United States District Court, D. New Jersey
Joseph H. Rodriguez, United States District Judge.
matter comes before the Court on Defendant's Motion to
Dismiss Plaintiff's Complaint [Dkt. No. 10]. The Court
has considered the written submissions of the parties
pursuant to Fed.R.Civ.P. 78 (b). For the reasons that follow,
Defendant's motion is denied.
Factual and Procedural Background
Cambridge Pavers, Inc. (“Plaintiff”), and
Defendant, EP Henry Corporation (“Defendant”),
are competing manufacturers of paving stones in the United
States. [Dkt. No. 1 (Compl.) at ¶¶ 1, 13].
Plaintiff owns and uses the registered trademark,
“ArmorTec” in the sale of its goods. Id.
¶¶ 5, 7. Its “products as promoted under its
ArmorTec trademark are described as using a unique process. .
. in order to maintain the rich color of the paving stones .
. . and keep the surface smooth, yet skid resistant.”
Id. ¶ 9. Plaintiff's paving stones are also
promoted under the tagline “They'll Look Like New
Forever.” Id. ¶10. In addition, Plaintiff
owns a registered trademark for the tagline,
“They'll Look Like New Forever” Cambridge
Paving Stones with ArmorTec. Id. ¶11.
markets and sells paving stones with a protective coating
under the name ColorTech.” Id. ¶ 13.
According to Plaintiff, Defendant “recently launched a
new marketing campaign using the mark ColorTech in order to
directly and unfairly compete against Plaintiff's AmorTec
branded products.” Id. ¶ 17. Defendant
promotes its ColorTech paving stones as a line created
through a “unique process” that “extends
color fastness and durability” whose formula used in
the manufacturing process creates a protective coating
“resistant to staining, acid rain and UV rays.”
Id. ¶¶ 14, 15.
filed a Complaint in the present action against Defendant on
September 21, 2018, alleging that Defendant's trademark
is confusingly similar to Plaintiff's marks to deceive
costumers in the sale and marketing of its paving stones. See
Id. Specifically, Plaintiff claims violations of the
Lanham Act for trademark infringement (Count I), false
designation of origin, (Count II), and dilution (Count III);
common law unfair competition (Count IV); and violations of
the New Jersey Unfair Competition Act, N.J. Stat. Ann. §
56:4-1 (Count V), and New Jersey Trademark Act, N.J. Stat.
Ann. § 56:3-13.16 (Count VI). Id.
moved to dismiss all counts of Plaintiff's Complaint for
failure to state a claim on November 13, 2018, pursuant to
Fed. R. Civ. Pro. 12(b)(6). [Dckt. No. 10]. In support of its
motion, Defendant argues that Plaintiff's trademark is a
descriptive, weak mark, entitled to limited protection; and
ultimately contends that there is no likelihood of confusion
between the competing marks. [Dkt No. 10-1 (Def. Brf.)].
Plaintiff filed a brief in opposition to Defendant's
motion on December 3, 2018 [Dkt. No. 11 (Pl. Brf.)], to which
Defendant filed a reply on December 10, 2018. [Dkt No. 12].
Standard of Review
Rule of Civil Procedure 12(b)(6) allows a party to move for
dismissal of a claim based on “failure to state a claim
upon which relief can be granted.” Fed.R.Civ.P.
12(b)(6). A complaint should be dismissed pursuant to Rule
12(b)(6) if the alleged facts, taken as true, fail to state a
claim. Fed.R.Civ.P. 12(b)(6). When deciding a motion to
dismiss pursuant to Rule 12(b)(6), ordinarily only the
allegations in the complaint, matters of public record,
orders, and exhibits attached to the complaint, are taken
into consideration. See Chester County Intermediate Unit
v. Pa. Blue Shield, 896 F.2d 808, 812 (3d Cir. 1990). It
is not necessary for the plaintiff to plead evidence.
Bogosian v. Gulf Oil Corp., 561 F.2d 434, 446 (3d
Cir. 1977). The question before the Court is not whether the
plaintiff will ultimately prevail. Watson v. Abington
Twp., 478 F.3d 144, 150 (2007). Instead, the Court
simply asks whether the plaintiff has articulated
“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).
claim has facial plausibility when the 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) (citing Twombly, 550 U.S. at 556).
“Where there are well-pleaded factual allegations, a
court should assume their veracity and then determine whether
they plausibly give rise to an entitlement to relief.”
Iqbal, 556 U.S. at 679.
motion to dismiss should be granted unless the
plaintiff's factual allegations are “enough to
raise a right to relief above the speculative level on the
assumption that all of the complaint's allegations are
true (even if doubtful in fact).” Twombly, 550
U.S. at 556 (internal citations omitted). “[W]here the
well-pleaded facts do not permit the court to infer more than
the mere possibility of misconduct, the complaint has
alleged-but it has not ‘shown'-‘that the
pleader is entitled to relief.'” Iqbal,
556 U.S. at 679 (quoting Fed.R.Civ.P. 8(a)(2)).
Trademark Infringement and False Designation of Origin under
the Lanham Act
enacted the Lanham Act in 1946 in order to provide national
protection for trademarks used in interstate and foreign
commerce.” Park ‘N Fly, Inc. v. Dollar Park
and Fly, Inc., 469 U.S. 189, 193 (1985). The Third
Circuit has made clear that an “identical”
standard is used to measure federal unfair competition under
Section 43 of the Lanham Act, 15 U.S.C. § 1125(a) and
federal trademark infringement under Section 32, 15 U.S.C.