Scooter Store, Inc. v. SpinLife. Com, LLC
777 F. Supp. 2d 1102
S.D. Ohio2011Background
- Plaintiffs The Scooter Store, Inc. and The Scooter Store, Ltd. (TSS) sue SpinLife.com, LLC for trademark infringement and related unfair competition claims arising from SpinLife's use of keywords and meta tags including “the Scooter Store.”
- SpinLife counterclaims include a Sherman Act allegation and Ohio unfair competition; SpinLife seeks declaratory relief that TSS’s marks are non-infringing, invalid, or unenforceable.
- TSS holds four federal registrations for related services (insurance claims processing and repair/delivery) but the USPTO refused registration for retail sales; SpinLife alleges fraud/inequitable conduct before the USPTO.
- SpinLife asserts that TSS previously used a competing Ohio trade name, and that TSS knowingly omitted Trautman’s Ohio registrations in its USPTO applications.
- TSS moves to dismiss Counts 1, 2, 4, and 6 of SpinLife’s Amended Counterclaim for failure to state claims; the court grants in part and denies in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Fraud before the USPTO in 2000 | SpinLife alleges TSS knowingly omitted Trautman’s rights to obtain registration. | TSS did not act with fraudulent intent; state rights could not bar federal registration. | SpinLife failed to plead the third and fourth elements; fraud claim dismissed. |
| Fraud before the USPTO in 2008 | TSS submitted §8/§15 affidavits with false statements to obtain incontestability. | No facts pled showing false statements; no fraud proven. | Fraud defense insufficient; claim dismissed. |
| Unclean hands | TSS acted with bad faith to leverage litigation against SpinLife. | No need to show fraud; protected by fair litigation practices. | Sufficient facts pled to support unclean hands defense; not dismissed. |
| Sherman Act count (Noerr-Pennington sham litigation and attempted monopolization) | TSS filed baseless litigation to suppress competition and monopolize. | Noerr-Pennington immunity applies; no sham or monopoly claim pleaded. | Sham exception pleaded; antitrust claims survive and are not dismissed at this stage. |
| Ohio unfair competition | TSS filed malicious litigation to harm SpinLife's retail market position. | No clear bad faith shown at pleadings stage. | Plaintiff pleaded facts supporting bad-faith litigation; claim survives. |
Key Cases Cited
- Anheuser-Busch, Inc. v. Bavarian Brewing Co., 264 F.2d 88 (6th Cir. 1959) (fraud-in-procurement burden; antifraud standard among defenses)
- California Motor Co. v. Trucking Unlimited, 404 U.S. 508 (U.S. 1972) (Noerr-Pennington immunity for trademark litigation)
- Prof’l. Real Estate Investors, Inc. v. Columbia Pictures Indus., Inc., 508 U.S. 49 (U.S. 1993) (sham litigation framework and exception to Noerr-Pennington)
- United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (U.S. 1918) (priority of senior user and geographic scope of rights)
- Money Store v. Harriscorp Fin., Inc., 689 F.2d 666 (7th Cir. 1982) (fraud on USPTO; absence of disclosure not automatically fraudulent)
- Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749 (9th Cir. 2009) (bad faith and knowledge required for fraud defenses)
- Spirit Airlines, Inc. v. Northwest Airlines, Inc., 431 F.3d 917 (6th Cir. 2005) (monopoly power and market definition factors in antitrust analysis)
- Eastman Kodak Co. v. Image Tech. Servs., Inc., 504 U.S. 451 (U.S. 1992) (monopoly power and market power considerations)
- Clipper Exxpress v. Rocky Mountain Motor Tariff Bureau, 690 F.2d 1240 (9th Cir. 1982) (antitrust pleading standards and sham litigation considerations)