United States District Court, D. Delaware
Phillip A. Rovner, Jonathan A. Choa, Alan R. Silverstein,
POTTER ANDERSON & CORROON LLP, Wilmington, DE Attorneys
W. Poff and Robert M. Vrana, YOUNG CONAWAY STARGATT &
TAYLOR, LLP, Wilmington, DE
Michael P. Brennan, George D. Moustakas, Lisa M. DuRoss,
HARNESS, DICKEY & PIERCE, PLC, Troy, MI Attorneys for
U.S DISTRICT JUDGE.
before the Court is a motion to dismiss (D.I. 11), filed by
Emerson Quiet Kool Co. Ltd. and Home Easy Ltd. (together,
"Defendants"), the complaint filed by Plaintiff
Emerson Electric Co's ("Emerson Electric's"
or "Plaintiffs") (D.I. 1). Having considered the
parties' briefs (D.I. 12, 16, 18), the Court will
grant-in-part and deny-in-part Defendants' motion.
to the Complaint, Plaintiff Emerson Electric owns the EMERSON
marks and uses the EMERSON marks on "products that play
a significant role in the temperature, humidity level and
overall comfort of the home, such as air circulators, fans,
air conditioning compressors, HVAC controls, humidifiers,
humidifying products and thermostats." (D.I. 1 ¶ 7)
Plaintiff has used and promoted the EMERSON marks since at
least 1890. (Id. ¶ 8)
Trademark Registration No. 4, 688, 893, for the word mark
EMERSON QUIET KOOL, was filed on March 1, 2010 and is
currently registered to Defendant Emerson Quiet Kool Co. Ltd.
(Id. ¶ 32) Defendants use the EMERSON QUIET
KOOL mark on "window and wall room air conditioning
units and dehumidifiers." (Id. ¶ 22)
sued Defendants for allegedly infringing upon and
misappropriating Plaintiffs EMERSON marks. (Id.
¶ 5) Specifically, Plaintiffs claim: (1) trademark
infringement under 15 U.S.C. § 1114 (id.
¶¶ 51-59); (2) trademark infringement, unfair
competition, and false designation of origin under 15 U.S.C.
§ 1125(a)(1)(A) (id. ¶¶ 60-66); (3)
trademark dilution under 15 U.S.C. § 1125(c)
(id. ¶¶ 67-75); (4) violation of the
Anticybersquatting Consumer Protection Act, 15 U.S.C. §
1125(d) (id. ¶¶ 76-86); (5) trademark
dilution under 6. Del. C. § 3313 (id.
¶¶ 87-89); (6) unfair competition under 6. Del. C.
§ 2532 (id. ¶¶ 90-95); (7) common law
trademark infringement, unfair competition, and
misappropriation (id. ¶¶ 96-99); and (8)
breach of contract (id. ¶¶ 100-08). Among
the relief Plaintiff seeks is cancellation of United States
Trademark Registration No. 4, 688, 893. (Id.
a motion to dismiss under Federal Rule of Civil Procedure
12(b)(6) requires the Court to accept as true all material
allegations of the complaint. See Spruill v. Gillis,
372 F.3d 218, 223 (3d Cir. 2004). "The issue is not
whether a plaintiff will ultimately prevail but whether the
claimant is entitled to offer evidence to support the
claims." In re Burlington Coat Factory Sec.
Litig., 114 F.3d 1410, 1420 (3d Cir. 1997) (internal
quotation marks omitted). Thus, the Court may grant such a
motion to dismiss only if, after "accepting all
well-pleaded allegations in the complaint as true, and
viewing them in the light most favorable to plaintiff,
plaintiff is not entitled to relief." Maio v. Aetna,
Inc., 221 F.3d 472, 481-82 (3d Cir. 2000) (internal
quotation marks omitted).
well-pleaded complaint must contain more than mere labels and
conclusions. See Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009); Bell Atl. Corp. v. Twombly, 550 U.S.
544, 555 (2007). A plaintiff must plead facts sufficient to
show that a claim has substantive plausibility. See
Johnson v. City of Shelby, 135 S.Ct. 346, 347 (2014). A
complaint may not be dismissed, however, for imperfect
statements of the legal theory supporting the claim asserted.
See Id. at 346.
survive a motion to dismiss, a civil plaintiff must allege
facts that 'raise a right to relief above the speculative
level on the assumption that the allegations in the complaint
are true (even if doubtful in fact).'" Victaulic
Co. v. Tieman, 499 F.3d 227, 234 (3d Cir. 2007) (quoting
Twombly, 550 U.S. at 555). A claim is facially
plausible "when the plaintiff pleads factual content
that allows the court to draw the reasonable inference that
the defendant is liable for the misconduct alleged."
Iqbal, 556 U.S. at 678. At bottom, "[t]he
complaint must state enough facts to raise a reasonable
expectation that discovery will reveal evidence of [each]
necessary element" of a plaintiff s claim. Wilkerson
v. New Media Tech. Charter Sch. Inc., 522 F.3d 315, 321
(3d Cir. 2008) (internal quotation marks omitted).
Court is not obligated to accept as true "bald
assertions," Morse v. Lower Merion Sch. Dist.,
132 F.3d 902, 906 (3d Cir. 1997) (internal quotation marks
omitted), "unsupported conclusions and unwarranted
inferences," Schuylkill Energy Res., Inc. v. Pa.
Power & Light Co., 113 F.3d 405, 417 (3d Cir. 1997),
or allegations that are "self-evidently false,"
Nami v. Fauver, 82 F.3d 63, 69 (3d Cir. 1996).