OPINION AND ORDER
Plaintiff Pulse Creations, Inc. (“Pulse”), a clothing distributor, brought suit in April 2015 against a competitor, ’Vesture Group, Inc. (“Vesture”), and.- several retailers to which Vesture supplies clothing, including Burlington Coat Factory, Inc. (“Burlington”), Sears Holding Corporation (“Sears”), and JC Penney,' Inc. (“JCP”) (collectively, the “Retailer Defendants,” and with Vesture, “Defendants”). In brief, Pulse sought injunctive relief and money damages for Defendants’ alleged infringement of Pulse’s rights to the PINKY trademark described herein, advancing claims under both federal -and New York State law. Defendants now move, under Federal Rules of Civil Procedure 12(b)(1)
BACKGROUND
A. Factual Background
Plaintiff Pulse is á New York corporation that sells clothing to a wide range of retailers. (FAC ¶¶ 12, 18, 19). Defendant Vesture is a California corporation that similarly supplies apparel to multiple retailers, including the Retailer Defendants. (Id. at ¶¶ 13-16).
In 2010, Pulse applied to the United States Patent and Trademark Office (the “USPTO”) for a trademark on the “PINKY” mark, stating in its application that it had been using the mark continuously in connection with clothing sales since 1981. (FAC ¶¶ 18, 23). The PINKY mark was thereafter registered to Pulse, on October 30, 2012, for use on “BLOUSES, SHIRTS, PANTS, SHORTS, JACKETS, JUMPSUITS, ROMPERS, ' LOUNGEWEAR, AND SLEEPWEAR ' EXCLUDING BABY, JUVENILE AND TODDLER CLOTHING AND ACCESSORIES.” (FAC Ex. A (capitalization in original)).
On April 30, 2013, Vesture filed an application with the USPTO to register the PINKY LOS ANGELES mark, stating that it had used this mark in connection with its sales of a wide range of adult and children’s apparel since November 1, 2009. (FAC ¶ 27). The USPTO rejected Ves-ture’s trademark. application on the grounds that the applied-for mark would likely cause confusion with Pulse’s PINKY mark; consequently, on June 24, 2014, Ves-ture filed a petition to cancel Pulse’s mark. (Id. at ¶¶ 28-29). Vesture subsequently withdrew its petition for cancellation. (Id. at ¶ 31). "
According to Plaintiff, despite having (i) received notice that its mark might cause confusion - with Plaintiffs, and (ii) abandoned its petition to cancel that competing mark, Vesture continued to use the PINKY mark in its sales of both adult and children’s clothing. (FAC ¶ 32). Specifically, Plaintiff alleges that Vesture continued to sell, and that the Retailer Defendants continued to buy and resell, clothing bearing the PINKY mark, despite knowing that the items infringed upon Pulse’s trademark rights. (Id. at ¶¶ 34, 36-38). To support its allegations, Plaintiff attached exhibits .to its First Amended .Complaint purporting to show, in a non-exhaustive manner, infringing items of clothing sold by each of the Defendants. (See id. at Ex. F-I). . . .
B. Procedural Background
On April 1, 2015, Pulse filed a complaint against Defendants, as well as against Bakk Enterprise, LLC (“Bakk”) and Does 1-20, alleging violations of §§ 32 and 43(a) of the Lanham Act, see 15 U.S.C. §§ 1114, 1125(a), as well as state, law violations under New York General Business Law § 349 and New York common law. (Dkt. #1). On June 11, 2015, Plaintiff filed its First Amended Complaint, deleting Bakk
On June 25, 2015, two weeks after Plaintiff filed its First Amended Complaint, Defendants filed their motion to dismiss under Federal Rules of Civil Procedure 12(b)(1) and 12(b)(6). (Dkt. #29, 30). In support of their motion, Defendants submitted four witness declarations setting forth responses to Plaintiffs factual allegations. (Dkt. #31-34). Shortly thereafter, Plaintiff submitted a letter requesting that the Court disregard the submitted declarations as improper extrinsic evidence on a Rule 12(b)(6) motion to dismiss. (Dkt. #36). After receiving Defendants’ responsive letter (Dkt. #37), the Court granted Plaintiffs request, finding that Defendants’ declarations indeed constituted extrinsic evidence inappropriate for consideration upon a Rule 12(b)(6) motion (Dkt. #38).
On July 27, 2015, Plaintiff submitted its memorandum in opposition to Defendants’ motion. (Dkt. #39). Briefing on the motion then closed on August 10, 2015, with the submission of Defendants’ reply. (Dkt. #40). Notwithstanding the conclusion of the briefing schedule, Defendants submitted a letter on October 21, 2015, setting forth additional information about Ves-ture’s own trademark registration process. (Dkt. #41). Plaintiff filed a responsive letter on October 23, 2015. (Dkt. #42). On October 26, 2015, the Court issued an endorsement of Defendant’s October 21 Letter, noting that (i) briefing on Defendants’ motion had closed and (ii) the Court would consider only “the materials permitted to be considered under Federal Rule of Civil Procedure 12(b)(6) and the relevant case law.” (Dkt. #43).
DISCUSSION
A. Motions Under Fed. R. Civ. P. 12(b)
1. Motion to Dismiss Under Fed. R. Civ. P. 12(b)(1)
“[A] district court may properly dismiss a case for lack of subject matter jurisdiction under Rule 12(b)(1) if it lacks the statutory or constitutional power to adjudicate it.” Aurecchione v. Schoolman Transp. Sys., Inc.,
In resolving a ‘Rule 12(b)(1) motion to dismiss, “[t]he court must take -all facts alleged in the complaint as true and draw all reasonable inferences in favor of [thé] plaintiff, but jurisdiction must be shown affirmatively, and that showing [may] not [be] made by drawing from the pleadings inferences favorable to the party asserting it.” Morrison v. Nat'l Austl. Bank Ltd.,
2. Motion to Dismiss Under Fed. R. Civ. P. 12(b)(6).
Wlien considering a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), a court should “draw all reasonable inferences in [the plaintiffs] favor, assume all well-pleaded factual allegations to be true, and determine whether they plausibly give rise to an entitlement to relief.” Faber v. Metro. Life Ins. Co.,
“In considering a motion to dismiss for' failure to state a claim pursuant to Rule 12(b)(6), a district court may consider the facts alleged in the complaint, documents attached to the complaint as exhibits, and documents' incorporated by reference in the complaint.” DiFolco v. MSNBC Cable LLC,
B. Plaintiff Has Adequately Alleged Trademark Infringement Under Both 15 U.S.C. § 1114 and the Common Law
1. Applicable Law
Claims for trademark infringement under § 32 of the Lanham Act, 15
2. Analysis
Defendants first argue that Plaintiffs trademark infringement claims must be dismissed for lack of standing pursuant to .Federal Rule of Civil. Procedure 12(b)(1). Their reasoning proceeds as follows: 15 U.S.C. § 1114 protects only registered trademarks, the scope of which is defined by the marks’ respective registration certificates. Here, .Plaintiffs mark contains an exclusion for “baby,, juvenile and- toddler clothing and accessories.” (FAC Ex. A (capitalization omitted)). Because Defendants have only produced goods falling within this exclusion — and thus outside of Plaintiffs trademark rights — Plaintiff lacks standing to bring an infringement suit.
Defendants’ argument, while concededly clever, proves too much: A plaintiff seeking to maintain an action in federal court is “always required” to have standing. Valley Forge Christian Coll. v. Ams. United for Separation of Church and State, Inc.,
.Defendants’ Rule 12(b)(1) argument also fails on the merits. Plaintiff does not allege that Defendants dealt specifically or solely in infringing “baby, juvenile, [or] toddler clothing”; instead, Plaintiff alleges that Defendants advertised and sold, inter alia, a broad range of adult clothing bearing the PINKY mark. (FAC ¶¶ 30, 32). And while Defendants asseverate that they never manufactured adult clothing, the Court may not .consider those assertions in this setting. Contrary to Defendants’ contention, Plaintiff does not “assert rights it never had.” (Def. Br. 16). Rather, Plaintiff asserts rights that may ultimately be found not to have been violated.
Alternatively, Defendants move for dismissal of Plaintiffs trademark infringement claims under Rule 12(b)(6), on the basis that Plaintiff lacks a federally-registered trademark in “girls’ clothing,” which Defendants contend is the only type of clothing as to which Plaintiff has alleged infringement. (Def. Br. 11). While recognizing that Defendants have raised some
As just noted, Plaintiffs First Amended Complaint does not limit its assertions of infringement to girls’ clothing; instead, it broadly alleges that Defendants traded in infringing “apparel.” (FAC ¶¶ 26, 35-38). As a factual predicate for this claim, Plaintiff offers, inter alia, circumstantial evidence in the form of statements taken from Vesture’s failed 2013 application for a trademark on the mark PINKY LOS ANGELES, in which Vesture represented that it has used the applied-for mark in United States commerce since November 1, 2009, on or in connection with both adult and children’s clothing. (Id. at ¶¶ 27, 32). While it is certainly true that “in general, courts do not bind parties to their statements made or positions taken in ex parte [trademark] application proceedings in front of the PTO,” Perfect Pearl Co. v. Majestic Pearl & Stone, Inc.,
Plaintiff additionally attached exhibits to its First Amended Complaint purporting to show infringing items of clothing advertised and sold by Defendants. (FAC Ex. FI). Defendants argue that these exhibits cannot support a valid infringement claim because the featured clothing items are all pieces of “girls’ clothing,” and Plaintiffs trademark rights expressly exclude any right to the PINKY mark for “baby, juvenile and toddler clothing and accessories.” (Def. Br. 4, 14). As an initial matter, whether • the pictured items constitute “girls’ clothing” would itself seem to be a question of fact not properly determinable on a Rule 12(b)(6) motion. But even if the Court.were to find that the items constituted “girls’ clothing,” the Court is not willing to' say, as a matter of law, -that “girls’ clothing” is necessarily a subset of “juvenile clothing.”' It may be the case, for instance, that as those terms are used in the clothing trade — or more particularly, as they were used in Plaintiffs communications with the USPTO — “girls’ clothing” covers pieces for girls ages 13-17,-while “juvenile clothing” encompasses ages 10-12. The' Court observes that Exhibit.G to the First Amended' Complaint, which consists of a screenshot from one Retailer Defendant’s online store, lists “Juniors” and “Girls” as two separate categories. (FAC Ex. G). This distinction may ultimately prove illusory; the Court’s point is simply that whether the items pictured in the exhibits to Plaintiffs First Amended Complaint are “juvenile clothing,” such that they fall outside of Plaintiffs trademark rights, is an issue that cannot be decided on a motion to dismiss.
Finally, Defendants support their motion by arguing that Plaintiff cannot prove either actual or likely confusion as a result of their use of the PINKY mark. (Def. Br. 23). '¡But Plaintiff need not “prove” confusion at the motion to dismiss stage. On the-contrary, “[likelihood of confusion is a fact-intensive- analysis that ordinarily does not lend itself to a motion to dismiss.” Van Praagh v. Gratton,
C. Plaintiff Has Adequately Alleged Product Infringement Under Lan-ham Act § 43(a)
1. Applicable Law
Section 43(a) of the Lanham Act provides, in pertinent part, that
[a]ny person, who ... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin ... [which] is likely to cause confusion, or to cause mistake, or to deceive ... as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person ... 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). Hence, “[t]o state a claim under this section of the Lanham Act, plaintiff must allege that [i] goods or services are involved, [ii] interstate commerce is affected, and [iii] there is a false designation of origin or a false description or representation with respect to those goods or services in commerce.” Sun Trading Distrib. Co. v. Evidence Music, Inc.,
2. Analysis
Defendants’ • arguments under § 43(a) of the Lanham Act mirror those made under § 32 — namely, that Plaintiff has failed to allege sufficient factual support for likelihood of consumer confusion, and that Plaintiffs own statements concede the limited scope of its trademark rights; those arguments fail for the reasons already discussed. Defendants further argue that Plaintiffs § 43(a) claim must fail because Plaintiff does not allege that Defendants have made any false or deceptive statement regarding the products at issue. However, § 43(a) “provides for two distinct causes of action: false designation of origin or source, known as ‘product infringement,’ and false description or representation, known as ‘false advertising.’ ” Res. Developers, Inc. v. Statue of Liberty-Ellis Island Found., Inc.,
Plaintiffs § 43(a) claim may be inart-fully pleaded, insofar as Plaintiff has titled the relevant count “False Description and Designation of Origin in Commerce,” and has thereby conflated two distinct theories under which a § 43(a) claim may be brought (and only one of which Plaintiff has adequately asserted). However, this failure does not doom Plaintiffs § 43(a) claim: While Defendants are correct that Plaintiff has pleaded little more than the text of the, statute in regards to any false statements purportedly made by Defendants, Plaintiff has provided sufficient factual support for its assertion that Defendants have sold goods with a false designation — namely, the PINKY mark— that would suggest that Plaintiff produced and sold those goods. (See, e.g., FAC Ex. F-I), Thus Plaintiff has sufficiently alleged a claim for product infringement under § 43(a) of the Lanham Act, and Defendants’ motion to dismiss that count of the First Amended Complaint must therefore be denied.
D. Plaintiff Has Adequately Alleged Unfair Competition Under New York Common Law
1. Applicable Law
The elements of an unfair competition claim in New York largely mirror-those under § 43(a) of the Lanham Act. See Kaplan, Inc. v. Yun,
2. Analysis
Plaintiffs First Amended Complaint sufficiently alleges the elements of trademark infringement and unfair competition under the Lanham Act, and, Defendants offer no new arguments to the contrary in connection with Plaintiffs claim for unfair competition under New York law; consequently, the only additional factor the Court must consider is that of bad faith. See Erickson Beamon Ltd. v. CMG Worldwide, Inc., No. 12 Civ. 5105 (NRB),
Plaintiff alleges that each Defendant “is aware that [its]- continued use of the PINKY mark violates the law and Pulse’s intellectual property rights, such that the Defendants ... each ... kno[w] and/or [are] aware that Plaintiff owns the rights to the mark PINKY in connection with apparel.” (FAC ¶ 34). Plaintiff bolsters this claim with specific factual allegations regarding Vesture’s own attempts to acquire trademark protection for the PINKY LOS ANGELES mark, .through which process Vesture, learned of (i) Pulse’s rights to the PINKY mark, and (ii)
Plaintiff, has sufficiently alleged bad faith on the part of Vesture. See George Nelson Found. v. Modernica, Inc.,
E. Plaintiff Has Not Adequately Alleged a Cause of Action for Deceptive Business Practices Under General Busi-néss Law § 349
1. Applicable Law
New York law prohibits “deceptive acts or practices in the conduct of any business, trade or commerce or in the furnishing of any service in this state[.]” N.Y. Gen. Bus. Law § 349- A cause of action under § 349 has three elements: (i) “the challenged act or practice was consumer-oriented”; (ii) “it was misleading in a material' way”; and (iii) “.the plaintiff suffered injury as a result of the deceptive act.” Crawford v. Franklin Credit Mgmt. Corp.,
2. Analysis
Courts in the Second Circuit are divided over whether trademark infringement claims are viable under § 349. The majority view, and the view that this Court adopts, is that “trademark infringement claims are not cognizable uiider ... § 349 unless there is specific' and substantial injury to the public interest' over and above the ordinary trademark infringement.” Van Praagh,
CONCLUSION
For the reasons stated in this Opinion, Defendants’ motion to dismiss Plaintiffs claim for deceptive trade practices under New York General Business Law § 349 is GRANTED. Their motion to dismiss Plaintiffs claims for (i) trademark infringement under Lanham Act § 32, (ii) false designation of origin under Lanham Act § 43(a); (iii) New York common law trademark, infringement, and (iv) New York common law unfair competition is DENIED. The Clerk of Court is directed to terminate the motion at docket entry number 29.
The parties are directed to appear for an initial pretrial ’conference on January 26, 2016, at 2:30 p.m. in Courtroom 618 of the Thurgood Marshall Courthouse, 40 Foley Square, New York, New York. The parties are directed to submit a proposed case management plan and joint status letter no later than January 21, 2016, pursuant to the Court’s Individual Rules of Civil Practice.
SO ORDERED.
Notes
. The facts contained in this Opinion are drawn from the First Amended Complaint (or “FAC”) (Dkt. #25), and are taken as true for purposes of this motion. See Faber v. Metro. Life Ins. Co.,
. As Defendants note {see, e.g., Def. Reply 3), Plaintiff's inclusion of references to the Ultra Pink mark is something of a red herring, inasmuch as the registration explicitly disclaims exclusivity of use beyond the precise "Ultra Pink” mark, and Plaintiff does not allege that Defendants have sold any goods bearing the Ultra Pink mark (see id. (citing FAC Ex. B)).
. The Court acknowledges that Defendants have also moved pursuant to Rule 12(b)(1), under which evidence outside of the pleading may properly be considered. See Makarova v. United States,