United States District Court, N.D. Alabama, Southern Division
DAVID PROCTOR UNITED STATES DISTRICT JUDGE.
matter is before the court on Defendant Shoebacca, Ltd.'s
Motion to Dismiss. (Doc. # 17). Plaintiffs have responded to
the Motion. (Doc. # 21).
Hibbett Sporting Goods, Inc. and Hibbett Holdings, LLC own
and/or license certain federal trademarks. (Doc. # 1 at 6).
Former Defendant Sock and Accessory Brands Global, Inc.
(“SABG”) is a hosiery and accessories design,
product development, and distribution company. (Doc. # 1 at
8). In 2011, SABG agreed to manufacture certain basketball
crew socks (“the Infringing Socks”) for
Plaintiff. The Infringing Socks include the Hibbett Marks
printed on descriptive tags attached to the front and back
and woven into interior of the garments. The Socks also
include a ® mark next to the Hibbett Marks. (Doc. # 1 at
8). SABG had agreed to Hibbett Wholesale Inc.'s Vendor
Compliance Manual, which provides that: “Vendor may not
resell any Goods, including cancelled product, overstocks,
overruns, defectives, and irregulars, which incorporate
Hibbett's intellectual property, labels or marks without
(i) prior written approval of Hibbett and (ii) removal of all
such intellectual property, marks and labels.” (Doc. #
1 at 8).
SABG completed production of the Infringing Socks, Hibbett
Sporting Goods decided against selling the sock. Hibbett
cancelled the order and returned all the Infringing Socks to
SABG, receiving credit for the order. (Doc. # 1 at 8).
Hibbett and SABG entered into an agreement authorizing SABG
to offer the unsold stock of the Infringing Socks exclusively
to accounts for non-domestic distribution. (Doc. # 1
around August 2013, SABG requested authorization from Hibbett
to sell its remaining unsold stock of the Infringing Socks
domestically. (Doc. # 1 at 9). On September 12, 2013, Hibbett
informed SABG by e-mail that it was not authorized to sell
the Infringing Sock domestically. (Doc. # 1 at 9). Despite
Hibbett denying authorization for domestic sales, SABG sold
the Infringing Socks to multiple domestic retailers
including, but not limited to, K-Mart and Defendant Shoebacca
Ltd. (Doc. # 1 at 9). SABG did not remove the Hibbett Marks
from the Infringing Socks prior to making the unauthorized
domestic sales. (Doc. # 1 at 10).
is a discount shoe, apparel, and accessories retailer. (Doc.
# 1 at 8). Plaintiff alleges that Shoebacca has sold the
Infringing Socks, including domestically, through its online
retail services. (Doc. # 1 at 10).
Standard of Review
Federal Rules of Civil Procedure require only that the
complaint provide “a short and plain statement of the
claim showing that the pleader is entitled to relief.”
Fed.R.Civ.P. 8(a)(2). However, the complaint must include
enough facts “to raise a right to relief above the
speculative level.” Bell Atlantic Corp. v.
Twombly, 550 U.S. 544, 555 (2007). Pleadings that
contain nothing more than “a formulaic recitation of
the elements of a cause of action” do not meet Rule 8
standards, nor do pleadings suffice that are based merely
upon “labels and conclusions” or “naked
assertion[s]” without supporting factual allegations.
Twombly, 550 U.S. at 555, 557. In deciding a Rule
12(b)(6) motion to dismiss, courts view the allegations in a
complaint in the light most favorable to the non-moving
party. Watts v. Fla. Intl. Univ., 495 F.3d 1289,
1295 (11th Cir. 2007).
survive a motion to dismiss, a complaint must “state a
claim to relief that is plausible on its face.”
Twombly, 550 U.S. at 570. “A claim has facial
plausibility when the plaintiff pleads factual content that
allows the court to draw the reasonable inference that the
defendant is liable for the misconduct alleged.”
Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009).
Although “[t]he plausibility standard is not akin to a
'probability requirement, '” the complaint must
demonstrate “more than a sheer possibility that a
defendant has acted unlawfully.” Id. A
plausible claim for relief requires “enough fact[s] to
raise a reasonable expectation that discovery will reveal
evidence” to support the claim. Twombly, 550
U.S. at 556.
considering a motion to dismiss, a court should “1)
eliminate any allegations in the complaint that are merely
legal conclusions; and 2) where there are well-pleaded
factual allegations, ‘assume their veracity and then
determine whether they plausibly give rise to an entitlement
to relief.'” Kivisto v. Miller, Canfield,
Paddock & Stone, PLC, 413 Fed.Appx. 136, 138 (11th
Cir. 2011) (quoting Am. Dental Assn. v. Cigna Corp.,
605 F.3d 1283, 1290 (11th Cir. 2010)). That task is context
specific and, to survive the motion, the allegations must
permit the court based on its “judicial experience and
common sense . . . to infer more than the mere possibility of
misconduct.” Twombly, 550 U.S. at 556.
Further, “courts may infer from the factual allegations
in the complaint ‘obvious alternative explanation[s],
' which suggest lawful conduct rather than the unlawful
conduct the plaintiff would ask the court to infer.”
Am. Dental, 605 F.3d at 1290 (quoting
Iqbal, 556 U.S. at 682). If the court determines
that well-pleaded facts, accepted as true, do not state a
claim that is plausible, the claims are due to be dismissed.
Twombly, 550 U.S. at 556.
Complaint contains the following claims against Shoebacca:
(1) Count One -Federal Trademark Infringement in Violation of
15 U.S.C. § 1114(1); (2) Count Two - Common Law
Trademark Infringement; (3) Count Three - Trademark Dilution
Pursuant to 15 U.S.C. § 1125(c); (4) Count Four -
Trademark Dilution Pursuant to Ala. Code § 8-12-17; (5)
Count Five -Unfair Competition in Violation of 15 U.S.C.
§ 1125(a)(1); and (6) Count Six - Common Law Unfair
Competition. (Doc. # 1).
support of its Motion to Dismiss, Shoebacca makes the
following arguments: (1) that Plaintiffs' claims are
barred as a matter of law because trademark law does not
reach the sale of genuine goods bearing a true mark, even if
such sale is without the mark owner's consent; and (2)
Plaintiffs' rejection of the Infringing Socks for a
credit constitutes a ...