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Kimray, Inc. v. Norriseal-Wellmark, Inc.

United States District Court, W.D. Oklahoma

May 8, 2017

KIMRAY, INC., an Oklahoma corporation, Plaintiff,
NORRISEAL-WELLMARK, INC., a Delaware corporation, Defendant.



         Before the Court is Defendant Norriseal-Wellmark, Inc.'s (Norriseal) Motion to Dismiss Plaintiff's Complaint for Failure to State a Claim, or, in the Alternative, for a More Definite Statement [Doc. No. 16]. Plaintiff Kimray, Inc. (Kimray) has filed its response in opposition [Doc. No. 28] and Norriseal has replied [Doc. No. 30]. The matter is fully briefed and at issue.


         The following facts are taken from Kimray's Complaint and, in addition to all reasonable inferences, are viewed in the light most favorable to it. Wasatch Equality v. Alta Ski Lifts Co., 820 F.3d 381, 386 (10th Cir. 2016).[1] Kimray manufactures and sells a variety of oilfield products such as valves, regulators, controls, pumps, pilots and relays, and flow meters. Part of its product line includes automatic oil and water treater valves, over which Kimray obtained trademark registration. Norriseal is a competitor of Kimray. It sells oil and gas products and provides related services. Norriseal and Kimray both advertise and sell their respective valve products to the same consumer base and in the same channels of trade.

         Norriseal manufactures and markets a treater valve with a configuration virtually identical to Kimray's registered oil and water treater valves. Kimray alleges Norriseal chose the design of its treater valves to capitalize on the goodwill associated with Kimray's registered valves, and that it has infringed upon Kimray's trade dress protection in the product. Kimray also contends Norriseal has intentionally marketed its products in direct competition with Kimray, and such contemporaneous advertising and marketing of the two valves will likely cause confusion, mistake, or deception among consumers. Accordingly, Kimray filed the instant lawsuit, asserting claims for trade dress infringement (Count 1), unfair competition/false advertising/false designation of origin (Count 2), [2] deceptive trade practices (Count 3), common law unfair competition (Count 4), common law infringement (Count 5), and counterfeit trade dress (Count 6).

         Norriseal moves to dismiss the Complaint on the grounds that it fails to state a plausible claim for relief. Specifically, Norriseal contends that (1) Kimray's trade dress infringement claim fails because it failed to adequately allege the precise boundaries of its alleged trade dress; (2) Kimray's trade dress infringement claim and related claims fail because Kimray failed to set forth specific allegations regarding the element of “likelihood of confusion”; (3) Kimray's state deceptive trade practices claim fails because it failed to allege which of the enumerated categories of deceptive conduct set forth in the statute it contends Norriseal committed; and (5) Kimray's counterfeiting claim fails because it has only set forth threadbare recitals of the statutory language.


         “To survive a motion to dismiss [under Rule 12(b)(6)], a complaint must contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.' ” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). “A claim has facial plausibility when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Id. The “plausibility” standard announced in Twombly and Iqbal is not considered a “heightened” standard of pleading, but rather a “refined standard, ” which the Tenth Circuit has defined as “refer[ring] to the scope of the allegations in a complaint: if they are so general that they encompass a wide swath of conduct, much of it innocent, then the plaintiffs have not nudged their claims across the line from conceivable to plausible.” Khalik v. United Air Lines, 671 F.3d 1188, 1191 (10th Cir. 2012) (citing Kansas Penn Gaming, LLC v. Collins, 656 F.3d 1210, 1214 (10th Cir. 2011); Robbins v. Oklahoma, 519 F.3d 1242, 1247 (10th Cir. 2008)).

         The Tenth Circuit has further noted that “[t]he nature and specificity of the allegations required to state a plausible claim will vary based on context.” Khalik, 671 F.3d at 1191 (quoting Kansas Penn Gaming, 656 F.3d at 1215). “Thus … the Twombly/Iqbal standard is ‘a middle ground between heightened fact pleading, which is expressly rejected, and allowing complaints that are no more than labels and conclusions or a formulaic recitation of the elements of a cause of action, which the Court stated will not do.' ” Id. (quoting Robbins, 519 F.3d at 1247). In deciding Twombly and Iqbal, there was no indication the Supreme Court “intended a return to the more stringent pre-Rule 8 pleading requirements.” Id. at 1191 (citing Iqbal, 556 U.S. at 678).

         Thus, it remains true that “[s]pecific facts are not necessary; the statement need only ‘give the defendant fair notice of what the ... claim is and the grounds upon which it rests.' ” Erickson v. Pardus, 551 U.S. 89, 93 (2007) (quoting Twombly, 550 U.S. at 555); Smith v. United States, 561 F.3d 1090, 1104 (10th Cir. 2009) (“Technical fact pleading is not required, but the complaint must still provide enough factual allegations for a court to infer potential victory.”) (quoting Bryson v. Gonzales, 534 F.3d 1282, 1286 (10th Cir. 2008)). “While the 12(b)(6) standard does not require that Plaintiff establish a prima facie case in [its] complaint, the elements of each alleged cause of action help to determine whether Plaintiff has set forth a plausible claim.” Khalik, 671 F.3d at 1191 (citing Swierkiewicz v. Sorema N.A., 534 U.S. 506, 515 (2002)). “[A] well-pleaded complaint may proceed even if it strikes a savvy judge that actual proof of [the alleged] facts is improbable, and ‘that a recovery is very remote and unlikely.'” Sanchez v. Hartley, 810 F.3d 750, 756 (10th Cir. 2016) (citing Twombly, 550 U.S. at 556).[3]


         I. Trade Dress Infringement

         The Lanham Act provides a federal cause of action for trade dress infringement. See 15 U.S.C. § 1125(a). “A product's trade dress ‘is its overall image and appearance, and may include features such as size, shape, color or color combinations, texture, graphics, and even particular sales techniques.' ” General Motors Corp. v. Urban Gorilla, LLC, 500 F.3d 1222, 1226 (10th Cir. 2007) (quoting Sally Beauty Co., Inc. v. Beautyco, Inc., 304 F.3d 964, 977 (10th Cir. 2002)). To prevail on a trade dress infringement claim, a plaintiff must show: (1) the trade dress is inherently distinctive or has become distinctive through secondary meaning; (2) there is a likelihood of confusion among consumers as to the source of the competing products; and (3) the trade dress is nonfunctional. Id. at 1227.[4]

         Norriseal argues that Kimray fails to state a plausible trade dress infringement claim because it does not specifically articulate which features of its valves make up the claimed trade dress, which of those features are primarily non-functional, ...

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