Yeti Coolers, LLC v. JDS Indus., Inc.

300 F. Supp. 3d 899
CourtDistrict Court, W.D. Texas
DecidedMarch 9, 2018
Docket1:17-cv-424-RP
StatusPublished
Cited by8 cases

This text of 300 F. Supp. 3d 899 (Yeti Coolers, LLC v. JDS Indus., Inc.) is published on Counsel Stack Legal Research, covering District Court, W.D. Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Yeti Coolers, LLC v. JDS Indus., Inc., 300 F. Supp. 3d 899 (W.D. Tex. 2018).

Opinion

ROBERT PITMAN, UNITED STATES DISTRICT JUDGE

*903Before the Court is Defendant Kelly Scoggins d/b/a King Engraving's ("King Engraving") Motion to Dismiss, (Dkt. 64), and related filings. Having considered the parties' submissions and the relevant law, the Court will deny the motion.

I. Background

Plaintiff YETI Coolers, LLC ("YETI") develops, manufactures, and sells insulated drinkware. (Am. Compl., Dkt. 41, at 4). King Engraving is a laser-engraving business that sells insulated drinkware and other products. (Mem. Mot. Dismiss, Dkt. 65, at 4-5). YETI filed this action against King Engraving and other defendants on May 5, 2017, alleging that the defendants infringed and diluted YETI's trademarks and the trade dress of YETI products. (Compl., Dkt. 1).

In its amended complaint, YETI alleges that King Engraving sold insulated drinkware that unlawfully imitates YETI's trademarks and the trade dress of several products: the YETI 30 oz. Rambler™ Tumbler ("30 oz. tumbler"), the YETI 20 oz. Rambler™ Tumbler ("20 oz. tumbler"), the YETI Rambler™ Lowball ("10 oz. lowball"), and the Rambler™ Colster® Beverage Holder ("beverage holder"). (See id. at 12 (listing King Engraving's allegedly infringing products)). Specifically, YETI asserts claims for: (1) state-and federal-law trademark infringement; (2) state-and federal-law trademark dilution; (3) state-and federal-law trade dress infringement; (4) state and federal-law trade dress dilution; (5) state-and federal-law unfair competition; (6) state-law misappropriation; and (7) state-law unjust enrichment. (Id. at 16-35).

In its motion to dismiss, King Engraving argues that Federal Rule of Civil Procedure 12(b)(6) requires that the Court dismiss each of YETI's causes of action because YETI has in each case failed to state a claim upon which relief can be granted. (Mot. Dismiss, Dkt. 64, at 3). Specifically, King Engraving argues that: (1) YETI's trademark infringement and related claims fail because it has not sufficiently pleaded facts to support the claim; (2) YETI's trade dress claims fail because it has not described its trade dress with sufficient particularity; (3) YETI's trade dress claims fail because there is no likelihood of confusion with King Engraving's products; (4) YETI's trade dress claims fail because it has not sufficiently pleaded that its trade dress is nonfunctional; (5) YETI's dilution claims fail because it has not pleaded sufficient facts to show that either its trademarks or its products' trade dress are famous; and (6) YETI's unfair competition, misappropriation, and unjust enrichment claims are derivative of its trademark and trade dress claims, and therefore fail for the same reasons. (Id. at 2-3).

This is not the Court's first occasion to consider a Rule 12(b)(6) motion against YETI for these sorts of claims. The Court recently denied two motions to dismiss in cases involving claims related to the trade dress of YETI products: YETI Coolers, LLC v. Magnum Solace, LLC , No. 1:16-CV-663-RP, 2017 WL 5515910 (W.D. Tex. Mar. 30, 2017) and YETI Coolers, LLC v. Imagen Brands, LLC , No. 1:16-CV-578-RP, 2017 WL 2199012 (W.D. Tex. May 18, 2017). Although both cases contained claims pertaining to the trade dress of several of the YETI products at issue in this action, neither case contained any claims related to YETI trademarks.

II. Legal Standard

Pursuant to Rule 12(b)(6), a court may dismiss a complaint for "failure to state a claim upon which relief can be granted." Fed. R. Civ. P. 12(b)(6). "To survive a *904Rule 12(b)(6) motion to dismiss, a complaint 'does not need detailed factual allegations,' but must provide the [plaintiffs'] grounds for entitlement to relief-including factual allegations that when assumed to be true 'raise a right to relief above the speculative level.' " Cuvillier v. Taylor , 503 F.3d 397, 401 (5th Cir. 2007) (citing Bell Atl. Corp. v. Twombly , 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) ). That is, "a complaint must contain sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.' " Ashcroft v. Iqbal , 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) (quoting Twombly , 550 U.S. at 570, 127 S.Ct. 1955 ). "The tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions. Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements, do not suffice." Id. "[A] motion to dismiss under 12(b)(6) 'is viewed with disfavor and is rarely granted.' " Turner v. Pleasant , 663 F.3d 770, 775 (5th Cir. 2011) (quoting Harrington v. State Farm Fire & Cas. Co. , 563 F.3d 141, 147 (5th Cir. 2009) ).

III. Trademark Infringement and Unfair Competition

YETI claims that King Engraving has infringed five of its trademarks: two trademarks of the word "YETI," one for a stylized version of the word "YETI" in slanted block typeface, one for the phrase "YETI COLSTER," and one for the phrase "YETI RAMBLER COLSTER." (Am. Compl., Dkt. 41, at 10-11, 14-16).1

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
300 F. Supp. 3d 899, Counsel Stack Legal Research, https://law.counselstack.com/opinion/yeti-coolers-llc-v-jds-indus-inc-txwd-2018.