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Wigs for Kids, Inc. v. Wigs 4 Kids of Michigan, Inc.

United States District Court, E.D. Michigan, Southern Division

December 21, 2017

WIGS FOR KIDS, INC., Plaintiff,
v.
WIGS 4 KIDS OF MICHIGAN, INC. d/b/a WIGS 4 KIDS WELLNESS CENTER & SALON, et al., Defendants.

          ORDER DENYING DEFENDANTS' MOTION TO DISMISS [19]

          Nancy G. Edmunds United States District Judge.

         Plaintiff, Wigs for Kids, Inc., filed a four-count complaint against Defendant alleging (1) federal trademark infringement under 15 U.S.C. §1114 of the Lanham Act; (2) federal unfair competition under 15 U.S.C. §1125(a) of the Lanham Act; (3) trademark infringement and unfair competition under Michigan common law; and (4) unfair and deceptive trade practices under MCL §445.901-922 of the Michigan Consumer Protection Act. Defendant, Wigs 4 Kids of Michigan, Inc., moves to dismiss the complaint for failure to state a claim upon which relief can be granted.

         I. Facts

         A. Plaintiff's Complaint

         In deciding motions for judgment on the pleadings under Fed.R.Civ.P. Rule 12(c), the Court looks to the face of the complaint and any supporting exhibits for the facts upon which to evaluate the motion. The following are the facts as alleged in Plaintiff's Complaint. Plaintiff is a non-profit charitable organization that incorporated on October 19, 1993, in Ohio. Plaintiff operates nationally under the name Wigs For Kids, Inc, a name Plaintiff has used continuously since 1993. The organization collects monetary and hair donations in order to create custom-made real hair wigs for children suffering from hair loss, at no cost to them. Plaintiff reports helping 125-150 children annually.

         Defendant, independent of Plaintiff, incorporated under the same name in the State of Michigan almost a decade later. On December 15, 2003, only a couple months after the original filing, Defendant amended their filling to change names from Wigs For Kids, Inc., to Wigs 4 Kids of Michigan, Inc., and has used the name "Wigs 4 Kids" continuously since December 2003. Defendants' Michigan based non-profit works to provide free wigs to children suffering from hair loss due to cancer, or other disease/illness. (Pl. Complaint, Dkt. 1 at 4.) Defendant claims to provide wigs to approximately 300 children in Michigan each year. (D. Mtn. to Dismiss, Dkt. 19, at 11.)

         In 2004, Plaintiff contacted Defendants requesting they change their name because of the similarity and likelihood of confusion between the two names. Defendants responded they would not change their name but were prepared to confine their operations to within the State of Michigan. (Pl. Complaint, Dkt. 1 at 4.) No further action was taken at that time. Then in September 2012, the similarity in the companies' two names caused actual confusion between the companies when a potential donor for Plaintiff, inadvertently directed a donation, to Defendant. Plaintiff states Plaintiff never recovered the sizable donation after the misdirection.

         The most recent confusion arose in February 2016. Oxnard Cats Entertainment LLC ("Oxnard") contacted Plaintiff about filming a segment for a television production of "Total Divas." (Pl. Complaint, Dkt. 1, at 6.) Oxnard planned to film Daniel Bryan ("Bryan") a retiring WWE Wrestling Association wrestler as he cut and donated his 'famous' hair to Plaintiff. Bryan did have his hair cut, and Oxnard did record it.

         Plaintiff asserts Defendant then gave an interview to Ryan Satin ("Satin") the founder and editor in chief of the blog "Pro Wrestling Sheet" about the donation. Plaintiff asserts Defendants misrepresented that Defendants were the recipients of Bryan's hair. This led to a cascade of blogs and websites picking up the story including Wikipedia.org, reporting in error Defendant received Bryan's hair and not mentioning Plaintiff.

         On March 28, 2016, Plaintiff, through counsel, sent a cease and desist letter demanding that Defendants "no longer use the trade name or trademark 'Wigs 4 Kids' or any variation." (Dkt. 1-10, at 2.) Plaintiff states "Defendants refused to halt the use and promotion of their infringing Service Mark in connection with the identical goods and services, and continues to solicit donations, offer, advertise, promote such goods and services under their Service Mark as of the date of filing of this Complaint (as shown in Exhibit I)." (Pl. Complaint ¶37, Dkt. 1, at 7.) Exhibit I shows a single page screen-shot of the Defendants' website. Notably in large letters in the center of the screen the site states "We gratefully accept hair donations from around the world!" (Dkt. 1-11, at 1.)

         B. Registered Marks.

         Concurrent with these events both Plaintiff and Defendant have sought to register their name and trademarks in different arenas and at varied times. In April 1999, before Defendant came into existence, Plaintiff received a United States Service Mark Registration 2, 238, 775 for the name "WIGS FOR KIDS" and design in International Class 40 which was active until January 2006, a logo trademark.

         In February 2004, Defendants unsuccessfully filed an application for the name "Wigs 4 Kids, Helping the Self-Esteem of Children" and design in International Class 35, however after failing to adequately reply to the United States Service Mark Office in December 2004, the application was abandoned in July 2005.

         Also in February 2004, Plaintiff applied again to trademark its logo. In January 2007 Plaintiff finally received the United States Trademark Registration 3, 197, 277 for the name and design for "WIGS FOR KIDS" in International Class 26, a logo trademark. This trademark became incontestable pursuant to 15 U.S.C. § 1065 on February 24, 2012.

         A month after Plaintiff received the trademark registration, Defendants filed in February 2007, United State Trademark Application for the name "Wigs 4 Kids Helping the Self-Esteem of Children 1-587-772-6656" and design in International Class 26. The United States Patent and Trademark Office rejected this application on the basis of likelihood of confusion with Plaintiff's already registered marks. Defendant failed to respond to an office action in June 2007 and Defendant officially abandoned the application in January 2008.

         In August 2007, Defendants registered in the State of Michigan the service mark #M07651 "Wigs 4 Kids" listing October 2003 as the date of first use in Michigan and the United States.

         In 2010, Defendant filed Certificates of Assumed Names with the Michigan Department of Licensing and Regulatory Affairs for the name "Wigs 4 Kids Wellness Center & Salon and Wigs for Kids Solon." Defendant renewed the filing in 2015. (Dkt. 19, at 12.)

         Shortly after the press mix up with Bryan, Plaintiff filed in March 2016 for a standard character mark. In October 2016 Plaintiff received United States Trademark Registration 5, 063, 365 for "WIGS FOR KIDS" standard character mark in International Class 26.

         C. Defendant's Motion to Dismiss

         Defendant has filed its motion for judgment on the pleadings pursuant to Fed.R.Civ.P. Rule 12(c) contending its use of "Wigs 4 Kids" does not infringe but is allowable due to prior use, genericness, unclean hands, and that the complaint is time-barred. Defendant claims because Plaintiff has knowingly co-existed with Defendant for the last fourteen years, Plaintiff should not be permitted to proceed with any of its claims.

         II. Legal Standard

         Through its present motion, Defendant seeks dismissal of each of the claims asserted in Plaintiff's complaint under Fed.R.Civ.P. 12(c), motion for judgment on the pleadings. Such motions are reviewed under the same standard as a motion to dismiss, Fed.R.Civ.P. 12(b)(6). Heinrich v. Waiting Angels Adoption Servs., Inc., 668 F.3d 393, 403 (6th Cir. 2012).

         When determining whether Plaintiff's claims are subject to dismissal under Rule 12(b)(6) the complaint is reviewed for failure to state a claim, the Court must construe the complaint in a light most favorable to Plaintiff and accept all well-pleaded factual allegations as true. League of United Latin American Citizens v. Bredesen, 500 F.3d 523, 527 (6th Cir. 2007). However, “the tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to legal conclusions.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 1949 (2009).

         “While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, 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.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 1964-65 (2007) (internal quotation marks, alteration, and citations omitted). Courts are not required to accept as true legal conclusions couched as factual allegations. Id. Factual allegations, accepted as true, “must be enough to raise a right to relief above the speculative level, ” and to “state a claim to relief that is plausible on its face.” Twombly, 550 U.S. at 555, 570, 127 S.Ct. at 1965, 1974. “A claim has ...


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