United States District Court, S.D. Florida
ORDER DENYING DEFENDANT'S MOTION TO DISMISS
AMENDED COMPLAINT [DE 181
WILLIAM MATTHEWMAN UNITED STATES MAGISTRATE JUDGE
CAUSE is before the Court upon Defendant, Bengal
Star, Inc.'s ("Defendant") Motion to Dismiss
Amended Complaint ("Motion") [DE 18]. This matter
was referred to the undersigned by United States District
Judge Kenneth A. Marra for appropriate disposition after the
parties consented to magistrate jurisdiction for the motion
to dismiss and all related motions, including the entry of
final judgment with respect to the motion to dismiss, if
applicable. See DEs 32, 33. Plaintiff, Sream, Inc.
("Plaintiff), filed a Response [DE 21');">21], Defendant filed
a Reply [DE 26');">26], and Plaintiff filed a Notice of Filing
Supplemental Authority in Opposition to Defendant's
Motion to Dismiss Amended Complaint [DE 29]. The matter is
now ripe for review.
initially filed a Complaint on October 21');">21, 2016, alleging
trademark infringement, trademark counterfeiting, false
designation of origin/unfair competition, and violation of
Florida Deceptive and Unfair Trade Practices Act. [Compl. DE
1]. On April 6, 2017, Defendant filed a Motion and Memorandum
of Law to Dismiss Complaint for Lack of Standing and Failure
to State a Claim [DE 16]. Before the Court ever ruled on the
motion to dismiss, on April 26');">26, 2017, Plaintiff filed an
Amended Complaint [DE 17].
Amended Complaint alleges trademark infringement, in
violation of 15 U.S.C. § 1114 (Count 1), trademark
counterfeiting, in violation of 15 U.S.C. § 1116 (Count
2), false designation of origin/unfair competition, in
violation of 15 U.S.C. § 1125 (Count 3), and violation
of Florida Deceptive and Unfair Trade Practices Act (Count
4). [Amended Compl., DE 17]. According to Plaintiff, Mr.
Martin Birzle d/b/a RooR ("RooR") is an
award-winning designer and manufacturer of smoker's
products, and Plaintiff has been the exclusive licensee of
the RooR Mark in the United States since at least August
2013. Id. at ¶¶ 9, 12. Plaintiff has a
licensing agreement with RooR pursuant to which Plaintiff has
manufactured water pipes under the RooR Marks and has
advertised, marketed, and distributed water pipes, water pipe
parts, and other smoker's articles in association with
the RooR Marks. Id. at ¶ 12. RooR is the
exclusive owner of the federally registered and common law
trademarks. Id. at ¶ 14.
Amended Complaint alleges that, because authentic
RooR-branded products sell for higher prices, RooR products
are frequent targets of counterfeiters. [Amended Compl., DE
17 at ¶ 16]. The Amended Complaint further alleges that
Defendant is in the business of selling goods, including
water pipes, and that Defendant has sold goods affixed with
the RooR trademark. Id. at ¶ 20. According to
Plaintiff, Defendant has, without Plaintiffs consent, sold
goods with the "RooR" Marks using reproductions,
counterfeits, copies and/or colorable imitations.
Id. at ¶ 21');">21. Specifically, Defendant sold a
water pipe to Plaintiffs investigator that had a RooR brand
trademark affixed to it which was a counterfeit good.
Id. at ¶¶ 22-23.
10, 2017, Defendant filed its Motion to Dismiss [DE 18],
which is currently pending before the Court. The Court notes
that Defendant is not currently represented by counsel as its
counsel withdrew in October 2017. See DEs 35, 38,
MOTION, RESPONSE, REPLY, AND SUR-REPLY
Motion, Defendant first argues that Plaintiff has failed to
establish standing because Plaintiff failed to properly state
an interest in the trademarks at issue, and no license is
attached to the Amended Complaint. [DE 18, p. 3]. Defendant
asserts that the three marks listed in the Amended Complaint
"are not registered to RooR, but, rather to [Martin]
Birzle" and that Defendant needs to know if the
"license was from Birzle or RooR." Id. at
p. 4. Defendant further contends that Plaintiffs
"strained alternating use of Birzle and RooR in the
complaint makes it impossible to determine if standing is
proper." Id. Defendant also points out
contradictions between the Complaint and Amended Complaint
and between the Amended Complaint and certain public records.
Id. at p. 5');">p. 5.
second argument in the Motion is that Plaintiffs trademark
claims in Florida are barred by the "Unlawful Use
Doctrine" because the allegations in the Amended
Complaint are based on facts that predate Plaintiffs recent
registration of the RooR fictitious name in Florida. [DE 18,
pp. 5');">p. 5-6]. Defendant argues that amendment of the complaint
would be futile "because Plaintiff cannot show lawful
use in Florida commerce at any time prior to or even after
filing the Amended Complaint (or even the original
Complaint)." Id. at p. 8.
Response [DE 21');">21], Plaintiff asserts that it has attached to
the Response Plaintiffs exclusive licensing agreement for the
RooR trademarks at issue and that the agreement gives
Plaintiff the standing to maintain this action. Id.
at p. 4. The licensing agreement is between Martin Birzle and
maintains that the allegations in the Amended Complaint meet
the pleading requirements of Federal Rule of Civil Procedure
8(a)(2), so Plaintiff was not required to attach its
licensing agreement or the registrations for the RooR Marks
to the Amended Complaint. [DE 21');">21, p. 5');">p. 5]. Plaintiff
specifically argues that the allegations in the Amended
Complaint "sufficiently state that the Plaintiff has
been the exclusive licensee for the RooR trademarks since
2013, " and the allegations "articulate the
Plaintiffs interest in the trademarks as an ...