United States District Court, D. Arizona
A. TEILBORG, SENIOR UNITED STATES DISTRICT JUDGE
before the Court is Defendants' Motion to Dismiss. (Doc.
36). The Motion is fully briefed. Defendants sought oral
argument on the motion but because both parties submitted
memoranda discussing the law and facts in support of their
positions and oral argument would not aide the Court's
decisional process, the Court did not hold argument on the
motion. See e.g., Partridge v. Reich, 141 F.3d 920,
926 (9th Cir. 1998); Lake at Las Vegas
Investors Group, Inc. v. Pacific. Dev. Malibu Corp., 933
F.2d 724, 729 (9th Cir. 1991).
motion can be broken down into three arguments: 1) Plaintiff
fails to state a claim under any of its six causes of
action primarily because Plaintiff fails to show
a likelihood of confusion; 2) Plaintiff fails to state a
claim against Defendant Vatra because Plaintiff fails to make
any allegations against Defendant Vatra beyond the
allegations against Defendant Skunk; and 3) if the Court
denies the motion(s) to dismiss for failure to state a claim,
Defendants seek a more definite statement. The Court will
address each argument in turn.
following summary of the facts is taken from the complaint.
The Court notes that Defendants dispute many of these facts;
but, in deciding a motion to dismiss for failure to state a
claim, the Court must construe the facts alleged in the
complaint in the light most favorable to the Plaintiff and
the Court must accept all well-pleaded factual allegations as
true. See Shwarz v. United States, 234 F.3d 428, 435
(9th Cir. 2000).
uses the Skunk and Skunk Brand names to identify various
smoking-related accessories. (Doc. 1 at 3, ¶ 19).
Plaintiff has used the Skunk Brand trademark since 1999.
(Doc. 1 at 3-4, ¶ 21a). Plaintiff has secured several
U.S. Patent and Trademark Office trademark registrations of
Plaintiff's Skunk and Skunk Brand marks for
smoking-related accessories. (Doc. 1 at 3-4, ¶¶
alleges that Defendants sell smell-proof bags using the
“Skunk” name. (Doc. 1 at 6, ¶ 31). Plaintiff
alleges that Defendants use a design image of a skunk's
tail on Defendants products. (Doc. 1 at 6, ¶ 34).
Plaintiff alleges that Defendants sell the smell-proof bags,
including “vape cases”, to purchasers of
smoking-related products. (Doc. 1 at 6, ¶ 38). Plaintiff
alleges that Defendants were advertisers/exhibitors at the
Champs Tradeshow in Las Vegas, Nevada, in July 2018. (Doc. 1
at 6, ¶¶ 40-41), and at two other tradeshows
thereafter (Doc. 1 at 6-7, ¶¶ 43-44).
Motion to Dismiss the Six Claims in the Complaint
Failure to State a Claim
Court may dismiss a complaint for failure to state a claim
under Federal Rule of Civil Procedure 12(b)(6) for two
reasons: 1) lack of a cognizable legal theory and 2)
insufficient facts alleged under a cognizable legal theory.
Balistreri v. Pacifica Police Dep=t, 901 F.2d 696,
699 (9th Cir. 1990).
survive a 12(b)(6) motion to dismiss for failure to state a
claim, a complaint must meet the requirements of Federal Rule
of Civil Procedure 8(a)(2). Rule 8(a)(2) requires a
“short and plain statement of the claim showing that
the pleader is entitled to relief, ” so that the
defendant has “fair notice of what the . . . claim is
and the grounds upon which it rests.” Bell Atlantic
Corp. v. Twombly, 550 U.S. 544, 555 (2007) (quoting
Conley v. Gibson, 355 U.S. 41, 47 (1957)).
a complaint attacked for failure to state a claim does not
need detailed factual allegations, the pleader's
obligation to provide the grounds for relief requires
“more than labels and conclusions, and a formulaic
recitation of the elements of a cause of action will not
do.” Twombly, 550 U.S. at 555 (internal
citations omitted). The factual allegations of the complaint
must be sufficient to raise a right to relief above a
speculative level. Id. Rule 8(a)(2) “requires
a ‘showing,' rather than a blanket assertion, of
entitlement to relief. Without some factual allegation in the
complaint, it is hard to see how a claimant could satisfy the
requirement of providing not only ‘fair notice' of
the nature of the claim, but also ‘grounds' on
which the claim rests.” Id. (citing 5 C.
Wright & A. Miller, Federal Practice and Procedure
§1202, pp. 94, 95 (3d ed. 2004)).
8's pleading standard demands more than “an
accusation.” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (citing Twombly, 550 U.S. at 555). A
complaint that offers nothing more than naked assertions will
not suffice. To survive a motion to dismiss, a complaint must
contain sufficient factual matter, which, if accepted as
true, states a claim to relief that is “plausible on
its face.” Iqbal, 556 U.S. at 678. Facial
plausibility exists if the pleader pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged.
Id. Plausibility does not equal “probability,
” but plausibility requires more than a sheer
possibility that a defendant has acted unlawfully.
Id. “Where a complaint pleads facts that are
‘merely consistent' with a defendant's
liability, it ‘stops short of the line between
possibility and plausibility of entitlement to
relief.'” Id. (citing Twombly,
550 U.S. at 557).
case, Defendants argue:
Lanham Act Section 32 for registered marks and 43(a) for
unregistered ones prohibit the use of a mark that is likely
to cause confusion. 15 U.S.C. §§ 1114, and 1125(a);
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763
(1992) (“[L]iability under § 43(a) requires proof
of the likelihood of confusion.”). Thus, in order to
assert a valid trademark infringement claim, Plaintiff
BBK's Complaint is required to state the following
allegations with the requisite specificity: (1) Plaintiff
owns a valid, protectable trademark; and (2) Defendant SKUNK
uses a mark similar to Plaintiff's brand and Mark without
the consent of Plaintiff in a manner that is likely to cause
confusion among ordinary consumers as to the source,
sponsorship, affiliation, or approval of the goods.
Dep't of Parks & Recreation v. Bazaar Del Mundo
Inc., 448 F.3d 1118, 1124 (9th Cir. 2006). Here, the
Complaint does not adequately allege sufficient facts
establishing a plausible likelihood of confusion.
(Doc. 36 at 8-9).
As stated in the Defendants' Motion, the six causes of
action in the Complaint are share common elements. Motion at
9. See also, e.g., Interstellar Starship Servs. Ltd. v.
Epix, Inc., 184 F.3d 1107, 1110 (9th Cir.1999) (The
ultimate test for unfair competition is exactly the same as
for federal trademark infringement, that is “whether
the purchaser is likely to be deceived or confused by the
similarity of the marks.”).
(Doc. 39 at 6, n. 5).
the parties agree that the issue is whether Plaintiff has
adequately alleged “likelihood of confusion” to
state a claim. The Ninth Circuit Court of Appeals has
identified eight nonexclusive factors the Court should
consider in determining whether consumer confusion is likely:
(1) the strength of the plaintiff's mark; (2) the
proximity or relatedness of the goods; (3) the similarity of
the marks; (4) evidence of actual confusion; (5) marketing
channels used; (6) the type of goods and likely degree of
purchaser care; (7) defendant's intent in selecting the
mark; (8) likelihood of expansion of the product lines.
AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49
(9th Cir. 1979) (“Sleekcraft factors”).
Plaintiff need not allege, or prove, every
Sleekcraft factor. See Brookfield Commc'ns
v. West Coast Entertainment Corp., 174 F.3d 1036, 1054
(9th Cir. 1999).
motion to dismiss, Defendants argue Plaintiff fails to allege
3 of these factors: 3) similarity of the marks (Doc. 36 at
7); 5) marketing channels used (Doc. 36 at 10); and 6) type
of goods (Doc. 36 at 10). In the reply, Defendants argue
Plaintiff fails to allege 2 additional factors: 4) actual
confusion (Doc. 41 at 7-8); and 7) defendant's intent in
selecting the mark (Doc. 41 at 9). In reading Defendants'
motion and reply as a whole, the Court notes that Defendants
do not actually dispute whether Plaintiff has made an
allegation as to each of the factors, but rather
whether that allegation is plausible.