United States District Court, N.D. California
ORDER GRANTING DEFENDANTS' MOTION TO DISMISS
AMENDED COMPLAINT; DENYING AS MOOT DEFENDANTS' MOTION TO
DISMISS INITIAL COMPLAINT; AFFORDING PLAINTIFFS LEAVE TO
AMEND; CONTINUING CASE MANAGEMENT CONFERENCE RE:
DKT. NO. 25, 42
M. CHESNEY UNITED STATES DISTRICT JUDGE
the Court is the Motion, filed April 6, 2018, by defendants
Trademarks Information International LLC ("TM411"),
Nicholas Greenside ("Greenside"), Stephen W.
Erickson ("Erickson"), and Rogers, Sheffield &
Campbell, LLP ("RS&C"), "to Dismiss
Plaintiffs' First Amended Complaint." Plaintiffs
LegalForce RAPC Worldwide, P.C. and LegalForce, Inc. have
filed opposition, to which defendants have replied. Having
read and considered the papers filed in support of and in
opposition to the motion, the Court rules as
allege that TM411 "operat[es] the website
Trademarks411.com" (see First Amended Complaint
("FAC") ¶ 4), through which it offers
"trademark filing services" (see FAC at
2:8). Plaintiffs further allege that Greenside and Erickson
are "owner[s]" of TM411 (see FAC
¶¶ 5-6), and that Erickson is the "Managing
Partner" of RS&C, a law firm (see FAC
¶ 3). According to plaintiffs, defendants have violated
the Lanham Act, as well as §§ 17200 and 17500 of
the California Business & Professions Code by making
"false and misleading" statements on TM411's
website and in its "[a]d copy" (see FAC
¶ 53), and, in addition, have violated § 17200 by
engaging in other types of assertedly wrongful conduct
(see, e.g., FAC ¶ 76).
under Rule 12(b)(6) of the Federal Rules of Civil Procedure
"can be based on the lack of a cognizable legal theory
or the absence of sufficient facts alleged under a cognizable
legal theory." See Balistreri v. Pacifica Police
Dep't, 901 F.2d 696, 699 (9th Cir. 1990). Rule
8(a)(2), however, "requires only 'a short and plain
statement of the claim showing that the pleader is entitled
to relief.'" See Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 555 (2007) (quoting Fed.R.Civ.P.
8(a)(2)). Consequently, "a complaint attacked by a Rule
12(b)(6) motion to dismiss does not need detailed factual
allegations." See id. Nonetheless, "a
plaintiff's obligation to provide the grounds of his
entitlement to relief requires more than labels and
conclusions, and a formulaic recitation of the elements of a
cause of action will not do." See id. (internal
quotation, citation, and alteration omitted).
analyzing a motion to dismiss, a district court must accept
as true all material allegations in the complaint, and
construe them in the light most favorable to the nonmoving
party. See NL Indus., Inc. v. Kaplan, 792 F.2d 896,
898 (9th Cir. 1986). "To survive a motion to dismiss, a
complaint must contain sufficient factual material, accepted
as true, to 'state a claim to relief that is plausible on
its face.'" Ashcroft v. Iqbal, 556 U.S.
662, 678 (2009) (quoting Twombly, 550 U.S. at 570).
"Factual allegations must be enough to raise a right to
relief above the speculative level[.]" Twombly,
550 U.S. at 555. Courts "are not bound to accept as true
a legal conclusion couched as a factual allegation."
See Iqbal, 556 U.S. at 678 (internal quotation and
argue each of plaintiffs' claims is subject to dismissal.
The Court considers the claims in turn.
First Claim for Relief ("False Advertising and Unfair
Competition[;] The Lanham Act")
Lanham Act prohibits any person from using, "on or in
connection with any goods or services, . . . any . . . false
or misleading description of fact, or false or misleading
representation of fact, which . . . misrepresents the nature,
characteristics [or] quality . . . of his or her or another
person's goods, services, or commercial activities."
See 15 U.S.C. § 1125(a)(1).
Lanham Act claim is based on five allegedly "false and
misleading" statements made by TM411. Defendants argue
that all of the challenged statements are non-actionable,
and, additionally, that plaintiffs have failed to plead any
facts to support a finding that Greenside, Erickson, or
RS&C can be held liable for any statement made by TM411.
False Statement of Fact
actionable under the Lanham Act, the defendant's
representation must be a "statement[ ] of fact"
that is false or misleading. See Cook, Perkiss &
Liehe, Inc. Northern California Collection Service Inc.,
911 F.2d 242, 244 ...