Assa Realty LLC v. The Solution Group Corp et al

Filing 66

OMNIBUS ORDER denying 37 , 41 Motions to Dismiss. The Defendant shall file their answers no later than fourteen (14) days from the date of this order. Signed by Judge Robert N. Scola, Jr on 1/5/2018. (mc)

United States District Court
for the
Southern District of Florida
Assa Realty, LLC, Plaintiff,
v.
The Solution Group Corporation,
and others, Defendants.

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) Civil Action No. 17-22557-Civ-Scola
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Omnibus Order On Defendants’ Motions To Dismiss
The following Defendants have filed motions to dismiss: Paragon Group
Holdings and Paragon Group of South Florida (together, the “Paragon
Entities”), Cassa at Georgetown 3499 LLC, Cassa at Georgetown 3501 LLC,
Cassa at Georgetown 3507 LLC, Cassa at Georgetown 3511 LLC, Cassa at
Brickell 401 LLC, Cassa at Brickell 501 LLC, CBrickell PH2-905 LLC f/k/a
Cassa Brickell 505 LLC, and Cassa Brickell PH5 LLC (collectively, the “Unit
Owners”). (ECF Nos. 37, 41.) Asserting claims for trademark infringement, false
designation of origin, dilution, and unfair competition, the Plaintiff Assa asserts
that the Paragon Entities and Unit Owners (together, the Defendants) used its
CASSA trademark without authorization. The Defendants assert that Assa has
not sufficiently pled its claims, and the Unit Owners argue additionally that
their use of the term “Cassa” does not constitute actionable use in commerce
under the Lanham Act. Based on the alleged deficiencies, the Defendants ask
the Court to dismiss this case. For the reasons set forth below, the Court
denies the Defendants’ motions to dismiss (ECF Nos. 37, 41).
1. Background
Assa is the owner of two trademarks (Registration Nos. 5,082,510 and
5,293,630) for the CASSA mark in conjunction with the development of
residential, commercial and hotel properties, and for lease of real estate,
various real estate services, restaurant, and hotel services. (See United States
Patent and Trademark Office Registrations, ECF Nos. 28-1, 28-2.) Assa has
been using the CASSA mark since 2009 to brand its various hotel and
residential projects. Sometime in 2012, the Paragon Entities entered into a
business relationship with the Defendant The Solution Group to develop multifamily real estate projects using the name and infringing CASSA mark, which
Assa did not authorize them to use. Similarly, the Unit Owners use the
infringing CASSA mark in their names and to advertise, market, lease, rent and

operate their condominium units. Assa claims that the Defendants are using
the CASSA mark in order to profit off of Assa’s goodwill, in the hope of
confusing consumers into believing that the Defendants’ developments or units
are associated with Assa.
2. Legal Standard
When considering a motion to dismiss for failure to state a claim under
Federal Rule of Civil Procedure 12(b)(6), the Court must accept all of the
complaint’s allegations as true, construing them in the light most favorable to
the plaintiff. Pielage v. McConnell, 516 F.3d 1282, 1284 (11th Cir. 2008). A
pleading need only contain “a short and plain statement of the claim showing
that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2). “[T]he pleading
standard Rule 8 announces does not require detailed factual allegations, but it
demands more than an unadorned, the-defendant-has-unlawfully-harmed-me
accusation.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quotation omitted). A
plaintiff must articulate “enough facts to state a claim to relief that is plausible
on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007).
“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.” Iqbal, 556 U.S. at 678. “The plausibility
standard is not akin to a ‘probability requirement,’ but it asks for more than a
sheer possibility that a defendant has acted unlawfully.” Id. “Threadbare
recitals of the elements of a cause of action, supported by mere conclusory
statements, do not suffice.” Id. Thus, a pleading that offers mere “labels and
conclusions” or “a formulaic recitation of the elements of a cause of action” will
not survive dismissal. See Twombly, 550 U.S. at 555. “Rule 8 marks a notable
and generous departure from the hyper-technical, code-pleading regime of a
prior era, but it does not unlock the doors of discovery for a plaintiff armed
with nothing more than conclusions.” Iqbal, 556 U.S. at 679.
Yet, where the allegations “possess enough heft” to suggest a plausible
entitlement to relief, the case may proceed. See Twombly, 550 U.S. at 557.
“[T]he standard ‘simply calls for enough fact to raise a reasonable expectation
that discovery will reveal evidence’ of the required element.” Rivell v. Private
Health Care Sys., Inc., 520 F.3d 1308, 1309 (11th Cir. 2008) (citation omitted).
“And, of course, a well-pleaded complaint may proceed even if it strikes a savvy
judge that actual proof of those facts is improbable, and ‘that a recovery is very
remote and unlikely.’” Twombly, 550 U.S. at 556 (citation omitted).
3. Analysis
The Defendants argue that Assa’s allegations fail to state a claim for
trademark infringement because they are conclusory and do not state a

plausible claim for relief. In essence, the Defendants argue, citing no authority,
that the Court should impose a heightened pleading standard upon the
Plaintiff requiring specific factual allegations, such as when and where the
infringing conduct occurred. (See ECF No. 37 at 6; ECF No. 48 at 4.) The Court
disagrees.
In order to state a claim for trademark infringement, a plaintiff must
plead facts demonstrating that (1) it possessed trademark rights in a mark, and
(2) the defendant used a mark that was so similar to its own that consumers
were likely to confuse the two. Tana v. Dantanna’s, 611 F.3d 767, 774 (11th
Cir. 2010) (citing 15 U.S.C. § 1125(a)). “[A]lthough there is no separate
statutory provision for contributory trademark infringement . . . the case law
suggests that a contributory infringement claim requires, at a minimum, both
an allegation of a direct infringement by a third party, and an allegation of an
intentional or knowing contribution to that infringement by the defendant.”
Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d 1231, 1245
(11th Cir. 2007). The Defendants do not challenge the allegations with respect
to Assa’s possessing trademark rights in the CASSA mark; therefore, the Court
considers the sufficiency of the Defendants’ alleged use of a likely confusing
similar mark and the allegations regarding contributory infringement.
In the Second Amended Complaint (ECF No. 35), Assa alleges that the
Paragon Entities and The Solution Group used the name and CASSA mark for
the development of multi-family real estate projects. (Second Am. Compl., ECF
No. 35 ¶ 33.) The Paragon Entities and The Solution Group, along with TSG
Paragon Development began to plan and develop two Cassa projects—Cassa
Brickell and Cassa at Georgetown. (Id. ¶ 36.) According to Assa, the Paragon
Entities, together with The Solution Group, controlled the planning and
development of these Cassa projects and selected the infringing CASSA mark
for use in conjunction with the projects. (Id.) The Paragon Entities were listed
as part of the development team for the Cassa Brickell project, and they used
the CASSA mark for advertising and marketing in various forms for the Cassa
projects. (Id. ¶¶ 36-37.) Notably, the CASSA mark the Paragon Entities used is
identical to the Plaintiff’s mark, and the Plaintiff did not authorize their use of
the mark. (Id. ¶ 38.) With respect to the Unit Owners, Assa alleges that they
use the CASSA mark in their actual names and for advertising, marketing,
leasing, renting, and otherwise operating their condominium units, without
Assa’s authorization. (Id. ¶¶ 45-48, 55-57.) In addition, this use of the mark by
the Unit Owners was known to the Paragon Entities. (Id. ¶¶ 103-04.) Assa
further alleges that the Defendants’ unauthorized use of its mark likely leads
the public to believe that the Defendants are associated with Assa. (Id. ¶¶ 39,
48, 57.) Thus, Assa adequately alleges that the Defendants used a similar mark

likely to cause confusion and that the Paragon Entities knowingly contributed
to infringement by the Unit Owners.
The Unit Owners also argue for dismissal of the claims against them on
two additional grounds: the use of the term “Cassa” in the names of single
purpose entities to hold title for individual units in the Cassa developments
does not constitute “use in commerce” under 15 U.S.C. § 1127; and, their
inclusion in this case is fundamentally unfair because they have changed their
names to remove the infringing term. However, for the reasons already
discussed, the Unit Owners’ argument is unavailing, principally because Assa
alleges that the Unit Owners also used the mark in operating their units. In
addition, the Unit Owners cite no authority in support of their contention that
the claims against them should be dismissed because they now have removed
the trademark from their names. “On a Rule 12(b)(6) motion to dismiss, ‘[t]he
moving party bears the burden to show that the complaint should be
dismissed.’” Sprint Sols., Inc. v. Fils-Amie, 44 F. Supp. 3d 1224, 1228 (S.D. Fla.
2014) (Cohn, J.) (quoting Mendez-Arriola v. White Wilson Med. Ctr. PA, No. 09495, 2010 WL 3385356, at *3 (N.D. Fla. Aug. 25, 2010)). “The movant must
support its arguments for dismissal with citations to legal authority.” Id. (citing
S.D. Fla. L.R. 7.1(a)(1)). “Where a defendant seeking dismissal of a complaint
under Rule 12(b)(6) does not provide legal authority in support of its
arguments, it has failed to satisfy its burden of establishing its entitlement to
dismissal.” Id. (citing Super. Energy Servs., LLC v. Boconco, Inc., No. 09-0321,
2010 WL 1267173, at *5-6 (S.D. Ala. Mar. 26, 2010) and United States v.
Vernon, 108 F.R.D. 741, 742 (S.D. Fla. 1986) (Scott, J.)).
4. Conclusion
After having reviewed the parties’ arguments, the Second Amended
Complaint, and the relevant legal authorities, this Court denies the
Defendants’ motions to dismiss (ECF Nos. 37, 41). The Defendants shall file
their answers no later than fourteen (14) days from the date of this order.
Done and ordered Miami, Florida, on January 5, 2018.
_______________________________
Robert N. Scola, Jr.
United States District Judge