Jaguar Land Rover Limited v. Bombardier Recreational Products, Inc.
AMENDED OPINION and ORDER Granting Plaintiff's 24 MOTION to Dismiss Counterclaim IV of Defendant's First Amended Counterclaim. Signed by District Judge Gershwin A. Drain. (SBur)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
JAGUAR LAND ROVER LIMITED,
Case No. 16-cv-13386
UNITED STATES DISTRICT COURT JUDGE
GERSHWIN A. DRAIN
UNITED STATES MAGISTRATE JUDGE
STEPHANIE DAWKINS DAVIS
AMENDED OPINION AND ORDER GRANTING PLAINTIFF’S MOTION TO DISMISS
COUNTERCLAIM IV OF DEFENDANT’S FIRST AMENDED COUNTERCLAIM 
On September 19, 2016, Jaguar Land Rover Limited (“Plaintiff” or “JLR”)
filed a seven-count Complaint alleging trademark claims under the Lanham Act
and other state and common law allegations against Bombardier Recreational
Products Inc. (“Defendant” or “BRP”). Dkt. No. 1. The dispute centers on the sale
of vehicles that both bear the mark “DEFENDER.” Id. On January 9, 2017, BRP
filed its First Amended Counterclaim, asserting four counts against JLR related to
its registration of the DEFENDER trademark. Dkt. No. 18.
The matter is presently before the Court on JLR’s Motion to Dismiss
Counterclaim IV of BRP’s First Amended Counterclaim , pursuant to Federal
Rule of Civil Procedure 12(b)(6). The motion was filed on January 30, 2017, and is
now fully briefed. See Dkt. Nos. 24, 28, 31. A hearing was held on the motion on
June 7, 2017. For the reasons discussed herein, the Court GRANTS JLR’s Motion
to Dismiss , and grants BRP 15 days to amend its fourth counterclaim.
II. LEGAL STANDARD
Federal Rule of Civil Procedure 12(b)(6) authorizes dismissal of a complaint
for “failure to state a claim upon which relief can be granted.” To withstand a
motion to dismiss pursuant to Rule 12(b)(6), a complaint must comply with the
pleading requirements of Federal Rule of Civil Procedure 8(a). See Ashcroft v.
Iqbal, 556 U.S. 662, 678 (2009). Rule 8(a)(2) requires “a short and plain statement
of the claim showing that the pleader is entitled to relief, in order to give the
defendant fair notice of what the . . . claim is and the grounds upon which it rests.”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (quotation marks omitted)
(quoting FED. R. CIV. P. 8(a)(2); Conley v. Gibson, 355 U.S. 41, 47 (1957)). To
meet this standard, a complaint must contain sufficient factual matter, accepted as
true, to “state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at
570; see also Iqbal, 556 U.S. at 678–80 (2009) (applying the plausibility standard
articulated in Twombly).
When considering a Rule 12(b)(6) motion to dismiss, the Court must
construe the complaint in a light most favorable to the plaintiff and accept all of his
or her factual allegations as true. Lambert v. Hartman, 517 F.3d 433, 439 (6th Cir.
2008). However, the Court need not accept mere conclusory statements or legal
conclusions couched as factual allegations. See Iqbal, 556 U.S. at 678.
Section 38 of the Lanham Act, codified at 15 U.S.C. § 1120, provides that,
“Any person who shall procure registration in the Patent and Trademark Office of
a mark by a false or fraudulent declaration or representation, oral or in writing, or
by any false means, shall be liable in a civil action by any person injured thereby
for any damages sustained in consequence thereof.” 15 U.S.C. § 1120.
Courts have found that the heightened pleading standard for fraud claims,
FED. R. CIV. P. 9(b), applies to claims for fraudulent registration of trademarks
under 15 U.S.C. § 1120. New World Solutions, Inc. v. NameMedia Inc., 150 F.
Supp. 3d 287 n.30 (S.D.N.Y. 2015); Aureflam Corp. v. Pho Hoa Phat I, Inc., 375
F. Supp. 2d 950, 954 (N.D. Cal. 2005); GMA Accessories, Inc. v. Idea Nuova, Inc.,
157 F. Supp. 2d 234, 243 (S.D.N.Y. 2000) (“a claim for fraudulent registration
under § 38, like any fraud claim, must comply with the heightened pleading
standards of FED. R. CIV. P. 9(b).”). “The heightened pleading requirements apply
to each element of the fraud claim.” GMA Accessories, 157 F. Supp. 2d at 243.
To sustain a claim for damages under § 1120, BRP must first establish that
JLR procured registration in the Patent and Trademark Office (PTO) of a mark by
a false or fraudulent declaration or representation or by any false means, and that
BRP sustained damages as a consequence of this fraudulent or false representation.
15 U.S.C. § 1120. Thus, BRP must show that JLR (1) made a false or fraudulent
representation of a material fact in securing the mark; (2) that JLR knew or
believed that this representation was false; (3) that JLR intended to induce PTO to
rely on this misrepresentation; (4) that there was reasonable reliance on the
misrepresentation; and (5) that BRP’s damages were proximately caused by JLR’s
misrepresentation. See FD9 Grp., Inc. v. Bangle Jangle, LLC, No. CV1500512BRO-ASX, 2015 WL 12776584, at *5 (C.D. Cal. May 13, 2015) (detailing the
elements that courts require parties asserting a § 1120 claim to plead). See also
VMR Prod., LLC v. V2H ApS, No. 2:13-CV-7719-CBM-JEM, 2016 WL 7669497,
at *17 (C.D. Cal. Dec. 29, 2016) (finding that a counterclaim for damages under
§ 1120 must meet all five elements for fraud under a claim for fraudulent
To bring a claim under § 1120, “it is not enough . . . merely to establish
fraud in the registration of the trademark”; the claimant “must also show that it
sustained some damage in consequence of the fraud.” Virginia Polytechnic Inst. &
State Univ. v. Hokie Real Estate, Inc., 813 F. Supp. 2d 745, 755 (W.D. Va. 2011)
(citing Gilbert/Robinson, Inc. v. Carrie Beverage–Missouri, Inc., 989 F.2d 985,
991 (8th Cir. 1993), abrogated on other grounds by Lexmark Int’l, Inc. v. Static
Control Components, Inc., 134 S.Ct. 1377 (2014)).1 The injury asserted must be a
proximate result of the false or fraudulent registration. San Juan Prod., Inc. v. San
Juan Pools of Kansas, Inc., 849 F.2d 468, 473 (10th Cir. 1988). The injury and
damages arising from the fraud must be “clearly articulated.” 6 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 31:85 (4th ed.)
(citing Jackson v. Lynley Designs, Inc., 729 F. Supp. 498, (E.D. La. 1990)).
JLR contends that BRP’s allegation that it “has been injured,” and that those
“injuries include, but are not limited to, injury to its CAN-AM DEFENDER brand
for side-by-side recreational vehicles including injury to its goodwill,” are not
sufficient to state an injury. Dkt. No. 24, p. 14 (Pg. ID 337). BRP’s counterclaim
does not provide further detail regarding how JLR’s registration of the mark
harmed its brand or goodwill, such allegations of lost sales or specific damage to
its business reputation.
In its response, BRP argues that JLR injured it by formally opposing BRP’s
application to use the DEFENDER mark and because JLR demanded that BRP
abandon its trademark application, based on JLR’s allegedly fraudulent
registration. Dkt. No. 28, p. 23 (Pg. ID 460). Indeed, these allegations were present
As other courts have noted, the discussion of § 1120 in Gilbert/Robinson
remains good law after Lexmark because Gilbert/Robinson was abrogated on
different grounds. See E. Iowa Plastics, Inc. v. PI, Inc., 832 F.3d 899, 905 (8th Cir.
2016), reh’g denied (Sept. 15, 2016); Fenwick v. Dukhman, No. CIV.A. 13-4359
CCC, 2015 WL 1307382, at *4 n.7–8 (D.N.J. Mar. 20, 2015); Heckler & Koch,
Inc. v. German Sport Guns GmbH, 71 F. Supp. 3d 866, 905 (S.D. Ind. 2014).
in BRP’s amended counterclaim, although not clearly articulated as alleged
injuries. See Dkt. No. 18, p. 11 (Pg. ID 270). BRP did not provide the Court with
cases where a formal challenge to a successive trademark application, or a demand
to cease using a mark, alone—without further injury—was sufficient to qualify as
an injury under § 1120.2 See Maker’s Mark Distillery, Inc. v. Diageo N. Am., Inc.,
No. 3:03-CV-93-H, 2007 WL 4292392, at *2 (W.D. Ky. Dec. 6, 2007) (stating an
injury for the alteration of a product after a party’s attempt to enforce a wrongfully
obtained trademark registration).
As BRP has chosen to pursue fraud claims, while JLR has not, BRP must
comply with the heightened pleading standard that fraud claims require. BRP’s
fourth counterclaim does not clearly articulate an injury proximately caused by
JLR’s registration of the DEFENDER mark. Accordingly, the Court will dismiss
BRP’s fourth counterclaim with leave to amend, so that BRP can better articulate
how it has been injured and how those injuries were proximately caused by JLR’s
allegedly fraudulent registration, should BRP wish to further pursue this claim.
The Court also rejects the potential argument that the attorney fees resulting
from this litigation qualify as an injury proximately caused by the allegedly
fraudulent registration, although fees may be awarded where registration was
obtained solely to initiate vexatious litigation. See Blue Bell, Inc. v. Jaymar-Ruby,
Inc., 497 F.2d 433, 439 (2d Cir. 1974); New World Sols., 150 F. Supp. 3d at 333
(“It is insufficient for a defendant to claim that it has ‘been damaged in the amount
of their legal fees and costs.’ ”).
Because the Court is allowing BRP to amend its fourth counterclaim, the
Court will not consider the proximate cause of injuries that have yet to be clearly
Accordingly, for the reasons discussed in detail above, the Court GRANTS
Plaintiff’s Motion to Dismiss Counterclaim IV of Defendant’s First Amended
Counterclaim , with leave to amend. BRP may amend its fourth counterclaim,
if it so chooses, no later than 15 days from the date of this order.
IT IS SO ORDERED.
June 8, 2017
s/Gershwin A. Drain
HON. GERSHWIN A. DRAIN
United States District Court Judge
CERTIFICATE OF SERVICE
Copies of this Order were served upon attorneys of record on
June 8, 2017, by electronic and/or ordinary mail.
/s/ Shawna C. Burns
Case Manager Generalist
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