Amarte USA Holdings, Inc. v. Kendo Holdings Inc.

Background

Amarte sued Kendo Holdings Inc., Marc Jacobs International, LLC, Sephora USA, Inc., and The Neiman Marcus Group LLC under federal trademark law, California’s unfair-competition statute, and related common-law theories. Amarte alleged that the defendants used the nearly identical mark EYE-CONIC for eye-makeup palettes, creating a likelihood of confusion with Amarte’s EYECONIC mark, which Amarte used on an anti-wrinkle eye cream.

Amarte’s trademark registration covered “eye cosmetics; eye creams.” During the litigation, Kendo received permission to add a counterclaim seeking cancellation of the registration for non-use. Kendo alleged that Amarte had used the mark only in connection with an eye cream and had not used it with an eye cosmetic. The court previously found that Kendo had plausibly stated this counterclaim.

Motion and analysis

Amarte moved for judgment on the pleadings under Federal Rule of Civil Procedure 12(c). That rule permits a party to seek judgment after the pleadings are complete but before trial. The court applies essentially the same standard used for a motion to dismiss for failure to state a claim: the claim must contain enough factual content to be plausible, and the moving party must clearly show from the pleadings that there is no material factual dispute and that it is entitled to judgment as a matter of law.

Amarte argued that its eye cream qualified as both an “eye cream” and an “eye cosmetic.” It asked the court to take judicial notice of several definitions of “cosmetics.” Kendo responded that Amarte was repeating arguments it had made earlier and that Kendo had adequately alleged non-use for the “eye cosmetics” category.

The court exercised its discretion to consider Amarte’s motion on the merits. It held that Kendo had alleged sufficient facts to plausibly claim that Amarte’s registration was subject to cancellation for non-use. The court also found a material factual dispute about whether Amarte’s eye cream should be categorized as an eye cosmetic. Although a factfinder might eventually agree with Amarte, the court could not resolve that dispute at the pleadings stage using dictionary definitions or judicial notice.

Disposition

The court concluded that Amarte had not shown that it was clearly entitled to judgment on the pleadings. Judge Charles R. Breyer therefore DENIED Amarte’s motion for judgment on the pleadings.