The opinion
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
ORLANDO DIVISION
U.S. ALL STAR FEDERATION, INC.,
Plaintiff,
v. Case No.: 6:21-cv-2135-WWB-DCI
OPEN CHEER & DANCE
CHAMPIONSHIP SERIES, LLC, THE
OPEN CHEER AND DANCE, LLC,
DAVID OWENS, HEIDI WEBER, JEB
HARRIS and DAVID HANBERY,
Defendants.
/
ORDER
THIS CAUSE is before the Court on Plaintiff U.S. All Star Federation, Inc.’s
(“USASF”) Motion to Dismiss First Amended Counterclaim (Doc. 60) and Third-Party
Counterclaim Defendant Varsity Spirit, LLC’s (“Varsity”) Motion to Dismiss the First
Amended Counterclaim (Doc. 61) and the Response (Doc. 65) and Replies (Doc. Nos.
75, 76) thereto.
I. BACKGROUND
USASF is the sanctioning organization for allstar cheerleading in the United States.
(Doc. 36, ¶ 1). Since 2004, USASF has been hosting an annual end of the season
competition for allstar cheerleading in Orlando, Florida under the mark The Cheerleading
Worlds, a federally registered trademark for use in connection with “conducting
cheerleading competitions.” (Id. ¶¶ 14, 16). USASF also alleges that it has a common law
trademark for the use of Worlds in connection with cheerleading competitions. (Id. ¶¶ 17,
21). In the Amended Complaint, USASF alleges that Defendants, Open Cheer & Dance
Championship Series, LLC, The Open Cheer and Dance, LLC, David Owens, Heidi
Weber, Jeb Harris, and David Hanbery, began producing a season-end cheerleading
competition also held in Orlando, Florida in April under the name and marks Allstar Worlds
and Allstar World Championship. (Id. ¶ 29). USASF alleges that Defendants’ use of such
names and marks has caused consumer confusion regarding USASF’s affiliation or
connection with Defendants’ event. (Id. ¶¶ 39–40). As a result, USASF filed a five count
Amended Complaint against Defendants alleging claims for state and federal trademark
infringement, unfair competition, and civil conspiracy. (Id. ¶¶ 48–80).
Defendants Open Cheer & Dance Championship Series, LLC and The Open
Cheer and Dance LLC (collectively, “Open Cheer”) filed an Answer and Counterclaim
(Doc. 39) against USASF. Thereafter, Open Cheer filed their First Amended
Counterclaims (Doc. 45), asserting claims against USASF and Third-Party Counterclaim
Defendant Varsity.1 As relevant, Open Cheer alleges that USASF requires all its event
producing members to sign a Membership Agreement that prohibits members from
directly or indirectly affiliating with the Allstar World Championship, including boycotting
the Allstar World Championship, Open Cheer, and any event producer that produces
qualifying events for the Allstar World Championship. (Id. ¶¶ 32–33). Open Cheer also
alleges that USASF’s Membership Agreement requires event producer members to
boycott non-USASF entities, like Open Cheer, and to require teams receiving bids to the
1 Open Cheer’s pleading incorrectly labels Varsity as a Counter-Defendant.
However, because Varsity is not a named Plaintiff in the Amended Complaint and has not
asserted any claims against Open Cheer that can be countered, it is properly labeled a
Third-Party Counterclaim Defendant. See Championship Prop. LLC v. Coan, No. 20-
13728, 2022 WL 4455208, at *4 (11th Cir. Sept. 26, 2022) (“If a defendant asserts claims
jointly against a third party and the plaintiff, that third party is called a third-party
counterclaim defendant.” (quotation omitted)).
Cheerleading Worlds from their events to do same. (Id. ¶¶ 34–35). Open Cheer alleges
that USASF contracts with Varsity to produce the Cheerleading Worlds competition and
Varsity owns several event producer members of USASF. (Id. ¶¶ 25–26). Open Cheer
also alleges that USASF and its Varsity-owned members have engaged in a marketing
campaign to encourage consumers to boycott Open Cheer. (Id. ¶ 44). As a result, Open
Cheer brings claims against USASF and Varsity for violations of the Sherman Act and the
Florida Antitrust Act. (Id. ¶¶ 47–59). Additionally, Open Cheer seeks a denial and
cancellation of certain trademark applications made by USASF. (Id. ¶¶ 64–77).
II. LEGAL STANDARDS
Courts evaluate motions to dismiss counterclaims under the same standards as a
motion to dismiss a complaint. See Burger King Corp. v. Holder, 844 F. Supp. 1528, 1529
(S.D. Fla. 1993).
A. Subject Matter Jurisdiction
A party may move to dismiss the claims against it for “lack of subject-matter
jurisdiction.” Fed. R. Civ. P. 12(b)(1). “Attacks on subject matter jurisdiction . . . come in
two forms: ‘facial attacks’ and ‘factual attacks.’” Garcia v. Copenhaver, Bell & Assocs.,
M.D.’s, P.A., 104 F.3d 1256, 1260–61 (11th Cir. 1997) (quoting Lawrence v. Dunbar, 919
F.2d 1525, 1529 (11th Cir. 1990)). “Facial attacks challenge subject matter jurisdiction
based on the allegations in the complaint, and the district court takes the allegations as
true in deciding whether to grant the motion.” Morrison v. Amway Corp., 323 F.3d 920,
925 n.5 (11th Cir. 2003). “However, where a defendant raises a factual attack on subject
matter jurisdiction, the district court may consider extrinsic evidence such as deposition
testimony and affidavits.” Carmichael v. Kellogg, Brown & Root Servs., Inc., 572 F.3d
1271, 1279 (11th Cir. 2009). “When jurisdiction is properly challenged, a plaintiff has the
burden of showing jurisdiction exists.” Kruse, Inc. v. Aqua Sun Invs., Inc., No. 6:07-cv-
1367-Orl-19UAM, 2008 WL 276030, at *2 (M.D. Fla. Jan. 31, 2008).
B. Failure to State a Claim
“A pleading that states a claim for relief must contain . . . a short and plain
statement of the claim showing that the pleader is entitled to relief.” Fed. R. Civ. P. 8(a)(2).
Pursuant to Federal Rule of Civil Procedure 12(b)(6), a party may move to dismiss a
complaint for “failure to state a claim upon which relief can be granted.” In determining
whether to dismiss under Rule 12(b)(6), a court accepts the factual allegations in the
complaint as true and construes them in a light most favorable to the non-moving party.
See United Techs. Corp. v. Mazer, 556 F.3d 1260, 1269 (11th Cir. 2009). Nonetheless,
“the tenet that a court must accept as true all of the allegations contained in a complaint
is inapplicable to legal conclusions,” and “[t]hreadbare recitals of the elements of a cause
of action, supported by mere conclusory statements, do not suffice.” Ashcroft v. Iqbal,
556 U.S. 662, 678 (2009). Furthermore, “[t]o survive a motion to dismiss, a complaint
must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is
plausible on its face.’” Id. (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).
“A claim has facial plausibility when the plaintiff pleads factual content that allows the
court to draw the reasonable inference that the defendant is liable for the misconduct
alleged.” Id.
III. DISCUSSION
At the outset, USASF argues that the First Amended Counterclaims are
procedurally improper. This Court agrees. On April 4, 2022, Open Cheer filed an Answer
to Amended Complaint and Counterclaim (Doc. 39), asserting a single count against
USASF for denial of its pending trademark applications. Thereafter, on May 17, 2022,
without prior leave from the Court, Open Cheer filed the First Amended Counterclaims to
add additional claims for antitrust violations and to add Varsity as a Third-Party
Counterclaim Defendant. Open Cheer’s First Amended Counterclaims, however, are not
attached to an answer, and therefore, are not proper under the Federal Rules of Civil
Procedure. See Stone Tech. (HK) Co. v. GlobalGeeks, Inc., No. 20-cv-23251, 2021 WL
86776, at *3 & n.4 (S.D. Fla. Jan. 11, 2021) (holding that “it is well-recognized in this
Circuit that a counterclaim cannot be independently asserted, but rather must be raised
within a Rule 7(a) pleading” and collecting cases).
To the extent that Open Cheer argues that it is unclear if the pleading as to Varsity
would be proper under Rule 7(a), which lists a third-party complaint as an allowable
pleading, even if Open Cheer’s claims as to Varsity are properly treated as a third-party
complaint, the First Amended Counterclaims are not proper under Rule 14. “A defending
party may, as third-party plaintiff, serve a summons and complaint on a nonparty who is
or may be liable to it for all or part of the claim against it. But the third-party plaintiff must,
by motion, obtain the court’s leave if it files the third-party complaint more than 14 days
after serving its original answer.” Fed. R. Civ. P. 14(a)(1). Here, the First Amended
Counterclaims were filed over a month after the original answer was filed and Open Cheer
failed to seek leave prior to filing. Thus, the filing would also be improper as a stand-alone
third-party complaint.
Insofar as Open Cheer asks the Court to consider their Response as a motion for
leave to amend, the Court declines to consider such argument. First, the request is made
solely in a footnote without citation to legal authority or other basis for granting such relief.
“[W]here an argument on the merits has been summarily raised in a footnote, the court
may decline to address the argument.” Hill v. Allianz Life Ins. Co. of N. Am., No. 6:14-cv-
950-Orl, 2014 WL 12617784, at *3 (M.D. Fla. Dec. 5, 2014) (quotation omitted). Second,
the deadline for such motions has long passed and Open Cheer fails to address the
requirements of Rule 16. See Sosa v. Airprint Sys., Inc., 133 F.3d 1417, 1418 n.2 (11th
Cir. 1998). Third, the request fails to comply with Local Rule 3.01. And finally, the Court
notes that a separate motion was already denied by Magistrate Judge Kidd and Open
Cheer did not timely object to that Order. (See Doc. 100 at 3–4). Therefore, the Court
finds that the First Amended Counterclaims are not properly before it and the filing will be
stricken.
Having determined that the First Amended Counterclaims must be stricken, the
Answer and Counterclaim once again becomes the operative pleading in this litigation.
See, e.g., Bernard v. Wachovia Mortg. Corp., No. 6:13-cv-1044-Orl, 2013 WL 5720303,
at *1 n.1 (M.D. Fla. Oct. 21, 2013); Dinwiddie v. LexisNexis Risk Sols., Inc., No. 1:10-CV-
3516, 2012 WL 13134459, at *8 (N.D. Ga. Feb. 9, 2012). Therefore, the Court will
consider USASF’s arguments as to Open Cheer’s request for denial of its pending
trademark applications.
In the Answer and Counterclaim, Open Cheer alleges a single count against
USASF for denial of two pending trademark applications, one for a word mark and one
for a design mark, pursuant to 15 U.S.C. § 1119. USASF argues that because the claim
involves pending applications—not registered trademarks—the Court lacks jurisdiction.
Pursuant to § 1119, “[i]n any action involving a registered mark the court may determine
the right to registration, order the cancelation of registrations, in whole or in part, restore
canceled registrations, and otherwise rectify the register with respect to the registrations
of any party to the action.” Based on this language, numerous courts have recognized
that “[a] prerequisite to a court taking such action is the actual registration of a trademark
by the USPTO; not a pending trademark application.” ESR Performance Corp. v. JVMAX,
Inc., No. 6:18-cv-1601-Orl, 2019 WL 13082967, at *3 (M.D. Fla. May 7, 2019); see also
Whitney Info. Network, Inc. v. Gagnon, 353 F. Supp. 2d 1208, 1211 (M.D. Fla. 2005).
Nevertheless, Open Cheer asks this Court to extend jurisdiction under § 1119 to
the pending applications because there is “a close nexus” between the pending
applications and USASF’s claims in the Amended Complaint, which involve a mark
registered on the supplemental register. Some courts have held that the exercise of
jurisdiction under § 1119 is proper when one of the parties has a registered trademark
with a “sufficient nexus” to the pending trademark application that has been put at issue
in the litigation. See, e.g., Restivo v. Pennachio, No. 21-23388-CIV, 2022 WL 4355764,
at *5–6 (S.D. Fla. Sept. 20, 2022); D.B.C. Corp. v. Nucita Venezolana, C.A., 464 F. Supp.
3d 1323, 1331–32 (S.D. Fla. 2020). In such cases, courts have found jurisdiction can exist
under § 1119 “over a trademark application as long as that application is sufficiently
similar (such as in sound, look, and meaning) to the registered trademark at issue in the
underlying litigation.” D.B.C. Corp., 464 F. Supp. 3d at 1332.
As an initial matter, even if the exception applies, courts have found that there is
not a sufficient nexus between a word mark and a design mark. See ESR Performance
Corp., 2019 WL 13082967, at *3 n.4. Open Cheer fails to distinguish this case or to
specifically discuss how there would be a sufficient nexus between the registered word
mark and the application for registration of the stylized mark. Therefore, regardless of the
exception, Open Cheer has failed to allege that its claim for cancelation of the 90/831,007
application is within the jurisdiction of this Court and the claim will be dismissed.
The parties do not appear to dispute, however, that the registered word mark and
the pending application for registration of the same word mark on the principal register
share a sufficient nexus. Instead, USASF argues that this Court should decline to
recognize any exception to § 1119 with respect to the pending trademark applications. In
response, Open Cheer cites to several non-binding cases recognizing the exception and
argues that the exception applies in this case, but Open Cheer fails to offer any analysis
of the language of § 1119 or to state why this Court should recognize the exception in this
case. Having reviewed the relevant case law and the plain language of the statute, the
Court is not convinced that § 1119 gives it authority to take action regarding a pending
application. Section 1119 gives courts authority to take certain action, including the ability
to “determine the right to registration” or “rectify the register,” “[i]n any action involving a
registered mark[.]” 15 U.S.C. § 1119. However, this broad grant of discretion applies only
to the “registrations” of a party to the action. Id. Because an application for registration is
not a registration, it appears that the unambiguous language of the statute forecloses this
Court’s ability to review and adjudicate applications for registration, regardless of their
connection to the registered mark involved in the litigation. In the absence of a compelling
argument to the contrary by Open Cheer, this Court declines to recognize an exception
to the general rule that it lacks power to act on pending applications for registration.
Therefore, Open Cheer’s counterclaim will be dismissed in its entirety.
IV. CONCLUSION
Accordingly, it is ORDERED and ADJUDGED as follows:
1. USASF’s Motion to Dismiss First Amended Counterclaim (Doc. 60) is
GRANTED in part as set forth herein and DENIED as moot in all other
respects.
2. The First Amended Counterclaims (Doc. 45) is STRICKEN.
3. Open Cheer’s Counterclaim (Doc. 39) is DISMISSED without prejudice.
4. Varsity’s Motion to Dismiss the First Amended Counterclaim (Doc. 61) is
DENIED as moot.
DONE AND ORDERED in Orlando, Florida on March 24, 2023.
UNITED STATES T JUDG
Copies furnished to:
Counsel of Record