Puparazzi Industries of America LLC v. Puparazzi Pet Spa LLC

Filing 21

ORDER AND OPINION - For the reasons above, defendant's motion at docket 16 to dismiss the complaint pursuant to Federal Rule 12(b)(6) is GRANTED without prejudice to an amended complaint. Plaintiff's amended complaint shall be filed within 14 days from the date of this order. (See document for full details). Signed by Judge John W Sedwick on 5/23/12.(LAD)

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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 DISTRICT OF ARIZONA 10 11 12 PUPARAZZI INDUSTRIES OF AMERICA, LLC, 13 Plaintiff, 14 vs. 15 PUPARAZZI PET SPA, LLC, 16 Defendant. 17 ) ) ) ) ) ) ) ) ) ) ) 2:12-cv-00084 JWS ORDER AND OPINION [Re: Motion at Docket 16] 18 I. MOTION PRESENTED 19 At docket 16, defendant Puparazzi Pet Spa, LLC (“defendant” or “PPS”) moves 20 pursuant to Federal Rule of Civil Procedure 12(b)(6) to dismiss the complaint for failure 21 to state a claim. Plaintiff Puparazzi Industries of America, LLC (“plaintiff” or “PIA”) 22 opposes the motion at docket 18. Defendant’s reply is at docket 20. Oral argument 23 was requested but would not assist the court. 24 25 26 27 28 -1- II. BACKGROUND1 1 2 PIA provides pet grooming services via a mobile pet grooming van in the Phoenix 3 metropolitan area. PPS is a pet grooming salon in Phoenix. The word “Puparazzi” is 4 used in both companies’ names. 5 The marks PUPARAZZI MOBILE PET SPAW and WHERE YOUR PET’S THE 6 STAR are affixed to PIA’s van. PIA alleges that it has used the PUPARAZZI mark since 7 May 10, 2010. PIA applied for federal trademark registration on November 21, 2011; its 8 application is pending. PIA is attempting to register PUPARAZZI MOBILE PET SPAW 9 for animal grooming services. 10 PIA maintains that PPS uses the marks PUPARAZZI PET SPA and EVERY DOG 11 IS A STAR! in its pet grooming service. PIA maintains that PPS did not offer pet 12 grooming services until September 2011. 13 PIA filed this lawsuit in federal court on January 13, 2012. PIA has asserted a 14 claim for trademark infringement, in violation of § 43(a) of the Lanham Act and one 15 common law claim for unfair competition. III. STANDARD OF REVIEW 16 17 A motion to dismiss for failure to state a claim, pursuant to Federal Rule of Civil 18 Procedure 12(b)(6), tests the legal sufficiency of a plaintiff’s claims. In reviewing such a 19 motion, “[a]ll allegations of material fact in the complaint are taken as true and 20 construed in the light most favorable to the nonmoving party.”2 Dismissal for failure to 21 state a claim can be based on either “the lack of a cognizable legal theory or the 22 absence of sufficient facts alleged under a cognizable legal theory.”3 “Conclusory 23 allegations of law . . . are insufficient to defeat a motion to dismiss.”4 24 25 1 All background information is taken from the Complaint at docket 1. 26 2 27 3 28 4 Vignolo v. Miller, 120 F.3d 1075, 1077 (9th Cir. 1997). Balistreri v. Pacifica Police Dept., 901 F.2d 696, 699 (9th Cir. 1990). Lee v. City of Los Angeles, 250 F.3d 668, 679 (9th Cir. 2001). -2- 1 To avoid dismissal, a plaintiff must plead facts sufficient to “state a claim to relief 2 that is plausible on its face.”5 “A claim has facial plausibility when the plaintiff pleads 3 factual content that allows the court to draw the reasonable inference that the defendant 4 is liable for the misconduct alleged.”6 “The plausibility standard is not akin to a 5 ‘probability requirement’ but it asks for more than a sheer possibility that a defendant 6 has acted unlawfully.”7 “Where a complaint pleads facts that are ‘merely consistent’ 7 with a defendant’s liability, it ‘stops short of the line between possibility and plausibility of 8 entitlement to relief.’”8 “In sum, for a complaint to survive a motion to dismiss, the non- 9 conclusory ‘factual content,’ and reasonable inferences from that content, must be 10 plausibly suggestive of a claim entitling the plaintiff to relief.”9 IV. DISCUSSION 11 12 13 A. The Court Will Not Consider Items Outside the Complaint Defendant’s first argument is that eleven other dog or animal-related services 14 throughout the country use the term “puparazzi.” Defendant argues that such use of the 15 term indicates that PIA’s attempt to register the mark will fail. Federal Rule 12(d) 16 provides that “[i]f, on a motion under Rule 12(b)(6) . . . matters outside the pleadings are 17 presented to and not excluded by the court, the motion must be treated as one for 18 summary judgment under Rule 56.”10 The court declines to treat the present motion as 19 a motion for summary judgment and therefore will not consider matters outside plaintiff’s 20 complaint, including evidence that eleven other business use the term “puparazzi.” 21 22 5 23 Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009). 6 24 25 Id. 7 Id. (citing Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 556 (2007)). 26 8 27 9 28 10 Id. (quoting Twombly, 550 U.S. at 557). Moss v. U.S. Secret Serv., 572 F.3d 962, 969 (9th Cir. 2009). Fed. R. Civ. P. 12(d). -3- 1 2 B. Whether Plaintiff Has Alleged that “Puparazzi” Is Protectable “To claim trademark infringement, a plaintiff must have a valid, protectable 3 trademark.”11 “The plaintiff bears the ultimate burden of proof in a trademark- 4 infringement action that the trademark is valid and protectable.”12 Defendant argues 5 that the term “puparazzi” merely describes dog-related services and has no secondary 6 meaning, and therefore plaintiff’s mark is unprotectable.13 7 “[F]ederal registration provides prima facie evidence of [a] mark’s validity and 8 entitles the plaintiff to a strong presumption that the mark is a protectable mark.”14 9 Plaintiff alleges that it has applied to register PUPARAZZI MOBILE PET SPAW, but 10 without action from the United States Patent and Trademark Office (“USPTO”), plaintiff 11 is not entitled to that presumption. The question, therefore, is whether plaintiff has pled 12 facts plausibly suggesting that PUPARAZZI MOBILE PET SPAW is protectable. 13 Plaintiff cites district court authority for the proposition that it need only plead 14 facts establishing the date of its first use of the mark, that it is the senior user of the 15 mark in the Phoenix area, and that defendant’s use is likely to confuse the public. 16 Although ownership of the mark may be established by proof that “the party claiming 17 ownership must have been the first to actually use the mark in the sale of goods or 18 services,”15 such a showing does not establish protectability. Because the only facts in 19 plaintiff’s complaint that could be construed to support its mark’s validity are those 20 21 22 23 11 Zobmondo Entertainment, LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010) (internal quotations omitted). 12 24 25 26 Id. 13 See id. (“Merely descriptive marks are . . . not inherently distinctive and are therefore not entitled to automatic trademark protection” but can become protectable if they have acquired secondary meaning). 27 14 28 15 Id. Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d 1217, 1219 (9th Cir. 1996). -4- 1 concerning its application for registration with the USPTO, plaintiff’s complaint falls short 2 of the federal pleading standard. 3 The parties devote considerable briefing to whether PUPARAZZI MOBILE PET 4 SPAW is descriptive, suggestive, arbitrary, or fanciful.16 Because the category to which 5 a mark belongs is a factual issue, it is not properly resolved on a 12(b)(6) motion, which 6 by nature focuses on the allegations in the complaint. 7 C. Unfair Competition Claim 8 Defendant argues that plaintiff’s unfair competition claim fails for the same 9 reason its federal claim fails. In Arizona, the common law doctrine of unfair competition 10 “encompasses several tort theories, such as trademark infringement, false advertising, 11 palming off, and misappropriation.”17 Plaintiff’s complaint states only that “PIA and PPS 12 are competitors,” that “PPS is unfairly competing with PIA” by using the PUPARAZZI 13 PET SPA and EVERY DOG IS A STAR! marks, and that “PPS’ actions . . . constitute 14 unfair competition.”18 Plaintiff’s allegations are conclusory and therefore do not comport 15 with the federal pleading standard.19 Plaintiff’s allegations do not include facts plausibly 16 suggestive of either a common law claim or a claim under Arizona’s statutory scheme.20 17 D. Leave to Amend 18 “[I]n dismissing for failure to state a claim under Rule 12(b)(6), a district court 19 should grant leave to amend even if no request to amend the pleading was made, 20 unless it determines that the pleading could not possibly be cured by the allegation of 21 22 23 16 24 25 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). 17 Fairway Constructors, Inc. v. Ahern, 970 P.2d 954, 956 (Ariz. Ct. App. 1998). 26 18 27 19 28 20 Doc. 1 at 4. See, e.g., Lee, 250 F.3d at 679. See A.R.S. § 44-1451 (providing remedies for infringement of registered marks). -5- 1 other facts.”21 Plaintiff has requested leave to amend and the defects in the complaint 2 could be cured by allegation of additional facts. 3 4 V. CONCLUSION For the reasons above, defendant’s motion at docket 16 to dismiss the complaint 5 pursuant to Federal Rule 12(b)(6) is GRANTED without prejudice to an amended 6 complaint. Plaintiff’s amended complaint shall be filed within 14 days from the date of 7 this order. 8 DATED this 23rd day of May 2012. 9 /s/ JOHN W. SEDWICK UNITED STATES DISTRICT JUDGE 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 21 Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000). -6-

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