Richards v. Burgett, Inc., No. 10 C 7580, Slip Op. (N.D. Ill. Apr. 4, 2011) (Lindberg, Sen. J.).

Judge Lindberg denied the Burgett Bros. defendants’ and the ASC defendant’s motions to dismiss plaintiff’s trademark infringement claims related to the GEORGE STECK marks for pianos. First, the Burgett Bros. argued that they did not have standing to be sued. The argument boiled down to a lack of standing because the case would fail on the merits. But the Court held that standing was only an issue for a plaintiff, and denied that portion of the motion.

The Court next denied ASC’s motion to dismiss based upon a statute of limitations. First, the Court explained that the Lanham Act does not have a statute of limitation. So, ASC’s claim was more properly styled as laches. And because laches is highly fact dependent, it could not be resolved on a motion to dismiss.

The Court also denied ASC’s argument that the claims should be dismissed pursuant to judicial estoppel because plaintiff had made inconsistent statements in pleadings from earlier cases. But no Court had relied upon plaintiff’s earlier statement, as is required for judicial estoppel.

Finally, plaintiff’s earlier voluntary dismissal did not implicate the "two dismissal rule," Fed. R. Civ. P. 41(a)(1)(B). Rule 41(a)(1)(B) states that voluntary dismissal is without prejudice to refile, unless the plaintiff previously dismissed any . . . action based on or including the same claim . . . ." But plaintiff did not dismiss his entire prior action, only specific claims of it. And there was no trademark claim in the earlier action.

The Court also denied ASC’s argument that the claims should be dismissed for plaintiff’s failure to timely record its alleged assignment with the Patent Office. ASC argued that the assignment was void as to ASC because ASC was a bona fide purchaser, without notice of the assignment, and plaintiff had not timely filed its assignment pursuant to 15 U.S.C. Section 1060. Plaintiff argued that the bona fide purchaser rule did not apply to licensees, such as ASC. But neither side offered case law to support its position on the issue. So, the Court denied the motion as to filing the assignment. Additionally, the complaint alleged that ASC acted with knowledge of the assignment.