United States District Court, N.D. California
ORDER GRANTING MOTION TO DISMISS WITH LEAVE TO AMEND
Re: Dkt. No. 14
GONZALEZ ROGERS UNITED STATES DISTRICT COURT JUDGE
24, 2019, the Court heard oral argument on defendant's
motion to dismiss, which was fully briefed. (Dkt. Nos. 14,
16, 20.) As stated on the record, and confirmed herein,
having carefully considered the briefing and arguments
submitted in this matter, defendant's motion to dismiss
is Granted and plaintiff's complaint is
Dismissed with Leave to Amend.
with respect to plaintiff's claims for false advertising,
based on federal and state law, and unfair business
practices, defendant contends that because its TO KALON
trademark is incontestable under Section 15 of the Lanham
Act, such designation provides conclusive evidence of the
validity of the mark under Section 33 as well as that the
marks are inherently distinctive and therefore cannot be
descriptive, geographically or otherwise. (Dkt. No. 14
(“MTD”) at 4-5 (citing 15 U.S.C. § 1115(b);
Park ‘N Fly, Inc. v. Dollar Park and Fly,
Inc., 469 U.S. 189, 195-97 (1985)).) However, as they
must, defendant acknowledges that “[s]uch conclusive
evidence of the right to use the registered mark . . . shall
be subject to the following defenses or defects:”
including “that the registration or the incontestable
right to use the mark was obtained fraudulently;” and
“that the registered mark is being used by . . . the
registrant, so as to misrepresent the source of the goods or
services on or in connection with which the mark is
used[.]” 15 U.S.C. §§ 1115(b)(1); (3).
Plaintiff has contended that both exceptions apply.
Therefore, the Court Grants defendant's
motion to dismiss, but provides plaintiff leave to amend to
allege in greater detail how each of these exceptions apply.
regarding plaintiff's declaratory judgment claim,
defendant contends that no case or controversy exists because
plaintiff does not specify “potentially infringing
use” of the TO KALON mark. (MTD at 7-8.) The
Declaratory Judgment Act provides that “[i]n a case of
actual controversy, ” a federal court may declare that
the rights and other legal relations of any interested party
seeking such declaration, whether or not further relief is or
could be sought.” 28 U.S.C. § 2201(a). To
establish an “actual controversy, ” a plaintiff
need not establish that defendant's conduct has created a
reasonable apprehension of suit but must show that
“there has been meaningful preparation to conduct
potentially infringing activity.” See Cat Tech LLC
v. TubeMaster, Inc., 528 F.3d 871, 880 (Fed. Cir. 2008)
(citing MedImmune, Inc. v. Genentech, Inc., 549 U.S.
118, 126-137 (2007); see also Aetna Life Ins. Co. v.
Haworth, 300 U.S. 227, 240-41 (1937); Merit
Healthcare International, Inc. v. Merit Medical Sys.,
Inc., 721 Fed.Appx. 628, 630 (9th Cir. 2018) (finding
that plaintiff's declaratory judgment claim that there
would be trademark confusion if it sold its goods to certain
customers was insufficient to sustain declaratory judgment
jurisdiction where the plaintiff had not yet made any such
sales nor alleged or offered proof that it had
“imminent plans” to do so).
alleges that it has submitted trademark applications for
marks containing the To Kalon term and defendant has sent TVH
cease and desist letters regarding those applications
demanded that plaintiff withdraw its pending applications and
not use or dilute defendant's “famous” mark.
(Dkt. No. 1 ¶ 61.) Therefore, plaintiff has
alleged a case and controversy, however, because the Court
has granted defendant's motion to dismiss with respect to
plaintiff's other claims for further clarification, and
the claim for declaratory relief rises and falls with the
allegation of an independent claim, the Court
Grants the motion with respect to
declaratory relief as well and allows plaintiff leave to
amend as to its other claims, as noted herein.
plaintiff's claim for trademark cancellation is not an
independent cause of action but a remedy that may be claimed
where an independent cause of action under the Lanham Act is
elsewhere asserted. See 15 U.S.C. § 1119.
Therefore, the Court Grants defendant's
motion with respect to plaintiffs assertion of trademark
cancellation as an independent claim and provides plaintiff
leave to amend its complaint to assert trademark cancellation
as a remedy.
and as noted on the record, plaintiff Shall
file an amended complaint by no later than July 1,
2019 and defendant Shall respond by
no later than July 15, 2019.
Order terminates Docket Number 14.
Is So Ordered.
 The Court notes that during oral
argument on June 24, plaintiff confirmed that its Section
43(a) Lanham Act Claim, stylized in the complaint as
“False Advertising and False Designation of Origin,
” arises only under 15 U.S.C. ...