Christopher Mark Mikson, Esquire, Akin Gump Strauss Hauer & Feld LLP, Philadelphia, Pennsylvania, Attorney for Plaintiffs Kee Action Sports LLC and Kee Action Sports II LLC.
Anthony J. DiMarino, III, Esquire, Emmett Stephan Collazo, Esquire, A.J. DiMarino, III, PC, Woodbury, New Jersey, Jane A. Lorber, Esquire, Valken, Inc., Swedesboro, New Jersey, Attorneys for Defendant Valken Inc.
NOEL L. HILLMAN, District Judge.
This matter comes before the Court by way of Defendant Valken Inc.'s motion [Doc. No. 17] seeking to dismiss Count IV of Plaintiffs' complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted. The Court has considered the parties' submissions and decides this matter pursuant to Federal Rule of Civil Procedure 78.
For the reasons expressed below, Defendant's motion will be denied.
In this action, Plaintiffs assert claims for both patent and trade dress infringement arising under 35 U.S.C. § 271 and 15 U.S.C. § 1114, respectively. The Court exercises jurisdiction over Plaintiffs' federal patent and trade dress infringement claims pursuant to 28 U.S.C. §§ 1331, 1338.
Although not specifically alleged in the complaint, Plaintiffs Kee Action Sports LLC and Kee Actions Sports II LLC (hereinafter, "Kee" or "Kee Action") together are "a major supplier of paintball products[, ]" "paintballs (also called paint'), and markers, ... the devices that shoot... paintballs." (Kee's Opp'n to Valken's Mot. of Dismiss [Doc. No. 19] (hereinafter, "Kee's Opp'n"), 7.) On September 27, 2012, Kee Action filed a four count complaint asserting claims for patent infringement in Counts I, II, and III, and a claim for infringement of Kee Action's registered trade dress pursuant to 15 U.S.C. § 1114(1)(a) in Count IV.
Count IV of the complaint alleges that Kee Action is the "owner by assignment of the registered trade dress" ___ U.S. Registration No. 3049101 - for paintballs with "a design consisting of contrasting colors blended randomly together to form the appearance of a fanciful design on the surface of a paintball.'" (Pls.' Compl. [Doc. No. 1] ¶¶ 38-39.) Plaintiffs allege that Defendant's "paintball products, including by not limited to the Graffiti and the Redemption paintball products, copy and infringe on Kee Action's registered trade dress in violation of 15 U.S.C. § 1114(1)(a)." (Id. ¶ 40.) Plaintiffs essentially contend that both Defendant's unauthorized use of Kee Action's registered trade dress, along with its manufacture and distribution of "paintball products with shell design features that copy elements of Kee Actions' registered trade dress[, are, ] likely to cause confusion, " mistake, or to deceive the consumer with respect to the origin or sponsorship of the paintballs. (Id. ¶ 41.) According to Plaintiffs, Defendant's manufacture and distribution of the allegedly infringing paintballs "enables Defendant to benefit unfairly from Kee Action's reputation and success, thereby giving Defendant's infringing products sales and commercial value they would not otherwise have[.]" (Id. ¶ 43.) Plaintiffs assert that Defendant has received profits by virtue of this alleged infringement of Plaintiffs' registered trade dress. (Id. ¶ 45.)
A. Standard on Motion to Dismiss
Defendant now moves to dismiss Count IV of Plaintiffs' complaint pursuant to Federal Rule of Civil Procedure 12(b)(6). When considering a motion to dismiss a complaint for failure to state a claim upon which relief can be granted pursuant to Federal Rule of Civil Procedure 12(b)(6), a court must accept all well-pleaded allegations in the complaint as true and view them in the light most favorable to the plaintiff. Evancho v. Fisher , 423 F.3d 347, 350 (3d Cir. 2005). It is well settled that a pleading is sufficient if it contains "a short and plain statement of the claim showing that the pleader is entitled to relief." FED. R. CIV. P. 8(a)(2).
A district court, in weighing a motion to dismiss, asks "not whether a plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims[.]'" Bell Atl. Corp. v. Twombly , 550 U.S. 544, 563 n.8 (2007) (quoting Scheuer v. Rhoades , 416 U.S. 232, 236 (1974)); see also Ashcroft v. Iqbal , 556 U.S. 662, 129 S.Ct. 1937, 1953 (2009) ("Our decision in Twombly expounded the pleading standard for all civil actions[.]'") (citation omitted). The Third Circuit has instructed ...