United States District Court, S.D. Florida
ORDER ON PLAINTIFF'S MOTION FOR PRELIMINARY
G. TORRES UNITED STATES MAGISTRATE JUDGE.
matter is before the Court on Menudo International, LLC's
(“Plaintiff”) motion for a preliminary injunction
[D.E. 16] against In Miami Production, LLC
(“IMP”) and Maria Cristina Braun
“Defendants”). Defendants responded to
Plaintiff's Motion on June 30, 2017 [D.E. 23] to which
Plaintiff did not timely reply. On October 3, 2017, the Court
held an evidentiary hearing and the parties filed
supplemental briefs on October 10, 2017. [D.E. 56, 57-1].
Therefore, Plaintiff's motion is now ripe for
disposition. After careful consideration of the motion,
response, related filings, and the record, along with the
testimony of witnesses, arguments of counsel, and evidence
presented, Plaintiff's motion is DENIED.
filed this action on April 26, 2017 for trademark
infringement, unfair competition, and false description under
§§ 31 and 43 of the Lanham Act, 15 U.S.C.
§§ 1114(1) (trademark infringement) and
§1125(a) (unfair competition and false description) for
unfair business practices arising under Florida Statutes
§§ 495.131, 495.151 and for injuries to
Plaintiff's business reputation under the common law.
[D.E. 1]. Plaintiff alleges that IMP sells related merchandise in
violation of Plaintiff's trademark and that Braun
controls IMP's infringing activities. As such, Plaintiff
seeks immediate relief in the form of a preliminary
injunction to preserve the status quo and to prevent
irreparable harm pending a final determination on the merits
of Plaintiff's claims.
allegedly infringing trademark relates to a group of male
performers that were former members of the internationally
renowned Puerto Rican boy band called Menudo. Producer
Edgardo Diaz formed Menudo in the 1970s and the group
released their first album in 1977. The group enjoyed
widespread success throughout the 1980s when Menudo appeared
on television shows, films, and merchandise. The band
continued its success until the group released its final
album in 1996.
2014, IMP began working with former members of Menudo when
they expressed their desire to return to a music career. In
August 2015, Braun, the principal of IMP, met with Carlos
Pimentel, who at the time allegedly claimed to be the owner
of the Menudo trademarks. Both met and agreed to work on a
licensing agreement so that IMP could use the Menudo
trademark for upcoming concerts where thirteen of the
thirty-seven former Menudo members would reunite and perform
for their fans. While researching the history of the Menudo
trademarks, it purportedly became clear to IMP and Braun that
neither Mr. Pimentel nor Menudo Entertainment had any
authority to control the use of the Menudo trademarks. As a
result, IMP reached no agreement with Mr. Pimentel or Menudo
Entertainment regarding the Menudo trademarks.
2015, Plaintiff has marketed, distributed, and sold its good
and services bearing the Menudo trademark. Yet, in that same
year, IMP began to market and promote live performances by
entertainers using the trademark without Plaintiff's
permission. IMP has marketed and distributed t-shirts - and
possibly other merchandise - containing a reference to the
trademark to notify fans that Menudo has finally returned.
More specifically, IMP produced, promoted, and sold over
eighteen concert events using the Menudo trademark and
invested significant sums of money in promoting and
developing these events.
point in 2016, IMP applied to register the Menudo trademark
with the Mexican trademark office. Shortly thereafter, Mr.
Pimentel emailed Braun to express disapproval of the use of
the Menudo name. On May 2, 2016, counsel for Big Bar
Entertainment, an alleged predecessor of Plaintiff, sent a
cease and desist letter. In October 2016, Plaintiff filed an
opposition to IMP's trademark application in Mexico. And
on March 28, 2017, IMP filed a petition to cancel
Plaintiff's registered trademark on the basis of fraud
and Plaintiff's trademark counsel sent IMP another demand
letter with a copy of the complaint on April 26, 2017.
5, 2017, IMP filed its answer, including affirmative defenses
and counterclaims. IMP claims that this lawsuit, and in
particular Plaintiff's motion for preliminary injunction,
has no merit because Plaintiff is not using the Menudo
trademark in commerce whereas IMP has used the mark for over
two years. Each of Plaintiff's attempts to register the
trademarks has allegedly been cancelled or pending on a mere
intent to use basis.
Plaintiff contends that the Menudo trademark has been in use
since the 1970s and has been used continuously in commerce
and by Plaintiff's predecessors since 1995. Because
Defendants have purportedly attempted to profit from the
success of the Menudo trademark, Plaintiff seeks a
preliminary injunction to cease Defendants' activities
and to set aside any consumer confusion that has resulted
Standard of Review
obtain a preliminary injunction, a movant must demonstrate
the following: A(1) a substantial likelihood of success on
the merits of the underlying case; (2) the movant will suffer
irreparable harm in the absence of an injunction; (3) the
harm suffered by the movant in the absence of an injunction
would exceed the harm suffered by the opposing party if the
injunction issued, and (4) an injunction would not disserve
the public interest.'' Johnson & Johnson
Vision Care, Inc. v. 1-800 Contacts, Inc., 299 F.3d
1242, 1246-47 (11th Cir. 2002); Baker v. Buckeye
Cellulose Corp., 856 F.2d 167, 169 (11th Cir. 1988).
Eleventh Circuit, A[a] preliminary injunction is an
extraordinary and drastic remedy not to be granted unless the
movant clearly established the 'burden of persuasion'
as to the four requisites.'' McDonald's Corp.
v. Robertson, 147 F.3d 1301, 1306 (11th Cir. 1988);
Siegel v. LePore, 234 F.3d 1163, 1176 (11th Cir.
2000) (''Because a preliminary injunction is >an
extraordinary and drastic remedy, ' its grant is the
exception rather than the rule, and plaintiff must clearly
carry the burden of persuasion''). However, A[i]f the
movant is unable to establish a likelihood of success on the
merits, a court need not ...