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Just Enterprises, Inc. v. O'Malley & Langan

May 29, 2008

JUST ENTERPRISES, INC., PLAINTIFF
v.
O'MALLEY & LANGAN, P.C., DEFENDANT



The opinion of the court was delivered by: Judge Munley

MEMORANDUM

Before the court are defendant's motion to dismiss (Doc. 9) and motion for sanctions (Doc. 22). Having been fully briefed, the matters are ripe for disposition.

I. Background

This matter is before the court as a trademark dispute. Since 1993, Just Enterprises ("Just"), a Missouri corporation, uses in interstate commerce the telephone number 1-800-JUSTICE. (Complaint (Doc. 1) (hereinafter "Complt.") at ¶ 2). Just owns this number, and possesses a valid trademark registration from the United States Patent and Trademark Office (USPTO). (Id. at ¶¶ 2-3). The trademark bears the USPTO registration number 2,727,137. (Id. at ¶ 2). Since 1993, Just has used this number in interstate commerce in connection with the legal referral services the company provides to licensees. (Id. at ¶ 4).

Defendant O'Malley & Langan, P.C., is a Scranton, Pennsylvania law firm. (Id. at ¶ 5). As part of its legal business, O'Malley & Langan uses the mark (888) JUSTICE to identify itself and its legal business. (Id.). The law firm licensed this number from Justice, Inc. (Id. at ¶ 6). Just considers this use infringing on its 1-800-JUSTICE trademark and has informed O'Malley & Langan of its position. (Id. at ¶ 7). Just wrote the law firm demanding that it cease any infringing use of Just's trademarked number. (Id.). Defendant did not respond to this letter. (Id.). Despite this notice from Just, O'Malley & Langan has continued to use the (888) JUSTICE number in connection with its business. (Id. ¶ 8). Plaintiff alleges that this continued use has caused "consumer confusion, mistake and deception." (Id.). Consumers, plaintiff contends, are likely to conclude that services offered by O'Malley & Langan through the (888) JUSTICE number "originate" or are "licensed" or sponsored by Just, or that the law firm and the company are somehow affiliated. (Id. at ¶ 9). Just contends that O'Malley & Langan's infringing action in relation to the mark is intentional. (Id. at ¶ 10).

On September 21, 2007, plaintiff filed the instant action. Count I of the action raises a claim for trademark infringement pursuant to 15 U.S.C. § 1114, alleging that defendant improperly used, copied or imitated the 1-800-JUSTICE mark in interstate commerce. (Id. at §§ 15-16). Count II alleges false designation of origin in violation of 15 U.S.C. § 1125(a). Plaintiff contends that defendant's use of (888) JUSTICE falsely creates the impression that Just approves of and is associated with the services offered by O'Malley & Langan. (Id. at §§ 24-25). Count III consists of a state-law claim for unfair competition. Defendant's actions in using the mark, plaintiff contends have harmed Just's reputation and diluted the value of the trademark. (Id. at § 32). In Count IV, plaintiff alleges common law trademark infringement. As relief, plaintiff seeks an injunction preventing O'Malley & Langan from using the (888) JUSTICE number, an order for the destruction of all goods and marks that infringe on the 1-800 number, payment of damages to plaintiff through the profits derived from use of the offending number, punitive and exemplary damages, costs and attorney's fees and defendant's written notification to all current and prior clients that no connection exists between the disputed marks.

On October 30, 2008 defendant filed a motion to dismiss the complaint pursuant to Federal Rule of Civil Procedure 12. (Doc. 9). Defendant also filed a motion for sanctions (Doc. 22) against the plaintiff, alleging that the complaint had been filed for an improper and vexatious purpose. The parties then briefed these motions, bringing the case to its present posture.

II. Jurisdiction

As this claim is brought pursuant to the Lanham Act, 15 U.S.C. § 1501, et seq., the court has jurisdiction pursuant to 28 U.S.C. § 1331 ("The district courts shall have original jurisdiction of all civil actions arising under the Constitution, laws, or treaties of the United States."). We have supplemental jurisdiction over plaintiff's state-law claims pursuant to 28 U.S.C. § 1367.

III. Legal Standard

When a 12(b)(6) motion is filed, the sufficiency of a complaint's allegations are tested. The issue is whether the facts alleged in the complaint, if true, support a claim upon which relief can be granted. In deciding a 12(b)(6) motion, the court must accept as true all factual allegations in the complaint and give the pleader the benefit of all reasonable inferences that can fairly be drawn therefrom, and view them in the light most favorable to the plaintiff. Morse v. Lower Merion Sch. Dist., 132 F.3d 902, 906 (3d Cir. 1997).

IV. Discussion

A. Motion to Dismiss

Defendant offers several grounds for granting its motion to dismiss. We will ...


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