROSCH, LLC ET AL

         SECTION: “I” (4)

          ORDER AND REASONS

          KAREN WELLS ROBY CHIEF UNITED STATES MAGISTRATE JUDGE

         Before the Court is Plaintiffs' Motion for Contempt (R. Doc. 25) seeking an order for sanctions and attorney's fees for defendants' failure to comply with the Court's earlier order. R. Doc. 21. The motion is opposed. R. Doc. 27. Oral argument was heard on December 6, 2017. For the following reasons the motion is GRANTED IN PART and DENIED IN PART.

         I. Background

         The instant action alleges trademark infringement, unfair competition, and false designation of origin under the Lanham Act, 15 U.S.C. § 1051 et seq., injury to business reputation and trademark dilution under La. Rev. Stat. § 51:233.1, and unjust enrichment. R. Doc. 1, p. 1. Named as defendants are BB Frosch, LLC (“BB Frosch”), the JKKJKK Trust (“the Trust”), Jason Smith, and Kristin Smith.

         Plaintiffs allege that Annie Sloan created Chalk Paint, a decorative paint bearing a velvety chalk matte finish, and in 2003 the CHALK PAINT trademark was adopted. Annie Sloan Interiors, Ltd. (“Annie Sloan”) began selling the paint throughout the United States and elsewhere. Plaintiffs state that the trademark has been used continuously and with substantial exclusivity in interstate commerce since 2004. In addition, Plaintiffs contend that Jolie Design & Décor, Inc. (“Jolie Design”) has undertaken substantial efforts and marketing expenditures to reach consumers, develop good will, and build brand association throughout the U.S. R. Doc. 1, p. 4.

         Plaintiffs argue that CHALK PAINT trademark has acquired distinctiveness and represents goodwill that belongs to Annie Sloan. Further, Plaintiffs state that on October 30, 2012, the CHALK PAINT character mark was registered with the U.S. Patent and Trademark Office and on April 23, 2013, the CHALK PAINT mark in a stylized form was registered with the U.S. Patent and Trademark Office. Id. at p. 5.

         Plaintiffs allege that BB Frosch sells a powder to use with decorative paints on two different websites and the powder uses the designation CHALK PAINT POWDER, such that it causes confusion with the CHALK PAINT brand decorative paint and dilutes the quality of the CHALK PAINT trademark. Id. at pp. 5-6. On March 23, 2015, the Defendants were sent a letter to cease and desist using the CHALK PAINT trademark. Id. at p. 6. Plaintiffs contend that BB Frosch operates under the control and direction of the Trust, Jason Smith, and Kristin Smith, who direct, control, authorize, and actively participate in the infringing acts in this case and took actions that contributed to the alleged unlawful activities in the State of Louisiana. Id. at 7-8.

         The relief sought in this case is for an injunction against the use of the CHALK PAINT trademark by the Defendants and all their affiliations, a monetary award for the Defendants' profits for the unauthorized use of the CHALK PAINT trademark, costs and attorney's fees, and any further relief that may be just and proper, except for Plaintiffs' damages which they are not seeking. R. Doc. 1, p. 12.

         The instant litigation is currently in a posture of determining whether the Court has personal jurisdiction over the Defendants. Jurisdictional discovery in this case has been on-going since a motion to dismiss for lack of jurisdiction was filed on July 12, 2017. R. Doc. 9.

         On September 27, 2017, a discovery conference was held in the case in which counsel for the Defendants agreed to get his clients to sign their responses to Plaintiffs' Jurisdictional Interrogatories. Defense counsel also agreed to produce an affidavit from his client admitting that the allegedly infringing CHALK PAINT mark exists on all the products that were sent to Louisiana. R. Doc. 21. The Court memorialized those agreements from the discovery conference in an order which states that defense counsel “agreed to get his client to sign Plaintiffs' First Jurisdictional Interrogatories, ” and “for the purposes of the Louisiana Sales document produced in Jurisdictional Interrogatory No. 1, Defense Counsel agreed to produce an Affidavit of his client, admitting that the allegedly infringing CHALK PAINT mark exists on all of the products that were sent to Louisiana.” R. Doc. 21, p. 1. The Court ordered that “defense counsel shall have his client sign their responses to Plaintiffs' Jurisdictional Interrogatories and supplement their discovery responses” no later than October 12, 2017. R. Doc. 21, p. 3.

         Plaintiffs' instant motion states that they have not received a signed copy of an affidavit stating that the CHALK PAINT mark existed on all products that were sent to Louisiana. R. Doc. 25-1, p. 4. The motion also indicates that neither the jurisdictional interrogatories nor the affidavit have been signed. R. Docs. 25-2, 3, 4, 5.

         The Plaintiffs argue that because the Defendants have failed to comply with the Court's order, sanctions as well as a finding of civil contempt is appropriate. Plaintiffs also seek attorney's fees and costs, and for the Court to establish facts supporting personal jurisdiction. R. Doc. 25-1, pp. 5, 6.

         Defendants filed an opposition to the motion. R. Doc. 27. In the opposition Defendants state they do not “deny their failure” to abide by the Court's earlier order and they also admit and do not deny that the Court's order existed, which required the Defendants to sign their responses to Plaintiffs' Initial Jurisdictional Inquiries as well as produce a signed affidavit admitting that the CHALK PAINT mark existed on all of Defendants' products that were sent to Louisiana. Id. at p. I. Defendants argue that sanctions and attorney's fees should not be awarded because the Defendants lack sophistication with regards to the legal process and were overwhelmed by the financial burden ...


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