United States District Court, E.D. Michigan, Southern Division
AMENDED OPINION AND ORDER GRANTING PLAINTIFF'S
MOTION TO DISMISS COUNTERCLAIM IV OF DEFENDANT'S FIRST
AMENDED COUNTERCLAIM 
GERSHWIN A. DRAIN UNITED STATES DISTRICT COURT JUDGE.
September 19, 2016, Jaguar Land Rover Limited
(“Plaintiff” or “JLR”) filed a
seven-count Complaint alleging trademark claims under the
Lanham Act and other state and common law allegations against
Bombardier Recreational Products Inc.
(“Defendant” or “BRP”). Dkt. No. 1.
The dispute centers on the sale of vehicles that both bear
the mark “DEFENDER.” Id. On January 9,
2017, BRP filed its First Amended Counterclaim, asserting
four counts against JLR related to its registration of the
DEFENDER trademark. Dkt. No. 18.
matter is presently before the Court on JLR's Motion to
Dismiss Counterclaim IV of BRP's First Amended
Counterclaim , pursuant to Federal Rule of Civil
Procedure 12(b)(6). The motion was filed on January 30, 2017,
and is now fully briefed. See Dkt. Nos. 24, 28, 31.
A hearing was held on the motion on June 7, 2017. For the
reasons discussed herein, the Court GRANTS JLR's Motion
to Dismiss , and grants BRP 15 days to amend its fourth
Rule of Civil Procedure 12(b)(6) authorizes dismissal of a
complaint for “failure to state a claim upon which
relief can be granted.” To withstand a motion to
dismiss pursuant to Rule 12(b)(6), a complaint must comply
with the pleading requirements of Federal Rule of Civil
Procedure 8(a). See Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009). Rule 8(a)(2) requires “a short and plain
statement of the claim showing that the pleader is entitled
to relief, in order to give the defendant fair notice of what
the . . . claim is and the grounds upon which it
rests.” Bell Atl. Corp. v. Twombly, 550 U.S.
544, 555 (2007) (quotation marks omitted) (quoting
Fed.R.Civ.P. 8(a)(2); Conley v. Gibson, 355 U.S. 41,
47 (1957)). To meet this standard, a complaint must contain
sufficient factual matter, accepted as true, to “state
a claim to relief that is plausible on its face.”
Twombly, 550 U.S. at 570; see also Iqbal,
556 U.S. at 678-80 (2009) (applying the plausibility standard
articulated in Twombly).
considering a Rule 12(b)(6) motion to dismiss, the Court must
construe the complaint in a light most favorable to the
plaintiff and accept all of his or her factual allegations as
true. Lambert v. Hartman, 517 F.3d 433, 439 (6th
Cir. 2008). However, the Court need not accept mere
conclusory statements or legal conclusions couched as factual
allegations. See Iqbal, 556 U.S. at 678.
38 of the Lanham Act, codified at 15 U.S.C. § 1120,
provides that, “Any person who shall procure
registration in the Patent and Trademark Office of a mark by
a false or fraudulent declaration or representation, oral or
in writing, or by any false means, shall be liable in a civil
action by any person injured thereby for any damages
sustained in consequence thereof.” 15 U.S.C. §
have found that the heightened pleading standard for fraud
claims, Fed.R.Civ.P. 9(b), applies to claims for fraudulent
registration of trademarks under 15 U.S.C. § 1120.
New World Solutions, Inc. v. NameMedia Inc., 150
F.Supp.3d 287 n.30 (S.D.N.Y. 2015); Aureflam Corp. v. Pho
Hoa Phat I, Inc., 375 F.Supp.2d 950, 954 (N.D. Cal.
2005); GMA Accessories, Inc. v. Idea Nuova, Inc.,
157 F.Supp.2d 234, 243 (S.D.N.Y. 2000) (“a claim for
fraudulent registration under § 38, like any fraud
claim, must comply with the heightened pleading standards of
Fed.R.Civ.P. 9(b).”). “The heightened pleading
requirements apply to each element of the fraud claim.”
GMA Accessories, 157 F.Supp.2d at 243.
sustain a claim for damages under § 1120, BRP must first
establish that JLR procured registration in the Patent and
Trademark Office (PTO) of a mark by a false or fraudulent
declaration or representation or by any false means, and that
BRP sustained damages as a consequence of this fraudulent or
false representation. 15 U.S.C. § 1120. Thus, BRP must
show that JLR (1) made a false or fraudulent representation
of a material fact in securing the mark; (2) that JLR knew or
believed that this representation was false; (3) that JLR
intended to induce PTO to rely on this misrepresentation; (4)
that there was reasonable reliance on the misrepresentation;
and (5) that BRP's damages were proximately caused by
JLR's misrepresentation. See FD9 Grp., Inc. v. Bangle
Jangle, LLC, No. CV1500512-BRO-ASX, 2015 WL 12776584, at
*5 (C.D. Cal. May 13, 2015) (detailing the elements that
courts require parties asserting a § 1120 claim to
plead). See also VMR Prod., LLC v. V2H ApS, No.
2:13-CV-7719-CBM-JEM, 2016 WL 7669497, at *17 (C.D. Cal. Dec.
29, 2016) (finding that a counterclaim for damages under
§ 1120 must meet all five elements for fraud under a
claim for fraudulent trademark registration).
bring a claim under § 1120, “it is not enough . .
. merely to establish fraud in the registration of the
trademark”; the claimant “must also show that it
sustained some damage in consequence of the fraud.”
Virginia Polytechnic Inst. & State Univ. v. Hokie
Real Estate, Inc., 813 F.Supp.2d 745, 755 (W.D. Va.
2011) (citing Gilbert/Robinson, Inc. v. Carrie
Beverage-Missouri, Inc., 989 F.2d 985, 991 (8th Cir.
1993), abrogated on other grounds by Lexmark Int'l,
Inc. v. Static Control Components, Inc., 134
S.Ct. 1377 (2014)). The injury asserted must be a proximate
result of the false or fraudulent registration. San Juan
Prod., Inc. v. San Juan Pools of Kansas, Inc., 849 F.2d
468, 473 (10th Cir. 1988). The injury and damages arising
from the fraud must be “clearly articulated.” 6
J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 31:85 (4th ed.) (citing Jackson
v. Lynley Designs, Inc., 729 F.Supp. 498, (E.D. La.
contends that BRP's allegation that it “has been
injured, ” and that those “injuries include, but
are not limited to, injury to its CAN-AM DEFENDER brand for
side-by-side recreational vehicles including injury to its
goodwill, ” are not sufficient to state an injury. Dkt.
No. 24, p. 14 (Pg. ID 337). BRP's counterclaim does not
provide further detail regarding how JLR's registration
of the mark harmed its brand or goodwill, such allegations of
lost sales or specific damage to its business reputation.
response, BRP argues that JLR injured it by formally opposing
BRP's application to use the DEFENDER mark and because
JLR demanded that BRP abandon its trademark application,
based on JLR's allegedly fraudulent registration. Dkt.
No. 28, p. 23 (Pg. ID 460). Indeed, these allegations were
present in BRP's amended counterclaim, although not
clearly articulated as alleged injuries. See Dkt.
No. 18, p. 11 (Pg. ID 270). BRP did not provide the Court
with cases where a formal challenge to a successive trademark
application, or a demand to cease using a mark, alone-without
further injury-was sufficient to qualify as an injury under
§ 1120.See Maker's Mark Distillery, Inc.
v. Diageo N. Am., Inc., No. ...