Kimray Inc v. Norriseal-Wellmark Inc

Filing 31

ORDER denying 16 Defendant's Motion to Dismiss Plaintiff's Complaint for Failure to State a Claim, or, in the Alternative, for a More Definite Statement as set forth herein. Signed by Honorable Timothy D. DeGiusti on 5/8/17. (ml)

IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF OKLAHOMA
KIMRAY, INC.,
an Oklahoma corporation,

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Plaintiff,
v.
NORRISEAL-WELLMARK, INC.,
a Delaware corporation,
Defendant.

Case No. CIV-16-1167-D

ORDER
Before the Court is Defendant Norriseal-Wellmark, Inc.’s (Norriseal) Motion
to Dismiss Plaintiff’s Complaint for Failure to State a Claim, or, in the Alternative,
for a More Definite Statement [Doc. No. 16]. Plaintiff Kimray, Inc. (Kimray) has
filed its response in opposition [Doc. No. 28] and Norriseal has replied [Doc. No.
30]. The matter is fully briefed and at issue.
BACKGROUND
The following facts are taken from Kimray’s Complaint and, in addition to all
reasonable inferences, are viewed in the light most favorable to it. Wasatch Equality
v. Alta Ski Lifts Co., 820 F.3d 381, 386 (10th Cir. 2016).1 Kimray manufactures and
sells a variety of oilfield products such as valves, regulators, controls, pumps, pilots

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Legal conclusions, however, were not considered or accepted as true. Wasatch
Equality, 820 F.3d at 386 (citing Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).

and relays, and flow meters. Part of its product line includes automatic oil and water
treater valves, over which Kimray obtained trademark registration. Norriseal is a
competitor of Kimray. It sells oil and gas products and provides related services.
Norriseal and Kimray both advertise and sell their respective valve products to the
same consumer base and in the same channels of trade.
Norriseal manufactures and markets a treater valve with a configuration
virtually identical to Kimray’s registered oil and water treater valves. Kimray alleges
Norriseal chose the design of its treater valves to capitalize on the goodwill
associated with Kimray’s registered valves, and that it has infringed upon Kimray’s
trade dress protection in the product. Kimray also contends Norriseal has
intentionally marketed its products in direct competition with Kimray, and such
contemporaneous advertising and marketing of the two valves will likely cause
confusion, mistake, or deception among consumers. Accordingly, Kimray filed the
instant lawsuit, asserting claims for trade dress infringement (Count 1), unfair
competition/false advertising/false designation of origin (Count 2),2 deceptive trade
practices (Count 3), common law unfair competition (Count 4), common law
infringement (Count 5), and counterfeit trade dress (Count 6).

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Kimray acknowledges the phrase “false advertising” appears in Count 2. However,
it states it does not intend to assert a claim for false advertising and the count is
solely directed to a federal claim for unfair competition under 15 U.S.C. §
1125(a)(1)(A). See Pl. Resp. at 14 n. 2.
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Norriseal moves to dismiss the Complaint on the grounds that it fails to state
a plausible claim for relief. Specifically, Norriseal contends that (1) Kimray’s trade
dress infringement claim fails because it failed to adequately allege the precise
boundaries of its alleged trade dress; (2) Kimray’s trade dress infringement claim
and related claims fail because Kimray failed to set forth specific allegations
regarding the element of “likelihood of confusion”; (3) Kimray’s state deceptive
trade practices claim fails because it failed to allege which of the enumerated
categories of deceptive conduct set forth in the statute it contends Norriseal
committed; and (5) Kimray’s counterfeiting claim fails because it has only set forth
threadbare recitals of the statutory language.
STANDARD OF DECISION
“To survive a motion to dismiss [under Rule 12(b)(6)], a complaint must
contain sufficient factual matter, accepted 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 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.” Id.
The “plausibility” standard announced in Twombly and Iqbal is not considered a
“heightened” standard of pleading, but rather a “refined standard,” which the Tenth
Circuit has defined as “refer[ring] to the scope of the allegations in a complaint: if
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they are so general that they encompass a wide swath of conduct, much of it
innocent, then the plaintiffs have not nudged their claims across the line from
conceivable to plausible.” Khalik v. United Air Lines, 671 F.3d 1188, 1191 (10th
Cir. 2012) (citing Kansas Penn Gaming, LLC v. Collins, 656 F.3d 1210, 1214 (10th
Cir. 2011); Robbins v. Oklahoma, 519 F.3d 1242, 1247 (10th Cir. 2008)).
The Tenth Circuit has further noted that “[t]he nature and specificity of the
allegations required to state a plausible claim will vary based on context.” Khalik,
671 F.3d at 1191 (quoting Kansas Penn Gaming, 656 F.3d at 1215). “Thus … the
Twombly/Iqbal standard is ‘a middle ground between heightened fact pleading,
which is expressly rejected, and allowing complaints that are no more than labels
and conclusions or a formulaic recitation of the elements of a cause of action, which
the Court stated will not do.’ ” Id. (quoting Robbins, 519 F.3d at 1247). In deciding
Twombly and Iqbal, there was no indication the Supreme Court “intended a return
to the more stringent pre-Rule 8 pleading requirements.” Id. at 1191 (citing Iqbal,
556 U.S. at 678).
Thus, it remains true that “[s]pecific facts are not necessary; the statement
need only ‘give the defendant fair notice of what the ... claim is and the grounds
upon which it rests.’ ” Erickson v. Pardus, 551 U.S. 89, 93 (2007) (quoting Twombly,
550 U.S. at 555); Smith v. United States, 561 F.3d 1090, 1104 (10th Cir. 2009)
(“Technical fact pleading is not required, but the complaint must still provide enough
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factual allegations for a court to infer potential victory.”) (quoting Bryson v.
Gonzales, 534 F.3d 1282, 1286 (10th Cir. 2008)). “While the 12(b)(6) standard does
not require that Plaintiff establish a prima facie case in [its] complaint, the elements
of each alleged cause of action help to determine whether Plaintiff has set forth a
plausible claim.” Khalik, 671 F.3d at 1191 (citing Swierkiewicz v. Sorema N.A., 534
U.S. 506, 515 (2002)). “[A] well-pleaded complaint may proceed even if it strikes a
savvy judge that actual proof of [the alleged] facts is improbable, and ‘that a recovery
is very remote and unlikely.’” Sanchez v. Hartley, 810 F.3d 750, 756 (10th Cir. 2016)
(citing Twombly, 550 U.S. at 556).3
DISCUSSION
I.

TRADE DRESS INFRINGEMENT
The Lanham Act provides a federal cause of action for trade dress

infringement. See 15 U.S.C. § 1125(a). “A product’s trade dress ‘is its overall image
and appearance, and may include features such as size, shape, color or color
combinations, texture, graphics, and even particular sales techniques.’ ” General
Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1226 (10th Cir. 2007) (quoting

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Several of Kimray’s allegations state that they are based “upon information and
belief.” Twombly does not prevent a plaintiff from pleading facts alleged “upon
information and belief” where the facts are peculiarly within the possession and
control of the defendant or where the belief is based on factual information that
makes the inference of culpability plausible. Arista Records, LLC v. Doe 3, 604 F.3d
110, 120 (2d Cir. 2010).
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Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 977 (10th Cir. 2002)). To
prevail on a trade dress infringement claim, a plaintiff must show: (1) the trade dress
is inherently distinctive or has become distinctive through secondary meaning; (2)
there is a likelihood of confusion among consumers as to the source of the competing
products; and (3) the trade dress is nonfunctional. Id. at 1227.4
Norriseal argues that Kimray fails to state a plausible trade dress infringement
claim because it does not specifically articulate which features of its valves make up
the claimed trade dress, which of those features are primarily non-functional, and
how those features are distinctive. To summarize, the Complaint alleges:
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The configuration and visual design of Kimray’s treater valve is
distinctive and non-functional trade dress and is the subject of a valid
trademark registration;

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Due to its distinctive appearance and extensive use by Kimray,
Kimray’s treater valve is strong and well-recognized in the minds of
consumers, oilfield personnel, service personnel and others in the
industry;

●

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Since at least as early as 1954, Kimray has manufactured, advertised,
and sold automatic oil and water treater valves;

Norriseal manufactures and markets a treater valve with a configuration
virtually identical to Kimray’s treater valve;

A product’s trade dress is “functional,” and not eligible for protection, if it is
essential to the use or purpose of the product, if an adverse effect on cost or quality
would result if that configuration were not used, or if the exclusive use of the feature
would put competitors at a significant non-reputation-related disadvantage. TrafFix
Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32-33 (2001); C5 Medical
Werks, LLC v. CeramTec GMBH, __ F. Supp. 3d __, 2017 WL 56073, at *4 (D.
Colo. Jan. 5, 2017).
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●

Contemporaneous advertising and marketing of Norriseal’s valves and
Kimray’s valves is likely to cause confusion, mistake, or deception by
and among consumers as to the source of the parties’ respective valves;

●

Norriseal chose the valves’ design to trade on the goodwill associated
with Kimray’s valves; and

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Norriseal’s design infringes on Kimray’s rights in and to its registered
trade dress.

Complaint at 2-5. Viewing the Complaint as a whole, Kimray’s allegations are
sufficient to provide Norriseal fair notice of Kimray’s claim and the grounds upon
which it rests. While the Complaint does contain some inconsistent or otherwise
flawed allegations, the Court concludes there is sufficient factual support for the
claims. At this stage, Kimray must only demonstrate that it is plausibly entitled to
relief – it is not required to prove its case in the pleadings. Moreover, as stated above,
the Court is required to accept such allegations as true even if it believes actual proof
of the allegations is improbable. Sanchez, 810 F.3d at 756. At some point during
discovery or the summary judgment stage, Kimray will need to identify what
elements of its design are distinctive and which are non-functional, but that degree
of specificity is not required at the pleading stage in this case. Accordingly,
Norriseal’s motion on this issue is denied.

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II.

TRADE DRESS INFRINGEMENT AND LIKELIHOOD OF CONFUSION
Norriseal also contends that Kimray failed to plead a “likelihood of

confusion” between its claimed trade dress and Norriseal’s product design, and thus,
the Court should dismiss its claims for trade dress infringement, unfair competition,
and false designation of origin. Regarding likelihood of confusion, the Tenth Circuit
considers a variety of factors when making such a determination, including: (1) the
degree of similarity between the products; (2) the intent of the alleged infringer in
designing its product; (3) evidence of actual confusion; (4) similarity in how the
products are marketed; (5) the degree of care likely to be exercised by purchasers;
and (6) the strength of the trade dress. General Motors, 500 F.3d at 1227 (citing
Sally Beauty, 304 F.3d at 972, 979). In the Tenth Circuit, likelihood of confusion is
a question of fact. Id.
The Court finds the Complaint alleges sufficient facts to demonstrate a
plausible likelihood of confusion. Kimray alleges the configuration and design of its
valves is strong and well-recognized among consumers and the industry; Norriseal
manufactures and markets valves that are virtually identical; Norriseal designed its
valves with the intent of capitalizing off of Kimray’s goodwill; and both valves are
advertised and marketed to the same consumer base, thereby creating the risk of
confusion, mistake, or deception. Although the Complaint does not appear to assert
instances of actual confusion or the degree of care likely to be exercised by
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consumers, it does allege facts intimating an on the part of Norriseal to cause
confusion, who allegedly modeled its valves after Kimray’s, and that consumers
would be mistaken as to their ownership, sponsorship, or affiliation. Norriseal denies
these allegations, but they are assumed true at the pleading stage.
The extent to which Norriseal’s design and marketing of its valves may cause
confusion are topics the parties will explore during discovery. Accordingly, the
Court finds the Complaint alleges sufficient facts to demonstrate a plausible
likelihood of confusion and provides sufficient notice of the claim and the grounds
upon which it rests; Norriseal’s motion on this issue is denied.
III.

UNFAIR COMPETITION/FALSE DESIGNATION OF ORIGIN
Norriseal also contends the Court should dismiss Kimray’s claims for unfair

competition and false designation of origin because the Complaint is devoid of any
allegations regarding the specific nature of Kimray’s trade dress. The Court has
already determined that, for purposes of Rule 12(b)(6), Kimray has demonstrated a
plausible claim for relief for trade dress infringement. Additionally, the analysis of
a trade dress infringement claim is similar to that for unfair competition and false
designation of origin. See Audi AG v. D’Amato, 469 F.3d 534, 542 (6th Cir. 2006);
Int’l Diamond Importers, Inc. v. Oriental Gemco (N.Y.), Inc., 64 F. Supp. 3d 494,
524 (S.D.N.Y. 2014). Therefore, Norriseal’s motion to dismiss Kimray’s unfair
competition and false designation of origin claims is denied.
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IV.

DECEPTIVE TRADE PRACTICES
Kimray also asserts a state law claim for deceptive trade practices under

Oklahoma law, 78 OKLA. STAT. § 53(A). The Oklahoma Deceptive Trade Practices
Act (ODTPA) proscribes fourteen categories of conduct performed in the course of
a person’s business, vocation, or occupation, including: (1) passing off goods or
services as those of another; (2) knowingly making a false representation as to the
source, sponsorship, approval, or certification of goods or services; and (3)
knowingly making a false representation as to affiliation, connection, association
with, or certification by another. Id. A claim under § 53(A) is treated analogously to
Kimray’s Lanham Act claims and governed by the same standard. Brunswick Corp.
v. Spinit Reel Co., 832 F.2d 513, 527 (10th Cir. 1987). “Thus, by proving a violation
of section 43(a) of the Lanham Act, [a party] has offered sufficient evidence to prove
a violation of [section 53(A)] of the Oklahoma Deceptive Trade Practices Act.” Id.
Rather than engage in an exhaustive review of the Complaint again, the Court
simply notes the Complaint has stated a plausible claim for relief under the ODTPA.
Kimray alleges Norriseal designed its valves with the intent of capitalizing on the
goodwill Kimray acquired in manufacturing, marketing and selling its own valves.
Kimray asserts that Norriseal has marketed duplicate valves and such activities are
likely to cause confusion, mistake, or deception as to their source, origin and
sponsorship, and mislead the public into believing Norriseal is affiliated, connected,
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and/or associated with Kimray, and/or that Norriseal’s valves originate from, are
sponsored by, are endorsed by, or somehow approved by Kimray. In the Court’s
view, such allegations are sufficient to provide Norriseal with notice of Kimray’s
ODTPA claim and the grounds upon which it rests.
V.

COUNTERFEITING
Lastly, Count 6 of the Complaint asserts a claim under Oklahoma’s

Trademark Anti-Counterfeiting Act, which imposes civil liability against any
“person who knowingly and with intent to sell or distribute, uses, displays,
advertises, distributes, offers for sale, sells or possesses any item that bears a
counterfeit mark or any service that is identified by a counterfeit mark[.]” 21 OKLA.
STAT. §§ 1990.2(A), (J). For purposes of the statute, a “counterfeit mark” means (1)
any unauthorized reproduction or copy of intellectual property, and (2) intellectual
property that is affixed to any item that is knowingly sold, offered for sale,
manufactured or distributed or to any identifying services offered or rendered
without the authority of the intellectual property owner. Id. § 1990.1.
Again, at this stage of the pleadings, the Court is unable to conclude that
Kimray has failed to state a plausible claim for relief. At this stage of the
proceedings, the Court cannot require the detail Norriseal urges to be necessary for
Kimray’s Complaint to satisfy the pleading requirements of the Federal Rules of
Civil Procedure. Kimray alleges that the valves, on their surface, are virtually
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identical to Kimray’s valves and are being offered alongside Kimray’s products. The
Court holds that these allegations are sufficient to satisfy Kimray’s burden at this
stage, as Norriseal is given adequate notice of the allegations against it and the
grounds upon which they rest.
Alternatively, Norriseal requests that Kimray be required to amend its
Complaint to provide a more definite statement of (1) what constitutes Kimray’s
alleged trade dress and (2) the factual basis for Kimray’s claims of likelihood of
confusion. “Motions for a more definite statement are generally disfavored in light
of liberal discovery available under the federal rules and are granted only when a
party is unable to determine the issues requiring a response.” Shaffer v. Eden, 209
F.R.D. 460, 464 (D. Kan. 2002) (citing Resolution Trust Corp. v. Thomas, 837
F.Supp. 354, 355 (D. Kan. 1993)); Atherton v. Norman Public School Dist., No.
CIV-11-1280-M, 2012 WL 1438972, at *1 (W.D. Okla. Apr. 25, 2012). “A motion
for more definite statement should not be granted merely because the pleading lacks
detail; rather, the standard to be applied is whether the claims alleged are sufficiently
specific to enable a responsive pleading in the form of a denial or admission.”
Shaffer, supra. Rather, “when a complaint fails to plead all of the elements of a cause
of action, fails to plead any facts supporting the elements of a cause of action, or
states the claim in a vague or ambiguous manner, a court may order a plaintiff to file

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a more definite statement, re-pleading [its] claim in accordance with Federal Rule of
Civil Procedure 8.” Atherton, 2012 WL 1438972, at *1
As stated above, the Court has found the Complaint’s allegations give
Norriseal adequate notice of the claims against it and the grounds upon which they
rest. Accordingly, Norriseal’s alternative request for a more definite statement is
denied.
CONCLUSION
Defendant’s Motion to Dismiss Plaintiff’s Complaint for Failure to State a
Claim, or, in the Alternative, for a More Definite Statement [Doc. No. 16] is
DENIED as set forth herein.
IT IS SO ORDERED this 8th day of May 2017.

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