United States District Court, E.D. Louisiana
JOLIE DESIGN & DÉCOR, INC. ET AL
BB FROSCH, LLC ET AL
ORDER AND REASONS
WELLS ROBY CHIEF UNITED STATES MAGISTRATE JUDGE
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.
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.
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.
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.
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.
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.
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.
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,
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.
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.
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 ...