BEASLEY v. HOWARD

UNITED STATES DISTRICT COURT

DISTRICT OF NEW JERSEY

David Beasley,

No. 1:19-cv-11058-NLH-MJS

Plaintiff,

OPINION

v.

William Howard,

Defendant.

APPEARANCES:

HENRY A. GABATHULER

MARTIN B. SCHWIMMER

LEASON ELLIS LLP

ONE BARKER AVENUE

FIFTH FLOOR

WHITE PLAINS, NY 10601

On behalf of Plaintiff.

KARIN COGER

COGER LAW FIRM

525 RT 73 NORTH

STE 104

MARLTON, NJ 08053

On behalf of Defendant.

HILLMAN, District Judge

Now before the Court is Defendant’s motion to dismiss

Plaintiff’s federal trademark claims. In accordance with the

Third Circuit Court of Appeals’ remand in this matter, this

Court now denies Defendant’s motion to dismiss with respect to

Plaintiff’s claim under 15 U.S.C. § 1125(a).

BACKGROUND

The Court will presume the parties’ familiarity with the

factual background in this case, previously set forth in its

January 9, 2020 opinion (ECF 20) and the Third Circuit’s

September 17, 2021 opinion, Beasley v. Howard, 2021 WL 4233947

(3d Cir. Sept. 17, 2021), and will not repeat facts beyond those

necessary to its holding today.

The Complaint in this action, filed on April 25, 2019,

consists of six handwritten pages detailing Plaintiff’s history

in creating the mark “The Ebonys” and Plaintiff’s belief that

Defendant wrongfully registered the mark in 2011 and tried to

use it as his own. (ECF 1 at 3). Plaintiff’s principal

contentions are that Defendant defrauded the U.S. Patent and

Trademark Office (“PTO”) and that Defendant harmed Plaintiff’s

ability to profit from using the mark “The Ebonys”. (Id. at 3-

4).

While Plaintiff does not cite to a specific code section as

the basis for his action, he states that the basis for this

Court’s jurisdiction is “Lanham Act False and Misleading

Statement of Facts And Protection of an unregistered Trademark

First use in commerce of 50 years continual use [sic].” (Id. at

2). Plaintiff asks for the Court to “vacate” Defendant’s

trademark registered with the PTO and for the Court to award

$500,000 “in monetary compensation for jobs, performances, and

endorsements lost as a result of trademark and ownership

conflicts.” (Id. at 4). Plaintiff also asks that the Court

“permit” him to register his mark with the PTO. (Id.) This

Court previously granted Defendant’s motion to dismiss on the

basis that Plaintiff had already brought his grievances before

the Trademark Trial and Appeal Board and that the instant

Complaint was barred on the basis of claim preclusion (ECF 20 at

14).

On appeal, the Third Circuit held that the doctrine of

issue preclusion applied to Plaintiff’s fraud claims against

Defendant and “affirm[ed] the District Court’s order to the

extent it dismisse[d] any claim that Howard defrauded the PTO.”

Beasley, 2021 WL 4233947 at *8. However, with respect to the

Court’s order that Plaintiff’s other infringement claims were

precluded, the Third Circuit reversed and remanded the Court’s

order for further consideration. Id. at *7-8.

DISCUSSION

I. Subject Matter Jurisdiction

This Court has jurisdiction over Plaintiff’s federal claims

under 28 U.S.C. § 1331.

II. Standard for Rule 12(b)(6) Motion to Dismiss

When considering a motion to dismiss a complaint for

failure to state a claim upon which relief can be granted

pursuant to Federal Rule of Civil Procedure 12(b)(6), a court

must accept all well-pleaded allegations in the complaint as

true and view them in the light most favorable to the plaintiff.

Evancho v. Fisher, 423 F.3d 347, 351 (3d Cir. 2005). It is well

settled that a pleading is sufficient if it contains “a short

and plain statement of the claim showing that the pleader is

entitled to relief.” Fed. R. Civ. P. 8(a)(2).

“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

‘entitle[ment] to relief’ requires more than labels and

conclusions, and a formulaic recitation of the elements of a

cause of action will not do . . . .” Bell Atl. Corp. v.

Twombly, 550 U.S. 544, 555 (2007) (alteration in original)

(citations omitted) (first citing Conley v. Gibson, 355 U.S. 41,

47 (1957); Sanjuan v. Am. Bd. of Psychiatry & Neurology, Inc.,

40 F.3d 247, 251 (7th Cir. 1994); and then citing Papasan v.

Allain, 478 U.S. 265, 286 (1986)).

To determine the sufficiency of a complaint, a court must

take three steps: (1) the court must take note of the elements a

plaintiff must plead to state a claim; (2) the court should

identify allegations that, because they are no more than

conclusions, are not entitled to the assumption of truth; and

(3) when there are well-pleaded factual allegations, a court

should assume their veracity and then determine whether they

plausibly give rise to an entitlement for relief. Malleus v.

George, 641 F.3d 560, 563 (3d Cir. 2011) (quoting Ashcroft v.

Iqbal, 556 U.S. 662, 664, 675, 679 (2009) (alterations,

quotations, and other citations omitted).

A district court, in weighing a motion to dismiss, asks

“not whether a plaintiff will ultimately prevail but whether the

claimant is entitled to offer evidence to support the claim.”

Twombly, 550 U.S. at 563 n.8 (quoting Scheuer v. Rhoades, 416

U.S. 232, 236 (1974)); see also Iqbal, 556 U.S. at 684 (“Our

decision in Twombly expounded the pleading standard for ‘all

civil actions’ . . . .”); Fowler v. UPMC Shadyside, 578 F.3d

203, 210 (3d Cir. 2009) (“Iqbal . . . provides the final nail in

the coffin for the ‘no set of facts’ standard that applied to

federal complaints before Twombly.”). “A motion to dismiss

should be granted if the plaintiff is unable to plead ‘enough

facts to state a claim to relief that is plausible on its

face.’” Malleus, 641 F.3d at 563 (quoting Twombly, 550 U.S. at

570).

A court in reviewing a Rule 12(b)(6) motion must only

consider the facts alleged in the pleadings, the documents

attached thereto as exhibits, and matters of judicial notice.

S. Cross Overseas Agencies, Inc. v. Kwong Shipping Grp. Ltd.,

181 F.3d 410, 426 (3d Cir. 1999). A court may consider,

however, “an undisputedly authentic document that a defendant

attaches as an exhibit to a motion to dismiss if the plaintiff’s

claims are based on the document.” Pension Benefit Guar. Corp.

v. White Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir.

1993). If any other matters outside the pleadings are presented

to the court, and the court does not exclude those matters, a

Rule 12(b)(6) motion will be treated as a summary judgment

motion pursuant to Rule 56. Fed. R. Civ. P. 12(b).

III. Analysis

Plaintiff’s handwritten, pro se complaint lacks the

targeted and clear pleading that is expected of pleadings

drafted by attorneys. However, courts must liberally construe

pleadings that are filed pro se. Erickson v. Pardus, 551 U.S.

89, 94 (2007) (quoting Estelle v. Gamble, 429 U.S. 97, 106

(1976)). Thus, “a pro se complaint, however inartfully pleaded,

must be held to less stringent standards than formal pleadings

drafted by lawyers.” Id. (internal quotation marks omitted).

See also Dluhos v. Strasberg, 321 F.3d 365, 369 (3d Cir. 2003)

(“[The Court will] apply the applicable law, irrespective of

whether the pro se litigant has mentioned it by name.”). But

while pro se pleadings are liberally construed, “pro se

litigants still must allege sufficient facts in their complaints

to support a claim,” Owens v. Armstrong, 171 F. Supp. 3d 316,

328 (D.N.J. 2016) (quoting Mala v. Crown Bay Marina, Inc., 704

F.3d 239, 245 (3d Cir. 2013)), and pro se litigants are not

exempt from complying with federal pleading standards. See

Thakar v. Tan, 372 F. App'x 325, 328 (3d Cir. 2010). As a

practical matter this “means that a pro se complaint may be

dismissed for failure to state a claim only if it appears

‘beyond doubt that the plaintiff can prove no set of facts in

support of his claim which would entitle him to relief.’” Brown

v. Dep't of Corr., PA, 2006 WL 895039, at *2 (W.D. Pa. Mar. 29,

2006) (quoting Haines v. Kerner, 404 U.S. 519, 520-21 (1972)).

Other courts outside this Circuit have also made clear that

the less stringent pleading standard requires a court to look

more holistically at the pleadings to determine whether a

plaintiff proceeding pro se could theoretically prevail on his

or her claims. See, e.g., United States v. $9,020.00 In U.S.

Currency, 30 F. App'x 855, 858 (10th Cir. 2002) (“This court has

stated that liberal construction of pro se pleadings means that

if the court can reasonably read the pleadings to state a valid

claim on which the plaintiff could prevail, it should do so

despite the plaintiff's failure to cite proper legal authority,

his confusion of various legal theories, his poor syntax and

sentence construction, or his unfamiliarity with pleading

requirements.”) (internal quotation marks omitted); Frengler v.

Gen. Motors, 482 F. App'x 975, 977 (6th Cir. 2012) (Basing its

holding that a pro se complaint warranted dismissal on the fact

that the complaint appeared to be “without any suggestion of a

cause of action” rather than the sloppy styling of the

complaint).

The Court holds that under the more liberal pleading

standards for pro se litigants, Plaintiff has stated a claim for

relief under 15 U.S.C. § 1125(a) of the Lanham Act.1 While

Plaintiff’s complaint does not cite to the statutory provision

by its code number, Plaintiff makes clear that he is suing under

the “Lanham Act” to protect “an unregistered trademark” for

“false and misleading statement of facts.” (ECF 1 at 2). This

statement closely mirrors the title of 15 U.S.C. § 1125 which

reads “False designations of origin, false descriptions, and

dilution forbidden.” 15 U.S.C.A. § 1125. Given that this

section is the vehicle used by owners of unregistered trademarks

to assert infringement claims, Parks LLC v. Tyson Foods, Inc, 863

1 Notably, Defendant only explained in his motion to dismiss how

the legal theories of claim preclusion, issue preclusion, and

incontestability of his mark applied to the facts of this case.

(See generally ECF 8). While he recited the standard to dismiss

a motion under Rule 12(b)(6), (Id. at 5), he did not explain how

the Complaint fell short of that standard. Defendant bears the

burden to show that no claim has been stated and has not met

that burden here. Powell v. Subaru of Am., Inc., 502 F. Supp. 3d

856, 874 (D.N.J. 2020) (“The party moving to dismiss

under 12(b)(6) bears the burden of showing that no claim has

been presented.”)(internal quotation marks omitted).

F.3d 220, 226 (3d Cir. 2017) (“Section 1125(a)(1)(A) prohibits

‘false or misleading’ claims that are ‘likely to cause

confusion, or to cause mistake, or to deceive as to ... the

origin, sponsorship, or approval of his or her goods, services,

or commercial activities by another person[.]’ That provision is

‘the foremost federal vehicle for the assertion of ...

infringement of ... unregistered marks, names and trade

dress[.]’”), and that the rest of the Complaint appears to be

driving at a claim under 15 U.S.C. § 1125(a)(1)(A), the Court

will construe the Complaint as trying to state a claim under

that provision. See Dluhos, 321 F.3d at 369 (“[The Court will]

apply the applicable law, irrespective of whether the pro se

litigant has mentioned it by name.”)

To prove trademark infringement under 15 U.S.C. §

1125(a)(1)(A) “a plaintiff must demonstrate that (1) it has a

valid and legally protectable mark; (2) it owns the mark; and

(3) the defendant's use of the mark to identify goods or

services causes a likelihood of confusion[.]” Belmora LLC v.

Am. Priv. Label Prod., LLC, 2020 WL 10181735, at *3 (D.N.J. May

12, 2020). “[T]he owner of an unregistered mark has the burden

of proving the existence of a protectable mark.” Parks LLC v.

Tyson Foods, Inc, 863 F.3d 220, 226 (3d Cir. 2017) (internal

alterations omitted). In this case, to plead the first element

Plaintiff has to show that the mark “The Ebonys” has some

acquired some meaning that specifically refers to his musical

group. E.T. Browne Drug Co. v. Cococare Prod., Inc., 538 F.3d

185, 192 (3d Cir. 2008) (explaining that if the unregistered

mark “refers to one source or producer of that product, the term

is not generic (i.e., it is descriptive, suggestive, or

arbitrary or fanciful)” it could be eligible for protection);

ERBE Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d 1278,

1287 (Fed. Cir. 2010) (“A mark is afforded trademark protection

if it is descriptive and has acquired secondary meaning.”) The

Court holds that Plaintiff has pled this element in that he

outlined that in 1969 he “signed [his] group to record label and

recorded albums under the name Ebonys [sic] [.]” (ECF 1 at 3).

The Court believes that this is enough to show that the mark in

question is eligible for legal protection.

The second element requires that Plaintiff plead that he

owns the mark, “The Ebonys.” “With respect to ownership of

unregistered marks, the first party to adopt a trademark can

assert ownership rights, provided it continuously uses it in

commerce.” Scibetta v. Slingo, Inc., 2018 WL 466224, at *16

(D.N.J. Jan. 17, 2018); Ford Motor Co. v. Summit Motor Prod.,

Inc., 930 F.2d 277, 292 (3d Cir. 1991). Plaintiff has so pled.

The Complaint reads, “the Ebonys have been performing since I

started the group fifty years ago. For fifty consecutive years

my group the Ebonys have been performing [sic] [.]” (ECF 1 at

3). Plaintiff also states that Defendant only filed for

trademark protection of the mark in 2011. (Id.) The Court

holds that this statement is enough to plead that Plaintiff was

the first to adopt the mark and that he used it continuously in

commerce.

The third element deals with whether Defendant’s use of the

mark has caused “confusion.” “A likelihood of confusion exists

when consumers viewing the mark would probably assume its

association with the source of a different product or service

identified by a similar mark.” Belmora LLC, 2020 WL 10181735 at

*3 (internal quotation marks omitted). The Complaint alleges

that Plaintiff cannot create a website under the name “The

Ebonys” although he performs under the name and that Defendant’s

practice of contacting venues where Plaintiff’s group is set to

play to keep the venues from hiring them has hindered

Plaintiff’s business. (ECF 1 at 4). Confusion in the

marketplace concerning who the true owner of the mark is or what

set of group of singers and musicians is actually performing at

any given show satisfies the third element.

Moreover, confusion is almost a foregone conclusion when

the marks are identical. See Opticians Ass'n of Am. v. Indep.

Opticians of Am., 920 F.2d 187, 195 (3d Cir. 1990) (“Thus,

likelihood of confusion is inevitable, when, as in this case,

the identical mark is used concurrently by unrelated

entities.”); E.A. Sween Co. v. Deli Exp. of Tenafly, LLC, 19 F.

Supp. 3d 560, 569 (D.N.J. 2014) (“Put most simply, confusion is

likely because Defendant has used a mark almost identical to

Plaintiffs valid and legally protectable mark.”). Under the

less stringent standard for pro se litigants, the Court holds

that Plaintiff has pled a plausible Lanham Act violation.2

CONCLUSION

For the reasons expressed above, Defendant’s motion to

dismiss the Complaint [ECF 8] will be denied.

An appropriate Order will be entered.

Date: August 17, 2022 s/ Noel L. Hillman

At Camden, New Jersey NOEL L. HILLMAN, U.S.D.J.

2 As stated in the Background section the relief Plaintiff is

seeking is cancellation of Defendant’s mark, permission to

register the mark himself with the PTO, and for $500,000 in

monetary damages. While there may be a question as to whether

Plaintiff’s requested remedy of cancellation is time-barred, see

15 U.S.C. § 1064, Plaintiff also seeks injunctive relief and

monetary damages if he prevails on his claim. Id. at §§ 1116,

1117.