The opinion of the court was delivered by: Slomsky, J.
On February 4, 2009, Plaintiff, Colur World, LLC, commenced this trademark action against Defendants SmartHealth, Inc. and SmartPractice, Inc. Defendants moved to dismiss the complaint and, after hearing oral argument on the motion to dismiss, the Court granted Plaintiff leave to file an amended complaint. (Doc. No. 20.) On August 21, 2009, Plaintiff filed its First Amended Complaint. (Doc. No. 22.) Count One alleges a claim for false designation of origin, false description, and false representation under the Lanham Act, 15 U.S.C. § 1125(a), also known as § 43(a) of the Lanham Act. Count Two alleges a claim for infringement of a common law mark, under the same section of the Lanham Act, 15 U.S.C. § 1125(a). Count Three alleges a violation of Pennsylvania's anti-dilution statute, 54 Pa. C.S.A. § 1124. Count Four alleges a Pennsylvania common law unfair competition claim.
Currently before the Court is Defendants' Motion to Dismiss Plaintiff's First Amended Complaint pursuant to Federal Rule of Civil Procedure 12(b)(6) and Local Rule 7.1 (Doc. No. 24.). Plaintiff filed a response in Opposition to Defendants' Motion to Dismiss (Doc. No. 25), and Defendants filed a Reply in Support of their Motion to Dismiss (Doc. No. 26).
For the reasons set forth below, Defendants' Motion to Dismiss (Doc. No. 24) will be denied in its entirety.
Plaintiff and Defendants market and sell nitrile*fn1 gloves for medical use. The target consumers for nitrile gloves are substantially the same for Plaintiff and Defendants. (Id. ¶ 31.) Plaintiff has two trademarks (the "Colur World Marks") for its product-line of pink nitrile gloves which are registered on the Supplemental Register of the United States Patent and Trademark Office ("U.S.P.T.O.").*fn2 (Pl.'s Opposition to Def.'s Mot. to Dismiss 4.) The first mark consists of the color pink which is used on Plaintiff's nitrile gloves (the "COLOR PINK Mark") (Registration No. 3,172,669). (First Amended Compl. ¶ 9.) The second is a word mark, "PINK NITRILE," which is used in marketing and packaging Plaintiff's gloves (Registration No. 3,170,261). (Id. ¶ 10.)
Plaintiff alleges that its COLOR PINK Mark is a source of origin and a trademark for the color pink used on its nitrile gloves. (Id. ¶ 12.) Plaintiff also alleges that it is "the nation's only purveyor of nitrile gloves in the color pink and marketed as 'PINK' or PINK NITRILE." (Id. ¶ 15.) Plaintiff's packaging displays the "(r)" notice symbol in connection with its PINK NITRILE word mark, and each package provides written notice that "*The COLOR PINK is a Registered Trademark of Colur World, LLC." (Id. ¶ 17.) These marks are displayed on the top and reverse side of every box and sample pack of Plaintiff's Pink Nitrile brand gloves, as well as on the reverse side of the box and sample packaging for each of Plaintiff's other brands of nitrile gloves. (Id. ¶ 19.)
Through the use of the two Colur World Marks, Plaintiff advertises its Pink Nitrile brand gloves in medical and dental journals, on its web site (which annually receives thousands of unique visitors), and at annual trade shows. (Id.) In 2005, Plaintiff spent over $450,000 for advertisements promoting the Colur World Marks. (Id.) Plaintiff has exclusively and continuously marketed, promoted, advertised, and sold its products using the Colur World Marks since April 26, 2005. (Id. ¶¶ 14, 22.) Annually, Plaintiff sells more than one million 100-piece boxes of nitrile gloves displaying the Colur World Marks, earning millions in revenue from these sales. (Id. ¶ 19.)
In December 2008, Plaintiff discovered that Defendants were using the color pink on their nitrile gloves. (Id. ¶ 26.) Defendants' packing also displays the phrases "Pink Ribbon Gloves of Hope" and "Powder Free Nitrile Exam Gloves." (Id. at Ex. B.) After this discovery, Plaintiff's Counsel sent written notification to Defendants that their product was infringing upon the registered Colur World Marks, and instructed Defendants to cease and desist from any further use of Plaintiff's marks. (Id. ¶ 29.) Despite this notice, Defendants have continued to market and sell the allegedly infringing pink nitrile gloves. (Id. ¶ 30.)
III. MOTION TO DISMISS STANDARD
Defendants have moved to dismiss all claims against them for failure to state a claim upon which relief can be granted under Federal Rule of Civil Procedure 12(b)(6). In deciding a motion to dismiss pursuant to Rule 12(b)(6), a court must "accept all factual allegations as true, construe the complaint in the light most favorable to the plaintiff, and determine whether, under a reasonable reading of the complaint, the plaintiff may be entitled to relief." Phillips v. County of Allegheny, 515 F.3d 224, 233 (3d Cir. 2008) (reasoning that this statement of the Rule 12(b)(6) standard remains acceptable following the U.S. Supreme Court's decision in Bell Atlantic Corporation v. Twombly, 550 U.S. 544 (2007) (internal quotations omitted)).
To withstand a motion to dismiss under Rule 12(b)(6), "factual allegations must be enough to raise a right to relief above the speculative level." Phillips, 515 F.3d at 234. When a complaint contains well-pleaded factual allegations, "a court should assume their veracity and then determine whether they plausibly give rise to an entitlement to relief." Ashcroft v. Iqbal, 129 S.Ct. 1937, 1950 (2009) (reaffirming the rationale set forth in Twombly). However, a court is "not bound to accept as true a legal conclusion couched as a factual allegation." Id. at 1949. "Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements do not suffice." Id.
Defendants argue that Counts One and Two of Plaintiff's First Amended Complaint, alleging violations of Section 43(a) of the Lanham Act should be dismissed because Plaintiff has not plead sufficient facts to establish certain elements of the Lanham Act claims, including that its use of the color pink is not functional, and that there is a likelihood of confusion.
Defendants further argue that Count Four, alleging common law unfair competition, should fail for the same reasons the Lanham Act claims fail under Counts One and Two. Finally, Defendants argue that Count Three, alleging statutory dilution, fails to state a claim because Plaintiff has not alleged facts showing that its ...