Niagara Bottling, LLC v. CC1 Ltd.

381 F. Supp. 3d 175 (2019) United States District Court, D. Puerto Rico 2019-05-14

civil trademark infringement action under Lanham Act ยง 43(a) joined with a claim for breach of a prior settlement agreement; motion to dismiss under Rule 12(b)(6) denied (result: claimant-won)

Facts

  1. 2 Enforceable source-identifying mark or trade dress satisfied pleaded
    Plaintiff is the owner of federal trademark registrations for Eco-Air Bottle word mark in International Class 32 and Eco-Air Package work mark in International Cass 16 ("collectively "Eco-Air Marks"); along with common law rights ("Composite Marks").
  2. 2 Enforceable source-identifying mark or trade dress satisfied pleaded
    However, if the mark is registered, the first prong of a trademark infringement case is then satisfied.
  3. 2 Enforceable source-identifying mark or trade dress satisfied pleaded
    In the instant case, the Court finds the first prong has been satisfied by the federal trademark registration that entitles Plaintiff to the trademark rights.
  4. 2 Enforceable source-identifying mark or trade dress satisfied pleaded
    Moreover, Plaintiff complies with registering the trademarks before the United States Patent Trademark Office.
  5. 3 Likely consumer confusion about source or sponsorship satisfied pleaded
    Plaintiff provides a description and image of their Eco-Air Marks and alleges Defendant "adopted a design whose dominant features and overall appearance are practically identical ... [the] mark is also placed inside a white circle with half of the circle outlines in color blue with a green leaf concavely position at the bottom of the circle."
  6. 3 Likely consumer confusion about source or sponsorship satisfied pleaded
    In the case at bar, both parties have similarities of services and customers because they target the general public in Puerto Rico and sell their product in similar ways; stores, online, among others.
  7. 3 Likely consumer confusion about source or sponsorship satisfied pleaded
    In the instant case, Plaintiff has not provided the Court with any facts or allegations that can be construed as confusion.
  8. 3 Likely consumer confusion about source or sponsorship satisfied pleaded
    Accordingly, the Court finds that Plaintiff satisfies the two prongs to establish trademark infringement.