O'Reilly Automotive Stores, Inc. v. Bearing Technologies, Ltd.

MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM Amended Counterclaims

W.D. Mo.April 20, 2017

9587978v1 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF MISSOURI Southern Division O’REILLY AUTOMOTIVE STORES, INC., Plaintiff, v. BEARING TECHNOLOGIES, LTD., Defendant. : : : : : Case No. 6:16-cv-03102-REL [JURY TRIAL DEMANDED] MOTION TO DISMISS AMENDED COUNTERCLAIMS Plaintiff, O’Reilly Automotive Stores, Inc. (“O’Reilly”), moves the Court to dismiss all but one Counterclaims asserted by Defendant, Bearing Technologies, Ltd. (“Bearing”) in its Answer and Counterclaims to Plaintiff’s Amended Complaint, dated April 6, 2016 (ECF No. 80) for failure to state a claim on which relief can be granted. In support of its Motion, O’Reilly hereby incorporates its contemporaneously filed Suggestions In Support of Motion to Dismiss Amended Counterclaims (ECF No. 95) and states: 1. Count I of the Amended Counterclaims purports to assert a claim for “Federal False Designation of Origin” under Section 43(a) of the Lanham Act. (ECF No. 80 at pp. 18- 19.) It should be dismissed because it is barred by the doctrine of acquiescence as a matter of law. 2. Count II of the Amended Counterclaims purports to assert a claim for “Federal Unfair Competition” under Section 43(a)(1)(A) of the Lanham Act. (ECF No. 80 at pp. 19-20.) It should be dismissed because it is barred by the doctrine of acquiescence as a matter of law. 3. Count IV of the Amended Counterclaims purports to assert a claim for “Declaration of Cancellation of Trademark Registrations for Priority and Likelihood of Case 6:16-cv-03102-REL Document 94 Filed 04/20/17 Page 1 of 3 9587978v1 Confusion” under 15 U.S.C. §§ 1064 and 1119. (ECF No. 80 at pp. 21-22.) It should be dismissed because it is barred by the doctrine of acquiescence as a matter of law. 4. Count V of the Amended Counterclaims purports to assert a claim for “Unfair Competition” under Missouri common law. (ECF No. 80 at pp. 22-23.) It should be dismissed because it is barred by the doctrine of acquiescence as a matter of law. 5. Count VI of the Counterclaims purports to assert a claim for “Unfair Competition” under Ohio common law. (ECF No. 80 at pp. 24-25.) It should be dismissed because it is barred by the doctrine of acquiescence as a matter of law. 6. Count VII of the Counterclaims purports to assert a claim for “Deceptive Trade Practices” under Ohio Rev. Code § 4165.02. (ECF No. 80 at pp. 25-26.) It should be dismissed because it is barred by the doctrine of acquiescence as a matter of law. WHEREFORE, Plaintiff, O’Reilly Automotive Stores, Inc. respectfully requests the Court enter its Order dismissing Amended Counterclaims I-II, IV-VII asserted by Defendant, Bearing Technologies, Ltd. for failure to state a claim upon which relief can be granted and granting O’Reilly such other and further relief as the Court deems just and proper. Respectfully submitted, Kenneth A. Plevan (Pro Hac Vice) kenneth.plevan@skadden.com David M. Lamb (Pro Hac Vice) david.lamb@skadden.com SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP Four Times Square New York, New York 10036 Telephone: (212) 735-3000 Facsimile: (212) 735-2000 /s/ Jason C. Smith Jason C. Smith (Mo. Bar No. 57657) SPENCER FANE LLP 2144 East Republic Road, Ste. B300 Springfield, Missouri 65804 Telephone: (417) 888-1013 Facsimile: (417) 881-8035 jcsmith@spencerfane.com Attorneys for Plaintiff/Counterclaim Defendant O’Reilly Automotive Stores, Inc. Case 6:16-cv-03102-REL Document 94 Filed 04/20/17 Page 2 of 3 9587978v1 CERTIFICATE OF SERVICE The undersigned hereby certifies that on this 20th day of April, 2017, a true and accurate copy of the foregoing instrument was filed with the Court's electronic filing system, which sent notice of such filing to: Meredith M. Wilkes JONES DAY – CLEVELAND E-Mail: mwilkes@jonesday.com Miranda M. Sooter ARMSTRONG TEASDALE LLP-KCMO E-Mail: msooter@armstrongteasdale.com /s/ Jason C. Smith Case 6:16-cv-03102-REL Document 94 Filed 04/20/17 Page 3 of 3