United States District Court, N.D. Illinois, Eastern Division
JOSE ANTONIO JAIMES BRITO, JAVIER DE LA PAZ EVANGELISTA, CREACIONESINNOVADORAS EN EXHIBICION S.A. DE C.V., and MEXCELANIUS PRODUCTS CORPORATION, Plaintiffs,
KARINA URBINA D/B/A DEL REY, and MOISES BRITO, Defendants.
MEMORANDUM OPINION AND ORDER
CASTILLO CHIEF JUDGE.
Antonio Jaimes Brito ("Jose Brito"), Javier De La
Paz Evangelista ("Evangelista"), Creaciones
Innovadoras en Exhibicion S .A. de C.V.
("Creaciones"), and Mexcelanius Products
Corporation ("Mexcelanius") (collectively,
"Plaintiffs") filed this trademark and copyright
infringement suit against Karina Urbina ("Urbina"),
who Plaintiffs allege is doing business as "Del
Rey," and Moises Brito (collectively,
"Defendants"). (R. 1, Compl.) Defendants move to
dismiss for improper venue pursuant to Federal Rule of Civil
Procedure 12(b)(3). (R. 27, Am. Mot.) For the reasons stated
below, the motion is denied.
is the name of a Mexican delicacy sauce that contains dozens
of ingredients and is carefully prepared over several hours
or even days. (R. 1, Compl. ¶ 10.) The complex process
of making mole involves balancing the spiciness, sweetness,
and sourness of ingredients, as well as adding thickening
agents and other ingredients for flavor enrichment.
(Id. ¶ 11.) Ingredients can include but are not
limited to chili peppers, spices, dried fruits, sugar,
chocolate, sour tomatillos, nuts, and aromatic cloves.
(Id.) The ingredients are stirred together in a
heated cauldron, eventually producing a rich and thick
mixture that is poured over a variety of Mexican dishes,
often turkey and chicken dishes. (Id. ¶ 12.)
Mole is tied to Mexican culture and is often considered the
"national dish" of Mexico. (Id. ¶
14.) Over the last fifteen years, this delectable sauce has
become increasingly popular in the United States.
(Id. ¶ 15.)
late 1990s, Jose Brito's uncle, Javier Brito, created the
"Del Rey" mole recipe, the "DEL REY" name
and trademark, and business operations for manufacturing mole
in Iguala, a city in the Mexican state of Guerrero.
(Id. ¶ 16.) After two decades, DEL REY became a
venerated brand of mole in Mexico. (Id. ¶ 17.)
In 2000, Javier Brito designed a label for DEL REY mole
containers featuring a large maroon banner with the stylized
name "Del Rey" in gold and a crown on top of the
"e" in "Rey," as follows:
( Id. ¶ 18.)
2001, Javier Brito, operating together with Fabricas De Mole
Rey, S.A. de C, V. ("Fabricas"), registered the DEL
REY trademarks with the Mexican Institute of Industrial
Property, which is Mexico's trademark office.
(Id. ¶ 19.) For fifteen years, Javier Brito
spent significant money and effort developing, establishing,
and expanding the DE LREY mole product and brand, which
achieved success in Mexico. (Id. ¶ 20.)
2013, after witnessing DEL REY mole's popularity within
Mexico, Jose Brito and Evangelista (the "Owner
Plaintiffs") decided to distribute DEL REY mole in the
United States. (Id. ¶ 22.) In My 2014, the
Owner Plaintiffs allegedly purchased Fabricas for $460, 000,
including Fabricas' customer lists, equipment, recipes,
manufacturing techniques, and the DEL REY trademarks.
(Id. ¶ 23.) The Owner Plaintiffs then added
elements to the DEL REY label's artwork, including an
original turkey design at the top left of the label, a ribbon
containing a crown and the words "special
especial," and a gold banner containing either the word
"TELOLOAPAN" or "IGUALA, GUERRERO" in
maroon letters at the bottom of the label, as follows:
(Id. ¶ 24.) The Owner Plaintiffs filed
copyright registrations for the turkey and crown designs
depicted above. (Id. ¶ 25.) Since 2014, the
Owner Plaintiffs have directed the manufacturing and labeling
of DEL REY mole in Mexico through their exclusive
manufacturer, Creaciones, which is a company owned and
operated by the Owner Plaintiffs' wives. (Id.
¶ 26.) The Owner Plaintiffs and Creaciones also
registered DEL REY mole with the U.S. Food and Drug
Administration ("FDA") and complied with the
FDA's mandatory chemical testing. (Id. ¶
December 2014, the Owner Plaintiffs allegedly entered into a
distribution agreement with Defendant Moises Brito-Javier
Brito's brother, (R. 28-1, Moises Brito Aff. at 2)-and
Eric Bryan ("Bryan") to distribute DEL REY mole in
the United States. (Id. ¶ 28.) Pursuant to the
distribution agreement, the Owner Plaintiffs sold DEL REY
mole to Moises Brito and Bryan at a discounted price, and
then Moises Brito and Bryan could then distribute and sell
DEL REY mole to retail stores and consumers in Illinois and
other locations throughout the United States. (Id.
¶¶ 28-29.) Moises Brito and Bryan, however,
allegedly failed to pay the Owner Plaintiffs for several
shipments of DEL REY products they had received.
(Id. Â¶ 30.) The Owner Plaintiffs then allegedly
terminated Moises Brito and Bryan as distributors in October
2016 and granted Mexcelanius the exclusive rights to
distribute DEL REY mole in the United States. (Id.
¶¶ 30-31.) Since 2014, the Owner Plaintiffs have
sold DEL REY mole in Chicago, Georgia, Texas, and New York,
and they intend to expand their business to other locations
in the United States. (Id. ¶32.)
is Moises Brito's wife, (R. 28-1, Moises Brito Aff. at
4), and she allegedly had direct access to DEL REY products
and "know-how" through Moises Brito, (R. 1, Compl.
¶ 34). Plaintiffs allege that from February 2016 to May
2017, Urbina filed several trademark applications and other
documents with the United States Patent and Trademark Office
claiming rights in the Owner Plaintiffs' trademarks.
(Id. ¶¶ 35-45.) Plaintiffs claim that
Urbina, with the assistance of Moises Brito, made and
distributed mole using "counterfeit" DEL REY labels
and packaging. (Id. ¶¶ 46-47, 54-56.)
Plaintiffs allege that Defendants intentionally copied the
Owner Plaintiffs' trademarks to deceive consumers into
believing that Defendants' mole was authentic DEL REY
mole even though Defendants produce and sell
"counterfeit" and "inferior" mole.
(Id. ¶¶ 48, 54.) Defendants allegedly sell
their counterfeit mole in Georgia and Illinois, including in
at least nine different Chicago retail stores. (Id.
¶ 54.) Plaintiffs claim that several Chicago stores have
expressed confusion as to "what is and what is not
authentic DEL REY mole," and that Chicago stores have
"refused to buy and sell the Owner Plaintiffs' mole
because they sell [Defendants'] infringing
products," (Id. ¶¶ 55-56.) Urbina has
also allegedly created social media pages holding herself out
as the authentic source of DEL REY products in Atlanta.
(Id. ¶¶ 58-59.) Plaintiffs claim that
Defendants' conduct has diverted customers and tens of
thousands of dollars in sales. (Id.