Game Plan,inc. v. Nike Inc.

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF
COLUMBIA
GAME PLAN, INC.,
Plaintiff,
v.
No. 20-cv-455 (DLF)
ESPN, INC., et al.,
Defendants.
ORDER
Before the Court is Nike’s partial Motion to Dismiss, Dkt. 16, and ESPN, Take-Two
Interactive Software, and Uninterrupted LLC’s Motion to Stay, Dkt. 31. For the reasons that
follow, the Court will grant both motions.
In its partial motion to dismiss, Nike argues that Game Plan has failed to state a claim
upon which relief can be granted on two of its five claims: (1) trademark dilution under 15
U.S.C. § 1125(c), and (2) common law unjust enrichment. Taking the well-pleaded factual
allegations in the Complaint as true, as we must, Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009),
Game Plan has not stated a claim upon which relief can be granted as to these two claims. See
Fed. R. Civ. P. 12(b)(6).
Game Plan cannot state a claim for trademark dilution because it has not alleged facts to
support an inference that the mark is “famous,” which is an essential element of this claim. 15
U.S.C. § 1125(c). “[A] mark is famous if it is widely recognized by the general consuming
public of the United States as a designation of source of the goods or services of the mark’s
owner.” Id. § 1125(c)(2)(A). This is a demanding standard, with Courts holding that marks
such as the Texas Longhorns logo, Bd. of Regents v. KST Elec., Ltd., 550 F. Supp. 2d 657, 679
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(W.D. Tex. 2008), and the COACH logo on luxury handbags, Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012), are not sufficiently famous. And “niche
fame” limited to a particular community or industry, “is a category of fame to which the [Act]
explicitly does not apply.” Bd. of Regents, 550 F. Supp. 2d at 677. Game Plan has not alleged
facts that can support a finding that its mark “I AM MORE THAN AN ATHLETE. GP. GAME
PLAN” has achieved this requisite fame. Rather, Game Plan merely alleges that its mark was
“gaining fame.” Am. Compl. ¶ 101, Dkt. 29. This, along with mere “[t]hreadbare recitals of the
elements of a cause of action, supported by mere conclusory statements” Iqbal, 556 U.S. at 678,
does not plausibly meet the high standard of establishing that Game Plan’s mark was a
“household name,” Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A. De C.V.,
69 F. Supp. 3d 175, 220 (D.D.C. 2014). For this reason, the Court will dismiss Game Plan’s
trademark dilution claim.
So too, Game Plan cannot state a claim for relief for unjust enrichment. Game Plan does
not specify any particular state law as a basis for its claim, but instead invokes “common law.”
Pl.’s Resp. to Mot. to Dismiss at 5, Dkt. 23-1. To state a claim for unjust enrichment, a quasi-
contract theory of recovery, a plaintiff must show that (1) the plaintiff conferred a benefit on the
defendant; (2) the defendant retained the benefit, and (3) the defendant’s retention of the benefit
was unjust. See Armenian Assembly of Am., Inc. v. Cafesjian, 597 F. Supp. 2d 128, 134 (D.D.C.
2009). However, Game Plan has not alleged that it conferred, or promised to confer, any benefit
on any of the defendants. Indeed, Game Plan has not alleged that it ever interacted with any of
the defendants. Instead, Game Plan invokes the Lanham Act and states that the statute itself
creates a “contract implied-by-law” between the parties. See Pl.’s Resp. at 5. But Game Plan
provides no support for the novel proposition that the Lanham Act, an entirely separate basis for
relief from unjust enrichment, can somehow establish a relationship between the parties where
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none exists. Ultimately, Nike is correct that Game Plan “conflates a claimant’s entitlement to an
award of profits under the Lanham Act based on a finding that the defendant was unjustly
enriched, on the one hand, with a standalone claim for ‘Unjust Enrichment’ under a common
law quasi-contract theory of damages, on the other.” Def.’s Reply to Mot. to Dismiss at 7, Dkt.
26. Thus, without any allegation of a relationship between the parties, the Court will dismiss the
quasi-contract unjust enrichment claim.
As to the remaining claims, the defendants argue that this litigation should be stayed
pending a resolution of the far-advanced litigation over the same dispute before the Trademark
Trial and Appeal Board (TTAB). See Defs.’ Mot. to Stay. “A trial court has broad discretion to
stay all proceedings in an action pending the resolution of independent proceedings elsewhere.”
Hisler v. Gallaudet Univ., 344 F. Supp. 2d 29, 35 (D.D.C. 2004) (citing Landis v. N. Am. Co., 299
U.S. 248, 254 (1936)). After all, “the power to stay proceedings is incidental to the power inherent
in every court to control the disposition of the causes on its docket with economy of time and
effort for itself, for counsel, and for litigants.” Landis, 299 U.S. at 254.
The Court determines that a stay is proper in this case. First, the TTAB litigation involves
identical issues and is much further advanced than this litigation. Already the parties have
expended significant time and resources in the nearly two-year-old TTAB matter. Indeed, the
parties had already completed a lengthy discovery process and submitted a dispositive motion in
the TTAB matter before this litigation even began. Second, although the TTAB may not have the
power to grant the full relief requested before this Court, its expert determination on the
likelihood-of-confusion issue will significantly aid in the resolution of this case. Plaintiff’s
argument that there is not perfect overlap between the defendants in this suit and those before the
TTAB does not change that fact—the TTAB will still address the same underlying trademark
questions at issue here. Its decision will be, at the very least, persuasive and helpful, if not
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preclusive. Finally, it is of no moment that the TTAB matter is currently stayed. The TTAB lifts
its stays as a matter of course whenever related civil litigation is stayed. See Trademark Trial and
Appeal Board Manual of Procedure § 510.02(a) (2020) (“[I]f, as sometimes happens, the court
before which a civil action is pending elects to suspend the civil action to await determination of
the Board proceeding and the Board is so advised, the Board will go forward with its
proceeding.”). Thus, in the interest of judicial economy and the proper resolution of this dispute,
the Court will stay this case pending the resolution of the related TTAB matter. Accordingly, it is
ORDERED that Nike’s partial Motion to Dismiss, Dkt. 16, is GRANTED. Game Plan’s
trademark dilution and unjust enrichment claims are DISMISSED WITH PREJUDICE. It is
further
ORDERED that this case is STAYED pending resolution of TTAB Opposition No.
91244990. The parties shall file a joint status report with the Court within thirty days of the final,
non-appealable disposition of the TTAB proceeding.
________________________
DABNEY L. FRIEDRICH
October 9, 2020 United States District Judge
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