United States District Court, E.D. Kentucky, Central Division, Lexington
MEMORANDUM OPINION & ORDER
M. HOOD, SENIOR U.S. DISTRICT JUDGE
Motion for Judgment on the Pleadings under Rule 12(c) of the
Federal Rules of Civil Procedure “is appropriately
granted ‘when no material issue of fact exists and the
party is entitled to judgment as a matter of law.'”
See Tucker v. Middleburg-Legacy Place, 539 F.3d 545,
549 (6th Cir. 2008). In making that determination, the Court
utilizes the standards applied to motions to dismiss under
Federal Rule of Civil Procedure 12(b)(6). Id.
considering a motion to dismiss for failure to state a claim
under Rule 12(b)(6), the court must take “all
well-pleaded material allegations of the pleadings” as
true. Fritz v. Charter Township of Comstock, 592
F.3d 718, 722 (6th Cir. 2010). The averments of the complaint
“need to be sufficient to give notice to the defendant
as to what claims are alleged, and the plaintiff must plead
‘sufficient factual matter' to render the legal
claim plausible, i.e., more than merely possible.”
Id. (quoting Ashcroft v. Iqbal, 556 U.S.
662, 129 S.Ct. 1937, 1949-50, 173 L.Ed.2d 868 (2009)).
“‘[A] legal conclusion couched as a factual
allegation, '” however, “need not be accepted
as true on a motion to dismiss, nor are recitations of the
elements of a cause of action sufficient.” Id.
(quoting Hensley Mfg. v. ProPride, Inc., 579 F.3d
603, 609 (6th Cir. 2009) and Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 127 S.Ct. 1955, 1965, 167 L.Ed.2d
Commonwealth Smiles, PLLC, is a Kentucky limited liability
company with its principal place of business in Fayette
County, where it has been continuously operating since 2012,
providing dentist and dental hygiene services in the area of
general, cosmetic, and family dentistry. Defendant
Commonwealth Dentistry, P.S.C., is a Kentucky professional
services corporation with its principal place of business in
Fayette County. Although it was originally filed as formed as
a professional services corporation with a principal place of
business in Charlottesville, Virginia, it was
administratively dissolved. Upon reinstatement, it listed its
principal place of business in Lexington, Kentucky, where it
now provides services for dentistry and dental hygiene in the
area of general, cosmetic, and family dentistry. Neither
Plaintiff nor Defendant have branch offices outside of the
Commonwealth of Kentucky, nor is either business licensed to
provide medical treatment in the form of dentistry or dental
services in any state other than the Commonwealth of
permitted to amend its Complaint, Plaintiff would aver these
additional facts. It advertises its goods and services via
the internet, print, and television. Defendant advertises its
goods and services via the internet through its website,
Facebook page, and online advertisements, as well as on the
radio. Both dental practices purchase goods including drugs,
medical devices, office and dental equipment, and chemicals
which, presumably, are procured through interstate commerce.
Further, Plaintiff communicates medical records, purchase of
goods, and processes insurance claims and reimbursements, all
of which involve interstate transactions, presumably.
Plaintiff also treats patients traveling to or through
43(a) of the Lanham Act prohibits the use of a trademark
“in commerce” that “is likely to cause
confusion, or to cause mistake, or to deceive as to the
affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval
of his or her goods, services, or commercial activities by
another person.” 15 U.S.C. § 1125(a)(a)(A).
“In commerce” means all commerce which may be
regulated by Congress, i.e., interstate commerce.
Jellibeans, Inc. v. Skating Clubs of Georgia, Inc.,
716 F.2d 833, 838 (11th Cir. 1983); Berghoff Restaurant
Co., Inc. v. Lewis W. Berghoff, Inc., 357 F.Supp. 127
(N.D. Ill. 1973). Purely intrastate disputes do not fall
under the Lanham Act. Jellibeans, 716 F.2d at 838;
Mother Waddles Perpetual Mission, Inc. v. Frazier,
904 F.Supp. 603, 611, (E.D. Mich. 1995).
regulates three broad categories of interstate commerce: (1)
the use of channels of interstate commerce, (2) the
instrumentalities of, or persons or things in, interstate
commerce, and (3) activities substantially affecting
interstate commerce. United States v. Lopez, 514
U.S. 549 (1995). A plaintiff may satisfy the jurisdictional
requirement of use in commerce by demonstrating either that
the allegedly infringing mark, or the false designation or
misrepresentation of it, was used in connection with goods in
interstate commerce or that the defendant's use, while
wholly intrastate, tended to have a substantial effect on
plaintiff's interstate business. Id.
instance, the facts averred do not support a claim under the
Lanham Act because the dispute alleged is a purely intrastate
dispute and the use of the mark, Commonwealth Dentistry, did
not tend to have a substsantial effect on Plaintiff's
follows that Plaintiff's Motion to Amend is futile and
shall be denied. The Court construes Defendant's Motion
for Partial Judgment on the Pleadings as a motion to dismiss
for failure to state a claim and grants the motion with
respect to Plaintiff's claim under the Lanham Act.
Finally, the Court declines to exercise supplemental
jurisdiction over the remaining state claims and remands this
matter to Fayette Circuit Court for all further proceedings.
IT IS ORDERED that Plaintiff's claim
under the Lanham Act be, and the same hereby is,
DISMISSED with prejudice.
Court having declined to exercise supplemental jurisdiction
over the remaining state claims, IT IS FURTHER
ORDERED that Plaintiff's remaining claims be,
and the same hereby are, REMANDED ...