United States District Court, N.D. California
ORDER DENYING MOTION TO DISMISS
William H. Orrick United States District Judge
trademark case, plaintiff Rise Basketball Skill Development,
LLC (“Rise Basketball”) alleges that defendants
Kmart Corporation, Sears Holdings Management Corporation, and
Risewear, LLC (collectively “Risewear”) infringe
its “Winged Basketball Logo” with Risewear's
“Rise” logo. Risewear has answered and brings
several counter-claims because after Rise Basketball filed
this suit, it created a new “RISE” logo
intentionally designed to mimic Risewear's logo and to
confuse consumers. Risewear brings claims for (1) common law
unfair competition; (2) violation of California Business and
Professions Code section 17200, California's unfair
competition law; and (3) cancellation of Rise
Basketball's registered trademarks.
Basketball now moves to dismiss Risewear's common law
unfair competition and § 17200 claims under Rule
12(b)(6). It argues that Risewear has failed to adequately
plead “passing off” to state a common law unfair
competition claim and has not adequately alleged injury to
establish standing on its § 17200 claim. Those claims
are plausibly stated and Rise Basketball's motion to
dismiss is DENIED.
2010, Gus Abellar began Rise Basketball Skill Development, a
private basketball training camp in Las Vegas, Nevada. First
Amended Counter Complaint ("FACC") ¶ 48 (Dkt.
No. 48-1). In late 2012 or early 2013, Abellar moved to the
Bay Area and opened up another camp in San Leandro at which
he offered one-on-one basketball training services to
children aged five to nineteen. Id. ¶ 48-9.
Children enrolled in the training program were given apparel
displaying a "Winged Basketball Logo" featuring the
word "Rise" above a basketball with large
eagle-like wings. Id.¶ 49.
Basketball also sold a limited amount of apparel displaying
this logo at its San Leandro facility and on its website
www.risebasketball.co. Id. ¶ 50
Spring 2015, Risewear was founded as an athletic footwear
brand. Id. ¶ 57. In 2016, Risewear entered into
an agreement with Kmart Corporation in which it granted Kmart
the exclusive right to sell Risewear shoes. Id.
Risewear has a "Dunking Basketball Logo" featuring
the word "RISE" with a dunking basketball player in
place of the "I." Id.
remaining letters are expressed in capital,
handwritten-calligraphy letters "R" "S"
and "E." Id. The entire logo, including
the letters and the basketball player, is depicted in a
saturated red color. Id. Risewear's
"Dunking Basketball Logo" is on all
Risewear-branded footwear and all brand marketing materials.
August 9, 2016 Rise Basketball demanded that Risewear cease
and desist the sale of Risewear shoes, alleging that
Risewear's "Dunking Basketball Logo" infringes
Rise Basketball's "Winged Basketball Logo."
Id. ¶ 58. When Risewear did not acquiesce, Rise
Basketball filed suit, bringing claims for trademark
infringement and unfair competition. Id.
October, 2016, Abellar left San Leandro and moved back to Las
Vegas. Id. ¶ 48. Risewear alleges that in March
2017, Rise Basketball shut down its training program and
rebranded itself as an athletic apparel brand. Id. \
60. It further alleges that Rise Basketball started marketing
apparel on its website containing a new "RISE Logo"