United States District Court, E.D. California
trademark infringement case comes before the court on the
motion to dismiss brought by defendants Bellstone Partners,
ECF No. 21. Plaintiff Belstone Capital, LLC opposes, ECF No.
26, and defendants replied, ECF No. 27. On January 13, 2017,
the court held a motion hearing, at which Maurice Ross and
Daniel Ballard appeared for plaintiff and Michael Thomas
appeared for defendants. For the following reasons, the court
GRANTS defendants' motion.
FACTUAL ALLEGATIONS AND PROCEDURAL BACKGROUND
is a corporate finance company specializing in technology
development and capital formation with a principal place of
business in New York. Compl. ¶¶ 9, 11, ECF No. 1.
Defendants are companies involved in real estate lending and
real estate development with principal places of business in
California. Id. ¶¶ 8, 12-15.
Plaintiff's and defendants' businesses and customers
do not overlap. See Id . ¶¶ 10, 16.
Defendants first began using the “Bellstone”
trademark in June 2004, id. ¶ 37, and
registered it as a word mark on August 3, 2010 with the U.S.
Patent and Trademark Office (USPTO) in International Class
(“IC”) 36 for “Lending consultant services,
” Registration Number 3828103 (the “-103
registration”), id. ¶¶ 5, 26.
Plaintiff has been using the “Belstone” mark
since at least 2010. Id. ¶ 37. Plaintiff
currently has a pending application with the USPTO to
register its Belstone mark, Serial Number 86973133.
Id. ¶¶ 6, 31. During more than six years
of concurrent use, there has been no marketplace confusion
caused by the parties' use of their respective marks.
April 20, 2016, plaintiff sent defendants a letter requesting
that defendants enter into a co-existence, consent, and
cross-license agreement whereby they would confirm that
plaintiff and defendants could concurrently use their
respective marks, and by agreement acknowledge that such use
would not cause marketplace confusion among their respective
customer bases or otherwise. Id. ¶ 20.
Defendants rejected plaintiff's request, and instead
demanded plaintiff cease and desist infringing
defendants' mark. Id. ¶ 21. On May 6, 2016,
defendants filed a new trademark registration application
with the USTPO, seeking broader protection for their mark
under IC 9 (computer software), 35 (business data analysis
services in the field of real estate), 36 (capital investment
in the field of real estate), and 42 (software for real
estate investments). Id. ¶¶ 22-24.
Defendants' Serial Number for this application is
87027088 (the “-088 application”). Id.
alleges, however, that defendants cannot perform most of the
services they list in their -088 application. Id.
¶ 25. Most of the services would require defendants to
be registered as a real estate broker by the California
Bureau of Real Estate. Id. Although the Managing
Director for all three defendants, Robert B. Price IV, does
have a real estate license, at least one defendant, Bellstone
Partners, LLC, is not so licensed, and defendants without
real estate licenses “may not lawfully provide lending
consultant services for real estate development
projects” under other parties' licenses.
Id. ¶¶ 25, 56. Additionally,
defendants' assertion in the application leading to their
-103 registration, that they were using the
“Bellstone” mark in interstate commerce for
lending consulting services, was fraudulent because
defendants provide their services under the trade name
“Bellstone Partners, LLC, ” not
“Bellstone” alone, and then only in Southern
California and Sacramento, not in interstate commerce.
Id. ¶ 26.
24, 2016, plaintiff filed the complaint in this court,
seeking: (1) a declaration of non-infringement of
defendants' trademark rights; (2) a declaration that
defendants cannot register, via their -088 application, the
“Bellstone” mark for services performed
unlawfully; and (3) cancellation of defendants' -103
registration of the “Bellstone” mark because it
was obtained fraudulently. See generally id.
the time for responding to the complaint was extended by
stipulation, defendants filed a motion to dismiss on
September 9, 2016. Plaintiff opposes each of defendants'
contentions, Opp'n, ECF No. 26, and defendants have
replied, Reply, ECF No. 27.
Federal Rule of Civil Procedure 12(b)(6), a party may move to
dismiss a complaint for “failure to state a claim upon
which relief can be granted.” The motion may be granted
only if the complaint “lacks a cognizable legal theory
or sufficient facts to support a cognizable legal
theory.” Hartmann v. Cal. Dep't of Corr. &
Rehab., 707 F.3d 1114, 1122 (9th Cir. 2013). Although a
complaint need contain only “a short and plain
statement of the claim showing that the pleader is entitled
to relief, ” Fed.R.Civ.P. 8(a)(2), in order to survive
a motion to dismiss this short and plain statement
“must contain sufficient factual matter . . . to
‘state a claim to relief that is plausible on its
face.'” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550
U.S. 544, 570 (2007)). A complaint must include something
more than “an unadorned,
the-defendant-unlawfully-harmed-me accusation” or
“‘labels and conclusions' or ‘a
formulaic recitation of the elements of a cause of
action.'” Id. (quoting Twombly,
550 U.S. at 555). Determining whether a complaint will
survive a motion to dismiss for failure to state a claim is a
“context-specific task that requires the reviewing
court to draw on its judicial experience and common
sense.” Id. at 679. Ultimately, the inquiry
focuses on the interplay between the factual allegations of
the complaint and the dispositive issues of law in the
action. See Hishon v. King & Spalding, 467 U.S.
69, 73 (1984).
making this context-specific evaluation, this court must
construe the complaint in the light most favorable to the
plaintiff and accept its factual allegations as true.
Erickson v. Pardus, 551 U.S. 89, 93-94 (2007).
However, “‘conclusory allegations of law and
unwarranted inferences' cannot defeat an otherwise proper
motion to dismiss.” Schmier v. U.S. Court of
Appeals for Ninth Circuit, 279 F.3d 817, 820 (9th Cir.
2002) (quoting Associated Gen. Contractors of Am. v.
Metro. Water Dist. of S. California, 159 F.3d 1178, 1181
(9th Cir. 1998)).
ask the court to take judicial notice of four public records
they say are maintained on the USPTO website. See
Defs.' Req. for J. Notice (“RJN”) Exs. A-D,
ECF No. 21-2. Plaintiff also asks the court to take judicial
notice of a public record maintained on the USPTO website.
Pl.'s RJN Ex. 3, ECF No. 26-1. “A court may take
judicial notice of ‘matters of public record'
without converting a motion to dismiss into a motion for
summary judgment, as long as the facts noticed are not
subject to reasonable dispute.” Intri-Plex Techs.,
Inc. v. Crest Grp., Inc., 499 F.3d 1048, 1052 (9th Cir.
2007) (changes, brackets, citations and quotations omitted).
Accordingly, the court takes judicial notice of the
marks' filings, though not the content of the documents
themselves, because the filings are a matter of public record
and their veracity is not in dispute.
also asks the court to take judicial notice of two emails
sent from defendants' counsel to plaintiff's counsel,
Pl.'s RJN Ex. 1, and a letter sent from plaintiff's
counsel to defendants' counsel, Pl.'s RJN Ex. 2.
These two emails and the letter each are referenced in
plaintiff's complaint. Compl. ¶¶ 20-21. In
reviewing a motion to dismiss, the court may “consider
documents in situations where the complaint necessarily
relies upon a document or the contents of the document are
alleged in a complaint, the document's authenticity is
not in question and there are no disputed issues as to the
document's relevance.” Coto Settlement v.
Eisenberg, 593 F.3d 1031, 1038 (9th Cir. 2010). In this
case, the complaint only references the emails and letter,
but does not necessarily rely upon them. Because the