Hubbs Mach. & Mfg., Inc. v. Brunson Instrument Co., 4:09-CV-701 CAS.

• Court: United States District Courts. 8th Circuit. United States District Court (Eastern District of Missouri)
• Writing for the Court: Charles A. Shaw
• Citation: 635 F.Supp.2d 1016
• Parties: HUBBS MACHINE & MANUFACTURING, INC., Plaintiff, v. BRUNSON INSTRUMENT CO., Defendant.
• Docket Number: No. 4:09-CV-701 CAS.,4:09-CV-701 CAS.
• Decision Date: 01 July 2009

635 F.Supp.2d 1016 HUBBS MACHINE & MANUFACTURING, INC., Plaintiff,
v.
BRUNSON INSTRUMENT CO., Defendant. No. 4:09-CV-701 CAS. United States District Court, E.D. Missouri, Eastern Division. July 1, 2009.

Charles C. McCloskey, IV, Law Office of Charles C. McCloskey, LLC, St. Louis, MO, for Plaintiff.

Daniel E. Sakaguchi, Stephen H. Rovak, Sonnenschein and Nath, LLP, St. Louis, MO, for Defendant.

MEMORANDUM AND ORDER

CHARLES A. SHAW, District Judge.

This matter is before the Court on defendant Brunson Instrument Co.'s ("Brunson") motion to dismiss for failure to state a claim upon which relief can be granted, under Rule 12(b)(6) of the Federal Rules of Civil Procedure. Plaintiff Hubbs Machine & Manufacturing, Inc. ("Hubbs") opposes the motion and it is fully briefed. For the following reasons, the motion to dismiss will be denied.

Background

Hubbs is a Missouri corporation based in Cedar Hill, Missouri, engaged in the business of making and marketing close tolerance industrial survey targets, adaptors and mounts for use in metrology activities. Hubbs is the owner of Reg. No. 3,531,432 on the Principal Register of the U.S. Patent and Trademark Office for the mark "SM," registered on November 11, 2008. The complaint asserts claims

Page 1017

against Brunson for federal trademark infringement under the Lanham Act, 15 U.S.C. § 1114(1)(a)(b) (Count I); false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a)(1) (Count II); Missouri trademark dilution, Mo.Rev.Stat. § 417.061 (Count III); Missouri common law trademark infringement (Count IV); and Missouri common law unfair competition (Count V).

Brunson moves to dismiss trademark Counts I through IV on the basis that the alleged trademark "SM" is not entitled to protection under either federal or state law, and Count V on the basis that Hubbs' complaint fails to allege sufficient facts to establish any element of Missouri unfair competition.

Legal Standard

The purpose of a motion to dismiss for failure to state a claim is to test the legal sufficiency of the complaint. To survive a motion to dismiss pursuant to Rule 12(b)(6) for failure to state a claim upon which relief can be granted, "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, ___ U.S. ___, 129 S.Ct. 1937, 1949, 173 L.Ed.2d 868 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007)). A plaintiff need not provide specific facts in support of its allegations, Erickson v. Pardus, 551 U.S. 89, 127 S.Ct. 2197, 2200, 167 L.Ed.2d 1081 (2007) (per curiam), but "must include sufficient factual information to provide the `grounds' on which the claim rests, and to raise a right to relief above a speculative level." Schaaf v. Residential Funding Corp., 517 F.3d 544, 549 (8th Cir.), cert. denied, ___ U.S. ___, 129 S.Ct. 222, 172 L.Ed.2d 142 (2008) (citing Twombly, 550 U.S. at 555 & n. 3, 127 S.Ct. 1955). This obligation requires a plaintiff to plead "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 & n. 3, 127 S.Ct. 1955). A complaint "must contain either direct or inferential allegations respecting all the material elements necessary to sustain recovery under some viable legal theory." Id. at 562, 127 S.Ct. 1955 (quoted case omitted). This standard "simply calls for enough fact to raise a reasonable expectation that discovery will reveal evidence of [the claim or element]." Id. at 556, 127 S.Ct. 1955.

On a motion to dismiss, the Court accepts as true all of the factual allegations contained in the complaint, even if it appears that "actual proof of those facts is improbable," id. at 556, 127 S.Ct. 1955, and reviews the complaint to determine whether its allegations show that the pleader is entitled to relief. Twombly, 550 U.S. at 555-56, 127 S.Ct. 1955; Fed.R.Civ.P. 8(a)(2). Materials attached to the complaint as exhibits may be considered in construing the sufficiency of the complaint. Morton v. Becker, 793 F.2d 185, 187 (8th Cir.1986).

Discussion

A. Trademark Counts

Brunson moves to dismiss Counts I through IV on the basis that Hubbs' "SM" mark is generic because it is merely the initials for "sphere mount," and as a result cannot be protectable as a matter of law under the Lanham Act or Missouri common law, or as distinctive under Missouri trademark dilution law.

Hubbs responds that its "SM" mark is federally registered, a trademark registration is prima facie evidence of a valid trademark, 15 U.S.C. § 1115(a), and registered trademarks are presumed to be distinctive, citing WSM, Inc. v. Hilton, 724 F.2d 1320, 1325 (8th Cir. 1984). Hubbs further responds that while the "SM" mark describes products including sphere mounts, the trademark registration certificate

Page 1018

does not equate "SM" to sphere mounts, and Hubbs utilizes the "SM" mark to identify the source of various metrology products.

Hubbs has alleged that it is the owner of the federally-registered "SM" mark. Registration of a mark creates a rebuttable presumption that the mark is both valid and distinctive. Aromatique, Inc. v. Gold Seal, Inc., 28 F.3d 863, 869 (8th Cir.1994). Brunson's argument that the mark is generic does not rebut these presumptions. The cases on which Brunson...