Reflex Media, Inc. v. SuccessfulMatch.com

Background

Reflex Media, Inc. (RMI) and Clover8 Investments sued SuccessfulMatch.com and Successful Match Canada (collectively, Successful Match) for infringement of twelve registered trademarks used in online dating and matchmaking services. Successful Match asserted eleven counterclaims challenging the trademark registrations as generic. It also alleged that five marks—numbers four, five, seven, ten, and eleven—were descriptive and lacked secondary meaning.

A generic term is the common name for goods or services and cannot function as a valid trademark. A descriptive term directly describes a product or service but may receive trademark protection if it has acquired “secondary meaning,” meaning consumers associate the term with a particular source. The parties agreed that some registrations were incontestable, and that the registration for RELATIONSHIP ON YOUR TERMS, the tenth mark, was more than five years old.

Motion and analysis

Clover8 moved under Federal Rule of Civil Procedure 12(b)(1) and 12(b)(6) to dismiss the descriptiveness counterclaims for marks four, five, seven, ten, and eleven. Successful Match argued that the motion improperly challenged only the descriptiveness allegations while leaving the genericness allegations in place. The court rejected that objection, explaining that genericness and descriptiveness are independent grounds for canceling a registration.

The court held that dismissal was not warranted for the fourth, fifth, seventh, and eleventh counterclaims based on descriptiveness. Although Clover8 argued that those “junior marks” were protected because related “senior marks” were incontestable, the court explained that the senior marks could still be challenged as generic. The court therefore did not dismiss the descriptiveness challenges to the four junior marks at this stage.

The court granted Clover8’s motion to dismiss the tenth counterclaim based on descriptiveness. Because the RELATIONSHIP ON YOUR TERMS registration was more than five years old, it could not be canceled on descriptiveness grounds under 15 U.S.C. § 1064(1). The court dismissed that counterclaim without leave to amend because Successful Match could not plead around the statutory bar.

Disposition

The motion to dismiss the amended counterclaims was granted in part. The tenth counterclaim’s descriptiveness challenge was dismissed without leave to amend. The court did not dismiss the fourth, fifth, seventh, or eleventh counterclaims based on descriptiveness, and the order did not resolve the genericness challenges. Judge James Donato issued the order on December 6, 2022.