CLEAR DEFENSE, L.L.C. v. CLEARDEFENSE PEST CONTROL OF GREENSBORO, LLC
1:17-cv-01139
M.D.N.C.Oct 24, 2018Background
- Plaintiff Clear Defense, L.L.C. owns the registered trademark CLEARDEFENSE for glass films/laminates and uses the mark on packaging and vehicles; registration lapsed in 2014 but plaintiff alleges continuous use since the 2000s.
- Defendants are three pest-control LLCs using marks including CLEARDEFENSE or Clear Defense Pest Control, with a federal registration for a composite mark and an application for the phrase.
- Plaintiff sued under the Lanham Act, North Carolina common law (trademark infringement/unfair competition), and the NC Unfair & Deceptive Trade Practices Act (UDTPA), alleging likelihood of consumer confusion.
- Defendants moved to dismiss under Rule 12(b)(6), arguing the complaint fails to plausibly plead likelihood of confusion and that Counts Five and Six (seeking an accounting and cancellation) are not standalone claims.
- The court evaluated the Ninth-factor Fourth Circuit likelihood-of-confusion test (strength, similarity, relatedness, facilities, advertising, intent, actual confusion, quality, consumer sophistication) and considered documentary exhibits judicially noticeable at the pleading stage.
- Court denied dismissal as to the infringement/unfair competition/UDTPA claims (likelihood of confusion plausibly pleaded), but dismissed Counts Five and Six as independent causes of action (remedies only).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether plaintiff plausibly alleged likelihood of consumer confusion under the Lanham Act and parallel state claims | Plaintiff alleged mark strength, identical dominant term CLEARDEFENSE in defendants’ marks, overlapping geography/advertising, instances of actual confusion, and defendants’ awareness of plaintiff’s mark | Defendants argued marks are distinguishable by the modifier "Pest Control," goods/services are unrelated (pest control vs. glass laminates), and pleadings insufficient as a matter of law | Denied dismissal: court found several factors favor plaintiff (mark strength, mark similarity, advertising overlap, actual confusion allegations) so likelihood of confusion plausibly pleaded |
| Whether similarity of goods/services defeats plaintiff’s claims at the pleading stage | Plaintiff stressed overlapping customers/geography, van/web advertising, and that relatedness can be perceived even if goods differ | Defendants argued services are unrelated as a matter of law and thus confusion is unlikely and dismissal appropriate | Court found goods/services dissimilar but not so unrelated to dismiss on the pleadings given strong mark similarity and other factors; factor favors defendants but not dispositive |
| Whether defendants’ intent supports likelihood of confusion | Plaintiff alleged defendants knew of plaintiff’s mark, acknowledged an issue, yet continued to use similar marks | Defendants said no plausible intent to confuse because no benefit from association with glass-laminate business | Court held intent allegations weak but plausible and slightly favor plaintiff; intent not dispositive |
| Whether Counts Five (accounting) and Six (cancellation of registration) state independent causes of action | Plaintiff pleaded those counts as separate claims seeking remedies | Defendants contended they are remedies for trademark infringement, not standalone claims | Granted: counts dismissed as independent causes of action; remedies remain available as part of relief if proven |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (plausibility pleading standard governs complaints)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (pleading must be plausible)
- People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (elements of Section 43(a) Lanham Act claim)
- Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922 (dominant portion of mark given greater weight)
- Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316 (likelihood of confusion is factual)
- George & Co. LLC v. Imagination Entm’t Ltd., 575 F.3d 383 (Fourth Circuit multi-factor likelihood-of-confusion test)
- Pizzeria Uno Corp. v. Temple, 747 F.2d 1522 (mark strength and distinctiveness analysis)
- CareFirst of Md., Inc. v. First Care, P.C., 434 F.3d 263 (assessing similarity in actual market use)
- KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (ultimate inquiry: whether defendant’s practice likely to produce consumer confusion)
- Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (trademark law protects confusion as to source, affiliation, sponsorship)