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V.V.V. & Sons Edible Oils Ltd. v. Meenakshi Overseas LLC

United States District Court, E.D. California

May 4, 2018

V.V.V. & SONS EDIBLE OILS LIMITED, a public limited company, Plaintiff,
v.
MEENAKSHI OVERSEAS LLC, a New Jersey limited liability company, Defendant.

          ORDER

          Troy L. Nunley, United States District Judge.

         This matter is before the Court pursuant to Defendant Meenakshi Overseas LLC's (“Defendant”) Motion to Dismiss, Motion for Rule 11 Sanctions, and its request for attorneys' fees and costs. (ECF Nos. 40 & 43.) Plaintiff V.V.V. & Sons Edible Oils Limited (“Plaintiff”) does not oppose Defendant's Motion to Dismiss, but it opposes Defendant's request for attorneys' fees and costs. (ECF No. 47.) Plaintiff also opposes Defendant's Motion for Rule 11 Sanctions and requests sanctions and attorney's fees against Defendant. (ECF No. 46.) For the reasons set forth below, Defendant's Motion to Dismiss and request for attorneys' fees are GRANTED, Defendant's Motion for Rule 11 Sanctions is DENIED, and Plaintiff's request for sanctions against Defendant and attorney's fees is DENIED.

         I. FACTUAL AND PROCEDURAL BACKGROUND

         The Court will be dismissing Plaintiff's claims so the Court will only describe facts relevant to the parties' request for attorneys' fees and Federal Rule of Civil Procedure 11 (“Rule 11”) sanctions below.

         Plaintiff is an Indian-based company who sells Indian food products throughout several countries, including the United States. (Compl., ECF No. 1 ¶ 4.) Plaintiff labels its products with the word IDHAYAM. (ECF No. 1 ¶ 4.) Defendant is a New Jersey-based company who also sells Indian food products with the mark IDHAYAM. (ECF No. 1 ¶¶ 5, 7.) Defendant has three IDHAYAM trademarks (“marks ‘654, ‘172, & ‘000”) registered with the United States Patent and Trademark Office (“USPTO”). (ECF No. 7-7 at 1-2; ECF No. 7-9 at 1-2; ECF No. 7-10 at 1- 2.)

         Since November 2009, Plaintiff has made six attempts to challenge ownership of the IDHAYAM mark:

1. On November 17, 2009, Plaintiff brought its first action against Defendant before the United States Trademark Trial and Appeal Board (“TTAB”) regarding mark ‘654. (ECF No. 7-3.) Plaintiff objected to Defendant's use of the IDHAYAM mark because it would likely cause confusion with Plaintiff's same mark. (ECF No. 7-3 at 3.) Plaintiff also argued Defendant was attempting to perpetrate a fraud upon the USPTO. (ECF No. 7-3 at 3.) On January 3, 2011, the TTAB issued a Final Order denying Plaintiff relief with prejudice for failure to respond to its inquiries, and Defendant received full rights to mark ‘654. (ECF No. 7-5 at 1.)
2. On July 31, 2012, Plaintiff tried to register IDHAYAM for “edible oils” with the USPTO (ECF No. 16-8 at 2, 6), but was refused on November 28, 2012, in lieu of mark ‘654. (ECF No. 16-9 at 2-4.) Plaintiff did not respond to TTAB's denial. (ECF No. 16-10 at 2.) Consequently, on May 29, 2013, the TTAB deemed Plaintiff's application abandoned. (ECF No. 16-10 at 2.)
3. On July 7, 2014, Plaintiff again tried to register IDHAYAM with the USPTO, this time for “cooking oil.” (ECF No. 16-11 at 2-3.) On November 5, 2014, the TTAB again denied Plaintiff's application in lieu of Defendant's pre-existing IDHAYAM marks. (ECF No. 16-12.)
4. Based on this refusal, Plaintiff brought a second action on December 23, 2014, before the TTAB regarding the ownership and entitlement of the trademark IDHAYAM for cooking oil, namely edible “gingelly oil.” (ECF No. 16-13 at 2-10.) On July 15, 2015, the TTAB dismissed, with prejudice, Plaintiff's second action, in part, finding that Plaintiff's claims in this proceeding were barred by res judicata as against mark ‘654. (ECF No. 16-17 at 2- 8.) The TTAB, however, denied Defendant's motion for summary judgment as to marks ‘172 and ‘000. (ECF No. 16-17 at 7.)
5. On December 23, 2014, the same day Plaintiff filed the second proceeding with the TTAB, Plaintiff filed the instant action with this Court, alleging standing based on a claim of entitlement to the mark IDHAYAM over Defendant. (ECF No. 1.) On February 14, 2017, this Court dismissed Plaintiff's complaint, with prejudice, “insofar as Plaintiff asserts claims against mark ‘654.” (ECF No. 26 at 1.) The Court found that the elements for res judicata were satisfied as to mark ‘654 because of the TTAB opposition proceedings. (ECF No. 26 at 12.) Thus, the Court granted with prejudice Defendant's Motion to Dismiss Plaintiff's claims as against mark ‘654. (ECF No. 26 at 12.)
6. On April 7, 2017, Plaintiff filed a Motion to Amend Complaint (“MTAC”). (ECF No. 31.) Plaintiff wanted to add a claim for declaratory judgment that the ‘654 mark is invalid based on fraud in its procurement. (ECF No. 31-2 at 2-3.) On August 18, 2017, this Court denied Plaintiff's MTAC, finding that allowing Plaintiff to add a fraud in the procurement claim would be frivolous given that Plaintiff's claims as against mark ‘654 were barred by res judicata because Plaintiff already alleged fraud in the TTAB opposition proceeding in 2009. (See ECF No. 38 at 2.)

         Defendant urges this Court to impose Rule 11 sanctions on Plaintiff and order Plaintiff to pay its legal fees. (ECF No. 43.) Defendant emailed Plaintiff's counsel a Safe Harbor letter and Rule 11 motion for sanctions more than twenty-one days before filing its Motion for Rule 11 Sanctions. (ECF No. 43-2 at 40- 56.) Plaintiff opposes Defendant's Motion for Rule 11 Sanctions and urges this Court to impose sanctions on Defendant and order Defendant to pay its attorney's fees. (ECF No. 46.)

         II. ...


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