United States District Court, C.D. California
Honorable CHRISTINA A. SNYDER
CIVIL MINUTES - GENERAL
(IN CHAMBERS) - DEFENDANTS' MOTION TO CHANGE VENUE (Dkt.
42, filed March 21, 2017)
Court finds this motion appropriate for decision without oral
argument. See Fed. R. Civ. P. 78; C.D. Cal. L.R.
7-15. Accordingly, the hearing date of April 24, 2017 is
vacated, and the matter is hereby taken under submission.
August 25, 2016, plaintiff Lodestar Anstalt
(“Lodestar”) filed a complaint in against
defendants Bacardi & Company Limited (“Bacardi
& Co.”), Bacardi U.S.A., Inc. (“Bacardi
USA”), and Bacardi Limited (collectively,
“Bacardi”). Dkt. 1. (“Compl.”).
Lodestar alleges four claims: (1) trademark infringement in
violation of 15 U.S.C. § 1114, (2) unfair competition in
violation of 15 U.S.C. §1125, (3) unfair competition
under Cal. Civ. Code §§ 17200 et seq., and
(4) unfair competition in violation of California common law.
March 21, 2017, Bacardi filed a motion to transfer this
action to the Southern District of Florida pursuant to 28
U.S.C. § 1404(a). Dkt. 42 (“Motion”).
Lodestar filed its opposition on April 3, 2017, dkt. 46
(“Opp'n”), and Bacardi filed its reply on
April 10, 2017, dkt. 47 (“Reply”).
carefully considered the parties' arguments, the Court
finds and concludes as follows.
STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA
alleges the following facts.
is a Lichtenstein company with its principal place of
business in Cyprus. Compl. ¶ 1. Lodestar owns U.S.
Trademark Registration No. 4, 033, 238 for UNTAMED and design
in International Classes 32 and 33 (the “'238
Mark”). Id. ¶ 8. This registration has a
priority date of July 16, 2009 and a registration date of
October 4, 2011. Id. Lodestar also owns U.S.
Trademark Registration No. 4, 033, 239 for UNTAMED in
International Classes 32 and 33 (the “'239
Mark”), which also has a priority date of July 16, 2009
and a registration date of October 4, 2011. Id.
¶ 9. The '238 and '239 Marks are referred to
collectively as the “UNTAMED marks.” Id.
2009, Lodestar has used the UNTAMED marks for its Irish
whisky, which has been imported and distributed throughout
the United States. Id. ¶¶ 10, 11. Since
2014, Lodestar has used the UNTAMED marks on rum products in
the United States. Id. ¶ 12.
Limited is located in Bermuda and is the parent company of
subsidiaries Bacardi & Co. and Bacardi USA. Id.
¶ 4. Bacardi & Co. is a Lichtenstein company with
its principal place of business in the Bahamas. Id.
¶ 2. Bacardi USA is a corporation organized under
Delaware laws and maintains its principal place of business
in Miami, Florida. Id. ¶ 3. Bacardi Limited
purports to be “the largest privately held spirits
company in the world.” Id. ¶ 15. Bacardi
USA is the import, sales, and marketing arm of Bacardi
Limited in the United States. Id. ¶ 3.
to Lodestar, Bacardi infringed Lodestar's
“trademarks, goodwill, and entire back story, by
initiating its own substantial marketing campaign featuring
almost the identical mark, UNTAMEABLE, on the same or related
alcohol products as Lodestar uses its UNTAMED marks, and with
the very marketing and branding themes as Lodestar had
used.” Id. ¶ 20. Lodestar avers that
Bacardi Limited, with actual and constructive notice, filed a
trademark application for the mark BACARDI UNTAMEABLE in
International Class 33 for “alcoholic beverages except
beers” and began a substantial marketing campaign using
the mark. Id. ¶¶ 22-23. Lodestar further
alleges that Bacardi's use of the mark BACARDI UNTAMEABLE
to promote rum products is likely to result in consumer
confusion and therefore constitutes trademark infringement
and unfair competition. Id. ¶ 20.