IP Law Daily, TRADEMARK—D.D.C.: Abuse of process counterclaim dismissed in trademark infringement dispute between animal welfare organizations, (Apr 17, 2026)

By Carolin Dennis, B.Sc., LL.B., LL.M.

A counterclaim asserting abuse of process in a trademark infringement suit between two animal welfare organizations was dismissed for failure to state a claim.

The U.S. District Court for the District of Columbia granted in part the plaintiff’s motion to dismiss four of the defendant’s counterclaims for lack of subject matter jurisdiction, lack of standing, and failure to state a claim. The court granted the plaintiff's motion to dismiss as to the seventh counterclaim because the defendant did not allege plaintiff took any improper actions in the use of process but denied the motion as to the second, fourth, and fifth counterclaims (Humane World For Animals, Inc. v. American Humane Association, No. 1:25-cv-02672-JDB (D.D.C. Apr. 13, 2026)).

Background. Humane World for Animals, Inc. (Humane World) and American Humane Association (Humane Association) are two organizations that operate in the animal rescue, protection, and welfare space. Following Humane Association’s recent rebrand, Humane World alleged that Humane Association adopted logos that imitate the silhouettes in Humane World’s trademarks with actual knowledge of confusion among donors and the public and intent to capitalize on Humane World’s goodwill. Specifically, Humane World alleged (1) trademark infringement under 15 U.S.C. § 1114, (2) unfair competition under 15 U.S.C. § 1125(a), (3) common law trademark infringement, (4) common law unfair competition, and (5) unfair or deceptive trade practices under D.C. Code § 28-3904. In response, Humane Association denied many of the allegations and asserted affirmative defenses and counterclaims.

Humane Association asserted seven counterclaims: (1) declaratory judgment of non-infringement; (2) declaratory judgment that Humane World has no exclusive rights in the term “humane society” because the term is “generic” or “descriptive;” (3) declaratory judgment that Humane Association is the senior and exclusive user of certain marks; (4) unfair competition under 15 U.S.C. § 1125(a); (5) common law unfair competition; (6) unfair or deceptive trade practices under D.C. Code § 28-3904; and (7) abuse of process. Humane World moved for dismissal of Humane Association’s second, fourth, fifth, and seventh counterclaims for lack of subject matter jurisdiction, lack of standing, and failure to state a claim.

Second counterclaim. Humane World sought dismissal of Humane Association’s second counterclaim regarding exclusive rights in the term “humane society” because, in its view, that term is not at issue in this case. The court noted that Humane World is the party that brought this suit, alleging federal and common law trademark infringement, federal unfair competition, and state unfair or deceptive trade practices. Thus, there is an actual case or controversy, and one of Humane World’s own making. In response to Humane World’s complaint, Humane Association raised a host of affirmative defenses and brought counterclaims to boot, one of which asks the court to clarify the parties’ respective rights in the term “humane society.” The court also noted that it makes sense that Humane Association would want such clarification because it is being sued for infringing Humane World’s trademarks, which include that term. Therefore, to dismiss the second counterclaim would be to improperly “carve out” the “humane society” issue from this litigation. Thus, the court has subject matter jurisdiction to consider the second counterclaim.

Fourth and fifth counterclaims. Humane World argued that Humane Association lacked Article III standing to bring its unfair competition counterclaims because it failed to plausibly allege injury in fact. Humane World contended that Humane Association failed to plausibly allege “concrete and particularized” injury in fact, instead only offering “abstract allegations” that “broadly assert that Humane World has ‘taken advantage’ of the term ‘humane society’ to pass itself off” as Humane Association or local humane societies.

However, the court found that Humane World alleged “lost donations” that were mistakenly made to Humane World instead of Humane Association claiming that Humane Association has suffered commercial damages. Therefore, Humane Association met its standing burden at this stage as to the fourth and fifth counterclaims by alleging the prototypical harm of pocketbook injury from diverted donations.

Seventh counterclaim. Lastly, Humane World contended that Humane Association failed to state a claim for abuse of process because Humane Association failed to plausibly allege an ulterior motive or an improper act in Humane World’s use of process. Humane Association claimed that Humane World engaged in a scheme of launching multiple legal actions in this court and with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board as part of flagrant attempts to prevent Humane Association from using its marks in the animal welfare space in order to eliminate fair competition for donations. It further alleged that these filings amount to “misuse” of the judicial process because the actions are baseless and unfounded. The court found that, assuming even Humane Association sufficiently pled an ulterior motive, namely eliminating fair competition for donations, it failed to plausibly plead additional acts beyond the mere filing of this suit to abuse the judicial process to that end. Accordingly, Humane Association failed to plausibly allege abuse of process.

Therefore, Humane World’s motion to dismiss the seventh counterclaim was granted and the motion to dismiss as to the second, fourth, and fifth counterclaims was denied.

The Case is No. 1:25-cv-02672-JDB.

Judge: Bates, J.

Attorneys: Brent A. Hawkins (Morgan, Lewis & Bockius LLP) for Humane World For Animals, Inc. Michelle C. Pardo (Duane Morris LLP) for American Humane Association.

Companies: Humane World For Animals, Inc.; American Humane Association

Cases: Trademark DistrictofColumbiaNews USPTO