Case 2:21-cv-00525-RSM Document 22 Filed 08/02/21 Page 1 of 19
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`The Honorable Ricardo S. Martinez
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF WASHINGTON (SEATTLE)
`
`T-MOBILE US, INC.,
`
`Case No. 2:21-cv-00525
`
`Plaintiff,
`
`PLAINTIFF’S RESPONSE TO SIMPLY
`WIRELESS’S MOTION TO DISMISS
`
`v.
`
`SIMPLY WIRELESS, INC.,
`
`Defendant.
`
`Simply Wireless, Inc.’s (“Simply Wireless”) Motion should be denied. The Motion fails
`to meet the high standard required for dismissal under Fed. R. Civ. P. 12(b)(6). As the Court is
`well aware, Rule 12 requires the Court to consider only the allegations in the Complaint. Here,
`there is nothing in the Complaint justifying dismissal as a matter of law under Rule 12.
`No doubt recognizing this, Simply Wireless turns to unauthenticated and inadmissible
`third-party internet printouts in a flawed attempt to make a statute of limitations argument. Not
`only is this an affront to the Rule 12 standard, but it also fails to demonstrate as a matter of law
`that T-Mobile’s claims are time barred.
`Further, T-Mobile US, Inc.’s (“T-Mobile”) Complaint sufficiently alleges a cause of action
`under the Lanham Act and Washington Consumer Protection Act. Simply Wireless admits to
`utilizing the T-Mobile logo and trade name to sell T-Mobile products and services as alleged in
`the Complaint. Again, the Motion misses the mark.
`
`PLAINTIFF’S RESPONSE TO SIMPLY
`WIRELESS’S MOTION TO DISMISS - 1
`CASE NO. 2:21-CV-00525
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`At the very least, each of the arguments Simply Wireless raises require a more fully
`developed factual record for determination and cannot be determined based on the Complaint. The
`Court should deny Simply Wireless’s Motion.
`
`I.
`
`INTRODUCTION
`This action stems from Simply Wireless’s deliberate and wrongful use of the registered
`T-Mobile trademark, and Simply Wireless holding itself out as a T-Mobile partner on its website.
`Although Simply Wireless seeks dismissal as a matter of law, it admits to utilizing the T-Mobile
`mark and representing itself as a T-Mobile partner in selling T-Mobile products and services
`without authorization. Having no other basis for dismissal, Simply Wireless argues that
`T-Mobile’s Complaint should be dismissed as time barred and for failing to sufficiently state a
`claim for relief. But Simply Wireless’s Motion to Dismiss falls far short of the high bar necessary
`for dismissal under Fed. R. Civ. P. 12(b)(6).
`First, Simply Wireless’s statute of limitation arguments fail. It provides no legal authority
`that a claim under the Lanham Act is time barred, and improperly relies on materials outside the
`Complaint to make its argument. But even considering these materials, Simply Wireless still has
`not proven as a matter of law that T-Mobile’s claims under the Lanham Act and Washington
`Consumer Protection Act (“CPA”) are time-barred as a matter of law, and dismissal under Rule
`12 would be inappropriate.
`Second, Simply Wireless boldly asks the Court to find, by clear and convincing evidence,
`that T-Mobile’s claims are precluded by the doctrine of laches. But laches is a factual defense and
`nothing in the Complaint shows by clear and convincing evidence that the doctrine of laches
`applies to bar T-Mobile’s claim at the pleadings stage.
`Third, T-Mobile has sufficiently pled a cause of action under the Lanham Act and CPA.
`T-Mobile has alleged that Simply Wireless is using T-Mobile’s registered trademark and trade
`name to sell goods and services without T-Mobile’s permission, and that it is also holding itself
`out as a T-Mobile partner to sell goods and services when it is not authorized to do so. These
`
`PLAINTIFF’S RESPONSE TO SIMPLY
`WIRELESS’ MOTION TO DISMISS - 2
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`allegations, when taken as true, are textbook allegations supporting Lanham Act and CPA claims.
`This is especially true given that Simply Wireless admits that it is utilizing T-Mobile’s marks, and
`holding itself out as a T-Mobile partner in order to sell T-Mobile goods and services. T-Mobile
`has clearly stated a claim for relief in its Complaint.
`In summary, Simply Wireless’s arguments to dismiss T-Mobile’s claims ask the Court to
`engage in highly factual analyses not suited for the pleadings phase of any case. T-Mobile’s
`Complaint more than sufficiently alleges causes of action against Simply Wireless under the
`Lanham Act and CPA. Accordingly, the Court should deny Simply Wireless’s Motion to Dismiss.
`II.
`LEGAL STANDARDS
`In considering a Rule 12(b)(6) motion to dismiss, a Court must determine whether the
`plaintiff has alleged sufficient facts to state a claim for relief which is “plausible on its face.”
`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S.
`544, 570 (2007)). A claim is facially plausible if the plaintiff has pled “factual content that allows
`the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”
`Id. (citing Twombly, 550 U.S. at 556). In ruling on a Rule 12(b)(6) motion, courts accept as true
`all of the factual allegations set out in a plaintiff’s complaint, draw inferences from those
`allegations in the light most favorable to plaintiff, and construe the complaint liberally. Barker v.
`Riverside County Office of Educ., 584 F.3d 821, 824 (9th Cir. 2009) (internal citations omitted).
`III.
`ARGUMENT
`A.
`T-Mobile’s Lanham Act Claims Are Not Time Barred.
`In arguing that T-Mobile’s claims are time barred, Simply Wireless contends that T-Mobile
`has known of its infringement claim for at least five years. Even accepting that as true—which
`T-Mobile disputes below—Simply Wireless provides no legal argument or support as to why the
`claim would be time barred. In fact, Simply Wireless acknowledges in its motion that there is no
`“explicit statute of limitations” for Lanham Act claims, and that courts instead apply the doctrine
`of laches to claims under the Lanham Act. Dkt. 13 at 7. But while Simply Wireless argues for the
`application of laches (which is addressed below), it does not provide any legal support for why
`PLAINTIFF’S RESPONSE TO SIMPLY
`WIRELESS’ MOTION TO DISMISS - 3
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`T-Mobile’s claims should be dismissed, even if T-Mobile knew or should have known of the
`infringement for at least five years (which is disputed). Accordingly, Simply Wireless’s Motion
`should be denied.
`Simply Wireless Cites No Legal Support for its “Time Bar” Arguments.
`1.
`A motion to dismiss based on the statute of limitations “can be granted only if the assertions
`of the complaint, read with the required liberality, would not permit the plaintiff to prove that the
`statute was tolled.” Jablon v. Dean Witter & Co., 614 F.2d 677, 682 (9th Cir. 1980), quoting
`Harrell v. 20th Century Ins. Co., 934 F.2d 203, 206 (9th Cir. 1991). That is not the case here.
`There is nothing in T-Mobile’s Complaint that in any way establishes that T-Mobile’s
`claims are time barred, such that dismissal is appropriate as a matter of law. This is because none
`of the allegations in the Complaint could plausibly be interpreted to indicate when T-Mobile first
`became aware, or otherwise should have been aware, of Simply Wireless’s improper use of the
`T-Mobile Marks—i.e., when T-Mobile’s claim accrued. See generally Dkt. 1. Nor does the
`Complaint allege information that could reasonably be interpreted to establish the requisite tolling
`period for any purported statute of limitations. Id. On this basis alone, Simply Wireless time bar
`arguments fail under a Rule 12 inquiry.
`Apparently recognizing this, Simply Wireless argues (without any legal support) that
`T-Mobile’s Lanham Act claims are time barred based on the purported length of time that Simply
`Wireless’ website has infringed upon T-Mobile’s marks. In doing so, it attaches screen shots from
`a website labeled the “Way Back Machine” to allegedly show the content of Simply Wireless’s
`website as it allegedly existed in 2014 and 2015. Dkt. 14, Exhibits 1–3.
`But this is not the law. Rights under the Lanham Act do not automatically expire after the
`infringer has “gotten away with” its infringement for long enough, nor does Simply Wireless cite
`any law standing for this proposition.
`2.
`The Materials That Simply Wireless Relies on Are Inadmissible and
`Improper.
`Setting aside that Simply Wireless has no valid legal position as to why the claims are time
`
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`WIRELESS’ MOTION TO DISMISS - 4
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`barred, its Motion should also be denied because it relies exclusively on evidence from the
`“Wayback Machine,” which is wholly improper and insufficient for dismissal under Fed. R. Civ.
`P. 12(b)(6).
`It is well-settled law that the Court must analyze a Rule 12 motion based solely on the
`allegations set forth in the Complaint. Lee v. City of Los Angeles, 250 F.3d 668, 688 (9th Cir.
`2001) (“As a general rule, ‘a district court may not consider any material beyond the pleadings in
`ruling on a Rule 12(b)(6) motion.’”). A court may only consider matters outside the Complaint
`without turning the motion into a motion for summary judgment if (1) the materials attached to the
`motion to dismiss were referenced in the complaint; or (2) by taking judicial notice of matters
`pursuant to Fed. R. Evid. 201. Id.
`Under this standard, Simply Wireless’s exhibits are inadmissible for consideration under
`Rule 12. Simply Wireless attaches a declaration to its motion where its counsel declares under the
`penalty of perjury that Exhibits 1-3 attached to the declaration “are a true and correct copy of an
`archived copy of what Simply Wireless’s website looked like” on April 4, 2004, August 31, 2015,
`and September 12, 2015. Dkt. 14, ¶¶ 2–4. But these exhibits were not referenced in T-Mobile’s
`complaint. As such, they may only be admissible for Rule 12 consideration if they are properly
`the subject of judicial notice.
`Simply Wireless argues—again without legal support—that the Court may take judicial
`notice of the websites because “they are stored and readily available on the Internet.” Dkt. 13 at
`5. In other words, Simply Wireless asks the Court to accept that because something is on the
`Internet, it must be true. This is not the law. Without proper foundation, courts are hesitant to
`take judicial notice of website materials generally, and especially when there are factual disputes
`as to the content of the website. Gerritsen v. Warner Bros. Ent. Inc., 112 F. Supp. 3d 1011, 1028
`(C.D. Cal. 2015) (“As a general matter, courts are hesitant to take notice of information found on
`third party websites and routinely deny requests for judicial notice, particularly when the
`credibility of the site's source information is called into question by another party.”); Lee, 250 F.3d
`at 689 (”[A] court may not take judicial notice of a fact that is ‘subject to reasonable dispute.’”);
`PLAINTIFF’S RESPONSE TO SIMPLY
`WIRELESS’ MOTION TO DISMISS - 5
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`Fed. R. Evid. 201(b) (stating that judicial notice may only be made from sources “whose accuracy
`cannot be reasonably be questioned.”).
`
`The credibility of the Exhibits at issue here is certainly subject to reasonable dispute. For
`instance, these Exhibits are not business records. They are, instead, screenshots from a third-party
`website purportedly representing “a copy of an archived copy.” Dkt. 14, ¶¶ 2-4. The declaration
`submitted by counsel contains no facts as to the “Wayback” website, how it gathers or stores data,
`or why this copy of a copy purportedly represents the condition of the Simply Wireless website in
`2014 or 2015. Nor is there any evidence that the declarant—Simply Wireless’s attorney—has
`personal knowledge of Simply Wireless’s website from 2004 and 2015. Such conclusory
`affidavits cannot justify dismissal, even if they could be considered under Rule 12. Doninger v.
`Pac. Nw. Bell, Inc., 564 F.2d 1304, 1309 (9th Cir. 1977) (holding that conclusory affidavits lacking
`factual information submitted by trial counsel were insufficient to support class certification). And
`at a minimum, T-Mobile is entitled to discovery as to the basis of the factual allegations contained
`in the affidavit. Additionally, the declaration contains no facts or basis to show how the screenshot
`printouts from a third-party website would otherwise overcome the hearsay rule and be
`admissible.1 There is simply no authentication or foundation for the exhibits to support Simply
`Wireless’s position.
`Even if the Court were to consider Simply Wireless’s exhibits in the context of the pending
`motion, it may not do so without treating the motion as a motion for summary judgment pursuant
`to Rule 12(d). See Fed. R. Civ. P. 12(d) (“If, on a motion under Rule 12(b)(6) . . . matters outside
`the pleadings are presented to and not excluded by the court, the motion must be treated as one for
`summary judgment under Rule 56.”). Yet to decide the motion as one for summary judgment at
`this nascent, pre-discovery stage in the proceedings would be premature and improper. As such,
`the court should deny the Motion entirely.
`
`1 It is curious why Simply Wireless does not possess archived copies of its own website as the content of its website
`was clearly placed in issue by the Trademark Trial and Appeal Board (“TTAB”) counterclaim filed by T-Mobile in
`April 2015. If it has followed proper preservation requirements, Simply Wireless should have preserved and
`maintained copies of its website from that time.
`PLAINTIFF’S RESPONSE TO SIMPLY
`WIRELESS’ MOTION TO DISMISS - 6
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`3.
`
`Even Simply Wireless’s “Screenshot” Evidence Does Not Establish
`That T-Mobile Knew or Should Have Known of Its Claim.
`
`As noted above, nothing in the Complaint bars T-Mobile’s claim as a matter of law and
`that fact itself is sufficient to deny Simply Wireless’s Motion. See Jablon, 614 F.2d at 682. But
`even taking Simply Wireless’s evidence at face value, it still does not prove (as Simply Wireless
`contends) that T-Mobile “has been indisputably aware of its claims since 2015,” when T-Mobile
`filed pleadings at the TTAB attaching images of Simply Wireless’s website. Dkt. 13 at 4.
`Simply Wireless misrepresents the TTAB record. T-Mobile’s TTAB pleadings from 2015
`contended that Simply Wireless was not a going concern at that time. Dkt. 14, Exhibit 4 at p. 3, ¶
`3 of T-Mobile’s Counterclaim Cancellation Request (“Opposer has abandoned the Simply
`Wireless trademark”); ¶ 12 (“the <simplywireless.com> website has not been in commercial use
`for a number of years.”). In support, T-Mobile attached a screenshot of Simply Wireless’s website
`as it stood in April 2015—at that time, the website was merely a landing page indicating the site
`had been under development since 2009, which displayed a series of business logos that did not
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`include T-Mobile’s logo:
`
`Dkt. 14, Exhibit 4 at Exhibit G (p. 42 of 46).
`In sum, the TTAB record shows that as of April 2015, T-Mobile believed Simply Wireless
`had abandoned its website at least by April 2015 and had not been displaying T-Mobile’s logo on
`website at that time. At a minimum, this raises a factual dispute that defeats Rule 12 disposition
`as to what T-Mobile knew or should have known about its instant claim2 in 2015.
`The remaining exhibits Simply Wireless cites in support of this premise only show Simply
`Wireless’s history of website modification. For instance, Simply Wireless cites to other entries
`from the TTAB record showing screenshots of the Simply Wireless website showing the T-Mobile
`logo—but these were taken before April 2015, and presumably, before 2009. See Dkt. 14, Exhibit
`4 at Exhibit E and F. Simply Wireless also submits new screenshots it recently captured via the
`Wayback Machine, showing that the T-Mobile logo was back on the website in August and
`September of 2015. See Dkt. 14, p. 1, ¶¶ 2–4. But this only shows that Simply Wireless repeatedly
`modified its website, not that T-Mobile was aware of those changes. Discovery is needed to
`determine the actual content of the website from 2009 until the present day, and when (if at all) T-
`Mobile knew of any modifications.
`
`Notably, Simply Wireless does not argue that T-Mobile had actual knowledge of Simply
`Wireless’s infringement as of September 2015. Instead, it argues that T-Mobile failed to utilize
`due diligence to discover its infringing acts. See Dkt. 13, p. 6. But whether or not T-Mobile
`utilized diligence is a factual question that cannot be determined from the allegations in the
`Complaint or by the record submitted by Simply Wireless. Puff Factory, LLC v. Port of Cascade
`Locks, No. 3:20-CV-65-SI, 2020 WL 6547637, at *8 (D. Or. Nov. 6, 2020) (Denying motion to
`dismiss under Rule 12(b)(6) because “the question of diligence and whether Plaintiffs knew or
`
`2 Moreover, T-Mobile’s claim is based not only on the authorized use of T-Mobile’s Marks, but for the unauthorized
`use of the marks AND Simply Wireless’s misrepresentations that it is a T-Mobile “partner.” None of the exhibits
`attached to the TTAB filing show that Simply Wireless represented itself as a T-Mobile “partner” as it does on its
`current website, therefore refuting Simply Wireless’s argument that T-Mobile had prior knowledge of its claim. See
`generally Dkt. 14, Exhibit 4.
`PLAINTIFF’S RESPONSE TO SIMPLY
`WIRELESS’ MOTION TO DISMISS - 8
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`Case 2:21-cv-00525-RSM Document 22 Filed 08/02/21 Page 9 of 19
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`should have known of their cause of action more than two years before the filing of this federal
`lawsuit is a question of fact more appropriately decided by a factfinder.”) (emphasis in original).
`In fact, both the Clare and O’Connor decisions cited by Simply Wireless granted summary
`judgment based on a developed factual record. Neither decided the issue of diligence under a Rule
`12 standard, nor could they. See Clare v. Saberhagen Holdings, Inc., 129 Wn. App. 599, 603–04
`(2005) (addressing application of the discovery rule in the summary judgment context); O'Connor
`v. Boeing N. Am., Inc., 311 F.3d 1139, 1150 (9th Cir. 2002) (same). While Simply Wireless may
`choose to make this argument as part of a summary judgment proceeding, it is an improper issue
`to be decided on a Rule 12(b)(6) motion. The Court should therefore deny Simply Wireless’s
`Motion.
`
`T-Mobile’s CPA Claims Are Not Time Barred.
`B.
`Simply Wireless’s arguments that T-Mobile’s CPA claims are time barred fail for many of
`the same reasons stated above—namely Simply Wireless relies on materials and information
`outside the Complaint (not subject to judicial notice) that fail to establish the state of the website
`over the number of years Simply Wireless purports T-Mobile’s claim accrued and purportedly
`lapsed.
`
`The Court Should Not Consider Materials Beyond the Complaint.
`1.
`The extraneous exhibits Simply Wireless seeks to introduce for the Court’s consideration
`are inadmissible and improper. As discussed supra, Simply Wireless counsel’s conclusory
`affidavit cannot be considered under Rule 12, and even if it could, the affidavit fails to set forth
`any actual facts that demonstrate counsel’s personal knowledge with respect to the condition of
`the Simply Wireless website at any given time. It further fails to establish whether the exhibits are
`“true and correct cop[ies] of an archived copy of Simply Wireless’s website” during the respective
`time period, thereby failing to provide the requisite authentication and foundation for the exhibits.
`And, again, it would be improper to take judicial notice of the purported archived materials. See
`Gerritsen, 112 F. Supp. 3d at 1028; Lee, 250 F.3d at 689; Fed. R. Evid. 201(b).
`
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`WIRELESS’ MOTION TO DISMISS - 9
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`2.
`
`Even if Those Materials Are Considered, They Fail to Establish That
`T-Mobile’s Claim Is Time Barred.
`Even considering materials submitted by Simply Wireless outside the Complaint, Simply
`Wireless provides insufficient facts to establish when T-Mobile knew or should have known of its
`claim—i.e., when T-Mobile’s claim accrued—as discussed above. To be sure, the circumstances
`surrounding when such claim accrued create factual issues which prohibit dismissal on a Rule 12
`Motion to Dismiss.
`The cases cited by Simply Wireless expressly acknowledge this point. Not only do they
`analyze the discovery rule in the context of summary judgment (not upon a motion to dismiss),3
`but explicitly acknowledge that application of the discovery rule requires an analysis of the factual
`record relating to when the plaintiff was on notice of the claim. See Clare, 129 Wn. App. at 604
`(“Whether a party exercised due diligence is normally a factual issue . . . . The key consideration
`under the discovery rule is the factual, not the legal, basis for the cause of action.”); O'Connor,
`311 F.3d at 1150 (“Courts routinely recognize the ‘fact-intensive nature’ of the determination of
`when a plaintiff is on notice of a claim.”) (citations omitted).
`The discovery rule is not properly applied in a Rule 12(b)(6) context. The Court should
`therefore deny Simply Wireless’s Motion.
`C.
`Simply Wireless Has Not Proven as a Matter of Law That T-Mobile’s Claims
`Are Barred by Laches.
`Simply Wireless’s argument that T-Mobile’s Lanham Act claims are barred by laches
`similarly fails. Laches, as the Court no doubt knows, is a factually intensive defense. The
`Complaint here does not facially establish all the elements necessary for Simply Wireless to
`somehow apply or establish a laches defense. At minimum, a factual record is necessary before
`the Court addresses this defense.
`1.
`Laches is Not Properly Decided on a Rule 12(b)(6) Motion.
`Laches cannot be resolved on a motion to dismiss. Advanced Cardiovascular Systems, Inc.
`
`3 And despite Simply Wireless’s assertion, the Clare decision does not hold that a plaintiff bears the burden of proof
`to establish facts precluding the application of the discovery rule in the context of a motion to dismiss. See Clare, 129
`Wn. App. at 604.
`PLAINTIFF’S RESPONSE TO SIMPLY
`WIRELESS’ MOTION TO DISMISS - 10
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`v. Scimed Life Systems, Inc., 988 F.2d 1157, 1161 (Fed. Cir. 1993) (“The strictures of Rule
`12(b)(6), wherein dismissal of the claim is based solely on the complainant’s pleading, are not
`readily applicable to a determination of laches.”). To be sure, laches is an equitable defense that
`requires Simply Wireless to establish by clear and convincing proof that (1) T-Mobile had
`knowledge of its claim; (2) that T-Mobile unreasonably delayed commencing its action against
`Simply Wireless; and (3) that Simply Wireless has suffered damage. Newport Yacht Basin Ass'n
`of Condo. Owners v. Supreme Nw., Inc., 168 Wn. App. 56, 77 (2012).
`None of the allegations in T-Mobile’s Complaint are sufficient to establish any, much less
`all, of the required elements for Simply Wireless to potentially establish laches. The Complaint
`does not allege facts that would establish that T-Mobile knew or should have known of Simply
`Wireless’s trademark infringement, that T-Mobile delayed bringing the instant action, or that
`Simply Wireless suffered any damage or prejudice as a result.
`Rather, Simply Wireless invites the Court to undertake a factual inquiry to somehow
`establish the required elements. And it does so by requesting the Court’s consideration of evidence
`outside of the Complaint. Again, that is not proper.
`2.
`Again, The Court Should Not Consider Materials Beyond the
`Complaint.
`Beyond lacking proper legal grounds to ask this Court to dismiss on the basis of laches at
`this stage of the case, Simply Wireless still falls well short of establishing the elements required to
`apply laches.
`Again, the materials outside the four corners of the Complaint that Simply Wireless seeks
`to introduce for the Court’s consideration are inadmissible and improper. As discussed supra,
`Simply Wireless counsel’s affidavit fails to demonstrate counsel’s has personal knowledge with
`respect to the condition of Simply Wireless’s website at any point in time and fails to address
`whether the exhibits are “true and correct cop[ies] of an archived copy of Simply Wireless’s
`website” during the respective time period. His affidavit thereby fails to provide the requisite
`authentication and foundation for the exhibits. Because the factual content of the website is in
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`dispute as are the exhibits from the Wayback Machine, it would be improper to take judicial notice
`of the purported archived materials. See Gerritsen, 112 F. Supp. 3d at 1028; Lee, 250 F.3d at 689;
`Fed. R. Evid. 201(b).
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`Even if Those Materials Are Considered, They Fail to Establish Laches.
`3.
`Even considering materials submitted by Simply Wireless outside the Complaint, Simply
`Wireless provides insufficient facts to establish when T-Mobile knew or should have known of its
`claim, as discussed above. And even assuming T-Mobile had actual knowledge of its claims
`(which is denied), Simply Wireless also does not address why T-Mobile unreasonably delayed
`asserting its claim or the damage Simply Wireless has suffered from the delay. These are all
`factual issues which prohibit dismissal on a Rule 12 Motion to Dismiss. Advanced Cardiovascular
`Systems, Inc., 988 F.2d at 1161. As a result, Simply Wireless has therefore failed to carry its
`burden to show by clear and convincing evidence that the doctrine of laches applies as a matter of
`law.
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`Simply Wireless’s reliance on Jarrow and PBM Products to establish one or more of the
`laches elements is inapposite. Those cases, again, did not take up an analysis of the defendant’s
`laches defense on a motion to dismiss. Rather, those decisions relied upon factual findings based
`on an established record as part of the laches analysis at summary judgment and relating to a post-
`trial injunction. See generally Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 836
`(9th Cir. 2002); PBM Prod., LLC v. Mead Johnson & Co., 639 F.3d 111 (4th Cir. 2011).
`Because a determination here as to whether the doctrine of laches would require factual
`findings outside the four corners of the Complaint, the Court should deny Simply Wireless’s
`Motion.
`T-Mobile Has Stated a Claim under the Lanham Act.
`D.
`Simply Wireless’ arguments that T-Mobile fails to state a claim as a matter of law are also
`unavailing. The purpose of a Rule 12(b)(6) motion to dismiss is not to decide the merits of the
`case; a Rule 12(b)(6) motion tests the sufficiency of the complaint. Schmidt v. Contra Costa Cty.,
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`310 F. App'x 110, 112 (9th Cir. 2009) (“A Rule (12)(b)(6) dismissal cannot be based on a failure
`to produce evidence.”). Despite Simply Wireless’s arguments to the contrary, T-Mobile is not
`obligated to set forth the entirety of its proof in its allegations and is not required to produce any
`evidence at the pleading stage. Id.
`Rather, T-Mobile must simply allege sufficient facts to state a claim for relief which is
`“plausible on its face” that would allow the Court to reasonably infer Simply Wireless is infringing
`T-Mobile’s trademark. See Iqbal, 556 U.S. at 678(quoting Twombly, 550 U.S. at 570). Here,
`T-Mobile has done so.
`
`T-Mobile Has Alleged False Designation Under the Lanham Act.
`1.
`To establish a claim for trademark infringement or false designation of origin under Section
`43(a)(1)(A), 15 U.S.C. § 1125(a)(1)(A), a plaintiff must prove that the defendant (1) used in
`commerce (2) any word, false designation of origin, false or misleading description, or
`representation of fact, which (3) is likely to cause confusion or mistake, or to deceive, as to
`sponsorship, affiliation, or the origin of the goods or services in question. Freecycle Network, Inc.
`v. Oey, 505 F.3d 898, 902 (9th Cir. 2007); see also 5 McCarthy on Trademarks and Unfair
`Competition § 27:13.
`To be clear, T-Mobile has alleged Simply Wireless’s unauthorized use of the T-Mobile
`mark to represent itself as a T-Mobile “partner” in conjunction with Simply Wireless’s offering of
`T-Mobile goods and services. Dkt. 1, ¶¶ 25–30, 32–34. It accuses Simply Wireless in this regard
`of false designation of origin, and that these acts are likely to mislead the trade and public into
`believing Simply Wireless’s products and services originate from, are affiliated with, or are
`sponsored, authorized, approved or sanctioned by T-Mobile. Id., ¶¶ 33–34.
`It is well known that T-Mobile is a telecommunications company that offers and sells
`wireless services, among other things. The Complaint alleges that Simply Wireless has no
`authority to utilize the T-Mobile Marks or to represent itself as a T-Mobile “partner.” See,
`Complaint, Dkt. 1, ¶¶ 27-29. Taking the allegations in the Complaint as true, T-Mobile has clearly
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`stated a claim under the Lanham Act, especially considering the admissions Simply Wireless
`makes in its Motion.
`Simply Wireless Has Not Denied the Allegations.
`2.
`To be sure, Simply Wireless does not deny or otherwise contest these allegations in its
`Motion. While T-Mobile acknowledges that Simply Wireless has yet to formally answer, the
`failure to deny these facts in the Motion is telling.
`Indeed, Simply Wireless admits in its Motion that it uses the T-Mobile Marks in
`conjunction with “selling of [T-Mobile] goods and services.” Dkt. at 10 (“The obvious