United States District Court, E.D. Michigan, Southern Division
AND ORDER FINDING DEFENDANT'S MOTION TO DISMISS [#11]
MOOT, GRANTING IN PART AND DENYING IN PART DEFENDANT'S
MOTION TO DISMISS AMENDED COMPLAINT [#20], DENYING
PLAINTIFF'S MOTION TO STRIKE [#16], DENYING WITHOUT
PREJUDICE PLAINTIFF'S MOTION TO DISMISS COUNTER-COMPLAINT
[#25], REQUIRING DEFENDANT TO FILE AN AMENDED
COUNTER-COMPLAINT AND CANCELING HEARING
GERSHWIN A. DRAIN U.S. DISTRICT JUDGE.
American Customer Satisfaction Index, LLC (ACSI) filed the
instant action against Defendant ForeSee Results Inc.
(ForeSee) alleging federal trademark infringement under 15
U.S.C. § 1114, Count I; federal unfair competition under
15 U.S.C. § 1125, Count II; state unfair competition in
violation of Mich. Comp. Laws §429.42,  Count III; common
law trademark infringement, Count IV; common law unfair
competition, Count V; and breach of contract, Count VI.
before the Court are the following motions: (1)
Defendant's Motion to Dismiss Amended Complaint, (2)
Plaintiff's Motion to Strike or to Disqualify Counsel and
(3) Plaintiff's Motion to Dismiss Counter-Complaint.
These matters are fully briefed and upon review of the
parties' submissions, the Court finds that oral argument
will not aid in the resolution of these matters. Accordingly,
the Court will resolve the parties' present motions on
the briefs. See E.D. Mich. L.R. 7.1(f)(2). The
hearing set for August 5, 2019 is hereby canceled.
reasons that follow, the Court will grant in part and deny in
part Defendant's Motion to Dismiss Amended Complaint,
deny Plaintiff's Motion to Strike or to Disqualify
Counsel and deny without prejudice Plaintiff's Motion to
a company that produces the American Consumer Satisfaction
Index (the “Index”), which is an economic
indicator that measures the satisfaction of consumers for
companies across many sectors in the U.S. economy.
See Am. Compl. ¶ 14. ACSI has developed
proprietary survey questions, survey methodology, and survey
analytic methodology, the results of which are used to
produce an ACSI score. Id., ¶ 17. Companies
utilize this score to gauge customer satisfaction
performance. Id. Plaintiff's proprietary survey
and methodology enables subscribers to assess
competitiveness, identify key factors driving consumer
satisfaction and predict future profitability. Id.,
ACSI was owned by the University of Michigan (Michigan),
which was the registrant of two trademarks bearing the ACSI
name and logo. Id., ¶¶ 29, 31. However, in
2008, ACSI was spun off from Michigan and became a private
entity. Id., ¶ 29. Prior to the spinoff,
Michigan had granted several licenses to various companies,
including Defendant, allowing those companies to use ACSI
maintains that when ACSI was spun off into a private entity,
Michigan granted ACSI an exclusive license to police,
enforce, and manage the ACSI marks to grant sublicenses.
Id., ¶ 30. In 2008, Michigan sent Defendant
notice that ACSI was spun off from Michigan. Id.,
¶ 44. In the notice, Michigan informed ForeSee that it
had assigned ForeSee's license agreement to ACSI,
including any future amendments. Id., ¶ 45.
ForeSee acknowledged the assignment. Id., ¶ 46.
2012, ACSI and ForeSee entered into a Limited Trademark
Sublicense Agreement. Id., ¶ 47, Ex. C. The
Sublicense Agreement permitted “continued use of the
Marks by [ForeSee] effective upon, and subsequent to,
expiration of [ForeSee's] agreement with
Michigan[.]” Id., Ex. C, ¶ D. The
Sublicense Agreement noted that Plaintiff was granted an
“exclusive license . . . with the right to sublicense,
under Michigan's rights in the Marks[.]”
Id., Ex. C, ¶ C. In August of 2013, Defendant
elected to voluntarily terminate its license to use the ACSI
marks. See Am. Compl., ¶ 55.
voluntarily terminating its license, ForeSee continued to use
the ACSI marks, used the ACSI name as part of its own product
names, and continued to claim use of the ACSI methodology.
Id., ¶¶ 59-60. As a result of
ForeSee's improper use of the ACSI name and marks, many
ForeSee customers have purchased ForeSee products and
services with the false belief that ForeSee is affiliated
with ACSI and applies ACSI methodology. Id., ¶
LAW & ANALYSIS
Defendant's Motion to Dismiss Amended Complaint
Standard of Review
Rule of Civil Procedure 12(b)(6) allows the court to make an
assessment as to whether the plaintiff has stated a claim
upon which relief may be granted. See Fed. R. Civ.
P. 12(b)(6). “Federal Rule of Civil Procedure 8(a)(2)
requires only ‘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 Atlantic Corp. v. Twombly, 550 U.S. 544, 555
(2007) (citing Conley v. Gibson, 355 U.S. 41, 47
(1957). Even though the complaint need not contain
“detailed” factual allegations, its
“factual allegations must be enough to raise a right to
relief above the speculative level on the assumption that all
of the allegations in the complaint are true.”
Ass'n of Cleveland Fire Fighters v. City of
Cleveland, 502 F.3d 545, 548 (6th Cir. 2007) (quoting
Bell Atlantic, 550 U.S. at 555).
court must construe the complaint in favor of the plaintiff,
accept the allegations of the complaint as true, and
determine whether plaintiff's factual allegations present
plausible claims. To survive a Rule 12(b)(6) motion to
dismiss, plaintiff's pleading for relief must provide
“more than labels and conclusions, and a formulaic
recitation of the elements of a cause of action will not
do.” Id. (citations and quotations omitted).
“[T]he tenet that a court must accept as true all of
the allegations contained in a complaint is inapplicable to
legal conclusions.” Ashcroft v. Iqbal, 129
S.Ct. 1937, 1949 (2009). “Nor does a complaint suffice
if it tenders ‘naked assertion[s]' devoid of
‘further factual enhancement.'” Id.
“[A] complaint must contain sufficient factual matter,
accepted as true, to ‘state a claim to relief that is
plausible on its face.'” Id. The
plausibility standard requires “more than a sheer
possibility that a defendant has acted unlawfully.”
Id. “[W]here the well-pleaded facts do not
permit the court to infer more than the mere possibility of
misconduct, the complaint has alleged-but it has not
‘show[n]'- ‘that the pleader is entitled to
relief.'” Id. at 1950.
district court generally reviews only the allegations set
forth in the complaint in determining on whether to grant a
Rule 12(b)(6) motion to dismiss, however “matters of
public record, orders, items appearing in the record of the
case, and exhibits attached to the complaint, also may be
taken into account. Amini v. Oberlin College, 259
F.3d 493, 502 (6th Cir. 2001). Documents attached to a
defendant's “motion to dismiss are considered part
of the pleadings if they are referred to in the
plaintiff's complaint and are central to her
main argument in support of dismissal is that Plaintiff's
claims are barred by the doctrine of collateral estoppel.
ForeSee relies on a prior suit filed by ACSI against Genesys
Telecommunications Labs alleging trademark infringement.
See American Customer Satisfaction Index, LLC v. Genesys
Telecommunications Labs, Inc., 17-cv-12554
Genesys case, the defendant argued that ACSI did not
have standing to bring a federal trademark infringement claim
because ACSI is not a “registrant” within the
meaning of the Act. Ultimately, the Genesys court
agreed with the defendant and concluded that “the term
registrant is not defined to include an exclusive licensee,
then exclusive licensee does not have standing . . . to bring
an infringement claim under the Lanham Act.”
See Def.'s Mot. to Dism., Ex. 2 at p. 49. The
Genesys court further held that “[e]ven if an
exclusive licensee could conceivably have standing to bring
an infringement claim, . . . the license agreement here is
not an exclusive license.” Id. Thus, ForeSee
argues that ...