United States District Court, W.D. Texas, Austin Division
ICON HEALTH & FITNESS, INC.
HONORABLE LEE YEAKEL UNITED STATES DISTRICT JUDGE.
REPORT AND RECOMMENDATION OF THE UNITED STATES
W. AUSTIN UNITED STATES MAGISTRATE JUDGE.
the Court are Defendants' Motion to Dismiss Claims 1
Through 6 of Plaintiff's Complaint Under Rule 12(b)(6)
(Dkt. No. 11); and Plaintiff's Memorandum in Opposition
(Dkt. No. 14). The District Court referred the above motion
to the undersigned Magistrate Judge for report and
recommendation pursuant to 28 U.S.C. §636(b)(1)(A),
Fed.R.Civ.P. 72, and Rule 1(c) of Appendix C of the Local
Icon Health & Fitness, Inc. (Icon) brings this suit
against Richard Kelley asserting claims for federal and Texas
trademark infringement, federal trademark dilution, Texas
common law palming off, Lanham Act unfair competition/false
designation of origin, and violations of the
Anticybersquatting Consumer Protection Act (ACPA).
the owner of four registrations in the word mark, IFIT, and a
registration for the domain name, www.ifit.com.
According to Icon, it began using the IFIT mark in 1996 or
1997 to market a line of fitness products. A couple years
later, Icon also began using the domain name
www.ifit.com to provide video and audio workouts to
be used with the IFIT products, which it registered in 2001.
Icon then submitted its first registration for the IFIT mark
in 2002. Since that time, Icon alleges that it has
consistently used and marketed the IFIT brand and website,
submitting three additional registrations to expand the brand
to products and services including, for example, fitness and
exercise equipment, mobile apps, and bands and clips. Icon
claims that it has invested resources to promote the mark
through a variety of marketing initiatives across TV
channels, social media, Internet ads, and email listservs.
Icon's products bearing the IFIT mark are sold in a
number of large retailers across the United States, including
Walmart, Sears, and Academy Sports, and are sold through
online retailers, such as Walmart.com and Amazon.com, as well
as its own website.
2005, Kelley, an author and entrepreneur, registered the
domain names www.iFitCoach.com and
www.iFitnessCoach.com to promote and sell his
fitness and nutrition books. In 2016, Kelley was contacted by
a representative of Icon, who offered to purchase the domain
names. Kelley refused, saying that the websites were being
revamped, but that he intended to continue using them to
promote his books. He also noted that Apple was in the
business of buying domain names similar to his. In early
2017, Kelley also submitted a registration for the domain
name www.iFitCoachPlus.com. Kelley hired an
attorney, who exchanged a number of emails with Icon's
respresentative, and ultimately offered to sell the iFitCoach
domain for $200, 000. The negotiations ended in April, and
Icon filed suit alleging various trademark and unfair
competition claims. Kelley now moves to dismiss Icon's
Rule of Civil Procedure 12(b)(6) allows a party to move to
dismiss an action for failure to state a claim upon which
relief can be granted. Fed. R. Civ. P.12(b)(6). In deciding a
Rule 12(b)(6) motion to dismiss for failure to state a claim,
“[t]he court accepts all well-pleaded facts as true,
viewing them in the light most favorable to the
[nonmovant].” In re Katrina Canal Breaches
Litig., 495 F.3d 191, 205 (5th Cir. 2007) (internal
quotation marks omitted), cert. denied, 552 U.S.
1182 (2008). The Supreme Court has explained that a complaint
must contain sufficient factual matter “to state a
claim to relief that is plausible on its face.”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570
(2007)). “A claim has facial plausibility when the
[nonmovant] pleads factual content that allows the court to
draw the reasonable inference that the [movant] is liable for
the misconduct alleged.” Id. The court
generally is not to look beyond the pleadings in deciding a
motion to dismiss. Spivey v. Robertson, 197 F.3d
772, 774 (5th Cir. 1999).
has challenged each of Icon's claims, arguing that Icon
has failed to adequately plead its causes of action. First,
Kelley argues that Icon's claim under the
Anti-Cybersquatting Act fails because Icon has not
sufficiently pled the element of confusing similarity.
Similarly, Kelley contends that the facts alleged do not
support a finding of a likelihood of confusion for Icon's
federal and Texas trademark infringement claims. Next, Kelley
asserts that Icon has not alleged a misleading statement as
required for its false advertising claim. Kelley then
challenges Icon's trademark dilution claim because Icon
has not pled ownership in a famous mark. Finally, Kelley
argues that both Icon's assertion of secondary meaning
and likelihood of confusion for its Texas common law palming
off claim are not adequately pled.
Likelihood of Confusion
Kelley moves to dismiss Icon's claims for cybersquatting
and Texas and federal trademark infringement. For each of
these claims, Kelley solely contends that Icon has not pled a
likelihood of confusion. Courts look to eight “digits of
confusion” to determine whether there is a likelihood
of confusion. Bd. of Supervisors for La. State Univ. Ag.
& Mech. College v. Smack Apparel, Co.,
550F.3d 465, 478 (5th Cir. 2008); cf. Elvis Presley
Enters., Inc. v. Capece, 141 F.3d 188, 193 (5th Cir.
1998) (noting that the determination for likelihood of
confusion is the same under federal and Texas law). These
(1) the type of mark allegedly infringed, (2) the similarity
between the two marks, (3) the similarity of the products or
services, (4) the identity of retail outlets and purchasers,
(5) the identity of the advertising media used, (6) the
defendant's intent, . . . (7) any evidence of actual