8 UNITED STATES DISTRICT COURT
9 FOR THE EASTERN DISTRICT OF CALIFORNIA
11 No. 2:22-cv-02168-DJC-AC MIKE SARIEDDINE, 12 Plaintiff, 13 ORDER v. 14 CONNECTED INTERNATIONAL INC., et 15 al.,
16 Defendants.
17 CONNECTED INTERNATIONAL INC., et
18 al., Counterclaimants, 19 v. 20 MIKE SARIEDDINE, et al., 21 Counterdefendants. 22 23 24 Defendants in this trademark infringement action have moved to dismiss 25 Plaintiff’s claims relating to two of his marks, arguing that Plaintiff’s federal trademark 26 registration for one mark has been cancelled and therefore cannot support his 27 Lanham Act claim for infringement of that mark, and that Plaintiff has insufficiently 28 pled priority of use in the other mark. Plaintiff, in turn, has moved to dismiss 1 Defendants’ counterclaims, arguing that Defendants largely lack standing to assert
2 their counterclaims and that many of the counterclaims are insufficiently pled.
3 Having considered the Parties’ briefings, the Court will grant Defendants’
4 Motion to Dismiss in whole and will also grant Plaintiff’s Motion to Dismiss in part.
5 BACKGROUND
6 The factual background of this matter is well known to the Parties and the
7 Court. As is relevant here, Plaintiff Mike Sarieddine, who sells nicotine-related
8 products under several trademarks including an ALIEN VAPE Mark, ALIEN VAPE
9 Design Mark, ALIEN KISS Mark, ALIEN PISS Mark, AREA 51 Mark, and ALIEN Mark,
10 brought this trademark infringement action on December 6, 2022, against Defendants
11 Connected International Inc. (“Connected”), Sacramento Community Cannabis
12 Collective, MSTMA INC., Stockton Business Strategies, Caleb Counts, Ted Lidie, and
13 Twenty Sixty-Nine, LLC, who sell cannabis-related products under an ALIENLABS Mark
14 and AREA 41 Mark, alleging there is a likelihood of confusion between the Parties’
15 marks. (ECF No. 1.) Plaintiff filed his operative Second Amended Complaint on
16 November 14, 2024, alleging seven causes of action for infringement of a registered
17 trademark under section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); false
18 designation of origin under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a);
19 California Common Law Trademark Infringement; Statutory Unfair Competition under
20 California Business and Professions Code section 17200 et seq.; cancellation of United
21 States Trademark Registration Nos. 6,315,271, 6,315,466, and 6,315,464 under
22 section 1 of the Lanham Act, 15 U.S.C. § 1064; cancellation of California Trademark
23 Registrations under California Business and Professions Code section 14230 et seq.;
24 and cancellation of Arizona Trademark Registrations under Arizona Revised Statutes
25 section 44-1448. (Second Am. Compl. (“SAC”) (ECF No. 60).)
26 Defendants filed counterclaims on November 27, 2024, against Plaintiff and
27 Alien Vape LLC, asserting nine causes of action for cancellation of United States
28 Trademark Registration Nos. 4,517,249, 4,997,336, 5,081,681, 7,408,896, and 1 6,303,522 based on unlawful use, abandonment, non-use, and fraud on the United
2 States Patent and Trademark Office (“USPTO”); and bringing a tenth cause of action
3 for False Advertising under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). (ECF
4 No. 63.) Defendants subsequently filed amended counterclaims on February 3, 2025,
5 adding five causes of action for Copyright Infringement; California State Trademark
6 Counterfeiting; Arizona State Trademark Counterfeiting; California Common Law
7 Unfair Competition; and Statutory Unfair Competition under California Business and
8 Professions Code section 17200 et seq. (First Am. Countercls. (“Countercls.”) (ECF
9 No. 74).) These additional counterclaims were added in response to Defendants
10 discovery of a website, www.alienvapestore.com (“Infringing Website”), that allegedly
11 features Plaintiff’s marks in the URL and on the landing page but offers counterfeit
12 versions of Defendants’ cannabis vape products for sale. (Id. ¶¶ 21–35, 203–35.)
13 Defendants allege that the website is not owned, operated, or authorized by
14 Defendants, but is instead owned and operated by Plaintiff. (Id.)
15 Defendants moved to dismiss Plaintiff’s claims concerning his ALIEN PISS Mark
16 and ALIEN Mark on November 27, 2024. (Mot. Dismiss SAC (ECF No. 62).) Plaintiff, in
17 turn, moved to dismiss Defendants’ counterclaims on February 20, 2025. (Mot.
18 Dismiss Countercls. (ECF No. 80).) Both Motions were submitted without oral
19 argument pursuant to Local Rule 230(g). (ECF Nos. 73, 87.)
20 LEGAL STANDARD
21 A party may move to dismiss a complaint for “lack of subject matter jurisdiction”
22 under Federal Rule of Civil Procedure 12(b)(1). Taking the allegations in the
23 complaint as true, the court “must determine whether a lack of federal jurisdiction
24 appears from the face of the complaint itself.” Nat’l Fed’n of the Blind of Cal. v. Uber
25 Techs., Inc., 103 F. Supp. 3d 1073, 1078 (N.D. Cal. 2015). “The party asserting federal
26 subject matter jurisdiction bears the burden of proving its existence.” Chandler v.
27 State Farm Mut. Auto. Ins. Co., 598 F.3d 1115, 1122 (9th Cir. 2010).
28 //// 1 A party may also move to dismiss for “failure to state a claim upon which relief
2 can be granted.” Fed. R. Civ. P. 12(b)(6). The motion may be granted only if the
3 complaint lacks a “cognizable legal theory or sufficient facts to support a cognizable
4 legal theory.” Mendiondo v. Centinela Hosp. Med. Ctr., 521 F.3d 1097, 1104 (9th Cir.
5 2008). The court assumes all factual allegations are true and construes “them in the
6 light most favorable to the nonmoving party.” Steinle v. City & Cnty. of San Francisco,
7 919 F.3d 1154, 1160 (9th Cir. 2019). However, if the complaint’s allegations do not
8 “plausibly give rise to an entitlement to relief” the motion must be granted. Ashcroft v.
9 Iqbal, 556 U.S. 662, 679 (2009). A complaint need contain only a “short and plain
10 statement of the claim showing that the pleader is entitled to relief,” Fed. R. Civ. P.
11 8(a)(2), not “detailed factual allegations,” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555
12 (2007). However, this rule demands more than unadorned accusations; “sufficient
13 factual matter” must make the claim at least plausible. Iqbal, 556 U.S. at 678. In the
14 same vein, conclusory or formulaic recitations of elements do not alone suffice. Id. “A
15 claim has facial plausibility when the plaintiff pleads factual content that allows the
16 court to draw the reasonable inference that the defendant is liable for the misconduct
17 alleged.” Id.
18 DISCUSSION
19 I. Defendants’ Motion to Dismiss Plaintiff’s Claims Related to His ALIEN PISS
20 and ALIEN Marks
21 A. Defendants’ ALIEN PISS Mark
22 Defendants argue that Plaintiff lacks standing to bring his first cause of action
23 for trademark infringement under 15 U.S.C. § 1114(1) as to his ALIEN PISS Mark
24 because Plaintiff’s United States Trademark Registration No. 5,149,113 for that mark
25 has been cancelled. (Mot. Dismiss SAC at 6–8.) In particular, Defendants argue that a
26 trademark infringement action under section 1114 can only be brought by the
27 “registrant” of a trademark in connection with infringement of a “registered mark,”
28 which is defined by the Lanham Act is “a mark registered in the United States Patent 1 and Trademark Office[.]” (Id. at 7 (citing 15 U.S.C. § 1127).) Thus, Defendants argue
2 that Plaintiff’s cancelled registration cannot support this claim. (Id. at 8.)
3 In opposition, Plaintiff concedes that the registration for his ALIEN PISS Mark
4 has been cancelled, but argues that dismissal is unnecessary because his first cause of
5 action is not premised on his rights in that mark. (Opp’n Mot. Dismiss SAC (ECF No.
6 66) at 3.) Having reviewed the Second Amended Complaint, however, Plaintiff alleges
7 in his first cause of action that “Defendants’ ALIEN LABS Mark and AREA 41 Mark
8 infringe Sarieddine’s ALIEN Marks and AREA 51 Mark and the ALIEN Registrations and
9 AREA 51 Registration.” (SAC ¶ 62.) Plaintiff defines his “ALIEN Marks” collectively as
10 the “ALIEN VAPE Marks, ALIEN Mark, ALIEN KISS Mark, and ALIEN PISS Mark.” (Id.
11 ¶ 23.) Thus, Plaintiff’s first cause of action is based, in part, on his ALIEN PISS Mark.
12 Accordingly, the Court will grant dismissal of Plaintiff’s first cause of action to
13 the extent it is based on the ALIEN PISS Mark.
14 B. Defendants’ ALIEN Mark
15 Defendants also argue that Plaintiff’s trademark infringement, false designation,
16 unfair competition, and cancellation claims must be dismissed as to Plaintiff’s ALIEN
17 Mark, as Plaintiff has failed to establish that mark has priority over Defendants’
18 ALIENLABS Mark. (Mot. Dismiss SAC at 8–12.) In particular, Defendants argue
19 Plaintiff’s alleged first use date of September 9, 2020, for the ALIEN mark cannot
20 support priority over Defendants’ ALIENLABS Mark, which has been in use since 2014.
21 (Id. at 8.)
22 Defendants are correct. “A successful trademark infringement claim under the
23 Lanham Act requires a showing that the claimant holds a protectable mark, and that
24 the alleged infringer’s imitating mark is similar enough to ‘cause confusion, or to cause
25 mistake, or to deceive.’” Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 630
26 (9th Cir. 2005) (quoting KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543
27 U.S. 111, 117 (2004)). These elements are the same for claims for false designation of
28 origin under 15 U.S.C. § 1125, California unfair competition, and California common 1 law trademark infringement. See Brookfield Commc’ns, Inc. v. West Coast Ent. Corp.,
2 174 F.3d 1036, 1046 n.6, 1047 n.8 (9th Cir. 1999) (holding the same legal standard
3 applies to sections 32(1) and 43(a) of the Lanham Act); Rearden LLC v. Rearden Com.,
4 Inc., 683 F.3d 1190, 1221 (9th Cir. 2012) (holding that California state-law claims for
5 trademark infringement and unfair competition are “subject to the same legal
6 standards” as a Lanham Act trademark claim).
7 To establish a protectable ownership interest in a trademark, a plaintiff must
8 demonstrate a priority of trademark use over the defendant’s use. See Sebastian
9 Brown Prods., LLC v. Muzooka, Inc., 143 F. Supp. 3d 1026, 1039 (N.D. Cal. 2015). A
10 trademark’s registration with the USPTO is “prima facie evidence . . . of the registrant’s
11 ownership of the mark.” 15 U.S.C. § 1115(a). Priority of use can also be shown where
12 a party used a mark in commerce before another party. See Dep’t of Parks &
13 Recreation for State of Cal. v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124–26 (9th Cir.
14 2006). If a claimant fails to plead facts supporting priority of use and a protectable
15 ownership interest in a trademark, a motion to dismiss should be granted for failure to
16 state a claim. See, e.g., Sebastian Brown Prods., 143 F. Supp. 3d at 1039–41
17 (dismissing trademark infringement claims where plaintiff failed to plead facts
18 supporting priority of use).
19 Here, the earliest use date Plaintiff pleads for his ALIEN Mark is September 9,
20 2020. (SAC ¶ 18.) He also pleads, however, that Defendants’ ALIENLABS Mark has
21 been in use since 2014. (Id. ¶ 29.) Thus, Plaintiff has failed to plead priority of use in
22 his ALIEN Mark, and the Court will dismiss Plaintiff’s first through seventh causes of
23 action to the extent they are based on his ALIEN Mark with leave to amend.
24 II. Plaintiff’s Motion to Dismiss Defendants’ Counterclaims
25 A. Defendants’ Standing to Bring their Counterclaims
26 Plaintiff argues that all of the Defendants apart from Connected lack standing to
27 bring their first through ninth counterclaims for trademark cancellation, eleventh
28 counterclaim for copyright infringement, twelfth through thirteenth counterclaims for 1 trademark counterfeiting, and fourteenth through fifteenth counterclaims for unfair
2 competition, as only Connected owns rights in the ALIENLABS Mark, AREA 41 Mark,
3 and United States Copyright Registration No. VA0002395792 upon which these
4 claims are based. (Mot. Dismiss Countercls. at 3–4.) Thus, Plaintiff argues these claims
5 must be dismissed to the extent they are not brought by Defendant Connected.
6 In opposition, Defendants concede that Connected alone asserts the copyright
7 infringement and trademark counterfeiting counterclaims. (Opp’n Mot. Dismiss
8 Countercls. (ECF No. 83) at 5–7.) Thus, the Court will dismiss Defendants’ eleventh
9 through thirteenth counterclaims to the extent they are brought by any Defendant
10 other than Connected.
11 However, the Court finds that all the Defendants have standing to bring the
12 trademark cancellation and unfair competition counterclaims. First, to establish
13 standing to seek cancellation of an allegedly invalid trademark registration, “the
14 cancellation petitioner must plead and prove facts showing a ‘real interest’ in the
15 proceedings . . . .” Hokto Kinoko Co. v. Concord Farms, Inc., 810 F. Supp. 2d 1013,
16 1034 (C.D. Cal. 2011), aff’d, 738 F.3d 1085 (9th Cir. 2013). In other words, a petitioner
17 “must show a real and rational basis for his belief that he would be damaged by the
18 registration sought to be cancelled, stemming from an actual commercial or pecuniary
19 interest in his own mark.” Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 735 F.2d 346, 349
20 (9th Cir. 1984); see 15 U.S.C. § 1064 (standing to cancel a trademark registration is
21 held by “any person who believes that he is or will be damaged, including as a result
22 of . . . the registration of a mark”). “[N]umerous courts have concluded that being
23 sued for trademark infringement is sufficient injury to confer standing to seek
24 cancellation of a mark.” WM Int’l, Inc. v. Golden Lyon Inv. Co., No. CV 20-00995-CJC
25 (JPRx), 2020 WL 6826485, at *2 (C.D. Cal. Nov. 5, 2020) (collecting cases); see, e.g.,
26 Joshua Tree Brewery v. Balance Rock Brewing Co., No. 5:20-cv-00361-SHK, 2021 WL
27 4894270, at *8 (C.D. Cal. Sept. 15, 2021) (“Because Plaintiff’s instant trademark
28 infringement suit against Defendants seeks to enjoin Defendants from using its mark, 1 Defendants face damages if Plaintiff’s trademark is not cancelled . . . [t]hus, the Court
2 finds that Defendants have standing to pursue a cancellation claim against Plaintiff.”).
3 Here, Defendants have standing to challenge Plaintiff’s trademark registrations
4 because those registrations are being used to assert trademark infringement claims
5 against them, and Defendants have alleged that they are damaged by Plaintiff’s
6 continued use of the registrations at issue. (See SAC ¶¶ 59–63, 69–74; Countercls.
7 ¶¶ 109–10, 119–20, 128–29, 137–38, 146–47, 153–54, 164–65, 177–78, 189–90.) Thus,
8 Defendants have sufficiently demonstrated standing.
9 Further, to establish standing under California’s unfair competition laws, a
10 plaintiff needs to demonstrate that it “(1) suffered an injury in fact and (2) lost money
11 or property as a result of the unfair competition.” Birdsong v. Apple, Inc., 590 F.3d
12 955, 959 (9th Cir. 2009). Here, Defendants allege that Plaintiff has unfairly competed
13 with them by listing counterfeit versions of Defendants’ ALIENLABS products for sale
14 on the Infringing Website without Defendants’ authorization. (Countercls. ¶¶ 223–25.)
15 Defendants allege that, as a result of Plaintiff’s actions, they “have suffered, and are
16 suffering, economic damages” because the public is likely to confuse the counterfeit
17 ALIENLABS products with Defendants’ authentic ALIENLABS products. (Id. ¶¶ 225.)
18 Defendants further allege they have suffered “irreparable harm to the value and
19 goodwill associated with their ALIENLABS Trademarks and ALIENLABS product
20 images, and associated reputations, brand values, and goodwill.” (Id.) The Court
21 finds these allegations sufficient at this stage to support standing, as Defendants have
22 plausibly pled they are suffering economic injury as a result of Plaintiff’s sale of
23 counterfeit products bearing their ALIENLABS Mark. See Cal. Rest. Ass’n v. City of
24 Berkeley, 89 F.4th 1094, 1100 (9th Cir. 2024) (at the pleadings stage, “general factual
25 allegations of injury resulting from the defendant’s conduct may suffice, for on a
26 motion to dismiss we presume that general allegations embrace those specific facts
27 that are necessary to support the claim”).
28 //// 1 Accordingly, the Court will not dismiss Defendants’ first through ninth
2 counterclaims for trademark cancellation or fourteenth through fifteenth
3 counterclaims for unfair competition on standing grounds.
4 B. Sufficiency of Defendants’ Seventh through Ninth Counterclaims
5 Based on Fraud
6 Plaintiff argues that Defendants’ seventh through ninth counterclaims for
7 cancellation of United States Trademark Registration No. 5,081,681 for his AREA 51
8 Mark, No. 4,997,336 for his ALIEN VAPE Mark, and No. 4,517,249 for his ALIEN VAPE
9 Design Mark, all of which are premised on fraud, are not pled with particularity as
10 required by Federal Rule of Civil Procedure 9. (Mot. Dismiss Countercls. at 5–6.) In
11 particular, Plaintiff argues Defendants have not alleged any facts supporting their
12 allegations that Plaintiff knowingly made false representations intended to deceive the
13 USPTO when filing his trademark applications. (Id.)
14 The Court finds these counterclaims are sufficiently pled. Claims for trademark
15 cancellation based on fraud have met the requirements of Rule 9 where claimants
16 alleged facts describing the “who, what, why, and how” to support the cancellation
17 claim. See, e.g., Brutus & Barnaby, LLC v. Brutus Broth, Inc., No. 2:20-cv-09094, 2021
18 WL 3017516, at *4 (C.D. Cal. Apr. 2, 2021). Here, Defendants have pled that Plaintiff
19 knowingly made material misrepresentations to the USPTO in the declarations filed for
20 his trademark applications for the AREA 51, ALIEN VAPE, and ALIEN VAPE Design
21 Marks by falsely stating the marks were being used in commerce when they were not.
22 (Countercls. ¶¶ 155–90.) In addition, Defendants have pled specific facts supporting
23 their allegations that Plaintiff was not using those marks in commerce, including that
24 Plaintiff’s nicotine-based products bearing those marks were not approved for sale by
25 the Food and Drug Administration (“FDA”), and that Defendants were unable to
26 purchase Plaintiff’s products either in stores or online. (Id. ¶¶ 45–63, 93–101, Ex. A, Ex.
27 B.) These allegations are sufficient under Rule 9 at this stage.
28 //// 1 Accordingly, the Court declines to dismiss Defendants’ seventh through ninth
2 counterclaims.
3 C. Sufficiency of Defendants’ Tenth Counterclaim for False Advertising
4 Defendants allege that Plaintiff has made several misleading statements and
5 representations about Plaintiff’s products, including that they are approved by the
6 FDA and are available for sale on www.alienvape.com, which harm Defendants’
7 “ability to sell products under the ALIENLABS and AREA 41 trademarks.” (Countercls.
8 ¶¶ 191–202.) Plaintiff argues this counterclaim should be dismissed as Defendants
9 have failed to plausibly plead this allegedly “false advertising” caused them harm in
10 the form of lost sales or otherwise. (Mot. Dismiss Countercls. at 6.)
11 The Court agrees. To allege false advertising under the Lanham Act, a plaintiff
12 must plead an injury to a commercial interest in sales or business reputation
13 proximately caused by the defendant’s misrepresentations. Lexmark Int’l, Inc. v. Static
14 Control Components, Inc., 572 U.S. 118, 129, 131–32 (2014). Here, Defendants have
15 failed to plausibly plead any injury to their sales or reputation as a result of Plaintiff’s
16 representations that his products are FDA-approved and sold on his website,
17 www.alienvape.com. Indeed, Defendants have consistently argued that their goods
18 are distinct from Plaintiff’s goods, their marks are distinct from Plaintiff’s marks, and
19 that the Parties use different marking channels. (See ECF No. 46.) Thus, the Court
20 fails to see, and Defendants have not explained, how the purported FDA-approval
21 status of Plaintiff’s goods or their availability for sale impacts Defendants’ sales.
22 Defendants’ tenth counterclaim will be dismissed with leave to amend.
23 D. Sufficiency of Defendants’ Eleventh through Fifteenth Counterclaims
24 for Copyright Infringement, Trademark Counterfeiting, and Unfair
25 Competition
26 Finally, Plaintiff argues that Defendants’ eleventh through fifteenth claims,
27 which are premised on Defendants’ allegations that Plaintiff owns and operates the
28 Infringing Website selling counterfeit copies of Defendants’ goods, are purely 1 speculative as Defendants have alleged no factual basis for Plaintiff’s alleged
2 ownership of that site. (Mot. Dismiss Countercls. at 4–5.) Defendants, in opposition,
3 argue they have alleged specific facts supporting the conclusion that Plaintiff owns or
4 controls the site, including: (1) that the site was registered on September 28, 2024,
5 nine days after the Court denied Plaintiff’s motion for preliminary injunction; (2) the
6 descriptions of “Alien Vape” in connection with the Infringing Website match the
7 contents of www.alienvape.com, which is owned and/or operated by Plaintiff; and
8 (3) the Infringing Website states to “visit us” in “Los Angeles,” where Plaintiff is located.
9 (Opp’n Mot. Dismiss Countercls. at 11–12; see also Countercls. ¶¶ 23, 30–32.)
10 Construing these facts in Defendants’ favor, as the Court must at this stage, the
11 Court finds that Defendants’ allegations concerning the timing and content of the
12 Infringing Website plausibly support Defendants’ claim that Plaintiff owns or controls
13 the Infringing Website. Accordingly, the Court declines to dismiss Defendants’
14 eleventh through fifteenth counterclaims.
15 CONCLUSION
16 In accordance with the above, it is hereby ORDERED:
17 1. Defendants’ Motion to Dismiss (ECF No. 62) is GRANTED.
18 a. Plaintiff’s first cause of action is DISMISSED to the extent it is
19 based on Plaintiff’s ALIEN PISS Mark;
20 b. Plaintiff’s first through seventh causes of action are DISMISSED
21 to the extent they are based on Plaintiff’s ALIEN Mark; and
22 c. Plaintiff is granted leave to file an amend complaint within
23 fourteen (14) days of this order.
24 2. Plaintiff’s Motion to Dismiss (ECF No. 80) is GRANTED in part.
25 a. Defendants’ tenth counterclaim is DISMISSED;
26 b. Defendants’ eleventh through thirteenth counterclaims are
27 DISMISSED to the extent those claims are asserted by
28 Defendants Sacramento Community Cannabis Collective, 1 MSTMA INC., Stockton Business Strategies, Caleb Counts, Ted 2 Lidie, or Twenty Sixty-Nine, LLC; and 3 c. Defendants are granted leave to file amended counterclaims 4 within twenty-eight (28) days of this order. 5 6 IT IS SO ORDERED. 7 | Dated: _June 25, 2025 “Dane A Ch brett Hon. Daniel alabretta 8 UNITED STATES DISTRICT JUDGE 9 10 11 | DJca - Sarieddine22cv2168.MTD 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 12