Holding Co. of the Villages, Inc. v. Little John's Movers & Storage, Inc.
Decision Date | 11 December 2017 |
Docket Number | Case No. 5:17-cv-187-Oc-34PRL |
Court | U.S. District Court — Middle District of Florida |
Parties | HOLDING COMPANY OF THE VILLAGES, INC., Plaintiff, v. LITTLE JOHN'S MOVERS & STORAGE, INC., a Florida corporation, et al., Defendants. |
THIS CAUSE is before the Court on Defendants' Motion to Dismiss Plaintiff's Complaint(Doc. 14; Motion), filed on July 5, 2017.PlaintiffHolding Company of the Villages, Inc.(Plaintiff or Holding Company) filed a response on July 18, 2017.SeePlaintiffHolding Company of the Villages, Inc.'s Response in Opposition to Defendants' Motion to Dismiss(Doc. 15; Response).Accordingly, this matter is ripe for review.
Holding Company has used the marks THE VILLAGES and (Image materials not available for display.)(collectively, the Marks), "since at least as early as July 1992""for residential real estate construction and development, real estate brokerage of residential housing, and resale of residential housing."SeeComplaint(Doc. 1) ¶28.Holding Company's predecessor"coined" the term "The Villages" when it developed The Villages community in central Florida.Id.¶¶ 7, 43.The term "is suggestive of a community organized as a group of self-sufficient, interconnected, small towns."Id.¶45.Holding Company has registered, and now owns the rights to, the Marks, as well as twenty related marks.Id.¶27, 38-39.Pursuant to 15 U.S.C. §1065, "THE VILLAGES," has achieved incontestable status.Id.¶42.2
Holding Company"has spent significant sums to advertise and promote its goods and services using the Marks" in various forums, including television, newspapers, magazines, outdoor advertising, and since 1996, a website located at
Without Holding Company's consent, Defendants have used the Marks "in an effort to associate [their] business with The Villages community and the Marks."Id.¶¶56, 75.DefendantJohn D. Sullivan(Sullivan) owns and operates DefendantsLittle John's Movers & Storage, Inc.(Little John's) and The Villages Moving Storage and Logistics Corp(The Villages Moving)(collectively, the Corporate Defendants).Id.¶¶10, 16, 20.The Corporate Defendants"are, in operation, the same business."Id.¶14.They compete with Holding Company's relocation services by offering "residential moving services, commercial moving services, furniture moving services, 'senior moving' services, interstate moving services, vehicle transportation services, packing services, storage and self-storage services, and related goods such as packing and packaging supplies."Id.¶¶51, 74.Defendants"intentionally target persons moving to Plaintiff's community."Id.¶64.The Corporate Defendants share a phone number, id.¶53, and "[u]pon information and belief," promote their services on the website located at
Further, "[u]pon information and belief, all Defendants were acting in concert with or in a joint venture with the other, were and are the agents of each other, and, in doing the wrongful acts complained of herein, each was acting within the course and scope of such agency."Id.¶22.All Defendants"committed the acts complained of . . . in interstate commerce . . . for their individual gain and profit."Id.¶¶23-24.By "wrongfully trad[ing] upon and cash[ing] in on Plaintiff's reputation and exclusive rights in [the] Marks,"Defendants have caused Holding Company to suffer irreparable injury "in the form of lostgoodwill, diminished reputation, and increased costs."Id.¶¶92, 95.Additionally, Defendants' conduct has "diluted and/or tarnished" the distinctive quality of the Marks.Id.¶93.
Based on these allegations, on April 27, 2017, Holding Company filed the Complaint in which it alleges the following four causes of action under federal law: (1) trademark infringement under the Lanham Act,15 U.S.C. § 1114(1)(Count I);(2) unfair competition, false designation of origin, and false advertising under the Lanham Act,15 U.S.C. § 1114(1)(Count II);(3) trademark dilution under the Lanham Act,15 U.S.C. § 1125(c)(Count III); and (4) violation of the Anti-Cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d)(Count VI).Id.¶¶102-136, 151-162.Plaintiff also alleges two claims under Florida law: (1) common law trademark infringement (Count IV), and (2) statutory injury to business reputation and trademark dilution pursuant to Florida Statute section 495.151(Count V).Id.¶¶137-150.In response, Defendants filed the instant Motion.
In ruling on a motion to dismiss, brought pursuant to Rule 12(b)(6), the Court must accept the factual allegations set forth in the complaint as true.SeeAshcroft v. Iqbal, 556 U.S. 662, 678(2009);Swierkiewicz v. Sorema N.A., 534 U.S. 506, 508 n.1(2002);seealsoLotierzo v. Woman's World Med. Ctr., Inc., 278 F.3d 1180, 1182(11th Cir.2002).In addition, all reasonable inferences should be drawn in favor of the plaintiff.SeeOmar ex. rel. Cannon v. Lindsey, 334 F.3d 1246, 1247(11th Cir.2003)(per curiam).Nonetheless, the plaintiff must still meet some minimal pleading requirements.Jackson v. Bellsouth Telecomm., 372 F.3d 1250, 1262-63(11th Cir.2004)(citations omitted).Indeed, while "[s]pecific facts are not necessary[,]" the complaint should "give the defendant fair noticeof what the . . . claim is and the grounds upon which it rests."Erickson v. Pardus, 551 U.S. 89, 93(2007)(per curiam)(quotingBell Atlantic Corp. v. Twombly, 550 U.S. 544, 555(2007)).Further, the plaintiff must allege "enough facts to state a claim to relief that is plausible on its face."Twombly, 550 U.S. at 570."A 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."Iqbal, 556 U.S. at 678(citingTwombly, 550 U.S. at 556).
A "plaintiff's obligation to provide the grounds of his entitlement to relief requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do."Twombly, 550 U.S. at 555(internal quotations omitted);seealsoJackson, 372 F.3d at 1262( )(internal citation and quotations omitted).Indeed, "the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions," which simply "are not entitled to [an] assumption of truth."SeeIqbal, 556 U.S. at 678, 680-81.Thus, in ruling on a motion to dismiss, the Court must determine whether the complaint contains "sufficient factual matter, accepted as true, to 'state a claim to relief that is plausible on its face.'"Id. at 678(quotingTwombly, 550 U.S. at 570).
In the Motion, Defendants seek to dismiss Holding Company's claims for dilution under federal and Florida law, Counts III and V, respectively, and to dismiss Little John's as a defendant.See generally Motion.First, the Court will determine whether Holding Company has sufficiently stated its claims for dilution.Then, the Court will considerwhether Holding Company has stated any claim for relief plausible on its face against Little John's.
Defendants contend that Holding Company's claims are due to be dismissed pursuant to Rule 12(b)(6) because it has not pled all of the elements required to state a claim.SeeMotionat 4-12.Specifically, Defendants argue that Holding Company has failed to allege facts showing that the Marks are famous, and that Defendants have diluted the Marks by blurring or by tarnishment.Id. at 9-11.In the Response, Holding Company asserts that it has stated its dilution claims with sufficient particularity to survive a motion to dismiss and that greater factual specificity is not necessary at this stage of the proceedings.SeeResponseat 3-9.
"Trademark dilution is the weakening of the ability of a mark to clearly and unmistakably distinguish the source of a product."Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 489(5th Cir.2004).Section 1125(c) of the Lanham Act prohibits trademark dilution by providing that:
the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
"To establish a dilution claim, a plaintiff'must provide sufficient evidence that (1) the mark is famous; (2) the alleged infringer adopted the mark after the mark became famous; (3) the infringer diluted the mark; and (4)the defendant's use is commercial in commerce.'"Brain Pharma, LLC v. Scalini, 858 F. Supp. 2d 1349, 1356(S.D....
Get this document and AI-powered insights with a free trial of vLex and Vincent AI
Get Started for FreeStart Your 3-day Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting

Start Your 3-day Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting

Start Your 3-day Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting

Start Your 3-day Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting

Start Your 3-day Free Trial of vLex and Vincent AI, Your Precision-Engineered Legal Assistant
-
Access comprehensive legal content with no limitations across vLex's unparalleled global legal database
-
Build stronger arguments with verified citations and CERT citator that tracks case history and precedential strength
-
Transform your legal research from hours to minutes with Vincent AI's intelligent search and analysis capabilities
-
Elevate your practice by focusing your expertise where it matters most while Vincent handles the heavy lifting
