Alpha Kappa Alpha Sorority Inc. v. Converse Inc. , 175 F. App'x 672 ( 2006 )

United States Court of Appeals
Fifth Circuit
F I L E D
IN THE UNITED STATES COURT OF APPEALS
April 10, 2006
FOR THE FIFTH CIRCUIT
Charles R. Fulbruge III
Clerk
No. 05-10317
ALPHA KAPPA ALPHA SORORITY INC; ALPHA PHI ALPHA FRATERNITY
INC; KAPPA ALPHA PSI FRATERNITY INC; OMEGA PSI PHI
FRATERNITY INC; DELTA SIGMA THETA SORORITY INC; PHI BETA
SIGMA FRATERNITY INC
Plaintiffs - Appellants
v.
CONVERSE INC
Defendant - Appellee
_________________________________________________________________
Appeal from the United States District Court
for the Northern District of Texas, Dallas Division
No. 3:03-CV-2954-B
_________________________________________________________________
Before KING, BARKSDALE, and PRADO, Circuit Judges.
KING, Circuit Judge:*
In this trademark and trade dress infringement action under
the Trademark Act of 1946 (the “Lanham Act”), as amended and
codified in 15 U.S.C. §§ 1051 et seq., the plaintiffs appeal an
order of the district court granting the defendant’s motion to
dismiss under Federal Rule of Civil Procedure 12(b)(6) for
*
Pursuant to 5TH CIR. R. 47.5, the court has determined
that this opinion should not be published and is not precedent
except under the limited circumstances set forth in 5TH CIR.
R. 47.5.4.
-1-
failure to state a claim upon which relief could be granted. The
district court dismissed the action because the complaint
presented only conclusory allegations of trademark infringement
with respect to a violation of section 32(1) of the Lanham Act,
15 U.S.C. § 1114(1), and failed to identify the specific elements
comprising their alleged common-law trademarks and trade dress
that deserved protection under section 43(a) and (c) of the
Lanham Act, 15 U.S.C. § 1125(a) and (c). Having disposed of the
federal claims, the district court declined to exercise
supplemental jurisdiction over the remaining state law claims
under TEX. BUS. & COM. CODE ANN. § 16.29 (Vernon 2005) for lack of
subject-matter jurisdiction. Alpha Kappa Alpha Sorority v.
Converse, Inc., 2005 WL 65598, at **2-5 (N.D. Tex. Jan. 12,
2005). For the following reasons, we AFFIRM in part, REVERSE in
part, VACATE in part, and REMAND.
I. FACTUAL AND PROCEDURAL BACKGROUND
This case arises out of a complaint filed on December 11,
2003, in the United States District Court for the Northern
District of Texas, Dallas Division, on behalf of six
predominantly African-American fraternities and sororities1
1
The complaint identifies the six fraternities and
sororities bringing the lawsuit against Converse as (1) Alpha
Kappa Alpha Sorority, Inc., (2) Alpha Phi Alpha Fraternity, Inc.,
(3) Kappa Alpha Psi Fraternity, Inc., (4) Omega Psi Phi
Fraternity, Inc., (5) Delta Sigma Theta Sorority, Inc., and (6)
Phi Beta Sigma Fraternity, Inc. Given the overlapping nature of
their claims, this opinion will hereinafter refer to the
organizations collectively as “the plaintiffs.”
-2-
against defendant-appellee Converse, Inc. (“Converse”), a
manufacturer of sneakers and basketball shoes, alleging federal
and state claims of trademark and trade dress infringement, as
well as unfair competition. The complaint alleges that the
plaintiffs own a series of registered trademarks and unregistered
distinctive trademarks and trade dress, “some of which contain
the founding year(s), colors and identification” of the
plaintiffs. Compl. ¶ 20. The complaint also identifies the
distinctive two-color combination and founding year of each
plaintiff organization.2 Id. ¶ 24. The plaintiffs assert that
they “have generated substantial revenues from manufacturing,
selling, and licensing for manufacture and sale of, Greek
paraphernalia, including apparel, shoe wear, and other products”
that bear the distinctive marks and trade dress of the
organizations. Id. ¶ 28.
According to the complaint, Converse produced and marketed a
line of athletic shoes called the GREEKPAK Weapon basketball shoe
(the “GREEKPAK line” or “GREEKPAK shoes”).3 Each model of the
GREEKPAK line features a two-color combination associated with
2
Although two plaintiffs share the same two-color
combination--Kappa Alpha Psi Fraternity and Delta Sigma Theta
Sorority both using red and white as identifying colors--no two
plaintiffs share the precise combination of colors and founding
year.
3
Converse notes in its brief that sales of the GREEKPAK
line ceased prior to the filing of the lawsuit. See Appellee’s
Br. at 1.
-3-
one of the plaintiff organizations and a small embroidered date
that corresponds to the founding year of that same organization
near the heel of the shoe. See id. ¶ 35 (“The years etched on
the [sic] Converse’s GREEKPAK shoes and the colors of the shoes
match precisely the colors and founding years of Plaintiffs’
Greek-based Sororities and Fraternities.”). In addition to the
conspicuous similarity between the shoes and the two-
color/founding year combinations of the plaintiffs, the complaint
avers that the marketing slogans4 used in advertising the
GREEKPAK line were “clearly designed to exploit and capitalize
financially” on the sense of pride felt by members of the
plaintiff organizations. Id. ¶ 38. Therefore, the plaintiffs
allege that the use of these marks is likely to cause confusion
among customers and potential customers as to the source and
sponsorship of the shoes.
Converse filed a motion to dismiss under Rule 12(b)(6) on
January 30, 2004. The plaintiffs did not immediately file a
responsive pleading, but they did serve Converse with
interrogatories and requests for document production around the
same time. On February 12, 2004, Converse filed a motion to stay
the plaintiffs’ discovery requests, arguing that discovery could
4
According to the complaint, Converse used advertising
slogans to promote the GREEKPAK line such as “no matter your
Greek affiliation, grab these quick for representation” and
“These GREEKPAK Weapon basketball shoes are proven to make you
proud. See you on the yard.” Compl. ¶¶ 36-37.
-4-
not be undertaken until a scheduling order had been issued by the
court. Moreover, Converse argued that allowing discovery before
a ruling on its Rule 12(b)(6) motion would be premature. The
plaintiffs filed a response to Converse’s Rule 12(b)(6) motion on
February 17, 2004, and requested, in the alternative, leave to
amend the original complaint in the event the district court
decided to grant the motion to dismiss.5
On July 8, 2004, the district court issued an order denying
Converse’s motion to stay discovery as moot because the court had
not yet issued a scheduling order to initiate discovery. Shortly
thereafter, the case was transferred to a different judge. The
district court issued an Order Regarding Transition on August 17,
2004, that stayed the issuance of a scheduling order until the
court ruled on the pending motion to dismiss.
The district court granted Converse’s motion to dismiss on
January 12, 2005. The district court found that the plaintiffs
failed to allege infringement of any specific registered
trademarks under section 32(1)(a) of the Lanham Act, 15 U.S.C.
§ 1114(1)(a). Alpha Kappa Alpha Sorority, 2005 WL 65598, at *3.
With respect to the plaintiffs’ common-law trademark rights for
their unregistered two-color/founding year combinations under
section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), the
district court found that the plaintiffs had failed (1) to
5
The plaintiffs did not attach a proposed amended
complaint with their motion at this time.
-5-
identify the specific elements of their trademarks, and (2) to
allege “that they have ever used these color and year
combinations on any product, a prerequisite for common law
ownership of a trademark.” Id. at *4. The district court
similarly dismissed the claims of trade dress infringement and
dilution under the Lanham Act, finding that “[n]o Plaintiff has
alleged that there is any footwear belonging to any of them
bearing the alleged color and year combination, nor has any
Plaintiff identified the particular shoe that constitutes the
trade dress . . . .” Id. at **4-5. Given its dismissal of the
federal claims, the court dismissed the remaining state-law
claims, citing the policy “in favor of declining jurisdiction . .
. where all federal law claims have been dismissed.” Id. at *5
(citing Parker & Parsley Petroleum v. Dresser Indus., 972 F.2d
580, 590 (5th Cir. 1992)).
II. JURISDICTION
We instructed the parties to brief issues related to our
jurisdiction over this appeal. Our only jurisdictional concern
in this case is the timeliness of the filing of the notice of
appeal. Converse contends that the plaintiffs’ notice of appeal
was untimely because more than thirty days had lapsed since the
district court’s order dismissing their claims on January 12,
2005. The plaintiffs counter that the district court did not
deny its motion for reconsideration until January 20, 2005, which
-6-
would make the notice of appeal filed on February 18, 2005 fall
within the thirty-day period.
Even though the Federal Rules of Civil Procedure do not
expressly recognize a “motion for reconsideration,” such motions
may properly be considered either a Rule 59(e) motion to alter or
amend judgment or a Rule 60(b) motion for relief from judgment.
Hamilton Plaintiffs v. Williams Plaintiffs, 147 F.3d 367, 371
n.10 (5th Cir. 1998). Under the current version of the Federal
Rules of Appellate Procedure, both Rule 59(e) motions and those
Rule 60(b) motions filed no later than ten days after entry of
judgment toll the thirty-day time period within which a party may
file its notice of appeal until after entry of the order
disposing of the motion.6 See FED. R. APP. P. 4(a)(4)(A)(v), (vi).
Because the notice of appeal was filed within thirty days of the
district court’s denial of the plaintiffs’ motion for
reconsideration, we have jurisdiction and proceed to the
substantive claims raised in this appeal.
III. DISCUSSION
On appeal, the plaintiffs have challenged (1) the Memorandum
Order dismissing the plaintiffs’ claims and denying leave to
6
Under prior law, a Rule 60(b) motion did not toll the
running of time for filing a notice of appeal whereas a timely
filed Rule 59(e) motion did. See Fischer v. United States, 759
F.2d 461, 465 n.4 (5th Cir. 1985). Pursuant to a 1993 amendment
to Rule 4(a)(4), however, it no longer matters how the motion for
reconsideration is characterized for purposes of tolling the
period for filing a notice of appeal. See FED. R. APP. P.
4(a)(4)(A)(v), (vi).
-7-
amend; (2) the Order Regarding Transition that deferred the
issuance of a scheduling order during the pendency of the
dismissal motion; and (3) orders denying the plaintiffs’
Expedited Motion for Reconsideration and denying the plaintiffs’
second motion for leave to amend. We consider each issue in
turn.
A. The District Court’s Dismissal of the Plaintiffs’ Lanham Act
Claims Under Rule 12(b)(6)
This court reviews de novo a dismissal for failure to state
a claim upon which relief could be granted under Federal Rule of
Civil Procedure 12(b)(6). Gen. Elec. Capital Corp. v. Posey, 415
F.3d 391, 395 (5th Cir. 2005). We employ the same standard as
the district court and liberally construe the complaint in the
light most favorable to the plaintiffs, accepting all well-
pleaded facts as true. Plotkin v. IP Axess Inc., 407 F.3d 690,
696 (5th Cir. 2005). Motions to dismiss are rarely granted and
generally viewed with disfavor. Test Masters Educ. Servs., Inc.
v. Singh, 428 F.3d 559, 570 (5th Cir. 2005). Unless the
plaintiffs cannot prove any set of facts entitling them to
relief, the complaint should not be dismissed. Posey, 415 F.3d
at 395. We need not, however, accept as true conclusory
allegations, unwarranted factual inferences, or legal conclusions
in reviewing a district court’s dismissal under Rule 12(b)(6).
Southland Sec. Corp. v. INSpire Ins. Solutions, Inc., 365 F.3d
353, 361 (5th Cir. 2004).
-8-
1. Count 1: Infringement of Federally Registered Marks
Under the Lanham Act
Although two of the plaintiffs (Alpha Phi Alpha and Phi Beta
Sigma) identified federally registered marks in the complaint,
see Compl. ¶ 21, the district court dismissed the claims relating
to these marks for failure to adequately allege infringement of
these registrations under section 32(1)(a) of the Lanham Act, 15
U.S.C. § 1114(1)(a). Alpha Kappa Alpha Sorority, 2005 WL 65598,
at *3. The plaintiffs’ brief on appeal does not address the
court’s action beyond briefly mentioning it. We deem the
plaintiffs’ appeal relating to their federally registered marks
to be abandoned. See Cutrera v. Bd. of Supervisors of La. State
Univ., 429 F.3d 108, 114 (5th Cir. 2005). We therefore affirm
the portion of the district court’s order that dismissed the
claims relating to infringement of the plaintiffs’ registered
trademarks. See Walker v. Thompson, 214 F.3d 615, 625 (5th Cir.
2000) (affirming in part the portion of a district court’s grant
of summary judgment where the plaintiff had abandoned the issue
in her appellate brief).
2. Count 2: Unfair Competition Claims Under the Lanham Act
The principal question presented in this case is whether the
complaint adequately states a claim for infringement of any
common-law trademarks or trade dress. The problems that the
district court identified in the plaintiffs’ complaint are
actually quite narrow. With respect to the plaintiffs’ claims of
-9-
unfair competition alleging that Converse had unlawfully used
their common-law trademarks in violation of section 43(a) of the
Lanham Act, 15 U.S.C. § 1125(a),7 the district court held that
“the Plaintiffs fail to identify any of those common law
trademarks.”8 Id. Relying principally on the Second Circuit’s
7
Section 43(a) provides, in relevant part:
(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 . . .
. . .
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. § 1125(a)(1)(A).
8
The complaint refers interchangeably to the two-
color/founding year combinations as unregistered trademarks and
trade dresses. Indeed, the distinctions between trademarks and
trade dress in the law have largely disappeared. See 1 J. THOMAS
MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 8:1 (4th ed.
2005) (“Today, many types of designations protectable as ‘trade
dress’ are also registrable as ‘trademarks.’ Today, unregistered
trade dress is protected under federal Lanham Act § 43(a) under
the same rules as are trademarks.”); see also Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 773 (1992) (noting that “the
protection of trademarks and trade dress under § 43(a) serves the
same statutory purpose of preventing deception and unfair
competition”); Chevron Chem. Co. v. Voluntary Purchasing Groups,
Inc., 659 F.2d 695, 701 (5th Cir. 1981) (discussing trademark and
trade dress infringement as both deriving from “the common-law
tort of ‘unfair competition,’ or, as it is otherwise known,
‘passing off’”). As such, aside from noting any meaningful
differences in the case law, we see no compelling reason to
-10-
decision in Landscape Forms, Inc. v. Columbia Cascade Co., 113
F.3d 373 (2d Cir. 1997), the district court stated that the
plaintiffs “merely describe how each organization has a color
combination and founding year associated with it and how these
same color combinations and years appear on Converse’s GREEKPAK
shoes, but they do not claim that the color and year combinations
are trademarks.” Id. In dismissing the trade dress claims, the
district court similarly concluded that the plaintiffs had
neither “allege[d] that they have ever used the year and color
combinations as trade dress” nor “articulated with particularity,
as is required, the elements comprising their trade dress.” Id.
at *4.
We now turn to the complaint to determine whether it suffers
from these perceived deficiencies in light of the well-
established notice pleading standards. In order to determine
whether the plaintiffs claim that their two-color/founding year
combinations are trademarks or trade dress, we set out below in
haec verba most, although not all, of the references in the
plaintiffs’ complaint to the plaintiffs’ unregistered marks and
trade dress:
¶ 22: Plaintiffs have also conceived and developed items
containing Plaintiffs’ distinctive trade dress, which has
achieved notoriety as marks used solely by Plaintiffs or
their authorized representatives.
separately address the trademark and trade dress claims raised
under section 43(a).
-11-
¶ 24: The founding years and organizational colors that
the Plaintiffs have adopted are unique to Plaintiffs’
identification and accomplishments and have acquired
significant meaning to the members of Plaintiffs’
organizations as well as secondary meaning to the general
public. The founding years and identifying colors of the
organizations are as follows:
Plaintiff Founding Year Distinctive Colors
Alpha Phi Alpha Fraternity 1906 Black and Gold
Alpha Kappa Alpha Sorority 1908 Pink and Green
Kappa Alpha Psi Fraternity 1911 Red and White
Omega Psi Phi Fraternity 1911 Purple and Gold
Delta Sigma Theta Sorority 1913 Red and White
Phi Beta Sigma Fraternity 1914 Royal Blue and White
¶ 27: Since at least as early as 1908, Plaintiffs have
also used their marks and trade dress worldwide in
connection with the manufacture, sale and licensing of
Greek paraphernalia, including apparel, shoe wear, and
other products.
¶ 28: Continually, since long prior to the acts
complained of herein, Plaintiffs have generated
substantial revenues from manufacturing, selling, and
licensing for manufacture and sale of, Greek
paraphernalia, including apparel, shoe wear, and other
products that contain Plaintiffs’ marks and trade dress.
¶ 29: The Plaintiffs’ marks and trade dress are
arbitrary, suggestive and inherently distinctive.
¶ 30: As a result of Plaintiffs’ efforts to promote their
organizations, trade dress and marks, these marks have
acquired in the minds of the public a secondary meaning,
and have become distinctive marks denoting identification
with and sponsorship from, the Plaintiffs’ organizations.
¶ 31: As a further result of Plaintiffs’ efforts, the
marks are recognized as being associated exclusively with
the services and products marketed or licensed by
Plaintiffs or their authorized representatives.
¶ 35: The years etched on the [sic] Converse’s GREEKPAK
shoes and the colors of the shoes match precisely the
colors and founding years of Plaintiffs’ Greek-based
Sororities and Fraternities.
¶ 43: Despite the limitless other marks and trade dress
-12-
that Converse could have chosen, it wrongfully
appropriated marks owned by Plaintiffs without permission
or other authorization from plaintiffs.
¶ 44: Plaintiffs’ marks and trade dress and Converse’s
GREEKPAK designs are strikingly and confusingly similar,
and Converse’s use of these marks causes and is likely to
continue to cause confusion among consumers and potential
consumers of the products of Plaintiffs and their
licensed vendors.
¶ 45: Converse’s use of these marks and trade dress for
the promotion and sale of its shoes is likely to cause
confusion as to whether Converse’s products are sponsored
or licensed by, or affiliated with, Plaintiffs and their
marks.
¶ 63: Plaintiffs identifying marks that have been
misappropriated by Converse are inherently distinctive
and/or have acquired distinctiveness through secondary
meaning.
¶ 64: Without authorization or consent, Converse has
deliberately and intentionally used Plaintiffs’ marks and
trade dress in commerce in connection with the
manufacturing, advertising, promotion, distribution, sale
and offering for sale of products that are directly
competitive with products marketed by Plaintiffs and
their authorized representatives.
As is evident from the quoted material from the plaintiffs’
complaint, the plaintiffs have, indeed, identified the elements
(the color and year combinations) comprising their trademarks or
trade dress; they have claimed that the color and year
combinations are trademarks or trade dress; and they have
asserted that Converse infringed upon their trademarks or trade
dress in promoting and selling its GREEKPAK shoes. Thus, under
the liberal notice pleading standards articulated in Federal Rule
of Civil Procedure 8, we conclude that the complaint adequately
apprised Converse of the cause of action under section 43(a) of
-13-
the Lanham Act. See Conley v. Gibson, 355 U.S. 41, 47 (1957)
(“[A]ll the rules require is a short and plain statement of the
claim that will give the defendant fair notice of what the
plaintiff’s claim is and the grounds upon which it rests.”)
(internal quotations omitted); Walker v. S. Cent. Bell Tel. Co.,
904 F.2d 275, 278 (5th Cir. 1990) (“Generally speaking if the
pleadings provide adequate notice, then an inference may be drawn
that all the elements of a cause of action exist.”).
As the complaint indicates, when the plaintiffs are able to
develop their case, they intend to provide evidence of inherent
distinctiveness or of secondary meaning, which will be necessary
to establish that their marks or trade dress are protectable.
See Sugar Busters, LLC v. Brennan, 177 F.3d 258, 269 (5th Cir.
1999) (noting that, on remand to the district court, the
plaintiffs “must demonstrate a high degree of proof to establish
secondary meaning”). But judging the complaint alone, it is
adequate to describe the marks or dress for which protection is
claimed, as well as commercial usage of the marks or dress.
In dismissing the plaintiffs’ unregistered trademark and
trade dress claims for failure to identify the marks and dress
with sufficient particularity, the district court relied on the
Second Circuit’s decision in Landscape Forms. Landscape Forms is
a very different case. First, it is not a ruling (or an appeal
from a ruling) on a Rule 12(b)(6) motion to dismiss; it is,
instead, an appeal from the grant of a preliminary injunction
-14-
following a hearing in the district court. Landscape Forms,
Inc., 113 F.3d at 375. Moreover, the Second Circuit’s
conclusion, after reviewing the complaint and the testimony of
the plaintiff’s witnesses at the hearing, was that the plaintiff
had failed “to articulate what makes its products inherently
distinctive such that, without proof of secondary meaning, there
is reason to believe that confusion is likely.” Id. at 382.
In contrast to the comparatively more detailed description
of the claimed marks or dress in the plaintiff’s complaint in
this case, the complaint in Landscape Forms asserted only that
“[t]he product design and configuration of [Landscape’s]
PetoskeyTM Group Collection employs a number of distinctive
elements which, when taken together, constitute a trade dress
recognizable by architects, landscape architects and designers,
as well as the public at large.” Id. at 381 (internal quotations
omitted). The testimony of the plaintiff’s witnesses did little
to further elucidate the precise elements of the alleged trade
dress. For example, rather than articulating the “distinctive
elements” of the alleged trade dress, Landscape’s president
remarked that “[t]he look is kind of cantilevered” and “very
unexpected.” Id. An industrial designer at Landscape described
the furniture as “seem[ing] to float in this rather heavy-looking
framework.” Id. Faced with a complaint that was vacuous when it
came to describing the plaintiff’s trade dress and witnesses who
were not much more specific, the court concluded that the
-15-
descriptions were “too abstract” and “fail[ed] to indicate what
unique combination of features makes the trade dress of the ten
items in the Petoskey line inherently distinctive . . . .” Id.
at 381-82 (“If the law protected style at such a level of
abstraction, Bracque might have prevented Picasso from selling
cubist paintings in the United States.”).
Citing the “acute” concern for protecting competition for
trade dress covering an array of items, the court stated that
trade dress law’s “focus on the overall look of a product does
not permit a plaintiff to dispense with an articulation of the
specific elements which comprise its distinct dress.” Id. at
380-81.
Without such a precise expression of the character and
scope of the claimed trade dress, litigation will be
difficult, as courts will be unable to evaluate how
unique and unexpected the design elements are in the
relevant market. Courts will also be unable to shape
narrowly-tailored relief if they do not know what
distinctive combination of ingredients deserves
protection. Moreover, a plaintiff’s inability to explain
to a court exactly which aspects of its product design(s)
merit protection may indicate that its claim is pitched
at an improper level of generality, i.e., the claimant
seeks protection for an unprotectable style, theme, or
idea.
Id. at 381.
Nothing in our opinion today conflicts with the Second
Circuit’s holding in Landscape Forms.9 In fact, the Second
9
Moreover, the Supreme Court’s subsequent pronouncement in
Wal-Mart Stores, Inc. v. Samara Bros., Inc. removed any doubt
that the Second Circuit’s holding that a trade dress action under
section 43(a) seeking to demonstrate that a product’s design is
-16-
Circuit’s analysis actually supports our holding that the
complaint sufficiently articulated the elements of the
plaintiffs’ unregistered trademarks and trade dress under section
43(a) of the Lanham Act such that it survives an initial motion
to dismiss and may proceed to the proof of secondary meaning
stage. See Abercrombie & Fitch Stores, Inc. v. Am. Eagle
Outfitters, Inc., 280 F.3d 619, 635 (6th Cir. 2002)
(distinguishing Landscape Forms by noting that “[a] complaint is
neither an injunction nor a judgment; it merely puts the
defendant on notice of the plaintiff’s claims”).
Finally, with respect to both the unregistered trademark and
trade dress claims, the district court also stated that the
plaintiffs had “fail[ed] to allege that they have ever used these
color and year combinations on any product, a prerequisite for
common law ownership of a trademark.” Alpha Kappa Alpha
Sorority, 2005 WL 65598, at *3 (citing Blue Bell, Inc. v. Farah
Mfg., Co., 508 F.2d 1260, 1267 (5th Cir. 1975)). Again, the
district court’s conclusion in this regard is difficult to square
with the excerpts from the complaint discussed above. See Compl.
¶¶ 27, 28. Moreover, while we do not disagree with the
proposition that plaintiffs must allege use of the unregistered
trademarks or trade dress to gain protection under the common
law, we note that the court in Blue Bell was concerned with an
distinctive must make a showing of secondary meaning. 529 U.S.
205, 216 (2000).
-17-
entirely different question--namely, whether an internal shipment
of goods constituted sufficient commercial use to gain protection
as a common-law trademark--than the one presented in this appeal.
See Blue Bell, Inc., 508 F.2d at 1265. Because a fair reading of
the complaint demonstrates that the plaintiffs sufficiently
alleged commercial use of their trademarks and trade dress to
satisfy notice pleading standards, we conclude that the complaint
was also not deficient in this regard.
3. Count 3: Anti-Dilution Claim Under the Lanham Act
The district court similarly dismissed the plaintiffs’ anti-
dilution claims under section 43(c) of the Lanham Act, 15 U.S.C.
§ 1125(c),10 because the complaint allegedly “fail[ed] to
identify any trademarks or trade dress that any of the Plaintiffs
10
Section 43(c) provides, in relevant part:
(1) The owner of a famous mark shall be entitled, subject
to the principles of equity and upon such terms as the
court deems reasonable, to an injunction against another
person’s commercial use in commerce of a mark or trade
name, if such use begins after the mark has become famous
and causes dilution of the distinctive quality of the
mark, and to obtain such other relief as is provided in
this subsection. . . .
. . .
(2) In an action brought under this subsection, the owner
of the famous mark shall be entitled only to injunctive
relief as set forth in section 1116 of this title unless
the person against whom the injunction is sought
willfully intended to trade on the owner’s reputation or
to cause dilution of the famous mark. If such willful
intent is proven, the owner of the famous mark shall also
be entitled to the remedies set forth in sections 1117(a)
and 1118 of this title, subject to the discretion of the
court and the principles of equity.
15 U.S.C. § 1125(c).
-18-
own or have used that have also been used by Converse.” Alpha
Kappa Alpha Sorority, 2005 WL 65598, at *5. Supplementing the
portions of the complaint excerpted above, the complaint sets
forth its anti-dilution claim as follows:
¶ 70: Plaintiffs’ marks are distinctive and famous
according to a number of factors including, but not
limited to, the degree of inherent or acquired
distinctiveness of the marks; the duration and extent of
use of the mark in connection with Plaintiffs’ goods and
services; and the degree of recognition of the marks in
the trading areas and channels of trade of Plaintiffs and
Defendant.
¶ 71: Converse’s unauthorized and unlicensed use of
Plaintiffs’ marks after the marks have become famous has
caused dilution of the distinctive quality of the mark,
and infringes Plaintiffs’ rights to its famous marks in
violation of 15 U.S.C. Section 1125(c)(1). Converse’s
actions, unless restrained, also has the potential to
embolden other companies to believe that it is
permissible to infringe upon Plaintiffs’ marks and trade
dress without seeking permission or a license.
¶ 72: Upon information and belief, Converse adopted and
is displaying the marks and trade dress with full
knowledge of Plaintiffs’ rights to its famous marks and
with the willful intention to trade on Plaintiffs’
reputation as embodied in their marks or cause dilution
of such marks. Thus, Converse has willfully violated
Plaintiffs’ rights under 15 U.S.C. Section 1125(c)(2).
For the reasons described in the preceding section of this
opinion, we hold only that the plaintiffs have satisfied the
notice pleading requirements to state a claim for dilution of
their unregistered marks and trade dress.11 Accordingly, we
11
In order to eventually prevail on their federal dilution
claim, the plaintiffs must prove that the two-color/founding year
combinations are “famous and distinctive” and that the
organizations experienced “actual economic harm” from Converse’s
dilution of those marks and dresses. See Advantage Rent-A-Car,
-19-
reverse the district court’s dismissal of this claim as well.
B. The District Court’s Decision to Postpone the Issuance of a
Scheduling Order
We review a district court’s administrative management of a
case, including its enforcement of local rules and issuance of
scheduling orders, for abuse of discretion. Macklin v. City of
New Orleans, 293 F.3d 237, 240 (5th Cir. 2002). Rule 16(b) of
the Federal Rules of Civil Procedure authorizes federal courts to
organize the discovery process through a scheduling order. FED.
R. CIV. P. 16(b); see also Barrett v. Atl. Richfield Co., 95 F.3d
375, 380 (5th Cir. 1996). Pending a case surviving a motion to
dismiss under Rule 12(b)(6), however, the district court may wish
to postpone the issuance of a scheduling order until it decides
whether the case merits further factual development. See, e.g.,
Ehlmann v. Kaiser Found. Health Plan of Tex., 198 F.3d 552, 554
(5th Cir. 2000). The district court cannot be said to have
abused its discretion in delaying the issuance of a scheduling
order until its ruling on the Rule 12(b)(6) motion.
C. The District Court’s Denials of the Plaintiffs’ Motions for
Reconsideration and for Leave to Amend the Complaint
In view of our decision on the dismissal of the plaintiffs’
Inc. v. Enter. Rent-A-Car, Co., 238 F.3d 378, 380 (5th Cir.
2001). The fame of the mark need only be proven within the
relevant market for consumers of athletic shoes, not in a broader
market. Id. (citing RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 25 cmt.
e (1995)). The resolution of these issues, however, depends upon
further factual development.
-20-
complaint, the appeals from the district court’s denial of the
plaintiffs’ motion for reconsideration and from its denial of the
plaintiffs’ second motion for leave to amend the complaint are
moot.
IV. CONCLUSION
For the foregoing reasons, we AFFIRM the portion of the
district court’s order dismissing the plaintiffs’ claims under
section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1). We REVERSE
the portion of the district court’s order dismissing the
plaintiffs’ claims under section 43(a) and (c) of the Lanham Act,
15 U.S.C. § 1125(a),(c). Consistent with this opinion, we VACATE
the portion of the district court’s order declining to exercise
supplemental jurisdiction over the plaintiffs’ state-law claims
for lack of subject-matter jurisdiction. Costs shall be borne by
Converse.
-21-