PENNSYLVANIA RECORD

A federal judge in Philadelphia has granted in part, and denied in part a defense motion

to dismiss a lawsuit that was brought by a Philadelphia-based mixed martial arts promotional company against a competitor over claims of trademark infringement and property damage.

The case involves Xtreme Caged Combat, a promotion and training facility that has been in business since April 2009, and which sued Bucks County, Pa.-based ECC Fitness, also known as Extreme Cage Combat, in July of this year over allegations that the defendant engaged in trademark infringement and/or dilution after ECC took out a magazine advertisement that displayed an emblem or logo similar to the one used by the plaintiff.

Background information on the litigation shows that one of the plaintiffs in the pro se case, James Scott, went to ECC Fitness on July 12 to serve a copy of the complaint to the ECC, after which one of the named defendants, ECC proprietor Ofa Donaldson, allegedly punched one of the window’s of Scott’s car and kicked a dent in the rear passenger side door of the vehicle.

Scott subsequently filed a police report documenting the damage, and the vehicle was soon repaired, with co-plaintiff Ryan Kerwin reimbursing Scott for the cost of the damages.

In early August, Kerwin and Scott filed a supplemental complaint asserting a claim for damage to personal property.

On Aug. 30, the defendants moved to dismiss the complaint in its entirety, claiming that there was no subject matter jurisdiction over any of the claims, and that the complaint fails to state a claim upon which relief can be granted.

The defendants also moved for a more definite statement in the form of the filing of a single amended complaint.

On the issue of subject matter jurisdiction, U.S. District Judge Curtis Joyner disagreed with the defendants, determining that the plaintiffs did, in fact, identify a federal statute, the Lanham Act, under which the District Could would have jurisdiction.

The Lanham Act covers issues of trademark infringement.

“Between this identification and the claims stated, it is clear from the face of the Plaintiffs’ Complaint that there is a federal question,” Joyner wrote in his Nov. 20 memorandum and order.

Joyner did, however, dismiss the plaintiffs’ state law claim for property damage, reasoning that that claim had nothing to do with the trademark infringement case.

The judge disagreed with the plaintiffs’ contention that the damage to the vehicle was related to the federal claim because it occurred when the plaintiffs were effectuating process in the trademark infringement case.

“The property damage claim is legally and factually unrelated to the trademark claims,” Joyner wrote. “The only overlap between the claims is that the state law claim occurred while attempting to commence the federal law claim.

“Had the process server been involved in a car accident on his way to serve process in the suit, the Court surely would not have supplemental jurisdiction over a subsequent tort suit for personal injury,” Joyner continued. “The same logic applies here.”

The judge also ruled the plaintiffs have not failed to state a claim upon which relief may be granted with regard to the trademark infringement case, writing that the plaintiffs have sufficiently pled facts that the defendants’ use of their logo is likely to create confusion concerning the origin of goods or services.

“A likelihood of confusion exists when ‘consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark,’” the ruling states, referencing the case of Everett Laboratories, Inc. v. Vertical Pharms, Inc., a Third Circuit U.S. Appeals Court case from 2007.

In the present case, Joyner wrote that the plaintiffs appear to have pled facts sufficient to show that there would be a likelihood of confusion between the logos of the two companies.

The plaintiffs have also pled facts to show that the defendants knew Kerwin and Xtreme prior to using the name ECC Fitness and that the defendants ignored requests to refrain from promoting their business as such, according to the memorandum.

Lastly, Joyner ruled that the plaintiffs have failed to plead facts sufficient for the court to conclude that their trademark is “famous” as required for a trademark dilution claim.

The federal statute covering dilution claims states that a mark is considered “famous” only if it is “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”

Therefore, the judge granted the defense motion to dismiss the dilution claim, although Joyner did give the plaintiffs leave to amend their complaint to plead facts supporting a dilution claim, an action that must be done within 20 days from the date of the ruling.