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

United States District Court for the Eastern District of California

February 13, 2017, Decided; February 14, 2017, Filed

No. 2:14-cv-02961-TLN-CKD

Opinion

ORDER GRANTING IN PART DEFENDANT'S MOTION TO DISMISS

This matter is before the Court on Defendant Meenakshi Overseas LLC's ("Defendant") Motion to Dismiss Plaintiff V.V.V. & Sons Edible Oils Limited's ("Plaintiff") Complaint. (ECF No. 7.) The Court previously ruled on this motion regarding Defendant's Trademarks identified as 4,225,172 ("'172") and 4,334,000 ("'000"). (Order, ECF No. 21.) However, the Court stayed the motion with regard to Defendant's Trademark 4,006,654 ("'654"). The Court lifted the stay and reopened Defendant's motion on May 6, 2015. In light of the administrative proceedings, the Court hereby GRANTS Defendant's motion to dismiss Plaintiff's complaint insofar as Plaintiff asserts claims against mark '654.

I. Factual And Procedural Background [*2] 

Plaintiff is an Indian based company that sells Indian food-oil products, specifically sesame oils. (ECF No. 11 at 1-2.)1 Plaintiff labels its products with the word IDHAYAM and sells them throughout several countries, including the United States. (ECF No. 11 at 1-2.) According to Plaintiff, it adopted the mark "IDHAYAM" to brand its sesame oil products in 1986. (ECF No. 1 ¶ 4; ECF No. 7-3 at 3.)

Defendant is a New Jersey based company that also sells Indian food products in the United States. (ECF No. 1 ¶ 5.) On May 29, 2009, Mr. Anil Gandhi, the original founder and owner of Defendant, filed a trademark application with the United States Patent and Trademark Office ("USPTO") to register the mark IDHAYAM for sesame oil (mark 4,006,654 ('654)). (ECF No. 7-6 at 1.) On May 29, 2009, Plaintiff filed a Notice of Opposition with the United States Trademark Trial and Appeal Board ("TTAB"), requesting the TTAB refuse Mr. Gandhi's application for trademark '654 due to Plaintiff's prior use of IDHAYAM. (ECF No. 7-3 at 1-4.) Plaintiff argued that Mr. Gandhi's IDHAYAM mark was likely to cause confusion with Plaintiff's same mark, and his use of the mark would "take advantage of [Plaintiff's] valuable [*3]  brand and goodwill in the United States." (ECF No. 7-3 at 3.) Plaintiff also alleged that Mr. Gandhi had "never manufactured or marketed sesame oil products under the IDHAYAM brand in the United States or anywhere." (ECF No. 7-1 at 5.) Mr. Gandhi denied the allegation, however he did not specify his use of the mark. (ECF No. 7-4 at 2.) Plaintiff did not further respond to the TTAB's inquiries. (ECF No. 7-5 at 1.) Therefore, due to Plaintiff's lack of response, the TTAB entered a default judgment with prejudice against Plaintiff on January 3, 2011. (ECF No. 7-5 at 1.) On August 2, 2011, Mr. Ghandi received full rights to the mark IDHAYAM ('654). (ECF No. 16 at 3.)

On December 7, 2011, Mr. Gandhi assigned his trademark rights in mark '654 to the Defendant, Meenakshi Overseas, LLC. (ECF No. 7-7 at 1-2.) On February 24, 2012, Defendant filed an application to register a second IDHAYAM mark (4,225,172 ('172)) with the USPTO. (ECF No. 7-9 at 1.) Although mark '172 is for a wider variety of food products, it is the exact same wording as mark '654. (ECF No. 7-9 at 1.) On October 16, 2012, the USPTO approved Defendant's application for mark '172. (ECF No. 7-9 at 1.) On July 23, 2012, Defendant [*4]  filed another application to register a third IDHAYAM mark (4,334,000 ('000)), and on May 14, 2013, the USPTO awarded Defendant the registration. (ECF No. 7-10 at 1.) This mark deviates from marks '654 and '172 in that it incorporates a red banner with additional text ("South Indian Delite"), a red heart with two diagonal gold straps, and a blue rectangle with the word IDHAYAM in yellow font. (ECF No. 7-10 at 1.) Plaintiff did not file a Notice of Opposition against either of these marks. (See ECF No. 16-1 at 6.)

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2017 U.S. Dist. LEXIS 20887 *; 2017 WL 616459

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

Prior History: V.V.V. & Sons Edible Oils, Ltd. v. Meenakshi Overseas LLC, 2016 U.S. Dist. LEXIS 44197 (E.D. Cal., Mar. 31, 2016)

CORE TERMS

trademark, allegations, proceedings, res judicata, rights, dilution, marks, cause of action, products, parties, cancellation, registration, register, trademark infringement, motion to dismiss, default judgment, nucleus, privity, notice, statute of limitations, previous order, sesame oil, infringement, merits