United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM AND ORDER
CATHERINE D. PERRY, UNITED STATES DISTRICT JUDGE
Roofpros, Inc., and Web.com Group, Inc., used plaintiff John
Beal, Inc.'s tradename and logo in their online
advertising to solicit business from homeowners who believed
they were doing business with and requesting a quote from
plaintiff, a roofing contractor, when in fact they were not.
Because plaintiff has sufficiently pled a claim of trademark
infringement in Count I of its amended petition, I will deny
Web.com's motion to dismiss that claim. Plaintiff fails
to allege sufficient facts, however, to support its claim of
tortious interference with business expectancies raised in
Count II. I will therefore grant Web.com's motion to
dismiss to the extent it is directed to that state law claim.
seeks to dismiss plaintiff's amended petition under
Fed.R.Civ.P. 12(b)(6) for failure to state a
claim. When reviewing a Rule 12(b)(6) motion to
dismiss, I assume the allegations in the complaint to be true
and construe the complaint in plaintiff's favor. See
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555-56 (2007);
Huggins v. FedEx Ground Package Sys., Inc., 592 F.3d
853, 862 (8th Cir. 2010); Anzaldua v. Northeast Ambulance
& Fire Prot. Dist., 978 F.Supp.2d 1016, 1021 (E.D.
Mo. 2013). To survive a motion to dismiss, the complaint need
not contain “detailed factual allegations, ” but
it must contain facts with enough specificity “to raise
a right to relief above the speculative level.”
Twombly, 550 U.S. at 555. The issue in determining a
Rule 12(b)(6) motion is not whether the plaintiff will
ultimately prevail, but whether the plaintiff is entitled to
present evidence in support of the claim. See Skinner v.
Switzer, 562 U.S. 521, 529-30 (2011) (quoting
Scheuer v. Rhodes, 416 U.S. 232, 236 (1974)).
the Court ordinarily does not consider matters outside the
pleadings when ruling a motion to dismiss, see Fed.
R. Civ. P. 12(d), it may consider exhibits attached to the
complaint and documents that are necessarily embraced by the
pleadings. Mattes v. ABC Plastics, Inc., 323 F.3d
695, 697 n.4 (8th Cir. 2003). The Court may also consider
public records. Levy v. Ohl, 477 F.3d 988, 991 (8th
John Beal, Inc., is a roofing contractor that does business
in Illinois and Missouri. Defendants Roofpros and Web.com
conduct business through the internet.
have used “John Beal Roofing” and the John Beal
logo in their online advertising to solicit business from
homeowners who believe they are requesting a quote from
plaintiff. Web.com sells the leads generated from this online
advertising to non-Beal roofing contractors, who then visit
the homes of these customers. The customers believe the
contractors are representatives of and/or are affiliated with
plaintiff when, in fact, they are small, unknown, and
financially irresponsible companies.
claims that it has lost existing and prospective customers
through defendants' deceptive business practices and
unauthorized use of its trademarked name and logo. Plaintiff
seeks injunctive relief for trademark infringement and
monetary damages for tortious interference with business
21, 2016, the United States Patent and Trademark Office
(USPTO) registered to plaintiff John Beal, Inc., the word
mark “John Beal” for use in the provision of
various building services, including roofing services. First
use of the mark was claimed to be in December
1989. The mark's designed logo was
registered to plaintiff on March 29, 2016, with a claimed
first use of October 2013.
claims that plaintiff did not have a registered trademark
before it filed its amended petition in May 2016 and,
further, that the conduct of which plaintiff complains
occurred in July 2015, which was prior to the time plaintiff
sought to register its mark. Web.com argues that, because
plaintiff lacked a registered mark at the time of the alleged
infringement, it is not a “registrant” under 15
U.S.C. § 1114(1) and cannot bring a claim of trademark
Lanham Act provides for separate causes of action for
infringement of registered and unregistered trademarks.
See 15 U.S.C. § 1114 (registered); 15 U.S.C.
§ 1125 (unregistered). Section 1114(1) protects only
registered trademarks and is available only to the
“registrant” of the mark. Accordingly, to the
extent plaintiff claims that Web.com infringed its mark(s) at
a time prior to their registration, such a claim cannot be
brought under 15 U.S.C. ...