United States District Court, S.D. California
THE ECLIPSE GROUP LLP, a California limited liability partnership, Plaintiff,
ECLIPSE IP LLC, a Florida limited liability company, Defendant.
ORDER GRANTING DEFENDANT'S MOTION TO DISMISS AND DENYING PLAINTIFF'S MOTION FOR PRELIMINARY INJUNCTION
[Doc. Nos. 8, 12]
JOHN A. HOUSTON, District Judge.
Plaintiff The Eclipse Group LLP ("Eclipse Group"), a California limited liability partnership that offers legal services in the field of patent infringement litigation filed a complaint on August 15, 2013, for service mark infringement, false designation of origin, dilution and unfair competition, naming Defendant Eclipse IP LLC ("Eclipse IP") as defendant. Plaintiff alleges it became the successor to "The Eclipse Group", a general partnership formed in 2002, and acquired all its assets, goodwill, intellectual property and other proprietary rights, including the service mark at issue in this litigation. Complaint ¶¶ 9, 10. Plaintiff further alleges Defendant's use of "Eclipse" in its business resulted in confusion, damage to Plaintiff's reputation and dilution of the service mark "The Eclipse Group." Id . ¶¶ 19, 20.
Defendant filed a motion to dismiss the complaint. The Court took the matter under submission after the parties fully briefed the motion. Thereafter, Plaintiff filed a motion for preliminary injunction. Defendant filed an opposition to the motion and Plaintiff filed a reply. Defendant filed an objection to the reply.
The motion was taken under submission without oral argument. After a thorough review of the parties' submissions, the Court GRANTS Defendant's motion to dismiss and DENIES Plaintiff's motion for preliminary injunction.
I. Defendant's Motion to Dismiss
Defendant requests the Court dismiss the complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. Defendant argues the complaint lacks factual allegations sufficient to plausibly allege infringement of a registered service mark, false designation of origin, trademark dilution and unfair competition.
A. Legal Standard
A motion to dismiss under Rule 12(b)(6) tests the sufficiency of the complaint. Navarro v. Block , 250 F.3d 729, 732 (9th Cir. 2001). Dismissal is warranted under Rule 12(b)(6) where the complaint lacks a cognizable legal theory. Robertson v. Dean Witter Reynolds, Inc. , 749 F.2d 530, 534 (9th Cir. 1984); see Neitzke v. Williams , 490 U.S. 319, 326 (1989) ("Rule 12(b)(6) authorizes a court to dismiss a claim on the basis of a dispositive issue of law."). Alternatively, a complaint may be dismissed where it presents a cognizable legal theory yet fails to plead essential facts under that theory. Robertson , 749 F.2d at 534. While a plaintiff need not give "detailed factual allegations, " he must plead sufficient facts that, if true, "raise a right to relief above the speculative level." Bell Atlantic Corp. v. Twombly , 550 U.S. 544, 545 (2007).
"To 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.'" Ashcroft v. Iqbal , 129 S.Ct. 1937, 1949 (2009) (quoting Twombly , 550 U.S. at 547). A claim is facially plausible when the factual allegations permit "the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id . In other words, "the non-conclusory factual content, ' and reasonable inferences from that content, must be plausibly suggestive of a claim entitling the plaintiff to relief. Moss v. U.S. Secret Service , 572 F.3d 962, 969 (9th Cir. 2009). "Determining whether a complaint states a plausible claim for relief will... be a context-specific task that requires the reviewing court to draw on its judicial experience and common sense." Iqbal , 129 S.Ct. at 1950.
In reviewing a motion to dismiss under Rule 12(b)(6), the court must assume the truth of all factual allegations and must construe all inferences from them in the light most favorable to the nonmoving party. Thompson v. Davis , 295 F.3d 890, 895 (9th Cir. 2002); Cahill v. Liberty Mut. Ins. Co. , 80 F.3d 336, 337-38 (9th Cir. 1996). However, legal conclusions need not be taken as true merely because they are cast in the form of factual allegations. Ileto v. Glock, Inc. , 349 F.3d 1191, 1200 (9th Cir. 2003); Western Mining Council v. Watt , 643 F.2d 618, 624 (9th Cir. 1981). When ruling on a motion to dismiss, the Court may consider the facts alleged in the complaint, documents attached to the complaint, documents relied upon but not attached to the complaint when authenticity is not contested, and matters of which the Court takes judicial notice. Lee v. City of Los Angeles , 250 F.3d 668, 688-89 (9th Cir. 2001). If a court determines that a complaint fails to state a claim, the court should grant leave to amend unless it determines that the pleading could not possibly be cured by the allegation of other facts. See Doe v. United States , 58 F.3d 494, 497 (9th Cir. 1995).
1. Trademark ...