United States District Court, N.D. Texas, Dallas Division
MEMORANDUM OPINION AND ORDER
FISH, SENIOR UNITED STATES DISTRICT JUDGE.
the court are motions to dismiss, or alternatively, motions
for a more definite statement filed by the defendants, KIPP
Foundation, KIPP, Inc., and KIPP Texas Schools (docket
entries 32 and 40). For the reasons stated below, the motions
are granted in part and denied in part.
plaintiff, Springboards to Education, Inc.
(“Springboards”), is an educational company
specializing in children's literacy. First Amended
Complaint (“Amended Complaint”) (docket entry
21). The Knowledge Is Power Program (“KIPP”) is a
non-profit network of public charter schools located in Texas
and throughout the country. Id. ¶ 32. The KIPP
Foundation trains and develops teachers and facilitates ideas
across KIPP schools. Id. KIPP, Inc. and KIPP Texas
Schools oversee KIPP public charter schools in Texas.
action revolves around Springboards's “Read a
Million Words Campaign.” Amended Complaint ¶¶
15-16. The campaign encourages students to take an oath to
read at least one million words by the end of the school
year. Id. ¶ 16. As part of the campaign,
schools may purchase a kit from Springboards that contains
educational materials and other products designed to
incentivize students to read at least one million words by
the end of the school year. Id. ¶ 17. A student
who reads at least one million words becomes a
“Millionaire Reader” and is inducted into the
“Millionaire's Reading Club.” Id.
¶ 19. The program includes an induction ceremony
featuring red carpet parties and rented limousines.
Id. Springboards has marketed this program to
thousands of educators nationwide. Id. ¶ 21.
registered the following trademarks as part of the program:
“Read a Million Words”; “Millionaire
Reader”; “Millionaire's Reading Club”;
“Million Dollar Reader”; and “Feel Like a
Million Bucks.” Id. ¶ 22. Additionally,
Springboards also has two common law trademarks:
“Reading Rules” and “Star Struck
Reader.” Id. ¶ 25. Springboards uses
these trademarks in its “Read a Million Words”
campaign. Id. ¶ 27. Springboards features the
marks on incentive products including bookmarks, blow-up
dollar bills, pencils, and certificates. Id.
Springboards has exclusively used and promoted the marks for
over a decade. Id. ¶ 29.
alleges that KIPP schools in Texas have used the marks
“Millionaire Reader, ” “#millionairereader,
” and “Millionaire” in social media
postings. Id. ¶ 37. KIPP schools outside of
Texas have used similar terms, such as
“Millonaire's Club.” Id. ¶ 38.
Springboards contends that these marks are either identical
to, substantially indistinguishable from, or confusingly
similar to Springboards's trademarks. Id. ¶
44. Moreover, the KIPP entities are allegedly manufacturing
and/or distributing products containing confusingly similar
language. Id. ¶ 46. Springboards has not
authorized any KIPP entity to use its products. Id.
result, Springboards asserts claims for: (1) trademark
counterfeiting, 15 U.S.C. § 1114; (2) trademark
infringement, 15 U.S.C. § 1114; (3) false designation of
origin false descriptions, 15 U.S.C. § 1125(a); (4)
trademark dilution, 15 U.S.C. § 1125(c); (5) Texas
anti-dilution statute, Tex. Bus. & Com. Code §
16.103; (6) common law trademark infringement; (7) common law
unfair competition; and (8) conspiracy. Id.
February 14, 2017, the KIPP Foundation filed its motion to
dismiss, or alternatively, for a more definite statement.
Motion to Dismiss or Alternatively Motion for More Definite
Statement Filed by the KIPP Foundation (docket entry 32);
Defendant KIPP Foundation's Brief in Support of Its
Motion (“KIPP Foundation's Brief”) (docket
entry 33). On March 3, 2017, KIPP, Inc. and KIPP Texas
Schools filed their motion to dismiss, or alternatively, for
a more definite statement. KIPP, Inc. and KIPP Texas
Schools's Motion to Dismiss Plaintiff's First Amended
Complaint or Alternative Motion for More Definite Statement
(“KIPP, Inc. and KIPP Texas Schools's Brief”)
(docket entry 40). On March 21, 2017, Springboards timely
filed a response to the KIPP Foundation's motion to
dismiss. Plaintiff's Response to Defendant KIPP
Foundation's Motion and Brief in Support
(“Springboards's KIPP Foundation Response”)
(docket entry 47). On April 4, 2017, the KIPP Foundation
timely filed a reply to the response to its motion. Defendant
KIPP Foundation's Reply Brief in Support of It's
Motion (“KIPP Foundation's Reply”) (docket
entry 49). On April 7, 2017, Springboards timely filed a
response to KIPP, Inc. and KIPP Texas Schools's motion to
which KIPP, Inc. and KIPP Texas Schools filed a timely reply.
Plaintiff's Response to Defendant KIPP, Inc. and KIPP
Texas Schools's Motion (“Springboards's KIPP,
Inc. and KIPP Texas Schools Response”) (docket entry
50); KIPP, Inc. and KIPP Texas Schools's Reply Brief
(“KIPP, Inc. and KIPP Texas Schools's Reply”)
(docket entry 53). The motions are now ripe for decision.
12(b)(1) of the Federal Rules of Civil Procedure authorizes
the dismissal of a case for lack of jurisdiction over the
subject matter. See Fed. R. Civ. P. 12(b)(1). A
motion to dismiss pursuant to Rule 12(b)(1) for lack of
subject matter jurisdiction must be considered by the court
before any other challenge because “the court must find
jurisdiction before determining the validity of a
claim.” Moran v. Kingdom of Saudi Arabia, 27
F.3d 169, 172 (5th Cir. 1994) (internal citation omitted);
see also Ruhrgas AG v. Marathon Oil Company, 526
U.S. 574, 577 (1999) (“The requirement that
jurisdiction be established as a threshold matter . . . is
inflexible and without exception”) (citation and
internal quotation marks omitted). On a Rule 12(b)(1) motion,
which “concerns the court's ‘very power to
hear the case . . . [, ] the trial court is free to weigh the
evidence and satisfy itself as to the existence of its power
to hear the case.'” MDPhysicians &
Associates, Inc. v. State Board of Insurance, 957 F.2d
178, 181 (5th Cir.) (quoting Williamson v. Tucker,
645 F.2d 404, 413 (5th Cir.), cert. denied, 454 U.S.
897 (1981)), cert. denied, 506 U.S. 861 (1992). In
ruling on a motion to dismiss under Rule 12(b)(1), the court
may rely on: “1) the complaint alone; 2) the complaint
supplemented by undisputed facts; or 3) the complaint
supplemented by undisputed facts and the court's
resolution of disputed facts.” MCG, Inc. v. Great
Western Energy Corporation, 896 F.2d 170, 176 (5th Cir.
1990) (citing Williamson, 645 F.2d at 413). Once
jurisdiction is challenged, the burden rests upon the party
seeking to invoke the court's jurisdiction to prove that
jurisdiction is proper. Boudreau v. United States,
53 F.3d 81, 82 (5th Cir. 1995), cert. denied, 516
U.S. 1071 (1996).