United States District Court, W.D. Missouri, Western Division
ORDER DENYING DEFENDANT'S MOTION TO
ROSEANN A. KETCHMARK, JUDGE UNITED STATES DISTRICT COURT.
the Court is Defendant's Motion to Dismiss. (Doc. 20.)
Defendant seeks dismissal of Plaintiff's Complaint in its
entirety pursuant to Federal Rule of Civil Procedure Rule
12(b)(6). Plaintiff filed Suggestions in Opposition. (Doc.
22.) Defendant then filed a reply. (Doc. 23.) For the reasons
stated below, the motion is DENIED.
offers a wide variety of market research, specializing in
customer experience, employee engagement, and brand services
- including surveys, reporting, actionable insights, and
analytics to companies and brands in the United States and
worldwide. (Doc. 1, ¶1). Plaintiff owns a federal
trademark for the mark SMG® and has used this trademark
and various other SMG trademarks for a number of years. (Doc.
1, ¶3). Plaintiff also operates the website www.smg.com.
(Doc. 1, ¶4). In the Complaint, Plaintiff alleges
Defendant improperly reserved and used the domain name
www.smg-insight.com and infringed upon Plaintiff's
trademark rights. (Doc. 1, ¶5).
brings the following claims against Defendant: trademark
infringement under the Lanham Act (Count I); unfair
competition under the Lanham Act (Count II); common law
unfair competition (Count III); and violation of the
Anti-Cybersquatting Consumer Protection Act (Count IV).
STANDARD OF REVIEW
defendant may move to dismiss a complaint under Federal Rule
of Civil Procedure 12(b)(6) for “failure to state a
claim upon which relief can be granted.” “To
survive a motion to dismiss, a complaint must contain
sufficient factual matter, accepted as true, to ‘state
a claim to relief that is plausible on its face.'”
Topchian v. JPMorgan Chase Bank, 760 F.3d 843, 848
(8th Cir. 2014) (quoting Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009)). “A claim has facial plausibility when
the plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Id. “The
essential function of a complaint under the Federal Rules of
Civil Procedure is to give the opposing party ‘fair
notice of the nature and basis or grounds for a claim, and a
general indication of the type of litigation
involved.'” Id. (quoting Hopkins v.
Saunders, 199 F.3d 968, 976 (8th Cir. 1999)). “The
well-pleaded facts alleged in the complaint, not the legal
theories of recovery or legal conclusions identified therein,
must be viewed to determine whether the pleading party
provided the necessary notice and thereby stated a claim in
the manner contemplated by the federal rules.”
Id. (quoting Parkhill v. Minn. Mut. Life Ins.
Co., 286 F.3d 1051, 1057-58 (8th Cir. 2002)).
“[I]t is axiomatic that a complaint may not be amended
by the briefs in opposition to a motion to dismiss.”
Morgan Distrib. Co., Inc. v. Unidynamic Corp., 868
F.2d 992, 995 (8th Cir. 1989). Under Federal Rule of Civil
Procedure 15(a)(2), “[t]he court should freely give
leave [to amend] when justice so requires, ” taking
into consideration the preference for affording parties an
opportunity to test their claims on the merits. See
Stoebner v. Opportunity Fin., LLC, 909 F.3d 219, 228
(8th Cir. 2018) (quoting United States ex rel. Roop v.
Hypoguard USA, Inc., 559 F.3d 818, 824 (8th Cir. 2009)).
Trademark Infringement and Unfair Competition (Counts
argues Plaintiff has failed to adequately plead facts
establishing a claim for trademark infringement under the
Lanham Act, unfair competition under the Lanham Act, and
common law unfair competition. All share the same essential
elements. Hain BluePrint, Inc. v. Blueprint Coffee,
LLC, No. 4:16-CV-1758-SNLJ, 2018 WL 6246984 at *4 (E.D.
Mo. Nov. 29, 2018). A plaintiff must allege facts showing
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).
Defendant does not challenge Plaintiff's trademark(s)
were valid and protectible. Instead, Defendant argues
Plaintiff has not sufficiently pleaded a likelihood of
confusion and Plaintiff has not alleged priority as to four
asserted marks. Regarding the issue of confusion, factors the
Court considers in determining likelihood of confusion
(1) the strength of the owner's mark; the similarity
between the owner's mark and the alleged infringer's
mark; (3) the degree to which the products compete with each
other; (4) the alleged infringer's intent to “pass
off” its goods as those of the trademark owner; (5)
incidents of actual confusion; and (6) the type of product,
its costs and conditions of purchase.
ZW USA, Inc. v. PWD Sys., LLC, 889 F.3d 441, 446
(8th Cir. 2018) (quoting Co-Rect Prods., Inc. v. Marvy!
Advert. Photography, Inc., 780 F.2d 1324, 1330 (8th Cir.
1985)). Here, Defendant argues Plaintiff has not adequately
pleaded a likelihood of confusion for all six of its marks.
The Court disagrees. Review of the Complaint demonstrates
Defendant has sufficient notice of the factors on which
Plaintiff relies to establish this element. Plaintiff
specifically relies on the strength of the mark and
similarities between marks (Doc. 1, ¶¶ 41, 43),
competition between the services offered (Doc. 1,
¶¶ 18, 20, 26, 29, 33, 47), and actual confusion
(Doc. 1, ¶ 49). The Court declines to make a finding on
the applicability of these factors to the instant case at
this time, as it is a fact-specific determination better
suited for summary judgment. See S & M Nutec, LLC v.
T.F.H. Publ'n, Inc., No. 03-01033-CV-W-NKL, 2005 WL
1224607 at *10 (W.D. Mo. May 23, 2005).
Defendant's priority argument, Plaintiff has alleged two
of the SMG marks were first used no later than 1999, the
doctrine of tacking will establish priority, and the mere
registration of a domain name creates no enforceable
trademark rights. (Doc. 1, ¶ 19); (Doc. 22, 8). Deciding
whether the marks are “legal equivalents” or
which Party has priority are factual questions better
reserved for summary judgment. Defendant's motion to
dismiss Counts I, II, and III is denied.