UNITED STATES DISTRICT COURT SOUTHERN ... - Nymag

Case 1:09-cv-21893-WMH Document 16 Entered on FLSD Docket 07/31/2009 Page 3 of 24
SUMMARY OF ARGUMENT
Plaintiffs’ claims for federal trademark infringement and unfair competition under the
Lanham Act, and their related state statutory and common law claims, fail as a matter of law for
all of the following reasons:
1. Plaintiffs’ inexcusable delay in filing this action, combined with their utter lack of
objection for almost four years while Philippe expanded its business nationwide, causes each of
Plaintiffs’ claims to be barred by laches.
2. Counts I through VI, for Federal Trademark Infringement, Federal Trademark
Infringement Based on Reverse Confusion, False Association/False Designation of Origin and
Federal Unfair Competition, False Advertising, Common Law Trademark Infringement, and
Common Law Unfair Competition, respectively, and Count VIII for Violation of Florida’s
Deceptive and Unfair Trade Practices Act, must be dismissed as the well-pled allegations of the
Amended Complaint establish that there can be no likelihood of consumer confusion based on
the weakness of Plaintiffs’ mark and the absence of any alleged actual confusion between
Plaintiffs and Philippe.
3. Count IX for Conversion must be dismissed as a trademark cannot be “converted”
as a matter of law.
4. Count VII for Misappropriation of Trade Secrets under New York law is barred
by the statute of limitations, and otherwise fails to state a claim for which relief can be granted
because: Plaintiffs fail to allege the existence of any protectable trade secrets; and fail to allege
any specific efforts that were undertaken to maintain the confidentiality of their alleged trade
secrets.
5. Counts V and VI for Common Law Trademark Infringement and Common Law
Unfair Competition fail because Plaintiffs fail to allege which State’s law governs such claims.
6. Plaintiffs’ claims fail to comply with the Rule 8 pleading requirements.
MEMORANDUM OF LAW
I. STANDARD FOR GRANTING A MOTION TO DISMISS
To survive a Rule 12(b)(6) motion to dismiss, a complaint must contain factual
allegations that are “more than labels and conclusions” and are “enough to raise a right to relief
-3-
RICHMAN GREER, P.A.
Miami • West Palm Beach