Vacuum Interrupters, Inc. v. VR Interrupters Llc

Motion to Dismiss for Failure to State a Claim

N.D. Tex.May 8, 2017

THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS DALLAS DIVISION VACUUM INTERRUPTERS, INC., § § Plaintiff, § CIVIL ACTION NO. 3:17-CV-00759-C § V. § § VR INTERRUPTERS, LLC f/k/a § VACUUM REPLACEMENT § INTERRUPTERS LLC, § § DEFENDANT § DEFENDANT’S MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM, AND BRIEF IN SUPPORT THEREOF Respectfully submitted by, GRABLE MARTIN FULTON, PLLC By: /s/ Elizabeth P. Ardanowski ELIZABETH P. ARDANOWSKI Texas State Bar No. 00793275 6120 Swiss Ave., Box 141257 Dallas, Texas 75214 Telephone: (469) 450-1302 Facsimile: (972) 499-1361 eardanowski@gchub.com ATTORNEYS FOR DEFENDANT VR Interrupters, LLC Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 1 of 31 PageID 26 TABLE OF CONTENTS PAGE NO. INTRODUCTION AND SUMMARY ……………………………………………………….1 STANDARD OF REVIEW……………….. …………………………....................................2 ARGUMENT AND AUTHORITIES……………………………………………………..… 3 ISSUES PRESENTED FAILURE TO STATE A CLAIM FOR FALSE ADVERTISING UNDER SECTION 43 OF THE LANHAM ACT ……………………………………………………………….…3 FAILURES TO STATE A CLAIM FOR TRADEMARK INFRINGEMENT AND DILUTION, AND UNFAIR COMPETITION UNDER FEDERAL AND STATE LAWS. ..…………………..…9 FAILURE TO STATE A CLAIM FOR TRADEMARK INFRINGEMENT UNDER TEXAS BUSINESS AND COMMERCE CODE ……………………………………………13 FAILURE TO STATE A CLAIM FOR TRADEMARK INFRINGEMENT UNDER SECTION 43 OF THE LANHAM ACT ……………………….…………………..………17 FAILURES TO STATE A CLAIM FOR UNFAIR COMPETITION DUE TO USE OF NAME AND LIKENESS ……..………………………………………………………18 FAILURE TO STATE A CLAIM FOR TRADEMARK DILUTION UNDER TEXAS BUSINESS AND COMMERCE CODE § 16.29 et seq.……..………………………22 CONCLUSION…………………………………………………………………………..…24 PRAYER FOR RELIEF…………………………………………………………………….25 INDEX OF AUTHORITIES PAGE NO. CASES Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir 1976).…...9, 10, 15 Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 236 (5th Cir. 2010) .……………………………………………….17, 18 AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1535 (11th Cir. 1986) .……………………….……………………...11 American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141 (3rd Cir. 1986)………………………………………………….11 Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 2 of 31 PageID 27 Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008)…….…………………………………………….17 Ashcroft v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949, 173 L.E.2d 868 (2009).…………………………………….……….2, 3, 8, 18, 19, 20 Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)…………………………………………….2, 3, 8, 18, 19, 20 Blackburn v. City of Marshall, 42 F.3d 925, 931 (5th Cir. 1995) ……………………....3, 20 Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 474 (5th Cir. 2008)…………………………..…………………17, 18 Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 517 (10th Cir. 1987) ……….…….…..11 Cline v. Rogers, 87 F.3d 176, 184 (6th Cir.). ………………………………………………3 Clorox Co. P.R. v. Proctor & Gamble Commercial Co., 228 F.3d 24, 30-31 (1st Cir. 2000) ……………………………………………………………………2-3, 7 Cuvillier v. Sullivan, 503 F.3d 397, 401 (5th Cir. 2007)……………….…………………19 Deere & Co. v. MTD Products, Inc., 41 F.3d 39, 43(2nd Cir. 1994) ……………………..23 Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 872 (3d Cir.1992)……..6 Dorsey v. Portfolio Equities, Inc., 540 F.3d 333, 338 (5th Cir.2008)……………..……..3, 20 DVH Co., Inc. v. Bropfs Corp., No. 3:06CV2084-P, 2007 WL 3284324, at *3 (N.D.Tex. Nov. 6, 2007) …………….....................................................................10 Erickson v. Pardus, 551 U.S. 89, 93, 127 S.Ct. 2197, 167 L.Ed. 1081 (2007) ….…………..2 Fernandez-Montez v. Allied Pilots Ass’n, 987 F.2d 278, 284 (5th Cir. 1993) ……………..3, 8 First Brands Corp. v. Fred Meyers, Inc., 809 F.2d 1378, 1381 (9th Cir. 1987) .………......11 Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir.) cert. denied, 474 U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1983) ……………..23 Frith v. Guardian Life Ins. Co., 9 F.Supp.2d 734, 737-38 (S.D.Tex. 1998)……….…….20 Gonzalez v. Kay, 577 F.3d 600, 603 (5th Cir.2009) …........................................................3 Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 3 of 31 PageID 28 Gordon & Breach Science Publishers v. American Inst. Of Physics, 859 F. Supp. 1521, 1533 (S.D.N.Y. 1994) …………………………………….....5 Hidden Values, Inc. v. Wade, No. 3:11-CV-1917-L, 2012 WL 1836087, at *12 (N.D. Tex., May 18, 2012) ……………………........10 Hormel Foods Corp. v. Jim Henson Productions, Inc, 73 F.3d 497, 506 (2nd Cir.1996) …………………………………………….….23 Hot-Hed, Inc. v. Safehouse Habitats (Scot.), Ltd., 333 S.W.3d 719, 730 (Tex.App.-Houston [1st Dist.] 2010, pet. denied)…..…..21 Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 2187, 72 L.Ed.2d 606 (1982) ……………………………. 11, 15 Jordache Enter. Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1489 (10th Cir.1987).……..23 Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73 (1938) ………………………..………….…11, 15 KLN Steel Prods. Co. v. CNA Ins. Cos., 278 S.W.3d 429, 440-41 (Tex.App.-San Antonio 2008, pet. denied) ………………………….. 21 Lone Star Fund V (U.S.), L.P. v. Barclays Bank PLC, 594 F.3d 383, 387 (5th Cir. 2010). ….……………………………………........2 Lovick v. Ritemoney Ltd., 378 F.3d 433, 437 (5th Cir. 2004).………………..…..…….2 March Madness Athletic Ass'n, L.L. C. v. Netfire, Inc., 162 F.Supp.2d 560, 568-569 (N.D.Tex.2001)………………………………. 10 McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1548-49 (2d Cir. 1991). ………………………………………………………..5 Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418, 428, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003) …………………………………………………………21 Park ‘N Fly, Inc. v. Dollar Park & Fly, 469 U.S. 189, 194, 105 S.Ct. 658, 661, 83 L.Ed.2d 582 (1985) ……………………….10, 11, 15, 21 Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 536 (5th Cir.1998)……..………...17 Racetrac Petroleum, Inc. v. J.J.'s Fast Stop, Inc., No. 3:01-CV-1397-P, 2003 WL 251318, at *3 (N.D.Tex. Feb.3, 2003). ).…………………………...10 Ramming v. United States, 281 F.3d 158, 161 (5th Cir.2001) ………………………19 Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 4 of 31 PageID 29 Resource Developers v. Statue of Liberty-Ellis Island Found., 926 F.2d 134, 139 (2d Cir. 1991) ……………………………………………4 Royal Bus. Corp. v. Realist, Inc., 933 F.2d 1056, 1065-66 (1st Cir. 1991).…………..3 Schoellkopf v. Pledger, 778 S.W.2d 897, 904-05 (Tex.App. - Dallas 1989, writ denied) ………………………………………………..….21 Serbin v. Ziebart Intern. Corp., 11 F.3d 1163, 1177 (3d Cir.1993)………...............5 Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379 (5th Cir. 1996). ….………….....4, 5, 6 Smith v. Boyd, 945 F.2d 1041 (8th Cir. 1991)…………………………….………..3, 7 Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974 (2nd Cir. 1987)…………..11 Sullivan v. Leor Energy, LLC, 600 F.3d 542, 546 (5th Cir. 2010). ………………...2 Taylor Pub. Co. v. Jostens, Inc., 216 F.3d 465, 486 (5th Cir. 2000) …….…………21 Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 215 (2d Cir. 1985) …………11 Turner v. Pleasant, 663 F.3d 770, 775 (5th Cir. 2010)………………………3, 19, 20 Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753, 120 L.Ed.2d. 615 (1992), rh’g denied………,,,.8, 9-10, 11, 12, 14, 15, 16, 17 Union Nat’l Bank of Tex., Laredo, Tex. v. Union Nat’l Bank of Tex., Austin, Tex., 909 F.2d 839, 843 n. 10 (5th Cir. 1990) …………………..20-21 University of Georgia Athletic Assn. v. Laite, 756 F.2d 1535 (11th Circuit 1985)…11 Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983) ………………………………………………..……11, 14 Wojnarowicz v. American Family Ass'n, 745 F.Supp. 130, 141 (S.D.N.Y.1990)......4 STATUTES Federal Rule of Civil Procedure 8………...,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,..19 Federal Rule of Civil Procedure 12 (b)(6)…………….....1, 2, 3, 7-8, 16, 18, 19, 20 The Lanham Act Section 32, ……………..………………………………………17 Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 5 of 31 PageID 30 The Lanham Act Section 43, 15 U.S.C. § 1052…………9, 10, 11, 12, 13, 14, 15, 1, The Lanham Act, Section 43, 15 U.S.C. § 1115(a) …..………………………….17 The Lanham Act Section 43, 15 U.S.C. §1125(a) ……1, 4, 5, 7, 13, 17, 21, 22, 24 The Lanham Act Section 43, 15 U.S.C. §1127 ……..………..…………… 4, 9, 24 The Lanham Act Section 45 ………………..…………………………………… 4 Texas Business and Commerce Code 16.001 et seq. .....1, 12, 13, 14, 16, 21, 22, 24 BOOKS and TREATISES J. Thomas McCarty, McCarthy on Trademarks and Unfair Competition § 12:13 (4th ed. 2010) ................................................................................10 Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990) ..................................11 Paul G. Slade, The Vacuum Interrupter: Theory, Design, and Application (CRC Press, 2007) .....................................................................................9 Robert W. Smeaton, William H. Ubert, Switchgear and Control Handbook, 3rd Edition (McGraw Hill, 1998) pages 14-29 and 14-30. . ……...............9 Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 6 of 31 PageID 31 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 1 OF 25 THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF TEXAS DALLAS DIVISION VACUUM INTERRUPTERS, INC., § § Plaintiff, § CIVIL ACTION NO. 3:17-CV-00759-C § V. § § VR INTERRUPTERS, LLC f/k/a § VACUUM REPLACEMENT § INTERRUPTERS LLC, § § DEFENDANT § DEFENDANT’S MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM, AND BRIEF IN SUPPORT THEREOF TO THE HONORABLE UNITED STATES DISTRICT JUDGE: Defendant VR Interrupters, LLC, files this motion to dismiss plaintiff’s suit for failure to state a claim upon which relief can be granted, as authorized by Federal Rule of Civil Procedure 12(b)(6), and would show as follows: A. Introduction and Summary 1. Plaintiff is Vacuum Interrupters, Inc.; defendant is VR Interrupters, LLC. 2. Plaintiff raised causes of action against Defendant for 1) false advertising under Section 43 of the Lanham Act; 2) trademark infringement under the Texas Business and Commerce Code; 3) trademark infringement under Section 43 of the Lanham Act; 4) unfair competition due to use of name and likeness; and 5) trademark dilution under Texas Business and Commerce Code § 16.29 et seq. Defendant has raised affirmative defenses and counterclaims against Plaintiff in a document being filed simultaneously herewith. 3. Plaintiff has failed to state a claim upon which relief can be granted in its March 15, 2017, Complaint; accordingly, the court should dismiss Plaintiff’s suit in its entirety. Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 7 of 31 PageID 32 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 2 OF 25 B. Standard of Review 4 The court has authority to dismiss a suit for failure to state a claim upon which relief can be granted if the complaint does not state factual allegations showing that the right to relief is plausible and above mere speculation. Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555-56 and 570 (2007). Appellate courts review a district court's dismissal under Rule 12(b)(6) de novo, accepting all well-pleaded facts as true. Sullivan v. Leor Energy, LLC, 600 F.3d 542, 546 (5th Cir. 2010). The complaint must be construed in the light most favorable to the plaintiff and all reasonable inferences must be drawn in plaintiff's favor. Lovick v. Ritemoney Ltd., 378 F.3d 433, 437 (5th Cir. 2004). "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." Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009) (internal quotation omitted). "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 court's review is limited to the complaint, any documents attached to the complaint, and any documents attached to the motion to dismiss that are central to the claim and referenced by the complaint." Lone Star Fund V (U.S.), L.P. v. Barclays Bank PLC, 594 F.3d 383, 387 (5th Cir. 2010). "The court's task is to determine whether the plaintiff has stated a legally cognizable claim that is plausible, not to evaluate the plaintiff's likelihood of success." Id. When the facts alleged do not sufficiently show a plausible claim for relief, plaintiff’s claims should be dismissed. Ashcroft v. Iqbal, 556 U.S. 662,678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009); Erickson v. Pardus, 551 U.S. 89, 93, 127 S.Ct. 2197, 167 L.Ed. 1081(2007); Twombly, 550 U.S. at 555-56. 5. Dismissal under Fed. R. Civ. P. 12(b)(6) is appropriate, and notice and an opportunity to respond may not be required, if the claim is frivolous, the defect cannot be cured by amendment, Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 8 of 31 PageID 33 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 3 OF 25 or the plaintiff cannot prevail based on the facts alleged in the complaint. Clorox Co. P.R. v. Proctor & Gamble Commercial Co., 228 F.3d 24, 30-31 (1st Cir. 2000); Smith v. Boyd, 945 F.2d 1041 (8th Cir. 1991). In a case where a plaintiff pled fraud but did not identify any false or misleading disclosure or statement made by the defendant, the allegations failed to state a claim upon which relief could be granted, and the court acted properly in dismissing the claim. Royal Bus. Corp. v. Realist, Inc., 933 F.2d 1056, 1065-66 (1st Cir. 1991). 6. Conclusory allegations of law or fact, inferences unsupported by facts, or a formulaic recitation of the elements in a complaint will not defeat a Fed. R. Civ. P. 12(b)(6) motion. Iqbal, 556 U.S. at 678; Twombly, 550 U.S. at 555; Fernandez-Montez v. Allied Pilots Ass’n, 987 F.2d 278, 284 (5th Cir. 1993). The court cannot assume or infer that the plaintiff can prove facts it has not alleged. Cline v. Rogers, 87 F.3d 176, 184 (6th Cir.). Similarly, legal conclusions masquerading as factual conclusions need not be treated as true. Blackburn v. City of Marshall, 42 F.3d 925, 931 (5th Cir.1995); see also Iqbal, 556 U.S. at 678, 129 S.Ct. 1937. Although all well-pleaded facts are viewed in the light most favorable to the plaintiff, Turner v. Pleasant, 663 F.3d 770, 775 (5th Cir.2011); Gonzalez v. Kay, 577 F.3d 600, 603 (5th Cir.2009), the Court “will not strain to find inferences favorable to the plaintiff.” Dorsey v. Portfolio Equities, Inc., 540 F.3d 333, 338 (5th Cir.2008)(internal citations and quotations omitted). Therefore, “to avoid a dismissal for failure to state a claim, a plaintiff must plead specific facts.” Dorsey, 540 F.3d at 338. C. Argument and Authorities Failure to State a Claim for False Advertising Under Section 43 of the Lanham Act 7. Plaintiff has asserted a claim for false advertising under §43 of the Lanham Act; however, Plaintiff has failed to state any facts or identify any statements or representations of Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 9 of 31 PageID 34 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 4 OF 25 Defendant that could conceivably support such a claim; accordingly, the cause of action should be dismissed with prejudice. 8. A claim for false advertising or promotion falls under §43(a) of the Lanham Act, which provides as follows: § 1125. False designations of origin, false descriptions, and dilution forbidden (a) Civil action (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-- (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. 15 U.S.C. §1125(a) (emphasis added). The Lanham Act was enacted “to protect persons engaged in such commerce against unfair competition.” 15 U.S.C. § 1127; Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379 (5th Cir. 1996). Section 43(a) provides protection against a “myriad of deceptive commercial practices,” including false advertising or promotion. Seven-Up Co., 86 F.3d at 1383 (quoting Resource Developers v. Statue of Liberty-Ellis Island Found., 926 F.2d 134, 139 (2d Cir.1991)). 9. Some courts have suggested that Congress passed the Lanham Act in order to protect consumers generally. Seven-Up Co., 86 F.3d at 1383; see, e.g., Wojnarowicz v. American Family Ass'n, 745 F.Supp. 130, 141 (S.D.N.Y.1990). However, most courts that have addressed the Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 10 of 31 PageID 35 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 5 OF 25 issue agree that in light of the pro-competitive purpose language found in § 45, “consumers fall outside the range of ‘reasonable interests' contemplated as protected by the false advertising prong of Section 43(a) of the Lanham Act,” Seven-Up Co., , 86 F.3d at 1383 (quoting Serbin v. Ziebart Intern. Corp., 11 F.3d 1163, 1177 (3d Cir.1993)), and thus the primarily pro-competitive purpose of § 43(a) means that “[s]uit may be brought only by a commercial plaintiff who can prove that its interests have been harmed by a competitor's false advertising.” Id., quoting Gordon & Breach, 859 F.Supp. at 1533 (citing cases); see also Serbin, 11 F.3d at 1177 (holding that only commercial plaintiffs or consumers with some discernible competitive injury have standing to sue under the Act). 10. Courts in our jurisdiction have noted that the terms “advertising” and “promotion” should be given their “plain and ordinary meanings.” Seven-Up Co., 86 F.3d at 1384 (internal cites and quotation marks omitted). In order for representations to constitute “commercial advertising or promotion” under Section 43(a)(1)(B), they must be: (1) commercial speech; (2) by a defendant who is in commercial competition with plaintiff; (3) for the purpose of influencing consumers to buy defendant's goods or services. While the representations need not be made in a “classical advertising campaign,” but may consist instead of more informal types of “promotion,” the representations (4) must be disseminated sufficiently to the relevant purchasing public to constitute “advertising” or “promotion” within that industry. Seven-Up Co., 86 F.3d at 1384 (citing Gordon & Breach Science Publishers v. Am. Inst. Of Physics, 859 F.Supp. 1521,1535-36 (S.D.N.Y. 1994). Further, under a claim pursuant to § 43(a), a plaintiff must demonstrate that a commercial advertisement or promotion is either literally false or that the advertisement is likely to mislead and confuse consumers. Seven- Up Co., 86 F.3d at 1390 (emphasis added); McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1548-49 (2d Cir.1991). Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 11 of 31 PageID 36 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 6 OF 25 11. Other courts have summarized the basic elements a plaintiff must allege in an action under § 43(a) as follows: (1) that the defendant has made false or misleading statements as to his own product or another's; (2) that there is actual deception or at least a tendency to deceive a substantial portion of the intended audience; (3) that the deception is material in that it is likely to influence purchasing decisions; (4) that the advertised goods travelled in interstate commerce; and (5) that there is likelihood of injury to the plaintiff in terms of declining sales, loss of goodwill, etc. Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 872 (3d Cir.1992). In this case, none of the above elements has been brought into dispute through the pleadings because there is no allegation or evidence of any false or misleading statements made by Defendant is as to its own product or another’s product. Plaintiff has wholly failed to make any factual allegations that could possibly support the first element of a claim for false advertising under the Lanham Act. Plaintiff has wholly failed to allege any facts of “deception or a tendency to deceive a substantial portion of the intended audience.” See Seven-Up Co., 86 F.3d at 1390. 12. Here, Plaintiff includes a website picture from Defendant’s website (the “Launching Soon” picture). Complaint ¶ 15. Also, Plaintiff includes a picture it claims is from a brochure distributed by Defendant. Complaint ¶ 21. These are the only items upon which Plaintiff bases its claim for false advertising or promotion under the Lanham Act. Notably, nowhere in the Complaint does Plaintiff ever point to a specific word, sentence, or phrase that could support a claim that a commercial advertisement or promotion is either literally false or an advertisement that is likely to mislead and confuse consumers, as required to sustain a claim for false advertising or promotion. See Seven-Up Co., 86 F.3d at 1390 (emphasis added); McNeil-P.C.C., 938 F.2d at 1548-49. Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 12 of 31 PageID 37 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 7 OF 25 13. Plaintiff made general allegations that Defendant is making a defective product although it readily admits it hasn’t viewed or tested Defendant’s product at all, and there are no allegations or factual information provided that any third-party has tested Defendant’s test set and found it defective. See Complaint ¶¶ 16-19. There are no factual allegations that support Plaintiff’s claim of any supposed “defect” in Defendant’s test set. In fact, Plaintiff specifically admits that it supposedly performed “tests” on “an international third-party retailer’s . . .testing box,” (notably, it admits no testing of Defendant’s product) and that Plaintiff “thinks” that the third-party’s testing box is defective (without any factual allegations regarding what tests it supposedly performed on a third-party’s product, or any factual claims regarding the test methodologies or results obtained from the third-party’s product).1 Plaintiff then makes the illogical leap that Defendant is falsely advertising and promoting its own test set to consumers, and that Plaintiff, as a competitor of Defendant, may be injured as a result of a “false representation” made by Defendant in one or both of the included pictures in the Complaint. Complaint ¶¶ 19-21, 24-28. However, in all these allegations, there is not one factual pleading of any statement, claim, or representation made by Defendant in either of the pictures (webpage or brochure) that is false or likely to lead to confusion among consumers. Plaintiff has failed to state a claim upon which relief may be granted for false advertising under the Lanham Act. 14. Here, dismissal under Fed. R. Civ. P. 12(b)(6) is appropriate, and notice and an opportunity to respond is not be required because the claims are frivolous, and Plaintiff cannot cure the pleading defects through amendment. See Clorox, 228 F.3d at 30-31; Smith, 945 F.2d 1041. Even if permitted to amend its factual allegations, there is no situation in which Plaintiff 1 More tellingly, Plaintiff is not bringing and has not brought claims against the unidentified third-party supplier of the test set it claims it tested and found defective, even though Plaintiff claims it is being damaged by Defendant’s supposedly “defective test set” that it claims (without support) is identical to Plaintiff’s and a third-party’s test set. Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 13 of 31 PageID 38 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 8 OF 25 can change the statements or representations contained in either the webpage or the brochure and somehow create a claim for false advertising. There is simply nothing written or represented in those examples that is a false or misleading statement. Further, Plaintiff’s conclusory allegations of fact and inferences unsupported by facts in its Complaint are not sufficient to defeat a Fed. R. Civ. P. 12(b)(6) motion. Iqbal, 556 U.S. at 678; Twombly, 550 U.S. at 555; Fernandez-Montez, 987 F.2d at 284. Accordingly, Plaintiff’s cause of action for false advertising under the Lanham Act must be dismissed with prejudice for failure to state a claim upon which relief may be granted. Plaintiff hasn’t even attempted to identify in its Complaint any specific statement or representation made by Defendant that is false or misleading that is sufficient to form a cognizable claim for false advertising under the Lanham Act; thus, the Court should dismiss with prejudice this cause of action without an opportunity to amend, as such amendment would be fruitless and could not under any circumstance lead to a viable claim for false advertising under the Lanham Act in connection with the allegations made by Plaintiff. Failures to State a Cognizable Claim for Trademark Infringement and Dilution, and Unfair Competition under Federal and State Laws. 15. Plaintiff’s other four causes of action alleged in the Complaint all relate to trademark and tradename laws, and are based on Plaintiff’s allegations that its name, “Vacuum Interrupters, Inc.,” is a valid and protectable name under federal and state trademark and tradename laws. As will be shown below, the words “vacuum interrupter” used together are a generic term or phrase indicating a type of product, or “refe[r] to the genus of which the particular product is a species” and are not registrable or protectable as trademarks. Two Pesos, Inc. v. Taco Cabana, Inc., 112 S.Ct. 2753, 2757 (1992). 16. Specifically, a vacuum interrupter is a switching device that uses electrical contacts in a vacuum. It is the core component of medium-voltage switches. Vacuum interrupters are used in Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 14 of 31 PageID 39 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 9 OF 25 utility power transmission systems and in power distribution systems for railway and industrial plants. Vacuum interrupters can be used for circuit breakers and load switches. Circuit breaker vacuum interrupters are mainly used in the power sector in the substation and power grid facilities, while load switching vacuum interrupters are mainly used for power grids of the end user. Robert W. Smeaton, William H. Ubert, Switchgear and Control Handbook, 3rd Edition, McGraw Hill, 1998, pages 14-29 and 14-30. There are many manufacturers of vacuum interrupters, including General Electric, Westinghouse Electric, Jucro Electric, Cooper Electric, Jenning Electric, France Alsthom, AREVA, Seimens, Toshiba, Fuji, Hitachi, and Mitsubishi to name a few. Paul G. Slade, The Vacuum Interrupter: Theory, Design, and Application (CRC Press, 2007). 17. The term “vacuum interrupter” is merely the generic name of a good, product, item, or part, much like the like the word “battery” is a generic term identifying a type of product, and “apple” is a generic term for a type of fruit of which there are many varieties. These are all generic terms incapable of qualifying for registration as a tradename or trademark under the laws of the United States and Texas. 18. The Fifth Circuit and Texas laws are clear that the following general concepts apply when discussing trademark: A trademark is defined in the Lanham Act as including “any word, name, symbol, or device or any combination thereof” used by any person “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. In order to be registered, a mark must be capable of distinguishing the applicant's goods from those of others. 15 U.S.C. § 1052; Two Pesos, 112 S.Ct. 2753, 2757 (1992). Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 15 of 31 PageID 40 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 10 OF 25 19. Marks are classified in categories of generally increasing distinctiveness; they may be (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Two Pesos, 112 S.Ct. at 2757 (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2nd Cir 1976). The latter three categories of marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive and are entitled to protection. Two Pesos, 112 S.Ct. at 2757. In contrast, generic marks-those that “refe[r] to the genus of which the particular product is a species,” Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 194, 105 S.Ct. 658, 661, 83 L.Ed.2d 582 (1985), citing Abercrombie & Fitch, supra, at 9-are not registrable or protectable as trademarks. Two Pesos, 112 S.Ct. at 2757 (citing Park 'N Fly, supra, 469 U.S. at 194, 105 S.Ct. at 661-662). Factors considered to determine if a mark is generic include: “uncontested generic use by competitors, generic use by the plaintiff, dictionary definitions, media usage, testimony of persons in the trade and consumer surveys.” Hidden Values, Inc. v. Wade, No. 3:11-CV-1917-L) 2012 WL 1836087, at *12 (N.D. Tex., May 18, 2012); see March Madness Athletic Ass'n, L.L. C. v. Netfire, Inc., 162 F.Supp.2d 560, 568-569 (N.D.Tex.2001)(citing McCarthy on Trademarks and Unfair Competition § 12:13 (4th ed. 2010)); DVH Co., Inc. v. Bropfs Corp., No. 3:06CV2084-P, 2007 WL 3284324, at *3 (N.D.Tex. Nov. 6, 2007); Racetrac Petroleum, Inc. v. J.J.'s Fast Stop, Inc., No. 3:01-CV-1397-P, 2003 WL 251318, at *3 (N.D.Tex. Feb.3, 2003). Likewise, marks which are merely descriptive of a product are not inherently distinctive. Two Pesos, 112 S.Ct. at 2757. When used to describe a product, they do not inherently identify a particular source, and hence cannot be protected, just as generic names cannot be protected. Id. However, descriptive marks (as opposed to generic marks) may acquire the distinctiveness which will allow them to be protected. The Lanham Act provides that a descriptive mark that otherwise could not be registered under the Act may be Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 16 of 31 PageID 41 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 11 OF 25 registered if it “has become distinctive of the applicant's goods in commerce.” 15 U.S.C. §§ 1052(e), (f); see Park 'N Fly, supra, at 194, 196, 105 S.Ct., at 661-662-663. This acquired distinctiveness is generally called “secondary meaning.” See ibid.; Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S.Ct. 2187 (1982); Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73 (1938). The concept of secondary meaning has been applied to actions under § 43(a). See, e.g., Two Pesos, 112 S.Ct. at 2758 (referring to University of Georgia Athletic Assn. v. Laite, 756 F.2d 1535 (11th Circuit 1985); Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 215 (2d Cir. 1985)). 20. The general rule regarding distinctiveness is clear: An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning. Restatement (Third) of Unfair Competition § 13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990); cf. Park 'N Fly, supra, 469 U.S., at 194, 105 S.Ct., at 661-662. It is also clear that eligibility for protection under § 43(a) depends on nonfunctionality. See, e.g., Inwood Laboratories, supra, 456 U.S., at 863, 102 S.Ct., at 2193 (WHITE, J., concurring in result); see also, e.g., Brunswick Corp. v. Spinit Reel Co., 832 F.2d 513, 517 (10th Cir. 1987); First Brands Corp. v. Fred Meyers, Inc., 809 F.2d 1378, 1381 (9th Cir. 1987); Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974 (2nd Cir. 1987); AmBrit, Inc. v. Kraft, Inc.,812 F.2d 1531, 1535 (11th Cir. 1986); American Greetings Corp. v. Dan-Dee Imports, Inc., 807 F.2d 1136, 1141 (3rd Cir. 1986). It is, of course, also undisputed that liability under § 43(a) requires proof of the likelihood of confusion after the other hurdles have been met. Two Pesos, 112 S.Ct. at 2758; see, e.g., Brunswick Corp., supra, at 516-517; AmBrit, supra, at 1535; First Brands, supra, at 1381; Stormy Clime, supra, at 974; American Greetings, supra, at 1141. 21. The threshold question in tradename infringement is whether the name at stake qualifies Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 17 of 31 PageID 42 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 12 OF 25 for protection. Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir.1983). Use alone does not confer status as a protectable right; the name must be more than generic or descriptive; a descriptive name must be inherently distinctive or have acquired distinctiveness through secondary meaning by virtue of its use. Two Pesos, 505 U.S. 763, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). 22. Adding the abbreviation “Inc.” to the generic term vacuum interrupters does not transform Plaintiff’s name into a valid, protectable trademark or name, despite Plaintiff’s claims to the contrary in the Complaint. Because the name Vacuum Interrupters, Inc. not a valid and protectable name under trademark law, it is not registrable or protectable as a trademark or tradename. See Two Pesos, 112 S.Ct. at 2757. Likewise, even if Plaintiff makes the argument that Vacuum Interrupters, Inc., is not generic, but instead is descriptive of a product, that argument still falls flat. Descriptive words and marks which are merely descriptive of a product are not inherently distinctive, and when used to describe a product, they do not inherently identify a particular source, and hence cannot be protected, just as generic names cannot be protected. Id. Logically, too, Plaintiff’s Complaint mentions Plaintiff’s vacuum interrupter test set called the MAC TS4 Set. Clearly, the MAC TS4 is not a vacuum interrupter; instead, it is a test set designed to test the viability of a different product - vacuum interrupters. Therefore, the name Vacuum Interrupters, Inc. cannot be claimed to be descriptive of the MAC TS4, another of Plaintiff’s products, and thus cannot be seen as inherently distinctive. Plaintiff’s name is not used to describe their MAC TS4 test set (the product), it does not inherently identify a particular source, and hence cannot be protected, just as generic names cannot be protected. Id. 23. For these reasons, the Court need not go any further in assessing whether Plaintiff has stated a cognizable claim for its remaining four causes of action -- 1) trademark infringement Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 18 of 31 PageID 43 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 13 OF 25 under the Texas Business and Commerce Code; 2) trademark infringement under Section 43 of the Lanham Act; 3) a general claim for unfair competition due to use of name and likeness without any reference to federal or state laws or the common law; and 4) trademark dilution under Texas Business and Commerce Code § 16.29 et seq. - because Plaintiff’s name is a generic term that is not registrable or protectable under trademark or tradename laws. Even if Plaintiff argues its name, Vacuum Interrupters, Inc., is not generic, but instead “descriptive,” federal and state laws are clear that descriptive words and marks which are merely descriptive of a product or item are not inherently distinctive, and when used to describe a product, they do not inherently identify a particular source, and hence cannot be protected, just as generic names cannot be protected. Id. 24. Accordingly, the Court must dismiss with prejudice Plaintiff’s causes of action for trademark infringement under the Texas Business and Commerce Code, trademark infringement under Section 43 of the Lanham Act, unfair competition due to use of name and likeness, and trademark dilution under Texas Business and Commerce Code § 16.29 et seq., under Fed. R. Civ. Pro. 12 (b)(6) for failure to state a claim upon which relief may be granted because Plaintiff’s name, Vacuum Interrupters, Inc., is not a registrable or protectable name under trademark and tradename laws. Further, there is no need to provide Plaintiff with the opportunity to amend its Complaint with regard to the four trademark/tradename claims, because such amendment would be futile and could not lead to a viable claim based on trademark or tradename infringement, dilution, or unfair competition under either federal or state laws. 25. In an abundance of caution, Defendant will address each of the four remaining claims separately. Failure to State a Claim for Trademark Infringement Under the Texas Business and Commerce Code Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 19 of 31 PageID 44 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 14 OF 25 26. The Texas Business and Commerce Code was re-codified and made effective in 2012. Section 16.102 addresses infringement of registered marks, and states as follows: (a) Subject to Section 16.107, a person commits an infringement if the person: (1) without the registrant's consent, uses anywhere in this state a reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter in connection with selling, distributing, offering for sale, or advertising goods or services when the use is likely to deceive or cause confusion or mistake as to the source or origin of the goods or services; or (2) reproduces, counterfeits, copies, or colorably imitates a mark registered under this chapter and applies the reproduction, counterfeit, copy, or colorable imitation to a label, sign, print, package, wrapper, receptacle, or advertisement intended to be used in selling or distributing, or in connection with the sale or distribution of, goods or services in this state. Tex. Bus. and Comm. Code §16.102 (a) (Vernon 2012). Section 16.107 further provides: COMMON LAW RIGHTS NOT AFFECTED. No registration under this chapter adversely affects common law rights acquired prior to registration under this chapter. However, during any period when the registration of a mark under this chapter is in force and the registrant has not abandoned the mark, no common law rights as against the registrant of the mark may be acquired. Tex. Bus. and Comm. Code §16.107 (Vernon 2012). Here, Plaintiff has not alleged or plead that it has registered its trademark or name. Regardless, Section 16.107 makes clear that common law rights are not affected by non-registration of a mark. Texas courts look to federal cases for guidance, as evidenced in the recodified version of the Texas Trademark Act. The stated intent of the recodified version was to bring Texas trademark laws “into alignment with federal trademark infringement and dilution laws, as contained in the model legislation.” House Comm. on Business & Industry, Bill Analysis, 82nd Leg., R.S. (2011). To that end, the construction given to the Lanham Act “should be examined as persuasive authority for interpreting and construing” the Texas Act. Acts of 2011, 82nd Leg., R.S., ch. 563, § 3, 2011 Tex. Sess. Law Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 20 of 31 PageID 45 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 15 OF 25 Serv. 1377. 27. As stated previously, the threshold question in trademark or tradename infringement is whether the name at stake qualifies for protection. Zatarains, 698 F.2d at 790. In order to be registered, a mark must be capable of distinguishing the applicant's goods from those of others. 15 U.S.C. § 1052; Two Pesos, 112 S.Ct. 2753 at 2757. Marks are classified by categories of generally increasing distinctiveness: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful. Two Pesos, 112 S.Ct. at 2757 (citing to Abercrombie & Fitch Co., 537 F.2d at 9. The latter three categories of marks tend to identify a particular source of a product and are deemed inherently distinctive and entitled to protection. Two Pesos, 112 S.Ct. at 2757. Generic marks are not registrable or protectable as trademarks. Id. (citing Park 'N Fly, supra, 469 U.S., at 194, 105 S.Ct., at 661-662). Likewise, marks which are merely descriptive of a product are not inherently distinctive. Id. at 2757. When used to describe a product, they do not inherently identify a particular source, and hence cannot be protected, just as generic names cannot be protected. Id. However, descriptive marks might acquire the distinctiveness which will allow them to be protected if it “has become distinctive of the applicant's goods in commerce.” 15 U.S.C. §§ 1052(e), (f). This distinctiveness is generally called “secondary meaning.” Inwood Laboratories, supra, 456 U.S., at 851, n. 11, 102 S.Ct., at 2187; Kellogg Co., 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73. Use alone does not confer status as a protectable right with a descriptive name; the name must be inherently distinctive or have acquired distinctiveness through secondary meaning by virtue of its use. Two Pesos, 505 U.S. 763, 769, 112 S.Ct. 2753, 2758, 120 L.Ed.2d 615. 28. As shown above, adding “Inc.” to the generic term vacuum interrupters does not transform Plaintiff’s name into a valid, protectable trademark or name, despite Plaintiff’s claims Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 21 of 31 PageID 46 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 16 OF 25 to the contrary. Because the name Vacuum Interrupters, Inc., is not a valid and protectable name under trademark law, it is not registrable or protectable as a trademark or tradename, under either state or federal law. See Two Pesos, 112 S.Ct. at 2757. Likewise, the argument that the name is instead descriptive of a product fails: descriptive words and marks which are merely descriptive of a product are not inherently distinctive, and when used to describe a product, they do not identify a particular source and cannot be protected, just as generic names cannot be protected. Id. Logically, too, Plaintiff’s vacuum interrupter test set called the MAC TS4 Set is not a part called a vacuum interrupter; instead, it is a test set designed to test the viability of a different part - vacuum interrupters. Therefore, the name Vacuum Interrupters, Inc. cannot be claimed to be descriptive of the MAC TS4, another of Plaintiff’s products, and thus cannot be seen as inherently distinctive or have gained secondary meaning. Plaintiff’s name does not describe their MAC TS4 test set (the product in issue), it does not inherently identify a particular source, and cannot be protected, just as generic names cannot be protected. Id. 29. For these reasons, the Court need not go further in assessing whether Plaintiff has stated a cognizable claim for trademark infringement under the Texas Business and Commerce Code because Plaintiff’s name is a generic term that is not registrable or protectable under trademark or tradename laws. Plaintiff cannot make an argument that its name is “descriptive,” because federal and state laws are clear that descriptive words and marks which are merely descriptive of a product or item are not inherently distinctive, and when used to describe a product, they do not inherently identify a particular source, and cannot be protected, just as generic names cannot be protected. Id. 30. Accordingly, the Court must dismiss with prejudice Plaintiff’s cause of action for trademark infringement under the Texas Business and Commerce Code under Fed. R. Civ. Pro. Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 22 of 31 PageID 47 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 17 OF 25 12 (b)(6) for failure to state a claim upon which relief may be granted because Plaintiff’s name, Vacuum Interrupters, Inc., is not a registrable or protectable name under either state or federal trademark. Again, there is no need for the Court to give Plaintiff an opportunity to amend its Complaint with regard to the trademark infringement claim under Tex. Bus. & Comm. Code, because such amendment would be futile and could not lead to a cognizable claim. Failure to State a Claim for Trademark Infringement Under Section 43 of the Lanham Act 31. Although the Lanham Act establishes separate causes of action under Section 32 and Section 43(a), “‘[t]he same tests apply to both trademarks and trade dress to determine whether they are protectable and whether they have been infringed, regardless of whether they are registered or unregistered.’” Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225, 236 (5th Cir.2010) (quoting Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 536 (5th Cir.1998)). To succeed in an infringement claim under the Lanham Act, Plaintiff must first “establish ownership in a legally protectible mark, and second ... show infringement by demonstrating a likelihood of confusion.” Amazing Spaces, 608 F.3d at 235-36 (quoting Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 474 (5th Cir.2008); citing Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir.2008)). Here, Plaintiff has not alleged that its trademark is registered, and thus must show another means of proving the mark is legally protectible. 15 U.S.C. § 1115(a). As shown in the two prior sections, Plaintiff does not have a legally valid and protectable mark. Adding “Inc.” to the generic term vacuum interrupters does not transform Plaintiff’s name into a valid, protectable trademark or name, and the name is not registrable or protectable as a trademark or tradename, under either state or federal law. See Two Pesos, 112 S.Ct. at 2757. Likewise, the name is not descriptive of a product. Descriptive words and marks which are merely descriptive of a product are not inherently distinctive, and Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 23 of 31 PageID 48 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 18 OF 25 when used to describe a product, they do not identify a particular source and cannot be protected, just as generic names cannot be protected. Id. The name Vacuum Interrupters, Inc., cannot and is not claimed to be descriptive of the MAC TS4, another of Plaintiff’s products, and thus cannot be seen as inherently distinctive or have gained secondary meaning. 32. For these reasons, the Court need not go further in assessing whether Plaintiff has stated a cognizable claim for trademark infringement under the Lanham Act because Plaintiff cannot first “establish ownership in a legally protectible mark,” the first element of a claim for trademark infringement, because generic and descriptive names are not capable of trademark protection. See Amazing Spaces, 608 F.3d at 235-36 (quoting Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll., 550 F.3d at 474. Accordingly, the Court must dismiss with prejudice Plaintiff’s cause of action for trademark infringement under the Lanham Act on the basis of Fed. R. Civ. Pro. 12 (b)(6) for failure to state a claim upon which relief may be granted because Plaintiff cannot establish ownership in a legally protectible mark. Again, there is no need for the Court to give Plaintiff an opportunity to amend its Complaint with regard to the trademark infringement claim under the Lanham Act, because such amendment would be futile and could not lead to a cognizable claim. Failure to State a Claim for Unfair Competition Due to Use of Name and Likeness 33. Here, Plaintiff has alleged a vague claim for unfair competition due to Defendant’s use of Plaintiff’s name and likeness, yet Plaintiff has wholly failed to identify which laws or statutes it is claiming have been violated by Defendant, or whether the laws supposedly violated are state or federal laws. Moreover, Plaintiff has not identified any facts to support the vague claim of unfair competition. Plaintiff has wholly failed to even plead the formulaic elements of its vague claim of unfair competition, and has failed to “give the [D]efendant fair notice of what the ... Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 24 of 31 PageID 49 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 19 OF 25 claim is and the grounds upon which it rests.” Twombly, 550 U.S. at 555. The federal rules require that Plaintiff must include “more than an unadorned, the-defendant-unlawfully-harmed- me accusation.” Iqbal, 556 U.S. at 678, 129 S.Ct. 1937, 173 L.Ed.2d 868. Even a pleading that offers labels and conclusions or a formulaic recitation of the elements of a cause of action (missing here) will not suffice. Twombly, 550 U.S. at 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007). Likewise, a complaint that articulates “naked assertions devoid of further factual enhancement” is similarly insufficient to satisfy the pleading requirements of Rule 8. Iqbal, 556 U.S. at 678, 129 S.Ct. 1937 (internal punctuation omitted). 34. When a complaint does not meet the pleading requirements, Rule 12(b)(6) authorizes dismissal of a civil action. Fed. R. Civ. P. 12(b)(6). To survive a motion to dismiss, the complaint must articulate “the plaintiffs grounds for entitlement to relief-including factual allegations that when assumed to be true raise a right to relief above the speculative level.” Cuvillier v. Sullivan, 503 F.3d 397, 401 (5th Cir.2007). Stated otherwise, in order to withstand a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to state a claim for relief that is plausible on its face. Iqbal, 556 U.S. at 678, 129 S.Ct. 1937 (quoting Twombly, 550 U.S. at 570, 127 S.Ct. 1955); Turner, 663 F.3d at 775. A claim for relief is implausible on its face when “the well-pleaded facts do not permit the court to infer more than the mere possibility of misconduct.” Iqbal, 556 U.S. at 678, 129 S.Ct. 1937. This “plausibility standard is not akin to a probability requirement, but asks for more than a sheer possibility that a defendant has acted unlawfully.” Iqbal, 556 U.S. at 678, 129 S.Ct. 1937 (internal quotations omitted). Where a complaint pleads facts that are merely consistent with a defendant's liability, it stops short of the line between possibility and plausibility of entitlement to relief. Twombly, 550 U.S. at 557, 127 S.Ct. 1955. Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 25 of 31 PageID 50 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 20 OF 25 35. Under this rubric, dismissal is proper because the Complaint: (1) does not include a cognizable legal theory, Ramming v. United States, 281 F.3d 158, 161 (5th Cir.2001), and (2) does not include a cognizable legal theory supported with enough facts to state a claim to relief that is plausible on its face, Pleasant, 663 F.3d at 775; see also Frith v. Guardian Life Ins. Co., 9 F.Supp.2d 734, 737-38 (S.D.Tex.1998) (Gilmore, J.) (holding that dismissal pursuant to Rule 12(b)(6) “can be based either on a lack of a cognizable legal theory or the absence of sufficient facts alleged under a cognizable legal theory”). 36. Similarly, legal conclusions masquerading as factual conclusions need not be treated as true. Blackburn, 42 F.3d at 931; see also Iqbal, 556 U.S. at 678, 129 S.Ct. 1937. The Court “will not strain to find inferences favorable to the plaintiff.” Dorsey, 540 F.3d at 338 (internal citations and quotations omitted). Therefore, “to avoid a dismissal for failure to state a claim, a plaintiff must plead specific facts.” Id. 37. Here, Plaintiff has failed to include a cognizable, identified legal theory, and has further failed to support an identified legal theory with enough facts stating a plausible claim to relief and stops far short of the line between possibility and plausibility of entitlement to relief. Twombly, 550 U.S. at 557, 127 S.Ct. 1955. Further, the lack of any detail concerning law or facts relied upon makes Plaintiff’s claim implausible on its face because the facts alleged do not permit the court to infer more than the mere possibility of misconduct. See Iqbal, 556 U.S. at 678, 129 S.Ct. 1937. Therefore, the Court should dismiss Plaintiff’s vague and undefined claim for unfair competition due to defendant’s use of Plaintiff’s name and likeness because 38. In an abundance of caution, Defendant provides the following: unfair competition seeks to prevent one party from obtaining an unfair advantage over another party. Some examples of unfair competition include trademark infringement. Trademark infringement law is part of the Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 26 of 31 PageID 51 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 21 OF 25 broader law of unfair competition. Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418, 428, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003); Union Nat'l Bank of Tex., Laredo, Tex. v. Union Nat'l Bank of Tex., Austin, Tex., 909 F.2d 839, 843 n. 10 (5th Cir.1990). That law prohibits uses of trademarks, service marks, and trade names that are likely to cause confusion as to the source of the product or service. Congress enacted the Lanham Act to provide for national protection of marks used in interstate and foreign commerce. See Park 'N Fly, Inc., 469 U.S. 189, 193, 105 S.Ct. 658, 83 L.Ed.2d 582. The Texas legislature similarly enacted legislation to confer statewide protection for the owner of a mark. See Tex. Bus. & Com.Code Ann. § 16.001 et seq. Hot-Hed, Inc. v. Safehouse Habitats (Scot.), Ltd., 333 S.W.3d 719, 730 (Tex.App.-Houston [1st Dist.] 2010, pet. denied). Courts therefore look to the Lanham Act and cases thereunder for generally accepted principles of substantive trademark law and to discern meaning and interpretation of the state law provisions. See KLN Steel Prods. Co. v. CNA Ins. Cos., 278 S.W.3d 429, 440-41 (Tex.App.-San Antonio 2008, pet. denied). 39. “Unfair competition under Texas law is the umbrella for all statutory and nonstatutory causes of action arising out of business conduct which is contrary to honest practice in industrial or commercial matters.” Taylor Pub. Co. v. Jostens, Inc., 216 F.3d 465, 486 (5th Cir.2000) (citations omitted). Liability for unfair competition must be premised on some “independent substantive tort or other illegal conduct.” Schoellkopf v. Pledger, 778 S.W.2d 897, 904-05 (Tex.App.-Dallas 1989, writ denied). “Although the illegal act need not necessarily violate criminal law, it must at least be an independent tort.” Taylor Pub., 216 F.3d at 486. 40. Here, all of Plaintiff’s claims could all fall under the umbrella of “unfair competition:” 1) false advertising under Section 43 of the Lanham Act; 2) trademark infringement under the Texas Business and Commerce Code; 3) trademark infringement under Section 43 of the Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 27 of 31 PageID 52 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 22 OF 25 Lanham Act; 4) unfair competition due to use of name and likeness; and 5) trademark dilution under Texas Business and Commerce Code § 16.29 et seq. As addressed in this motion to dismiss, Plaintiff has failed to state a claim upon which all four of the identified claims (false advertising and trademark infringement under the Lanham Act, trademark infringement and trademark dilution under the Texas Business and Commerce Code); therefore, if Plaintiff is attempting to buttress its vague claim of “unfair competition due to use of name and likeness” with the other four claims raised and alleged, this remaining claim of “unfair competition due to use of name and likeness” must likewise be dismissed for failure to state a claim upon which relief can be granted. 41. Further, Plaintiff has pled absolutely no facts showing that Defendant is using the name “Vacuum Interrupters, Inc.” or has in any manner used some unidentified and unpled “likeness” of Vacuum Interrupters, Inc. For these further reasons, Plaintiff has failed to state a claim upon which relief may be granted based on a vague claim of unfair competition due to use of name and likeness, and thus the vague claim of unfair competition should be dismissed in its entirety. Failure to State a Claim for Trademark Dilution Under Texas Business and Commerce Code § 16.29 et seq. 42. Plaintiff asserts a cause of action for trademark dilution by blurring under the Tex. Bus. & Comm. Code § 16.29, et seq. Complaint ¶¶ 52-55. Plaintiff is apparently unaware that Tex. Bus. & Comm. Code § 16.29 no longer exists, and has not existed for at least five years. The Texas Business and Commerce Code was re-codified and became effective in 2012. 43. The current version of the Tex. Bus. & Comm. Code includes Sec. 16.103, which addresses claims of “dilution.” Specifically, the code provides: Subject to the principles of equity, the owner of a mark that is famous and distinctive, inherently or through acquired distinctiveness, in this state is entitled to enjoin another person's commercial use of a mark or trade name that begins Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 28 of 31 PageID 53 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 23 OF 25 after the mark has become famous if use of the mark or trade name is likely to cause the dilution of the famous mark. Tex. Bus. & Comm. Code § 16.103(a). Claims relating to dilution are sufficiently similar to the prior version of the Code to discuss opinions predating 2012. As a preliminary matter, in order to establish a dilution claim, the plaintiff must show (1) ownership of a distinctive mark; only after a distinctive mark is show does the court move on to the second element, (2) a likelihood of dilution. Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d 497, 506 (2nd Cir.1996). A likelihood of dilution may be shown under two separate theories: dilution by “blurring” or “tarnishment.” Id.; Jordache Enter. Inc. v. Hogg Wyld, Ltd., 828 F.2d 1482, 1489 (10th Cir.1987). 44. Dilution by blurring may occur where the defendant uses the plaintiff's mark to identify the defendant's goods and services, “raising the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff's product.” Deere & Co. v. MTD Products, Inc., 41 F.3d 39, 43 (2nd Cir 1994); see also Jordache Enters., 841 F.Supp. at 522 (Dilution from blurring “‘refers to a loss of distinctiveness, a weakening of a mark's propensity to bring to mind a particular product, service, or source of either.’” (quotations omitted)). “If the plaintiff holds a distinctive trade mark, it is enough that the defendant has made significant use of a very similar mark.” Freedom Sav. & Loan Ass'n v. Way, 757 F.2d 1176, 1186 (11th Cir.) cert. denied, 474 U.S. 845, 106 S.Ct. 134, 88 L.Ed.2d 110 (1983). 45. Here, again, Plaintiff’s have failed to present any factual allegations tending to show that it has a distinctive mark, thus there is no basis for addressing whether Plaintiff has plead sufficient facts to support a cause of action for dilution by blurring. In fact, Plaintiff’s name is just a generic name of an item or product (vacuum interrupters), and addition of “Inc.” does not transform Plaintiff’s name into a valid, protectable trademark or name, or raise it beyond the Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 29 of 31 PageID 54 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 24 OF 25 level of generic or descriptive, and to the level of being distinctive, as required under Texas law. Descriptive words and marks which are merely descriptive of a product are not inherently distinctive, and when used to describe a product, they do not inherently identify a particular source, and hence cannot be protected, just as generic names cannot be protected. 46. For these reasons, the Court need not go any further in assessing whether Plaintiff has stated a cognizable claim for trademark dilution under Texas Business and Commerce Code § 16.29 et seq. - because the section of the Code no longer exists, and because Plaintiff’s name is generic, or viewed in a light most favorable to Plaintiff, “descriptive,” categorizations that federal and state laws make clear are words and marks which are merely descriptive of a product or item and are not inherently distinctive, and when used to describe a product, they do not inherently identify a particular source, and hence cannot be protected, just as generic names cannot be protected. Further, Plaintiff has not alleged in any manner that Defendant has used or is using the name “Vacuum Interrupters, Inc.” There is no factual allegation that Defendant has made any commercial use of Plaintiff’s name (despite its lack of distinctiveness) in any manner. For this additional reason, Plaintiff’s claim of dilution under Texas law and the allegations supporting such a claim should be dismissed for failure to state a claim upon which relief can be granted. D. Conclusion 47. Because Plaintiff has failed to allege sufficient facts, and in some instances identifiable causes of action, Plaintiff has failed to state a claim upon which relief can be granted on all five of its causes of action (1) false advertising under Section 43 of the Lanham Act; 2) trademark infringement under the Texas Business and Commerce Code; 3) trademark infringement under Section 43 of the Lanham Act; 4) unfair competition due to use of name and likeness; and 5) Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 30 of 31 PageID 55 DEFANDANT'S MOTION TO DISMISS AND BRIEF IN SUPPORT - PAGE 25 OF 25 trademark dilution under Texas Business and Commerce Code § 16.29 et seq.), and the Court should thus dismiss the suit against Defendant in its entirety. E. Prayer for Relief WHEREFORE, PREMISES CONSIDERED, Defendant VR Interrupters, LLC, prays the Court will dismiss all of Plaintiff’s causes of action against it on the basis that Plaintiff has failed to state a claim upon which relief may be granted; sign an order of dismissal of Plaintiff’s claims, order that Plaintiff take nothing by reason of its actions herein, and grant Defendant all such other and further relief to which Defendant may show itself justly entitled. Respectfully submitted, GRABLE MARTIN FULTON, PLLC By: /s/ Elizabeth P. Ardanowski ELIZABETH P. ARDANOWSKI Texas State Bar No. 00793275 6120 Swiss Ave., Box 141257 Dallas, Texas 75214 Telephone: (469) 450-1302 Facsimile: (972) 499-1361 eardanowski@gchub.com ATTORNEYS FOR DEFENDANT VR Interrupters, Inc. CERTIFICATE OF SERVICE I hereby certify that on May 8, 2017 a true and correct copy of the above and foregoing document shall be served via electronic means, if available, otherwise by regular, first class mail, to: Mr. Robert Slovak and Ms. Calli Turner Gardere Wynne Sewell LLP 2021 McKinney Avenue, Suite 1600 Dallas, Texas 75201 /s/ Elizabeth P. Ardanowski rslovak@gardere.com; cturner@gardere.com ELIZABETH P. ARDANOWSKI Case 3:17-cv-00759-C Document 8 Filed 05/08/17 Page 31 of 31 PageID 56