TWD, LLC v. Grunt Style LLC, No. 18 C 7695, Slip Op. (N.D. Ill. Oct. 23, 2019) (Kocoras, J.).

Judge Kocoras granted in part defendant-counterclaimant Grunt Style’s Fed. R. Civ. P. 12(c) motion for judgment on the pleadings and granted Grunt Style’s Fed. R. Civ. P. 12(f) motion to strike plaintiff-counterdefendant TWD’s affirmative defenses in this Lanham Act case involving the THIS WE’LL DEFEND mark.

TWD brought a Lanham Act trademark infringement claim pursuant to the Lanham Act § 1114 and sought injunctive relief pursuant to § 1116. Grunt Style argued that the Court should dismiss the § 1116 claim because injunctive relief requires counterfeiting and TWD had made no counterfeiting allegations. The Court, however, held that § 1116 did not state a separate cause of action. Instead, it was a potential remedy for a § 1114 infringement claim. Because the claim merely sought a potential remedy and was not a separate claim, it could not be dismissed.

The Court dismissed TWD’s Lanham Act § 1125 unfair competition claim because it was based solely upon Grunt Style’s use of a ® with its unregistered mark. It was “devoid” of any claim of consumer confusion or that Grunt Style’s action harmed TWD’s reputation or sales. TWD, therefore, lacked standing because it did not plead injury and did not sufficiently plead its claim because it did not allege actual or likely confusion.

The Court struck TWD’s affirmative defenses because they were either a single sentence stating the legal standard for the defense without any tie to factual support, or because they were merely a statement of the defense, without factual or legal basis. While the Seventh Circuit had not ruled on whether Twombly / Iqbal plausible pleading applied to affirmative defenses, the Court reasoned that it did. The Court, therefore, struck each affirmative defense.