Amazon Brief in Support of Motion To Dismiss

USDC IN/ND case 1:22-cv-00035-HAB-SLC document 29 filed 04/29/22 page 1 of 28
IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF INDIANA,
FORT WAYNE DIVISION
)
RENEE GABET and
)
ANNIE OAKLEY ENTERPRISES, INC.,
)
)
Plaintiffs,
) The Honorable
) Holly A. Brady
-vs.-
)
) No. 1:22-cv-00035-HAB-SLC
AMAZON.COM, INC., and
)
JOHN DOES 1-50,
)
)
Defendants.
)
BRIEF IN SUPPORT OF MOTION TO

DISMISS OF DEFENDANT AMAZON.COM, INC.
TABLE OF CONTENTS
INTRODUCTION--------------------------------------------------------------------------------------- 1
THE FAC’S ALLEGATIONS ------------------------------------------------------------------------- 3
I. THE PARTIES------------------------------------------------------------------------- 3
II. GABET’S ALLEGED TRADEMARK REGISTRATIONS -------------------- 3
III. AMAZON’S ALLEGED TRADEMARK INFRINGEMENT ------------------ 6
IV. AMAZON’S ALLEGED COUNTERFEITING----------------------------------- 7
V. THE FAC’S COUNTS---------------------------------------------------------------- 7
ARGUMENT -------------------------------------------------------------------------------------------- 8
I. COUNTS I—III SHOULD BE DISMISSED

BECAUSE THE FAC LACKS PLAUSIBLE
LIKELIHOOD OF CONFUSION ALLEGATIONS. ---------------------------- 8
A. The “Keystone” of Trademark

Infringement Is Likelihood of Confusion---------------------------------- 8
B. Trademark Infringement Complaints

Must Have Plausible Factual
Allegations of Likelihood of Confusion ----------------------------------- 9
C. The FAC Lacks Plausible Likelihood of Confusion Allegations ------ 10
II. ALL CLAIMS RELATED TO 15 TRADEMARKS

SHOULD BE DISMISSED BECAUSE THE FAC
DOES NOT ALLEGE AMAZON USES THEM -------------------------------- 14
III. THE FAC LACKS PLAUSIBLE

ALLEGATIONS OF TRADEMARK COUNTERFEITING ------------------- 15
IV. THE COURT SHOULD DISMISS AOE’S COUNT I

CLAIMS BECAUSE AOE IS NOT “THE REGISTRANT” ------------------- 17
A. Only “the Registrant” May Assert

Claims Under Section 1114 ------------------------------------------------ 17
B. AOE’s Section 1114 Claims Should Be

Dismissed Because AOE Is Not “the Registrant” ----------------------- 18
-i-
V. COUNT IV SHOULD BE DISMISSED

BECAUSE USE OF “ADVERTISING IDEA”
IS NOT A RECOGNIZED UNFAIR COMPETITION TORT----------------- 19
CONCLUSION ----------------------------------------------------------------------------------------- 21
-ii-
TABLE OF AUTHORITIES
Page(s)
Cases
Annie Oakley Enterprises, Inc. v. Amazon.com, Inc.,

No. 1:19-CV-1732-JMS-MJD, 2021 WL 4147189 (S.D. Ind. Sept. 13, 2021)------------ 1–3

No. 1:19-CV-1732-JMS-MJD, 2020 WL 6606428 (S.D. Ind. Nov. 12, 2020) ------------- 2

No. 1:19-CV-1732-JMS-MJD, 2020 WL 6882177 (S.D. Ind. Sept. 9, 2020)--------------- 2

No. 1:19-CV-1732-JMS-MJD, 2021 WL 2373779 (S.D. Ind. June 10, 2021) -------------- 2

No. 1:19-CV-1732-JMS-MJD, 2022 WL 456660 (S.D. Ind. Feb. 15, 2022) --------------- 2
Annie Oakley Enterprises et al. v. Rise-N-Shine, LLC et al,.

No. 1:20-cv-00638-RLY-TAB, x op. (S.D. Ind. March 23, 2021) --------------------- 16–18

No. 1:19-CV-1732-JMS-MJD, 2021 WL 4147189 (S.D. Ind. Sept. 13, 2021)------------ 2, 3
Ashcroft v. Iqbal,
556 U.S. 662 (2009) ---------------------------------------------------------------------------------- 9
Bd. of Regents of Univ. of Wis. Sys. v. Phx. Int’l Software, Inc.,

653 F.3d 448 (7th Cir. 2011) ------------------------------------------------------------------------ 8
Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007) ---------------------------------------------------------------------------------- 9
Bissessur v. Indiana Univ. Bd. of Trustees,

581 F.3d 599 (7th Cir. 2009) ----------------------------------------------------------------------- 15
Eastland Music Grp., LLC v. Lionsgate Ent., Inc.,

707 F.3d 869 (7th Cir. 2013) ----------------------------------------------------------------------- 10
Fed. Treasury Enter. Sojuzplodoimport v. SPI Spirits Ltd.,

726 F.3d 62 (2d Cir. 2013) ---------------------------------------------------------------- 17, 18, 19
Fortres Grand Corp. v. Warner Bros. Ent. Inc.,

763 F.3d 696 (7th Cir. 2014) --------------------------------------------------------------- 9, 10, 20
-iii-
Heckler & Koch, Inc. v. German Sport Guns GmbH,

No. 1:11-cv-01108-SEB-TAB, 2013 WL 12291720 (S.D. Ind. Sept. 27, 2013) ---- 9, 19, 20
Indiana Grocery Co., Inc. v. Super Valu Stores, Inc.,

684 F. Supp. 561 (S.D. Ind. 1988) ---------------------------------------------------------------- 20
Larry Trover Produce, Inc. v. Nutrien Ag Sols., Inc.,

No. 3:21-cv-1035-JPG, 2022 WL 594863 (S.D. Ill. Feb. 28, 2022) -------------------------- 15
Lexmark Int’l, Inc. v. Static Control Components, Inc.,

572 U.S. 118 (2014) --------------------------------------------------------------------------------- 17
Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc.,

140 S. Ct. 1589 (2020) ------------------------------------------------------------------------------- 2
N. Am. Van Lines, Inc. v. N. Am. Moving & Storage, Inc.,

No. 1:18-CV-196-HAB, 2020 WL 703178, at *4 (N.D. Ind. Feb. 10, 2020) ---------------- 16
Republic Techs. (NA), LLC v. Friends Trading Inc.,

No. 19 C 7991, 2020 WL 5905218 (N.D. Ill. Oct. 6, 2020) ----------------------------------- 10
RooR Int’l BV v. Amused Clothing, LLC,

No. 4:19CV11-PPS/JPK, 2020 WL 1929117 (N.D. Ind. Apr. 21, 2020) --------------- 17, 19
RooR Int’l BV v. Muncie Petroleum Inc.,

No. 1:18-CV-03959-SEB-DML, 2020 WL 2748196 (S.D. Ind. May 27, 2020) --------- 9, 20
Sands, Taylor & Wood Co. v. Quaker Oats Co.,

978 F.2d 947 (7th Cir. 1992) ------------------------------------------------------------------------ 8
Silgan Containers LLC v. Int’l Ass’n of Machinists & Aerospace Workers, AFL-CIO,
No. 18-C-213, 2018 WL 5840766 (E.D. Wis. Nov. 8, 2018) ---------------------------------- 10
Sorensen v. WD-40 Co.,

792 F.3d 712 (7th Cir. 2015) ------------------------------------------------------------ 8, 9, 13, 14
Specht v. Google Inc.,

747 F.3d 929 (7th Cir. 2014) ------------------------------------------------------------------ 17, 19
Sullivan v. CBS Corp.,

385 F.3d 772 (7th Cir. 2004) ----------------------------------------------------------------------- 13
Taha v. Int’l Brotherhood of Teamsters, Loc. 781,

947 F.3d 464 (7th Cir. 2020) -------------------------------------------------------------------- 9, 11
Tecnomatic, S.p.A. v. Remy, Inc.,

No. 1:11-CV-00991-SEB, 2012 WL 2376066, at *15 (S.D. Ind. June 22, 2012) ----------- 20
Trove Brands, LLC v. California Innovations Inc.,

No. 21 C 1132, 2021 WL 5320408 (N.D. Ill. Nov. 16, 2021) --------------------------------- 10
-iv-
Ty, Inc. v. The Jones Group, Inc.,

237 F.3d 891 (7th Cir. 2001) ----------------------------------------------------------------------- 13
Statutes
15 U.S.C. § 1114 --------------------------------------------------------------------------------- passim

15 U.S.C. § 1114(1) ------------------------------------------------------------------------------- 18, 19
15 U.S.C. § 1114(1)(b) -------------------------------------------------------------------------------- 17
15 U.S.C. § 1116(d)(1)(B)(i) -------------------------------------------------------------------------- 16
15 U.S.C. § 1117(c) ------------------------------------------------------------------------------------ 16
15 U.S.C. § 1117(c)(2)---------------------------------------------------------------------------------- 7
15 U.S.C. § 1125(a) ------------------------------------------------------------------------------------- 7
15 U.S.C. § 1127 ---------------------------------------------------------------------------------- 16, 18
Rules
Federal Rule of Civil Procedure 12(b)(6) ------------------------------------------------------------ 1
Miscellaneous
The United States Patent Office

Trademark Manual of Examining Procedure (July 2021) § 1401.02(a) --------------------- 4
-v-
Pursuant to Local Rule 7-1(a), defendant Amazon.com, Inc. (“Amazon”) respectfully
submits this brief in support of its motion under Federal Rule of Civil Procedure 12(b)(6) to
dismiss the Amended Complaint for Willful and Intentional Trademark Infringement and
Related Claims (“First Amended Complaint” or “FAC”) of plaintiffs Renee Gabet and Annie
Oakley Enterprises, Inc. (ECF No. 22.)
INTRODUCTION
The Court should dismiss the FAC for failure to state a claim for numerous reasons.
First, although this is a trademark case, the FAC lacks plausible allegations of likelihood of
consumer confusion because it has no factual allegations about how plaintiffs use the asserted
trademarks. Second, for most of the trademarks, the FAC also lacks allegations about
Amazon’s allegedly infringing use. Third, the FAC asserts trademark counterfeiting, but fails
to allege that Amazon uses trademarks identical or substantially indistinguishable from
trademarks that plaintiffs use in commerce. Fourth, plaintiff Annie Oakley Enterprises, Inc.
(“AOE”) asserts claims under 15 U.S.C. § 1114, but AOE is not the registrant of any identified
trademarks and only “the registrant” may assert such claims. Finally, the FAC has an unfair
competition count under Indiana law based on Amazon’s alleged “use of advertising idea,” but
no such cause of action exists.
Plaintiffs’ FAC attempts to plead a sprawling case involving 19 trademarks but lacks
factual allegations to state even a single claim upon which relief can be granted. While the
FAC lists only four Counts, the Counts potentially encompass dozens of causes of action. 1 For
1
This is the third case plaintiffs have filed against Amazon, but the first filed in this
District. Plaintiffs filed the first two cases in the Southern District of Indiana. Plaintiffs appear
to be engaged in forum shopping in an effort to shift the parties’ disputes from a Court that has
issued numerous adverse rulings against them in a case they filed in 2019 and which remains
pending. Amazon has separately moved to transfer venue of this case to the Southern District
-1-
each of the 19 trademarks, the FAC attempts to assert a claim of trademark infringement under
federal and state law, trademark counterfeiting, false designation of origin, and unfair
competition. But the FAC does not include factual allegations to support this mass of claims.
Although the FAC has general allegations about the trademarks combined together, it has no
allegations about how plaintiffs use any single trademark.
As stated by the Supreme Court, “liability for trademark infringement turns on
marketplace realities.” Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., 140 S. Ct.
1589, 1596 (2020). Trademark cases compare how a plaintiff and a defendant use trademarks
to determine whether the defendant’s use creates a likelihood of consumer confusion that the
plaintiff is the source of the defendant’s goods. But, of course, it is not possible to compare
plaintiff’s and defendant’s use without allegations about the plaintiff’s use. Even worse, for 15
of the 19 trademarks, the FAC also lacks allegations about Amazon’s use of the trademarks,
so for these trademarks there is nothing to compare on either side. Without factual allegations
about how plaintiffs use the trademarks, the FAC’s trademark claims are not plausible.
of Indiana, where the Court is familiar with the issues in dispute, having (1) granted Amazon’s
Motion for Summary Judgment that it cannot be held liable for allegedly contributing to
infringing third-party sales before the complaint was served (Annie Oakley Enterprises, Inc. v.
Amazon.com, Inc., No. 1:19-CV-1732-JMS-MJD, 2021 WL 4147189 (S.D. Ind. Sept. 13,
2021)); (2) granted Amazon’s motions to compel on eight distinct discovery issues and denied
plaintiffs’ motions to compel on multiple issues (2020 WL 6606428 (S.D. Ind. Nov. 12, 2020)
& 2020 WL 6882177 (S.D. Ind. Sept. 9, 2020)); (3) granted Amazon two separate attorneys’
fee awards of more than $80,000 and $50,000, respectively, as sanctions for plaintiffs’ repeated
discovery abuses (2021 WL 2373779 (S.D. Ind. June 10, 2021) & 2022 WL 456660 (S.D. Ind.
Feb. 15, 2022)); (4) issued a sanction order holding that plaintiffs may not present any
arguments or evidence related to damages claims because of plaintiffs’ failure to comply with
the Court’s order compelling them to respond to discovery (2021 WL 2373779 (S.D. Ind.
June 10, 2021)); and (5) struck plaintiffs’ jury demand (2021 WL 4147189 (S.D. Ind. Sept. 13,
2021)).
-2-
This is the second motion Amazon has filed to address the numerous, clear defects in
Plaintiffs’ complaint. After Amazon filed its motion to dismiss Plaintiffs’ original complaint,
Plaintiffs filed the FAC rather than oppose the motion. The FAC, however, did not remedy the
issues detailed in Amazon’s first motion.
THE FAC’S ALLEGATIONS
I. THE PARTIES
Plaintiff Gabet is an individual and plaintiff AOE is a corporation. Gabet owns AOE
and designs fragrances for AOE, which sells perfumes, essential oils, lotions, shampoos,
conditioners and bath salts. (FAC ¶¶ 5, 10.)
Defendant Amazon operates an online marketplace that offers products sold by
Amazon and third-party vendors. (Id. ¶ 42.) Defendants John Does 1–50, the FAC alleges, “are
persons or entities that [sic] from whom Amazon acquires infringing products to list, advertise
and sell.” (Id. ¶ 9.) 2
II. GABET’S ALLEGED TRADEMARK REGISTRATIONS
The FAC alleges that Gabet owns 26 federal trademark registrations for 19 trademarks 3
and that AOE “is the sole licensee of those trademarks and has paid Gabet royalties for those
rights.” (Id. ¶¶ 12, 14.)
2
In addition to disputing many other of the FAC’s allegations, Amazon disputes that it
“acquires infringing products” when third parties offer products for sale on its website.
Plaintiffs are aware that Amazon does not take title to such products, and they ultimately did
not oppose Amazon’s summary judgment argument in the prior pending case that it cannot be
held directly liable for third-party sales, instead arguing that Amazon was contributorily liable.
Annie Oakley Enterprises, Inc. v. Amazon.com, Inc., No. 1:19-CV-1732-JMS-MJD, 2021 WL
4147189, at *17 (S.D. Ind. Sept. 13, 2021).
3
In some instances, multiple registrations are for the same trademark.
-3-
The FAC includes a table listing 26 trademark registrations that Gabet allegedly owns,
including the mark, serial number, and registration number. (Id. ¶ 12.) The 19 trademarks are:
Sagebrush; Sunset; Indian Musk; Morning Dew; Don’t Touch Me; Gypsy Cowgirl; Golden
Meditation; Kick Back; Annie Oakley; Ride the Spirit; Simply Love; True Happiness; Wild
West; Nature’s High; Second Wind; Eclectic Remedies; Stampede; Annie; and Rise ‘N Shine.
The FAC alleges that each registration covers “International Class 3 products and
Personal care and body care products.” (Id. ¶ 20.) The FAC does not define International
Class 3 products. The United States Patent Office’s Trademark Manual of Examining
Procedure (July 2021), § 1401.02(a), defines them as: “Non-medicated cosmetics and toiletry
preparations; non-medicated dentifrices; perfumery, essential oils; bleaching preparations and
other substances for laundry use; cleaning, polishing, scouring and abrasive preparations.”
However, the Court should not accept the FAC’s allegation that the alleged trademark
registrations each cover “International Class 3 products and Personal care and body care
products” because the trademark registrations incorporated by reference into the FAC show
that this allegation is untrue. On a motion to dismiss, “[t]o the extent that an exhibit attached
to or referenced by the complaint contradicts the complaint’s allegations, the exhibit takes
precedence.” Phillips v. Prudential Ins. Co. of Am., 714 F.3d 1017, 1020 (7th Cir. 2013).
The following table shows the coverage actually listed on the registrations of the four
trademarks for which the FAC includes examples of Amazon’s alleged infringement:
Sagebrush, Sunset, Indian Musk, and Morning Dew. 4 The registrations are attached to
Amazon’s motion to dismiss the original complaint, at ECF Nos. 14-2 to 14-7.
4
As explained, infra, while the FAC identifies 19 trademarks, it identifies allegedly
infringing trademark use by Amazon for only four of those trademarks, so this brief provides
detail for only those four trademarks.
-4-
Registration Trademark Goods

No.
5,794,351 Sagebrush cosmetic, toilet and personal care preparations, namely,
perfume, perfume essence, cologne, aftershave, and
shower gel
3,510,209 Sagebrush cosmetic, toilet and personal care preparations, namely,
perfume, perfume essence, cologne, aftershave, and
shower gel
2,547,492 Sunset body powders, bath gels, soaps for skin, face, body, and
bath, and body lotions
2,024,708 Sunset cologne
1,836,520 Indian Musk cologne, perfume, body powder
1,792,108 Morning perfumes, colognes, and fragrances for personal use
Dew
The FAC does not allege any single product of plaintiffs that plaintiffs identify with
any single trademark. The FAC contains no images depicting plaintiffs’ use of any trademark
and no description of how plaintiffs use any trademark on any product, such as the specific
product or the trademark’s font, color, size or shape.
Instead, the FAC makes allegations about how plaintiffs collectively use the 19
trademarks. It alleges that, “Annie Oakley has continuously used its trademarks in nearly every
conceivable possible way,” and then lists numerous locations (such as labels, catalogs,
advertising inserts, shelf signs and online) without specifying any trademarks. (FAC ¶¶ 15,
34.) It also alleges that Gabet’s trademarks have become recognized for “essential oils,
shampoos, hair conditioners, body soaps, and body powders, and other International Class 3
goods” without linking any specific trademark to any specific product. (Id. ¶ 36.)
The FAC also alleges that Amazon is “aware of how Plaintiffs use their trademarks” as
a result of taking Plaintiffs’ deposition and having received documents about “how the
plaintiffs use their marks,” and information “about the Plaintiffs’ trademark registrations,
declarations and renewals,” but again the FAC does not actually identify how plaintiffs use
their alleged trademarks. (Id. ¶ 15.)
-5-
The FAC does not allege that plaintiffs have ever sold their products on Amazon’s
websites.
III. AMAZON’S ALLEGED TRADEMARK INFRINGEMENT
The FAC alleges that “Amazon manufactured, copied, reproduced, sold, offered for
sale, publicly displayed, distributed and/or imported at least the following products that
infringe Gabet’s trademarks,” followed by a table depicting various products. (Id. ¶ 24.) The
table has sections for only four of the trademarks:
For “Indian Musk,” the table depicts five perfume products.
For “Sagebrush,” the table depicts two herbal supplement products.
For “Sunset,” the table depicts eight products, including body lotion, perfume,
and shower gel.
For “Morning Dew,” the table depicts 13 products, including serum, perfumed
talc, and body spray.
The FAC also alleges that Amazon has displayed, listed, and sold “other products” that
infringe plaintiffs’ trademarks, but that plaintiffs have not identified them, allegedly because
Amazon has “conceal[ed]” the products offered for sale on its (public-facing) website. (Id.
¶¶ 25–26.) The FAC refers to the identified and unidentified products collectively as “Accused
Products.” (Id. ¶ 25.)
Although the FAC has boilerplate allegations about a likelihood of confusion and that
“[o]n information and belief” Amazon used “Gabet’s marks to confuse the public” (id. ¶¶ 39,
58, 59, 66), it has no allegations that any consumer was actually confused with respect to
Amazon’s alleged use of any trademark identified in the FAC.
-6-
IV. AMAZON’S ALLEGED COUNTERFEITING
The FAC alleges that Amazon’s activities “constitute counterfeiting,” and that
“Plaintiffs’ registered trademarks infringed by Amazon are identical with or substantially
indistinguishable from those used by Amazon. For example, all of Plaintiffs’ marks comprise
words or phrases, and Amazon has used the exact same words or phrases to list, sell, and
distribute infringing products that are within the scope of Plaintiff’s Federal trademark
registrations.” (Id. ¶ 31.)
The FAC seeks trademark counterfeiting statutory damages of $2 million per
counterfeit mark under 15 U.S.C. § 1117(c)(2). (Id. ¶ 64.)
V. THE FAC’S COUNTS
Count I, titled “Federal Trademark Infringement,” asserts “Gabet’s marks identified
herein.” (Id. ¶ 57.) It alleges infringement under 15 U.S.C. § 1114. (Id. ¶ 59.) It also alleges
that plaintiffs are entitled to statutory damages for counterfeiting under 15 U.S.C. § 1117(c)(2).
(Id. ¶ 64.)
Count II, titled “False Designation of Origin and Unfair Competition Under the
Lanham Act,” alleges that infringement of “Gabet’s marks . . . constitute unfair competition
and false designation of origin in violation of 15 U.S.C. § 1125(a).” (Id. ¶ 66.)
Count III, titled “Common Law Trademark Infringement,” alleges “common law
trademark infringement under Indiana law.” (Id. ¶ 70.) It is based on the “actions of Defendants
alleged above regarding the Accused Products.” (Id.)
Count IV, titled “Unfair Competition,” alleges “unfair competition under Indiana law.”
(Id. ¶ 73.) It alleges that Amazon has used “Annie Oakley’s Advertising Idea,” which is to
include words from the asserted trademarks in URLs and social media account names, “such
that persons who search the internet using those words can be directed to Annie Oakley’s
-7-
webpages.” (Id. ¶¶ 75–76.) It alleges that Amazon has used the advertising idea because it has
“incorporated the words comprising Gabet’s trademarks into [its] URLs for products that
would be of interest to persons looking for Plaintiffs’ products.” (Id. ¶ 77.)
ARGUMENT
I. COUNTS I—III SHOULD BE DISMISSED

BECAUSE THE FAC LACKS PLAUSIBLE
LIKELIHOOD OF CONFUSION ALLEGATIONS.
Counts I—III’s variety of trademark claims all should be dismissed because the FAC
lacks factual allegations needed to make likelihood of consumer confusion plausible.
A. The “Keystone” of Trademark

Infringement Is Likelihood of Confusion.
“The ‘keystone’ of trademark infringement is ‘likelihood of confusion’ as to source,
affiliation, connection or sponsorship of goods or services among the relevant class of
customers and potential customers.” Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir. 2015)
(quoting Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957 (7th Cir. 1992)).
This inquiry focuses on “whether consumers, and specifically consumers who would use either
product, would be likely to attribute them to a single source.” Sorensen, 792 F.3d at 726
(quoting Bd. of Regents of Univ. of Wis. Sys. v. Phx. Int’l Software, Inc., 653 F.3d 448, 455
(7th Cir. 2011)).
In the Seventh Circuit, the following seven factors are used to determine if a likelihood
of confusion exists:
(1) the similarity between the marks in appearance and

suggestion; (2) the similarity of the products; (3) the area and
manner of concurrent use; (4) the degree of care likely to be
exercised by consumers; (5) the strength of the plaintiff’s mark;
(6) any evidence of actual confusion; and (7) the intent of the
defendant to “palm off” his product as that of another.
-8-
Sorensen, 792 F.3d at 726 While no single factor is dispositive, “three are especially
important: the similarity of the marks, the intent of the defendant, and evidence of actual
confusion.” Id.
Counts I—III’s variety of trademark claims (federal trademark infringement, federal
trademark counterfeiting, federal false designation of origin, and Indiana common law
trademark infringement) all require likelihood of confusion. See, e.g., RooR Int’l BV v. Muncie
Petroleum Inc., No. 1:18-CV-03959-SEB-DML, 2020 WL 2748196, at *2 (S.D. Ind. May 27,
2020) (federal trademark infringement, federal trademark counterfeiting, and federal false
designation of origin); Heckler & Koch, Inc. v. German Sport Guns GmbH, No. 1:11-cv-
01108-SEB-TAB, 2013 WL 12291720, at *11 (S.D. Ind. Sept. 27, 2013) (“Indiana courts
subject a common law trademark infringement claim to the same analysis as that required
under the Lanham Act.”).
B. Trademark Infringement Complaints

Must Have Plausible Factual
Allegations of Likelihood of Confusion.
In general, Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556
U.S. 662 (2009), require complaints to “include facts showing a plausible—not merely
‘conceivable’—entitlement to relief” and to plead “more than an unadorned, the-defendant-
unlawfully-harmed-me accusation” or “‘naked assertions’ devoid of ‘further factual
enhancement.’” Taha v. Int’l Brotherhood of Teamsters, Loc. 781, 947 F.3d 464, 469 (7th Cir.
2020). Thus, on a motion to dismiss, a court “may reject sheer speculation, bald assertions, and
unsupported conclusory statements.” Id.
Given these requirements, “[a]llegations of consumer confusion in a trademark suit,
just like any other allegations in any other suit, cannot save a claim if they are implausible.”
Fortres Grand Corp. v. Warner Bros. Ent. Inc., 763 F.3d 696, 700 (7th Cir. 2014) (affirming
-9-
Rule 12(b)(6) dismissal because allegations of consumer confusion implausible); see also
Eastland Music Grp., LLC v. Lionsgate Ent., Inc., 707 F.3d 869, 871 (7th Cir. 2013) (affirming
Rule 12(b)(6) dismissal because allegations of consumer confusion “too implausible to support
costly litigation”). Accordingly, a plaintiff “must plead allegations that make it plausible that
such likelihood of confusion exists.” Trove Brands, LLC v. California Innovations Inc., No. 21
C 1132, 2021 WL 5320408, at *5 (N.D. Ill. Nov. 16, 2021).
General allegations about confusion are not adequate because “general confusion ‘in
the air’ is not actionable. Rather, only confusion about ‘origin, sponsorship, or approval of . . .
goods’ supports a trademark claim.” Fortres Grand Corp., 763 F.3d at 701. Further, “‘goods’
means ‘the tangible product sold in the marketplace.’” Id.
Thus, district courts, when “considering the plausibility of Plaintiffs’ trademark and
unfair competition claims . . . employ[] the Seventh Circuit’s seven-factor test for determining
likelihood of confusion.” Republic Techs. (NA), LLC v. Friends Trading Inc., No. 19 C 7991,
2020 WL 5905218, at *4 (N.D. Ill. Oct. 6, 2020); see also Silgan Containers LLC v. Int’l Ass’n
of Machinists & Aerospace Workers, AFL-CIO, No. 18-C-213, 2018 WL 5840766, at *3 (E.D.
Wis. Nov. 8, 2018) (“When considering the plausibility of such an allegation, a court should
consider the following seven-factor test . . .”).
C. The FAC Lacks Plausible

Likelihood of Confusion Allegations.
The FAC lacks plausible allegations of likelihood of consumer confusion, especially
because it does not have factual allegations about how plaintiffs use the trademarks identified
in the FAC.
In the first place, the FAC’s only mentions of confusion appear in boilerplate
allegations:
-10-
“The use by Amazon and third parties that sell Accused Products through
Amazon of the Gabet’s marks is likely to cause confusion and to deceive the
public into believing that Defendants are affiliated or connected with, or are
authorized or endorsed by Plaintiffs.” (FAC ¶ 39.)
“On information and belief, Defendants have purposefully and willfully used
Gabet’s marks to confuse the public into believing their Accused Products were
or are endorsed by or connected to Plaintiffs . . .” (Id. ¶ 58.)
“Defendants’ use of the infringing marks in selling and advertising their
Accused Products is likely to cause confusion, mistake, and deception among
consumers as to the source, affiliation, connection, association, origin, or
approval of the goods and falsely suggest a sponsorship, connection, license,
affiliation or association between Plaintiffs and Defendants, in violation of
Lanham Act § 32, 15 U.S.C. § 1114.” (Id. ¶ 59.)
Amazon’s actions “ha[ve] caused, and continue[] to cause, a substantial effect
on interstate commerce in that a likelihood of confusion, mistake, and deception
exists in the minds of the consuming public as to the source, sponsorship,
affiliation, and/or connection of Defendants’ infringing Accused Products.” (Id.
¶ 66.)
The Court should ignore these allegations when considering whether the FAC states a
plausible claim because they are merely “unadorned, the-defendant-unlawfully-harmed-me
accusation,” “‘naked assertions’ devoid of ‘further factual enhancement,’” “bald assertions,”
and “unsupported conclusory statements.” Taha, 947 F.3d at 469.
-11-
The FAC also does not allege how plaintiffs use any particular trademarks. Its only
allegations about plaintiffs’ trademark use are general allegations that collectively address 19
different trademarks:
Paragraphs 15 and 34 allege that AOE has used the trademarks on product
labels, sample bottles, catalogs, advertising inserts, shelf signs, webpages,
Facebook, Instagram, internet ads, URLs and search engine optimization. (FAC
¶¶ 15, 34.)
Paragraph 36 alleges that Gabet’s marks have become recognized for “essential
oils, shampoos, hair conditioners, body soaps, and body powders, and other
International Class 3 goods.” (Id. ¶ 36.)
The FAC also alleges that Amazon is “aware of how Plaintiffs use their trademarks,”
and lists sources of this alleged knowledge, but does not actually plead how plaintiffs use any
specific trademark. (Id. ¶ 15.)
For example, the FAC does not indicate whether plaintiffs use the trademark “Sunset”
on essential oils or shampoos or hair conditioners or body soaps or body powders or other
International Class 3 goods and, if so, which ones. It does not display or show how “Sunset”
appears on any AOE labels, catalogs, advertising inserts, or anywhere else. And it does not
describe the consumers for any products branded with “Sunset,” or the degree of care used by
such consumers when shopping for those products.
This lack of information makes plaintiffs’ claims of likelihood of consumer confusion
implausible because it is not possible to apply the seven-factor test without allegations about
plaintiffs’ own trademark use:
-12-
It is not possible to consider “(1) the similarity between the marks in appearance
and suggestion,” Sorensen, 792 F.3d at 726, without factual allegations about
how plaintiffs use the mark. See Sullivan v. CBS Corp., 385 F.3d 772, 777 (7th
Cir. 2004) (“Looking next at the similarity of the two marks, we make the
comparison ‘in light of what happens in the marketplace and not merely by
looking at the two marks side-by-side.’”) (Quoting Ty, Inc. v. The Jones Group,
Inc., 237 F.3d 891, 898 (7th Cir. 2001)).
It is not possible to consider “(2) the similarity of the products,” Sorensen, 792
F.3d at 726, without factual allegations about the product that plaintiffs use with
the mark.
It is not possible to consider “(3) the area and manner of concurrent use,” id.,
without factual allegations about plaintiffs’ area and manner of use.
It is not possible to consider “(4) the degree of care likely to be exercised by
consumers,” id., without factual allegations about the consumers for plaintiffs’
product or how much care they exercise shopping for plaintiffs’ product.
It is not possible to consider “(5) the strength of the plaintiff’s mark,” id.,
without factual allegations about the product that plaintiffs use with the mark
(for example, the mark “sweet treat” is relatively weak when used to brand
candy but relatively strong when used to brand a lamp).
It is not possible to consider “(6) any evidence of actual confusion,” id., without
allegations about one of the two products that the consumer is allegedly
confusing. (The FAC also nowhere alleges that any actual consumer was
actually confused by Amazon’s use of any trademarks.)
-13-
Finally, it is not possible to consider “(7) the intent of the defendant to ‘palm
off’ his product as that of another,” id., without allegations about the plaintiffs’
product that Amazon allegedly is intending to mimic.
Because the FAC does not include plausible likelihood of confusion allegations, it does
not state a claim for trademark infringement, trademark counterfeiting, or false designation of
origin, and Counts I—III should be dismissed in their entirety.
II. ALL CLAIMS RELATED TO 15 TRADEMARKS

SHOULD BE DISMISSED BECAUSE THE
FAC DOES NOT ALLEGE AMAZON USES THEM.
The Court should dismiss all claims related to 15 of the 19 trademarks listed in the FAC
for the additional reason that the FAC fails to allege any alleged use by Amazon for these 15
trademarks.
The FAC lists 19 trademarks owned by Gabet. All Counts in the FAC refer generally
to “Gabet’s marks identified herein” (FAC ¶ 57), “Gabet’s marks” (id. ¶¶ 36–41, 57–58, 66),
“Plaintiffs’ registered marks” (id. ¶ 58), and “Gabet’s trademarks” (id. ¶¶ 16, 19, 22–24, 35,
41, 43, 77), thereby asserting claims with respect to all 19 alleged registered trademarks
identified in the FAC. However, the FAC sets forth Amazon’s alleged use of only four of the
trademarks and does not provide a single example of how Amazon allegedly uses the other 15
trademarks identified in the FAC. (Id. ¶ 24.) Instead of pleading facts sufficient to create
plausible claims, it alleges “Amazon has displayed, listed, and sold other products that infringe
Plaintiffs’ trademarks in addition to those pictured” and that “further discovery is needed to
identify” them. (Id. ¶¶ 25–26.) It refers to these unidentified products as “Accused Products.”
(Id. ¶ 25.)
Because the FAC does not identify alleged use for 15 trademarks, it does not come
close to satisfying the plausibility pleading requirements of Twomby/Iqbal and Eastland/Fortes
-14-
for these trademarks. The failure to identify even a single example of alleged use by Amazon
for 15 trademarks makes the FAC’s claims of trademark infringement, counterfeiting, false
designation of origin, and unfair competition with respect to these trademarks implausible. The
FAC’s suggestion that “further discovery is needed” to make these allegations only highlights
its failure to state a claim. See Larry Trover Produce, Inc. v. Nutrien Ag Sols., Inc., No. 3:21-
cv-1035-JPG, 2022 WL 594863, at *4 (S.D. Ill. Feb. 28, 2022) (“Plaintiff’s assertions, that it
should be allowed to bring any of its claims against any of the defendants until it finally
receives discovery to support its claims, taken to its logical conclusion, would render Twombly
and Iqbal meaningless.”); Bissessur v. Indiana Univ. Bd. of Trustees, 581 F.3d 599, 603 (7th
Cir. 2009) (“argument that the exact details of the contract will become clear during discovery
runs counter to the holding of Twombly, which dictates that the complaint itself must contain
sufficient factual detail to describe the parameters of the contract before discovery may
commence”).
As a result, to the extent it does not dismiss the FAC in its entirety, the Court should at
least dismiss all claims in the FAC based on the following 15 trademarks: Don’t Touch Me;
Gypsy Cowgirl; Golden Meditation; Kick Back; Annie Oakley; Ride the Spirit; Simply Love;
True Happiness; Wild West; Nature’s High; Second Wind; Eclectic Remedies; Stampede; Rise
‘N Shine; and Annie.
III. THE FAC LACKS PLAUSIBLE

ALLEGATIONS OF TRADEMARK COUNTERFEITING.
In addition to the FAC’s failure to allege likelihood of confusion, the Court should
dismiss all trademark counterfeiting claims from Count I also because the FAC lacks plausible
allegations that Amazon has used a counterfeit mark.
-15-
The statutory damages provision for counterfeiting cited in the FAC, 15 U.S.C.
§ 1117(c), incorporates the definition of “counterfeit mark” from 15 U.S.C. § 1116(d)(1)(B)(i):
“a counterfeit of a mark that is registered on the principal register in the United States Patent
and Trademark Office for such goods or services sold, offered for sale, or distributed
and that is in use, whether or not the person against whom relief is sought knew such mark
was so registered.” (Emphasis added.) The Lanham Act further defines a “counterfeit,” as a
“spurious mark which is identical with, or substantially indistinguishable from, a registered
mark.” 15 U.S.C. § 1127.
Thus, to determine whether counterfeiting has taken place, courts compare the actual
trademarks as they are used in commerce, rather than simply compare defendant’s trademark
to plaintiff’s registration. For example, in N. Am. Van Lines, Inc. v. N. Am. Moving & Storage,
Inc., No. 1:18-CV-196-HAB, 2020 WL 703178, at *4 (N.D. Ind. Feb. 10, 2020), this Court
compared both parties’ trademark use on their respective websites (as opposed to on a
registration) and determined that a plausible claim of counterfeiting did not exist in part
because “the fonts and accompanying graphics are quite distinguishable.”
The FAC fails to make plausible allegations that Amazon has used a counterfeit mark
because it contains no allegations, examples, or illustration of the asserted trademarks “in use”
by Plaintiffs. Instead, it alleges only that Amazon has “used the exact same words or phrases
to list, sell, and distribute infringing products that are within the scope of Plaintiffs’ Federal
trademark registrations.” (FAC ¶ 31 (emphasis added).) As a result, the Court should dismiss
the FAC’s counterfeiting claims.
-16-
IV. THE COURT SHOULD DISMISS AOE’S COUNT I

CLAIMS BECAUSE AOE IS NOT “THE REGISTRANT.”
Count I asserts claims under Section 1114, but that statute provides a cause of action
only to “the registrant” of a trademark, and the FAC alleges that Gabet and not AOE owns the
trademark registrations identified in the FAC. As a result, the FAC does not state a claim by
AOE under Section 1114(1).
A. Only “the Registrant” May

Assert Claims Under Section 1114.
Section 1114(1) creates causes of action only for “the registrant” of a trademark, as it
states an infringer or counterfeiter “shall be liable in a civil action by the registrant.” 15 U.S.C.
§ 1114(1)(b) (emphasis added). This statute reflects, “Congress’s stated intention to limit
standing to the single ‘registrant’ of the trademark.” Fed. Treasury Enter. Sojuzplodoimport v.
SPI Spirits Ltd., 726 F.3d 62, 80 (2d Cir. 2013). The Seventh Circuit has held, “only the current
owner of the mark can claim infringement.” Specht v. Google Inc., 747 F.3d 929, 933 (7th Cir.
2014); see also RooR Int’l BV v. Amused Clothing, LLC, No. 4:19CV11-PPS/JPK, 2020 WL
1929117, at *2 (N.D. Ind. Apr. 21, 2020). AOE should be familiar with this prohibition because
in a recent case, AOE’s claims asserting Gabet’s trademarks under Section 1114 were
dismissed on the ground that AOE was not the registrant of the asserted trademarks. Annie
Oakley Enterprises et al. v. Rise-N-Shine, LLC et al., No. 1:20-cv-00638-RLY-TAB, slip op.
at 10–12 (S.D. Ind. Mar. 23, 2021) (hereinafter “Rise-N-Shine”). 5
5
This decision is attached to Amazon’s motion to dismiss the original complaint, at ECF
No. 14-8. While this decision refers to the prohibition against non-registrants asserting claims
under Section 1114 as an issue of “standing,” the Supreme Court has clarified that the question
of whether a statute provides a particular class of parties with the right to sue is not a question
of “standing” but instead a question of statutory interpretation. See Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 127 (2014).
-17-
While the definition of “registrant” includes “legal representatives,” 15 U.S.C. § 1127,
this concept is strictly limited: “to bring suit under Section [1114](1) on behalf of a trademark
holder, a putative plaintiff must demonstrate both its legal authority to represent the owner and
that the trademark holder is legally incapable of representing itself.” Fed. Treasury Enter.
Sojuzplodoimport, 726 F.3d at 82.
B. AOE’s Section 1114 Claims Should Be

Dismissed Because AOE Is Not “the Registrant.”
AOE does not have the statutory right to sue under Section 1114(1) because it is not
the registrant of any trademark identified in the FAC. The FAC alleges instead that Gabet
“owns . . . the[] federal registrations,” that she has “ownership of the registered marks,” and
that she has the “exclusive right to use the marks in commerce in connection with the goods
specified in the Registrations.” (FAC ¶¶ 12, 21.) The FAC repeatedly references “Gabet’s
trademarks” (id. ¶¶ 16, 19, 22–24, 35, 41, 43, 77), “Gabet’s trademark rights” (id. ¶ 20), and
“Gabet’s marks” (id. ¶¶ 36–41, 57–58, 66). The registrations themselves list Gabet as the
registrant (except for the registration for “Morning Dew,” which lists Gabet’s apparent
predecessor S & J Perfume Co. Ltd. as the registrant). (ECF Nos. 14-2 to 14-7.)
As for AOE, the FAC alleges that Gabet “has given Annie Oakley the right to serve
has [sic] her legal representative,” and “[t]hus, Annie Oakley is within the definition of the
term ‘registrant’ as defined in 15 USC 1127” (FAC ¶ 14). The fact that Gabet is a named
plaintiff shows that alleged legal conclusion is incorrect because a party qualifies as a “legal
representative” of a trademark holder only if “the trademark holder is legally incapable of
-18-
representing itself.” Fed. Treasury Enter. Sojuzplodoimport, 726 F.3d at 82. Here, however,
Gabet is the lead plaintiff and thus is legally capable of representing herself. 6
Since AOE is not within the class of parties eligible to assert a Section 1114(1) claim,
the Court should dismiss AOE’s Count I claims. Specht, 747 F.3d at 933; see also RooR Int’l
BV, 2020 WL 1929117, at *2; Rise-N-Shine, slip op. at 10–12.
V. COUNT IV SHOULD BE DISMISSED

BECAUSE USE OF “ADVERTISING IDEA” IS NOT A
RECOGNIZED UNFAIR COMPETITION TORT.
Count IV for “Unfair Competition” under Indiana law is premised on Amazon’s alleged
use of plaintiffs’ “Advertising Idea”—i.e., Amazon’s alleged incorporation of words
comprising Gabet’s trademarks into “URLs for products that would be of interest to persons
looking for Plaintiffs’ products” (FAC ¶ 77)—but Indiana law does not recognize a claim for
unfair competition based on use of an advertising idea. Nor does the FAC plead facts sufficient
to make plausible any claim based on use of an advertising idea.
Under Indiana Law, unfair competition is an umbrella claim that includes several
distinct torts, but none encompass the advertising-idea theory in the FAC. The four torts
recognized as subspecies of unfair competition are: (1) common law trademark infringement;
(2) passing off or palming off; (3) tortious interference with contract or with business relations;
and (4) use by a former employee of trade secret or confidential information. Heckler & Koch,
Inc., 2013 WL 12291720, at *11. Only the first two torts are even potentially relevant, but the
FAC’s advertising-idea theory does not satisfy the requirements of either. As discussed above,
common law trademark infringement requires a likelihood of confusion, but Count IV does
6
To the extent the Court accepts the conclusory allegation that AOE is Gabet’s “legal
representative,” that means Gabet is legally incapable of representing herself and all of her
claims must be dismissed.
-19-
not allege that Amazon’s alleged use of plaintiffs’ advertising idea creates a likelihood of
confusion (and, as discussed above, nowhere does the FAC plausibly allege likelihood of
confusion). See, e.g., RooR Int’l, 2020 WL 2748196, at *2. The tort of passing off or palming
off requires that a “defendant intentionally deceives a consumer by falsely representing his
goods as those of a different producer,” Heckler & Koch, Inc., 2013 WL 12291720, at *11, but
the FAC does not allege that Amazon’s alleged use of plaintiff’s advertising idea does so.
Although it is possible Indiana courts will someday recognize additional torts as unfair
competition, this Court should “decline to expand the scope of this cause of action to cover
[plaintiff’s] allegations without clear direction from an Indiana court to do so.” Tecnomatic,
S.p.A. v. Remy, Inc., No. 1:11-CV-00991-SEB, 2012 WL 2376066, at *15 (S.D. Ind. June 22,
2012); see Indiana Grocery Co., Inc. v. Super Valu Stores, Inc., 684 F. Supp. 561, 580–81
(S.D. Ind. 1988). 7
Further, the Seventh Circuit has indicated that any Indiana unfair competition claim
based on trademarks should be subject to the same analysis as Lanham Act trademark claims.
Fortres Grand Corp., 763 F.3d at 700 n.4 (“all relevant authority we have found analyzes
Indiana unfair competition claims based on trademarks the same as Lanham Act trademark
claims, so we analyze all the claims together”). The FAC’s unfair competition count is based
on trademarks. As explained above, the FAC has failed to state a Lanham Act claim, so it also
does not state a claim for unfair competition.
7
In a prior case between plaintiffs and Amazon, the court dismissed a similar claim asserted
by plaintiffs on the ground that “the court fails to understand what Plaintiffs allege by the
phrase ‘use of advertising idea.’” Rise-N-Shine, slip op. (ECF No. 14-8) at 6–7. It noted that
plaintiffs “cite to no case explaining what this cause of action is or how other courts have
evaluated such a claim. . . .” Id.
-20-
The Court should dismiss the FAC’s unfair competition count for the additional reason
that even if Indiana recognized a claim for unfair competition based on use of an advertising
idea, the FAC has not plead facts to make such a claim plausible. Among other things, the FAC
does not identify which trademarks Amazon has allegedly used in URLs and has not identified
any URLs in which Amazon has allegedly used Gabet’s trademarks.
CONCLUSION
For the foregoing reasons, Amazon’s Motion to Dismiss should be granted.
April 29, 2022 Respectfully submitted,
s/ Robert T. Cruzen
Robert T. Cruzen (Admitted pro hac vice)
KLARQUIST SPARKMAN, LLP
121 S.W. Salmon Street, Suite 1600
Portland, OR 97204
Telephone: (503) 595-5300
Fax: (503) 595-5301
rob.cruzen@klarquist.com
Counsel for Defendant

AMAZON.COM, INC.
-21-
CERTIFICATE OF SERVICE
The undersigned hereby certifies that on April 29, 2022, the attached document was
electronically filed with the Clerk of the Court using CM/ECF which will send notification to
the registered attorney(s) of record that the document has been filed and is available for
viewing and downloading.
s/ Robert T. Cruzen
Robert T. Cruzen (Admitted pro hac vice)
-1-

Amazon Brief in Support of Motion To Dismiss

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Amazon Brief in Support of Motion To Dismiss

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USDC IN/ND case 1:22-cv-00035-HAB-SLC document 29 filed 04/29/22 page 1 of 28

IN THE UNITED STATES DISTRICT COURT

BRIEF IN SUPPORT OF MOTION TO

THE FAC’S ALLEGATIONS ------------------------------------------------------------------------- 3

II. GABET’S ALLEGED TRADEMARK REGISTRATIONS -------------------- 3

III. AMAZON’S ALLEGED TRADEMARK INFRINGEMENT ------------------ 6

IV. AMAZON’S ALLEGED COUNTERFEITING----------------------------------- 7

V. THE FAC’S COUNTS---------------------------------------------------------------- 7

I. COUNTS I—III SHOULD BE DISMISSED

A. The “Keystone” of Trademark

B. Trademark Infringement Complaints

C. The FAC Lacks Plausible Likelihood of Confusion Allegations ------ 10

II. ALL CLAIMS RELATED TO 15 TRADEMARKS

III. THE FAC LACKS PLAUSIBLE

IV. THE COURT SHOULD DISMISS AOE’S COUNT I

A. Only “the Registrant” May Assert

B. AOE’s Section 1114 Claims Should Be

V. COUNT IV SHOULD BE DISMISSED

Annie Oakley Enterprises, Inc. v. Amazon.com, Inc.,

Annie Oakley Enterprises, Inc. v. Amazon.com, Inc.,

Annie Oakley Enterprises, Inc. v. Amazon.com, Inc.,

Annie Oakley Enterprises, Inc. v. Amazon.com, Inc.,

Annie Oakley Enterprises, Inc. v. Amazon.com, Inc.,

Annie Oakley Enterprises et al. v. Rise-N-Shine, LLC et al,.

Annie Oakley Enterprises, Inc. v. Amazon.com, Inc.,

Bd. of Regents of Univ. of Wis. Sys. v. Phx. Int’l Software, Inc.,

Bell Atl. Corp. v. Twombly,

Bissessur v. Indiana Univ. Bd. of Trustees,

Eastland Music Grp., LLC v. Lionsgate Ent., Inc.,

Fed. Treasury Enter. Sojuzplodoimport v. SPI Spirits Ltd.,

Fortres Grand Corp. v. Warner Bros. Ent. Inc.,

Heckler & Koch, Inc. v. German Sport Guns GmbH,

Indiana Grocery Co., Inc. v. Super Valu Stores, Inc.,

Larry Trover Produce, Inc. v. Nutrien Ag Sols., Inc.,

Lexmark Int’l, Inc. v. Static Control Components, Inc.,

Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc.,

N. Am. Van Lines, Inc. v. N. Am. Moving & Storage, Inc.,

Republic Techs. (NA), LLC v. Friends Trading Inc.,

RooR Int’l BV v. Amused Clothing, LLC,

RooR Int’l BV v. Muncie Petroleum Inc.,

Sands, Taylor & Wood Co. v. Quaker Oats Co.,

Sorensen v. WD-40 Co.,

Specht v. Google Inc.,

Sullivan v. CBS Corp.,

Taha v. Int’l Brotherhood of Teamsters, Loc. 781,

Tecnomatic, S.p.A. v. Remy, Inc.,

Trove Brands, LLC v. California Innovations Inc.,

Ty, Inc. v. The Jones Group, Inc.,

15 U.S.C. § 1114 --------------------------------------------------------------------------------- passim

Federal Rule of Civil Procedure 12(b)(6) ------------------------------------------------------------ 1

The United States Patent Office

Pursuant to Local Rule 7-1(a), defendant Amazon.com, Inc. (“Amazon”) respectfully

Oakley Enterprises, Inc. (ECF No. 22.)

to allege that Amazon uses trademarks identical or substantially indistinguishable from

no such cause of action exists.

allegations about how plaintiffs use any single trademark.

As stated by the Supreme Court, “liability for trademark infringement turns on

issues detailed in Amazon’s first motion.

THE FAC’S ALLEGATIONS

conditioners and bath salts. (FAC ¶¶ 5, 10.)

Defendant Amazon operates an online marketplace that offers products sold by

and sell.” (Id. ¶ 9.) 2