Trans-High Corporation, Inc. d/b/a High Times v. Reimers et al, No. 2:2014cv00279 - Document 20 (E.D. Wash. 2015)

Court Description: ORDER GRANTING PLAINTIFF'S MOTION TO DISMISS COUNTERCLAIM, granting 12 Motion to Dismiss for Failure to State a Claim. Defendants' Counterclaim alleged in ECF No. 8 is DISMISSED with prejudice. Signed by Senior Judge Lonny R. Suko. (LR, Case Administrator)

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Trans-High Corporation, Inc. d/b/a High Times v. Reimers et al Doc. 20 1 2 3 4 5 6 UNITED STATES DISTRICT COURT 7 EASTERN DISTRICT OF WASHINGTON 8 TRANS-HIGH CORP., INC., 9 Plaintiff, 10 11 12 -vsRICHARD REIMERS, et al., 13 Defendants. 14 15 ) ) ) ) ) ) ) ) ) ) ) ) NO. 2:14-CV-00279-LRS ORDER GRANTING PLAINTIFF’S MOTION TO DISMISS COUNTERCLAIM 16 17 BEFORE THE COURT is Plaintiff Trans-High Corp., Inc.’s 18 19 (“Trans-High”) Motion to Dismiss For Failure to State A 20 Claim (ECF No. 12), which was telephonically argued on 21 December 18, 2015. Kieran Gerard Doyle participated on 22 behalf of the Plaintiff and John R. Zimantz participated on 23 24 behalf of the Defendants. At the close of oral argument, 25 the Court took the matter under advisement. After careful 26 review of the pleadings submitted by all parties and with ORDER - 1 Dockets.Justia.com 1 2 the benefit of oral argument, the Court enters the following order. 3 I. 4 Plaintiff Trans-High is the owner of ten federally 5 6 7 BRIEF BACKGROUND registered trademarks for "HIGH TIMES" and variations thereof for lawful goods and services. 1 Defendant Richard 8 9 Reimers has been using "HIGH TIME STATION"for the name of 10 his marijuana dispensary. Plaintiff alleges that Defendant 11 Richard Reimers, by operation of 12 in Ephrata, Washington licensed a retail by the cannabis State store of 13 14 Washington used 15 thereby 16 Plaintiff’s mark. 17 infringed the mark “High Time Station” and on Plaintiff Trans-High is seeking a permanent injunction against Mr. Reimers' future use of that 18 19 mark. Defendant Reimers counterclaimed, asking this Court to 20 cancel some or all of Trans-High's registrations. 21 urges the Court to dismiss Defendants’ counterclaim pursuant 22 Plaintiff to Fed.R.Civ.P. 12(b)(6). 23 24 The Court takes judicial notice of the ten registrations listed in the Complaint (ECF No. 1) and Plaintiff’s Motion to 25 Dismiss (ECF No. 12 at 5)for purposes of this motion to 26 dismiss. 1 ORDER - 2 1 2 II. LEGAL STANDARD A cause of action may be dismissed under Fed.R.Civ.P. 3 4 12(b)(6) either when it asserts a legal theory that is not 5 cognizable as a matter of law, or if it fails to allege 6 sufficient facts to support an otherwise cognizable legal 7 claim. SmileCare Dental Group v. Delta Dental Plan of 8 9 California, Inc., 88 F.3d 780, 783 (9th Cir. 1996). In 10 addressing a Rule 12(b)(6) challenge the Court accepts all 11 factual allegations in the complaint as true (Hospital Bldg. 12 Co. v. Trustees of the Rex Hospital, 425 U.S. 738, 740, 96 13 14 S.Ct. 1848, 48 L.Ed.2d 338 (1976)), and construes the 15 pleading in the light most favorable to the nonmoving party. 16 Tanner v. Heise, 879 F.2d 572, 576 (9th Cir.1989). 17 III. DISCUSSION 18 19 The allegation at issue targets Trans-High's first and 20 only trademark registration (Registration No. 1,883,561) 21 that covers magazines, registered in 1995. Mr. Reimers 22 accuses Trans-High of unlawfully selling goods that are not 23 24 among those listed in the registrations. More specifically, 25 Defendants’ allegations take aim at the alleged sale of drug 26 paraphernalia and controlled substances based on the claim ORDER - 3 1 2 that Trans-High's act of printing advertisements by third-party companies in its HIGH TIMES magazine violates 3 4 5 6 7 the Controlled Substances Act. Defendant Reimers does not allege that the goods and services identified in the HIGH TIMES registrations are unlawful. Instead he accuses Plaintiff Trans-High of 8 9 unlawfully selling goods that are not among those listed in 10 the registrations. Defendants rely on the Controlled 11 Substances 12 Act stating that such act prohibits, among other things, manufacturing, distributing, dispensing, or 13 14 possessing certain controlled substances, including 15 marijuana, marijuana-based preparations, and psilocybin. 16 Plaintiff asserts the Controlled Substances Act 17 expressly excludes from its scope a party's mere 18 19 advertisement or "promotion" of controlled substances and 20 drug paraphernalia. 21 Defendants’ counterclaim should be dismissed. 22 Therefore, Plaintiff concludes The Court finds Plaintiff’s arguments convincing. 23 24 Specifically, a registration may be vulnerable to 25 cancellation if the goods and services for which the 26 registration has been issued, are proven to be unlawful. ORDER - 4 1 2 None of the goods and services for which the registrations have been issued are unlawful. The Controlled Substances Act 3 4 expressly excludes from its scope a party's mere 5 advertisement or "promotion" of controlled substances and 6 drug paraphernalia. 7 See 21 U.S.C. § 843(c)(1) (“The term ‘advertisement’ does not include material which merely 8 9 advocates the use of a similar material, which advocates a 10 position or practice, and does not attempt to propose or 11 facilitate an actual transaction in a Schedule I controlled 12 substance.”) 13 Having 14 alleged illegality (nor any other 15 cognizable 16 Defendants’ legal theory is not cognizable as a matter of 17 law. basis no for cancellation), the Court finds Furthermore, to the extent Defendants’ counterclaim 18 19 seeks to cancel Trans-High's other nine HIGH TIMES trademark 20 registrations for various other goods and services, 21 including posters, T-shirts, and DVDs, such a claim 22 similarly fails. 23 24 Accordingly, IT IS HEREBY ORDERED that: Plaintiff's 25 Motion to Dismiss, ECF No. 12, is hereby GRANTED. 26 Defendants’ counterclaim for cancellation of federal ORDER - 5 1 2 registration of trademark, ECF No. 8, is hereby DISMISSED WITH PREJUDICE. 3 4 5 6 IT IS SO ORDERED. The Clerk is hereby directed to enter this order. DATED this 12th day of January, 2015. 7 8 s/Lonny R. Suko _____________________________ LONNY R. SUKO SENIOR U. S. DISTRICT JUDGE 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 ORDER - 6

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