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John Beal, Inc. v. Roofpros, Inc.

United States District Court, E.D. Missouri, Eastern Division

December 27, 2016

JOHN BEAL, INC., Plaintiff,
v.
ROOFPROS, INC., et al., Defendants.

          MEMORANDUM AND ORDER

          CATHERINE D. PERRY, UNITED STATES DISTRICT JUDGE

         Defendants 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.

         Legal Standard

         Web.com seeks to dismiss plaintiff's amended petition under Fed.R.Civ.P. 12(b)(6) for failure to state a claim.[1] 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)).

         While 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 Cir. 2007).

         Background[2]

         Plaintiff John Beal, Inc., is a roofing contractor that does business in Illinois and Missouri. Defendants Roofpros and Web.com conduct business through the internet.

         Defendants 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.

         Plaintiff 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 expectancy.

         Discussion

         A. Trademark Infringement

         On June 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.[3] The mark's designed logo was registered to plaintiff on March 29, 2016, with a claimed first use of October 2013.[4]

         Web.com 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.[5] 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 infringement.

         The 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. ...


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