Desert European Motorcars Ltd v. Desert European Motorcars Inc et al

Filing 25

ORDER by Judge Ronald S.W. Lew, Grants in part and Denies in part Plaintiff's MOTION to Strike, or in the alternative, for More Definite Statement 15 . The Court grants Plaintiff's Motion to Strike 4-9, 12-13, 15-16, with 20 days leave to amend; grants Plaintiff's Motion to Strike 11, 17, 27, 28 without leave to amend; denies Plaintiff's Motion to Strike 3, 10, 14, 21, 23-24, 26. The Court DENIES Plaintiff's Motion to Strike with regard to this phrase regarding constru ctive notice. The Court GRANTS Plaintiff's Motion to Strike and STRIKES with 20 days leave to amend Defendant's prayer for attorney's fees. The Court GRANTS Plaintiff's Motion to Strike and STRIKES with 20 days leave to amend the phrase in the Answer and Counterclaim regarding Defendant's intention of filing a petition to cancel Plaintiff's trademark, or in the alternative, to concurrently use the term "Desert European Motorcars." The Court GRANTS Plaintif f's Motion and STRIKES with 20 days leave to amend this request for injunctive relief. Finally, the Court DENIES Plaintiff's Motion for a More Definite Statement Pursuant to Federal Rule of Civil Procedure 12(e). (Refer to attached document for details.) (lom)

Download PDF
1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 CENTRAL DISTRICT OF CALIFORNIA 9 10 Desert European Motorcars, Ltd., a California 11 corporation, 12 Plaintiff, 13 v. 14 Desert European Motorcars, 15 Inc., dba Desert European Motorcars, an Arizona 16 corporation, and DOES 1-10 inclusive, 17 Defendants. 18 Desert European Motorcars, 19 Inc., dba Desert European Motorcars, an Arizona 20 corporation, 21 Counterclaimant, 22 v. 23 Desert European Motorcars, 24 Ltd., a California corporation 25 Counterdefendant. 26 27 ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) EDCV 11-197 RSWL (DTBx) ORDER Re: Plaintiff’s Motion To Strike, Or In The Alternative, For More Definite Statement [15] On August 23, 2011, Plaintiff and Counterdefendant 28 Desert European Motorcars, Ltd.’s Motion to Strike, or 1 in the alternative, For More Definite Statement [15] 2 came on for regular calendar before this Court. Having 3 considered all the papers and arguments pertaining to 4 this Motion, the Court NOW FINDS AND RULES AS FOLLOWS: 5 The Court hereby GRANTS IN PART AND DENIES IN PART 6 Plaintiff and Counterdefendant’s Motion. 7 I. Legal Standard 8 Federal Rule of Civil Procedure 12(f) sets forth 9 that “[t]he court may strike from a pleading an 10 insufficient defense or any redundant, immaterial, 11 impertinent, or scandalous matter.” Fed. R. Civ. P. 12 12(f). Federal Rule of Civil Procedure 8(b)(A) 13 requires that a party state a short and plain statement 14 in its defenses when responding to a pleading. Fed. R. 15 Civ. P. 8(b)(A). However, properly pleaded affirmative 16 defenses must “give plaintiff fair notice of the 17 defense.” Wyshak v. City Nat’l Bank, 607 F.2d 824, 827 18 (9th Cir. 1979). Where a court strikes an affirmative 19 defense, leave to amend should be freely given so long 20 as there is no prejudice to the moving party. Id. at 21 826. 22 Plaintiff and Counterdefendant Desert European 23 Motorcars, Ltd. (“Plaintiff”) moves to strike all 24 twenty-eight of Defendant and Counterclaimant Desert 25 European Motorcars, Inc.’s (“Defendant”) affirmative 26 defenses and portions of Defendant’s Answer and 27 Counterclaim pursuant to Federal Rule of Civil 28 Procedure 12(f). In the alternative, Plaintiff moves 1 for a more definite statement pursuant to Federal Rule 2 of Civil Procedure 12(e). 3 II. Discussion 4 A. 5 The Court GRANTS Plaintiff’s Request for Judicial Plaintiff’s Request for Judicial Notice 6 Notice of the motion to suspend granted by the 7 Trademark Trial and Appeal Board pursuant to Federal 8 Rule of Evidence 201. Fed. R. Evid. 201. See United 9 States v. 14.02 Acres of Land More or Less in Fresno 10 Cnty., 547 F.3d 943, 955 (9th Cir. 2008) (citing 11 Interstate Natural Gas Co. v. S. Cal. Gas Co., 209 F.2d 12 380, 385 (9th Cir. 1954)). 13 B. Plaintiff’s Motion to Strike Defendant’s 14 Affirmative Defenses 15 1. Plaintiff’s Motion To Strike The First 16 Affirmative Defense Of Failure To State A 17 Claim 18 The Court GRANTS Plaintiff’s Motion to Strike the 19 first affirmative defense of Failure to State a Claim. 20 The Court finds that failure to state a claim is an 21 assertion of a defect in Plaintiff’s prima facie case, 22 and not an affirmative defense. J & J Sports 23 Prods., Inc. v. Enedina Soto, 2010 WL 3911467, at 24 *1 (S.D. Cal. Sept. 28, 2010). Furthermore, the Court 25 finds that this affirmative defense is a mere legal 26 conclusion without supporting facts linking that theory 27 to the Case at bar, and therefore is insufficient to 28 give Plaintiff fair notice of the basis of this 1 defense. Qarbon.com, Inc. v. eHelp Corp., 315 F. Supp. 2 2d 1046, 1049 (C.D. Cal. 2004), 3 Accordingly, the Court STRIKES without leave to 4 amend Defendant’s first affirmative defense of Failure 5 to State a Claim. 6 7 8 2. Plaintiff’s Motion To Strike The Second Affirmative Defense Of Unclean Hands The Court GRANTS Plaintiff’s Motion to Strike the 9 second affirmative defense of Unclean Hands. 10 The Court finds that Defendant’s second affirmative 11 defense fails to allege sufficient facts so as to put 12 Plaintiff on fair notice of the defense. See CTF Dev., 13 Inc. v. Penta Hospitality, LLC, 2009 WL 3517617, *7 14 (N.D. Cal. Oct. 26, 2009) (finding that “simply stating 15 that a claim fails due to plaintiff’s unclean hands is 16 not sufficient to notify the plaintiff what behavior 17 has allegedly given them ‘unclean hands’”). 18 Specifically, the Court finds this affirmative defense 19 “simply states a legal conclusion or theory without the 20 support of facts explaining how it connects to the 21 instant case,” and is therefore insufficient to provide 22 fair notice to Plaintiff. Pepsico, Inc. v. J.K. 23 Distribs., Inc., 2007 WL 2852647, at *2 (C.D. Cal. 24 Sept. 14, 2007). 25 Accordingly, the Court GRANTS Plaintiff’s Motion to 26 Strike the second affirmative defense of Unclean Hands. 27 However, because Defendant may be able to allege 28 additional facts here to support this affirmative 4 1 defense, the Court STRIKES with 20 days leave to amend 2 Defendant’s second affirmative defense of Unclean 3 Hands. 4 3. 5 6 Plaintiff’s Motion To Strike The Third Affirmative Defense Of Failure To Mitigate The Court DENIES Plaintiff’s Motion to Strike the 7 third affirmative defense of Failure to Mitigate. 8 “[C]ourts have typically held that a generalized 9 statement ... meets defendant’s pleading burden with 10 respect to the affirmative defense of damage 11 mitigation.” Bd. of Trs. of San Diego Elec. Pension 12 Trust v. Bigley, Elec., Inc., 2007 WL 2070355, at *3 13 (S.D. Cal. July 12, 2007). As such, the Court finds 14 that, while this affirmative defense contains a 15 generalized statement, Defendant has met his pleading 16 burden here with respect to this defense. 17 Accordingly, the Court DENIES Plaintiff’s Motion to 18 Strike the third affirmative defense of Failure to 19 Mitigate. 20 21 22 4. Plaintiff’s Motion To Strike The Fourth Affirmative Defense Of Waiver The Court GRANTS Plaintiff’s Motion to Strike the 23 fourth affirmative defense of Waiver. 24 To establish waiver, Defendant must show that 25 Plaintiff intentionally relinquished or abandoned a 26 known right. United States v. Perez, 116 F.3d 840, 845 27 (9th Cir. 1997). See J&J Sports Prods., Inc. v. 28 Montanez, 2010 WL 5279907, at *3. 5 1 Here, Defendant’s Answer and Counterclaim fails to 2 set forth any facts with respect to this alleged 3 waiver. As such, the Court finds that this affirmative 4 defenses is a mere reference to a legal doctrine and is 5 insufficient to give Plaintiff fair notice of the 6 alleged acts giving rise to this defense. See 7 Qarbon.com Inc. v. eHelp Corp., 315 F. Supp. 2d 1046, 8 1049 (N.D. Cal. 2004)(noting that “[a] reference to a 9 doctrine, like a reference to statutory provisions, is 10 insufficient notice” and does not meet the pleading 11 standard of Rule 8(b)). 12 Accordingly, the Court GRANTS Plaintiff’s Motion to 13 Strike the fourth affirmative defense of Waiver. 14 However, because Defendant may be able to allege 15 additional facts to support this affirmative defense, 16 the Court STRIKES with 20 days leave to amend 17 Defendant’s fourth affirmative defense of Waiver. 18 5. Plaintiff’s Motion To Strike The Fifth 19 Affirmative Defense Of Estoppel 20 The Court GRANTS Plaintiff’s Motion to Strike the 21 fifth affirmative defense of Estoppel. 22 To establish a defense of estoppel, “a party must 23 show that the adverse party, either intentionally or 24 under circumstances that induced reliance, engaged in 25 conduct upon which [the relying party] relied and that 26 the relying party acted or changed [its] position to 27 [its] detriment.” Solis v. Couturier, 2009 WL 2022343, 28 at *2 (E.D. Cal. July 8, 2009). 6 1 Here, Defendant’s Answer and Counterclaim fails to 2 set forth any facts or information with respect to 3 Plaintiff’s inducement or Defendant’s detrimental 4 reliance. As such, the Court finds that Defendant 5 merely pleads a legal conclusion here, and therefore 6 fails to give Plaintiff fair notice of the conduct 7 giving rise to this defense. See id. 8 Accordingly, the Court GRANTS Plaintiff’s Motion to 9 Strike the fifth affirmative defense of Estoppel. 10 However, because Defendant may be able to allege 11 additional facts to support this affirmative defense, 12 the Court STRIKES with 20 days leave to amend 13 Defendant’s fifth affirmative defense of Estoppel. 14 6. Plaintiff’s Motion To Strike The Sixth 15 Affirmative Defense Of Statute Of 16 Limitations 17 The Court GRANTS Plaintiff’s Motion to Strike the 18 sixth affirmative defense of Statute of Limitations. 19 The Court finds that Defendant fails to plead 20 sufficient facts here to give Plaintiff fair notice as 21 to how this Action is barred by the applicable statute 22 of limitations. See J&J Sports Prods., Inc. v. 23 Montanez, 2010 WL 5279907, at *3 (E.D. Cal. Dec. 13, 24 2010)(striking defendants’ affirmative defense for 25 statute of limitations based on the fact that 26 defendants failed to plead any facts or legal theory to 27 give plaintiff notice of how the action was barred by 28 the statute of limitations). 7 Specifically, Defendant 1 fails to plead any facts here regarding this defense, 2 merely setting forth that the Action is barred by the 3 applicable statutes of limitations. See CTF Dev., Inc. 4 v. Penta Hospitality, LLC, 2009 WL 3517617, at *8 (N.D. 5 Cal. Oct. 26, 2009). As such, the Court finds that 6 this affirmative defense pleads a legal conclusion and 7 therefore fails to give Plaintiff fair notice of the 8 defense. 9 Accordingly, the Court GRANTS Plaintiff’s Motion to 10 Strike the sixth affirmative defense of Statute of 11 Limitations. However, because Defendant may be able to 12 allege additional facts to support this affirmative 13 defense, the Court STRIKES with 20 days leave to amend 14 Defendant’s sixth affirmative defense of Statute of 15 Limitations. 16 17 18 7. Plaintiff’s Motion To Strike The Seventh Affirmative Defense Of Laches The Court GRANTS Plaintiff’s Motion to Strike the 19 seventh affirmative defense of Laches. 20 “[L]aches is a valid defense to Lanham Act claims 21 for both monetary damages and injunctive relief.” 22 Miller v. Glenn Miller Prods., 318 F. Supp. 2d 923, 941 23 (C.D. Cal. 2004). In order to establish the defense of 24 laches, “a defendant must allege ‘neglect or delay in 25 bringing suit to remedy an alleged wrong, which taken 26 together with lapse of time and other circumstances, 27 causes prejudice to the adverse party and operates as 28 an equitable bar.’” Advanced Cardovascular Sys, Inc. v. 8 1 Medtronic, Inc., 1996 WL 467273, at *4 (N.D. Cal. July 2 24, 1996)(quotation omitted). 3 Here, the Answer and Counterclaim fails to set 4 forth any facts regarding how Plaintiff’s conduct 5 allegedly gave rise to this defense of laches. As 6 laches is an equitable doctrine and “its application 7 depends on the facts of the particular case,” the Court 8 finds that Defendant fails to set forth sufficient 9 facts to give Plaintiff fair notice of the conduct 10 giving rise to this defense. Id. 11 Accordingly, the Court GRANTS Plaintiff’s Motion to 12 Strike the seventh affirmative defense of Laches. 13 However, because Defendant may be able to allege 14 additional facts to support this affirmative defense, 15 the Court STRIKES with 20 days leave to amend 16 Defendant’s seventh affirmative defense of Laches. 17 8. Plaintiff’s Motion To Strike The Eighth 18 Affirmative Defense Of Good Faith 19 The Court GRANTS Plaintiff’s Motion to Strike the 20 eighth affirmative defense of Good Faith. 21 Defendant’s eight affirmative defense alleges that 22 “it acted in good faith with respect to the matters 23 asserted in the [First Amended Complaint].” [Def.’s 24 Answer and Counterclaim, 8.] While “[g]ood faith or 25 lack of wrongful intent does not provide valid defense 26 to charge of trademark infringement,” the Court finds 27 that the Answer and Counterclaim fails to set forth 28 sufficient facts regarding the applicability of this 9 1 defense to the additional claims at issue in this 2 Action. Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250 3 (9th. Cir. 1982). Therefore, the Court finds that 4 Defendant fails to give Plaintiff fair notice as to the 5 nature of this defense. See J&J Sports Prods., Inc. v. 6 Montanez, 2010 WL 5279907, at *3 (E.D. Cal. Dec. 13, 7 2010). 8 Accordingly, the Court GRANTS Plaintiff’s Motion to 9 Strike the eighth affirmative defense of Good Faith. 10 However, because Defendant may be able to allege 11 additional facts to support this affirmative defense, 12 the Court STRIKES with 20 days leave to amend 13 Defendant’s eighth affirmative defense of Good Faith. 14 9. Plaintiff’s Motion To Strike The Ninth 15 Affirmative Defense Of Privilege 16 The Court GRANTS Plaintiff’s Motion to Strike the 17 ninth affirmative defense of Privilege. 18 Here, Defendant’s Answer and Counterclaim fails to 19 set forth any facts with respect to this defense of 20 privilege. As such, the Court finds that Defendant’s 21 Answer and Counterclaim is “completely devoid of facts 22 or allegations suggesting how the defenses might apply 23 to this case,” and therefore fails to give Plaintiff 24 fair notice of this defense. Scott v. Fed. Bond & 25 Collection Serv., Inc., 2011 WL 176846, at *5 (N.D. 26 Cal. Jan. 19, 2011). See Qarbon.com Inc. v. eHelp 27 Corp., 315 F. Supp. 2d 1046, 1049 (N.D. Cal. 2004). 28 Accordingly, the Court GRANTS Plaintiff’s Motion to 10 1 Strike the ninth affirmative defense of Privilege. 2 However, because Defendant may be able to allege 3 additional facts to support this affirmative defense, 4 the Court STRIKES with 20 days leave to amend 5 Defendant’s ninth affirmative defense of Privilege. 6 10. Plaintiff’s Motion To Strike The Tenth 7 Affirmative Defense Of Lack Of Personal 8 Jurisdiction 9 The Court DENIES Plaintiff’s Motion to Strike the 10 tenth affirmative defense of Lack of Personal 11 Jurisdiction. 12 The Court finds Defendant has met its pleading 13 burden here with respect to this affirmative defense. 14 Specifically, the Answer and Counterclaim set forth 15 sufficient facts regarding the nature of this defense, 16 such as the allegation that Defendant is organized 17 under the laws of Arizona, has its principal place of 18 business in Tucson, Arizona and does its business 19 exclusively in the state of Arizona. [Def.’s Answer and 20 Counterclaim, 2.] As such, the Court finds that 21 Defendant pleads sufficient facts here to withstand 22 this Motion to Strike. See Monster Cable Prods., Inc. 23 v. Avalanche Corp., 2009 WL 650369, at *3 (N.D. Cal. 24 March 11, 2009). 25 Accordingly, the Court DENIES Plaintiff’s Motion to 26 Strike the tenth affirmative defense of Lack of 27 Personal Jurisdiction. 28 11. Plaintiff’s Motion To Strike The Eleventh 11 1 Affirmative Defense Of No Likelihood Of 2 Confusion 3 The Court GRANTS Plaintiff’s Motion to Strike the 4 eleventh affirmative defense of No Likelihood of 5 Confusion. 6 “[D]enials of the allegations in the Complaint or 7 allegations that the Plaintiff cannot prove the 8 elements of his claims are not affirmative defenses.” 9 Scott., 2011 WL 176846, at *6. Here, this affirmative 10 defense is an allegation that Plaintiff cannot prove an 11 element of its claim for trademark infringement based 12 on the fact that there is allegedly no likelihood of 13 confusion. See 15 U.S.C. § 1114(1). See also Wetzel’s 14 Pretzels, LLC v. Johnson, 2011 WL 2533315 (C.D. Cal. 15 June 27, 2011)(noting that likelihood of confusion is a 16 central element for a trademark infringement claim). 17 Therefore, the Court finds that this is an assertion of 18 a defect in Plaintiff’s prima facie case and not an 19 affirmative defense. 20 Accordingly, the Court STRIKES without leave to 21 amend Defendant’s eleventh affirmative defense of No 22 Likelihood of Confusion. 23 12. Plaintiff’s Motion To Strike The Twelfth 24 Affirmative Defense Of Fair Use 25 The Court GRANTS Plaintiff’s Motion to Strike the 26 twelfth affirmative defense of Fair Use. 27 Fair use is an defense to trademark infringement, 28 and is defined by the Lanham Act as a “defense when 12 1 ‘the use of the ... term, or device charged to be an 2 infringement is a use, otherwise than as a mark, ... of 3 a term or device which is descriptive of and used 4 fairly and in good faith only to describe the 5 [defendant’s] goods or services[.]’” Bell v. Harley 6 Davidson Motor Co., 539 F. Supp. 2d 1249, 1256 (S.D. 7 Cal. 2008)(quoting 15 U.S.C. § 1115(b)(4)). “The 8 precise elements of the classic fair use defense are 9 that the defendant (1) is not using the term as a 10 trademark, (2) uses the term only to describe its goods 11 and services, and (3) uses the term fairly and in good 12 faith.” Bell, 539 F. Supp. 2d at 1257. 13 The Court finds that Defendant fails to set forth 14 sufficient facts to put Plaintiff on fair notice of 15 this defense of fair use. Specifically, the Answer and 16 Counterclaim fails to set forth facts regarding the 17 collective elements of this defense and how it applies 18 to this instant Action. Monster Cable Prods., Inc., 19 2009 WL 650369, at *1 (N.D. Cal. March 11, 2009). 20 Accordingly, the Court GRANTS Plaintiff’s Motion to 21 Strike the twelfth affirmative defense of Fair Use. 22 However, because Defendant may be able to allege 23 additional facts to support this affirmative defense, 24 the Court STRIKES with 20 days leave to amend 25 Defendant’s twelfth affirmative defense of Fair Use. 26 13. Plaintiff’s Motion To Strike The 27 Thirteenth Affirmative Defense Of 28 Acquiescence 13 1 The Court GRANTS Plaintiff’s Motion to Strike the 2 thirteenth affirmative defense of Acquiescence. 3 “An infringement action may be barred by the 4 doctrine of estoppel by acquiescence where the owner of 5 the trademark, by conveying to the defendant through 6 affirmative word or deed, expressly or impliedly 7 consents to the infringement.” Sara Lee Corp. v. 8 Kayser-Roth Corp., 81 F.3d 455, 463 (4th Cir. 1996). 9 This defense implies active consent to an infringing 10 use of the mark. 11 Here, Defendant’s Answer and Counterclaim fails to 12 set forth any facts concerning how Plaintiff’s actions 13 gave rise to this defense of acquiescence. As such, 14 the Court finds that this affirmative defense is 15 conclusory and fails to give Plaintiff fair notice. See 16 Schecter v. Comptroller, 79 F.3d 265, 270 (2d Cir. 17 1996). 18 Accordingly, the Court GRANTS Plaintiff’s Motion to 19 Strike the thirteenth affirmative defense of 20 Acquiescence. However, because Defendant may be able 21 to allege additional facts to support this affirmative 22 defense, the Court STRIKES with 20 days leave to amend 23 Defendant’s thirteenth affirmative defense of 24 Acquiescence. 25 14. Plaintiff’s Motion To Strike The 26 Fourteenth Affirmative Defense Of Innocent 27 Intent 28 The Court DENIES Plaintiff’s Motion to Strike the 14 1 fourteenth affirmative defense of Innocent Intent. 2 Defendant appears to be asserting here the 3 affirmative defense of “innocent use.” 15 U.S.C. § 4 1115(b)(5) sets forth that innocent use is a defense to 5 trademark infringement when the party charged with 6 infringement continuously used the mark “without 7 knowledge of the registrant’s prior use” from a date 8 prior to (A) the date of constructive use of the mark 9 ... , (B) the registration of the mark ... , or (C) 10 publication of the registered mark.” 15 U.S.C. § 11 1115(b)(5). 12 Here, Defendant alleges in its Answer and 13 Counterclaim that it used the mark “Desert European 14 Motorcars,” without knowledge of Plaintiff’s use of the 15 mark, prior to the date of Plaintiff’s registration of 16 the mark. As such, the Court finds that Defendant has 17 set forth sufficient facts to survive this Motion to 18 Strike, as Plaintiff is on fair notice of the nature of 19 this defense based on the allegations in the Answer and 20 Counterclaim. See Monster Cable Prods., Inc., 2009 WL 21 650369, at *3. 22 Accordingly, the Court DENIES Plaintiff’s Motion to 23 Strike the fourteenth affirmative defense of Innocent 24 Intent. 25 26 27 15. Plaintiff’s Motion To Strike The Fifteenth Affirmative Defense Of Descriptive The Court GRANTS Plaintiff’s Motion to Strike the 28 fifteenth affirmative defense of Descriptive. 15 1 “The Supreme Court has held that a trademark deemed 2 incontestable under the terms of the Lanham Act cannot 3 be challenged on the ground that the trademark is 4 merely descriptive.” Regal Industs., Inc. v. Genal 5 Strap, Inc., 1993 WL 149983, at *1 (E.D. Pa. May 10, 6 1993)(citing Park ‘N Fly, Inc. v. Dollar Park & Fly, 7 Inc., 469 U.S. 189, 201 (1985)). However, an 8 allegation that a trademark is not descriptive has been 9 found to be relevant in determinating whether there is 10 likelihood of confusion. See Munters Corp. v. Matsui 11 Amer., Inc., 909 F.2d 250, 252 (7th Cir. 1990). 12 The Court finds Defendant has failed to meet its 13 pleading burden with respect to this affirmative 14 defense. Specifically, the Answer and Counterclaim 15 contain no facts “suggesting how the defenses might 16 apply to this case,” and therefore fails to give 17 Plaintiff fair notice of this defense. Scott v. Fed. 18 Bond & Collection Serv., Inc., 2011 WL 176846, at *5 19 (N.D. Cal. Jan. 19, 2011). 20 As such, the Court GRANTS Plaintiff’s Motion to 21 Strike the fifteenth affirmative defense for 22 Descriptive. However, because Defendant may be able to 23 allege additional facts to support this affirmative 24 defense, the Court STRIKES with 20 days leave to amend 25 Defendant’s fifteenth affirmative defense of 26 Descriptive. 27 28 16. Plaintiff’s Motion To Strike The Sixteenth Affirmative Defense Of Fraud 16 1 The Court GRANTS Plaintiff’s Motion to Strike the 2 sixteenth affirmative defense of Fraud. 3 Pursuant to Federal Rule of Civil Procedure 9(b), 4 Defendant must state with particularity the 5 circumstances constituting the alleged fraud. Fed. R. 6 Civ. P. 9(b). See Operating Eng’rs’ Pension Trust Fund 7 v. Fire Rock Prods. Co., 2010 WL 2635782, at *4 (N.D. 8 Cal. June 30, 2010)(noting that defendant must plead 9 the affirmative defense of fraud with particularity). 10 Allegations of fraud must be specific enough to give 11 “defendants notice of the particular misconduct which 12 is alleged to constitute the fraud charged so that they 13 can defend against the charge and not just deny that 14 they have done anything wrong.” Bly-Magee v. 15 California, 236 F.3d 1014, 1019 (9th Cir. 2001). 16 The Court finds that Defendant fails to state with 17 particularity the circumstances surrounding the alleged 18 fraud here. Defendant’s sixteenth affirmative defense 19 alleges only that Defendant is “informed and believes 20 and thereon alleges that the claims found within the 21 FAC are barred by Plaintiff’s fraud.” [Def.’s Answer 22 and Counterclaim, 9.] Therefore, Defendant “simply 23 states a legal conclusion or theory without the support 24 of facts explaining how it connects to the instant 25 case.” Pepsico, Inc. v. J.K. Distribs., Inc., 2007 WL 26 2852647, at *2 (C.D. Cal. Sept. 14, 2007). As such, 27 the Court finds Defendant has failed to meet the 28 heightened pleading requirement set forth under Federal 17 1 Rule of Civil Procedure 9(b). 2 Accordingly, the Court GRANTS Plaintiff’s Motion to 3 Strike the sixteenth affirmative defense of Fraud. 4 However, because Defendant may be able to allege 5 additional facts to support this affirmative defense, 6 the Court STRIKES with 20 days leave to amend 7 Defendant’s sixteenth affirmative defense of Fraud. 8 17. Plaintiff’s Motion To Strike The 9 Seventeenth Affirmative Defense Of 10 11 Trademark Misuse The Court GRANTS Plaintiff’s Motion to Strike the 12 seventeenth affirmative defense of Trademark Misuse. 13 The Court finds that this affirmative defense is 14 duplicative and unnecessary, as Defendant has already 15 pled the affirmative defense of unclean hands. 16 Specifically, trademark misuse concerns the alleged 17 misconduct of the plaintiff with regard to its 18 trademark, and as such, like the defense of unclean 19 hands, this defense is based on Plaintiff’s alleged 20 past misconduct and asserts that Plaintiff is therefore 21 prevented from bringing this present Action based on 22 this past misconduct.1 See Waco-Porter Corp. v. Tubular 23 24 1 The Court also notes that the defense of trademark misuse 25 itself had a fragmented history and may not even exist as its own separate defense. See, e.g., Juno Online Servs., L.P. v. Juno 26 Lighting, Inc., 979 F.Supp. 684, 687–91 (N.D. Ill. 1997)(noting the “plaintiff has 27 that becausein which an Americanfailed to point the court to a single case court has used trademark misuse 28 affirmatively, the court is quite skeptical to allow an affirmative claim for trademark misuse”). 18 1 Structures Corp. of Am., 222 F.Supp. 332 (S.D. Cal. 2 1963). See Kema, Inc. v. Koperwhats, 2010 WL 3464708, 3 at *9 (N.D. Cal. Sept. 1, 2010)(finding defendant’s 4 affirmative defense of trademark misuse duplicative 5 because defendant had also plead the defense of unclean 6 hands). As such, the Court finds this affirmative 7 defense is duplicative and unnecessary and should 8 therefore be stricken. Fed. R. Civ. P. 12(f). 9 Accordingly, the Court STRIKES without leave to 10 amend Defendant’s seventeenth affirmative defense of 11 Trademark Misuse. 12 18. Plaintiff’s Motion To Strike The 13 Eighteenth Affirmative Defense Of 14 Invalidity of Trademark 15 The Court GRANTS Plaintiff’s Motion to Strike the 16 eighteenth affirmative defense of Invalidity of 17 Trademark. 18 The Court finds that Defendant has failed to plead 19 sufficient facts regarding this affirmative defense of 20 invalidity of the mark. The Answer and Counterclaim 21 fails to allege facts regarding the basis of the 22 allegedly invalidity of the marks here, as the 23 affirmative defense only pleads that “the claims are 24 barred by the invalidity of Plaintiff’s purported 25 marks.” [Def.’s Answer and Counterclaim, 10.] As such, 26 the Court finds that this defense is a mere legal 27 conclusion without supporting facts linking this theory 28 to the Case at bar, and therefore fails to put 19 1 Plaintiff on fair notice of the basis of this defense. 2 Pepsico, Inc., 2007 WL 2852647, at *2. 3 Accordingly, the Court GRANTS Plaintiff’s Motion to 4 Strike the eighteenth affirmative defense of Invalidity 5 of Trademark. However, because Defendant may be able 6 to allege additional facts to support this affirmative 7 defense,2 the Court STRIKES with 20 days leave to amend 8 Defendant’s eighteenth affirmative defense of 9 Invalidity of Trademark. 10 19. Plaintiff’s Motion To Strike The 11 Nineteenth Affirmative Defense Of Remedies 12 At Law Are Adequate 13 The Court GRANTS Plaintiff’s Motion to Strike the 14 nineteenth affirmative defense of Remedies At Law Are 15 Adequate. 16 The Court finds that Defendant fails to set forth 17 any facts with respect to the nature or basis of 18 defense. As such, the Court finds that Defendant’s 19 Answer and Counterclaim is “completely devoid of facts 20 or allegations suggesting how the defenses might apply 21 2 22 23 24 25 26 27 28 While Plaintiff argues that the alleged invalidity of trademark should instead be asserted as a counterclaim, the Court finds that invalidity of trademark can constitute an affirmative defense, as long as Defendant pleads sufficient facts regarding the basis for the invalidity of the marks. See, e.g., Mag Instrument, Inc. v. JS Prods., Inc., 595 F. Supp. 2d 1102 (C.D. Cal. 2008)(discussing the defendant’s affirmative defense of invalidity of the trademark); Computerland Corp. v. Microland Computer Corp., 586 F. Supp. 22 (N.D. Cal. 1984)(noting that “invalidity or unprotectability of a registered trademark is effectively an affirmative defense to claims of infringement, unfair source designation and other allegations of unfair competition”). 20 1 to this case,” and therefore fails to give Plaintiff 2 fair notice of this defense. Scott v. Fed. Bond & 3 Collection Serv., Inc., 2011 WL 176846, at *5 (N.D. 4 Cal. Jan. 19, 2011). See J & J Sports Prods., Inc. v. 5 Jimenez, 2010 WL 5173717, at *2 (S.D. Cal. Dec. 15, 6 2010)(granting plaintiff’s motion to strike the 7 affirmative defense of “adequate remedy at law” because 8 it was a mere boilerplate recitation). 9 Accordingly, the Court GRANTS Plaintiff’s Motion to 10 Strike the nineteenth affirmative defense of Remedies 11 At Law Are Adequate. However, because Defendant may be 12 able to allege additional facts to support this 13 affirmative defense, the Court STRIKES with 20 days 14 leave to amend Defendant’s nineteenth affirmative 15 defense of Remedies At Law Are Adequate. 16 20. Plaintiff’s Motion To Strike The Twentieth 17 Affirmative Defense Of No Irreparable Harm 18 The Court GRANTS Plaintiff’s Motion to Strike the 19 twentieth affirmative defense of No Irreparable Harm. 20 The Court finds that, similar to the nineteenth 21 affirmative defense, Defendant’s Answer and 22 Counterclaim fails to set forth any facts with respect 23 to the affirmative defense of No Irreparable Harm. 24 Therefore, the Court finds that Defendant has failed to 25 meet its pleading burden here, as “[b]ased on the 26 pleadings, Plaintiff cannot know the intent or nature 27 of the affirmative defenses pleaded.” J & J Sports 28 Prods., Inc., 2010 WL 5173717, at *2. 21 1 Accordingly, the Court GRANTS Plaintiff’s Motion to 2 Strike the twentieth affirmative defense of No 3 Irreparable Harm. However, because Defendant may be 4 able to allege additional facts to support this 5 affirmative defense, the Court STRIKES with 20 days 6 leave to amend Defendant’s twentieth affirmative 7 defense of No Irreparable Harm. 8 9 21. Plaintiff’s Motion To Strike The TwentyFirst Affirmative Defense Of Not 10 Distinctive And Has Not Acquired Secondary 11 Meaning 12 The Court DENIES Plaintiff’s Motion to Strike the 13 twenty-first affirmative defense of Not Distinctive And 14 Has Not Acquired Secondary Meaning. 15 A plaintiff in a trademark infringement claim has 16 the burden to prove that the mark is “distinctive.” 17 Kendall-Jackson Winery v. E. & J. Gallo Winery, 150 18 F.3d 1042, 1046-47 (9th Cir. 1998). A mark or product 19 is distinctive upon a showing that it has acquired a 20 secondary meaning. Wal-Mart Stores, Inc. v. Samara 21 Bros., Inc., 529 U.S. 205, 216, (2000). 22 Here, Defendant alleges that “Plaintiff’s trademark 23 claims based on Plaintiff’s purported [mark] is barred 24 because the mark is not distinctive and has not 25 acquired secondary meaning.” [Def.’s Answer and 26 Counterclaim, 10.] The Court finds that Defendant has 27 sufficiently plead this defense here, as Defendant sets 28 forth the claims to which this affirmative defense 22 1 applies, as well as the nature of this defense. See 2 Monster Cable Prods, Inc. v. Avalanche Corp., 2009 WL 3 650369, *1 (N.D. Cal. March 11, 2009)(finding that the 4 plaintiff had provided fair notice of the affirmative 5 defense of lack of required distinctiveness when the 6 defendant had alleged that the marks were 7 “insufficiently distinctive”). 8 Accordingly, the Court DENIES Plaintiff’s Motion to 9 Strike the twenty-first affirmative defense of Not 10 Descriptive and Has Not Acquired Secondary Meaning. 11 22. Plaintiff’s Motion To Strike The Twenty- 12 Second Affirmative Defense Of Claims 13 Barred Under 15 U.S.C. § 1115 14 The Court GRANTS Plaintiff’s Motion to Strike the 15 twenty-second affirmative defense of Claims Barred 16 Under 15 U.S.C. § 1115. 17 Once incontestability of a mark has been 18 established, “only those eight defenses enumerated in 19 [section] 1115(b) can be interposed in an action for 20 trademark infringement.” Protech Diamond Tools, Inc. v. 21 Liao, 2009 WL 1626587 (N.D. Cal. June 8, 2009). 22 The Court finds that Defendant fails to provide 23 Plaintiff with fair notice as to how 15 U.S.C. § 1115 24 bars Plaintiff’s claims here. Pepsico, 2007 WL 2852647, 25 at *2. Specifically, eight defenses are enumerated 26 under Section 1115(b), but the Answer and Counterclaim 27 fails to set forth facts or allegations here regarding 28 the specific defense or defenses under Section 1115(b) 23 1 that bar Plaintiff’s claims in this Action. Therefore, 2 the Court finds that Defendant has not met his pleading 3 burden here with respect to this affirmative defense, 4 as Plaintiff does not have fair notice of how the 5 claims in this Action are barred by this statute. 6 Accordingly, the Court GRANTS Plaintiff’s Motion to 7 Strike the twenty-second affirmative defense of Claims 8 Barred Under 15 U.S.C. § 1115. However, because 9 Defendant may be able to allege additional facts to 10 support this affirmative defense, the Court STRIKES 11 with 20 days leave to amend Defendant’s twenty-second 12 affirmative defense of 15 U.S.C. § 1115. 13 23. Plaintiff’s Motion To Strike The Twenty- 14 Third Affirmative Defense Of Improper 15 Venue 16 The Court DENIES Plaintiff’s Motion to Strike the 17 twenty-third affirmative defense of Improper Venue. 18 The Court finds Defendant has met its pleading 19 burden here with respect to this affirmative defense of 20 Improper Venue. Specifically, the Answer and 21 Counterclaim set forth sufficient facts regarding the 22 nature of this defense, such as the fact that Defendant 23 is organized under the laws of Arizona and has its 24 principal place of business in Tucson, Arizona. [Def.’s 25 Answer and Counterclaim, 2.] Moreover, the Answer and 26 Counterclaim allege that Defendant does not conduct 27 business in the state of California, and but instead 28 conducts business exclusively in the state of Arizona. 24 1 [Id.] As such, the Court finds that Defendant pleads 2 sufficient facts here to withstand this Motion to 3 Strike, as Plaintiff has fair notice of the asserted 4 defense. See Monster Cable Prods., Inc., 2009 WL 5 650369, at *3. 6 Accordingly, the Court DENIES Plaintiff’s Motion to 7 Strike the twenty-third affirmative defense of Improper 8 Venue. 9 24. Plaintiff’s Motion To Strike The Twenty- 10 Fourth Affirmative Defense of Common Law 11 Good Faith Junior User 12 The Court DENIES Plaintiff’s Motion to Strike the 13 twenty-fourth affirmative defense of Common Law Good 14 Faith Junior User. 15 “Under the Tea Rose–Rectanus doctrine, priority of 16 use of a mark in one area of the United States does not 17 give rights to prevent its use by a good faith and 18 innocent user in a remote geographic area.” Grupo 19 Gigante S.A. de C.V. v. Dallo & Co., Inc., 119 F. Supp. 20 2d 1083, 1090 (C.D. Cal. 2000), vacated and remanded on 21 other grounds, 391 F.3d 1088 (9th Cir. 2004). This 22 common law doctrine “provides for a defense for a 23 junior user if that user proves that (1) its first use 24 was in good faith and (2) its first use was in a remote 25 area.” Wood v. Apodaca, 375 F. Supp. 2d 942, 948 (N.D. 26 Cal. 2005). “A ‘remote’ territory is one where, at the 27 critical date of the junior user’s first use, the 28 senior user’s mark was not known by customers in that 25 1 territory, such that no one would have been confused as 2 to the source.” Hispanic Broad. Corp. v. Educ. Media 3 Found., 2003 WL 22867633, at *6 (C.D. Cal. Oct. 30, 4 2003)(quotation omitted). 5 Here, Defendant alleges in its Answer and 6 Counterclaim that it began using the mark “Desert 7 European Motorcars” in or about March 2006, without any 8 knowledge or notice of Plaintiff’s use, and that it 9 sells exclusive in Tucson, Arizona, 350 miles away from 10 where Plaintiff runs its car dealership in Rancho 11 Mirage, California. [Def.’s Answer and Counterclaim, 12 12.] As such, the Court finds that Defendant has pled 13 sufficient facts here to withstand this Motion to 14 Strike, as Plaintiff has fair notice of this asserted 15 defense. See Monster Cable Prods., Inc., 2009 WL 16 650369, at *3. 17 Accordingly, the Court DENIES Plaintiff’s Motion to 18 Strike the twenty-fourth affirmative defense of Common 19 Law Good Faith Junior User. 20 25. Plaintiff’s Motion To Strike The Twenty- 21 Fifth Affirmative Defense Of Claims Barred 22 Under 15 U.S.C. § 1057 23 The Court GRANTS Plaintiff’s Motion to Strike the 24 twenty-fifth affirmative defense of Claims Barred Under 25 15 U.S.C. § 1057. 26 15 U.S.C. § 1057 sets forth that, contingent on the 27 registration of a mark on the Principal Register, the 28 filing of the application to register such mark shall 26 1 constitute constructive use of the mark, conferring a 2 right of priority except against any person whose mark 3 has not been abandoned and who, prior to the 4 application, has either used or filed an application 5 themselves. 15 U.S.C. § 1057(c) 6 Here, Defendant asserts the defense that it was not 7 on constructive notice of Plaintiff’s trademark because 8 of its prior use of the mark in question. However, the 9 Answer already contains language alleging that 10 Defendant was not on constructive notice based on its 11 prior use. Moreover, as Section 1057 only lays out a 12 definition of constructive use, it is therefore not a 13 proper affirmative defense in and of itself. 14 Therefore, the Court finds this affirmative defense 15 both redundant and improper. Fed. R. Civ. P. 12(f). 16 Accordingly, the Court STRIKES without leave to 17 amend Defendant’s twenty-fifth affirmative defense of 18 Claims Barred Under 15 U.S.C. § 1057. 19 26. Plaintiff’s Motion To Strike The Twenty- 20 Sixth Affirmative Defense Of Concurrent 21 Use 22 The Court DENIES Plaintiff’s Motion to Strike the 23 twenty-sixth affirmative defense of Concurrent Use. 24 The Lanham Act “allows the concurrent registration 25 and use of the same or similar trademarks in commerce 26 where a court of competent jurisdiction determines that 27 such use is appropriate or where ‘confusion, mistake or 28 deception is not likely to result from the continued 27 1 use by more than one person of the same or similar 2 marks under conditions and limitations as to the mode 3 or place of use of the marks or the goods in connection 4 with which the marks are used,’ provided they become 5 ‘entitled to use such marks as a result of the 6 concurrent lawful use in commerce prior to ... the 7 date[] of any registration under’ the Act.” GTE Corp. 8 v. Williams, 649 F. Supp. 164, 167 n. 3 (D. Utah 1986). 9 A party may seek concurrent use registration based on a 10 court determination of concurrent use rights. 37 C.F.R. 11 § 2.99(f)(1). 12 The Court finds that Defendant has sufficiently 13 pled this affirmative defense of concurrent use. 14 Specifically, Defendant sets forth in its Answer and 15 Counterclaim that its date of first use was prior to 16 the filing date of Plaintiff’s registration and that 17 both Parties were using the mark in commerce, alleging 18 Defendant uses the mark “Desert European Motorcars” 19 exclusively in Tucson while Plaintiff instead uses the 20 mark in California. See BellSouth Corp. v. DataNational 21 Corp., 60 F.3d 1565, 1571 (Fed. Cir. 1995). As such, 22 the Court finds that Defendant has pled sufficient 23 facts here to put Plaintiff on fair notice regarding 24 this defense. 25 Accordingly, the Court DENIES Plaintiff’s Motion to 26 Strike the twenty-sixth affirmative defense of 27 Concurrent Use. 28 27. Plaintiff’s Motion To Strike The Twenty28 1 Seventh Affirmative Defense Of Claims 2 Barred Under 15 U.S.C. § 1067 3 The Court GRANTS Plaintiff’s Motion to Strike the 4 twenty-seventh affirmative defense of Claims Barred 5 Under 15 U.S.C. § 1067. 6 15 U.S.C. § 1067 sets forth the procedure for 7 filing an opposition to registration, an application to 8 register as a lawful concurrent user or for an 9 application to cancel the registration of a mark. 15 10 U.S.C. § 1067. As such, the Court finds that 11 Defendant’s affirmative defense here is improper, as 12 the statute merely sets forth filing procedures and 13 fails to give rise to an affirmative defense. See Sec. 14 People, Inc. v. Classic Woodworking, LLC, 2005 WL 15 645592, *2 (N.D. Cal. March 4, 2005). 16 Accordingly, the Court STRIKES without leave to 17 amend Defendant’s twenty-seventh affirmative defense of 18 Claims Barred Under 15 U.S.C. § 1067. 19 28. Plaintiff’s Motion To Strike The Twenty- 20 Eighth Affirmative Defense Of Claims 21 Barred Under 15 U.S.C. § 1069 22 The Court GRANTS Plaintiff’s Motion to Strike the 23 twenty-eighth affirmative defense of Claims Barred 24 Under 15 U.S.C. § 1069. 25 15 U.S.C. § 1069 sets forth that “[i]n all inter 26 partes proceedings equitable principles of laches, 27 estoppel, and acquiescence, where applicable may be 28 considered and applied.” 15 U.S.C. § 1069. 29 However, in 1 its Answer and Counterclaim, Defendant has pled the 2 affirmative defenses of laches, estoppel and 3 acquiescence. As such, the Court finds that this 4 affirmative defense is duplicative and redundant. Fed. 5 R. Civ. P. 12(f). 6 Accordingly, the Court STRIKES without leave to 7 amend Defendant’s twenty-eighth affirmative defense of 8 Claims Barred Under 15 U.S.C. § 1069. 9 10 11 C. Plaintiff’s Motion To Strike Portions Of Answer And Counterclaim Plaintiff also moves to strike portions of the 12 Answer and Counterclaim pursuant to Federal Rule of 13 Civil Procedure 12(f). 14 1. Plaintiff’s Motion To Strike Defendant’s 15 Allegation Regarding Constructive Notice 16 Plaintiff first moves to strike the phrase in the 17 Answer and Counterclaim that Defendant “expressly 18 denies that [Defendant] was on ... constructive notice 19 that Plaintiff had registered with the United States 20 Patent and Trademark Office and was so protected.” 21 [Def.’s Answer and Counterclaim, at 3:11-13.] 22 Plaintiff argues that this allegation should be 23 stricken because it is wrong as a matter law, given 15 24 U.S.C. § 1072 of the Lanham Act provides that 25 Registration of a mark constitutes constructive notice 26 of the Plaintiff’s claim of ownership. 27 The Court DENIES Plaintiff’s Motion to Strike 28 Defendant’s allegation regarding constructive notice. 30 1 15 U.S.C. § 1072 sets forth that “the filing of the 2 application to register such mark shall constitute 3 constructive use of the mark.” 15 U.S.C. § 1072. 4 However, 15 U.S.C. § 1057(c) also sets forth that the 5 filing of this application will not constitute 6 constructive notice against a person whose mark has not 7 been abandoned and who, prior to the filing of such 8 application, used the mark, filed an application to 9 register the mark, or has filed a foreign application 10 to register the mark and timely files an application to 11 register the mark. 15 U.S.C. § 1057(c). 12 Defendant alleges in its Answer and Counterclaim 13 that it used the mark prior to Plaintiff’s filing of 14 its trademark application, and therefore asserts it was 15 not on constructive notice of the mark here. As such, 16 the Court finds that Plaintiff fails to establish that 17 this phrase is insufficient as a matter of law, as 18 Defendant has pled sufficient facts here regarding its 19 allegation that it was not on constructive notice of 20 Plaintiff’s registration of the mark. 21 Accordingly, the Court DENIES Plaintiff’s Motion to 22 Strike with regard to this phrase regarding 23 constructive notice. 24 25 26 2. Plaintiff’s Motion To Strike Defendant’s Request For Attorney’s Fees Plaintiff next moves to strike the two phrases 27 contained in the Answer and Counterclaim setting forth 28 that Defendant is seeking attorneys fees in this 31 1 Action.3 2 The Court GRANTS Plaintiff’s Motion to Strike 3 Defendant’s prayer for attorney’s fees here. 4 The Lanham Act provides that “[t]he court in 5 exceptional cases may award reasonable attorney fees to 6 the prevailing party.” 15 U.S.C. § 1117(a). A 7 trademark infringement case is exceptional when the 8 record supports a finding that the defendant’s 9 infringement was malicious, fraudulent, willful, or 10 deliberate. See Derek Andrew, Inc. v. Poof Apparel 11 Corp., 528 F.3d 696, 702 (9th Cir. 2008). However, 12 when the defendant seeks attorney’s fees, the Ninth 13 Circuit has held that an award of attorney’s fees is 14 warranted if the defendant can show that the trademark 15 infringement action was “either groundless, 16 unreasonable, vexatious, or pursued in bad faith.” 17 Cairns v. Franklin Mint Co., 292 F.3d 1139, 1156 (9th 18 Cir. 2002) (internal citations omitted). 19 The Court finds that Defendant has failed to 20 sufficient plead its prayer for attorneys fees. 21 Specifically, the Answer and Counterclaim fails to 22 allege that this is an exceptional case here, nor does 23 it allege any facts regarding the groundless, 24 unreasonable, or vexatious nature of this Action. See 25 26 27 28 3 Specifically, Plaintiff seeks to strike the phrase that it is seeking “attorneys fees” on page 11, line 18 of the Answer and Counterclaim, and “reasonable attorney’s fees pursuant to the provisions of any applicable statute or law” on page 14, line 14. 32 1 id. As such, the Court finds that Defendant fails to 2 put Plaintiff on fair notice of the facts underlying 3 this request for attorney’s fees such as to defend 4 against the charge. 5 Accordingly, the Court GRANTS Plaintiff’s Motion to 6 Strike and STRIKES with 20 days leave to amend 7 Defendant’s prayer for attorney’s fees. 8 3. Plaintiff’s Motion To Strike Defendant’s 9 Phrase Regarding Its Intention To File A 10 Petition To Cancel Plaintiff’s Trademark 11 Plaintiff moves to strike the phrase in the Answer 12 and Counterclaim setting forth that Defendant intends 13 to file a petition to cancel Plaintiff’s trademark, or 14 in the alternative, a petition to concurrently use the 15 term “Desert European Motorcars.” [Def.’s Answer and 16 Counterclaim, at 13:6-8.] Plaintiff argues that this 17 phrase is now immaterial, as Defendant’s petition to 18 cancel Plaintiff’s trademark has now been stayed 19 pending the outcome in this present Action. [Pl.’s 20 Request for Judicial Notice, Ex. 1.] 21 The Court GRANTS Plaintiff’s Motion to Strike the 22 phrase at issue here. 23 The Court finds that this phrase regarding 24 Defendant’s intent of filing a petition to cancel 25 Plaintiff’s trademark is immaterial here. 26 Specifically, while Defendant has filed its petition to 27 cancel Plaintiff’s trademark, this petition has been 28 stayed pending the outcome of this present Action. 33 1 Therefore, the Trademark Trial and Appeal Board will 2 not rule on Defendant’s petition prior to the 3 resolution of the rights of the Parties in this instant 4 Action. [Pl.’s Request for Judicial Notice, Ex. 1.] 5 As such, the Court GRANTS Plaintiff’s Motion to 6 Strike and STRIKES with 20 days leave to amend the 7 phrase in the Answer and Counterclaim regarding 8 Defendant’s intention of filing a petition to cancel 9 Plaintiff’s trademark, or in the alternative, to 10 concurrently use the term “Desert European Motorcars.” 11 12 13 4. Plaintiff’s Motion To Strike Defendant’s Request For An Injunction Plaintiff finally moves to strike Defendant’s 14 phrase in the Answer and Counterclaim setting forth 15 that Defendant is seeking “preliminary and permanent 16 injunctive relief restraining and enjoining [Plaintiff] 17 from attempting to enforce an injunction against, or 18 otherwise prevent [Defendant] from using the term 19 “Desert European Motorcars.” [Def’s Answer and 20 Counterclaim, 14:11-15.] 21 The Court GRANTS Plaintiff’s Motion to Strike this 22 request for injunctive relief. The Court finds that 23 this request is improper, as Defendant effectively 24 requests that the Court issue an injunction that 25 prevents Plaintiff from enforcing its own injunction. 26 Accordingly, the Court GRANTS Plaintiff’s Motion 27 and STRIKES with 20 days leave to amend this request 28 for injunctive relief. 34 1 2 3 D. Plaintiff’s Motion For A More Definite Statement Finally, the Court DENIES Plaintiff’s Motion for a 4 More Definite Statement Pursuant to Federal Rule of 5 Civil Procedure 12(e). As noted above, Defendant has 6 set forth sufficient facts with regard to the third, 7 tenth, fourteenth, twenty-first, twenty-third, twenty8 fourth, and twenty-sixth affirmative defenses, as well 9 as its allegation regarding constructive notice. 10 III. Conclusion 11 For the reasons stated above, the Court GRANTS IN 12 PART AND DENIES IN PART Plaintiff’s Motion to Strike, 13 or in the alternative, For A More Definite Statement. 14 IT IS SO ORDERED. 15 16 DATED: August 25, 2011 17 18 19 HONORABLE RONALD S.W. LEW Senior, U.S. District Court Judge 20 21 22 23 24 25 26 27 28 35

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?