Ouyeinc, Ltd. v. BAAAAI, et al., No. 20 C 3488, Slip Op. (N.D. Ill. Sep. 13, 2021) (Coleman, J.).
Judge Coleman denied defendants’ Fed. R. Civ. P. 12(b)(1), (2) & (6) motion to dismiss plaintiff Ouyeinc’s Lanham Act trademark infringement, counterfeiting and false designation claims regarding Ouyeinc’s PRO-WAX100 marks for use with wax warming products.
As an initial matter, defendants’ alleged infringement, at least as pled, was done within the United States. So, there were not extraterritoriality issues that would take the claims outside the scope of the Lanham Act.
The Court held that defendants waived their argument that Ouyeinc did not plead that any consumers were aware of defendants’ alleged act, even though Ouyeinc failed to respond to it, because it was only argued in a footnote and not fully developed.
Finally, the Court denied without prejudice to refile, defendants’ personal jurisdiction challenge. Ouyeinc specifically pled that defendants’ sales using the PRO-WAX100 marks on the web were torts directed at Illinois. Defendants argued, without support, that they made no such sales in Illinois. The Court ordered limited jurisdictional discovery to resolve that dispute.