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Emerson Electric Co. v. Emerson Quiet Kool Co. Ltd.

United States District Court, D. Delaware

March 28, 2019


          Phillip A. Rovner, Jonathan A. Choa, Alan R. Silverstein, POTTER ANDERSON & CORROON LLP, Wilmington, DE Attorneys for Plaintiff

          Adam 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 Defendants



         Pending 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.

         I. BACKGROUND

         According 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)

         U.S. 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)

         Plaintiff 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. ¶¶ 109-16)[1]


         Evaluating 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).

         A 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.

         "To 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).

         The 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).

         III. ...

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