75 F. Supp. 3d 848
N.D. Ill.2014Background
- Chicago Marine moves to dismiss Boat U.S.'s amended counterclaim under Rule 12(b)(6).
- Boat U.S. owns trademarks including “BoatU.S.” and “TowBoatU.S.” and alleged fame under Lanham Act and Illinois law.
- Agreement Feb 2009 authorized Chicago Marine to display Boat U.S. marks in exchange for exclusivity; Chicago Marine agreed to stop using marks on termination.
- Boat U.S. alleges Chicago Marine displayed marks during the agreement and continued post-termination to imply affiliation, causing claims across eight counts.
- Boat U.S. asserts breach of contract (Count I), trademark infringement (Counts III, VI), unfair competition (Count VII), false designation of origin (Count V), IUDTPA (Count VIII), and dilution (Counts IV, IX).
- Court applies Twombly/Iqbal plausibility standard; considers all well-pleaded facts true for dismissal analysis.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Counts III, V–VIII are plausibly plead ed. | Boat U.S. alleges fair notice of use of marks and likelihood of confusion. | Chicago Marine argues insufficient detail on specific marks and use. | Counts III and V–VIII survive dismissal. |
| Whether Count I (breach of contract) is plausibly pleaded. | Continued post-termination display of marks breached the Agreement. | Inadequate factual detail on post-termination use. | Count I survives; pleaded adequately. |
| Whether Count IV (federal dilution) and Count IX (Illinois dilution) survive. | Marks are famous; dilution applicable regardless of competition (Count IV). | Illinois dilution barred due to competitor status; fame unclear for federal dilution. | Count IX dismissed as to Illinois dilution; Count IV survives. |
| Whether the parties are competitors for dilution purposes. | Boat U.S. and Chicago Marine are competitors in towing services. | Competing marks not sufficiently established; Illinois dilution barred to competitors. | Competitors status defeats Illinois dilution claim (Count IX) but not federal dilution (Count IV). |
| Whether Boat U.S. marks are “famous” for dilution, satisfying Lanham Act standard. | Longstanding presence, large membership, media coverage demonstrate fame. | Fame alleged but not proven; niche recognition insufficient. | Boat U.S. sufficiently alleged fame for Count IV. |
Key Cases Cited
- Twombly, Bell Atl. Corp. v., 550 U.S. 544 (U.S. 2007) (plausibility pleading standard requires non-conclusory facts)
- Iqbal, Ashcroft v., 556 U.S. 662 (U.S. 2009) (pleading must include factual content beyond legal conclusions)
- Erickson v. Pardus, 551 U.S. 89 (U.S. 2007) (court accepts true allegations but rejects bare legal conclusions)
- Packman v. Chicago Tribune Co., 267 F.3d 628 (7th Cir. 2001) (likelihood of confusion analysis for trademark claims)
- Desmond v. Chicago Boxed Beef Distrib., Inc., 921 F. Supp. 2d 872 (N.D. Ill. 2013) (unfair competition claims analyzed under Lanham Act standards)
- Eli Lilly & Co. v. Natural Answers, Inc., 233 F.3d 456 (7th Cir. 2000) (dilution requires marks to be famous and use after fame)
- Top Tobacco, L.P. v. North Atlantic Operating Co., Inc., 509 F.3d 380 (7th Cir. 2007) (framework for evaluating fame under Lanham Act § 1125(c))