Case 1:20-cv-02017-MEH Document 14 Filed 08/24/20 USDC Colorado Page 1 of 20
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLORADO
`
`Civil Action No. 1:20-cv-02017
`
`CARRICK-HARVEST, LLC d/b/a VERITAS FINE CANNABIS,
`a Colorado limited liability company,
`
`Plaintiff,
`
`v.
`
`VERITAS FARMS, INC., a Nevada corporation;
`271 LAKE DAVIS HOLDINGS, LLC d/b/a VERITAS FARMS,
`a Delaware limited liability company,
`
`Defendants.
`
`MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM UNDER FEDERAL
`RULE OF CIVIL PROCEDURE 12
`
`

`

`Case 1:20-cv-02017-MEH Document 14 Filed 08/24/20 USDC Colorado Page 2 of 20
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION............................................................................................................. 1
`
`BACKGROUND ............................................................................................................... 1
`
`THE APPLICABLE LAW ............................................................................................... 2
`
`ARGUMENT ..................................................................................................................... 3
`
`A.
`
`Plaintiff Has Failed To State A Claim For Trademark
`Infringement Under the Lanham Act (Count I). ............................................... 4
`
`1.
`
`2.
`
`3.
`
`Plaintiff Has Alleged Facts That Demonstrate No Common Law
`Trademarks Exist. ....................................................................................... 5
`
`Plaintiff Has Not Sufficiently Pled That The Defendant Has Used
`An Identical or Similar Mark In Commerce. .............................................. 8
`
`Plaintiff Has Not Sufficiently Pled That Defendant's Use Is Likely
`To Confuse Consumers. .............................................................................. 9
`
`B.
`
`Plaintiff Has Failed To State A Claim for Violation Of The
`Anti-Cybersquatting Consumer Protection Act Under 15
`U.S.C. § 1125(d) (Count III). .............................................................................. 12
`
`1.
`
`2.
`
`Plaintiff Has Not Pled Element 3 – That Its Alleged Unregistered
`Common Law Trademarks Were Distinctive At Lease As Early As
`March 16, 2018. ........................................................................................ 12
`
`Plaintiff Has Not Pled Element 4 – That Defendants Registered
`The Domain Name In Bad Faith. .............................................................. 13
`
`C.
`
`D.
`
`Plaintiffs Are Not Entitled To A Declaratory Judgment
`Because There Is No Justiciable Dispute Between The Parties
`(Count V). ............................................................................................................ 14
`
`Plaintiff Has Failed To State Claims For False Designation of
`Origin and Unfair Competition, and Common Law Unfair
`Competition (Counts II and IV). ....................................................................... 15
`
`V.
`
`CONCLUSION ............................................................................................................... 15
`
` i
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`

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`Case 1:20-cv-02017-MEH Document 14 Filed 08/24/20 USDC Colorado Page 3 of 20
`
`TABLE OF AUTHORITIES
`
`Cases
`
`1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013). ................................... 4, 9
`
`Aviva USA Corp. v. Vazirani, 902 F.Supp.2d 1246 (D. Ariz. 2012). ............................................. 6
`
`Bay State Savings Bank v. Baystate Financial Svcs., 484 F.Supp.2d 205 (D. Mass. 2007). .......... 7
`
`Cleary Bldg. Corp. v. Dame, 674 F.Supp.2d 1257 (D. Colo. 2009). .................................. 4, 12, 15
`
`Dalkita, Inc. v. Distilling Craft, LLC, 356 F.Supp.3d 1125 (D. Colo. 2018). ................................ 6
`
`Davis v. Avvo Inc., 345 F.Supp.3d 534 (S.D.N.Y. 2018). ........................................................ 6, 11
`
`Frost v. ADT, LLC, 947 F.3d 1261 (10th Cir. 2020). ..................................................................... 3
`
`In re Congoleum Corp., 222 USPQ 452, 1984 WL 63046 (TTAB May 29, 1984). ...................... 5
`
`In re Florists' Transworld Delivery, Inc., 119 USPQ2d 1056, 2016 WL 3997062 (TTAB May
`11, 2016). ................................................................................................................................. 5
`
`In re Moore Bus. Forms Inc., 24 USPQ2d 1638, 1992 WL 336795 (TTAB Sept. 11, 1992). ....... 5
`
`Mile, Inc. v. Michael Burg, No. D2010-2011, 2011 WL 1806564 (WIPO Feb. 7, 2011). .......... 14
`
`Moses-El v. Denver, 376 F.Supp.3d 1160 (D. Colo. 2019). ................................................... 2, 3, 9
`
`Radiance Foundation, Inc. v. NAACP, 786 F.3d 316 (4th Cir. 2015). ........................................... 7
`
`Rock Im Park Gmbh v. Rock Im Park Festival, No. D2012-0956, 2012 WL 3951593 (WIPO
`Aug. 28, 2012). ...................................................................................................................... 14
`
`Specht v. Google, Inc., 758 F.Supp.2d 570 (N.D. Ill. 2010). .......................................................... 6
`
`Federal Statutes
`
`15 U.S.C. § 1125(a). ....................................................................................................................... 6
`
`28 U.S.C. § 2201. .......................................................................................................................... 14
`
`Federal Rules
`
`Fed. R. Civ. P. 12(b)(6)......................................................................................................... 1, 3, 15
`
` ii
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`

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`Other Authorities
`
`5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION (5th ed.) ......... 12, 13, 14
`
`Trademark Manual of Examining Procedure, October 2018. ..................................................... 5, 8
`
` iii
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`

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`I.
`
`INTRODUCTION
`
`This is an intellectual property dispute based on Plaintiff's Carrick-Harvest, LLC d/b/a
`
`Veritas Fine Cannabis's (hereinafter "Plaintiff") alleged rights in two unregistered common law
`
`trademarks. Plaintiff has attempted to bring claims against Vertias Farms, Inc. and 271 Lake
`
`Davis Holdings d/b/a Veritas Farms (together "Defendants") for trademark infringement under
`
`the Lanham Act (Count I), false designation of origin and unfair competition under the Lanham
`
`Act (Count II), violation of the Anti-Cybersquatting Consumer Protection Act (Count III),
`
`common law unfair competition (Count IV), and a declaratory judgement of superior trademark
`
`rights (Count V). Dkt. No. 2, Complaint at ¶¶ 34-63 (hereinafter "Complaint"). However,
`
`Plaintiff has not pled sufficient facts for several elements of these claims. In addition, Plaintiff
`
`has pled itself out of court by including facts showing that the Plaintiff does not possess the
`
`claimed common law trademarks. Accordingly, under Fed. R. Civ. P. 12(b)(6), Plaintiff's
`
`Complaint should be dismissed in its entirety for failure to state a claim upon which relief can be
`
`granted.
`
`II.
`
`BACKGROUND
`
`Plaintiff is a recreational cannabis wholesaler with a principle place of business in
`
`Denver, Colorado that sells marijuana and marijuana-related products through dispensaries
`
`located in the State of Colorado.1 Defendants understand that Plaintiff's marijuana products are
`
`controlled substances under the Title 21 United States Code Controlled Substances Act. As
`
`such, Plaintiff's products are not sold or offered for sale outside the State of Colorado, are not
`
`used
`
`in
`
`interstate commerce, and are not available for sale on Plaintiff's website
`
`1 See www.veritascannabis.com.
`
` 1
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`

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`<veritascannabis.com>. The only products available for sale through Plaintiff's website are hats,
`
`t-shirts, sweatshirts, lighters, ash trays, stickers and other similar items. Complaint at ¶ 9.
`
`Defendants are related companies with principle places of business in Ft. Lauderdale,
`
`Florida doing business across the United States selling cannabidiol ("CBD") products in major
`
`retailers like CVS pharmacy and Kroger. Defendants' products are in accord with the 2018 Farm
`
`Bill and are legal throughout the United States. Defendants' products have been featured in a
`
`variety of well-known publications such as The New York Times, Consumer Reports, GQ, and
`
`Forbes. Defendants' products
`
`are
`
`available
`
`for
`
`sale
`
`through
`
`its website, e.g.
`
`<theveritaswellness.com>. Defendants sell CBD-related products and hand sanitizer, but do not
`
`sell hats, t-shirts, sweatshirts, lighters, ashtrays, stickers, or similar items.2
`
`According to the Complaint, Plaintiff claims to own two unregistered common law
`
`trademarks, the scope of which cover the entire United States. Plaintiff makes this claim even
`
`though Plaintiff only conducts business in the State of Colorado. Plaintiff alleges its common
`
`law trademarks are the "V Design Mark" and the "VERITAS" mark "for providing information
`
`about cannabis and cannabis products." Complaint at ¶¶ 9-11. Plaintiff claims Defendants'
`
`activities, both inside and outside of Colorado, infringe Plaintiff's rights in these two unregistered
`
`common law trademarks.
`
`III.
`
`THE APPLICABLE LAW
`
`Failure to state a claim upon which relief may be granted occurs where the complaint
`
`"fails to state a claim for relief that is 'plausible on its face.'" Moses-El v. Denver, 376 F.Supp.3d
`
`1160, 1170 (D. Colo. 2019) (citations omitted). When considering a motion pursuant to Fed. R.
`
`2 See www.thevertiaswellness.com.
`
` 2
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`

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`Civ. P. 12(b)(6), "the Court must accept all well-pleaded allegations in the [] Complaint as true
`
`and view those allegations in the light most favorable to the non-moving party." Id. Although
`
`the court must take all factual allegations as true, it "discards those averments in the Complaint
`
`that are merely legal conclusions or 'threadbare recitals of the elements of a cause of action,
`
`supported by mere conclusory statements.'" Id.
`
`In addition, Rule 12(b)(6) dismissal is appropriate if the Complaint includes facts that
`
`defeat Plaintiff's claims. Where the Complaint "admit[s] all the elements of [an] affirmative
`
`defense," and "'there is no disputed issue of fact raised by an affirmative defense, or the facts are
`
`completely disclosed on the face of the pleadings, and realistically nothing further can be
`
`developed by pretrial discovery or a trial on the issue raised by the defense' it is appropriate and
`
`expedient to dispose of a claim by a motion to dismiss under Rule 12(b)." Frost v. ADT, LLC,
`
`947 F.3d 1261, 1267 (10th Cir. 2020) (affirming dismissal of complaint under Rule 12(b)(6)
`
`based on contractual provision where complaint alleged facts that defeated claim based on the
`
`contractual provision).
`
`IV.
`
`ARGUMENT
`
`The Complaint fails to state a claim upon which relief may be granted as to all Counts.
`
`Thus, the Court should dismiss the entire Complaint under Fed. R. Civ. P. 12(b)(6). Taking all
`
`of the factual allegations as true, the Complaint fails to properly plead facts sufficient to state a
`
`cause of action for each of the Counts. Additionally, in some instances the Complaint pleads
`
`facts that, if taken as true, plead the Plaintiff out of court by demonstrating that the Plaintiff has
`
`no common law trademark rights in either of its alleged trademarks. Because the Complaint fails
`
` 3
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`to state a claim upon which relief may be granted for all Counts, the Court should dismiss the
`
`entire Complaint under Fed. R. Civ. P. 12(b)(6).
`
`In order to state a claim under the Lanham Act for trademark infringement, the Plaintiff
`
`must allege "(1) that the plaintiff has a protectable interest in the mark; (2) that the defendant has
`
`used 'an identical or similar mark' in commerce; and (3) that the defendant's use is likely to
`
`confuse consumers." 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1238 (10th Cir.
`
`2013) (citations omitted). Similar allegations must be made to state a claim for unfair
`
`competition under the Lanham Act and state law unfair competition. Cleary Bldg. Corp. v.
`
`Dame, 674 F.Supp.2d 1257, 1269-70 (D. Colo. 2009). In order to properly state a claim for
`
`Cybersquatting under 15 U.S.C. § 1125(d), the plaintiff must allege, inter alia, the mark acquired
`
`distinctiveness prior to registration of the domain name and a protectable interest in the alleged
`
`mark and bad faith intent to profit from the mark. Id. at 1263.
`
`A.
`
`Plaintiff Has Failed To State A Claim For Trademark Infringement Under
`the Lanham Act (Count I).
`
`Plaintiff has failed to state a claim under the Lanham Act for trademark infringement
`
`because Plaintiff has pled itself out of court. Plaintiff has alleged facts that, if taken as true,
`
`demonstrate that no common law trademarks exist. Applying Plaintiff's own allegations, the
`
`claimed common law trademark for "providing information about cannabis and cannabis
`
`products" is not eligible for trademark protection. Specifically, Plaintiff's own allegations
`
`demonstrate that the alleged trademark use is incidental to the sale of Plaintiff's goods, not used
`
`in interstate commerce, and used on a website that is mere advertising material. Plaintiff has also
`
`failed to sufficiently plead that the Defendants have used an identical or similar mark in
`
`commerce, and failed to sufficiently plead that Defendant's use is likely to confuse consumers.
`
` 4
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`1.
`
`Plaintiff Has Alleged Facts That Demonstrate No Common Law
`Trademarks Exist.
`
`Plaintiff claims to own common law Federal trademark rights in the "V Design Mark"
`
`and "VERITAS" marks for providing information about cannabis. Complaint at ¶ 35. The basis
`
`of Plaintiff's claim is its assertion that it has been "providing information about cannabis and
`
`cannabis products" through its website at <veritascannabis.com> since at least 2016. Id. at ¶ 9.
`
`a)
`
`The Provision of Information About Cannabis And Cannabis
`Products Through Plaintiff's Website Is Not A Service That Is
`Protectable As A Federal Common Law Trademark.
`
`It is well-settled law that, "[p]roviding general information or instructions as to the
`
`purpose and uses of applicant’s goods is merely incidental to the sale of goods, not a separate
`
`informational service," and thus not eligible for trademark protection. Trademark Manual of
`
`Examining Procedure, October 2018 § 1301.01(b)(v). See e.g., In re Florists' Transworld
`
`Delivery, Inc., 119 USPQ2d 1056, 2016 WL 3997062 at **5-6 (TTAB May 11, 2016) (providing
`
`general information or instructions as to the purpose and uses of applicant's goods is merely
`
`incidental to the sale of goods, not a separate informational service); In re Congoleum Corp., 222
`
`USPQ 452, 1984 WL 63046 at **3-4 (TTAB May 29, 1984) (holding that to be a registrable
`
`service, the activity must operate in a way that confers a benefit unrelated to the sale of the goods
`
`and the benefit must be one that is not normally expected of a manufacturer in that field); In re
`
`Moore Bus. Forms Inc., 24 USPQ2d 1638, 1992 WL 336795 at *2 (TTAB Sept. 11, 1992) (paper
`
`manufacturer that rates the recycled content and recyclability of its own products is merely
`
`providing information about its goods, not rendering a separate service to others).
`
`Here, in the Complaint, Plaintiff alleges nothing more than the provision of information
`
`about cannabis and cannabis products on its website. Complaint at ¶ 9. The website
`
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`<veritascannabis.com> provides general information about Plaintiff's products, their purpose,
`
`use, and selection. Plaintiff's provision of information is "incidental" to the sale of Plaintiff's
`
`products and therefore not eligible for trademark protection.
`
`b)
`
`Plaintiff's Provision Of Information About Cannabis And Cannabis
`Products Is Not A Use In Commerce.
`
`The Lanham Act requires that a mark be used "on or in connection with any goods or
`
`services" and be used in commerce. 15 U.S.C. § 1125(a). Here, Plaintiff's only alleged use,
`
`providing
`
`information
`
`about
`
`cannabis
`
`and
`
`cannabis products on
`
`the website
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`<veritascannabis.com> is not in connection with services in commerce. Complaint at ¶ 9.
`
`Courts have repeatedly found that mere provision of information on a website is not a use
`
`of the mark on goods or services in commerce. Dalkita, Inc. v. Distilling Craft, LLC, 356
`
`F.Supp.3d 1125, 1139 (D. Colo. 2018) quoting Specht v. Google, Inc., 758 F.Supp.2d 570, 593
`
`(N.D. Ill. 2010) ("Allowing a mark owner to preserve trademark rights by posting the mark on a
`
`functional yet almost purposeless website, at such nominal expense, is the type of token and
`
`residual use of a mark that the Lanham Act does not consider a bona fide use in commerce.");
`
`Aviva USA Corp. v. Vazirani, 902 F.Supp.2d 1246, 1259 (D. Ariz. 2012) (finding Defendant's
`
`maintenance of a website was not commercial use where it did not offer goods or services for
`
`sale on the website, contain links to other sites that offered goods or services for sale, and
`
`Defendants never attempted to sell the website or domain name); Davis v. Avvo Inc., 345
`
`F.Supp.3d 534, 540 (S.D.N.Y. 2018) (provision of online informational directory of attorneys
`
`was not commercial).
`
`The Complaint does not allege, and Defendants have found no evidence supporting an
`
`allegation that, the information provided by Plaintiff are provided in return for a fee or other
`
` 6
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`consideration from the user. See Complaint at ¶ 9. Indeed, there is no assertion that Plaintiff
`
`makes any money or derives any commercial goodwill from the mere provision of informational
`
`services on its website. Radiance Foundation, Inc. v. NAACP, 786 F.3d 316, 326 (4th Cir. 2015)
`
`(The mere provision of "informational services" without any commercial or transactional
`
`component is not use of an alleged mark on a good or service in commerce). Where, as here, an
`
`alleged mark is used to only provide "informational services" without a commercial component,
`
`the alleged mark is not protectable under the Lanham Act.
`
`Additionally, Plaintiff is not entitled to use the "natural zone of expansion" doctrine to
`
`allege a protectable interest in the alleged trademark. The Complaint, by its plain terms, alleges
`
`that the CBD products sold by Defendants are federally illegal and therefore not eligible to fulfill
`
`the use requirement of the Lanham Act. Complaint at ¶ 27. Thus, Plaintiffs may also not rely
`
`upon an intended expansion into the sale of CBD products in their Complaint to support a claim
`
`of trademark infringement—a legally prohibited expansion (which is what the Complaint alleges
`
`here) negates the application of the natural zone of expansion doctrine. Bay State Savings Bank
`
`v. Baystate Financial Svcs., 484 F.Supp.2d 205, 217 (D. Mass. 2007) (finding natural expansion
`
`doctrine did not apply because plaintiff was legally prohibited from entering claimed zone of
`
`expansion).
`
`c)
`
`Plaintiff's Webpage Is Advertising And Cannot Establish Common
`Law Trademark Rights.
`
`For a webpage to serve as an acceptable use in commerce, there must be a method of
`
`ordering goods from the website.
`
`[A] web page that merely provides information about the goods, but does not
`provide a means of ordering them, is viewed as promotional material, which is not
`acceptable to show trademark use on goods. … Merely providing a link to the
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`websites of online distributors is not sufficient. There must be a means of
`ordering the goods directly from the applicant’s web page, such as a telephone
`number for placing orders or an online ordering process.
`
`Trademark Manual of Examining Procedure, October 2018 § 904.03(i) (citations omitted). Here,
`
`the Complaint says nothing about selling cannabis, cannabis products, or information about
`
`cannabis and cannabis products on the alleged website <veritascannabis.com>. A review of that
`
`website confirms that there is no means to order cannabis or cannabis products directly from the
`
`website, and no means to order "information about cannabis and cannabis products" from the
`
`website. The website <veritascannabis.com> is thus promotional material, which is not
`
`acceptable to show trademark use.
`
`In the Complaint, the Plaintiff states that it sells "hats, t-shirts, sweatshirts, lighters, ash
`
`trays, stickers, and other similar items" on its website. Complaint at ¶ 9. However, the Plaintiff
`
`does not claim trademark rights for these items and any such discussion is a red herring. The
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`Complaint does not, and cannot, allege that Defendants infringe Plaintiff's alleged mark by
`
`selling t-shirts, lighters, etc. because Defendants do not sell those items. Complaint at ¶ 16. The
`
`only good or service that the Complaint alleges is relevant to this lawsuit is the provision of
`
`"information services"—a service that is not used in commerce as required by the Lanham Act.
`
`Thus, because all of the counts require Plaintiff to have a valid and enforceable interest in the
`
`alleged mark but the Complaint does not properly make such an allegation, the Complaint fails to
`
`state a claim and the Court should dismiss the Complaint as to all of the counts.
`
`2.
`
`Plaintiff Has Not Sufficiently Pled That The Defendant Has Used An
`Identical or Similar Mark In Commerce.
`
`Plaintiff claims to own two common law trademarks, namely the "V Design Mark" and
`
`"VERITAS" mark for providing informational services about cannabis and cannabis products.
`
` 8
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`Complaint at ¶¶ 9-11. Plaintiff identifies three domain names as "Infringing Domains" in the
`
`Complaint, but fails to allege any facts as to how those alleged "Infringing Domains" provide
`
`informational services about cannabis and cannabis products. Complaint at ¶ 19. The Complaint
`
`also identifies alleged "Infringing Marks." Id. at ¶ 20. However, the Complaint fails to allege
`
`any facts as to how those alleged "Infringing Marks" provide informational services about
`
`cannabis and cannabis products. Id.
`
`3.
`
`Plaintiff Has Not Sufficiently Pled That Defendant's Use Is Likely To
`Confuse Consumers.
`
`The 10th Circuit has provided a list of non-exhaustive factors for determining whether a
`
`likelihood of confusion exists: (1) similarity of the marks, (2) intent of the alleged infringer, (3)
`
`evidence of actual confusion, (4) similarity of the competing parties' services and manner of
`
`marketing, (5) degree of customer care, and (6) strength of the marks. 1-800 Contacts, 722 F.3d
`
`at 1239. Plaintiff has failed to properly allege any of the factors discussed above exist here,
`
`instead ignoring the factors or relying on conclusory statements the Court need not accept as
`
`true. Moses-El, 376 F.Supp.3d at 1170 (the courts "discard[] those averments in the Complaint
`
`that are merely legal conclusions or 'threadbare recitals of the elements of a cause of action,
`
`supported by mere conclusory statements'" when considering a Rule 12(b)(6) motion). Thus, the
`
`Court should dismiss Count I for the additional reason that the Complaint fails to properly plead
`
`likelihood of confusion.
`
` First, as discussed above, taking all allegations in the Complaint as true, Plaintiff has
`
`failed to properly plead it has a protectable interest in the alleged trademark. Thus, the
`
`Complaint fails to sufficiently plead the first factor, "similarity of the marks."
`
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`Next, the Complaint is utterly devoid of any facts alleging that Defendants chose to use
`
`Plaintiff's alleged mark to create confusion in consumer's minds regarding the source of
`
`Defendants' "information services" as required by the second factor, "intent of the alleged
`
`infringer." Indeed, Defendants would have no reason to do so, given that Defendants are a larger
`
`and more well-known company that operates nationally while Plaintiff is restricted to selling its
`
`cannabis products only in the state of Colorado. Thus, the Complaint fails to allege factor two.
`
`With respect to the third factor, "evidence of actual confusion," the Complaint provides
`
`nothing more than an unsupported assertion that "consumers on social media websites and other
`
`information service channels have mistakenly tagged Plaintiff as Defendants . . . ." Complaint at
`
`¶ 23. This allegation is notable in its lack of specificity and fails to allege actual confusion by
`
`actual customers of Plaintiff's alleged informational services. At best, it says that some people
`
`who may or may not have gone to either party's website and who may or may not be aware of
`
`these websites used a social media hashtag improperly. The Complaint does not allege that these
`
`people are customers of informational services (indeed, it cannot because the parties do not sell
`
`informational services). Thus, even taking the allegation as true, the Complaint does not
`
`properly allege actual confusion.
`
`With respect to the fourth factor, "similarity of the competing parties' services and
`
`manner of marketing," the Complaint also fails to properly plead that it serves the same
`
`customers as Defendants in the same markets. In fact, it fails to define its "customers" and
`
`"markets" for informational services regarding cannabis at all, let alone whether those customers
`
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`and markets are similar. It also fails to address what, if any, marketing the parties conduct for
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`their alleged "informational services."3 Thus, the Complaint fails to allege factor four.
`
`Similarly, with respect to factor five, "degree of customer care," the Complaint utterly
`
`fails to address the level of care exercised by "customers" when choosing informational services
`
`regarding cannabis.
`
`And, the Complaint fails to address or weigh the relative strengths of the alleged marks of
`
`the parties in the field of informational services as required by factor six, "strength of the marks."
`
`In sum, the Complaint fails to properly allege any facts that state a claim that there is a
`
`likelihood of confusion between the Plaintiff and Defendants' alleged marks.
`
`Finally, the Court must also dismiss the Complaint for failure to state a claim because it
`
`provides no factual allegations or basis for its bald statement of Plaintiff's subjective believe they
`
`have or will be harmed by Defendants' alleged infringement. In order to state a claim under the
`
`Lanham Act, a plaintiff must offer more than just a "mere subjective belief that he is injured or
`
`likely to be damaged." Davis, 345 F.Supp.3d at 543. Here, the Complaint alleges only an
`
`unsupported subjective belief that Plaintiffs have been or will be harmed. Complaint at ¶¶ 56,
`
`60. Because the Complaint fails to allege more than a subjective belief Plaintiff will be harmed
`
`by Defendants' alleged trademark infringement, it fails to state a claim upon which relief may be
`
`granted.
`
`3 Of course, the parties do not market their "informational services," because they do not offer
`those services in commerce as required by the Lanham Act.
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`Case 1:20-cv-02017-MEH Document 14 Filed 08/24/20 USDC Colorado Page 16 of 20
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`B.
`
`Plaintiff Has Failed To State A Claim for Violation Of The Anti-
`Cybersquatting Consumer Protection Act Under 15 U.S.C. § 1125(d) (Count
`III).
`
`Plaintiff has attempted to bring a claim for violation of the Anti-Cybersquatting
`
`Consumer Protection Act based on Defendant’s alleged registration of the internet domain names
`
`<theveritasfarms.com>, <theveritaswellness.com>, and <myveritasfarms.com>. Complaint at ¶¶
`
`47-52. To sufficiently plead this claim, Plaintiff must allege facts establishing each of the
`
`following elements:
`
`(1) The defendant has registered, trafficked in or used a domain name;
`(2) Which is identical or confusingly similar to a mark owned by the plaintiff;
`(3) The mark was distinctive at the time of the defendant’s registration of the
`domain name;
`(4) The defendant has committed the acts with a bad faith intent to profit from the
`plaintiff’s mark.
`
`5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25A:50 (5th ed.); see
`
`also Cleary Bldg., 674 F.Supp.2d at 1263. Because, as discussed above, Plaintiff does not have a
`
`protectable interest in the alleged trademarks, Plaintiff has failed to properly allege at least
`
`element two, which requires a mark be owned by the Plaintiff. Plaintiff’s Cybersquatting claim
`
`should also be dismissed for failure to adequately plead elements three and four.
`
`1.
`
`Plaintiff Has Not Pled Element 3 – That Its Alleged Unregistered
`Common Law Trademarks Were Distinctive At Lease As Early As
`March 16, 2018.
`
`Plaintiff has failed to state a claim for cybersquatting because the Complaint does not
`
`include facts to support element three—that Plaintiff’s common law trademarks were each
`
`distinctive at the time of the alleged domain name registration in March 2018. Complaint at ¶¶
`
`47-52. The Complaint says nothing about when the alleged trademarks supposedly acquired
`
`distinctiveness to become a common law trademark for providing information about cannabis
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`Case 1:20-cv-02017-MEH Document 14 Filed 08/24/20 USDC Colorado Page 17 of 20
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`and cannabis products. “A domain name which is not in conflict with another’s mark at the time
`
`of initial domain name registration does not later become in violation of the [Cybersquatting Act]
`
`because at a later date another person achieves trademark significance in the name.” 5
`
`MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 25A:50. Thus, Plaintiff's failure to
`
`identify the date upon which its alleged trademarks became distinctive doom its cybersquatting
`
`claim.
`
`2.
`
`Plaintiff Has Not Pled Element 4 – That Defendants Registered The
`Domain Name In Bad Faith.
`
`Plaintiff also has plead itself out of court as to element four of its cybersquatting claim.
`
`Plaintiff alleges bad faith intent on the part of Defendants' when registering the alleged
`
`Infringing Domains. Notably, however, this is merely a bald legal assertion with no factual
`
`basis. Plaintiff provides no evidence or even a hint of specificity regarding this alleged bad
`
`faith—it simply makes the legal assertion. Complaint at ¶ 50. The Court should not accept this
`
`legal conclusion as true in the absence of any factual allegations or support.
`
`Moreover, based on the allegations in the Complaint, Defendant could not have had any
`
`knowledge of Plaintiff’s alleged trademark rights in March 2018, let alone a bad faith intent, as
`
`there are no allegations that the alleged trademark rights existed in March 2018. The illogic of
`
`Plaintiff’s position is discussed in the seminal treatise on trademark law:
`
`The WIPO4 Overview of Panel Views notes that usually, when a domain name is
`registered before a trademark right is acquired (either by common law or by
`registration), the registration of the domain name could not have been in “bad
`faith” because the registrant could not have known of the complainant’s rights
`which have not yet been created. As one panel remarked: “Because the
`
`4 “WIPO” is an abbreviation for the World Intellectual Property Organization, an agency of the
`United Nations, with 191 member states, that is global forum for intellectual property services,
`policy, information, and cooperation. See https://www.wipo.int/about-wipo/en/.
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`the
`the disputed domain name predates
`registration of
`Respondent’s
`Complainant’s mark, the Panel unanimously finds that the Respondent could not
`had registered the disputed domain name in bad faith.”
`
`5 MCCARTHY ON TRADEMAR