Karoun Dairies, Inc. v. Karoun Dairies, Inc. et al

Filing 87

ORDER Denying (Doc. 68 ) Plaintiff's Motion for Reconsideration. Plaintiff's motion for reconsideration of the order denying its motion to dismiss the counterclaim is Denied. Signed by Judge M. James Lorenz on 12/6/2010. (srm)

-WVG Karoun Dairies, Inc. v. Karoun Dairies, Inc. et al

Doc. 87

1 2 3 4 5 6 7 8 9 10 11 KAROUN DAIRIES, INC., 12 13 v. 14 KAROUN DAIRIES, INC., et al. 15 16 17 18 Defendants; _________________________________ AND RELATED COUNTERCLAIM. Plaintiff, ) ) ) ) ) ) ) ) ) ) ) ) ) UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA Civil No. 08cv1521-L(WVG) ORDER DENYING PLAINTIFF'S MOTION TO RECONSIDER

This trademark infringement action arises from a family dispute over the right to use in

19 the United States a trademark previously established in the family business in Lebanon. Plaintiff 20 was first to use and register the mark in the United States and filed this infringement action 21 against Defendants. Defendants filed a counterclaim alleging that Plaintiff is the infringer and 22 requested cancellation of Plaintiff's registered mark. After the court denied Plaintiff's motions 23 for a preliminary injunction and to dismiss the counterclaim, Plaintiff filed a motion to 24 reconsider. Defendants filed an opposition. Plaintiff did not reply. For the reasons which 25 follow, Plaintiff's motion to reconsider is DENIED. 26 Plaintiff requests the court to reconsider the decision to deny the motion to dismiss

27 Defendants' second counterclaim for trademark cancellation. Plaintiff contends that the court's 28 finding that Defendants sufficiently alleged standing on the trademark cancellation claim is
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1 erroneous by arguing that the definition of "use in commerce," which applies to trademark 2 registration also applies to establish standing in trademark cancellation cases. (Pl's Mem. of 3 P.&A. at 4.) But Plaintiff presented no binding authority or persuasive argument why this is the 4 proper standard. Cunningham v. Laser Golf Corporation, 222 F.3d 943, 945 (Fed. Cir. 2000), 5 used the standard of standing derived directly from 15 U.S.C. Section 1064, which provides for 6 cancellation claims. Plaintiff has not cited any binding or persuasive authority why the 7 Cunnigham standard, which was relied upon by this court (Sept. 13, 2010 order at 13-14 & n.8), 8 is erroneous. Plaintiff's motion is therefore denied with respect to the standing argument. 9 Plaintiff also requests the court to reconsider the judicial estoppel ruling, finding Plaintiff

10 estopped from arguing that Defendants do not use the marks in the United States. Plaintiff 11 argues that the court misunderstood its prior representations regarding Defendants' use of the 12 marks in the United States and that the misunderstanding may have been invited by the 13 vagueness in Plaintiff's own allegation. (Pl's Mem. of P.&A. at 2, 7.) Plaintiff contends that 14 with the allegation that one of the Defendants "makes, distributes and sells the very same 15 products as [Plaintiff] in the United States" (id. at 7, quoting Second Am. Compl. ¶ 18), it 16 intended to say that the Defendant "purports to make, distribute and sell the same products in 17 Canada that Plaintiff sells in the United States" (Pl.'s Mem. of P.&A. at 7 (emphasis in the 18 original)). The two possible interpretations of the allegation are clearly inconsistent with each 19 other. Whether the allegation was merely vague or outright misleading, Plaintiff does not deny 20 that it benefitted when the court interpreted the allegation to mean that the Defendant was selling 21 the products in the United States, and ruled in Plaintiff's favor on Defendants' motion to dismiss 22 for lack of personal jurisdiction. Plaintiff does not propose to revisit that ruling. In light of the 23 foregoing, allowing Plaintiff to benefit again, but on the opposite interpretation of the same 24 allegation, would impose an unfair detriment on Defendants. See New Hampshire v. Maine, 532 25 U.S. 742, 750-51 (2001). Plaintiff's motion is therefore denied with respect to the judicial 26 estoppel argument. 27 / / / / / 28 / / / / /
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Based on the foregoing, Plaintiff's motion for reconsideration of the order denying its

2 motion to dismiss the counterclaim is DENIED. 3 4 5 DATED: December 6, 2010 6 7 8 9 COPY TO: M. James Lorenz United States District Court Judge IT IS SO ORDERED.

HON. WILLIAM V. GALLO 10 UNITED STATES MAGISTRATE JUDGE 11 ALL PARTIES/COUNSEL 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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