United States District Court, D. Colorado
OPINION AND ORDER
Marcia S. Krieger Chief United States District Judge
THIS MATTER comes before the Court pursuant to the Magistrate Judge’s Recommendation (# 68), that the Plaintiff’s (“BD”) Motion to Dismiss Counterclaims (# 50) be granted, to which no party has filed Objections; the Defendant’s (“Lejon”) Motion for Summary Judgment (# 66), BD’s response (# 69), and Lejon’s reply (# 72); and BD’s Motion for Summary Judgment (# 67), Lejon’s response (# 70), and BD’s reply (# 73).
The Court summarizes the pertinent facts here, and elaborates in its analysis. Since approximately 1988, BD has manufactured leather belts, which it sells under the brand name “Bison.” In or about 2003, BD registered the trademark BISON for such use. BD uses the term fancifully - as the Court understands, BD does not allege that its belts are made of actual bison leather.
Lejon also manufactures belts. In or about 2012, it began manufacturing belts from bison leather. In 2013, it obtained a trademarks in the term “VINTAGE BISON, ” used in conjunction with a drawing of a bison.
In or about 2014, the parties became aware of the others’ marks, and this litigation ensued. BD’s Complaint (# 1) asserts two substantive claims: (i) trademark infringement, and (ii) unfair competition, both under the Lanham Act, 15 U.S.C. § 1051 et seq. BD’s Complaint asserts three additional “claims, ” which are more in the nature of requests for certain types of relief: (i) a request for an accounting, (ii) a request for injunctive relief against Lejon’s further use of a mark containing the word “bison, ” and (iii) imposition of a constructive trust on Lejon’s profits that have been wrongfully obtained through use of the BISON mark.
Lejon responded by filing an Answer and counterclaims against BD. The operative pleading, Lejon’s Second Amended Counterclaim (# 45), asserts claims and requests for specific relief: (i) seeking a declaration that BD’s mark is invalid based on a range of theories including fraud on the Patent & Trademark Office, that the marks are merely descriptive (and mis-descriptive, in that BD does not make the belts out of actual bison hide), and failure of BD to police its mark, among others; (ii) seeking cancellation of BD’s mark, for essentially the same reasons; and (iii) a claim for a declaration of non-infringement.
BD moved (# 50) to dismiss Lejon’s first and second counterclaims on various grounds. The Court referred the matter to the Magistrate Judge, and upon due consideration, the Magistrate Judge issued a Recommendation (# 68) that BD’s motion be granted in part (with regard to Lejon’s counterclaims for invalidity or cancellation based on descriptiveness and mis-descriptiveness), and denied in part (with regard to the counterclaims premised on fraud on the Trademark Office, abandonment for failure to police, and on genericness). More than 14 days have passed since the issuance of that Recommendation, and neither party has filed Objections pursuant to Fed.R.Civ.P. 72(b).
Separately, both sides moved for summary judgment. Lejon moves (# 66) for judgment arguing: (i) BD cannot establish its claim for trademark infringement, insofar as Lejon’s use of the mark BISON is in a descriptive and generic capacity to identify its belts made of bison leather; (ii) BD cannot establish its claim for unfair competition for essentially the same reasons; (iii) BD’s cannot establish its “claims” for various forms of relief because it cannot establish a trademark violation for the reasons set forth above; and (iv) Lejon is entitled to summary judgment on its counterclaim for a declaration of non-infringement, for the same reasons.
Separately, BD moves (# 67) for summary judgment on Lejon’s counterclaims for invalidity and cancellation based on fraud, genericness, misdesignation, or abandonment, for various reasons.
A. Motion to Dismiss
Neither party has filed timely Objections to the Magistrate Judge’s Recommendation that BD’s motion to dismiss Lejon’s counterclaims be granted in part and denied in part. In the absence of timely objections, the Court reviews the Recommendation under whatever standard of review it deems appropriate. Summers v. State of Utah, 927 F.2d 1165, 1167 (10th Cir. 1991). The Court has reviewed the Recommendation under the otherwise-applicable de novo standard of Fed.R.Civ.P. 72(b). Upon such de novo review, the Court reaches the same conclusions as the Magistrate Judge and for the same reasons. Accordingly, the Court adopts the Recommendation, and grants in part and denies in part BD’s motion to dismiss on the terms set forth in the Recommendation.
B. Summary judgment motions