Boyajian Products, LLC v. Enby LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

BOYAJIAN PRODUCTS, LLC, No. 3:20-cv-01991-HZ

Plaintiff, OPINION & ORDER

v.

ENBY LLC,

Defendant.

Kristin Grant

Grant Attorneys at Law PLLC

40 Exchange Place, Suite 1306

New York, NY 10005

Sandra S. Gustitus

Chenoweth Law Group, PC

510 SW Fifth Ave, Fourth Floor

Portland, OR 97204

Attorneys for Plaintiff

Frederic Beach Jennings

Frederic Jennings

44 Court Street

Suite 1217 PMB94788

Brooklyn, NY 11201

Remy Green

Cohen&Green P.L.L.C.

1639 Centre St.

Suite 216

Ridgewood, NY 11385

Sean D. O’Brien

John Clarke

Miller Nash LLP

111 SW Fifth Avenue

Suite 3400

Portland, OR 97204

Attorneys for Defendant

HERNÁNDEZ, District Judge:

Plaintiff Boyajian Products, LLC, sues Defendant Enby LLC for trademark infringement.

Defendant now moves to dismiss the Complaint, arguing that Plaintiff fails to state a claim under

Federal Rule of Civil Procedure 12(b)(6). The Court grants Defendant’s motion with leave to

amend.

BACKGROUND

Plaintiff sells sex toys and related goods. Compl. ¶ 7, ECF 1. Around June 2019, Plaintiff

launched a sex toy under the ENBY mark. Compl. ¶ 7. The ENBY is a vibrator designed for use

by anyone—regardless of gender. Pl.’s Resp. Opp’n Mot. to Dismiss (“Pl. Response”) 2, ECF

23.

Before launching the ENBY vibrator, Plaintiff tried to register the ENBY mark with the

United States Patent and Trademark Office (“USPTO”).1 U.S. Trademark Application Serial No.

88282201 (filed Feb. 2, 2019) (“USPTO Appl.”). After the examining attorney first refused to

1The Court takes judicial notice of Plaintiff’s application with the USPTO only for the

limited purpose of demonstrating that the filings and actions described therein occurred on

certain dates. See Lee v. City of Los Angeles, 250 F.3d 668, 690 (9th Cir. 2001) (explaining that a

court cannot take judicial notice of disputed facts, even if they appear in a public record).

register the mark, Plaintiff responded and requested that the examining attorney reconsider.

USPTO Appl. Denying the application for a final time, the examining attorney again concluded

that the mark was merely descriptive and thus not suitable for registration. USPTO Appl.

Plaintiff declined to file another response or an appeal to the Trademark Trial and Appeal Board.

USPTO Appl. In late 2019, the USPTO deemed Plaintiff’s application abandoned. USPTO Appl.

Since launch, “Plaintiff has expended substantial time, money, and resources marketing,

advertising, and promoting its rechargeable vibrator sold under the ENBY mark.” Compl. ¶ 12.

So, despite the USPTO’s conclusion the ENBY mark is merely descriptive, Plaintiff alleges that

the “mark has come to signify the high quality of the goods designated by the ENBY mark, and

has acquired distinctiveness, incalculable distinction, reputation, and goodwill belonging

exclusively to Plaintiff.” Compl. ¶ 13. In support, Plaintiff alleges that the “ENBY mark and its

goods offered thereunder have received significant unsolicited coverage in various media,

including but not limited to coverage in various print and online magazines . . . and has also been

featured on [a] popular . . . television show.” Compl. ¶ 14.

Defendant also sells sex toys and related goods. Compl. ¶ 15. Around September 2020, it

debuted an online retail store, www.shopenby.com, allegedly using the ENBY mark. Compl.

¶ 15.

In the Complaint, Plaintiff alleges trademark infringement claims. Compl. ¶¶ 7–36.

Plaintiff asserts that Defendant’s use of the ENBY mark (www.shopenby.com) is “confusingly

similar to Plaintiff’s ENBY mark and is likely to cause consumer confusion as to the origination

of the goods and services.” Compl. ¶ 16. And so, Plaintiff alleges, this confusion will mislead

consumers into associating Defendant’s goods and services with Plaintiff’s—irreparably harming

Plaintiff and “its valuable reputation and goodwill.” Compl. ¶ 20. Accordingly, Plaintiff seeks

damages and injunctive relief under the Lanham Act (“the Act”) and Oregon state law. Compl.

¶¶ 21–36.

STANDARD

A motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) tests the sufficiency

of the claims. Navarro v. Block, 250 F.3d 729, 732 (9th Cir. 2001). When evaluating the

sufficiency of a complaint’s factual allegations, the court accepts all material facts alleged in the

complaint as true and construes them in the light most favorable to the non-moving party. Wilson

v. Hewlett-Packard Co., 668 F.3d 1136, 1140 (9th Cir. 2012). A motion to dismiss under Rule

12(b)(6) will be granted if a plaintiff alleges the “grounds” of his “entitlement to relief” with

nothing “more than labels and conclusions, and a formulaic recitation of the elements of a cause

of action[.]” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007). “Factual allegations must be

enough to raise a right to relief above the speculative level on the assumption that all the

allegations in the complaint are true (even if doubtful in fact)[.]” Id. (citations and footnote

omitted).

To 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.” Ashcroft v. Iqbal, 556 U.S.

662, 678 (2009) (internal quotation marks omitted). A plaintiff must “plead[] factual content that

allows the court to draw the reasonable inference that the defendant is liable for the misconduct

alleged.” Id. In other words, a complaint must state a plausible claim for relief and contain “well-

pleaded facts” that “permit the court to infer more than the mere possibility of misconduct[.]” Id.

at 679.

DISCUSSION

Defendant argues that Plaintiff’s Complaint should be dismissed because it does not

sufficiently allege that the ENBY mark is a valid, protectable mark. Def. Mot. Dismiss (“Def.

Mot.”) 4, ECF. 13. Plaintiff responds that the Complaint contains sufficient detail and that

Defendant’s motion improperly seeks “to introduce disputed evidence and argue the merits.” Pl.

Resp. 2. Although the Court agrees that it will not determine the distinctiveness of the ENBY

mark at this stage of the proceedings, it must determine whether Plaintiff has pleaded “more than

labels and conclusions, and a formulaic recitation of the elements of a cause of action[.]”

Twombly, 550 U.S. at 555.

A. Background on trademark infringement claims

Under the Lanham Act, a trademark is a “word, name, symbol, or device” that a merchant

or manufacturer uses “to identify and distinguish his or her goods . . . from those manufactured

or sold by others.” 15 U.S.C. § 1127. “To show trademark infringement, [Plaintiff] must

demonstrate that it owns a valid mark, and thus a protectable interest, and it must show that

[Defendant]’s use of the mark is likely to cause confusion, or to cause mistake, or to deceive.”

Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 1196 (9th Cir. 2009) (internal quotation marks and

citations omitted). Even an unregistered mark, like Plaintiff’s, may be protected under the Act.

Id.; see also Iancu v. Brunetti, 139 S. Ct. 2294, 2297 (2019) (“Registration of a mark is not

mandatory.”). To establish that its unregistered mark is valid and protected, Plaintiff must prove

that it is distinctive. Lahoti, 586 F.3d at 1196; see also Zobmondo Ent., LLC v. Falls Media, LLC

602 F.3d 1108, 1114 (9th Cir. 2010) (explaining that federal registration is “prima facie

evidence” of a mark’s validity and “entitles the plaintiff to a strong presumption that the mark is

a protectable mark”).

“Distinctiveness measures the primary significance of the mark to the purchasing public.”

Zobmondo, 602 F.3d at 1113 (internal quotation marks and citation omitted). Marks fall within

“one of five categories of increasing distinctiveness: (1) generic, (2) descriptive, (3) suggestive,

(4) arbitrary, or (5) fanciful.” Id. Marks that fall within one of the last three categories—

suggestive, arbitrary, and fanciful—are inherently distinctive and “automatically entitled to

federal trademark protection because their intrinsic nature serves to identify a particular source

of a product.” Id. (internal quotations and citation omitted). At the opposite end of the

distinctiveness spectrum, generic marks are not protected. Id. In the middle, “merely descriptive

marks are somewhere in-between; although they are not inherently distinctive and are therefore

not entitled to automatic trademark protection, a merely descriptive mark can become protectable

if it has acquired distinctiveness [through] . . . secondary meaning.” Id. Where a mark falls on the

spectrum is “an intensely factual issue.” Id.

After showing that it owns a valid mark, “[Plaintiff] must prove [that] the [D]efendant’s

use of the same or similar mark would create a likelihood of consumer confusion.” Murray v.

Cable Nat. Broad. Co., 86 F.3d 858, 860 (9th Cir. 1996), as amended (Aug. 6, 1996). Applying

an eight-factor test, the court considers “whether a ‘reasonably prudent consumer’ in the

marketplace is likely to be confused as to the origin of the good or service bearing one of the

marks.” Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930, 935 (9th Cir. 2015).

B. Whether “ENBY” is distinctive as a matter of law

Here, Defendant first urges the Court to determine that the ENBY mark is not distinctive

as a matter of law. Def. Mot. 2–3, 7–10. If the Court determines the ENBY mark is not

distinctive, it is not protected under the Act or state law, and therefore Plaintiff would fail to state

any valid claim. In support, Defendant references the USPTO’s decision to deny registration and

several articles discussing Plaintiff’s ENBY vibrator. These materials describe the ENBY mark

as descriptive, stating that the term “enby” refers to non-binary individuals (non-binary = N.B. =

enby). Even assuming, skeptically, that these materials were incorporated by reference into

Plaintiff’s Complaint, the Court declines to determine this fact-intensive question at this stage in

the proceedings. See, e.g., Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir.

2002) (“Because of the intensely factual nature of trademark disputes, summary judgment is

generally disfavored in the trademark arena.”). “Deciding whether a mark is distinctive or merely

descriptive is far from an exact science and is a tricky business at best.” Lahoti, 586 F.3d at 1197

(internal quotation marks and citations omitted). Simply put, the ENBY mark is not so plainly on

the unprotected end of the distinctiveness spectrum that it can be weighed and found wanting

with no factual development. See id. (“Some cases pose an easy conclusion that a mark is merely

descriptive . . . [like] a restaurant chain [that] sought a trademark in a name such as “Delicious

Foods.”).

C. Whether Plaintiff has alleged a plausible claim for relief

Even though the Court declines to determine distinctiveness at this juncture, it still must

determine whether Plaintiff has pleaded adequate factual allegations—not merely legal

conclusions—to state a plausible claim for relief. In the trademark context, this means factual

allegations that support the validity of the mark, i.e., its distinctiveness classification, and factual

allegations that show consumers are likely to be confused.

At the outset, the Court notes that many of Plaintiff’s allegations are mere legal

conclusions. The Court finds the following paragraphs to be conclusory and “not entitled to the

assumption of truth,” Kwan v. SanMedica International, 854 F.3d 1088, 1096 (9th Cir. 2017)

(internal quotation marks and citation omitted):

• As a result of its widespread, continuous, and exclusive use of the ENBY mark to

identify its rechargeable vibrator and Plaintiff as its source, Plaintiff owns valid and

subsisting rights to the ENBY mark. Compl. ¶ 9.

• As a result of Plaintiff’s expenditures and efforts, the ENBY mark has come to

signify the high quality of the goods designated by the ENBY mark, and has

acquired distinctiveness, incalculable distinction, reputation, and goodwill

belonging exclusively to Plaintiff. Compl. ¶ 13.

• The Infringing Mark is confusingly similar to Plaintiff’s ENBY mark and is likely

to cause consumer confusion as to the origination of the goods and services. Compl.

¶ 16.

• Defendant’s infringing acts as alleged herein have caused and are likely to cause

confusion, mistake, and deception among the relevant consuming public as to the

source or origin of the Defendant’s goods and services and have and are likely to

deceive the relevant consuming public into believing, mistakenly, that Defendant’s

goods and services originate from, are associated or affiliated with, or otherwise

authorized by Plaintiff. Compl. ¶ 19.

• Defendant’s acts are causing, and unless restrained, will continue to cause damage

and immediate irreparable harm to Plaintiff and to its valuable reputation and

goodwill with the consuming public for which Plaintiff has no adequate remedy at

law. Compl. ¶ 20.

Like the allegations above, the Court also finds that paragraphs 21–36, wherein Plaintiff

lists its causes of action, are equally conclusory. Setting these conclusory allegations aside, the

Court is left with the following allegations to support Plaintiff’s trademark infringement claims:

• In or about June 2019, Plaintiff launched a rechargeable vibrator under the ENBY

trademark. Compl. ¶ 7.

• Plaintiff has used the ENBY mark in commerce throughout the United States and

internationally continuously since as early as June 2019 in connection with the

manufacture, distribution, provision, offering for sale, sale, marketing, advertising

and promotion of its rechargeable vibrator. Compl. ¶ 8.

• Since at least as early as June 5, 2019 Plaintiff has sold its rechargeable vibrator

under the ENBY mark to consumers in the State of Oregon. Compl. ¶ 10. To date,

Plaintiff has made a substantial number of sales and shipments to consumers

located in the State of Oregon. Compl. ¶ 11.

• Plaintiff has expended substantial time, money, and resources marketing,

advertising, and promoting its rechargeable vibrator sold under the ENBY mark.

Compl. ¶ 12.

• Plaintiff’s ENBY mark and its goods offered thereunder have received significant

unsolicited coverage in various media, including but not limited to coverage in

various print and online magazines some of which include Cosmopolitan, Allure,

Shape, Men’s Health, Ask Men, and Healthline, and has also been featured on the

popular HBO television show Real Time With Bill [Maher]. Compl. ¶ 14.

• Without authorization, and upon information and belief, in or about September

2020 Defendant launched an online retail store selling sex toys and related goods

under the ENBY mark at the domain www.shopenby.com to consumers

throughout the United States (“Infringing Mark”). Compl. ¶ 15.

• On October 16, 2020, Plaintiff, through counsel, sent a letter to Defendant alerting

them to Plaintiff’s rights and requesting that they stop using the Infringing Mark

in connection with the promotion, marketing, advertising, offering to sell, selling

or distributing of any and all sex toys and related goods. Compl. ¶ 17.

• To date, Plaintiff has received no response to the substance of its cease and desist

letter and, after reasonable inquiry, has no evidence that Defendant has complied

or intends to comply with the demands set out in Plaintiff’s letter. Compl. ¶ 18.

Accepting these allegations as true and viewing them in the light most favorable to

Plaintiff, they do not give rise to “more than a sheer possibility that [Defendant] has acted

unlawfully.” Kwan, 854 F.3d at 1096 (internal quotation marks and citation omitted). Plaintiff’s

factual allegations fail to plausibly allege that it owns a valid, protectable trademark because they

offer little regarding the distinctive nature of the mark or Plaintiff’s use of the mark. For

example, simply alleging that “Plaintiff has expended substantial time, money, and resources

marketing, advertising, and promoting its rechargeable vibrator sold under the ENBY mark”

without describing any such advertisements or other promotional materials offers little detail on

“the primary significance of the mark to the purchasing public.” Zobmondo, 602 F.3d at 1113.

Much less that the public would perceive the ENBY mark as inherently distinctive or as

descriptive with a secondary meaning—that is, as more than generic—thus rendering the mark

protectable. Indeed, there is not one well-pleaded allegation describing the meaning—or lack

thereof—of the ENBY mark to the purchasing public. For instance, there is no allegation that the

ENBY mark is a made-up word with no logical connection to Plaintiff’s vibrator, Lahoti, 586

F.3d at 1197 (describing fanciful marks), or that the mark describes some aspect of the Plaintiff’s

vibrator or its intended users but has acquired a secondary meaning, Entrepreneur Media, 279

F.3d at 1142 (finding a mark descriptive because it described the “subject matter and the

intended audience of the [good]”); Zobmondo, 602 F.3d at 1113 (explaining that descriptive

marks are nonetheless protectable when they have acquired a secondary meaning “as used on or

in connection with the [plaintiff]’s goods or services”). Because proving distinctiveness is an

“intensely factual issue,” Zobmondo, 602 F.3d at 1113, Plaintiff must allege more than the

cursory, perfunctory allegations that currently compose the Complaint. See, e.g., Dow Jones &

Co., Inc. v. Int’l Sec. Exch., Inc., 451 F.3d 295, 307 (2d Cir. 2006) (“As to the trademark claims,

[plaintiff]’s complaint, consists of conclusory allegations unsupported by factual assertions and

therefore it fails even the liberal standard of Rule 12(b)(6).” (internal quotation marks and

citations omitted)). Even drawing all reasonable inferences in Plaintiff’s favor, the Complaint’s

barebones allegations fail to allege that the ENBY mark is valid, protectable trademark. In sum,

Plaintiff fails to state a claim under the Lanham Act or Oregon state law because it has not

alleged an element of each claim: the existence of a protectable trademark.2

2In Plaintiff’s Response, it stated that it will voluntarily dismiss an unfair trade practices

claim brought under Oregon law. Pl. Resp. 11. Thus, the Court does not consider that claim here,

and the Court expects Plaintiff to omit it from any amended complaint. Further, although the

Court need not consider whether Plaintiff plausibly alleged the second half of trademark

infringement—customer confusion—the Court encourages Plaintiff to consider carefully the

factual allegations supporting that facet of its claims.

CONCLUSION

The Court GRANTS Defendant’s Motion to Dismiss [13]. Because leave to amend is

freely given, and it is not obvious that amendment would be futile, the Court grants Plaintiff

leave to amend. Fed. R. Civ. P. 15(a)(2). If Plaintiff intends to file an amended complaint, it must

do so within 30 days of this Opinion & Order.

IT IS SO ORDERED.

DATED:___N_o_v_e_m__b_e_r_ _1_, _2_0_2_1_____.

______________________________

MARCO A. HERNÁNDEZ

United States District Judge