The Continuum Group LLC v. 666 Performance, LLC
- Lorna Schofield
- 1:24-cv-05834
- U.S. District Court · Southern District of New York
- 5
In The Continuum Group v. 666 Performance, Judge Schofield granted TCG’s motion to dismiss 666P’s duplicative non-infringement counterclaim.
The ruling removes 666 Performance, LLC’s counterclaim seeking a declaration of non-infringement from this action. The opinion does not resolve The Continuum Group LLC’s underlying trademark-infringement claim.
What happened
The Continuum Group LLC sued 666 Performance, LLC, alleging trademark infringement. 666 Performance responded with a counterclaim seeking a declaration that it had not infringed The Continuum Group’s trademarks.
The court concluded that the counterclaim duplicated both 666 Performance’s affirmative defense and The Continuum Group’s infringement claim. The court also rejected 666 Performance’s argument that the counterclaim was needed to prevent uncertainty if The Continuum Group tried to end the case before a decision.
Judge Lorna G. Schofield granted The Continuum Group’s motion to dismiss the counterclaim under the rule governing legally insufficient claims. The opinion does not state that the dismissal was with or without prejudice.
The detailed version
- The Continuum Group LLC v. 666 Performance, LLC · No. 1:24-cv-05834
- Lorna Schofield
- May 23, 2025
Background
The Continuum Group LLC (TCG) sued 666 Performance, LLC (666P), alleging trademark infringement. TCG seeks damages and a declaration that it exclusively owns the trademarks at issue. 666P answered the complaint and asserted eight affirmative defenses. Its second affirmative defense stated that 666P had not infringed any valid and enforceable trademark owned by TCG.
666P also asserted one counterclaim under the Declaratory Judgment Act, seeking a declaration that it had not infringed or otherwise violated TCG’s trademark rights in New York. TCG moved to dismiss that counterclaim under Federal Rule of Civil Procedure 12(b)(6), which permits dismissal when a pleading does not state a legally sufficient claim for relief.
Court’s Analysis
The court explained that a motion to dismiss a counterclaim is evaluated under the same standard as a motion to dismiss a complaint. The court accepts well-pleaded factual allegations as true and considers whether they plausibly establish an entitlement to relief.
The court dismissed the counterclaim because it was duplicative of both 666P’s second affirmative defense and TCG’s trademark-infringement claim. The counterclaim sought a declaration that 666P had not infringed TCG’s trademarks, which was the same position stated in the affirmative defense. The court also reasoned that resolving TCG’s infringement claim on the merits would necessarily resolve 666P’s counterclaim, so the counterclaim served no useful purpose.
The court rejected 666P’s argument that the counterclaim was necessary to ensure finality if TCG attempted to dismiss the action before a verdict. Because 666P had already answered, the court stated that TCG could not unilaterally dismiss the case before a merits decision; 666P’s consent would be required. The court also rejected 666P’s arguments that retaining the counterclaim would not harm TCG and would promote judicial efficiency.
Disposition
Judge Lorna G. Schofield granted TCG’s motion to dismiss the counterclaim. The Clerk of Court was directed to close the motion at Docket No. 64. The opinion does not specify whether the dismissal was with or without prejudice.
Read the full 5-page opinion on CourtListener, the free public archive maintained by the Free Law Project.