United States District Court, W.D. Virginia, Harrisonburg Division
Michael F. Urbanski Chief U.S. District Judge
matter comes before the court on plaintiff Virginia
Industrial Plastics, Inc.'s (VIP) motion for judgment on
the pleadings, filed on March 14, 2019. ECF No. 25. Defendant
Cabinet Saver LLC (Cabinet Saver) responded on March 28,
2019. ECF No. 27. VIP replied on April 5, 2019. ECF No. 28.
For the following reasons, VIP's motion is
filed its complaint against Cabinet Saver on September 12,
2018. ECF No. 1. This suit arises from the use of the name
"Cabinet Savers," used by both parties to refer to
plastic liners designed to protect kitchen sink cabinets and
other surfaces from water damage. ECF No. 1, at 5; ECF No. 7,
at 2. Both parties manufacture products of this description.
ECF No. 1, at 5; ECF No. 7, at 2. VIP owns United States
Trademark Registration No. 5, 426, 605 for the use of the
"Cabinet Saver" mark (the Mark), filed with the
United States Patent and Trademark Office (USPTO) on July 14,
2017. ECF No. 1, at 2; ECF No. 7, at 1. In its complaint, VIP
alleges trademark infringement, false association/false
endorsement, false designation of source and/or origin, and
unfair competition against Cabinet Saver. ECF No. 1.
Answer, Cabinet Saver asserted two counterclaims, at the base
of which was an allegation that VIP committed fraud in the
procurement of its trademark registration. ECF No. 7, at 4-5.
VIP moved to dismiss these counterclaims on November 19,
2018. ECF No. 15. The court granted this motion on December
11, 2018. ECF No. 20. VIP now moves for judgment on the
pleadings, arguing" that Cabinet Saver's
"entire basis for claiming [VIP] lacks legal rights to
the Mark is based on the erroneous premise that VIP's
rights to the Mark are invalid due to fraudulent
conduct," and that the court's dismissal of this
counterclaim eliminates any issue of material fact. ECF No.
26, at 3-4.
12(c) of the Federal Rules of Civil Procedure allows a party
to move for judgment on the pleadings "[a]fter the
pleadings are closed." "A motion for judgment on
the pleadings pursuant to Rule 12(c) is analyzed under the
same standard as a Federal Rule of Civil Procedure 12(b)(6)
motion to dismiss." Mendenhall v. Hanesbrands.
Inc.. 856 F.Supp.2d 717, 723 (M.D. N.C. 2012) (citing
Burbach Broad. Co. of Del, v. Elkins Radio
Corp., 278 F.3d 401, 405-06 (4th Cir. 2002)).
Therefore, a motion for judgment on the pleadings
"should only be granted if, after accepting all
well-pleaded allegations in the plaintiffs complaint as true
and drawing all reasonable factual inferences from those
facts in the plaintiffs favor, it appears certain that the
plaintiff cannot prove any set of facts in support of his
claim entitling him to relief."
Drager v. PLIVA USA. Inc.. 741 F.3d 470, 474 (4th
Or. 2014) (quoting Edwards v. City of Goldsboro. 178
F.3d 231, 244 (4th Cir. 1999)). See Booker v. Peterson
Cos.. 412 Fed. App'x. 615, 616 (4th Cir. 2011)
("In order to survive a motion for judgment on the
pleadings, the complaint must contain sufficient facts
'to raise a right to relief above the speculative
level' and 'state a claim to relief that is plausible
on its face.'" (quoting Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007)).
motions to dismiss and motions for judgment on the pleadings
are not identical: '"[u]nlike on a Rule 12(b)(6)
motion ... on a Rule 12(c) motion the [C]ourt may consider
the Answer as well.'" Mendenhall. 856
F.Supp.2d at 724 (brackets and ellipsis in original) (quoting
Alexander v. City of Greensboro. No. 1:09-CV-293,
2011 WL 3360644, at *2 (M.D. N.C. Aug. 3, 2011)). "The
'factual allegations in the [A]nswer are taken as true to
the extent they have not been denied or do not conflict with
the [C]omplaint.'" Id. (brackets in
original) (quoting Farmer v. Wilson Hous. Auth.. 393
F.Supp.2d 384, 386 (E.D. N.C. 2004)). Moreover, "[i]n
'determining a motion for judgment on the pleadings, the
[C]ourt may consider documents incorporated by reference into
the pleadings.'" Id. (second brackets in
original) (quoting Farmer, 393 F.Supp.2d at 386).
However, "[i]f, on a motion for judgment on the
pleadings, matters outside the pleadings are presented to and
not excluded by the court, the motion shall be treated as one
for summary judgment and disposed of as provided in Rule
56." A.S. Abell Co. v. Baltimore Typographical Union
No. 12. 338 F.2d 190, 193 (4th Cir. 1964) (quoting
Fed.R.Civ.P. 12(c)). The decision to exclude matters outside
the pleadings is "discretionary with the court."
the court consider matters outside the pleadings, the motion
for judgment on the pleadings may be treated as a motion for
summary judgment. Pursuant to Federal Rule of Civil Procedure
56(a), the court must "grant summary judgment if the
movant shows that there is no genuine dispute as to any
material fact and the movant is entitled to judgment as a
matter of law." Fed.R.Civ.P. 56(a); Celotex Corp. v.
Catrett 477 U.S. 317, 322 (1986); Glynn v. EDO
Corp.: 710 F.3d 209, 213 (4th Cir. 2013).
When making this determination, the court should consider
"the pleadings, depositions, answers to interrogatories,
and admissions on file, together with ... [any]
affidavits" filed by the parties. Celotex, 477
U.S. at 322. Whether a fact is material depends on the
relevant substantive law. Anderson v. Liberty Lobby,
Inc., 477 U.S. 242, 248 (1986). "Only disputes over
facts that might affect the outcome of the suit under the
governing law will properly preclude the entry of summary
judgment. Factual disputes that are irrelevant or unnecessary
will not be counted." IcL (citation omitted). The moving
party bears the initial burden of demonstrating the absence
of a genuine issue of material fact. Celotex. 477
U.S. at 323. If that burden has been met, the non-moving
party must then come forward and establish the specific
material facts in dispute to survive summary judgment.
Matsushita Elec. Indus. Co. v. Zenith Radio Corp..
475 U.S. 574, 586-87 (1986).
determining whether a genuine issue of material fact exists,
the court views the facts and draws all reasonable inferences
in the light most favorable to the non-moving party.
Glynn. 710 F.3d at 213 (citing Bonds v.
Leavitt. 629 F.3d 369, 380 (4th Cir. 2011)). Indeed,
"[i]t is an -'axiom that in ruling on a motion for
summary judgment, the evidence of the nonmovant is to be
believed, and all justifiable inferences are to be drawn in
his favor.'" McAMaids. Inc. v. Kimberly-Clark
Corp.. No. 13-2044, 2014 WL 2871492, at *1 (4th Cir.
June 25, 2014) (internal alteration omitted) (citing
Tolan v. Cotton. 572 U.S. 650, 651 (2014) (per
curiam)). Moreover, "[credibility determinations, the
weighing of the evidence, and the drawing of legitimate
inferences from the facts are jury functions, not those of a
judge...." Anderson. 477 U.S. at 255. However,
the non-moving party "must set forth specific facts that
go beyond the 'mere existence of a scintilla of evidence,
'" Glynn. 710 F.3d at 213 (quoting
Anderson, 477 U.S. at 252), and show that
"there is sufficient evidence favoring the nonmoving
party for a jury to return a verdict for that party."
Res. Bankshares Corp. v. St. Paul Mercury Ins. Co..
407 F.3d 631, 635 (4th Cir. 2005) (quoting Anderson.
477 U.S. at 249). "In other words, to grant summary
judgment the [c]ourt must determine that no reasonable jury
could find for the nonmoving party on the evidence before
it." Moss v. Parks Corp.. 985 F.2d 736, 738
(4th Cir. 1993) (citing Perini Corp. v. Perini Const..
Inc.. 915 F.2d 121, 124 (4th Cir. 1990)).
plaintiff bringing a claim of trademark infringement claim or
false designation of original mark, like VIP, must show that:
(1) it possesses a mark; (2) the opposing party used that
mark; (3) the opposing party's use of the mark occurred
in commerce; (4) the opposing party used the mark in
connection with the sale, offering for sale, distribution, or
advertisement of goods or services; and (5) the opposing
party used the mark in a way likely to confuse consumers.
Lamparello v. Falwell. 420 F.3d 309, 313 (4th Cir.
2005). VIP argues that Cabinet Saver has conceded that it
uses the Mark in commerce and in connection with the sale of
its cabinet liners. ECF No. 26, at 6. It also argues that its
registered mark, the trademark registration of which is
attached to the Complaint, is presumed valid and has gone
unchallenged by Cabinet Saver except through the allegation
of fraud or inequitable conduct. Id. at 6-7. See ECF
No. 1-2. Finally, VIP goes through the non-exclusive factors
examined by courts in determining a ...