United States District Court, N.D. California
ORDER DENYING DEFENDANT'S MOTION TO DISMISS RE:
DKT. NO. 18
HAYWOOD S. GILLIAM, JR., UNITED STATES DISTRICT JUDGE.
Steeped, Inc. (“Steeped Coffee” or
“Plaintiff”) filed trademark infringement claims
against Defendant Nuzee, Inc. (“Nuzee” or
“Defendant”) for its use of the STEEPED COFFEE
trademark. See Dkt. No. 1 (“Compl.”).
Before the Court is Defendant's motion to dismiss for
failure to state a claim, for which briefing is complete.
See Dkt. No. 18 (“Mot.”), 26
(“Opp.”), and 30 (“Reply”). The Court
DENIES Defendant's motion.
is a Delaware Corporation headquartered in Scotts Valley,
California, which began with a crowdfunded Kickstarter
campaign in 2015. Compl. ¶ 7. Steeped Coffee
“developed a unique and innovative single-serve coffee
product that is small, light, pre-ground and pre-portioned,
yet can be stored for months with minimal loss of
freshness.” Id. ¶ 1. Specifically, its
products store “ground coffee in small, specially
engineered, biodegradable filter bags, which are in turn kept
in zero waste outer pouches flushed with nitrogen gas to
eliminate oxygen and thus prevent oxidation.”
Id. ¶ 2. Plaintiff alleges that
“NuZee's use of ‘Steep Coffee,'
‘Steep Bag Coffee,' ‘Steep Pouch,'
‘Steeped to Perfection,' and similar terms [in
connection with its Pine Ranch Coffee Co. brand product] is
confusingly similar to Steeped's STEEPED COFFEE mark (and
identical to other marks Steeped uses and has filed for
registrations on) in sound, appearance, and commercial
impression.” Id. ¶ 19. Plaintiff's
STEEPED COFFEE trademark is registered on the Supplemental
Register, the secondary register maintained by the United
States Patent and Trademark Office (“PTO”).
Id. ¶ 2, Ex. A.
Rule of Civil Procedure 8(a) requires that a complaint
contain “a short and plain statement of the claim
showing that the pleader is entitled to relief.”
Fed.R.Civ.P. 8(a)(2). A defendant may move to dismiss a
complaint for failing to state a claim upon which relief can
be granted under Federal Rule of Civil Procedure 12(b)(6).
“Dismissal under Rule 12(b)(6) is appropriate only
where the complaint lacks a cognizable legal theory or
sufficient facts to support a cognizable legal theory.”
Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d
1097, 1104 (9th Cir. 2008). To survive a Rule 12(b)(6)
motion, a plaintiff must plead “enough facts to state a
claim to relief that is plausible on its face.”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007). A claim is facially plausible when a plaintiff pleads
“factual content that allows the court to draw the
reasonable inference that the defendant is liable for the
misconduct alleged.” Ashcroft v. Iqbal, 556
U.S. 662, 678 (2009).
reviewing the plausibility of a complaint, courts
“accept factual allegations in the complaint as true
and construe the pleadings in the light most favorable to the
nonmoving party.” Manzarek v. St. Paul Fire &
Marine Ins. Co., 519 F.3d 1025, 1031 (9th Cir. 2008).
Nonetheless, Courts do not “accept as true allegations
that are merely conclusory, unwarranted deductions of fact,
or unreasonable inferences.” In re Gilead Scis.
Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008)
(quoting Sprewell v. Golden State Warriors, 266 F.3d
979, 988 (9th Cir. 2001)). Even if the court concludes that a
12(b)(6) motion should be granted, the “court should
grant leave to amend even if no request to amend the pleading
was made, unless it determines that the pleading could not
possibly be cured by the allegation of other facts.”
Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000)
(en banc) (quotation omitted).
moves to dismiss on two grounds: first, Plaintiff failed to
sufficiently allege Defendant's “use” of the
infringing mark “in commerce” as required under
the Lanham Act, and second, Plaintiff failed to adequately
plead a valid trademark. See generally Mot.
Use in Commerce
initial matter, Defendant characterizes its argument that
Plaintiff fails to sufficiently allege Defendant used an
infringing mark in commerce as a jurisdictional challenge
under Federal Rules of Civil Procedure 12(b)(1). This is
incorrect. Whether Plaintiff has met its burden to plead the
elements of 15 U.S.C. § 1114 does not affect whether the
Court has the power to resolve this case. Instead, the Court
has subject matter jurisdiction over this case via federal
question jurisdiction because Plaintiff alleges a Lanham Act
violation. See 28 U.S.C. § 1331. Plaintiff also
has standing under Article III of the Constitution because it
alleges damage to its brand traceable to NuZee's use of
the STEEPED COFFEE mark, which is redressable through an
injunction by this Court. Compl. ¶ 4, Prayer for Relief;
see also, Monsanto Co. v. Geertson Seed Farms, 561
U.S. 139, 149 (2010) (“Standing under Article III of
the Constitution requires that an injury be concrete,
particularized, and actual or imminent; fairly traceable to
the challenged action; and redressable by a favorable
ruling.”). Accordingly, the Court construes
Defendant's claim that Plaintiff failed to sufficiently
allege an element of the statute as seeking dismissal under
Rule 12(b)(6). See Iqbal, 556 U.S. at 678 (analyzing
whether plaintiff sufficiently “recit[ed] the elements
of a cause of action” as a Rule 12(b)(6) motion.).
Lanham Act “grants trademark protection . . . to marks
that are used to identify and to distinguish goods or
services in commerce-which typically occurs when a mark is
used in conjunction with the actual sale of goods or
services.” Brookfield Commc'ns, Inc. v. W.
Coast Entm't Corp., 174 F.3d 1036, 1051 (9th Cir.
1999). It provides a remedy against:
(1) Any person who shall, without the consent of the
(a) use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark in
connection with the sale, offering for sale, distribution, or
advertising of any goods or services on or in connection with
which such use is likely to cause confusion, or to cause
mistake, or to deceive 15 U.S.C. § 1114 ...