Post on 12-Jun-2018
To: Lisa Howard [mailto:lhoward@howardmills.com]
From: A. Paralegal [mailto:needsthisjob@howardmills.com]
Date: April 6, 2017 10:23 pm
Subject: SLB Civil Removal Research
Dear Ms. Howard;
I am writing in return to your requests as per the Sweet Lorraine’s case. As you are
aware, Mr. Sawyer’s attorney had filed a summons and complaint in Wayne County
Circuit Court in the State of Michigan. Due to this case having many legal errors,
including filing in the wrong jurisdiction, we are proceeding with this case, and at your
request, I have composed a memo in which outlines the research I intend to conduct in
regards to this matter.
The various legal and factual search terms I will use when conduct my research will
include, but not limited to will be: jurisdiction of federal law, removal of trademark
infringement case state to federal court, 28 U.S.C. §1441, 1446, Michigan State
jurisdiction trademark infringement, diversity of citizenship, burden of proof for removal
to Federal Court, proof required for removal to Federal Court, burden of proof for
diversity of citizenship and proof required to prove diversity of citizenship.
The legal issues that need to be asked in this case are:
Who has burden of proof in this case to remove the Sweet Lorraine’s case to Federal
Court?
What proof do we need to present to the court to show cause for removal from Wayne
County Circuit Court in the State of Michigan to Federal Court?
What primary laws support our motion to remove this case to a Federal Court?
What Federal Court rules support our ability to remove this case to Federal Court?
Who is responsible for the burden of proof in regards to the diversity of citizenship
claim?
What proof do we need to present to the court to prove diversity of citizenship?
What are our chances of the court agreeing to move this matter to Federal Court?
What are our chances the court will agree with diversity of citizenship requests?
Primary sources I intend to research will be from the Sixth Circuit Court of Appeals and
the United States District Court for the Eastern District of Michigan. I intend to research
primary law in regards to removing cases to Federal Court, and discover the rules and
laws that allow us this right. I also intend to research to discover who the burden of
proof is on and what is required for us to present to the court to support our motion to
why the case should be moved to Federal Court. I am aiming at finding at least three
primary sources directly in comparison to Sweet Lorraine’s in which cases were filed in
the wrong jurisdictions and moved to the Federal Court. I also intend to research how to
draft the motion for this task. Search terms I will be using are listed above in the second
paragraph of this memo. These terms are not narrowed to these terms, but will be a
base for my thoughts and research to grow upon and expand.
The secondary sources I will research will be jurisprudence and treatises. These
sources will further explain in more simple terms what is required, and can even lead to
some relevant cases as needed for our primary law discovery. The use of secondary
sources is important because it allows for a clearer picture of the law, and could
potentially save research time.
I am estimating my research will consist of approximately five to six hours. This is a very
rough estimate because sometimes research can be less time consuming with the use
of secondary sources. Time spent researching could also take longer due to unforeseen
issues.
If you require additional assistance, please don’t hesitate to ask.
Sincerely,
A. Paralegal
From: A. Paralegal [mailto:needsthisjob@howardmills.com]
To: Lisa Howard [mailto:howard@howardmills.com]
Date: April 20, 2017 3:23 AM
Subject: Sweet Lorraine’s Systems, LLC v. Sweet Lorraine’s Bakery, LLC (File No.
3176)
Dear Ms. Howard:
I have had the time to research removing this matter to federal court. I am including my
predictive memo regarding this, as per your request.
Statement of Facts
Eight months ago, our firm began working with Ms. Donnelly regarding incorporation of
her family owned business Sweet Lorraine’s Bakery, LLC out of Charlotte, NC. This
bakery specializes in French and Italian-inspired pastries, cakes, cookies and artisan
breads. The business is a one store location in which they feature a daily menu, create
special order occasion cakes and have a website, but does not offer any sales through
the online marketplace. All advertising is done through Facebook, Twitter and their
webpage and by word of mouth.
Two months ago, Ms. Donnelly was contacted by Mr. Greg Sawyer. Mr. Sawyer and his
wife operate Sweet Lorraine’s Café and Bar in Detroit and have two locations. Mr.
Sawyer is the vice president of Sweet Lorraine’s Systems, LLC in Detroit, MI. Mr.
Sawyer’s Café and Bar is a restaurant that specializes in American fare and includes
some baked goods on their menu. The Café and Bar offers a website in which they sell
salad dressings and apparel that are sold throughout the country. Mr. Sawyer recently
began pursuing a new franchise called “Sweet Lorraine’s Mac n’ Cheez Kitchen” and
currently have two locations open in Detroit suburbs and allegedly had been
approached by an individual from North Carolina regarding expanding into this state,
however; the exact location was not mentioned.
Mr. Sawyer contacted Ms. Donnelly because he and his wife have a trademark on the
name “Sweet Lorraine’s” for all restaurants, catering and baking services in the United
States. This trademark has been confirmed with the United States Patent and
Trademark Office. Mr. Sawyer demanded our client, Ms. Donnelly to change the name
of her business or he would commence a lawsuit against if she does not follow his
demands.
Our firm suggests Ms. Donnelly not change the name of her business because based
upon research of previous court rulings, we find Mr. Sawyer would most likely not
prevail in his claims of Ms. Donnelly committing trademark infringement.
Two months following this conversation, Ms. Donnelly received an email from Mr.
Sawyer’s attorney, Marsha Jabber. Attached to the email was a Summons and
complaint against Sweet Lorraine’s Bakery, LLC, which was filed in Wayne County
Circuit Court in the State of Michigan (a Michigan State Court). Ms. Donnelly nor any
employee of Ms. Donnelly were personally served with this summons and complaint,
nor does it appear there had been any attempt of legitimate service of process. Lastly, it
appears Mr. Sawyer’s attorney wrongly filed this court in Michigan State Court, not
Federal District Court.
Question(s) Presented
What is our burden on a motion to remove this matter to Federal Court?
Can we meet our burden of proof on the motion to remove this matter to Federal Court?
What or how do we need to meet our burden of proof on this motion?
Short Answer(s)
The burden is on the defendant to remove the matter to Federal Court.
Yes, we can meet our burden on the motion to move this matter to Federal Court by
proving Mr. Sawyer and Ms. Donnelly live in different states.
Analysis
Under the provisions of 28 U.S.C.S. § 1441, the defendant must be the moving party to
remove the matter to Federal court when involving diversity of citizenship in a civil
matter. This is because Mr. Sawyer and Ms. Donnelly reside in different states. Law to
support this finding is Schwartz v. Elec. Data Sys., Inc., 913 F.2d 279 (6th Cir. 1990),
and states exactly “Congress adopted this presumption when it enacted the removal
statute, 28 U.S.C. § 1441(b), under which a diversity action is "removable only if none of
the . . . defendants is a citizen of the State in which such action is brought." Ms.
Donnelly is not a resident of the state of Michigan, therefore she can remove this matter
to federal court.
Further stated “As in all diversity removal cases, no defendant in the action may be a
citizen of the state in which the action is brought. 28 U.S.C .S. § 1441(b ) ” in Hite v.
Norwegian Caribbean Lines, 551 F. Supp. 390 (E.D. Mich. 1982) and this means
because Mr. Sawyer and Ms. Donnelly do not reside in the same state, under the
diversity of citizenship, this allows the right for Ms. Donnelly to move this case to federal
court.
Theriot v. HSBC Bank, No. 10-CV-11617, 2010 U.S. Dist. LEXIS 135643, at *10-11
(E.D. Mich. Dec. 22, 2010) shows the provisions of 28 U.S.C.S. § 1446, and states the
notice of removal of a civil action or proceeding shall be filed within 30 days after the
receipt by the defendant, through service or otherwise, of a copy of the initial pleading
setting forth the claim for relief upon which such action or proceeding is based, or within
30 days after the service of summons upon the defendant if such initial pleading has
then been filed in court and is not required to be served on the defendant, whichever
period is shorter as shown in In an action based on diversity, the action "shall be
removable only if none of the parties in interest properly joined and served as
defendants is a citizen of the State in which such action is brought."
28 U.S.C. § 1441(b). 28 U.S.C. § 1446(d) governs the notice requirement for removal:
Promptly after the filing of such notice of removal of a civil action the defendant or
defendants shall give written notice thereof to all adverse parties and shall file a copy of
the notice with the clerk of such State court, which shall affect the removal and the State
Court shall proceed no further unless and until the case is remanded.
28 U.S.C. § 1446(d) states the removing party has the burden of proving that the federal
district court has jurisdiction.
Since trademark infringement arises out of federal law, and both parties live in different
states, this allows for Ms. Donnelly the right to motion to remove this case to federal
court.
Conclusion
Yes, Ms. Donnelly would be successful in her motion to remove this case to federal
court.
Howard & Mills, P.C.123 Main StreetCharlotte, NC 28277555-555-5555howard@howardmills.comApril 14, 2017
Sweet Lorraine’s Bakery, LLC220 West BoulevardCharlotte, NC 28277
Dear Ms. Donnelly:
I hope this letter finds you well. First off, our duty here at Howard & Mills, P.C. is to do the best to represent our clients personal interests the best we can within the scope of the law. The legal process can be very confusing and the complex terminology can frustrate even some of the best attorneys. The purpose of this letter is to explain to you each claim Mr. Sawyer has made against you in his summons and complaint, in an organized manner and in language that is understandable. Many attorney’s fail to explain to their clients what’s happening with their case, and if they do, it is usually in legal terms most people have never heard before, let alone know what these words mean. We do things differently at this firm, if you are paying us for our expertise, you deserve to know and understand what is happening through the legal process in normal language. I will explain if there is any merit in each claim, and if there is reason to believe Mr. Sawyer would have victory in any of his causes of actions. I will additionally tell you what defenses will be used to strengthen your case and why.
Summons
This page states that we must file a written answer within a certain number of days. An answer is where we go through the entire petition and either admit or deny each allegation made by Mr. Sawyer.
Complaint
This is Mr. Sawyers side of the story and what he alleges you have done that he would like a remedy for. The introduction states the story behind the use of the “Sweet Lorraine’s” and a small history of their business. Mr. Sawyers goes on to explain he obtained a patent on the trademark name of “Sweet Lorraine’s”, and lastly how he came to discover that you had been using the same general name for your business.
Parties
This section states limited information about Mr. Sawyers and yourself, Ms. Donnelly. This also describes the addresses of both businesses using the name “Sweet Lorraine’s”.
Jurisdiction and Venue
Jurisdiction is taking your case to the proper court. Not all courts hear all cases. When filing with the court, we must be sure we have the correct court. There are many different levels of courts and in different areas. Venue means location. In each state, there are different circuits or areas within the state. Each circuit deals only with certain counties in that state, and in each state, there are several circuits.
Background Facts
Mr. Sawyer lists more detailed into the background or history of his business, details of having the mark “Sweet Lorraine’s” patented and different things in which his business does, promotes, sells, or even how they market and sell their services and goods.
Defendant’s Conduct
These are the complaint(s) Mr. Sawyer alleges against you, or what you have done in which he is finding fault or legality with.
Cause of Action
I will list each cause of action separately. Each cause of action states exactly what specific law you have been accused of committing against Mr. Sawyer. This is the section in which I will explain what the law means, if I think they will prove you have committed this act, what defense we can use against their claims or how we can prove these causes of action to be disproven. Some of these causes of actions are Mr. Sawyer’s responsibility to prove, however.
First Cause of Action:
Trademark Infringement – 15 U.S.C. § 1114
In Mr. Sawyer’s claim, item 24, he claims (his business is) “highly distinctive and arbitrary.” A few examples of arbitrary marks are EXXON, Kodak and Apple. When people hear these words, these words are not related at all to the products they promote, but almost everyone knows Kodak sells cameras and things related to photography in general. In this world, there are probably a very large number of people named Lorraine. There are also a great number of bakeries and bars. Just because someone names their establishment the same name five states away, does not mean it will cause any confusion. The main idea of trademark infringement is to cause confusion among consumers.
In item 25, Mr. Sawyer notes the “Trademark is confusingly similar”, and goes on to state you have “intentionally and knowingly” been using his trademark name of Sweet Lorraine’s to cause confusion. Details of these allegations continue through number 31.
When deciding if one has committed trademark infringement, under 15 U.S.C 1114(1) there are eight factors in which mainly determine if use of a trademark causes confusion. Those eight factors are
1. The strength of the plaintiff’s mark;
2. The relatedness of the service;
3. The similarity of the marks;
4. The evidence of actual confusion;
5. The marketing channels used;
6. The likely degree of purchaser care;
7. The defendant’s intent in selecting the mark; and
8. The likelihood of expansion of the product lines.
In the case of Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996) both owners of these golf clubs were named the same name, and used the same ways to market and promote their businesses. The court ruled that there was no infringement because even though they both sold golf memberships and were named the same name, consumers did not confuse them. The two business owners were not in the same geographic location. These two companies had different buildings, course layout, and even though there were a few known acts of confusion, it was not sufficient to the court because the confusion was not between consumers. The court also found there was no actual intent on the behalf of either party to make others believe they were affiliated with each other or trying to take business from the other in a deceitful or fraudulent manner.
Mr. Sawyer will not be successful in this claim is because Lorraine is a common name. His business is named “Sweet Lorraine’s Café and Bar”, Your business is named “Sweet Lorraine’s Bakery”. When on sees café or bar they assume the business sells beverages, not cakes. The two businesses are in completely different states and geographic locations. The products are very different, you advertise differently and sell your products differently. Mr. Sawyer sells his products through internet sales, whereas you only advertise your services online. Sales through your business are done only by people personally coming to your store. Your business is well known by the locals, and they would not confuse your business with another business because they are familiar with you and your services.
Second Cause of Action:
Federal Trademark Dilution – 15 U.S.C. § 1125(c)
Trademark dilution is where you are using his name to make his mark less arbitrary or fanciful. In the case of Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) The district court found that the “Daddy’s Music Store” and the “Daddy’s” marks are arbitrary marks because daddy does not relate to music or musical instruments, however; The U.S. Patent & Trademark Office revealed fifteen registered marks with the same phrase of “Daddy’s” and another three marks pending registration. The mark “Daddy’s” alone is therefore weakened due to the dilution of the mark.
Mr. Sawyer would not be successful on this claim either because when a person names their business, many people include a name. I’m sure there is a few “Joe’s Diner” restaurants in every state. People who are local know the difference between them and there is no confusion, even if the names are the same.
Third Cause of Action:
False Designation of Origin – 15 U.S.C. § 1125(a)
In this cause of action, he is again alleging confusion amongst consumers. The court would require Mr. Sawyer to prove with financial records showing he has lost revenue because of your business and prove incidents of actual confusion. To my knowledge there has been none, and the case of Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996) there had been actual acts of confusion, however there had only been a few isolated incidents and they weren’t by consumers, the confusion was by golf ball suppliers. The court ruled there had not been any infringement. I also feel since this case was held in the same court district, using this case as primary law, the court will also rule the same way.
Fourth Cause of Action:
Common Law Trademark Infringement
In this action, once again, Mr. Sawyer is claiming that you have caused confusion amongst consumers, and on record, to date there has been none. The court needs Mr. Sawyer to prove that there has been actual confusion, and prove that he has lost revenue from your business. I don’t foresee any merit in this as when the defense for the plaintiff cannot prove that you have intentionally and knowingly used his name to cause and have caused actual confusion. Also, both businesses, even though they use the name “Lorraine’s”, are very different in every aspect.
Fifth Cause of Action:
Common Law Unfair Competition
This cause of action is like the other causes, just claiming that you have intentionally used the same name to damage his reputation and to take business from him. Mr. Sawyer needs to prove that there has been actual confusion, and that you are knowingly trying to gain profit by using his mark to deceive people into believing you are affiliated with him, which this is not the case.
Conclusion
In my experience with cases like yours, and extensive research conducted on this matter, I feel the court will dismiss all of Mr. Sawyers claims and you will not be forced to change your business name. There has been no infringement of Mr. Sawyer’s trademark.
Our Next Steps
Our next steps in this process however are to remove this matter from Wayne County Circuit Court for the State of Michigan to Federal District Court. There had been many errors and discrepancies with the filing of the summons and complaint, starting with the delivery of the complaint, which is called service. Secondly, the complaint was filed in the wrong jurisdiction because trademark infringement arises out of federal law, therefore needs to be heard in front of a Federal District Court. Our office must file a motion to do this. I will inform you each step of the way of what our next actions will be.
If you should have any questions, or need further clarification of anything, don’t hesitate to contact me at 555-555-5555. I will be more than happy to discuss this matter further.
Sincerely,
Signature of Lisa HowardLisa Howard, Esq.
UNITED STATES DISTRICT COURTEASTERN DISTRICT OF MICHIGAN
___________________________________________
SWEET LORRAINE’S SYSTEMS, LLC.1100 Snarl Avenue, Suite 310Detroit, MI 42330
Plaintiff, NOTICE OF MOTION
v. Index No. 2013-77569
SWEET LORRAINE’S BAKERY, LLC.220 West BoulevardCharlotte, NC 28277
Defendant.___________________________________________
PLEASE TAKE NOTICE, that the undersigned will bring a motion the remove this case to the United States District court for the Eastern Division of Michigan before this Court on a date and time which will be provided by the Court later.
Signed this 20th day of April 2017
(Signature of Lisa Howard)Lisa Howard, Esq.Howard & Mills, P.C.123 Main StreetCharlotte, NC 28277
UNITED STATES DISTRICT COURTEASTERN DISTRICT OF MICHIGAN
______________________________________________
SWEET LORRAINE’S SYSTEMS, LLC.1100 Snarl Avenue, Suite 310Detroit, MI 42330
Plaintiff, AFFIDAVIT IN SUPPORTOF MOTION
v.Index No. 2013-77569
SWEET LORRAINE’S BAKERY, LLC.220 West BoulevardCharlotte, NC 28277
Defendant.
_______________________________________________
STATE OF MICHIGANCOUNTY OF WAYNE
I, Lisa Howard, Esq., make the following affirmation under penalty of perjury:
2. I am counsel for the defendant in the above-entitled action and respectfully request that the Court issue an order to remove this case to the United States District Court for the Eastern District of Michigan.
3. The reasons why I believe I am entitled to the relief I seek are set forth below.
4. Mr. Sawyer is the vice president of Sweet Lorraine’s Systems, LLC. and resides in Detroit, Michigan.
Ms. Donnelly is the owner of Sweet Lorraine’s Bakery, LLC. and resides in Charlotte, North Carolina.
Sweet Lorraine’s Systems, LLC filed a summons and complaint against Sweet Lorraine’s Bakery, LLC, alleging trademark infringement.
Trademark infringement, 15 U.S.C § 1114 is a federal question and is in Federal Jurisdiction
Under 28 U.S.C.S. § 1441, Mr. Sawyer and Ms. Donnelly reside in different states, this rule states when there is a diversity of citizenship, the matter is under federal jurisdiction and this matter should be removed to the United States District Court for further proceedings.
5. I declare under penalty of perjury that the foregoing is true and correct, to the best
of my knowledge, information and belief.
Dated: This 20th day of April 2017
(Signature of Lisa Howard)Lisa Howard, Esq.Howard & Mills, P.C.123 Main StreetCharlotte, NC 28277
UNITED STATES DISTRICT COURTEASTERN DISTRICT OF MICHIGAN
______________________________________________
SWEET LORRAINE’S SYSTEMS, LLC.1100 Snarl Avenue, Suite 310Detroit, MI 42330
Plaintiff, MOTION TO REMOVE
v.Index No. 2013-77569
SWEET LORRAINE’S BAKERY, LLC.220 West BoulevardCharlotte, NC 28277
Defendant.
_______________________________________________
MEMORANDUM OF LAW IN SUPPORT OF MOTION TO REMOVE
BACKGROUND AND PROCEDURAL HISTORY
Eight months ago, Ms. Donnelly opened a family owned business Sweet Lorraine’s Bakery, LLC out of Charlotte, NC. This bakery specializes in French and Italian-inspired pastries, cakes, cookies and artisan breads. The business is a one store location in which they feature a daily menu, create special order occasion cakes and have a website, but does not offer any sales through the online marketplace. All advertising is done through Facebook, Twitter and their webpage and by word of mouth.Two months ago, Ms. Donnelly was contacted by Mr. Greg Sawyer. Mr. Sawyer and his wife operate Sweet Lorraine’s Café and Bar in Detroit and have two locations. Mr. Sawyer is the vice president of Sweet Lorraine’s Systems, LLC in Detroit, MI. Mr. Sawyer’s Café and Bar is a restaurant that specializes in American fare and includes some baked goods on their menu. The Café and Bar offers a website in which they sell salad dressings and apparel that are sold throughout the country. Mr. Sawyer recently began pursuing a new franchise called “Sweet Lorraine’s Mac n’ Cheez Kitchen” and currently have two locations open in Detroit suburbs and allegedly had been approached by an individual from North Carolina regarding expanding into this state, however; the exact location was not mentioned.
Mr. Sawyer contacted Ms. Donnelly because he and his wife have a trademark on the name “Sweet Lorraine’s” for all restaurants, catering and baking services in the United States. This trademark has been confirmed with the United States Patent and
Trademark Office. Mr. Sawyer demanded our client, Ms. Donnelly to change the name of her business or he would commence a lawsuit against if she does not follow his demands. Our firm suggests Ms. Donnelly not change the name of her business based upon previous court rulings, we find Mr. Sawyer would most likely not prevail in his claims of trademark infringement against Ms. Donnelly.
Two months following this conversation, Ms. Donnelly received an email from Mr. Sawyer’s attorney, Marsha Jabber. Attached to the email was a Summons and complaint against Sweet Lorraine’s Bakery, LLC, which was filed in Wayne County Circuit Court in the State of Michigan. Ms. Donnelly nor any employee of Ms. Donnelly were personally served with this summons and complaint, nor does it appear there had been any attempt of legitimate service of process. Lastly, it appears Mr. Sawyer’s attorney wrongly filed this complaint in Michigan State Court, not United States District Court for the State of Michigan.
ARGUMENT
Under the provisions of 28 U.S.C.S. § 1441, the defendant must be the moving party to remove the matter to Federal court when involving diversity of citizenship in a civil matter.
Mr. Sawyer and Ms. Donnelly reside in different states.
Law to support this finding is Schwartz v. Elec. Data Sys., Inc., 913 F.2d 279 (6th Cir. 1990), and states exactly “Congress adopted this presumption when it enacted the removal statute, 28 U.S.C. § 1441(b), under which a diversity action is "removable only if none of the . . . defendants is a citizen of the State in which such action is brought."
Ms. Donnelly is not a resident of the state of Michigan, therefore she is afforded the right to remove this matter to The United States District Court.
Further stated “As in all diversity removal cases, no defendant in the action may be a citizen of the state in which the action is brought. 28 U.S.C.S. § 1441(b)” in Hite v. Norwegian Caribbean Lines, 551 F. Supp. 390 (E.D. Mich. 1982) and this means because Mr. Sawyer and Ms. Donnelly do not reside in the same state, under the diversity of citizenship, this allows the right for Ms. Donnelly to move this case to federal court.
Theriot v. HSBC Bank, No. 10-CV-11617, 2010 U.S. Dist. LEXIS 135643, at *10-11 (E.D. Mich. Dec. 22, 2010) shows the provisions of 28 U.S.C.S. § 1446, and states the notice of removal of a civil action or proceeding shall be filed within 30 days after the receipt by the defendant, through service or otherwise, of a copy of the initial pleading setting forth the claim for relief upon which such action or proceeding is based, or within
30 days after the service of summons upon the defendant if such initial pleading has then been filed in court and is not required to be served on the defendant, whichever period is shorter as shown in In an action based on diversity, the action "shall be removable only if none of the parties in interest properly joined and served as defendants is a citizen of the State in which such action is brought."
28 U.S.C. § 1441(b). 28 U.S.C. § 1446(d) governs the notice requirement for removal:Promptly after the filing of such notice of removal of a civil action the defendant or defendants shall give written notice thereof to all adverse parties and shall file a copy of the notice with the clerk of such State court, which shall affect the removal and the State Court shall proceed no further unless and until the case is remanded.
28 U.S.C. § 1446(d) states the removing party has the burden of proving that the federal district court has jurisdiction.
Since trademark infringement arises out of federal law, and both parties live in different states, this allows for Ms. Donnelly the right to motion to remove this case to federal court.
CONCLUSION
We respectfully request the court to order this court proceeding to be removed to The United States District Court for the State of Michigan, Eastern Division for further court proceedings.
Dated: April 22, 2017
Respectfully Submitted,
(Signature of Lisa Howard)Lisa Howard, Esq.Howard & Mills, P.C.123 Main StreetCharlotte, NC 28277
UNITED STATES DISTRICT COURTEASTERN DISTRICT OF MICHIGAN
___________________________________________
SWEET LORRAINE’S SYSTEMS, LLC.1100 Snarl Avenue, Suite 310Detroit, MI 42330
Plaintiff, ANSWER TO COMPLAINT
v. Index No. 2013-77569
SWEET LORRAINE’S BAKERY, LLC.220 West BoulevardCharlotte, NC 28277
Defendant.___________________________________________
Defendant, Christine Donnelly, owner of Sweet Lorraine’s Bakery, LLC. answers as
follows:
ADMISSIONS AND DENIALS
1. Defendant admits to the allegations in paragraphs 1, 2, 3, 7, 8, 9, 10, 12, 13, 17 and
21.
2. Defendant denies each and all allegations in paragraphs 4, 5, 6, 18, 19, 20 and 22.
3.In answer to paragraph 14 under defendant’s conduct it is alleged Defendant
organized and filed as a Limited Liability Corporation in the State of New York. This is
not correct. Defendant organized and filed as an LLC in North Carolina. All other
allegations contained in paragraph 9 are correct.
4.In answer to paragraphs 15 and 16 the “infringing products” have yet to be determined
to be infringing. All other allegations in paragraph 15 and 16 are correct. Motion for
Discovery has also been filed herein for the court to decide based upon evidence if the
said mark “Sweet Lorraine’s” has in fact been infringed upon.
First Cause of Action
Trademark Infringement – 15 U.S.C. § 1114
5. Defendant admits to the allegations in paragraph 23.
6. Defendant denies all allegations in paragraphs 25, 26, 27, 28, 29, 30 and 31.
7. Defendant denies having sufficient knowledge or information to form a belief as to the
allegations contained in Paragraph 24 of the complaint, and thereupon denies said
allegations.
First Affirmative Defense
Defendant did use the name “Sweet Lorraine’s Bakery”, however, Ms. Donnelly did not
have knowledge that “Sweet Lorraine’s” was a registered patent by Mr. Sawyer of
Sweet Lorraine’s Systems, LLC. Lorraine is a common name, and therefore, there must
be other food establishments bearing the name “Lorraine’s”. Therefore, this would
negate the claims of Federal Trademark Dilution – 15 U.S.C. § 1125(c) in the Second
Cause of Action. Under Trademark Infringement – 15 U.S.C. § 1114 there is a series of
eight (8) different criteria that must be met to prove trademark infringement. Based upon
the Motion for Inspection, the court shall base their determination and findings on the
evidence submitted in comparison to these guidelines to make their decision.
Second Cause of Action
Federal Trademark Dilution – 15 U.S.C. § 1125(c)
8. Defendant admits to allegations in paragraph 32.
9.Defendant denies all allegations in paragraphs 34, 35, 36, 37 and 38.
10. Defendant denies having sufficient knowledge or information to form a belief as to
the allegations contained in Paragraph 33 of the complaint, and thereupon denies said
allegations.
Third Cause of Action
False Designation of Origin – 15 U.S.C. § 1125(a)
11.Defendant admits to allegations in paragraph 39.
12.Defendant denies all allegations in paragraphs 40, 41, 42, 43, and 45.
13. Defendant denies having sufficient knowledge or information to form a belief as to
the allegations contained in Paragraph 44 of the complaint, and thereupon denies said
allegations
Fourth Cause of Action
Common Law Trademark Infringement
14. Defendant admits to allegations in paragraph 46.
15. Defendant denies all allegations in paragraphs 47, 48, 49, 50 and 51.
Fifth Cause of Action
Common Law Unfair Competition
16. Defendant admits to allegations in paragraph 52.
17. Defendant denies all allegations in paragraphs 53, 54, 55, 56 and 57.
Wherefore, defendant prays
1. The court enter judgement to dismiss this complaint
2. The defendant be awarded all costs incurred herein; and
3. The defendant be awarded such other and further relief as the court may deem
just.
Signed this 20th day of
April 2017
(Signature of Lisa Howard)
Lisa Howard, Esq.
Howard & Mills, P.C.
123 Main Street
Charlotte, NC 28277
UNITED STATES DISTRICT COURTEASTERN DISTRICT OF MICHIGAN
___________________________________________
SWEET LORRAINE’S SYSTEMS, LLC.1100 Snarl Avenue, Suite 310Detroit, MI 42330
Plaintiff, REQUEST FOR INSPECTION
v. Index No. 2013-77569
SWEET LORRAINE’S BAKERY, LLC.220 West BoulevardCharlotte, NC 28277
Defendant.___________________________________________
To: Marsha Jabber, Attorney of record for the plaintiff Sweet Lorraine’s Systems,
LLC., in the above styled and numbered clause
Pursuant to Rule 34 of the Federal Rules of Civil Procedure, Sweet Lorraine’s
Bakery, LLC., defendant in the above cause, requests that Sweet Lorraine’s Systems,
LLC., plaintiff in the above cause, produce for inspection and copying by Sweet
Lorraine’s Bakery, LLC., within thirty (30) days of service hereof or at such other time as
may be agreed upon by counsel for the parties, originals or legible copies of the
documents and electronically stored information in the formats specified below
requested herein. You are also requested to serve upon defendant within thirty (30)
days after service of this request a written response in accordance with Rule 34 of the
Federal Rules of Civil Procedure.
1. All statements of the client, Christine Donnelly and/or any principal, agent,
employee or representative or anyone thought to be a principal, agent, employee
or representative of Sweet Lorraine’s Bakery, LLC.
2. All agreements, documents, electronically stored information and reports that
constitute all communication in any forms with Sweet Lorraine’s Bakery, LLC by
Sweet Lorraine’s Systems, LLC.
3. All agreements, documents, electronically stored information and reports
showing Sweet Lorraine’s Systems, LLC, showing but not limited to all bank and
financial information from January 2011 to present.
4. All agreements, documents, electronically stored information and reports
showing all actual incidents of confusion by consumers.
5. All agreements, documents, electronically stored information and reports
showing proof of all methods and sources in which products are advertised by
Sweet Lorraine’s Systems.
6. All agreements, documents, electronically stored information and reports
showing how all sales by Sweet Lorraine’s Systems are sold.
7. All agreements, documents, electronically stored information and reports
showing all products offered by Sweet Lorraine’s Systems
8. All agreements, documents, electronically stored information and reports that
show all damages caused to Sweet Lorraine’s Systems, LLC by intentional acts
on behalf of Sweet Lorraine’s Bakery, LLC.
9. All company logos and motifs as used by Sweet Lorraine’s Systems, LLC
10.Photos and Photo documented proof to represent the trade dress of Sweet
Lorraine’s Systems, LLC.
11.Any other related documents, agreements, business memorandums such as but
not limited to menus, letterhead, business card and other verification of the like to
prove the similarities in the said infringement.
Signed this 20th day of
April 2017
(Signature of Lisa Howard)
Lisa Howard, Esq.
Howard & Mills, P.C.
123 Main Street
Charlotte, NC 28277
TRIAL BRIEF IN SUPPORT OF DEFENDANTS MOTION TO EXCLUDE
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SWEET LORRAINE’S SYSTEMS, LLC.
v.
SWEET LORRAINE’S BAKERY, LLC
Index No. 2013-77569
UNITED STATES DISTRICT COURTEASTERN DISTRICT OF MICHIGAN
___________________________________________
SWEET LORRAINE’S SYSTEMS, LLC.1100 Snarl Avenue, Suite 310Detroit, MI 42330
Plaintiff, TRIAL BRIEF IN SUPPORT OF
v. DEFENDANTS MOTION TO
SWEET LORRAINE’S BAKERY, LLC. EXCLUDE220 West BoulevardCharlotte, NC 28277 Index No. 2013-77569
Defendant.___________________________________________
TRIAL BRIEF IN SUPPORT OF DEFENDANTS MOTION TO EXCLUDE
Introduction
Sweet Lorraine’s Services, LLC. sues as plaintiff in the above captioned case against
Sweet Lorraine’s Bakery, LLC, defendant. Alleging Sweet Lorraine’s Bakery, LLC has
knowingly and willingly committed the acts of Trademark Infringement – 15 U.S.C. §
1114, Federal Trademark Dilution – 15 U.S.C. § 1125(c), False Designation of Origin –
15 U.S.C. § 1125(a), Common Law Trademark Infringement and Common Law Unfair
Competition.
At the onset of this litigation we prepared and served a Rule 34 Request for Inspection
on the Plaintiff’s counsel that demanded the Plaintiff provide and all statements of our
client Ms. Donnelly. Additionally, the Plaintiff should have been disclosed this
information pursuant to Rule 26(a)(1)(A)(ii) of the Federal Rules of Civil Procedure. The
Plaintiff failed to disclose this information to us within the time frame as was ordered by
the court, however had it in their possession since before the case had been brought to
court for litigation. Plaintiff’s counsel knowingly failed to disclose this information and
tried to withhold evidence from being inspected until one week prior to the court trial.
We are asking the court that pursuant to Rule 37 (c)(1) and Rule 37 (d)(1)(A)(ii) of the
Federal Rules of Civil Procedure that this piece of evidence is suppressed based on
failure to deliver evidence within the deadlines as ordered by this court and in an
attempt for an unfair trial due to not allowing us to inspect documents as set forth in the
Federal Rules of Civil Procedure as mentioned above.
Statement of Facts
Eight months ago, Ms. Donnelly sought the help of Howard & Mills, PC regarding
incorporation of her family owned business Sweet Lorraine’s Bakery, LLC out of
Charlotte, NC. This bakery specializes in French and Italian-inspired pastries, cakes,
cookies and artisan breads. This business is a one store location. They feature a daily
menu, create special order occasion cakes and have a website, but does not offer any
sales through the online marketplace. All advertising is done through Facebook, Twitter,
their webpage and by word of mouth.
Two months ago, Ms. Donnelly was contacted by Mr. Greg Sawyer. Mr. Sawyer and his
wife operate Sweet Lorraine’s Café and Bar in Detroit and have two locations. Mr.
Sawyer is the vice president of Sweet Lorraine’s Systems, LLC in Detroit, MI. Mr.
Sawyer’s Café and Bar is a restaurant that specializes in American fare and includes
some baked goods on their menu. The Café and Bar offers a website in which they sell
salad dressings and apparel that are sold throughout the country. Mr. Sawyer recently
began pursuing a new franchise called “Sweet Lorraine’s Mac n’ Cheez Kitchen” and
currently have two locations open in Detroit suburbs and allegedly had been
approached by an individual from North Carolina regarding expanding into North
Carolina, however; the exact location was not mentioned.
Mr. Sawyer contacted Ms. Donnelly because he and his wife have a trademark on the
name “Sweet Lorraine’s” for all restaurants, catering and baking services in the United
States. This trademark has been confirmed with the United States Patent and
Trademark Office. Mr. Sawyer demanded our client, Ms. Donnelly to change the name
of her business or he would commence a lawsuit against if she does not follow his
demands.
Ms. Donnelly was advised not to change the name of her business based upon previous
court rulings in this district, we feel Ms. Donnelly has not infringed the trademark of Mr.
Sawyer.
Two months following this conversation, Ms. Donnelly received an email from Mr.
Sawyer’s attorney, Marsha Jabber. Attached to the email was a Summons and
complaint against Sweet Lorraine’s Bakery, LLC, which was filed in Wayne County
Circuit Court in the State of Michigan. Ms. Donnelly nor any employee of Ms. Donnelly
were personally served with this summons and complaint, nor does it appear there had
been any attempt of legitimate service of process. Lastly, it appears Mr. Sawyer’s
attorney wrongly filed this court in Michigan State Court, not Federal District Court.
Ms. Donnelly was just recently granted permission to remove this case to the United
States District court because it had originally been filed in the wrong jurisdiction.
Argument
Trademark Infringement – 15 U.S.C. § 1114
In Mr. Sawyer’s claim, item 24, he claims (his business is) “highly distinctive and
arbitrary.” A few examples of arbitrary marks are EXXON, Kodak and Apple. When
people hear these words, these words are not related at all to the products they
promote, but almost everyone knows Kodak sells cameras and things related to
photography in general. In this world, there are probably a very large number of people
named Lorraine. There are also a great number of bakeries and bars. Just because
someone names their establishment the same name five states away, does not mean it
will cause any confusion. The main idea of trademark infringement is to cause confusion
among consumers.
Mr. Sawyer further notes the “Trademark is confusingly similar”, and goes on to state
Ms. Donnelly “intentionally and knowingly” had been using his trademark name of
Sweet Lorraine’s to cause confusion. This is incorrect. In fact, there had been not one
actual incident of confusion between any consumers. Ms. Donnelly had not even come
to know about another “Sweet Lorraine’s” until Mr. Sawyer had first contacted her,
which she immediately sought legal assistance from counsel of Howard & Mills, PC.
When deciding if one has committed trademark infringement, under 15 U.S.C 1114(1)
there are eight factors in which mainly determine if use of a trademark causes
confusion. Those eight factors are
1. The strength of the plaintiff’s mark;
2. The relatedness of the service;
3. The similarity of the marks;
4. The evidence of actual confusion;
5. The marketing channels used;
6. The likely degree of purchaser care;
7. The defendant’s intent in selecting the mark; and
8. The likelihood of expansion of the product lines.
In the case of Champions Golf Club, Inc. v. Champions Golf Club, Inc., 78 F.3d 1111
(6th Cir. 1996) both owners of these golf clubs were named the same name, and used
the same ways to market and promote their businesses. The court ruled that there was
no infringement because even though they both sold golf memberships and were
named the same name, consumers did not confuse them. The two business owners
were not in the same geographic location. These two companies had different buildings,
course layout, and even though there were a few known acts of confusion, it was not
sufficient to the court because the confusion was not between consumers. The court
also found there was no actual intent on the behalf of either party to make others
believe they were affiliated with each other or trying to take business from the other in a
deceitful or fraudulent manner.
Even though Sweet Lorraine’s Bar and Café and Sweet Lorraine’s Bakery use the same
root words of Sweet Lorraine’s, they are completely different. Logically When one sees
the words café or bar they assume the business sells beverages, not cakes. The two
businesses are in completely different states and geographic locations. The products
are very different, advertise differently and sell their products differently. Mr. Sawyer
advertises sells his products through internet sales, whereas Ms. Donnelly only
advertises her services online. Sales through Ms. Donnelly’s business are done only by
people personally coming to her store and her products are well known by the local area
in which her business is located. Based upon these facts and comparison of the law at
hand, confusion is not likely, and to date it has been proven that there had never been
an actual incident of confusion. In the case Champions Golf Club, Inc. v. Champions
Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996), there had been a few isolated incidents of
confusion, but did not show a great enough significance in this court to hold that a
likelihood of confusion exists because people are familiar with each different
establishment due to the level of purchaser care.
Federal Trademark Dilution – 15 U.S.C. § 1125(c)
Mr. Sawyer claims Ms. Donnelly has committed Federal Trademark Dilution – 15 U.S.C.
§ 1125(c). Trademark dilution is where you are using a name intentionally to make the
other person’s name less unique. In the case of Daddy's Junky Music Stores, Inc. v. Big
Daddy's Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) The district court found that the
“Daddy’s Music Store” and the “Daddy’s” marks are arbitrary marks because daddy
does not relate to music or musical instruments, however; The U.S. Patent & Trademark
Office revealed fifteen registered marks with the same phrase of “Daddy’s” and another
three marks pending registration. The mark “Daddy’s” alone is therefore weakened due
to the dilution of the mark. This is similar to Sweet Lorraine’s. It’s obvious Lorraine is a
common name that many women are named. Most people also associate sweets such
as cakes and pies to being sweet. Simply because Lorraine is a common name, it still
does not prove the use of the same root name is enough to cause a likelihood of
confusion. In the case of Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music
Ctr., 109 F.3d 275 (6th Cir. 1997) These two businesses both used the root name
“Daddy’s” and both sold musical instruments. These two businesses were in the same
geographic location, and there still had not been actual confusion between the two
businesses. Again, people knew the difference between the two different businesses
despite the same root word of “Daddy’s” and their level of purchaser care when
spending money.
False Designation of Origin – 15 U.S.C. § 1125(a)
In this cause of action, Mr. Sawyer is again alleging confusion amongst consumers. The
court would require Mr. Sawyer to prove with financial records showing he lost revenue
because of Ms. Donnelly’s business and prove incidents of actual confusion. To my
knowledge there has been none, and the case of Champions Golf Club, Inc. v.
Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996) there had been actual acts of
confusion, however there had only been a few isolated incidents and they weren’t by
consumers, the confusion was by golf ball suppliers. The court ruled there had not been
any infringement. I also feel since this case was held in the same court district, using
this case as primary law and holding mandatory authority, the court should also rule the
same way.
Common Law Trademark Infringement
In this action, once again, Mr. Sawyer is claiming that Ms. Donnelly caused confusion
amongst consumers, and on the record, to date there has been none. Mr. Sawyer
needs to prove to the court that there has been actual confusion, and prove that he has
lost revenue because Ms. Donnelly has allegedly used his trademark to confuse
consumers because there has been no confusion.
Common Law Unfair Competition
This cause of action is further alleging that Ms. Donnelly has knowingly and intentionally
used the mark “Sweet Lorraine’s” to intentionally confuse buyers and defraud
consumers by making them believe she is affiliated with Mr. Sawyer and knowingly
benefit financially from Mr. Sawyers hard work and reputation. This is not accurate
whatsoever, and the evidence will more than adequately prove this.
Conclusion
Based upon the facts herein, and upon counsel of the defendant knowingly and willingly
attempting to withhold documents required for inspection under Rules 26, 34, and 37 of
the Federal Rules of Civil Procedure, we request the court to exclude the statement of
Ms. Christine Donnelly due to willful failure to comply and intent to conduct an unfair trial
by withholding evidence.
Additionally, the defendant prays
1. The court enter judgement to dismiss this complaint
2. The defendant be awarded all costs incurred herein at the expense of the
plaintiff; and
3. The defendant be awarded such other and further relief as the court may deem
just.
Signed this 20th day of
April 2017
(Signature of Lisa Howard)
Lisa Howard, Esq.
Howard & Mills, P.C.
123 Main Street
Charlotte, NC 28277
Portfolio Reflection PLEG235
This project has been a lengthy challenge. Through completion of this project new
things are learned each step of the way, and this builds upon everything we have
learned to make our knowledge even greater.
Through completion of this project I have learned many how to draft many different legal
documents. I also learned how to research more ways through the use of secondary
sources, and how to find local civil rules. We continue to build our knowledge of
terminology and formatting of legal documents in each class.
I can apply what I have learned in this class to be more successful in the workforce
because I have already learned the terminology and writing techniques associated with
how to correctly draft legal documents. I also have learned that we must follow rules of
procedure.
My work process has changed because I have learned that if I am frustrated, I know
that I can always ask for help. In previous classes I had not been so willing to do this,
but I found asking for help is a lot less stressful, and it help you gain a better
understanding.
If I had to complete projects like this in the future I would try to always have a backup
way to get online to access assignments or documents. I was behind a lot of this
session because of weather related incidents that were unavoidable and if I had a way
to access the internet in different ways, or more options I may have done a better job
than I did. I also will continue to request the assistance of an instructor if I don’t
understand something, this was the best that had helped me this course.
The advice I would give to a new student just starting this project is to always try to get
work done when it is first assigned because things can happen that are totally out of our
control sometimes and we cannot access our work. When we get behind in work, it is
extremely difficult to get caught back up. Another bit of advice is to always ask the
instructor if something isn’t clear. I have received a lot of help from the instructor. I also
suggest saving documents that are needed to your computer so you can access them
when you have no way to access the internet. This was something that I had not done,
and I had no way to access important articles I needed to do my work while my power
and internet were taken out by a windstorm. It would have been helpful if I had some of
these documents printed, or a way to access them on my phone.
All the program outcomes were met fully through the completion of this project. We
constantly learn new legal terminology, new ways to research law and how to draft legal
documents, and everything we have learned in this course, we communicate in our
legal writings.
Overall this class has been a great class I learned a lot from. I know this class will be
used in my new legal profession. Some parts of this course were very challenging, but it
is key to remember why you wanted your degree to begin with. Dreams can become a
reality and you can have and be anything you want if you try and want it bad enough.
Life isn’t easy, but usually what is easy isn’t worth it. I know my degree with be worth
every effort and struggle I have had.