Paletas Trademark Case Gives Court a Bellyful

     WASHINGTON (CN) – A federal judge gave both sides some relief in a complex dispute over “Mexican-style” ice cream bars known as paletas.
     Mexico-based Productos Lacteos Tocumbo initiated the dispute in 2011 with a petition to cancel a trademark used by California-based company Paleteria La Michoacana Inc. and its successor, Paleteria La Michoacana LLC, to sell paletas and other ice cream products in the United States.
     This particular trademark uses the word “Michoacan,” a state in Mexico that is home to a sizeable community of the Purepecha Indian people. The trademark also features an “Indian Girl” or “La Indita” design based on the traditional Purepecha women’s dress, consisting of a white blouse, a pink skirt and sandals.
     Finding a possibility of confusion between Paleteria’s trademark and several of the Mexican entity’s trademarks, the Trademark Trial and Appeal Board canceled the former’s trademark.
     Paleteria, whose name is abbreviated in the latest court decision as PLM, contested that decision and sought to cancel one of its opponent’s registered trademarks.
     The Mexican company, which the court refers to as Prolacto, then brought numerous counterclaims against PLM under different parts of the Lanham (Trademark) Act. Prolacto also sought to cancel two PLM trademarks for fraud and abandonment.
     Both parties then asked a federal judge in Washington to grant them summary judgment almost every claim and counterclaim.
     U.S. District Judge Rudolph Contreras found it possible Thursday to “resolve a number of issues at this stage because no dispute of material fact exists.”
     “There exist, however, numerous other issues that cannot be dealt with at summary judgment because contested factual questions remain for a fact-finder to decide,” he added.
     Summary judgment is not available to PLM over its canceled Indian Girl trademark, the court found.
     “Here, PLM presents for the first time at the summary judgment stage testimonial and documentary evidence suggesting that it used a version of the Indian Girl design since at least the mid-1990s, which potentially would predate Prolacto use of similar marks in the United States,” Contreras wrote. “PLM argues that it should be permitted to ‘tack’ these earlier uses to establish priority for its registered La Indita Michoacana mark and design over PROLACTO use of similar marks.”
     It is up to a jury, however, to decide the issue of tacking, according to the ruling.
     “Because the evidence does not compel only one result, the court concludes that summary judgment is inappropriate as to both parties on PLM’s Count I for reversal of the TTAB decision cancelling its registered mark,” Contreras wrote.
     Prolacto received a mixed bag on its counterclaims concerning trademark infringement and false advertising.
     The Mexican company had relied primarily on the “famous mark doctrine” to establish nationwide priority of its trademarks over those of PLM, but Contreras said Prolacto failed to sufficiently demonstrate “the required fame of its trademarks within the United States in order for the doctrine to be applied.”
     “Although Prolacto’s marks may be recognized by some in the United States as
     associated with high-quality paletas and other frozen ice cream treats, there simply is insufficient evidence in the record demonstrating the extent of that fame nationwide – particularly given that Prolacto only sells goods in three states,” he wrote. “Without such evidence, no reasonable jury could conclude that consumers are familiar enough with Prolacto’s marks for the famous mark doctrine to apply on a national scale.”
     Contreras added: “Because Prolacto fails to demonstrate substantial familiarity with its marks within any relevant American market such that the famous mark doctrine might apply, its trademark infringement claim, like that of the thousands of plaintiffs before it, is constrained by the territoriality doctrine, and as such, the actual commercial use of the marks within the United States.”
     PLM meanwhile persuaded the court to limit Prolacto’s trademark-infringement counterclaim to the Houston, Texas, market. Contreras also granted Prolacto summary judgment on its counterclaim for false-advertising based on falsity, deceptiveness and interstate commerce.

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