United States District Court, D. Minnesota
M. Friedemann and Laura L. Myers, Fredrikson & Byron,
P.A., (for Plaintiff); and
Matthew L. Woods and Peter N. Surdo, Robins Kaplan LLP, and
A. Michael Palizzi and Michael C. Simoni, Miller, Canfield,
Paddock and Stone, PLC, (for Defendant).
E. Rau United States Magistrate Judge
matter is before the Court on Plaintiffs Motion for Leave to
Amend its Complaint. (ECF No. 43). For the reasons below, the
motion is granted in part and denied in part.
My Pillow, Inc., and Defendant LMP Worldwide, Inc., are
competitors in the pillow business. My Pillow, a Minnesota
corporation, uses the word mark “MYPILLOW in selling
its pillows (hereinafter “MyPillow mark”), while
LMP, a Michigan corporation, uses the design mark “
(Image Omitted)” in its sales (hereinafter “LMP
mark”). (Compl. ¶¶ 6-9, 11, 13, ECF No. 1;
Am. Compl. ¶¶ 6-10, 12, 14, ECF No. 46, Ex. A). My
Pillow has used its registered trademark since 2009 and LMP
has used its registered trademark since 2007. (Compl.
¶¶ 6-9, 11, 13; Am. Compl. ¶¶ 6-10, 12,
January 2012, My Pillow sued LMP in the United States
District Court for the Eastern District of Michigan, alleging
trademark infringement and unfair competition. (Compl. ¶
16; Am. Compl. ¶ 15). The parties settled that lawsuit
by entering into a settlement agreement establishing terms
under which each party uses their respective marks. (Compl.
¶ 16; Am. Compl. ¶¶ 16-21). The agreement
contains the following provision: “The Parties agree
that the [LMP mark], as used in the manner and form reflected
in [the agreement], is not confusingly similar to and not
likely to cause confusion with the My Pillow Mark.”
(Agreement § 1, Am. Compl. Ex. 4). The parties also
agreed to the inverse: that the My Pillow mark is not
confusingly similar to the LMP mark. (Agreement § 1).
The agreement prohibits LMP from using the My Pillow mark in
connection with pillows and from making any ad word purchase
for the works “my” and “pillow, ”
whether together or separate, unless accompanied by
additional words. (Agreement § 2.1(c)). My Pillow
likewise agreed not to purchase certain ad words related to
the LMP mark. (Agreement § 4.1(c)).
Pillow asserts that LMP violated the agreement and infringed
the My Pillow mark. (Compl. ¶¶ 17-27; Am. Compl.
¶¶ 22-35). First, My Pillow alleges LMP purchased
prohibited ad words without the accompaniment of additional
words. (Compl. ¶¶ 18-22; Am. Compl. ¶¶
23-29). My Pillow notified LMP of this asserted breach in
December 2016. (Compl. ¶¶ 18-22; Am. Compl.
¶¶ 23-29). LMP claimed it ceased purchasing the
prohibited words, but My Pillow asserts LMP continued
prohibited ad word purchasing. (Compl. ¶¶ 18-22;
Am. Compl. ¶¶ 23-29). Second, My Pillow alleges
that LMP used the My Pillow mark in connection with My Pillow
goods and made false representations about My Pillow in an
email to a wholesale customer. (Compl. ¶¶ 23-24;
Am. Compl. ¶¶ 30-32). Third, My Pillow claims that
LMP produced radio advertisements in Minnesota that were
designed to cause confusion between My Pillow and LMP.
(Compl. ¶¶ 25-27; Am. Compl. ¶¶ 33-35).
My Pillow informed LMP of these alleged breaches on December
20, 2017, then terminated the agreement on January 23, 2018.
(Compl. ¶ 28; Am. Compl. ¶¶ 36-38). The next
day, My Pillow brought suit, alleging six counts: breach of
contract, trademark infringement in violation of the Lanham
Act, unfair competition and false representation in violation
of the Lanham Act, common-law trademark infringement and
unfair competition, unfair competition and false
representation in violation of the Minnesota Deceptive Trade
Practices Act (“MDTPA”), and trademark
cancellation. (Compl. ¶¶ 29-71).
moved, inter alia, to dismiss My Pillow's
original complaint. (ECF No. 11). My Pillow's breach of
contract, common law unfair competition, Lanham Act unfair
competition, and MDTPA unfair competition claims survived.
(Sept. 6, 2018 Order, ECF No. 39). As will be discussed in
greater detail, My Pillow's claims of trademark
infringement under the Lanham Act and common law, false
advertising/representation under the under the Lanham Act and
MDTPA, and trademark cancellation were dismissed without
Pillow now moves to amend its complaint. (ECF No. 43). My
Pillow asserts its amendments would “correct the
pleading issues identified in the [Sept. 6, 2018
Order]” and “add another federal trademark
registration owned by My Pillow as a basis for trademark
infringement.” (ECF No. 45, at 1). LMP opposes, arguing
the proposed amendments are futile, particularly in light of
the Sept. 6, 2018 Order.
should “freely give leave” to amend a pleading
before trial when “justice so requires.”
Fed.R.Civ.P. 15(a). Parties “do not have an absolute
right to amend their pleadings, even under this liberal
standard.” Sherman v. Winco Fireworks, Inc.,
532 F.3d 709, 715 (8th Cir. 2008). Leave to amend should not
be given when there is “undue delay, bad faith or
dilatory motive on the part of the movant, repeated failure
to cure deficiencies by amendments previously allowed, undue
prejudice to the opposing party by virtue of allowance of the
amendment, [or] futility of amendment[.]” Foman v.
Davis, 371 U.S. 178, 182 (1962).
here, “[f]utility is a valid basis for denying leave to
amend.” United States ex rel. Lee v.
Fairview Health Sys., 413 F.2d 748, 749 (8th Cir. 2005).
“Denial of a motion for leave to amend on the basis of
futility means the district court has reached the legal
conclusion that the amended complaint could not withstand a
motion to dismiss under Rule 12(b)(6) of the Federal Rules of
Civil Procedure.” Zutz v. Nelson, 601 F.3d
842, 850 (8th Cir. 2010) (internal quotation marks omitted).
To survive a motion to dismiss, a complaint must contain
sufficient factual matter, accepted as true, to state a claim
to relief that is plausible on its face. 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)
(internal quotation marks and citations omitted).
Amended Trademark Infringement Claim - Pillows
Court noted in the Sept. 6, 2018 Order, to prevail on its
trademark infringement claims, My Pillow must prove it owns a
registered trademark that LMP used or imitated in commerce in
connection with the sale of goods, that LMP's use or
imitation of the My Pillow mark was unauthorized, and that
LMP's use or imitation is “likely to cause
confusion, or to cause mistake, or to ...