Amerikooler, LLC v. Americooler, Inc.

Filing 155

OMNIBUS ORDER granting in part and denying in part 127 Motion to Dismiss; granting in part and denying in part 128 Motion to Dismiss. Signed by Judge Robert N. Scola, Jr. on 6/4/2019. See attached document for full details. (ar2)

United States District Court
for the
Southern District of Florida
Amerikooler, LLC, f/n/a
Amerikooler, Inc., Plaintiff,
v.
Coolstructures, Inc., f/k/a
Americool Structural Panels, Inc.,
f/k/a Americooler, Inc., and
Aleksey Viktorov, a/k/a Aleks
Victorov or Viktorov, a/k/a Alex
Viktorov, a/k/a Al Viktorov,
Defendants.

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Civil Action No. 17-24420-Civ-Scola
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Omnibus Order on Plaintiff’s Motions to Dismiss/Strike
the Defendants’ Counterclaims
This matter is before the Court on the Plaintiff’s motion to dismiss/strike
Defendant Aleksey Viktorov’s counterclaim (ECF No. 127) and Defendant
Coolstructures Inc.’s counterclaim (ECF No 128). The Defendants timely
responded (ECF Nos. 130, 131) and the Plaintiff replied (ECF Nos. 135, 136).
Upon review of the record, the relevant caselaw, and the parties’ submissions,
the Court grants in part and denies in part the Plaintiff’s motions. (ECF Nos.
127, 128.)
I.

Background

Plaintiff Amerikooler, LLC filed its Third Amended Complaint against
Coolstructures Inc. and Aleksey Viktorov for trademark infringement and a
number of additional claims under federal and state law. (ECF No. 102.) The
Plaintiff alleges that the Defendants are using confusingly similar marks on their
competing products, including the name “Americooler,” thereby causing
consumer confusion and dilution of the Plaintiff’s trademark. (Id. at ¶ 3.) The
Defendants filed their answers and counterclaims on March 11, 2019. (ECF Nos.
113, 114.) Both counterclaims seek declaratory judgment regarding the status
of the name “Coolstructures” (Count I) and cancellation of the Plaintiff’s
trademark (Counts II and III) based on allegations of fraud on the trademark
office. (ECF No. 113 at 33-39; ECF No. 114 at 33-39.)
The Plaintiff now moves to dismiss or strike the Defendants’ counterclaims
arguing that the counterclaims are untimely, the Defendants lack standing, and

there is no case or controversy regarding the use of the name “Coolstructures.”
(ECF Nos. 127, 128.) The two motions are almost identical, but the Court will
discuss each in turn.
II.

Legal Standard

When considering a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6), the Court must accept all 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 must 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). A motion to dismiss under Rule 12(b)(6) challenges the legal
sufficiency of a complaint. See Fed. R. Civ. P. 12(b)(6). In assessing the legal
sufficiency of a complaint’s allegations, the Court is bound to apply the pleading
standard articulated in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). That is, the complaint “must . . .
contain sufficient factual matter, accepted as true, to state a claim to relief that
is plausible on its face.” Am. Dental Ass’n v. Cigna Corp., 605 F.3d 1283, 1289
(11th Cir. 2010) (quoting Bell Atlantic Corp, 550 U.S. at 570). “Dismissal is
therefore permitted when on the basis of a dispositive issue of law, no
construction of the factual allegations will support the cause of action.” Glover
v. Liggett Grp., Inc., 459 F.3d 1304, 1308 (11th Cir. 2006) (internal quotations
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.” Ashcroft, 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.
Under Federal Rule of Civil Procedure 12(f), a district court may strike from
a pleading “any insufficient defense or any redundant, immaterial, impertinent,
or scandalous matter.” See Fed. R. Civ. P. 12(f). “Parties employ motions to strike
to clean up the pleadings, streamline litigation, and avoid unnecessary forays
into immaterial matters.” Ottesen v. St. Johns River Water Mgmt. Dist., No. 6:14CV-1320-ORL-31, 2015 WL 2095473, at *1 (M.D. Fla. May 5, 2015) (internal
quotation marks and citations omitted). Nevertheless, striking a pleading or a
portion thereof is “a drastic remedy generally disfavored by the courts, and will
ordinarily be denied unless the material sought to be stricken is insufficient as
a matter of law.” Id. (internal quotation marks and citations omitted).

III.

Analysis
A. Plaintiff’s Motion to Dismiss/Strike Defendant Viktorov’s
Counterclaim

The Plaintiff’s motion to dismiss Viktorov’s counterclaim consists of two
brief paragraphs of “argument” regarding Viktorov’s standing. (ECF No. 127 at
¶¶ 17-18.) The Plaintiff states that Viktorov lacks standing because “he is being
sued personally for the actions of the Defendant.” (Id. at ¶ 17.) In its threesentence argument, the Plaintiff does not cite a single case for the proposition
that a corporate officer sued in his personal capacity for trademark infringement
cannot bring a counterclaim against the Plaintiff. “The premise of our adversarial
system is that . . . courts do not sit as self-directed boards of legal inquiry and
research, but essentially as arbiters of legal questions presented and argued by
the parties before them.” Carducci v. Regan, 714 F.2d 171, 177 (D.C. Cir. 1983).
When parties do not explain their arguments or support them with citation to
legal authority, the burden upon the Court is improperly increased. “[T]he onus
is upon the parties to formulate arguments.” Resolution Trust Corp. v. Dunmar
Corp., 43 F.3d 587, 599 (11th Cir. 1995). The Court will not do the research for
the Plaintiff on this point. To the extent the Plaintiff’s motion is based on
Viktorov’s lack of standing as a corporate officer, the motion is denied.
Next, the Plaintiff argues that Viktorov lacks standing to bring Counts II
and III for cancellation of the trademarks because “he has no direct interest and
has not alleged and cannot allege he has been or will be damaged resulting from
the Plaintiff’s use of its trademarks.” (ECF No. 127 at ¶ 18.) Viktorov responds
by arguing that the very fact that he is a defendant in this lawsuit creates a
reasonable apprehension that he will be subject to liability and damaged by the
Plaintiff’s use of the trademark. (ECF No. 131 at 6.) To establish standing, a party
seeking to cancel a trademark must show that it “has a real commercial interest
in the disputed mark, and a reasonable basis for the belief that it would be
damaged by the registration of the mark.” Gross v. Guzman, No. 11-23028-CIV,
2012 WL 12863969, at *4 (S.D. Fla. July 5, 2012) (Ungaro, J.). Courts in this
district have held that the “Defendant’s standing to bring an action to cancel
Plaintiff’s trademark registrations is inherent in its position as a defendant in
the original proceeding.” Id. at *5. Accordingly, the Court finds that Viktorov has
standing to bring Counts II and III.
The rest of the motion “details[s] the reasons why the counterclaim filed
[by] Coolstructures should be dismissed/stricken. These reasons appear in the
Motion to Dismiss/Strike Defendant Coolstructures Inc.’s Counterclaim.” (ECF
No. 6 at n.4.) Because the Plaintiff bases its remaining arguments on the Court’s

dismissal of Coolstructures’ counterclaim, the Court will address the remaining
arguments below.
B. Plaintiff’s Motion to Dismiss/Strike Defendant Coolstructures’
Counterclaim
The Plaintiff’s motion first seeks to strike Coolstructures’ counterclaim as
untimely. (ECF No. 128 at ¶¶ 16-20.) The Court granted the Plaintiff’s motion for
leave to file its Third Amended Complaint on January 9, 2019. The Plaintiff now
argues that the Court’s order granting the Plaintiff leave to amend its complaint
did not give Defendant Coolstructures permission to assert a counterclaim for
the first time when the previous answers had not included a counterclaim. (ECF
No. 128 at ¶ 17.) The Court finds that these arguments are now moot. On May
24, 2019, the parties filed a joint motion to extend certain deadlines in the
Court’s scheduling order. (ECF No. 153.) One of these deadlines was the deadline
to join additional parties and to amend pleadings. The parties agreed to a new
deadline of July 8, 2019. (Id. at 3.) The Court granted that motion and amended
the scheduling order.1 (ECF No. 154.) Given the new agreed deadline, the
counterclaim is timely.
The Plaintiff next argues that Coolstructures’ claim for cancellation of
Plaintiff’s trademarks must be dismissed because Coolstructures “lacks standing
because it has failed to make any allegations concerning damage resulting from
the Plaintiff’s use of its trademarks.” (ECF No. 128 at ¶ 21.) As discussed above,
Coolstructures’ standing “is inherent in its position as a defendant in the original
proceeding.” Gross, 2012 WL 12863969, at *5. It is clear from Coolstructures’
position as defendant in the main lawsuit that it may be damaged by the
Plaintiff’s trademark registration. Accordingly, the Plaintiff’s motion to dismiss
Counts II and III is denied.
Lastly, the Plaintiff argues that the Defendant’s claim for declaratory relief
should be dismissed because there is no case or controversy. (ECF No. 128 at ¶
22.) The Defendant’s declaratory judgment count seeks a declaration from the
Court that its use of the name “Coolstructures” does not infringe on the Plaintiff’s
trademark. (ECF No. 113 at 33-34.). The Plaintiff argues that there is no case or
controversy because the use of the name “Coolstructures” is not at issue in this

The parties’ motion asked the Court to set a deadline of July 8, 2019 to amend
pleadings and June 28, 2019 to complete fact discovery. (ECF No. 153.) Upon
further review, the Court believes the deadline should have been June 8th rather
than July 8th because the discovery deadline cannot come before the pleadings
are amended. Accordingly, the Court will enter an amended scheduling order to
correct this mistake.
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lawsuit. The Plaintiff’s complaint is based on the Defendant’s use of “Americool”
and “Americooler,” not “Coolstructures.” (ECF No. 128 at ¶ 22.)
“Under the federal Declaratory Judgment Act, a court maintains broad
discretion over whether or not to exercise jurisdiction over claims. The
Declaratory Judgment Act provides that a court may declare the rights and other
legal relations of any interested party, not that it must do so.” Knights Armament
Co. v. Optical Sys. Tech., Inc., 568 F. Supp. 2d 1369, 1374 (M.D. Fla. 2008)
(internal quotations and citations omitted). Moreover, the “Court’s discretion
over whether to sustain a claim for declaratory judgment extends to cases where
a direct action involving the same parties and the same issues has already been
filed.” Id. at 1374-75. Here, the question of whether the name “Coolstructures”
is infringing on the Plaintiff’s trademark is not at issue. The Plaintiff’s complaint
is based on Coolstructure’s use of the names “Americool” and “Americooler.” The
counterclaim cannot put the use of the name Coolstructures at issue.
Coolstructures has not pled alleged trademark infringement or any other cause
of action related to the name “Coolstructures.” Because the Defendant “has not
pled a valid case or controversy over [the name Coolstructures], the Court holds
that no declaratory judgment action is permitted or warranted on that issue.” Id.
at 1375. Accordingly, the Court dismisses Count I of Coolstructures’
counterclaim and Count I of Viktorov’s counterclaim for declaratory judgment.
IV.

Conclusion

Based on the foregoing, the Court grants in part and denies in part the
Plaintiff’s motions to dismiss the Defendants’ counterclaims. (ECF Nos. 127,
128.) The Court dismisses Count I of Viktorov’s counterclaim and Count I of
Coolstructures’ counterclaim with prejudice. The Plaintiff’s motion to dismiss
Counts II and III of the counterclaims is denied.
Done and ordered, at Miami, Florida, on June 4, 2019.

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Robert N. Scola, Jr.
United States District Judge