Case Information
*1 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF TEXAS AUSTIN DIVISION
PLACEMKR LLC, §
§
Plaintiff, §
§
v. § 1:25-CV-48-RP
§
PLACEMAKR HOSPITALITY, LLC, and §
PLACEMAKR, INC., §
§
Defendants. §
ORDER
Before the Court is Defendants Placemakr Hospitality, LLC and Placemakr, Inc. ’s (“Defendants”) Motion to Dismiss the First Amended Complaint in Part. (Dkt. 18). Plaintiff PlaceMKR LLC (“Plaintiff”) filed a response, (Dkt. 20), and Defendants filed a reply, (Dkt. 24). After considering the motion and the relevant law, the Court will deny the motion.
I. BACKGROUND
Plaintiff is a real estate private equity firm that uses its word mark PlaceMKR in connection with real estate investment and development services, asset management, and property management. (Am. Compl., Dkt. 16, at 3). Plaintiff began business in Texas in 2018 and alleges it has expanded its use of the PlaceMKR mark nationwide, starting with its first real estate transaction in 2019 with a fund headquartered in New Jersey. ( Id. ). Plaintiff claims that it has since continued to expand outside of Texas, and now “ engages in real estate investment services with investors residing in Connecticut, New York, New Jersey, Texas, Montana, California, and the District of Columbia. ” ( ). Plaintiff does not allege that it owns any trademark registration for its name. (Mot., Dkt. 18, at 1).
Defendants operate as a real estate investment firm that acquires real estate and *2 develops it for use as temporary lodging apartment complexes and hotels. (Am. Compl., Dkt. 16, at 4). Defendants have operated under the name and mark PLACEMAKR since 2022, but initially offered services only in New York, Maryland, Georgia, and the District of Columbia, not Texas. ( Id. ). Plaintiff alleges that Defendants now operate in Texas, Georgia, Tennessee, New York, Maryland, and the District of Columbia. ( Id. at 8).
Between August 24, 2021, and February 9, 2022, Defendants filed three trademark applications with the United States Patent & Trademark Office ( “ USPTO ” ) for the mark PLACEMAKR, claiming “ rental of short-term furnished apartments, ” “ providing temporary lodging services in the nature of an apartment-based lodging, ” “ hotel accommodation services, ” and software as a service (SaaS) featuring software for real estate management. ” ( Id. at 4 5). The applications were assigned Application Serial Nos. 90/900,077, 97/975,443, 97/260,543, and 97/260,555. ( at 5). Application Serial No. 90/900,077 matured into U.S. Registration No. 7,069,499 on May 30, 2023, and Application Serial No. 97/260,543 matured into U.S. Registration No. 7,197,367 on October 17, 2023. ( Id. ). Application Serial Nos. 97/975,443 and 97/260,555 remain pending. ( Id. ).
This dispute arises out of Defendants’ entry into the Austin and San Antonio markets in the spring of 2024, when they began marketing extended-stay apartments and hotels under the PLACEMAKR mark. ( Id. ). Defendants’ website also began to offer real estate development and investment services under the name and mark PLACEMAKR INVESTMENTS. ( Id. ). Plaintiff alleges that Defendants’ real estate investment services are targeting the same real estate equity investors, lenders, brokers, consultants, buyers, and sellers to which Plaintiff markets its services. ( Id. at 6). Plaintiff claims it has encountered numerous exampl es of customer confusion, “including customers of Defendants sending booking requests and complaints to Plaintiff, sending job applications to Plaintiff, and even showing up at Plaintiff s offices. ” ( ). Plaintiff also claims that *3 “ many investors and consultants involved in business dealings with Plaintiff have called, expressing concerns about ‘ Plaintiff ’ s ’ real estate investments that were, in fact, Defendants ’ real estate investments. ” ( Id. ). Finally, Plaintiff claims that “ real estate lenders and investors, ” who are “ [a]pparently confused into thinking that Plaintiff s real estate investment services are actually Defendants ’ real estate investment services ,” have “cancel[ed] meetings with the Plaintiff, stating that they are not interested in investing in ‘short term rentals.’” ( at 7).
Plaintiff filed its original complaint on January 10, 2025. (Dkt. 1). Defendants moved to dismiss on March 7, 2025, and rather than respond to the motion to dismiss, Plaintiff filed an amended complaint as of right on March 28, 2025. The original complaint brought five counts for relief: (1) federal and common law trademark infringement; (2) unfair competition under 15 U.S.C. § 1125(a) (Lanham Act section 43(a)); (3) permanent injunction; and (4) cancellation of registrations. (Compl., Dkt. 1). The amended complaint eliminates the federal trademark infringement claim, alleging trademark infringement only under Texas common law and under the common laws of the states in which Defendants operate ” and clarifies that Plaintiff’s unfair competition claim is based on a false designation of origin theory — that is, Defendant falsely designated the origin of their services. (Am. Compl., Dkt. 16, at 8 9). Additionally, instead of the separate causes of action it had alleged in the original complaint, Plaintiff requests a permanent injunction and cancellation as relief for its substantive trademark infringement and unfair competition claims. ( ). Because Defendants’ actions were allegedly “willful and deliberate,” Plaintiff also requests enhanced damages, attorneys’ fees and costs under 15 U.S.C. § 1117, and destruction of infringing articles, signage, and activities under 15 U.S.C. § 1118.
Defendants once again moved to dismiss in part on April 11, 2025. (Mot., Dkt. 18). In the motion, they argue that: (1) the trademark infringement claim should be dismissed to the extent it asserts common law trademark infringement under the laws of states other than Texas; (2) the unfair *4 competition claim should be dismissed because Federal Rule of Civil Procedure 9(b) applies to false designation of origin claims, and Plaintiff has failed to plead the claim with particularity under Rule 9(b) or even under the notice pleading standard of Rule 8(a); and (3) both the claims should be dismissed to the extent they seek cancellation as a form of relief because cancellation claims must be plead with particularity under Rule 9(b), and the remedy of cancellation does not extend to pending applications as a matter of law. ( at 1 2).
II. LEGAL STANDARD
Pursuant to Rule 12(b)(6), a court may dismiss a complaint for “failure to state a claim upon
which relief can be granted.” Fed. R. Civ. P. 12(b)(6). In deciding a 12(b)(6) motion, a “court accepts
‘ all well-pleaded facts as true, viewing them in the light most favorable to the plaintiff. ’”
In re Katrina
Canal Breaches Litig.
,
A claim has facial plausibility when the plaintiff pleads factual content that allows the court
to draw the reasonable inference that the defendant is liable for the misconduct alleged .”
Id
. “T he
tenet that a court must accept as true all of the allegations contained in a complaint is inapplicable to
legal conclusions. Threadbare recitals of the elements of a cause of action, supported by mere
conclusory statements, do not suffice. ”
Id
. A court ruling on a 12(b)(6) motion may rely on the
complaint, its proper attachments, “documents incor porated into the complaint by reference, and
*5
matters of which a court may take judicial notice.”
Dorsey v. Portfolio Equities, Inc.,
III. DISCUSSION A. Trademark Infringement Count I of the amended complaint asserts trademark infringement claims under “Texas common law and under the common laws of the States in which Defendants operate.” (Am. Compl., Dkt. 16, at 8). It additionally alleges that, outside of Texas, Defendant is operating in Georgia, Tennessee, New York, Maryland and the District of Columbia .” ( ). Defendants urge dismissal of any claims based on the common law of states other than Texas because Plaintiff has failed to allege (1) that Defendants have infringed on Plaintiff’s mark in any states other than Texas ; or (2) that Plaintiff has any trademark rights in states other than Texas. ( at 9 10).
First, the Court finds that Plaintiff has adequately plead that it has trademark rights outside
of Texas. Under the common law, a senior user of a trademark can establish rights in the mark in
those territories where it actually uses the mark or into which the user might naturally expand.
See
Tally-Ho, Inc. v. Coast Cmty. Coll. Dist.
,
Here, the amended complaint alleges Plaintiff using the PlaceMKR mark across the country by completing a real estate transaction in 2019 with a New Jersey-based real estate fund, seeking investors nationwide, making real estate development proposals in various states, participating in and promoting the PlaceMKR brand in real estate investment and development trade conferences and events, and actively marketing Plaintiff’s real estate investment and development opportunities to investors and capital partners across the United States. (Am. Compl., Dkt. 16, at 3). Additionally, Plaintiff currently engages in real estate investment services with investors residing in Connecticut, New York, New Jersey, Texas, Montana, California, and the District of Columbia. ( ). The amended complaint also cites evidence supporting Plaintiff’s use of the P laceMKR mark extraterritorially to Texas. ( See id. Ex. A, at 15 (“As the city [of Austin] has grown, so has interest from out-of- state investors who don’t have the finger on the pulse of the city.”) ; id. Ex. B, at 21 (news article providin g that Plaintiff’s real estate development “sits in one of Austin’s opportunity zones, which are part of a federal tax incentive provision that encourages investors to re-invest capital gains into Qualified Opportunity Zone Funds”) ).
Though courts often reject the zone of natural expansion argument on the facts, narrowly
defining the senior user’s zone of natural expansion,”
Tally-Ho
,
As for Defendants’ activities outside of Texas, Plaintiff plead s that t he parties’ goods and services are overlapping, if not identical. ( ). Though Plaintiff concedes that it does not yet know the scope of Defendants’ use of the PLACEMAKR mark, the Court agrees it would be premature to dismiss Plaintiff’s claims at this stage when further details will be sought during discovery. Accordingly, the Court will not dismiss Plaintiff’s trademark infringement claims under the common law of states other than Texas.
B. Unfair Competition
In deciding whether to dismiss Plaintiff’s unfair competition claim, the first question is
whether the pleading requirements of Rule 8(a) or Rule 9(b) apply. Because the amended complaint
alleges Defendants’ false designations were “willful and deliberate,” Defendants contend the claims
are grounded in fraud and thus subject to Rule 9(b). (Mot., Dkt. 18, at 11). Under Rule 9(b), “a
plaintiff pleading fraud [must] specify the statements contended to be fraudulent, identify the
speaker, state when and where the statements were made, and explain why the statements were
fraudulent.”
Dorsey v. Portfolio Equities, Inc.
,
The Court finds instead that the more liberal Rule 8(a) applies. Section 43(a) of the Lanham Act provides:
Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another *8 person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person ’ s goods, services, or commercial activities,
shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. §1125(a).
As seen here, the provision prohibits false designations of origin with no mention of intent
to deceive or defraud. In contrast, fraud generally requires that misrepresentations be made with the
intent to deceive.
See
Restatement (Second) of Torts §§ 525 – 526 (1977); W. Keeton, D. Dobbs, R.
Keeton, & D. Owen, Prosser and Keeton on Law of Torts § 108 (5th ed. 1984). Because section
43(a) contains no scienter requirement, district courts in the Fifth Circuit have generally applied Rule
8(a) to section 43(a) claims.
E.g.
,
Tempur- Pedic Int’l Inc. v. Angel Beds, LLC
,
Though Rule 9(b) may be applied to claims that are “fraud - like” or “grounded in fraudulent
conduct,” courts have been reluctant to apply Rule 9(b) unless the claims are “founded on expressly
stated claims of fraud.”
Microsoft Corp. v. Chen
,
Here, Plaintiff alleges that Defendants conduct was “willful and deliberate,” but only in connection to its requests for enhanced damages, attorneys’ fees, and costs under 15 U.S.C. § 1117, and destruction of infringing articles, signage, and activities under 15 U.S.C. § 1118. (Am. Compl., Dkt. 16, at 9). Because section 43(a) itself contains no scienter requirement, the proper remedy is to disregard Plaintiff’s allegations of willful and deliberate conduct and ask whether Plaintiff has met the requirements of Rule 8(a). Plaintiff’s allegations that Defendan ts willfully violated the law in connection with its requests for special damages do not transform Plaintiff’s unfair competition allegations into fraud allegations.
The next question is whether Plaintiff has satisfied Rule 8(a). For a false designation of
origin claim under section 43(a), Plaintiff must show that: (1) Defendants made a false or misleading
statement of fact about their product or service; (2) the statement either deceived or had the capacity
to deceive a substantial segment of potential customers; (3) the deception was material, in that it was
likely to influence consumers’ purchasing decisions; (4) the product or service is in interstate
commerce; and (5) Plaintiff has been or is likely to be injured as a result of the statement at issue.
Farouk Systems, Inc. v. Costco Wholesale Corp.
,
Defendants argue that Plaintiff’s allegations fail to allege that Defendants’ statements “either deceived or had the capacity to deceive a substantial segment of potential customers, ” because *10 Plaintiff does not allege that the mix- up of the parties’ respective names was caused by exposure Defendants’ PLACEMAKR marks. (Mot., Dkt. 18, at 14). The Court disagrees. Plaintiff alleges that Plaintiff and Defendant are “targeting the same real estate equity investors, lenders, brokers, consultants, buyers and sellers.” (Am. Compl., Dkt. 16, at 6). Plaintiff further alleges that lenders and investors have canceled meetings with Plaintiff because they are not interested in investing in “short term rentals ,” and this confusion was caused by the mistaken belief that “Plaintiff’s real estate investment services are actually Defendants’ real estate investment services.” ( Id. at 7). Additionally, “many investors and consultants involved in business dealings with Plaintiff have called, expressing concerns about ‘Plaintiff’s real estate investments that were, in fact, Defendants’ real estate investments.” ( at 6). At this stage, these statements are enough to allege that Defendants’ representations “ deceived or had the capacity to deceive a substantial segment of potential customers ,” and were “likely to influence consumers’ purchasing decisions.” The Court therefore finds Plaintiff has stated a claim under Rule 8(a).
As with Plaintiff’s trademark infringement claim, Defendants also ask the Court to dismiss Plaintiff’s unfair competition claim as to claims under the common law of states other than Texas. (Mot., Dkt. 18, at 14). As the Court previously explained, dismissing the non-Texas claims at this stage is premature. Accordingly, the Court will deny Defendants’ motion to dismiss as to Plaintiff’s unfair competition claim.
C. Cancellation
Finally, Defendants urge the Court to dismiss the claims as to Plaintiff’s request for cancellation of Defendants’ federal trademark registrations and pending applications for registrations under 15 U.S.C. § 1119. ( ). Defendants offer two reasons: (1) the claims fail to comply with Rule 9(b); and (2) even if Plaintiff has adequately plead its cancellation request as to Defendants’ already *11 registered trademarks, courts may not cancel pending applications for trademark registrations as a matter of law. ( ).
First, the Court concludes that Plaintiff is not required to plead its cancellation request under
Rule 9(b). As the Court explained above, Rule 9(b) is generally reserved for claims predicated on
statutes or common law requiring some showing of scienter.
See, e.g., Dorsey
,
Defendants contend the cancellation request is based on fraud. According to Defendants, because the original c omplaint “ attempted to claim that Defendants intentionally defrauded the USPTO when it submitted its applications ,” “ Plaintiff cannot now contradict those allegations to avoid the need to plead the cancellation claim with particularity .” (Reply, Dkt. 25, at 5). To the contrary, the Court finds the differences between the original and amended complaints to be minor and do not warrant rejection of the amended complaint. The original complaint alleged that when Defendants applied for the ’367 and ’499 registrations, “ Defendants knew, or should have known, that Plaintiff had been using its PlaceMKR mark for similar goods and services .” (Compl., Dkt. 1, at 10). In the amended complaint, Plaintiff no longer alleges that Defendants “knew, or should have *12 known” about Plaintiff’s use of the PlaceMKR trademark, and instead requests cancellation based on the likelihood of confusion between the parties’ marks. (Am. Compl., Dkt. 16, at 8– 9). It is not uncommon for a plaintiff to modify or clarify its cause of action in response to a defendant’s motion to dismiss, as Plaintiff did here.
Defendants’ cited cases fail to support their position. In
Carillo v. Buendia
,
Second, the Court concludes it has the power to cancel Defendants’ pending applications for registrations under section 1119. Section 1119 gives courts authority to “determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to registrations of any party to the a ction.” 15 U.S.C. *13 § 1119. Defendants argue that section 1119 gives courts the authority to cancel registered trademarks but not pending applications. (Mot., Dkt. 18, at 15).
The Court disagrees. Another judge of this Court has previously stated that a court may
exercise jurisdiction over pending applications when “ one of the parties [has] a registered trademark
which has a sufficient nexus with the dispute over the pending applications .”
Amy ’ s Ice Creams, Inc. v.
Amy ’ s Kitchen, Inc.
,
More recently, the Ninth Circuit squarely held that a federal court may adjudicate pending
trademark applications where a related registered trademark is also at issue.
BBK Tobacco & Foods
LLP v. Central Coast Agric., Inc.
,
The district court ’ s authority to “ determine the right to registration ”
and rectify the register ” [under section 1119] includes the power to decide disputes over trademark applications. The Lanham Act refers to an “[a]pplication for use of trademark” as a “request [for] registration of [a] trademark on the principal register.” 15 U.S.C. § 1051(a)(1), (b)(1). A challenge to an application thus necessarily affects the applicant s right to a registration. See 15 U.S.C. §§ 1119, 1051(b)(1)[.] at 670. Defendants cite only out-of-circuit district court cases that dismiss requests for
cancel lation of a party’s pending applications for registration. ( See Mot., Dkt. 18, at 15 16). The Court finds the Ninth Circuit’s opinion persuasive, and Defendants have cited no Fifth Circuit authority or persuasive consensus from district courts in the Fifth Circuit that conclude otherwise. Therefore, the Court holds that it has the authority to cancel Defendants’ pending applications *14 because related registered trademarks are also at issue. The Court will therefore decline to dismiss Plaintiff’s request to cancel Defendants’ pending applications.
IV. CONCLUSION
Accordingly, IT IS ORDERED that Defendant s’ Motion to Dismiss, (Dkt. 18), is DENIED .
SIGNED on August 19, 2025.
________________________________ ROBERT PITMAN UNITED STATES DISTRICT JUDGE