CHARLES C. ADAMS JR., Plaintiff,
GRAND SLAM CLUB/OVIS, an Alabama corporation, Defendant.
ORDER DENYING PLAINTIFF'S MOTION TO DISMISS
WILLIAM J. MARTÍNEZ, Judge.
Plaintiff Charles C. Adams, Jr. ("Plaintiff") has brought this civil action alleging trademark infringement and related claims against Defendant Grand Slam Club/Ovis ("GSCO" or "Defendant"). (ECF No. 8.) Before the Court is Plaintiff's Motion to Dismiss Defendant's Counterclaims 1, 2, and 6 for Failure to State Claims or for More Definite Statement ("Motion"). (ECF No. 30.) For the reasons set forth below, Plaintiff's Motion is denied.
Plaintiff is a big game hunter who registered and began using the trademark "SUPER SLAM" in 1990 and 1991 in connection with goods and services related to archery. (Counterclaims (ECF No. 29) ¶¶ 36-37; Am. Compl. (ECF No. 8) ¶¶ 16-17.)
Defendant GSCO is a member-based non-profit organization whose activities include documenting and officially recognizing big game hunting milestones, generally requiring a hunter's successful taking of a certain number of species. (Am. Compl. ¶ 8; Counterclaims ¶ 6.) In 1967, the predecessor of GSCO, The Grand Slam Club, registered and began using the trademarks "GRAND SLAM" and "GRAND SLAM OF NORTH AMERICA WILD SHEEP" (the "GRAND SLAM Marks") for "providing recognition and incentives by the way of awards to demonstrate excellence in the field of wild sheep hunting[, ]" among other uses. ( Id. ¶¶ 6, 17, 18; ECF No. 29 Exs. D, E.) GSCO later registered the trademark "GRAND SLAM" for publications. ( Id. ¶ 14; ECF No. 29 Ex. A.)
In 2009, GSCO registered and began using the trademarks "SUPER SLAM" and "SUPER SLAM OF NORTH AMERICAN BIG GAME" for publications and awards in the field of big game hunting. ( Id. ¶¶ 11, 20, 21; ECF No. 29 Exs. G, H.) GSCO also owns the following trademarks in connection with big game hunting awards, among other things: "OVIS WORLD SLAM, " "CAPRA WORLD SLAM, " and "3/4 SLAM" (collectively, with "GRAND SLAM, " "GRAND SLAM OF NORTH AMERICA WILD SHEEP, " "SUPER SLAM, " and "SUPER SLAM OF NORTH AMERICAN BIG GAME, " the "GSCO SLAM Marks"). ( Id. ¶¶ 15, 16, 19; ECF No. 29 Exs. B, C, F.)
Plaintiff filed a Complaint on November 8, 2012 (ECF No. 1), and an Amended Complaint on December 6, 2012 against GSCO, Dennis Campbell and Thomas L. Miranda, Jr. (the "Original Defendants"). (Am. Compl. (ECF No. 8.)) Plaintiff brings claims for trademark infringement and related claims under the Lanham Act, 15 U.S.C. §§ 1051-1127, the Colorado Deceptive Trade Practices Act, Colo. Rev. Stat. §§ 6-1-105 et seq., common law trademark rights, and invasion of privacy, alleging that Defendants infringed Plaintiff's trademark on the term "SUPER SLAM." (Am. Compl. pp. 2, 6-7.)
On February 8, 2013, the Original Defendants moved to dismiss the claims against defendants Dennis Campbell and Thomas L. Miranda for lack of personal jurisdiction, among other things. On April 9, 2013, the Court granted in part the Original Defendants' motion to dismiss, and dismissed Plaintiff's claims against Dennis Campbell and Thomas L. Miranda, Jr. (ECF No. 27.)
On April 23, 2013, Defendant GSCO filed an Answer and Counterclaims to the First Amended Complaint. (ECF No. 29.) GSCO's Counterclaims assert the following claims for relief: (1) trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114(a); (2) false designation of origin and unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a); (3) common law trademark infringement; (4) common law unfair competition; (5) declaratory relief; and (6) cancellation of Plaintiff's "SUPER SLAM" trademark pursuant to 15 U.S.C. § 1115(b). ( Id. )
On May 14, 2013, Plaintiff moved to dismiss counterclaims 1, 2 and 6. (ECF No. 30.) GSCO filed a Response to Plaintiff's Motion on June 4, 2013 (the "Response"). (ECF No. 33.) Plaintiff filed his Reply on June 15, 2013. (ECF No. 41.)
II. LEGAL STANDARDS
Under Federal Rule of Civil Procedure 12(b)(6), a defendant may move to dismiss a claim in a complaint for "failure to state a claim upon which relief can be granted." In evaluating such a motion, a court must "assume the truth of the plaintiff's well-pleaded factual allegations and view them in the light most favorable to the plaintiff." Ridge at Red Hawk, L.L.C. v. Schneider, 493 F.3d 1174, 1177 (10th Cir. 2007). In ruling on such a motion, the dispositive inquiry is "whether the complaint contains enough facts to state a claim to relief that is plausible on its face.'" Id. (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)). Granting a motion to dismiss "is a harsh remedy which must be cautiously studied, not only to effectuate the spirit of the liberal rules of pleading but also to protect the interests of justice." Dias v. City & Cnty. of Denver, 567 F.3d 1169, 1178 (10th Cir. 2009) (quotation marks omitted). "Thus, a well-pleaded complaint may proceed even if it strikes a savvy judge that actual proof of those facts is improbable, and that a recovery is very remote and unlikely.'" Id. (quoting Twombly, 550 U.S. at 556).
"In considering a Rule 12(b)(6) motion, the Court must limit its review to the four corners of the Complaint, but may also consider documents attached to the Complaint as exhibits[.]" Llewellyn v. Shearson Fin. Network, Inc., 622 F.Supp.2d 1062, 1066-67 (D. Colo. ...