United States District Court, N.D. Texas, Dallas Division
MEMORANDUM OPINION AND ORDER
J. BOYLE UNITED STATES DISTRICT JUDGE
International, LLC (NI) and the defendants (collectively
Aloeveritas) compete as marketers and sellers of high-end
skin-care products. In this case, NI has sued Aloeveritas,
accusing it of using marks and packaging so confusingly
similar to NI's as to violate federal trademark law.
Aloeveritas now asks the Court to dismiss NI's lawsuit,
arguing that NI has failed to state a claim and failed to
join a necessary party. Unpersuaded by Aloeveritas's
arguments, the Court DENIES the motion to
sells high-end skin-care products, including a day cream and
a night cream derived from the nerium oleander plant, from
which NI takes its name. Doc. 1, Compl., ¶ 10. NI claims
that its products have been a great success, earning NI
millions of dollars and much respect, and that the public so
strongly associates the Nerium mark and trade dress with NI
that NI owns the mark and trade dress and that the Nerium
mark is famous as a matter of trademark law. Id.
too sells high-end skin-care products, including day creams
and night creams derived from the nerium oleander plant.
Id. ¶ 14. NI alleges that Aloeveritas's
promotional materials and packaging include the phrase
“nerium night cream” and “nerium day
cream” and that Aloeveritas's packaging closely
resembles NI's. Id. ¶¶ 14-17. NI
claims also that Aloeveritas has marketed its day and night
creams as “bestselling” products and that,
because Aloeveritas has sold its day and night creams in the
United States only since October 2017, Aloeveritas's
claim that its products are “bestselling” can
only be based on NI's sales of nerium-based creams.
Id. ¶ 18. And NI accuses Aloeveritas of using
NI's success and scientific research to promote
Aloeveritas's products. Id. ¶ 19.
contends in its motion to dismiss that NI does not own the
Nerium mark. Doc. 11, Mot. to Dismiss, 2. Rather, according
to Aloeveritas, a company called Nerium Biotechnology, Inc.
(NBI) owns the mark and has licensed Aloeveritas to use the
mark. Id. NBI is currently litigating against NI in
another case before the Court. See Nerium SkinCare, Inc.
v. Nerium Int'l, LLC, No. 3:16-cv-1217-B, 2017 WL
177651 (N.D. Tex. Jan. 16, 2017). B. Procedural
History NI filed its complaint on October 30, 2017,
alleging four federal trademark-related causes of action
against Aloeveritas: (1) trademark infringement, 15 U.S.C.
§ 1125(a); (2) trade dress infringement, id.;
(3) false advertising, id.; and (4) trademark
dilution, id. § 1125(c). Doc. 1, Compl.,
¶¶ 22-50. Aloeveritas responded by moving the Court
to dismiss NI's lawsuit under Federal Rule of Civil
Procedure 12(b)(6) for failure to state a claim and under
Rule 12(b)(7) for failure to join a necessary party under
Rule 19. Doc. 11, Mot. to Dismiss. Aloeveritas's motion
is ripe for review.
Rule of Civil Procedure 12(b)(6) authorizes dismissal for
failure to state a claim upon which relief may be granted.
When analyzing Rule 12(b)(6) motions, courts generally
consider “the complaint, its proper attachments,
documents incorporated into the complaint by reference, and
matters of which a court may take judicial notice.”
Randall D. Wolcott, M.D., P.A. v. Sebelius, 635 F.3d
757, 763 (5th Cir. 2011). During this review, factual
allegations must be viewed “in the light most favorable
to the plaintiffs.” Kopp v. Klien, 722 F.3d
327, 333 (5th Cir. 2013). Courts are not, however,
“bound to accept as true a legal conclusion couched as
a factual allegation.” Bell Atl. Corp. v
Twombly, 550 U.S. 544, 555 (2007).
12(b)(6) motions turn on whether a complaint contains
“enough facts to state a claim to relief that is
plausible on its face.” Id. at 570. Facially
plausible complaints “allege ‘more than labels
and conclusions'” and contain enough factual
allegations “‘to raise a right to relief above
the speculative level.'” Norris v. Hearst
Tr., 500 F.3d 454, 464 (5th Cir. 2007) (quoting
Twombly, 550 U.S. at 555). If the allegations lack
sufficient detail, “this basic deficiency should . . .
be exposed” before the parties and court spend
unnecessary time and resources on the case. Twombly,
550 U.S. at 558.
can move under Rule 12(b)(7) to dismiss a case in which a
party is absent that Rule 19 requires to be present. Under
Rule 19(a), a person “subject to service of process and
whose joinder will not deprive the court of subject-matter
jurisdiction must be joined as a party if” (1) the
person's absence will prevent the court from
“accord[ing] complete relief among existing parties,
” or (2) the person has an interest in the subject of
the case, and disposing of it in the person's absence
will either “impair or impede the person's ability
to protect the interest, ” or create a risk of multiple
or inconsistent obligations for an existing party because of
the interest. ...