# THERABODY, INC. v. DIALECTIC DISTRIBUTION LLC

> District Court, D. New Jersey · July 10, 2024

URL: https://www.frixlaw.com/law-library/cases/10656215

## Case

- **Court:** District Court, D. New Jersey
- **Decided:** July 10, 2024
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY

THERABODY, INC.,

Plaintiff, No. 23cv21995 (EP) (LDW)

v. OPINION

DIALECTIC DISTRIBUTION LLC,

Defendant.

PADIN, District Judge.

Plaintiff Therabody, Inc. (“Therabody” or “Plaintiff”) brings this action against Defendant
Dialectic Distribution LLC (“Dialectic” or “Defendant”) stemming from Defendant’s alleged
unauthorized distribution of Plaintiff’s brand name products including percussive massage
devices, wellness products, and accessories, and unauthorized use of Plaintiff’s trademarks.
Plaintiff’s well-known brands include THERAGUN® and THERABODY® and other similar
iterations of those marks. D.E. 10 (“Amended Complaint” or “Am. Compl.”). The Amended
Complaint alleges federal and state law claims for declaratory and injunctive relief, trademark
infringement, trademark dilution, unfair competition, and false advertising.1
Defendant moves to dismiss all counts for failure to state a claim pursuant to Federal Rule
of Civil Procedure 12(b)(6), or, alternatively, to stay the case pending the determination of a patent

1 Although the parties do not dispute this Court’s jurisdiction over the state law claims, the Court
has an independent duty to determine its own subject matter jurisdiction. See N.J. Carpenters and
the Trustees Thereof v. Trishman Const. Corp. of N.J., 760 F.3d 297, 302 (3d Cir. 2014). The
Court is satisfied that it has supplemental jurisdiction over the state law claims because they are
“so related to claims in the action within [the Court’s] original jurisdiction that they form part of
the same case or controversy under Article III of the United States Constitution.” 28 U.S.C. §
1367.
case pending against Therabody in the United States District Court for the District of Delaware.
D.E. 12-1 (“Mot.”). The Court decides the motion without oral argument. See Fed. R. Civ. P.
78(b); L.Civ.R.78(b). For the reasons set forth below, the motion will be DENIED. All counts
will proceed, and the Court will not stay this case.

I. BACKGROUND2
A. Factual Background
1. Therabody’s brands and resale conditions
Plaintiff’s business centers on the “design, manufacture, and sale of high-end percussive
massage devices, wellness products and accessories” (the “Products”) under various brand names,
including THERAGUN® and THERABODY®. Am. Compl. ¶ 15, Ex. A. Therabody’s extensive
advertising efforts have resulted in significant sales and popularity amongst consumers. Id. ¶¶ 15-
33. The THERAGUN® brand, for example, may now be considered a household name. See, e.g.,
Gogo Zoger, How Therabody Became Synonymous with Recovery and Wellness, SHOPIFY (Jan. 5,
2023), https://perma.cc/QW3X-DVWA.
To protect its intellectual property, Plaintiff acquired numerous U.S. Trademarks (the
“Trademarks”).3 Am. Compl. ¶ 16, Ex. A. Plaintiff advertises and sells the Products on its own

website; through select online retailers; on the Amazon marketplace; in traditional brick-and-
mortar stores; and through specific wholesalers, distributors, and authorized resellers (each, an
“Authorized Reseller” and collectively, the “Authorized Resellers”). Id. ¶¶ 19-20. Authorized

2 The facts in this section are taken from the well-pled factual allegations in the Amended
Complaint, which the Court presumes to be true for purposes of resolving the motions to dismiss.
See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
3 The Serial Numbers of the Trademarks are 87206326, 88422970, 88721223, 88682612,
88422917, 88682598, 88682583, 88536440, 88422901, 88402300, 88402270, 88471826,
88633980, 88607032, 90318341, 88983985, 88696755, 88983066, 90321763, and 88983065.
Am. Compl. Ex. A.
Resellers enter contracts with Plaintiff (“Reseller Agreements”), which, inter alia, bind Authorized
Resellers to “Terms and Conditions.” Id. ¶¶ 69-72, Ex. C. The Terms and Conditions establish
quality controls and resale policies to ensure that Therabody’s brands and goodwill are not
negatively impacted by—and that consumers are protected from—poor resale practices. See id. ¶

73. The Terms and Conditions also reference Therabody’s Limited Product Warranty (the
“Warranty”) that purchasers are entitled to. Id. ¶¶ 44-48, Ex. B, Ex. C ¶ 8. Importantly, the
Warranty only attaches to Products sold by Plaintiff or by Authorized Resellers. Id. ¶ 45, Ex. B.
2. Dialectic’s unauthorized distribution of Therabody’s Products
Since at least August 31, 2023, Defendant has distributed and sold Plaintiff’s Products
without Plaintiff’s authorization. Id. ¶¶ 92, 95-96, 98, 100. Defendant does not abide by the
quality controls set forth in the Reseller Agreements that Authorized Resellers agree to. Id. ¶ 110.
Moreover, the Products sold by Defendant do not contain the Warranty. Id. ¶ 45, 74, 91, 103-05,
Ex. B. Defendant advertises that the Products do come with the Warranty, even though that is not
the case. Id. ¶¶ 107-08.
When Plaintiff became aware of Defendant’s unauthorized sale and marketing, it sent a

cease-and-desist letter to Defendant on August 31, 2023, followed by a second cease-and-desist
letter on September 20, 2023 (the “Demand Letters”). Id. ¶ 112; Exs. D, E. The Demand Letters
notified Defendant that it was selling the Products, without Plaintiff’s authorization, in violation
of Plaintiff’s Trademarks, and requested that Defendant cease selling the Products immediately.
Id. ¶ 114; Exs. D, E. However, Defendant has not responded to the Demand Letters and continues
to distribute and sell the Products. Id. ¶¶ 116-18.
B. Procedural Background
Therabody initiated this action on November 6, 2023. D.E. 1. Defendant moved to dismiss
the original complaint on January 8, 2024. D.E. 9. However, on January 26, 2024, Plaintiff filed
an Amended Complaint, mooting the original motion to dismiss. D.E. 10. The Amended
Complaint alleges eight federal and state law counts against Defendant: (I) Declaratory
Judgment/Injunctive Relief; (II) Common Law Unfair Competition; (III) False Advertising (15
U.S.C. § 1125(a)(1)(B)); (IV) Trademark Infringement (15 U.S.C. § 1114); (V) Unfair

Competition (“15 U.S.C. § 1125(a)); (VI) Trademark Dilution (15 U.S.C. § 1125(c)); (VII)
Trademark Infringement (N.J. Stat. Ann. § 56:4-1); and (VIII) Unfair Competition (N.J. Stat. Ann.
§ 56:4-1). Am. Compl. ¶¶ 121-290.
On February 8, 2024, Defendant filed the instant motion to dismiss the Amended
Complaint, or, alternatively, to stay the case. D.E. 12. Plaintiff opposes. D.E. 14 (“Opp’n”).
Defendant does not reply.
II. LEGAL STANDARD
A. Federal Rule of Procedure 12(b)(6)
Rule 12(b)(6) permits the dismissal of a case for failure to state a claim. Fed. R. Civ. P.
12(b)(6). In reviewing a motion to dismiss for failure to state a claim, the reviewing court accepts
all well-pled facts as true, construes the complaint in the plaintiff’s favor, and determines “whether,

under any reasonable reading of the complaint, the plaintiff may be entitled to relief.” Phillips v.
Cnty. of Allegheny, 515 F.3d 224, 233 (3d Cir. 2008) (internal quotation marks and citation
omitted). To survive a Rule 12(b)(6) challenge, the plaintiff’s claims must be facially plausible,
meaning that the well-pled facts “allow[] the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.” Iqbal, 556 U.S. at 678. The allegations must be
“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). Finally, “[i]n deciding a Rule
12(b)(6) motion, a court must consider only the complaint, exhibits attached to the complaint,
matters of public record, as well as undisputedly authentic documents if the complainant’s claims
are based upon these documents.” Mayer v. Belichick, 605 F.3d 223, 230 (3d Cir. 2010).
B. Motion to Stay
Courts have inherent power to stay proceedings as “‘incidental to the power inherent in
every court to control the disposition of the cases on its docket with economy of time and effort

for itself, for counsel, and for litigants.’” Bank of New York Mellon v. Witty, No. 15-cv-500, 2024
WL 303173, at *4 (D.N.J. Jan. 25, 2024) (quoting Landis v. North Am. Co., 299 U.S. 248, 254
(1936)). “When evaluating a motion to stay proceedings, courts generally weigh a number of
factors including, ‘(1) whether a stay would unduly prejudice or present a clear tactical
disadvantage to the non-moving party [ ]; (2) whether denial of the stay would create a clear case
of hardship or inequity for the moving party [ ]; (3) whether a stay would simplify the issues and
the trial of the case [ ]; and (4) whether discovery is complete and/or a trial date has been set.’”
Id. (quoting Gentry v. Chubb, No. 21-cv-13744, 2021 WL 11959607, at *1 (D.N.J. Dec. 22, 2021))
(alterations in original).

III. ANALYSIS
A. Count I (Declaratory Judgment/Injunctive Relief) Will Proceed
Count I seeks declaratory judgment that “Defendant has no right or authorization to
distribute or sell the Products, or use the Trademarks, as these actions have harmed and continue
to harm Plaintiff in an amount to be determined at trial” and that the “Demand Letters gave
Defendant actual notice that it was not authorized to use the Trademarks, and any continued use
of the Trademarks or unauthorized sales of the Products constitutes willful violations of Plaintiff’s
rights in the Trademarks.” Am. Compl. ¶¶ 123-24. Count I also seeks an injunction against
Defendant prohibiting it from “any further sales of the Products and use of the Trademarks.” Id.
¶ 126. Defendant argues that declaratory judgment is not warranted because all other claims
should be dismissed and, thus, there remains no dispute between the parties. Mot. at 4. The Court
disagrees.4
“In a case of actual controversy within its jurisdiction . . . any court of the United States,
upon the filing of an appropriate pleading, may declare the rights and other legal relations of any

interested party seeking such declaration, whether or not further relief is or could be sought.” 28
U.S.C. § 2201(a). To satisfy the “actual controversy” requirement, the dispute must be one that
evidence a “substantial controversy, between parties having adverse legal interests, of sufficient
immediacy and reality to warrant the issuance of a declaratory judgment.” MedImmune, Inc. v.
Genetech, Inc., 549 U.S. 118, 127 (2007).
Plaintiff argues that a declaration stating that Defendant violated Plaintiff’s rights when
Defendant allegedly used the Trademarks without authorization and requiring Defendant to
immediately cease and desist use of the Trademarks are appropriate requests for declaratory
judgment. The Court agrees.
Specifically, Plaintiff seeks a declaration that (1) “Defendant has no right or authorization

to distribute or sell the Products, or use the Trademarks,” (2) “the Demand Letters gave Defendant
actual notice that it was not authorized to use the Trademarks, and any continued use of the
Trademarks or unauthorized sales of the Products constitutes willful violations of Plaintiff’s rights
in the Trademarks,” and (3) that Defendant must cease “any further sales of the Products and use
of the Trademarks.” Am. Compl. ¶¶ 123-24, 126. There is a substantial controversy between the
parties regarding these rights, especially whether Defendant was authorized to sell the Products
and use the Trademarks. These are real, adverse interests that fall within the ambit of Section
2201(a). See, e.g., Parikh Worldwide Media, LLC v. Sheth, No. 20-cv-01185, 2021 WL 856901,

4 Defendant does not address the injunctive relief sought in Count I in its motion.
at *5 (D.N.J. Mar. 8, 2021) (holding that the plaintiff adequately stated a claim for declaratory
relief when it sought a declaration that “(1) Defendant’s use and registration of the infringing
websites violate Plaintiffs’ rights; (2) Defendant must immediately cease and desist use of the
marks; and (3) Defendant must transfer the websites to Plaintiffs”). Therefore, Count I will

proceed.
B. Count IV (Trademark Infringement – 15 U.S.C. § 1114) and Count VII
(Trademark Infringement – N.J. Stat. § 56:4-1) Will Proceed
Count IV alleges trademark infringement in violation of 15 U.S.C. § 1114, Am. Compl. ¶¶
169-97, and Count VII alleges trademark infringement in violation of N.J. Stat. Ann. § 56:4-1, id.
¶¶ 237-65. Defendant argues that Plaintiff fails to state a federal claim for trademark infringement
under the Lanham Act because it does not allege that Defendant “has ever offered, distributed,
possessed, sold, or advertised any goods or services of any kind bearing or imitating Plaintiff’s
marks, or even had the capacity to do so,” and therefore also fails to state a claim under New Jersey
state law. Mot. at 6-7, 10. The Court disagrees and finds that Plaintiff adequately pleads trademark
infringement under both federal and New Jersey state law.
1. Count IV – 15 U.S.C. § 1114
Section 32 of the Lanham Act, in 15 U.S.C. § 1114(1)(a), provides, in part, that “any person
who shall, without the consent of the registrant . . . (a) use in commerce any reproduction,
counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering
for sale, distribution, or advertising of any goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake or to deceive . . .” is liable for trademark

infringement. To state a claim under § 1114, a plaintiff must show “(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.” A&H Sportswear, Inc. v. Victoria’s Secret Stores,
Inc., 237 F.3d 198, 210 (3d Cir. 2000).
The Amended Complaint clearly alleges the valid and legally protectable marks at issue
and that they are owned by Plaintiff. Am. Compl. ¶ 16, Ex. A. The Amended Complaint also

clearly alleges that Defendant sold the Products that bear these marks. Id. ¶¶ 16, 87-90, 92, 95-
96, 98, 100, 103. The sole issue therefore becomes whether that use “causes a likelihood of
confusion.” A&H Sportswear, Inc., 237 F.3d at 210.
Under the “first sale” or “exhaustion” doctrine, “a trademark owner’s authorized initial sale
of its product into the stream of commerce extinguishes the trademark owner’s rights to maintain
control over who buys, sells, and uses the product in its authorized form.” Iberia Foods Corp. v.
Romeo, 150 F.3d 298, 301 n.4 (1998). However, this doctrine has its limits. Trademark owners
may still sue for trademark infringement “when the products offered for sale are similar but not
identical to those offered by the trademark owner.” Id. at 302. Therefore, if the alleged infringer’s
good are “materially different” than those of the trademark owner, then the “alleged infringer’s

goods are considered ‘non-genuine’ and the sale of the goods constitutes infringement.” Id. at
303. “The purpose of the material differences test is to determine whether the allegedly infringing
products are likely to injure the goodwill developed by the trademark owner in the trademarked
goods.” Id.
Here, the allegation is not that Defendant is selling counterfeit products. Plaintiff does not
dispute that Defendant sold real Products manufactured by Plaintiff. The gravamen of Plaintiff’s
infringement allegations is that Defendant is selling the Products without Plaintiff’s permission
and without entering into a Reseller Agreement. Am. Compl. ¶¶ 92, 95-96. Plaintiff claims that
Defendant’s actions cause consumer confusion because (1) the Products sold by Defendant are
“materially different” to those sold by Plaintiff or Authorized Resellers since they do not come
with the Warranty, Opp’n at 8; Am. Compl. ¶¶ 74, 91, 103-05, Exs. B, C ¶ 8, and (2) Defendants
do not handle the Products with the requisite quality controls as mandated by the Reseller
Agreements, Opp’n at 8; Am. Compl. ¶ 110.

The parties do not point the Court to any factually analogous cases. However, the Court
finds Rockwell Automation, Inc. v. Radwell Int’l, Inc., No. 15-cv-05246, 2019 WL 7288946
(D.N.J. Dec. 30, 2019) to be instructive. The Rockwell court thoroughly outlined the contours of
the “material differences” exception to the “first sale” doctrine and the Court adopts that discussion
herein. Id. at *5-8. In Rockwell, a trademark infringement claim survived summary judgment
because the goods sold were “materially different” where they lacked the warranty and customer
service that would have accompanied authorized sales. See id. at *1-3, 9. The court further
explained that “Rockwell has created a closed and exclusive supply chain of its trademarked goods
by obligating a vertical supply network of authorized distributors to sell Rockwell trademarked
goods ONLY to those customers who will NOT re-sell the goods on the gray market.” Id. at *1

(emphasis in original).
Rockwell is persuasive authority; here Plaintiff adequately alleges the goods sold by
Defendants are “materially different” from those sold by Plaintiff or by Authorized Resellers. Like
in Rockwell, Plaintiff alleged that the products sold by Defendant do not come with the Warranty
like authorized sales. Am. Compl. ¶¶ 74, 91, 103-05, Exs. B, C ¶ 8. This Warranty is not
insignificant. Plaintiff advertises various Theragun models that retail at prices between $169 and
$599. See Theragun, THERABODY, https://perma.cc/27TL-RAFB (last visited May 30, 2024). C.f.
Penn Eng’g Mfg. Corp. v. Peninsula Components, Inc., No. 19-cv-513, 2022 WL 3647817, at *12-
13 (E.D. Pa. Aug. 24, 2022) (finding that where a resale extinguished a warranty, the goods were
not “materially different” from the original goods because the products at issue were inexpensive
and simple fasteners that cost only a few cents each and, therefore, the warranty and any customer
service is immaterial). To purchasers from Authorized Resellers, Therabody warrants the Products
“against defects in materials and workmanship when used normally in accordance with

Therabody’s published guidelines . . . .” Therabody Warranty, THERABODY (Apr. 1, 2024),
https://perma.cc/UA2K-4GA3; see also Am. Compl. ¶¶ 44-48, Ex. B.
Moreover, the quality controls that Plaintiff alleges come with Products purchased through
Authorized Resellers are not insignificant. Amongst other things, an Authorized Reseller must (i)
“conduct its business in a manner that reflects favorably on the Products and the good name,
goodwill and reputation of Therabody, in accordance with any guidelines issued by Therabody,”
(ii) “comply with all Therabody procedures . . . including, but not limited to, the Purchase
Requirements,” (iii) “provide its customers . . . with appropriate information regarding the
Products and their safe and effective use,” (iv) “avoid deceptive, misleading, unfair and unethical
practices, which are or might be detrimental to Therabody or the Products,” and (v) “establish and

implement an effective standard operating procedure for the urgent recall of the Products.” Am
Compl. ¶ 73. Plaintiff alleges that Defendant does not abide by these quality controls. Id. ¶ 111.
Plaintiff alleges that such lack of quality controls affects a purchaser’s experience with the
Product in meaningful and important ways. For example, Plaintiff alleges (i) Defendant is unable
to provide accurate, up-to-date information concerning the Products to any customer, id. ¶ 101, (ii)
Defendant does not have an established standard operating procedure in the event of a recall, id. ¶
102, and (iii) Defendant advertises the sale of the Products with misrepresentations, warranties,
and guarantees regarding the Product specifications, features, or capabilities, in ways inconsistent
with Plaintiff’s distributed materials, id. ¶ 108.
If a hypothetical consumer purchases a Theragun from Defendant that is defective, cannot
obtain Warranty coverage, and, when seeking assistance from Defendant, is not afforded the same
experience mandated by Therabody’s quality control requirements for Authorized Resellers, it is
plausible that the purchaser will confuse their purchase with that of an authorized Therabody

product and their negative experience is likely to injure the goodwill developed by Therabody in
the Products. See Iberia Foods Corp., 150 F.3d at 303; Rockwell, 2019 WL 7288946, at *1-3, 9.
Therefore, Plaintiff adequately alleges trademark infringement under 15 U.S.C. § 1114 and Count
IV will proceed.
2. Count VII – N.J. Stat. § 56:4-1
New Jersey’s Unfair Competition Act states, in part, that “[n]o merchant, firm or
corporation shall appropriate for his or their own use a name, brand, trade-mark, reputation or
goodwill of any maker in whose product such merchant, firm or corporation deals.” N.J. Stat.
Ann. § 56:4-1. The pleading standards and elements for this statute are the same as those under
the Lanham Act. See Adam Techs., LLC v. Well Shin Tech. Co., No. 18-cv-105313, 2020 WL
2125007, at *2 (D.N.J. May 5, 2020); J&J Snack Foods, Corp. v. Earthgrains Co., 220 F. Supp.

2d 358, 374 (D.N.J. 2002). Therefore, because Plaintiff states a claim for trademark infringement
under the Lanham Act, it also states a claim under New Jersey’s Unfair Competition Act and Count
VII will proceed.
C. Count III (False Advertising - 15 U.S.C. § 1125(a)(1)(B)) Will Proceed
Count III alleges false advertising under 15 U.S.C. § 1125(a)(1)(B). Am. Compl. ¶¶ 149-
68. Defendant argues that Plaintiff has not (i) identified any false or misleading statements made
by Defendant; (ii) alleged that Defendant ever advertised any of Plaintiff’s products for sale; (iii)
identified any actual deception or deception that is likely to influence purchasing decisions; (iv)
identified any products that travelled in interstate commerce; and (v) alleged that any advertising
or representation from Defendant would cause harm to Plaintiff. Mot. at 5-6. The Court disagrees
and finds that Plaintiff alleges all requisite elements under § 1125(a)(1)(B). Therefore, Count III
will proceed.
Under § 1125(a)(1)(B), “[a]ny person who, on or in connection with any goods . . ., uses

in commerce any word, term, name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false or misleading representation
of fact, which . . . in commercial advertising or promotion, misrepresents the nature,
characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or
commercial activities,” is liable for false advertising. The elements of a claim for false advertising
under § 1125(a)(1)(B) are: “1) that the defendant has made false or misleading statements as to his
own product [or another’s]; 2) that there is actual deception or at least a tendency to deceive a
substantial portion of the intended audience; 3) that the deception is material in that it is likely to
influence purchasing decisions; 4) that the advertised goods traveled in interstate commerce; and
5) that there is a likelihood of injury to the plaintiff in terms of declining sales, loss of good will,

etc.” Parks LLC v. Tyson Foods, Inc., 863 F.3d 220, 226 n.7 (3d Cir. 2017) (alteration in original).
Here, Plaintiff pleads all requisite elements. Plaintiff alleges that Defendant’s false and
misleading statements include asserting that the Products come with the Warranty, when in fact,
they do not. Am. Compl. ¶¶ 107-08. The allegations sufficiently plead a tendency to deceive a
substantial portion of the intended audience. As discussed supra, the Theragun is an expensive
product and one for which a Warranty would likely be important for a purchaser. Under these
circumstances, Defendant’s alleged representation that the Products come with the Warranty when,
in fact, they do not, at least has the tendency to deceive a substantial portion of the intended
audience. As alleged, the purchaser would be better off purchasing the Theragun with the
Warranty than one without the Warranty and a rational purchaser, without being deceived, would
opt not to purchase a Theragun from Defendant in favor of one with the Warranty.
Plaintiff also adequately pleads a likelihood of injury resulting from the loss of good will.
As discussed supra, purchasers who need to rely on the Warranty only to find that they were misled

by Defendant will likely associate that significant negative experience with Therabody’s brand,
thereby injuring the goodwill Therabody has worked hard to develop and protect.
Plaintiff also adequately pleads that the goods travelled in interstate commerce. Although
Paragraph 153 of the Amended Complaint5 is conclusory, Plaintiff also alleges that “Defendant
is flooding the e-commerce marketplace” with the advertised goods. Am. Compl. ¶ 89. At the
motion to dismiss stage, where only notice pleading is required, it is sufficient to allege that
Defendant sells the products online as “claims arising out of Internet advertising implicate
interstate commerce based on the very nature of the Internet which has potential to reach a
worldwide audience.” Hinton v. Sansom Street, Inc., No. 20cv1515, 2021 WL 1313107, at *5
(E.D. Pa. Apr. 7, 2021) (citing United States v. MacEwan, 445 F.3d 237, 244-245 (3d Cir. 2006)).

Without discovery, Plaintiff may not know which states Defendant sells its products in. However,
weighing all reasonable inferences in Plaintiff’s favor, alleging that Defendant sells the Products
in “e-commerce” sufficiently alleges that the advertised goods traveled in interstate commerce.6

5 “Plaintiff understands that Defendant has willfully and knowingly used, and continued to use,
the Trademarks in interstate commerce for the purposes of advertising, promoting, distributing,
and selling the Products without Plaintiff’s consent.” Am Compl. ¶ 153.
6 Plaintiff cites Industria de Alimentos Zenu v. Latinfood U.S. Corp., No. 16-cv-6576, 2017 WL
6940696, at *11 (D.N.J. Dec. 29, 2017) for the proposition that it does not need to plead that the
advertised goods traveled in interstate commerce. Opp’n at 11. However, Latinfood does not
stand for this proposition. The discussion that Plaintiff refers to in Latinfood is regarding whether
there is a Lanham Act requirement that Plaintiff first use trademarks at issue in U.S. commerce.
See Latinfood, 2017 WL 6940696, at *11-13. The Latinfood court stated that there “is no Third
Circuit holding on this issue.” Id. at *13. In contrast, the Third Circuit has clearly stated that an
element under § 1125(a)(1)(B) is that that the advertised goods traveled in interstate commerce.
Because Plaintiff has adequately alleged all requisite elements under § 1125(a)(1)(B),
Count III will proceed.
D. Count VI (Trademark Dilution – 15 U.S.C. § 1125(c)) Will Proceed
Count VI alleges trademark dilution in violation of 15 U.S.C. § 1125(c). Am. Comp. ¶¶
223-36. Defendant argues that Plaintiff does not adequately allege that (i) the Trademarks are

“famous”; (ii) Defendant is using the Trademarks in interstate commerce; (iii) Defendant’s use
began after the Trademarks became famous; and (iv) Defendant’s use causes dilution by lessening
the capacity of the Trademarks to identify and distinguish goods or services. Mot. at 8-9. The
Court finds that Plaintiff adequately alleges all requisite elements under § 1125(c). Therefore,
Count VI will proceed.
Pursuant to § 1125(c), “[s]ubject to the principles of equity, the owner of a famous mark
that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction
against another person who, at any time after the owner’s mark has become famous, commences
use of a mark or trade name in interstate commerce that is likely to cause dilution by blurring or
dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or

likely confusion, of competition, or of actual economic injury.” This cause of action “grants extra
protection to strong, well-recognized marks even in the absence of a likelihood of consumer
confusion . . . if the defendant’s use diminishes or dilutes the strong identification value associated
with the plaintiff’s famous mark.” Times Mirror Magazines, Inc. v. Las Vegas Sports News,
L.L.C., 212 F.3d 157, 163 (3d Cir. 2000).

Parks, 863 F.3d at 226 n.7; Warner-Lambert Co. v. Breathasure, Inc., 204 F.3d 87, 92 (3d Cir.
2000). Indeed, the Latinfood court cites Warner-Lambert for this very proposition. Latinfood,
2017 WL 6940696, at *16 (citing Warner-Lambert, 204 F.3d at 91-92).
The elements of the claim are (i) the plaintiff is the owner of a mark that qualifies as
“famous,” as defined by the factors listed in § 1125(c)(2)(A)7; (ii) the defendant is making
commercial use in interstate commerce of a mark or trade name; (iii) the defendant’s use began
after the plaintiff’s mark became famous; and (iv) the defendant’s use causes dilution by lessening

the capacity of the plaintiff’s mark to identify and distinguish goods or services. See Times Mirror
Magazines, 212 F.3d at 163.
Here, Plaintiff alleges all requisite elements. Plaintiff alleges it owns the Trademarks. Am.
Compl. ¶ 16, Ex. A. Plaintiff also adequately alleges that the Trademarks are “famous” as defined
by § 1125(c)(2)(A). Plaintiff alleges that its marks are widely recognized by the general U.S.
consuming public. For example, it alleges that it widely promotes its products in traditional online
outlets, through social media platforms, in popular television shows and media outlets throughout
the entertainment industry, and through traditional print advertising. Am. Compl. ¶¶ 22-27, 226.
Plaintiff alleges that these efforts “resulted in the explosion of popularity in marketplaces with
positive consumer reviews . . . .” Id. ¶ 30. Moreover, the THERAGUN® brand, in particular, is

so well known that it is now be considered a household name akin to “Band-Aid” or “Kleenex.”
See Gogo Zoger, How Therabody Became Synonymous with Recovery and Wellness, SHOPIFY (Jan.
5, 2023), https://perma.cc/QW3X-DVWA. These alleged promotional efforts and resulting
recognition, if proven, establish the Trademarks as “famous.” See Parikh Worldwide Media, 2021
WL 856901, at *4.

7 Section 1125 has been amended since the Third Circuit decided Times Mirror Magazines.
Although the Third Circuit cites eight factors in § 1125(c)(1) for determining whether a mark is
“famous,” the current version of § 1125 lists the relevant factors in subsection (c)(2)(A).
Additionally, a mark may still be famous under § 1125(c)(2)(A), even if not famous to the general
public, “where both the plaintiff and defendant are operating in the same or related markets, so
long as the plaintiff’s mark possesses a high degree of fame in its niche market.” Times Mirror
Magazines, 212 F.3d at 164.
Plaintiff also alleges that Defendant’s use of the Trademarks began after the Trademarks
became famous. August 31, 2023 is the earliest date that the Amended Complaint alleges Plaintiff
used the Trademarks. Am. Compl. ¶ 92. Plaintiff filed applications for the Trademarks with the
United States Patent and Trademark Office between 2016 and 2020. Id. Ex. A. While it is at least

conceivable that, with fact discovery, Defendant may be able to show that at least some of the
Trademarks were not famous before it used the marks, at the motion to dismiss stage, Plaintiff’s
allegations are sufficient to allege the Trademarks were famous prior to August 31, 2023. This is
because Plaintiff alleges it took actions to make the marks famous prior to that date. See supra;
Am. Compl. ¶¶ 22-27, 30, 226; Gogo Zoger, How Therabody Became Synonymous with Recovery
and Wellness, SHOPIFY (Jan. 5, 2023), https://perma.cc/QW3X-DVWA.
Plaintiff further adequately alleges that Defendant’s use caused dilution by lessening the
capacity of the Trademarks to identify and distinguish the Products. This is a lesser standard than
the consumer “confusion” standard applicable to trademark infringement. See Times Mirror
Magazines, 212 F.3d at 163. Therefore, for the same reasons the Court finds that Plaintiff alleges

Defendant’s use of the Trademarks causes a likelihood of confusion, supra, it finds that Plaintiff
alleges Defendant’s use caused dilution by lessening the capacity of the Trademarks to identify
and distinguish the Products.
Finally, Plaintiff alleges that Defendant is making commercial use in interstate commerce
of the Trademarks. See supra; Am. Compl. ¶ 90 (“Defendant is flooding the e-commerce market
. . . .”); Hinton, 2021 WL 1313107, at *5 (citing MacEwan, 445 F.3d at 244-245). Therefore, since
all requisite elements of this claim have been adequately plead, Count VI will proceed.
E. Count II (Common Law Unfair Competition), Count V (Unfair Competition –
15 U.S.C. § 1125(a)), and Count VIII (Unfair Competition – N.J. Stat. Ann. §
56:4-1) Will Proceed
Count II alleges New Jersey common law unfair competition8, Am. Compl. ¶¶ 127-48;
Count V alleges unfair competition under 15 U.S.C. § 1125(a), id. ¶¶ 198-222, and Count VIII
alleges unfair competition under N.J. Stat. Ann. § 56:4-1, id. at 266-90. Defendant argues that
both New Jersey and federal unfair competition claims should be dismissed because the analysis
mirrors that under the federal false advertising claim, and because the Amended Complaint does
not adequately allege the elements of a federal false advertising claim. Mot. at 5-6, 8. The Court
finds that Plaintiff adequately alleges unfair competition under New Jersey common law and under
federal and New Jersey statutory law.
“[U]nfair competition claims under New Jersey statutory and common law mirror unfair
competition claims under § 43(a) of the Lanham Act”—the elements are the same. N.Y. Mach.
Inc. v. Korean Cleaners Monthly, No. 17-cv-12269, 2018 WL 2455926, at *4 (D.N.J. May 31,
2018). Moreover, unfair competition claims under § 1125(a)(1)(A) and trademark infringement
under § 1114 are measured by “identical standards.” A&H Sportswear, 237 F.3d at 210. To the

extent there are district courts cited by Defendant that appear to hold otherwise, the Court is not
bound by those decisions and follows binding Third Circuit precedent in A&H Sportswear.
The Court finds, supra, that the Plaintiff states a claim for trademark infringement under
the Lanham Act. Therefore, under A&H Sportswear, Plaintiff also states a claim for unfair
competition under the Lanham Act. Furthermore, because Plaintiff states a claim for unfair
competition under the Lanham Act, it also states a claim for unfair competition under New Jersey

8 “There is no federal general common law” and, with the exception of federal statutes or federal
constitutional claims, courts must apply state law to disputes. Erie R. Co. v. Tompkins, 304 U.S.
64, 78 (1938). Therefore, although the Amended Complaint does not so specify, the Court
construes Count II as asserting a claim under N.J. state common law.
common law and N.J. Stat. Ann. § 56:4-1. See N.Y. Mach., 2018 WL 2455926, at *4. As such,
Counts II, V, and VIII will proceed.
F. The Court Will Not Stay This Case
Defendant argues this case should be stayed pending the determination of a patent case
pending against Therabody in the United States District Court for the District of Delaware, Hyper

Ice, Inc., et. al. v. Therabody, Inc., No. 24-cv-04 (D. Del. 2024). Mot. at 11, Ex. A. The Court
disagrees.
‘[T]he power to stay proceedings is incidental to the power inherent
in every court to control the disposition of the causes on its docket
with economy of time and effort for itself, for counsel, and for
litigants.’ Landis v. N. Am. Co., 299 U.S. 248, 254 (1936). It ‘calls
for the exercise of judgment, which must weigh competing interests
and maintain an even balance.’ Id. at 254-55. The requesting party
bears the heavy burden of ‘mak[ing] out a clear case of hardship or
inequity in being required to go forward, if there is even a fair
possibility that the stay for which he prays will work damage to
someone else.’ Id. at 255.

ADP, Inc. v. Wise Payments Ltd., No. 21-cv-12457, 2023 WL 3775319, at *3 (D.N.J. July 19,
2023) (alteration in original). “A court should consider the following in deciding whether to grant
a motion to stay: ‘(1) [j]udicial efficiency as measured by the stage of the civil litigation and the
stay's potential to simplify the issues; (2) harm or unfair prejudice to the non-moving party that
will result from the grant of a stay; and (3) the hardship and inequity to the moving party if the
stay is denied.’” Shaf Int’l, Inc. v. Ultimate Leather Apparel, Inc., No. 20-cv-2569, 2021 WL
409757, at *2 (D.N.J. Feb. 5, 2021) (quoting Tigercat Int'l v. Caterpillar Inc., No. 16-cv-1047,
2018 WL 2049816, *2 (D. Del. May 2, 2018)).
Here, Defendant’s request for a stay based on Hyper Ice is moot because, on February 23,
2024, Therabody was voluntarily dismissed from Hyper Ice and the case was closed. Hyper Ice,
No. 24-cv-04, D.E. 18 (D. Del. 2024).9 Therefore, the Court will not stay this case.
IV. CONCLUSION

For the foregoing reasons, Defendant’s motion to dismiss, or, in the alternative, for a stay
will be DENIED. All counts will proceed, and the Court will not stay this case.

Dated: July 10, 2024
s/ Evelyn Padin
Evelyn Padin, U.S.D.J.

9 The Court notes that Defendant did not inform the Court that Hyper Ice had been resolved after
it filed its motion. The Court expects parties to update it if case law that is cited no longer provides
support for a party’s position due to intervening changes in the cited case’s posture.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10656215. Public record. Not legal advice.