Republic Techs. (NA), LLC v. BBK Tocacco & Foods, LLC d/b/a HBI Int’l., No. 16 C 3401, Slip Op. (N.D. Ill. Apr. 18, 2017) (Bucklo, J.).
Judge Bucklo granted in part defendant HBI’s Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiff Republic’s trademark cancellation claim as to HBI’s RAW trademark, or in the alternative to amend adding a counterclaim for cancellation of Republic’s OCB trademark. The Court also denied Republic’s motion to strike certain allegations in HBI’s amended counterclaims in this trademark dispute involving cigarette rolling papers.
Of particular note, the Court held as follows:
- Republic’s cancellation claim was properly pled. Trademarks are cancelled where they are used for, among other things, drug paraphernalia. Republic’s contention that HBI’s rolling papers were used for illegal drugs, not just cigarettes, failed, however, because rolling papers are within an exemption to the controlled substances act, which allows products traditionally used with tobacco. However, HBI’s vaporizers did not fit within that exception. So, Republic’s cancellation claim survived.
- The Court dismissed Republic’s fraud on the Trademark Office claim because Republic did not sufficiently plead specific omissions and identify which applications they were attached to in order to meet Fed. R. Civ. P. 9(b) pleading standards for fraud claims.
- The Court granted HBI leave to amend its counterclaim to add a cancellation claim as to Republic’s OCB mark alleging that it should be cancelled because it is used to sell illegal drugs.
- The Court denied Republic’s motion to strike HBI’s allegations regarding Republic’s trademark and products being associated with drug use because the Court had granted HBI leave to amend adding a cancellation claim and because Republic made no effort to show that it was or would suffer because of the allegations.