Facts

Plaintiff Reynaldo Hernandez is a shoe salesman and trademark licensor who has marketed and sold boots since 1987. Plaintiff owns an international trademark for the mark "Botas Michel de Trabajo," and has sold work boots since at least 2006, and has marketed through Diana Zapateria Inc. Hernandez controls the operations of Diana Zapateria since 2010.

In May 2011, defendant Rodolfo Avila Sandoval purchased a manufacturing plant and associated trademarks of a company that made boots under "Original Michel M Since 1970" brand. Sandoval then began marketing his boots as "Original Michel M Since 1970 Boots Co."

PLAINTIFF'S CONTENTIONS:
Plaintiff claimed that he had purchased an exclusive license to use the Original Michel mark that included trademark rights to the dominant word "Michel." Plaintiff contended that defendants' use of the Original Michel brand name infringes on its trademark. Plaintiff then sent defendants a cease and desist letter in November 2011.

Plaintiff brought causes of action for trademark infringement of the federally registered trademark, Botas Michel De Trabajo, and the common law trademark, Original Michel Since 1970, under 15 U.S.C. section 1117 and 15 U.S.C. section 1125(a), respectively, as well as common law unfair competition.

DEFENDANT'S CONTENTIONS:
Defendants filed counterclaims alleging infringement of their common law rights in the Original Michel trademark and for cancellation of plaintiff's Botas Michel De Trabajo trademark.

Result

The court granted defendants' summary judgment motions on all of plaintiff's claims and each of their own counterclaims. The court then entered a judgment for defendants on each of plaintiff's causes of action, and judgment for counter-claimants' on each of their causes of action against plaintiff. The court ordered a cancellation of plaintiff's federal trademark registration for Botas Michel De Trabajo and ordered plaintiff to pay defendants $32,477 in damages.

Other Information

Plaintiff's counsel was not the attorney of record when the decision was rendered. FILING DATE: May 24, 2012.