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January 26, 2004.


The opinion of the court was delivered by: RICHARD B. SURRICK, District Judge


Presently before the Court is Defendant, Phillip J. Canella, III's ("Canella") Motion to Dismiss Counts One, Two, Three, Eight, Nine, Ten and Twelve of Plaintiff's Amended Complaint ("Canella's Mot. to Dismiss") (Docket No. 13), and Defendant Joseph V. Pinto's ("Pinto") Motion to Dismiss Counts 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, and 12 of Plaintiff's Amended Complaint ("Pinto's Mot. to Dismiss") (Docket No. 14), documents in support thereof, and Plaintiff, First American Marketing Corporation's ("FAMC") Briefs in Opposition to the Motion(s) to Dismiss (Docket Nos. 15, 16). For the following reasons Defendants' motions will be denied.

I. Background

  Plaintiff provides estate planning and annuity services to senior citizens under the trade name "Senior Informational Services" ("SIS"). (Am. Compl. ¶ 1.) On May 10, 1996, FAMC registered the name "Senior Informational Services" with the Corporations Bureau of the Pennsylvania Department of State. (Id. ¶ 17.) Plaintiff has invested substantial sums of money Page 2 in advertising to publicize its trade name throughout Pennsylvania and has now used the mark and its abbreviation SIS for six years. (Id. ¶ 18.) Currently, SIS has over 5,000 senior citizen clients and FAMC has sponsored seminars, job fairs, and "senior fests" to promote the products and services of SIS. (Id. ¶ 20.) Plaintiff alleges that by virtue of the "substantial use, sales, advertising, and promotion of its name throughout Pennsylvania" the trade name has become distinctive of SIS's marketing services and has an excellent reputation among actual and potential purchasers and users of its services. (Id. ¶ 21.)

  Defendant Canella uses the mark "American Senior Information Services" and the abbreviation "ASIS" to market services similar to those of SIS. (Joint Case Report at 2, Am. Compl. ¶ 3.) Plaintiff asserts that Canella's use of the mark, because of its similarity to SIS, causes intentional confusion, mistake or deception among purchasers of these products. (Id.) Plaintiff also alleges that in conjunction with Defendant Pinto, Defendant contacts Plaintiff's customers, and makes defamatory statements convincing them to terminate their relationship with FAMC and switch to Defendant's product. (Am. Compl. ¶ 26.) Pinto was employed by FAMC from 1999 through 2000 as in-house counsel. (Id. ¶ 27.) During this time he prepared trust and other documents for Plaintiffs clients. In January, 2001, Defendant Pinto became "outside counsel" for Plaintiff and continued to provide services for some of Plaintiff's clients. (Id. ¶ 28.) Plaintiff alleges that Pinto gave Canella a list of FAMC's clients, (Am. Comp. ¶ 29), and the two Defendants have used Pinto's familiar name to attract Plaintiff's clients.

  Based on these allegations, Plaintiff filed a twelve-count Amended Complaint charging Canella with violations of federal and state unfair competition laws, false advertising, defamation, fraud, negligent misrepresentation, civil conspiracy, and unauthorized practice of Page 3 law. Plaintiff has charged Pinto with misappropriation of trade secrets, breach of fiduciary duty/duty of loyalty, interference with contractual relations and prospective economic advantage, and civil conspiracy. In response, Defendant Canella has filed a Motion to Dismiss Counts One, Two, Three, Eight, Nine, Ten and Twelve for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). Defendant Pinto has filed a Motion to Dismiss all but Count Eleven of the Amended Complaint for failure to state a claim.*fn1

 II. Jurisdiction

  We have jurisdiction to hear this case under 28 U.S.C. § 1331, 1332. Since this case involves claims of trademark infringement and unfair competition arising under the Lanham Act, 15 U.S.C. § 1125(a), we have appropriate subject matter jurisdiction. The claims arising under state law are "so related to claims in the action within such original jurisdiction that they form part of the same case or controversy," 28 U.S.C.A. § 1367, such that we have proper supplemental jurisdiction over these claims as well. In addition, the matter is also properly before the Court on grounds of diversity jurisdiction because the parties are citizens of different states and the amount in controversy exceeds $75,000. 28 U.S.C. § 1332.

 III. Motion to Dismiss Standard

  The purpose of a Rule 12(b)(6) motion to dismiss is to test the sufficiency of a complaint, not to resolve disputed facts or decide the merits of the case. Tracinda Corp. v. Daimlerchrysler AG, 197 F. Supp.2d 42, 53 (D. Del. 2002). A court should not dismiss a case for failure to state Page 4 a claim unless the plaintiff can prove no set of facts in support of the claim that would entitle it to relief. See US v. Marisol, Inc., 725 F. Supp. 833, 836 (M.D. Pa. 1989). see also Trump Hotels & Casino Resorts. Inc. v. Mirage Resorts Inc., 140 F.3d 478, 483 (3d Cir. 1998) ("A complaint should be dismissed only if, after accepting as true all of the facts alleged in the complaint, and drawing all reasonable inferences in the plaintiff's favor, no relief could be granted under any set of facts consistent with the allegations"); Diaz-Ferrante v. Rendell, 1998 WL 195683, at *3 (E.D. Pa. March 30, 1998) ("a Rule 12(b)(6) motion does not serve to question a plaintiffs well-pled facts, but rather tests the legal foundation of the plaintiff's claims"). Thus, the court's inquiry is directed towards whether the plaintiff's allegations constitute a claim under Fed.R. Civ. P. 8(a). Though the "plain statement" rule of 8(a) is construed quite liberally, the court need not credit a plaintiff's "bald assertions" or "legal conclusions" when deciding a motion to dismiss. Morse v. Lower Merion Sch. Dist., 132 F.3d 902, 906 (3d Cir. 1997). Finally, the court should not look to whether plaintiff will "ultimately prevail," it should only consider whether plaintiff should be allowed to offer evidence in support of their claims. In re Burlington Coat Factory Secs. Litig., 114 F.3d 1410, 1420 (3d cir. 1997).

 IV. Discussion of Claims Made Against Canella

  a. Unfair Competition Under Federal and State Laws

  Defendant Canella alleges that the Amended Complaint fails to sufficiently state any claim of unfair competition arising from infringement on the mark "Senior Informational Services" because Plaintiff has not alleged and cannot prove that the mark has attained "secondary meaning" or distinctiveness, nor is it "confusingly similar" as a matter of law with the term "American Senior Information Services." In order to prove unfair competition and Page 5 trademark infringement under Federal unfair competition law, 15 U.S.C. § 1125(a)(1)(A),*fn2 Pennsylvania trademark infringement law, 54 PA. CONS. STAT. § 1123,*fn3 and Pennsylvania common law, 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. Scott Fetzer Co. v. Gehring, 288 F. Supp.2d 696, 703 (E.D. Pa. 2003) (stating that the elements for these three claims are identical except that the federal claims require an effect on interstate commerce); Gideons Int'l, Inc. v. Gideon 300 Ministries. Inc., 94 F. Supp.2d ...

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