SM Kids, LLC v. Google LLC, 963 F.3d 206

Steven Silvers created and registered the "Googles" trademark and launched the Googles children’s website in the 1990s; Google (the search company) later used the name.
Silvers assigned the mark to Stelor Productions; Stelor settled a 2008 trademark suit with Google under an agreement restricting Google’s development of children’s content titled "Google" or "Google-" forms.
After investor Stephen Garchik acquired rights through bankruptcy and transferred the mark through several entities, SJM Partners assigned the marks to SM Kids in February 2018.
SM Kids sued Google in state court alleging breach of the 2008 settlement (e.g., YouTube Kids, Google Play content); Google removed to federal court and moved to dismiss under Fed. R. Civ. P. 12(b)(1).
The district court relied on evidence outside the complaint, found the trademark had not been used in commerce (2010–2018) so the assignment was invalid, and dismissed for lack of Article III standing.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether validity of the trademark assignment is an Article III standing/jurisdictional question	SM Kids: it has suffered concrete injury from Google’s conduct and therefore Article III standing exists; assignment validity is a merits/contractual issue	Google: invalid assignment (no use in commerce) means SM Kids was not trademark holder and thus lacks Article III standing	Court: Assignment validity is a merits/contractual-standing issue, not jurisdictional; Article III standing was plausibly alleged
Whether Lanham Act §1060 (assignability with goodwill/use in commerce) is jurisdictional	SM Kids: §1060 is a substantive element, not a jurisdictional limit	Google: §1060 prevents assignment so court lacks jurisdiction over those not validly assigned marks	Court: §1060 is non‑jurisdictional; statutes not phrasing jurisdictional limits should not be treated as such (Arbaugh rule)
Whether district court properly used Rule 12(b)(1) fact‑based process and evidence outside pleadings	SM Kids: converting to fact‑based jurisdictional inquiry shifted burdens and changed standards improperly; should have been 12(b)(6) or summary judgment	Google: factual record showed no use in commerce; dismissal on 12(b)(1) was appropriate	Court: procedural approach was erroneous or at least problematic—court should have treated dispute as merits under 12(b)(6) or converted to summary judgment; vacated and remanded

Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016) (articulating Article III standing elements)
Perry v. Thomas, 482 U.S. 483 (1987) (contractual‑party questions go to merits, not standing)
Arbaugh v. Y & H Corp., 546 U.S. 500 (2006) (statutory requirements not jurisdictional absent clear congressional statement)
La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867 (9th Cir. 2014) ("use in commerce" is a merits element, not jurisdictional)
Cross Commerce Media, Inc. v. Collective, Inc., 841 F.3d 155 (2d Cir. 2016) (Lanham Act use/assignment principles)
Berni v. Int’l Gourmet Rests. of Am., Inc., 838 F.2d 642 (2d Cir. 1988) (treating Lanham Act "standing" as nonjurisdictional)
Carter v. HealthPort Techs. LLC, 822 F.3d 47 (2d Cir. 2016) (Rule 12(b)(1) standards and when courts may consider evidence outside pleadings)
Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83 (1998) (distinguishing standing from merits)
Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014) (cause-of-action elements distinct from Article III standing)