Case 2:21-cv-00525-RSM Document 13 Filed 06/29/21 Page 1 of 19
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`The Honorable Ricardo S. Martinez
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`T-MOBILE US, INC.,
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`Plaintiff,
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`v.
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`SIMPLY WIRELESS, INC.,
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`Defendant.
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`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON
`AT SEATTLE
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` NO. 2:21-cv-00525-RSM
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`DEFENDANT SIMPLY WIRELESS,
`INC.’S MOTION TO DISMISS
`NOTE ON MOTION CALENDAR:
` July 23, 2021
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`ORAL ARGUMENT REQUESTED
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`I. INTRODUCTION
`Simply Wireless, Inc. (“Simply Wireless”) is a family-owned and family-built Virginia
`corporation engaged in the telecommunication business, at all relevant times primarily in the
`sale and distribution of mobile phones and accessories for all major telecommunication
`carriers. T-Mobile US, Inc. (“T-Mobile”) is a Delaware corporation based in Washington state
`that is also engaged in the telecommunication business and, in many ways, competes with
`Simply Wireless. T-Mobile is one of the three largest telecommunication carriers in the United
`States as well as one of the largest in the world.
`The parties were engaged in business together for a number of years, most substantially
`during 2003–2009 and 2012–2015. During that time, Simply Wireless regularly used its
`“Simply” trademarks (described below) in connection with its business, both with T-Mobile
`and otherwise, as T-Mobile is well aware.
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`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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` Williams, Kastner & Gibbs PLLC
`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`Case 2:21-cv-00525-RSM Document 13 Filed 06/29/21 Page 2 of 19
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`Simply Wireless is the owner of trademark registrations using the term “simply.” As a
`matter of law, Simply Wireless also owns various other “SIMPLY” trademarks due to prior
`use. Simply Wireless has used various trademarks with some form of “simply” since 1997 and
`historically, has been referred to by the telecommunication industry, including T-Mobile, as:
`“Simply”, “the Simply Team”, “the Simply Guys,” and other versions of “simply.” One such
`trademark is Simply Wireless’s SIMPLY PREPAID trademark, which Simply Wireless has
`used since 2002. As just one indication of its importance and connection to Simply Wireless,
`the SIMPLY PREPAID trademark was prominently displayed on the reception desk at the
`Simply Wireless headquarters in Tyson’s Corner, Virginia, where it was visible to all visitors
`to the Simply Wireless headquarters, including T-Mobile.
`Despite knowing of Simply Wireless’s prior use and rights in and to the Simply
`trademarks, T-Mobile filed multiple trademark applications in bad faith, seeking to steal
`ownership of the SIMPLY PREPAID mark from Simply Wireless. In response, Simply
`Wireless opposed the applications and filed a lawsuit against T-Mobile in the U.S. District
`Court for the Eastern District of Virginia in 2015 bearing Case Number 1:15-cv-1390.
`T-Mobile sought to compel arbitration of Simply Wireless’s claims under contracts unrelated
`to the parties’ dispute, but following a series of appeals up to the Supreme Court of the United
`States,1 an arbitrator ultimately determined that Simply Wireless’s claims were not subject to
`arbitration, and Simply Wireless re-filed its lawsuit in the Eastern District of Virginia, where it
`is currently pending under Case Number 1:21-cv-597.
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`1 Certiorari was not granted but the Court took up a substantively identical appeal at the same
`time and effectively consolidated the cases for appeal by entering a ruling that was dispositive
`of both appeals, determining that even the most frivolous of arbitrability claims had to be
`determined by an arbitrator if the contract provided that arbitrability determinations must be
`made by an arbitrator. Henry Schein, Inc. v. Archer & White Sales, Inc., 139 S. Ct. 524 (2019).
` Williams, Kastner & Gibbs PLLC
`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
`601 Union Street, Suite 4100
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`Seattle, WA 98101-2380
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`(206) 628-6600
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`Case 2:21-cv-00525-RSM Document 13 Filed 06/29/21 Page 3 of 19
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`Despite the ongoing litigation between the parties over a period of years, T-Mobile
`never raised the claims it now asserts in its Complaint here until the end of 2020 when it
`asserted them as counterclaims in the arbitration – by all appearances seemingly for the
`primary purpose of trying to bolster its arguments on arbitrability and to try to force Simply
`Wireless to participate in and incur costs in an arbitration proceeding, even if it could not keep
`Simply Wireless’s claims in that arbitration. After the arbitrator dismissed all of the claims and
`counterclaims for lack of arbitrability, T-Mobile then chose to file its arbitration counterclaims
`as a Complaint before this Court rather than bring them in the Eastern District of Virginia,
`again seemingly in an apparent attempt to delay, drive up costs, and exploit T-Mobile’s
`resource advantage over Simply Wireless.
`T-Mobile’s claims in this case are simply not meritorious. They are a litigation tactic
`intended to exert pressure on Simply Wireless. Moreover, they are also all time barred.
`Accordingly, for the reasons discussed below, T-Mobile’s claims should be dismissed.
`II. LEGAL STANDARD
`To survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6), a plaintiff must allege
`“enough facts to state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly,
`550 U.S. 544, 570 (2007). “A pleading that offers labels and conclusions or a formulaic
`recitation of the elements of a cause of action will not do. Nor does a complaint suffice if it
`tenders naked assertions devoid of further factual enhancement.” Ashcroft v. Iqbal, 556 U.S.
`662, 678 (internal citations omitted). A plaintiff must plead “factual content that allows the
`court to draw a reasonable inference that the defendant is liable for the misconduct alleged.”
`Iqbal, 556 U.S. at 678 (citing Twombly, 550 U.S. at 556). A complaint must show “more than
`a sheer possibility that a defendant has acted unlawfully.” Id. And “[w]here a complaint
`pleads facts that are ‘merely consistent with’ a defendant’s liability, it ‘stops short of the line
`between possibility and plausibility of entitlement to relief.’” Id. (quoting Twombly, 550 U.S.
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`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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` 7415775.1
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` Williams, Kastner & Gibbs PLLC
`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`Case 2:21-cv-00525-RSM Document 13 Filed 06/29/21 Page 4 of 19
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`at 557). Further, while the Court must accept the well pled factual allegations in the Complaint
`as true when ruling on a motion to dismiss, the Court “need not accept as true legal conclusions
`couched as factual allegations,” Wilson v. Craver, 994 F.3d 1085, 1090 (9th Cir. 2021) (citing
`Iqbal, 556 U.S. at 678–79), and need not accept “unwarranted inferences,” Rogers v. Cty. of
`Riverside, 139 F.3d 907 (9th Cir. 1998) (internal citations omitted).
`III. ARGUMENT
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`A.
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`As discussed in detail below:
`(A) T-Mobile’s claims are time barred because T-Mobile indisputably knew or
`should have known of its claims for at least five years before filing them;
`(B) T-Mobile has failed to state a claim under the Lanham Act;
`(C) T-Mobile has failed to state a claim under the Washington Consumer
`Protection Act (“WCPA”); and
`(D) if the Court dismisses T-Mobile’s Lanham Act claims, it must dismiss the
`WCPA claims due to lack of subject matter jurisdiction.
`T-Mobile’s Claims Are Time Barred.
`1.
`T-Mobile Has Been Indisputably Aware of Its Claims Since 2015 and Knew or
`Should Have Known of Them for Years Prior to That Date.
`The gravamen of T-Mobile’s claims is that one of its trademarks is present on Simply
`Wireless’s website, www.simplywireless.com, and that such presence constitutes trademark
`infringement under the Lanham Act as well as an “unfair or deceptive act or practice” under
`the WCPA. Compl. ¶¶ 26, 32, 43. Simply Wireless’s website, however, has displayed the T-
`Mobile mark on its front page for years, going back as far as 2004, if not further, and T-Mobile
`filed pleadings with the USPTO Trademark Trial and Appeal Board (“TTAB”) attaching
`images of the site and mark in 2015, showing it has been, at an absolute minimum, aware of
`the alleged infringement for over five years. These facts cannot be disputed.
`Attached to the declaration of Daniel A. Brown (“Brown Declaration”), filed herewith,
`as Exhibit 1 is an archived copy of what Simply Wireless’s website looked like on April 4,
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`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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` 7415775.1
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` Williams, Kastner & Gibbs PLLC
`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`Case 2:21-cv-00525-RSM Document 13 Filed 06/29/21 Page 5 of 19
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`2004, and the T-Mobile mark is present. Likewise, attached thereto as Exhibits 2 & 3 are
`archived copies of what Simply Wireless’s website looked like on August 31, 2015, and
`September 12, 2015, respectively. T-Mobile mark is present then as well. These archival
`copies are readily available on the internet at the web addresses stated at the bottom of each
`exhibit. Further, on April 14, 2015, T-Mobile filed an Answer and Counterclaims of Applicant
`with the TTAB (“TTAB Counterclaim”), to which T-Mobile attached, among other things,
`images of the Simply Wireless website displaying the T-Mobile mark. A copy of the complete
`TTAB Counterclaim is also attached to the Brown Declaration as Exhibit 4, and the referenced
`images of the Simply Wireless website are on page 5 of both Ex. E and Ex. F thereto.2
`The Court may take judicial notice of each of the foregoing exhibits. Exhibits 1, 2, and
`3 are archival copies of the Simply Wireless website that are stored on and available on the
`internet and can be readily verified in the same way that one can readily verify the current
`content of the Simply Wireless website by visiting it, and Exhibit 4 is a copy of a Court filing
`made by T-Mobile. As such, these exhibits “can be accurately and readily determined from
`sources whose accuracy cannot reasonably be questioned.” Fed. R. Evid. 201. And the Court
`“may take judicial notice of court filings and other matters of public record.” Reyn's Pasta
`Bella, LLC v. Visa USA, Inc., 442 F.3d 741, 746 (9th Cir. 2006).
`T-Mobile alleges in its Complaint that
` [a]s part of both the Dealer Agreements and the HSN Agreement, T-Mobile
`granted Simply Wireless a limited license to use the T-Mobile Marks. But any
`license to utilize the T-Mobile Marks has expired and Simply Wireless has no
`right or authority to utilize the T-Mobile Marks.
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`Compl. ¶¶ 27–28. T-Mobile also alleges that the last of those agreements, the HSN Agreement,
`expired on June 30, 2015. Compl. ¶ 20. If T-Mobile believed Simply Wireless was obligated to
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`2 The images filed by T-Mobile with the TTAB are of the website as it displays on mobile
`devices; the relevant content (the T-Mobile mark) is equally visible on the website when viewed
`from non-mobile devices.
`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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` Williams, Kastner & Gibbs PLLC
`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`Case 2:21-cv-00525-RSM Document 13 Filed 06/29/21 Page 6 of 19
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`remove the marks from its website when the last agreement expired, as it alleges, T-Mobile’s
`obligation of due diligence required it to confirm the mark was no longer being used when the
`agreements expired. See, e.g., Clare v. Saberhagen Holdings, Inc., 129 Wn. App. 599, 603, 123
`P.3d 465 (2005) (citing cases and stating “the discovery rule requires a plaintiff to use due
`diligence in discovering the basis for the cause of action,” and holding that the plaintiff’s
`failure to affirmatively investigate demonstrated lack of diligence); O'Connor v. Boeing N.
`Am., Inc., 311 F.3d 1139, 1147 (9th Cir. 2002) (stating the same rule “[u]nder . . . federal . . .
`law” that “a plaintiff who did not actually know of his claim will be barred if he should have
`known of it in the exercise of due diligence.”).
`In other words, at the absolute latest, T-Mobile knew or should have known of its
`purported claims on June 30, 2015. T-Mobile filed its Complaint in this case on April 19,
`2021—obviously more than five years later.3
`2.
`T-Mobile’s WCPA Claims Are Barred by the Statute of Limitations.
`Claims under the WCPA are subject to a four-year statute of limitation. RCW
`19.86.120 (“Any action to enforce a claim for damages under RCW 19.86.090 shall be forever
`barred unless commenced within four years after the cause of action accrues [subject to
`exceptions when the attorney general brings an action]”). And under Washington law, “[t]he
`plaintiff bears the burden of proving that the facts constituting the claim were not and could not
`have been discovered by due diligence within the applicable limitations period.” See, e.g.,
`Clare, 129 Wn. App. at 603.
`As discussed above, T-Mobile indisputably knew or should have known of its claims
`for more than five years before it filed suit. T-Mobile’s claims under the WCPA are, therefore,
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`3 T-Mobile asserted the same claims on November 24, 2020, in the arbitration proceeding
`described above that was dismissed because the claims were not arbitrable. It is not necessary to
`determine whether such filing tolled the statute of limitations or should be considered in the
`laches analysis because even that earlier date is more than five years after June 30, 2015.
` Williams, Kastner & Gibbs PLLC
`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
`601 Union Street, Suite 4100
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`Seattle, WA 98101-2380
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`barred by the statute of limitations.
`3.
`T-Mobile’s Claims for Damages Under the Lanham Act Are Barred by Laches.
`“The Lanham Act contains no explicit statute of limitations.” Jarrow Formulas, Inc. v.
`Nutrition Now, Inc., 304 F.3d 829, 836 (9th Cir. 2002) (citation omitted). Instead, Courts apply
`laches to claims under the Act:
`Laches is an equitable time limitation on a party's right to bring suit, resting on
`the maxim that one who seeks the help of a court of equity must not sleep on his
`rights. It is well established that laches is a valid defense to Lanham Act claims.
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`Id. at 835 (holding laches barred Lanham Act claim) (internal citations omitted). In
`determining whether the plaintiff’s delay in filing suit warrants the application of laches,
`Courts “‘borrow’ the limitations period from the most closely analogous action under state
`law.” Id. at 836. “[I]f the claim is filed after the analogous limitations period has expired, the
`presumption is that laches is a bar to suit.” Id. at 837 (citations omitted).
`While it appears the Ninth Circuit has not ruled on what Washington statute of
`limitations is most analogous to a Lanham Act claim, this Court ruled that the “[t]he analogous
`limitations period in Washington” for “Lanham Act claim[s]” “is three years, for trade name
`infringement” under “RCW 4.16.080(2).” Bikila v. Vibram USA Inc., 218 F. Supp. 3d 1206,
`1212-1213 (W.D. Wash. 2016) (finding that laches barred Lanham Act claim where plaintiff
`failed to file for five years). The Ninth Circuit found the three-year statutes of limitations for
`fraud was most analogous in a case in Arizona. Au-Tomotive Gold Inc. v. Volkswagen of Am.,
`Inc., 603 F.3d 1133, 1140 (9th Cir. 2010) (finding “Arizona's three-year statute of limitations
`for fraud” was most analogous). And the Washington statute of limitations for fraud is also
`three years. RCW 4.16.080(4).
`Regardless of which statute of limitations is most analogous, the relevant period of time
`is three years. And as discussed above, T-Mobile has been aware of the conduct of which it
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`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`complains for at least five years. Accordingly, T-Mobile’s delay was unreasonable, and there is
`a strong presumption that T-Mobile’s claim is barred by laches.4
`With this presumption in mind, laches should be applied if the defendant would suffer
`“prejudice as a result of the plaintiff's unreasonable delay in filing suit” if the case is permitted
`to go forward. Jarrow Formulas, 304 F.3d at 835.
`For example, in Jarrow Formulas, supra, the plaintiff brought claims under the
`Lanham Act alleging that a competitor’s product made false and misleading claims seven years
`after it alleged it discovered this. The Ninth Circuit found the plaintiff’s delay in pursuing its
`Lanham Act claims was prejudicial, and laches thus barred the claims, because while the
`plaintiff sat on its rights, the defendant spent time and money promoting the allegedly
`deceptive product, and those expenses could have been avoided if the claims had been filed in
`a timely manner. 304 F.3d at 840. In a directly on-point case that relies on Jarrow Formulas,
`the Fourth Circuit Court of Appeals explained that when a party is aware of activity it believes
`infringes on its trademark but delays in bringing suit, recovering money damages arising
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`4 In evaluating reasonableness, the Court may look to the factors enumerated in E–Systems, Inc.
`v. Monitek, Inc., 720 F.2d 604 (9th Cir.1983), but it does not appear to be required to do so.
`Notably, the Ninth Circuit did not consider them when it reviewed the district court’s application
`of laches in Jarrow Formulas, 304 F.3d 829. Moreover, the factors appear to be designed for a
`more typical infringement case (i.e., one in which the alleged infringer is branding its own goods
`or services with a mark that is identical or too similar to a mark owned by someone else) and are
`of limited use in this case. Those factors are: “(1) strength and value of the trademark rights
`asserted; (2) plaintiff's diligence in enforcing mark; (3) harm to senior user if relief is denied; (4)
`good faith ignorance by junior user; (5) competition between senior and junior users; and (6)
`extent of harm suffered by the junior user because of senior user's delay.” 720 F.2d at 607. (1)
`Simply Wireless does not dispute that T-Mobile’s mark has value, but the alleged conduct does
`not impact the value of the mark; (2) T-Mobile has clearly not been diligent; (3) there is no harm
`to T-Mobile, as discussed herein, and any perceived harm could be avoided with just injunctive
`relief; (4) Simply Wireless is advertising T-Mobile products with the mark and is not using the
`mark in bad faith; (5) there is competition between the parties, but Simply Wireless is using the
`mark to advertise T-Mobile’s own products; and (6) T-Mobile is seeking damages incurred
`during its delay in filing—if there are no damages, then T-Mobile has no claim, and if there are
`damages, they are the result of T-Mobile’s delay.
`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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` Williams, Kastner & Gibbs PLLC
`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`during the period of delay would be prejudicial. PBM Prod., LLC v. Mead Johnson & Co., 639
`F.3d 111 (4th Cir. 2011). In PBM Products, the counterclaimant became aware of allegedly
`infringing activity in 2006 but did not initiate a claim until 2009. Id. at 121–22. As a result, the
`Fourth Circuit held that the claim was barred by laches, explaining:
`Here, Mead Johnson's delay was unreasonable because Mead Johnson knew
`about the “compare to” claim since at least 2006 . . . . As the district court noted,
`the unreasonable delay prejudiced PBM because of PBM's continued use of the
`advertisement on all of its formulas in over a dozen retail stores for years.
`Indeed, by alleging that PBM has been unjustly enriched by over $27
`million as a result of the “compare to” ads, Mead Johnson must concede
`that permitting this suit to go forward would enable it to benefit from its
`own unreasonable delay.
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`PBM Prod., LLC v. Mead Johnson & Co., 639 F.3d 111, 121–22 (4th Cir. 2011) (emphasis
`added) (citing Jarrow Formulas, 304 F.3d at 837).
`The present case is no different from PBM Products. T-Mobile indisputably knew
`about the mark’s presence on Simply Wireless’s website in 2015. It cannot wait five years to
`file suit and claim money damages for the time it delayed in filing. Should the Court believe
`that any relief could be warranted (it is not), the only appropriate remedy should be prospective
`injunctive relief—i.e., the removal of the mark from the Simply Wireless website—to preclude
`any future alleged infringement. That conclusion was reached in both Jarrow Formulas and the
`Fourth Circuit case of Lyons Partnership, LP, on which the Jarrow Formulas Court relied.
`Jarrow Formulas, 304 F.3d at 840 (“laches is generally not a bar to prospective injunctive
`relief”) (citing Lyons P'ship, L.P. v. Morris Costumes, Inc., 243 F.3d 789, 799 (4th Cir. 2001)
`(noting that prospective injunctive relief is the appropriate remedy when laches bars claims for
`damages under the Lanham Act)).
`Accordingly, the Court should dismiss T-Mobile’s Lanham Act claims as barred by
`laches, and if the Court does not dismiss it in its entirety, the Court should only allow
`T-Mobile’s request for injunctive relief to proceed.
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`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`B.
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`T-Mobile Has Failed to State a Claim Under the Lanham Act.
`1.
`T-Mobile Has Failed to Allege a Violation of the Lanham Act.
`Simply Wireless is entitled to advertise that it sells products and services of T-Mobile,
`and using T-Mobile’s logo to convey to consumers that Simply Wireless sells such products is
`not a violation of the Lanham Act. On the contrary, it would be misleading if Simply Wireless
`sold T-Mobile products without using the T-Mobile logo to designate their source of origin.
`“A trade-mark only gives the right to prohibit the use of it so far as to protect the
`owner's good will against the sale of another's product as his. . . .” Prestonettes, Inc., v. Coty,
`264 U.S. 359, 368 (1924). A reseller “may resell the product under the original mark without
`incurring any trademark law liability.” NEC Elecs. v. CAL Cir. Abco, 810 F.2d 1506, 1508–09
`(9th Cir. 1987) (citing id.). “[T]rademark law is designed to prevent sellers from confusing or
`deceiving consumers about the origin or make of a product, which confusion ordinarily does
`not exist when a genuine article bearing a true mark is sold.” Id.
`The sole conduct complained of by T-Mobile is the portion of Simply Wireless’s
`website reproduced in paragraph 26 of the Complaint. The image reproduced there has the
`words “Simply Partners” at the top, followed by the corporate logos of twenty-six (26)
`companies: Alcatel, Amazon, Apple, B&H Photo Video, BoostMobile, Bluestem, eBay, Evine
`Live, Goupon, Home Shopping Network, HTC, Huawei, Kyocera, LG, Motorolla, Net10
`Wireless, Newegg, QVC, Samsung, Sharp, Sprint, T-Mobile, Tracfone, Virgin Mobile,
`Windows Phone, and ZTE.
`The obvious reason why these companies are identified in this way on Simply
`Wireless’s website, which is what any reasonable person would conclude from viewing it, is
`that Simply Wireless works with these entities in one capacity or another, such as by selling
`their goods and services. T-Mobile’s Complaint, however, asserts that the presence of its logo
`on the webpage is trademark infringement and constitutes a “false designation of origin, false
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`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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` 7415775.1
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` Williams, Kastner & Gibbs PLLC
`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`description[] and representation[], and false advertising” under the Lanham Act, Compl. ¶¶ 26,
`37, and it asserts claims under 15 U.S.C. § 1125(a)(1)(A) and (B) and 15 U.S.C. § 1114.
`Compl. ¶ 37.
`15 U.S.C. § 1114 prohibits trademark infringement. More specifically, it prohibits using
`a trademark in a way that is likely to confuse consumers about goods or services, such as by
`confusing consumers into believing that goods or services were made by the trademark’s
`owner when they were not:
`(1) Any person who shall, without the consent of the registrant--
`(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation
`of a registered mark in connection with the sale, offering for sale, distribution,
`or advertising of any goods or services on or in connection with which such use
`is likely to cause confusion, or to cause mistake, or to deceive; or
`
`(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and
`apply such reproduction, counterfeit, copy, or colorable imitation to labels,
`signs, prints, packages, wrappers, receptacles or advertisements intended to be
`used in commerce upon or in connection with the sale, offering for sale,
`distribution, or advertising of goods or services on or in connection with which
`such use is likely to cause confusion, or to cause mistake, or to deceive . . . .
`
`
`15 U.S.C. § 1114.
`Similarly, 15 U.S.C. § 1125(a)(1)(A) and (B) prohibit persons from misleading
`consumers about the origin or nature of products sold by those persons:
`(a) Civil action
`(1) Any person who, on or in connection with any goods or services, or any
`container for goods, uses in commerce any word, term, name, symbol, or
`device, or any combination thereof, or any false designation of origin, false or
`misleading description of fact, or false or misleading representation of fact,
`which--
`
`(A) is likely to cause confusion, or to cause mistake, or to deceive as to the
`affiliation, connection, or association of such person with another person, or as
`to the origin, sponsorship, or approval of his or her goods, services, or
`commercial activities by another person, or
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`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`(B) in commercial advertising or promotion, misrepresents the nature,
`characteristics, qualities, or geographic origin of his or her or another person's
`goods, services, or commercial activities,
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`shall be liable in a civil action by any person who believes that he or she is or is
`likely to be damaged by such act.
`15 U.S.C.A. § 1125.
`Both statutes require the claimant to establish prohibited conduct performed “in
`connection with . . . goods or services.” T-Mobile, however, has not identified any goods or
`services sold by Simply Wireless that could support a claim under either statute. T-Mobile’s
`Complaint only refers generally to “Simply Wireless’s . . . goods and/or services” and does not
`identify any good or service it believes to be misleading or otherwise fall afoul of the statutes.
`Compl. ¶ 30.
`If T-Mobile is complaining about Simply Wireless’s sales of T-Mobile products, then
`its Complaint fails to state a claim because the T-Mobile mark corresponds to those goods and
`services and accurately reflects their origin.5
`If T-Mobile is complaining about goods and services sold by Simply Wireless that are
`produced by other companies, such as Apple or Virgin Mobile, T-Mobile has failed to allege a
`factual basis upon which the Court could conclude that the webpage is likely to cause
`confusion. T-Mobile has not identified any good or service sold by Simply Wireless for which
`the inclusion of T-Mobile’s mark on Simply Wireless’s website, among 25 others, would
`confuse consumers about the nature or origin of the good or service. For example, T-Mobile
`has not alleged that Simply Wireless is selling Apple iPhones with the logos removed and
`attempting to pass them off as T-Mobile phones. Nor has T-Mobile alleged that Simply
`Wireless is selling cellular service from another carrier while attempting to pass it off as
`
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`5 T-Mobile acknowledges in its Complaint that Simply Wireless sold T-Mobile’s goods and
`services for years. Compl. ¶¶ 17–20. And the Complaint does not allege that Simply Wireless no
`longer sells T-Mobile goods and services. See Compl.
`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
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`601 Union Street, Suite 4100
`Seattle, WA 98101-2380
`(206) 628-6600
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`service through T-Mobile. In short, nothing in the Complaint supports T-Mobile’s position that
`any consumer is confused about who makes or provides the goods and services being
`purchased at a Simply Wireless stores.
`Further, no reasonable person could view the Simply Wireless website, which lists 26
`major corporations, some of which do not manufacture goods or provide services at all (such as
`Amazon, eBay, and Newegg, which are also resellers), and conclude that every good and
`service sold by Simply Wireless is produced by or supported after sale by all of those
`companies. T-Mobile’s Complaint would require the Court to accept the argument that, based
`on the image on Simply Wireless’s website, customers at Simply Wireless stores who buy, for
`example, an iPhone or Virgin Mobile telephone service, believe that T-Mobile is responsible
`for the product or service.
`None of the foregoing possibilities could support a claim under the Lanham Act. For
`example, in Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015), a
`manufacturer of watches sued Amazon because when consumers searched for the
`manufacturer’s watches on Amazon.com, the website returned watches made by other
`companies as the search results (Amazon did not carry this manufacturer’s watches). The
`district court granted summary judgment in favor of Amazon and the Ninth Circuit affirmed,
`noting that to prevail on its claim, the manufacturer had to “show that confusion is likely, not
`just possible” and finding that “no reasonably prudent consumer . . . would view Amazon's
`search results page and conclude that the products offered are [the manufacturer’s watches
`because each product was separately labeled]. It is possible that someone, somewhere might be
`confused by the search results page. But, unreasonable, imprudent and inexperienced
`[consumers] are not relevant.” Id. at 937 (internal citations omitted) (emphasis in original).6
`
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`6 As explained by the Multi Time Machine Court, “the ultimate test for determining likelihood
`of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be
`confused as to the origin of the goods.” 804 F.3d at 937. And although the Ninth Circuit has
` Williams, Kastner & Gibbs PLLC
`DEFENDANT SIMPLY WIRELESS, INC.’S MOTION TO DISMISS
`601 Union Street, Suite 4100
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`Like Multi Time Machine, no reasonably prudent consumer would read the statement on
`Simply Wireless’s website, purchase an iPhone or other non-T-Mobile product, and believe the
`product to have come from T-Mobile.
`Nor would any reasonably prudent co