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Mass Appeal Media, Inc. v. Davina Douthard, Inc.

United States District Court, Ninth Circuit

December 12, 2013

MASS APPEAL MEDIA, INC., a Delaware corporation, Plaintiff,
DAVINA DOUTHARD, INC., a California corporation, Defendant.


DEAN D. PREGERSON, District Judge.

Presently before the court are Defendant Davina Douthard, Inc.'s Motion to Dismiss under Rule 12(b)(6) and Plaintiff Mass. Appeal Media, Inc.'s Motion for a Permanent Injunction. Having considered the parties' submissions and heard oral argument, the court now adopts the following order.

I. Background

This case concerns disputed use in commerce of the mark MASS APPEAL. Both Plaintiff Mass. Appeal Media, Inc. ("MAM") and Davina Douthard, Inc. ("DDI") assert that they possess rights vis-a-vis the mark.

MAM asserts that it owns a U.S. trademark for MASS APPEAL with registration No. 2925206 in Class 16, which concerns paper goods and printed material products. (FAC ¶ 5.) It also asserts that it has submitted various pending U.S. trademark applications and has acquired state common law rights to use the mark.[1] MAM asserts that it has been using the MASS APPEAL mark in a variety of activities since the 1990s. ( Id. ¶ 10.) These activities include, since 1998, online and print publications; on-line retail store services for clothing, books, music recordings, and other items; on-line music reviews; and presentation of information related to live events; since 2003, a website allowing users to download music and music videos; and, since 2012, the sale of clothing and provides other various marketing and promotional services. ( Id. ¶ 6.)

MAM asserts that "Defendant [DDI] has marketed and sold online publications and sent out emails using the name MASS APPEAL' and unlawfully and wrongfully obtained its own U.S. Trademark Registration for MASS APPEAL in its own name." ( Id. ¶ 13.)

As Plaintiff acknowledges, DDI was issued a trademark for use of the MASS APPEAL mark. (Id.) The court takes judicial notice of a registration issued by the United States Patent and Trademark Office to DDI for the word mark MASS APPEAL on April 18, 2006.[2] (See DDI's Request for Judicial Notice, Ex. A.) The registration is for Class 41, which concerns education and entertainment services. (Id.) The goods and services identified in the registration are "[p]roviding on-line non-downloadable publications in the nature of newsletters in the field of fashion, beauty, health, entertainment, lifestyle, and other topics of general interest, directed to women and men." (Id.)

However, MAM asserts that DDI "unlawfully and wrongfully" obtained the registration. (FAC ¶ 13, 16.) MAM asserts that DDI "knew of [MAM's use of the] MASS APPEAL Marks and that the same were owned by someone other than themselves; [and] knew that the MASS APPEAL Marks were distinctive and knew that Defendant had not received any authority from [MAM] to use the MASS APPEAL Marks." ( Id. ¶ 16.) MAM further asserts that DDI abandoned use of the MASS APPEAL mark in 2007 and only made de minimis token use beginning again in October 2012 for the purpose of protecting the mark. ( Id. ¶ 17.)

MAM asserts that DDI's use of the mark is likely to cause confusion among consumers who would erroneously believe that DDI's allegedly unauthorized use is licenced or authorized by MAM. ( Id. ¶ 19.) MAM asserts causes of action for federal trademark infringement under 15 U.S.C. § 1114, federal unfair competition under 15 U.S.C. § 1125(a), trademark infringement under California common law, and unfair competition under Cal. Bus. & Prof. Code §§ 17200, et seq. and 17500. ( Id. ¶ 20-58.)

MAM has filed a petition to cancel DDI's trademark before the Trademark Trial and Appeal Board (TTAB). (MAM's RJN, Ex. B; Cancellation No. 92057034.) However, in August 2013, the TTAB suspended its proceedings on the petition in light of the instant suit. ( Id. at 9.)

II. Legal Standard

A complaint will survive a motion to dismiss when it contains "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, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Bell Atl. Corp. v. Twombly , 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). When considering a Rule 12(b)(6) motion, a court must "accept as true all allegations of material fact and must construe those facts in the light most favorable to the plaintiff." Resnick v. Hayes , 213 F.3d 443, 447 (9th Cir. 2000). Although a complaint need not include "detailed factual allegations, " it must offer "more than an unadorned, the-defendant-unlawfully-harmed-me accusation." Iqbal , 556 U.S. at 678. Conclusory allegations or allegations that are no more than a statement of a legal conclusion "are not entitled to the assumption of truth." Id. at 679. In other words, a pleading that merely offers "labels and conclusions, " a "formulaic recitation of the elements, " or "naked assertions" will not be sufficient to state a claim upon which relief can be granted. Id. at 678 (citations and internal quotation marks omitted).

"When there are well-pleaded factual allegations, a court should assume their veracity and then determine whether they plausibly give rise to an entitlement of relief." Id. at 679. Plaintiffs must allege "plausible grounds to infer" that their claims rise "above the speculative level." Twombly , 550 U.S. at 555. "Determining whether a complaint states a plausible claim for relief" is a "context-specific task that ...

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