Tempur-Pedic Int'l Inc. v. Angel Beds LLC
902 F. Supp. 2d 958
S.D. Tex.2012Background
- This is a trademark infringement case between Tempur-Pedic and Angel Beds, competitors in mattresses and related products.
- Tempur-Pedic alleges Angel Beds uses Tempur-Pedic marks to mislead and redirect customers to Angel Beds’ sites, causing confusion and harm.
- Tempur-Pedic previously settled a 2005 infringement suit via a 2006 Settlement Agreement requiring Angel Beds to cease using Tempur-Pedic marks and to limit truthful comparative statements.
- Tempur-Pedic claims Angel Beds ignored the settlement by using Tempur-Pedic marks online, including the domain tempurpediccomparison.com and a misleading link block.
- Tempur-Pedic filed suit on February 16, 2012 asserting Lanham Act claims (unfair competition, false advertising, dilution), cyber-squatting, and breach of contract; Defendants moved to dismiss and for a more definite statement on May 1, 2012.
- The court denied the Defendants’ Rule 12(b)(6) and Rule 12(e) motions, finding plausible claims and sufficient notice for some counts while allowing discovery to proceed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Rule 9(b) applies to § 43(a) claims | Tempur-Pedic argues § 43(a) claims do not require Rule 9(b) particularity. | Angel Beds argues the § 43(a) unfair competition claims are fraud-like and must meet Rule 9(b). | Rule 9(b) not required; § 43(a) claims reviewed under Rule 8. |
| Whether § 43(a) false advertising claim is plausibly pled | Tempur-Pedic contends pleaded facts show false/misleading advertising and likelihood of deception. | Angel Beds contends the claim is insufficient or inadequately described. | Plaintiffs’ § 43(a) false advertising claim is plausible; denial of dismissal as to this count. |
| Whether breach of contract claim is plausible | Tempur-Pedic asserts the Settlement Agreement and performance, breach, and resulting damages are pled. | Angel Beds argues lack of specific factual breach allegations. | Breach of contract claim plausibly pled; denial of dismissal as to this count. |
| Whether a more definite statement is warranted for dilution claims | Tempur-Pedic identifies marks and describes dilutive conduct with respect to its marks. | Angel Beds seeks more definite statement to specify marks and dilutive acts. | Rule 12(e) motion denied; dilution counts may proceed and be clarified in discovery. |
| Whether a more definite statement is warranted for §43(a) trademark confusion claims | Tempur-Pedic asserts sufficient detail identifying marks and misuses causing confusion. | Angel Beds argues insufficient detail to respond. | Motion for more definite statement denied; §43(a) claims sufficiently pled for notice. |
Key Cases Cited
- Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 227 F.3d 489 (5th Cir. 2000) (false advertising standard; capacity to deceive substantial group of customers)
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (pleading standard; requires plausible claims beyond mere allegations)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (plausibility standard; not merely possible; needs factual enhancement)
- Leatherman v. Tarrant County Narcotics Intelligence and Coordination Unit, 507 U.S. 163 (U.S. 1993) (rules for pleading standards; Rule 9 Balancing)
- Dorsey v. Portfolio Equities, Inc., 540 F.3d 333 (5th Cir. 2008) (explanation of Rule 12(b)(6) pleading standards and plausibility)
- Turner v. Pleasant, 663 F.3d 770 (5th Cir. 2011) (pleading standards and decision to dismiss under Rule 12(b)(6))
- Montoya v. FedEx Ground Package System, Inc., 614 F.3d 145 (5th Cir. 2010) (pleading standards; plausibility under Iqbal and Twombly)
- Twombly, 550 U.S. 544 (U.S. 2007) (plausibility standard; general rule for Rule 12(b)(6))
- Great Plains Trust Co. v. Morgan Stanley Dean Witter & Co., 313 F.3d 305 (5th Cir. 2002) (leave to amend liberally given; pleading deficiencies cureable)
- Stubbs Collections, Inc. v. Davis, 2000 WL 381947 (N.D. Tex. 2000) (Rule 9(b) distinctions; not cited as official reporter here)