1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA
9 Carve Design LLC, No. CV-25-03521-PHX-DWL
10 Plaintiff, ORDER
11 v.
12 Slingshop LLC,
13 Defendant. 14 15 Carve Design LLC (“Plaintiff”) holds trademarks related to its key-shaped 16 multifunctional tool “Geekey.” In this action, Plaintiff asserts various claims against 17 SlingShop LLC (“Defendant”) under the Trademark Act of 1946 (the “Lanham Act”) and 18 related state-law claims. Now pending before the Court is Defendant’s motion to dismiss. 19 (Doc. 11.) For the reasons that follow, the motion is granted in part and denied in part, and 20 Plaintiff is granted leave to amend. 21 BACKGROUND 22 I. Factual Allegations 23 The following facts, presumed true, are derived from the complaint. (Doc. 1.) 24 A. The Registered Trademarks 25 Plaintiff “is the creator and owner of the Geekey® multi-tool, a pocket-sized, key- 26 shaped multi-function hand tool that integrates numerous practical tools into a single 27 device that can be conveniently caried on a key chain.” (Id. ¶ 10.) “Since at least as early 28 as November 20, 2017, Plaintiff has continuously used the Geekey® mark and distinctive 1 three-dimensional product configuration in commerce in connection with its multi-tool 2 products.” (Id. ¶ 11.) 3 Plaintiff “owns U.S. Trademark Registration No. 7,097,395, issued July 4, 2023, for 4 the three-dimensional configuration comprising a key shape with the ‘GEEKEY’ mark in 5 a stylized font on the key bow, with a hexagon design surrounding the letter ‘G’ and the 6 first letter ‘E’, and measurement indicators on the key blade. This registration specifically 7 includes the key-shaped configuration of the Geekey® multi-tool with certain features 8 indicated as functional under Section 2(f) of the Trademark Act.” (Id. ¶ 12.)1 9 Plaintiff “also owns U.S. Trademark Registration No. 7,238,893, issued December 10 12, 2023, for the three-dimensional configuration comprising a multi-function hand tool 11 shaped like a key, with a rounded and elongated hexagon-shaped top and a narrow bottom 12 ending in a tip, along with various distinctive design elements indicated in the registration.” 13 (Id. ¶ 13.)2 14 B. The Unregistered Trade Dress 15 In addition to Plaintiff’s registered marks, the complaint alleges that “[t]he 16 distinctive appearance and overall design of the Geekey® multi-tool (the ‘Geekey Trade 17 Dress’) is unique, instantly recognizable, and serves to identify Plaintiff as the source of 18 the product.” (Id. ¶ 16.) Specifically, the complaint alleges that “[t]he Geekey Trade Dress 19 consists of the unique combination and arrangement” of the following seven non- 20 functional, distinctive elements: 21 a. A key-shaped, pocket-sized form factor with a rounded and elongated hexagon-shaped top (key bow) and a narrow bottom ending in a tip; 22 b. Construction from glassed bead blasted stainless steel with a 23 distinctive finish; 24 c. A specific arrangement of multiple tools within the physical 25 constraints of the key shape, including the placement of a bottle
26 1 This order will refer to registered trademarks by the last three digits of their trademark registration number—e.g., the ’395 Trademark. 27 2 The complaint further alleges that Plaintiff owns “U.S. Trademark Registration No. 28 5,661,148” (Doc. 1 ¶ 14), but neither party further discusses that mark in their briefing (see generally Docs. 11, 13-1, 17). 1 opener, scoring tip, wrench heads, screwdriver, ruler, and serrated edge; 2 d. A diamond shaped hole with one rounded inner corner at the head for 3 keychain use; 4 e. The specific configuration of tool elements and design features in a 5 compact, flat unit; 6 f. Distinctive packaging with black cards and minimalist typography; and 7 g. The overall visual impression created by the combination of these 8 elements. 9 (Id. ¶ 17.) The complaint further alleges that the listed elements “of the Geekey Trade 10 Dress are not essential to the use or purpose of the product and do not affect the cost or 11 quality of the product.” (Id. ¶ 18.) 12 “Since its introduction, the Geekey® multi-tool has achieved significant commercial 13 success and recognition among consumers. Plaintiff has invested substantial resources in 14 developing, promoting, and marketing the Geekey® multi-tool throughout the United 15 States.” (Id. ¶ 19.) 16 “[A]s a result of Plaintiff’s extensive sales and advertising of the Geekey® multi- 17 tool, in the minds of consumers, the distinctive trade dress of the product has come to 18 symbolize the source and quality of the Carve Design brand.” (Id. ¶ 20.) The complaint 19 alleges that the Geekey Trade Dress “has acquired secondary meaning” by virtue of the 20 following: “a. Consumer Perception”; “b. Substantial Advertising”; “c. Substantial Use of 21 the Trade Dress”; “d. Exclusivity”; “e. Copying”; and “f. Actual Confusion.” (Id.) 22 C. The GiddyUp Relationship 23 On or around September 24, 2020, Plaintiff entered into a fulfillment agreement 24 “with GiddyUp Fulfillment LLC (‘GiddyUp’) to provide advertising services, including 25 developing a website with a unique brand to obtain customers through a marketing funnel.” 26 (Id. ¶ 22.) “GiddyUp created Plaintiff’s unique brand based on an intake questionnaire that 27 asked about 1) internet presence including links that feature the Geekey® product; 2) Top 28 benefits and selling selling [sic] features 3) Customer’s frequently asked questions and 4) 1 || the founder’s story.” (Ud. □ 23.) 2 D. Defendant’s Product 3 The complaint alleges that Defendant “has knowingly and intentionally copied 4|| Plaintiff's registered trademarks, trade dress, product photographs, packaging call-outs 5 || (feature descriptions) and advertising by manufacturing and selling a ‘Keyzmo’ product || that creates a likelihood of confusion among consumers as to the origin of the goods, and || has caused actual confusion in the marketplace (‘the Counterfeit Goods’).” Ud. ¥ 3.) 8 Specifically, in 2021, Plaintiff “discovered that Defendant was offering for sale 9|| online the Counterfeit Goods that, without authorization, contains the Geekey Trade Dress.” (Ud. 425.) The complaint alleges that “[t]he Geekey Trade Dress was copied in || three parts 1) the Geekey® product was copied exactly; 2) the Keyzmo website made by 12 || GiddyUp copied features from the Geekey website to confuse the public into thinking that 13 |} Keyzmo and Geekey products are the same based on Plaintiffs intake questionnaire; [and] 3) the product packaging has identical color, similar wording, and similar product 15 || placement further confusing the public.” (Ud. 26.) 16 The complaint attaches the following images that show “the items without product || packaging”: 18 19
¥ 24 || Ud. 928.) The complaint alleges that a “[s]ide-by-side comparison of the products” reveals 26 || the following: 27 a. Both products feature a central hexagonal head (key bow) that is 38 generally the same size and shape; b. Both products include a blade portion extending from the hexagonal
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I head with identical proportions; 2 C. Both products have a diamond shaped hole with one rounded inner 3 comer for keychain attachment positioned in the identical location on the hexagonal head; 4 d. Both products feature measurement markings along the blade in an 5 identical arrangement; 6 e. Both products position a bottle opener feature in the identical location on the key bow; f. Both products have a screwdriver tip at the end of the blade positioned 8 identically; [ ] 9 g. Both products are constructed from glassed bead blasted stainless 10 steel with an identical finish and overall visual appearance; [and] il h. [Both products are] the exact same size in all outer dimensional measurements for length, width and height. 12 (Id. | 29.) 13 The complaint also attaches the following image of the “product packaging”: 14 15 16 XS □ 3 Pe ear)
19 :
22 □ (Id. § 30.) The complaint alleges that the Geekey product has “a black background with 23 text explaining ‘Wire Stripper’ ‘Protractor’ ‘File’ ‘Scoring Tip / Can Opener’ ‘Serrated 24 edge’ ‘Wire Bender’” and that “[t]he Counterfeit Goods have copied this identically.” (/d.) 25 E. Defendant’s Advertising 26 On or about October 22, 2022, Defendant “posted an advertisement with a link on 27 ESPN.com encouraging internet users to purchase the ‘Keyzmo’ product, but the image 28
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1 shown is actually one of Plaintiff’s product.” (Id. ¶ 33.)3 Additionally, the complaint 2 alleges that “[e]ven GiddyUp cannot tell the difference between the products, putting a 3 photograph of Plaintiff’s founder with a Geekey® product with branding blurred out in 4 Defendant’s advertising copy.” (Id. ¶ 26.) The complaint further alleges that “the 5 Counterfeit Goods could only have been acquired by Defendant actively purchasing a 6 Geekey® product and directly copying the Geekey Trade Dress from Plaintiff’s products.” 7 (Id. ¶ 27.) 8 Additionally, “Defendant has used GiddyUp to . . . substantially copy significant 9 portions of Plaintiff’s website to further confuse customers. With identical products 10 offered at identical prices (to the penny) . . . .” (Id. ¶ 36.) 11 F. Consumer Confusion 12 The complaint alleges the following “instances of actual confusion between the 13 Geekey® multi-tool and Defendant’s Counterfeit Goods”: 14 On December 20, 2021, Customer A contacted Plaintiff regarding an order for Defendant’s Counterfeit Goods with order confirmation number 15 “GU12802-KEYZMO,” seeking information about shipping status. The 16 customer mistakenly believed she had purchased the product from Plaintiff when in fact she had purchased from Defendant; 17 On November 14, 2022, Plaintiff received correspondence from Customer B 18 noting that consumers were confused by blog posts and advertisements 19 featuring Plaintiff’s Geekey® product images but linking to purchase pages for Defendant’s Counterfeit Goods; 20 On September 21, 2023, a customer service request from Company C was 21 erroneously sent to Plaintiff regarding pricing and promotional offers for the Counterfeit Goods, demonstrating that third-party vendors were also 22 confused about the source of the products; 23 On December 1, 2021, a potential Customer D . . . contacted Plaintiff after 24 noticing the striking similarity between the Geekey® product and the Counterfeit Goods, specifically asking which was the original product. 25 26 (Id. ¶¶ 40-44.) 27
28 3 Defendant disputes this allegation as inconsistent with other portions of the complaint. (Doc. 11 at 4, 17-18.) The Court addresses this dispute below. 1 Additionally, “Plaintiff has received multiple inquiries from consumers who viewed 2 advertisements for the Counterfeit Goods but then contacted Plaintiff believing they were 3 the source of the product they had seen advertised. Plaintiff has also received physical 4 returns of the Keyzmo product as consumers believed they were returning to Plaintiff as 5 the seller.” (Id. ¶ 45.) 6 G. Notice 7 On or about February 11, 2024, Plaintiff “placed a phone call to Defendant, 8 notifying Defendant of Plaintiff’s intellectual property rights and demanding that 9 Defendant cease its infringing activities.” (Id. ¶ 34.) The complaint alleges that “[d]espite 10 having knowledge of Plaintiff’s rights, Defendant has continued to market and sell the 11 infringing Keyzmo product.” (Id. ¶ 35.) 12 II. Procedural History 13 On September 25, 2025, Plaintiff filed the complaint, which asserts five causes of 14 action. (Doc. 1.) Count One is a claim for “Federal Trademark/Trade Dress Infringement 15 Under 15 U.S.C. § 1114.” (Id. at 13.) Count Two is a claim for “Federal Trade Dress 16 Infringement and Unfair Competition Under 15 U.S.C. § 1125(a).” (Id. at 14.) Count 17 Three is a claim for “Trademark Counterfeiting Under 15 U.S.C. § 1114(1)(a).” (Id. at 15.) 18 Count Four is a claim for “Common Law Trademark and Trade Dress Infringement.” (Id. 19 at 16.) Count Five is a claim for “Common Law Unfair Competition.” (Id. at 1, 16.)4 20 On November 11, 2025, Defendant filed the pending motion to dismiss. (Doc. 11.) 21 That motion is now fully briefed. (Docs. 13-1, 17.) Neither side requested oral argument. 22 … 23 … 24 … 25 … 26 4 The text under the heading “Fifth Claim For Relief” states that Count Five is a claim 27 for “Common Law Trademark and Trade Dress Infringement” (Doc. 1 at 16), which is the same verbiage used to described Count Four. However, based on the cover page of the 28 complaint and the allegations within Count Five, it is clear that Count Five was intended to be a common law claim for unfair competition. 1 DISCUSSION 2 I. Legal Standard 3 Under Rule 12(b)(6), “to survive a motion to dismiss, a party must allege sufficient 4 factual matter, accepted as true, to state a claim to relief that is plausible on its face.” In re 5 Fitness Holdings Int’l, Inc., 714 F.3d 1141, 1144 (9th Cir. 2013) (internal quotation marks 6 omitted). “A claim has facial plausibility when the plaintiff pleads factual content that 7 allows the court to draw the reasonable inference that the defendant is liable for the 8 misconduct alleged.” Id. (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)). “[A]ll 9 well-pleaded allegations of material fact in the complaint are accepted as true and are 10 construed in the light most favorable to the non-moving party.” Id. at 1144-45 (citation 11 omitted). However, the court need not accept legal conclusions couched as factual 12 allegations. Iqbal, 556 U.S. at 678-80. Moreover, “[t]hreadbare recitals of the elements of 13 a cause of action, supported by mere conclusory statements, do not suffice.” Id. at 678. 14 The court also may dismiss due to “a lack of a cognizable legal theory.” Mollett v. Netflix, 15 Inc., 795 F.3d 1062, 1065 (9th Cir. 2015) (citation omitted). 16 II. Judicial Notice 17 Defendant seeks judicial notice of two exhibits attached to its motion. (Doc. 11 at 18 3 n.2.) Defendant describes Exhibit 1 as the ’395 Trademark Prosecution History from the 19 United States Patent and Trademark Office (“PTO”) (“the ’395 Prosecution History”) and 20 Exhibit 2 as the ’893 Trademark Prosecution History from the PTO (“the ’893 Prosecution 21 History”). (Doc. 11-1 at 1.) Defendant also seeks judicial notice of “public online 22 postings” available on the “Geekey.com” website. (Doc. 11 at 10 n.5.) In its response, 23 Plaintiff does not object to either request or dispute the authenticity of Defendant’s 24 exhibits. (See generally Doc. 13-1.) 25 “When ruling on a Rule 12(b)(6) motion to dismiss, if a district court considers 26 evidence outside the pleadings, it must normally convert the 12(b)(6) motion into a Rule 27 56 motion for summary judgment, and it must give the nonmoving party an opportunity to 28 respond.” United States v. Ritchie, 342 F.3d 903, 907 (9th Cir. 2003). However, a court 1 may consider “certain materials—documents attached to the complaint, documents 2 incorporated by reference in the complaint, or matters of judicial notice—without 3 converting the motion to dismiss into a motion for summary judgment.” Id. at 908. 4 A court may take judicial notice of “a fact that is not subject to reasonable dispute 5 because it . . . can be accurately and readily determined from sources whose accuracy 6 cannot reasonably be questioned.” Fed. R. Evid. 201(b). “This includes public records 7 like court filings and PTO records.” VetStem, Inc. v. Regen Labs LLC, 2024 WL 4003904, 8 *2 (C.D. Cal. 2024). See also Lexos Media IP, LLC v. eBay Inc., 722 F. Supp. 3d 1042, 9 1049 (N.D. Cal. 2024) (“Courts may . . . take judicial notice of documents issued by the 10 PTO . . . .”). Both the ’395 Prosecution History and the ’893 Prosecution history are public 11 records and Plaintiff does not dispute the authenticity or accuracy of these documents. 12 Accordingly, the Court grants Defendant’s request as to those two exhibits attached to its 13 motion,5 with the clarification that it may not take judicial notice of any disputed facts 14 contained within those exhibits. See, e.g., Khoja v. Orexigen Therapeutics, Inc., 899 F.3d 15 988, 999 (9th Cir. 2018); Lee v. City of Los Angeles, 250 F.3d 668, 688-90 (9th Cir. 2001). 16 As for the online postings available on the Geekey.com website, those postings are 17 irrelevant to the motion-to-dismiss analysis (for reasons discussed below) so the Court 18 declines to take judicial notice of them. Further, to the extent Defendant is seeking judicial 19 notice of miscellaneous screenshots of the Geekey Amazon page (Doc. 11 at 9-11), even 20 assuming those miscellaneous screenshots are accurate and reliable, Estate of Fuller v. 21 Maxfield & Oberton Holdings, LLC, 906 F. Supp. 2d 997, 1004 (N.D. Cal. 2012) (holding 22 that it is inappropriate for a court to take judicial notice of facts on a webpage whose source 23 and reliability are unknown), they are also irrelevant to the motion-to-dismiss analysis. 24 … 25
26 5 Defendant’s reply brief also attaches, as exhibits, what purport to be two PTO registration documents. (Doc. 17-1 at 1.) Defendant, however, does not request judicial 27 notice of them. (See generally Doc. 17.) Even if Defendant had made such a request, a “request for the Court to take judicial notice of the [exhibits], presented for the first time 28 in its reply brief, is inappropriate.” Hsu v. Puma Biotechnology, Inc., 213 F. Supp. 3d 1275, 1284 (C.D. Cal. 2016). 1 III. Federal Trademark Infringement (Count One) 2 Count One is a claim for federal trademark infringement under 15 U.S.C. § 1114. 3 (Doc. 1 at 13.)6 Specifically, the complaint asserts infringement of the ’395 Trademark 4 and the ’893 Trademark. (Id. ¶¶ 47-49.) 5 A. The Parties’ Arguments 6 Defendant argues that “[t]rademarks and trade dress receive similar protections 7 under the Lanham Act” and that “under no circumstances[] may trademarks or trade dress 8 protect what is functional.” (Doc. 11 at 4.) Defendant contends that although “[Plaintiff] 9 first claims trademark rights in the ‘three-dimensional configuration of the Geekey® multi- 10 tool,’” Plaintiff has “disclaimed nearly all of the ‘three-dimensional configuration’ of the 11 tool” as functional. (Id. at 7.) Defendant cites the ’395 Prosecution History and the ’893 12 Prosecution History to support its argument that “in obtaining those registrations, 13 [Plaintiff] disclaimed nearly everything as functional” and that “what is left of [Plaintiff]’s 14 claimed marks” is “the incomplete outer shape of a key-shaped multi-tool.” (Id. at 1-2.) 15 And Defendant argues that “even what is left of [Plaintiff]’s trademark claim in the overall 16 appearance of a multi-tool is inescapably functional.” (Id. at 7-8.) 17 In response, Plaintiff argues that “[f]or registered trademark claims, Plaintiff must 18 plead only two elements: (1) ownership of a valid registration, and (2) likelihood of 19 confusion.” (Doc. 13-1 at 7.) Plaintiff also argues that “[n]onfunctionality is not an 20 element that the plaintiff must plead or prove for registered trade dress—it is part of 21 defendant’s burden to rebut the presumption of validity.” (Id.) As for ownership of a valid 22 registration, Plaintiff argues that “[t]he [c]omplaint adequately alleges ownership of 23 registered marks which are ‘prima facie evidence of the validity of the registered mark and 24 of the registration of the mark.’” (Id. at 8, citation omitted.) As for likelihood of confusion, 25 Plaintiff argues that “[t]he [c]omplaint adequately alleges likelihood of confusion with 26
27 6 Although Count One is titled “Federal Trademark/Trade Dress Infringement” (Doc. 1 at 13), Plaintiff’s response brief makes clear that Count One “is based on its registered 28 marks” and Count Two is based on “unregistered trade dress infringement.” (Doc. 13-1 at 9.) 1 numerous examples.” (Id.) Plaintiff adds that “‘[a] plaintiff is not required to prove the 2 likelihood of confusion at the pleading stage.’” (Id., citation omitted.) Plaintiff concludes: 3 “Because [Count One] is based on its registered marks, Plaintiff need not plead 4 nonfunctionality—the registration establishes the presumption, and the burden shifts to 5 Defendant to prove functionality as a defense.” (Id. at 9.) 6 In reply, Defendant argues that “[Plaintiff] fails to plausibly allege infringement of 7 the [’395 Trademark] because it fails to allege [Defendant] used the GEEKEY mark.” 8 (Doc. 17 at 2.) Specifically, Defendant argues that “the copying of functional elements of 9 a competitor’s design is not a violation of the Lanham Act” and that “[b]ecause the [’395 10 Trademark] prominently features the GEEKEY logo, any allegation of infringement or 11 counterfeiting that does not include the logo is fundamentally deficient.” (Id. at 3.) 12 Defendant further argues that “[Plaintiff] also fails to allege confusion based on its actual 13 ’395 Registration.” (Id.) Defendant next argues that “[Plaintiff] ignores what the [PTO] 14 actually registered: the GEEKEY logo ‘shown in a stylized font on the key.’ The [’395 15 Trademark] disclaims everything else.’” (Id. at 3-4, citation omitted.) Defendant further 16 argues that the complaint does not contain “any allegation that consumers are confused by 17 anything other than the functional elements disclaimed by [Plaintiff]” and that Plaintiff 18 “cannot use any of these functional elements to support its infringement claim.” (Id. at 4.) 19 Similarly, Defendant argues that “[Plaintiff] fails to plausibly allege infringement of the 20 [’893 Trademark] because it fails to allege a likelihood of confusion based on the non- 21 functional elements on the back of the Geekey product.” (Id.) Defendant contends that 22 “nearly everything in the [’893 Trademark] has already been disclaimed as functional” and 23 that “[w]hat remains [as non-functional] is a key-shaped object.” (Id. at 5.) Defendant 24 also argues that “[e]xcept for a handful of conclusory statements, [Plaintiff] does not allege 25 that consumers are confused by the partial outline shape of the [’893 Trademark].” (Id.) 26 Finally, Defendant argues that “[Plaintiff] fails to compare the [’893 Trademark] to 27 [Defendant]’s product or to allege confusion based on the registration. Thus, [Plaintiff] 28 fails to plausibly allege infringement of the [’893 Trademark].” (Id. at 5-6.) l B. Analysis 2 “[A] claim for trademark infringement requires only two elements: (1) ownership 3|| of a trademark, and (2) that the plaintiff show a likelihood of confusion through the 4|| balancing of eight factors.” Wells Fargo & Co. v. ABD Ins. & Fin. Servs., Inc., 758 F.3d || 1069, 1072 (9th Cir. 2014). 6 Beginning with the first element, “federal registration provides “prima facie || evidence’ of the mark’s validity and entitles the plaintiff to a ‘strong presumption’ that the 8 || mark is a protectable mark.” Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108, 1113 (9th Cir. 2010). It is undisputed that Plaintiff holds federally registered marks for the °395 Trademark and the ’893 Trademark. (Doc. 17 at 2-3.) Nevertheless, in relation to the 11 |} °395 Trademark, Defendant emphasizes that Plaintiff disclaimed nearly all of the features of the Geekey tool as functional and argues that Plaintiff cannot use those functional 13 |} elements to support its infringement claim. (/d. at 3-4.) 14 Defendant is correct that “‘a disclaimer shows that the applicant enjoys no exclusive 15 | rights to the disclaimed portion of the mark .. . .” Metamorfoza D.O.O. v. Big Funny, LLC, 2021 WL 4572039, *4 (C.D. Cal. 2021) (cleaned up). Here, the disclaimed functional || features of the °395 Trademark have been indicated by Plaintiff using dotted lines: 18 _
25 || (Doc. 11-1 at 17, 19 [°395 Prosecution History].) Thus, were the complaint to “allege a 27|| claim for trademark infringement ... based solely on the use of the disclaimed 2g || component[s] of’ the *395 Trademark, it would fail to state a claim for trademark
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1 infringement under the Lanham Act. Metamorfoza D.O.O., 2021 WL 4572039 at *5. See 2 also Off. Airline Guides, Inc. v. Goss, 856 F.2d 85, 87 (9th Cir. 1988) (“OAG alleges that 3 Ashbyweb has used only the disclaimed words, not the mark as a whole. The district court 4 therefore did not err in finding that OAG had not demonstrated a serious question 5 concerning the alleged infringement of its registered mark.”). 6 But the complaint does not allege infringement based solely on Defendant’s use of 7 the disclaimed components of the ’395 Trademark. Rather, the complaint alleges that 8 Defendant’s Keyzmo product infringed protectable, non-disclaimed portions of the ’395 9 Trademark—specifically, “a central hexagonal head (key bow) that is generally the same 10 size and shape.” (Doc. 1 ¶ 29(a).) Because the complaint alleges that Defendant’s product 11 infringes at least some valid protectable portions of the ’395 Trademark, Plaintiff has done 12 enough at this stage of the case to plausibly allege the first element of trademark 13 infringement under the Lanham Act. Cf. Balance Studio, Inc. v. Cybernet Ent., LLC, 2016 14 WL 1559745, *4-5 (N.D. Cal. 2016) (holding that “Plaintiff . . . adequately pleaded its 15 cause of action for trademark infringement” where “Plaintiff [did] not allege that 16 Defendant . . . committed trademark infringement based solely on Defendant’s use of a 17 disclaimed component of Plaintiff’s mark”). See also Brookfield Commc’ns, Inc. v. W. 18 Coast Ent. Corp., 174 F.3d 1036, 1046 (9th Cir. 1999) (“To establish a trademark 19 infringement claim under section 32 of the Lanham Act . . . Brookfield must establish that 20 West Coast is using a mark confusingly similar to a valid, protectable trademark of 21 Brookfield’s.”). 22 Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556 (Fed. Cir. 1994), does not 23 compel a different conclusion. Defendant cites Conopco as “discussing the importance of 24 party logos in evaluating trade dress infringement.” (Doc. 17 at 3.) But Conopco addressed 25 the importance of party logos in the likelihood-of-confusion context. That inquiry is 26 distinct from the issue being addressed here—whether the complaint sufficiently alleges 27 ownership of a valid mark. At any rate, Conopco does not, as Defendant appears to suggest, 28 hold that a party may avoid liability for infringement under the Lanham Act by merely 1 omitting the protected mark’s logo. Cf. Nautilus, Inc. v. Hempel, 2013 WL 12133877, *2 2 (C.D. Cal. 2013) (finding that although the complaint did not “clearly allege an 3 infringement of the Nautilus [word] mark,” “[i]nfringement of the Dumbbell Configuration 4 mark is established separately by reference to the photographic representations of 5 Defendant’s products, which indicate that the shape of the dumbbells matches that of the 6 image mark”). 7 Turning to likelihood of confusion, the “inquiry generally considers whether a 8 reasonably prudent consumer in the marketplace is likely to be confused as to the origin or 9 source of the goods or services bearing one of the marks or names at issue in the case.” 10 Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190, 1209 (9th Cir. 2012). “The eight- 11 factor Sleekcraft test is used in the Ninth Circuit to analyze the likelihood of confusion 12 question in all trademark infringement cases, both competitive and non-competitive. The 13 eight factors are as follows: (1) strength of the mark; (2) proximity of the goods; (3) 14 similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) 15 type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's 16 intent in selecting the mark; (8) likelihood of expansion of the product lines.” Dr. Seuss 17 Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1404 (9th Cir. 1997) (citation 18 omitted). 19 Neither party’s briefing expressly addresses the Sleekcraft factors. Nevertheless, 20 “[t]he Court notes that it has found no authority . . . holding that a plaintiff bringing a 21 trademark or trade dress claim must explicitly plead facts going to each of the Sleekcraft 22 factors.” Ferrero S.p.A v. Imex Leader, Inc., 2018 WL 11346538, *8 (C.D. Cal. 2018). To 23 the contrary, “[a] plaintiff is not required to prove the likelihood of confusion at the 24 pleading stage. Instead, the likelihood of confusion is a fact-specific inquiry best left for 25 decision after discovery.” Mastro’s Restaurants LLC v. Dominick Grp. LLC, 2012 WL 26 2091535, *5 (D. Ariz. 2012) (cleaned up). See also Rearden LLC, 683 F.3d at 1210 27 (“[L]ikelihood of confusion is often a fact-intensive inquiry.”); Health Indus. Bus. 28 Commc’ns Council Inc. v. Animal Health Inst., 481 F. Supp. 3d 941, 954 (D. Ariz. 2020) 1 (“[B]ecause likelihood of confusion is an intensely factual question, consisting of all of the 2 factual elements identified above, the court declines to dismiss at this time.”) (internal 3 quotation marks and citation omitted). 4 Defendant contends that the complaint fails to allege a likelihood of confusion 5 arising from anything other than the functional elements of the Geekey disclaimed by 6 Plaintiff. As an initial matter, Defendant fails to cite any case law to support the proposition 7 that likelihood of confusion must be based exclusively on non-disclaimed material. “The 8 Ninth Circuit does not ignore disclaimed terms when considering whether a likelihood of 9 confusion exists.” Advanced Hair Restoration LLC v. Bosely Inc., 2023 WL 9024196, *3 10 (W.D. Wash. 2023) (citing Sleeper Lounge Co. v. Bell Mfg. Co., 253 F.2d 720, 722 n.1 (9th 11 Cir. 1958)). In any event, the complaint alleges several instances of actual confusion by 12 customers—a Sleekcraft factor—none of which appear exclusively limited to the 13 functional elements of the ’395 Trademark or the ’893 Trademark. (Doc. 1 ¶¶ 41-45.) The 14 complaint also alleges that Plaintiff’s goods and Defendant’s goods are competitive and 15 that Defendant’s “product was copied exactly.” (Doc. 1 ¶ 26.) 16 As the Ninth Circuit explained in Murray v. Cable Nat’l Broad. Co., 86 F.3d 858 17 (9th Cir. 1996), a district court may decide whether a likelihood of confusion exists on the 18 face of the pleadings and dismiss a complaint “[if] the court determines as a matter of law 19 from the pleadings that the goods are unrelated and confusion is unlikely.” Id. at 860. 20 Nevertheless, given the complaint’s allegations of actual confusion by customers between 21 Plaintiff’s Geekey product and Defendant’s Keyzmo product, in addition to the highly 22 factual nature of the likelihood-of-confusion analysis, Plaintiff has done enough at this 23 stage of the case to allege a likelihood of confusion. “At an appropriate time, [Defendant] 24 might well prove that consumer confusion was unlikely. But on a motion under Rule 25 12(b)(6) the inquiry is into the sufficiency of the pleading, not of the evidence.” Societe 26 Des Hotels Meridien v. LaSalle Hotel Operating P’ship, L.P., 380 F.3d 126, 132 (2d Cir. 27 2004). Accordingly, Defendant’s motion to dismiss Count One is denied. 28 … 1 IV. Federal Trade Dress Infringement And Unfair Competition (Count Two) 2 Count Two is a claim for federal trade dress infringement and unfair competition 3 under 15 U.S.C. § 1125(a). Plaintiff’s response brief clarifies that it is seeking relief 4 pursuant to “two distinct theories under Section 43(a) of the Lanham Act: (1) unregistered 5 trade dress infringement and (2) false designation of origin based on ‘palming off.’” (Doc. 6 13-1 at 9-10.) 7 A. Federal Trade Dress Infringement 8 1. The Parties’ Arguments 9 Defendant argues that “the Lanham Act requires that a plaintiff plead and prove that 10 the alleged trade dress is ‘non-functional.’” (Doc. 11 at 5, citation omitted.) Defendant 11 contends that Plaintiff “must allege more than the naked conclusion that the alleged trade 12 dress is non-functional” and that, under Deckers Outdoor Corp v. Fortune Dynamic Inc., 13 2015 WL 12731929 (C.D. Cal 2015), Plaintiff “is required ‘to allege how a trade dress is 14 non-functional.’” (Id.) Defendant next argues that “each of the purported trade dress 15 elements of the ‘Geekey Trade Dress’ identified in the complaint is functional.” (Id. at 8- 16 14.) Finally, Defendant cites Leatherman Tool Grp., Inc. v. Cooper Indus., Inc., 199 F.3d 17 1009 (9th Cir. 1999), and argues that “[t]he Ninth Circuit has considered similar multi-tool 18 designs and determined that such designs are not protectable by trade dress.” (Id. at 14- 19 15.) 20 In response, Plaintiff argues that to state a claim for unregistered trade dress 21 infringement it “must show three elements: (1) distinctiveness (either inherent or acquired 22 through secondary meaning); (2) likelihood of confusion; and (3) nonfunctionality.” (Doc. 23 13-1 at 10.) As for distinctiveness, Plaintiff argues that “the [c]omplaint specifically 24 identifies the seven elements comprising the Geekey Trade Dress” and alleges that the 25 Geekey Trade Dress has acquired secondary meaning through Plaintiff’s “‘extensive 26 commercial efforts’ including ‘significant advertising, promotions, and sales.’” (Id., 27 citation omitted.) As for likelihood of confusion, Plaintiff argues that the complaint 28 “provides detailed side-by-side comparison[s] of the products” and “further documents 1 multiple instances of actual consumer confusion.” (Id.) Finally, as for nonfunctionality, 2 Plaintiff notes that the complaint alleges “that the elements of the Geekey Trade Dress are 3 ‘non-functional, distinctive elements’ that are ‘not essential to the use or purpose of the 4 product and do not affect the cost or quality of the product.’” (Id. at 11, citation omitted.) 5 Plaintiff also argues that “[f]unctionality is a fact-intensive inquiry inappropriate for 6 resolution at the motion to dismiss stage.” (Id.) 7 In reply, Defendant, citing Deckers, reiterates that “[Plaintiff] must make more than 8 conclusory statements; it is required ‘to allege how a trade dress is non-functional.’” (Doc. 9 17 at 6.) Defendant also argues that “it is highly relevant—if not dispositive—that 10 [Plaintiff] disclaimed nearly all of these elements as functional as part of the ’395 11 [Trademark] and [the] ’893 [Trademark].” (Id. at 7.) 12 2. Analysis 13 “Trade dress refers generally to the total image, design, and appearance of a product 14 and ‘may include features such as size, shape, color, color combinations, texture or 15 graphics.’” Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1257 (9th Cir. 2001) 16 (citation omitted). To succeed on a trade dress infringement claim, “which is analytically 17 similar to an unregistered trademark claim,” Brian Lichtenberg, LLC v. Alex & Chloe, Inc., 18 2014 WL 585436, *4 (C.D. Cal. 2014), Plaintiff “must prove: (1) that its claimed dress is 19 nonfunctional; (2) that its claimed dress serves a source-identifying role either because it 20 is inherently distinctive or has acquired secondary meaning; and (3) that the defendant’s 21 product or service creates a likelihood of consumer confusion.” Clicks Billiards, Inc., 251 22 F.3d at 1258 (footnote omitted). Because Defendant’s motion focuses on Plaintiff’s 23 alleged failure to plead nonfunctionality, and because that element is dispositive, the Court 24 begins its analysis there. 25 “Trade dress protection extends only to design features that are nonfunctional.” Id. 26 “Section 43(a)(3) of the Lanham Act . . . requires a plaintiff asserting a claim for 27 infringement of an unregistered trade dress to meet the burden of proving that the asserted 28 trade dress is not functional.” Morton & Bassett, LLC v. Organic Spices, Inc., 2016 WL 1 4608213, *5 (N.D. Cal. 2016). See also 15 U.S.C. § 1125(a)(3) (“In a civil action for trade 2 dress infringement under this chapter for trade dress not registered on the principal register, 3 the person who asserts trade dress protection has the burden of proving that the matter 4 sought to be protected is not functional.”). 5 The parties agree that it is Plaintiff’s burden to plead nonfunctionality as to Count 6 Two7 but disagree over whether the complaint sufficiently pleads it. The Court agrees with 7 Defendant that the complaint’s allegations on this point are deficient. To be sure, the 8 complaint asserts that the Geekey Trade Dress is nonfunctional. (Doc. 1 ¶ 17 [“The 9 Geekey Trade Dress consists of the unique combination and arrangement of the following 10 non-functional, distinctive elements.”]; id. ¶ 18 [“The non-functional design elements of 11 the Geekey Trade Dress are not essential to the use or purpose of the product and do not 12 affect the cost or quality of the product.”].) But Plaintiff must do more than provide 13 conclusory allegations on this point. See, e.g., Subversive Tools, Inc. v. Bootstrap Farmer, 14 LLC, 2024 WL 4044080, *3 (S.D.N.Y. 2024) (“Conclusory allegations of non- 15 functionality are simply insufficient to satisfy the Iqbal and Twombly standard.”) (citation 16 omitted); Saber Interactive Inc. v. Oovee, LTD., 2022 WL 5247190, *8 (W.D. Wash. 2022) 17 (“Because Saber cannot rely on ‘conclusory statements,’ and instead must plead with at 18 least some detail as to functionality, it has not satisfied Rule 12(b)(6) on this issue.”); Virgin 19 Scent, Inc. v. Bel Air Natruals Care Corp., 2018 WL 5264145, *5 (C.D. Cal. 2018) 20 (“[B]ecause Plaintiff fails to support its conclusory allegation of non-functionality, the 21 Court GRANTS Defendants’ Motion.”); Deckers Outdoor Corp., 2015 WL 12731929 at 22 *5 (“Because Plaintiff does not support its conclusory allegation that the Bailey Button 23 Boot Trade Dress is non-functional in the complaint, the Court GRANTS the motion to 24 dismiss the trade dress claims . . . .); Glassbaby, LLC v. Provide Gifts, Inc., 2011 WL 25 2218583, *2 (W.D. Wash. 2011) (“Plaintiff must plead with at least some detail what the 26 purported design is and how it is nonfunctional.”). 27
28 7 In contrast, and as discussed above, Plaintiff does not have the burden of pleading nonfunctionality in relation to Count One. 1 Plaintiff attempts to avoid dismissal by arguing that “[f]unctionality is a fact- 2 intensive inquiry inappropriate for resolution at the motion to dismiss stage.” (Doc. 13-1 3 at 11.) This argument misses the mark—the “case law does not relieve Plaintiff of its 4 obligation to adequately plead non-functionality in order to state a claim for trade dress 5 infringement,” Deckers Outdoor Corp., 2015 WL 12731929 at *5. See also Subversive 6 Tools, 2024 WL 4044080 at *3 (“Functionality is a question of fact that makes dismissal 7 at the pleading stage inappropriate. Nonetheless, even at the motion to dismiss stage, a 8 plaintiff must specifically allege non-functionality.”) (cleaned up). Accordingly, 9 Defendant’s motion to dismiss Count Two is granted to the extent Count Two is premised 10 on a trade dress infringement theory. 11 B. Unfair Competition 12 1. The Parties’ Arguments 13 Defendant argues that although the complaint alleges “‘GiddyUp copied’ features 14 from GiddyUp’s Geekey website,” “[Defendant] is only responsible for its own advertising 15 actions, not for the actions of third parties.” (Doc. 11 at 16.) Defendant also argues that 16 although the complaint alleges that it “posted an advertisement with a link on ESPN.com 17 encouraging internet users to purchase the ‘Keyzmo’ product,” “the graphic [Plaintiff] 18 show[s] [in the complaint]—gifts.2022gadgets.com—is apparently a gift recommendation 19 website” and “there is no suggestion or argument that [Defendant] either created or was 20 aware of the website . . . or that [Defendant] was even aware of this advertising.” (Id.) 21 Defendant emphasizes that the screenshot in the complaint “plainly shows an affiliation 22 with a product recommendation website.” (Id. at 16-17.) Defendant argues that “[t]he 23 Court need not consider such contradictory allegations.” (Id. at 17.) 24 In response, Plaintiff argues that “[t]he [c]omplaint . . . adequately alleges a separate 25 and independent claim for false designation of origin.” (Doc. 13-1 at 11.) Plaintiff argues 26 that the complaint’s two allegations on this point—first, that Defendant posted a Keyzmo 27 advertisement on ESPN.com with an image of Plaintiff’s product; and second, that 28 GiddyUp placed a photograph of Plaintiff’s founder with a Geekey product in Defendant’s 1 advertisement—are both “textbook passing off.” (Id. at 12.) Plaintiff further argues that 2 although “Defendant argues that the allegations regarding third-party advertising on 3 GiddyUp and ESPN.com cannot be attributed to Defendant,” “[a]t this stage, the Court 4 must accept these allegations as true and draw all reasonable inferences in Plaintiff’s 5 favor.” (Id. at 12-13.) 6 In reply, Defendant argues that “[Plaintiff]’s cause of action for ‘passing off’ should 7 be dismissed because it is not only demonstrably false, based on the evidence cited in the 8 [c]omplaint, but because [Plaintiff] doubles-down on those false statements in its 9 [response].” (Doc. 17 at 8.) Defendant asserts that “[t]he screenshots are from third-party 10 websites and [Plaintiff]’s allegation that [Defendant] created or posted such advertisements 11 are contradicted by the very allegations of its [c]omplaint.” (Id.) Defendant points to the 12 “screenshot included in the [c]omplaint itself,” which “is labeled as originating from a 13 third-party’s advertising website (gifts.2022gadgets.com), not from [Defendant].” (Id. at 14 8 n.6.) Defendant argues that “[t]he Court need not accept as true conclusory allegations 15 which are contradicted by documents in the [c]omplaint itself” and that “[Plaintiff]’s 16 allegation that [Defendant] posted such advertisement is, at best, a factual contention 17 lacking evidentiary support after a reasonable inquiry.” (Id. at 8 & n.6.) 18 2. Analysis 19 “Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), forbids the use of false 20 designations of origin and false descriptions or representations in the advertising and sale 21 of goods and services.” Smith v. Montoro, 648 F.2d 602, 603 (9th Cir. 1981). “‘Palming 22 off’ or ‘passing off’ is the selling of a good or service of one’s own creation under the name 23 or mark of another. Passing off may be either ‘express’ or ‘implied.’ Express passing off 24 occurs when an enterprise labels goods or services with a mark identical to that of another 25 enterprise, or otherwise expressly misrepresents that the goods originated with another 26 enterprise. Implied passing off occurs when an enterprise uses a competitor’s advertising 27 material, or a sample or photograph of the competitor’s product, to impliedly represent that 28 the product it is selling was produced by the competitor.” Id. at 604 (citations omitted). 1 See also Dastar Corp. v. Twentieth Century Fox Film. Corp., 539 U.S. 23, 27 n.1 (2003) 2 (“Passing off (or palming off, as it is sometimes called) occurs when a producer 3 misrepresents his own goods or services as someone else’s. ‘Reverse passing off,’ as its 4 name implies, is the opposite: The producer misrepresents someone else’s goods or 5 services as his own.”) (cleaned up). 6 “To establish a claim for false designation of origin under § 1125(a)(1)(A), a 7 plaintiff must show that the defendant (1) used in commerce (2) any word, false designation 8 of origin, false or misleading description, or representation of fact, which (3) is likely to 9 cause confusion or mistake, or to deceive, as to sponsorship, affiliation, or the origin of the 10 goods or services in question.” Simpson Strong-Tie Co. Inc. v. MiTek Inc., 2021 WL 11 1253803, *4 (N.D. Cal. 2021). 12 As noted, passing off “occurs when an enterprise uses a . . . photograph of the 13 competitor’s product, to impliedly represent that the product it is selling was produced by 14 the competitor.” Smith, 648 F.2d at 604. The complaint alleges that “Defendant posted an 15 advertisement with a link on ESPN.com encouraging internet users to purchase the 16 ‘Keyzmo’ product, but the image shown is actually one of Plaintiff’s product.” (Doc. 1 17 ¶ 33.) That is, as Plaintiff points out, a textbook allegation of passing off. See, e.g., 18 Accurate Leather & Novelty Co. v. LTD Commodities Inc., 1990 WL 205865, *3 (N.D. Ill. 19 1990) (use of a photograph of plaintiff’s product in a catalog to sell defendant’s product 20 actionable as false designation of origin claim under § 43(a)). 21 It is true, as Defendant emphasizes, that the screenshot included in the complaint 22 appears to be from the website gifts.2022gadgets.com. But the Court does not see how this 23 changes the Rule 12(b)(6) analysis. The complaint explicitly alleges that Defendant posted 24 the challenged advertisement on ESPN.com. (Doc. 1 ¶ 33.) And “[a]ll well-pleaded 25 allegations of material fact in the complaint are accepted as true and construed in the light 26 most favorable to the non-moving party.” In re Fitness, 714 F.3d at 1144-45. Nor is there 27 any inherent inconsistency between Plaintiff’s allegation on this point and the appearance 28 of the phrase “gifts.2022gadgets.com” at the bottom of the photograph—it seems possible, 1 for example, that the photograph initially appeared on the gifts.2022gadgets.com website 2 and Defendant then chose to repost it on ESPN.com. Cf. Loftis v. Salcedo, 2019 WL 3 5075853, *5 n.1 (C.D. Cal. 2019) (“Although the Court may disregard conclusory 4 allegations when they are contradicted by documents referred to in the complaint, this 5 doctrine is only triggered upon a threshold determination of a contradiction, which only 6 exists when the statements are inherently inconsistent.”) (cleaned up). Of course, Plaintiff 7 could have made things easier for the Court and Defendant by providing a reasoned 8 explanation on this point in its response brief, but Plaintiff was not required to do so at this 9 stage of the case and Defendant will have ample opportunities, during future stages of this 10 case, to seek appropriate remedies should its suspicion that there was no ESPN.com 11 advertisement prove correct. For these reasons, Defendant’s motion to dismiss Count Two 12 based on false designation of origin is denied. 13 V. Federal Trademark Counterfeiting (Count Three) 14 Count Three is a claim for trademark counterfeiting under 15 U.S.C. § 1114. (Doc. 15 1 at 15.) 16 A. The Parties’ Arguments 17 Defendant argues that Plaintiff’s “trademark counterfeiting claim[] should be 18 dismissed for the same reasons as the trade dress claim.” (Doc. 11 at 15-16.) 19 In response, Plaintiff argues that “[t]he [c]omplaint adequately alleges all elements 20 for federal trademark counterfeiting based on Plaintiff’s registered product configuration 21 marks.” (Doc. 13-1 at 13.) Specifically, Plaintiff argues that “[t]o state a claim for 22 trademark counterfeiting . . . a plaintiff must establish the same elements as trademark 23 infringement . . . plus that the defendant ‘knowingly and intentionally’ used the counterfeit 24 mark.” (Id.) Plaintiff also argues that “[n]othing in the Lanham Act or Ninth Circuit 25 precedent limits counterfeiting claims to word marks or logos—registered product 26 configuration trade dress can support a counterfeiting claim.” (Id.) Plaintiff argues that 27 the ’395 Trademark and the ’893 Trademark “provide prima facie evidence of validity” 28 and that “[t]he [c]omplaint provides detailed factual support showing that Defendant’s 1 || product incorporates the claimed elements of Plaintiff's registered marks.” (/d. at 14.) 2|| Plaintiff further argues that the complaint “documents multiple instances of actual 3 || consumer confusion.” (/d.) Finally, Plaintiff argues that the complaint “provides factual support for willfulness” and “also alleges that Defendant continued its infringing activities 5 || even after receiving notice of Plaintiffs intellectual property rights.” (/d. at 15.) 6 In reply, Defendant attaches the following graphic, which it argues “shows what of [the °395 Trademark] and [the ’893 Trademark] was disclaimed [by Plaintiff] as 8 || functional”:
17 18 (Doc. 17 at 9.) Defendant argues that the graphic “exempliflies] the wrongfulness of 19 [Plaintiff]’s counterfeiting claim, which—in view of its disclaimers—distills to the absurd, 50 i.e., a key-shaped tool is a counterfeit.” (/d. at 10.) Defendant also argues that “there is still no allegation that [Defendant] included the GEEKEY mark in its competing products OF that this case is about anything other than key shapes.” (/d.) Defendant contends that 53 “TPlaintiff]’s conclusory allegations regarding likelihood of confusion and ‘knowing and intentional use’ fail to consider the scope of [Plaintiff]’s functional disclaimer.” (/d.) 95 Finally, Defendant argues that it “was entitled to compete through imitation. And it should 26 be undisputed that [Defendant] was entitled to copy what was functional.” (/d.) 77 B. Analysis 28 Under 15 U.S.C. § 1114(a), the holder of a protectable trademark may hold liable any person who, without consent, “use[s] in commerce any reproduction, counterfeit, copy, -23-
1 or colorable imitation of a registered mark in connection with the sale, offering for sale, 2 distribution, or advertising of any goods or services” which is likely to cause confusion. 3 See also Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995, 1004 (9th Cir. 2023) (“Like 4 trademark infringement claims, trademark counterfeiting requires the plaintiff to show a 5 likelihood of confusion.”). “To succeed on a trademark counterfeiting claim, a plaintiff 6 must establish that: (1) the defendant intentionally used a counterfeit mark in commerce; 7 (2) knowing the mark was counterfeit; (3) in connection with the sale, offer for sale, or 8 distribution of goods or services; and (4) its use was likely to confuse or deceive.” Evo 9 Brands, LLC v. Performance Plus Mktg., Inc., 2022 WL 18231779, *3 (C.D. Cal. 2022). 10 As the parties acknowledge, “[a] trademark counterfeiting claim requires proof of 11 substantially the same elements as a trademark infringement . . . claim.” N. Face Apparel 12 Corp. v. Dahan, 2014 WL 12558010, * 11 (C.D. Cal. 2014). See also Meta Platforms, Inc. 13 v. Arowokoko, 2023 WL 3035454, *6 (N.D. Cal. 2023) (“Since Chime has established a 14 claim for trademark infringement against Defendants, it has also established valid claims 15 for counterfeiting . . . .”). As detailed in Section III.B, Plaintiff has successfully stated a 16 claim for trademark infringement. Most of Defendant’s arguments as to why the complaint 17 fails to state a claim for counterfeiting are reiterations of arguments already rejected above, 18 and thus are rejected again for the same reasons. 19 Defendant also appears to argue that it would be “absurd” to hold that a “key-shaped 20 tool is a counterfeit.” (Doc. 17 at 10.) However, Defendant has failed to cite any case law 21 holding that a key-shaped tool cannot serve as a valid basis for a counterfeiting claim under 22 15 U.S.C. § 1114. The Lanham Act merely requires “counterfeit . . . of a registered mark,” 23 15 U.S.C. § 1114, and it does not prevent Plaintiff from bringing a counterfeiting claim 24 based on the registered and non-disclaimed shape of the Geekey product in the ’395 25 Trademark and the ’893 Trademark. See, e.g., Ent. One UK Ltd. v. 2012Shiliang, 384 F. 26 Supp. 3d 941, 950 (N.D. Ill. 2019) (“[T]he shape of the cookie cutters—an outline of the 27 Peppa Pig character’s head—is substantially indistinguishable from the ’931 design mark. 28 . . . Accordingly, the Court finds as a matter of law that Defendant’s cookie cutters are 1 counterfeit.); Nautilus, Inc., 2013 WL 12133877 at * 6 (“In this case, the relevant mark is 2 the Dumbbell Configuration mark. According to the photographs, Defendant’s dumbbells 3 are substantially indistinguishable from Plaintiff’s Bowflex Selecttech dumbbells, except 4 that they lack the Nautilus logo and Bowflex word mark found on the genuine article. Their 5 shape is indistinguishable from the Bowflex Selecttech dumbbells’ shape, and thus the 6 Dumbbell Configuration mark. . . . Therefore, because the shape is indistinguishable, [the] 7 dumbbells are counterfeit.”); Moroccanoil, Inc. v. Allstate Beauty Prods., Inc., 847 F. 8 Supp. 2d 1197, 1205 (C.D. Cal. 2012) (“In this case, it appears that Bederoff’s copying 9 was deliberate and willful. The counterfeit products were packaged in bottles with nearly 10 identical trade dress as that of the genuine products, including the size, shape, color, 11 wording, and overall appearance of the products.”). Accordingly, Defendant’s motion to 12 dismiss Count Three is denied. 13 VI. State-Law Claims (Counts Four And Five) 14 Both sides argue that Plaintiff’s state-law claims for trademark infringement and 15 unfair competition are governed by the same pleading standards as Plaintiff’s claims for 16 federal trademark infringement and unfair competition. (Doc. 11 at 15 [citing 17 Fuddruckers, Inc. v. Doc’s B.R. Others, Inc., 1984 WL 1473, *3 (D. Ariz. 1984), and 18 arguing that “claims of trade dress infringement under the Lanham Act or common law 19 unfair competition require the court to apply the same analysis”]; Doc. 13-1 at 16 20 [“Because the Complaint adequately states claims under the Lanham Act, it necessarily 21 states claims for common law trademark infringement and unfair competition based on the 22 same factual allegations.”]; Doc. 17 at 10 [“[Plaintiff]’s common law claims under Arizona 23 law for trademark infringement, trade dress infringement, and unfair competition are likely 24 to rise and fall with its federal claims.”].) 25 The Court agrees. “Common law trademark claims are substantially congruent to 26 claims made under the Lanham Act. . . . Courts thus address Arizona common law 27 trademark claims under the framework of federal law.” AAA Alarm & Sec. Inc. v. A3 Smart 28 Home LP, 2021 WL 3857417, *2 (D. Ariz. 2021). See also 3 Ratones Ciegos v. Mucha 1 Lucha Libre Taco Shop 1 LLC, 2017 WL 4284570, *2 (D. Ariz. 2017) (“Plaintiff’s 2 trademark infringement and unfair competition claims brought under the common law and 3 the Lanham Act, 15 U.S.C §§ 1114 and 1125, can be considered together because they 4 share the same analysis.”). Accordingly, the Court denies Defendant’s motion to dismiss 5 Plaintiff’s state-law claims for trademark infringement (Count Four) and unfair 6 competition (Count Five). 7 VII. Leave To Amend 8 In its response brief, Plaintiff argues that “[i]f any cause of action is dismissed in 9 whole or in part, Plaintiff respectfully requests the court grant leave to amend.” (Doc. 13- 10 1 at 16.) Defendant does not oppose this request in its reply brief. (Doc. 17.) 11 “Rule 15 advises the court that ‘leave [to amend] shall be freely given when justice 12 so requires.’” Eminence Cap., LLC v. Aspeon, Inc., 316 F.3d 1048, 1051 (9th Cir. 2003). 13 “This policy is ‘to be applied with extreme liberality.’” Id. (citation omitted). Thus, the 14 Court should grant leave to amend unless “the amendment: (1) prejudices the opposing 15 party; (2) is sought in bad faith; (3) produces an undue delay in litigation; or (4) is futile.” 16 AmerisourceBergen Corp. v. Dialysist W., Inc., 465 F.3d 946, 951 (9th Cir. 2006). 17 It does not appear to the Court that amendment would be prejudicial, be in bad faith, 18 produce undue delay, or be futile. As such, Plaintiff’s amendment request is granted. 19 … 20 … 21 … 22 … 23 … 24 … 25 … 26 … 27 … 28 … 1 Accordingly, 2 IT IS ORDERED that: 3 1. Defendant’s motion to dismiss (Doc. 11) is granted in part and denied in part, as set forth above. 5 2. Plaintiff may file a First Amended Complaint (“FAC”) within 14 days of the || issuance of this order. Any changes shall be limited to attempting to rectify the deficiencies identified in this order. Plaintiff shall, consistent with LRCiv 15.1, attach a redlined 8 || version of the pleading as an exhibit. 9 Dated this 29th day of May, 2026. 10 11 om ee Dominic W. Lanza 13 United States District Judge 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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