Motions To Dismiss In Meritless Trademark Infringement Claims: When To Roll The Dice?

• Published date: 20 November 2023
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Media & Entertainment Law, Broadcasting: Film, TV & Radio, Music and the Arts
• Law Firm: Katten Muchin Rosenman LLP
• Author: Matthew Hartzler

Brands know full well the cost of defending baseless trademark infringement allegations. Even suits that fail to pass the smell test can still lead to eye-watering fees. Winning an easy case on summary judgment still means discovery, document vendors, possibly experts, and complex briefing to analyze eight or more factors in a likelihood of confusion test. Then there is all the burdensome time and effort an organization must go through to search for documents and deal with depositions.

One alternative ' seeking early settlement ' can make the entire endeavor feel like a shakedown, with the plaintiff using the costliness and inefficiencies of the judicial system as a threatening weapon. The other ' seeking a motion to dismiss ' is often avoided due to the ease of satisfying notice pleading. Even after the Supreme Court raised the pleading standard in Ashcroft v. Iqbal in 2009, allegations merely need to be "plausible."¹ Fear of attempting the motion to dismiss is well-founded. McCarthy on Trademarks explains that in trademark infringement suits, "grants of a motion to dismiss are the exception, not the rule."²

This fall, a split Sixth Circuit panel in Bliss Collection v. Latham Companies discussed those exceptions in a case between two regularly warring children's clothing manufacturers.³ Though the suit centered on marks that all but the most visually challenged would consider very dissimilar, the majority ultimately reversed a decision dismissing a trademark infringement suit at that early stage. Thus, the decision does not suggest that meritless suits are easily thrown out of court, but it does demonstrate the possible practical and procedural benefits for defendants in a similar situation.

In its complaint, Bliss described an encroachment over time from the two companies having distinct logos to Latham changing its branding to appear similar to Bliss's marks.

Bliss Collection, LLC v. Latham Companies, LLC, 82 F.4th 499, 508 (6th Cir. 2023)

The dissenting opinion breaks down the differences between the two marks (dissimilar letters, words, sound, overall appearance, fonts and more), concluding, "Only the 'Le logo' background color ' light blue, in a shade resembling 'bliss Blue' ' is an arguably similar element. But the background color, by itself, cannot do the work here."⁴

The majority felt differently, and it evaluated each of the likelihood of confusion factors ' the Frisch factors in the Sixth Circuit ' and determined that more of the individual...