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Virginia Industrial Plastics, Inc. v. Cabinet Saver LLC

United States District Court, W.D. Virginia, Harrisonburg Division

April 11, 2019



          Michael F. Urbanski Chief U.S. District Judge

         This 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 DENIED.


         VIP 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.

         In its 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.


         Rule 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)).

         But, 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." Id.

         Should 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).

         In 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)).


         A 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 ...

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