H-D U.S.A., LLC v. The Partnerships and Unincorporated Associations Identified on Schedule "A"
1:21-cv-00496
| N.D. Ill. | Mar 14, 2022Background
- Plaintiff H-D U.S.A., LLC owns 66 U.S. registered trademarks used for Harley‑Davidson motorcycles and related goods.
- H-D sued numerous e‑commerce defendants (identified by store aliases) for trademark infringement, counterfeiting, and false designation of origin.
- Two defendants, Hongyishangmao60 and Olodo, filed an answer that included a counterclaim and multiple affirmative defenses.
- H‑D moved to dismiss the counterclaim under Rule 12(b)(6) and to strike certain affirmative defenses under Rule 12(f).
- The court applied the Iqbal/Twombly plausibility standard and Rule 9(b) for fraud pleadings, dismissed the counterclaim as conclusory, and struck several affirmative defenses for lack of factual support.
- The court denied the motion to strike two defenses (labeled non‑counterfeit and lack‑of‑willfulness) because they attacked H‑D’s prima facie case rather than asserting true affirmative defenses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Sufficiency of counterclaim alleging fraud/abandonment | Counterclaim fails to plead facts; must meet plausibility and Rule 9(b) for fraud | Counterclaim alleges trademarks were fraudulently obtained and abandoned (conclusory) | Dismissed: counterclaim is conclusory and lacks factual allegations |
| Adequacy of statute of limitations, laches, estoppel, implied‑license defenses | These defenses are legally insufficient when pleaded without factual support | Defendants assert those affirmative defenses in their answer | Struck: defenses contain only bare conclusory allegations |
| Status of non‑counterfeit and lack‑of‑willfulness defenses | Such allegations do not concede H‑D’s prima facie case but are challenges to plaintiff's claims | Defendants characterized them as affirmative defenses | Not stricken: court finds they challenge prima facie proof and are not affirmative defenses subject to strike |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading must state plausible claim)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (plausibility standard for complaints)
- Heller Fin., Inc. v. Midwhey Powder Co., 883 F.2d 1286 (7th Cir. 1989) (affirmative defenses may be struck if conclusory)
- Fort Howard Paper Co. v. Standard Havens, Inc., 901 F.2d 1373 (7th Cir. 1990) (distinguishing true affirmative defenses from attacks on prima facie proof)