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GDM Enterprises, LLC v. Astral Health & Beauty, Inc.

United States District Court, W.D. Missouri, Western Division

September 30, 2019

GDM ENTERPRISES, LLC, Plaintiff,
v.
ASTRAL HEALTH & BEAUTY, INC., et al., Defendants

          ORDER

          STEPHEN R. BOUGH, UNITED STATES DISTRICT JUDGE.

         Before the Court are Defendants' Motion for Partial Summary Judgment Cancelling U.S. Trademark Registration No. 4, 541, 526 (Doc. #99) and Plaintiff's Motion to Strike Defendants' Motion for Reconsideration of Partial Summary Judgment, and Suggestions in Support (Doc. #103). For the following reasons, Defendants' Motion (Doc. #99) is GRANTED IN PART and DENIED IN PART, and Plaintiff's Motion (Doc. #103) is DENIED.

         I. Legal Standard

         Federal Rule of Civil Procedure 56(a) requires a court to grant a motion for summary judgment if 1) the moving party “shows that there is no genuine dispute of material fact” and 2) the moving party is “entitled to judgment as a matter of law.” A nonmoving party survives a summary judgment motion if the evidence, viewed in the light most favorable to the nonmoving party, is “such that a reasonable jury could return a verdict for the nonmoving party.” Stuart C. Irby Co. v. Tipton, 796 F.3d 918, 922 (8th Cir. 2015) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). While a plaintiff opposing summary judgment “may not simply point to allegations in the complaint, ” Robbins v. Becker, 794 F.3d 988, 993 (8th Cir. 2015) (internal quotation marks and citation omitted), the “standard for avoiding summary judgment” is “relatively lenient.” Amgen Inc. v. Conn. Ret. Plans & Trust Funds, 568 U.S. 455, 479-80 (2013) (citing Anderson, 477 U.S. at 248). The purpose of summary judgment “is not to cut litigants off from their right of trial by jury if they really have issues to try.” Hughes v. Am. Jawa, Ltd., 529 F.2d 21, 23 (8th Cir. 1976) (internal quotation marks omitted) (quoting Poller v. Columbia Broadcasting Sys., Inc., 368 U.S. 464, 467 (1962)).

         II. Background

         Considering the parties' statements of fact and supporting evidence in the light most favorable to Plaintiff as the non-moving party, the Court finds the relevant facts to be as follows:

         Plaintiff GDM Enterprises, LLC, and Defendants Astral Health & Beauty, Inc. and Astral Brands, Inc. are all companies involved in the cosmetic industry. Plaintiff owns the registered trademark for “PURE COSMETICS.” Plaintiff filed the application for the trademark on September 19, 2012, with the United States Patent & Trademark Office (“PTO”). The application was a use-based application under Section 1(a) of the Lanham Act, 15 U.S.C. § 1051(a). In its application, Plaintiff applied for registration of the trademark in International Classes 3, 4, 16, and 21. Ultimately, Plaintiff deleted International Classes 4 and 16 from the application, and the trademark registered for the product descriptions Plaintiff selected within International Class 3, Cosmetics and Cleaning Preparations; and International Class 21, Household Utensils.[1]

         Plaintiff alleges Defendants are infringing on Plaintiff's trademark by utilizing the confusingly similar brand name, “Pür Cosmetics.” The claims that remain active in Plaintiff's Second Amended Complaint are for trademark infringement under 15 U.S.C. § 1114(1), Count 1; federal unfair competition/false designation of origin under 15 U.S.C. § 1125(a), Count 4; and state common law unfair competition, Count 5. Defendants argue they cannot have infringed on Plaintiff's trademark because Plaintiff's trademark is invalid and must be canceled. Defendants bring two counterclaims-declaration of non-infringement, Counterclaim 1; and cancelation of U.S. trademark for PURE COSMETICS, Counterclaim 2.

         Early in the discovery period, Defendants moved for partial summary judgment on their Counterclaim 2 and Plaintiff's Count 1, arguing they could not have infringed on Plaintiff's trademark and that Plaintiff's trademark should be canceled. Defendants argued Plaintiff's trademark registration was procured by fraud and the trademark is void ab initio as a result of Plaintiff's failure to use the trademark in commerce prior to the filing date of the application. The Court denied Defendants' motion with respect to the cancellation argument in part based on the lack of development of the factual record. Because Plaintiff conceded in its briefing that certain product descriptions should be eliminated from the trademark registration based on lack of use prior to the application filing date, the Court instructed Plaintiff to clarify which product descriptions should be eliminated and invited the parties to conduct further motion practice. Defendants now move for partial summary judgment again on their Counterclaim 2 and Plaintiff's Count 1, arguing Plaintiff's trademark registration is void ab initio, or, in the alternative, that all but seven product descriptions must be stricken from the registration. Plaintiff argues that 37 product descriptions should remain part of the trademark registration.

         III. Discussion

         A. Cancelation of Trademark

         To apply for trademark registration under Section 1(a) of the Lanham Act, the trademark must be “used in commerce.” 15 U.S.C. § 1051(a)(1).

         The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce-

(1) on goods when-
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the goods are sold or transported in commerce[.]

15 U.S.C. § 1127. The trademark must be “in use in commerce as of the application date.” 37 C.F.R. § 2.34(a)(1)(i).

         1. ...


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