United States District Court, S.D. Texas, Houston Division
MEMORANDUM OPINION AND ORDER
Gray
Miller Senior United H. District Judge
Pending
before the court is defendants Hermes International, Inc.,
Hermes Trading Co., and 3 Crowns Distributors's
(collectively, “Defendants”) partial motion to
dismiss.[1] Dkt. 7 (motion filed by Hermes
International and Hermes Trading Co.); see also Dkt.
22 (joining 3 Crowns in the pending motion). Plaintiff
Gabbanelli Accordions and Imports, LLC
(“Gabbanelli”) responded (Dkt. 10) and Defendants
replied (Dkt. 12). Having considered the motion, response,
reply, pleadings, and applicable law, the court is of the
opinion that Defendants' motion (Dkt. 7) should be
GRANTED IN PART and DENIED IN PART.
I.
Background
This is
an intellectual property dispute. Gabbanelli manufactures and
sells its own brand of high-quality accordions.[2] Dkt. 5 at 4. The
Hermes defendants also sell “various brands of
high-quality accordions.” Dkt. 7 at 2.
A.
The 2000 and 2014 Settlement Agreements
Gabbanelli
has brought two previous suits against Hermes entities-one in
2000 and one in 2013-for alleged intellectual property
infringement. Dkt. 5 at 8-9. Both suits resulted in
settlement agreements.[3]
First,
in 2000, Gabbanelli filed suit against eight different Hermes
entities in federal district court (Civil Action No.
H-00-0352) (the “2000 Suit”). Dkt. 7-1 at 2. The
parties ultimately resolved the case via settlement
agreement. Dkt. 7-1 (the “2000 Settlement
Agreement”). The 2000 Settlement Agreement provided,
inter alia, that Hermes would “stop the
promotion and sale of any accordion containing marks that are
identical to, or confusingly similar to, ” the
Gabbanelli trade dress. Dkt. 7-1 at 3. The Agreement defined
“Gabbanelli trade dress” as “the overall
appearance of the accordions sold and distributed by
Gabbanelli consisting of, but not limited to, the color
scheme, the location and design of the buttons and keys on
the accordions, the engravings on the accordions, and the
ornamentation attached to the
accordions.”[4] Id. at 3.
Despite
the 2000 Settlement Agreement, the parties continued to
clash. In 2013, Gabbanelli again filed suit against multiple
Hermes entities for alleged infringement (Civil Action No.
4:13-cv-2044) (the “2013 Suit”). In 2014, the
parties entered into another settlement agreement (the
“2014 Settlement Agreement”). Dkt. 8 (sealed).
The 2014 Settlement Agreement prohibited Hermes from
“represent[ing] to the public that accordions from
parties other than Gabbanelli . . . are related to,
affiliated with, sponsored by, associated with or connected
to Gabbanelli, the Gabbanelli name, or Gabbanelli
trademark/trade name.” Id. at 3. The 2014
Settlement Agreement also prohibited Hermes from making
“false, deceptive, or misleading statements about
Gabbanelli accordions.” Id.
B.
The Current Suit
Now, in
this third suit, Gabbanelli again alleges that Hermes
entities have engaged in trade dress and trademark
infringement. First, Gabbanelli contends that Defendants have
infringed on Gabbanelli's “red, white, and green
trade dress” and U.S. Trademark Registration No. 4,
391, 931 (the “931 Mark”) by selling tequila in
packaging that resembles Gabbanelli's accordions. Dkt. 5
at 10. Further, Gabbanelli alleges that the tequila packaging
includes the name “CANTABELLA”-a Hermes-owned
mark-on the package. Id. Gabbanelli also alleges
that Defendants hired Ramon Ayala, a well-known accordionist,
to promote the offending tequila by using a red, white, and
green “CANTABELLA” accordion for performances and
advertisements. Id. at 11. Finally, Gabbanelli
alleges that Defendants have sold “additional
accordions violating Gabbanelli's red, white, and green
trade dress.” Id. at 14. According to
Gabbanelli, Defendants engaged in these activities
“intend[ing] . . . to create an association in
consumers' minds” between Gabbanelli and
Defendants' products. Id. at 15.
Second,
Gabbanelli alleges that Defendants have sold accordions in
violation of Gabbanelli's trademarks. Specifically,
Gabbanelli asserts that Defendants have sold Sonola-brand
accordions with marks that are “substantially
similar” to Gabbanelli-owned U.S. Trademark
Registration Nos. 4, 391, 927 and 4, 391, 903 (the “927
Mark” and “903 Mark, ” respectively).
Id. at 16. Gabbanelli claims that it sent Defendants
a cease and desist letter relating to the offending
accordions, but Defendants did not respond. Id. at
17.
Third,
Gabbanelli contends that Defendants' alleged
infringements also breach both the 2000 and 2014 Settlement
Agreement. Id. at 23-24. Gabbanelli argues that
Defendants' alleged unauthorized use of Gabbanelli's
green, white, and red trade dress violates the 2000
Settlement Agreement. Dkt. 10 at 9. Gabbanelli also argues
that Defendants' infringing activities violate the 2014
Settlement Agreement. Id. at 11.
II.
Standard of Review
Rule
8(a)(2) requires that the pleading contain “a short and
plain statement of the claim showing that the pleader is
entitled to relief.” Fed.R.Civ.P. 8(a)(2). A party
against whom claims are asserted may move to dismiss those
claims when the nonmovant has failed “to ...