Motions to Dismiss

Barbies, Buds, and Camels Cited as Sufficiently Famous Marks Worthy of Dilution Claims in Granted Motion to Dismiss

Epic Tech, LLC v. SpinX Games Limited, Civil Action No. 1:22-cv-02043-SCJ (N.D. Ga., Apr. 13, 2023)

Northern District Judge Steve Jones granted in part Defendant SpinX’s Motion to Dismiss claims for trademark dilution in a case involving social casino games using the name “Ca$h Bash.”

Plaintiff Epic Tech, LLC, designs computer gaming hardware and software, including a game called “Ca$h Bash.” Plaintiff has been continuously using the mark since May 2012 and registered it the following year. The USPTO deemed the mark incontestable in 2019.

Defendant SpinX Games is a social casino gaming company accused of using a confusingly similar mark, or a derivative thereof, in its mobile games, including in its marketing and advertising of the games.

Plaintiff’s Initial Complaint alleged federal trademark infringement, federal unfair competition, and dilution of a famous mark. Dkt. 1. In response, Defendant unsuccessfully sought to dismiss the Complaint in its entirety. Dkt. 16. After Plaintiff amended the Complaint, Defendant then moved to dismiss just Counts II (false association) and III (trademark dilution). Dkt. 29. Although the Court found the Plaintiff has standing under the Lanham Act to bring its false association claim, it found the Plaintiff failed to successfully allege its trademark dilution claim, and dismissed Count III without prejudice.

The Court found the Plaintiff has standing to bring a claim for false association. The Court analyzed the claims under the two-prong test for determining whether a Plaintiff has standing to sue under a federal statute established by Lexmark International, Inc. v. State Control Components, Inc., 572 U.S. 118, 126–28 (2014).

The Lexmark two-prong test for cause of action under a statute asks whether the (1) plaintiff’s interest fall within the “zone of interests” protected by the law invoked; and (2) plaintiff ’s “injuries are proximately caused by violations of the statute.”

 See Lexmark International, Inc. v. State Control Components, Inc., 572 U.S. 118, 126–28 (2014)

After evaluating the interests protected under the Lanham Act as codified under 15 U.S.C. § 1127, first the Court found the Plaintiff’s alleged injuries within the intended zones of interest. Second, the Court found those injuries sufficiently tied to violations of the statute. Thus, the Plaintiff’s count for false association was saved.

The count for dilution was not so lucky. Or perhaps, not so famous.

“To prevail on a federal dilution claim, the plaintiff must demonstrate that: (1) the plaintiff’s mark is famous; (2) the defendant used the plaintiff’s mark after the plaintiff’s mark became famous; (3) the defendant’s use was commercial and in commerce; and (4) the defendant’s use of the plaintiff’s mark has likely caused dilution.”

Order at 22, quoting Crossfit, Inc. v. Quinnie, 232 F. Supp. 3d 1295, 1308–09 (N.D. Ga. 2017)

Applying the standards established by the Lanham Act for determining “famousness,” Judge Jones deemed the contested mark insufficiently famous to the general public, and thus not eligible for a dilution claim. “Trademark dilution claims, are limited to ‘truly famous marks such as  Budweiser beer, Camel cigarettes, and Barbie dolls.” Order at 22–23, quoting Dahon N. Am., Inc. v. Hon, No. 2:11-cv-05835-ODW(JCGx), 2012 WL 1413681, at *9 (C.D. Cal. Apr. 24, 2012).

The Court agreed with the Plaintiff to an extent that sufficiently famous marks are not reserved for only the most recognizable marks, like Barbie dolls or Coca-Cola. Nonetheless, the Court noted the Complaint lacks sufficient evidence to support its Marks alleged famousness. The Order states, “[t]he Complaint lacks any allegations regarding its advertising and marketing, whether its Mark has been broadcast on television or if its Mark has been widely recognized outside of their niche market. Nor are the allegations that the Mark has been registered long enough to gain secondary meaning. … nor its gross sales from the CA$H BASH game.” Order at 26–27. In fact, the Court allowed only that the Mark is at best “described as famous in a niche market.” Id. at 27. However, a “niche market of the public do[es] not arise to this requisite magnitude of famousness.” Id., quoting USA Nutraceuticals Group, Inc. v. Musclepharm Corp., No. 11-80960-Civ-SCOLA, 2012 WL 13019035, at *3 (S.D. Fla. May 17, 2012.

In sum, Judge Jones granted Defendant SpinX Games’ Motion to Dismiss the trademark dilution claim for lack of requisite famousness, but permitted the Plaintiff to file an Amended Complaint within 21 days.

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