Byler v. Elicit Life LLC, 1:14-cv-02103

Byler claims a non-tobacco herbal chew recipe and the ELICIT mark; he alleges consumer association with the mark through his marketing efforts.
BB&G Enterprise operated as Elicit Herbal Chew; Byler alleges he never assigned common-law rights in the Mark to BB&G.
BB&G/Guess/Berry partnership allegedly used Byler’s statements and continued to associate the Mark with Byler even after the partnership.
Triumph Tobacco Alternatives LLC was formed by Byler for a competing line under the TRIUMPH mark after a falling-out with Guess and Berry.
Guess and Berry formed Elicit Life and continued to market as Elicit Herbal Chew, using Byler’s statements and the Mark after dissolution of BB&G.
In Oct. 2014, the USPTO issued a trademark for “ELICIT HERBAL CHEW” to Bangumbo Marketing Group, an LLC controlled by Guess and Berry.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Lanham Act claim viability without registration	Byler asserts false advertising under §1125(a) despite unregistered mark.	Defendants contend lack of superior rights and that §1125(c) bars action.	Plaintiff's claim not barred by registration; needs discovery on rights.
Effect of federal registration on false advertising claim	Registration does not bar §1125(a) claims.	Registration purportedly precludes related claims.	No statutory bar; §1125(c) does not preempt §1125(a).
Sufficiency of showing consumer association	Byler adequately alleges consumer association with the Mark through marketing history.	Association allegations are insufficient or speculative.	Allegations may be problematic as to form but are sufficient at pleading; can proceed.
Preemption and sufficiency of Colorado unfair competition claim	Unfair competition can exist alongside federal trademark rights.	State claim should be preempted by federal registration and theory.	Unfair competition preemption not properly argued; claim dismissed for failure to plead harm (see below).
Harm and information-and-belief pleading adequacy	Defendants harmed Byler; continuation under TRIUMPH shows harm.	Harm is conclusory and not tied to pleaded facts; information-and-belief allegations improper.	Harm not adequately pleaded; dismissal without prejudice; information-and-belief pleadings cautioned.

Ridge at Red Hawk, LLC v. Schneider, 493 F.3d 1174 (10th Cir. 2007) (pleading must show plausible claim; review under Twombly standard)
Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (plausibility standard for stating a claim)
PHC, Inc. v. Pioneer Healthcare, Inc., 75 F.3d 75 (1st Cir. 1996) (close cousin to infringement claim for unregistered marks)
Kirksey v. R.J. Reynolds Tobacco Co., 168 F.3d 1039 (7th Cir. 1999) (distinguishes form over substance in pleading requirements)
NetQuote, Inc. v. Byrd, 504 F. Supp. 2d 1126 (D. Colo. 2007) (deception or confusion element in unfair competition pleading)