Best Western Intl v. Traditional Partners, et al

Filing 18

ORDER re: 17 Motion for Order to Show Cause filed by Best Western International Incorporated. IT IS ORDERED that Plaintiff shall file a supplement to the motion within 30 days. If Plaintiff fails to file the supplement, the motion will be denied. (See attached Order for details). Signed by Senior Judge James A Teilborg on 1/31/2014. (TLB)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE DISTRICT OF ARIZONA

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Plaintiff,
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vs.
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Traditional Partners of Oklahoma, Inc;)
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Prakash Mehta,
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Defendants.
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Best Western International, Inc.,

No. CV 04-2406-PHX-JAT
ORDER

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Pending before the Court is Plaintiff’s motion for this Court to hold a show cause

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hearing why Defendants should not be held in contempt. This case was filed in 2004 based

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on Defendants allegedly wrongfully using Plaintiff’s trademarks. Default was entered

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against Defendants in 2005, which included an injunction requiring Defendants to quit using

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Plaintiff’s marks.

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In furtherance of the Motion, Plaintiff alleges that it registered the default judgment

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and injunction in Oklahoma in 2008 and sent notice of that registration to Defendants.

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Plaintiff also alleges that in September of 2013, Plaintiff sent a representative to the property

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at issue and discovered that Plaintiff’s marks were still being used. Plaintiff now seeks

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$1,779,123.90 (or $652.65/day) in damages for Defendants’ alleged on-going use of the

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marks between the entry of the injunction and the filing of the currently pending motion.

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Before the Court will set the requested hearing, Plaintiff shall file a supplemental brief
addressing each of the following issues:

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1)

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Whether Plaintiff has any evidence that the marks were in use between 2005
and 2013; and

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2)

Whether laches bars recovery in this case.

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With respect to the second issue, for on-going Lanham Act violations, laches

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presumptively bars recovery for uses of the mark outside the statute of limitations. See

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Jarrow Formulas, Inc., v. Nutrition Now, Inc., 304 F.3d 829, 837 (9th Cir. 2002). Here,

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Plaintiff has offered no evidence that it attempt to enforce the injunction (other than

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registering it almost 3 years after obtaining it) for approximately 8 years. The Court is

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inclined to determine that enforcement of the injunction, under these facts, is barred by

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laches. See Derek and Constance Lee Corp. v. Kim Seng Co., 467 Fed.Appx. 696, **1 (9th

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Cir. 2012) (unpublished decision) (affirming district court’s denial of contempt sanctions for

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defendant violating an injunction when plaintiff took no action for one year and five

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months.).

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Accordingly,

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IT IS ORDERED that Plaintiff shall file a supplement to the motion within 30 days.

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If Plaintiff fails to file the supplement, the motion will be denied.
DATED this 31st day of January, 2014.

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