Opinion

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION

LONG-LOK, LLC, :

:

Plaintiff, : Case No. 1:25-cv-346

:

vs. : Judge Jeffery P. Hopkins

:

SAFETY SOCKET, LLC,

:

:

Defendant.

:

OPINION AND ORDER

This case arises from a trademark dispute between parties that had done business

together for an extended period, Plaintiff Long-Lok, LLC (“Plaintiff” or “Long-Lok”) and

Defendant Safety Socket, LLC (“Defendant” or “Safety Socket”). Well into the parties’

history together, Safety Socket allegedly threatened Long-Lok with allegations of trademark

infringement. In turn, Long-Lok brought this action for trademark cancellation as well as

declaratory and injunctive relief contending that the trademark Safety Socket seeks to enforce

for fasteners it manufactures is merely functional or has been abandoned, terms of art defined

under the Lanham Act, and addressed later in the opinion, but for now meaning that the mark

is unenforceable. See 15 U.S.C. § 1064(3). Safety Socket is before the Court seeking partial

dismissal of two of Long-Lok’s claims, namely Counts One and Eight of the Amended

Complaint. Doc. 18.

For the reasons stated below, Safety Socket’s now fully-briefed Partial Motion to

Dismiss (Doc. 18) is GRANTED IN PART and DENIED IN PART.

I. BACKGROUND

Plaintiff, Long-Lok, operates in the aerospace industry. Am. Compl., Doc. 13, ¶¶ 2,

13. It is an engineered-fastener company that modifies existing fasteners to make them self-

locking and self-sealing for its aerospace customers. Id. And, until it got out of the fabricating

business, Defendant Safety Socket LLC had for many years been a manufacturer of high-

strength fasteners along with socket-head cap screws, for commercial and military

applications. Id. ¶ 12. This case concerns modifications made by Plaintiff, Long-Lok, to

Defendant, Safety Socket’s socket-head fasteners.

For more than fifty years, Long-Lok engineered self-locking fasteners used in

aerospace applications. Id. ¶ 2. Rather than manufacture fasteners from raw materials, Long-

Lok simply took standard fasteners supplied by a customer or purchased fasteners requested

by a customer from a manufacturer or distributor, like Defendant Safety Socket, and modified

those products for them for use in the aerospace industry. Id. ¶¶ 3, 18.

Long-Lok alleges that it has had a business relationship with Safety Socket for many

years. Since at least 2005, Safety Socket has submitted purchase orders requesting that Long-

Lok add self-locking mechanisms to Safety Socket fasteners and then return the modified

fasteners to Safety Socket for resale. Id. ¶ 27. And, since at least 2010, Long-Lok has

purchased from Safety Socket fasteners and modified them for customers other than Safety

Socket. Id. ¶ 28. In performing this work, Long-Lok adds one of three self-locking

mechanisms: a Long-Lok strip, Poly-Lok patch, or Tek-Lok pellet. Id. ¶¶ 13–16, 18. Long-

Lok alleges that these mechanisms reduce vibration and are visible on the exterior of the

fastener. Id. ¶¶ 13, 17. Long-Lok further alleges that it performs all modifications according

to customer specifications and does not maintain an inventory of Safety Socket fasteners

equipped with a self-locking mechanism. Id. ¶ 19.

Long-Lok maintains that, whenever a customer provides the fastener, it provides

documentation identifying the modifications it made. Id. ¶ 22. Wherever Long-Lok procures

the fastener, it sends the completed part with documents reflecting the fastener’s chain of

custody, including the original manufacturer’s paperwork and Long-Lok’s certification

concerning its modifications. Id. According to Long-Lok, it does not alter paperwork prepared

by Safety Socket; instead, it adds its own paperwork and transmits the complete certification

packet to the customer. Id.

Safety Socket claims ownership of U.S. Trademark Registration No. 4,903,629, a

design mark depicting two bands of diagonal knurls around a fastener head (the “Banded

Knurl Mark”). Id. ¶ 24. Safety Socket also claims ownership of a SAFETY SOCKET word

mark and a stylized SAFETY SOCKET mark. Id. ¶ 26. Most of the Safety Socket fasteners

that Long-Lok modifies allegedly bear the Banded Knurl Mark. Id. ¶ 30. Long-Lok does not

remove the mark in the course of adding its self-locking mechanisms. Id. Long-Lok alleges,

however, that the modification is apparent because the self-locking mechanism is visible and,

for certain aerospace parts, Long-Lok adds a six-dot head marking to signify that the part

includes a self-locking mechanism. Id. ¶¶ 21, 30. Long-Lok also alleges that the paperwork it

supplies customers identifies Safety Socket as the original manufacturer and identifies Long-

Lok as the entity responsible for the strip, patch, or pellet modification. Id. ¶ 31.

According to Long-Lok, Safety Socket transitioned in 2023 from a manufacturing-and-

service company to a company providing services. Also according to Long-Lok, Safety Socket

now provides services for customers that include consulting regarding product failures,

standards, materials transitions, and litigation. Id. Long-Lok alleges that Safety Socket

therefore ceased manufacturing products, including the fasteners at issue, in 2023. Id. ¶ 42.

Long-Lok further alleges that Safety Socket has no intention to resume use of the Banded

Knurl Mark because the mark was used exclusively on Safety Socket’s manufactured fasteners

and Safety Socket had announced its transition to a purely service company. Id. ¶ 43.

In early March 2024, representatives of the parties attended a National Aerospace

Standards Committee meeting concerning revisions to a fastener-procurement specification.

Id. ¶ 33. After a Long-Lok representative voiced disagreement with Safety Socket founder Jim

Erb’s proposed language regarding trademark infringement and liability, the parties

subsequently discussed by telephone Mr. Erb’s position on trademark infringement. Id. ¶ 34.

Those discussions apparently did not go well because on March 19, 2025, Safety Socket sent

Long-Lok a cease-and-desist letter. Id. ¶ 35. The letter asserted that Long-Lok’s modification,

distribution, and sale of Safety Socket fasteners infringed Safety Socket’s trademark rights and

violated other state and federal laws. Id. Safety Socket also commented in the letter that it had

successfully litigated similar disputes involving entities that modified its parts and placed them

into commerce. Id.

Undaunted by Safety Socket’s cease-and-desist letter, Long-Lok filed the current eight-

count Amended Complaint presently before the Court. Counts One and Eight are the only

ones at issue here. In Count One, Long-Lok seeks cancellation of the Banded Knurl Mark

under 15 U.S.C. § 1064. Id. ¶¶ 36–44. Long-Lok alleges that the mark is functional because

the two bands of diagonal knurls provide a better grip when using the fastener to affix

components, are essential to the fastener’s use or purpose, and affect its quality. Id. ¶¶ 25, 39.

Long-Lok further alleges that Safety Socket’s exclusive use of the feature hinders competitors’

ability to create an equivalent gripping mechanism. Id. ¶¶ 25, 41. As an alternative basis for

cancellation, Long-Lok alleges that Safety Socket abandoned the Banded Knurl Mark when

it ceased manufacturing products in 2023 and did not intend to resume use of the mark. Id.

¶¶ 42–44.

In Count Eight, Long-Lok seeks a declaratory judgment from the Court determining

that Safety Socket abandoned its trademark rights in the Banded Knurl Mark and that

abandonment would bar a future infringement claim by Safety Socket. Id. ¶¶ 93–98. Count

Eight rests on the same alleged discontinuation of use and lack of intent to resume use alleged

in Count One. Id. ¶¶ 95–98. To counter, Safety Socket has moved under Federal Rule of Civil

Procedure 12(b)(6) for dismissal of Counts One and Eight. Doc. 18. Long-Lok opposes the

Motion. Doc. 20. Safety Socket has filed a reply. Doc. 22. The Motion is now ripe for

adjudication.

II. STANDARD OF REVIEW

A party may move to dismiss a complaint for “failure to state a claim upon which relief

can be granted” under Rule 12(b)(6) of the Federal Rules of Civil Procedure. Fed. R. Civ. P.

12(b)(6). To survive a motion to dismiss, a complaint must include “only enough facts to state

a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570

(2007). This, however, requires “more than labels and conclusions [or] a formulaic recitation

of the elements of a cause of action,” and the “[f]actual allegations must be enough to raise a

right to relief above the speculative level.” Id. at 555. “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.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).

Indeed, under the plausibility standard set forth in Twombly and Iqbal, courts play an

important gatekeeper role, ensuring that claims meet a plausibility threshold before

defendants are subjected to the potential rigors (and costs) of the discovery process.

“Discovery, after all, is not designed as a method by which a plaintiff discovers whether he

has a claim, but rather a process for discovering evidence to substantiate plausibly-stated

claims.” Green v. Mason, 504 F. Supp. 3d 813, 827 (S.D. Ohio 2020).

In deciding a motion to dismiss, the district court must “construe the complaint in the

light most favorable to the plaintiff, accept its allegations as true, and draw all reasonable

inferences in favor of the plaintiff.” Directv, Inc. v. Treesh, 487 F.3d 471, 476 (6th Cir. 2007).

In doing so, the district court “need not accept as true legal conclusions or unwarranted

factual inferences.” Gregory v. Shelby County, 220 F.3d 433, 446 (6th Cir. 2000).

III. LAW AND ANALYSIS

As noted, Safety Socket moves to dismiss Counts One and Eight of the Amended

Complaint on the basis that Long-Lok has not plausibly alleged that the Banded Knurl Mark

is either functional or abandoned. Doc. 18. As part of its Motion, Safety Socket asks the

Court to take judicial notice of materials beyond the Amended Complaint that, in Safety

Socket’s view, undermine Long-Lok’s claims. Docs. 18-1, 18-2, 18-3, 18-4, 18-5, 18-6, 18-7,

18-8, 18-9, 18-10. Long-Lok objects to this Court’s consideration of any materials Safety

Socket has proffered outside-the-complaint, and asserts that it has plausibly alleged claims

under Counts One and Eight of the Amended Complaint. Doc. 20.

A. Scope of the Record

The Court first considers the scope of the record. As stated, Safety Socket relies on

materials outside the Amended Complaint, including filings from the U.S. Patent and

Trademark Office (“USPTO”) and the Trademark Trial and Appeals Board (“TTAB”), prior

litigation involving Safety Socket and a third party, see Safety Socket v. Relli Technology, Inc.,

No. 18-cv-6670 (N.D. Ill.), and declarations from James Erb and Steven Shebar. Safety Socket

asks the Court to take judicial notice of the USPTO and TTAB filings, along with the

proceedings in Relli, and to consider those filings, proceedings, and the Erb and Shebar

declarations in deciding whether dismissal of Counts One and Eight is appropriate.

Ordinarily, a court is confined to the pleadings in considering a Rule 12(b)(6) motion

to dismiss, or else it must convert the motion into one for summary judgment under Rule 56.

Elec. Merch. Sys. LLC v. Gaal, 58 F.4th 877, 883 (6th Cir. 2023). “[W]hen a document is

referred to in the pleadings and is integral to the claims,” then the court can consider that

document without converting the motion into one for summary judgment. Commercial Money

Ctr., Inc. v. Ill. Union Ins. Co., 508 F.3d 327, 335–36 (6th Cir. 2007). The same is true for

documents of which the court can take judicial notice, like “‘matters of public record, orders,

items appearing in the record of the case, [or] exhibits attached to the complaint.’” Elec.

Merch., 508 F.3d at 883 (quoting Golf Vill. North LLC v. City of Powell, 14 F.4th 611, 617 (6th

Cir. 2021)). If, however, a party offers documents that fall outside these limited categories,

the court must “expressly exclude outside-the-complaint materials” or “convert the motion to

one for summary judgment.” Cotterman v. City of Cincinnati, No. 21-3659, 2023 WL 7132017,

at *4 (6th Cir. Oct. 30, 2023) (citing Max Arnold & Sons, LLC v. W.L. Hailey & Co., 452 F.3d

494, 503 (6th Cir. 2006)); Fed. R. Civ. P. 12(d). If the court deems conversion of the motion

appropriate, the court must first give all parties “a reasonable opportunity to present all the

material that is pertinent to the motion.” Fed. R. Civ. P. 12(d).

i. The USPTO and TTAB Filings

Turn first to the USPTO and the TTAB filings. Safety Socket wants this Court to

consider these documents to show that the issue of functionality was raised in the USPTO

proceedings, that Safety Socket submitted evidence rebutting functionality, and that the

Banded Knurl Mark was registered. Doc. 22, PageID 444–45. Long-Lok does not contest

documentation that shows the Banded Knurl Mark was registered and acknowledges that

trademark registration for that mark may be considered without converting Safety Socket’s

motion into one for summary judgment since Long-Lok referred to it in the first instance in

the Amended Complaint. See Doc. 20, PageID 422 n.1 (citing Def. Ex. A, Doc. 18-2, PageID

330–35). Long-Lok, however, asserts that judicial notice of the other documents filed in the

case, which are being urged for consideration by the Court in the context of the motion to

dismiss, must be limited to the mere existence of the records themselves, and should not

extend to facts that are subject to reasonable dispute, such as those related to functionality.

Id. at PageID 426–28.

Generally, courts may take judicial notice of USPTO and TTAB filings because those

filings are government records that are publicly available. Scotts Co., LLC v. SBM Life Sci. Corp.,

No. 2:23-cv-1541, 2025 WL 2653809, at *6 (S.D. Ohio Sept. 16, 2025). Here, however, it is

improper to take judicial notice of the USPTO and TTAB filings in the manner that Safety

Socket intends. Safety Socket reasons that because functionality was raised in the USPTO

proceedings, Safety Socket submitted evidence rebutting functionality, and the Banded Knurl

Mark was ultimately registered, then Long-Lok has failed to plausibly allege a trademark

cancellation claim on the basis of functionality.

To accept this argument, however, we would need to disregard the principle that courts

should take judicial notice “only for the fact of the documents’ existence, and not for the truth

of the matters asserted therein.” Passa v. City of Columbus, 123 F. App’x 694, 697 (6th Cir.

2005). Otherwise, Safety Socket’s request would require this Court to take judicial notice of

facts that are subject to reasonable dispute relating to functionality. Pinterest Inc. v. Pintrips,

Inc., 15 F. Supp. 3d 992, 997 (N.D. Cal. 2014) (“As such, while the USPTO records may be

subject to judicial notice, they are noticeable only for the limited purpose of demonstrating

that the filings and actions described therein occurred on certain dates.”). Though the

registered Banded Knurl Mark is entitled to a presumption of validity, and thus,

presumptively nonfunctional, such a presumption does not automatically preclude a party

like Long-Lok from asserting a plausible cancellation claim based on functionality. Goscicki v.

Custom Brass & Copper Specialties, Inc., 229 F. Supp. 2d 743, 749 (E.D. Mich. 2002). Thus, the

Court cannot take judicial notice of the USPTO and TTAB filings in the manner that Safety

Socket requests, save for the trademark registration for the Banded Knurl Mark that was

referred to in the Amended Complaint. Passa, 123 F. App’x at 697; see Fed. R. Evid. 201.

ii. The Relli Proceedings

Next the Court considers the judicial proceedings in Safety Socket v. Relli Technology,

Inc., No. 18-cv-6670 (N.D. Ill.). Safety Socket wants this Court to consider a jury verdict in

that case “finding the Banded Knurl to be a validly registered trademark, resulting in a legal

presumption of non-functionality” and “a judicial ruling denying an adverse party’s attempt

to reverse that jury verdict.” Doc. 22, PageID 445. Long-Lok objects to Safety Socket’s

attempt for the same reason it objected to the USPTO and TTAB filings—that is, it is not

appropriate to take judicial notice of those proceedings in an effort to show that functionality

of the Banded Knurl Mark has been litigated. Doc. 20, PageID 425.

Like the USPTO and TTAB filings, a court may as a general matter take notice of

judicial proceedings on a motion to dismiss without converting the motion to one for

summary judgment. Winget v. JP Morgan Chase Bank, N.A., 537 F.3d 565, 576 (6th Cir. 2008).

But the court may do so “not for the truth of the facts recited [in a judicial proceeding], but

for the existence of [the proceeding], which is not subject to reasonable dispute over its

authenticity.” Id. Here, however, Safety Socket asks this Court to take judicial notice of the

proceedings in Relli for the same reason it requests judicial notice of the USTPO and TTAB

filings: to show that functionality has been addressed in relation to the Banded Knurl Mark.

But as with the USPTO and TTAB filings, this Court cannot take judicial notice of the Relli

proceedings in the manner that Safety Socket intends, nor properly consider those proceedings

as the information related thereto constitutes outside-the-complaint materials that is improper

to account for at this early stage in the proceedings, especially considering that functionality

is a question of fact yet to be decided. Fuji Kogyo Co., Ltd. v. Pac. Bay Int’l, Inc., 461 F.3d 675,

681 (6th Cir. 2006).

iii. The Declarations

That leaves the final category of documents that constitute outside-the-complaint

materials: two declarations, one from James Erb (the “Erb Declaration”), Safety Socket’s

President and Chief Executive Officer, and the other from Steve Shebar (the “Shebar

Declaration”), Safety Socket’s lead trial counsel. Erb Decl., Doc. 18-1; Shebar Decl., Doc.

18-3. These declarations are not subject to judicial notice; thus, the inquiry related to them

turns on whether the information set forth in either declaration “is referred to in the pleadings

and is integral to the claims.” Commercial Money Ctr., Inc., 508 F.3d at 335–36.

Though the information in the Erb and Shebar declarations appears to be integral to

the claims, the information exceeds that which is referred to in the pleadings. For example,

aside from discussing trademark registration of the Banded Knurl Mark, the Shebar

declaration describes Safety Socket’s dealings with the USPTO and TTAB and the Relli

proceedings, matters that are clearly outside that which are referred to in the Amended

Complaint. Likewise, the Erb declaration contains factual information that counters Long-

Lok’s allegations in the Amended Complaint related to functionality, and it would be

improper to consider that information at this stage. Feighner Co., Inc. v. Thru-Flow, Inc., No.

1:22-cv-709, 2022 WL 18540546, at *2 (W.D. Mich. Oct. 28, 2022) (finding an affidavit

attached to a motion to dismiss to be outside the pleadings because the averments in the

affidavit contradicted allegations in the complaint).

Safety Socket has not asked this Court to convert its motion to dismiss into one for

summary judgment, and Safety Socket has moved to dismiss only two of Long-Lok’s claims—

Counts One and Eight of the Amended Complaint. Under these circumstances, converting

Safety Socket’s motion into one for summary judgment would be neither prudent nor in the

interests of justice; accordingly, the Court must exclude the Erb and Shebar declarations.

Randick v. Sawhill, 530 F. Supp. 3d 720, 723 (E.D. Mich. 2021) (declining to consider a

declaration attached to a motion to dismiss because the declaration presented facts not alleged

in the complaint); Luis v. Zang, 833 F.3d 619, 632 (6th Cir. 2016) (finding it premature to rely

on an affidavit at the motion to dismiss stage where the affidavit was “plainly not referred to

in the complaint” (citation omitted)).

B. Cancellation Based on Functionality and Abandonment (Count One)

As to Count One, Long-Lok seeks cancellation of Safety Socket’s Banded Knurl Mark

on two theories: functionality and abandonment. Am. Compl., Doc. 13, ¶¶ 36–44. Safety

Socket contends, however, that Long-Lok’s functionality allegations are conclusory and

implausible because socket-head fasteners are designed to be operated with a socket wrench,

not by gripping the fastener head, and because Long-Lok does not allege facts showing that

the design affects cost or quality or satisfies other recognized functionality considerations.

Safety Socket further contends that the registration creates a presumption of non-functionality

that Long-Lok has not plausibly rebutted.

Similarly, with regard to abandonment, Safety Socket argues that the alleged shift

away from manufacturing does not establish discontinued trademark use or an intent not to

resume use, particularly in light of Long-Lok’s allegation that it continues to acquire and

modify Safety Socket fasteners bearing the mark, and that the asserted period of nonuse is

insufficient to invoke the statutory abandonment presumption.

To state a claim under 15 U.S.C. § 1119, Long-Lok must plausibly allege a valid

ground for cancellation of the Banded Knurl Mark.1 Section 1064 of the Lanham Act limits

the grounds on which a party may seek cancellation of a trademark registration that has been

registered for five years. NetJets Inc. v. IntelliJet Group, LLC, 678 F. App’x 343, 348 (6th Cir.

1 In addition to establishing a valid ground for cancellation, Long-Lok must show that it “‘has standing to

petition for cancellation because it is likely to be damaged[.]’” CFE Racing Prods., Inc. v. BMF Wheels, Inc., 793

F.3d 571, 593 (6th Cir. 2015) (quoting Coach House Rest. v. Coach & Six Rests., 934 F.2d 1551, 1557 (11th Cir.

1991)). There is no dispute that Long-Lok has done so. Safety Socket has allegedly threatened Long-Lok

with claims of trademark infringement; thus, Long-Lok has standing. Am. Compl., Doc. 13, ¶ 37. See Scotts

Co. LLC v. SBM Life Sci. Corp., No. 2:23-cv-1541, 2025 WL 2653809, at *3 (S.D. Ohio Sept. 16, 2025) (“SBM’s

standing to bring cancellation claims under § 1119 is not contested and is clear: Scotts is suing SBM for

trademark infringement regarding, in part, the same registered trademarks that SBM now seeks to cancel.”).

2017 (citing 15 U.S.C. § 1064). As is the case here, once that five-year period has elapsed, a

cancellation petition may proceed only on specified grounds, such that the mark is functional

or has been abandoned. 15 U.S.C. § 1064(3). “The functionality doctrine . . . forbids the use

of a product’s feature as a trademark where doing so will put a competitor at a significant

disadvantage because the feature is ‘essential to the use or purpose of the article’ or ‘affects

[its] cost or quality.’” Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 169 (1995) (quoting

Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982)). Abandonment occurs when

use of a mark “has been discontinued with intent not to resume such use.” 15 U.S.C. § 1127.

Long-Lok’s cancellation claim based on functionality survives dismissal, albeit

narrowly. In the Amended Complaint Long-Lok alleges that the Double Banded Knurl

feature at the top of the fastener is “essential” because “it confers the specific, utilitarian, and

functional advantage of a better grip to consumers to aid in using the fasteners to affix various

components to one another.” Am. Compl., Doc. 13, ¶ 39. But is “better grip” enough at this

stage? Safety Socket counters that it is not because “socket head fasteners such as the ones

bearing [the Banded Knurl Mark], have no need whatsoever for any ‘gripping ability,’ since

they are turned, by definition and design, by inserting a socket wrench into the socket head.”

Doc. 22, PageID 443–44.

Though Long-Lok’s functionality allegations rest on the thinnest of reeds, the parties’

competing factual assertions and counter assertions about whether the Banded Knurl design

provides a meaningful utilitarian benefit in the context of socket-head fasteners cannot be

resolved at the pleading stage by merely accepting Safety Socket’s contrary declaration that

the fasteners are not hand-tightened. Further, as a question of fact, the issue of functionality

is generally not suitable for disposition on a motion to dismiss. Deere & Co. v. FIMCO, Inc.,

No. 5:15-CV-105-TBR, 2015 WL 6043960, at *2 (W.D. Ky. Oct. 15, 2015). And it would be

premature to consider the Morton-Norwich factors that Safety Socket cites, which are more

appropriate to consider against a developed factual record. Doc. 18, PageID 319 (citing Fuji,

461 F.3d at 685 (discussing the Morton-Norwich factors when considering the merits of a

district court’s bench trial determination regarding functionality of a trademark)). Thus,

drawing all reasonable inferences in its favor, Long-Lok’s functionality theory is not subject

to dismissal.

On the other hand, Long-Lok’s cancellation claim does not plausibly state a claim for

abandonment as presently plead. “[F]or a party to succeed on . . . abandonment, it must prove

the elements of both non-use and intent, i.e., that the other party actually abandoned its mark

through non-use and that it intended to do so.” Kellogg Co. v. Exxon Corp., 209 F.3d 562, 575

(6th Cir. 2000). Long-Lok alleges that Safety Socket discontinued use of the Banded Knurl

Mark “in commerce as late as 2023 when it stopped manufacturing products, including the

fasteners at issue,” and that Safety Socket “has no intention to resume use” because the

Banded Knurl Mark “was exclusively used on its manufactured fasteners and Safety Socket

announced to the public that it has transitioned from a manufacturing and service company

to a purely service company.” Am. Compl., Doc. 13, ¶ 42–43. Safety Socket argues that these

allegations are insufficient to state a claim for abandonment because Long-Lok has not shown

a three-year period of non-use, nor adequately alleged that Safety Socket is not still using the

mark. Doc. 18, PageID 322–23.

Safety Socket is correct that a three-year period of nonuse constitutes prima facie

evidence of abandonment. 15 U.S.C. § 1127; see Yellowbook Inc. v. Brandeberry, 708 F.3d 837,

848 (6th Cir. 2013). But this does not automatically mean that Long-Lok has failed to state a

claim. Pleading a consecutive three-year period of nonuse creates only a rebuttable

presumption of abandonment. Absent evidence of a consecutive three-year period of nonuse,

Long-Lok retains the burden of persuasion on both elements: nonuse and intent. Oatly AB v.

D’s Naturals LLC, No. 1:17-cv-840, 2020 WL 5310272, at *3 (S.D. Ohio Sept. 4, 2020).

Even so, Long-Lok has not plausibly alleged these elements. Though Long-Lok has

alleged that Safety Socket discontinued use of the Banded Knurl Mark as late as 2023 when

it stopped manufacturing products with that mark, that it used the Banded Knurl Mark

exclusively on its manufactured fasteners, and that Safety Socket publicly announced it had

transitioned from a manufacturing and service company to purely a service company, Am.

Compl., Doc. 13, ¶¶ 42–43, Long-Lok alleges that it continues to modify fasteners bearing the

Banded Knurl Mark, which lends to the inference that the Banded Knurl Mark still exists in

commerce, id. ¶ 37. Further, the Court recognizes as a general matter that a mark owner, like

Safety Socket, “does not need to use the mark in the precise manner that it was initially used

or registered to prevent abandonment.” Net Jets Inc., 602 F. App’x at 245. Accordingly, the

Court finds that Safety Socket is entitled to dismissal of Count One, only to the extent that

Long-Lok’s claim is predicated on abandonment.

That said, in its opposition, Long-Lok has alternatively requested leave to amend its

Amended Complaint. Rule 15(a)(2) encompasses a “liberal policy of permitting amendments

to ensure the determination of claims on their merits.” Gen. Elec. Co. v. Sargent & Lundy, 916

F.2d 1119, 1130 (6th Cir. 1990) (quoting Marks v. Shell Oil Co., 830 F.2d 68, 69 (6th Cir. 1987)).

Because it is not apparent that amendment would be futile on the present record and since

Safety Socket did not indicate opposition to amendment in its reply, Long-Lok may amend

the allegations in the Amended Complaint to reassert its abandonment theory.

C. Declaratory Judgment Based on Abandonment (Count Eight)

As to Count Eight, Long-Lok seeks a declaratory judgment that Safety Socket

abandoned the Banded Knurl Mark and therefore cannot rely on that mark in a future

infringement action against Long-Lok. Am. Compl., Doc. 13, {/§ 93-98. Because this Court

has determined that Long-Lok has failed to state a plausible claim for cancellation on the

theory of abandonment, Count Eight must also be dismissed. Yet as stated, Long-Lok may

amend its abandonment claims in accordance with Rule 15(a)(2).

IV. CONCLUSION

For the reasons stated, Safety Socket’s Partial Motion to Dismiss (Doc. 18) is

GRANTED IN PART and DENIED IN PART. Long-Lok is permitted leave to amend to

cure the deficiencies stated herein within 14 days of the date of this Order.

IT IS SO ORDERED.

August 21, 2026 GORE Lie bo.

effety (P. Wopkins

United States District Judge

16