Prichard's Distillery, Inc. v. Sazerac Company, Inc. et al

Filing 75

MEMORANDUM OPINION OF THE COURT & ORDER re 31 MOTION for Leave to File Amended Answer & Counterclaims filed by Sazerac Company, Inc. Buffalo Trace Distillery, Inc. Signed by Magistrate Judge John S. Bryant on 3/30/16. (am)

UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF TENNESSEE
NASHVILLE DIVISION
PRICHARD’S DISTILLERY, INC.,

)
)
Plaintiff
)
)
v.
)
)
SAZERAC COMPANY, INC. d/b/a
)
A. SMITH BOWMAN DISTILLERY,
)
and BUFFALO TRACE DISTILLERY, INC., )
)
Defendants
)

No. 3:14-1646
Chief Judge Sharp/Bryant
Jury Demand

MEMORANDUM AND ORDER
Pending in this case is Defendants’ motion for leave to
file amended answer and counterclaims (Docket Entry No. 31).
Plaintiff has responded in opposition (Docket Entry No. 40) and
Defendants have filed a reply (Docket Entry No. 42).
For the reasons stated below, the undersigned Magistrate
Judge finds that Defendants’ motion for leave to file amended
answer and counterclaims should be granted.
STATEMENT OF THE CASE
In

this

trademark

infringement

action,

Plaintiff

Prichard’s Distillery, Inc. alleges that Defendants have infringed
its registered trademarks in the terms BENJAMIN PRICHARD’S DOUBLE
BARRELED BOURBON and DOUBLE BARRELED in connection with distilled
spirits. Defendants have filed an answer denying liability and
asserting counterclaims seeking a declaration that their use of the
term “double barrel” or “double barreled” and variations thereof
neither infringes Plaintiff’s alleged rights nor constitutes unfair

competition under the Lanham Act or Tennessee law. In addition,
Defendants seek a cancellation of Plaintiff’s registration for
DOUBLE BARRELED.
ANALYSIS
Rule 15(a)(2) of the Federal Rules of Civil Procedure
provides in general that the Court should freely give leave to
amend pleadings “when justice so requires.” Nevertheless, this
liberal

standard

for

amendments

of

pleadings

is

not

without

exceptions. A court may deny leave to amend where there is undue
delay in filing a motion for leave to amend and a lack of notice
and undue prejudice to the nonmoving party. Newburgh/Six Mile
Limited Partnership II v. Adlabs Films USA, Inc., 724 F. Supp. 2d
740, 751 (E.D. Mich. 2010) (citations omitted).
In support of their motion, Defendants argue that they
have been diligent in trying to meet the deadline of February 1,
2015, for amending pleadings, and that their failure to file their
motion prior to this deadline was caused at least in part by
Plaintiff’s failure to provide timely and complete responses to
discovery. Defendants also argue that Plaintiff will not suffer
undue prejudice. Defendants argue in addition that they are acting
in good faith and that their proposed amendment is not futile.
Specifically, Defendants argue that through discovery
they have learned that William Ray Jamieson, who is listed in the
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United States Patent and Trademark office records as the original
owner of the mark at issue, actually never owned any trademark
rights in the disputed mark. Mr. Jamieson allegedly later assigned
his rights in the disputed mark to Plaintiff. Defendants argue that
the Lanham Act provides that an application for registration filed
by a person or entity that is not the owner of the mark is void ab
initio. Defendants argue that this constitutes an additional ground
for their claim that Plaintiff’s registration of the disputed mark
should be cancelled.
In opposition, Plaintiff argues that Defendants are
guilty of undue delay because they knew or should have known from
the beginning that USPTO records showed Mr. Jamieson to be the
original applicant. Plaintiff further argues that they will suffer
undue prejudice if Defendants are allowed to amend at this late
date. Specifically, Plaintiff asserts that Mr. Jamieson may need to
be redeposed if this amendment is allowed.
Both parties have filed competing motions for summary
judgment which are now fully briefed and awaiting decision by the
Chief Judge. The record reflects that Senior District Judge Nixon
recently recused himself from this case and that the case has now
been assigned to the Chief Judge. Since this reassignment of the
case, no trial date has currently been scheduled.

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In consideration of the fact that the case is not
presently set for trial and mindful of the liberal standard for
granting amendments to pleadings, the undersigned Magistrate Judge
finds

that

Defendants’

motion

to

amend

their

answer

and

counterclaim should be granted. The undersigned also recommends
that the Chief Judge grant the parties a reasonable time to
complete any additional discovery necessitated by this amendment
and supplement their pending motions for summary judgment as
appropriate.
It is so ORDERED.
/s/ John S. Bryant
JOHN S. BRYANT
United States Magistrate Judge

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