United States District Court, W.D. Texas, San Antonio Division
REPORT AND RECOMMENDATION OF UNITED STATES MAGISTRATE
ELIZABETH S. ("BETSY") CHESTNEY UNITED STATES
Honorable Chief United States District Judge Orlando L.
Report and Recommendation concerns Defendant's Partial
Motion to Dismiss Pursuant to Rule 12(b)(6) [#7]. All
pretrial matters in this case have been referred to the
undersigned for disposition pursuant to Rules CV-72 and 1(c)
of Appendix C of the Local Rules of the United States
District Court for the Western District of Texas [#17]. The
undersigned has authority to enter this recommendation
pursuant to 28 U.S.C. § 636(b)(1)(B). For the reasons
set forth below, it is recommended that Defendant's
Motion [#7] be GRANTED.
an action arising under the Lanham Act, 15 U.S.C. §
1051, et seq. Plaintiff Priority Design & Service, Inc.
is a company providing residential and multi-family heating
and air-conditioning services in greater San Antonio. (Compl.
[#1] at ¶ 4.) Plaintiff's Original Complaint alleges
that Defendant Gabriel Plaza d/b/a Priority Air Service is
also in the air-conditioning industry and is conducting
business in the San Antonio area, making Plaintiff and
Defendant direct competitors. (Id. at ¶¶
5-6.) Plaintiff claims it has been using its name and logo as
a trademark since 1999 and 2002, respectively, and has two
pending applications with the U.S. Patent and Trademark
Office (“USPTO”) for nationwide registration of
its “Priority Design & Service” word
trademark and its logo design plus word trademark.
(Id. at ¶ 6.) Plaintiff alleges Defendant's
use of a highly similar name constitutes a violation of its
trademark rights. (Id. at ¶¶ 5-6.)
sues Defendant for the following causes of action arising
under federal and Texas law: (I) federal unfair competition
and false description in violation of Section 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a); (II) federal false
advertising in violation of Section 43(a) of the Lanham Act,
15 U.S.C. § 1125(a)(1)(B); (III) state unfair
competition in violation of Chapter 16 of the Texas Business
and Commerce Code; (IV) common law trademark infringement;
(V) common law unfair competition; (VI) tortious interference
with existing business relationships; and (VII) tortious
interference with prospective business relationships.
Defendant moves to dismiss Counts II, III, VI, and VII of
Plaintiff's Complaint pursuant to Rule 12(b)(6) of the
Federal Rules of Civil Procedure for failure to state a
survive a motion to dismiss, a complaint must contain
sufficient factual matter, accepted as true, to ‘state
a claim to relief that is plausible on its face.'”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007)). “A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to
draw the reasonable inference that the defendant is liable
for the misconduct alleged.” Id.
“Although a complaint “does not need detailed
factual allegations, ” the “allegations must be
enough to raise a right to relief above the speculative
level.” Twombly, 550 U.S. at 555. The allegations
pleaded must show “more than a sheer possibility that a
defendant has acted unlawfully.” Iqbal, 556
U.S. at 678.
reviewing a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6), a court “accepts all well-pleaded
facts as true, viewing them in the light most favorable to
the plaintiff.” Martin K. Eby Const. Co. v. Dallas
Area Rapid Transit, 369 F.3d 464, 467 (5th Cir. 2004)
(internal quotation omitted). However, it is not bound to
accept as true conclusory allegations or allegations that
merely restate the legal elements of a claim. See Chhim
v. Univ. of Texas at Austin, 836 F.3d 467, 469 (5th Cir.
2016) (citing Iqbal, 556 U.S. at 678). In short, a
claim should only be dismissed if a court determines that it
is beyond doubt that the claimant cannot prove a plausible
set of facts that support the claim and would justify relief.
See Twombly, 550 U.S. at 570.
motion to dismiss should be granted because Plaintiff has
failed to plead essential elements of its claims for false
advertising under the Lanham Act, common law unfair
competition, and tortious interference with prospective and
existing business relations.
False Advertising under the Lanham Act (Count II)
false advertising claim (Count II) fails as a matter of law
because Plaintiff's Complaint does not allege that
Defendant included any literal misrepresentation or
misleading statements in its advertising, only that it used a
confusingly similar name to ...