Plaintiff Total Petroleum
Yesterday (January 25th), Total Petroleum of Puerto Rico filed a trademark infringement (and breach of contract) suit against a (allegedly) former franchisee, Efrain Claudio Cruz. According to the complaint, the defendant was a franchisee of the Total Gas Stations but following termination of the agreement, the defendant continued using the TOTAL marks.
The complaint alleges dilution and trademark infringement, as well as damages relating to the contractual arrangement. To prevail on their dilution claim, Total will need to prove that its mark is famous both in P.R. and in the US. This issue was recently reviewed by the Federal District Court for Puerto Rico in Oriental Group v. Cooperativa de Ahorro y Credito Oriental, 2010 U.S. Dist. LEXIS 111939, holding:
Section 1125(c) provides that the owner of a “famous” mark can bring a claim for dilution. § 1125(c)(1), (5). It clarifies that “a mark is famous if it is widely recognized by the general consuming public of the United States.” § 1125(c)(2)(A); see I.P. Lund Trading ApS v. Kohler Co., 163 F.3d 27 (1st Cir. 1998) (“[N]ational renown is an important factor in determining whether a mark qualifies as famous under [§ 1125(c)].”); TCPIP Holding Co. v. HaarCommc’ns, Inc., 244 F.3d 88, 99 (2d Cir. 2001) (“[E]xamples of eligible ‘famous marks’ . . . are marks that for the major part of the century have been household words throughout the United States.”); see also Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car, Inc., 330 F.3d 1333, 1340 (Fed. Ct. App. 2003) (discussing congressional intent behind § 1125(c)).
Given Total’s presence in the US, they may have a good chance of proving this, but that I’ll leave to the parties.
Also, a fun note: The firm representing the plaintiffs in this case is the same one who filed the copyright-in-brochures claim we posted earlier this month (Copyright in Brochures)
The case is Total Petroleum Puerto Rico v. Efrain Claudio, 3:11-cv-01083
