OD's on Finance, LLC. v. Vittorio Mena Jr.

Background

OD’s on Finance, LLC (ODOF) alleged that it promotes financial competence and career success for optometrists and related professionals through newsletters and other resources. It operates a Facebook group called “OD’s on Finance,” a website, and social-media pages. ODOF alleged that it had continuously used “OD’s on Finance” and “ODS ON FINANCE” commercially since at least January 2018 and obtained a federal trademark registration for “ODS ON FINANCE” in March 2024.

ODOF alleged that Vittorio Mena Jr., a licensed optometrist who operates a Facebook group called “OD Finance Professionals,” was banned from ODOF’s Facebook group after attempting to sell cryptocurrency and life insurance there. ODOF further alleged that beginning around July 2023, Mena publicly attacked and defamed ODOF and some of its members, traded on ODOF’s name and goodwill, confused consumers, and tried to direct consumers toward Mena’s or his business partners’ products or services. The first amended complaint included alleged false or misleading statements and screenshots from social-media posts.

The first amended complaint asserted seven causes of action: false advertising under Section 43(a)(1)(B) of the Lanham Act; false association under Section 43(a)(1)(A) of the Lanham Act; trademark infringement under Section 32 of the Lanham Act and California Business and Professions Code section 14245; defamation; trade libel; unfair competition and trade-name infringement; and tortious interference with prospective business advantage.

Motion and legal standard

Mena moved to dismiss the Lanham Act claims for failure to state a claim. Under Federal Rule of Civil Procedure 12(b)(6), a court must dismiss a claim that does not allege enough facts to make relief plausible. At this stage, the court generally assumes well-pleaded allegations are true and draws reasonable inferences for the plaintiff, but it need not accept conclusory allegations or unreasonable factual inferences.

The court also discussed Federal Rule of Civil Procedure 9(b), which requires fraud-based allegations to be stated with particularity. The court noted that the U.S. Court of Appeals for the Ninth Circuit had not squarely decided whether Rule 9(b) applies to Lanham Act claims, but several district courts had applied it when such claims are based on knowing and intentional misrepresentations.

Court’s analysis

First, Mena argued that ODOF could not challenge statements made before its March 2024 trademark registration. The court rejected that argument. It explained that Section 32 of the Lanham Act protects registered marks, while Section 43(a) also protects unregistered marks and covers a broader range of conduct, including false advertising and product disparagement. The court found that the first two claims challenged statements made in 2024 and 2025 and that ODOF alleged it had used the marks since 2018. The court also found that the Section 32 infringement claim alleged that ODOF notified Mena in August 2024 that it owned the “ODS ON FINANCE” trademarks and asked him to stop using or referring to the name, but that Mena refused.

Second, Mena argued that the false-advertising claim did not satisfy Rule 9(b). The court disagreed. It found that the claim identified seven social-media posts, alleged who made them and when, quoted the challenged statements, and explained why ODOF considered them false or misleading. For six of the seven statements, ODOF attached screenshots. The court also found that none of the allegations in the false-advertising claim were made only “on information and belief.”

Third, Mena challenged the validity of ODOF’s registered and common-law trademarks, including their distinctiveness, ODOF’s continuous commercial use, and priority of use. The court found these allegations sufficient at the pleading stage. It explained that a trademark registration is prima facie evidence of the mark’s validity, ownership, and the registrant’s exclusive right to use it for the listed goods or services. The court stated that Mena’s challenges to the registered mark raised factual questions that could not be resolved from the pleadings. It also concluded that Mena had overlooked ODOF’s allegations concerning priority and commercial use of the common-law marks and could renew those arguments on a factual record.

Disposition

The court concluded that the amended complaint states a claim and denied Mena’s motion to dismiss. The opinion did not make a final determination about the truth of ODOF’s allegations or the ultimate merits of the claims.