Rhema Law Group Wins Preliminary Injunction in a highly publicized “PARIS BANH MI” trademark case in Orlando, Florida
IRVINE, Calif., April 16, 2021 – On behalf of its client, Paris Banh Mi, LLC, Rhema Law Group (“RLG”) is pleased to announce that it has prevailed in obtaining a preliminary injunction against the Defendants Paris Banh Mi & Tea Cafe, LLC and its owner Bruce Tran, in the Federal District court of Florida (Orlando).
Paris Banh Mi, LLC (“Paris Banh Mi”), which is owned by Hien Tran and his wife, Doan Nguyen, is a successful and rapidly growing chain of Cafe/Bakeries serving delicious Vietnamese style “Banh Mi” sandwiches, drinks, and baked goods. Paris Banh Mi opened its first location at the Mills 50 area near downtown Orlando on April 12, 2019 and now has nearly 10 stores with locations in Florida, Ohio, Texas and soon to be California. Paris Banh Mi obtained a federal trademark registration on its PARIS BANH MI mark in and around December 2019.
About a year after opening, around June 2020, Paris Banh Mi started experiencing customer confusion as a result of a directly competing Cafe/Bakery opening approximately ten (10) minutes down the same street and using the identical PARIS BANH MI name. This competing location was later revealed to be owned by the Defendants Paris Banh Mi & Tea Cafe, LLC and its owner, Bruce Tran (“Bruce Tran”).
In an effort to prevent further damage and protect the consumers from confusion, Paris Banh Mi retained RLG to bring a complaint for federal trademark infringement, unfair competition and related claims against the Defendants.
“We heard about John Tran and Rosalind Ong and their firm from their victory in the famous Quoc Viet Foods vs. VV FOODS case that also dealt with Vietnamese trademark terms like our case. When it came to trademark infringement cases, especially with Asian American businesses, we knew they were one of the best in the country at what they do so hired them,” stated Hien Tran, Owner of Paris Banh Mi.
Soon after filing the complaint, RLG aggressively pursued a motion for preliminary injunction against Defendants Paris Banh Mi & Tea Cafe, LLC and its owner Bruce Tran which, among other things, asked the Court to immediately stop the Defendants from continuing using the PARIS BANH MI mark during the pendency of the case. Both parties presented evidence in support of their cases for and against the preliminary injunction and oral arguments were held on March 25, 2021. On April 2, 2021, the Court rendered its decision and GRANTED Paris Banh Mi’s request for a preliminary injunction against the Defendants. Among other things, the Court required the Defendants to stop all use of the PARIS BANH MI mark on its store name, on its products, and on any marketing related to its Cafe/Bakery goods and services on or by May 1, 2021. It was a complete victory by Paris Banh Mi.
“Due to their nature, Preliminary Injunctions are pretty difficult to get in Federal Court because they often occur in the early stages of the case, without the benefit of discovery taken place yet,” stated John D. Tran, lead counsel. “In essence, the preliminary injunction hearing is akin to a small early trial on the merits of the case between the parties and the judge. Here, we took nothing for granted and presented strong evidence, including around 7-8 live witness testimony, to prove that Paris Banh Mi was the rightful owner of the mark and that likelihood of confusion was occurring as a result of the actions of the Defendants and that it was important to protect the public interest from confusion as a result of the Defendants’ continued infringing activities. We believe we had a strong case and are very pleased that the Judge saw it the same way.”
“We believe the result is very fair and we are so happy, of course,” stated Hien Tran.
A recent interview by the Orlando Sentinel on the preliminary injunction and updates on the case can be seen here:
RLG’s preliminary injunction team consisted of Partners John D. Tran, Rosalind T. Ong and also assisting was local counsel Jeremy Hogan, partner at the Orlando based firm, Hogan & Hogan.
Case Name: Paris Banh Mi, LLC vs. Paris Banh Mi & Tea Cafe, LLC, Bruce Tran, et. al.; 6:20-cv-01613-CEM-EJK (Orlando)