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National Black Chamber of Commerce v. Ronald Busby et al

June 6, 2011

NATIONAL BLACK CHAMBER OF COMMERCE, PLAINTIFF,
v.
RONALD BUSBY ET AL., DEFENDANTS.



The opinion of the court was delivered by: Ricardo M. Urbina United States District Judge

Re Document Nos.: 23, 27

MEMORANDUM OPINION

DENYING DEFENDANT BUSBY'S MOTION TO DISMISS THE AMENDED COMPLAINT;

GRANTING THE PLAINTIFF'S SECOND MOTION FOR LEAVE TO AMEND

I. INTRODUCTION

This matter is before the court on defendant Ronald Busby's motion to dismiss the amended complaint and the plaintiff's second motion for leave to amend its complaint. The plaintiff, the National Black Chamber of Commerce, has brought suit against U.S. Black Chamber, Inc. ("USBCI"), and Busby, alleging various violations of the Lanham Act, 15 U.S.C. §§ 1051 et seq., and District of Columbia common law. Defendant Busby has moved to dismiss the claims against him pursuant to Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted. In addition, the plaintiff has moved for leave to file a second amended complaint under Rule 15(a). Because the amended complaint puts forth a plausible claim for relief, the court denies the defendant's motion to dismiss. Furthermore, because the plaintiff's proposed amendment is neither futile nor a likely cause of undue delay, the court grants the plaintiff's second motion for leave to amend its complaint.

II. FACTUAL & PROCEDURAL BACKGROUND

The plaintiff is a nonprofit D.C. corporation which aims to promote "Black businesses on local, state, regional and national levels." Am. Compl. ¶ 9. In pursuit of this objective, it owns and uses the trademark "NATIONAL BLACK CHAMBER OF COMMERCE®." Id. ¶ 13. Defendant USBCI, also a nonprofit D.C. corporation, seeks to provide visionary leadership and advocacy in developing and growing Black-led businesses and enterprises. Answer to Am. Compl. ¶ 1; Am. Compl. ¶ 21. Defendant Busby is USBCI's president and CEO. Am. Compl. ¶ 25.

The plaintiff alleges that the defendants have infringed the plaintiff's trademark both by using the name "U.S. Black Chamber of Commerce" when referring to USBCI and by allowing others to use the name "National Black Chamber of Commerce" when referring to USBCI. Id.

¶¶ 26-27. The plaintiff claims that the defendants' use of these names is likely to cause confusion between the plaintiff and defendant USBCI, especially given that the two organizations use their respective marks in connection with the same services, in the same trade channels and among the same audiences. Id. ¶¶ 33-34. For example, the plaintiff alleges that defendant Busby infringed the plaintiff's trademark by allowing a business partner to refer to him as the president of the "National Black Chamber of Commerce" in the business partner's advertisements. Id. ¶ 26.

The plaintiff also contends that USBCI held an event celebrating the functions of its organization, and that USBCI invited the plaintiff's members and affiliates to attend. Id. ¶ 30. The amended complaint states that the invitees were confused by the similar names of the two organizations, and that many were under the incorrect impression that the plaintiff had sponsored the event. Id. The plaintiff alleges that the defendants' actions have thus deprived the plaintiff of the ability to use its valuable intellectual property, and that the plaintiff has lost brand identity, corporate identity and control over its goodwill and reputation. Id. ¶ 38.

On October 18, 2010, the plaintiff filed a complaint in this court requesting legal and equitable relief. See generally Compl. Defendant Busby subsequently filed a motion to dismiss under Rule 12(b)(6). See generally Def. Busby's Mot. to Dismiss the Compl. The plaintiff then filed an amended complaint on January 14, 2011, obviating its first complaint and defendant Busby's motion to dismiss. See generally Am. Compl.

The amended complaint sets forth four separate counts: Count I states that the defendants engaged in trademark infringement under 15 U.S.C. § 1114(1); Count II alleges false designation of origin and unfair competition under 15 U.S.C. § 1125(a); Count III alleges trademark dilution under 15 U.S.C. § 1125(c)(1); and Count IV alleges unfair competition under District of Columbia common law. Am. Compl. ¶¶ 40-89. The plaintiff asks the court to permanently enjoin the defendants from using, infringing or diluting the plaintiff's trademark and from engaging in unfair competition. Id. at 20.

Defendant Busby responded by filing a motion to dismiss the amended complaint under Rule 12(b)(6) for failure to state a claim upon which relief may be granted. See generally Def. Busby's Mot. to Dismiss the Am. Compl. ("Def. Busby's Mot."). On March 3, 2011, the plaintiff filed a motion seeking leave to file a second amended complaint under Rule 15(a), see generally Pl.'s 2d Mot. to Amend, which defendant Busby opposes, see generally Def. Busby's ...


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