United States District Court, W.D. Louisiana, Monroe Division
LUV N' CARE, LTD.
LAURAIN, ET AL.
H.L. PEREZ-MONTES, MAG. JUDGE.
RULING ON MOTION FOR PARTIAL SUMMARY JUDGMENT ON
EZPZ'S TRADEMARK INFRINGEMENT AND FALSE DESIGNATION OF
TERRYA. DOUGHTY, UNITED STATES DISTRICT JUDGE.
before the Court is Luv N' Care, Ltd.'s
(“LNC”) Motion for Partial Summary Judgment
seeking dismissal of Eazy-PZ, LLC's (“EZPZ”)
trademark infringement and false designation of origin claims
[Doc. No. 193]. EZPZ has filed an opposition [Doc. No. 201],
and LNC has filed a Reply [Doc. No. 207]. The matter is fully
briefed. The Court is now prepared to rule.
FACTUAL AND PROCEDURAL BACKGROUND
EZPZ both sell a silicone feeding mat for young children that
features an integrated bowl or partitioned plate incorporated
with a placemat. LNC initiated this litigation on June 3,
2016, by filing a Complaint for Unfair Competition and
Declaratory Judgment [Doc. No. 1] against Defendants Lindsey
Laurain and EZPZ, seeking an injunction and
damages for alleged acts of unfair competition by EZPZ. LNC
also requested a declaratory judgment that LNC is not
violating any valid existing intellectual property right of
filed responsive pleadings alleging that LNC had infringed on
its patents, violated 15 U.S.C. § 1114 and 15 U.S.C.
§ 1125(a), and unfairly competed with EZPZ in violation
of state and common law. [Doc. No. 27]. EZPZ requested
monetary damages and a permanent injunction against LNC.
[Doc. No. 27].
answered EZPZ's counterclaim and asserted various
affirmative defenses. [Doc. No. 33]. EZPZ, which has the
registered trademark HAPPY MAT, amended its counterclaim to
assert claims against LNC for trademark infringement and
false designation of origin, in connection with LNC's use
of the HAPPY SILICONE FEEDING MAT mark [Doc. No. 40, Counts
IV and V, ¶¶ 91-112]. LNC answered, denying those
claims. [Doc. No. 45].
filed the pending Motion for Partial Summary [Doc. No. 193]
seeking dismissal of the trademark infringement and false
designation of origin claims asserted by EZPZ. LNC contends
that the only occasion on which it advertised an integrated
dinnerware and placemat using the name HAPPY SILICONE FEEDING
MAT was in an International Catalog at the 2016 Kind Jugend
Trade Show in Cologne, Germany; that it has never advertised,
promoted, marketed, packaged, used, offered for sale, or sold
any product in the United States market using the name
“HAPPY SILICONE FEEDING MAT”; and, therefore,
that EZPZ cannot establish that LNC infringed EZPZ's
alleged United States trademark or created any effect on
United States Commerce-which are necessary predicates as a
matter of law to EZPZ's claims.
responds that LNC is not entitled to partial summary judgment
(1) because discovery is not complete, and, (2) because
LNC's conduct in using HAPPY SILICONE FEEDING MAT to
describe its products in its catalogue that was distributed
at least at the trade show in Cologne, Germany, infringed on
its registered HAPPY MAT trademark, which had an effect on
United States commerce. EZPZ further responds that it does
not oppose dismissal of its claims without prejudice with
each party bearing its own fees and costs, and, it requests
that this Court convert this motion to a motion for voluntary
dismissal under Federal Rule of Civil Procedure 41.
replies that EZPZ's claims are invalid as a matter of law
and should be dismissed with prejudice. LNC further argues
that EZPZ should not permitted to avoid dismissal with
prejudice by its last-minute offer to dismiss without
prejudice under Rule 41, since EZPZ has not filed a motion to
voluntarily dismiss these claims, and dismissal without
prejudice should be refused when it is sought to avoid an
adverse result on a pending motion.
LAW AND ANALYSIS
Standard of Review
Federal Rule of Civil Procedure 56(a), “[a] party may
move for summary judgment, identifying each claim or
defense--or the part of each claim or defense--on which
summary judgment is sought. The court shall grant summary
judgment if the movant shows that there is no genuine dispute
as to any material fact and the movant is entitled to
judgment as a matter of law.” The moving party bears
the initial burden of informing the court of the basis for
its motion by identifying portions of the record which
highlight the absence of genuine issues of material fact.
Topalian v. Ehrmann, 954 F.2d 1125, 1132 (5th Cir.
1992); see also Fed. R. Civ. P. 56(c)(1) (AA party
asserting that a fact cannot be . . . disputed must support
the assertion by . . . citing to particular parts of
materials in the record . . .). A fact is
“material” if proof of its existence or
nonexistence would affect the outcome of the lawsuit under
applicable law in the case. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). A dispute about a
material fact is “genuine” if the evidence is
such that a reasonable fact finder could render a verdict for
the nonmoving party. Id.
moving party can meet the initial burden, the burden then
shifts to the nonmoving party to establish the existence of a
genuine issue of material fact for trial. Norman v.
Apache Corp., 19 F.3d 1017, 1023 (5th Cir. 1994). In
evaluating the evidence tendered by the parties, the Court
must accept the evidence of the nonmovant as credible and
draw all justifiable inferences in its favor.
Anderson, 477 U.S. at 255. However, “a party
cannot defeat summary judgment with conclusory allegations,
unsubstantiated assertions, or ...