Menudo International, LLC (the “Plaintiff”) filed a trademark infringement action on April 26, 2017 against In Miami Productions, LLC (“IMP”), a client of Jayaram Law.  The Plaintiff sought immediate relief in the form of a preliminary injunction to preserve the status quo and to prevent irreparable harm pending a final determination on the merits of its claims.  The allegedly infringing trademark relates to a group of male performers that were former members of the internationally renowned Puerto Rican boy band called Menudo. The group enjoyed widespread success throughout the late 1970s and 1980s, during which time Menudo appeared on television shows, films, and band-related merchandise.  The band performed with the likes of Michael Jackson and others.  The band continued its remarkable success until the group released its final album in 1996.

In 2014, IMP began working with former members of Menudo when they expressed their desire to return to music.  In 2015, IMP began to market and promote live performances by former Menudo members using the MENUDO trademark.  Over the past 3 years IMP has produced and promoted over eighteen concert events using the MENUDO trademark in the United States and throughout Latin America.  At some point in 2016, IMP applied to register the Menudo trademark with the Mexican trademark office. Shortly thereafter, the Plaintiff — claiming rights to the MENUDO trademark dating back to the 1970s — contacted IMP to express disapproval of the use of the Menudo name. In October 2016, the Plaintiff filed an opposition to IMP’s trademark application in Mexico, and on March 28, 2017, IMP filed a petition to cancel the Plaintiff’s registered trademark on the basis of fraud.

On June 5, 2017, IMP filed its answer, including affirmative defenses and counterclaims. IMP argued that this lawsuit, and in particular the Plaintiff’s motion for preliminary injunction, had no merit because Plaintiff is not using the Menudo trademark in commerce whereas IMP has used the mark for over two years.  Moreover, IMP argued that each of the Plaintiff’s attempts to register the trademarks has been cancelled or pending on a mere intent to use basis.  In sum, the Plaintiff contended that the MENUDO trademark has been in use since the 1970s and has been used continuously in commerce by the Plaintiff’s predecessors since 1995. For these reasons, the Plaintiff sought a preliminary injunction to cease IMP’s’ activities and to set aside any consumer confusion that has resulted therefrom.

At the end of a day-long evidentiary hearing that took place on October 3, 2017 before Judge Edwin Torres in the United States District Court for the Southern District of Florida, IMP’s counsel Vivek Jayaram argued, among other things, that the Plaintiff’s motion had to be denied because they waited nearly two years before seeking injunctive relief.  Mr. Jayaram relied heavily upon Wreal v. Amazon, an 11th Circuit case from 2016 that underscores the general principle that a plaintiff seeking injunctive relief must move quickly in order to successfully make a showing of irreparable harm.

On October 31, 2017, Judge Torres issued an opinion in which he denied the Plaintiff’s motion based in large part upon Wreal.  In ruling in favor of Jayaram Law’s client, IMP, the Court held the Plaintiff’s delay in seeking injunctive relief undermined its position that it had suffered irreparable harm.  IMP is represented by Vivek Jayaram, Johanna Hyman, and Doni Robinson from Jayaram Law, as well as local counsel Joshua Alhalel.

The case is Menudo International, LLC v. In Miami Productions, LLC, et. al., Case No. 17-cv-21559 (S.D. Fla.).