Springboards to Education Inc V Teach For America Inc

Motion to Dismiss for Failure to State a Claim

N.D. Tex.January 11, 2017

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF TEXAS DALLAS DIVISION SPRINGBOARDS TO EDUCATION, INC. § § Plaintiff, § § v. § Case No. 3:16-CV-02435-L § TEACH FOR AMERICA, INC., § § Defendant. § DEFENDANT TEACH FOR AMERICA, INC.’S MOTION TO DISMISS AND BRIEF IN SUPPORT LEWIS, BRISBOIS, BISGAARD, & SMITH, LLP Jonathan D. Goins (admitted pro hac vice) GA Bar No. 738593 1180 Peachtree Street NE, Suite 2900 Atlanta, Georgia 30309 Telephone (404) 348-8585 Facsimile: (404) 467-8845 E-mail: Jonathan.Goins@lewisbrisbois.com Amber R. Pickett TX Bar Number 24058046 2100 Ross, Suite 2000 Dallas, Texas 75201 Telephone: (214) 722-7100 Facsimile: (214) 722-7111 E-mail: Amber.Pickett@lewisbrisbois.com COUNSEL FOR DEFENDANT TEACH FOR AMERICA, INC. Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 1 of 20 PageID 83 i TABLE OF CONTENTS Page STANDARD OF REVIEW .............................................................................................................2 ARGUMENTS & AUTHORITIES ............................................... Error! Bookmark not defined. A. Plaintiff's Complaint On All Claims Should Be Dismissed Generally Because It Fails To Allege Plausibly That TFA Actually Used In Commerce Any of Plaintiff's Trademarks. ..............................................................4 B. Plaintiff's Complaint Involving Federal Trademark Counterfeit Should Be Dismissed Because TFA Did Not Replicate Any (i) Trademark of Plaintiff or (ii) Genuine Article of Plaintiff. ..........................................................................5 C. Plaintiff's Complaint Involving Federal and Common Law Trademark Infringement and Unfair Competition Should Be Dismissed. .................................9 D. Plaintiff's Complaint Regarding its Dilution Claims Should Be Dismissed. .........10 E. Even If Somehow Plaintiff's Complaint Establishes That "Use" By TFA Of Plaintiff's Trademark Has Been Established, Said Purported Use Was Not Commercial In Nature.....................................................................................11 F. Plaintiff’s Complaint Should Be Dismissed As A "Shotgun" Pleading. ...............12 PRAYER ........................................................................................................................................13 Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 2 of 20 PageID 84 ii TABLE OF AUTHORITIES Cases Page Ashcroft v. Iqbal, 556 U.S. 662 (2009) ............................................................................................................ 2, 4, 8 Anderson v. Dist. Bd. Of Trs. of Cent. Fla. Cmty. Coll., 77 F.3d 364 (11th Cir. 1996) .................................................................................................... 13 Babbit Electornics, Inc. v. Dynascan Corp., 38 F.3d 1161 (11th Cir. 1994). ................................................................................................... 6 Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) ........................................................................................................... passim Bolger v. Youngs Drug Products Corp., 463 U.S. 60 (1983). ................................................................................................................... 12 Campbell v. City of San Antonio, 43 F.3d 973 (5th Cir. 1995) ........................................................................................................ 3 Clark v. Amoco Prod. Co., 794 F.2d 967 (5th Cir. 1986) ...................................................................................................... 4 Collins v. Morgan Stanley Dean Witter, 224 F.3d 496 (5th Cir. Tex. 2000) ............................................................................................. 2 Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d 145 (5th Cir.1985) ....................................................................................................... 9 Cuvillier v. Taylor, 503 F.3d 397 (5th Cir. 2007) ...................................................................................................... 3 Eagle's Eye, Inc. v. Ambler Fashion Shop, Inc., 627 F. Supp. 856 (E.D. Pa. 1985). ............................................................................................ 10 Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir.1998) ................................................................................................... 5, 9 Family Watchdog, LLC v. Schweiss, 2009 WL 2151152 (M.D. Fla. 2009) ........................................................................................ 13 Fila U.S.A., Inc. v. Kim, 884 F. Supp. 491 (S.D Fla. 1995); .............................................................................................. 7 Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 3 of 20 PageID 85 iii Finger Furniture Co. v. Mattress Firm, Inc., No. H-05-0299, 2005 U.S. Dist. LEXIS 18648 (S.D. Tex. July 1, 2005) .................................. 2 Guidry v. Bank of LaPlace, 954 F.2d 278 (5th Cir. 1992) ...................................................................................................... 2 It’s a 10, Inc. v. Beauty Elite Group Inc., 2013 WL 6834804 (S.D. Fla. Dec. 23, 2013) ......................................................................... 7, 8 Leigh v. Warner Bros., Inc., 10 F.Supp.2d 1371 (S.D. Ga. 1998) ............................................................................................ 9 Marathon Manufacturing Co. v. Enerlite Products Corp., 767 F.2d 214 (5th Cir.1985) ....................................................................................................... 4 McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917 (Fed. Cir. 1995)....................................................................................................... 9 MCW, Inc. v. Badbusinessbureau.com, L.L.C., 2004-1 Trade Cas. (CCH) ¶74391, 2004 WL 833595 (N.D. Tex. 2004) ............................. 9, 10 Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527 (5th Cir. 2015) .................................................................................................... 11 Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir.1998) ....................................................................................................... 9 Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc., 1998 WL 288423 (E.D. Pa. Jun. 3, 1998) ................................................................................... 6 Proctor & Gamble Co. v. Amway Corp., 242 F.3d 539 (5th Cir. 2001) .................................................................................................... 12 Radiance Foundation v. N.A.A.C.P., 786 F.3d 316 (4th Cir. 2015) .................................................................................................... 12 Seven-Up Co. v. Coca-Cola Co, 86 F.3d 1379 (5th Cir. 1996) .................................................................................................... 12 Source, Inc. v. SourceOne, Inc., No. 3:05-CV-1414-G, 2006 WL 2381594 (N.D.Tex. Aug. 16, 2006) ....................................... 9 Springboards to Education, Inc. v. Demco Inc., No. 3:2016-cv-02398 (N.D. Tex.) .............................................................................................. 4 Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 4 of 20 PageID 86 iv Springboards to Education, Inc. v. Families in Schools, No. 3:2016-cv-02512 ( N.D. Tex.) ............................................................................................. 4 Springboards to Education, Inc. v. Galvan, et al, No. 7:2016-cv-00524 (S.D. Tex) ................................................................................................ 4 Springboards to Education, Inc. v. Hamilton County Read 20, No. 3:2016-cv-02509 (N.D. Tex.) .............................................................................................. 4 Springboards to Education, Inc. v. Houston ISD et al, No. 4:2016-cv-02625 (S.D. Tex.) ............................................................................................... 4 Springboards to Education, Inc. v. Idea Public Schools, et al, No. 7:2016-cv-00617 (S.D. Tex.) ............................................................................................... 4 Springboards to Education, Inc. v. KIPP Foundation, No. 3:2016-cv-02436 (N.D. Tex.) .............................................................................................. 4 Springboards to Education, Inc. v. La Joya Isd, No. 7:2016-cv-00526 (S.D. Tex.) ............................................................................................... 4 Springboards to Education, Inc. v. La Joya Isd, No. 7:2016-cv-00526 (S.D. Tex.) ............................................................................................... 4 Springboards to Education, Inc. v. McAllen ISD et al, No. 7:2016-cv-00523(S.D. Tex.) ................................................................................................ 4 Springboards to Education, Inc. v. Mission ISD, No. 7:2016-cv-00527 (S.D. Tex.) ............................................................................................... 4 Springboards to Education, Inc. v. Region One Education Service Center et al., No. 7:2016-cv-00544; (S.D. Tex.) .............................................................................................. 4 Sweet v. City of Chicago, 953 F. Supp. 225 (N.D. Ill. 1996) ............................................................................................... 9 Thompson v. RelationServe Media, Inc., 610 F. 3d 628 (11th Cir. 2010) ................................................................................................. 13 Toho Co., Ltd. V. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir. 1981) .................................................................................................... 10 U.S. Risk Ins. Group, Inc. v. U.S. Risk Mgmt., LLC, No. 3:11-CV-2843-M-BN, 2013 WL 4504754 (N.D. Tex. Aug. 20, 2013) ......................... 5, 11 Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 5 of 20 PageID 87 v U.S. v. Able Time, Inc., 545 F.3d 824 (9th Cir. 2008) ...................................................................................................... 6 United States ex rel. Willard v. Humana Health Plan of Texas Inc., 336 F.3d 375 (5th Cir. 2003) ...................................................................................................... 3 Vedder Software Group Ltd. v. Insurance Services Office, Inc., 545 Fed. Appx. 30 (2d Cir. 2013) ............................................................................................... 3 Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658 (5th Cir.2000) ................................................................................................. 9, 11 Statutes 15 U.S.C. § 1116 ......................................................................................................................... 5, 6 15 U.S.C. § 1125 ........................................................................................................... 4, 10, 11, 12 15 U.S.C. § 1127 ............................................................................................................................. 5 15 U.S.C. §§ 1114 (1)(a) ........................................................................................................... 4, 12 Fed. R. Civ. P. 8 .......................................................................................................................... 1, 2 Fed. R. Civ. P. 12 .................................................................................................................. 1, 2, 13 Tex. Bus. & Comm. Code Ann. § 16.29 ....................................................................................... 10 Secondary Sources 4 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25:10 (4th ed.) (Mar. 2015) ................................................................. 5, 6, 8 Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 6 of 20 PageID 88 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 1 COMES NOW, Defendant Teach For America, Inc. ("Defendant" or "TFA") whom hereby files this Motion to Dismiss the Complaint of Plaintiff Springboards to Education, Inc. ("Plaintiff" or "Springboards") pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, and in support thereof, hereby states as follows: The Complaint should be dismissed for failure to state a claim upon which relief may be granted based on the Supreme Court's Twombly plausibility standard. Even liberally construed, the Complaint fails to allege sufficient facts to support any claim upon which relief can be granted; it states merely general and conclusory allegations without any specific or plausible facts. As such, the Complaint does not meet the pleading requirements of FED. R. CIV. P. 8(a), and should therefore be dismissed pursuant to FED. R. CIV. P. 12(b)(6). Moreover, all of Plaintiff's claims asserted in the Complaint should be dismissed because the Complaint fails to satisfy the "use in commerce" element, which is a fundamental requirement of any trademark claim. The Complaint also fails to identify any "commercial" use in commerce, yet another requirement of any trademark claim. Plaintiff's Complaint fails to identify (a) a specific federally registered mark of Plaintiff (or a confusingly similar variation) that was used in commerce by TFA, let alone use that was commercial in nature; or (b) a specific good of Plaintiff (or a substantially similar variation) that was subject to one of its federal registrations, which was used in commerce (again, in a commercial manner no less) by TFA. In particular, Plaintiff's trademark counterfeit claim should be dismissed because the Lanham Act requires that an alleged infringing good be a knock-off or imitation of a genuine article of Plaintiff, which is covered by one of Plaintiff's federally registered trademarks (i.e. "paper goods"). Nothing in the Complaint supports sufficient plausibility that TFA used in commerce and offered for sale a fake paper good (intentionally imitating Plaintiff's trademarked goods). Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 7 of 20 PageID 89 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 2 STANDARD OF REVIEW Federal pleading standards mandate that a complaint contain sufficient factual matter, accepted as true, to state a claim for relief that is plausible on its face. See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555 (2007)); see also FED. R. CIV. P. 8(a)(2). When a complaint fails to demonstrate a plausible claim to relief, it should be dismissed pursuant to Fed. R. Civ. P. 12(b)(6). See Iqbal, 556 U.S. at 679 (citing Twombly, 550 U.S. at 556). In determining whether a complaint states a plausible claim for relief, the reviewing court may draw on its judicial experience and common sense. Id. ARGUMENTS & AUTHORITIES From the outset, Plaintiff's Complaint includes threadbare recitals and conclusory statements devoid of any factual enhancement that would show a plausible entitlement to relief to satisfy the Twombly standard. Although, for purposes of a motion to dismiss, a complaint's well-pleaded facts must be accepted as true, a reviewing court is not bound to accept conclusory statements, bare assertions, and legal recitations posing as factual allegations. Twombly, 550 U.S. at 570; see also Collins v. Morgan Stanley Dean Witter, 224 F.3d 496, 498 (5th Cir. 2000) ("In order to avoid dismissal for failure to state a claim, however, a plaintiff must plead specific facts, not mere conclusory allegations. We will thus not accept as true conclusory allegations or unwarranted deductions of fact.") (internal citations, quotation marks and ellipses omitted); Finger Furniture Co. v. Mattress Firm, Inc., No. H-05-0299, 2005 U.S. Dist. LEXIS 18648, *6-7 (S.D. Tex. July 1, 2005) ("conclusory allegations or legal conclusions are not sufficient to overcome a motion to dismiss"); Guidry v. Bank of LaPlace, 954 F.2d 278, 281 (5th Cir. 1992) (stating "'conclusory allegations and unwarranted deductions of fact are not admitted as true' by a motion to dismiss") (citations omitted). To the contrary, after the reviewing court has stripped away the pleader's threadbare recitals and Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 8 of 20 PageID 90 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 3 conclusory statements, to survive a motion to dismiss, the complaint must contain well-pleaded factual allegations that establish not the mere possibility, but rather, the plausibility of entitlement to relief. Twombly, 550 U.S. at 557. Plaintiff's claims include a tirade of conclusory, unspecified statements lacking plausibility of any entitlement to relief, a few examples of which are as follows:  Compl. at ¶ 24 (accusing TFA of using "spurious designations" without identifying said designations);  Id. at ¶ 10 (accusing TFA of having "sold at least thousands of pieces of Counterfeit Products" without identify not even one sale or one product that was purportedly a "counterfeit" and also offered for sale in commerce);  Id. at ¶¶ 25, 44 (accusing TFA of causing "confusion" and deceiving "consumers" without explanation);  Id. at ¶¶ 28, 47 (accusing TFA of making "substantial profits and gains" without any factual basis); and  Id. at ¶¶24-31, 34-41 (failing to identify the likelihood of confusion factors necessary to set forth causes of action for Lanham Act claims) "A statement of facts that merely creates a suspicion that the pleader might have a right of action is insufficient." Campbell v. City of San Antonio, 43 F.3d 973, 975 (5th Cir. 1995); see also Cuvillier v. Taylor, 503 F.3d 397, 401 (5th Cir. 2007) (quoting Twombly, 550 U.S. 544) (the complaint's factual allegations must "'raise a right to relief above the speculative level'"). Based on the Rule 8 or Twombly plausibility standard alone, Plaintiff's Complaint should be dismissed. See, e.g., United States ex rel. Willard v. Humana Health Plan of Texas Inc., 336 F.3d 375, 379 (5th Cir. 2003) ("conclusory allegations and unwarranted factual deductions will not suffice to prevent a motion to dismiss"); Vedder Software Group Ltd. v. Insurance Services Office, Inc., 545 Fed. Appx. 30 (2d Cir. 2013) (court upheld lower court's dismissal of plaintiff's trademark infringement claim since the complaint "'amount to nothing more than a formulaic recitation of the elements'" of a Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 9 of 20 PageID 91 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 4 trademark infringement claim; "no factual allegations support its legal conclusions") (quoting Iqbal, 556 U.S. at 681). 1 A. Plaintiff's Complaint On All Claims Should Be Dismissed Generally Because It Fails To Allege Plausibly That TFA Actually Used In Commerce Any of Plaintiff's Trademarks. If the complaint lacks a required element which is a prerequisite to obtaining relief, dismissal is proper. Clark v. Amoco Prod. Co., 794 F.2d 967, 970 (5th Cir. 1986). Plaintiff's Lanham Act claims of trademark counterfeiting, trademark infringement, false designation of origin, dilution (Counts I thru IV) as well as the comparable state and common law claims of dilution, trademark infringement and unfair competition (Counts V thru VII) all require a "use in commerce" element. See 15 U.S.C. §§ 1114 (1)(a) ("[a]ny person who shall … use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark"); 1117(c) ("In a case involving the use of a counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services . . .."); 1125(a)(1)(A) ("Any person who … uses in commerce … any false designation of origin"); and 1125(c)(1) ("another person who … commences use of a mark or trade name in commerce") (emphasis added). 2 1 TFA suspects that it has been swept into an over-reaching litigation enforcement strategy by Plaintiff as Plaintiff has sued a number of additional defendants in separate cases involving similar trademark-related claims. Springboards to Education, Inc. v. Idea Public Schools, et al, No. 7:2016-cv-00617 (SD Tex.); Springboards to Education, Inc. v. La Joya Isd, No. 7:2016-cv-00526 (SD Tex.); Springboards to Education, Inc. v. Houston ISD et al, No. 4:2016-cv-02625 (SD Tex.); Springboards to Education, Inc. v. Mission ISD, No. 7:2016-cv-00527 (SD Tex.); Springboards to Education, Inc. v. Region One Education Service Center et al., No. 7:2016-cv-00544; (SD Tex.); Springboards to Education, Inc. v. Galvan, et al, No. 7:2016-cv-00524 (SD Tex); Springboards to Education, Inc. v. Families in Schools, No. 3:2016-cv-02512 ( ND Tex.); Springboards to Education, Inc. v. McAllen ISD et al, No. 7:2016-cv-00523(SD Tex.); Springboards to Education, Inc. v. KIPP Foundation, No. 3:2016-cv-02436 (ND Tex.); Springboards to Education, Inc. v. Hamilton County Read 20, No. 3:2016-cv-02509 (ND Tex.); Springboards to Education, Inc. v. La Joya Isd, No. 7:2016-cv-00526 (SD Tex.); Springboards to Education, Inc. v. Demco Inc., No. 3:2016-cv-02398 (ND Tex.). As with those cases, Plaintiff includes an overly broad set of allegations in its Complaints. It is as if Plaintiff has used a boilerplate or template for all of its Complaints. Many of these defendants have filed dismissal motions as well, some of which on similar grounds as those presented herein. 2 Federal Lanham Act claims are treated analogous and viewed co-extensively to the state and common law claims. As a general rule, the same facts that support a Lanham Act claim also support a state or common law claim for unfair competition and trademark infringement. See, e.g., Marathon Manufacturing Co. v. Enerlite Products Corp., 767 F.2d 214, 217 (5th Cir.1985); U.S. Risk Ins. Group, Inc. v. U.S. Risk Mgmt., LLC, No. 3:11-CV-2843-M-BN, 2013 WL (footnote continued) Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 10 of 20 PageID 92 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 5 By statutory definition, a mark is used in commerce on goods when "affixed thereto" (such as "tags or labels") and on services when "displayed in the sale or advertising of services and the services are rendered in commerce . . .." 15 U.S.C. § 1127; see also Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 197 (5th Cir. 1998). Here, Plaintiff's Complaint asserts federally registered trademarks that cover "paper goods" as identified in the registration certificates. [Doc. 1-1, Compl. at Ex. A]. As such, the "use" element requires that the alleged infringer affixed a confusingly similar mark of Plaintiff on a similar good of Plaintiff. Yet Plaintiff's Complaint does not identify what mark was used in commerce by TFA, or what paper good that was offered for sale or advertised in commerce and affixed to said mark by TFA. 3 B. Plaintiff's Complaint Involving Federal Trademark Counterfeit Should Be Dismissed Because TFA Did Not Replicate Any (i) Trademark of Plaintiff or (ii) Genuine Article of Plaintiff. As the nation's leading trademark expert has opined: "Counterfeiting is the act of producing or selling a product with a sham trademark that is an intentional and calculated reproduction of the genuine trademark. . . . . Often, counterfeit merchandise is made so as to imitate a well-known product in all details of construction and appearance so as to deceive customers into thinking that they are getting genuine merchandise." 4 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25:10 (4th ed.) (Mar. 2015) (internal citations omitted) (emphasis added). A "counterfeit of a mark" under the Lanham Act requires that it was "offered for sale" or "distributed" and that it was "in use." 15 U.S.C. § 1116(d)(1)(B). Prevailing on a counterfeiting claim also 4504754, at *20 n.3 (N.D. Tex. Aug. 20, 2013 (reasoning that the Texas dilution statute is "substantially consistent" with federal dilution law). Thus, if the federal Lanham Act claims are dismissed, then so too are the comparable state and common law claims. 3 This makes sense because TFA did not offer for sale or advertise any "paper good" with any of Plaintiff's federally registered trademarks, or even use any of Plaintiff's federally registered trademarks for that matter. As will be expressed should the case proceed, many third-parties often use "million" or an equivalent number coupled with the term "word" in efforts to increase education-focused initiatives such as reading programs; such use is in a fair, non-commercial, and non-trademark/descriptive manner. Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 11 of 20 PageID 93 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 6 requires intent-i.e., that a defendant intentionally used a counterfeit mark, knowing such mark is a counterfeit mark at the time it was replicated. See, e.g., Babbit Electornics, Inc. v. Dynascan Corp., 38 F.3d 1161, 1181 (11th Cir. 1994). Here, the Complaint fails to identify what, if any, actual "reproduction" of Plaintiff's trademarks that was produced, offered for sale or distributed. Plaintiff's federally registered trademarks include READ A MILLION WORDS, MILLIONAIRE READER, MILLIONAIRE'S READING CLUB, MILLION DOLLAR READER and FEEL LIKE A MILLION BUCKS. [Doc. 1-1, Compl. at Ex. A] Plaintiff's Complaint fails to assert that TFA used in commerce any "identical" mark as required within the purview of the Lanham Act's counterfeit provision. Plaintiff's Complaint also fails to assert what "well-known product" or "genuine merchandise" of Plaintiff that TFA intentionally replicated. Second, and as somewhat expressed above, the Lanham Act's definition of "counterfeit" only reaches cases where the counterfeit mark is used in connection with the same goods or services as those for which the mark is registered on the Principal Register and that is in use. 15 U.S.C. § 1116(d)(1)(B); 4 J. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25:15; Playboy Enterprises, Inc. v. Universal Tel-A-Talk, Inc., 1998 WL 288423 at *4 n.8 (E.D. Pa. Jun. 3, 1998); U.S. v. Able Time, Inc., 545 F.3d 824, 832 (9th Cir. 2008) ("Congress included an explicit identity of goods or services requirement in both the civil and criminal provisions of the 1984 Act.") (emphasis added). Therefore, where an alleged infringer uses a mark on goods and services that are not covered by the registration, there is no valid claim for counterfeiting. See Playboy, 1998 WL 288423 at **4-6 (granting dismissal motion as to Plaintiff's counterfeiting claims). This requirement is in keeping with a fundamental aspect of trademark law, namely that a counterfeit is designed to be "a duplicate Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 12 of 20 PageID 94 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 7 for the genuine article." Fila U.S.A., Inc. v. Kim, 884 F. Supp. 491, 494 (S.D Fla. 1995); It’s a 10, Inc. v. Beauty Elite Group, Inc., 2013 WL 6834804 at *11 (S.D. Fla. Dec. 23, 2013) ("The aim of a counterfeiter is typically to create a duplicate of a renowned product, and to market the duplicate to a confused public as the genuine article."). Here, Plaintiff's federal registration certificates asserted in the Complaint all cover goods (not services) that describe generally "paper goods." [Doc. 1-1, Compl. at Ex. A]. Plaintiff accuses TFA of offering for sale "Counterfeit Products" without identifying said products or "paper goods" in any of the allegations within the Complaint. [See Compl. at ¶¶ 9-17)]. No specific counterfeit mark actually affixed (such as a tag or label) on any paper good by TFA has been alleged. [See Doc 1-2, Ex. B]. No specific "paper good" allegedly sold, offered for sale, distributed or advertised by TFA is identified in the Complaint. Instead, Plaintiff states generally that "[r]epresentative examples of Defendant's activities" are reflected in the "examples in Exhibit B." [Doc. 1-2, Ex. B]. Upon reviewing Exhibit B, its authenticity is unclear. There is no website or domain name address accompanying the header or footer of any of the pages. There is no indication as to the author or publisher of any of the pages. Moreover, there is no mention of any product or "paper good" offered for sale to the public. There is no receipt or other documentation in the Complaint supporting a sale of any "paper good" by TFA under any alleged counterfeit mark. There is no reference to any "paper good" that was distributed and offered for sale by TFA. There is no identification of any "genuine article" of Plaintiff that was used under its trademarks and that was replicated by TFA. At best, taking the allegations as true under the Twombly standard, Exhibit B appears to a handful of unauthenticated pages via the Internet that discusses an "announcement" or "initiative" designed to increase "students' volume and love of reading." [Doc. 1-2, Compl. at Ex. B, p.1]. Nothing identified therein supports any plausible "use in Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 13 of 20 PageID 95 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 8 commerce" of any good that was offered for sale or advertised by TFA, let alone that affixed Plaintiff's trademark. In sum, the Court is permitted to draw upon experience and common sense to determine the Complaint fails to state any plausible claim (i) of a counterfeit mark; (ii) that was used by TFA; (iii) in commerce; (iv) in a commercial manner; (v) involving a "paper good" and (vi) which replicated a genuine article of Plaintiff. See Iqbal, 556 U.S. at 679 (citing Twombly, 550 U.S. at 556). Finally, the type of facts asserted in Plaintiff's Complaint go well beyond the type of counterfeiting activity intended by the Lanham Act. This is not the type of case that Congress intended for a "counterfeit" claim to apply. Counterfeit claims are generally "prevalent with respect to high-quality, 'status goods' . . . [f]or example, fake CARTIER watches made with inferior parts . . . [or] imitation LEVI's jeans [falling] apart after one washing." 4 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25:10 (4th ed.) (Mar. 2015). The Complaint fails to plausibly assert a claim that TFA offered for sale fake or sham printed or paper goods produced with Plaintiff's trademarks (which at the time TFA knew were fake no less) that the public thought were those distributed or authorized by Plaintiff. The Complaint does not speak to any "high-quality, 'status goods'" as it pertains to Plaintiff's printed goods under its trademarks. TFA is at a loss to understand what, if any, genuine article of Plaintiff that TFA could have replicated. Common sense also reveals the flimsiness of Plaintiff's counterfeiting claim. A counterfeit product is an imitation of the original product: it is meant to be passed off as if it is the actual famous product. See, e.g., It’s a 10, Inc. v. Beauty Elite Group Inc., 2013 WL 6834804 at *11 (S.D. Fla. Dec. 23, 2013). Counterfeiting claims are thus intended to combat the likes of fake Louis Vuitton purses sold on a street corner; they are not intended to address the alleged misuse of some unidentifiable trademark not otherwise affixed to any goods that were not even offered for sale via an unknown set of Internet pages-as alleged here. Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 14 of 20 PageID 96 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 9 C. Plaintiff's Complaint Involving Federal and Common Law Trademark Infringement and Unfair Competition Should Be Dismissed. Even if the "use in commerce" element is satisfied for purposes of the Twombly standard, Plaintiff must also plead that the Defendant's use of the mark creates a likelihood of confusion. See, e.g., Source, Inc. v. SourceOne, Inc., No. 3:05-CV-1414-G, 2006 WL 2381594, at *3 (N.D.Tex. Aug. 16, 2006) (Fish, C.J.). The "likelihood of confusion" test is required under both of Plaintiff's Counts II (trademark infringement) and III (false designation of origin) pursuant to Sections 32 and 43(a) of the Lanham Act claims, respectively. See, e.g., MCW, Inc. v. Badbusinessbureau.com, L.L.C., 2004-1 Trade Cas. (CCH) ¶74391, 2004 WL 833595 (N.D. Tex. 2004) ("an unfair competition claim is similar to a trademark infringement claim in that both claims depend on a likelihood of confusion") (citing McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 923 (Fed. Cir. 1995). In determining whether a likelihood of confusion exists, courts evaluate the following factors: "(1) the type of mark allegedly infringed, (2) the similarity between the two marks (3) the similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant’s intent, and (7) any evidence of actual confusion." Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 664 (5th Cir.2000); see also Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 543 (5th Cir.1998); Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188, 194 (5th Cir.1998); Conan Properties, Inc. v. Conans Pizza, Inc., 752 F.2d 145, 149 (5th Cir.1985). Importantly, conclusory allegations regarding a "likelihood of confusion" may be rejected on Rule 12(b)(6) grounds by a Court as a matter of law. See, e.g., Leigh v. Warner Bros., Inc., 10 F.Supp.2d 1371, 1382-83 (S.D. Ga. 1998) (affirmed in part and reversed in part, on other grounds, 212 F.3d 1210 (11th Cir. 2000)); Sweet v. City of Chicago, 953 F. Supp. 225, 231 (N.D. Ill. 1996) (granting dismissal on a 12(b)(6) motion and noting that Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 15 of 20 PageID 97 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 10 "[t]he complaint merely makes the conclusory assertion that confusion is likely and sets forth no facts that would permit [such] a conclusion."). Absent throughout the Complaint's claims are any sufficient facts or essential elements of the threshold likelihood of confusion factors. The Complaint's failure to identify each of these factors alone is grounds for dismissal. Most notably lacking in the allegations are: (i) what trademarks of Plaintiff were allegedly infringed upon by TFA; (ii) what goods of TFA were similar to those offered by Plaintiff's goods; (iii) what advertising or marketing channels that TFA undertook in offering for sale any goods under Plaintiff's mark(s); and (iv) what, if any, instances of any actual confusion occurred. More broadly, the Complaint does not assert that TFA and Plaintiff are competitors or that the parties offer related or substantially overlapping goods respectively. "[W]here the goods between two parties are unrelated as a matter of law, dismissal of a likelihood of confusion claim pursuant to a Rule 12(b)(6) motion is appropriate." MCW, supra, 2004 WL 833595 at **15-16 (granting Rule 12(b)(6) dismissal motion of Plaintiff's Lanham Act claims as "[n]ot only are the goods unrelated as a matter of law, but neither party is a direct competitor of the other"); Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788, 790 (9th Cir. 1981); Eagle's Eye, Inc. v. Ambler Fashion Shop, Inc., 627 F. Supp. 856, 859 (E.D. Pa. 1985). D. Plaintiff's Complaint Regarding its Dilution Claims Should Be Dismissed. Plaintiff's Complaint asserts dilution claims pursuant to 15 U.S.C. § 1125(c) and Tex. Bus. & Comm. Code Ann. § 16.29. To recover under the federal anti-dilution statute, the plaintiff must demonstrate that: (1) it owns a mark that is famous and distinctive; (2) TFA adopted Plaintiff's mark by using it in commerce; (3) the similarity between the parties' respective marks or uses of said marks give rise to an association between the marks; and (4) the association is likely to impair the distinctiveness of Plaintiff’s mark or harm the reputation of Plaintiff’s mark. See Nola Spice Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 16 of 20 PageID 98 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 11 Designs, L.L.C. v. Haydel Enterprises, Inc., 783 F.3d 527, 548 (5th Cir. 2015) (Lanham Act dilution claim); U.S. Risk Ins. Group, Inc. v. U.S. Risk Mgmt., LLC, No. 3:11-CV-2843-M-BN, 2013 WL 4504754, at *20 n.3 (N.D. Tex. Aug. 20, 2013) (Texas dilution claim); Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 670 (5th Cir.2000). Here, Plaintiff has failed to plead that its trademarks asserted in the Complaint are famous or distinctive. [Doc. 1-1]. A mark is famous if it is widely recognized by the general consuming public as a designation of source of the goods or services of the mark’s owner. 15 U.S.C. § 1125(c). In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: (i) the duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties; (ii) the amount, volume, and geographic extent of sales of goods or services offered under the mark.; and (iii) the extent of actual recognition of the mark. 15 U.S.C. § 1125(c)(2). As expressed above, Plaintiff also failed to allege any basis for which TFA actually used any of Plaintiff's trademarks (both in commerce and in a non-commercial manner); any association between Plaintiff's marks and TFA's alleged use; and any impairment or harm to Plaintiff's mark or brand reputation based on TFA's actions. Plaintiff has not pled, nor can it prove, that TFA has impaired or caused any harm to Plaintiff. Thus, the Defendants' motion to dismiss as to Plaintiff’s federal and state dilution claims should be granted. E. Even If Somehow Plaintiff's Complaint Establishes That "Use" By TFA Of Plaintiff's Trademark Has Been Established, Said Purported Use Was Not Commercial In Nature. Separate and independent of the "use in commerce" element, each Lanham Act claim also includes a "commercial use" requirement. As to the dilution claim, the Lanham Act expressly excludes dilution liability based on any "noncommercial use of a mark." 15 U.S.C. § 1125(c)(3)(C). Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 17 of 20 PageID 99 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 12 As to the claims for infringement and counterfeiting under § 1114, and unfair competition under § 1125, the "commercial use" requirement is expressed in the statutory requirement that liability requires use of the plaintiff’s mark "in connection with goods or services." See 15 U.S.C. §§ 1114(1)(a) (liability applies to any person who shall … use in commerce any reproduction, counterfeit, copy, … of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services), 1125(a)(1)(A) ("Any person who, on or in connection with any goods or services …"); This "in connection with goods or services" element protects "from liability all noncommercial uses of marks." Radiance Foundation v. N.A.A.C.P., 786 F.3d 316, 322 (4th Cir. 2015); see also Proctor & Gamble Co. v. Amway Corp., 242 F.3d 539, 547 n. 13 (5th Cir. 2001) (reasoning the Lanham Act extends only to false or misleading speech that is encompassed within the Supreme Court's commercial speech doctrine) (citing Seven-Up Co. v. Coca-Cola Co,, 86 F.3d 1379, 1383 n.6 (5th Cir. 1996). 4 Here, Plaintiff's Complaint fails to identify any instances in which TFA engaged in commercial use in offering for sale any confusingly similar goods of Plaintiff under its trademarks. F. Plaintiff’s Complaint Should Be Dismissed As A "Shotgun" Pleading. In the alternative, Plaintiff has filed a Complaint which is so vague and ambiguous that Defendant cannot reasonably prepare a response as it incorporates all of the general factual allegations by reference into each subsequent claim for relief. Each of Plaintiff’s counts re-allege and incorporate the preceding paragraphs of the Complaint. This type of "shotgun" pleading has been condemned in some courts. See, e.g., Thompson v. RelationServe Media, Inc., 610 F. 3d 628, 4 The Fifth Circuit adopts the Bolger test in determining commercial speech, namely: (i) whether the communication is an advertisement, (ii) whether the communication refers to a specific product or service, and (iii) whether the speaker has an economic motivation for the speech. If all three factors are present, there is “strong support” for the conclusion that the speech is commercial. See Proctor & Gamble, 242 F.3d at 552 (citing Bolger v. Youngs Drug Products Corp., 463 U.S. 60, 67 (1983). Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 18 of 20 PageID 100 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 13 650 (11th Cir. 2010) ("This circuit condemns shotgun pleadings."). Shotgun pleadings make it "virtually impossible to know which allegations of fact are intended to support which claim(s) for relief." Anderson v. Dist. Bd. Of Trs. of Cent. Fla. Cmty. Coll., 77 F.3d 364, 366 (11th Cir. 1996); Family Watchdog, LLC v. Schweiss, 2009 WL 2151152 (M.D. Fla. 2009) (court dismissed complaint since it comprised a judicially disfavored 'shotgun pleading'). For the reasons articulated above, this Court should dismiss the Complaint. In the alternative, the Court should require Plaintiff to provide a more definite statement of its pleading pursuant to Fed. R. Civ. P. 12(e) before Defendant is required to answer. PRAYER For the reasons set forth above, Defendant Teach for America, Inc. requests this Court grant this motion and enter an order dismissing Plaintiff’s Original Complaint in its entirety with prejudice to re-filing same. Respectfully submitted, LEWIS, BRISBOIS, BISGAARD, & SMITH, LLP /s/ Jonathan D. Goins Jonathan D. Goins (admitted pro hac vice) GA Bar No. 738593 1180 Peachtree Street NE, Suite 2900 Atlanta, Georgia 30309 Telephone (404) 348-8585 Facsimile: (404) 467-8845 E-mail: Jonathan.Goins@lewisbrisbois.com Amber R. Pickett TX Bar Number 24058046 2100 Ross, Suite 2000 Dallas, Texas 75201 Telephone: (214) 722-7100 Facsimile: (214) 722-7111 E-mail: Amber.Pickett@lewisbrisbois.com COUNSEL FOR DEFENDANT TEACH FOR AMERICA, INC. Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 19 of 20 PageID 101 DEFENDANT TEACH FOR AMERICA’S MOTION TO DISMISS AND BRIEF IN SUPPORT Page 14 CERTIFICATE OF SERVICE The undersigned hereby certifies that counsel of record who are deemed to have consented to electronic service are being served this 11th day of January 2017, with a copy of this document via the Court's CM/ECF system per Local Rule CV-5.1(d). /s/Jonathan Goins Jonathan Goins Case 3:16-cv-02435-L Document 23 Filed 01/11/17 Page 20 of 20 PageID 102 4815-9605-0752.1 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF TEXAS DALLAS DIVISION SPRINGBOARDS TO EDUCATION, INC. § § Plaintiff, § § v. § Case No. 3:16-CV-02435-L § TEACH FOR AMERICA, INC., § § Defendant. § ORDER ON DEFENDANT TEACH FOR AMERICA, INC.’S MOTION TO DISMISS AND BRIEF IN SUPPORT On this day, the Court considered the Motion to Dismiss and Brief in Support filed by Defendant Teach for America, Inc., the arguments and authorities in support, Plaintiff’s response and Defendant’s reply, and other relevant pleadings and papers on file and has determined that the Motion should be GRANTED in its entirety. IT IS THEREFORE ORDERED that Plaintiff’s Original Complaint is DISMISSED in its entirety with prejudice to refiling same. SIGNED ON _______________________. _________________________________ UNITED STATES DISTRICT JUDGE Case 3:16-cv-02435-L Document 23-1 Filed 01/11/17 Page 1 of 1 PageID 103