First Service Networks Incorporated v. First Service Maintenance Group Incorporated

Filing 68

ORDER that Plaintiff's 47 Motion to Dismiss Defendant's counterclaims is granted with respect to claim VII and denied with respect to the remaining counterclaims. Signed by Judge David G Campbell on 11/21/2012.(LFIG)

1

WO

2
3
4
5
6

IN THE UNITED STATES DISTRICT COURT

7

FOR THE DISTRICT OF ARIZONA

8
9

First Service Networks, Inc.,
Plaintiff,

10
11

ORDER

v.

12

No. CV-11-01897-PHX-DGC

First Service Maintenance Group, Inc.,
Defendant.

13
14

Before the Court is First Service Networks, Inc.’s (“FSN” or “Plaintiff”) motion to

15

dismiss counterclaims IV, V, VI, VII, and VIII for failure to state a claim. Doc. 47. First

16

Service Maintenance Group, Inc. (“FSMG” or “Defendant”) filed a response (Doc. 53)

17

and Plaintiff filed a reply (Doc. 57). No party has requested oral argument. For the

18

reasons that follow, the Court will deny in part and grant in part Plaintiff’s motion to

19

dismiss the counterclaims.

20

I.

Background.

21

On September 27, 2011, FSN filed suit against FSMG for trademark infringement,

22

unfair competition, unjust enrichment, and anticybersquatting. Doc. 1. The claims are

23

based on U.S. Trademarks 2,737,643 and 2,942,344 which are both owned by FSN. Id.

24

¶ 12. In its answer to the complaint, FSMG raised multiple counterclaims, five of which

25

assert that the registered trademarks are invalid (Counterclaims IV-VIII). Doc. 45 at 13-

26

16. Plaintiff moves to dismiss each of the counterclaims that assert that the trademarks

27

are invalid. Doc. 47.

28

1

II.

Legal Standard.

2

A defendant’s counterclaims are held to the same pleading standard as a plaintiff’s

3

complaint. Starr v. Baca, 652 F.3d 1202, 1216 (9th Cir. 2011). When analyzing a

4

complaint or counterclaim for failure to state a claim to relief under Rule 12(b)(6), the

5

well-pled factual allegations are taken as true and construed in the light most favorable to

6

the nonmoving party. Cousins v. Lockyer, 568 F.3d 1063, 1067 (9th Cir. 2009). Legal

7

conclusions couched as factual allegations are not entitled to the assumption of truth,

8

Ashcroft v. Iqbal, 556 U.S. 662, 680 (2009), and they are insufficient to defeat a motion

9

to dismiss for failure to state a claim, In re Cutera Sec. Litig., 610 F.3d 1103, 1108 (9th

10

Cir. 2010). To avoid a Rule 12(b)(6) dismissal, the complaint must plead “enough facts

11

to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550

12

U.S. 544, 570 (2007).

13

III.

Analysis.

14

Defendant consents to dismissal of counterclaim VII with prejudice. Doc. 53 at 7,

15

n. 2. Defendant also concedes that the marks are incontestable pursuant to 15 U.S.C.

16

§ 1065, and that their validity can no longer be challenged as “merely descriptive.”

17

Doc. 53 at 7, n. 1; 15; see Reno Air Racing Ass’n v. McCord, 452 F.3d 1126, 1135 (9th

18

Cir. 2006); Park’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). Defendant

19

maintains, however, that the marks are generic.

20

counterclaim for which FSN has requested dismissal also asserts genericness as grounds

21

for invalidity.”) (emphasis removed).

Doc. 53 at 4 (“However, each

22

Trademarks generally identify the source of goods or services, but generic marks

23

“refer[] to the genus of which the particular product is a species” and therefore are not

24

source-identifying. Park’N Fly, Inc., 469 U.S. at 194. “To determine whether a term [is]

25

generic, we look to whether consumers understand the word to refer only to a particular

26

producer’s goods or whether the consumer understands the word to refer to the goods

27

themselves . . . Whether a mark is generic is a question of fact.” Yellow Cab Co. v.

28

Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005).
-2-

An otherwise

1

incontestable mark may be challenged on the ground that it has become generic. 15

2

U.S.C. § 1064(3); 15 U.S.C. § 1115(b).

3

Because the classification of a mark as generic is based on how the purchasing

4

public for the particular service or good perceives the mark, FSMG argues that their

5

allegations that the marks are generic present questions of fact that must be resolved by a

6

fact finder. Doc. 53 at 8. FSN counters that merely asserting the marks are generic,

7

without additional allegations, fails the pleading standard in Twombly. Doc. 57 at 4.

8

FSMG alleges that “‘first service’ and/or ‘1st service’ are not associated by the

9

public with any particular source” and that “numerous entities offer services that they

10

describe as ‘first service’ and/or ‘1st service.’” Doc. 45 ¶¶ 7-8. They also allege that

11

FSN’s marks are generic names “for all or a portion of the services recited in the

12

registration, namely, technical facilities management services,” and that “purchaser[s] of

13

services offered under [the marks] . . . understand that such designation does not refer to

14

a specific, exclusive source of the services but instead refers to a service name and

15

category.” Id. ¶¶ 9-10, 32.

16

Accepting these allegations as true, as the Court must on a motion to dismiss, the

17

Court finds them sufficient to support FSMG’s counterclaims. If the general public and

18

specific consumers believe the marks are generic names for the kinds of services that

19

both FSN and FSMG provide, as FSMG has alleged, then FSMG will succeed in its

20

claims.

21

IT IS ORDERED that Plaintiff’s motion to dismiss Defendant’s counterclaims

22

(Doc. 47) is granted with respect to claim VII and denied with respect to the remaining

23

counterclaims.

24

Dated this 21st day of November, 2012.

25
26
27
28
-3-