Commonwealth Smiles, PLLC v. Commonwealth Dentistry I, P.S.C.

Filing 20

MEMORANDUM OPINION & ORDER: Plaintiff's claim under the Lanham Act is DISMISSED with prejudice. The Court having declined to exercise supplemental jurisdiction over the remaining state claims, IT IS FURTHER ORDERED that Plaintiff's remaining claims are REMANDED to the Fayette Circuit Court from which they were removed. Signed by Judge Joseph M. Hood on 9/13/2018.(STC)cc: COR,Fayette Circuit Court

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF KENTUCKY
CENTRAL DIVISION AT LEXINGTON
COMMONWEALTH SMILES, PLLC,

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Plaintiffs,
V.
COMMONWEALTH DENTISTRY I,
P.S.C.
Defendant.

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Civil No. 5:17-cv-00365-JMH

MEMORANDUM OPINION & ORDER

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I.
A Motion for Judgment on the Pleadings under Rule 12(c) of
the Federal Rules of Civil Procedure “is appropriately granted
‘when no material issue of fact exists and the party is entitled
to judgment as a matter of law.’” See Tucker v. Middleburg–Legacy
Place,

539

F.3d

545,

549

(6th

Cir.

2008).

In

making

that

determination, the Court utilizes the standards applied to motions
to dismiss under Federal Rule of Civil Procedure 12(b)(6). Id.
In considering a motion to dismiss for failure to state a
claim under Rule 12(b)(6), the court must take “all well-pleaded
material allegations of the pleadings” as true. Fritz v. Charter
Township of Comstock, 592 F.3d 718, 722 (6th Cir. 2010). The
averments of the complaint “need to be sufficient to give notice
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to the defendant as to what claims are alleged, and the plaintiff
must plead ‘sufficient factual matter’ to render the legal claim
plausible, i.e., more than merely possible.” Id. (quoting Ashcroft
v. Iqbal, 556 U.S. 662, 129 S.Ct. 1937, 1949–50, 173 L.Ed.2d 868
(2009)). “‘[A] legal conclusion couched as a factual allegation,’”
however, “need not be accepted as true on a motion to dismiss, nor
are recitations of the elements of a cause of action sufficient.”
Id. (quoting Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 609
(6th Cir. 2009) and Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127
S.Ct. 1955, 1965, 167 L.Ed.2d 929 (2007)).
II.
Plaintiff Commonwealth Smiles, PLLC, is a Kentucky limited
liability company with its principal place of business in Fayette
County, where it has been continuously operating since 2012,
providing dentist and dental hygiene services in the area of
general, cosmetic, and family dentistry.

Defendant Commonwealth

Dentistry, P.S.C., is a Kentucky professional services corporation
with its principal place of business in Fayette County.

Although

it was originally filed as formed as a professional services
corporation with a principal place of business in Charlottesville,
Virginia, it was administratively dissolved.

Upon reinstatement,

it listed its principal place of business in Lexington, Kentucky,
where it now provides services for dentistry and dental hygiene in
the area of general, cosmetic, and family dentistry. Neither
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Plaintiff

nor

Defendant

have

branch

offices

outside

of

the

Commonwealth of Kentucky, nor is either business licensed to
provide medical treatment in the form of dentistry or dental
services in any state other than the Commonwealth of Kentucky.
If permitted to amend its Complaint, Plaintiff would aver
these additional facts. It advertises its goods and services via
the internet, print, and television.

Defendant advertises its

goods and services via the internet through its website, Facebook
page, and online advertisements, as well as on the radio.

Both

dental practices purchase goods including drugs, medical devices,
office and dental equipment, and chemicals which, presumably, are
procured

through

interstate

commerce.

Further,

Plaintiff

communicates medical records, purchase of goods, and processes
insurance
interstate

claims

and

reimbursements,

transactions,

all

presumably.

of

which

Plaintiff

also

involve
treats

patients traveling to or through Kentucky.
III.
Section 43(a) of the Lanham Act prohibits the use of a
trademark “in commerce” that “is likely to cause confusion, or to
cause mistake, or to deceive as to the affiliation, connection, or
association of such person with another person, or as to the
origin, sponsorship, or approval of his or her goods, services, or
commercial

activities

by

another

person.”

15

U.S.C.

§

1125(a)(a)(A). “In commerce” means all commerce which may be
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regulated by Congress, i.e., interstate commerce. Jellibeans, Inc.
v. Skating Clubs of Georgia, Inc., 716 F.2d 833, 838 (11th Cir.
1983); Berghoff Restaurant Co., Inc. v. Lewis W. Berghoff, Inc.,
357 F. Supp. 127 (N.D. Ill. 1973). Purely intrastate disputes do
not fall under the Lanham Act. Jellibeans, 716 F.2d at 838; Mother
Waddles Perpetual Mission, Inc. v. Frazier, 904 F. Supp. 603, 611,
(E.D. Mich. 1995).
Congress
commerce:

regulates

three

broad

categories

of

interstate

(1) the use of channels of interstate commerce, (2) the

instrumentalities

of,

or

persons

or

things

in,

interstate

commerce, and (3) activities substantially affecting interstate
commerce.

United States v. Lopez, 514 U.S. 549 (1995).

A

plaintiff may satisfy the jurisdictional requirement of use in
commerce by demonstrating either that the allegedly infringing
mark, or the false designation or misrepresentation of it, was
used in connection with goods in interstate commerce or that the
defendant’s

use,

while

wholly

intrastate,

tended

to

have

a

substantial effect on plaintiff’s interstate business. Id.
In this instance, the facts averred do not support a claim
under the Lanham Act because the dispute alleged is a purely
intrastate

dispute

Dentistry,

did

not

and
tend

the

use

to

have

Plaintiff’s interstate business.

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of
a

the

mark,

substsantial

Commonwealth
effect

on

It follows that Plaintiff’s Motion to Amend is futile and
shall be denied.

The Court construes Defendant’s Motion for

Partial Judgment on the Pleadings as a motion to dismiss for
failure to state a claim and grants the motion with respect to
Plaintiff’s claim under the Lanham Act.

Finally, the Court

declines to exercise supplemental jurisdiction over the remaining
state claims and remands this matter to Fayette Circuit Court for
all further proceedings.
Accordingly,
IT IS ORDERED that Plaintiff’s claim under the Lanham Act be,
and the same hereby is, DISMISSED with prejudice.
The

Court

having

declined

to

exercise

supplemental

jurisdiction over the remaining state claims,
IT IS FURTHER ORDERED that Plaintiff’s remaining claims be,
and the same hereby are, REMANDED to the Fayette Circuit Court
from which they were removed.
This the 13th day of September, 2018.

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