Slingmax, Inc. v. Marcal Rope & Rigging, Inc. et al
Filing
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MEMORANDUM AND ORDER -....IT IS HEREBY ORDERED that Slingmax's motion to dismiss defendants' amended counterclaims is GRANTED. [Doc. 22] An Order of Dismissal will accompany this Memorandum and Order. Signed by District Judge Charles A. Shaw on 8/1/2016. (MRC)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
SLINGMAX, INC.,
Plaintiff,
v.
MARCAL ROPE & RIGGING, INC., et al.,
Defendants.
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No. 4:15-CV-1939 CAS
MEMORANDUM AND ORDER
This matter is before the Court on plaintiff/counterclaim defendant Slingmax, Inc.’s
(“Slingmax”) motion to dismiss the amended counterclaims of defendant/counterclaim plaintiffs
Marcal Rope & Rigging, Inc. and Marcal Lifting Products Co. (collectively “Marcal”), pursuant to
Rule 12(b)(6), Federal Rules of Civil Procedure, for failure to state a claim upon which relief can
be granted. Marcal opposes the motion and it is fully briefed. For the following reasons, the Court
will grant the motion to dismiss.
I. Background
This is an action for federal trademark infringement under 15 U.S.C. § 1114, trademark
counterfeiting under 15 U.S.C. § 1114(1)(a), and false designation of origin and unfair competition
under 15 U.S.C. § 1125. Plaintiff/counterclaim defendant Slingmax alleges that it is “a leader in the
rigging and overhead lifting industry, particularly with respect to synthetic slings for heavy lifting
and rigging.” Complaint, ¶ 8. Slingmax alleges that it has used the name and mark COVERMAX®
for its abrasion-resistant covers for synthetic slings since December 1997, and was issued U.S.
Trademark Registration No. 3,183,055 for the mark on December 12, 2006. Id., ¶¶ 12, 16.
Slingmax alleges that in January 2006, Marcal became a licensee of its intellectual property,
including the non-exclusive right to use Slingmax’s “CoverMax™ Sleeves” mark, among other
Slingmax marks, but as early as the second quarter of 2006, this license was revoked. Id., ¶¶ 13-14.
Slingmax alleges that defendants/counterclaim plaintiffs Marcal also sell a range of rigging
and construction products, including synthetic slings for lifting heavy loads, and sells slings with
abrasion-resistant covers for synthetic slings that bear the spurious name “COVERMAX.” Id.,
¶¶ 19-20. Slingmax alleges that Marcal’s slings do not incorporate a genuine cover fabricated by
Slingmax, Marcal is not authorized to use the COVERMAX® mark, and Marcal’s slings are inferior
to those of Slingmax but Marcal is holding them out to the relevant public as identical or closely
comparable to Slingmax’s. Id., ¶¶ 21-22. Slingmax alleges that Marcal’s use of the COVERMAX®
name is likely to cause customer confusion and infringes on its federally protected rights in the
mark.
Defendants/counterclaim plaintiffs Marcal answered the complaint and filed three
counterclaims. In Count I, Marcal seeks declaratory judgment that the COVERMAX® mark is
unenforceable and/or that Marcal’s alleged use of the mark is non-infringing because the mark is
or has become generic. In Count II, Marcal seeks declaratory judgment that Slingmax has
abandoned trademark use of the COVERMAX® mark. In Count III, Marcel seeks cancellation of
the COVERMAX® mark because it is or has become generic and because it has been abandoned.
Slingmax moves for dismissal of Marcal’s counterclaims for failure to state a claim on which
relief can be granted.
II. Legal Standard
The purpose of a motion to dismiss for failure to state a claim is to test the legal sufficiency
of the complaint. To survive a motion to dismiss pursuant to Rule 12(b)(6) for failure to state a
claim upon which relief can be granted, “a complaint must contain sufficient factual matter, accepted
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as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). A claim for relief
“must include sufficient factual information to provide the ‘grounds’ on which the claim rests, and
to raise a right to relief above a speculative level.” Schaaf v. Residential Funding Corp., 517 F.3d
544, 549 (8th Cir. 2008) (citing Twombly, 550 U.S. at 555 & n.3). This obligation requires a
plaintiff to plead “more than labels and conclusions, and a formulaic recitation of the elements of
a cause of action will not do.” Twombly, 550 U.S. at 555.
On a motion to dismiss, the Court accepts as true all of the factual allegations contained in
the complaint, even if it appears that “actual proof of those facts is improbable,” id. at 556, and
reviews the complaint to determine whether its allegations show that the pleader is entitled to relief.
Id. at 555-56; Fed. R. Civ. P. 8(a)(2). The principle that a court must accept as true all of the
allegations contained in a complaint does not apply to legal conclusions, however. Iqbal, 556 U.S.
at 678 (“Threadbare recitals of the elements of a cause of action, supported by mere conclusory
statements, do not suffice”).
“While courts primarily consider the allegations in the complaint in determining whether to
grant a Rule 12(b)(6) motion, courts additionally consider ‘matters incorporated by reference or
integral to the claim, items subject to judicial notice, matters of public record, orders, items
appearing in the record of the case, and exhibits attached to the complaint whose authenticity is
unquestioned;’ without converting the motion into one for summary judgment.” Miller v. Redwood
Toxicology Lab, Inc., 688 F.3d 928, 931 & n.3 (8th Cir. 2012) (quoting 5B Charles Alan Wright &
Arthur R. Miller, Federal Practice and Procedure § 1357 (3d ed. 2004)).
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III. Discussion
A. Claim for Fair Use
Count I of Marcal’s counterclaim seeks in part a “judicial declaration that Defendants’
alleged use of COVERMAX is a fair use.” (Doc. 21, ¶ 12.) Slingmax asserts that Count I fails to
state a claim and should be dismissed to the extent it seeks a declaration of fair use, as fair use is an
affirmative defense to trademark infringement and not its own cause of action, citing KP Permanent
Make Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118 (2004). Slingmax states that fair use
is defined as party’s use of a trademark as a “term or device which is descriptive of and used fairly
and in good faith only to describe the goods or services of such party[,]” 15 U.S.C. § 1115(b)(4), and
might permit others to use a protected mark to describe aspects of their own goods, Car-Freshner
Corp. v. S.C. Johnson & Son, Inc., 70 F.3d 267, 270 (2d Cir. 1995), or to comment upon or criticize
the trademark owner, see United We Stand Am., Inc. v. United We Stand Am. N.Y., Inc., 128 F.3d
86, 92-93 (2d Cir. 1997). Slingmax asserts that Marcal does not plead it is using the COVERMAX
mark for any of these permitted uses.
Marcal responds that Slingmax misunderstands its allegations, as Marcal is not alleging fair
use as grounds for a declaratory judgment apart from its allegation that the COVERMAX® mark
is generic. Defs.’ Response at 2. Marcal asserts that “there is no need to consider whether
Defendants may separately obtain a declaration that their allege use constitutes fair use.” Id. at 3.
Based on Marcal’s representation that it is not alleging fair use as grounds for a declaratory
judgment in Count I, despite its prayer for “judicial declaration that Defendants’ alleged use of
COVERMAX is a fair use,” the Court will grant Slingmax’s motion to dismiss Count I to the extent
it seeks a declaratory judgment of fair use.
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B. Trademark Cancellation as Descriptive or Laudatory
Count III of Marcal’s counterclaim seeks cancellation of the COVERMAX® mark “because
the mark is and has become generic, at least because it is a common descriptive, laudatory term, and
because it has been abandoned.” (Doc. 21, ¶ 18.) Slingmax asserts that Count I fails to state a claim
and should be dismissed to the extent it is based on the ground that the COVERMAX® mark is
“descriptive or laudatory.” Slingmax asserts that its right to use the COVERMAX® registered mark
is incontestable under 15 U.S.C. § 1065,1 the registration is therefore conclusive evidence of the
mark’s validity under 15 U.S.C. § 1115(b), and its incontestable status renders the mark immune
from cancellation on grounds that it is descriptive or laudatory, citing Park
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