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Kaldy v. Urshow.TV, Inc.

United States District Court, E.D. Tennessee, Greeneville Division

January 10, 2017

PAUL KALDY, d/b/a URFIGHT, Plaintiff,
v.
URSHOW.TV, INC., URSHOW.TV PRODUCTIONS, INC., and UR-CHANNEL BROADCASTING COMPANY, Defendants.

          MEMORANDUM OPINION

          Leon Jordan United States District Judge

         This matter is before the Court on Defendants' Motion to Dismiss, or in the Alternative, Motion to Transfer [doc. 18]; Defendants' Brief in Support of the Motion [doc. 19]; and Plaintiff's Response in Opposition to the Motion [doc. 24]. For the reasons herein, the Court will deny the motion.

         I. Background

         Plaintiff Paul Kaldy (“Mr. Kaldy”) claims to be the proprietor of a business entity known as “UrFight, ” [Am. Compl., doc. 12, ¶ 1], which “specializes in promoting Mixed Martial Arts” and “is dedicated to helping fighters, gyms & promoters get noticed through graphic design, websites, signs, cards, along with T-Shirt and full color printing, ” [Screenshot, doc. 12-1, at 2]. Mr. Kaldy alleges that for several years he has used certain unregistered trademarks to promote, advertise, and sell UrFight's services and products to the public, and these unregistered trademarks include “It's UrFight - Win It!, ” “UrFight, ” “UrFightGear.com, ” and “UrFightSite.com.” [Am. Compl. ¶¶ 12-15]. For one of these trademarks, “It's UrFight - Win It!, ” Mr. Kaldy has since secured federal registration from the United States Patent and Trademark Office for use in connection with “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, [and] athletic uniforms, ” which qualify as Class 25 goods under the International Classification Schedule. [Trademark No. 4, 520, 258, doc. 12-2, at 2].[1] Mr. Kaldy maintains that he has “expended substantial sums in promoting [UrFight's] goods and services” under the four trademarks, which he claims have “become well known to the public as a distinctive indication of the source and origin of [UrFight's] products and services.” [Am. Compl. ¶ 18].

         According to Mr. Kaldy, Defendants Urshow.tv, Inc.; Urshow.tv Productions, Inc.; and UR-Channel Broadcasting Company (“Defendants”) promote, produce, and broadcast martial arts events through the television and the internet and, in doing so, use the trade name “URFight” and other similar trade names. [Id. ¶¶ 19-20]. Mr. Kaldy alleges that these trade names are not only “confusingly similar” but also “identical to” his own trademarks. [Id. ¶¶ 20]. As a result, Mr. Kaldy has brought this action, in which he claims trademark infringement under 15 U.S.C. § 1114 of the Trademark Act of 1946 (Lanham Act) and under Tennessee common law (Count I), unfair competition under 15 U.S.C. § 1125(a) of the Lanham Act and under Tennessee common law (Count II), and violations of subsections 47-18-104(b)(1)-(5), (27) of the Tennessee Consumer Protection Act (“TCPA”). [Am. Compl. ¶¶ 6, 37]. Defendants now seek dismissal of all three counts, and in the alternative, they request that the Court transfer this case to the District of Delaware under 28 U.S.C. § 1404(a). [Mot. to Dismiss or Transfer at 1].

         II. Motion to Dismiss

          Under Federal Rule of Civil Procedure 8(a)(2), “[a] pleading that states a claim for relief must contain . . . a short and plain statement of the claim showing that the pleader is entitled to relief.” In determining whether to dismiss a complaint under Federal Rule of Civil Procedure 12(b)(6), a court accepts the factual allegations in the complaint as true and construes them in a light most favorable to the non-moving party. See Mixon v. Ohio, 193 F.3d 389, 400 (6th Cir. 1999). “[T]he tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions, ” however, and “[t]hreadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). In addition, “[t]o survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.'” Id. (quoting Bell Atl. 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.

         A. Trademark Infringement under § 1114

          Under § 1114(1)(a)-(b), no person, without the consent of the registered holder of a trademark, may:

(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive[.][2]

         To prevail on a claim for trademark infringement under § 1114, a plaintiff must show “(1) that it owns a valid, protectable trademark; (2) that the defendant used the trademark in commerce and without the registrant's consent; and (3) there was a likelihood of consumer confusion.” Ford Motor Co. v. Heritage Mgmt. Grp., Inc., 911 F.Supp.2d 616, 621 (E.D. Tenn. 2012) (quotation omitted). The third element, a likelihood of consumer confusion, is “[t]he touchstone of liability under § 1114, ” Daddy's Junky Music Stores, Inc. v. Big Daddy's Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997), and it requires a showing of confusion as to the origin of the goods or services that each party offers in the marketplace, Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 629 (6th Cir. 2002); see Homeowners Grp., Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1107 (6th Cir. 1991) (“The ultimate question [is] whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.”).

         Defendants argue that Mr. Kaldy has not alleged sufficient facts to support a likelihood of confusion. [Defs.' Br. at 2-3]. Specifically, Defendants maintain that a likelihood of confusion is absent because they are “in the digital broadcasting industry, ” not the business of making athletic apparel-that is, “goods or services within class 25.” [Id. at 3-4]. In response, Mr. Kaldy contends that any analysis concerning a likelihood of confusion involves “issue[s] of material fact to be determined by the court.” [Pl.'s Resp. at 2]. As a result, Mr. Kaldy asserts that the dismissal of his claim under § 1114 is inappropriate because the Court has an obligation to refrain from resolving questions of material fact here at the pleading stage. [Id.].

         As a general matter, the Court begins by noting that under Rule 12(b)(6) it is unable to consider a question of fact on a motion to dismiss. See, e.g., Ecclesiastical Order of the ISM of AM, Inc. v. IRS, 725 F.2d 398, 403 (6th Cir. 1984) (Jones, J., concurring in part and dissenting in part); Mike Vaughn Custom Sports, Inc. v. Piku, 15 F.Supp.3d 735, 753 (E.D. Mich. 2014). For more than three decades, courts in the Sixth Circuit have conducted a multi-factor analysis to determine whether a defendant's use of a trademark creates a likelihood of confusion among consumers. See Frisch's Rests. v. Elby's Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982) (setting out eight factors). An analysis under these factors requires a court to resolve both factual and legal questions. See Wynn Oil Co. v. Thomas, 839 F.2d 1183, 1186 (6th Cir. 1988) (“This Circuit considers the question of whether there is a likelihood of confusion a mixed question of fact and law.”). A court must first resolve the factual questions before it can ...


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