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NRRM, LLC v. Kingstar Holdings, LLC

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

October 30, 2017

NRRM, LLC d/b/a/ CARSHIELD, Plaintiff,
v.
KINGSTAR HOLDINGS, LLC, et al., Defendants.

          MEMORANDUM AND ORDER

          PATRICIA L. COHEN, UNITED STATES MAGISTRATE JUDGE.

         This matter is before the Court on the motion to dismiss filed by Defendants Kingstar Holdings, LLC and Caresure LLC.[1] (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).

         I. Factual and Procedural Background

         The 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.”[2] (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).

         Like 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 ¶ 30).

         On June 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.).

         II. Legal Standard

         A 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).

         On a 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)).

         III. Discussion

         Defendants 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.

         To 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).

         “[L]ikelihood 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 ...

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