Trans-High Corporation, Inc. d/b/a High Times v. Reimers et al
Filing
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ORDER GRANTING PLAINTIFF'S MOTION TO DISMISS COUNTERCLAIM, granting 12 Motion to Dismiss for Failure to State a Claim. Defendants' Counterclaim alleged in ECF No. 8 is DISMISSED with prejudice. Signed by Senior Judge Lonny R. Suko. (LR, Case Administrator)
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UNITED STATES DISTRICT COURT
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EASTERN DISTRICT OF WASHINGTON
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TRANS-HIGH CORP., INC.,
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Plaintiff,
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-vsRICHARD REIMERS, et al.,
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Defendants.
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NO. 2:14-CV-00279-LRS
ORDER GRANTING
PLAINTIFF’S MOTION TO
DISMISS COUNTERCLAIM
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BEFORE THE COURT is Plaintiff Trans-High Corp., Inc.’s
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(“Trans-High”) Motion to Dismiss For Failure to State A
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Claim (ECF No. 12), which was telephonically argued on
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December 18, 2015.
Kieran Gerard Doyle participated on
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behalf of the Plaintiff and John R. Zimantz participated on
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behalf of the Defendants.
At the close of oral argument,
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the Court took the matter under advisement.
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review of the pleadings submitted by all parties and with
ORDER - 1
After careful
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the benefit of oral argument, the Court enters the following
order.
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I.
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Plaintiff Trans-High is the owner of ten federally
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BRIEF BACKGROUND
registered trademarks for "HIGH TIMES" and variations
thereof for lawful goods and services. 1
Defendant Richard
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Reimers has been using "HIGH TIME STATION"for the name of
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his marijuana dispensary. Plaintiff alleges that Defendant
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Richard Reimers, by operation of
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in
Ephrata,
Washington
licensed
a
retail
by
the
cannabis
State
store
of
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Washington
used
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thereby
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Plaintiff’s mark.
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infringed
the
mark
“High
Time
Station”
and
on
Plaintiff Trans-High is seeking a
permanent injunction against Mr. Reimers' future use of that
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mark. Defendant Reimers counterclaimed, asking this Court to
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cancel some or all of Trans-High's registrations.
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urges the Court to dismiss Defendants’ counterclaim pursuant
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Plaintiff
to Fed.R.Civ.P. 12(b)(6).
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The Court takes judicial notice of the ten registrations
listed in the Complaint (ECF No. 1) and Plaintiff’s Motion to
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Dismiss (ECF No. 12 at 5)for purposes of this motion to
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ORDER - 2
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II. LEGAL STANDARD
A cause of action may be dismissed under Fed.R.Civ.P.
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12(b)(6) either when it asserts a legal theory that is not
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cognizable as a matter of law, or if it fails to allege
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sufficient facts to support an otherwise cognizable legal
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claim. SmileCare Dental Group v. Delta Dental Plan of
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California, Inc., 88 F.3d 780, 783 (9th Cir. 1996).
In
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addressing a Rule 12(b)(6) challenge the Court accepts all
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factual allegations in the complaint as true (Hospital Bldg.
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Co. v. Trustees of the Rex Hospital, 425 U.S. 738, 740, 96
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S.Ct. 1848, 48 L.Ed.2d 338 (1976)), and construes the
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pleading in the light most favorable to the nonmoving party.
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Tanner v. Heise, 879 F.2d 572, 576 (9th Cir.1989).
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III.
DISCUSSION
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The allegation at issue targets Trans-High's first and
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only trademark registration (Registration No. 1,883,561)
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that covers magazines, registered in 1995.
Mr. Reimers
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accuses Trans-High of unlawfully selling goods that are not
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among those listed in the registrations. More specifically,
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Defendants’ allegations take aim at the alleged sale of drug
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paraphernalia and controlled substances based on the claim
ORDER - 3
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that Trans-High's act of printing advertisements by
third-party companies in its HIGH TIMES magazine violates
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the Controlled Substances Act.
Defendant Reimers does not allege that the goods and
services identified in the HIGH TIMES registrations are
unlawful. Instead he accuses Plaintiff Trans-High of
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unlawfully selling goods that are not among those listed in
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the registrations. Defendants rely on the Controlled
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Substances
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Act stating that such act prohibits,
among
other things, manufacturing, distributing, dispensing,
or
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possessing certain controlled substances, including
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marijuana, marijuana-based preparations, and psilocybin.
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Plaintiff asserts the Controlled Substances Act
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expressly excludes from its scope a party's mere
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advertisement or "promotion" of controlled substances and
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drug paraphernalia.
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Defendants’ counterclaim should be dismissed.
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Therefore, Plaintiff concludes
The Court finds Plaintiff’s arguments convincing.
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Specifically, a registration may be vulnerable to
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cancellation if the goods and services for which the
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registration has been issued, are proven to be unlawful.
ORDER - 4
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None of the goods and services for which the registrations
have been issued are unlawful. The Controlled Substances Act
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expressly excludes from its scope a party's mere
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advertisement or "promotion" of controlled substances and
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drug paraphernalia.
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See 21 U.S.C. § 843(c)(1) (“The term
‘advertisement’ does not include material which merely
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advocates the use of a similar material, which advocates a
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position or practice, and does not attempt to propose or
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facilitate an actual transaction in a Schedule I controlled
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substance.”)
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Having
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alleged
illegality
(nor
any
other
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cognizable
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Defendants’ legal theory is not cognizable as a matter of
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law.
basis
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for cancellation), the Court finds
Furthermore, to the extent Defendants’ counterclaim
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seeks to cancel Trans-High's other nine HIGH TIMES trademark
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registrations for various other goods and services,
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including posters, T-shirts, and DVDs, such a claim
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similarly fails.
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Accordingly, IT IS HEREBY ORDERED that:
Plaintiff's
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Motion to Dismiss, ECF No. 12, is hereby GRANTED.
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Defendants’ counterclaim for cancellation of federal
ORDER - 5
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registration of trademark, ECF No. 8, is hereby DISMISSED
WITH PREJUDICE.
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IT IS SO ORDERED.
The Clerk is hereby directed to enter
this order.
DATED this 12th day of January, 2015.
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s/Lonny R. Suko
_____________________________
LONNY R. SUKO
SENIOR U. S. DISTRICT JUDGE
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ORDER - 6
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