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Haggar Intl v. United Company for Food Indus. Corp

Haggar Intl v. United Company for Food Indus. Corp

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Published by: propertyintangible on Dec 03, 2012
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12/04/2012

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UNITED STATES DISTRICT COURTEASTERN DISTRICT OF
NEW
YORK
--------------------------------------------------------------------){
HAGGAR INTERNATIONAL CORPORATION,
doing business as
MONTANA FOOD INDUSTRIES,Plaintiff,-against-UNITED COMPANY FOR FOOD INDUSTRYCORPORATION, et aI.,Defendants.
--------------------------------------------------------------------){
MEMORANDUM
AND
ORDER
03
CV 5789 (CLP)On November 17,2003, plaintiff Haggar International Corporation, d/b/a Montana FoodIndustries ("Haggar"), commenced this action, pursuant to
15
U.S.C.
§
1115(b), against UnitedCompany for Food Industry Corporation ("United") and Trans Mid-East Shipping
&
TradingAgency, Inc. ("Trans Mid-East") (collectively, the "defendants").l
Plaintiffs
Second AmendedComplaint, filed April 27, 2004, contains eleven causes
of
action alleging, inter alia, thatdefendants violated various provisions
of
the Lanham Act and New York State law through theuse
ofplaintiffs
registered trademark "MONTANA,,,2 and that defendants sought to disruptplaintiffs use
of
the trademark. Specifically, plaintiff alleges claims for federal trademark
1
In
plaintiffs
First Amended Complaint, filed on January
7,2004,
plaintiff namedUnited Company for Food Industry (USA) Corporation ("United USA") as an additionaldefendant in this action. Although United USA has continued to nominally participate in thecase through the defendants' joint counsel, the parties report in their Proposed Joint PretrialOrder ("PJPO"), filed May 5, 2011 and endorsed by the undersigned on that same date, thatUnited USA "is now a defunct company." (PJPO at 17).
2The
parties used the word "Montana" both in their company names and in their marks.So as to reduce confusion, the Court will use the capitalized version
ofthe
word ("MONTANA")when it refers to the mark, and the lowercase version
of
the word ("Montana") when it isreferring to one
of
the parties.
!ase 1:03-cv-05789-!LP Document 313 Filed 11/28/12 Page 1 of 70 PageID #: 5526
 
infringement and use
of
a counterfeit mark, in violation
of
15
U.S.C.
§
1114(1), unfaircompetition, pursuant to
15
U.S.C.
§
1125(a), cancellation
of
federal trademark registrationunder
15
U.S.c.
§ 1064, and additional trademark infringement claims under
New
York Statelaw. (CompI.3

98-188). The Complaint also alleges that defendants sought to cause damageto
plaintiffs
good will by, inter alia, seeking to cancel
plaintiffs
mark, registering the mark indefendants' name, marketing competing foods bearing the MONTANA mark, disparaging
plaintiffs
products, and attempting to cause the Bureau
of
Customs and Border Protection("Customs") to deny entry
of
plaintiffs
products into the United States.
iliL.)
Subsequently, United and Trans Mid-East filed answers to the Complaint, and then laterfiled counterclaims against Haggar for trademark infringement, trademark cancellation, unfaircompetition, trademark dilution, and various other claims under
New
York State law. (Ans.4

12-92). Defendants claim that they are the rightful owners
of
the both the MONTANA word anddesign marks (collectively, the"MONTANA marks"). (Ans.

9).
On
December 19, 2006, Haggar filed the first motion for summary judgment, seeking todismiss defendants' counterclaims on the grounds
of
laches and acquiescence, arguing thatdefendantUnited had waited too long to assert its claims
of
trademark ownership. Upon referral,this Court issued a Report and Recommendation, dated March
11,
2008, recommending that
plaintiffs
motion for summary judgment be denied because there existed sufficient questions
of
3Citations to "CompI." refer to
plaintiffs
Second Amended Complaint, filed April 27,2004.4Citations to "Ans." refer to defendant United's Answer to Second Amended Complaintand Second Amended Counterclaims, filed May 26, 2004. The Court notes that each defendantfiled a separate Answer, each containing counterclaims. However, United's Answer contains allthe same counterclaims alleged by the other defendants, as well as several counterclaims notincluded in the other defendants' answers.2
!ase 1:03-cv-05789-!LP Document 313 Filed 11/28/12 Page 2 of 70 PageID #: 5527
 
material fact as to whether Haggar's procurement
of
the MONTANA trademark was fraudulent,since a party asserting the equitable defenses
of
laches and acquiescence must do so with "cleanhands."
On
June
4,2008,
the district court adopted the Report and Recommendation.On April
1,
2009, defendants filed a second motion for summary judgment, seeking topreclude plaintiff from asserting any equitable defenses such as laches
or
acquiescence. ThisCourt issued a Report and Recommendation, dated September 22, 2010, recommending thatdefendants' motion be denied, again because genuine issues
of
material fact remained on thequestion
of
whether Haggar committed fraud in its application to the United States Patent andTrademark Office ("USPTO") filed in 1989. In an opinion and order dated January 5, 2011, thedistrict court adopted the Report and Recommendation.On February
4,2011,
the parties consented to have the case assigned to the undersignedfor all purposes, including entry
of
udgment, and waived their right to a
jury
trial, consenting toallow this Court to decide the issues. The case proceeded to trial, which was held before thisCourt from May 16 through May 18,2011. The Court notes that several
of
the key witnesseshad passed away prior to trial. Thus, at trial, Haggar's case-in-chief consisted
of
the livetestimony
of
Ms. Hala Boulos ("Ms. Boulos"), as well as portions
of
the deposition transcripts
of
SherifBoulos5("Boulos" or
"Sherif')
and Alfi al Masri6("al Masri"). Defendants' case-in-
5Mr.
Boulos passed away on or about October
1,
2006. (Plaintiff Haggar InternationalCorporation's Statement
of
Material Facts in Support
of
its Motion for Summary Judgment,Pursuant to Local Civil Rule 56.1, filed December 19, 2006 ("PI.' s 2006 56.1 Stmnt")

48).6Plaintiffuses the spelling "Alfi al Masri," while defendants use the spelling "Alfi
EI-
Masri." The Court will simply use the former for the sake
of
consistency. Mr. al Masri, Mr.Boulos' father-in-law and business partner, also passed away prior to trial. Although the partieswere able to depose Mr. al Masri prior to his death and enter his deposition transcript intoevidence as Defendants' Exhibits HD-HF, plaintiff argues that al Masri's deposition makes itclear that his recollection was impaired by age and medical disability. (Plaintiff Haggar3
!ase 1:03-cv-05789-!LP Document 313 Filed 11/28/12 Page 3 of 70 PageID #: 5528

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