United States District Court, E.D. Louisiana
ORDER AND REASONS
L. C. FELDMAN UNITED STATES DISTRICT JUDGE.
the Court is the plaintiff's partial motion to dismiss
the defendant's counterclaims pursuant to Rule 12(b)(6)
and 12(f). For the reasons that follow, the motion is
a trademark infringement dispute concerning competing
mayonnaise and ketchup condiments, “METCHUP” and
Perry is an entrepreneur. Since August 2010, he has invested
time and money in creating, branding, and selling a
mayonnaise and ketchup condiment sauce and a mayonnaise and
mustard condiment sauce, both of which he calls METCHUP.
Perry is the exclusive owner of United States Trademark
Registration No. 3, 920, 035 for METCHUP (the “'035
Registration”). The ‘035 Registration provides
that the word mark “METCHUP” is registered for
“ketchup; mayonnaise; mustard, in Class 30 (U.S. Cl.
46).” Given the longstanding, continuous, and exclusive
use of the METCHUP trademark, it is alleged, the trademark
registration is incontestable under 15 U.S.C. § 1065.
Heinz Company Brands LLC, a subsidiary of The Kraft Heinz
Company, is the third largest food and beverage company in
the United States. Heinz Brands owns many trademarks, some of
which it licenses to Kraft Heinz Foods Company, which uses
the HEINZ® marks in promoting its food products
throughout the United States. Among its portfolio of
trademarks, on April 23, 2018, Heinz Brands applied for
federal registration of the “MAYOCHUP”
mark.According to Perry, consumers on social
media have noted the phonetic similarities between the marks,
Heinz has advertised on its website and on social media its
MAYOCHUP product using a counterfeit designation identical to
Perry's METCHUP trademark, and Heinz's misleading
advertising practices have caused internet searches for
“METCHUP” to lead the searcher directly to
Heinz's website and products.
January 14, 2019, Perry sued H.J. Heinz Company Brands,
L.L.C., alleging that Heinz's MAYOCHUP mark is
confusingly similar in sight, sound, and meaning to
Perry's METCHUP mark. Perry asserts seven causes of action:
three federal claims (counterfeiting, trademark infringement,
and false designation of origin) and four state law claims
(liability for damages under Louisiana Civil Code article
2315, unfair trade practices under La.R.S. 51:1409, Louisiana
trademark infringement, and Louisiana trademark dilution).
answered and asserted eight counterclaims, seeking
invalidation of Perry's trademark and declaratory
judgments of no counterfeiting, no trademark infringement, no
false designation of origin, no liability for damages under
Civil Code article 2315, no unfair trade practices, no
Louisiana trademark infringement, and no Louisiana trademark
dilution. Arguing that Heinz's second through eighth
counterclaims are merely mirror images of the plaintiff's
claims against Heinz, the plaintiff now moves to dismiss
these counterclaims as redundant of the issues raised by the
12(b)(6) of the Federal Rules of Civil Procedure allows a
claim upon which relief can be granted. Under Rule 8(a)(2) of
the Federal Rules of Civil Procedure, a pleading must contain
a "short and plain statement of the claim showing that
the pleader is entitled to relief." Ashcroft v.
Iqbal, 556 U.S. 662, 678-79 (2009)(citing Fed.R.Civ.P.
8). "[T]he pleading standard Rule 8 announces does not
require 'detailed factual allegations,' but it
demands more than an unadorned,
Id. at 678 (citing Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007)).
considering a Rule 12(b)(6) motion, the Court
“accept[s] all well-pleaded facts as true and view[s]
all facts in the light most favorable to the
plaintiff.” See Thompson v. City of Waco,
Texas, 764 F.3d 500, 502 (5th Cir. 2014) (citing Doe
ex rel. Magee v. Covington Cnty. Sch. Dist. ex rel.
Keys, 675 F.3d 849, 854 (5th Cir. 2012)(en banc)). But,
in deciding whether dismissal is warranted, the Court will
not accept conclusory allegations in the complaint as true.
Id. at 502-03 (citing Iqbal, 556 U.S. at
survive dismissal, “‘a complaint must contain
sufficient factual matter, accepted as true, to state a claim
to relief that is plausible on its face.'”
Gonzalez v. Kay, 577 F.3d 600, 603 (5th Cir.
2009)(quoting Iqbal, 556 U.S. at 678)(internal
quotation marks omitted). “A claim has facial
plausibility 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 (“The plausibility
standard is not akin to a ‘probability
requirement,' but it asks for more than a sheer
possibility that a defendant has acted unlawfully.”).
“Where a complaint pleads facts that are merely
consistent with a defendant's liability, it stops short
of the line between possibility and plausibility of
entitlement to relief.” Id. at 678 (internal
quotations omitted) (citing Twombly, 550 U.S. at
557). “[A] plaintiff's obligation to provide the