United States District Court, E.D. Missouri, Eastern Division
MEMORANDUM AND ORDER
PATRICIA L. COHEN, UNITED STATES MAGISTRATE JUDGE.
matter is before the Court on the motion to dismiss filed by
Defendants Kingstar Holdings, LLC and Caresure
(ECF No. 11). Plaintiff NRRM, LLC filed a memorandum in
opposition to Defendants' motion to dismiss. (ECF No.
15), and Defendants filed a reply brief in support of the
motion (ECF No. 20).
Factual and Procedural Background
facts, as alleged in the complaint, are as follows: Plaintiff
markets and sells vehicle service contracts under the marks
CARSHIELD and CARSHIELD.COM (collectively, “CarShield
marks”). (ECF No. 1 at ¶¶ 2-3). On November
29, 2016 and January 31, 2017, the United States Patent and
Trademark Office (PTO) issued to Plaintiff the standard
character marks “CARSHIELD.COM” and
“CARSHIELD” for “[v]ehicle service
contracts on vehicles manufactured by others for mechanical
breakdown servicing.” (Id. at ¶¶
18-19; ECF Nos. 1-3, 1-4). Plaintiff has continuously used
various CarShield marks since April 2016 and has devoted
substantial resources to marketing, advertising, and
promoting those marks. (ECF No. 1 at ¶¶ 23-24).
Plaintiff, Defendants market and sell vehicle services
contracts. (Id. at ¶1). On November 2 and
November 4, 2016, Defendants filed with the PTO applications
to register the word mark “CARSURE” and an
associated design mark (collectively, “CarSure
marks”). (Id. at ¶28, 29; ECF Nos. 1-7,
1-8). Defendants began using the CarSure marks in its
marketing and advertising in early 2017. (ECF No. 1 at ¶
14, 2017, Plaintiff filed its complaint alleging: (1)
trademark infringement under the Lanham Trademark Act of
1986, 15 U.S.C. § 1114; (2) trademark infringement and
unfair competition under the Lanham Trademark Act, 15 U.S.C.
§ 1125(a); and (3) trademark infringement and unfair
competition under Mo. Rev. Stat. §§ 417.005-417.066
and Missouri common law. (ECF No. 1). In response, Defendants
filed a Rule 12(b)(6) motion to dismiss Plaintiff's
complaint for failure to state a claim upon which relief can
be granted. (ECF No. 11). In support of their motion to
dismiss, Defendants assert that Plaintiff “has not
alleged sufficient facts to establish there is a likelihood
of confusion between the parties' respective
marks.” (ECF No. 12 at 2). Plaintiff responds that the
issue of likelihood of confusion is a question of fact that
cannot be determined on a motion to dismiss. (ECF No. 15).
Plaintiff further argues that, even if a motion to dismiss
were an appropriate vehicle for resolving the likelihood of
confusion, Plaintiff alleged sufficient facts to state a
claim for relief. (Id.).
motion to dismiss under Federal Rule of Civil Procedure
12(b)(6) tests the legal sufficiency of a complaint.
Fed.R.Civ.P. 12(b)(6). To survive a Rule 12(b)(6) motion to
dismiss for failure to state a claim, “a complaint must
contain sufficient factual matter, accepted as true, to
‘state a claim to relief that is plausible on its
face.'” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (quoting Bell Atlantic Corp. v. Twombly,
550 U.S. 544, 570 (2007)). A plaintiff need not provide
specific facts in support of its allegations, Erickson v.
Pardus, 551 U.S. 89, 93 (2007) (per curiam), but
“must include sufficient factual information to provide
the ‘grounds' on which the claim rests, and to
raise a right to relief above a speculative level.”
Schaaf v. Residential Funding Corp., 517 F.3d 544,
549 (8th Cir. 2008) (citing Twombly, 550 U.S. at 555
& n.3). “A pleading that offers ‘labels and
conclusions' or ‘a formulaic recitation of the
elements of a cause of action will not do.'”
Iqbal, 556 U.S. at 678 (quoting Twombly,
550 U.S. at 555).
motion to dismiss, the Court accepts as true all of the
factual allegations contained in the complaint, even if it
appears that “actual proof of those facts is
improbable, ” Twombly, 550 U.S. at 556, and
“draw[s] all reasonable inferences in favor of the
nonmoving party.” Torti v. Hoag, 868 F.3d 666,
671 (8th Cir. 2017) (quotation omitted). In addressing a
motion to dismiss, “[t]he court may consider the
pleadings themselves, materials embraced by the pleadings,
exhibits attached to the pleadings, and matters of public
record.” Mills v. City of Grand Forks, 614
F.3d 495, 498 (8th Cir. 2010) (citing Porous Media Corp.
v. Pall Corp., 186 F.3d 1077, 1079 (8th Cir. 1999)).
argue that Plaintiff fails to allege sufficient facts to
state a claim for trademark infringement or unfair
competition. More specifically, Defendants maintain that
Plaintiff's allegations do not establish a likelihood of
confusion between the parties' marks.
prevail on a claim of trademark infringement, “a
plaintiff must show that it has a valid, protectible mark and
that there is a likelihood of confusion between its mark and
the defendant's mark.” B&B Hardware, Inc.
v. Hargis Indus., Inc., 569 F.3d 383, 389 (8th Cir.
2009). See also 15 U.S.C. § 1114(1); 15 U.S.C.
§ 1125(a)(1)(A); Sensient Techs. Corp. v.
SensoryEffects Flavor Co., 636 F.Supp.2d 891, 898
(E.D.Mo. 2009) (affirmed by 613 F.3d 754 (8th Cir. 2010)
(trademark infringement claims pursuant to Missouri law
“substantially overlap” with the Lanham Act).
Likelihood of confusion exists when a defendant's use of
a mark is likely to confuse, deceive, or cause mistake among
an appreciable number of ordinary buyers as to the source of
or association between the parties' products or services.
See Duluth News-Tribune v. Mesabi Pub. Co., 84 F.3d
1093, 1096 (8th Cir. 1996).
of confusion is a factual question.” ConAgra, Inc.
v. George A. Hormel, & Co., 990 F.2d 368,
371 (8th Cir. 1993). When evaluating the likelihood of
confusion, courts consider the following six factors:
1) the strength of the plaintiff's mark; 2) the
similarity between the plaintiff's and defendant's
marks; 3) the degree to which the allegedly infringing
product competes with the plaintiff's goods; 4) the
alleged infringer's intent to confuse the public; 5) the
degree of care ...