IP Law Daily, TRADEMARK—E.D. Va.: Registration was sufficient indicia of trademark ownership to survive motion to dismiss, (Feb 14, 2024)

By Kevin M. Finson, J.D.

The infringement claims were supported by proper allegations of ownership by assignment, but the dilution claim lacked sufficient allegations that the plaintiff’s mark was famous.

A seller of eyelash extensions stated claims for trademark infringement but not dilution against a competitor, the U.S. District Court in Alexandria has held. A motion to dismiss trademark infringement claims on the basis that the marks had not been validly assigned to the plaintiff was denied because the plaintiff’s registration was primiafacie evidence of ownership, and evidence to the contrary was more properly the subject of an affirmative defense. While the plaintiff’s infringement claims could proceed, its dilution claim lacked sufficient facts to plausibly suggest that the plaintiff’s LBLA marks were famous enough to qualify for federal dilution protection (LBLA Beauty, LLC v. 11177753 Canada Corp., February 12, 2024, Alston, R.).

LBLA Beauty, LLC (LBLA) was a seller of eyelash extensions, supplies, and beauty products and claimed ownership of two trademark registrations for an “LBLA” and an “L LBLA” mark, each with an associated logo. LBLA brought suit against a competing seller of eyelash extension supplies, 11177753 Canada Corporation, d/b/a LLBA Professional (LLBA), alleging trademark infringement, dilution, and unfair competition under both federal and state law, as well as violation of the Virginia Consumer Protection Act. LBLA argued that LLBA’s use of a very similar name and mark created confusion in the marketplace as shown by complaints which LBLA had received from customers upset about the quality of LLBA’s products. LLBA moved to dismiss.

Trademark ownership. LLBA argued that the trademark claims must be dismissed because LBLA was not the owner of the asserted registrations, but had rather received purported assignments of them from a prior owner entity which was legally dissolved prior to the date of the assignments and therefore could not have effectively transferred ownership.

The court held that LBLA’s registrations created a rebuttable presumption of ownership of the marks, and while LLBA’s arguments may have had merit, they were properly an affirmative defense or counterclaim and therefore not considered at the motion to dismiss stage.

Dilution. LLBA argued that LBLA had failed to plead facts to support the plausible inference that the LBLA mark was nationally famous. The court found that while LBLA had made factual allegations to support a claim that it was well known in the beauty or lash extension industry, there was nothing to show recognition outside of that specialized market. Allegations about advertising expenses lacked context to show support for the idea the mark was a household name. Any allegations actually referring to nationwide recognition were mere legal conclusions missing factual support. The court held LBLA had failed to state a claim for dilution.

The court granted the motion to dismiss the dilution claim, with leave to amend, and denied the motion as to the other claims. The court also dismissed the Virginia Consumer Protection Act claim because it was voluntarily withdrawn by LBLA.

The Case is No. 1:23-cv-665.

Attorneys: David Ludwig (Dunlap Bennett & Ludwig PLLC) for LBLA Beauty, LLC. Craig Crandall Reilly (Law Office of Craig C. Reilly) for 11177753 Canada Corp. d/b/a LLBA Professional.

Companies: LBLA Beauty, LLC; 11177753 Canada Corp. d/b/a LLBA Professional

Cases: Trademark VirginiaNews