United States District Court, D. New Jersey
GI SPORTZ, INC. and GI SPORTZ DIRECT, LLC, Plaintiffs,
VALKEN, INC., Defendant.
M. HANAMIRIAN HANAMIRIAN LAW FIRM PC On behalf of Plaintiffs
ANTHONY J. DIMARINO, III EMMETT STEPHAN COLLAZO A.J.
DIMARINO, III, PC On behalf of Defendant
L. HILLMAN, U.S.D.J.
matter concerns claims for trade dress violations regarding
the patterns on paintballs. Presently before the Court is the
motion of Plaintiffs to strike all of Defendant's
affirmative defenses. For the reasons expressed below,
Plaintiffs' motion will be denied.
G.I. Sportz, Inc. and GI Sportz Direct, LLC (hereinafter
“GI”), claim that GI is the world's leading
provider of equipment and supplies to the paintball industry.
GI owns a federal trademark registration, U.S. Reg. No. 3,
049, 101, which covers the trade dress of paintballs with
“contrasting colors blended randomly together to form
the appearance of a fanciful design on the surface of a
paintball, ” called the “Marballizer” trade
dress. The Marballizer trade dress has been in existence for
over twenty years, and according to GI, in addition to being
inherently distinctive, it has achieved a significant
secondary meaning among dealers and consumers of paintballs,
including an indication of high quality paintballs.
instant action, GI claims that Defendant, Valken, Inc., has
infringed on GI's trade dress by manufacturing,
marketing, and selling paintballs with the Marballizer
design. Previously in September 2012, GI, formerly Kee Action
Sports, sued Valken for the same conduct, but the parties
settled their dispute in March 2014. See KEE ACTION
SPORTS LLC et al. v. VALKEN INC., Civil Action
1:12-cv-06069-NLH-KMW. GI claims that Valken has resumed its
infringement, and has breached their settlement agreement.
filed this action on October 13, 2016. On November 4, 4,
2016, Valken filed its answer, affirmative defenses, and
counterclaims. On November 23, 2016, GI simultaneously filed
a motion for preliminary injunction and a motion to strike
Valken's affirmative defenses. The Court heard GI's
preliminary injunction motion on December 21, 2016, and
granted GI's motion, ordering that Valken was enjoined
throughout the United States from “making, having made,
importing, advertising, distributing, offering and selling
paintballs with a shell having the appearance of a marble,
specifically, a surface design having contrasting colors
blended randomly together.” (See Docket No. 44, 49,
the case has proceeded through discovery and in March 21,
2017, the matter was referred to mediation. GI's motion
to strike Valken's affirmative defenses remains pending.
Valken has opposed GI's motion.
Subject matter jurisdiction
trade dress infringement claims arise under the Lanham Act,
15 U.S.C. § 1051 et seq., and GI's breach of
contract, common law infringement, and unfair competition
claims arise under New Jersey law. This Court has
jurisdiction over GI's federal claims under 28 U.S.C.
§ 1331, and supplemental jurisdiction over GI's
state law claims under 28 U.S.C. § 1367.
Standard for Motion to Strike Affirmative Defenses
Newborn Bros. Co., Inc. v. Albion Engineering Co.,
299 F.R.D. 90, 93 (D.N.J. 2014), this Court set forth the
standard for assessing a motion to strike a defendant's
Rule of Civil Procedure 12(f) provides in pertinent part that
“[t]he court may strike from a pleading an insufficient
defense or any redundant, immaterial, impertinent, or
scandalous matter.” Fed.R.Civ.P. 12(f). The Rule
permits the Court to act “on its own” or
“on motion made by a party either before responding to
the pleading or, if a response is not allowed, within 21 days
after being served with the pleading.” Fed.R.Civ.P.
to strike ‘serve a useful purpose by eliminating
insufficient defenses and saving the time and expense which
would otherwise be spent in litigating issues which would not
affect the outcome of the case, '” United
States v. Kramer, 757 F.Supp. 397, 410 (D.N.J. 1991)
(citation omitted), but the Third Circuit has instructed that
a district court “should not grant a motion to strike a
defense unless the insufficiency of the defense is clearly
apparent, ” Cipollone v. Liggett Group, Inc.,
789 F.2d 181, 188 (3d Cir. 1986). In evaluating the adequacy
of a defense, courts in this District have explained that
“[a]n affirmative defense is insufficient if ‘it
is not recognized as a defense to the cause of
action.'” F.T.C. v. Hope Now Modifications,
LLC, No. 09-1204, 2011 WL 883202, *2 (D.N.J. Mar. 10,
2011) (citing Tonka Corp. v. Rose Art Indus., Inc.,
836 F.Supp. 200, 217 (D.N.J. 1993)); see also
Signature Bank v. Check-X-Change, LLC, No.
12-2802, 2013 WL 3286154, at *2 (D.N.J. June 27, 2013).
have also observed that “‘an affirmative defense
can be stricken [on the basis of the pleadings alone] only if
the defense asserted could not possibly prevent recovery
under any pleaded or inferable set of facts.'”
Hope Now, 2011 WL 883202, at *1 (citing
Tonka, 836 F.Supp. at 218). Importantly, “a
motion to strike an affirmative defense will not be granted
where its sufficiency depends on disputed issues of
fact.” Signature Bank, 2013 WL 3286154, at *2
(quoting Total Containment, Inc. v. Environ Products,
Inc., No. 91-7911, 1992 WL 208981, at *1 (E.D. Pa. Aug.
19, 1992)); see also In re Merck & Co., Inc. Vytorin
ERISA Litig., No. 08-cv-1974, 2010 WL 2557564, at *2
(D.N.J. June 23, 2010) (citing Glenside West Corp. v.
Exxon Co., 761 F.Supp. 1100, 1115 (D.N.J. 1991)).
Court must also bear in mind that, generally, “motions
to strike under Rule 12(f) are highly disfavored.”
Hope Now, 2011 WL 883202, at *1 (citing
Garlanger v. Verbeke, 223 F.Supp.2d 596, 609 (D.N.J.
2002) (“Because of the drastic nature of the remedy,
... motions to strike are usually ‘viewed with
disfavor' and will generally ‘be denied unless the
allegations have no possible relation to the controversy and
may cause prejudice to one of the parties, or if the
allegations confuse the issues.'”) (quoting
Tonka, 836 F.Supp. at 218). Motions to strike are
viewed unfavorably because they are frequently brought by
“the movant simply as a dilatory tactic.”
Hope Now, 2011 WL 883202, at *1 (citing Waste
Mgmt. Holdings v. Gilmore, 252 F.3d 316, 347 (4th Cir.
2001)); see also 5C Charles Alan Wright & Arthur
R. Miller, Federal Practice and Procedure, §
1381 (3d ed. 2004) (recognizing that “[m]otions to
strike a defense as insufficient are not favored by the
federal courts because of their somewhat dilatory and often
where the challenged material is redundant, immaterial,
impertinent, or scandalous, a motion to strike should not be
granted unless the presence of the surplusage will prejudice
the adverse party.'” Hope Now, 2011 WL
883202, at *1 (citing Symbol Techs., Inc. v. Aruba
Networks, Inc., 609 F.Supp.2d 353, 359 (D. Del. 2009));
see also 5C Charles Alan Wright & Arthur R.
Miller, Federal Practice and Procedure, § 1381
(3d ed. 2004) (explaining that “even when technically
appropriate and well-founded, Rule 12(f) motions often are
not granted in the absence of a showing of prejudice to the
moving party”). The Court's determination on a
“motion to strike under Rule 12(f) is
discretionary.” Hope Now, 2011 WL 883202, at
*1; see also Signature Bank, 2013 WL 3286154, at *2
(observing that “‘a court possesses considerable
discretion in disposing of a motion to strike under Rule
12(f)'”) (quoting Tonka, 836 F.Supp. at
has asserted nineteen affirmative defenses:
FIRST AFFIRMATIVE DEFENSE
(Failure to state a claim)
The complaint fails to state a claim upon which relief can be
SECOND AFFIRMATIVE DEFENSE
(Trade Dress Invalidity)
The Trademark/trade dress listed as Registration No. 3, 049,
101 on the principal register maintained by the United State
Patent and Trademark ...