MEMORANDUM OPINION AND ORDER
Plaintiff Sarkis’ Cafe, Inc. (“Sarkis”), an Illinois corporation, has sued Defendant Sarks in the Park, LLC (“SITP”), an Illinois limited liability company, for false designation of origin, trademark infringement, dilution, unfair competition, consumer fraud, deceptive trade practices, and injunctive relief. Defendant asserts counterclaims against Plaintiff seeking a declaratory judgment as to non-infringement of Plaintiffs trademark and cancellation of Plaintiffs trademark. Defendant also asserts three third-party claims against Daniel Gallagher and Scott Jaffe (the “third-party Defendants”). Plaintiff now moves to dismiss Defendant’s counterclaims pursuant to Federal Rule of Civil Procedure (“Rule”) 12(b)(6); to strike Defendant’s affirmative defenses pursuant to Rule 12(f); and to strike Defendant’s third-party claims under 28 U.S.C. § 1367(c). For the reasons set forth herein, the Court: (1) grants in part and denies in part Plaintiffs motion to dismiss Defendant’s counterclaims; (2) grants Plaintiffs motion to strike Defendant’s affirmative defenses;
Factual Background
Gallagher sold SITP to Erin Knapp in March 2012. Def.’s Countercls. & 3d Party Cls. ¶¶ 9-10. Gallagher had been the sole owner of SITP starting in 2010. Id. ¶ 11. Prior to that time, he had owned SITP with a partner, Jose Alomia. Id.
During Gallagher’s ownership in May 2009, he and Alomia were approached by Jaffe, who claimed to be the owner of Sarkis. Id. ¶¶ 12-13. On May 18, 2009, Jaffe entered into a letter agreement with Gallagher and Alomia, granting SITP permission to use Sarkis’ “trade names, trademarks, recipes, names of suppliers and other intellectual property.” Id. ¶¶ 12, 14. The letter also included terms for a royalty and stated that Sarkis would briefly provide SITP with employees. Id. ¶ 15. SITP officially opened in Chicago’s Lincoln Park neighborhood on or around July 10, 2009, and sent its employees to be trained at' Sarkis. Jaffe approved of, participated in, and authorized this training. Id. ¶¶ 18-19.
Around this time, Sarkis displayed in its restaurant three articles from local publications touting SITP’s relationship with Sarkis. For example, Sarkis displayed a Chicago Sun-Times article from June 29, 2009, stating that Sarkis was opening its first satellite location in Lincoln Park (referring to SITP). Id. ¶¶ 21-22. Sarkis also exhibited an August 1, 2009, article that touted SITP as an outpost of Sarkis. Id. ¶¶ 23-24. Another article stated that “[Sarkis] has continued to thrive under its current owner, Scott Jaffe.” Id. ¶20. Jaffe himself also promoted SITP as Sark-is’ new Lincoln Park location in an interview that was posted on Vimeo. Id. ¶ 25. Defendant alleges that, through these and other actions, Sarkis “held out and informed the public and others that Sarks in the Park was its Lincoln Park location.” Id. ¶ 26.
Despite this, on July 18, 2009, less than a month after SITP’s opening, Sarkis’ attorney informed Gallagher and SITP that the new restaurant’s “use of the Sarkis name, mark, menu and logo would infringe upon Plaintiffs rights.” Id. ¶ 27. Accordingly, Sarkis believed as early as July 18, 2009, that its marks were being used by SITP without permission. Id. ¶28. Despite receiving this communication from Sarkis, Gallagher did not inform Knapp before selling SITP to him that Sarkis had objected to SITP’s use of the “Sarkis” mark and its right to open or operate the restaurant. Id. ¶ 31.
Defendant now asserts two counterclaims against Plaintiff, the first seeking a declaratory judgment that it is not infringing upon Plaintiffs trademark pursuant to 28 U.S.C. §§ 2201 and 2202, and the second requesting cancellation of the Sarkis trademark pursuant to 15 U.S.C. § 1064(3). Defendant also brings claims against third party Defendants, Gallagher and Jaffe, alleging common law misrepresentation by Gallagher and Jaffe and breach of contract by Gallagher.
Discussion
I. Motion to Dismiss Counterclaims
A. Declaratory Judgment
Plaintiff first urges the Court to dismiss Defendant’s declaratory judgment counterclaim, arguing that it is duplicative of the claims contained in Plaintiffs Complaint.
Defendant’s first counterclaim seeks a declaratory judgment of non-infringement pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201. See Def.’s Countercls. ¶ 34. “To seek a [declaratory judgment], a party must demonstrate ‘a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of declaratory judgment.’ ” Meaden v. Meaden, No. 12 C 3534,
In response, Plaintiff asserts that Defendant’s declaratory judgment counterclaim should be dismissed because it is duplicative of the claims contained in the Complaint and will thus fail to serve a “useful purpose” in determining the outcome of this case. See Pl.’s Mot. Dismiss. Countercls. 2. The Court agrees. In this instance, a cognizable dispute already exists between Plaintiff and Defendant regarding the latter’s use of Plaintiffs marks triggered by Count II of the Complaint. Where “the substantive suit would resolve the issues raised by the declaratory judgment action, the declaratory judgment action ‘serves no useful purpose’ because the controversy has ‘ripened’ and the uncertainty and anticipation of litigation are alleviated.” Intercon Solutions, Inc. v. Basel Action Network,
B. Cancellation of Sarkis Trademark
Defendant’s second counterclaim seeks to cancel Sarkis’ trademark. See Coun-
Plaintiffs first argument is incorrect. Contrary to Plaintiffs assertion, Defendant’s counterclaim is not duplicative of its claimed defense that Plaintiffs “Sarkis” trademark is invalid. Defendant asserts that the trademark was obtained by fraud and should be cancelled for that reason pursuant to 15 U.S.C. § 1064(3). Defendant seeks this relief separate and apart from its request that the Court declare the trademark invalid. Because Defendant’s counterclaim seeking a cancellation of Plaintiffs mark based upon fraud may potentially afford Defendant different or additional relief than a finding of invalidity alone, the claim is not duplicative of Defendant’s trademark invalidity defense. See, e.g., Am. Hosp. Supply Corp. v. Fisher Scientific Co.,
In addition, Plaintiff argues that the USPTO possesses the sole power to cancel a registered trademark and that U.S. federal courts lack jurisdiction to hear such claims. See PL’s Mot. Dismiss Countercls. 3. This also is incorrect. See Specht v. Google Inc.,
II. Motion to Strike Affirmative Defenses
Plaintiff next moves to strike Defendant’s affirmative defenses pursuant to Rule 12(f).
As an initial matter, the Seventh Circuit has yet to decide whether the heightened Twombly-Iqbal standard applies to affirmative defenses. See Twombly,
With this standard in mind, the Court holds that Defendant’s affirmative defenses are insufficiently pleaded to survive Plaintiffs motion to strike. Defendant pleads its affirmative defenses in broad terms; each defense — save one, the fifteenth — is presented in a single sentence, see Def.’s Ans. 2d Am. Compl. 16-19, and Defendant has failed to provide any factual support for them. The third affirmative defense, for example, states merely that “Plaintiffs claims are barred by the doctrine of express or implied license.” Id. 16. Such “[tjhreadbare recitals of the elements,” Iqbal,
Having done so, the Court also must consider whether any of the alleged affirmative defenses would constitute legitimate affirmative defenses if they had been properly pleaded and, in those instances, grant Defendant’s request to amend. The Seventh Circuit “has identified two approaches for determining whether a defense not specifically enumerated in Rule 8(c) is an affirmative defense: (a) if the
Here, the Court concludes that Defendant’s second, third, eighth, tenth, twelfth, fourteenth, and fifteenth affirmative defenses could appropriately be pleaded as affirmative defenses. Defendant’s second (statute of limitations), third (license), tenth (laches and estoppel), and twelfth (fraud) affirmative defenses all are enumerated in Rule 8(c). See Fed.R.Civ.P. 8(c). Defendant’s eighth (failure to mitigate), fourteenth (unclean hands), and fifteenth (abandonment) defenses also constitute proper affirmative defenses. See Gaffney v. Riverboat Servs. of Ind., Inc.,
First, Defendant’s first affirmative defense alleges a failure to state a claim. There is some disagreement as to whether a failure to state a claim can be asserted as an affirmative defense. Compare, e.g., Illinois Wholesale Cash Register, Inc. v. PCG Trading, LLC, No. 08 C 363,
Second, Defendant’s fourth, fifth, sixth, seventh, ninth, eleventh, and thirteenth affirmative defenses each merely repeat various denials in Defendant’s Answer and are thus unnecessary. See Winding,
Third, Defendant’s thirteenth defense alleges that “Plaintiffs claims, in whole or in part, are barred because SITP’s conduct has at all times been innocent, in good faith, and non-willful.” Id. 16. Like the above defenses, Defendant already put “good faith” at issue in this case when it denied that its conduct was carried out in bad faith in paragraphs 25, 32, 42, and 48 of the Answer. See id. ¶¶ 25, 32, 42, 48. Moreover, it is Plaintiff who bears the burden of proof as to Defendant’s alleged lack of good faith or willful infringement. See, generally, Louis Vuitton S.A. v. Lee,
For the foregoing reasons, Defendant’s second, third, eighth, tenth, twelfth, fourteenth, and fifteenth affirmative defenses are stricken without prejudice, and Defendant has leave to replead these defenses in order to comply with the Twombly-Iqbal standard. Defendant’s first, fourth, fifth, sixth, seventh, ninth, eleventh, and thirteenth affirmative defenses, however, are stricken with prejudice pursuant to Rule 12(f).
III. Motion to Strike Third-Party Claims
Finally, Plaintiff moves to strike Defendant’s third-party claims against Gallagher and Jaffe, arguing that the Court should decline to exercise supplemental jurisdiction over them due to concerns of judicial economy, inconvenience, and fairness.
Federal courts have discretion to exercise supplemental jurisdiction over third-party claims brought by a defendant pursuant to 28 U.S.C. § 1367(a). See, e.g., Ruderman v. Bank of Am., N.A., No. 10 C 6153,
Here, the Court finds it appropriate to exercise supplemental jurisdiction over Defendant’s third-party claims under 28 U.S.C. § 1367(a) because the claims arise out of the same Article III case or controversy as do Plaintiffs claims against Defendant. Defendant’s two claims against Gallagher, for instance, allege that he failed to disclose that Plaintiff had not given SITP permission to use Sarkis’ marks, which in turn caused Defendant to purchase and operate SITP. Defendant’s third-party claim against Jaffe for misrep-
Conclusion
For the reasons provided in this Memorandum Opinion and Order, the Court grants in part and denies in part Plaintiff Sarkis’ Café, Inc.’s motion to dismiss Defendant Sarks in the Park, LLC’s counterclaims pursuant to Fed.R.Civ.P. 12(b)(6) [dkt. 105]. Count I of Sarks in the Park, LLC’s counterclaims is dismissed. The Court grants Plaintiffs motion to strike Defendant’s affirmative defenses under Fed.R.Civ.P. 12(f) [dkt. 106], but grants Defendant leave to amend Affirmative Defense Nos. 2, 3, 8, 10, 12, 14, and 15. Defendant shall file its amended pleading within twenty-one [21] days of this Order. Affirmative Defense Nos. 1, 4, 5, 6, 7, 9, 11, and 13 are stricken with prejudice pursuant to Fed.R.Civ.P. 12(f). Finally, the Court denies Plaintiffs motion to strike Defendant’s third-party claims against Daniel K. Gallagher and Scott N. Jaffe under 28 U.S.C. § 1367(c) [dkt. 107].
SO ORDERED
Notes
. The factual allegations contained in the counterclaims are taken as true for the purposes of this motion to dismiss. See Mouldtec, Inc. v. Pagter & Partners Int’l B. V., No. 12 C 4249,
. Plaintiff states that it seeks to strike Defendant's affirmative defenses pursuant to Rule 12(b)(6). Presumably, Plaintiff means to invoke Rule 12(f), not Rule 12(b)(6).
. For its part, Defendant argues that each defense is sufficiently supported by the factual background contained in the '‘counterclaims and third party claims” section of the Answer. See PL’s Resp. Mot. Strike 10-13. But Defendant fails to specify which facts apply to which particular defenses, and its efforts to do so in its response to Plaintiff’s motion to strike cannot serve as its lifeboat. See Car Carriers, Inc. v. Ford Motor Co.,
. Motions to strike third-party claims also are subject to the same pleading standards applicable to motions to dismiss. See, e.g., Hawks v. Am. Escrow, LLC, No. 09 C 2225,