United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
M. Dow, Jr. United States District Judge.
Second Amended Complaint (“SAC”) , Plaintiff
Woofbeach, Inc. (“Woofbeach”) brings suit against
Steve Holland (“Holland”) and three companies
that Holland co-owns-Beach for Dogs, Beach for Dogs Aurora,
Inc., and Beach for Dogs Corporation (the “Holland
Companies”)-for (1) trademark infringement in violation
of the Latham Act, 15 U.S.C. § 1125(a); (2) violation of
the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS
510/2 et seq. (“UDTPA”); and (3)
violation of the Illinois Consumer Fraud and Deceptive Trade
Practices Act, 815 ILCS 505/2 et seq.
(“ICFA”). In their answer to Woofbeach's
First Amended Complaint, , Holland and the Holland
Companies counter-sued Woofbeach and its purported owners,
Eric and Christina Wilson (the “Wilsons”) for (1)
a declaration that they have not violated the Latham Act; (2)
a declaration that they have not violated the UDTPA; (3)
breach of contract; (4) breach of fiduciary duty to
partnership; and (5) breach of fiduciary duty to Holland. See
 (First Amended Counterclaim). Although Holland and the
Holland Companies did not re-plead these counterclaims in
their answer to the SAC, see , they have informed the
Court that they are proceeding with the counterclaims.
before the Court are Holland and the Holland Companies'
motion to dismiss Woofbeach's ICFA claim (Count III) for
failure to state a claim  and Woofbeach and the
Wilsons' motion to dismiss Holland and the Holland
Companies' counterclaims . For the reasons explained,
below, Holland and the Holland Companies' motion to
dismiss  is denied and Woofbeach and the Wilsons'
motion to dismiss  is granted in part and denied in part.
This case is set for status hearing on January 11, 2018.
SAC , Woofbeach alleges as follows. Woofbeach is an
Illinois corporation that provides dog training and groom
services. Beginning no later than 2012, Woofbeach began using
the service mark Woofbeach, which became the Word Mark
registration, and a graphic logo containing the silhouette of
a dog and palm tree, which became the Woofbeach Design Mark
registration. Woofbeach is the exclusive owner of the
Woofbeach Word Mark and the Woofbeach Design Mark.
1, 2015, Woofbeach filed an application for service mark
protection with the United States Patent and Trademark Office
(“USPTO”) for the Woofbeach Design Mark. On the
same date, Woofbeach filed an application for service mark
protection with the USPTO for the Woofbeach Word Mark.
January 26, 2016, the USPTO issued U.S. Federal Registration
4891993 for the Woofbeach Design Mark. The Woofbeach Design
Mark Federal Registration 4891993 is for dog training and
grooming services and consists of the stylized wording
“WOOFBEACH” placed below silhouettes of two palm
trees and a dog.
February 16, 2016, the USPTO issued U.S. Federal Registration
4900682 for the for the Woofbeach Word Mark. The Woofbeach
Word Mark Federal Registration 4900682 is for dog training
and groom services and consists of the word WOOFBEACH.
has used the Woofbeach Word Mark and the Woofbeach Design
Mark in connection with providing dog training and grooming
services at its storefronts in Batavia, Illinois since 2012,
Geneva, Illinois since 2014, and South Elgin, Illinois since
became aware that Holland has been using the name
“Beach for Dogs, ” in addition to a logo
containing the name and a silhouette of a palm tree and a
dog, in connection with dog training and dog grooming
services in Wheaton, Illinois since mid-2015 and more
recently in Naperville, Illinois. Woofbeach has never
authorized Holland to use a name for dog training and dog
grooming services which contains the word “beach”
or a logo which contains the graphic elements of a silhouette
of a dog and palm tree. Holland is a former customer of
Woofbeach and was aware of the Woofbeach Word Mark and
Woofbeach Design Mark.
Count I of the SAC, Woofbeach alleges that Holland's
actions constitute trademark infringement in violation of the
Latham Act, 15 U.S.C. § 1225(a). Woofbeach alleges that
Holland's use of the name “Beach for Dogs”
and a logo containing a silhouette of a dog and palm tree
infringe on the Woofbeach Word Mark and Woofbeach Design
Mark. According to the SAC, the “Beach for Dogs”
name and related logo are confusingly similar to the
Woofbeach Word Mark and Woofbeach Design Mark and
Holland's ongoing use of the name and logo has caused and
is likely to cause confusion in the minds of consumers as to
the existence of a relationship between Woofbeach's dog
training and grooming business and Holland's dog training
and grooming business. Woofbeach alleges that, as a direct
and proximate result of Holland's infringing and
deceptive activities and the resulting confusion in the minds
of the consuming public, Woofbeach has been and/or will be
damaged and irreparably harmed. In particular, Woofbeach
alleges that it will lose good will, suffer damage to its
business reputation, and lose potential customers and sales.
Counts II and III of the SAC, respectively, Woofbeach alleges
that Holland has engaged in wrongful conduct that violates
the UDTPA, 815 ILCS 510/2 et seq., and the ICFA, 815
ILCS 505/2 et seq. In addition to its allegations
that Holland used a name and logo that are confusingly
similar to Woofbeach's, Woofbeach alleges on information
and belief that Holland caused his personal cell phone number
to be listed in certain Internet directories to appear next
to listings for Woofbeach, to improperly direct potential
customers for dog grooming and training services to him
personally and to unlawfully trade on the good will of
and the Holland Companies bring counterclaims against
Woofbeach and the Wilsons and in support thereof, alleges as
follows. Steve Holland is the president and co-owner of Beach
for Dogs Aurora, Inc. and Beach for Dogs, Corporation, which
are both Illinois corporations. The Wilsons are the purported
owners of Woofbeach.
Holland Companies were formed at the beginning of 2015 to
offer a variety of high quality services related to dog
ownership, including dog training, grooming, boarding, and
day care. They also sell food, treats, and grooming products.
They have a strong social media presence on Facebook,
Instagram, Twitter, and other similar sites. Since their
inception, the Holland Companies have used the name
“Beach for Dog” and a logo of “a cartoon
dog catching a Frisbee on ...