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Jones v. American Council on Exercise

United States District Court, S.D. Texas, Houston Division

April 3, 2017

Michael Jones, Plaintiff,
v.
American Council on Exercise, Defendant.

          ORDER

          Gray H. Miller United States District Judge.

         Pending before the court is a motion for leave to file a second amended answer filed by defendant American Council on Exercise (“ACE”). Dkt. 60. Having considered the motion, response, reply, and the applicable law, the court is of the opinion that the motion should be GRANTED.

         I. Background and Legal Standard

         Under the court's scheduling order entered on April 11, 2016, amendments to pleadings were due by September 14, 2016. Dkt. 17. ACE filed its motion to amend its answer on November 11, 2016. Dkt. 60. Because ACE is seeking leave to amend outside of the time permitted in the court's scheduling order, the court treats the motion to file an amended answer as a motion to amend the scheduling order. Under Federal Rule of Civil Procedure 16(b)(4), a scheduling order may be modified “only for good cause and with the judge's consent.” Fed.R.Civ.P. 16(b)(4). The discovery deadline was January 5, 2017. Id. “To show good cause, the party seeking to modify the scheduling order has the burden of showing ‘that the deadlines cannot reasonably be met despite the diligence of the party needing the extension.'” Squyres v. Heico Cos., L.L.C., 782 F.3d 224, 237 (5th Cir. 2015) (quoting Filgueira v. U.S. Bank Nat'l Ass'n, 734 F.3d 420, 422 (5th Cir. 2013)). To determine if there is good cause, the court must consider:

“(1) the explanation for the failure to timely [comply with the scheduling order];
(2) the importance of the [modification];
(3) potential prejudice in allowing the [modification]; and
(4) the availability of a continuance to cure such prejudice.”

Id. (quoting Meux Surface Prot., Inc. v. Fogleman, 607 F.3d 161, 167 (5th Cir. 2010)).

         II. Analysis

         ACE seeks to clarify its Ninth Specially-Pleaded Defense to show that it is based in part on Jones's naked licensing of the alleged mark. Dkt. 60. The current defense states: “Jones's purported trademark is invalid for lack of distinctiveness and/or secondary meaning.” Dkt. 18 at 8. The proposed amended version of this defense reads as follows:

Jones's purported trademark is invalid for lack of distinctiveness and/or secondary meaning. For example and not by way of limitation, even if Jones' purposed trademark was not a common descriptive term (i.e., generic and unprotectable) but rather was merely descriptive such that it could have acquired secondary meaning, which ACE denies, Jones' uncontrolled licensing of, and/or uncontrolled grants of consent to, third-parties to use the purported trademark would have prevented it from ever acquiring secondary meaning and becoming distinctive, or, alternatively, would have caused the purported trademark to lose any distinctiveness it might have had as an indicator of origin.

Dkt. 60, Ex. A.

         A. ...


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