United States District Court, S.D. Illinois
MEMORANDUM AND ORDER
HERNDON, UNITED STATES DISTRICT JUDGE.
before the Court is a motion to dismiss counterclaims
originally submitted by the Defendant. (Doc. 68.) The
Plaintiff has submitted the motion and accompanying
memorandum to dismiss these counterclaims. (Docs. 77, 78,
91.) The Defendant has responded in opposition. (Doc. 90.)
For the reasons below, the Court grants Plaintiff's
motion to dismiss all counterclaims.
Motion to Dismiss Standard
ruling on a motion to dismiss for lack of subject matter
jurisdiction under Federal Rule of Civil Procedure 12(b)(6),
a court must accept the complaint's well-pleaded factual
allegations as true and draw reasonable inferences from those
allegations in plaintiff's favor. Transit Exp., Inc.
v. Ettinger, 246 F.3d 1018, 1023 (7th Cir. 2001). The
court must then determine “whether relief is possible
under any set of facts that could be established consistent
with the allegations.” Bartholet v. Reishauer
A.G., 953 F.2d 1073, 1078 (7th Cir. 1992) (citing
Conley v. Gibson, 355 U.S. 41, 45-46 (1957)).
motion to dismiss tests the sufficiency of the complaint, not
its merits. Gibson v. City of Chicago, 910 F.2d
1510, 1520 (7th Cir. 1990). A claim may be dismissed only if
it is beyond doubt that under no set of facts would a
plaintiff's allegations entitle them to relief.
Travel All over the World, Inc. v. Kingdom of Saudi
Arabia, 73 F.3d 1423, 1429 (7th Cir. 1996). To survive a
motion to dismiss, “[c]omplaints need not plead facts
and need not narrate events that correspond to each aspect of
the applicable legal rule.” Kolupa v. Roselle Park
Dist., 438 F.3d 713, 715 (7th Cir. 2006).
Motion to Dismiss Counts I and III
argues that American Eagles do not have the requisite
standing to pursue trademark infringement claims under
federal law since they are not the actual rights holder and
thus the action is prohibited.
standing to sue for false designation of origin requires the
plaintiff to be the registrant is a matter of controversy
between circuits. The 7th circuit has chosen to allow mere
license holders to sue for false designation, but only so far
as to “ensure that only the current owner of the mark
can claim infringement.” Specht v. Google
Inc., 747 F.3d 929, 933 (7th Cir. 2014) (Stating only
the owner of a registered mark has standing to claim
infringement; the registrant loses the right upon transfer to
the issue is whether the Counter-Plaintiff holds a reasonable
interest based on their license because it is clear they
cannot show proof of ownership. The Counter-Plaintiff admits
in their own complaint that they held at most a license which
was later extinguished by Ms. Schlafly herself in a public
statement. Since proof of ownership under the Lanham Act
includes only the registrant or an assignee, the
Counter-Plaintiff clearly does not meet this requirement.
proof of ownership, a non-registrant may still pursue a claim
for false designation if they hold a reasonable interest in
the trademark itself and may be harmed by the defendant's
continued use through confusion in the marketplace. As stated
above, the Counter-Plaintiff claims to have held a license
from Ms. Schlafly before it was revoked just prior to her
death. This revocation would seem to destroy any claim by the
Counter-Plaintiff to a reasonable interest since barring the
license; the organization is not the registrant to any mark
within the “family of marks”.
stated above, when adjudicating a motion to dismiss, the
motion should be granted only when the non-moving party
cannot show any facts in support of their claim that would
allow them to succeed. Roots Partnership v. Lands'
End, Inc., 965 F.2d 1411, 1416 (7th Cir. 1992).
With ample opportunity to present any evidence of their
license from Ms. Schlafly or that Ms. Schlafly was in fact
the registrant of the marks at issue, Counter-Plaintiffs have
failed to provide the court with any meaningful evidence that
their false designation or origin claims have any merit.
since the Counter-Plaintiff has failed to provide any facts
that would allow them ...